From: Brett Mangrum brett@etheridgelaw.com
`Subject: RE: IPR2018-00884: Dr. Easttom Deposition
`Date: March 12, 2019 at 1:31 PM
`To: Paul Hart paul.hart@eriseip.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
`
`Paul,
`
`We seem to be talking past one another. Our posi7on is straigh8orward: pursuant to the rules,
`any deposi7on of Dr. Eas@om should be strictly limited to the sole proposi7on for which the only
`two paragraphs of his declara7on is cited. You have refused to agree to this. Instead, your
`communica7ons confirm you intend to exceed that scope. On your last communica7on, for
`example, you confirmed your inten7on to ask ques7ons regarding an unspecified claim
`construc7on posi7on not addressed in the two paragraphs of Dr. Eas@om’s declara7on cited in
`Patent Owner’s response. Because Pe77oner has not agreed to properly limit the scope of the
`deposi7on to the sole argument in the Response for which the declara7on is cited, despite
`repeated invita7ons for Pe77oner to do so, the par7es clearly remain at a real impasse. Uniloc
`will inform the Board of these facts in its opposi7on to a mo7on to strike, should you decide to
`refile your mo7on.
`
`Regards,
`Bre@
`
`From: Paul Hart <paul.hart@eriseip.com>
`Sent: Monday, March 11, 2019 1:41 PM
`To: Bre@ Mangrum <bre@@etheridgelaw.com>
`Cc: Danny Bu@s <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>
`Subject: Re: IPR2018-00884: Dr. Eas@om Deposi7on
`
`Bre@,
`
`Throughout this weeks-long back and forth Pe77oner has never stated or suggested that it seeks
`cross examina7on that exceeds the scope permi@ed by the rules. Your a@empt to manufacture
`such an issue simply finds no support in the par7es communica7ons.
`
`I will state our posi7on once again, to ensure there is no confusion. Pe77oner disagrees with Mr.
`Eas@om’s claim construc7on posi7on and Patent Owner’s reliance on the same. Unless Patent
`Owner agrees to strike Mr. Eas@om’s declara7on and all reliance on that declara7on, Pe77oner
`demands a deposi7on of Mr. Eas@om. It is our right to cross examine Mr. Eas@om and we will not
`consider wri@en ques7ons (and the poten7al for gamesmanship those introduce) an adequate
`subs7tute for live cross examina7on.
`
`As we’ve now requested mul7ple 7mes, either (i) provide dates for Mr. Eas@om’s deposi7on or
`(ii) confirm that (1) you are refusing to make Mr. Eas@om available for cross examina7on and that
`(2) you will not oppose a mo7on to strike his declara7on and any references or cita7ons thereto
`following the close of our discovery period.
`
`
`IPR2018-00884
`Apple Inc. EX1020 Page 1
`
`

`

`
`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 8, 2019, at 3:56 PM, Bre@ Mangrum <bre@@etheridgelaw.com> wrote:
`
`Paul,
`
`To more produc7vely advance this discussion, it would be helpful if you addressed
`our prior ques7ons, including whether Pe77oner disputes the sole proposi7on for
`which the expert declara7on is cited. You also neglected to address our proposed
`compromise. Nevertheless, we understand from your last, including your comment
`that Uniloc’s admi@edly narrow reliance on the declara7on is “irrelevant,” that you
`seek a deposi7on for the impermissible purpose of asking ques7ons directed to
`arguments outside the scope of the Patent Owner Response. You are reminded that
`37 CFR 42.23 states a Pe77oner’s reply may only respond to arguments raised in a
`patent owner response. You apparent posi7on in scope is in conflict with this rule.
`You have provided no authority in support of your posi7on, though we invited you
`to do so.
`
`In the absence of the clarifica7on we specifically requested, we can only conclude
`that your purpose in seeking a deposi7on is to ask ques7ons outside what the rules
`allow. We need the clarifica7on we requested in order to properly address your
`ques7ons. Under the present circumstances, we cannot agree to not oppose a new
`mo7on to strike.
`
`Regards,
`Bre@
`
`From: Paul Hart <paul.hart@eriseip.com>
`Sent: Thursday, March 7, 2019 1:46 PM
`To: Bre@ Mangrum <bre@@etheridgelaw.com>
`Cc: Danny Bu@s <danny@etheridgelaw.com>; Ryan Loveless
`
`IPR2018-00884
`Apple Inc. EX1020 Page 2
`
`

`

`Cc: Danny Bu@s <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. Eas@om Deposi7on
`
`Bre@,
`
`You’ve submi@ed an expert declara7on in this case and have relied on that
`declara7on in your Patent Owner Response. Under the rules, we’re en7tled to cross
`examine your expert in a deposi7on. The narrowness of your expert’s opinions on
`which you rely is irrelevant. We’re en7tled a deposi7on and, if you won’t agree to
`strike his declara7on and your reliance on that declara7on, we want to proceed with
`his deposi7on.
`
`To the extent you are unwilling to provide dates of availability for Dr. Eas@om, the
`only op7on is his tes7mony must be stricken. As we stated previously, either (i)
`provide dates for Dr. Eas@om’s deposi7on or (ii) confirm that (1) you are refusing to
`make Dr. Eas@om available for cross examina7on and that (2) you will not oppose a
`mo7on to strike his declara7on and any references or cita7ons 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, Bre@ Mangrum
`<bre@@etheridgelaw.com> wrote:
`
`Paul:
`
`As we stated in prior communica7on, the Patent Owner Response
`ONLY cites Dr. Eas@om’s declara7on (EX2001 ¶¶ 8-9) for the sole
`proposi7on that “a POSITA would understand that the en7ty
`intercep7ng a message would not be one of the intended recipients of
`
`IPR2018-00884
`Apple Inc. EX1020 Page 3
`
`

`

`intercep7ng a message would not be one of the intended recipients of
`that message.” Our posi7on is that it would be a waste of the par7es
`resources to schedule a deposi7on that, under the rules, must be
`restricted to that sole proposi7on. Indeed, Pe77oner has not indicated
`whether that straigh8orward proposi7on is even disputed. Please do
`so. Given your insistence in scheduling a deposi7on, we can only
`assume that you intend to expand the scope of the deposi7on beyond
`what the rules allow. Please clarify your posi7on as to the scope and
`the authority in support of your posi7on. Alterna7vely, and in the
`interest of compromise, we would not be opposed to you submipng a
`limited number of interrogatory ques7ons directed to the single
`proposi7on for which the declara7on is cited.
`
`Regards,
`Bre@
`
`
`From: Paul Hart <paul.hart@eriseip.com>
`Sent: Wednesday, March 6, 2019 2:58 PM
`To: Bre@ Mangrum <bre@@etheridgelaw.com>
`Cc: Danny Bu@s <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. Eas@om Deposi7on
`
`Bre@,
`
`Pupng this back to the top of your inbox. Please let us know Uniloc’s
`posi7on.
`
`To the extent we do not hear from you on this issue, your silence will
`be interpreted as confirma7on that (1) you will not provide Dr. Eas@om
`for cross examina7on and (2) you will not oppose a mo7on to strike
`his declara7on and any references or cita7ons 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. EX1020 Page 4
`
`

`

`
`
`
`
`
`On Feb 28, 2019, at 9:43 AM, Paul Hart
`<paul.hart@eriseip.com> wrote:
`
`Bre@,
`
`Given the Court’s ruling (a@ached) that striking Eas@om’s
`declara7on is premature prior to the expira7on of our
`discovery period, we wanted to follow up with you all on
`next steps. To the extent that you are maintaining your
`prior posi7on, please confirm that (1) you will not provide
`Dr. Eas@om for cross examina7on and (2) you will not
`oppose a mo7on to strike his declara7on and any
`references or cita7ons thereto following the close of our
`discovery period. Otherwise, please provide dates of
`availability for Dr. Eas@om so Pe77oner can take his
`deposi7on 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 mo7on to strike Eas@om's Dec.pdf>
`
`
`On Feb 21, 2019, at 9:44 AM, Paul Hart
`<paul.hart@eriseip.com> wrote:
`
`IPR2018-00884
`Apple Inc. EX1020 Page 5
`
`

`

`<paul.hart@eriseip.com> wrote:
`
`Bre@,
`
`Here’s what we intend to send the Board by
`COB this arernoon:
`
`>>>
`In IPR2018-00884, Pe77oner Apple
`respec8ully requests permission to file an
`Unopposed Mo7on to Strike under 37
`CFR 42.5(a) and 42.20(a). Specifically, the
`Pe77oner seeks to strike the Eas@om
`Declara7on (Exhibit 2001) and all
`references or cita7ons to the declara7on in
`any filing as an alterna7ve to making the
`declarant available for cross-
`examina7on. Pe77oner and Patent Owner
`have conferred, and Patent Owner indicates
`that they do not oppose the mo7on.
`
`If needed, Pe77oner 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,
`Bre@ Mangrum
`<bre@@etheridgelaw.com>
`wrote:
`
`
`IPR2018-00884
`Apple Inc. EX1020 Page 6
`
`

`

`
`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,
`Bre@
`
`From: Paul Hart
`<paul.hart@eriseip.com>
`Sent: Wednesday, February 20,
`2019 11:52 AM
`To: Bre@ Mangrum
`<bre@@etheridgelaw.com>
`Cc: Danny Bu@s
`<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.
`Eas@om Deposi7on
`
`Counsel,
`
`We’ve had a chance to confer
`with our client, and we agree
`that an unopposed mo7on to
`strike Dr. Eas@om’s declara7on
`and any references or cita7ons
`thereto is an acceptable
`alterna7ve to cross
`examina7on. 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
`
`IPR2018-00884
`Apple Inc. EX1020 Page 7
`
`

`

`convene a conference call to
`discuss, what’s your availability
`next week? We can generally
`make ourselves available at any
`7me 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.
`
`
`
`
`
`
`On Feb 7, 2019, at
`2:07 PM, Bre@
`Mangrum
`<bre@@etheridgel
`aw.com> wrote:
`
`Counsel,
`
`Uniloc cites to
`Dr. Eas@om’s decla
`ra7on solely for
`the proposi7on
`that “a POSITA
`would understand
`that the en7ty
`intercep7ng a
`message would
`not be one of the
`intended
`recipients of that
`message. EX2001
`¶¶ 8-9. In other
`
`IPR2018-00884
`Apple Inc. EX1020 Page 8
`
`

`

`¶¶ 8-9. In other
`words, a POSITA
`would understand
`that the device
`that is
`intercep7ng a
`message would be
`a third party to
`the intended
`recipients of that
`message.”
`
`Under these
`circumstances,
`Uniloc believes a
`cross examina7on
`of Dr. Eas@om is a
`waste of the
`par7es’ 7me and
`resources. If you
`s7ll disagree,
`Uniloc would not
`oppose a mo7on
`to strike
`Dr. Eas@om’s decla
`ra7on.
`
`Regards,
`Bre@
`
`From: Paul Hart
`<paul.hart@erisei
`p.com>
`Sent: Tuesday,
`February 5, 2019
`3:07 PM
`To: Danny Bu@s
`<danny@etheridg
`elaw.com>; Ryan
`Loveless
`<ryan@etheridgel
`aw.com>; Bre@
`Mangrum
`<bre@@etheridgel
`aw.com>; Jeff
`Huang
`<jeff@etheridgela
`w.com>; Jim
`
`IPR2018-00884
`Apple Inc. EX1020 Page 9
`
`

`

`w.com>; Jim
`Etheridge
`<jim@etheridgela
`w.com>
`Cc: Adam Seitz
`<adam.seitz@eris
`eip.com>
`Subject: IPR2018-
`00884: Dr.
`Eas@om
`Deposi7on
`
`Counsel,
`
`We would like to
`schedule Dr.
`Eas@om’s
`deposi7on in
`IPR2018-00884.
`The week of
`March 18 works
`well on our end.
`Please let us know
`if Dr. Eas@om is
`available any day
`that week.
`
`Thanks very much.
`
`Best,
`Paul
`
` PaulHart | Shareholder
`Erise IP, P.A.
`Suite 200
`Greenwood Village, CO
`80111
`(main) 913-777-5600
`(direct) 720-689-5441
`paul.hart@eriseip.c
`(fax) 913-777-5601
`omwww.eriseip.com
`
`5600 Greenwood Plaza
`Blvd.
`
`
`
`
`
`Confidentiality Statement
`This email message and any
`attached files are confidential
`
`IPR2018-00884
`Apple Inc. EX1020 Page 10
`
`

`

`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.
`
`
`
`
`
`
`
`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.
`
`
`
`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. EX1020 Page 11
`
`

`

`|PR2018—00884
`
`Apple Inc. EX1020 Page 12
`
`IPR2018-00884
`Apple Inc. EX1020 Page 12
`
`

`

`|PR2018—00884
`
`Apple Inc. EX1020 Page 13
`
`IPR2018-00884
`Apple Inc. EX1020 Page 13
`
`

`

`|PR2018—00884
`
`Apple Inc. EX1020 Page 14
`
`IPR2018-00884
`Apple Inc. EX1020 Page 14
`
`