Case 3:14-cv-02235-DMS-BLM Document 339 Filed 05/11/18 PageID.17217 Page 1 of 23
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`Allison H. Goddard (211098)
` ali@pattersonlawgroup.com
`PATTERSON LAW GROUP
`402 West Broadway, 29th Floor
`San Diego, CA 92101
`(619) 398-4760
`(619) 756-6991 (facsimile)
`
`Attorneys for Defendant,
`Wi-LAN Inc.
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`
`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`APPLE INC.,
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`vs.
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`WI-LAN INC.,
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`Plaintiff,
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`Defendant.
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`_________________________________
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`WI-LAN INC.,
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`vs.
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`APPLE INC.,
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`Plaintiff,
`
`Defendant.
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`No. 3:14-cv-2235-DMS-BLM (Lead
`Case); Consolidated with 3:14-cv-01507-
`DMS-BLM
`DEMAND FOR JURY TRIAL
`
`DEFENDANT WI-LAN INC.’S
`OPPOSITION TO APPLE INC.’S
`MOTION FOR PARTIAL
`RECONSIDERATION AND
`CLARIFICATION OF ORDER
`STRIKING APPLE’S AMENDED
`INVALIDITY CONTENTIONS [DKT.
`NO. 306]
`
`Date: May 25, 2018
`Time: 1:30 p.m.
`Department: 13A
`Judge: Hon. Dana M. Sabraw
`Magistrate: Hon. Barbara L. Major
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`OPPOSITION TO MOTION FOR
`RECONSIDERATION
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`Case 3:14-cv-02235-DMS-BLM Document 339 Filed 05/11/18 PageID.17218 Page 2 of 23
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ............................................................................................... 1
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`II. STATEMENT OF RELEVANT FACTS ........................................................... 1
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`III. ARGUMENT ................................................................................................... 4
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` Reconsideration Is An Extraordinary Remedy. ............................................... 4
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` The Court’s Decision to Strike Apple’s Amended Invalidity Contentions
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`Was Just, Correct, And Consistent With Ameranth. .............................................. 5
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` Apple’s Experts May Not Rely on References Stricken From Apple’s
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`Amended Invalidity Contentions. ........................................................................... 8
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` Ericsson IP Traffic Was Not Adequately Disclosed in Apple’s Original
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`Invalidity Contentions. .........................................................................................10
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` Apple’s Boilerplate Disclaimer Was Not Adequate Disclosure of the
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`Undisclosed Combinations of Ericsson/Klayman, Doshi/Calvignac, and
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`Chuah/Sau. ............................................................................................................11
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` Apple’s Section 112 Expert Opinions Are Not Supported by Apple’s
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`Invalidity Contentions. .........................................................................................14
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` Apple’s Invalidity Experts Are Not Entitled to Rely on Undisclosed
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`Background Prior Art. ..........................................................................................15
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` Apple’s Expert Reports Are Not Supported By Apple’s Original Invalidity
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`Contentions. ..........................................................................................................17
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`IV. CONCLUSION ..............................................................................................17
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`OPPOSITION TO MOTION FOR
`RECONSIDERATION
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`Case 3:14-cv-02235-DMS-BLM Document 339 Filed 05/11/18 PageID.17219 Page 3 of 23
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`CASES
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`TABLE OF AUTHORITIES
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`Page(s)
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`Abdulkhalik v. City of San Diego,
`No. 08-CV-1515 MMA (NLS), 2009 WL 3514547 (S.D. Cal. Oct.
`26, 2009) ............................................................................................................... 5
`
`Avago Techs. Gen. IP Pte Ltd. v. Elan Microelecs. Corp.,
`No. C04-05385, 2007 WL 2103896 (N.D. Cal. July 20, 2007),
`aff’d, 2007 WL 2433386 (N.D. Cal. Aug. 22, 2007)............................................ 9
`
`Avago Techs. Gen. IP PTE Ltd. v. Elan Microelectronics Corp.,
`No. 4-cv-05385, 2007 WL 951818 (N.D. Cal. Mar. 28, 2007) .......................... 13
`
`Bayer Healthcare Pharm., Inc. v. River's Edge Pharm., LLC,
`No. 1:11-cv-1634, 2015 WL 11142427 (N.D. Ga. May 21, 2015) ...................... 9
`
`Biocell Tech. LLC v. Arthro-7,
`No. SACV 12-00516-JVS, 2013 WL 12131282 (C.D. Cal. Nov.
`13, 2017) ............................................................................................................. 14
`
`Charleston Med. Therapeutics, Inc. v. AstraZeneca Pharm. LP,
`No. 2:13-CV-2078-RMG, 2015 WL 10913613 (D.S.C. Apr. 16,
`2015) ................................................................................................................... 13
`
`Chemfree Corp. v. J. Walter, Inc.,
`No. CIV. 1:04-cv-3711, 2008 WL 4845129 (N.D. Ga. Aug. 27,
`2008) ............................................................................................................... 9, 14
`
`Digital Reg of Texas, LLC v. Adobe Sys., Inc.,
`No. 12-cv-01971-CW, 2014 WL 4090550 (N.D. Cal. Aug. 19,
`2014) ................................................................................................................... 17
`
`Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC,
`No. 2:15-cv-00037, 2017 WL 2651618 (E.D. Tex. June 20, 2017) ..................... 9
`
`F.T.C. v. Neovi, Inc.,
`No. 06-CV-1952-JLS (JMA), 2009 WL 56130 (S.D. Cal. Jan. 7,
`2009) ..................................................................................................................... 4
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`OPPOSITION TO MOTION FOR
`RECONSIDERATION
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`Finjan, Inc. v. Sophos, Inc.,
`No. 14-CV-01197-WHO, 2016 WL 2988834 (N.D. Cal. May 24,
`2016) ................................................................................................................... 17
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`Fujifilm Corp. v. Motorola Mobility LLC,
`No. 12-CV-03587-WHO, 2015 WL 757575 (N.D. Cal. Feb. 20,
`2015) ............................................................................................................. 12, 13
`
`In re: Ameranth Cases,
`No. 11cv1810, Order Denying Ameranth’s Motion to Strike Joint
`Defendants’ Invalidity Contentions, ECF No. 999 (S.D. Cal. Mar.
`29, 2018) ............................................................................................................... 5
`
`Ixys Corp. v. Advanced Power Technology, Inc.,
`321 F.Supp.2d 1133 (N.D. Cal. 2004) ................................................................ 15
`
`Kona Enters., Inc. v. Estate of Bishop,
`229 F.3d 877 (9th Cir. 2000) ............................................................................ 4, 6
`
`Life Techs. Corp. v. Biosearch Techs., Inc.,
`No. 12-cv-00852-WHA, 2012 WL 4097740 (N.D. Cal. Sept. 17,
`2012) ................................................................................................................... 16
`
`MediaTek Inc. v. Freescale Semiconductor, Inc.,
`No. 11-CV-5341, 2014 WL 690161 (N.D. Cal. Feb. 21, 2014) ..................... 9, 15
`
`Nike, Inc. v. Adidas Am. Inc.,
`479 F. Supp. 2d 664 (E.D. Tex. 2007) .................................................................. 7
`
`O2 Micro Int’l, Ltd. v. Monolithic Power Sys., Inc.,
`467 F. 3d 1355 (Fed. Cir. 2006) ..................................................................... 8, 11
`
`School Dist. No. 1J v. ACandS, Inc.,
`5 F.3d 1255 (9th Cir. 1993) .............................................................................. 4, 8
`
`Strobel v. Morgan Stanley Dean Witter,
`No. 04-CV-1069 BEN (BLM), 2007 WL 1053454 (S.D. Cal. Apr.
`10, 2007) ............................................................................................................... 4
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`OPPOSITION TO MOTION FOR
`RECONSIDERATION
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`I.
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`INTRODUCTION
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`In this duplicative motion, Apple yet again attempts to assert prior art and
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`obviousness combinations that the Court has already ordered stricken. First,
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`relying on a single, distinguishable decision, Apple asks the Court to reverse its
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`prior decision striking Apple’s amended invalidity contentions. Apple, however,
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`fails to provide any reason to warrant the extraordinary remedy of reconsideration
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`of the Court’s prior order. Second, Apple attempts to rely on its original invalidity
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`contentions to support the new arguments the Court already ordered stricken. But
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`as the Court already observed in its order striking Apple’s amended invalidity
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`contentions, these were in fact new combinations that Apple sought to add through
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`its amended invalidity contentions. (ECF No. 297 at 3.) Apple should not be
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`allowed to circumvent this Court’s order striking Apple’s amended invalidity
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`contentions by merely citing its original invalidity contentions that do not
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`adequately disclose Apple’s new combinations.
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`II.
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`STATEMENT OF RELEVANT FACTS
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`On June 19, 2014, Apple filed this declaratory judgment action against Wi-
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`LAN. The patents in suit are U.S. Patent No. 8,537,757 (the “’757 patent”), U.S.
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`Patent No. 8,311,040 (the “’040 patent”), U.S. Patent No. 8,457,145 (the “’145
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`patent”), U.S. Patent No. 8,462,723 (the “’723 patent”), U.S. Patent No. 8,462,761
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`(the “’761 patent”), and U.S. Patent No. 8,615,020 (the “’020 patent”). On June
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`29, 2017, Apple served its Invalidity Contentions on Wi-LAN.
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`On January 2, 2018, ten days prior to the close of fact discovery and without
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`asking the Court for leave to amend, Apple served Amended Invalidity
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`Contentions on Wi-LAN, adding 29 newly alleged prior art references, plus new
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`combinations and new Section 112 invalidity theories that were not disclosed in
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`OPPOSITION TO MOTION FOR
`RECONSIDERATION
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`Apple’s original invalidity contentions. On January 11, 2018, Wi-LAN moved to
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`strike these amended contentions. Apple admitted that its Amended Invalidity
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`Contentions contained new invalidity theories. (See ECF No. 266 at 1–2; ECF No.
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`293.)
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`On February 19, 2018, the parties exchanged expert reports. Apple’s expert
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`reports included the report of Dr. Bertrand Hochwald (alleging invalidity of the
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`’040 Patent), the report of Dr. Thomas Fuja (alleging invalidity of the ’757 Patent),
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`and the report of Mr. Mark Lanning (alleging invalidity of the four other patents-
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`in-suit, called the “Bandwidth Patents”). All three expert reports relied on prior art
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`references, combinations, and/or Section 112 invalidity theories that were newly
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`disclosed in Apple’s improper Amended Invalidity Contentions.
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`In addition, the Lanning report relies on the “MAC Proposal” and
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`“Fiberless” prior art references in its invalidity theories. These two references
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`were not included in either Apple’s original or amended contentions, and the Court
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`denied Apple’s motion for leave to amend its invalidity contentions to include
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`these references. (ECF No. 302.)
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`On March 2, 2018, the Court granted Wi-LAN’s motion to strike Apple’s
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`amended invalidity contentions, striking Apple’s amended contentions in their
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`entirety as unduly prejudicial to Wi-LAN. (ECF No. 297 at 3.) The Court’s Order
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`is clear that “Apple’s amendments include[d] at least two new obviousness
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`combinations (Chuah and Sau, Ericsson and Ericsson IP Traffic), twenty two new
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`background references, two new claim charts (UMTS and Carvalho) and
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`amendments to Apple’s Section 112 defenses.” (Id.)
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`Less than an hour after receiving the Court’s Order, Wi-LAN requested that
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`Apple provide a list of paragraphs that Apple would be withdrawing from its
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`expert reports. (See ECF No. 304, Ex. D at 619.) With rebuttal expert reports due
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`nearly two weeks later, obtaining this clarity was important for Wi-LAN’s experts
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`OPPOSITION TO MOTION FOR
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`to properly rebut Apple’s voluminous validity challenges. Wi-LAN again e-mailed
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`Apple on March 7, 2018 requesting a list of withdrawn paragraphs, and Apple
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`again did not respond. (See ECF No. 304, Ex. E at 620.) Wi-LAN also met and
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`conferred with Apple on March 8, 2018, but Apple was not prepared to provide a
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`list of withdrawn paragraphs on the call.
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`Indeed, Apple did not provide Wi-LAN with any such list of withdrawn
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`paragraphs until March 12, 2018—ten days after Wi-LAN’s initial request and a
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`mere three days before expert rebuttal reports were due. (See ECF No. 304, Ex. D
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`at 618–19.) Despite this Court’s ruling, Apple only agreed to withdraw paragraphs
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`81 (in part), 83 (in part), 300–483, and 523–528 of Dr. Hochwald’s expert report.
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`(Id.) These paragraphs include opinions relating to the new UMTS and Carvalho
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`references and one of the new Section 112 theories from Apple’s amended
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`invalidity contentions that were stricken by the Court. (See ECF No. 304, Ex. D at
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`618.) However, Apple refused to withdraw any other opinions from its three
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`invalidity experts.
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`On March 14, 2018, Wi-LAN again explained to Apple in an email why
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`these withdrawals were insufficient. (ECF No. 304, Ex. D at 618.) On March 19,
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`2018, the Court denied Apple’s Motion for Leave to Amend, and Wi-LAN
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`immediately asked Apple to withdraw paragraphs relating to the references Apple
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`had sought to add to its invalidity contentions in that motion. (ECF No. 304, Ex. D
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`at 617.) On March 21, 2018, a week after Wi-LAN’s March 14 email, Apple
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`finally agreed to withdraw additional paragraphs from its Hochwald, Fuja, and
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`Lanning expert reports. (ECF No. 304, Ex. D at 617.) Yet even after these
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`withdrawals, many paragraphs remain that cite prior art combinations and
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`arguments Apple first introduced in its now-stricken Amended Invalidity
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`Contentions. Therefore, on March 22, 2018, Wi-LAN moved to strike these
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`paragraphs from Apple’s expert reports. (ECF No. 304.)
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`OPPOSITION TO MOTION FOR
`RECONSIDERATION
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`Rather than simply responding to Wi-LAN’s motion addressing the same
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`issues, Apple filed this duplicative motion asking the Court for “clarification” that
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`it is entitled to refer to these stricken combinations and theories in its expert
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`reports. As explained here and in Wi-LAN’s Motion to Strike Expert Opinions
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`(ECF No. 304-1), Apple cannot rely on its stricken contentions in its expert
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`reports.
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`III. ARGUMENT
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` Reconsideration Is An Extraordinary Remedy.
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`Reconsideration is appropriate only when the moving party presents: (1)
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`newly discovered evidence, (2) an intervening change in controlling law, or (3)
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`evidence that the prior decision was based on clear error or was manifestly unjust.
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`School Dist. No. 1J v. ACandS, Inc., 5 F.3d 1255, 1263 (9th Cir. 1993). Of these
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`factors, Apple argues only that the Court’s prior decision was “manifestly unjust.”
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`(Mot. at 4–5.) “Manifest injustice” requires a showing that “extraordinary
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`circumstances” justify relief. Strobel v. Morgan Stanley Dean Witter, No. 04-CV-
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`1069 BEN (BLM), 2007 WL 1053454, at *3 (S.D. Cal. Apr. 10, 2007).
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`Reconsideration of a prior order is an “extraordinary remedy, to be used
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`sparingly in the interests of finality and conservation of judicial resources.” Kona
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`Enters., Inc. v. Estate of Bishop, 229 F.3d 877, 890 (9th Cir. 2000) (citation
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`omitted). “A motion for reconsideration is not an opportunity to renew arguments
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`considered and rejected by the court, nor is it an opportunity for a party to re-argue
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`a motion because it is dissatisfied with the original outcome.” F.T.C. v. Neovi,
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`Inc., No. 06-CV-1952-JLS (JMA), 2009 WL 56130, at *2 (S.D. Cal. Jan. 7, 2009)
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`(quoting Devinsky v. Kingsford, 2008 WL 2704338, at *2 (S.D.N.Y. 2008)). “Case
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`law is clear that motions for reconsideration are not intended to provide two bites
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`at the apple.” Abdulkhalik v. City of San Diego, No. 08-CV-1515 MMA (NLS),
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`2009 WL 3514547, at *4 (S.D. Cal. Oct. 26, 2009).
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`The Court’s Decision to Strike Apple’s Amended Invalidity
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`Contentions Was Just, Correct, And Consistent With Ameranth.
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`Apple’s argument for reconsideration hinges on a single unpublished order
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`from another case before this Court. See In re: Ameranth Cases, No. 11cv1810,
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`Order Denying Ameranth’s Motion to Strike Joint Defendants’ Invalidity
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`Contentions, ECF No. 999 (S.D. Cal. Mar. 29, 2018). The facts of that case are
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`distinguishable and certainly do not suggest that the Court’s decision here resulted
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`in manifest injustice. In Ameranth, the amendments were proper because the
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`defendant showed a good faith belief that the amendments were necessitated by
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`claim construction. Id. at *2. Counsel for the Ameranth defendants provided a
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`declaration attesting to their good faith belief and explaining four particular claim
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`terms that had been construed in ways that forced the defendants to amend their
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`contentions. Id. Here, in contrast, “Apple did not submit any evidence of its good
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`faith belief” that amendments were necessitated by claim construction, so the
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`Court was “unable to determine” whether the good-faith belief standard was met.1
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`(ECF No. 297 at 2.)
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`As an alternative ground, the Court’s order found that regardless of whether
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`the amendments were necessitated by claim construction, Wi-LAN would be
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`unduly prejudiced by Apple’s amendment of contentions only ten days before the
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`1 Patent Local Rule 3.6(b)(2) requires that “the party opposing infringement
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`believes in good faith that amendment is necessitated by a claim construction that
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`differs from that proposed by such party” in order to amend invalidity contentions.
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`OPPOSITION TO MOTION FOR
`RECONSIDERATION
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`Case 3:14-cv-02235-DMS-BLM Document 339 Filed 05/11/18 PageID.17226 Page 10 of 23
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`close of fact discovery and about two months before rebuttal expert reports were
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`due. (ECF No. 297 at 3.) By contrast, in Ameranth, the amended invalidity
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`contentions were served on February 16, 2018 (Ameranth, ECF No. 999 at 2), with
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`fact discovery for various sets of defendants closing on dates ranging from May
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`14, 2018 to August 13, 2019 (Ameranth, Case Management Order, ECF Nos. 898–
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`903). Rebuttal expert report deadlines for most of the Ameranth defendants were
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`not due until July 2018 or later, and in view of the lengthy overall schedule of the
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`case the Court simply offered to extend the deadline for the one set of reports due
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`in April. (Ameranth, ECF No. 999 at 3.) This case, in contrast, is set for trial in
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`July, so Wi-LAN would have been unduly prejudiced by a similar delay.
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`Apple now submits a belated declaration addressing its reasons for adding
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`the UMTS and Carvalho prior art references, just two of the numerous additions to
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`Apple’s amended contentions. (See ECF No. 306-2, Cunningham Decl.) The
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`declaration is silent as to Apple’s other amendments. As a threshold matter, the
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`Court should not consider this newly presented evidence on reconsideration. See
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`Kona Enters., 229 F.3d at 890 (holding that a motion for reconsideration should
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`“not be used to raise arguments or present evidence for the first time when they
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`could reasonably have been raised earlier in the litigation”). In fact, the Court
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`specifically ordered Apple to provide a supplemental brief regarding how its
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`amendments were necessitated by the Court’s claim construction and has already
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`considered Apple’s arguments. (ECF. No. 290.)
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`Even if the Court were to consider Apple’s new declaration, however, Apple
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`fails to show a good faith belief that the amendments were necessitated by claim
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`construction. (See ECF No. 306-2, Cunningham Decl.) Apple’s new declaration
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`addresses only two references: UMTS and Carvalho. Apple admits in its
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`declaration that the Carvalho reference discloses a packing subheader under either
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`party’s construction. (Cunningham Decl. ¶ 6.) Therefore, addition of the Carvalho
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`OPPOSITION TO MOTION FOR
`RECONSIDERATION
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`Case 3:14-cv-02235-DMS-BLM Document 339 Filed 05/11/18 PageID.17227 Page 11 of 23
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`reference could not have been necessitated by claim construction. See Nike, Inc. v.
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`Adidas Am. Inc., 479 F. Supp. 2d 664, 667-68 (E.D. Tex. 2007) (“A party cannot
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`argue that because its precise proposal for a construction of a claim term is not
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`adopted by the court, it is surprised and must prepare new infringement
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`contentions”).
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`For the UMTS reference, Apple’s new declaration conclusorily states that
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`the reference was made relevant by claim construction because the packing
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`subheader in an “RLC PDU” may be located in the header as opposed to the
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`payload. (Cunningham Decl. ¶ 5.) As Wi-LAN explained in its briefing on the
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`Motion to Strike, however, Apple identified the same “length indicator” element as
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`the packing subheader in both its new UMTS chart and its old GSM chart. (ECF
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`No. 296 at 2.) In other words, Apple had been asserting exactly the same theory
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`for a similar prior art reference before claim construction. Apple cannot now claim
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`that the Court’s construction of “packing subheader” suddenly made UMTS
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`relevant.
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`As a red herring, Apple’s motion incorrectly suggests that the contentions
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`were stricken because the claim construction was not unexpected or because Apple
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`was not diligent in amending contentions. (Mot. at 5.) While these factors were
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`briefly discussed in the Court’s order, the motion to strike was ultimately granted
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`because (1) Apple did not show a “good faith belief” that the amendments were
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`necessitated by claim construction and (2) because Wi-LAN would have been
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`unduly prejudiced by the service of contentions only ten days before the close of
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`fact discovery. (ECF No. 297 at 2–3.) Neither of those facts were true in
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`Ameranth.
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`Apple failed to show a good faith belief in opposing Wi-LAN’s Motion to
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`Strike, failed to show a good faith belief in the supplemental briefing the Court
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`requested on this specific issue, and again fails to show a good faith belief in its
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`OPPOSITION TO MOTION FOR
`RECONSIDERATION
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`Case 3:14-cv-02235-DMS-BLM Document 339 Filed 05/11/18 PageID.17228 Page 12 of 23
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`belated declaration attached to this Motion for Reconsideration. This lack of a
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`good faith belief, in combination with the fact that Wi-LAN would have been
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`unduly prejudiced by the service of contentions ten days before the close of fact
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`discovery, explains why the Court correctly came to an outcome different from the
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`one in Ameranth. Because Apple cannot show that the Court “committed clear
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`error or the initial decision was manifestly unjust,” reconsideration should be
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`denied. See School Dist. No. 1J, 5 F.3d at 1263.
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` Apple’s Experts May Not Rely on References Stricken From
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`Apple’s Amended Invalidity Contentions.
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`The remainder of Apple’s motion, which seeks “clarification” that the Order
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`allows Apple to rely on various references that it did not adequately disclose in its
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`original invalidity contentions, is entirely duplicative of Wi-LAN’s Motion to
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`Strike, ECF No. 304. While Apple is correct that its experts may rely on invalidity
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`theories fully disclosed in its original invalidity contentions, the theories discussed
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`in Apple’s motion are new theories. Apple tried to add these theories to its
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`invalidity contentions at the last minute, and these theories were stricken by the
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`Court.
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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.” O2 Micro Int’l, Ltd. v. Monolithic Power Sys., Inc.,
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`467 F. 3d 1355, 1364 (Fed. Cir. 2006). In the Southern District of California,
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`“each item of prior art,” “any combinations of prior art,” and any 35 U.S.C. § 112
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`grounds of invalidity must be disclosed in a party’s invalidity contentions. P.L.R.
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`3.3.
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`Any invalidity theories not disclosed under the patent local rules “are
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`barred . . . from presentation at trial (whether through expert opinion testimony or
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`OPPOSITION TO MOTION FOR
`RECONSIDERATION
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`Case 3:14-cv-02235-DMS-BLM Document 339 Filed 05/11/18 PageID.17229 Page 13 of 23
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`otherwise).” MediaTek Inc. v. Freescale Semiconductor, Inc., No. 11-CV-5341,
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`2014 WL 690161, at *5 (N.D. Cal. Feb. 21, 2014) (striking expert report where the
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`portion of prior art identified “differs considerably” from what was disclosed in the
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`invalidity contentions); Avago Techs. Gen. IP Pte Ltd. v. Elan Microelecs. Corp.,
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`No. C04-05385, 2007 WL 2103896, at *2 (N.D. Cal. July 20, 2007) (“Defendant is
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`limited to the pinpoint citations disclosed in its [Final Invalidity Contentions].”),
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`aff’d, 2007 WL 2433386 at *1 (N.D. Cal. Aug. 22, 2007).
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`Allowing expert testimony is particularly inappropriate where, as here, the
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`prior art references and invalidity theories have previously been stricken by the
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`Court. See, e.g., Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC, No.
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`2:15-cv-00037, 2017 WL 2651618, at *8 (E.D. Tex. June 20, 2017) (striking
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`portions of expert report that rely on references previously stricken from invalidity
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`contentions), report and recommendation adopted, 2017 WL 4693971 (E.D. Tex.
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`July 31, 2017); Chemfree Corp. v. J. Walter, Inc., No. CIV. 1:04-cv-3711, 2008
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`WL 4845129, at *7–8 (N.D. Ga. Aug. 27, 2008) (striking references that “[t]he
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`Court previously struck . . . from Defendants’
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`invalidity contentions” and
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`references that “the Court did not permit Defendants to amend their invalidity
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`contentions to include”).
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`Courts do not permit expert testimony relating to combinations of references
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`where those combinations were not disclosed in invalidity contentions, even if the
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`references were individually disclosed. See Bayer Healthcare Pharm., Inc. v.
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`River's Edge Pharm., LLC, No. 1:11-cv-1634, 2015 WL 11142427, at *14 (N.D.
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`Ga. May 21, 2015) (striking obviousness combination from expert report where
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`“nowhere in [the defendants’] contentions are these various combinations, or
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`motivations to combine all of the various references, disclosed”), report and
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`recommendation adopted, 2015 WL 11142424 (N.D. Ga. June 16, 2015).
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`OPPOSITION TO MOTION FOR
`RECONSIDERATION
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`Case 3:14-cv-02235-DMS-BLM Document 339 Filed 05/11/18 PageID.17230 Page 14 of 23
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` Ericsson IP Traffic Was Not Adequately Disclosed in Apple’s
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`Original Invalidity Contentions.
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`As Apple previously admitted, Apple’s original invalidity contentions
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`entirely omitted any bibliographic citation for “Ericsson IP Traffic.” (ECF No.
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`266 at 4 n.1.) Despite Apple’s failure to properly disclose “Ericsson IP Traffic,”
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`Apple argues that based on the page numbers it used in citations—page numbers
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`that do not appear until the eighth page of Apple’s Ericsson claim chart—Wi-LAN
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`should somehow have deduced that in addition to the seven references listed on the
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`first page of the chart, Apple’s chart also relied on an eighth reference called
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`“Ericsson IP Traffic.” (See ECF No. 304-17, Ex. N at 992, 999.) The Court has
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`already ruled on this issue, and its finding that “Ericsson and Ericsson IP Traffic”
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`was one of “at least two new obvious combinations” was correct and need not be
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`revisited. (See ECF No. 297 at 3.)
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`The first page of Apple’s claim chart states that “Ericsson was published at
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`the Global Telecommunications Conference in 1999.” (ECF No. 304-17, Ex. N at
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`992.) Ericsson IP Traffic, in contrast, was published at the IEEE Vehicular
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`Technology Conference (“VTC”). (See ECF No. 296-4, Ex. K at 454; ECF No.
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`296-5, Ex. Y at 908.) This makes clear that “Ericsson” refers to an article distinct
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`from Ericsson IP Traffic. Nowhere does Apple’s claim chart refer to “IP Traffic”
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`or the Vehicular Technology Conference. The spurious and erroneous citations
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`buried deep within Apple’s claim chart did not explain that Apple was referring to
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`a different document. Moreover, the cover pleading to Apple’s original invalidity
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`contentions only refers to Ericsson (Global Telecommunications Conference)
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`without any mention of Ericsson IP Traffic, further confirming that Apple failed to
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`provide notice of its reliance on Ericsson IP Traffic. (ECF No. 304-9, Ex. F at
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`628.) Apple did not provide Wi-LAN with any notice of its intent to rely on
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`Ericsson IP Traffic until Apple served its amended invalidity contentions that
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`OPPOSITION TO MOTION FOR
`RECONSIDERATION
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`Case 3:14-cv-02235-DMS-BLM Document 339 Filed 05/11/18 PageID.17231 Page 15 of 23
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`specifically added bibliographic citations to Ericsson IP Traffic in both the cover
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`pleading and the claim chart. (See ECF No. 296-4, Ex. K at 454; ECF No. 296-5,
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`Ex. U at 803.) If the Court were to rule that this sort of hidden citation buried deep
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`within a claim chart without any bibliographic citation counts as a disclosure, it
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`would permit and encourage litigants to hide references within their invalidity
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`contentions. That is contrary to the purpose of the local rules, which are “designed
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`specifically to require parties to crystallize their theories of the case early in the
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`litigation so as to prevent the ‘shifting sands’ approach.” O2 Micro Int’l, Ltd. v.
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`Monolithic Power Sys., Inc., 467 F. 3d 1355, 1364 (Fed. Cir. 2006).
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`As the Court correctly ruled, the combination of Ericsson and Ericsson IP
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`Traffic was not disclosed until Apple attempted to serve its amended contentions.
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`(ECF No. 297 at 3.) Therefore, Apple’s experts should not be permitted to opine
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`on this combination.
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` Apple’s Boilerplate Disclaimer Was Not Adequate Disclosure of
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`the Undisclosed Combinations of Ericsson/Klayman,
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`Doshi/Calvignac, and Chuah/Sau.
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`While Apple’s original
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`invalidity contentions specifically
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`identified
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`numerous ob