Case 4:20-cv-00180-ALM Document 50-1 Filed 05/29/20 Page 1 of 4 PageID #: 1815
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`Exhibit 1
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`Case 4:20-cv-00180-ALM Document 50-1 Filed 05/29/20 Page 2 of 4 PageID #: 1816
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`From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Ou, Philip
`Don Jackson; Jay Berquist
`Chaikovsky, Yar R.; Yen, Bruce; gil@gillamsmithlaw.com; Innovation-EDTX-DBJG; Roger Sanders (rsanders@somlaw.net); Michael Young
`(myoung@somlaw.net); VIS3-HTC
`RE: IS/HTC - 4:20-CV-180-ALM (DJ Action) - Rule 26(f) conference
`Tuesday, April 28, 2020 10:16:09 AM
`2020-04-24 DRAFT Rule 26(f) Joint Report(102752426_1).DOCX
`Appendix A - Proposed Case Schedule.docx
`
`Don,
`
`You and Jay had asked if we would amend the complaint to remove allegations relating to whether Innovation was subject to
`You and Jay had asked if we would amend the complaint to remove allegations relating to whether Innovation was subject to
`personal jurisdiction in E.D. Va. and why the case was filed in that venue. We did not believe amending the complaint to
`personal jurisdiction in E.D. Va. and why the case was filed in that venue. We did not believe amending the complaint to
`remove those allegations was necessary. There was no prior discussion about Innovation filing counterclaims of infringement
`remove those allegations was necessary. There was no prior discussion about Innovation filing counterclaims of infringement
`– we were actually the first to raise that issue, and long after your deadline to file an answer or any counterclaims passed.
`– we were actually the first to raise that issue, and long after your deadline to file an answer or any counterclaims passed.
`Innovation still has not filed an answer or any counterclaims.
`Innovation still has not filed an answer or any counterclaims.
`
`To remove any disputes as to venue for HTCA and whether Innovation must file mandatory counterclaims, we will file an
`To remove any disputes as to venue for HTCA and whether Innovation must file mandatory counterclaims, we will file an
`amended complaint to remove HTCA as a DJ Plaintiff.
`amended complaint to remove HTCA as a DJ Plaintiff.
`
`Also, attached is a draft of the Rule 26(f) Report. Therein, we have assumed that you will eventually file counterclaims of
`infringement of the 425 patent as you’ve indicated you will. We largely ported over statements from the Rule 26(f) Report in
`the 19-cv-952 Action and believe we should adopt the contingent schedule proposed there, irrespective of how the Court
`decides the motion to dismiss and/or consolidates.
`
`I’m available to discuss any other outstanding Rule 26(f) Report issues for the rest of the day.
`
`Thanks,
`Phil
`
`
`
`From: Don Jackson <djackson@davidsonberquist.com>
`Sent: Monday, April 27, 2020 11:27 AM
`To: Ou, Philip <philipou@paulhastings.com>; Jay Berquist <jberquist@davidsonberquist.com>
`Cc: Chaikovsky, Yar R. <yarchaikovsky@paulhastings.com>; Yen, Bruce <bruceyen@paulhastings.com>; gil@gillamsmithlaw.com;
`Innovation-EDTX-DBJG <Innovation-EDTX-DBJG@davidsonberquist.com>; Roger Sanders (rsanders@somlaw.net)
`<rsanders@somlaw.net>; Michael Young (myoung@somlaw.net) <myoung@somlaw.net>
`Subject: [EXT] RE: IS/HTC - 4:20-CV-180-ALM (DJ Action) - Rule 26(f) conference
`
`Phil,
`
`Innovation can file counterclaims against HTC America in Texas. Recall that we asked you if HTC intended to file an amended
`Recall that we asked you if HTC intended to file an amended
`complaint, and you indicated that it would not do so. HTCA is maintaining its complaint against Innovation. Innovation not only may,
`complaint, and you indicated that it would not do so. HTCA is maintaining its complaint against Innovation.
`but is obligated to, file mandatory counterclaims against HTCA. Venue is directed to where a cause of action may be brought. Venue
`does not impact the ability to bring counterclaims and certainly not mandatory counterclaims.
`
`Don
`
`Donald L. Jackson
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, Virginia 22102
`571.765.7700 general
`571.765.7703 direct
`571.765.7200 fax
`_______________________
`
`CONFIDENTIALITY NOTICE: This e-mail transmission contains information which may be confidential and/or legally privileged. This
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`Case 4:20-cv-00180-ALM Document 50-1 Filed 05/29/20 Page 3 of 4 PageID #: 1817
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`information is only intended for the use of individual or entity named above. If you are not the named recipient, please contact the
`sender by reply e-mail and destroy all copies of the original message. Any unauthorized review, use, disclosure or distribution is
`prohibited.
`
`From: Ou, Philip <philipou@paulhastings.com>
`Sent: Wednesday, April 22, 2020 1:04 PM
`To: Jay Berquist <jberquist@davidsonberquist.com>; Don Jackson <djackson@davidsonberquist.com>
`Cc: Chaikovsky, Yar R. <yarchaikovsky@paulhastings.com>; Yen, Bruce <bruceyen@paulhastings.com>; gil@gillamsmithlaw.com;
`Walter D. Davis <wdavis@davidsonberquist.com>
`Subject: RE: IS/HTC - 4:20-CV-180-ALM (DJ Action) - Rule 26(f) conference
`
`*EXTERNAL EMAIL*
`
`Jay – thanks. Our Rule 26(f) report is due Friday. We’ll send you a draft by tomorrow. If you are filing a counterclaim of
`infringement, we think it makes sense to use the schedule we proposed in the other matter regardless of whether the Court
`grants our motion to dismiss. Do you agree?
`
`Separately, to the extent you intend to file counterclaims of infringement against HTC America, we do not believe venue
`Separately, to the extent you intend to file counterclaims of infringement against HTC America, we do not believe venue
`would be proper for such claims under TC Heartland and as evidenced by the fact that you have not included HTCA as a
`would be proper for such claims under TC Heartland and as evidenced by the fact that you have not included HTCA as a
`defendant in your other suits in EDTX.
`defendant in your other suits in EDTX.
`
`Raising it now to hopefully avoid unnecessary motion practice on that issue. If you think there is a Rule 11 basis to file
`Raising it now to hopefully avoid unnecessary motion practice on that issue. If you think there is a Rule 11 basis to file
`infringement claims against HTCA in EDTX, we’d appreciate you explaining that basis.
`infringement claims against HTCA in EDTX, we’d appreciate you explaining that basis.
`
`Finally, to the extent you believe you need to file a motion for leave or an extension of time for your answer (as I believe it is
`Finally, to the extent you believe you need to file a motion for leave or an extension of time for your answer (as I believe it is
`overdue), let us know. I do not believe we will oppose such a motion, but will need to confirm.
`overdue), let us know.
`
`Thanks,
`Phil
`
`From: Jay Berquist <jberquist@davidsonberquist.com>
`Sent: Monday, April 20, 2020 8:44 AM
`To: Ou, Philip <philipou@paulhastings.com>; Don Jackson <djackson@davidsonberquist.com>
`Cc: Chaikovsky, Yar R. <yarchaikovsky@paulhastings.com>; Yen, Bruce <bruceyen@paulhastings.com>; gil@gillamsmithlaw.com;
`Walter D. Davis <wdavis@davidsonberquist.com>
`Subject: [EXT] RE: IS/HTC - 4:20-CV-180-ALM (DJ Action) - Rule 26(f) conference
`
`Innovation is preparing an Answer to HTC’s DJ complaint – the now extraneous allegations regarding venue and jurisdiction in Virginia
`have complicated the response unnecessarily, but we anticipate filing our Answer within the next two days. FYI – Innovation will be
`FYI – Innovation will be
`including a counterclaim asserting infringement of the ‘425 patent.
`including a counterclaim asserting infringement of the ‘425 patent.
`
`From: Ou, Philip <philipou@paulhastings.com>
`Sent: Saturday, April 18, 2020 1:05 AM
`To: Don Jackson <djackson@davidsonberquist.com>
`Cc: Chaikovsky, Yar R. <yarchaikovsky@paulhastings.com>; Yen, Bruce <bruceyen@paulhastings.com>; gil@gillamsmithlaw.com; Jay
`Berquist <jberquist@davidsonberquist.com>; Walter D. Davis <wdavis@davidsonberquist.com>
`Subject: RE: IS/HTC - 4:20-CV-180-ALM (DJ Action) - Rule 26(f) conference
`
`*EXTERNAL EMAIL*
`
`We haven’t received a response, notwithstanding the deadlines, nor have you filed a motion regarding your deadline to
`answer.
`
`We’ll update the Court on Monday morning. If you are available to confer before then about the Rule 26(f) requirements
`and the timing of your answer, let us know.
`
`Thanks,
`Phil
`
`

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`Case 4:20-cv-00180-ALM Document 50-1 Filed 05/29/20 Page 4 of 4 PageID #: 1818
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`
`From: Ou, Philip
`Sent: Tuesday, April 14, 2020 1:27 PM
`To: 'Don Jackson' <djackson@davidsonberquist.com>
`Cc: Chaikovsky, Yar R. <yarchaikovsky@paulhastings.com>; Yen, Bruce <bruceyen@paulhastings.com>; gil@gillamsmithlaw.com; Jay
`Berquist <jberquist@davidsonberquist.com>; Walter D. Davis <wdavis@davidsonberquist.com>
`Subject: RE: IS/HTC - 4:20-CV-180-ALM (DJ Action) - Rule 26(f) conference
`
`
`Don – we weren’t planning on amending the complaint. I don’t think we have any obligation to do so, but if there iswe weren’t planning on amending the complaint. I don’t think we have any obligation to do so, but if there is
`authority that you think requires us to do so if an allegation is arguably no longer relevant, we’re happy to consider it.
`authority that you think requires us to do so if an allegation is arguably no longer relevant, we’re happy to consider it.
`
`When are you filing your answer? I believe the deadline has passed. Are you moving for leave or to extend your time?
`When are you filing your answer? I believe the deadline has passed. Are you moving for leave or to extend your time?
`
`Also, are you still unavailable to have the Rule 26f conference today or will you free up later this afternoon after your
`meeting?
`
`Thanks,
`-Phil
`
`From: Don Jackson <djackson@davidsonberquist.com>
`Sent: Tuesday, April 14, 2020 1:07 PM
`To: Ou, Philip <philipou@paulhastings.com>
`Cc: Chaikovsky, Yar R. <yarchaikovsky@paulhastings.com>; Yen, Bruce <bruceyen@paulhastings.com>; gil@gillamsmithlaw.com; Jay
`Berquist <jberquist@davidsonberquist.com>; Walter D. Davis <wdavis@davidsonberquist.com>
`Subject: [EXT] RE: IS/HTC - 4:20-CV-180-ALM (DJ Action) - Rule 26(f) conference
`
`Phil,
`
`The complaint has lots of allegations relating to jurisdiction and/or venue in Virginia and why the case was brought there. Does HTC
`The complaint has lots of allegations relating to jurisdiction and/or venue in Virginia and why the case was brought there. Does HTC
`intend to file an amended complaint to streamline it and reflect that the case is in Texas? We intend to file an answer.
`intend to file an amended complaint to streamline it and reflect that the case is in Texas? We intend to file an answer.
`
`Don
`
`From: Ou, Philip <philipou@paulhastings.com>
`Sent: Tuesday, April 14, 2020 3:02 PM
`To: Don Jackson <djackson@davidsonberquist.com>
`Cc: Chaikovsky, Yar R. <yarchaikovsky@paulhastings.com>; Yen, Bruce <bruceyen@paulhastings.com>; gil@gillamsmithlaw.com; Jay
`Berquist <jberquist@davidsonberquist.com>; Walter D. Davis <wdavis@davidsonberquist.com>
`Subject: RE: IS/HTC - 4:20-CV-180-ALM (DJ Action) - Rule 26(f) conference
`
`*EXTERNAL EMAIL*
`
`Don –
`
`The report is not due until the 24th.
`
`We don’t think the consolidated case schedule is necessarily applicable since the only issue is in the case is a claim for
`declaratory judgment that the 425 patent is invalid under 101.
`
`Also, I think you’re deadline to answer or otherwise respond to the complaint has passed. Did we miss that?
`Also, I think you’re deadline to answer or otherwise respond to the complaint has passed. Did we miss that?
`
`But the deadline to have our Rule 26(f) meet and confer is today. If you are not available, are others?
`
`Phil
`
`From: Don Jackson <djackson@davidsonberquist.com>
`Sent: Tuesday, April 14, 2020 11:45 AM
`
`