Case 3:14-cv-02235-DMS-BLM Document 297 Filed 03/02/18 PageID.11563 Page 1 of 3
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`CASE NO. 14cv2235 DMS (BLM)
`ORDER GRANTING WI-LAN’S
`MOTION TO STRIKE APPLE’S
`AMENDED INVALIDITY
`CONTENTIONS
`
`Plaintiff,
`
`APPLE INC.,
`
`vs.
`WI-LAN, INC.,
`
`Defendant.
`_______________________________
`AND ALL RELATED
`COUNTERCLAIMS.
`
`This case comes before the Court on Wi-LAN’s motion to strike Apple’s
`amended invalidity contentions. Apple filed an opposition to the motion, and Wi-LAN
`filed a reply. After reviewing the parties’ briefs and the Patent Local Rules as they
`appeared on the Court’s website, the Court discovered Patent Local Rule 3.6.b.2 as it
`appeared on the Court’s website was incorrect. Therefore, the Court requested
`supplemental briefing from the parties to address the requirements of the Rule as
`correctly stated, namely, how specific amendments to the invalidity contentions were
`necessitated by the Court’s claim construction. The parties have submitted their
`supplemental briefs, and the motion is now ready for disposition.
`Patent Local Rule 3.6.b.2 provides, “absent undue prejudice to the opposing
`party, a party opposing infringement may only amend its validity contentions: ... if, not
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`Case 3:14-cv-02235-DMS-BLM Document 297 Filed 03/02/18 PageID.11564 Page 2 of 3
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`later than fifty (50) days after service of the court’s Claim Constructing Ruling, the
`party opposing infringement believes in good faith that amendment is necessitated by
`a claim construction that differs from that proposed by such party[.]” Patent Local Rule
`3.6.b.2.a. Here, Apple served its amended invalidity contentions on January 2, 2018,
`fifty (50) days after the Court issued its Markman order. The amended contentions
`were allegedly in response to that order, and more specifically in response to the
`Court’s constructions of the “subscriber” terms, “connections” terms and the terms
`“queue” and “packing sub-header.”
`On each of these terms, the Court rejected Apple’s proposed construction in favor
`of Wi-LAN’s proposed construction. Each of the Court’s constructions was also
`consistent with the constructions given in the previous case between these parties.
`Thus, the Court’s constructions could not have come as a surprise to Apple. On the
`contrary, Apple should have been “‘aware of the risk that the Court could adopt these
`constructions.’” Slot Speakers Techs., Inc. v. Apple, Inc., No. 13-cv-01161-HSG, 2017
`U.S. Dist. LEXIS 161400, at *10 (N.D. Cal. Sep. 29, 2017) (citing Verinata Health, Inc.
`v. Sequenom, Inc., No. C 12-00865 SI, 2014 U.S. Dist. LEXIS 25406, at *2 (N.D. Cal.
`Feb. 26, 2014)). And faced with that risk, Apple could have either made
`accommodations for these constructions in its original invalidity contentions or moved
`to amend its original contentions when it received Wi-LAN’s proposed constructions,
`which were served by at least August 10, 2017. Apple chose neither of those options,
`and instead waited until the last possible day to amend its invalidity contentions, which
`it was entitled to do if it believed “in good faith” that those amendments were
`necessitated by the Court’s claim constructions. Apple did not submit any evidence of
`its good faith belief, therefore the Court is unable to determine whether that standard
`is met here.
`Nevertheless, even if that standard is met, Wi-LAN has shown it would suffer
`undue prejudice if Apple were allowed to amend its invalidity contentions at this late
`date. As stated above, Apple served its amended invalidity contentions on January 2,
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`Case 3:14-cv-02235-DMS-BLM Document 297 Filed 03/02/18 PageID.11565 Page 3 of 3
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`2018. At that time, the fact discovery cut off was only ten days away, leaving Wi-LAN
`with insufficient time to conduct any fact discovery on the amended contentions. See
`Google, Inc. v. Netlist, Inc., No. C 08-4144 SBA, 2010 U.S. Dist. LEXIS 144392, at *8-
`9 (N.D. Cal. May 3, 2010) (finding Google would suffer undue prejudice if defendant
`were allowed to amend infringement contentions where motion to amend filed “on the
`day before the close of fact discovery.” )
`Apple argues Wi-LAN will have had more than two months to address its
`amended contentions as rebuttal expert reports are not due until March 15, 2018. Given
`the nature of the amendments, however, that deadline does not refute Wi-LAN’s
`showing of undue prejudice. Apple’s amendments include at least two new
`obviousness combinations (Chuah and Sau, Ericsson and Ericsson IP Traffic), twenty-
`two new background references, two new claim charts (UMTS and Carvalho) and
`amendments to Apple’s Section 112 defenses. In a case that is nearly four years old,
`involves six patents and where the parties are in the process of completing expert
`discovery and will soon be filing dispositive motions, Wi-LAN would be unduly
`prejudiced in having to investigate and address Apple’s new invalidity theories.
`For this reason, the Court grants Wi-LAN’s motion to strike Apple’s amended
`invalidity contentions.
`IT IS SO ORDERED.
`DATED: March 2, 2018
`
`HON. DANA M. SABRAW
`United States District Judge
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