Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5240 Page 1 of 17
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`Sean Pak (SBN 219032)
`seanpak@quinnemanuel.com
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Telephone: (415) 875-6320
`Facsimile: (415) 875-6700
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`Thomas D. Pease (pro hac vice)
`(N.Y. Bar No. 2671741)
`thomaspease@quinnemanuel.com
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, New York 10010
`Telephone: (212) 849-7000
`Facsimile: (212) 849-7100
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`Attorneys for Plaintiff
`Taction Technology, Inc.
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`TACTION TECHNOLOGY, INC.,
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`Plaintiff,
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`APPLE INC.,
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
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` Case No. 21-cv-00812-TWR-JLB
`____________________
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`PLAINTIFF TACTION
`TECHNOLOGY, INC.’S MOTION
`AND MEMORANDUM OF
`POINTS AND AUTHORITIES TO
`STRIKE APPLE’S AMENDED
`INVALIDITY CONTENTIONS
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`Judge: Hon. Todd W. Robinson
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`Magistrate Judge: Hon Jill L.
`Burkhardt
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`Hearing Date and Time: April 13,
`2023, 2 PM
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`Defendant
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`TACTION’S MOTION AND MPA TO STRIKE INVALIDITY CONTENTIONS
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`Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5241 Page 2 of 17
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`I.
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`II.
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`TABLE OF CONTENTS
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`Introduction .......................................................................................... 1
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`Factual Background ............................................................................... 2
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`III. Legal Standard ...................................................................................... 3
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`IV. Argument ............................................................................................. 5
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`A. Apple Lacks a Good Faith Belief that Amendment Was Required
`By Either This Court’s Claim Construction Order or Taction’s
`Amended Infringement Contentions ................................................ 5
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`B. Apple Failed to Exercise Diligence In Serving Its Post Claim
`Construction Amended Invalidity Contentions................................ 10
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`V. Conclusion ......................................................................................... 12
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`Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5242 Page 3 of 17
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`TABLE OF AUTHORITIES
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`Cases
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`Apple Inc. v. Wi-LAN, Inc.,
`No. 14-cv-2235 DMS (BLM), 2018 WL 9538772 (S.D. Cal. Mar. 2, 2018) ...... 12
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`Apple, Inc. v. Samsung Elecs Co., Ltd.,
`No. 11-cv-1846, 2012 WL 1067548 (N.D. Cal. Mar. 27, 2012) ....................... 10
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`Brilliant Instr., Inc. v. GuideTech, Inc.,
`No. 09-cv-5517, 2011 WL 900369 (N.D. Cal. Mar. 15, 2011) ......................... 10
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`CliniComp Int’l, Inc. v. Cerner Corp.,
`No. 17CV02479GPCDEB, 2022 WL 16985003 (S.D. Cal. Nov. 15, 2022) .........4
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`FullView, Inc. v. Polycom, Inc.,
`No. 18-cv-00510-EMC, 2021 WL 1668017 (N.D. Cal. Apr. 28, 2021) ......... 4, 12
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`O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
`467 F.3d 1355 (Fed. Cir. 2006) ............................................................ 4, 5, 11
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`Oracle Am., Inc. v. Google Inc.,
`No. C 10-03561 WHA, 2011 WL 3443835 (N.D. Cal. Aug. 8, 2011) ............... 11
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`Polaris PowerLED Techs., LLC v. VIZIO, Inc.,
`No. SACV181571JVSDFMX, 2020 WL 4258663 (C.D. Cal. May 14,
`2020).........................................................................................................9
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`SanDisk Corp. v. Memorex Prods., Inc.,
`415 F.3d 1278 (Fed. Cir. 2005) .....................................................................5
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`Verinata Health, Inc. v. Ariosa Diagnostics, Inc.,
`236 F. Supp. 3d 1110 (N.D. Cal. 2017) ..........................................................4
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`Yodlee, Inc. v. Cashedge, Inc.,
`No. 05- cv-1550, 2007 WL 2261566 (N.D. Cal. Aug. 6, 2007) ........................ 12
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`Zest IP Holdings, LLC v. Implant Direct MFG, LLC,
`No. 10CV0541-GPC-WVG, 2014 WL 358430 (S.D. Cal. Jan. 31, 2014) ........ 4, 8
`
`Rules
`Patent L.R. 3.3(b) ...........................................................................................9
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`Patent L.R. 3.6(b) ...........................................................................................4
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`TACTION’S MOTION AND MPA TO STRIKE INVALIDITY CONTENTIONS
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`Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5243 Page 4 of 17
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`I.
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`Introduction
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`On November 18, 2022, Apple served “Post Claim Construction Amended
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`Invalidity Contentions.” Despite the title, Apple included new invalidity contentions
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`unrelated to this Court’s claim construction order. Specifically, Apple changed its
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`invalidity theory for two prior art Apple products from obviousness—which it had
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`advanced since serving its initial invalidity contentions on October 22, 2021—to
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`anticipation. In doing so, Apple for the first time contended that its own prior art
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`products contained ferrofluid. This fundamental change, offered 20 months into the
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`case, and almost ten months after Apple served its final validity contentions, cannot
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`possibly derive from the claim construction order, as “ferrofluid” was not itself
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`construed. Yet rather than seek leave to amend its contentions as required by the
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`Patent Local Rules, Apple slipped these amendments into contentions that should
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`have been limited to changes prompted by the Court’s claim construction order. None
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`of the post-hoc, contrived justifications that Apple now offers for its conduct survives
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`scrutiny.
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`Apple’s violation of Patent Local Rule 3.6 is especially egregious as the two
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`references at issue are Apple’s own iPhone 6 and iPhone 6 Plus prior art products.
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`Had Apple sought leave to amend its contentions, it would presumably have had to
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`explain how it failed to recognize before the deadline for final invalidity contentions
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`that two of its own two products, which were well within its ability to investigate, and
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`which Apple had already included for other purposes in its invalidity arguments,
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`allegedly meet the claimed ferrofluid limitations. Because Apple’s new contentions
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`and claim charts for the iPhone 6 and iPhone 6 Plus do not derive from the claim
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`construction order and were served without leave, Taction respectfully requests that
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`Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5244 Page 5 of 17
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`they be stricken and that Apple not be permitted to contend that the iPhone 6 or iPhone
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`6 Plus anticipate the asserted claims or otherwise meet the ferrofluid limitations.
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`II. Factual Background
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`Apple served initial invalidity contentions on October 22, 2021. Among some
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`70 prior art references, Apple identified the “Apple iPhone 6 Linear Motor Module”
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`as part of an obviousness combination for both asserted patents. Ex. A,1 Initial ’117
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`iPhone 6 Chart; Ex. B, Initial ’885 iPhone 6 Chart. It did the same for the “Apple
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`iPhone 6 Plus Linear Motor Module.” Ex. C, Initial ’117 iPhone 6 Plus Chart; Ex. D,
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`Initial ’885 iPhone 6 Plus Chart. In each chart, Apple did not contend that these
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`devices met the asserted patents’ ferrofluid limitations2 but rather merely stated it
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`“would have been obvious to combine this reference with other prior art .” E.g., Ex.
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`A, Initial ’117 iPhone 6 Chart at 14-15; Ex. B, Initial ’885 iPhone 6 Chart at 11; Ex.
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`C, Initial ’117 iPhone 6 Plus Chart at 21-22; Ex. D, Initial ’885 iPhone 6 Plus Chart
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`at 20-21. Apple’s final invalidity contentions, served January 7, 2022, did not modify
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`the contentions for these references.
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`On September 28, 2022, this Court issued its claim construction order. D.I.
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`141. Although two claim phrases including ferrofluid were at issue, the interpretation
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`of “ferrofluid” itself was not, and the Court merely accorded the disputed phrases their
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`1 All cited exhibits are attached to the Declaration of Gavin Snyder filed with
`this brief.
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`2 All of the asserted patent claims require the presence of ferrofluid. E.g., D.I.
`1-2, ’885 patent at cl. 1 (“wherein movement of the moving portion is damped by a
`ferrofluid in physical contact with at least the moving portion”).
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`Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5245 Page 6 of 17
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`plain and ordinary meaning. D.I. 141 at 16-17, 22. Nothing in the order impacts
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`whether a particular prior art product would contain ferrofluid. 3
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`On November 18, 2022, without alerting Taction or seeking leave from the
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`Court, Apple served its “Post Claim Construction Amended Invalidity Contentions,”
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`which included reworked charts for the iPhone 6 and iPhone 6 Plus references. Ex.
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`E, Amended ’117 iPhone 6 Chart; Ex. F, Amended ’885 iPhone 6 Chart; Ex. G,
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`Amended ’117 iPhone 6 Plus Chart; Ex. H, Amended ’885 iPhone 6 Plus Chart.
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`Apple redid its charts in two major ways. First, Apple broadened its reliance on these
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`to include the entire phone instead of the linear motor module within it. Compare,
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`e.g., Ex. A, Initial ’117 iPhone 6 Chart at 1 (comparing claim limitation to “Apple
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`iPhone 6 Linear Motor Module”; “Apple iPhone 6 Linear Motor Module
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`discloses . . .”) with Ex. E, Amended ’117 iPhone 6 Chart at 1 (comparing claim
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`limitation to “Apple iPhone 6”; “Apple iPhone 6 and each linear motor module in
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`Apple iPhone 6 is . . .”). Second, Apple for the first time identified the alleged
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`presence of ferrofluid in at least some versions of these iPhone models. E.g., Ex. E,
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`Amended ’117 iPhone 6 Chart at 35-41; Ex. F, Amended ’885 iPhone 6 Chart at 30-
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`37; Ex. G, Amended ’117 iPhone 6 Plus Chart at 21-26; Ex. H, Amended ’885 iPhone
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`6 Plus Chart at 21-26.
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`The parties have already raised this dispute with Magistrate Judge Burkhardt
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`in a Joint Discovery Statement, and Magistrate Judge Burkhardt authorized Taction
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`to file this motion. D.I. 176.
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`III. Legal Standard
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`Patent Local Rule 3.6(b) is clear: a party may only amend its invalidity
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`contentions after claim construction “absent undue prejudice to the opposing party”
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`3 Taction then sought and obtained leave to amend its infringement contentions
`to include newly-released Apple products. D.I. 144, 145. On October 31, 2022,
`Taction served amended contentions for those products. Nothing in Taction’s
`amended contentions implicates its treatment of “ferrofluid.”
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`Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5246 Page 7 of 17
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`and only with a “good faith” belief that amendment is required by amended
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`infringement contentions or “a claim construction that differs from that proposed by
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`the party.” Patent L.R. 3.6(b)(1)-(2).4 The Patent Local Rules “are designed to
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`require parties to crystallize their theories of the case early in the litigation and to
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`adhere to those theories once they have been disclosed.” CliniComp Int’l, Inc. v.
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`Cerner Corp., No. 17CV02479GPCDEB, 2022 WL 16985003, at *12 (S.D. Cal. Nov.
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`15, 2022) (citation omitted); see also O2 Micro Int’l Ltd. v. Monolithic Power Sys.,
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`Inc., 467 F.3d 1355, 1364 (Fed. Cir. 2006) (Local rules “require parties to crystallize
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`their theories of the case early in the litigation so as to prevent the shifting sands
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`approach.”). Accordingly, “the philosophy behind amending claim charts is
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`decidedly conservative.” CliniComp, 2022 WL 16985003, at *13. Indeed, this
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`District’s Local Rules “do not allow amendments to contentions as a matter of course
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`when new information is revealed in discovery, but instead require parties to file
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`amendments to contentions with diligence.” Zest IP Holdings, LLC v. Implant Direct
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`MFG, LLC, No. 10CV0541-GPC-WVG, 2014 WL 358430, at *3 (S.D. Cal. Jan. 31,
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`2014) (internal quotation marks and citation omitted).
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`In considering diligence, courts evaluate “(1) diligence in discovering the basis
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`for amendment; and (2) diligence in seeking amendment once the basis for
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`amendment has been discovered.” Verinata Health, Inc. v. Ariosa Diagnostics, Inc.,
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`236 F. Supp. 3d 1110, 1113 (N.D. Cal. 2017) (citation omitted). “[T]he critical
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`question is whether the party could have discovered the new information earlier had
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`it acted with the requisite diligence.” Id. (citation omitted). Thus, “under Patent Local
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`Rule 3-6, if there is no diligence, the amendment may be denied without a showing
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`of prejudice.” FullView, Inc. v. Polycom, Inc., No. 18-cv-00510-EMC, 2021 WL
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`1668017, at *3-5 (N.D. Cal. Apr. 28, 2021); c.f. O2 Micro, 467 F.3d at 1367-68
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`4 This Patent Local Rule also permits amendment upon a timely motion. Patent
`L.R. 3.6(b)(3). It is undisputed that Apple did not move for leave to amend.
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`Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5247 Page 8 of 17
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`(“Having concluded that the district court could properly conclude that O2 Micro did
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`not act diligently in moving to amend its infringement contentions, we see no need to
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`consider the question of prejudice to MPS.”). Even if a good faith belief and diligence
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`could be established, the Court must still consider whether the amendment will cause
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`the patentee prejudice. See Patent L.R. 3.6(b) (“absent undue prejudice to the
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`opposing party”). Finally, district courts have wide discretion in enforcing local
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`patent rules. O2 Micro, 467 F.3d at 1367; SanDisk Corp. v. Memorex Prods., Inc.,
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`415 F.3d 1278, 1292 (Fed. Cir. 2005) (“[T]his court gives broad deference to the trial
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`court’s application of local procedural rules in view of the trial court’s need to control
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`the parties and flow of litigation before it.”).
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`IV. Argument
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`Apple’s post-claim construction invalidity contentions and claim charts for the
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`iPhone 6 and iPhone 6 Plus served on November 18, 2022 should be stricken as Apple
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`failed to seek leave and would not otherwise have been able to establish that it had a
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`good faith belief that amendment was required or that it was diligent in making its
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`amendment.
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`A. Apple Lacks a Good Faith Belief that Amendment Was Required
`By Either This Court’s Claim Construction Order or Taction’s
`Amended Infringement Contentions
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`Patent Local Rule 3.6(b) permits invalidity contentions to be amended when a
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`party opposing infringement believes in good faith that amendment is necessitated by
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`a court’s claim construction that differs from that proposed by the party, or believes
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`in good faith that the patentee’s amended infringement contentions so require. Patent
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`L.R. 3.6(b). Neither applies here.
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`First, Apple’s recent amendments were not necessitated by the claim
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`construction order because the amended contentions concern a limitation—
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`ferrofluid—that is not addressed in the order and was not argued at the Markman
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`hearing. Apple, for example, had not alleged that either the iPhone 6 linear motor
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`module or the iPhone 6 Plus linear motor module met the ’117 patent’s limitation
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`Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5248 Page 9 of 17
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`providing that “wherein vibration of the apparatus is damped by a viscous ferrofluid
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`in physical contact with at least the moving portion.” See Ex. A, Initial ’117 iPhone
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`6 Chart at 14-15; Ex. C, Initial ’117 iPhone 6 Plus Chart at 21-22. Yet despite the
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`absence of anything in the claim construction order that might have impacted this
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`limitation, Apple’s post-claim construction invalidity contentions specifically
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`amended Apple’s position as to its own products with respect to this limitation, now
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`contending that they contained ferrofluid. See Ex. E, Amended ’117 iPhone 6 Chart
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`at 35-41; Ex. G, Amended ’117 iPhone 6 Plus Chart at 21-26. Because the Court did
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`not enter an adverse construction for this term or the broader limitation containing it,
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`Apple has no basis under Local Patent Rule 3.6(b) to claim in good faith that it was
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`permitted to amend its contentions for this limitation.
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`This is also the case for the ’885 patent, which has a similar limitation,
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`“wherein movement of the moving portion is damped by a ferrofluid in physical
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`contact with at least the moving portion.” D.I. 1-2, ’885 patent at Claim 1. Apple did
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`not initially contend that the iPhone 6 linear motor module or the iPhone 6 Plus linear
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`motor module disclosed ferrofluid or otherwise met this limitation, see Ex. B, Initial
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`’885 iPhone 6 Chart at 11; Ex. D, Initial ’885 iPhone 6 Plus Chart at 20-21, yet Apple
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`has now unilaterally amended its contentions to assert that they do, see Ex. F,
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`Amended ’885 iPhone 6 Chart at 30-37; Ex. H, Amended ’885 iPhone 6 Plus Chart
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`at 21-26.
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`Second, Apple cannot claim in good faith that Taction’s amended infringement
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`contentions necessitated its new invalidity theories regarding the presence of
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`ferrofluid. For one, Taction merely served new charts for newly-accused products5
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`that were substantially similar to the charts Taction had served for the previously-
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`accused products. Taction’s new claim charts did not change its infringement theory
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`5 As noted, Taction sought and was granted leave to add Apple’s recently
`released products as accused products.
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`Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5249 Page 10 of 17
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`or rely on new evidence for the previously-accused products. Taction merely added
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`charts to account for the new products that Apple had agreed—and the Court had
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`authorized—would be part of the case.
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`Further, Taction’s amended infringement contentions cover pleading is not a
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`valid justification for Apple’s amended invalidity contentions because additions in
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`Taction’s cover pleading did not bear on the ferrofluid limitation. During claim
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`construction, the Court found two disclaimers limiting claim scope: “(1) that the
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`claimed invention is directed to transducers with highly damped output; and (2) that
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`the claimed invention does not utilize or encompass un -damped linear resonant
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`actuators.” D.I. 141 at 17. Because these disclaimers are not tied to any specific
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`claim limitation or construction thereof, Taction addressed these disclaimers in its
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`cover pleading, explaining that the highly damped output is met and may be “satisfied
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`by any mechanism”
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` Ex.
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`I, Taction’s Amended Infringement Contentions at 10. Nothing, however, in
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`Taction’s cover pleading changed Taction’s infringement position with regards to
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`ferrofluid.
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`Apple has suggested that
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` prompted Apple to
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`investigate whether its own prior art references included ferrofluid. This suggestion
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`defies logic. The asserted claims expressly recite ferrofluid, and Taction’s complaint
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`identified it as present in the accused products, as did Taction’s initial infringement
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`contentions. E.g., D.I. 1, Complaint at 17-18, 24-25. Moreover, although the parties
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`did not dispute the meaning of the term ferrofluid, they did dispute other aspects of
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`larger claim phrases that contain that word during Markman.6 Apple has long known
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`that Taction contends the accused Apple products contain ferrofluid. Apple
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`6 E.g., D.I. 1-2, ’885 patent at cl. 1 (“wherein movement of the moving portion
`is damped by a ferrofluid in physical contact with at least the moving portion”).
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`TACTION’S MOTION AND MPA TO STRIKE INVALIDITY CONTENTIONS
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`Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5250 Page 11 of 17
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`presumably had a compelling incentive to look for its own use of ferrofluid in the
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`prior art versions of its products.
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`Moreover, the source for Taction’s claim that
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` was Apple’s own response to an interrogatory. Ex. I,
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`Taction’s Amended Infringement Contentions at 10. Thus, Apple raised to Taction
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` before Taction amended its
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`infringement contentions; Taction did not suddenly put Apple on notice of possible
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` via its amendment. Apple cannot claim in good
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`faith—as it must under Patent L.R. 3.6(b)(1)—that Taction’s reference to
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` suddenly prompted
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`Apple to investigate its prior art products for ferrofluid. Nothing about
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` justifies Apple’s amendments to its invalidity contentions for elements
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`concerning ferrofluid. Ferrofluid is expressly present in the claims and has been at
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`the heart of this litigation from the onset. See, e.g., Ex. A, Initial ’117 iPhone 6 Chart
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`at 14-15 (Apple identifying twenty-three prior art references allegedly disclosing
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`ferrofluid with which to combine the iPhone 6 linear motor module). Nothing about
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`the claim construction order or Taction’s amended infringement contentions changed
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`the focus or scope of this litigation with regards to ferrofluid.
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`To the extent that Apple attempts to argue that the amended charts disclose new
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`“facts”7 and not new invalidity theories as it argued in the joint discovery statement
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`that addressed these contentions, this argument is undermined by a simple comparison
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`of the initial and amended invalidity contentions. The initial contentions disclosed
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`one specific module within the iPhone 6 and iPhone 6 Plus—the “linear motor
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`7 Even if this could be construed as only disclosing a new fact, this district does
`“not allow amendments to contentions as a matter of course when new information
`is revealed in discovery, but instead require parties to file amendments to
`contentions with diligence.” Zest, 2014 WL 358430, at *3 (internal quotation marks
`and citation omitted). As explained below, Apple lacked diligence.
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`Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5251 Page 12 of 17
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`module”—as the prior art reference. E.g., Initial ’117 iPhone 6 Chart at 1. The post-
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`Markman contentions, in contrast, changed the identified reference from the modules
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`to the entire phone. E.g., Amended ’117 iPhone 6 Chart at 1. That Apple now
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`contends Taction had notice that the iPhones themselves were prior art references
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`when Apple had previously identified only the linear motor modules strains credulity.
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`It is of course noteworthy that Apple itself had disclosed these modules as part
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`of an obviousness combination in initial contentions without apparently bothering to
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`even investigate whether they contained ferrofluid. E.g., Ex. A, Initial ’117 iPhone 6
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`Chart at 1 (reference “renders obvious”), 14 (similar). Although its post-Markman
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`contentions now raise these iPhones as allegedly anticipatory references with entirely
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`new contentions about how the linear motor modules within them allegedly meet the
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`ferrofluid-based limitations, its earlier contentions acknowledged that these
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`limitations were not met. E.g., Ex. E, Amended ’117 iPhone 6 Chart at 1 (reference
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`“anticipates or renders obvious”), 35-41 (alleging ferrofluid limitation is met). This
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`fundamental change in Apple’s factual position (akin to “guess what, our products
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`had ferrofluid after all”) and legal theory (from obviousness to anticipation) cannot
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`be saved by the boilerplate reservations in Apple’s cover pleading. A “boilerplate,
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`placeholder statement [does] not relieve [defendant] of its obligation to provide a
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`chart identifying specifically where and how in each alleged item of prior art each
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`limitation of each asserted claim is found.” Polaris PowerLED Techs., LLC v. VIZIO,
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`Inc., No. SACV181571JVSDFMX, 2020 WL 4258663, at *4 (C.D. Cal. May 14,
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`2020); see also Patent L.R. 3.3(b) (requiring each “chart identifying where
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`specifically in each alleged item of prior art each element of each asserted claim is
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`found”). Because Apple “did not provide an invalidity contention chart” for the
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`iPhone 6 or iPhone 6 Plus “as an anticipatory reference, or . . . otherwise disclos[e]”
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`that they met the ferrofluid limitations, its amended “charts to that effect are new.”
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`Polaris, 2020 WL 4258663, at *4.
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`Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5252 Page 13 of 17
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`B. Apple Failed to Exercise Diligence In Serving Its Post Claim
`Construction Amended Invalidity Contentions
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`Courts have found that parties were unable to establish diligence when the prior
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`art references were available to the amending party prior to the invalidity contention
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`deadline. See, e.g., Apple, Inc. v. Samsung Elecs Co., Ltd., No. 11-cv-1846, 2012 WL
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`1067548, at *3-4 (N.D. Cal. Mar. 27, 2012) (finding no diligence when defendant
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`knew of prior art reference shortly after filing preliminary invalidity contentions);
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`Brilliant Instr., Inc. v. GuideTech, Inc., No. 09-cv-5517, 2011 WL 900369, at *2
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`(N.D. Cal. Mar. 15, 2011) (noting no good cause existed to amend invalidity
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`contentions because the prior art references that defendant wanted to add were two
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`publicly available patents). This situation presents an even more extreme example of
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`lack of diligence.
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`The iPhone 6 and iPhone 6 Plus are Apple products and Apple identified
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`components of them in its initial invalidity contentions. Even now, Apple relies on
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`its own internal documents8 to show the alleged presence of ferrofluid in them. E.g.,
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`Ex. E, Amended ’117 iPhone 6 Chart at 35-41. Not only did Apple know about these
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`products and have physical access to them since the outset, Apple also had access to
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`the internal Apple documents on which it now relies, and also could have consulted
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`with its own Apple engineers about these products. Indeed, Apple’s identified
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`witnesses relating to these products, Alex Lee and Jere Harrison, are still employed
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`by Apple in its Haptic Engineering Group, and were also employed by Apple when
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`the complaint in this case was filed. Ex. J, Apple Second Amended Initial Disclosures
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`at 2. No reasonable explanation exists for why Apple’s own documents and
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`engineering knowledge would not have been sufficient to put Apple on notice that its
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`8 Apple has suggested that, because these products were designed and
`manufactured by third parties, finding information about them was difficult. But
`Apple relies on Apple documents, not third-party documents, in its latest invalidity
`contentions. Moreover, nothing prevented Apple from consulting with its
`manufacturing partners about the use of ferrofluid at the outset of this case.
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`TACTION’S MOTION AND MPA TO STRIKE INVALIDITY CONTENTIONS
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`Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5253 Page 14 of 17
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`own products allegedly used ferrofluid, had Apple bothered to check. This failure to
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`timely investigate the prior art references it has been asserting since the onset of this
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`litigation—its own products—shows a lack of diligence on Apple’s part that Apple
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`has not even attempted to explain.
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`Further, Apple revealed its new positions long after the parties’ positions had
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`largely crystallized, causing Taction undue prejudice. See O2 Micro, 467 F.3d at
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`7
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`1365 (Discovery is designed “to allow the plaintiff to pin down the defendant’s
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`theories of defense, thus confining discovery and trial preparation to information that
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`is pertinent to the theories of the case.”). Apple should have investigated whether
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`10
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`these products used ferrofluid at least by January 2022, when it served its final
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`invalidity contentions. Instead, Apple sat on its hands for almost twenty months after
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`the case was filed, and over seven months after the stay was lifted, before serving its
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`untimely and unjustified claim charts. By holding back its own evidence about its
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`own prior art products, to which it has unfettered access, and its invalidity theories
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`based on those products, Apple obstructed Taction’s ability to obtain discovery on the
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`alleged prior art iPhones. Moreover, because these prior art Apple products—which
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`Apple knew about since their design and release around 2014—were not identified as
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`containing ferrofluid or otherwise asserted as anticipatory references in Apple’s
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`preliminary invalidity contentions, Taction did not fully assess their relevance to the
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`claim construction process. Because it is too late to reengage in claim construction,
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`Taction has been unfairly prejudiced by the improper amendments.
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`Finally, despite serving its amended contentions in November 2022, Apple
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`waited until January 17, 2023, at which point there was less than a month left in fact
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`discovery, to identify two new fact witnesses to testify about these iPhone models.
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`Ex. J, Apple Second Amended Initial Disclosures. That is the exact type of
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`“sandbagging” the Patent Local Rules are designed to avoid. See Oracle Am., Inc. v.
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`Google Inc., No. C 10-03561 WHA, 2011 WL 3443835, at *2 (N.D. Cal. Aug. 8,
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`2011) (finding defendant’s delay in seeking to amend “amount[ed] to sandbagging”);
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`Case 3:21-cv-00812-TWR-JLB Document 205 Filed 02/21/23 PageID.5254 Page 15 of 17
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`see also Yodlee, Inc. v. Cashedge, Inc., No. 05- cv-1550, 2007 WL 2261566, at *3
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`2
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`(N.D. Cal. Aug. 6, 2007) (noting that “the Patent Local Rules’ concern with parties
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`3
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`sandbagging opponents late in the discovery period”). Although Apple’s lack of
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`4
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`diligence relieves Taction of the obligation to show prejudice, see FullView, 2021 WL
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`5
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`1668017, at *3-5, here Apple’s conduct unmistakably caused unfair prejudice to
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`Taction.
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`V. Conclusion
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`Apple has no legitimate excuse for failing to disclose that its own prior art
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`products allegedly had ferrofluid and for attempting to change its invalidity theories
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`10
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`in a “post-claim construction” pleading when its changes had nothing to do with the
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`Court’s claim construction order. Accordingly, Apple’s new claim charts for the
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`12
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`iPhone 6 and iPhone 6 Plus should be stricken, and Apple should not be permitted to
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`13
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`rely on the alleged use of ferrofluid in these products or otherwise assert that they
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`14
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`anticipate the asserted claims. Apple Inc. v. Wi-LAN, Inc., No. 14-cv-2235 DMS
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`15
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`(BLM), 2018 WL 9538772, at *1-2 (S.D. Cal. Mar. 2, 2018) (striking Apple’s
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`16
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`contentions when plaintiff had “insufficient time to conduct