Elan Microelectronics Corporation v. Apple, Inc.

Filing 171

Unopposed Motion For Leave To Amend Invalidity Contentions filed by Apple, Inc.. Motion Hearing set for 10/26/2010 10:00 AM in Courtroom 5, 4th Floor, San Jose. (Greenblatt, Nathan) (Filed on 9/20/2010) Modified on 9/22/2010 (tsh, COURT STAFF).

Elan Microelectronics Corporation v. Apple, Inc.

Doc. 171

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MATTHEW D. POWERS (Bar No. 104795) [e-mail] JARED BOBROW (Bar No. 133712) [e-mail] DOUGLAS E. LUMISH (Bar No. 183863) [e-mail] SONAL N. MEHTA (Bar No. 222086) [e-mail] DEREK C. WALTER (Bar. No. 246322) [e-mail] NATHAN GREENBLATT (Bar No. 262279) [e-mail] WEIL, GOTSHAL & MANGES LLP Silicon Valley Office 201 Redwood Shores Parkway Redwood Shores, CA 94065 Telephone: [phone] Facsimile: [phone] Attorneys for Defendant and Counterclaim Plaintiff Apple Inc. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION ELAN MICROELECTRONICS CORPORATION, Plaintiff and Counterclaim Defendant, v. APPLE INC., Defendant and Counterclaim Plaintiff. Case No. C-09-01531 RS (PVT) UNOPPOSED MOTION FOR LEAVE TO AMEND INVALIDITY CONTENTIONS JURY TRIAL DEMANDED DATE: October 26, 2010 TIME: 10:00 a.m. JUDGE: Patricia V. Trumbull CTRM: 5, 4th Floor

UNOPPOSED MOTION FOR LEAVE TO AMEND INVALIDITY CONTENTIONS

Case No. C-09-01531 RS (PVT)

Dockets.Justia.com

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APPLE'S UNOPPOSED MOTION FOR LEAVE TO AMEND INVALIDITY CONTENTIONS Pursuant to Patent L.R. 3-6, Apple Inc. ("Apple") files this Unopposed Motion for Leave to Amend Its Invalidity Contentions to add the below-listed prior art references that Apple's legal team has recently discovered and analyzed, and to further clarify Apple's obviousness and indefiniteness contentions. motion. I. APPLE PROVIDED ELAN TIMELY NOTICE OF ITS SUPPLEMENTAL INVALIDITY CONTENTIONS Apple provided timely notice to Elan of Apple's supplemental invalidity contentions. Apple provided its First Supplemental Invalidity Contentions to Elan on June 22, 2010. See Declaration of Sonal Mehta in Support of Apple's Unopposed Motion for Leave to Amend Invalidity Contentions ("Mehta Decl."), Exh. A [Email chain from S. Mehta to S. DeBruine including June 22, 2010, June 25, 2010, and August 23, 2010 emails]; see also Exh. B [Apple Inc.'s First Supplemental Invalidity Contentions]. Elan responded on June 25, 2010 that it was reviewing Apple's amended invalidity contentions, did not expect to object, and expected to propose its own supplemental invalidity contentions within a week for possible inclusion in a joint motion. See Mehta Decl., Exh. A. However, Elan did not provide its proposal the following week or at any time thereafter. Apple therefore stated on August 23, 2010 that it intended to proceed with a motion to amend its invalidity contentions, which it understood would be unopposed. Id. Elan has not stated any opposition to this motion. II. APPLE HAS GOOD CAUSE TO AMEND ITS INVALIDITY CONTENTIONS Since serving its original Invalidity Contentions pursuant to Patent L.R. 3-3 on December 7, 2009, Apple's legal team has continued to search for, locate, and analyze prior art relevant to the patents-in-suit, including the following references:
U.S. Patent No. 5,825,352 · Stansfield. Haptic Perception With an Articulated, Sensate Robot Hand, (Mar. 1990)("Haptic Perception")

Elan Microelectronics Corp. ("Elan") does not oppose Apple's

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· · · · · · · ·

Rubine et al., Programmable Finger-tracking Instrument Controllers, Computer Music Journal, Vol. 14, No. 1, Spring 1990 ("Finger-tracking") JP06-161661 (June 10, 1994) BOIE0011-33 (Nov. 18, 1983) ("BOIE0011") U.S. Pat. No. 5,483,261, Yasutake, Jan. 9, 1996 U.S. Pat. No. 4,914,624, Dunthorn Apr. 3, 1990 Son et al., Comparison of contact sensor localization abilities during manipulation, Robotics and Autonomous System 17 (1996), p. 217-233, ("Contact Sensor Localization") Myron Krueger, Videoplace, Responsive Environment, 1972-1990s, www.youtube.com/watch?v=dmmxVA5xhuo ("Krueger") Rubine, Automatic Recognition of Gestures, Thesis, Carnegie Mellon University (1991) ("Rubine Thesis").

U.S. Patent No. 7,274,353 · · · · · · U.S. Pat. No. 5,468,947, Danielson, Nov. 21, 1995 GB 2,327,558, Charlier, Jan. 27, 1999 Pogue, Palm Pilot, the Ultimate Guide, O'Reilly, pp. 1-597 (Jun. 1999) ("Pogue") Newton MessagePad 2000 User's Manual, pp. 1-278 (1997) ("Newton") U.S. Pat. No. 5,233,547, Kapp, Aug. 3, 1993 Wacom Intuos User's Manual for Windows, May 22, 2000 ("Wacom")

Apple is timely seeking leave to amend its invalidity contentions based on this newly located prior art and Apple's amendment will not prejudice Elan. Some of the newly located prior art provides further details regarding prior art systems that Apple disclosed as prior art in its original invalidity contentions. For example, Apple disclosed the Boie System in its original invalidity contentions. The additional Boie documents referenced in Apple's amended

contentions were produced by third party Robert Boie on June 21, 2010. Apple analyzed the Boie documents and provided its amended contentions to Elan on the following day, June 22, 2010. Other prior art was located during the course of Apple's continuing investigation in this case. See Mehta Decl. ¶ 3. In addition to the identification of new art, Apple's supplemental invalidity contentions provide further clarification as to Apple's contentions. Specifically, Apple's supplemental

contentions provide greater specificity as to the combinations of prior art that Apple may rely upon to show obviousness under Section 103 and the bases for those combinations. Apple's supplemental contentions also update and clarify Apple's indefiniteness positions in view of the parties' claim construction disclosures.

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Elan will not be unfairly prejudiced by Apple's supplemental invalidity contentions. Apple disclosed the additional prior art around the time of the claim construction hearing in this case and while there is an opportunity for Elan to take discovery related to the additional references and invalidity theories set forth in Apple's supplemental contentions. Moreover, there is no fact discovery cutoff, no expert discovery cutoff, and no trial date set in this case yet. In addition, the amended contentions will not create any additional burden on the Court. Apple's amended contentions will not affect any pending or previously decided motion. III. CONCLUSION For the reasons stated, Apples respectfully requests that the Court enter an Order granting Apple's Unopposed Motion for Leave to Amend Its Invalidity Contentions to add the above-cited prior art references to its contentions.

Dated: September 20, 2010

WEIL, GOTSHAL & MANGES LLP

By:

/s/ Nathan Greenblatt Nathan Greenblatt Attorneys for Apple Inc.

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CERTIFICATE OF SERVICE I declare that I am employed with the law firm of Weil, Gotshal & Manges LLP, whose address is 201 Redwood Shores Parkway, Redwood Shores, California 94065-1175. I am not a party to the within cause, and I am over the age of eighteen years. I further declare that on September 20, 2010 , I served a copy of: UNOPPOSED MOTION FOR LEAVE TO AMEND INVALIDITY CONTENTIONS BY U.S. MAIL by placing a true copy thereof enclosed in a sealed envelope with postage thereon fully prepaid, addressed as follows, for collection and mailing in accordance with the firm's ordinary business practices. I am readily familiar with the practice for collection and processing of mail, and know that in the ordinary course of business practice that the document(s) described above will be deposited with the U.S. Postal Service on the same date as sworn to below. BY ELECTRONIC SERVICE by electronically mailing a true and correct copy through the electronic mail system to the email address(es) set forth in the service list below. BY OVERNIGHT DELIVERY by placing a true copy thereof enclosed in a sealed envelope with overnight delivery fees provided for, addressed as follows, for collection by Federal Express in accordance with ordinary business practices. I am readily familiar with the practice for collection and processing of correspondence for overnight delivery and know that in the ordinary course of business practice the document(s) described above will be deposited by an employee or agent in a box or other facility regularly maintained by Federal Express for collection on the same day that the document(s) are deposited. Sean DeBruine Alston + Bird LLP Two Palo Alto Square 3000 El Camino Real Palo Alto, CA 94306 [e-mail]

I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on September 20, 2010, at Redwood Shores, California. /s/ Judi Tallet Judi Tallet

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Case No. C-09-01531 RS (PVT)