Case 5:15-cv-02008-EJD Document 101-1 Filed 05/17/16 Page 1 of 4
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`Robert F. McCauley (SBN 162056)
`robert.mccauley@finnegan.com
`Jacob A. Schroeder (SBN 264717)
`jacob.schroeder@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3300 Hillview Avenue
`Palo Alto, CA 94304-1203
`Telephone:
`(650) 849-6600
`Facsimile:
`(650) 849-6666
`
`Gerald F. Ivey (pro hac vice)
`Smith R. Brittingham IV (pro hac vice)
`Elizabeth A. Niemeyer (pro hac vice)
`John M. Williamson (pro hac vice)
`Rajeev Gupta (pro hac vice)
`Aidan C. Skoyles (pro hac vice)
`Cecilia Sanabria (pro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone:
`(202) 408-4000
`Facsimile:
`(202) 408-4400
`
`Stephen E. Kabakoff (pro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3500 SunTrust Plaza
`303 Peachtree Street, N.E.
`Atlanta, GA 30308-3263
`Telephone:
`(404) 653- 6400
`Facsimile:
`(404) 653-6444
`
`Attorneys for Plaintiffs
`OpenTV, Inc., Nagravision S.A., and Nagra France S.A.S.
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`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
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`OPENTV, INC., NAGRAVISION S.A., and
`NAGRA FRANCE S.A.S.
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`v.
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`APPLE INC.,
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`Plaintiffs,
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`Defendant.
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`CASE NO. 5:15-cv-02008-EJD (NMC)
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`DECLARATION OF JACOB A.
`SCHROEDER IN SUPPORT OF
`PLAINTIFFS’ OPP. TO DEFENDANT
`APPLE INC.’S MOTION TO STAY
`PENDING COMPLETION OF USPTO
`PROCEEDINGS
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`Date: September 15, 2016
`Time: 9:00 am
`Judge: Hon. Edward J. Davila
`Courtroom: 4, 5th Floor
`DECLARATION ISO PLAINTIFFS’ OPP.
`TO DEFENDANT’S MOT. TO STAY
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 101-1 Filed 05/17/16 Page 2 of 4
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`I, Jacob A. Schroeder, declare as follows:
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`1.
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`I am an attorney licensed to practice in the State of California and admitted before
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`this Honorable Court. I am an attorney with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP,
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`counsel of record for OpenTV, Inc., Nagravision S.A., and Nagra France S.A.S. (collectively
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`“OpenTV”) in the above-titled action. I have personal knowledge of the facts contained in this
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`Declaration, and if called upon to do so, I could and would testify competently thereto.
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`2.
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`I submit this Declaration in support of Plaintiffs’ Opposition to Defendant Apple
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`Inc.’s Motion to Stay Pending Completion of USPTO Proceedings.
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`3.
`Motion to Amend Study” dated April 30, 2016, available at
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`Attached as Exhibit 1 is a true and correct copy the “Patent Trial and Appeal Board
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`http://www.uspto.gov/sites/default/files/documents/2016-04-30%20PTAB%20MTA%20study.pdf.
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`Attached as Exhibit 2 is a true and correct copy the decision in Redfin Corp. v.
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`4.
`CoreLogic Solutions, LLC, CBM2014-00027, Paper 14 (P.T.A.B. April 25, 2014).
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`Attached as Exhibit 3 is a true and correct copy the decision in Dell Inc. v.
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`5.
`Disposition Services, LLC, CBM2013-00040, Paper 9 (P.T.A.B. February 12, 2014).
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`6.
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`Apple is in the business of distributing media to consumers. Apple sells products that
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`enable consumers to receive music, movies, and other media by streaming or downloading the
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`media. Indeed, many view AppleTV, as well as other Apple products and services (e.g., iTunes), as
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`an alternative to traditional broadband cable and satellite. While OpenTV and Apple may not market
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`their products and services to the same customers, they nevertheless compete with one another in the
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`media-distribution space.
`OpenTV sued Apple for patent infringement on April 9, 2014, alleging infringement
`7.
`of five U.S. Patents. Case No. 3:14-cv-01622-HSG (KAW) (Apple I), ECF No. 1. About a year into
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`that case, Apple filed IPRs on four of OpenTV’s patents (the fifth patent having been held invalid
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`under 35 U.S.C. § 101) and eventually moved to stay that litigation. Apple I, ECF Nos. 194, 207,
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`209. The Court granted Apple’s motion to stay (Apple I, ECF No. 217, 222), and the IPRs are on
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`schedule to be argued this June (Apple I, ECF No. 223). OpenTV anticipates that most, if not all,
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`DECLARATION ISO PLAINTIFFS’ OPP.
`TO DEFENDANT’S MOT. TO STAY
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 101-1 Filed 05/17/16 Page 3 of 4
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`claims from each patent will survive Apple’s IPRs, and expects the case OpenTV filed in April 2014
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`will resume by the end of 2016.
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`8.
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`On May 5, 2015, OpenTV filed the instant case against Apple, alleging the
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`infringement of five patents, including U.S. Patent Nos. 7,725,740 (“the ’740 patent”), 7,055,169
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`(“the ’169 patent”), and 6,233,736 (“the ’736 patent”). ECF No. 1. Apple filed a motion to dismiss
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`two patents (U.S. Patent Nos. 7,644,429 (“the ’429 patent”) and U.S. Patent No. 6,148,081 (“the
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`’081 patent”)) as invalid under 35 U.S.C. § 101. ECF No. 33. The Court issued its order on Apple’s
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`motion to dismiss in January 2016, holding those patents invalid as a matter of law. ECF No. 72.
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`OpenTV filed a motion for entry of partial final judgment and Rule 54(b) certification of the Court’s
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`Order with respect to the ’429 and ’081 patents (ECF No. 75), which is set for argument on August
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`18, 2016. ECF No. 78.
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`9. As shown in the table below, OpenTV has asserted infringement by at least some of
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`Apple’s products across each asserted patent, making it unlikely that the scope of discovery would
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`be significantly reduced, absent cancellation of every asserted claim.
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`Patents Asserted Against Apple Accused Products
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`Accused Products
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`’740
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`’169
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`’736
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`iOS Products
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`Mac OS Products
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`AppleTV Products
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`X
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`X
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`X
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`X
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`X
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`X
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`X
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`X
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`10.
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`To date, the parties have exchanged initial disclosures, exchanged Patent Local Rule
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`disclosures, served detailed infringement and invalidity contentions, and exchanged extensive
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`discovery requests. Regarding discovery requests, the parties have issued and responded to over 200
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`requests for production and agreed that nearly all discovery exchanged in Apple I (currently stayed)
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`may be used in this case, meaning over 100,000 pages of documents have also already been
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`produced in this case. The parties have also briefed a motion with respect to OpenTV’s compliance
`DECLARATION ISO PLAINTIFFS’ OPP.
`2
`TO DEFENDANT’S MOT. TO STAY
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 101-1 Filed 05/17/16 Page 4 of 4
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`with the Patent Local Rules (ECF Nos. 85, 91, 93) and finished claim construction briefing. Further,
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`on May 12, the parties presented to the Court and the Court prepared for and presided over a 5 hour
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`technology tutorial and claim construction hearing. ECF No. 58, 99.
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`11.
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`Nearly one year after the filing of this case, Apple filed IPR petitions against the ’736
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`and ’740 patents and a CBM petition against the ’169 patent. Apple then filed this motion for stay.
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`ECF No. 92. After filing its stay motion, Apple filed an IPR petition against the ’169 patent. The
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`PTAB has not issued a decision on whether or not to institute any of Apple’s IPR or CBM petitions,
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`and I understand the deadline for the PTAB to issue such a decision is November 2, 2016. ECF No.
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`92 at 3.
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`12.
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`Significant deadlines in this case are only a matter of months away. For example, this
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`case is scheduled for a Trial Setting Conference on July, exchange of expert reports in August and
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`September, and close of expert discovery is set for October. ECF No. 58. Each of these deadlines is
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`set to occur before the November 2 deadline for the PTAB to decide whether or not to institute
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`review of the patents-in-suit. ECF No. 92 at 9. This deadline for the PTAB’s decision comes just one
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`week before the dispositive motion deadline in this case. ECF No. 58. Although the Court indicated
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`it may reset these dates, OpenTV continues to work diligently to prepare for eventual trial.
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`13.
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`Although a trial date has not yet been set, the schedule is proceeding apace and
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`significant progress is expected before the PTAB decides whether to institute any of Apple’s
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`petitions.
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`14.
`claims of the ’736 patent. See IPR2014-00269. In response to Netflix’s petition, OpenTV filed a
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`On December 18, 2013, Netflix filed an IPR petition seeking review of some of the
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`detailed opposition with the PTAB describing how the petition failed to address all the elements of
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`the claims and failed to provide any persuasive reason why the PTAB should cancel the challenged
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`claims. Two months later, Netflix withdrew its petition.
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`15.
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`I declare under penalty of perjury under the laws of the United States that the
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`foregoing is true and correct. Executed this 17th day of May, 2016.
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`By: /s/ Jacob A. Schroeder
`
`Jacob A. Schroeder
`DECLARATION ISO PLAINTIFFS’ OPP.
`TO DEFENDANT’S MOT. TO STAY
`Case No. 5:15-cv-02008-EJD (NMC)
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