From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Day, Evan S. (SDO)
`"Coulson, Chris"
`Bernstein, Matthew C. (SDO); Ng, Chun (SEA); *Perkins-Service-MSFT-Bradium-IPR; Zachary, Michael; Ulrich,
`Clifford
`RE: Microsoft Corp. v. Bradium Techs. LLC (IPR2016-00448, IPR2016-00449): Limited Waiver
`Monday, March 13, 2017 4:18:00 PM
`2017 03 12 Bradium Limited Waiver Agreement.Perkins edits.docx
`
`Chris,
`
`Proposed revisions are attached. This is also subject to further review/approval from Microsoft. I will be
`sending to Mr. Lavi later tonight (tomorrow morning in Tel Aviv).
`
`We disagree with the assertions in your second paragraph, but we can address timing if and when we get
`an agreement for Mr. Lavi to appear. We have discussed the length of the deposition on multiple
`previous occasions and Microsoft’s position has not changed.
`
`Regards,
`Evan
`
`Evan Day | Perkins Coie LLP
`COUNSEL
`11988 El Camino Real Suite 350
`San Diego, CA 92130-2594
`D. +1.858.720.5743
`F. +1.858.720.5799
`E. EDay@perkinscoie.com
`
`From: Coulson, Chris [mailto:CCoulson@kenyon.com]
`Sent: Sunday, March 12, 2017 4:41 PM
`To: Day, Evan S. (SDO)
`Cc: Bernstein, Matthew C. (SDO); Ng, Chun (SEA); *Perkins-Service-MSFT-Bradium-IPR; Zachary,
`Michael; Ulrich, Clifford
`Subject: RE: Microsoft Corp. v. Bradium Techs. LLC (IPR2016-00448, IPR2016-00449): Limited Waiver
` 
`Dear Evan,
` 
`Bradium and Mr. Levanon are still considering the language of the attached limited waiver
`agreement, but have authorized us to send this draft to you.  The final agreement will be subject to
`approval by Bradium and Mr. Levanon.  Please confirm that you will promptly forward this draft to
`Mr. Lavi for his consideration. 
` 
`Regarding schedule, at this point even if agreement is reached, Bradium will be prejudiced by a late
`deposition.  Bradium is willing to compromise to provide time for Mr. Lavi to comply with his
`obligation to appear in the United States, but will need Mr. Lavi to appear for deposition for up to
`two days, to be completed no later than March 24, 2017.
`
`   
`
`Chris Coulson
`ANDREWS KURTH KENYON LLP
`Tel: 212.908.6409
` 
`From: Coulson, Chris
`
`Microsoft, Ex. 1045
`Microsoft v. Bradium, IPR2016-00449
`
`

`

`Sent: Friday, March 10, 2017 4:55 PM
`To: 'Day, Evan S. (Perkins Coie)'
`Cc: Bernstein, Matthew C. (Perkins Coie); Ng, Chun (Perkins Coie);
`PerkinsServiceBradiumIPR@perkinscoie.com; Zachary, Michael; Ulrich, Clifford
`Subject: RE: Microsoft Corp. v. Bradium Techs. LLC (IPR2016-00448, IPR2016-00449): PTAB March 8,
`2017 Conference Call
` 
`Evan,
` 
`This is a clean copy reflecting the edits:
`
`  
`
`Dear PTAB,
`
`In the call between the parties and the Board last Monday, the Board asked the parties to discuss
`whether Patent Owner Bradium, Mr. Levanon and 3DVU would be able to provide assurances to Mr. Lavi
`to facilitate Mr. Lavi’s testimony in the United States. Patent Owner Bradium advised Petitioner Microsoft
`today that it is still discussing the matter with Mr. Levanon and drafting a proposed agreement, which it
`has not yet presented to Petitioner Microsoft. The Parties will continue to keep the Board informed
`regarding the status of these discussions.
`
`  
`
`Chris Coulson
`ANDREWS KURTH KENYON LLP
`Tel: 212.908.6409
` 
`From: Day, Evan S. (Perkins Coie) [mailto:EDay@perkinscoie.com]
`Sent: Friday, March 10, 2017 4:52 PM
`To: Coulson, Chris
`Cc: Bernstein, Matthew C. (Perkins Coie); Ng, Chun (Perkins Coie);
`PerkinsServiceBradiumIPR@perkinscoie.com; Zachary, Michael; Ulrich, Clifford
`Subject: RE: Microsoft Corp. v. Bradium Techs. LLC (IPR2016-00448, IPR2016-00449): PTAB March 8,
`2017 Conference Call
` 
`Chris,
`
`Your changes are fine. Can you send a clean copy?
`
`Regards,
`Evan
`
`Evan Day | Perkins Coie LLP
`COUNSEL
`11988 El Camino Real Suite 350
`San Diego, CA 92130-2594
`D. +1.858.720.5743
`F. +1.858.720.5799
`E. EDay@perkinscoie.com
`
`From: Coulson, Chris [mailto:CCoulson@kenyon.com]
`Sent: Friday, March 10, 2017 12:44 PM
`To: Day, Evan S. (SDO)
`Cc: Bernstein, Matthew C. (SDO); Ng, Chun (SEA); *Perkins-Service-MSFT-Bradium-IPR; Zachary,
`Michael; Ulrich, Clifford
`Subject: RE: Microsoft Corp. v. Bradium Techs. LLC (IPR2016-00448, IPR2016-00449): PTAB March 8,
`2017 Conference Call
`
`Microsoft, Ex. 1045
`Microsoft v. Bradium, IPR2016-00449
`
`

`

` 
`Dear Evan,
` 
`We’re OK with providing an update as edited below to the Board.  I thought it would be helpful to
`show additions in red and deletions in strike-through, but I can create a clean-text copy if that would
`be more convenient. 
`
`  
`
`Dear PTAB,
`
`In the call between the parties and the Board last Monday, the Board asked the parties to discuss
`whether Patent Owner Bradium, and its affiliated entities (e.g. Mr. Levanon and 3DVU) would be able to
`provide assurances to Mr. Lavi to facilitate not to retaliate against Mr. Lavi’s for his testimony in the
`United States, in order to ease Mr. Lavi’s concerns about appearing for a deposition. Patent Owner
`Bradium advised Petitioner Microsoft today that it is still discussing the matter with Mr. Levanon and
`drafting a proposed agreement, which it has not yet presented to Petitioner Microsoft. The Parties will
`continue to keep the Board informed regarding the status of these discussions.
`
`   
`
`Chris Coulson
`ANDREWS KURTH KENYON LLP
`Tel: 212.908.6409
` 
`From: Day, Evan S. (Perkins Coie) [mailto:EDay@perkinscoie.com]
`Sent: Friday, March 10, 2017 3:00 PM
`To: Coulson, Chris
`Cc: Bernstein, Matthew C. (Perkins Coie); Ng, Chun (Perkins Coie);
`PerkinsServiceBradiumIPR@perkinscoie.com; Zachary, Michael; Ulrich, Clifford
`Subject: RE: Microsoft Corp. v. Bradium Techs. LLC (IPR2016-00448, IPR2016-00449): PTAB March 8,
`2017 Conference Call
` 
`Chris,
`
`We understood from Monday’s call that the Board expected a response by today, so the parties should
`provide an update to the Board today. I have drafted a revised proposed email to the Board that could be
`sent as a joint email.
`
`To clarify, as we indicated on Monday’s call, Mr. Lavi has told us that he was considering seeking his own
`counsel regarding this matter, but he has not informed us that he has actually retained such counsel.
`
`Here is the proposed revised email:
`
`Dear PTAB,
`
`In the call between the parties and the Board last Monday, the Board asked the parties to discuss
`whether Patent Owner Bradium and its affiliated entities (e.g. Mr. Levanon and 3DVU) would be able to
`provide assurances not to retaliate against Mr. Lavi for his testimony, in order to ease Mr. Lavi’s concerns
`about appearing for a deposition. Patent Owner Bradium advised Petitioner Microsoft today that it is still
`discussing the matter with Mr. Levanon and drafting a proposed agreement, which it has not yet
`presented to Petitioner Microsoft. The Parties will continue to keep the Board informed regarding the
`status of these discussions.
`
`
`Microsoft, Ex. 1045
`Microsoft v. Bradium, IPR2016-00449
`
`

`

`Regards,
`Evan
`
`Evan Day | Perkins Coie LLP
`COUNSEL
`11988 El Camino Real Suite 350
`San Diego, CA 92130-2594
`D. +1.858.720.5743
`F. +1.858.720.5799
`E. EDay@perkinscoie.com
`
`From: Coulson, Chris [mailto:CCoulson@kenyon.com]
`Sent: Friday, March 10, 2017 11:20 AM
`To: Day, Evan S. (SDO)
`Cc: Bernstein, Matthew C. (SDO); Ng, Chun (SEA); *Perkins-Service-MSFT-Bradium-IPR; Zachary,
`Michael; Ulrich, Clifford
`Subject: RE: Microsoft Corp. v. Bradium Techs. LLC (IPR2016-00448, IPR2016-00449): PTAB March 8,
`2017 Conference Call
` 
`Dear Evan,
` 
`During this week, we have diligently worked with Mr. Levanon and Bradium regarding
`providing a limited waiver to Mr. Lavi addressing his appearance at deposition in the U.S., as
`was suggested by the Board.  We are in the process of drafting an agreement to be signed by
`Mr. Levanon, Bradium, Microsoft, and Mr. Lavi.  We will continue to finalize this draft and
`consult with Mr. Levanon and Bradium over this weekend, and we expect to be able to
`provide a draft agreement to you on Monday, if not before.
` 
`To speed up the communication process, can you please clarify whether Mr. Lavi is
`represented by counsel, and please provide the contact information of Mr. Lavi’s Israel-based
`counsel that you mentioned on the call with the Board.  
`
`   
`
`Best regards,
` 
`Chris Coulson
`ANDREWS KURTH KENYON LLP
`Tel: 212.908.6409
` 
`From: Day, Evan S. (Perkins Coie) [mailto:EDay@perkinscoie.com]
`Sent: Friday, March 10, 2017 1:48 PM
`To: Coulson, Chris
`Cc: Bernstein, Matthew C. (Perkins Coie); Ng, Chun (Perkins Coie);
`PerkinsServiceBradiumIPR@perkinscoie.com; Zachary, Michael; Ulrich, Clifford
`Subject: RE: Microsoft Corp. v. Bradium Techs. LLC (IPR2016-00448, IPR2016-00449): PTAB March 8,
`2017 Conference Call
` 
`Chris,
`
`Because Bradium has not provided any substantive response regarding Mr. Levanon’s or 3DVU’s
`position concerning the issues discussed on Monday’s call, and it is now the Sabbath in Israel, Microsoft
`intends to send the email below to the Board in approximately two hours:
`
`Microsoft, Ex. 1045
`Microsoft v. Bradium, IPR2016-00449
`
`

`

`
`Dear PTAB,
`
`In the call between the parties and the Board last Monday, the Board asked the parties to discuss
`whether Patent Owner Bradium and its affiliated entities (e.g. Mr. Levanon and 3DVU) would be able to
`provide assurances not to retaliate against Mr. Lavi for his testimony, in order to ease Mr. Lavi’s concerns
`about appearing for a deposition. While Petitioner has attempted to engage with Patent Owner regarding
`this issue, Patent Owner has not provided any additional information regarding Mr. Levanon’s or 3DVU’s
`position, and therefore the positions of the parties on this issue have not materially changed.
`
`Regards,
`Evan
`
`Evan Day | Perkins Coie LLP
`COUNSEL
`11988 El Camino Real Suite 350
`San Diego, CA 92130-2594
`D. +1.858.720.5743
`F. +1.858.720.5799
`E. EDay@perkinscoie.com
`
`From: Coulson, Chris [mailto:CCoulson@kenyon.com]
`Sent: Wednesday, March 08, 2017 4:19 PM
`To: Day, Evan S. (SDO)
`Cc: Bernstein, Matthew C. (SDO); Ng, Chun (SEA); *Perkins-Service-MSFT-Bradium-IPR; Zachary,
`Michael; Ulrich, Clifford
`Subject: RE: Microsoft Corp. v. Bradium Techs. LLC (IPR2016-00448, IPR2016-00449): PTAB March 8,
`2017 Conference Call
` 
`Dear Evan,
` 
`We have reached out to and are working with Mr. Levanon as the Board suggested, and we expect
`to have an update for you within this week, possibly by tomorrow.  We are also reaching out to
`DENSO, but are not certain when we may hear back from DENSO.  Until we can provide more
`definitive information, a meet and confer would be premature. 
` 
`We understood the Board clearly to state that Due Date 4 has been moved at least to March 22, and
`will proceed accordingly.  We are happy to discuss moving other dates once the issues surrounding
`Mr. Lavi’s declaration and deposition have been resolved.
` 
`We are not going to address the other speculations and characterizations in your email.
`
`  
`
`Chris Coulson
`ANDREWS KURTH KENYON LLP
`Tel: 212.908.6409
` 
`From: Day, Evan S. (Perkins Coie) [mailto:EDay@perkinscoie.com]
`Sent: Wednesday, March 08, 2017 12:52 AM
`To: Coulson, Chris
`Cc: Bernstein, Matthew C. (Perkins Coie); Ng, Chun (Perkins Coie);
`PerkinsServiceBradiumIPR@perkinscoie.com; Zachary, Michael; Ulrich, Clifford
`Subject: RE: Microsoft Corp. v. Bradium Techs. LLC (IPR2016-00448, IPR2016-00449): PTAB March 8,
`2017 Conference Call
`
`Microsoft, Ex. 1045
`Microsoft v. Bradium, IPR2016-00449
`
`

`

` 
`Chris,
`
`Microsoft is available for a meet and confer at 11:30 AM PT/ 2:30 PM ET on Wednesday, March 8, by
`which time Bradium will have had two full business days to contact Mr. Levanon and 3DVU. We need an
`answer by then, and frankly it is not plausible that you have not been able to contact Mr. Levanon, the
`50% owner of Bradium and the owner of 3DVU, within 48 hours.
`
`In regard to the purported confidentiality issues, while Microsoft has made clear on several occasions the
`reasons why it disagrees with your previous characterizations, it does not appear at this time that you are
`seeking any action with regard to the public availability of Ex. 1017. If my understanding is incorrect,
`please let me know and we remain willing to discuss sealing Ex. 1017 and filing a redacted public version,
`as we have from the first day that Bradium raised its still-unsubstantiated confidentiality concerns.
`
`To be clear regarding the scheduling, Microsoft’s position is that it is willing to stipulate to extensions of
`the remaining Due Dates. As I understand the Board’s rules, the Due Date is in place until the parties file
`a stipulation to move it or the Board orders a change, and I understood from Monday’s call that the Board
`was expecting the parties to submit a stipulation. It seems to me that it’s better for both parties to agree
`on such a stipulation soon.
`
`Also, please advise whether you represent 3DVU, and if not, how they may be contacted, and who you
`are speaking to at Denso.
`
`Regards,
`Evan
`
`
`
`Evan Day | Perkins Coie LLP
`11988 El Camino Real Suite 350
`San Diego, CA 92130-2594
`D. +1.858.720.5743
`F. +1.858.720.5799
`E. EDay@perkinscoie.com
`
`From: Coulson, Chris [mailto:CCoulson@kenyon.com]
`Sent: Tuesday, March 07, 2017 4:38 PM
`To: Day, Evan S. (SDO)
`Cc: Bernstein, Matthew C. (SDO); Ng, Chun (SEA); *Perkins-Service-MSFT-Bradium-IPR; Zachary,
`Michael; Ulrich, Clifford
`Subject: RE: Microsoft Corp. v. Bradium Techs. LLC (IPR2016-00448, IPR2016-00449): PTAB March 8,
`2017 Conference Call
` 
`Dear Evan,
` 
`Bradium disagrees with many of the statements and characterizations in your below e-mail. 
`Rather than respond to each one, please be advised that we are in the process of contacting
`Mr. Levanon, 3DVU and Denso, and will update you when have heard from them. 
` 
`Regarding Exhibit 1017, as I explained on the call with the Board, Microsoft improperly chose
`to make the exhibit public without consulting us in advance, and then refused to place the
`exhibit under seal despite our requests that it do so.  Microsoft’s belated offer in your email
`below, one month later, to place “portions of” the exhibit under seal, is useless.  It is our
`understanding that the exhibit has now been publicly available for one month.  Sealing the
`
`Microsoft, Ex. 1045
`Microsoft v. Bradium, IPR2016-00449
`
`

`

`exhibit is no longer a viable option.   
` 
`Regarding the IPR schedules, based on yesterday’s Board call, Bradium understands that the
`earliest date for DUE DATE 4 in either IPR will be March 22nd.  Bradium will consider your
`proposal regarding other dates in light of any resolution of the question of when or whether
`Mr. Lavi will come to the U.S. for his deposition. 
` 
`Regards,
`
`  
`
` I
`
`Chris Coulson
`ANDREWS KURTH KENYON LLP
`Tel: 212.908.6409
` 
`From: Day, Evan S. (Perkins Coie) [mailto:EDay@perkinscoie.com]
`Sent: Monday, March 06, 2017 5:43 PM
`To: Coulson, Chris; Zachary, Michael; Ulrich, Clifford
`Cc: Bernstein, Matthew C. (Perkins Coie); Ng, Chun (Perkins Coie);
`PerkinsServiceBradiumIPR@perkinscoie.com
`Subject: Microsoft Corp. v. Bradium Techs. LLC (IPR2016-00448, IPR2016-00449): PTAB March 8, 2017
`Conference Call
` 
`Counsel,
`
` write to follow up regarding some of the matters discussed on the conference call with the PTAB this
`afternoon.
`
`Yonatan Lavi
`As we indicated on the call and in our previous correspondence, we believe that Mr. Lavi’s willingness to
`testify may be impacted by the threat of Mr. Levanon or one of his business entities taking legal action
`against him based on his testimony, although it does not appear that any reasonable ground for such
`action exists. Nevertheless, in order to increase the possibility that Mr. Lavi will appear willingly to testify
`in the U.S., we would like to know Bradium’s position on whether it can give any assurance that it will not
`take legal action against Mr. Lavi due to his testimony in these matters. Specifically, we ask that
`Bradium, Mr. Levanon and his family, all 3DVU entities, and any other entity controlled by Mr. Levanon
`(e.g. Inovo Ltd. MAN Trust, etc.) will covenant not to sue Mr. Lavi in retaliation for or based on any legal
`cause of action arising out of his providing testimony in connection with the subject proceedings.
`Because Mr. Levanon’s agreement would be critical in order to make such an agreement and in view of
`the time difference with Israel, we suggest that the parties meet and confer regarding this issue tomorrow
`so that you may first discuss this issue with Mr. Levanon.
`
`Purported Confidentiality Issues
`In regard to the confidentiality issues that you raised on the call today, we disagree with a number of your
`characterizations to the Board of the communications between the parties regarding Bradium’s various
`assertions that Ex. 1017 contains confidential information belonging to any party. For example, Ex. 1017
`does not mention the Denso licensing agreement (Ex. 2029) either directly or indirectly, and you did not
`respond to my letter on February 14 asking for additional information about the Denso confidentiality
`issues that you raised for the first time on February 13.
`
`Nevertheless, if Bradium truly believes that certain portions of Mr. Lavi’s declaration should be sealed,
`please provide us with proposed redactions of Mr. Lavi’s declaration. As we have stated previously,
`Microsoft is willing to work with Bradium in order to seal Ex. 1017 and simultaneously file a public
`
`Microsoft, Ex. 1045
`Microsoft v. Bradium, IPR2016-00449
`
`

`

`redacted version, with the understanding that doing so is not an admission by Microsoft that any of the
`material to be redacted is actually confidential. However, we do not believe that Bradium’s demands to
`seal the entire document are reasonable in view of the fact that Ex. 1017 discusses subject matter that
`Mr. Levanon already addresses in the unredacted public portions of Exs. 2004/2072, or information that is
`otherwise public.
`
`Extension of Due Dates
`As we indicated on the call and previously, Microsoft is willing to stipulate to extend the deadlines for Due
`Dates 4-6. Microsoft is amenable to moving Due Date 4 for both IPR2016-00448 and IPR2016-00449 to
`March 22, and moving Due Dates 5 and 6 for IPR2016-00448 to correspond to the current dates for
`IPR2016-00449, so that the schedule for both proceedings would be as follows:
`· Due Date 4: March 22
`· Due Date 5: March 31
`· Due Date 6: April 7
`
`
`Best regards,
`Evan
`
`Evan Day | Perkins Coie LLP
`11988 El Camino Real Suite 350
`San Diego, CA 92130-2594
`D. +1.858.720.5743
`F. +1.858.720.5799
`E. EDay@perkinscoie.com
`
` 
`
`NOTICE: This communication may contain privileged or other confidential information. If you have received it in error, please advise the
`sender by reply email and immediately delete the message and any attachments without copying or disclosing the contents. Thank you.
`
`Confidentiality Notice: The information contained in this email and any attachments to it may be legally
`privileged and include confidential information intended only for the recipient(s) identified above. If you
`are not one of those intended recipients, you are hereby notified that any dissemination, distribution or
`copying of this email or its attachments is strictly prohibited. If you have received this email in error,
`please notify the sender of that fact by return email and permanently delete the email and any
`attachments to it immediately. Please do not retain, copy or use this email or its attachments for any
`purpose, nor disclose all or any part of its contents to any other person. Andrews Kurth Kenyon LLP
`operates as a Texas limited liability partnership. Andrews Kurth (Middle East) DMCC is registered and
`licensed as a Free Zone company under the rules and regulations of DMCCA. Andrews Kurth Kenyon
`(UK) LLP is authorized and regulated by the Solicitors Regulation Authority of England and Wales (SRA
`Registration No.598542). Thank you.
`
`
`
`NOTICE: This communication may contain privileged or other confidential information. If you have received it in error, please advise the
`sender by reply email and immediately delete the message and any attachments without copying or disclosing the contents. Thank you.
`
`Confidentiality Notice: The information contained in this email and any attachments to it may be legally
`privileged and include confidential information intended only for the recipient(s) identified above. If you
`are not one of those intended recipients, you are hereby notified that any dissemination, distribution or
`copying of this email or its attachments is strictly prohibited. If you have received this email in error,
`please notify the sender of that fact by return email and permanently delete the email and any
`attachments to it immediately. Please do not retain, copy or use this email or its attachments for any
`purpose, nor disclose all or any part of its contents to any other person. Andrews Kurth Kenyon LLP
`operates as a Texas limited liability partnership. Andrews Kurth (Middle East) DMCC is registered and
`
`Microsoft, Ex. 1045
`Microsoft v. Bradium, IPR2016-00449
`
`

`

`licensed as a Free Zone company under the rules and regulations of DMCCA. Andrews Kurth Kenyon
`(UK) LLP is authorized and regulated by the Solicitors Regulation Authority of England and Wales (SRA
`Registration No.598542). Thank you.
`
`
`
`NOTICE: This communication may contain privileged or other confidential information. If you have received it in error, please advise the
`sender by reply email and immediately delete the message and any attachments without copying or disclosing the contents. Thank you.
`
`Confidentiality Notice: The information contained in this email and any attachments to it may be legally
`privileged and include confidential information intended only for the recipient(s) identified above. If you
`are not one of those intended recipients, you are hereby notified that any dissemination, distribution or
`copying of this email or its attachments is strictly prohibited. If you have received this email in error,
`please notify the sender of that fact by return email and permanently delete the email and any
`attachments to it immediately. Please do not retain, copy or use this email or its attachments for any
`purpose, nor disclose all or any part of its contents to any other person. Andrews Kurth Kenyon LLP
`operates as a Texas limited liability partnership. Andrews Kurth (Middle East) DMCC is registered and
`licensed as a Free Zone company under the rules and regulations of DMCCA. Andrews Kurth Kenyon
`(UK) LLP is authorized and regulated by the Solicitors Regulation Authority of England and Wales (SRA
`Registration No.598542). Thank you.
`
`
`
`NOTICE: This communication may contain privileged or other confidential information. If you have received it in error, please advise the
`sender by reply email and immediately delete the message and any attachments without copying or disclosing the contents. Thank you.
`
`Confidentiality Notice: The information contained in this email and any attachments to it may be legally
`privileged and include confidential information intended only for the recipient(s) identified above. If you
`are not one of those intended recipients, you are hereby notified that any dissemination, distribution or
`copying of this email or its attachments is strictly prohibited. If you have received this email in error,
`please notify the sender of that fact by return email and permanently delete the email and any
`attachments to it immediately. Please do not retain, copy or use this email or its attachments for any
`purpose, nor disclose all or any part of its contents to any other person. Andrews Kurth Kenyon LLP
`operates as a Texas limited liability partnership. Andrews Kurth (Middle East) DMCC is registered and
`licensed as a Free Zone company under the rules and regulations of DMCCA. Andrews Kurth Kenyon
`(UK) LLP is authorized and regulated by the Solicitors Regulation Authority of England and Wales (SRA
`Registration No.598542). Thank you.
`
`
`
`NOTICE: This communication may contain privileged or other confidential information. If you have received it in error, please advise the
`sender by reply email and immediately delete the message and any attachments without copying or disclosing the contents. Thank you.
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`Microsoft, Ex. 1045
`Microsoft v. Bradium, IPR2016-00449
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`

`

`(UK) LLP is authorized and regulated by the Solicitors Regulation Authority of England and Wales (SRA
`Registration No.598542). Thank you.
`
`Microsoft, Ex. 1045
`Microsoft v. Bradium, IPR2016-00449
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`
`
`Limited Waiver Agreement
`
`This Limited Waiver Agreement (“Agreement”) is entered into by and between (1) Isaac
`Levanon (“Levanon”), for himself in his personal capacity and also on behalf of any entity for
`which he is an officer or currently exercises a controlling interest and by which Mr. Yonathan
`Lavi was formerly employed, including without limitation 3DVU, Inc., a Delaware Corporation,
`and 3DVU, Ltd., an Israel Limited Company (hereinafter such entities collectively referred to as
`“3DVU”); (2) Bradium Technologies LLC (“Bradium”); (3) Mr. Yonathan Lavi (“Lavi”); and
`(4) Microsoft Corporation (“Microsoft”). The foregoing entities and individuals may
`collectively be referred to herein as the “Parties.”
`
`WHEREAS, Bradium alleges that it is the owner of U.S. Patent No. 7,908,343 (“’343
`patent”) and U.S. Patent No. 8,924,506 (“’506 patent”), and Levanon and Lavi are named as co-
`inventors of such patents.
`
`WHEREAS, on or about January 11, 2016, Microsoft filed petitions for inter partes
`review of the ’343 and ’506 patents by the Patent Trial and Appeal Board (“PTAB”) of the
`United States Patent and Trademark Office (“USPTO”), having case numbers IPR2016-00448
`and IPR2016-00449 (collectively, the “inter partes review proceedings”).
`
`WHEREAS, on or about July 25 and 27, 2016, the PTAB instituted inter partes review
`proceedings as to claims of the ’343 and ’506 patents.
`
`WHEREAS, on or about February 7 and 10, 2017, Microsoft submitted a declarations
`signed by Lavi in the inter partes review proceedings, without filing such declarations under seal
`and without seeking prior consent of Levanon or 3DVU to discuss any information contained
`therein with Lavi.
`
`WHEREAS, the Parties have a dispute whetherBradium alleges that Lavi disclosed
`confidential information of 3DVU and/or customers of 3DVU, including DENSO Corporation,
`to Microsoft, and whether that Lavi’s declarations submitted in the inter partes review
`proceedings have revealed confidential information of 3DVU and/or its customers, while
`Microsoft and Lavi dispute Bradium’s allegations that confidential information was revealed and
`whether Bradium and Levanon have raised such allegations in good faith.
`
`WHEREAS, pursuant to 37 C.F.R. § 42.53, Bradium has requested that Microsoft offer
`Lavi to appear for a cross-examination deposition in the United States in the inter partes review
`proceedings.
`
`NOW, THEREFORE, the Parties to this Agreement agree as follows:
`
`Bradium and Levanon (including 3DVU) agree that the fact of Lavi’s appearance
`1.
`at a deposition in the United States in the inter partes review proceedings without the
`compulsion of a subpoena, as opposed to appearing in Israel pursuant to a Letter of Request,
`shall not be relied upon by Bradium or Levanon (including 3DVU) as a basis for any claim
`Bradium and/or Levanon (including 3DVU) may have against Lavi with respect to obligations of
`confidentiality that Lavi may have or may have had to Bradium or Levanon (including 3DVU).
`Bradium, Levanon, and 3DVU further agree that the subject matter of such a deposition shall be
`
`
`
`1
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`Microsoft, Ex. 1045
`Microsoft v. Bradium, IPR2016-00449
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`
`
`limited to cross-examination regarding Lavi’s declaration submitted in the inter partes review
`proceedings, and that the testimony of Lavi elicited in such a deposition shall not be used by
`Bradium, Levanon, or 3DVU in any civil action or proceeding against Lavi, other than for
`purposes of impeachment.
`
`Lavi agrees and acknowledges that Bradium and Levanon (including 3DVU) do
`2.
`not waive, relinquish or release any rights or claims against Lavi they may have other than as
`specifically recited in Section 1 of this Agreement, including without limitation the right to bring
`a legal action against Lavi relating to his provision of information to Microsoft or the public
`filing of Exhibit 1017.
`
`Microsoft agrees and acknowledges that Bradium and Levanon (including 3DVU)
`3.
`do not waive, relinquish or release any rights or claims against Microsoft they may have other
`than as specifically recited in Section 1 of this Agreement, including without limitation the right
`to bring a legal action against Microsoft relating to Lavi’s provision of information to Microsoft,
`or the public filing of Exhibit 1017. Bradium, Levanon, and 3DVU agree and acknowledge that
`this Agreement shall not be construed as a waiver of any cause of action, counterclaim, or
`defense that may be raised by Microsoft or Lavi against Bradium, Levanon, and/or 3DVU,
`including without limitation abuse of process, inequitable conduct, and/or unclean hands.
`
`Lavi and Microsoft agree thatNothing in this agreement shall be construed as a
`4.
`waiver by Bradium specifically reservesof the right to argue that Lavi’s declaration should be
`excluded from evidence in the inter partes review proceedings, nor of any response by Microsoft
`to such arguments.
`
`Microsoft consents to and will not oppose the sealing of the transcript of Lavi’s
`5.
`deposition. Microsoft and Bradium will meet and confer regarding appropriate redactions for a
`public version of the transcript to be filed not more than one week after the sealed transcript.
`
`Nothing herein shall be construed as a concession or agreement by any Party
`6.
`concerning the admissibility or relevance of Lavi’s declaration or testimony.
`
`This Agreement is contingent upon DENSO providing consent for the disclosure
`7.
`of any confidential information of DENSO in the deposition of Lavi.
`
`8.7. The Parties represent and acknowledge that they fully understand their right to
`discuss any and all aspects of this Agreement with legal counsel of their own choosing; and to
`the extent, if any, that they desire, they have availed themselves of this right; that they have
`carefully read and fully understand all the provisions of this Agreement; that they voluntarily
`enter into this Agreement; and that they have the capacity to enter into this Agreement.
`
`9.8. The Parties represent and acknowledge that by executing this Agreement they do
`not rely and have not relied upon any representation or statement not set forth herein with regard
`to the subject matter, basis, or effect of this Agreement or otherwise.
`
`10.9. This Agreement represents the entire agreement of the Parties with respect to the
`subject matter hereof, and all prior negotiations, understandings and agreements are incorporated
`herein. This Agreement may not be modified, changed, amended, supplemented or rescinded
`
`
`
`2
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`Microsoft, Ex. 1045
`Microsoft v. Bradium, IPR2016-00449
`
`

`

`
`
`except pursuant to a written instrument signed by all parties.
`
`11.10. Each of the Parties has jointly participated in the negotiation and drafting of this
`Agreement. In the event an ambiguity or a question of intent or interpretation arises, this
`Agreement shall be construed as if drafted jointly by each of the Parties hereto and no
`presumptions or burdens of proof shall arise favoring any party by virtue of the authorship of any
`provisions of this Agreement.
`
`12.11. This Agreement may be executed in counterparts which together shall constitute
`but one and the same agreement. This Agreement shall become effective when all Parties hereto
`shall have executed and delivered a counterpart hereof (including by way of facsimile
`transmission).
`
`13.12. This Agreement shall be governed solely by the laws of New York Statethe state
`of Delaware without reference to