Case 5:15-cv-02008-EJD Document 91-1 Filed 04/27/16 Page 1 of 6
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`
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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.
`
`
`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 ELIZABETH A.
`NIEMEYER IN SUPPORT OF
`PLAINTIFFS’ OPP. TO DEFENDANT’S
`MOT. TO PRECLUDE RELIANCE ON
`CERTAIN INVENTION DATES AND
`TO STRIKE CERTAIN ALLEGATIONS
`
`Mag. Judge: Nathanael Cousins
`Hearing Time: 1:00 p.m.
`Hearing Date: June 1, 2016
`Courtroom: San Jose Courtroom 7
`DECLARATION ISO PLAINTIFFS’ OPP. TO DEFENDANT’S
`MOT. TO PRECLUDE RELIANCE AND STRIKE
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 91-1 Filed 04/27/16 Page 2 of 6
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`I, Elizabeth A. Niemeyer, declare as follows:
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`I am an attorney licensed to practice in the District of Columbia and admitted pro hac
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`1.
`vice to practice before this Court. I am a partner with Finnegan, Henderson, Farabow, Garrett &
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`Dunner, LLP, counsel of record for OpenTV, Inc., Nagravision S.A., and Nagra France S.A.S.
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`(collectively “OpenTV”) in the above-entitled action. I have personal knowledge of the facts
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`contained in this Declaration, and if called upon to do so, I could and would testify competently
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`thereto.
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`2.
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`I submit this Declaration in support of Plaintiffs’ Opposition to Defendant’s Motion
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`to Preclude Reliance on Certain Invention Dates and to Strike Certain Allegations.
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`3.
`2015 hearing transcript from OpenTV, Inc. v. Apple Inc., No. C 14-1622-HSG, D.I. No. 172.
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`Attached as Exhibit 1 is a true and correct copy of pages 1 through 21 of the April 22,
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`4.
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`Attached as Exhibit 2 is a true and correct copy of excerpts from the file history for
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`U.S. Patent No. 6,233,736 corresponding to an affidavit and accompanying exhibits submitted by the
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`applicant during the prosecution of that patent.
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`5.
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`Attached as Exhibit 3 is a true and correct copy of the Contents page of the file
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`history for U.S. Patent No. 6,233,736
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`6.
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`Attached as Exhibit 4 is a true and correct copy of an email between counsel for
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`OpenTV and Defendant Apple Inc., dated March 29, March 30, April 4, and April 5 2016 (submitted
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`for partial filing under seal).
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`7.
`patent infringement against Apple Inc., which is captioned OpenTV, Inc. v. Apple Inc., No. C 14-
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`On April 9, 2014, Plaintiffs OpenTV, Inc. and Nagravision S.A. filed a complaint for
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`1622-HSG (N.D. Cal. 2014) (Apple I). That case is currently stayed.
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`8.
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`In accordance with the procedural schedule in in Apple I and the Patent Local Rules,
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`OpenTV served its infringement contentions and accompanying document production, which
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`included for each asserted patent (1) an identification of the priority date (i.e., the earliest filing date)
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`(Patent L.R. 3-1(f)), and (2) copies of all non-privileged documents evidencing a conception date
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`earlier than the priority date (Patent L.R. 3-2(b)).
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`DECLARATION ISO PLAINTIFFS’ OPP. TO DEFENDANT’S
`MOT. TO PRECLUDE RELIANCE AND STRIKE
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 91-1 Filed 04/27/16 Page 3 of 6
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`9.
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`Apple subsequently served its invalidity contentions and accompanying document
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`production under Patent L.R. 3-3 and 3-4.
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`10.
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`After receiving Apple’s invalidity contentions, OpenTV decided to waive privilege
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`on certain invention disclosure documents that evidenced a conception date earlier than that
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`disclosed in OpenTV’s Patent L.R. 3-2(b) document production for one of the patents. OpenTV
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`consequently filed a motion for leave to supplement its Patent L.R. 3-2(b) production with the
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`invention disclosure documents. Apple I, D.I. 124.
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`The day after OpenTV filed its motion, Apple served its first set of discovery
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`11.
`requests, which included, inter alia, an interrogatory seeking “the circumstances surrounding the
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`conception and reduction to practice of the claimed invention” for each asserted patent.
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`12.
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`Apple opposed OpenTV’s motion to supplement its Patent L.R. 3-2(b) production,
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`arguing that Patent L.R. 3-1(f)—which calls for an identification of a patent’s “priority date”—
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`required OpenTV to disclose any conception date, which is the same argument Apple makes in its
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`motion before this Court. Apple also argued that Patent L.R. 3-2(b) required OpenTV to produce all
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`conception documents, regardless of whether they were privileged.
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`13.
`L.R. 3-2(b) production on April 22, 2015, and granted OpenTV’s motion. Apple I, D.I. 172.
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`Judge Gilliam heard oral argument on OpenTV’s motion to supplement its Patent
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`14.
`filed the complaint in this action against Apple. For simplicity, the plaintiffs in Apple I and this
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`On May 5, 2015, Plaintiffs OpenTV, Inc., Nagravision S.A., and Nagra France S.A.S.
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`action are each referred to collectively as “OpenTV.”
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`15.
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`On October 15, 2015, OpenTV served its “Disclosure of Asserted Claims and
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`Infringement Contentions” under Patent L.R. 3-1 and produced documents as required by Patent
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`L.R. 3-2. In accordance with Patent L.R. 3-1(f), and consistent with Judge Gilliam’s ruling in Apple
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`I, OpenTV identified the priority date for each asserted patent. OpenTV also produced the
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`documents required under Patent L.R. 3-2, including documents evidencing conception earlier than
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`the priority dates identified under Patent L.R. 3-1(f) and the file histories for each asserted patent,
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`including U.S. Patent No. 6,233,736 (“the ’736 patent”). OpenTV also identified one subcategory of
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`Patent L.R. 3-2 to which each produced document related. OpenTV’s Patent L.R. 3-2(b) submission
`DECLARATION ISO PLAINTIFFS’ OPP. TO DEFENDANT’S
`2
`MOT. TO PRECLUDE RELIANCE AND STRIKE
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 91-1 Filed 04/27/16 Page 4 of 6
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`also stated, “Although not required by the Patent Local Rules but in the interest of providing notice
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`to Apple, OpenTV claims a conception date for the ’169 patent of June 2001. OpenTV has not
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`produced privileged documentation with this disclosure. See OpenTV, Inc. v. Apple Inc., No. C 14-
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`1622 HSG, Dkt. No. 172, April 22, 2015 Hearing Tr. at 4-21 (N.D. Cal. 2014).” D.I. 85-3, Ex. 1 at 8.
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`16.
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`The complete file history for the ’736 patent (excluding cited references) is fewer
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`than 200 pages. During prosecution, the Examiner twice rejected the application. In response to the
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`first rejection over certain prior art, the applicant submitted an affidavit with an invention disclosure
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`form and other supporting documents, totaling 22 pages, demonstrating that the inventor conceived
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`of and diligently reduced to practice the claimed subject matter before the date of the prior art
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`identified by the Examiner. Ex. 2. That invention disclosure form is dated September 14, 1995. The
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`Contents page of the file history, which provides an overview of all documents submitted during
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`prosecution of a patent application, clearly lists the applicant’s affidavit. Ex. 3.
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`17.
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`On November 23, 2015—five weeks after receiving OpenTV’s Patent L.R. 3-1 and 3-
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`2 disclosures—Apple served its first set of discovery requests on OpenTV, including Interrogatory
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`No. 8 seeking, inter alia, “the circumstances surrounding the conception and reduction to practice of
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`the claimed invention.” See D.I. 84-7, Ex. 8 at 1. Apple’s first set of discovery requests required a
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`response 30 days later—December 23, 2015 (Fed. R. Civ. P. 33). Two weeks after serving its first
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`discovery requests, on December 7, 2015, Apple served its invalidity contentions and accompanying
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`document production as required by Patent L.R. 3-3 and 3-4. Two weeks after receiving Apple’s
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`invalidity contentions and 30 days after receiving Apple’s first set of discovery requests, on
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`December 23, 2015, OpenTV served its responses to Apple’s first set of discovery requests. For
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`Interrogatory No. 8, which sought, inter alia, an identification of OpenTV’s claimed conception date
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`for each asserted patent, OpenTV inadvertently identified an incomplete subset of the documents
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`produced as part of Patent L.R. 3-2 production and inadvertently failed to list the invention
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`disclosure form from the ’736 patent file history. D.I. 84-5, Ex. 2 at 12-14.
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`18.
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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
`DECLARATION ISO PLAINTIFFS’ OPP. TO DEFENDANT’S
`3
`MOT. TO PRECLUDE RELIANCE AND STRIKE
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`Case 5:15-cv-02008-EJD Document 91-1 Filed 04/27/16 Page 5 of 6
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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.
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`19.
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`After receiving Apple’s inquiry and 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. OpenTV promptly notified Apple that
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`it intends to rely on those invention disclosure documents and would supplement its interrogatory
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`response to specifically identify them. D.I. 85-7, Ex. 5. OpenTV provided that supplemental
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`response shortly thereafter. D.I. 84-7, Ex. 8 at 3.
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`20.
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`Regarding the ’169 patent, during the parties’ meet-and-confer session, OpenTV
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`confirmed that it has not produced privileged documents reflecting the June 2001 conception date
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`and that it is considering whether or not to waive privilege and produce those privileged documents.
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`OpenTV has not identified any non-privileged documents that reflect a June 2001 conception date
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`for the ’169 patent. To date, OpenTV has not decided whether to waive privilege but has repeatedly
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`informed Apple that, if it decides to do so, OpenTV will seek leave of court to supplement its Patent
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`L.R. 3-2(b) production, just as it did in Apple I.
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`21.
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`Regarding the ’740 patent, OpenTV has been diligently investigating whether it can
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`assert a conception date earlier than the ’740 patent’s priority date. As part of that ongoing
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`investigation, OpenTV determined that it may be able to support an earlier conception date. That
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`investigation is still ongoing and OpenTV has not yet identified supporting documents. Nevertheless,
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`after identifying a potentially earlier conception date, OpenTV quickly brought that information to
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`Apple’s attention. D.I. 86-3, Ex. 7 at 1.
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`22.
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`Apple asked OpenTV to further break down the documents identified in OpenTV’s
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`response to Interrogatory No. 8 (OPENTV2008-00008615 - OPENTV2008-00009148) per asserted
`DECLARATION ISO PLAINTIFFS’ OPP. TO DEFENDANT’S
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`MOT. TO PRECLUDE RELIANCE AND STRIKE
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`Case 5:15-cv-02008-EJD Document 91-1 Filed 04/27/16 Page 6 of 6
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`patent. In response, OpenTV indicated it was “still considering whether we can separately identify
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`smaller ranges of documents for each of the asserted patents.” D.I. 86-3 at 2. Upon additional review
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`of the 21 documents, they relate to the ’081 patent, which the Court found invalid in its earlier ruling
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`on Apple’s motion to dismiss (D.I. 72).
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`23.
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`Throughout Apple’s correspondence and the parties’ discussions, Apple’s inquiries
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`were directed to alleged deficiencies in OpenTV’s interrogatory responses.
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`24.
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`Apple first informed OpenTV that it would file a motion to strike certain information
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`in OpenTV’s Patent L.R. 3-1 or 3-2 disclosures on March 29, 2016. Ex. 4 at 3. Surprised by Apple’s
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`contention, OpenTV pointed Apple to the requirements of the Patent L.R. and the parties’ briefing in
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`Apple I, and inquired what information Apple proposed to strike and the basis for such motion. Id. at
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`3. On April 4, 2016, Apple sent OpenTV an email indicating Apple would seek to strike all
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`qualifying language from OpenTV’s Patent L.R. 3-1(f) and 3-2(b) disclosures. Ex. 4 at 1. Apple’s
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`correspondence states that issue was raised during the parties’ meet-and-confer session March 31,
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`2016. I have no recollection of discussing that particular language but have no reason to dispute
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`Apple’s characterization. The difference between in time March 31 and April 4, however, appears
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`inconsequential. See id. at 1-2.
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`25.
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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 27th day of April, 2016.
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`By: /s/ Elizabeth A. Niemeyer
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`Elizabeth A. Niemeyer
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`DECLARATION ISO PLAINTIFFS’ OPP. TO DEFENDANT’S
`MOT. TO PRECLUDE RELIANCE AND STRIKE
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