Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 345

MOTION to Amend/Correct #124 Answer to to CounterClaim,, Counterclaim, Apple's Unopposed Motion for Leave to Amend its Answer, Defenses, and Counterclaims in Reply to Samsung's Counterclaims filed by Apple Inc.. Responses due by 11/14/2011. Replies due by 11/21/2011. (Attachments: #1 Exhibit 1, #2 Proposed Order)(Selwyn, Mark) (Filed on 10/28/2011)

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HAROLD J. MCELHINNY (CA SBN 66781)
[e-mail]
MICHAEL A. JACOBS (CA SBN 111664)
[e-mail]
RICHARD S.J. HUNG (CA SBN 197425)
[e-mail]
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Telephone: [phone]
Facsimile: [phone]

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WILLIAM F. LEE (pro hac vice)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, Massachusetts 02109
Telephone: [phone]
Facsimile: [phone]
MARK D. SELWYN (SBN 244180)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Plaintiff and
Counterclaim-Defendant Apple Inc.

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

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APPLE INC., a California corporation,
Plaintiff,

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Civil Action No. 11-CV-01846-LHK

vs.
SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity, SAMSUNG
ELECTRONICS AMERICA, INC., a New
York corporation, and SAMSUNG
TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,

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APPLE INC.’S UNOPPOSED MOTION
FOR LEAVE TO AMEND ITS ANSWER,
DEFENSES, AND COUNTERCLAIMS IN
REPLY TO SAMSUNG’S
COUNTERCLAIMS

Hearing: TBD
Time:
TBD

Defendants.
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PLAINTIFF AND COUNTERCLAIM DEFENDANT APPLE
INC.’S UNOPPOSED MOTION FOR LEAVE TO AMEND ITS
ANSWER, DEFENSES, AND COUNTERCLAIMS IN REPLY
TO SAMSUNG’S COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

OPPOS
FOR

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SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity, SAMSUNG
ELECTRONICS AMERICA, INC., a New
York corporation, and SAMSUNG
TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company, a
California corporation,

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Counterclaim-Plaintiffs,

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v.

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APPLE INC., a California corporation,
Counterclaim-Defendant.

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INTRODUCTION

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On October 18, 2011, the Court entered an Order dismissing certain of Apple’s

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counterclaims with leave to amend “to cure the deficiencies indentified” in the Order.1 Pursuant

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to Federal Rule of Civil Procedure 15(a), Apple moves for leave to Amend its Answer, Defenses,

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and Counterclaims in Reply to Samsung’s Counterclaims (the “Amended Counterclaims in

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Reply”) to the extent allegations in the proposed Amended Counterclaims in Reply exceed the
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scope of the leave to amend specified in the Court’s October 18 Order.2 The proposed Amended

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Counterclaims in Reply include allegations that reflect recently-obtained information and events

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that have occurred since Apple filed its initial counterclaims.

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Apple is moving to amend well before the deadline of November 14, 2011, for
amendments to pleadings in the Case Management Order and before Samsung has even

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answered. Samsung cannot show any prejudice from allegations that go beyond the scope of the
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See Court’s October 18, 2011 Order Granting in Part, and Denying in Part, Motion to Dismiss and Strike at 15.

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A copy of Apple’s proposed Amended Counterclaims in Reply is attached hereto as Exhibit 1. On October 27,
2011, Apple provided Samsung a copy of its proposed Amended Counterclaims in Reply and requested Samsung’s
consent. Samsung indicated on October 28, 2011 that it has no objection.

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PLAINTIFF AND COUNTERCLAIM DEFENDANT APPLE
INC.’S UNOPPOSED MOTION FOR LEAVE TO AMEND ITS
ANSWER, DEFENSES, AND COUNTERCLAIMS IN REPLY
TO SAMSUNG’S COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

OPPOS
FOR

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leave the Court has specified, or any other basis to deny leave to amend under Rule 15(a). The

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Court should grant Apple’s motion for leave to amend.

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PROCEDURAL BACKGROUND

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On April 15, 2011, Apple sued Samsung for patent, trademark, and trade dress
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infringement.

On April 27, Samsung separately brought suit against Apple for alleged

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infringement of certain of its patents, including patents that Samsung has declared essential to

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the Universal Mobil Telecommunications Standard (“UMTS”). On July 1, Samsung voluntarily

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dismissed its complaint, recasting its patent claims as counterclaims to Apple’s complaint. On

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July 21, Apple filed its Answer, Defenses, and Counterclaims in Reply to Samsung’s

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Counterclaims (“Counterclaims in Reply”).

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On August 15, 2011, Samsung moved to dismiss certain of Apple’s Counterclaims in

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Reply. On October 14, 2011, Apple notified the Court and Samsung that Apple intended to file

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amended counterclaims, and provided Samsung with a copy of the proposed amended pleading

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on October 18. Later that day, the Court entered an Order granting in part, and denying in part,

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Samsung’s motion to dismiss, and granting Apple leave to amend “to cure the deficiencies

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indentified” in the Order.
APPLE’S PROPOSED AMENDMENTS

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Apple’s proposed Amended Counterclaims in Reply not only address the Court’s October

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18 Order, but also add new allegations based on recently-obtained information and events

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occurring since Apple filed its initial counterclaims including, among other things: (1)

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Samsung’s license agreement with Intel Corporation (“Intel”) and Qualcomm, Inc.
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(“Qualcomm”) – suppliers to Apple of allegedly infringing chipsets that are incorporated into

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Apple’s end products, which preclude Samsung from asserting the patents in suit against Apple.

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PLAINTIFF AND COUNTERCLAIM DEFENDANT APPLE
INC.’S UNOPPOSED MOTION FOR LEAVE TO AMEND ITS
ANSWER, DEFENSES, AND COUNTERCLAIMS IN REPLY
TO SAMSUNG’S COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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OPPOS
FOR

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(see e.g., Amended CR ¶¶ 20-22, 209, Exhibit 1). Apple received the Samsung-Intel agreement

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on September 15, 2011, and the Samsung-Qualcomm agreement on October 18, 2011, after

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Apple had been requesting the agreements for over four and five months respectively through

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formal discovery and other approaches. (2) Samsung’s offer of a license to its declared-essential
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patents on terms that are manifestly not fair, reasonable, and non-discriminatory (“FRAND”),

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which did not occur until several months after Apple filed its current Counterclaims in Reply

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(see e.g., Amended CR ¶77, Exhibit 1). (3) A recent decision of The District Court of The

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Hague in the Netherlands holding that Samsung’s attempt to enjoin Apple’s sales of its products

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based on declared essential patents was manifestly inappropriate given that Samsung had failed

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to offer FRAND license terms to Apple (see Amended CR ¶¶ 49, 78, Exhibit 1). (4) The

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European Commission’s recent decision to open an investigation into whether Samsung’s

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conduct with respect to its patents declared essential to the UMTS telecommunications standard

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violates the EU competition laws (see Amended CR ¶ 4, Exhibit 1).

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Finally, Apple has added allegations to its “Authority to Practice and/or
Unenforceability” defense based largely on the recently-obtained information relating to

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Samsung’s license agreements with chipset suppliers. (see Amended CR at pp. 25-26, Exhibit
1).
ARGUMENT

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I.

The Court Should Grant Apple Leave to Amend
A party may amend its pleadings with leave of the court, which should be freely given

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when justice so requires. Fed. R. Civ. P. 15(a). Rule 15(a) reflects a “strong policy permitting
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amendment.” SAP Aktiencesellschaft v. I2 Tech., Inc., 250 F.R.D. 472, 473 (N.D. Cal 2008)

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(granting motion to amend), (quoting Bowles v. Reade, 198 F.3d 752, 757 (9th Cir. 1999)). The

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PLAINTIFF AND COUNTERCLAIM DEFENDANT APPLE
INC.’S UNOPPOSED MOTION FOR LEAVE TO AMEND ITS
ANSWER, DEFENSES, AND COUNTERCLAIMS IN REPLY
TO SAMSUNG’S COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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OPPOS
FOR

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Ninth Circuit has held that courts should grant leave to amend with “extreme liberality.”

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Eminence Capital, LLC v. Aspeon, Inc., 316 F.3d 1048, 1051 (9th Cir. 2003). And the non-

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movant bears the burden to prove any basis for denying the amendment. Eminence Capital, 316

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F.3d at 1052.
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In determining whether to grant leave to amend, “it is the consideration of prejudice to

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the opposing party that carries the greatest weight,” Eminence Capital, 316 F.3d at 1052, and

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“[t]he party opposing amendment bears the burden of showing prejudice.” Am. Small Bus.

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League v. Johnson, 2010 WL 3490223, *5 (N.D. Cal. Sept. 3, 2010). Absent a showing of

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prejudice, courts deny leave to amend only on a strong showing of one of the remaining factors

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relevant under Rule 15(a) -- undue delay, bad faith or dilatory motive, or futility of amendment.

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See Eminence, 316 F.3d at 1052 (“Absent prejudice, or a strong showing of any of the remaining

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factors, there exists a presumption [to permit amendment] under Rule 15(a).”). “In assessing

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these factors, all inferences should be made in favor of granting the motion.” Am. Small Bus.

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League, 2010 WL 3490223 at 4.

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Here, Apple’s proposed amendment will plainly not prejudice Samsung. The case is at

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an early stage. Apple will be filing amended counterclaims to respond to the Court’s October 18

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Order in any event, and Samsung has not answered. Only limited discovery has occurred, and

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there have been no depositions. Under these circumstances, Samsung cannot show prejudice

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from the additional proposed amendments beyond the leave to amend that the Court specified in

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its Order. See, e.g., SAP Aktiencesellschaft, 250 F.R.D. at 472 (finding that plaintiff had

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“argued persuasively that defendant will not be prejudiced, because plaintiff’s request comes at
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an early stage in the proceedings before much, if any, discovery, specific to this case, has been
undertaken by defendant”).

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PLAINTIFF AND COUNTERCLAIM DEFENDANT APPLE
INC.’S UNOPPOSED MOTION FOR LEAVE TO AMEND ITS
ANSWER, DEFENSES, AND COUNTERCLAIMS IN REPLY
TO SAMSUNG’S COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

OPPOS
FOR

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Apple is moving for leave to amend well before the November 14, 2011 deadline for

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amendments to pleadings. See Minute Order and Case Management Order at p. 2; see also Am.

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Small Bus. League, 2010 WL 3490223 at 5 (finding no undue delay when motion for leave to

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amend was timely under the case management deadline). Moreover, Apple seeks leave to amend
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beyond the scope specified in the Court’s Order for good reason – to reflect events subsequent to

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its initial filing, and to incorporate recently-obtained information. Indeed, “[t]he underlying

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purpose of Rule 15 is to facilitate decision on the merits rather than on the pleadings or

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technicalities.” ABM Industries, Inc. v. Zurich American Ins. Co., 237 F.R.D. 225, 227 (N.D.

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Cal. 2006) (granting motion to amend allowing plaintiff to add new claim and “recently-

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developed factual allegations”).
CONCLUSION
Apple respectfully requests that the Court grant Apple leave to file its First Amended
Counterclaims in Reply, in the form annexed to the accompanying Notice of Motion.

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PLAINTIFF AND COUNTERCLAIM DEFENDANT APPLE
INC.’S UNOPPOSED MOTION FOR LEAVE TO AMEND ITS
ANSWER, DEFENSES, AND COUNTERCLAIMS IN REPLY
TO SAMSUNG’S COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

OPPOS
FOR

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Dated: October 28, 2011

/s/ Mark D. Selwyn
Mark D. Selwyn (SBN 244180)
([e-mail])
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

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William F. Lee (admitted pro hac vice)
([e-mail])
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, Massachusetts 02109
Telephone: [phone]
Facsimile: [phone]

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Harold J. McElhinny (SBN 66781)
([e-mail])
Michael A. Jacobs (SBN 111664)
([e-mail])
Richard S.J. Hung (CA SBN 197425)
[e-mail]
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105
Telephone: ( 415) 268-7000
Facsimile: [phone]

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Attorneys for Plaintiff and
Counterclaim-Defendant Apple Inc.

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PLAINTIFF AND COUNTERCLAIM DEFENDANT APPLE
INC.’S UNOPPOSED MOTION FOR LEAVE TO AMEND ITS
ANSWER, DEFENSES, AND COUNTERCLAIMS IN REPLY
TO SAMSUNG’S COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

OPPOS
FOR

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the above and foregoing
document has been served on October 28, 2011, to all counsel of record who are deemed to have

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consented to electronic service via the Court’s CM/ECF system per Civil Local Rule 5.4. Any
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other counsel of record will be served by electronic mail, facsimile and/or overnight delivery.

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/s/ Mark D. Selwyn
Mark D. Selwyn

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PLAINTIFF AND COUNTERCLAIM DEFENDANT APPLE
INC.’S UNOPPOSED MOTION FOR LEAVE TO AMEND ITS
ANSWER, DEFENSES, AND COUNTERCLAIMS IN REPLY
TO SAMSUNG’S COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

OPPOS
FOR