Case 3:14-cv-02235-DMS-BLM Document 409 Filed 07/06/18 PageID.21075 Page 1 of 7
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`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
`
`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
`JACOB ANDERSON (Bar No. 265768)
`Jacob.anderson@dlapiper.com
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, California 92101-4297
`Tel: 619.699.2700
`Fax: 619.699.2701
`
`ROBERT BUERGI (Bar No. 242910)
`robert.buergi@dlapiper.com
`AMY WALTERS (Bar No. 286022)
`amy.walters@dlapiper.com
`DLA PIPER LLP (US)
`2000 University Avenue
`East Palo Alto, CA 94303-2215
`Tel: 650.833.2000
`Fax: 650.833.2001
`
`Attorneys for
`APPLE INC.
`
`
`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`WI-LAN, INC.,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`
`
`AND RELATED
`COUNTERCLAIMS
`
`DLA PIPER LLP (US)
`S A N D I E G O
`
`
`WEST\282292277.2
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`
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` WEST\281523637v.5
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`CASE NO. 3:14-cv-1507-DMS-BLM
`(consolidated);
`
`CASE NO. 3:14-cv-2235-DMS-BLM
`(lead case)
`
`APPLE INC.’S MOTION TO STRIKE
`NEW OPINIONS IN THE STANWOOD
`SUPPLEMENTAL EXPERT REPORT
`
`
`
`Date: July 20, 2018
`Time: 1:30 p.m.
`Dept.: 13A
`Judge: Hon. Dana M. Sabraw
`Magistrate Judge: Hon. Barbara L. Major
`
`
`
`APPLE’S MOTIONS IN LIMINE
`3:14-CV-001507-DMS-BLM
`
`

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`Case 3:14-cv-02235-DMS-BLM Document 409 Filed 07/06/18 PageID.21076 Page 2 of 7
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`DLA PIPER LLP (US)
`S A N D I E G O
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`I.
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`INTRODUCTION
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`The Court should preclude Wi-LAN from offering validity opinions at trial
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`that it failed to include in its Court-ordered response to Apple’s Interrogatory No.
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`15 and instead raised for the first time in a June 15, 2018 supplemental expert
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`report. See Ex. 1, Stanwood Supp. Report, ¶¶ 17-153 (UMTS and Carvalho
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`references) and ¶¶ 162-174 (combination of Ericsson and Ericsson IP Traffic).1
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`On February 6, 2018, Magistrate Judge Major granted Apple’s motion to
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`compel and ordered that Apple “is entitled to discovery regarding Wi-LAN’s
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`validity contentions beyond what Wi-LAN has provided in its responses to Apple’s
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`Interrogatory Nos. 15 and 16” and that “Apple also is not required to wait for the
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`required exchange of expert reports to seek Wi-LAN’s validity contentions.” Dkt.
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`No. 279 at 7-8. Wi-LAN’s subsequent response to Apple’s validity interrogatory
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`said nothing about the UMTS or Carvalho references (for the ’040 patent) or the
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`combination of Ericsson and Ericsson IP Traffic (for the ’757 patent). Notably, Wi-
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`LAN served its Court-ordered supplemental interrogatory response before this
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`Court granted Wi-LAN’s motion to strike, so there is no excuse for Wi-LAN to
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`have failed to disclose its contentions about these references as required by Court
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`order. The very first time Wi-LAN said anything about these references was in the
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`supplemental Stanwood report served on June 15, 2018, just over a month before
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`trial. Because Wi-LAN failed to disclose its contentions about UMTS, Carvalho
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`and Ericsson/Ericsson IP Traffic during fact discovery and in response to Judge
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`Major’s Order, the Court should strike these new opinions.
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`II. BACKGROUND
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`On December 11, 2017, Wi-LAN served deficient responses to Apple’s
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`Interrogatory Nos. 15 and 16, which requested Wi-LAN’s validity contentions
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`1 The Supplemental Stanwood Report (Ex. 1) is attached to the Declaration of Sean
`Cunningham in Support of Apple’s Combined Motions in Limine. All lettered
`exhibits cited herein are attached to the Declaration of Sean Cunningham in
`Support of Apple’s Motion to Strike, filed concurrently with this Motion to Strike.
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`Case 3:14-cv-02235-DMS-BLM Document 409 Filed 07/06/18 PageID.21077 Page 3 of 7
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`under 35 U.S.C. §§ 102, 103, and 112. On January 2, 2018, Apple served amended
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`invalidity contentions to add certain references and combinations (including the
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`UMTS and Carvalho references and the combination of Ericsson and Ericsson IP
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`Traffic), which Wi-LAN then moved to strike. See Dkt. No. 258. Barely two
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`weeks later, on January 19, 2018, Apple moved to compel a complete response to
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`Interrogatories No. 15 and 16. See Dkt. No. 263. On February 6, 2018, Magistrate
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`Judge Major granted Apple’s motion and ordered Wi-LAN to serve a more
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`complete supplemental response on validity by February 16, 2018. Dkt. No. 279.
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`On February 16, 2018, while Wi-LAN’s motion to strike was pending, Wi-
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`LAN served its Court-ordered supplemental response to Interrogatory Nos. 15 and
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`16. Wi-LAN’s responses did not address the UMTS and Carvalho references or the
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`combination of Ericsson and Ericsson IP Traffic. Ex. A, at pp. 10-23, 24-32. On
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`March 2, 2018, the Court granted Wi-LAN’s motion to strike (Dkt. No. 297) and on
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`March 15, Wi-LAN served Mr. Stanwood’s original expert report, which also did
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`not address UMTS, Carvalho, or Ericsson/Ericsson IP Traffic. See Ex. B,
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`Stanwood Opening Report.
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`On March 30, Apple filed its motion for partial reconsideration (Dkt. No.
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`306), which the Court granted on May 24, 2018 (Dkt. No. 365), holding that Apple
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`is entitled to rely on UMTS, Carvalho and the combination of Ericsson and
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`Ericsson IP Traffic. The Court’s Order did not grant leave for Wi-LAN to serve an
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`untimely expert report, nor did Wi-LAN seek leave to do so. Yet on June 15, 2018,
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`Wi-LAN served a 70-page supplemental report addressing prior art references that
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`Wi-LAN had never said a word about before. Ex. 1, Stanwood Supp. Report.
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`III. ARGUMENT
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`“Rule 37(c)(1) ‘gives teeth’ to Rule 26(e)[’s supplemental disclosure
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`requirement] ‘by forbidding the use at trial of any information required to be
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`disclosed by Rule 26(a) that is not properly disclosed.’” Ill. Tool Works, Inc. v.
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`DLA PIPER LLP (US)
`S A N D I E G O
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`MOC Prods. Co., No. 09CV1887 JLS (MDD), 2012 WL 3561984, at *11 (S.D.
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`Case 3:14-cv-02235-DMS-BLM Document 409 Filed 07/06/18 PageID.21078 Page 4 of 7
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`Cal. Aug. 17, 2012) (quoting Yeti by Molly, Ltd. v. Deckers Outdoor Corp., 259
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`F.3d 1101, 1106 (9th Cir.2001)). “Rule 37(c)(1) only excuses a failure to disclose
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`for two reasons: (1) the late disclosure was harmless, or (2) the late disclosure was
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`substantially justified,” neither of which are present here. Applera Corp.-Applied
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`Biosystems Grp. v. Illumina, Inc., No. C 07-02845 WHA, 2008 WL 4810541, at *1
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`(N.D. Cal. Oct. 27, 2008) (striking supplemental report).
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`In effect, Wi-LAN gambled that the Court would grant its motion to strike
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`and exclude UMTS, Carvalho and the Ericsson/Ericsson IP Traffic combination, so
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`Wi-LAN failed to include any analysis of those references in its Court-ordered
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`contention interrogatory response, which it served before the Court ruled on Wi-
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`LAN’s motion to strike. Wi-LAN’s gamble failed, so the Court should not give
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`Wi-LAN a “do-over” just before trial by permitting this late and unauthorized
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`supplemental expert report. The fact that the Court later granted Wi-LAN’s motion
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`to strike then reversed its decision is irrelevant, because the initial Order came after
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`Wi-LAN served its supplemental response, and Wi-LAN was under Court order to
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`supplement its validity contentions. As Judge Major ordered, Apple is “not
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`required to wait for the required exchange of expert reports to seek Wi-LAN’s
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`validity contentions” (Dkt. No. 279 at 7-8), but this is exactly what Wi-LAN did by
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`serving a supplemental report five weeks before trial.
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`The late disclosure has prejudiced Apple and its experts. Wi-LAN should
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`have served these validity contentions on February 16, which would have afforded
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`Apple’s experts time to consider Wi-LAN’s validity positions on these references
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`before their depositions. But now there is no time for another round of expert
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`reports and depositions about Wi-LAN’s new theories. The only fair solution is to
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`strike the untimely opinions in the supplemental Stanwood report—the ones that
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`Wi-LAN was ordered to provide and did not. Dkt. No. 279 at 7-8.
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`DLA PIPER LLP (US)
`S A N D I E G O
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`Furthermore, Mr. Stanwood’s new opinions are not proper under the Federal
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`Rules, because Mr. Stanwood said nothing about these references in his opening
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`Case 3:14-cv-02235-DMS-BLM Document 409 Filed 07/06/18 PageID.21079 Page 5 of 7
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`expert report. See Ill. Tool Works, Inc., 2012 WL 3561984, at *10-12
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`(“supplementary disclosures do not permit a party to introduce new opinions after
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`the disclosure deadline under the guise of a ‘supplement’” and “does not give
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`license to sandbag one’s opponent with claims and issues which should have been
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`included in the expert witness’ report … .”) (quoting Plumley v. Mockett, 836 F.
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`Supp. 2d 1053, 1062 (C.D. Cal. May 26, 2010)). But sandbagging Apple with new
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`validity theories is precisely what Wi-LAN has done and is precisely what Judge
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`Major warned against. Dkt. No. 279 at 7-8. The fact that Mr. Stanwood tried to
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`reserve the “
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`Opening Report at ¶ 393) analyzing these references does not justify Wi-LAN’s
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`failure to provide a complete response to Apple’s validity interrogatory or Mr.
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`Stanwood’s failure to address these references in his expert report. Dimension One
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`Spas, Inc. v. Coverplay, Inc., No. 03cv1099-L(CAB), 2008 WL 4165034, at *11-13
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`(S.D. Cal. Sept. 5, 2008) (rejecting expert’s “unilateral reservation of rights” to
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`supplement his opinions).
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`Wi-LAN wants a double standard. The Court already struck Apple’s reliance
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`on prior art references that the Court found were not necessitated by the claim
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`construction ruling, finding prejudice to Wi-LAN where Apple disclosed those
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`contentions months before expert reports were served. See Dkt. Nos. 297, 365.
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`Here, Wi-LAN asks the Court to allow expert trial testimony on brand-new validity
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`contentions offered for the first time months after expert reports were served, where
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`Wi-LAN had been under Court order to provide those contentions in February. The
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`two positions cannot be reconciled. If Wi-LAN was prejudiced, so is Apple. Thus,
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`the only fair result is to strike the following validity opinions expressed for the first
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`time in the Stanwood supplemental report: Paragraphs 17-153 (UMTS and
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`Carvalho references for the ’040 patent) and paragraphs 162-174 (combination of
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`Ericsson and Ericsson IP Traffic for the ’757 patent).
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`APPLE’S MOTION TO STRIKE SUPPLEMENTAL STANWOOD REPORT
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`Case 3:14-cv-02235-DMS-BLM Document 409 Filed 07/06/18 PageID.21080 Page 6 of 7
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`DLA PIPER LLP (US)
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`By /s/ Sean C. Cunningham
`JOHN ALLCOCK
`SEAN C. CUNNINGHAM
`ERIN GIBSON
`ROBERT BUERGI
`ROBERT WILLIAMS
`TIFFANY MILLER
`JACOB ANDERSON
`AMY WALTERS
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`
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`Attorneys for
`APPLE INC.
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`Dated: July 6, 2018
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`APPLE’S MOTION TO STRIKE SUPPLEMENTAL STANWOOD REPORT
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`Case 3:14-cv-02235-DMS-BLM Document 409 Filed 07/06/18 PageID.21081 Page 7 of 7
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`CERTIFICATE OF SERVICE
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`I hereby certify that on July 6, 2018, I electronically transmitted the attached
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`document to the Clerk’s Office using the CM/ECF System for filing and transmittal
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`of a Notice of Electronic Filing to the CM/ECF registrants.
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` /s/ Sean C. Cunningham
`Sean C. Cunningham
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