Ryan, Andrew
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Ryan, Andrew
`Friday, September 2, 2022 4:04 PM
`'Bregman, Dion M.'
`Coyle, Steve; Geiger, Nicholas; HID-IPRs
`RE: ASSA ABLOY AB et al. v. CPC Patent Technologies PTY Ltd., IPR2022-01006,
`IPR2022-01045, IPR2022-01089, IPR2022-01093, IPR2022-01094
`
`Dion,
`
`Thank you for sending the link to the Apple Developer Program License Agreement.
`
`Please see our seven narrowly tailored proposed additional discovery requests below. Please note that we send these
`proposed discovery requests while fully reserving Patent Owner’s rights to seek further additional discovery consistent
`with PTAB rules and practices.
`
`1. Any and all agreements between the Assa Abloy Entities (or any of them individually) and Apple, including but
`not limited to any development agreements, further including but not necessarily limited to any Apple Developer
`Program License Agreements (“Apple Developer Agreement” or “ADA”), including any and all executed versions thereof.
`
`2. All communications between the Assa Abloy Entities (or any of them individually) and Apple concerning any
`development agreements, further including but not necessarily limited to any ADAs.
`
`3. Any insurance policy(ies) of the AA Entities (or any of them individually) that name Apple as an additional
`insured.
`
`4. All communications and/or other documents pertaining to Apple’s physical review or inspection of any of the
`AA Entities’ biometric security devices, including but not necessarily limited to [recite all products mentioned in the
`complaint].
`
`5. All communications or other documents between Apple and the AA Entities (or any of them individually)
`pertaining to any of the AA IPRs.
`
`6. All communications or other documents between Apple and the AA Entities (or any of them individually)
`pertaining to the ‘208 patent, the ‘705 Patent, or the ‘039 Patent, including but not limited to any communications or
`documents related to the validity or invalidity of such patents.
`
`7. Communications between the Assa Abloy Entities (or any one of them individually) and Apple related to the
`Assa Abloy Entities’ (or any one of them individually) indemnification of or obligation to indemnify Apple based on any of
`the CPC Patents.
`
`In addition, for all communications/documents responsive to any of the above requests but withheld on privilege, we
`request a privilege log identifying the communication/document being withheld, the author or sender, recipient(s),
`subject matter, date, and the request to which the communication/document is responsive.
`
`Please let us know as soon as possible if Petitioners agree to the proposed discovery requests so that we may seek
`assistance from the Board if necessary.
`
`Best regards,
`
`1
`
`

`

`Andy
`
`Andrew C. Ryan
`Partner
`Cantor Colburn LLP
`
`
`
`
`
`20 Church Street | 22nd Floor | Hartford, CT 06103-3207
`Work: 860-286-2929, ext. 1127 | Fax: 860-286-0115 |
`ryan@cantorcolburn.com
`www.cantorcolburn.com
`
`HARTFORD WASHINGTON, D.C. ATLANTA HOUSTON DETROIT
`
`
`
`From: Bregman, Dion M. <dion.bregman@morganlewis.com>
`Sent: Wednesday, August 24, 2022 6:15 PM
`To: Ryan, Andrew <aryan@cantorcolburn.com>
`Cc: Coyle, Steve <Scoyle@CantorColburn.com>; Geiger, Nicholas <NGeiger@CantorColburn.com>; HID-IPRs <HID-
`IPRs@morganlewis.com>
`Subject: RE: ASSA ABLOY AB et al. v. CPC Patent Technologies PTY Ltd., IPR2022-01006, IPR2022-01045, IPR2022-01089,
`IPR2022-01093, IPR2022-01094
`
`Andy,
`
`As I’m sure you know, Apple being a “business partner of the ASSA Abloy Entities” is insufficient evidence to show
`beyond speculation that something useful will be uncovered. Apple has hundreds, if not thousands, of “business
`partners.” See, e.g., https://www.apple.com/business/partners/.
`
`Also, I’m sure you are aware of Apple’s Developer Agreement
`(https://developer.apple.com/support/downloads/terms/apple-developer-program/Apple-Developer-Program-License-
`Agreement-20220606-English.pdf), which is public, so it is unclear what Additional Discovery you are after.
`
`In any event, please provide us with your proposed (narrow) additional discovery request so that we can consider it.
`
`
`Regards,
`
`-Dion
`
`
`Dion M. Bregman
`Morgan, Lewis & Bockius LLP
`1400 Page Mill Road | Palo Alto, CA 94304
`Direct: +1.650.843.7519 | Main: +1.650.843.4000 | Fax: +1.650.843.4001
`dion.bregman@morganlewis.com | www.morganlewis.com
`Assistant: Kari B. Aguiar | +1.650.843.7877 | kari.aguiar@morganlewis.com
`
`
`From: Ryan, Andrew <aryan@cantorcolburn.com>
`Sent: Monday, August 22, 2022 1:13 PM
`
`2
`
`

`

`To: Bregman, Dion M. <dion.bregman@morganlewis.com>; Devkar, Andrew V. <andrew.devkar@morganlewis.com>;
`Kritsas, James J. <james.kritsas@morganlewis.com>; HID-IPRs <HID-IPRs@morganlewis.com>
`Cc: Coyle, Steve <Scoyle@CantorColburn.com>; Geiger, Nicholas <NGeiger@CantorColburn.com>
`Subject: RE: ASSA ABLOY AB et al. v. CPC Patent Technologies PTY Ltd., IPR2022-01006, IPR2022-01045, IPR2022-01089,
`IPR2022-01093, IPR2022-01094
`
`[EXTERNAL EMAIL]
`Dion,
`
`Thanks for your email.
`
`We understand it is your position that Apple was not involved in the preparation of your clients’ IPR petitions. Even
`assuming this is true, however, the PTAB has repeatedly held that while a non-party’s involvement with an IPR can
`weigh in favor of real-party-in-interest (“RPI”) status, it is not required and is certainly not dispositive. See, e.g., Bungie,
`Inc. v. Worlds Inc., 2020 Pat. App. LEXIS 13200, at *44 (PTAB Jan. 14, 2020). In its precedential Ventex decision (and in
`many cases since then), the PTAB explained that a key part of the RPI inquiry is whether a “non-party is a clear
`beneficiary [of the IPR] that has a preexisting, established relationship with the petitioner.” Your client’s Complaint for
`declaratory judgment admits that Apple is a “business partner of the ASSA Abloy Entities” with respect to the technology
`at issue (e.g., ¶¶ 30, 43) and indeed relies at least in part on the relationship with Apple as a grounds for asserting that a
`case or controversy between Charter Pacific/CPC and the “Assa Abloy Entities” exists. This alone is sufficient to show
`beyond speculation that something useful will be uncovered.
`
` I
`
` am generally available throughout the day tomorrow for a meet-and-confer. If you still think a meet-and-confer would
`not be helpful, I will go ahead and email the Board to request a phone conference. Please let me know your availability
`for a call with the Board later this week and next week.
`
`Best regards,
`Andy
`
`
`Andrew C. Ryan
`Partner
`Cantor Colburn LLP
`
`
`
`
`
`20 Church Street | 22nd Floor | Hartford, CT 06103-3207
`Work: 860-286-2929, ext. 1127 | Fax: 860-286-0115 |
`ryan@cantorcolburn.com
`www.cantorcolburn.com
`
`HARTFORD WASHINGTON, D.C. ATLANTA HOUSTON DETROIT
`
`
`
`From: Bregman, Dion M. <dion.bregman@morganlewis.com>
`Sent: Sunday, August 21, 2022 3:06 PM
`To: Ryan, Andrew <aryan@cantorcolburn.com>; Devkar, Andrew V. <andrew.devkar@morganlewis.com>; Kritsas, James
`J. <james.kritsas@morganlewis.com>; HID-IPRs <HID-IPRs@morganlewis.com>
`Cc: Coyle, Steve <Scoyle@CantorColburn.com>; Geiger, Nicholas <NGeiger@CantorColburn.com>
`
`3
`
`

`

`Subject: RE: ASSA ABLOY AB et al. v. CPC Patent Technologies PTY Ltd., IPR2022-01006, IPR2022-01045, IPR2022-01089,
`IPR2022-01093, IPR2022-01094
`
`Andy, good to meet you.
`
`
`The Petitions expressly state that “[n]one of the entities mentioned in the Related Matters section below [including
`
`Apple] were involved in or offered any assistance to the Real-Parties-in-Interest for this IPR.” Nor would it make any
`
`sense for Apple to be an RPI here, as it has its own pending IPRs that have not yet been instituted. Needless to say,
`
`Apple was not involved in any way with the subject IPRs, and Petitioners don’t have any information or documents to
`
`provide in response to your proposed discovery.
`
`If you still intend to proceed with your request, then, to have a meaningful meet-and-confer, please let us know what
`evidence you have in your possession that tends “to show beyond speculation that in fact something useful [i.e., that
`Apple is an RPI] will be uncovered”? See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, Paper 26
`(March 5, 2013).
`
`Regards,
`
`
`-Dion
`
`
`
`Dion M. Bregman
`Morgan, Lewis & Bockius LLP
`1400 Page Mill Road | Palo Alto, CA 94304
`Direct: +1.650.843.7519 | Main: +1.650.843.4000 | Fax: +1.650.843.4001
`dion.bregman@morganlewis.com | www.morganlewis.com
`Assistant: Kari B. Aguiar | +1.650.843.7877 | kari.aguiar@morganlewis.com
`
`
`From: Ryan, Andrew <aryan@cantorcolburn.com>
`Sent: Wednesday, August 17, 2022 1:42 PM
`To: Bregman, Dion M. <dion.bregman@morganlewis.com>; Devkar, Andrew V. <andrew.devkar@morganlewis.com>;
`Kritsas, James J. <james.kritsas@morganlewis.com>; HID-IPRs <HID-IPRs@morganlewis.com>
`Cc: Coyle, Steve <Scoyle@CantorColburn.com>; Geiger, Nicholas <NGeiger@CantorColburn.com>
`Subject: ASSA ABLOY AB et al. v. CPC Patent Technologies PTY Ltd., IPR2022-01006, IPR2022-01045, IPR2022-01089,
`IPR2022-01093, IPR2022-01094
`
`[EXTERNAL EMAIL]
`Dear Mr. Bregman,
`
`By way of introduction, I am counsel for Patent Owner CPC in the above referenced IPRs. We intend to request
`permission from the Board to file a motion for additional discovery relating to whether Apple, Inc. is a real-party-in-
`interest and/or privy of one or more of the Petitioners. Please let me know if Petitioners oppose this request.
`
` I
`
` can be available for a meet-and-confer tomorrow (8/18) between 1-4pm, Fri. (8/19) between 11am-2pm, or Mon.
`(8/22) between 1-4 pm (all times Eastern).
`
`Best regards,
`Andy
`
`Andrew C. Ryan
`Partner
`
`4
`
`

`

`Cantor Colburn LLP
`
`
`
`
`
`20 Church Street | 22nd Floor | Hartford, CT 06103-3207
`Work: 860-286-2929, ext. 1127 | Fax: 860-286-0115 |
`ryan@cantorcolburn.com
`www.cantorcolburn.com
`
`HARTFORD WASHINGTON, D.C. ATLANTA HOUSTON DETROIT
`
`
`Andrew C. Ryan
`Partner
`Cantor Colburn LLP
`
`
`
`
`
`20 Church Street | 22nd Floor | Hartford, CT 06103-3207
`Work: 860-286-2929, ext. 1127 | Fax: 860-286-0115 |
`ryan@cantorcolburn.com
`www.cantorcolburn.com
`
`HARTFORD WASHINGTON, D.C. ATLANTA HOUSTON DETROIT
`
`
`
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