Case 3:14-cv-02235-DMS-BLM Document 365 Filed 05/24/18 PageID.19993 Page 1 of 3
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`APPLE INC.,
`
`vs.
`
`WI-LAN, INC.,
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`CASE NO. 14cv2235 DMS (BLM)
`ORDER (1) GRANTING APPLE’S
`MOTION FOR PARTIAL
`RECONSIDERATION AND
`CLARIFICATION AND (2)
`GRANTING IN PART AND
`DENYING IN PART WI-LAN’S
`MOTION TO STRIKE EXPERT
`OPINIONS
`
`Plaintiff,
`
`Defendant.
`_______________________________
`AND ALL RELATED
`COUNTERCLAIMS.
`
`On March 2, 2018, this Court issued an Order granting Wi-LAN’s motion to
`strike Apple’s amended invalidity contentions for failure to comply with Patent Local
`Rule 3.6.b.2.a. (Docket No. 297.) Specifically, the Court found Apple had failed to
`establish it had a good faith belief that those amendments were necessitated by the
`Court’s claim construction, and that even if that standard was met, Wi-LAN would be
`unduly prejudiced by the amendments. (Id.)
`After that Order issued, the Court issued an Order on a similar motion in another
`case, In re Ameranth Cases, Case No. 11cv1810 DMS (WVG). (See 11cv1810, Docket
`No. 999.) In that Order, the Court denied the plaintiff’s motion to strike the defendant’s
`amended invalidity contentions pursuant to Patent Local Rule 3.6.b.2.a.. After
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`Case 3:14-cv-02235-DMS-BLM Document 365 Filed 05/24/18 PageID.19994 Page 2 of 3
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`reviewing the Order in the Ameranth case, Apple filed the present motion for partial
`reconsideration and clarification of the Court’s decision in this case. Wi-LAN filed an
`opposition to the motion, and Apple filed a reply. Also pending before the Court is Wi-
`LAN’s related motion to strike expert opinions regarding stricken prior art references
`and undisclosed invalidity theories.
`On the request for reconsideration, generally the Court agrees with Apple that the
`Court’s interpretation of Patent Local Rule 3.6.b.2.in this case is different from the
`interpretation put forth in Ameranth. The Court stands by the reasoning set out in the
`Ameranth Order, and will apply that reasoning to the present case.
`Under that reasoning, the Court grants Apple’s motion for reconsideration as to
`the UMTS and Carvalho references, the combination of Ericsson and Ericsson IP
`Traffic, the section 112 defenses on the “establish a length” limitation, and the
`background prior art references. Apple has shown the addition of the UMTS and
`Carvalho references was necessitated by the Court’s construction of “packing sub-
`header,” which construction was different from Apple’s proposed construction. That
`amendment was timely, and Wi-LAN has not shown it would suffer undue prejudice
`from this amendment.
`As to the Ericsson and Ericsson IP Traffic combination, the briefing on the
`motion for reconsideration reflects this combination was included in Apple’s original
`invalidity contentions. Although Apple may not have called out the two separate
`references in every instance of its invalidity contentions, the combination was disclosed
`and charted, and each individual reference was provided to Wi-LAN.
`Similarly, although Apple failed to assert a section 112 defense to the “establish
`a length” limitation in claim 1 of the ‘040 Patent, it did assert that defense to nearly
`identical language found in claim 14 of the ‘040 Patent. Under these circumstances,
`there is no undue prejudice to Wi-LAN in allowing this amendment.
`The Court also agrees with Apple that any prior art used solely as background
`references need not have been disclosed, and should not have been stricken.
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`Case 3:14-cv-02235-DMS-BLM Document 365 Filed 05/24/18 PageID.19995 Page 3 of 3
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`For the other combinations, namely Ericsson and Klayman, Doshi and Calvignac
`and Chuah and Sau, Apple requests clarification that these combinations were
`adequately disclosed in Apple’s original invalidity contentions. There is no dispute
`these individual references were disclosed in Apple’s original invalidity contentions and
`produced to Wi-LAN. The dispute surrounds the combinations, and there, the Court
`agrees with Wi-LAN that the combinations were not sufficiently disclosed. The general
`reservation included in Apple’s contentions was not sufficient to give notice to Wi-
`LAN that these specific combinations would be asserted against it, and at this point, Wi-
`LAN would suffer undue prejudice if these combinations were allowed.
`Turning to Wi-LAN’s motion to strike, that motion is granted in part and denied
`in part, consistent with the Court’s rulings above.
`IT IS SO ORDERED.
`DATED: May 24, 2018
`
`HON. DANA M. SABRAW
`United States District Judge
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