Motorola Mobility, Inc. v. Apple, Inc.
Filing
323
MOTION to Amend/Correct the Procedural Schedule by Apple, Inc.. Responses due by 5/4/2012 (Attachments: # 1 Affidavit Declaration of Mark G. Davis, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Supplement Notice of Filing Under Seal, # 10 Text of Proposed Order Proposed Order Granting Motion to Amend Procedural Schedule)(Pace, Christopher)
EXHIBIT G
From:
Sent:
To:
Mehra, Arjun
Monday, April 16, 2012 3:36 PM
John Duchemin (johnduchemin@quinnemanuel.com); Moto-AppleSDFL@quinnemanuel.com
applecov@cov.com; Weil_TLG Apple Moto FL External
Motorola v. Apple (FL): Motorola's supplemental invalidity contentions
Cc:
Subject:
John,
I write regarding the supplemental invalidity contentions served by Motorola on March 30. With respect to the new
Bennington '185 reference that Motorola has added, we believe this supplementation lacks the required specificity and
is deficient in the following ways.
Besides a general statement that "Bennington '185 invalidates each and every claim of [the STB patents] under
35 U.S.C. §§ 102 and/or 103," Motorola does not provide any specifics as to its invalidity theory. Please state
with specificity invalidity theories (e.g., anticipation or obviousness) behind Motorola's assertion of the '185
reference as prior art to the STB patents.
Motorola has not identified any § 103 combinations in its claim chart for Bennington '185. Motorola must
identify any such combinations with specificity, including the specific combination. Otherwise, Motorola must
remove the reference to § 103 from Motorola's invalidity contentions pertaining to the '185 reference.
Motorola states that Bennington '185 has a conception date of "no later than January 1992" and a reduction to
practice date of "no later than September 1992." Motorola must identify the conception and reduction to
practice dates it is relying on. In addition, this response is inadequate because Motorola does not specify which
documents, if any, it relies on as support for these dates other than "inventor declarations filed with the U.S.
Patent & Trademark Office," nor does it identify the content it intends to rely on within each document. Please
confirm that Motorola is only relying on "inventor declarations" as the basis for the alleged conception and
reduction to practice dates for the '185 reference. If not, Motorola must identify the documents it intends to
rely on as support for the alleged conception and reduction to practice dates for the '185 reference with
specificity, including the Bates numbers and the relevant content.
With respect to the newly asserted references against the '849 patent, Motorola has similarly failed to point out with
specificity which § 103 combination(s) are alleged to invalidate the asserted claims and the motivation to combine those
references.
If Motorola does not amend its contentions, Apple will oppose the subsequent use of any other invalidity theories not
identified in Motorola's invalidity contentions.
Best,
Arjun
1
Arjun H. Mehra
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
arjun.mehra@weil.com
+1 650 802 3915 Direct
+1 650 802 3100 Fax
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