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Inc.","extra_info":""}],"entries":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/378508596/","id":378508596,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/386179757/","id":386179757,"tags":[],"absolute_url":"/docket/67396788/32/obm-inc-v-lancium-llc/","date_created":"2024-02-15T06:28:38.634896-08:00","date_modified":"2025-01-23T02:42:19.100887-08:00","sha1":"a3cb99b9265c2375c739632f6b405ad282254d02","page_count":1,"file_size":18878,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.32.0.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.32.0.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 32 Filed on 02/15/24 in TXSD Page 1 of 1\n\n United States District Court\n Southern District of Texas\n Houston Division\nOBM, Inc. \u00a7\n \u00a7\nversus \u00a7 Civil Action 4:23\u2212cv\u221201798\n \u00a7\nLancium LLC \u00a7\n\n\n Official Transcript Filed\n\nAn official transcript has been filed. It may have information restricted from public disclosure.\nSee E-Government Act of 2002, Fed. R. Civ. P. 5.2(a) or Fed. R. Crim. P. 49.1(a).\n\nNinety days after a transcript has been filed, it becomes electronically available to the public on\nPACER. To comply with the rules on privacy, the parties must redact protected information before\nthen.\n\nIf redaction is needed, the parties must file a statement of the items to be redacted. Include the\ntranscript's docket number and the item's location by page and line. It must be filed within 21 days of\nthe transcript's having been filed. A suggested form is at www.txs.uscourts.gov.\n\nOnly these portions of these data may be visible:\n\n \u2022 Last four digits of a social security number or taxpayer identification number;\n \u2022 Year of a person's birth;\n \u2022 Initials of a minor's name;\n \u2022 Last four digits of an account number; and\n \u2022 City and state of a home address in criminal cases.\n\nAdditional redactions require a separate motion and court approval.\n\nA party may view the transcript at the public terminals in the clerk's office or buy it through\nwww.txs.uscourts.gov or by calling (713) 250\u22125500. A party is only responsible for reviewing the:\n\n \u2022 Opening and closing statements made for that party;\n \u2022 Statements by that party;\n \u2022 Testimony of witnesses called by that party; and\n \u2022 Other parts ordered by the court.\n\nRedaction is your responsibility. The court, clerk, court reporter, or transcriber will not review this\ntranscript for compliance.\n\n Nathan Ochsner, Clerk\n\f","ocr_status":2,"date_upload":"2025-01-22T07:04:07.752745-08:00","document_number":"32","attachment_number":null,"pacer_doc_id":"179044336140","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Notice of Filing of Official Transcript - (FORM, noticing)","acms_document_guid":""}],"date_created":"2024-02-15T06:28:38.619519-08:00","date_modified":"2025-01-22T07:03:25.165200-08:00","date_filed":"2024-02-15","time_filed":"08:10:35","entry_number":32,"recap_sequence_number":"2024-02-15.001","pacer_sequence_number":90,"description":"Notice of Filing of Official Transcript as to 31 Transcript. Party notified, filed. (DarleneHansen, 4) (Entered: 02/15/2024)","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/378406701/","id":378406701,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/386075989/","id":386075989,"tags":[],"absolute_url":"/docket/67396788/31/obm-inc-v-lancium-llc/","date_created":"2024-02-14T08:59:56.268209-08:00","date_modified":"2025-01-23T02:42:47.189026-08:00","sha1":"1233f55576bbe26579a243f166c1c86540586a77","page_count":23,"file_size":391173,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.31.0.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.31.0.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 1 of 23\n\n\n\n\n 1 UNITED STATES DISTRICT COURT\n SOUTHERN DISTRICT OF TEXAS\n 2 HOUSTON DIVISION\n\n 3 ***************************************************************\n\n 4 OBM, INC. 4:23-CV-01798\n\n 5\n VS. HOUSTON, TEXAS\n 6\n\n 7 LANCIUM LLC SEPTEMBER 14, 2023\n\n 8\n ***************************************************************\n 9\n TRANSCRIPT OF MOTION HEARING PROCEEDINGS\n10 HEARD BEFORE THE HONORABLE KEITH P. ELLISON\n UNITED STATES DISTRICT JUDGE\n11\n ***************************************************************\n12\n\n13 APPEARANCES:\n\n14 FOR THE PLAINTIFF: MR. RODNEY R. MILLER\n MR. PRESTON H. HEARD\n15 Womble Bond Dickinson (US) LLP\n 271 17th Street, NW\n16 Suite 2400\n Atlanta, Georgia 30363\n17\n MR. JAMES E. DORITY\n18 Womble Bond Dickinson (US) LLP\n 550 South Main Street\n19 Suite 400\n Greenville, SC 29601\n20\n MR. ANDREW BEVERINA\n21 Womble Bond Dickinson (US) LLP\n 2001 K Street NW\n22 Suite 400 South\n Washington, DC 20006\n23\n\n24\n Proceedings recorded by mechanical stenography,\n25 transcript produced via computer.\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 2 of 23\n 2\n\n\n\n\n 1 FOR THE DEFENDANT: MR. CRAIG D. LEAVELL\n MR. BRUCE H. RATAIN\n 2 Barnes & Thornburg LLP\n One North Wacker Drive\n 3 Suite 4400\n Chicago, Illinois 60606-2833\n 4\n\n 5 MR. DANIEL ANTHONY VALENZUELA\n Barnes & Thornburg LLP\n 6 2121 North Pearl Street\n Suite 700\n 7 Dallas, Texas 75201\n\n 8\n\n 9 Official Court Reporter: Lanie M. Smith, CSR, RMR, CRR\n Official Court Reporter\n10 United States District Court\n Southern District of Texas\n11 515 Rusk\n Room 8004\n12 Houston, Texas 77002\n\n13\n\n14\n\n15\n\n16\n\n17\n\n18\n\n19\n\n20\n\n21\n\n22\n\n23\n24\n\n25\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 3 of 23\n 3\n\n\n\n\n 1 P R O C E E D I N G S\n\n 2 THE COURT: Good afternoon and welcome. We're on the\n\n 3 record in OBM versus Lancium. This is Keith Ellison.\n\n 4 We'll take appearances of counsel beginning with\n\n03:30PM 5 OBM, please.\n\n 6 MR. MILLER: Thank you, Your Honor. Good afternoon,\n\n 7 Your Honor. This is Rodney Miller of Womble Bond Dickinson on\n\n 8 behalf of OBM, and I also have on the line Preston Heard,\n\n 9 James Dority and Andrew Beverina.\n\n03:31PM 10 THE COURT: Welcome to all of you.\n\n 11 For defendant?\n\n 12 MR. VALENZUELA: Good afternoon, Your Honor. This is\n\n 13 Daniel Valenzuela with Barnes & Thornburg and with me on the\n\n 14 line will be Craig Leavell and also Bruce Ratain from\n\n03:31PM 15 Barnes & Thornburg as well.\n\n 16 THE COURT: Welcome to all of you, too.\n\n 17 Okay. We're here on defendant's motion to\n\n 18 dismiss. You can assume I've read the papers.\n\n 19 Would you like to add to what's in the papers on\n\n03:31PM 20 your motion to dismiss?\n\n 21 MR. LEAVELL: Your Honor, on behalf of Lancium, we're\n\n 22 happy to answer any questions. I'll briefly step through a\n\n 23 couple of key points if you don't mind.\n\n 24 THE COURT: That's fine.\n\n03:31PM 25 MR. LEAVELL: Great.\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 4 of 23\n 4\n\n\n\n\n 1 Well, first of all, as it's clear and OBM doesn't\n\n 2 dispute, it is OBM's burden to establish that there's\n\n 3 declaratory judgment or subject matter jurisdiction for their\n\n 4 complaint; and the standard, we agree, is set forth in the\n\n03:31PM 5 MedImmune case, which requires a substantial controversy of\n\n 6 sufficient immediacy and reality to warrant the Court's\n\n 7 involvement for a declaratory judgment. And that analysis has\n\n 8 to be based on objective facts, not subjective fears by an\n\n 9 unreasonable declaratory judgment.\n\n03:32PM 10 And here, based on OBM's papers, if their fear\n\n 11 was, in fact, genuine, it was entirely unreasonable under the\n\n 12 entirety of the circumstances. There was no allegation of\n\n 13 infringement of any particular patent, much less the patent at\n\n 14 issue and there was absolutely no threat of litigation at all,\n\n03:32PM 15 much less an immediate or imminent threat of litigation.\n\n 16 There is one letter in which Lancium discussed\n\n 17 its patents, but there are a lot of reasons for patent owners\n\n 18 to be proud of their patents, to promote their patents; and if\n\n 19 you're a small company like Lancium that's looking to secure\n\n03:33PM 20 lucrative collaborative arrangements with other small\n\n 21 companies, patents are important. They're an indication that\n\n 22 you're an innovative company and that you're worthy of\n\n 23 collaborating with.\n\n 24 And the letter that Lancium sent on its face very\n\n03:33PM 25 clearly talks about the desire to continue the collaboration\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 5 of 23\n 5\n\n\n\n\n 1 that the parties have been discussing for at least 18 months,\n\n 2 if not two years at that point.\n\n 3 And the objective contemporaneous documents --\n\n 4 and there's a lot of e-mails and a lot of text messages\n\n03:33PM 5 submitted by both sides -- show honest interest in a\n\n 6 collaborative effort between the parties to make money and\n\n 7 there was money to be made, a lot more money than is going to\n\n 8 be made through a lawsuit and especially once lawyers' fees and\n\n 9 litigation is involved.\n\n03:34PM 10 Simply put, Lancium was only interested in a\n\n 11 collaborative agreement where the parties could make money and\n\n 12 right up to the day -- two days before the lawsuit was filed\n\n 13 and the week, the two weeks leading up to the lawsuit, which\n\n 14 was filed by surprise, even OBM's CEO, Mr. Lawrence admits in\n\n03:34PM 15 his declaration that he was agreeing to meetings, he was\n\n 16 promising to get back and to have deliverables such as\n\n 17 nondisclosure agreements to continue the business discussions\n\n 18 and he was encouraging Lancium to continue to explore a\n\n 19 business relationship. And those communications were taking\n\n03:34PM 20 place right up to two days before the lawsuit was filed.\n\n 21 And there's case law we cite in our brief, the\n\n 22 Communications Test Design case, and there are others, that\n\n 23 make it very clear that you can't pretend to be continuing\n\n 24 business discussions. You can't be promising to meet to\n\n03:35PM 25 further those discussions and promising to deliver further\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 6 of 23\n 6\n\n\n\n\n 1 information in furtherance of that collaboration and then file\n\n 2 a DJ complaint and pull the rug out from under those\n\n 3 discussions.\n\n 4 There are cases that -- where the declaratory\n\n03:35PM 5 judgment plaintiff argued and the court found that those\n\n 6 discussions were futile and there was no further need for any\n\n 7 discussions. But the cases are clear and the cases cited by\n\n 8 OBM are in the context of ongoing licensing or settlement\n\n 9 discussions.\n\n03:35PM 10 It's true that if two parties are talking about\n\n 11 infringement with clear allegations of infringement and they've\n\n 12 been negotiating over a license agreement for months or weeks\n\n 13 or a settlement terms for that patent infringement allegation,\n\n 14 then, yes, of course at some point if those discussions become\n\n03:36PM 15 futile, then either party is entitled to run in to court and\n\n 16 seek the Court's assistance; however, that's not what was going\n\n 17 on here.\n\n 18 The parties' own documents show they were not\n\n 19 talking about license agreements or settlement agreements.\n\n03:36PM 20 Those were never discussed. They were talking about a business\n\n 21 proposal. And those business discussions were not futile, they\n\n 22 were ongoing the week before the lawsuit was filed. The\n\n 23 parties were talking about their weekends and what they did.\n\n 24 They were talking about excitement over the opportunity. And\n\n03:36PM 25 even Lancium's or OBM's own CEO says that the type of\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 7 of 23\n 7\n\n\n\n\n 1 arrangement that was being discussed would not cause him any\n\n 2 indigestion.\n\n 3 Those are the contemporaneous objective facts\n\n 4 that are shown by the documents themselves that have been put\n\n03:37PM 5 into the record. And even the declarations by Mr. Lawrence\n\n 6 admit that he was in discussions and was encouraging further\n\n 7 discussions right up to the days before the lawsuit was filed.\n\n 8 THE COURT: Okay. Thank you very much.\n\n 9 Let me hear from the other side.\n\n03:37PM 10 MR. MILLER: Good afternoon again, Your Honor.\n\n 11 Rodney Miller here on behalf of OBM.\n\n 12 As stated in OBM's declaratory judgment action\n\n 13 and also reiterated multiple times in our briefing, Lancium is,\n\n 14 to us, mischaracterizing the business -- alleged business --\n\n03:37PM 15 ongoing business discussions that they're alleging took place\n\n 16 between the parties. And based on -- I'm going through the --\n\n 17 based on the objective factors that I'm going to discuss and\n\n 18 the totality of circumstances, it is truly our position that we\n\n 19 are at a crossroads and we need some type of resolution from\n\n03:38PM 20 the Court in order for our client to safely move forward\n\n 21 with --\n\n 22 THE COURT: What points have you not reached resolution\n\n 23 or reached some kind of comfort?\n\n 24 MR. MILLER: So in November -- that's one of the issues\n\n03:38PM 25 that we have going on. November the 12th, Mr. Lawrence, he\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 8 of 23\n 8\n\n\n\n\n 1 provided a declaration and he's adamant that Lancium -- during\n\n 2 the discussions, Lancium stated that his customers could be\n\n 3 infringing the Lancium patents. And that was the true start of\n\n 4 what -- the back-and-forth between the two parties.\n\n03:39PM 5 And after that -- after that conversation,\n\n 6 Mr. Lawrence immediately called his counsel, he called his\n\n 7 attorneys. He called us over at Womble. And after that,\n\n 8 Mr. Lawrence, as discussed in his declaration, was having\n\n 9 conversations with Lancium. But in those conversations, he was\n\n03:39PM 10 basically trying to prevent what we have going on right now.\n\n 11 And what happened? After Lancium -- Lancium\n\n 12 reached out to him multiple times and for two or three\n\n 13 different occasions, Mr. Lawrence did not respond and on\n\n 14 April the 3rd, he then receives a letter -- a letter not from a\n\n03:40PM 15 lawyer who wants to discuss business terms, not from some\n\n 16 corporate attorney, he receives a letter from litigation\n\n 17 counsel -- IP litigation counsel.\n\n 18 And in that letter, they identify the Foreman\n\n 19 software, my client's product; they say that that product could\n\n03:40PM 20 relate to Lancium's patents; and then they include in an\n\n 21 attachment the patent.\n\n 22 And in our briefing on top of -- due to prior\n\n 23 conversations, in our briefing we just wanted to point the\n\n 24 judge back to Hewlett-Packard versus Acceleron.\n\n03:40PM 25 What's very interesting in that letter -- the\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 9 of 23\n 9\n\n\n\n\n 1 attorneys were really great at drafting the letter and not\n\n 2 using certain magic words or specifically stating, hey, you\n\n 3 infringed, but they do present -- again, present the patent;\n\n 4 they compare the patent to the product.\n\n03:41PM 5 And what happens next? My client is worried, as\n\n 6 stated in his declaration, he doesn't know what's going to\n\n 7 happen next. So what does he do? He reaches out to Lancium.\n\n 8 Per the instructions in the letter, he reaches out to Lancium\n\n 9 to try to discuss some type of business deal. And in those\n\n03:41PM 10 discussions, Lancium proposed terms and in those terms that\n\n 11 they proposed were from him -- they were unreasonable terms\n\n 12 because those terms would have prevented him from practicing in\n\n 13 the field that he wanted to practice in.\n\n 14 And that's where we are, Your Honor. We have --\n\n03:41PM 15 Lancium, they do a really good job of discussing or talking\n\n 16 about the small communications or the fact that my client tries\n\n 17 to be friendly and tries to be respectful, they somehow use\n\n 18 that as a way of ignoring the severity of what's going on,\n\n 19 ignoring the fact that their client has a history of suing\n\n03:42PM 20 other companies as it relates to this patent; ignoring the fact\n\n 21 that they did, in fact, tell my client that his customers who\n\n 22 were using Foreman could be infringing; the fact that based\n\n 23 even on their briefing, that they have this belief that their\n\n 24 patent somehow covers this broad range of ERCOT Demand Response\n\n03:42PM 25 CLR function standards that have been going on in Texas for a\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 10 of 23\n 10\n\n\n\n\n 1 number of years. And they somehow, even through conversations\n\n 2 with my client, they've had a history of trying to corner that\n\n 3 market. So --\n\n 4 THE COURT: Let's go through your individual\n\n03:43PM 5 allegations.\n\n 6 You made the point that Lancium has filed two\n\n 7 infringement lawsuits against software companies, but hadn't it\n\n 8 been made clear in the cases that -- that prior lawsuits is not\n\n 9 generally one of the more telling indicia of a need for\n\n03:43PM 10 declaratory judgment suit? I think I have one case I'm\n\n 11 familiar with where I held that.\n\n 12 MR. MILLER: Your Honor -- I'm sorry.\n\n 13 THE COURT: Other declaratory judgments have had\n\n 14 extensive history of patent litigation with their adversaries\n\n03:43PM 15 and here we're only talking about two lawsuits in three years,\n\n 16 right?\n\n 17 MR. MILLER: That's correct, Your Honor. But I say\n\n 18 from that, I look at the totality of the circumstances. I look\n\n 19 at, as stated in our declaratory judgment action, these are --\n\n03:44PM 20 the back-and-forth has been going on for quite some time.\n\n 21 So it is not just the -- we're not looking at the\n\n 22 litigation history of Lancium by itself. We're looking at the\n\n 23 litigation history of Lancium, in addition to the letter that\n\n 24 was provided to him from litigation counsel, in addition to the\n\n03:44PM 25 threat of his customers somehow potentially infringing the\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 11 of 23\n 11\n\n\n\n\n 1 Lancium patents that were stated in the meeting in November.\n\n 2 THE COURT: And Innovative Therapies case, the Federal\n\n 3 Circuit said, quote, \"Prior litigation is a circumstance to be\n\n 4 considered in assessing the totality of the circumstances,\" end\n\n03:45PM 5 quote.\n\n 6 Infringement suits against other parties do not\n\n 7 establish declaratory judgment jurisdiction unless there's some\n\n 8 additional suit, threatening act, directed towards the\n\n 9 declaratory judgment plaintiff.\n\n03:45PM 10 I just don't think 2020 and 2020 suits are\n\n 11 sufficient.\n\n 12 And there's a statement that Foreman could be\n\n 13 infringing. The Federal Circuit in the same case said that\n\n 14 informal conversations where a patentee has not seen and\n\n03:45PM 15 evaluated plaintiff's product for infringement do not\n\n 16 constitute a threat.\n\n 17 I think if we bring each one of these down,\n\n 18 they're all, I think, insufficient. The totality might be\n\n 19 sufficient, but Lancium's letter to OBM identified the patent\n\n03:46PM 20 in OBM's product line. It doesn't really -- it didn't impose a\n\n 21 response deadline or included detailed infringement analysis or\n\n 22 use more aggressive language than that, did it?\n\n 23 MR. MILLER: The letter -- I point you, again,\n\n 24 Your Honor, to the HP versus Acceleron case. The letter was\n\n03:46PM 25 drafted in a way where the letter asked the client to ask our\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 12 of 23\n 12\n\n\n\n\n 1 client -- if they said, hey, I understand my client -- quote,\n\n 2 \"I understand my client has attempted to reach out to you\n\n 3 numerous times to discuss your software, but you have not\n\n 4 responded,\" end quote.\n\n03:46PM 5 And the letter asked for my client to reach out\n\n 6 to Mr. Rock. And when my client reached out to Mr. Rock,\n\n 7 Lancium -- they delayed discussions afterwards.\n\n 8 And after a month -- after a month of delay and\n\n 9 during that time Mr. Lawrence, my client, again, asked for them\n\n03:47PM 10 to provide terms, they delayed more and then we ended up\n\n 11 having -- Womble -- we ended up having to send a letter on our\n\n 12 own a month later that stated that we did not infringe -- our\n\n 13 client did not infringe.\n\n 14 The next day or a few days thereafter, Lancium\n\n03:47PM 15 did have another meeting with my client. And during that\n\n 16 meeting, they stated that again they didn't want -- they didn't\n\n 17 want to have to -- I'm trying to get the exact quote from\n\n 18 here -- but they were trying to avoid litigation for both\n\n 19 parties.\n\n03:48PM 20 THE COURT: Lancium has been quiet for a while.\n\n 21 Anything you want to add? Lancium, is there anything you would\n\n 22 like to add?\n\n 23 MR. LEAVELL: Yes. Thank you, Your Honor. Just very\n\n 24 briefly, the HP case that they rely on heavily, the patent\n\n03:48PM 25 owner in that case was a nonpracticing entity -- an entity who\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 13 of 23\n 13\n\n\n\n\n 1 solely existed for suing for patent infringement, had no other\n\n 2 business and that's all they did.\n\n 3 And their letter that they sent in the HP case\n\n 4 demanded a response in two weeks and had a very detailed\n\n03:48PM 5 analysis of how the infringement occurred.\n\n 6 That's a very different letter. That's very\n\n 7 different circumstances than the situation here where Lancium\n\n 8 is not a patent troll, they're not a nonpracticing entity,\n\n 9 they're not in the business of suing people. They're in the\n\n03:48PM 10 business of controlling data centers.\n\n 11 You're correct that the two prior suits -- two\n\n 12 suits in three years is not a lot; but if you look even deeper,\n\n 13 they're very different defendants, very different situations,\n\n 14 where there were numerous letters that Lancium sent with\n\n03:49PM 15 detailed allegations that express an explicit allegation of\n\n 16 infringement and those letters were ignored for months before\n\n 17 Lancium had no choice but to sue those defendants.\n\n 18 Here, Lancium sent a letter without any threat,\n\n 19 without any allegation, with no analysis of infringement, no\n\n03:49PM 20 deadline for a response, and an express invitation to continue\n\n 21 the collaboration discussions.\n\n 22 A month later -- it took OBM one month to respond\n\n 23 to that letter and say they had no intention of infringing our\n\n 24 patent. That was their formal position. And then they sued\n\n03:49PM 25 two weeks later. It took them a month to respond to our\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 14 of 23\n 14\n\n\n\n\n 1 letter. They sent a letter, and then two weeks later filed\n\n 2 their lawsuit.\n\n 3 And without ever even -- all this concern, all\n\n 4 this fear -- I don't mean to be -- I don't mean to joke,\n\n03:50PM 5 Your Honor; and this isn't really a joke, but it makes me think\n\n 6 of, you know, a couple that's just not communicating.\n\n 7 If OBM had these concerns and they were worried\n\n 8 about litigation threats, they could have said something and\n\n 9 Lancium could have explained exactly what they're thinking\n\n03:50PM 10 which is no, no, no. We want to collaborate. Look at this\n\n 11 opportunity. They never mentioned this to Lancium and to allow\n\n 12 them to run to Court and drag Lancium into court against its\n\n 13 will to spend perhaps millions of dollars to litigate a patent,\n\n 14 that Lancium had no intention of enforcing or filing a lawsuit\n\n03:50PM 15 at this time is just -- because OBM couldn't speak up and say,\n\n 16 hey, what is this? What do you mean? Is there an issue? Are\n\n 17 we going to partner, or are you going to sue us?\n\n 18 That's all they had to do is open a dialogue, and\n\n 19 they didn't. It's a lack of communication, it's unreasonable,\n\n03:51PM 20 and there's nothing that Lancium did under the totality of the\n\n 21 circumstances, under the controlling law can support the\n\n 22 jurisdiction.\n\n 23 And then finally I'll just mention that there is\n\n 24 a discretionary element. I don't think it's a close case,\n\n03:51PM 25 Your Honor; but if it is a close case, then the Court should\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 15 of 23\n 15\n\n\n\n\n 1 exercise its discretion because what the Court needs to\n\n 2 incentivize parties in this situation to do is to communicate\n\n 3 and work out these issues, not run to court. It's clear from\n\n 4 Lancium's point of view -- and what looks like to Lancium is\n\n03:51PM 5 OBM is on a mission to promote itself as some sort of\n\n 6 anti-patent savior and they've got funding behind them.\n\n 7 They've got petroleum companies that are paying for them to\n\n 8 challenge patents and Lancium patents and they want to position\n\n 9 themselves in the industry as some sort of white hat savior\n\n03:52PM 10 against patents.\n\n 11 Well, patents are important and they go back to\n\n 12 the constitution. And the balance that the constitution and\n\n 13 the patent laws strike is that the monopoly granted by patents\n\n 14 is to strike a balance to encourage that innovation and to\n\n03:52PM 15 encourage research and development. That's what Lancium has\n\n 16 done and this sort of trickery with the ongoing promises, the\n\n 17 discussions and promises of meetings only to file suit and pull\n\n 18 that under the rug is not something that should be encouraged\n\n 19 by the courts.\n\n03:52PM 20 THE COURT: Lancium says, \"We're both trying to avoid\n\n 21 litigation.\" That doesn't seem threatening.\n\n 22 You both make good arguments and I can tell\n\n 23 you're both very experienced in the field, but I'm afraid I\n\n 24 just don't see the predicate here for federal jurisdiction.\n\n03:53PM 25 And it does seem like y'all have the potential to\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 16 of 23\n 16\n\n\n\n\n 1 resolve whatever your differences are. With lawyers as skilled\n\n 2 as you guys and I'm sure possessed of substantial drafting\n\n 3 experience, I think you could work it out; but I'm going to\n\n 4 have to grant the motion to dismiss.\n\n03:53PM 5 Thank you all very much.\n\n 6 (The proceedings were adjourned.)\n\n 7 * * * *\n\n 8 REPORTER'S CERTIFICATE\n\n 9 I, Lanie M. Smith, CSR, RMR, CRR, Official\n Court Reporter, United States District Court, Southern District\n 10 of Texas, do hereby certify that the foregoing is a true and\n correct transcript, to the best of my ability and\n 11 understanding, from the record of the proceedings in the\n above-entitled and numbered matter.\n 12\n\n 13 /s/ Lanie M. Smith_______\n Official Court Reporter\n 14\n\n 15\n\n 16\n\n 17\n\n 18\n\n 19\n\n 20\n\n 21\n\n 22\n\n 23\n\n 24\n\n 25\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 17 of 23\n 17\n\n\n / 14:1, 14:5, 14:6, 14:13, 14:14, 14:18, Andrew [1] - 3:9\n 14:19, 14:24, 14:25, 15:5, 15:14, 16:10 another [1] - 12:15\n /s [1] - 16:13 ability [1] - 16:10 answer [1] - 3:22\n about [9] - 4:25, 6:10, 6:19, 6:20, 6:23, ANTHONY [1] - 2:5\n 1 6:24, 9:16, 10:15, 14:8 anti [1] - 15:6\n above [1] - 16:11 anti-patent [1] - 15:6\n 12th [1] - 7:25 above-entitled [1] - 16:11 any [6] - 3:22, 4:13, 6:6, 7:1, 13:18,\n 14 [1] - 1:7 absolutely [1] - 4:14 13:19\n 17th [1] - 1:15 Acceleron [2] - 8:24, 11:24 anything [2] - 12:21\n 18 [1] - 5:1 act [1] - 11:8 appearances [1] - 3:4\n action [2] - 7:12, 10:19 APPEARANCES [1] - 1:13\n 2 adamant [1] - 8:1 April [1] - 8:14\n add [3] - 3:19, 12:21, 12:22 are [18] - 4:17, 4:21, 5:22, 6:4, 6:7, 6:8,\n 20006 [1] - 1:22 addition [2] - 10:23, 10:24 6:10, 7:3, 7:4, 7:19, 9:14, 10:19, 11:10,\n 2001 [1] - 1:21 additional [1] - 11:8 14:16, 14:17, 15:7, 15:11, 16:1\n 2020 [2] - 11:10 adjourned [1] - 16:6 argued [1] - 6:5\n 2023 [1] - 1:7 admit [1] - 7:6 arguments [1] - 15:22\n 2121 [1] - 2:6 admits [1] - 5:14 arrangement [1] - 7:1\n 2400 [1] - 1:16 adversaries [1] - 10:14 arrangements [1] - 4:20\n 271 [1] - 1:15 afraid [1] - 15:23 as [13] - 3:15, 4:1, 5:16, 7:12, 8:8, 9:5,\n 29601 [1] - 1:19 after [6] - 8:5, 8:7, 8:11, 12:8 9:18, 9:20, 10:19, 15:5, 15:9, 16:1, 16:2\n afternoon [4] - 3:2, 3:6, 3:12, 7:10 ask [1] - 11:25\n 3 afterwards [1] - 12:7 asked [3] - 11:25, 12:5, 12:9\n again [5] - 7:10, 9:3, 11:23, 12:9, 12:16 assessing [1] - 11:4\n 30363 [1] - 1:16\n against [4] - 10:7, 11:6, 14:12, 15:10 assistance [1] - 6:16\n 3rd [1] - 8:14\n aggressive [1] - 11:22 assume [1] - 3:18\n agree [1] - 4:4 at [14] - 4:13, 4:14, 5:1, 5:2, 6:14, 7:19,\n 4 agreeing [1] - 5:15 8:7, 9:1, 10:18, 10:19, 10:21, 10:22,\n agreement [2] - 5:11, 6:12 14:10, 14:15\n 400 [2] - 1:19, 1:22\n agreements [3] - 5:17, 6:19 Atlanta [1] - 1:16\n 4400 [1] - 2:3\n all [10] - 3:10, 3:16, 4:1, 4:14, 11:18, attachment [1] - 8:21\n 4:23-CV-01798 [1] - 1:4\n 13:2, 14:3, 14:18, 16:5 attempted [1] - 12:2\n allegation [4] - 4:12, 6:13, 13:15, attorney [1] - 8:16\n 5 13:19 attorneys [2] - 8:7, 9:1\n 515 [1] - 2:11 allegations [3] - 6:11, 10:5, 13:15 avoid [2] - 12:18, 15:20\n 550 [1] - 1:18 alleged [1] - 7:14\n alleging [1] - 7:15 B\n allow [1] - 14:11\n 6 back [5] - 5:16, 8:4, 8:24, 10:20, 15:11\n also [3] - 3:8, 3:14, 7:13\n 60606-2833 [1] - 2:3 an [9] - 4:8, 4:15, 4:21, 4:22, 8:20, back-and-forth [2] - 8:4, 10:20\n 12:25, 13:15, 13:20, 14:16 balance [2] - 15:12, 15:14\n analysis [4] - 4:7, 11:21, 13:5, 13:19 Barnes [4] - 2:2, 2:5, 3:13, 3:15\n 7 based [5] - 4:8, 4:10, 7:16, 7:17, 9:22\n And [1] - 7:5\n 700 [1] - 2:6 and [110] - 3:2, 3:8, 3:9, 3:13, 3:14, basically [1] - 8:10\n 75201 [1] - 2:7 4:1, 4:4, 4:6, 4:7, 4:10, 4:14, 4:18, 4:22, be [16] - 3:14, 4:8, 4:18, 5:7, 5:8, 5:23,\n 77002 [1] - 2:12 4:24, 5:3, 5:4, 5:6, 5:8, 5:11, 5:13, 5:16, 5:24, 8:2, 9:17, 9:22, 11:3, 11:12,\n 5:18, 5:19, 5:21, 5:22, 5:25, 6:1, 6:2, 11:18, 14:4, 15:18\n 8 6:5, 6:6, 6:7, 6:11, 6:15, 6:21, 6:23, because [3] - 9:12, 14:15, 15:1\n 6:24, 7:6, 7:13, 7:16, 7:17, 7:19, 8:1, become [1] - 6:14\n 8004 [1] - 2:11 8:3, 8:4, 8:5, 8:7, 8:11, 8:12, 8:13, 8:18, been [7] - 5:1, 6:12, 7:4, 9:25, 10:8,\n 8:20, 8:22, 9:1, 9:5, 9:9, 9:10, 9:14, 10:20, 12:20\n A 9:17, 10:1, 10:15, 10:20, 11:2, 11:10, BEFORE [1] - 1:10\n 11:12, 11:14, 12:5, 12:6, 12:8, 12:10, before [5] - 5:12, 5:20, 6:22, 7:7, 13:16\n a [64] - 3:22, 4:5, 4:7, 4:17, 4:19, 5:4, 12:15, 13:2, 13:3, 13:4, 13:16, 13:20, beginning [1] - 3:4\n5:5, 5:7, 5:8, 5:10, 5:18, 6:2, 6:12, 6:13, 13:23, 13:24, 14:1, 14:3, 14:5, 14:7, behalf [3] - 3:8, 3:21, 7:11\n6:20, 7:19, 8:1, 8:14, 8:16, 9:15, 9:18, 14:8, 14:11, 14:12, 14:15, 14:18, 14:20, behind [1] - 15:6\n9:19, 9:25, 10:2, 10:9, 11:3, 11:12, 14:23, 15:3, 15:4, 15:6, 15:8, 15:11, being [1] - 7:1\n11:14, 11:16, 11:20, 11:25, 12:8, 12:11, 15:12, 15:14, 15:15, 15:16, 15:17, belief [1] - 9:23\n12:12, 12:14, 12:20, 12:25, 13:4, 13:6, 15:22, 15:25, 16:2, 16:10, 16:10, 16:11 best [1] - 16:10\n13:8, 13:12, 13:18, 13:20, 13:22, 13:25, ANDREW [1] - 1:20\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 18 of 23\n 18\n\n\n between [3] - 5:6, 7:16, 8:4 collaboration [3] - 4:25, 6:1, 13:21 day [2] - 5:12, 12:14\n Beverina [1] - 3:9 collaborative [3] - 4:20, 5:6, 5:11 days [4] - 5:12, 5:20, 7:7, 12:14\n BEVERINA [1] - 1:20 comfort [1] - 7:23 DC [1] - 1:22\n Bond [4] - 1:15, 1:18, 1:21, 3:7 communicate [1] - 15:2 deadline [2] - 11:21, 13:20\n both [5] - 5:5, 12:18, 15:20, 15:22, communicating [1] - 14:6 deal [1] - 9:9\n15:23 communication [1] - 14:19 declaration [4] - 5:15, 8:1, 8:8, 9:6\n brief [1] - 5:21 communications [2] - 5:19, 9:16 declarations [1] - 7:5\n briefing [4] - 7:13, 8:22, 8:23, 9:23 Communications [1] - 5:22 declaratory [10] - 4:3, 4:7, 4:9, 6:4,\n briefly [2] - 3:22, 12:24 companies [4] - 4:21, 9:20, 10:7, 15:7 7:12, 10:10, 10:13, 10:19, 11:7, 11:9\n bring [1] - 11:17 company [2] - 4:19, 4:22 deeper [1] - 13:12\n broad [1] - 9:24 compare [1] - 9:4 defendant [1] - 3:11\n Bruce [1] - 3:14 complaint [2] - 4:4, 6:2 DEFENDANT [1] - 2:1\n BRUCE [1] - 2:1 computer [1] - 1:25 defendant's [1] - 3:17\n burden [1] - 4:2 concern [1] - 14:3 defendants [2] - 13:13, 13:17\n business [13] - 5:17, 5:19, 5:24, 6:20, concerns [1] - 14:7 delay [1] - 12:8\n6:21, 7:14, 7:15, 8:15, 9:9, 13:2, 13:9, considered [1] - 11:4 delayed [2] - 12:7, 12:10\n13:10 constitute [1] - 11:16 deliver [1] - 5:25\n but [15] - 4:17, 6:7, 8:9, 9:3, 10:7, constitution [2] - 15:12 deliverables [1] - 5:16\n10:17, 11:19, 12:3, 12:18, 13:12, 13:17, contemporaneous [2] - 5:3, 7:3 Demand [1] - 9:24\n14:5, 14:25, 15:23, 16:3 context [1] - 6:8 demanded [1] - 13:4\n by [10] - 1:24, 4:8, 5:5, 5:14, 6:7, 7:4, continue [4] - 4:25, 5:17, 5:18, 13:20 Design [1] - 5:22\n7:5, 10:22, 15:13, 15:19 continuing [1] - 5:23 desire [1] - 4:25\n controlling [2] - 13:10, 14:21 detailed [3] - 11:21, 13:4, 13:15\n C controversy [1] - 4:5 development [1] - 15:15\n conversation [1] - 8:5 dialogue [1] - 14:18\n C [1] - 3:1 conversations [5] - 8:9, 8:23, 10:1, Dickinson [4] - 1:15, 1:18, 1:21, 3:7\n called [3] - 8:6, 8:7 11:14 did [9] - 6:23, 8:13, 9:21, 11:22, 12:12,\n can [3] - 3:18, 14:21, 15:22 corner [1] - 10:2 12:13, 12:15, 13:2, 14:20\n can't [2] - 5:23, 5:24 corporate [1] - 8:16 didn't [4] - 11:20, 12:16, 14:19\n case [12] - 4:5, 5:21, 5:22, 10:10, 11:2, correct [3] - 10:17, 13:11, 16:10 differences [1] - 16:1\n11:13, 11:24, 12:24, 12:25, 13:3, 14:24, could [8] - 5:11, 8:2, 8:19, 9:22, 11:12, different [5] - 8:13, 13:6, 13:7, 13:13\n14:25 14:8, 14:9, 16:3 directed [1] - 11:8\n cases [4] - 6:4, 6:7, 10:8 couldn't [1] - 14:15 discretion [1] - 15:1\n cause [1] - 7:1 counsel [5] - 3:4, 8:6, 8:17, 10:24 discretionary [1] - 14:24\n centers [1] - 13:10 couple [2] - 3:23, 14:6 discuss [4] - 7:17, 8:15, 9:9, 12:3\n CEO [2] - 5:14, 6:25 course [1] - 6:14 discussed [4] - 4:16, 6:20, 7:1, 8:8\n certain [1] - 9:2 Court [10] - 2:9, 2:9, 2:10, 7:20, 14:12, discussing [2] - 5:1, 9:15\n CERTIFICATE [1] - 16:8 14:25, 15:1, 16:9, 16:13 discussions [17] - 5:17, 5:24, 5:25,\n certify [1] - 16:10 court [4] - 6:5, 6:15, 14:12, 15:3 6:3, 6:6, 6:7, 6:9, 6:14, 6:21, 7:6, 7:7,\n challenge [1] - 15:8 COURT [12] - 1:1, 3:2, 3:10, 3:16, 3:24, 7:15, 8:2, 9:10, 12:7, 13:21, 15:17\n Chicago [1] - 2:3 7:8, 7:22, 10:4, 10:13, 11:2, 12:20, dismiss [3] - 3:18, 3:20, 16:4\n choice [1] - 13:17 15:20 dispute [1] - 4:2\n Circuit [2] - 11:3, 11:13 Court's [2] - 4:6, 6:16 DISTRICT [3] - 1:1, 1:1, 1:10\n circumstance [1] - 11:3 courts [1] - 15:19 District [4] - 2:10, 2:10, 16:9\n circumstances [6] - 4:12, 7:18, 10:18, covers [1] - 9:24 DIVISION [1] - 1:2\n11:4, 13:7, 14:21 Craig [1] - 3:14 DJ [1] - 6:2\n cite [1] - 5:21 CRAIG [1] - 2:1 do [9] - 9:3, 9:7, 9:15, 11:6, 11:15,\n cited [1] - 6:7 crossroads [1] - 7:19 14:16, 14:18, 15:2, 16:10\n clear [6] - 4:1, 5:23, 6:7, 6:11, 10:8, CRR [2] - 2:9, 16:9 documents [3] - 5:3, 6:18, 7:4\n15:3 CSR [2] - 2:9, 16:9 does [2] - 9:7, 15:25\n clearly [1] - 4:25 customers [3] - 8:2, 9:21, 10:25 doesn't [4] - 4:1, 9:6, 11:20, 15:21\n client [15] - 7:20, 9:5, 9:16, 9:19, 9:21, dollars [1] - 14:13\n10:2, 11:25, 12:1, 12:2, 12:5, 12:6,\n12:9, 12:13, 12:15\n D don't [6] - 3:23, 11:10, 14:4, 14:24,\n 15:24\n client's [1] - 8:19 D [2] - 2:1, 3:1 done [1] - 15:16\n close [2] - 14:24, 14:25 Dallas [1] - 2:7 DORITY [1] - 1:17\n CLR [1] - 9:25 Daniel [1] - 3:13 Dority [1] - 3:9\n collaborate [1] - 14:10 DANIEL [1] - 2:5 down [1] - 11:17\n collaborating [1] - 4:23 data [1] - 13:10 drafted [1] - 11:25\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 19 of 23\n 19\n\n\n drafting [2] - 9:1, 16:2 fees [1] - 5:8 has [8] - 4:7, 9:19, 10:6, 10:20, 11:14,\n drag [1] - 14:12 few [1] - 12:14 12:2, 12:20, 15:15\n Drive [1] - 2:2 field [2] - 9:13, 15:23 hat [1] - 15:9\n due [1] - 8:22 file [2] - 6:1, 15:17 have [20] - 3:8, 5:1, 5:16, 7:4, 7:22,\n during [3] - 8:1, 12:9, 12:15 filed [7] - 5:12, 5:14, 5:20, 6:22, 7:7, 7:25, 8:10, 9:12, 9:14, 9:23, 9:25,\n 10:6, 14:1 10:10, 10:13, 12:3, 12:15, 12:17, 14:8,\n E filing [1] - 14:14 14:9, 15:25, 16:4\n finally [1] - 14:23 having [3] - 8:8, 12:11\n e [1] - 5:4 fine [1] - 3:24 he [15] - 5:15, 5:18, 7:6, 7:25, 8:6, 8:7,\n E [3] - 1:17, 3:1 first [1] - 4:1 8:9, 8:14, 8:16, 9:6, 9:7, 9:8, 9:13\n e-mails [1] - 5:4 FOR [2] - 1:14, 2:1 he's [1] - 8:1\n each [1] - 11:17 for [24] - 3:11, 4:3, 4:7, 4:17, 5:1, 6:6, hear [1] - 7:9\n effort [1] - 5:6 6:12, 6:13, 7:20, 8:12, 9:25, 10:9, HEARD [2] - 1:10, 1:14\n either [1] - 6:15 10:20, 11:15, 12:5, 12:9, 12:18, 12:20, Heard [1] - 3:8\n element [1] - 14:24 13:1, 13:16, 13:20, 15:7, 15:24 HEARING [1] - 1:9\n Ellison [1] - 3:3 foregoing [1] - 16:10 heavily [1] - 12:24\n ELLISON [1] - 1:10 Foreman [3] - 8:18, 9:22, 11:12 held [1] - 10:11\n encourage [2] - 15:14, 15:15 formal [1] - 13:24 here [9] - 3:17, 4:10, 6:17, 7:11, 10:15,\n encouraged [1] - 15:18 forth [3] - 4:4, 8:4, 10:20 12:18, 13:7, 13:18, 15:24\n encouraging [2] - 5:18, 7:6 forward [1] - 7:20 hereby [1] - 16:10\n end [2] - 11:4, 12:4 found [1] - 6:5 Hewlett [1] - 8:24\n ended [2] - 12:10, 12:11 friendly [1] - 9:17 Hewlett-Packard [1] - 8:24\n enforcing [1] - 14:14 from [14] - 3:14, 6:2, 7:9, 7:19, 8:14, hey [3] - 9:2, 12:1, 14:16\n entirely [1] - 4:11 8:15, 8:16, 9:11, 9:12, 10:18, 10:24, him [5] - 7:1, 8:12, 9:11, 9:12, 10:24\n entirety [1] - 4:12 12:17, 15:3, 16:11 his [8] - 5:15, 8:2, 8:6, 8:8, 9:6, 9:21,\n entitled [2] - 6:15, 16:11 function [1] - 9:25 10:25\n entity [3] - 12:25, 13:8 funding [1] - 15:6 history [5] - 9:19, 10:2, 10:14, 10:22,\n ERCOT [1] - 9:24 further [4] - 5:25, 6:6, 7:6 10:23\n especially [1] - 5:8 furtherance [1] - 6:1 honest [1] - 5:5\n establish [2] - 4:2, 11:7 futile [3] - 6:6, 6:15, 6:21 Honor [12] - 3:6, 3:7, 3:12, 3:21, 7:10,\n evaluated [1] - 11:15 9:14, 10:12, 10:17, 11:24, 12:23, 14:5,\n even [7] - 5:14, 6:25, 7:5, 9:23, 10:1, G 14:25\n13:12, 14:3 HONORABLE [1] - 1:10\n ever [1] - 14:3 G [1] - 3:1 Houston [1] - 2:12\n exact [1] - 12:17 generally [1] - 10:9 HOUSTON [2] - 1:2, 1:5\n exactly [1] - 14:9 genuine [1] - 4:11 how [1] - 13:5\n excitement [1] - 6:24 Georgia [1] - 1:16 however [1] - 6:16\n exercise [1] - 15:1 get [2] - 5:16, 12:17 HP [3] - 11:24, 12:24, 13:3\n existed [1] - 13:1 go [2] - 10:4, 15:11\n experience [1] - 16:3 going [13] - 5:7, 6:16, 7:16, 7:17, 7:25, I\n experienced [1] - 15:23 8:10, 9:6, 9:18, 9:25, 10:20, 14:17, 16:3\n explained [1] - 14:9 good [6] - 3:2, 3:6, 3:12, 7:10, 9:15, I [21] - 3:1, 3:8, 10:10, 10:11, 10:17,\n explicit [1] - 13:15 15:22 10:18, 11:10, 11:17, 11:18, 11:23, 12:1,\n explore [1] - 5:18 got [2] - 15:6, 15:7 12:2, 14:4, 14:24, 15:22, 15:23, 16:3,\n express [2] - 13:15, 13:20 grant [1] - 16:4 16:9\n extensive [1] - 10:14 granted [1] - 15:13 I'll [2] - 3:22, 14:23\n great [2] - 3:25, 9:1 I'm [8] - 7:16, 7:17, 10:10, 10:12,\n Greenville [1] - 1:19 12:17, 15:23, 16:2, 16:3\n F I've [1] - 3:18\n guys [1] - 16:2\n face [1] - 4:24 identified [1] - 11:19\n fact [6] - 4:11, 9:16, 9:19, 9:20, 9:21, H identify [1] - 8:18\n9:22 if [11] - 3:23, 4:10, 4:18, 5:2, 6:10,\n factors [1] - 7:17 H [2] - 1:14, 2:1 6:14, 11:17, 12:1, 13:12, 14:7, 14:25\n facts [2] - 4:8, 7:3 had [9] - 10:2, 10:13, 13:1, 13:4, 13:17, ignored [1] - 13:16\n familiar [1] - 10:11 13:23, 14:7, 14:14, 14:18 ignoring [3] - 9:18, 9:19, 9:20\n fear [2] - 4:10, 14:4 hadn't [1] - 10:7 Illinois [1] - 2:3\n fears [1] - 4:8 happen [1] - 9:7 immediacy [1] - 4:6\n federal [1] - 15:24 happened [1] - 8:11 immediate [1] - 4:15\n Federal [2] - 11:2, 11:13 happens [1] - 9:5 immediately [1] - 8:6\n happy [1] - 3:22 imminent [1] - 4:15\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 20 of 23\n 20\n\n\n important [2] - 4:21, 15:11 James [1] - 3:9 licensing [1] - 6:8\n impose [1] - 11:20 job [1] - 9:15 like [5] - 3:19, 4:19, 12:22, 15:4, 15:25\n in [53] - 3:3, 3:19, 4:4, 4:11, 4:16, 5:5, joke [2] - 14:4, 14:5 line [3] - 3:8, 3:14, 11:20\n5:10, 5:14, 5:21, 6:1, 6:8, 6:15, 7:6, judge [1] - 8:24 litigate [1] - 14:13\n7:12, 7:13, 7:20, 7:24, 8:8, 8:9, 8:18, JUDGE [1] - 1:10 litigation [13] - 4:14, 4:15, 5:9, 8:16,\n8:20, 8:22, 8:23, 8:25, 9:6, 9:8, 9:9, judgment [9] - 4:3, 4:7, 4:9, 6:5, 7:12, 8:17, 10:14, 10:22, 10:23, 10:24, 11:3,\n9:10, 9:12, 9:13, 9:21, 9:25, 10:8, 10:10, 10:19, 11:7, 11:9 12:18, 14:8, 15:21\n10:15, 10:19, 10:23, 10:24, 11:1, 11:4, judgments [1] - 10:13 LLC [1] - 1:7\n11:13, 11:20, 11:25, 12:25, 13:3, 13:4, jurisdiction [4] - 4:3, 11:7, 14:22, LLP [5] - 1:15, 1:18, 1:21, 2:2, 2:5\n13:9, 13:12, 15:2, 15:9, 15:23, 16:11 15:24 look [4] - 10:18, 13:12, 14:10\n INC [1] - 1:4 just [8] - 8:23, 10:21, 11:10, 12:23, looking [3] - 4:19, 10:21, 10:22\n incentivize [1] - 15:2 14:6, 14:15, 14:23, 15:24 looks [1] - 15:4\n include [1] - 8:20 lot [5] - 4:17, 5:4, 5:7, 13:12\n included [1] - 11:21 K lucrative [1] - 4:20\n indication [1] - 4:21\n indicia [1] - 10:9 K [1] - 1:21 M\n indigestion [1] - 7:2 Keith [1] - 3:3\n individual [1] - 10:4 KEITH [1] - 1:10 M [3] - 2:9, 16:9, 16:13\n industry [1] - 15:9 key [1] - 3:23 made [4] - 5:7, 5:8, 10:6, 10:8\n informal [1] - 11:14 kind [1] - 7:23 magic [1] - 9:2\n information [1] - 6:1 know [2] - 9:6, 14:6 mails [1] - 5:4\n infringe [2] - 12:12, 12:13 Main [1] - 1:18\n infringed [1] - 9:3 L make [4] - 5:6, 5:11, 5:23, 15:22\n infringement [12] - 4:13, 6:11, 6:13, makes [1] - 14:5\n10:7, 11:6, 11:15, 11:21, 13:1, 13:5, lack [1] - 14:19 market [1] - 10:3\n13:16, 13:19 Lancium [39] - 3:3, 3:21, 4:16, 4:19, matter [2] - 4:3, 16:11\n infringing [5] - 8:3, 9:22, 10:25, 11:13, 4:24, 5:10, 5:18, 7:13, 8:1, 8:2, 8:3, 8:9, me [3] - 3:13, 7:9, 14:5\n13:23 8:11, 9:7, 9:8, 9:10, 9:15, 10:6, 10:22, mean [3] - 14:4, 14:16\n innovation [1] - 15:14 10:23, 11:1, 12:7, 12:14, 12:20, 12:21, mechanical [1] - 1:24\n Innovative [1] - 11:2 13:7, 13:14, 13:17, 13:18, 14:9, 14:11, MedImmune [1] - 4:5\n innovative [1] - 4:22 14:12, 14:14, 14:20, 15:4, 15:8, 15:15, meet [1] - 5:24\n instructions [1] - 9:8 15:20 meeting [3] - 11:1, 12:15, 12:16\n insufficient [1] - 11:18 LANCIUM [1] - 1:7 meetings [2] - 5:15, 15:17\n intention [2] - 13:23, 14:14 Lancium's [4] - 6:25, 8:20, 11:19, 15:4 mention [1] - 14:23\n interest [1] - 5:5 language [1] - 11:22 mentioned [1] - 14:11\n interested [1] - 5:10 Lanie [3] - 2:9, 16:9, 16:13 messages [1] - 5:4\n interesting [1] - 8:25 later [4] - 12:12, 13:22, 13:25, 14:1 might [1] - 11:18\n into [2] - 7:5, 14:12 law [2] - 5:21, 14:21 Miller [2] - 3:7, 7:11\n invitation [1] - 13:20 Lawrence [7] - 5:14, 7:5, 7:25, 8:6, MILLER [7] - 1:14, 3:6, 7:10, 7:24,\n involved [1] - 5:9 8:8, 8:13, 12:9 10:12, 10:17, 11:23\n involvement [1] - 4:7 laws [1] - 15:13 millions [1] - 14:13\n IP [1] - 8:17 lawsuit [8] - 5:8, 5:12, 5:13, 5:20, 6:22, mind [1] - 3:23\n 7:7, 14:2, 14:14\n is [32] - 3:3, 3:7, 3:12, 4:2, 4:4, 4:16, mischaracterizing [1] - 7:14\n5:7, 5:9, 6:15, 7:13, 7:18, 9:5, 10:8, lawsuits [3] - 10:7, 10:8, 10:15\n mission [1] - 15:5\n10:21, 11:3, 12:21, 13:8, 13:12, 14:10, lawyer [1] - 8:15\n money [4] - 5:6, 5:7, 5:11\n14:15, 14:16, 14:18, 14:23, 14:25, 15:2, lawyers [1] - 16:1\n monopoly [1] - 15:13\n15:4, 15:5, 15:13, 15:14, 15:18, 16:10 lawyers' [1] - 5:8\n month [6] - 12:8, 12:12, 13:22, 13:25\n isn't [1] - 14:5 leading [1] - 5:13\n months [3] - 5:1, 6:12, 13:16\n issue [2] - 4:14, 14:16 least [1] - 5:1\n more [4] - 5:7, 10:9, 11:22, 12:10\n issues [2] - 7:24, 15:3 LEAVELL [4] - 2:1, 3:21, 3:25, 12:23\n motion [3] - 3:17, 3:20, 16:4\n it [16] - 4:2, 4:11, 5:23, 7:18, 9:20, Leavell [1] - 3:14\n MOTION [1] - 1:9\n10:7, 10:21, 11:20, 11:22, 13:22, 13:25, less [2] - 4:13, 4:15\n move [1] - 7:20\n14:5, 14:25, 15:25, 16:3 let [1] - 7:9\n Mr [9] - 5:14, 7:5, 7:25, 8:6, 8:8, 8:13,\n it's [6] - 4:1, 6:10, 14:19, 14:24, 15:3 let's [1] - 10:4\n 12:6, 12:9\n its [4] - 4:17, 4:24, 14:12, 15:1 letter [22] - 4:16, 4:24, 8:14, 8:16, 8:18, MR [17] - 1:14, 1:14, 1:17, 1:20, 2:1,\n itself [2] - 10:22, 15:5 8:25, 9:1, 9:8, 10:23, 11:19, 11:23, 2:1, 2:5, 3:6, 3:12, 3:21, 3:25, 7:10,\n 11:24, 11:25, 12:5, 12:11, 13:3, 13:6, 7:24, 10:12, 10:17, 11:23, 12:23\n 13:18, 13:23, 14:1\n J letters [2] - 13:14, 13:16\n much [4] - 4:13, 4:15, 7:8, 16:5\n multiple [2] - 7:13, 8:12\n JAMES [1] - 1:17 license [2] - 6:12, 6:19\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 21 of 23\n 21\n\n\n my [12] - 8:19, 9:5, 9:16, 9:21, 10:2, One [1] - 2:2 predicate [1] - 15:24\n12:1, 12:2, 12:5, 12:6, 12:9, 12:15, ongoing [4] - 6:8, 6:22, 7:15, 15:16 present [2] - 9:3\n16:10 only [3] - 5:10, 10:15, 15:17 Preston [1] - 3:8\n open [1] - 14:18 PRESTON [1] - 1:14\n N opportunity [2] - 6:24, 14:11 pretend [1] - 5:23\n or [17] - 4:3, 4:15, 6:8, 6:12, 6:13, 6:19, prevent [1] - 8:10\n N [1] - 3:1 6:25, 7:23, 8:12, 9:2, 9:15, 9:16, 11:21, prevented [1] - 9:12\n need [3] - 6:6, 7:19, 10:9 12:14, 14:14, 14:17 Prior [1] - 11:3\n needs [1] - 15:1 order [1] - 7:20 prior [3] - 8:22, 10:8, 13:11\n negotiating [1] - 6:12 other [6] - 4:20, 7:9, 9:20, 10:13, 11:6, Proceedings [1] - 1:24\n never [2] - 6:20, 14:11 13:1 proceedings [2] - 16:6, 16:11\n next [3] - 9:5, 9:7, 12:14 others [1] - 5:22 PROCEEDINGS [1] - 1:9\n no [12] - 4:12, 4:14, 6:6, 13:1, 13:17, our [12] - 5:21, 7:13, 7:18, 7:20, 8:22, produced [1] - 1:25\n13:19, 13:23, 14:10, 14:14 8:23, 10:19, 11:25, 12:11, 12:12, 13:23, product [5] - 8:19, 9:4, 11:15, 11:20\n nondisclosure [1] - 5:17 13:25 promises [2] - 15:16, 15:17\n nonpracticing [2] - 12:25, 13:8 out [9] - 6:2, 8:12, 9:7, 9:8, 12:2, 12:5, promising [3] - 5:16, 5:24, 5:25\n North [2] - 2:2, 2:6 12:6, 15:3, 16:3 promote [2] - 4:18, 15:5\n not [27] - 4:8, 5:2, 6:16, 6:18, 6:21, 7:1, over [3] - 6:12, 6:24, 8:7 proposal [1] - 6:21\n7:22, 8:13, 8:14, 8:15, 9:1, 10:8, 10:21, own [3] - 6:18, 6:25, 12:12 proposed [2] - 9:10, 9:11\n11:6, 11:14, 11:15, 12:3, 12:12, 12:13, owner [1] - 12:25 proud [1] - 4:18\n13:8, 13:9, 13:12, 14:6, 15:3, 15:18 owners [1] - 4:17 provide [1] - 12:10\n nothing [1] - 14:20 provided [2] - 8:1, 10:24\n November [3] - 7:24, 7:25, 11:1 P pull [2] - 6:2, 15:17\n now [1] - 8:10 put [2] - 5:10, 7:4\n number [1] - 10:1 P [2] - 1:10, 3:1\n numbered [1] - 16:11 Packard [1] - 8:24\n numerous [2] - 12:3, 13:14 papers [3] - 3:18, 3:19, 4:10\n Q\n NW [2] - 1:15, 1:21 particular [1] - 4:13 questions [1] - 3:22\n parties [10] - 5:1, 5:6, 5:11, 6:10, 6:23, quiet [1] - 12:20\n O 7:16, 8:4, 11:6, 12:19, 15:2 quite [1] - 10:20\n parties' [1] - 6:18 quote [5] - 11:3, 11:5, 12:1, 12:4,\n O [1] - 3:1 partner [1] - 14:17 12:17\n objective [4] - 4:8, 5:3, 7:3, 7:17 party [1] - 6:15\n OBM [12] - 1:4, 3:3, 3:5, 3:8, 4:1, 6:8, patent [18] - 4:13, 4:17, 6:13, 8:21, 9:3,\n7:11, 11:19, 13:22, 14:7, 14:15, 15:5\n R\n 9:4, 9:20, 9:24, 10:14, 11:19, 12:24,\n OBM's [6] - 4:2, 4:10, 5:14, 6:25, 7:12, 13:1, 13:8, 13:24, 14:13, 15:6, 15:13 R [2] - 1:14, 3:1\n11:20 patentee [1] - 11:14 range [1] - 9:24\n occasions [1] - 8:13 patents [12] - 4:17, 4:18, 4:21, 8:3, Ratain [1] - 3:14\n occurred [1] - 13:5 8:20, 11:1, 15:8, 15:10, 15:11, 15:13 RATAIN [1] - 2:1\n of [70] - 2:10, 3:4, 3:7, 3:8, 3:10, 3:16, paying [1] - 15:7 reach [2] - 12:2, 12:5\n3:21, 3:23, 4:1, 4:5, 4:12, 4:13, 4:14, Pearl [1] - 2:6 reached [4] - 7:22, 7:23, 8:12, 12:6\n4:15, 4:17, 4:18, 4:22, 5:4, 6:1, 6:8, people [1] - 13:9 reaches [2] - 9:7, 9:8\n6:11, 6:14, 6:25, 7:11, 7:18, 7:19, 7:23, per [1] - 9:8 read [1] - 3:18\n7:24, 8:3, 8:22, 9:9, 9:15, 9:18, 9:19, perhaps [1] - 14:13 reality [1] - 4:6\n9:24, 10:1, 10:2, 10:9, 10:14, 10:18, petroleum [1] - 15:7 really [4] - 9:1, 9:15, 11:20, 14:5\n10:22, 10:23, 10:25, 11:4, 11:17, 12:8, place [2] - 5:20, 7:15 reasons [1] - 4:17\n13:5, 13:9, 13:10, 13:15, 13:19, 13:23, PLAINTIFF [1] - 1:14 receives [2] - 8:14, 8:16\n14:6, 14:13, 14:14, 14:19, 14:20, 15:4, plaintiff [2] - 6:5, 11:9 record [3] - 3:3, 7:5, 16:11\n15:5, 15:9, 15:16, 15:17, 16:2, 16:10, plaintiff's [1] - 11:15 recorded [1] - 1:24\n16:10, 16:11\n please [1] - 3:5 reiterated [1] - 7:13\n OF [2] - 1:1, 1:9\n point [6] - 5:2, 6:14, 8:23, 10:6, 11:23, relate [1] - 8:20\n Official [4] - 2:9, 2:9, 16:9, 16:13\n 15:4 relates [1] - 9:20\n okay [2] - 3:17, 7:8 points [2] - 3:23, 7:22 relationship [1] - 5:19\n on [25] - 3:2, 3:7, 3:8, 3:13, 3:17, 3:19, position [3] - 7:18, 13:24, 15:8 rely [1] - 12:24\n3:21, 4:8, 4:10, 4:24, 6:17, 7:11, 7:16,\n possessed [1] - 16:2 Reporter [4] - 2:9, 2:9, 16:9, 16:13\n7:17, 7:25, 8:10, 8:13, 8:22, 9:18, 9:23,\n potential [1] - 15:25 REPORTER'S [1] - 16:8\n9:25, 10:20, 12:11, 12:24, 15:5\n potentially [1] - 10:25 requires [1] - 4:5\n once [1] - 5:8\n practice [1] - 9:13 research [1] - 15:15\n one [6] - 4:16, 7:24, 10:9, 10:10, 11:17,\n practicing [1] - 9:12 resolution [2] - 7:19, 7:22\n13:22\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 22 of 23\n 22\n\n\n resolve [1] - 16:1 Southern [1] - 16:9 12:24, 12:25, 13:3, 13:11, 13:14, 13:15,\n respectful [1] - 9:17 SOUTHERN [1] - 1:1 13:23, 13:24, 14:14, 14:20, 14:23, 15:7,\n respond [3] - 8:13, 13:22, 13:25 speak [1] - 14:15 15:12, 15:13, 15:14, 15:18, 15:21,\n responded [1] - 12:4 specifically [1] - 9:2 16:10\n Response [1] - 9:24 spend [1] - 14:13 that's [12] - 3:24, 4:19, 6:16, 7:24,\n response [3] - 11:21, 13:4, 13:20 standard [1] - 4:4 9:14, 10:17, 13:2, 13:6, 14:6, 14:18,\n right [5] - 5:12, 5:20, 7:7, 8:10, 10:16 standards [1] - 9:25 15:15\n RMR [2] - 2:9, 16:9 start [1] - 8:3 THE [14] - 1:10, 1:14, 2:1, 3:2, 3:10,\n rock [2] - 12:6 stated [7] - 7:12, 8:2, 9:6, 10:19, 11:1, 3:16, 3:24, 7:8, 7:22, 10:4, 10:13, 11:2,\n RODNEY [1] - 1:14 12:12, 12:16 12:20, 15:20\n Rodney [2] - 3:7, 7:11 statement [1] - 11:12 the [140] - 3:2, 3:8, 3:13, 3:18, 3:19,\n Room [1] - 2:11 States [2] - 2:10, 16:9 4:4, 4:6, 4:11, 4:12, 4:13, 4:24, 4:25,\n rug [2] - 6:2, 15:18 STATES [2] - 1:1, 1:10 5:1, 5:3, 5:6, 5:11, 5:12, 5:13, 5:17,\n run [3] - 6:15, 14:12, 15:3 stating [1] - 9:2 5:20, 5:21, 6:2, 6:4, 6:5, 6:7, 6:8, 6:16,\n Rusk [1] - 2:11 stenography [1] - 1:24 6:18, 6:22, 6:24, 6:25, 7:3, 7:4, 7:5, 7:7,\n step [1] - 3:22 7:9, 7:14, 7:16, 7:17, 7:18, 7:20, 7:24,\n 7:25, 8:2, 8:3, 8:4, 8:14, 8:18, 8:21,\n S Street [4] - 1:15, 1:18, 1:21, 2:6\n 8:23, 8:25, 9:1, 9:3, 9:4, 9:8, 9:13, 9:16,\n strike [2] - 15:13, 15:14\n S [1] - 3:1 9:18, 9:19, 9:20, 9:22, 10:6, 10:8, 10:9,\n subject [1] - 4:3\n safely [1] - 7:20 10:18, 10:20, 10:21, 10:22, 10:23,\n subjective [1] - 4:8\n said [4] - 11:3, 11:13, 12:1, 14:8 10:24, 10:25, 11:1, 11:2, 11:4, 11:8,\n submitted [1] - 5:5\n same [1] - 11:13 11:13, 11:18, 11:19, 11:23, 11:24,\n substantial [2] - 4:5, 16:2\n 11:25, 12:5, 12:14, 12:17, 12:24, 13:3,\n savior [2] - 15:6, 15:9 such [1] - 5:16\n 13:5, 13:7, 13:9, 13:11, 13:21, 14:20,\n say [4] - 8:19, 10:17, 13:23, 14:15 sue [2] - 13:17, 14:17\n 14:21, 14:25, 15:1, 15:9, 15:12, 15:13,\n says [2] - 6:25, 15:20 sued [1] - 13:24\n 15:16, 15:18, 15:19, 15:23, 15:24,\n SC [1] - 1:19 sufficient [3] - 4:6, 11:11, 11:19\n 15:25, 16:4, 16:10, 16:10, 16:11\n secure [1] - 4:19 suing [3] - 9:19, 13:1, 13:9 The [1] - 16:6\n see [1] - 15:24 suit [3] - 10:10, 11:8, 15:17 their [12] - 4:3, 4:10, 4:18, 6:23, 9:19,\n seek [1] - 6:16 Suite [5] - 1:16, 1:19, 1:22, 2:3, 2:6 9:23, 10:14, 13:3, 13:24, 14:2\n seem [2] - 15:21, 15:25 suits [4] - 11:6, 11:10, 13:11, 13:12 them [5] - 12:9, 13:25, 14:12, 15:6,\n seen [1] - 11:14 support [1] - 14:21 15:7\n send [1] - 12:11 sure [1] - 16:2 themselves [2] - 7:4, 15:9\n sent [5] - 4:24, 13:3, 13:14, 13:18, 14:1 surprise [1] - 5:14 then [10] - 6:1, 6:14, 6:15, 8:14, 8:20,\n SEPTEMBER [1] - 1:7\n 12:10, 13:24, 14:1, 14:23, 14:25\n set [1] - 4:4 T Therapies [1] - 11:2\n settlement [3] - 6:8, 6:13, 6:19\n there [12] - 4:12, 4:14, 4:16, 4:17, 5:7,\n severity [1] - 9:18 take [1] - 3:4\n 5:22, 6:4, 6:6, 12:21, 13:14, 14:16,\n should [2] - 14:25, 15:18 taking [1] - 5:19\n 14:23\n show [2] - 5:5, 6:18 talking [7] - 6:10, 6:19, 6:20, 6:23,\n there's [6] - 4:2, 5:4, 5:21, 11:7, 11:12,\n shown [1] - 7:4 6:24, 9:15, 10:15\n 14:20\n side [1] - 7:9 talks [1] - 4:25\n thereafter [1] - 12:14\n sides [1] - 5:5 tell [2] - 9:21, 15:22\n these [4] - 10:19, 11:17, 14:7, 15:3\n simply [1] - 5:10 telling [1] - 10:9\n they [37] - 6:18, 6:20, 6:21, 6:23, 6:24,\n situation [2] - 13:7, 15:2 terms [7] - 6:13, 8:15, 9:10, 9:11, 9:12,\n 8:18, 8:19, 8:20, 9:3, 9:4, 9:11, 9:15,\n situations [1] - 13:13 12:10\n 9:17, 9:21, 9:23, 10:1, 12:1, 12:7,\n skilled [1] - 16:1 Test [1] - 5:22 12:10, 12:16, 12:18, 12:24, 13:2, 13:3,\n small [3] - 4:19, 4:20, 9:16 Texas [5] - 2:7, 2:10, 2:12, 9:25, 16:10 13:23, 13:24, 14:1, 14:7, 14:8, 14:11,\n Smith [3] - 2:9, 16:9, 16:13 TEXAS [2] - 1:1, 1:5 14:18, 14:19, 15:8, 15:11\n so [4] - 7:24, 9:7, 10:3, 10:21 text [1] - 5:4 they're [8] - 4:21, 7:15, 11:18, 13:8,\n software [3] - 8:19, 10:7, 12:3 than [3] - 5:7, 11:22, 13:7 13:9, 13:13, 14:9\n solely [1] - 13:1 thank [4] - 3:6, 7:8, 12:23, 16:5 they've [4] - 6:11, 10:2, 15:6, 15:7\n some [9] - 6:14, 7:19, 7:23, 8:15, 9:9, that [80] - 4:2, 4:7, 4:21, 4:22, 4:24, think [7] - 10:10, 11:10, 11:17, 11:18,\n10:20, 11:7, 15:5, 15:9 5:1, 5:2, 5:15, 5:22, 5:23, 6:1, 6:4, 6:5, 14:5, 14:24, 16:3\n somehow [4] - 9:17, 9:24, 10:1, 10:25 6:10, 6:13, 6:25, 7:1, 7:4, 7:6, 7:15, thinking [1] - 14:9\n something [2] - 14:8, 15:18 7:17, 7:18, 7:25, 8:1, 8:2, 8:3, 8:5, 8:7, this [15] - 3:3, 3:7, 3:12, 9:20, 9:23,\n sorry [1] - 10:12 8:18, 8:19, 8:25, 9:10, 9:13, 9:16, 9:18, 9:24, 14:3, 14:4, 14:5, 14:10, 14:11,\n sort [3] - 15:5, 15:9, 15:16 9:19, 9:21, 9:22, 9:23, 9:25, 10:2, 10:6, 14:15, 14:16, 15:2, 15:16\n South [2] - 1:18, 1:22 10:8, 10:11, 10:18, 10:23, 11:1, 11:12, Thornburg [4] - 2:2, 2:5, 3:13, 3:15\n southern [1] - 2:10 11:13, 11:22, 12:9, 12:12, 12:15, 12:16, those [14] - 5:19, 5:25, 6:2, 6:5, 6:14,\n\f Case 4:23-cv-01798 Document 31 Filed on 02/14/24 in TXSD Page 23 of 23\n 23\n\n\n6:20, 6:21, 7:3, 8:9, 9:9, 9:10, 9:12, us [3] - 7:14, 8:7, 14:17 13:14, 13:19, 15:16, 16:1\n13:16, 13:17 use [2] - 9:17, 11:22 without [3] - 13:18, 13:19, 14:3\n threat [5] - 4:14, 4:15, 10:25, 11:16, using [2] - 9:2, 9:22 Womble [6] - 1:15, 1:18, 1:21, 3:7, 8:7,\n13:18 12:11\n threatening [2] - 11:8, 15:21 V words [1] - 9:2\n threats [1] - 14:8 work [2] - 15:3, 16:3\n three [3] - 8:12, 10:15, 13:12 Valenzuela [1] - 3:13 worried [2] - 9:5, 14:7\n through [5] - 3:22, 5:8, 7:16, 10:1, VALENZUELA [2] - 2:5, 3:12 worthy [1] - 4:22\n10:4 versus [3] - 3:3, 8:24, 11:24 would [4] - 3:19, 7:1, 9:12, 12:21\n time [3] - 10:20, 12:9, 14:15 very [12] - 4:24, 5:23, 7:8, 8:25, 12:23,\n times [3] - 7:13, 8:12, 12:3 13:4, 13:6, 13:13, 15:23, 16:5 Y\n to [112] - 3:10, 3:16, 3:17, 3:19, 3:20, via [1] - 1:25\n3:22, 4:2, 4:6, 4:8, 4:18, 4:19, 4:25, 5:6, view [1] - 15:4 y'all [1] - 15:25\n5:7, 5:12, 5:13, 5:15, 5:16, 5:17, 5:18, VS [1] - 1:5 years [4] - 5:2, 10:1, 10:15, 13:12\n5:20, 5:23, 5:24, 5:25, 6:15, 7:7, 7:14, yes [2] - 6:14, 12:23\n7:17, 7:20, 8:10, 8:12, 8:15, 8:20, 8:22, W you [26] - 3:6, 3:10, 3:16, 3:18, 3:19,\n8:23, 8:24, 9:4, 9:6, 9:7, 9:8, 9:9, 9:13, 3:23, 5:23, 5:24, 7:8, 7:22, 9:2, 10:6,\n9:17, 9:20, 10:2, 10:23, 10:24, 11:3, Wacker [1] - 2:2 11:23, 12:2, 12:3, 12:21, 12:23, 13:12,\n11:19, 11:24, 11:25, 12:2, 12:3, 12:5, want [5] - 12:16, 12:17, 12:21, 14:10, 14:6, 14:16, 14:17, 15:22, 16:2, 16:3,\n12:6, 12:10, 12:11, 12:17, 12:18, 12:21, 15:8 16:5\n12:22, 13:17, 13:20, 13:22, 13:23, wanted [2] - 8:23, 9:13 you're [5] - 4:19, 4:22, 13:11, 15:23\n13:25, 14:4, 14:10, 14:11, 14:12, 14:13, wants [1] - 8:15 Your [12] - 3:6, 3:7, 3:12, 3:21, 7:10,\n14:17, 14:18, 15:1, 15:2, 15:3, 15:4, warrant [1] - 4:6 9:14, 10:12, 10:17, 11:24, 12:23, 14:5,\n15:5, 15:7, 15:8, 15:11, 15:14, 15:17, was [26] - 4:11, 4:12, 4:14, 5:7, 5:10, 14:25\n15:20, 15:25, 16:3, 16:4, 16:10 5:12, 5:14, 5:15, 5:18, 5:20, 6:6, 6:16, your [4] - 3:20, 10:4, 12:3, 16:1\n too [1] - 3:16 6:22, 7:1, 7:6, 7:7, 8:3, 8:8, 8:9, 10:24,\n took [3] - 7:15, 13:22, 13:25 11:24, 12:25, 13:24\n top [1] - 8:22 Washington [1] - 1:22\n totality [5] - 7:18, 10:18, 11:4, 11:18, way [2] - 9:18, 11:25\n14:20 we [15] - 4:4, 5:21, 7:18, 7:19, 7:25,\n towards [1] - 11:8 8:10, 8:23, 9:14, 11:17, 12:10, 12:11,\n transcript [2] - 1:25, 16:10 12:12, 14:10, 14:17\n TRANSCRIPT [1] - 1:9 we'll [1] - 3:4\n trickery [1] - 15:16 We're [1] - 15:20\n tries [2] - 9:16, 9:17 we're [6] - 3:2, 3:17, 3:21, 10:15,\n troll [1] - 13:8 10:21, 10:22\n true [3] - 6:10, 8:3, 16:10 week [2] - 5:13, 6:22\n truly [1] - 7:18 weekends [1] - 6:23\n try [1] - 9:9 weeks [5] - 5:13, 6:12, 13:4, 13:25,\n trying [5] - 8:10, 10:2, 12:17, 12:18, 14:1\n15:20 welcome [3] - 3:2, 3:10, 3:16\n two [14] - 5:2, 5:12, 5:13, 5:20, 6:10, well [3] - 3:15, 4:1, 15:11\n8:4, 8:12, 10:6, 10:15, 13:4, 13:11, were [19] - 5:19, 6:6, 6:18, 6:20, 6:21,\n13:25, 14:1 6:22, 6:23, 6:24, 9:1, 9:11, 9:22, 11:1,\n type [3] - 6:25, 7:19, 9:9 12:18, 13:14, 13:16, 14:7, 16:6\n what [14] - 6:16, 6:23, 7:22, 8:4, 8:10,\n U 8:11, 9:5, 9:7, 14:9, 14:16, 15:1, 15:4,\n 15:15\n under [5] - 4:11, 6:2, 14:20, 14:21, what's [4] - 3:19, 8:25, 9:6, 9:18\n15:18 whatever [1] - 16:1\n understand [2] - 12:1, 12:2 when [1] - 12:6\n understanding [1] - 16:11 where [8] - 5:11, 6:4, 9:14, 10:11,\n United [2] - 2:10, 16:9 11:14, 11:25, 13:7, 13:14\n UNITED [2] - 1:1, 1:10 which [4] - 4:5, 4:16, 5:13, 14:10\n unless [1] - 11:7 while [1] - 12:20\n unreasonable [4] - 4:9, 4:11, 9:11, white [1] - 15:9\n14:19 who [3] - 8:15, 9:21, 12:25\n up [7] - 5:12, 5:13, 5:20, 7:7, 12:10, will [2] - 3:14, 14:13\n12:11, 14:15 with [16] - 3:4, 3:13, 4:20, 4:23, 6:11,\n US [3] - 1:15, 1:18, 1:21 7:21, 8:9, 10:2, 10:11, 10:14, 12:15,\n\f","ocr_status":2,"date_upload":"2025-01-22T07:08:48.003975-08:00","document_number":"31","attachment_number":null,"pacer_doc_id":"179044331189","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Transcript","acms_document_guid":""}],"date_created":"2024-02-14T08:59:56.250173-08:00","date_modified":"2025-01-22T07:03:24.946593-08:00","date_filed":"2024-02-14","time_filed":"10:49:19","entry_number":31,"recap_sequence_number":"2024-02-14.001","pacer_sequence_number":88,"description":"TRANSCRIPT re: Motion hearing proceedings held on 9/14/2023 before Judge Keith P Ellison. Court Reporter/Transcriber Lanie Smith. Release of Transcript Restriction set for 5/14/2024., filed. (LanieSmith, 4) (Entered: 02/14/2024)","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/372465088/","id":372465088,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999440/","id":379999440,"tags":[],"absolute_url":"","date_created":"2023-12-05T22:14:33.313164-08:00","date_modified":"2025-01-22T07:03:24.908086-08:00","sha1":"","page_count":null,"file_size":null,"filepath_local":null,"filepath_ia":"","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"","ocr_status":null,"date_upload":null,"document_number":"","attachment_number":null,"pacer_doc_id":"","is_available":false,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"","acms_document_guid":""}],"date_created":"2023-12-05T22:14:33.299933-08:00","date_modified":"2025-01-22T07:03:24.896198-08:00","date_filed":"2023-09-14","time_filed":null,"entry_number":null,"recap_sequence_number":"2023-09-14.001","pacer_sequence_number":null,"description":"Minute Entry for proceedings held before Judge Keith P Ellison. MOTION HEARING held on 9/14/2023 on Defendants Motion to Dismiss (ECF No. 17). The Court GRANTED the Motion. Appearances: Daniel Anthony Valenzuela, Craig D. Leavell, Bruce H. Ratain, Preston H Heard, Andrew Beverina, Rodney R Miller, James E. Dority.(Court Reporter: L. Smith) (Law Clerk: AW), filed.(ArturoRivera, 4)","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/372465087/","id":372465087,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999439/","id":379999439,"tags":[],"absolute_url":"","date_created":"2023-12-05T22:14:33.186420-08:00","date_modified":"2025-01-22T07:03:24.840362-08:00","sha1":"","page_count":null,"file_size":null,"filepath_local":null,"filepath_ia":"","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"","ocr_status":null,"date_upload":null,"document_number":"","attachment_number":null,"pacer_doc_id":"","is_available":false,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"","acms_document_guid":""}],"date_created":"2023-12-05T22:14:33.176400-08:00","date_modified":"2025-01-22T07:03:24.829187-08:00","date_filed":"2023-08-24","time_filed":null,"entry_number":null,"recap_sequence_number":"2023-08-24.004","pacer_sequence_number":null,"description":"initial conference is terminated. 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Defendant filed a Motion to Dismiss (ECF No. 17). On September 14, 2023, the Court\n\ngranted Defendant\u2019s Motion to Dismiss with Prejudice.\n\n Pursuant to Federal Rule of Civil Procedure 58(a), and for the reasons set forth at the\n\nhearing, final judgment is hereby ENTERED for Defendants. Accordingly, the Clerk is directed\n\nto CLOSE this case.\n\n IT IS SO ORDERED.\n\n SIGNED at Houston, Texas on this the 14th day of September, 2023.\n\n\n _______________________________\n KEITH P. ELLISON\n UNITED STATES DISTRICT JUDGE\n\f","ocr_status":2,"date_upload":"2023-12-05T22:22:35.246649-08:00","document_number":"30","attachment_number":null,"pacer_doc_id":"179043500215","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Judgment - Final","acms_document_guid":""}],"date_created":"2023-09-14T15:06:56.916832-07:00","date_modified":"2025-01-22T07:03:24.918259-08:00","date_filed":"2023-09-14","time_filed":"16:59:12","entry_number":30,"recap_sequence_number":"2023-09-14.002","pacer_sequence_number":86,"description":"FINAL JUDGMENT. Case terminated on 9/14/23(Signed by Judge Keith P Ellison) Parties notified.(ArturoRivera, 4) (Entered: 09/14/2023)","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/363621397/","id":363621397,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/370393492/","id":370393492,"tags":[],"absolute_url":"/docket/67396788/28/obm-inc-v-lancium-llc/","date_created":"2023-08-31T15:55:12.433214-07:00","date_modified":"2025-01-22T07:03:24.864017-08:00","sha1":"707ef1caf474e94e5a39a11736cf010171ebf464","page_count":1,"file_size":18203,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.28.0.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.28.0.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 28 Filed on 08/31/23 in TXSD Page 1 of 1\n\n\nUNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF TEXAS\n\n HOUSTON DIVISION\n\nOBM, Inc.\n Plaintiff(s),\n\nv. Case No. 4:23\u2212cv\u221201798\n\nLancium LLC\n Defendant(s).\n\n\n\n NOTICE OF SETTING\n PLEASE TAKE NOTICE\n\n HEARING: Motion Hearing\n RE: Motion to Dismiss \u2212 #17\n DATE: 9/8/2023\n TIME: 11:30 AM\n HAS BEEN SET BEFORE\n JUDGE KEITH P. ELLISON\n\n\n ALL PARTIES MAY APPEAR BY TELEPHONE BY CALLING IN\n ON THE COURT'S DIAL\u2212IN NUMBER AT 713\u2212250\u22125238.\n ENTER CONFERENCE ID: 45238, FOLLOWED BY PASSWORD: 13579.\n\nIF THE PARTIES WOULD LIKE TO JOINTLY REQUEST AN IN\u2212PERSON HEARING,\n PLEASE NOTIFY ARTURO RIVERA BY EMAIL.\n\n\n\n\nNathan Ochsner, Clerk Date: August 31, 2023\nBy Deputy Clerk, A. Rivera\n\f","ocr_status":2,"date_upload":"2023-12-05T22:22:07.372226-08:00","document_number":"28","attachment_number":null,"pacer_doc_id":"179043415746","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Notice of Setting (FORM, noticing) - Judge Ellison","acms_document_guid":""}],"date_created":"2023-08-31T15:55:12.424219-07:00","date_modified":"2025-01-22T07:03:24.850408-08:00","date_filed":"2023-08-31","time_filed":"17:12:58","entry_number":28,"recap_sequence_number":"2023-08-31.001","pacer_sequence_number":77,"description":"NOTICE of Setting as to 17 MOTION to Dismiss 1 Complaint . Parties notified. Motion Hearing set for 9/8/2023 at 11:30 AM in by telephone before Judge Keith P Ellison, filed. (ArturoRivera, 4) (Entered: 08/31/2023)","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/363621392/","id":363621392,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/370393487/","id":370393487,"tags":[],"absolute_url":"/docket/67396788/29/obm-inc-v-lancium-llc/","date_created":"2023-08-31T15:55:12.128814-07:00","date_modified":"2025-01-22T07:03:24.888732-08:00","sha1":"30f77b8de9924f0ba6f9273cdfa2d84cdb42744b","page_count":1,"file_size":18247,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.29.0.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.29.0.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 29 Filed on 08/31/23 in TXSD Page 1 of 1\n\n\nUNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF TEXAS\n\n HOUSTON DIVISION\n\nOBM, Inc.\n Plaintiff(s),\n\nv. Case No. 4:23\u2212cv\u221201798\n\nLancium LLC\n Defendant(s).\n\n\n\n NOTICE OF SETTING\n PLEASE TAKE NOTICE\n\n HEARING: Motion Hearing\n RE: Motion to Dismiss \u2212 #17\n Notice of Setting (FORM, noticing) \u2212 Judge Ellison \u2212 #28\n DATE: 9/14/2023\n TIME: 03:30 PM\n HAS BEEN SET BEFORE\n JUDGE KEITH P. ELLISON\n\n\n ALL PARTIES MAY APPEAR BY TELEPHONE BY CALLING IN\n ON THE COURT'S DIAL\u2212IN NUMBER AT 713\u2212250\u22125238.\n ENTER CONFERENCE ID: 45238, FOLLOWED BY PASSWORD: 13579.\nIF THE PARTIES WOULD LIKE TO JOINTLY REQUEST AN IN\u2212PERSON HEARING,\n PLEASE NOTIFY ARTURO RIVERA BY EMAIL.\n\n\n\n\nNathan Ochsner, Clerk Date: August 31, 2023\n\nBy Deputy Clerk, A. Rivera\n\f","ocr_status":2,"date_upload":"2023-12-05T22:22:23.154952-08:00","document_number":"29","attachment_number":null,"pacer_doc_id":"179043415774","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Notice of Setting (FORM, noticing) - Judge Ellison","acms_document_guid":""}],"date_created":"2023-08-31T15:55:12.117654-07:00","date_modified":"2025-01-22T07:03:24.879081-08:00","date_filed":"2023-08-31","time_filed":"17:14:38","entry_number":29,"recap_sequence_number":"2023-08-31.002","pacer_sequence_number":80,"description":"NOTICE of Setting as to 17 MOTION to Dismiss 1 Complaint, 28 motion hearing. Parties notified. Motion Hearing reset for 9/14/2023 at 03:30 PM in by telephone before Judge Keith P Ellison, filed. (ArturoRivera, 4) (Entered: 08/31/2023)","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/362921260/","id":362921260,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/369627039/","id":369627039,"tags":[],"absolute_url":"","date_created":"2023-08-24T13:46:46.471649-07:00","date_modified":"2023-08-25T12:44:18.447830-07:00","sha1":"","page_count":null,"file_size":null,"filepath_local":null,"filepath_ia":"","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"","ocr_status":null,"date_upload":null,"document_number":"","attachment_number":null,"pacer_doc_id":"","is_available":false,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Terminate Deadlines (PUBLIC ENTRY)","acms_document_guid":""}],"date_created":"2023-08-24T13:46:46.467085-07:00","date_modified":"2023-08-25T12:44:18.440905-07:00","date_filed":"2023-08-24","time_filed":"15:18:41","entry_number":null,"recap_sequence_number":"2023-08-24.001","pacer_sequence_number":null,"description":"","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/362888360/","id":362888360,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/369593854/","id":369593854,"tags":[],"absolute_url":"/docket/67396788/27/obm-inc-v-lancium-llc/","date_created":"2023-08-24T10:45:27.615442-07:00","date_modified":"2025-01-22T07:03:24.791857-08:00","sha1":"303d9f2c8407d4fe8ac8a1ac5669b5d315970b43","page_count":5,"file_size":371852,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.27.0.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.27.0.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 27 Filed on 08/24/23 in TXSD Page 1 of 5\n United States District Court\n Southern District of Texas\n\n ENTERED\n August 24, 2023\n IN THE UNITED STATES DISTRICT COURT\n Nathan Ochsner, Clerk\n SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\n OBM, INC.,\n\n Plaintiff, Civil Action No: 4:23-cv-01798\n\n v. JURY TRIAL DEMANDED\n\n LANCIUM LLC,\n\n Defendant.\n\n\n\n PATENT CASE SCHEDULING ORDER\n\n It is hereby ORDERED that the following schedule and the Rules of Practice for Patent Cases in the\nSouthern District of Texas will apply in this case:\n\n\n Friday,\n0 Scheduling Conference\n August 25, 2023\n\n Friday, OBM produces documents and information sufficient to show the\n*1\n September 8, 2023 or operation of the relevant functionality in the Foreman software\n (e.g., source code, schematics, or flow charts)\n 2 weeks after Scheduling Conf. or\n Motion to Dismiss is decided,\n Comply with Fed. R. Civ. P. 26(a)(1): Parties to exchange\n whichever is later\n Initial Disclosures\n Thursday,\n1 PRELIMINARY INFRINGEMENT CONTENTIONS\n December 14, 2023\n Comply with P.R. 3-1 and P.R. 3-2. After this date, it is\n necessary to obtain leave of court to add and/or amend\n infringement contentions, pursuant to Patent Rule (P.R.) 3-7.\n\n JOIN ADDITIONAL PARTIES OR ADD NEW\n PATENTS AND/OR CLAIMS\n It is not necessary to file a motion to join additional parties\n before this date. Thereafter, it is necessary to obtain leave of\n court.\n\n\n\n\n 1\n\f Case 4:23-cv-01798 Document 27 Filed on 08/24/23 in TXSD Page 2 of 5\n\n\n\n\n Thursday,\n2 PRELIMINARY INVALIDITY CONTENTIONS\n January 25, 2024\n Comply with P.R. 3-3 and 3-4. After this date, it is necessary to\n obtain leave of Court to add and/or amend invalidity\n contentions, pursuant to P.R. 3-7.\n\n INEQUITABLE CONDUCT ALLEGATIONS\n Before this date, it is not necessary to file a motion for leave to\n add inequitable conduct allegations. Thereafter, it is necessary\n to obtain leave of court to add inequitable conduct allegations.\n\n Thursday,\n3 EXCHANGE PROPOSED TERMS AND CLAIM\n February 8, 2024\n ELEMENTS FOR CONSTRUCTION\n Comply with P.R. 4-1.\n\n Thursday,\n4 EXCHANGE PRELIMINARY CLAIM\n February 29, 2024\n CONSTRUCTIONS AND EXTRINSIC EVIDENCE\n Comply with P.R. 4-2.\n\n Thursday,\n5 JOINT CLAIM CONSTRUCTION AND PREHEARING\n March 28, 2024\n STATEMENT\n Comply with P.R. 4-3.\n\n Thursday,\n6 AMEND PLEADINGS\n March 28, 2024\n It is not necessary to file a Motion for Leave to Amend before the\n deadline to amend pleadings.\n\n Thursday,\nX RESPONSES TO AMENDED PLEADINGS\n April 11, 2024\n DEADLINE\n\n\n Thursday,\n7 DISCOVERY DEADLINE ON CLAIM\n April 25, 2024\n CONSTRUCTION ISSUES\n See P.R. 4-4.\n\n Thursday,\n8 TECHNOLOGY TUTORIAL DEADLINE\n May 2, 2024\n Provide Court with technology tutorials (optional).\n\n\n\n 2\n\f Case 4:23-cv-01798 Document 27 Filed on 08/24/23 in TXSD Page 3 of 5\n\n\n\n\n Thursday,\n9 OPENING CLAIM CONSTRUCTION BRIEF\n May 16, 2024\n Comply with P.R. 4-5(a)(1).\n\n Thursday,\n10 RESPONSIVE CLAIM CONSTRUCTION BRIEF\n May 30, 2024\n Comply with P.R. 4-5(a)(2).\n\n Thursday,\n11 REPLY CLAIM CONSTRUCTION BRIEF\n June 6, 2024\n Comply with P.R. 4-5(a)(3).\n\n Wednesday, JOINT CLAIM CONSTRUCTION CHART\n12\n July 3, 2024\n Comply with P.R. 4-5(b) and (c).\n\n\n Thursday,\n13 CLAIM CONSTRUCTION (MARKMAN) HEARING\n July 11, 2024\n 10:00\n at ___________.m. at the United States District Court,\n 3A\n Courtroom _______, Houston\n ____________________, Texas.\n Thursday,\n14 Court\u2019s Decision on Claim Construction (Markman Ruling)\n August 22, 2024\n (If ruling is late, parties may seek amendment of remaining\n dates in Scheduling Order.)\n Thursday,\n15 DEADLINE FOR FINAL INFRINGEMENT\n September 19, 2024\n CONTENTIONS AND TO AMEND PLEADINGS ON\n INFRINGEMENT CLAIMS\n NOTE: Except as provided in P.R. 3-6, if the amendment would\n affect preliminary or final infringement contentions, a motion\n must be made under P.R. 3-7 irrespective of whether the\n amendment is made before this deadline.\n Thursday,\n16 PRIVILEGE LOGS/WILLFULNESS\n September 19, 2024\n Comply with P.R.3-8\n All parties furnish privilege logs by this date.\n\n Thursday,\n17 DEADLINE FOR FINAL INVALIDITY CONTENTIONS\n October 3, 2024\n AND TO AMEND PLEADINGS ON INVALIDITY\n CLAIMS.\n NOTE: Except as provided in P.R. 3-6, if the amendment\n would affect preliminary or final invalidity contentions, a\n motion must be made under P.R. 3-7 irrespective of whether the\n amendment is made before this deadline.\n\n\n 3\n\f Case 4:23-cv-01798 Document 27 Filed on 08/24/23 in TXSD Page 4 of 5\n\n\n\n\n Thursday, COMPLETION OF FACT DISCOVERY\n18\n November 7, 2024\n Written discovery requests are NOT timely if they are served so\n close to this deadline that under the Fed. R. Civ. P. the response\n would not be due until after this deadline.\n Thursday,\n19 DESIGNATION OF EXPERTS AND REQUIRED\n October 17, 2024\n REPORTS OTHER THAN CLAIM CONSTRUCTION\n AND ATTORNEYS\u2019 FEES\n Party with burden of proof (\u201cBOP\u201d) on non-construction and\n fees issues shall comply with Fed. R. Civ. P. 26(a)(2)(A-C).\n Thursday,\n20 DESIGNATION OF RESPONSIVE EXPERTS AND\n November 14, 2024\n REQUIRED REPORTS\n Party not having BOP on non-construction and fees issues shall\n comply with Fed. R. Civ. P. 26(a)(2)(A-C).\n Thursday,\n21 COMPLETION OF EXPERT DISCOVERY\n December 12, 2024\n\n\n\n Thursday, February 6, 2025\n22 DISPOSITIVE AND NON-DISPOSITIVE MOTIONS\n DEADLINES (INCLUDING DAUBERT MOTIONS)\n\n\n\n Thursday, May 1, 2025\n23 JOINT PRETRIAL ORDER AND MOTION IN LIMINE\n DEADLINE\n The Joint Pretrial Order will contain the pretrial disclosures\n required by Fed. R. Civ. P. Rule 26(a)(3), Local Rules and this\n Court\u2019s procedures. Plaintiff is responsible for timely filing the\n complete Joint Pretrial Order. Failure to file a Joint Pretrial\n Order timely may lead to dismissal or other sanction in\n accordance with the applicable rules.\n Tuesday, June 24, 2025\n24 FINAL PRETRIAL CONFERENCE\n at 2:00 p.m.\n 3A\n at the United States District Court, Courtroom ______,\n Houston\n ___________________, Texas.\n\n Thursday, April 17, 2025\n25 MEDIATION TO BE COMPLETED BY THIS DATE\n The parties must select a mediator for this case. The parties and\n mediator must comply with S.D. TEXAS LOCAL RULE 16.\n\n\n\n\n 4\n\f Case 4:23-cv-01798 Document 27 Filed on 08/24/23 in TXSD Page 5 of 5\n\n\n\n\n Thursday, June 26, 2025\n26 JURY SELECTION AND TRIAL commences, subject to\n at 9:00 a.m. Court\u2019s criminal docket\n Courtroom 3A\n\n\n\n\nSIGNED at Houston, Texas, on this the 24th day of August, 2023.\n\n\n\n\n JUDGE KEITH P. ELLISON\n UNITED STATES DISTRICT JUDGE\n\n\n\n\n 5\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:53.628826-08:00","document_number":"27","attachment_number":null,"pacer_doc_id":"179043365518","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Docket Control Order (PATENT CASE ONLY)","acms_document_guid":""}],"date_created":"2023-08-24T10:45:27.605562-07:00","date_modified":"2025-01-22T07:03:24.779874-08:00","date_filed":"2023-08-24","time_filed":"12:38:50","entry_number":27,"recap_sequence_number":"2023-08-24.002","pacer_sequence_number":71,"description":"DOCKET CONTROL ORDER and Scope of Permissible Discovery Compliance with PR 3-1 and PR 3-2 due by 12/14/2023 Compliance with PR 3-3 due by 1/25/2024 Compliance with PR 4-1 due by 2/8/2024 Compliance with PR 4-2 due by 2/29/2024 Compliance with PR 4-3 due by 3/28/2024 Amended Pleadings due by 3/28/2024. Response to Amended Pleadings due by 4/11/2024 Technical Advisors Information due by 5/2/2024 Discovery - Claim Construction due by 4/25/2024 Compliance with PR 4-5(a) due by 5/16/2024 Compliance with PR 4-5(b) due by 7/3/2024 Compliance with PR 4-5(c) due by 7/3/2024 Markman Hearing set for 7/11/2024 at 10:00 AM at Courtroom 3A Houston before Judge Keith P Ellison Decision on Claim Construction due by 8/22/2024 Final Infringement Contentions due by 9/19/2024 Final Invalidity Contentions due by 10/3/2024 Compliance with PR 3-8 due by 9/19/2024 Pltf Expert Report due by 10/17/2024. Deft Expert Report due by 11/14/2024. Discovery due by 12/12/2024. Dispositive Motion Filing due by 2/6/2025. Non-Dispositive Motion Filing due by 2/6/2025. Joint Pretrial Order due by 5/1/2025. Mediation due by 4/17/2025. Jury Trial set for 6/26/2025 at 09:00 AM in Courtroom 3A Houston before Judge Keith P Ellison(Signed by Judge Keith P Ellison) Parties notified.(GabrielleLyons, 4) (Entered: 08/24/2023)","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/362888355/","id":362888355,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/369593849/","id":369593849,"tags":[],"absolute_url":"","date_created":"2023-08-24T10:45:27.437545-07:00","date_modified":"2023-08-25T10:36:05.876351-07:00","sha1":"","page_count":null,"file_size":null,"filepath_local":null,"filepath_ia":"","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"","ocr_status":null,"date_upload":null,"document_number":"","attachment_number":null,"pacer_doc_id":"","is_available":false,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Set/Reset Deadlines/Hearings","acms_document_guid":""}],"date_created":"2023-08-24T10:45:27.433167-07:00","date_modified":"2023-08-25T10:36:05.866996-07:00","date_filed":"2023-08-24","time_filed":"12:40:02","entry_number":null,"recap_sequence_number":"2023-08-24.001","pacer_sequence_number":null,"description":"","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/362852306/","id":362852306,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/369556999/","id":369556999,"tags":[],"absolute_url":"/docket/67396788/26/obm-inc-v-lancium-llc/","date_created":"2023-08-24T06:28:51.780275-07:00","date_modified":"2025-01-22T07:03:24.760639-08:00","sha1":"e6e867c6b3d64459d1836904f736e361fc08f47a","page_count":5,"file_size":143083,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.26.0.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.26.0.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 26 Filed on 08/24/23 in TXSD Page 1 of 5\n\n\n\n\n IN THE UNITED STATES DISTRICT COURT\n SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\n OBM, INC.,\n\n Plaintiff, Civil Action No: 4:23-cv-01798\n\n v. JURY TRIAL DEMANDED\n\n LANCIUM LLC,\n\n Defendant.\n\n\n\n PATENT CASE SCHEDULING ORDER1\n\n It is hereby ORDERED that the following schedule and the Rules of Practice for Patent Cases in the\nSouthern District of Texas will apply in this case:\n\n\n0 Friday,\n Scheduling Conference\n August 25, 2023\n\n*1 Friday, OBM produces documents and information sufficient to show the\n September 8, 2023 or operation of the relevant functionality in the Foreman software\n (e.g., source code, schematics, or flow charts)\n 2 weeks after Scheduling Conf. or\n Motion to Dismiss is decided,\n Comply with Fed. R. Civ. P. 26(a)(1): Parties to exchange\n whichever is later\n Initial Disclosures\n1 Thursday,\n PRELIMINARY INFRINGEMENT CONTENTIONS\n December 14, 2023\n Comply with P.R. 3-1 and P.R. 3-2. After this date, it is\n necessary to obtain leave of court to add and/or amend\n infringement contentions, pursuant to Patent Rule (P.R.) 3-7.\n\n JOIN ADDITIONAL PARTIES OR ADD NEW\n PATENTS AND/OR CLAIMS\n It is not necessary to file a motion to join additional parties\n before this date. Thereafter, it is necessary to obtain leave of\n court.\n\n\n\n\n1 The parties note that this Scheduling Order assumes that the pending Motion to Dismiss (Dkt. 17) will be decided no later than\n\nAugust 25, 2023. To the extent the Court decides the pending Motion to Dismiss after August 25, 2023, the parties will meet and\nconfer to discuss whether the agreed schedule needs to be adjusted.\n 1\n\f Case 4:23-cv-01798 Document 26 Filed on 08/24/23 in TXSD Page 2 of 5\n\n\n\n\n2 Thursday,\n PRELIMINARY INVALIDITY CONTENTIONS\n January 25, 2024\n Comply with P.R. 3-3 and 3-4. After this date, it is necessary to\n obtain leave of Court to add and/or amend invalidity\n contentions, pursuant to P.R. 3-7.\n\n INEQUITABLE CONDUCT ALLEGATIONS\n Before this date, it is not necessary to file a motion for leave to\n add inequitable conduct allegations. Thereafter, it is necessary\n to obtain leave of court to add inequitable conduct allegations.\n\n3 Thursday,\n EXCHANGE PROPOSED TERMS AND CLAIM\n February 8, 2024\n ELEMENTS FOR CONSTRUCTION\n Comply with P.R. 4-1.\n\n\n4 Thursday,\n EXCHANGE PRELIMINARY CLAIM\n February 29, 2024\n CONSTRUCTIONS AND EXTRINSIC EVIDENCE\n Comply with P.R. 4-2.\n\n\n5 Thursday,\n JOINT CLAIM CONSTRUCTION AND PREHEARING\n March 28, 2024\n STATEMENT\n Comply with P.R. 4-3.\n\n\n6 Thursday,\n AMEND PLEADINGS\n March 28, 2024\n It is not necessary to file a Motion for Leave to Amend before the\n deadline to amend pleadings.\n\nX Thursday, RESPONSES TO AMENDED PLEADINGS\n April 11, 2024\n DEADLINE\n\n\n7 Thursday,\n DISCOVERY DEADLINE ON CLAIM\n April 25, 2024\n CONSTRUCTION ISSUES\n See P.R. 4-4.\n\n\n8 Thursday,\n TECHNOLOGY TUTORIAL DEADLINE\n May 2, 2024\n Provide Court with technology tutorials (optional).\n\n\n\n 2\n\f Case 4:23-cv-01798 Document 26 Filed on 08/24/23 in TXSD Page 3 of 5\n\n\n\n\n9 Thursday,\n OPENING CLAIM CONSTRUCTION BRIEF\n May 16, 2024\n Comply with P.R. 4-5(a)(1).\n\n\n10 Thursday,\n RESPONSIVE CLAIM CONSTRUCTION BRIEF\n May 30, 2024\n Comply with P.R. 4-5(a)(2).\n\n\n11 Thursday,\n REPLY CLAIM CONSTRUCTION BRIEF\n June 6, 2024\n Comply with P.R. 4-5(a)(3).\n\n\n12 Wednesday, JOINT CLAIM CONSTRUCTION CHART\n July 3, 2024\n Comply with P.R. 4-5(b) and (c).\n\n\n13 Thursday,\n CLAIM CONSTRUCTION (MARKMAN) HEARING\n July 11, 2024\n at ___________.m. at the United States District Court,\n Courtroom _______, ____________________, Texas.\n14 Thursday,\n Court\u2019s Decision on Claim Construction (Markman Ruling)\n August 22, 2024\n (If ruling is late, parties may seek amendment of remaining\n dates in Scheduling Order.)\n15 Thursday,\n DEADLINE FOR FINAL INFRINGEMENT\n September 19, 2024\n CONTENTIONS AND TO AMEND PLEADINGS ON\n INFRINGEMENT CLAIMS\n NOTE: Except as provided in P.R. 3-6, if the amendment would\n affect preliminary or final infringement contentions, a motion\n must be made under P.R. 3-7 irrespective of whether the\n amendment is made before this deadline.\n16 Thursday,\n PRIVILEGE LOGS/WILLFULNESS\n September 19, 2024\n Comply with P.R.3-8\n All parties furnish privilege logs by this date.\n\n17 Thursday,\n DEADLINE FOR FINAL INVALIDITY CONTENTIONS\n October 3, 2024\n AND TO AMEND PLEADINGS ON INVALIDITY\n CLAIMS.\n NOTE: Except as provided in P.R. 3-6, if the amendment\n would affect preliminary or final invalidity contentions, a\n motion must be made under P.R. 3-7 irrespective of whether the\n amendment is made before this deadline.\n\n\n 3\n\f Case 4:23-cv-01798 Document 26 Filed on 08/24/23 in TXSD Page 4 of 5\n\n\n\n\n18 Thursday, COMPLETION OF FACT DISCOVERY\n November 7, 2024\n Written discovery requests are NOT timely if they are served so\n close to this deadline that under the Fed. R. Civ. P. the response\n would not be due until after this deadline.\n\n19 Thursday,\n DESIGNATION OF EXPERTS AND REQUIRED\n October 17, 2024\n REPORTS OTHER THAN CLAIM CONSTRUCTION\n AND ATTORNEYS\u2019 FEES\n Party with burden of proof (\u201cBOP\u201d) on non-construction and\n fees issues shall comply with Fed. R. Civ. P. 26(a)(2)(A-C).\n20 Thursday,\n DESIGNATION OF RESPONSIVE EXPERTS AND\n November 14, 2024\n REQUIRED REPORTS\n Party not having BOP on non-construction and fees issues shall\n comply with Fed. R. Civ. P. 26(a)(2)(A-C).\n21 Thursday,\n COMPLETION OF EXPERT DISCOVERY\n December 12, 2024\n\n\n\n\n22 Thursday, February 6, 2025\n DISPOSITIVE AND NON-DISPOSITIVE MOTIONS\n DEADLINES (INCLUDING DAUBERT MOTIONS)\n\n\n\n23 Thursday, May 1, 2025\n JOINT PRETRIAL ORDER AND MOTION IN LIMINE\n DEADLINE\n The Joint Pretrial Order will contain the pretrial disclosures\n required by Fed. R. Civ. P. Rule 26(a)(3), Local Rules and this\n Court\u2019s procedures. Plaintiff is responsible for timely filing the\n complete Joint Pretrial Order. Failure to file a Joint Pretrial\n Order timely may lead to dismissal or other sanction in\n accordance with the applicable rules.\n24 Tuesday, June 24, 2025\n DOCKET CALL/ FINAL PRETRIAL CONFERENCE\n at the United States District Court, Courtroom ______,\n ___________________, Texas.\n\n\n25 Thursday, April 17, 2025\n MEDIATION TO BE COMPLETED BY THIS DATE\n The parties must select a mediator for this case. The parties and\n mediator must comply with S.D. TEXAS LOCAL RULE 16.\n\n\n\n\n 4\n\f Case 4:23-cv-01798 Document 26 Filed on 08/24/23 in TXSD Page 5 of 5\n\n\n\n\n26 Thursday, June 26, 2025\n JURY SELECTION AND TRIAL commences, subject to\n Court\u2019s criminal docket\n\n\n\n\n SIGNED at _____________, Texas, this ______ day of _____________________, 202__.\n\n\n\n\n JUDGE KEITH P. ELLISON\n UNITED STATES DISTRICT JUDGE\n\n\n\n\n 5\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:36.639058-08:00","document_number":"26","attachment_number":null,"pacer_doc_id":"179043362705","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Proposed Order","acms_document_guid":""}],"date_created":"2023-08-24T06:28:51.770693-07:00","date_modified":"2025-01-22T07:03:24.747300-08:00","date_filed":"2023-08-24","time_filed":"07:31:30","entry_number":26,"recap_sequence_number":"2023-08-24.001","pacer_sequence_number":68,"description":"PROPOSED ORDER (Patent Case Scheduling) re: 23 JointDiscovery/Case Management Plan,, filed.(Miller, Rodney) (Entered: 08/24/2023)","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/362494954/","id":362494954,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/369188249/","id":369188249,"tags":[],"absolute_url":"/docket/67396788/24/obm-inc-v-lancium-llc/","date_created":"2023-08-21T07:49:24.018669-07:00","date_modified":"2025-01-22T07:03:24.704467-08:00","sha1":"653d5e362aca493705665db40346cbb693719b53","page_count":9,"file_size":366931,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.24.0.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.24.0.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 24 Filed on 08/18/23 in TXSD Page 1 of 9\n United States District Court\n Southern District of Texas\n\n ENTERED\n IN THE UNITED STATES DISTRICT COURT August 21, 2023\n FOR THE SOUTHERN DISTRICT OF TEXAS Nathan Ochsner, Clerk\n\n HOUSTON DIVISION\n\nOBM, INC. \u00a7\n \u00a7\n Plaintiff,\n \u00a7\n \u00a7\nv. \u00a7 Civil Action No. 4:23-cv-01798\n \u00a7 JURY TRIAL DEMANDED\nLANCIUM, LLC \u00a7\n \u00a7\n Defendant.\n \u00a7\n\n PROTECTIVE ORDER\n\n The Court enters the following Protective Order (\u201cProtective Order\u201d) pursuant to Rule\n26(c) of the Federal Rules of Civil Procedure (\u201cFED. R. CIV. P.\u201d). It is hereby ORDERED:\n\n1. Proceedings and Information Governed. This Protective Order applies to any document,\ninformation, or other tangible or intangible thing (collectively, \u201cdocuments\u201d) furnished by a party\nto any other party, as well as documents furnished by non-parties who receive subpoenas in\nconnection with this action, if and when the documents are designated by a party or non-party as\n\u201cConfidential Information\u201d in accordance with the terms of this Protective Order. This Protective\nOrder also applies to copies, excerpts, abstracts, analyses, summaries, descriptions, or other forms\nof recorded information or data containing, reflecting, or disclosing all or parts of designated\ndocuments.\n\n2. Designation and Maintenance of Documents and Information.\n\n A. \u201cConfidential Information\u201d designation means that the document contains trade\nsecrets or commercial information not publicly known, which trade secrets or commercial\ninformation is of technical or commercial advantage to its possessor, or other information required\nby law or agreement to be kept confidential. Notwithstanding the provisions of Paragraph 3, all\nproduced or reviewed source code of a party shall be considered Confidential Information regardless of\nwhether marked as such.\n\n B. \u201cConfidential Information\u201d does not include, and this Protective Order does not\napply to, documents already in the knowledge or possession of the party to whom disclosure is\nmade unless that party is already bound by an agreement not to disclose such information, or\ninformation that has been disclosed to the public or third persons in a manner making such information\nno longer confidential.\n\n3. Documents Produced in Discovery and Depositions.\n\n A. Documents and things produced during the course of this litigation within the scope\nof paragraph 2(A) above, may be designated by the producing party as containing \u201cConfidential\n\f Case 4:23-cv-01798 Document 24 Filed on 08/18/23 in TXSD Page 2 of 9\n\n\n\nInformation\u201d by placing on each page and each thing a legend substantially as follows:\n\n CONFIDENTIAL\n\n Similar legends that include the word \u201cConfidential\u201d will suffice, such as \u201cHighly\nConfidential\u201d or \u201cHighly Confidential \u2013 Attorneys Eyes Only,\u201d so that such legends that have\npreviously been applied to documents in other litigations need not be regenerated for this matter.\nAll produced or reviewed source code of a party shall be considered Confidential Information\nregardless of whether marked as such.\n\n B. Depositions\n\n (i) For deposition testimony or exhibits to be entitled to protection under this\nOrder, a party must designate the testimony and exhibits disclosed at a deposition as \u201cConfidential\nInformation\u201d by requesting the reporter to so designate the transcript or any portion of the\ntranscript at the time of the deposition.\n\n (ii) If no such designation is made at the time of the deposition, any party has\nfourteen (14) days after delivery by the court reporter of the transcript of the deposition session to\ndesignate, in writing to the other parties and to the court reporter, what portions of the transcript\nand which exhibits the party designates as \u201cConfidential Information\u201d.\n\n (iii) During the transcription and following fourteen (14) day period after a\ndeposition session, the transcript and exhibits must be treated as Confidential Information, unless\nthe disclosing party consents to less confidential treatment of the information.\n\n (iv) Each party and the court reporter must attach a copy of any final and timely\nwritten designation notice to the transcript and each copy of the transcript in its possession, custody\nor control, and the portions designated in such notice must thereafter be treated in accordance with\nthis Protective Order. It is the responsibility of counsel for each party to maintain materials\ncontaining Confidential Information in a secure manner and appropriately identified so as to allow\naccess to such information only to such persons and under such terms as is permitted under this\nProtective Order.\n\n (v) If no such designation is made at the deposition or within the fourteen (14)\nday period following delivery of the transcript, then the entire deposition will be considered devoid\nof Confidential Information.\n\n4. Inadvertent Failure to Designate.\n\n A. The inadvertent failure to designate a document as \u201cConfidential Information\u201d will\nnot be a waiver of a claim that the document contains confidential information, and will not prevent\nthe producing party from designating such information as confidential at a later date in writing, so\nlong as the designation is done with particularity.\n\n B. In the event a producing party late designates a document as \u201cConfidential\nInformation,\u201d the document must be treated by the receiving party as confidential from the time of\nreceipt of the notice of the \u201cConfidential Information\u201d designation.\n\n5. Challenges to Designations. A party\u2019s designation of documents \u201cConfidential\n\f Case 4:23-cv-01798 Document 24 Filed on 08/18/23 in TXSD Page 3 of 9\n\n\n\nInformation\u201d is not binding if the procedures below are followed:\n\n A. A receiving party may challenge a producing party\u2019s designation at any time. Any\nreceiving party may request in writing that the producing party change the designation. The\nproducing party within fourteen (14) days after receipt of a written challenge, must advise the\nreceiving party whether or not it will change the designation.\n\n B. If the parties are unable to reach agreement after the expiration of this fourteen (14)\nday period, they shall confer. If they cannot resolve the issue, the receiving party may seek an\norder to alter the confidential status of the designated information.\n\n C. Until the presiding judge has ruled on a dispute under this paragraph, the\n\u201cConfidential Information\u201d designation will remain in full force and effect, and the document\ncontinues to be protected by this Protective Order.\n\n6. Disclosure and Use of Confidential Information.\n\n A. Information designated as \u201cConfidential Information\u201d only be used for purposes of\npreparation, trial, and appeal of this action. \u201cConfidential Information\u201d may not be used under any\ncircumstances for prosecuting any patent application, for patent licensing, or for any other purpose.\n\n B. Subject to paragraph 9 below, \u201cConfidential Information\u201d may be disclosed by the\nreceiving party only to the following individuals, provided that such individuals are informed of\nthe terms of this Protective Order: (a) outside counsel of record who have filed an appearance in\nthis action for the receiving party; (b) supporting personnel employed by (a), such as paralegals,\nlegal secretaries, data entry clerks, legal clerks, and private photocopying services; (c) experts or\nconsultants and their support staff; and (d) any persons requested by counsel to furnish\nadministrative or copying services for purposes of preparation, trial, and/or appeal of this action\nsuch as document coding, image scanning, mock trial (including mock jurors), jury profiling,\ntranslation services, court reporting services, demonstrative exhibit preparation, or the creation of\nany computer database from documents.\n\n C. Any attorney or patent agent, and any person associated with a Party that is\npermitted to receive the other Party\u2019s Confidential Information, who obtains, receives, has access\nto, or otherwise learns, in whole or in part, the other Party\u2019s \u201cConfidential Information\u201d under this\nOrder shall not prepare, prosecute, supervise, or assist in the preparation or prosecution of any\npatent application pertaining to the field of the invention of the patent(s)-in-suit during the\npendency of this Action and for one year after its conclusion, including any appeals.\n\n D. Further, prior to disclosing \u201cConfidential Information\u201d a receiving party\u2019s proposed\nexpert or consultant, the receiving party must provide to the producing party a signed\nConfidentiality Agreement in the form attached as Exhibit A, the resume or curriculum vitae of\nthe proposed expert or consultant, the expert or consultant\u2019s business affiliation, and any current\nand past consulting relationships in the industry. The producing party will thereafter have fourteen\n(14) days from receipt of the Confidentiality Agreement to object to any proposed individual. The\nobjection must be made for good cause and in writing, stating with particularity the reasons for the\nobjection. Failure to object within fourteen\n(14) days constitutes approval. If the parties are unable to resolve any objection, the receiving party\nmay apply to the presiding judge to resolve the matter. There will be no disclosure to any proposed\n\f Case 4:23-cv-01798 Document 24 Filed on 08/18/23 in TXSD Page 4 of 9\n\n\n\nindividual during the fourteen (14) day objection period, unless that period is waived by the\nproducing party, or if any objection is made, until the parties have resolved the objection, or the\npresiding judge has ruled upon any resultant motion.\n\n E. Counsel is responsible for the adherence by third-party vendors to the terms and\nconditions of this Protective Order. Counsel may fulfill this obligation by obtaining a signed\nConfidentiality Agreement in the form attached as Exhibit B.\n\n F. \u201cConfidential Information\u201d may be disclosed to a person who is not already allowed\naccess to such information under this Protective Order if:\n(a) the information was previously received or authored by the person or was authored or received\nby a director, officer, employee or agent of the company for which the person is testifying as a\ndesignee under FED. R. CIV. P. 30(b)(6); (b) the designating party is a party for whom the person\nis a director, officer, employee, consultant or agent; or (c) counsel for the party designating the\nmaterial agrees in writing that the specific material may be disclosed to the person. In the event of\ndisclosure under this section 6(F), only the reporter, the person, his or her counsel, the presiding\njudge, and persons to whom disclosure may be made and who are bound by this Protective Order,\nmay be present during the disclosure or discussion of Confidential Information. Disclosure of\nmaterial pursuant to this section 6(F) does not constitute a waiver of the confidential status of the\nmaterial so disclosed.\n\n7. Non-Party Information.\n\n The existence of this Protective Order must be disclosed to any person producing\ndocuments, tangible things, or testimony in this action who may reasonably be expected to desire\nconfidential treatment for such documents, tangible things or testimony. Any such person may\ndesignate documents, tangible things, or testimony confidential pursuant to this Protective Order.\n\n8. Filing Documents With the Court.\n\n Any party may submit Confidential Information to the court under seal by identifying the\ndocument by name and designating the document \u201csealed\u201d in the CM/ECF system of the court. If\na party delivers a copy to the court, the document must be in a sealed envelope bearing the caption\nof this action and a label containing the following:\n\n CONFIDENTIAL INFORMATION\n\n [case caption]\n\n This envelope, which is being filed under seal,\n contains documents that are subject to a Protective Order\n governing the use of confidential discovery material.\n\f Case 4:23-cv-01798 Document 24 Filed on 08/18/23 in TXSD Page 5 of 9\n\n\n\n9. No Prejudice.\n\n Producing or receiving \u201cConfidential Information,\u201d or otherwise complying with the terms\nof this Protective Order, will not: (a) operate as an admission by any party that any particular\n\u201cConfidential Information\u201d contains or reflects trade secrets or any other type of confidential or\nproprietary information; (b) prejudice the rights of a party to object to the production of information\nor material that the party does not consider to be within the scope of discovery; (c) prejudice the\nrights of a party to seek a determination by the presiding judge that particular materials be\nproduced; (d) prejudice the rights of a party to apply to the presiding judge for further protective\norders; or (e) prevent the parties from agreeing in writing to alter or waive the provisions or\nprotections provided for in this Protective Order with respect to any particular information or\nmaterial.\n\n10. Conclusion of Litigation.\n\n Within sixty (60) days after final judgment in this action, including the exhaustion of all\nappeals, or within sixty (60) days after dismissal pursuant to a settlement agreement, each party or\nother person subject to the terms of this Protective Order is under an obligation to destroy or return\nto the producing party all materials and documents containing \u201cConfidential Information,\u201d and to\ncertify to the producing party that this destruction or return has been done. However, outside\ncounsel for any party is entitled to retain all court papers, trial transcripts, exhibits, and attorney\nwork provided that any such materials are maintained and protected in accordance with the terms\nof this Protective Order. Nothing in this Protective Order requires the return or destruction of any\ninformation that is required by law to be retained or that is stored in back-up/archive systems as a\nresult of the ordinary operation of such systems.\n\n11. Other Proceedings.\n\n By entering this Protective Order and limiting the disclosure of information in this case,\nthe presiding judge does not intend to preclude another court from finding that information may\nbe relevant and subject to disclosure in another case. Any person or party subject to this Protective\nOrder who may be subject to a motion to disclose another party\u2019s information designated\n\u201cConfidential Information\u201d pursuant to this Protective Order must promptly notify that party of the\nmotion so that the party may have an opportunity to appear and be heard on whether that\ninformation should be disclosed.\n\n12. Remedies.\n\n This Protective Order will be enforced by the sanctions set forth in FED. R. CIV. P. 37(a)\nand any other sanctions as may be available to the presiding judge, including the power to hold\nparties or other violators of this Protective Order in contempt. All other remedies available to any\nperson injured by a violation of this Protective Order are fully reserved.\n\n13. Relief from Protective Order.\n\n Any party may petition the presiding judge for good cause shown if the party desires relief\nfrom a term or condition of this Protective Order.\n\f Case 4:23-cv-01798 Document 24 Filed on 08/18/23 in TXSD Page 6 of 9\n\n\n\n14. Federal Rule of Evidence 502(d)\n\n The parties having agreed to a clawback agreement, and good cause appearing therefore,\nthe Court hereby orders as follows:\n\n For purposes of this Clawback Agreement, an \"Inadvertently Produced Document\" is a\ndocument produced to a party in this litigation that could have been withheld, in whole or in part,\nbased on a legitimate claim of attorney-client privilege, work-product protection, or other\napplicable privilege.\n\n Inclusion of any Inadvertently Produced Document in a production shall not result in the\nwaiver of any privilege or protection associated with such document, nor result in a subject matter\nwaiver of any kind provided that, pursuant to Federal Rule of Evidence 502(b), (1) the disclosure\nof the document was inadvertent, (2) the producing party took reasonable steps to prevent\ndisclosure, and (3) the producing party promptly took reasonable steps to rectify the error.\n\n A producing party may demand the return of any Inadvertently Produced Document, which\ndemand shall be made to the receiving party's counsel in writing and shall contain information\nsufficient to identify the Inadvertently Produced Document. Within five (5) business days of the\ndemand for the Inadvertently Produced Document, the producing party shall provide the receiving\nparty with a written privilege description for such document that is consistent with the\nrequirements of the Federal Rules of Civil Procedure, setting forth the basis for the claim of\nprivilege for the Inadvertently Produced Document. In the event that any portion of the\nInadvertently Produced Document does not contain privileged information, the producing party\nshall also provide a redacted copy of the Inadvertently Produced Document that omits the\ninformation that the producing party believes is subject to a claim of privilege.\n\n Upon receipt of a written demand for return of an Inadvertently Produced Document, the\nreceiving party shall immediately return or destroy the Inadvertently Produced Document (and any\ncopies thereof) to the producing party and shall immediately delete all electronic versions of the\ndocument.\n\n The receiving party may object to the producing party's designation of an Inadvertently\nProduced Document by providing written notice of such objection within five (5) business days of\nits receipt of a written demand for the return of an Inadvertently Produced Document. Any such\nobjection shall be resolved by the Court after an in camera review of the Inadvertently Produced\nDocument. Pending resolution of the matter by the Court, the parties shall not use any documents\nthat are claimed to be Inadvertently Produced Documents in this litigation.\n\n\n IT IS SO ORDERED.\n\n SIGNED at Houston, Texas on this the 18th day of August, 2023.\n\n\n\n Judge Keith P. Ellison\n United States District Judge\n\f Case 4:23-cv-01798 Document 24 Filed on 08/18/23 in TXSD Page 7 of 9\n\n\n\n\n Exhibit A\n\n IN THE UNITED STATES DISTRICT COURT\n FOR THE SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\nOBM, INC. \u00a7\n \u00a7\n Plaintiff,\n \u00a7\n \u00a7\nversus \u00a7 Civil Action No. 4:23-cv-01798\n \u00a7 JURY TRIAL DEMANDED\nLANCIUM LLC \u00a7\n \u00a7\n Defendant.\n \u00a7\n CONFIDENTIALITY AGREEMENT FOR EXPERT,\n CONSULTANT OR EMPLOYEES OF ANY PARTY\n\n I , under penalty of perjury, 28 U.S.C. \u00a7 1746, that:\n\n 1. Information, including documents and things, designated as \u201cConfidential\nInformation,\u201d as defined in the Protective Order entered in the above-captioned action (\u201cProtective\nOrder\u201d), is being provided to me pursuant to the terms and restrictions of the Protective Order.\n\n 2. I have been given a copy of and have read the Protective Order.\n\n 3. I am familiar with the terms of the Protective Order and I agree to comply with and\nto be bound by its terms.\n\n 4. I submit to the jurisdiction of the United States District Court for the Southern\nDistrict of Texas for enforcement of the Protective Order.\n\n 5. I agree not to use any \u201cConfidential Information\u201d disclosed to me pursuant to the\nProtective Order except for purposes of the above- captioned litigation and not to disclose any of\nthis information to persons other than those specifically authorized by the Protective Order,\nwithout the express written consent of the party who designated the information as confidential or\nby order of the presiding judge.\n\n 6. I also agree to notify any stenographic, clerical or technical personnel who are\nrequired to assist me of the terms of this Protective Order and of its binding effect on them and\nme.\n\n 7. I understand that I am to retain all documents or materials designated as or\n\f Case 4:23-cv-01798 Document 24 Filed on 08/18/23 in TXSD Page 8 of 9\n\n\n\n\ncontaining \u201cConfidential Information\u201d in a secure manner, and that all such documents and\nmaterials are to remain in my personal custody until the completion of my assigned duties in this\nmatter, whereupon all such documents and materials, including all copies thereof, and any writings\nprepared by me containing any \u201cConfidential Information\u201d are to be returned to counsel who\nprovided me with such documents and materials.\n\n\nSigned at , , this , day of , 20 .\n\n\n Signature\n\f Case 4:23-cv-01798 Document 24 Filed on 08/18/23 in TXSD Page 9 of 9\n\n\n\n\n Exhibit B\n\n IN THE UNITED STATES DISTRICT COURT\n FOR THE SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\nOBM, INC. \u00a7\n \u00a7\n Plaintiff,\n \u00a7\n \u00a7\nversus \u00a7 Civil Action No. 4:23-cv-01798\n \u00a7 JURY TRIAL DEMANDED\nLANCIUM LLC \u00a7\n \u00a7\n Defendant.\n \u00a7\n\n CONFIDENTIALITY AGREEMENT FOR THIRD-PARTY VENDORS\n\n I , under penalty of perjury, 28 U.S.C. \u00a7 1746, that:\n\n 1. Information, including documents and things, designated as \u201cConfidential\nInformation\u201d as defined in the Protective Order entered in the above-captioned action (\u201cProtective\nOrder\u201d), is being provided to me pursuant to the terms and restrictions of the Protective Order.\n\n 2. I have been given a copy of and have read the Protective Order.\n\n 3. I am familiar with the terms of the Protective Order and I agree to comply with and\nto be bound by its terms.\n\n 4. I submit to the jurisdiction of the United States District Court for the Southern\nDistrict of Texas for enforcement of the Protective Order.\n\n 5. I agree not to use any Confidential Information disclosed to me pursuant to the\nProtective Order except for purposes of the above- captioned litigation and not to disclose any of\nthis information to persons other than those specifically authorized by the Protective Order, without\nthe express written consent of the party who designated the information as confidential or by order\nof the presiding judge.\n\nSigned at , , this , day of , 20 .\n\n\n\n\n Signature\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:16.354585-08:00","document_number":"24","attachment_number":null,"pacer_doc_id":"179043334444","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Protective Order (FORM)","acms_document_guid":""}],"date_created":"2023-08-21T07:49:24.011188-07:00","date_modified":"2025-01-22T07:03:24.690982-08:00","date_filed":"2023-08-18","time_filed":null,"entry_number":24,"recap_sequence_number":"2023-08-18.001","pacer_sequence_number":64,"description":"PROTECTIVE ORDER (Signed by Judge Keith P Ellison) Parties notified.(GabrielleLyons, 4) (Entered: 08/21/2023)","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/362494949/","id":362494949,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/369188244/","id":369188244,"tags":[],"absolute_url":"/docket/67396788/25/obm-inc-v-lancium-llc/","date_created":"2023-08-21T07:49:23.717798-07:00","date_modified":"2025-01-22T07:03:24.732580-08:00","sha1":"29778903db9576a74d4c7f01af0d5976c6a5baa5","page_count":4,"file_size":319489,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.25.0.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.25.0.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 25 Filed on 08/18/23 in TXSD Page 1 of 4\n United States District Court\n Southern District of Texas\n\n ENTERED\n IN THE UNITED STATES DISTRICT COURT August 21, 2023\n SOUTHERN DISTRICT OF TEXAS Nathan Ochsner, Clerk\n HOUSTON DIVISION\n\nOBM, INC.,\n\n Plaintiff, Civil Action No: 4:23-cv-01798 JURY\n\nv. TRIAL DEMANDED\n\nLANCIUM LLC,\n\n Defendant.\n\n\n\n SUPPLEMENTAL SOURCE CODE PROTECTIVE ORDER\n\nThe Court enters the following Protective Order (\u201cProtective Order\u201d) pursuant to Rule 26(c) of the\nFederal Rules of Civil Procedure (\u201cFED. R. CIV. P.\u201d). It is hereby ORDERED:\n\nWHEREAS, Plaintiff OBM, Inc. and Defendant Lancium LLC, hereafter referred to as \u201cthe\nParties,\u201d believe that certain source code that is or will be encompassed by discovery demands by\nthe Parties involves the production or disclosure of trade secrets, confidential business\ninformation, or other proprietary information;\n\nWHEREAS, the Parties seek a protective order limiting disclosure thereof in accordance with Federal\nRule of Civil Procedure 26(c)\n\n IT IS HEREBY AGREED, subject to the Court\u2019s approval, that the Protective Order is\n supplemented as follows:\n\n 1. The term \u201cSource Code\u201d or \u201csource code\u201d as used in this Order includes at least\n computer code, scripts, assembly, binaries, object code, source code listings.\n\n 2. A producing party may designate source code as \u201cRESTRICTED\n \u2013 CONFIDENTIAL SOURCE CODE\u201d if it comprises or includes confidential, proprietary or\n trade secret source code. Material designated as \u201cRESTRICTED \u2013 CONFIDENTIAL SOURCE\n CODE\u201d shall be subject to at least all of the protections afforded to the highest level of\n confidentiality under the Protective Order, but may not be disclosed to the receiving parties or\n employees (including in-house counsel) of a receiving party absent a specific agreement of the\n parties or court order. Access to \u201cRESTRICTED \u2013 CONFIDENTIAL SOURCE CODE\u201d\n material shall be limited to outside counsel of record who have filed an appearance in this action\n for the receiving party1 and up to three (3) outside consultants or experts (i.e., not existing\n\n1\n For the purposes of this paragraph, such counsel is defined to include the counsel\u2019s support\npersonnel consistent with the needs of Paragraph 4(H), but not other attorneys.\n\f Case 4:23-cv-01798 Document 25 Filed on 08/18/23 in TXSD Page 2 of 4\n\n\n\n\nemployees or affiliates of a Party or a competitor, potential competitor, or affiliate thereof\nof a Party identified by the Producing Party with reasonable specificity) retained for the purpose\nof this litigation and approved to access Highly Confidential information under the Protective\nOrder.\n\n 3. Nothing in this Order shall be construed as a representation or admission that\nSource Code is properly discoverable in this action, or to obligate any Party to produce any\nSource Code.\n\n 4. The following additional restrictions shall apply to the inspection and production\nof RESTRICTED \u2013 CONFIDENTIAL SOURCE CODE, unless otherwise advised by the\nproducing party or Ordered by the Court:\n\n (A) Any source code produced in discovery shall be made available for inspection,\nin a native electronic format allowing it to be reasonably reviewed and electronically searched.\nThe producing party shall produce source code for inspection during normal business hours or\nother mutually agreeable times at an office of the producing party\u2019s counsel or another mutually\nagreed upon location. Prior to the first access by the receiving party of the source code, the\nreceiving party must provide notice to the producing party at least seven (7) days prior to the\ndate that the receiving party seeks review of the source code. After the first access of the source\ncode by the receiving party, the receiving party must provide notice to the producing party at\nleast three (3) business days prior to the source code access.\n\n (B) The source code shall be made available for inspection on a secured computer in\na secured room without Internet access or network access to other computers (the \u201cSource Code\nComputer\u201d). The receiving party\u2019s outside counsel and/or expert may request that commercially\navailable licensed software tools for viewing and searching Source Code be installed on the\nSource Code Computer. The receiving party must provide the producing party with the CD,\nDVD, or weblink containing such software tool(s) at least five (5) business days in advanced of\nthe inspection. Use or possession of any input/output device (e.g., USB memory stick, cameras\nor any camera-enabled device, CDs, floppy disk, portable hard drive, laptop, or any devices that\ncan access the Internet or any other network or external system) is prohibited while accessing\nthe computer containing the Source Code. All persons entering the locked room containing the\nSource Code must agree to submit to reasonable security measures to insure they are not\ncarrying any prohibited items before they will be given access to the locked room.\n\n (C) The producing party may object in writing to the installation of any such tool,\nand such tool shall not be installed until such objection is resolved. If the Parties are unable to\nagree on the additional requested software tools, they may seek an Order from the Court after\nmaking a good-faith effort to resolve their dispute.\n\n (D) The source code shall be produced as it is kept in the normal course of business,\nor as it would be collected in the normal course of business. The receiving party\u2019s outside\ncounsel and/or Experts shall be entitled to take handwritten notes relating to the source code\nbut may not copy the Source Code into the notes and may not take such notes electronically on\nthe Source Code Computer itself. This limitation shall not apply to information regarding\ndirectory, file, and line number within the file, which information the producing party shall\n\f Case 4:23-cv-01798 Document 25 Filed on 08/18/23 in TXSD Page 3 of 4\n\n\n\n\nmake available to the extent that such information exists and can reasonably be provided\nwithout undue cost or burden. Such notes shall be labeled \u201cRESTRICTED \u2013 CONFIDENTIAL\nSOURCE CODE.\u201d Handwritten notes transcribed must be limited to matters concerning this\ncase. The producing party may visually monitor the activities of the receiving party\u2019s\nrepresentatives during any source code review, but only to ensure that there is no unauthorized\nrecording, copying, or transmission of the source code. For avoidance of doubt, the producing\nparty cannot review any notes made by the receiving party\u2019s representatives during any source\ncode review and cannot monitor verbal communications of receiving party\u2019s representatives\nduring source code review. For example, the producing party\u2019s representatives can monitor the\nreceiving party\u2019s representatives from the opposite side of a glass wall, window, or the like.\n\n (E) Within five (5) business days of placing files on the Source Code Computer, the\nsource code provider shall provide a manifest of the contents of the computer to include a list\nof source code files available for review to the extent practicable. This list must be updated\nwithin five (5) business days each time new files are added to the Source Code Computer.\n\n (F) No person shall copy, email, transmit, upload, download, print, photograph or\notherwise duplicate any portion of the designed Source Code, except as the receiving party may\nrequest paper copies of limited portions of source code that are reasonably necessary for the\npreparation of court filings, pleadings, expert reports, or other papers, or for deposition or trial;\nhowever, the receiving party may not request paper copies for the purposes of reviewing the\nsource code in the first instance. In no event may the receiving party print more than twenty-\nfive (25) consecutive pages, or an aggregate total of more than five hundred (500) pages of\nSource Code during the duration of the case without prior written approval by the producing\nparty. Within five (5) business days or such additional time as necessary due to volume\nrequested, the producing party will provide the requested material on watermarked or colored\npages being production numbers and the designation \u201cRESTRICTED \u2013 CONFIDENTIAL\nSOURCE CODE\u201d unless objected to as discussed below. The receiving party shall maintain all\npaper copies of any printed portions of the source code in a secured area in a manner that\nprevents duplication of or unauthorized access to the source code. The receiving party shall not\ncreate any electronic or other images of the paper copies and shall not convert any of the\ninformation contained in the paper copies into any electronic format, except as provided in\nParagraph 4(H).\n\n (G) If the producing party objects that the printed portions are not reasonably\nnecessary to any case preparation activity, the producing party shall make such objection\nknown to the receiving party within five (5) business days. If after meeting and conferring the\nproducing party and the receiving party cannot resolve the objection, the producing party shall\nbe entitled, but not required, to seek a Court resolution of whether the printed Source Code in\nquestion is reasonably necessary to any case preparation activity. Contested Source Code print\nouts need not be produced to the requesting party until the matter is resolved by the Court.\n\n (H) The receiving party may only include in court filings or expert reports (and drafts\nthereof) images of those lines of source code that are reasonably necessary to the prosecution\nor defense of this case, and any such document, court filing, or expert report must be designated\n\u201cRESTRICTED \u2013 CONFIDENTIAL SOURCE CODE\u201d and, if filed with the Court, filed under\nseal in accordance with the Court\u2019s rules, procedures, and orders.\n\f Case 4:23-cv-01798 Document 25 Filed on 08/18/23 in TXSD Page 4 of 4\n\n\n\n\n (I) The receiving party may make no more than three (3) additional paper copies\nof any portions of the source code files, not including copies attached to court filings or trial\nand hearing demonstrative exhibits. The receiving party shall only make additional paper\ncopies if such additional copies are (1) necessary to prepare court filings, pleadings, or other\npapers (including a testifying expert\u2019s report), (2) necessary for deposition, or (3) otherwise\nnecessary for the preparation of its case.\n\n (J) Any paper copies used during a deposition shall be retrieved by the producing\nparty at the end of each day and must not be given to or left with a court reporter or any other\nunauthorized individual. Copies of source code that are marked as deposition exhibits shall not\nbe provided to the court reporter or attached to deposition transcripts; rather, the deposition\nrecord will identify the exhibit by its production numbers and the Party that brought the source\ncode to the deposition will keep possession of the marked deposition source code exhibit.\n\n (K) Any attorney representing a Party, whether in-house or outside counsel, and any\nperson associated with a Party and permitted to receive the other Party\u2019s Protected Material that\nis designated \u201cRESTRICTED CONFIDENTIAL \u2013 SOURCE CODE\u201d who obtains, receives,\nhas access to, or otherwise learns, in whole or in part, the other Party\u2019s \u201cRESTRICTED\nCONFIDENTIAL \u2013 SOURCE CODE\u201d material under this Order shall not prepare, prosecute,\nsupervise, or assist in the preparation or prosecution of any patent application pertaining to the\nfield of the invention of the patents-in-suit on behalf of the receiving Party or its acquirer,\nsuccessor, predecessor, or other affiliate during the pendency of this Action and for one year\nafter its conclusion, including any appeals.\n\n IT IS SO ORDERED.\n\n\n\n SIGNED on this the 18th day of August, 2023.\n\n\n\n KEITH P. ELLISON\n UNITED STATES DISTRICT JUDGE\n\n\n\n\n 4\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:25.867347-08:00","document_number":"25","attachment_number":null,"pacer_doc_id":"179043334460","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Order","acms_document_guid":""}],"date_created":"2023-08-21T07:49:23.708617-07:00","date_modified":"2025-01-22T07:03:24.721195-08:00","date_filed":"2023-08-18","time_filed":null,"entry_number":25,"recap_sequence_number":"2023-08-18.002","pacer_sequence_number":66,"description":"SUPPLEMENTAL SOURCE CODE PROTECTIVE ORDER (Signed by Judge Keith P Ellison) Parties notified.(GabrielleLyons, 4) (Entered: 08/21/2023)","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/362020612/","id":362020612,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/368701860/","id":368701860,"tags":[],"absolute_url":"/docket/67396788/23/obm-inc-v-lancium-llc/","date_created":"2023-08-15T13:32:35.757566-07:00","date_modified":"2025-01-22T07:03:24.613667-08:00","sha1":"e98d7d24eaf11226c8777cb4ff2a582ea2bed347","page_count":12,"file_size":193215,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.23.0.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.23.0.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 23 Filed on 08/15/23 in TXSD Page 1 of 12\n\n\n\n\n IN THE UNITED STATES DISTRICT COURT\n SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\n OBM, INC.,\n\n Plaintiff, Civil Action No: 4:23-cv-01798\n\n v. JURY TRIAL DEMANDED\n\n LANCIUM LLC,\n\n Defendant.\n\n\n\n JOINT DISCOVERY/CASE MANAGEMENT PLAN\n UNDER RULE 26(F) OF FEDERAL RULES OF CIVIL PROCEDURE\n Plaintiff OBM, Inc. (\u201cPlaintiff\u201d or \u201cOBM\u201d) and Defendant Lancium LLC (\u201cDefendant\u201d or\n\n \u201cLancium\u201d) filed this Joint Case Management Plan in accordance with the Court\u2019s Procedures,\n\n Fed. R. Civ. P. 26(f), and P.R. 2-1 as follows:\n\nI. Matters Discussed Pursuant to the Court\u2019s Procedures and Fed. R. Civ. P. 26(f)\n\n 1. State where and when the meeting of the parties required by Rule 26(f) was\n held and identify the counsel who attended for each party.\n\n Telephonic meetings were held on July 19 and August 10, 2023, and attended by the\n\n following counsel:\n\n For Plaintiff For Defendant\n Rodney R. Miller Craig D. Leavell\n\n 2. List the cases related to this one that are pending in any state or federal court\n with the case number and court.\n\n None.\n\n 3. Briefly describe what this case is about.\n\n This is currently a declaratory judgment action in which OBM seeks a declaration of non-\n\n infringement of the claims of U.S. Patent No. 10,608,433, entitled \u201cMethods and Systems for\n\n\n\n 1\n\f Case 4:23-cv-01798 Document 23 Filed on 08/15/23 in TXSD Page 2 of 12\n\n\n\n\nAdjusting Power Consumption Based on a Fixed-Duration Power Option Agreement,\u201d assigned\n\nto Lancium.\n\n 4. Specify the allegation of federal jurisdiction.\n\n OBM alleges this action arises under the Declaratory Judgment Act, 28 U.S.C. \u00a7 2201 et\n\nseq., and the patent laws of the United States, Title 35 of the United States Code, and that this\n\nCourt has jurisdiction over the matter pursuant to 35 U.S.C. \u00a7 271 et seq. and 25 U.S.C. \u00a7\u00a7 1331,\n\n1338, and 2201-2202.\n\n 5. Name the parties who disagree and the reasons.\n\n As set forth in its Motion to Dismiss (Dkt. 17), Lancium disputes that declaratory judgment\n\n(and thus subject matter) jurisdiction properly exists.\n\n 6. List anticipated additional parties that should be included, when they can be\n added, and by whom they are wanted.\n\n Lancium, as part of its infringement investigation once OBM provides the necessary\n\ninformation, will assess whether additional parties should be added to this case, such as, for\n\nexample, OBM\u2019s customer(s), who may be relevant to claims for indirect patent infringement as\n\nthe underlying direct infringer(s).\n\n 7. List anticipated interventions.\n\n The parties do not anticipate any intervention.\n\n 8. Describe class-action issues.\n\n None.\n\n 9. State whether each party represents that it has made the initial disclosures\n required by Rule 26(a). If not, describe the arrangements that have been made\n to complete the disclosures.\n\n Neither party has served its initial disclosures. The parties agree to exchange initial\n\ndisclosures on or before September 8, 2023 as proposed in the parties\u2019 Agreed Scheduling Order\n\n\n\n\n 2\n\f Case 4:23-cv-01798 Document 23 Filed on 08/15/23 in TXSD Page 3 of 12\n\n\n\n\nattached hereto as Exhibit A. The parties note that the Agreed Scheduling Order attached hereto\n\nas Exhibit A assumes that the pending Motion to Dismiss (Dkt. 17) will be decided no later than\n\nSeptember 1, 2023. To the extent the Court decides the pending Motion to Dismiss after\n\nSeptember 1, 2023, the parties will meet and confer to discuss whether the agreed schedule needs\n\nto be adjusted.\n\n In conjunction with disclosures under Fed. R. Civ. P. 26(a), and without awaiting a\n\ndiscovery request, the parties propose that each party must disclose to every other party the\n\nfollowing information, as required in this Court\u2019s model Discovery Order included in this Court\u2019s\n\nModel Order Setting Scheduling Conference for patent cases. See\n\nhttp://www.txs.uscourts.gov/sites/txs/files/orderforconf.pdf.\n\n\n (a) the correct names of the parties to the lawsuit;\n\n (b) the name, address, and telephone number of any potential parties;\n\n (c) the legal theories and, in general, the factual bases of the disclosing party\u2019s claims or\n defenses (the disclosing party need not marshal all evidence that may be offered at trial);\n\n (d) the name, address, and telephone number of persons having knowledge of relevant\n facts, a brief statement of each identified person\u2019s connection with the case, and a brief,\n fair summary of the substance of the information known by such person;\n\n (e) any indemnity and insuring agreements under which any person or entity may be\n liable to satisfy part or all of a judgment entered in this action or to indemnify or reimburse\n for payments made to satisfy the judgment; and\n\n (f) any settlement agreements relevant to the subject matter of this action.\n\n\n\n\n 3\n\f Case 4:23-cv-01798 Document 23 Filed on 08/15/23 in TXSD Page 4 of 12\n\n\n\n\n 10. Describe the proposed agreed discovery plan, including:\n\n A. Responses to all the matters raised in Rule 26(f).\n\n i. Timing and Subjects for Discovery\n\n The parties have agreed on a case schedule and a discovery plan based on the Court\u2019s model\n\nproposed scheduling order for patent cases as set forth in the parties\u2019 Agreed Scheduling Order\n\nattached hereto as Exhibit A.\n\n ii. Electronically Stored Information\n\n The parties are still negotiating the terms of an electric discovery order and will submit a\n\nproposal to the Court within a reasonable time.\n\n iii. Privilege Issues\n\n The parties have agreed that privileged information inadvertently disclosed during\n\ndiscovery shall remain privileged within the scope and protections of Rule 502(b) of the Federal\n\nRules of Evidence. The parties agree that no privileged communications or documents created\n\nafter the filing of this lawsuit are required to be logged on a privilege log.\n\n iv. Limitations on Discovery\n\n The parties propose the following discovery limitations:\n\nFact Depositions:\n\n \uf0b7 Fact depositions will be limited to 7 hours of testimony per witness.\n \uf0b7 Absent a showing of good cause, the Parties propose that each side be limited to 10\n fact depositions, including third party depositions.\n \uf0b7 Multiple Rule 30(b)(6) depositions shall be permitted, with each notice counting as\n one deposition, and each limited to a total of 7 hours, regardless of the number of\n designees identified for that notice.\n\nExpert Depositions:\n\n \uf0b7 Depositions of experts will be limited to 7 hours of testimony per expert witness\n report, with each 7 hours (if needed) limited to the scope of one report.\n \uf0b7 The parties agree that drafts of expert reports and communications with experts in\n this litigation shall be exempt from discovery.\n\n\n 4\n\f Case 4:23-cv-01798 Document 23 Filed on 08/15/23 in TXSD Page 5 of 12\n\n\n\n\nInterrogatories:\n\n \uf0b7 25 per side. The parties reserve the right to seek additional interrogatories, if\n necessary.\n\nRequests for Admissions:\n\n \uf0b7 The parties propose no limits to the number of requests for admissions.\n\nRequests for Production:\n\n \uf0b7 The parties propose no limits to the number of requests for production.\n v. Orders Pursuant to Fed. R. Civ. P. 26(c) or 16(b) and (c)\n\n The parties have agreed to the Proposed Protective Order attached hereto as Exhibit B. The\n\nparties have also agreed to the Supplemental Source Code Protective Order attached here to as\n\nExhibit C.\n\n B. When and to whom the plaintiff anticipates it may send interrogatories.\n\n Plaintiff will serve its first set of interrogatories in the next few weeks and will do so\n\nthrough discovery as appropriate.\n\n C. When and to whom the defendant anticipates it may send\n interrogatories.\n\n Defendant served its first set of interrogatories on July 19, 2023 and will do so through\n\ndiscovery as appropriate.\n\n D. Of whom and by when the plaintiff anticipates taking oral depositions.\n\n Plaintiff may take the depositions of persons with knowledge yet to be identified by\n\nDefendant through Initial Disclosures and discovery responses. Plaintiff will complete such\n\ndepositions by the parties\u2019 fact discovery deadline set forth in the parties\u2019 Agreed Scheduling\n\nOrder attached hereto as Exhibit A.\n\n\n\n\n 5\n\f Case 4:23-cv-01798 Document 23 Filed on 08/15/23 in TXSD Page 6 of 12\n\n\n\n\n E. Of whom and by when the defendant anticipates taking oral\n depositions.\n\n Defendant may take the depositions of persons with knowledge yet to be identified by\n\nPlaintiff through Initial Disclosures and discovery responses. Defendant will complete such\n\ndepositions by the parties\u2019 fact discovery deadline set forth in the parties\u2019 Agreed Scheduling\n\nOrder attached hereto as Exhibit A.\n\n F. When the plaintiff (or the party with the burden of proof on an issue)\n will be able to designate experts and provide the reports required by\n Rule 26(a)(2)(B) and when the opposing party will be able to designate\n responsive experts and provide their reports.\n\n Plaintiff and Defendant will designate their expert(s) and provide opening reports for issues\n\non which they have the burden of proof by the deadline set forth in the Scheduling Order.\n\n Plaintiff and Defendant will designate their responsive expert(s) and provide rebuttal\n\nreports by the deadline set forth in the parties\u2019 Agreed Scheduling Order attached hereto as Exhibit\n\nA.\n\n G. List expert depositions the plaintiff (or the party with the burden of\n proof on an issue) anticipates taking and their anticipated completion\n date. See Rule 26(a)(2)(B) (expert report).\n\n Plaintiff anticipates deposing any of Defendant\u2019s experts and will complete such\n\ndepositions by the expert discovery deadline set forth in the parties\u2019 Agreed Scheduling Order\n\nattached hereto as Exhibit A.\n\n H. List expert depositions the opposing party anticipates taking and their\n anticipated completion date. See Rule 26(a)(2)(B) (expert report).\n\n Defendant anticipates deposing each of Plaintiff\u2019s experts and will complete such\n\ndepositions by the expert discovery deadline set forth in the parties\u2019 Agreed Scheduling Order\n\nattached hereto as Exhibit A.\n\n\n\n\n 6\n\f Case 4:23-cv-01798 Document 23 Filed on 08/15/23 in TXSD Page 7 of 12\n\n\n\n\n 11. If the parties are not agreed on a part of the discovery plan, describe the\n separate views and proposals of each party.\n\n Not applicable.\n\n 12. Specify the discovery beyond initial disclosures that has been undertaken to\n date.\n\n Lancium served initial Requests for Production and Interrogatories on OBM on July 19,\n\n2023.\n\n 13. State the date the planned discovery can reasonably be completed.\n\n The parties believe that discovery can be completed in accordance with the deadline set\n\nforth in the parties\u2019 Agreed Scheduling Order attached hereto as Exhibit A.\n\n 14. Describe the possibilities for a prompt settlement or resolution of the case that\n were discussed in your Rule 26(f) meeting.\n\n The parties were unable to reach a settlement or find a way to resolve the case at this time.\n\n 15. Describe what each party has done or agreed to do to bring about a prompt\n resolution.\n\n The parties remain open to future discussions and efforts for resolution of the case,\n\nincluding mediation by the date set forth in the parties\u2019 Agreed Scheduling Order attached hereto\n\nas Exhibit A.\n\n 16. From the attorneys' discussion with the client, state the alternative dispute\n resolution techniques that are reasonably suitable and state when such a\n technique may be effectively used in this case.\n\n The parties believe that mediation may be useful at a later stage of this case.\n\n 17. Magistrate judges may now hear jury and non-jury trials. Indicate the parties'\n joint position on a trial before a magistrate judge.\n\n The parties do not agree to a trial before a United States Magistrate Judge.\n\n 18. State whether a jury demand has been made and if it was made on time.\n\n Plaintiff has made a timely jury demand.\n\n\n\n\n 7\n\f Case 4:23-cv-01798 Document 23 Filed on 08/15/23 in TXSD Page 8 of 12\n\n\n\n\n 19. Specify the number of hours it will take to present the evidence in this case.\n\n The parties anticipate that it will take 35 hours for the parties to present the evidence in this\n\n case as the case currently exists.\n\n 20. List pending motions that could be ruled on at the initial pretrial and\n scheduling conference.\n\n Defendant\u2019s Motion to Dismiss (Dkt. 17).\n\n 21. List other motions pending.\n\n None.\n\n 22. Indicate other matters peculiar to this case, including discovery, that deserve\n the special attention of the court at the conference.\n\n None.\n\n 23. List the names, bar numbers, addresses and telephone numbers of all counsel.\n\n See signature blocks for counsel below.\n\nII. Matters Discussed Pursuant to P.R. 2-1\n\n Local Patent Rule 2-1 states that, in addition to the matters covered by Fed. R. Civ. P. 26,\n\n the parties must confer and address in their Joint Case Management Report the following topics:\n\n 1. Any proposed modification of the schedule provided in the Scheduling Order\n Template, which is available at the District\u2019s website.\n\n Any proposed modifications are noted in the parties\u2019 Agreed Scheduling Order attached\n\n hereto as Exhibit A. The parties agree to extend a number of deadlines (i.e., the timeframe between\n\n deadlines). The parties note that the Agreed Scheduling Order attached hereto as Exhibit A\n\n assumes that the pending Motion to Dismiss (Dkt. 17) will be decided no later than September 1,\n\n 2023. To the extent the Court decides the pending Motion to Dismiss after September 1, 2023, the\n\n parties will meet and confer to discuss whether the agreed schedule needs to be adjusted.\n\n\n\n\n 8\n\f Case 4:23-cv-01798 Document 23 Filed on 08/15/23 in TXSD Page 9 of 12\n\n\n\n\n 2. A plan for completing electronic discovery.\n\n The parties are still negotiating the terms of an electric discovery order and will submit a\n\nproposal to the Court within a reasonable time.\n\n 3. The need for presenting technical tutorials to the presiding judge and the mode\n for such presentations (i.e., live testimony, video presentations) at or before\n the claim construction hearing.\n\n The parties have agreed to optionally provide the Court with any written tutorials\n\nconcerning technology involved in the patent in issue by May 2, 2024 as set forth in the parties\n\nAgreed Scheduling Order attached hereto as Exhibit A.\n\n In addition, the parties anticipate presenting technical tutorials to the Judge at the claim\n\nconstruction hearing.\n\n 4. Any deviations from and additions to the form protective order (available at\n the District\u2019s website).\n\n The parties have agreed on a proposed form of Protective Order, attached hereto as Exhibit\n\nB. This proposal has minor additions to the standard form of protective order for the Southern\n\nDistrict of Texas. A redline showing the changes from the standard form is attached hereto as\n\nExhibit D.\n\n 5. Whether any party desires to present live testimony at the claim construction\n hearing.\n\n The parties do not anticipate the need to present live testimony at the claim construction\n\nhearing at this time.\n\n 6. The need for and any specific limits on discovery relating to claim\n construction, including depositions of fact and expert witnesses.\n\n The parties do not request any limits on claim construction related discovery permitted\n\nunder the Federal Rules of Civil Procedure and the Court\u2019s local Patent Rules.\n\n\n\n\n 9\n\f Case 4:23-cv-01798 Document 23 Filed on 08/15/23 in TXSD Page 10 of 12\n\n\n\n\n 7. The order of presentation at the claim construction hearing.\n\n The parties propose that the declaratory judgment Plaintiff will present first, the declaratory\n\njudgment Defendant will present second, and the declaratory judgment Plaintiff will have an\n\nopportunity to provide a short reply to declaratory judgment Defendant\u2019s presentation. However,\n\nif the Defendant files a counterclaim of infringement, then the Defendant will present first, the\n\nPlaintiff will present second, and the Defendant will have an opportunity to provide a short reply.\n\n 8. The scheduling of a claim construction prehearing conference after the \u201cJoint\n Claim Construction and Prehearing Statement\u201d provided in P.R. 4-3 has been\n filed.\n\n After the Joint Claim Construction and Prehearing Statement has been filed, the parties\n\nagree to confer and will attempt to agree to proposed constructions before Claim Construction\n\nOpening Briefs are due to be filed.\n\n 9. Whether pre- or post-AIA law regarding 35 U.S.C. \u00a7 102 is applicable to each\n patent-in-suit.\n\n Post-AIA law regarding 35 U.S.C. \u00a7 102 is applicable to the patent-in-suit.\n\n 10. Whether the presiding judge should authorize the filing under seal of any\n documents containing confidential information.\n\n The parties have agreed to the Proposed Protective Order attached hereto as Exhibit B. The\n\nparties have also agreed to the Supplemental Source Code Protective Order attached here to as\n\nExhibit C.\n\n\n\n Dated: August 15, 2023 Respectfully submitted,\n\n Barnes & Thornburg LLP Womble Bond Dickinson (US) LLP\n\n By: Daniel A. Valenzuela By: /s/ Rodney R. Miller\n Daniel A. Valenzuela Rodney R. Miller\n Texas State Bar No. 24067918 Texas Bar No.: 24070280\n daniel.valenzuela@btlaw.com 271 17th Street, NW, Suite 2400\n 2121 N. Pearl Street, Suite 700 Atlanta, GA 30363\n\n\n 10\n\f Case 4:23-cv-01798 Document 23 Filed on 08/15/23 in TXSD Page 11 of 12\n\n\n\n\nDallas, Texas 75201 Telephone: (404) 888-7366\nTelephone: 214.258.4150 Email: rodney.miller@wbd-us.com\nFacsimile: 214.258.4199\n Preston H. Heard (pro hac vice)\nCraig Leavell (pro hac vice) Georgia Bar No. 476319\nIL State Bar No. 6256260 Atlanta, GA 30363\nCraig.Leavell@btlaw.com Telephone: (404) 888-7366\n Email: Preston.Heard@wbd-us.com\nBruce Ratain (pro hac vice)\nIL State Bar No. 6324542 Andrew Beverina (pro hac vice)\nBruce.Ratain@btlaw.com DC Bar No.: 464897\n 2001 K Street, NW, Suite 400 South\nOne N. Wacker Drive Washington, DC 20006\nSuite 4400 Telephone: (202) 857-4411\nChicago, Illinois 60606 Email: Andrew.beverina@wbd-us.com\nTelephone: 312.357.1313\nFacsimile: 312.759.5646 James Dority (pro hac vice)\n South Carolina Bar No.: 104627\nATTORNEYS FOR DEFENDANT 550 South Main Street, Suite 400\nLANCIUM LLC Greenville, SC 29601\n Telephone: (864) 255-5412\n Email: james.dority@wbd-us.com\n\n Attorneys for Plaintiff OBM, Inc.\n\n\n\n\n 11\n\f Case 4:23-cv-01798 Document 23 Filed on 08/15/23 in TXSD Page 12 of 12\n\n\n\n\n CERTIFICATE OF SERVICE\n\n I hereby certify that on August 15, 2023, I electronically filed the foregoing document\n\nwith the Clerk of the Court using the CM/ECF system, which will send notification of such filing\n\nvia electronic mail to all counsel of record.\n\n\n\n /s/ Rodney R. Miller\n Rodney R. Miller\n\n\n\n\n 12\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:17.113302-08:00","document_number":"23","attachment_number":null,"pacer_doc_id":"179043308571","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Joint Discovery/Case Management Plan","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999434/","id":379999434,"tags":[],"absolute_url":"/docket/67396788/23/1/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.800361-08:00","date_modified":"2025-01-22T07:03:24.636969-08:00","sha1":"e4f1bd556711e04f1a06c95e49b7b541100f1271","page_count":8,"file_size":151575,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.23.1.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.23.1.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 23-1 Filed on 08/15/23 in TXSD Page 1 of 8\n\n\n\n\n EXHIBIT A\n\n\n\n\n 1\n\f Case 4:23-cv-01798 Document 23-1 Filed on 08/15/23 in TXSD Page 2 of 8\n\n\n\n Agree Proposed Scheduling Order1\n\n J. Ellison\n Standing Rule Agreed\n # Event\n Sequence and Proposed Date\n Timing\n Friday, Friday, Scheduling Conference\n 0 August 25, August 25, (see # 32 re: MEDIATION)\n 2023 2023\n [2 weeks after Friday, OBM produces documents and information sufficient to\n Scheduling September 8, show the operation of the relevant functionality in the\n Conf.] 2023 Foreman software (e.g., source code, schematics, or\n *1 flow charts)\n\n Comply with Fed. R. Civ. P. 26(a)(1): Parties to\n exchange Initial Disclosures\n [2 weeks after Thursday, Comply with P.R. 3-1 and P.R. 3-2: Parties to make\n Scheduling December 14, disclosure of asserted claims and preliminary\n Conf.] 2023 infringement contentions & make document\n production.\n After this date, it is necessary to obtain leave of court\n to add and/or amend infringement contentions, pursuant\n to Patent Rule (P.R.) 3-7.\n Joint additional parties. It is not necessary to file a\n 1\n motion to join additional parties before this date.\n Thereafter, it is necessary to obtain leave of court to join\n additional parties.\n Add new patents and/or claims for patents-in-suit. It\n is not necessary to file a motion to add additional\n patents or claims before this date. Thereafter, it is\n necessary to obtain leave of court to add patents or\n claims.\n [6 weeks after Thursday, Comply with P.R. 3-3 and 3-4: Parties to serve\n # 1] January 25, preliminary invalidity contentions and make\n 2024 document production. Thereafter, it is necessary to\n obtain leave of Court to add and/or amend invalidity\n contentions, pursuant to P.R.. 3-7.\n 2 Add any inequitable conduct allegations to pleadings.\n Before this date, it is not necessary to file a motion for\n leave to add inequitable conduct allegations to\n pleadings. Thereafter, it is necessary to obtain leave of\n court to add inequitable conduct allegations to\n pleadings.\n\n\n1\n The parties note that this Agreed Proposed Scheduling Order assumes that the pending Motion to Dismiss (Dkt. 17) will be decided\nno later than September 1, 2023. To the extent the Court decides the pending Motion to Dismiss after September 1, 2023, the parties\nwill meet and confer to discuss whether the agreed schedule needs to be adjusted\n\n 1\n\fCase 4:23-cv-01798 Document 23-1 Filed on 08/15/23 in TXSD Page 3 of 8\n\n J. Ellison\n Standing Rule Agreed\n# Event\n Sequence and Proposed Date\n Timing\n [2 weeks after Thursday, Comply with P.R. 4-1: Parties\u2019 exchange of proposed\n3 # 2] February 8, terms and claim elements needing construction.\n 2024\n [3 weeks after Thursday, Comply with P.R. 4-2: Parties\u2019 exchange of\n # 3] February 29, preliminary claim constructions and extrinsic\n 2024 evidence.\n4\n Privilege Logs to be exchanged by parties (or a letter to\n the Court stating that there are no disputes as to claims\n of privileged documents).\n [9 weeks after Thursday, Deadline to comply with P.R. 4-3: Filing of joint claim\n # 2; 17 weeks March 28, 2024 construction and pre-hearing statement.\n after Conf.]\n5\n [= 4 weeks Disclosure of parties\u2019 claim construction experts &\n after #4] service of\n FED. R. CIV. P. 26(a)(2) materials\n [matches # 5] Thursday, Deadline for all parties to file amended pleadings\n March 28, 2024 (pre-claim construction). It is not necessary to file a\n Motion for Leave to Amend before the deadline to\n amend pleadings. (It will be necessary to file a Motion\n for Leave to Amend after this deadline.)\n6\n NOTE: If the amendment would affect preliminary\n infringement contentions or preliminary invalidity\n contentions, a motion must be made pursuant to P.R. 3-\n 7 irrespective of whether the amendment is made prior\n to this deadline.\n [22 weeks after Thursday, Each party to provide name, address, phone number,\n Scheduling May 2, 2024 and curriculum vitae for up to three (3) candidates for a\n Conf.] court- appointed special master (see FED. R. CIV. P.\n [= 5 weeks 53) or court- appointed expert (see FED. R. EV. 706),\n7\n after 5] with information regarding the nominee\u2019s availability\n for Markman hearing or other assignments as deemed\n necessary by the court. The parties shall indicate if they\n agree on any of the nominees.\n [22 weeks after Thursday, Deadline for parties (optional) to provide Court with\n Scheduling May 2, 2024 written tutorials concerning technology involved in\n Conf.; patent in issue. If a special master or court-appointed\n8\n generally expert is hereafter selected, the parties will provide each\n matches # 7] tutorial to the master or expert.\n\n\n\n\n 2\n\f Case 4:23-cv-01798 Document 23-1 Filed on 08/15/23 in TXSD Page 4 of 8\n\n J. Ellison\n Standing Rule Agreed\n# Event\n Sequence and Proposed Date\n Timing\n [2 weeks after Thursday, Responses to amended pleadings due.\n # 6; generally April 11, 2024\n 19 weeks after\n Scheduling\n9 Conf.]\n (Note \u2013 this is\n out of order\n and occurs\n before 7 & 8)\n [2 weeks after Thursday, Discovery deadline on claim construction issues (see\n # 9; 21 weeks April 25, 2024 P.R. 4-4)\n after\n Scheduling\n10 Conf.]\n (Note \u2013 this is\n out of order\n and occurs\n before 7 & 8)\n [7 weeks after Thursday, Comply with P.R. 4-5(a): the party claiming patent\n # 5; May 16, 2024 infringement must serve and file a Claim\n 3 weeks after # Construction Opening Brief with its supporting\n 10; generally evidence. The moving party is to provide the Court with\n 24 weeks after 2 copies of the binders containing their Opening Brief\n11 Scheduling and exhibits. If a special master or court-appointed\n Conf.] expert has been appointed, the moving party must\n provide the Opening Brief on disk or CD along with a\n hard copy, tabbed and bound in notebook format with\n exhibits, to the special master or court- appointed\n expert.\n [2 weeks after Thursday, Comply with P.R. 4-5(b): Responsive Brief and\n # 11] May 30, 2024 supporting evidence due to party claiming patent\n infringement. The moving party is to provide the Court\n with two (2) courtesy copies of the Responsive Brief\n12 and exhibits. If a special master or court- appointed\n expert has been appointed, the nonmoving party must\n supply a copy of its Response on disk or CD along with\n a hard copy, tabbed and bound in notebook format with\n exhibits, to the special master or court-appointed expert.\n\n\n\n\n 3\n\f Case 4:23-cv-01798 Document 23-1 Filed on 08/15/23 in TXSD Page 5 of 8\n\n J. Ellison\n Standing Rule Agreed\n# Event\n Sequence and Proposed Date\n Timing\n [1 week after # Thursday, Comply with P.R. 4-5(c): Party claiming\n 12] June 6, 2024 infringement shall file a Reply Brief and supporting\n evidence on claim construction. The moving party is\n to provide the Court with two (2) copies of the Reply\n Brief and exhibits.\n\n If a special master or court-appointed expert has been\n appointed, the moving party must provide the Reply\n13\n Brief on disk or CD along with a hard copy, tabbed and\n bound in notebook format with exhibits, to the special\n master or court-appointed expert.\n\n Parties to file a notice with the Court stating the\n estimated amount of time requested for the Claim\n Construction (Markman) Hearing. The Court will notify\n the parties if it is unable to accommodate this request.\n [1 week before Wednesday, Parties to submit Claim Construction Chart in\n14 Markman July 3, 2024 WordPerfect 8.0 (or higher) format in compliance with\n Hearing] P.R. 4-5(d).\n [approx. 15 Thursday, Claim Construction (Markman) Hearing at ____\n weeks after # 5; July 11, 2024 _.m. at the United States District Court, 515 Rusk\n approx. 5 Street, Courtroom 9-F, Houston, Texas\n weeks after #\n15\n 13; 32 weeks\n after\n Scheduling\n Hrg.]\n [Markman Thursday, Court\u2019s Decision on Claim Construction (Markman\n ruling within 6 August 22, Ruling) (If ruling is late, parties may seek amendment\n16 weeks after 2024 of remaining dates in Scheduling Order.)\n Markman\n hearing]\n [4 weeks after Thursday, Deadline for final infringement contentions and to\n Markman September 19, amend pleadings on infringement claims\n Ruling (# 16)] 2024 NOTE: Except as provided in P.R. 3-6, if the\n17 amendment would affect preliminary or final\n infringement contentions, a motion must be made under\n P.R. 3-7 irrespective of whether the amendment is made\n before this deadline.\n [6 weeks after Thursday, Deadline for final invalidity contentions and to\n Markman October 3, 2024 amend pleadings on invalidity claims.\n Ruling (# 16); NOTE: Except as provided in P.R. 3-6, if the\n18 2 weeks after # amendment would affect preliminary or final invalidity\n 17] contentions, a motion must be made under P.R. 3-7\n irrespective of whether the amendment is made before\n this deadline.\n 4\n\f Case 4:23-cv-01798 Document 23-1 Filed on 08/15/23 in TXSD Page 6 of 8\n\n J. Ellison\n Standing Rule Agreed\n# Event\n Sequence and Proposed Date\n Timing\n [matches # 17; Thursday, Comply with P.R.3-8. All parties furnish documents\n ~10.5 mos. September 19, and privilege logs pertaining to willful infringement.\n19 after 2024\n Scheduling\n Conf.]\n [4 weeks after Thursday, Date for designation of expert witnesses on non-\n # 19 ] [~ 8 October 17, construction issues on which the party has the\n weeks after 2024 burden of proof (\u201cBOP\u201d) and service of expert\n Markman witness reports. [Refer to Fed. Rules of Civil Proc. for\n20 Ruling (# 16) information required.]\n and ~11.5 mos.\n after\n Scheduling\n Conf.)]\n [4 weeks after Thursday, Date for designation of responsive expert witnesses\n # 20] November 14, on nonclaim construction issues on which party does\n21 2024 not have BOP, and service of responsive expert\n witness reports. [Refer to Fed. Rules of Civil Proc. for\n information required.]\n [8 weeks after Thursday, Discovery Deadline on all issues.\n # 21, ~ 5 mos. January 2, 2025\n after Markman (If ruling is late, parties may seek amendment of\n22 Ruling (# 16), remaining dates in Scheduling Order.)\n and ~14.5 mos.\n after Sched.\n Conf.]\n [4+ weeks after Thursday, Dispositive and Non-Dispositive Motions\n # 22] February 6, and\n Responsive 2025 Briefing deadlines\n23 Briefs due (3\n wks): Reply\n Briefs due (1\n wk):\n [~ 8 weeks. Thursday, April Court\u2019s ruling on all pending motions\n after motions in 3, 2025\n # 23 filed; ~17\n24\n mos. from\n Sched\u2019l\u2019g\n Conf.]\n\n\n\n\n 5\n\f Case 4:23-cv-01798 Document 23-1 Filed on 08/15/23 in TXSD Page 7 of 8\n\n J. Ellison\n Standing Rule Agreed\n# Event\n Sequence and Proposed Date\n Timing\n [4 weeks after Thursday, May Joint Pretrial Order due including all components\n # 24; at least 2 1, 2025 required by Local Rules and this Court\u2019s Procedures\n weeks before (such as witness lists, exhibit lists and copies of exhibits\n Docket Call] (see # 29 below), and (a) in bench trials, proposed\n25 findings of fact and conclusions of law with citation to\n authority and (b) for jury trials, joint proposed jury\n instructions with citation to authority, and proposed\n verdict form). Statement of Expected Length of Trial:\n _____ days (~6 hours with jury per day).\n [same day as Thursday, May Written notice due for request for daily transcript\n JPTO (# 25) \u2013 1, 2025 or real time reporting of trial proceedings.\n26\n but filed\n separately]\n [Same day as Thursday, May Video and Deposition Designations due.\n JPTO (# 25)] 1, 2025 Each party who proposes to offer a deposition by video\n must file a disclosure identifying the line and page\n numbers to be offered.\n\n27 All other parties will have 1 week to file a response\n requesting cross designation line and page numbers to\n be included. Each party is responsible for preparation\n of the final edited video in accordance with their\n parties\u2019 designations and the Court\u2019s rulings on\n objections.\n [same day as Thursday, May Motions in Limine due.\n28\n JPTO (# 25)] 1, 2025\n [1 week after Thursday, May Objections to opponents\u2019 proposed witnesses,\n29 JPTO filed (# 8, 2025 proposed exhibits, designated deposition testimony,\n 25)] and any other matters due.\n [1 day before Monday, June The parties are directed to confer and advise the Court\n30 Docket Call \u2013 3 23, 2025 about (a) which limine requests the parties agree to.\n p.m.]\n [18.5 mos. after Tuesday, June 9:00 a.m. Docket Call/ Final Pretrial Conference at\n Scheduling 24, 2025 the United States District Court, 515 Rusk Street,\n31 Conf.; ~20 Houston, Texas.\n mos. after case\n filed]\n MEDIATION Thursday, April The Court refers most patent cases to mediation. The\n is required 17, 2025 parties should discuss proposed mediators and timing of\n prior to Docket mediation prior to the Scheduling Conference and be\n Call, prepared with recommendations for the Court.\n32\n Mediation to be completed by this date. The parties\n must select a mediator for this case. The parties and\n mediator must comply with S.D. TEXAS LOCAL\n RULE 16.\n\n 6\n\f Case 4:23-cv-01798 Document 23-1 Filed on 08/15/23 in TXSD Page 8 of 8\n\n J. Ellison\n Standing Rule Agreed\n# Event\n Sequence and Proposed Date\n Timing\n [generally, the Thursday, June 9:00 a.m. JURY SELECTION at the United States\n33 first day of jury 26, 2025 District Court\n trial]\n [Generally Thursday, June JURY TRIAL (9:30 a.m.) commences, subject to\n same date as 26, 2025 Court\u2019s criminal docket\n34\n jury selection #\n 33]\n\n\n\n\n 7\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:17.628205-08:00","document_number":"23","attachment_number":1,"pacer_doc_id":"179043308572","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit A - Proposed Scheduling Order","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999435/","id":379999435,"tags":[],"absolute_url":"/docket/67396788/23/2/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.832578-08:00","date_modified":"2025-01-22T07:03:24.650014-08:00","sha1":"9831fef0ca21fb312c2f5d013109e18498b37915","page_count":10,"file_size":187490,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.23.2.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.23.2.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 23-2 Filed on 08/15/23 in TXSD Page 1 of 10\n\n\n\n\n EXHIBIT B\n\f Case 4:23-cv-01798 Document 23-2 Filed on 08/15/23 in TXSD Page 2 of 10\n\n\n\n\n IN THE UNITED STATES DISTRICT COURT\n FOR THE SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\nOBM, INC. \u00a7\n \u00a7\n Plaintiff,\n \u00a7\n \u00a7\nversus \u00a7 Civil Action No. 4:23-cv-01798\n \u00a7 JURY TRIAL DEMANDED\nLANCIUM LLC \u00a7\n \u00a7\n Defendant.\n \u00a7\n\n PROTECTIVE ORDER\n\n The Court enters the following Protective Order (\u201cProtective Order\u201d) pursuant to Rule\n26(c) of the Federal Rules of Civil Procedure (\u201cFED. R. CIV. P.\u201d). It is hereby ORDERED:\n\n1. Proceedings and Information Governed. This Protective Order applies to any document,\ninformation, or other tangible or intangible thing (collectively, \u201cdocuments\u201d) furnished by a party\nto any other party, as well as documents furnished by non-parties who receive subpoenas in\nconnection with this action, if and when the documents are designated by a party or non-party as\n\u201cConfidential Information\u201d in accordance with the terms of this Protective Order. This Protective\nOrder also applies to copies, excerpts, abstracts, analyses, summaries, descriptions, or other forms\nof recorded information or data containing, reflecting, or disclosing all or parts of designated\ndocuments.\n\n2. Designation and Maintenance of Documents and Information.\n\n A. \u201cConfidential Information\u201d designation means that the document contains trade\nsecrets or commercial information not publicly known, which trade secrets or commercial\ninformation is of technical or commercial advantage to its possessor, or other information required\nby law or agreement to be kept confidential. Notwithstanding the provisions of Paragraph 3, all\nproduced or reviewed source code of a party shall be considered Confidential Information regardless of\nwhether marked as such.\n\n B. \u201cConfidential Information\u201d does not include, and this Protective Order does not\napply to, documents already in the knowledge or possession of the party to whom disclosure is\nmade unless that party is already bound by an agreement not to disclose such information, or\ninformation that has been disclosed to the public or third persons in a manner making such information\nno longer confidential.\n\n3. Documents Produced in Discovery and Depositions.\n\n A. Documents and things produced during the course of this litigation within the scope\nof paragraph 2(A) above, may be designated by the producing party as containing \u201cConfidential\n\f Case 4:23-cv-01798 Document 23-2 Filed on 08/15/23 in TXSD Page 3 of 10\n\n\n\nInformation\u201d by placing on each page and each thing a legend substantially as follows:\n\n CONFIDENTIAL\n\n Similar legends that include the word \u201cConfidential\u201d will suffice, such as \u201cHighly\nConfidential\u201d or \u201cHighly Confidential \u2013 Attorneys Eyes Only,\u201d so that such legends that have\npreviously been applied to documents in other litigations need not be regenerated for this matter.\nAll produced or reviewed source code of a party shall be considered Confidential Information\nregardless of whether marked as such.\n\n B. Depositions\n\n (i) For deposition testimony or exhibits to be entitled to protection under this\nOrder, a party must designate the testimony and exhibits disclosed at a deposition as \u201cConfidential\nInformation\u201d by requesting the reporter to so designate the transcript or any portion of the\ntranscript at the time of the deposition.\n\n (ii) If no such designation is made at the time of the deposition, any party has\nfourteen (14) days after delivery by the court reporter of the transcript of the deposition session to\ndesignate, in writing to the other parties and to the court reporter, what portions of the transcript\nand which exhibits the party designates as \u201cConfidential Information\u201d.\n\n (iii) During the transcription and following fourteen (14) day period after a\ndeposition session, the transcript and exhibits must be treated as Confidential Information, unless\nthe disclosing party consents to less confidential treatment of the information.\n\n (iv) Each party and the court reporter must attach a copy of any final and timely\nwritten designation notice to the transcript and each copy of the transcript in its possession, custody\nor control, and the portions designated in such notice must thereafter be treated in accordance with\nthis Protective Order. It is the responsibility of counsel for each party to maintain materials\ncontaining Confidential Information in a secure manner and appropriately identified so as to allow\naccess to such information only to such persons and under such terms as is permitted under this\nProtective Order.\n\n (v) If no such designation is made at the deposition or within the fourteen (14)\nday period following delivery of the transcript, then the entire deposition will be considered devoid\nof Confidential Information.\n\n4. Inadvertent Failure to Designate.\n\n A. The inadvertent failure to designate a document as \u201cConfidential Information\u201d will\nnot be a waiver of a claim that the document contains confidential information, and will not prevent\nthe producing party from designating such information as confidential at a later date in writing, so\nlong as the designation is done with particularity.\n\n B. In the event a producing party late designates a document as \u201cConfidential\nInformation,\u201d the document must be treated by the receiving party as confidential from the time of\nreceipt of the notice of the \u201cConfidential Information\u201d designation.\n\n5. Challenges to Designations. A party\u2019s designation of documents \u201cConfidential\n\f Case 4:23-cv-01798 Document 23-2 Filed on 08/15/23 in TXSD Page 4 of 10\n\n\n\nInformation\u201d is not binding if the procedures below are followed:\n\n A. A receiving party may challenge a producing party\u2019s designation at any time. Any\nreceiving party may request in writing that the producing party change the designation. The\nproducing party within fourteen (14) days after receipt of a written challenge, must advise the\nreceiving party whether or not it will change the designation.\n\n B. If the parties are unable to reach agreement after the expiration of this fourteen (14)\nday period, they shall confer. If they cannot resolve the issue, the receiving party may seek an\norder to alter the confidential status of the designated information.\n\n C. Until the presiding judge has ruled on a dispute under this paragraph, the\n\u201cConfidential Information\u201d designation will remain in full force and effect, and the document\ncontinues to be protected by this Protective Order.\n\n6. Disclosure and Use of Confidential Information.\n\n A. Information designated as \u201cConfidential Information\u201d only be used for purposes of\npreparation, trial, and appeal of this action. \u201cConfidential Information\u201d may not be used under any\ncircumstances for prosecuting any patent application, for patent licensing, or for any other purpose.\n\n B. Subject to paragraph 9 below, \u201cConfidential Information\u201d may be disclosed by the\nreceiving party only to the following individuals, provided that such individuals are informed of\nthe terms of this Protective Order: (a) outside counsel of record who have filed an appearance in\nthis action for the receiving party; (b) supporting personnel employed by (a), such as paralegals,\nlegal secretaries, data entry clerks, legal clerks, and private photocopying services; (c) experts or\nconsultants and their support staff; and (d) any persons requested by counsel to furnish\nadministrative or copying services for purposes of preparation, trial, and/or appeal of this action\nsuch as document coding, image scanning, mock trial (including mock jurors), jury profiling,\ntranslation services, court reporting services, demonstrative exhibit preparation, or the creation of\nany computer database from documents.\n\n C. Any attorney or patent agent, and any person associated with a Party that is\npermitted to receive the other Party\u2019s Confidential Information, who obtains, receives, has access\nto, or otherwise learns, in whole or in part, the other Party\u2019s \u201cConfidential Information\u201d under this\nOrder shall not prepare, prosecute, supervise, or assist in the preparation or prosecution of any\npatent application pertaining to the field of the invention of the patent(s)-in-suit during the\npendency of this Action and for one year after its conclusion, including any appeals.\n\n D. Further, prior to disclosing \u201cConfidential Information\u201d a receiving party\u2019s proposed\nexpert or consultant, the receiving party must provide to the producing party a signed\nConfidentiality Agreement in the form attached as Exhibit A, the resume or curriculum vitae of\nthe proposed expert or consultant, the expert or consultant\u2019s business affiliation, and any current\nand past consulting relationships in the industry. The producing party will thereafter have fourteen\n(14) days from receipt of the Confidentiality Agreement to object to any proposed individual. The\nobjection must be made for good cause and in writing, stating with particularity the reasons for the\nobjection. Failure to object within fourteen\n(14) days constitutes approval. If the parties are unable to resolve any objection, the receiving party\nmay apply to the presiding judge to resolve the matter. There will be no disclosure to any proposed\n\f Case 4:23-cv-01798 Document 23-2 Filed on 08/15/23 in TXSD Page 5 of 10\n\n\n\nindividual during the fourteen (14) day objection period, unless that period is waived by the\nproducing party, or if any objection is made, until the parties have resolved the objection, or the\npresiding judge has ruled upon any resultant motion.\n\n E. Counsel is responsible for the adherence by third-party vendors to the terms and\nconditions of this Protective Order. Counsel may fulfill this obligation by obtaining a signed\nConfidentiality Agreement in the form attached as Exhibit B.\n\n F. \u201cConfidential Information\u201d may be disclosed to a person who is not already allowed\naccess to such information under this Protective Order if:\n(a) the information was previously received or authored by the person or was authored or received\nby a director, officer, employee or agent of the company for which the person is testifying as a\ndesignee under FED. R. CIV. P. 30(b)(6); (b) the designating party is a party for whom the person\nis a director, officer, employee, consultant or agent; or (c) counsel for the party designating the\nmaterial agrees in writing that the specific material may be disclosed to the person. In the event of\ndisclosure under this section 6(F), only the reporter, the person, his or her counsel, the presiding\njudge, and persons to whom disclosure may be made and who are bound by this Protective Order,\nmay be present during the disclosure or discussion of Confidential Information. Disclosure of\nmaterial pursuant to this section 6(F) does not constitute a waiver of the confidential status of the\nmaterial so disclosed.\n\n7. Non-Party Information.\n\n The existence of this Protective Order must be disclosed to any person producing\ndocuments, tangible things, or testimony in this action who may reasonably be expected to desire\nconfidential treatment for such documents, tangible things or testimony. Any such person may\ndesignate documents, tangible things, or testimony confidential pursuant to this Protective Order.\n\n8. Filing Documents With the Court.\n\n Any party may submit Confidential Information to the court under seal by identifying the\ndocument by name and designating the document \u201csealed\u201d in the CM/ECF system of the court. If\na party delivers a copy to the court, the document must be in a sealed envelope bearing the caption\nof this action and a label containing the following:\n\n CONFIDENTIAL INFORMATION\n\n [case caption]\n\n This envelope, which is being filed under seal,\n contains documents that are subject to a Protective Order\n governing the use of confidential discovery material.\n\f Case 4:23-cv-01798 Document 23-2 Filed on 08/15/23 in TXSD Page 6 of 10\n\n\n\n9. No Prejudice.\n\n Producing or receiving \u201cConfidential Information,\u201d or otherwise complying with the terms\nof this Protective Order, will not: (a) operate as an admission by any party that any particular\n\u201cConfidential Information\u201d contains or reflects trade secrets or any other type of confidential or\nproprietary information; (b) prejudice the rights of a party to object to the production of information\nor material that the party does not consider to be within the scope of discovery; (c) prejudice the\nrights of a party to seek a determination by the presiding judge that particular materials be\nproduced; (d) prejudice the rights of a party to apply to the presiding judge for further protective\norders; or (e) prevent the parties from agreeing in writing to alter or waive the provisions or\nprotections provided for in this Protective Order with respect to any particular information or\nmaterial.\n\n10. Conclusion of Litigation.\n\n Within sixty (60) days after final judgment in this action, including the exhaustion of all\nappeals, or within sixty (60) days after dismissal pursuant to a settlement agreement, each party or\nother person subject to the terms of this Protective Order is under an obligation to destroy or return\nto the producing party all materials and documents containing \u201cConfidential Information,\u201d and to\ncertify to the producing party that this destruction or return has been done. However, outside\ncounsel for any party is entitled to retain all court papers, trial transcripts, exhibits, and attorney\nwork provided that any such materials are maintained and protected in accordance with the terms\nof this Protective Order. Nothing in this Protective Order requires the return or destruction of any\ninformation that is required by law to be retained or that is stored in back-up/archive systems as a\nresult of the ordinary operation of such systems.\n\n11. Other Proceedings.\n\n By entering this Protective Order and limiting the disclosure of information in this case,\nthe presiding judge does not intend to preclude another court from finding that information may\nbe relevant and subject to disclosure in another case. Any person or party subject to this Protective\nOrder who may be subject to a motion to disclose another party\u2019s information designated\n\u201cConfidential Information\u201d pursuant to this Protective Order must promptly notify that party of the\nmotion so that the party may have an opportunity to appear and be heard on whether that\ninformation should be disclosed.\n\n12. Remedies.\n\n This Protective Order will be enforced by the sanctions set forth in FED. R. CIV. P. 37(a)\nand any other sanctions as may be available to the presiding judge, including the power to hold\nparties or other violators of this Protective Order in contempt. All other remedies available to any\nperson injured by a violation of this Protective Order are fully reserved.\n\n13. Relief from Protective Order.\n\n Any party may petition the presiding judge for good cause shown if the party desires relief\nfrom a term or condition of this Protective Order.\n\f Case 4:23-cv-01798 Document 23-2 Filed on 08/15/23 in TXSD Page 7 of 10\n\n\n\n14. Federal Rule of Evidence 502(d)\n\n The parties having agreed to a clawback agreement, and good cause appearing therefore,\nthe Court hereby orders as follows:\n\n For purposes of this Clawback Agreement, an \"Inadvertently Produced Document\" is a\ndocument produced to a party in this litigation that could have been withheld, in whole or in part,\nbased on a legitimate claim of attorney-client privilege, work-product protection, or other\napplicable privilege.\n\n Inclusion of any Inadvertently Produced Document in a production shall not result in the\nwaiver of any privilege or protection associated with such document, nor result in a subject matter\nwaiver of any kind provided that, pursuant to Federal Rule of Evidence 502(b), (1) the disclosure\nof the document was inadvertent, (2) the producing party took reasonable steps to prevent\ndisclosure, and (3) the producing party promptly took reasonable steps to rectify the error.\n\n A producing party may demand the return of any Inadvertently Produced Document, which\ndemand shall be made to the receiving party's counsel in writing and shall contain information\nsufficient to identify the Inadvertently Produced Document. Within five (5) business days of the\ndemand for the Inadvertently Produced Document, the producing party shall provide the receiving\nparty with a written privilege description for such document that is consistent with the\nrequirements of the Federal Rules of Civil Procedure, setting forth the basis for the claim of\nprivilege for the Inadvertently Produced Document. In the event that any portion of the\nInadvertently Produced Document does not contain privileged information, the producing party\nshall also provide a redacted copy of the Inadvertently Produced Document that omits the\ninformation that the producing party believes is subject to a claim of privilege.\n\n Upon receipt of a written demand for return of an Inadvertently Produced Document, the\nreceiving party shall immediately return or destroy the Inadvertently Produced Document (and any\ncopies thereof) to the producing party and shall immediately delete all electronic versions of the\ndocument.\n\n The receiving party may object to the producing party's designation of an Inadvertently\nProduced Document by providing written notice of such objection within five (5) business days of\nits receipt of a written demand for the return of an Inadvertently Produced Document. Any such\nobjection shall be resolved by the Court after an in camera review of the Inadvertently Produced\nDocument. Pending resolution of the matter by the Court, the parties shall not use any documents\nthat are claimed to be Inadvertently Produced Documents in this litigation.\n\n\n\n Signed on , at Houston Texas.\n\n\n\n\n Judge Keith P. Ellison\n United States District Judge\n\f Case 4:23-cv-01798 Document 23-2 Filed on 08/15/23 in TXSD Page 8 of 10\n\n\n\n\n Exhibit A\n\n IN THE UNITED STATES DISTRICT COURT\n FOR THE SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\nOBM, INC. \u00a7\n \u00a7\n Plaintiff,\n \u00a7\n \u00a7\nversus \u00a7 Civil Action No. 4:23-cv-01798\n \u00a7 JURY TRIAL DEMANDED\nLANCIUM LLC \u00a7\n \u00a7\n Defendant.\n \u00a7\n CONFIDENTIALITY AGREEMENT FOR EXPERT,\n CONSULTANT OR EMPLOYEES OF ANY PARTY\n\n I , under penalty of perjury, 28 U.S.C. \u00a7 1746, that:\n\n 1. Information, including documents and things, designated as \u201cConfidential\nInformation,\u201d as defined in the Protective Order entered in the above-captioned action (\u201cProtective\nOrder\u201d), is being provided to me pursuant to the terms and restrictions of the Protective Order.\n\n 2. I have been given a copy of and have read the Protective Order.\n\n 3. I am familiar with the terms of the Protective Order and I agree to comply with and\nto be bound by its terms.\n\n 4. I submit to the jurisdiction of the United States District Court for the Southern\nDistrict of Texas for enforcement of the Protective Order.\n\n 5. I agree not to use any \u201cConfidential Information\u201d disclosed to me pursuant to the\nProtective Order except for purposes of the above- captioned litigation and not to disclose any of\nthis information to persons other than those specifically authorized by the Protective Order,\nwithout the express written consent of the party who designated the information as confidential or\nby order of the presiding judge.\n\n 6. I also agree to notify any stenographic, clerical or technical personnel who are\nrequired to assist me of the terms of this Protective Order and of its binding effect on them and\nme.\n\n 7. I understand that I am to retain all documents or materials designated as or\n\f Case 4:23-cv-01798 Document 23-2 Filed on 08/15/23 in TXSD Page 9 of 10\n\n\n\n\ncontaining \u201cConfidential Information\u201d in a secure manner, and that all such documents and\nmaterials are to remain in my personal custody until the completion of my assigned duties in this\nmatter, whereupon all such documents and materials, including all copies thereof, and any writings\nprepared by me containing any \u201cConfidential Information\u201d are to be returned to counsel who\nprovided me with such documents and materials.\n\n\nSigned at , , this , day of , 20 .\n\n\n Signature\n\f Case 4:23-cv-01798 Document 23-2 Filed on 08/15/23 in TXSD Page 10 of 10\n\n\n\n\n Exhibit B\n\n IN THE UNITED STATES DISTRICT COURT\n FOR THE SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\nOBM, INC. \u00a7\n \u00a7\n Plaintiff,\n \u00a7\n \u00a7\nversus \u00a7 Civil Action No. 4:23-cv-01798\n \u00a7 JURY TRIAL DEMANDED\nLANCIUM LLC \u00a7\n \u00a7\n Defendant.\n \u00a7\n\n CONFIDENTIALITY AGREEMENT FOR THIRD-PARTY VENDORS\n\n I , under penalty of perjury, 28 U.S.C. \u00a7 1746, that:\n\n 1. Information, including documents and things, designated as \u201cConfidential\nInformation\u201d as defined in the Protective Order entered in the above-captioned action (\u201cProtective\nOrder\u201d), is being provided to me pursuant to the terms and restrictions of the Protective Order.\n\n 2. I have been given a copy of and have read the Protective Order.\n\n 3. I am familiar with the terms of the Protective Order and I agree to comply with and\nto be bound by its terms.\n\n 4. I submit to the jurisdiction of the United States District Court for the Southern\nDistrict of Texas for enforcement of the Protective Order.\n\n 5. I agree not to use any Confidential Information disclosed to me pursuant to the\nProtective Order except for purposes of the above- captioned litigation and not to disclose any of\nthis information to persons other than those specifically authorized by the Protective Order, without\nthe express written consent of the party who designated the information as confidential or by order\nof the presiding judge.\n\nSigned at , , this , day of , 20 .\n\n\n\n\n Signature\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:18.033899-08:00","document_number":"23","attachment_number":2,"pacer_doc_id":"179043308573","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit B - Proposed Protective Order","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999436/","id":379999436,"tags":[],"absolute_url":"/docket/67396788/23/3/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.864666-08:00","date_modified":"2025-01-22T07:03:24.658169-08:00","sha1":"eebdbf93289ef1925df8967abc4d7d55abe8a20d","page_count":5,"file_size":118787,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.23.3.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.23.3.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 23-3 Filed on 08/15/23 in TXSD Page 1 of 5\n\n\n\n\n EXHIBIT C\n\f Case 4:23-cv-01798 Document 23-3 Filed on 08/15/23 in TXSD Page 2 of 5\n\n\n\n\n IN THE UNITED STATES DISTRICT COURT\n SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\nOBM, INC.,\n\n Plaintiff, Civil Action No: 4:23-cv-01798\n\nv. JURY TRIAL DEMANDED\n\nLANCIUM LLC,\n\n Defendant.\n\n\n SUPPLEMENTAL SOURCE CODE PROTECTIVE ORDER\n\nThe Court enters the following Protective Order (\u201cProtective Order\u201d) pursuant to Rule 26(c) of the\nFederal Rules of Civil Procedure (\u201cFED. R. CIV. P.\u201d). It is hereby ORDERED:\n\nWHEREAS, Plaintiff OBM, Inc. and Defendant Lancium LLC, hereafter referred to as \u201cthe\nParties,\u201d believe that certain source code that is or will be encompassed by discovery demands by\nthe Parties involves the production or disclosure of trade secrets, confidential business\ninformation, or other proprietary information;\n\nWHEREAS, the Parties seek a protective order limiting disclosure thereof in accordance with Federal\nRule of Civil Procedure 26(c)\n\n IT IS HEREBY AGREED, subject to the Court\u2019s approval, that the Protective Order is\n supplemented as follows:\n\n 1. The term \u201cSource Code\u201d or \u201csource code\u201d as used in this Order includes at least\n computer code, scripts, assembly, binaries, object code, source code listings.\n\n 2. A producing party may designate source code as \u201cRESTRICTED\n \u2013 CONFIDENTIAL SOURCE CODE\u201d if it comprises or includes confidential, proprietary or\n trade secret source code. Material designated as \u201cRESTRICTED \u2013 CONFIDENTIAL SOURCE\n CODE\u201d shall be subject to at least all of the protections afforded to the highest level of\n confidentiality under the Protective Order, but may not be disclosed to the receiving parties or\n employees (including in-house counsel) of a receiving party absent a specific agreement of the\n parties or court order. Access to \u201cRESTRICTED \u2013 CONFIDENTIAL SOURCE CODE\u201d\n material shall be limited to outside counsel of record who have filed an appearance in this action\n for the receiving party1 and up to three (3) outside consultants or experts (i.e., not existing\n\n1\n For the purposes of this paragraph, such counsel is defined to include the counsel\u2019s support\npersonnel consistent with the needs of Paragraph 4(H), but not other attorneys.\n\n\n\n 1\n\f Case 4:23-cv-01798 Document 23-3 Filed on 08/15/23 in TXSD Page 3 of 5\n\n\n\n\nemployees or affiliates of a Party or a competitor, potential competitor, or affiliate thereof\nof a Party identified by the Producing Party with reasonable specificity) retained for the purpose\nof this litigation and approved to access Highly Confidential information under the Protective\nOrder.\n\n 3. Nothing in this Order shall be construed as a representation or admission that\nSource Code is properly discoverable in this action, or to obligate any Party to produce any\nSource Code.\n\n 4. The following additional restrictions shall apply to the inspection and production\nof RESTRICTED \u2013 CONFIDENTIAL SOURCE CODE, unless otherwise advised by the\nproducing party or Ordered by the Court:\n\n (A) Any source code produced in discovery shall be made available for inspection,\nin a native electronic format allowing it to be reasonably reviewed and electronically searched.\nThe producing party shall produce source code for inspection during normal business hours or\nother mutually agreeable times at an office of the producing party\u2019s counsel or another mutually\nagreed upon location. Prior to the first access by the receiving party of the source code, the\nreceiving party must provide notice to the producing party at least seven (7) days prior to the\ndate that the receiving party seeks review of the source code. After the first access of the source\ncode by the receiving party, the receiving party must provide notice to the producing party at\nleast three (3) business days prior to the source code access.\n\n (B) The source code shall be made available for inspection on a secured computer in\na secured room without Internet access or network access to other computers (the \u201cSource Code\nComputer\u201d). The receiving party\u2019s outside counsel and/or expert may request that commercially\navailable licensed software tools for viewing and searching Source Code be installed on the\nSource Code Computer. The receiving party must provide the producing party with the CD,\nDVD, or weblink containing such software tool(s) at least five (5) business days in advanced of\nthe inspection. Use or possession of any input/output device (e.g., USB memory stick, cameras\nor any camera-enabled device, CDs, floppy disk, portable hard drive, laptop, or any devices that\ncan access the Internet or any other network or external system) is prohibited while accessing\nthe computer containing the Source Code. All persons entering the locked room containing the\nSource Code must agree to submit to reasonable security measures to insure they are not\ncarrying any prohibited items before they will be given access to the locked room.\n\n (C) The producing party may object in writing to the installation of any such tool,\nand such tool shall not be installed until such objection is resolved. If the Parties are unable to\nagree on the additional requested software tools, they may seek an Order from the Court after\nmaking a good-faith effort to resolve their dispute.\n\n (D) The source code shall be produced as it is kept in the normal course of business,\nor as it would be collected in the normal course of business. The receiving party\u2019s outside\ncounsel and/or Experts shall be entitled to take handwritten notes relating to the source code\nbut may not copy the Source Code into the notes and may not take such notes electronically on\nthe Source Code Computer itself. This limitation shall not apply to information regarding\ndirectory, file, and line number within the file, which information the producing party shall\n\n\n 2\n\f Case 4:23-cv-01798 Document 23-3 Filed on 08/15/23 in TXSD Page 4 of 5\n\n\n\n\nmake available to the extent that such information exists and can reasonably be provided\nwithout undue cost or burden. Such notes shall be labeled \u201cRESTRICTED \u2013 CONFIDENTIAL\nSOURCE CODE.\u201d Handwritten notes transcribed must be limited to matters concerning this\ncase. The producing party may visually monitor the activities of the receiving party\u2019s\nrepresentatives during any source code review, but only to ensure that there is no unauthorized\nrecording, copying, or transmission of the source code. For avoidance of doubt, the producing\nparty cannot review any notes made by the receiving party\u2019s representatives during any source\ncode review and cannot monitor verbal communications of receiving party\u2019s representatives\nduring source code review. For example, the producing party\u2019s representatives can monitor the\nreceiving party\u2019s representatives from the opposite side of a glass wall, window, or the like.\n\n (E) Within five (5) business days of placing files on the Source Code Computer, the\nsource code provider shall provide a manifest of the contents of the computer to include a list\nof source code files available for review to the extent practicable. This list must be updated\nwithin five (5) business days each time new files are added to the Source Code Computer.\n\n (F) No person shall copy, email, transmit, upload, download, print, photograph or\notherwise duplicate any portion of the designed Source Code, except as the receiving party may\nrequest paper copies of limited portions of source code that are reasonably necessary for the\npreparation of court filings, pleadings, expert reports, or other papers, or for deposition or trial;\nhowever, the receiving party may not request paper copies for the purposes of reviewing the\nsource code in the first instance. In no event may the receiving party print more than twenty-\nfive (25) consecutive pages, or an aggregate total of more than five hundred (500) pages of\nSource Code during the duration of the case without prior written approval by the producing\nparty. Within five (5) business days or such additional time as necessary due to volume\nrequested, the producing party will provide the requested material on watermarked or colored\npages being production numbers and the designation \u201cRESTRICTED \u2013 CONFIDENTIAL\nSOURCE CODE\u201d unless objected to as discussed below. The receiving party shall maintain all\npaper copies of any printed portions of the source code in a secured area in a manner that\nprevents duplication of or unauthorized access to the source code. The receiving party shall not\ncreate any electronic or other images of the paper copies and shall not convert any of the\ninformation contained in the paper copies into any electronic format, except as provided in\nParagraph 4(H).\n\n (G) If the producing party objects that the printed portions are not reasonably\nnecessary to any case preparation activity, the producing party shall make such objection\nknown to the receiving party within five (5) business days. If after meeting and conferring the\nproducing party and the receiving party cannot resolve the objection, the producing party shall\nbe entitled, but not required, to seek a Court resolution of whether the printed Source Code in\nquestion is reasonably necessary to any case preparation activity. Contested Source Code print\nouts need not be produced to the requesting party until the matter is resolved by the Court.\n\n (H) The receiving party may only include in court filings or expert reports (and drafts\nthereof) images of those lines of source code that are reasonably necessary to the prosecution\nor defense of this case, and any such document, court filing, or expert report must be designated\n\u201cRESTRICTED \u2013 CONFIDENTIAL SOURCE CODE\u201d and, if filed with the Court, filed under\nseal in accordance with the Court\u2019s rules, procedures, and orders.\n\n\n 3\n\f Case 4:23-cv-01798 Document 23-3 Filed on 08/15/23 in TXSD Page 5 of 5\n\n\n\n\n (I) The receiving party may make no more than three (3) additional paper copies\nof any portions of the source code files, not including copies attached to court filings or trial\nand hearing demonstrative exhibits. The receiving party shall only make additional paper\ncopies if such additional copies are (1) necessary to prepare court filings, pleadings, or other\npapers (including a testifying expert\u2019s report), (2) necessary for deposition, or (3) otherwise\nnecessary for the preparation of its case.\n\n (J) Any paper copies used during a deposition shall be retrieved by the producing\nparty at the end of each day and must not be given to or left with a court reporter or any other\nunauthorized individual. Copies of source code that are marked as deposition exhibits shall not\nbe provided to the court reporter or attached to deposition transcripts; rather, the deposition\nrecord will identify the exhibit by its production numbers and the Party that brought the source\ncode to the deposition will keep possession of the marked deposition source code exhibit.\n\n (K) Any attorney representing a Party, whether in-house or outside counsel, and any\nperson associated with a Party and permitted to receive the other Party\u2019s Protected Material that\nis designated \u201cRESTRICTED CONFIDENTIAL \u2013 SOURCE CODE\u201d who obtains, receives,\nhas access to, or otherwise learns, in whole or in part, the other Party\u2019s \u201cRESTRICTED\nCONFIDENTIAL \u2013 SOURCE CODE\u201d material under this Order shall not prepare, prosecute,\nsupervise, or assist in the preparation or prosecution of any patent application pertaining to the\nfield of the invention of the patents-in-suit on behalf of the receiving Party or its acquirer,\nsuccessor, predecessor, or other affiliate during the pendency of this Action and for one year\nafter its conclusion, including any appeals.\n\n\n\n\nSigned on , at Houston Texas.\n\n\n\n Judge Keith P. Ellison\n United States District Judge\n\n\n\n\n 4\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:18.409262-08:00","document_number":"23","attachment_number":3,"pacer_doc_id":"179043308574","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit C - Supplemental Source Code Protective Order","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999437/","id":379999437,"tags":[],"absolute_url":"/docket/67396788/23/4/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.895428-08:00","date_modified":"2025-01-22T07:03:24.666948-08:00","sha1":"e07b433bb2d979cdd96490282c2dc847567fddcc","page_count":16,"file_size":146408,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.23.4.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.23.4.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 1 of 16\n\n\n\n\n EXHIBIT D\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 2 of 16\n\n\n\n\n IN THE UNITED STATES DISTRICT\n COURT FOR THE SOUTHERN DISTRICT\n OF TEXAS HOUSTON DIVISION\n\n _ DIVISION\n\n [PARTY NAME] \u00a7\n \u00a7\n Plaintiff,\n \u00a7\n \u00a7\n versus \u00a7 Civil Action No.\n \u00a7\n [PARTY NAME] \u00a7\n \u00a7\n Defendant.\n \u00a7\n\nOBM, INC. \u00a7\n \u00a7\n Plaintiff,\n \u00a7\n \u00a7\nversus \u00a7 Civil Action No. 4:23-cv-01798\n \u00a7\n JURY TRIAL DEMANDED\nLANCIUM LLC \u00a7\n \u00a7\n Defendant.\n \u00a7\n\n PROTECTIVE ORDER\n\n The Court enters the following Protective Order (\u201cProtective Order\u201d) pursuant to\nRule 26(c) of the Federal Rules of Civil Procedure (\u201cFED. R. CIV. P.\u201d). It is hereby\nORDERED:\n\n1. Proceedings and Information Governed. This Protective Order applies to any\ndocument, information, or other tangible or intangible thing (collectively, \u201cdocuments\u201d)\nfurnished by a party to any other party, as well as documents furnished by non-parties\nwho receive subpoenas in connection with this action, if and when the documents are\ndesignated by a party or non-party as \u201cConfidential Information\u201d or \u201cHighly Confidential\nInformation\u201d in accordance with the terms of this Protective Order. This Protective Order also\napplies to copies, excerpts, abstracts, analyses, summaries, descriptions, or other forms of\nrecorded information or data containing, reflecting, or disclosing all or parts of\ndesignated documents.\n\n2. Designation and Maintenance of Documents and Information.\n\n A. \u201cConfidential Information\u201d designation means that the document contains\ntrade secrets or\nPatent Protective commercial information not publicly known, which trade secrets or\n Order\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 3 of 16\n\n\n\n commercial information is of technical or commercial advantage to its possessor, or other\n information required by law or agreement to be kept confidential. Notwithstanding the\n provisions of Paragraph 3, all produced or reviewed source code of a party shall be considered\n Confidential Information regardless of whether marked as such.\n\nB. The \u201cHighly Confidential Information\u201d designation means that the document contains\n information that the producing party deems especially sensitive, which may include, but is not\n limited to, confidential research and development, financial, technical, marketing, any other\n sensitive trade secret information, or information capable of being utilized for the preparation\n or prosecution of a patent application dealing with such subject matter.\n B. C.\u201cConfidential Information\u201d and \u201cHighly \u201cConfidential Information\u201d does not\n include, and this Protective Order does not apply to, documents already in the knowledge or\n possession of the party to whom disclosure is made unless that party is already bound by an\n agreement not to disclose such information, or information that has been disclosed to the public\n or third persons in a manner making such information no longer confidential.\n\n 3. Documents Produced in Discovery and Depositions.\n\n A. Documents and things produced during the course of this litigation within the\n scope of paragraph 2(A) or 2(B) above, may be designated by the producing party as containing\n \u201cConfidential\n\n\n\n\n Patent Protective Order\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 4 of 16\n\n\n\n A.Information\u201d by placing on each page and each thing a legend substantially as follows:\n\n CONFIDENTIALINFORMATION SUBJECT TO\n PROTECTIVE ORDER\n Documents and things produced during the course of this litigation within the scope of\n paragraph 2(BA) above may be designated by the producing party as containing \u201cHighly\n Confidential Information\u201d by placing on each page and each thing a legend substantially\n as follows:\n\n HIGHLY CONFIDENTIAL INFORMATION\n SUBJECT TO PROTECTIVE ORDER\n\n Similar legends that include the word \u201cConfidential\u201d will suffice, such as \u201cHighly\n Confidential\u201d or \u201cHighly Confidential \u2013 Attorneys Eyes Only,\u201d so that such legends that have\n previously been applied to documents in other litigations need not be regenerated for this matter.\n All produced or reviewed source code of a party shall be considered Confidential Information\n regardless of whether marked as such.\n\n B. B.Depositions\n\n (i) For deposition testimony or exhibits to be entitled to protection under this\n Order, a party must designate the testimony and exhibits disclosed at a deposition as\n \u201cConfidential Information\u201d or \u201cHighly Confidential Information\u201d by requesting the reporter to so\n designate the transcript or any portion of the transcript at the time of the deposition.\n\n (ii) If no such designation is made at the time of the deposition, any party has\n fourteen (14) days after delivery by the court reporter of the transcript of the deposition session\n to designate, in writing to the other parties and to the court reporter, what portions of the\n transcript and which exhibits the party designates as \u201cConfidential Information\u201d and \u201cHighly\n Confidential Information.\u201d.\n\n (iii) During the transcription and following fourteen (14) day period after\n a deposition session, the transcript and exhibits must be treated as Highly Confidential\n Information, unless the disclosing party consents to less confidential treatment of the\n information.\n\n (iv) Each party and the court reporter must attach a copy of any final and\n timely written designation notice to the transcript and each copy of the transcript in its\n possession, custody or control, and the portions designated in such notice must thereafter be\n treated in accordance with this Protective Order. It is the responsibility of counsel for each\n party to maintain materials containing Confidential Information or Highly Confidential\n Information in a secure manner and appropriately identified so as to allow access to such\n information only to such persons and under such terms as is permitted under this Protective\n Order.\n\n (v) If no such designation is made at the deposition or within the fourteen (14)\n day period following delivery of the transcript, then the entire deposition will be considered\n devoid of Confidential Information or Highly Confidential Information.\n(vi)\n 4. Inadvertent Failure to Designate.\n Patent Protective Order\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 5 of 16\n\n\n\n A. The inadvertent failure to designate a document as \u201cConfidential Information\u201d or\n\u201cHighly Confidential Information\u201d will not be a waiver of a claim that the document contains\nconfidential information, and will not prevent the producing party from designating such\ninformation as confidential at a later date in writing, so long as the designation is done with\nparticularity.\n\n B. In the event a producing party late designates a document as \u201cConfidential\nInformation\u201d or \u201cHighly Confidential Information,\u201d the document must be treated by the\nreceiving party as confidential from the time of receipt of the notice of the \u201cConfidential\nInformation\u201d or \u201cHighly Confidential Information\u201d designation.\n\n5. Challenges to Designations. A party\u2019s designation of documents\n \u201cConfidentialInformation\u201d or \u201cHighly Confidential\n\n\n\n\nPatent Protective Order\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 6 of 16\n\n\n\n5.Information\u201d is not binding if the procedures below are followed:\n\n A. A receiving party may challenge a producing party\u2019s designation at any time. Any\nreceiving party may request in writing that the producing party change the designation.\nThe producing party within fourteen (14) days after receipt of a written challenge, must advise\nthe receiving party whether or not it will change the designation.\n\n B. If the parties are unable to reach agreement after the expiration of this fourteen\n(14) day period, they shall confer. If they cannot resolve the issue, the receiving party may seek\nan order to alter the confidential status of the designated information.\n\n C. Until the presiding judge has ruled on a dispute under this paragraph, the\n\u201cConfidential Information\u201d or \u201cHighly Confidential Information\u201d designation will remain in\nfull force and effect, and the document continues to be protected by this Protective Order.\n\n6. 6.Disclosure and Use of Confidential Information.\n\n A. Information designated as \u201cConfidential Information\u201d or \u201cHighly Confidential\nInformation\u201d may only be used for purposes of preparation, trial, and appeal of this action.\n\u201cConfidential Information\u201d or \u201cHighly Confidential Information\u201d may not be used under any\ncircumstances for prosecuting any patent application, for patent licensing, or for any other\npurpose.\n\n B. Subject to paragraph 9 below, \u201cConfidential Information\u201d may be disclosed by the\nreceiving party only to the following individuals, provided that such individuals are informed of\nthe terms of this Protective Order: (a) two employees of the receiving party who are required in\ngood faith to provide assistance in the conduct of this litigation, including any settlement\ndiscussions, and who are identified as such in writing to counsel for the designating\nparty in advance of the disclosure; (b) two in-house counsel who are identified by the receiving\nparty; (c) outside counsel of record who have filed an appearance in this action for the receiving\nparty; (db) supporting personnel employed by (b) and (ca), such as paralegals, legal secretaries,\ndata entry clerks, legal clerks, and private photocopying services; (ec) experts or consultants and\ntheir support staff; and (fd) any persons requested by counsel to furnish administrative or\ncopying services for purposes of preparation, trial, and/or appeal of this action such as document\ncoding, image scanning, mock trial (including mock jurors), jury profiling, translation services,\ncourt reporting services, demonstrative exhibit preparation, or the creation of any computer database\nfrom documents.\n\n D. Subject to paragraph 9 below, \u201cHighly Confidential Information\u201d may be disclosed\nby the receiving party only to the following individuals, provided that such individuals are\ninformed of the terms of this Protective Order: (a) outside counsel of record for the receiving\nparty;\n C. (b) supporting personnel employed by outside counsel, such as paralegals, legal\nsecretaries, data entry clerks, legal clerks, private photocopying services; (c) experts or\nconsultants; (d) those individuals designated in paragraph 6(F)(c) below; (e) any persons\nrequested by counsel to furnish services for purposes of preparation, trial, and/or appeal of this\naction such as document coding, image scanning, mock trial (including mock jurors), jury\nprofiling, translation services, court reporting services, demonstrative exhibit preparation, or the\ncreation of any computer database from documents provided that all such persons agree in\nwriting to maintain the confidentiality of the disclosed materials; and (f) if agreed by the parties,\nPatent Protective Order\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 7 of 16\n\n\n\none in-house counsel with no current involvement in the preparation or prosecution of patent\napplicationsAny attorney or patent agent, and any person associated with a Party that is\npermitted to receive the other Party\u2019s Confidential Information, who obtains, receives, has access\nto, or otherwise learns, in whole or in part, the other Party\u2019s \u201cConfidential Information\u201d under\nthis Order shall not prepare, prosecute, supervise, or assist in the preparation or prosecution of\nany patent application pertaining to the field of the invention of the patent(s)-in-suit during the\npendency of this Action and for one year after its conclusion, including any appeals.\n\n D. E.Further, prior to disclosing \u201cConfidential Information\u201d or \u201cHighly Confidential\nInformation\u201d to a receiving party\u2019s proposed expert, or consultant, or employees, the\nreceiving party must provide to the producing party a signed Confidentiality Agreement\nin the form attached as Exhibit A, the resume or curriculum vitae of the proposed expert or\nconsultant, the expert or consultant\u2019s business affiliation, and any current and past consulting\nrelationships in the industry. The producing party will thereafter have fourteen\n(14) days from receipt of the Confidentiality Agreement to object to any proposed individual.\nThe objection must be made for good cause and in writing, stating with particularity the reasons\nfor the objection. Failure to object within fourteen\n(14) days constitutes approval. If the parties are unable to resolve any objection, the receiving\nparty may apply to the presiding judge to resolve the matter. There will be no disclosure to any\nproposed\n\n\n\n\nPatent Protective Order\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 8 of 16\n\n\n\nindividual during the fourteen (14) day objection period, unless that period is waived by\nthe producing party, or if any objection is made, until the parties have resolved the objection, or\nthe presiding judge has ruled upon any resultant motion.\n\n E. F.Counsel is responsible for the adherence by third-party vendors to the terms and\nconditions of this Protective Order. Counsel may fulfill this obligation by obtaining a\nsigned Confidentiality Agreement in the form attached as Exhibit B.\n\n F. G.\u201cConfidential Information\u201d or \u201cHighly \u201cConfidential Information\u201d may be\ndisclosed to a person who is not already allowed access to such information under this Protective\nOrder if:\n(a) the information was previously received or authored by the person or was authored or\nreceived by a director, officer, employee or agent of the company for which the person is\ntestifying as a designee under FED. R. CIV. P. 30(b)(6); (b) the designating party is the person or\nis a party for whom the person is a director, officer, employee, consultant or agent; or (c) counsel\nfor the party designating the material agrees in writing that the specific material may be disclosed\nto the person. In the event of disclosure under this section 6(F), only the reporter, the person, his\nor her counsel, the presiding judge, and persons to whom disclosure may be made and who are\nbound by this Protective Order, may be present during the disclosure or discussion of\nConfidential Information. Disclosure of material pursuant to this section 6(F) does not constitute\na waiver of the confidential status of the material so disclosed.\n\n7. 7.Non-Party Information.\n\n The existence of this Protective Order must be disclosed to any person producing\ndocuments, tangible things, or testimony in this action who may reasonably be expected to desire\nconfidential treatment for such documents, tangible things or testimony. Any such person may\ndesignate documents, tangible things, or testimony confidential pursuant to this Protective Order.\n\n8. 8.Filing Documents With the Court.\n\n Any party may submit Confidential Information to the court under seal by identifying the\ndocument by name and designating the document \u201csealed\u201d in the CM/ECF system of the court. If\na party delivers a copy to the court, the document must be in a sealed envelope bearing the\ncaption of this action and a label containing the following:\n\n CONFIDENTIAL INFORMATION\n\n [case caption]\n\n This envelope, which is being filed under seal,\n contains documents that are subject to a Protective\n Order\n governing the use of confidential discovery material.\n\n\n\n\nPatent Protective Order\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 9 of 16\n\n\n\n9. 9.No Prejudice.\n\n Producing or receiving \u201cConfidential Information\u201d or \u201cHighly Confidential Information,\u201d\nor otherwise complying with the terms of this Protective Order, will not: (a) operate as an\nadmission by any party that any particular \u201cConfidential Information\u201d or \u201cHighly Confidential\nInformation\u201d contains or reflects trade secrets or any other type of confidential or proprietary\ninformation; (b) prejudice the rights of a party to object to the production of information or\nmaterial that the party does not consider to be within the scope of discovery; (c) prejudice the\nrights of a party to seek a determination by the presiding judge that particular materials be\nproduced; (d) prejudice the rights of a party to apply to the presiding judge for further protective\norders; or (e) prevent the parties from agreeing in writing to alter or waive the provisions or\nprotections provided for in this Protective Order with respect to any particular information\nor material.\n\n10. 10.Conclusion of Litigation.\n\n Within sixty (60) days after final judgment in this action, including the exhaustion of all\nappeals, or within sixty (60) days after dismissal pursuant to a settlement agreement, each party\nor other person subject to the terms of this Protective Order is under an obligation to destroy or\nreturn to the producing party all materials and documents containing \u201cConfidential Information\u201d\nor \u201cHighly Confidential Information,\u201d and to certify to the producing party that this\ndestruction or return has been done. However, outside counsel for any party is entitled to\nretain all court papers, trial transcripts, exhibits, and attorney work provided that any such\nmaterials are maintained and protected in accordance with the terms of this Protective Order.\nNothing in this Protective Order requires the return or destruction of any information that is\nrequired by law to be retained or that is stored in back-up/archive systems as a result of the\nordinary operation of such systems.\n\n11. 11.Other Proceedings.\n\n By entering this Protective Order and limiting the disclosure of information in this case,\nthe presiding judge does not intend to preclude another court from finding that information may\nbe relevant and subject to disclosure in another case. Any person or party subject to this\nProtective Order who may be subject to a motion to disclose another party\u2019s information\ndesignated \u201cConfidential Information\u201d or \u201cHighly Confidential Information\u201d pursuant to this\nProtective Order must promptly notify that party of the motion so that the party may have an\nopportunity to appear and be heard on whether that information should be disclosed.\n\n12. 12.Remedies.\n\n This Protective Order will be enforced by the sanctions set forth in FED. R. CIV. P. 37(a)\nand any other sanctions as may be available to the presiding judge, including the power to hold\nparties or other violators of this Protective Order in contempt. All other remedies available to any\nperson injured by a violation of this Protective Order are fully reserved.\n\n13. 13.Relief from Protective Order.\n\n Any party may petition the presiding judge for good cause shown if the party desires\nrelief from a term or condition of this Protective Order.\n\nPatent Protective Order\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 10 of 16\n\n\n\n14. Federal Rule of Evidence 502(d)\n\n The parties having agreed to a clawback agreement, and good cause appearing therefore,\nthe Court hereby orders as follows:\n\n For purposes of this Clawback Agreement, an \"Inadvertently Produced Document\" is a\ndocument produced to a party in this litigation that could have been withheld, in whole or in part,\nbased on a legitimate claim of attorney-client privilege, work-product protection, or other\napplicable privilege.\n\n Inclusion of any Inadvertently Produced Document in a production shall not result in the\nwaiver of any privilege or protection associated with such document, nor result in a subject\nmatter waiver of any kind provided that, pursuant to Federal Rule of Evidence 502(b), (1) the\ndisclosure of the document was inadvertent, (2) the producing party took reasonable steps\nto prevent disclosure, and (3) the producing party promptly took reasonable steps to rectify the\nerror.\n\n A producing party may demand the return of any Inadvertently Produced Document,\nwhich demand shall be made to the receiving party's counsel in writing and shall contain\ninformation sufficient to identify the Inadvertently Produced Document. Within five (5) business\ndays of the demand for the Inadvertently Produced Document, the producing party shall provide\nthe receiving party with a written privilege description for such document that is\nconsistent with the requirements of the Federal Rules of Civil Procedure, setting forth the\nbasis for the claim of privilege for the Inadvertently Produced Document. In the event\nthat any portion of the Inadvertently Produced Document does not contain privileged\ninformation, the producing party shall also provide a redacted copy of the Inadvertently\nProduced Document that omits the information that the producing party believes is subject to a\nclaim of privilege.\n\n Upon receipt of a written demand for return of an Inadvertently Produced Document, the\nreceiving party shall immediately return or destroy the Inadvertently Produced Document (and\nany copies thereof) to the producing party and shall immediately delete all electronic versions of\nthe document.\n\n The receiving party may object to the producing party's designation of an Inadvertently\nProduced Document by providing written notice of such objection within five (5) business days\nof its receipt of a written demand for the return of an Inadvertently Produced Document. Any\nsuch objection shall be resolved by the Court after an in camera review of the Inadvertently\nProduced Document. Pending resolution of the matter by the Court, the parties shall not use any\ndocuments that are claimed to be Inadvertently Produced Documents in this litigation.\n\n\n\n Signed on , at City, StateHouston Texas.\n\n\n\n\n Judge\u2019s Name Keith P.\nPatent Protective Order Ellison United States\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 11 of 16\n\n\n\n District Judge\n\n\n\n\nPatent Protective Order\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 12 of 16\n\n\n\n\n Exhibit A\n\n IN THE UNITED STATES DISTRICT\n COURT FOR THE SOUTHERN DISTRICT\n OF TEXAS HOUSTON DIVISION\n\n _ DIVISION\n\n [PARTY NAME] \u00a7\n \u00a7\n Plaintiff,\n \u00a7\n \u00a7\n versus \u00a7 Civil Action No.\n \u00a7\n [PARTY NAME] \u00a7\n \u00a7\n Defendant.\n \u00a7\n\nOBM, INC. \u00a7\n \u00a7\n Plaintiff,\n \u00a7\n \u00a7\nversus \u00a7 Civil Action No. 4:23-cv-01798\n \u00a7\n JURY TRIAL DEMANDED\nLANCIUM LLC \u00a7\n \u00a7\n Defendant.\n \u00a7\n CONFIDENTIALITY AGREEMENT FOR\n EXPERT, CONSULTANT OR EMPLOYEES OF\n ANY PARTY\n\n I , under penalty of perjury, 28 U.S.C. \u00a7 1746, that:\n\n 1. Information, including documents and things, designated as\n\u201cConfidential Information\u201d or \u201cHighly Confidential Information,\u201d as defined in the Protective\nOrder entered in the above-captioned action (\u201cProtective Order\u201d), is being provided to me\npursuant to the terms and restrictions of the Protective Order.\n\n 2. I have been given a copy of and have read the Protective Order.\n\n 3. I am familiar with the terms of the Protective Order and I agree to comply with\nand to be bound by its terms.\n\n 4. I submit to the jurisdiction of the United States District Court for the\nSouthern District of Texas for enforcement of the Protective Order.\nPatent Protective Order\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 13 of 16\n\n\n\n 5. I agree not to use any \u201cConfidential Information\u201d or \u201cHighly Confidential\nInformation\u201d disclosed to me pursuant to the Protective Order except for purposes of the above-\ncaptioned litigation and not to disclose any of this information to persons other than those\nspecifically authorized by the Protective Order, without the express written consent of the\nparty who designated the information as confidential or by order of the presiding judge.\n\n 6. I also agree to notify any stenographic, clerical or technical personnel who\nare required to assist me of the terms of this Protective Order and of its binding effect on them\nand me.\n\n 7. I understand that I am to retain all documents or materials designated as or\n\n\n\n\nPatent Protective Order\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 14 of 16\n\n\n\n\ncontaining \u201cConfidential Information\u201d or \u201cHighly Confidential Information\u201d in a secure\nmanner, and that all such documents and materials are to remain in my personal custody until\nthe completion of my assigned duties in this matter, whereupon all such documents and\nmaterials, including all copies thereof, and any writings prepared by me containing any\n\u201cConfidential Information\u201d or \u201cHighly Confidential Information\u201d are to be returned to counsel\nwho provided me with such documents and materials.\n\n\nSigned at , , this , day of , 20 .\n\n\n Signature\n\n\n\n\nPatent Protective Order\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 15 of 16\n\n\n\n\n Exhibit B\n\n IN THE UNITED STATES DISTRICT\n COURT FOR THE SOUTHERN DISTRICT\n OF TEXAS HOUSTON DIVISION\n\n _ DIVISION\n [PARTY NAME] \u00a7\n \u00a7\n Plaintiff,\n \u00a7\n \u00a7\n versus \u00a7 Civil Action No.\n \u00a7\n [PARTY NAME] \u00a7\n \u00a7\n Defendant.\n \u00a7\n\nOBM, INC. \u00a7\n \u00a7\n Plaintiff,\n \u00a7\n \u00a7\nversus \u00a7 Civil Action No. 4:23-cv-01798\n \u00a7\n JURY TRIAL DEMANDED\nLANCIUM LLC \u00a7\n \u00a7\n Defendant.\n \u00a7\n\n CONFIDENTIALITY AGREEMENT FOR THIRD-PARTY VENDORS\n\n I , under penalty of perjury, 28 U.S.C. \u00a7 1746, that:\n\n 1. Information, including documents and things, designated as\n\u201cConfidential Information\u201d or \u201cHighly Confidential Information\u201d as defined in the Protective\nOrder entered in the above-captioned action (\u201cProtective Order\u201d), is being provided to me\npursuant to the terms and restrictions of the Protective Order.\n\n 2. I have been given a copy of and have read the Protective Order.\n\n 3. I am familiar with the terms of the Protective Order and I agree to comply with\nand to be bound by its terms.\n\n 4. I submit to the jurisdiction of the United States District Court for the\nSouthern District of Texas for enforcement of the Protective Order.\n\n 5. I agree not to use any Confidential Information or Highly Confidential\nInformation disclosed to me pursuant to the Protective Order except for purposes of the above-\ncaptioned\nPatent litigation\n Protective Order and not to disclose any of this information to persons other than those\n\f Case 4:23-cv-01798 Document 23-4 Filed on 08/15/23 in TXSD Page 16 of 16\n\n\n\nspecifically authorized by the Protective Order, without the express written consent of the party\nwho designated the information as confidential or by order of the presiding judge.\n\nSigned at , , this , day of , 20 .\n\n\n\n\n Signature\n\n\n\n\nPatent Protective Order\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:18.897275-08:00","document_number":"23","attachment_number":4,"pacer_doc_id":"179043308575","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit D - Protective Order Redline","acms_document_guid":""}],"date_created":"2023-08-15T13:32:35.749360-07:00","date_modified":"2025-01-22T07:03:24.599022-08:00","date_filed":"2023-08-15","time_filed":"14:35:23","entry_number":23,"recap_sequence_number":"2023-08-15.001","pacer_sequence_number":62,"description":"JOINT DISCOVERY/CASE MANAGEMENT PLAN by OBM, Inc., filed. (Attachments: # 1 Exhibit A - Proposed Scheduling Order, # 2 Exhibit B - Proposed Protective Order, # 3 Exhibit C - Supplemental Source Code Protective Order, # 4 Exhibit D - Protective Order Redline)(Miller, Rodney) (Entered: 08/15/2023)","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/356478302/","id":356478302,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/363014285/","id":363014285,"tags":[],"absolute_url":"/docket/67396788/22/obm-inc-v-lancium-llc/","date_created":"2023-07-07T18:32:48.305560-07:00","date_modified":"2025-01-22T07:03:24.585660-08:00","sha1":"","page_count":null,"file_size":null,"filepath_local":null,"filepath_ia":"","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"","ocr_status":null,"date_upload":null,"document_number":"22","attachment_number":null,"pacer_doc_id":"179043085360","is_available":false,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Sealed Exhibits","acms_document_guid":""}],"date_created":"2023-07-07T18:32:48.300059-07:00","date_modified":"2025-01-22T07:03:24.574171-08:00","date_filed":"2023-07-07","time_filed":"19:30:48","entry_number":22,"recap_sequence_number":"2023-07-07.002","pacer_sequence_number":59,"description":"SEALED EXHIBITS re: 21 Reply in Support of Motion by Lancium LLC, filed. (Attachments: # 1 Exhibit 20, # 2 Exhibit 25) (Valenzuela, Daniel) (Entered: 07/07/2023)","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/356460244/","id":356460244,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/362994145/","id":362994145,"tags":[],"absolute_url":"/docket/67396788/21/obm-inc-v-lancium-llc/","date_created":"2023-07-07T17:30:01.840777-07:00","date_modified":"2025-01-22T07:03:24.523994-08:00","sha1":"6c03ef35a57d9db8623f76f20ba4a1f14256f758","page_count":16,"file_size":346457,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.21.0.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.21.0.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 1 of 16\n\n\n\n\n IN THE UNITED STATES DISTRICT COURT\n FOR THE SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\nOBM, INC., \u00a7\n \u00a7\n Plaintiff, \u00a7\n \u00a7 CIVIL ACTION NO. 4:23-cv-01798\nv. \u00a7\n \u00a7 JURY TRIAL DEMANDED\nLANCIUM LLC, \u00a7\n \u00a7\n Defendant. \u00a7\n \u00a7\n\n\nDEFENDANT LANCIUM LLC\u2019S REPLY IN SUPPORT OF ITS MOTION TO DISMISS\n PLAINTIFF\u2019S COMPLAINT FOR LACK OF SUBJECT MATTER/DECLARATORY\n JUDGMENT JURISDICTION\n\f Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 2 of 16\n\n\n\n\n TABLE OF CONTENTS\n\nI. OBM CANNOT AND DOES NOT EXPLAIN WHY THE FACTS OF THIS\n CASE OBJECTIVELY SUPPORT DJ JURISDICTION..............................................1\n\n A. Lancium\u2019s Letter Does Not Support Jurisdiction, Alone or in Combination ......... 2\n\n B. Lancium\u2019s Actual Conversations with OBM Do Not Support DJ\n Jurisdiction .............................................................................................................. 3\n\n C. Lancium\u2019s Purported Statements to Others Do Not Support DJ Jurisdiction......... 4\n\n D. Lancium\u2019s Litigation History Does Not Support DJ Jurisdiction ........................... 5\n\nII. THE CONTEMPORANEOUS EVIDENCE HERE CANNOT SUPPORT AN\n OBJECTIVELY REASONABLE BASIS FOR JURISDICTION ................................7\n\n A. OBM, Not Lancium, Was the Cause of Any Delay................................................ 7\n\n B. OBM Assured Lancium That it Was Not Using \u2013 and Had No Desire to Use\n \u2013 the Technology of Lancium\u2019s \u2019433 Patent, But Now Argues the Exact\n Opposite .................................................................................................................. 7\n\n C. Mr. Greenfield\u2019s Access to Foreman Software is Unrelated and Irrelevant ........... 8\n\n D. OBM\u2019s \u201cFruitless\u201d Argument Ignores that The Parties Were Not Discussing\n Any License Agreement or Settlement Agreement ................................................ 8\n\nIII. ALTERNATIVELY, JURISDICTION SHOULD BE DENIED ON\n DISCRETIONARY GROUNDS.......................................................................................9\n\nIV. CONCLUSION AND PRAYER FOR RELIEF ............................................................10\n\n\n\n\n i\n\f Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 3 of 16\n\n\n\n\n Table of Authorities\n Page(s)\n\nCases\n\nABB Inc. v. Cooper Indus., LLC.,\n 635 F.3d 1345 (Fed. Cir. 2011)..................................................................................................2\n\nAllied Min. Prod., Inc. v. Osmi, Inc.,\n 870 F.3d 1337 (Fed. Cir. 2017)..............................................................................................3, 5\n\nArkema Inc. v. Honeywell Int\u2019l, Inc.,\n 706 F.3d 1351 (Fed. Cir. 2013)..................................................................................................2\n\nArris Grp., Inc. v. British Telecomms. PLC,\n 639 F.3d 1368 (Fed. Cir. 2011)..................................................................................................9\n\nBearBox LLC v. Lancium LLC,\n No. 1:21-cv-00534-GBW-CJB, Dkt. 1 (D. Del. Apr. 14, 2021) ................................................6\n\nBridgelux, Inc. v. Cree, Inc.,\n No. C 06-6495 PJH, 2007 WL 2022024 (N.D. Cal. July 9, 2007) ........................................4, 6\n\nCommc\u2019ns Test Design, Inc. v. Contec LLC,\n 367 F. Supp. 3d 350 (E.D. Pa. 2019), aff\u2019d 952 F.3d 1356 (Fed. Cir. 2020)...........................10\n\nCommc\u2019ns Test Design, Inc. v. Contec LLC\n 952 F.3d 1356 (Fed. Cir. 2020)................................................................................................10\n\nDanisco U.S. Inc. v. Novozymes A/S,\n 744 F.3d 1325 (Fed. Cir. 2014)..............................................................................................8, 9\n\nElement Six U.S. Corp. v. Novatek Inc.,\n CV 14-0071, 2014 WL 12586395 (S.D. Tex. June 9, 2014) .................................................2, 3\n\nHarman Int\u2019l Indus. v. Massachusetts Inst. Of Tech.,\n No. 1:05-cv-01481 (N.D. Ill. Aug. 15, 2003), Dkt. 23 ............................................................10\n\nHaskell Office LLC v. MooreCo, Inc.,\n No. 21-02533, 2022 WL 1592572 (E.D. Pa. May 19, 2022) .....................................................6\n\nHewlett Packard v Acceleron,\n 587 F.3d 1358 (Fed. Cir. 2009)..................................................................................................3\n\nInnovative Therapies, Inc. v. Kinetic Concepts, Inc.,\n 599 F.3d 1377 (Fed. Cir. 2010)........................................................................................1, 5, 10\n\nLancium LLC v. US Data Mining Group, Inc. d/b/a US Bitcoin et al.,\n 6:23-cv-00344-KC (W.D. Tex. 2023), Dkt. 1............................................................................5\n ii\n\f Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 4 of 16\n\n\n\n\nMagpul Indus., Corp. v. Blue Force Gear, Inc.,\n No. 4:14-CV-277, 2018 WL 11413885 (S.D. Ga. Nov. 16, 2018) ...........................................5\n\nMicron Tech., Inc. v. Mosaid Techs., Inc.,\n 518 F.3d 897 (Fed. Cir. 2008)....................................................................................................6\n\nMicrosoft Corp. v. DataTern, Inc.,\n 755 F.3d 899, 110 U.S.P.Q.2d 1561 (Fed. Cir. 2014) ...............................................................5\n\nMicrosoft Corp. v. SynKloud Techs., LLC,\n 484 F. Supp. 3d 171 (D. Del. 2020) ...........................................................................................2\n\nPharmaNet, Inc. v. DataSci Liab. Co.,\n No. 3:08-cv-02965-GEB-DEA, 2009 WL 396180 (D.N.J. Feb. 17, 2009) ...........................6, 7\n\nIn re Qualcomm Litigation,\n 2017 WL 5985598 (S.D. Cal. 2017) ..........................................................................................1\n\nShell Oil Co. v. Amoco Corp.,\n 970 F.2d 885 (Fed. Cir. 1992)....................................................................................................3\n\nVietnam Land v. Tran,\n No. H-14-957, 2016 WL 1085101 (S.D. Tex. Feb. 18, 2016) ...................................................2\n\nStatutes\n\nDeclaratory Judgment Act .........................................................................................................3, 10\n\n\n\n\n iii\n\f Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 5 of 16\n\n\n\n\n Lancium does not seek any exception to, or new interpretation of, the requirements for\n\nsubject matter jurisdiction. The rule is already an objective standard, and based on the actual,\n\nadmissible, contemporaneous evidence in this case, OBM\u2019s position does not reasonably and\n\nobjectively meet the standard under the totality of the circumstances. It is telling that OBM wants\n\nto disregard its contemporaneous statements in blanket fashion as \u201cirrelevant\u201d and instead focus\n\non unsupported attorney argument. OBM does not, nor can it, explain the record evidence in a way\n\nconsistent with its current, litigation-inspired, attorney narrative. OBM\u2019s contemporaneous\n\nstatements are flatly relevant both to the objective test, as well as to discretionary denial.\n\n Lancium does not contend that OBM must \u201cbecome belligerent or cower in fear\u201d in order\n\nto establish DJ jurisdiction. Dkt. 20 (\u201cOpp.\u201d) at 20, n.3. Rather, extensive case law supports\n\nprecluding jurisdiction in the face of documented evidence of a DJ plaintiff continuing to lead a\n\npotential partner down the \u201cprimrose path\u201d of a lucrative collaboration while preparing to file a DJ\n\ncomplaint. OBM, not Lancium, was acting duplicitous. OBM\u2019s actions were objectively\n\nunreasonable and support discretionary denial. OBM\u2019s Complaint should be dismissed.\n\nI. OBM CANNOT AND DOES NOT EXPLAIN WHY THE FACTS OF THIS CASE\n OBJECTIVELY SUPPORT DJ JURISDICTION\n\n OBM criticizes Lancium for purportedly evaluating categorical activities separately rather\n\nthan as a totality of circumstances. Opp. at 1, 13. Yet, Lancium does address the totality of the\n\ncircumstances and also necessarily illustrates how the case law rejects reliance on stronger facts\n\nin each category. The case law shows that even where there are combinations of factors,\n\njurisdiction is not found where the specific evidence is insufficient. See, e.g., Innovative Therapies,\n\nInc. v. Kinetic Concepts, Inc., 599 F.3d 1377, 1382 (Fed. Cir. 2010) (dismissal despite prior\n\nlitigation combined with statements that patentee would sue if plaintiff sold a certain device); In\n\nre Qualcomm Litigation, 2017 WL 5985598, **15-19 (S.D. Cal. 2017) (dismissal despite licensing\n\n\n 1\n\f Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 6 of 16\n\n\n\n\ncommunications plus prior litigation against others); Microsoft Corp. v. SynKloud Techs., LLC,\n\n484 F. Supp. 3d 171, 183 (D. Del. 2020) (licensing negotiations and litigation against Microsoft\u2019s\n\ncompetitors insufficient); Element Six U.S. Corp. v. Novatek Inc., CV 14-0071, 2014 WL\n\n12586395, at **4-5 (S.D. Tex. June 9, 2014) (dismissal despite alleged threatening\n\ncommunications and distinguishing cases with offers to license, detailed infringement analysis,\n\nimposed deadlines, and litigation). Under the totality of circumstances, Lancium\u2019s actions do not\n\ncompare to the activities in OBM\u2019s cited authority because Lancium sought a business partnership\n\nand never (1) demanded anything, (2) set any deadlines, and (3) warned of a potential suit. OBM\u2019s\n\nauthority involves significantly more aggressive, more threatening, and more explicit assertions.\n\nA. Lancium\u2019s Letter Does Not Support Jurisdiction, Alone or in Combination\n\n OBM ignores the five key distinctions presented in Lancium\u2019s brief about the actual\n\ncontent of its letter. Dkt. 17 (\u201cMot.\u201d) at 16-17. As OBM offers no argument to rebut Lancium\u2019s\n\narguments, the conclusions remain unrebutted and support the lack of any actual controversy. See,\n\ne.g., Vietnam Land v. Tran, No. H-14-957, 2016 WL 1085101, at *4-5 (S.D. Tex. Feb. 18, 2016).\n\nOBM does argue that a letter plus \u201cmore\u201d can support DJ jurisdiction (Opp. at 19), but fails to\n\naddress how Lancium\u2019s letter differs significantly from letters supporting DJ jurisdiction. 1 OBM\n\nrelies on ABB Inc. v. Cooper Indus., LLC., 635 F.3d 1345, 1357 (Fed. Cir. 2011), Opp. at 11, where\n\na letter stated that the plaintiffs had no rights under a license and an intent to \u201cvigorously\u201d enforce\n\na patent. ABB Inc., 635 F.3d at 1348-49. Lancium made no such statements. Mot. at 7. OBM also\n\nrelies on Arkema Inc. v. Honeywell Int\u2019l, Inc., 706 F.3d 1351, 1357 (Fed. Cir. 2013). Opp. at 19.\n\nArkema, however, involved the patentee accusing the plaintiff of infringing a related patent in prior\n\nlitigation and the patentee refusing to sign a covenant not to sue. Id. at 1354-55, 1358.\n\n\n1\n As discussed throughout Lancium\u2019s motion and this reply, the rest of the parties\u2019 interactions\ndid not supply anything \u201cmore\u201d to convert a non-threatening letter into jurisdiction.\n 2\n\f Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 7 of 16\n\n\n\n\n OBM claims a \u201cspecific threat is not required for declaratory judgment jurisdiction\u201d (Opp.\n\nat 19), relying on Hewlett Packard v Acceleron, 587 F.3d 1358, 1363 (Fed. Cir. 2009). However,\n\nthis was not a blanket allowance for jurisdiction, and was grounded in specific facts not present\n\nhere, including a non-practicing entity that benefits through enforcement actions and an insistence\n\nto respond to licensing demands within two weeks. Id. at 1363-64. OBM argues that almost any\n\nletter plus \u201cmore\u201d confers jurisdiction, but courts reject this proposition. Patentees send letters for\n\nmultiple, non-litigation purposes, such as to bring awareness of their inventions and to allow others\n\nto otherwise respect the IP. See, e.g., Element Six, 2014 WL 12586395, at **4-5 (letter only had\n\npatent related information). Here, Lancium encouraged OBM to partner for mutual benefit while\n\nadvising OBM of existing IP. 2 Objectively, OBM\u2019s \u201cletter-plus-more\u201d argument is misplaced.\n\nB. Lancium\u2019s Actual Conversations with OBM Do Not Support DJ Jurisdiction\n\n Lancium never stated or alleged that OBM itself or its customers could be \u2013 much less\n\nwere \u2013 infringing any patent. No contemporaneous evidence supports any such statement, OBM\n\nprovides no corroborating evidence, and Lancium unequivocally denies any such threat. Rock\n\nDecl. \u00b6\u00b6 6-7, \u00b6 8; Cline Decl. \u00b6 4; Second Declaration of Ian Rock (\u201c2nd Rock Decl.\u201d) \u00b6 3.\n\n Tellingly, OBM attempts to now portray the November 17, 2022 meeting as some\n\nimportant change in the parties\u2019 relationship. It was not. OBM alleged that Lancium orally \u201cstated\n\nto OBM that use of Foreman could be infringing one or more of Lancium\u2019s patents.\u201d Dkt 1 \u00b6 22.\n\nOBM now goes further in its brief, without corroboration, that the threat was specific as to (still\n\n\n\n2\n OBM also points to its purported, unilateral decision to pause certain functionality (Opp. at 17),\nbut this ignores the contents of the letter. See Shell Oil Co. v. Amoco Corp., 970 F.2d 885, 889\n(Fed. Cir. 1992) (\u201c[t]he Declaratory Judgment Act was intended to protect threatened parties, not\nto drag a non-threatening patentee into court.\u201d); see also Allied Min. Prod., Inc. v. Osmi, Inc.,\n870 F.3d 1337, 1340 (Fed. Cir. 2017) (fear of future lost business because of infringement\nthreats against a customer was, by itself, insufficient to create standing for the manufacturer.)\n\n\n 3\n\f Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 8 of 16\n\n\n\n\nunnamed) customers. Opp. at 5. OBM\u2019s lawyer arguments go even further by eliminating the word\n\n\u201ccould\u201d and arguing \u201cLancium (1) accused OBM\u2019s customers of infringing its patents.\u201d Opp. at 1.\n\nOBM now alleges that \u201cMr. Lawrence was immediately concerned and felt threatened\u201d and \u201cafter\n\nMr. Rock\u2019s threat, Mr. Lawrence was, understandably, concerned about being sued.\u201d Opp. at 5.\n\n In fact, no such threat of any kind was made. Rock Decl. \u00b6 8; Cline Decl. \u00b6 4; 2nd Rock\n\nDecl. \u00b6 3. Mr. Lawrence\u2019s contemporaneous emails express no such concern and instead reflect a\n\nnon-threatening meeting about normal business discussions. After that meeting, Lancium\n\nimmediately followed-up to continue the business discussions. Ex. 1. Mr. Lawrence then texted\n\nLancium apologizing for his delay due to \u201cfamily stuff since Thanksgiving,\u201d 2nd Rock. Decl. \u00b6 4;\n\nEx. 19, and then emailed a month later, again apologizing for his delay:\n\n We are very comfortable exploring with you the basics of a potential business\n partnership without [an NDA]. \u2026 Once we sense we\u2019re seeing customers,\n products and market opportunities the same way, then it makes total sense to enter\n into an NDA with strong mutual protections. \u2026 Thanks so much for the patience\n\nEx. 4. This contemporaneous, written evidence objectively supports that OBM was not, in fact,\n\nconcerned about any non-existent threat or accusation.\n\nC. Lancium\u2019s Purported Statements to Others Do Not Support DJ Jurisdiction\n\n OBM references purported Lancium \u201cthreats\u201d to unnamed companies. See, e.g., Opp. at\n\n17-18; Dkt. 1 \u00b6 20. Yet, OBM does not identify these companies or provide any supporting\n\nevidence. It relies only on inadmissible hearsay in a self-interested statement by the CEO: \u201cI am\n\nalso aware that Lancium has aggressively approached others in the industry, asking them to license\n\nthe \u2019433 Patent and other Lancium patents.\u201d Dkt. 20-2 \u00b6 30. Hearsay \u201ccannot be admitted into\n\nevidence to support [OBM\u2019s] claim that an \u2018actual controversy\u2019 existed.\u201d Bridgelux, Inc. v. Cree,\n\nInc., No. C 06-6495 PJH, 2007 WL 2022024, at *9 (N.D. Cal. July 9, 2007) (granting motion to\n\ndismiss). Further, this could be Layer1 and US Bitcoin, which, as discussed below, are very\n\n\n 4\n\f Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 9 of 16\n\n\n\n\ndifferently situated than OBM. OBM had a chance to support these allegations and chose not to.\n\nD. Lancium\u2019s Litigation History Does Not Support DJ Jurisdiction\n\n Lancium\u2019s two prior suits against bitcoin miners do not support jurisdiction. OBM does\n\nnot address the key distinctions and case law identified in Lancium\u2019s prior brief, but instead relies\n\non a defensive statement made by Lancium when Lancium was sued. This fails to support a finding\n\nof jurisdiction. Innovative, 599 F.3d at 1382; Allied Min. Prod., Inc., 870 F.3d at 1340.\n\n Lancium identified clear case law recognizing that where a DJ defendant\u2019s relationship\n\nwith the plaintiff is distinguishable from that with parties it has sued, this weakens any relevance\n\nof those other cases. Lancium then detailed how letters, course of interaction, and the parties\u2019\n\nbusiness, differ in key ways in this case. Mot. at 21-23, citing Magpul Indus., Corp. v. Blue Force\n\nGear, Inc., No. 4:14-CV-277, 2018 WL 11413885, at *10 (S.D. Ga. Nov. 16, 2018); Microsoft\n\nCorp. v. DataTern, Inc., 755 F.3d 899, 903-07, 110 U.S.P.Q.2d 1561 (Fed. Cir. 2014). OBM\u2019s\n\nonly engagement with this argument is to claim (without explanation) that Lancium and OBM are\n\n\u201cdirect competitors.\u201d Opp. at 24. In actuality, the parties\u2019 business is complementary. Lancium\n\noffers power management/CLR software and OBM offers miner management software. 3 OBM\n\nhad significant value to Lancium as a software partner, whereas Layer1 and US Bitcoin did not. 4\n\n Lancium also detailed how the present case is like Innovative, where prior litigation history\n\ndid not confer jurisdiction in view of defendant\u2019s lack of threats against the DJ plaintiff. Mot. at\n\n21, citing Innovative, 599 F.3d at 1381-1382. In response, OBM claims Lancium has made\n\n\n3\n Even if OBM recently started to develop CLR functionality, by OBM\u2019s own narrative this\nstarted long after Lancium reached out in 2021, making clear its intent of a business partnership.\nAnd, OBM discusses testing of its software with purported customers it will not even disclose\u2014\nfar from a directly competitive commercial product.\n4\n In its Opposition, OBM suggests that Lancium sued multiple companies in the US Bitcoin case.\nOpp. at 8-9. To be clear, Lancium only sued US Bitcoin and two of its subsidiaries, subject to the\nsame single notice letter. Lancium LLC v. US Data Mining Group, Inc. d/b/a US Bitcoin et al.,\n6:23-cv-00344-KC (W.D. Tex. 2023), Dkt. 1 \u00b6\u00b6 1-5.\n 5\n\f Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 10 of 16\n\n\n\n\n\u201caffirmative acts directed towards OBM,\u201d identifying litigation against others and \u201cmultiple\n\nthreats about how OBM\u2019s Foreman software may infringe the \u2019433 Patent.\u201d Lancium\u2019s litigation\n\nagainst others is distinguishable from its interactions with OBM and the purported \u201cthreats\u201d against\n\nOBM were either not made or statements that objectively cannot be viewed as such.\n\n OBM also cites a Lancium press release stating it \u201cintends to continue aggressively\n\ndefending its intellectual property\u201d as though it shows \u201cintent to continue an aggressive litigation\n\nstrategy.\u201d Opp. at 23. But, Lancium was the defendant in that inventorship case, placing critical\n\ncontext to its statement that it will continue \u201cdefending its intellectual property.\u201d BearBox LLC v.\n\nLancium LLC, No. 1:21-cv-00534-GBW-CJB, Dkt. 1 (D. Del. Apr. 14, 2021). If OBM truly\n\nviewed Lancium\u2019s statement that they would continue fending off attacks as a threat to attack\n\nothers, this would be as unreasonable as interpreting Mr. McFarland\u2019s statement of wanting to\n\navoid litigation as a desire to launch it. Unreasonable interpretations do not support jurisdiction.\n\nSee Haskell Office LLC v. MooreCo, Inc., No. 21-02533, 2022 WL 1592572, at **4-6 (E.D. Pa.\n\nMay 19, 2022); see also, e.g., Bridgelux, Inc. v. Cree, Inc., No. C 06-6495 PJH, 2007 WL 2022024,\n\nat *9 (N.D. Cal. July 9, 2007) (\u201cThe fact that [defendant] stated publicly in press releases [] that it\n\nwould defend its patents is unremarkable. The same could be said of many patent-holders.\u201d) OBM\n\ncites Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897, 902 (Fed. Cir. 2008), claiming in\n\nMicron, \u201cthe patentee never made any specific threats to the plaintiff.\u201d Opp. at 23. In actuality,\n\nMosaid sent three \u201cthreatening letters\u201d to Micron. Micron, 518 F.3d at 901. Mosaid\u2019s public\n\nstatements were also readily distinguishable from Lancium\u2019s, as they stated an intent to force all\n\nmanufacturers (including Micron) to license their patents (id. at 899), while Lancium merely stated\n\nan intent to defend itself if attacked. 5 In sum, the two prior suits against bitcoin miners differently\n\n\n\n5\n OBM also cites PharmaNet, Inc. v. DataSci Liab. Co. Opp. at 23. Yet there, the patentee was a\n\n 6\n\f Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 11 of 16\n\n\n\n\nsituated from software provider OBM, and a defensive press release, do not support jurisdiction.\n\nII. THE CONTEMPORANEOUS EVIDENCE HERE CANNOT SUPPORT AN\n OBJECTIVELY REASONABLE BASIS FOR JURISDICTION\n\n The lack of any objective, reasonable concern or apprehension by OBM is further shown\n\nby OBM\u2019s mischaracterization of the evidence and focus on irrelevant arguments.\n\nA. OBM, Not Lancium, Was the Cause of Any Delay\n\n OBM\u2019s legal brief repeatedly asserts that Lancium \u201cfor months \u2026 refused to provide any\n\nbusiness terms to OBM.\u201d Opp. at 1. See also, Opp. at 6, 7. But it was OBM\u2019s delay that sidelined\n\nthe parties\u2019 discussions between late November 2022 into early 2023. Rock Decl. \u00b6\u00b6 6-7, 9-11;\n\nDeclaration of Brandon Greenfield (\u201cGreenfield Decl.\u201d) \u00b6 6; Exs. 2-6, 19. Then, once Mr.\n\nLawrence re-surfaced after the holidays, it was OBM\u2019s idea to not enter into a comprehensive\n\nNDA that would allow Lancium to communicate detailed, confidential business ideas with OBM,\n\nsuggesting instead that the parties focus on learning about each other\u2019s views and goals without\n\nsharing any confidential information. Ex. 4 at 1-2 (Mr. Lawrence\u2019s Jan. 5, 2023, at 7:29 PM email).\n\nOnce Lancium had gone through this process, at OBM\u2019s suggestion, and was preparing to lay out\n\nthe details of the plan, there was no NDA in place to protect Lancium\u2019s business ideas, which\n\nfurther limited what Lancium could share. McFarland Decl. \u00b6 10; Ex. 14. Contrary to OBM\u2019\n\nlitigation position, any delay in discussions was OBM\u2019s fault, and any concern of apprehension\n\nthat OBM now claims in the face of such delay is objectively unreasonable.\n\nB. OBM Assured Lancium That it Was Not Using \u2013 and Had No Desire to Use \u2013 the\n Technology of Lancium\u2019s \u2019433 Patent, But Now Argues the Exact Opposite\n\n\n\nnon-practicing entity, filed five lawsuits against similarly situated companies, expressly sought a\nlicense by a deadline, and announced \u201cseveral new patent infringement lawsuits are on the\nhorizon.\u201d PharmaNet, 2009 WL 396180 at **1, 8.\n\n\n\n 7\n\f Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 12 of 16\n\n\n\n\n OBM\u2019s legal brief contradicts contemporaneous, written evidence by claiming that\n\nLancium\u2019s acts left OBM with no choice but to \u201cdisable[] the CLR compliance functionality in its\n\nForeman software.\u201d Opp. at 2. See also id. at 5, 8, 13, 16, 17. This is the exact opposite of what\n\nOBM told Lancium: \u201cthe Forman Software does not practice any claim of the \u2019433 Patent\u201d and\n\n\u201cOBM has no interest in implementing the technology claimed in the \u2019433 patent in its software\n\noffering.\u201d Dkt. 1-3 at 1, 2. If these statements in OBM\u2019s letter were factually correct and made in\n\ngood faith, then there was no objectively reasonable basis to file a DJ suit 14 days later.\n\nC. Mr. Greenfield\u2019s Access to Foreman Software is Unrelated and Irrelevant\n\n OBM also points to Mr. Greenfield\u2019s access to Foreman software. Opp. at 21-22. Mr.\n\nGreenfield\u2019s access was provided at a single, Lancium-owned facility, at which no CLR (or any\n\npower management functionality) was performed using OBM\u2019s Foreman software. Greenfield\n\nDecl. \u00b6\u00b6 3, 7-8. Mr. Greenfield\u2019s access to Foreman had nothing to do with CLR (or any power\n\nmanagement) technology, IP research, or anything else relevant to this motion. Id. \u00b6\u00b6 1, 7-8. Mr.\n\nGreenfield had no access to Foreman source code or a host machine, and he has no understanding\n\nof what kinds of power management capability, if any, is present in Foreman. Id. \u00b6 8. 6\n\nD. OBM\u2019s \u201cFruitless\u201d Argument Ignores that The Parties Were Not Discussing Any\n License Agreement or Settlement Agreement\n\n The parties were in the midst of progressing business discussions at the time of suit. OBM\n\nargues it was nevertheless entitled to file suit because it unilaterally decided that \u201csettlement is\n\nimprobable\u201d and further discussions were \u201cfruitless,\u201d without ever communicating that. Opp. at\n\n20-21. But OBM\u2019s case law is not on point. Danisco involved settlement of a \u201cdefinite and concrete\n\n\n6\n OBM also notes that Mr. Greenfield was included on some emails, but OBM never identifies\nany relevancy to this motion. Mr. Greenfield was engaged in a parallel conversation about\nLancium\u2019s routine need to understand and audit the security of the OBM software used at\nLancium\u2019s facility. Greenfield Decl. \u00b6\u00b6 4-6. That conversation is irrelevant, other than to show\nfurther cooperation and an existing business relationship between the parties.\n 8\n\f Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 13 of 16\n\n\n\n\npatent dispute\u201d where the parties had \u201cplainly been at war over patents.\u201d Danisco, 744 F.3d at\n\n1331-32. Arris Grp. involved failed licensing negotiations in the face of \u201cdirect and repetitive\u201d\n\ninfringement, licensing communications, and a 118-page infringement presentation. Arris Grp.,\n\nInc., 639 F.3d at 1377-79. Here, OBM and Lancium were not discussing any settlement or license\n\nterms, but were instead discussing potential collaboration. If that effort stalled, the objectively-\n\nreasonable result would simply be no business agreement, not a race to the court house.\n\n OBM\u2019s \u201cfruitless\u201d argument also seriously mischaracterizes the actual proposal being\n\ndiscussed and OBM\u2019s contemporaneous reaction to it. The proposal was arguably a windfall to\n\nOBM, with OBM keeping 100% of its increased revenue from expanded adoption of its Foreman\n\nminer management, while also gaining 10% of Lancium\u2019s revenue from its more lucrative\n\nLancium Smart Response\u00ae offering. 2nd McFarland Decl. \u00b6 7. The proposal was not exclusive and\n\ndid not stop OBM from doing anything with whomever it wanted. Id. \u00b6\u00b6 8-9; 2nd McFarland Decl.\n\n\u00b6 8; Ex. 20. The proposal called for OBM and Lancium to agree on who they would jointly\n\napproach, and the revenue split, which favored OBM, would only apply to those customers. Id. At\n\nthe time, OBM expressed interest in this proposal. McFarland Decl. \u00b6 8. To the extent OBM\u2019s\n\ncurrent interpretation is genuine, it is misguided and objectively unreasonable.\n\nIII. ALTERNATIVELY, JURISDICTION SHOULD BE DENIED ON\n DISCRETIONARY GROUNDS\n\n Lancium articulated two clear bases under which the court should grant a discretionary\n\ndenial: first, OBM\u2019s frustration of ongoing business negotiations, and second, OBM\u2019s clear\n\nattempt to use the case to get customers. OBM fails to effectively rebut either.\n\n First, Lancium cited clear case law denying jurisdiction on discretionary grounds where\n\nthe plaintiff\u2019s suit frustrated ongoing, good faith negotiations by filing suit while still promising\n\nfuture conversations. Mot. at 23-25. OBM does not address these cases, instead merely citing cases\n\n\n 9\n\f Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 14 of 16\n\n\n\n\nabout the general purpose of the declaratory judgment act and stating the parties were in\n\ndiscussions for years and that OBM (purportedly) \u201cdisabled certain functionality.\u201d Opp. at 24. The\n\ncase law establishes discretionary denials are proper where a DJ plaintiff leads a defendant on with\n\nempty promises of future negotiations. Commc\u2019ns Test Design, Inc. v. Contec LLC, 367 F. Supp.\n\n3d 350, 359 (E.D. Pa. 2019), aff\u2019d 952 F.3d 1356 (Fed. Cir. 2020); Innovative, 599 F.3d at 1384;\n\nHarman Int\u2019l Indus. v. Massachusetts Inst. Of Tech., No. 1:05-cv-01481 (N.D. Ill. Aug. 15, 2003),\n\nDkt. 23. Here, Mr. Lawrence\u2019s \u201cTaylor Swift\u201d emails the weekend before suit are particularly\n\nillustrative for their tone and promise of further deliverables and discussions. As the district court\n\nin Innovative reasoned (quoted by the Federal Circuit in its decision), \u201cwhere (as here) a\n\ndeclaratory judgment plaintiff was not willing to make its concerns of record pre-suit, I am not\n\nconvinced that the objectives of the Declaratory Judgment Act are being served by allowing such\n\na plaintiff to plead uncertainty and delay.\u201d Innovative, 599 F.3d at 1384. OBM similarly expresses\n\nits purported concerns for the first time in its pleadings. Allowing the complaint to proceed rewards\n\nthem for preempting discussions that could (and should) have occurred pre-suit.\n\n Second, Lancium identified how OBM\u2019s express purpose in filing suit was not to defend\n\nitself from an impending threat, but arguably to be viewed as a champion to the industry (for\n\ncommercial benefit). Mot. at 25. OBM does not provide any alternative explanation for its\n\nstatements and does not address Lancium\u2019s arguments that the OBM press release reveals an\n\nimproper purpose. \u201c[T]he purpose of the Declaratory Judgment Act ... in patent cases is to provide\n\nthe allegedly infringing party relief from uncertainty and delay regarding its legal rights,\u201d\n\nCommc\u2019ns Test Design v. Contec, LLC, 952 F.3d 1356, 1362 (Fed. Cir. 2020), and discretionary\n\ndenial is plainly appropriate where suits do not serve the Act\u2019s purposes.\n\nIV. CONCLUSION AND PRAYER FOR RELIEF\n\n For the foregoing reasons, the Court should grant defendant\u2019s motion to dismiss.\n 10\n\fCase 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 15 of 16\n\n\n\n\n Respectfully submitted,\n\n BARNES & THORNBURG, LLP\n\n By: /s/ Daniel A. Valenzuela\n Daniel A. Valenzuela (Texas Bar No. 24067918)\n Attorney-in-Charge\n Barnes & Thornburg LLP\n 2121 N. Pearl Street, Suite 700\n Dallas, Texas 75201\n Phone: (214) 258-4200\n Fax: (214) 258-4199\n dvalenzuela@btlaw.com\n\n Craig Leavell\n IL State Bar No. 6256260\n Craig.Leavell@btlaw.com\n\n\n Bruce Ratain\n IL State Bar No. 6324542\n Bruce.Ratain@btlaw.com\n One N. Wacker Drive\n Suite 4400\n Chicago, Illinois 60606\n Telephone: 312.357.1313\n Facsimile: 312.759.5646\n\n ATTORNEYS FOR DEFENDANT LANCIUM LLC\n\n\n\n\n 11\n\f Case 4:23-cv-01798 Document 21 Filed on 07/07/23 in TXSD Page 16 of 16\n\n\n\n\n CERTIFICATE OF SERVICE\n\n I hereby certify that on July 7, 2023, I electronically filed DEFENDANT\u2019S REPLY IN\n\nSUPPORT OF MOTION TO DISMISS PLAINTIFF\u2019S COMPLAINT FOR LACK OF\n\nSUBJECT MATTER/DECLARATORY JUDGMENT JURISDICTION with the Clerk of the\n\nCourt using the CM/ECF system, which will automatically send e-mail notification of such filing\n\nto the following:\n\n\n\n Via ECF\n Rodney R. Miller\n Preston H. Heard\n Womble Bond Dickinson (US) LLP\n 271 17th Street, NW\n Suite 2400\n Atlanta, GA 30363\n Rodney.miller@wbd-us.com\n\n\n\n /s/ Daniel A. Valenzuela\n Daniel A. Valenzuela\n\n\n\n\n 12\n\f","ocr_status":2,"date_upload":"2023-12-05T22:20:40.251973-08:00","document_number":"21","attachment_number":null,"pacer_doc_id":"179043085327","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Reply in Support of Motion","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999433/","id":379999433,"tags":[],"absolute_url":"/docket/67396788/21/1/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.672292-08:00","date_modified":"2025-01-22T07:03:24.546214-08:00","sha1":"611d3a813978d16a3748dba61d031e18d97c1439","page_count":39,"file_size":1410577,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.21.1.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.21.1.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 1 of 39\n\n\n\n\n IN THE UNITED STATES DISTRICT COURT\n FOR THE SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\nOBM, INC., \u00a7\n \u00a7\n Plaintiff, \u00a7\n \u00a7 CIVIL ACTION NO. 4:23-cv-01798\nv. \u00a7\n \u00a7 JURY TRIAL DEMANDED\nLANCIUM LLC, \u00a7\n \u00a7\n Defendant. \u00a7\n \u00a7\n\n APPENDIX TO DEFENDANT\u2019S REPLY IN SUPPORT OF\n MOTION TO DISMISS PLAINTIFF\u2019S COMPLAINT\n\n\n Defendant, Lancium LLC, in support of its Motion to Dismiss Plaintiff\u2019s Complaint,\n\nsubmits the following declarations, exhibits and non-published documents:\n\nSecond Declaration of Ian Rock ................................................................................................... 4\n\nSecond Declaration of Scott McFarland ....................................................................................... 8\n\nDeclaration of Brandon Greenfield ............................................................................................... 14\n\nExhibit 19: Text Message Communications ................................................................................. 18\n\nExhibit 20: Annotated Lancium Partnership Slide (public and sealed versions).......................... 24\n\nExhibit 21: Electronic Communications ....................................................................................... 26\n\nExhibit 22: Electronic Communications ....................................................................................... 29\n\nExhibit 23: Electronic Communications ....................................................................................... 33\n\nExhibit 24: Electronic Communications ....................................................................................... 36\n\nExhibit 25: OBM SOC2 Report (filed under seal)........................................................................ 39\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 2 of 39\n\n\n\n\n Respectfully submitted,\n\n BARNES & THORNBURG, LLP\n\n By: /s/ Daniel A. Valenzuela\n Daniel A. Valenzuela (Texas Bar No. 24067918)\n Attorney-in-Charge\n Barnes & Thornburg LLP\n 2121 N. Pearl Street, Suite 700\n Dallas, Texas 75201\n Phone: (214) 258-4200\n Fax: (214) 258-4199\n dvalenzuela@btlaw.com\n\n Craig Leavell\n IL State Bar No. 6256260\n Craig.Leavell@btlaw.com\n\n Bruce Ratain\n IL State Bar No. 6324542\n Bruce.Ratain@btlaw.com\n One N. Wacker Drive\n Suite 4400\n Chicago, Illinois 60606\n Telephone: 312.357.1313\n Facsimile: 312.759.5646\n\n ATTORNEYS FOR DEFENDANT LANCIUM LLC\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 3 of 39\n\n\n\n\n CERTIFICATE OF SERVICE\n\n I hereby certify that on July 7, 2023, I electronically filed DEFENDANT\u2019S REPLY IN\n\nSUPPORT OF MOTION TO DISMISS PLAINTIFF\u2019S COMPLAINT with the Clerk of the\n\nCourt using the CM/ECF system, which will automatically send e-mail notification of such filing\n\nto the following:\n\n\n\n Via ECF\n Rodney R. Miller\n Preston H. Heard\n Womble Bond Dickinson (US) LLP\n 271 17th Street, NW\n Suite 2400\n Atlanta, GA 30363\n Rodney.miller@wbd-us.com\n\n\n\n /s/ Daniel A. Valenzuela\n Daniel A. Valenzuela\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 4 of 39\n\n\n\n\n UNITED STATES DISTRICT COURT\n SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\n\nOBM, INC., )\n )\n Plaintiff, )\n )\n vs. ) 4:23-cv-1798\n )\nLANCIUM LLC, )\n )\n Defendant. )\n\n SECOND DECLARATION OF IAN ROCK IN SUPPORT OF\n DEFENDANT'S MOTION TO DISMISS\n I, Ian Rock, hereby declare as follows:\n\n 1. I presented a first declaration in this case on June 7th, 2023. I have reviewed\n\n OBM\u2019s response brief filed on June 30th, along with the declaration from\n\n Dan Lawrence. In this declaration, I reply to certain points in those\n\n documents.\n\n 2. In his declaration, Mr. Lawrence states that around the summer of 2022,\n\n Foreman began running \u201cin a customer\u2019s Fort Stockton, Texas facility\u201d and\n\n \u201cthis customer also works with Lancium.\u201d This seems to confuse the\n\n relationship: as I stated in my first declaration, the Fort Stockton site is a\n\n Lancium Clean Campus, owned by Lancium. Individual customers (like\n\n bitcoin miners) can locate there, and benefit from both operational\n\n management and power management, with power provided by clean energy\n\n co-located there. Lancium contracts with a company to run the day to day\n\n operations for the entire site, and they use Foreman to do so. The power\n\n management is done through Lancium Smart Response software, not\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 5 of 39\n\n\n\n\n Foreman. As I stated in my first declaration, Lancium requested OBM\u2019s\n\n SOC 2 report to make sure Lancium was running the Ft. Stockton site\n\n properly, not for any purpose related to our partnership discussions.\n\n 3. In his declaration, Mr. Lawrence states that on our November 17th meeting,\n\n I told him \u201cthat customers using Foreman could be infringing on Lancium\u2019s\n\n patents.\u201d I did not stay that, or anything like it. As I stated in my first\n\n declaration, I did not even mention patents during this meeting. Mr.\n\n Lawrence states that I said the two companies should talk because \u201cbecause\n\n CLR and energy management was Lancium\u2019s specialty and OBM was\n\n \u2018undervaluing\u2019 energy management by offering it for a price lower than the\n\n price Lancium was offering it.\u201d I do not recall saying this\u2014if anything, this\n\n would be out of context, and relate to OBM\u2019s miner management price. At\n\n the time, I did have an understanding that miner management software\n\n garnered a lower fee than our Lancium Smart Response did; I would have\n\n meant that by providing a package of miner management and power\n\n management with us\u2014rather than just providing miner management on its\n\n own\u2014OBM would get more value. Mr. Lawrence says he \u201ctook this to\n\n mean that Lancium saw Foreman as a threat to its business.\u201d He never said\n\n that to me. I can say throughout my conversations with Mr. Lawrence, I did\n\n not see Foreman as a threat to our business, but as a potential business\n\n partner where both companies could make more money\u2014that is why I kept\n\n trying to talk to him and explain what we were thinking.\n\n\n\n\n -2-\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 6 of 39\n\n\n\n\n 4. In addition to the emails I provided along with my first declaration, I also\n\n still have my text messages with Mr. Lawrence. I took screenshots of this\n\n text conversation. A true and correct copy of these screenshots is attached\n\n as Exhibit 19. As shown in the exhibit, first Mr. Lawrence texted me on\n\n November 18th, 2022 (giving me his number). We then exchanged\n\n messages on November 29th, 2022, and I texted him again to follow up on\n\n December 5th, 2022 (I did not get a response). We exchanged further\n\n messages on January 5th, 2023, and I texted him on February 2nd, 2023 to\n\n follow up (I again did not get a response). On April 4th, I texted him Michael\n\n McNamara\u2019s contact information.\n\n 5. In his declaration, Mr. Lawrence said on March 8th, 2023, I \u201cpulled [him]\n\n to the side, and said that we needed to have a chat.\u201d As I stated in my first\n\n declaration, I believe we spoke on March 9th, 2023, not March 8th. In any\n\n event, the way he writes it seems to be suggesting I was aggressive or\n\n threatening him. That is not true. I may have said something to the effect\n\n of us needing to talk again\u2014but that would only have been because I had\n\n been trying since November 17th to have a follow-up conversation with him.\n\n After many emails and texts, I was glad to finally catch him. As I discuss\n\n in my first declaration, our conversation was friendly, and all about our\n\n proposed collaboration.\n\n 6. Mr. Lawrence\u2019s declaration may be suggesting that my email to him on\n\n March 28th, 2023 was triggered by his appearance on a podcast that day. I\n\n do not recall if I even heard the podcast at that time. The reason I reached\n\n\n\n\n -3-\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 7 of 39\n\n\n\n\n out was to follow up from our meeting on March 9th, where Mr. Lawrence\n\n and I agreed to have a follow-up meeting when he was back in town, but I\n\n had not heard back from him for a few weeks.\n\n 7. Mr. Lawrence states that on April 4th, he and I had a short phone call, where\n\n I said Lancium \u201cwould send business terms soon.\u201d I do not recall saying\n\n that. As I state in my initial declaration, the purpose of my April 4th call\n\n with Dan was to get him to agree to talk with our CEO, Michael McNamara,\n\n and that was the next step, not sending terms. (This is why I shared\n\n Michael\u2019s contact with Dan on April 4th, so that he would recognize the\n\n number when the call came in).\n\n 8. I declare under penalty of perjury that the forgoing is true and correct to the\n\n best of my knowledge.\n\n\n\n Executed on this 6th day of July, 2023.\n\n\n\n ________________________\n\n Ian Rock\n\n\n\n\n -4-\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 8 of 39\n\n\n\n\n *$ )\u001c\u001b\u0001()\u0018)\u001c(\u0001\u001b ()' \u001a)\u0001\u001a%*')\u0001\n (%*)\u001f\u001c'$\u0001\u001b ()' \u001a)\u0001%\u001d\u0001)\u001c-\u0018(\u0001\n \u001f%*()%$\u0001\u001b + ( %$\u0001\n \u0001\n\u0001\u0001\n %\u0019#\u0005\u0001 $\u001a\u0007\u0005\u0001 \u0004\n \u0001 \u0004\n \u0001 \u0001 &:/7@3D7=CA\u0001 231:/@/B7=<\u0001 7<\u0001 B67A\u0001 1/A3\u0001 =<\u0001 !C<3\u0001 \u000eB6\u0005\u0001 \u0007\u0001 \u0001 6/D3\u0001\n B6\n @3D73E32\u0001B63\u0001231:/@/B7=<\u0001=4\u0001\u001b/<\u0001\"/E@3<13\u0001AC0;7BB32\u00010G\u0001%\u0019#\u0001=<\u0001!C<3\u0001 \u0005\u0001\n\n \u0007\u0001 \u001f3@3\u0005\u0001 \u0001 @3A>=<2\u0001 B=\u0001 13@B/7<\u0001 AB/B3;3@7:\u0001 \u000fB6\u0001 1/::\u0007\u0001 )6/B\u0001 E/A\u0001 =C@\u0001 47@AB\u0001\n\n 7/07:7BG\u0001 /<2\u0001 ;7<3@\u0001 ;/@7=@\u00011=/07:7BG\u0001/<2\u00015=\u0006B=\u0006;/@93B\u0005\u0001 \u0001E/A\u0001<=B\u0001\n\n /B\u0001B63\u0001AB/53\u00017<\u0001B67A\u000147@AB\u00011/::\u0001B=\u0001=443@\u0001>/@B<3@A67>\u0001B3@;A\u0005\u0001/A\u0001B63G\u0001:793:G\u0001E=C:2\u0001\n\n <=B\u0001 03\u0001 /A\u0001 E3::\u0001 /:75<32\u0001 /A\u0001 B63G\u0001 1=C:2\u0001 03\u0001 4=@\u0001 0=B6\u0001 =4\u0001 CA\u0001 /<2\u0001 =C@\u0001 >=AA70:3\u0001\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 9 of 39\n\n\n\n\n 1CAB=;3@A\u0007\u0001,63<\u0001>@=>=A7<5\u0001/\u00010CA7<3AA\u000123/:\u0005\u0001;G\u00015=/:\u00017A\u00014=@\u0001B63\u0001B3@;A\u0001B=\u000103\u0001\n\n 0=B6\u0001E3::\u0006@3137D32\u0001/<2\u0001/:A=\u0001<=B\u0001=CB\u0001=4\u0001>@=>=@B7=<\u0001B=\u0001B63\u0001@317>73A\u0001/<2\u000147@7:\u0001 \u000fB6\u00011/::\u0005\u0001 \u0001E/A\u0001 /<2\u0001 0CA7<3AA\u0007\u0001\n\n \u001f=E3D3@\u0005\u0001\u001b/<\u0001272\u0001<=B\u0001>@=D723\u0001B6/B\u0005\u000157D7<5\u0001=<:G\u00010/A71\u00017<4=@;/B7=<\u0005\u0001AB/B7<5\u0001\n\n 63\u0001E/A\u0001J7@=D723\u0001\n\n />>@=>@7/B3\u0001B3@;A\u0007\u0001\u0001\n\n \u0007\u0001 \u0018A\u0001 \u000127A1CAA\u00017<\u0001;G\u000147@AB\u0001231:/@/B7=<\u0005\u0001/4B3@\u0001B/:97<5\u0001E7B6\u0001\u001b/<\u0001=<\u0001\u0018>@7:\u0001 \u000fB6\u0005\u0001 \u0001\n\n AC553AB32\u0001E3\u0001;33B\u00014=@\u00012@7<9A\u0001/<2\u0001/\u00014C@B63@\u000127A1CAA7=<\u0001/B\u0001B63\u0001\u00197B1=7<\u0001 \u0001\n\n 1=<43@3<13\u0001=<\u0001#/G\u0001 \u0011B6\u0007\u0001 <\u000167A\u0001231:/@/B7=<\u0005\u0001\u001b/<\u0001AB/B3A\u0001B6/B\u0001 \u0001@3?C3AB32\u0001B6/B\u0001\n\n /<\u0001'=19\u0001/BB3<2\u0001B6/B\u000127A1CAA7=<\u0007\u0001)6/B\u00017A\u00017<1=@@31B\u0007\u0001 \u00017;3;3/@B717>/B3\u0001<=@\u0001272\u0001 \u00017>3<\u0001 E7B6\u0001\n\n 1CAB=;3@A\u0001C<23@\u0001\u000e \u0001#,\u0005\u0001=@\u00011CAB=;3@A\u0001B6/B\u00011/<<=B\u0001>/@B717>/B3\u00017<\u0001\u001a\"'\u00010/A32\u0001\n\n =<\u0001B637@\u0001:=/2\u0001>@=47:3\u0005\u0001#@\u0007\u0001#1\u001d/@:/<2MA\u0001@3A>=@=0/0:G\u0001\n\n 0C7:2\u0001 /\u0001 1:=C2\u0001 1=<<31B=@\u0001 E63@3\u0001 E3\u0001 7/@/B3\u00017B3;A\u0001B=53B63@\u00017<\u000167A\u0001AB/B3;3\u0001 1CAB=;3@A\u0001 E7B6=CB\u0001 \u001a\"'\u0001 1/>/07:7BG\u0001 \u0003B63\u0001 :/19\u0001 =4\u0001 4/AB\u0006@3A>=/07:7BG\u0004\u0001/<2\u0001B63\u0001=B63@\u0001037<5\u00011CAB=;3@A\u0001E6=\u0001/@3\u0001\u001a\"'\u00011/>/0:3\u0005\u00010CB\u0001B6/B\u0001\n\n CA3\u0001\u0015\u000e \u0001#,A\u0007\u0001\u0003\u0018A\u0001/<=B63@\u0001<=B3\u0005\u0001=C@\u0001>@=>=A/:MA\u00014=1CA\u0001E/A\u0001=<\u0001>=B331B\u0001 B=\u0001 <=<\u0006\u001a\"'\u0001 1CAB=;3@A\u0013\u0001 $=B\u0001 /::\u0001 2/B/\u0001 13/0:3\u0001 =4\u0001\n\n 2=7<5\u0001\u001a\"'\u0005\u0001E6716\u0001@3?C7@3A\u0001B63\u0001/07:7BG\u0001B=\u000116/<53\u0001>=E3@\u0001CA/53\u0001D3@G\u0001?C719:G\u0005\u0001\n\n @343@@32\u0001 B=\u0001 /A\u0001 4/AB\u0001 @3A>=@7;/@G\u0001 7==<232\u0001E7B6\u0001/\u0001E/G\u0001E3\u00011=C:2\u00012=\u0001A=\u0005\u000174\u0001B63G\u0001E3@3\u00017317471/::G\u0005\u0001\n\n \u0001A/72\u0001E3\u00011=C:2\u00011@3/B3\u0001/\u00011:=C2\u00060/A32\u0001\u0003=44\u0006>@3;7A3A\u0004\u0001=443@7<5\u0001=4\u0001=C@\u0001\"/<17C;\u0001\n\n (;/@B\u0001'3A>=:/B4=@;\u00014=@\u00010/A71\u0001\n\n 23;/<2\u0001@3A>=\u0001E7B6\u0001\n\n B637@\u0001=B63@\u000123;/<2\u0001@3A>=/@B<3@\u0005\u0001+=:BCA\u0007\u0001\u001b/<\u0001/<2\u0001 \u00013D3<\u000127A1CAA32\u0001B6/B\u0001\n\n E3\u0001E=C:2\u0001<332\u0001B=\u00012=\u0001A=;3\u0001\u0018& \u00017/<73A\u0007\u0001 \u00013F>:/7<32\u0001B67A\u0001\n\n 1=C:2\u0001AB7::\u000103\u0001/\u0001D/:C3\u0006/22\u0005\u0001E7B6\u0001\"/<17C;MA\u0001A=>67AB71/B7=<\u00017<\u000113@B/7<\u0001/A>31BA\u0001\n\n =4\u0001 >=E3@\u0001 ;/=B7=<\u0005\u0001=@\u0001B6/B\u0001B67A\u0001E/A\u0001/\u0001<313AA/@G\u0001\n\n >/@B\u0001=4\u0001=C@\u0001>@=>=A32\u0001@3:/B7=I\u001b/<\u00017A\u0001B63\u0001=<3\u0001E6=\u00010@=C56B\u0001B67A\u0001C>\u0005\u0001A=\u0001 \u0001\n\n AC553AB32\u0001/\u0001>=B3B7=<\u0007\u0001\u0001\u0001\n\n\n\n\n\u0001 \u0006\u0001 \u0001\u0006\u0001\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 11 of 39\n\n\n\n\n \u000f\u0007\u0001 \u001d=@\u00011CAB=;3@A\u0001B6/B\u0001E/=@343@\u0001B=\u00016/D3\u0001=C@\u0001\n\n A=4BE/@3\u0001@C<<7<5\u0001=<\u0006>@3;7A3A\u0001=<\u0001=C@\u0001A3@D3@A\u00014=@\u0001B63\u00011CAB=;3@\u0001A=\u0001B6/B\u0001E3\u0001\n\n 1/<\u0001 7=E3@\u0001 16/<53A\u0001 E7B67<\u0001 D3@G\u0001 A6=@B\u0001 B7;3\u0001 4@/;3A\u0001 /A\u0001\n\n @3?C7@32\u0001 C<23@\u0001 \u001a\"'\u0001 =>3@/B7=<\u0007\u0001 \u0007\u0001 %C@\u0001 B/@53B\u0001 1CAB=;3@\u0001 0/A3\u0001 4=@\u0001 CA7<5\u0001\n\n \"/<17C;\u0001(;/@B\u0001'3A>=/07:7BG\u0001E=C:2\u000103\u00011CAB=;3@A\u0001E7B6\u0001\u0016\u000e \u0001\n\n #,\u0001=4\u0001>=E3@\u0001CA/53\u0007\u0001)67A\u00017A\u0001031/CA3\u0005\u00017<\u000153<3@/:\u0005\u0001B63A3\u00011CAB=;3@A\u0001@3>@3A3=B33<2\u0001 =C@\u0001 A/:3A\u0001 B7;3\u0001 /<2\u0001\n\n 3<57<33@7<5\u0001344=@BA\u0007\u0001)67A\u0001E/A\u0001/\u000153<3@/:\u00015C723:7<3\u0001B6/B\u0001 \u0001CA32\u0001B=\u000123B3@;7<3\u0001\n\n E63@3\u0001E3\u0001A>3/07:7BG\u0001=@\u0001/\u0001J1:=C2\u00011=<<31B=@K\u0001=@\u0001/\u0001\n\n 1:=C2\u0001 D3@A7=<\u0001 =4\u0001 =C@\u0001 A=4BE/@3\u0007\u0001 \u0001 <3D3@\u0001 AB/B32\u0001 B=\u0001 \u001b/<\u0001 B6/B\u0001 =C@\u0001 >@=>=A32\u0001\n\n >/@B<3@A67>\u0001E=C:2\u0001>@31:C23\u0001%\u0019#\u00014@=;\u0001E=@97<5\u0001E7B6\u00011CAB=;3@A\u0001C<23@\u0001\u000e \u0001\n\n #,\u0001=<\u0001B637@\u0001=E<\u0001\u0003/A\u0001 \u000127A1CAA\u00017<\u0001;G\u000147@AB\u0001231:/@/B7=<\u0005\u0001 \u0001;/23\u00011:3/@\u0001B6/B\u0001=C@\u0001\n\n >@=>=A32\u0001 @3:/B7=\u0001 E/A\u0001 <=<\u00063F1:CA7D3\u0004\u0007\u0001 )63\u0001 \u000e \u0001 #,\u0001 B6@3A6=:2\u0001 8CAB\u0001\n\n @3:/B32\u0001B=\u0001B63\u0001A7H3\u0001=4\u0001>=B3:/<\u0001B=\u0001>C@AC3\u0001/A\u0001>=B3=@BA\u0001 B6/B\u0001 \u0001 >@=>=A32\u0001 /\u0001 J\u0012 \b \u0001 A>:7B\u0001 =<\u0001 B63\u0001 \u001a\"'\u0001 @3D3:7B\u0001 \u0001>@=>=A32\u0005\u00010CB\u000167A\u0001\n\n 27A1CAA7=<\u00017A\u0001;7A:3/27<5\u0007\u0001\u001d7@AB\u0001=4\u0001/::\u0005\u0001/A\u0001 \u00013F>:/7<32\u00017<\u0001;G\u000147@AB\u0001231:/@/B7=<\u0005\u0001\n\n B67A\u00017A\u0001<=B\u00016=E\u0001\u001b/<\u0001/1BC/::G\u0001@3/1B32\u0001E63<\u0001 \u0001>@3A3@=>=A32\u0001\n\n @3:/B7=\u0005\u0001 1CAB=;3@A\u0001 E=C:2\u0001 03\u0001 0CG7<5\u0001 0=B6\u0001 \u001d=@3;/<\u0001 4@=;\u0001 %\u0019#\u0005\u0001 /<2\u0001\n\n\n\n\n\u0001 \u0006\u0001 \u0001\u0006\u0001\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 12 of 39\n\n\n\n\n \"/<17C;\u0001 (;/@B\u0001 @3A>==@B7=<\u0001 =4\u0001 B63\u0001 A/:3\u0005\u0001 \"/<17C;\u0001 E=C:2\u0001 53B\u0001 \u0002\u0007\u0001\n\n )63<\u0005\u0001 E3\u0001 E=C:2\u0001 03\u0001 57D7<5\u0001 %\u0019#\u0001 \u0002\u0001 =4\u0001 B63\u0001 @3D3@=2C1B\u0005\u0001\n\n \"/<17C;\u0001 (;/@B\u0001 '3A>=/<73A\u0001;756B\u000103\u000153BB7<5\u0001\n\n ;=@3\u00011CAB=;3@A\u0005\u0001A=\u0001A6/@7<5\u0001@3D3==E3@\u0001\n\n ;/3@\u0001 1CAB=;3@\u0001 B6/<\u0001 %\u0019#\u0001 1C@@33@\u0001\n\n 1CAB=;3@\u00014@=;\u0001\u001d=@3;/<\u0001;7<3@\u0001;/@3>/@32\u0001/\u0001A:723\u0001=CB:7<7<5\u0001B63\u00010CA7<3AA\u0001B3@;A\u0001\n\n 4=@\u0001=C@\u0001>@=>=A32\u0001@3:/B7=\u0007\u0001)67A\u00017A\u0001B63\u00012=1C;3@7G\u0001=4\u0001\n\n B67A\u0001A:723\u00017<\u00014@=6=<3\u0005\u0001 \u0001B==9\u00016/<2E@7BB3<\u0001<=B3A\u0001=<\u0001B63\u0001>/>3@\u0001=4\u0001B67<5A\u0001\u001b/<\u0001A/72\u0007\u0001\u0018\u0001\n\n B@C3\u0001 /<2\u0001 1=@@31B\u0001 1=>G\u0001 =4\u0001 B67A\u0001 A:723\u0001 E7B6\u0001 ;G\u0001 1==@/<3=CA\u0001 <=B3A\u0001 7A\u0001\n\n /BB/1632\u0001/A\u0001\u001cF6707B\u0001 \u0007\u0001)=\u0001>=7BC@32\u0001\u001b/=E3@\u0006;/\u0001 E7B6\u0001\n\n +=:BCA\u0001 E/A\u0001 <=<\u00063F1:CA7D3\u0005\u0001 A=\u0001 B63G\u0001 1=C:2\u0001 /:A=\u0001 3\u0001E7B6\u0001CA\u0007\u0001#G\u0001<=B3\u00017<\u0001B63\u00010=BB=;\u0001;722:3\u0001@3/2A\u0001J$332A\u0001B=\u0001:==9\u0001\u0017\u0001\n\n =B63@\u0001 16/<:\u0001 /5;BA\u0007K\u0001 )67A\u0001 1/>BC@3A\u0001 >/@B\u0001 =4\u0001 \u001b/=/@3\u0001 7B\u0001 B=\u0001 B637@\u0001 =B63@\u0001 3F7AB7<5\u0001 16/<<3:\u0001\n\n /5@33;3/@B\u0001=4\u0001\u001b/=C0:71:G\u0001\n\n /D/7:/0:3\u0005\u00017<1:C27<5\u0001\"/<17C;MA\u0001>@717<5\u0001/<2\u0001@3D3@=831BA\u0007\u0001&C0:71:G\u0001\n\n 27A1:=A7<5\u0001B67A\u00017<4=@;/B7=<\u00011=C:2\u00011/CA3\u00011=;;3@17/:\u00016/@;\u0001B=\u0001\"/<17C;\u0005\u00014=@\u0001\n\n 3F/;>:3\u00010G\u0001/::=E7<5\u00011=;>3B7B=@A\u0001B=\u0001C<23@1CB\u0001\"/<17C;MA\u0001>@717<5\u0007\u0001\u0001\u0001\n\n \u0007\u0001 \u0001231:/@3\u0001C<23@\u0001>33@8C@G\u0001B6/B\u0001B63\u00014=@5=7<5\u00017A\u0001B@C3\u0001/<2\u00011=@@31B\u0001B=\u0001B63\u0001\n\n 03AB\u0001=4\u0001;G\u00019<=E:3253\u0007\u0001\u0001\n\n \u001cF31CB32\u0001=<\u0001B67A\u0001\u000fB6\u00012/G\u0001=4\u0001!C:G\u0005\u0001 \u0007\u0001\u0001\n\n ........................\u0001\n\n \u0001\u0001 \u0001\u0001\u0001\u0001\u0001\u0001\u0001\u0001\u0001(1=BB\u0001#1\u001d/@:/<2\u0001\u0001 \u0001\n\n\n\n\n\u0001 \u0006\u0001\u000f\u0001\u0006\u0001\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 14 of 39\n\n\n\n\n UNITED STATES DISTRICT COURT\n SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\n\nOBM, INC., )\n )\n Plaintiff, )\n )\n vs. ) 4:23-cv-1798\n )\nLANCIUM LLC, )\n )\n Defendant. )\n\n DECLARATION OF BRANDON GREENFIELD IN SUPPORT OF\n DEFENDANT'S MOTION TO DISMISS\n I, Brandon Greenfield, hereby declare as follows:\n\n 1. I am the Director of IT Security & Compliance at Lancium. In September\n\n 2022, I was the IT Controls Manager. My responsibilities included making\n\n sure that any system connected to Lancium\u2019s network had appropriate\n\n controls to ensure compliance, security and operating effectiveness. This\n\n included compliance with data security and data privacy regulations,\n\n handling of financial and other data subject to the Sarbanes-Oxley\n\n regulation, and other regulations. I have never had any role at Lancium\n\n relating to intellectual property or patents, or relating to business\n\n development.\n\n 2. I have reviewed a portion of OBM\u2019s brief filed on June 30th where they\n\n discuss my access to Foreman, and request for OBM\u2019s SOC 2 report, along\n\n with the portion of Dan Lawrence\u2019s declaration discussing the same. I\n\n submit this declaration to explain my involvement, and clarify suggestions\n\n made in their brief.\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 15 of 39\n\n\n\n\n 3. Lancium owns a Lancium Clean Campus site in Fort Stockton, Texas,\n\n where bitcoin miners or other data centers can locate their machines.\n\n Lancium contracts with a company, Digital Carpenters, to operate and\n\n monitor the site on a daily basis. Digital Carpenters uses the OBM Foreman\n\n software for automation and management of the bitcoin miner customers at\n\n Fort Stockton, and they use our Lancium Smart Response software for any\n\n power management functions.\n\n 4. Because the Fort Stockton site is on the Lancium network, I needed to be\n\n familiar with what controls need to be in place to be sure the software is\n\n appropriately secured, and being used appropriately. As an initial step, on\n\n August 25, 2022, I spoke with John Mathews from Digital Carpenters, and\n\n then sent him an email asking for a more in depth call to understand the IT\n\n controls and security. A true and correct copy of that email is attached as\n\n Exhibit 21. We realized there were certain questions they didn\u2019t know the\n\n answers to, so John emailed connecting me with Dan Lawrence from OBM,\n\n on September 12, 2022. Mr. Lawrence responded that day, offering to\n\n provide a SOC 2 report, and to talk by phone. A SOC 2 (Service\n\n Organizational Controls) report is a standard compliance reporting\n\n document for an offering, focused on its security, laying out the data\n\n security and other measures deemed appropriate to follow.\n\n 5. I responded on the morning of September 13th, taking him up on his\n\n suggestion of providing their SOC 2 report. He did not immediately\n\n respond, so I emailed him again on September 15th. Mr. Lawrence\n\n\n\n\n -2-\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 16 of 39\n\n\n\n\n responded that day, stating we needed a non-disclosure agreement in place.\n\n I replied asking if he wanted to use our NDA, or if he had one. He did not\n\n respond, so I followed up on September 20th. A true and correct copy of\n\n those emails is attached as Exhibit 22.\n\n 6. Dan and I scheduled a zoom call, but he canceled it, and it did not occur.\n\n On September 27th, 2022, he sent me an invite for a zoom call. A true and\n\n correct copy of that invite is attached as Exhibit 23. Mr. Lawrence emailed\n\n me on September 29th, apologizing for the email chain fizzling, cancelling\n\n our meeting, and attaching their NDA. I sent him a revised version later that\n\n day. Myself and Ian Rock from Lancium had to follow up numerous times\n\n over the next few months. I was personally on email threads into January,\n\n 2023 for this purpose. I have reviewed the first declaration of Ian Rock, and\n\n Lancium\u2019s Exhibits 2-6. These are consistent with my understanding of the\n\n timeline, and accurately reflect the emails I was copied on during this time\n\n to try and get the SOC 2 report. Ian Rock forwarded me the SOC 2 report\n\n received from OBM on February 27th, 2023. A true and correct copy of the\n\n email attaching the SOC 2 report is attached as Exhibit 24, and a true and\n\n correct copy of the SOC 2 report itself is attached as Exhibit 25. My only\n\n involvement in correspondence with OBM surrounded trying to get the\n\n SOC 2 report, for our internal compliance purposes.\n\n 7. OBM also discusses the fact that I had access to Foreman. Again, as Fort\n\n Stockton was a Lancium owned site, we needed visibility into how the site\n\n was operating, whether the customers\u2019 assets there were online and working\n\n\n\n\n -3-\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 17 of 39\n\n\n\n\n as expected, and to ensure Foreman was being used in line with appropriate\n\n data security measures. I received limited access to the Fort Stockton\n\n Foreman software on September 12, 2022, for this purpose. My access\n\n allowed me to see the activity of the miners operating at Fort Stockton, and\n\n whether they were up online (mining for bitcoin, called \u201chashing\u201d) as\n\n expected, or having issues.\n\n 8. From September 2022 into January 2023, I regularly logged in for this\n\n purpose. I do not have access to the Foreman code, I do not have access to\n\n the host machine, and I do not know what kinds of power management\n\n Foreman is capable of. I have only seen the implementation of Foreman at\n\n the Fort Stockton facility, and it is not used for any power management\n\n functions there.\n\n 9. I declare under penalty of perjury that the forgoing is true and correct to the\n\n best of my knowledge.\n\n\n\n Executed on this 6th day of July, 2023.\n\n\n\n ________________________\n ______________________\n\n Brandon Greenfield\n\n\n\n\n -4-\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 18 of 39\n\n\n\n\n EXHIBIT 19\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 19 of 39\n\n\n\n\n 1\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 20 of 39\n\n\n\n\n 2\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 21 of 39\n\n\n\n\n 3\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 22 of 39\n\n\n\n\n 4\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 23 of 39\n\n\n\n\n 5\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 24 of 39\n\n\n\n\n EXHIBIT 20\n 3XEOLF\u00039HUVLRQ\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 25 of 39\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 26 of 39\n\n\n\n\n EXHIBIT 21\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 27 of 39\n\n\n\n\nFrom: John Mathews \nSent: Thursday, August 25, 2022 11:59 AM\nTo: Brandon Greenfield\nCc: Devin Frith; Ian Rock; Jason Marshall; Thomas Salvatore; Vitor Henrique;\n clayton@digitalcarpenters.io; lawson@digitalcarpenters.io\nSubject: Re: Foreman IT Controls\n\n\n\nAdding Devin for visibility.\n\nTuesday of next week at 3 pm CT work?\n\nOn Thu, Aug 25, 2022 at 11:54 AM Brandon Greenfield wrote:\n Hello John,\n\n Thank you for the Foreman walkthrough today. It was great to see how the tool improves your operations. As I\n mentioned at the end of the meeting, I'd like to set up a call to understand more about the IT controls and\n security of the tool. My schedule next week is reasonably open/flexible. Let me know what works for you and\n your team. Operations comes first in my mind, so we do not need to rush or squeeze in the meeting. I've\n included some of the topics below for your reference.\n\n Topics to Discuss:\n\n x Access rights:\n o Who has access?\n o What rights/privileges do they have?\n o Who are the administrators?\n o Can we build custom roles?\n o Who can change miner pool data? Can we set up an alert for those changes?\n o How is access requested/created\n x What other systems does it interface with?\n x How is data retained? Backups?\n x Audit logs\n x Miner Password query\n x Changes\n o Who can write code?\n o How is it tested/approved?\n x Foreman Company\n o Do they have a third party audit of their environment?\n o SOC Report? ISO?\n\n\n\n\n Regards,\n\n\n 1\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 28 of 39\n\n Brandon Greenfield, CISSP, CISA\n\n IT Controls Manager\n\n Lancium LLC\n\n The Woodlands Towers\n 9950 Woodloch Forest Drive\n\n The Woodlands\n\n Texas 77380\n\n 281-789-8676\n\n\n CONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This\n email is intended to be reviewed by only the individual or organization named above. If you are not the\n intended recipient or an authorized representative of the intended recipient, you are hereby notified that any\n review, dissemination or copying of this email and its attachments, if any, or the information contained herein\n is prohibited. If you have received this email in error, please immediately notify the sender by return email and\n delete this email from your system.\n--\n\nJohn Mathews\nFounder & CEO | Digital Carpenters\n312.451.4844\n\n\n\n\n 2\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 29 of 39\n\n\n\n\n EXHIBIT 22\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 30 of 39\n\n\nFrom: brandon.greenfield@lancium.com\nTo: \"Daniel Lawrence\"\nCc: \"John Mathews\"\nSubject: RE: Lancium IT Security intro\nDate: Tuesday, September 20, 2022 11:43:42 AM\nAttachments: image001.jpg\n\n\nHello Dan,\n\nFollowing up on my email below. Thank you.\n\nRegards,\n\nBrandon Greenfield\n\n\nFrom: brandon.greenfield@lancium.com \nSent: Thursday, September 15, 2022 10:19 AM\nTo: 'Daniel Lawrence' \nCc: 'John Mathews' \nSubject: RE: Lancium IT Security intro\n\nNo problem Dan. We have an NDA our legal team has approved, if that works for you. If not could\nyou send me your NDA, I\u2019ll have our legal team look over it and then we can get it signed.\n\nRegards,\n\nBrandon Greenfield\n\nFrom: Daniel Lawrence \nSent: Thursday, September 15, 2022 10:16 AM\nTo: brandon.greenfield@lancium.com\nCc: John Mathews \nSubject: Re: Lancium IT Security intro\n\nHey Brandon,\n\nTo share our SOC 2, we unfortunately require an NDA. Do you have an email where I can send one?\n\nThanks,\nDan\n\n\nOn Thu, Sep 15, 2022 at 10:12 AM wrote:\n Good morning Dan,\n\n Just following up on the request below. Hope you are having a good week. Please see my\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 31 of 39\n\n\nnumber below if you have any questions/concerns.\n\nRegards,\n\nBrandon Greenfield\nIT Controls Manager\nLancium LLC\nThe Woodlands Towers\n9950 Woodloch Forest Drive\nThe Woodlands\nTexas 77380\n281-789-8676\n\n\nFrom: brandon.greenfield@lancium.com \nSent: Tuesday, September 13, 2022 7:38 AM\nTo: 'Daniel Lawrence' \nCc: 'John Mathews' \nSubject: RE: Lancium IT Security intro\n\nHello Dan,\n\n Great to meet you too! I think your SOC 2 would answer the majority of questions. Could\nyou send it over when you have a chance?\n\nRegards,\n\nBrandon Greenfield\n\nFrom: Daniel Lawrence \nSent: Monday, September 12, 2022 7:15 PM\nTo: John Mathews \nCc: Brandon Greenfield \nSubject: Re: Lancium IT Security intro\n\nHi Brandon,\n\nIt's great to meet you!\n\nHappy to answer any questions you may have. We are a SOC 2 Type II company and can provide a\nSOC report, if needed. Happy to also hop on a call to chat.\n\nThanks,\nDan\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 32 of 39\n\n\n On Mon, Sep 12, 2022 at 2:30 PM John Mathews wrote:\n Dan,\n\n Meet Brandon. He is who I texted about that will have some questions around Lancium\u2019s data\n security on your platform. I\u2019ll leave it to you guys to take from here.\n\n Cheers,\n John\n --\n\n John Mathews\n Founder & CEO | Digital Carpenters\n 312.451.4844\n\n\n\n --\n Daniel Lawrence\n CEO\n Schedule a Meeting\n Foreman.mn - OBM, Inc.\n 1 N Haven Street, Suite 3\n Baltimore, MD 21224\n\n\n\n CONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged.\n This email is intended to be reviewed by only the individual or organization named above. If you\n are not the intended recipient or an authorized representative of the intended recipient, you are\n hereby notified that any review, dissemination or copying of this email and its attachments, if any,\n or the information contained herein is prohibited. If you have received this email in error, please\n immediately notify the sender by return email and delete this email from your system.\n\n\n\n--\nDaniel Lawrence\nCEO\nSchedule a Meeting\nForeman.mn - OBM, Inc.\n1 N Haven Street, Suite 3\nBaltimore, MD 21224\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 33 of 39\n\n\n\n\n EXHIBIT 23\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 34 of 39\n\n\n\n\nSubject: Foreman Meeting\nLocation: https://us02web.zoom.us/j/85659831869\n\nStart: Thu 9/29/2022 1:30 PM\nEnd: Thu 9/29/2022 1:45 PM\nShow Time As: Tentative\n\nRecurrence: (none)\n\nMeeting Status: Not yet responded\n\nOrganizer: dan@obm.mn\n\n\n\n\n Daniel Lawrence is inviting you to a scheduled Zoom meeting.\n\n Topic: Foreman Meeting\n Time: Sep 29, 2022 02:30 PM Eastern Time (US and Canada)\n\n Join Zoom Meeting\n https://us02web.zoom.us/j/85659831869\n\n Meeting ID: 856 5983 1869\n One tap mobile\n +13092053325,,85659831869# US\n +13126266799,,85659831869# US (Chicago)\n\n Dial by your location\n +1 309 205 3325 US\n +1 312 626 6799 US (Chicago)\n +1 646 558 8656 US (New York)\n +1 646 931 3860 US\n +1 301 715 8592 US (Washington DC)\n +1 669 444 9171 US\n +1 669 900 9128 US (San Jose)\n +1 719 359 4580 US\n +1 253 215 8782 US (Tacoma)\n +1 346 248 7799 US (Houston)\n +1 386 347 5053 US\n +1 564 217 2000 US\n\n\n\n\n 1\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 35 of 39\n\n\n Meeting ID: 856 5983 1869\n Find your local number: https://us02web.zoom.us/u/kbL3Bc3o8t\n\n\n When\n Thursday Sep 29, 2022 \u202b \u0684\u202c1:30pm \u2013 1:45pm (Central Time - Chicago)\n\n Location\n https://us02web.zoom.us/j/85659831869\n View map\n\n Guests\n dan@obm.mn - organizer\n brandon.greenfield@lancium.com\n View all guest info\n\n\n Reply for brandon.greenfield@lancium.com\n\n Yes No Maybe\n\n More options\n\n\n\n\nInvitation from Google Calendar\n\nYou are receiving this email because you are subscribed to calendar notifications. To stop receiving these emails, go to\nCalendar settings, select this calendar, and change \"Other notifications\".\n\nForwarding this invitation could allow any recipient to send a response to the organizer, be added to the guest list, invite\nothers regardless of their own invitation status, or modify your RSVP. Learn more\n\n\n\n\n 2\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 36 of 39\n\n\n\n\n EXHIBIT 24\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 37 of 39\n\n\nFrom: Ian Rock\nTo: Brandon Greenfield; Ryan McKenny\nSubject: Fwd: Completed: Complete with DocuSign: SOC 2 - Bridge Letter with signature.pdf, OBM, Inc. SOC2 Type II\n Report...\nDate: Monday, February 27, 2023 2:10:11 PM\nAttachments: SOC 2 - Bridge Letter with signature.pdf\n OBM, Inc. SOC2 Type II Report - Final.pdf\n\n\n\n\n---------- Forwarded message ---------\nFrom: Ashley Lipa via DocuSign \nDate: Mon, Feb 27, 2023 at 1:25 PM\nSubject: Completed: Complete with DocuSign: SOC 2 - Bridge Letter with signature.pdf,\nOBM, Inc. SOC2 Type II Report...\nTo: Ian J Rock \n\n\n\n\n Your document has been completed\n\n\n VIEW COMPLETED DOCUMENTS\n\n\n\n\n Ashley Lipa\n llipa@obm.mn\n\n\n All parties have completed Complete with DocuSign: SOC 2 - Bridge Letter with\n signature.pdf, OBM, Inc. SOC2 Type II Report....\n\n Powered by\n\n\n\n\n Do Not Share This Email\n This email contains a secure link to DocuSign. Please do not share this email, link, or access\n code with others.\n\f Case 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 38 of 39\n\n\n Alternate Signing Method\n Visit DocuSign.com, click 'Access Documents', and enter the security code:\n 382DBCD5B0F34654B83D8522432B35683\n\n About DocuSign\n Sign documents electronically in just minutes. It's safe, secure, and legally binding. Whether\n you're in an office, at home, on-the-go -- or even across the globe -- DocuSign provides a\n professional trusted solution for Digital Transaction Management\u2122.\n\n Questions about the Document?\n If you need to modify the document or have questions about the details in the document,\n please reach out to the sender by emailing them directly.\n\n Stop receiving this email\n Report this email or read more about Declining to sign and Managing notifications.\n\n If you are having trouble signing the document, please visit the Help with Signing page on\n our Support Center.\n\n\n Download the DocuSign App\n\n This message was sent to you by Ashley Lipa who is using the DocuSign Electronic Signature Service. If you would\n rather not receive email from this sender you may contact the sender with your request.\n\n\n\n\n--\n\nIan J Rock\nVice President IT Operations\nLancium LLC\n\n\n\n\nThe Woodlands Towers\n9950 Woodloch Forest Drive\nThe Woodlands\nTexas 77380\nEmail: ian.rock@lancium.com\nPhone: 713 839 5246\n\fCase 4:23-cv-01798 Document 21-1 Filed on 07/07/23 in TXSD Page 39 of 39\n\n\n\n\n EXHIBIT 25\n (Filed Under Seal)\n\f","ocr_status":2,"date_upload":"2023-12-05T22:20:41.368404-08:00","document_number":"21","attachment_number":1,"pacer_doc_id":"179043085328","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Appendix with declarations and exhibits","acms_document_guid":""}],"date_created":"2023-07-07T17:30:01.831816-07:00","date_modified":"2025-01-22T07:03:24.510012-08:00","date_filed":"2023-07-07","time_filed":"19:26:33","entry_number":21,"recap_sequence_number":"2023-07-07.001","pacer_sequence_number":56,"description":"REPLY in Support of 17 MOTION to Dismiss 1 Complaint, filed by Lancium LLC. (Attachments: # 1 Appendix with declarations and exhibits)(Valenzuela, Daniel) (Entered: 07/07/2023)","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/348217444/","id":348217444,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/354653688/","id":354653688,"tags":[],"absolute_url":"/docket/67396788/20/obm-inc-v-lancium-llc/","date_created":"2023-06-30T12:23:03.279271-07:00","date_modified":"2025-01-22T07:03:24.347443-08:00","sha1":"6c1ebf3f58ad01d20f9172e118a72184fac2fc86","page_count":31,"file_size":328915,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.0.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.0.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 1 of 31\n\n\n\n\n IN THE UNITED STATES DISTRICT COURT\n SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\nOBM, INC.,\n\n Plaintiff, Civil Action No: 4:23-cv-01798\n\nv. JURY TRIAL DEMANDED\n\nLANCIUM LLC,\n\n Defendant.\n\n\n\n PLAINTIFF OBM, INC.\u2019S RESPONSE IN OPPOSITION TO\n DEFENDANT LANCIUM LLC\u2019S MOTION TO DISMISS\nFOR LACK OF SUBJECT MATTER / DECLARATORY JUDGMENT JURISDICTION\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 2 of 31\n\n\n\n\n TABLE OF CONTENTS\n\nI. SUMMARY OF ARGUMENT ...........................................................................................1\n\nII. STATEMENT OF ISSUES .................................................................................................3\n\nIII. NATURE AND STAGE OF THE PROCEEDINGS ..........................................................4\n\nIV. STATEMENT OF RELEVANT FACTS ............................................................................4\n\n A. OBM\u2019s Foreman Software .......................................................................................4\n\n B. History Between OBM and Lancium ......................................................................5\n\n C. Lancium\u2019s Litigation History...................................................................................9\n\nV. LEGAL STANDARD........................................................................................................10\n\nVI. ARGUMENT .....................................................................................................................12\n\n A. Lancium Affirmatively Acted to Enforce Its Patent Rights Against\n Lancium .................................................................................................................13\n\n 1. Lancium\u2019s Affirmative Acts Alleging Infringement .................................13\n\n 2. There are no \u201cmagic words\u201d to confer declaratory judgment\n jurisdiction .................................................................................................19\n\n 3. Whether a patentee has conducted an infringement investigation is\n irrelevant to declaratory judgment jurisdiction ..........................................21\n\n 4. Lancium\u2019s litigation history supports a finding of declaratory\n judgment jurisdiction .................................................................................23\n\n B. The Court Should Use Its Discretion to Hear OBM\u2019s Declaratory Judgment\n Action and Deny Lancium\u2019s Motion to Dismiss ...................................................24\n\nVII. CONCLUSION ..................................................................................................................25\n\n\n\n\n i\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 3 of 31\n\n\n\n\n TABLE OF AUTHORITIES\n\nCases\n\nABB Inc. v. Cooper Indus.,\n LLC, 635 F.3d 1345 (Fed. Cir. 2011)................................................................................ 11\n\nArkema Inc. v. Honeywell Int\u2019l, Inc.,\n 706 F.3d 1351 (Fed. Cir. 2013)........................................................................................ 19\n\nArris Grp., Inc. v. British Telecomms. PLC,\n 639 F.3d 1368 (Fed. Cir. 2011)........................................................................................ 19\n\nArrowhead Indus. Water, Inc. v. Ecolochem, Inc.,\n 846 F.2d 731 (Fed. Cir. 1988).......................................................................................... 18\n\nAsia Vital Components Co., Ltd. v. Asetek Danmark A/S,\n 837 F.3d 1249 (Fed. Cir. 2016)........................................................................................ 11\n\nBearBox LLC v. Lancium LLC,\n No. 1:21-cv-00534-GBW-CJB, Dkt. 1 (D. Del. Apr. 14, 2021) ........................................ 9\n\nCapo, Inc. v. Dioptics Med. Prods., Inc.,\n 387 F.3d 1352 (Fed. Cir. 2004)........................................................................................ 24\n\nChoice Inc. of Tex. v. Greenstein,\n 691 F.3d 710 (5th Cir. 2012) ........................................................................................... 12\n\nDanisco U.S. Inc. v. Novozymes A/S,\n 744 F.3d 1325 (Fed. Cir. 2014).................................................................................. 18, 20\n\nGabriel v. City of Plano,\n 202 F.3d 741 (5th Cir. 2000) ............................................................................................. 3\n\nGenentech v. Eli Lilly & Co.,\n 998 F.2d 931 (Fed. Cir. 1993).......................................................................................... 24\n\nGlob. Tubing LLC v. Tenaris Coiled Tubes LLC,\n No. 4:17-CV-3299, 2018 WL 3496739 (S.D. Tex. July 20, 2018) ................................. 16\n\nGoodyear Tire & Rubber Co. v. Releasomers, Inc.,\n 824 F.2d 953 (Fed. Cir. 1987).......................................................................................... 24\n\nHewlett-Packard Co. v. Acceleron LLC,\n 587 F.3d 1358 (Fed. Cir. 2009)................................................................................. passim\n\nInnovative Therapies, Inc. v. Kinetic Concepts, Inc.,\n 599 F.3d 1377 (Fed. Cir. 2010)........................................................................................ 23\n\n\n ii\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 4 of 31\n\n\n\n\nJD Fields & Co., Inc. v. Sheet Pile LLC,\n No. 4:20-CV-01411, 2021 WL 3813357 (S.D. Tex. Aug. 24, 2021) .............................. 11\n\nKmart Corp. v. Key Indus., Inc.,\n 877 F. Supp. 1048 (E.D. Mich. 1994) ........................................................................ 12, 20\n\nKnauf Insulation, Inc. v. Rockwool Int\u2019l A/S,\n 788 F. App\u2019x 728 (Fed. Cir. 2019) ................................................................................... 19\n\nLancium LLC v. Layer1 Techs., Inc.,\n No. 6:20-cv-739-ADA, Dkt. 1 (W.D. Tex. Aug. 14, 2020) ............................................... 9\n\nLancium LLC v. U.S. Data Mining Group, Inc. d/b/a US Bitcoin,\n No. 6:23-CV-00344-KC, Dkt. 1 (W.D. Tex. May 10, 2023)........................................... 10\n\nMedImmune, Inc. v. Genentech, Inc.,\n 549 U.S. 118 (2007) .................................................................................................. 10, 11\n\nMicron Tech., Inc. v. Mosaid Techs., Inc.,\n 518 F.3d 897 (Fed. Cir. 2008 ..................................................................................... 23, 24\n\nPharmaNet, Inc. v. DataSci Liab. Co.,\n No. 3:08-cv-02965-GEB-DEA, 2009 WL 396180 (D.N.J. Feb. 17, 2009) ..................... 23\n\nRevolution Eyewear, Inc. v. Aspex Eyewear, Inc.,\n 556 F.3d 1294 (Fed. Cir. 2009)........................................................................................ 22\n\nSanDisk Corp. v. STMicroelectronics, Inc.,\n 480 F.3d 1372 (Fed. Cir. 2007) ................................................................... 11, 17, 20, 24\n\nSuperior MRI Servs., Inc. v. All. Healthcare Servs., Inc.,\n 778 F.3d 502 (5th Cir. 2015) ........................................................................................... 12\n\nRules\n\nFederal Rule of Civil Procedure 12(b)(1) ................................................................................. 4, 11\n\n\n\n\n iii\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 5 of 31\n\n\n\n\n Plaintiff OBM, Inc. (\u201cOBM\u201d) submits this response in opposition to Defendant Lancium\n\n LLC\u2019s (\u201cLancium\u201d) Motion to Dismiss for Lack of Subject Matter / Declaratory Judgment\n\n Jurisdiction (Dkt. 17, \u201cMotion\u201d).\n\nI. SUMMARY OF ARGUMENT\n\n Lancium\u2019s Motion paints an obscure view of the facts by both omitting key pieces of the\n\n puzzle and including irrelevant emails to concoct some sort of Taylor Swift exception to the\n\n Declaratory Judgment Act, whereby any off-topic discussion is evidence that there is no justiciable\n\n case and controversy. Rather than look at the totality of circumstances as the law commands,\n\n Lancium tries to isolate and downplay each individual event. This is part of Lancium\u2019s strategy\n\n of failing to take responsibility for its affirmative actions that gave rise to this lawsuit.\n\n OBM and Lancium have adverse legal interests and a substantial, real, and immediate\n\n controversy about noninfringement for the Court to resolve. As shown in the Complaint and the\n\n attached supporting declaration, Lancium (1) accused OBM\u2019s customers of infringing its patents;\n\n (2) had its IP litigation counsel\u2014the same counsel involved in prior patent enforcement campaigns\n\n involving U.S. Patent No. 10,608,433 (the \u201c\u2019433 Patent\u201d or \u201cPatent-in-Suit\u201d)\u2014send a letter, dated\n\n April 3, 2023, to OBM specifically identifying the \u2019433 Patent and OBM\u2019s Foreman software and\n\n stating that \u201c[b]ased on publicly available information . . . the functionality of [OBM\u2019s] Foreman\n\n Software may relate to the subject matter\u201d of the \u2019433 Patent (referred to hereafter as the \u201cApril\n\n 3rd letter\u201d); (3) for months, and in the midst of its repeated infringement allegations, refused to\n\n provide any business terms to OBM; (4) finally offered \u201cbusiness terms\u201d that would preclude OBM\n\n from continuing to offer CLR compliance functionality to its customers and split revenues 90/10\n\n in Lancium\u2019s favor; and (5) has a history of asserting the Patent-in-Suit against cryptocurrency\n\n companies. Furthermore, after receiving Lancium\u2019s April 3rd letter, OBM\u2014on the very next\n\n\n\n\n 1\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 6 of 31\n\n\n\n\nday\u2014disabled the CLR compliance functionality in its Foreman software. Declaration of Daniel\n\nLawrence (\u201cLawrence Decl.\u201d) \u00b6 20.1 OBM wants to re-enable CLR compliance functionality but\n\ncannot do so under the threat of a lawsuit accusing it or its clients of infringing the \u2019433 Patent.\n\nId. When OBM disabled the CLR compliance functionality it was in the midst of assisting a client\n\nwith testing to become CLR compliant. The client made multiple requests to OBM to re-enable\n\nthe functionality. Id. \u00b6 21. Lancium\u2019s threats have forced OBM to disable functionality, which\n\nhas caused harm to OBM\u2019s customer relationships. Accordingly, there is plainly a substantial\n\ncontroversy between OBM and Lancium sufficient to warrant declaratory judgment and there is\n\nno basis for declining jurisdiction.\n\n Lancium\u2019s Motion asks the Court to ignore these circumstances by arguing that it was\n\nunreasonable for OBM to believe there was a threat of litigation because of \u201clegitimate business\n\nnegotiations\u201d between the parties. Dkt. 17 at 3. This is simply not true. In fact, Lancium\u2019s\n\n\u201clegitimate business negotiations\u201d argument is belied by Lancium\u2019s own actions. For instance,\n\nLancium request that its IP litigation counsel send the April 3rd letter and the content of the letter\n\nshow that there were no legitimate business negotiations between the parties prior to April 3, 2023.\n\nAnd after OBM responded to Lancium\u2019s April 3rd letter, Lancium strung OBM along for several\n\nweeks by making vague offers of negotiations in which Lancium refused to offer any concrete\n\nbusiness terms. Such a blatant mischaracterization of the parties\u2019 prior interactions by Lancium\n\ncannot be used to defeat OBM\u2019s request for declaratory relief.\n\n Despite Lancium\u2019s attempts to avoid \u201cmagic words\u201d such as \u201clitigation\u201d or \u201cinfringement\u201d\n\nin its April 3rd letter and spin Lancium\u2019s threats and OBM\u2019s attempts to secure a resolution as\n\n\n\n1\n References to the Lawrence Declaration herein refer to the Declaration of Daniel Lawrence in\nSupport of OBM\u2019s Response in Opposition to Defendant\u2019s Motion to Dismiss filed\ncontemporaneously herewith.\n\n 2\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 7 of 31\n\n\n\n\n friendly, the totality of the circumstances show that Lancium has taken affirmative actions to\n\n enforce the \u2019433 Patent against OBM. OBM\u2019s declaratory judgment action seeks a declaration\n\n that its Foreman software, which includes the CLR compliance functionality it desires to enable,\n\n does not infringe Lancium\u2019s \u2019433 Patent. Under these circumstances, the Court plainly has\n\n jurisdiction to grant OBM\u2019s declaratory relief.\n\nII. STATEMENT OF ISSUES\n\n Whether this Court has jurisdiction over OBM\u2019s suit for a declaration of non-infringement\n\n of the \u2019433 Patent, where: (1) Lancium made an express charge that OBM\u2019s customers using\n\n OBM\u2019s Foreman software infringe Lancium\u2019s patents; (2) Lancium\u2019s IP litigation counsel sent a\n\n letter to OBM identifying OBM\u2019s Foreman software and the \u2019433 Patent and stated that the\n\n Foreman software may relate to the \u2019433 Patent, and requested OBM respond; (3) Lancium offered\n\n one-sided business terms that would force OBM from offering certain functionality within the\n\n Foreman software; and (4) Lancium has a history of enforcing the \u2019433 Patent against companies\n\n similar to OBM in the cryptocurrency industry.\n\n Whether this Court should decline to exercise its broad discretion where: (1) Lancium has\n\n not offered a well-founded reason for declining jurisdiction; and (2) an actual controversy exists\n\n because OBM desires to re-enable to functionality in the Foreman software that has been accused\n\n of infringement and OBM has the right to resolve this dispute.\n\n A district court\u2019s decision regarding declaratory relief is reviewed for abuse of discretion.\n\n Gabriel v. City of Plano, 202 F.3d 741, 744 (5th Cir. 2000).\n\n\n\n\n 3\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 8 of 31\n\n\n\n\nIII. NATURE AND STAGE OF THE PROCEEDINGS\n\n OBM filed its Complaint for Declaratory Judgment of Non-infringement of the \u2019433 Patent\n\n on May 16, 2023. Dkt. 1. On June 9, 2023, Lancium filed its Motion to Dismiss under Federal\n\n Rule of Civil Procedure 12(b)(1) for lack of subject-matter jurisdiction. Dkt. 17.\n\nIV. STATEMENT OF RELEVANT FACTS\n\n A. OBM\u2019s Foreman Software\n\n Since 2018, OBM has been providing software solutions to cryptocurrency companies\n\n through its software management program, Foreman. Foreman provides for the remote monitoring\n\n and management of virtually all aspects of cryptocurrency mining operations. Foreman further\n\n offers site and farm visualization, reporting and diagnostics, security auditing, and integrations\n\n with non-miner devices (such as network switches, PDUs, cooling towers, etc.). Cryptocurrency\n\n mining is an energy-intensive process, so many cryptocurrency companies have made attempts to\n\n reduce energy cost, which would, in turn, increase the value of the mined cryptocurrency. Many\n\n cryptocurrency companies operating in Texas have also begun participating in the many energy\n\n curtailment programs offered by the Electric Reliability Council of Texas (\u201cERCOT\u201d) by\n\n participating in Demand Response, which preserves ERCOT system reliability and mitigates price\n\n spikes by collaborating with market participants who have the ability to reduce or modify energy\n\n use in response to instructions or signals. Companies that want to participate in Demand Response\n\n can qualify and register as a Controllable Load Resource (\u201cCLR\u201d), which is a load resource capable\n\n of controllably reducing or increasing consumption under Dispatch control by ERCOT. To meet\n\n the energy curtailment demands of its customers, Foreman has a \u201cPower Control\u201d feature that\n\n provides a customer with the ability to adjust its energy consumption at a site to a specific\n\n megawatt (MW) target. Foreman also has the functionality to assist its Texas customers in passing\n\n ERCOT\u2019s SCED qualification test.\n\n\n 4\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 9 of 31\n\n\n\n\n Beginning in August 2022, Foreman also assisted customers in passing compliance testing\n\nfor ERCOT. Lawrence Decl. \u00b6 5. OBM successfully assisted one customer in becoming CLR\n\ncompliant and was in the process of assisting another customer (\u201cCustomer 2\u201d) in obtaining the\n\nCLR designation with ERCOT. Id. \u00b6\u00b6 7-8, 14. However, due to the litigation threats from\n\nLancium, on April 4, 2023, OBM was forced to pause the CLR compliance functionality. Id. \u00b6\n\n20. The pausing of Foreman\u2019s CLR compliance functionality negatively impacted Customer 2\n\nand curtailed Foreman\u2019s pursuit of additional customers. Id. \u00b6\u00b6 21-22.\n\n B. History Between OBM and Lancium\n\n On November 17, 2022, Mr. Ian Rock, Lancium\u2019s Vice President of IT Operations,\n\ncoordinated a meeting with Mr. Daniel Lawrence, OBM\u2019s founder and CEO, at the Texas\n\nBlockchain Summit. Lawrence Decl. \u00b6 12. Mr. Rock and Mr. Ray Cline, Lancium\u2019s Chief\n\nTechnology Officer, attended the meeting on behalf of Lancium. Id. In that meeting, Mr. Rock\n\nexplicitly charged that \u201ccustomers using [OBM\u2019s Foreman software] could be infringing on\n\nLancium\u2019s patents.\u201d Id.; Dkt. 1 \u00b6 22. Mr. Lawrence was immediately concerned and felt\n\nthreatened. Lawrence Decl. \u00b6 12. After issuing the threat, Mr. Rock then discussed how OBM\n\nand Lancium were both running software in the same facility through a common customer and\n\nhow OBM and Lancium should meet and discuss going to market together since CLR and energy\n\nmanagement was Lancium\u2019s specialty and OBM was \u201cundervaluing\u201d energy management by\n\noffering it for a lower price. Id.\n\n After Mr. Rock\u2019s threat, Mr. Lawrence was, understandably, concerned about being sued\n\nfor patent infringement. Id. Following the Texas Blockchain Summit in January 2023, OBM\n\ndecided to sign a limited NDA to show good faith to provide Lancium with access to OBM\u2019s SOC\n\n2 report in an attempt to avoid litigation. Id. \u00b6 13.\n\n\n\n\n 5\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 10 of 31\n\n\n\n\n On March 28, 2023, Mr. Lawrence was featured on the Compass Mining podcast, the\n\nMining Pod, where he discussed the upcoming CLR capabilities of OBM\u2019s Foreman software. Id.\n\n\u00b6 16. On the same day, Mr. Rock reached out to OBM requesting that the parties discuss business\n\nterms. Id. On April 3, 2023, Mr. Rock again reached out to OBM requesting that the parties\n\ndiscuss business terms. Id. \u00b6 17.\n\n Despite not providing OBM with business terms from November 2022 until April 2023,\n\nLancium apparently believed OBM\u2019s six-day delay in responding necessitated yet another\n\ninfringement allegation. On April 3, 2023, Lancium\u2019s IP litigation counsel, Kurt W. Rohde with\n\nBarnes & Thornburg LLP, sent a letter to Mr. Lawrence. Dkt. 1-2. Of note, Mr. Rohde\u2019s company\n\nprofile on Barnes & Thornburg\u2019s website states that Mr. Rohde has \u201cover 14 years focused in\n\ncomplex patent litigation [and] regularly serves as patent trial counsel for multibillion dollar\n\ncorporations.\u201d Ex. 1.2 Further, Barnes & Thornburg represents Lancium in the patent litigation\n\nsuits relating to the \u2019433 Patent. The April 3rd letter states:\n\n My client Lancium Inc. has become aware of your activities providing\n cryptocurrency miner management software through your www.foreman.mn\n domain. As you likely know, Lancium is an energy technology and\n infrastructure company that advances the decarbonization and stability of the\n electric power grid. Since 2017, Lancium has developed numerous\n technologies for balancing and stabilizing the power grid through, for example, load\n management of datacenters via the Lancium Smart ResponseTM technology. To\n date, Lancium has obtained over 25 patents relating to the technology it has\n developed. Based on publicly available information, it is possible that the\n functionality of your Foreman Software may relate to the subject matter of\n patented technology developed by Lancium. As an example, I would like to direct\n your attention to U.S. Patent No. 10,608,433, attached here for your convenience.\n\n I understand my client has attempted to reach out to you numerous times\n to discuss your software but you have not responded. I ask that you please\n contact Ian Rock, Lancium\u2019s Vice President IT Operations, at\n ian.rock@lancium.com, so that we can have a productive conversation. My client\n\n\n2\n Documents referred to as \u201cExhibits\u201d herein are submitted as exhibits to the Declaration of Rodney\nMiller in Support of OBM\u2019s Response in Opposition to Defendant\u2019s Motion to Dismiss.\n\n\n 6\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 11 of 31\n\n\n\n\n is receptive to commercial opportunities for collaboration and is certainly willing\n to discuss this further.\n\nDkt. 1-2 (emphasis added). To be sure, this letter was carefully worded to try to defeat declaratory\n\njudgment jurisdiction by avoiding the use of \u201cmagic words\u201d but as discussed below, a threat does\n\nnot need to use the words \u201clitigation\u201d or \u201cinfringement\u201d to constitute the threat it so clearly intends\n\nto be.\n\n On April 4, 2023, Mr. Lawrence disabled the CLR functionality within Foreman and\n\nreluctantly replied to Mr. Rock\u2019s prior emails requesting that the parties coordinate a meeting.\n\nLawrence Decl. \u00b6\u00b6 18, 20. Shortly thereafter, Mr. Lawrence and Mr. Rock met to discuss the April\n\n3rd letter. Id. \u00b6 19. During the meeting, Mr. Rock stated that he would follow-up soon with\n\nLancium\u2019s proposed business terms. Id. Despite what Lancium\u2019s Motion implies were friendly\n\nbusiness negotiations between Lancium and OBM, even after threatening OBM again, Lancium\n\nspent the next several weeks promising to provide OBM with a copy of the proposed business\n\nopportunity referenced in its attorney\u2019s April 3rd letter. Id. \u00b6\u00b6 19, 25, 27.\n\n On April 5, 2023, Mr. Lawrence had a phone conversation with Michael McNamara, CEO\n\nof Lancium. Id. \u00b6 23. Mr. McNamara did not present Mr. Lawrence with Lancium\u2019s proposed\n\nbusiness terms. Id. After not receiving Lancium\u2019s proposed terms, on April 17, 2023, Mr.\n\nLawrence reached out to Mr. Rock to inquire about the status. Id. \u00b6 24. Scott McFarland,\n\nLancium\u2019s CRO, responded in Mr. Rock\u2019s place requesting that the two have meeting. Id.\n\n On April 26, 2023, Mr. Lawrence and Mr. McFarland had a virtual meet and greet. Id. \u00b6\n\n25. Mr. McFarland still did not present Mr. Lawrence with Lancium\u2019s proposed business terms.\n\nId.\n\n Nevertheless, feeling that Lancium was using the April 3rd letter and the prolonged\n\ndiscussions with no proposed business terms, to protect OBM and its clients, on May 2, 2023,\n\n\n\n 7\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 12 of 31\n\n\n\n\nOBM\u2019s outside counsel sent a letter to Mr. Rohde stating that OBM did not infringe the \u2019433 Patent\n\nand that Lancium has failed to proposed business terms as suggested in the April 3rd letter. Id. \u00b6\n\n26. The same day, Mr. McFarland reached out to arrange a meeting with Mr. Lawrence. Id. \u00b6 27.\n\n On May 4, 2023, Mr. Lawrence and Mr. McFarland met and within the first two minutes\n\nof the call, Mr. McFarland stated that \u201cit\u2019s obvious that we\u2019re both trying to avoid litigation,\u201d\n\nimplying that Lancium has intentions to sue. Id. Mr. McFarland then stated that he would draft\n\nthe business terms while on a trip at the DC World conference. Id.\n\n On May 9, 2023, Mr. Lawrence and Mr. McFarland had a telephone call to discuss\n\nLancium\u2019s business terms. Id. \u00b6 28. During the call, Mr. McFarland proposed terms in which all\n\nof OBM\u2019s CLR revenue would be split 90/10, with 90% of the revenue being giving to Lancium.\n\nId. Mr. McFarland also stated that Lancium intended to start pushing into other energy curtailment\n\nmarkets outside of Texas and that Lancium was targeting customers that exceed 50 MW. Id. When\n\nMr. Lawrence asked what would happen with customers under 50 MW, or customers that cannot\n\nparticipate in CLR based on their load profile, Mr. McFarland stated that \u201c[Lancium] could\n\nprobably build a cloud connector where [it] integrate[s] with the CSPs and send[s] the signal to\n\nturn on/off to Foreman.\u201d Id. In other words, Lancium would not be providing services to\n\ncustomers with lower load profiles and Foreman\u2019s Demand Response CLR functionality would\n\nhave to be integrated with Lancium. Id.\n\n Lancium\u2019s Motion leans heavily into the argument that there were ongoing business\n\ndiscussions, but the facts show that OBM justifiably believed further negotiations were pointless\n\nand that Lancium would accept nothing short of OBM\u2019s capitulation. The facts also show that\n\nLancium, more than once, accused OBM of infringing the \u2019433 Patent, and that in response to the\n\nallegations of infringement OBM disabled the Demand Response CLR functionality of Foreman.\n\n\n\n\n 8\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 13 of 31\n\n\n\n\nThe facts further show that, after a months-long delay in which OBM was under threat of being\n\nsued, Lancium finally offered terms that would have forced OBM to modify its product and\n\nabandon ERCOT and other managed energy markets.\n\n C. Lancium\u2019s Litigation History\n\n Lancium is litigious and its firm of choice is Barnes & Thornburg\u2014the firm that sent the\n\nApril 3rd threat letter to OBM. In 2020, Barnes & Thornburg filed a patent infringement suit on\n\nbehalf of Lancium against Layer1 Technologies, Inc., alleging infringement of the \u2019433 Patent.\n\nLancium LLC v. Layer1 Techs., Inc., No. 6:20-cv-739-ADA, Dkt. 1 (W.D. Tex. Aug. 14, 2020).\n\n In 2021, BearBox LLC sued Lancium, alleging that BearBox\u2019s founder, Austin Storms,\n\nwas the true inventor of the \u2019433 Patent. BearBox LLC v. Lancium LLC, No. 1:21-cv-00534-\n\nGBW-CJB, Dkt. 1 (D. Del. Apr. 14, 2021). Lancium, once again represented by Barnes &\n\nThornburg, prevailed in the litigation with the court finding BearBox did not satisfy its burden of\n\nproving Mr. Storms was the inventor. BearBox LLC v. Lancium LLC, No. 1:21-cv-00534-GBW-\n\nCJB, Dkt. 262 (D. Del. Mar. 6, 2023). On March 7, 2023, the day after the court\u2019s finding,\n\nLancium issued a press release about the case and threatened that \u201cLancium intends to continue\n\naggressively defending its intellectual property as well as the technologies the company develops\n\nand commercializes.\u201d Ex. 2 at 2. Lancium also touted its spending of \u201cmillions of dollars and\n\nyears of effort to develop\u201d its product and how the court\u2019s decision \u201cfurther confirms the strength\n\nand value of [its] patented technology.\u201d Id.\n\n True to its word, Lancium did not wait long\u2014three days to be exact\u2014to file patent\n\ninfringement lawsuits asserting the \u2019433 Patent and other Lancium patents against multiple\n\ncryptocurrency software companies. A May 10, 2023 complaint\u2014filed by Barnes & Thornburg\u2014\n\naccused US Data King Mountain LLC, U.S. Data Mining Group, Inc., and US Mining\n\nInfrastructure Operations, LLC, of infringing the \u2019433 Patent. Dkt. 1 \u00b6 19; Lancium LLC v. U.S.\n\n\n 9\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 14 of 31\n\n\n\n\n Data Mining Group, Inc. d/b/a US Bitcoin, No. 6:23-CV-00344-KC, Dkt. 1 (W.D. Tex. May 10,\n\n 2023).\n\n In addition to the filed lawsuits as alleged in the Complaint, OBM is aware of multiple\n\n cryptocurrency software companies that are considering assisting its customers in participating in\n\n ERCOT\u2019s energy curtailment programs and qualifying and participating as a CLR with ERCOT\n\n have been approached by Lancium with threats of enforcing the \u2019433 Patent. Dkt. 1 \u00b6 20;\n\n Lawrence Decl. \u00b6 30.\n\n Having been threatened with litigation against its customer and core software product, and\n\n given Lancium\u2019s litigation campaign involving the \u2019433 Patent, OBM filed this declaratory\n\n judgment action seeking a declaration that the Foreman software identified Lancium\u2019s April 3rd\n\n letter and referenced during the November 17, 2022, meeting does not infringe the \u2019433 Patent\n\n identified in the letter.\n\nV. LEGAL STANDARD\n\n The Declaratory Judgment Act provides that, \u201c[i]n a case of actual controversy within its\n\n jurisdiction, [with irrelevant exceptions], any court of the United States, upon the filing of an\n\n appropriate pleading, may declare the rights and other legal relations of any interested party\n\n seeking such declaration, whether or not further relief is or could be sought.\u201d 28 U.S.C. \u00a7\n\n 2201(a). The test for whether a declaratory judgment action satisfies the case or controversy\n\n requirement of Article III of the Constitution \u201cis whether the facts alleged, under all the\n\n circumstances, show that there is a substantial controversy, between parties having adverse legal\n\n interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.\u201d\n\n MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007). MedImmune rejected the\n\n\n\n\n 10\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 15 of 31\n\n\n\n\nFederal Circuit\u2019s long-standing \u201creasonable apprehension of imminent suit\u201d test. See id. at 132\n\nn.11.\n\n In post-MedImmune cases, the Federal Circuit recognized that \u201cMedImmune rejected\n\n[the] prior, more stringent standard\u201d in favor of a more lenient test. ABB Inc. v. Cooper Indus.,\n\nLLC, 635 F.3d 1345, 1348 (Fed. Cir. 2011). Quoting MedImmune, the Federal Circuit has\n\nexplained that \u201cthe declaratory judgment procedure is an alternative to pursuit of the arguably\n\nillegal activity\u201d and that \u201cputting the challenger to the choice between abandoning his rights\n\nor risking prosecution\u2014is a dilemma that it was the very purpose of the Declaratory Judgment Act\n\nto ameliorate.\u201d SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1378-79 (Fed.\n\nCir. 2007).\n\n Since MedImmune, a plaintiff bringing a declaratory judgment action in the patent context\n\ncan satisfy the case or controversy requirement by alleging facts that show: (1) conduct by the\n\ndefendant that can reasonably be inferred as demonstrating the intent to enforce a patent; and (2) a\n\nreal and immediate threat of a lawsuit against the plaintiff based on a product that allegedly\n\ninfringes the defendant\u2019s patent. JD Fields & Co., Inc. v. Sheet Pile LLC, No. 4:20-CV-01411,\n\n2021 WL 3813357, at *5 (S.D. Tex. Aug. 24, 2021) (citing Asia Vital Components Co., Ltd. v.\n\nAsetek Danmark A/S, 837 F.3d 1249, 1254-55 (Fed. Cir. 2016)).\n\n Importantly, \u201c[t]he purpose of a declaratory judgment action cannot be defeated simply by\n\nthe stratagem of a correspondence that avoids the magic words such as \u2018litigation\u2019 or\n\n\u2018infringement.\u2019\u201d Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358, 1362 (Fed. Cir. 2009).\n\nWhere a patentee alleges a patent is \u201crelevant\u201d to a party\u2019s product and tries to prevent the party\n\nfrom filing suit, declaratory judgment jurisdiction exists. Id. at 1363. Declaratory judgment\n\njurisdiction is also appropriate when a declaratory judgment plaintiff believes further negotiations\n\n\n\n\n 11\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 16 of 31\n\n\n\n\n are fruitless and the patentee is seeking \u201cnothing short of total capitulation.\u201d Kmart Corp. v. Key\n\n Indus., Inc., 877 F. Supp. 1048, 1054 (E.D. Mich. 1994).\n\n Furthermore, a Rule 12(b)(1) motion like Lancium\u2019s presents the Court with a factual\n\n dispute since it includes affidavits. Superior MRI Servs., Inc. v. All. Healthcare Servs., Inc., 778\n\n F.3d 502, 504 (5th Cir. 2015) (citation omitted). \u201cTo defeat a factual attack, a plaintiff must prove\n\n the existence of subject-matter jurisdiction by a preponderance of the evidence and is obliged to\n\n submit facts through some evidentiary method to sustain his burden of proof.\u201d Id. (quotations and\n\n citations omitted). In determining whether the plaintiff has met its burden, the court may rely on\n\n pleaded and undisputed facts or on findings that resolve factual disputes. See Choice Inc. of Tex.\n\n v. Greenstein, 691 F.3d 710, 714 (5th Cir. 2012). Pursuant to Fifth Circuit precedent:\n\n [T]he district court is to accept as true the allegations and facts set forth in the\n complaint. Additionally, the district court is empowered to consider matters of fact\n which may be in dispute. The district court consequently has the power to dismiss\n for lack of subject matter jurisdiction on any one of three separate bases: (1) the\n complaint alone; (2) the complaint supplemented by undisputed facts evidenced in\n the record; or (3) the complaint supplemented by undisputed facts plus the court\u2019s\n resolution of disputed facts.\n\n Id. (citation omitted). However, a \u201cmotion to dismiss for lack of subject matter jurisdiction should\n\n be granted only if it appears certain that the plaintiff cannot prove any set of facts in support of his\n\n claim that would entitle plaintiff to relief.\u201d Id. (citation omitted and emphasis added).\n\nVI. ARGUMENT\n\n The facts OBM alleges in its complaint and the accompanying declaration of Mr. Lawrence\n\n demonstrate there is a substantial controversy between Lancium and OBM regarding OBM\u2019s right\n\n to continue offering the Demand Response CLR functionality in its Foreman software. First, the\n\n adversity arises from Lancium\u2019s affirmative acts of explicitly accusing OBM\u2019s customers of\n\n infringing its patents, having its litigation counsel send the April 3rd letter accusing OBM\u2019s\n\n\n\n\n 12\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 17 of 31\n\n\n\n\nForeman software of infringing the \u2019433 Patent, offering business terms that would preclude OBM\n\nfrom offering Demand Response CLR functionality in its Foreman software, and Lancium\u2019s\n\nhistory of enforcing its patents through litigation against other crypto-mining companies. Second,\n\nthe parties\u2019 controversy is real and immediate because OBM was selling the Foreman software\n\nwith the CLR functionality prior to the filing of its complaint and immediately disabled this\n\nfunctionality after the threatened litigation. OBM, however, desires to reenable the CLR\n\nfunctionality in Foreman. Finally, the Court\u2019s exercise of jurisdiction comports with the purposes\n\nof the Declaratory Judgment Act, and the circumstances do not justify a discretionary denial of\n\njurisdiction.\n\n A. Lancium Affirmatively Acted to Enforce Its Patent Rights Against Lancium\n\n The totality of circumstances demonstrate that Lancium affirmatively acted in a manner\n\nthat can be reasonably inferred as demonstrating intent to enforce the \u2019433 Patent against OBM\u2019s\n\nForeman software product, giving rise to an actual controversy between the parties. All of the\n\nfollowing circumstances support this conclusion: (1) Lancium\u2019s implied threat of litigation against\n\nOBM and its customers; (2) OBM\u2019s removal of CLR functionality in Foreman; (3) Lancium\u2019s\n\noffer of business terms that preclude OBM from offering its CLR functionality; and (4) Lancium\u2019s\n\nprior litigious conduct.\n\n 1. Lancium\u2019s Affirmative Acts Alleging Infringement\n Lancium alleged infringement orally from its representatives and in writing from its IP\n\nlitigation counsel. Lancium\u2019s Motion attempts to distract from these facts by focusing on\n\nirrelevant emails from Mr. Lawrence. Lancium makes much of the email from Mr. Lawrence\n\nwhere he mentions attending a Taylor Swift concert, meriting four separate mentions in the\n\nMotion. But there is no Taylor Swift exception to the Declaratory Judgment Act. Lancium is\n\nfalsely implying that any correspondence from an accused that does not display abject terror at the\n\n\n 13\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 18 of 31\n\n\n\n\npossibility of being sued means that the party did not have any such fear. That is not the law and\n\nLancium cites no case supporting its argument.\n\n As alleged in the Complaint, in November of 2022, Mr. Rock told Mr. Lawrence that\n\nOBM\u2019s clients use of Foreman to become CLR compliant could be infringing on one or more of\n\nLancium\u2019s patents and that OBM was \u201cundervaluing\u201d its energy management by offering it for a\n\nlower price than Lancium. Dkt. 1 \u00b6 22; Lawrence Decl. \u00b6 12. Lancium attempts to offer its one-\n\nsided story of the November 2022 meeting through the declaration of Mr. Rock, alleging that Mr.\n\nRock \u201cdid not mention patents, let alone infringement, during this meeting.\u201d Dkt. 17-2 at 21, Rock\n\nDecl. \u00b6 8. But this is not true. Lawrence Decl. \u00b6 12. Rather, Mr. Lawrence\u2019s account of Mr.\n\nRock\u2019s statements regarding OBM\u2019s clients is consistent with its boastful declaration of how\n\n\u201cLancium was the only one with a software solution to get clients certified as CLR assets\u201d and\n\nCLR projects is Lacnium\u2019s \u201cexpertise.\u201d Dkt. 17-2 at 19-21, Rock Decl. \u00b6\u00b6 4, 8. Moreover, Mr.\n\nRock\u2019s account that he allegedly \u201cdid not mention patents, let alone infringement\u201d is inconsistent\n\nwith Lancium\u2019s actions, including Lancium\u2019s statement in a press release that it intended to\n\n\u201ccontinue aggressively defending its intellectual property,\u201d Ex. 2 at 2, and Lancium\u2019s April 3rd\n\nletter alleging infringement of the \u2019433 Patent by OBM\u2019s Foreman software. Indeed, Mr. Cline,\n\nwho also participated in the Texas Blockchain Summit in November 2022 admitted to telling Mr.\n\nLawrence: \u201cwe have an extensive set of patents and intellectual property covering our products\n\nand services and . . . we strongly protect our intellectual property.\u201d Dkt. 17-2 at 6, Cline Decl. \u00b6\n\n4. Therefore, Mr. Rock commenting on how OBM\u2019s customers could infringe Lancium\u2019s patents\n\nis completely consistent with both Lancium\u2019s statements in press releases and by its CTO that\n\nLancium aggressively enforces its IP.\n\n\n\n\n 14\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 19 of 31\n\n\n\n\n After OBM was featured on the Compass Mining podcast where it discussed the CLR\n\ncapabilities of Foreman on March 28, 2023, Mr. Rock sent an email, dated April 3, 2023, to Mr.\n\nLawrence stating:\n\n I reached out again last week in an endeavor to see if we could get\n together to discuss Foreman and Lancium business. Hoping you can\n get back to me but in the meantime we will send a letter over to you.\n\nEx. 5 at 1. Lancium aggressively followed Mr. Rock\u2019s email with a letter from Kurt W. Rohde\n\nwith Barnes & Thornburg LLP, Lancium\u2019s IP litigation counsel, stating that Lancium had formed\n\na belief, \u201c[b]ased on publicly available information\u201d that OBM\u2019s Foreman Software \u201cmay relate\n\nto the subject matter of patented technology developed by Lancium\u201d and specifically identified\n\nand attached the \u2019433 Patent. Dkt. 1-2; Dkt. 1 \u00b6 23; Hewlett-Packard, 587 F.3d at 1363 (finding\n\nthat a patentee inter alia \u201cassert[ing] a patent as \u2018relevant\u2019 to the other party\u2019s specific product\n\nline\u201d supports declaratory judgment jurisdiction). The letter also stated that Lancium \u201cattempted\n\nto reach out to [OBM] numerous times to discuss [OBM\u2019s] software but [OBM has] not\n\nresponded.\u201d Dkt. 1-2; Dkt. 1 \u00b6 23. While the letter goes on to state that Lancium is \u201creceptive to\n\ncommercial opportunities,\u201d Dkt. 1-2, Lancium was not looking to negotiate a business deal. Mr.\n\nRohde is not a business attorney; instead, Mr. Rohde has \u201cover 14 years focused in complex patent\n\nlitigation [and] regularly serves as patent trial counsel for multibillion dollar corporations.\u201d Ex. 1\n\nat 1. Further, Mr. Rohde\u2019s firm, Barnes & Thornburg, represents Lancium in both patent litigation\n\nsuits filed by Lancium relating to the \u2019433 Patent. Lancium admits that it reviewed \u201cpublicly\n\navailable information\u201d on OBM\u2019s Foreman software, indicating that Lancium devoted some effort\n\nto studying Foreman. This Court has found that a patentee\u2019s awareness of a declaratory judgment\n\nplaintiff\u2019s product and \u201cdevot[ion of] at least some effort to studying\u201d the product supports\n\ndeclaratory judgment jurisdiction. Glob. Tubing LLC v. Tenaris Coiled Tubes LLC, No. 4:17-CV-\n\n\n\n\n 15\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 20 of 31\n\n\n\n\n3299, 2018 WL 3496739, at *5 (S.D. Tex. July 20, 2018). Given this, Mr. Lawrence reasonably\n\ninterpreted the letter from Lancium\u2019s Outside IP Counsel as an intent to enforce Lancium\u2019s rights\n\nin the \u2019433 Patent against OBM. Lawrence Decl. \u00b6 17. Tellingly, none of the declarations\n\nsubmitted by Lancium mention the April 3rd letter or explain why Lancium felt the need to send\n\na letter from its IP litigation counsel to OBM in the middle of alleged \u201clegitimate business\n\nnegotiations\u201d regarding a business partnership\u2014as alleged in Lancium\u2019s Motion\u2014if it was not\n\nintending to enforce its rights in the \u2019433 Patent. The only reasonable explanation for sending the\n\nApril 3rd letter was to accuse OBM of infringing the \u2019433 Patent.\n\n On April 4, 2023, in response to the April 3rd letter, Mr. Lawrence immediately disabled\n\nthe CLR functionality of Foreman. Id. \u00b6 20. Mr. Lawrence also had a telephone conversation with\n\nMr. Rock that day. Id. \u00b6 19. At the conclusion of the meeting, Mr. Rock committed to sending\n\nbusiness terms to OBM. Id. No such business terms were provided. See Dkt. 1 \u00b6 25. After\n\nreceiving no business terms from Lancium, nearly a month later, on May 2, 2023, OBM\u2019s legal\n\ncounsel sent a letter to Lancium stating that OBM\u2019s Foreman did not infringe the \u2019433 Patent. Id.\n\n\u00b6 26; Lawrence Decl. \u00b6 26. On May 2, 2023, after the letter was sent to Lancium\u2019s counsel, Scott\n\nMcFarland, Chief Revenue Officer of Lancium, reached out to Mr. Lawrence to request another\n\nmeeting between the parties. Dkt. 1 \u00b6 27; Lawrence Decl. \u00b6 27. On May 4, 2023, Mr. Lawrence\n\nand Mr. McFarland had a conversation, during which Mr. McFarland stated that the parties were\n\n\u201cboth trying to avoid litigation.\u201d Dkt. 1 \u00b6 28; Lawrence Decl. \u00b6 27. Mr. McFarland\u2019s statement\n\nsupports declaratory judgment jurisdiction. Hewlett-Packard, 587 F.3d at 1362-63 (finding that a\n\npatentee inter alia trying to prevent the other party from filing suit supports declaratory judgment\n\njurisdiction). Mr. McFarland admits to telling Mr. Lawrence that Lancium wanted to avoid\n\nlitigation but attempts to minimize his statement, claiming that it was \u201cnot intended as a threat.\u201d\n\n\n\n\n 16\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 21 of 31\n\n\n\n\nDkt. 17-2 at 11, McFarland Decl. \u00b6 6. However, Lancium\u2019s attempt to twist the story is irrelevant.\n\nLancium\u2019s intent is not the standard; rather, a justiciable controversy exists where, under the\n\ntotality of the circumstances, it was not unreasonable for the declaratory judgment plaintiff to\n\ninterpret patentee\u2019s actions as implicitly asserting its intellectual property rights. Hewlett-Packard,\n\n587 F.3d at 1363. Here, considering the totality of the circumstances including (1) Lancium stating\n\nthat OBM\u2019s customers may infringe the \u2019433 Patent, (2) Lancium\u2019s prior litigation history\n\n(discussed in more detail below), and (3) conversations between OBM and Lancium, it was\n\nreasonable for OBM to interpret Lancium\u2019s April 3rd letter as asserting its rights in the \u2019433 Patent\n\nagainst OBM. Lancium spends a great deal of its Motion asking the Court to ignore the April 3rd\n\nletter. However, the letter was undeniably a threat of litigation, so much so that in response to the\n\nApril 3rd letter, OBM disabled the CLR functionality of Foreman that was being used by one of\n\nOBM\u2019s customers. Lawrence Decl. \u00b6\u00b6 20-21. This customer was upset that OBM stopped\n\nproviding the CLR functionality in the middle of testing, as it precluded the customer from\n\nbecoming CLR compliant; but given the threats from Lancium, OBM felt it had no choice. Id.\n\nThese facts prove the existence of a case or controversy between OBM and Lancium. See SanDisk,\n\n480 F.3dat 1381; cf. In re Qualcomm Litig., No. 17-CV-00108-GPC-MDD, 2017 WL 5985598, at\n\n*6 (S.D. Cal. Nov. 8, 2017) (citations omitted) (\u201cQualcomm\u2019s allegations of lost potential sales to\n\nApple, goodwill, and business relationships sufficiently support a finding of statutory standing.\u201d).\n\n Moreover, Lancium has filed patent infringement lawsuits asserting the \u2019433 Patent against\n\nmultiple cryptocurrency companies, such as Layer1 Technologies, Inc., US Data King Mountain\n\nLLC, U.S. Data Mining Group, Inc., and US Mining Infrastructure Operations, LLC, that offer\n\nenergy curtailment services to assist companies in qualifying and participating as a CLR with\n\nERCOT. Dkt. 1 \u00b6 19. As alleged in the Complaint, OBM further believes that multiple\n\n\n\n\n 17\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 22 of 31\n\n\n\n\ncryptocurrency companies that are considering assisting its customers in participating in ERCOT\u2019s\n\nenergy curtailment programs and/or qualifying and participating as a CLR with ERCOT have been\n\napproached by Lancium with threats of enforcing the \u2019433 Patent. Id. \u00b6 20; Lawrence Decl. \u00b6 30.\n\n Given these facts, OBM need not wait for Lancium to launch its threatened suit. OBM is\n\nwithin its rights to bring this issue to a timely resolution. The issue is definite and concrete:\n\nwhether OBM\u2019s Foreman technology practices the claims of the \u2019433 Patent. Setting aside time\n\nand cost, waiting for the inevitable lawsuit by Lancium and turning off its CLR functionality hurts\n\nOBM\u2019s customer relationships in this competitive field. Lawrence Decl. \u00b6\u00b6 21-22.\n\n This is \u201cprecisely the type of situation that the Declaratory Judgment Act was intended to\n\nremedy.\u201d Danisco U.S. Inc. v. Novozymes A/S, 744 F.3d 1325, 1332 (Fed. Cir. 2014). As Judge\n\nMarkey correctly noted, before the Declaratory Judgment Act, potential infringement defendants\n\nfaced:\n\n the sad and saddening scenario that led to enactment of the Declaratory Judgment\n Act. In the patent version of that scenario, a patent owner engages in a danse\n macabre, brandishing a Damoclean threat with a sheathed sword. Guerrilla-like,\n the patent owner attempts extra-judicial patent enforcement with scare-the-\n customer-and-run tactics that infect the competitive environment of the business\n community with uncertainty and insecurity.\n\nArrowhead Indus. Water, Inc. v. Ecolochem, Inc., 846 F.2d 731, 734-35 (Fed. Cir. 1988) (citations\n\nomitted). Lancium does not want a business relationship with OBM; Lancium wants to paralyze\n\nOBM into inaction. If that does not work, it wants to leverage the threatened litigation to force\n\nOBM out of the market with an unreasonable 90/10 agreement. The Court has jurisdiction to\n\nadjudicate non-infringement and OBM is entitled to a determination of whether it can include\n\ncertain functionality within its Foreman software.\n\n\n\n\n 18\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 23 of 31\n\n\n\n\n 2. There are no \u201cmagic words\u201d to confer declaratory judgment\n jurisdiction.\n Lancium\u2019s argument that its April 3rd letter \u201cdoes not support a finding of jurisdiction[ ]\n\nbased on the language used\u201d is unavailing. Dkt. 17 at 15-16. Lancium cites Knauf Insulation, Inc.\n\nv. Rockwool Int\u2019l A/S to support its proposition that identification of a patent and product line\n\n\u201ccannot establish adverse legal interests between the parties sufficient to support declaratory\n\njudgment jurisdiction.\u201d 788 F. App\u2019x 728, 736 (Fed. Cir. 2019) (citations omitted); Dkt. 17 at 16.\n\nHowever, Lancium omitted key language from Knauf, which states that \u201ca patent owner\u2019s\n\ncommunication to another party merely identifying its patent and the other party\u2019s product line,\n\nwithout more, cannot establish adverse legal interests between the parties sufficient to support\n\ndeclaratory judgment jurisdiction.\u201d Knauf, 788 F. App\u2019x at 736 (emphasis added) (quotations and\n\ncitations omitted). OBM has shown there is \u201cmore,\u201d including litigation threats from Lancium,\n\nOBM\u2019s disabling of the CLR functionality in its Foreman software, and Lancium\u2019s prior litigation\n\nhistory, which support a finding of an actual controversy between OBM and Lancium.\n\n Moreover, there are no \u201cmagic words\u201d or specific language that needs to be used to confer\n\ndeclaratory judgment jurisdiction. Lancium argues that there is no controversy because Lancium\n\n\u201cnever threatened litigation [or] asserted infringement.\u201d Dkt. 17 at 15. However, a specific threat\n\nof infringement is not required for declaratory judgment jurisdiction. See Hewlett-Packard, 587\n\nF.3d at 1362; Arris Grp., Inc. v. British Telecomms. PLC, 639 F.3d 1368, 1379 (Fed. Cir. 2011).\n\nNor is it \u201cnecessary that a patent holder make specific accusations\u201d of infringement against the\n\ndeclaratory judgment plaintiff. Arkema Inc. v. Honeywell Int\u2019l, Inc., 706 F.3d 1351, 1357 (Fed.\n\nCir. 2013). \u201cThe purpose of a declaratory judgment action cannot be defeated simply by the\n\nstratagem of a correspondence that avoids the magic words such as \u2018litigation\u2019 or \u2018infringement.\u2019\u201d\n\nHewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358, 1362 (Fed. Cir. 2009). \u201cArticle III does\n\n\n\n 19\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 24 of 31\n\n\n\n\nnot mandate that the declaratory judgment defendant have threatened litigation or otherwise taken\n\naction to enforce its rights before a justiciable controversy can arise.\u201d Danisco, 744 F.3d at 1330.\n\nAn actual case or controversy can exist \u201ceven in situations in which there was no indication that\n\nthe declaratory judgment defendant was preparing to enforce its legal rights.\u201d Id. Given\n\nLancium\u2019s April 3rd letter from its IP litigation counsel, its representatives\u2019 continuing statements\n\nregarding infringement and litigation, and its litigation history of asserting the \u2019433 Patent against\n\nother cryptocurrency software companies offering energy curtailment services, OBM reasonably\n\nconstrued from these prior interactions with Lancium as being a reference to the risk of a patent\n\ninfringement lawsuit against OBM.3 Tellingly, out of the four fact declarations submitted by\n\nLancium, not a single one ever mentions the letter sent by its IP litigation counsel.\n\n Lancium would have this Court believe that because the parties were allegedly in talks\n\nabout partnership, litigation was completely off the table. Lancium\u2019s position is wrong. Rather,\n\nthe Federal Circuit has recognized that \u201c[i]t is quite possible for two parties to simultaneously\n\nconsider nonlitigious settlement of a dispute, while at the same time maintaining an awareness that\n\neither settlement is improbable or that litigation is equally likely.\u201d SanDisk, 480 F.3d at 1381\n\n(quotations and citations omitted). Further, courts have found that ongoing settlement negotiations\n\ndo not require dismissal of declaratory judgment actions where the evidence indicates that a\n\nsettlement short of total capitulation will not be accepted. Kmart, 877 F. Supp. at 1054. The only\n\ndeal proposed by Lancium is one that would require OBM to focus exclusively on miner\n\nmanagement and preclude OBM from offering energy curtailment CLR functionality within\n\n\n\n3\n Lancium\u2019s Motion also argues that Mr. Lawrence\u2019s seemingly friendly email exchanges with\nLancium show that OBM did not fear a patent infringement suit. Dkt. 17 at 19-20. But the Motion\ndoes not cite any cases supporting the argument that companies that do not either become\nbelligerent or cower in fear when accused of infringement are deprived of rights under the\nDeclaratory Judgment Act.\n\n\n 20\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 25 of 31\n\n\n\n\nForeman. Dkt. 1 \u00b6 28; Lawrence Decl. \u00b6 28. Therefore, further negotiations between OBM and\n\nLancium were fruitless.\n\n 3. Whether a patentee has conducted an infringement investigation is\n irrelevant to declaratory judgment jurisdiction.\n Lancium\u2019s Motion argues that \u201cthe Complaint does not provide any evidence that Lancium\n\nevaluated OBM\u2019s Foreman software for infringement or has sufficient familiarity with it to make\n\nany such evaluation.\u201d Dkt. 17 at 21. The Complaint does not have to allege that Lancium has\n\nsufficient familiarity to allege infringement (discussed below in this section) but the implication\n\nthat Lancium is unaware of how Foreman operated is untrue.\n\n Lancium\u2019s feigned ignorance is inconsistent with its April 3rd letter\u2014which was also\n\nincluded in the Complaint\u2014that confirms Lancium\u2019s evaluation of \u201cpublicly available\n\ninformation\u201d regarding the \u201cfunctionality of [OBM\u2019s] Foreman Software\u201d and how Forman \u201cmay\n\nrelate to the subject matter of patented technology developed by Lancium.\u201d Dkt. 1-2. Aside from\n\nthe \u201cpublicly available information,\u201d Lancium had access to Foreman software when Brandon\n\nGreenfield, Lancium\u2019s IT Controls Manager, received access credentials to Foreman on September\n\n12, 2022, shortly before Lancium requested OBM\u2019s SOC 2 report. Lawrence Decl. \u00b6 9. It is\n\nreasonable to assume that Lancium accessed Foreman after receiving credentials on September 12,\n\n2022. Mr. Greenfield was also included on several of the email chains between OBM and Lancium\n\nand was actively involved in the discussions between the parties after he received access to\n\nForeman. See, e.g., Ex. 3; Ex. 4. In fact, in response to Lancium requesting OBM\u2019s SOC 2 report,\n\nMr. Lawrence sent the draft NDA to Mr. Greenfield, who then sent back the NDA with revisions\n\nwhich allowed Lancium to retain copies of OBM\u2019s confidential information. Ex. 4 at 2; Lawrence\n\nDecl. \u00b6 10. The evidence shows Lancium evaluated Foreman in view of: (1) its statements in the\n\n\n\n\n 21\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 26 of 31\n\n\n\n\nApril 3rd letter; (2) Mr. Greenfield\u2019s access to the Foreman software; and (3) Mr. Greenfield\u2019s\n\ninvolvement in the discussions between OBM and Lancium.\n\n Lancium\u2019s attempts to imply it does not have knowledge of Foreman ultimately do not\n\nmatter because \u201cit is irrelevant whether [Lancium] had conducted an adequate investigation or\n\nwhether it subjectively believed [OBM] was infringing.\u201d Hewlett-Packard, 587 F.3d at 1363. The\n\ntest for declaratory judgment jurisdiction in patent cases is objective and the objective words and\n\nactions of Lancium are controlling. Id. (citations omitted). \u201c[C]onduct that can be reasonably\n\ninferred as demonstrating intent to enforce a patent can create declaratory judgment jurisdiction.\u201d\n\nId. OBM has alleged facts showing: (1) at the time of the filing of its Complaint, Lancium was\n\nengaging in conduct that can reasonably be inferred as demonstrating the intent to enforce the \u2019433\n\nPatent; and (2) at the time that OBM filed its Complaint, there was a real and immediate threat of\n\na lawsuit by Lancium against OBM based on the Foreman software.\n\n OBM was using its CLR compliance functionality with customers when Lancium made\n\noral threats of litigation. Lawrence Decl. \u00b6\u00b6 5, 7-8. Due to Lancium\u2019s actions, OBM was forced\n\nto take the affirmative step of disabling certain components from its product in an attempt to avoid\n\na potential finding of willful infringement. Id. \u00b6\u00b6 20-22. \u201c[D]eclaratory judgment jurisdiction is\n\nmet when the patentee puts the declaratory judgment plaintiff in the position of either pursuing\n\narguably illegal behavior or abandoning that which he claims a right to do.\u201d Revolution Eyewear,\n\nInc. v. Aspex Eyewear, Inc., 556 F.3d 1294, 1298 (Fed. Cir. 2009) (quotations and citations\n\nomitted); see also In re Qualcomm Litig., 2017 WL 5985598, at *6 (citations omitted)\n\n(\u201cQualcomm\u2019s allegations of lost potential sales to Apple, goodwill, and business relationships\n\nsufficiently support a finding of statutory standing.\u201d).\n\n\n\n\n 22\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 27 of 31\n\n\n\n\n 4. Lancium\u2019s litigation history supports a finding of declaratory\n judgment jurisdiction.\n Finally, Lancium argues that its prior litigation history does not support declaratory\n\njudgment jurisdiction. Lancium is wrong. As Lancium admits, prior litigation is a circumstance\n\nto be considered in assessing the totality of circumstances. Dkt. 17 at 21. While prior litigation\n\n\u201cdoes not, in the absence of any act directed toward [OBM], meet the minimum standard,\u201d\n\nInnovative Therapies, Inc. v. Kinetic Concepts, Inc., 599 F.3d 1377, 1382 (Fed. Cir. 2010)\n\n(emphasis added), OBM has established facts that show affirmative acts directed toward OBM.\n\nLancium has filed patent infringement lawsuits asserting the \u2019433 Patent against multiple\n\ncryptocurrency software companies, Dkt. 1 \u00b6 19, and Lancium has further made multiple threats\n\nabout how OBM\u2019s Foreman software may infringe the \u2019433 Patent, Lawrence Decl. \u00b6\u00b6 12, 17, 27.\n\nMoreover, Lancium has stated in press releases that it \u201cintends to continue aggressively defending\n\nits intellectual property.\u201d Ex. 2 at 2. Public statements made by a patentee confirming its intent\n\nto continue an aggressive litigation strategy likewise support that there is a real and substantial\n\ndispute between OBM and Lancium. Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897, 901\n\n(Fed. Cir. 2008) (reversing dismissal of declaratory judgment complaint for lack of subject matter\n\njurisdiction and ruling that patentee\u2019s prior history of suing other chip manufacturers and sending\n\nwarning letters created a sufficient case or controversy even though the patentee never made any\n\nspecific threats to the plaintiff). OBM is entitled to bring this issue to resolution so it can continue\n\nto operate its business. Thus, Lancium\u2019s litigation history, viewed in context of its actions,\n\nsupports a finding that there is a case or controversy between OBM and Lancium. PharmaNet,\n\nInc. v. DataSci Liab. Co., No. 3:08-cv-02965-GEB-DEA, 2009 WL 396180 (D.N.J. Feb. 17,\n\n2009).\n\n\n\n\n 23\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 28 of 31\n\n\n\n\n Contrary to Lancium\u2019s assertions, OBM and Lancium are direct competitors in the same\n\nmarket. As asserted in the Complaint and confirmed by Lancium in its letter, the functionality of\n\nOBM\u2019s Foreman software \u201cmay relate to the subject matter of patented technology developed by\n\nLancium.\u201d Dkt. 1 \u00b6 23; Dkt. 1-2. Prior to OBM removing certain functionality from its Foreman\n\nsoftware, OBM and Lancium were directly competing.\n\n B. The Court Should Use Its Discretion to Hear OBM\u2019s Declaratory Judgment\n Action and Deny Lancium\u2019s Motion to Dismiss.\n\n While a court has discretion under the Declaratory Judgment Act to decline jurisdiction,\n\nthe \u201cpurpose of the Declaratory Judgment Act in patent cases is to provide the allegedly infringing\n\nparty relief from uncertainty and delay regarding its legal rights.\u201d Micron Tech., 518 F.3d at 902\n\n(citing Goodyear Tire & Rubber Co. v. Releasomers, Inc., 824 F.2d 953, 956 (Fed. Cir. 1987)). A\n\ndistrict court, when deciding whether to exercise its discretion, should decide whether hearing the\n\ncase would \u201cserve the objectives for which the Declaratory Judgment Act was created.\u201d Capo,\n\nInc. v. Dioptics Med. Prods., Inc., 387 F.3d 1352, 1355 (Fed. Cir. 2004) (quotations and citations\n\nomitted). \u201cWhen there is an actual controversy and a declaratory judgment would settle the legal\n\nrelations in dispute and afford relief from uncertainty or insecurity, in the usual circumstance the\n\ndeclaratory judgment is not subject to dismissal.\u201d SanDisk, 480 F.3d at 1383 (quoting Genentech\n\nv. Eli Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993)). Here, the parties have had nearly two years\n\nto come to an agreement on a business partnership without success. During that time, Lancium\n\naccused OBM and its customers of infringement of the \u2019433 Patent. In response, OBM disabled\n\ncertain functionality of software under threat of a lawsuit. When disabled, OBM was no longer\n\nable to assist its clients with becoming CLR compliant. Lawrence Decl. \u00b6\u00b6 21-22. There is no\n\nreason to further delay and this matter is ripe for decision.\n\n\n\n\n 24\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 29 of 31\n\n\n\n\n Lancium\u2019s attorney argument regarding alleged \u201cuse of litigation for PR purposes,\u201d Dkt.\n\n 17 at 25, is a red herring (and ironic in view of Lancium\u2019s press release announcing its intention\n\n to aggressively assert its IP). Lancium, nevertheless, cites no authority supporting dismissal of a\n\n declaratory judgment complaint simply because the declaratory judgment plaintiff issued a press\n\n release for its customers and the public.\n\nVII. CONCLUSION\n\n OBM respectfully requests that Lancium\u2019s Motion to Dismiss be denied.\n\n\n\n Dated: June 30, 2023 Respectfully submitted,\n\n Womble Bond Dickinson (US) LLP\n\n By: /s/ Rodney R. Miller\n Rodney R. Miller\n Texas Bar No.: 24070280\n 271 17th Street, NW, Suite 2400\n Atlanta, GA 30363\n Telephone: (404) 888-7366\n Email: rodney.miller@wbd-us.com\n\n Attorney-in-Charge for Plaintiff OBM, Inc.\n Of Counsel:\n\n Womble Bond Dickinson (US) LLP\n Preston H. Heard (pro hac vice)\n Georgia Bar No. 476319\n Atlanta, GA 30363\n Telephone: (404) 888-7366\n Email: Preston.Heard@wbd-us.com\n\n Womble Bond Dickinson (US) LLP\n Andrew Beverina (pro hac vice)\n DC Bar No.: 464897\n 2001 K Street, NW, Suite 400 South\n Washington, DC 20006\n Telephone: (202) 857-4411\n Email: Andrew.beverina@wbd-us.com\n\n\n\n\n 25\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 30 of 31\n\n\n\n\nWomble Bond Dickinson (US) LLP\nJames Dority (pro hac vice)\nSouth Carolina Bar No.: 104627\n550 South Main Street, Suite 400\nGreenville, SC 29601\nTelephone: (864) 255-5412\nEmail: james.dority@wbd-us.com\n\nAttorneys for Plaintiff OBM, Inc.\n\n\n\n\n 26\n\f Case 4:23-cv-01798 Document 20 Filed on 06/30/23 in TXSD Page 31 of 31\n\n\n\n\n CERTIFICATE OF SERVICE\n\n I hereby certify that on June 30, 2023, I electronically filed under seal the foregoing\n\ndocument with the Clerk of the Court using the CM/ECF system, which will send notification\n\nof such filing via electronic mail to all counsel of record.\n\n\n\n /s/ Rodney R. Miller\n Rodney R. Miller\n\f","ocr_status":2,"date_upload":"2023-12-05T22:20:54.490658-08:00","document_number":"20","attachment_number":null,"pacer_doc_id":"179043051672","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Response in Opposition to Motion","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999416/","id":379999416,"tags":[],"absolute_url":"/docket/67396788/20/1/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.087415-08:00","date_modified":"2025-01-22T07:03:24.368038-08:00","sha1":"88b3f7c24c88fa7e1be612830a856376981ef3a6","page_count":1,"file_size":82174,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.1.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.1.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 20-1 Filed on 06/30/23 in TXSD Page 1 of 1\n\n\n\n\n IN THE UNITED STATES DISTRICT COURT\n SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\nOBM, INC.,\n\n Plaintiff, Civil Action No: 4:23-cv-01798\n\nv. JURY TRIAL DEMANDED\n\nLANCIUM LLC,\n\n Defendant.\n\n\n\n ORDER DENYING DEFENDANT LANCIUM LLC\u2019S MOTION TO DISMISS\nFOR LACK OF SUBJECT MATTER / DECLARATORY JUDGMENT JURISDICTION\n\n Before the Court is Defendant Lancium LLC\u2019s Motion to Dismiss for Lack of Subject\n\nMatter / Declaratory Judgment Jurisdiction (Dkt. 17, \u201cMotion to Dismiss\u201d). After careful\n\nconsideration, the Court finds that the Motion to Dismiss should be and hereby is DENIED, it is\n\ntherefore,\n\n ORDERED, ADJUDGED and DECREED that Defendant Lancium LLC\u2019s Motion to\n\nDismiss for Lack of Subject Matter / Declaratory Judgment Jurisdiction is hereby DENIED.\n\n\n\n SIGNED this _____ day of ________________________, 2023.\n\n\n\n\n _______________________________\n Hon. Keith P. Ellison\n United States District Judge\n\f","ocr_status":2,"date_upload":"2023-12-05T22:20:54.939810-08:00","document_number":"20","attachment_number":1,"pacer_doc_id":"179043051673","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Proposed Order","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999417/","id":379999417,"tags":[],"absolute_url":"/docket/67396788/20/2/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.118583-08:00","date_modified":"2025-01-22T07:03:24.378020-08:00","sha1":"f0700b1637a5a493e2aff6d28d9f7b92c49513a9","page_count":9,"file_size":234575,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.2.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.2.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 20-2 Filed on 06/30/23 in TXSD Page 1 of 9\n\n\n\n\n IN THE UNITED STATES DISTRICT COURT\n SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\nOBM, INC.,\n\n Plaintiff, Civil Action No: 4:23-cv-01798\n\nv. JURY TRIAL DEMANDED\n\nLANCIUM LLC,\n\n Defendant.\n\n\n\n DECLARATION OF DANIEL LAWRENCE IN SUPPORT OF\n PLAINTIFF OBM, INC.\u2019S RESPONSE IN OPPOSITION TO\n DEFENDANT LANCIUM LLC\u2019S MOTION TO DISMISS\nFOR LACK OF SUBJECT MATTER / DECLARATORY JUDGMENT JURISDICTION\n\n I, Daniel Lawrence, being over the age of 18 and competent to make the declarations\n\nherein, do hereby declare that:\n\n 1. I co-founded OBM, LLC in December 2017. In January of 2022 I became Chief\n\nExecutive Officer (CEO) of OBM, Inc. As CEO I am responsible for all operations at OBM.\n\n A. Background\n\n 2. Since 2018, OBM has been providing data mining software solutions to\n\ncryptocurrency companies through its software management program, Foreman. Foreman\n\nprovides for the remote monitoring and management of virtually all aspects of mining operations.\n\nForeman further offers site and farm visualization, reporting and diagnostics, security auditing,\n\nenergy curtailment and integrations with non-miner devices (such as network switches, PDUs,\n\ncooling towers, etc.). Foreman also assisted customers in obtaining Controllable Load Resource\n\n(\u201cCLR\u201d) compliance with Electric Reliability Council of Texas (\u201cERCOT\u201d) by participating in\n\nDemand Response until it was forced to disable this functionality in the face of litigation threats\n\n\n\n 1\n\f Case 4:23-cv-01798 Document 20-2 Filed on 06/30/23 in TXSD Page 2 of 9\n\n\n\n\nfrom Lancium. I would like to re-enable the functionality but cannot do so under risk that Lancium\n\nwill sue OBM or OBM\u2019s customers for infringement of U.S. Patent No. 10,608,433 (the \u201c\u2019433\n\nPatent\u201d).\n\n 3. Cryptocurrency mining uses datacenters to mine and is an energy-intensive process,\n\nso many cryptocurrency companies have made attempts to reduce energy cost, which would, in\n\nturn, increase the value of the mined cryptocurrency. Many cryptocurrency companies operating\n\nin Texas have also begun participating in the many energy curtailment programs offered by\n\nERCOT by participating in Demand Response, which preserves ERCOT system reliability and\n\nmitigates price spikes by collaborating with market participants who have the ability to reduce or\n\nmodify electricity in response to instructions or signals. Companies that want to participate in\n\nDemand Response can qualify and register as a CLR, which is a load resource capable of\n\ncontrollably reducing or increasing consumption under dispatch control by ERCOT.\n\n 4. To meet the energy curtailment demands of its customers, Foreman has a \u201cPower\n\nControl\u201d feature that provides a customer with the ability to adjust its energy consumption at a site\n\nto a specific megawatt (MW) target. Foreman also has the functionality to assist its Texas\n\ncustomers in passing ERCOT\u2019s Security Constrained Economic Dispatch (\u201cSCED\u201d) qualification\n\ntest.\n\n 5. OBM initially began offering CLR compliance functionality through its Foreman\n\nsoftware on August 22, 2022.\n\n 6. OBM provides the public with information about the features and functionality of\n\nthe Foreman software. For example, OBM has participated in webinars, podcasts, and posted\n\ninformational videos on YouTube discussing Foreman\u2019s functionality.\n\n\n\n\n 2\n\f Case 4:23-cv-01798 Document 20-2 Filed on 06/30/23 in TXSD Page 3 of 9\n\n\n\n\n 7. From July 13, 2022 to March 8, 2023, OBM worked with Customer 1 using its\n\nForeman software to perform internal CLR compliance testing. On March 29, 2023, Customer 1\n\ninformed me that it successfully passed ERCOT testing and became CLR compliant.\n\n 8. In December 2022, OBM began working with Customer 2 to work toward helping\n\nCustomer 2 become CLR complaint through the use of Foreman.\n\n B. Timeline of Events\n\n 9. In or around the summer of 2022, OBM\u2019s Foreman software began running in a\n\ncustomer\u2019s Fort Stockton, Texas facility. It is my understanding from Lancium that this customer\n\nworks with Lancium, and also uses Lancium\u2019s software product. On September 12, 2022,\n\nBrandon Greenfield, Lancium\u2019s IT Control Manager, joined as a user to this customer\u2019s OBM\n\naccount, in which he was granted access to the Foreman software.\n\n 10. In mid-September 2022, this customer, Lancium, and OBM had discussions\n\nconcerning the security of Lancium\u2019s data on OBM\u2019s Foreman. After some initial discussions,\n\nLancium reached out to OBM requesting OBM\u2019s Service Organization Controls 2 (\u201cSOC 2\u201d)\n\nreport. A SOC 2 report explains the security and privacy controls OBM has in place to protect its\n\ncustomers\u2019 data. On September 29, 2022, I sent a Non-Disclosure Agreement to Lancium, stating\n\nthat an NDA was required prior to sharing OBM\u2019s SOC 2 report. Ex. 3 at 3. Later that day, Mr.\n\nGreenfield sent back the NDA with edits. Id at 2. After reviewing Lancium\u2019s edits to the NDA,\n\nI was concerned that Lancium was attempting to use the NDA to obtain and retain OBM\u2019s\n\nconfidential information and became concerned with entering into such a broad agreement.\n\n 11. On November 2, 2022, I published a series of videos on the Foreman YouTube\n\npage, including videos discussing Foreman\u2019s automated curtailment with power control.\n\nhttps://www.youtube.com/watch?v=zrfDkio0El4. Ex. 13.\n\n\n\n\n 3\n\f Case 4:23-cv-01798 Document 20-2 Filed on 06/30/23 in TXSD Page 4 of 9\n\n\n\n\n 12. On November 17, 2022, Ian Rock, Lancium\u2019s Vice President of IT Operations,\n\ncoordinated a meeting with OBM at the Texas Blockchain Summit. Mr. Rock and Lancium\u2019s\n\nChief Technology Officer, Ray Cline, both attended the meeting. Within a few minutes of the\n\nconversation, Mr. Rock told me that customers using Foreman could be infringing on Lancium\u2019s\n\npatents. After hearing this accusation, I was immediately concerned and felt very threatened that\n\nLancium was considering suing my customers for patent infringement. Mr. Rock also discussed\n\nLancium\u2019s patents and its patented technology. Mr. Rock further explained that OBM and\n\nLancium were both running software in the same facility through a common customer. Mr. Rock\n\nthen proceeded to discuss how OBM and Lancium should meet and discuss going to market\n\ntogether because CLR and energy management was Lancium\u2019s specialty and OBM was\n\n\u201cundervaluing\u201d energy management by offering it for a price lower than the price Lancium was\n\noffering it. I took this to mean that Lancium saw Foreman as a threat to its business. After this\n\nconversation, I immediately reached out to my counsel prior to returning to the OBM booth at the\n\nconference.\n\n 13. In January 2023, Mr. Rock again requested a copy of OBM\u2019s SOC 2 report. Ex. 4\n\nat 2-3. In attempt to avoid Lancium suing OBM or its customers, I provided Lancium with a one-\n\nway NDA, which only covered the SOC 2 report, and agreed to provide Lancium with a copy of\n\nOBM\u2019s SOC 2 report. Id. at 1-2.\n\n 14. On March 8, 2023, OBM successfully helped Customer 1 use Foreman to pass the\n\nCLR compliance testing with ERCOT.\n\n 15. On March 8, 2023, at Empower, a conference hosted by the Digital Wildcatters,\n\nMr. Rock came up to OBM\u2019s booth, pulled me to the side, and said that we needed to have a chat.\n\n\n\n\n 4\n\f Case 4:23-cv-01798 Document 20-2 Filed on 06/30/23 in TXSD Page 5 of 9\n\n\n\n\n 16. On March 28, 2023, I was featured on The Mining Pod podcast, where I discuss\n\nOBM\u2019s upcoming CLR capabilities. https://compassmining.io/education/automation-remote-\n\nmanagement-with-foreman-daniel-lawrence-the-mining-pod/. Ex. 14. On the same day, Mr. Rock\n\nreached out via email to discuss business terms. Ex. 5 at 1. The email again did not contain any\n\nproposed business terms.\n\n 17. On April 3, 2023, Mr. Rock reached out again via email requesting that the parties\n\ndiscuss business terms. Ex. 5 at 1. Shortly after receiving the email from Mr. Rock, I received a\n\nletter from Barnes & Thornburg stating that their client Lancium would like to discuss business\n\nterms regarding a possible relationship. The letter further stated: \u201cBased on publicly available\n\ninformation, it is possible that the functionality of your Foreman Software may relate to the subject\n\nmatter of patented technology developed by Lancium\u201d and specifically mentioned and attached\n\nthe \u2019433 Patent. Dkt. 1-2. Based on previous comments regarding infringement, Lancium\u2019s\n\nstatements to the public that it intended to enforce its IP, and Lancium\u2019s prior suit against Layer1\n\nTechnologies, I interpreted Lancium\u2019s letter as a threat of filing suit against OBM for infringement\n\nof Lancium\u2019s patents.\n\n 18. The next morning, on April 4, 2023, I reluctantly replied to Mr. Rock to coordinate\n\na meeting. Ex. 7 at 5. I also replied to the lawyer at Barnes & Thornburg stating that the letter\n\nwas received.\n\n 19. On the afternoon of April 4, 2023, I had a meeting via telephone with Mr. Rock,\n\nwhich was about 10 minutes long. See Ex. 7 at 4. Mr. Rock told me Lancium would send business\n\nterms soon.\n\n\n\n\n 5\n\f Case 4:23-cv-01798 Document 20-2 Filed on 06/30/23 in TXSD Page 6 of 9\n\n\n\n\n 20. On April 4, 2023, I disabled the CLR capabilities of our Foreman software in\n\nresponse to the letter from Barnes & Thornburg. OBM would like to re-enable the CLR\n\ncapabilities but cannot do so while under threat of a patent lawsuit against OBM or its customers.\n\n 21. In the middle of April 2023, Customer 2 reached out to OBM regarding the\n\nperformance of additional testing using Foreman. In the beginning of May 2023, Customer 2\n\ninformed OBM that Foreman was no longer providing CLR capabilities and requested that OBM\n\nenable the functionality. Unfortunately, because of the threats of litigation against OBM and its\n\ncustomers, OBM could not comply with Customer 2\u2019s request and did not re-enable the CLR\n\nfunctionality in Foreman.\n\n 22. Disabling CLR capabilities reduced the number of services Foreman provides,\n\nwhich hinders OBM\u2019s pursuit of additional customers.\n\n 23. On April 5, 2023, I had a telephone call with Michael McNamara, Lancium\u2019s CEO,\n\nas a general meet and greet. Ex. 6. The call was about 10 minutes long. Mr. McNamara did not\n\ndiscuss any business terms with me.\n\n 24. On April 17, 2023, I still had not received any business terms from Lancium. I\n\nreached out to Mr. Rock via email to see when we could expect them. Ex. 7 at 3. Later that day,\n\nI received an email from Scott McFarland, Lancium\u2019s new CRO, stating that Mr. Rock was on\n\nPTO. Id. at 2.\n\n 25. On April 26, 2023, I had a meeting with Mr. McFarland to discuss possible business\n\nterms. Ex. 8. During the call, Mr. McFarland mentioned that Lancium still did not have business\n\nterms. Mr. McFarland followed our call with an email, requesting our next meeting to take place\n\nduring Bitcoin 2023 and requested a May 18, 2023 happy hour with Mr. Rock to discuss terms.\n\nEx. 9.\n\n\n\n\n 6\n\f Case 4:23-cv-01798 Document 20-2 Filed on 06/30/23 in TXSD Page 7 of 9\n\n\n\n\n 26. Following the conversations with Mr. McFarland and the lack of any written\n\nbusiness terms, I felt that Lancium was using the threat of litigation from the April 3rd letter to\n\nOBM\u2019s detriment. After several weeks of failing to provide business terms, as Lancium stated\n\nthey would, I believed that Lancium was trying to prevent OBM from continuing to offer the CLR\n\nfunctionality within Foreman to its customers. In addition, given Lancium\u2019s litigious history, I\n\nalso felt Lancium was stalling on proposing business terms to buy time to prepare to file a lawsuit\n\nagainst OBM. On May 2, 2023, to protect OBM and OBM\u2019s client, OBM\u2019s attorneys sent a\n\nresponsive letter to Lancium\u2019s attorney stating that OBM does not infringe the \u2019433 Patent. The\n\nletter further explained that Lancium had failed to propose any business terms, but OBM was ready\n\nto discuss a licensing proposal when Lancium was. Dkt. 1-3.\n\n 27. Mr. McFarland reached out on May 2, 2023 to move the business term discussion\n\nup. Mr. McFarland and I had a meeting via telephone on May 4, 2023. Ex. 10. Within the first\n\ntwo minutes of the call, Scott stated: \u201cit\u2019s obvious that we\u2019re both trying to avoid litigation.\u201d I\n\ntook Mr. McFarland\u2019s comment as implying that Lancium intended to sue OBM. I stated that\n\nLancium needed to send business terms and OBM was still waiting to see proposed terms in\n\nwriting. Mr. McFarland then stated that he would work on drafting business terms while he was\n\nat the DC World conference. On May 6, 2023, I received an email from Mr. McFarland stating:\n\n\u201cI had more time to think about some possible terms in relation to a partnership and have reviewed\n\nthose with Michael and Ali. Before I draft up any slides or document around them, I wanted to\n\ngive you a call and discuss directly with you so you have some idea of numbers and potential.\u201d\n\nEx. 11 at 2.\n\n 28. On May 9, 2023, Mr. McFarland and I had a meeting via telephone to discuss draft\n\nbusiness terms. See Ex. 12 at 1. Mr. McFarland still had not sent over any terms in writing. During\n\n\n\n\n 7\n\f Case 4:23-cv-01798 Document 20-2 Filed on 06/30/23 in TXSD Page 8 of 9\n\n\n\n\nthe call, Mr. McFarland stated that there would be a 90/10 split on the CLR revenue, with Lancium\n\nreceiving 90% and OBM receiving 10%, and OBM and Lancium would market together at\n\nconferences. Mr. McFarland also stated that Lancium intended to start pushing into other markets\n\noutside of ERCOT and that their target was customers exceeding 50 MW. When I asked what\n\nwould happen with customers under 50 MW, or customers that cannot participate in CLR based\n\non their load profile, Mr. McFarland\u2019s response was: \u201cwe could probably build a cloud connector\n\nwhere we integrate with the CSPs and send the signal to turn on/off to Foreman.\u201d This meant that\n\nLancium would not be providing services to customers with lower load profiles, and Foreman\u2019s\n\nDemand Response CLR functionality would have to be integrated with Lancium. These terms\n\nwere extremely non-favorable to OBM. Nonetheless, I informed Mr. McFarland that we needed\n\nto see the terms on paper so we could model things out.\n\n 29. Following our call, Mr. McFarland emailed me and stated that we needed to have\n\nan NDA in place before Lancium could share business terms on paper. I replied to Mr. McFarland,\n\nstating that I would send the NDA over to legal. Ex. 12 at 1. We had a call scheduled for Thursday,\n\nMay 11th, but I suggested we postpone the meeting until the NDA was in place so we could discuss\n\nactual terms.\n\n 30. OBM is aware that Lancium has a negative reputation by many in the industry\n\nbased, in part, on Lancium\u2019s decision to sue Layer1. I have spoken with others in the industry\n\nwho have informed me they view Lancium negatively, in part, because of the patent infringement\n\nlawsuits they have filed against other cryptocurrency companies. I am also aware that Lancium\n\nhas aggressively approached others in the industry, asking them to license the \u2019433 Patent and\n\nother Lancium patents.\n\n\n\n\n 8\n\fDocuSign Envelope ID: CDEE179E-A1FD-42AA-9C38-C7207046C73F\n Case 4:23-cv-01798 Document 20-2 Filed on 06/30/23 in TXSD Page 9 of 9\n\n\n\n\n I hereby declare that all statements of my knowledge made in this declaration are true and\n\n that these statements were made with the knowledge that willful false statements and the like are\n\n punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States\n\n Code.\n\n\n\n\n 6/30/2023\n Dated: ____________________ ___________________________________\n Daniel Lawrence\n CEO, OBM, Inc.\n\f","ocr_status":2,"date_upload":"2023-12-05T22:20:55.657331-08:00","document_number":"20","attachment_number":2,"pacer_doc_id":"179043051674","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Affidavit","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999418/","id":379999418,"tags":[],"absolute_url":"/docket/67396788/20/3/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.147979-08:00","date_modified":"2025-01-22T07:03:24.386466-08:00","sha1":"41b7b27c14aab025f110846c9367b1f08033a2a1","page_count":2,"file_size":159748,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.3.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.3.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 20-3 Filed on 06/30/23 in TXSD Page 1 of 2\n\n\n\n\n IN THE UNITED STATES DISTRICT COURT\n SOUTHERN DISTRICT OF TEXAS\n HOUSTON DIVISION\n\nOBM, INC.,\n\n Plaintiff, Civil Action No: 4:23-cv-01798\n\nv. JURY TRIAL DEMANDED\n\nLANCIUM LLC,\n\n Defendant.\n\n\n\n DECLARATION OF RODNEY R. MILLER IN SUPPORT OF OBM\u2019S RESPONSE IN\nOPPOSITION TO DEFENDANT LANCIUM LLC\u2019S MOTION TO DISMISS FOR LACK\n OF SUBJECT MATTER / DECLARATORY JUDGMENT JURISDICTION\n\n I, Rodney R. Miller, being over the age of 18 and competent to make the declarations\n\nherein, do hereby declare that:\n\n 1. I am the Attorney-in-Charge for Plaintiff OBM, Inc. (\u201cOBM\u201d) in this matter. I\n\nsubmit this Declaration in support of OBM\u2019s Response in Opposition to Defendant Lancium,\n\nLLC\u2019s Motion to Dismiss for Lack of Subject Matter / Declaratory Judgment Jurisdiction.\n\n 2. The exhibits attached to this declaration are true and correct copies of the following:\n\n Exhibit Description\n 1 Kurt W. Rhode, Barnes & Thornburg Profile, accessed at\n https://btlaw.com/people/kurt-rohde\n 2 Lancium Wins Patent Litigation Against Austin Storms, PR Newswire (March 7,\n 2023), https://www.prnewswire.com/news-releases/lancium-wins-patent-litigation-\n against-austin-storms-301764991.html\n 3 Oct. 4, 2022 email chain between D. Lawrence and I. Rock re Foreman | Lancium\n 4 Jan. 6, 2023 email chain between D. Lawrence, I. Rock, and B. Greenfield re NDA\n 5 Apr. 3, 2023 email chain between D. Lawrence and I. Rock re Foreman and Lancium\n 6 Apr. 5, 2023 calendar invitation from M. McNamara to D. Lawrence re Dan &\n Michael\n 7 Apr. 18, 2023 email chain between D. Lawrence, I. Rock, and S. McFarland re\n Foreman | Lancium\n\n\n\n 1\n\f Case 4:23-cv-01798 Document 20-3 Filed on 06/30/23 in TXSD Page 2 of 2\n\n\n\n\n Exhibit Description\n 8 Apr. 26, 2023 calendar invitation from S. McFarland to D. Lawrence re Meeting\n Reschedule\n 9 May 2, 2023 email chain between D. Lawrence and S. McFarland re THANK YOU\n and follow-up\n 10 May 4, 2023 calendar invitation from S. McFarland to D. Lawrence re Scott/Dan \u2013\n quick chat\n 11 May 8, 2023 email chain between D. Lawrence and S. McFarland re Lancium follow-\n up\n 12 May 9, 2023 email chain between D. Lawrence and S. McFarland re Lancium NDA\n 13 Foreman, Videos, YouTube (Nov. 2, 2022), https://www.youtube.com/\n @foremanmining/videos\n 14 W. Foley, The Mining Pod, Automation & Remove Management with Foreman,\n Compass Mining (Mar. 28, 2023), https://compassmining.io/education/ automation-\n remote-management-with-foreman-daniel-lawrence-the-mining-pod/\n\n\nI declare under penalty of perjury under the laws of the United States of America that the foregoing\n\nis true and correct, pursuant to Section 1746 of Title 28 of the United States Code.\n\n\n\n\nDated: June 30, 2023 /s/ Rodney R. Miller\n Rodney R. Miller\n\n\n\n\n 2\n\f","ocr_status":2,"date_upload":"2023-12-05T22:20:56.131712-08:00","document_number":"20","attachment_number":3,"pacer_doc_id":"179043051675","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Affidavit","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999419/","id":379999419,"tags":[],"absolute_url":"/docket/67396788/20/4/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.181730-08:00","date_modified":"2025-01-22T07:03:24.394778-08:00","sha1":"25b0d6fd3bc67812498f93b82647f8b140bcb216","page_count":3,"file_size":2770966,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.4.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.4.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 20-4 Filed on 06/30/23 in TXSD Page 1 of 3\n\n\n\n\n EXHIBIT 1\n\f Case 4:23-cv-01798 Document 20-4 Filed on 06/30/23 in TXSD Page 2 of 3\n\n\n\n\n Kurt W. Rohde\n Partner\n One N. Wacker Drive\n Suite 4400\n Chicago, IL 60606-2833\n P 312-214-4505\n F 312-759-5646\n Kurt.Rohde@btlaw.com\n\n EDUCATION\n Northwestern University School of Law,\nApproachable, yet candid in his counsel, Kurt Rohde provides an (J.D.), 2006\nobjective analysis of the issues tied to his clients\u2019 intellectual Auburn University, (B.S.), chemical\nproperty assets and best courses of action. In particular, with over engineering, summa cum laude, 1995\n14 years focused in complex patent litigation and large patent\nportfolio management, Kurt regularly serves as patent trial counsel BAR ADMISSIONS\nfor multibillion dollar corporations.\n Illinois\nKurt helps his clients keep the bigger picture at the forefront by advising U.S. Patent and Trademark Office\non obtaining, evaluating, and enforcing their critical IP assets via litigation,\npatent management, and patent prosecution.\n COURT ADMISSIONS\nAs a veteran negotiator in general and with opposing counsel, Kurt serves U.S. Court of Appeals for the Federal\nas a regular point-of-contact for senior in-house counsel and local district Circuit\ncounsel regarding strategy, case development and cost management. He U.S. District Court for the Northern\nguides his clients, most of which are bicoastal with international IP District of Illinois\ninterests, toward pragmatic solutions, while acting as an aggressive ally.\n U.S. District Court for the Northern\n District of California\nWith a degree in chemical engineering and nearly a decade of work\nexperience in industrial machine design before practicing law, Kurt brings U.S. District Court for the Southern\n District of New York\nsignificant engineering knowledge and skills in aerospace, electronics,\nfabrication, industrial manufacturing, injection molding, machine design, U.S. District Court for the Southern\ntooling, and as well as software design and development, to his clients. District of Indiana\n\n\nBecause much of Kurt\u2019s work is international, he has developed strong LANGUAGES\nrelationships with attorneys around the globe, enabling him to leverage the\nright resources to help clients protect their IP interests and aspirations. English\n\n\nPatent and Trademark Prosecution and PRACTICES\nPortfolio Management Intellectual Property\n\nKurt\u2019s patent practice includes overseeing domestic and international INDUSTRIES\npatent and trademark prosecution, licensing, rights management, joint\ndevelopment agreements, and overall portfolio management for large Fintech\nmultinational clients. He regularly works with clients\u2019 internal teams to\npromote early and effective identification and patenting of key inventions.\n\f Case 4:23-cv-01798 Document 20-4 Filed on 06/30/23 in TXSD Page 3 of 3\nHis portfolio experience includes directly managing international patent\nportfolios for leading aeronautics, autonomous drone, energy, and\ntechnology companies, and his prosecution practice spans across many\nfields, including aircraft design and control, autonomous drones and\nvehicles, electronics, energy storage and distribution, EV charging and\nfleet logistics, industrial machines and plant design, power generation and\nmanagement, robotics, semiconductors, sensor packages, software, and\ntelecommunications.\n\nIP Litigation\nKurt has represented clients in intellectual property cases involving a wide\narray of technologies, including considerable experience in ANDA\nlitigation. His litigation practice includes not only significant trial\nexperience with consistently favorable settlements and decisions, but also\ncritical cost forecasting for clients. Additionally, Kurt consulted on the\ndevelopment of a litigation cost forecasting system for one of the world\u2019s\nlargest pharmaceutical companies and has been repeatedly recognized by\nclients for his effective cost control in the face of voluminous discovery.\n\nIP Counseling\nIncreasingly, Kurt is called upon to provide IP counseling related to\nintellectual property in his work with startups, spinouts, and companies in\nSeries B and C funding. He counsels on acquisition and protection of\nrights both internally and through acquisition.\n\nOutside of work, Kurt has a passion for scuba diving around the world. He\nalso enjoys creating small- and large-scale mechanical contraptions for\nnonprofit and theatrical organizations throughout the Chicago area. He is\nalso an avid Arduino programmer, builder of custom PCs, and has been\ninvolved with cryptocurrencies, including mining, since before the bubble.\n\n\nProfessional and Community Involvement\n\nMember, Intellectual Property Owners Association\n\nFormer board member and collaborator, Redmoon Theater\n\f","ocr_status":2,"date_upload":"2023-12-05T22:20:56.779902-08:00","document_number":"20","attachment_number":4,"pacer_doc_id":"179043051676","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit 1","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999420/","id":379999420,"tags":[],"absolute_url":"/docket/67396788/20/5/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.215305-08:00","date_modified":"2025-01-22T07:03:24.403112-08:00","sha1":"4c5833c5bc6ec25cb2118fe8f9c030203b11c7e5","page_count":3,"file_size":80828,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.5.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.5.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 20-5 Filed on 06/30/23 in TXSD Page 1 of 3\n\n\n\n\n EXHIBIT 2\n\f Case 4:23-cv-01798 Document 20-5 Filed on 06/30/23 in TXSD Page 2 of 3\n\n\n\n\n0123456\u00ff8429\u00ff1 2\u00ff04414\u000e2\n\u000f 1429\u00ff\u000f5942\u00ff\u0010\u000e\u001169\n\n\u0012\u00138\u0010\u00ff\u0014\u0015\u0016\u0017\u0018\u0013\u0018\u00ff\u0019\u001a\n\u001b\u001c\u001d\u001e\u001f!\u00ff.\n#$\u00ff%1\u0011&\u00ff'#'(&\u00ff)*+,#\u00ff\u0013-\n\n\n /01\u00ff3453464176\u00ff64891:\u00ff;4<=;\u00ff>08793?\u00ff891843101<\u00ff89@5=1?A6\u00ff5=74174:\u00ff59B43\u00ff938C4673=7091\n 748C19;9\nSent: Thursday, September 29, 2022 12:00 PM\nTo: 'Daniel Lawrence' \nCc: 'Jacob Luers' \nSubject: RE: Foreman | Lancium\n\nNo worries Dan, I know sometimes it is tough just to keep up with everything. Thank you for sending over the NDA, I will\nhave my team look it over and send it back to ensure we agree before signing.\n\nNice to meet you Jacob! Looking forward to chatting sometime soon.\n\nRegards,\n\nBrandon Greenfield\n\nFrom: Daniel Lawrence \nSent: Thursday, September 29, 2022 11:56 AM\nTo: Brandon Greenfield \nCc: Jacob Luers \nSubject: Foreman | Lancium\n\nHey Brandon,\n\nI hope that all is well with you! Deepest apologies for our email chain fizzling. We've been roped into a few site\ndeployments over the last couple of weeks, so I'm a bit behind on things.\n\nI'm adding Jake to the chain today. He's my CTO, co\u2010founder, and a great guy to help fill in some of the communication\ngaps.\n\nI'm unable to make our meeting today due to a flight that got shifted around on me. To help get things moving, though,\nI've attached our standard MNDA for your review. We require one of these before we're able to share our SOC report.\n\n 1\n\f Case 4:23-cv-01798 Document 20-6 Filed on 06/30/23 in TXSD Page 3 of 9\n\nThanks so much for your patience. Sorry again for the gaps.\n\nThanks,\nDan\n\n\u2010\u2010\nDaniel Lawrence\nCEO\nSchedule a Meeting\nForeman.mn \u2010 OBM, Inc.\n1 N Haven Street, Suite 3\nBaltimore, MD 21224\n\n\nCONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This email is intended to\nbe reviewed by only the individual or organization named above. If you are not the intended recipient or an authorized\nrepresentative of the intended recipient, you are hereby notified that any review, dissemination or copying of this email\nand its attachments, if any, or the information contained herein is prohibited. If you have received this email in error,\nplease immediately notify the sender by return email and delete this email from your system.\n\n\n\n\n 2\n\f Case 4:23-cv-01798 Document 20-6 Filed on 06/30/23 in TXSD Page 4 of 9\n\n\n\n\n NON-DISCLOSURE AGREEMENT\n\n This NON-DISCLOSURE AGREEMENT (this \u201cAgreement\u201d) is made and entered into\nas of , between OBM, Inc, a Delaware corporation (\u201cOBM\u201d), and the undersigned\n(the \u201cClient\u201d). OBM and the Client are hereinafter referred to individually as a \u201cParty\u201d and\ncollectively as the \u201cParties\u201d.\n\n Explanatory Statements\n\n OBM and the Client are currently in preliminary discussions with respect to a potential\nbusiness transaction or arrangement (the \u201cPotential Transaction\u201d). In connection with those\ndiscussions regarding the Potential Transaction, OBM may furnish to the Client, or the Client\u2019s\nofficers, directors, members, affiliates, stockholders, employees, or agents, or other persons acting\non their behalf (each, a \u201cRepresentative\u201d and collectively, the \u201cRepresentatives\u201d) certain\ninformation concerning the business, affairs, and operations of OBM or OBM\u2019s clients that is non-\npublic, confidential, and proprietary. The Client may also furnish to OBM and OBM\u2019s\nRepresentatives certain information concerning the business, affairs, and operations of the Client\nor the Client\u2019s clients that is non-public, confidential, and proprietary. The Parties desire to protect\nand prohibit the disclosure of such Confidential Information (as defined below) as set forth in this\nAgreement. Whenever a Party is disclosing Confidential Information, it is the \u201cDisclosing Party,\u201d\nand whenever a Party is the recipient of Confidential Information, it is the \u201cRecipient.\u201d\n\n Agreement\n\n NOW, THEREFORE, in consideration of the premises, and for other good and valuable\nconsideration, the receipt and sufficiency of which are hereby acknowledged, the Parties, intending\nto be legally bound, hereby covenant and agree as follows:\n\n 1. Explanatory Statements. The Explanatory Statements to this Agreement shall\nconstitute an integral part of this Agreement and are incorporated herein as if set forth in the body\nhereof.\n\n 2. Confidential Information. As used in this Agreement, the term \u201cConfidential\nInformation\u201d shall mean all oral or written confidential or proprietary information of the\nDisclosing Party disclosed to the Recipient or its Representatives, whether marked as\n\u201cconfidential\u201d or not, and including, but not limited to: (a) all financial, customer, client, vendor,\nsupplier, employee or other business or personal information; (b) information relating to trade\nsecrets, trademarks, service marks, patents or copyrights, or any applications therefore, of the\nDisclosing Party or any vendor, supplier, service provider, customer, client, independent\nrepresentative or consultant of Disclosing Party; (c) information relating to existing or\ncontemplated products, services, technology, processes, manuals, computer systems and/or\nsoftware of the Disclosing Party or any vendor, supplier, customer or client of the Disclosing Party;\n(d) information relating to business plans, sales or marketing methods, methods of doing business,\ncustomer lists and information, customer and client usages and/or requirements, and vendor,\nsupplier, customer or client information of the Disclosing Party or any vendor, supplier, customer\nor client of the Disclosing Party; (e) the existence of this Agreement or the discussions or\n\f Case 4:23-cv-01798 Document 20-6 Filed on 06/30/23 in TXSD Page 5 of 9\n\n\n\n\nnegotiations that are currently taking place or have taken place concerning the Potential\nTransaction, including the proposed terms and conditions of the Potential Transaction, the status\nof such discussions or negotiations, or the identity of any of the Parties; and (f) any other\ninformation whatsoever disclosed or made available by the Disclosing Party or its Representatives\nto the Recipient or its Representatives; and (g) all copies and reproductions of any of the foregoing.\nAll information which is orally or visually disclosed to the Recipient or its Representatives by the\nDisclosing Party or its Representatives shall in all cases also constitute Confidential Information.\nConfidential Information shall also include all analyses, compilations, notes, studies or other\ndocuments disclosed to or prepared by or on behalf of the Recipient or its Representatives to the\nextent they contain, reflect or are based upon or derived from any such Confidential Information.\nThe definition of Confidential Information shall not include any information that: (w) was, is, or\nbecomes generally available to the public, other than as a result of a disclosure by the Recipient or\nits Representatives; (x) was, is, or becomes available to the Recipient or its Representatives on a\nnon-confidential basis from a source other than the Disclosing Party or its Representatives;\nprovided that such source is not bound by a confidentiality agreement with the Disclosing Party;\n(y) was, is, or becomes required to be disclosed by applicable law (subject to the provisions of\nSection 4); or (z) is at any time developed by the Recipient or its Representatives independently\nof any Confidential Information, as evidenced by documentation reasonably satisfactory to the\nDisclosing Party.\n\n 3. Non-Disclosure and Non-Use of Confidential Information. The Recipient agrees\nthat the Recipient shall, and shall cause its Representatives to, (a) not disclose the Confidential\nInformation to anyone other than to such of Recipient\u2019s Representatives who may need to know\nor review the Confidential Information for purposes of evaluating the Potential Transaction; (b)\nnot use the Confidential Information for any purpose other than to evaluate the Potential\nTransaction; and (c) promptly notify the Disclosing Party upon discovery of any unauthorized use\nor disclosure of the Confidential Information and take reasonable steps to regain possession of\nsuch Confidential Information and prevent further breach of this Agreement. The Recipient shall\nbe responsible for any breach of this Agreement by any of the Recipient\u2019s Representatives.\n\n 4. Mandatory Disclosure. In the event that the Recipient or any of its Representatives\nbecomes legally compelled (by oral questions, interrogatories, requests for information or\ndocuments, subpoena, civil investigative demand, or similar process) to disclose any of the\nConfidential Information, the Recipient shall provide the Disclosing Party, prior to disclosure, with\nwritten notice thereof so that the Disclosing Party may seek a protective order or other appropriate\nremedy or waive compliance with the provisions of this Agreement. The Recipient agrees to\ncooperate with the Disclosing Party (at Disclosing Party\u2019s expense) in securing any such protective\norder or other similar remedy. In the event that such protective order or other remedy is not\nobtained, or that the Disclosing Party waives compliance with the provisions of this Agreement,\nthe Recipient and its Representatives, as appropriate, shall furnish, based upon the advice of\ncounsel, only that portion of the Confidential Information that is legally required to be disclosed.\n\n 5. Ownership of Confidential Information. All Confidential Information shall remain\nthe property of the Disclosing Party and the Recipient and its Representatives shall not acquire any\nright or license, express or implied, with respect to any Confidential Information.\n 2\n\f Case 4:23-cv-01798 Document 20-6 Filed on 06/30/23 in TXSD Page 6 of 9\n\n\n\n\n 6. Representations or Warranties Regarding Confidential Information. The Recipient\nhereby acknowledges and agrees that neither the Disclosing Party nor any of its Representatives\n(i) makes any representation or warranty concerning the accuracy or completeness of the\nConfidential Information or (ii) shall have any liability to the Recipient as a result of the use of the\nConfidential Information by the Recipient or its Representatives, except as may arise pursuant to\na definitive agreement between the Parties, when, as, and if executed, and subject to such\nlimitations and restrictions as may be specified in such definitive agreement; provided, however,\nthat, notwithstanding the anything else in this Agreement to the contrary, the Disclosing Party\nhereby represents, warrants, covenants, and agrees that it has not disclosed, and shall not at any\ntime disclose, to the Recipient any Confidential Information of any other person, the disclosure of\nwhich to the Recipient would be a breach or violation of any agreement between the Disclosing\nParty any other person, would be prohibited by law, or would otherwise subject the Recipient to\nany liability or obligation of any kind whatsoever other than the obligations of confidentiality set\nforth in this Agreement.\n\n 7. Return of Confidential Information. In the event that the Parties elect not to proceed\nwith the Potential Transaction, the Disclosing Party may request in writing that the Recipient and\nits Representatives return or destroy the Confidential Information. As soon as reasonably\npracticable following such written request, the Recipient and its Representatives will either return\nall Confidential Information to the Disclosing Party or destroy all Confidential Information,\nwithout retaining any copies thereof. Notwithstanding the foregoing, Recipient shall be permitted\nto retain an electronic copy of any Confidential Information in compliance with any bona fide,\npreexisting records retention policy solely for archival purposes or as required by law. Any\nConfidential Information that is not so returned shall remain subject to the confidentiality and other\nobligations set forth in this Agreement.\n\n 8. Non-Solicitation. For a period of three years from the date of this Agreement,\nneither Party shall, other than with the prior written consent of the other Party, solicit, encourage,\nor induce to leave such Party\u2019s employment any employee of the other Party. The foregoing\nrestriction shall not apply to any solicitation, encouragement, inducement, or hiring of any\nindividual who has responded or may respond to general media advertisements or solicitations or\nnon-directed search inquiries.\n\n 9. Term and Termination. This Agreement and all obligations hereunder shall be\neffective as of the date first written above and shall automatically terminate on the fifth third\nanniversary of such date.\n\n 10. No Obligation to Close the Potential Transaction. Nothing in this Agreement shall\nbe construed to create a binding obligation on any Party to consummate the Potential Transaction.\nThe Parties will only become legally obligated to proceed with the Potential Transaction in\naccordance with the terms and conditions of a definitive agreement that the Parties may enter into\nfollowing the date of this Agreement.\n\n 11. Entire Agreement. This Agreement contains the entire, complete, and integrated\n 3\n\f Case 4:23-cv-01798 Document 20-6 Filed on 06/30/23 in TXSD Page 7 of 9\n\n\n\n\nagreement between the Parties with respect to the subject matter hereof, and supersedes any prior\nor contemporaneous understandings, agreements or representations by or between the Parties,\nwritten or oral, express or implied, which may have related to the subject matter hereof in any way.\n\n 12. Assignment. This Agreement and all of the provisions hereof shall be binding upon\nand inure to the benefit of the Parties and their respective successors and permitted assigns, except\nthat neither this Agreement nor any of the rights, interests or obligations hereunder may be\nassigned by any Party without the prior written consent of the other Parties hereto.\n\n 13. Amendments. This Agreement may be amended, modified, and supplemented only\nby written agreement among the Parties which states that it is intended to be a modification of this\nAgreement.\n\n 14. Severability. Whenever possible, each provision of this Agreement will be\ninterpreted in such manner as to be effective and valid under applicable law, but if any provision\nof this Agreement is held to be prohibited by or invalid under applicable law, such provision will\nbe deemed severable and ineffective only to the extent of such prohibition or invalidity, without\ninvalidating the remainder of such provision or the remaining provisions of this Agreement.\n\n 15. Remedies. The Parties agree that irreparable damage would occur in the event that\nany of the provisions of this Agreement were not performed in accordance with their specific\nterms. It is accordingly agreed that the Parties shall be entitled to preliminary and/or permanent\ninjunction, specific performance of the terms hereof, or other equitable relief, without prejudice to\nany other rights and remedies that the Parties may have for a breach of this Agreement at law or\nin equity.\n\n 16. Governing Law; Jurisdiction; Venue. All questions concerning the construction,\nvalidity, and interpretation of this Agreement and the performance of the obligations imposed by\nthis Agreement will be governed by the laws of the State of Maryland Delaware without reference\nto any conflict of laws rules. The Parties hereby (i) agree and consent to (and waive any challenge\nor objection to) personal jurisdiction in the State of DelawareMaryland, (ii) agree that any action\nor proceeding arising out of or brought to enforce the provisions of this Agreement may be brought\nin any Federal or state court in the State of DelawareMaryland, and irrevocably consent to the\njurisdiction of each such court, (iii) agree to file such litigation or lawsuit only in such courts.\n\n 17. Notices. All notices and other communications hereunder shall be in writing and\nshall be deemed duly given (a) on the date of delivery if delivered personally, or by telecopy or\ntelefacsimile, upon confirmation of receipt, (b) on the first business day following the date of\ndispatch if delivered by a nationally recognized next-day courier service, or (c) on the third\nbusiness day following the date of mailing if delivered by registered or certified U.S. mail, return\nreceipt requested, postage prepaid. All notices or other communications required or permitted\nhereunder shall be given to the Parties at their respective addresses as follows:\n\n If to OBM: OBM, Inc.\n P.O. Box 50133\n 4\n\f Case 4:23-cv-01798 Document 20-6 Filed on 06/30/23 in TXSD Page 8 of 9\n\n\n\n\n Baltimore, Maryland 21211\n Attention: Daniel Lawrence\n\n If to the Client, to the address set forth under his, her or its name on the signature page of\nthis Agreement.\n\n 18. Voluntary Agreement. By voluntarily executing this Agreement, the Parties\nconfirm that they have had the opportunity to have this Agreement explained to them by their\nattorneys, and, in voluntarily executing this Agreement, the Parties rely upon their own judgment\nand the advice of their attorneys. By voluntarily executing this Agreement, the Parties confirm\ntheir competence to understand this Agreement and hereby accept the terms of this Agreement.\nAccordingly, any rule of law or any legal decision that would require interpretation of any claimed\nambiguities in this Agreement against the party that drafted it has no application and any such right\nis expressly waived.\n\n 19. Counterparts. This Agreement may be executed simultaneously in multiple\ncounterparts, each of which will be deemed to be an original copy of this Agreement and all of\nwhich together will be deemed to constitute one and the same agreement. The exchange of copies\nof this Agreement and of signature pages by facsimile (or .pdf) transmission shall constitute\neffective execution and delivery of this Agreement as to the Parties and may be used in lieu of the\noriginal Agreement and signature pages thereof for all purposes.\n\n\n\n\n {Signatures appear on the following page}\n\n\n\n\n 5\n\f Case 4:23-cv-01798 Document 20-6 Filed on 06/30/23 in TXSD Page 9 of 9\n\n\n\n\n IN WITNESS WHEREOF, each of the Parties hereto has executed this Agreement as of\nthe day and year first above written.\n\nOBM, INC\n\n\nBy:\n\nName: Daniel Lawrence\n\nTitle: CEO\n\n\n\nLancium LLC\n\n\nBy:\n\n\nName:\n\n\nTitle:\n\n\nAddress: 9950 Woodloch Forest Drive, Suite 1600, The Woodlands, Texas 77380\n\f","ocr_status":2,"date_upload":"2023-12-05T22:20:57.896432-08:00","document_number":"20","attachment_number":6,"pacer_doc_id":"179043051678","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit 3","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999422/","id":379999422,"tags":[],"absolute_url":"/docket/67396788/20/7/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.277390-08:00","date_modified":"2025-01-22T07:03:24.419917-08:00","sha1":"0ed0f4fef0f6efdb5024bc5cdc311d41c937724a","page_count":4,"file_size":175732,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.7.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.7.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 20-7 Filed on 06/30/23 in TXSD Page 1 of 4\n\n\n\n\n EXHIBIT 4\n\f Case 4:23-cv-01798 Document 20-7 Filed on 06/30/23 in TXSD Page 2 of 4\n\n\n\n\nFrom: Daniel Lawrence \nSent: Friday, January 6, 2023 1:27 PM\nTo: ian.rock@lancium.com\nCc: Brandon Greenfield\nSubject: Re: NDA\nAttachments: OBM Inc - Lanicum SOC 2 NDA.DOCX\n\n\n\nHey Ian,\n\nYou're correct. Mostly because we don't have a contractual agreement with you all yet.\n\nSince it's for SOC 2 purposes, the attached one should be all we need. Maybe a little easier this route.\n\nThanks,\nDan\n\n\nOn Thu, Jan 5, 2023 at 8:37 PM wrote:\n I understood the original NDA was a requirement from Foreman side to provide SOC 1/2 reporting.\n\n Is this not the case?\n\n From the other side Dan, i am happy to set a preliminary call at your convenience.\n\n Ian\n\n Ian Rock\n Vice President IT Operations\n 9950 Woodloch Forest Drive\n The Woodlands\n Texas 77380\n LANCIUM LLC\n 713 839 5246\n\n\n On Jan 5, 2023, at 7:29 PM, Daniel Lawrence wrote:\n\n\n Hey guys,\n\n We just caught up with legal (sorry for the delay here - I've been out of commission for a bit,\n then the holidays).\n\n I was bringing them back up to speed and once I shared the context, they mentioned that an\n NDA might be premature. We are very comfortable exploring with you the basics of a potential\n business partnership without one. Before either of us disclose what we each view as confidential\n information, we should ensure there\u2019s enough alignment on what a potential partnership would\n 1\n\f Case 4:23-cv-01798 Document 20-7 Filed on 06/30/23 in TXSD Page 3 of 4\n\nlook like. Once we sense we\u2019re seeing customers, products and market opportunities the same\nway, then it makes total sense to enter into an NDA with strong mutual protections.\n\nWhat we don\u2019t want to do is have either of us disclose or be put in a position by the other\u2019s\ndisclosure of some knowledge which complicates what either of us are doing today or thinking\nabout doing tomorrow. We expect that our initial conversation would be a general one regarding\nour views of the market and information we already know about each other to gauge the\npotential for a business relationship. During these preliminary conversations, we don\u2019t plan to\ndisclose information that we deem to be confidential, and don\u2019t expect you to either. We are\nmore than comfortable not having an NDA in effect to have this initial conversation.\n\nIf you would prefer that an NDA be in place, a revised one is attached. This NDA we view as\ntemporary, allowing us to have the same conversation we\u2019re suggesting above, after which if we\ndecide to proceed, we can enter into a more robust NDA. Our legal team took a look at the\nversion that we initially sent you and edited it in the spirit of what I\u2019ve outlined regarding our\nplanning initial conversation. They have tweaked the NDA to document the measured steps we\nwould take to ensure that both of us are comfortable with sharing any sensitive information\nbefore it is shared. To be fully open, we don\u2019t plan on sharing proprietary information until we\nhave a sense that a partnership of some form with our two organizations makes sense.\n\nLet us know how you want to approach our discussions. We can either do so after signing an\nNDA that addresses the preliminary nature of our meeting in the form attached, or we can\nsimply meet without such an NDA and moderate what we disclose to each other until we\u2019re\ncomfortable signing a more thorough NDA. It\u2019s really your call.\n\nThanks so much for the patience,\nDan\n\n\nOn Mon, Jan 2, 2023 at 7:50 PM Brandon Greenfield \nwrote:\n Hello Dan,\n\n Here is a copy of the NDA our legal team looked over. Please reach out if you have any\n questions or concerns.\n\n\n Regards,\n\n Brandon\n\n\n On Mon, Jan 2, 2023 at 5:55 PM wrote:\n Hey Dan,\n\n As we discussed i am hoping we can get together soon. Do need to get the NDA closed out\n though.\n You have that from Brandon.\n\n Can we close that then fix a get togther?\n\n 2\n\f Case 4:23-cv-01798 Document 20-7 Filed on 06/30/23 in TXSD Page 4 of 4\n\n Ian Rock\n Vice President IT Operations\n 9950 Woodloch Forest Drive\n The Woodlands\n Texas 77380\n LANCIUM LLC\n 713 839 5246\n\n CONFIDENTIALITY NOTICE: The information in this email may be confidential and/or\n privileged. This email is intended to be reviewed by only the individual or organization named\n above. If you are not the intended recipient or an authorized representative of the intended\n recipient, you are hereby notified that any review, dissemination or copying of this email and\n its attachments, if any, or the information contained herein is prohibited. If you have received\n this email in error, please immediately notify the sender by return email and delete this email\n from your system.\n\n\n\n --\n Daniel Lawrence\n CEO\n Foreman.mn - OBM, Inc.\n 1 N Haven Street, Suite 3\n Baltimore, MD 21224\n \n\nCONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This\nemail is intended to be reviewed by only the individual or organization named above. If you are not the\nintended recipient or an authorized representative of the intended recipient, you are hereby notified that any\nreview, dissemination or copying of this email and its attachments, if any, or the information contained herein\nis prohibited. If you have received this email in error, please immediately notify the sender by return email and\ndelete this email from your system.\n\n\n\n--\nDaniel Lawrence\nCEO\nForeman.mn - OBM, Inc.\n1 N Haven Street, Suite 3\nBaltimore, MD 21224\n\n\n\n\n 3\n\f","ocr_status":2,"date_upload":"2023-12-05T22:20:58.458318-08:00","document_number":"20","attachment_number":7,"pacer_doc_id":"179043051679","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit 4","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999423/","id":379999423,"tags":[],"absolute_url":"/docket/67396788/20/8/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.307627-08:00","date_modified":"2025-01-22T07:03:24.426546-08:00","sha1":"b6d8b644334a40b59ff7fedf35bb62062c46456a","page_count":3,"file_size":206291,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.8.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.8.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 20-8 Filed on 06/30/23 in TXSD Page 1 of 3\n\n\n\n\n EXHIBIT 5\n\f Case 4:23-cv-01798 Document 20-8 Filed on 06/30/23 in TXSD Page 2 of 3\n\n\n\n\nFrom: Ian Rock \nSent: Monday, April 3, 2023 3:40 PM\nTo: Dan Lawrence\nSubject: Fwd: Foreman and Lancium\n\n\n\nDan,\n\nI reached out again last week in an endeavour to see if we could get together to discuss Foreman and Lancium\nbusiness. Hoping you can get back to me but in the meantime we will send a letter over to you.\n\nLancium is receptive to commercial opportunities for collaboration with Foreman\nand is certainly keen to discuss this further.\n\nRegards\nIan\n\n\n---------- Forwarded message ---------\nFrom: Ian Rock \nDate: Tue, Mar 28, 2023 at 10:12 AM\nSubject: Foreman and Lancium\nTo: Dan Lawrence \n\n\nHey Dan,\n\nIt was great to talk to you at Digital Wildcatters.\nWhen are you back in town? Really want to sit and discuss working together going forward. Great opportunity\nfor us to work together.\n\nIan\n\n\n--\n\nIan J Rock\nVice President IT Operations\nLancium LLC\n\n\n\n\nThe Woodlands Towers\n9950 Woodloch Forest Drive\nThe Woodlands\nTexas 77380\nEmail: ian.rock@lancium.com\nPhone: 713 839 5246\n 1\n\f Case 4:23-cv-01798 Document 20-8 Filed on 06/30/23 in TXSD Page 3 of 3\n\n\n\n\n--\n\nIan J Rock\nVice President IT Operations\nLancium LLC\n\n\n\n\nThe Woodlands Towers\n9950 Woodloch Forest Drive\nThe Woodlands\nTexas 77380\nEmail: ian.rock@lancium.com\nPhone: 713 839 5246\n\n\n\n\n 2\n\f","ocr_status":1,"date_upload":"2023-12-05T22:20:58.994976-08:00","document_number":"20","attachment_number":8,"pacer_doc_id":"179043051680","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit 5","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999424/","id":379999424,"tags":[],"absolute_url":"/docket/67396788/20/9/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.342050-08:00","date_modified":"2025-01-22T07:03:24.433259-08:00","sha1":"9ade78fa8a99013d3e2246b8fb3d491ec08fefec","page_count":2,"file_size":193962,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.9.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.9.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 20-9 Filed on 06/30/23 in TXSD Page 1 of 2\n\n\n\n\n EXHIBIT 6\n\f Case 4:23-cv-01798 Document 20-9 Filed on 06/30/23 in TXSD Page 2 of 2\n\n\n\n\nSubject: Invitation: Dan & Michael @ Wed Apr 5, 2023 3:30pm - 4pm (EDT) (dan@obm.mn)\n\nStart: Wed 4/5/2023 3:30 PM\nEnd: Wed 4/5/2023 4:00 PM\nShow Time As: Tentative\n\nRecurrence: (none)\n\nOrganizer: michael.mcnamara@lancium.com\n\n\n\n\n When\n Join with Google Meet\n Wednesday Apr 5, 2023 \u22c5 3:30pm \u2013 4pm (Eastern Time -\n New York)\n Meeting link\n Guests meet.google.com/zsm-oobm-mrt\n michael.mcnamara@lancium.com - organizer\n dan@obm.mn Join by phone\n View all guest info (US) +1 260-638-0327\n PIN: 584996266\n Reply for dan@obm.mn\n More phone numbers\n Yes No Maybe\n\n More options\n\n\n\n\n Invitation from Google Calendar\n\n You are receiving this email because you are subscribed to calendar notifications. To stop receiving these emails, go to\n Calendar settings, select this calendar, and change \"Other notifications\".\n\n Forwarding this invitation could allow any recipient to send a response to the organizer, be added to the guest list, invite\n others regardless of their own invitation status, or modify your RSVP. Learn more\n\n\n\nCONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This email is intended to\nbe reviewed by only the individual or organization named above. If you are not the intended recipient or an authorized\nrepresentative of the intended recipient, you are hereby notified that any review, dissemination or copying of this email\nand its attachments, if any, or the information contained herein is prohibited. If you have received this email in error,\nplease immediately notify the sender by return email and delete this email from your system.\n\n\n\n\n 1\n\f","ocr_status":2,"date_upload":"2023-12-05T22:20:59.570341-08:00","document_number":"20","attachment_number":9,"pacer_doc_id":"179043051681","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit 6","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999425/","id":379999425,"tags":[],"absolute_url":"/docket/67396788/20/10/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.380343-08:00","date_modified":"2025-01-22T07:03:24.440609-08:00","sha1":"4bbdcca4638de59b9ae7ed2497317f873a59001e","page_count":9,"file_size":266186,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.10.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.10.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 20-10 Filed on 06/30/23 in TXSD Page 1 of 9\n\n\n\n\n EXHIBIT 7\n\f Case 4:23-cv-01798 Document 20-10 Filed on 06/30/23 in TXSD Page 2 of 9\n\n\n\n\nFrom: Scott McFarland \nSent: Tuesday, April 18, 2023 3:04 PM\nTo: Daniel Lawrence\nSubject: Re: Lancium | Foreman\n\n\nYou bet! Just sent.\n\nThank you!\nScott\n\n\n\nFrom: Daniel Lawrence \nDate: Tuesday, April 18, 2023 at 1:53 PM\nTo: Scott McFarland \nCc: ian.rock@lancium.com \nSubject: Re: Lancium | Foreman\n\nHi Scott,\n\nNext Monday is perfect (11 \u2010 12). Can you possibly shoot over an invite?\n\nSorry in advance if I auto\u2010reject. Will accept once I see it (that's a \"focus time\" for me that I often cancel).\n\nThanks,\nDan\n\n\nOn Tue, Apr 18, 2023 at 2:40 PM Scott McFarland wrote:\n\n Hi Dan,\n\n\n\n Would you have time for a call with me next Monday the 24th between 11am\u201012pm central or 1pm\u20103pm central? It\n would be good for you and I to get an introductory meeting and we can catch up on the business conversation to\n organize our thoughts together.\n\n\n\n Let me know if any of those times work for a call and I will get us set on the calendar.\n\n\n\n Thank you,\n\n Scott\n\n\n 1\n\f Case 4:23-cv-01798 Document 20-10 Filed on 06/30/23 in TXSD Page 3 of 9\n\n\n\nFrom: Daniel Lawrence \nDate: Monday, April 17, 2023 at 6:17 PM\nTo: Scott McFarland \nCc: ian.rock@lancium.com \nSubject: Re: Lancium | Foreman\n\nHi Scott,\n\n\n\nWelcome! And it\u2019s nice to meet you as well.\n\n\n\nLooking forward to seeing what you guys have in mind. No rush at all.\n\n\n\nThanks,\n\nDan\n\n\n\nOn Mon, Apr 17, 2023 at 7:09 PM Scott McFarland wrote:\n\n Hi Dan,\n\n\n\n Sorry for the late response today. I just came onboard Lancium as the Chief Revenue Officer for the business a few\n weeks ago. It\u2019s very nice to meet you virtually.\n\n\n\n Ian is out on PTO and has spotty coverage. I wanted to let you know that I spoke with Michael a bit ago and he will be\n circling back with you later this week to discuss. I look forward to getting to meet you soon.\n\n\n\n Thank you,\n\n Scott\n\n\n\n Scott McFarland\n\n Chief Revenue Officer\n 2\n\f Case 4:23-cv-01798 Document 20-10 Filed on 06/30/23 in TXSD Page 4 of 9\nScott.McFarland@lancium.com\n\n913.221.5108\n\nHave a plan. Write it down. Share it with someone that can help.\n\n\n\n\nFrom: ian.rock@lancium.com \nDate: Monday, April 17, 2023 at 11:25 AM\nTo: Scott McFarland \nSubject: Fwd: Lancium | Foreman\n\n\n\n\nBegin forwarded message:\n\n From: Daniel Lawrence \n Date: April 17, 2023 at 8:46:42 AM CDT\n To: Ian Rock \n Subject: Re: Lancium | Foreman\n\n\n\n Hey Ian,\n\n\n\n I hope you had a great weekend!\n\n\n\n I wanted to touch base to see if you guys had a draft of those potential business terms yet.\n\n\n\n Looking forward to hearing from you.\n\n 3\n\f Case 4:23-cv-01798 Document 20-10 Filed on 06/30/23 in TXSD Page 5 of 9\n\n\n\nThanks,\n\nDan\n\n\n\n\nOn Tue, Apr 4, 2023 at 10:42 AM Ian Rock wrote:\n\n Sent you an invite for 4pm.\n\n Thanks Dan, talk to you later.\n\n Ian\n\n\n\n On Tue, Apr 4, 2023 at 9:37 AM Daniel Lawrence wrote:\n\n Ian,\n\n\n\n I appreciate the calendar flexibility. Can we shoot for 4 PM central?\n\n\n\n Thanks,\n\n Dan\n\n\n\n\n On Tue, Apr 4, 2023 at 9:38 AM Ian Rock wrote:\n\n Hey Dan,\n\n I am good from !0:15 \u2010 11am today or after 3PM central or pretty much anytime tomorrow.\n Let me know and I will send an invite.\n\n\n\n Thanks\n\n Ian\n\n\n 4\n\fCase 4:23-cv-01798 Document 20-10 Filed on 06/30/23 in TXSD Page 6 of 9\n\n\n\nOn Tue, Apr 4, 2023 at 8:12 AM Daniel Lawrence wrote:\n\n Ian,\n\n\n\n I received a letter from your law firm asking me to reach out to you to discuss commercial\n opportunities for collaboration. When can we talk?\n\n\n\n Thanks,\n\n Dan\n\n\n\n\n \u2010\u2010\n\n Daniel Lawrence\n\n CEO\n\n Foreman.mn \u2010 OBM, Inc.\n\n 1 N Haven Street, Suite 3\n\n Baltimore, MD 21224\n\n\n\n\n\u2010\u2010\n\n\n\nIan J Rock\n\nVice President IT Operations\n\nLancium LLC\n\nError! Filename not specified.\n\nThe Woodlands Towers\n9950 Woodloch Forest Drive\n\n 5\n\f Case 4:23-cv-01798 Document 20-10 Filed on 06/30/23 in TXSD Page 7 of 9\n\n The Woodlands\n\n Texas 77380\n\n Email: ian.rock@lancium.com\n\n Phone: 713 839 5246\n\n\n CONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged.\n This email is intended to be reviewed by only the individual or organization named above. If you\n are not the intended recipient or an authorized representative of the intended recipient, you are\n hereby notified that any review, dissemination or copying of this email and its attachments, if any,\n or the information contained herein is prohibited. If you have received this email in error, please\n immediately notify the sender by return email and delete this email from your system.\n\n\n\n\n \u2010\u2010\n\n Daniel Lawrence\n\n CEO\n\n Foreman.mn \u2010 OBM, Inc.\n\n 1 N Haven Street, Suite 3\n\n Baltimore, MD 21224\n\n\n\n\n\u2010\u2010\n\n\n\n\nIan J Rock\n\nVice President IT Operations\n\nLancium LLC\n\nError! Filename not specified.\n\n\n\n 6\n\f Case 4:23-cv-01798 Document 20-10 Filed on 06/30/23 in TXSD Page 8 of 9\n\n The Woodlands Towers\n 9950 Woodloch Forest Drive\n\n The Woodlands\n\n Texas 77380\n\n Email: ian.rock@lancium.com\n\n Phone: 713 839 5246\n\n\n CONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This\n email is intended to be reviewed by only the individual or organization named above. If you are not\n the intended recipient or an authorized representative of the intended recipient, you are hereby\n notified that any review, dissemination or copying of this email and its attachments, if any, or the\n information contained herein is prohibited. If you have received this email in error, please\n immediately notify the sender by return email and delete this email from your system.\n\n\n\n\n \u2010\u2010\n\n Daniel Lawrence\n\n CEO\n\n Foreman.mn \u2010 OBM, Inc.\n\n 1 N Haven Street, Suite 3\n\n Baltimore, MD 21224\n\n Error! Filename not specified.\n\n\n CONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This email is intended\n to be reviewed by only the individual or organization named above. If you are not the intended recipient or an\n authorized representative of the intended recipient, you are hereby notified that any review, dissemination or copying\n of this email and its attachments, if any, or the information contained herein is prohibited. If you have received this\n email in error, please immediately notify the sender by return email and delete this email from your system.\n\n\u2010\u2010\n\nDaniel Lawrence\n\nCEO\n\n\n 7\n\f Case 4:23-cv-01798 Document 20-10 Filed on 06/30/23 in TXSD Page 9 of 9\n\n Foreman.mn \u2010 OBM, Inc.\n\n 1 N Haven Street, Suite 3\n\n Baltimore, MD 21224\n\n\n CONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This email is intended\n to be reviewed by only the individual or organization named above. If you are not the intended recipient or an\n authorized representative of the intended recipient, you are hereby notified that any review, dissemination or copying\n of this email and its attachments, if any, or the information contained herein is prohibited. If you have received this\n email in error, please immediately notify the sender by return email and delete this email from your system.\n\n\n\n\n\u2010\u2010\nDaniel Lawrence\nCEO\nForeman.mn \u2010 OBM, Inc.\n1 N Haven Street, Suite 3\nBaltimore, MD 21224\n\n\nCONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This email is intended to\nbe reviewed by only the individual or organization named above. If you are not the intended recipient or an authorized\nrepresentative of the intended recipient, you are hereby notified that any review, dissemination or copying of this email\nand its attachments, if any, or the information contained herein is prohibited. If you have received this email in error,\nplease immediately notify the sender by return email and delete this email from your system.\n\n\n\n\n 8\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:00.063167-08:00","document_number":"20","attachment_number":10,"pacer_doc_id":"179043051682","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit 7","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999426/","id":379999426,"tags":[],"absolute_url":"/docket/67396788/20/11/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.408931-08:00","date_modified":"2025-01-22T07:03:24.447498-08:00","sha1":"282277895c148fb78c286e0cc9d3b4efca3c0bb7","page_count":2,"file_size":198597,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.11.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.11.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 20-11 Filed on 06/30/23 in TXSD Page 1 of 2\n\n\n\n\n EXHIBIT 8\n\f Case 4:23-cv-01798 Document 20-11 Filed on 06/30/23 in TXSD Page 2 of 2\n\n\n\n\nFrom: Google Calendar on behalf of scott.mcfarland@lancium.com\nSent: Monday, April 24, 2023 12:30 PM\nTo: dan@obm.mn\nSubject: Accepted: Meeting Reschedule @ Wed Apr 26, 2023 12pm - 12:30pm (EDT) (dan@obm.mn)\nAttachments: invite.ics\n\n\n\n\n scott.mcfarland@lancium.com has accepted this invitation.\n\n\n\n\n When\n Join with Google Meet\n Wednesday Apr 26, 2023 \u22c5 12pm \u2013 12:30pm (Eastern\n Time - New York)\n Meeting link\n Guests meet.google.com/xpb-drsq-fnw\n dan@obm.mn - organizer\n scott.mcfarland@lancium.com Join by phone\n View all guest info (US) +1 304-802-4612\n PIN: 794041026\n\n More phone numbers\n\n\n\n\n Invitation from Google Calendar\n\n You are receiving this email because you are subscribed to calendar notifications. To stop receiving these emails, go to\n Calendar settings, select this calendar, and change \"Other notifications\".\n\n Forwarding this invitation could allow any recipient to send a response to the organizer, be added to the guest list, invite\n others regardless of their own invitation status, or modify your RSVP. Learn more\n\n\n\nCONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This email is intended to\nbe reviewed by only the individual or organization named above. If you are not the intended recipient or an authorized\nrepresentative of the intended recipient, you are hereby notified that any review, dissemination or copying of this email\nand its attachments, if any, or the information contained herein is prohibited. If you have received this email in error,\nplease immediately notify the sender by return email and delete this email from your system.\n\n\n\n\n 1\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:01.024215-08:00","document_number":"20","attachment_number":11,"pacer_doc_id":"179043051683","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit 8","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999427/","id":379999427,"tags":[],"absolute_url":"/docket/67396788/20/12/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.436893-08:00","date_modified":"2025-01-22T07:03:24.454562-08:00","sha1":"bffb9c8eae868f3697c080ed7d25946856cb4f3f","page_count":3,"file_size":243029,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.12.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.12.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 20-12 Filed on 06/30/23 in TXSD Page 1 of 3\n\n\n\n\n EXHIBIT 9\n\f Case 4:23-cv-01798 Document 20-12 Filed on 06/30/23 in TXSD Page 2 of 3\n\n\n\n\nFrom: Scott McFarland \nSent: Tuesday, May 02, 2023 10:26 AM\nTo: Daniel Lawrence\nSubject: Re: THANK YOU and follow-up\n\n\nAwesome! Sent you an invite. And of course\u2026 I got the auto\u2010decline\u2026 LOL!\n\nI also am planning on getting you some additional thoughts prior to Miami.\n\nThx,\nScott\n\n\n\nFrom: Daniel Lawrence \nDate: Monday, May 1, 2023 at 7:14 PM\nTo: Scott McFarland \nSubject: Re: THANK YOU and follow\u2010up\n\nHey Scott,\n\nSounds great. Grabbing a drink at BTC 2023 sounds like a good plan.\n\nThanks,\nDan\n\n\nOn Wed, Apr 26, 2023 at 5:49 PM Scott McFarland wrote:\n\n Dan,\n\n\n\n\n Thank you again for the time earlier today and the transparent conversation. Very help and productive.\n\n\n\n I do believe we should continue to expand on our conversation and opportunity potential together. I\u2019m in Houston next\n week for meetings and then DC World the next week in Austin. The following week is Bitcoin 2023. Perhaps we could\n plan to meet as an in\u2010person follow\u2010up at the conference and have happy hour. We could discuss some partner\n opportunities more deeply over a beer. Would you have time on Thursday, May 18th to plan to have a beer somewhere\n close to the convention center?\n\n\n\n In the meantime, I will spend some more time on some potential options for us and maybe share some high\u2010level ideas\n ahead of time if you wouldn\u2019t mind doing the same.\n\n\n 1\n\f Case 4:23-cv-01798 Document 20-12 Filed on 06/30/23 in TXSD Page 3 of 3\n\n\n\n Thank you,\n\n Scott\n\n\n\n\n Scott McFarland\n\n Chief Revenue Officer\n\n Scott.McFarland@lancium.com\n\n 913.221.5108\n\n Have a plan. Write it down. Share it with someone that can help.\n\n\n\n\n CONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This email is intended\n to be reviewed by only the individual or organization named above. If you are not the intended recipient or an\n authorized representative of the intended recipient, you are hereby notified that any review, dissemination or copying\n of this email and its attachments, if any, or the information contained herein is prohibited. If you have received this\n email in error, please immediately notify the sender by return email and delete this email from your system.\n\n\n\n\n\u2010\u2010\nDaniel Lawrence\nCEO\nForeman.mn \u2010 OBM, Inc.\n1 N Haven Street, Suite 3\nBaltimore, MD 21224\n\n\nCONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This email is intended to\nbe reviewed by only the individual or organization named above. If you are not the intended recipient or an authorized\nrepresentative of the intended recipient, you are hereby notified that any review, dissemination or copying of this email\nand its attachments, if any, or the information contained herein is prohibited. If you have received this email in error,\nplease immediately notify the sender by return email and delete this email from your system.\n\n\n 2\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:01.570336-08:00","document_number":"20","attachment_number":12,"pacer_doc_id":"179043051684","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit 9","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999428/","id":379999428,"tags":[],"absolute_url":"/docket/67396788/20/13/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.465160-08:00","date_modified":"2025-01-22T07:03:24.460990-08:00","sha1":"a8e0ee1176329c49ade869d9bdc98d6e13c3b006","page_count":3,"file_size":184475,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.13.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.13.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 20-13 Filed on 06/30/23 in TXSD Page 1 of 3\n\n\n\n\n EXHIBIT 10\n\f Case 4:23-cv-01798 Document 20-13 Filed on 06/30/23 in TXSD Page 2 of 3\n\n\n\n\nSubject: Invitation: Scott/Dan - quick chat @ Thu May 4, 2023 10am - 10:30am (EDT) (dan@obm.mn)\nLocation: Scott will call Dan's cell\n\nStart: Thu 5/4/2023 10:00 AM\nEnd: Thu 5/4/2023 10:30 AM\nShow Time As: Tentative\n\nRecurrence: (none)\n\nOrganizer: scott.mcfarland@lancium.com\n\n\n\n\n When\n Thursday May 4, 2023 \u22c5 10am \u2013 10:30am (Eastern Time - New York)\n\n Location\n Scott will call Dan's cell\n View map\n\n Organizer\n scott.mcfarland@lancium.com\n\n Guests\n dan@obm.mn\n View all guest info\n\n\n Reply for dan@obm.mn\n\n Yes No Maybe\n\n More options\n\n\n\n\n Invitation from Google Calendar\n\n You are receiving this email because you are subscribed to calendar notifications. To stop receiving these emails, go to\n Calendar settings, select this calendar, and change \"Other notifications\".\n\n Forwarding this invitation could allow any recipient to send a response to the organizer, be added to the guest list, invite\n others regardless of their own invitation status, or modify your RSVP. Learn more\n\n\n\nCONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This email is intended to\n 1\n\f Case 4:23-cv-01798 Document 20-13 Filed on 06/30/23 in TXSD Page 3 of 3\n\nbe reviewed by only the individual or organization named above. If you are not the intended recipient or an authorized\nrepresentative of the intended recipient, you are hereby notified that any review, dissemination or copying of this email\nand its attachments, if any, or the information contained herein is prohibited. If you have received this email in error,\nplease immediately notify the sender by return email and delete this email from your system.\n\n\n\n\n 2\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:02.116543-08:00","document_number":"20","attachment_number":13,"pacer_doc_id":"179043051685","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit 10","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999429/","id":379999429,"tags":[],"absolute_url":"/docket/67396788/20/14/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.492365-08:00","date_modified":"2025-01-22T07:03:24.468190-08:00","sha1":"a7b40d3a15c3e3fe8cce32773fe161c62658353b","page_count":4,"file_size":241622,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.14.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.14.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 20-14 Filed on 06/30/23 in TXSD Page 1 of 4\n\n\n\n\n EXHIBIT 11\n\f Case 4:23-cv-01798 Document 20-14 Filed on 06/30/23 in TXSD Page 2 of 4\n\n\n\n\nFrom: Daniel Lawrence \nSent: Monday, May 08, 2023 11:59 AM\nTo: Scott McFarland\nSubject: Re: Lancium follow-up\n\n\nSounds good. The time you sent over works fine.\n\nThanks,\nDan\n\n\nOn Mon, May 8, 2023 at 11:40 AM Scott McFarland wrote:\n\n How about I buzz your cell tomorrow morning at 9:30AM CT / 10:30AM ET for 15 minutes? I may be a a minute or two\n late just depending upon how long the opening session goes tomorrow but can shoot you a text ahead of the call if that\n is, ok?\n\n\n\n Thx,\n\n Scott\n\n\n\n\n From: Daniel Lawrence \n Date: Monday, May 8, 2023 at 8:02 AM\n To: Scott McFarland \n Subject: Re: Lancium follow\u2010up\n\n Hey Scott,\n\n\n\n Sounds great. Hopefully you're able to enjoy DC World!\n\n\n\n I'm a bit tied up today. Could we get something on the calendar for tomorrow? I'm free before 11 AM EDT, and also\n free from 3 PM EDT and on.\n\n\n\n Thanks,\n\n 1\n\f Case 4:23-cv-01798 Document 20-14 Filed on 06/30/23 in TXSD Page 3 of 4\n\nDan\n\n\n\n\nOn Sat, May 6, 2023 at 3:19 PM Scott McFarland wrote:\n\nHi Dan,\n\n\n\nI had more time to think about some possible terms in relation to a partnership and have reviewed those with Michael\nand Ali. Before I draft up any slides or a document around them, I wanted to give you a call and discuss directly with\nyou so you have some idea of numbers and potential.\n\n\n\nI\u2019ll be in Austin on Monday for the DC World conference but can give you a call on a break to get your feedback before\nsending anything over.\n\n\n\n\nWould that be ok?\n\n\n\nThank you,\n\nScott\n\n\n\nScott McFarland\n\nChief Revenue Officer\n\nScott.McFarland@lancium.com\n\n913.221.5108\n\nHave a plan. Write it down. Share it with someone that can help.\n\n\n\n\n 2\n\f Case 4:23-cv-01798 Document 20-14 Filed on 06/30/23 in TXSD Page 4 of 4\n\n\n CONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This email is intended\n to be reviewed by only the individual or organization named above. If you are not the intended recipient or an\n authorized representative of the intended recipient, you are hereby notified that any review, dissemination or copying\n of this email and its attachments, if any, or the information contained herein is prohibited. If you have received this\n email in error, please immediately notify the sender by return email and delete this email from your system.\n\n\n\n\n \u2010\u2010\n\n Daniel Lawrence\n\n CEO\n\n Foreman.mn \u2010 OBM, Inc.\n\n 1 N Haven Street, Suite 3\n\n Baltimore, MD 21224\n\n\n CONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This email is intended\n to be reviewed by only the individual or organization named above. If you are not the intended recipient or an\n authorized representative of the intended recipient, you are hereby notified that any review, dissemination or copying\n of this email and its attachments, if any, or the information contained herein is prohibited. If you have received this\n email in error, please immediately notify the sender by return email and delete this email from your system.\n\n\n\n\u2010\u2010\nDaniel Lawrence\nCEO\nForeman.mn \u2010 OBM, Inc.\n1 N Haven Street, Suite 3\nBaltimore, MD 21224\n\n\n\n\n 3\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:02.671846-08:00","document_number":"20","attachment_number":14,"pacer_doc_id":"179043051686","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit 11","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999430/","id":379999430,"tags":[],"absolute_url":"/docket/67396788/20/15/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.520591-08:00","date_modified":"2025-01-22T07:03:24.475548-08:00","sha1":"b3841f617bd20a615354a878ee3e97a2015374cc","page_count":3,"file_size":267058,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.15.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.15.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 20-15 Filed on 06/30/23 in TXSD Page 1 of 3\n\n\n\n\n EXHIBIT 12\n\f Case 4:23-cv-01798 Document 20-15 Filed on 06/30/23 in TXSD Page 2 of 3\n\n\n\n\nFrom: Scott McFarland \nSent: Tuesday, May 9, 2023 10:57 PM\nTo: Daniel Lawrence\nSubject: Re: Lancium NDA\n\n\n\nDan,\n\nI totally understand. Just whenever you can get back with it will be good. Then I\u2019ll send over some notes from\nwhat we talked about today and we can move the ball forward.\n\nDo you want to keep the call on Thursday for now or wait until after you\u2019ve gotten this reviewed?\n\nThanks,\nScott\n\nSent from my iPhone\n\nOn May 9, 2023, at 8:50 PM, Daniel Lawrence wrote:\n\n\nHi Scott,\n\nReceived! I will float this over to legal and get some eyes on it.\n\nFYI, I\u2019m traveling Wednesday and Thursday, so any business points might not get any cycles until we head into\nthe weekend.\n\nThanks,\nDan\n\nOn Tue, May 9, 2023 at 5:58 PM Scott McFarland wrote:\n\n Dan,\n\n\n\n After our conversation this morning, it was brought to my attention that we don\u2019t have a current NDA in place\n between Foreman and Lancium. Attached is our standard NDA. Could you execute this and then I can send\n over the points from our conversation earlier today.\n\n\n\n Give me a shout on my cell if there are any issues. I flying out of Austin here in a few.\n\n\n\n Thank you,\n\n 1\n\f Case 4:23-cv-01798 Document 20-15 Filed on 06/30/23 in TXSD Page 3 of 3\n\n Scott\n\n\n\n Scott McFarland\n\n Chief Revenue Officer\n\n Scott.McFarland@lancium.com\n\n 913.221.5108\n\n Have a plan. Write it down. Share it with someone that can help.\n\n\n\n \n\n\n\n\n CONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This\n email is intended to be reviewed by only the individual or organization named above. If you are not the\n intended recipient or an authorized representative of the intended recipient, you are hereby notified that any\n review, dissemination or copying of this email and its attachments, if any, or the information contained herein\n is prohibited. If you have received this email in error, please immediately notify the sender by return email and\n delete this email from your system.\n--\nDaniel Lawrence\nCEO\nForeman.mn - OBM, Inc.\n1 N Haven Street, Suite 3\nBaltimore, MD 21224\n\n\n\n\n 2\n\f","ocr_status":2,"date_upload":"2023-12-05T22:21:03.263387-08:00","document_number":"20","attachment_number":15,"pacer_doc_id":"179043051687","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit 12","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999431/","id":379999431,"tags":[],"absolute_url":"/docket/67396788/20/16/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.551197-08:00","date_modified":"2025-01-22T07:03:24.481905-08:00","sha1":"06e5cc45290110ccc1e227fc3276054b6ba12dcb","page_count":2,"file_size":245429,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.16.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.16.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 20-16 Filed on 06/30/23 in TXSD Page 1 of 2\n\nEXHIBIT 13\n\fCase 4:23-cv-01798 Document 20-16 Filed on 06/30/23 in TXSD Page 2 of 2\n\neal wines e\n* . * *. . * * - . * * . * * . * * . . > * . *. * *. . * * . * * = . * . . * * .\n\nForeman ee\u00bb\n\n@foremanmining 104 subscribers 20 videos\n\nw\n\nForeman is a miner and facility management software that enables crypto...\n\nHOME VIDEOS PLAYLISTS COMMUNITY CHANNELS: ABOUT Q\n\n=) =\n\nWelcome to Foreman! : Foreman Academy: Farm Visualizations with 9: Foreman Academy: Dashboard : Foreman Academy: Monitoring Pools :\n215 views \u00ab 7 months aps \u2018Site Map 281 views \u00ab 7 months ago 168 views + FT months apo\n288 views + T months age\n\nForeman Academy: Ticketing : Foreman Academy: Architecture, Sub- i Foreman Academy: Identifying Issues i Foreman Academy: Pickawe, Adding Miners,\n180 views \u00ab 7 months aga \u2018Clients, Hosting 182. views \u00a9 7 months ago Managing DHCP\n204 views + 7 menths age 527 views + 7 months age\n\nForeman Academy: Farm Security {Foreman Academy: Managing Miners and = | ~\u2014 Foreman Academy: Now You're Ready! {Foreman Academy: Auditing 7\nWorkers\n279 views \u00ab Tmenthe age\n\n94 views - T months ago FT views - 7 months ago 8B views - 7 months ago\n\nForeman Academy: Managing Access 1 Foreman Academy: Introduction {Foreman Academy: Automation and Alerting {Foreman Academy: Infrastructure and :\nVid views \u00a9 7 months aps 291 views + 7 months age 150 views \u00ab 7 months age Managing Any Device\nJ e2 views + T mans age\n\nForeman Academy: Reporting ! Foreman Academy: Automated Curtailment { Tutorials: Integrating MiningRigRentals ! Tutorials: Configuring Your Dashboard 7\n126 views * 7 months ago with Power Control\n\n228 views + 7 months ago\n\nS48 views \u00ab 2 years ago 668 views \u00ab Zyears aps\n\nhttps://www.youtube.com/@foremanmining/videos?view=0&sort=dd&shelf_id=0\n","ocr_status":1,"date_upload":"2023-12-05T22:21:03.861542-08:00","document_number":"20","attachment_number":16,"pacer_doc_id":"179043051688","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit 13","acms_document_guid":""},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/379999432/","id":379999432,"tags":[],"absolute_url":"/docket/67396788/20/17/obm-inc-v-lancium-llc/","date_created":"2023-12-05T22:14:32.579748-08:00","date_modified":"2025-01-22T07:03:24.488375-08:00","sha1":"08c8c6868d9d0f4094d8ed7fc2170198cb1cc701","page_count":2,"file_size":192894,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.17.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.20.17.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":"Case 4:23-cv-01798 Document 20-17 Filed on 06/30/23 in TXSD Page 1 of 2\n\nEXHIBIT 14\n\fCase 4:23-cv-01798 Document 20-17 Filed on 06/30/23 in TXSD Page 2 of 2\n\nAutomation & Remote\nManagement with Foreman |\n\nDaniel Lawrence | The Mining\nPod\n\nCheck out the latest from our YouTube ohannal here!\n\n@ WILLIAM POLE\n\n09 MININGPOD\n\nCe Lh\n\n\u201cHewes actually easier than | thought\" The demand for rare sats is greet for \u2018You might be in possession of a valuable\nBitooin miners uncommen sat\n\nCChack aut the lteat from our YouTube chunnst\n\nbarat CChack aut the ltoat from aur YouTube ehaenal CChack out the ltost from our YouTube channel\nbarat tare!\n\n@ wre nen\n\nGet the Gompars Mining Mame\nReed weekly insights and reoeroh from the ocyptzourrenay industry's best Entar your emai Ez\nmining enelyutn,\n\nMINING About Ua Learn BB Contest Ua\nFacility Application Podeast In Linkedin\nCompuis ls aBitcoin-first company an amisaion to suppert the Procurament Service Researoh Twitter\ndecentralized growth of hashrats-and strangthan natwark wocutity by\nan stars ity by Compass FAQs\nhaiping more people learn, explore and mine Bitecin\nFeosle Policy\nPurshaes Poliay\nFremeyotey Jeresot Service Sinwrert an Marbetsince \u00a9 Hesincacresrrent \u2014 Hertantapeersrt 0 Campane anne in. A eg mare\n\nhttps://compassmining.io/education/automation-remote-management-with-foreman-daniel-lawrence-the-mining-pod/\n","ocr_status":1,"date_upload":"2023-12-05T22:21:04.250395-08:00","document_number":"20","attachment_number":17,"pacer_doc_id":"179043051689","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":2,"description":"Exhibit 14","acms_document_guid":""}],"date_created":"2023-06-30T12:23:03.267804-07:00","date_modified":"2025-01-22T07:03:24.330009-08:00","date_filed":"2023-06-30","time_filed":"14:14:36","entry_number":20,"recap_sequence_number":"2023-06-30.001","pacer_sequence_number":53,"description":"RESPONSE in Opposition to 17 MOTION to Dismiss 1 Complaint, filed by OBM, Inc.. (Attachments: # 1 Proposed Order, # 2 Affidavit, # 3 Affidavit, # 4 Exhibit 1, # 5 Exhibit 2, # 6 Exhibit 3, # 7 Exhibit 4, # 8 Exhibit 5, # 9 Exhibit 6, # 10 Exhibit 7, # 11 Exhibit 8, # 12 Exhibit 9, # 13 Exhibit 10, # 14 Exhibit 11, # 15 Exhibit 12, # 16 Exhibit 13, # 17 Exhibit 14)(Miller, Rodney) (Entered: 06/30/2023)","tags":[]},{"resource_uri":"https://www.courtlistener.com/api/rest/v4/docket-entries/346746925/","id":346746925,"docket":"https://www.courtlistener.com/api/rest/v4/dockets/67396788/","recap_documents":[{"resource_uri":"https://www.courtlistener.com/api/rest/v4/recap-documents/353142334/","id":353142334,"tags":[],"absolute_url":"/docket/67396788/18/obm-inc-v-lancium-llc/","date_created":"2023-06-16T07:39:02.466034-07:00","date_modified":"2025-01-22T07:03:24.292112-08:00","sha1":"7f55c799525b505af4fced44de416062d995e38c","page_count":1,"file_size":217785,"filepath_local":"recap/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.18.0.pdf","filepath_ia":"https://archive.org/download/gov.uscourts.txsd.1917908/gov.uscourts.txsd.1917908.18.0.pdf","ia_upload_failure_count":null,"thumbnail":null,"thumbnail_status":0,"plain_text":" Case 4:23-cv-01798 Document 18 Filed on 06/15/23 in TXSD Page 1 of 1\n United States District Court\n Southern District of Texas\n\n ENTERED\nUNITED STATES DISTRICT COURT SOUTHERN DISTRICT OFJune\n TEXAS\n 16, 2023\n Nathan Ochsner, Clerk\n\n Motion and Order for Admission Pro Hac Vice\n\n Division Houston Case Number 4:23-cv-01798\n\n OBM, INC.\n\n\n versus\n LANCIUM LLC\n\n\n\n Lawyer\u2019s Name Craig D. Leavell\n Firm BARNES & THORNBURG LLP\n Street One North Wacker Drive, Suite 4400\n City & Zip Code Chicago, IL 60606-2833\n Telephone & Email 312-357-1313 Craig.Leavell@btlaw.com\n Licensed: State & Number Illinois Bar No. 6256260\n Federal Bar & Number\n\n\n Name of party applicant seeks to Lancium LLC\n appear for:\n\n\n \u2714\n Has applicant been sanctioned by any bar association or court? Yes _______ No ________\n\n On a separate sheet for each sanction, please supply the full particulars.\n\n\n Dated: 6/5/2023 Signed: s/Craig D. Leavell\n\n\n\n The state bar reports that the applicant\u2019s status is: Active\n\n 6/5/2023 /s/ Isir Said\n Dated: Clerk\u2019s signature\n\n\n\n Order\n This lawyer is admitted pro hac vice.\n\nDated: 6/15/2023\n United States District Judge\n\f","ocr_status":2,"date_upload":"2023-12-05T22:19:35.663548-08:00","document_number":"18","attachment_number":null,"pacer_doc_id":"179042965134","is_available":true,"is_free_on_pacer":null,"is_sealed":null,"document_type":1,"description":"Order on Motion to Appear Pro Hac Vice","acms_document_guid":""}],"date_created":"2023-06-16T07:39:02.457775-07:00","date_modified":"2025-01-22T07:03:24.279632-08:00","date_filed":"2023-06-15","time_filed":null,"entry_number":18,"recap_sequence_number":"2023-06-15.001","pacer_sequence_number":48,"description":"ORDER granting 12 Motion for Craig D. Leavell to Appear Pro Hac Vice Note: Instructions to request Texas Southern CM/ECF registration through PACER are found here.(Signed by Judge Keith P Ellison) Parties notified.(JacquelineMata, 4) (Entered: 06/16/2023)","tags":[]}],"entries_total":"https://www.courtlistener.com/api/rest/v4/docket-entries/?count=on&docket=67396788&page_size=40"}