Krickl, Lauren
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Warren McCarty <wmccarty@caldwellcc.com>
`Monday, May 2, 2016 10:03 AM
`Morton, Phillip; windycity@caldwellcc.com
`McBride, John W.; Yang, Irene; Cederoth, Richard A.; Keefe, Heidi
`RE: Windy City v. Facebook / Microsoft - Request to Identify Asserted Claims
`
`Hi Phillip,
`
`It seems like you are determined to burden the Court with this issue. While Windy City would prefer not to bring case-
`narrowing disputes like this to the Court (especially now, when the dispute is in its infancy and the parties have not even
`discussed it via telephone), we cannot agree to drop 95% of claims and serve some form of final claim elections to
`Defendants in a matter of days. As I stated before, we would be more than willing to discuss a limit on the number of
`claims that are asserted in Windy City's infringement contentions (assuming we get some form of reciprocity from
`Defendants). But it's now clear that narrowing the case isn't your goal; it appears that you just want Windy City to tell
`you which 40 claims to IPR. Besides being procedurally improper, your proposal is just way too late. You could have
`raised this months ago, but you guys ignored this issue for something like 320 days, only now to demand that Windy City
`bail you out and enter into this one-sided agreement. Your proposal is impractical, and actually has little to do with
`narrowing the district court case.
`
` do appreciate your offer to allow Windy City's experts to review source code before discovery opens in this case. I think
`that's a great idea. As I'm sure you will understand, it is unworkable to negotiate a protective order, get all parties to
`sign off on that order, hire source code reviewers, disclose those reviewers to Defendants and get them cleared, make
`them available to review code, send them across the country to different facilities to review code, analyze the code, and
`make these near-final elections, all in a matter of days. That process takes months. I think we can go ahead and start
`working on a protective order, though. Maybe we can shoot for some early source code review days in July before
`infringement contentions are due.
`
`In short, if you are dead-set on filing your motion, then please mark Windy City as opposed. If, on the other hand, you'd
`like to have a productive discussion about reducing the number of claims and prior art in this case, I would be happy to
`do so. I am available in my office today at 5pm central, or generally tomorrow morning. Just let everyone know if/when
`you plan on calling so we can get someone from Microsoft on the line too.
`
`Thanks,
`Warren
`
`-----Original Message-----
`From: Morton, Phillip [mailto:pmorton@cooley.com]
`Sent: Saturday, April 30, 2016 6:03 AM
`To: Warren McCarty <wmccarty@caldwellcc.com>; windycity@caldwellcc.com
`Cc: McBride, John W. <jwmcbride@sidley.com>; Yang, Irene <irene.yang@sidley.com>; Cederoth, Richard A.
`<rcederoth@sidley.com>; Keefe, Heidi <hkeefe@cooley.com>
`Subject: Re: Windy City v. Facebook / Microsoft - Request to Identify Asserted Claims
`
`Warren-
`
`Thank you for responding to my email. Below are answers to your questions on behalf of Facebook. Please confirm by
`the end of the day Monday whether Windy City opposes Facebook’s motion. Otherwise, we will assume Windy City’s
`opposition and note for the Court that Windy City declined to meet and confer.
`
` I
`
`1
`
`Facebook's Exhibit No. 1012
`Page 1
`
`

`
`
`1) "The current deadline to serve initial disclosures in the Facebook case is less than 45 days after your proposed
`narrowing date, and Windy City will serve its infringement contentions in July, what is the newfound burden facing
`Defendants in the interim (particularly in light of Defendants’ decision to wait so long to raise this concern in the first
`place)?"
`
`Response: The issue of Windy City’s failure to identify any asserted claims was raised in both Defendants’ motions to
`dismiss. As you know, Facebook's motion to transfer was pending before the Court in North Carolina for over 6 months.
`After the case was transferred to California, Facebook promptly raised the issue here. In addition, the deadline for filing
`IPRs is a five weeks away, and Windy City’s ongoing refusal to identify any asserted claims significantly prejudices the
`parties’ efforts to prepare IPR petitions focused on the claims Windy City actually intends to assert.
`
`2) "Do Defendants have a proposal for a reciprocal narrowing, and early identification of, prior art? If so, what is
`Defendants’ proposal?"
`
`Response: Facebook believes this case should be narrowed to a reasonable scope, including the narrowing of claims as
`both defendants have requested and focused prior art invalidity contentions after receiving Windy City’s infringement
`contentions (which are necessary to understand how Windy City is reading its claims on the Defendants’ products and
`services given the vagueness of Windy City’s complaint). The scope of any narrowing will of course depend on the
`claims selected by Windy City, the accused products and whether the same claims will be asserted against both
`defendants.
`
`3) "In the reciprocal narrowing of prior art, do Defendants agree to treat each obvious combination as a separate
`reference?"
`
`Response: If you are referring to the prior art assertions of A, A+B, A+B+C and A+C being 4 grounds, instead of 3, we
`think that such an agreement could be reached as part of a negotiated agreement to narrow the asserted claims.
`
`4) "In the reciprocal narrowing of prior art, do Defendants agree to be bound by each other’s elections (i.e. the total
`limit on prior art references is across both cases)?"
`
`Response: Without knowing which claims are selected, which products are accused, and whether the same claims will
`be asserted against both defendants, Facebook cannot yet agree to this proposal.
`
`5) "Does Defendants’ proposal include withdrawing the pending 12(b)(6) motions as to direct infringement if Windy City
`narrows its claims at this early stage?"
`
`Response: No. Facebook's pending 12(b)(6) motion relates to broader issues than the selection of claims.
`
`6) "Do Defendants intend to answer the Complaints if Windy City narrows its claims at this early stage?"
`
`Response: Facebook will answer the complaints at an appropriate time after the Court addresses the motion to dismiss.
`
`7) "Do Defendants plan on filings IPRs? If so, do Defendants agree that any early claim elections are without prejudice to
`electing new claims depending on the status of the IPR proceedings?"
`
`Response: As noted above, Facebook intends to file IPRs. The whole point of this request is to narrow this case to a
`realistic scope for the benefit of the Court and the PTAB. Facebook does not agree that Windy City can constantly shift
`the asserted claims in this case as it sees how the IPR petitions play out at the PTAB.
`
`8) "If Defendants do plan on filing IPRs, do they intend to also move to stay the district court proceedings?"
`
`
`2
`
`Facebook's Exhibit No. 1012
`Page 2
`
`

`
`Response: The Defendants have not decided on that issue yet. Would Windy City agree to stay the district court
`litigation pending decisions on the IPRs?
`
`"As you know, Windy City has taken no discovery at this point, making it prejudicial and particularly burdensome to
`blindly remove 95% of the claims from the case at this early stage, and identify to Defendants in a matter of days the 5%
`that are remaining. The Court's schedule/local rules for initial disclosures and infringement contentions set out a
`timeline for the parties to make these disclosures, and while Windy City is happy to discuss ways to narrow the cases
`along the way in a fair and logical manner, it also wants to follow the guidance and schedules set forth by the Courts and
`the local rules."
`
`Response: Upon entry of a protective order, Facebook will be happy to make its source code available for review by
`Windy City’s counsel and approved experts prior to the May 15 deadline (a benefit not afforded to Windy City under the
`patent local rules before providing infringement contentions).
`
`"On a final note, your claim that Windy City has multiplied the litigation is inaccurate, and unnecessary. “Multiplying”
`proceedings under 28 U.S.C. § 1927 relates to recklessness and bad faith behavior; not the number of claims that were
`granted in a particular asserted patent. And your observation that Windy City has not yet “identified” claims is
`puzzling—initial disclosures and infringement contentions are due in the coming weeks, as outlined in the recent orders
`from Judges Seeborg and Gonzalez Rogers. Windy City strives to handle disputes between the parties professionally and
`responsibly; we hope that you and other members of your firm will approach this case in a like manner, and refrain from
`making veiled threats of the kind contained in your first email below.”
`
`Response: We did not raise Section 1927, you did. The record thus far in this case speaks for itself.
`
`Regards,
`Phil
`
`On 4/26/16, 4:11 PM, "Warren McCarty" <wmccarty@caldwellcc.com> wrote:
`
`>Phillip,
`>
`>Thank you for your email. Windy City is always willing to discuss ways to streamline the cases throughout the litigation
`where possible and when appropriate. However, we're not sure why you’re now requesting Windy City to drop claims
`when this case has been pending for 10 months without any effort from Defendants to advance it. Some clarity from
`y'all on the reason for the urgency would help frame any discussions. In any event, our client will need more than the 1
`or 2 business days you offered to consider a proposal of this magnitude--eliminating 95% of the claims from the cases.
`In the meantime, it would move things along if you could please answer some clarifying questions below so that Windy
`City can understand, and fully evaluate your proposal:
`>
`>1. The current deadline to serve initial disclosures in the Facebook case is less than 45 days after your proposed
`narrowing date, and Windy City will serve its infringement contentions in July, what is the newfound burden facing
`
`3
`
`
`
`
`
`Phillip E. Morton
`Cooley LLP
`Direct: +1 202 728 7055 * Cell: +1 703 298 2746
`
`Facebook's Exhibit No. 1012
`Page 3
`
`

`
`Defendants in the interim (particularly in light of Defendants’ decision to wait so long to raise this concern in the first
`place)?
`>2. Do Defendants have a proposal for a reciprocal narrowing, and early identification of, prior art? If so, what is
`Defendants’ proposal?
`>3. In the reciprocal narrowing of prior art, do Defendants agree to treat each obvious combination as a separate
`reference?
`>4. In the reciprocal narrowing of prior art, do Defendants agree to be bound by each other’s elections (i.e. the total
`limit on prior art references is across both cases)?
`>5. Does Defendants’ proposal include withdrawing the pending 12(b)(6) motions as to direct infringement if Windy
`City narrows its claims at this early stage?
`>6. Do Defendants intend to answer the Complaints if Windy City narrows its claims at this early stage?
`>7. Do Defendants plan on filings IPRs? If so, do Defendants agree that any early claim elections are without prejudice
`to electing new claims depending on the status of the IPR proceedings?
`>8. If Defendants do plan on filing IPRs, do they intend to also move to stay the district court proceedings?
`>
`>As you know, Windy City has taken no discovery at this point, making it prejudicial and particularly burdensome to
`blindly remove 95% of the claims from the case at this early stage, and identify to Defendants in a matter of days the 5%
`that are remaining. The Court's schedule/local rules for initial disclosures and infringement contentions set out a
`timeline for the parties to make these disclosures, and while Windy City is happy to discuss ways to narrow the cases
`along the way in a fair and logical manner, it also wants to follow the guidance and schedules set forth by the Courts and
`the local rules.
`>
`>On a final note, your claim that Windy City has multiplied the litigation is inaccurate, and unnecessary. “Multiplying”
`proceedings under 28 U.S.C. § 1927 relates to recklessness and bad faith behavior; not the number of claims that were
`granted in a particular asserted patent. And your observation that Windy City has not yet “identified” claims is
`puzzling—initial disclosures and infringement contentions are due in the coming weeks, as outlined in the recent orders
`from Judges Seeborg and Gonzalez Rogers. Windy City strives to handle disputes between the parties professionally and
`responsibly; we hope that you and other members of your firm will approach this case in a like manner, and refrain from
`making veiled threats of the kind contained in your first email below.
`>
`>If you could please answer the questions above, that would help move along the process while we discuss with our
`client. Thank you.
`>
`>Best Regards,
`>Warren
`>
`>-----Original Message-----
`>From: Morton, Phillip [mailto:pmorton@cooley.com]
`>Sent: Tuesday, April 26, 2016 11:58 AM
`>To: Warren McCarty <wmccarty@caldwellcc.com>; windycity@caldwellcc.com
`>Cc: McBride, John W. <jwmcbride@sidley.com>; Yang, Irene <irene.yang@sidley.com>; Cederoth, Richard A.
`<rcederoth@sidley.com>; Keefe, Heidi <hkeefe@cooley.com>
`>Subject: Re: Windy City v. Facebook / Microsoft - Request to Identify Asserted Claims
`>
`>Warren-
`>
`>We have not received any response to our request to meet and confer regarding the below. Please let me know when
`you are available to meet and confer today.
`>
`>Regards,
`>Phil
`>
`
`4
`
`Facebook's Exhibit No. 1012
`Page 4
`
`

`
`>Phillip E. Morton
`>Cooley LLP
`>Direct: +1 202 728 7055 * Cell: +1 703 298 2746
`>
`>
`>From: Phillip Morton <pmorton@cooley.com<mailto:pmorton@cooley.com>>
`>Date: Thursday, April 21, 2016 at 6:36 PM
`>To: Warren McCarty <wmccarty@caldwellcc.com<mailto:wmccarty@caldwellcc.com>>,
`"windycity@caldwellcc.com<mailto:windycity@caldwellcc.com>"
`<windycity@caldwellcc.com<mailto:windycity@caldwellcc.com>>
`>Cc: "McBride, John W." <jwmcbride@sidley.com<mailto:jwmcbride@sidley.com>>, "Yang, Irene"
`<irene.yang@sidley.com<mailto:irene.yang@sidley.com>>, "Cederoth, Richard A."
`<rcederoth@sidley.com<mailto:rcederoth@sidley.com>>, Heidi Keefe
`<hkeefe@cooley.com<mailto:hkeefe@cooley.com>>
`>Subject: Windy City v. Facebook / Microsoft - Request to Identify Asserted Claims
`>
`>Warren-
`>
`>Facebook and Microsoft request that no later than May 16, 2016, Windy City identify no more than 40 total asserted
`claims that Windy City intends to assert against each defendant in this litigation. As you know, there are 830 claims in
`the four asserted patents and Windy City has not identified a single asserted claim against either defendant. The lack of
`identified claims unnecessarily multiplies the proceedings, as it requires the parties to evaluate invalidity and non-
`infringement defenses on hundreds of claims that Windy City will never assert in this litigation.
`>
`>To be clear, Facebook and Microsoft are not asking Windy City to provide infringement contentions at this time, only
`the identification of the asserted claims.
`>
`>Please confirm that Windy City will identify no more than 40 asserted claims that it will assert against each defendant
`no later than May 16, 2016.
`>
`>If Windy City is unwilling to identify no more than 40 asserted claims by May 16, 2016, please let us know when you are
`available to meet and confer on Friday or Monday, as Facebook and Microsoft intend to file motions in their respective
`cases asking the Court to order Windy City to identify asserted claims as requested above.
`>
`>Regards,
`>Phil
`>
`>Phillip E. Morton
`>Cooley LLP
`>Direct: +1 202 728 7055 * Cell: +1 703 298 2746
`>
`>
`>
`>
`>________________________________
`>
`>This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged
`information. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient,
`please contact the sender by reply email and destroy all copies of the original message. If you are the intended recipient,
`please be advised that the content of this message is subject to access, review and disclosure by the sender's Email
`System Administrator.
`>
`
`5
`
`Facebook's Exhibit No. 1012
`Page 5
`
`

`
`
`________________________________
`
`This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged
`information. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient,
`please contact the sender by reply email and destroy all copies of the original message. If you are the intended recipient,
`please be advised that the content of this message is subject to access, review and disclosure by the sender's Email
`System Administrator.
`
`
`
`6
`
`Facebook's Exhibit No. 1012
`Page 6