Motorola Mobility, Inc. v. Apple, Inc.

Filing 165

NOTICE by Motorola Mobility, Inc. Motorola's Reply to Apple's Response to Motorola's Infringement Contentions (Mullins, Edward)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
Case No. 1:10-23580-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’S REPLY TO APPLE’S
RESPONSE TO MOTOROLA’S INFRINGEMENT CONTENTIONS
In the late hours of Friday, October 28, 2011, Apple filed an unauthorized “response” to
Motorola’s Court-ordered submission regarding infringement contentions. Apple’s response is
replete with misrepresentations of the record and revisionist history. It warrants a brief reply.
First, as detailed in Motorola’s Notice, Apple’s own infringement contentions, served in
advance of the June 1 deadline, were explicitly called “preliminary” and do not reflect any intent
that the contentions would be “final” in any way. Rather, Apple explicitly (1) reserved the right

Case No. 1:10-23580-Civ-UU

to amend, supplement, and correct them “as additional information becomes available to Apple
during the course of its discovery and investigation,” (2) stated that “Apple may identify
additional claims that are infringed and additional accused products,” and (3) “expressly
reserve[d] the rights 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 D.E. 160 Ex. 2 at 3, 5.
In a footnote, Apple suggests that the parties reserved the right to supplement the
contentions solely so that they could modify them between May 18 and June 1. D.E. 162 at 1
n.1. But that does not comport with the record. Both parties specifically reserved the right to
supplement these “preliminary” contentions throughout discovery and after claim construction,
not just during the short period between May 18 and June 1. Indeed, no deposition or other
meaningful discovery was scheduled for that two-week period. The fact that Apple did not
supplement them to be “final” during that period signifies nothing beyond Apple’s
acknowledgement, as shown in its contentions, that there was no need to do so.
Second, Apple failed for more than five months to notify Motorola that Apple considered
its or Motorola’s infringement contentions to be final. If Apple after the June 1 order did
consider these contentions to be final, the proper course would have been to notify Motorola of
this position. But between May 18 and October 19—the third day of the claim construction
hearing—Apple said nothing, despite the parties’ frequent meet-and-confer discussions
concerning scheduling, deadlines, discovery, claim construction, or any other matter.
Meanwhile, Motorola was operating under the assumption that Apple’s infringement contentions
were preliminary and that Apple and Motorola each had the right to amend those contentions, a
right expressly reserved in both parties' May 18 contentions. Instead, Apple first raised its
argument in classic “gotcha” fashion during the Markman hearing.
This delay was highly prejudicial to Motorola, since Motorola had been proceeding since
May 18, 2011 under the assumption that both parties’ infringement contentions were preliminary
as both said they were, and given there was no Order to the contrary. Needless to say, had
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Case No. 1:10-23580-Civ-UU

Motorola known of Apple’s position as to the finality of the contentions, Motorola would have
taken a different course of action—for instance, massively accelerating its discovery efforts in
order to collect all evidence necessary to “finalize” its infringement contentions. Moreover, if
the contentions were locked in on June 1, Motorola would be unable to pursue newly released
products and services such as the iPhone 4s and iCloud, both released by Apple months after
June 1, another fact Apple ignores in its Response. Apple, by contrast, suffers no prejudice if
Motorola is allowed to supplement its infringement contentions, since Apple knew all along that
Motorola had explicitly reserved the right to supplement its May 18, 2011 contentions through
the course of discovery.
Third, Apple’s argument that Motorola has not shown “good cause” to supplement its
infringement contentions or change the schedule, is a non sequitur because the June 1 date was
not a deadline for “final” infringement contentions in the first place. Thus, there was no date that
Motorola needs to show good cause to change.1 Apple’s reference to local patent rules in other
courts also is irrelevant. No such rules have been adopted in this district, nor are they taken into
consideration in scheduling. It would be grossly unfair and prejudicial to hold Motorola to
patent local rules in other courts with no notice, months into this litigation.
Fourth, Apple argues that Motorola has not been “diligent” in pursuing discovery in this
case, suggesting that documents cross-produced from other litigation should be adequate for
Motorola to finalize its infringement contentions in the present matter. To the contrary, the
cross-produced documents do not relate to the present case, and Motorola has demanded that
Apple produce additional documents relevant to this specific case. Without such documents,
Motorola cannot properly complete its infringement contentions and theories. Nor has Apple
1

Even if Apple were somehow correct and the June 1 deadline was for final
contentions, then Motorola has “good cause” for supplementing its contentions by showing that
it reasonably relied upon Apple’s representations that its prior submissions were only
preliminary and that is what the parties intended, and additionally through the addition of the
iPhone 4s and iCloud as accused products and services, both of which were released months after
June 1.

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Case No. 1:10-23580-Civ-UU
offered 30(b)(6) witnesses to testify on Apple’s behalf, despite the fact that Motorola’s 30(b)(6)
deposition notice has been outstanding for several months.

Despite complaining about

Motorola’s ostensible lack of diligence, Apple’s own lack of diligence in producing its
documents and witnesses has contributed to Motorola’s inability to complete its infringement
contentions.

Apple now seeks to benefit from its own failure to produce documents and

witnesses, and hold Motorola’s contentions as “final” when no such deadline has ever been set
by this Court, or intended by the parties.
Dated: October 31, 2011

Respectfully submitted,
/s/ Edward M. Mullins
Edward M. Mullins (Fla. Bar No. 863920)
[e-mail]
Douglas J. Giuliano (Fla. Bar No. 15282)
[e-mail]
ASTIGARRAGA DAVIS MULLINS & GROSSMAN,
P.A.
701 Brickell Avenue, 16th Floor
Miami, Florida 33131
Tel.: [phone] / Fax: [phone]
Charles K. Verhoeven*
[e-mail]
David A. Perlson*
[e-mail]
Anthony Pastor*
[e-mail]
QUINN EMANUEL URQUHART & SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Tel.: [phone] / Fax: [phone]
Edward J. DeFranco*
[e-mail]
Raymond N. Nimrod*
[e-mail]
QUINN EMANUEL URQUHART & SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
Tel.: [phone] / Fax: [phone]

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Case No. 1:10-23580-Civ-UU

David A. Nelson*
[e-mail]
QUINN EMANUEL URQUHART & SULLIVAN, LLP
500 West Madison Street, Suite 2450
Chicago, Illinois 60661
Tel.: [phone] / Fax: [phone]
*Admitted pro hac vice
Counsel for Plaintiff/Counterclaim-Defendant Motorola
Solutions, Inc. and Motorola Mobility, Inc.

CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on October 31, 2011, I electronically filed the foregoing
document with the Clerk of the Court using the CM/ECF filing system. I also certify that the
foregoing document is being served this date on all counsel of record or pro se parties on the
Service List below in the manner specified, either via transmission of Notices of Electronic
Filing generated by the CM/ECF system or; in some other authorized manner for those counsel
or parties who are not authorized to receive electronically Notices of Electronic Filing.

/s/ Edward M. Mullins
Edward M. Mullins (Fla. Bar No. 863920)

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Case No. 1:10-23580-Civ-UU
SERVICE LIST
Motorola Mobility, Inc. v. Apple, Inc.
Case No.: 1:10-23580-Civ-UU
United States District Court, Southern District of Florida
Samuel F. Ernst*
[e-mail]
Christine Saunders Haskett*
[e-mail]
Robert D. Fram*
[e-mail]
Chris Martiniak*
[e-mail]
Winslow B. Taub*
[e-mail]
Covington & Burling LLP
One Front Street
San Francisco, California 94111-5356
Tel.: [phone] / Fax: [phone]

Christopher R.J. Pace
[e-mail]
Edward Soto
[e-mail]
Weil, Gotshal & Manges LLP
1395 Brickell Avenue, Suite 1200
Miami, Florida 33131
Tel.: [phone] / Fax: [phone]
Nathan A. Greenblatt*
[e-mail]
Jill J. Ho*
[e-mail]
Jacqueline T. Harlow*
[e-mail]
Anne M. Cappella*
[e-mail]
Brian C. Chang*
[e-mail]
Weil, Gotshal & Manges, LLP
201 Redwood Shores Parkway
Redwood Shores, California 94065-1134
Tel.: [phone] / Fax: [phone]

Robert T. Haslam*
[e-mail]
Covington & Burling LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, California 94065
Tel.: [phone] / Fax: [phone]

Jenny C. Wu*
[e-mail]
Weil, Gotshal & Manges LLP
767 Fifth Avenue
New York, New York 10153
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Matthew D. Powers*
[e-mail]
Steven S. Cherensky*
[e-mail]
Tensegrity Law Group LLP
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Redwood Shores, California
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Mark G. Davis*
[e-mail]
Weil, Gotshal & Manges LLP
1300 Eye Street, NW, Suite 900
Washington, DC 20005
Tel.: [phone] / Fax: [phone]

*Admitted pro hac vice
Counsel for Defendant/Counterclaim
Plaintiff Apple Inc.
Electronically served via CM/ECF

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