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

Filing 720

RESPONSE (re #667 Administrative Motion to File Under Seal re Samsung's Motion to Supplement Invalidity Contentions ) APPLES OPPOSITION TO SAMSUNGS MOTION TO SUPPLEMENT INVALIDITY CONTENTIONS filed byApple Inc.. (Hung, Richard) (Filed on 2/9/2012)

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HAROLD J. MCELHINNY (CA SBN 66781)
[e-mail]
MICHAEL A. JACOBS (CA SBN 111664)
[e-mail]
JENNIFER LEE TAYLOR (CA SBN 161368)
[e-mail]
ALISON M. TUCHER (CA SBN 171363)
[e-mail]
RICHARD S.J. HUNG (CA SBN 197425)
[e-mail]
JASON R. BARTLETT (CA SBN 214530)
[e-mail]
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Telephone: [phone]
Facsimile: [phone]

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WILLIAM F. LEE
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 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]

Attorneys for Plaintiff and
Counterclaim-Defendant APPLE INC.

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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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APPLE INC., a California corporation,
Plaintiff,

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

Case No.

11-cv-01846-LHK (PSG)

APPLE’S OPPOSITION TO
SAMSUNG’S MOTION TO
SUPPLEMENT INVALIDITY
CONTENTIONS

Defendants.

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INTRODUCTION
Samsung served Invalidity Contentions in early October, claim construction has been fully

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briefed and argued, and the parties are heading into expert discovery. Samsung now seeks to add

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five new invalidity theories to the case. But Samsung fails to show good cause for these

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additions. Such good cause requires diligence in obtaining the new information and a prompt

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motion to supplement. Here, Samsung has done neither. Each of Samsung’s five new alleged

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prior art references could and should have been addressed months ago—whether in Samsung’s

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initial Invalidity Contentions or shortly thereafter.

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Samsung claimed on November 10 that it had good cause to add the Mac OS X,

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version 10.0 and SuperClock references. Samsung wrote Apple on November 10, 2011,

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alleging that it had good cause to amend its Invalidity Contentions to add both the Mac OS X 10.0

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and SuperClock references. But Samsung undisputedly knew of these references even earlier, as

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it questioned three deponents about these references in October. Having waited for two months

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after its self-proclaimed good cause and at least three months after discovering these references to

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file this motion, Samsung cannot show diligence. Although Samsung now claims that it required

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source code from Apple to assert these references, no source code was required. Samsung’s

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proposed invalidity charts for SuperClock, for example, never refer to source code and rely solely

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on information that it possessed in November.

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Samsung raised Glimpse in an August deposition. Samsung’s claim that it was unaware

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of Glimpse until November is both puzzling and false. During an August 2011 deposition,

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Samsung’s counsel introduced an article relating to Glimpse and questioned a witness about that

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article. Samsung then waited two months to contact the individual behind Glimpse and another

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two months to “identify Glimpse as invalidating prior art.” The Court’s December 2 preliminary

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injunction order does not justify Samsung’s lack of diligence, as Samsung’s motion to amend

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came nearly two months later.

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Samsung discovered the Cirque and Synaptics references at least by October 7.

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Samsung must have believed that Cirque’s touchpads were relevant at least by October 7, 2011,

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when it included a Cirque patent in its initial Invalidity Contentions. Samsung nevertheless
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waited three weeks to issue a document subpoena to Cirque. It then waited another three weeks

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after receiving these documents, or until December 22, to issue a deposition subpoena to Cirque.

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Samsung could not have acted diligently in waiting until late January to take a deposition

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regarding potential prior art that it identified in early October.

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The same is true of the Synaptics reference. Samsung concedes that it learned of this

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reference during its initial prior art search in connection with its October 7, 2011 Invalidity

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Contentions. (Motion at 13.) But Samsung delayed two months—until December 7—to

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subpoena Synaptics, and over three months—until January 19—to depose Synaptics.

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None of these actions show diligence. Samsung’s request to supplement therefore should
be denied.

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PROCEDURAL HISTORY

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On October 7, 2011, Samsung served its 60-page initial Invalidity Contentions with

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79 invalidity claim charts. (Declaration of Richard Hung in Support of Apple’s Opposition

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(“Hung Decl.”) ¶ 2.) On November 1, 2011, Samsung asked that Apple produce a computer with

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a Mac OS X 10.0 working copy, Mac OS X 10.0 source code, and SuperClock source code.

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(Declaration of Alex Baxter in Support of Samsung’s Motion (“Baxter Decl.”) Ex. B.)

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On November 8, 2011, Samsung wrote again to confirm Apple’s production of the requested

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items and code. (Hung Decl. Ex. A.)

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On November 10, Samsung sent a letter to Apple listing eight prior art references. (Baxter

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Decl. Ex. C.) In its letter, Samsung claimed that it had “good cause” to add these references to its

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Invalidity Contentions, and it asked Apple to stipulate to their addition. (Id.) The eight

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references included Mac OS X 10.0 and SuperClock. (Id.) Samsung did not attach any proposed

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invalidity claim charts to its letter, however, instead providing only brief statements of the

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references’ alleged relevance. (Id.)

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On November 16, the parties discussed Apple’s production of Mac OS X 10.0 and

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SuperClock items. (Hung Decl. Ex. B.) As part of these discussions, Samsung requested that

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Apple waive any opposition to Samsung’s motion to amend its Invalidity Contentions. (Id.)

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Apple declined. (Id.)
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Despite Samsung’s representation on November 10 that it was ready to supplement its

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Invalidity Contentions, Samsung did not do so. Instead, Samsung waited until January 2012 to

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raise the issue of supplementation again. On January 5, 2012, Samsung wrote Apple about

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adding the same eight prior art references—and then identified nine more references still,

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including several related software applications. (Baxter Decl. Ex. H.) This raised the count to 17

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new prior art references, including the Glimpse and Cirque references. (Id.) On January 8, 2012,

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Apple asked that Samsung explain when it had first learned of each alleged prior art reference.

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(Baxter Decl. Ex. I.) Samsung subsequently identified yet another prior art reference—the

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Synaptics reference—raising the count to 18. (Baxter Decl. Ex. K.)

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Samsung sent a letter to Apple misrepresenting when it discovered the prior art references,

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as Apple pointed out in its reply. (Baxter Decl. Ex. N.) Many of the stated dates were

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considerably later than when Samsung should have discovered (and in many cases, did discover)

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the references. (Id.) Apple thus responded on January 26 stating that it would not stipulate to this

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motion. (Id.) Later that evening, Samsung filed the present motion, seeking to supplement its

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invalidity contentions with 5 of the 18 references addressed in its prior letters. With its motion,

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Samsung for the first time provided invalidity claim charts for these references.

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LEGAL STANDARD
Amendments to invalidity contentions require a timely showing of good cause. (Patent

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L.R. 3-6.) This requires proof of diligence, i.e., that the party promptly sought amendment after

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discovering the new information. O2 Micro Int’l Ltd. v. Monolithic Power Sys., 467 F.3d 1355,

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1363, 1366-67 (Fed. Cir. 2006). A delay of even a few months may demonstrate a lack of

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diligence. See, e.g., id. at 1367 (delay of three months not diligent).

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This Court is “decidedly conservative” towards amendment of infringement or invalidity

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contentions. Kilopass Tech., Inc. v. Sidense Corp., No. C-10-02066 SI, 2011 U.S. Dist. LEXIS

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126837, at *3-4 (N.D. Cal. Nov. 2, 2011) (denying motion for leave to amend invalidity

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contentions) (internal citation omitted). Such conservatism is “designed to prevent the ‘shifting

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sands’ approach to claim construction.” Id. For example, a motion to amend will be denied

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where a party delayed seeking amendment in order to obtain more information and avoid possible
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further amendment. Genentech, Inc. v. Trs. of the Univ. of Pa., No. C 10-2037 LHK (PSG)

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2011 U.S. Dist. LEXIS 81925, at *5-6 (N.D. Cal. July 27, 2011) (Grewal, J.). Similarly, a motion

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will be denied where a party awaited a response to a request to stipulate. O2 Micro, 467 F.3d

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at 1361 (affirming finding that negotiations over proposed stipulation did not justify delay in

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amending contentions); Oracle Am., Inc. v. Google Inc., No. C 10-03561 WHA, 2011 U.S. Dist.

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LEXIS 87251, at *11 (N.D. Cal. Aug. 8, 2011) (“If Google was serious about amending its

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invalidity contentions, it should not have gambled for months on the possibility that a stipulation

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might be reached.”).

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Samsung bears the burden of establishing diligence. O2 Micro, 467 F.3d at 1366. Absent

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diligence, the “good cause” inquiry ends—and the Court need not consider any alleged prejudice

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arising from the belated amendment. Id. at 1367-68 (affirming denial of motion to amend and

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holding there was “no need to consider the question of prejudice” where movant did not act

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diligently); accord Genentech, Inc. v. Trs. of the Univ. of Pa., No. 10-CV-02037-LHK, 2011 U.S.

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Dist. LEXIS 108127, at *4 (N.D. Cal. Sept. 16, 2011) (Koh, J.).

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I.

SAMSUNG HAS NOT SHOWN GOOD CAUSE TO AMEND UNDER
PATENT LOCAL RULE 3-6.

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Samsung did not move in a timely manner with respect to any of the five prior art

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references addressed in its motion, and thus fails to carry its burden of showing good cause under

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Patent Local Rule 3-6. Samsung knew of all five references months ago. Samsung claimed in

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early November that it was ready to amend with respect to Mac OS X and SuperClock, but failed

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to do so. Samsung’s failure to pursue timely non-party discovery for the remaining three

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references—Glimpse, Cirque, and Synaptics—results solely from its own lack of diligence.

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Samsung’s motion therefore should be denied.

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A.

Samsung Could Have Raised Its Invalidity Theories Concerning Mac
OS X (Chart M-15) Much Earlier.

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Samsung has been aware of Mac OS X for months. During an October 14, 2011

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deposition, Samsung asked about certain pictures on the '891 patent that Samsung believed were

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from Mac OS X. (Baxter Decl. Ex. N; Hung Decl. Ex. C (Chaudhri Depo. at 13:5-7).) A month
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later, on November 10, 2011, Samsung represented that it already had good cause to supplement

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its Invalidity Contentions with Mac OS X 10.0. (Baxter Decl. Ex. C.) Nevertheless, Samsung

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waited over two more months to finally move to supplement—a total of over three months from

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the time it first became aware of this material.

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Samsung cites only one inapposite case in support of its belated request: Bd. of Trs. of

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The Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., No. C-05-04158 MHP,

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2008 U.S. Dist. LEXIS 16556 (N.D. Cal. Mar. 4, 2008). In Roche, the court ruled that, because

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Stanford had served its actual amended contentions five months before it filed its motion to

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amend, Stanford’s motion should be granted. 2008 U.S. Dist. LEXIS 16556, at *7. Stanford’s

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non-compliance with the Patent Local Rules was purely a formal one, as the other party already

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had the exact contentions that were eventually filed with the Court.

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By contrast, Samsung did not provide Apple with any amended contentions before filing

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its motion on January 26, 2012. Although identifying and then repeatedly adding references

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during the intervening months, Samsung never indicated exactly how it intended to apply these

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references to the specific asserted claims. In this way, Samsung’s prior correspondence masked

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the relative importance of the identified references. This is clear from the fact that Samsung’s

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motion addresses only 5 of the 18 identified references. (Baxter Decl. Exs. H, K.) Samsung’s

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remaining excuse—that it needed access to a working computer running Mac OS X 10.0 and the

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corresponding source code before it could supplement its Invalidity Contentions—contradicts

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Samsung’s earlier position in its November 10, 2011 letter that it already had good cause to

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amend. Indeed, Samsung’s letter acknowledged it already had a working computer running Mac

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OS X 10.0. (Baxter Decl. Ex. C.)

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As to source code, Samsung’s draft Mac OS X invalidity chart confirms that Samsung did

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not need it for its proposed amendments. (Briggs Decl. Ex. 4.) The vast majority of the chart

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contains descriptions of and screenshots from Samsung’s experimentation with the working copy

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of Mac OS X it has had since at least November. (Baxter Decl. Ex. C; Briggs Decl. Ex. 4.) The

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limited citations to source code are either unnecessary or redundant. For example, Samsung’s

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invalidity chart refers to code for the '891 patent’s “starting a timer” limitation, but instead could
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have referenced Samsung’s experimentation with its working copy of Mac OS X. (Briggs Decl.

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Ex. 4) That Samsung subsequently learned additional technical details about Mac OS X does not

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excuse its failure to move earlier. See Genentech, 2011 U.S. Dist. LEXIS 81925, at *5-6;

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CBS Interactive, Inc. v. Etilize, Inc., 257 F.R.D. 195, 201-03 (N.D. Cal. 2009) (denying motion to

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amend invalidity contentions and holding that party should have sought to amend “immediately

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after” depositions in which it learned of prior art, not months later after investigating technical

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details).

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B.

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Samsung Also Could Have Raised Its Invalidity Theories Concerning
SuperClock (Chart D-8) Much Earlier.

Samsung knew of SuperClock by October 26, 2011, when Samsung questioned

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Steven Christensen about this reference at his deposition. (Baxter Decl. Ex. N.; Hung Decl.

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Ex. D (Christensen Depo. at 161:21-25).) And like Mac OS X 10.0, Samsung claimed on

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November 10 that it already had a working copy of SuperClock and had good cause to amend its

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Invalidity Contentions. (Baxter Decl. Ex. C.) Nevertheless, Samsung waited over two more

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months to seek the Court’s leave to amend.

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Samsung’s claim that it needed source code to amend is contradicted by its new invalidity

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contentions, which do not refer to source code. (Briggs Decl. Ex. 5.) Samsung’s proposed

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invalidity claim chart for SuperClock shows only i) screenshots from the working copy of

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SuperClock (which Samsung admittedly possessed before November 10), and ii) quotes from a

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readme.txt file (which Samsung had in October). (Id.) Samsung thus could have filed the exact

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same invalidity chart for SuperClock back in early November 2011.

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C.

Samsung Also Could Have Raised Its Invalidity Theories Concerning
Glimpse (Chart G-8) Much Earlier.

Samsung knew of Glimpse and its alleged relevance in August 2011. During a deposition

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that month, Samsung questioned a witness about Glimpse at length. (Baxter Decl. Ex. N.; Hung

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Decl. Ex. E (Balakrishnan Depo. at 219-21, 225-228).) The deposition transcript makes clear that

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Samsung not only knew about this reference, but its citation during reexamination of the asserted

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'381 patent. (Hung Decl. Ex. E at 219:2-5 (“I’ve marked as Exhibit 107 . . . the Glimpse prior art
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that was referenced in the reexamination prosecution history.”).) Despite its long knowledge of

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Glimpse, Samsung chose to exclude Glimpse from its initial Invalidity Contentions. It also

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delayed raising this matter for five months. Samsung’s request to add Glimpse should be denied.

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Samsung’s excuses for delay ring hollow. For example, Samsung’s claim that, “[a]t the

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end of November 2011, Samsung [first] discovered a program called Glimpse, developed by

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Cliff Forlines” (Mot. at 10), is false in light of the August 2011 deposition. Samsung further

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concedes that it delayed contacting Mr. Forlines until early October, nearly two months after the

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August deposition. (Id.) While Samsung then alleges that it “did not identify Glimpse as

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invalidating prior art until November 29, 2011,” this is almost two more months after it contacted

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Mr. Forlines. (Id.) Samsung then admittedly waited another two months to install a functional

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version of Glimpse. (Id.) Samsung’s actions do not show diligence, but the opposite.

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Nor does the Court’s December 2, 2011 preliminary injunction ruling justify Samsung’s

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lack of diligence. Samsung does not explain why it waited nearly two more months after that

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ruling to seek leave to supplement its contentions. This Court has denied motions to amend based

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on comparable delays. See, e.g., Oracle, 2011 U.S. Dist. LEXIS 87251, at *12-13 (denying

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motion to supplement where Defendant waited one month after claim construction to request

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leave to move to supplement invalidity contentions, then waited another month to move).

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D.

Samsung Also Could Have Raised Its Invalidity Theories Concerning
Cirque GlidePoint (Chart V-10) and the Synaptics Patent (Chart P-12)
Much Earlier.

Samsung indisputably knew of the potential relevance of Cirque touchpads by October 7.

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This is because it included a Cirque patent in its initial Invalidity Contentions. Yet Samsung

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waited three weeks after serving its Invalidity Contentions to issue a document subpoena (without

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a deposition notice) on Cirque. (Hung Decl. Ex. F.) When the documents arrived, Samsung

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waited another three weeks to issue a deposition subpoena on Cirque for a deposition that took

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place on January 19, 2012. (Hung Decl. Exs. G, H.)

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Samsung admits it was aware of the potential relevance of the exact Synaptics patent it
now seeks to cite in its supplemental Invalidity Contentions on October 7. (Motion at 13.)

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Yet Samsung waited a full two months to subpoena Synaptics on December 7 for a deposition on

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January 19, 2012. (Hung Decl. Exs. I, J.)

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Having known of the potential relevance of both Cirque and Synaptics by October 7,

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2011, Samsung has no excuse for its long delays in pursuing related nonparty discovery.

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Samsung failed to take nonparty depositions between October 7 and late January—discovery that

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it now claims was necessary to supplement its Invalidity Contentions. As this Court has ruled, a

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party’s own delays in seeking non-party discovery do not establish diligence. See, e.g., Network

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Appliance Inc. v. Sun Microsystems Inc., No. C-07-06053 EDL, 2009 U.S. Dist. LEXIS 83090,

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at *8-11 (N.D. Cal. Aug. 31, 2009) (denying motion for leave to amend infringement contentions

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given delay in seeking non-party discovery).

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II.

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Where, as here, the moving party cannot show diligence, a court need not consider the

GRANTING SAMSUNG’S MOTION WOULD PREJUDICE APPLE.

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prejudice to the non-moving party. O2 Micro Int’l, 467 F.3d at 1368; Genentech, 2011 U.S. Dist.

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LEXIS 108127, at *4. If the Court chooses to reach this question, however, Samsung’s late

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supplementation is prejudicial. Apple analyzed its claim construction positions, completed its

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claim construction briefing, and then presented these arguments at the January 20, 2012 hearing

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without the benefit of Samsung’s full positions on invalidity.

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Samsung’s purported “notice” to Apple does not eliminate this prejudice. For the

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Glimpse and Cirque references, Samsung did not signal its intent to amend its Invalidity

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Contentions to add them until January 5—after claim construction briefing had concluded.

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Samsung also did not raise the Synaptics reference until January 24, after the Markman hearing.

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Nor did Samsung provide sufficient notice to avoid prejudice relating to its addition of

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Mac OS X 10.0 and SuperClock. Although Samsung referred to these references in its

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November 10 letter, that letter also addressed six other prior art references that Samsung has since

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dropped. None of Samsung’s correspondence during this period provided invalidity charts

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sufficient to satisfy Patent Local Rule 3-6. Apple was thus forced to guess a) which of the 8 (and

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later 18) references Samsung actually considered relevant; b) which of the references Samsung

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actually would move to include; and c) how Samsung actually intended to apply those references
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in its invalidity charts. Samsung, by contrast, had the full benefit of its proposed invalidity

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positions and prepared its claim construction positions accordingly.

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Samsung’s approach is exactly what the Patent Local Rules are meant to prohibit. The

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Patent Local Rules exist to ensure patent cases are litigated in a fair and orderly fashion and to

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give parties adequate information with which to litigate their cases. See IXYS Corp. v. Advanced

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Power Tech., Inc., No. C-02-03942 MHP, 2004 U.S. Dist. LEXIS 10934, at *8 (N.D. Cal.

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June 16, 2004). Samsung’s delays in seeking amendment of its Invalidity Contentions deprived

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Apple of critical information during the claim construction process. This lack of diligence should

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not be rewarded.

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CONCLUSION
Samsung knew about two of the proposed five new references as early as October, and it

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believed by early November that it had good cause to seek supplementation. As for the other

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three, Samsung knew that they might be relevant by August or October, but waited for months to

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seek related nonparty discovery. This does not demonstrate diligence, and Samsung’s motion

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should be denied.

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Dated: February 9, 2012

MORRISON & FOERSTER LLP

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By:

/s/ Richard S.J. Hung
RICHARD S.J. HUNG
Attorneys for Plaintiff
APPLE INC.

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