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IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

In re Innovatio IP Ventures, LLC, Patent Litigation 

Case No. 1:11-cv-09308 

Chief Judge James F. Holderman 

Magistrate Judge Sidney Schenkier 

This Document Relates To: 

All Cases 

JOINT STATEMENT CONCERNING CERTAIN DEFENDANTS’ SUBPOENAS TO 

INNOVATIO INVESTORS AND LICENSING ENTITIES

In December 2012, certain parties represented by Kirkland & Ellis LLP (“Defendants”) 

served document and deposition subpoenas on certain entities associated with Innovatio IP 

Ventures, LLC (“Innovatio”) who are now represented by Innovatio’s counsel in this action for 

purposes of those subpoenas: Innovatio Management LLC; Alex96 LLC (f/k/a/ WDHM LLC); 

Lunar Investments LLC; and Huntington Venture Partners LLC (collectively referred to as the 

“Innovatio Investors”); and VICIS Consulting LLP, Dowell Baker P.C. and Bluemont IP 

Partners LLC (collectively referred to as “Innovatio Licensing Entities”) (collectively, the 

Innovatio Investors and Innovatio Licensing Entities are the “Subpoenaed Parties”) (together, 

Defendants and the Subpoenaed Parties are the “parties”). The subpoenas to the “Subpoenaed 

Parties” are attached as Exhibits 1-7, respectively. The Subpoenaed Parties have agreed to the 

jurisdiction of this Court to resolve any disputes relating to those subpoenas. 

As reflected in the first section below, the parties have thus far been able to resolve many 

of their issues relating to the subpoenas by agreement. There are currently two matters 

concerning the subpoenas to the Innovatio Investors, however, that the parties respectfully 

request the Court’s assistance in resolving. 

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I. AREAS OF AGREEMENT BETWEEN THE PARTIES 

The parties have met and conferred extensively about Defendants’ subpoenas. Through 

the meet and confer process, the parties have agreed to the following with respect to the 

subpoenas: 

• For Innovatio Management LLC, the deposition on Defendants’ topics will go 

forward on February 15, 2013, at the offices of Innovatio’s counsel in Chicago. 

To the extent there were additional non-privileged documents responsive to 

Defendants’ subpoena that had not already been produced by Innovatio, Innovatio 

Management LLC agreed to produce those documents. Innovatio Management 

LLC also agree to provide a privilege log for withheld documents of the same 

scope and at the same time as Innovatio provides its privilege log. 

• For the Innovatio Licensing Entities, a representative of those entities will be 

made available for deposition over the next couple of weeks, in advance of the 

March 14 discovery cut-off and on dates to be provided shortly. In terms of 

documents, these entities will produce documents responsive to Defendants’ 

subpoenas except for those withheld on the basis of privilege communications 

with potential licensees following the initial demand letter. Finally, these entities 

will provide a privilege log for withheld documents of the same scope and at the 

same time as Innovatio provides its privilege log. These entities are not required 

to identify internal communication between and among their employees on the 

privilege log. 

• For the Innovatio Investors, a representative of each of those entities will be made 

available for deposition over the next couple of weeks, in advance of the March 

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14 discovery cut-off and on dates to be provided shortly. These entities will 

produce responsive documents to the extent those documents constitute 

communications with Innovatio and/or “source” materials, including, for 

example, but not limited to copies of the Innovatio Patents, investment 

presentations or summaries, and the like provided by Innovatio. These entities 

will also provide a privilege log for withheld documents of the same scope and at 

the same time as Innovatio provides its privilege log. 

• Defendants reserve the right to challenge the Subpoenaed Parties’ claims of 

privilege over any responsive documents upon receipt of the privilege logs 

described above. Further, the documents to be produced as well as the privilege 

logs will be produced in advance of the depositions to which they relate, except 

with respect to Innovatio Management LLC’s privilege log. 

II. AREAS OF DISAGREEMENT BETWEEN THE PARTIES 

While the parties agree that the Innovatio Investors should produce at least certain 

documents and make a deponent available in response to Defendants’ supboenas, the parties 

disagree as to: 1) whether the identities of the individual investors associated with the Innovatio 

Investor entities should be redacted from documents prior to production to the Defendants; and 

2) whether internal communications at each Innovatio Investor entity concerning matters related 

to this lawsuit should be produced. 

A. Redaction of Investor Identities 

• Defendants’ Position:

The proposal to redact from the document production of the Investor Entities the 

identities of the individuals associated with those entities is inconsistent with the Court’s prior 

ruling in this action and would unduly interfere with Defendants’ review of the document 

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production. The Court has already addressed this issue and ordered that the Innovatio Investor 

identities should be disclosed to the Defendants subject to the protective order. Accordingly, the 

Innovatio Investor documents should be produced to Defendants without redaction of the 

identities of those associated with the entities. 

On August 21, 2012, Judge Schenkier issued Docket #390, granting in part defendants 

Cosi, Inc., Dominick’s Supermarkets, Inc., and Meijer, Inc.’s motion to compel discovery. The 

order reads in part: 

“The motion to compel filed by defendants Cosi, Inc., Dominick's 

Supermarkets, Inc., and Meijer, Inc. (‘the moving defendants’) is granted 

in part and denied in part as follows: (a) the motion is denied insofar as it 

seeks to compel plaintiff to produce documents regarding negotiations for 

licenses and settlements concerning the patents in suit; (b) the motion is 

granted insofar as its seeks to compel responses to Interrogatory No. 7 

and Document Request No. 31 that disclose Innovatio's ownership 

structure, the identities of owners and investors, and responsive 

communications to or from them; (c) the motion is granted (by 

agreement) insofar as it seeks to compel the completion of production of 

communications between plaintiff and third-parties concerning the patents 

in suit (other than communications regarding settlement). The information 

that plaintiff is to produce pursuant to this order shall be served on the 

moving defendants by 9/11/12.” 

Dkt. #390 (emphasis added). In the August 21, 2012 hearing preceding that order, Innovatio’s 

counsel argued that the investor identities should be kept from the defendants. 8/21/12 Hearing 

Transcript at 34:12-13 (Mr. Schodde: “[] But what we’re asking for is that we be allowed to 

redact the identity of the individual [investors].”); see also 8/21/12 Hearing Transcript at 34:11-

40:9. After hearing Innovatio’s arguments, the Court ruled that the investor identities should be 

disclosed and indicated that the privacy interests of the investors would be adequately protected 

by the protective order: 

 “THE COURT: So it seems to me that as part of this process that their 

names should be disclosed. I don't think that with the protective order 

and the treatment of confidentiality that it impairs their privacy 

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interests. I don't say that it is as a result appropriate to depose all of them 

or many of them or any of them. I think that is going to depend I think on 

all of the circumstances, including what the communications show that 

they may have been involved in or know about or said or expressed 

themselves on. 

And I think that the limit on the amount of time that there can be for 

depositions certainly does, you know, suggest that there should be 

discretion involved in whether you seek to depose any of those people and 

how much of your time you burn on it. Again, I am not holding right now 

that depositions of any of them, you know, is appropriate. I'm not saying it 

could never be. But I think the first step is let's after discovery, let's see 

what it is the documents show their knowledge may be, who they are, and 

then we'll go from there. 

So that part of the defense motion to compel I grant.” 

8/21/12 Hearing Transcript at 39:16-40:9; see also id. at 38:25-39:1 (The Court: “... but I 

guess I’m having a hard time understanding why their identities are kind of [a] state secret.”); id.

at 39:2-5 (“Mr. Schodde: Well, I would say, Your Honor, [] they’re at least confidential. The 

Court: Look, this is not otherwise public information. You have a protective order.”). 

As this issue has already been decided by the Court, Defendants believe there is no 

reason for this issue to be revisited. Redaction of the identities of the individuals associated with 

the Innovatio Investors would render the document production of the Innovatio Investors 

indecipherable--including because it would not be clear who sent and received the produced 

communications, and also because redactions would make it difficult or impossible to correlate 

the production of the Innovatio Investors with Innovatio’s production. The Protective Order 

governing this action is more than adequate to protect any confidentiality interests of the 

investors, and producing the investors’ identities does not equate to a determination that the 

investors will be deposed -- just as Defendants’ production of the identities of at least hundreds 

of their employees, if not more, does not mean that Innovatio will be entitled to depose all of 

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those individuals. Accordingly, consistent with the Court’s prior order, the Innovatio Investors 

should be ordered to produce responsive documents without redacting the identities of the 

individuals associated with those entities. 

• Innovatio Investors’ Position: 

Innovatio has worked cooperatively with Defendants’ to provide responsive documents 

and information relevant to the formation of Innovatio, including documents and information 

concerning investment in Innovatio. The subject of the parties’ dispute discussed in Defendants’ 

position above specifically related to third parties that had directly invested in Innovatio. The 

instant dispute, which involves subpoenas issued to non-party, third party investment entities, 

involves Defendants’ attempt to reach far beyond the identity of Innovatio’s “Tier One” 

investors and their relationship to Innovatio and its operations. Instead, Defendants seek to 

probe into the highly-confidential personal finances and communications of third party 

individuals (“Confidential Third Party Information”) who do not have direct ownership interests 

in Plaintiff Innovatio IP Ventures, LLC, have no control or management authorities over, and 

lack any voting rights with respect to, Plaintiff Innovatio. The Confidential Third Party 

Information is simply not relevant to any issues at bar in this action. 

Incidental to Innovatio’s production of information concerning its “Tier One” investors, 

Innovatio divulged the identity of certain individuals who may own interests in the Tier One 

investment entities. This incidental disclosure, however, doesn’t render the personal 

communications and financial information of any Tier Two individual or entity relevant to the 

dispute. The third party Tier One entities have already agreed to produce representative 

witnesses to testify about the Tier One entities’ relationships to, and investment in, Innovatio. 

The Court should not compel the production of third party, Tier Two materials or testimony. 

Defendants’ examination of the representatives of Innovatio’s Tier One investment entities will 

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provide Defendants with more than adequate relevant information concerning Innovatio’s 

investment entities. 

B. Production of Investor Entity Communications 

• Defendants’ Position:

While the Innovatio Investors have agreed to produce all communications between the 

Investors and Innovatio, they refuse to produce responsive internal communications between 

individual persons at each Investor Entity relating to matters concerning this action. The 

Innovatio Investors do not claim these documents are privileged. Nor do they argue that 

producing these documents would be unduly burdensome. 

Moreover, the Innovatio Investors cannot reasonably argue these documents could not be 

relevant: internal documentation of Innovatio’s owners concerning matters such as the patentsin-suit, licensing and valuation of those patents, and this litigation may be directly relevant to a 

number of issues in this action. The materials already produced by Innovatio indicate that the 

investors are regularly updated by Innovatio on the status of this case, the value of the patents 

and on-going litigation, licenses to the patents-in-suit, and due diligence performed by Broadcom 

and others. It is extremely likely that, in response to those updates, the investors engage in 

internal communications regarding those same highly relevant topics. As such, the documents 

that the Innovatio Investors refuse to produce are directly relevant to important issues in the 

action. 

Defendants are entitled to receive those communications as requested by their subpoena. 

Accordingly, Defendants respectfully request that the Innovatio Investors be ordered to produce 

all non-privileged documents related to the patents-in-suit or this action, as called for by 

Defendants’ subpoenas. 

• Innovatio Investor’s Position: 

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Innovatio has worked cooperatively with Defendants’ to provide responsive documents 

and information relevant to the formation of Innovatio, including documents and information 

concerning investment in Innovatio. The subject of the parties’ dispute discussed in Defendants’ 

position above specifically related to third parties that had directly invested in Innovatio. The 

instant dispute, which involves subpoenas issued to non-party, third party investment entities, 

involves Defendants’ attempt to reach far beyond the identity of Innovatio’s “Tier One” 

investors and their relationship to Innovatio and its operations. Instead, Defendants seek to 

probe into the highly-confidential personal finances and communications of third party 

individuals (“Confidential Third Party Information”) who do not have direct ownership interests 

in Plaintiff Innovatio IP Ventures, LLC, have no control or management authorities over, and 

lack any voting rights with respect to, Plaintiff Innovatio. The Confidential Third Party 

Information is simply not relevant to any issues at bar in this action. 

Incidental to Innovatio’s production of information concerning its “Tier One” investors, 

Innovatio divulged the identity of certain individuals who may own interests in the Tier One 

investment entities. This incidental disclosure, however, doesn’t render the personal 

communications and financial information of any Tier Two individual or entity relevant to the 

dispute. The third party Tier One entities have already agreed to produce representative 

witnesses to testify about the Tier One entities’ relationships to, and investment in, Innovatio. 

The Court should not compel the production of third party, Tier Two materials or testimony. 

Defendants’ examination of the representatives of Innovatio’s Tier One investment entities will 

provide Defendants with more than adequate relevant information concerning Innovatio’s 

investment entities. 

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Dated: February 15, 2013 

/s/ Ronald H. Spuhler 

Matthew G. McAndrews 

Raymond P. Niro, Jr. 

Brian E. Haan 

Gabriel I. Opatken 

NIRO, HALLER & NIRO 

181 West Madison St., Suite 4600 

Chicago, Illinois 60602 

Telephone: (312) 236-0733 

E-mail: mmcandrews@nshn.com 

E-mail: rnirojr@nshn.com 

E-mail: bhaan@nshn.com 

E-mail: gopatken@nshn.com

Jean D. Kuelper 

Gregory C. Schodde 

Peter J. McAndrews 

Ronald H. Spuhler 

Shawn L. Peterson 

McANDREWS, HELD & MALLOY, LTD. 

500 West Madison St., Suite 3400 

Chicago, Illinois 60661 

Telephone: (312) 775-8000 

E-mail: jkuelper@mcandrews-ip.com

E-mail: gschodde@mcandrews-ip.com

E-mail: pmcandrews@mcandrews-ip.com

E-mail: rspuhler@mcandrews-ip.com

E-mail: speterson@mcandrews-ip.com

Attorneys for Plaintiff, 

INNOVATIO IP VENTURES, LLC 

/s/ Michael W. De Vries 

Michael W. De Vries 

KIRKLAND & ELLIS LLP 

333 South Hope Street 

Los Angeles, California 90071 

213.680.8400 (Telephone) 

michael.devries@kirkland.com

Gianni Cutri 

KIRKLAND & ELLIS LLP 

300 North LaSalle 

Chicago, Illinois 60654 

312.862.2000 (Telephone) 

312.862.2200 (Facsimile) 

gianni.cutri@kirkland.com

 Adam R. Alper (Pro Hac Vice) 

 KIRKLAND & ELLIS LLP 

 555 California Street 

 San Francisco, CA 94104 

 415.439.1400 (Telephone) 

 415.439.1500 (Facsimile) 

adam.alper@kirkland.com

Counsel for Certain Defendants and 

Declaratory Judgment Plaintiffs 

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CERTIFICATE OF SERVICE

I hereby certify that on February 15, 2013 a true and correct copy of the foregoing 

JOINT STATEMENT CONCERNING CERTAIN DEFENDANTS’ SUBPOENAS TO 

INNOVATIO INVESTORS AND LICENSING ENTITIES was electronically filed with the 

Court via the CM/ECF system which sent notification of such filing to all Counsel of Record. 

Dated: February 15, 2013 /s/ Michael W. De Vries 

 Michael W. De Vries (Pro Hac Vice) 

KIRKLAND & ELLIS LLP 

333 South Hope Street 

Los Angeles, California 90071 

213.680.8400 (Telephone) 

michael.devries@kirkland.com 

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UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

In re Innovatio IP Ventures, LLC, Patent 

Litigation 

 

Case No. 1:11-cv-09308 

Judge James F. Holderman This Document Relates To: Magistrate Judge Sidney Schenkier

All Cases 

EXHIBITS TO JOINT STATEMENT CONCERNING CERTAIN DEFENDANTS’ 

SUBPOENAS TO INNOVATIO INVESTORS AND LICENSING ENTITIES

Exhibit 1 - Subpoena Duces Tecum and Subpoena for Deposition of Innovatio Management LLC 

Exhibit 2 - Subpoena Duces Tecum and Subpoena for Deposition of Alex96 LLC (f/k/a/ 

 WDHM LLC) 

Exhibit 3 - Subpoena Duces Tecum and Subpoena for Deposition of Lunar Investments LLC 

Exhibit 4 - Subpoena Duces Tecum and Subpoena for Deposition of Huntington Venture 

 Partners LLC 

Exhibit 5 - Subpoena Duces Tecum and Subpoena for Deposition of VICIS Consulting LLP 

Exhibit 6 - Subpoena Duces Tecum and Subpoena for Deposition of Dowell Baker P.C. 

Exhibit 7 - Subpoena Duces Tecum and Subpoena for Deposition of Bluemont IP Partners LLC 

Case: 1:11-cv-09308 Document #: 572 Filed: 02/15/13 Page 11 of 11 PageID #:19869