Hedvat, Shannon H.
`From:
`Sent:
`To:
`
`Cc:
`
`Subject:
`
`Kamran,
`
`Thank you for your e-mail.
`
`Hedvat, Shannon H.
`Wednesday, March 18, 2020 10:31 AM
`Vakili, Kamran; Baghdassarian, Mark; Federico, Alexis; Caplan, Jonathan S.;
`provner@potteranderson.com; ~Choa, Jonathan
`Yorks, Ben; McPhie, David; Michael J. Farnan; Brian E. Farnan (bfarnan@farnanlaw.com);
`Holland, Eileen
`RE: Fraunhofer v. Sirius XM
`
`Unfortunately, your response does not address the issues raised in our e-mail or during our meet and confer yesterday
`and these issues will need to be presented to the Court today.
`
`With respect to Dr. Lyon's deposition, you had agreed to let us know yesterday if Fraunhofer will proceed with his
`deposition. Please let us know immediately if Fraunhofer will proceed with the deposition.
`
`Shannon
`
`From: Vakili, Kamran <KVakili@irell.com>
`Sent: Tuesday, March 17, 2020 9:07 PM
`To: Hedvat, Shannon H. <SHedvat@KRAMERLEVIN.com>; Baghdassarian, Mark <MBaghdassarian@KRAMERLEVIN.com>;
`Federico, Alexis <AFederico@irell.com>; Caplan, Jonathan S. <JCaplan@KRAMERLEVIN.com>;
`provner@potteranderson.com; ~Choa, Jonathan <jchoa@potteranderson.com>
`Cc: Yorks, Ben <BYorks@irell.com>; McPhie, David <DMcPhie@irell.com>; Michael J. Farnan
`<mfarnan@farnanlaw.com>; Brian E. Farnan (bfarnan@farnanlaw.com) <bfarnan@farnanlaw.com>; Holland, Eileen
`<EHolland@irell.com>
`Subject: [EXTERNAL] RE: Fraunhofer v. Sirius XM
`
`Shannon,
`
`See below for some further responses from Fraunhofer in view of the parties’ meet-and-confer this afternoon and your
`most recent email.
`
`Chart: Fraunhofer agrees to forego the early Rule 30(b)(6) deposition of SXM (D.I. 163) if SXM confirms that it will
`provide the information Fraunhofer has been seeking in the written format of our proposed February 28 chart as we
`have requested. If SXM agrees, please confirm by email before the hearing tomorrow that this issue has been resolved,
`except for the question of by what deadline SXM will provide the requested chart.
`
`IPR Deposition: Fraunhofer appreciates SXM’s offer to make Dr. Lyon available for a telephonic deposition, in light of the
`circumstances surrounding COVID-19. Fraunhofer is considering SXM’s offer and will respond shortly. We think the
`remainder of your commentary is beside the point (and we do not agree in any event).
`
`Code Review: As we explained during the call today, Fraunhofer needs to be able to proceed with the source code
`review right away. Please confirm whether SXM will or will not agree to facilitate a source code review in the near term,
`whether in person or over a secure remote connection. If SXM refuses to do this, Fraunhofer will need to seek the
`
`1
`
`Petitioner Sirius XM Radio Inc. – Exhibit 1034, p. 1
`Sirius XM v. Fraunhofer – IPR2018-00690
`U.S. Patent No. 6,314,289
`
`

`

`assistance of the Court. Note that Fraunhofer’s code expert is located in the New York City area, which is where you
`previously indicated the code would be produced for inspection.
`
`Schedule: Fraunhofer objects to SXM’s continued mischaracterization of its purported need to modify the case
`schedule. SXM still has not explained why the timing of the non-pseudonymized email production (which was directly
`attributable to SXM’s lack of cooperation and delay) or the filing of the Amended Complaint requires a modification of
`the schedule. And we do not view SXM’s previous proposal (i.e., that we simply push the fact discovery cut off until the
`day before opening expert reports are due) as a reasonable approach. Nonetheless, as we discussed during today’s call,
`we understand that the situation surrounding COVID-19 has been rapidly evolving and may ultimately impact the case
`schedule. As of a few hours ago, we are in receipt of SXM’s new scheduling proposal to change the fact discovery
`deadline to July 1 and to move out all other deadlines by 60 days. We are currently considering that proposal. Given
`that we received the proposal less than 24 hours before the hearing and have not had the opportunity to consult with
`our client, it is unlikely that we will have a final response for you at the hearing. That said, we are willing to continue to
`meet and confer with SXM on this issue.
`
`Best,
`Kamran
`
`Kamran Vakili, Ph.D
`Irell & Manella LLP | kvakili@irell.com | www.irell.com
`840 Newport Center Drive, Suite 400, Newport Beach, CA 92660
`Direct: (949) 760-5151
`
`This message and its contents are intended only for the person or entity to which it is addressed. It may contain
`confidential and/or privileged material. Any review, transmission, dissemination or other use of this information by
`anyone other than the intended recipient is prohibited.
`
`From: Hedvat, Shannon H. <SHedvat@KRAMERLEVIN.com>
`Sent: Tuesday, March 17, 2020 2:42 PM
`To: Vakili, Kamran <KVakili@irell.com>; Baghdassarian, Mark <MBaghdassarian@KRAMERLEVIN.com>; Federico, Alexis
`<AFederico@irell.com>; Caplan, Jonathan S. <JCaplan@KRAMERLEVIN.com>; ~Rovner, Phil
`<provner@potteranderson.com>; ~Choa, Jonathan <jchoa@potteranderson.com>
`Cc: Yorks, Ben <BYorks@irell.com>; McPhie, David <DMcPhie@irell.com>; Michael J. Farnan
`<mfarnan@farnanlaw.com>; Brian E. Farnan (bfarnan@farnanlaw.com) <bfarnan@farnanlaw.com>; Holland, Eileen
`<EHolland@irell.com>
`Subject: RE: Fraunhofer v. Sirius XM
`
`Kamran,
`
`Per our discussion earlier today, both parties agreed to get back to each other on the various issues discussed. Below
`please find SXM’s updates. We look forward to Fraunhofer’s positions, including on the 30(b)(6) and chart issue, and
`those outlined below, by today.
`
`IPR Deposition: For purposes of the IPR only, and in an effort to address Fraunhofer’s April 1 deadline as you raised
`during the call, SXM is amenable to making Dr. Lyon available for a telephonic deposition in light of the travel
`restrictions and other concerns surrounding COVID-19. We understood your proposal to be one whereby Fraunhofer
`would forego the deposition of Dr. Lyon if SXM would forego the deposition of Fraunhofer's expert who will submit a
`responsive declaration. However, under the PTAB rules, Fraunhofer is prohibited from submitting any additional
`evidence, including in the form of an expert declaration, in its sur-reply. Accordingly, SXM does not consent
`to Fraunhofer’s submission of a declaration with its sur-reply. Please confirm whether Fraunhofer wishes to proceed
`with a telephonic deposition of Dr. Lyon next Tuesday.
`
`2
`
`Petitioner Sirius XM Radio Inc. – Exhibit 1034, p. 2
`Sirius XM v. Fraunhofer – IPR2018-00690
`U.S. Patent No. 6,314,289
`
`

`

`Schedule: As we explained during the call, and in our various correspondence last week, SXM proposes to push out the
`fact discovery deadline, and potentially other deadlines in the schedule, to account for Fraunhofer’s belated decision to
`proceed with the Amended Complaint, Fraunhofer’s delayed e-mail production, to resolve issues relating to case
`narrowing and additional Markman proceedings for outstanding disputed claim terms, and now to account for the
`uncertainties surrounding the COVID-19 pandemic including its impact on depositions, such as for SXM witnesses
`located in New York and elsewhere as well as Fraunhofer’s witnesses many of which are located in
`Germany. Notwithstanding that circumstances globally are changing almost daily, and noting that the parties can agree
`to work with the Court to amend any deadlines as needed to account for such uncertainty, SXM proposes (as it did last
`week) to change the fact discovery deadline to July 1 and to move out all other deadlines by the same number of days
`(60). As part of this schedule, we would want to include dates for case narrowing and for the Court to resolve remaining
`claim construction issues.
`
`Fraunhofer’s Response to ROG 10: In anticipation of the hearing tomorrow, and in light of Fraunhofer’s newly identified
`case law in its letter of Friday, March 13, as a matter of courtesy, SXM identifies the following case that it intends to
`raise with the Court tomorrow in order to properly present the law on the issue surrounding Fraunhofer’s ongoing
`insufficient response to ROG 10: Knauf Insulation, LLC v. Johns Manville Corp., No. 1:15-CV-00111-WTL-MJD, 2018 WL
`6659726 (S.D. Ind. Jun. 28, 2018).
`
`Shannon
`
`Shannon H. Hedvat
`Associate
`
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas, New York, New York 10036
`T 212.715.9185 M 973.809.4768 F 212.715.8385
`
`This communication (including any attachments) is intended solely for the recipient(s) named above and may contain information that is
`confidential, privileged or legally protected. Any unauthorized use or dissemination of this communication is strictly prohibited. If you have received
`this communication in error, please immediately notify the sender by return e-mail message and delete all copies of the original communication.
`Thank you for your cooperation.
`
`From: Vakili, Kamran <KVakili@irell.com>
`Sent: Monday, March 16, 2020 7:19 PM
`To: Baghdassarian, Mark <MBaghdassarian@KRAMERLEVIN.com>; Federico, Alexis <AFederico@irell.com>; Hedvat,
`Shannon H. <SHedvat@KRAMERLEVIN.com>; Caplan, Jonathan S. <JCaplan@KRAMERLEVIN.com>;
`provner@potteranderson.com; ~Choa, Jonathan <jchoa@potteranderson.com>
`Cc: Yorks, Ben <BYorks@irell.com>; McPhie, David <DMcPhie@irell.com>; Michael J. Farnan
`<mfarnan@farnanlaw.com>; Brian E. Farnan (bfarnan@farnanlaw.com) <bfarnan@farnanlaw.com>; Holland, Eileen
`<EHolland@irell.com>
`Subject: [EXTERNAL] RE: Fraunhofer v. Sirius XM
`
`Mark,
`
`I understand your email to mean that SXM is now refusing to provide the requested information in chart form. If that is
`right, then please immediately identify available dates for the Rule 30(b)(6) deposition as we have requested numerous
`times.
`
`3
`
`Petitioner Sirius XM Radio Inc. – Exhibit 1034, p. 3
`Sirius XM v. Fraunhofer – IPR2018-00690
`U.S. Patent No. 6,314,289
`
`

`

`We have yet to receive a complete scheduling proposal from SXM and this is not an issue that has been properly raised
`for this week’s hearing. That said, we are willing to consider any scheduling proposal you may have and can meet and
`confer once we have had the opportunity to discuss with our client.
`
`Regards,
`Kamran
`
`Kamran Vakili, Ph.D
`Irell & Manella LLP | kvakili@irell.com | www.irell.com
`840 Newport Center Drive, Suite 400, Newport Beach, CA 92660
`Direct: (949) 760-5151
`
`This message and its contents are intended only for the person or entity to which it is addressed. It may contain
`confidential and/or privileged material. Any review, transmission, dissemination or other use of this information by
`anyone other than the intended recipient is prohibited.
`
`From: Baghdassarian, Mark <MBaghdassarian@KRAMERLEVIN.com>
`Sent: Monday, March 16, 2020 3:57 PM
`To: Vakili, Kamran <KVakili@irell.com>; Federico, Alexis <AFederico@irell.com>; ~Hedvat, Shannon
`<shedvat@kramerlevin.com>; Caplan, Jonathan S. <JCaplan@KRAMERLEVIN.com>; ~Rovner, Phil
`<provner@potteranderson.com>; ~Choa, Jonathan <jchoa@potteranderson.com>
`Cc: Yorks, Ben <BYorks@irell.com>; McPhie, David <DMcPhie@irell.com>; Michael J. Farnan
`<mfarnan@farnanlaw.com>; Brian E. Farnan (bfarnan@farnanlaw.com) <bfarnan@farnanlaw.com>; Holland, Eileen
`<EHolland@irell.com>
`Subject: RE: Fraunhofer v. Sirius XM
`
`Kamran:
`
`Thank you for confirming the meet and confer. Sirius XM's letter outlines its position, but we will be prepared
`to discuss these issues. Please confirm that Fraunhofer will be prepared to discuss the scheduling issues we
`previously identified in my email from this morning and Shannon's e-mail dated March 9 and provide
`Fraunhofer's position on these issues prior to tomorrow's meet and confer.
`
`Thanks.
`-Mark
`
`Mark Baghdassarian
`Partner
`
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas, New York, New York 10036
`T 212.715.9193 F 212.715.8362
`
`This communication (including any attachments) is intended solely for the recipient(s) named above and may contain information that is
`confidential, privileged or legally protected. Any unauthorized use or dissemination of this communication is strictly prohibited. If you have received
`this communication in error, please immediately notify the sender by return e-mail message and delete all copies of the original communication.
`Thank you for your cooperation.
`
`From: Vakili, Kamran [KVakili@irell.com]
`Sent: Monday, March 16, 2020 4:06 PM
`To: Baghdassarian, Mark; Federico, Alexis; Hedvat, Shannon H.; Caplan, Jonathan S.; provner@potteranderson.com;
`4
`
`Petitioner Sirius XM Radio Inc. – Exhibit 1034, p. 4
`Sirius XM v. Fraunhofer – IPR2018-00690
`U.S. Patent No. 6,314,289
`
`

`

`~Choa, Jonathan
`Cc: Yorks, Ben; McPhie, David; Michael J. Farnan; Brian E. Farnan (bfarnan@farnanlaw.com); Holland, Eileen
`Subject: [EXTERNAL] RE: Fraunhofer v. Sirius XM
`
`Dear Mark,
`
`We confirm for 1 pm ET (10 am PT) tomorrow. Please use the following bridge:
`
`Dial-in: (866) 349-7797
`Passcode: 9497605151
`
`Can SXM confirm that it will provide the accused product information we have been seeking in the written format of our
`proposed February 28 chart so as to avoid the need for deposition practice? If not, what are SXM’s available dates for a
`deposition (either remote or in person) in the next 2-3 weeks to provide that information?
`
`Regards,
`Kamran
`
`Kamran Vakili, Ph.D
`Irell & Manella LLP | kvakili@irell.com | www.irell.com
`840 Newport Center Drive, Suite 400, Newport Beach, CA 92660
`Direct: (949) 760-5151
`
`This message and its contents are intended only for the person or entity to which it is addressed. It may contain
`confidential and/or privileged material. Any review, transmission, dissemination or other use of this information by
`anyone other than the intended recipient is prohibited.
`
`From: Baghdassarian, Mark <MBaghdassarian@KRAMERLEVIN.com>
`Sent: Monday, March 16, 2020 12:35 PM
`To: Vakili, Kamran <KVakili@irell.com>; Federico, Alexis <AFederico@irell.com>; ~Hedvat, Shannon
`<shedvat@kramerlevin.com>; Caplan, Jonathan S. <JCaplan@KRAMERLEVIN.com>; ~Rovner, Phil
`<provner@potteranderson.com>; ~Choa, Jonathan <jchoa@potteranderson.com>
`Cc: Yorks, Ben <BYorks@irell.com>; McPhie, David <DMcPhie@irell.com>; Michael J. Farnan
`<mfarnan@farnanlaw.com>; Brian E. Farnan (bfarnan@farnanlaw.com) <bfarnan@farnanlaw.com>; Holland, Eileen
`<EHolland@irell.com>
`Subject: RE: Fraunhofer v. Sirius XM
`
`Kamran,
`
`Let's plan on speaking at 1pm ET tomorrow to discuss these issues.
`
`Thanks.
`-Mark
`
`Mark Baghdassarian
`Partner
`
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas, New York, New York 10036
`T 212.715.9193 F 212.715.8362
`
`5
`
`Petitioner Sirius XM Radio Inc. – Exhibit 1034, p. 5
`Sirius XM v. Fraunhofer – IPR2018-00690
`U.S. Patent No. 6,314,289
`
`

`

`This communication (including any attachments) is intended solely for the recipient(s) named above and may contain information that is
`confidential, privileged or legally protected. Any unauthorized use or dissemination of this communication is strictly prohibited. If you have received
`this communication in error, please immediately notify the sender by return e-mail message and delete all copies of the original communication.
`Thank you for your cooperation.
`
`From: Vakili, Kamran [KVakili@irell.com]
`Sent: Monday, March 16, 2020 2:06 PM
`To: Baghdassarian, Mark; Federico, Alexis; Hedvat, Shannon H.; Caplan, Jonathan S.; provner@potteranderson.com;
`~Choa, Jonathan
`Cc: Yorks, Ben; McPhie, David; Michael J. Farnan; Brian E. Farnan (bfarnan@farnanlaw.com); Holland, Eileen
`Subject: [EXTERNAL] RE: Fraunhofer v. Sirius XM
`
`Dear Mark,
`
`In light of your email, can SXM confirm that it will provide the accused product information we have been seeking in the
`written format of our proposed February 28 chart so as to avoid the need for deposition practice? We are also willing to
`consider taking the IPR deposition off calendar. We reached out separately this morning about meeting and conferring
`in advance of Wednesday’s discovery teleconference and can discuss the issues you’ve raised below at that time as well
`(including issues regarding source code review). Please let us know when you are available during our proposed times
`(today until 4 pm PT, or tomorrow between 10 am and 4 pm PT) and we will circulate a dial-in.
`
`Regards,
`Kamran
`
`Kamran Vakili, Ph.D
`Irell & Manella LLP | kvakili@irell.com | www.irell.com
`840 Newport Center Drive, Suite 400, Newport Beach, CA 92660
`Direct: (949) 760-5151
`
`This message and its contents are intended only for the person or entity to which it is addressed. It may contain
`confidential and/or privileged material. Any review, transmission, dissemination or other use of this information by
`anyone other than the intended recipient is prohibited.
`
`From: Baghdassarian, Mark <MBaghdassarian@KRAMERLEVIN.com>
`Sent: Monday, March 16, 2020 8:41 AM
`To: Federico, Alexis <AFederico@irell.com>; ~Hedvat, Shannon <shedvat@kramerlevin.com>; Caplan, Jonathan S.
`<JCaplan@KRAMERLEVIN.com>; ~Rovner, Phil <provner@potteranderson.com>; ~Choa, Jonathan
`<jchoa@potteranderson.com>
`Cc: Yorks, Ben <BYorks@irell.com>; Vakili, Kamran <KVakili@irell.com>; McPhie, David <DMcPhie@irell.com>; Michael J.
`Farnan <mfarnan@farnanlaw.com>; Brian E. Farnan (bfarnan@farnanlaw.com) <bfarnan@farnanlaw.com>; Holland,
`Eileen <EHolland@irell.com>
`Subject: Fraunhofer v. Sirius XM
`
`Counsel:
`
`In light of measures taken by our firm relating to the Covid-19 virus, it is not clear that we can proceed with the
`deposition and source code review scheduled for next week. In response to new guidance issued by government
`authorities encouraging social distancing in an effort to reduce rates of transmission of the virus, Kramer Levin
`has implemented a temporary work-from-home program in the New York and Silicon Valley offices, starting
`today, in order to keep our people safe. Sirius XM has taken similar measures.
`
`6
`
`Petitioner Sirius XM Radio Inc. – Exhibit 1034, p. 6
`Sirius XM v. Fraunhofer – IPR2018-00690
`U.S. Patent No. 6,314,289
`
`

`

`In light of this, the other issues we have raised regarding the schedule and the current travel restrictions in place,
`please let us know your availability for a call to discuss these issues.
`
`-Mark
`
`Mark Baghdassarian
`Partner
`
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas, New York, New York 10036
`T 212.715.9193 F 212.715.8362
`mbaghdassarian@kramerlevin.com
`
`Bio
`
`This communication (including any attachments) is intended solely for the recipient(s) named above and may contain information that is
`confidential, privileged or legally protected. Any unauthorized use or dissemination of this communication is strictly prohibited. If you have received
`this communication in error, please immediately notify the sender by return e-mail message and delete all copies of the original communication.
`Thank you for your cooperation.
`
`PLEASE NOTE: This message, including any attachments, may include privileged, confidential and/or inside
`information. Any distribution or use of this communication by anyone other than the intended recipient(s) is
`strictly prohibited and may be unlawful. If you are not the intended recipient, please notify the sender by
`replying to this message and then delete it from your system. Thank you.
`
`7
`
`Petitioner Sirius XM Radio Inc. – Exhibit 1034, p. 7
`Sirius XM v. Fraunhofer – IPR2018-00690
`U.S. Patent No. 6,314,289
`
`