Exhibit 8
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`Case 2:15-cv-00037-RWS Document 87-10 Filed 02/05/16 Page 1 of 5 PageID #: 2140
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`Case 2:15-cv-00037-RWS Document 87-10 Filed 02/05/16 Page 2 of 5 PageID #: 2141
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`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`ali.dhanani@bakerbotts.com
`Thursday, February 04, 2016 9:43 PM
`Calia, Kurt; Flynn, Patrick N
`dlhughesvelbit@bakerbotts.com; Elbit-Hughes; patrickclutter@potterminton.com;
`johnbufe@potterminton.com; mikejones@potterminton.com; wh@wsfirm.com
`RE: Elbit v. Hughes
`
`Kurt,
`
`Thank you for your call today. As I explained, I am in depositions until Friday. However, as discussed, we will provide a
`specific listing of the combinations identified in the invalidity contentions by Monday, February 8.
`
` I
`
` understand you are still reserving your position to raise issues with respect to the original invalidity contentions or the
`materials we will provide on Monday.
`
`Thanks,
`Ali
`
`Ali Dhanani
`Tel: (713) 229-1108
`Cell: (281) 250-2294
`
`
`From: Dhanani, Ali
`Sent: Wednesday, February 03, 2016 7:40 PM
`To: 'Calia, Kurt'; Flynn, Patrick N
`Cc: Hughes v Elbit; Elbit-Hughes; patrickclutter@potterminton.com; johnbufe@potterminton.com; EXT Jones, Mike;
`wh@wsfirm.com
`Subject: RE: Elbit v. Hughes
`
`Kurt,
`
`Thank you for your email. As I said in my correspondence of January 29, we will investigate your complaints
`and will respond on Monday, February 8, 2016.
`
`Thanks,
`
`Ali Dhanani
`Tel: (713) 229-1108
`Cell: (281) 250-2294
`
`
`From: Calia, Kurt [mailto:kcalia@cov.com]
`Sent: Monday, February 01, 2016 6:42 AM
`To: Dhanani, Ali; Flynn, Patrick N
`Cc: Hughes v Elbit; Elbit-Hughes; patrickclutter@potterminton.com; johnbufe@potterminton.com; EXT Jones, Mike;
`wh@wsfirm.com
`Subject: RE: Elbit v. Hughes
`
`Ali
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`1
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`Case 2:15-cv-00037-RWS Document 87-10 Filed 02/05/16 Page 3 of 5 PageID #: 2142
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`
`With all due respect, this response is unacceptable. While you claim to disagree that Defendants’
`Invalidity Contentions violate the applicable rules, your email makes no attempt to explain the basis
`for such a position. And there is none. The Patent Local rules are quite explicit about what is
`required of Invalidity Contentions, and our prior correspondence demonstrated conclusively that
`Defendants’ contentions fall far short of meeting those requirements. Indeed, in corresponding with
`Defendants about this, we took the time to quote Patent Local Rule 3-3(b) (including its requirement
`to identify each alleged combination of alleged obviousness references along with the motivation to
`combine them), identify the deficiencies of Defendants’ contentions (including their failure to provide
`such combinations, resulting in billions of potential ones), and the case law in this District that makes
`clear that it is a violation of the rules to do precisely what Defendants have done here. There is thus
`no room for reasonable debate about the deficiencies of Defendants’ contentions.
`
`As you know, Defendants were required to serve their contentions by January 15 -- a date for which
`Defendants obtained an extension, and more than two months after they had filed three IPR
`petitions. We are therefore perplexed as to why Defendants’ contentions are deficient and why we
`should not conclude that they reflect a conscious disregard of the rules. In addition, we see no reason
`why Defendants need until February 8 -- three weeks after the deadline -- to “investigate” the obvious
`deficiencies of Defendants’ own contentions and provide a response as to whether they will rectify
`them.
`
`Likewise, we do not believe that it is an appropriate response to now ask us for comments on the
`Order Focusing Asserted Claims and Prior Art. Such a response appears to attempt to shift blame to
`Plaintiffs related to the claims it has currently asserted, rather than address the deficiencies of the
`contentions themselves. That the parties have not conferred on this Order (which, ironically,
`Plaintiffs previously attempted to do, only to be put off by Defendants -- see 12/18 email from Michael
`Sherby, attached), does not excuse Defendants’ violation of Patent Local Rule 3-3(b). In fact, in
`Michael’s email, he references the July 27 deadline for claim construction discovery and further states
`Defendants’ position that possible narrowing of prior art and asserted claims might make sense after
`Defendants’ contentions came due. Defendants’ prior position that prior narrowing of the case should
`take place after their contentions were served or after claim construction discovery is inconsistent
`with your current position that Defendants should not bring their contentions into conformity with
`Patent Local Rule 3-3(b) until after the parties confer about narrowing the case. Finally, we are very
`concerned about the consistent pattern of delay exhibited by Defendants, which we have documented
`in prior correspondence and that I will not repeat here.
`
`Accordingly, we insist that Defendants’ serve amended contentions that comply with Patent Local
`Rule 3-3(b) by no later than the close of business, Wednesday, February 3. If you do not, Plaintiffs
`intend to seek appropriate relief.
`
`Sincerely,
`Kurt
`______________________________
`Kurt Calia
`
`Covington & Burling LLP
`333 Twin Dolphin Drive, Suite 700
`Redwood Shores, CA 94065-1418
`T +1 650 632 4717 | kcalia@cov.com
`www.cov.com
`
`
`
`
`This message is from a law firm and may contain information that is confidential or legally privileged. If you are not the intended recipient, please
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`2
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`Case 2:15-cv-00037-RWS Document 87-10 Filed 02/05/16 Page 4 of 5 PageID #: 2143
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`immediately advise the sender by reply e-mail that this message has been inadvertently transmitted to you and delete this e-mail from your system.
`Thank you for your cooperation.
`
`
`
`
`
`
`
`From: ali.dhanani@bakerbotts.com [mailto:ali.dhanani@bakerbotts.com]
`Sent: Friday, January 29, 2016 6:05 PM
`To: Flynn, Patrick N
`Cc: dlhughesvelbit@bakerbotts.com; Elbit-Hughes; patrickclutter@potterminton.com;
`johnbufe@potterminton.com; mikejones@potterminton.com; wh@wsfirm.com
`Subject: Elbit v. Hughes
`
`Dear Patrick,
`
`Thank you for your letter. While we disagree that Defendants’ Invalidity Contentions violate the rules,
`we will investigate your Complaints and provide a full response by February 8.
`
`
`As an initial matter, however, we think that your letter raises issues that the Court has provided tools to
`address and we think now is an opportune time to discuss them. In particular, as Defendants certainly
`have no intention of asserting “billions” of combinations of references, or requiring Elbit to consider
`such combinations, we would suggest that the parties discuss the Court’s general “ORDER FOCUSING
`PATENT CLAIMS AND PRIOR ART TO REDUCE COSTS” and come to an agreement on when the
`parties will narrow the case on both sides. Attached is the latest proposal from Defendants. Please
`review and let us know if you agree or provide a counter-proposal in red-line so that we can continue
`our discussion.
`
`Best,
`
`Ali Dhanani
`Tel: (713) 229-1108
`Cell: (281) 250-2294
`
`
`From: Flynn, Patrick N [mailto:PFlynn@cov.com]
`Sent: Tuesday, January 26, 2016 8:04 PM
`To: Dhanani, Ali; Hughes v Elbit; patrickclutter@potterminton.com; johnbufe@potterminton.com; EXT Jones,
`Mike
`Cc: wh@wsfirm.com; claire@wsfirm.com; Elbit-Hughes
`Subject: Elbit v. Hughes
`
`Counsel,
`
`Please see the attached letter.
`
`Regards,
`-Patrick
`
`
`Patrick Flynn
`
`Covington & Burling LLP
`333 Twin Dolphin Drive, Suite 700
`Redwood Shores, CA 94065-1418
`T +1 650 632 4732 | pflynn@cov.com
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`Case 2:15-cv-00037-RWS Document 87-10 Filed 02/05/16 Page 5 of 5 PageID #: 2144
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`www.cov.com
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`4
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