Case 3:14-cv-02235-DMS-BLM Document 300 Filed 03/02/18 PageID.11589 Page 1 of 11
`
`
`
`
`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
`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
`Tel: 650.833.2000
`Fax: 650.833.2001
`
`Attorneys for Plaintiff
`APPLE INC.
`
`
`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
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`APPLE INC.,
`
`Plaintiff,
`
`v.
`
`WI-LAN, INC.,
`
`Defendant.
`
`
`
`AND RELATED
`COUNTERCLAIMS
`
`CASE NO. 3:14-cv-02235-DMS-BLM
`(lead case);
`CASE NO. 3:14-cv-1507-DMS-BLM
`(consolidated)
`
`APPLE INC.’S REPLY BRIEF IN
`SUPPORT OF ITS MOTION FOR
`LEAVE TO AMEND ITS INVALIDITY
`CONTENTIONS
`
`[FILED UNDER SEAL]
`
`Date: March 9, 2018
`Time: 1:30 p.m.
`Dept.: 13A
`Judge: Hon. Dana M. Sabraw
`Magistrate Judge: Hon. Barbara L. Major
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`DLA PIPER LLP (US)
`S A N D I E G O
`
`
`
`WEST\280483044.1
`
`
`
`
`REPLY ISO MOTION TO AMEND INVALIDITY CONTENTIONS
`3:14-CV-002235-DMS-BLM
`
`REDACTED VERSION OF DOCUMENT FILED UNDER SEAL
`
`

`

`Case 3:14-cv-02235-DMS-BLM Document 300 Filed 03/02/18 PageID.11590 Page 2 of 11
`
`
`
`
`I.
`
`INTRODUCTION
`
`Wi-LAN does not dispute that: (1) the Wi-LAN Prior Art has been in its
`
`possession for years; (2) Wi-LAN did not identify or produce the Wi-LAN Prior
`
`Art in response to Patent Local Rule 3.2(a) or Apple’s Interrogatory No. 6; and (3)
`
`Apple was diligent in seeking leave to amend its contentions once it discovered the
`
`faulty chain of priority last month. Apple’s motion therefore turns on a single
`
`issue—whether Wi-LAN has satisfied its burden of demonstrating that the ’723,
`
`’020 and ’761 patents are entitled to the May 1999 filing date of the ancestor ’518
`
`application and ’068 patent. Wi-LAN has not. Instead, Wi-LAN misapplies dicta
`
`from the Lemelson Federal Circuit decision while ignoring more recent Federal
`
`Circuit decisions, including Zenon Envtl., Inc. v. U.S. Filter Corp., that totally
`
`undermine Wi-LAN’s failed effort to preserve the validity of these three patents.
`
`Wi-LAN also focuses on irrelevant statements it made to the Patent Office in 2001
`
`rather than its misrepresentations to the Patent Office in 2011, and it tries
`
`unsuccessfully to recant its contention that its own Fiberless product practices the
`
`asserted claims. Each of Wi-LAN’s arguments misses the mark, so the Court
`
`should permit Apple’s amendment to its invalidity contentions. Otherwise, Wi-
`
`LAN would be rewarded for its failure to disclose this prior art as it was required to
`
`do.
`
`II. ARGUMENT
`
`A. Wi-LAN Failed To Prove That The ’723, ’020, and ’761 Patents
`Are Entitled To A May 1999 Priority Date.
`
`Wi-LAN, not Apple, bears the burden of establishing that the ’723, ’020 and
`
`’761 patents are entitled to a priority date earlier than their actual 2011 filing dates.
`
`PowerOasis Inc. v. T-Mobile U.S.A., Inc. 522 F.3d 1299, 1305-06 (Fed. Cir. 2008)
`
`(district court “correctly placed the burden on [the patentee] to come forward with
`
`evidence to prove entitlement to claim priority to an earlier filing date”). Wi-LAN
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`DLA PIPER LLP (US)
`S A N D I E G O
`
`
`
`WEST\280483044.1
`
`
`
`-1-
`REPLY ISO MOTION TO AMEND INVALIDITY CONTENTIONS
`3:14-CV-002235-DMS-BLM
`
`REDACTED VERSION OF DOCUMENT FILED UNDER SEAL
`
`

`

`Case 3:14-cv-02235-DMS-BLM Document 300 Filed 03/02/18 PageID.11591 Page 3 of 11
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`has not satisfied its burden of showing that these patents are entitled to the May
`
`1999 priority date, because they are not.
`
`For starters, Wi-LAN mischaracterizes the holding of Lemelson v. TRW, Inc.,
`
`760 F.2d 1254 (Fed. Cir. 1985) to try to claim the Federal Circuit has already
`
`“rejected Apple’s theory.” Opp. at 1. On the contrary, the Lemelson court
`
`addressed a different question (the identity of a species of claims selected for
`
`prosecution) and did not find that the patents at issue were entitled to an effective
`
`filing date earlier than their actual filing date. Rather, the Federal Circuit stated that
`
`“any claims of the [patents at issue] which read on the species of controls of the
`
`10
`
`Group II invention elected for prosecution in the 1954 application would be invalid
`
`11
`
`due to the ‘hiatus’ in disclosure discussed above.” Lemelson, 760 F.2d at 1267
`
`12
`
`(emphasis added). Wi-LAN speculates that the Federal Circuit would have found
`
`13
`
`the patents valid if an intermediary divisional application had been signed, as
`
`14
`
`required by the then-applicable statute. Opp. at 7 n.2. But the Federal Circuit did
`
`15
`
`not reach that question, so Wi-LAN’s speculation is unsupported by the Federal
`
`16
`
`17
`
`Circuit’s actual decision.1
`
`In reality, the Lemelson court found there was a “hiatus” in the required
`
`18
`
`continuity of disclosure because an earlier application had been abandoned. The
`
`19
`
`Federal Circuit reasoned that, at that point, the applicant could no longer reinstate
`
`20
`
`into the application the matter it had previously deleted. Lemelson, 760 F.2d at
`
`21
`
`1267 (“[A]ny of the cancelled matter could have been reinstated into the 1954
`
`22
`
`application by Lemelson without raising any new matter objection, at least until the
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`DLA PIPER LLP (US)
`S A N D I E G O
`
`abandonment of that application in 1961. The hiatus we would observe runs from
`
`1 The portions of Lemelson Wi-LAN cites also are dicta and therefore not binding
`precedent. Love v. Scribner, 691 F. Supp. 2d 1215, 1241 (S.D. Cal. 2010)
`(“General remarks by the appellate court about a broader issue not necessary to the
`result are dicta.”), aff’d sub nom. Love v. Cate, 449 F. App’x 570 (9th Cir. 2011).
`Wi-LAN cites a section of the Lemelson opinion entitled “Additional Comments”
`that comes after the court had already vacated the lower court’s summary judgment
`order and remanded the case. Opp. at 7, citing Lemelson, 760 F.2d at 1266-67. As
`dicta, these “Additional Comments” are not binding as precedent. Love, 691 F.
`Supp. 2d at 1241 (“Dicta have no preclusive effect and are not law of the case.”).
`
`-2-
`
`REPLY ISO MOTION TO AMEND INVALIDITY CONTENTIONS
`WEST\280483044.1
`3:14-CV-002235-DMS-BLM
`
`
`
`REDACTED VERSION OF DOCUMENT FILED UNDER SEAL
`
`

`

`Case 3:14-cv-02235-DMS-BLM Document 300 Filed 03/02/18 PageID.11592 Page 4 of 11
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`this latter event.”). Here, the ’518 application to which Wi-LAN claims priority
`
`issued as the ’068 patent in August 2005. At that point, Wi-LAN could no longer
`
`reinstate into the application any portion of the specification it “deleted” and
`
`“canceled” in December 2002, because the issuance of a patent ends prosecution of
`
`the underlying application. Any continuity of disclosure the ’723, ’020 and ’761
`
`patents may have had upon filing therefore was precluded by a “hiatus” that arose
`
`in August 2005. See Lemelson, 760 F.2d at 1267. The applications that issued as
`
`the ’723, ’020, and ’761 patents were filed six years later, in 2011. Therefore,
`
`when these applications were filed in 2011, they were not entitled to the benefit of
`
`10
`
`the May 1999 filing date of the ’581 application.
`
`11
`
`More recent Federal Circuit cases—which Wi-LAN fails to cite, much less
`
`12
`
`analyze—confirm the conclusion that the chain of priority was broken here. In
`
`13
`
`Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1377 (Fed. Cir. 2007), a case
`
`14
`
`with similar facts, the defendant asserted that the chain of priority was broken
`
`15
`
`because “the asserted claims in the [at-issue] patent were not supported by each
`
`16
`
`patent in the family chain—a requirement for entitlement to the benefit of the filing
`
`17
`
`date of an earlier patent under 35 U.S.C. § 120.” (Emphasis added.) The Federal
`
`18
`
`Circuit agreed with the defendant: “[i]n order for the [later] patent to be entitled to
`
`19
`
`priority from the [earlier] patent, continuity of disclosure must have been
`
`20
`
`maintained throughout a chain of patents from the [earlier] patent leading up to the
`
`21
`
`[later] patent.” Id. at 1378 (emphasis added). Wi-LAN’s assertion that “Apple
`
`22
`
`provides no case law to support its proposition that an amended specification causes
`
`23
`
`a previously filed continuation application (or its children) to lose priority claims”
`
`24
`
`(Opp. at 1) ignores the Federal Circuit’s decision in Zenon without explanation.
`
`25
`
`The Federal Circuit’s requirement of continuity throughout a “chain of
`
`26
`
`patents” was not a mistake, and it controls the conclusion here. Zenon, 506 F.3d at
`
`27
`
`1378. The ’723, ’020 and ’761 patents do not have “continuity of disclosure” with
`
`28
`
`DLA PIPER LLP (US)
`S A N D I E G O
`
`the ’068 patent, because it has an entirely different specification. See Mot. at 8-9.
`
`-3-
`
`REPLY ISO MOTION TO AMEND INVALIDITY CONTENTIONS
`WEST\280483044.1
`3:14-CV-002235-DMS-BLM
`
`
`
`REDACTED VERSION OF DOCUMENT FILED UNDER SEAL
`
`

`

`Case 3:14-cv-02235-DMS-BLM Document 300 Filed 03/02/18 PageID.11593 Page 5 of 11
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`The ’723, ’020 and ’761 patents therefore are not entitled to claim priority from the
`
`’068 patent. See Zenon, 506 F.3d at 1378; see also Lampi Corp. v. Am. Power
`
`Prods., Inc., 228 F.3d 1365, 1377 (Fed. Cir. 2000) (“For a claim in a later-filed
`
`application to be entitled to the filing date of an earlier-filed application under 35
`
`U.S.C. § 120, the earlier application must comply with the requirement of 35 U.S.C.
`
`§ 112, ¶ 1, that the specification ‘contain a written description of the invention.’”).
`
`Here, as Lemelson recognizes, the specification of the ’518 application became final
`
`in August 2005 when the ’068 patent issued, because at that point the applicant
`
`could no longer attempt to reinstate the deleted matter. The ’068 patent confirms
`
`10
`
`the scope of specification of the ’518 application because the patent’s specification
`
`11
`
`does not include any of the content that Wi-LAN deleted from the ’518 application
`
`12
`
`in 2002. Therefore, as of at least August 2005—six years before the filing of the
`
`13
`
`applications that led to the ’723, ’020 and ’761 patents—the specification of the
`
`14
`
`’518 application did not provide written description support for those patents. Mot.
`
`15
`
`at 8-9; see also Encyc. Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345,
`
`16
`
`1351 (Fed. Cir. 2010) (“It makes no sense to allow the applicant to rewrite history
`
`17
`
`and resurrect [an] application’s priority claim.”). These asserted patents therefore
`
`18
`
`are not entitled to the benefit of the May 1999 filing date, and Wi-LAN cannot
`
`19
`
`prove otherwise.
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`DLA PIPER LLP (US)
`S A N D I E G O
`
`B. Good Cause Exists For Apple’s Amendments Because Wi-LAN
`Misrepresented The Chain Of Priority For These Three Patents.
`
`As established in Apple’s motion, Wi-LAN misrepresented the chain of
`
`priority for these three patents to the Patent Office during prosecution and to Apple
`
`in this case, prejudicing Apple. Mot. at 7-9. Apple’s discovery of these
`
`misrepresentations is precisely the type of “surprise” that justifies Apple’s
`
`requested amendments. See Dkt. No. 297 at 2.
`
`Not surprisingly, Wi-LAN claims it did not misrepresent the chain of priority
`
`because, to claim priority to the May 1999 filing date, it needed only to claim
`
`-4-
`
`REPLY ISO MOTION TO AMEND INVALIDITY CONTENTIONS
`WEST\280483044.1
`3:14-CV-002235-DMS-BLM
`
`
`
`REDACTED VERSION OF DOCUMENT FILED UNDER SEAL
`
`

`

`Case 3:14-cv-02235-DMS-BLM Document 300 Filed 03/02/18 PageID.11594 Page 6 of 11
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`priority to the ’518 application, not the ’068 patent that issued from that
`
`application. Opp. at 4-6. But the minimum representation that Wi-LAN could have
`
`hypothetically made to the Patent Office to obtain its claim of priority is different
`
`from what Wi-LAN actually said to the Patent Office, which is that the ’561
`
`application was a continuation of not just the ’518 application, but also the ’068
`
`patent. Mot. at 7; ’723 patent at 1:12-15 (“U.S. patent application Ser. No.
`
`09/859,561, filed May 16, 2001, now U.S. Pat. No. 6,956,834, which is a
`
`continuation of U.S. patent application Ser. No. 09/316,518, filed May 21, 1999,
`
`now U.S. Pat. No. 6,925,068.”) (emphasis added); ’020 patent at 1:18-20 (same);
`
`10
`
`’761 patent at 1:17-20 (same); see also Mot. at Exs. L, M, N. That was and is a
`
`11
`
`misrepresentation.
`
`12
`
`More importantly, it was a misrepresentation for Wi-LAN to tell the Patent
`
`13
`
`Office that the ’561 application was a continuation of either the ’518 application or
`
`14
`
`the ’068 patent when it filed the applications that would issue as the ’723, ’020 and
`
`15
`
`’761 patents in 2011. Mot. at 7-9. Wi-LAN argues that in 2001, when it filed the
`
`16
`
`’561 application, that application was a continuation of the ’518 application, and
`
`17
`
`that there was therefore no misrepresentation. Opp. at 8-9. Again, Wi-LAN misses
`
`18
`
`the point. The Wi-LAN statements that Apple contends are misrepresentations
`
`19
`
`were made in 2011, when Wi-LAN filed the applications that would issue as the
`
`20
`
`’723, ’020, and ’761 patents, not in 2001. Wi-LAN made these 2011 statements as
`
`21
`
`part of the applications that would issue as these three asserted patents, at the time
`
`22
`
`those applications were filed. Mot. at 7:15-25. For example, the Application Data
`
`23
`
`Sheet excerpt in Apple’s motion at 7:22-23 is from an Application Data Sheet filed
`
`24
`
`in 2011. Ex. L; see also Exs. M, N (including the same statement).
`
`25
`
`This time difference is critical, as confirmed by Wi-LAN’s own arguments.
`
`26
`
`Wi-LAN argues that in 2001, the ’561 application was a continuation of the ’518
`
`27
`
`application in part because, at that time, “restoring the [deleted] original
`
`28
`
`DLA PIPER LLP (US)
`S A N D I E G O
`
`specification to the [’518] application” would have been “a permissible
`
`-5-
`
`REPLY ISO MOTION TO AMEND INVALIDITY CONTENTIONS
`WEST\280483044.1
`3:14-CV-002235-DMS-BLM
`
`
`
`REDACTED VERSION OF DOCUMENT FILED UNDER SEAL
`
`

`

`Case 3:14-cv-02235-DMS-BLM Document 300 Filed 03/02/18 PageID.11595 Page 7 of 11
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`reinstatement of previously disclosed matter.” Opp. at 9:1-3 (citing Lemelson, 760
`
`F.2d at 1267). That may be true, but that is beside the point. Once the ’518
`
`application issued as the ’068 patent in August 2005, its prosecution ended and no
`
`content (whether new matter or not) could be reinstated in that application. The
`
`Lemelson court recognized when it found that the abandonment of an earlier
`
`application (which results in the close of prosecution) creates a “hiatus” in
`
`continuity of disclosure. Lemelson, 760 F.2d at 1267. Accordingly, after August
`
`2005, the factual premise of Wi-LAN’s argument—i.e., that Wi-LAN could have
`
`potentially reinstated the deleted specification in the ’518 application—becomes
`
`10
`
`false. Thus, Wi-LAN’s 2011 statements to the Patent Office that the ’561
`
`11
`
`application is a “continuation” of the ’518 application and the ’068 patent were and
`
`12
`
`are misrepresentations.
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`C. Wi-LAN Concedes It Did Not Identify The Wi-LAN Prior Art
`Under The Patent Local Rules Or In Response To Interrogatory
`No. 6.
`
`Wi-LAN does not dispute that it did not identify the Wi-LAN Prior Art under
`
`Patent Local Rule 3.2(a) or in response to Apple’s Interrogatory No. 6. Opp. at 9-
`
`10. Nor does Wi-LAN dispute that its failure to disclose the Wi-LAN Prior Art
`
`prejudiced Apple’s ability to identify that prior art earlier. Id. Instead, Wi-LAN
`
`argues that it was not required to disclose the prior art because the ’723, ’020, and
`
`’761 patents are allegedly entitled to the benefit of the May 1999 filing date.
`
`Because they are not, Wi-LAN was required to disclose the Wi-LAN Prior Art.
`
`D. Wi-LAN Has Not Established That It Would Be Unduly
`Prejudiced By Apple’s Amendment.
`
`Wi-LAN does not and cannot establish that Apple’s proposed amendment to
`
`26
`
`its invalidity contentions would unduly prejudice Wi-LAN. It does not dispute the
`
`27
`
`Wi-LAN Prior Art has been in its possession for years. Opp. at 11. Wi-LAN’s
`
`28
`
`DLA PIPER LLP (US)
`S A N D I E G O
`
`argument that it would suffer prejudice because the Federal Circuit allegedly
`
`-6-
`
`REPLY ISO MOTION TO AMEND INVALIDITY CONTENTIONS
`WEST\280483044.1
`3:14-CV-002235-DMS-BLM
`
`
`
`REDACTED VERSION OF DOCUMENT FILED UNDER SEAL
`
`

`

`Case 3:14-cv-02235-DMS-BLM Document 300 Filed 03/02/18 PageID.11596 Page 8 of 11
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`rejected Apple’s theory in Lemelson (Opp. at 11) fails because Lemelson did not
`
`reject Apple’s theory, as established above. Wi-LAN’s argument that Apple should
`
`have included this prior art in its invalidity contentions “long ago” ignores the fact
`
`that Wi-LAN’s own conduct—misrepresentations to the Patent Office and failure to
`
`disclose the prior art to Apple—delayed Apple’s identification of this prior art.
`
`Opp. at 11; Mot. at 11.
`
`Surprisingly, Wi-LAN now pretends that it never contended its Fiberless
`
`product practiced 28 of 29 asserted claims from the ’723, ’020, and ’761 patents
`
`and that it “does not know if the Fiberless product practiced these claims” because
`
`10
`
`it “does not have access to the source code for the Fiberless products.” Opp. at 11.
`
`11
`
`But Wi-LAN’s new position is contrary to its prior, sworn interrogatory response
`
`12
`
`identifying these 28 asserted claims in response to Apple’s Interrogatory No. 14,
`
`13
`
`which asked Wi-LAN to identify the claims it contended its products practiced.
`
`14
`
`Ex. B. at 7:26-28. Wi-LAN now claims it was merely “reserv[ing] the right to
`
`15
`
`contend” that the Fiberless product practiced those claims, but it must have had
`
`16
`
`some factual basis for identifying 28, but not all 29, of the asserted claims. And
`
`17
`
`Wi-LAN was more definitive in its representations to this Court in briefing on
`
`18
`
`Apple’s motion to compel, stating:
`
`19
`
`20
`
`21
`
`22
`
`In Interrogatory No. 14, Apple seeks information
`concerning any Wi-LAN or Ensemble “prototype and/or
`product” that Wi-LAN contends practices one or more
`claims of any of the patents-in-suit. In response, Wi-LAN
`identified the Libra MX and the Ensemble Fiberless.
`Wi-LAN specifically identified which asserted claims
`allegedly practiced by these products.
`
`23
`
`Dkt. No. 262 at 1 (emphasis added). Kenneth Stanwood, one of the named
`
`24
`
`inventors and Wi-LAN’s corporate designee, further confirmed that the Ensemble
`
`25
`
`Fiberless products practiced claims in the ’723, ’020, and ’761 patents. Ex. V,2
`
`26
`
`Stanwood Depo. Tr. at 116:4-118:10 (“
`
`
`
`27
`
`28
`
`DLA PIPER LLP (US)
`S A N D I E G O
`
`
`2 Exhibit V identified herein is attached to the Declaration of Robert Buergi, filed
`concurrently with this reply brief.
`
`
`WEST\280483044.1
`
`
`
`-7-
`REPLY ISO MOTION TO AMEND INVALIDITY CONTENTIONS
`3:14-CV-002235-DMS-BLM
`
`REDACTED VERSION OF DOCUMENT FILED UNDER SEAL
`
`

`

`Case 3:14-cv-02235-DMS-BLM Document 300 Filed 03/02/18 PageID.11597 Page 9 of 11
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`); 119:16-121:12 (“
`
`.”); 125:25-126:17 (“
`
`
`
`
`
`
`
`
`
`”). Wi-LAN also unequivocally stated in another interrogatory
`
`response that “[t]he technology in the ’145, ’723, ’020, and ’761 patents-in-suit was
`
`embodied in Ensemble’s ‘Fiberless’ product.” Dkt. No. 263-2, Wi-LAN’s
`
`Response to Interrogatory No. 17, at 16 (emphasis added).
`
`Thus, Wi-LAN and its designees have repeatedly contended, in sworn
`
`10
`
`statements, that the Fiberless product practices the ’723, ’020, and ’761 patents.
`
`11
`
`Wi-LAN has since realized that its contentions would result in those claims being
`
`12
`
`invalidated. But rather than move to dismiss these three invalid patents, Wi-LAN is
`
`13
`
`trying unsuccessfully to recant its earlier contentions about the operation of its own
`
`14
`
`products. Wi-LAN’s new claims of ignorance ring hollow.
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`DLA PIPER LLP (US)
`S A N D I E G O
`
`E. Wi-LAN Does Not Dispute Apple Was Diligent In Seeking This
`Amendment.
`
`Wi-LAN does not dispute that Apple was diligent in seeking to amend its
`
`invalidity contentions once it discovered the materiality of the new prior art in
`
`January. Opp. at 10-11. Wi-LAN instead argues that Apple should have identified
`
`the faulty chain of priority for the ’723, ’020, and ’761 patent sooner by reviewing
`
`the file histories of the ancestor patents earlier. Id. But Apple had no reason to do
`
`so in light of Wi-LAN’s misrepresentation that the ’561 application (and the ’834
`
`patent that issued from it) was a “continuation” of the ’068 patent. A
`
`“continuation” relationship means that, as a matter of law, the later patent has the
`
`same disclosure as the earlier patent. E.g., Endo Pharm. Inc. v. Actavis, Inc., 746
`
`F.3d 1371, 1375 n.1 (Fed. Cir. 2014). Thus, if the later patent in a “continuation”
`
`relationship provides written description support for an asserted claim, the earlier
`
`patent will do the same because it has the same disclosure as the later patent. Apple
`
`-8-
`
`REPLY ISO MOTION TO AMEND INVALIDITY CONTENTIONS
`WEST\280483044.1
`3:14-CV-002235-DMS-BLM
`
`
`
`REDACTED VERSION OF DOCUMENT FILED UNDER SEAL
`
`

`

`Case 3:14-cv-02235-DMS-BLM Document 300 Filed 03/02/18 PageID.11598 Page 10 of 11
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`accepted Wi-LAN’s misrepresentation about the “continuation” relationship, and
`
`therefore had no reason to further investigate that link in the chain of priority. To
`
`find otherwise would reward Wi-LAN for its misrepresentation.
`
`Finally, even if Apple had discovered the faulty chain of priority for ’723,
`
`’020, and ’761 patents sooner, Apple still would have been hindered in identifying
`
`the Wi-LAN Prior Art because Wi-LAN failed to disclose that prior art under
`
`Patent Local Rule 3.2(a) and in response to Apple’s Interrogatory No. 6. See Mot.
`
`at 9-10. To find that Apple was not diligent therefore would reward Wi-LAN for
`
`its failure to disclose this prior art as it was required to do.
`
`III. CONCLUSION
`
`For the foregoing reasons, Apple respectfully requests that the Court grant
`
`12
`
`Apple’s leave to amend its invalidity contentions to rely on the Wi-LAN Prior Art.
`
`Dated: March 2, 2018
`
`
`DLA PIPER LLP (US)
`
`By /s/ Sean C. Cunningham
`JOHN ALLCOCK
`SEAN C. CUNNINGHAM
`ERIN GIBSON
`ROBERT BUERGI
`ROBERT WILLIAMS
`TIFFANY MILLER
`JACOB ANDERSON
`AMY WALTERS
`
`MILBANK, TWEED, HADLEY &
`MCCLOY LLP
`Mark C. Scarsi
`Ashlee N. Lin
`Christopher J. Gaspar
`
`Attorneys for Plaintiff
`APPLE INC.
`
`
`
`
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`DLA PIPER LLP (US)
`S A N D I E G O
`
`
`
`WEST\280483044.1
`
`
`
`-9-
`REPLY ISO MOTION TO AMEND INVALIDITY CONTENTIONS
`3:14-CV-002235-DMS-BLM
`
`REDACTED VERSION OF DOCUMENT FILED UNDER SEAL
`
`

`

`Case 3:14-cv-02235-DMS-BLM Document 300 Filed 03/02/18 PageID.11599 Page 11 of 11
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on March 2, 2018, I electronically transmitted the
`
`attached document to the Clerk’s Office using the CM/ECF System for filing and
`
`transmittal of a Notice of Electronic Filing to the CM/ECF registrants.
`
`
`
`
`
`
` /s/ Sean C. Cunningham
`Sean C. Cunningham
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`DLA PIPER LLP (US)
`S A N D I E G O
`
`
`
`WEST\280483044.1
`
`
`
`-10-
`REPLY ISO MOTION TO AMEND INVALIDITY CONTENTIONS
`3:14-CV-002235-DMS-BLM
`
`REDACTED VERSION OF DOCUMENT FILED UNDER SEAL
`
`