Motorola Mobility, Inc. v. Apple, Inc.

Filing 325

RESPONSE/REPLY in Support of its Motion for Leave to File Amended Answer by Apple, Inc.. (Pace, Christopher)

IN THE UNITED STATES DISTRICT COURT
FOR THE 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.

APPLE INC.’S REPLY IN SUPPORT OF ITS MOTION
FOR LEAVE TO FILE AMENDED ANSWER

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I.

INTRODUCTION
Notably absent from the opposition brief filed by Motorola Mobility, Inc.

(“Motorola”) is any attempt to address the fact that Apple Inc. (“Apple”) adequately pled a
“violation of 35 U.S.C § 271” in its answer, see D.E. 68 at ¶¶ 185, 191 & 197, and that the
proposed amendments merely add clarifying language to confirm Apple’s infringement theories
under § 271(a), (b), (c), and/or (f). Motorola also does not—and cannot—dispute that Apple
could not have alleged infringement under § 271(f) theory with specificity earlier because
Motorola had not provided any discovery regarding its foreign infringing activities prior to
February 28, 2012. Instead, Motorola argues that the Court should allow Apple’s amended
pleading only if it also allows Motorola to supplement its infringement contentions with the
accused Apple products previously excluded by Judge Ungaro’s December 6, 2012 Order
granting Apple’s motion to strike. D.E. 198. Yet, as Apple explained in its opening brief (and to
Motorola during the meet and confer process, see Ho Exh. F), the situations are not analogous.
II.

ARGUMENT
Motorola does not dispute that the method and location of installing interactive

programming guides (“IPGs”) on the accused set-top boxes (“STBs”) is not the type of
information that is publicly available. Motorola similarly does not dispute that it has actively
resisted providing the discovery requested by Apple. Indeed, it was only through the February
28, 2012 deposition of Evan Groat that Apple first learned that Motorola’s installation of IPG
software on its set-top boxes STBs may occur outside the United States, in violation of 35 U.S.C.
§ 271(f).

For this reason alone, good cause exists to allow Apple’s proposed amendment

because the underlying evidence could not have been discovered earlier, despite Apple’s exercise
of reasonable diligence, and Apple promptly sought to amend its pleading as soon as it had a
factual basis to specifically allege infringement under § 271(f).
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Motorola’s offer to withdraw its objections to Apple’s amended pleading if the
Court allows Motorola to amend its infringement contentions is simply another attempt to end
run around Judge Ungaro’s prior Order.1 Unlike Motorola, Apple is not attempting to amend its
infringement contentions or add any new accused products. Regardless of whether Motorola’s
infringement occurs within the United States or abroad, Apple’s contentions regarding the
functionalities of the accused Motorola STBs are the same.

At most, Apple’s proposed

amendment will require Motorola to provide more damages-related discovery, but only because
Motorola has been improperly withholding financial data related to sales of accused STBs for
which the installation of IPGs occurs abroad. In contrast, Motorola’s proposed amendment of its
infringement contentions not only seeks to open the door to discovery regarding completely new
products, but also new theories regarding the accused functionalities in those products. It would
be impossible for Apple to gather, review, and produce all the responsive documents and source
code or make all its witnesses available for deposition within the current discovery period, which
is scheduled to end on May 4, 2012. Moreover, Apple would need to conduct an internal
investigation to determine which witnesses could testify concerning the newly accused products
and functionalities. In some cases, these might be the same witnesses who have already been
deposed by Motorola, but in others, it might take weeks to determine who the most
knowledgeable individuals are.
III.

CONCLUSION
For the reasons stated above and in Apple’s opening brief, Apple respectfully

requests that the Court grant it leave to amend its answer.
1

While Apple does not agree to the lopsided horse-trade proposed by Motorola, Apple proposes
consolidating the two actions pending before this Court and extending the procedural schedule to
allow sufficient time for the discovery needed on the newly accused products. If the Court
grants Apple’s Motion to Amend the Procedural Schedule, D.E. 323, this motion (and
Motorola’s objections thereto) would be rendered moot.
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DATED: April 18, 2012

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
Telephone: [phone]
Facsimile: 650-802-6001
Mark G. Davis
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1300 Eye Street, N.W., Suite 900
Washington, DC 20005
Telephone: [phone]
Facsimile: [phone]
Anne M. Cappella
[e-mail]
Jill J. Schmidt
[e-mail]
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
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]
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 April 18, 2012, I electronically filed the foregoing
document with the Clerk of the Court using CM/ECF. I also certify that the foregoing document
is being served this day on all counsel of record or pro se parties identified on the attached
Service List in the manner specified, either via transmission of Notices of Electronic Filing
generated by CM/ECF or in some other authorized manner for those counsel or parties who are
not authorized to received electronically Notices of Electronic Filing.

/s/ Christopher R. J. Pace
Christopher R. J. Pace (Fla. Bar No. 0721166)

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SERVICE LIST
Motorola Mobility, Inc. versus Apple Inc.
Case No. 1:10cv023580-Civ-RNS
United States District Court, Southern District of Florida

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]
Of Counsel:
Charles K. Verhoeven
David A. Perlson
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. and Motorola, Inc.
Electronically served via email

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