Motorola Mobility, Inc. v. Apple, Inc.

Filing 160

NOTICE by Motorola Mobility, Inc. of Filing Supplemental Infringement Contentions (Attachments: # 1 Exhibit Supplemental Infringement Contentions, # 2 Exhibit 1-A, # 3 Exhibit 1-B, # 4 Exhibit 1-C, # 5 Exhibit 1-D, # 6 Exhibit 1-E, # 7 Exhibit 1-F, # 8 Exhibit 2, # 9 Exhibit 3)(Giuliano, Douglas)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
Case No. 1:10cv023580-Civ-UU

MOTOROLA MOBILITY, INC.,
Plaintiff,
v.

JURY TRIAL DEMANDED

APPLE INC.,
Defendant.

APPLE INC.,
Counterclaim Plaintiff,
v.
MOTOROLA, INC. and
MOTOROLA MOBILITY, INC.,
Counterclaim Defendants.

MOTOROLA MOBILITY’S NOTICE
CONCERNING OCTOBER 28, 2011 INFRINGEMENT CONTENTIONS

PUBLIC REDACTED VERSION

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1.

I.

MOTOROLA’S SUPPLEMENTAL INFRINGEMENT CONTENTIONS .
Motorola files this Notice and the attached infringement contentions in accordance with

the Court’s October 25, 2011 Order. (D.E. 157). These infringement contentions, attached
hereto as Exhibit 1, have been supplemented from the preliminary infringement contentions
Motorola served on June 1, 2011. These infringement contentions add, for example, citations to
Apple confidential documents that were not available to Motorola when it served its preliminary
infringement contentions based on public information. Also, Motorola has added reference to
and evidence of accused products, such as the Apple iPhone 4S and iCloud, that were released
after the June 1 infringement contentions.
The attached infringement contentions are not meant to be “final” contentions, and
Motorola respectfully suggests that they should not be. Not only has the Court not issued a claim
construction ruling yet, but Apple and Motorola are still in the midst of fact discovery. Apple
has not yet provided a full production of documents responsive to Motorola’s Requests for
Production concerning the accused products. Nor has Apple provided any witness(es)
responsive to Motorola’s Rule 30(b)(6) Notice concerning the accused Apple systems and
products. Apple too will almost certainly seek additional discovery from Motorola. Indeed, fact
discovery does not end until January 16, 2012.
II.

THE PARTIES’ JUNE 1 INFRINGEMENT CONTENTIONS WERE NOT
“FINAL CONTENTIONS.”
During the third day of the Markman hearing, October 19, 2011, Apple stated the parties

could not supplement their June 1 2011 infringement contentions due to the Court’s prior order
concerning the date for exchanging infringement contentions. Specifically, Apple stated: “[t]his
Court set a deadline for infringement contentions that has passed, and there was nothing in that
Order about them being preliminary or about anyone being able to supplement them. So there
was a court-ordered deadline that has already passed.” (10/19/11 Markman Tr. at 747:17-21.)

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2.

As further detailed below, this representation was incorrect.1 The June 1 infringement
contentions were intended to be “preliminary,” not final contentions. The parties’ intent to
provide “preliminary” infringement contentions is consistent with the concept that each side was
to be provided preliminary guidance as to what the opposing party generally was contending on
infringement for purposes of the Markman hearing. And, each party did so.
A.

Nothing in the Parties’ Submissions or The Court’s Orders Indicate
Infringement Contentions, Would Be “Final” Infringement Contentions.

On December 29, 2010, the parties jointly filed a Rule 26(f) Scheduling Report in which
Apple and Motorola each submitted a proposed deadline for “Initial Infringement Contentions
And Asserted Claims”; Motorola’s proposal was February 25, 2011, and Apple’s was March 18,
2011. (D.E. 27). There were no proposed dates for “Final Contentions.” (See id.). On February
2, the Court entered the Scheduling Order, which did not contain any date or deadline for
infringement or invalidity contentions. (See D.E. 45).
On April 25, the parties jointly filed a motion regarding procedure for claim construction
related deadlines. (D.E. 77). This motion proposed a deadline of June 1 for “infringement
contentions.” (See id.). Again, there was no mention that those infringement contentions would
be final in the proposed order, nor was there any discussion to that effect between the parties in
connection with the joint motion. On May 18, the parties exchanged infringement contentions
even though the Court had not signed an Order agreeing to the proposed schedule in the Joint
Motion. On June 1, the Court entered the Joint Order submitted on April 25, with no change to
the parties’ proposals. (See D.E. 88).

1

On October 24, 2011 Motorola requested that Apple agree to jointly approach the
Court to correct the record on this issue. Apple did not respond to Defendants’ request.

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3.

B.

Both Apple and Motorola Indicate Their June 1, 2011 Infringement
Contentions Were “Preliminary,” Not “Final” Contentions.

Apple, like Motorola, indicated in its June 1 infringement contentions that they were
“preliminary” and could be supplemented, like any other interrogatory response. Apple
specifically raised its need for further discovery and the lack of a claim construction ruling as a
basis why it reserved its right to supplement:
Apple also objects to this contention interrogatory as premature because, among
other things, Counterclaim-Defendants have not yet produced documents or
information about its products used to infringe the Apple Asserted Patents. Apple
expressly reserves the right to amend, supplement, and/or correct its response to
this interrogatory as additional information becomes available to Apple during the
course of its discovery and investigation, in response to any claim construction by
the Court, or in response to Counterclaim-Defendants’ responses to Apple’s
interrogatories (or any supplement thereto).
(See Ex. 2 Apple’s 5/18 Supplemental Response at 3 (emphasis added)). Apple also stated that,
due to this lack of discovery and claim construction ruling, its infringement contentions were
“preliminary”:
These contentions are preliminary and based at least in part on publicly available
information. Counterclaim-Defendants have not yet provided any discovery in
this case and Apple’s investigation of Defendants’ infringement is ongoing.
Accordingly, Apple may identify additional claims that are infringed and
additional accused products, including products that Defendants may introduce in
the future. Apple expressly reserves the right to amend its response to this
Interrogatory to include such products. Also, these contentions are made based on
information ascertained to date, and Apple expressly reserves the right to modify
or amend the contentions contained herein based on the Court’s claim
constructions or to reflect additional information that becomes available to Apple
as discovery proceeds.
(See id. at 5 (emphasis added)).
Similarly, Motorola’s May 18 infringement contentions were titled “Preliminary
Infringement Contentions.” Like Apple, Motorola reserved its right to supplement because
discovery was ongoing and claim construction was not complete:

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4.

Motorola’s investigation is ongoing, and discovery and claim construction are not
yet complete. Motorola reserves the right to amend or supplement the asserted
claims, accused Apple products, and/or preliminary infringement contentions set
forth below as additional information becomes available.
(See Ex. 3, Motorola’s 5/18 Preliminary Infringement Contentions at 1 (emphasis added)).
Apple raised no issue as to these statements, which were consistent with the parties’ intent and
Apple’s own "preliminary" infringement contentions.
It is also clear that both parties intended and believed that their respective infringement
contentions satisfied the Court’s June 1 infringement contention deadline. As June 1
approached, neither Motorola nor Apple supplemented its infringement contentions, but instead,
both parties continued to rely on their prior submissions which each had labeled “preliminary.”
Given the above, it is untenable for Apple to assert that the parties understood that the
prior infringement contentions were final and that no further supplementation would be
appropriate.2 Rather, Apple’s interrogatory response correctly stated that supplementation to
account for discovery and claim construction is appropriate and necessary in patent cases.

Dated: October 28, 2011

Respectfully submitted,
MOTOROLA SOLUTIONS, INC. (f/k/a
MOTOROLA, INC.) AND MOTOROLA
MOBILITY, INC.
By:

/s/ Anthony Pastor
Anthony Pastor
Charles K. Verhoeven
David Perlson
Anthony Pastor
2

During the Markman hearing, Apple’s counsel also represented that Motorola only
accuses Apple’s Enterprise Application Delivery System of infringement the ‘737 patent. (See
id.). This too was incorrect. Claim 9 of the ‘737 patent claims a “a portable communication
device,” and thus Motorola accused Apple products such as iPhones, iPads, and laptop
computers. (See Ex. 3 at 2). While Motorola did cite to public documents referencing how the
accused functionality of the iPhone, iPad, etc., interacts with Apple’s Enterprise Application
system, Motorola’s Infringement Contentions were in no way limited to that system.
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5.

QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
Edward M. Mullins (863920)
Astigarraga Davis Mullins & Grossman, P.A.
701 Brickell Avenue, 16th Floor
Miami, Florida 33131
Phone: [phone]
Fax: [phone]
Email: [e-mail]
Edward J. DeFranco
Raymond Nimrod
Quinn Emanuel Urquhart & Sullivan, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
Phone: [phone]
Fax: [phone]
Email: [e-mail]

David A. Nelson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
500 West Madison St., Ste. 2450
Chicago, IL 60661
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys for Plaintiff and CounterclaimDefendant Motorola Solutions, Inc. and
Motorola Mobility, Inc.

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6.

CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on October 28, 2011, I served the foregoing document via
electronic mail on all counsel of record identified on the attached Service List.
/s/ Matthew O. Korhonen
Matthew O. Korhonen

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7.

SERVICE LIST
Motorola Mobility, Inc. versus Apple Inc.
Case No. 1:10cv023580-Civ-UU
United States District Court, Southern District of Florida
Christopher R.J. Pace
[e-mail]
Weil, Gotshal & Manges LLP
1395 Brickell Avenue, Suite 1200
Miami, Florida 33131
Tel.: [phone] / Fax: [phone]
Attorneys for Apple, Inc.
Electronically served via e-mail
Of Counsel:
Matthew D. Powers
[e-mail]
Steven S. Cherensky
[e-mail]
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Mark G. Davis
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1300 Eye Street, N.W., Suite 900
Washington, DC 20005
Telephone: [phone]
Facsimile: [phone]
Robert T. Haslam
[e-mail]
COVINGTON & BURLING LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

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1

Robert D. Fram
[e-mail]
Christine Saunders Haskett
[e-mail]
COVINGTON & BURLING LLP
One Front Street
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Attorneys for Apple, Inc.
Electronically served via e-mail

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