Elan Microelectronics Corporation v. Apple, Inc.

Filing 350

MOTION Leave to Amend Infringement Contentions Pursuant to Pat. L.R. 3-6 / Unopposed Motion for Leave to Amend Infringement Contentions Pursuant to Pat. L.R. 3-6 filed by Elan Microelectronics Corporation. Motion Hearing set for 8/30/2011 10:00 AM in Courtroom 5, 17th Floor, San Francisco before Hon. Richard Seeborg. Responses due by 8/9/2011. Replies due by 8/16/2011. (Attachments: # 1 Proposed Order)(DeBruine, Sean) (Filed on 7/22/2011)

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YITAI HU (SBN 248085)
[e-mail]
SEAN P. DEBRUINE (SBN 168071)
[e-mail]
ELIZABETH H. RADER (SBN 184963)
[e-mail]
JANE HAN BU (SBN 240081)
[e-mail]
JENNIFER LIU (SBN 268990)
[e-mail]
PALANI P. RATHINASAMY (SBN 269852)
[e-mail]
ALSTON & BIRD LLP
275 Middlefield Road, Suite 150
Menlo Park, CA 94025-4008
Telephone:
650-838-2000
Facsimile:
650-838-2001
Attorneys for Plaintiff and Counterdefendant
ELAN MICROELECTRONICS
CORPORATION

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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ELAN MICROELECTRONICS
CORPORATION,
Plaintiff and Counterdefendant,

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UNOPPOSED MOTION FOR LEAVE
TO AMEND INFRINGEMENT
CONTENTIONS PURSUANT TO PAT.
L.R. 3-6

Defendant and Counterplaintiff.

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Case No. 5:09-cv-01531 RS (PSG)

Date: August 30, 2011
Time: 10:00 AM
Courtroom: 5
Honorable Paul S. Grewal

v.
APPLE, INC.,

AND RELATED COUNTERCLAIMS

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ELAN’S UNOPPOSED MOT. FOR LEAVE TO AMEND INFRING.
CONTENTIONS

Case No. 5:09-cv-01531 RS (PSG)

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Pursuant to Pat. L.R. 3-6, Elan Microelectronics Corp. (“Elan”) hereby brings this

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Unopposed Motion for Leave to Amend Its Infringement Contentions. In particular, Elan seeks to

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update its infringement contentions to expressly accuse certain Apple products released after Elan

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served its Infringement Contentions. While reserving its rights to contest whether the proposed

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Amended Contentions provide sufficient detail under the Patent Local Rules and the merits of

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Elan’s infringement allegations, Counsel for Apple, Inc. (“Apple”) has informed Elan that “Apple

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does not oppose Elan’s request for leave to file its amended infringement contentions, but

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disagrees with the substance of the allegations and reserves the right to object to the supplemental

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contentions’ adequacy, accuracy, or otherwise as appropriate.”

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I.

GOOD CAUSE EXISTS AS ELAN ACTED DILIGENTLY AND THERE IS
NO PREJUDICE TO APPLE

Patent L.R. 3-6 provides that a party’s infringement contentions may be amended by order

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of the Court upon a timely showing of good cause. A showing of good cause requires showing

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diligence and lack of prejudice. Tessera, Inc. v. Advanced Micro Devices, Inc., 2007 WL 1288199,

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at *2 (N.D. Cal. April 30, 2007) (“Defendants show that they were diligent in seeking to amend

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their preliminary contentions. Allowing them to amend their contentions at this point in the

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litigation will promote the fair resolution of this cause without causing any prejudice to Plaintiff.”).

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As explained below, good cause exists here as Elan timely provided notice to Apple, Elan accuses

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the same functionality in the subsequently released products as in the products initially identified,

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and there is no prejudice to Apple.

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A.

ELAN ACTED DILIGENTLY IN PROVIDING APPLE TIMELY
NOTICE OF ITS AMENDED INFRINGEMENT CONTENTIONS

Apple does not oppose Elan’s request for leave to file its amended infringement

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contentions. As explained further below, good cause exists independent of the parties’ agreement.

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Elan served its initial infringement contentions on October 22, 2009, specifically accusing

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Apple’s MacBook, MacBook Pro, MacBook Air, iBook G4, PowerBook G4, iPhone (the original,

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3G, 3GS models), iPod Touch, and Magic Mouse products of infringing U.S. Patent No.

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5,875,352 (“the 352 patent”) (see Declaration of Palani P. Rathinasamy In Support of Elan’s
ELAN’S UNOPPOSED MOT. FOR LEAVE TO AMEND INFRING.
CONTENTIONS

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Case No. 5:09-cv-01531 RS (PSG)

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Unopposed Motion for Leave to Amend Infringement Contentions (“Rathinasamy Decl.”) at ¶¶ 1-

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2). Elan and Apple disagreed as to the sufficiency of each party’s infringement contentions and

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Elan thereafter provided supplemental infringement contentions subject to a stipulation on

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December 11, 2009 (id.). Around January 2010 Apple announced its iPad product and released

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the product around April 2010 (id. at ¶ 4). Shortly thereafter, on March 28, 2010, Elan filed an

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ITC Complaint accusing, in addition to the products described in Elan’s initial infringement

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contentions, the newly released Apple iPad (id.). Around June 2010 and July 2010, respectively,

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Apple announced the release of its iPhone 4 and Magic Trackpad products (id. at ¶ 5).
On October 8, 2010, Elan supplemented an interrogatory response in the parallel ITC

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investigation to identify the iPhone 4 and Magic Trackpad products as infringing products and

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providing a claim chart showing infringement of the Magic Trackpad product (id.). Elan provided

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a claim chart confirming that the iPhone 4 infringed for the same reasons as the previous iPhone

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versions on November 4, 2010 (id.). The parties have agreed that discovery provided in the ITC

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case may be considered as provided in this case as well. As such, Elan has been diligent in

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providing Apple notice of its contentions. Around March 2011, Apple announced the release of

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its iPad 2 product and on June 14, 2011 Elan provided notice to Apple that it planned to amend its

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infringement contentions to include the iPad 2 product (id. at ¶¶ 6-7, Exhibit A1). On July 13,

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2011 Elan provided claim charts showing infringement of the iPad 2 product (id. at ¶ 8, Exhibit B).

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Thus, as each new Apple product has been released, Elan has provided timely notice to

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Apple of its infringement contentions. By the proposed supplemental contentions, Elan seeks

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leave only to consolidate its infringement contentions from the ITC investigation, consolidate its

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infringement contentions from its motion for partial summary judgment, and add Apple’s newly

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released iPad 2 product (id. at ¶¶ 10-11, Exhibits C-E).
Elan’s original Infringement Contentions also included its allegations with regard to U.S.

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Patent No. 6,274,353 (“the 353 patent”). Elan accused Apple’s iPhone (original, 3G and 3GS

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models) and iPod Touch products of infringement (id. at ¶ 3). Those products both ran on Apple’s

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All citations to Exhibits are attached to the Rathinasamy Declaration concurrently filed
herewith.
ELAN’S UNOPPOSED MOT. FOR LEAVE TO AMEND INFRING.
CONTENTIONS

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Case No. 5:09-cv-01531 RS (PSG)

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“iOS” operating system and the features accused of infringement are identical among them (id. at

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¶ 15). Elan’s amended contentions formally accuse the subsequently-released Apple products

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running the iOS operating system, each having the same accused features; namely the iPhone 4,

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iPad and iPad 2 (id. at ¶¶ 12, 15, Exhibit F). Elan does not seek to change the substance of its

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allegations, and is not seeking to add any additional claims (id.). Because these are simply new

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products within Apple’s product lines with the same accused functionality, Apple has in effect

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been on notice of Elan’s contentions since Elan’s original infringement contentions were served

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on October 22, 2009. Under the rules of this Court, the introduction of new, related products with

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similar functionality provides good cause to supplement infringement contentions. See 3COM

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Corp. v. D-Link Sys. Inc., 2007 U.S. Dist. LEXIS 26542, at *22 (N.D. Cal. Mar. 27, 2007)

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(holding that there is no prejudice to adding new products explaining that “[t]his is especially true

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if a defendant is put on notice by the naming of several products within a line of products

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possessing similar functionality.”); Network Appliances, Inc. v. Sun Microsystems Inc., 2009 U.S.

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Dist. LEXIS 107382, at *10-11 (N.D. Cal. Aug. 31, 2009) (granting leave to amend infringement

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contentions to add a new group of products released by defendant after plaintiff served

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infringement contentions). Thus, as Elan accuses the new Apple products of infringing of the

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same patent claims based on the same functionality as set forth in its intial contentions. Elan has

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provided timely notice of its infringement contentions and Elan seeks leave here to add

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infringement of Apple’s subsequently released iPhone 4, iPad, and iPad 2 products.

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B.

APPLE WILL NOT SUFFER UNDUE PREJUDICE

Apple will not be prejudiced or burdened by Elan’s proposed amended infringement

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contentions. Elan’s discovery requests have sought, and Apple was obligated to produce,

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discovery related to these new products. Moreover, significant discovery related to these products

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has already been produced in the parallel ITC investigation. Apple has agreed to make an

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additional production related to the iPad 2, but that production is already mandated by Elan’s

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outstanding discovery requests, which cover any productions with similar functionality as that in

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the originally accused products. See Advanced Micro Devices, Inc. v. Samsung Elecs. Co., 2009

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U.S. Dist. LEXIS 53942 (N.D. Cal. June 24, 2009) (“failure to specifically accuse the processor
ELAN’S UNOPPOSED MOT. FOR LEAVE TO AMEND INFRING.
CONTENTIONS

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Case No. 5:09-cv-01531 RS (PSG)

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products is not dispositive [to preclude discovery] as [the defendant] had notice that [plaintiff]

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accused what is purportedly the same process in a different product.”); see also Sun Microsystems,

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Inc. v. Network Appliance, 2009 U.S. Dist. LEXIS 122779 (N.D. Cal. Dec. 21, 2009) (allowing

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discovery of a embodying product that is not accused in the action partly because “this discovery

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is relevant and easily obtainable.”). Elan’s amended infringement contentions will not create any

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additional burden on the Court as it does not affect any pending or previously decided motion.

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II.

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For the reasons stated above, Elan respectfully requests that the Court issue an order

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CONCLUSION

granting Elan leave to amend its Infringement Contentions.
DATED: July 22, 2011

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Respectfully submitted,
ALSTON & BIRD LLP

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By:

/s/ Sean P. DeBruine
Sean P. DeBruine
Attorneys for Plaintiff and Counterdefendant
ELAN MICROELECTRONICS CORPORATION

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LEGAL02/32750345v2

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ELAN’S UNOPPOSED MOT. FOR LEAVE TO AMEND INFRING.
CONTENTIONS

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Case No. 5:09-cv-01531 RS (PSG)