Sun •, La wrence
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Kyle:
`
`Sung, Lawrence
`Wednesday, October 7, 2020 1:33 PM
`'Deighan, Kyle'
`Tucker, Todd; Reulbach, John; Summers, Teresa
`RE:IPR2020-01573
`
`Patent Owner disagrees with your mischaracterization. Petitioner's "compromise" was given its due consideration. But it
`should be unsurprising that Patent Owner cannot accept a proposal that contravenes the letter and spirit of the
`discovery rules by your restricting access to nonprivileged matter, which you admit is relevant to the real party in
`interest statutory mandate, and which is proportional to the needs of this inter partes review (IPR). Among other things,
`the offer of aPetitioner-redacted version of the University license as part of your demand for Patent Owner's overall
`waiver of any discovery relating to the financial interest of the University in the outcome of this IPR squarely ignores the
`essence of our request and the law governing the real party in interest inquiry. In view of Petitioner's stand, Patent
`Owner has no recourse but to seek relief from the Board, and without further unnecessary delay. Thank you.
`
`Lawrence
`
`From: Deighan, Kyle <KDeighan@Calfee.com>
`Sent: Wednesday, October 7, 2020 12:10 PM
`To: Sung, Lawrence <LSung@wiley.law>
`Cc: Tucker, Todd <TTucker@Calfee.com>; Reulbach, John <JReulbach@calfee.com>; Summers, Teresa
`<TSummers@wiley.law>
`Subject: RE: IPR2020-01573
`
`External Email
`
`Lawrence,
`
`We are disappointed that Patent Owner has immediately rejected out-of-hand Petitioners' proposed compromise, which
`would have avoided burdening the Board and saved the parties' resources. Understand that we intend to oppose your
`request and in view of the quick rejection, question its true motives. We are available for a teleconference with the
`Board from 12-2pm eastern on Thursday, October 8. We are not available on Friday, October 9. We are available from
`10am-4pm on Monday, October 12.
`
`Regards,
`Kyle
`
`Kyle T. Deighan
`Not Licensed in Ohio; Licensed in DC and NY
`kdeighan@calfee.com
`216.622.8551 Phone
`
`From: Sung, Lawrence <LSung@wiley.law>
`Sent: Tuesday, October 6, 2020 8:34 PM
`
`1
`
`Patent Owner Ex. 2010-0001
`
`

`

`To: Deighan, Kyle <KDeighan @Calfee.com>
`Cc: Tucker, Todd <TTucker @Calfee.com>; Reulbach, John <JReulbach @calfee.com>; Summers, Teresa
`<Tuum mers @wiley.law>
`Subject: RE: IPR2020-01573
`
`Kyle:
`
`Patent Owner cannot accept your proposal below. Please advise soonest your availability to attend a teleconference
`with the Board between 10:00 a.m. and 4:00 p.m. ET on either Thursday, October 8, 2020, or Friday, October 9, 2020.
`Thank you.
`
`Lawrence
`
`Fro m: Deighan, Kyle <KDei�han @Calfee.com>
`Sent: Tuesday, October 6, 2020 8:18 PM
`To: Sung, Lawrence <LSun� @wiley.law>
`Cc: Tucker, Todd <TTucker @Calfee.com>; Reulbach, John <JReulbach @calfee.com>; Summers, Teresa
`<Tuum mers @wiley.law>
`Subject: RE: IPR2020-01573
`
`External Email
`
`Lawrence,
`
`Further to the parties' meet-and-confer yesterday regarding Patent Owner's request for additional discovery concerning
`a license agreement between Petitioner and The Regents of the University of Colorado ("Colorado"), we have
`considered your request and provide the following response.
`
`As discussed during the meet-and-confer, the "factual" information that you provided that forms the basis of your
`request for additional discovery is limited to statements suggesting that Petitioner and Colorado have a preexisting
`relationship and that Colorado has licensed certain technology to Petitioner. You confirmed during the call that you do
`not have any additional evidence demonstrating that, for example, Colorado has any control over Petitioner's
`participation in this proceeding or that Petitioner is acting as a proxy for Colorado in this proceeding. Instead, Patent
`Owner is requesting additional discovery merely to determine whether this may be the case. You also explained that,
`although there is no statutory bar applicable to the present situation, Patent Owner's motivation for pursing this
`additional discovery is so that Colorado is subject to estoppel. We do not believe that any of the information you have
`provided either: (a) demonstrates that Colorado is areal-party-in-interest in this proceeding or (b) shows that your
`requested additional discovery is in the interests of justice (at least because under Garmin, you have failed to show
`beyond mere speculation that any of the additional discovery you have requested will show Colorado is, in fact, a real-
`party-in-interest in this proceeding).
`
`Nonetheless, to avoid burdening the Patent Trial and Appeal Board ("PTAB") with a conference call and potential
`briefing on Patent Owner's request for additional discovery, Petitioner is willing to offer the following
`compromise. Petitioner will provide a redacted, "attorneys-eyes-only" version of the license agreement (and
`amendments thereto) between Petitioner and Colorado related to the Kahook Dual Blade technology, which will clearly
`demonstrate that Colorado is not areal-party-in-interest in this proceeding. Specifically, Petitioner will redact certain
`financial terms from the agreement, as the financial terms of the agreement are not relevant to the question of whether
`Colorado is areal-party-in-interest in the proceeding. In exchange, Patent Owner will agree to drop its request for
`additional discovery and will agree not to pursue any other additional discovery regarding whether Colorado is a real-
`party-in-interest in the above-captioned proceeding or any other IPR proceeding brought by Petitioner challenging
`
`2
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`Patent Owner Ex. 2010-0002
`
`

`

`patents asserted against Petitioner in MicroSurgical Tech., Inc. v. New World Medical, Inc., No. 20-cv000754 (D. Del.),
`including but not limited to the redacted portions of the agreements or "financial records of payments made and/or
`owed to the University by Petitioner under that agreement." Additionally, although we are confident that after
`examining the agreement you will agree Colorado is not areal-party-in-interest, Patent Owner will agree to meet-and-
`confer if it intends to further pursue the issue with the Board.
`
`Please let us know if you will agree to the compromise described above. If Patent Owner does not agree, Petitioner will
`oppose your request for additional discovery.
`
`Regards,
`Kyle
`
`Kyle T. Deighan
`Not Licensed in Ohio; Licensed in DC and NY
`kdei�han @calfee.com
`216.622.8551 Phone
`
`Fro m: Sung, Lawrence <LSun� @wiley.law>
`Sent: Tuesday, October 6, 2020 12:52 PM
`To: Deighan, Kyle <KDei�han @Calfee.com>
`Cc: Tucker, Todd <TTucker @Calfee.com>; Reulbach, John <JReulbach @calfee.com>; Summers, Teresa
`<TSum mers @wiley.law>
`Subject: RE: IPR2020-01573
`
`Kyle:
`
`Thank you for the update.
`
`Lawrence
`
`Fro m: Deighan, Kyle <KDei�han @Calfee.com>
`Sent: Tuesday, October 6, 2020 11:39 AM
`To: Sung, Lawrence <LSun� @wiley.law>
`Cc: Tucker, Todd <TTucker @Calfee.com>; Reulbach, John <JReulbach @calfee.com>; Summers, Teresa
`<Tuum mers @wiley.law>
`Subject: RE: IPR2020-01573
`
`External Email
`
`Lawrence,
`
`As discussed during yesterday's meet-and-confer and as you indicated in your email below, we told you that we
`expected to be able to get back to you by today regarding Patent Owner's request for additional discovery. Our client
`was not available yesterday. We will be discussing Patent Owner's request with our client this afternoon and expect to
`provide you with a response later today.
`
`Regards,
`Kyle
`
`3
`
`Patent Owner Ex. 2010-0003
`
`

`

`Kyle T. Deighan
`Not Licensed in Ohio; Licensed in DC and NY
`
`kdei�han @calfee.com
`216.622.8551 Office
`216.241.0816 Fax
`
`Calfee, Halter &Griswold LLP
`The Calfee Building
`1405 East Sixth Street
`Cleveland, OH 44114-1607
`
`�LFEE
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`
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`have received this transmission in error, please notify me by telephone immediately.
`
`Fro m: Sung, Lawrence <LSun� @wiley.law>
`Sent: Tuesday, October 6, 2020 11:11 AM
`To: Deighan, Kyle <KDei�han @Calfee.com>
`Cc: Tucker, Todd <TTucker @Calfee.com>; Reulbach, John <JReulbach @calfee.com>; Summers, Teresa
`<Tuum mers @wiley.law>
`Subject: IPR2020-01573
`
`Dear Kyle:
`
`We understood from yesterday's meet and confer that you would consult with your client and inform us no later than
`today about Petitioner's decision whether to oppose Patent Owner's proposed Motion for Additional Discovery related
`to whether The Regents of the University of Colorado is a real party-in-interest in the instant proceeding. Please let us
`know Petitioner's decision and the availability of counsel to attend a teleconference with the Board between 10:00 a.m.
`and 4:00 p.m. ET on either Thursday, October 8, 2020, or Friday, October 9, 2020. Thank you.
`
`Lawrence
`
`Lawrence M. Sung, Ph.D.
`Attorney at Law
`Isung @_wiley.law
`
`Wiley Rein LLP • 1776 K Street NW •Washington, DC 20006
`o: 202.719.4181
`Download V-Card I wileV.law I Bio
`
`Note: The firm's domain has changed to wiley.law. To update my contact information, please download my vCard
`
`4
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`Patent Owner Ex. 2010-0004
`
`