Motorola Mobility, Inc. v. Apple, Inc.
Filing
308
RESPONSE/REPLY to 276 Notice (Other),, in Opposition to Apple's Motion for Leave to File Amended Answer by Motorola Mobility, Inc.. (Attachments: # 1 Affidavit of Cathleen Garrigan, # 2 Exhibit A- Filed Under Seal, # 3 Exhibit B)(Herrera, Sujey)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No. 1:10cv023580-Civ-RNS-TEB
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 RESPONSE TO APPLE, INC.’S
MOTION FOR LEAVE TO FILE AMENDED ANSWER
Case No. 1:10cv023580-Civ-RNS-TEB
I.
PRELIMINARY STATEMENT
Apple cannot have it both ways. Apple’s motion for leave to amend directly contradicts
its successful argument that the parties should not be allowed to update their infringement
theories in this case. In October 2011, Apple convinced this Court to strike Motorola’s
supplemental infringement contentions, urging that Motorola’s preliminary infringement
contentions served early in the case were final and could not be supplemented to add additional
accused products under the same patents-in-suit after May 2011. As a result, instead of
including all of the infringement contentions under the patents-in-suit in one litigation, Motorola
was forced to file a second litigation asserting those same patents, which is pending before this
Court.
Now, Apple seeks to add its own new infringement theory to this case, nearly five
months further into the litigation and shortly before the close of fact discovery. Simple fairness
demands that Apple should not be allowed to benefit from its contradictory positions. To the
contrary, both parties should be permitted to update their infringement theories on equal footing.
Accordingly, while Motorola objects to Apple’s proposed amendment as being both late
and prejudicial to Motorola, it is willing to withdraw its objection if Motorola is likewise allowed
to supplement its infringement contentions in this action. That arrangement would not only be
fair—it would make much more efficient use of the Court’s limited resources by resolving the
issues between the parties relating to the patents-in-suit in one litigation. Motorola offered this
compromise after Apple stated it would seek leave to amend, but Apple—without meeting and
conferring—filed this motion instead. Thus, Motorola requests that the Court grant Apple leave
to file its amended Answer only if the Court also grants Motorola leave to submit supplemental
-2-
Case No. 1:10cv023580-Civ-RNS-TEB
infringement contentions, or, in the alternative, that the Court deny Apple’s motion for leave to
file its amended Answer.
II.
BACKGROUND
The Schedule for Amendments. Apple filed its Answer, Affirmative Defenses, and
Counterclaims in this case on November 18, 2010. (D.E. 17.) According to the schedule entered
by the Court, the deadline for amending the pleadings, including Apple’s Answer, was March 18,
2011. (D.E. 45.) Apple filed an Amended Answer, Affirmative Defenses, and Counterclaims on
March 18, 2011, and neither party has amended the pleadings since that date. (D.E. 68.)
Furthermore, pursuant to the Court’s original scheduling order, the parties were required
to exchange infringement contentions by June 1, 2011, and invalidity contentions by June 20,
2011. (D.E. 88)
Apple’s Successful Motion to Strike. On May 18, 2011, the parties exchanged
infringement contentions in this case. Ex. A. 1 Apple designated its contentions as “preliminary”
infringement contentions, as did Motorola. Id. at 3. Nonetheless, when Motorola served
supplemental infringement contentions on Apple on October 28, 2011, Apple moved to strike
them, even though Motorola’s supplement sought only to add additional accused products
accused of infringing the same asserted patents. (D.E. 178; D.E. 185, Motorola’s Opp. to Mot. to
Strike, at 9.)
In support of that motion, Apple argued that “the scheduling order unambiguously set a
deadline for infringement contentions without providing for supplementation or amendment of
those contentions,” and that Motorola’s supplement should be stricken because it came after that
deadline. (D.E. 178 at 5.) On December 6, 2011, Apple’s motion was granted. (D.E. 198.)
1
"Ex. __" refers to the exhibits accompanying the declaration of Cathleen Garrigan filed
concurrently with this response.
-3-
Case No. 1:10cv023580-Civ-RNS-TEB
Thus, Apple successfully forced Motorola to file a second lawsuit on the same patents-insuit simply to ensure that Motorola’s additional infringement contentions could be presented to a
jury. On January 24, 2012, Motorola filed its second complaint against Apple in the Southern
District of Florida in order to assert the infringement contentions it was not able to assert in the
first case. See Motorola, Inc. v. Apple Inc., Case No. 12-cv-20271-RNS (S.D. Fla.). That second
litigation was the direct result of Apple’s successful motion to strike Motorola’s supplemental
infringement contentions.
Apple’s Service of Supplemental Invalidity Contentions After Arguing That Such
Contentions Would Be Prejudicial. Apple also opposed Motorola’s supplement to its invalidity
contentions. (D.E. 217.) On December 28, 2011, Motorola filed a motion for leave to file
supplemental invalidity contentions. (D.E. 211.) Apple again argued that Motorola was too late
because it sought leave after the date in the case schedule for invalidity contentions. At the
March 9, 2012, hearing before the Court, Apple contended that “at some point a line has to be
drawn” and that “we can’t keep throwing things [i.e. new contentions] over the transom at the
very end of the case.” (Hearing Tr. (03/09/12) at p. 19, ll. 11-15.) This Court granted
Motorola’s motion. (D.E. 259)
But, once the Court ruled that Motorola could supplement its invalidity contentions,
Apple changed tack. On March 30, 2012, without giving Motorola any prior notice of its
intentions, Apple served its own supplemental invalidity contentions. Garrigan Decl. ¶ 1.
Apple’s Proposed Amended Answer. On March 7, 2012, during a meet and confer,
counsel for Apple informed counsel for Motorola that Apple contemplated amending its Answer
to “provide more specific details regarding its indirect infringement theories” and asked whether
Motorola would oppose an amendment. Garrigan Decl. ¶ 2, and Ex. B at 3. On March 12, 2012,
-4-
Case No. 1:10cv023580-Civ-RNS-TEB
Apple provided Motorola with a redline of its proposed amended answer. Ex. B at 2. Apple’s
proposed amended answer went well beyond adding clarifying language and instead, raised
brand new infringement theories. Ex. B at 2. In particular, Apple’s amended answer adds a
claim that Motorola infringes Apple’s patents asserted against set-top boxes (“STB’s”) under 35
U.S.C. § 271(f) based on activities outside the United States. Apple now alleges for, the first
time, that Motorola ships software to foreign countries for installation on STB’s.
Motorola explained in correspondence with Apple that Apple’s amendment is
inconsistent with Apple’s motion to strike Motorola’s supplemental infringement contentions.
Ex. B at 1. Thus, in an effort to reach a fair result for both parties, Motorola indicated it would
not oppose Apple’s amendment if Apple agreed not to oppose a motion by Motorola to
supplement its infringement contentions. Id. But on March 19, 2012, Apple rejected Motorola’s
proposal and on March 23, without meeting and conferring, Apple filed its motion for leave to
amend its answer. Id.; (D.E. 276).
The Close of Discovery in May. The parties have now substantially completed fact
discovery in this case. Since January of 2012, the parties already have deposed more than 20
witnesses and are nearing the deadline for any further depositions or document production.
Following a joint motion by Motorola and Apple to extend fact discovery by 30 days, and fact
discovery now ends on May 4, 2012. (D.E. 283.)
III.
ARGUMENT
A.
Allowing Apple’s Untimely New Infringement Theory Without Allowing
Motorola To Supplement Its Infringement Contentions Would Unfairly
Prejudice Motorola
Apple does not dispute that its amendment to its Answer is late, filed 12 months after the
deadline in the Court’s Scheduling Order for amending the pleadings. Apple can modify the
Court’s schedule and file its amendment only “for good cause and with the judge’s consent.”
-5-
Case No. 1:10cv023580-Civ-RNS-TEB
Fed. R. Civ. P. 16(b)(4). Above and beyond the requirement to show good cause, courts deny
motions to amend the pleadings for numerous reasons, including “undue delay” and “undue
prejudice” to the other party. Brewer-Giorgio v. Producers Video, Inc., 216 F.3d 1281, 1284
(11th Cir. 2000). Apple’s proposed amendment in this case is unduly late and would prejudice
Motorola. In particular, Apple’s amendment would allow Apple to add new infringement
theories to the case after Apple previously blocked Motorola from doing the same months earlier.
Fairness dictates that the rules apply to both parties equally. While Motorola is willing to
withdraw its objections to Apple filing its belated amended answer, Apple should be given leave
only if Motorola is also allowed to supplement its infringement contentions.
B.
Apple’s New Claims Would Add A New Infringement Theory Even As
Discovery Closes In This Case
Apple’s amendment would introduce a new issue into the case at the eleventh hour.
Currently, Apple’s infringement claims in this case are limited to activity occurring in the United
States. Apple now seeks to expand its infringement theory under 35 U.S.C. § 271(f) to include
activity conducted outside the United States. Expanding the case in such a way shortly before
the close of fact discovery would prejudice Motorola, and Apple’s motion for leave to amend its
Answer should be denied unless Motorola is also permitted to amend its infringement
contentions.
1.
Apple’s Amendment Would Contradict Its Own Prior Argument That
No New Claims Should Be Added To This Case
With its successful motion to strike Motorola’s supplemental infringement contentions,
Apple convinced the Court that the parties should not be allowed to rely on or come forward
with new infringement theories after May 2011. Under the doctrine of judicial estoppel, Apple
cannot now contend that its motion for leave to amend should be held to a different standard.
New Hampshire v. Maine, 532 U.S. 742, 749 (2001) (“[A]bsent any good explanation, a party
-6-
Case No. 1:10cv023580-Civ-RNS-TEB
should not be allowed to gain an advantage by litigation on one theory, and then seek an
inconsistent advantage by pursuing an incompatible theory”) (quoting 18 C. Wright, A. Miller, &
E. Cooper, Federal Practice and Procedure § 4477, p. 782 (1981)); Pegram v. Herdrich, 530 U.S.
211, 227, n. 8, 120 S. Ct. 2143, 147 L.Ed.2d 164 (2000) (the doctrine of judicial estoppel
“generally prevents a party from prevailing in one phase of a case on an argument and then
relying on a contradictory argument to prevail in another phase”); United States v. McCaskey, 9
F.3d 368, 378 (5th Cir. 1993) (judicial estoppel “prohibit[s] parties from deliberately changing
positions according to the exigencies of the moment”).
In its motion to strike, Apple contended that Motorola’s supplemental infringement
contentions were too late and would prejudice Apple. Motorola’s supplement would have
simply added additional accused products while keeping the asserted patents-in-suit the same.
Nonetheless, Apple claimed that “Motorola’s supplementation of infringement contentions
would only further complicate this case, would undermine the purpose behind having a deadline
for infringement contentions in the first place, would violate the good cause requirement of Rule
16 of the Federal Rules, and would be contrary to the entire spirit of the Federal Rules, which are
designed to ‘secure the just, speedy, and inexpensive determination of every action and
proceeding.’” (D.E. 178, Apple Motion to Strike at 2 (quoting Fed. R. Civ. P. 16).) Apple
argued that if the Court’s deadline for infringement contentions was not treated as “final,” none
of the Court’s deadlines would be meaningful. (D.E. 197, Apple Reply in Support of Motion to
Strike at 1-2 (“[A]ccording to Motorola’s interpretation, the parties need only serve placeholder
opening expert reports by the Court-ordered deadline, but are free to serve their ‘final’ opening
reports later.”).) Rather, Apple insisted, the Court’s schedule “sets a deadline, to which the
parties must adhere.” (Id. at 2.)
-7-
Case No. 1:10cv023580-Civ-RNS-TEB
The same standard that Apple successfully argued for in its motion to strike dictates that
Apple should not be allowed to expand its infringement theories in this case. If anything,
Apple’s amendment would be far more objectionable than Motorola’s supplemental contentions.
There can be no dispute that amendments to pleadings are final after the Court’s deadline passes;
that is explicit in Rule 16 of the Federal Rules. Yet, here, Apple seeks to amend its answer
nearly five months after Motorola submitted its supplemental infringement contentions. Indeed,
Apple still has not provided Motorola with updated infringement contentions setting forth its
new argument. Thus, the rationale for striking Motorola’s contentions as too late would apply
with even greater force to Apple’s new infringement theory.
2.
Apple’s Assertion That It Is Not Adding New Claims Is Belied By Its
Amended Answer
Apple has no support for its contention that it is “not attempting to amend its
infringement contentions” and that “its proposed amendment will not require any additional
discovery.” (D.E. 278, 279, Apple Motion for Leave, at 4.) Apple is introducing a brand new
theory of infringement seeking relief under a whole new statutory provision, 35 U.S.C. § 271(f).
Section 271(f) requires an entirely new analysis that has not been a part of this case. In particular,
Section 271(f) would expand Apple’s infringement contentions to include the following
categories of activities covered by that section of the statute:
(1) Whoever without authority supplies or causes to be supplied in or from
the United States all or a substantial portion of the components of a
patented invention, where such components are uncombined in whole or
in part, in such manner as to actively induce the combination of such
components outside of the United States in a manner that would infringe
the patent if such combination occurred within the United States, shall be
liable as an infringer.
(2) Whoever without authority supplies or causes to be supplied in or from
the United States any component of a patented invention that is especially
made or especially adapted for use in the invention and not a staple article
or commodity of commerce suitable for substantial noninfringing use,
-8-
Case No. 1:10cv023580-Civ-RNS-TEB
where such component is uncombined in whole or in part, knowing that
such component is so made or adapted and intending that such component
will be combined outside of the United States in a manner that would
infringe the patent if such combination occurred within the United States,
shall be liable as an infringer.
35 U.S.C. § 271(f).
To exacerbate matters, Apple has not even explained the basis for its new infringement
theory. According to Apple, it now alleges infringement based on “Motorola’s foreign
infringing activities,” but it does not provide evidence of that claim or explain how these alleged
activities would constitute infringement under Section 271(f). Apple contends that a Motorola
witness, Evan Groat, testified “that Motorola, in some circumstances, installs IPG and other
software by transmitting the software outside of the United States for installation on the accused
STBs.” (D.E. 278, 279, Apple Motion for Leave, at 7.) But the testimony Apple cites actually
has nothing to do with Motorola installing IPGs outside the United States. Thus, at a minimum,
Apple’s new infringement theory would require additional discovery just for Motorola to
ascertain the basis of Apple’s contention. After Motorola ascertains the basis of Apple’s
contention, Motorola likely will require further discovery to defend against Apple’s new
allegations.
C.
Absent Allowing Motorola To Update Its Own Infringement Theories, The
Prejudice To Motorola Requires Denial Of Apple’s Motion
Motorola should not have to contend with a new infringement theory at this late stage in
discovery when it was denied the chance to supplement its own contentions much earlier. Fact
discovery closes in less than a month. By comparison, Motorola’s supplemental infringement
contentions that Apple had stricken as late were submitted in October 2011, and included
extensive detail on the bases for Motorola’s contentions. If Apple would have been prejudiced
by those supplemental infringement contentions, certainly Motorola would be prejudiced here.
-9-
Case No. 1:10cv023580-Civ-RNS-TEB
Brewer-Giorgio v. Producers Video, Inc., 216 F.3d 1281, 1284 (11th Cir. 2000) (confirming that
courts deny leave to amend pleadings to prevent “undue prejudice”); Bryson v. City of Waycross,
888 F.2d 1562, 1567 (11th Cir. 1989) (“Leave to amend may be denied where the opposing party
would be unduly prejudiced by allowance of the amendment.”).
Notwithstanding the prejudice Motorola would suffer as a result of Apple’s proposed
amendment, Motorola advised Apple that it is willing to reach a compromise. Motorola will
withdraw its objections to Apple’s new amended Answer if Motorola is permitted to re-submit
its supplemental infringement contentions, which it originally submitted in October 2011 and
which Apple successfully moved to strike. That compromise would ameliorate the prejudice to
Motorola by placing both parties in the same position with respect to each other’s infringement
theories.
More importantly, allowing both Apple and Motorola simultaneously to update their
infringement theories for the patents in suit would increase judicial efficiency. Resolving all the
infringement claims relating to the patents-in-suit in one litigation rather than have two separate
litigations on the same patents, would be far more efficient and would avoid the possibility of
inconsistent rulings between the litigations.
IV.
CONCLUSION
For the foregoing reasons, Motorola respectfully requests that the Court either grant
Motorola leave to submit supplemental infringement contentions or, in the alternative, deny
Apple’s Motion for Leave to File Amended Answer.
Dated: April 9, 2012
Respectfully submitted,
____/s/ Edward M. Mullins_______________
Edward M. Mullins (Fla. Bar No. 863920)
emullins@astidavis.com
- 10 -
Case No. 1:10cv023580-Civ-RNS-TEB
ASTIGARRAGA DAVIS MULLINS &
GROSSMAN, P.A.
701 Brickell Avenue, 16th Floor
Miami, Florida 33131
Tel.: (305) 372-8282 / Fax: (305) 372-8202
Charles K. Verhoeven*
Charlesverhoeven@quinnemanuel.com
David A. Perlson*
davidperlson@quinnemanuel.com
Cathleen G. Garrigan*
cathleengarrigan@quinnemanuel.com
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Tel.: (415) 875-6600 / Fax: (415) 875-6700
Edward J. DeFranco*
eddefranco@quinnemanuel.com
Raymond N. Nimrod*
raynimrod@quinnemanuel.com
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
Tel.: (212) 849-7000 / Fax: (212) 849-7100
David A. Nelson*
davenelson@quinnemanuel.com
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
500 West Madison Street, Suite 2450
Chicago, Illinois 60661
Tel.: (312) 705-7400 / Fax: (312) 705-7401
Marshall S. Searcy, III*
marshallsearcy@quinnemanuel.com
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
865 South Figueroa Street, 10th Floor
Los Angeles, California 90017-2543
Tel.: (213) 443-3000
*Admitted pro hac vice
Counsel for Plaintiff/Counterclaim-Defendant
- 11 -
Case No. 1:10cv023580-Civ-RNS-TEB
Motorola Solutions, Inc. and Motorola
Mobility, Inc.
- 12 -
Case No. 1:10cv023580-Civ-RNS-TEB
CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on April 9, 2012, 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
attached Service List 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)
- 13 -
Case No. 1:10cv023580-Civ-RNS-TEB
SERVICE LIST
Motorola Mobility, Inc. v. Apple, Inc.
Case No.: 1:10-23580-Civ-UU
United States District Court, Southern District of Florida
Christopher R.J. Pace
christopher.pace@weil.com
Edward Soto
edward.soto@weil.com
Weil, Gotshal & Manges LLP
1395 Brickell Avenue, Suite 1200
Miami, Florida 33131
Tel.: (305) 577-3100 / Fax: (305) 374-7159
Jill J. Schmidt*
jill.schmidt@weil.com
Anne M. Cappella*
anne.cappella@weil.com
Brian C. Chang*
brian.chang@weil.com
Arjun Mehra
arjun.mehra@weil.com
Weil, Gotshal & Manges, LLP
201 Redwood Shores Parkway
Redwood Shores, California 94065-1134
Tel.: (650) 802-3000 / Fax: (650) 802-3100
Samuel F. Ernst*
sernst@cov.com
Christine Saunders Haskett*
chaskett@cov.com
Robert D. Fram*
rfram@cov.com
Chris Martiniak*
cmartiniak@cov.com
Winslow B. Taub*
wtaub@cov.com
Covington & Burling LLP
One Front Street
San Francisco, California 94111-5356
Tel.: (415) 591-6000 / Fax: (415) 591-6091
Robert T. Haslam*
rhaslam@cov.com
Covington & Burling LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, California 94065
Tel.: (650) 632-4700 / Fax: (650) 632-4800
Mark G. Davis*
Mark.davis@weil.com
Weil, Gotshal & Manges LLP
1300 Eye Street, NW, Suite 900
Washington, DC 20005
Telephone: (202) 682-7000
Facsimile: (202) 857-0940
Elena M. DiMuzio*
edimuzio@cov.com
Covington & Burling LLP
One Front Street
San Francisco, California 94111
Tel.: (415) 591-6000 / Fax: (415) 591-6091
*Admitted pro hac vice
Christopher K. Eppich*
ceppich@cov.com
Covington & Burling LLP
9191 Towne Centre Drive, 6th Floor
San Diego, California 92122
Tel.: (858) 678-1800 / Fax: (858) 678-1600
- 14 -
Case No. 1:10cv023580-Civ-RNS-TEB
Matthew D. Powers*
matthew.powers@tensegritylawgroup.com
Steven S. Cherensky*
steven.cherensky@tensegritylawgroup.com
Tensegrity Law Group LLP
201 Redwood Shores Parkway, Suite 401
Redwood Shores, California
Telephone: (650) 802-6000
Facsimile: (650) 802-6001
- 15 -
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?