Emblaze Ltd. v. Apple Inc.

Filing 75

MOTION for Leave to Amend Complaint, filed by Emblaze Ltd.. Motion Hearing set for 4/10/2012 01:00 PM in Courtroom 1, 4th Floor, Oakland before Hon. Saundra Brown Armstrong. Responses due by 12/29/2011. Replies due by 1/5/2012. (Attachments: # 1 Proposed Order)(Ferrari, Lisa) (Filed on 12/15/2011) Modified on 12/16/2011 (jlm, COURT STAFF). Modified on 12/30/2011 (kc, COURT STAFF).

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MARTIN L. FINEMAN (CA State Bar Number 104413)
DAVIS WRIGHT TREMAINE LLP
505 Montgomery Street, Suite 800
San Francisco, CA 94111
Telephone: [phone]
Facsimile:
[phone]
Email:
[e-mail]

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MARTIN B. PAVANE (admitted pro hac vice)
LISA A. FERRARI (admitted pro hac vice)
COZEN O’CONNOR
277 Park Avenue
New York, New York 10172
Telephone:
[phone]
Facsimile:
[phone]
Email:
[e-mail]
[e-mail]
Attorneys for Plaintiff Emblaze, Ltd.

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UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

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EMBLAZE LTD.,

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Plaintiff,
v.

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APPLE INC., a California Corporation,

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Defendant.

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CASE NO. 4:11-cv-01079-SBA
PLAINTIFF EMBLAZE LTD.’S
UNOPPOSED MOTION TO AMEND
PLEADINGS
HEARING DATE AND TIME:
April 10, 2012 at 1:00 p.m.
The Hon. Saundra Brown Armstrong

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PLEASE TAKE NOTICE that on April 10, 2012, at 1:00 p.m., the undersigned attorneys for

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Plaintiff Emblaze Ltd. (“Emblaze”) will move before the Honorable Saundra Brown Armstrong, at the

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United States District Court, Northern District of California, Oakland Courthouse, 4th Floor,

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Courtroom 1, 1301 Clay Street, Oakland, California 94612, for an Order granting Plaintiff Emblaze

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Ltd’s Unopposed Motion to Amend Pleadings.

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PLAINTIFF EMBLAZE’S UNOPPOSED
MOTION TO AMEND PLEADINGS

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Case No. 4:11-CV-01079 SBA

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PLEASE TAKE FURTHER NOTICE that pursuant to FED. R. CIV. P. 15(a), Civil L.R. 7-2,

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and the Scheduling Order entered by the Court in this action [D.E. 68], Emblaze moves for an Order

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permitting Emblaze to serve and file a First Amended Complaint. This motion is accompanied by a

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Memorandum in Support of Plaintiff Emblaze Ltd.’s Unopposed Motion to Amend Pleadings,

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Declaration of Lisa A. Ferrari in Support of Plaintiff Emblaze Ltd.’s Unopposed Motion to Amend

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Pleadings, with Exhibits A and B (red-lined and non-red-lined versions of Emblaze’s proposed First

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Amended Complaint), and Exhibit C (copy of Scheduling Order), and a proposed Order granting

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Emblaze’s motion.
Respectfully submitted,

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DATED: December 15, 2011

COZEN O’CONNOR

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By:

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/s Lisa A. Ferrari
Lisa A. Ferrari
Martin B. Pavane (admitted pro hac vice)
Lisa A. Ferrari (admitted pro hac vice)
277 Park Avenue
New York, New York 10172
Telephone:
[phone]
Facsimile:
[phone]
Email:
[e-mail]
[e-mail]

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MARTIN L. FINEMAN (CA State Bar No. 104413)
DAVIS WRIGHT TREMAINE LLP
505 Montgomery Street, Suite 800
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Plaintiff
Emblaze Ltd.

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PLAINTIFF EMBLAZE’S UNOPPOSED
MOTION TO AMEND PLEADINGS

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Case No. 4:11-CV-01079 SBA

CERTIFICATION

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The undersigned hereby certifies that the parties met and conferred and that Apple indicated

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that it does not object to Emblaze’s filing of the proposed First Amended Complaint, but that it

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reserves its rights with respect to answering or otherwise moving on any ground in response to such

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amendment.

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/s/ Lisa A. Ferrari_____

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PLAINTIFF EMBLAZE’S UNOPPOSED
MOTION TO AMEND PLEADINGS

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Case No. 4:11-CV-01079 SBA

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MARTIN L. FINEMAN (CA State Bar Number 104413)
DAVIS WRIGHT TREMAINE LLP
505 Montgomery Street, Suite 800
San Francisco, CA 94111
Telephone: [phone]
Facsimile:
[phone]
Email:
[e-mail]
MARTIN B. PAVANE (admitted pro hac vice)
LISA A. FERRARI (admitted pro hac vice)
COZEN O’CONNOR
277 Park Avenue
New York, New York 10172
Telephone:
[phone]
Facsimile:
[phone]
Email:
[e-mail]
[e-mail]

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Attorneys for Plaintiff Emblaze Ltd.
UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

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EMBLAZE LTD.,

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Plaintiff,

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v.

CASE NO. 4:11-cv-01079-SBA
MEMORANDUM IN SUPPORT OF
PLAINTIFF EMBLAZE LTD.’S
UNOPPOSED MOTION TO AMEND
PLEADINGS

APPLE INC., a California Corporation,

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Defendant.

HEARING DATE AND TIME:
April 10, 2012, at 1:00 p.m.

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The Hon. Saundra Brown Armstrong

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Plaintiff Emblaze Ltd. (“Emblaze”) submits this Memorandum in support of Plaintiff Emblaze
Ltd.’s Unopposed Motion to Amend Pleadings.
I.

STATEMENT OF THE ISSUE TO BE DECIDED
Whether, pursuant to Federal Rule of Civil Procedure 15(a)(2) and the Scheduling Order

applicable to the action, the Court should grant Emblaze’s unopposed motion for leave to file and
serve a First Amended Complaint for patent infringement. See Exhibits A (red-lined version of

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MEMORANDUM IN SUPPORT OF PLAINTIFF
EMBLAZE LTD.’S UNOPPOSED MOTION TO
AMEND PLEADINGS

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Case No. 4:11-CV-01079 SBA

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[Proposed] First Amended Complaint) and B (non-red-lined version of [Proposed] First Amended

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Complaint).1

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II.

STATEMENT OF FACTS

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Plaintiff Emblaze filed a Complaint on July 28, 2010, in the Southern District of New York,

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alleging infringement by Defendant Apple Inc. (“Apple”) of one or more of claims 9-12, 18-19, and 23

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of Emblaze’s U.S. Patent No. 6,389,473 (“the ‘473 Patent”) [D.E. 1]; Ferrari Dec. ¶ 2. Apple

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answered the Complaint on September 10, 2010, and Emblaze filed a reply to counterclaims asserted

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by Apple on October 1, 2010 [D.E. 7, 11]; Ferrari Dec. ¶ 3. On February 24, 2011, following a motion

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to transfer filed by Apple, Judge P. Kevin Castel of the Southern District of New York issued a

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Memorandum and Order transferring the action to the Northern District of California [D.E. 24];

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Ferrari Dec. ¶ 4. Following an initial Case Management Conference, this Court issued a Scheduling

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Order on September 21, 2011 [D.E. 68], a copy of which is attached hereto as Exhibit C. The

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Scheduling Order set a Markman schedule, but did not set dates for the termination of fact discovery,

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or for expert discovery unrelated to claim construction. The Order set December 15, 2011, as the

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deadline by which the parties must seek to amend the pleadings or join parties. Ferrari Dec. ¶ 5.

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Pursuant to the Scheduling Order and Pat. L.R. 3-1 and 3-2, Emblaze served its Infringement

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Contentions and accompanying document production on October 21, 2011.

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ongoing investigation, Emblaze asserted infringement of claims 1, 2, 8-14, 21, 23-29, 36-38, and 40-

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41 of the ‘473 Patent. Ferrari Dec. ¶ 6.

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Emblaze’s Infringement Contentions, on December 6, 2011. Id.

Consistent with its

Apple served its Invalidity Contentions, responding to

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In accordance with the Scheduling Order, Emblaze moves for leave to serve and file a First

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Amended Complaint. Emblaze’s proposed amended pleading does not add any substantive claims to

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the one count of patent infringement alleged in the original Complaint, but instead, (1) amends the list

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of claims of the ‘473 Patent that are asserted by Emblaze so as to conform the allegations to what

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Emblaze has asserted in its Infringement Contentions; (2) amends the products that Emblaze is

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accusing of infringement so as to conform the allegations of the Complaint to what Emblaze has

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learned in its ongoing investigation and from discovery thus far; (3) removes certain allegations

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All exhibits referenced herein are attached to the accompanying Declaration of Lisa A. Ferrari (“Ferrari Dec.”).
MEMORANDUM IN SUPPORT OF PLAINTIFF
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EMBLAZE LTD.’S UNOPPOSED MOTION TO
AMEND PLEADINGS

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concerning Apple’s presence in the Southern District of New York (no longer relevant now that the

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action has been transferred to the Northern District of California); (4) updates the firm affiliation of

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counsel for Emblaze and the change of venue from the Southern District of New York to the Northern

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District of California; and (5) makes minor editing changes to the text. Ferrari Dec. ¶7.

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III.

ARGUMENT

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A.

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Rule 15(a)(2) of the Federal Rules of Civil Procedure provides that once a responsive pleading

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has been filed, a party may amend the pleadings “only by leave of court or by written consent of the

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adverse party”. As set forth in the rule, leave to amend should be freely given “when justice so

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LEGAL STANDARD FOR AMENDING PLEADINGS

requires.” See id; Foman v. Davis, 371 U.S. 178, 182 (1962).

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The policy of Rule 15(a) is “to be applied with extreme liberality.” Eminence Capital, LLC v.

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Aspeon, Inc., 316 F.3d 1048, 1051-52 (9th Cir. 2003) (reversing as abuse of discretion district court’s

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failure to grant leave to amend). So long as there is not “undue delay, bad faith or dilatory motive on

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the part of the movant, repeated failure to cure deficiencies by amendments previously allowed, undue

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prejudice to the opposing party by virtue of allowance of the amendment, futility of amendment, etc.,

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leave should, as the rules require, be ‘freely given.’” Foman, 371 U.S. at 182.

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Motions for leave to amend filed within the deadline set by the Scheduling Order are subject to

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the liberal pleading standards of Rule 15(a), in contrast to motions filed after a Scheduling Order

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deadline, which must meet the “good cause” standard set forth in Rule 16(b). Johnson v. County of

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Alameda, No. C 10-01437 RS, 2011 WL 2610138 (N.D. Cal. July 1, 2011).

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As set forth below, the liberal pleading standards of Rule 15(a) should be applied, and
Emblaze’s motion to amend granted.

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B.

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AND THE AMENDMENT IS NOT FUTILE

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Emblaze has not acted in bad faith or unduly delayed seeking to amend its Complaint, and

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Apple will not be prejudiced by allowing the amendment. Indeed, having been provided with a copy

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of Emblaze’s proposed amended pleading, Apple indicated that it does not oppose Emblaze’s motion

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to amend.

THERE IS NO BAD FAITH, UNDUE DELAY, OR PREJUDICE TO APPLE,

MEMORANDUM IN SUPPORT OF PLAINTIFF
EMBLAZE LTD.’S UNOPPOSED MOTION TO
AMEND PLEADINGS

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Case No. 4:11-CV-01079 SBA

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Based on its ongoing investigation, Emblaze has determined that Apple infringes certain claims

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of the ‘473 Patent (claims 1-2, 8, 13-14, 21, 24-29, 36-38, and 40-41) that were not identified in

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Emblaze’s original Complaint. Additionally, Emblaze has decided not to pursue certain other claims

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(claims 18-19) of the ‘473 Patent, which were asserted in Emblaze’s original Complaint.

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Apple has been aware of the claims being asserted by Emblaze since Emblaze served its

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Infringement Contentions on October 21, 2011. Not only do Emblaze’s Infringement Contentions list

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those claims of the ‘473 Patent that Emblaze is asserting, but the contentions set forth in detail how

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Apple’s HTTP Live Streaming infringes those claims. Thus, proceeding in good faith, Emblaze seeks

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to conform the amended pleading to the allegations Emblaze set forth in its Infringement Contentions.

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Apple has already responded to Emblaze’s contentions, in Invalidity Contentions served on December

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6, 2011, and will not be prejudiced by this amendment to the pleading.

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The other changes to the proposed First Amended Complaint similarly do not add claims or

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alter the issues in dispute. The proposed amended pleading updates the list of products accused of

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infringement. As with the identification of patent claims, Apple will not suffer any prejudice because

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it has been on notice of this updated product list since the filing of Emblaze’s infringement contentions

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and Apple’s responses to discovery. The remaining amendments to the Complaint simply update or

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edit various information such as attorney information and the venue for the action; the changes are not

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made in bad faith and will in no way prejudice Apple.

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Additionally, fact discovery is still in its early stages. No depositions have been taken. The

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first deadline for claim construction proceedings is not until January 12, 2012, at which time the

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parties must exchange proposed claims for construction. See Exhibit C [D.E. 68] (copy of Scheduling

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Order). The deadline to complete fact discovery has not yet been scheduled. There is, in short, no

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prejudice to Apple in allowing the proposed pleading. Also, Emblaze has not unduly delayed in

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seeking this amendment, as demonstrated by the fact that this motion has been filed within a

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reasonable time after the filing of Emblaze’s Infringement Contentions and within the deadline set

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forth in the Court’s Scheduling Order. See id.

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Last, Emblaze’s motion to amend pleadings is not futile, as it sets forth a short and plain
statement of Emblaze’s claim for patent infringement. See Fed.R.Civ.P. 8(a)(2).
MEMORANDUM IN SUPPORT OF PLAINTIFF
EMBLAZE LTD.’S UNOPPOSED MOTION TO
AMEND PLEADINGS

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Case No. 4:11-CV-01079 SBA

In view of the foregoing, justice requires that Emblaze be given leave to serve and file its

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amended pleading.

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IV.

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CONCLUSION
For the foregoing reasons, Plaintiff Emblaze Ltd.’s motion to amend its Complaint should be

granted.
Respectfully submitted,

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DATED: December 15, 2011

COZEN O’CONNOR
By: /s Lisa A. Ferrari
Lisa A. Ferrari

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Martin B. Pavane (admitted pro hac vice)
Lisa A. Ferrari (admitted pro hac vice)
277 Park Avenue
New York, New York 10172
Telephone:
[phone]
Facsimile:
[phone]
Email:
[e-mail]
[e-mail]

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MARTIN L. FINEMAN (CA State Bar No. 104413)
DAVIS WRIGHT TREMAINE LLP
505 Montgomery Street, Suite 800
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Plaintiff Emblaze Ltd.

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MEMORANDUM IN SUPPORT OF PLAINTIFF
EMBLAZE LTD.’S UNOPPOSED MOTION TO
AMEND PLEADINGS

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Case No. 4:11-CV-01079 SBA