Graham C. Phero
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Graham C. Phero
`Wednesday, August 11, 2021 4:41 PM
`'Thomas, Henry C.'; Babbitt, Michael G.; Trey Powers
`James Buchanan; Horton, Sara Tonnies; Bill Flanigen; Trevor O'Neill; Harn, Ren-How;
`Daniel E. Yonan; Thieme, Tara; Donald R. Banowit; ProvisurTeam@willkie.com
`RE: Weber v. Provisur IPR Nos. 2020-01556-57
`
`Henry,
`
`
`We will send a physical copy of the CD-ROM, as delivered to customers. The label and case of the CD-ROM is visible at
`Production 2 – 007956. As we have repeatedly explained to you, there is no separate cover or spine for the CD-ROM.
`The CD-ROM accompanied the paper manuals provided to the customer with machine delivery and you already have
`those in your possession.
`
`
`Regards,
`Graham
`
`
`
`
`
`Graham C. Phero
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: gphero@sternekessler.com
`Direct: 202.772.8860
`
`From: Thomas, Henry C. <HThomas@willkie.com>
`Sent: Tuesday, August 10, 2021 5:19 PM
`To: Graham C. Phero <GPHERO@sternekessler.com>; Babbitt, Michael G. <MBabbitt@willkie.com>; Trey Powers
`<TPOWERS@sternekessler.com>
`Cc: James Buchanan <JBUCHANAN@sternekessler.com>; Horton, Sara Tonnies <SHorton@willkie.com>; Bill Flanigen
`<BFLANIGEN@sternekessler.com>; Trevor O'Neill <TOneill@sternekessler.com>; Harn, Ren-How <RHarn@willkie.com>;
`Daniel E. Yonan <DYONAN@sternekessler.com>; Thieme, Tara <TThieme@willkie.com>; Donald R. Banowit
`<DBANOWIT@sternekessler.com>; ProvisurTeam@willkie.com
`Subject: RE: Weber v. Provisur IPR Nos. 2020-01556-57
`
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`
`Graham,
`
`Thank you for your reply.
`
`We understand from your reply that you agree to provide the physical CD-ROM “as delivered to customers,” and that
`this would include the CD-ROM itself as well as any cover, label, spine, case, or similar material(s) delivered with or on
`the CD-ROM.
`
`Please mail the CD-ROM and any/all accompanying materials to:
`Attn: Henry Thomas
`Willkie Farr & Gallagher, LLP
`300 North LaSalle
`
`1
`
`Weber EX1084
`Weber v. Provisur
`IPR2020-01557
`
`

`

`Suite 50
`Chicago, IL 60654-3406
`
`
`Regards,
`Henry
`
`
`
`Henry C. Thomas
`Willkie Farr & Gallagher LLP
`300 North LaSalle | Chicago, IL 60654-3406
`Direct: +1 312 728 9021 | Fax: +1 312 728 9199
`hthomas@willkie.com | vCard | www.willkie.com bio
`
`From: Graham C. Phero <GPHERO@sternekessler.com>
`Sent: Friday, August 6, 2021 4:41 PM
`To: Thomas, Henry C. <HThomas@willkie.com>; Babbitt, Michael G. <MBabbitt@willkie.com>; Trey Powers
`<TPOWERS@sternekessler.com>
`Cc: James Buchanan <JBUCHANAN@sternekessler.com>; Horton, Sara Tonnies <SHorton@willkie.com>; Bill Flanigen
`<BFLANIGEN@sternekessler.com>; Trevor O'Neill <TOneill@sternekessler.com>; Harn, Ren-How <RHarn@willkie.com>;
`Daniel E. Yonan <DYONAN@sternekessler.com>; Thieme, Tara <TThieme@willkie.com>; Donald R. Banowit
`<DBANOWIT@sternekessler.com>; ProvisurTeam@willkie.com
`Subject: RE: Weber v. Provisur IPR Nos. 2020-01556-57
`
`
`*** EXTERNAL EMAIL ***
`
`Dear Henry,
`
`
`Provisur first specified it was requesting a physical copy of the CD-ROM on June 15th. This was a full ten months after
`Weber’s Petition and two months from our production of the 7106 manuals in Production 1. You also sent follow up
`emails on May 14th and June 8th regarding Weber’s productions, but did not clarify your request or mention your desire
`for a physical CD-ROM. The delay in requesting the physical copy of the CD-ROM is Provisur’s and Provisur’s alone. Once
`you changed your request from a copy of the CD-ROM to a physical copy of the CD-ROM, Weber has been diligent in
`responding to this request despite Provisur failing to satisfy even the minimum criteria for additional discovery.
`
`
`Your mischaracterizations of the timeline and facts are also improper. At the time of Provisur’s request for a responsive
`physical CD-ROM on June 15th, Weber in fact did not have access to a responsive CD-ROM. But in an effort to
`accommodate Provisur’s very late request, Weber‘s RPIs conducted a search and found a responsive physical CD-ROM.
`We also explained to you that our ability to respond to your belated request for a physical CD-ROM would likely be
`delayed due to restricted spaces in various location where a responsive CD-ROM might be, as well as remote work for
`personnel able to conduct the searches.
`
`
`We have repeatedly explained to you that the CD-ROM does not include any DRM, popups, notices, encryption, or
`password protection. And we have already produced all English documents on the CD-ROM. Thus, there is nothing more
`Provisur can hope to gain by reviewing the physical CD-ROM. And Provisur still has not come close to establishing that
`the additional discovery of this physical CD-ROM is warranted. Nevertheless, in our continued effort to accommodate
`your requests, Weber will provide you with a physical copy of a CD-ROM as delivered to customers. Please provide your
`preferred mailing address and we will send a copy of the CD-ROM to you.
`
`Regards,
`Graham
`
`
`2
`
`

`

`
`
`Graham C. Phero
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: gphero@sternekessler.com
`Direct: 202.772.8860
`
`From: Thomas, Henry C. <HThomas@willkie.com>
`Sent: Wednesday, August 4, 2021 11:53 AM
`To: Graham C. Phero <GPHERO@sternekessler.com>; Babbitt, Michael G. <MBabbitt@willkie.com>; Trey Powers
`<TPOWERS@sternekessler.com>
`Cc: James Buchanan <JBUCHANAN@sternekessler.com>; Horton, Sara Tonnies <SHorton@willkie.com>; Bill Flanigen
`<BFLANIGEN@sternekessler.com>; Trevor O'Neill <TOneill@sternekessler.com>; Harn, Ren-How <RHarn@willkie.com>;
`Daniel E. Yonan <DYONAN@sternekessler.com>; Thieme, Tara <TThieme@willkie.com>; Donald R. Banowit
`<DBANOWIT@sternekessler.com>; ProvisurTeam@willkie.com
`Subject: RE: Weber v. Provisur IPR Nos. 2020-01556-57
`
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`
`Graham,
`
`Please let us know by Friday 8/6 if you will provide a physical copy of the CD-ROM for the 904-7106 slicer that you
`reference as in Petitioner’s current possession. If you refuse, please let us know your availability for a call with the
`Board next week.
`
`As evident from the below exchanges, Provisur has repeatedly requested a “complete copy of the CD-ROM delivered
`with the 904 Slicer” (since April 21). After more than two months, and less than one week before Provisur’s POR
`deadline, Weber purported that it did not have access to a complete copy of said CD-ROM. Only after Provisur pointed
`out inconsistent testimony by one of Weber’s declarants did Weber notify Provisur that the remaining real parties-in-
`interest were conducting searches for the CD-ROM. Finally, after Provisur’s July 26th request for a search update, Weber
`admitted it has a complete copy of the CD-ROM, yet Weber still failed to produce the complete copy of the CD-ROM.
`
`Provisur has sought, in the interests of justice, to conduct its own review of a complete copy of the CD-ROM’s file
`structures, copyright notices, and confidentiality provisions. The contents of a complete copy of the CD-ROM are
`critically related to the secrecy of the 904 Slicer Manuals. It is not just a mere possibility or allegation that the CD-ROM
`may be useful; Weber’s own arguments reference the CD-ROM; and there appears to be inconsistent testimony
`regarding the CD-ROM. Additionally, Weber faces virtually no burden to produce the CD-ROM since Weber admits it has
`a physical copy of the CD-ROM, and Weber’s attorneys have reviewed the CD-ROM.
`
`Regards,
`Henry
`
`
`
`Henry C. Thomas
`Willkie Farr & Gallagher LLP
`300 North LaSalle | Chicago, IL 60654-3406
`Direct: +1 312 728 9021 | Fax: +1 312 728 9199
`hthomas@willkie.com | vCard | www.willkie.com bio
`
`From: Graham C. Phero <GPHERO@sternekessler.com>
`Sent: Friday, July 30, 2021 3:06 PM
`To: Thomas, Henry C. <HThomas@willkie.com>; Babbitt, Michael G. <MBabbitt@willkie.com>; Trey Powers
`
`3
`
`

`

`<TPOWERS@sternekessler.com>
`Cc: James Buchanan <JBUCHANAN@sternekessler.com>; Horton, Sara Tonnies <SHorton@willkie.com>; Bill Flanigen
`<BFLANIGEN@sternekessler.com>; Trevor O'Neill <TOneill@sternekessler.com>; Harn, Ren-How <RHarn@willkie.com>;
`Daniel E. Yonan <DYONAN@sternekessler.com>; Thieme, Tara <TThieme@willkie.com>; Donald R. Banowit
`<DBANOWIT@sternekessler.com>; ProvisurTeam@willkie.com
`Subject: RE: Weber v. Provisur IPR Nos. 2020-01556-57
`
`
`*** EXTERNAL EMAIL ***
`I'm using Mimecast to share large files with you. Please see the attached instructions.
`
`Dear Henry,
`
`
`We located a physical CD-ROM for the 904-7106 slicer that is a copy of what was delivered to the customer. I reviewed
`the CD-ROM and can confirm that the contents of the CD-ROM include the documents we previously produced to you
`and their German language equivalents. The CD also includes four additional manuals and their German language
`equivalents. The English versions of these manuals are attached as Production 7. The file names are as follows:
`
`Messer_V-02_2007-03-12_GB.pdf
`CCU-904_02_2006-04-14_GB.pdf
`CPS_03_2006-07-19_GB.pdf
`BA_Touch-Screen-_06_2005-11-03_GB.pdf
`
`Also, I confirm that the CD-ROM does not include any DRM, popups, notices, encryption, or password protection to
`access the files.
`
`With this last production, our responses to your requests for additional discovery are concluded.
`
`
`Regards,
`Graham
`
`
`
`
`Graham C. Phero
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: gphero@sternekessler.com
`Direct: 202.772.8860
`
`From: Graham C. Phero
`Sent: Tuesday, June 29, 2021 2:59 PM
`To: 'Thomas, Henry C.' <HThomas@willkie.com>; Babbitt, Michael G. <MBabbitt@willkie.com>; Trey Powers
`<TPOWERS@sternekessler.com>
`Cc: Harn, Ren-How <RHarn@willkie.com>; Horton, Sara Tonnies <SHorton@willkie.com>; James Buchanan
`<JBUCHANAN@sternekessler.com>; Thieme, Tara <TThieme@willkie.com>; Daniel E. Yonan
`<DYONAN@sternekessler.com>; Donald R. Banowit <DBANOWIT@sternekessler.com>; ProvisurTeam@willkie.com;
`Trevor O'Neill <TOneill@sternekessler.com>
`Subject: RE: Weber v. Provisur IPR Nos. 2020-01556-57
`
`Henry,
`
`As stated in our previous emails, Provisur made a new request, on June 15th, for “a complete physical copy of the CD”
`related to its additional discovery Request 3. Provisur has still not made any attempt to show that it is entitled to this
`newly requested additional discovery. But in our continued effort to accommodate your very belated request, we asked
`4
`
`

`

`that Weber Inc. conduct a search for a physical copy of a machine CD-ROM that is responsive to your Request 3. As
`previously stated, they do not have one. However, we understand from Weber Inc. that the contents of the CD-ROM
`were identical to what we produced to you. We further understand that the CD-ROM did not include any DRM, popups,
`notices, encryption, or password protection. We understand that the 904-7106 machine CD-ROM included the following
`file names, each of which were previously produced to you at the noted production numbers:
`
`904_7106_E.PDF – Production 2, 006536
`BA_Weber@net_04_2006-08-17_GB.PDF – Production 2, 006922
`CCE_03_2006-07-03_GB.PDF – Production 2, 006968
`CCI-904_Interleaver_02_2006-12-15_GB.PDF – Production 2, 007015
`CCS_904_SLC-7106_GB(2).PDF – Production 2, 007118
`CCS-904_06_2006-07-01_GB(1).PDF – Production 2, 007184
`CCS-904_Side-Pressure-Device_02_2007-07-10_GB.PDF – Production 2, 007472
`CCW-200_04_2006-07-05_GB.PDF – Production 2, 007506
`CQR_01_2007-08-21_GB.PDF – Production 2, 007556
`ETL904-7106_SLC_01_070830.PDF – Production 2, 007603
`ME_Touch-Screen-_06_2005-11-03_GB.PDF – Production 2, 007958
`PB_Touch-Screen_06_2005-11-03_GB.PDF – Production 2, 008043
`
`In addition to our request to Weber Inc., we have outstanding requests with all real parties-in-interest in these IPRs and
`will update you as soon as possible if a physical copy of a machine CD-ROM that is responsive to your Request 3
`becomes available. The non-US real parties-in-interest have not yet completed their search for physical CD-ROMs
`responsive to this late request.
`
`Regards,
`Graham
`
`
`
`
`Graham C. Phero
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: gphero@sternekessler.com
`Direct: 202.772.8860
`
`From: Thomas, Henry C. <HThomas@willkie.com>
`Sent: Tuesday, June 29, 2021 10:27 AM
`To: Babbitt, Michael G. <MBabbitt@willkie.com>; Graham C. Phero <GPHERO@sternekessler.com>; Trey Powers
`<TPOWERS@sternekessler.com>
`Cc: Harn, Ren-How <RHarn@willkie.com>; Horton, Sara Tonnies <SHorton@willkie.com>; James Buchanan
`<JBUCHANAN@sternekessler.com>; Thieme, Tara <TThieme@willkie.com>; Daniel E. Yonan
`<DYONAN@sternekessler.com>; Donald R. Banowit <DBANOWIT@sternekessler.com>; ProvisurTeam@willkie.com;
`Trevor O'Neill <TOneill@sternekessler.com>
`Subject: RE: Weber v. Provisur IPR Nos. 2020-01556-57
`
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`
`Graham,
`
`I am following up hopefully one last time on our request for Weber to produce complete copies of the CD-
`ROMs delivered with 904 slicers. From your last response email of 6/23, we understood that Weber was not
`able to find any copies of the CD whatsoever, and we told you based on that representation that we would not
`intend to take the issue to the board at that time. In advance of our POR deadline today, we have also
`
`5
`
`

`

`reviewed Mr. Schrieber’s testimony which seems to describe reviewing a CD in advance of his
`deposition. (Transcript of Jörn Schreiber, 16:07-19:01.)
`
`In light of this testimony, can you please confirm it is your position that Weber does not have any access to a
`CD-ROM (or CD-ROMs) delivered with a 904 slicer? And to be clear, we seek, and have sought all along,
`information from Petitioner Weber Inc. including all real parties-in-interest: Textor, Inc., Weber Maschinenbau
`GmbH Breidenbach, Weber Maschinenbau GmbH Neubrandenburg, and Textor Maschinenbau GmbH. Please
`let us know immediately this morning if you believe there is any issue or misunderstanding.
`
`
`Regards,
`Henry
`
`
`Henry C. Thomas
`Willkie Farr & Gallagher LLP
`300 North LaSalle | Chicago, IL 60654-3406
`Direct: +1 312 728 9021 | Fax: +1 312 728 9199
`hthomas@willkie.com | vCard | www.willkie.com bio
`
`From: Babbitt, Michael G. <MBabbitt@willkie.com>
`Sent: Friday, June 25, 2021 8:59 AM
`To: 'Graham C. Phero' <GPHERO@sternekessler.com>; Trey Powers <TPOWERS@sternekessler.com>; Thomas, Henry C.
`<HThomas@willkie.com>
`Cc: Harn, Ren-How <RHarn@willkie.com>; Horton, Sara Tonnies <SHorton@willkie.com>; James Buchanan
`<JBUCHANAN@sternekessler.com>; Thieme, Tara <TThieme@willkie.com>; Daniel E. Yonan
`<DYONAN@sternekessler.com>; Donald R. Banowit <DBANOWIT@sternekessler.com>; ProvisurTeam@willkie.com;
`Trevor O'Neill <TOneill@sternekessler.com>
`Subject: RE: Weber v. Provisur IPR Nos. 2020-01556-57
`
`Graham,
`
`Thank you for your below response. We do not intend to take this issue to the Board at this time and reserve all rights.
`
`Regards,
`Mike
`
`
`Michael G. Babbitt
`Willkie Farr & Gallagher LLP
`300 North LaSalle | Chicago, IL 60654-3406
`Direct: +1 312 728 9070 | Fax: +1 312 728 9199
`mbabbitt@willkie.com | vCard | www.willkie.com bio
`
`From: Graham C. Phero <GPHERO@sternekessler.com>
`Sent: Wednesday, June 23, 2021 8:44 PM
`To: Babbitt, Michael G. <MBabbitt@willkie.com>; Trey Powers <TPOWERS@sternekessler.com>; Thomas, Henry C.
`<HThomas@willkie.com>
`Cc: Harn, Ren-How <RHarn@willkie.com>; Horton, Sara Tonnies <SHorton@willkie.com>; James Buchanan
`<JBUCHANAN@sternekessler.com>; Thieme, Tara <TThieme@willkie.com>; Daniel E. Yonan
`<DYONAN@sternekessler.com>; Donald R. Banowit <DBANOWIT@sternekessler.com>; ProvisurTeam@willkie.com;
`Trevor O'Neill <TOneill@sternekessler.com>
`Subject: RE: Weber v. Provisur IPR Nos. 2020-01556-57
`
`6
`
`

`

`
`
`*** EXTERNAL EMAIL ***
`I'm using Mimecast to share large files with you. Please see the attached instructions.
`
`Dear Henry,
`
`Provisur continues not even to attempt to make a showing that it is entitled to this new requested additional discovery.
`But in our continued effort to accommodate your requests, we requested that Weber Inc. conduct a search for a
`physical copy of a machine CD-ROM that is responsive to your Request 3. They do not have one. The electronic files
`were migrated to a server years ago and the remaining physical CDs for the 904 slicers were likely destroyed. The CD
`picture we produced is an old image from the server and was not recently taken by us or Weber. In the past, we
`understand Weber took and archived a CD picture to confirm that the relevant CD-ROM was burned and sent with the
`manual binder. Accordingly, Weber has been unable to find a CD-ROM responsive to your request after a reasonable
`search.
`
`Regarding your new request for the German language 2010 spare parts list, Provisur’s has similarly not made any
`showing that it is entitled to this requested additional discovery. Nevertheless, in the spirit of cooperation, Weber will
`accommodate your request. The German Spare Parts List for 904-7342 is attached. We are producing this document in
`its native form because you specifically requested it in German.
`
`We trust this email resolves all of your remaining concerns.
`
`Regards,
`Graham
`
`
`
`
`Graham C. Phero
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: gphero@sternekessler.com
`Direct: 202.772.8860
`
`From: Thomas, Henry C. <HThomas@willkie.com>
`Sent: Wednesday, June 23, 2021 10:46 AM
`To: Graham C. Phero <GPHERO@sternekessler.com>; Babbitt, Michael G. <MBabbitt@willkie.com>; Trey Powers
`<TPOWERS@sternekessler.com>
`Cc: Horton, Sara Tonnies <SHorton@willkie.com>; Harn, Ren-How <RHarn@willkie.com>; Thieme, Tara
`<TThieme@willkie.com>; James Buchanan <JBUCHANAN@sternekessler.com>; Trevor O'Neill
`<TOneill@sternekessler.com>; Donald R. Banowit <DBANOWIT@sternekessler.com>; Daniel E. Yonan
`<DYONAN@sternekessler.com>; ProvisurTeam@willkie.com
`Subject: RE: Weber v. Provisur IPR Nos. 2020-01556-57
`
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`
`Graham,
`
`As you know and evident from the below emails, Provisur originally provided its production requests to Weber on April
`21. Weber informed Provisur on April 23 that it was reviewing Provisur’s requests. Only after Provisur followed up
`twice did Weber commit to producing documents. Weber produced its first set of documents on May 12, and as
`indicated below, has been on notice since May 14 that its productions were insufficient. Weber ignored Provisur’s
`communication that the productions were insufficient, and Weber continued providing productions on a rolling basis for
`the next three weeks. During no time since April 23 has Provisur allowed more than five business days to pass without
`7
`
`

`

`communication to Weber or receiving a production. Accordingly, Provisur has been diligent in its requests and
`clarifications of its initial requests. Notably, Weber has been on notice since May 14 that Provisur’s third request was
`not adequately responded to, and Weber waited until June 21 to inform Provisur that Weber’s understanding did not
`comport with the plain language of Provisur’s requests.
`
`Our POR is due Tuesday, and we continue to seek two basic pieces of information that are clearly in your possession and
`not at all burdensome to produce: (i) a complete copy of the CD-ROMs delivered with the 904 slicer, and (ii) a copy of
`the parts list provided along with the 2010 904 Manual. If Weber will not agree to produce the materials immediately,
`please provide all times you are available for a call with the Board on Thursday (6/24), Friday (6/25), and Monday 6/(28).
`
`Regards,
`Henry
`
`
`Henry C. Thomas
`Willkie Farr & Gallagher LLP
`300 North LaSalle | Chicago, IL 60654-3406
`Direct: +1 312 728 9021 | Fax: +1 312 728 9199
`hthomas@willkie.com | vCard | www.willkie.com bio
`
`From: Graham C. Phero <GPHERO@sternekessler.com>
`Sent: Tuesday, June 22, 2021 10:09 PM
`To: Thomas, Henry C. <HThomas@willkie.com>; Babbitt, Michael G. <MBabbitt@willkie.com>; Trey Powers
`<TPOWERS@sternekessler.com>
`Cc: Horton, Sara Tonnies <SHorton@willkie.com>; Harn, Ren-How <RHarn@willkie.com>; Thieme, Tara
`<TThieme@willkie.com>; James Buchanan <JBUCHANAN@sternekessler.com>; Trevor O'Neill
`<TOneill@sternekessler.com>; Donald R. Banowit <DBANOWIT@sternekessler.com>; Daniel E. Yonan
`<DYONAN@sternekessler.com>; ProvisurTeam@willkie.com
`Subject: RE: Weber v. Provisur IPR Nos. 2020-01556-57
`
`
`*** EXTERNAL EMAIL ***
`
`Henry,
`
`Provisur requested six categories of documents in these IPR proceedings as allegedly “in the interest of justice.”
`Attempting to accommodate Provisur, Weber operated in good faith and compiled and produced over 180 separate
`documents (e.g., installation and service reports, product manuals, shipping invoices, bills of lading, and other
`documents) which fully satisfied your original requests for additional discovery as we understood them. Weber
`accommodated Provisur’s document requests at significant expense and inconvenience to Weber. And Weber made
`available four fact witnesses (whom you deposed) to answer questions related to their declarations and the public
`availability of the 904 manuals and other materials. You now make additional, new, and belated requests that do not
`appear to meet the necessary standard for additional discovery.
`
`You must show that this new additional discovery you seek is “in the interest of justice.” 37 C.F.R. 42.51(b)(2). You have
`not done so. As you are aware, discovery in IPRs is carefully circumscribed. The PTAB considers the following factors in
`deciding a request for additional discovery: (1) the request is more than a possibility and mere allegation with regard to
`the likelihood of useful discovery; (2) the request does not merely seek the opposing party’s litigation positions and
`corresponding basis underlying those positions; (3) there is not an ability to obtain or generate equivalent information
`by alternative means; (4) the instructions are easily understandable; and (5) the request is not overly burdensome to
`answer. See Garmin Int’l Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26, 6-7 (PTAB Mar. 5, 2013). We address
`your new requests below.
`
`
`8
`
`

`

`Request 3 – As I indicated, and you know, we produced the complete copies of the files contained on two CD-ROMs,
`consistent with our understanding of your original requests. You have waited months to ask now for a physical copy of a
`CD. Moreover, you have not indicated why your request has more than a possibility that the physical CD will lead to
`useful discovery beyond all of the routine and additional discovery already in your possession. Notably, Provisur did not
`ask any of Weber’s four fact witnesses questions to “confirm the folder structure and file names on the CDs, if there is
`any other information reflected on the CDs, and/or if the CDs contained any DRM, popups, notices, encryption,
`password protection.” Thus, Provisur had, but waived, its opportunity to generate this information by alternative means
`– other than this very late request. To the extent you still seek a physical CD-ROM, please explain in detail why Provisur
`thinks it is entitled to this additional discovery, especially in view of Provisur’s failure to pursue questions about the CD-
`ROM during routine discovery depositions.
`
`Request 2 – You previously requested, “[o]ne complete set of the English materials as delivered to customers prior to
`May 2010 with the 904 Slicer, including the front and back binder cover, label, spine, operating manual, maintenance
`manual, parts manual, and electrical drawings, and any indexes, table of contents or other included materials such as
`referenced at Ex. 1016 ¶ 7 and Ex. 1017 ¶ 6.” Weber complied with this request and produced the requested materials.
`You now request “a spare parts list that was delivered with a 904-02 machine prior to May 2010” and “German language
`version of the Spare Parts list allegedly delivered with a 2010 manual.” This is clearly a different, new request from your
`previous Request 2.
`
`Also, we disagree that this parts list would fall under your previous Request 3. You did not request sets of non-English
`materials, nor did you distinguish between materials delivered with the 2006 manual and the 2010 manual. This is a new
`request and you have not indicated why there is more than a possibility that the parts list will lead to useful discovery.
`As I stated, neither of Weber’s Petitions nor any of the declarations reference a 904-2 machine. You have not indicated
`how or why this parts list is related to the public availability of the manuals at issue in these IPRs. Nor have you indicated
`why production of this spare parts list is in the interest of justice. Provisur also could have asked Weber fact witnesses
`Mr. Schreiber or Mr. Reisz questions regarding the “German language version of the Spare Parts list allegedly delivered
`with a 2010 manual,” but Provisur chose not to. Thus, Provisur had, but waived, its opportunity to generate this
`information by alternative means – other than this very late request. To the extent you still seek a copy of the parts list
`provided along with the 2010 904 Manual, please explain in detail why Provisur believes it is entitled to this additional
`discovery.
`
`Additionally, regarding request 4, we disagree with your new characterization of Request 4 as “Installation/Service
`Reports” and we disagree with your characterization of our response. You previously requested, “Installation reports for
`each alleged sale of a 904 Slicer prior to May 2010, such as referenced at Ex. 1016 ¶ 15.” As stated in our previous email,
`we have produced all of the installation reports found after a reasonable search. We reserve the right to supplement if
`additional reports are found. You did not request “all installation and service reports,” nor did I write that we have
`produced “all installation and service reports” in our possession for the slicers delivered with a 2010 version of the
`manual.
`
`Regards,
`Graham
`
`
`
`
`Graham C. Phero
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: gphero@sternekessler.com
`Direct: 202.772.8860
`
`From: Thomas, Henry C. <HThomas@willkie.com>
`Sent: Monday, June 21, 2021 8:56 PM
`To: Graham C. Phero <GPHERO@sternekessler.com>; Babbitt, Michael G. <MBabbitt@willkie.com>; Trey Powers
`<TPOWERS@sternekessler.com>
`
`9
`
`

`

`Cc: Horton, Sara Tonnies <SHorton@willkie.com>; Harn, Ren-How <RHarn@willkie.com>; Thieme, Tara
`<TThieme@willkie.com>; James Buchanan <JBUCHANAN@sternekessler.com>; Trevor O'Neill
`<TOneill@sternekessler.com>; Donald R. Banowit <DBANOWIT@sternekessler.com>; Daniel E. Yonan
`<DYONAN@sternekessler.com>; ProvisurTeam@willkie.com
`Subject: RE: Weber v. Provisur IPR Nos. 2020-01556-57
`
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`
`Graham,
`
`
`We are trying to get a complete set of the documents we requested in April before our POR is due next week.
`
`
`Request 3 (CD-ROM) – We clearly requested a “complete copy of the CD-ROM delivered with the 904 Slicer
`to customers prior to May 2010.” Our use of the term “physical” does not make this a new request––it clarifies
`Provisur’s reasoning for why Weber’s response to this request has thus far been deficient. You have copies of
`the CDs in your possession, and we want discovery to confirm what is on the CD. For example, we want to
`confirm the folder structure and file names on the CDs, if there is any other information reflected on the CDs,
`and/or if the CDs contained any DRM, popups, notices, encryption, password protection or other information
`relevant to this case. We thought a physical inspection would make sense, but we are open to reviewing this
`information in some other form if that makes more sense to you.
`
`
`Request 4 (Installation/Service Reports) – We understand now that Weber claims to have produced all
`installation and service reports in its possession for the slicers allegedly delivered with a 2010 version of the
`manual.
`
`
`Request 2 (2010 Spare Parts List) – Please confirm if you will agree to produce the German language version of
`the Spare Parts list allegedly delivered with a 2010 manual. Given your position that there is no English version
`of this document, we believe it is in the interest of justice for Weber to at least produce the German version. I
`also believe this document would fall under previous Request No. 3 for a “complete copy” of 904 materials
`allegedly delivered prior to May 2010. There is no burden to Weber is producing this information.
`
`
`Please let us know if you can confirm your positions or if we can have a meet and confer tomorrow. If we
`remain at issue, please let us know your availability for a call with the Board this week.
`
`
`Regards,
`Henry
`
`
`
`Henry C. Thomas
`Willkie Farr & Gallagher LLP
`300 North LaSalle | Chicago, IL 60654-3406
`Direct: +1 312 728 9021 | Fax: +1 312 728 9199
`hthomas@willkie.com | vCard | www.willkie.com bio
`
`From: Graham C. Phero <GPHERO@sternekessler.com>
`Sent: Monday, June 21, 2021 7:18 AM
`To: Thomas, Henry C. <HThomas@willkie.com>; Babbitt, Michael G. <MBabbitt@willkie.com>; Trey Powers
`<TPOWERS@sternekessler.com>
`Cc: Horton, Sara Tonnies <SHorton@willkie.com>; Harn, Ren-How <RHarn@willkie.com>; Thieme, Tara
`<TThieme@willkie.com>; James Buchanan <JBUCHANAN@sternekessler.com>; Trevor O'Neill
`<TOneill@sternekessler.com>; Donald R. Banowit <DBANOWIT@sternekessler.com>; Daniel E. Yonan
`10
`
`

`

`<DYONAN@sternekessler.com>; ProvisurTeam@willkie.com
`Subject: RE: Weber v. Provisur IPR Nos. 2020-01556-57
`
`
`*** EXTERNAL EMAIL ***
`
`Henry,
`
`We are puzzled by the evolving nature of your requests for additional discovery. Additional discovery at the PTAB is
`limited in nature and must be ‘in the interests of justice.’ 37 CFR 42.51(2)(i). As outlined below, your new requests do
`not satisfy the Garmin factors. We will address your new requests in the same order you do in your last email.
`
`Request 3 – You previously requested:
`
`
`“One complete copy of the CD-ROM delivered with the 904 Slicer to customers prior to May 2010 as
`delivered to customers, including the CD-ROM front and back cover, label, spine, case, and the
`electronic files, such as referenced at Ex. 1011 ¶ 23.”
`
`
`We have produced the complete copies of the files of two CD-ROMs to you, as indicated in my prior email, as well as
`images of the CD-ROMs in their sleeves, precisely as we understood your request. The CD-ROMs did not include a case
`with a front and back cover, label, and spine. Your email now requests, for the first time, a physical copy of a CD.
`Provisur has never used the words “physical copy” in connection with these requests before your last email of yesterday
`(June 15). You assertion that Provisur “has repeatedly requested a physical copy of the CD” is therefore inconsistent
`with our understanding of your request and the plain words you used in the request.
`
`Thus, this is a new request. We note also that the contents and electronic files from these CD-ROMs will not change,
`regardless of the medium on which we provide them. And we have precisely identified the files that were contained on
`the CDs delivered with the 904 Slicer for you in our previous emails. Please explain why your new and belated request
`for a “physical copy of a CD” is in the interest of justice given what we have already produced to you.
`
`Request 4 – Installation Reports. We have produced all of the installation reports found after a reasonable search. We
`reserve the right to supplement if additional reports are found.
`
`Request 2 – As an initial matter, neither of Weber’s Petitions nor any of the declarations reference a 904-2 machine, so
`it is unclear what you are requesting by “a spare parts list that was delivered with a 904-02 machine prior to May 2010,”
`and we do not understand how this new and belated request for additional discovery is in the interest of justice, as
`required by 37 CFR 42.51(2)(i).
`
`You previously requested:
`
`
`One complete set of the English materials as delivered to customers prior to May 2010 with the 904
`Slicer, including the front and back binder cover, label, spine, operating manual, maintenance manual,
`parts manual, and electrical drawings, and any indexes, table of contents or other included materials
`such as referenced at Ex. 1016 ¶ 7 and Ex. 1017 ¶ 6.
`
`
`We have produced two complete sets of the English materials as delivered to customers prior to May 2010. To