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)

Download PDF
1 2 3 4 5 6 7 8 9 10 11 YITAI HU (SBN 248085) yitai.hu@alston.com SEAN P. DEBRUINE (SBN 168071) sean.debruine@alston.com ELIZABETH H. RADER (SBN 184963) elizabeth.rader@alston.com JANE HAN BU (SBN 240081) jane.bu@alston.com JENNIFER LIU (SBN 268990) celine.liu@alston.com PALANI P. RATHINASAMY (SBN 269852) palani.rathinasamy@alston.com 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 12 UNITED STATES DISTRICT COURT 13 NORTHERN DISTRICT OF CALIFORNIA 14 SAN JOSE DIVISION 15 16 17 18 ELAN MICROELECTRONICS CORPORATION, Plaintiff and Counterdefendant, 21 22 23 UNOPPOSED MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS PURSUANT TO PAT. L.R. 3-6 Defendant and Counterplaintiff. 19 20 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 24 25 26 27 28 ELAN’S UNOPPOSED MOT. FOR LEAVE TO AMEND INFRING. CONTENTIONS Case No. 5:09-cv-01531 RS (PSG) 1 Pursuant to Pat. L.R. 3-6, Elan Microelectronics Corp. (“Elan”) hereby brings this 2 Unopposed Motion for Leave to Amend Its Infringement Contentions. In particular, Elan seeks to 3 update its infringement contentions to expressly accuse certain Apple products released after Elan 4 served its Infringement Contentions. While reserving its rights to contest whether the proposed 5 Amended Contentions provide sufficient detail under the Patent Local Rules and the merits of 6 Elan’s infringement allegations, Counsel for Apple, Inc. (“Apple”) has informed Elan that “Apple 7 does not oppose Elan’s request for leave to file its amended infringement contentions, but 8 disagrees with the substance of the allegations and reserves the right to object to the supplemental 9 contentions’ adequacy, accuracy, or otherwise as appropriate.” 10 11 12 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 13 of the Court upon a timely showing of good cause. A showing of good cause requires showing 14 diligence and lack of prejudice. Tessera, Inc. v. Advanced Micro Devices, Inc., 2007 WL 1288199, 15 at *2 (N.D. Cal. April 30, 2007) (“Defendants show that they were diligent in seeking to amend 16 their preliminary contentions. Allowing them to amend their contentions at this point in the 17 litigation will promote the fair resolution of this cause without causing any prejudice to Plaintiff.”). 18 As explained below, good cause exists here as Elan timely provided notice to Apple, Elan accuses 19 the same functionality in the subsequently released products as in the products initially identified, 20 and there is no prejudice to Apple. 21 22 23 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 24 contentions. As explained further below, good cause exists independent of the parties’ agreement. 25 Elan served its initial infringement contentions on October 22, 2009, specifically accusing 26 Apple’s MacBook, MacBook Pro, MacBook Air, iBook G4, PowerBook G4, iPhone (the original, 27 3G, 3GS models), iPod Touch, and Magic Mouse products of infringing U.S. Patent No. 28 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 2 Case No. 5:09-cv-01531 RS (PSG) 1 Unopposed Motion for Leave to Amend Infringement Contentions (“Rathinasamy Decl.”) at ¶¶ 1- 2 2). Elan and Apple disagreed as to the sufficiency of each party’s infringement contentions and 3 Elan thereafter provided supplemental infringement contentions subject to a stipulation on 4 December 11, 2009 (id.). Around January 2010 Apple announced its iPad product and released 5 the product around April 2010 (id. at ¶ 4). Shortly thereafter, on March 28, 2010, Elan filed an 6 ITC Complaint accusing, in addition to the products described in Elan’s initial infringement 7 contentions, the newly released Apple iPad (id.). Around June 2010 and July 2010, respectively, 8 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 9 10 investigation to identify the iPhone 4 and Magic Trackpad products as infringing products and 11 providing a claim chart showing infringement of the Magic Trackpad product (id.). Elan provided 12 a claim chart confirming that the iPhone 4 infringed for the same reasons as the previous iPhone 13 versions on November 4, 2010 (id.). The parties have agreed that discovery provided in the ITC 14 case may be considered as provided in this case as well. As such, Elan has been diligent in 15 providing Apple notice of its contentions. Around March 2011, Apple announced the release of 16 its iPad 2 product and on June 14, 2011 Elan provided notice to Apple that it planned to amend its 17 infringement contentions to include the iPad 2 product (id. at ¶¶ 6-7, Exhibit A1). On July 13, 18 2011 Elan provided claim charts showing infringement of the iPad 2 product (id. at ¶ 8, Exhibit B). 19 Thus, as each new Apple product has been released, Elan has provided timely notice to 20 Apple of its infringement contentions. By the proposed supplemental contentions, Elan seeks 21 leave only to consolidate its infringement contentions from the ITC investigation, consolidate its 22 infringement contentions from its motion for partial summary judgment, and add Apple’s newly 23 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. 24 25 Patent No. 6,274,353 (“the 353 patent”). Elan accused Apple’s iPhone (original, 3G and 3GS 26 models) and iPod Touch products of infringement (id. at ¶ 3). Those products both ran on Apple’s 27 1 28 All citations to Exhibits are attached to the Rathinasamy Declaration concurrently filed herewith. ELAN’S UNOPPOSED MOT. FOR LEAVE TO AMEND INFRING. CONTENTIONS 3 Case No. 5:09-cv-01531 RS (PSG) 1 “iOS” operating system and the features accused of infringement are identical among them (id. at 2 ¶ 15). Elan’s amended contentions formally accuse the subsequently-released Apple products 3 running the iOS operating system, each having the same accused features; namely the iPhone 4, 4 iPad and iPad 2 (id. at ¶¶ 12, 15, Exhibit F). Elan does not seek to change the substance of its 5 allegations, and is not seeking to add any additional claims (id.). Because these are simply new 6 products within Apple’s product lines with the same accused functionality, Apple has in effect 7 been on notice of Elan’s contentions since Elan’s original infringement contentions were served 8 on October 22, 2009. Under the rules of this Court, the introduction of new, related products with 9 similar functionality provides good cause to supplement infringement contentions. See 3COM 10 Corp. v. D-Link Sys. Inc., 2007 U.S. Dist. LEXIS 26542, at *22 (N.D. Cal. Mar. 27, 2007) 11 (holding that there is no prejudice to adding new products explaining that “[t]his is especially true 12 if a defendant is put on notice by the naming of several products within a line of products 13 possessing similar functionality.”); Network Appliances, Inc. v. Sun Microsystems Inc., 2009 U.S. 14 Dist. LEXIS 107382, at *10-11 (N.D. Cal. Aug. 31, 2009) (granting leave to amend infringement 15 contentions to add a new group of products released by defendant after plaintiff served 16 infringement contentions). Thus, as Elan accuses the new Apple products of infringing of the 17 same patent claims based on the same functionality as set forth in its intial contentions. Elan has 18 provided timely notice of its infringement contentions and Elan seeks leave here to add 19 infringement of Apple’s subsequently released iPhone 4, iPad, and iPad 2 products. 20 21 B. APPLE WILL NOT SUFFER UNDUE PREJUDICE Apple will not be prejudiced or burdened by Elan’s proposed amended infringement 22 contentions. Elan’s discovery requests have sought, and Apple was obligated to produce, 23 discovery related to these new products. Moreover, significant discovery related to these products 24 has already been produced in the parallel ITC investigation. Apple has agreed to make an 25 additional production related to the iPad 2, but that production is already mandated by Elan’s 26 outstanding discovery requests, which cover any productions with similar functionality as that in 27 the originally accused products. See Advanced Micro Devices, Inc. v. Samsung Elecs. Co., 2009 28 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 4 Case No. 5:09-cv-01531 RS (PSG) 1 products is not dispositive [to preclude discovery] as [the defendant] had notice that [plaintiff] 2 accused what is purportedly the same process in a different product.”); see also Sun Microsystems, 3 Inc. v. Network Appliance, 2009 U.S. Dist. LEXIS 122779 (N.D. Cal. Dec. 21, 2009) (allowing 4 discovery of a embodying product that is not accused in the action partly because “this discovery 5 is relevant and easily obtainable.”). Elan’s amended infringement contentions will not create any 6 additional burden on the Court as it does not affect any pending or previously decided motion. 7 II. 8 For the reasons stated above, Elan respectfully requests that the Court issue an order 9 10 CONCLUSION granting Elan leave to amend its Infringement Contentions. DATED: July 22, 2011 11 Respectfully submitted, ALSTON & BIRD LLP 12 13 By: /s/ Sean P. DeBruine Sean P. DeBruine Attorneys for Plaintiff and Counterdefendant ELAN MICROELECTRONICS CORPORATION 14 15 LEGAL02/32750345v2 16 17 18 19 20 21 22 23 24 25 26 27 28 ELAN’S UNOPPOSED MOT. FOR LEAVE TO AMEND INFRING. CONTENTIONS 5 Case No. 5:09-cv-01531 RS (PSG)

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.

Why Is My Information Online?