Strang, Jonathan (DC)
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Bob,
`
`Strang, Jonathan (DC)
`Wednesday, December 04, 2019 9:15 AM
`Colletti, Robert; Rosen, Lauren (LA); BentleyIPR
`Naples, Clement (NY); Ghrist, Diane (DC); Moore, Matthew (DC); LaHatte, Gabrielle (SF)
`RE: IPR2019-01502 and -01539 (Bentley v. JLR)
`
`You are correct, JLR does not oppose a 4-page Reply (addressing the NHK Spring issue) submitted with the September 14
`transcript, so long as JLR is given the opportunity to submit a 4-page Surreply.
`
`JLR opposes Bentley’s other requests, namely further briefing and/or evidence on public availability in either of the two
`IPRs. If the Board grants such briefing, however, we agree that a corresponding Surreply of the same length is
`warranted.
`
`We are available for a conference call with the Board as follows:
`
`Thursday, 12/5, before noon and after 3pm (ET)
`Friday, 12/6 (any time)
`Monday, 12/9 (any time) (not available the rest of that week)
`Tuesday, 12/17 (any time)
`Wednesday, 12/18 (any time)
`
`Best,
`
`Jon
`
`From: Colletti, Robert <RColletti@haugpartners.com>
`Sent: Tuesday, December 03, 2019 3:45 PM
`To: Strang, Jonathan (DC) <Jonathan.Strang@lw.com>; Rosen, Lauren (LA) <Lauren.Rosen@lw.com>; BentleyIPR
`<BentleyIPR@haugpartners.com>
`Cc: Naples, Clement (NY) <Clement.Naples@lw.com>; Ghrist, Diane (DC) <Diane.Ghrist@lw.com>; Moore, Matthew (DC)
`<Matthew.Moore@lw.com>; LaHatte, Gabrielle (SF) <Gabrielle.LaHatte@lw.com>
`Subject: RE: IPR2019-01502 and -01539 (Bentley v. JLR)
`
`Jon,
`
`Thanks for your prompt response, which is appreciated. It seems that the parties agree to a process for addressing the §
`314(a) issue in a requested 4-page Reply and 4-page Sur-Reply.
`
`As for the British Library and Japanese National Diet Library public availability declarations, there has been no delay in
`providing these documents to you.
`
`With regard to the Porsche ATZ articles (Exs. 1002A-D) in IPR2019-1502, we contacted the British Library at the end of
`July to request public availability date information for each article. We received the letter dated August 7, 2019 from Mr.
`Ziaad Khan of the British Library Research Service, which confirmed the “British Library Public Availability Date (PAD)” for
`each article, and the PAD letter was served and filed on August 16th as Ex. 1002E. We were advised that the British
`Library has its own process for issuing formal Statutory Declarations, and we did not receive the British Library Statutory
`Declarations until August 20th, after the August 16th filing date of IPR-1502. On August 23, 2019, three days after receipt,
`we served the British Library Statutory Declarations on your firm and filed them as Exs. 1002A-D in related IPR2019-
`
`1
`
`Ex. 2029-0001
`
`Jaguar Land Rover Ltd.
`Exhibit 2029
`Bentley v. Jaguar
`IPR2019-01502
`
`

`

`01539. We raised the issue in our email of November 27th, and attached additional pdf copies of the Statutory
`Declarations, after reading JLR’s November 25th Preliminary Response in IPR-1502. JLR’s POPR (pages 38-42)
`challenged the public availability of the Porsche ATZ articles without mentioning the British Library Statutory Declarations
`that already had been provided.
`
`With regard to the Japanese National Diet Library public availability declarations for Exhibits 1059 and 1060, we contacted
`a Japanese translation service in August to translate the relevant portions of the documents, which we received on August
`22nd. The translated documents, which include the relevant publication dates, were served and filed on August 23, 2019
`in IPR-1539 (Exs. 1059 and 1060). We were advised that the Japanese National Diet Library has its own process for
`issuing formal “Apostille” declarations through Japan’s Ministry of Foreign Affairs, which we did not receive until mid-
`September. In view of JLR’s challenge to public availability in IPR-502, we provided the Apostille declarations to you in
`our email dated November 26 so that you could consider them prior to filing JLR’s preliminary response in IPR-1539, due
`on December 12th.
`
`In our view, the British Library Statutory Declarations (Exs. 1002A-D), PAD letter (Ex. 1002E), and Japan National Diet
`Library translations and Apostille Declarations (Exs. 1059/1059A and 1060/1060A) remove any doubt about the public
`availability dates of the Porsche ATZ articles and Mitsubishi Levo VII articles.
`
`Please confer with your client and provide us with a prompt response.
`
`Best regards,
`
`Rob
`
`From: Jonathan.Strang@lw.com [mailto:Jonathan.Strang@lw.com]
`Sent: Tuesday, December 03, 2019 12:46 PM
`To: Colletti, Robert; Lauren.Rosen@lw.com; BentleyIPR
`Cc: Clement.Naples@lw.com; Diane.Ghrist@lw.com; Matthew.Moore@lw.com; Gabrielle.LaHatte@lw.com
`Subject: IPR2019-01502 and -01539 (Bentley v. JLR)
`
`Hi Rob,
`
`In response to your two emails in the subject IPRs received just before Thanksgiving, we agree that a four-page Reply
`and corresponding Surreply of the same length to address the § 314(a) / NHK Spring issue in IPR2019-01502 is
`appropriate. Both parties should have a fair opportunity to address the current state of the litigation. For the same
`reason, we do not oppose Bentley submitting the September 14 transcript as evidence with its Reply, so long as we are
`entitled to the previously mentioned corresponding Surreply.
`
`As for the other requests in both IPRs, we do not yet have enough information to help our client make an informed
`decision. Please provide a detailed explanation for Bentley’s delay for each document/issue so that we may properly
`advise our client on whether to oppose.
`
`Best,
`
`Jon
`
`From: Strang, Jonathan (DC)
`Sent: Tuesday, December 03, 2019 11:54 AM
`To: 'Colletti, Robert' <RColletti@haugpartners.com>; Rosen, Lauren (LA) <Lauren.Rosen@lw.com>; BentleyIPR
`<BentleyIPR@haugpartners.com>
`Cc: Naples, Clement (NY) <Clement.Naples@lw.com>
`Subject: RE: IPR2019-01502
`
`Hi Rob,
`
`2
`
`Ex. 2029-0002
`
`

`

`We apologize for the delay, but given the holiday, we think it is understandable. We will send a response this afternoon.
`
`Best,
`
`Jon
`
`From: Colletti, Robert <RColletti@haugpartners.com>
`Sent: Tuesday, December 03, 2019 11:29 AM
`To: Rosen, Lauren (LA) <Lauren.Rosen@lw.com>; BentleyIPR <BentleyIPR@haugpartners.com>
`Cc: Strang, Jonathan (DC) <Jonathan.Strang@lw.com>; Naples, Clement (NY) <Clement.Naples@lw.com>
`Subject: RE: IPR2019-01502
`
`Dear Counsel,
`
`We have not heard from you regarding our email below. Please let us know JLR’s position as we intend to contact the
`Board later this afternoon.
`
`Thank you,
`Rob
`
`Robert E. Colletti
`Haug Partners LLP
`745 Fifth Avenue
`New York, NY 10151
`+1 212.588.0800 Main
`+1 212.863.2117 Direct
`
`rcolletti@haugpartners.com
`www.haugpartners.com
`
`From: Colletti, Robert
`Sent: Wednesday, November 27, 2019 11:13 AM
`To: 'Lauren.Rosen@lw.com'; BentleyIPR
`Cc: Jonathan.Strang@lw.com; Clement.Naples@lw.com
`Subject: RE: IPR2019-01502
`
`Dear Counsel,
`
`We have reviewed JLR’s Preliminary Response. At pages 38-42 JLR argues that Bentley did not proffer any
`evidence that the Porsche ATZ articles were publicly available. Attached below please find a Sharefile link
`with four sworn declarations provided by the British Library Service, one for each of the ATZ articles Exhibits
`1002A-1002D. Each of the declarations was previously provided to you on August 23, 2019 in IPR2019-01539
`as Exhibits 1002A-D.
`
`We intend to seek Board authorization to file the attached documents as new Exhibits 1002A-D in IPR2019-
`01502. We also intend to seek Board authorization to file a 4-page Reply to JLR’s public availability argument
`regarding the ATZ articles appearing at pages 38-42 of the Preliminary Response. We would agree that JLR
`also should be authorized to file a 4-page Sur-Reply addressing Bentley’s public availability arguments in the
`Reply. 37 CFR § 42.108(c); see Power Integrations, Inc. v. Semiconductor Components Indus., LLC,
`IPR2018-00379 Paper 8, 7 (PTAB June 19, 2018).
`
`In addition, Patent Owner argues for discretionary denial of the petition under 35 U.S.C. § 314(a) at pages 48-
`51 of its Preliminary Response. At pages 49-50, Patent Owner cites Next Caller Inc. v. TRUSTID, IPR2019-
`00961 Paper 10, 15-16 (PTAB October 16, 2019) in support. The Next Caller decision issued two months after
`3
`
`Ex. 2029-0003
`
`

`

`Bentley filed its Petition. Therefore, Petitioner Bentley has good cause to submit a brief Reply on the issue of
`discretionary denial under § 314(a). See Samsung Electronics Co. v. M&K Holdings Inc., IPR2018-00696
`Paper 7 (PTAB June 29, 2018) (patent owner’s reliance on “intervening decisions by this Board … establishes
`good cause for us to grant leave to file a reply”). We suggest 4 pages to address this issue in the Reply and 4
`pages in Patent Owner’s Sur-Reply.
`
`Finally, in connection with the § 314(a) discretionary denial issue, we also intend to request Board
`authorization to submit the September 17, 2019 transcript of the status hearing before Judge Davis in the
`Eastern District of Virginia.
`
`Please consider this proposal and let us know early next week if you will agree, or if you would like to discuss
`the matter with us before we contact the Board.
`
`Sincerely,
`Rob
`
`Robert E. Colletti
`Haug Partners LLP
`745 Fifth Avenue
`New York, NY 10151
`+1 212.588.0800 Main
`+1 212.863.2117 Direct
`
`rcolletti@haugpartners.com
`www.haugpartners.com
`
`Haug Partners LLP Sharefile Upload
`
`Expires December 03, 2019
`
`Ex. 1002A ATZ Issue 5 (May 1986).pdf
`
`Ex. 1002B ATZ Issue 6 (June 1986).pdf
`
`Ex. 1002C ATZ Issue 7 and 8 (July-August 1986).pdf
`
`Ex. 1002D ATZ Issue 9 (September 1986).pdf
`
`8 MB
`
`6.7 MB
`
`8.7 MB
`
`7.4 MB
`
`Download Attachments
`
`Kevin Mascarinas uses ShareFile to share documents securely. Learn More.
`
`From: Lauren.Rosen@lw.com [mailto:Lauren.Rosen@lw.com]
`Sent: Monday, November 25, 2019 3:03 PM
`To: BentleyIPR
`
`4
`
`Ex. 2029-0004
`
`

`

`Cc: Jonathan.Strang@lw.com; Clement.Naples@lw.com
`Subject: IPR2019-01502 - SERVICE
`
`Counsel:
`
`Attached please find service of Patent Owner’s Preliminary Response, filed today in the above-referenced action. The
`exhibits filed today will be sent to you in a separate email via Latham Secure Transfer.
`
`Best,
`Lauren
`
`Lauren M. Rosen
`Senior Paralegal
`LATHAM & WATKINS LLP
`355 South Grand Avenue, Suite 100
`Los Angeles, CA 90071-1560
`Direct Dial: +1.213.891.8981
`Fax: +1.213.891.8763
`Email: lauren.rosen@lw.com
`http://www.lw.com
`
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`
`5
`
`Ex. 2029-0005
`
`