Motorola Mobility, Inc. v. Apple, Inc.

Filing 162

NOTICE by Apple, Inc. Defendant and Counterclaim-Plaintiff Apple Inc.'s Response to the Court's October 24, 2011 Order and Notice of Filing of Motorola's May 13, 2011 Infringement Contentions (Attachments: # 1 Exhibit Motorola's Preliminary Infringement Contentions, # 2 Exhibit A - Motorola's Preliminary Infringement Contentions, # 3 Exhibit B - Motorola's Preliminary Infringement Contentions, # 4 Exhibit C - Motorola's Preliminary Infringement Contentions, # 5 Exhibit D - Motorola's Preliminary Infringement Contentions, # 6 Exhibit E - Motorola's Preliminary Infringement Contentions, # 7 Exhibit F - Motorola's Preliminary Infringement Contentions)(Pace, Christopher)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO.: 1:10-CV-23580-UU

MOTOROLA MOBILITY, INC.,
Plaintiff,
v.
APPLE INC.,
Defendant.

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

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DEFENDANT AND COUNTERCLAIM-PLAINTIFF APPLE INC.’S RESPONSE TO
THE COURT’S OCTOBER 24, 2011 ORDER AND NOTICE OF FILING OF
MOTOROLA’S MAY 18, 2011 INFRINGEMENT CONTENTIONS

In compliance with the Court’s October 24, 2011 Order (D.E. 157), Defendant and
Counterclaim-Plaintiff Apple, Inc. (“Apple”) today filed under seal a copy of its infringement
contentions, which were served on May 18, 2011 in accordance with the agreement of the parties
and this Court’s subsequent June 1, 2011 Order. 1
Apple has briefly reviewed Motorola’s submission of today’s date, which seeks to
supplement Motorola’s May 18, 2011 infringement contentions. Motorola’s submission is not in
compliance with the Court’s October 24, 2011 Order, nor does it show “good cause” why
Motorola should be permitted to supplement its contentions at this time. See Fed. R. Civ. P.
16(b)(4) (“A schedule may be modified only for good cause and with the judge's consent”).
Instead, Motorola unilaterally filed its amended infringement contentions without the Court’s
consent. Apple, therefore, intends to file a motion to strike the submission.2
The Court-ordered deadline for infringement contentions, which does not provide for
supplementation, passed almost five months ago, on June 1, 2011. See D.E. 88, Order on
Motion to Modify Scheduling Order and Modified Scheduling Order. Motorola failed to
supplement its infringement contentions by that Court-ordered deadline, and it would prejudice
Apple to allow Motorola to add new products and infringement theories to the case now,
especially as the parties’ claim construction disputes have been fully briefed and a Markman
hearing has already been held.

1

The parties filed a joint motion to extend the case schedule on April 25, 2011. See D.E. 77.
While awaiting the Court’s ruling, the parties agreed to exchange infringement contentions on
May 18, 2011. When the Court granted the joint motion (see D.E. 88), June 1, 2011 became the
operative deadline for infringement contentions, but both parties chose to stand on their May 18,
2011 infringement contentions and did not supplement those disclosures on June 1, 2011.

2

Motorola’s May 18, 2011 infringement contentions are attached as Exhibit 1.

1

Pursuant to Federal Rule of Civil Procedure 16(b)(4), a showing of “good cause” is
required to modify the Court’s scheduling order. Further, the Patent Local Rules of various
jurisdictions also require a party requesting leave to supplement infringement contentions to
show “good cause,” which the Federal Circuit has stated requires a showing that the party was
diligent in amending its contentions. See O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467
F.3d 1355, 1366 (Fed. Cir. 2006).3 Otherwise, as one court cautioned, “[p]arties would be
encouraged to adopt a ‘rolling’ approach to infringement and invalidity contentions in the hope
of hiding their true intentions until later in a case.” Nike, Inc. v. Adidas Am. Inc., 479 F. Supp.
2d 664, 670 (E.D. Tex. 2007).
There is no good cause for Motorola’s supplementation, as Motorola cannot possibly
show diligence in seeking discovery in this case, nor has it offered any explanation for its lack
thereof. At the Markman hearing, Motorola implied that it did not have access to sufficient
information to provide its final infringement contentions by the Court’s deadline. See Markman
Hrg. Tr at 748:8-13. Contrary to Motorola’s representation, however, Motorola had access to an
abundant amount of Apple confidential information relevant to the issues in this case before the
jointly agreed deadline.4
Motorola filed this suit on October 6, 2010, and served its only set of document requests
3

The court in O2 Micro analyzed the patent local rules for the Northern District of California.
467 F.3d at 1362. Although the Southern District of Florida has not adopted patent local rules, at
least one Southern District of Florida court found “the local patent rules of these other districts to
provide instructive insight into identifying proper topics of discovery unique to a patent suit, and
suggesting the correct sequencing of such discovery.” Suncast Techs., LLC v. Patrician Prods.,
Inc., Case No. 07-80414-CIV, 2008 U.S. Dist. LEXIS 5072 at *27-28 (S.D. Fla. Jan. 17, 2008).
4

Motorola also suggests that Apple characterized its infringement contentions as “preliminary”
and indicated that Apple would supplement its contentions as additional discovery becomes
available. The Court’s Order setting the deadline for infringement contentions, however, does
not provide for supplementation. It unambiguously states that the deadline for infringement
contentions is June 1, 2011. Moreover, Apple has not sought to supplement its contentions.

2

on December 29, 2010. Apple timely responded to Motorola’s requests on January 31, 2011.
On March 23, 2011, the parties entered into a cross-use agreement, whereby documents
produced in any action currently pending between Apple and Motorola could be used as if the
documents had been exchanged in this proceeding. See D.E. 69, Joint Protective Order at ¶ 1.
The parties agreed that allowing cross-use between cases would be the most efficient use of
resources, given the overlap of accused products and technical issues between the various
litigations. By May 18, 2011, Apple had already produced over 8,000,000 pages of documents
to Motorola across the pending litigations.
With knowledge of the cross-use agreement and the vast volume of documents produced
in the pending litigations, on April 25, 2011, the parties jointly agreed to exchange “element-byelement infringement contentions” by June 1, 2011. See D.E. 77, Joint Motion for Setting of
Contention Deadlines and for Extending Claim Construction Briefing Deadlines. Thereafter, the
parties continued to produce documents relevant to this case. Motorola, therefore, had a
tremendous amount of discovery from Apple from which it could prepare infringement
contentions before the Court-ordered deadline.
Moreover, even if the voluminous material produced by Apple prior to June 1 was
insufficient, Motorola cannot show diligence in seeking any additional discovery in this case.
Indeed, it appears that Motorola did not even review Apple’s document production until August
17, 2011. Only then—over seven months after Motorola served its discovery requests and over
two months after the Court’s deadline for serving infringement contentions—did Motorola first
complain about alleged deficiencies in Apple’s production.5 In fact, Motorola did not take a

5

When Apple promptly responded that the cross-use agreement allowed the parties to rely on
materials produced in other actions, however, Motorola did not press the issue.

3

single deposition relating to its patents or the Apple accused products before the Court’s June 1,
2011 deadline and did not serve its Rule 30(b)(6) deposition notice until the end of July. Simply
put, Motorola failed to diligently take discovery prior to the Court-ordered deadline of June 1,
2011.
Even if Motorola could demonstrate the requisite diligence (which it cannot),
supplementation of Motorola’s infringement contentions at this time would prejudice Apple and
create great inefficiencies for the Court. The parties jointly proposed that the Court enter a
deadline for infringement contentions “[t]o streamline the claim construction process in this
case.” See D.E. 77, Joint Motion for Setting of Contention Deadlines and for Extending Claim
Construction Briefing Deadlines. As noted above, the Markman process in this case is nearly
complete. Apple has relied upon Motorola’s May 18, 2011 infringement contentions to prepare
its invalidity contentions, formulate its non-infringement defenses, and advance its claim
construction positions. Were Motorola to revise its infringement contentions now, Apple likely
would be required to revise its defensive strategies to cure any potential prejudice, resulting in
much wasted effort to date on the part of the Court and the parties.
Accordingly, Apple respectfully requests that the Court reject Motorola’s attempt to
supplement its infringement contentions in violation of the Court-ordered June 1, 2011 deadline.

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Dated: October 28, 2011

Respectfully submitted,
_/s/ Christopher R. J. Pace ____________
Christopher R. J. Pace
[e-mail]
Edward Soto
WEIL, GOTSHAL & MANGES LLP
1395 Brickell Avenue, Suite 1200
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]
Attorneys for Apple Inc.

Of Counsel:
Matthew D. Powers
[e-mail]
Steven Cherensky
[e-mail]
Tensegrity Law Group LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: 650-802-6001
Jill J. Ho
[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]
Robert D. Fram
[e-mail]
Christine Saunders Haskett
[e-mail]
Samuel F. Ernst
[e-mail]
COVINGTON & BURLING LLP
One Front Street
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]

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CERTIFICATE OF SERVICE
I hereby certify that on October 28, 2011, I filed the foregoing document with the Clerk
of the Court. I also certify that the foregoing document is being served this day on all counsel of
record identified on the attached Service List via email and CM/ECF.

/s/ Christopher R. J. Pace
Christopher R.J. Pace (Fla. Bar No. 0721166)

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SERVICE LIST
Case No. 1:10cv023580-Civ-UU

Edward M. Mullins
Fla. Bar No. 863920
[e-mail]
ASTIGARRAGA DAVIS MULLINS & GROSSMAN, P.A.
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]
Attorneys for Motorola Mobility, Inc.
Electronically served via CM/ECF and via email
Of Counsel:
Charles K. Verhoeven
David A. Perlson
Anthony Pastor
QUINN EMANUEL URQUHART & SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 93111
[phone]
Raymond N. Nimrod
Edward J. DeFranco
QUINN EMANUEL URQUHART & SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
[phone]
David A. Nelson
QUINN EMANUEL URQUHART & SULLIVAN, LLP
500 West Madison Street, Suite 2450
Chicago, IL 60661
[phone]
[e-mail]
Attorneys for Motorola Mobility, Inc.
Electronically served via email

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