From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Shortsle, Kevin <Kshortsle@mwe.com>
`Wednesday, August 24, 2016 4:56 PM
`Tony Zeuli; Kristin M. Drieman; Wendy Ward
`Anneliese Mayer; Eric R. Chad; Carol Hough; Anne-Marie Larkin; Amy Miller; Solenis-
`MWE; 04163.2128usza.active@ef.merchantgould.com
`RE: Nalco v. Solenis
`
`Tony,
`
`We write to request a meet‐and‐confer tomorrow or Friday on two issues. The first is the assignment of the two
`patents‐in‐suit from Nalco to Ecolab. You first raised the change of ownership of the ’250 and ’623 patents on July 26,
`2016, after your representation to the Patent Office that Ecolab USA Inc., not Nalco, was the owner of the
`patents. Presumably, you had documents and information in hand at that time to allow you to make that
`representation. In July, you asked Solenis for its position on Nalco amending its Complaint and we told you that if you
`sent us the assignment documents, we would respond. It’s nearly a month later and, even after several requests, you
`still have not provided these documents, which leads us to question whether the assignment might affect standing in
`this case. We request a meet‐and‐confer on when we can expect to receive the assignment documents.
`
`The second issue relates to Dr. Dyer. We have reason to believe that you, someone at your firm, or someone from Nalco
`or Ecolab contacted International Paper, Dr. Dyer’s former employer and current consulting client, and informed
`International Paper of your baseless allegation that Dr. Dyer has disseminated Nalco’s confidential
`information. Whatever information was provided to International Paper has affected Dr. Dyer’s consulting practice. We
`have already exchanged correspondence on this topic in which we requested that Nalco provide the basis for its
`contention that Dr. Dyer has a conflict that would prevent him from serving as Solenis’ expert. Nalco repeatedly
`declined to provide any such basis. We also requested that Nalco provide the basis for its contention that it has an
`“actionable claim” against Dr. Dyer, and you similarly refused to provide that information. Given the escalation of these
`unsupported and in our view completely unfounded allegations, we request a meet and confer on Nalco’s alleged bases
`and on any communications that were directed to International Paper on this topic.
`
`We propose a conference call Thursday, August 25 at 2:00 PM CST or Friday, August 26 at 11:00 AM CST. We need to
`meet‐and‐confer on these topics in the near term because, depending on the answers Nalco provides, we may need to
`raise these issues with the Court prior to the upcoming status conference on the pending motion to stay.
`
`Regards,
`
`Kevin P. Shortsle
`Partner
`McDermott Will & Emery LLP | 227 West Monroe Street | Chicago, IL 60606-5096
`Tel +1 312 984 3361 | Fax +1 312 984 7700
`Biography | Website | vCard | Email | Twitter | LinkedIn | Blog
`
`
`From: Tony Zeuli [mailto:TZeuli@merchantgould.com]
`Sent: Monday, August 22, 2016 10:16 AM
`To: Shortsle, Kevin; Kristin M. Drieman; Wendy Ward
`Cc: Anneliese Mayer; Eric R. Chad; Carol Hough; Anne-Marie Larkin; Amy Miller; Solenis-MWE;
`04163.2128usza.active@ef.merchantgould.com
`Subject: RE: Nalco v. Solenis_Correspondence and production
`
`1
`
`Solenis v. Ecolab USA, IPR2016-01281, Exhibit 2006
`
`
`Sent:
`To:
`Cc:
`
`Subject:
`
`Shortsle, Kevin <Kshortsle@mwe.com>
`Wednesday, August 24, 2016 4:56 PM
`Tony Zeuli; Kristin M. Drieman; Wendy Ward
`Anneliese Mayer; Eric R. Chad; Carol Hough; Anne-Marie Larkin; Amy Miller; Solenis-
`MWE; 04163.2128usza.active@ef.merchantgould.com
`RE: Nalco v. Solenis
`
`Tony,
`
`We write to request a meet‐and‐confer tomorrow or Friday on two issues. The first is the assignment of the two
`patents‐in‐suit from Nalco to Ecolab. You first raised the change of ownership of the ’250 and ’623 patents on July 26,
`2016, after your representation to the Patent Office that Ecolab USA Inc., not Nalco, was the owner of the
`patents. Presumably, you had documents and information in hand at that time to allow you to make that
`representation. In July, you asked Solenis for its position on Nalco amending its Complaint and we told you that if you
`sent us the assignment documents, we would respond. It’s nearly a month later and, even after several requests, you
`still have not provided these documents, which leads us to question whether the assignment might affect standing in
`this case. We request a meet‐and‐confer on when we can expect to receive the assignment documents.
`
`The second issue relates to Dr. Dyer. We have reason to believe that you, someone at your firm, or someone from Nalco
`or Ecolab contacted International Paper, Dr. Dyer’s former employer and current consulting client, and informed
`International Paper of your baseless allegation that Dr. Dyer has disseminated Nalco’s confidential
`information. Whatever information was provided to International Paper has affected Dr. Dyer’s consulting practice. We
`have already exchanged correspondence on this topic in which we requested that Nalco provide the basis for its
`contention that Dr. Dyer has a conflict that would prevent him from serving as Solenis’ expert. Nalco repeatedly
`declined to provide any such basis. We also requested that Nalco provide the basis for its contention that it has an
`“actionable claim” against Dr. Dyer, and you similarly refused to provide that information. Given the escalation of these
`unsupported and in our view completely unfounded allegations, we request a meet and confer on Nalco’s alleged bases
`and on any communications that were directed to International Paper on this topic.
`
`We propose a conference call Thursday, August 25 at 2:00 PM CST or Friday, August 26 at 11:00 AM CST. We need to
`meet‐and‐confer on these topics in the near term because, depending on the answers Nalco provides, we may need to
`raise these issues with the Court prior to the upcoming status conference on the pending motion to stay.
`
`Regards,
`
`Kevin P. Shortsle
`Partner
`McDermott Will & Emery LLP | 227 West Monroe Street | Chicago, IL 60606-5096
`Tel +1 312 984 3361 | Fax +1 312 984 7700
`Biography | Website | vCard | Email | Twitter | LinkedIn | Blog
`
`
`From: Tony Zeuli [mailto:TZeuli@merchantgould.com]
`Sent: Monday, August 22, 2016 10:16 AM
`To: Shortsle, Kevin; Kristin M. Drieman; Wendy Ward
`Cc: Anneliese Mayer; Eric R. Chad; Carol Hough; Anne-Marie Larkin; Amy Miller; Solenis-MWE;
`04163.2128usza.active@ef.merchantgould.com
`Subject: RE: Nalco v. Solenis_Correspondence and production
`
`1
`
`Solenis v. Ecolab USA, IPR2016-01281, Exhibit 2006
`
`
`
`
`Kevin, I’m waiting on a couple more documents. I expect to have them to you before the 9/8 hearing. Thanks, Tony
`
`From: Shortsle, Kevin [mailto:Kshortsle@mwe.com]
`Sent: Thursday, August 18, 2016 4:44 PM
`To: Tony Zeuli; Kristin M. Drieman; Wendy Ward
`Cc: Anneliese Mayer; Eric R. Chad; Carol Hough; Anne-Marie Larkin; Amy Miller; Solenis-MWE;
`04163.2128usza.active@ef.merchantgould.com
`Subject: RE: Nalco v. Solenis_Correspondence and production
`
`Tony,
`
`Three weeks ago, Solenis requested the assignment documents relevant to the ’623 and ’250 patents, along with an
`explanation of the purpose and timing of the assignment. This information was requested in response to your
`representation that the patents‐in‐suit were assigned to Ecolab USA Inc. and a request to amend the complaint to add
`Ecolab as a co‐plaintiff. Let us know when we can expect a response.
`
`Regards,
`Kevin
`
`Kevin P. Shortsle
`Partner
`McDermott Will & Emery LLP | 227 West Monroe Street | Chicago, IL 60606-5096
`Tel +1 312 984 3361 | Fax +1 312 984 7700
`Biography | Website | vCard | Email | Twitter | LinkedIn | Blog
`
`
`From: Shortsle, Kevin
`Sent: Wednesday, July 27, 2016 1:02 PM
`To: 'Tony Zeuli'; Kristin M. Drieman; Wendy Ward
`Cc: Anneliese Mayer; Eric R. Chad; Carol Hough; Anne-Marie Larkin; Amy Miller; Solenis-MWE;
`04163.2128usza.active@ef.merchantgould.com
`Subject: RE: Nalco v. Solenis_Correspondence and production
`
`Tony,
`
`In order to evaluate your request, please provide copies of the assignments transferring ownership of the ‘623 and ‘250
`patents and explain the purpose and timing of the transfer.
`
`Regards,
`Kevin
`
`Kevin P. Shortsle
`Partner
`McDermott Will & Emery LLP | 227 West Monroe Street | Chicago, IL 60606-5096
`Tel +1 312 984 3361 | Fax +1 312 984 7700
`Biography | Website | vCard | Email | Twitter | LinkedIn | Blog
`
`
`From: Tony Zeuli [mailto:TZeuli@merchantgould.com]
`Sent: Tuesday, July 26, 2016 3:30 PM
`To: Shortsle, Kevin; Kristin M. Drieman; Wendy Ward
`Cc: Anneliese Mayer; Eric R. Chad; Carol Hough; Anne-Marie Larkin; Amy Miller; Solenis-MWE;
`2
`
`Solenis v. Ecolab USA, IPR2016-01281, Exhibit 2006
`
`
`
`04163.2128usza.active@ef.merchantgould.com
`Subject: RE: Nalco v. Solenis_Correspondence and production
`
`Kevin and Michael,
`
`Nalco assigned the patents‐in‐suit to Ecolab USA Inc. As each owned the patents during periods of infringement, we
`want to add Ecolab USA as a co‐plaintiff. Please let me know if you will consent to the attached second amended
`complaint. Thanks, Tony
`
`
`
`From: Shortsle, Kevin [mailto:Kshortsle@mwe.com]
`Sent: Wednesday, July 20, 2016 4:13 PM
`To: Kristin M. Drieman; Wendy Ward
`Cc: Tony Zeuli; Anneliese Mayer; Eric R. Chad; Carol Hough; Anne-Marie Larkin; Amy Miller; Solenis-MWE
`Subject: RE: Nalco v. Solenis_Correspondence and production
`
`Counsel,
`
`Please see the attached correspondence.
`
`Regards,
`
`Kevin P. Shortsle
`Partner
`McDermott Will & Emery LLP | 227 West Monroe Street | Chicago, IL 60606-5096
`Tel +1 312 984 3361 | Fax +1 312 984 7700
`Biography | Website | vCard | Email | Twitter | LinkedIn | Blog
`
`
`From: Kristin M. Drieman [mailto:KDrieman@merchantgould.com]
`Sent: Friday, July 15, 2016 4:38 PM
`To: Macaluso, Avani; Shortsle, Kevin; Chu, Michael; McMahon, Charlie; Mauro, Alyse
`Cc: Tony Zeuli; Anneliese Mayer; Wendy Ward; Eric R. Chad; Carol Hough; Anne-Marie Larkin; Amy Miller
`Subject: RE: Nalco v. Solenis_Correspondence and production
`
`Counsel,
`
`Please see the attached correspondence from Wendy Ward and document production Bates numbered as NAL0013053‐
`13170.
`
`Thank you,
`
`
`Kristin M. Drieman
`Litigation Paralegal
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402‐2215
`USA
`
`Telephone (612) 336‐4703
`Fax (612) 332‐9081
`
`3
`
`Solenis v. Ecolab USA, IPR2016-01281, Exhibit 2006
`
`
`
`www.merchantgould.com
`
`GUARDIANS OF GREAT IDEAS ®
`
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`
`4
`
`Solenis v. Ecolab USA, IPR2016-01281, Exhibit 2006
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