From:
`Sent:
`To:
`
`Cc:
`
`Subject:
`
`Bender, James (DC)
`Monday, July 04, 2016 5:19 PM
`Steve Kelber; Gross, Gabe (SV); ncristler@cristlerip.com; fkiblawi@sughrue.com;
`wmandir@sughrue.com; pspark@sughrue.com
`pmorton@cooley.com; dallen@cooley.com; dori.hines@finnegan.com;
`luke.mccammon@finnegan.com; #C-M APPLE-GLOBAL TOUCH - LW TEAM; Susan
`Hoover
`RE: Global Touch IPRs: Case Nos. IPR2015-01171, IPR2015-01172, IPR2015-01173,
`IPR2015-01174, IPR2015-01175, IPR2015-01603, IPR2015-01616
`
`Steve,
`
`
`Thank you. Petitioners have filed corrected replacement declarations in all seven cases. We have notified Mr. Beard
`that the deposition is cancelled and have cancelled our travel plans.
`
`
`Best,
`James
`
`
`
`From: Steve Kelber [mailto:steve@kelberlawgroup.com]
`Sent: Monday, July 04, 2016 11:15 AM
`To: Bender, James (DC); Gross, Gabe (SV); ncristler@cristlerip.com; fkiblawi@sughrue.com; wmandir@sughrue.com;
`pspark@sughrue.com
`Cc: pmorton@cooley.com; dallen@cooley.com; dori.hines@finnegan.com; luke.mccammon@finnegan.com; #C-M APPLE-
`GLOBAL TOUCH - LW TEAM; Susan Hoover
`Subject: RE: Global Touch IPRs: Case Nos. IPR2015-01171, IPR2015-01172, IPR2015-01173, IPR2015-01174, IPR2015-
`01175, IPR2015-01603, IPR2015-01616
`
`Counsel:
`
`We understand it is Petitioners’ intention to replace certain declarations in the referenced proceedings with the papers
`served. On that basis, and that basis only, the deposition of Paul Beard previously scheduled for July 7 is cancelled. Will
`you be taking action to that effect?
`
`Reference is had in the email below to ‘the Board’s order.” To the best of my knowledge, no Order has been issued. If
`you are referring to anything other than the transcript of the conference call, please send it along. Many thanks.
`
`Steven B. Kelber
`The Kelber Law Group, LLC
`1875 Eye Street, N.W.
`Suite 500
`Washington, D.C. 20006
`240-506-6702
`steve@kelberlawgroup.com
`
`From: James.Bender@lw.com [mailto:James.Bender@lw.com]
`Sent: Sunday, July 03, 2016 5:15 PM
`To: Steve Kelber; Gabe.Gross@lw.com; ncristler@cristlerip.com; fkiblawi@sughrue.com; wmandir@sughrue.com;
`1
`
`Ex. 1039-0001
`
`

`
`pspark@sughrue.com
`Cc: pmorton@cooley.com; dallen@cooley.com; dori.hines@finnegan.com; luke.mccammon@finnegan.com; #C-MAPPLE-
`GLOBALTOUCH.LWTEAM@lw.com; Susan Hoover
`Subject: RE: Global Touch IPRs: Case Nos. IPR2015-01171, IPR2015-01172, IPR2015-01173, IPR2015-01174, IPR2015-
`01175, IPR2015-01603, IPR2015-01616
`
`Steve,
`
`Attached are the corrected declarations. Per the Board’s order, the only change is the addition of the perjury
`acknowledgment on the last page of each declaration. We plan to file these shortly. If you intend to go forward with
`the deposition, please let us know by 11am Eastern tomorrow morning. We will notify Mr. Beard and cancel our travel
`plans if we have not heard from you by then.
`
`You state that the “normal practice set forth in the Rules is for Petitioners to serve supplemental evidence in response
`to an Objection to Evidence. You have eschewed that remedy.” This is incorrect. We timely served supplemental
`evidence in response to each of Global Touch’s objections. You also refer to “direct testimony that is going to be
`replaced.” This is again incorrect. As you well know, these merely make a clerical correction, as authorized by the
`Board, and do not replace any part of Mr. Beard’s testimony. And you refer to the Microsoft proceedings. This is
`irrelevant. What happens in those proceedings, which involve a different expert, has nothing to do with the IPRs filed by
`Petitioners.
`
`Best,
`James
`-----Original Message-----
`From: Steve Kelber [mailto:steve@kelberlawgroup.com]
`Sent: Sunday, July 03, 2016 11:16 AM
`To: Gross, Gabe (SV); Bender, James (DC); ncristler@cristlerip.com; fkiblawi@sughrue.com; wmandir@sughrue.com;
`pspark@sughrue.com
`Cc: pmorton@cooley.com; dallen@cooley.com; dori.hines@finnegan.com; luke.mccammon@finnegan.com; #C-M
`APPLE-GLOBAL TOUCH - LW TEAM; Susan Hoover
`Subject: RE: Global Touch IPRs: Case Nos. IPR2015-01171, IPR2015-01172, IPR2015-01173, IPR2015-01174, IPR2015-
`01175, IPR2015-01603, IPR2015-01616
`
`Counsel:
`
` I
`
` am not sure what rights and remedies you are reserving. Perhaps it does not matter.
`We are not deposing Mr. Beard in Montana on June 7, 2016 because you have indicated you are replacing the
`Declarations currently of record that are the basis for our Notices of Deposition. The normal practice set forth in the
`Rules is for Petitioners to serve supplemental evidence in response to an Objection to Evidence. You have eschewed that
`remedy and stated your intention to replace the Declarations of record but not provided us copies of the replacement
`Declarations you advised the Board you were going to file. To the best of my knowledge, they have not been filed,
`either.
`
`On that basis, it seems pointless to take a deposition on cross-examination of direct testimony that is going to be
`replaced. When and if you file the replacement Declarations Petitioners have indicated will be filed, we will make a
`determination at that time whether to seek cross-examination under Rule 53. We make this observation specifically in
`light of the events in the corresponding IPRs instituted by Microsoft and related parties. In those proceedings, we
`objected to declarations by Petitioners' expert on the same grounds we objected to Mr. Beard's declarations. Petitioners
`served supplemental evidence as provided for in the rules. The supplemental evidence was flawed in various ways, and
`cross-examination ensued. Petitoners in those IPRs, realizing AFTER the depositions were taken and expressly in light of
`the answers Declarant Horenstein provided, that the supplemental evidence was more flawed than the original evidence
`they sought to supplement, now wish to replace all Declarations - essentially nullifying the cross-examination and the
`incredible cost of proceeding in such a fashion. We do not wish to duplicate the even more expensive process here.
`2
`
`Ex. 1039-0002
`
`

`
`
`Accordingly - if you agree to proceed with the original Reply Declarations objected to, supplemented as you already
`have, we will go forward with the deposition on the 7th. I note in this respect that you have no obligation to replace
`those declarations, this is a solution of your choosing, not Patent Owner's. If however you are going to replace those
`declarations, we will wait until we have a chance to review the replacement Declarations before making a decision to
`depose Mr. Beard.
`
` I
`
` look forward to your answer on whether you will rely on the documents you have already prepared and served, or on
`replacement documents.
`
`Have a very good Fourth of July everyone. Be safe.
`
`Steven B. Kelber
`The Kelber Law Group, LLC
`1875 Eye Street, N.W.
`Suite 500
`Washington, D.C. 20006
`240-506-6702
`steve@kelberlawgroup.com
`
`-----Original Message-----
`From: Gabe.Gross@lw.com [mailto:Gabe.Gross@lw.com]
`Sent: Saturday, July 02, 2016 11:40 PM
`To: Steve Kelber; James.Bender@lw.com; ncristler@cristlerip.com; fkiblawi@sughrue.com; wmandir@sughrue.com;
`pspark@sughrue.com
`Cc: pmorton@cooley.com; dallen@cooley.com; dori.hines@finnegan.com; luke.mccammon@finnegan.com; #C-
`MAPPLE-GLOBALTOUCH.LWTEAM@lw.com
`Subject: RE: Global Touch IPRs: Case Nos. IPR2015-01171, IPR2015-01172, IPR2015-01173, IPR2015-01174, IPR2015-
`01175, IPR2015-01603, IPR2015-01616
`
`Dear Steve:
`
`We take this as confirmation that Global Touch will not be deposing Mr. Beard on his reply declarations. We will advise
`Mr. Beard and cancel our travel plans. As I mentioned before, Petitioners reserve all rights and remedies, including the
`right to recover their travel and other costs and expenses incurred in connection with the deposition you have
`unilaterally canceled.
`
`Yours,
`
`Gabe
`
`________________________________
`From: Steve Kelber <steve@kelberlawgroup.com>
`Sent: Saturday, July 2, 2016 1:29:45 PM
`To: Gross, Gabe (SV); Bender, James (DC); ncristler@cristlerip.com; fkiblawi@sughrue.com; wmandir@sughrue.com;
`pspark@sughrue.com
`Cc: pmorton@cooley.com; dallen@cooley.com; dori.hines@finnegan.com; luke.mccammon@finnegan.com; #C-M
`APPLE-GLOBAL TOUCH - LW TEAM
`Subject: RE: Global Touch IPRs: Case Nos. IPR2015-01171, IPR2015-01172, IPR2015-01173, IPR2015-01174, IPR2015-
`01175, IPR2015-01603, IPR2015-01616
`
`Gabe:
`
`3
`
`Ex. 1039-0003
`
`

`
`
`Lots of words, but I thought the issue was simple. You are not adding declarations, you are replacing them with new
`ones. So it would be silly to conduct a deposition on a Declaration that is being replaced, no?
`
`Steven B. Kelber
`The Kelber Law Group, LLC
`1875 Eye Street, N.W.
`Suite 500
`Washington, D.C. 20006
`240-506-6702
`steve@kelberlawgroup.com
`
`From: Gabe.Gross@lw.com [mailto:Gabe.Gross@lw.com]
`Sent: Saturday, July 02, 2016 4:01 PM
`To: Steve Kelber; James.Bender@lw.com; ncristler@cristlerip.com; fkiblawi@sughrue.com; wmandir@sughrue.com;
`pspark@sughrue.com
`Cc: pmorton@cooley.com; dallen@cooley.com; dori.hines@finnegan.com; luke.mccammon@finnegan.com; #C-
`MAPPLE-GLOBALTOUCH.LWTEAM@lw.com
`Subject: RE: Global Touch IPRs: Case Nos. IPR2015-01171, IPR2015-01172, IPR2015-01173, IPR2015-01174, IPR2015-
`01175, IPR2015-01603, IPR2015-01616
`
`Dear Steve:
`
`While it's certainly within your client's discretion to cancel the July 7, 2016 second deposition it demanded of
`Petitioner's expert witness, Petitioners do not agree that the witness will necessarily be made available at any other
`time, or that the deposition can be unilaterally "deferred" by you until some later date. Petitioners also do not agree to
`extend Due Date 4 beyond the previously agreed extension to July 11. Expert witness Mr. Beard already accommodated
`your schedule changes more than once to schedule this deposition, and has pre-arranged plans to travel abroad
`beginning July 9. He made himself available for a second deposition as scheduled on July 7 at your insistence. By
`choosing not to depose him again on July 7, you and your client appear to be voluntarily forgoing the opportunity to
`take this deposition.
`
`Moreover, you have not provided any legitimate reason why the deposition should be or can be deferred. The Board
`concluded only that Petitioners have leave to file corrected expert declarations for a ministerial reason that has no
`impact on the substance or content of Mr. Beard's opinions. These corrections will simply add the acknowledgement
`that he stated his opinions under penalty of perjury (opinions which you and your client have known about for weeks
`and months, deposed him about once already, and have addressed in your papers). You already have had the chance to
`confirm the clerical nature of the corrections, having received three corrected declarations from Mr. Beard, in response
`to your three objections on the same issue. And Petitioners would serve you with the additional corrected declarations
`before the July 7 deposition, if it were to proceed. After listening to both your and your co-counsel's arguments
`attempting to prevent these corrections from being made, Judge Shaw at the hearing was clear and unequivocal in her
`ruling rejecting your position:
`
`"The Panel is going to allow the petitioners permission to file the corrected expert declarations, adding only the
`inadvertently omitted penalty of perjury acknowledgement as discussed between the parties."
`
`Judge Shaw noted your further protestations for the record and concluded the hearing without any change to the
`Panel's conclusions. Your attempt to suggest that the Board having not "posted" a written order confirming Judge
`Shaw's ruling somehow permits you and your client to defer and reschedule the noticed deposition is not well taken.
`Petitioners reserve all rights and remedies, including the right to recover their travel and other costs and expenses
`necessarily incurred in connection with the deposition you have unilaterally canceled.
`
`
`4
`
`Ex. 1039-0004
`
`

`
`Yours,
`
`Gabe
`
`Gabriel S. Gross
`
`LATHAM & WATKINS LLP
`140 Scott Drive | Menlo Park, CA 94025
`T: +1.650.463.2628 | M: +1.650.868.4223
`
`
`
`From: Steve Kelber [mailto:steve@kelberlawgroup.com]
`Sent: Saturday, July 02, 2016 7:32 AM
`To: Bender, James (DC); ncristler@cristlerip.com<mailto:ncristler@cristlerip.com>;
`fkiblawi@sughrue.com<mailto:fkiblawi@sughrue.com>; wmandir@sughrue.com<mailto:wmandir@sughrue.com>;
`pspark@sughrue.com<mailto:pspark@sughrue.com>
`Cc: pmorton@cooley.com<mailto:pmorton@cooley.com>; dallen@cooley.com<mailto:dallen@cooley.com>;
`dori.hines@finnegan.com<mailto:dori.hines@finnegan.com>;
`luke.mccammon@finnegan.com<mailto:luke.mccammon@finnegan.com>; #C-M APPLE-GLOBAL TOUCH - LW TEAM
`Subject: RE: Global Touch IPRs: Case Nos. IPR2015-01171, IPR2015-01172, IPR2015-01173, IPR2015-01174, IPR2015-
`01175, IPR2015-01603, IPR2015-01616
`
`Counsel:
`
`Given that a Deposition in certain of the above-captioned proceedings had been scheduled by agreement for
`Wednesday in advance of Petitioners' request to alter all Declarations filed by Petitioners in those cases; given that the
`Board, as of the cob Friday had not yet posted its order in these matters; given that Petitioners have not yet served the
`replacement declarations in these matters and the likelihood that Patent Owner will request rehearing of the
`anticipated Order - all of which will impact the proposed deposition, Patent Owner is withdrawing its Notice of
`Deposition and deferring any deposition of Paul Beard until the Declarations Petitioners will rely on are made of record
`and the rationale for the substitution of those records is of record as well.
`Thank you for your attention to this matter.
`
`Steven B. Kelber
`The Kelber Law Group, LLC
`1875 Eye Street, N.W.
`Suite 500
`Washington, D.C. 20006
`240-506-6702
`steve@kelberlawgroup.com<mailto:steve@kelberlawgroup.com>
`
`________________________________
`________________________________
`This email may contain material that is confidential, privileged and/or attorney work product for the sole use of the
`intended recipient. Any review, reliance or distribution by others or forwarding without express permission is strictly
`prohibited. If you are not the intended recipient, please contact the sender and delete all copies.
`
`Latham & Watkins LLP
`________________________________
`------------------------------------------------------------------------------
`
`5
`
`Ex. 1039-0005
`
`

`
`This email may contain material that is confidential, privileged and/or attorney work product for the sole use of the
`intended recipient. Any review, reliance or distribution by others or forwarding without express permission is strictly
`prohibited. If you are not the intended recipient, please contact the sender and delete all copies.
`
`Latham & Watkins LLP
`------------------------------------------------------------------------------
`
`
`This email may contain material that is confidential, privileged and/or attorney work product for the sole use of the
`intended recipient. Any review, reliance or distribution by others or forwarding without express permission is strictly
`prohibited. If you are not the intended recipient, please contact the sender and delete all copies.
`
`Latham & Watkins LLP
`
`6
`
`Ex. 1039-0006