Motorola Mobility, Inc. v. Apple, Inc.

Filing 223

REPLY to Response to Motion re 211 MOTION to Amend/Correct the Procedural Schedule to Serve Supplemental Invalidity Contentions and Accompanying Memorandum of Law in Support filed by Motorola Mobility, Inc.. (Attachments: # 1 Affidavit, # 2 Exhibit O, # 3 Exhibit P, # 4 Exhibit Q, # 5 Exhibit R)(Giuliano, Douglas)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No. 1:10cv023580-Civ-RNS

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 IN SUPPORT OF ITS MOTION
TO AMEND THE PROCEDURAL SCHEDULE TO SERVE
SUPPLEMENTAL INVALIDITY CONTENTIONS

Plaintiff and Counterclaim Defendants Motorola Mobility, Inc. and Motorola Solutions,
Inc. (f/k/a/ Motorola, Inc.) (collectively "Motorola") submit this reply in support of their request
for leave to serve supplemental invalidity contentions.
Good cause exists for Motorola to supplement Motorola's invalidity contentions. First,
contrary to Apple's assertions, Motorola has diligently pursued its invalidity defense to Apple's
asserted patents. This is exemplified by Motorola's detailed invalidity contentions, which
explain how dozens of references meet each and every limitation of the asserted claims.
Motorola also has shown its diligence through its persistent requests to Apple for discovery
relevant to the invalidity of Apple's asserted patents, its pursuit of third-party discovery related to
the invalidity of Apple's asserted patents and its supplementation of invalidity contentions in
light of Apple's late-produced documents and change in positions regarding the scope of its
patents. It is a result of this continued diligence that Motorola discovered the further art that
invalidates Apple's patents, which Apple seeks to preclude Motorola from raising in this case.
In the face of this diligence, Apple argues that it will be prejudiced from Motorola's
supplementation of invalidity contentions. But the only actual "prejudice" is the invalidity of
Apple's patents; obviously that is not a legitimate basis to exclude Motorola's supplementation.
If the patents are invalid by prior art, they should not be enforced. Apple argues that it will be
prejudiced because it would need to seek third-party discovery regarding the prior art raised in
Motorola's supplemental contentions. This assertion rings hollow given that Apple never has
before in the preceding months sought discovery from any third party regarding any of the
myriad references that Motorola identified in its June 20, 2011, preliminary invalidity
contentions to Apple's patents. In fact, even on issues where Apple bears the burden, such as
infringement, Apple waited to serve its third-party subpoenas until early November. In any

1

event, Motorola is already diligently pursuing this third-party discovery, which is well under way
and should provide whatever information Apple supposedly needs, despite having never sought
it on its own.
Apple's other claim of supposed prejudice is that it would have taken different positions
in claim construction had it been aware of Motorola's supplemental invalidity contentions. This
claim of prejudice rings hollow as well. Apple has not articulated a single new or different
position it would have taken in light of Motorola's supplemental invalidity contentions. And,
when the Court asked the parties to jointly submit a chart regarding the impact of claim
constructions, for every single term Apple proposed, it identified only non-infringement as the
impact, not invalidity. (D.E. 126.) Apple did not assert that the Court's decision on any claim
term would impact the validity of any patent, or that any construction it had proposed related to
any of the voluminous prior art Motorola had identified. (Id.)
In reality, it is Motorola that will suffer undue prejudice if supplementation is not
permitted. Despite its diligence, Motorola did not learn of certain references until after the June
20 invalidity contentions were served. If Motorola is not permitted to supplement, critical prior
art—including prior art that another court found potentially invalidates Apple's patent of which
Apple itself was aware—will be excluded from the jury's consideration. See Golden Hour Data
Sys., Inc. v. Health Services Integration, Inc., 06-cv-7477, 2008 WL 2622794, *4 (N.D. Cal. July
1, 2008) (noting that defendant uncovered prior art during discovery, that the prior art was
relevant, and that "it would be unjust for such information 'to be avoided on the basis of … mere
technicalities.'") (internal citations omitted). Apple's attempt to avoid having this case decided
on its merits should be rejected, and Motorola's request to supplement its invalidity contentions
should be granted.

2

I.

GOOD CAUSE EXISTS FOR MOTOROLA TO SUPPLEMENT ITS '849
INVALIDITY CONTENTIONS
A.

Motorola was Diligent in Pursuing its Invalidity Defense with Respect to the
'849 Patent

Contrary to Apple's assertions, and as set forth in Motorola's motion, Motorola has been
diligent in pursuing its invalidity defenses in this case. Motorola's diligence is evident from the
detailed invalidity contentions it served on Apple on June 20, 2011. Ex. C.1 These invalidity
contentions incorporated charts spanning thousands of pages and detailing, element-by-element,
how invalidity references anticipated or rendered obvious Apple's asserted patents.2 Motorola
would not have been able to provide such detail to Apple had Motorola not been diligent in
pursuing its invalidity defenses.
With respect to the '849 patent, Motorola disclosed 85 references and provided detailed
charts for 11 of those references. Despite this diligence, and as commonly occurs in patent
litigation, Motorola did not discover two references until after the June 20 invalidity contentions
were served. The world is full of prior art – especially with the Apple patents at issue here – and
although parties diligently search for and sift through hundreds of references, a party may
nonetheless discover additional prior art references as the litigation progresses. See Amersham
Pharmacia Biotech, Inc. v. Perkin-Elmer Corp., 190 F.R.D. 644, 648 (N.D. Cal. 2000) (granting
leave to serve supplemental invalidity contentions and noting that, "[t]o conduct a world-wide
search, locate and disclose all potential prior art bearing on the patent-in-suit, within [the time

1

Exhibits A through N are attached to the declaration of Cathleen Garrigan filed with
Motorola's Motion for Leave to Serve Supplemental Invalidity Contentions. (See D.E. 211.)
Exhibits O through R are attached to the declaration of Cathleen Garrigan filed concurrently with
this reply brief.
2

To ease the Court's burden, Motorola did not attach these voluminous charts to its
original motion. However, if the Court would like to examine these charts, Motorola can submit
them.
3

allotted after service of the patentee's infringement contentions]—on pain of being precluded
from using the information in the lawsuit—is a daunting task.").
As part of this continued diligence, Motorola discovered that on August 24, 2011, a
Netherlands court found the European equivalent of Apple's '849 patent was likely invalid based
on two references, Neonode and Plaisant. See Ex. A at ¶¶ 4.45-4.48. Apple had not produced
this Order in a case in which it was involved, nor had it produced the prior art cited in the
Netherlands case, which included the Neonode reference. Only after Motorola requested these
documents did Apple produce them, despite having been in possession of the prior art for at least
six weeks. Garrigan Decl. at ¶ 6.
Additionally, Apple's opposition complains that Motorola did not explain why it didn't
learn of the Neonode and Juels references earlier. (Opp. at 6.) Apple's Monday morning
quarterbacking places a burden of proof on Motorola that the law does not require. Motorola has
properly shown that good cause exists to serve supplemental invalidity contentions because
Motorola was diligent (as evidenced by the detailed invalidity contentions it served on Apple)
and Apple will not be prejudiced by allowing Motorola to supplement its invalidity contentions.
See, e.g., Tessera, Inc. v. Advanced Micro Devices, Inc., 05-cv-4063, 2007 WL 1288199, *1
(N.D. Cal. Apr. 30, 2007) (permitting defendants to amend their invalidity contentions where
defendants were diligent and allowing amendment would "promote the fair resolution of this
case without causing any prejudice to Plaintiff.").
Furthermore, although Apple criticizes Motorola's diligence because the Neonode and
Juels references were publicly available (Opp. at 6), Apple sought the same relief in similar
circumstances before the International Trade Commission. Ex. Q. During a recent investigation,
Apple belatedly identified a publicly available prior art reference. Id. at 1. Yet, Apple asserted

4

that good cause existed for Apple to supplement because "at the time Apple submitted its
original prior art list, the existence, and therefore the significance and materiality of [the publicly
available reference] was not known to Apple." Id. Apple also asserted that Motorola would not
be prejudiced because its expert report on invalidity was not due until May 20—just 16 days
later. Id. at 1-2. Here, Apple's expert rebuttal report on invalidity will not be due until March
16, which is 79 days after Motorola's motion for leave to supplement was filed. Thus, according
to Apple's own arguments, Motorola should be granted leave to serve its supplemental invalidity
contentions.
B.

Apple's Assertion That the Neonode Is not Prior art is Both Irrelevant and
False.

Apple argues that the Neonode is not prior art because "Neonode did not sell any
products in the United States more than one year prior to the December 2005 filing date of the
'849 patent." (Opp. at 5.) Initially, although it is ultimately Motorola's burden to prove that a
reference is prior art, Motorola need not prove that a reference is prior art in order to demonstrate
that good cause exists to supplement its invalidity contentions, and Apple provides no authority
that it does.
Apple is also wrong as a factual matter. Neonode printed references were publicly
available more than one year before the invention and the filing date of the '849 patent. Apple
does not dispute that these publications are prior art references under both 35 U.S.C. § 102(a)
and (b), which provide that printed publications are prior art if they were available before the
invention of the asserted patent or one year before the filing date of the asserted patent. As
Apple is aware, Neonode released the N1 phone in July 2004 (well over a year before the
December 2005 filing date of the '849 patent) accompanied by the N1 user guide and other
publications, some of which Apple produced in this litigation. See, e.g., Ex. O.
5

C.

Apple Will Not Be Prejudiced by Motorola's '849 Supplemental Invalidity
Contentions

Apple's assertions that it will be prejudiced if Motorola is permitted to supplement its
invalidity contentions are equally false. Apple claims that it "would be forced to pursue lastminute discovery relating to the Juels reference as well as discovery regarding first sales (if any)
in the United States by Neonode, which is a Swedish company." (Opp. at 6.) It is Motorola's
burden—not Apple's—to prove that any particular reference is prior art. Accordingly, Apple
will not have to take any of the discovery it laments in its opposition.
Moreover, Apple has already been defending against the Neonode prior art in the
Netherlands and has been on notice of the Neonode prior art in this case since September 1
(when Motorola demanded the production of the Netherlands prior art) or, at the latest,
November 30 (when Motorola served its supplemental invalidity contentions).3 Yet, Apple did
nothing to pursue any discovery. To the extent Apple has not already prepared its defense
against the Neonode in the Netherlands litigation, it will have ample time to do so in this
litigation given that third-party discovery is already well under way. In contrast to Apple,
Motorola has diligently pursued third-party discovery, including discovery related to Neonode.
A subpoena was served on Neonode, Neonode produced discovery in response to that subpoena,
and Motorola is in the process of scheduling a deposition of Neonode. Garrigan Decl. ¶ 7.
Apple can attend and ask questions at the Neonode deposition. Thus, Apple's assertions that it
will be "forced to pursue last-minute discovery" are untrue.
Apple also concludes that it will be "severely prejudiced" because "the parties relied on
the already served infringement and invalidity contentions when formulating their respective

3

Motorola withdrew the November 30 supplemental invalidity contentions under the
circumstances described in its opening brief. (D.E. 211 at 6-7.)
6

claim construction positions and arguments . . . ." (Opp. at 5-6.) Again, however, Apple's claims
of prejudice ring hollow given that Apple has not articulated a single new or different position it
would have taken with respect to claim construction in light of Motorola's supplemental
invalidity contentions. And again, when the Court requested that the parties submit a joint chart
detailing how the Court's claim construction determinations would impact the litigation, Apple
only addressed how its claim constructions impacted infringement, not the validity of any of its
patents. (D.E. 126.)
Lastly, under Apple's logic, parties would never be permitted to supplement invalidity
contentions after claim construction. That is not the standard, however, and parties are permitted
to supplement invalidity contentions after claim construction upon a showing of good cause.
See, e.g., Alt v. Medtronic, Inc., 04-cv-370, 2006 WL 278868 (E.D. Tex. Feb. 1, 2006)
(permitting amendment after claim construction hearing and briefing were complete).
II.

GOOD CAUSE EXISTS FOR MOTOROLA TO SUPPLEMENT ITS
INVALIDITY CONTENTIONS WITH RESPECT TO THE '646 AND '116
PATENTS
A.

Apple Maintains its Position That it Invented Plug and Play

Apple accuses Motorola of "cherry-picking" a sentence from the technical tutorial in
order to "fabricate 'good cause'" by arguing Apple said at the tutorial that it had invented Plug
and Play. But that is just what counsel for Apple stated:
"Now, the invention is – a colloquial expression that's often used is "plug and
play," which just means exactly what it sounds like. You don't have to wait for it
to be rebooted. The system will recognize it automatically without being rebooted
or restarted.
Ex. G at 108:20-24. Tellingly, Apple never directly addresses this actual statement. Instead,
Apple complains that "Motorola neglects six pages of the tutorial transcript which plainly show
that Apple's description of the patented invention was entirely consistent with [] the language of
7

the patents themselves . . . ." (Opp. at 8.) But in the six pages of transcript (cited as Exhibit L in
Apple's opposition), Apple's counsel does not address any of the specifics of the '646 or '116
patents. Its discussion of the alleged invention was completely divorced from the '646 and '116
patents and Apple concluded with the statement, "the invention is . . . 'plug and play.'" Ex. G at
108:20-24. And even in its Opposition, Apple does not actually retreat from its position that it
invented Plug and Play. Rather, in a footnote, Apple reasserts this very position. (Opp. at 7 n.8.)
B.

Motorola Was Diligent in Pursuing its Invalidity Defense with Respect to the
'646 and '116 Patents

Apple also argues that Motorola was somehow not diligent because its June 20 invalidity
contentions already cite to some Plug and Play references. But this only shows that Motorola
was diligent because it had already cited Plug and Play references as background material to the
'646 and '116 patents, including Microsoft Windows 95 Resource Kit; Hardware Design Guide
for Microsoft Windows 95: A Practical Guide for Developing Plug and Play PCs and
Peripherals; Programming Plug and Play; Plug and Play System Architecture See e.g. Ex. C at
55. As a further part of this diligence, Motorola supplemented its contentions regarding
references it already disclosed as background, as well as few other references to address Apple's
new position that it invented Plug and Play.
Given that Motorola had already cited Plug and Play references, there can be no prejudice
to Apple through Motorola's supplementation; and Apple does not even argue there is any
prejudice. Again, however, the prejudice to Motorola is severe as it would be precluded from
formulating its defense to address Apple's later-disclosed theory.

8

III.

GOOD CAUSE EXISTS FOR MOTOROLA TO SUPPLEMENT ITS
INVALIDITY CONTENTIONS WITH RESPECT TO THE '560, '456 AND '509
"FLORIN PATENTS"
A.

Motorola was Diligent in Pursuing its Invalidity Defense with Respect to the
Florin Patents

As discussed with respect to the '849 patent, Motorola's diligence in pursuing its
invalidity defense is evidenced by its lengthy and detailed invalidity contentions. Apple ignores
Motorola's diligent conduct throughout discovery, instead implying (incorrectly) that Motorola
somehow acted nefariously with respect to its discovery that the '185 patent was prior art.
Apple's suggestion that Motorola was hiding the '185 patent prior art reference is illogical. (Opp.
at 10-11.) There is no motive for Motorola to hide invalidity references from Apple, and Apple
provides none. Additionally, it is contrary to Motorola's actions of serving supplemental
invalidity contentions in order to further disclose prior art and Motorola's invalidity positions to
Apple. See Golden Hour Data Sys., 2008 WL 2622794, *4 (permitting supplemental invalidity
contentions where there was "no indication that gamesmanship motivated [the defendant's]
decision to wait until this juncture to supplement its Preliminary Invalidity Contentions.").
Apple also asserts that Motorola was not diligent because the '185 patent and its
prosecution history are publicly available. (Opp. at 11.) This is misleading, at best. The
publicly available prosecution history for the '185 patent does not contain a copy of the inventor's
declaration in which he swears that the invention claimed in the '185 patent was invented and
publicly disclosed prior to the earliest date claimed by Apple's Florin patents (December 1,
1992).4 The missing declaration was, of course, part of the difficulty in identifying the '185
patent as prior art. Since the filing of Motorola's motion, Rovi produced the missing inventor
4

The '185 patent prosecution history does contain other documents, such as Exhibit K,
that reference the missing inventor declaration. Thus, contrary to Apple's assertion, Exhibit K
was not cited in error. (Opp. at 11.)
9

declaration, which shows that prior to September 28, 1992, and prior to the Florin patents'
December 1, 1992 priority date, the inventors of the '185 patent completed and reduced to
practice prototypes of the claimed invention. Ex. R. Thus, the '185 patent is prior art.
Apple insists that Motorola must establish diligence by detailing when it learned that the
'185 patent was prior art and establishing diligence from that point forward.5 Even if this were
the standard, which it is not, Motorola established such diligence. Motorola sought leave to
serve supplemental invalidity contentions shortly after learning that the '185 patent may be prior
art to the Florin patents and did so while concurrently seeking discovery from third-party Rovi to
establish the prior art status of the '185 patent.
B.

Apple Will Not be Prejudiced by Motorola's Supplemental Invalidity
Contentions for the Florin Patents

Apple asserts that it will suffer prejudice because it will not have time to pursue
discovery related to the priority date of the '185 patent. (Opp. at 12-13.) Again, it is Motorola,
not Apple, that bears the burden of establishing that the '185 patent is prior art. Moreover,
discovery related to the '185 patent is already well under way. Motorola served a subpoena on
third-party Rovi and Rovi has produced documents related to that subpoena. Garrigan Decl. ¶ 8.
For its part, on January 23, 2012, Apple too served a subpoena on Rovi—this was the
first time Apple has ever sought any discovery regarding any of Motorola's asserted prior art in
this case. Ex. P. Even then, this subpoena predominantly relates to Apple's infringement
theories (for which Apple apparently had no problem waiting until January 2012 to serve); there
are two document topics and two deposition topics related to the '185 patent. Id.
5

Apple's reliance on O2 Micro In'l Ltd. v. Mono-Lithic Power Sys., Inc., 467 F.3d 1355
(Fed. Cir. 2006), is misplaced. O2 Micro, which involved infringement contentions, does not
address any of the facts here. O2 Micro did not involve belatedly produced prior art, a change in
position regarding the scope of the asserted patents, or uncovering, through diligent search, a
prior art patent whose priority date could only be ascertained through third-party discovery.
10

IV.

CONCLUSION
For all of the above reasons and those set forth in its opening brief, Motorola respectfully

requests the court grant Motorola leave to serve its supplemental invalidity contentions.
Respectfully submitted,

Dated: January 27, 2012

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

/s/ David Perlson
David Perlson

Charles K. Verhoeven
David Perlson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Email: [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]
11

Facsimile: [phone]
Email: [e-mail]
Marshall Searcy
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
865 S. Figueroa St., 10th Floor
Los Angeles, California 90017
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys for Plaintiff and CounterclaimDefendants Motorola Solutions, Inc. and
Motorola Mobility, Inc.

CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on January 27, 2012, I served the foregoing document via
electronic mail on all counsel of record identified on the attached Service List.

/s/ Douglas Giuliano
Douglas Giuliano

12

SERVICE LIST
Motorola Mobility, Inc. versus Apple Inc.
Case No. 1:10cv023580-Civ-RNS
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]

13

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

14