ESN LLC v. Cisco Systems, Inc. et al

Filing 123

Second MOTION to Compel Response to Cisco's Seventh Interrogatory by Cisco Systems, Inc., Cisco-Linksys LLC. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Errata G, # 8 Exhibit H, # 9 Exhibit I, # 10 Text of Proposed Order)(Smith, Kevin)

5 5 ('win Dolphin Drive, 4ui 560,

gyres California 9,10 5 1 1i r. (650) 801.`5000 f tit: (650)

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December 17, 2008

VIA ELECTRONIC MAIL

Gerald C. Willis McAndrews Held & Malloy 500 W. Madison St., 34th Floor Chicago, IL 60661

Re:

ESN, LLC v. Cisco Systems, Inc.

Dear Jerry:
I write to memorialize our telephone conversation of December 16, 2008 concerning ESN's responses to Cisco's discovery requests. With respect to Cisco's Interrogatory No. 2, which calls for ESN's position with respect to the dates of conception and reduction to practice, you stated that it was your understanding that ESN had supplemented its response by letter. Both parties agreed to review the correspondence to determine whether this supplementation occurred. I have reviewed Cisco's correspondence file and have not located any letter supplementing ESN's response to Interrogatory No. 2. If you locate this letter, please provide me the date it was transmitted.

With respect to Cisco's Interrogatory No. 4, which asked ESN to identify and describe communications related to licensing, you stated that ESN would either produce or confirm that it had produced all such documents, including communications with Vonage and between ESN and Cisco or Cisco's counsel.
With respect to Cisco's Interrogatory No. 7, which asked ESN to identify where in the provisional application the elements of the `519 patent's claims are identified, ESN continues to refuse to provide a substantive response at this time. You stated that ESN would not provide a

response until after the Court has issued its claim construction opinion. Pursuant to Local Rule CV-7, we would like to schedule an in-person meet and confer this month in Dallas on this interrogatory. Please provide your availability for such a conference.
With respect to Cisco's Requests For Production Nos. 1-3, you stated that the only documents in ESN's possession, custody, or control regarding Mr. Girard's conception or reduction to practice of the claims of the `519 patent was the inventor's notebook produced at ESN0001305.

With respect to Cisco's Request For Production No. 5, which pertains communications concerning the `519 patent or its subject matter, you stated that all non-privileged documents had been produced. You also stated that you would confirm whether certain emails with Vonage had been produced.
With respect to Cisco's Requests For Production Nos. 6, 9-12, 13, 16, 17 & 31, you stated that all non-privileged documents have been produced and all privileged documents have been disclosed on a privilege log. With respect to Cisco's Requests For Production Nos. 15, 24, 25, 27, 32 & 40, which pertain in part to ESN's investigation of the accused products, you stated that ESN was in possession of Cisco product documents that it had considered as part of its pre-filing investigation. You agreed to produce these documents. With respect to Cisco's Requests For Production Nos. 18 & 19, which pertain to Mr. Girard's patents and patent applications, both domestic and foreign, you stated that neither ESN nor Mr. Girard was in possession of a complete set of all of his patents or applications. You identified by number WIPO patent application PCT/US2002/0 1 1 672 and an application numbered 02769264.9-2416. With respect to Cisco's Requests For Production Nos. 22 & 23, which pertain to ESN's licensing and patent procurement policies, you stated that ESN had no responsive documents and had no written policies. With respect to Cisco's Requests For Production Nos. 26, 44 & 45, which pertain to communications between ESN or Mr. Girard and Cisco or Cisco's customers, you stated that all responsive documents had been produced. With respect to Cisco's Requests For Production Nos. 29 & 30, which pertain to documents concerning the accused products and documents disclosed in ESN's initial disclosures, you stated that ESN will produce documents related to public commentary on the litigation.

With respect to Cisco's Request For Production No. 34, which pertains to ESN's retention of documents, you stated that there were no responsive documents and that ESN has no written document retention policy.
With respect to Cisco's Request For Production No. 37, which pertains to ESN's meeting minutes related to the `519 patent, you stated that you would determine whether any responsive documents existed.
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With respect to Cisco's Request For Production No. 47, which pertains in part to ESN's licensing or agreements concerning patents, you stated that ESN has not licensed any patents and has not had an interest in any patent other than the `519 patent.

Sincerely, /s/ Sayuri Sharper SS:KAS
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