Motorola Mobility, Inc. v. Apple, Inc.

Filing 185

RESPONSE in Opposition re 178 MOTION to Strike Motorola's Supplemental Infringement Contentions filed by Motorola Mobility, Inc.. (Attachments: # 1 Affidavit, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11, # 13 Exhibit 12, # 14 Exhibit 13, # 15 Exhibit 14)(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.

DEFENDANT MOTOROLA MOBILITY’S OPPOSITION TO APPLE’S MOTION TO
STRIKE MOTOROLA’S SUPPLEMENTAL INFRINGEMENT CONTENTIONS AND
ACCOMPANYING MEMORANDUM OF LAW

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TABLE OF CONTENTS
Page
ARGUMENT ...................................................................................................................................3
I.

THE JUNE 1 INFRINGEMENT CONTENTION DEADLINE IS NOT “FINAL.” ..........3
A.

The Court’s Order Does Not Indicate a Date for “Final Infringement
Contentions.” ...........................................................................................................3

B.

Apple’s Own Conduct in this Case Since June 1 Reveals That the
Deadline Never Was Intended To Be Final. ............................................................3
1.

Apple’s Own May 18 Infringement Contention Reserved the Right
to Supplement After Claim Construction. ...................................................4

2.

Apple’s June 20 Invalidity Contentions Were Similarly
“Provisional.” ...............................................................................................5

C.

Apple's Conduct in Parallel Wisconsin Litigation Shows That a Deadline
For “Infringement Contentions” Was Not a Deadline For “Final
Infringement Contentions.”......................................................................................7

D.

A "Final" June 1 Deadline Would Contradict the Logic of the Discovery
Schedule. ................................................................................................................10

II.

APPLE SUFFERS NO PREJUDICE IF MOTOROLA'S SUPPLEMENTAL
INFRINGEMENT CONTENTIONS ARE ALLOWED, BUT MOTOROLA
WILL SUFFER SUBSTANTIAL PREJUDICE IF THEY ARE STRICKEN. .................12

III.

APPLE’S “GOOD CAUSE” ARGUMENT IS WITHOUT MERIT. ...............................14

IV.

APPLE REFUSES TO PRODUCE DOCUMENTS AND PROVIDE
WITNESSES ON THE NEW PRODUCTS NAMED IN MOTOROLA'S
SUPPLEMENTAL INFRINGEMENT CONTENTIONS. ...............................................16

CONCLUSION ..............................................................................................................................17

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i

Apple’s motion to strike (D.E. 178) Motorola’s October 28 supplemental infringement
contentions (D.E. 160) is a cynical act of litigation “gotcha.” Ever since Apple and Motorola
exchanged preliminary infringement contentions in mid-May, Apple has known that Motorola
had reserved the right to supplement those contentions throughout discovery. Indeed, Apple
reserved that same right, showing that both parties intended the contentions to be preliminary.
But now, after five months of tacit approval of each party's ability to supplement
contentions, Apple suddenly complains. It points to the June 1 Court order requiring an
exchange of “infringement contentions,” and argues that this was a “final” deadline, past which
no supplementation could occur. Apple's abrupt switch is purely tactical. Apple complains not
because it has been prejudiced in some way—it has not—but because it believes it would gain a
tactical advantage by avoiding having certain new versions of some of its products brought into
this litigation.
Moreover, Apple itself is guilty of the same supposed sin—and further hypocrisy—in
parallel litigation in the Western District of Wisconsin involving these same parties. In that case,
the court likewise set an “infringement contentions” deadline of March 4, 2011 Yet, Apple in
that case used its expert reports—served more than six months after the “infringement
contentions” deadline, not to mention months after the claim construction hearing—to
supplement its contentions and to accuse eight additional Motorola products of infringing its
patents. Supplementation is a common procedure in a complex patent case absent special rules,
since the opposing party has ample time to prepare to respond to the infringement contentions
via its own expert reports or otherwise. See, e.g., BIAX Corp. v. NVIDIA Corp., slip op., 2011
WL 441470 at *5 (D. Colo., Feb. 8, 2011) (declining to strike infringement contentions served

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before discovery cutoff where Court's district lacked any local patent rules setting a different
deadline).
Apple is in no way prejudiced by Motorola supplementing its contentions here, since
ample time remains for a sophisticated party like Apple to investigate and craft responses to the
supplemental contentions. Indeed, the parties are currently in the process of negotiating
deposition schedules and supplements to both sides’ interrogatory responses and document
productions. And the parties have not yet even exchanged expert reports, which are not due for
more than two months, and which will give Apple an opportunity to fully address Motorola’s
supplemental infringement contentions served a month ago. In contrast, Motorola would face
significant prejudice if not allowed to supplement its infringement contentions, since it would be
unable to use many later-produced documents in support of its infringement case or accuse
products released after its initial infringement contentions (outside of filing a new lawsuit, which
would be inefficient).
Finally, Apple’s argument that Motorola has failed to show good cause for modifying a
scheduling order is a red herring. It assumes that Motorola wants to modify the court’s
scheduling order—which Motorola does not. The scheduling order nowhere sets a “final”
deadline for infringement contentions past which no supplements are allowed.

However, to the

extent that “good cause” need be shown, Motorola amply has satisfied the standard by showing
the parties’ intent and their conduct with respect to infringement contention, the lack of prejudice
to Apple, and the efficiency savings of not having a separate lawsuit to address Apple’s new
infringing products.
Apple’s motion to strike should be denied.

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ARGUMENT
I.

THE JUNE 1 INFRINGEMENT CONTENTION DEADLINE IS NOT “FINAL.”
A.

The Court’s Order Does Not Indicate a Date for “Final Infringement
Contentions.”

On April 25, 2011 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. 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 June 1, 2011 the Court entered the Joint Order
submitted on April 25, with no change to the parties’ proposals, thus making official the parties’
proposed June 1 deadline. See D.E. 88.
Apple argues that the June 1 deadline for “infringement contentions” is “final” based on
one reason: that the order, and the motion that led to it, lacks the word “preliminary” before
“infringement contentions.” But this argument defeats itself as the Order does not say “Final
Infringement Contentions,” either. It simply provides for “Infringement Contentions,” which
both parties provided.
B.

Apple’s Own Conduct in this Case Since June 1 Reveals That the Deadline
Never Was Intended To Be Final.

Until first raising the argument in late October, Apple never acted as if the June 1
infringement contentions deadline was a “final” deadline, but acted just the opposite. Apple’s
conduct is further proof that the June 1 deadline is not “final” and allows for supplementation.

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1.

Apple’s Own May 18 Infringement Contention Reserved the Right to
Supplement After Claim Construction.

On May 18, Apple served infringement contentions that Apple explicitly and repeatedly
stated were “preliminary” and could be supplemented, like any other interrogatory response.
Apple raised its need for further discovery to 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 D.E. 160 Ex. 2 at 3 (emphasis added). Apple also stated that, due to this lack of discovery,
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:
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.

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See D.E. 160 Ex. 3 at 1 (emphasis added). Apple raised no issue as to these statements in
Motorola’s response, which were consistent with the parties’ intent and Apple’s own
"preliminary" infringement contentions.
Apple disingenuously argues that in its contention responses it merely intended to reserve
the right to supplement its contentions only during the two weeks between May 18 and June 1.
D.E. 178 (Apple's Motion to Strike) at 2; D.E. 162 (Apple's Response to Motorola's Notice of
Filing Infringement Contentions) at 1 n.1. But in its interrogatory responses, Apple explicitly
reserved the right to “modify or amend the contentions contained herein based on the Court’s
claim constructions”—which would not occur until long after June 1. In addition, Apple
reserved the right to “modify or amend the contentions…as discovery proceeds,” a phrase not
limited to the two-week period between May 18 and June 1. That no discovery was scheduled
between May 18 and June 1, further shows Apple did not intend to reserve the right to
supplement through June 1 only. Apple’s attempt at revisionist history should be rejected.
2.

Apple’s June 20 Invalidity Contentions Were Similarly
“Provisional.”

The same June 1 Order that provided the date for “Infringement Contentions” provided a
June 20 date for “Invalidity Contentions.” Under Apple’s logic, since the “Infringement
Contentions” supposedly became “final” on June 1, Apple's invalidity contentions—which were
served on June 20, the same day as the invalidity contentions deadline—would be “final” too.
But, Apple's later-served invalidity contentions contained similar language regarding the
“provisional” nature of the contentions and reserved the right to supplement and amend. For
example, Apple's invalidity contentions state they are provisional and subject to revisions for
numerous reasons including the fact that discovery is in its “early stages” and claim construction
had not yet occurred:

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Apple reserves the right to amend these Invalidity Contentions. The information
herein and the accompanying documents that Apple produces are provisional and
subject to further revision as follows: Apple expressly reserves the right to amend
these disclosures and the associated document production should Motorola
provide any information that it failed to provide in its Infringement Contentions or
should Motorola amend its Infringement Contentions in any way. Further,
because discovery is still in the early stages, including discovery directed to third
parties, and because Apple has not yet completed its search for and analysis of
relevant prior art, Apple reserves the right to amend and/or supplement the
information provided herein, including identifying and relying upon additional
references, should Apple’s further search and its analysis yield additional
information or references. Apple reserves the right to revise its ultimate
contentions concerning the invalidity of the asserted claims, which may change
depending upon the Court’s construction of the asserted claims, any findings as to
the priority date of the asserted claims, and/or positions that Motorola or its expert
witness(es) may take concerning the level of ordinary skill in the art, claim
construction, infringement, and/or invalidity issues. (Declaration of John
Duchemin (Duchemin Decl.) Ex. 1 at 4)
See also id. at 2 ("Apple further reserves its right to amend or supplement these contentions in
light of the Court’s claim construction order(s) in this case or other proceedings involving the
patents-in-suit."); id. at 5 (reserving the right to supplement its invalidity charts to include any
prior art cited in the file history of the patents-in-suit or in the supplemental appendices
accompanying the invalidity contentions).
The fact that Apple's invalidity contentions included these explicit reservations of rights
when they were served the same day as the deadline further belies Apple's argument in its
motion that the similar reservations of rights in Apple's infringement contentions were only
meant to cover only the 13-day gap between May 18 and June 1. In addition, the fact that Apple
specifically reserved the right to add additional pieces of prior art contradicts its position that
Motorola cannot add subsequently discovered (or even later released) products or evidence to its
infringement contentions.

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C.

Apple's Conduct in Parallel Wisconsin Litigation Shows That a Deadline For
“Infringement Contentions” Was Not a Deadline For “Final Infringement
Contentions.”

On October 29, 2010, Apple initiated an action in Wisconsin alleging several Motorola
Android-based smartphones and tablets infringe three of its patents, and later filed an amended
complaint alleging infringement of twelve additional patents. The court entered a pretrial
scheduling order on December 21, 2010, that, as in this case, provided a date for “infringement
contentions,” there for March 4, 2011. Duchemin Decl. Ex. 2 (Case No. 3:10-cv-00662-bbc,
D.E. 27 (Preliminary Pretrial Conference Order) at 2. Just as here, the Wisconsin order does not
use the word “final,” nor does use the word “preliminary.” It simply sets a deadline for
“infringement contentions,” as in this case.
On March 4, according to the order as in this case, both parties served infringement
contentions. Both parties' contentions included the same type of reservation of rights as in this
case. For example, Apple stated that the contentions were “preliminary” and that Apple may add
“additional accused products”:
These disclosures are preliminary and based only on publicly available
information. Defendants Motorola, Inc. and Motorola Mobility, Inc. (collectively
“Motorola”) have not yet provided discovery as to its accused products and
Plaintiffs’ investigation of Motorola’s infringement is ongoing. Based on
discovery and Plaintiffs’ continued investigations, Plaintiffs may identify
additional claims that are infringed by Motorola and additional accused products,
including products that Motorola may introduce in the future. Accordingly,
Plaintiffs reserve their rights to amend these disclosures through interrogatory
responses and expert reports as discovery and their investigation proceeds. Also,
these disclosures are made based on information ascertained to date, and Plaintiffs
expressly reserve the right to modify or amend the disclosures contained herein
based on the Court’s claim constructions or to reflect additional information that
becomes available to Plaintiffs.
Duchemin Decl. Ex. 3 at 2 (emphases added). Motorola made the same reservation of rights. As
in this case, neither party objected to the other's reservation of the right to supplement its
preliminary infringement contentions.

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Consistent with its reservation of rights in Wisconsin, but inconsistent with its position as
against Motorola in this case, Apple has sought to add new accused products in Wisconsin. For
example, on May 24, 2011, two months after the court-set deadline for “infringement
contentions,” Apple noted that it might supplement its contentions to add two additional
smartphones, the Titanium and the XPRT. Duchemin Decl. Ex. 5 at 1 n.1 (“Apple reserves the
right to supplement this analysis and this list of accused products as discovery into these newly
announced products progresses.”).
Subsequently, on September 15, 2011, Apple submitted expert reports in the Wisconsin
case. The expert reports spelled out Apple’s current infringement contentions and identified the
accused products. Apple accused eight new products—the Droid 3, Droid X2, Milestone,
Photon, Spice, Titanium, Triumph, and XPRT—none of which were in the contentions served on
the March 4 “infringement contentions” deadline, meaning Apple effectively had supplemented
its infringement contentions. Ex. 6 at 12-13.
Apple's conduct makes clear that, throughout the course of this litigation, Apple has not
treated the June 1 deadline as “final”—at least not before Apple would benefit tactically from
suddenly treating the deadline as such. Apple cannot viably argue that it may supplement its
infringement contentions against Motorola’s products in Wisconsin after an “infringement
contentions” deadline, whereas Motorola may not supplement its infringement contentions
against Apple’s products in Florida past an identical “infringement contentions” deadline, both
of which were agreed to by the parties.
On November 10, counsel for Motorola asked Apple to explain its inconsistent position
that the “infringement contentions” in Florida would be “final” while those in Wisconsin are not.
In response, Apple’s counsel stated, “It is clear that, in Wisconsin, the practice is that the March

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4, 2011 date for infringement contentions is for preliminary contentions and final contentions are
contained in the expert reports,” whereas “[i]n contrast, the Court in Florida made clear that the
infringement contentions deadline was final in nature.” Ex. 7 at 11/11/2011 e-mail from Apple
counsel to Motorola counsel. Yet, neither order in either court said anything about the
infringement contentions being “preliminary” or “final.” The orders are virtually identical on
this issue. Motorola pointed this out to Apple and again asked for explanation of Apple’s
position. Id. at 11/14/2011 e-mail from Motorola counsel to Apple counsel. Apple had no
response.
In its November 11 email, Apple’s counsel also argued that it was not being inconsistent
because the expert reports containing the eight new accused products were served “long before
the close of fact discovery in Wisconsin.” Id. at Nov. 11 e-mail. Motorola pointed out to Apple
that this was a red herring that only reinforces Motorola’s point. Motorola’s supplemental
infringement contentions here, adding only two accused products, were served nearly three
months before the close of fact discovery. Id. at Nov. 14 e-mail from Motorola counsel to
Apple counsel. Apple ignored Motorola’s request for further explanation on this point as well.
This is because there is no legitimate explanation for Apple’s inconsistent positions.
Apple’s actions in Wisconsin are entirely inconsistent with Apple’s arguments here that
the “infringement contentions” deadline sets in stone both the contentions themselves and the list
of accused products, and that any products not accused as of June 1 “do not belong in this case.”
D.E. 178 at 6 n.2. Apple’s actions in Wisconsin are entirely consistent, however, with normal
practice in patent litigation, absent some special rules. For example, in BIAX 2011 WL 441470,
plaintiff added two accused products to its infringement contentions about one month before
discovery cutoff, more than one year after filing its initial infringement contentions. Like Apple,

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defendant moved to strike. The court noted, “This District does not include rules specific to
patent cases in its Local Rules; thus, the Court analyzes the deadline for supplementation without
the benefit of concrete rules governing disclosure of infringement contentions in patent cases.”
2011 WL 441470 at *5. The court held that, given the circumstances, supplementation related to
such topics was reasonably due by “the close of fact discovery,” and declined to strike the
contentions. Id.
There are no special patent rules in this Court and the normal practice in litigation here is
to supplement discovery. The parties here clearly intended that the deadline not be final and
acted accordingly.
D.

A "Final" June 1 Deadline Would Contradict the Logic of the Discovery
Schedule.

The discovery schedule in this case allows for fact discovery to continue until January 17,
2012. By that time, the parties will have had more than six months after the June 1, 2011
“infringement contentions” deadline to produce additional documents, send and respond to
additional interrogatories, request additional documents, subpoena third parties, and depose
witnesses. If the June 1 infringement contentions deadline were a “final” deadline, with no
supplementation allowed, none of the fruits of this half-year of additional discovery could be
used to bolster, refine, or otherwise improve the parties’ infringement theories. In essence,
Apple would have the Court prevent Motorola from putting Apple on notice of additional
evidence of infringement—much obtained from Apple itself—after the June 1 contentions
deadline.
For instance, Motorola's supplemental infringement contentions rely in part on statements
and admissions Apple made during its technology tutorial, and documents regarding the same
products that were already included in the infringement contentions. See, e.g., D.E. 160 Ex. 1-A

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at 16, 33 (citing document referring to previously accused iPhone 4); id. Ex. 1-D at 9-10, 12-13
(citing document referring to previously accused functionality of previously accused products);
id. Ex. 1-C at 11-13, 15-17, 30-32 (citing document referring to previously accused MobileMe);
id. Ex. 1-D at 6-7, 15-19, 25-27, 35-37 (same). Yet, Apple seeks to strike this evidence from
Motorola’s infringement contentions.
Apple also argues that Motorola is “adding” iTunes as an accused product for U.S. Patent
No. 6,008,737. D.E. 178 at 1. Not so: iTunes is not an accused product for the '737 patent.
Rather, the way in which iTunes is used provides additional evidence that the accused
products—such as the accused iPhone and iPad models—infringe certain Motorola patents. But
in any event, Motorola has bolstered its infringement contentions by citing examples of iTunes
functionality that show how the claims read on those products. See, e.g., D.E. 160 Ex. 1-D at 911. Under Apple’s logic, none of those admissions or documents could be added to Motorola’s
infringement contentions, and thus none of them could be used to prove Motorola's case at trial.
Likewise, Apple this month has served third-party deposition and document production
subpoenas on entities including Comcast, AT&T, and others. According to the subpoena
contents, Apple believes will have evidence relating to the structure and operation of Motorola's
accused products. If the June 1 contentions are “final,” then Apple’s subpoenas to these parties
are five months too late, meaning any evidence these parties could provide is now inadmissible
for proving Apple’s infringement case. Likewise, Apple has asked Motorola for additional
information in response to Apple document requests and interrogatories that concern Apple’s
infringement theories, such as Apple Requests for Production Nos. 5-9 and 12. If the
infringement contentions were final, then the additional information Apple seeks would be of no
use, since it could not be used to support Apple’s infringement theories.

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Moreover, if the June 1 infringement deadline is “final,” then each party’s expert
witnesses would be precluded from relying on any evidence developed by either party after the
June 1 date—even though opening expert reports are not due until January 27, 10 days after the
close of fact discovery.
In sum, the only logical interpretation is that the June 1 “infringement contentions”
deadline is not “final,” but allows the parties to amend or supplement their contentions based on
ensuing evidence. The parties and the Court never intended the deadline to be final. Apple has
always acted as if the deadline was preliminary, and in parallel litigation with an identical
deadline, Apple freely has supplemented its infringement contentions and added nine new
accused products. And setting a “final” deadline so early in discovery would waste more than
six months’ worth of fact investigation by both parties. For these reasons alone, the Court should
deny Apple’s motion to strike Motorola’s supplemental infringement contentions.
II.

APPLE SUFFERS NO PREJUDICE IF MOTOROLA'S SUPPLEMENTAL
INFRINGEMENT CONTENTIONS ARE ALLOWED, BUT MOTOROLA WILL
SUFFER SUBSTANTIAL PREJUDICE IF THEY ARE STRICKEN.
Motions to strike are viewed with disfavor and generally only available if the moving

party can show prejudice. See, e.g., Rawson v. Sears Roebuck and Co., 585 F. Supp. 1393 (D.
Colo. 1984); Cherry v. Crow, 845 F. Supp. 1520 (M.D. Fla. 1994); Tektel, Inc. v. Maier, 813 F.
Supp. 1331 (N.D. Ill. 1992); Oy Tilgmann, AB v. Sport Pub. Intern., Inc., 110 F.R.D. 68 (E.D.
Pa. 1986); F.D.I.C. v. Niblo, 821 F. Supp. 441 (N.D. Tex. 1993). Apple cannot demonstrate
prejudice here.
Apple argues that it will suffer prejudice because Motorola’s supplemental contentions
“will require Apple to analyze these new positions and respond to them as necessary.” D.E. 178
at 11. That is not prejudice. Apple provides no evidence that it will, for example, suffer any

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excessive costs or delays or other harm if it needs to respond to these relatively minor changes in
Motorola’s infringement contentions.
Indeed, Motorola’s supplemental infringement contentions create neither delay nor any
need to extend discovery. As Apple notes, the parties in this case are sophisticated multinational
firms that already have produced millions of documents and conducted major discovery efforts.
Two months remain until the discovery cutoff, and the parties even now have ramped up
discovery efforts. Working two new accused products into this mix should be straightforward
for a well-funded litigant like Apple--particularly since of the two newly accused products, the
iCloud is the next generation of MobileMe, and the iPhone 4S is the next generation of the
iPhone 4. Apple also acknowledges that it already has collected and reviewed, but not produced,
an “enormous” amount of documentation relating to the iPhone 4S, iCloud, and iTunes. It would
be simple for Apple to produce this information to Motorola.
In addition, Apple’s experts will have had three months to review the October 28
supplemental infringement contentions and any relevant evidence by the time initial expert
reports are due on January 27. Moreover, Apple’s experts will have one extra month beyond that
deadline to prepare rebuttal reports with non-infringement responses. Typically in patent cases,
plaintiff’s experts present infringement analyses in their opening reports, and defendant’s experts
present non-infringement analyses in their rebuttals. Thus, Apple’s experts will have had four
months to formulate their non-infringement analyses from the day that Motorola filed its
supplemental infringement contentions on October 28.
Nor would there be any need for additional claim construction by virtue of the
supplemental infringement contentions. Apple suggests that it would have sought to construe
more or different terms had it known in advance that Motorola would add products to its

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infringement contentions. Claim construction does not depend on the presence or absence of
accused products—rather, whether a term must be construed depends on whether there is a
“fundamental dispute regarding the scope of a claim term.” Silicon Graphics, Inc. v. ATI Techs.,
Inc., 607 F.3d 784, 798 (Fed. Cir. 2010); see also Duchemin Decl. Ex. 8 (Apple legal tutorial
presentation from Markman hearing) at slides 49-50. Apple does not identify what terms it
supposedly would have this Court construe or which ones it would not have had this Court
construe in replacement to fall within the agreed-upon limit.
While Apple would suffer no prejudice if the Court were to deny Apple’s motion to
strike, Motorola would suffer substantial prejudice if the Court were to grant that motion. If the
motion to strike were granted, Motorola seemingly would have to file an entirely new case
against Apple to claim that these products infringe exactly the same patents at issue here. But
since the parties have spent substantial resources educating this Court on claim construction and
technology issues, this Court would be able to apply the parties’ claim construction arguments,
and the Court’s accumulated knowledge of the patents and products, to a few new products, each
of which substantially resembles existing Apple products. Motorola would risk having its new
case heard before a new Court lacking in familiarity with claim construction principles or the
technology at hand—in other words, Motorola would have to present its case all over again, and
risk an inconsistent verdict on claim construction and other legal and factual questions.1
III.

APPLE’S “GOOD CAUSE” ARGUMENT IS WITHOUT MERIT.
Apple argues at length that Motorola has failed to show “good cause” to “amend” this

Court’s June 1 scheduling order. This argument is inapplicable to the present situation, since
Motorola is not attempting to modify any scheduling order. The June 1 deadline does not need
1

That collateral estoppel may apply does not, as Apple suggests (D.E. 170 at 6 n.4),
eliminate the prejudice, cost, and inefficiency of an entirely different lawsuit.

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to be modified in order for Motorola to supplement its infringement contentions, since the Order
does not set a “final” infringement contentions deadline.
Regardless, Apple slings large quantities of mud at Motorola about its putative lack of
diligence in discovery. To the contrary, Motorola has been at least as diligent as Apple in this
case. Both parties have produced millions of documents to each other in this case via the crossuse agreement. Both parties have served dozens of document requests, multiple rounds of
interrogatories, and 30(b)(6) notices with dozens of topics. Motorola has demanded that Apple
produce additional documents relevant to this specific case. See, e.g., Ex. 9 (8/17/2011 letter
regarding deficiencies in Apple’s document production). Without such documents, Motorola
cannot properly complete its infringement contentions and theories. The parties are now
engaging in extensive meet and confer over these and other discovery issues. See, e.g., Ex. 10
(11/1/2011 Motorola deficiency letter to Apple); Ex. 11 (meet and confer e-mail
correspondence). It is also worth noting that the parties are litigating across multiple forums, and
so the pace of discovery here necessarily has taken into account events occurring elsewhere.2
Indeed, both parties have chosen to prioritize certain discovery in other forums, such as the
International Trade Commission (where the parties are in the midst of pretrial preparations), with
earlier deadlines. Even so, Motorola has diligently complied with its discovery obligations and
is in process of again demanding the documents missing from Apple’s initial production and that
Apple supplement its interrogatory responses to cure many deficiencies. See. e.g., Ex. 10; Ex. 12
(November 9, 2011 letter demanding Apple supplement its interrogatory responses).

2

In addition to this case and the multiple cases in Wisconsin, the parties are also
litigating in one federal case in Delaware, multiple cases before the International Trade
Commission, including one going to trial in December, and multiple cases in Germany.

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Even assuming Motorola would need to move to modify the June 1 order, it would have
good cause for doing so, since Apple announced new products after the June 1 deadline and
Motorola long has lacked the basic facts necessary to complete its infringement contentions and
theories.
Apple also accuses Motorola of failing to follow patent local rules from other forums.
Apple’s reference to these other courts’ rules is irrelevant. No such special 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.3 BIAX Corp. v. NVIDIA Corp., slip op., 2011 WL 441470 at *5 (D.
Colo., Feb. 8, 2011) (declining to strike infringement contentions served before discovery cutoff
where Court's district lacked any local patent rules setting a different deadline).
IV.

APPLE REFUSES TO PRODUCE DOCUMENTS AND PROVIDE WITNESSES
ON THE NEW PRODUCTS NAMED IN MOTOROLA'S SUPPLEMENTAL
INFRINGEMENT CONTENTIONS.
Based on its Motion to Strike, Apple refuses to produce documents and deposition

testimony regarding the iPhone 4S, iCloud, and iTunes. Although Apple admitted in its motion
to strike to already collecting and reviewing an “enormous” amount of documentation relating to
the iPhone 4S, iCloud, and iTunes, Apple nonetheless refuses to produce such documents
responsive to Motorola's discovery requests, despite these documents' acknowledged relevance
to Motorola's supplemental infringement contentions. Duchemin Decl. Ex. 13 (November 8,
2011 letter from Apple counsel to Motorola counsel). Apple also has refused to produce
documents relating to FairPlay and the App Store, based on the rationale that these features—
3

If any set of rules from other courts is analogous, it would be the rules of the district
court in Wisconsin where the parallel Motorola-Apple patent litigation proceeds apace with this
case. Nonetheless, Apple contends that different rules apply to infringement contentions in
Florida and Wisconsin. See Section I.C infra.

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which Motorola uses, like iTunes, to support its infringement contentions—were not mentioned
in Motorola's May 18 infringement contentions based on public information. Moreover, Apple
refuses to commit to producing promptly these documents and witnesses even if its motion to
strike is denied.
Apple has stated that it is not refusing to provide discovery on these products and
features, but rather, promises to "be reasonable in negotiating" over whether or not to produce
these documents and witnesses if the Court denies Apple's motion to strike. Duchemin Decl. Ex.
14 (11/28/11 e-mail from Apple counsel to Motorola counsel). These statements ring hollow,
particularly in light of Apple's inconsistent positions in Wisconsin and Florida as to the propriety
of supplementing infringement contentions in the first place. The basic fact is that Apple has
refused to firmly commit to providing any or witnesses regarding the iPhone 4S, iCloud, iTunes,
FairPlay and the App Store. As such, Motorola therefore plans to separately move to compel
production of these documents and deposition witnesses.
CONCLUSION
Since the Court never set a “final” infringement contention deadline, and since Apple can
demonstrate no prejudice, Motorola respectfully requests this Court deny Apple’s motion to
strike Motorola’s supplemental infringement contentions.

Respectfully submitted,

Dated: November 28, 2011

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

/s/ David Perlson
David Perlson
Charles K. Verhoeven
David Perlson
Anthony Pastor
QUINN EMANUEL URQUHART &

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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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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on November 28, 2011, I served the foregoing document via
electronic mail on all counsel of record identified on the attached Service List.

/s/ John Duchemin
John Duchemin

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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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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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