Motorola Mobility, Inc. v. Apple, Inc.

Filing 197

RESPONSE in Support re 178 MOTION to Strike Motorola's Supplemental Infringement Contentions filed by Apple, Inc.. (Attachments: # 1 Affidavit Haskett Declaration, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4)(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 REPLY IN
SUPPORT OF MOTION TO STRIKE MOTOROLA’S SUPPLEMENTAL
INFRINGEMENT CONTENTIONS

I.

INTRODUCTION
This Court ordered the parties to exchange infringement contentions by June 1, 2011.

Like the other deadlines contained within this Court’s scheduling order, that deadline was
presumptively final. Motorola nonetheless attempted to supplement its infringement contentions,
without leave of this Court, nearly five months after this Court’s deadline had elapsed. To justify
this untimely supplementation, Motorola argues that the Court-ordered deadline was not “final.”
To support that argument, Motorola first argues that the deadline was not final because
the deadline did not include the word “final” in the scheduling order. By this rationale, only one
of the fourteen deadlines in the scheduling order would be “final,” which was surely not the
Court’s intent. Motorola next attempts to justify its position regarding the Court-ordered
deadline by looking not to the words or actions of the Court, but instead to the alleged words and
actions of Apple. Apple’s actions, however, are immaterial to Motorola’s obligation to the Court
to adhere to its discovery deadlines, and, in any event, there is no inconsistency between Apple’s
conduct and its motion to strike.
II.

ARGUMENT
A.

The Court-Ordered Deadline for Submitting Infringement Contentions Was
a Final Deadline.

Motorola argues that the June 1 deadline was not final because the Court’s order does not
expressly state that it was “final.” See Opp. at 3. Combined, the Court’s two scheduling orders
in this case contain fourteen deadlines, only one of which includes the word “final.”1 See D.E.
45, D.E. 88. Under Motorola’s interpretation, the remaining thirteen deadlines are merely
deadlines for placeholders. For example, according to Motorola’s interpretation, the parties need
only serve placeholder opening expert reports by the Court-ordered deadline, but are free to

1

The one deadline that includes the word “final” is the deadline for filing “final” Rule 26
disclosures. See D.E. 45.

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serve their “final” opening reports later. This cannot be the intended meaning behind Courtordered deadlines.
The parties should presume that the Court’s deadlines are final absent the Court’s explicit
indication to the contrary. Here, there is no indication that the Court’s infringement contention
deadline was anything other than final. For example, the scheduling order does not state or
suggest that the June 1 infringement contentions were merely “preliminary,” nor does it provide
for supplementation of infringement contentions at a later date. Instead, it sets a deadline, to
which the parties must adhere. If Motorola had any uncertainty regarding deadlines in the
Court’s scheduling order, it should have sought clarification from the Court.2
B.

Apple’s Conduct in a Different Case in a Different Forum with Different
Procedural Rules Is Immaterial and Creates No Inconsistency with Apple’s
Position in this Case.

Motorola argues that Apple’s addition of new accused products in a separate litigation
between the parties in another jurisdiction is evidence that “Apple has not treated the June 1
deadline as ‘final.’” Opp. at 8. This is a non-sequitor; the parties’ actions in an entirely separate
litigation, taking place in a different district court, located in a different circuit, with different
local rules and orders, has no bearing on the deadlines set by this Court.
Moreover, there is nothing about the parties’ conduct in the Western District of
Wisconsin case that is inconsistent with Apple’s position here. Specifically, the Western District
of Wisconsin is different from this Court in that it does not use the term “infringement
contentions” to describe the detailed, element-by-element analysis typically seen in patent

2

Motorola argues that treating the June 1 infringement contention deadline as “final” would
“contradict the logic of the discovery schedule” because it would prevent the parties from using
any discovery obtained after the deadline to support their infringement theories. See Opp. at 1011. This argument is illogical; the parties may use discovery obtained at any point during the
discovery period to support the infringement theories included in their infringement contentions
exchanged prior to the June 1 deadline.
2

litigation (and exchanged by the parties in this case last May).3 It instead uses the term
“infringement contentions” to describe a much less substantive document that simply provides a
preliminary list of the accused products by asserted claim. In accordance with this practice, the
Wisconsin court ordered Apple and Motorola to provide, by March 4, 2011, nothing more than a
list of products accused of infringing each asserted patent claim:
Infringement Contentions: March 4, 2011[:] By this date, a
plaintiff must identify each claim in each patent being asserted
against each accused device.
Ex. 2, Preliminary Pretrial Conference Order (emphasis in original).4 Significantly, the Court
never required the parties to exchange element-by-element infringement contentions of the kind
typically seen in other jurisdictions with local patent rules, such as the Northern District of
California. Although the parties separately agreed to exchange element-by-element contentions
(i.e., typical “infringement contentions”) in the Wisconsin litigation, they did so only by
agreement, and there was never a court order requiring such detailed contentions. See Ex. 4,
3/4/11 e-mail from Steven Cherensky to Edward DeFranco.
In this case, by contrast, there was a Court-ordered deadline for exchanging infringement
contentions, without any instruction that such contentions should be limited to lists of accused
products, as in Wisconsin. Accordingly, the parties interpreted “infringement contentions” in
this Court’s scheduling order in the usual sense—as requiring element-by-element infringement
contentions as opposed to merely the lists of accused products required in Wisconsin—as
evidenced by the fact that, on May 18, 2011, the parties exchanged exactly such detailed,
element-by-element contentions. Thus, whereas there was no court-ordered deadline for detailed
3

For example, a description of the type of element-by-element analysis typically called
“infringement contentions” can be found in the Northern District of California Patent Local
Rules. See Ex. 1, N.D. Cal. Pat. L. R. 3-1. (All exhibits cited are attached to the Declaration of
Christine Haskett, filed in support of this brief, unless otherwise noted.)
4

So that the Court may see how different the Court-ordered infringement contentions in
Wisconsin are from the infringement contentions at issue in this case, Motorola’s March 4, 2011
infringement contentions from the Wisconsin litigation are attached as Exhibit 3.
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infringement contentions in Wisconsin, the parties submitted such contentions in this case in
compliance with the Court’s deadline.
Ignoring the fact that the Wisconsin court never set a deadline for detailed infringement
contentions, Motorola argues that “Apple’s actions in Wisconsin are entirely consistent . . . with
normal practice in patent litigation, absent some special rules.” Opp. at 9. Motorola supports its
argument with a single case, from the District Court of Colorado, in which the court declined to
strike supplemental infringement contentions. Id. (citing Biax Corp. v. Nvidia Corp., Case No.
09-cv-01257, 2011 WL 441470 (February 8, 2011, D. Colo.). In that case, however, the court
had not entered a deadline for infringement contentions in its scheduling order. In declining to
strike the supplemental contentions, the Court explained that it “analyzes the deadline for
supplementation without the benefit of concrete rules governing disclosure of infringement
contentions in patent cases.” Biax, 2011 WL 441470 at *5. In this manner, the Colorado court
was very much like the Wisconsin court, in that neither were operating under a court-ordered
deadline for detailed infringement contentions. In contrast, this Court set a June 1, 2011 deadline
that both parties have always treated as being a deadline for detailed, element-by-element
infringement contentions, thus giving the parties a “concrete rule[] governing the disclosure of
infringement contentions.”
C.

Apple’s Use of “Reservations” Language in This Case Also Cannot Alter the
Nature of the Court’s Deadline.

Finally, Motorola attempts to make much of Apple’s use of language in its own
contentions purporting to reserve the right to supplement those contentions. By using that
language, Motorola argues, Apple gave “tacit approval” of Motorola’s ability to supplement in
an untimely manner. See Opp. at 1. As a sophisticated litigant, however, Motorola cannot
reasonably have relied on Apple’s “reservations” language—language of the type that parties
frequently use in their documents, regardless of whether they have an actual right that can be
reserved—as a basis for assuming that Motorola would be permitted to revise its infringement

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contentions beyond a Court-ordered deadline. It is the language of the Court, not the parties, that
controls a party’s obligation to meet deadlines set by the Court.
Here, the Court gave no indication that untimely supplementation of infringement
contentions was contemplated by the scheduling order or would be allowed. On the contrary, the
Court has stated that if there were a deadline for providing infringement contentions in the
scheduling order, “we are going to live with that cut-off.” D.E. 178-2, Markman Hearing Tr. at
749:3-9. No language used by Apple in its contentions can change that.5
III.

CONCLUSION
Based on the foregoing, Apple respectfully requests that its motion to strike be granted

and that Motorola’s supplemental infringement contentions be stricken.

Dated: December 5, 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

Robert T. Haslam
[e-mail]
COVINGTON & BURLING LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

5

Moreover, unlike Motorola, Apple has not unilaterally attempted to amend its infringement
contentions in this case without leave of Court.
5

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 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 December 5, 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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