Spectrum Dynamics Medical Limited v. General Electric Company

LAW OFFICES GREENBLUM & BERNSTEIN, P.L.C.

NEIL F. GREENBLUM PATENT, COPYRIGHT AND TRADEMARK MATTERS HARRY J. GWINNELLO 1950 ROLAND CLARKE PLACE ARNOLD TURK A RESTON, VA 20191-1411 SOK K. HONG 0 0 TEL: (703) 716-1191 IEFEREY R. BOUSQUET © ROBERT W. MUELLER FAX: (703) 716-1180 GARY M. JACOBS © WILLIAM 5. BOSHNICK EMAIL: [email protected] SHAWN A. □□□□□□□□□□ PhD. www.gbpatent.com CHAD □□ □□□□□ BRUCE H. STONER, JR. © a CHUONG T. NGUYEN * mun USDC SDNY c □□□□ DOCUMENT -snrnn ELECTRONICALLY FILED REGISTERED PATENT AGEN DOC NAOKO DATE FILED: 7/23/2021 July 22, 2021 VIA ECF Hon. Katharine H. Parker APPLICATION GRANTED United States Magistrate Judge, Southern District of New York ~ Daniel Patrick Moynihan Courthouse Kethanre tf □□□□ Pearl Street, Room 750 Hon. Katharine H. Parker, U.S.M.J New York, New York 10007 7/23/2021 Re: Spectrum Dynamics Medical Limited v. GE; Case No.: 18-cv-11386 (VSB) Dear Magistrate Judge Parker: We represent Plaintiff Spectrum Dynamics Medical Limited (“Spectrum”) in the above- captioned matter. On behalf of Spectrum and Defendant General Electric Company (“GE”), we write pursuant to Federal Rule of Civil Procedure 5.2(e), Your Honor’s Individual Rule of Practice HI(d), and the parties’ Stipulated Confidentiality and Protective Order (the “Protective Order”) (Doc. 156) to request that several passages contained in Document Number 300, the transcript of the parties’ appearance before Your Honor on June 30, 2021, be redacted and filed under seal. The parties jointly respectfully request that before the transcript is made publicly available, the court reporter be directed to redact the passages highlighted on pages 24-26, 30, 33, and 35 as set forth in Exhibit 1 hereto.

The presumption of public access to judicial documents can be overcome if countervailing factors warrant confidentiality. See Lugosch v. Pyramid Co. of Onondaga, 435 F.3d 110, 120 (2d Cir. 2006); see also Nixon v. Warner Commc’ns Inc., 435 U.S. 589, 598 (1978). Sealing of records may be justified to preserve “higher values,” including the need to protect an entity from competitive injury. Lugosch, 435 F.3d at 124; see also Tropical Sails Corp. v. Yext, Inc., No. 14- cv-7582, 2016 U.S. Dist. LEXIS 49029, at *10-11 (S.D.N.Y. Apr. 12) (risk of “competitive injury is sufficiently serious to warrant protection” of proprietary business information).

Consistent with this, courts routinely permit sealing and redaction of competitively sensitive proprietary business information. See, e.g., Louis Vuitton Malletier S.A. v. Sunny Merch. Corp., Hon. Katharine H. Parker July 22, 2021 Page -2- 97 F. Supp. 3d 485, 511 (S.D.N.Y. 2015); Encyclopedia Brown Prods., Ltd. v. Home Box Office.

Inc., 26 F. Supp. 2d 606, 614 (S.D.N.Y. 1998); see also Nixon, 435 U.S. at 598 (recognizing need to seal information that might “harm a litigant’s competitive standing”).

Here, the discussions in the transcript concern documents containing internal GE information and communications that are not publicly available and confidential details of Spectrum’s involvement in an unrelated third-party proceeding. This information is competitively sensitive and proprietary information of GE or Spectrum, respectively, that, if disclosed, would pose a substantial risk of harm to GE or Spectrum, and constitutes “Highly Confidential — Attorneys’ Eyes Only” information under the Protective Order. (Doc. 156.). This is the sort of competitively sensitive information that courts consistently protect from disclosure. See, e.g., Ferring B.V. v. Allergan, Inc., No. 12-cv-2650, 2017 U.S. Dist. LEXIS 150239, at *16 (S.D.N.Y. Sep. 7) (granting motion to seal documents containing proprietary information related to product development); Encyclopedia Brown, 26 F. Supp. 2d at 612 (sealing documents reflecting sensitive trade secret information). This is particularly the case where, as here, the information to be sealed was not relevant to the Court’s resolution of any issue. Cf Bernstein v. Bernstein Litowitz Berger & Grossman LLP, 814 F. 3d 132, 143 (2d Cir. 2016)(denying sealing request where documents were “highly relevant to the exercise of Article III judicial power’).

The parties’ request is narrowly tailored to protect highly confidential information and does not deprive the public of access to critical information. The parties respectfully request that the Court permit the requested redactions in the publicly available version of the June 30, 2021 transcript (Doc. 300).

Respectfully submitted, /Neil F. Greenblum/ Neil F. Greenblum Ce: All counsel of record (via ECF) {3734902 04884221.DOCX} Exhibit 1 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK I SUBJECT TO PROTECTIVE ORDER: HIGHLY CONFIDENTIAL n re: : Docket #1:18-cv-11386- SPECTRUM DYNAMICS MEDICAL LIMITED, : VSB-KHP Plaintiff, : - against - : GENERAL ELECTRIC COMPANY, et al., : New York, New York June 30, 2021 Defendants. : TELEPHONE CONFERENCE PROCEEDINGS BEFORE THE HONORABLE JUDGE KATHARINE H. PARKER, UNITED STATES MAGISTRATE JUDGE APPEARANCES: For Plaintiff: RIVKIN RADLER LLP BY: GREGORY D. MILLER, ESQ.

25 Main Street Court Plaza North - Suite 501 Hackensack, NJ 07601 GREENBLUM & BERNSTEIN, P.L.C.

BY: NEIL F. GREENBLUM, ESQ.

PETER BRANKO PEJIC, ESQ.

JILL BROWNING, ESQ.

DANIELLE PFIFFERLING, ESQ.

1950 Roland Clarke Place Reston, VA 20191 Transcription Service: Carole Ludwig, Transcription Services East Fourth Street #3C New York, New York 10009 Phone: (212) 420-0771 Email: [email protected] Proceedings conducted telephonically and recorded by electronic sound recording; Transcript produced by transcription service.

APPEARANCES - CONTINUED: For Defendants: THOMPSON HINE BY: MARLA R. BUTLER, ESQ.

Two Alliance Center 3560 Lenox Road NE, Suite 1600 Atlanta, GA 30326 THOMPSON HINE LLP BY: JESSE L. JENIKE-GODSHALK, ESQ.

312 Walnut Street - 14th Floor Cincinnati, OH 45202 THOMPSON HINE LLP BY: BRIAN PHILIP LANCIAULT, JR. Madison Avenue New York, NY 10017 THOMPSON HINE LLP BY: JEFFREY C. METZCAR, ESQ.

Austin Landing 1 10050 Innovation Drive, Suite 400 Dayton, Ohio 45342-4934 INDEX

E X A M I N A T I O N S Re- Re- Witness Direct Cross Direct Cross None E X H I B I T S Exhibit Voir Number Description ID In Dire None 2 THE CLERK: Calling case 18cv11386, Spectrum Dynamics Medical versus General Electric Company; the Honorable Katharine H. Parker, presiding.

5 Beginning with counsel for the plaintiffs, can you please make your appearance for the record?

7 MR. GREGORY MILLER: Good morning, Gregory Miller Rivkin Radler, on behalf of the plaintiff. And also with me from the law firm of Greenblum & Bernstein, we have Neil Greenblum, Branko Pejic, Jill Browning, and Danielle Pfifferling.

12 HONORABLE KATHARINE H. PARKER (THE COURT): Good morning.

14 MR. MILLER: Good morning.

15 THE CLERK: And counsel for the defendants, can you please make your appearance for the record?

17 MS. MARLA BUTLER: Yes, this is Marla Butler from Thompson Hine, and with me are my colleagues, Jeff Metzcar, Jesse Jenike-Godshalk and Brian Lanciault, also from Thompson Hine for the defendants.

21 THE COURT: Welcome. So as a reminder, I ask you to keep your phones on mute unless you’re speaking to eliminate background noise, and to state your names before you speak for the benefit of any court reporter who is asked to transcribe the recording of today’s conference. Also, I want to remind you that the court’s conference line is open to the press and public on a listen only basis and that court rules prohibit others from recording and rebroadcasting court conferences.

5 Violations of this rule may result in sanctions.

6 So welcome, everyone, I hope you had a good June, I can’t believe it’s already July. I am not sure whether it was docketed yet but we are going to be able to convert these conferences to in person conferences because of the changing Covid protocol, and so I think that will be a good thing for the counsel to get together, to see each other and to see the Court in person. So that’s going to be coming out.

13 You have a lot of items on your agenda letter. I’m not sure we can get through all of them today, but I understand from your more recent letter that you resolved some of the items at your meet and confer on Monday. So why don’t we start with Spectrum’s topics and then we’ll move on to GE’s topics, does that sound good?

19 MR. MILLER: Very good, Your Honor.

20 MS. BUTLER: Sounds good, Your Honor.

21 THE COURT: Okay, so I guess, first, as I understand it, Spectrum still has concerns about the discovery and the speed of discovery. I was under the impression that GE was nearly complete with its production, so what exactly is the issue?

2 MR. BRANKO PEJIC: This is Mr. Pejic, Your Honor. The issue is we’re not sure how many documents are coming. In late April, we were told that there was about 10,000 documents to complete. Since then, GE has produced about 23,000 documents which is almost 20 percent of their production. So it looks like that we’re back loading discovery and we have no sense of what’s coming between here and July 15 while we’re trying to prepare for depositions. And so we’d like some clarity from defendants on whether July 15 is a realistic close of substantial, close of document discovery, and potentially how many more documents are coming, because we’ve already received twice as many as we were anticipating.

16 THE COURT: Okay, so can somebody from GE clarify what’s going on?

18 MR. JESSE GODSHALK: Yes, Your Honor, this is Mr. Godshalk, I’m happy to. I mean, you know, frankly, I had spoken with opposing counsel about this earlier this week and they asked me if I believed that we would substantially complete our production by July 15, and I said that we would. So I mean I have already communicated that to opposing counsel.

25 With regard to what is still in the pipeline, I told the Court and opposing counsel what was still in the pipeline at the last conference. I’m happy to do that again and I’ll tell you that what is in the pipeline currently, we are going to make or planning to make another document production at the end of this week. It will have about 5,000 documents. These are documents that were collected from Michael Gazinski (phonetic) and George Mashour (phonetic), these are the documents that were stuck in Israeli customs.

11 We’ve, you know, since received those hard drives and I think we’ve already produced some documents from those custodians, but planning to produce the remainder by the end of this week.

15 We have not yet produced the documents from (indiscernible) Bar-Shalev (phonetic). We may also have some additional documents in response to Spectrum’s sixth set of requests for production but I don’t expect that volume to be large. And as I referenced during the last conference, we may have some additional documents from our privilege review.

22 But again, I do not expect that volume to be large.

23 With regard to the number of documents that we’ve produced since April 28, Your Honor, I did provide an estimate at the April 28 conference that we had 10,000 documents remaining. You know, that was a good faith estimate but it wasn’t a perfect calculation. And, furthermore, after I made that estimate, Spectrum served an additional 28 document requests and demanded that we collect documents from additional custodians, including Mr. Bar-Shalev. And even now, in the most recent agenda letter, they’re demanding that we collect from an additional custodian.

11 So I don’t think Spectrum should be permitted to demand that we produce more documents and then turn around and request relief from the Court because the number of documents that we’ve produced exceeds our earlier estimates.

16 THE COURT: Right. Well the fact that you produced more than you initially estimated is not really a concern given that there’s a continuing document request and additional custodians. So I understand it’s just an estimate. Okay, well it sounds like, regardless, you’re going to be substantially complete by July 15 except it sounds like there’s this other potential custodian. So I guess there’s the Devine and Hodge Yia-Yia (phonetic).

25 MR. JESSE GODSHALK: Correct, Your Honor.

2 MR. PEJIC: Correct. Your Honor, this is Mr. Pejic. We have I believe resolved the Mr. Hodge Yia- Yia issue. We had asked defendants to provide search terms to narrow the 90,000 hits we received after deduping and defendants gave us a set of search terms. We’ve run them and we have somewhere around 13,000 to 15,000 documents to review and produce. So I think that that issue has been resolved.

10 THE COURT: Okay, great, and when do you expect to be able to produce them, by July 15?

12 MR. PEJIC: Oh, certainly by then, Your Honor.

13 THE COURT: Okay, great. And what about Devine. So he’s in-house counsel to GE?

15 MR. PEJIC: Correct, Your Honor. This is Mr. Pejic, correct, Your Honor.

17 THE COURT: Okay. So this all pertains to the claw back issue that’s pending before the Court, is that right?

20 MR. PEJIC: Very much, Your Honor.

21 THE COURT: Okay. So why don’t you summarize your position, Mr. Pejic, and then I’ll hear from GE on this.

24 MR. PEJIC: Our position is, and this was drafted before receiving defendant’s response to the claw back, but it still remains true that there are no entries on the privilege log that would evidence anything as far as a request for legal advice from Mr. Devine or him providing any such information. And the problem there is that Mr. Hefetz who was the recipient of this information, he is a custodian and presumably his documents have been searched and produced. We’ve received about 2,000 documents from him as a custodian, but any documents that he had that evidence those discussions with Mr. Devine are not on the privilege log. And so we believe it would be appropriate for GE to search Mr. Devine’s records because as an in-house counsel he wears two hats and not everything he does is privileged. And so not everything we’d be seeking would be privileged and would help understand his role in this boot camp. And, additionally, any entries of communications with Mr. Hefetz would be on the privilege log and would substantiate the claims of privilege as they relate to the 2004 boot camp.

22 THE COURT: Okay, but Mr. Devine has, there’s going to be a lot of different privileged type of communications in his email because he’s in-house IT counsel. So that’s, are you suggesting that the search be restricted to a very confined set of communications?

4 MR. PEJIC: Yes, Your Honor, in fact, we’d be happy to provide search terms.

6 THE COURT: What do you think that, why do you think that he has relevant information?

8 MR. PEJIC: Well he supposedly organized and prepared a Power Point that was presented at the 2004 boot camp, but he prepared this power point along with Gil Kovalski, I’m sorry about the pronunciation, who is just an inventor and businessperson and, for instance, that actual Power Point has been withheld as privilege but we have no idea who attended the meetings, who it was presented to. And we believe that even that document isn’t privileged in totality because it was authored by a businessperson and an in-house corporate counsel. So we would believe that that would shed a lot of light on what was said at that 2004 boot camp and give a broader understanding of whether what we believe is a commercial statement is actually a privileged statement and a response to a request for legal advice.

22 THE COURT: Well so the Power Point that’s at issue was, is on the privilege log?

24 MR. PEJIC: Correct, Your Honor, but it only has two authors and no recipients.

2 THE COURT: Okay. Because it sounds like it wasn’t sent to anybody, it sounds like it was shown at a meeting.

5 MR. PEJIC: Correct, Your Honor.

6 THE COURT: So do you know what happened at the meeting, are there agendas or anything else?

8 MR. PEJIC: We’ve received approximately ten documents or so related to that meeting and we have a list of proposed attendees and Mr. Devine did not take part in that aspect of it. And we have one slide deck that doesn’t shown Mr. Devine, and other than that, we have some follow-up emails and none of which actually refer to Mr. Devine. And what was discussed there was presumably business strategy as well as some legal strategy. We’re not saying that there’s no privileged information in that Power Point, we’re just saying it’s highly unlikely that that Power Point is privileged in its entirety. And so that’s just another reason why we believe it would be appropriate to search Mr. Devine’s records pursuant to a very limited search.

23 THE COURT: Let me hear from GE on that?

24 MR. BRIAN LANCIAULT: Your Honor, this is Mr. Lanciault. I think, you know, part of the issue here is, you know, the parties are producing privilege logs on a rolling basis. So I suspect, and Mr. Godshalk alluded to this earlier, that, you know, we’re still doing a privilege review and there might be some residual documents produced from that. There’s, of course, going to be more documents logged that will probably shed some light on this.

9 The other point is that, you know, to the extent there are non-privileged, you know, documents about this boot camp, as Mr. Pejic acknowledged, you know, Gil Kovalski is a non-attorney, he’s a custody who we’ve collected from, we’ve produced non- privileged files from his, documents from his files.

15 And so, you know, we think that, it’s GE’s position that to go further to collect from Mr. Devine who, you know, is lead IP counsel or was lead IP counsel during the relevant time at GE is, you know, more burdensome and outside the scope of Rule 26 where we’re going to have to sift through thousands of likely privileged and potentially not relevant documents, you know, simply for I guess the exercise of logging them to, you know, to satisfy what seems to be Spectrum’s curiosity here.

25 We have documents from attendees at the boot camp. As he said, they have an email that shows the attendees or some of the attendees that were there and otherwise, you know, we’ll be logging whatever additional files we have that involve Mr. Devine to the extent they’re privileged, to the extent they’re not, and they, you know, they’ll be produced.

8 THE COURT: Okay. So I don’t believe that it’s appropriate at this point to add Mr. Devine as a custodian. You have not received all of the privilege logs yet and, furthermore, you have received non- privileged documents related to the meeting, Mr. Pejic, and you can depose individuals about what happened at the meeting and then after those depositions, after you’ve had a look at the full privilege log, then maybe you would have a better case. But right now you haven’t demonstrated why the information would be not redundant or proportional to the needs of the case given the other information that’s been produced about this meeting. And also, it’s premature, the request is premature because the production of documents regarding the meeting is not done.

24 So I’m not going to require GE to take a look at, to add Mr. Devine as a custodian. If later in discovery there’s good cause to revisit this, you can raise it again, but at this point I don’t think you’ve made the case to add him as a custodian.

5 MR. PEJIC: Okay, this is Mr. Pejic, thank you, Your Honor. May I ask one question of defendants, though, can they please confirm that they’re not withholding a list of the attendees or any agenda from that 2004 boot camp? Because we certainly haven’t received anything like that. We’ve had -- 11 THE COURT: Well, again, Mr. Pejic, that’s something you can talk about with a meet and confer. What I’ve heard is that they are not done producing the documents yet. So both sides have a requirement to let you know if they’re withholding documents, so I don’t think we need to take up more time on this.

17 So let’s go to GE’s agenda items. So, one, GE thinks that it’s missing documents. So it’s not clear to me whether this issue has been fully resolved from your letter.

20 It seems like some of the things have been resolved but not all, so who wants to address this from GE’s side?

22 MR. JEFFREY METZCAR: Good morning, Your Honor, this is Jeff Metzcar. You’re correct, the parties had a meet and confer on this issue on Monday. I believe that we’ve made progress on some of the items but there is one particular category of documents that I think we need to raise with you now. Defendants have requested documents pertaining to two recent disputes between the plaintiff and a related entity, Molecular Dynamics.

7 Molecular Dynamics claims that it, not the plaintiff, possesses the right to use the trade secrets in this case and, therefore, that plaintiff’s Veriton product infringes Molecular Dynamics’ intellectual property rights. You know, the fact, well, the facts and arguments that Molecular Dynamics would present in those disputes to support its claim that plaintiff does not have the right to make and sell the Veriton and does not have the right to use the very trade secrets that plaintiff has accused GE of misappropriating, those facts and arguments would be highly relevant to this case. Not only to plaintiff’s standing, but also to the issue of plaintiff’s request for damages.

21 So during the last conference with this Court, plaintiff, plaintiff’s counsel represented that it was not withholding any responsive documents. Now we know that plaintiff is withholding all documents relating to this category on the basis of relevance, and that’s why we bring the issue to the Court’s attention.

3 THE COURT: Okay, let me hear from Spectrum.

4 MR. PEJIC: Okay, this is Mr. Pejic.

13 MR. PEJIC: This is Mr. Pejic, correct, Your Honor.

15 THE COURT: Okay. And so, and what is the stage where the, what’s the status of those two separate disputes?

18 MR. PEJIC: This is Mr. Pejic again, the BBI action was resolved in Spectrum’s favor and the Court found that the party is seeking a worldwide freeze order to keep Spectrum from selling the business or otherwise conducting commercial activities was denied for a lack of evidence. And one of the interesting things that makes it very clear that ownership was not at issue is in the final order the judge, the high court judge there in the BBI said that the official transcript indicates that “The learned judge had some difficulty navigating the facts of the applicable law. Learned counsel for the applicants affirmed the judge’s initial understanding that the worldwide freeze order was being sought in support of a claim by applicants over ownership of intellectual property rights. That understanding was erroneous. The worldwide freeze order was being sought in support of a claim for damages for breach of contract.

11 Consequently, it would appear learned counsel for the applicants and the learned judge were speaking at cross purposes for a large part of the hearing. Later in the ex parte hearing the learned judge realized the correct basis for the application, he then accepted apparently uncritically the applicant’s assertion quantum of their damages would be at least $100 million, whilst contained in an affidavit no cogent basis for this or any other figure was set out in this evidentiary vehicle.” And then that said, “The lack of solid evidence of a risk of real dissipation is pivotal in my respectful judgment and requires a discharge of the worldwide freeze order. That will be the order of the Court.” And that was in favor of Spectrum. So the judge -- 25 THE COURT: So and that’s the opinion that you produced to GE?

3 MR. PEJIC: Yes, Your Honor.

4 THE COURT: Okay, and then what’s the status of the other issue?

6 MR. PEJIC: 1 PROCEEDINGS 21 11 THE COURT: Yeah, I don’t see, I don’t see the relevance of this other dispute beyond the opinions that are issued, in my view that this is disproportionate to the needs of this case. If, you know, if it, you know, you can certainly subpoena somebody from these other entities to the extent that they think the trade secrets at issue in this case are their trade secrets, but I would think if that were the case they may be, you’d be making yourself, GE would be making itself a target. I take it these, because these trade secrets are something that Spectrums is saying that GE isn’t properly using.

23 MR. METZCAR: Well, Your Honor, this is Jeff Metzcar again, you know, we’ve been attempting to get these documents since December of 2020, and the reason why we’ve attempted to get them from plaintiff is because the other entity involved, Molecular Dynamics, is, I believe, a Bermuda entity. So obtaining discovery from them is not something that would be simple.

7 We’ve been trying to get these documents, as I said, since December of 2020, and we repeatedly asked whether Spectrum was withholding any of these documents on the basis of relevance, or any of its objections. As you know, we brought this up with the Court in the last conference and we were told over and over again that it was not withholding any responsive documents. Only now have we learned that they are being withheld on the basis of relevance and this issue could have been addressed long, long ago. And now we, you know, we find it prejudicial to GE to have to attempt to obtain the same information from a third party in Bermuda.

20 THE COURT: Well I don’t, as I said, I don’t, I don’t believe that GE’s made the case that these documents are relevant and proportional to the needs of the case. So I’m not going to require production of documents in this dispute, apart from the opinion, so that you understand the outcome of those disputes. And certainly you can explore in deposition, if you want, a little bit more information to learn about that.

4 And if you learn some information that would render some of those documents important, you can re-raise it with me. But right now I don’t see how producing all the underlying documents in those actions is relevant and (indiscernible).

9 Okay -- 10 MS. BUTLER: Your Honor, this is Marla Butler, can we just request then that Spectrum produce that opinion immediately upon its release? As the parties are preparing to proceed with depositions, any delay in getting that opinion once it issues would make it more difficult for us to use it in this litigation.

16 THE COURT: Sure, yes, Spectrum should produce the opinion within a week after it receives it.

18 MS. BROWNING: Thank you, Your Honor, and we will do so. The only proviso I have with respect to that is if there is any confidential information of a third party, that we don’t have the, you know, the ability to provide to third parties about violating the confidentiality concerns of the Swiss arbitration, we would redact that out. But we will produce it, you know, as soon as we can.

2 THE COURT: Sure.

3 MS. BROWNING: Within a week.

4 THE COURT: In seven days. If it needs to be redacted pursuant to a Swiss court order then, you know, that’s, for confidentiality reasons, that’s okay.

8 MS. BUTLER: Your Honor, if I could make one other point in that regard, I think, you know, the amount of redactions might really take out a lot of the substance. And if the party -- 12 THE COURT: It’s all hypothetical now, we don’t even know what, we have no idea what it is, so let’s table this issue and see what happens. We don’t even know when, I mean we have no idea when the Swiss authorities are going to issue this. In my experience, the Swiss legal processes move like molasses, so it may not be, it may not be in one or two months, it could be longer. So let’s see when they issue it and then you can see if anything needs to be redacted, and then you can raise the issue, but let’s not argue about hypotheticals right now.

23 Okay, so then this was the key issue, I think the other issues were resolved related to documents that GE was seeking, is that right?

2 MR. METZCAR: This is Jeff Metzcar again, I think we have made progress and nothing else needs to be addressed on this call.

5 THE COURT: Okay. Now I want to hear more about depositions, have you scheduled depositions, what’s coming up?

8 MR. PEJIC: Your Honor, plaintiffs have one more issue that got skipped as we were going between letters and it deals with the alternate channels of communication. And my colleague, if the Court will indulge us, my colleague, Ms. Pfifferling, I’m sorry, will be addressing it.

14 THE COURT: Okay.

15 MS. DANIELLE PFIFFERLING: Your Honor, this is Ms. Pfifferling. This issue is on the agenda letter on page 2, the second full paragraph.

18 THE COURT: Okay.

19 MS. PFIFFERLING: And this relates to the alternate communication channels and this really does relate to the interrogatory that Spectrum served and that is Exhibit E. And if you have that exhibit handy -- 23 THE COURT: Yes, hang on, let me just go to it, I have the judgment, okay, go ahead.

25 MS. PFIFFERLING: So Exhibit E is Spectrum’s interrogatory number 4, on page 2 it really defines alternate communication channels. And there we are defining it as being a server, database, FTP site, file sharing services, local drives, removable storage drives, network drives and also cloud based files. And then on page 3, we do give non-limiting examples of any alternate communication channels. And these are where you see the Romanettes, whether you’re on, (iii) (iv) General Electric, which seems to be a password, (v) which is (vi) and (vii) which is But these are examples, we are citing GE’s Bates ranges as examples of what we are calling alternative communication channels.

16 THE COURT: Okay.

17 MS. PFIFFERLING: But then if you turn to our interrogatory number 4, which his on page 5, what we’re asking GE is just to identify any of these alternate communication channels that were used by the GE diligence personnel to send, receive, store information related to the Spotlight Project, which was the due diligence project, and the Star Guide Project, which is GE’s imitation device.

25 And if you look at Exhibit D, which is GE’s response to our rog 4, let me know when you have that open?

4 THE COURT: Yes.

5 MS. PFIFFERLING: So on page 5 of Exhibit D, that is GE’s objections. Page 6 is their substantive response. Paragraph 1, that last sentence, they just simply identify very broad and general network drives which is email, FTP sites, (indiscernible) local drives, computer drives and GE networks. That is not what our interrogatory was asking for, they were using very broad and general terms, we’re asking for the specific locations and drives where this information was stored. We did have a meet and confer, we asked defendants about it, they seemed to be confused on the meaning of alternate communication channels when we were very specific regarding that definition, and then they responded in their rog with just a very broad and general language. And we would like for them to supplement their Exhibit B, which is their rog response to number 4, to supplement, to be very specific, similar to how Spectrum was with defining this term, be very specific on these network drives where this information was stored.

24 And also, if you look at the next paragraph and GE’s response, they do say that this information can be obtained through the metadata accompanying these documents that they have produced. And they said that they have, including the folder paths, however, we just discovered last night when we were looking at folder paths for some of the documents, there is text in that folder path. However, that text for the folder path and text in the file name is exactly the same. And so it appears that actually the text in the folder path that was provided, that is not the text of the folder path, that seems to be the text of the file name. And we had our vendor go back and check the original load files from GE’s production and confirm that they have not produced the folder paths of their documents. So we’re asking now for GE to supplement their rog response number 4 and also provide an overlay of what documents that they have produced, provide an overlay of the folder path.

19 THE COURT: Okay. So well it sounds like this is new information about the folder paths, that there seemed to have been some hiccup in that, but let me hear from GE on this.

23 MR. GODSHALK: Yeah, Your Honor, this is Jesse Godshalk. Right, with regard to the folder path issue, I mean certainly I can have our vendor look at that, this is the first I’ve heard of it, I didn’t know we had an issue with regard to that. but with regard to the other things that were raised, Your Honor, this term, alternate communication channels, quite frankly, it is probably the most confusingly defined term that I have ever come across in my practice. It is two sentences long -- it’s two sentences, each with multiple subparts and footnotes stretching for more than a page of text. And read literally, the term encompasses all channels of communication, so that would be telephone, phone, mail, wire, computers, any type of, you know, like subgroups within computers, whether it’s networks, that GE used during the due diligence period from 2009 to 2012, and in developing its spec device over the past decade. So we’re looking for all channels of communication that GE used for more than a ten year period. That is so broad and difficult to pin down that it is unworkable.

21 The definition that they’ve provided also is internally inconsistent because it includes as examples of means of communication, things that are, such as external storage devices that are not means of communication. So I mean they’ve defined it as means of communication and then included examples that are not means of communication. So I don’t know, we don’t know, what is actually within the scope of this term.

5 And, you know, we told them that in writing and in our meet and confers and we tried our best to provide a, you know, reasonable response to interrogatory number 4.

9 You know, if they actually want us to list, for instance, every single phone number, every single laptop, every single network device that GE has used in its development of its spec device and during due diligence over more than a ten year period, quite frankly, I think that’s disproportionate to the needs of the case. I don’t even know how, Your Honor, I would go about doing that. I mean the number of hours involved, I couldn’t even begin to estimate how long it would take for me to figure out, and many of these things probably do not even exist anymore. I mean the computers that were being used in 2009, they probably do not exist. In fact, I am sure that there are of them that simply do not exist, they’ve been retired, destroyed. I don’t know how I would go back and figure out what computer equipment was being used more than a decade ago.

2 THE COURT: So let me, I don’t even understand why this is needed, why does Spectrum need this information?

5 MS. PFIFFERLING: Your Honor, if you could look at the Exhibit C, let me know when you have that ready?

8 THE COURT: C as in cookie?

9 MS. PFIFFERLING: Yes.

10 THE COURT: Yes.

11 MS. PFIFFERLING: So in Exhibit C, And that (indiscernible) below that,

So we were trying figure out what was this keep in mind Yaron was one of the key players, he’s an inventor on some of those GE patents and he was also an outside consultant for GE. So we’re trying to understand how GE was, you know, communicating with these external consultants because it seems that this was not a form of communication that’s not on GE’s server.

5 THE COURT: I have a very specific question, why don’t, I mean you can just ask a deponent, you know, what was this. A lot of times this just means like there was a, you know, a tunnel email, a protected email chain, but let me -- 10 MR. GREENBLUM: Your Honor, this is Neil Greenblum, can I just add one thing?

12 THE COURT: Sure.

13 MR. GREENBLUM: Let’s remember that this case is about misappropriation of trade secrets and it’s premature now to give you all of the examples where this has happened. But remember that a number of individuals, when they want to talk about what they are doing, say let’s go off to our private channel for this. So this is not a case of just harassing, I want Your Honor to realize we’re just not harassing GE to waste their time, these were the key individuals, they’re communicating information that they shouldn’t have been communicating at this time period. That’s the point, this time period, should not have been communicating. And they know they’re doing something wrong and they’re going off channel, that’s what this is about.

4 THE COURT: I understand that point, but I want to ask GE, looking at Exhibit C, have you inquired with anybody from GE Healthcare, Gil Kovalski or Jean-Paul Bouhnik is, do they know?

9 MR. GODSHALK: Your Honor, this is Jesse Godshalk again, I mean I, we did not specifically show this document, for instance, to Gil Kovalski or Jean-Paul Bouhnik and say but I can tell you that we performed collection interviews that I participated in of both of these individuals and asked them about every possible location for, you know, documents that are responsive and that will be relevant in this case. And asked them, for instance, you know, about network drives, shared drives, you know, any sort of location for, you know, electronic data, where is it and how do we get it. So, yeah, that’s what we did, Your Honor.

22 THE COURT: Okay. So what I’d like you to do is I’d like you just to ask these individuals was there some other, do they know what this refers to and were there, I’m going to refer to it as offline communications about the issues here in the case, right, about this patent or other trade secrets. Just ask and see.

5 MR. GODSHALK: Okay.

6 THE COURT: Okay?

7 MR. GODSHALK: Yes.

8 THE COURT: I think first do that because the interrogatory as phrased is overbroad and not proportional to the needs of the case. I do understand why plaintiffs are asking the question, let’s start with you interviewing these folks and seeing if there were private offline communications that GE doesn’t know about, that you didn’t know about before.

15 Sometimes, you know, even the best witness interviews, you learn something new during the course of a litigation, right?

18 MR. GODSHALK: Yes, Your Honor.

19 THE COURT: Okay, so why don’t you check on that and then we’ll take it from there.

21 MR. GODSHALK: Will do.

22 THE COURT: So let’s next hear about the, I want to hear next about the deposition schedule.

24 MR. PEJIC: Well, Your Honor, this is Mr. Pejic and Spectrum, well, Spectrum and GE have been talking for a while on the various issues. Weeks ago we exchanged lists of witnesses. GE objected to Spectrum’s number of witnesses and has not provided the availability of the witnesses while the parties are negotiating what deposition limits are in place.

7 So to date, I’m not aware of GE actually sending anything to Your Honor, but Spectrum last night filed its proposal for deposition limits. And the reason, and it expresses the reason why Spectrum’s position is proper in view of the complexity of the case and the number of witnesses and explains how defendant’s offer that’s currently on the table, it’s our understanding, although they haven’t submitted anything to the Court, of 12 total fact depositions, is just unworkable because, at the end of the day, defendants have listed 12 people on their initial disclosures and if Spectrum is limited to 12 depositions, GE is unilaterally handcuffing Spectrum on who they have to depose. And to top this off, GE also refuses to agree that a trial witness can’t appear unless they are previously deposed. Spectrum had made that proposal to help limit the number of witnesses because that would give us some comfort if we didn’t take a deposition of someone that they wouldn’t appear at trial to contradict any testimony.

3 But I think that Spectrum has set our position out in our letter and I’m happy to speak to any questions Your Honor might have about that, but I don’t know how to respond to GE because there is not currently anything on the table that I’m aware of.

8 THE COURT: Okay, well, I mean what I want to know is I want to hear from GE, why haven’t you gotten back to dates. There’s clearly some witnesses that both sides know need to be deposed and those depositions should be scheduled.

13 MS. BUTLER: Yes, Your Honor, so neither side has provided availability of their witnesses. We’ve given names to Spectrum of the individuals we’d like to depose, we haven’t gotten availability of those witnesses either. The reason GE hasn’t provided availability is because we believe we needed to iron out what the limits of depositions were going to be.

20 Spectrum has identified 16 people that it wants to depose and it indicated that they’re leaving the door open to depose more. So until we know how many depositions are going to be permitted in this case, we don’t know whose availability we should be looking to discover.

2 On June 3, Your Honor, we suggested to Spectrum that the parties submit to Your Honor a joint letter with the parties’ differing views on what the deposition limits should be so that Your Honor could decide it and we could move to scheduling. We asked Spectrum to join us in that pleading at least three times over the course of the month and what we got yesterday was a last minute letter from Spectrum with obviously no time for GE to provide a response with its position as it relates to deposition limits. But here is GE’s position as it relates to limits.

13 So, you know, the 120 hours that Spectrum has proposed, if we’re looking at 7 hour depositions that would be 17 depositions. Or if Spectrum wanted to depose witnesses for only 4 hours, that would be a total of 30 depositions. And the reason that’s problematic is not only because the number of witnesses and depositions that far exceed what the Federal Rules of Civil Procedure allow, but combine that with Spectrum’s insistence that GE bring all of its witnesses to the United States for deposition in person. So Spectrum could decide to depose 30 GE individuals and depose those individuals for 2 hours, 3 hours and require them to travel to the United States for deposition. We think that is overly burdensome on GE and we think that depositions of individuals who are in Israel should take place remotely. One thing that we have learned in this pandemic is that remote depositions do work. The technology has gotten more efficient, more proficient and we think that witnesses who are in Israel should not have to undergo the incredible disruption personally and professionally to come here to the United States to be deposed.

11 On this issue of the parties or Spectrum insisting that only witnesses that have been deposed can testify at trial, Your Honor, what that does is it puts in the hands of one party who the other party can call to trial. So if Spectrum wants to prevent GE from calling an important witness, Spectrum could just choose not to depose that witness.

18 Trial witnesses are determined by who the parties disclose. GE has served disclosures with the individuals that we believe at this time may be testifying at trial. And so what GE is proposing is 12 individual depositions per side, and if we wanted to turn that into hours, Your Honor, GE would be happy to do that. So, you know, 7 hour deposition limit times 12, 84 hours of depositions. But on top of that, GE is agreeing that each side would get 25 hours of 30(B)(6) depositions. We think that those two components combined are perfectly sufficient, 12 individual depos or 84 hours, plus 25 hours of 30(B)(6) deposition are sufficient to cover the issues in this case.

8 THE COURT: Um-hmm.

9 MR. PEJIC: Your Honor, this is Mr. Pejic, may I respond?

11 THE COURT: Yes.

12 MR. PEJIC: Okay, as an initial matter, GE seems to be picking and choosing from Spectrum’s proposal. Spectrum’s proposal sets out that if the depositions are taken remotely they can be up to 10 hours, and so that is 12 depositions. And as far as the witnesses in Israel, Spectrum has said that we’re willing to travel to Israel to take the depositions, we would not require the GE witnesses to come to the US.

21 And, moreover, Ms. Butler made it very clear with the 12 deposition limit and their initial disclosures, Spectrum fully intends to depose everyone on GE’s initial disclosure list. I mean it would be malpractice otherwise because those folks don’t always show up at trial as witnesses. What we’re concerned about is the fact that we can’t depose anyone under GE’s offer other than those listed on their initial disclosures such that in reality it’s GE that’s dictating who can be deposed, because Spectrum would be remiss if we didn’t depose everyone on GE’s initial disclosures. So it’s really illusory in the sense that GE’s 12 deposition limit handcuffs Spectrum and requires them to take depositions only of the people identified by GE without the ability to take additional depositions, where it is GE has the ability to take significantly more depositions of Spectrum because Spectrum has four individuals listed on their initial disclosures.

16 So this truly is a situation where there’s a huge disproportionality. Spectrum tried to strike a middle line here to give both parties some flexibility and add proportionality and fairness to the offers, and that’s why we have proposed 120 hours if done remotely. If the parties agreed to take the depositions in person, we’re willing to talk about that being a 7 hour limit and reevaluating the hour limit. And here, in this case, remote depositions aren’t going to be as simple as other situations because it involves highly technical information, people with English as a second language and perhaps, you know, very strong accents, and also could involve translation issues. There’s no way we could take a 7 hour deposition with translation issues. And the documents are likely going to be a lot of schematics and engineering drawings because of the technical nature of everything, which does not lend itself to being put on screens. It’s very hard to read and how could you magnify and everything else.

12 So at the end of the day, Spectrum is willing to work with GE and certainly insure that the limits are appropriate and I think that that, we submit that that’s what we’ve done in our letter.

16 THE COURT: Okay, so what I want you to do is I want you to schedule some depositions in August and September. I certainly encourage you to cooperate to have virtual where they make sense, but I also understand why both sides may want to have some of these in person. In terms of the limit, I don’t -- I understand what GE is saying, that you want to have a limit before you schedule, but at the same time, that’s a little bit arbitrary because what’s important is to get to the merits of the case, who are the key witnesses that Spectrum wants and that GE wants, and why are they important, why are the depositions not redundant, why are they proportional to the needs of the case. So I don’t know, I don’t have that information. What I, I mean I have the letter, but I don’t, maybe I’m missing it -- 8 MS. BUTLER: Can I offer a suggestion, Your Honor?

10 THE COURT: What I think I need to know is I need to have, I need to understand who are the witnesses that Spectrum presently wants to depose and what is the, what are the topics on which they want to be deposed. And then who are the witnesses that GE presently wants to depose, that’s what I want to understand.

17 In terms of the limit, 25 hours of 30(B)(6) seems reasonable to me because that’s, you know, that’s more than three days really of deposition on 30(B)(6) topics. So that seems to me to be reasonable, 25 hours of 30(B)(6) for each side. In terms of the individual fact witnesses though, I really don’t, you know, I understand 12, I understand 12, why you’re proposing a limit of 12, but it may be that some additional ones are needed. And 7 versus 10 hours, there may be some witnesses that are shorter and some that are longer. And I appreciate that there can be a slowdown because of translation issues.

5 So what I’d like is for, personally, I think that you should meet and confer a little bit more on this. I think what plaintiff should do is provide the list of people you currently think that you want to depose and GE should also provide the list of people it wants to depose. And then if you have a, if you want to exchange 30(B)(6) notices you should do that, and then you can have a more informed discussion about whether some of the people should be taken off and limits from that perspective. I think that’s a better way to go about it because you’re going to be focusing on the information that you need rather than arbitrary limits.

18 MR. PEJIC: Understood, Your Honor.

19 MS. BUTLER: And, Your Honor, we do have the list of individuals that Spectrum wants to depose and Spectrum has our list of individuals that we want to depose. We can certainly provide 30(B)(6) topics, as well. And just because I know that the parties since June 2 have been trying to resolve this issue, can we at least get some direction from the Court as to how many witnesses we can start scheduling depositions for? Because if Spectrum sticks to the 16 and we’re still at, you know, 12 depositions, then we don’t know which witnesses we should prioritize, if there’s a cap for now at least.

7 THE COURT: How many witnesses are on GE’s list?

9 MS. BUTLER: Five, Your Honor, plus Rule 30(B)(6).

11 THE COURT: Okay, and Spectrum has 16 plus 30(B)(6)?

13 MS. BUTLER: Exactly.

14 THE COURT: Yes, so right now schedule 10, you can schedule 10 each, that’s consistent with the rules, and then let’s talk about what’s next.

17 MS. BUTLER: That sounds good, Your Honor.

18 MR. PEJIC: Your Honor, this is Mr. Pejic, I just want to point out that 16 depositions is only 4 individuals not listed on GE’s initial disclosures. So we -- 22 THE COURT: I understand that, Mr. Pejic, you’re going to get discovery that is relevant and proportional and that you need to prosecute the claim.

25 You’re going to get that, that’s going to be proportional, but I need to understand a little bit more who these additional ones, you know, are and whether they’re necessary. But go ahead and schedule up to 10 and I want you to exchange 30(B)(6) topics within the next, let’s see, the 4th of July holiday is upon us so I want you to exchange those 30(B)(6) topics by July 14.

9 MS. BUTLER: Will do, Your Honor.

10 THE COURT: Okay?

11 MR. PEJIC: Yes, Your Honor.

12 THE COURT: So do a simultaneous exchange so that you understand, because I think that’s important, too, it may be that some of the fact witnesses will actually answer some of the 30(B)(6) topics, as well, and you all should know that. And I hear why it may make sense to conduct some depositions in Israel.

18 Israel fully, you know, they have a very high vaccination rate, so I’m not sure what the situation is with travel to Israel now, so you may, if there’s going to be depositions in Israel, you obviously should schedule them to happen at, you know, a time where you don’t have to make multiple trips.

24 MR. PEJIC: Yes, Your Honor.

25 THE COURT: So I want you to take a look at that, take a look at the 30(B)(6), and then I will make a decision about the additional depositions. But, from my perspective, 7 to maybe 10 hours is not necessarily problematic, particularly when you’re dealing with a translator and some of these technical things. Obviously, you should try to be strategic about the questions in your depositions, try to limit them to 7 hours but, as we all know as litigators, sometimes you need just a little bit of extra time. So I expect the sides to cooperate on that.

12 MS. BUTLER: Will do, Your Honor. One question, Spectrum filed a letter last night to the Court proposing deposition limits and so we’ve got three days I guess to respond to that. Are you expecting a response to that letter or would you like us to wait until, you know, the parties have kind of hopefully made some progress on this, just how would you like us to handle that letter?

20 THE COURT: I don’t want you to respond to that letter because right now what I’m asking you to do is exchange those deposition topics and talk about scheduling of up to ten of the witnesses. And, Spectrum, you can prioritize which ones. And this does not at all mean that you can’t depose other people, I’m not making that decision yet, but prioritize, okay?

4 MR. PEJIC: Yes, Your Honor, thank you very much.

6 THE COURT: And then we can address it at the next, I mean by this time we’ll be able to address it at the next status conference.

9 MS. BUTLER: Understood, Your Honor.

10 THE COURT: Okay?

11 MR. PEJIC: Thank you, Your Honor, very good.

12 THE COURT: Okay, anything else that Spectrum would like to raise?

14 MS. BROWNING: Your Honor, actually this is one other issue that we would like to raise and we have not raised this with the other side, so I apologize for that. But you had originally offered before to take on some of the motions or pending items that were in this case. And we actually would like to propose, and obviously we’ll give, you know, this is somewhat up to GE as well, but we would like to propose that you take on the pending motion to dismiss, Mr. Hefetz as a defendant. It’s currently pending with the District Court Judge, but we, if it’s possible we would be amenable to having you take that over and decide it?

3 THE COURT: Okay, so why don’t you all discuss that, if you want me to handle that motion you can submit a consent for a particular motion and you can submit that at any time, okay? But you don’t have to make any decisions right now, if you want that to happen then submit that I would say, what’s the date of that motion, that was -- 10 MR. PEJIC: This is Mr. Pejic, it was this spring, Your Honor, I apologize, this just became apparent during the discussion today, but I don’t have the docket number. We’re happy to provide it to Your Honor.

15 THE COURT: Hold on, I have the partial motion to dismiss the counterclaim.

17 MR. PEJIC: Yes, that would be the pleading, Your Honor.

19 MS. BROWNING: Right, with discovery advancing we just would like the ruling on Hefetz, you know, being in the case, and also to insure that there are no, you know, documents being withheld because he is still pending with this motion.

24 THE COURT: Yeah, hold on a second. Okay, well, regardless, if you want me to do it and you want a consent for that particular motion, you should submit the consent form within a week.

4 MS. BUTLER: And, Your Honor, this is Marla Butler for the defendants, and we’ll obviously talk to our clients about what they’d like to do in that regard.

7 THE COURT: Absolutely, no repercussions if you don’t consent, there’s no problem if you don’t want to. If you want to, you can and Judge Broderick will sign, you know, sign off on it.

11 MS. BUTLER: And, Your Honor, just to the point that Ms. Browning made, so Mr. Hefetz, we have made clear to Spectrum that he will be made available for deposition. We are representing him, we have searched his files, there’s no Hefetz documents that are being withheld on the basis of, you know, him not being a party to this case. So there’s no substantive consequence to that ruling not having been decided yet, just so that that’s clear.

20 THE COURT: There’s no rush from (indiscernible).

22 MS. BUTLER: Exactly, Your Honor, because we are, we’re representing him, he’s going to appear for deposition, we searched his documents.

25 THE COURT: Okay, that’s fine. So like I said, there’s no, there’s no repercussions for not consenting, if you want to, you can. So you can think about that, all right?

5 MS. BROWNING: Thank you, Your Honor.

6 THE COURT: Okay, anything else from GE?

7 MS. BUTLER: Nothing from us. Mr. Godshalk, have I left anything off?

9 MR. GODSHALK: No, I don’t believe so.

10 MS. BUTLER: Have a great July 4, Your Honor.

11 THE COURT: Okay, great, have a good July 4, everyone, we’re adjourned.

13 (Whereupon, the matter is adjourned.)

1 52 3 CERTIFICATE 5 I, Carole Ludwig, certify that the foregoing j/transcript of proceedings in the case of Spectrum Dynamics |Medical Limited v. General Electric Company et al, Docket # |18-cv-11386-VSB-KHP, was prepared using digital |transcription software and is a true and accurate record of |the proceedings.

14 signature Cola Luchveg 15 Carole Ludwig |Date: July 1, 2021