Eagle View Technologies, Inc. et al v. Xactware Solutions, Inc. et al

BRIEF in Opposition

D.N.J.February 21, 2017

ME1 24200030v.1 Scott S. Christie Matthew A. Sklar Ravin R. Patel Olga Ugolev MCCARTER & ENGLISH, LLP Four Gateway Center 100 Mulberry Street Newark, New Jersey 07102 Phone: (973) 848-5388 Fax: (973) 297-3981 Lee Carl Bromberg Brian J. Larivee Thomas R. Fulford MCCARTER & ENGLISH, LLP 265 Franklin St. Boston, Massachusetts 02110 Phone: (617) 449-6500 Fax: (617) 607-9200 Counsel for Defendants Xactware Solutions, Inc. and Verisk Analytics, Inc. IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY EAGLE VIEW TECHNOLOGIES, INC. and PICTOMETRY INTERNATIONAL CORP., Plaintiffs, Civil Action No. 15-cv-07025-RBK-JS v. XACTWARE SOLUTIONS, INC. and VERISK ANALYTICS, INC., Defendants. DEFENDANTS XACTWARE SOLUTIONS, INC.’S AND VERISK ANALYTICS, INC.’S OPPOSITION TO PLAINTIFFS’ MOTION TO COMPEL DEPOSITION ON INFRINGEMENT TOPICS Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 1 of 29 PageID: 8485 i ME1 24200030v.1 TABLE OF CONTENTS INTRODUCTION ..................................................................................................... 1 FACTUAL BACKGROUND .................................................................................... 3 A. Plaintiffs Failed to Provide Local-Rule-Compliant Contentions During the Opening of the Case at the Beginning of Discovery ............................................................... 3 B. Defendants Continued to Demand Local-Rule-Compliant Infringement Contentions after the Partial Stay on Depositions was Lifted ................................................................. 5 C. Despite Defendants’ Repeated Requests, Plaintiffs Steadfastly Refused to Supplement their Contentions ................. 6 D. Plaintiffs Recently Admitted that they still have not Confirmed their Infringement Theories ....................................... 7 ARGUMENT ............................................................................................................. 9 I. The Purpose of the Local Patent Rules Is Undermined by Plaintiffs’ Refusal to Immediately Correct Deficient Infringement Contentions ...................................................................................... 10 II. Plaintiffs are not Entitled to a Rule 30(b)(6) Deposition until they Submit Contentions that Comply with Local Patent Rule 3.1 ........ 13 III. It Is Impossible for Defendants to Adequately Prepare a Witness for Deposition Regarding Infringement-Related Topics When, by their Own Admission, Plaintiffs’ Infringement Theories Are in Flux ....................................................................................... 19 IV. Plaintiffs’ Allegations of Delay are Baseless and they should not be Rewarded for their Stonewalling .................................................... 22 CONCLUSION ........................................................................................................ 24 Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 2 of 29 PageID: 8486 ii ME1 24200030v.1 TABLE OF AUTHORITIES Page(s) FEDERAL CASES Bender v. Maxim Integrated Prods., Inc., No. C 09-01152 SI, 2010 WL 1135762 (N.D. Cal. Mar. 22, 2010) ................... 17 Digital Reg of Texas, LLC v. Adobe Sys. Inc., No. CV 12-01971-CW (KAW), 2013 WL 3361241 (N.D. Cal. July 3, 2013) ................................................................................................................... 11 Droplets, Inc. v. Amazon.com, Inc., No. 12-3733, 2013 WL 1563256 (N.D. Cal. Apr. 12, 2013) ............................. 11 Finjan, Inc. v. Proofpoint Inc., No. 13-cv-05808-HSG, 2015 WL 1517920 (N.D. Cal. Apr. 2, 2015) ............... 11 Genentech, Inc. v. Trustees of Univ. of Pa., NO. C 10-02037 LHK (PSG), 2011 WL 488825 (N.D. Cal. July 27, 2011) ................................................................................................................... 16 Genentech, Inc. v. Trustees of Univ. of Pa., NO. C 10-02037 LHK (PSG), 2011 WL 7074208 (N.D. Cal. June 10, 2011) ............................................................................................................. 16, 17 Geovector Corp. v. Samsung Elecs. Co., No. 16-02463, 2017 WL 76950 (N.D. Cal. Jan. 9, 2017) .................................. 18 Horizon Pharma. AG v. Watson Labs., Inc., No. 13-5124, 2015 WL 12850575 (D.N.J. Feb. 24, 2015) (Schneider, J.) ............ ....................................................................................................................... 11, 13 Implicit Networks Inc. v. Hewlett-Packard Co., No. C 10-03746 SI, 2011 WL 3954809 (N.D. Cal. Sept. 7, 2011) .............. 14, 15 Infineon Techs. v. Volterra Semiconductor, No. C 11-06239 MMC (DMR), 2013 WL 322570 (N.D. Cal. Jan 28, 2013) ................................................................................................................... 18 Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 3 of 29 PageID: 8487 iii ME1 24200030v.1 InterTrust Techs. Corp. v. Microsoft Corp., No. C 01-1640 SBA, 2003 WL 23120174 ............................................................................................................. 18 King Pharm., Inc. v. Sandoz Inc., 2010 WL 2015258 (D.N.J. May 20, 2010) ......................................................... 11 Network Caching Tech., LLC v. Novell, Inc., No. C-01-2079-VRW, 2002 WL 32126128 (N.D. Cal. Aug. 13, 2002) ............ 18 Shared Memory Graphics LLC v. Apple, Inc., 812 F. Supp. 2d 1022 (N.D. Cal. 2010) ............................................ 15, 16, 18, 22 Tessenderlo Kerley, Inc. v. OR-Cal, Inc., No. C 11-04100 WHA, 2012 WL 1253178 (N.D. Cal. Apr. 13, 2012) ............. 18 TFH Publ’ns, Inc. v. Doskocil Mfg. Co., 705 F. Supp. 2d 361 (D.N.J. 2010) ............................................................... 11, 13 Theranos, Inc. v. Fuisz Pharma LLC, No. 11-cv-05236-YGR, 2012 WL 6000798 (N.D. Cal. Nov. 30, 2012) ...... 14, 18 Voxpath RS, LLC v. LG Elecs. U.S.A., Inc., No. 2:12-cv-952, 2012 WL 5818143 (D.N.J. Nov. 14, 2012) .......... 10, 11, 13, 19 STATE CASES GN Resound A/S v. Callpod, Inc., No. C 11-04673 SBA, 2013 WL 1190651, at *4 (N.D. Cal. Mar. 21, 2013) ................................................................................................................... 11 FEDERAL STATUTES 35 U.S.C. § 101 .................................................................................................. 4, 5, 6 RULES Rule 3.1 ........................................................................................................ 13, 15, 18 Rule 3.1(c) ................................................................................................................ 22 Rule 30(b)(6) ................................................................... 1, 2, 7, 9, 13, 14, 15, 20, 23 Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 4 of 29 PageID: 8488 ME1 24200030v.1 INTRODUCTION Plaintiffs Eagle View Technologies, Inc. and Pictometry International Corp. (collectively, “Plaintiffs”) seek to compel a Rule 30(b)(6) deposition because after nearly a year-and-a-half of litigation and access to the products, documents, and sensitive source code of Defendants Xactware Solutions, Inc., and Verisk Analytics, Inc. (“Defendants”), they still do not know what, precisely, their infringement theories are. Counsel for Plaintiffs admitted as much, stating that Plaintiffs still “need to confirm [their] thinking on infringement.” Christie Decl. ¶ 3. Plaintiffs’ shocking admission came in the context of Defendants’ reasonable request for infringement contentions that comply with L. Pat. R. 3.1, the subject of Defendants’ pending motion to compel. See Dkt. No. 159. Defendants made this request before, and in anticipation of, Plaintiffs’ deposition request. Plaintiffs at first stonewalled, then demanded a deposition before they would agree to supplement their contentions. Defendants offered to provide a witness shortly after receiving compliant infringement contentions. Plaintiffs rejected the offer. Plaintiffs admitted that they needed a deposition to “confirm” their infringement theories. After Defendants pointed out the futility of preparing a witness on infringement topics when Plaintiffs themselves admitted that they were not sure of those infringement theories, Plaintiffs simply removed the words “infringement” from some of their Rule 30(b)(6) topics and re-served their Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 5 of 29 PageID: 8489 2 ME1 24200030v.1 deposition notice, apparently conceding Defendants’ point that it was factually and logically impossible to prepare a witness to testify as a witness on Plaintiffs’ infringement theories when Plaintiffs had admitted that they weren’t quite sure what those theories were. Aside from the factual arguments, the Local Patent Rules are clear: Plaintiffs must submit a set of infringement contentions that comply with L. Pat. R. 3.1 before they are entitled to a deposition on infringement contentions. In fact, numerous courts applying L. Pat. R. 3.1 have held that Plaintiffs must supply contentions that comply with the local rules before conducting Rule 30(b)(6) depositions. The reason for such a requirement is self-evident. Not only are Defendants entitled to these contentions under the rules, but they need compliant contentions to properly prepare their witnesses. Plaintiffs have refused this simple request, and all offers to compromise, and their motion to compel boils down to a complaint that Defendants were not successful earlier in the case at getting Plaintiffs to comply with L. Pat. R. 3.1. However, Defendants efforts to work through the meet-and-confer process do not relieve Plaintiffs of their duty to comply with the Local Rules. Plaintiffs should not be rewarded for their stonewalling with a crack at an ambush deposition. Instead, as Defendants have reasonably requested for weeks, Plaintiffs should supply compliant contentions as Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 6 of 29 PageID: 8490 3 ME1 24200030v.1 a prerequisite for a deposition, which will not be withheld once the contentions are supplied. FACTUAL BACKGROUND A. Plaintiffs Failed to Provide Local-Rule-Compliant Contentions During the Opening of the Case at the Beginning of Discovery Plaintiffs filed their complaint on September 23, 2015. Dkt. No. 1. About three months later, on December 23, 2015, Plaintiffs served their original infringement contentions, alleging infringement of nine patents and 153 claims. These contentions did not comply with the Local Patent Rules. Specifically, Plaintiffs’ contentions rely on a “picture book” formula, where Plaintiffs parrot the claim limitation, state that Defendants’ products meet it, and paste in a series of screenshots of Defendants’ operational software. See Dkt. No. 159 at 4-14. The contentions provide no textual explanation of what particular feature of the software Plaintiffs are accusing or why that feature meets the recited claim limitation. Id. In response, Defendants requested a compliant set of infringement contentions, pointed out, patent by patent, the numerous deficiencies in Plaintiffs’ infringement contentions, and explained why Plaintiffs’ contentions failed to comply with L. Pat. R. 3.1. See Ex. A [April 28, 2016 Letter from Christie to Cutri]; see also Ex. B [May 31, 2016 Letter from Christie to Cutri] at 1. Plaintiffs stonewalled and rejected Defendants’ concerns out of hand. Ex. C [May 5, 2016 Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 7 of 29 PageID: 8491 4 ME1 24200030v.1 Letter from Cutri to Christie] at 1 (asserting Plaintiffs’ contentions “more than sufficient”). The Parties exchanged letters and conducted a meet and confer session on the issue, but Plaintiffs continued to refuse to correct their deficient contentions. Ex. D [May 7, 2016 Letter from Christie to Cutri] at 3-4. After Plaintiffs’ stonewalling and repeated refusals to fix their deficient contentions, Defendants forged ahead as best as they could while explicitly noting that Plaintiffs remained obligated to provide infringement contentions that comply with L. Pat. R. 3.1. Ex. C [May 31, 2016 Letter from Christie to Cutri] at 1-2. However, with the potential that the case would soon be resolved by Defendants’ § 101 motion or inter partes review proceedings, Defendants temporarily tabled the issue, but reserved the right to take additional action as necessary, including filing a motion to compel additional detail or to strike late-disclosed infringement theories. Id. Moreover, the Court stayed depositions pending the outcome of Defendants’ motion to dismiss under 35 U.S.C. § 101. See Dkt. No. 75. In the interim, Defendants diligently responded to interrogatories and produced documents, source code, and operational software. In September 2016, Plaintiffs added new accused products to their infringement contentions, greatly expanding the scope of the case nine months after serving their initial contentions. Plaintiffs also added confusing “and/or” language identifying myriad combinations of accused products. See Dkt. 132 Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 8 of 29 PageID: 8492 5 ME1 24200030v.1 [Defs’ Opp. to Plfs’ Mtn. to Amend] at 3-5. Defendants opposed Plaintiffs’ motion to amend to add new accused products on the grounds that Plaintiffs were not diligent in pursuing their theories. See id. at 17-24. Ultimately, the Court granted Plaintiffs’ motion to add new accused products, but required Plaintiffs to clear up the confusion about the use of “and/or” combinations. But Plaintiffs’ infringement contentions for all Accused Products remained deficient, relying on their “picture book” formula and devoid of any explanatory text or analysis. Defendants had hoped, in vain, that Plaintiffs would use the amendment process to bring their deficient contentions into compliance with the Local Patent Rules. B. Defendants Continued to Demand Local-Rule-Compliant Infringement Contentions after the Partial Stay on Depositions Was Lifted In December 2016, the Court denied Defendants’ motion to stay pending resolution of the related inter partes review proceedings, thus lifting the partial stay on fact witness deposition discovery. See Dkt. No. 150. Thereafter, and weeks before Plaintiffs served any deposition notices, Defendants attempted once again to prompt Plaintiffs to comply with the Local Patent Rules. See Ex. E [Jan. 4, 2017 Letter from Bromberg to Alper]. Plaintiffs maintained that their contentions already complied with the Local Patent Rules, but stated that Plaintiffs would not object to supplying more detailed contentions at some undefined point in the future. Ex. F [Jan. 7, 2017 Letter from Brown to Bromberg]. Nevertheless, Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 9 of 29 PageID: 8493 6 ME1 24200030v.1 Plaintiffs never raised the issue of requiring a deposition to supplement their preliminary infringement contentions. Id. C. Despite Defendants’ Repeated Requests, Plaintiffs Steadfastly Refused to Supplement their Contentions During a January 10, 2017 meet and confer session, Plaintiffs shifted positions yet again, reasserting that their current infringement contentions were sufficient and rejecting Defendants’ proposed plan for a limited test-amendment of just one claim chart to see if the Parties could agree on what would constitute sufficient detail. See Ex. G [Jan. 11, 2017 Letter from Bromberg to Cutri] at 1. Plaintiffs were unable to confirm not only when, but even whether, they would provide amended contentions at all. Id. Given the confusion caused by Plaintiffs’ shifting positions, Defendants requested that Plaintiffs confirm whether they intended to amend their contentions and what specific timeline they proposed for making such amendments. Id. Plaintiffs responded, but gave no concrete timeline for when any potential amendments would be made. Instead, for the first time on January 20, 2017, Plaintiffs demanded that, notwithstanding their access to Defendants’ software, source code, and documents, they be permitted to take depositions to determine their infringement positions for their deficient preliminary infringement contentions before supplementing those contentions. See Ex. H [Jan. 20, 2017 Letter from Brown to Bromberg]. Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 10 of 29 PageID: 8494 7 ME1 24200030v.1 Defendants again requested that Plaintiffs update their infringement contentions, this time by February 7, 2017, over a year after they filed their original infringement contentions. Ex. I [Jan. 24, 2017 Letter from Bromberg to Brown]. Plaintiffs refused to do so. D. Plaintiffs Recently Admitted that they still Have Not Confirmed their Infringement Theories On January 25, 2017, during a meet and confer session, Plaintiffs conceded that, in spite of access to Defendants’ documents, products, and source code, Plaintiffs needed to “confirm [their] thinking on their infringement theories” through Rule 30(b)(6) depositions before providing contentions that comply with L. Pat. R. 3.1. Christie Decl. ¶ 3. During that discussion, Plaintiffs rejected Defendants’ request to amend the deficient contentions in advance of taking depositions, which is necessary for Defendants to be able to adequately prepare their Rule 30(b)(6) witnesses, and instead continued to demand a Rule 30(b)(6) witness on infringement-related topics. See Ex. J [Jan. 26, 2017 Letter from Bromberg to Cutri]. Plaintiffs thereafter served a first, second, and third notice of deposition simultaneously, improperly grouping both Defendants together, and setting forth, in the “Third Notice,” multiple topics relating to or specifically reciting the term "infringement.” See Ex. K to Christie Decl. [Plaintiffs’ Jan. 24, 2017 Third Dep. Notice], Attach. B, at 1-2. For example, the very first topic states, “[a]ll facts, Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 11 of 29 PageID: 8495 8 ME1 24200030v.1 theories, and arguments underlying any contention by Defendants that any Accused Product does not infringe any Asserted Claim.” After Plaintiffs’ admission that their infringement theories were still subject to “confirm[ation],” Defendants wrote Plaintiffs about the futility of preparing a witness on infringement theories that were up in the air: [W]e now understand that it is Plaintiffs position that they ‘need to confirm [their] thinking on infringement’ via deposition before they are able to provide infringement contentions that comply with L. Pat. R. 3.1. . . . [Y]our admission underscores the futility of conducting a Rule 30(b)(6) deposition on alleged infringement issues before we receive your updated contentions. Several of Plaintiffs’ topics request that Defendants prepare a witness to testify on alleged infringement and noninfringement issues. See, e.g., Plaintiffs’ Third Notice of Deposition at topics 1, 6, 7, 8. A clear statement of Plaintiffs’ infringement theories is a necessary predicate to preparing a witness to testify on these topics. Given that you have now admitted that Plaintiffs still ‘need to confirm [their] thinking’ on their infringement contentions, and that Plaintiffs' infringement theories are therefore in flux, it is factually and logically impossible for Defendants to adequately prepare a witness to testify on these topics. 1 See Ex. J [Jan. 26, 2017 Letter from Bromberg to Cutri] (emphasis added). 1 Plaintiffs’ motion frequently, and selectively, quotes the part of the letter stating that it is “factually and logically impossible for Defendants to adequately prepare a witness,” while failing to identify the context in which the statement was made. Defendants’ statement was made because it is factually and legally impossible for Defendants to prepare a witness on infringement topics, when Plaintiffs have admitted that they do not know with certainty what their infringement theories are. Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 12 of 29 PageID: 8496 9 ME1 24200030v.1 Plaintiffs apparently agreed with Defendants’ logic. After receipt of the January 26, 2017 letter, Plaintiffs then amended their deposition notice, tellingly dropping the word “infringement” from the topics. See Ex. L to Christie Decl. [Plaintiffs’ Jan. 29, 2017 Am. 1st Dep. Notice], Attach. B, at 1-2. The topics relate exclusively to the operation of the Accused Products but still, undoubtedly, concern Plaintiffs’ vague and unformed infringement theories. ARGUMENT Plaintiffs’ argument proceeds from the flawed premise that their offer to amend their contentions after taking a Rule 30(b)(6) deposition relieves them from complying with the local rules, moots Defendants’ motion to compel contentions, and entitles them to such a deposition. This is wrong for several reasons. First, as described above, Defendants renewed their request for compliant contentions weeks before Plaintiffs requested a deposition to “confirm” their infringement theories. Second, as argued below, courts have repeatedly held that Plaintiffs must submit infringement contentions that comply with L. Pat. R. 3.1 before they are entitled to an infringement-focused deposition. Finally, Defendants need contentions that contain Plaintiffs “confirmed” infringement theories before they can adequately prepare a witness to answer questions as to those infringement theories. Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 13 of 29 PageID: 8497 10 ME1 24200030v.1 I. The Purpose of the Local Patent Rules Is Undermined by Plaintiffs’ Refusal to Immediately Correct Deficient Infringement Contentions Plaintiffs’ demand for a deposition before submitting compliant contentions subverts the purpose of the local rules. The Local Patent Rules are intended to provide parties’ with compliant infringement contentions before depositions begin. See Voxpath RS, LLC v. LG Elecs. U.S.A., Inc., No. 2:12-cv-952 (DMC-MF), 2012 WL 5818143, at *3 (D.N.J. Nov. 14, 2012) (quoting TFH Publ’ns, Inc. v. Doskocil Mfg. Co., 705 F. Supp. 2d 361, 366 (D.N.J. 2010)) (stating local patent rules “exist to further the goal of full, timely discovery and provide all parties with adequate notice and information with which to litigate their cases”). Early in the case, and, in any event, before depositions begin, “the party alleging infringement must, in accordance with the Local Patent Rules, provide infringement contentions which include as specific identification as possible of the accused product, device, or instrumentality and identify each method or process which, when used, allegedly results in the practice of the claimed method or process.” Voxpath, 2012 WL 5818143, at *5. Plaintiffs must provide “a chart mapping out where ‘each infringing product (identified by model number) contains each element of the claim it infringes.’” Id. (quoting Int’l Dev. LLC v. Richmond, No. 09-2495 (GEB), 2011 WL 149859, at *2 n.1 (D.N.J. Jan. 18, 2011)). As Defendants have explained in their co-pending motion to compel compliant contentions, Plaintiffs’ infringement contentions do not meet the Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 14 of 29 PageID: 8498 11 ME1 24200030v.1 requirement of L. Pat. R. 3.1 to adequately explain their theories of infringement. Courts have interpreted their identical versions of L. Pat. R. 3.1 to require plaintiffs to provide textual analysis explaining their theory of infringement, not merely reproduced claim language and unannotated screenshots. 2 See, e.g., Droplets, Inc. v. Amazon.com, Inc., No. 12-3733, 2013 WL 1563256, at *3 (N.D. Cal. Apr. 12, 2013) (holding that claim charts merely parroting claim language and providing unexplained screenshots are deficient and compelling supplemental contentions with greater detail); Digital Reg of Texas, LLC v. Adobe Sys. Inc., No. CV 12- 01971-CW (KAW), 2013 WL 3361241, at *3-4 (N.D. Cal. July 3, 2013) (same); Finjan, Inc. v. Proofpoint Inc., No. 13-cv-05808-HSG, 2015 WL 1517920, at *6 (N.D. Cal. Apr. 2, 2015) (holding that reciting claim language and referencing screenshots was insufficient and compelling more detailed infringement contentions); GN Resound A/S v. Callpod, Inc., No. C 11-04673 SBA, 2013 WL 1190651, at *4 (N.D. Cal. Mar. 21, 2013) (holding that plaintiff cannot direct 2 The District of New Jersey’s Local Patent Rules were adopted from those of the Northern District of California and the Eastern District of Texas, and thus it is appropriate to rely upon decisions from those districts on issues regarding infringement contentions. See, e.g., Voxpath, 2012 WL 5818143, at *3 n.3; see also TFH Publ’ns, 705 F. Supp. 2d at 365 n.3 (explaining because D.N.J. and E.D. Tex. local rules “adopted verbatim” from N.D. Cal., it is “appropriate to look to cases from those districts for guidance”); King Pharm., Inc. v. Sandoz Inc., 2010 WL 2015258, at *4 n.1 (D.N.J. May 20, 2010) (same); see also Horizon Pharma. AG v. Watson Labs., Inc., No. 13-5124, 2015 WL 12850575, at *3-4 (D.N.J. Feb. 24, 2015) (Schneider, J.) (citing multiple cases from N.D. Cal. while applying D.N.J.’s local rules in context of amending contentions). Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 15 of 29 PageID: 8499 12 ME1 24200030v.1 defendant to video without describing how content supports its infringement contention, striking current contentions, and compelling more detailed ones). Plaintiffs have failed to live up to this standard. The root of the parties’ current disagreement appears to be Plaintiffs’ desire to continue to flaunt the local rules in order to conduct an ambush deposition without disclosing adequate infringement contentions. Plaintiffs’ claim to have “promptly agreed to provide” supplemental contentions could not be further from the truth. See Plf. Br. at 1. First, Defendants initially raised concerns about the numerous deficiencies in Plaintiffs’ claim charts almost a year ago, in April 2016, but Plaintiffs have repeatedly refused Defendants’ requests for corrective supplemental contentions since that time. Moreover, even Plaintiffs’ current “agreement” is subject to a major condition: Plaintiffs will not provide any supplemental contentions until they are allowed to depose Defendants’ technical witnesses on topics relating to the very allegations of infringement Plaintiffs refuse to clarify. In fact, Plaintiffs have stated that the purpose of their proposed deposition is to “confirm [their] thinking” on infringement theories. Christie Decl. ¶ 3. In other words, Plaintiffs admitted that they have yet to crystallize their infringement theories. Defendants pointed out this admission in their co-pending motion to compel infringement contentions, see Dkt. Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 16 of 29 PageID: 8500 13 ME1 24200030v.1 159 at 2, 17; Dkt. 159-1 at ¶ 3, and Plaintiffs offered no response, effectively conceding the point. See Dkt. 183. To allow Plaintiffs to hold local-rule-compliant infringement contentions hostage until they extract their ransom of deposition testimony would undermine a central aim of the Local Patent Rules: providing theories of infringement before depositions to prevent litigation by ambush. The rules are not meant to be used as a tool to obfuscate infringement positions as long as possible, as Plaintiffs are trying to do, but rather “exist to further the goal of full, timely discovery.” See Voxpath, 2012 WL 5818143, at *3. And contrary to the rules’ goal to “provide all parties with adequate notice and information” and have Plaintiffs “crystallize their theories of the case early,” Plaintiffs instead are trying to leverage their failure to provide notice and articulate their theories to extract deposition testimony and belatedly shift their theories. See id.; TFH Publ’ns, 705 F. Supp. 2d at 365; Horizon Pharma, 2015 WL 12850575, at *3-4. Simply put, if Plaintiffs are permitted to take deposition testimony on infringement-related topics without fully disclosing their “confirmed” infringement theories, the Local Rules’ goals of providing clarity, adequate notice, and information are completely defeated. II. Plaintiffs Are Not Entitled to a Rule 30(b)(6) Deposition until they Submit Contentions that Comply with Local Patent Rule 3.1 Courts applying local rules identical to L. Pat. R. 3.1 have rejected demands for technical depositions under circumstances virtually identical to those present Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 17 of 29 PageID: 8501 14 ME1 24200030v.1 here. Specifically, by “offering to amend [their] Contentions only after discovery has occurred,” Plaintiffs are “attempting to ignore their obligations and shift the burden to” Defendants. See Theranos, Inc. v. Fuisz Pharma LLC, No. 11-cv- 05236-YGR, 2012 WL 6000798, at *6 (N.D. Cal. Nov. 30, 2012). “Such tactic is improper.” Id. (emphasis added). Contrary to Plaintiffs’ assertion in their brief, the substantial weight of legal authority supports Defendants’ position that Plaintiffs must serve local-rule-compliant infringement contentions before proceeding with depositions related to infringement issues. Courts enforcing their local equivalent of L. Pat. R. 3.1 routinely require plaintiffs to cure deficiencies in their infringement contentions before moving ahead with technical depositions. For example, in Implicit Networks, the district court found the plaintiff’s infringement contentions were deficient with respect to certain products and, as a result, denied in part the plaintiff’s motion to compel infringement-related discovery, and instead issued a stay of the defendant’s discovery obligations with respect those products. 3 See Implicit Networks Inc. v. Hewlett-Packard Co., No. C 10-03746 SI, 2011 WL 3954809, at *3-4 (N.D. Cal. Sept. 7, 2011). The plaintiff’s 3 To be clear, Defendants here are not seeking a stay of all discovery or to alter deadlines. In fact, Defendants are moving forward and providing individual and Rule 30(b)(6) depositions on non-technical topics. If Plaintiffs had provided compliant contentions in early January, as Defendants’ had requested, the deposition they are seeking would have either already occurred or, at least, proceeded on the schedule. Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 18 of 29 PageID: 8502 15 ME1 24200030v.1 infringement contentions in Implicit Networks were more substantive than Plaintiffs’ contentions here in that they actually provided narrative explanations of the infringement theories, but, even still, the court held that they lacked sufficient specificity and left the defendant “without a fair notice of [the plaintiff’s] infringement theory.” Id. at *3. 4 Noting that “[c]ourts in this district have agreed to stay a patent defendant’s otherwise applicable discovery obligations in light of deficient infringement contentions,” the court denied the plaintiff’s motion to compel discovery, including a 30(b)(6) deponent. Id. at *4 (emphasis added). The court ordered the plaintiff to amend its infringement contentions before it could take a technical deposition. Id. Implicit Networks makes clear that adequate infringement contentions compliant with the local rules are, in fact, a prerequisite to obtaining infringement-related deposition and Rule 30(b)(6) testimony. Similarly, in Shared Memory Graphics, the district court stayed the defendants’ discovery obligations and granted their motion to compel supplemental infringement contentions, finding that the plaintiff’s “disclosure falls short of the level of specificity required by Local Rule 3-1.” See Shared Memory Graphics LLC v. Apple, Inc., 812 F. Supp. 2d 1022, 1025-26 (N.D. Cal. 2010). Similar to Plaintiffs’ claim charts here, the plaintiff in Shared Memory Graphics failed to 4 Moreover, as Plaintiffs have improperly attempted here, the Implicit court held that the plaintiff “cannot simply recite the doctrine of equivalents in its cover pleading to its claim charts without providing specific analysis, on an element-by- element basis.” Id. Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 19 of 29 PageID: 8503 16 ME1 24200030v.1 specifically identify what structures in the defendants’ products allegedly met certain claim limitations, and thus the court held that the infringement contentions were “too vague to provide fair notice as to what components and circuitry of the accused products infringe” the plaintiff’s patents. Id. The court noted that “[r]ather than provide a meaningful description of its theories, [the plaintiff’s] vague contentions and conclusory statements invite Defendants and the Court merely to assume the presence of a data distribution bus,” the unaddressed claim limitation. Id. The Shared Memory Graphics court, in finding the plaintiff’s claim charts deficient and staying discovery until they were fixed, recognized that a defendant should not be forced to provide infringement-related discovery until the plaintiff has provided infringement contentions that comply with the local rules. The sole case Plaintiffs offer to support their motion—Genentech, Inc. v. Trustees of Univ. of Pa., NO. C 10-02037 LHK (PSG), 2011 WL 7074208, at *1-2 (N.D. Cal. June 10, 2011)—is inapposite. In Genentech, unlike this case, the parties were not disputing the overall, fundamental sufficiency of notice provided by the infringement contentions, and there was no suggestion that the contentions failed, overall, to provide adequate notice of the infringement theories. Instead, the infringement contentions in Genentech were challenged merely for relying on certain outdated arguments that did not reflect the district judge’s then-recently- issued claim constructions. See Genentech, Inc. v. Trustees of Univ. of Pa., NO. C Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 20 of 29 PageID: 8504 17 ME1 24200030v.1 10-02037 LHK (PSG), 2011 WL 488825, at *1 (N.D. Cal. July 27, 2011). In contrast to Genentech, where the court noted that it was not enough that fact witnesses might merely be “better prepared” to testify with updated contentions in hand, see 2011 WL 7074208, at *1, in the present case, it is impossible for Defendants’ witnesses to adequately prepare for an infringement-related deposition given that Plaintiffs themselves have admitted they still need to “confirm [their] thinking” on infringement theories. See Christie Decl. ¶ 3. While Plaintiffs argue that their infringement contentions would not change the facts of how Defendants’ products work, Plf. Br. at 10, the pervasive deficiencies in those contentions leave Defendants without notice of what specific aspects or functionality of Defendants’ products are even accused of infringement, never mind how they meet each claim limitation. Furthermore, the Genentech decision, Plaintiffs’ sole legal support for their motion, is directly contrary to the overwhelming weight of authority from the very same district. Specifically, most courts in the Northern District of California have departed from the reasoning of Genentech and held that it is entirely appropriate to force plaintiffs to provide local-rule-compliant infringement contentions before allowing a deposition on infringement topics. See, e.g., Bender v. Maxim Integrated Prods., Inc., No. C 09-01152 SI, 2010 WL 1135762, at *2 (N.D. Cal. Mar. 22, 2010) (holding “[u]ntil plaintiff meets the burden of providing Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 21 of 29 PageID: 8505 18 ME1 24200030v.1 infringement contentions compliant with Patent L.R. 3-1, the Court will not order the defendant to proceed with discovery”); Shared Memory Graphics LLC v. Apple Inc., No. C-10-02475 MMC (JSC), 2011 WL 3878388, at *7-8 (extending stay of discovery due to plaintiff’s failure to cure deficient contentions); Geovector Corp. v. Samsung Elecs. Co., No. 16-02463, 2017 WL 76950 at *8 (N.D. Cal. Jan. 9, 2017) (stating “[w]hen a plaintiff’s infringement contentions are insufficient to meet the requirements of the Patent Local Rules, courts in this district often stay discovery”); Theranos, 2012 WL 6000798, at *7 (staying discovery until plaintiff serves revised infringement contentions); InterTrust Techs. Corp. v. Microsoft Corp., No. C 01-1640 SBA, 2003 WL 23120174, at *3-4 (N.D. Cal. Dec. 1, 2003) (same); Network Caching Tech., LLC v. Novell, Inc., No. C-01-2079-VRW, 2002 WL 32126128, at *6-7 (N.D. Cal. Aug. 13, 2002) (same); Tessenderlo Kerley, Inc. v. OR-Cal, Inc., No. C 11-04100 WHA, 2012 WL 1253178, at *6 (N.D. Cal. Apr. 13, 2012) (extending deadlines after service of amended infringement contentions); Infineon Techs. v. Volterra Semiconductor, No. C 11-06239 MMC (DMR), 2013 WL 322570, at *5 (N.D. Cal. Jan 28, 2013) (noting “[c]ourts generally stay a patent defendant’s discovery obligations” until plaintiff provides compliant infringement contentions). Thus, plaintiffs’ sole legal support for its motion is not only distinguishable, but contrary to the vast weight of authority from the same district. Moreover, in contrast to the complete stay of discovery granted in many Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 22 of 29 PageID: 8506 19 ME1 24200030v.1 of the above cases, Defendants are not seeking a stay of discovery or of all depositions here. Instead, Defendants are merely requesting a compliant set of infringement contentions before conducting technical depositions. III. It Is Impossible for Defendants to Adequately Prepare a Witness for Deposition Regarding Infringement-Related Topics When, by their Own Admission, Plaintiffs’ Infringement Theories Are in Flux On January 25, 2017, the Parties engaged in a meet-and-confer session regarding Defendants’ co-pending motion to compel compliant infringement contentions. During that session, Plaintiffs again refused to provide compliant infringement contentions and made a decisive admission. Plaintiffs’ counsel, stated that, notwithstanding access to hundreds of thousands of Defendants’ confidential documents, operational versions of the Accused Products, and millions of lines source code, Plaintiffs needed to conduct depositions in order to “confirm [their] thinking” on their infringement theories before they could provide amended infringement contentions. Christie Decl. ¶ 3. This admission, after almost a year and a half of litigation, is stunning. Defendants cited this admission in support of its co-pending motion to compel. Dkt. 159 at 2, 17. In its opposition to that motion, Plaintiffs’ offered no dispute or explanation. If Plaintiffs’ infringement theories are still subject to confirmation, they are, by definition, not the “crystallize[d]” theories required by the local rules. See Voxpath, 2012 WL 5818143, at *7. As Defendants explained to Plaintiffs, if Plaintiffs still need to Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 23 of 29 PageID: 8507 20 ME1 24200030v.1 “confirm [their] thinking” on their infringement theories, Plaintiffs’ infringement theories remain subject to material change. Under those circumstances, it is factually and logically impossible for Defendants to adequately prepare a witness to testify as to Plaintiffs’ infringement theories. Plaintiffs conduct demonstrates that they impliedly agreed with Defendants’ reasoning, or at least had no reason to dispute Defendants’ logic. Plaintiffs first served a Rule 30(b)(6) deposition notice and specifically sought testimony on topics referencing “infringement.” Plaintiffs’ counsel then admitted that Plaintiffs needed to conduct depositions in order to “confirm [their] thinking” on their infringement theories. Christie Decl. ¶ 3. Next, Defendants pointed out the futility of preparing a witness on infringement theories, when, by Plaintiffs’ counsel’s own admission, Plaintiffs were not sure what those theories were. Ex. J, [Jan. 26, 2017 Letter from Bromberg to Cutri]. Three days later, Plaintiffs withdrew their Rule 30(b)(6) deposition notice and issued a new notice devoid of the word “infringement,” a cosmetic fix attempting to mask a fundamental problem. The deposition topics that are subject to Plaintiffs’ motion nevertheless still fundamentally relate to Plaintiffs’ infringement theories. Regardless of the terminology used in the current iteration of Plaintiffs’ deposition notice, Plaintiffs’ conduct and admission point to Defendants’ primal concern: If Plaintiffs’ counsel’s admission is true—and Plaintiffs made no effort in Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 24 of 29 PageID: 8508 21 ME1 24200030v.1 their opposition to Defendants’ co-pending motion to compel to rebut it—it means that after nearly a year and a half of litigation, access to Defendants’ products, source code, and highly confidential documents, Plaintiffs are unable to articulate a theory of infringement that complies with the local rules. At best for Plaintiffs, they are merely unwilling to articulate a theory of infringement that complies with the local rules. In either case, it is long past due for Plaintiffs to lay their cards on the table and provide local-rule-complaint infringement contentions. If Plaintiffs are merely unwilling to articulate their infringement theory until after a deposition, then their purpose in compelling this deposition is to ambush Defendants’ witnesses with as yet undisclosed theories or evidence. To wit, Plaintiffs claim that “Eagle View is able to [provide, inter alia, citations to source code and other internal technical documentation].” Dkt. 173 at 6-7 (emphasis added, bracketed material quoted from Plaintiffs’ preceding sentence). The nub of the problem is that Plaintiffs’ current infringement contentions provide not a single citation to source code or other internal documents. In other words, Plaintiffs have asserted in their brief to this Court that they believe they have evidence that they intend to rely on in their infringement contentions that they refuse to share prior to a deposition. 5 5 Defendants’ co-pending motion to compel seeks Plaintiffs’ textual analysis, rather than mere recitations of claim language and screen shots. Should Plaintiffs eventually amend their contentions to add not just the requested analysis, but also Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 25 of 29 PageID: 8509 22 ME1 24200030v.1 Plaintiffs have it backwards: local-rule-compliant infringement contentions come first, early in the case, before a patent plaintiff is entitled to corresponding deposition discovery. See, e.g., Shared Memory Graphics, 2011 WL 3878388, at *7 (explaining local-rule-compliant contentions required early in case, “generally before discovery has commenced,” and that courts “routinely stay discovery until the plaintiff has met its Rule 3.1(c) obligations”). If the situation were otherwise, literally every patent plaintiff would demand 30(b)(6) depositions right out of the gate, at the start of the case, before ever serving preliminary infringement contentions. Ultimately, the Court must reject Plaintiffs’ ambush tactics by denying their motion to compel and ordering that Plaintiffs provide local-rule- compliant infringement contentions before being allowed to depose Defendants’ technical witnesses on infringement-related topics. IV. Plaintiffs’ Allegations of Delay are Baseless and they should not be Rewarded for their Stonewalling Plaintiffs incorrectly argue that Defendants are “obstructing” them, and that the demand for compliant contentions is merely a delay tactic. First, it is Plaintiffs’ burden to comply with the local rules for infringement contentions. citations to Defendants’ source code, Plaintiffs’ assertion that it is able, but unwilling, to cite source code raises the issue of whether Plaintiffs were diligent in pursuing their theories and amending their contentions. As of February 7, 2017, the date of Plaintiffs’ brief admitting that they had undisclosed evidence, Plaintiffs had not visited the secure computer housing Defendants’ source code in over four months. Ex. M [Source Code Log]. Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 26 of 29 PageID: 8510 23 ME1 24200030v.1 Defendants sought Plaintiffs’ compliance with those rules through discovery correspondence and the meet-and-confer process. Rather than comply, Plaintiffs simply stonewalled, forcing Defendants to bring the co-pending motion to compel contentions. In fact, if Plaintiffs had provided the compliant contentions in January or early February, Plaintiffs likely would have had the deposition they now seek by the time the Court decides this motion. Plaintiffs’ real motives in seeking to compel this deposition, as revealed by their own admissions, is that they are unable or unwilling to provide compliant contentions. See Christie Decl. ¶ 3; Dkt. 183. In the interim, Defendants are moving ahead with providing witnesses for depositions on non-technical topics and otherwise meeting their discovery obligations. Any delay here is caused by Plaintiffs’ failure to comply with the local rules for contentions. Likewise, Plaintiffs’ claims that Defendants failed to meet and confer are flatly false. In fact, Defendants met and conferred with Plaintiffs on this topic as far back as May 6, 2016. Faced with Plaintiffs’ intransigence, Defendants reserved the right to raise the issue again and did so. The Parties met and conferred on January 10, 2017, and a final time on January 25, 2017. As noted above, Defendants sought compliant contentions weeks before Plaintiffs sought the Rule 30(b)(6) deposition. Each of these meet-and-confer sessions were confirmed in Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 27 of 29 PageID: 8511 24 ME1 24200030v.1 writing, and Plaintiffs attested that they were unwilling to provide compliant contentions before Defendants moved to compel contentions. See Exs. G & J. CONCLUSION For the foregoing reasons, Defendants respectfully request that the Court deny Plaintiffs’ motion to compel a 30(b)(6) deposition on infringement topics. Dated: February 21, 2017 Respectfully submitted, s/Scott S. Christie Scott S. Christie Matthew A. Sklar Ravin R. Patel Olga Ugolev MCCARTER & ENGLISH, LLP Four Gateway Center 100 Mulberry Street Newark, New Jersey 07102 Phone: (973) 848-5388 Fax: (973) 297-3981 Lee Carl Bromberg Brian J. Larivee Thomas R. Fulford MCCARTER & ENGLISH, LLP 265 Franklin St. Boston, Massachusetts 02110 Phone: (617) 449-6500 Fax: (617) 607-9200 Counsel for Defendants Xactware Solutions, Inc. and Verisk Analytics, Inc. Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 28 of 29 PageID: 8512 25 ME1 24200030v.1 CERTIFICATE OF SERVICE The undersigned hereby certifies that true copies of the foregoing brief and supporting documents were caused to be served on February 21, 2017 via email and/or the ECF system upon all counsel of record. Respectfully submitted, s/ Scott S. Christie Scott S. Christie schristie@mccarter.com MCCARTER & ENGLISH, LLP Four Gateway Center 100 Mulberry Street Newark, NJ 07102 T: 973-622-4444 F: 973-624-7070 Case 1:15-cv-07025-RBK-JS Document 187 Filed 02/21/17 Page 29 of 29 PageID: 8513 ME1 24247217v.1 Scott S. Christie Matthew A. Sklar Ravin R. Patel MCCARTER & ENGLISH, LLP Four Gateway Center 100 Mulberry Street Newark, New Jersey 07102 Phone: (973) 848-5388 Fax: (973) 297-3981 Lee Carl Bromberg Brian J. Larivee Thomas R. Fulford MCCARTER & ENGLISH, LLP 265 Franklin St. Boston, Massachusetts 02110 Phone: (617) 449-6500 Fax: (617) 607-9200 Counsel for Defendants Xactware Solutions, Inc. and Verisk Analytics, Inc. IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY EAGLE VIEW TECHNOLOGIES, INC. and PICTOMETRY INTERNATIONAL CORP., Plaintiffs, Civil Action No. 15-cv-07025-RBK-JS v. XACTWARE SOLUTIONS, INC. and VERISK ANALYTICS, INC., Defendants. DECLARATION OF SCOTT S. CHRISTIE IN SUPPORT OF DEFENDANTS’ OPPOSITION TO PLAINTIFFS’ MOTION TO COMPEL 30(b)(6) DEPOSITION ON INFRINGEMENT TOPICS Case 1:15-cv-07025-RBK-JS Document 187-1 Filed 02/21/17 Page 1 of 4 PageID: 8514 2 ME1 24247217v.1 I, Scott S. Christie, state and declare as follows: 1. I am a partner at the law firm of McCarter & English, LLP, and I am admitted to practice law in the State of New Jersey. 2. I submit this Declaration in support of Defendants’ Xactware Solutions, Inc. and Verisk Analytics, Inc.’s Motion to Compel Amended Infringement Contentions to Comply with Local Patent Rule 3.1. 3. On January 25, 2017, my colleagues and I met and conferred telephonically with counsel for Plaintiffs, including Gianni Cutri of Kirkland & Ellis. Mr. Cutri stated that Plaintiffs were not in a position to amend their contentions because they needed to conduct depositions in order to “confirm [their] thinking” on their infringement theories before providing amended infringement contentions. I expressed my concern that, despite the stage of the case and Defendants’ substantial production of software, source code, and documents, Plaintiffs still could not submit a set of infringement contentions that complied with L.Pat.R. 3.1 and, in fact, were still unsure of their infringement positions. 4. Attached hereto as Exhibit A is a true and correct copy of an April 28, 2016 letter from Scott Christie to Plaintiffs’ counsel, Gianni Cutri. 5. Attached hereto as Exhibit B is a true and correct copy of a May 31, 2016 letter from Scott Christie to Plaintiffs’ counsel, Gianni Cutri. Case 1:15-cv-07025-RBK-JS Document 187-1 Filed 02/21/17 Page 2 of 4 PageID: 8515 3 ME1 24247217v.1 6. Attached hereto as Exhibit C is a true and correct copy of a May 5, 2016 letter from Plaintiffs’ counsel, Gianni Cutri, to Scott Christie. 7. Attached hereto as Exhibit D is a true and correct copy of a May 7, 2016 letter from Scott Christie to Plaintiffs’ counsel, Gianni Cutri. 8. Attached hereto as Exhibit E is a true and correct copy of a January 4, 2017 letter from Lee Bromberg to Plaintiffs’ counsel, Adam Alper. 9. Attached hereto as Exhibit F is a true and correct copy of a January 7, 2017 letter from Plaintiffs’ counsel, Brandon Brown, to Lee Bromberg. 10. Attached hereto as Exhibit G is a true and correct copy of a January 11, 2017 letter from Lee Bromberg to Plaintiffs’ counsel, Gianni Cutri 11. Attached hereto as Exhibit H is a true and correct copy of a January 20, 2017 letter from Plaintiffs’ counsel, Brandon Brown, to Lee Bromberg. 12. Attached hereto as Exhibit I is a true and correct copy of a January 24, 2017 letter from Lee Bromberg to Plaintiffs’ counsel, Brandon Brown. 13. Attached hereto as Exhibit J is a true and correct copy of a January 26, 2017 letter from Lee Bromberg to Plaintiffs’ counsel, Gianni Cutri. 14. Attached hereto as Exhibit K is a true and correct copy of Plaintiffs’ January 24, 2017 Third Notice of Deposition. 15. Attached hereto as Exhibit L is a true and correct copy of Plaintiffs’ January 29, 2017 Amended First Notice of Deposition. Case 1:15-cv-07025-RBK-JS Document 187-1 Filed 02/21/17 Page 3 of 4 PageID: 8516 4 ME1 24247217v.1 16. Attached hereto as Exhibit M is a true and correct copy of the log for entry by Plaintiffs into the source code review room at the Newark office of McCarter & English, LLP, counsel for Defendants. I declare under the penalty of perjury that the foregoing is true and correct. Dated: February 21, 2017 s/Scott S. Christie Scott S. Christie MCCARTER & ENGLISH, LLP Four Gateway Center 100 Mulberry Street Newark, New Jersey 07102 Phone: (973) 848-5388 Fax: (973) 297-3981 Counsel for Defendants Xactware Solutions, Inc. and Verisk Analytics, Inc. Case 1:15-cv-07025-RBK-JS Document 187-1 Filed 02/21/17 Page 4 of 4 PageID: 8517 EXHIBIT A Case 1:15-cv-07025-RBK-JS Document 187-2 Filed 02/21/17 Page 1 of 7 PageID: 8518 ME1 22392241v.3 Scott S. Christie Partner T. 973.848.5388 F. 973.297.3981 schristie@mccarter.com McCarter & English, LLP Four Gateway Center 100 Mulberry Street Newark, NJ 07102-4056 T. 973.622.4444 F. 973.624.7070 www.mccarter.com BOSTON HARTFORD STAMFORD NEW YORK NEWARK EAST BRUNSWICK PHILADELPHIA WILMINGTON WASHINGTON, DC VIA ELECTRONIC MAIL April 28, 2016 Gianni Cutri, Esq. Kirkland & Ellis LLP 300 North LaSalle Chicago, Illinois 60604 Re: Eagle View Technologies, Inc., et al. v. Xactware Solutions, Inc., et al., Civil Action No. 1:15-cv-07025-RBK-JS Dear Mr. Cutri: I write to identify deficiencies in Plaintiffs’ infringement contentions and claim charts. Because of the numerous, serious deficiencies in Plaintiffs’ infringement contentions, and their claim charts in particular, Defendants are unfairly prejudiced and lack adequate notice of Plaintiffs’ theories of infringement. Plaintiffs are obligated by L.Pat.R. 3.1(c) to provide “a chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality.” (emphasis added). Nevertheless, Plaintiffs’ infringement contentions fail to meet this burden. It is not enough for Plaintiffs to merely allege that the accused products infringe; Plaintiffs must identify how they infringe. This deficiency is a pervasive problem with Plaintiffs’ claim charts. Corrected charts, narrowly tailored to the accused products, stating specifically how each infringes each limitation of each asserted claim, are required. The deficiencies identified below are examples only, and are not meant to be an exhaustive list. Lack of identification of any particular asserted claim as deficient is by no means an admission that infringement contentions for that claim are adequate. Defendants reserve their rights to identify additional deficiencies with Plaintiffs’ infringement contentions as the case progresses. GENERAL CONCERNS Reservation of Rights Plaintiffs’ reservation of rights to “modify and supplement” their infringement contentions and claim charts is improper and ineffective. L.Pat.R. 3.7 states that “amendment of any contentions, disclosures, or other documents” . . . Case 1:15-cv-07025-RBK-JS Document 187-2 Filed 02/21/17 Page 2 of 7 PageID: 8519 Gianni Cutri, Esq. April 28, 2016 Page 2 ME1 22392241v.3 “may be made only by order of the Court.” Accordingly, Plaintiffs are required to seek leave of the Court to amend their contentions. Defendants object to any attempt by Plaintiffs to circumvent this rule. Structure and Content of Claim Charts Plaintiffs’ claim charts are little more than recitations of claim language accompanied by unexplained screenshots. No substantive narrative or textual analysis is provided regarding how the content of the various screenshots and, correspondingly, the accused products themselves actually meet each claim limitation. For example, Plaintiffs do not focus on a specific feature or object shown in a screenshot and explain how that feature or object meets the particular limitation in question. Plaintiffs also do not identify a specific component or functionality in the accused products and describe—in their own words—how that component or functionality performs the particular step of the claim. In fact, other than a sentence or two regarding the preambles, the only text appearing in the charts is the claim language itself, quoted after inserting the names of the accused products, and citations to various Bates numbers or URLs. Any “annotations” Plaintiffs refer to are nothing more than arrows over or boxes around certain portions of the screenshots. Defendants are left to guess at Plaintiffs’ specific infringement theories, rendering the contentions seriously deficient and violative of the Local Patent Rules. SPECIFIC DEFICIENCIES ’436 Claim Chart Plaintiffs’ chart is confusing with respect to the memory and module limitations. Plaintiffs must clarify their position and identify what specific functionality they contend meets the memory limitation and what specific functionality meets the module limitation. Plaintiffs wholly fail to identify what “correlate” means, what constitutes “correlating,” or what “the correlation” is. Pages 6-7 are illustrative of the serious deficiency permeating the entire ’436 claim chart for every single claim involving “correlating.” Plaintiffs simply assert that the accused products “correlate,” but Plaintiffs do not say how they do so, or even what “correlating” entails. As purported support, Plaintiffs paste in screenshots without explaining how these screenshots demonstrate that the accused products meet the claim limitations. Plaintiffs have failed to provide adequate notice of their theories of infringement pertaining to “correlating” and what specific functionality in the accused products allegedly meets the “correlating” limitations. Case 1:15-cv-07025-RBK-JS Document 187-2 Filed 02/21/17 Page 3 of 7 PageID: 8520 Gianni Cutri, Esq. April 28, 2016 Page 3 ME1 22392241v.3 Plaintiffs also do not adequately identify what they believe constitutes the “receiving an indication” or “receiving a first and second aerial image” functions, including, by way of example, stating what specific functionality or process in the accused products performs the “receiving.” Similarly, Plaintiffs do not adequately identify what specific functionality or process in the accused products meets the “registering pairs of points” limitation and what specific functionality or process accomplishes the claimed correlating. ’840 Claim Chart Plaintiffs do not adequately identify what specific feature of the accused products meets the pitch-determination-marker limitation. What Plaintiffs appear to point to as the pitch determination marker changes throughout the chart, shifting from claim element to claim element. At one point Plaintiffs point to the entire wireframe as constituting the pitch determination marker. At another point they focus on only one part of the wireframe. At yet another point they highlight two particular sections of the wireframe. These shifting definitions and contentions make it difficult for Defendants to adequately understand Plaintiffs’ infringement theory. Plaintiffs must clarify exactly what they contend comprises the pitch determination marker. For the receiving-an-indication step, Plaintiffs do not adequately identify what specific feature of the accused products does the “receiving,” and how the “receiving” is accomplished. Also, Plaintiffs point to the same screenshot for the providing-roof-measurement-information step as they do for the receiving-an- indication-of-pitch step, without explaining how the feature shown in the screenshot achieves both functionalities. Similarly, Plaintiffs do not explain how displaying numbers representing pitch simultaneously constitutes both providing pitch information and receiving pitch information. ’152 Claim Chart Plaintiffs point to the same screenshots showing lines on the ridge of a roof as being both the indication of a feature in the receiving step and the projected line drawing of that same feature in the displaying step, without explaining how they can simultaneously be both. Because Plaintiffs provide no narrative explanation or analysis of how the screenshots meets the claim limitations, or what the screenshots are even showing, Defendants are once again left to guess at Plaintiffs’ infringement theory. Case 1:15-cv-07025-RBK-JS Document 187-2 Filed 02/21/17 Page 4 of 7 PageID: 8521 Gianni Cutri, Esq. April 28, 2016 Page 4 ME1 22392241v.3 ’880 Claim Chart Several claims call for latitude and longitude coordinates to be used in particular ways and that images be drawn from multiple different databases. Plaintiffs simply provide screenshots and aerial images of a house without demonstrating how the accused products use latitude and longitude in the specific ways claimed or how the multiple-database limitations are met. Presently, Defendants have no way of knowing what Plaintiffs contend meet these database and latitude-and-longitude limitations. Claim 4 is a dependent claim, which explicitly requires generating outline drawings based on tracing from said imagery. Plaintiffs provide no analysis or explanation of what specific functionality in the accused products performs this step, or how it is performed. Plaintiffs cannot simply provide a screenshot of a finished outline drawing, without demonstrating that it was actually the result of tracing, how the tracing function operates, and how the outline drawings are generated based upon tracing. This problem relates to both versions of the ’880 claim charts. Plaintiffs must specify their infringement theory through detailed limitation-by-limitation analysis. ’770 Claim Chart Plaintiffs do not adequately identify what they contend is the visual marker. In the stored-data-in-memory limitations, Plaintiffs show two versions of the same wireframe, one with purple lines at the top stretched out without explaining how this demonstrates the storage of data about the location of the marker. Plaintiffs do not explain whether or how the entire wireframe or some portion of it is the accused functionality. Plaintiffs also fail to identify what they contend is the second visual marker. The contentions furthermore do not explain how it is based on stored data about the first location. What Plaintiffs appear to point to as the visual marker is the wireframe. But in the ’840 claim chart, Plaintiffs identified the wireframe as the pitch determination marker and the protractor tool and the envelope tool. Moreover, in the ’152 claim chart, Plaintiffs contend that the wireframe itself was the 3-D model. Plaintiffs must clarify their shifting definitions and contentions as to the wireframe. For the generating-a-roof-report step, Plaintiffs do not explain how the report is generated, what it is based on, from where the numerical values are derived, or how the numerical values were measured or calculated. Plaintiffs just set forth a series of aerial images of a house, not even including the marker discussed in the Case 1:15-cv-07025-RBK-JS Document 187-2 Filed 02/21/17 Page 5 of 7 PageID: 8522 Gianni Cutri, Esq. April 28, 2016 Page 5 ME1 22392241v.3 previous limitations, and then drop in a screenshot of an annotated diagram of the roof at the end. Plaintiffs wholly fail to explain how the accused products generate this report, what specific functionality in the accused products allegedly does the generating, or what constitutes the report generation engine. ’732, ’454, ’376, ’737 Claim Charts The types of deficiencies identified for the patents above also present in Plaintiffs’ deficient ’732, ’454, ’376, and ’737 claim charts. These charts are deficient with respect to every single claim, element, and limitation. The charts are nothing more than a recitation of the claim elements followed by a handful of screenshots of Aerial Sketch repeatedly copied and pasted. No substantive narrative or textual analysis is provided regarding how the accused products meet each claim limitation. In fact, other than a sentence or two regarding the preambles, the only text appearing in the chart is the claim language itself, which is quoted after inserting the names of the accused products, and citations to various Bates numbers or URLs. For the ’732 claim chart, Plaintiffs fail to provide any evidence, support, or even a basic analysis of the snap-to limitation. The screenshots set forth in the snap- to limitations do not demonstrate Plaintiffs’ theory of infringement, fail to identify any functionality that would meet the claim limitation, and do not depict any snapping-to action or movement. With respect to the changing-a-line/changing-the-line-drawing limitations (e.g., “changing, by the computer system of the roof estimate report system, a line in the second line drawing that corresponds to the same feature in the first line drawing”) in the ’454 and ’737 claim charts, Plaintiffs once again fail to provide any detailed or textual analysis. For instance, Plaintiffs do not identify the feature to which the altered lines correspond. Plaintiffs appear to be pointing to lines hanging in mid-air, not to lines “representing a feature of the roof,” as called for in the claims. And for the ’737 claim chart in particular, Plaintiffs do not identify what in the accused products constitutes the at least one processor. For the ’376 claim chart, Plaintiffs do not identify what feature(s) they contend constitutes the pitch determination marker, including whether it is the entire wireframe seen inside the red box or just a portion thereof. Likewise, Plaintiffs do not explain how this wireframe meets the envelope tool limitation or how the envelope tool is different from the pitch determination marker or protractor tool. Plaintiffs do not address or analyze the envelope tool limitation at all. Case 1:15-cv-07025-RBK-JS Document 187-2 Filed 02/21/17 Page 6 of 7 PageID: 8523 Gianni Cutri, Esq. April 28, 2016 Page 6 ME1 22392241v.3 For at least the above reasons, Plaintiffs’ infringement contentions are deficient. These contentions evidence a disregard for the requirements of the Local Patent Rules which mandate the provision of charts demonstrating how each limitation of each asserted claim is met or is present in each of the accused products. To the extent Plaintiffs are unwilling or unable to produce appropriate claim charts, Defendants reserve the right to move the Court to compel Plaintiffs to do so, or in the alternative, to move to strike Plaintiffs’ contentions for failure to comply with the Local Patent Rules. Please advise as to your earliest availability to meet and confer on these issues. Very truly yours, Scott S. Christie Cc: Counsel of Record (via e-mail) Case 1:15-cv-07025-RBK-JS Document 187-2 Filed 02/21/17 Page 7 of 7 PageID: 8524 EXHIBIT B Case 1:15-cv-07025-RBK-JS Document 187-3 Filed 02/21/17 Page 1 of 3 PageID: 8525 ME1 22608792v.1 Scott S. Christie Partner T. 973.848.5388 F. 973.297.3981 schristie@mccarter.com McCarter & English, LLP Four Gateway Center 100 Mulberry Street Newark, NJ 07102-4056 T. 973.622.4444 F. 973.624.7070 www.mccarter.com BOSTON HARTFORD STAMFORD NEW YORK NEWARK EAST BRUNSWICK PHILADELPHIA WILMINGTON WASHINGTON, DC VIA ELECTRONIC MAIL May 31, 2016 Gianni Cutri, Esq. Kirkland & Ellis 3300 North LaSalle Chicago, IL 60654 Re: Eagle View Technologies, Inc., et al. v. Xactware Solutions, Inc., et al., Civil Action No. 1:15-cv-07025-RBK-JS Dear Mr. Cutri: I write in response to your May 5, 2016 letter regarding Plaintiffs’ deficient infringement contentions. While Defendants appreciate that the ultimate point of your letter is that Plaintiffs are unwilling to address any of the deficiencies in their infringement contentions and unequivocally refuse to supplement them, a few statements warrant a response. Defendants have been able to persevere in spite of Plaintiffs’ deficient contentions, not because of them. Indeed, Plaintiffs’ vague infringement contentions are one of the principal reasons that many claim terms need construction. The fact that Defendants have diligently pursued discovery, complied with their disclosure obligations under the local rules, and prepared their defenses does not, in any way, relieve Plaintiffs of their duty to provide adequate infringement contentions. Defendants’ diligence in the face of these lackluster infringement contentions certainly is not evidence that Plaintiffs’ contentions are somehow “more than sufficient.” Plaintiffs’ contentions do not provide adequate notice of Plaintiffs’ infringement theories and fail to comply with the local rules. Plaintiffs’ reliance on the sheer number and length of their claim charts is misplaced. Because Plaintiffs chose to assert 153 claims spanning nine patents against multiple accused products, lengthy claim charts are to be expected. However, the length of Plaintiffs’ charts primarily is due to the pervasive use of large screenshots repeatedly copied and pasted from user manuals and instructional videos and devoid of any significant analysis or explanation. Although Plaintiffs had access to Defendants’ accused products prior to filing suit for a number of years as evidenced, for example, by their use of the accused Xactimate platform to deliver customer data, they apparently made no effort to capitalize upon such access when conducting their pre-suit investigation. Case 1:15-cv-07025-RBK-JS Document 187-3 Filed 02/21/17 Page 2 of 3 PageID: 8526 Gianni Cutri, Esq. May 31, 2016 Page 2 ME1 22608792v.1 Plaintiffs no longer contest and apparently concede the adequacy of Defendants’ non-infringement contentions. However, Plaintiffs’ attempts to argue the adequacy of their infringement contentions through comparison to Defendants’ non-infringement contentions misapprehends the burden of persuasion. It is, at all times, Plaintiffs’ burden to prove infringement with respect to each limitation of each asserted claim. Defendants are under no affirmative obligation to demonstrate non-infringement. Accordingly, non-infringement contentions generally tend to be less detailed and voluminous than infringement contentions insofar as their purpose largely is to identify features and functionality required by the asserted claims that are not present in the accused products. Given Plaintiffs’ unequivocal refusal to supplement their infringement contentions to correct any of the deficiencies detailed in Defendants’ April 28, 2016 letter, Defendants are proceeding to litigate this case on the basis that Plaintiffs’ entire justification for their infringement allegations is contained in their infringement contentions as presently constituted. Accordingly, Defendants will object to, and will move to strike, any future attempts by Plaintiffs to amend their infringement contentions and/or to rely upon any infringement theories that are inconsistent in any manner with their infringement contentions, including those advanced for the first time in Plaintiffs’ expert reports. Very truly yours, Scott S. Christie Cc: Counsel of Record (via e-mail) Case 1:15-cv-07025-RBK-JS Document 187-3 Filed 02/21/17 Page 3 of 3 PageID: 8527 EXHIBIT C Case 1:15-cv-07025-RBK-JS Document 187-4 Filed 02/21/17 Page 1 of 3 PageID: 8528 Gianni Cutri To Call Writer Directly: (312) 862-3372 gianni.cutri@kirkland.com 300 North LaSalle Chicago, Illinois 60654 (312) 862-2000 www.kirkland.com Facsimile: (312) 862-2200 Beijing Hong Kong Houston London Los Angeles Munich New York Palo Alto San Francisco Shanghai Washington, D.C. May 5, 2016 By E-mail Scott Christie McCARTER & ENGLISH, LLP Four Gateway Center 100 Mulberry St. Newark, NJ 07102 Re: Eagle View Technologies, Inc., et al. v. Xactware Solutions, Inc., et al., Civil Action No. 1:15-cv-07025-RBK-JS Dear Scott: I write in response to your April 28, 2016 letter regarding Plaintiffs’ infringement contentions. We disagree that the contentions are deficient, and Defendants have provided no authority for demanding that Plaintiffs supplement their contentions at this stage of the litigation. As an initial matter, we were surprised to receive your letter because Plaintiffs served their detailed infringement contentions more than four months ago, on December 23, 2015, and Defendants previously have not raised any alleged deficiencies with those contentions. Since receiving Plaintiffs’ infringement contentions, Defendants served non-infringement contentions and invalidity contentions, proposed 63 unique claim terms for construction and purported support for those constructions, and identified what Defendants contend are five representative versions of the accused products. In all that time, Defendants proceeded with discovery and their local patent rules disclosures as if they understood Plaintiffs’ infringement claims against them. Defendants style their complaints about Plaintiffs’ infringement contentions as a failure to comply with L. Pat. R. 3.1(c), but the contentions are more than sufficient to provide Defendants with notice of Plaintiffs’ infringement theories to litigate and defend their case, and that is all Plaintiffs are required to do at this stage of the litigation. And as evidenced by Defendants’ conduct described above, Defendants have done so for the last four months. After investigating the accused products and recording the infringing functionalities with screen shots, Plaintiffs provided Defendants with 10 detailed claim charts totaling nearly 600 pages with annotated versions of those screen shots, each referencing numerous, specific documents in Plaintiffs’ production. For each limitation of each patent-in-suit, every accused product was Case 1:15-cv-07025-RBK-JS Document 187-4 Filed 02/21/17 Page 2 of 3 PageID: 8529 Scott Christie May 5, 2016 Page 2 represented in those charts. Defendants have identified no authority establishing that Plaintiffs’ contentions are defective in any way. Further, Defendants’ insistence that Plaintiffs supplement their infringement contentions now is belied by Defendants’ own statements regarding their non-infringement contentions. Defendants’ non-infringement contentions merely recite certain claim limitations that Defendants contend are not present in the accused products with no further explanation or citation to any specific documents. See Feb. 26, 2016 Ltr. from A. Shah to S. Christie at 4. Indeed, Defendants cite generally to 22,000 pages of documents to support their contentions and have refused to provide any further detail regarding how any of those documents relate to their non-infringement positions. See Mar. 3, 2016 Ltr. from S. Christie to A. Shah at 1. As such, Defendants’ non-infringement contentions stand in stark contrast to Plaintiffs’ detailed infringement contentions, which were provided on a claim-by-claim and limitation-by-limitation basis and cite specific supporting evidence. But Defendants nonetheless contend that they “have satisfied L. Pat. R. 3.2A by providing a written basis for their non-infringement contentions.” See id. at 2. At bottom, Defendants’ complaints about numerous specific claim terms in Plaintiffs’ infringement contentions are not about compliance with any local patent rule, but are instead aimed at the merits of Plaintiffs’ infringement case. See, e.g., Apr. 28 Ltr. from S. Christie to G. Cutri at 2-6. Plaintiffs’ infringement contentions were prepared without the benefit of any discovery, and it is premature at this stage of the litigation to be adjudicating the merits. Plaintiffs have yet to produce their core technical documents or make operational versions of the accused products available, and expert discovery is months away from even beginning. Serving infringement contentions early on in litigation focuses and expedites the discovery process, but they are not intended to provide the forum for addressing the merits. While we do not intend to supplement our infringement contentions at this time, we continue to reserve our right to do so in accordance with the local patent rules. To the extent there is anything you would like to discuss, please let us know and we can schedule a time. Sincerely, /s Gianni Cutri Gianni Cutri Case 1:15-cv-07025-RBK-JS Document 187-4 Filed 02/21/17 Page 3 of 3 PageID: 8530 EXHIBIT D Case 1:15-cv-07025-RBK-JS Document 187-5 Filed 02/21/17 Page 1 of 5 PageID: 8531 ME1 22483135v.1 Scott S. Christie Partner T. 973.848.5388 F. 973.297.3981 schristie@mccarter.com McCarter & English, LLP Four Gateway Center 100 Mulberry Street Newark, NJ 07102-4056 T. 973.622.4444 F. 973.624.7070 www.mccarter.com BOSTON HARTFORD STAMFORD NEW YORK NEWARK EAST BRUNSWICK PHILADELPHIA WILMINGTON WASHINGTON, DC VIA ELECTRONIC MAIL May 7, 2016 Gianni Cutri, Esq. Kirkland & Ellis 3300 North LaSalle Chicago, IL 60654 Re: Eagle View Technologies, Inc., et al. v. Xactware Solutions, Inc., et al., Civil Action No. 1:15-cv-07025-RBK-JS Dear Mr. Cutri: I write regarding our meet and confer session yesterday. As an initial matter, we continue to be disappointed with Plaintiffs’ conduct in complying with Defendants’ discovery requests. Plaintiffs are not, in any meaningful way, meeting their discovery obligations. Until Plaintiffs begin to take substantial steps toward producing documents that they agreed to produce and make available source code and representative product samples, Plaintiffs lack any credibility in complaining about any alleged deficiencies in Defendants’ productions. Defendants have made a massive effort to timely produce over 180,000 pages of documents and make representative versions of its source code and representative Accused Products available for inspection. We remain willing to work with you to facilitate the mutual production of discovery, but Plaintiffs’ continued unreasonable demands, arbitrary deadlines, threats, and posturing are completely at odds with the lack of urgency it has shown in responding to Defendants’ requests for production and interrogatories, and in correcting the deficiencies pointed out in numerous letters from Defendants. Plaintiffs themselves have produced a mere thirty pages of documents in the last ten weeks. Even if Plaintiffs produce 20,000 pages of documents on Monday, as you represented, Plaintiffs still are far behind the pace and quantity of production that Defendants have set in this case. Second, with respect to Plaintiffs’ production of source code and representative product samples, you represented that they would be available for inspection by Friday, May 13, 2016. Clayton Myers and/or Rafic Melhelm, who were previously disclosed under the DCO, intend to inspect Plaintiffs’ source code and representative product samples at 9:30 am on May 13, 2016 at the New York office of your firm (601 Lexington Avenue). Please immediately confirm that the source code and representative product samples will be available for inspection at Case 1:15-cv-07025-RBK-JS Document 187-5 Filed 02/21/17 Page 2 of 5 PageID: 8532 Gianni Cutri, Esq. May 7, 2016 Page 2 ME1 22483135v.1 that place and time, and that any credentials necessary to log onto and use the products will be available upon their arrival. Once we receive your confirmation, we will be able to confirm that Defendants’ source code and representative product samples will be available for inspection on May 11, 2016. With regard to production of source code and representative product samples, we were surprised that Plaintiffs initially took the position that they may refuse to make Plaintiffs’ source code and representative product samples available for inspection. This position is at odds with not only with Eagle View’s and Pictometry’s response to Request for Production No. 49, but also with Plaintiffs’ earlier discovery correspondence. We also object to your demands that Defendants provide a demonstration of relevancy concerning Plaintiffs’ source code and representative product samples within the context of this Rule 34 document request, particularly when, as here, Plaintiffs had already agreed in writing to produce the material. Your shifting positions and legally inappropriate demands only make discovery frustrating and more expensive. Third, we understand that Plaintiffs have put forth a new position regarding Defendants’ source code and Accused Product production. For the first time yesterday, you appear to have taken the position that Defendants must make every single version of source code and every version of each Accused Product available for inspection. It is surprising that you would take a position that multiplies the scope of discovery just days after the hearing before the Court on this matter in which you dismissed Defendants’ concerns about the scope of the source code review. Furthermore, Plaintiffs have previously requested only representative versions of Defendants’ source code and Accused Products. See Letter from Archit Shah, April 7, 2016 (“please identify when and where Defendants will make available for inspection ‘operational copies of representative versions of the Accused Products’ and source code for said representative versions. Please also identify what versions Defendants deem representative for each Accused Product.”); E-mail from Jared Barcenas, April 20, 2016 (“please let me know the details for how I may obtain access to the computer once on site, and what you contend are the ‘representative versions’ of ‘source code and operational software’ provided on the computer”). Indeed, in response to Mr. Shah’s letter and Mr. Barcenas’ arrival at our Newark office on April 28, 2016 unprepared to review representative versions of Defendants’ source code and Accused Products, we pointed each of them to our February 29, 2016 response to Interrogatory No. 1 in which we identified the representative versions. Unless and until you can justify the grossly disproportionate burden on Defendants to produce for inspection every single version of source code and every version of each Accused Product, we will make available only the representative versions identified in the response to Interrogatory No. 1. Case 1:15-cv-07025-RBK-JS Document 187-5 Filed 02/21/17 Page 3 of 5 PageID: 8533 Gianni Cutri, Esq. May 7, 2016 Page 3 ME1 22483135v.1 Fourth, during the call yesterday, we expressed that Defendants would be willing to reduce the number of claim terms for construction. However, we understand that Plaintiffs are unwilling to reduce the number of asserted claims at this time, despite the Court’s order that they do so. As we explained, Defendants need to know which claims that Plaintiffs actually intend to pursue through discovery and at trial. The significant number of claim terms requiring construction is a function of Plaintiffs having asserted 153 claims across nine patents. The quickest and easiest path to reaching a workable compromise and complying with the Court’s order to reduce claims and claim terms is for Plaintiffs to identify which independent claims they are willing to drop, which likely will result in a reduction in the number claim terms needing construction. The parties agreed to meet and confer further regarding their claim construction positions to see if we can reach agreement regarding the meaning of any disputed claim terms. Please provide your next availability to meet and confer as to claim terms requiring construction. Correspondingly, you expressed that some of Plaintiffs’ infringement claims were weaker than other infringement claims. We believe that your admission highlights the complete inadequacy of Plaintiffs’ pre-suit investigation and confirms the many deficiencies we identified in Plaintiffs’ infringement contentions. Given such an admission, Defendants are at a loss to understand why Plaintiffs are unwilling to reduce the number of asserted claims by, at the very least, striking these “weak” infringement claims. Plaintiffs’ continued assertion of “weak” claims of infringement seems calculated only to multiply the expense associated with this case. Fifth, and again related to claim construction, you reiterated your purported need to depose Defendants’ engineers or other technically knowledgeable employees regarding claim construction issues. Such depositions would be highly inappropriate, but we acknowledge Plaintiffs’ position that Defendants’ engineers are persons of ordinary skill in the art. During the call yesterday, you identified the true purpose for these proposed depositions: to determine how Defendants’ Accused Products function in relation to the asserted claims rather than to assist with claim construction. It is unacceptable at this stage of the case for Plaintiffs to be seeking deposition testimony about how the Accused Products work in order to assess and bolster their deficient infringement contentions. To the extent Plaintiffs notice any such depositions, we will seek an appropriate protective order. Indeed, your admission that you need fact witness depositions at this stage of the case to determine what your infringement theories are or may be further demonstrates the inadequacy of both your pre-suit investigation and the contentions themselves. Sixth, Mr. Shah’s three-page May 6, 2016 discovery deficiency letter was sent barely an hour before the meet and confer session yesterday. It erroneously states that we have “exchanged several letters on [the] topics” raised in the letter. In Case 1:15-cv-07025-RBK-JS Document 187-5 Filed 02/21/17 Page 4 of 5 PageID: 8534 Gianni Cutri, Esq. May 7, 2016 Page 4 ME1 22483135v.1 fact, aside from the issue raised in the first substantive paragraph which is inaccurate as explained in my May 4, 2016 letter to Mr. Barcenas, the deficiencies alleged in the letter were raised with us for the first time. Accordingly, we completely reject your position that our meet and confer session yesterday constituted a meet and confer session under L.Civ.R. 37.1 and Judge Schneider’s Standing Order (Dkt. No. 37) as to the issues raised in that letter. Your threats and posturing that the call yesterday constituted a meet and confer session concerning Mr. Shah’s letter were discourteous and unhelpful. We will respond to Mr. Shah’s letter next week. Finally, you confirmed that Plaintiffs will not seek to amend their deficient infringement contentions, and that Plaintiffs will oppose Defendants’ application to amend their invalidity and non-infringement contentions. In closing, we look forward to working with you to move this case through discovery, but we are disturbed by Plaintiffs’ position that it is entitled to discovery while refusing to provide any to Defendants. We also find your shifting positions on key issues, such as representative versions of source code and product samples, unhelpful. We hope that with regard to future meet and confer sessions, Plaintiffs will have the courtesy of determining and communicating to Defendants their positions prior to such sessions. It is not productive to hear, for the first time during a conference, that Plaintiffs have shifted their position on one or more key issues. Very truly yours, Scott S. Christie Cc: Counsel of Record (via e-mail) Case 1:15-cv-07025-RBK-JS Document 187-5 Filed 02/21/17 Page 5 of 5 PageID: 8535 EXHIBIT E Case 1:15-cv-07025-RBK-JS Document 187-6 Filed 02/21/17 Page 1 of 7 PageID: 8536 Lee Carl Bromberg Partner T. 617-449-6538 F. 617-443-6161 lbromberg@mccarter.com McCarter & English, LLP 265 Franklin Street Boston, MA 02110-3113 T. 617.449.6500 F. 617.607.9200 www.mccarter.com BOSTON HARTFORD STAMFORD NEW YORK NEWARK EAST BRUNSWICK PHILADELPHIA WILMINGTON WASHINGTON, DC January 4, 2017 VIA E-MAIL Adam Alper Kirkland & Ellis LLP 555 California Street San Francisco, CA 94104 adam.alper@kirkland.com Re: Eagle View Technologies, Inc., et al. v. Xactware Solutions, Inc., et al., Civil Action No. 1:15-cv-07025-RBK-JS Dear Adam: Plaintiffs’ deficient infringement contentions do not identify Plaintiffs’ infringement theories as required by the Local Rules (see, e.g., L.Pat.Rule 3.1(c)), and thus remain an obstacle to Defendants’ preparation of their defense and to proper claim construction proceedings. We have raised this fundamental issue numerous times before, pointing out the vague nature of Plaintiffs’ claim charts overall, detailing numerous specific deficiencies with individual claims and elements, and requesting that Plaintiffs provide more detailed contentions. See, e.g., April 28, 2016 Letter from Christie to Cutri; May 7, 2016 Letter From Christie to Cutri. Plaintiffs, however, have refused to amend their contentions to address any of the specific deficiencies Defendants pointed out. See, e.g., May 5, 2016 Letter from Cutri to Christie. The only amendment Plaintiffs have provided was self-serving, adding no additional details or narrative explanation or identification of Plaintiffs’ specific theories of infringement, but instead inserting additional accused products and even more unexplained screenshots. You are well informed on the requirement that the patentee provide specific detail in its infringement contentions. See Connectel, LLC v. Cisco Sys. Inc., 391 F. Supp. 2d 526 (E.D. Tex. 2005); see also Connectel, LLC v. Cisco Sys. Inc., No. 2:04-cv-00396-LED, Dkt. 40, Cisco’s Motion to Compel P.R. 3- 1 Preliminary Infringement Contentions. That detail should be provided here. This case is rapidly progressing towards claim construction and the vague, amorphous infringement contentions provided by Plaintiffs to date put Defendants at a severe disadvantage in preparing their defensive case. We ask Plaintiffs to reconsider their position and supplement their infringement contentions to provide the kind of detail the Local Rules require. As previously explained, Defendants’ various efforts to draft non- infringement contentions, develop their defenses, and engage in discovery have all been done despite Plaintiffs’ deficient contentions, not because of them. Plaintiffs’ Case 1:15-cv-07025-RBK-JS Document 187-6 Filed 02/21/17 Page 2 of 7 PageID: 8537 Adam Alper, Esq. January 4, 2017 Page 2 recent amendments, which simply added new accused products and screenshots, do nothing to address the numerous deficiencies Defendants identified long ago and fail to add any clarity or detail as to what Plaintiffs’ specific theories of infringement actually are. Plaintiffs are obligated by the Local Rules, specifically L.Pat.R. 3.1(c), to provide a chart identifying specifically where each limitation of each asserted claim is found within each accused product. Plaintiffs’ infringement contentions fail to do so. Like Plaintiffs’ original claim charts, Plaintiffs’ amended charts are little more than recitations of claim language accompanied by unexplained screenshots. No substantive narrative or textual analysis is provided regarding how the content of the various screenshots and, correspondingly, the accused products themselves actually meet each claim limitation. For example, Plaintiffs do not focus on a specific feature or object shown in a screenshot and explain how that feature or object meets the particular limitation in question. Plaintiffs also do not identify a specific component or functionality in the accused products and describe—in their own words—how that component or functionality performs the particular step of the claim. In fact, other than a sentence or two regarding the preambles, the only text appearing in the charts is the claim language itself, quoted after inserting the names of the accused products, and citations to various Bates numbers or URLs. Any “annotations” Plaintiffs refer to are nothing more than arrows over or boxes around certain portions of the screenshots. In addition, Plaintiffs have provided identical or nearly identical screenshots for multiple different limitations of the same claim. Defendants are left to guess at Plaintiffs’ specific infringement theories, rendering the contentions seriously deficient and in violation of the Local Patent Rules. Plaintiffs’ recent amendments to their contentions add further difficulties and ambiguities because they include screenshots of different buildings for different claim elements in the same claim in purporting to show infringement. It is impossible for Defendants to understand Plaintiffs’ theory of infringement if Plaintiffs fail to even provide consistent screenshots throughout the elements of a single claim. This discrepancy compounds the problems created by Plaintiffs’ failure to provide substantive, textual analysis—in their own words—about how the accused products purportedly meet each limitation of each asserted claim. Plaintiffs have more than sufficient information to amend their infringement contentions to provide the requisite detail. First, Plaintiffs have had, and continue to have, access to Defendants’ products before filing suit. Indeed, Plaintiffs have delivered their own products and services to customers using Defendants’ accused Xactimate platform for years. Second, Plaintiffs have been in possession of Defendants’ technical documents, have had access to Defendants’ source code, and were provided with operational copies of the accused software for several months Case 1:15-cv-07025-RBK-JS Document 187-6 Filed 02/21/17 Page 3 of 7 PageID: 8538 Adam Alper, Esq. January 4, 2017 Page 3 now. There is simply no excuse for Plaintiffs’ failure to provide any detail or specificity in their infringement contentions, including adequately identifying the specific components and functionality in the accused products that allegedly meet each limitation of each asserted claim and, most importantly, how they do so. Simply put, Plaintiffs say nothing, and thus force Defendants to guess as to Plaintiffs’ theories of infringement and the specific components and functionalities that allegedly meet each limitation of each claim of each asserted patent. This has been and is unacceptable, and the time has come for Plaintiffs to comply with the Local Rules. The same specific deficiencies originally identified in our letter of April 28, 2016 still exist in Plaintiffs’ amended contentions. Indeed, Defendants believe that the deficiencies in Plaintiffs’ charts are endemic. However, by way of guidance and non-limiting examples, Defendants provide the following summary of some of the types of specific deficiencies that must be addressed. ’436 Claim Chart. First, Plaintiffs’ chart is confusing with respect to the memory and module limitations. Plaintiffs must clarify their position and identify what specific functionality or component they contend meets the memory limitation and what meets the module limitation. Second, Plaintiffs fail to identify what “correlate” means, what constitutes “correlating,” or what “the correlation” is. Plaintiffs simply assert that the accused products “correlate,” but do not say how they do so or even what “correlating” entails. As purported support, Plaintiffs paste in screenshots without explaining how these screenshots demonstrate that the accused products meet the claim limitations. Plaintiffs have failed to provide adequate notice of their theories of infringement regarding “correlating” and what specific functionality in the accused products allegedly meets the “correlating” limitations. Third, Plaintiffs also do not adequately identify what allegedly constitutes the “receiving an indication” or “receiving a first and second aerial image” functions, including, by way of example, stating what specific functionality or process in the accused products performs the “receiving.” Finally, Plaintiffs do not adequately identify what specific functionality or process in the accused products meets the “registering pairs of points” limitation and what specific functionality or process accomplishes the claimed correlating. As is the case for all of Plaintiffs’ claim charts, Plaintiffs refuse to identify their specific infringement theory, engage in any substantive analysis, or say almost anything at all in their own words. ’840 Claim Chart. First, Plaintiffs do not adequately identify what specific feature of the accused products allegedly meets the pitch-determination-marker limitation. What Plaintiffs appear to point to as the pitch determination marker changes throughout the charts, shifting from claim element to claim element, ranging from apparently the entire wireframe at one time to only certain portions of the wireframe Case 1:15-cv-07025-RBK-JS Document 187-6 Filed 02/21/17 Page 4 of 7 PageID: 8539 Adam Alper, Esq. January 4, 2017 Page 4 at others. Plaintiffs are required to articulate a specific theory of infringement, identify a specific function or component of the accused products for this element, and then stick to it; they may not employ a vague, shifting-sands approach. Second, for the receiving-an-indication step, Plaintiffs do not identify what specific feature of the accused products does the “receiving” and how the “receiving” is accomplished. Third, Plaintiffs point to the same screenshot for the providing-roof-measurement- information step as they do for the receiving-an indication-of-pitch step, without explaining how the feature shown in the screenshot achieves both functionalities. Finally, Plaintiffs do not explain how displaying numbers representing pitch simultaneously constitutes both providing pitch information and receiving pitch information. ’152 Claim Chart. This chart is perhaps the starkest example of Plaintiffs’ avoidance of saying anything in their own words or providing any narrative infringement analysis of any kind. Beyond pasting in screenshots and drawing a box around one portion or another, Plaintiffs say nothing about how the accused products allegedly infringe. For each claim, Defendants are left with nothing but the claim language and some screenshots. No infringement theory is disclosed and no analysis is provided. Such infringement contentions do not meet the requirements of the Local Rules. Plaintiffs must immediately amend to add the requisite detail and actually articulate their theory of infringement in order to put Defendants’ on notice. Plaintiffs’ failure to do so has and continues to prejudice Defendants’ ability to defend themselves in this litigation. ’770 Claim Chart. First, Plaintiffs do not adequately identify what they contend is the visual marker. Second, in the stored-data-in-memory limitations, Plaintiffs show various images of roofs with wireframes, but do not say a single word about how this demonstrates the storage of data, about the location of the marker, or even what function or component of the accused product allegedly performs the data storage. Third, Plaintiffs appear to focus on the wireframe in these screenshots, apparently contending that the wireframe, in its entirety, is the visual marker, but provide no explanation of how that can be the case. Plaintiffs must clarify their shifting, confusing definitions and assertions. Finally, throughout this chart, Plaintiffs have again failed to meaningfully engage in any substantive infringement analysis and refuse to provide any narrative explanation for how each of the many limitations in claim 12, and claim 1 from which it depends, are allegedly satisfied by the accused products. This fails to meet the requirements of the Local Rules. ’454, ’376, ’737 Claim Charts. The types of deficiencies identified for the patents above are also present in Plaintiffs’ deficient ’454, ’376, and ’737 claim charts. These charts are deficient with respect to every single claim, element, and limitation. Case 1:15-cv-07025-RBK-JS Document 187-6 Filed 02/21/17 Page 5 of 7 PageID: 8540 Adam Alper, Esq. January 4, 2017 Page 5 The charts are nothing more than a recitation of the claim elements followed by a handful of screenshots repeatedly copied and pasted. No substantive narrative or textual analysis is provided regarding how the accused products allegedly meet each claim limitation. In fact, other than a sentence or two regarding the preambles, the only text appearing in the charts is the claim language itself, which is quoted after inserting the names of the accused products, and citations to various Bates numbers or URLs. Here are additional examples as to specific elements: with respect to the changing-a-line/changing-the-line-drawing limitations (e.g., “changing, by the computer system of the roof estimate report system, a line in the second line drawing that corresponds to the same feature in the first line drawing”) in the ’454 and ’737 claim charts, Plaintiffs again fail to provide any detailed or textual analysis. For instance, Plaintiffs do not identify the feature to which the altered lines correspond. Plaintiffs appear to be pointing to lines hanging in mid-air, not to lines “representing a feature of the roof,” as called for in the claims. And for the ’737 claim chart in particular, Plaintiffs do not identify what in the accused products constitutes the at least one processor. Moreover, at least with respect to Roof Insight and Property Insight, for the generating a report element, Plaintiffs point to top plan views of an entirely different house than the one depicted in the earlier elements of this claim. Not only is this extremely confusing, but it confirms that Plaintiffs have no infringement theory at all for this element with respect to Roof Insight and Property Insight. In conclusion, while we recognize that Plaintiffs previously refused to supplement their contentions to correct the deficiencies raised by Defendants, we invite Plaintiffs to rethink that refusal and agree to fix these deficiencies now as the case moves directly into pre-Markman hearing activities. Corrected charts, narrowly tailored to the particular accused products, stating specifically how those products infringe each limitation of each asserted claim, must be promptly provided. Please let us know by Friday, January 6, 2017, whether Plaintiffs agree to provide such charts adding the necessary details, specificity, and clarity discussed above and in our previous letters and conversations. To the extent Plaintiffs are unwilling to do so, please let us know your availability for a final meet and confer on this issue on January 9 or January 10, 2017, as Defendants intend to raise this issue with the Court before the January 13, 2017 status conference. Case 1:15-cv-07025-RBK-JS Document 187-6 Filed 02/21/17 Page 6 of 7 PageID: 8541 Adam Alper, Esq. January 4, 2017 Page 6 Sincerely, Lee Carl Bromberg cc: Counsel of Record (via email) Case 1:15-cv-07025-RBK-JS Document 187-6 Filed 02/21/17 Page 7 of 7 PageID: 8542 EXHIBIT F Case 1:15-cv-07025-RBK-JS Document 187-7 Filed 02/21/17 Page 1 of 3 PageID: 8543 Brandon Brown To Call Writer Directly: (415) 439-1670 brandon.brown@kirkland.com 555 California Street San Francisco, California 94104 (415) 439-1400 www.kirkland.com Facsimile: (415) 439-1500 Be jing Chicago Hong Kong Houston London Los Angeles Munich New York Palo Alto Shanghai Washington, D.C. January 7, 2017 Via E-Mail Lee Bromberg lbromberg@mccarter.com McCarter & English, LLP Re: Eagle View Technologies, Inc., et al. v. Xactware Solutions, Inc., et al. (D.N.J. No. 1:15-cv-7025-RBK-JS) Dear Lee: We write in response to your January 4, 2017 correspondence. As an initial matter, we note that your five page correspondence demanded a response a mere two days after receipt. We have endeavored to review it and act expeditiously. We ask that, in the future, Defendants provide the same courtesy of expediency to Plaintiffs in responding to correspondence. Your correspondence contends that Plaintiffs’ infringement contentions are “deficient” and “do not identify Plaintiffs’ infringement theories as required by the Local Rules.” It further contends that this is an issue that Defendants have raised “numerous times before.” However, while Defendants did raise this issue in April and May of last year, Plaintiffs responded and Defendants never raised this alleged concern again. We understood that Defendants had withdrawn their complaints after our meet and confers and correspondence on this issue. Indeed, Defendants’ final correspondence on this issue, on May 31, 2016, indicated that it would not move to strike Plaintiffs’ existing infringement contentions, thus withdrawing its complaint. If there was an issue remaining, Defendants should have raised it then so that it could be resolved in a timely manner. We likewise object to Defendants’ suggestion that it would “raise this issue before the January 13, 2017 status conference.” Plaintiffs’ current infringement contentions were the subject of extensive briefing and a lengthy hearing, through which Defendants remained silent with regard to their current complaints. Defendants also remained silent during a lengthy in- person meet and confer in mid-December on the issues that pertain to the January 13, 2017 conference as ordered by the Court. Similarly, the parties engaged in a substantial effort to outline their respective positions on the outstanding issues in our joint December 23, 2016 submission to the Court and throughout that process Defendants said nothing about their alleged Case 1:15-cv-07025-RBK-JS Document 187-7 Filed 02/21/17 Page 2 of 3 PageID: 8544 Scott S. Christie January 7, 2017 Page 2 concerns. We do not think it appropriate to write to the Court on the eve of the hearing with a one-sided letter about an issue Defendants have not raised for eight months, despite having numerous prior opportunities to do so. We also disagree that Plaintiffs’ infringement contentions are deficient. Plaintiffs’ infringement contentions comply with L. Pat. R. 3.1(c) and the law governing such contentions in this District. We also note that Plaintiffs’ contentions are substantially more detailed than those in the Connectel litigation cited in your correspondence (which is distinguishable in any event). That said, in order to avoid raising additional disputes and burdening the Court further, Plaintiffs will not object to supplying additional detail in their infringement contentions. To ensure that the amendment is satisfactory to Defendants, we propose that the parties meet and confer on the scope of detail Defendants seek. While we understand many of the points in Defendants letter, there are a few that require clarification. Please let us know if you’re free to discuss on Tuesday, December 10 at 2PM ET. Sincerely, /s/ Brandon Brown Brandon Brown Case 1:15-cv-07025-RBK-JS Document 187-7 Filed 02/21/17 Page 3 of 3 PageID: 8545 EXHIBIT G Case 1:15-cv-07025-RBK-JS Document 187-8 Filed 02/21/17 Page 1 of 3 PageID: 8546 Case 1:15-cv-07025-RBK-JS Document 187-8 Filed 02/21/17 Page 2 of 3 PageID: 8547 Case 1:15-cv-07025-RBK-JS Document 187-8 Filed 02/21/17 Page 3 of 3 PageID: 8548 EXHIBIT H Case 1:15-cv-07025-RBK-JS Document 187-9 Filed 02/21/17 Page 1 of 3 PageID: 8549 Brandon Brown To Call Writer Directly: (415) 439-1670 brandon.brown@kirkland.com 555 California Street San Francisco, California 94104 (415) 439-1400 www.kirkland.com Facsimile: (415) 439-1500 Beijing Chicago Hong Kong Houston London Los Angeles Munich New York Palo Alto Shanghai Washington, D.C. January 20, 2017 Via E-Mail Lee Carl Bromberg lbromberg@mccarter.com McCarter & English, LLP Re: Eagle View Technologies, Inc., et al. v. Xactware Solutions, Inc., et al. (D.N.J. No. 1:15-cv-7025-RBK-JS) Dear Lee: We write in response to your letter of January 11, 2017. We disagree with your summary of our call and our positions. During the call, we asked Defendants to explain their substantial delays in raising this issue. Defendants offered no explanation for the almost 5-month delay from May through the end of September (when Plaintiffs moved to amend their contentions), but then stated that Defendants delayed raising this issue because Plaintiffs sought to amend their contentions. We did not agree that Plaintiffs’ proposed amended excused Defendants’ obligation to raise supposed deficiencies with Plaintiffs’ infringement contentions, and indeed, Defendants’ own briefing opposing Plaintiffs’ amendment was silent on this issue. Additionally, Defendants absolutely offered no explanation as to why they again failed to raise this issue from October 28, 2016 (when the amendment was granted) until January 4, 2017, including during our court- ordered in-person meet-and-confer about contentions in December and the parties numerous discussions and emails concerning contentions leading up to the submission of our December 23, 2016 letter. Defendants’ silence on this issue throughout that timeframe severely undercuts Defendants’ claims now that Plaintiffs “fail[ed] failure to provide any detail or specificity in their infringement contentions.” January 4, 2017 letter at 3. If this was truly the case, surely Defendants would have raised this issue in the eight months preceding your January 4, 2017 letter. As to our position, we reiterated our view, originally stated in our correspondence from January 7, that our contentions are more than sufficient under the Local Rules, but that, notwithstanding Defendants’ eight-month delay, solely in order to avoid further disputes and with the understanding the Defendants are fully committed to reducing claim terms and Case 1:15-cv-07025-RBK-JS Document 187-9 Filed 02/21/17 Page 2 of 3 PageID: 8550 Lee Carl Bromberg January 20, 2017 Page 2 proceeding with the agreed schedule the parties submitted on December 23, 2016 irrespective of Plaintiffs’ responding to Defendants’ requested additional detail, Plaintiffs do not object to supplying additional detail to minimize disputes between the parties. We did not change our position during our phone call. Instead, we asked for a meet-and-confer to learn what additional detail Defendants sought. While we did not receive any additional meaningful guidance, we will nonetheless attempt to address what we believe to Defendants’ demand for additional detail. (1/4/17 Correspondence from Bromberg to Alper.). We also discussed how amendments to Plaintiffs’ infringement contentions would be impacted by upcoming depositions. Plaintiffs believe it makes sense for at least some of the deposition testimony to take place, particularly with regard to the accused products, since some of that testimony will likely be relevant to Plaintiffs’ contentions and could be contained in a subsequent amendment. Plaintiffs will serve a 30(b)(6) notice imminently, and following the relevant depositions, will work expeditiously to provide a supplemental amendment addressing Defendants’ concerns. Sincerely, /s/ Brandon Brown Brandon Brown Case 1:15-cv-07025-RBK-JS Document 187-9 Filed 02/21/17 Page 3 of 3 PageID: 8551 EXHIBIT I Case 1:15-cv-07025-RBK-JS Document 187-10 Filed 02/21/17 Page 1 of 3 PageID: 8552 Case 1:15-cv-07025-RBK-JS Document 187-10 Filed 02/21/17 Page 2 of 3 PageID: 8553 Case 1:15-cv-07025-RBK-JS Document 187-10 Filed 02/21/17 Page 3 of 3 PageID: 8554 EXHIBIT J Case 1:15-cv-07025-RBK-JS Document 187-11 Filed 02/21/17 Page 1 of 4 PageID: 8555 McCARTER 8(EATT,9i17s d:11 Lee Carl Bromberg Partner T. 617-449-6538 F. 617-443-6161 Ibromberg@mccarter.com January 26, 2017 VIA E-MAIL Gianni Cutri, Esq. Kirkland & Ellis LLP 3300 North LaSalle Chicago, IL 60654 gianni.cutri@kirkland.com Re: Eagle View Technologies, Inc., et al. v. Xactware Solutions, Inc., et al., Civil Action No. 1:15-cv-07025-RBK-JS January 25, 2017 Meet and Confer Dear Gianni: I write regarding the Parties' January 25, 2017 meet and confer. McCarter & English, LLP 265 Franklin Street Boston, MA 02110-3113 T. 617.449.6500 F. 617.607.9200 www.mccarter.com BOSTON HARTFORD STAMFORD NEW YORK NEWARK EAST BRUNSWICK PHILADELPHIA WILMINGTON WASHINGTON, DC First, regarding asserted claim terms, the Parties discussed several areas where the Parties could potentially narrow the claim terms in dispute. Before the meet and confer, on January 19, 2017, Defendants had provided a reduced list of claim terms, which reduced the number of claim terms proposed for construction from the 65 in the Parties' Joint Claim Construction and Prehearing Statement filed May 20, 2016, down to 27 terms, a reduction of nearly 60%. Defendants pointed out that the 'term "a roof estimation module" appeared twice on the list Defendants had supplied and thus the list was down to 26 claim terms. Defendants suggested that the claim term "perspective view" is a potential area of agreement and the parties could agree that "perspective view" could be accorded the same agreed upon construction as "oblique view" and "oblique perspective view." Defendants also proposed that the term "neither of the two images are part of a stereoscopic pair" be accorded either Defendants' proposed construction or the same agreed upon construction as "not a stereoscopic pair." Plaintiffs rejected both of Defendants' proposals. Plaintiffs also rejected Defendants' invitation to suggest or offer a compromise position. Plaintiffs further rejected Defendants' invitation for Plaintiffs to identify specific claim terms on the list of 26 terms provided by Defendants which Plaintiffs thought could be eliminated by agreement or by compromise. Plaintiffs refused to ME1 24109423v.1 Case 1:15-cv-07025-RBK-JS Document 187-11 Filed 02/21/17 Page 2 of 4 PageID: 8556 Gianni Cutri, Esq. January 26, 2017 Page 2 identify any such terms and further stated they were unwilling to discuss any compromise during the meet and confer. Finally, Plaintiffs stated that they may have one claim term construction for which they may be able to offer a compromise, but declined to disclose which claim term that was. Further, Plaintiffs stated that they were not in a position to share their proposal during the court-ordered meet and confer on reducing claim terms. Defendants look forward to receiving Plaintiffs' proposal, if any. In the future, we would respectfully request that Plaintiffs come to the meet and confer sessions ready to offer their proposals, and to discuss possible compromises. Second, we understand that Plaintiffs' position with respect to its own deficient infringement contentions remains unchanged. Specifically, we now understand that it is Plaintiffs position that they "need to confirm [their] thinking on infringement" via deposition before they are able to provide infringement contentions that comply with L. Pat. R. 3.1. We are surprised by Plaintiffs' admission and believe it underscores both Plaintiffs' inadequate pre-suit investigation and the baseless nature of Plaintiffs' infringement allegations. Furthermore, your admission underscores the futility of conducting a Rule 30(b)(6) deposition on alleged infringement issues before we receive your updated contentions. Several of Plaintiffs' topics request that Defendants prepare a witness to testify on alleged infringement and noninfringement issues. See, e.g., Plaintiffs' Third Notice of Deposition at topics 1, 6, 7, 8. A clear statement of Plaintiffs' infringement theories is a necessary predicate to preparing a witness to testify on these topics. Given that you have now admitted that Plaintiffs still "need to confirm [their] thinking" on their infringement contentions, and that Plaintiffs' infringement theories are therefore in flux, it is factually and logically impossible for Defendants to adequately prepare a witness to testify on these topics. Third, we briefly discussed the three deposition notices just sent by Plaintiffs. Defendants stated they would provide objections to the three deposition notices sent by Plaintiffs in due course. However, Defendants made it clear that serving three separate Rule 30(b)(6) notices was inappropriate, and that Plaintiffs' Rule 30(b)(6) notice should be consolidated into one document. Plaintiffs need to withdraw and resend a revised Rule 30(b)(6) notice. Defendants also stressed that Plaintiffs are incorrect if they contend that they are entitled to more than one seven-hour Rule 30(b)(6) deposition based on the notices they sent. Any modification of the Rule 30(b)(6) requirements need to be discussed between the parties. In any event, we agreed that the dates and places in an acceptable Rule 30(b)(6) notice were a suggestion only, and that the Parties would confer regarding a reasonable schedule and place for all depositions once Defendants had sent their first deposition notices. ME1 24109423v.1 Case 1:15-cv-07025-RBK-JS Document 187-11 Filed 02/21/17 Page 3 of 4 PageID: 8557 Gianni Cutri, Esq. January 26, 2017 Page 3 Finally, Defendants stated they would provide deposition notices for Plaintiffs' witnesses and reiterated their request that Plaintiffs state whether they will produce their former CEO, Mr. Barrows in response to a deposition notice and represent him at deposition. Plaintiffs refused again to state whether they would or would not do so, but said they would get back to Defendants on that issue. Defendants agreed to get back on the issue of Jim Loveland's deposition. Mr. Christie's letter of January 25, 2017 addresses the issues related to Defendants' amended invalidity and noninfringement contentions discussed during the call. We look forward to your position by the end of the business day today as to Plaintiffs' willingness to consent to Defendants' proposed amended invalidity contentions. Sincerely, Lee Carl Bromberg cc: Counsel of Record (via email) ME1 24109423v.1 Case 1:15-cv-07025-RBK-JS Document 187-11 Filed 02/21/17 Page 4 of 4 PageID: 8558 EXHIBIT K Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 1 of 23 PageID: 8559 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) 1 Liza M. Walsh Hector D. Ruiz Eleonore Ofosu-Antwi WALSH PIZZI O’REILLY FALANGA LLP One Riverfront Plaza 1037 Raymond Blvd., 6th Floor Newark, New Jersey 07102 (973) 757-1100 OF COUNSEL: Adam R. Alper (admitted pro hac vice) Brandon H. Brown (admitted pro hac vice) KIRKLAND & ELLIS LLP 555 California Street San Francisco, CA 94104 (415) 439-1400 Michael W. De Vries (admitted pro hac vice) KIRKLAND & ELLIS LLP 333 South Hope Street Los Angeles, CA 90071 (213) 680-8400 Gianni Cutri (admitted pro hac vice) KIRKLAND & ELLIS LLP 300 North LaSalle Chicago, IL 60654 (312) 862-2000 Jared Barcenas (admitted pro hac vice) KIRKLAND & ELLIS LLP 601 Lexington Ave. New York, NY 10022 (212) 446-4800 UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY EAGLE VIEW TECHNOLOGIES, INC., and PICTOMETRY INTERNATIONAL CORP., Plaintiffs, v. XACTWARE SOLUTIONS, INC., and VERISK ANALYTICS, INC., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) Civil Action No. 1:15-cv-07025-RBK-JS Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 2 of 23 PageID: 8560 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) 2 PLAINTIFFS THIRD NOTICE OF DEPOSITION OF DEFENDANTS PURSUANT TO FED. R. CIV. P. 30(B)(6) PLEASE TAKE NOTICE that pursuant to Rule 30(b)(6) of the Federal Rules of Civil Procedure, Plaintiff Eagle View Technologies, Inc. by and through its undersigned counsel, will take the deposition of Defendants Xactware Solutions, Inc. and Verisk Analytics, Inc. upon oral examination. Defendants are hereby directed to designate one or more officers, directors, managing agents, employees, or other persons with knowledge of the matters set forth in Attachment B of this Notice to appear and testify on behalf of Defendants at the deposition. Defendants are further directed to identify the person or persons who will testify pursuant to this notice and the matter or matters about which each person will testify by no later than ten calendar days prior to the date for their expected testimony. To the extent each individual will rely on documents or information not yet produced in this litigation, Defendants are further directed to produce those documents or that information as soon as it is available, and no less than ten calendar days prior to the date for the expected testimony. The deposition will commence on February 14, 2017 at 9:00 am at the office of Kirkland & Ellis, 555 California Street, San Francisco, CA 94104, or at such other time and place as is mutually agreed upon. The deposition will be taken Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 3 of 23 PageID: 8561 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) 3 upon oral examination before an official authorized by law to administer oaths and will be recorded by sound, sound-and-visual means such as videographic means, and/or stenographic means, including stenographic means with real-time display of testimony. The deposition will be taken for the purposes of discovery, for use at the evidentiary hearing in this litigation, at trial and for any other purposes permitted under the Federal Rules of Civil Procedure, or any applicable local rule or court order. Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 4 of 23 PageID: 8562 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) 4 Dated: January 24, 2017 KIRKLAND & ELLIS LLP /s/ Gianni Cutri Gianni Cutri (admitted pro hac vice) KIRKLAND & ELLIS LLP 300 North LaSalle Chicago, IL 60654 (312) 862-2000 Attorneys for Plaintiffs OF COUNSEL: Adam R. Alper (admitted pro hac vice) Brandon H. Brown (admitted pro hac vice) KIRKLAND & ELLIS LLP 555 California Street San Francisco, CA 94104 (415) 439-1400 Michael W. De Vries (admitted pro hac vice) KIRKLAND & ELLIS LLP 333 South Hope Street Los Angeles, CA 90071 (213) 680-8400 Gianni Cutri (admitted pro hac vice) KIRKLAND & ELLIS LLP 300 North LaSalle Chicago, IL 60654 (312) 862-2000 Jared Barcenas (admitted pro hac vice) KIRKLAND & ELLIS LLP 601 Lexington Ave. New York, NY 10022 (212) 446-4800 Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 5 of 23 PageID: 8563 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 1 ATTACHMENT A DEFINITIONS 1. “Eagle View Technologies” means Eagle View Technologies, Inc. and all subsidiaries; parent companies; holding companies; divisions; subdivisions; components; units; partnerships; joint ventures; affiliates; predecessors, successors, and assigns of, or involving each of the forgoing; companies; corporations; unincorporated associations; and all past and present officers, employees, directors, agents, consultants, independent contractors, representatives, subcontractors, accountants, and attorneys of such corporations and divisions; and all other persons acting or purporting to act for, on behalf of, or in the interests of Eagle View Technologies, Inc. 2. “Plaintiffs” shall mean Eagle View Technologies, Inc. and Pictometry International Corp. 3. “Xactware” shall mean Xactware Solutions, Inc. including without limitation all subsidiaries; parent companies; holding companies; divisions; subdivisions; components; units; partnerships; joint ventures; affiliates; predecessors, successors, and assigns of, or involving each of the forgoing; companies; corporations; unincorporated associations; and all past and present officers, employees, directors, agents, consultants, independent contractors, Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 6 of 23 PageID: 8564 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 2 representatives, subcontractors, accountants, and attorneys of such corporations and divisions; and all other persons acting or purporting to act for, on behalf of, or in the interests of Xactware Solutions, Inc. 4. “Insurance Services Offices” or “ISO” shall mean risk Insurance Services Offices, Inc. including without limitation all subsidiaries; parent companies; holding companies; divisions; subdivisions; components; units; partnerships; joint ventures; affiliates; predecessors, successors, and assigns of, or involving each of the forgoing; companies; corporations; unincorporated associations; and all past and present officers, employees, directors, agents, consultants, independent contractors, representatives, subcontractors, accountants, and attorneys of such corporations and divisions; and all other persons acting or purporting to act for, on behalf of, or in the interests of Insurance Services Offices, Inc. 5. “Verisk” shall mean Verisk Analytics, Inc. including without limitation all subsidiaries; parent companies; holding companies; divisions; subdivisions; components; units; partnerships; joint ventures; affiliates; predecessors, successors, and assigns of, or involving each of the forgoing; companies; corporations; unincorporated associations; and all past and present officers, employees, directors, agents, consultants, independent contractors, representatives, subcontractors, accountants, and attorneys of such corporations Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 7 of 23 PageID: 8565 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 3 and divisions; and all other persons acting or purporting to act for, on behalf of, or in the interests of Verisk Analytics, Inc. 6. “Defendants,” “you,” and “your” shall mean Xactware Solutions, Inc., Insurance Services Offices, Inc., or Verisk Analytics, Inc., including without limitation all subsidiaries; parent companies; holding companies; divisions; subdivisions; components; units; partnerships; joint ventures; affiliates; predecessors, successors, and assigns of, or involving each of the forgoing; companies; corporations; unincorporated associations; and all past and present officers, employees, directors, agents, consultants, independent contractors, representatives, subcontractors, accountants, and attorneys of such corporations and divisions; and all other persons acting or purporting to act for, on behalf of, or in the interests of Xactware Solutions, Inc., Insurance Services Offices, Inc., or Verisk Analytics, Inc. 7. The “’436 Patent” means United States Patent No. 8,078,436, issued December 13, 2011, entitled “Aerial roof estimation systems and methods.” 8. The “’840 Patent” means United States Patent No. 8,170,840, issued May 1, 2012, entitled “Pitch determination systems and methods for aerial roof estimation.” Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 8 of 23 PageID: 8566 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 4 9. The “’152 Patent” means United States Patent No. 8,209,152, issued June 26, 2012, entitled “Concurrent display systems and methods for aerial roof estimation.” 10. The “’880 Patent” means United States Patent No. 8,542,880, issued September 24, 2013, entitled “System and process for roof measurement using aerial imagery.” 11. The “’770 Patent” means United States Patent No. 8,818,770, issued August 26, 2014, entitled “Pitch determination systems and methods for aerial roof estimation.” 12. The “’454 Patent” means United States Patent No. 8,825,454, issued September 2, 2014, entitled “Concurrent display systems and methods for aerial roof estimation.” 13. The “’737 Patent” means United States Patent No. 9,135,737, issued September 15, 2015, entitled “Concurrent display systems and methods for aerial roof estimation.” 14. “Asserted Patents” means the ’436 Patent, the ’840 Patent, the ’152 Patent, the ’880 Patent, the ’770 Patent, the ’454 Patent, the ’737 Patent. The term “Asserted Patents” includes each patent individually and all combinations and sub-combinations of the patents collectively so as to give each Topic in Exhibit B the broadest possible scope. Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 9 of 23 PageID: 8567 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 5 15. “Related Patent(s)” shall include without limitation patents issuing directly or indirectly from any ancestor, continuation, continuation-in-part, divisional, or reissue application of the Asserted Patents or from any interference or reexamination proceeding regarding any such patents or applications thereof, as well as foreign counterparts to the Asserted Patents. 16. “Accused Products” means any and all of the products or services accused in Exhibits A-C, F, H-J to Plaintiffs First Amended Disclosure Of Asserted Claims And Infringement Contentions Pursuant to L. Pat. R. 3.1, or as subsequently amended during This Action, individually or collectively, so as to give each Topic in Exhibit B the broadest possible scope, including without limitation each version of Xactimate, Roof InSight, Property InSight, Aerial Sketch, Property InSight Mass Production Tool, and any other Xactware rooftop aerial measurement product, made, used, offered for sale, sold, or licensed in the United States, or imported into the United States by or on behalf of Defendants since September 23, 2009, including but not limited to all Documents and Things derived from or generated, created, outputted, or produced by each version of Xactimate, Roof InSight, Property InSight, Aerial Sketch, Property InSight Mass Production Tool, and any other Xactware rooftop aerial measurement product or service, including without limitation roof estimate reports and electronic files. Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 10 of 23 PageID: 8568 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 6 17. “Defendants Products” means any Product, including the Accused Products, designed, developed, manufactured, marketed, offered for sale, sold, and/or imported by, at the direction of, under the control of, and/or subject to control or agreement with Defendants, including without limitation roof estimate reports or other Documents created by or with the aid of the Accused Products. 18. “Customer” of an Entity, means any Person or Entity that purchases or utilizes products, services, or other Things from the Entity. 19. “Source Code” means human-readable programming language text that defines software, firmware, or electronic hardware descriptions. Source Code files include without limitation files containing code in programming languages including but not limited to the “C,” “C++,” “Python,” and “Java” programming languages. Source Code files further include without limitation “include files,” “make” files, link files, and other human-readable text files used in the generation and/or building of software and/or hardware. 20. “This Action” or “This Case” means the above-captioned proceeding at the United States District Court of New Jersey, Eagle View Technologies, Inc. and Pictometry International Corp. v. Xactware Solutions, Inc. and Verisk Analytics, Inc., Civil Action No. 1:15-cv-07025-RBK-JS. 21. As used herein, “and” and “or” shall, except where the context does not permit, be interpreted to mean and/or. Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 11 of 23 PageID: 8569 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 7 22. As used herein, “any,” “all,” and “each” mean “each and every,” so as to acquire the broadest meaning possible. 23. As used herein, “by” means by or on behalf of. 24. “Communication(s)” means any oral, written, or other contact between two or more Persons or Entities by which any information or knowledge of any nature is transmitted or conveyed or attempted to be transmitted or conveyed, including without limitation letters, memoranda, telegrams, telefaxes, telecopies, telexes or emails, face-to-face meetings, telephone conversations, and telephonic notes in connection with the same. 25. The term “Component” means hardware and/or software incorporated into a Product, including without limitation Source Code, firmware, software libraries, electronic components, ASIC, structural component, and product housing and enclosures. 26. “Concerning” means concerning, regarding, describing, comprising, referring to, Related To, supporting, favoring, opposing, bolstering, detracting from, located in, considered in connection with, bearing on, evidencing, indicating, reporting on, recording, alluding to, responding to, connected with, commenting on, in respect of, about, in Relation To, discussing, showing, describing, reflecting, analyzing, constituting, or being. Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 12 of 23 PageID: 8570 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 8 27. “Document(s)” is defined broadly to be given the full scope of that term as contemplated in Rules 26 and 34 of the Federal Rules of Civil Procedure and any applicable Local Civil Rules of the District of New Jersey and includes without limitation any Thing, any written or graphic matter, and any medium of any type or description upon which intelligence or information is recorded or from which intelligence or information can be perceived, that is or has been in your actual or constructive possession, custody, or control, or of which you have knowledge, regardless of the medium on which it is produced, reproduced, or stored (including without limitation computer programs and files containing any requested information), and any recording or writing, as these terms are defined in Rule 1001 of the Federal Rules of Evidence. This definition encompasses without limitation all tangible Things, all originals (or, if originals are not available, identical copies thereof), all non-identical copies of a Document, all drafts of final Documents, all other written, printed, or recorded matter of any kind, Source Code, and all other data compilations from which information can be obtained and translated if necessary, that are or have been in your actual or constructive possession or control, regardless of the medium on which they are produced, reproduced, or stored (including without limitation computer programs and files containing any requested information together with instructions or programs necessary to search and retrieve such data and Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 13 of 23 PageID: 8571 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 9 hard copies where available and retrievable), any recording or writing, and/or any other documentary material of any nature. 28. “Entity” or “Entities” means any Person, corporation, company, partnership, sole proprietorship, firm, board, joint venture, association, organization, trust, governmental body, agency, authority, commission, or any other juristic Person, business unit, or collective organization, and any legal, governmental, organizational, or political subdivision thereof. The acts of an Entity shall include without limitation the acts of its directors, officers, owners, members, employees, agents, attorneys, and all other representatives acting on the Entity’s behalf. 29. “Person” or “Persons” means any natural individual or individuals. 30. “Prior Art” to any Asserted Patent means all Things, patents, publications, disclosures, sales, or other acts or occurrences included within the broadest meaning of the versions of 35 U.S.C. § 102 (or any subpart thereof) and 35 U.S.C. § 103 applicable to such Asserted Patent. For the avoidance of doubt, the term “Prior Art” also includes publications, patents, patent applications, inventions by others, uses, sales or offers for sale, and disclosures. 31. “Product(s)” means a machine, manufacture, apparatus, device, instrument, mechanism, appliance, process, method, or assemblage of Components or parts (either individually or collectively) that are designed to function together Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 14 of 23 PageID: 8572 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 10 electrically, mechanically, chemically, or otherwise to achieve a particular function or purpose, including without limitation those offered for sale, sold, or currently under development. 32. As used herein, “include” and “including” mean “without limitation,” so as to acquire the broadest meaning possible. 33. “Relate To,” “Relating To,” or “Related To,” when referring to any given subject matter, means without limitation any Document or Thing that in whole or in part and directly or indirectly relates to, concerns, regards, discusses, describes, depicts, demonstrates, shows, evidences, supports, refutes, contradicts, summarizes, analyzes, bears upon, comments upon, pertains to, constitutes, comprises, involves, contains, embodies, reflects, alludes to, identifies, states, mentions, refers to, deals with, or is in any way relevant to the particular subject matter identified. 34. “Thing” and “Things” have the broadest meaning allowable under Rule 34 of the Federal Rules of Civil Procedure. This meaning encompasses without limitation any tangible object of any kind and nature other than a Document, including without limitation prototypes, models, and physical specimens thereof. 35. Any singular term shall be construed to include the plural, and vice versa, unless the context specifically indicates the contrary. Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 15 of 23 PageID: 8573 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 11 36. Any pronoun shall be construed to refer to the masculine, feminine, or neuter gender as is most appropriate in each case. INSTRUCTIONS 1. Any term not specifically defined herein shall be defined in accordance with the Federal Rules of Civil Procedure. 2. If Defendants find the meaning of any term in the Topics in Exhibit B are unclear, then Defendants shall construe the term so as to render responsive any information, Document, or Thing that might otherwise be rendered nonresponsive. 3. To the extent the Topics in Exhibit B seek information, Documents, or Things that are recorded in any form (including electronically-stored Documents such as word processing files and email), Defendants shall take steps to ensure that all such records are preserved for this litigation and that no responsive electronically-stored Documents are erased, deleted, or otherwise rendered inaccessible. 4. The Topics in Exhibit B seek all responsive information, Documents, and Things that are known or available to Defendants or within Defendants’ actual or legal possession, custody, or control. The Topics in Exhibit B seek information, Documents, and Things as of the date hereof and to the full extent Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 16 of 23 PageID: 8574 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 12 allowed by the Federal Rules of Civil Procedure, including all responsive information, Documents, and Things acquired or identified by Defendants up to and including the date(s) of production. 5. For avoidance of doubt, each Topic in Exhibit B should be construed to require that the designee be prepared to also testify regarding the content, existence and location of Documents relating to the Topic and the identities of persons who have and may have knowledge of such events. Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 17 of 23 PageID: 8575 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 1 ATTACHMENT B TOPICS ON WHICH EXAMINATION IS REQUIRED PURSUANT TO THE DEFINITIONS AND INSTRUCTIONS 1. All facts, theories, and arguments underlying any contention by Defendants that any Accused Product does not infringe any Asserted Claim. 2. All Source Code and documentation Related To the Accused Products and any components of the Accused Products, including software components, and any Source Code or documentation Related To any technologies identified and/or requested in Eagle View’s First Set of Interrogatories, Pictometry’s First Set of Interrogatories, Eagle View’s First Set of Requests for Production, and/or Pictometry’s First Set of Requests for Production. 3. Terms and/or phrases from the Asserted Claims that Defendants contend require construction, any support for such contentions, and all Documents and Things that Defendants allege affect, limit, or bear on the interpretation and/or construction of any claims of any of the Asserted Patents. 4. All factual and legal bases for any contention by Defendants that any of the Asserted Patents are invalid under 35 U.S.C. §§ 101, 102, 103, or 112. 5. Defendants’ contentions, and the bases for such contentions, regarding the level of ordinary skill in the art for each of the Asserted Patents. Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 18 of 23 PageID: 8576 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 2 6. Communications regarding the scope of the claims of the Asserted Patents, infringement of the claims of the Asserted Patents by Defendants or any other party, and/or the enforceability of the Asserted Patents. 7. Defendants’ positions on the validity, enforceability, or infringement by Defendants of any Asserted Patent, and any Documents related thereto, including without limitation all Prior Art and related Documents that Defendants contends render any claim of any Asserted Patent invalid, any analysis of the Asserted Patents completed by or on behalf of Defendants, any opinions on validity, enforceability, or infringement, and any patent search conducted by or on behalf of Defendants Relating To any of the Asserted Patents. 8. Defendants’ contentions, affirmative defenses, or counterclaims Related To infringement by Defendants of the Asserted Patents, and any Documents relating thereto. 9. All facts, theories, and arguments that form the basis for any contention by Defendants that any Asserted Patent is unenforceable, including, but not limited to, any information that supports or rebuts Defendants’ contention(s); any legal basis for any such contention(s); and Persons most knowledgeable of, and Documents Relating To, any such contention(s). Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 19 of 23 PageID: 8577 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 3 10. The identity, location, custodian, and disposition of all Documents Relating To, and the identity of all Persons with knowledge regarding customer use of any of the Accused Products and any components of the Accused Products, including software components. 11. All facts or other support for Defendants’ allegation that it relied on Eagle View Technologies’ action and/or inaction when it developed and sold the Accused Products accused of infringing the Asserted Patents, and any Documents supporting or referenced in making this allegation. 12. All Documents filed by Defendants in This Action, and all Documents considered or relied upon in the preparation thereof, including without limitation Defendants Answer to Plaintiffs’ Complaint and Amended Complaint, Invalidity Contentions, Non-Infringement Contentions, and responses to Plaintiffs’ discovery requests. 13. Each Entity or Person with knowledge of any facts set forth in Defendants’ responses to any of Plaintiffs’ interrogatories, or who supplied information used in preparing such responses, or with knowledge of any facts alleged in Defendants’ Answer to the Complaint and Amended Complaint, and the knowledge Defendants believe each Entity or Person possesses. 14. Any Interrogatory, Request for Production, or other discovery request served on Defendants in This Action, and any Defendant response, supplemental Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 20 of 23 PageID: 8578 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 4 response, or lack thereof to such Interrogatory, Request for Production, or other discovery request. 15. All Documents used, considered, or relied upon by Defendants in the preparation of any discovery request or any response or supplemental response to any discovery request served in This Action, and each Person from whom Documents were collected or reviewed for possible production in response to Plaintiffs’ Requests for Production. 16. All Documents and Things responsive to any Request for Production served by Plaintiffs that were, but are no longer, in Defendants’ possession, custody or control. 17. All Documents and Things produced to Defendants by any third party or non- party to This Action, by subpoena or otherwise. 18. Any individual identified by Defendants as likely to have knowledge or relevant facts or any discoverable information in This Action, and the subject(s) of the information the individual is likely to have. 19. The identity, location, custodian, and disposition of all Documents Relating To, and the identity of all Persons with knowledge regarding any Source Code used in the Accused Products and any components of the Accused Products, including software components. Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 21 of 23 PageID: 8579 PLAINTIFFS THIRD DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 5 20. The identity, location, custodian, and disposition of all Documents Relating To, and the identity of all Persons with knowledge regarding the design, development, testing, and customer use of the Accused Products, including without limitation all Source Code, Products, software, technology, business process, technical documentation, customer surveys, Components or evaluations Related To the Accused Products. Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 22 of 23 PageID: 8580 CERTIFICATE OF SERVICE I hereby certify that on January 24, 2017, I caused a copy of the foregoing to be served by electronic mail to the below counsel of record: Scott S. Christie Mark H. Anania Matthew A. Sklar Ravin R. Patel MCCARTER & ENGLISH, LLP Four Gateway Center 100 Mulberry Street Newark, New Jersey 07102 Tel: (973) 622-4444 Fax: (973) 624-7070 schristie@mccarter.com Lee Carl Bromberg (admitted pro hac vice) Thomas R. Fulford (admitted pro hac vice) Brian J. Larivee (admitted pro hac vice) MCCARTER & ENGLISH, LLP 265 Franklin Street Boston, MA 02110 Tel: (617) 449-6500 Fax: (617) 607-9200 lbromberg@mccarter.com /s/ Gianni Cutri Gianni Cutri Case 1:15-cv-07025-RBK-JS Document 187-12 Filed 02/21/17 Page 23 of 23 PageID: 8581 EXHIBIT L Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 1 of 36 PageID: 8582 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) 1 Liza M. Walsh Hector D. Ruiz Eleonore Ofosu-Antwi WALSH PIZZI O’REILLY FALANGA LLP One Riverfront Plaza 1037 Raymond Blvd., 6th Floor Newark, New Jersey 07102 (973) 757-1100 OF COUNSEL: Adam R. Alper (admitted pro hac vice) Brandon H. Brown (admitted pro hac vice) KIRKLAND & ELLIS LLP 555 California Street San Francisco, CA 94104 (415) 439-1400 Michael W. De Vries (admitted pro hac vice) KIRKLAND & ELLIS LLP 333 South Hope Street Los Angeles, CA 90071 (213) 680-8400 Gianni Cutri (admitted pro hac vice) KIRKLAND & ELLIS LLP 300 North LaSalle Chicago, IL 60654 (312) 862-2000 Jared Barcenas (admitted pro hac vice) KIRKLAND & ELLIS LLP 601 Lexington Ave. New York, NY 10022 (212) 446-4800 UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY EAGLE VIEW TECHNOLOGIES, INC., and PICTOMETRY INTERNATIONAL CORP., Plaintiffs, v. XACTWARE SOLUTIONS, INC., and VERISK ANALYTICS, INC., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) Civil Action No. 1:15-cv-07025-RBK-JS Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 2 of 36 PageID: 8583 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) 2 PLAINTIFFS AMENDED FIRST NOTICE OF DEPOSITION OF DEFENDANTS PURSUANT TO FED. R. CIV. P. 30(B)(6) PLEASE TAKE NOTICE that pursuant to Rule 30(b)(6) of the Federal Rules of Civil Procedure, Plaintiff Eagle View Technologies, Inc. by and through its undersigned counsel, will take the deposition of Defendants Xactware Solutions, Inc. and Verisk Analytics, Inc. upon oral examination. Defendants are hereby directed to designate one or more officers, directors, managing agents, employees, or other persons with knowledge of the matters set forth in Attachment B of this Notice to appear and testify on behalf of Defendants at the deposition. Defendants are further directed to identify the person or persons who will testify pursuant to this notice and the matter or matters about which each person will testify by no later than ten calendar days prior to the date for their expected testimony. To the extent each individual will rely on documents or information not yet produced in this litigation, Defendants are further directed to produce those documents or that information as soon as it is available, and no less than ten calendar days prior to the date for the expected testimony. The deposition will commence on February 10, 2017 at 9:00 am at the office of Kirkland & Ellis, 555 California Street, San Francisco, CA 94104, or at such other time and place as is mutually agreed upon. The deposition will be taken Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 3 of 36 PageID: 8584 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) 3 upon oral examination before an official authorized by law to administer oaths and will be recorded by sound, sound-and-visual means such as videographic means, and/or stenographic means, including stenographic means with real-time display of testimony. The deposition will be taken for the purposes of discovery, for use at the evidentiary hearing in this litigation, at trial and for any other purposes permitted under the Federal Rules of Civil Procedure, or any applicable local rule or court order. Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 4 of 36 PageID: 8585 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) 4 Dated: January 29, 2017 KIRKLAND & ELLIS LLP /s/ Gianni Cutri Gianni Cutri (admitted pro hac vice) KIRKLAND & ELLIS LLP 300 North LaSalle Chicago, IL 60654 (312) 862-2000 Attorneys for Plaintiffs OF COUNSEL: Adam R. Alper (admitted pro hac vice) Brandon H. Brown (admitted pro hac vice) KIRKLAND & ELLIS LLP 555 California Street San Francisco, CA 94104 (415) 439-1400 Michael W. De Vries (admitted pro hac vice) KIRKLAND & ELLIS LLP 333 South Hope Street Los Angeles, CA 90071 (213) 680-8400 Gianni Cutri (admitted pro hac vice) KIRKLAND & ELLIS LLP 300 North LaSalle Chicago, IL 60654 (312) 862-2000 Jared Barcenas (admitted pro hac vice) KIRKLAND & ELLIS LLP 601 Lexington Ave. New York, NY 10022 (212) 446-4800 Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 5 of 36 PageID: 8586 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 1 ATTACHMENT A DEFINITIONS 1. “Eagle View Technologies” means Eagle View Technologies, Inc. and all subsidiaries; parent companies; holding companies; divisions; subdivisions; components; units; partnerships; joint ventures; affiliates; predecessors, successors, and assigns of, or involving each of the forgoing; companies; corporations; unincorporated associations; and all past and present officers, employees, directors, agents, consultants, independent contractors, representatives, subcontractors, accountants, and attorneys of such corporations and divisions; and all other persons acting or purporting to act for, on behalf of, or in the interests of Eagle View Technologies, Inc. 2. “Plaintiffs” shall mean Eagle View Technologies, Inc. and Pictometry International Corp. 3. “Xactware” shall mean Xactware Solutions, Inc. including without limitation all subsidiaries; parent companies; holding companies; divisions; subdivisions; components; units; partnerships; joint ventures; affiliates; predecessors, successors, and assigns of, or involving each of the forgoing; companies; corporations; unincorporated associations; and all past and present officers, Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 6 of 36 PageID: 8587 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 2 employees, directors, agents, consultants, independent contractors, representatives, subcontractors, accountants, and attorneys of such corporations and divisions; and all other persons acting or purporting to act for, on behalf of, or in the interests of Xactware Solutions, Inc. 4. “Insurance Services Offices” or “ISO” shall mean risk Insurance Services Offices, Inc. including without limitation all subsidiaries; parent companies; holding companies; divisions; subdivisions; components; units; partnerships; joint ventures; affiliates; predecessors, successors, and assigns of, or involving each of the forgoing; companies; corporations; unincorporated associations; and all past and present officers, employees, directors, agents, consultants, independent contractors, representatives, subcontractors, accountants, and attorneys of such corporations and divisions; and all other persons acting or purporting to act for, on behalf of, or in the interests of Insurance Services Offices, Inc. 5. “Verisk” shall mean Verisk Analytics, Inc. including without limitation all subsidiaries; parent companies; holding companies; divisions; subdivisions; components; units; partnerships; joint ventures; affiliates; predecessors, successors, and assigns of, or involving each of the forgoing; companies; corporations; unincorporated associations; and all past and present officers, Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 7 of 36 PageID: 8588 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 3 employees, directors, agents, consultants, independent contractors, representatives, subcontractors, accountants, and attorneys of such corporations and divisions; and all other persons acting or purporting to act for, on behalf of, or in the interests of Verisk Analytics, Inc. 6. “Defendants,” “you,” and “your” shall mean Xactware Solutions, Inc., Insurance Services Offices, Inc., or Verisk Analytics, Inc., including without limitation all subsidiaries; parent companies; holding companies; divisions; subdivisions; components; units; partnerships; joint ventures; affiliates; predecessors, successors, and assigns of, or involving each of the forgoing; companies; corporations; unincorporated associations; and all past and present officers, employees, directors, agents, consultants, independent contractors, representatives, subcontractors, accountants, and attorneys of such corporations and divisions; and all other persons acting or purporting to act for, on behalf of, or in the interests of Xactware Solutions, Inc., Insurance Services Offices, Inc., or Verisk Analytics, Inc. 7. The “’436 Patent” means United States Patent No. 8,078,436, issued December 13, 2011, entitled “Aerial roof estimation systems and methods.” Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 8 of 36 PageID: 8589 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 4 8. The “’840 Patent” means United States Patent No. 8,170,840, issued May 1, 2012, entitled “Pitch determination systems and methods for aerial roof estimation.” 9. The “’152 Patent” means United States Patent No. 8,209,152, issued June 26, 2012, entitled “Concurrent display systems and methods for aerial roof estimation.” 10. The “’880 Patent” means United States Patent No. 8,542,880, issued September 24, 2013, entitled “System and process for roof measurement using aerial imagery.” 11. The “’770 Patent” means United States Patent No. 8,818,770, issued August 26, 2014, entitled “Pitch determination systems and methods for aerial roof estimation.” 12. The “’454 Patent” means United States Patent No. 8,825,454, issued September 2, 2014, entitled “Concurrent display systems and methods for aerial roof estimation.” 13. The “’737 Patent” means United States Patent No. 9,135,737, issued September 15, 2015, entitled “Concurrent display systems and methods for aerial roof estimation.” Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 9 of 36 PageID: 8590 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 5 14. “Asserted Patents” means the ’436 Patent, the ’840 Patent, the ’152 Patent, the ’880 Patent, the ’770 Patent, the ’454 Patent, the ’737 Patent. The term “Asserted Patents” includes each patent individually and all combinations and sub-combinations of the patents collectively so as to give each Topic in Exhibit B the broadest possible scope. 15. “Related Patent(s)” shall include without limitation patents issuing directly or indirectly from any ancestor, continuation, continuation-in-part, divisional, or reissue application of the Asserted Patents or from any interference or reexamination proceeding regarding any such patents or applications thereof, as well as foreign counterparts to the Asserted Patents. 16. “Accused Products” means any and all of the products or services accused in Exhibits A-C, F, H-J to Plaintiffs First Amended Disclosure Of Asserted Claims And Infringement Contentions Pursuant to L. Pat. R. 3.1, or as subsequently amended during This Action, individually or collectively, so as to give each Topic in Exhibit B the broadest possible scope, including without limitation each version of Xactimate, Roof InSight, Property InSight, Aerial Sketch, Property InSight Mass Production Tool, and any other Xactware rooftop aerial measurement product, made, used, offered for sale, sold, or licensed in the United States, or imported into the United States by or on behalf of Defendants Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 10 of 36 PageID: 8591 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 6 since September 23, 2009, including but not limited to all Documents and Things derived from or generated, created, outputted, or produced by each version of Xactimate, Roof InSight, Property InSight, Aerial Sketch, Property InSight Mass Production Tool, and any other Xactware rooftop aerial measurement product or service, including without limitation roof estimate reports and electronic files. 17. “Defendants Products” means any Product, including the Accused Products, designed, developed, manufactured, marketed, offered for sale, sold, and/or imported by, at the direction of, under the control of, and/or subject to control or agreement with Defendants, including without limitation roof estimate reports or other Documents created by or with the aid of the Accused Products. 18. “Customer” of an Entity, means any Person or Entity that purchases or utilizes products, services, or other Things from the Entity. 19. “Source Code” means human-readable programming language text that defines software, firmware, or electronic hardware descriptions. Source Code files include without limitation files containing code in programming languages including but not limited to the “C,” “C++,” “Python,” and “Java” programming languages. Source Code files further include without limitation Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 11 of 36 PageID: 8592 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 7 “include files,” “make” files, link files, and other human-readable text files used in the generation and/or building of software and/or hardware. 20. “This Action” or “This Case” means the above-captioned proceeding at the United States District Court of New Jersey, Eagle View Technologies, Inc. and Pictometry International Corp. v. Xactware Solutions, Inc. and Verisk Analytics, Inc., Civil Action No. 1:15-cv-07025-RBK-JS. 21. As used herein, “and” and “or” shall, except where the context does not permit, be interpreted to mean and/or. 22. As used herein, “any,” “all,” and “each” mean “each and every,” so as to acquire the broadest meaning possible. 23. As used herein, “by” means by or on behalf of. 24. “Communication(s)” means any oral, written, or other contact between two or more Persons or Entities by which any information or knowledge of any nature is transmitted or conveyed or attempted to be transmitted or conveyed, including without limitation letters, memoranda, telegrams, telefaxes, telecopies, telexes or emails, face-to-face meetings, telephone conversations, and telephonic notes in connection with the same. 25. The term “Component” means hardware and/or software incorporated into a Product, including without limitation Source Code, firmware, software libraries, Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 12 of 36 PageID: 8593 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 8 electronic components, ASIC, structural component, and product housing and enclosures. 26. “Concerning” means concerning, regarding, describing, comprising, referring to, Related To, supporting, favoring, opposing, bolstering, detracting from, located in, considered in connection with, bearing on, evidencing, indicating, reporting on, recording, alluding to, responding to, connected with, commenting on, in respect of, about, in Relation To, discussing, showing, describing, reflecting, analyzing, constituting, or being. 27. “Document(s)” is defined broadly to be given the full scope of that term as contemplated in Rules 26 and 34 of the Federal Rules of Civil Procedure and any applicable Local Civil Rules of the District of New Jersey and includes without limitation any Thing, any written or graphic matter, and any medium of any type or description upon which intelligence or information is recorded or from which intelligence or information can be perceived, that is or has been in your actual or constructive possession, custody, or control, or of which you have knowledge, regardless of the medium on which it is produced, reproduced, or stored (including without limitation computer programs and files containing any requested information), and any recording or writing, as these terms are defined in Rule 1001 of the Federal Rules of Evidence. This definition Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 13 of 36 PageID: 8594 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 9 encompasses without limitation all tangible Things, all originals (or, if originals are not available, identical copies thereof), all non-identical copies of a Document, all drafts of final Documents, all other written, printed, or recorded matter of any kind, Source Code, and all other data compilations from which information can be obtained and translated if necessary, that are or have been in your actual or constructive possession or control, regardless of the medium on which they are produced, reproduced, or stored (including without limitation computer programs and files containing any requested information together with instructions or programs necessary to search and retrieve such data and hard copies where available and retrievable), any recording or writing, and/or any other documentary material of any nature. 28. “Entity” or “Entities” means any Person, corporation, company, partnership, sole proprietorship, firm, board, joint venture, association, organization, trust, governmental body, agency, authority, commission, or any other juristic Person, business unit, or collective organization, and any legal, governmental, organizational, or political subdivision thereof. The acts of an Entity shall include without limitation the acts of its directors, officers, owners, members, employees, agents, attorneys, and all other representatives acting on the Entity’s behalf. Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 14 of 36 PageID: 8595 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 10 29. “Person” or “Persons” means any natural individual or individuals. 30. “Prior Art” to any Asserted Patent means all Things, patents, publications, disclosures, sales, or other acts or occurrences included within the broadest meaning of the versions of 35 U.S.C. § 102 (or any subpart thereof) and 35 U.S.C. § 103 applicable to such Asserted Patent. For the avoidance of doubt, the term “Prior Art” also includes publications, patents, patent applications, inventions by others, uses, sales or offers for sale, and disclosures. 31. “Product(s)” means a machine, manufacture, apparatus, device, instrument, mechanism, appliance, process, method, or assemblage of Components or parts (either individually or collectively) that are designed to function together electrically, mechanically, chemically, or otherwise to achieve a particular function or purpose, including without limitation those offered for sale, sold, or currently under development. 32. As used herein, “include” and “including” mean “without limitation,” so as to acquire the broadest meaning possible. 33. “Relate To,” “Relating To,” or “Related To,” when referring to any given subject matter, means without limitation any Document or Thing that in whole or in part and directly or indirectly relates to, concerns, regards, discusses, describes, depicts, demonstrates, shows, evidences, supports, refutes, Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 15 of 36 PageID: 8596 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 11 contradicts, summarizes, analyzes, bears upon, comments upon, pertains to, constitutes, comprises, involves, contains, embodies, reflects, alludes to, identifies, states, mentions, refers to, deals with, or is in any way relevant to the particular subject matter identified. 34. “Thing” and “Things” have the broadest meaning allowable under Rule 34 of the Federal Rules of Civil Procedure. This meaning encompasses without limitation any tangible object of any kind and nature other than a Document, including without limitation prototypes, models, and physical specimens thereof. 35. Any singular term shall be construed to include the plural, and vice versa, unless the context specifically indicates the contrary. 36. Any pronoun shall be construed to refer to the masculine, feminine, or neuter gender as is most appropriate in each case. INSTRUCTIONS 1. Any term not specifically defined herein shall be defined in accordance with the Federal Rules of Civil Procedure. 2. If Defendants find the meaning of any term in the Topics in Exhibit B are unclear, then Defendants shall construe the term so as to render responsive any Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 16 of 36 PageID: 8597 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT A 12 information, Document, or Thing that might otherwise be rendered nonresponsive. 3. To the extent the Topics in Exhibit B seek information, Documents, or Things that are recorded in any form (including electronically-stored Documents such as word processing files and email), Defendants shall take steps to ensure that all such records are preserved for this litigation and that no responsive electronically-stored Documents are erased, deleted, or otherwise rendered inaccessible. 4. The Topics in Exhibit B seek all responsive information, Documents, and Things that are known or available to Defendants or within Defendants’ actual or legal possession, custody, or control. The Topics in Exhibit B seek information, Documents, and Things as of the date hereof and to the full extent allowed by the Federal Rules of Civil Procedure, including all responsive information, Documents, and Things acquired or identified by Defendants up to and including the date(s) of production. 5. For avoidance of doubt, each Topic in Exhibit B should be construed to require that the designee be prepared to also testify regarding the content, existence and location of Documents relating to the Topic and the identities of persons who have and may have knowledge of such events. Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 17 of 36 PageID: 8598 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 1 ATTACHMENT B TOPICS ON WHICH EXAMINATION IS REQUIRED PURSUANT TO THE DEFINITIONS AND INSTRUCTIONS 1. Defendants’ designations for each Accused Product and any components of the Accused Products, including software components, and each version, model, or other variation thereof, including but not limited to full product names, internal names, code names, development names, and project names. 2. The design, development, functionality, architecture, implementation, operation and features of each Accused Product and any components of the Accused Products, including software components. 3. Any differences in design or operation of different versions or generations of each Accused Product and any components of the Accused Products, including software components. 4. The organization of source code related to each Accused Product and any components of the Accused Products, including software components. 5. The use of each Accused Product, and any components of the Accused Products, including software components, including such use within or outside the United States. Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 18 of 36 PageID: 8599 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 2 6. The October 11, 2016 Declaration of Jeffery D. Lewis in Support of Defendants’ Xactware Solutions, Inc. and Verisk Analytics, Inc.’s Opposition to Plaintiffs’ Motion to Amend Infringement Contentions, including all factual assertions therein and all Documents on which those assertions were based. 7. The identity, location, custodian, and disposition of all Documents Relating To, and the identity of all Persons with knowledge regarding any of topics 1-6. 8. All information concerning whether and for what reason each Accused Product is commercially successful. 9. All promotional literature, marketing, or advertising for each Accused Product. 10. The intended and/or target customers, purchasers, or end-users of each Accused Product. 11. How Defendants intend for customers, purchasers, or end-users to use each Accused Product. 12. Research, design, use, development, manufacturing, marketing, servicing, sales, or other Product administration or support activities for each Accused Product and any components of the Accused Products, including software components, including where such work is done, the work done at each location, and the number of personnel involved at each location. Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 19 of 36 PageID: 8600 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 3 13. The testing, quality control, and debugging of the Accused Products and any components of the Accused Products, including software components, including where such work is done, the work done at each location, and the number of personnel involved at each location. 14. The impetus for designing, developing, and selling the Accused Products. 15. Any third party involvement in the design, development, programming, creation, marketing, sale, or resale of any Accused Product. 16. Defendants’ strategy and methodology to generate new products, potential new products, and product development ideas, including its process of implementing new product designs, potential product designs, and product development ideas, including but not limited to the Accused Products. 17. Defendants’ Customers’ use of any of the Accused Products. 18. All Communications with any users, purchasers, customers, or licensees regarding the Accused Products, including but not limited to Communications regarding features, enhancements, problems, concerns, comparisons with other products, pricing, or discounts. 19. Training, classes, tutorial or other educational programs, materials, or manuals Related To the Accused Products, including but not limited to training, classes, tutorials, or other educational programs, materials, or manuals provided to Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 20 of 36 PageID: 8601 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 4 Customers Related to the Accused Products, or training, classes, tutorials, or other educational programs, materials, or manuals Related To the Mass Production Tool. 20. Documentation provided to users and/or purchasers of the Accused Products, and Documents and Things that are or have been included with the sale, distribution, or use of the Accused Products. 21. The dates and circumstances Relating To when and how Defendants first learned of the Asserted Patents. 22. The dates and circumstances Relating To when and how Defendants first learned of EagleView. 23. Each and every of Defendants’ Products that Defendants believe competes with Eagle View Technologies’ Products. 24. The factual allegations contained within any filings made by or on behalf of Defendants in In re Verisk Analytics, Inc., Insurance Service Office, Inc., and EagleView Technology Corp., FTC Docket No. 9363 (2014). 25. Any efforts by Defendants to market, advertise, or promote itself as similar to Eagle View Technologies, or to promote the Accused Products and any components of the Accused Products, including software components, or other Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 21 of 36 PageID: 8602 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 5 Defendants Products as similar to Eagle View Technologies’ Products, and Documents relating thereto. 26. Any assessment, consideration, or review by Defendants of Eagle View Technologies’ products or patents. 27. Any presentation or meeting, and anything discussed or addressed at any such meeting, Relating To Eagle View Technologies, Eagle View Technologies’ Products, or the Asserted Patents. 28. The identity, location, custodian, and disposition of all Documents Relating To, and the identity of all Persons with knowledge regarding any efforts to emulate Eagle View Technologies’ Products, software, technology, patents, or business process. 29. The identify, location, custodian, and disposition of all Documents Relating To efforts by Defendants to market, advertise, and/or promote itself as similar to Eagle View Technologies. 30. Documents Concerning, Eagle View Technologies’ former or current employees, including but not limited to Chris Barrows, Bill Bunker, Rishi Daga, David Carlson, and Chris Pershing. Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 22 of 36 PageID: 8603 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 6 31. Any Communications between Defendants and any other Entity Concerning Eagle View Technologies, the Asserted Patents, Eagle View Technologies’ Products or software, or This Action. 32. Any Eagle View Technologies’ Source Code, Products, software, Documents, or technical documentation in the possession, custody or control of Defendants, the circumstances by which Defendants acquired the same, and all Persons knowledgeable about the same. 33. Any current or former employees of Defendants who were previously employed by Eagle View Technologies, and any Documents in such Person’s or Persons’ possession, custody, or control, that were generated while such Person or Persons was or were employed by Eagle View Technologies, including without limitation where such Document(s) contain(s) any of Eagle View Technologies’ proprietary information; or any Person or Persons that brought such Documents to Defendants. 34. Any communications referring or Relating To Eagle View Technologies or any Asserted Patent or Related Patent. 35. Any effort by Defendants to copy or otherwise emulate or replicate any of Eagle View Technologies’ Products, software, technology, patents, or business process. Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 23 of 36 PageID: 8604 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 7 36. Any similarities or differences between Eagle View Technologies’ aerial rooftop measurement products or software and those of Defendants, including the Accused Products and any components of the Accused Products, including software components. 37. Any training received by Defendants’ employees, consultants, and contractors, on any of Eagle View Technologies Product. 38. The identity, location, custodian, and disposition of all Documents Relating To, and the identity of all Persons with knowledge regarding Eagle View Technologies’ Source Code, Products, software, technology, business process, or technical documentation in the possession, custody, or control of Defendants. 39. The commercial relationship between Defendants and Eagle View Technologies. 40. Defendants’ corporate structure, including all of Defendants’ predecessors-in- interest, subsidiaries, parents, holding companies, related corporations, partnerships, joint ventures, divisions, and affiliates. 41. Defendants’ organizational structures Related To the Accused Products: (a) engineering, design, research and development; (b) distribution; (c) marketing, sales, and promotion; and (d) intellectual property, including all Entities and Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 24 of 36 PageID: 8605 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 8 individuals involved with decision-making pertaining to the funding or control of each of the foregoing (a)-(d). 42. Identification of any of Defendants’ business units, subsidiaries, holdings, and/or departments that make, use, sell, offer for sale, or import into the United States any Accused Product. 43. Activities of Geomni or its employees, Related To any Accused Product, including including but not limited to intellectual property, sales, marketing, research, development, use, testing, and communications. 44. Activities of Insurance Services Office, or its employees, Related To any Accused Product, including but not limited to intellectual property, sales, marketing, research, development, use, testing, and communications. 45. Identification of any other entity known to Defendants with activities, employees, sales, marketing, research, development, use, testing, and communications Related To any Accused Product. 46. Interactions between Geomni and either Defendant. 47. Interactions between Insurance Services Office and either Defendant. 48. Interactions between Verisk and Xactware. 49. Defendants’ practice and procedure for assessing patent infringement risks from the manufacture, importation, use or sale of its products in the United States and Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 25 of 36 PageID: 8606 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 9 how those practices and procedures have been applied regarding the Accused Products. 50. The identity of any designs or configurations that Defendants contend constitute non-infringing alternatives to the Accused Products, the cost of implementing such designs or configurations, the availability and acceptability of such designs or configurations, and the time frame for when such designs or configurations were available. 51. Defendants’ belief regarding whether it was willfully infringing the Asserted Patents after Defendants became aware of the Patent-in-Suit and the basis for any such belief. 52. Any Documents, opinions, or communications Related To the validity of the Asserted Patents or the Accused Products in view of the Asserted Patents, including opinions of counsel. 53. Any efforts, attempts, or plans by Defendants to design, redesign, commercialize or modify any Accused Products, any components of the Accused Products, including software components, or other Defendants’ Products in view of the Asserted Patents, including any actions taken to avoid infringement of the Asserted Patents by the Accused Products. Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 26 of 36 PageID: 8607 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 10 54. Market research, market analyses, competitive analyses, business plans, forecasts, marketing plans, and/or user evaluations directed to the Accused Products. 55. All consumer research on the Accused Products. 56. All marketing strategy documents on the Accused Products. 57. The commercial success and profitability of the Accused Products, including any demand for, touting, and praise of the Accused Products. 58. All Documents outlining the value of the Accused Products and any products that compete with the Accused Products. 59. The identity of all Products that compete with the Accused Products and the advantages and disadvantages of the Accused Products as compared to these Products in the markets relating to roof reports. 60. The relative importance and valuation of the individual features of the Accused Products and any components of the Accused Products, including software components, and Defendants’ basis for this determination. 61. Marketing, advertising, and/or promotion of the Accused Products, including but not limited to communications with customers and distributors, any market studies, market analyses, competitive studies, competitive analyses, material given to sales personnel, product details, business plans, forecasts, marketing Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 27 of 36 PageID: 8608 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 11 plans, and user evaluations related to the Accused Products or the products that compete with the Accused Products. 62. The market(s) in which the Accused Products compete, Defendants’ share of that market(s), and the product characteristics or features that are necessary to be part of that market(s). 63. The volume of the Accused Products’ sales and from first sale to the present, by units and by dollars on a monthly, quarterly, and annual basis, including gross and net sales and how Defendants determine these amounts. 64. Price(s) at which Defendants have sold the Accused Products since their first sale, and cost of goods and gross profit for each Accused Product since its first sale, as well as Defendants’ pricing policies, established list price(s), average sales price, willingness to negotiate price, price agreements, pricing targets, and pricing trends. 65. The distribution of the Accused Products, including but not limited to projected sales, distribution channels, strategies, forecasts, and projections. 66. Costs associated with research and development, manufacturing, marketing, and sales of the Accused Products and any components of the Accused Products, including software components, including the allocation of costs as expenses in calculating royalties paid, profit margin, and gross and net profit. Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 28 of 36 PageID: 8609 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 12 67. Spending on research and development on the Accused Products and any components of the Accused Products, including software components, as well as spending on research and development on non-accused products or features. 68. The gross and net profitability of the Accused Products on a monthly, quarterly, and annual basis from first sale to the present, including how Defendants determine those amounts, and the profits and losses of the smallest business unit to which the revenues of the Accused Products are attributed. 69. Defendants’ financial reporting and cost accounting systems and the regular financial reports generated therefrom, as well as the content and source of financial and damages-related information produced by Defendants in this litigation, including, but not limited to, the interpretation of such information. 70. Defendants’ financial reporting in relation to any related Entities (e.g. Verisk Analytics, Inc.), and cost accounting systems and the regular financial reports generated therefrom, as well as the content and source of financial and damages-related information produced by Defendants in this litigation, including, but not limited to, the interpretation of such information. 71. Any of Defendants’ Products intended to be used in conjunction with, provide a way to order, or that utilize the Accused Products, including whether Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 29 of 36 PageID: 8610 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 13 Defendants Products are designed to be used in conjunction with, provide a way to order, or that utilize the Accused Products. 72. The volume of any products identified in Topic 71 from first sale of the Accused Products to the present, by units and by dollars on a monthly, quarterly, and annual basis, including gross and net sales and how Defendants determines these amounts. 73. Price(s) at which Defendants has sold any products identified in Topic 71 since the first sale of the Accused Products, as well as Defendants’ pricing policies, established list price(s), average sales price, willingness to negotiate price, pricing targets and pricing trends. 74. The distribution of any products identified in Topic 71, including but not limited to projected sales, distribution channels, strategies, forecasts, and projections. 75. The gross and net profitability of any products identified in Topic 71 on a monthly, quarterly, and annual basis from the first sale of the Accused Products to the present, including how Defendants determine those amounts. 76. Manner in which each of Xactware and Verisk compute their net profits in the normal course of business, the specific cost factors associated with the Accused Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 30 of 36 PageID: 8611 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 14 Products, and the manner in which each of Xactware and Verisk maintain their financial records relating to the Accused Products. 77. All license agreements entered into by Defendants that relate to (a) the Accused Products, or (c) that are comparable to a license that you would have taken in a hypothetical negotiation in this case, including the terms of such license agreements and any and all consideration paid or received by Defendants under such license agreements. 78. Any of Defendants’ policies and/or business plans concerning the licensing of the Accused Products or intellectual property covering the Accused Products. 79. Any standard or industry royalty rate for licensing technology that is similar to the Accused Products or that is similar to the inventions of the Asserted Patents. 80. All facts, theories, and arguments underlying any contention by Defendants that any Accused Product does not infringe any Asserted Claim. 81. All Source Code and documentation Related To the Accused Products and any components of the Accused Products, including software components, and any Source Code or documentation Related To any technologies identified and/or requested in Eagle View’s First Set of Interrogatories, Pictometry’s First Set of Interrogatories, Eagle View’s First Set of Requests for Production, and/or Pictometry’s First Set of Requests for Production. Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 31 of 36 PageID: 8612 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 15 82. Terms and/or phrases from the Asserted Claims that Defendants contend require construction, any support for such contentions, and all Documents and Things that Defendants allege affect, limit, or bear on the interpretation and/or construction of any claims of any of the Asserted Patents. 83. All factual and legal bases for any contention by Defendants that any of the Asserted Patents are invalid under 35 U.S.C. §§ 101, 102, 103, or 112. 84. Defendants’ contentions, and the bases for such contentions, regarding the level of ordinary skill in the art for each of the Asserted Patents. 85. Communications regarding the scope of the claims of the Asserted Patents, infringement of the claims of the Asserted Patents by Defendants or any other party, and/or the enforceability of the Asserted Patents. 86. Defendants’ positions on the validity, enforceability, or infringement by Defendants of any Asserted Patent, and any Documents related thereto, including without limitation all Prior Art and related Documents that Defendants contends render any claim of any Asserted Patent invalid, any analysis of the Asserted Patents completed by or on behalf of Defendants, any opinions on validity, enforceability, or infringement, and any patent search conducted by or on behalf of Defendants Relating To any of the Asserted Patents. Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 32 of 36 PageID: 8613 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 16 87. Defendants’ contentions, affirmative defenses, or counterclaims Related To infringement by Defendants of the Asserted Patents, and any Documents relating thereto. 88. All facts, theories, and arguments that form the basis for any contention by Defendants that any Asserted Patent is unenforceable, including, but not limited to, any information that supports or rebuts Defendants’ contention(s); any legal basis for any such contention(s); and Persons most knowledgeable of, and Documents Relating To, any such contention(s). 89. The identity, location, custodian, and disposition of all Documents Relating To, and the identity of all Persons with knowledge regarding customer use of any of the Accused Products and any components of the Accused Products, including software components. 90. All facts or other support for Defendants’ allegation that it relied on Eagle View Technologies’ action and/or inaction when it developed and sold the Accused Products accused of infringing the Asserted Patents, and any Documents supporting or referenced in making this allegation. 91. All Documents filed by Defendants in This Action, and all Documents considered or relied upon in the preparation thereof, including without limitation Defendants Answer to Plaintiffs’ Complaint and Amended Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 33 of 36 PageID: 8614 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 17 Complaint, Invalidity Contentions, Non-Infringement Contentions, and responses to Plaintiffs’ discovery requests. 92. Each Entity or Person with knowledge of any facts set forth in Defendants’ responses to any of Plaintiffs’ interrogatories, or who supplied information used in preparing such responses, or with knowledge of any facts alleged in Defendants’ Answer to the Complaint and Amended Complaint, and the knowledge Defendants believe each Entity or Person possesses. 93. Any Interrogatory, Request for Production, or other discovery request served on Defendants in This Action, and any Defendant response, supplemental response, or lack thereof to such Interrogatory, Request for Production, or other discovery request. 94. All Documents used, considered, or relied upon by Defendants in the preparation of any discovery request or any response or supplemental response to any discovery request served in This Action, and each Person from whom Documents were collected or reviewed for possible production in response to Plaintiffs’ Requests for Production. 95. All Documents and Things responsive to any Request for Production served by Plaintiffs that were, but are no longer, in Defendants’ possession, custody or control. Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 34 of 36 PageID: 8615 PLAINTIFFS AMENDED FIRST DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 18 96. All Documents and Things produced to Defendants by any third party or non- party to This Action, by subpoena or otherwise. 97. Any individual identified by Defendants as likely to have knowledge or relevant facts or any discoverable information in This Action, and the subject(s) of the information the individual is likely to have. 98. The identity, location, custodian, and disposition of all Documents Relating To, and the identity of all Persons with knowledge regarding any Source Code used in the Accused Products and any components of the Accused Products, including software components. 99. The identity, location, custodian, and disposition of all Documents Relating To, and the identity of all Persons with knowledge regarding the design, development, testing, and customer use of the Accused Products, including without limitation all Source Code, Products, software, technology, business process, technical documentation, customer surveys, Components or evaluations Related To the Accused Products. Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 35 of 36 PageID: 8616 CERTIFICATE OF SERVICE I hereby certify that on January 29, 2017, I caused a copy of the foregoing to be served by electronic mail to the below counsel of record: Scott S. Christie Mark H. Anania Matthew A. Sklar Ravin R. Patel MCCARTER & ENGLISH, LLP Four Gateway Center 100 Mulberry Street Newark, New Jersey 07102 Tel: (973) 622-4444 Fax: (973) 624-7070 schristie@mccarter.com Lee Carl Bromberg (admitted pro hac vice) Thomas R. Fulford (admitted pro hac vice) Brian J. Larivee (admitted pro hac vice) MCCARTER & ENGLISH, LLP 265 Franklin Street Boston, MA 02110 Tel: (617) 449-6500 Fax: (617) 607-9200 lbromberg@mccarter.com /s/ Gianni Cutri Gianni Cutri Case 1:15-cv-07025-RBK-JS Document 187-13 Filed 02/21/17 Page 36 of 36 PageID: 8617