Motorola Mobility, Inc. v. Apple, Inc.
Filing
362
REPLY to Response to Motion re (361 in 1:10-cv-23580-RNS) MOTION to Amend/Correct (84 in 1:12-cv-20271-RNS) Scheduling Order,,, MEMORANDUM OF LAW AND MOTION TO AMEND THE PROCEDURAL SCHEDULE filed by Apple Inc.. (Attachments: # 1 Exhibit 1 - Current iPhone Models, # 2 Exhibit 2 - Current Motorola Phones for Sale, # 3 Exhibit 3 - 8/21/12 Email from Searcy to Davis, # 4 Exhibit 4 - 8/15/12 Email from Vlasis to Searcy, # 5 Exhibit 5 - 9/17/12 Email from Searcy to Vlasis, # 6 Exhibit 6 - 9/14/12 Email from Searcy to Vlasis, # 7 Exhibit 7 - 9/24/12 Email from Vlasis to Searcy, # 8 Exhibit 8 - 10/1/12 Email from Vlasis to Searcy, # 9 Exhibit 9 - 10/5/12 Email from Vlasis to Searcy, # 10 Exhibit 10 - 10/8/12 Email from Vlasis to Searcy, # 11 Exhibit 11 - 10/9/12 Email from Davis to Vlasis, # 12 Exhibit 12 - 10/11/12 Email from Vlasis to Davis, # 13 Exhibit 13 - 10/11/12 Email from Davis to Vlasis, # 14 Exhibit 14 - 10/16/12 Letter from Bonifield to Vlasis)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 REPLY IN SUPPORT OF ITS MOTION
TO AMEND THE PROCEDURAL SCHEDULE
A.
Deadline for Accusing Newly Released Products
As set forth in Apple’s motion, an early deadline for accusing new products is critical to
avoid the procedural uncertainties and unnecessary discovery complications that would arise late
in the case were the parties permitted to add new products up through the 2014 trial. Both Apple
and Motorola stand to benefit from having a clear deadline because Motorola introduces
substantially more products at a more frequent pace than does Apple. For example, Apple
typically releases only one smartphone per year, with only three versions currently on sale. See
Exhibit 1 (http://store.apple.com/us/browse/home/shop_iphone/family/iphone, Apple Store
website showing three models for sale). In contrast, Motorola currently offers twenty-two
models for sale.
See Exhibit 2 (http://www.motorola.com/us/consumers/Smartphones/smart-
phones,en_US,sc.html, Motorola website).
The volume of products at issue is already
substantial, and the infringement issues are complex; thus, the jury will already have a significant
number of infringement allegations to decide. Increasing these issues by allowing the parties to
continually add new products without limit will complicate the jury’s role even further. As the
district court recently noted in Avocent, a boundary should be set for adding new products not
only to conserve the parties’ resources but for judicial economy as well. Avocent Redmond
Corp. v. Rose Electronics, 2012 U.S. Dist. LEXIS 102386 at *10 (W.D. Was. July 6, 2012).
Motorola complains that Apple’s requested cutoff for adding new products to the case is
arbitrary and too early, but not once during the parties months of negotiations did Motorola make
a counterproposal with a different deadline for adding new products, stating instead that no
deadline was necessary at all. Motorola cannot dispute, however, that adding new products at
the end of discovery or thereafter could be severely disruptive as set forth in Apple’s motion.
Motorola surmises that any new products “likely will be very similar to or identical to a
previously accused product with respect to the functionality at issue for a particular patent-insuit.” Motorola’s Response at 12. But neither party can present their infringement theories
based on a hunch or suspicion and would no doubt request substantial additional documents,
witnesses, and expert discovery at a time when the parties should be focusing on other matters.
Motorola also suggests that it was confused by Apple’s motion because Motorola was
expecting Apple to provide Motorola with a new proposal for limiting new products. See
2
Motorola’s Response at 8 n.1. Motorola’s confusion is misplaced. As Apple stated in its
motion, Apple pushed Motorola for its position on multiple telephonic meet-and-confers, and in
multiple exchanges of correspondence.1 Indeed, Apple first proposed a deadline in August and
met and conferred with Motorola in good faith for over a month. But Motorola would neither
agree to Apple’s proposal nor provide any counterproposal, instead stating: “Our position is
simply that there is no need to set a firm date for parties to accuse products released before trial
in this matter at this time. . . . Nor is there any reason to restrict appropriate and reasonable
supplementation of infringement contentions after the parties’ exchange initial contentions and
before the beginning of trial in April 2014.” Exhibit 3 (Aug. 21 E-Mail from M. Searcy to M.
Davis). Motorola stated repeatedly in response to Apple’s proposals that the parties should be
permitted to add new products through trial; Motorola cannot now claim confusion over the
timing of Apple’s motion or whether Apple would be making further proposals for a potential
deadline for adding new products.2 Indeed, the parties were not progressing in their negotiations;
1
Motorola incorrectly summarizes the negotiations between the parties when it states that
Apple’s request for a specific cutoff date is a “recent development” that came “[o]nly recently,
when Apple decided to release new products this fall that it would like to insulate from this case.
. . . ” Motorola’s Response at 13, n.2. In fact, Apple first proposed a specific cutoff date over
two months ago on August 15, and Apple’s proposed cutoff date was after the scheduled release
of the iPhone 5, iOS 6, and the new iPod. See Exhibit 4 (Aug. 15, 2012 E-Mail from R. Vlasis to
M. Searcy). In its motion, Apple pushed out the proposed cutoff date by a month based on
Motorola’s delay in providing Apple with a counterproposal. The new date that Apple has
proposed, November 7, is likewise after the rumored release date of the new product identified in
Motorola’s response to Apple’s motion.
2
Apple waited nearly a month to file its motion after the parties reached an impasse on this issue
because the parties were also negotiating a schedule for Markman briefing; Apple did not wish to
3
Apple thus needed to seek guidance from the Court and informed Motorola of Apple’s intention
to do so. Exhibit 5 (Sept. 17, 2012 E-Mail from R. Vlasis to M. Searcy, stating that “Apple
intends to seek relief from Judge Scola on this issue”).
Motorola next states that Apple’s motion should be denied because Apple is scheduled to
release new products this Fall, citing an October 23 release date reported by the New York Times.
Apple’s proposed deadline of November 7 is obviously after the rumored release date of the new
Apple products; Motorola’s concern is thus moot. Moreover, Apple was willing to negotiate a
mutual deadline for adding new products to the case to accommodate Motorola’s concerns, but
Motorola refused to provide any counterproposal.
Motorola relies on WebXchange for its contention that “district courts regularly permit
parties to accuse new products of infringement after initial infringement contentions are
exchanged.”
Motorola’s Response at 9.
But in WebXchange, the court did not permit
supplemental infringement contentions for new products. Instead, a dispute arose over whether
the plaintiff’s infringement contentions contained references to a certain class of products, and if
not, whether those products could be accused. WebXchange, Inc. v. FedEx Corp., 2010 U.S.
Dist. LEXIS 4528 at *2-*3, *6-*7 (D. Del. Jan. 20, 2010). The court did not resolve the issue as
to whether the class of products were initially accused, stating instead that there was “minimal
prejudice and surprise . . . . The parties have discussed the issue extensively which eliminates
any unfounded surprise.” Id. at *6-*7. WebXchange is thus inapposite.
Motorola’s reliance on Atmel is likewise misplaced.
There, the defendant did not
bother the Court with two motions and had hoped to reach agreement with Motorola on at least
some of the contested dates.
4
disclose products under development, believing that there could be no liability under the patent
laws. Atmel Corp. v. Authentec, Inc., 2008 WL 276392 at *3 (N.D. Cal. Jan. 31, 2008). After a
witness testified that samples of the product had already been developed, the judge allowed the
plaintiff to amend its infringement contentions. Id. at *3. But the defendant did not assert a
defense that adding the additional products would cause the type of discovery problems that
Apple has asserted, and in fact, the defendant represented that it had already provided full
discovery on the new products at issue. Id. Atmel does not, therefore, support Motorola’s
position.
Similarly, in Network Appliance, the court concluded without analysis that the
defendant would suffer no prejudice by allowing the plaintiff to accuse new products; there is
otherwise no indication that the addition of new products would disrupt the proceedings.
Network Appliance Inc. v. Sun Microsystems Inc., 2009 WL 2761924 (N.D. Cal. 2009). The
same is true in TiVo, where extensive discovery of the new product had already taken place for a
year leading up to the plaintiff’s motion. TiVo, Inc. v. Verizon Communications, Inc. 2012 WL
2036313 at *2 (E.D. Tex. June 6, 2012).
Finally, Motorola’s concern that the parties would have to file new lawsuits against future
products is an issue that exists in every litigation, absent some global settlement. Indeed, after
resolution of this case, both parties would still be forced to file additional lawsuits to resolve
infringement of newly released products.
B.
Deadline for Claim Construction
Motorola requests that the Court deny the portion of Apple’s motion addressing the
proposed claim construction schedule for allegedly being premature and for providing an
inadequate amount of time to negotiate claim terms. Neither position has any merit.
5
First, Motorola fails to mention that the parties had been negotiating the schedule for over
a month, but Motorola refused to respond to Apple for weeks at a time. See Exhibit 6, (Sept. 14
E-Mail from M. Searcy to R. Vlasis, memorializing that the parties began negotiations on
Monday, September 10).
Indeed, after Apple made its counterproposal on September 24,
Motorola waited over two weeks to respond and only after Apple sent three follow-up emails on
October 1, October 5, and October 8, requesting some form of a response from Motorola. See
Exhibit 7 (Sept. 24 E-Mail from R. Vlasis to M. Searcy, providing counterproposal); Exhibit 8
(Oct. 1 E-Mail from R. Vlasis to M. Searcy, requesting a response from Motorola); Exhibit 9
(Oct. 5 E-Mail from R. Vlasis to M. Searcy, requesting again a response from Motorola); Exhibit
10 (Oct. 8 E-Mail from R. Vlasis to M. Searcy, stating that because Motorola had been silent on
the issue for over 3 weeks, Apple would assume that Motorola was no longer willing to reach
agreement); Exhibit 11 (Oct. 9 E-Mail from R. Davis to R. Vlasis, finally providing a response).
When Motorola finally did respond, Motorola surprised Apple by requesting an
additional month to exchange claim terms, without explanation. See Exhibit 11 (Oct. 9 E-Mail
from R. Davis to R. Vlasis, finally providing a response). Apple requested that Motorola
reconsider its position, but Motorola vaguely stated only that it would respond when it was
“able.”3 See Exhibit 12 (Oct. 11 E-Mail from R. Vlasis to R. Davis); See Exhibit 13 (Oct. 11 EMail from R. Davis to R. Vlasis). Motorola’s continuous stalling of the parties’ negotiations left
Apple with no choice but to seek relief from the Court; indeed, the 30-day deadline for Apple to
3
In spite of Motorola’s allegation that “Apple insisted that Motorola indicate its consent to
Apple’s proposal in less than 12 hours,” Motorola had over two weeks to consider Apple’s
proposal. See Motorola’s Response at 5.
6
file a motion for a cutoff date for adding new products was quickly approaching, and Apple did
not wish to bother the Court with two separate motions to amend the procedural schedule. And
even after Apple filed its motion, Motorola sent Apple a letter on October 16 continuing to insist
upon January 11 as the date for exchanging claim terms. See Exhibit 14 (Oct. 16 Letter from G.
Bonifield to R. Vlasis). Motorola thus continued (and still continues) to take the same position it
took before Apple filed its motion in spite of Apple’s request that Motorola reconsider; there can
thus be no dispute that the parties indeed reached an impasse on this issue.
Motorola’s purported concerns about the merits of the schedule are equally baseless.
Indeed, Motorola forgets that it never once raised any concern that Apple’s schedule was
inadequate; to the contrary, Apple’s schedule provided the parties with more time than what
Motorola had initially proposed.
Specifically, Motorola initially proposed a February 12
deadline for the term exchange, which was a month later than the position Motorola takes now.
See Exhibit 6, (Sept. 14 E-Mail from M. Searcy to R. Vlasis, proposing February 12 for the claim
term exchange). It was not until Apple filed its motion that Motorola stated that the parties
needed additional time to prepare their briefs and to reduce the number of terms. See Exhibit 14
(Oct. 16 Letter from G. Bonifield to R. Vlasis). Motorola could have raised these concerns
during the parties’ discussions, but Motorola chose not to do so.
Motorola’s newly proposed January 11 deadline is unnecessarily early in the case, and
the parties should not be burdened with identifying terms for construction before they have
completed exchanging their contentions. In any event, Motorola is represented by experienced
and sophisticated counsel; Apple has full confidence that its proposed schedule will provide the
parties with ample time to prepare their briefs and narrow the claim terms. Apple therefore
7
respectfully requests that its motion to amend the procedural schedule be granted.
Dated: October 22, 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.
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CERTIFICATE OF SERVICE
I hereby certify that on October 22, 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
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