`
`Garrett, Mark <mark.garrett@nortonrosefulbright.com>
`Monday, October 03, 2016 3:35 PM
`Justin Nemunaitis; Robinson, Eagle
`Mike Ray; Lori Gordon; Kyle E. Conklin; Hamad Hamad
`RE: Rapid IPRs joinder issue
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Justin,
`
`The requested information is not relevant to the material fact that Petitioners were not aware of the Lane‐Wells
`reference prior to June 20, 2016. Further, much if not all of the requested information is protected work product and/or
`attorney‐client privileged. Finally, there was no information inconsistent with any positions advanced in the joinder
`motions.
`
`Moreover, the requested information concerns estoppel, which is not at issue. In the joinder motions, the June 20, 2016
`date gives the Board context about the filing dates of the July IPRs. And the point about skilled searchers not finding the
`Lane‐Wells reference was included to (1) make clear that Petitioners would contest any assertion by Rapid Completions
`(“RC”) that Petitioners’ July IPRs should be subject to estoppel, in the event that (2) RC elects to argue that the schedule
`should not be extended because Petitioners’ July IPRs might not survive estoppel.
`
`There is no need to litigate (1) at this time and, for (2), the district court has now stayed the litigation through the
`completion of all the IPRs, including Weatherford’s.
`
`Regards,
`‐ Mark
`
`From: Justin Nemunaitis [mailto:jnemunaitis@caldwellcc.com]
`Sent: Thursday, September 29, 2016 12:24 AM
`To: Garrett, Mark; Robinson, Eagle
`Cc: Mike Ray; Lori Gordon; Kyle E. Conklin; Hamad Hamad
`Subject: RE: Rapid IPRs joinder issue
`
`Mark,
`
`Assuming your motion is even possible under the statute, it would inject delay and complexity based on a proceeding
`that has not been instituted. If your goal is logistical (e.g., minimizing depositions or something like that) I am happy to
`discuss those issues to try to find a compromise that does not involve formal joinder. However, it looks like your real
`goal is to circumvent statutory safeguards designed to protect patentees from harassment through excessive IPR
`filings. If that’s the case, I doubt there is any room for compromise.
`
`Regards,
`Justin
`
`From: Garrett, Mark [mailto:mark.garrett@nortonrosefulbright.com]
`Sent: Wednesday, September 28, 2016 11:17 AM
`To: Justin Nemunaitis <jnemunaitis@caldwellcc.com>; Robinson, Eagle <eagle.robinson@nortonrosefulbright.com>
`Cc: Mike Ray <MRAY@skgf.com>; Lori Gordon <LGORDON@skgf.com>; Kyle E. Conklin <KCONKLIN@skgf.com>; Hamad
`Hamad <hhamad@caldwellcc.com>
`Subject: RE: Rapid IPRs joinder issue
`
`1
`
`Rapid Completions LLC
`Exhibit 2003
`
`
`
`
`Justin, we’ll consider your requests.
`
`
`Setting these assertions aside, what is the basis for RC’s opposition to joinder?
`
`
`Thanks,
`‐ Mark
`
`
`From: Justin Nemunaitis [mailto:jnemunaitis@caldwellcc.com]
`Sent: Wednesday, September 28, 2016 10:56 AM
`To: Garrett, Mark; Robinson, Eagle
`Cc: Mike Ray; Lori Gordon; Kyle E. Conklin; Hamad Hamad
`Subject: Rapid IPRs joinder issue
`
`
`Mark and Eagle,
`
`
`Your motions for joinder make a number of factual assertions, for which no supporting evidence has been provided. We
`need to see that evidence to have a fair chance at responding. Specifically, your motion in the 774 IPR states:
`
`
`"Petitioners became aware of Lane‐Wells on or around June 20, 2016." Mot. at 2.
`
`
`"For example, none of multiple, diligent searches conducted by skilled, professional searchers prior to filing the 598
`Proceeding discovered Lane‐Wells. . . ." Mot. at 5‐6.
`
`
`These assertions beg the question, if Petitioners conducted multiple diligent searches for prior art, and those searches
`did not locate Lane‐Wells, how did Petitioners ultimately locate Lane Wells? Stated differently, if Petitioners were able
`to locate Lane Wells on June 20, 2016, why did it not locate it earlier? We need your answers to these questions in
`order to respond to your position that qualified searchers interested in the subject matter of the 774 patent could not
`be expected to locate Lane‐Wells even if they had exercised reasonable diligence.
`
`In answering these questions, please also explain:
`Who are the "skilled, professional searchers" referred to in your motion? What types of searches did they perform?
`Who ultimately found Lane‐Wells? How did he/she find it? Did he/she perform a different type of search? If so, what
`was that search and why was it not performed earlier?
`Alternatively, did the person that located Lane‐Wells obtain assistance from a person or other source that directed
`him/her to look for information about Lane‐Wells tools? If so, please let us know what the source was, what
`information it provided in this regard, and when. Also, why did Petitioners not contact that source earlier or act on the
`information provided earlier?
`
`In addition, pursuant to 37 CFR 42.51(b)(1)(iii), we request production of all relevant information that is inconsistent
`with your positions.
`
`
`Please provide the requested information by 5pm next Tuesday. If do not intend to provide some portion of the
`requested information, or if you need more time, please let us know sooner so we have time to try to work something
`out. For example, I tried to keep this request at a high level, but if you believe it calls for privileged information, work‐
`product, or joint defense materials, please just let me know so we can try to get the information we need for our
`response without getting into a more complicated dispute over those issues.
`
`I am in trial this week, but please let me know if you'd like to schedule a call to discuss any of this.
`
`
`Thanks,
`Justin
`
`
`2
`
`
`
`
`Justin Nemunaitis ||| Caldwell Cassady & Curry
`2101 Cedar Springs Road, Suite 1000, Dallas, TX 75201
`Direct Line: 214.888.4853
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`Fax Line: 214.888.4849
`
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