Motorola Mobility, Inc. v. Apple, Inc.
Filing
361
MOTION to Amend/Correct (84 in 1:12-cv-20271-RNS) Scheduling Order,,, MEMORANDUM OF LAW AND MOTION TO AMEND THE PROCEDURAL SCHEDULE by Apple Inc.. Responses due by 10/29/2012 (Attachments: # 1 Text of Proposed Order, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11)Associated Cases: 1:12-cv-20271-RNS, 1:10-cv-23580-RNS(Pace, Christopher)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
Case No. 1:12-cv-20271-RNS
MOTOROLA MOBILITY, INC.,
Plaintiff,
v.
JURY TRIAL DEMANDED
APPLE INC.,
Defendant.
Consolidated Cases:
Case No. 1:10-cv-23580-RNS
Case No. 1:12-cv-20271-RNS
APPLE INC.,
Counterclaim Plaintiff,
v.
MOTOROLA MOBILITY, INC.
Counterclaim Defendant.
APPLE’S MEMORANDUM OF LAW AND MOTION
TO AMEND THE PROCEDURAL SCHEDULE
A.
Deadline for Rebuttal Contentions and Markman Briefing
Pursuant to the Court’s September 5, 2012 Order Granting Joint Motion To Amend
Scheduling Order, D.E. 130, Apple Inc. and Motorola Mobility, Inc. are scheduled to exchange
infringement contentions on November 7, 2012 and invalidity contentions on December 5, 2012.
The parties believe that additional deadlines should be added to the Court’s May 14, 2012
Amended Scheduling Order, D.E. 84, for exchanging additional contentions and for facilitating
claim construction for the new patents asserted in Case No. 1:12-cv-20271.1 The parties have
met and conferred and have agreed on the following additional deadlines:
Case Event
Exchange Non-infringement, Validity, & Secondary Consideration Contentions
Exchange Proposed Constructions (including extrinsic and intrinsic evidence)
File Proposed Joint Claim Constructions
Opening Markman Brief
Reply Markman Brief
Deadline
Jan. 24, 2013
Feb. 12, 2013
Mar. 2, 2013
Mar. 5, 2013
Mar. 26, 2013
Accordingly, Apple respectfully requests that the Court amend its scheduling order to add these
additional deadlines. No other deadlines set forth in the Court’s May 14, 2012 Amended
Scheduling Order would be affected by this change.
Additionally, both Apple and Motorola agree that the procedural schedule should be
amended to add a deadline for exchanging claim terms for construction, but the parties have been
unable to reach an agreement on such a date. Motorola initially proposed February 12, 2013 as
the deadline, but Apple counter-proposed February 4, such that the exchange of terms would
precede the exchange of constructions. Inexplicably, Motorola responded by proposing January
11, which is one month earlier than its original proposal and on a date prior to the parties’
exchange of rebuttal and secondary considerations contentions.
Apple thus requested that
Motorola reconsider and accept Apple’s proposed February 4 deadline, but the parties were
unable to reach agreement as of the time of Apple’s motion. Apple thus respectfully requests
that the Court further modify the procedural schedule to add February 4 as the deadline for
exchanging terms for construction.
1
Claim construction for the patents asserted in Case No. 1:10-cv-23580 has already occurred.
2
B.
Deadline for Accusing Newly Released Products
In addition to the schedule set forth above, Apple respectfully requests that the Court set
the November 7, 2012 infringement contentions deadline as the deadline for accusing newly
released products in this case. As indicated in the parties’ Joint Motion to Amend the Procedural
Schedule, D.E. 129, Apple had proposed to Motorola a framework for limiting the addition of
new products. Unfortunately, despite repeated attempts by Apple for an agreement on a possible
cutoff date earlier than trial, Motorola refused to agree to any such deadline, maintaining that the
parties should be permitted to add new products through the close of fact discovery and even
through the beginning of trial. See Exhibit 1 (Sept. 17, 2012 E-Mail from R. Vlasis to M.
Searcy) (providing Motorola a deadline for a counterproposal for limiting new products); Exhibit
2 (Sept. 5, 2012 Letter from R. Vlasis to M. Searcy) (requesting a meet-and-confer with
Motorola concerning a deadline for adding new products); Exhibit 3 (Aug. 31, 2012 E-Mail from
J. Schmidt to M. Searcy with attachments) (Apple memorializing that the parties had agreed to
extend the contentions deadline in exchange for Motorola’s agreement to negotiate a framework
for adding new products); Exhibit 4 (Aug. 27, 2012 E-Mail from R. Vlasis to M. Searcy)
(concerning unreasonableness of Motorola’s position on adding new products); Exhibit 5 (Aug.
21, 2012 E-mail from M. Searcy to M. Davis) (Motorola stating that no deadline is necessary);
Exhibit 6 (Aug. 15, 2012 E-Mail from R. Vlasis to M. Searcy) (Apple proposing a deadline for
adding new products); Exhibit 7 (Aug. 6, 2012 E-Mail from J. Schmidt to M. Searcy) (Apple
proposing language for a stipulation for adding new products); Exhibit 8 (Aug. 2, 2012 E-Mail
from J. Schmidt to M. Searcy) (Apple memorializing the parties’ discussion of a deadline for
adding new products).
3
1.
Motorola’s Position Would Severely Disrupt the Proceedings
Motorola’s position is unfeasible—both parties need a cutoff early enough in the case so
that fact discovery, expert discovery, and pre-trial preparations can proceed in an orderly fashion.
First, expanding the case by allowing Motorola to add new products through the trial would
severely disrupt fact discovery. The addition of a new product to this case requires, at a
minimum:
•
preparation of supplemental infringement and rebuttal contentions;
•
collection, review, and production of documents concerning the new product;
•
identification, review, and production of source code concerning the product;
•
identification and deposition of technical witnesses concerning the product (which
can require deposing people who have already been deposed at least once);
•
supplementation of technical expert reports, along with re-deposition of such
experts on the subject matter of such supplementation; and
•
revisions to damages reports and associated re-deposition of related experts.
None of these exercises is trivial. The ongoing litigation between Apple and Motorola has
already involved the collection, review, and production of millions—if not tens of millions—of
pages of documents. The document collection and production exercise is highly burdensome on
Apple and its employees, and restarting the exercise for each new product added requires
countless hours of work by numerous employees.
Having no limit on adding new products would also likely require re-deposing numerous
witnesses and identifying and deposing new witnesses with knowledge of the new products. To
date, the parties have taken well over 100 depositions across their various litigations; Motorola’s
position would further compound this discovery. Having no deadline for adding new products
4
would also likely involve further motion practice, as the parties would no doubt seek judicial
relief over supplemental discovery disputes. In short, the discovery process would begin anew
with each new product added, requiring countless new document collections and productions,
new document reviews, and new depositions, as well as supplemental responses to
interrogatories and document requests. The discovery process is highly disruptive to Apple’s
business, is enormously expensive, and must be limited in some fashion to avoid continual
disruption.
Motorola’s proposal would also spawn endless supplementation of expert reports and
repeated deposing of experts to address their new opinions. To end this process, Judge Richard
Posner recently stated in another litigation between Apple and Motorola that “[t]he parties have
not shown that such supplementation is necessary (or that it could be done in such a way as to
avoid spawning further supplementation requests—a supplementation death spiral). . . .” Apple
v. Motorola, No. 1:11-cv-08540, Slip Op. at 1 (N.D. Ill. Apr. 16, 2012), attached as Exhibit 9
(denying motions for leave to supplement expert reports). Absent intervention by Judge Posner,
as here, this “death spiral” would inevitably lead to further disagreements and motion practice
about whether a party may supplement and whether such supplementation was limited to new
products or inappropriately revisited earlier opinions on existing products.
Finally, unfettered supplementation would also disrupt pretrial preparation and would
likely result in distracting supplemental fact and expert discovery at a time when the parties need
to be focusing on trial preparation. Indeed, many of the pretrial submissions would undoubtedly
need to be supplemented. Similarly, there is an increased chance of last-minute pretrial motion
practice regarding the new products because, for example, new grounds for motions in limine
5
may arise, and the parties may need to seek judicial relief regarding which new issues may be
tried. Finally, permitting a limitless addition of new products could potentially result in a party
asserting new claims, which not only would involve all of the further supplementation and
disruption outlined above, but would also require new invalidity contentions and Markman
proceedings, compounding the proceedings even further.
2.
District Courts Have Rejected Motorola’s Position
For all of these reasons—and in particular for judicial economy—courts have rejected
supplementation of infringement contentions for new products.
For example, in Avocent
Redmond Corp. v. Rose Electronics, the district court denied the plaintiff’s motion to add new
products that the defendant had released during a four-year stay of the proceedings and granted
the defendant’s motion to strike related contentions from the plaintiff’s expert report, even
though the close of discovery was still over a month away. 2012 U.S. Dist. LEXIS 102386 at *1,
*7 (W.D. Was. July 6, 2012). The court found unreasonable delay in the plaintiff’s motion but
also reasoned:
Because plaintiff could file a separate action asserting the new
infringement contentions, the Court has also considered issues of
judicial efficiency and economy under Fed. R. Civ. P. 1. This
action has been pending for six years, and the expansion of the
case to cover more products than can possibly be tried efficiently
is counterproductive. . . . There is . . . no need to multiply and
disrupt these proceedings at the very end of discovery simply to
avoid the possibility of a new lawsuit.
Id. at *10 (emphasis added). Equally applicable here, “[a] party alleging patent infringement has
a relatively short time in which to set forth infringement contentions: the short deadline is
designed ‘to streamline the pre-trial and claim construction process, and generally to reduce the
cost of patent litigation.’” Id. at *5; see also Lake Cherokee Hard Drive Techs., LLC v. Bass
6
Computers, Inc., 2012 U.S. Dist. LEXIS 91364 at *10 (E.D. Tex. June 29, 2012) (allowing
plaintiff to supplement contentions for additional products but ordering that infringement
contentions could not be supplemented thereafter even though the trial was over a year away);
Eon Corp. IP Holdings, LLC v. T-Mobile USA, Inc., 2012 U.S. Dist. LEXIS 92450 at *22 (E.D.
Tex. Jan. 24, 2012) (ordering plaintiff to remove references to new products in amended
infringement contentions that were not previously identified in infringement contentions).
3.
Motorola Offers No Credible Reason for Its Position
While Apple agrees that the parties should be permitted to accuse new products released
after the parties filed their respective complaints, Apple respectfully submits that such
supplemental contentions must have a reasonable boundary to ensure that this case proceeds as
efficiently as possible. In this regard, though Apple attempted repeatedly to encourage Motorola
to make a counterproposal on the deadline for adding new products, Motorola declined, stating
that adding a deadline for accusing new products would lead to an undesirable “multiplicity of
suits” between Apple and Motorola. See Exhibit 5. Not only has this position been recently
rejected by the district court in Avocent Redmond, but just four days prior to providing that
position, Motorola’s attorneys filed two additional lawsuits against Apple in the District of
Delaware and at the U.S. International Trade Commission, alleging infringement of seven
additional Motorola patents and further expanding the vast and prolonged litigation between
Apple and Motorola.2,3 See Exhibits 10-11 (Motorola’s August 17, 2012 Complaint in the U.S.
2
In addition to the instant case, Motorola and Apple have other litigations pending before the
Federal Circuit, the ITC, and the Western District of Wisconsin, as well as in Germany.
7
District of Delaware; Motorola’s August 17, 2012 Complaint in the U.S.I.T.C.).
Thus,
Motorola’s refusal to cooperate with Apple in setting a deadline for adding new products based
on the desire to limit the litigation between the parties is unfounded.
Motorola has provided no other reason for refusing to set a deadline, other than stating
that both parties are scheduled to release products this fall. See Exhibit 5. In this regard,
Apple’s requested November 7, 2012 deadline is after Apple’s release of its latest generation
iPhone, iPod, and iOS products; Motorola’s concern about adding these products to the case is
therefore moot. Apple thus respectfully requests that the Court set November 7, 2012 as the
deadline for accusing new products in this case.
C.
Rule 7.1(a)(3) Certification
Counsel for Apple has conferred with counsel for Motorola in a good faith effort to
resolve the issues raised in this motion. Apple and Motorola have reached agreement for adding
various dates to the procedural schedule, as set forth in the table in Section A of this motion. But
Apple and Motorola were unable to reach agreement concerning a deadline for exchanging terms
for construction and for adding new products to this case.
3
On October 1, 2012, Motorola filed an unopposed motion to terminate the new ITC
investigation, dismissing all claims against Apple.
8
Dated: October 11, 2012
Respectfully submitted,
/s/ Christopher R. J. Pace
Christopher R. J. Pace
christopher.pace@weil.com
Weil, Gotshal & Manges LLP
1395 Brickell Avenue, Suite 1200
Miami, Florida 33131
Tel: (305) 577-3100 / Fax: (305) 374-7159
Kenneth H. Bridges
kbridges@bridgesmav.com
Michael T. Pieja
mpieja@bridgesmav.com
3000 El Camino Real, 2nd Floor
Palo Alto, CA 94306
(650) 804-7800
Of Counsel:
Mark G. Davis
mark.davis@weil.com
Weil, Gotshal & Manges LLP
1300 Eye Street, N.W., Suite 900
Washington, DC 20005
(202) 682-7000
Matthew D. Powers
Matthew.Powers@tensegritylawgroup.com
Steven Cherensky
Steven.Cherensky@tensegritylawgroup.com
Tensegrity Law Group LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
(650) 802-6000
Anne M. Cappella
anne.cappella@weil.com
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
(650) 802-3000
Attorneys for Apple Inc.
9
CERTIFICATE OF SERVICE
I hereby certify that on October 11, 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 identified on the Service List via transmission of
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.
Consolidated Case Nos. 1:12cv020271-Civ-RNS & 1:10cv235800Civ-RNS
United States District Court, Southern District of Florida
Edward M. Mullins
Fla. Bar No. 863920
emullins@astidavis.com
ASTIGARRAGA DAVIS MULLINS & GROSSMAN, P.A.
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Telephone: (305) 372-8282
Facsimile: (305) 372-8202
Of Counsel:
Charles K. Verhoeven
David A. Perlson
QUINN EMANUEL URQUHART & SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 93111
(415) 875-6600
Raymond N. Nimrod
Edward J. DeFranco
QUINN EMANUEL URQUHART & SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
(212) 849-7000
David A. Nelson
QUINN EMANUEL URQUHART & SULLIVAN, LLP
500 West Madison Street, Suite 2450
Chicago, IL 60661
(312) 705-7400
Moto-Apple-SDFL@quinnemanuel.com
Attorneys for Motorola Mobility, Inc.
Electronically served via CM/ECF and next day Hand-Delivery
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