Case 5:16-cv-00179-RWS Document 287-34 Filed 08/07/18 Page 1 of 3 PageID #: 16887
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`Exhibit 31
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`Case 5:16-cv-00179-RWS Document 287-34 Filed 08/07/18 Page 2 of 3 PageID #: 16888
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`Mayer Brown LLP
`1999 K Street, N.W.
`Washington, D.C. 20006-1101
`Main Tel +1 202 263 3000
`Main Fax +1 202 263 3300
`www.mayerbrown.com
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`Jamie B. Beaber
`Direct Tel +1 202 263 3153
`Direct Fax +1 202 263 5209
`jbeaber@mayerbrown.com
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`January 11, 2018
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`BY ELECTRONIC DELIVERY
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`Steven A. Moore
`Pillsbury Winthrop Shaw Pittman LLP
`501 West Broadway, Suite 1100
`San Diego, CA 92101-3575
`steve.moore@pillsburylaw.com
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`Dear Steve:
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`Re: Maxell, Ltd. v. ZTE Corporation et al., Case No. 5:16-cv-00178-RWS (E.D. Tex.) (lead
`case)
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`We want to raise an issue stemming from ZTE’s opening expert reports on the issue of
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`invalidity. Specifically, ZTE has relied on a number of references in its opening reports that were
`not identified as prior art in ZTE’s invalidity contentions. An identification of such references is
`as follows:
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` Mr. Andrews Expert Report Regarding Invalidity of U.S. Patent No. 6,748,317: Mr.
`Andrews has newly relied on U.S. Patent Nos. 5,543,789 and 5,781,150. The ’789 patent
`was not previously identified as prior art for the ’317 patent. The ’150 patent had been
`previously disclosed, but only as a secondary reference. ZTE’s current reliance on this
`patent represents a departure from the theories and positions set forth in its invalidity
`contentions.
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` Dr. Ding Expert Report Regarding Invalidity of U.S. Patent No. 6,408,193: Dr. Ding
`has newly relied on U.S. Patent No. 5,107,225. This patent was not previously identified
`as prior art for the ’193 patent.
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` Dr. Mayer-Patel Expert Report Regarding Invalidity of U.S. Patent Nos. 8,098,695
`and 6,816,491: Dr. Mayer-Patel has newly relied on U.S. Patent No. 5,765,136 and
`Japanese Patent Application Publication No. Hei 6-295195. This patent and publication
`were not previously identified as prior art for the ’491 or ’695 patents.
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` Dr. Wolfe Expert Report Regarding Invalidity of U.S. Patent Nos. 5,396,443 and
`6,329,794: Dr. Wolfe has newly relied on U.S. Patent Nos. 5,560,022 and 6,360,327.
`These patents were not previously identified as prior art for the’794 patent.
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`Mayer Brown LLP operates in combination with other Mayer Brown entities with offices in Europe and Asia
`and is associated with Tauil & Chequer Advogados, a Brazilian law partnership.
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`Case 5:16-cv-00179-RWS Document 287-34 Filed 08/07/18 Page 3 of 3 PageID #: 16889
`Mayer Brown LLP
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`Steven A. Moore.
`January 11, 2018
`Page 2
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`In view of the foregoing, we request that ZTE confirm no later than January 12 that it will
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`not be relying on any of the foregoing patents or publications as prior art to the respective patents
`listed above. If ZTE will not provide such confirmation, Maxell intends to move to strike the
`reference and requests ZTE’s availability, on January 11 or 12, for a meet and confer under
`Local Rule CV-7(h) to discuss such motion. Maxell further provides notice that it will seek fees
`and costs associated with any such motion to strike and with respect to any work performed in
`connection with preparing a response regarding these references, including in its rebuttal expert
`reports.
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`cc: Counsel of Record
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`Sincerely,
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`Jamie B. Beaber
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