Case 6:21-cv-00755-ADA Document 70-7 Filed 06/10/22 Page 1 of 5
`Case 6:21-cv-00755-ADA Document 70-7 Filed 06/10/22 Page 1of5
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`EXHIBIT OO
`EXHIBIT OO
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`

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`Case 6:21-cv-00755-ADA Document 70-7 Filed 06/10/22 Page 2 of 5
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`Glucoft, Josh
`From:
`Sent:
`To:
`
`Cc:
`
`Subject:
`
`Borrasso, Andrew <aborrasso@wc.com>
`Monday, February 14, 2022 3:19 PM
`Watkins, Bailey Morgan; Glucoft, Josh; Heffernan, Jeannie; Turner, Ellisen Shelton;
`Deoras, Akshay S.; 'Paige Amstutz'
`'Meredith Addy'; Harber, Adam; Argall, Arthur; Ghosh, Shayon; 'Mark Mann'; 'Blake
`Thompson'; #Facebook-Gentex; Collins, Melissa; Baumgarten, Elise
`RE: Gentex Corp. et al. v. Meta Platforms, Inc. et al. (No. 6:21-cv-00755-ADA)
`
`Bailey,
`Mr. Foxlin has possession of the physical notebook, and we’ve asked that he preserve his materials during the pendency
`of the litigation.
`More generally, Defendants’ attempt to distinguish Kimberly-Clark on the ground that the defendant there sought
`production as opposed to inspection is beside the point. The question, both here and in Kimberly-Clark, is whether a
`party has the right to view the non-responsive portions of a lab notebook, and Kimberly-Clark answers that question in
`the negative. Neither of the cases you cite are to the contrary.
`The suggestion that inspection of non-responsive pages is warranted because the produced pages at issue might be
`fabricated is both entirely speculative and something that, if relevant at all, should be handled during fact discovery.
`Despite multiple attempts by Defendants to blur the line, the OGP requires only that Plaintiffs produce “all documents
`evidencing conception and reduction to practice for each claimed invention.” It does not permit further discovery as to
`those documents, or the issue of conception and reduction to practice more generally. If Defendants feel otherwise,
`they should raise that issue with the Court now. But there is no basis to threaten preclusion based on an informal
`discovery request by Defendants that is plainly improper and untimely under the OGP.
`Best,
`Andrew
`Andrew Borrasso
`Associate* | Williams & Connolly LLP
`725 Twelfth Street, N.W., Washington, DC 20005
`* Admitted only in Illinois. Practice in the District of Columbia supervised by D.C. Bar members pursuant to D.C. Court of
`Appeals Rule 49(c)(8).
`From: Watkins, Bailey Morgan <bailey.watkins@kirkland.com>
`Sent: Thursday, February 10, 2022 1:49 PM
`To: Borrasso, Andrew <aborrasso@wc.com>; Glucoft, Josh <josh.glucoft@kirkland.com>; Heffernan, Jeannie
`<jheffernan@kirkland.com>; Turner, Ellisen Shelton <ellisen.turner@kirkland.com>; Deoras, Akshay S.
`<adeoras@kirkland.com>; 'Paige Amstutz' <pamstutz@scottdoug.com>
`Cc: 'Meredith Addy' <meredith@addyhart.com>; Harber, Adam <AHarber@wc.com>; Argall, Arthur <aargall@wc.com>;
`Ghosh, Shayon <sghosh@wc.com>; 'Mark Mann' <mark@themannfirm.com>; 'Blake Thompson'
`<blake@themannfirm.com>; #Facebook-Gentex <Facebook-Gentex@kirkland.com>
`Subject: RE: Gentex Corp. et al. v. Meta Platforms, Inc. et al. (No. 6:21-cv-00755-ADA)
`Counsel,
`First, your February 7 response fails to answer questions posed in my last e-mail:
`1. Do the Plaintiffs currently have possession of the inventor notebook and, if not, who does have possession?
`2. Will the entire original notebook be preserved, unaltered, until this litigation has concluded?
`Second, Plaintiffs’ reliance on Kimberly-Clark v. First Quality Baby Products is misplaced. In that case, Defendants sought
`production of certain notebook pages. As we indicated in our February 3 e-mail, Defendants are not requesting Plaintiffs
`to produce the entire notebook, we are only requesting to inspect the notebook. Further, it is unclear from the six pages
`apparently excerpted from a generic “1 Subject Notebook” that the pages produced at GNTX-0001598-1604 are even
`part of a “laboratory notebook” as contemplated by Kimberly-Clark v. First Quality Baby Products and other case law on
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`Case 6:21-cv-00755-ADA Document 70-7 Filed 06/10/22 Page 3 of 5
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`evidence of previous conception and/or reduction to practice. For example, there do not appear to be any signatures on
`the pages produced -- either by Foxlin or a contemporaneous witness.
`Finally, if Plaintiffs fail to provide the notebook for inspection by Monday, February 14, and attempt to use any portions
`of the notebook as evidence later in this litigation, Defendants will seek to preclude such evidence based on Plaintiffs
`failure to provide the full notebook for inspection. Defendants are entitled to inspect the notebook, including to confirm
`that the handwritten dates are authentic and were not applied after the fact. See, e.g., Aptix Corp. v. Quickturn Design
`Sys., Inc., No. 98-00762, 2000 WL 852813, at *5, *33 (N.D. Cal. June 14, 2000) (finding the asserted patent unenforceable
`where inspection of the inventor’s notebook indicated that he added new material to his lab notebook and misdated
`false entries, which were presented to the court as evidence of prior conception); Falana v. Kent State Univ., No. 5:08-
`CV-720, 2014 WL 3788695, at *8 (N.D. Ohio July 31, 2014) (finding that an inventor falsified entries in a co-inventor’s
`notebook by signing and backdating the notebooks).
`Bailey Watkins
`-----------------------------------------------------
`KIRKLAND & ELLIS LLP
`
`401 Congress Avenue, Austin, TX 78701
`T +1 512 678 9152
`M +1 210 262 0408
`F +1 512 678 9101
`-----------------------------------------------------
`bailey.watkins@kirkland.com
`From: Borrasso, Andrew <aborrasso@wc.com>
`Sent: Monday, February 7, 2022 6:34 PM
`To: Watkins, Bailey Morgan <bailey.watkins@kirkland.com>; Glucoft, Josh <josh.glucoft@kirkland.com>; Heffernan,
`Jeannie <jheffernan@kirkland.com>; Turner, Ellisen Shelton <ellisen.turner@kirkland.com>; Deoras, Akshay S.
`<adeoras@kirkland.com>; 'Paige Amstutz' <pamstutz@scottdoug.com>
`Cc: 'Meredith Addy' <meredith@addyhart.com>; Harber, Adam <AHarber@wc.com>; Argall, Arthur <aargall@wc.com>;
`Ghosh, Shayon <sghosh@wc.com>; 'Mark Mann' <mark@themannfirm.com>; 'Blake Thompson'
`<blake@themannfirm.com>; #Facebook-Gentex <Facebook-Gentex@kirkland.com>
`Subject: RE: Gentex Corp. et al. v. Meta Platforms, Inc. et al. (No. 6:21-cv-00755-ADA)
`Counsel,
`Gentex and Indigo have complied with their obligations under the Order Governing Proceedings. The documents you are
`seeking (by email and not a formal discovery request) go beyond what the OGP provides. As we previously explained, a
`lab notebook is not a document. E.g., Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prod., LLC, No. 09-C-0916,
`2011 WL 1343166, at *2 (E.D. Wis. Apr. 8, 2011). Rather, each page within the lab notebook is its own document. Gentex
`has reviewed and produced all pages within the lab notebook at issue that evidence conception and reduction to
`practice of any claimed invention, which is what the OGP requires. Accordingly, Meta has no right to inspect the
`unproduced, non-responsive pages.
`To the extent any pages in the lab notebook at issue are relevant for any reason other than that they evidence
`conception and reduction to practice of the claimed inventions, they will be produced in the ordinary course of fact
`discovery in response to a proper discovery request. The threat to preclude reliance on any such pages is baseless. In the
`meantime, Gentex and Indigo are complying with their preservation obligations.
`We remain available to discuss, should you have any further questions.
`Best,
`Andrew
`Andrew Borrasso
`Associate* | Williams & Connolly LLP
`725 Twelfth Street, N.W., Washington, DC 20005
`* Admitted only in Illinois. Practice in the District of Columbia supervised by D.C. Bar members pursuant to D.C. Court of
`Appeals Rule 49(c)(8).
`From: Watkins, Bailey Morgan <bailey.watkins@kirkland.com>
`Sent: Thursday, February 3, 2022 3:25 PM
`To: Borrasso, Andrew <aborrasso@wc.com>; Glucoft, Josh <josh.glucoft@kirkland.com>; Heffernan, Jeannie
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`Case 6:21-cv-00755-ADA Document 70-7 Filed 06/10/22 Page 4 of 5
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`<jheffernan@kirkland.com>; Turner, Ellisen Shelton <ellisen.turner@kirkland.com>; Deoras, Akshay S.
`<adeoras@kirkland.com>; 'Paige Amstutz' <pamstutz@scottdoug.com>
`Cc: 'Meredith Addy' <meredith@addyhart.com>; Harber, Adam <AHarber@wc.com>; Argall, Arthur <aargall@wc.com>;
`Ghosh, Shayon <sghosh@wc.com>; 'Mark Mann' <mark@themannfirm.com>; 'Blake Thompson'
`<blake@themannfirm.com>; #Facebook-Gentex <Facebook-Gentex@kirkland.com>
`Subject: RE: Gentex Corp. et al. v. Meta Platforms, Inc. et al. (No. 6:21-cv-00755-ADA)
`Counsel,
`Plaintiffs refusal to permit Defendants to inspect the inventor notebook—over one month after Defendants’ initial
`request and well into the claim construction process—is improper. The Court’s Standing Order Governing Proceedings
`for Patent Cases required Plaintiffs to produce “all documents evidencing conception and reduction to practice for each
`claimed invention” along with its Preliminary Infringement Contentions served on October 12, 2021. This requirement
`does not permit Plaintiffs to selectively produce portions of a document that it unilaterally selects and use those
`portions as a sword to support a priority date, while shielding the rest. Defendants are entitled to inspect the entire
`inventor notebook, in context, to investigate its provenance, impact on the alleged priority claim, and whether the
`purported priority dates are authentic and accurate.
`If Plaintiffs are unwilling to permit Defendants to inspect the inventor notebook, Defendants will seek to preclude any
`attempt by Plaintiffs to rely upon it in this litigation. At this point, Defendants only request to inspect the full notebook
`and do not require Plaintiffs to produce copies of the full notebook for use in evidence, so Plaintiffs should have no
`objection. The parties can revisit this issue if Defendants request you to produce copies of any other portions of the
`notebook. Please let us know by Monday, February 7, whether you will reconsider your refusal to permit Defendants
`to inspect the full inventor notebook.
`In addition, please confirm whether Plaintiffs currently have possession of the inventor notebook and, if not, who does
`have possession. Please also confirm that the entire original inventor notebook will be preserved, unaltered, until this
`litigation has concluded. And please confirm that Plaintiffs’ outside counsel reviewed the entire inventor notebook
`before making the representation stated in your email that “[t]here are no pages other than the ones we have produced
`that are relevant to the conception and reduction to practice of the asserted patents,” or if instead that representation
`relies on Eric Foxlin’s beliefs regarding relevance. Please also confirm whether Plaintiffs represent that there are no
`other pages in the notebook that are relevant to this litigation beyond the pages that Plaintiffs copied and produced.
`Bailey Watkins
`-----------------------------------------------------
`KIRKLAND & ELLIS LLP
`
`401 Congress Avenue, Austin, TX 78701
`T +1 512 678 9152
`M +1 210 262 0408
`F +1 512 678 9101
`-----------------------------------------------------
`bailey.watkins@kirkland.com
`From: Borrasso, Andrew <aborrasso@wc.com>
`Sent: Tuesday, February 1, 2022 2:45 PM
`To: Watkins, Bailey Morgan <bailey.watkins@kirkland.com>; Glucoft, Josh <josh.glucoft@kirkland.com>; Heffernan,
`Jeannie <jheffernan@kirkland.com>; Turner, Ellisen Shelton <ellisen.turner@kirkland.com>; Deoras, Akshay S.
`<adeoras@kirkland.com>; 'Paige Amstutz' <pamstutz@scottdoug.com>
`Cc: 'Meredith Addy' <meredith@addyhart.com>; Harber, Adam <AHarber@wc.com>; Argall, Arthur <aargall@wc.com>;
`Ghosh, Shayon <sghosh@wc.com>; 'Mark Mann' <mark@themannfirm.com>; 'Blake Thompson'
`<blake@themannfirm.com>; #Facebook-Gentex <Facebook-Gentex@kirkland.com>
`Subject: Gentex Corp. et al. v. Meta Platforms, Inc. et al. (No. 6:21-cv-00755-ADA)
`Counsel,
`We write concerning your December 30, 2021 request to inspect Mr. Foxlin’s complete lab notebook from which we
`produced certain pages on December 22, 2021. There are no pages other than the ones we have produced that are
`relevant to the conception and reduction to practice of the asserted patents. Because the remainder of the notebook is
`not relevant, inspection of the entire notebook is improper. E.g., Kimberly-Clark Worldwide, Inc. v. First Quality Baby
`
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`Case 6:21-cv-00755-ADA Document 70-7 Filed 06/10/22 Page 5 of 5
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`Prod., LLC, No. 09-C-0916, 2011 WL 1343166, at *2 (E.D. Wis. Apr. 8, 2011). If you are having any difficulty reading the
`pages we produced, we would be happy to have them rescanned.
`Best,
`Andrew
`Andrew Borrasso
`Associate* | Williams & Connolly LLP
`725 Twelfth Street, N.W., Washington, DC 20005
`* Admitted only in Illinois. Practice in the District of Columbia supervised by D.C. Bar members pursuant to D.C. Court of
`Appeals Rule 49(c)(8).
`
`
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