GRAVES LAW OFFICE, P.C.
`ATTORNEYS AT LAW
`
`Suite 775
`12121 Wilshire Blvd.
`
`Los Angeles, California 90025
`(310) 295-6500
`Fax (310) 295-6501
`www.graveslawpc.com
`
`Hamid Baradaran
`Direct Dial: (310)295-6507
`hbaIadaran@graveslawpc.com
`
`August 4, 2008
`
`VIA U.S. EXPRESS MAIL
`
`Commissioner For Trademarks
`
`P.O. Box 1451, Alexandria, VA 22313 - 1451
`
`Re:
`
`Stamps.com Inc. v. PSI Systems, Inc.
`Opposition No. 91177737
`
`Dear Commissioner:
`
`On August 1, 2008, I placed the following documents in the U.S. Mail. On
`August 4, 2008, the post office inadvertently returned back to this office the said documents.
`Therefore, I am re-sending the enclosed copies via U.S. Express Mail. Also, enclosed is the
`envelope which was used to send the documents on August 1, 2008.
`
`1- Declaration of Justin Sobodash In Support of Stamps.com Inc.’s Opposition to PSI’s
`Motion For Protective Order And Reply In Support Of Motion To Compel Production Of
`Documents And Further Supplemental Responses To Interrogatories From PSI Systems,
`Inc.
`
`2- Stamps.com Inc.’s Opposition to PSI’s Motion For Protective Order and Reply In
`Support Of Motion To Compel Production Of Documents And Further Supplemental
`Responses to Interrogatories From PSI Systems, Inc.
`
`Regards,
`
`GRAVES LAW OFFICE, P.C.
`’ 7’ f
`,2
`
`M
`HamiciBaradaran
`
`--
`
`llllllllllllllllllllllllllllllllllllllllllllllllll
`08-D4-2008
`
`u.s_ Patent anmolcnm Mail ncpi DI. #72
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`STAMPS.COM lNC.,
`
`Opposer,
`
`V.
`
`PSI SYSTEMS, INC.,
`
`
`
`Applicant.
`
`Opposition No. 91177737
`.
`Application Serial No. 78/591,795
`
`Mark: ISTANEPS
`
`Published: April 10, 2007
`
`STAlVIPS.COM INC.’S OPPOSITION TO PSI’S MOTION FOR PROTECTIVE
`
`ORDER AND REPLY IN SUPPORT OF MOTION TO COMPEL PRODUCTION
`
`OF DOCUMENTS AND FURTHER SUPPLEMENTAL RESPONSES TO
`
`INTERROGATORIES FROM PSI SYSTEMS, INC.
`
`I.
`
`Introduction‘
`
`For approximately one year, PSI and Stamps.com have each had outstanding sets
`
`of requests for production to each other. These requests for production are contention
`
`requests, similar in number and scope. Upon receiving PSI’s requests, Stamps.com
`
`worked diligently to assemble and review the numerous documents which were
`
`responsive to PSI’s requests. Stamps.com produced most of these documents on May 16,
`
`2008.
`
`1 Throughout this Reply in Support of Stamps.com Inc.’s Motion to Compel Production of Documents and
`Further Supplemental Responses to Interrogatories From PSI Systems, Inc. (“Reply”), Stamps.com Inc.’s
`motion in issue is referred to as the “Motion” or “Motion to Compel,” PSI Systems, lnc.’s response styled
`“PSI Systems’ Opposition to Stamps.com’s Motion to Compel Reponses to Document Requests and
`interrogatories and Motion for Protective Order is referred to as the “Opposition,” Stamps.com Inc. is
`referred to as “Stamps.com,” and PS1 Systems, Inc. is referred to as “PSI.” The Trademark Trial and
`Appeal Board is referred to as “TTAB” or simply the “Board” PSI’s Application Serial No. 78/591,795 is
`referred to as the “Application." Stamps.com’s USPTO Registration Nos. 2795182, 1930424, 2152671 and
`3149972 are referred to collectively as its’ “Registran'ons.”
`
`
`
`

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`To date, PSI has engaged in no like effort. Rather, in response to Stamps.com’s
`
`instant Motion to Compel, PSI complains that it will have to undertake great efforts (like
`
`those of Stamps.com) to respond. PSI objects to the Stamps.com’s Requests, primarily
`
`on the ground that they are overly broad, or duplicative. But the contention Requests are
`
`reasonable given the factors which must be established by Stamps.com, and the Requests
`
`are not duplicative given the issues presented in this intent to use proceeding concerning
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`new technology.
`
`As for PSI’s remaining contentions, each is specious. The very rules cited by PSI
`
`reflect that Stamps.com’s Requests are relevant and not objectionable on privacy
`
`grounds, contrary to PSI’s assertions.
`
`In light of PSI’s indefensible positions, Stamps.com’s Motion should be granted.
`
`For the same reasons, PSI’s purported “Motion for a Protective Order” should be denied.
`
`Such Motion should also be denied because it is procedurally improper, as it was not
`
`brought in a timely manner.
`
`11.
`
`Stamps.com’s Discovery Requests are Not Overly Broad or Unduly
`
`Burdensome
`
`PSI makes the general statement that Stamps.com’s Requests as a whole are
`
`overly broad: “Stamps.con1’s document requests are overly broad and unduly
`
`burdensome.” (Opposition, Page 8.) However, PSI makes absolutely no overbreadth
`
`argument — or any argument at all ~ regarding Request Nos. 1, 2, 9, 16, 17, 25-28, 31, 33,
`
`34-38, 40-52, 54, 55, 56, and 58-62. This is an implicit concession that more than half of
`
`Stamps.com’s requests are unobj ectionable.
`
`

`
`With regard to the remaining Requests and the burden of responding, PSI
`
`promulgated similar — often nearly identical — Requests for Production, and Stamps.com
`
`responded to them diligently. Further, the scope and number of interrogatories
`
`promulgated by PSI is substantively identical to those promulgated by Stamps.com. In
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`objecting to the scope of Stamps.com’s Requests for Production, PSI therefore is in
`
`violation of T.B.M.P. § 402.01, which provides, “a party ordinarily will not be heard to
`
`contend that a request for discovery is proper when propounded by a party itself but
`
`improper when propounded by its adversary. A contention of this nature will be
`
`entertained only if it is supported by a persuasive showing of reasons why the discovery
`
`request is proper when propounded by one party but improper when propounded by
`
`another.”
`
`For example, PSI objects that Stamps.com’s Request No. 11 is overly broad.
`
`Such Request seeks: “Any and all DOCUMENTS that constitute, refer to, reflect,
`
`illustrate, or otherwise contain any information regarding the marketing channels or
`
`channels of trade that YOU use, have used, or intend to use in connection with
`
`specialized labels or sheets of labels upon which postage may be printed that have been,
`
`or are intended to be used in the United States.” This is substantively identical to PSI’s
`
`Request for Production No. 16, which seeks: “All documents and things which refer to
`
`or relate to the channels of trade in which Opposer’s goods or services allegedly
`
`identified by Opposer’s Marks are sold, provided, marketed, advertised or promoted by
`
`Opposer in the United States, including but not limited to, outline channels, partners,
`
`portals,‘ and affiliates.” Likewise, PSI’s Request No. 19 is substantively identical to
`
`Stamps.com’s Request No. 57. PSI’s Request No. 19 seeks: “All documents and things
`
`

`
`which refer or relate to Applican .” Stamps.com’s Request No. 57 seeks: “Any and all
`
`documents that refer to, reflect, illustrate, or otherwise contain any information regarding
`
`OPPOSER.” Further, PSI’s Request No. 20 is substantively identical to Stamps.com’s
`
`Request No. 39. PSI’s Request No. 20 seeks: “All documents and things which refer or
`
`relate to ISTAl\/IPS.” Stamps.com’s Request No. 39 seeks: “Any and all DOCUMENTS
`
`that constitute, refer to, reflect, illustrate or otherwise contain any information regarding
`
`Stamps.com.”
`
`Further, each party promulgated a similar number ofrequests for production:
`
`Stamps.com promulgated 64, and PS1 promulgated 51.
`
`PSI promulgated its Requests for Production on July 6, 2007. For nearly a year,
`
`Stamps.com acted diligently to respond to PSI’s requests, and produced responsive
`
`documents of a substantial number. PSI now complains that it received numerous
`
`documents, but Stamps.com merely provided a reasonable response to PSI’s contention
`
`Requests. PSI cannot now escape its obligations by complaining of the time and expense
`
`to respond to document requests of a similar scope. Moreover, PSI should be expected to
`
`construct search parameters that can be completed within a reasonable scope, time, and
`
`expense as Stamps.com did. Requiring anything less of PS1 would violate TMBP §
`
`402.01.
`
`Lastly, without citing to any evidence PSI states that it “knows fiom experience
`
`that the burden and expense to PSI in responding to Starnps.com’s proposed discovery
`
`outweighs the discovery’s likely benefi .” (Opposition, p. 9.) However, PSI has already
`
`had a motion to compel decided against it in such action. (Sobodash Dec., {[6, Ex. “B.”)
`
`

`
`PSI’s version of the discovery disputes in the patent action is therefore demons ratably
`
`baseless.
`
`III.
`
`Stamps.com’s Request Nos. 66 and 68 are Highly Relevantz
`
`“A party need not provide discovery with respect to those of its marks and goods
`
`and/or services that are not involved in the proceeding and have no relevance thereto.
`
`However, the information that a party sells the same goods or services as the
`
`propoundingpartv, even if under a different mark, is relevant to the issue oflikelihood
`
`ofconfusion.” T.B.M.P. § 414.11. Accord, Johnston Pump/General Valve, Inc. v.
`
`Chromalloy American Corp., 10 USPQ2d 1671, 1675-76 (TTAB 1988) (intent of opposer
`
`to manufacture and market goods and services similar to those of applicant are relevant to
`
`proceedings). Stamps.com’s Request Nos. 66 and 68 seek documents related to PSI’s use
`
`of “Instapostage” and “Dymo Stamps” in connection with “specialized labels or sheets of
`
`labels upon which postage may be printed.” PSI currently markets and sells specialized
`
`labels and sheets of labels using “lnstapostage” and “Dymo Stamps.” (Sobodash Dec.,
`
`117, Exs. “C” and “D.”) Documents related to marks currently used by PSI to market the
`
`same products as it intends to market using the “ISTAMPS” mark are highly relevant to
`
`this proceeding. Such documents concern goods and services that are highly similar to
`
`those PSI would market and sell using the “ISTAMPS” mark, and also concern the
`
`channels of trade, conditions of purchase, and potential confusion. Accordingly, Request
`
`Nos. 66 and 68 are highly relevant under E.I. DuPont DeNemours & Co. , 476 F.2d 1357,
`
`1361 (US. Ct. Cust. & Pat. App. 1973), T.B.M.P. § 414(11) and Johnston Pump.
`
`IV.
`
`Stamps.com’s Requests are Not Duplicative
`
`2 PSI’s Opposition identifies Request Nos. 64 and 68 as irrelevant, but discusses the text of Request Nos.
`66 and 68. Stamps.com understands PS1 to be discussing Request Nos. 66 and 68, and responds
`accordingly.
`
`

`
`PSI lists several of Stamps.com’s Requests as duplicative, but the pairs of
`
`requests numbered 3 and 4, 5 and 6, 7 and 8,10 and 11, 14 and 15, and 29 and 30 are
`
`drafted to capture documents which refer or relate to the goods described in PSI’s
`
`Application, whether those goods have been referred to using the “ISTAMPS” mark or
`
`not. The first request in each of these pairs seeks documents which refer to “goods and
`
`services described in the [ISTAMPS] Application.” The second request in each pair
`
`seeks documents referring or relating to “specialized labels or sheets of labels upon
`
`which postage may be printed that have been, are being or are intended to be used in the
`
`United States.” The pairs of requests are drafted as such to prevent PSI from withholding
`
`documents that relate to the products described in its Application on the grounds that the
`
`mark is not yet being used, and also to require PSI to produce documents demonstrating
`
`how it is currently using its intemet postage goods and services.
`
`Further, each Request which seeks documents reflecting how postage “may have
`
`been printed that have been, are being or are intended to be used in the United States” is
`
`highly relevant to proving the similarity of the goods and services in Stamps.com’s
`
`Registrations and PSI’s Application. PSI may contend that it seeks trademark protection
`
`only in specialized labels upon which postage can be printed, while Stamps.com has
`
`trademark protection only in printing services and supporting software. In fact, PSI’s
`
`products cannot be generated without using software products as described in
`
`Stamps.com’s Registrations, or without using printing services employing encoding as
`
`described in Stamps.com’s Registrations. Thus Stamps.com’s and PSI’s goods and
`
`services are the same and this factor of the DuPont analysis should be decided in
`
`Stamps.com’s favor. Since PSI would not stipulate on this factor, however, Stamps.com
`
`

`
`is entitled to discovery to resolve any ambiguities about the goods and services described
`
`in PSI’s Application. Internet postage is a relatively new technology, so to the extent the
`
`inextricable nature of the goods and services set forth in Stamps.com’s Registrations and
`
`PSI’s Application must be proven to the Board, Stamps.com is entitled to discovery on
`
`the intemet postage goods and services currently marketed and sold by PSI. In re
`
`Trackmobile, Inc., 15 U.S.P.Q.2d 1152 (TTAB 1990) (Board allowed extrinsic evidence
`
`to determine i “mobile railcar movers” were similar goods and services as “light railway
`
`motor tractors” where “members of Board .
`
`.
`
`. possess[ed] no special knowledge about
`
`such equipment”)
`
`‘V.
`
`Stamps.com is Entitled to Documents Concerning PSI’s Customers
`
`PSI objects to providing responses to Request Nos. 63, 64, and 69, each of which
`
`requests documents concerning PSI’s internet postage customers. Under T.B.M.P.
`
`§4l4(3), “[t]he classes of customers for a party’s involved goods or services are
`
`discoverable.” Accord, Johnston Pump, 10 U.S.P.Q2d at 1675. Therefore, documents
`
`describing the demographic, socioeconomic, and occupational characteristics of persons
`
`who purchase or use PSI’s intemet postage products do not have privacy protection and
`
`are directly relevant to this proceeding.3 PSI should be compelled to produce such
`
`documents.
`
`VI.
`
`Insofar as PSI’s Opposition is Styled as a Motion for a Protective Order, it is
`
`Untimely and Procedurally Improper
`
`A motion for a protective order is timely only if made prior to the date set for
`
`producing discovery responses. Brittain v. Stroh Brewery Co., 136 F.RD. 408, 413
`
`3 Stamps.com produced documents responsive to PSI’s Request No. 17, which had an identical scope as the
`as documents here requested in response to Starnps.com’s Request Nos. 63, 64, and 69. Accordingly, PSI
`should be compelled to produce such documents. TBMP §402.01.
`
`

`
`(lVl.D.N.C. 1991), citing In re Coordinated Pretrial Proceedings, etc., 669 F.2d 620, 622
`
`n. 2 (1 0m Cir. 1982), In re Air Crash Disaster at Detroit Metro. Airport, 130 F.R.D. 627,
`
`630 (E.D. Mich. 1989). Here, PSI waited for almost a year after discovery was due to
`
`move for a protective order. Further, PSI waited until afler Stamps.com filed its Motion
`
`to Compel to file its purported Motion for Protective Order. This is specifically
`
`forbidden: “Permitting the party to merely note its objections and then sit back and wait
`
`for a motion to compel can only serve to prolong and exacerbate discovery disputes.”
`
`Brittain, 136 F.R.D. at 413. Accordingly, no protective order against Stamps.com
`
`should be entertained.
`
`IfPSI’s Motion is construed only as an Opposition by the Board, then the instant
`
`Opposition remains a proper reply. Generally speaking, the Board looks upon the filing
`
`of reply briefs with disfavor. T.B.M.P. § 502.02(b), Johnston Pump / General Valve, Inc.
`
`v. Chromalloy American Corp., 13 U.S.P.Q.2d 1719, 1720 n.3 (TTAB 1989). This is
`
`because “[t]he presentation of one’s arguments and authority should be presented
`
`thoroughly in the motion or the opposition brief thereto.” Id. However, PSI “hid the
`
`ball” regarding its contentions in this discovery dispute until after Stamps. comfiled its
`
`instant Motion to Compel. No meaningful discussion of PSI’s contentions regarding
`
`Stamps.com’s discovery occurred until after Stamps.com’s Motion was filed.
`
`Specifically, on June 11, 2008 Stamps.com sent a detailed letter providing its
`
`contentions as set forth in the motion, and requested a response by June 25, 2008. PSI
`
`provided no response on this date. After several follow up meet and confer efforts by
`
`Stamps.com, PSI sent an e-mail stating, “I do not have an estimated date as to when we
`
`

`
`will respond to the issues raised in your June 11 letter. I do not wish to promise a date
`
`and not meet i .” (Motion at Page 4.)
`
`After Stamps.com’s Motion was filed and only four days before PSI’s Opposition
`
`was due, PSI sent a meet and confer letter that addressed the issues presented by
`
`Stamps.com’s June 11 meet and confer letter and Motion. (Sobodash Dec., 113, Ex. “A.”)
`
`The parties discussed reducing the amount of Requests promulgated by Starnps.com by
`
`stipulation. On July 23, 2008, counsel discussed eliminating Stamps.com’s Request Nos.
`
`10-15 through stipulations resolving the channels of trade and pricing factors in
`
`Stamps.com’s favor, but to date the parties have come to no agreement. (Sobodash Dec.,
`
`‘[[4.) Also during the July 23, 2008 discussion, counsel for PS1 indicated that aside fiom
`
`Requests No. 10-15, no other Requests would be discussed for resolution by stipulation.
`
`(Sobodash Dec., 115.) Counsel preferred to await the Board’s decision on the instant
`
`Motion. Id.
`
`Because of this, Stamps.com had no way to anticipate or address PSI’s specific
`
`contentions regarding the purported overbreadth, duplicativeness, invasion of privacy or
`
`‘
`
`irrelevance of Stamps.com’s requests.4 Therefore if the Board construes PSI’s Motion
`
`for a Protective Order as simply an Opposition the Board should nevertheless exercise its
`
`discretion and hear the instant Reply. Seculus da Amazonia S/S v. Toyota Jidosha
`
`Kabashiki Kaisha, 66 U.S.P.Q.2d 1154, n.4 (TTAB 2003) (reply brief considered because
`
`it clarified issues), Harjo v. Pro-Football, Inc., 45 USPQ2d 1789, 1791 (TTAB 1998)
`
`(board exercised discretion to hear reply brief), DAK Industries, Inc. v. Daiichi Kosho
`
`Co., 35 U.S.P.Q.2d 1434, 1436 n.4 (TTAB 1995) (accord).
`
`4 PSI suggests that some of the overbreadth contentions set forth in its Opposition were discussed in the
`parties’ meet and confer discussion of March 18, 2008. But PSI’s purported difficulty in identifying
`responsive documents was in fact never discussed. Sobodash Dec., 1[2.
`
`

`
`VII. Conclusion
`
`For the reasons set forth herein, Stamps.com respectfully requests that PSI be
`
`ordered to produce all documents responsive to Stamps.com’s Requests for production,
`
`and order PSI to produce further supplemental responses to Stamps.com’s Interrogatory
`
`Nos. 11,16, 19, and 24.
`
`Date: August 1, 2008
`
`Respectfully submitted,
`
`GRAVES LAW OFFICE, P.C.
`
`Philip J. Graves
`Justin D. Sobodash
`
`Attorneys for Opposer,
`STAMPS.COM, INC.
`12121 Wilshire Bl.,
`Suite 775
`
`Los Angeles, CA 90025
`Tel: (310) 295-6500
`Fax: (310) 295-6501
`
`Enclosure: Declaration of Justin Sobodash in support of Reply and attached Exhibits
`
`10
`
`

`
`CERTIFICATE OF MAILING UNDER 37 C.F.R. § 1.8
`
`I hereby certify that on this day the foregoing “Stamps.com, Inc.’s
`
`Opposition to PSI’S Motion for Protective Order and Reply In Support of Motion To
`
`Compel Production of Documents and Further Supplemental Responses to Interrogatories
`
`from PS1 System, Inc.” is being deposited with the United States Postal Service with
`
`sufficient postage as first class mail in an envelope addressed to he commissioner for
`
`trademarks, P.O. Box 1451, Alexandria, VA 22313 ~ 1451.
`
`Dated: August 1, 2008
`
`Max
`
`Hamid Baradaran
`
`11
`
`

`
`CERTIFICATE OF SERVICE
`
`This is to certify that I have this day caused to be served a true copy of the
`
`foregoing “Stamps.com, Inc.’s Opposition to PSI’S Motion For Protective Order and
`
`Reply In Support of Motion To Compel Production of Documents and Further
`
`Supplemental Responses to Interrogatories from PS1 System, Inc.” by placing a copy in
`
`the United States Mail, postage pre-paid and electronic mail addressed as follows:
`
`Susan Hwang, Esq.
`shwang@sheppardmu1lin.com
`Sheppard, Mullin, Richter & Hampton LLP
`333 South Hope Street, 48"‘ Floor
`Los Angeles, California 90071
`
`Dated: August 1, 2008
`
`MW
`
`Hamid Baradaran
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`STAlV[PS.COM, INC.,
`
`Opposer,
`
`v.
`
`.
`JPSI SYSTEMS, INC.,
`
`Opposition No. 91 177737
`
`Application Serial No. 78/591,795
`
`Mark: ISTAMPS
`
`Published: April 10, 2007
`
`
`
`Applicant.
`
`DECLARATION OF JUSTIN SOBODASH IN SUPPORT OF STAMPS.COM
`
`INC.’S OPPOSITION TO PSI’S MOTION FOR PROTECTIVE ORDER AND
`
`REPLY IN SUPPORT OF MOTION TO COMPEL PRODUCTION OF
`
`DOCUMENTS AND FURTHER SUPPLEIVIENTAL RESPONSES TO
`
`INTERROGATORIES FROM PSI SYSTEMS, INC.
`
`1, Justin D. Sobodash, declare and state as follows:
`
`1.
`
`I am an associate of Graves Law Office, P.C. and an attorney of record for
`
`Stamps.com Inc. in the instant proceeding. The following facts are true and based on my
`
`personal knowledge or are made on information and belief and are believed to be true. If
`
`called upon I would competently testify thereto:
`
`2.
`
`PSI suggests that some of the overbreadth contentions set forth in its
`
`Opposition were discussed in the parties’ meet and confer discussion of March 18, 2008.
`
`But PSI’s purported difficulty in identifying responsive documents was in fact never
`
`discussed.
`
`

`
`3.
`
`On July 14, 2008, counsel for PS1 sent me a letter finally meeting and
`
`conferring regarding the discovery issues set forth in my letter of June 11, 2008. A true
`
`and correct copy of PSI’s July 14, 2008 letter is attached hereto as Exhibit “A.”
`
`4.
`
`After Stamps.com received this. letter, I began to confer with counsel for
`
`PS1 regarding the scope of Stamps.com’s requests for production, and, among other
`
`things, whether some of the Requests could be eliminated by stipulation. On July 23,
`
`2008, counsel for PSI Susan Hwang and I discussed eliminating Stamps.com Request
`
`Nos. 10-15 through stipulations resolving the channels of trade and pricing factors in
`
`Stamps.com’s favor, but to date the parties have not finalized any agreement.
`
`5.
`
`During our July 23, 2008 discussion, Ms. Hwang stated that she would not
`
`discuss stipulations regarding any other topics presented by Stamps.com’s Requests,
`
`stating that PSI preferred to await the Trademark Trial and Appeal Board’s decision on
`
`Stamps.com’s instant Motion.
`
`6.
`
`PSI had a motion to compel decided against it in the patent action pending
`
`between PSI and Stamps.com. A true and correct copy of the order on Stamps.com’s
`
`discovery motion is attached hereto as Exhibit “B .”
`
`7.
`
`PSI currently markets and sells specialized labels and sheets of labels
`
`using “Instapostage” and “Dymo Stamps.” True and correct copies of printouts reflecting
`
`such sales are attached hereto as Exhibits “C” and “D.”
`
`The undersigned being warned that willful false statements and the like are
`
`punishable by fine, imprisonment, or both, under 18 U.S.C. 1001, and that such willful
`
`false statements and the like may jeopardize the validity of the application or document
`
`or any registration resulting therefiom, declares that all statements made of his/her own
`
`

`
`knowledge are true; and all statements made on information and belief are believed to be
`
`true.
`
`Executed August 1, 2008 at Los Angeles, California
`
`I “.2 Z
`
`Justin D. Sobodash
`
`

`
`EXHIBIT A
`
`

`
`Justin Sobodash
`
`Page 1 of 1
`
`From:
`
`Sent:
`To:
`
`Susan Hwang [SHwang@sheppardmu|lin.com]
`
`Monday, July 14, 2008 4:58 PM
`Justin Sobodash
`
`Stamps.com and PSI - Meet and Confer
`Subject:
`Attachments: DOC.PDF
`
`Justin, please see the attached.
`
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`333 South Hope Street
`48th Floor
`Los Angeles. CA 90071-1448
`213.620.1780 office
`213.620.1398 fax
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`Our File Number: 096T—133876
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`July 14, 2008
`
`VTA E~1|lAIL AND U.S. 1lL4IL
`
`Justin Sobodash, Esq.
`Graves Law Office, P.C.
`12121 Wilshire Blvd. Suite 775
`
`Los Angeles, CA 90025
`
`Re:
`
`Stamps.com and PS1 Systems
`TTAB Proceeding No. 91177737
`Meet and Confer re Discovcfl Issues
`
`Dear Justin:
`
`This is in response to your meet and confer letter of June 11, 2008 and
`Stamps.com's motion to compel, requesting PSI's production of documents in response to
`Stamps.com's First Set of Requests for Production of Documents, as well as supplemental
`responses to Stamps.com's First Set of Interrogatories.
`
`This is also a meet and confer request regarding PSI's document production in
`,
`response to Stamps.com's First Set of Requests for Documents and Stamps.com's document
`production in response to PSI's First Set of Requests for Production of Documents.
`
`1.
`
`PSI's Document Production
`
`You have alleged that in our telephone conversation of June 2, 2008, I suggested
`to you that PSI's document production (Bates labeled PSI T 000075-001346) on April 15, 2008
`constituted PSI's entire document production and that I did not believe any further documents or
`any documents stored in electronic form were responsive. You allege that this contradicts
`previous statements to you that "numerous" PSI documents were being withheld pending entry
`of a protective order.
`
`Your recollection of our telephone conversations is incorrect. In my e-mail to you
`on April 3, 2008 (enclosed) and in our telephone conference on June 2, 2008, I stated to you that
`the production on April 15, 2008 contained non-confidential documents that were referenced in
`and supported PSI's amended and supplemental responses to Stamps.com's First Set of
`
`

`
`Sill-Il'l’.—\lll) .\ll.5l.Lli\' ltI('llTl'IR Sr HA.\ll"l‘0N LL!’
`
`Justin Sobodash, Esq.
`July 14, 2008
`Page 2
`
`I never suggested to you that PSI had completed its document production or that
`Interrogatories.
`I believed no fiirther documents or electronic documents were responsive.
`I advised you in our
`June 2, 2008 telephone conference that I would have to confirm with.our client the amount of
`additional responsive documents, including any confidential documents.
`I also never stated in
`previous conversations that "numerous" documents were being withheld pending entry of a
`protective order.
`
`In fact, in our telephone conference on March 18, 2008, I specifically stated to
`you that it was difficult to ascertain the amount and nature of PSI's responsive documents.
`I
`informed you that I was aware that a large number of documents were produced by both
`Stamps.com and PS1 in the unrelated patent litigation, and that I anticipated a large number of
`documents might have to be sified through in the present trademark proceeding.
`I advised you
`PSI would most likely have to produce documents on a ''rolling basis" and you agreed that this
`might be the case for Starnps.com as well.
`I suggest that we follow up any future telephone
`conference with written correspondence confirming our conversation, to avoid any further
`differences in recollection.
`
`We have now confirmed that at least 24 GB of data exist in PSI's possession that
`might be potentially responsive to Stamps.com's First Set of Requests for Production of
`Documents. This translates to over 385,000 documents, and at least a million pages of
`documents. Because of the extensive amount of "raw" data involved, the potentially responsive
`data was identified using automated searches of keywords that were selected fi-om Stamps.com's
`First Set of Requests for Production of Documents. These keywords were quite broad, because
`Stamps.com's document requests contained very broad requests. By way example, Request
`No. 23 requested, "Any and all DOCUMENTS that constitute, refer, reflect, illustrate, or
`otherwise contain any information regarding any actual or proposed use of specialized labels or
`sheets or labels upon which postage may be printed in connection with any goods or services
`involving the delivery of postage over the Internet." Similarly, Request No. 57 requested, "Any
`and all DOCUMENTS that refer to, reflect, illustrate, or otherwise contain any information
`regarding OPPOSER." Based on those two requests alone, the selected keywords "Stamps.com"
`and "labels" identified an extremely large volume of documents that ultimately, however, might
`not be responsive to the information that Stamps.com is necessarily seeking through its
`document requests.‘
`
`, The estimated cost of processing a million pages of documents through an e-
`discovery vendor would likely be at least $100,000 or more. An attorney reviewing a million
`pages of documents for responsiveness, confidentiality or privilege would have to spend at least
`
`'
`
`Two issues exist with the use of automated keyword searches, namely, the possibility that
`an unresponsive document contains a keyword ("false positive") and the possibility that a
`responsive document does not contain a keyword ("false negative").
`
`

`
`.\'HEl’l’;\Rl) .\‘lUl.l.l.‘€ RICHTER -Sr H.-\Ml’T().N' LLP
`
`Justin Sobodash, Esq.
`July 14, 2008
`Page 3
`
`3.8 years in review before being able to produce the documents (estimating one minute per page,
`12 hours a day, 365 days a year). Even a first year associate with an hourly rate of $250 would
`bill over $4 million for document review. Obviously, this is absurd.
`
`PS1 is committed to meeting its discovery obligations, but not at undue burden
`and unreasonable expense. Accordingly, PSI requests that Stamps.com meet and confer to
`discuss withdrawing unreasonably and overly broad, burdensome, cumulative or duplicative
`requests and reducing the amount of documents requested to a reasonable amount that is still
`sufficient to meet Starnps.com's discovery needs. Stamps.com might consider discussing with
`PSI beforehand what specific documents Stamps.com is seeking and then serving an amended set
`of discovery requests.
`
`Both Stamps.com and PS1 would benefit by coming to an agreement on a focused
`discovery method, since both parties will incur costs reviewing whatever documents are
`produced. Ifwe cannot reach agreement, PSI intends to file a motion for a protective order.
`
`2.
`
`Stamps.com's Document Production
`
`On a related note, Stamps.com produced a hard drive on May 16, 2008 containing
`almost one million pages of documents in response to PSI's First Set of Requests for Production
`of Documents. You indicated in our telephone conference on June 2, 2008 that more documents
`were forthcoming.
`
`Please advise what methodology Stamps.com used in order to organize, review,
`label and produce this large volume of documents, including whether Stamps.com conducted a
`keyword search and/or any meaningfiil review of the documents. Apparently, Stamps.com has
`done nothing more than "boxcar dumped" documents on PSI, without any indication whether
`these documents have been organized and designated to correspond to the categories in PSI's
`document requests or whether they have been produced as they are maintained in the normal
`course of business. Nor has Stamps.com followed the guidelines stipulated to in the protective
`order. Instead, Stamps.com appears to have designated most of the documents "Highly
`Confidential," even public documents that clearly are not confidential. Some documents do not
`appear responsive to PSI's document requests at all. By way of example only, even a brief spot
`check of the documents identified the following:
`
`0
`
`STAMPS TM 00024094 — 00024514 are designated "Highly Confidential"
`but contain nothing but strings of random letters, numbers and symbols. It
`is not clear whether these pages are part of another document, some type
`of source code or just incorrectly produced documents. In any event, they
`do not appear relevant or responsive to any of the requests in PSI's First
`Set of Requests for Production of Documents.
`
`

`
`.\'Hl'll'l’.-\R|') .\ll'Ll.l.\' RICHTER S: H.-\.\1l"l‘()N [.l.l’
`
`Justin Sobodash, Esq.
`July 14, 2008
`Page 4
`
`0
`
`STAMPS TM 00024515 is a letter titled "Rent Reduction Credit" and
`
`designated "Highly Confidential." The contents of the letter demonstrate
`no relevance to any of the requests in PSI's First Set of Requests