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`MARK C. SCARSI (Bar No.
`183926)
`mscarsi@milbank.com
`ASHLEE N. LIN (Bar No. 275267)
`anlin@milbank.com
`MILBANK, TWEED, HADLEY &
`MCCLOY LLP
`2029 Century Park East, 33rd Floor
`Los Angeles, CA 90067
`Tel: 424.386.4000
`Fax: 213.629.5063
`
`CHRISTOPHER J. GASPAR
`(admitted pro hac vice)
`cgaspar@milbank.com
`MILBANK, TWEED, HADLEY &
`MCCLOY LLP
`28 Liberty Street
`New York, NY 10005
`Tel: 212.530.5000
`Fax: 212.822.5019
`
`JOHN ALLCOCK (Bar No. 98895)
`john.allcock@dlapiper.com
`SEAN C. CUNNINGHAM (Bar No.
`174931)
`sean.cunningham@dlapiper.com
`ERIN GIBSON (Bar No. 229305)
`erin.gibson@dlapiper.com
`ROBERT WILLIAMS (Bar No. 246990)
`robert.williams@dlapiper.com
`TIFFANY MILLER (Bar No. 246987)
`tiffany.miller@dlapiper.com
`JACOB ANDERSON (Bar No. 265768)
`jacob.anderson@dlapiper.com
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, California 92101-4297
`Tel: 619.699.2700
`Fax: 619.699.2701
`
`ROBERT BUERGI (Bar No. 242910)
`robert.buergi@dlapiper.com
`AMY WALTERS (Bar No. 286022)
`amy.walters@dlapiper.com
`DLA PIPER LLP (US)
`2000 University Avenue
`East Palo Alto, CA 94303-2215
`Telephone: 650.833.2000
`Facsimile: 650.833.2001
`
`Attorneys for Plaintiff
`APPLE INC.
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`APPLE INC.,
`
`Plaintiff,
`
`v.
`
`WI-LAN, INC.,
`
`Defendant.
`
`CASE NO. 3:14-cv-02235-DMS-BLM
`(lead case);
`CASE NO. 3:14-cv-1507-DMS-BLM
`(consolidated)
`
`PLAINTIFF APPLE INC.’S
`OPPOSITION TO DEFENDANT
`WI-LAN, INC.’S MOTION TO STRIKE
`APPLE’S AMENDED INVALIDITY
`CONTENTIONS
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`Dept: 13A
`Judge: Hon. Dana M. Sabraw
`Magistrate Judge: Hon. Barbara L. Major
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`AND RELATED
`COUNTERCLAIMS
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`Case 3:14-cv-02235-DMS-BLM Document 266 Filed 01/26/18 PageID.9928 Page 2 of 17
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`TABLE OF CONTENTS
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`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`APPLE’S AMENDED INVALIDITY CONTENTIONS COMPLY
`WITH THE PATENT LOCAL RULES. ........................................................ 2
`A.
`Patent Local Rule 3.6(b)(2) Expressly Permits Amendments 50
`Days After The Claim Construction Order. .......................................... 2
`B. Wi-LAN Has Not Demonstrated Undue Prejudice From Apple’s
`Amended Invalidity Contentions. ......................................................... 3
`III. EVEN UNDER THE 2013 VERSION OF THE PATENT LOCAL
`RULES, THE COURT SHOULD DENY WI-LAN’S MOTION TO
`STRIKE. .......................................................................................................... 6
`A.
`The Court’s Claim Construction Necessitated Amendments To
`Many Of Apple’s Invalidity Contentions. ............................................ 6
`Good Cause Exists For Apple’s Amendments In Any Event. .............. 7
`1.
`Apple Was Diligent In Amending Its Invalidity
`Contentions. ................................................................................ 8
`The Additional Prior Art References Are Material To The
`Asserted Patents. ....................................................................... 10
`3. Wi-LAN Has Not Been Prejudiced By The Amended
`Contentions. .............................................................................. 11
`IV. CONCLUSION ............................................................................................. 11
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`B.
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`
`TABLE OF AUTHORITIES
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`Page(s)
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`
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`CASES
`
`Acer, Inc. v. Tech. Props. Ltd.,
`2010 WL 3618687 (N.D. Cal. Sept. 10, 2010) ...................................................... 8
`
`Cave Consulting Group, Inc. v. Optuminsight, Inc.,
`No. C11-00469, 2014 WL 4467256 (N.D. Cal. Sept. 10, 2014) ......................... 10
`
`Fujifilm Corp. v. Motorola Mobility LLC,
`No. 12-CV-03587-WHO, 2014 WL 491745 (N.D. Cal. Feb. 5,
`2014) ................................................................................................................ 9, 10
`
`Golden Hour Data Systems, Inc. v. Health Services Integration, Inc.,
`No. 6-cv-7477, 2008 WL 2622794 (N.D. Cal. July 1, 2008) ........................ 4, 5, 8
`
`Karl Storz Endoscopy-Am., Inc. v. Stryker Corp.,
`No. 14-CV-00876-RS (JSC), 2016 WL 2855260 (N.D. Cal. May
`13, 2016) .......................................................................................................... 9, 10
`
`Kilopass Tech. Inc. v. Sidense Corp.,
`No. C 10-02066 SI, 2012 WL 1901198 (N.D. Cal. May 24, 2012) ...................... 4
`
`Network Prot. Scis., LLC v. Fortinet, Inc.,
`No. C 12-01106 WHA, 2013 WL 1949051 (N.D. Cal. May 9, 2013) .................. 9
`
`O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
`467 F.3d 1355 (Fed. Cir. 2006) ............................................................................. 8
`
`Radware Ltd. v. F5 Networks, Inc.,
`No. C-13-02021-RMW, 2014 WL 3728482 (N.D. Cal. July 28,
`2014) ...................................................................................................................... 6
`
`Streak Prod., Inc. v. Antec, Inc.,
`No. C09-04255, 2010 WL 3515752 (N.D. Cal. Sept. 8, 2010) ........................... 10
`
`Synopsys Inc. v. Mentor Graphics Corp,
`No. C-12-06467-MMC, 2014 WL 4760362 (N.D. Cal. Sept. 24,
`2014) ...................................................................................................................... 8
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`Theranos, Inc. v. Fuisz Pharma LLC,
`No. 5:11-cv-5236, 2013 WL 5487356 (N.D. Cal. Oct. 2, 2013) .......................... 8
`
`Yodlee, Inc. v. CashEdge, Inc.,
`No. C05-01550, 2007 WL 1454259 (N.D. Cal. May 17, 2007) ......................... 10
`
`Zest IP Holdings, LLC v. Implant Direct Mfg., LLC,
`No. 10-cv-0541, 2013 WL 5674834 (S.D. Cal. Oct. 16, 2013) .......................... 10
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`S A N D I E G O
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`I.
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`INTRODUCTION
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`The Court should deny Wi-LAN’s overreaching request to strike Apple’s
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`timely amended invalidity contentions.
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`First, Wi-LAN’s “untimeliness” argument relies on a superseded set of
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`Patent Local Rules, not the operative Patent Local Rules. The Court should decline
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`Wi-LAN’s invitation to rewrite the Patent Local Rules mid-case, particularly
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`because Wi-LAN cannot identify a single court decision, judicial comment, or
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`anything else stating that the current Patent Local Rules mean anything other than
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`what they say; that is, that Apple was entitled to amend its invalidity contentions
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`within 50 days of the Court’s claim construction order.
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`Second, Wi-LAN cannot identify any prejudice it suffered from Apple’s
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`timely amendments. Instead, Wi-LAN greatly overstates the scope of Apple’s
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`amendments, and Wi-LAN never explains exactly what those amendments consist
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`of or how those changes prejudice Wi-LAN. For clarity, Apple’s amendments are:
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` For the ’040 patent, Apple added two new claim charts for prior art
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`references (Carvalho and UMTS) that Apple recently discovered, cited two
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`additional GSM-related articles and one additional version of a previously disclosed
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`GSM specification to further explain the previously disclosed and charted GSM
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`reference, and analyzed different combinations of prior art references that Apple
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`disclosed in its June 2017 invalidity contentions;
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` For the Bandwidth Patents and the ’757 patent, Apple simply added
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`further citations to the same prior art references and combinations (Chuah 254,
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`Ericsson and Klayman) that Apple disclosed in June 2017;
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` For the Section 112 charts, Apple moved its June 2017 contentions
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`from the cover pleading to separate claim charts, addressed the impact of the
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`Court’s claim construction ruling on those contentions, and added contentions, such
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`as the lack of antecedent basis, in certain claims;
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` Finally, Apple added 22 prior art references to its cover pleading as
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`background to show, for example, the state of the prior art, which Apple did not
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`chart.
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`None of these amendments caused any prejudice to Wi-LAN, particularly
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`where Wi-LAN has admitted it does not even have validity contentions responsive
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`to Apple’s original set of invalidity contentions served in June 2017.
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`Third, even if the old Patent Local Rules applied to this case (which they do
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`not), many of Apple’s amendments were necessitated by the Court’s claim
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`construction ruling, which in nearly every respect is different from Apple’s
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`proposed constructions. Those amendments therefore meet the standard required
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`by the old set of Patent Local Rules too.
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`Fourth, good cause exists for all of Apple’s amended contentions, because
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`Apple acted diligently in serving its initial and amended contentions, and none of
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`Wi-LAN’s arguments show otherwise. Apple’s amended contentions are material
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`to this case because they further demonstrate that the asserted claims are invalid.
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`II. APPLE’S AMENDED INVALIDITY CONTENTIONS COMPLY
`WITH THE PATENT LOCAL RULES.
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`A.
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`Patent Local Rule 3.6(b)(2) Expressly Permits Amendments 50
`Days After The Claim Construction Order.
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`Apple timely amended its invalidity contentions pursuant to the Patent Local
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`Rules, but Wi-LAN wants the Court to rewrite those rules mid-case. Patent Local
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`Rule 3.6(b)(2) states that a party may serve amended invalidity contentions absent
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`undue prejudice “if, not later than fifty (50) days after service of the court’s Claim
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`Construction Ruling.” In accordance with that rule, Apple served amended
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`invalidity contentions on January 2, 2018—exactly 50 days after the Court’s
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`November 13, 2017 Order Construing Claims. Dkt. No. 203. Wi-LAN does not
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`Rather than disputing that Apple complied with the Patent Local Rules as
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`written, Wi-LAN characterizes the local rules published on the District’s website as
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`“incoherent” and “truncated,” and speculates that the rules omit text the District
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`intended to include. Mot. at 6, n.1. For at least four reasons, the Court should
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`decline to rewrite the Patent Local Rule 3.6(b)(2) deadline after it passed. First,
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`Wi-LAN cites no court decision, judicial comment, or anything else acknowledging
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`the purported omission, let alone a court decision rewriting the rules as Wi-LAN
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`proposes. Mot. at 6. Second, Wi-LAN did not notify the Court or Apple that Wi-
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`LAN believed the Patent Local Rules were “incoherent” until after the 50-day
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`deadline had passed. Third, Wi-LAN’s citation to the superseded 2013 Patent
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`Local Rules and decisions applying those superseded rules (Mot. at 6, n.1) only
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`demonstrates what the rules previously stated—those decisions say nothing about
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`the current set of rules. Fourth, Wi-LAN’s citation to proposed scheduling orders
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`in other cases (Mot. at 5-6) is irrelevant because the Case Management Order in this
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`case contains no such language. Dkt. No. 116 at 2 (“A party opposing a claim of
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`infringement must serve final amended invalidity contentions, within the meaning
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`of Patent L.R. 3.6(b)(2), not later than fifty (50) days after service of the Court’s
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`Claim Construction ruling.”). Thus, Wi-LAN offers no reason to apply anything
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`other than the operative Patent Local Rules, under which Apple’s amended
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`invalidity contentions were timely.
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`B. Wi-LAN Has Not Demonstrated Undue Prejudice From Apple’s
`Amended Invalidity Contentions.
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`Because Apple’s amended invalidity contentions are timely, Wi-LAN can
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`only block those amended contentions by demonstrating “undue prejudice.” Patent
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`Local Rule 3.6(b). Wi-LAN cannot show any prejudice, much less undue
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`prejudice, from Apple’s amended contentions.
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`First, Wi-LAN’s experts will have had more than two months to analyze
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`Apple’s amended contentions by the time they submit their rebuttal expert reports
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`on March 8, 2018, not “barely a month” as Wi-LAN claims (Mot. at 1, 3). Golden
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`Hour Data Systems, Inc. v. Health Services Integration, Inc., No. 6-cv-7477, 2008
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`WL 2622794, at *4 (N.D. Cal. July 1, 2008) (granting leave to amend where expert
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`discovery had not yet begun and plaintiff’s experts would have the opportunity to
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`consider amended contentions). In fact, Wi-LAN’s claim of undue prejudice based
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`on the “late stage” (Mot. at 2) of the amendment is really a complaint about the
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`operation of Patent Local Rule 3.6(b), the timing of the Court’s claim construction
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`ruling and the deadlines set by the CMC Order, many of which Wi-LAN proposed.
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`Second, Wi-LAN’s complaint that Apple added “numerous new claim
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`charts” (Mot. at 1, 3) greatly overstates the scope of Apple’s amendments. Apple
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`added only two new prior art claim charts, added three new references to one
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`previously served chart (GSM), and provided new bibliographic information for a
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`reference disclosed in Apple’s June 2017 contentions (Ericsson).1 Wi-LAN cannot
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`be prejudiced by responding to two new prior art claim charts in rebuttal expert
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`reports that are not due until March.2 Dkt. No. 116 at 4. Wi-LAN also claims
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`Apple “modif[ied] dozens of claim charts that had been provided with Apple’s
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`original contentions” (Mot. at 2-5), but Wi-LAN does not explain how those
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`modifications translate into prejudice. In fact, Wi-LAN does not explain how these
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`modified claim charts changed in any material way—because they did not. Rather,
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`setting aside the three charts identified above, Apple’s modified prior art claim
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`charts cite different portions of previously disclosed references, or analyze different
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`combinations of previously disclosed references, thereby providing further clarity
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`to Apple’s existing contentions. Wi-LAN cannot claim prejudice based on prior art
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`references that Apple disclosed in June 2017. Kilopass Tech. Inc. v. Sidense Corp.,
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`No. C 10-02066 SI, 2012 WL 1901198, at *2-3 (N.D. Cal. May 24, 2012) (granting
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`1 The Ericsson chart in Apple’s June 2017 contentions disclosed excerpts from two
`papers from the same author (Nilo Ericsson), but the bibliographic information
`regarding the second paper, entitled “Adaptive Modulation and Scheduling of IP
`traffic over Fading Channels,” was inadvertently omitted from Apple’s June 2017
`contentions. This omission has been corrected in Apple’s amended contentions.
`2 As Wi-LAN knows, Apple served six claim charts that convert Apple’s original
`Section 112 narrative contentions into claim chart form, provide new contentions
`that expressly account for the Court’s claim construction order, and add further
`Section 112 contentions, such as lack of antecedent basis.
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`leave to amend where amendments were based on “previously disclosed and
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`charted prior art references” that did not “substantially depart from the original
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`contentions”); Golden Hour, 2008 WL 2622794, at *4 (finding good cause where
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`amendments did not “raise new issues but instead merely supplement[ed] [the
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`defendant’s] initial contentions”). Wi-LAN repeatedly complains about “29 new
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`references,” but fails to mention that 22 of the 29 “new” references are not even
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`charted. Rather, Apple identified those 22 prior art references to show, for
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`example, background, the state of the art at the time of the alleged inventions, and
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`the knowledge of a person having skill in the art. Those uncharted references
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`cannot cause any prejudice to Wi-LAN.
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`Third, Wi-LAN’s claim of prejudice rings hollow because Wi-LAN does not
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`yet have validity contentions for any of the invalidity challenges Apple raised in its
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`June 2017 contentions. As Wi-LAN conceded in its January 19, 2018 letter brief to
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`Magistrate Judge Major, providing validity contentions would require Wi-LAN to
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`create “unreasonably voluminous analysis not currently in Wi-LAN’s possession.”
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`Dkt. No. 262 at 3 (emphasis added). If Wi-LAN had not even started to respond to
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`Apple’s original invalidity contentions as of January 19, 2018, it cannot possibly be
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`prejudiced by Apple’s amended invalidity contentions served on January 2, 2018.
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`In other words, Wi-LAN cannot claim that Apple’s amended invalidity contentions
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`“do[] not leave sufficient time for Wi-LAN to develop defenses to these claims and
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`for Wi-LAN’s experts to respond to Apple’s new allegations in their reports” (Mot.
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`at 3), because Wi-LAN has not even started to respond to the 57 prior art claim
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`charts in Apple’s June 2017 contentions.
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`Fourth, Wi-LAN claims it needs more time to “conduct discovery on this
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`late-disclosed alleged prior art,” but Wi-LAN conducted no discovery about any of
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`the prior art references cited in Apple’s June 2017 invalidity contentions. Indeed, if
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`Wi-LAN thought it needed additional time to conduct fact discovery (which it did
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`not), Wi-LAN could have included that request in the parties’ joint request to
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`complete certain discovery after the close of fact discovery. See Dkt. Nos. 257,
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`259. Wi-LAN did not do so, because it does not need any fact discovery on any of
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`the amended contentions.
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`Fifth, Wi-LAN’s claim of prejudice is belied by the fact that Wi-LAN
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`attempted to serve substantial amended infringement contentions on the day fact
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`discovery closed, which were served well past any deadline for Wi-LAN to serve
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`amended infringement contentions. Wi-LAN did not seek leave to amend its
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`contentions, and did not explain the basis for its additions and other changes. Wi-
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`LAN cannot credibly claim that it should be permitted to wait until the close of fact
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`discovery to try to amend its infringement contentions, but Apple cannot amend its
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`invalidity contentions on the date called for by the Patent Local Rules.
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`Because Wi-LAN cannot demonstrate undue prejudice, the Court should
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`deny Wi-LAN’s motion to strike Apple’s timely amended invalidity contentions.
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`III. EVEN UNDER THE 2013 VERSION OF THE PATENT LOCAL
`RULES, THE COURT SHOULD DENY WI-LAN’S MOTION TO
`STRIKE.
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`Even if the Court were to apply the superseded 2013 version of the Patent
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`Local Rules (which it should not), the Court still should deny Wi-LAN’s motion
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`because many of Apple’s amendments were necessitated by the Court’s claim
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`constructions and all are otherwise supported by good cause.
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`A. The Court’s Claim Construction Necessitated Amendments To
`Many Of Apple’s Invalidity Contentions.
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`The Court should deny Wi-LAN’s motion because many of Apple’s
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`amendments were necessitated by the Court’s claim constructions. See Radware
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`Ltd. v. F5 Networks, Inc., No. C-13-02021-RMW, 2014 WL 3728482, at *3 (N.D.
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`Cal. July 28, 2014) (granting leave to amend where constructions differed from
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`those proposed and amendments were sufficiently related to court’s claim
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`construction). Here, with one exception, the Court’s claim constructions “differ
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`from that proposed by” Apple. Dkt. No. 203. The Court’s claim constructions
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`therefore necessitated many of Apple’s amendments, including amendments to
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`Apple’s Section 112 defenses.
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`Apple’s Section 112 claim charts describe in detail how the specification
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`fails to comply with Section 112 based on the Court’s claim constructions.3 For
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`example, for the ’145 patent, Apple identified the underlying claim constructions
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`(“subscriber unit” and “connections”) and described the impact of the Court’s claim
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`construction ruling on the patent’s compliance with Section 112:
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`The ’145 patent specification never adequately discloses
`nor sufficiently describes the term “subscriber unit” as
`construed by the Court … . The ’145 patent specification
`never describes a module that receives UL bandwidth
`from a base station, and allocates the bandwidth across its
`user connections. For example, the specification fails to
`reasonably convey to those of ordinary skill in the art that
`the inventor had possession of such a “module” that was
`not a fixed or portable customer premises equipment and
`could perform the elements of the claimed method. Wi-
`LAN has argued that a “subscriber unit” is not analogous
`to the disclosed “customer premises equipment (CPE)” or
`“subscriber radio stations,” therefore the description of
`“CPE” and “subscriber radio stations” cannot provide the
`required written description of the claimed “subscriber
`unit” as that term has been construed.
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`Dkt. No. 258-3 at pp. 93-94, Exhibit A.112 to Apple’s Amended Invalidity
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`Contentions at 1-2 (emphasis added). Under any reading of the Patent Local Rules,
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`Apple’s amended invalidity contentions based on the Court’s claim construction
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`rulings are proper.
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`B. Good Cause Exists For Apple’s Amendments In Any Event.
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`Regardless of whether Apple’s amended contentions are permissible under
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`Patent Local Rule 3.6(b)(2), they are proper under Rule 3.6(b)(3) because good
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`3 Most of the portions of Apple’s Section 112 charts that do not recite claim
`constructions were previously disclosed in Apple’s original invalidity contentions.
`Compare Dkt. No. 258-3 at p. 87, Exhibit A.112 to Apple’s Amended Invalidity
`Contentions (“a queue” contention) with Dkt. No. 258-3 at p. 14, Apple’s Invalidity
`Contentions (same). Wi-LAN has been on notice of those contentions since June
`2017, and neither Apple’s conversion of those contentions into claim charts, nor
`Apple’s additions that supplement its previously disclosed contentions, constitute a
`basis to strike them.
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`cause exists for each of Apple’s amended contentions.4 Good cause requires a
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`showing that “the party seeking leave to amend acted with diligence promptly when
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`new evidence is revealed.” O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467
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`F.3d 1355, 1363 (Fed. Cir. 2006). The good cause requirement does not require
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`perfect diligence. Synopsys Inc. v. Mentor Graphics Corp, No. C-12-06467-MMC,
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`2014 WL 4760362, at *2 (N.D. Cal. Sept. 24, 2014). Once the moving party shows
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`it was diligent in amending its contentions, the court considers whether the non-
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`moving party “would suffer prejudice if the motion to amend were granted.” Acer,
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`Inc. v. Tech. Props. Ltd., 2010 WL 3618687, at *3 (N.D. Cal. Sept. 10, 2010).
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`“The rules thus seek to balance the right to develop new information in discovery
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`with the need for certainty as to the legal theories.” Golden Hour Data, 2008 WL
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`2622794, at *2 (citing O2 Micro, 467 F.3d at 1366). Absent undue prejudice, the
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`“recent discovery of material, prior art despite earlier diligent search supports a
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`finding of good cause.” Theranos, Inc. v. Fuisz Pharma LLC, No. 5:11-cv-5236,
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`2013 WL 5487356, at *1 (N.D. Cal. Oct. 2, 2013).
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`1.
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`Apple Was Diligent In Amending Its Invalidity Contentions.
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`First and foremost, good cause exists because Apple was diligent in
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`amending its invalidity contentions based on references it located after conducting
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`additional prior art searches following the Court’s claim construction order. The
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`fact that Apple’s searches before June 2017 did not identify these new references
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`does not mean Apple was not diligent. Network Prot. Scis., LLC v. Fortinet, Inc.,
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`No. C 12-01106 WHA, 2013 WL 1949051, at *2 (N.D. Cal. May 9, 2013)
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`(“Unsuccessful prior art searches, standing alone, do not demonstrate an absence of
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`4 To the extent the Court determines that amendment under Patent Local Rule
`3.6(b)(3) is required, Apple respectfully requests that the Court treat Apple’s
`arguments herein as a motion showing good cause or grant Apple leave to submit
`that motion. In addition, Apple discovered this week that the ’723, ’020 and ’761
`patents are not entitled to their claimed priority date because the applicants
`misrepresented to the Patent & Trademark Office the chain of priority for those
`patents. Apple has identified additional prior art based on this discovery, and
`intends to file a separate motion for leave to further amend its invalidity contentions
`on this basis.
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`diligence.”). Notably, courts have found good cause to amend where, as here, the
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`case involved many asserted claims and multiple asserted patents such that the
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`“concomitant scope of the prior art search” is burdensome. Karl Storz Endoscopy-
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`Am., Inc. v. Stryker Corp., No. 14-CV-00876-RS (JSC), 2016 WL 2855260, at *5
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`(N.D. Cal. May 13, 2016); Fujifilm Corp. v. Motorola Mobility LLC, No. 12-CV-
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`03587-WHO, 2014 WL 491745, at *4 (N.D. Cal. Feb. 5, 2014) (permitting addition
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`of prior art references found later in discovery even though they might have been
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`found earlier where the defendant was evaluating “hundreds of other references” for
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`the five asserted patents).
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`Here, in response to Wi-LAN’s six asserted patents and 60 asserted claims,
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`Apple served invalidity contentions in June 2017 that disclose 34 prior art
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`references, 57 detailed claim charts and Section 112 defenses for many claim
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`limitations. The detail in Apple’s June 2017 invalidity contentions “belie[s] a
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`finding that [Apple’s] search was not diligent.” Stryker, 2016 WL 2855260, at *4
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`(finding it “strain[ed] credulity to imagine [the defendant] was not diligent in
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`uncovering and evaluating [that] many references”). Apple’s diligence is further
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`demonstrated by the relatively limited scope of amendments: Apple served only
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`two new prior art claim charts (Carvalho and UMTS, charts B-11 and B-12,
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`respectively),5 cited two new articles and one new version of a previously charted
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`GSM specification that explain how the GSM standard works, cited additional
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`portions of previously disclosed references and additional combinations of
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`previously disclosed references and identified additional, uncharted references in
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`the cover pleading. As soon as Apple identified these additional prior art references
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`and contentions, Apple promptly amended its invalidity contentions in accordance
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`with the Patent Local Rules.
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`Wi-LAN wrongly argues that Apple was not diligent because two uncharted
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`references were cited as prior art in Apple’s patents. Mot. at 4. Courts have
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`5 The UMTS chart includes citations to three UMTS standard specifications.
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`rejected this very argument. See Stryker, 2016 WL 2855260, at *5 (rejecting
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`argument that defendant should have discovered reference earlier merely because
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`the reference was cited by one of the defendant’s patent applications); Fujifilm,
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`2014 WL 491745, at *4 (“Although hindsight is often ‘20/20,’ identifying and
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`evaluating prior art can be difficult, and new information learned in discovery can
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`lead a party to understandably reevaluate evidence found earlier.”). Wi-LAN’s
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`argument that Apple was not diligent fails on the facts and the law.
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`2.
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`The Additional Prior Art References Are Material To The
`Asserted Patents.
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`Good cause exists for Apple’s amendments because the additional prior art
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`references and contentions are material to the asserted patents. Wi-LAN repeatedly
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`cites the Zest IP Holdings decision (Mot. at 2, 3, 5, 7 and 8), but ignores that the
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`court permitted the defendant to amend its contentions to add the reference that the
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`court determined was “material to the patents in suit.” Zest IP Holdings, LLC v.
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`Implant Direct Mfg., LLC, No. 10-cv-0541, 2013 WL 5674834, at *11 (S.D. Cal.
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`Oct. 16, 2013); see also Yodlee, Inc. v. CashEdge, Inc., No. C05-01550, 2007 WL
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`1454259, at *2–3 (N.D. Cal. May 17, 2007) (allowing amendment where newly
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`discovered prior art was “highly material to the merits of the case”). Courts
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`frequently allow amendments based on the “importance of deciding patent
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`invalidity issues on the merits.” Cave Consulting Group, Inc. v. Optuminsight, Inc.,
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`No. C11-00469, 2014 WL 4467256, at *2 (N.D. Cal. Sept. 10, 2014); Streak Prod.,
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`Inc. v. Antec, Inc., N