Anascape, Ltd v. Microsoft Corp. et al

Filing 262

RESPONSE in Support re 226 SEALED PATENT MOTION for Leave to Amend Their Invalidity Contentions Under P.R. 3-6(b), or, in the Alternative, Under P.R. 3-6(a) SEALED PATENT MOTION for Leave to Amend Their Invalidity Contentions Under P.R. 3-6(b), or, in the Alternative, Under P.R. 3-6(a) SEALED PATENT MOTION for Leave to Amend Their Invalidity Contentions Under P.R. 3-6(b), or, in the Alternative, Under P.R. 3-6(a) filed by Microsoft Corp., Nintendo of America, Inc.. (Attachments: # 1 Affidavit Richard D. Mc Leod# 2 Exhibit 12)(Toddy, Derrick)

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Anascape, Ltd v. Microsoft Corp. et al Doc. 262 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS LUFKIN DIVISION ANASCAPE, LTD. Plaintiff, v. MICROSOFT CORPORATION, and NINTENDO OF AMERICA, INC., Defendants. Hon. Ron Clark Civil Action No. 9:06-CV-00158-RC REPLY IN SUPPORT OF DEFENDANTS' MOTION TO AMEND THEIR INVALIDITY CONTENTIONS REPLY IN SUPPORT OF DEFENDANTS' MOTION TO AMEND THEIR INVALIDITY CONTENTIONS Dockets.Justia.com I. INTRODUCTION In its response ("Resp.," Dkt. 251) to Defendants' motion to amend their invalidity contentions ("Mot.," Dkt. 226), Anascape continues to hold up its own reticence in providing timely formal supplementation of its contentions as a justification for preventing Defendants from formally amending their invalidity contentions. Nevertheless, good cause to amend exists since, among other things, Anascape does not dispute, and cannot dispute, the importance of the references at issue, including the "Two-rific" article which discloses the Dual Shock 2 controller from Sony (a licensee of Anascape) that was painstakingly mapped in Defendants' initial invalidity contentions. In addition, Anascape has not and cannot show any unfair prejudice with respect to any prior art references at issue, as set forth in detail below. II. AMENDMENT AS OF RIGHT: IF ANASCAPE'S ATTEMPTED AMENDMENTS TO ITS INFRINGEMENT CONTENTIONS ARE ALLOWED TO STAND, DEFENDANTS ARE ENTITLED TO AMEND UNDER P.R. 3-6(a) For the reasons set forth in Defendants' motion, Anascape's attempted amendments to its infringement contentions, if allowed to stand, entitle Defendants to amend their invalidity contentions as a matter of right. (See Motion at 9-10.) Specifically, Anascape has attempted at a late hour, to amend its contentions to: Change its claimed priority date, thus opening up an additional four years of invalidating prior art; Change its theory of infringement for certain claims in the case, changing the scope of prior art that anticipates the asserted claims; and Change the "instrumentalities" it asserts demonstrate infringement. These amendments, if allowed to stand, entitle Defendants to amend as a matter of right under P.R. 3-6(a). REPLY IN SUPPORT OF DEFENDANTS' MOTION TO AMEND THEIR INVALIDITY CONTENTIONS Page 1 III. GOOD CAUSE AMENDMENT: EVEN IF THE COURT EXCLUDES PLAINTIFF'S LATE AMENDMENTS, DEFENDANTS HAVE GOOD CAUSE TO AMEND UNDER P.R. 3-6(b) Anascape does not dispute that Defendants were diligent in supplementing their contentions after the need to disclose the new matter became apparent. (See, Resp. p. 8; "Only factor 3 weighs in favor of amendment.") And try as it might, Anascape cannot dispute the importance of the references at issue and the lack of unfair prejudice to Anascape. For instance, the Sony "Two-rific" article discloses Sony's Dual Shock 2 controller. The Sony Dual Shock 2 controller was mapped element-by-element against the asserted claims in Defendants' initial invalidity contentions submitted over a year ago in this case. (Mot. at 11-12) Sony is a licensee of Anascape, and Anascape is well aware of Sony's controllers, including the Dual Shock and Dual Shock 2 controllers. Indeed, Anascape's technical expert has cited to the Sony controllers as purported evidence of secondary considerations of non-obviousness. The "Two-rific" article is important and relevant to this case since Defendants assert that the `700 Patent is only entitled to a November 16, 2000 priority date. As such, the "Two-rific" article is prior art under 35 U.S.C. 102(b). "Two-rific" was disclosed no later than SCEA's deposition, and Anascape had an opportunity to cross-examine SCEA as to the article at that time, but choose not to do so, despite asking a number of other questions about Dual Shock 2. (Mot. at 5, Exh. 6.) Nevertheless, additional discovery would not help Anascape in this regard, a point reinforced by the fact that Anascape has not asked for any. Additionally, Microsoft's expert, Mr. Bristow, identifies and relies upon the "Two-rific" article in his supplemental invalidity report. (Id at 5.) To the extent that Anascape wished to challenge any opinions Mr. Bristow intends to offer about the "Tworific" article, it could have done so during his scheduled expert witness deposition. Instead, REPLY IN SUPPORT OF DEFENDANTS' MOTION TO AMEND THEIR INVALIDITY CONTENTIONS Anascape chose to cancel Mr. Bristow's deposition, even after Defendants filed the present motion. (See Suppl. Mc Leod Decl., Exh. 12.) The "GameFan" article is a January 1996 publication including a photograph of the "Flightstick" controller that was sold by Sony, and distributed by SCEA. Microsoft produced the "GameFan" article within days after discovering it in a third-party publication. (Mot. at 5.) Prior to discovery of this specific publication, Microsoft deposed and Anascape cross examined SCEA regarding the availability of this very "Flightstick" controller, which like the controller in the "GameFan" photograph has multiple joysticks/input members and numerous additional buttons. (Id., Exh. 6.) As with the "Two-rific" article, Microsoft's expert Mr. Bristow identifies this publication in his supplemental report. (Dkt. 209, Exh. G, pg. 2.) Again, Anascape had an opportunity to depose Mr. Bristow about Flightstick and the "GameFan" publication, but chose to cancel his scheduled deposition. (See Suppl. Mc Leod Decl., Exh. 12.) For at least these reasons, good cause exists to grant Defendants' motion to amend their invalidity contentions. IV. THE OTHER CHALLENGED "SUPPLEMENTS" ARE NOT NEW For the reasons set forth in their opposition and sur-reply to Anascape's motion to strike the Bristow and Dezmelyk expert reports (Dkts. 228 and 248), Defendants' remaining challenged "supplements" are proper because they are not new references or combinations of references. V. CONCLUSION For the foregoing reasons, Defendants respectfully ask the Court to allow the requested amendment. Respectfully submitted, Dated: April 11, 2008 By: /s/ Derrick W. Toddy J. Christopher Carraway (admitted pro hac vice) christopher.carraway@klarquist.com REPLY IN SUPPORT OF DEFENDANTS' MOTION TO AMEND THEIR INVALIDITY CONTENTIONS Joseph T. Jakubek (admitted pro hac vice) joseph.jakubek@klarquist.com Stephen J. Joncus (admitted pro hac vice) stephen.joncus@klarquist.com Richard D. Mc Leod (Bar No. 24026836) rick.mcleod@klarquist.com Derrick W. Toddy (admitted pro hac vice) derrick.toddy@klarquist.com John D. Vandenberg (admitted pro hac vice) john.vandenberg@klarquist.com KLARQUIST SPARKMAN, LLP 121 S.W. Salmon Street, Suite 1600 Portland, Oregon 97204 Telephone: 503-595-5300 J. Thad Heartfield (Bar No. 09346800) thad@jth-law.com Law Offices of J. Thad Heartfield 2195 Dowlen Road Beaumont, Texas 77706 Telephone: 409-866-3318 Facsimile: 409-866-5789 Clayton E Dark Jr. (Bar No. 05384500) clay.dark@yahoo.com Clayton E Dark Jr., Law Office 207 E Frank Ave # 100 Lufkin, TX 75901 Telephone: 936-637-1733 Stephen McGrath, Esq. (admitted pro hac vice) MICROSOFT CORPORATION One Microsoft Way, Building 8 Redmond, Washington 98052-6399 Telephone: 425-882-8080 Facsimile: 425-706-7329 Attorneys for Defendant Microsoft Corporation By: /s/ James S. Blank _________ James S. Blank (pro hac vice) james.blank@lw.com LATHAM & WATKINS LLP 885 Third Avenue, Suite 1000 New York, NY 10022-4802 Telephone: 212-906-1200 Robert W. Faris (pro hac vice) rwf@nixonvan.com REPLY IN SUPPORT OF DEFENDANTS' MOTION TO AMEND THEIR INVALIDITY CONTENTIONS Joseph S. Presta (pro hac vice) jsp@nixonvan.com NIXON & VANDERHYE P.C. 901 North Glebe Road, 11th Floor Arlington, VA 22203 Telephone: 703-816-4000 Lawrence L. Germer llgermer@germer.com Charles W. Goehringer, Jr. cgoehringer@germer.com GERMER GERTZ, L.L.P. 550 Fannin, Suite 500 Beaumont, TX 77713 Telephone: 409-654-6700 Robert J. Gunther, Jr. (pro hac vice) robert.gunther@wilmerhale.com WILMER HALE 399 Park Avenue New York, New York 10022 Telephone: 212-230-8800 Attorneys for Defendant Nintendo Of America Inc REPLY IN SUPPORT OF DEFENDANTS' MOTION TO AMEND THEIR INVALIDITY CONTENTIONS CERTIFICATE OF SERVICE The undersigned certifies that the foregoing document was served electronically on all counsel who have consented to electronic service in compliance with Local Rule CV-5(a)(7)(C). Pursuant to Fed. R. Civ. P. 5 (d) and Local CV-f, all other counsel of record not deemed to have consented to electronic service were served with a true and correct copy of the foregoing by certified mail, return receipt requested, on this the 11TH day of April, 2008. By: /s/ Derrick W. Toddy CERTIFICATE OF SERVICE

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