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`DLA PIPER LLP (US)
`S A N D I E G O
`
`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
`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
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`WEST\280873160
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`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 TO
`STRIKE WI-LAN’S NEW
`INFRINGEMENT THEORIES
`
`Date: June 1, 2018
`Time: 1:30 p.m.
`Dept.: 13A
`Judge: Hon. Dana M. Sabraw
`Magistrate Judge: Hon. Barbara L. Major
`
`
`
`
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`MEMO ISO MOTION TO STRIKE
`3:14-CV-002235-DMS-BLM
`
`

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`Case 3:14-cv-02235-DMS-BLM Document 315-1 Filed 04/20/18 PageID.13977 Page 2 of 21
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`DLA PIPER LLP (US)
`S A N D I E G O
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`TABLE OF CONTENTS
`
`
`I.
`
`II.
`
`Page
`INTRODUCTION ........................................................................................... 1
`BACKGROUND ............................................................................................. 2
`A. Wi-LAN’s August 2017 Final Infringement Contentions Rely
`Exclusively On The LTE Standard. ...................................................... 2
`B. Wi-LAN’s August 2017 Final Infringement Contentions Do Not
`Cite Any Apple-Produced Technical Documents Or Source
`Code. ..................................................................................................... 3
`C. Wi-LAN Insisted During Fact Discovery That Its LTE Standard-
`Based Infringement Contentions Were “Final.” ................................... 4
`D. Wi-LAN’s February 2018 Expert Reports Offer Brand-New
`Product-Based Infringement Theories. ................................................. 4
`III. LEGAL STANDARDS FOR MOTIONS TO STRIKE ................................. 6
`IV. ARGUMENT .................................................................................................. 7
`A. Wi-LAN’s Experts Impermissibly Substituted A New Theory Of
`Infringement In Their Expert Reports................................................... 7
`1.
`Apple Was Surprised By Wi-LAN’s Change Of
`Infringement Theory, Especially After Wi-LAN
`Repeatedly Represented Its Infringement Theories Were
`“Final.” ........................................................................................ 9
`Apple Has No Ability To Cure Wi-LAN’s Change In
`Infringement Theory After The Close Of Fact Discovery. ...... 11
`Permitting Wi-LAN To Fundamentally Change Its
`Infringement Theory Now Would Disrupt The Trial. .............. 12
`The Evidence Is Indisputably Important. ................................. 12
`4.
`5. Wi-LAN Has No Excuse For Failing To Disclose Its
`Product-Based Infringement Theory Sooner. ........................... 12
`The Proper Remedy Is Striking Wi-LAN’s New Infringement
`Theory And Limiting Wi-LAN To The Standards-Based
`Infringement Theory Disclosed In Its Infringement Contentions. ..... 13
`The Court Also Should Strike Dr. Madisetti’s Incorporation Of
`Source Code By Reference. ................................................................ 14
`The Court Also Should Strike Dr. Madisetti’s New Theory
`Concerning The Claimed “Node,” Which Does Not Appear In
`Wi-LAN’s Final Infringement Contentions. ....................................... 15
`CONCLUSION ............................................................................................. 17
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`2.
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`3.
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`B.
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`C.
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`D.
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`V.
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`DLA PIPER LLP (US)
`S A N D I E G O
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`TABLE OF AUTHORITIES
`
`
`Page
`
`
`CASES
`
`2-Way Computing, Inc. v. Sprint Sols., Inc.,
`No. 11-cv-12, 2015 WL 1932173 (D. Nev. Apr. 28, 2015) ................................ 15
`
`Adobe Sys. Inc. v. Wowza Media Sys.,
`2014 WL 709865 (N.D. Cal. Feb. 23, 2014) ............................................. 6, 13, 16
`
`Am. Video Graphics, L.P. v. Elec. Arts, Inc.,
`359 F. Supp. 2d 558 (E.D. Tex. 2005) ................................................................ 13
`
`Ameranth, Inc. v. Pizza Hut, Inc.,
`No. 12-cv-729, 2013 WL 3894880 (S.D. Cal. July 26, 2013) .......................... 6, 9
`
`ASUS Comput. Int’l v. Round Rock Research, LLC,
`No. 12-cv-02099, 2014 WL 1463609 (N.D. Cal. Apr. 11, 2014) ....................... 16
`
`Droplets, Inc. v. Amazon.com, Inc.,
`No. 12-cv-03733, 2013 WL 1563256 (N.D. Cal. Apr. 12, 2013) ....................... 14
`
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`No. 13-cv-03999, 2015 WL 3640694 (N.D. Cal. June 11, 2015) ................... 8, 16
`
`Finjan, Inc. v. Proofpoint, Inc.,
`No. 13-cv-05808-HSG, 2016 WL 612907 (N.D. Cal. Feb. 16, 2016) .................. 7
`
`Finjan, Inc. v. Sophos, Inc.,
`No. 14-cv-01197, 2015 WL 5012679 (N.D. Cal. Aug. 24, 2015) .......... 10, 11, 12
`
`Fujitsu Ltd. v. Netgear Inc.,
`620 F.3d 1321 (Fed. Cir. 2010) ......................................................................... 7, 9
`
`Kinglite Holdings Inc. v. Micro-Star Int’l Co. Ltd.,
`No. 14-cv-03009, 2016 WL 6762573 (C.D. Cal. June 15, 2016) ....................... 10
`
`Multimedia Patent Tr. v. Apple Inc.,
`No. 10-cv-2618, 2012 WL 4547449 (S.D. Cal. Sept. 28, 2012) ................... 10, 11
`
`NessCap Co., Ltd. v. Maxwell Techs., Inc.,
`No. 07-cv-704, 2008 WL 152147 (S.D. Cal. Jan. 16, 2008) ................................. 6
`
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`Case 3:14-cv-02235-DMS-BLM Document 315-1 Filed 04/20/18 PageID.13979 Page 4 of 21
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`DLA PIPER LLP (US)
`S A N D I E G O
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`TABLE OF AUTHORITIES
`(continued)
`
`
`O2 Micro Int’l Ltd. v. Monolithic Power Sys.,
`467 F.3d 1355 (Fed. Cir. 2006) ............................................................................. 9
`
`Page
`
`Radware, Ltd. v. F5 Networks, Inc.,
`No. 13-cv-02024, 2016 WL 590121 (N.D. Cal. Feb. 13, 2016) ......................... 14
`
`Shared Memory Graphics LLC v. Apple, Inc.,
`812 F. Supp. 2d 1022 (N.D. Cal. 2010)................................................................. 6
`
`SkinMedica, Inc. v. Histogen Inc.,
`830 F. Supp. 2d 986 (S.D. Cal. 2011), aff’d, 727 F.3d 1187 (Fed.
`Cir. 2013) ........................................................................................................... 6, 9
`
`Teashot LLC v. Green Mountain Coffee Roasters, Inc.,
`No. 12-cv-0189, 2014 WL 485876 (D. Colo. Feb. 6, 2014) aff’d,
`595 F. App’x 983 (Fed. Cir. 2015) ...................................................................... 11
`
`ViaSat, Inc. v. Space Sys./Loral, Inc.,
`No. 12-cv-00260-H, 2013 WL 12061803 (S.D. Cal. Dec. 6, 2013) ................. 6, 7
`
`Wi-LAN USA, Inc. v. Apple Inc.,
`830 F.3d 1374 (Fed. Cir. 2016) ........................................................................... 16
`
`OTHER AUTHORITIES
`
`Fed. R. Civ. P. 26(a)(2)(B) ....................................................................................... 14
`
`L.R. 3.6(a)(2) ............................................................................................................ 10
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`Case 3:14-cv-02235-DMS-BLM Document 315-1 Filed 04/20/18 PageID.13980 Page 5 of 21
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`DLA PIPER LLP (US)
`S A N D I E G O
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`I.
`
`INTRODUCTION
`
`Wi-LAN radically changed its infringement theory after the close of fact
`
`discovery and after representing that its LTE standard-based infringement
`
`contentions served in August 2017 were “final” and did not require amendment.
`
`Despite its assurances, Wi-LAN did an about-face in its expert reports, asserting a
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`fundamentally different product-based infringement theory. Wi-LAN’s final
`
`infringement contentions cited no source code and no Apple technical documents.
`
`Yet Wi-LAN’s expert reports cite to hundreds of Apple technical documents and
`
`source code files for the first time. And in their depositions, Wi-LAN’s experts,
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`Vijay Madisetti and Trevor Smedley, distanced themselves from any reliance on the
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`LTE standard, confirming Wi-LAN’s improper about-face in its theory.
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`This situation satisfies the factors for a motion to strike in this District. The
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`law prohibits Wi-LAN’s “shifting sands” approach to its infringement theories—
`
`rather, a patentee is limited to the infringement theories disclosed in its
`
`infringement contentions. If Wi-LAN wanted to pursue a product-based
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`infringement theory, it was required to disclose that theory and cite to Apple’s
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`documents and source code in its contentions. Wi-LAN did nothing of the sort.
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`Rather, it insisted its LTE standard-based infringement contentions were final, then
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`surprised Apple with a new product-based theory in its expert reports.
`
`Apple therefore seeks an order: (1) limiting Wi-LAN to the LTE standard-
`
`based infringement theory disclosed in its final infringement contentions;
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`(2) striking Dr. Madisetti’s citations to Apple’s internal technical documents and
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`source code in support of his new product-based infringement theory; (3) striking
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`Dr. Madisetti’s reliance on Dr. Smedley’s “source code” expert report; (4) striking
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`portions of Dr. Madisetti’s untimely “supplemental” expert report; and (5) striking
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`Dr. Madisetti’s new infringement theory concerning the claim term “node,” which
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`Wi-LAN did not disclose in its contentions at all. Wi-LAN should proceed to trial
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`with the LTE standard-based infringement theory it espoused in its final
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`contentions and throughout fact discovery. For the Court’s convenience, Apple has
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`prepared annotated versions of the Madisetti reports (Exhibits A and L) with red
`
`boxes around the material that constitutes new infringement theories and related
`
`evidence that was not disclosed in Wi-LAN’s final infringement contentions.
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`II. BACKGROUND
`
`A. Wi-LAN’s August 2017 Final Infringement Contentions Rely
`Exclusively On The LTE Standard.
`
`On August 10, 2017, Wi-LAN served its Second Amended Disclosure of
`
`Asserted Claims and Infringement Contentions. Ex. B.1 Under the Local Rules,
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`10
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`these are Wi-LAN’s final infringement contentions. In those final contentions, Wi-
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`LAN based its infringement theory exclusively on the LTE standard, citing portions
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`12
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`of the LTE standard and documents related to the LTE standard, including public
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`documents demonstrating the accused Apple iPhones operate on LTE networks.
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`14
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`Cunningham Decl., Ex. B, at Appendices A-F.2 Notably, Wi-LAN’s final
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`15
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`contentions (1) do not explain how any specific components of the iPhone practice
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`the asserted patent claims, (2) do not cite a single document or source code file
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`produced by Apple, Intel, or Qualcomm, (3) do not separately chart accused
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`products with Intel and Qualcomm baseband processors,3 and (4) repeatedly claim
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`the asserted patents are “fundamental” to the LTE standard. Id. at p. 20 (“[T]hese
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`20
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`fundamental inventions, which are implemented in products compliant with the 4G
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`LTE standard, enable advanced features of Apple’s 4G LTE mobile products.”).
`
`/////
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`1 The exhibits cited in this brief are attached to the Declaration of Sean
`Cunningham (“Cunningham Decl.”) filed with this brief.
`
` 2
`
` Wi-LAN also served preliminary infringement contentions in January 2015 and
`amended infringement contentions in May 2017. Cunningham Decl. ¶ 3. In all
`three sets of infringement contentions, Wi-LAN’s infringement theory was based
`exclusively on the LTE standard. Id.
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` 3
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` Qualcomm and Intel supply the baseband processors for the accused iPhones,
`which is the component Wi-LAN claims performs the vast majority of the allegedly
`infringing functionality.
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`Case 3:14-cv-02235-DMS-BLM Document 315-1 Filed 04/20/18 PageID.13982 Page 7 of 21
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`S A N D I E G O
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`B. Wi-LAN’s August 2017 Final Infringement Contentions Do Not
`Cite Any Apple-Produced Technical Documents Or Source Code.
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`On June 29, 2017, Apple produced 204,292 pages of technical documents
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`and more than 200,000 source code files to Wi-LAN. See Cunningham Decl. ¶ 13.
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`That same day, Wi-LAN began inspecting Apple’s source code, and spent
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`approximately 75 days during fact discovery doing so. Cunningham Decl. ¶ 13.
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`By December 13, 2017, one month before the close of fact discovery, Apple had
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`produced at least 390,000 source code files and approximately 1.5 million pages of
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`documents to Wi-LAN. Id.
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`Despite analyzing Apple’s source code for 22 full days, Wi-LAN’s August
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`2017 final infringement contentions do not cite a single module, file, or line of
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`Apple’s source code. See Ex. B at Appendices A-F. Nor do those contentions cite
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`a single technical document produced by Apple, Qualcomm, or Intel. Id. Rather,
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`Wi-LAN’s final infringement contentions rely exclusively on the LTE standard and
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`the fact that the accused iPhones allegedly practice that standard. Id.
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`To be certain of this, Apple propounded Interrogatory No. 2 asking Wi-LAN
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`to identify all facts supporting its infringement claim, including by identifying
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`documents and any testing done on the accused products. Cunningham Decl. ¶ 4;
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`Ex. H at 4. Wi-LAN’s August 25, 2017 response did not cite any Apple source
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`code or technical documents, nor did it identify any testing of the accused products.
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`Ex. H at 4-5. Rather, Wi-LAN: (1) incorporated by reference its August 2017 final
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`infringement contentions; (2) identified “the publicly-available LTE standard and
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`other documents cited in the infringement contentions” (all of which were produced
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`by Wi-LAN); and (3) generically identified “the source code produced by
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`Qualcomm and Apple in this matter.” Id.
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`/////
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`Case 3:14-cv-02235-DMS-BLM Document 315-1 Filed 04/20/18 PageID.13983 Page 8 of 21
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`C. Wi-LAN Insisted During Fact Discovery That Its LTE Standard-
`Based Infringement Contentions Were “Final.”
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`In September 2017, Apple asked Wi-LAN to supplement its response to
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`Interrogatory No. 2 to identify specific portions of source code if Wi-LAN
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`contended the source code related to its infringement theory. Cunningham Decl.
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`¶ 5. Wi-LAN represented it would supplement its response as it received
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`discovery. Ex. C at 1. When Wi-LAN had not done so by November 2017, Apple
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`again asked Wi-LAN to supplement its response (Ex. D at 5), but Wi-LAN
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`contended its response was “complete.” Dkt. No. 232-1 at No. 8 (representing to
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`the Court that Wi-LAN’s interrogatory responses “are complete”).
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`On December 21, 2017, Apple again raised the fact that Wi-LAN never
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`amended its infringement contentions to assert a product-based infringement
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`theory. Ex. E. In response, Wi-LAN again represented that (1) its August 2017
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`infringement contentions were “final,” but (2) it would agree to supplement its
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`response to Interrogatory No. 2 by providing citations to Apple’s source code on
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`January 16, 2018—after the close of fact discovery and without leave of Court.
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`Ex. F. Apple did not agree to this. Ex. G. On the last day of fact discovery, Wi-
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`LAN served a supplemental response to Interrogatory No. 2, listing hundreds of
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`“exemplary” source code files, Apple technical documents and deposition
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`transcripts with no analysis or pinpoint citations. Ex. H. Wi-LAN supplemented its
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`response again on January 29, after the close of fact discovery, adding 13 more
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`pages of lists of source code files, with no analysis or pinpoint citations.
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`Cunningham Decl. ¶ 12.
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`D. Wi-LAN’s February 2018 Expert Reports Offer Brand-New
`Product-Based Infringement Theories.
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`In February 2018, Wi-LAN served expert reports from its two technical
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`experts, Dr. Vijay Madisetti (on alleged infringement) and Dr. Trevor Smedley (on
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`source code). Ex. A, Madisetti Report; Ex. I, Smedley Report. Dr. Madisetti’s
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`report offers new theories of alleged infringement that Wi-LAN did not disclose in
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`its infringement contentions. Dr. Madisetti claims Apple’s products infringe based
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`on the way they operate, not because they purportedly practice the LTE standard.
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`See Ex. A, Madisetti Report at ¶ 106 (“Based on technical documentation and
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`deposition testimony, the LTE standard and the source code, each element of each
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`asserted claim is directly infringed by the accused products.”).4 Dr. Madisetti cites
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`to hundreds of Apple technical documents in support of his product-based theory
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`(id. at ¶¶ 122, 128, 129, 138, 166, 170, 171, 174, 182), none of which were cited in
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`Wi-LAN’s final contentions. The annotated version of Dr. Madisetti’s report
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`submitted with this motion depicts the degree to which Wi-LAN’s infringement
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`theories have changed to a product-based theory.
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`Even more problematic, at his deposition Dr. Madisetti confirmed he is not
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`relying on the LTE or VoLTE standards at all, but rather is relying on the
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`functionality of the accused products. Ex. J, Madisetti Depo. at 144:13-145:3
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`(“I’ve illustrated how these are met in the accused products as sold. I have no other
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`– I have not offered any specific and additional opinions on the standard”); see also
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`id. at 145:5-18 (LTE standard’s logical channels are not part of his analysis); id. at
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`186:5-21 (characterizing a figure in his report showing the LTE standard’s protocol
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`layers as “outside the context of the infringement”). Dr. Madisetti’s deposition
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`confirmed that Wi-LAN’s about-face from a standards-based infringement read to a
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`product-based infringement read was complete.
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`Wi-LAN also served a report by Dr. Smedley analyzing Apple, Qualcomm
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`and Intel source code and technical documents. Ex. I. Again, Wi-LAN cited none
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`of these materials in its final infringement contentions. On the day before his
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`deposition, Dr. Smedley served an “errata” to his report removing and changing a
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`significant portion of his report (along with a “corrected” report) stating he
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`4 Dr. Madisetti mentions the LTE standard in his report, but confirmed at his
`deposition that “I have not offered any specific and additional opinions on the
`standard.” Ex. J, Madisetti Depo. at 144:13-145:3.
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`“removed passages related to the LTE standard … [from his original report because
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`he is] not opining on the LTE standard or infringement.” Ex. K, Errata at ¶ 2.
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`Although Dr. Madisetti does not analyze any specific source code files, he adopts
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`Dr. Smedley’s source code report. Ex. A, Madisetti Report at ¶¶ 108, 133, 147,
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`158, 176, 183, 193, 203, 304. Dr. Madisetti confirmed he intends to testify at trial
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`about the source code in Dr. Smedley’s corrected report, even though none of it was
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`cited in Wi-LAN’s contentions. Ex. J, Madisetti Depo. at 160:15-17.
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`III. LEGAL STANDARDS FOR MOTIONS TO STRIKE
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`The Patent Local Rules are “designed specifically to require parties to
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`crystallize their theories of the case early in the litigation so as to prevent the
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`shifting sands approach ….” Ameranth, Inc. v. Pizza Hut, Inc., No. 12-cv-729,
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`2013 WL 3894880, at *2 (S.D. Cal. July 26, 2013) (internal quotations and citations
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`omitted). The Rules are intended to promote efficient discovery and elicit the
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`parties’ positions on infringement and invalidity early in the case. NessCap Co.,
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`Ltd. v. Maxwell Techs., Inc., No. 07-cv-704, 2008 WL 152147, at *3 (S.D. Cal. Jan.
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`16, 2008). To achieve these goals, a patentee must serve infringement contentions
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`that are detailed enough to put the alleged infringer on notice of the patentee’s
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`theories. These contentions must “state with specificity the theories upon which
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`[Plaintiff] plan[s] to rely early in the litigation.” SkinMedica, Inc. v. Histogen Inc.,
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`830 F. Supp. 2d 986, 995 n.2 (S.D. Cal. 2011), aff’d, 727 F.3d 1187 (Fed. Cir.
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`2013). Among other things, a patentee’s infringement contentions must provide a
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`chart “identifying specifically where each limitation of each asserted claim is found
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`in each accused product… .” Shared Memory Graphics LLC v. Apple, Inc., 812 F.
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`Supp. 2d 1022, 1024 (N.D. Cal. 2010) (emphasis in original).
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`“In a lawsuit for patent infringement in the Southern District of California, a
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`patentee is limited to the infringement theories it sets forth in its infringement
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`contentions.” ViaSat, Inc. v. Space Sys./Loral, Inc., No. 12-cv-00260-H, 2013 WL
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`12061803, at *1 (S.D. Cal. Dec. 6, 2013); see also Adobe Sys. Inc. v. Wowza Media
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`Sys., 2014 WL 709865, at *13 (N.D. Cal. Feb. 23, 2014) (contentions “constitute
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`the universe of infringement theories”). Thus, the inquiry on a motion to strike is
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`whether “the expert has permissibly specified the application of a disclosed theory
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`or impermissibly substituted a new theory altogether.” Finjan, Inc. v. Proofpoint,
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`Inc., No. 13-cv-05808-HSG, 2016 WL 612907, at *1 (N.D. Cal. Feb. 16, 2016). To
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`determine whether to strike a new infringement theory, courts consider the
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`following factors: “(1) the surprise to the party against whom the evidence would
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`be offered; (2) the ability of that party to cure the surprise; (3) the extent to which
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`allowing the evidence would disrupt the trial; (4) the importance of the evidence;
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`and (5) the non-disclosing party’s explanation for its failure to disclose the
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`evidence.” ViaSat, 2013 WL 12061803, at *1-2. All five factors are met here.
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`IV. ARGUMENT
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`A. Wi-LAN’s Experts Impermissibly Substituted A New Theory Of
`Infringement In Their Expert Reports.
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`The Court should strike Wi-LAN’s new product-based infringement theory
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`and hold Wi-LAN to the LTE/VoLTE standard-based infringement theory disclosed
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`in its August 2017 final infringement contentions. In the seminal decision Fujitsu
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`Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010), the Federal Circuit approved
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`of a patentee relying on an industry standard, rather than evidence of how the
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`accused product actually operates, to prove infringement. The Federal Circuit held
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`that courts may rely on industry standards in analyzing infringement, but noted:
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`“Only in the situation where a patent covers every possible implementation of a
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`standard will it be enough to prove infringement by showing standard compliance.”
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`Id. at 1328. Since the Netgear decision, it has become commonplace for patentees
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`to try to prove infringement based on this alternative standards-based theory.
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`This is precisely what Wi-LAN did throughout fact discovery. In its final
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`infringement contentions, Wi-LAN disclosed that its infringement theory relied on
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`mapping the LTE and VoLTE standards to the asserted claims:
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`The Accused Instrumentalities and/or components thereof (e.g., the
`baseband processor and associated software/ firmware) have been
`designed, sold, manufactured, marketed, or advertised by Apple as
`supporting the 3GPP LTE standard for voice over LTE.
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`Ex. B at 3 (emphasis added). In the accompanying claim charts, Wi-LAN cited the
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`LTE/VoLTE standards as alleged proof of infringement for every claim limitation.
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`Ex. B at Appendices A-F. For example, Wi-LAN contended:
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`The claimed method is performed when the Accused
`Instrumentalities, which include a baseband processor that is
`3GPP LTE standard compliant, are activated as part of design
`and development activities (e.g. interoperability, compliance,
`certification, reliability and quality control testing), and/or
`otherwise operated by Apple or other users of the Accused
`Instrumentalities in a manner consistent with the 3GPP LTE
`standard.
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`Ex. B, Appendix F at 105 (emphasis added). Wi-LAN’s product-based theory is
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`not simply “additional evidentiary proof” of a previously disclosed theory—it is a
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`new theory. See Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-cv-03999, 2015 WL
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`3640694, at *2 (N.D. Cal. June 11, 2015) (“This is a new theory not previously
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`disclosed in Plaintiff’s infringement contentions because Defendant had no way of
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`knowing that Plaintiff’s focus would shift to the policy cache and away from the
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`categorization cache identified in the contentions.”). Wi-LAN offered no “proof”
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`of a product-based theory in its final contentions—indeed, Wi-LAN disclosed that
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`it was not advancing such a theory by citing no Apple technical documents or
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`source code as evidence of alleged infringement and confirming multiple times that
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`its LTE/VoLTE standard-based contentions were “final.” To disclose a product-
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`based infringement theory, Wi-LAN was required to map the functionality of the
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`accused products—rather than portions of the LTE and VoLTE standards—to the
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`claims. Wi-LAN instead chose to disclose a standards-based theory.
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`As all patentees do, Wi-LAN tried to reserve the “right” to “amend or
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`supplement these disclosures … in the event, for example, that discovery, including
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`inspection of source code and other technical documents relating to Apple’s
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`Accused Instrumentalities, reveals additional evidence of infringement.” Ex. B at
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`pp. 2-3. Wi-LAN’s problems are two-fold. First, Apple had produced more than
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`200,000 pages of technical documents and more than 200,000 source code files in
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`June 2017, six weeks before Wi-LAN’s final infringement contentions were due.
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`Cunningham Decl. ¶ 13. Wi-LAN thus had the evidence to disclose a product-
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`based infringement read, but did not cite a single Apple-produced document or line
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`of source code. Second, Wi-LAN never sought to amend its infringement
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`contentions to substitute in a product-based infringement theory. On the contrary,
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`Wi-LAN insisted its standards-based theory was “final” throughout fact discovery,
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`waiting until expert reports to change horses. At some point, Wi-LAN apparently
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`recognized that its patents do not cover “every possible implementation” of the
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`VoLTE standard, so Wi-LAN could not meet the Federal Circuit’s Netgear
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`standard. Netgear, 620 F.3d at 1328. Without asking permission, Wi-LAN shifted
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`to a product-based infringement theory. Wi-LAN’s new theory should be struck.
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`1.
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`Apple Was Surprised By Wi-LAN’s Change Of
`Infringement Theory, Especially After Wi-LAN Repeatedly
`Represented Its Infringement Theories Were “Final.”
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`Wi-LAN’s new product-based infringement theory came as a surprise to
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`Apple, because Wi-LAN’s final infringement contentions do not try to map the
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`asserted claims onto the accused products beyond pointing to the LTE/VoLTE
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`standard and do not cite any internal Apple technical documents or source code.
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`Wi-LAN’s infringement case was and is limited to the theory that the accused
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`iPhones allegedly practice the LTE and VoLTE standards. Wi-LAN’s new theory
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`in its expert reports is precisely the “shifting sands” approach that the Patent Local
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`Rules prohibit. Ameranth, 2013 WL 3894880 at *2; SkinMedica, 830 F. Supp. 2d
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`at 995 (“These rules are important because they ‘require parties to crystallize their
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`theories’ so as to ‘prevent the “shifting sands” approach’”) (quoting O2 Micro Int’l
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`Ltd. v. Monolithic Power Sys., 467 F.3d 1355 (Fed. Cir. 2006)).
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`If Wi-LAN had wanted to include a product-based infringement theory as
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`opposed to one based purely on Apple’s alleged practice of an industry standard,
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`Wi-LAN was required to identify the specific components and software, including
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`the documents and source code, that support that theory. Multimedia Patent Tr. v.
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`Apple Inc., No. 10-cv-2618, 2012 WL 4547449, at *3 (S.D. Cal. Sept. 28, 2012);
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`Finjan, Inc. v. Sophos, Inc., No. 14-cv-01197, 2015 WL 5012679, at *3 (N.D. Cal.
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`Aug. 24, 2015) (patentee “must provide pinpoint citations, or the substantial
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`equivalent, to source code” in its contentions); Kinglite Holdings Inc. v. Micro-Star
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`Int’l Co. Ltd., No. 14-cv-03009, 2016 WL 6762573, at *2 (C.D. Cal. June 15, 2016)
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`(“In software patent cases, it has been this Court’s practice to require that
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`infringement contentions include pinpoint citations to source code.”). Wi-LAN did
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`no