Case 5:15-cv-02008-EJD Document 91 Filed 04/27/16 Page 1 of 20
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`
`
`Robert F. McCauley (SBN 162056)
`robert.mccauley@finnegan.com
`Jacob A. Schroeder (SBN 264717)
`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
`
`OPENTV, INC., NAGRAVISION S.A., and
`NAGRA FRANCE S.A.S.
`
`
`v.
`
`
`APPLE INC.,
`
`
`Attorneys for Plaintiffs
`OpenTV, Inc., Nagravision S.A., and Nagra France S.A.S.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`
` CASE NO. 5:15-cv-02008-EJD (NMC)
`
`PLAINTIFFS’ OPPOSITION TO
`DEFENDANT’S MOTION TO PRECLUDE
`RELIANCE ON CERTAIN INVENTION DATES
`AND TO STRIKE CERTAIN ALLEGATIONS
`
`Mag. Judge: Honorable Nathanael Cousins
`Hearing Time: 1:00 p.m.
`Hearing Date: June 1, 2016
`Courtroom: San Jose Courtroom 7
`REDACTED VERSION FOR PUBLIC FILING
`
`Plaintiffs,
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`Defendant.
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`PLAINTIFFS’ OPP. TO DEFENDANT’S
`MTN TO PRECLUDE & STRIKE
`CASE NO. 5:15-CV-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 91 Filed 04/27/16 Page 2 of 20
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`
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`I.
`
`II.
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`Table of Contents
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`INTRODUCTION ...............................................................................................................1
`
`RELEVANT LEGAL AND FACTUAL BACKGROUND ................................................2
`
`A.
`
`B.
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`C.
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`D.
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`The Patent Local Rules ............................................................................................2
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`Judge Gilliam’s Prior Ruling ...................................................................................2
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`OpenTV’s and Apple’s Submissions in This Case ..................................................4
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`OpenTV’s and Apple’s Communications in This Case ...........................................5
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`III.
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`ARGUMENT .......................................................................................................................7
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`A.
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`OpenTV Complied with the Patent Local Rules and Discovery Obligations ..........7
`
`1.
`
`2.
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`3.
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`4.
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`5.
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`6.
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`OpenTV’s disclosures satisfy the requirements of Patent L.R. 3-1(f),
`namely disclosing priority, not conception, dates .......................................8
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`None of the cases Apple cites requires disclosure of conception dates
`in response to Patent L.R. 3-1(f) ................................................................10
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`Apple had notice of the September 14, 1995 conception date for the
`’736 patent at least since OpenTV’s Patent L.R. 3-2 production ..............11
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`OpenTV expressly identified its claim of a June 2001 conception date
`for the ’169 patent in its Patent L.R. 3-2(b) disclosures ............................12
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`Based on its diligent investigations, OpenTV timely informed Apple
`that it may rely on an earlier conception date for the ’740 patent .............13
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`OpenTV has complied with its ongoing discovery obligations,
`providing relevant and responsive information to Apple through its
`interrogatory responses and discovery communications ...........................14
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`B.
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`Apple Has Not Suffered Any Prejudice Based on OpenTV’s Disclosures and
`Discovery Responses .............................................................................................14
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`1.
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`2.
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`Apple was on notice of OpenTV’s conception date for the ’736 patent
`and the ’169 patent .....................................................................................15
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`Apple overstates the alleged impact of OpenTV’s conception dates on
`its prior art ..................................................................................................16
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`IV.
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`CONCLUSION ..................................................................................................................17
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`PLAINTIFFS’ OPP. TO DEFENDANT’S
`MTN TO PRECLUDE & STRIKE
`CASE NO. 5:15-CV-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 91 Filed 04/27/16 Page 3 of 20
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`
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`Blue Spike, LLC v. Adobe Sys., Inc.,
`No. 14-01647-YGR (JSC), 2015 U.S. Dist. LEXIS 8778, 2015 WL 335842 (N.D. Cal.
`Jan. 26, 2015) ...........................................................................................................................10
`
`Table of Authorities
`
`Bradford Co. v. Conteyor N. Am., Inc.,
`603 F.3d 1262 (Fed. Cir. 2010)..................................................................................................8
`
`Burroughs Wellcome Co. v. Barr Labs.,
`40 F.3d 1223 (Fed. Cir. 1994)....................................................................................................8
`
`Collaborative Agreements, LLC v. Adobe Sys., Inc.,
`Case No. 15-cv-03853-EMC, D.I. 138 (Apr. 14, 2016) ............................................................9
`
`Harvatek Corp. v. Cree, Inc.,
`No. 14-5353-WHA, 2015 U.S. Dist. LEXIS 93388 (N.D. Cal. July 17, 2015) .................10, 11
`
`OpenTV, Inc. v. Apple Inc.,
`No. C 14-1622-HSG ..........................................................................................................1, 2, 4
`
`Thought, Inc. v. Oracle Corp.,
`No. 12-5601, 2015-WHO, U.S. Dist. LEXIS 137113 (N.D. Cal. Oct. 7, 2015) ................10, 11
`
`FEDERAL STATUTES
`
`35 U.S.C. § 119 ................................................................................................................................8
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`35 U.S.C. § 120 ................................................................................................................................8
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`35 U.S.C. § 121 ................................................................................................................................8
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`35 U.S.C. § 365 ................................................................................................................................8
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`RULES
`
`Fed. R. Civ. P. 16(f)(1)(C) ...............................................................................................................7
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`Fed. R. Civ. P. 26(e)(1) ..................................................................................................................14
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`Patent L.R. 3-1 ....................................................................................................................... passim
`
`Patent L.R. 3-2 ....................................................................................................................... passim
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`Patent L.R. 3-3 .............................................................................................................................3, 5
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`Patent L.R. 3-4 .............................................................................................................................3, 5
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`Patent L.R. 3-6 .........................................................................................................................11, 13
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`PLAINTIFFS’ OPP. TO DEFENDANT’S
`MTN TO PRECLUDE & STRIKE
`CASE NO. 5:15-CV-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 91 Filed 04/27/16 Page 4 of 20
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`I.
`
`INTRODUCTION
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`Apple’s motion is fundamentally flawed and should be denied. Apple’s core dispute was
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`considered and rejected a year ago by Judge Gilliam in OpenTV, Inc. v. Apple Inc., No. C 14-1622-
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`HSG. After reviewing the parties’ briefs and hearing oral argument, Judge Gilliam held that Patent
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`Local Rule 3-1(f) means what it says when it requires a party to state “priority dates,” and it does not
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`require a party to state “conception dates” as Apple argued then and now. Just as Judge Gilliam
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`rejected Apple’s position, this Court should do the same and deny Apple’s motion.
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`In addition to being wrong on the basic premise of its motion, Apple raises two additional,
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`equally faulty, and contrary, arguments. For two of the asserted patents, Apple argues OpenTV
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`should not be able to rely on documents it has not yet produced to show a conception date earlier
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`than that currently disclosed. And for the third asserted patent, Apple argues OpenTV should not be
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`able to rely on documents it has already produced that show a conception date earlier than the
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`priority date.
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`Apple’s first argument is premature. OpenTV has repeatedly informed Apple that if OpenTV
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`identifies and produces documents that disclose conception dates earlier than those disclosed by
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`currently produced documents, OpenTV will file a motion seeking leave to supplement its Patent
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`Local Rule production and explaining how good cause supports that motion. Apple would then have
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`a full and fair opportunity to challenge that reliance and the issue would be ripe for the Court’s
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`review. Since none of this has yet occurred, Apple has jumped the gun with its current motion.
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`Apple’s second argument seeks to penalize OpenTV for relying on an invention disclosure
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`form to prove a conception date even though that form was (1) filed with the prosecution history of
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`one of the asserted patents and relied upon during prosecution to show a conception date that
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`antedated a reference cited by the Examiner, and (2) timely produced to Apple. Apple would have
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`likely reviewed that prosecution history and invention disclosure form as part of its due diligence
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`shortly after the complaint was filed. Apple cannot dispute it has been fully aware of the contents of
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`the file history and their relevance to the conception of the claimed invention.
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`Apple also alleges it would suffer immeasurable prejudice if OpenTV is allowed to rely on
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`conception dates that Apple has been aware of for months (for two of the patents) and that OpenTV
`PLAINTIFFS’ OPP. TO DEFENDANT’S MOT.
`1
`TO PRECLUDE AND STRIKE
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`Case 5:15-cv-02008-EJD Document 91 Filed 04/27/16 Page 5 of 20
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`identified as a possible conception date in response to Apple’s query (for a third patent). Apple’s
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`hyperbole aside, there is no prejudice based on the existing facts.
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`II.
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`RELEVANT LEGAL AND FACTUAL BACKGROUND
`Although Apple spent two pages of its brief explaining the legal background of Patent L.R.
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`3-1(f) and 3-2(b), Apple conspicuously omitted the fact that Apple raised and lost this issue a year
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`ago in front of Judge Gilliam. A brief overview of the issues and facts from both cases is useful.
`The Patent Local Rules
`A.
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`The Patent Local Rules require parties to disclose certain information on dates set forth in the
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`procedural schedule. Patent L.R. 3-1(f) requires a patentee to disclose “For any patent that claims
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`priority to an earlier application, the priority date to which each asserted claim allegedly is entitled.”
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`On the same date, Patent L.R. 3-2(b) requires the patentee to also produce “All documents
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`evidencing the conception, reduction to practice, design, and development of each claimed
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`invention, which were created on or before the date of application for the patent in suit or the priority
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`date identified pursuant to Patent L.R. 3-1(f), whichever is earlier.”
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`That is, under Patent L.R. 3-1(f), if a patentee relies on an earlier-filed application to
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`establish a priority date, the patentee must identify its filing date. Under Patent L.R. 3-2(b), if a
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`patentee has documents showing conception of the invention “created on or before . . . the priority
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`date identified in Patent L.R. 3-1(f),” the patentee must produce those documents showing a
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`conception date that pre-dates the priority date. Interpreting Patent L.R. 3-1(f) to require disclosure
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`of conception dates would render the requirements of Patent L.R. 3-2(b) meaningless.
`Judge Gilliam’s Prior Ruling
`B.
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`On April 9, 2014, Plaintiffs OpenTV, Inc. and Nagravision S.A. filed a complaint for patent
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`infringement against Apple Inc., which is captioned OpenTV, Inc. v. Apple Inc., No. C 14-1622-HSG
`(N.D. Cal. 2014) (Apple I). Apple I, D.I. 1. That case is currently stayed.1 Apple I, D.I. 222, Sept. 24,
`2015 Hearing Tr. at 16 (orally granting Apple’s Motion to Stay (see D.I. 194, 207, 209)).
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`1 For purposes of simplicity, the plaintiffs in both actions against Apple (Apple I and this
`case) are referred to herein as “OpenTV.”
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`PLAINTIFFS’ OPP. TO DEFENDANT’S MOT.
`TO PRECLUDE AND STRIKE
`CASE NO. 5:15-CV-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 91 Filed 04/27/16 Page 6 of 20
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`In accordance with the procedural schedule in that case and the Patent Local Rules, OpenTV
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`served its infringement contentions and accompanying document production, which included for
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`each asserted patent (1) an identification of the priority date (i.e., the earliest filing date) (Patent L.R.
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`3-1(f)), and (2) copies of all non-privileged documents evidencing a conception date earlier than the
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`priority date (Patent L.R. 3-2(b)). Niemeyer Decl. ¶ 8. Apple subsequently served its invalidity
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`contentions and accompanying document production under Patent L.R. 3-3 and 3-4. Id. at ¶ 9. After
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`receiving Apple’s invalidity contentions, OpenTV decided to waive privilege on certain invention
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`disclosure documents that evidenced a conception date earlier than that disclosed in OpenTV’s
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`Patent L.R. 3-2(b) document production for one of the patents. Id. at ¶ 10. OpenTV consequently
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`filed a motion for leave to supplement its Patent L.R. 3-2(b) production with the invention disclosure
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`documents. Apple I, D.I. 124. The day after OpenTV filed its motion, Apple served its first set of
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`discovery requests, which included, inter alia, an interrogatory seeking “the circumstances
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`surrounding the conception and reduction to practice of the claimed invention” for each asserted
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`patent. Niemeyer Decl. ¶ 11. Apple opposed OpenTV’s motion to supplement its Patent L.R. 3-2(b)
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`production, arguing that Patent L.R. 3-1(f)—which calls for an identification of a patent’s “priority
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`date”—required OpenTV to disclose any conception date (i.e., the same argument Apple makes in
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`its motion before this Court). Apple I, D.I. 131. Apple also argued that Patent L.R. 3-2(b) required
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`OpenTV to produce all conception documents, regardless of whether they were privileged. Id.
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`Judge Gilliam heard oral argument on OpenTV’s motion to supplement its Patent L.R. 3-2(b)
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`production on April 22, 2015. Niemeyer Decl. ¶ 13. In considering the parties’ arguments regarding
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`the requirements of Patent L.R. 3-1(f) and 3-2(b), Judge Gilliam stated to Apple:
`Wouldn’t you agree that the rule [Patent L.R. 3-1(f)] speaks
`specifically of priority date? There is no obligation to disclose a
`conception date. There’s an obligation to produce documents
`reflecting a conception date, but -- and, again, this might be an
`argument for the patent rule drafters for revisions in the future, but I
`just don’t, on the face of it, see something that directly precludes this
`course of action in this circumstance.
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`Apple I, D.I. 172, April 22, 2015 Hearing Tr. at 14 (Niemeyer Decl., Ex. 1). Judge Gilliam rejected
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`Apple’s arguments, granted OpenTV’s motion to supplement its Patent L.R. 3-2(b) production, and
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`PLAINTIFFS’ OPP. TO DEFENDANT’S MOT.
`TO PRECLUDE AND STRIKE
`CASE NO. 5:15-CV-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 91 Filed 04/27/16 Page 7 of 20
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`ordered the parties to discuss dates for any required amendments to Apple’s invalidity contentions.
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`Id. at 21.
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`C.
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`OpenTV’s and Apple’s Submissions in This Case
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`On May 5, 2015, Plaintiffs OpenTV, Inc., Nagravision S.A., and Nagra France S.A.S. filed
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`the complaint in this action against Apple. D.I. 1.
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`As required by this Court’s Scheduling Order, on October 15, 2015, OpenTV served its
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`“Disclosure of Asserted Claims and Infringement Contentions” under Patent L.R. 3-1 and produced
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`documents as required by Patent L.R. 3-2. Niemeyer Decl. ¶ 15. In accordance with Patent L.R. 3-
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`1(f), and consistent with Judge Gilliam’s ruling in Apple I, OpenTV identified the priority date for
`each asserted patent. D.I. 85-3, Ex. 1 at 7.2 OpenTV also produced the documents required under
`Patent L.R. 3-2, including documents evidencing conception earlier than the priority dates identified
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`under Patent L.R. 3-1(f) and the file histories for each asserted patent, including U.S. Patent No.
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`6,233,736 (“the ’736 patent”). Niemeyer Decl. ¶ 15. OpenTV also identified one subcategory of
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`Patent L.R. 3-2 to which each document related. Id. To avoid the dispute that arose during Apple I,
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`OpenTV’s Patent L.R. 3-2(b) submission also stated, “Although not required by the Patent Local
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`Rules but in the interest of providing notice to Apple, OpenTV claims a conception date for the ’169
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`patent of June 2001. OpenTV has not produced privileged documentation with this disclosure. See
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`OpenTV, Inc. v. Apple Inc., No. C 14-1622 HSG, Dkt. No. 172, April 22, 2015 Hearing Tr. at 4-21
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`(N.D. Cal. 2014).” D.I. 85-3, Ex. 1 at 8.
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`The complete file history for the ’736 patent (excluding cited references) is fewer than 200
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`pages. Niemeyer Decl. ¶ 16. During prosecution, the Examiner twice rejected the application. Id. In
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`response to the first rejection over certain prior art, the applicant submitted an affidavit with an
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`invention disclosure form and other supporting documents, totaling 22 pages, demonstrating that the
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`inventor conceived of and diligently reduced to practice the claimed subject matter before the date of
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`2 Exhibits to D.I. 84, 85, 86 refer to the Exhibits to the Declaration of Melody Drummond
`Hansen filed in support of Apple’s Motion to Preclude Reliance on Certain Invention Dates and
`Strike Certain Allegations. OpenTV refers to the electronic docket number for each exhibit and the
`corresponding exhibit number and page cite within each exhibit.
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`PLAINTIFFS’ OPP. TO DEFENDANT’S MOT.
`TO PRECLUDE AND STRIKE
`CASE NO. 5:15-CV-02008-EJD (NMC)
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`

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`Case 5:15-cv-02008-EJD Document 91 Filed 04/27/16 Page 8 of 20
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`
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`the prior art identified by the Examiner. Id. at ¶ 16 and Ex 2. That invention disclosure form is dated
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`September 14, 1995. Id. The Contents page of the file history, which provides an overview of all
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`documents submitted during prosecution of a patent application, clearly lists the applicant’s
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`affidavit. Id. at ¶ 16 and Ex. 3. The affidavit is thus conspicuous.
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`On November 23, 2015—five weeks after receiving OpenTV’s Patent L.R. 3-1 and 3-2
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`disclosures—Apple served its first set of discovery requests on OpenTV, including Interrogatory No.
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`8 seeking, inter alia, “the circumstances surrounding the conception and reduction to practice of the
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`claimed invention.” See Niemeyer Decl. ¶ 17; D.I. 84-7, Ex. 8 at 1.
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`Two weeks after serving its first discovery requests, on December 7, 2015, Apple served its
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`invalidity contentions and accompanying document production as required by Patent L.R. 3-3 and 3-
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`4. Niemeyer Decl. ¶ 17.
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`Two weeks after receiving Apple’s invalidity contentions and 30 days after receiving Apple’s
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`first set of discovery requests, on December 23, 2015, OpenTV served its responses to Apple’s first
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`set of discovery requests. Id. For Interrogatory No. 8, which sought, inter alia, an identification of
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`OpenTV’s claimed conception date for each asserted patent, OpenTV inadvertently identified an
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`incomplete subset of the documents produced as part of Patent L.R. 3-2 production and inadvertently
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`failed to list the invention disclosure form from the ’736 patent file history. Id.
`OpenTV’s and Apple’s Communications in This Case
`D.
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`On February 2, 2016, more than one month after receiving OpenTV’s interrogatory
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`responses, Apple asked OpenTV for the first time to confirm that the documents identified in
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`response to Interrogatory No. 8 “represent a complete production of all evidence that OpenTV
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`intends to rely on to support the alleged conception dates of the OpenTV Asserted Patents.” D.I. 85-
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`6, Ex. 4 at 2. Apple acknowledged that “OpenTV does not include any information about a
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`conception date or actual reduction to practice” for the ’736 and ’740 patents and asked that OpenTV
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`“[p]lease confirm that OpenTV does not allege any conception date for the ’736 patent earlier than
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`February 8, 1996” or a “a conception date for the ’740 patent earlier than May 28, 2003.” Id. at 3.
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`Apple also requested that OpenTV “identify by production number any documents OpenTV
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`contends relate to conception or diligence for the claimed invention of the ’169 patent.” Id.
`PLAINTIFFS’ OPP. TO DEFENDANT’S MOT.
`5
`TO PRECLUDE AND STRIKE
`CASE NO. 5:15-CV-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 91 Filed 04/27/16 Page 9 of 20
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`After receiving Apple’s inquiry and upon further consideration, OpenTV first realized it
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`inadvertently failed to identify the invention disclosure form filed during the prosecution of the ’736
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`patent application in response to Apple’s Interrogatory No. 8. Niemeyer Decl. ¶ 19. OpenTV
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`promptly notified Apple that it intends to rely on those invention disclosure documents and would
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`supplement its interrogatory response to specifically identify them. D.I. 85-7, Ex. 5. OpenTV
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`provided that supplemental response shortly thereafter. D.I. 84-7, Ex. 8 at 3.
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`Regarding the ’169 patent, during the parties’ meet-and-confer session, OpenTV confirmed
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`that it has not produced privileged documents reflecting the June 2001 conception date and that it is
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`still considering whether or not to waive privilege as to those documents and produce them.
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`Niemeyer Decl. ¶ 20. To date, OpenTV has not decided whether to waive privilege but has
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`repeatedly informed Apple that, if it decides to do so, OpenTV will seek leave of court to
`supplement its Patent L.R. 3-2(b) production, just as it did in Apple I.3 Id. For purpose of this action,
`if OpenTV seeks leave to supplement its Patent L.R. 3-2(b) production, this Court will have the
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`opportunity to consider any such request based on a complete record. And if OpenTV does not seek
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`such relief, the Court will never need to consider the issue. Apple’s challenge in this record is thus
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`premature and a waste of the Court’s time and resources.
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`Regarding the ’740 patent, OpenTV has been diligently investigating whether it can assert a
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`conception date earlier than the ’740 patent’s priority date. Id. ¶ 21. As part of that ongoing
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`investigation, OpenTV determined that it may be able to support an earlier conception date. Id. That
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`investigation is still ongoing and OpenTV has not yet identified supporting documents. Id.
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`Nevertheless, after learning of a potentially earlier conception date, OpenTV quickly brought that
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`information to Apple’s attention. D.I. 86-3, Ex. 7 at 1. If OpenTV identifies supporting
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`documentation, OpenTV would, again, need to file a motion for leave to supplement its Patent L.R.
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`3 OpenTV has also not identified any non-privileged documents that reflect a June 2001
`conception date for the ’169 patent. Niemeyer Decl. ¶ 20. OpenTV recognizes that production of
`such documents now would likewise require leave of Court. Apple has repeatedly stated it plans to
`file petitions for inter partes review of the asserted patents, and OpenTV may decide to waive
`privilege before the U.S. Patent and Trademark Office, if such a proceeding is instituted; but that is a
`different proceeding before a different tribunal.
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`6
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`PLAINTIFFS’ OPP. TO DEFENDANT’S MOT.
`TO PRECLUDE AND STRIKE
`CASE NO. 5:15-CV-02008-EJD (NMC)
`
`

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`Case 5:15-cv-02008-EJD Document 91 Filed 04/27/16 Page 10 of 20
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`3-2(b) production, and the Court would then be able to consider whether such leave should be
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`granted. But, again, that is a hypothetical possibility that the Court need not resolve here.
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`Apple’s motion also notes that Apple asked OpenTV to further break down the documents
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`identified in OpenTV’s response to Interrogatory No. 8 (OPENTV2008-00008615 - OPENTV2008-
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`00009148) per asserted patent. D.I. 85 at 5. Contrary to Apple’s suggestion, OpenTV never refused
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`to answer Apple’s informal request, but indicated that the range consisted of 21 documents and that
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`OpenTV was “still considering whether we can separately identify smaller ranges of documents for
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`each of the asserted patents.” D.I. 86-3 at 2. Upon additional review of the 21 documents, they relate
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`to the ’081 patent, which the Court found invalid in its earlier ruling on Apple’s motion to dismiss
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`(D.I. 72). Niemeyer Decl. ¶ 22. Apple has indicated it may seek inter partes review of the ’081
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`patent, and OpenTV may identify earlier conception dates for that patent.
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`Throughout Apple’s correspondence and the parties’ discussions, Apple’s inquiries were
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`directed to alleged deficiencies in OpenTV’s interrogatory responses. Niemeyer Decl. ¶ 23 It was not
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`until March 29, 2016, when Apple stated it would file a motion to strike certain information that
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`Apple mentioned any alleged deficiencies in OpenTV’s Patent L.R. 3-1 or 3-2 disclosures. Id. at ¶ 24
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`and Ex. 4 at 3. OpenTV was surprised when Apple raised that issue, since the parties had already
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`raised and resolved that dispute in Apple I.
`III. ARGUMENT
`OpenTV Complied with the Patent Local Rules and Discovery
`A.
`Obligations
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`OpenTV has fully complied with the Patent Local Rules and its ongoing discovery
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`obligations, yet Apple seeks the extreme relief of sanctions under Federal Rule of Civil Procedure
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`16(f)(1)(C). That rule states, “[o]n motion or on its own, the court may issue any just orders . . . if a
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`party or its attorney fails to obey a scheduling or other pretrial order.” Fed. R. Civ. P. 16(f)(1)(C).
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`On October 15, 2016, per the scheduling order, OpenTV disclosed the priority date for each asserted
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`patent as required by Patent L.R. 3-1(f) and produced non-privileged documents evidencing a
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`conception date earlier than the priority dates for each patent as required by Patent L.R. 3-2(b).
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`Apple misrepresents the requirements of Patent L.R. 3-1(f) and 3-2(b) to argue that OpenTV has not
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`7
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`PLAINTIFFS’ OPP. TO DEFENDANT’S MOT.
`TO PRECLUDE AND STRIKE
`CASE NO. 5:15-CV-02008-EJD (NMC)
`
`

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`Case 5:15-cv-02008-EJD Document 91 Filed 04/27/16 Page 11 of 20
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`met its obligations and that sanctions are justified. Apple’s arguments, however, are no more correct
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`or persuasive since Judge Gilliam rejected them a year ago. Niemeyer Decl., Ex. 1 at 14 and 21.
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`Apple also complains about OpenTV’s interrogatory responses. Apple seeks to strike
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`information about the conception and reduction to practice of the inventions claimed in the asserted
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`patents that Apple alleges differs from OpenTV’s Patent L.R. 3-1(f) and 3-2(b) disclosures. To date,
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`however, OpenTV’s amended interrogatory responses provide the same information OpenTV
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`provided in its Patent L.R. disclosures. Apple’s extreme request seeks to prevent OpenTV from
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`amending its interrogatory responses to include relevant information OpenTV already timely
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`produced and to further preclude OpenTV from future supplementation even as discovery continues.
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`Neither position has merit.
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`1.
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`OpenTV’s disclosures satisfy the requirements of Patent L.R. 3-
`1(f), namely disclosing priority, not conception, dates
`Apple does not contend that OpenTV failed to identify the priority dates to which each
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`asserted patent is entitled based on earlier filed applications. Instead, Apple re-argues that Patent
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`L.R. 3-1(f) requires disclosure of a conception date.
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`The language of Patent L.R. 3-1(f), however, is clear and requires that a patentee disclose
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`“[f]or any patent that claims priority to an earlier application, the priority date to which each
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`asserted claim allegedly is entitled[.]” Patent L.R. 3-1(f) (emphasis added). OpenTV did just that.
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`D.I. 85-2, Ex. 1 at 7.
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`Priority and conception are distinct concepts in patent law. When filing a patent application,
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`the law allows the applicant to claim the benefit of priority to an earlier-filed patent application,
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`including foreign applications, based on the disclosures. See 35 U.S.C. §§ 119, 120, 121, 365; see,
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`also, e.g., Bradford Co. v. Conteyor N. Am., Inc., 603 F.3d 1262, 1269 (Fed. Cir. 2010). Conception,
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`on the other hand, refers to the moment in time when the inventor conceives of the invention that is
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`later disclosed in a patent application. See, e.g., Burroughs Wellcome Co. v. Barr Labs., 40 F.3d
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`1223, 1227-28 (Fed. Cir. 1994).
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`As the Patent Local Rules recognize, conception necessarily predates any priority date—an
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`inventor will conceive of the invention before it is communicated to a patent attorney who writes it
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`
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`
`
`8
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`PLAINTIFFS’ OPP. TO DEFENDANT’S MOT.
`TO PRECLUDE AND STRIKE
`CASE NO. 5:15-CV-02008-EJD (NMC)
`
`

`
`Case 5:15-cv-02008-EJD Document 91 Filed 04/27/16 Page 12 of 20
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`down and prepares the patent application. Patent L.R. 3-1(f) requires a party to disclose “the priority
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`date to which each asserted patent is entitled,” whereas Patent L.R. 3-2(b) requires a party to
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`produce “All documents evidencing the conception . . . of each claimed invention, which were
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`created on or before the date of application for patent in suit or the priority date identified pursuant
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`to Patent L.R. 3-1(f), whichever is earlier.” Patent L.R. 3-2(b) (emphasis added). If priority and
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`conception dates were the same, Patent L.R. 3-2(b)’s requirement that one disclose conception
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`documents that predate the priority date would be nonsensical. They are, however, not the same.
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`And the Patent Local Rules use different words, because they require disclosure of different
`information.4
`As Judge Gilliam noted when Apple raised this argument before him, the rule “speaks
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`specifically of priority date” and “[t]here is no obligation to disclose a conception date.” Niemeyer
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`Decl., Ex. 1 at 14. Judge Gilliam further explained that “[t]here’s an obligation to produce
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`documents reflecting a conception date, but -- and, again, this might be an argument for the patent
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`rule drafters for revisions in the future, but I just don’t, on the face of it, see something that directly
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`precludes this course of action in this circumstance.” Id.
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`Apple’s argument is further belied by its own actions. If Apple believed Patent L.R. 3-1(f)
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`required disclosure of conception dates, and knowing OpenTV’s