Case 2:15-cv-01274-JRG-RSP Document 227-2 Filed 11/07/16 Page 1 of 9 PageID #:
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` EXHIBIT A
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`Case 2:15-cv-01274-JRG-RSP Document 227-2 Filed 11/07/16 Page 2 of 9 PageID #:
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`DLA Piper LLP (US)
`2000 Avenue of the Stars
`Suite 400 North Tower
`Los Angeles, California 90067-4704
`www.dlapiper.com
`
`Patrick S. Park
`patrick.park@dlapiper.com
`T 310.595.3113
`F 310.595.3413
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`
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`May 4, 2016
`E-MAIL
`
`Peter Lambrianakos, Esq.
`Brown Rudnick LLP
`Seven Times Square
`New York, NY 10036
`T: 212.209.4813
`F: 212.938.2981
`PLambrianakos@brownrudnick.com
`
`Re:
`
`Election of Claims and Discovery Issues in Blitzsafe Texas, LLC v. Hyundai Motor
`Company et al., Case Number 2:15-cv-01275-JRG-RSP
`
`
`Dear Peter:
`
`We write to address several issues regarding the preliminary election of Blitzsafe’s asserted claims and
`Blitzsafe’s deficient discovery responses, as well as to respond to your letter of April 22, 2016.
`
`Blitzsafe’s Preliminary Election of Asserted Claims
`
`We received Blitzsafe’s Preliminary Election of Asserted Claims on Friday, April 29, 2016, where Blitzsafe
`identified for the first time claim 70 (which depends from claim 66) of the ’342 patent as relevant to
`Hyundai and Kia. This claim was not previously asserted against Hyundai and Kia, and does not appear
`in your preliminary infringement contentions. As such, we understand that claim 70 was erroneously
`included in your election of asserted claims against Hyundai and Kia, and is not asserted in case number
`2:15-cv-01275-JRG-RSP, even if you do assert it against some other defendant in Blitzsafe Texas, LLC v.
`Honda Motor Co., Ltd. et al., Lead Case 2:15-cv-01274-JRG-RSP. If our understanding is incorrect,
`please immediately explain why claim 70 does not appear in your preliminary infringement contentions,
`whether and when you intend to provide a good cause for failing to include it, and whether and when you
`intend to move to supplement your claim charts under P.R. 3-1 to include this claim.
`
`Blitzsafe P.R. 3-1 Disclosures
`
`P.R. 3-1(c) requires a claim chart mapping each element of each asserted claim against each accused
`product:
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`(c) A chart identifying specifically where each element of each asserted
`claim is found within each Accused Instrumentality, including for each
`element that such party contends is governed by 35 U.S.C. ' 112(6), the
`identity of the structure(s), act(s), or material(s) in the Accused
`Instrumentality that performs the claimed function;
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`May 4, 2016
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`To date, Blitzsafe has only provided claim charts against one accused product from Hyundai (the head
`unit from the 2014 Hyundai Elantra) and one accused product from Kia (the head unit from the 2014 Kia
`Soul). As you know, Blitzsafe’s P.R. 3-1 Disclosures were due last November 24, 2015. To date, we
`have received no infringement charts for the other 13 Hyundai models and 12 Kia models (spanning
`several model years) you identified in your P.R. 3-1 disclosures.
`
`Based on the local rules, our understanding is thus that the other 25 Hyundai and Kia models are not
`accused. We ask that you confirm that you are dropping your infringement allegations against these
`other 25 models, or at least those that include head units that are not substantially identical to those in the
`2014 Elantra and 2014 Soul.
`
`If we have misunderstood your intentions, we demand (i) that you move to amend your infringement
`contentions, showing good cause for such am amendment; and (ii) full compliance with P.R. 3-1 to
`include claim charts for all of the products you contend infringe the Asserted Patents. We expect you to
`have this information readily available, as such an analysis would presumably have been conducted as
`part of your pre-filing investigations under Rule 11. Note that we would require such information even to
`begin to make sense of Blitzsafe’s Interrogatory No. 8, which seeks “an exemplary product representative
`of all Accused Products.”
`
`Blitzsafe’s Deficient Discovery Responses
`Blitzsafe’s responses to Defendants’ First Set of Common Interrogatories are deficient. As an initial
`matter, several of Blitzsafe’s responses were made pursuant to Rule 33(d), but identified documents that
`Blitzsafe has never produced. These documents bear the Bates prefix “VWGOA” and appear to be
`documents produced by the Volkswagen or Audi Defendants. We request you to immediately supplement
`your production to include these documents.
`
`Interrogatory No. 1
`Interrogatory No. 1 calls for a complete chronological description, in accordance with the Instructions, of
`the development of the claimed invention from conception to actual reduction to practice (even if such
`actual reduction to practice occurred after the date Plaintiff alleges as a constructive reduction to practice
`for the claim), including an identification of any documents that evidence the dates of conception, actual
`reduction to practice, and/or steps leading to a reduction to practice.
`
`Blitzsafe’s response is incomplete and deficient. First, Blitzsafe did not provide any information about the
`conception and reduction to practice of any invention claimed in the ’786 patent, beyond a conclusory
`statement that Mr. Marlowe conceived of and reduced to practice the claimed invention of the ’786 patent
`“as early” as its filing date. We suspect this issue arose in previous litigation involving the ’786 patent (of
`which we are aware of at least two), and therefore expect relevant documents and narratives to be close
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`at hand to Blitzsafe and Mr. Marlowe. We request you immediately supplement your responses to
`include such materials.
`
`Second, with respect to the ’342 patent, Blitzsafe identified only a single document of schematics, without
`any information or explanation of what information it represents. This document contains no information
`about the identity or nature of the conceived invention, how or by whom it was reduced to practice, or
`what steps Mr. Marlowe purportedly took to reduce it to practice.
`
`As you know, a Rule 33(d) response is only appropriate if “the burden of deriving or ascertaining the
`answer will be substantially the same for either party.” In this case, Blitzsafe and Mr. Marlowe are much
`better positioned to point out what aspects of these schematics demonstrate conception and reduction to
`practice of the inventions of the Asserted Claims of the ’342 patent. This interrogatory therefore warrants
`a narrative response to explain the relevance and responsiveness of BLITZSAFE-0265530–552, as well
`as to provide a fulsome description of the conception, reduction to practice, and diligence in reducing to
`practice of the claimed invention or inventions.
`
`Interrogatory No. 2
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`Interrogatory No. 2 calls for Blitzsafe to identify and describe, for each invention claimed in the Asserted
`Claims, the earliest date and location of the first written description or disclosure in a printed publication,
`first non-confidential disclosure to a third party, first offer for sale or sale, first public or commercial use
`(including by identifying the persons who authored the description or disclosure; the persons who made
`the disclosure, offer for sale, sale, or use; and the persons or entities who received such description,
`disclosure, offer for sale, sale, or use), and to identify all persons knowledgeable thereof and all
`documents related thereto.
`
`Blitzsafe’s response is deficient because identifies only two documents produced by Blitzsafe, which
`appear to be different versions of the press release, and several documents bearing the Bates prefix
`“VWGOA” which Blitzsafe has never produced to Hyundai or Kia. We request you immediately produce
`the remaining documents and any other responsive documents.
`
`Also, this interrogatory seeks an identification of all persons with knowledge of the subject matter of this
`interrogatory, and Blitzsafe has only identified Mr. Marlowe. We request an identification of all individuals
`Blitzsafe is aware of with knowledge relevant to this interrogatory, or a confirmation that Mr. Marlowe is
`the only person with knowledge.
`
`Interrogatory No. 3
`
`Interrogatory No. 3 seeks, for each of the Asserted Claims, an identification of all communications or
`disclosures, both public and non-public, of the subject matter of the Asserted Claims before the
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`application filing date of the patent, including, but not limited to, any sales, offers for sale, publications,
`demonstrations, uses at trade shows, or other uses and attempted uses of the subject matter.
`
`Blitzsafe’s response is limited to “the subject matter of certain of the Asserted Claims,” which is less than
`what the interrogatory requires, and is therefore deficient on that basis. For example, Blitzsafe states that
`“the first public disclosure of the subject matter of certain of the Asserted Claims was at the Consumer
`Electronics Show (‘CES’) on or about January 2002,” without identifying which of the Asserted Claims
`such demonstration is relevant to, or the requested information about the other claims.
`
`In addition, Blitzsafe’s Rule 33(d) response identifies a document which Blitzsafe has not yet produced:
`VWGOA0043633–634. Please produce this document immediately.
`
`Interrogatory No. 4
`
`Interrogatory 4 seeks, for each of the Asserted Claims, an identification of each Covered Product (i.e.,
`each Blitzsafe product that Blitzsafe contends practices one or more of the Asserted Claims) and
`describe all facts (including an identification of documents and persons with knowledge) and reasons
`supporting Plaintiff’s contention that each such Covered Product practices the claimed invention
`(including a claim chart describing with particularity on an element-by-element basis how each limitation
`of the claim is satisfied by the Covered Product, whether the limitation is literally present, present under
`the doctrine of equivalents, or both, and every specific basis for Plaintiff’s construction of each element).
`
`In its response, Blitzsafe identified 145 products it contends practices the claimed inventions of the
`Asserted Patents. However, Blitzsafe then states that it will not produce a claim chart mapping its own
`products to the Asserted Claims until after claim construction. Setting aside whether you have to create a
`chart, you also failed even to describe on an element-by-element basis how each limitation of the claim is
`satisfied by any Covered Product, whether each limitation is literally present, or present under the
`doctrine of equivalents, etc. This is wholly improper.
`
`Blitzsafe and its principal Mr. Marlowe, who is also the sole named inventor on the Asserted Patents, own
`and control both the Asserted Patents and the Blitzsafe products that are purportedly covered by the
`Asserted Patents. Defendants are entitled to know, before claim construction, whether and how
`Blitzsafe contends each of the Covered Products practice each of the Asserted Claims. We are also
`entitled to know whether and how these Covered Products practice the claims, and which claims are
`practiced, since we assume you intend to use them as affirmative proof in your own case – for example,
`as part of your damages case or for other remedies. This information is also relevant to damages, as it
`implicates a patent marking issue..
`
`If you intend to rely on any of these 145 Covered Products in any way in your affirmative case, please
`immediately supplement your response to this interrogatory with claim charts describing, on an element-
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`by-element basis, how each limitation of each claim is satisfied by each of the Covered Products
`identified in your response, and whether the limitation is literally present, present under the doctrine of
`equivalents, or both, before Plaintiff’s opening Claim Construction brief is filed on May 13th. If not, please
`confirm that you do not intend to rely on these 145 products as actually practicing any claim of any
`asserted patent. If you are unable or unwilling to do so, please provide a suitable time this week or next
`week that we may meet and confer on this issue.
`
`Interrogatory No. 5
`
`Interrogatory No. 5 seeks the number of units sold, revenues, profits, costs, and customer information for
`each Covered Product.
`
`Blitzsafe has identified documents that appear to contain some limited information responsive to this
`request, but we have not seen any documents providing information on the revenues or profits for each of
`the Covered Products, or the numbers of units sold. Please identify where in Blitzsafe’s production this
`information is found, or produce the information if it has not yet been produced.
`
`Interrogatory No. 7
`Interrogatory No. 7 asks Blitzsafe to identify and describe, for each Asserted Claim, all objective indicia
`(or “secondary considerations”) of non-obviousness that Plaintiff contends support the validity of the
`respective claim under 35 U.S.C. § 103 (including long felt but unsolved need for, copying of, or industry
`recognition of the significance of, the claimed subject matter), state the factual basis for each such
`contention (including for the contention that there exists a nexus between the claimed subject matter and
`such objective indicia), and identify all persons knowledgeable thereof and all documents and other
`evidence supporting such contentions.
`
`Blitzsafe’s response lists the following six purported objective indicia of non-obviousness without any
`further explanation or description: long-felt need, commercial acquiescence, professional approval,
`industry praise, near-simultaneous invention, and copying.
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`The interrogatory calls for an identification and description of such secondary indicia, including the factual
`bases for each such contention. We want to know what evidence, if any, Blitzsafe has for any of the
`secondary indicia and we are entitled to know that early in discovery so it can be the subject of further
`discovery. The documents Blitzsafe identified are not responsive to this request, as they appear to be
`foreign patent filings and letters to provide competitors notice of Blitzsafe’s pending applications. These
`documents do not relate to any of the six indicia Blitzsafe identified in its response. Please supplement
`your responses by May 13th. If you are unable or unwilling to do so, please provide a suitable time this
`week or next week that we may meet and confer on this issue.
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`May 4, 2016
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`Hyundai and Kia’s Responses and Supplemental Responses to Blitzsafe’s First Set of
`Interrogatories
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`Regarding your letter of April 22, 2016 regarding Hyundai and Kia’s discovery responses to date,
`Hyundai and Kia provided complete responses to your requests based on information known to Hyundai
`and Kia at the time the responses were made, and that Hyundai and Kia are continuing their
`investigations into the subject matter of Blitzsafe’s discovery requests.
`
`Hyundai and Kia have also supplemented their document productions (most recently on April 25 and 29,
`2016), and today have also served supplemental responses to certain Blitzsafe interrogatories, including
`the ones identified in your April 22 letter.
`
`Blitzsafe Interrogatories Nos. 3 and 4
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`Hyundai has supplemented its responses to interrogatories 3 and 4 and identified responsive documents
`identified to date. Kia has supplemented is responses to interrogatory 3, and is searching for additional
`agreements, licenses, and contracts relating to the Accused Products (if any such exist). While we
`disagree that any such agreements other purchase agreements for the head units are relevant, Hyundai
`and Kia have both agreed to undertake broader searches and produce any agreements that are located
`as a result of that search, as we have already begun to do.
`
`Blitzsafe Interrogatory No. 7
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`Hyundai and Kia believe they have provided sufficient responses to Blitzsafe’s interrogatory directed to
`non-infringing alternatives, especially because the claims have not yet been construed and expert
`discovery has not yet concluded. Hyundai and Kia will supplement their responses, if appropriate, after
`the Court construes the claims of the Asserted Patents and during the course of expert discovery.
`
`Blitzsafe Interrogatory No. 8
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`While we disagree with you that email discovery is relevant to this case, or that Hyundai and Kia
`consented to email discovery, Hyundai and Kia have supplemented their responses to this interrogatory.
`
`Document Productions under P.R. 3-4(a)
`
`As we explained in our previous correspondence, Hyundai and Kia went through great effort and expense
`to identify documents in their possession, custody or control relating to the accused head units.
`Specifically, Hyundai and Kia searched for “source code, specifications, schematics, flow charts, artwork,
`formulas, or other documents sufficient to show the operation of any aspects or elements of any Accused
`Instrumentality.” Notwithstanding the fact that Blitzsafe provided claim charts for only two head units,
`Hyundai and Kia searched for documents related to all the accused head units, and after a
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`reasonable search, have not found any additional documents (including source code,
`specifications, schematics, flow charts, artwork, formulas, or other documents) in their
`possession, custody, or control.
`
`To clarify, Hyundai and Kia’s searches for documents within their possession, custody, or control include
`documents of their respective parent companies to which Hyundai and Kia are given access during the
`ordinary course of business, which is what Rule 34(a) requires. We disagree with your blanket statement
`that “Documents within the possession of Defendants’ respective parent companies are within
`Defendants’ ‘control’ and therefore should be produced.” You have provided no evidence of any
`responsive or relevant documents within the possession of Defendants’ respective parent companies that
`are within Defendants’ “control.” Without such evidence, your assertion is simply incorrect.
`
`As a first principle, courts have recognized that it would be “impracticable” to hold that “all wholly owned
`subsidiaries engaged in sales and servicing” are “controlling their parent company's documents.” United
`States Int'l Trade Comm. v. ASAT, Inc., 411 F.3d 245, 255 (D.D.C. 2005). Instead, “there must be a
`nexus between the [documents sought] and [the party's] relationship with its parent companies, taking
`into account, among other things, [the party's] business responsibilities.” Id.
`
`In ASAT, Inc., the court noted that the subsidiary’s “principal activities” were “sales, marketing and
`customer services,” which did not demonstrate why the subsidiary “would have access to or even need
`documents relating to a patent that it has not been assigned.” Simply because the ASATs share some
`documents during the ordinary course of business is insufficient to deem ASAT, Inc. as having control
`over the documents underlying the patents at issue.” 411 F.3d at 255. Documents within the possession
`of Defendants’ respective parent companies are not automatically within Defendants’ ‘control.’
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`Similarly in Pitney Bowes, Inc. v. Kern Int'l, Inc., the court found that subsidiary was not in control of
`documents in its parent’s files because the documents were not necessary to the subsidiary’s business,
`were not “produced” in the normal course of business, and the requesting party did not demonstrate the
`subsidiary’s ability to easily obtain the documents. Pitney Bowes, 239 F.R.D. at 64.
`
`Blitzsafe sued Hyundai and Kia’s foreign parent companies, but never served them. Blitzsafe has had the
`opportunity to seek discovery directly from Hyundai and Kia’s foreign parent companies throughout the
`case, and declined to take even the most basic steps necessary to do so. That latter avenue remains
`open to you. But given the way you structured the case, suing only United States sales entities, we simply
`do not have possession, custody or control of some of the information you have requested.
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`Very truly
`yours,
`
`
`
`DLA Pipeer LLP (US)
`
`
`
` Park
`Patrick S.
`
`Associatee
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`PSP
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`64659.1
`EAST\12306
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