McCarthy, Sean M.
`
`From:
`Sent:
`To:
`
`Cc:
`
`Subject:
`
`McCarthy, Sean M.
`Monday, October 30, 2017 6:17 PM
`Acer.Philips-TKLGALL@tklg-llp.com; bgenderson@wc.com; brian@warrenlex.com;
`ckaufman@tklg-llp.com; erika@warrenlex.com; fitch@warrenlex.com; jlin@tklg-llp.com;
`matt@warrenlex.com; patrick@warrenlex.com; rsmith@mnat.com;
`viceroy@matters.warrenlex.com; viceroy@wc.com; 15-1125@cases.warrenlex.com; Asus-
`Philips@alston.com; bgenderson@wc.com; brian@warrenlex.com;
`derek.neilson@alston.com; erika@warrenlex.com; fitch@warrenlex.com;
`matt@warrenlex.com; michael.lee@alston.com; mike.newton@alston.com;
`patrick.flinn@alston.com; patrick@warrenlex.com; Ross.barton@alston.com;
`rsmith@mnat.com; viceroy@wc.com; xavier.brandwajn@alston.com;
`Bryan.harrison@lockelord.com; kjacobs@mnat.com; mhaag@mnat.com;
`AMcNamara@perkinscoie.com; arussell@shawkeller.com; HTC-
`PhilipsPerkinsService@perkinscoie.com; JPutman@perkinscoie.com;
`jschnurer@perkinscoie.com; jshaw@shawkeller.com; kkeller@shawkeller.com;
`KPatariu@perkinscoie.com; LLu@perkinscoie.com; nhoeschen@shawkeller.com;
`rhawkins@perkinscoie.com; RMcBrayer@perkinscoie.com; SStark@perkinscoie.com;
`TylerPeterson@perkinscoie.com; vsathe@perkinscoie.com; arussell@shawkeller.com;
`CMcCullough@perkinscoie.com; cscampbell@perkinscoie.com;
`JJennison@perkinscoie.com; jshaw@shawkeller.com; kkeller@shawkeller.com; MSFT-
`PhilipsTeam@perkinscoie.com; PMcKeever@perkinscoie.com;
`SStahnke@perkinscoie.com; agaza@ycst.com; apoff@ycst.com; SWilson@ycst.com;
`dfry@shawkeller.com; jshaw@shawkeller.com; kkeller@shawkeller.com;
`lucianchen@lcclegal.com; nhoeschen@shawkeller.com; wingchiu@lcclegal.com
`Apgar, Daniel; Bingaman, Caitlyn; Cardenas-Navia, Jaime F.; Carlin,John; Gerson,
`Christopher; Lieber, Natalie; McCarthy, Sean M.; Nadipuram, Joyce Lee; Pickens, Robert
`S.; Sandonato,Michael; Sharret, Jonathan; Stoddard, Yvonne; DSilver@McCarter.com;
`bsmyth@McCarter.com
`Koninklijke Philips N.V. matters Nos. 11-1125 through 15-1131 and 15-1170
`
`Counsel for Acer, ASUS, Double Power, HTC, Microsoft, Visual Land, and YiFang:
`
`On October 24, 2017 the Patent Trial and Appeal Board (“PTAB”) issued an order directing Philips to file by November 1,
`2017 a brief in support of its request for additional discovery in IPR2017-00890, -01754, and -01766 relating to (1)
`whether and to what extent a relationship exists between Microsoft and HTC with respect to the current IPR
`proceedings, and (2) whether and to what extent a relationship exists between the instant Petitioners (HTC and
`Microsoft) and the petitioners in earlier inter partes review proceedings, namely Google, Acer, and ASUS. In particular,
`the PTAB stated that Patent Owner should “specifically identify[] the evidence already in Patent Owner’s possession
`tending to show beyond mere speculation that something useful will be uncovered by the request.” See, e.g., IPR2017-
`00890, Paper 11, at 3.
`
`Accordingly, on October 25, 2017 we sent to certain of the parties in these litigations an email requesting that they allow
`us to disclose to the PTAB and to Philips’ IPR counsel any documents they have produced in the litigation which may be
`relevant to the real party in interest issues before the PTAB without subjecting Philips’ IPR counsel to the prosecution
`bar. In making that request, we advised these defendants that Philips’ IPR counsel would take every precaution in filing
`any such documents under seal to maintain their confidentiality.
`
`This email confirms that, in response, only one party has consented to allowing us to share any such documents with IPR
`counsel and the PTAB, and the certain other parties refused such consent. Because we take our obligations under the
`1
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`Philips 2008
`Microsoft v. Philips
`IPR2017-01766
`
`

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`protective order seriously, we have not shared or discussed the contents of any such documents with IPR
`counsel. However, we maintain our position that there is no legitimate basis for refusing IPR counsel and the PTAB
`access to potentially relevant materials relating to the real-party-in-interest issue.
`
`Best regards,
`Sean
`
`Sean M. McCarthy
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`T 212-218-2332
`F 212-218-2200
`SMcCarthy@FCHS.COM
`http://www.fitzpatrickcella.com
`Bio
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