Case 5:15-cv-02008-EJD Document 79 Filed 03/10/16 Page 1 of 13
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`George A. Riley (S.B. #118304) griley@omm.com
`Luann L. Simmons (S.B. #203526) lsimmons@omm.com
`Melody Drummond Hansen (S.B. #278786) mdrummondhansen@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center, 28th Floor
`San Francisco, California 94111-3823
`Telephone:
`(415) 984-8700
`Facsimile:
`(415) 984-8701
`
`Ryan K. Yagura (S.B. #197619) ryagura@omm.com
`Xin-Yi Zhou (S.B. #251969) vzhou@omm.com
`Brian M. Cook (S.B. #266181) bcook@omm.com
`Kevin Murray (S.B. #275186) kmurray2@omm.com
`O’MELVENY & MYERS LLP
`400 South Hope Street
`Los Angeles, California 90071-2899
`Telephone:
`(213) 430-6000
`Facsimile:
`(213) 430-6407
`
`Attorneys for Defendant
`APPLE INC.
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE
`
`OpenTV, Inc., Nagravision, S.A., and Nagra
`France S.A.S.
`
`v.
`
`Apple Inc.,
`
`Plaintiffs,
`
`Defendant.
`
`Case No. 5:15-cv-02008-EJD
`
`DEFENDANT APPLE INC.’S
`OPPOSITION TO PLAINTIFFS’
`MOTION FOR RULE 54(b)
`CERTIFICATION
`
`August 18, 2016
`Date:
`9:00 a.m.
`Time:
`Honorable Edward J. Davila
`Judge:
`Courtroom: 4, 5th Floor
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`OPP. TO MOT. FOR RULE 54(b) CERT.
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`Case 5:15-cv-02008-EJD Document 79 Filed 03/10/16 Page 2 of 13
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`TABLE OF CONTENTS
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`
`Page
`INTRODUCTION .............................................................................................................. 1
`PROCEDURAL HISTORY ................................................................................................ 2
`LEGAL STANDARDS ....................................................................................................... 2
`ARGUMENT ...................................................................................................................... 3
`A.
`Permitting Interlocutory Appeal On The Patent Ineligibility Ruling Would
`Lead To Multiple Appeals On The Same Legal Issue ............................................ 3
`Factual Overlap Between The Dismissed Claims And The Pending Claims
`Weighs Against Rule 54(b) Certification ................................................................ 5
`Rule 54(b) Certification Would Lead To Judicial Inefficiency And
`Piecemeal Litigation ............................................................................................... 6
`OpenTV Has Not Demonstrated Any Harm That Would Result From
`Denial Of Its Motion ............................................................................................... 9
`CONCLUSION ................................................................................................................... 9
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`B.
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`C.
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`D.
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`I.
`II.
`III.
`IV.
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`V.
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`OPP. TO MOT. FOR RULE 54(b) CERT.
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`Case 5:15-cv-02008-EJD Document 79 Filed 03/10/16 Page 3 of 13
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`TABLE OF AUTHORITIES
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`
`Page
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`
`CASES
`Chaparral Commc’ns, Inc. v. Boman Indus.,
`798 F.2d 456 (Fed. Cir. 1986) .................................................................................................... 3
`Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
`No. CV 03-0110-GLT, 2004 U.S. Dist. LEXIS 27639 (C.D. Cal. Apr. 14,
`2004) .......................................................................................................................................... 4
`Curtiss-Wright Corp. v. Gen. Elec. Co.,
`446 U.S. 1 (1980) ....................................................................................................................... 2
`Doe v. Univ. of Cal.,
`No. C–92–2284 SAW, 1993 WL 361540 (N.D. Cal. Sept. 2, 1993) ......................................... 8
`Ferring B.V. v. Actavis, Inc.,
`No. 3:13-cv-00477-RCJ-VPC, 2014 U.S. Dist. LEXIS 151432 (D. Nev.
`Oct. 23, 2014) ..................................................................................................................... 3, 4, 9
`HTC Corp. v. IPCom GMBH & Co., KG,
`285 F.R.D. 130 (D.D.C. 2012) ................................................................................................... 6
`iLOR, LLC v. Google, Inc.,
`550 F.3d 1067 (Fed. Cir. 2008) .............................................................................................. 1, 2
`Mayfield v. Cnty. of Merced,
`1:13-cv-01619 LJO BAM, 2015 U.S. Dist. LEXIS 1636 (E.D. Cal. June 6,
`2014) .......................................................................................................................................... 8
`Morrison-Knudsen Co. v. Archer,
`655 F.2d 962 (9th Cir. 1981) .............................................................................................. 1, 3, 9
`OpenTV, Inc. v. Netflix Inc.,
`76 F. Supp. 3d 886 (N.D. Cal. 2014) ..................................................................................... 3, 4
`OpenTV, Inc. v. Netflix Inc.,
`No. 3:14-cv-01723-RS, ECF No. 47 (N.D. Cal. Feb. 11, 2015) ................................................ 4
`Reddy v. Nuance Commc’ns,
`No. C 11-05632 PSG, 2012 U.S. Dist. LEXIS 138652 (N.D. Cal. Sept. 26,
`2012) .......................................................................................................................................... 1
`Remediation Prods., Inc. v. Adventus Ams., Inc.,
`No. 3:07cv153–RJC–DCK, 2011 WL 1272924 (W.D.N.C. 2011) ........................................... 5
`Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
`No. 14-CV-08053, ECF No. 102 (N.D. Ill. Nov. 10, 2015) .................................................. 4, 5
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`OPP. TO MOT. FOR RULE 54(b) CERT.
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`Case 5:15-cv-02008-EJD Document 79 Filed 03/10/16 Page 4 of 13
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`
`
`TABLE OF AUTHORITIES
`(continued)
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`Page
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`Solannex, Inc. v. Miasolé, Inc.,
`No. CV 12-00832 PSG, 2013 U.S. Dist. LEXIS 15057 (N.D. Cal. Feb. 1,
`2013) .......................................................................................................................................... 4
`Sun Pharm. Indus., Ltd. v. Eli Lilly & Co.,
`No. 07-cv-15087, ECF No. 120 (E.D. Mich. June 30, 2010) .................................................... 8
`Takeda Pharm. Co. v. Handa Pharm., LLC,
`Nos. C-11-01609, C-11-01610, 2013 U.S. Dist. LEXIS 62557 (N.D. Cal.
`Apr. 30, 2013) ............................................................................................................................ 5
`Ultramercial Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014) .................................................................................................... 7
`Williamson v. Citrix Online LLC,
`792 F.3d 1339 (Fed. Cir. 2015) .................................................................................................. 7
`Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC,
`No. 1:04-cv-00346, ECF No. 328 (N.D. Ill. Oct. 18, 2010) ...................................................... 8
`STATUTES
`35 U.S.C. § 101 ............................................................................................................................ 2, 4
`RULES
`Fed. R. Civ. P. 54 advisory committee’s notes (1946) .................................................................... 1
`
`Fed. R. Civ. P. 54(b) ................................................................................................................ 1, 2, 9
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`iii
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`OPP. TO MOT. FOR RULE 54(b) CERT.
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`Case 5:15-cv-02008-EJD Document 79 Filed 03/10/16 Page 5 of 13
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`INTRODUCTION
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`
`
`I.
`
`It has long been established that “all issues decided by the district court should be resolved
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`in a single appeal of a final judgment.” iLOR, LLC v. Google, Inc., 550 F.3d 1067, 1072 (Fed.
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`Cir. 2008). Rule 54(b) provides an exception that applies only in rare circumstances—the trial
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`court has discretion to certify a partial judgment for interlocutory appeal only upon an express
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`finding that “there is no just reason for delay.” Fed. R. Civ. P. 54(b). As the Advisory
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`Committee to Rule 54 explained, because the “historic rule in the federal courts has always
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`prohibited piecemeal disposal of litigation,” district courts should exercise their “discretionary
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`power to afford a remedy [under Rule 54(b)] in the infrequent harsh case.” Fed. R. Civ. P. 54
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`advisory committee’s notes (1946). Consistent with this principle, courts have found that
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`“[j]udgments under Rule 54(b) must be reserved for the unusual case in which the costs and risks
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`of multiplying the number of proceedings and of overcrowding the appellate docket are
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`outbalanced by the pressing needs of the litigants for an early and separate judgment as to some
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`claims or parties.” Reddy v. Nuance Commc’ns, No. C 11-05632 PSG, 2012 U.S. Dist. LEXIS
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`138652 (N.D. Cal. Sept. 26, 2012) (citing Morrison-Knudsen Co. v. Archer, 655 F.2d 962, 965
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`(9th Cir. 1981)). Absent a compelling need for immediate appeal, Rule 54(b) certification should
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`not be granted in a case where the adjudicated claims and the remaining claims involve
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`overlapping issues. See Morrison-Knudsen, 655 F.2d at 965.
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`OpenTV’s Motion for Rule 54(b) Certification asks this Court to deviate from the well-
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`established prohibition against piecemeal appeal. OpenTV’s motion should be denied because
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`the facts of this case weigh strongly against permitting interlocutory appeal of the Court’s order
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`invalidating two of the five patents-in-suit (ECF No. 72). First, because Apple’s defenses against
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`OpenTV’s three remaining patents rely in part on the same legal theories underlying the Court’s
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`order, a Rule 54(b) certification would lead to multiple appeals on the same legal question of
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`patent eligibility. Second, because the patents remaining in the case relate to the same technology
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`as those dismissed by the Court, allowing an interlocutory appeal would require multiple Federal
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`Circuit panels to learn the same technology and address the same factual issues. Third, given that
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`there are three patents remaining in the case that may be resolved at different stages of litigation,
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`permitting piecemeal appeal would burden both this Court and the Federal Circuit by spawning
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`multiple, parallel proceedings. Fourth, OpenTV has failed to identify any pressing harm that
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`would justify the judicial inefficiency created by parallel proceedings before the appellate and
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`district courts. Apple therefore respectfully requests that the Court deny OpenTV’s Motion for
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`Rule 54(b) Certification.
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`II.
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`PROCEDURAL HISTORY
`On May 5, 2015, OpenTV filed a Complaint asserting claims for infringement of U.S.
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`Patent Nos. 6,148,081 (the “’081 Patent”), 6,233,736 (the “’736 Patent”), 7,055,169 (the “’169
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`Patent”), 7,644,429 (the “’429 Patent”), and 7,725,740 (the “’740 Patent”). See ECF No. 1
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`¶¶ 54-98.
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`On June 26, 2015, Apple moved to dismiss OpenTV’s claims based on two patents-in-
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`suit—the ’081 and ’429 Patents—for claiming ineligible subject matter under 35 U.S.C. § 101.
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`See ECF No. 33.
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`On January 28, 2016, the Court granted Apple’s motion by finding the asserted claims of
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`the ’081 and ’429 Patents (the “Dismissed Patents”) invalid under § 101. See ECF No. 72.
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`On February 11, 2016, Apple answered OpenTV’s remaining claims of patent
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`infringement based on the ’736, ’169, and ’740 Patents (the “Remaining Patents”). See ECF
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`No. 73. In its Answer, Apple asserted an affirmative defense based on patent subject matter
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`eligibility under § 101. See id. ¶ 102.
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`III. LEGAL STANDARDS
`When a district court issues an ultimate disposition on one of several claims pending in a
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`case, Rule 54(b) gives the court discretion to certify the disposed claim for interlocutory appeal.
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`See Curtiss-Wright Corp. v. Gen. Elec. Co., 446 U.S. 1, 8 (1980) (citing Fed. R. Civ. P. 54(b)).
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`This discretion must be exercised carefully to ensure “that application of [Rule 54(b)] effectively
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`‘preserves the historic federal policy against piecemeal appeals.’” Id. at 8.
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`To support a motion for Rule 54(b) certification, the movant must provide “a sound reason
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`to justify departure from the general rule that all issues decided by the district court should be
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`resolved in a single appeal of a final judgment.” iLOR, 550 F.3d at 1072. In deciding whether to
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`OPP. TO MOT. FOR RULE 54(b) CERT.
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`exercise its discretion under Rule 54(b), the district court must balance “the costs and risks of
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`multiplying the number of proceedings and of overcrowding the appellate docket” against any
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`“pressing needs of the litigants for an early and separate judgment.” Morrison-Knudsen, 655 F.2d
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`at 965; see also Ferring B.V. v. Actavis, Inc., No. 3:13-cv-00477-RCJ-VPC, 2014 U.S. Dist.
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`LEXIS 151432, at *10-11 (D. Nev. Oct. 23, 2014) (applying Morrison-Knudsen to patent case).
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`Interlocutory appeals are particularly disfavored in cases where the claims remaining
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`before the trial court involve legal or factual issues that overlap with the disposed claims. See
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`Chaparral Commc’ns, Inc. v. Boman Indus., 798 F.2d 456, 459 (Fed. Cir. 1986) (affirming denial
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`of Rule 54(b) certification because the resolved and remaining claims “were sufficiently
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`intertwined that the separate appeal … would complicate trial of the remaining counts”);
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`Morrison-Knudsen, 655 F.2d at 965 (“A similarity of legal or factual issues will weigh heavily
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`against entry of judgment under the rule, and in such cases a Rule 54(b) order will be proper only
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`where necessary to avoid a harsh and unjust result, documented by further and specific
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`findings.”).
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`IV. ARGUMENT
`A.
`Permitting Interlocutory Appeal On The Patent Ineligibility Ruling Would
`Lead To Multiple Appeals On The Same Legal Issue
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`OpenTV’s motion should be denied because Apple’s defenses for the Remaining Patents
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`overlap with the grounds upon which the Court invalidated the Dismissed Patents. Thus, an
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`interlocutory appeal on the Court’s patent ineligibility finding would lead to multiple appeals on
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`the same legal question.
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`Apple has asserted an affirmative defense based on subject matter eligibility against the
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`Remaining Patents, including specifically the ’169 Patent. See ECF No. 73 ¶ 102. The patent
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`eligibility of the ’169 Patent was previously challenged in OpenTV, Inc. v. Netflix Inc., 76 F.
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`Supp. 3d 886, 890-92 (N.D. Cal. 2014). In Netflix, OpenTV argued that it was “premature” to
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`address the subject matter eligibility of the ’169 Patent before claim construction because the
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`claims at issue could be construed narrowly as limited to a particular technology. See id. at 891.
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`Expressing skepticism regarding OpenTV’s argument, the Netflix court stated that “Plaintiffs may
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`Case 5:15-cv-02008-EJD Document 79 Filed 03/10/16 Page 8 of 13
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`be hard pressed to show that the broad language of the claims, which on its face arguably could
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`describe a PowerPoint presentation in a courtroom, should be construed to have a much narrower
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`scope.” Id. Nevertheless, the Netflix court deferred the patent eligibility analysis until after claim
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`construction. Id. at 892. The parties settled before claim construction, so this issue was not
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`decided. See OpenTV, Inc. v. Netflix Inc., No. 3:14-cv-01723-RS, ECF No. 47 (N.D. Cal.
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`Feb. 11, 2015). Because Apple and OpenTV also disagree over the proper construction of the
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`’169 Patent claims, Apple has not yet presented a § 101 challenge to the ’169 Patent. With the
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`exchange of proposed claim constructions now complete, Apple is evaluating this defense and is
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`considering moving for invalidity of the ’169 Patent based on § 101 before trial. If the Court
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`grants OpenTV’s motion and certifies its decision on the Dismissed Patent for immediate appeal,
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`there will likely be a second appeal involving the same § 101 defense later in the case.
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`In similar situations where there is a potential overlap between the remaining legal issues
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`and those subject to a proposed Rule 54(b) judgment, courts routinely deny requests for
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`interlocutory appeal. In Solannex, Inc. v. Miasolé, Inc., Judge Grewal denied the parties’ joint
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`request for Rule 54(b) judgment because “requiring the appellate court to decide the same
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`issues—or at least similar—more than once … is exactly the type of piecemeal appeal Rule 54(b)
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`was designed to prevent.” No. CV 12-00832 PSG, 2013 U.S. Dist. LEXIS 15057, at *13-14
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`(N.D. Cal. Feb. 1, 2013). In Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc., the
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`District Court for the Central District of California denied a motion for Rule 54(b) judgment
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`because presenting “two separate appeals on the same issue … is contrary to the policy of
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`avoiding piecemeal appeals.” No. CV 03-0110-GLT, 2004 U.S. Dist. LEXIS 27639, at *6 (C.D.
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`Cal. Apr. 14, 2004). In Ferring B.V., the District Court for the District of Nevada denied a
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`similar motion by explaining that the Federal Circuit should not be asked “to decide the same or
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`similar issues more than once.” 2014 U.S. Dist. LEXIS 151432, at *10-11. Indeed, in Smart
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`Systems Innovations, LLC v. Chicago Transit Authority—a case cited by OpenTV in support of its
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`motion—the court justified its Rule 54(b) certification by explaining that the remaining patents
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`are not subject to a § 101 challenge, and thus “the Federal Circuit is not likely to be forced into
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`wasting judicial resources by having to gear-up again on a second appeal over related issues.”
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`Case 5:15-cv-02008-EJD Document 79 Filed 03/10/16 Page 9 of 13
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`No. 14-CV-08053, ECF No. 102, at *1, 5-6 (N.D. Ill. Nov. 10, 2015).
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`OpenTV’s Motion for Rule 54(b) Certification, if granted, would waste judicial resources
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`by subjecting the Federal Circuit to two separate appeals involving the same legal question of
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`patent subject matter eligibility. OpenTV’s motion should be denied.
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`B.
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`Factual Overlap Between The Dismissed Claims And The Pending Claims
`Weighs Against Rule 54(b) Certification
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`The overlap between the technology claimed by the Remaining Patents and the
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`technology claimed by the Dismissed Patents further weighs against a Rule 54(b) certification.
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`See Takeda Pharm. Co. v. Handa Pharm., LLC, Nos. C-11-01609, C-11-01610, 2013 U.S. Dist.
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`LEXIS 62557, at *6-7 (N.D. Cal. Apr. 30, 2013) (denying Rule 54(b) certification because asking
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`the Federal Circuit “to familiarize itself with the same technologies and products in separate
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`actions … is disfavored and is not in the interest of judicial efficiency”).
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`The Dismissed Patents relate “to the use and implementation of … security measures to
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`secure the delivery process of digital content” in “interactive television systems.” ECF No. 72,
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`at 2. Two of the Remaining Patents relate to the same technology—content access control for
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`interactive television systems. For example, the ’169 Patent discloses a “method and mechanism
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`for enabling … control of interactive television content.” See ECF No. 1-3 at Abstract. The ’736
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`Patent discloses a system “for providing direct automated access to an online information services
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`provider” through a “television system.” See ECF No. 1-2 at Abstract. The technological overlap
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`among the patents-in-suit is also confirmed by OpenTV’s assertion of the ’081, ’429, ’169, and
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`’736 Patents against the same iTunes software. See ECF No. 1 ¶¶ 3, 59-60, 68-69, 77-78, and 86-
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`87. In patent cases where there is a technology overlap between the adjudicated claims and the
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`remaining claims, courts routinely deny motions for partial judgment. See, e.g., Remediation
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`Prods., Inc. v. Adventus Ams., Inc., No. 3:07cv153–RJC–DCK, 2011 WL 1272924, at *1
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`(W.D.N.C. 2011) (denying Rule 54(b) certification because the remaining patent and the
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`dismissed patent “involve[] the same challenged technology”); Takeda Pharm., 2013 U.S. Dist.
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`LEXIS 62557, at *6-7 (denying Rule 54(b) certification due to overlap in technology).
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`OpenTV’s motion should be denied for the same reason.
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`5
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`OPP. TO MOT. FOR RULE 54(b) CERT.
`5:15-CV-02008-EJD
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`Case 5:15-cv-02008-EJD Document 79 Filed 03/10/16 Page 10 of 13
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`OpenTV acknowledges that the Court should consider “factual relatedness” in deciding
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`whether to grant the requested relief. See ECF No. 75, at 5-6. OpenTV’s argument that this
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`factor favors certification, however, relies on misrepresentations of facts and law. See id.
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`First, OpenTV misrepresents the facts by arguing that there is no factual overlap because
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`the patents-in-suit have different “inventors, family histories, written descriptions, claim
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`language, and prior art.” See id. at 6. To the contrary, there is an overlap between the inventors
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`named on the Dismissed Patents and the Remaining Patents—Jean Rene Menand. See ECF No.
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`1-1, at 2; ECF No. 1-3, at 2. More importantly, the test for determining factual relatedness is not
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`limited to whether the patents-in-suit share common inventors or similar claim terms. OpenTV
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`cannot dispute that the Dismissed Patents and Remaining Patents relate to the same technology—
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`content access control for interactive television systems—and are asserted against the same Apple
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`products. See ECF No. 1 ¶¶ 3, 59-60, 68-69, 77-78, and 86-87.
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`Second, OpenTV misrepresents the law by arguing that HTC Corp. v. IPCom GMBH &
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`Co., KG, 285 F.R.D. 130 (D.D.C. 2012), supports the proposition that factual relatedness does not
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`weigh against Rule 54(b) certification. See ECF No. 75, at 6. The HTC court expressly found
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`that the patents in that case cover “different technologies,” unlike the patents in the current case.
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`Id. at 132. Moreover, OpenTV omits an important fact relied on by the HTC court—the party
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`opposing interlocutory appeal previously stipulated to a Rule 54(b) certification, thereby
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`conceding that the patents-in-suit were unrelated. See id.
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`OpenTV fails to cite any case in which a court entered a Rule 54(b) judgment in a
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`situation analogous to the current case—where the adjudicated claims have clear factual and legal
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`overlaps with the remaining claims. Therefore, OpenTV’s motion should be denied.
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`C.
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`Rule 54(b) Certification Would Lead To Judicial Inefficiency And Piecemeal
`Litigation
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`There is no judicial efficiency that can be gained by placing the patents at issue in this
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`case on two different tracks to resolution. To the contrary, allowing OpenTV to appeal the
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`Court’s decision as to two of the patents while litigating the remaining three before this Court will
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`waste judicial resources and result in piecemeal litigation.
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`6
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`OPP. TO MOT. FOR RULE 54(b) CERT.
`5:15-CV-02008-EJD
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`Case 5:15-cv-02008-EJD Document 79 Filed 03/10/16 Page 11 of 13
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`OpenTV has not shown that a Rule 54(b) certification would promote judicial efficiency.
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`OpenTV argues that its interlocutory appeal could be completed before trial on the Remaining
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`Patents in this Court. See ECF No. 75, at 6-7. As alleged support, OpenTV cherry-picks three
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`Federal Circuit appeals that completed within twelve months. See id. But the length of appeal
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`varies from case to case, and OpenTV ignores many other Federal Circuit appeals that took much
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`longer. For example, in Williamson v. Citrix Online LLC, 792 F.3d 1339 (Fed. Cir. 2015), the
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`Federal Circuit mandate issued more than two and half years after the plaintiff filed its Notice of
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`Appeal. See 2-11-cv-02409, ECF No. 480 (C.D. Cal. Dec. 6, 2012), ECF No. 486 (C.D. Cal.
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`July 23, 2015). As another example, the appeal in Ultramercial Inc. v. Hulu, LLC, 772 F.3d 709
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`(Fed. Cir. 2014), took four and a half years to complete. See Ultramercial, Inc. v. Hulu, LLC, No.
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`CV 09-06918 RGK, ECF No. 61 (C.D. Cal. Sept. 9, 2010), ECF No. 146 (C.D. Cal. Feb. 27,
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`2015), ECF No. 146. In addition, OpenTV’s argument relies on the false premise that the appeal
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`process ends with the Federal Circuit panel decision. Following the initial panel decision, the
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`losing party may seek reconsideration by the Federal Circuit panel, en banc hearing, and Supreme
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`Court review. If OpenTV is allowed to seek interlocutory appeal of the Dismissed Patents, there
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`is little chance that its appeal would be completed before trial of the Remaining Patents.
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`Even in the unlikely scenario that OpenTV succeeds on its appeal and the appeal
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`completes before trial, there would still be no efficiency gained because the parties would still
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`need to conduct claim construction and discovery on the remanded patents, which would lead to
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`either two separate trials or a significant delay in the scheduled trial to allow for consolidation.
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`And permitting interlocutory appeal would require the parties to immediately engage in parallel
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`proceedings before this Court and the Federal Circuit. Weighing the inefficiencies resulting from
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`immediate parallel proceedings against the remote chance that an appeal would result in a
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`consolidated trial, OpenTV is simply wrong that judicial efficiency favors a piecemeal approach
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`to this litigation.
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`OpenTV chose to assert five patents in the same case and has not, and cannot, offer any
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`compelling reason why it should not be required to abide by the standard rule of waiting for final
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`resolution of all claims before appealing. Allowing OpenTV to independently appeal each
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`OPP. TO MOT. FOR RULE 54(b) CERT.
`5:15-CV-02008-EJD
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`Case 5:15-cv-02008-EJD Document 79 Filed 03/10/16 Page 12 of 13
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`adverse decision would make this litigation unmanageable. For example, Apple has asserted
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`different defenses against the three Remaining Patents. Some of Apple’s defenses—such as
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`subject matter eligibility and claim indefiniteness—involve questions of law that will likely be
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`resolved through motions before trial. See, e.g., ECF No. 73 ¶ 102. Other defenses may involve
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`factual disputes requiring trial. See id. ¶ 101. If OpenTV is permitted to seek interlocutory
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`appeal each time it loses a claim, this case could quickly multiply into several parallel
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`proceedings.
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`The cases OpenTV cites in support of its judicial efficiency argument are inapposite. In
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`both Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC and Sun Pharm. Indus., Ltd. v. Eli Lilly &
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`Co., the trial court’s Rule 54(b) certification accompanied a stay of the claims remaining in the
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`district court. See Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, No. 1:04-cv-00346, ECF
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`No. 328 (N.D. Ill. Oct. 18, 2010) (“Any remaining claims not covered by the judgments and/or
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`stipulations will be stayed while the Rule 54(b) motions and, if granted, Rule 54(b) appeals are
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`pending in the Federal Circuit.”); Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., No. 07-cv-15087,
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`ECF No. 120 (E.D. Mich. June 30, 2010) (Order of Stay and Administrative Closing). Indeed,
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`given the uncertain length of an appeal, a stay of the claims remaining in the district court is the
`only mechanism that would ensure a single trial for all patents-in-suit.1 OpenTV is not
`advocating for that approach here. To the contrary, it intends to increase the burden on Apple and
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`the courts by litigating the Remaining Patents in parallel with its interlocutory appeal.
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`The facts in this case warrant that all the issues should be resolved in the district court and
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`then appealed at the same time, so that if there is any need for further proceedings after an appeal,
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`such proceedings can be efficiently conducted as a single case. OpenTV has failed to show that
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`judicial efficiency favors certification of the Court’s judgment in this case.
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`1 Courts often condition a Rule 54(b) judgment on a stay of the remaining claims. See Doe v.
`Univ. of Cal., No. C–92–2284 SAW, 1993 WL 361540, at *2 (N.D. Cal. Sept. 2, 1993) (“If a
`district court certifies claims for appeal pursuant to Rule 54(b), it should stay all proceedings on
`the remaining claims if the interests of efficiency and fairness are served by doing so.”); Mayfield
`v. Cnty. of Merced, 1:13-cv-01619 LJO BAM, 2015 U.S. Dist. LEXIS 1636, at *5-6 (E.D. Cal.
`June 6, 2014). Thus, should the Court grant OpenTV’s motion for Rule 54(b) certification, Apple
`respectfully requests that the Court also stay all remaining claims pending resolution of the
`appeal.
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`8
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`OPP. TO MOT. FOR RULE 54(b) CERT.
`5:15-CV-02008-EJD
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`Case 5:15-cv-02008-EJD Document 79 Filed 03/10/16 Page 13 of 13
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`D.
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`OpenTV Has Not Demonstrated Any Harm That Would Result From Denial
`Of Its Motion
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`Under Rule 54(b), a request for partial judgment should only be granted where there exists
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`some danger of hardship or unjust result which would be alleviated by immediate appeal. See
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`Morrison-Knudsen, 655 F.2d at 96. OpenTV has not provided any reason to justify an immediate
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`appeal, or identified any harm that would result from denial of its motion. Rather, OpenTV will
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`be in the same position as it currently is should the Court deny its motion. In Ferring B.V., the
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`court denied plaintiff’s request for Rule 54(b) judgment by finding “no harsh or unjust result
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`should Plaintiff be required to wait until the disposition of the entire Present Action to appeal the
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`Court’s dismissal.” 2014 U.S. Dist. LEXIS 151432, at *11. Moreover, the court explained that
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`“[i]f the Federal Circuit holds that this Court erred in dismissing Plaintiff’s claims …, Plaintiff
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`will essentially be in the same position in which it currently is, albeit with additional claims for
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`damages based on Defendants’ alleged on-going infringing activities.” Id. The same rationale
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`applies to this case—OpenTV would be no worse off if it waited until the final disposition of the
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`entire case before appealing the Court’s ruling on the Dismissed Patents.
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`V.
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`CONCLUSION
`For the foregoing reasons, Apple respectfully requests that the Court deny OpenTV’s
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`Motion for Rule 54(b) Certification.
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`
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`Dated: March 10, 2016
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`O’MELVENY & MYERS LLP
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` /s/ Luann L. Simmons
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`By:
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`Attorneys for Defendant APPLE INC.
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`9
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`OPP. TO MOT. FOR RULE 54(b) CERT.
`5:15-CV-02008-EJD