Case 3:14-cv-02235-DMS-BLM Document 306-1 Filed 03/30/18 PageID.13028 Page 1 of 21
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`
`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 MEMORANDUM OF
`POINTS AND AUTHORITIES IN
`SUPPORT OF ITS MOTION FOR
`PARTIAL RECONSIDERATION AND
`CLARIFICATION OF ORDER
`STRIKING APPLE’S AMENDED
`INVALIDITY CONTENTIONS
`[DOCKET NO. 297]
`
`Date: TBD
`Time: TBD
`Dept.: 13A
`Judge: Hon. Dana M. Sabraw
`Magistrate Judge: Hon. Barbara L. Major
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`MEMO. ISO MOTION FOR RECONSIDERATION OF COURT’S ORDER
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`TABLE OF CONTENTS
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`S A N D I E G O
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`Page
`INTRODUCTION ........................................................................................... 1
`I.
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`BACKGROUND ............................................................................................. 2
`II.
`III. APPLE REQUESTS RECONSIDERATION OF THE ORDER
`STRIKING THE UMTS AND CARVALHO REFERENCES. ..................... 4
`A.
`Legal Standard For Reconsideration. .................................................... 4
`B.
`The Ameranth Order Justifies Reconsideration And Reversal Of
`The Order Striking Apple’s Contentions Based On The UMTS
`And Carvalho References. .................................................................... 4
`IV. APPLE REQUESTS CLARIFICATION OF OTHER ASPECTS OF
`THE ORDER. .................................................................................................. 7
`A. Apple Requests Clarification That Its Experts May Opine On
`Invalidity Contentions That Apple Timely Disclosed In June
`2017. ...................................................................................................... 7
`1.
`Apple Disclosed The Combination Of Ericsson And
`Ericsson IP Traffic In Its Original Invalidity Contentions. ........ 7
`Apple Disclosed The Combination Of Ericsson and
`Klayman In Its Original Invalidity Contentions. ........................ 9
`Apple Disclosed The Combination Of Doshi And
`Calvignac In Its Original Invalidity Contentions. .................... 11
`Apple Disclosed The Combination Of Chuah And Sau In
`Its Original Contentions. ........................................................... 12
`Apple Disclosed Its Section 112 Defense Based On The
`Claim Limitation “Establish a Length…” In Its Original
`Invalidity Contentions. ............................................................. 13
`B. Apple Requests Clarification That Its Experts Are Not
`Precluded From Discussing Background Prior Art That Was Not
`Required To Be Included In Invalidity Contentions. .......................... 14
`In The Alternative, The Court Should Reconsider Its Order
`Striking Previously Disclosed References And Background
`References. .......................................................................................... 15
`CONCLUSION ............................................................................................. 17
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`2.
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`3.
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`4.
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`5.
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`C.
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`V.
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`S A N D I E G O
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`TABLE OF AUTHORITIES
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`Page
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`
`CASES
`
`ASUS Comput. Int’l v. Round Rock Research, LLC,
`No. 12-cv-02099, 2014 WL 1463609 (N.D. Cal. Apr. 11, 2014) ........... 14, 15, 16
`
`Avago Techs. Gen. IP PTE Ltd. v. Elan Microelectronics Corp.,
`No. 4-cv-05385, 2007 WL 951818 (N.D. Cal. Mar. 28, 2007) ........................... 10
`
`Charleston Med. Therapeutics, Inc. v. AstraZeneca Pharm. LP,
`No. 2:13-CV-2078-RMG, 2015 WL 10913613 (D.S.C. Apr. 16,
`2015) .................................................................................................................... 11
`
`Chattler v. United States,
`No. C-07-4040 MMC, 2009 WL 2877555 (N.D. Cal. Sept. 3, 2009) .................. 4
`
`Digital Reg of Texas, LLC v. Adobe Sys., Inc.,
`No. 12-cv-01971-CW, 2014 WL 4090550 (N.D. Cal. Aug. 19,
`2014) ........................................................................................................ 14, 15, 16
`
`Finjan, Inc. v. Proofpoint, Inc.,
`No. 13-cv-05805-HSG, 2016 WL 612907 (N.D. Cal. Feb. 16, 2016) .................. 7
`
`Finjan, Inc. v. Sophos, Inc.,
`No. 14-CV-01197-WHO, 2016 WL 2988834 (N.D. Cal. May 24,
`2016) ........................................................................................................ 14, 15, 16
`
`Fujifilm Corp. v. Motorola Mobility LLC,
`No. 12-CV-03587-WHO, 2015 WL 757575 (N.D. Cal. Feb. 20,
`2015) ............................................................................................................. passim
`
`In re: Ameranth Cases,
`Case No. 11-cv-1810 DMS (WVG), ECF No. 999 (S.D. Cal. Mar.
`29, 2018) ....................................................................................................... passim
`
`Ixys Corp. v. Advanced Power Tech. Inc.,
`321 F. Supp. 2d 1133 (N.D. Cal. 2004)............................................................... 13
`
`O2 Micro Intern. Ltd. v. Monolithic Power Sys., Inc.,
`467 F.3d 1355 (Fed. Cir. 2006) ........................................................................... 13
`
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`S A N D I E G O
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`TABLE OF AUTHORITIES
`(continued)
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`School Dist. No. 1J v. ACandS, Inc.,
`5 F.3d 1255 (9th Cir. 1993) ....................................................................... 4, 15, 16
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`Page
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`United States v. U.S. Gypsum Co.,
`333 U.S. 364 (1948) .............................................................................................. 4
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`Verinata Health, Inc. v. Sequenom, Inc.,
`No. 12-cv-00865, 2014 WL 4100638 (N.D. Cal. Aug. 20, 2014) .......... 14, 15, 16
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`DLA PIPER LLP (US)
`S A N D I E G O
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`I.
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`INTRODUCTION
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`Apple moves for partial reconsideration of the Court’s Order striking Apple’s
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`amended invalidity contentions (Dkt. No. 297, hereafter “the Order”) as to the
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`UMTS and Carvalho references, because the Court’s decision in In Re: Ameranth
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`Cases yesterday (“the Ameranth Order”) compels a different decision on Wi-LAN’s
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`motion to strike. In the Ameranth Order, the Court correctly held that: (1) Patent
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`Local Rule 3.6.b.2 “does not set out … a requirement” that limits amendments to
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`invalidity contentions only to those based on “unexpected” claim constructions;
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`(2) the Rule does not impose a diligence requirement, but rather “sets a hard and
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`fast deadline for amendments in light of claim construction rulings: 50 days after
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`the order issues”; and (3) alleged “complications” to rebuttal expert reports based
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`on timely amended contentions “do not demonstrate undue prejudice.” These are
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`correct statements of the law in this District and are contrary to the findings of the
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`Order in this case, where Apple served claim construction-based invalidity
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`contentions on the 50-day deadline. It would be manifestly unjust to preclude
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`Apple from amending its invalidity contentions based on the law of this district as
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`correctly articulated in the intervening Ameranth Order.
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`Apple also seeks clarification that the Order does not preclude Apple or its
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`experts from: (1) continuing to rely and opine on any portion of Apple’s originally
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`disclosed invalidity contentions, or (2) discussing prior art references for purposes
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`of describing the background of the art or the understanding of a person of ordinary
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`skill in the art, which is expressly permitted under the law of this Circuit, regardless
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`of whether such a background reference is disclosed in invalidity contentions. The
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`parties dispute the scope of the Order, with Wi-LAN taking the most expansive
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`view of the Order possible, as demonstrated by its motion to strike (Dkt. No. 304),
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`which seeks to exclude as much of Apple’s invalidity case as possible. If the Order
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`did intend to preclude Apple from offering expert opinions on either topic, Apple
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`respectfully requests reconsideration. The Order did not address the sufficiency of
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`Apple’s disclosure of the prior art references at issue in Apple’s original invalidity
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`contentions and did not address whether Apple could rely on references for
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`background and other permitted purposes. If read as expansively as Wi-LAN reads
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`it, the Order would be contrary to the facts and law and would result in manifest
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`injustice to Apple, warranting reconsideration.
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`II. BACKGROUND
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`On March 2, 2018, the Court granted Wi-LAN’s motion to strike Apple’s
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`supplemental invalidity contentions served on January 2, 2018, 50 days after the
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`Court issued its claim construction order. Dkt. No. 297 at 2.
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`In response to the Order, Apple withdrew expert opinions based on
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`contentions that were not disclosed in Apple’s original invalidity contentions served
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`in June 2017, including opinions based on the UMTS and Carvalho references.
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`Dkt. No. 305-3, pp. 1-2. Apple did not withdraw expert opinions based on
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`invalidity arguments that were fairly disclosed in Apple’s original invalidity
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`contentions, because the Order did not strike any portion of Apple’s original
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`invalidity contentions. Thus, Apple did not withdraw expert opinions on:
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`(1) obviousness based on the combination of two papers authored by Nilo C.
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`Ericsson, called “Ericsson” and “Ericsson IP Traffic”; (2) obviousness based on the
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`combination of Ericsson and Klayman; (3) obviousness based on the combination
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`of Doshi and Calvignac; (4) obviousness based on the combination of Chuah and
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`Sau; and (5) Apple’s Section 112 defense based on the limitation “establish a
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`length…” in claim 1 of the ’040 patent.
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`Apple also did not withdraw expert opinions discussing references for
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`purposes of describing the state of the art at the time of the claimed inventions, the
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`understanding of a person of ordinary skill in the art, or supporting other references,
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`because the Patent Local Rules and the law of this Circuit do not require disclosure
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`in invalidity contentions of any references used for these purposes.
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`Apple informed Wi-LAN on March 13, 2018 of its intent to move for
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`clarification of the Order. See Dkt. No. 305-3, pp. 1-2. Wi-LAN thereafter said it
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`intended to move to strike portions of Apple’s expert reports. Id., p.1. Apple
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`responded by confirming on March 21 that it would file Apple’s motion the
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`following day, and that Wi-LAN’s motion to strike, if filed, “would unnecessarily
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`place duplicative issues before the Court.” Dkt. No. 304-7, Ex. D at 617. Wi-LAN
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`raced to file its motion regardless. Dkt. No. 304. Notwithstanding Wi-LAN’s
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`motion to strike, Apple filed its motion given the affirmative relief Apple requested
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`and the requirements for seeking reconsideration, if the Court reached that issue.
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`Dkt. No. 305.
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`Yesterday, the Court issued the Ameranth Order denying a motion to strike
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`amended invalidity contentions. In re: Ameranth Cases, Case No. 11-cv-1810
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`DMS (WVG), ECF No. 999 (S.D. Cal. Mar. 29, 2018), which is attached as Exhibit
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`1 to the Declaration of Sean Cunningham. Upon reviewing the Ameranth Order,
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`Apple informed Wi-LAN today of Apple’s intent to withdraw its prior motion for
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`clarification/reconsideration (Dkt. No. 305) and to file the instant motion.
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`Cunningham Decl., ¶ 2.1 Apple also told Wi-LAN that Apple’s experts would be
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`prepared to testify at their upcoming depositions about the UMTS and Carvalho
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`references, in the event the Court reverses the Order striking those references. Id.
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`Based on the reasoning of the Ameranth Order, Apple seeks reconsideration
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`as to only two prior art references, UMTS and Carvalho. Id. at ¶ 3.2 As to those
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`two prior art references in particular, Apple had a good faith belief that the Court’s
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`1 Apple did not file the notice of withdrawal as intended because it did not receive a
`hearing date for this motion. Upon receiving a hearing date for this motion, Apple
`will file its notice of withdrawal of its Motion for Clarification of Order Striking
`Apple's Amended Invalidity Contentions (Dkt. No. 305).
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` 2
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` Apple is not seeking reconsideration of the Order as to the following contentions:
`(1) obviousness of the ’040 patent claims over the combination of GSM and
`Ermel/Hartmann; (2) lack of written description of the ’040 patent claims as to the
`“node” and “specified connection” terms; (3) indefiniteness of the ’757 patent
`claims as to the “current downlink PHY mode” limitation; (4) indefiniteness of the
`’145 patent claims; and (5) lack of written description of the ’761 patent claims.
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`November 13 claim construction order necessitated Apple’s amended invalidity
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`contentions. Id. at ¶¶ 4-7; see also Dkt. No. 293 at 4-5. Apple timely served
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`invalidity charts based on both prior art references on January 2, 2018, the 50-day
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`“hard and fast” deadline. Cunningham Decl., ¶ 4; Ameranth Order at 2.
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`III. APPLE REQUESTS RECONSIDERATION OF THE ORDER
`STRIKING THE UMTS AND CARVALHO REFERENCES.
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`A. Legal Standard For Reconsideration.
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`A motion for clarification or reconsideration is “appropriate if the district
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`court (1) is presented with newly discovered evidence, (2) committed clear error or
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`the initial decision was manifestly unjust, or (3) if there is an intervening change in
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`controlling law.” School Dist. No. 1J v. ACandS, Inc., 5 F.3d 1255, 1263 (9th Cir.
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`1993). Thus, reconsideration is appropriate where the moving party “demonstrates
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`the district court ‘committed clear error’ or that the challenged decision is
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`‘manifestly unjust.’” Chattler v. United States, No. C-07-4040 MMC, 2009 WL
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`2877555, at *1 (N.D. Cal. Sept. 3, 2009). When a court, after reviewing the entire
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`record, finds that its previous order was clearly erroneous, and is “left with the
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`definite and firm conviction that a mistake has been committed,” reconsideration
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`should be granted. United States v. U.S. Gypsum Co., 333 U.S. 364, 395 (1948);
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`see also School Dist., 5 F.3d at 1263.
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`B.
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`The Ameranth Order Justifies Reconsideration And Reversal Of
`The Order Striking Apple’s Contentions Based On The UMTS
`And Carvalho References.
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`The Ameranth Order articulates the correct standard for amending invalidity
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`contentions under Patent Local Rule 3.6.b.2 and is contrary to the reasoning of the
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`Order in this case. For at least three reasons, it would be manifestly unjust to
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`preclude Apple from amending its invalidity contentions based on the law of this
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`District as correctly articulated in the intervening Ameranth Order.
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`S A N D I E G O
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`First, in striking Apple’s amended invalidity contentions, the Order stated
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`that “the Court’s constructions could not have come as a surprise to Apple” and that
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`“Apple should have been ‘aware of the risk that the Court could adopt these
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`constructions,’” citing only Northern District of California authority. Dkt. No. 297
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`at 2. The Ameranth Order takes the contrary, and correct, position that Patent Local
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`Rule 3.6.b.2 does not limit amended invalidity contentions only to those based on
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`“unexpected” claim constructions. Ameranth Order at 2 (“[Ameranth] asserts, first,
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`that amended invalidity contentions under this Rule must be based on ‘unexpected’
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`claim constructions. The Rule, however, does not set out such a requirement.”).
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`Second, the Order found that Apple was not diligent in amending its
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`invalidity contentions because it “waited until the last possible day to amend its
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`invalidity contentions.” Dkt No. 297 at 2. The Ameranth Order, in contrast,
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`correctly holds that a party serving an amendment on the 50-day Patent Local Rule
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`3.6.b.2 deadline is “in compliance with the timing requirement of the Rule” because
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`“the Rule sets a hard and fast deadline for amendments in light of claim
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`construction rulings: 50 days after the order issues.” Ameranth Order at 2 (“There
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`is no requirement that they be more diligent than that.”).
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`Third, the Order found that Wi-LAN would be unduly prejudiced by having
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`to investigate and address Apple’s new theories in rebuttal expert reports due more
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`than two months later, based solely on Wi-LAN’s attorney argument. Dkt. No. 297
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`at 3. The Ameranth Order, in contrast, correctly found no undue prejudice to the
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`plaintiff from having to prepare rebuttal expert reports in certain cases less than two
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`months after receiving amended invalidity contentions. Ameranth Order at 3
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`(“Ameranth asserts its rebuttal expert report, due on April 9, 2018, ‘has been
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`severely complicated’ by the amended contentions. Such ‘complications,’
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`however, do not demonstrate undue prejudice.”).
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`In short, the Ameranth Order articulates the correct standard for amending
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`invalidity contentions in this District, and it compels a finding that Apple should be
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`permitted to rely on its UMTS and Carvalho invalidity contentions. Apple served
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`its UMTS and Carvalho contentions on the 50-day “hard and fast” deadline under
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`the Patent Local Rules, and both new claim charts were necessitated by the claim
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`construction order, as demonstrated below.
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`Apple’s addition of the UMTS and Carvalho references was necessitated by
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`the Court’s construction of “packing sub-header,” which was broader than the
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`construction proposed by Apple. Cunningham Decl., ¶¶ 4-7; Dkt. No. 293 at 3-4.
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`Following the claim construction order, Apple searched for prior art that disclosed a
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`“packing sub-header” under the Court’s broader construction. Cunningham Decl.,
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`¶ 5. Apple identified the UMTS reference, which discloses a “packing sub-header”
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`under the Court’s construction, but not under Apple’s construction. Id.
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`Specifically, UMTS discloses an “RLC PDU” comprising a header and a payload,
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`where packing sub-header(s) may be located in the RLC PDU header, as opposed to
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`the payload. Id. In conducting those searches, Apple also found the Carvalho
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`reference, which discloses a “packing sub-header” under both Apple’s proposed
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`construction and the Court’s broader construction (because the packing sub-header
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`of Carvalho resides in the payload of the “FlexMux PDU”). Id. at ¶ 6. Apple had
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`not identified either reference as invalidating prior art in its earlier, diligent prior art
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`searches. Id. Thus, Apple identified both references as a direct result of prior art
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`searches to locate prior art that satisfied the Court’s broader construction of
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`“packing sub-header.” Id. at ¶ 7. These are just the sort of amendments expressly
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`contemplated by Patent Local Rule 3.6.b.2; that is, amendments that a party
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`believes in good faith are “necessitated by a claim construction that differs from
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`that proposed by such party.”
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`Apple therefore requests reconsideration and reversal of the Order striking
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`Apple’s UMTS and Carvalho invalidity contentions.
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`IV. APPLE REQUESTS CLARIFICATION OF OTHER ASPECTS OF
`THE ORDER.
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`A. Apple Requests Clarification That Its Experts May Opine On
`Invalidity Contentions That Apple Timely Disclosed In June 2017.
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`Apple also requests clarification that the Order does not prevent Apple from
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`relying on invalidity contentions that Apple timely disclosed in June 2017. Fujifilm
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`Corp. v. Motorola Mobility LLC, No. 12-CV-03587-WHO, 2015 WL 757575, at
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`*28-32 (N.D. Cal. Feb. 20, 2015) (threshold question in determining whether expert
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`reports are properly within the scope of contentions is “whether the expert has
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`permissibly specified the application of a disclosed theory or impermissibly
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`substituted a new theory altogether”). The fact that the Court struck Apple’s
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`amended contentions that elaborated on timely disclosed contentions should not
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`preclude Apple’s experts from opining based upon the timely disclosed original
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`invalidity contentions. Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-05805-HSG,
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`2016 WL 612907, at *1 (N.D. Cal. Feb. 16, 2016) (the scope of invalidity
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`contentions and expert reports are not “coextensive”); Fujifilm Corp., 2015 WL
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`757575, at *28-29 (an alleged infringer is not required in its contentions to “spell
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`out in exact detail every particular combination it intends to assert”).
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`1.
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`Apple Disclosed The Combination Of Ericsson And Ericsson
`IP Traffic In Its Original Invalidity Contentions.
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`Apple requests clarification that Apple’s experts are not precluded from
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`relying on the combination of two papers by Nilo C. Ericsson, which the parties
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`refer to as “Ericsson” and “Ericsson IP Traffic,” because Apple disclosed this
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`obviousness combination by citing extensively to both references within the same
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`Ericsson claim chart in Apple’s June 2017 original invalidity contentions. The
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`Ericsson and Ericsson IP Traffic references are both short, five-page papers
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`published by the same author, Nilo C. Ericsson, within months of one another in
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`1999. See Dkt. No. 296-5, Ex. X, pp. 903-907, Ericsson, Nilo C., “Adaptive
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`Modulation and Scheduling for Fading Channels,” 1999 Global
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`Telecommunications Conference; Dkt. No. 296-5, Ex. Y, pp. 908-12, Ericsson,
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`Nilo C., “Adaptive Modulation and Scheduling of IP Traffic over Fading
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`Channels,” VTC 1999-Fall, IEEE VTS 50th Vehicular Technology Conference.
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`Apple could not have more clearly indicated its intent to rely upon these references’
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`disclosures together—Apple charted both papers in the same invalidity claim chart
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`within Apple’s original invalidity contentions, as shown below. (Ericsson is
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`highlighted in yellow and Ericsson IP Traffic is highlighted in green):
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`Dkt. No. 296-4, Ex. I, pp. 398-99 (emphasis added). Moreover, Apple produced
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`both papers to Wi-LAN pursuant to Patent Local Rule 3.3 on the same day Apple
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`served its original invalidity contentions. Dkt. No. 305-4. Apple did not include a
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`separate title of the Ericsson IP Traffic paper, and referred to both papers as
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`“Ericsson” papers, because they were both written by the same author. The pin cite
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`references to particular pages (page 2669 versus page 851, for example) from each
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`article further show that Apple was citing to the two Ericsson papers produced by
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`Apple, with those two papers’ disclosures combined in a single claim chart.
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`Therefore, Apple’s original invalidity contentions expressly disclosed the
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`contention that the combination of the Ericsson and Ericsson IP Traffic papers
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`renders obvious the asserted claims of the ’757 patent. Apple’s expert opinions
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`about this same combination are therefore not a “new theory altogether,” and Apple
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`should not be precluded from relying on this combination. Fujifilm Corp., 2015
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`WL 757575, at *28-32. The fact that Apple later served amended invalidity
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`contentions clarifying what Wi-LAN already understood—that the original claim
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`chart combined two different Ericsson papers—cannot preclude Apple’s experts
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`from combining Ericsson and Ericsson IP Traffic. Apple therefore asks the Court
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`to clarify the Order to avoid the manifest injustice of precluding Apple from relying
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`on this timely disclosed invalidity contention.
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`2.
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`Apple Disclosed The Combination Of Ericsson and Klayman
`In Its Original Invalidity Contentions.
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`Apple requests clarification that its experts are not precluded from relying on
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`the combination of Ericsson and Klayman, because Apple’s original invalidity
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`contentions disclosed this combination.3 As discussed above, Appendix E2 of
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`Apple’s original invalidity contentions included a detailed claim chart showing how
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`the Ericsson references render obvious—alone or in combination with other
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`references—the limitations of the ’757 patent. Dkt. No. 296-4, Ex. I, pp. 384-416.
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`Appendix E1 of Apple’s original invalidity contentions also included a detailed
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`claim chart showing how Klayman renders obvious—alone or in combination with
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`other references—the limitations of the ’757 patent. Dkt. No. 296-4, Ex. H, pp. 340-
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`83. Apple therefore disclosed where in each item of prior art each element of each
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`asserted claim is found. P.L.R. 3.3. Apple also provided the required notice of the
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`combination of Ericsson and Klayman showing obviousness, as both claim charts
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`reserve the right to combine their respective references with “any other disclosed
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`prior art reference, alone or in combination, whether produced by Apple or Wi-LAN,
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`to show the element and thereby invalidate those claims.” See, e.g., Dkt. No. 296-4,
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`Ex. H, p. 340, n.1. Apple also produced these references to Wi-LAN on the same
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`day it served its original invalidity contentions in June 2017. Apple therefore
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`requests that the Court clarify its Order to avoid the manifest injustice of preventing
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`Apple from relying on this timely disclosed invalidity contention.
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`3 The Order did not identify this combination, but Wi-LAN has since taken the
`position that this combination should be struck from Apple’s expert reports,
`necessitating clarification of the scope of the Order.
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`Case 3:14-cv-02235-DMS-BLM Document 306-1 Filed 03/30/18 PageID.13041 Page 14 of
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`Other courts have found disclosures to be sufficient in similar circumstances
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`and in circumstances with lesser disclosures. For example, in Avago Techs. Gen.
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`IP PTE Ltd. v. Elan Microelectronics Corp., the court agreed that a defendant’s
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`disclosure of prior art combinations was sufficient where those combinations were
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`organized into two groups (one group disclosing motivations to combine, and the
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`other group disclosing image correlation techniques), and the defendant represented
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`that its theory of obviousness was the same for every possible combination of
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`references within the two groups. No. 4-cv-05385, 2007 WL 951818, at *4 (N.D.
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`Cal. Mar. 28, 2007). The court acknowledged plaintiff’s argument that this
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`approach generated “billions of different possible combinations” and still found the
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`disclosure sufficient because it “reasonably specifie[d] the combination of prior art
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`references that allegedly render Avago’s patents obvious.” Id.
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`In Fujifilm, the court also refused to strike portions of defendants’ expert
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`reports relying upon obviousness combinations that were not specifically identified
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`or charted together in prior invalidity contentions. The court agreed with the
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`defendant that, “while it did not specifically identify these combinations [which
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`plaintiff sought to strike], it did adequately disclose them.” 2015 WL 757575, at
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`*28. There, the defendant had stated that the reference at issue “in combination
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`with some or all of a series of other references rendered claims 1 and 35 obvious.”
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`Id. at *29. Therefore, the fact that the defendant did not chart or otherwise disclose
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`the specific combination of the reference (Bottum) with the other references at issue
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`did n