Case 5:16-cv-00179-RWS Document 291-11 Filed 08/28/18 Page 1 of 4 PageID #: 18712
`Case 5:16-cv-00179—RWS Document 291-11 Filed 08/28/18 Page 1 of 4 PageID #: 18712
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`EXHIBIT J
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`EXHIBIT J
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`Case 5:16-cv-00179-RWS Document 291-11 Filed 08/28/18 Page 2 of 4 PageID #: 18713
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`From:
`To:
`Cc:
`Subject:
`Date:
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`Wisnia, Howard N.
`Fussell, Tripp; Eric Findlay
`Geoff Culbertson; US-CLIENT-HM-ZTE-Service; ZTE_Hitachi
`RE: Maxell v. ZTE
`Tuesday, June 12, 2018 4:33:10 PM
`
`Tripp, we are still considering your note below. We respond as to the ‘317 patent specifically here.
`
`
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`ZTE will no longer assert with respect to the ‘317 Patent:
`
`· U.S. Patent No. 5,781,150 (“Norris”) (Dkt. #185)
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`· Japanese Publication No. H10-232992 (“Nojima”) (Dkt. #185)
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`· U.S. Patent No. 6,125,326 (“Ohmura”) (Dkt. #185)
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`· U.S. Patent No. 5,543,789 (“Behr”) (Steve Moore’s Feb. 2 email)
`
`
`However, ZTE does still plan to assert the following with respect to the ‘317 Patent:
`
`· U.S. Patent No. 6,266,614 (“Alumbaugh”) anticipates Claim 1, 2, 3, 6, 7, 15;
`and
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`· Alumbaugh in combination with U.S. Patent No. 5,592,382 (“Colley”) renders
`obvious Claim 17
`
`
`Maxell did not move to strike these particular timely-asserted invalidity contentions, see Dkt.
`141 at 2, and therefore the Court’s Order did not address them. They were disclosed in ZTE’s
`invalidity contentions served on April 17, 2017. See Ex. Y to Andrews Report; see also Chart
`B-3 dated July 2017. These contentions were further included in Scott Andrews’s expert
`report itself. See Andrews Report, ¶¶ 136-154; 565-641; 646-741; see also Ex. E, I to
`Andrews Invalidity Report.
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`
`
`We have now provided you with a narrowing of the ‘317 Patent invalidity assertions. You
`have previously represented that you would be further narrowing the asserted claims for
`this patent. Please provide that by return email today. Thanks, 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
`
`

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`Case 5:16-cv-00179-RWS Document 291-11 Filed 08/28/18 Page 3 of 4 PageID #: 18714
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`From: Fussell, Tripp <JFussell@mayerbrown.com>
`Sent: Monday, June 11, 2018 7:06 PM
`To: Wisnia, Howard N. <howard.wisnia@pillsburylaw.com>; Eric Findlay
`<EFindlay@FindlayCraft.com>
`Cc: Geoff Culbertson <gpc@texarkanalaw.com>; US-CLIENT-HM-ZTE-Service <HM-ZTE-
`Service@mayerbrown.com>
`Subject: Maxell v. ZTE
`
`Howard and Eric:
`
`In light of the meet and confer today, Judge Schroeder’s order denying ZTE’s Motion to Amend
`Invalidity Contentions, and Steve Moore’s February 2 email (attached), we understand that the
`following prior art references are not part of this case:
`
`‘794 Patent
`· ACPI (Howard’s representation on today’s meet and confer)
`· U.S. Patent No. 6,360,327 (“Hobson”) (Steve Moore’s Feb. 2 email)
`· U.S. Patent No. 5,560,022 (“Dunstan”) (Steve Moore’s Feb. 2 email)
`
`
`‘491 & ‘695 Patents
`· Japanese Patent Application Publication No. Hei 6-295195 (“Hirose”) (Dkt. #185)
`· U.S. Patent No. 5,765,136 (“Fukuchi”) (Steve Moore’s Feb. 2 email)
`
`
`‘493 & ‘729 Patents
`· U.S. Patent No. 5,502,484 (“Okada”) (Howard’s representation on today’s meet and confer)
`· U.S. Patent No. 5,497,191 (“Yoo”) (Howard’s representation on today’s meet and confer)
`
`
`‘193 Patent
`· U.S. Patent No. 5,107,225 (“Wheatley 225”) (Dkt. #185)
`· U.S. Patent No. 5,056,109 (“Gilhousen 109”) (Howard’s representation on today’s meet and
`confer)
`· U.S. Patent No. 5,603,106 (“Toda”) (Howard’s representation on today’s meet and confer)
`· U.S. Patent No. 5,559,471 (“Black”) (Howard’s representation on today’s meet and confer)
`· U.S. Patent No. 5,752,171 (“Akiya”) (Howard’s representation on today’s meet and confer)
`· U.S. Patent No. 5,128,629 (“Trinh”) (Howard’s representation on today’s meet and confer)
`· U.S. Patent No. 5,423,081 (“Thiele”) (Howard’s representation on today’s meet and confer)
`· U.S. Patent No. 3,486,128 (“Lohrmann”) (Howard’s representation on today’s meet and
`confer)
`· Nielsen Article (Howard’s representation on today’s meet and confer)
`· Fujita Article (Howard’s representation on today’s meet and confer)
`· U.S. Patent No. 5,617,060 (“Wilson”) (Howard’s representation on today’s meet and confer)
`· U.S. Patent No. 5,420,536 (“Faulkner”) (Howard’s representation on today’s meet and
`confer)
`· U.S. Patent No. 4,901,307 (“Gilhousen 307”) (Howard’s representation on today’s meet and
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`Case 5:16-cv-00179-RWS Document 291-11 Filed 08/28/18 Page 4 of 4 PageID #: 18715
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`confer)
`
`
`‘317 Patent
`· U.S. Patent No. 5,781,150 (“Norris”) (Dkt. #185)
`· Japanese Publication No. H10-232992 (“Nojima”) (Dkt. #185)
`· U.S. Patent No. 6,125,326 (“Ohmura”) (Dkt. #185)
`· U.S. Patent No. 5,592,382 (“Colley”) (Dkt. #185)
`· U.S. Patent No. 6,266,614 (“Alumbaugh”) (Dkt. #185)
`· U.S. Patent No. 5,543,789 (“Behr”) (Steve Moore’s Feb. 2 email)
`
`
`In addition, we confirm that Maxell is proceeding to trial on the following claims:
`
`
`· Claims 1, 2, and 9 of the ’794 Patent
`· Claims 1 and 8 of the ’491 Patent
`· Claim 1 of the ’695 Patent
`· Claims 5 and 6 of the ’493 Patent
`· Claims 1 and 2 of the ’729 Patent
`
`
`Further, while you were unprepared today to provide to us which specific combinations ZTE will be
`relying upon at trial for invalidity (including for the ‘193 patent, which currently has many dozens of
`possible combinations that ZTE could use), you indicated that ZTE would endeavor to provide us this
`information as soon as possible (in particular for the ‘193 patent) but in no event later than
`Thursday. We informed you at that time we would likewise provide to you the claims we intend to
`assert at trial.
`
`If you disagree with any of the above, please let us know by no later than 9am tomorrow Central
`time so that we can inform the court of the result of the meet and confer.
`
`Regards,
`Tripp
`
`
`James A. Fussell, III (Tripp)
`M A Y E R ♦ B R O W N
`1999 K Street NW, Washington, DC 20006
`Direct: (202) 263-3222 | jfussell@mayerbrown.com
`
`
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