Case 6:21-cv-01101-ADA Document 63-4 Filed 09/30/22 Page 1 of 11
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Exhibit 3
`
`

`

`Case 6:21-cv-01101-ADA Document 63-4 Filed 09/30/22 Page 2 of 11
`
`From: Radsch, Andrew Andrew.Radsch@ropesgray.com
`Subject: RE: Aire v. Apple - Motion to Amend Preliminary Infringement Contentions
`Date: September 28, 2022 at 9:34 PM
`To: Drew Hollander dhollander@bc-lawgroup.com, Apple-Aire-Ropes-SERVICE Apple-Aire-Ropes-SERVICE@ropesgray.com,
`Steve Ravel steve.ravel@kellyhart.com
`Cc: Aire Counsel Aire_Counsel@b-clg.com
`Drew,
` 
`Thank you for the email.  In view of the information you provided, and also didn’t provide,
`at our meet and confer, Apple will oppose Aire’s motion to amend its contentions.  To the
`extent Aire is permitted leave to amend, then Apple intends to request additional time to
`serve its final invalidity contentions so that the prejudice to Apple is not magnified by
`having a significantly shortened period of time to investigate and prepare its contentions.
` 
`Thanks,
`Andrew 
` 
`Andrew T. Radsch
`ROPES & GRAY LLP
`T(SV) +1 650 617 4763 | T(SF) +1 415 315 2318 | M +1 626 376 0918
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303
`andrew.radsch@ropesgray.com
`www.ropesgray.com
`___________________________________
`2021 Law360
`Technology Group of the Year
`
`This message (including attachments) is privileged and confidential. If you are not the intended
`recipient, please delete it without further distribution and reply to the sender that you have received the
`message in error.
` 
`From: Drew Hollander <dhollander@bc-lawgroup.com>
`Sent: Tuesday, September 27, 2022 11:38 AM
`To: Radsch, Andrew <Andrew.Radsch@ropesgray.com>; Apple-Aire-Ropes-SERVICE
`<Apple-Aire-Ropes-SERVICE@ropesgray.com>; Steve Ravel
`<steve.ravel@kellyhart.com>
`Cc: Aire Counsel <Aire_Counsel@b-clg.com>
`Subject: Re: Aire v. Apple - Motion to Amend Preliminary Infringement Contentions
` 
`Andrew –
` 
`Thanks again for taking the time to meet and confer on Friday.  While you have generally
`captured the substance of our conversation, I have clarified Aire’s positions below
`in RED where necessary. 
` 
`Please let us know by close of business tomorrow (Wednesday, September 28) if Apple
`opposes the motion and/or whether Apple has a proposal to add claim 13 of the ‘249
`Patent to the case without the need for motion practice.  
` 
`Thanks.
` 
`
`

`

`Case 6:21-cv-01101-ADA Document 63-4 Filed 09/30/22 Page 3 of 11
`
` 
`Drew
` 
`*             *             *
` 
`First, we discussed what Aire is accusing of infringement, and you stated that Aire is
`accusing only those iPhones that contain the Tap to Pay functionality.  AIRE:  Correct.
` 
`Second, we discussed that claim 13 recites both a terminal, and a portable data carrier
`arranged in a particular way.  You agreed that the recited portable data carrier and its
`recited features are in fact limitations of claim 13, and therefore must be
`satisfied.  AIRE:   Aire agrees that claim 13 (1) recites a “terminal” and a “portable data
`carrier” and (2) any limitations recited in claim 13 must be met in order for a finding
`infringement.  
` 
`Third, we discussed the claim 13’ limitation of a device “arranged to cause a user to
`select one of at least two possible different quality authentication methods.”  You stated
`that Aire currently believes this term should be given its plain and ordinary meaning.  In
`response to my questions, you stated that it is Aire’s position that both a user being
`presented the ability to select one possible user authentication method, as well as being
`presented with the ability to select more than one authentication method, are within the
`scope of claim 13.  Aire:  Correct.
` 
`Fourth, regarding the “security establishing operation” recited in claim 13, you explained
`that Aire is applying that term consistently across the claims of the patent.  Aire: 
`Correct. 
` 
`Finally, regarding our questions about Aire’s testing of the accused Tap to Pay
`functionality in relation to Aire’s allegations of diligence, you said that Aire’s diligence
`included more than just reliance on publicly available information, but did not describe
`any particulars, and did not yet know if Aire would rely upon any testing in connection
`with its motion to amend.  As I reiterated, it is our belief that such particulars should be
`disclosed now if Aire intends to rely on them in its motion, so that Apple can evaluate
`them.  AIRE:  The particulars of Aire’s investigation were conducted at the direction of
`counsel and are privileged.  However, as you note, Aire has not merely relied on publicly
`available information as part of its investigation.  Aire disagrees that it must divulge the
`particulars of its investigation to Apple in order for Apple to determine whether to oppose
`Aire’s motion.
` 
` 
`Drew Hollander
`BC Law Group, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016      
`dhollander@bc-lawgroup.com
` 
`From: "Radsch, Andrew" <Andrew.Radsch@ropesgray.com>
`Date: Friday, September 23, 2022 at 6:38 PM
`To: Drew Hollander <dhollander@bc-lawgroup.com>, Apple-Aire-Ropes-SERVICE
`<Apple-Aire-Ropes-SERVICE@ropesgray.com>, Steve Ravel
`<steve.ravel@kellyhart.com>
`
`

`

`Case 6:21-cv-01101-ADA Document 63-4 Filed 09/30/22 Page 4 of 11
`
`<steve.ravel@kellyhart.com>
`Cc: Aire Counsel <Aire_Counsel@b-clg.com>
`Subject: RE: Aire v. Apple - Motion to Amend Preliminary Infringement Contentions
` 
`Drew,
` 
`Thank you to you and Seth for meeting with me and David earlier today.  I write here to
`memorialize our discussion to ensure that we have an accurate understanding of Aire’s
`positions, so that we can promptly advise whether Apple opposes Aire’s motion to
`amend.  Please let us know if anything below is incorrect. 
` 
`First, we discussed what Aire is accusing of infringement, and you stated that Aire is
`accusing only those iPhones that contain the Tap to Pay functionality.
` 
`Second, we discussed that claim 13 recites both a terminal, and a portable data carrier
`arranged in a particular way.  You agreed that the recited portable data carrier and its
`recited features are in fact limitations of claim 13, and therefore must be satisfied. 
` 
`Third, we discussed the claim 13’ limitation of a device “arranged to cause a user to
`select one of at least two possible different quality authentication methods.”  You stated
`that Aire currently believes this term should be given its plain and ordinary meaning.  In
`response to my questions, you stated that it is Aire’s position that both a user being
`presented the ability to select one possible user authentication method, as well as being
`presented with the ability to select more than one authentication method, are within the
`scope of claim 13. 
` 
`Fourth, regarding the “security establishing operation” recited in claim 13, you explained
`that Aire is applying that term consistently across the claims of the patent. 
` 
`Finally, regarding our questions about Aire’s testing of the accused Tap to Pay
`functionality in relation to Aire’s allegations of diligence, you said that Aire’s diligence
`included more than just reliance on publicly available information, but did not describe
`any particulars, and did not yet know if Aire would rely upon any testing in connection
`with its motion to amend.  As I reiterated, it is our belief that such particulars should be
`disclosed now if Aire intends to rely on them in its motion, so that Apple can evaluate
`them. 
` 
`As promised, we will consider the information provided during today’s call and follow up
`promptly with whether Apple opposes the motion.  We appreciate Aire’s willingness to
`extend Apple’s final contentions deadline, if needed. 
` 
`Best,
`Andrew
` 
`
`Andrew T. Radsch
`ROPES & GRAY LLP
`T(SV) +1 650 617 4763 | T(SF) +1 415 315 2318 | M +1 626 376 0918
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303
`
`

`

`Case 6:21-cv-01101-ADA Document 63-4 Filed 09/30/22 Page 5 of 11
`
`andrew.radsch@ropesgray.com
`www.ropesgray.com
`___________________________________
`2021 Law360
`Technology Group of the Year
`
`This message (including attachments) is privileged and confidential. If you are not the intended
`recipient, please delete it without further distribution and reply to the sender that you have received the
`message in error.
` 
`From: Drew Hollander <dhollander@bc-lawgroup.com>
`Sent: Thursday, September 22, 2022 5:36 PM
`To: Radsch, Andrew <Andrew.Radsch@ropesgray.com>; Apple-Aire-Ropes-SERVICE
`<Apple-Aire-Ropes-SERVICE@ropesgray.com>; Steve Ravel
`<steve.ravel@kellyhart.com>
`Cc: Aire Counsel <Aire_Counsel@b-clg.com>
`Subject: Re: Aire v. Apple - Motion to Amend Preliminary Infringement Contentions
` 
` 
`
`Andrew –
` 
`Let’s touch base at 1:30PT.  I will circulate an invite.
` 
`Thanks.
` 
`Drew
` 
`Drew Hollander
`BC Law Group, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016      
`dhollander@bc-lawgroup.com
` 
`From: "Radsch, Andrew" <Andrew.Radsch@ropesgray.com>
`Date: Thursday, September 22, 2022 at 6:32 PM
`To: Drew Hollander <dhollander@bc-lawgroup.com>, Apple-Aire-Ropes-SERVICE
`<Apple-Aire-Ropes-SERVICE@ropesgray.com>, Steve Ravel
`<steve.ravel@kellyhart.com>
`Cc: Aire Counsel <Aire_Counsel@b-clg.com>
`Subject: RE: Aire v. Apple - Motion to Amend Preliminary Infringement Contentions
` 
`Drew,
` 
`Tomorrow from 1:30-3:30pm PT works best for us.
` 
`Thanks,
`Andrew
` 
`
`

`

`Case 6:21-cv-01101-ADA Document 63-4 Filed 09/30/22 Page 6 of 11
`
`Andrew T. Radsch
`ROPES & GRAY LLP
`T(SV) +1 650 617 4763 | T(SF) +1 415 315 2318 | M +1 626 376 0918
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303
`andrew.radsch@ropesgray.com
`www.ropesgray.com
`___________________________________
`2021 Law360
`Technology Group of the Year
`
`This message (including attachments) is privileged and confidential. If you are not the intended
`recipient, please delete it without further distribution and reply to the sender that you have received the
`message in error.
` 
`From: Drew Hollander <dhollander@bc-lawgroup.com>
`Sent: Thursday, September 22, 2022 5:24 AM
`To: Radsch, Andrew <Andrew.Radsch@ropesgray.com>; Apple-Aire-Ropes-SERVICE
`<Apple-Aire-Ropes-SERVICE@ropesgray.com>; Steve Ravel
`<steve.ravel@kellyhart.com>
`Cc: Aire Counsel <Aire_Counsel@b-clg.com>
`Subject: Re: Aire v. Apple - Motion to Amend Preliminary Infringement Contentions
` 
` 
`Thanks, Andrew – Friday is better for us.  We are quite flexible all day, so just let us know
`what time works on Friday and we should have availability.  Thanks.
` 
`Drew Hollander
`BC Law Group, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016      
`dhollander@bc-lawgroup.com
` 
`From: "Radsch, Andrew" <Andrew.Radsch@ropesgray.com>
`Date: Wednesday, September 21, 2022 at 7:55 PM
`To: Drew Hollander <dhollander@bc-lawgroup.com>, Apple-Aire-Ropes-SERVICE
`<Apple-Aire-Ropes-SERVICE@ropesgray.com>, Steve Ravel
`<steve.ravel@kellyhart.com>
`Cc: Aire Counsel <Aire_Counsel@b-clg.com>
`Subject: RE: Aire v. Apple - Motion to Amend Preliminary Infringement Contentions
` 
`Drew,
`We are available from 10am-12pm PT tomorrow – and have availability Friday, too.  What
`works for you?
`Andrew
` 
`
`Andrew T. Radsch
`
`

`

`Case 6:21-cv-01101-ADA Document 63-4 Filed 09/30/22 Page 7 of 11
`
`Andrew T. Radsch
`ROPES & GRAY LLP
`T(SV) +1 650 617 4763 | T(SF) +1 415 315 2318 | M +1 626 376 0918
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303
`andrew.radsch@ropesgray.com
`www.ropesgray.com
`___________________________________
`2021 Law360
`Technology Group of the Year
`
`This message (including attachments) is privileged and confidential. If you are not the intended
`recipient, please delete it without further distribution and reply to the sender that you have received the
`message in error.
` 
`From: Drew Hollander <dhollander@bc-lawgroup.com>
`Sent: Wednesday, September 21, 2022 6:42 AM
`To: Radsch, Andrew <Andrew.Radsch@ropesgray.com>; Apple-Aire-Ropes-SERVICE
`<Apple-Aire-Ropes-SERVICE@ropesgray.com>; Steve Ravel
`<steve.ravel@kellyhart.com>
`Cc: Aire Counsel <Aire_Counsel@b-clg.com>
`Subject: Re: Aire v. Apple - Motion to Amend Preliminary Infringement Contentions
` 
` 
`
`Andrew –
` 
`Aire only seeks leave to amend to add claim 13 to accuse iPhones utilizing the Tap to
`Pay feature as infringing claim 13 and does not seek to add any other Apple feature or
`technology.  As for the other items you have noted, it would probably be helpful to
`continue this discussion on a call.
` 
`Please let us know when is a good time to touch base today or tomorrow.
` 
`Thanks.
` 
`Drew
` 
`Drew Hollander
`BC Law Group, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016      
`dhollander@bc-lawgroup.com
` 
`From: "Radsch, Andrew" <Andrew.Radsch@ropesgray.com>
`Date: Monday, September 19, 2022 at 12:04 PM
`To: Drew Hollander <dhollander@bc-lawgroup.com>, Apple-Aire-Ropes-SERVICE
`<Apple-Aire-Ropes-SERVICE@ropesgray.com>, Steve Ravel
`<steve.ravel@kellyhart.com>
`Cc: Aire Counsel <Aire_Counsel@b-clg.com>
`
`

`

`Case 6:21-cv-01101-ADA Document 63-4 Filed 09/30/22 Page 8 of 11
`
`Cc: Aire Counsel <Aire_Counsel@b-clg.com>
`Subject: RE: Aire v. Apple - Motion to Amend Preliminary Infringement Contentions
` 
`Drew, 
` 
`Thank you for the response.
` 
`Your explanation of diligence refers to Apple’s Tap to Pay feature being not available for
`investigation before this summer.  But in its claim chart, Aire does not appear to cite or
`include information about any product testing or similar investigatory analysis by or for
`Aire.  Rather, its claim chart appears to cite materials that have been available well
`before this summer.  Please explain how Apple’s “rolling out its Tap to Pay feature to
`retailers” relates to Aire’s diligence.  In addition, if Aire intends to rely upon any product
`testing or similar investigation of the accused products to show that Aire was diligent,
`please provide us with the details of that testing/investigation so that we may consider it.
` 
`It is also not clear that Aire’s assertion of claim 13 raises no new claim construction
`issues, as you contend.  And there are a number of gaps in Aire’s proposed
`supplementation that leave Apple guessing at Aire’s new proposed contention and how
`Aire is construing claim 13.  In particular:
` 
`While claim 13 requires a terminal “arranged to cause a user to select one of at
`least two possible different quality authentication methods,” your explanation in
`your email below states that the an iPhone utilizing Tap to Pay is “configured to
`prompt a user” to select an authentication method.  Is Aire construing “arranged to
`cause” as “configured to prompt”—or otherwise contending that those are the same
`thing?  If not, please explain how Aire contends that an iPhone acting as a terminal
`is “arranged to cause” a user of a separate device to select an authentication
`method.
`Claim 13 further recites a terminal that includes “a device” that causes a user to
`make the selection referred to in the preceding bullet.  Aire’s claim chart points only
`to Tap to Pay functionality for that limitation.  Does Aire contend that a “device”
`encompasses only software?  If not, what is the “device” that is included within the
`“terminal” that Aire contends satisfies this claim?
`Claim 13 is purportedly directed to a terminal, but recites both a terminal device
`and a portable data carrier, and sets forth a number of limitations of how the
`portable data carrier must be arranged.  It is unclear, however, the extent to which
`Aire contends that the portable data carrier and limitations corresponding thereto
`are, in fact, limitations that must be met in order to practice claim 13.  Does Aire
`contend that claim 13 requires the presence of the portable data carrier?  More
`particularly, does Aire contend that a single iPhone implementing Tap to Pay
`infringes claim 13, or is it Aire’s contention that such iPhone infringes only when
`made, used, sold, offered for sale, or imported along with a separate iPhone that
`meets the requirements of the recited portable data carrier?  If the former is Aire’s
`contention, please explain Aire’s contention as to how the recited portable data
`carrier limitations are satisfied. 
`It is unclear what Aire’s interpretation is of the limitation “cause a user to select one
`of at least two possible different quality authentication methods.”  Must a user be
`presented with at least two possible methods and be required to select from one? 
`Is presentation of only a single method to choose sufficient?  Or, does Aire
`construe that limitation some other way?
`
`

`

`Case 6:21-cv-01101-ADA Document 63-4 Filed 09/30/22 Page 9 of 11
`
`construe that limitation some other way?
`It is unclear what Aire contends a “security establishing operation” means in the
`context of claim 13, and what Aire contends satisfies that limitation.  Please explain
`Aire’s position.
`  
`In addition to the above, please confirm that Aire is seeking leave to amend to accuse
`only the Tap to Pay feature of infringing claim 13, and not any other Apple feature or
`technology. 
` 
`We look forward to your responses and are available to discuss.
` 
`Best,
`Andrew
` 
` 
`
`Andrew T. Radsch
`ROPES & GRAY LLP
`T(SV) +1 650 617 4763 | T(SF) +1 415 315 2318 | M +1 626 376 0918
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303
`andrew.radsch@ropesgray.com
`www.ropesgray.com
`___________________________________
`2021 Law360
`Technology Group of the Year
`
`This message (including attachments) is privileged and confidential. If you are not the intended
`recipient, please delete it without further distribution and reply to the sender that you have received the
`message in error.
` 
`From: Drew Hollander <dhollander@bc-lawgroup.com>
`Sent: Tuesday, September 13, 2022 12:40 PM
`To: Radsch, Andrew <Andrew.Radsch@ropesgray.com>; Apple-Aire-Ropes-SERVICE
`<Apple-Aire-Ropes-SERVICE@ropesgray.com>; Steve Ravel
`<steve.ravel@kellyhart.com>
`Cc: Aire Counsel <Aire_Counsel@b-clg.com>
`Subject: Re: Aire v. Apple - Motion to Amend Preliminary Infringement Contentions
` 
` 
`
`Andrew –
` 
`Aire has been diligent in its investigation of Apple’s newly-released Tap to Pay feature. 
`Specifically, Apple only recently began rolling out its Tap to Pay feature to retailers this
`summer and was not otherwise available for investigation before then.  See,
`e.g., https://www.nfcw.com/2022/07/14/377977/us-merchants-begin-accepting-in-store-
`contactless-payments-on-apple-iphones/; https://www.macrumors.com/2022/06/07/tap-to-
`pay-on-iphone-launch-next-month/.
` 
`We also do not believe that the addition of claim 13 raises any new claim construction
`
`

`

`Case 6:21-cv-01101-ADA Document 63-4 Filed 09/30/22 Page 10 of 11
`
`We also do not believe that the addition of claim 13 raises any new claim construction
`issues.  As to Aire’s infringement theory, your email seems to acknowledge that Apple
`understands that Aire maintains that an iPhone utilizing Tap to Pay is the “terminal” and is
`configured to prompt a user engaging in an electronic transaction on a portable data
`carrier (such as another iPhone) to select one of at least two possible different
`authentication methods, such as authentication using FaceID or a passcode, and then
`confirm that authentication to the terminal (i.e., the iPhone using Tap to Pay).  The iPhone
`acting as a terminal communicates with the other iPhone using NFC technology and that
`is the means by which the iPhone terminal prompts a user to select a means of
`authentication on the iPhone acting as the portable data carrier. 
` 
`We trust that this clarifies your questions, but are available to discuss on a call.  Please
`let us know whether Apple opposes the motion to amend. 
` 
`Best, 
` 
`Drew
` 
` 
`From: "Radsch, Andrew" <Andrew.Radsch@ropesgray.com>
`Date: Monday, September 12, 2022 at 5:19 PM
`To: Drew Hollander <dhollander@bc-lawgroup.com>, Apple-Aire-Ropes-SERVICE
`<Apple-Aire-Ropes-SERVICE@ropesgray.com>, Steve Ravel
`<steve.ravel@kellyhart.com>
`Cc: Aire Counsel <Aire_Counsel@b-clg.com>
`Subject: RE: Aire v. Apple - Motion to Amend Preliminary Infringement Contentions
` 
`Drew,
` 
`Thank you for your email.  So that Apple may more carefully consider your request, we
`do have some questions relative to Aire’s proposed amendment.  
` 
`First, please explain why Aire has waited over six months to seek leave to amend.  As
`you know, Apple’s Tap to Pay feature was publicly announced at least as early as
`February of this year.  Yet this is the first Aire has mentioned supplementing to accuse
`Tap to Pay, let alone adding an additional claim to the suit.  If Aire contends that it has
`been diligent, please explain how. 
` 
`Second, please provide additional information about Aire’s theory of alleged infringement
`for claim 13.  As it stands, Aire’s proposed supplemental claim chart is insufficiently
`vague to understand (i) Aire’s contentions, and (ii) the full extent to which Aire’s theory for
`claim 13 gives rise to new claim construction issues or disputes.  In particular, Aire’s new
`claim chart alleges that the exemplary accused product acts as a terminal because it
`“supports Tap to Pay” and is “arranged to cause a user to select one of at least two
`possible different quality authentication methods.”  And yet, Aire provides no information
`about how it alleges that the accused product, acting as a terminal, causes a user of a
`separate portable data carrier to select an authentication method—i.e., Aire does not
`adequately disclose its theory for that element.  Please provide that information so that
`we can more fulsomely consider your request.
` 
`
`

`

`Case 6:21-cv-01101-ADA Document 63-4 Filed 09/30/22 Page 11 of 11
`
` 
`Regards,
`Andrew
` 
` 
`
`Andrew T. Radsch
`ROPES & GRAY LLP
`T(SV) +1 650 617 4763 | T(SF) +1 415 315 2318 | M +1 626 376 0918
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303
`andrew.radsch@ropesgray.com
`www.ropesgray.com
`___________________________________
`2021 Law360
`Technology Group of the Year
`
`This message (including attachments) is privileged and confidential. If you are not the intended
`recipient, please delete it without further distribution and reply to the sender that you have received the
`message in error.
` 
`From: Drew Hollander <dhollander@bc-lawgroup.com>
`Sent: Thursday, September 08, 2022 2:08 PM
`To: Radsch, Andrew <Andrew.Radsch@ropesgray.com>; Apple-Aire-Ropes-SERVICE
`<Apple-Aire-Ropes-SERVICE@ropesgray.com>; Steve Ravel
`<steve.ravel@kellyhart.com>
`Cc: Aire Counsel <Aire_Counsel@b-clg.com>
`Subject: Aire v. Apple - Motion to Amend Preliminary Infringement Contentions
` 
` 
`
`Andrew –
` 
`Aire intends to seek leave to amend its preliminary infringement contentions to add claim
`13 of the ‘249 Patent based on Apple’s newly released Tap to Pay feature.  A draft of our
`claim chart for claim 13 is attached.
` 
`Please let us know if Apple opposes the motion to amend or if you have any questions. 
` 
`Thanks.
` 
`Drew
`
`