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

REPLY BRIEF to Opposition to Motion

D.N.J.February 27, 2017

Liza M. Walsh Hector D. Ruiz Eleonore Ofosu-Antwi WALSH PIZZI O’REILLY FALANGA LLP One Riverfront Plaza 1037 Raymond Boulevard, Suite 600 Newark, New Jersey 07102 (973) 757-1100 OF COUNSEL (admitted pro hac vice): Adam R. Alper KIRKLAND & ELLIS LLP 555 California Street San Francisco, CA 94104 (415) 439-1400 Michael W. De Vries KIRKLAND & ELLIS LLP 333 South Hope Street Los Angeles, CA 90071 (213) 680-8400 Jared Barcenas KIRKLAND & ELLIS LLP 601 Lexington Ave. New York, NY 10022 (212) 446-4800 Gianni Cutri KIRKLAND & ELLIS LLP 300 North LaSalle Chicago, IL 60654 (312) 862-2000 Simeon G. Papacostas KIRKLAND & ELLIS LLP 300 North LaSalle Chicago, IL 60654 (312) 862-2000 Brandon H. Brown KIRKLAND & ELLIS LLP 555 California Street San Francisco, CA 94104 (415) 439-1400 Attorneys for Plaintiffs 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 Electronically Filed PLAINTIFF EAGLE VIEW’S REPLY BRIEF IN SUPPORT OF ITS MOTION TO COMPEL 30(b)(6) DEPOSITION ON INFRINGEMENT TOPICS Case 1:15-cv-07025-RBK-JS Document 193 Filed 02/27/17 Page 1 of 8 PageID: 9028 i TABLE OF CONTENTS Page I. Introduction ......................................................................................................................... 1 II. Eagle View Did Not “Admit” That It Has Not Confirmed Its Infringement Theories............................................................................................................................... 1 III. Eagle View Did Not Substantively Modify Its 30(b)(6) Notice Topics Or Remove The Word “Infringement” ................................................................................................... 3 IV. Conclusion .......................................................................................................................... 5 Case 1:15-cv-07025-RBK-JS Document 193 Filed 02/27/17 Page 2 of 8 PageID: 9029 1 I. INTRODUCTION Plaintiff Eagle View Technologies, Inc. (“Eagle View”) provides the following reply to Defendants’ opposition to Eagle View’s Motion to Compel Deposition Testimony. II. EAGLE VIEW DID NOT “ADMIT” THAT IT HAS NOT CONFIRMED ITS INFRINGEMENT THEORIES Defendants contend that Eagle View “admitted that they still have not confirmed their infringement theories,”1 calling this a “shocking admission.” Opp.2 at 1, 7. Defendants further contend that Eagle View “offered no response” to Defendants’ January 26, 2017 correspondence raising this alleged “admission,” concluding that Eagle View has “effectively conced[ed] the point.” Opp. at 12-13. Eagle View disputed Defendants’ contention in correspondence summarizing the meet and confer in question: I write concerning your January 26, 2017 Letter that purports to summarize our January 25, 2017 meet and confer, in particular with respect to Plaintiffs’ infringement contentions and our demand for a deposition concerning the operation of the accused products. Your letter mischaracterizes our discussion as well as our position with respect to Plaintiffs’ infringement contentions. You state that “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” and claim that “Plaintiffs' infringement theories are therefore 1 Defendants’ alleged quotations of Eagle View’s counsel appear to vary and expand throughout Defendants’ brief. For example, the Declaration of S. Christie quotes Eagle View’s counsel as stating “confirm [their] thinking,” but Defendants’ briefing expands the quote to “confirm [their] thinking on their infringement theories,” Opp. at 7 (emphasis added), and elsewhere claims that the quote was actually “need to confirm [their] thinking on infringement.” Opp. at 1 (emphasis added). Eagle View disputes Defendants’ characterization of the meet and confer and long ago notified Defendants of this fact. Eagle View believes that its correspondence, quoted in this briefing, sufficiently rebuts Defendants’ assertions regarding these alleged quotes, but Eagle View is willing to submit a declaration on this issue, if the Court prefers. 2 “Opp.” refers to Defendants’ Opposition to Plaintiff Eagle View’s Motion to Compel 30(b)(6) Deposition Testimony. (Dkt. No. 187). Case 1:15-cv-07025-RBK-JS Document 193 Filed 02/27/17 Page 3 of 8 PageID: 9030 2 in flux.” This is incorrect. Plaintiffs’ position was stated in our January 20, 2017 letter: “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.” (Ex. 8, Email from Cutri to Bromberg, Jan. 29, 2017) (emphasis added).3 Accordingly, Eagle View did not “effectively conced[e] the point,” but instead affirmatively disputed it. More fundamentally, this alleged “admission” makes no sense. As discussed in contemporaneous briefings, Eagle View’s infringement contentions and theories have already been confirmed by photographic evidence of Defendants’ software caught in the act of infringement. (Dkt. No. 183 at 1). These photographs are accompanied by annotations and textual descriptions that describe the infringing functionality, bolstered by exemplary quotes from Defendants’ own documents. (Id.). These are the same contentions that Defendants previously objected to and opposed during the motion to amend briefing. (Dkt. No. 132). The Court considered all of Defendants’ objections and allowed the amended contentions. (Dkt. No. 139; Ex. 3). In response to the amended contentions, Defendants did not assert that they could not understand Eagle View’s theory or contentions, but instead served over 50 pages of non-infringement contentions. (Ex. 11). At this point, both parties know Eagle View’s infringement theory. 3 Exhibits numbered 1–11 refer to the exhibits attached to the Feb. 7, 2017 Declaration of Liza M. Walsh filed in support of Eagle View’s opening motion. (Dkt. No. 172-1). Exhibits numbered 12–13 refer to exhibits attached to the Declaration of Liza M. Walsh filed herewith. Lettered exhibits refer to the exhibits attached to the Declaration of S. Christie. (Dkt. No. 187- 1). Case 1:15-cv-07025-RBK-JS Document 193 Filed 02/27/17 Page 4 of 8 PageID: 9031 3 After responding to Eagle View’s contentions, Defendants requested that Eagle View add additional citations to source code and technical documents to its infringement contentions and Eagle View agreed to do so. (Dkt. 159 at 30). As Eagle View explained to Defendants, testimony from one of Defendants’ knowledgeable engineers will be relevant to Eagle View’s infringement contentions and the requested amendment; a deposition will allow Eagle View to explore the accuracy, completeness and foundation of Defendants’ internal materials, and, depending on the witness(es)’ testimony, enable Eagle View to include citations to additional relevant evidence in its contentions. (See Dkt. No. 173 at 6-7). III. EAGLE VIEW DID NOT SUBSTANTIVELY MODIFY ITS 30(B)(6) NOTICE TOPICS OR REMOVE THE WORD “INFRINGEMENT” Defendants also assert that Eagle View “admitted” that its infringement contentions were insufficient by allegedly dropping the word “infringement” from its 30(b)(6) deposition topics in response to Defendants’ complaints. (See Opp. at 9). According to Defendants, Eagle View “withdrew [its] 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.” (Id. at 20). Eagle View did not drop any words from its 30(b)(6) deposition topics, let alone remove the word “infringement” or “infringe” or any other derivative. By way of background, Eagle View first served its 30(b)(6) deposition requests on Defendants on January 24, 2017 (“Original Notices”). In the Original Notices, Eagle View’s requests were separated into three different documents, organized by subject area, in order to ease the parties’ ability to discuss the notices. (Exs. 10, 12, K). Defendants objected to this approach, requesting that Eagle View’s notices be “consolidated into one document.” (Ex. 7, Letter from Bromberg to Cutri, Jan. 26, 2017). In order to avoid a dispute, Eagle View complied by consolidating its requests into a single document, Case 1:15-cv-07025-RBK-JS Document 193 Filed 02/27/17 Page 5 of 8 PageID: 9032 4 renumbering those requests, and serving an amended notice on January 29, 2017 (“Amended Notice”). (Ex. 8, Email from Cutri to Bromberg, Jan. 29, 2017; Ex. L (Amended Notice)). In doing so, Eagle View did not make any substantive changes to its 30(b)(6) deposition topics. As can be seen from the exemplary list below, Eagle View did not remove the word “infringement” from its 30(b)(6) requests. Topics from Original Notices Topics from Amended Notice 10. Defendants’ practice and procedure for assessing patent infringement risks from the manufacture, importation, use or sale of its products in the United States and how those practices and procedures have been applied regarding the Accused Products. Ex. 12, Second 30(b)(6) Notice, Topic 10 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 how those practices and procedures have been applied regarding the Accused Products. Ex. L, Amended 30(b)(6) Notice, Topic 49 11. 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. Ex. 12, Second 30(b)(6) Notice, Topic 11 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. Ex. L, Amended 30(b)(6) Notice, Topic 50 12. 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. Ex. 12, Second 30(b)(6) Notice, Topic 12 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. Ex. L, Amended 30(b)(6) Notice, Topic 51 Additionally, topics 1–7 in the Amended Notice, which are the subject of Eagle View’s motion to compel, pertain to the operation of the accused technology. Those topics likewise appeared in the Original Notices and were not altered in any way when they were transferred to Case 1:15-cv-07025-RBK-JS Document 193 Filed 02/27/17 Page 6 of 8 PageID: 9033 5 the Amended Notice. These facts can be confirmed by comparing the Original Notices at Exhibits 10, 12, and K with the Amended Notice at Exhibit L. To assist in this exercise, the table attached as Exhibit 13 excerpts topics 1–7, as well as every topic from the Original Notices that contains the words “infringe” or “infringement,” in the first column, along with the corresponding topic found verbatim in the Amended Notice, in the second column. Accordingly, Eagle View did not alter its 30(b)(6) topics as Defendants claim. IV. CONCLUSION For the foregoing reasons and the reasons set forth in Eagle View’s opening submission in support of its motion, Eagle View respectfully submits that the Court should grant its motion to compel. Case 1:15-cv-07025-RBK-JS Document 193 Filed 02/27/17 Page 7 of 8 PageID: 9034 Dated: February 27, 2017 Respectfully submitted, WALSH PIZZI O’REILLY FALANGA LLP s/ Liza M. Walsh Liza M. Walsh Hector D. Ruiz Eleonore Ofosu-Antwi WALSH PIZZI O’REILLY FALANGA LLP One Riverfront Plaza 1037 Raymond Boulevard, Suite 600 Newark, New Jersey 07102 (973) 757-1100 OF COUNSEL (admitted pro hac vice): Adam R. Alper Brandon H. Brown KIRKLAND & ELLIS LLP 555 California Street San Francisco, CA 94104 (415) 439-1400 Michael W. De Vries KIRKLAND & ELLIS LLP 333 South Hope Street Los Angeles, CA 90071 (213) 680-8400 Gianni Cutri Simeon G. Papacostas KIRKLAND & ELLIS LLP 300 North LaSalle Chicago, IL 60654 (312) 862-2000 Attorneys for Plaintiffs Jared Barcenas KIRKLAND & ELLIS LLP 601 Lexington Ave. New York, NY 10022 (212) 446-4800 Case 1:15-cv-07025-RBK-JS Document 193 Filed 02/27/17 Page 8 of 8 PageID: 9035 Liza M. Walsh Hector D. Ruiz Eleonore Ofosu-Antwi WALSH PIZZI O’REILLY FALANGA LLP One Riverfront Plaza 1037 Raymond Boulevard, Suite 600 Newark, NJ 07102 (973) 757-1100 OF COUNSEL (admitted pro hac vice): Adam R. Alper Brandon H. Brown KIRKLAND & ELLIS LLP 555 California Street San Francisco, CA 94104 (415) 439-1400 Michael W. De Vries KIRKLAND & ELLIS LLP 333 South Hope Street Los Angeles, CA 90071 (213) 680-8400 Jared Barcenas Corey Gerson KIRKLAND & ELLIS LLP 601 Lexington Ave New York, NY 10022 (212) 446-4800 Gianni Cutri Simeon G. Papacostas KIRKLAND & ELLIS LLP 300 North LaSalle Chicago, IL 60654 (312) 862-2000 Attorneys for Plaintiffs 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) DECLARATION OF LIZA M. WALSH Filed Electronically I, Liza M. Walsh, hereby certify and state: Case 1:15-cv-07025-RBK-JS Document 193-1 Filed 02/27/17 Page 1 of 2 PageID: 9036 2 1. I am an attorney-at-law admitted to practice before this Court and am a partner at Walsh Pizzi O’Reilly Falanga LLP, counsel of record for Plaintiff Eagle View Technologies, Inc. (“Plaintiff”) in the above-captioned action. 2. I submit this Declaration in support of Plaintiff’s Reply Brief in Further Support of its Motion to Compel 30(b)(6) Deposition on Infringement Topics. 3. Attached hereto as Exhibit 12 is a true and correct copy of Plaintiff’s Second Notice of Deposition of Defendants Pursuant to Fed. R. Civ. P. 30(b)(6), served on January 24, 2017. 4. Attached hereto as Exhibit 13 is a true and correct copy of copy of a table comparing certain topics from Plaintiff’s 30(b)(6) Deposition Notices, served on January 24, 2017, to topics from Plaintiff’s Amended 30(b)(6) Deposition Notice, served on January 29, 2017. I hereby certify that the foregoing statements made by me are true. I am aware that if any of the foregoing statements made by me is willfully false, I am subject to punishment. Dated: February 27, 2017 s/ Liza M. Walsh Liza M. Walsh Case 1:15-cv-07025-RBK-JS Document 193-1 Filed 02/27/17 Page 2 of 2 PageID: 9037 Exhibit 12 Case 1:15-cv-07025-RBK-JS Document 193-2 Filed 02/27/17 Page 1 of 30 PageID: 9038 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 2 of 30 PageID: 9039 PLAINTIFFS SECOND DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) 2 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 3 of 30 PageID: 9040 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 4 of 30 PageID: 9041 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 5 of 30 PageID: 9042 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 6 of 30 PageID: 9043 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 7 of 30 PageID: 9044 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 8 of 30 PageID: 9045 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 9 of 30 PageID: 9046 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 10 of 30 PageID: 9047 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 11 of 30 PageID: 9048 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 12 of 30 PageID: 9049 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 13 of 30 PageID: 9050 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 14 of 30 PageID: 9051 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 15 of 30 PageID: 9052 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 16 of 30 PageID: 9053 PLAINTIFFS SECOND 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 193-2 Filed 02/27/17 Page 17 of 30 PageID: 9054 PLAINTIFFS SECOND 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’ corporate structure, including all of Defendants’ predecessors-in- interest, subsidiaries, parents, holding companies, related corporations, partnerships, joint ventures, divisions, and affiliates. 2. 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 individuals involved with decision-making pertaining to the funding or control of each of the foregoing (a)-(d). 3. 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. 4. 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. 5. 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. Case 1:15-cv-07025-RBK-JS Document 193-2 Filed 02/27/17 Page 18 of 30 PageID: 9055 PLAINTIFFS SECOND DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 2 6. Identification of any other entity known to Defendants with activities, employees, sales, marketing, research, development, use, testing, and communications Related To any Accused Product. 7. Interactions between Geomni and either Defendant. 8. Interactions between Insurance Services Office and either Defendant. 9. Interactions between Verisk and Xactware. 10. Defendants’ practice and procedure for assessing patent infringement risks from the manufacture, importation, use or sale of its products in the United States and how those practices and procedures have been applied regarding the Accused Products. 11. 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. 12. 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. Case 1:15-cv-07025-RBK-JS Document 193-2 Filed 02/27/17 Page 19 of 30 PageID: 9056 PLAINTIFFS SECOND DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 3 13. 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. 14. 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. 15. Market research, market analyses, competitive analyses, business plans, forecasts, marketing plans, and/or user evaluations directed to the Accused Products. 16. All consumer research on the Accused Products. 17. All marketing strategy documents on the Accused Products. 18. The commercial success and profitability of the Accused Products, including any demand for, touting, and praise of the Accused Products. 19. All Documents outlining the value of the Accused Products and any products that compete with the Accused Products. 20. 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. Case 1:15-cv-07025-RBK-JS Document 193-2 Filed 02/27/17 Page 20 of 30 PageID: 9057 PLAINTIFFS SECOND DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 4 21. 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. 22. 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 plans, and user evaluations related to the Accused Products or the products that compete with the Accused Products. 23. 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). 24. 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. 25. 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. Case 1:15-cv-07025-RBK-JS Document 193-2 Filed 02/27/17 Page 21 of 30 PageID: 9058 PLAINTIFFS SECOND DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 5 26. The distribution of the Accused Products, including but not limited to projected sales, distribution channels, strategies, forecasts, and projections. 27. 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. 28. 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. 29. 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. 30. 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. 31. 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 Case 1:15-cv-07025-RBK-JS Document 193-2 Filed 02/27/17 Page 22 of 30 PageID: 9059 PLAINTIFFS SECOND DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 6 damages-related information produced by Defendants in this litigation, including, but not limited to, the interpretation of such information. 32. Any of Defendants’ Products intended to be used in conjunction with, provide a way to order, or that utilize the Accused Products, including whether Defendants Products are designed to be used in conjunction with, provide a way to order, or that utilize the Accused Products. 33. The volume of any products identified in Topic 37 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. 34. Price(s) at which Defendants has sold any products identified in Topic 37 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. 35. The distribution of any products identified in Topic 37, including but not limited to projected sales, distribution channels, strategies, forecasts, and projections. 36. The gross and net profitability of any products identified in Topic 37 on a monthly, quarterly, and annual basis from the first sale of the Accused Products to the present, including how Defendants determine those amounts. Case 1:15-cv-07025-RBK-JS Document 193-2 Filed 02/27/17 Page 23 of 30 PageID: 9060 PLAINTIFFS SECOND DEPOSITION NOTICE PURSUANT TO FED. R. CIV. P 30(B)(6) ATTACHMENT B 7 37. 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 Products, and the manner in which each of Xactware and Verisk maintain their financial records relating to the Accused Products. 38. 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. 39. Any of Defendants’ policies and/or business plans concerning the licensing of the Accused Products or intellectual property covering the Accused Products. 40. 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. Case 1:15-cv-07025-RBK-JS Document 193-2 Filed 02/27/17 Page 24 of 30 PageID: 9061 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 193-2 Filed 02/27/17 Page 25 of 30 PageID: 9062 Exhibit 13 Case 1:15-cv-07025-RBK-JS Document 193-2 Filed 02/27/17 Page 26 of 30 PageID: 9063 Exhibit 13 Topics from Original Notices Topics from Amended Notice 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. Ex. 10, First 30(b)(6) Notice, Topic 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. Ex. L, Amended 30(b)(6) Notice, Topic 1 The design, development, functionality, architecture, implementation, operation and features of each Accused Product and any components of the Accused Products, including software components. Ex. 10, First 30(b)(6) Notice, Topic 2 The design, development, functionality, architecture, implementation, operation and features of each Accused Product and any components of the Accused Products, including software components. Ex. L, Amended 30(b)(6) Notice, Topic 2 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. Ex. 10, First 30(b)(6) Notice, Topic 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. Ex. L, Amended 30(b)(6) Notice, Topic 3 The organization of source code related to each Accused Product and any components of the Accused Products, including software components. Ex. 10, First 30(b)(6) Notice, Topic 4 The organization of source code related to each Accused Product and any components of the Accused Products, including software components. Ex. L, Amended 30(b)(6) Notice, Topic 4 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. Ex. 10, First 30(b)(6) Notice, Topic 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. Ex. L, Amended 30(b)(6) Notice, Topic 5 Case 1:15-cv-07025-RBK-JS Document 193-2 Filed 02/27/17 Page 27 of 30 PageID: 9064 2 Topics from Original Notices Topics from Amended Notice 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. Ex. 10, First 30(b)(6) Notice, Topic 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. Ex. L, Amended 30(b)(6) Notice, Topic 6 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. Ex. 10, First 30(b)(6) Notice, Topic 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. Ex. L, Amended 30(b)(6) Notice, Topic 7 Defendants’ practice and procedure for assessing patent infringement risks from the manufacture, importation, use or sale of its products in the United States and how those practices and procedures have been applied regarding the Accused Products. Ex. 12, Second 30(b)(6) Notice, Topic 10 Defendants’ practice and procedure for assessing patent infringement risks from the manufacture, importation, use or sale of its products in the United States and how those practices and procedures have been applied regarding the Accused Products. Ex. L, Amended 30(b)(6) Notice, Topic 49 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. Ex. 12, Second 30(b)(6) Notice, Topic 11 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. Ex. L, Amended 30(b)(6) Notice, Topic 50 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. Ex. 12, Second 30(b)(6) Notice, Topic 12 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. Ex. L, Amended 30(b)(6) Notice, Topic 51 Case 1:15-cv-07025-RBK-JS Document 193-2 Filed 02/27/17 Page 28 of 30 PageID: 9065 3 Topics from Original Notices Topics from Amended Notice 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. Ex. 12, Second 30(b)(6) Notice, Topic 14 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. Ex. L, Amended 30(b)(6) Notice, Topic 53 All facts, theories, and arguments underlying any contention by Defendants that any Accused Product does not infringe any Asserted Claim. Ex. K, Third 30(b)(6) Notice, Topic 1 All facts, theories, and arguments underlying any contention by Defendants that any Accused Product does not infringe any Asserted Claim. Ex. L, Amended 30(b)(6) Notice, Topic 80 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. Ex. K, Third 30(b)(6) Notice, Topic 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. Ex. L, Amended 30(b)(6) Notice, Topic 85 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. Ex. K, Third 30(b)(6) Notice, Topic 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. Ex. L, Amended 30(b)(6) Notice, Topic 86 Case 1:15-cv-07025-RBK-JS Document 193-2 Filed 02/27/17 Page 29 of 30 PageID: 9066 4 Topics from Original Notices Topics from Amended Notice Defendants’ contentions, affirmative defenses, or counterclaims Related To infringement by Defendants of the Asserted Patents, and any Documents relating thereto. Ex. K, Third 30(b)(6) Notice, Topic 8 Defendants’ contentions, affirmative defenses, or counterclaims Related To infringement by Defendants of the Asserted Patents, and any Documents relating thereto. Ex. L, Amended 30(b)(6) Notice, Topic 87 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. Ex. K, Third 30(b)(6) Notice, Topic 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. Ex. L, Amended 30(b)(6) Notice, Topic 90 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. Ex. K, Third 30(b)(6) Notice, Topic 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. Ex. L, Amended 30(b)(6) Notice, Topic 91 Case 1:15-cv-07025-RBK-JS Document 193-2 Filed 02/27/17 Page 30 of 30 PageID: 9067 Liza M. Walsh Hector D. Ruiz Eleonore Ofosu-Antwi WALSH PIZZI O’REILLY FALANGA LLP One Riverfront Plaza 1037 Raymond Boulevard, Suite 600 Newark, NJ 07102 (973) 757-1100 OF COUNSEL (admitted pro hac vice): Adam R. Alper Brandon H. Brown KIRKLAND & ELLIS LLP 555 California Street San Francisco, CA 94104 (415) 439-1400 Michael W. De Vries KIRKLAND & ELLIS LLP 333 South Hope Street Los Angeles, CA 90071 (213) 680-8400 Jared Barcenas Corey Gerson KIRKLAND & ELLIS LLP 601 Lexington Ave New York, NY 10022 (212) 446-4800 Gianni Cutri Simeon G. Papacostas KIRKLAND & ELLIS LLP 300 North LaSalle Chicago, IL 60654 (312) 862-2000 Attorneys for Plaintiffs IN THE UNITED STATES DISTRICT COURT FOR THE 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) CERTIFICATE OF SERVICE Filed Electronically I, Liza M. Walsh, hereby certify that, on the date set forth below, I caused a true and Case 1:15-cv-07025-RBK-JS Document 193-3 Filed 02/27/17 Page 1 of 2 PageID: 9068 correct copy of the following documents submitted on behalf of Plaintiff Eagle View Technologies, Inc. (“Plaintiff”) in the above referenced matter to be electronically filed and served via the Court’s electronic filing system on the Office of the Clerk, United States District Court District of New Jersey, Fourth and Cooper Streets, Camden, New Jersey in accordance with the Court’s electronic filing procedures pursuant to Local Civil Rule 5.2: • Plaintiff Eagle View’s Reply Brief in Further Support of its Motion to Compel 30(b)(6) Deposition on Infringement Topics; • Declaration of Liza M. Walsh with Exhibits 12-13 annexed thereto; and • This Certificate of Service. I further certify that, on the date set forth below, I caused a true and correct copy of the foregoing documents to be served via the Court’s electronic filing system upon all parties registered to receive electronic filings. I further certify that I will cause a courtesy copy of the aforementioned documents to be sent via First-Class Mail to the Honorable Joel Schneider, U.S.M.J., at the United States District Court District of New Jersey, Fourth and Cooper Streets, Camden, New Jersey. I certify that the foregoing is true and correct. Dated: February 27, 2017 s/ Liza M. Walsh Liza M. Walsh Case 1:15-cv-07025-RBK-JS Document 193-3 Filed 02/27/17 Page 2 of 2 PageID: 9069