Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA616163
`ESTTA Tracking number:
`07/17/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91203462
`Plaintiff
`Raj Abhyanker
`KUSCHA HATAMI
`RAJ ABHYANKER PC
`1580 W EL CAMINO REAL, STE 13
`MOUNTAIN VIEW, CA 94040
`UNITED STATES
`kuscha@legalforcelaw.com, michelle@legalforcelaw.com
`Other Motions/Papers
`Kuscha Hatami
`kuscha@legalforcelaw.com
`/Kuscha Hatami/
`07/17/2014
`Abhyanker v. Nextdoor TTAB.pdf(2929677 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposition Nos. 91214783 and 91203462
`
`
`
`Mark(s): NEXTDOOR
`
`
`
`Serial No. 85/236,918
`
`
`
`Published: January 10, 2012
`
`
`
`
`RAJ ABHYANKER
`
`
`Opposers,
`
`v.
`
`NEXTDOOR.COM INC.,
`
`Applicant.
`
`
`
`
`
`
`OPPOSER’S OPPOSITION RESPONSE TO APPLICANT NEXTDOOR.COM,
`INC.’S NOTICE OF JUDGMENT IN FAVOR OF NEXTDOOR.COM AND RAJ
`ABHYANKER’S DISMISSAL WITH PREJUDICE OF ALL CLAIMS
`
`On November 6, 2012, the Board stayed Opposition Nos. 91203462 and
`
`91203762 pursuant to a “CONSENTED MOTION TO SUSPEND PENDING
`
`TERMINATION OF RELATED FEDERAL TRADEMARK LITIGATION” between
`
`the parties: Nextdoor.com. Inc. v. Raj Abhyanker, Case No. CV-12-5667. Specifically,
`
`the parties agreed that stay is necessary, because the at issue Civil Action would require
`
`resolution of the following issues:
`
`
`
`1. Whether Applicant is lawfully using the NEXTDOOR mark and not
`
`committing infringement of any purported trademark rights held by
`
`Abhyanker;
`
`2. Whether Applicant has priority of use of the NEXTDOOR mark in the
`
`relevant filed of use;
`
` 
`
`1 
`
`

`
`3. Whether there is a likelihood of confusion between Applicant’s use of
`
`NEXTDOOR and Abhyanker’s purported rights, if any exist, in the terms
`
`“fatdoor” or “fatdoor get to know your neighbors.”;
`
`4. Whether Abhyanker has standing to assert any rights in the marks he claims;
`
`5. Whether Abhyanker’s use of the .cm Domain constitutes cyberpiracy in
`
`violation of 15 U.S.C.A. § 1125(d)(1);
`
`6. Whether Abhyanker’s use of the.cm Domain constitutes infringement of
`
`Nextdoor.com’s rights in the NEXTDOOR mark;
`
`7. Whether Abhyanker’s inclusion of Applicant’s NEXTDOOR mark and
`
`reference to the Nextdoor.com name and domain name in various websites
`
`owned and operated by him constitutes infringement of Nextdoor.com’s rights
`
`in the Nextdoor mark.
`
`Although Applicant is correct in asserting that Opposer’s claims in the Civil Action have
`
`been dismissed with prejudice, and that all claims regarding ownership of the
`
`NEXTDOOR mark have been resolved in Applicant’s favor, this does not resolve all of
`
`the still pending claims in the Civil Action, nor in the TTAB proceedings with respect to
`
`likelihood of confusion as to Applicant’s NEXTDOOR and Opposer’s FATDOOR and
`
`FATDOOR GET TO KNOW YOUR NEIGHBORS marks.
`
`
`
`More specifically, Count I of Opposer’s amended notice of opposition, filed with
`
`the TTAB on September 26, 2012 alleges Priority and Likelihood of Confusion as
`
`between Opposer’s marks FATDOOR, U.S. Registration No. 4505281 and FATDOOR
`
`GET TO KNOW YOUR NEIGHBORS stylized, U.S. Registration No. 4287987 and
`
`Applicant’s mark NEXTDOOR, U.S. Serial No. 85/236,918. On June 19, 2014, Opposer
`
` 
`
`2 
`
`

`
`and Applicant filed a Joint Case Management Conference Statement with the Court
`
`confirming that Applicant’s Affirmative claims counts 2 – 4 remain in the case, attached
`
`hereto as Exhibit A. Count 2 of Applicant’s Affirmative Claims is for a declaratory
`
`judgment under 28 U.S.C. § 2201 seeking “…declaration from this Court that it is
`
`lawfully using the NEXTDOOR Mark and is not committing infringement of any
`
`purported trademark rights held by Abhyanker because, inter alia, there is no likelihood
`
`of confusion between the Company’s use of the mark NEXTDOOR and Abhyanker’s
`
`purported rights, if any, in the terms “fatdoor” and fatdoor get to know your neighbors”,
`
`attached hereto as Exhibit B.
`
`
`
`Therefore, Applicant’s assertion that all factual allegations and claims relevant to
`
`the TTAB oppositions have been adjudicated in the Civil Action in Applicant’s favor is
`
`unsupported and without merit.
`
`
`
`According to the Board’s order issued on November 6, 2012, “…proceedings are
`
`suspended pending final disposition of the civil action. Within twenty days after the final
`
`determination of the civil action, the interested party shall notify the Board so that this
`
`case may be called up for appropriate action.” In addition, pursuant to TBMP 510.02(b),
`
`the board requires that “A proceeding is considered to have been finally determined when
`
`a decision on the merits of the case (i.e., a dispositive ruling that ends litigation on the
`
`merits) has been rendered, and no appeal has been filed therefrom, or all appeals filed
`
`have been decided.”
`
`
`
`Since Count 2 in the Civil Action seeks a declaratory judgment that Applicant’s
`
`NEXTDOOR mark does not infringe on Opposer’s FATDOOR and FATDOOR GET TO
`
`KNOW YOUR NEIGHBORS marks, and because the resolution of Count 2 in the Civil
`
` 
`
`3 
`
`

`
`Action is dispositive of Count 1 of Opposer’s Opposition proceedings filed with the
`
`Board, the Civil Action has not had a final determination pursuant to TBMP 510.02(b).
`
`Furthermore, trial in the Civil Action is set for December 1, 2014, attached hereto as
`
`Exhibit C; even if the court in the Civil Action were to find in Applicant’s favor, Opposer
`
`would have the opportunity to file an appeal, and a final determination will therefore not
`
`be issued until a decision on the appeal or appeals is made.
`
`
`
`Finally, according to the record, at least 266 docket entries have been entered in
`
`the Civil Action through July 16, 2014, attached hereto as Exhibit D. Hence, the parties
`
`remain actively involved in the Civil Action based on relevant issues and claims before
`
`the U.S. District Court, Northern District of California.
`
`
`
`In the interest of judicial economy and judicial consistency, and pursuant to
`
`TBMP 510.02, Opposer requests that the Board continue its suspension of Opposition
`
`Nos. 91203462 and 91203762 until final termination of the Civil Action.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Kuscha Hatami/
`Kuscha Hatami
`Raj Abhyanker P.C. dba LegalForce
`1580 W. El Camino Real
`Suite 13
`Mountain View, CA. 94040
`Tel. 650.390.6429
`Fax. 650.989.2131
`Kuscha@legalforcelaw.com
`Attorneys for Opposer
`
`4 
`
`
`Dated: July 17, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of OPPOSER’S OPPOSITION
`
`
`
`RESPONSE TO APPLICANT NEXTDOOR.COM, INC.’S NOTICE OF
`
`JUDGMENT IN FAVOR OF NEXTDOOR.COM AND RAJ ABHYANKER’S
`
`DISMISSAL WITH PREJUDICE OF ALL CLAIMS is being served by mailing a
`
`copy thereof, by United Parcel Service addressed to the following individuals, identified
`
`in the Notice of Opposition as the attorneys of record and correspondents on this
`
`
`17th day of July, 2014:
`
`
`Jennifer L. Kelly
`Fenwick West LLP
`801 California Street
`Mountain View, CA. 94041
`
`Attorneys for Applicant
`
`
`
`
`/Kuscha Hatami/
`Kuscha Hatami
`Raj Abhyanker P.C. dba LegalForce
`1580 W. El Camino Real
`Suite 13
`Mountain View, CA. 94040
`Tel. 650.390.6429
`Fax. 650.989.2131
`Kuscha@legalforcelaw.com
`Attorneys for Opposer
`
`
` 
`
`5 
`
`

`
`EXHIBIT A 
`EXHIBIT A
`
`

`
`Case3:12-cv-05667-EMC Document235 Filed06/19/14 Page1 of 16
`
`
`
`LAURENCE F. PULGRAM (CSB No. 115163)
`lpulgram@fenwick.com
`JENNIFER L. KELLY (CSB No. 193416)
`jkelly@fenwick.com
`ILANA S. RUBEL (CSB No. 221517)
`irubel@fenwick.com
`GUINEVERE L. JOBSON (CSB No. 251907)
`gjobson@fenwick.com
`FENWICK & WEST LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: (415) 875-2300
`Facsimile: (415) 281-1350
`
`ERIC J. BALL (CSB No. 241327)
`eball@fenwick.com
`MATTHEW B. BECKER (CSB No. 291865)
`mbecker@fenwick.com
`Fenwick and West LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: (650) 988-8500
`Facsimile: (650) 938-5200
`
`Attorneys for Plaintiff
`NEXTDOOR.COM, INC.
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`NEXTDOOR.COM, INC., a Delaware
`corporation,
`
`Case No.: 3:12-cv-05667-EMC
`
`Plaintiff,
`
`FOURTH SUPPLEMENTAL JOINT
`CASE MANAGEMENT STATEMENT
`
`v.
`
`RAJ ABHYANKER, an individual,
`
`Defendant.
`
`Date:
`Time:
`Judge:
`
`June 26, 2014
`10:30 a.m.
`Honorable Edward M. Chen
`
`FOURTH SUPPLEMENTAL JOINT CMC
`STATEMENT
`
`
`
`
`
`
`Case No. 3:12-cv-05667-EMC
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`SAN FRANCISCO
`
`ATTORNEYS AT LAW
`
`FENWICK & WEST LLP
`
`

`
`Case3:12-cv-05667-EMC Document235 Filed06/19/14 Page2 of 16
`
`
`
`Pursuant to Civ. L.R. 16-10, the Court’s Standing Order, and the Court’s Minute Order
`
`following the February 21, 2014 hearing on Nextdoor.com’s Motion for Summary Judgment [Dkt
`
`No. 163], the undersigned parties respectfully submit the following Fourth Supplemental Joint
`
`Case Management Statement.
`
`1.
`
`Only Counts 2-4 of Nextdoor’s Affirmative Claims Remain in the Case
`
`Nextdoor.com’s Summary of the Remaining Claims: In this matter alone,1 Defendant,
`
`and formerly Counterclaimant, Raj Abhyanker has pled at least seven different theories of
`
`liability against Plaintiff Nextdoor.com. These include claims based on four trade secrets, two
`
`trademarks and one patent. Each of these theories was either dismissed with prejudice by the
`
`Court or voluntarily – without any compensation from Nextdoor.com – by Abhyanker. But
`
`before dismissal, Nextdoor.com had to expend substantial attorneys’ fees and costs responding to
`
`Abhyanker’s ever changing and baseless theories of liability. Nextdoor.com now seeks recovery
`
`for having to respond to Abhyanker’s actions.
`
`First, on March 15, 2013 Nextdoor.com filed a motion to dismiss Abhyanker’s baseless
`
`trade secret claim because his idea (but not use) of the NEXTDOOR name was public and not a
`
`secret. [Dkt No. 38]. On June 6, 2013 the Court granted Nextdoor.com’s motion to dismiss the
`
`trade secret claim to the extent it was based on the idea for the NEXTDOOR name. [Dkt No. 95].
`
`Second, after multiple rounds of discussions, on November 21, 2013, Nextdoor.com served a
`
`Rule 11 motion asking Abhyanker to withdraw his baseless putative patent infringement claim
`
`(for which he had sought leave to assert) and a second trade secret claim based on his “source
`
`code.” [Dkt No. 125]. In response to the Rule 11 letter, Abhyanker advised the Court that he no
`
`longer intended to pursue these claims. [Dkt No. 132 and 135]. Third, on January 9, 2014,
`
`Nextdoor.com filed a motion for summary judgment addressing Abhyanker’s two remaining trade
`
`secret claims (alleged bidding history for the nextdoor.com domain and his alleged pilot in
`
`
`1 Abhyanker has also plead additional theories of liability against Nextdoor.com in: (1) a
`previously filed and dismissed action in Santa Clara County Superior Court; (2) two trademark
`oppositions currently pending before the Trademark Trial and Appeal Board; and (3) a recently
`filed and related patent infringement case in the Northern District of California, Case No. 14-cv-
`02335.
`
`FOURTH SUPPLEMENTAL JOINT CMC
`STATEMENT
`
`
`1
`
`Case No. 3:12-cv-05667-EMC
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`MOUNTAIN VIEW
`
`ATTORNEYS AT LAW
`
`FENWICK & WEST LLP
`
`

`
`Case3:12-cv-05667-EMC Document235 Filed06/19/14 Page3 of 16
`
`
`
`Lorelei). [Dkt No. 143]. On April 23, 2014, the Court again dismissed one of Abhyanker’s
`
`alleged trade secrets (bidding history)—because it was not a secret. Fourth, on April 16, 2014,
`
`Nextdoor.com served Abhyanker with a second Rule 11 letter asking Abhyanker to withdraw his
`
`baseless claim for infringement of the NEXTDOOR mark, premised on his allegation that he used
`
`that mark in commerce before Nextdoor.com did. On May 5, 2014, Abhyanker agreed to
`
`withdraw this claim and the Court entered a Partial Judgment against Abhyanker. [Dkt No. 193].
`
`Remarkably, Mr. Abhyanker withdrew his claims for infringement of the NEXTDOOR mark
`
`only five months after Abhyanker asked the Court to allow him to add this claim to his
`
`Counterclaims. Fifth, after multiple rounds of discovery, depositions, discovery motions and
`
`hearings regarding Abhyanker’s baseless claims and fabricated evidence, on June 13, 2014,
`
`Abhyanker agreed to dismiss all of his remaining claims (trade secret and trademark
`
`infringement). [Dkt No. 224]. Notably, Abhyanker’s agreement to dismiss his claims came after
`
`Nextdoor.com confronted Abhyanker with substantial evidence that Abhyanker fabricated
`
`evidence and mislead the Court in connection with his opposition to Nextdoor.com’s summary
`
`judgment motion. Abhyanker’s agreement to dismiss the remainder of his claims also came only
`
`after a June 13, 2014 hearing before Judge Cousins during which Judge Cousins repeatedly
`
`warned Abhyanker of the likelihood of sanctions for the pursuit of baseless claims.
`
`With the dismissal of each of Abhyanker’s claims, the only remaining claims in this
`
`matter are Nextdoor.com’s affirmative claims for relief under:
`
`• Count 2—Seeking a declaratory judgment of non-infringement of Abhyanker’s
`
`FATDOOR marks;
`
`• Count 3—Nextdoor.com’s cyberpricy claim based on Abhyanker’s use of domain names
`
`confusingly similar to Nextdoor’s NEXTDOOR mark; and
`
`• Count 4—Nextdoor.com’s trademark infringement claim based on Abhyanker’s use of
`
`Nextdoor.com’s NEXTDOOR mark.
`
`As part of Abhyanker’s dismissal of his trademark infringement claim regarding the
`
`NEXTDOOR mark, the Court entered a Judgment in Nextdoor.com’s favor on Nextdoor.com’s
`
`Count 1 for a declaratory judgment that Nextdoor.com owns the NEXTDOOR mark. [Dkt No.
`
`FOURTH SUPPLEMENTAL JOINT CMC
`STATEMENT
`
`2
`
`Case No. 3:12-cv-05667-EMC
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`MOUNTAIN VIEW
`
`ATTORNEYS AT LAW
`
`FENWICK & WEST LLP
`
`

`
`Case3:12-cv-05667-EMC Document235 Filed06/19/14 Page4 of 16
`
`
`
`193]. Nextdoor.com also voluntarily agreed to waive the right to seek damages or disgorgement
`
`of profits under Count 4 of Nextdoor.com’s Complaint. Nextdoor.com retained all other
`
`remedies relating to Count 4, including its attorneys’ fees and costs.
`
`Additionally, with the dismissal of Abhyanker’s claims, the only remaining parties in this
`
`matter are Abhyanker and Nextdoor.com. All claims have been dismissed against Prakash
`
`Janakiraman, Benchmark Capital Partners VII, L.P., Benchmark Capital Management Co. VII
`
`LLC, Monsoon Company and Sandeep Sood.
`
`2.
`
`Facts
`
`Nextdoor.com’s Statement of Facts For more than two and half hears, (and eighteen
`
`months before this Court), Nextdoor.com has had to expend substantial attorneys’ fees, costs and
`
`time defending against Abhyanker’s baseless claims. During this process, Nextdoor.com has
`
`learned that Abhyanker mislead the Court, fabricated evidence, and continued to pursue his
`
`claims in bad faith. Such actions include:
`
`• Misleading the Court in his statements and sworn attestation regarding the
`
`completeness of his document production, when, in fact, he had not searched or
`
`produced email documents off a later “found” hard drive. [Compare Dkt. No. 165-1
`
`¶ 2 with June 6, 2014 Rough Tx., pp. 233-250]. Since Abhyanker’s certification, he
`
`has produced additional information and documents that address the core trademark
`
`issues in dispute and reveal his efforts to mislead the Court. Even more,
`
`Nextdoor.com continues to wait for the substantial remainder of Abhyanker’s
`
`document production.
`
`• Falsely alleged a trade secret relating to his use of the Lorelei neighborhood, when, in
`
`fact, he did not know of any Lorelei residents that joined his service, and his claims of
`
`90% penetration in the Lorelei neighbor had in fact represented no such thing.
`
`[Compare MSJ Decl. ¶ 14 with June 6, 2014 Rough Tx., pp. 279-282].
`
`• Fabricating evidence by adding the term “Lorelei” to a PowerPoint purportedly
`
`provided to former counterclaim-defendant Benchmark. (RA000396). [Compare
`
`MSJ Decl. ¶ 24 with June 6, 2014 Rough Tx. pp.233-234].
`
`FOURTH SUPPLEMENTAL JOINT CMC
`STATEMENT
`
`3
`
`Case No. 3:12-cv-05667-EMC
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`MOUNTAIN VIEW
`
`ATTORNEYS AT LAW
`
`FENWICK & WEST LLP
`
`

`
`Case3:12-cv-05667-EMC Document235 Filed06/19/14 Page5 of 16
`
`
`
`• Fabricating evidence by portraying a collection of files he gathered in 2013 as a “Due
`
`Diligence CD” that he provided to Benchmark in 2007.
`
`• Fabricating evidence by modifying the purported source code of his
`
`www.edirectree.com website.
`
`• Misleading the Court regarding the dates of his first use of the NEXTDOOR mark.
`
`[Dkt. Nos. 141 and 153].
`
`• Misleading the Court regarding the existence of “source code” and “database
`
`structures” for his www.edirectree.com website which purportedly showed the
`
`NEXTDOOR mark. [Dkt. Nos. 141 and 153].
`
`• Misleading the Court regarding the dates on which the images shown in Exhibit D to
`
`his Supplemental Statement Regarding Prior Trademark Use [Dkt No. 141] and Errata
`
`to his Supplemental Statement Regarding Prior Trademark Use [Dkt No. 153]
`
`appeared on the www.edirectree.com website.
`
`• Destroying evidence relating to his www.edirectree.com website.
`
`• Destroying evidence regarding the creation of his Due Diligence CD.
`
`• Fabricating evidence by relying on documents in which he claimed the authority to
`
`assign himself assets of various companies, including Legalforce, Inc. and Center’d
`
`Corporation. Abhyanker had no authority to assign himself any remaining assets of
`
`these companies. [See e.g., June 6, 2007 Rough Tx., pp. 56-57, 168].
`
`• Fabricating evidence by claiming that Sood signed the alleged NDA and
`
`Confidentiality Agreement that formed the basis of Abhyanker’s claim that Sood owed
`
`him a duty of confidentiality with respect to the alleged trade secrets asserted in this
`
`case. As explained in Mr. Sood’s declaration, he never signed these documents.
`
`[Compare Dkt. No. 155-1 ¶ 2 with Dkt. No.171 ¶ 3].
`
`•
`
`Illegally recording two separate conversations with Nextdoor.com’s CEO Nirav Tolia
`
`and Sandeep Sood. [Compare Dkt. No. 165-1 Supp. MSJ Decl. ¶ 7 and 155-5 Reply
`
`MSJ Decl. ¶¶ 2-16 with Dkt. No.171 ¶ 4 and Dkt No. 150-1 ¶¶ 52-70].
`
`FOURTH SUPPLEMENTAL JOINT CMC
`STATEMENT
`
`4
`
`Case No. 3:12-cv-05667-EMC
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`MOUNTAIN VIEW
`
`ATTORNEYS AT LAW
`
`FENWICK & WEST LLP
`
`

`
`Case3:12-cv-05667-EMC Document235 Filed06/19/14 Page6 of 16
`
`
`
`• Attempted ex parte communications with the Court by failing to serve Nextdoor.com
`
`with his June 13, 2014 letter to the Court. [Dkt. No. 225].
`
`• Continued failure to comply with his discovery obligations by, for example:
`
`o Stipulating to further specific document production, only to later backtrack and
`
`claim that prior productions were sufficient.
`
`o Claiming to have produced specific documents, only to later backtrack and claim
`
`that that he cannot locate the specific documents that were supposedly in the
`
`production.
`
`o Failing to search for relevant documents from each of Abhyanker’s relevant email
`
`addresses.
`
`o Failing to review documents prior to production and instead merely comingling
`
`unresponsive and irrelevant files with any potentially relevant materials.
`
`o Multiple productions on the eve of and even during depositions.
`
`o Failing to produce more than a handful of documents dated between 2012 and the
`
`present.
`
`o Failing to provide a privilege log for the majority of his production.
`
`• Multiple additional instances of perjury and efforts to mislead the Court uncovered
`
`during Abhyanker’s deposition, including:
`
`o That the document attached as Exhibit G to Abhyanker’s Declaration in Support of
`
`his Opposition to Nextdoor.com’s Motion for Summary Judgment was a true and
`
`correct copy thereof, when in fact, it was a truncated version of that document.
`
`[Compare Dkt. No. 150-1 (“MSJ Decl.”) ¶ 44, Exhibit G with June 6, 2014 Rough
`
`Tx., p. 198 at 7-9; 198-203; and 219, Deposition Exhibit 82].
`
`o That in November 2012, attorney Daniel Hansen advised Abhyanker that Jeff
`
`Drazan had the authority to appoint him interim CEO of Center’d, without any
`
`further action required, when, in fact, Hansen wrote and said that he could give no
`
`such advice. [Compare MSJ ¶ 46 with June 6, 2014 Rough Tx. pp., 203-205,
`
`Deposition Exhibit 84].
`
`FOURTH SUPPLEMENTAL JOINT CMC
`STATEMENT
`
`5
`
`Case No. 3:12-cv-05667-EMC
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`MOUNTAIN VIEW
`
`ATTORNEYS AT LAW
`
`FENWICK & WEST LLP
`
`

`
`Case3:12-cv-05667-EMC Document235 Filed06/19/14 Page7 of 16
`
`
`
`o That Abhyanker believed he had authority to act as interim CEO of Center’d in
`
`November 2012 (when he purported to execute an agreement on its behalf,
`
`assigning all Center’d assets to himself for $1), when in fact, he admitted to its
`
`Board members that, without their consent, he knew he did not have such
`
`authority. [Compare MSJ Decl. ¶¶ 45-50 with June 6, 2014 Rough Tx., p. 209 at
`
`1-6 and pp. 208-212, Deposition Exhibit 85].
`
`o That, at the time of the presentation of the $1 assignment agreement between
`
`himself and Center’d to the Court in his Opposition to Nextdoor’s Motion for
`
`Summary Judgment (MSJ Decl., Exhibit H) in 2014, Abhyanker believed this
`
`agreement was valid, when in fact, he knew the Center’d Board had again in 2013
`
`refused to allow him to act on its behalf (even after being threatened with breach
`
`of fiduciary duty claims by Abhyanker if it refused). [Compare MSJ Decl. ¶ 44-48
`
`with June 6, 2014 Rough Tx., pp. 199-200, 212-213].
`
`o That he disclosed “much of this information” about his selection of and efforts in
`
`the Lorelei neighborhood to Benchmark via the alleged Due Diligence CD he
`
`provided to them on June 22, 2007, when, other than the fabricated Lorelei PPT,
`
`the alleged CD contained no mention of Lorelei, and Abhyanker could not identify
`
`a single document in his files, other than the Lorelei PPT that mentioned Lorelei.
`
`[Compare MSJ Decl. ¶ 23 with June 6, 2014 Rough Tx., pp. 83-84, 86-89].
`
`o That in October 2007, Legalforce was dissolved at the direction of the Board of
`
`Directors (when there was in fact no Board) and that he was assigned all of its
`
`assets (Dkt. No. 71 ¶ 3)—when, in fact, Legalforce was wound up only in
`
`December 2008, and the only assets Abhyanker received were the domain name
`
`Legalforce.com and its patent applications. [Compare Dkt. No. 165-1 ¶ 4-5 with
`
`June 6, 2014 Rough Tx., pp. 129-130, 143-145, Deposition Exhibit 76].
`
`o That he did not add the Diligence CD to the “found” hard drive in an effort to
`
`make it appear like it had been there all along, or know that it had been added after
`
`December 5, 2013. [June 7, 2014 Rough Tx., pp. 6-20].
`
`FOURTH SUPPLEMENTAL JOINT CMC
`STATEMENT
`
`6
`
`Case No. 3:12-cv-05667-EMC
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`MOUNTAIN VIEW
`
`ATTORNEYS AT LAW
`
`FENWICK & WEST LLP
`
`

`
`Case3:12-cv-05667-EMC Document235 Filed06/19/14 Page8 of 16
`
`
`
`o That, when he created a “Diligence CD” for this case and included labels on it
`
`when producing it (in order to make it look like it was an actual CD provided to
`
`Benchmark), those labels were the originals created and placed on the CD in 2007,
`
`when, in fact, those labels appear to have been created for the purpose of this
`
`litigation. [Compare MSJ Decl. ¶ 25 with June 7, 2014 Rough Tx., pp. 33-34].
`
`o That in or about April, 2008, he received express permission from the Center’d
`
`Board to continue using the Fatdoor brand (after he had been fired from the
`
`company in 2007), when no action or permission by the Board exists. [Compare
`
`MSJ Decl. ¶ 44 with June 6, 2014 Rough Tx., pp. 170-196, Deposition Exhibits
`
`78-79].
`
`o That that he began personally using the “FATDOOR” mark in commerce as soon
`
`as he got the Center’d Board’s approval (which he never got), when in fact, there
`
`is no evidence that he made any use of that mark in commerce between 2008 and
`
`2012. [Compare Dkt. No. 132 ¶ 29 (Second Amended Counterclaim) with June 7,
`
`2014 Rough Tx., p. 22].
`
`o That attorney Daniel Hansen drafted documents to carve out Legalforce’s private
`
`social network assets separately from those of Fatdoor, when no such document
`
`exists, and Abhyanker’s deposition testimony was that Legalforce’s patent
`
`applications were in fact assigned to Fatdoor. [Compare Dkt. No. 71 (Declaration
`
`of Raj Abhyanker in Support of Motion to Disqualify (“DQ Decl.”) ¶ 12-13) with
`
`June 6, 2014 Rough Tx., pp. 130-136, Deposition Exhibit 74].
`
`o That Legalforce’s ownership of the alleged trade secrets was evidenced by Warren
`
`Myers’ complaint that Fatdoor had Legalforce’s assets, and that this was disclosed
`
`to Fatdoor investors, when, in fact, Myers complained that Fatdoor had his real
`
`estate company’s assets, and this is what was disclosed. [Compare DQ Decl. ¶ 15
`
`with June 6, 2014 Rough Tx., pp. 106-111, Deposition Exhibit 71].
`
`Against this backdrop, his own attorneys (and employees of Abhyanker’s own law firm)
`
`now believe that they are professionally obligated to withdraw from further representing
`
`FOURTH SUPPLEMENTAL JOINT CMC
`STATEMENT
`
`7
`
`Case No. 3:12-cv-05667-EMC
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`MOUNTAIN VIEW
`
`ATTORNEYS AT LAW
`
`FENWICK & WEST LLP
`
`

`
`Case3:12-cv-05667-EMC Document235 Filed06/19/14 Page9 of 16
`
`
`
`Abhyanker in this matter. [Dkt. No. 217].
`
`Based on Nextdoor.com’s remaining claims and the undisputed fact that Nextdoor.com
`
`owns the right to the NEXTDOOR mark, the remaining issues center on calculating how
`
`Abhyanker will compensate Nextdoor.com for his pursuit of baseless claims and improper actions
`
`in this matter. In particular, Nextdoor.com intends to pursue statutory damages, attorneys’ fees
`
`and costs relating to Nextdoor.com’s affirmative claims for relief and Abhyanker’s dismissal of
`
`his counterclaims.
`
`Mr. Abhyanker’s Statement of Facts.
`
`As discovery has progressed in this case, Mr. Abhyanker has narrowed the scope of issues
`
`remaining by voluntarily withdrawing claims in a timely manner when it became necessary to do
`
`so. Mr. Abhyanker has now voluntarily dismissed all counterclaims against Nextdoor.com as
`
`well as the other Counterdefendants.
`
`Of course, the fact of this withdrawal does not establish that the claims were “baseless”
`
`when pled, or else no party could narrow the scope of issues following discovery. At the time his
`
`counterclaims were filed, Mr. Abhyanker was not aware that witnesses who he believed would
`
`support his case in fact could not in light of the 7 years of time that passed since the issues in
`
`dispute occurred. The coincidence of Nextdoor.com piloting its product in the Lorelei
`
`neighborhood adjacent to Mr. Abhyanker’s office was highly suspicious on its face in light of the
`
`lack of any connection between Nextdoor.com and the neighborhood known by Mr. Abhyanker at
`
`the time his claims were filed.
`
`Nonetheless, given these changes in the case, the scope of issues in dispute has been
`
`narrowed to Nextdoor.com’s claims for cyberpiracy (Count 3) and a declaratory judgment
`
`holding the term “Nextdoor” does not infringe Mr. Abhyanker’s rights in “Fatdoor” (Count 2).
`
`However, the Statement of Facts provided by Nextdoor.com demonstrates that this case is
`
`no longer really about any substantive claims for relief. Instead, the focus of this case has shifted
`
`from proving or disproving substantive allegations to an effort by Nextdoor.com to recover its
`
`attorneys’ fees and costs. Nextdoor.com says as much when it states above: “[T]he remaining
`
`issues center on calculating how Abhyanker will compensate Nextdoor.com for his pursuit of
`
`FOURTH SUPPLEMENTAL JOINT CMC
`STATEMENT
`
`8
`
`Case No. 3:12-cv-05667-EMC
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`MOUNTAIN VIEW
`
`ATTORNEYS AT LAW
`
`FENWICK & WEST LLP
`
`

`
`Case3:12-cv-05667-EMC Document235 Filed06/19/14 Page10 of 16
`
`
`
`baseless claims and improper actions in this matter.” This is why the Statement of Facts provided
`
`above makes almost no mention of any issue of fact relevant to the substance of the remaining
`
`claims. Instead, it provides a long list of factual allegations that reads like a motion for attorneys’
`
`fees.
`
`Indeed, Nextdoor.com has focused almost entirely on these issues in its recent discovery
`
`to Mr. Abhyanker. It has shifted its attention to pursuing native versions of documents previously
`
`produced in an effort to establish that documents were falsified. It has deposed third party
`
`witnesses – both among Mr. Abhyanker’s staff and from outside computer services companies –
`
`to try to pin down facts surrounding alleged tampering with evidence. And it has sent email after
`
`email seeking further production of a long list of documents that it claims have been improperly
`
`modified in an effort to show exceptional circumstances for an award of attorneys’ fees. The fact
`
`that essentially all that remains is a dispute about attorneys’ fees demonstrates that the burden and
`
`expense of extending discovery by 30 days, as requested by Nextdoor.com below, is not justified
`
`by any need to establish the merits of its substantive claims. Discovery has been open on those
`
`claims for many months. No further discovery is warranted.
`
`Mr. Abhyanker also disputes Nextdoor.com’s suggestion of continued failures to fulfill
`
`discovery obligations. In the past two months, Mr. Abhyanker has produced substantial amounts
`
`of materials in discovery, including a storage drive containing approximately 200,000 individual
`
`electronic documents, original electronic archives of email accounts from various individuals
`
`dating back as far as 2006, and hundreds of pages of hard copies of other documents. As noted
`
`below, Mr. Abhyanker’s counsel has also taken steps to preserve all electronic data on 16 separate
`
`computers and storage drives, as well as multiple email accounts used by Mr. Abhyanker or used
`
`for common storage of data. The total user generated data preserved (with operational “system”
`
`files removed) is approximately 1 terabyte. The parties have presented their dispute over whether
`
`and to what extent Mr. Abhyanker must make further searches of that data (the cost of the search
`
`is likely to exceed $100,000) to Magistrate Judge Cousins, and the matter is under submission.
`
`3.
`
`Motions
`
`Abhyanker’s counsel’s motion to withdraw from representing Abhyanker is currently
`
`FOURTH SUPPLEMENTAL JOINT CMC
`STATEMENT
`
`9
`
`Case No. 3:12-cv-05667-EMC
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`MOUNTAIN VIEW
`
`ATTORNEYS AT LAW
`
`FENWICK & WEST LLP
`
`

`
`Case3:12-cv-05667-EMC Document235 Filed06/19/14 Page11 of 16
`
`
`
`pending before the Court and set for hearing on July 24, 2014 at 1:30 p.m. Abhyanker’s counsel
`
`has asked Nextdoor.com to stipulate to having the hearing advanced to July 10, 2014. While
`
`Nextdoor.com has no objection in concept to having the motion heard on that earlier date and
`
`anticipates entering into such a stipulation, it intends to reserve the right to object to or impose
`
`conditions on the withdrawal to ensure that Abhyanker’s discovery obligations are met.
`
`Nextdoor.com anticipates filing a motion for summary judgment on its affirmative
`
`claims—including that that Abhyanker does not own any rights in the FATDOOR, GET TO
`
`KNOW YOUR NEIGHBORS, or FATDOOR GET TO KNOW YOUR NEIGHBORS marks,
`
`that Nextdoor’s mark does not infringe those marks, and that Abhyanker engaged in
`
`cybersquatting in registering