Case 5:16-cv-00179-RWS Document 287-29 Filed 08/07/18 Page 1 of 7 PageID #: 16871
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`Exhibit 26
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`Case 5:16-cv-00179-RWS Document 287-29 Filed 08/07/18 Page 2 of 7 PageID #: 16872
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`Sung, Ye-Eun
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Wisnia, Howard N. [howard.wisnia@pillsburylaw.com]
`Thursday, June 14, 2018 3:52 PM
`Levy, Kfir B.
`Beaber, Jamie B.; ZTE_Hitachi; Brian Craft; Eric Findlay; US-CLIENT-HM-ZTE-Service; Geoff
`Culbertson
`Re: meet and confer re asserted claims and prior art
`
`We don’t intend to present an invalidity case on non asserted claims.
`
`Best Regards, Howard
`
`On Jun 14, 2018, at 2:50 PM, Levy, Kfir B. <KLevy@mayerbrown.com> wrote:
`
`Howard,
`
`This confirms the asserted claims are:
`
`729: 1, 2
`493: 5, 6
`794: 1, 2
`695: 1
`491: 1, 8
`193: 1
`317: 1, 2, 3
`
`Thank you for confirming the prior art references and combinations, however your email states that ZTE is asserting
`anticipation and obviousness against at least claims of the 317 patent that are not being asserted. Is that ZTE’s plan? If
`so, we may need to rethink the claims Maxell will assert at trial for any patents for which this is the case. Please confirm
`one way or the other.
`
`In terms of the order of live witnesses we plan to present, they are:
`
`M. Caloyannides
`K. Nakamura
`R. Maher
`J. Phinney
`V. Madisetti
`T. Erdem
`C. Mulhern
`
`We have not yet determined which deposition designations we intend to play, when, or in what order. We will provide
`that information in accordance with the Court’s rules, the Joint Pretrial Order, and the Court’s Order on Trial Procedures.
`
`We look forward to your response regarding ZTE’s assertions of prior art against non-asserted claims. Please also get
`back to us on the issue of confidentiality in the court room—i.e., whether we can agree the courtroom can be sealed
`once per witness, per patent—so that for witnesses covering more than one patent, the courtroom can be sealed twice.
`This may not be a problem for all experts covering multiple patents, but it will be at least for Dr. Caloyannides.
`
`Thanks,
`
`1
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`

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`Case 5:16-cv-00179-RWS Document 287-29 Filed 08/07/18 Page 3 of 7 PageID #: 16873
`
`Kfir B. Levy
`Partner | Intellectual Property
`Mayer ♦ Brown
`Direct Dial - 202.263.3136
`klevy@mayerbrown.com
`
`From: Wisnia, Howard N. [mailto:howard.wisnia@pillsburylaw.com]
`Sent: Thursday, June 14, 2018 2:33 PM
`To: Beaber, Jamie B.; Levy, Kfir B.
`Cc: ZTE_Hitachi; Brian Craft; Eric Findlay; US-CLIENT-HM-ZTE-Service; Geoff Culbertson
`Subject: RE: meet and confer re asserted claims and prior art
`
`Jamie,
`
`Following up on our call, here is a list of prior art issue.
`
`317:
`
`ZTE does still plan to assert the following with respect to the ‘317 Patent:
`•
`U.S. Patent No. 6,266,614 (“Alumbaugh”) anticipates Claims 1, 2, 3, 6, 7, 15; and
`•
`Alumbaugh in combination with U.S. Patent No. 5,592,382 (“Colley”) renders obvious Claim 17
`
`491/695:
`
`Asserted claims are Obvious in view of Huang, Ozkan, Inagaki, Bergher, and Ko
`
`193:
`
`Asserted claims are obvious based on
`Ground A: Wheatley + Mucke + IS-95
`Ground B: Wheatley + Mucke + IS-95 + Kim
`Ground C: Wheatley + Mucke + IS-95 + Kim + Weiland
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`794:
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`Asserted claims are obvious
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`Nongaki and Reichelt
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`493:
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`Asserted claims are obvious:
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`Claim 5: Paruluski 406 and Dunton
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`Claim 5: Paruluski 335 and Paruluski 343
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`Claim 6: either of above plus Ishizuka
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`729:
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`Ground A: Paruluski 406 and Paruluski 343 and Ishizuka
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`2
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`Case 5:16-cv-00179-RWS Document 287-29 Filed 08/07/18 Page 4 of 7 PageID #: 16874
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`Ground B: Paruluski 335 and Dunton and Ishizuka
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`We understand that after dropping of certain claims these are the only remaining asserted claims. Please confirm:
`
`729: 1, 2
`493: 5, 6
`794: 1, 2
`695: 1
`491: 1, 8
`193: 1
`317: 1, 2, 3
`
`From: Beaber, Jamie B. <JBeaber@mayerbrown.com>
`Sent: Thursday, June 14, 2018 10:01 AM
`To: Wisnia, Howard N. <howard.wisnia@pillsburylaw.com>; Levy, Kfir B. <KLevy@mayerbrown.com>
`Cc: ZTE_Hitachi <ZTEHitachi@Pillsburylaw.com>; Brian Craft <BCraft@FindlayCraft.com>; Eric Findlay
`<EFindlay@FindlayCraft.com>; US-CLIENT-HM-ZTE-Service <HM-ZTE-Service@mayerbrown.com>; Geoff Culbertson
`<gpc@texarkanalaw.com>
`Subject: Re: meet and confer re asserted claims and prior art
`
`Howard,
`
`We are almost there with our witness ordering. If we are able to get the invalidity combinations ZTE intends to
`rely on at trial during the call along with our narrowing of terms we should be able to chat internally and have
`our tentative witness ordering back to you by COB today.
`
`Thanks,
`
`J.B.
`
`Jamie B. Beaber
`
`Partner | Intellectual Property | Chair of ITC Intellectual Property Practice Group
`MAYER ♦ BROWN
`
`jbeaber@mayerbrown.com
`Direct Dial - 202.263.3153
`Mobile 1 - 202.459.3647
`Mobile 2 - 202.904.7284
`Fax - 202.263.5209
`
`1999 K Street, N.W.
`Washington, DC 20006
`www.mayerbrown.com
`
`3
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`Case 5:16-cv-00179-RWS Document 287-29 Filed 08/07/18 Page 5 of 7 PageID #: 16875
`
`-------- Original Message --------
`From: "Wisnia, Howard N." <howard.wisnia@pillsburylaw.com>
`Date: Thu, Jun 14, 2018, 11:26 AM
`To: "Levy, Kfir B." <KLevy@mayerbrown.com>
`CC: ZTE_Hitachi <ZTEHitachi@Pillsburylaw.com>,Brian Craft <BCraft@FindlayCraft.com>,Eric Findlay
`<EFindlay@FindlayCraft.com>,US-CLIENT-HM-ZTE-Service <HM-ZTE-Service@mayerbrown.com>,Geoff
`Culbertson <gpc@texarkanalaw.com>
`Subject: Re: meet and confer re asserted claims and prior art
`
`Your order of witnesses. As we discussed, we would then be agreeable to giving you ours in a couple days. We need
`yours to finalize ours.
`On Jun 14, 2018, at 11:22 AM, Levy, Kfir B. <KLevy@mayerbrown.com> wrote:
`
`Phone is fine. Please use the following dial-in information.
`
`USA Toll-Free:
`Access Code:
`
`888-299-9913
`4700936
`
`If you want to discuss any of the other issues—other than the asserted prior art and claims—please let is know right
`away so we can be prepared and have a meaningful meet and confer.
`
`Thanks,
`
`Kfir B. Levy
`Partner | Intellectual Property
`Mayer ♦ Brown
`Direct Dial - 202.263.3136
`klevy@mayerbrown.com
`
`From: Wisnia, Howard N. [mailto:howard.wisnia@pillsburylaw.com]
`Sent: Thursday, June 14, 2018 11:04 AM
`To: Levy, Kfir B.
`Cc: ZTE_Hitachi; Brian Craft; Eric Findlay; US-CLIENT-HM-ZTE-Service; Geoff Culbertson
`Subject: Re: meet and confer re asserted claims and prior art
`
`2 works. You’re welcome to come to Residence Inn by Marriott if you’d like. Otherwise by phone is ok for us. Thanks,
`Howard
`
`Best Regards, Howard
`
`Howard N. Wisnia | Partner
`Pillsbury Winthrop Shaw Pittman LLP
`501 West Broadway, Suite 1100 | San Diego, CA 92101-3575
`t 619.544.3120 | m 858.245.1591
`howard.wisnia@pillsburylaw.com | website bio
`
`On Jun 14, 2018, at 10:57 AM, Levy, Kfir B. <KLevy@mayerbrown.com> wrote:
`
`Howard,
`
`In order to finalize the amended pretrial order today, we propose a meet and confer to finally determine which prior art
`you plan to assert—including identifying the combinations for the 193—and which claims we plan to assert. Are you
`available at 2 pm today?
`
`4
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`Case 5:16-cv-00179-RWS Document 287-29 Filed 08/07/18 Page 6 of 7 PageID #: 16876
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`It may be worthwhile to conduct this in person now that your team is in Texarkana. We have space downtown not far
`from the courthouse if that works.
`
`If you’ve had time to review the jury instructions and the deposition designations, we can meet and confer on those
`issues as well.
`
`Thanks,
`
`Kfir B. Levy
`Partner | Intellectual Property
`Mayer ♦ Brown
`klevy@mayerbrown.com
`Direct Dial - 202.263.3136
`Fax - 202.263.5209
`1999 K Street, N.W.
`Washington, DC 20006
`www.mayerbrown.com
`
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`Case 5:16-cv-00179-RWS Document 287-29 Filed 08/07/18 Page 7 of 7 PageID #: 16877
`
`The contents of this message, together with any attachments, are intended only for the use of the individual or
`entity to which they are addressed and may contain information that is legally privileged, confidential and
`exempt from disclosure. If you are not the intended recipient, you are hereby notified that any dissemination,
`distribution, or copying of this message, or any attachment, is strictly prohibited. If you have received this
`message in error, please notify the original sender or the Pillsbury Winthrop Shaw Pittman Help Desk at Tel:
`800-477-0770, Option 1, immediately by telephone or by return E-mail and delete this message, along with any
`attachments, from your computer. Thank you.
`
`The contents of this message, together with any attachments, are intended only for the use of the individual or
`entity to which they are addressed and may contain information that is legally privileged, confidential and
`exempt from disclosure. If you are not the intended recipient, you are hereby notified that any dissemination,
`distribution, or copying of this message, or any attachment, is strictly prohibited. If you have received this
`message in error, please notify the original sender or the Pillsbury Winthrop Shaw Pittman Help Desk at Tel:
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