`Sent: Wednesday, October 17, 2018 5:08 PM
`To: Ryan Loveless <ryan@etheridgelaw.com>; Brett Mangrum <brett@etheridgelaw.com>; Jim
`Etheridge <jim@etheridgelaw.com>; Jeff Huang <jeff@etheridgelaw.com>; Sean Burdick
`<sean.burdick@unilocusa.com>
`Cc: Andy Ehmke IPR <Andy.Ehmke.ipr@haynesboone.com>; Scott Jarratt IPR
`<scott.jarratt.ipr@haynesboone.com>
`Subject: RE: Apple Inc. v. Uniloc Luxembourg SA et al, IPR No. 2018‐00361 ‐ Discovery
`
`Counsel:
`
`Your request does not identify with particularity the relevant discovery materials, which makes it
`difficult to provide a full response. We have conferred with Apple’s counsel in N.D. Ca. Case No. 3:18‐cv‐
`00365, and it is our understanding that there is nothing recently discovered via third‐party discovery
`from the inventor or prior owner. We disagree with your unstated suggestion that Apple has failed to
`satisfy Rule 42.51(b)(1) or that any further action by Apple is needed.
`
`Based on a quick discussion with Apple’s litigation counsel, we presume that you may be referring to the
`materials Bates labelled ELUSHER‐0000000001‐74 and the documents referenced in HPE’s privilege log
`in N.D. Ca. Case No. 3:18‐cv‐00365 (“HPE Materials”). As you are aware, the Bates labelled documents
`and privilege log were provided to Uniloc’s counsel on August 28 and September 4, respectively, and are
`already in the possession of Uniloc’s litigation counsel.
`
`To the extent your request is with respect to the HPE Materials:
` Apple does not oppose Uniloc producing the HPE Materials in this IPR proceeding.
`
`For the HPE Materials referenced in HPE’s privilege log, Apple does not object to Uniloc
`requesting from HPE the referenced documents or using the existence of the privilege log in this
`proceeding.
` To the extent Uniloc’s intended use of the HPE Materials requires permission of a third party,
`Apple does not oppose Uniloc seeking such permission. Because the HPE Materials are not
`Apple’s documents, Apple takes no position on whether these third parties consent to making
`such discovery available in this IPR proceeding under the PTAB’s default protective order and
`sealing procedures.
` Uniloc must reciprocally agree to each of the listed bullets to the extent Apple desires to use the
`HPE Materials in this IPR proceeding.
`
`
`Notwithstanding any of the foregoing, Apple reserves the right to serve objections and file
`corresponding motions to exclude, as applicable, to the extent the HPE Materials are not appropriate or
`permissible in an IPR proceeding. Further, to the extent your request is for materials other than the HPE
`Materials, we would ask that you identify the materials so that we can more fully assess your request.
`
`Finally, Apple does not oppose entering into the default protective order contained in the trial practice
`guide. Please provide a clean, executable version for us to sign.
`
`haynesboone
`Andrew S. Ehmke
`Partner
`andy.ehmke@haynesboone.com
`
`APPL-1031 / IPR2018-00361
`Apple v. Uniloc / Page 1 of 2
`
`
`
`
`Haynes and Boone, LLP
`2323 Victory Avenue
`Suite 700
`Dallas, TX 75219-7672
`
`(t) 214.651.5116
`(f) 214.200.0808
`(m) 214.282.5350
`
`vCard | Bio | Website
`
`
`
`From: Ryan Loveless <ryan@etheridgelaw.com>
`Sent: Wednesday, October 17, 2018 11:16 AM
`To: Andy Ehmke IPR <Andy.Ehmke.ipr@haynesboone.com>; Scott Jarratt IPR
`<scott.jarratt.ipr@haynesboone.com>
`Cc: Brett Mangrum <brett@etheridgelaw.com>; Jim Etheridge <jim@etheridgelaw.com>; Jeff Huang
`<jeff@etheridgelaw.com>; Sean Burdick <sean.burdick@unilocusa.com>
`Subject: Apple Inc. v. Uniloc Luxembourg SA et al, IPR No. 2018‐00361 ‐ Discovery
`
`Counsel:
`
`We recently discovered that Apple obtained third‐party discovery from not only an inventor of United
`States Patent No. 6,216,158 (‘158 Patent), but also the prior owner of the ‘158 Patent. This discovery
`was obtained in the pending Northern District of California patent infringement litigation between
`Uniloc and Apple (Case No. 3:18‐cv‐365)(the “NDCA case”). Uniloc believes the information obtained
`from this discovery bears on the invention date and calls into question whether the references relied on
`in the petition qualify as prior art.
`
`As you are aware, 37 CFR 42.5(b)(1) requires that Apple as part of routine discovery “serve relevant
`information that is inconsistent with a position advanced.” To assist Apple in satisfying its duties, Uniloc
`is prepared to join Apple in requesting that these third parties make such discovery available for this IPR
`proceeding under the PTAB’s default protective order and sealing procedures. See attached default
`protective order.
`
`As to documents already produced (and presumably in possession of litigation counsel), we believe
`Apple and Uniloc simply need permission from these third parties to also make them available in this IPR
`proceedings, Apple Inc. v. Uniloc Luxembourg SA et al, IPR No. 2018‐00361. As there is a joinder
`petition, we also propose making the same available to joinder petitioner, LG. See LG Electronics Inc. et
`al v. Uniloc Luxembourg SA, IPR No. 2018‐01503 (a joinder to the Apple petition). Counsel accessing such
`documents (e.g., Uniloc, Apple, and LG) would need to sign the PTAB’s protective order undertaking.
`
`We ask that you let us know no later than COB on Friday, October 19, as to whether we can join
`together in seeking this discovery.
`
`Ryan Loveless | Etheridge Law Group
`2600 East Southlake Blvd | Suite 120‐324 |Southlake, TX 76092
`ryan@etheridgelaw.com | T 972 292 8303 | F 817 887 5950
`
`APPL-1031 / IPR2018-00361
`Apple v. Uniloc / Page 2 of 2
`
`