Sean Li
`
`From:
`Sent:
`To:
`
`Cc:
`Subject:
`
`Karineh Khachatourian <karinehk@rimonlaw.com>
`Tuesday, October 09, 2018 8:50 AM
`Cox, Brady; Hotze, Melissa; Sean Li; intel.alacritech.ipr; 'McPherson, Patrick D.'; Douglas,
`Christopher; Bradley, Kirk; 'benjamin.weed.PTAB@klgates.com';
`'erik.halverson@klgates.com'; Neilson, Derek; David Xue
`Alacritech-IPR-Team
`RE: Alacritech/Intel Oct. 2 call with Board
`
`Hi Sean
`
`For the 401 Petition, Cavium’s position is the same as Intel’s. Thanks.
`
`
`From: Cox, Brady <Brady.Cox@alston.com>
`Sent: Tuesday, October 9, 2018 8:48 AM
`To: Hotze, Melissa <melissa.hotze@weil.com>; Sean Li <seanli@quinnemanuel.com>; Karineh Khachatourian
`<karinehk@rimonlaw.com>; intel.alacritech.ipr <intel.alacritech.ipr@weil.com>; 'McPherson, Patrick D.'
`<PDMcPherson@duanemorris.com>; Douglas, Christopher <Christopher.Douglas@alston.com>; Bradley, Kirk
`<Kirk.Bradley@alston.com>; 'benjamin.weed.PTAB@klgates.com' <benjamin.weed.PTAB@klgates.com>;
`'erik.halverson@klgates.com' <erik.halverson@klgates.com>; Neilson, Derek <Derek.Neilson@alston.com>; David Xue
`<david.xue@rimonlaw.com>
`Cc: Alacritech-IPR-Team <alacritech-ipr-team@quinnemanuel.com>
`Subject: RE: Alacritech/Intel Oct. 2 call with Board
`
`Hi Sean,
`Adding on to the below response from Intel, while Dell was not a part of the conference call with the Board and does not
`know the full extent of what was discussed there (and is not yet joined to the IPRs at issue), Dell does not consent to the
`use of its designated confidential materials produced in the district court litigation in Intel’s or Cavium’s IPRs.
`Best,
`-Brady
`
`
`From: Hotze, Melissa [mailto:melissa.hotze@weil.com]
`Sent: Monday, October 8, 2018 7:31 PM
`To: Sean Li <seanli@quinnemanuel.com>; 'Karineh Khachatourian' <karinehk@rimonlaw.com>; intel.alacritech.ipr
`<intel.alacritech.ipr@weil.com>; 'McPherson, Patrick D.' <PDMcPherson@duanemorris.com>; Douglas, Christopher
`<Christopher.Douglas@alston.com>; Bradley, Kirk <Kirk.Bradley@alston.com>; 'benjamin.weed.PTAB@klgates.com'
`<benjamin.weed.PTAB@klgates.com>; 'erik.halverson@klgates.com' <erik.halverson@klgates.com>; Cox, Brady
`<Brady.Cox@alston.com>; Neilson, Derek <Derek.Neilson@alston.com>; 'David Xue' <david.xue@rimonlaw.com>
`Cc: Alacritech-IPR-Team <alacritech-ipr-team@quinnemanuel.com>
`Subject: RE: Alacritech/Intel Oct. 2 call with Board
`
`Sean,
`
`First, as Intel has repeatedly stated, Intel does not agree that its protected information in the district court litigation can
`be used in the IPRs. See, e.g., January 11, 2018 Constant email. The Protective Order in the litigation specifically
`precludes such use. See, e.g., Protective Order at Paragraph 11 (“in no event shall any Party’s Protected material be
`submitted, extracted, digested or otherwise referred to” in connection with an IPR “without written consent of the
`Party”). During the teleconference with the Board, Intel’s referenced the litigation only in response to Judge Boudreau’s
`question. Rough at 19:1-14 (“JUDGE BOUDREAU: All right. And just to be clear, the indemnification agreement between
`
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`Alacritech Ex. 2402 Page 01
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`

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`Intel and Dell has not been produced in the related District Court litigation either?”). To be unambiguously clear, Intel
`does not agree that Alacritech can use any of its protected information from the district court litigation in any
`IPR. Alacritech must first obtain permission from the Board for any additional discovery it seeks to use in these IPRs. As
`the Federal Circuit has explained, “[d]iscovery in inter partes review proceedings is more limited than in proceedings
`before district courts or even other proceedings before the PTO” and “[g]iven the time deadlines imposed on these
`proceedings, it was intended that the PTO would ‘be conservative in its grants of discovery.’” Wi-Fi One, LLC v. Broadcom
`Corp., 887 F.3d 1329, 1338 (Fed. Cir. 2018) (citations omitted).
`
`Second, Alacritech’s requests below are nothing more than an attempt to obtain additional discovery prior to obtaining
`authorization from the Board. The Board specifically warned Alacritech about attempting to obtain additional discovery
`prior to a decision on its motion. 10/2/2018 Rough Transcript at 27:13-15 (“Just to be clear, we're not authorizing the
`additional discovery at this point, only a motion for additional discovery.”) As Intel has explained repeatedly, Alacritech
`has not shown that it is entitled to the indemnity agreements and information requested below under the Garmin
`factors. Intel intends to explain this in detail to the Board in Intel’s opposition to Alacritech’s motion for additional
`discovery in IPR2018-00226 and IPR2018-00234. Alacritech has done nothing more than speculate that the indemnity
`agreements (the existence of which are in the public record) will provide any additional “useful” information. This is
`insufficient to obtain discovery in an IPR. See e.g., Wi-Fi One, 887 F.3d at 1340 (declining to find Board abused its
`discretion in concluding that production of the indemnity and JDG agreements, among other things, was not warranted
`where Patent Owner alleged Petitioner was time barred based on parties it indemnified because nothing existed but a
`“mere possibility” that something useful would be found).
`
`Thanks,
`
`Melissa
`
`
`
`
`
`
`Melissa Hotze
`
`Weil, Gotshal & Manges LLP
`700 Louisiana, Suite 1700
`Houston, TX 77002-2755
`melissa.hotze@weil.com
`+1 713 546 5033 Direct
`+1 713 224 9511 Fax
`
`
`
`From: Sean Li <seanli@quinnemanuel.com>
`Sent: Sunday, October 7, 2018 12:22 PM
`To: Hotze, Melissa <melissa.hotze@weil.com>; 'Karineh Khachatourian' <karinehk@rimonlaw.com>; intel.alacritech.ipr
`<intel.alacritech.ipr@weil.com>; 'McPherson, Patrick D.' <PDMcPherson@duanemorris.com>;
`'christopher.douglas@alston.com' <christopher.douglas@alston.com>; 'kirk.bradley@alston.com'
`<kirk.bradley@alston.com>; 'benjamin.weed.PTAB@klgates.com' <benjamin.weed.PTAB@klgates.com>;
`'erik.halverson@klgates.com' <erik.halverson@klgates.com>; 'Brady.Cox@alston.com' <Brady.Cox@alston.com>;
`'Neilson, Derek' <Derek.Neilson@alston.com>; 'David Xue' <david.xue@rimonlaw.com>
`Cc: Alacritech-IPR-Team <alacritech-ipr-team@quinnemanuel.com>
`Subject: Alacritech/Intel Oct. 2 call with Board
`
`Counsel,
`
`During the Oct. 2, 2018 call with the Board Intel’s counsel represented that Intel’s standard terms and conditions are
`available on the Internet publicly. See Rough Tr. at 20:23-25 (“Also, Intel's standard terms and conditions which govern
`
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`Alacritech Ex. 2402 Page 02
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`

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`sales to other parties are available on the Internet publicly.”). We cannot locate such allegedly standard terms and it
`was not clear to us whether Intel is claiming that those terms are applicable to any of its relationships with its customers
`in the underlying suits. Please provide us the link for the terms and conditions, and confirm that an identical contract
`was entered into with each of the defendants in the underlying cases, with no other terms or conditions. Additionally,
`Intel did not deny during the Board teleconference that there are separate memorializations of its agreement to
`indemnify each of the defendants in the underlying cases. See Rough Tr., passim; see also id. at 26:8 et seq. In fact, Intel
`has admitted that its indemnity in the underlying cases is only applicable to certain claims and patents, which is
`undoubtedly not memorialized in any of the mentioned generic agreements. As such, please identify the nature and
`scope of the documentation memorializing Intel’s relationships with each of the defendants specific to the underlying
`cases. We request the same of Cavium for its indemnity of any defendant in the underlying cases.
`
`
`Also, both Intel and Cavium referenced commercial agreements with Dell (but not the other defendants) without
`referencing their full names and dates. See Rough Tr. at 20:19-21 (“We checked with Dell, and they said they did
`produce that indemnity agreement, the sales agreement that governs indemnity between Intel and Dell”); id. at 24:22-
`25:1 (“And in answer to your question about agreements between Cavium and Dell that may or may not discuss
`indemnification, my recollection and understanding is that those documents were produced in the litigation long ago.”).
`We request Intel and Dell provide us the full names and dates and bates numbers of those agreements. Additionally,
`please confirm that Intel and Cavium have not produced their commercial agreements with any of the Wistron and
`CenturyLink entities.
`
`
`Finally, please confirm that Dell or Cavium no longer object to the use of any documents and information designated
`under the PO in the underlying cases in connection with Petitioners’ IPRs. We were surprised by Petitioners
`representations about protected material from the underlying cases during the Board call given that Petitioners have
`previously and repeatedly objected to Alacritech’s use of any such information designated in the underlying cases. We
`assume that by referencing litigation productions, Dell and Cavium have no intentions to object our use of those
`agreements or any other protected information from the underlying cases going forward and will proceed with that
`understanding in future filings unless told otherwise.
`
`In light of the short briefing schedule, please let us know your response by the end of the day Monday.
`
`Best regards,
`Ziyong (Sean) Li
`Associate,
`Quinn Emanuel Urquhart & Sullivan, LLP
`
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`415-875-6373 Direct
`415.875.6600 Main Office Number
`415.875.6700 FAX
`seanli@quinnemanuel.com
`www.quinnemanuel.com
`
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`Alacritech Ex. 2402 Page 04
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