Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10530 Page 1 of 17
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`
`
`Allison H. Goddard (211098)
` ali@pattersonlawgroup.com
`PATTERSON LAW GROUP
`402 West Broadway, 29th Floor
`San Diego, CA 92101
`(619) 398-4760
`(619) 756-6991 (facsimile)
`
`Attorneys for Defendant,
`Wi-LAN Inc.
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`
`
`APPLE INC.,
`
`vs.
`
`WI-LAN INC.,
`
`Plaintiff,
`
`Defendant.
`
`_________________________________
`
`WI-LAN INC.,
`
`vs.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`No. 3:14-cv-2235-DMS-BLM (Lead
`Case); Consolidated with 3:14-cv-01507-
`DMS-BLM
`DEMAND FOR JURY TRIAL
`
`DEFENDANT WI-LAN INC.’S
`OPPOSITION TO APPLE INC.’S
`MOTION FOR LEAVE TO AMEND
`APPLE’S INVALIDITY
`CONTENTIONS
`
`Department: 13A
`Judge: Hon. Dana M. Sabraw
`Magistrate: Hon. Barbara L. Major
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`AMEND APPLE’S INVALIDITY CONTENTIONS
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`Case No. 3:14-cv-02235-DMS-BLM
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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10531 Page 2 of 17
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ............................................................................................... 1
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`II. BACKGROUND ................................................................................................. 1
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`III. ARGUMENT ................................................................................................... 3
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`A. Wi-LAN’s Patents Are Entitled to a Priority Date of 1999. ........................... 3
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`1. Overview of Priority Claims ........................................................................ 3
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`2. The ’518 Application’s Amended Specification Did Not Break the Chain
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`of Priority ............................................................................................................ 6
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`B. The ’561 Application Was A “Continuation” of the ’518 Application. .......... 8
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`C. Wi-LAN Complied With Patent L.R. 3.2(a) and 3.1(f). ................................. 9
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`D. Apple Should Not Be Granted Leave To Amend At This Late Date. ...........10
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`IV. CONCLUSION ..............................................................................................12
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`
`
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`AMEND APPLE’S INVALIDITY CONTENTIONS
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`-i-
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`Case No. 3:14-cv-02235-DMS-BLM
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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10532 Page 3 of 17
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Biax Corp. v. NVIDIA Corp.,
`No. 09-cv-01257-PAB-MEH, 2011 U.S. Dist. LEXIS 34744 (D.
`Colo. Mar. 30, 2011) ............................................................................................. 6
`
`Endo Pharms., Inc. v. Actavis, Inc.,
`746 F.3d 1371 (Fed. Cir. 2014) ............................................................................ 4
`
`Lemelson v. TRW, Inc.,
`760 F.2d 1254 (Fed. Cir. 1985) ...................................................................passim
`
`Lockwood v. Am. Airlines,
`107 F.3d 1565 (Fed. Cir. 1997) ............................................................................ 5
`
`O2 Micro Int’l, Ltd. v. Monolithic Power Sys.,
`467 F.3d 1355 (Fed. Cir. 2006) .................................................................... 10, 11
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ............................................................................ 4
`
`Sampson v. Ampex Corp.,
`335 F. Supp. 242 (S.D.N.Y. 1971) ....................................................................... 6
`
`Synopsys Inc. v. Mentor Graphics Corp.,
`No. C-12-06467-MMC (DMR), 2014 U.S. Dist. LEXIS 51445
`(N.D. Cal. Apr. 14, 2014) ................................................................................... 11
`
`Tech. Props. Ltd. LLC v. Canon Inc.,
`No. 14-cv-03640-CW (DMR), 2016 U.S. Dist. LEXIS 52416
`(N.D. Cal. Apr. 19, 2016) ............................................................................... 1, 11
`
`Transco Products Inc. v. Performance Contracting, Inc.,
`38 F.3d 551 (Fed. Cir. 1994) ................................................................................ 4
`
`Wi-LAN USA, Inc. v. Apple Inc.,
`No. 3:13-cv-00798-DMS-BLM (S.D. Cal.) ....................................................... 10
`
`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`AMEND APPLE’S INVALIDITY CONTENTIONS
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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10533 Page 4 of 17
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`
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`Statutes
`
`35 U.S.C. § 112 .......................................................................................................... 5
`
`35 U.S.C. § 120 .................................................................................................. 4, 5, 9
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`Other Authorities
`
`37 C.F.R. § 1.53(d)(2) ................................................................................................ 7
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`37 C.F.R. § 1.76(b)(5) ................................................................................................ 5
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`37 C.F.R. § 1.78 ..................................................................................................... 4, 5
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`37 C.F.R. § 1.121 ........................................................................................... 2, 7, 8, 9
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`37 C.F.R. § 1.125 ........................................................................................... 6, 7, 8, 9
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`L.R. 3.1(f) ............................................................................................................. 9, 10
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`L.R. 3.2(a) .................................................................................................................. 9
`
`M.P.E.P. § 608.01(q).................................................................................................. 6
`
`M.P.E.P. § 201.07 .................................................................................................. 4, 9
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`M.P.E.P. § 201.08 ...................................................................................................... 4
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`M.P.E.P. § 211.05 ...................................................................................................... 9
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`AMEND APPLE’S INVALIDITY CONTENTIONS
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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10534 Page 5 of 17
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`I.
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`INTRODUCTION
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`The Court should deny Apple’s request for leave to amend its invalidity
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`contentions. When Wi-LAN’s predecessor, Ensemble, amended the specification
`
`in its parent patent application, it did not cause a break in the priority chain.
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`Tellingly, Apple provides no case law to support its proposition that an amended
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`specification causes a previously filed continuation application (or its children) to
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`lose priority claims. And Apple’s theory is contrary to statutes and regulations
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`stating that priority is claimed to an application and that application’s filing date,
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`not to the patent that ultimately issues from that application. Indeed, the Federal
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`Circuit rejected Apple’s theory in Lemelson v. TRW, Inc., 760 F.2d 1254 (Fed. Cir.
`
`1985). Thus, Apple’s proposed amendment, which adds only references that are
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`not in fact prior art because they postdate Wi-LAN’s priority date, is futile and
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`should be denied. See Tech. Props. Ltd. LLC v. Canon Inc., No. 14-cv-03640-CW
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`(DMR), 2016 U.S. Dist. LEXIS 52416, at *10 (N.D. Cal. Apr. 19, 2016)
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`(considering relevance of new prior art when denying motion for leave to amend
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`invalidity contentions). Further, Wi-LAN’s representations have been accurate,
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`and allowing amendments to Apple’s invalidity contentions at this late stage would
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`unduly prejudice Wi-LAN.1
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`
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`II. BACKGROUND
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`On May 21, 1999, Wi-LAN’s predecessor, Ensemble Communications, filed
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`Application No. 09/316,518 (“the ’518 Application”). On May 16, 2001,
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`
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`1 This maneuver is Apple’s second attempt to add invalidity contentions it should
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`have added long ago. See Mot. to Strike Am. Invalidity Contentions, ECF No.
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`258.
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`AMEND APPLE’S INVALIDITY CONTENTIONS
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`-1-
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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10535 Page 6 of 17
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`Ensemble filed Application No. 09/859,561 (“the ’561 Application”). The ’561
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`Application was a continuation application of the ’518 Application, containing an
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`identical specification to and claiming priority to the ’518 Application. In August
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`2002, after the continuation application had been filed, Ensemble amended the
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`specification of the parent ’518 Application as permitted by 37 C.F.R. §§ 1.121,
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`1.125(b), and 1.125(c). U.S. Patent 6,625,068 (“the ’068 Patent”) later issued from
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`the ’518 Application. Three of the patents-in-suit, U.S. Patent Nos. 8,462,723
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`(“the ’723 Patent”), 8,615,020 (“the ’020 Patent”), and 8,462,721 (“the ’761
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`Patent”) eventually issued from applications claiming priority to the ’561
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`Application. Relevant priority claims are illustrated in the following diagram:
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`AMEND APPLE’S INVALIDITY CONTENTIONS
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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10536 Page 7 of 17
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`III. ARGUMENT
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`A. Wi-LAN’s Patents Are Entitled to a Priority Date of 1999.
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`Apple’s entire motion hinges on the proposition that Wi-LAN’s priority
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`claims were invalid, yet Apple spends barely a page explaining how Wi-LAN’s
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`chain of priority was supposedly broken. (Mot. 2–3.) Apple also cites essentially
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`no case law in support of its theory that amending a parent application causes a
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`child application to lose its priority date. Nor can it. The statutes, regulations, and
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`Federal Circuit case law make clear that priority is to an application as filed on its
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`filing date.
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`1. Overview of Priority Claims
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`To obtain a patent, an inventor files a patent application, which contains a
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`specification describing the invention in detail and an initial set of claims
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`(describing functionality the inventor believes may be novel and defining the
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`contours of an invention). As the inventor reviews the USPTO’s responses to the
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`original application, the inventor often finds new sets of claims that are supported
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`by the specification of the original application on its filing date and wishes to
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`pursue patenting those claims as well. To allow for those claims to be evaluated
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`based on the original date the invention was disclosed to the USPTO, patent law
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`provides the ability to claim priority to the filing date of earlier patent applications:
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`An application for patent for an invention disclosed in the manner
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`provided by section 112 of this title in an application previously filed
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`in the United States, or as provided by section 363 of this title, which
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`is filed by an inventor or inventors named in the previously filed
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`application shall have the same effect, as to such invention, as though
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`filed on the date of the prior application, if filed before the patenting
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`or abandonment of or termination of proceedings on the first
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`application or on an application similarly entitled to the benefit of the
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`AMEND APPLE’S INVALIDITY CONTENTIONS
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`-3-
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`filing date of the first application and if it contains or is amended to
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`contain a specific reference to the earlier filed application.
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`35 U.S.C. § 120 (pre-AIA) (emphasis added); see 37 C.F.R. § 1.78.
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`A subsequent application claiming priority to an earlier application is
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`typically called a “continuation” or “continuation-in-part.” See Transco Products
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`Inc. v. Performance Contracting, Inc., 38 F.3d 551, 557 (Fed. Cir. 1994). “The
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`disclosure presented in the continuation must be the same as that of the original
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`application; i.e., the continuation should not include anything which would
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`constitute new matter if inserted in the original application.” M.P.E.P. § 201.07
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`10
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`(8th ed.). In contrast, a continuation-in-part may contain new matter. M.P.E.P. §
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`201.08. However, “a patent application is entitled to the benefit of the filing date
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`of an earlier filed application only if the disclosure of the earlier application
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`provides support for the claims of the later application.” PowerOasis, Inc. v. T-
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`Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quoting In re Chu, 66
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`F.3d 292, 297 (Fed. Cir. 1995)).
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`A priority claim is made to a prior patent application and its filing date, not
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`to an issued patent. See 35 U.S.C. § 120 (pre-AIA) (which makes no mention of
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`issued patents); see Endo Pharms., Inc. v. Actavis, Inc., 746 F.3d 1371, 1375 n.1
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`(Fed. Cir. 2014) (to be a “continuation of a prior patent,” child applications must
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`“expressly indicate that they are continuations of the application that issued as” the
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`prior patent) (emphasis added). In fact, when a patent has already issued from a
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`parent application, priority can only be claimed to that parent application that has
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`issued as a patent if the applicant had previously made a priority claim to the
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`parent application in another copending application. Id.
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`Because Wi-LAN’s priority claim is to the ’518 Application, Apple’s
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`repeated statement that Wi-LAN claimed priority to the “’068 patent” is
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`misleading. (See Mot. 2–3, 7–9.) While the ’068 Patent as issued did not contain
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`AMEND APPLE’S INVALIDITY CONTENTIONS
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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10538 Page 9 of 17
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`the full specification upon which Wi-LAN later relied, the ’518 Application upon
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`which the ‘068 Patent was based did. Each priority claim made by Wi-LAN
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`specifically refers to the ’518 Application by application number and filing date, as
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`required by USPTO rules:
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`Except for a continued prosecution application filed under § 1.53(d),
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`any nonprovisional application claiming the benefit of one or more
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`prior filed copending nonprovisional applications or international
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`applications designating the United States of America must contain a
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`reference to each such prior application, identifying it by application
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`number (consisting of the series code and serial number) or
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`international application number and international filing date and
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`indicating the relationship of the applications.
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`37 C.F.R. § 1.78(a)(2) (2001) (emphasis added) (now 37 C.F.R. § 1.78(d)(2)); 37
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`C.F.R. § 1.76(b)(5) (application data sheet must list “the application number, the
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`filing date, the status . . . and relationship of each application for which a benefit is
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`claimed”). The ’068 Patent number is typically listed only in a subsequent
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`parenthetical for reference purposes, further confirming that the priority claim is to
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`the ’518 Application. See 37 C.F.R. § 1.76(b)(5) (patent number should be
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`provided if available). Because the application number and the filing date must be
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`disclosed with each priority claim, the application as filed is the relevant document
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`for determining whether there is priority.
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`“In order to gain the benefit of the filing date of an earlier application under
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`35 U.S.C. § 120, each application in the chain leading back to the earlier
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`application must comply with the written description requirement of 35 U.S.C. §
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`112.” Lockwood v. Am. Airlines, 107 F.3d 1565 (Fed. Cir. 1997). This continuity-
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`of-disclosure requirement is satisfied because the parent ’518 Application
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`AMEND APPLE’S INVALIDITY CONTENTIONS
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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10539 Page 10 of 17
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`contained an identical disclosure to the child application, both as filed and as it
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`stood at the time the child ’561 Application was filed.
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`2. The ’518 Application’s Amended Specification Did Not
`Break the Chain of Priority
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`The USPTO’s rules expressly allow an applicant to amend the specification,
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`and such amendments are common. A substitute specification “may be filed at any
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`point up to payment of the issue fee if it is accompanied by a statement that the
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`substitute specification includes no new matter.” 37 C.F.R. § 1.125(b); M.P.E.P. §
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`608.01(q). A substitute specification “is essentially an amendment to a pending
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`application.” Sampson v. Ampex Corp., 335 F. Supp. 242, 245 (S.D.N.Y. 1971).
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`When a specification is amended “after the original filing date . . . [t]o not
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`constitute new matter, the changes found in the amendment must have been
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`‘inherently contained in the original application’” as of the original filing date.
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`Biax Corp. v. NVIDIA Corp., No. 09-cv-01257-PAB-MEH, 2011 U.S. Dist. LEXIS
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`34744, at *8 (D. Colo. Mar. 30, 2011) (quoting Schering Corp. v. Amgen Inc., 222
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`F.3d 1347, 1352 (Fed. Cir. 2000)). After the ’561 Application was filed—properly
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`claiming priority to the ’518 Application and including exactly the same
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`specification as the original ’518 Application—Ensemble decided to amend the
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`’518 Application’s specification as the rules allowed. See McNett Decl. ¶ 2, Ex. A.
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`This amendment did not break Wi-LAN’s continuity of disclosure. In fact,
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`the Federal Circuit has found “it was error to conclude” that the submission of a
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`substitute specification voluntarily cancelling subject matter in a parent application
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`caused a hiatus in continuity of disclosure for a child application, since “any of the
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`cancelled matter could have been reinstated . . . without raising any new matter
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`AMEND APPLE’S INVALIDITY CONTENTIONS
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`-6-
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`Case No. 3:14-cv-02235-DMS-BLM
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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10540 Page 11 of 17
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`objection.” Lemelson v. TRW, Inc., 760 F.2d 1254, 1259, 1267 (Fed. Cir. 1985).2
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`That is an explicit rejection of Apple’s unsupported assertion that “the Patent
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`Office’s decision to accept the new specification broke the chain of priority.” (See
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`Mot. 3.) Because the parent ’518 Application was filed with the full, original
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`specification (and in fact still had that specification at the time the ’561
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`Application was filed as a continuation), the original specification was never “new
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`matter” and could have been reinstated at any time during the pendency of the ’518
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`Application. See Lemelson, 760 F.2d at 1267; 37 C.F.R. § 1.121(b)(4) (any
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`“previously deleted paragraph or section” of the specification “may be reinstated”
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`by subsequent amendment).
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`Similarly, the original specification did not “cease[] to exist” once the
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`amendment was entered. (See Mot. 3.) Rather, it existed both as a part of the ’518
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`Application’s file history—eligible for reinstatement at the applicant’s discretion
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`under 37 C.F.R. § 1.121(b)(4) and therefore not “new matter”—and as a part of the
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`’561 Application, whose specification contained the entire text of the original ’518
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`specification. See McNett Decl. ¶ 3, Ex. B at 7–40; see Lemelson, 760 F.2d at
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`1267; 37 C.F.R. § 1.121(b)(4).
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`Apple’s argument that the ’518 Application “does not provide written
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`description support” and does not disclose relevant claim features is misleading
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`and false. (See Mot. 8.) The original ’518 Application disclosed these features,
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`2 The court in Lemelson noted that a separate hiatus existed because a divisional
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`application had not been signed by the inventor under the “then applicable
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`statutory requirements” in 1954. 760 F.2d at 1267. There is no longer a
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`requirement that continuation or divisional applications be signed by the inventor,
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`so such a hiatus cannot be present here. See 37 C.F.R. § 1.53(d)(2).
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`AMEND APPLE’S INVALIDITY CONTENTIONS
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`-7-
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`Case No. 3:14-cv-02235-DMS-BLM
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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10541 Page 12 of 17
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`and Apple only notes in footnote 3 that their argument is with regard to the issued
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`’068 specification and not with regard to the not-yet amended ‘518 specification at
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`the USPTO on the day that Wi-LAN filed the continuation application.
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`Because the priority claim to the ’518 Application was not affected by the
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`later amendment to the ’518 specification, and the asserted claims are fully
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`supported by the ’518 Application as originally filed, the patents in question are
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`entitled to a priority date of May 21, 1999.
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`B. The ’561 Application Was A “Continuation” of the ’518 Application.
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`Apple contends that Wi-LAN “misrepresented” the ’561 Application as a
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`“continuation” of the ’518 Application. (Mot. 3, 7.) But the ’561 Application
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`meets every requirement for a continuation. As of 2001, the USPTO defined a
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`continuation as follows:
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`A continuation is a second application for the same invention claimed
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`in a prior nonprovisional application and filed before the original
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`becomes abandoned or patented. The continuation application may be
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`filed under 37 CFR 1.53(b) or 1.53(d). The applicant in the
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`continuation application must include at least one inventor named in
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`the prior nonprovisional application. The disclosure presented in the
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`continuation must be the same as that of the original application; i.e.,
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`the continuation should not include anything which would constitute
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`new matter if inserted in the original application.
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`M.P.E.P. § 201.07 (8th ed.) (emphasis added). Each of these requirements is met.
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`First, the ’518 Application was filed disclosing the same inventions as the
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`’561 Application and was still pending in 2001 when the ’561 Application was
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`filed. Second, the ’561 Application does not contain any subject matter “which
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`would constitute new matter if inserted in the original application.” M.P.E.P. §§
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`AMEND APPLE’S INVALIDITY CONTENTIONS
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`-8-
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`Case No. 3:14-cv-02235-DMS-BLM
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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10542 Page 13 of 17
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`201.07, 211.05. As discussed above, restoring the original specification to the
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`original application would not have constituted new matter, but rather was a
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`permissible reinstatement of previously disclosed matter. Lemelson, 760 F.2d at
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`1267; 37 C.F.R. § 1.121(b)(4).
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`Third, Apple does not dispute that the inventorship between the ’561 and
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`’518 Applications is identical. Finally, the ’561 Application included a priority
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`claim to the ’518 Application under 35 U.S.C. § 120. See McNett Decl. ¶ 3, Ex. B
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`at 4, 7. Accordingly, the ’561 Application meets every requirement to be
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`considered a continuation of the ’518 Application. Wi-LAN was entitled to call it
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`a continuation.
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`C. Wi-LAN Complied With Patent L.R. 3.2(a) and 3.1(f).
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`Apple contends that because it believes the correct priority dates for the
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`patents in question to be in 2000 and 2001, Wi-LAN’s disclosures under the local
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`rules and discovery responses should not have omitted certain Wi-LAN products
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`sold or used between October 1999 and April 2000. Because the correct priority
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`date is in fact May 21, 1999, those products were not in fact prior art, and Wi-LAN
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`was not required to disclose them.
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`Apple disputes the priority dates Wi-LAN disclosed under Patent L.R.
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`3.1(f), which required Wi-LAN to disclose “[f]or any patent that claims priority to
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`an earlier application, the priority date to which each asserted claim allegedly is
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`entitled.” Wi-LAN disclosed the correct priority date of May 21, 1999. Further,
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`even if Wi-LAN’s priority date was inaccurate, Wi-LAN’s response would still
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`have been appropriate. The Local Rule asks what the priority date “allegedly”
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`was, and Wi-LAN has been consistent about the May 21, 1999, priority date ever
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`since the ’561 Application was first filed in 2001.
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`AMEND APPLE’S INVALIDITY CONTENTIONS
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`-9-
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`Case No. 3:14-cv-02235-DMS-BLM
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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10543 Page 14 of 17
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`D. Apple Should Not Be Granted Leave To Amend At This Late Date.
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`“‘[G]ood cause’ requires a showing of diligence.” O2 Micro Int’l, Ltd. v.
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`Monolithic Power Sys., 467 F.3d 1355, 1366 (Fed. Cir. 2006). Even if Apple could
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`successfully dispute the priority dates of these patents, Apple has not shown
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`diligence in doing so. Apple’s argument is based entirely on the fact that the
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`specification of the patents-in-suit is different from the specification printed in the
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`’068 patent, which is a public document cited on the very first page of each of the
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`patents-in-suit. If, as Apple claims, such a discrepancy were in fact fatal to Wi-
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`LAN’s priority claims, Apple should have noticed it when first reviewing the file
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`history of the patents, at least as early as their filing of a declaratory judgment
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`action in 2014. Patent litigators typically review the file history in the earliest
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`stages of a lawsuit, and here a cursory review would have revealed Apple’s alleged
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`defect. But Apple failed to raise this issue until expert discovery.
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`Apple could even have raised this issue in a prior lawsuit, Wi-LAN USA, Inc.
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`v. Apple Inc., No. 3:13-cv-00798-DMS-BLM (S.D. Cal.). That lawsuit involved
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`U.S. Patent 8,315,640, which also claims priority to the ’561 and ’518 Applications
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`and thus presumably has the same issue. Yet the prior lawsuit proceeded all the
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`way through expert discovery and summary judgment, and Apple never raised the
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`issue, showing a lack of diligence.
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`“The burden is on the movant to establish diligence rather than on the
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`opposing party to establish a lack of diligence.” O2 Micro, 467 F.3d at 1366
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`(citing Genentech, Inc. v. Amgen, Inc., 289 F.3d 761, 774 (Fed. Cir. 2002)). Apple
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`does not explain what efforts it initially took to verify Wi-LAN’s priority claims or
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`review the file history of Wi-LAN’s patents, all publicly available documents.
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`Apple should not have waited until expert discovery to develop this irrational
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`defense. See Tech. Props. Ltd., 2016 U.S. Dist. LEXIS 52416 at *17; Synopsys
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
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`AMEND APPLE’S INVALIDITY CONTENTIONS
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`Case No. 3:14-cv-02235-DMS-BLM
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`

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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10544 Page 15 of 17
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`Inc. v. Mentor Graphics Corp., No. C-12-06467-MMC (DMR), 2014 U.S. Dist.
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`LEXIS 51445, at *13 (N.D. Cal. Apr. 14, 2014) (denying leave to amend invalidity
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`contentions due to lack of diligence).
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`As explained in Wi-LAN’s Motion to Strike, Wi-LAN would also be unduly
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`prejudiced by an amendment to invalidity contentions made just weeks before the
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`new rebuttal expert report deadline of March 15, 2018. Cf. Mot. to Strike Am.
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`Invalidity Contentions, ECF No. 258. This motion is yet another maneuver to fix
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`the omissions Apple made long ago. Wi-LAN has not changed its representations
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`regarding priority dates and prior art over many years of litigation with Apple. For
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`Apple to challenge these priority dates under a brand new defense, based on a
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`theory already rejected by Federal Circuit case law in Lemelson, at this late stage in
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`the litigation puts a significant burden on Wi-LAN at the eleventh hour.
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`Further, Apple’s representation that “Wi-LAN has already analyzed the
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`Fiberless product with respect to the ’723, ’020, and ’761 patents, and concluded
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`that the product practiced 28 of the 29 asserted claims” is a complete
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`misrepresentation. (See Mot. 10.) In fact, Wi-LAN does not know if the Fiberless
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`product practiced these claims. Wi-LAN initially told Apple in discovery
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`responses that it “reserve[d] the right to contend” that the Fiberless product
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`practiced some of the claims, but Wi-LAN ultimately concluded it was “unable to
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`verify whether any particular version of any Ensemble Fiberless product met each
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`limitation of each asserted claim.” See McNett Decl. ¶ 4, Ex. C at 48–49. Further,
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`even if Ensemble products eventually practiced the asserted claims, they may not
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`have done so in the earliest releases between 1999 and 2000, as software in
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`communications products is frequently updated. Wi-LAN does not have access to
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`the source code for the Ensemble Fiberless products. Forcing Wi-LAN to conduct
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`further discovery on this new theory after the close of fact discovery would unduly
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`prejudice Wi-LAN.
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`-11-
`AMEND APPLE’S INVALIDITY CONTENTIONS
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`Case No. 3:14-cv-02235-DMS-BLM
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`

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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10545 Page 16 of 17
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`IV. CONCLUSION
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`For the foregoing reasons, Apple’s Motion for Leave to Amend Invalidity
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`Contentions should be denied in its entirety.
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`Dated: February 23, 2018
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`Respectfully submitted,
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`
`
`/s/ Allison Goddard
`By:
` Allison H. Goddard (211098)
` ali@pattersonlawgroup.com
` PATTERSON LAW GROUP
` 402 West Broadway, 29th Floor
` San Diego, CA 92101
` (619) 398-4760
` (619) 756-6991 (facsimile)
`
`
`
` Robert Cote
` rcote@mckoolsmith.com
` Brett Cooper
` bcooper@mckoolsmith.com
` Kevin Schubert
` kschubert@mckoolsmith.com
` Christopher McNett (298893)
` cmcnett@mckoolsmith.com
` McKOOL SMITH, P.C.
` One Bryant Park, 47th Floor
` New York, NY 10036
` (212) 402-9400
` (212) 402-9444 (facsimile)
`
` Seth Hasenour
` shasenour@mckoolsmith.com
` MCKOOL SMITH, P.C.
` 300 W. 6th Street, Suite 1700
` Austin, TX 78701
` (512) 692-8700
` (512) 692-8744 (facsimile)
`
` Attorneys for Defendant,
` Wi-LAN Inc.
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`OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`-12-
`AMEND APPLE’S INVALIDITY CONTENTIONS
`
`
`Case No. 3:14-cv-02235-DMS-BLM
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`Case 3:14-cv-02235-DMS-BLM Document 294 Filed 02/23/18 PageID.10546 Page 17 of 17
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