From: trevorcoddington@sandiegoiplaw.com [mailto:trevorcoddington@sandiegoiplaw.com]
`Sent: Tuesday, August 29, 2017 5:19 PM
`To: Burnim, Rachel E.; pathway-1045@sandiegoiplaw.com
`Cc: AverInfo-1045; IPEVO-1045; 'Lumens_1045'; Lumens-1045@venable.com
`Subject: RE: Inv. No. 1045: Reduction in Pathway's Asserted Claims
`
`Rachel,
`
`Pathway will not be dropping these respective claims. First, all the accused products include a flat piece
`of glass, which therefore satisfies the construction “optics having a focal point at an infinite or effective
`infinite distance.” As Respondents’ argued at the Markman hearing a focal point at an infinite distance
`means parallel light rays passing through a flat piece of glass – this was shown in one of Respondents’
`slides.
`
`Best regards,
`
`Trevor
`
`
`From: Burnim, Rachel E. [mailto:Rachel.Burnim@klgates.com]
`Sent: Friday, August 25, 2017 2:22 PM
`To: trevorcoddington@sandiegoiplaw.com; pathway-1045@sandiegoiplaw.com
`Cc: AverInfo-1045 <AverInfo-1045@klgates.com>; IPEVO-1045 <IPEVO-1045@klgates.com>;
`'Lumens_1045' <lumens_1045@ipsingularity.com>; Lumens-1045@venable.com
`Subject: RE: Inv. No. 1045: Reduction in Pathway's Asserted Claims
`
`Trevor,
`
`Respondents’ position is that the accused products do not have “optics having a focal point at an infinite
`or effectively infinite distance.” For example, the focal length of AVer’s U50 and U70 products are
`3.43mm and 3.56mm, respectively, i.e. the focal point of the lenses are at 3.43mm and 3.56mm,
`respectively, while this distance is 3.74 mm for Lumens’s accused product.
`
`Your reference to “focusing on very distant objects” is irrelevant and is a claim construction position
`unambiguously rejected by Judge Pender when he rejected Pathway’s proposed construction.
`
`Further, Respondents fail to understand the relevance of your reference to “flat piece of glass.” To the
`extent a flat piece of glass exists in any of the accused products, placing a flat piece of glass in front of or
`behind the lens will not change the focal point of the optics.
`
`In short, Pathway cannot maintain its infringement argument against Respondent’s accused products in
`good faith given Judge Pender’s construction of “optics having an infinite focal length.” All of
`Respondents’ accused document cameras have a focal length distance and a focal point at a distance far
`less than infinity. Again, please confirm by Wednesday which asserted claims Pathway will be
`withdrawing in light of the claim construction order.
`
`Best regards,
`Rachel
`
`AVER EXHIBIT 1016
`Page 1 of 2
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`

`
`
`From: trevorcoddington@sandiegoiplaw.com [mailto:trevorcoddington@sandiegoiplaw.com]
`Sent: Thursday, August 24, 2017 5:52 PM
`To: Burnim, Rachel E.; pathway-1045@sandiegoiplaw.com
`Cc: AverInfo-1045; IPEVO-1045; 'Lumens_1045'; Lumens-1045@venable.com
`Subject: RE: Inv. No. 1045: Reduction in Pathway's Asserted Claims
`
`I’d like to understand your position better – all of the accused products are capable of focusing on very
`distant objects; are they not? Alternatively, aren’t the image sensors all protected by a flat piece of
`glass?
`
`From: Burnim, Rachel E. [mailto:Rachel.Burnim@klgates.com]
`Sent: Thursday, August 24, 2017 4:06 PM
`To: pathway-1045@sandiegoiplaw.com
`Cc: AverInfo-1045 <AverInfo-1045@klgates.com>; IPEVO-1045 <IPEVO-1045@klgates.com>;
`Lumens_1045 (lumens_1045@ipsingularity.com) <lumens_1045@ipsingularity.com>; Lumens-
`1045@venable.com
`Subject: Inv. No. 1045: Reduction in Pathway's Asserted Claims
`
`Trevor,
`
`Following up on today’s DCM call, it is IPEVO’s understanding that Pathway is no longer asserting claims
`8, 9, 13, 14 or 16 based on the indefiniteness finding in Judge Pender’s Markman order. Further, IPEVO
`has requested that Pathway drop claims 18 and 20 as asserted claims because the accused products do
`not infringe in light of Judge Pender’s construction of “optics having an infinite focal length.” We look
`forward to hearing Pathway’s response regarding claims 18 and 20 by Wednesday as you promised on
`the DCM call. If there is any other reduction in asserted claims in light of the claim construction order,
`please let us know by Wednesday as well.
`
`Best regards,
`Rachel
`
`
`
`
`
`Rachel Burnim
`Associate
`K&L Gates LLP
`4 Embarcadero Center
`Suite 1200
`San Francisco, CA 94111
`Phone: 415.882.8079
`Fax: 415.882.8220
`rachel.burnim@klgates.com
`www.klgates.com
`
`
`
`
`AVER EXHIBIT 1016
`Page 2 of 2
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