Peter Knops <peter@noroozipc.com>
`
`RE: Amazon joinder in Apple v. Zentian IPRs - IPR2023-01192, IPR2023-01193,
`IPR2023-01194, IPR2023-01195, IPR2023-01197
`1 message
`
`Jessica Benzler <jbenzler@fenwick.com>
`To: Kayvan Noroozi <kayvan@noroozipc.com>, Jennifer Bailey <jennifer.bailey@eriseip.com>
`Cc: "peter@noroozipc.com" <peter@noroozipc.com>, "katherine.rhoades@bartlitbeck.com"
`<katherine.rhoades@bartlitbeck.com>, "nevin.gewertz@bartlitbeck.com" <nevin.gewertz@bartlitbeck.com>,
`"PTAB@eriseip.com" <PTAB@eriseip.com>, "Adam P. Seitz" <adam.seitz@eriseip.com>, Adam Sandwell
`<adam.sandwell@eriseip.com>, David Hadden <DHadden@fenwick.com>, Saina Shamilov <sshamilov@fenwick.com>,
`Dargaye Churnet <dchurnet@fenwick.com>, Amazon-Zentian-IPR <Amazon-Zentian-IPR@fenwick.com>
`
`Thu, Oct 5, 2023 at 6:15 PM
`
`Kayvan,
`
`
`
`Amazon confirms that it and Dr. Atlas will be bound by Mr. Schmandt's deposition testimony given while Amazon remains
`in an understudy role, consistent with its statement in the motions for joinder that it “will not rely on expert testimony
`beyond that submitted by Apple unless and until Apple is terminated as party to the proceedings.” To be clear, this does
`not preclude Amazon from submitting additional expert testimony as permitted under the PTAB’s schedule and rules in
`the event Apple were to terminate its involvement in the IPRs before all necessary depositions and briefing are complete.
`
` A
`
` Sotera stipulation is irrelevant to these proceedings. Under the current district court schedule, final written decisions in
`Apple’s IPRs are expected to issue well before the September 23, 2024 trial date in the district court action. Moreover, as
`a party joining an instituted IPR proceeding, in the event Amazon’s motions to join are granted and once final written
`decisions issue, Amazon would only be estopped from asserting at the district court the grounds specifically at issue in
`Apple’s IPRs.
`
`
`
`Regards,
`
`Jessica
`
`
`
`Jessica Benzler
`
`Fenwick | Associate | +1 650-335-7279 | jbenzler@fenwick.com
`
`
`
`From: Kayvan Noroozi <kayvan@noroozipc.com>
`Sent: Thursday, October 5, 2023 3:52 PM
`To: Jennifer Bailey <jennifer.bailey@eriseip.com>
`Cc: Jessica Benzler <jbenzler@fenwick.com>; peter@noroozipc.com; katherine.rhoades@bartlitbeck.com;
`nevin.gewertz@bartlitbeck.com; PTAB@eriseip.com; Adam P. Seitz <adam.seitz@eriseip.com>; Adam Sandwell
`<adam.sandwell@eriseip.com>; David Hadden <DHadden@fenwick.com>; Saina Shamilov <sshamilov@fenwick.com>;
`Dargaye Churnet <dchurnet@fenwick.com>; Amazon-Zentian-IPR <Amazon-Zentian-IPR@fenwick.com>
`Subject: Re: Amazon joinder in Apple v. Zentian IPRs - IPR2023-01192, IPR2023-01193, IPR2023-01194, IPR2023-
`01195, IPR2023-01197
`
`
`
`

`

`** EXTERNAL EMAIL **
`
`Counsel,
`
`
`
`Will you be providing a response to our two questions? If we do not hear from you by tomorrow, we will prepare POPRs
`and joinder oppositions and will have to note to the Board that Amazon did not respond to our outreach.
`
`
`
`Best
`
`Kayvan
`
`
`
`Kayvan B. Noroozi
`
`Noroozi PC
`
`11601 Wilshire Blvd., Suite 2170
`
`Los Angeles, CA 90025
`
`(310) 975-7074
`
`
`
`Sent via Superhuman iOS
`
`
`
`
`
`On Mon, Oct 2 2023 at 11:26 AM, Kayvan Noroozi <kayvan@noroozipc.com> wrote:
`
`Counsel,
`
`
`
`Amazon's IPR Petitions and requests for joinder state Amazon's commitment to serving in an "understudy" role to Apple
`and to not consuming any more of the Board's or parties' resources beyond the existing Apple IPRs. However, two items
`are not expressly addressed in Amazon's petitions and motions, for which Zentian requires clarification.
`
`1. While Amazon and its expert have agreed to be bound by Mr. Schmandt's declaration testimony, Amazon and its
`expert do not seem to have addressed Mr. Schmandt's deposition testimony. Can Amazon and its expert please
`confirm that they will be fully bound by Mr. Schmandt's deposition testimony (including any future testimony),
`obviating the need for separate depositions as to Amazon's expert and the possibility of any conflicting positions
`between Amazon and Apple?
`2. Apple obtained institution in part through a Sotera stipulation provided in a reply to Patent Owner's Preliminary
`Response. While Amazon has agreed to be bound by Apple's positions, it does not seem to have expressly
`accepted a corresponding Sotera stipulation. Please confirm that Amazon will file its agreement to a
`corresponding Sotera stipulation in each proceeding prior to the upcoming POPR date of October 12.
`
`To the extent Amazon agrees as to the two above items, Zentian will not oppose joinder or the institution requests. If
`there is a dispute on either item, however, please let us know by close of business tomorrow, October 3, 2023, so we
`can prepare our POPRs and joinder oppositions accordingly.
`
`
`
`

`

`If Amazon would like to meet and confer on any items, I am available on Thursday. I am at the Federal Circuit for
`arguments on Wednesday and traveling tomorrow.
`
`
`
`Best
`
`Kayvan
`
`
`
`
`
`
`
`Kayvan B. Noroozi
`
`Noroozi PC
`
`11601 Wilshire Blvd., Suite 2170
`
`Los Angeles, CA 90025
`
`(310) 975-7074
`
`
`
`Sent via Superhuman
`
`
`
`
`
`On Thu, Jul 20, 2023 at 2:18 PM, Kayvan Noroozi <kayvan@noroozipc.com> wrote:
`
`Jessica—counsel for Zentian is available on Monday and Tuesday from 12 pm ET, and Wednesday from 1 pm PT
`onward.
`
`
`
`Kayvan B. Noroozi
`
`Noroozi PC
`
`11601 Wilshire Blvd., Suite 2170
`
`Los Angeles, CA 90025
`
`(310) 975-7074
`
`
`
`Sent via Superhuman
`
`
`
`
`
`On Thu, Jul 20, 2023 at 12:12 PM, Jennifer Bailey <jennifer.bailey@eriseip.com> wrote:
`
`Jessica -
`
`
`
`

`

`Counsel for Apple is available at the following times:
`
`
`
`Monday12pm on
`
`Tuesday 10am on
`
`Wednesday 10:30am on
`
`Thursday all day
`
`Friday all day
`
`
`
`Thanks,
`
`
`
`Jennifer
`
`
`
`
`
`
`
`
`
`Jennifer Bailey (she/her)
`shareholder
`P 913.777.5600 | D 913.777.5641
`erise IP
`7015 College Blvd., Ste. 700
`Overland Park, KS 66211
`
`On Jul 20, 2023, at 2:04 PM, Jessica Benzler <jbenzler@fenwick.com> wrote:
`
`
`
`Counsel for Apple and Zentian,
`
`
`
`Pursuant to the Consolidated Trial Practice Guide (2019) section II.J, I write to coordinate a conference call
`between the panel and the parties to discuss Amazon's motions to join Apple's instituted IPRs filed last week as
`Case Nos. IPR2023-01192, IPR2023-01193, IPR2023-01194, IPR2023-01195, IPR2023-01197. Please provide
`your availability next week for this call with the panel.
`
`
`
`Regards,
`
`Jessica
`
`
`
`Jessica Benzler
`
`Fenwick | Associate | +1 650-335-7279 | jbenzler@fenwick.com | Admied to pracce in California
`and registered to pracce before the USPTO.
`
`
`
`