`Case 6:15-cv—00907-RWS—KNM Document 109-6 Filed 07/19/16 Page 1 of 4 PageID #: 3256
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`EXHIBIT E
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`EXHIBIT E
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`Case 6:15-cv-00907-RWS-KNM Document 109-6 Filed 07/19/16 Page 2 of 4 PageID #: 3257
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`Don Jackson
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`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Jim Hall <JHall@nutter.com>
`Friday, June 24, 2016 5:23 PM
`Jay Berquist
`Alan A. Wright; Tim Reppucci; Nancy L. W. Manning; Melissa Smith; Don Jackson; Paul
`Cronin; 'claire@wsfirm.com'
`RE: SIPCO / Emerson: Verification of Recent Email
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`Jay,
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`The burden of proving prejudice does not lie with SIPCO. Rather, the burden of proving lack of prejudice lies with
`Emerson, as does the burden of proving diligence. At any rate, “no experienced practitioner would argue that the
`sudden introduction of a new prior art reference is not prejudicial.” Allure Energy, Inc. v. Nest Labs, Inc., 84 F. Supp. 3d
`538, 541‐42 (E.D. Tex. 2015).
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`In addition, your response indicates a lack of diligence. For example, you seem to indicate that the relevance of two of
`the new references to the claims in Texas was not appreciated until after the deadline. However, in its motion to dismiss
`or transfer, Emerson argued that the claims in Texas are not meaningfully distinct from those in Georgia. If Emerson
`believed its argument to the Court was true, it should have appreciated the relevance of those references to the claims
`in Texas well prior to the deadline.
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`Accordingly, SIPCO objects to the supplemental invalidity contentions, and will oppose any motion for leave to serve
`same.
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`Regards,
`
`Jim Hall
`Nutter McClennen & Fish LLP
`Direct / 617-439-2295
`
`From: Jay Berquist [mailto:jberquist@davidsonberquist.com]
`Sent: Wednesday, June 22, 2016 3:57 PM
`To: James Hall <JHall@nutter.com>
`Cc: Alan A. Wright <awright@davidsonberquist.com>; Tim Reppucci <TReppucci@nutter.com>; Nancy Manning
`<NManning@nutter.com>; Melissa Smith <melissa@gillamsmithlaw.com>; Don Jackson
`<djackson@davidsonberquist.com>; Paul Cronin <PCronin@nutter.com>; 'claire@wsfirm.com' <claire@wsfirm.com>
`Subject: RE: SIPCO / Emerson: Verification of Recent Email
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`Jim,
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`The manner of service used was new to me as well, but nothing suspicious or wrong. Given their size, the files were sent
`by a file share program. File share programs have been used in this case previously, this just happened to be a new file
`share program used by our local counsel.
`
`Two of the references charted were previously disclosed in the Georgia litigation. The failure to provide charts for one
`of those references in this action, Mills RFC 981, was inadvertent. The existence of the Machenbaum (Volcano)
`reference was discovered after we had served the initial invalidity contentions, as was the relevance of the other two
`references to the patent claims at issue in Texas (Jednascz ‘644 and Humblet). In light of the tone of your letter, could
`you explain how the timing of these additional disclosures prejudices plaintiffs?
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`Case 6:15-cv-00907-RWS-KNM Document 109-6 Filed 07/19/16 Page 3 of 4 PageID #: 3258
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`Thanks,
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`Jay
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`From: James Hall [mailto:JHall@nutter.com]
`Sent: Tuesday, June 21, 2016 5:23 PM
`To: Jay Berquist
`Cc: Alan A. Wright; Tim Reppucci; Nancy Manning; Melissa Smith; Don Jackson; Paul Cronin; 'claire@wsfirm.com'
`Subject: RE: SIPCO / Emerson: Verification of Recent Email
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`Jay,
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`We were surprised by the way this was served on us without notice. As Paul indicated below, it raised suspicion.
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`Can you tell us the reason why you were unable to serve them properly by the Court‐ordered deadline?
`
`Thanks,
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`James Hall
`Nutter
`Direct / 617-439-2295
`
`
`From: Jay Berquist [mailto:jberquist@davidsonberquist.com]
`Sent: Tuesday, June 14, 2016 2:52 PM
`To: Paul Cronin <PCronin@nutter.com>
`Cc: Alan A. Wright <awright@davidsonberquist.com>; James Hall <JHall@nutter.com>; Tim Reppucci
`<TReppucci@nutter.com>; Nancy Manning <NManning@nutter.com>; Melissa Smith <melissa@gillamsmithlaw.com>;
`Don Jackson <djackson@davidsonberquist.com>
`Subject: RE: SIPCO / Emerson: Verification of Recent Email
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`Hi Paul,
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`That information did come from our local counsel. It contains a supplementation of the defendants’ supplemental
`invalidity contentions in the Texas action. Please advise if plaintiffs object to these supplemental contentions. This
`supplement includes claim charts for 4 references not included in the invalidity contentions defendants served earlier, at
`least one of which was charted in the Georgia action.
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`Thanks,
`
`Jay
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`From: Paul Cronin [mailto:PCronin@nutter.com]
`Sent: Tuesday, June 14, 2016 12:28 PM
`To: Don Jackson
`Cc: Jay Berquist; Alan A. Wright; James Hall; Tim Reppucci; Nancy Manning
`Subject: SIPCO / Emerson: Verification of Recent Email
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`Hello Don.
`
` I
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` am writing about an email I received yesterday and I am trying to determine if it is legitimate or should be treated as
`suspicious and discarded. Did you (or anyone on your team) cause an email to be sent to me through an outfit known as
`Hightail, with a link to 7 files containing “Supplemental Invalidity Contentions”? I did not receive anything from your
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`Case 6:15-cv-00907-RWS-KNM Document 109-6 Filed 07/19/16 Page 4 of 4 PageID #: 3259
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`team relating to this email and our IT department is a bit suspicious of its origin. As a result we have not accessed the
`files. Please let us know if this is legitimate and originates from your team. Thank you in advance for your assistance.
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`‐PJC
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`Paul Cronin
`155 Seaport Blvd / Boston, MA 02210
`Direct / 617-439-2292
`nutter.com
`
`
`
`This Electronic Message contains information from the law firm of Nutter, McClennen & Fish, LLP, which may be
`privileged and confidential. The information is intended to be for the use of the addressee only. If you have received
`this communication in error, do not read it. Please delete it from your system without copying it, and notify the sender by
`reply e-mail, so that our address record can be corrected. Thank you.
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