From: Paul Hart paul.hart@eriseip.com
`Subject: Re: IPR2018-00884: Dr. Easttom Deposition
`Date: March 11, 2019 at 12:40 PM
`To: Brett Mangrum brett@etheridgelaw.com
`Cc: Danny Butts danny@etheridgelaw.com, Ryan Loveless ryan@etheridgelaw.com, Jeff Huang jeff@etheridgelaw.com,
`Jim Etheridge jim@etheridgelaw.com, Adam Seitz adam.seitz@eriseip.com, Travis Richins travis@etheridgelaw.com
`
`Brett,
`Throughout this weeks-long back and forth Petitioner has never stated or suggested that it seeks cross examination that exceeds the
`scope permitted by the rules. Your attempt to manufacture such an issue simply finds no support in the parties communications.
`I will state our position once again, to ensure there is no confusion. Petitioner disagrees with Mr. Easttom’s claim construction position
`and Patent Owner’s reliance on the same. Unless Patent Owner agrees to strike Mr. Easttom’s declaration and all reliance on that
`declaration, Petitioner demands a deposition of Mr. Easttom. It is our right to cross examine Mr. Easttom and we will not consider
`written questions (and the potential for gamesmanship those introduce) an adequate substitute for live cross examination.
`As we’ve now requested multiple times, either (i) provide dates for Mr. Easttom’s deposition or (ii) confirm that (1) you are refusing to
`make Mr. Easttom available for cross examination and that (2) you will not oppose a motion to strike his declaration and any
`references or citations thereto following the close of our discovery period.
`Best,
`
`PaulP"#$ H"'( | S+"',+-$.,'
`E'01, IP, P.A.
`Suite 200
`Greenwood Village, CO 80111
`(main) 913-777-5600
`(direct) 720-689-5441
`(fax) 913-777-5601
`paul.hart@eriseip.com
`www.eriseip.com
`
`5600 Greenwood Plaza Blvd.
`
`On Mar 8, 2019, at 3:56 PM, Brett Mangrum <brett@etheridgelaw.com> wrote:
`
`Paul,
`
`To more produc9vely advance this discussion, it would be helpful if you addressed our prior
`ques9ons, including whether Pe99oner disputes the sole proposi9on for which the expert
`declara9on is cited. You also neglected to address our proposed compromise. Nevertheless, we
`understand from your last, including your comment that Uniloc’s admiHedly narrow reliance on
`the declara9on is “irrelevant,” that you seek a deposi9on for the impermissible purpose of
`asking ques9ons directed to arguments outside the scope of the Patent Owner Response. You
`are reminded that 37 CFR 42.23 states a Pe99oner’s reply may only respond to arguments
`raised in a patent owner response. You apparent posi9on in scope is in conflict with this rule.
`You have provided no authority in support of your posi9on, though we invited you to do so.
`
`In the absence of the clarifica9on we specifically requested, we can only conclude that your
`purpose in seeking a deposi9on is to ask ques9ons outside what the rules allow. We need the
`clarifica9on we requested in order to properly address your ques9ons. Under the present
`circumstances, we cannot agree to not oppose a new mo9on to strike.
`
`Regards,
`BreH
`
`IPR2018-00884
`Apple Inc. EX1017 Page 1
`
`

`

`BreH
`
`From: Paul Hart <paul.hart@eriseip.com>
`Sent: Thursday, March 7, 2019 1:46 PM
`To: BreH Mangrum <breH@etheridgelaw.com>
`Cc: Danny BuHs <danny@etheridgelaw.com>; Ryan Loveless <ryan@etheridgelaw.com>; Jeff
`Huang <jeff@etheridgelaw.com>; Jim Etheridge <jim@etheridgelaw.com>; Adam Seitz
`<adam.seitz@eriseip.com>
`Subject: Re: IPR2018-00884: Dr. EasHom Deposi9on
`
`BreH,
`
`You’ve submiHed an expert declara9on in this case and have relied on that declara9on in your
`Patent Owner Response. Under the rules, we’re en9tled to cross examine your expert in a
`deposi9on. The narrowness of your expert’s opinions on which you rely is irrelevant. We’re
`en9tled a deposi9on and, if you won’t agree to strike his declara9on and your reliance on that
`declara9on, we want to proceed with his deposi9on.
`
`To the extent you are unwilling to provide dates of availability for Dr. EasHom, the only op9on is
`his tes9mony must be stricken. As we stated previously, either (i) provide dates for Dr. EasHom’s
`deposi9on or (ii) confirm that (1) you are refusing to make Dr. EasHom available for cross
`examina9on and that (2) you will not oppose a mo9on to strike his declara9on and any
`references or cita9ons thereto following the close of our discovery period.
`
`Best,
`Paul
`
` Paul Hart | Shareholder
`Erise IP, P.A.
`Suite 200
`Greenwood Village, CO 80111
`(main) 913-777-5600
`(direct) 720-689-5441
`paul.hart@eriseip.com
`(fax) 913-777-5601
`www.eriseip.com
`
`5600 Greenwood Plaza Blvd.
`
`
`
`
`
`
`On Mar 7, 2019, at 8:21 AM, BreH Mangrum <breH@etheridgelaw.com> wrote:
`
`Paul:
`
`As we stated in prior communica9on, the Patent Owner Response ONLY cites Dr.
`EasHom’s declara9on (EX2001 ¶¶ 8-9) for the sole proposi9on that “a POSITA
`
`IPR2018-00884
`Apple Inc. EX1017 Page 2
`
`

`

`EasHom’s declara9on (EX2001 ¶¶ 8-9) for the sole proposi9on that “a POSITA
`would understand that the en9ty intercep9ng a message would not be one of the
`intended recipients of that message.” Our posi9on is that it would be a waste of
`the par9es resources to schedule a deposi9on that, under the rules, must be
`restricted to that sole proposi9on. Indeed, Pe99oner has not indicated whether
`that straighoorward proposi9on is even disputed. Please do so. Given your
`insistence in scheduling a deposi9on, we can only assume that you intend to
`expand the scope of the deposi9on beyond what the rules allow. Please clarify
`your posi9on as to the scope and the authority in support of your posi9on.
`Alterna9vely, and in the interest of compromise, we would not be opposed to you
`submipng a limited number of interrogatory ques9ons directed to the single
`proposi9on for which the declara9on is cited.
`
`Regards,
`BreH
`
`
`From: Paul Hart <paul.hart@eriseip.com>
`Sent: Wednesday, March 6, 2019 2:58 PM
`To: BreH Mangrum <breH@etheridgelaw.com>
`Cc: Danny BuHs <danny@etheridgelaw.com>; Ryan Loveless
`<ryan@etheridgelaw.com>; Jeff Huang <jeff@etheridgelaw.com>; Jim Etheridge
`<jim@etheridgelaw.com>; Adam Seitz <adam.seitz@eriseip.com>
`Subject: Re: IPR2018-00884: Dr. EasHom Deposi9on
`
`BreH,
`
`Pupng this back to the top of your inbox. Please let us know Uniloc’s posi9on.
`
`To the extent we do not hear from you on this issue, your silence will be
`interpreted as confirma9on that (1) you will not provide Dr. EasHom for cross
`examina9on and (2) you will not oppose a mo9on to strike his declara9on and any
`references or cita9ons thereto following the close of our discovery period.
`
`Best,
`Paul
`
`
`
`
`
`
` Paul Hart | Shareholder
`Erise IP, P.A.
`Suite 200
`Greenwood Village, CO 80111
`(main) 913-777-5600
`(direct) 720-689-5441
`paul.hart@eriseip.com
`(fax) 913-777-5601
`www.eriseip.com
`
`5600 Greenwood Plaza Blvd.
`
`IPR2018-00884
`Apple Inc. EX1017 Page 3
`
`

`

`
`
`On Feb 28, 2019, at 9:43 AM, Paul Hart <paul.hart@eriseip.com>
`wrote:
`
`BreH,
`
`Given the Court’s ruling (aHached) that striking EasHom’s declara9on
`is premature prior to the expira9on of our discovery period, we
`wanted to follow up with you all on next steps. To the extent that you
`are maintaining your prior posi9on, please confirm that (1) you will
`not provide Dr. EasHom for cross examina9on and (2) you will not
`oppose a mo9on to strike his declara9on and any references or
`cita9ons thereto following the close of our discovery period.
`Otherwise, please provide dates of availability for Dr. EasHom so
`Pe99oner can take his deposi9on in advance of our Reply.
`
`Best,
`Paul
`
` Paul Hart | Shareholder
`Erise IP, P.A.
`Suite 200
`Greenwood Village, CO 80111
`(main) 913-777-5600
`(direct) 720-689-5441
`paul.hart@eriseip.com
`(fax) 913-777-5601
`www.eriseip.com
`
`5600 Greenwood Plaza Blvd.
`
`
`
`<Order denying mo9on to strike EasHom's Dec.pdf>
`
`
`On Feb 21, 2019, at 9:44 AM, Paul Hart
`<paul.hart@eriseip.com> wrote:
`
`BreH,
`
`Here’s what we intend to send the Board by COB this
`arernoon:
`
`>>>
`
`IPR2018-00884
`Apple Inc. EX1017 Page 4
`
`

`

`>>>
`In IPR2018-00884, Pe99oner Apple respecoully requests
`permission to file an Unopposed Mo9on to Strike under
`37 CFR 42.5(a) and 42.20(a). Specifically, the Pe99oner
`seeks to strike the EasHom Declara9on (Exhibit 2001)
`and all references or cita9ons to the declara9on in any
`filing as an alterna9ve to making the declarant available
`for cross-examina9on. Pe99oner and Patent Owner
`have conferred, and Patent Owner indicates that they
`do not oppose the mo9on.
`
`If needed, Pe99oner and Patent Owner are available for
`a Board call on Monday or Tuesday next week (2/25 or
`2/26) between 11:00am and 3pm EDT.
`>>>
`
` Paul Hart | Shareholder
`Erise IP, P.A.
`Suite 200
`Greenwood Village, CO 80111
`(main) 913-777-5600
`(direct) 720-689-5441
`paul.hart@eriseip.com
`(fax) 913-777-5601
`www.eriseip.com
`
`5600 Greenwood Plaza Blvd.
`
`
`
`
`
`
`On Feb 21, 2019, at 7:00 AM, BreH
`Mangrum <breH@etheridgelaw.com>
`wrote:
`
`Paul,
`
`Please provide us a drar copy of the email
`you intend to send to the Board. While we
`do not believe a call with the Board is
`necessary, we can make ourselves available
`either Monday or Tuesday of next week
`from 10am to 2pm (CST).
`
`Regards,
`BreH
`
`From: Paul Hart <paul.hart@eriseip.com>
`
`IPR2018-00884
`Apple Inc. EX1017 Page 5
`
`

`

`From: Paul Hart <paul.hart@eriseip.com>
`Sent: Wednesday, February 20, 2019 11:52
`AM
`To: BreH Mangrum
`<breH@etheridgelaw.com>
`Cc: Danny BuHs
`<danny@etheridgelaw.com>; Ryan
`Loveless <ryan@etheridgelaw.com>; Jeff
`Huang <jeff@etheridgelaw.com>; Jim
`Etheridge <jim@etheridgelaw.com>; Adam
`Seitz <adam.seitz@eriseip.com>
`Subject: Re: IPR2018-00884: Dr. EasHom
`Deposi9on
`
`Counsel,
`
`We’ve had a chance to confer with our
`client, and we agree that an unopposed
`mo9on to strike Dr. EasHom’s declara9on
`and any references or cita9ons thereto is
`an acceptable alterna9ve to cross
`examina9on. We’ll reach out to the Board
`to request permission for the filing. To the
`extent they would like to convene a
`conference call to discuss, what’s your
`availability next week? We can generally
`make ourselves available at any 9me next
`week.
`
`Best,
`Paul
`
`
`
`
`
`
` Paul Hart | Shareholder
`Erise IP, P.A.
`Suite 200
`Greenwood Village, CO 80111
`(main) 913-777-5600
`(direct) 720-689-5441
`paul.hart@eriseip.com
`(fax) 913-777-5601
`www.eriseip.com
`
`5600 Greenwood Plaza Blvd.
`
`IPR2018-00884
`Apple Inc. EX1017 Page 6
`
`

`

`On Feb 7, 2019, at 2:07 PM,
`BreH Mangrum
`<breH@etheridgelaw.com>
`wrote:
`
`Counsel,
`
`Uniloc cites to Dr. EasHom’s
`declara9on solely for the
`proposi9on that “a POSITA
`would understand that the
`en9ty intercep9ng a message
`would not be one of the
`intended recipients of that
`message. EX2001 ¶¶ 8-9. In
`other words, a POSITA would
`understand that the device
`that is intercep9ng a message
`would be a third party to the
`intended recipients of that
`message.”
`
`Under these circumstances,
`Uniloc believes a cross
`examina9on of Dr. EasHom is
`a waste of the par9es’ 9me
`and resources. If you s9ll
`disagree, Uniloc would not
`oppose a mo9on to strike Dr.
`EasHom’s declara9on.
`
`Regards,
`BreH
`
`From: Paul Hart
`<paul.hart@eriseip.com>
`Sent: Tuesday, February 5,
`2019 3:07 PM
`To: Danny BuHs
`<danny@etheridgelaw.com>;
`Ryan Loveless
`<ryan@etheridgelaw.com>;
`BreH Mangrum
`<breH@etheridgelaw.com>;
`Jeff Huang
`<jeff@etheridgelaw.com>;
`Jim Etheridge
`
`IPR2018-00884
`Apple Inc. EX1017 Page 7
`
`

`

`Jim Etheridge
`<jim@etheridgelaw.com>
`Cc: Adam Seitz
`<adam.seitz@eriseip.com>
`Subject: IPR2018-00884: Dr.
`EasHom Deposi9on
`
`Counsel,
`
`We would like to schedule Dr.
`EasHom’s deposi9on in
`IPR2018-00884. The week of
`March 18 works well on our
`end. Please let us know if Dr.
`EasHom is available any day
`that week.
`
`Thanks very much.
`
`Best,
`Paul
`
` Paul Hart | Shareholder
`Erise IP, P.A.
`Suite 200
`Greenwood Village, CO 80111
`(main) 913-777-5600
`(direct) 720-689-5441
`paul.hart@eriseip.com
`(fax) 913-777-5601
`www.eriseip.com
`
`5600 Greenwood Plaza Blvd.
`
`
`
`
`
`Confidentiality Statement
`This email message and any attached files are
`confidential and are intended solely for the use of
`the addressee(s) named above. This
`communication may contain material protected by
`attorney-client, work product, or other privileges. If
`you are not the intended recipient or person
`responsible for delivering this confidential
`communication to the intended recipient, you have
`received this communication in error, and any
`review, use, dissemination, forwarding, printing,
`copying, or other distribution of this email message
`and any attached files is strictly prohibited. Erise IP,
`P.A. reserves the right to monitor any
`communication that is created, received, or sent on
`its network. If you have received this confidential
`communication in error, please notify the sender
`immediately by reply email message and
`permanently delete the original message.
`
`
`
`Confidentiality Statement
`This email message and any attached files are confidential and are
`intended solely for the use of the addressee(s) named above. This
`communication may contain material protected by attorney-client, work
`product, or other privileges. If you are not the intended recipient or person
`
`IPR2018-00884
`Apple Inc. EX1017 Page 8
`
`

`

`product, or other privileges. If you are not the intended recipient or person
`responsible for delivering this confidential communication to the intended
`recipient, you have received this communication in error, and any review,
`use, dissemination, forwarding, printing, copying, or other distribution of
`this email message and any attached files is strictly prohibited. Erise IP,
`P.A. reserves the right to monitor any communication that is created,
`received, or sent on its network. If you have received this confidential
`communication in error, please notify the sender immediately by reply
`email message and permanently delete the original message.
`
`
`
`
`
`
`
`Confidentiality Statement
`This email message and any attached files are confidential and are intended solely for the use of the addressee(s) named above. This
`communication may contain material protected by attorney-client, work product, or other privileges. If you are not the intended recipient or
`person responsible for delivering this confidential communication to the intended recipient, you have received this communication in error, and
`any review, use, dissemination, forwarding, printing, copying, or other distribution of this email message and any attached files is strictly
`prohibited. Erise IP, P.A. reserves the right to monitor any communication that is created, received, or sent on its network. If you have received
`this confidential communication in error, please notify the sender immediately by reply email message and permanently delete the original
`message.
`
`
`
`Confidentiality Statement
`This email message and any attached files are confidential and are intended solely for the use of the addressee(s) named above. This communication may contain
`material protected by attorney-client, work product, or other privileges. If you are not the intended recipient or person responsible for delivering this confidential
`communication to the intended recipient, you have received this communication in error, and any review, use, dissemination, forwarding, printing, copying, or other
`distribution of this email message and any attached files is strictly prohibited. Erise IP, P.A. reserves the right to monitor any communication that is created, received,
`or sent on its network. If you have received this confidential communication in error, please notify the sender immediately by reply email message and permanently
`delete the original message.
`
`IPR2018-00884
`Apple Inc. EX1017 Page 9
`
`

`

`IPR2018-00884
`Apple Inc. EX1017 Page 10
`
`IPR2018-00884
`Apple Inc. EX1017 Page 10
`
`