Broughan III, Thomas A.
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Zeilberger, Daniel [danielzeilberger@paulhastings.com]
`Monday, April 11, 2016 1:08 PM
`Border, Scott; James Bailey; Wesley C. Meinerding
`Palys, Joseph E.; Modi, Naveen; Thomas Martin; docketing; Kushan, Jeffrey P.; Broughan III,
`Thomas A.; Dillon, Samuel; Kasdan, Abraham; IP@wiggin.com
`RE: IPR2015-01046 and IPR2015-01047
`
`Scott, we have added our position to your draft email to the Board below:
`
`
`
`
`
`
`Your Honors-
`
`
`Petitioner’s Positon
`The joined Petitioners request a call with the Board to request authorization for additional
`discovery for the cross-examination of a declarant (Dr. Short) whose testimony Patent Owner
`has cited and relies upon in this proceeding.
`
`
`Patent Owner submitted with its Patent Owner response a declaration from a Dr. Short, a
`named inventor on the patent at issue in this proceeding. The declaration was originally
`prepared for an inter partes reexamination proceeding. Patent Owner relies on Dr. Short’s
`declaration for its assertions that secondary considerations exist that support a finding of non-
`obviousness. See Resp. at 29-36.
`
`The joined Petitioners requested that Patent Owner either provide Dr. Short for cross-
`examination or withdraw the declaration. Patent Owner has not agreed to provide Dr. Short for
`cross-examination and has represented that such cross-examination is unnecessary given that
`Dr. Short was questioned in related litigation on topics discussed in the declaration. Patent
`Owner provided the district court trial transcript containing Dr. Short’s direct and cross-
`examination. The joined Petitioners have reviewed the transcript of the trial testimony, and
`believe that Dr. Short was not tested on each of the topics discussed in the declaration that
`Patent Owner now relies on in this proceeding.
`
`Thus, the joined petitioners request authorization for additional discovery for the cross-
`examination of Dr. Short.
`
`Patent Owner’s Position
`Petitioners are not entitled to cross-examine Dr. Short. Dr. Short’s declaration-at-issue here was
`submitted in an inter partes reexamination proceeding nearly four years ago. Moreover, Dr.
`Short has already been questioned in related litigation on the topics discussed in the
`declaration. So, there already has been a fair opportunity to cross-examine Dr. Short. Patent
`Owner even provided the transcript from the district court to Petitioners in an attempt to
`resolve this issue. Patent owner disagrees with Petitioners’ analysis of the transcript and
`believes there is a one-to-one correspondence between the topics covered in the declaration
`and the topics covered in the transcript. So, to the extent the Board considers Petitioners’
`request for additional discovery, Patent Owner requests briefing on the issue.
`
`Should the Board desire to have a conference call, the parties are available at the following
`times this week:
`
`
`Tuesday: 9:30 am-11 am
`Wednesday: 9:30 am-11 am
`1
`
`Petitioners The Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC
`IPR2015-01047 - Ex. 1045, 1
`
`

`
`
`
`Your Honors-
`
`
`The joined Petitioners request a call with the Board to request authorization for additional
`discovery for the cross-examination of a declarant (Dr. Short) whose testimony Patent Owner
`has cited and relies upon in this proceeding.
`
`
`Patent Owner submitted with its Patent Owner response a declaration from a Dr. Short, a
`named inventor on the patent at issue in this proceeding. The declaration was originally
`prepared for an inter partes reexamination proceeding. Patent Owner relies on Dr. Short’s
`declaration for its assertions that secondary considerations exist that support a finding of non-
`obviousness. See Resp. at 29-36.
`
`The joined Petitioners requested that Patent Owner either provide Dr. Short for cross-
`examination or withdraw the declaration. Patent Owner has not agreed to provide Dr. Short for
`cross-examination and has represented that such cross-examination is unnecessary given that
`Dr. Short was questioned in related litigation on topics discussed in the declaration. Patent
`Owner provided the district court trial transcript containing Dr. Short’s direct and cross-
`examination. The joined Petitioners have reviewed the transcript of the trial testimony, and
`believe that Dr. Short was not tested on each of the topics discussed in the declaration that
`Patent Owner now relies on in this proceeding.
`
`Thus, the joined petitioners request authorization for additional discovery for the cross-
`examination of Dr. Short.
`
`
`
`
`
`
`
`
`
`
`
`From: Border, Scott [mailto:sborder@sidley.com]
`Sent: Monday, April 11, 2016 12:37 PM
`To: Zeilberger, Daniel; James Bailey; Wesley C. Meinerding
`Cc: Palys, Joseph E.; Modi, Naveen; Thomas Martin; docketing; Kushan, Jeffrey P.; Broughan III, Thomas A.; Dillon,
`Samuel; Kasdan, Abraham; IP@wiggin.com
`Subject: RE: IPR2015-01046 and IPR2015-01047
`
`Dan-
`
`
`Thank you for providing the trial transcripts that include Dr. Short’s cross-examination. Apple does not agree that these
`transcripts are a proper substitute for the cross-examination of Dr. Short in this proceeding. For example, the cross-
`examination does not test Dr. Short’s opinions related to long-felt need, failure of others, skepticism, or nexus.
`
`
`Consequently, we believe a call with the Board is necessary. Apple has consulted with the other joined petitioners, and
`together the petitioners propose the following email to the Board, which we intend to send in the next hour:
`
`
`Should the Board desire to have a conference call, the parties are available at the following
`times this week:
`
`
`Tuesday: 9:30 am-11 am
`Wednesday: 9:30 am-11 am
` Thursday: 9 am to 11 am
`
`
`2
`
`Petitioners The Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC
`IPR2015-01047 - Ex. 1045, 2
`
`

`
`SCOTT BORDER
`Associate
`
`Sidley Austin LLP
`+1.202.736.8818
`sborder@sidley.com
`
`
`
`From: Zeilberger, Daniel [mailto:danielzeilberger@paulhastings.com]
`Sent: Monday, April 11, 2016 9:45 AM
`To: Border, Scott; James Bailey; Wesley C. Meinerding
`Cc: Palys, Joseph E.; Modi, Naveen; Thomas Martin; docketing; Kushan, Jeffrey P.; Broughan III, Thomas A.;
`Dillon, Samuel; Kasdan, Abraham; IP@wiggin.com
`Subject: RE: IPR2015-01046 and IPR2015-01047
`
`Scott,
`
`Attached is one of the transcripts from Dr. Short’s examination that deals with the topics in the declaration. We
`hope this resolves the issue. Please let us know if it does not. If you intend to still email the Board, please
`provide us with the email you intend to send so that we can make sure our position is adequately reflected.
`
`Regards,
`Dan
`
`From: Border, Scott [mailto:sborder@sidley.com]
`Sent: Friday, April 08, 2016 5:40 PM
`To: Zeilberger, Daniel; James Bailey; Wesley C. Meinerding
`Cc: Palys, Joseph E.; Modi, Naveen; Thomas Martin; docketing; Kushan, Jeffrey P.; Broughan III, Thomas A.;
`Dillon, Samuel; Kasdan, Abraham; IP@wiggin.com
`Subject: RE: IPR2015-01046 and IPR2015-01047
`
`Dan-
`
`Petitioners are willing to wait until 10 AM EST on Monday for service of the Dr. Short deposition transcripts.
`Given the extremely compressed schedule, Petitioners believe that the parties will be at an impasse if service is
`not effected before then, as any further delay will to continue to prejudice Petitioners. Petitioners are willing to
`quickly review the transcripts and will consider withdrawing the request for a deposition of Dr. Short if all of the
`points raised in the declaration filed in this proceeding were appropriately tested during the previous
`depositions. If service is not effected by 10 AM EST, Petitioners will send the request for a teleconference soon
`thereafter and specifically indicate that the parties are at an impasse.
`
`
`SCOTT M. BORDER
`Associate
`
`SIDLEY AUSTIN LLP
`+1 202 736 8818
`sborder@sidley.com
`
`
`
`From: Zeilberger, Daniel [mailto:danielzeilberger@paulhastings.com]
`Sent: Friday, April 08, 2016 3:38 PM
`To: Border, Scott; James Bailey; Wesley C. Meinerding
`Cc: Palys, Joseph E.; Modi, Naveen; Thomas Martin; docketing; Kushan, Jeffrey P.; Broughan III,
`Thomas A.; Dillon, Samuel; Kasdan, Abraham; IP@wiggin.com
`Subject: RE: IPR2015-01046 and IPR2015-01047
`3
`
`Petitioners The Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC
`IPR2015-01047 - Ex. 1045, 3
`
`

`
`
`Scott,
`
`Given that we are checking into the deposition transcript issue and still meeting and conferring on this
`issue, we believe it is premature to send this email to the Board. But we have provided our position and
`availability below if Petitioners would still like to send an email to the Board. Please note that we
`moved one of your proposed sentences into the Petitioner’s position section of the email.
`
`
`Your Honors –
`
`Petitioner’s position: Patent Owner has submitted with its Patent Owner response a declaration
`from a Dr. Short, a named inventor on the patent at issue in this proceeding. Patent Owner
`relies on Dr. Short’s declaration for its assertions that secondary considerations exist that
`support a finding of non-obviousness. See Resp. at 29-36. The joined petitioners have
`requested that Patent Owner provide Dr. Short for cross-examination or withdraw the
`declaration. The joined petitioners request a call with the Board to request authorization for
`additional discovery for the cross-examination of Dr. Short.
`
`Patent Owner’s position: Petitioners are not entitled to cross-examine Dr. Short. Dr. Short’s
`declaration-at-issue here was submitted in an inter partes reexamination proceeding nearly four
`years ago. Moreover, Dr. Short has already been questioned in related litigation on the topics
`discussed in the declaration. So, there already has been a fair opportunity to cross-examine Dr.
`Short. Petitioners’ request for a conference call is also premature as the parties are still meeting
`and conferring on this issue. Patent Owner is looking into Petitioners’ latest request for
`production of the transcripts from the related litigation.
`
`
`Should the Board desire to have a conference call, the parties are available at the following
`times next week:
`
`
`Tuesday: 10 am-11 am
`Wednesday: 10 am-11 am
`
`
`Regards,
`
`Jeff Kushan
`Lead Counsel for Petitioner Apple
`
`
`
`
`
`From: Border, Scott [mailto:sborder@sidley.com]
`Sent: Friday, April 08, 2016 2:31 PM
`To: Border, Scott; Zeilberger, Daniel; James Bailey; Wesley C. Meinerding
`Cc: Palys, Joseph E.; Modi, Naveen; Thomas Martin; docketing; Kushan, Jeffrey P.; Broughan III,
`Thomas A.; Dillon, Samuel; Kasdan, Abraham; IP@wiggin.com
`Subject: RE: IPR2015-01046 and IPR2015-01047
`
`Dan-
`
`Draft email is below – we would like to send to the Board NLT than 3:00 EST.
`
`Your Honors –
`
`
`4
`
`Petitioners The Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC
`IPR2015-01047 - Ex. 1045, 4
`
`

`
`Patent Owner has submitted with its Patent Owner response a declaration from a Dr. Short, a
`named inventor on the patent at issue in this proceeding. Patent Owner relies on Dr. Short’s
`declaration for its assertions that secondary considerations exist that support a finding of non-
`obviousness. See Resp. at 29-36. The joined petitioners have requested that Patent Owner
`provide Dr. Short for cross-examination or withdraw the declaration.
`
`Patent Owner position: [Patent Owner has indicated that it will not provide Dr. Short for cross-
`examination]
`
`The joined petitioners request a call with the Board to request authorization for additional
`discovery for the cross-examination of Dr. Short. The parties are available at the following times
`next week:
`
`
`Monday 10 am –2 pm,
`Tuesday 10 am-12 pm
`Wednesday 10 am-12 pm
`Thursday 10 am-1pm, 2 pm – 4:30 pm
`
`
`Regards,
`
`Jeff Kushan
`Lead Counsel for Petitioner Apple
`
`
`
`SCOTT M. BORDER
`Associate
`
`SIDLEY AUSTIN LLP
`+1 202 736 8818
`sborder@sidley.com
`
`
`
`From: Border, Scott
`Sent: Friday, April 08, 2016 2:05 PM
`To: 'Zeilberger, Daniel'; James Bailey; Wesley C. Meinerding
`Cc: Palys, Joseph E.; Modi, Naveen; Thomas Martin; docketing; Kushan, Jeffrey P.; Broughan III,
`Thomas A.; Dillon, Samuel; Kasdan, Abraham; IP@wiggin.com
`Subject: RE: IPR2015-01046 and IPR2015-01047
`
`Dan-
`
`You’ve indicated that cross-examination is not necessary in this proceeding because Dr. Short
`has already been deposed by Apple in another proceeding. If that is your justification as to why
`you do not need to make Dr. Short available, then you should serve the relevant deposition
`transcripts on each of the Petitioners.
`
`We will send a draft email to the Board shortly.
`
`
`
`SCOTT M. BORDER
`Associate
`
`SIDLEY AUSTIN LLP
`
`5
`
`Petitioners The Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC
`IPR2015-01047 - Ex. 1045, 5
`
`

`
`+1 202 736 8818
`sborder@sidley.com
`
`
`
`From: Zeilberger, Daniel [mailto:danielzeilberger@paulhastings.com]
`Sent: Friday, April 08, 2016 1:41 PM
`To: James Bailey; Wesley C. Meinerding; Border, Scott
`Cc: Palys, Joseph E.; Modi, Naveen; Thomas Martin; docketing; Kushan, Jeffrey P.;
`Broughan III, Thomas A.; Dillon, Samuel; Kasdan, Abraham; IP@wiggin.com
`Subject: RE: IPR2015-01046 and IPR2015-01047
`
`We continue to disagree that a deposition of Dr. Short is warranted. We do not
`understand Apple’s proposal regarding the transcripts. Can you please clarify? If
`Petitioners would like to have a call with the Board, please send us a draft of the email
`Petitioners intend to send so that we can add our position to it. We are trying to
`determine the availability for a call on our end and can add that to the email once you
`send it to us.
`
`Regards,
`Dan
`
`From: James Bailey [mailto:jtb@jtbaileylaw.com]
`Sent: Friday, April 08, 2016 11:24 AM
`To: Wesley C. Meinerding; Border, Scott
`Cc: Zeilberger, Daniel; Palys, Joseph E.; Modi, Naveen; Thomas Martin; docketing;
`Kushan, Jeffrey P.; Broughan III, Thomas A.; Dillon, Samuel; Kasdan, Abraham;
`IP@wiggin.com
`Subject: Re: IPR2015-01046 and IPR2015-01047
`
`Counsel for Mangrove agrees with the positions expressed by Apple and Black Swamp on
`these issues and is available Monday 10 am –2 pm, Tuesday 10 am-4:30 pm; Wednesday 10
`am-1pm, 2 pm – 4:30 pm, and Thursday 10 am-1pm, 2 pm – 4:30 pm
`
`From: "Wesley C. Meinerding" <wmeinerding@martinferraro.com>
`Date: Friday, April 8, 2016 10:49 AM
`To: "Border, Scott" <sborder@sidley.com>
`Cc: "Zeilberger, Daniel" <danielzeilberger@paulhastings.com>, "Palys, Joseph E."
`<josephpalys@paulhastings.com>, "Modi, Naveen" <naveenmodi@paulhastings.com>,
`Thomas Martin <tmartin@martinferraro.com>, docketing
`<docketing@martinferraro.com>, "Kushan, Jeffrey P." <jkushan@sidley.com>,
`"Broughan III, Thomas A." <tbroughan@sidley.com>, "Dillon, Samuel"
`<samuel.dillon@sidley.com>, James Bailey <jtb@jtbaileylaw.com>, "Kasdan, Abraham"
`<AKasdan@wiggin.com>, "IP@wiggin.com" <IP@wiggin.com>
`Subject: RE: IPR2015-01046 and IPR2015-01047
`
`Counsel for Black Swamp LLC is available for a teleconference with the Board at all times
`mentioned below.
`
`
`Best regards,
`
`Wes
`
`
`Wes Meinerding
`Martin & Ferraro, LLP
`
`6
`
`Petitioners The Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC
`IPR2015-01047 - Ex. 1045, 6
`
`

`
`1557 Lake O'Pines Street NE
`Hartville, Ohio 44632
`330.877.8679 Direct
`330.877.2030 FAX
`wmeinerding@martinferraro.com
`
`
`From: Border, Scott [mailto:sborder@sidley.com]
`Sent: Friday, April 08, 2016 10:43 AM
`To: Wesley C. Meinerding; Zeilberger, Daniel
`Cc: Palys, Joseph E.; Modi, Naveen; Thomas Martin; docketing; Kushan, Jeffrey P.;
`Broughan III, Thomas A.; Dillon, Samuel; James Bailey; Kasdan, Abraham;
`IP@wiggin.com
`Subject: RE: IPR2015-01046 and IPR2015-01047
`
`
`Apple agrees with the observations made by Petitioner Black Swamp. We believe those
`are the only two viable paths forward to address concerns raised by Apple and now by
`Black Swamp.
`
`In addition, Apple notes that you have identified cross-examination testimony from Dr.
`Short in another proceeding which is not part of the present record. Given your position
`on that testimony, we assume VirnetX would serve Petitioners with full transcripts
`containing the relevant testimony and support (or would not oppose) the filing of Dr.
`Short’s deposition transcript as an exhibit in this proceeding, if necessary. Please
`confirm that our understanding is correct, and whether VirnetX believes that that
`testimony contains any confidential information that would necessitate entry of a
`protective in this proceeding.
`
`If VirnetX is prepared to neither make Dr. Short available for deposition nor withdraw
`his declaration and strike portions of the patent owner response that rely on that
`testimony, then we believe a call with the Board is required. Apple also believes this
`issue needs to be resolved immediately given the already compressed schedule for
`Petitioners, and will seek a call with the Board this afternoon if Patent Owner does not
`change its position.
`
`
`Thus, by 3:00 EST today, please let us know (i) whether VirnetX will make Dr. Short
`available for deposition or if it agrees to withdraw the declaration and associated
`portions of the patent owner response, and (ii) what dates you are available for a call
`with the Board on Monday, Tuesday, or Wednesday or Thursday of next week. In
`addition, counsel for Black Swamp and Mangrove, please advise as to your availability
`on those dates.
`
`
`
`SCOTT M. BORDER
`Associate
`
`SIDLEY AUSTIN LLP
`+1 202 736 8818
`sborder@sidley.com
`
`
`
`From: Wesley C. Meinerding [mailto:wmeinerding@martinferraro.com]
`Sent: Thursday, April 07, 2016 9:49 AM
`To: Zeilberger, Daniel
`Cc: Palys, Joseph E.; Modi, Naveen; Thomas Martin; docketing; Border, Scott; Kushan,
`Jeffrey P.; Broughan III, Thomas A.; Dillon, Samuel; James Bailey; Kasdan, Abraham;
`
`7
`
`Petitioners The Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC
`IPR2015-01047 - Ex. 1045, 7
`
`

`
`IP@wiggin.com
`Subject: FW: IPR2015-01046 and IPR2015-01047
`
`
`Counsel,
`
`It is clear that Patent Owner has substantively relied on upon Dr. Short’s declaration to
`support the Patent Owner’s Response in IPR2015-01047. Furthermore, it is noted that
`Petitioner Black Swamp LLC has not had any opportunity to depose Dr. Short.
`Therefore, Petitioner Black Swamp LLC sees two alternatives going forward: (1) Patent
`Owner makes Dr. Short available for a deposition by the joined Petitioners, or (2) Patent
`Owner withdraws Dr. Short’s declaration from IPR2015-01047.
`
`
`Counsel for Petitioner Black Swamp IP is available to discuss this issue with the Board.
`
`
`Best regards,
`
`
`Wes
`
`
`Wes Meinerding
`Martin & Ferraro, LLP
`1557 Lake O'Pines Street NE
`Hartville, Ohio 44632
`330.877.8679 Direct
`330.877.2030 FAX
`wmeinerding@martinferraro.com
`
`
`From: Zeilberger, Daniel [mailto:danielzeilberger@paulhastings.com]
`Sent: Wednesday, April 06, 2016 6:00 PM
`To: Border, Scott; Palys, Joseph E.
`Cc: Thomas Martin; James Bailey; Kushan, Jeffrey P.; Broughan III, Thomas A.; Kasdan,
`Abraham; IP@wiggin.com; docketing; Modi, Naveen; Dillon, Samuel
`Subject: RE: IPR2015-01046 and IPR2015-01047
`
`
`Scott,
`
`
`We disagree that a new deposition is warranted. You have already had a fair
`opportunity to challenge Dr. Short’s declaration multiple times. In fact, Apple cross-
`examined and deposed Dr. Short in litigation after the declaration was submitted. Apple
`even questioned him on the topics discussed in the declaration.
`
`
`Regards,
`Dan
`
`
`From: Border, Scott [mailto:sborder@sidley.com]
`Sent: Tuesday, April 05, 2016 6:15 PM
`To: Zeilberger, Daniel; Palys, Joseph E.
`Cc: Thomas Martin; James Bailey; Kushan, Jeffrey P.; Broughan III, Thomas A.; Kasdan,
`Abraham; IP@wiggin.com; docketing; Modi, Naveen; Dillon, Samuel
`Subject: RE: IPR2015-01046 and IPR2015-01047
`
`
`Dan-
`
`
`Patent Owner directly and substantively relies on Dr. Short’s declaration for its
`assertions that secondary considerations exist that support a finding of non-
`
`8
`
`Petitioners The Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC
`IPR2015-01047 - Ex. 1045, 8
`
`

`
`obviousness, so Petitioners should be offered a fair opportunity to challenge the
`testimony in the declaration. See, e.g., Mexichem Amanco Holdings S.A. de C.V v.
`Honeywell Int’l, Inc., Case, IPR2013-00576, Paper 36 (PTAB Sept. 5, 2014).
`
`
`Thanks,
`Scott
`
`
`
`
`SCOTT M. BORDER
`Associate
`
`SIDLEY AUSTIN LLP
`+1 202 736 8818
`sborder@sidley.com
`
`
`
`From: Zeilberger, Daniel [mailto:danielzeilberger@paulhastings.com]
`Sent: Tuesday, April 05, 2016 1:26 PM
`To: Border, Scott; Palys, Joseph E.
`Cc: Thomas Martin; James Bailey; Kushan, Jeffrey P.; Broughan III, Thomas A.; Kasdan,
`Abraham; IP@wiggin.com; docketing; Modi, Naveen; Dillon, Samuel
`Subject: RE: IPR2015-01046 and IPR2015-01047
`
`
`Scott,
`
`
`We have been considering your request regarding Dr. Short’s deposition. As you know,
`Ex. 2050 was submitted in inter partes reexamination control nos. 95/001,714,
`95/001,697. As such, please let us know on what basis Petitioners believe a deposition
`of Dr. Short is warranted or required.
`
`
`As to the deposition of Dr. Monrose, we can now confirm the 8 am start time on April
`28.
`
`
`Regards,
`Dan
`
`
`From: Zeilberger, Daniel
`Sent: Monday, April 04, 2016 7:12 PM
`To: 'Border, Scott'; Palys, Joseph E.
`Cc: Thomas Martin; James Bailey; Kushan, Jeffrey P.; Broughan III, Thomas A.; Kasdan,
`Abraham; IP@wiggin.com; docketing; Modi, Naveen; Dillon, Samuel
`Subject: RE: IPR2015-01046 and IPR2015-01047
`
`
`Scott,
`
`
`We are awaiting confirmation from Dr. Monrose, but we don’t expect an 8 am start time
`to be a problem. As with the deposition of Dr. Guerin, we are willing to go a reasonable
`time beyond seven hours, if necessary.
`
`
`We are still considering your request as to Dr. Short, and will get back to you by
`tomorrow.
`
`
`Regards,
`
`9
`
`Petitioners The Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC
`IPR2015-01047 - Ex. 1045, 9
`
`

`
`Dan
`
`
`From: Border, Scott [mailto:sborder@sidley.com]
`Sent: Monday, April 04, 2016 5:30 PM
`To: Zeilberger, Daniel; Palys, Joseph E.
`Cc: Thomas Martin; James Bailey; Kushan, Jeffrey P.; Broughan III, Thomas A.; Kasdan,
`Abraham; IP@wiggin.com; docketing; Modi, Naveen; Dillon, Samuel
`Subject: RE: IPR2015-01046 and IPR2015-01047
`
`
`Dan-
`
`
`April 28 in Washington, D.C. will work for Petitioners for the deposition of Dr. Monrose
`in IPR2015-01046 and IPR2015-01047. To ensure that we can fit the deposition into a
`single day, we propose that we begin, as we did with Dr. Guerin, at 8:00 A.M. and
`continue to a reasonable time beyond seven hours for cross-examination, if necessary.
`
`
`Also, as a reminder, please provide dates that Dr. Short can be available for a deposition
`in IPR2015-1047.
`
`
`Thanks,
`Scott
`
`
`
`
`SCOTT M. BORDER
`Associate
`
`SIDLEY AUSTIN LLP
`+1 202 736 8818
`sborder@sidley.com
`
`
`
`From: Zeilberger, Daniel [mailto:danielzeilberger@paulhastings.com]
`Sent: Monday, April 04, 2016 9:43 AM
`To: Border, Scott; Palys, Joseph E.
`Cc: Thomas Martin; James Bailey; Kushan, Jeffrey P.; Broughan III, Thomas A.; Kasdan,
`Abraham; IP@wiggin.com; docketing; Modi, Naveen; Dillon, Samuel
`Subject: RE: IPR2015-01046 and IPR2015-01047
`
`
`Scott,
`
`
`Further to our telephone call last week regarding your email below, please confirm
`whether April 28 or April 29 will work for the Petitioners. As discussed, Patent Owner
`and Petitioner Apple will then reschedule Dr. Monrose’s deposition in the IPR2015-
`01009 and IPR2015-01010 matters for mid-May.
`
`
`Regards,
`Dan
`
`
`From: Border, Scott [mailto:sborder@sidley.com]
`Sent: Friday, March 25, 2016 9:39 AM
`To: Palys, Joseph E.
`Cc: Thomas Martin; James Bailey; Kushan, Jeffrey P.; Broughan III, Thomas A.; Kasdan,
`Abraham; IP@wiggin.com; docketing; Modi, Naveen; Zeilberger, Daniel; Dillon, Samuel
`Subject: IPR2015-01046 and IPR2015-01047
`10
`
`Petitioners The Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC
`IPR2015-01047 - Ex. 1045, 10
`
`

`
`
`Joe-
`
`
`Please let the Petitioners know if Dr. Monrose can be available for either April 25 or
`April 26 in Washington D.C. for a single day of deposition in the IPR2015-01046 and
`IPR2015-01047 proceedings.
`
`
`
`
`
`
`
`
`
`******************************************************************
`**********************************
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`11
`
`Petitioners The Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC
`IPR2015-01047 - Ex. 1045, 11
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`

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`12
`
`Petitioners The Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC
`IPR2015-01047 - Ex. 1045, 12