`
`From: Marlee Jansen [mailto:mjansen@hansenreynolds.com]
`Sent: Thursday, July 27, 2017 8:19 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Chad Nydegger <CNydegger@WNLaw.com>; David R. Todd <DTodd@WNLaw.com>; Brittany
`Frandsen <BFrandsen@WNLaw.com>; Thomas Reynolds <treynolds@hansenreynolds.com>; Jeremy
`Adelson <jadelson@hansenreynolds.com>
`Subject: IPR2016-01822 Petitioners' Request for Authorization To File Motion for Additional
`Discovery
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`Dear Patent Trial and Appeal Board:
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`Petitioners Natus Medical Inc., Natus Neurology Inc., Embla Systems LLC, and Embla Systems
`LTD respectfully request authorization to file a motion for additional discovery under 37 C.F.R.
`42.51 and/or a conference with the tribunal regarding the same. In its Response, Patent Owner
`Nox and its expert, Mr. Alan Oslan, rely on a "RIP signal assessment" for the proposition that
`Patent Owner's failures in achieving the benefits of the claimed invention are objective
`evidence of non-obviousness. (PO Response at 46-60 & Ex. 2015). This "assessment" is
`purportedly based on nine years' worth of RIP studies performed "in cooperation with
`the University Hospital of Iceland and Nox Medical" and was apparently prepared and
`issued by one or more employees of Nox.
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`Nox has not provided any data underlying the assessment. Nor has it provided the
`methodology of the studies, including information regarding who conducted the study, which
`recording devices were used, what criteria were used to include or exclude data, etc. This
`information is necessary to evaluate the assessment and Nox's reliance thereon. Thus, Natus
`seeks discovery in the form of the attached 13 document requests and 10 interrogatories as
`well as the depositions of the author of the assessment (Nox employee Jon Skirnir
`Agustsson) and the individual who appears to have been responsible for collecting and
`providing the data (Erna Arnardottir, apparently working for both Nox and the hospital). We
`note that 37 C.F.R. 42.65 favors the disclosure of the underlying facts and data on which
`expert testimony is based. In the related litigation, Nox's expert has testified that he has no
`knowledge regarding how the test was performed or how the data was generated and
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`analyzed beyond the representations in Exhibit 2015, which is Nox's summary.
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`In addition, Mr. Oslan relies on conversations with Nox employees Mr. Sveinbjorn Hoskuldsson
`adn Mr. Petur Halldorsson in his expert report. While Mr. Hoskuldsson has submitted a
`declaration in the IPR and is subject to deposition regarding that as a matter of routine
`discovery, we seek to depose both Mr. Hoskuldsson and Mr. Halldorsson regarding the
`communications reflected in Mr. Oslan's declaration (Ex. 2013) at, for example, pages 63-80.
`Nox has indicated willingness to produce Mr. Hoskuldsson for deposition regarding these
`communications, but not Mr. Halldorsson.
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`

`

`The Garmin factors weigh in favor of this discovery, which is not seeking Nox's litigation
`position, cannot be obtained through other means, is easily understood, and is limited in
`scope and not unduly burdensome.
`
`Petitioners respectfully request authorization to file a motion. In the alternative, Petitioners
`respectfully request a brief telephonic conference before the tribunal.
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`
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`Very truly yours,
`
`Marlee A. Jansen
`
`Counsel for Petitioners
`
`Marlee A. Jansen
`ATTORNEY AT LAW
`612-810-4269
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`316 N. MILWAUKEE ST., STE 200, MILWAUKEE WI 53202
`TEL: 612.810.4269
`EMAIL: mjansen@hansenreynolds.com
`www.hansenreynolds.com
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