Case 3:21-cv-00812-TWR-JLB Document 230 Filed 03/16/23 PageID.6398 Page 1 of 30
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`Roger A. Denning (SBN 228998)
`denning@fr.com
`Christopher S. Marchese (SBN 170239)
`marchese@fr.com
`Seth M. Sproul (SBN 217711)
`sproul@fr.com
`John W. Thornburgh (SBN 154627)
`thornburgh@fr.com
`Ryan P. O’Connor (SBN 253596)
`oconnor@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Tel: (858) 678-5070
`Fax: (858) 678-5099
`
`Additional Counsel listed on Signature
`Page
`
`Attorneys for Defendant Apple Inc.
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`
`
`TACTION TECHNOLOGY, INC.,
` Plaintiff,
`
`v.
`
`
`APPLE INC.
`
`
`
`
`
` Defendant.
`
`Case No. 3:21-cv-00812-TWR-JLB
`
`DEFENDANT APPLE INC.’S
`OPPOSITION TO PLAINTIFF
`TACTION TECHNOLOGY, INC.’S
`MOTION TO STRIKE APPLE’S
`AMENDED INVALIDITY
`CONTENTIONS
`
`
`Hearing Date: April 13, 2023
`Hearing Time: 2:00 PM
`Judge:
`Hon. Todd W. Robinson
`
`
`REDACTED
`
`
`Case No. 3:21-cv-00812-TWR-JLB
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION ............................................................................................. 1
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`BACKGROUND ............................................................................................... 2
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`A.
`
`B.
`
`C.
`
`Scheduling Orders ................................................................................... 2
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`Taction’s Asserted Patents and Apple’s Accused Products .................... 3
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`Apple’s Invalidity Contentions and Related Discovery ......................... 3
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`III. LAW .................................................................................................................. 6
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`IV. ARGUMENT ..................................................................................................... 8
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`A.
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`B.
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`C.
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`Taction Waived Its Challenge to Apple’s Invalidity Contentions .......... 8
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`Apple’s Supplementation Is Proper Under the Rules ........................... 10
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`Good Cause Exists for Apple to Amend ............................................... 12
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`1.
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`Apple Was Diligent in Investigating the iPhone 6 and
`Disclosing Its Use of Ferrofluid ................................................. 12
`
`a.
`
`b.
`
`c.
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`The Age of the iPhone 6 Vibration Module, the Fact
`It Was Developed by Third Parties, and the Limited
`Amount of Relevant Information at Apple Made
`Investigation Difficult ...................................................... 12
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`Apple’s Investigation and Discovery of Ferrofluid
`Was Reasonable ................................................................ 15
`
`Taction’s Cases Do Not Support Striking the Fact
`That the iPhone 6 Used Ferrofluid ................................... 19
`
`2.
`
`3.
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`There Is No Undue Prejudice to Taction .................................... 21
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`Apple Requests Leave to Amend to the Extent the Court
`Deems It Necessary .................................................................... 24
`
`V.
`
`CONCLUSION ............................................................................................... 25
`
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`DEFENDANT APPLE INC.’S OPPOSITION TO MOTION TO STRIKE AMENDED
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Apple Inc. v. Wi-LAN, Inc.,
`No. 14-cv-2235 DMS (BLM), 2018 WL 9538772 (S.D. Cal. Mar. 2,
`2018) ................................................................................................................... 24
`
`Apple v. Samsung,
`2012 WL 1067548 (N.D. Cal. Mar. 27, 2012) ................................................... 18
`
`Brilliant Instruments, Inc. v. Guidetech, Inc.
`2011 WL 900369 (N.D. Cal. Mar. 15, 2011) ..................................................... 19
`
`Echologics, LLC v. Orbis Intelligent Sys., Inc.,
`No. 21-CV-01147-RBM-AHG, 2022 WL 17724142 (S.D. Cal. Dec.
`15, 2022) ....................................................................................................... 17, 22
`
`eMove, Inc. v. Hire a Helper LLC,
` No. 17-CV-00535-CAB-JLB, 2018 WL 2554243 (S.D. Cal. Mar.
`26, 2018) .............................................................................................................. 9
`
`FullView, Inc. v. Polycom, Inc.
`2021 WL 1668017 (N.D. Cal. Apr. 28, 2021) .................................................... 20
`
`Impinj, Inc. v. NXP USA, Inc.,
`No. 19-CV-03161-YGR, 2022 WL 2125135 (N.D. Cal. Jan. 14,
`2022) ............................................................................................................. 18, 22
`
`Kilopass Tech. Inc. v. Sidense Corp.,
`No. C 10-02066 SI, 2012 WL 1901198 (N.D. Cal. May 24, 2012) ............... 7, 16
`
`O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc.
`467 F.3d 1355 (Fed. Cir. 2006) .......................................................................... 20
`
`Oracle Am., Inc. v. Google Inc.,
`No. C 10-03561 WHA, 2011 WL 3443835 (N.D. Cal. Aug. 8, 2011) .............. 23
`
`Peregrine Semiconductor Corp. v. RF Micro Devices, Inc.,
`No. 313CV00725HWMC, 2014 WL 12781782 (S.D. Cal. July 21,
`2014) ......................................................................................................... 7, 17, 18
`
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`Polaris PowerLED Techs., LLC v. VIZIO, Inc.,
`No. SACV181571JVSDFMX, 2020 WL 4258663 (C.D. Cal. May
`14, 2020) ............................................................................................................. 16
`
`Regents of Univ. of Cal. v. Affymetrix, Inc.,
`No. 17-CV-01394-H-NLS, 2018 WL 4053318 (S.D. Cal. Aug. 24,
`2018) ............................................................................................................ passim
`
`United States v. Hankey,
`203 F.3d 1160 (9th Cir. 2000) ............................................................................ 21
`
`Verinata Health, Inc. v. Ariosa Diagnostics, Inc.
`2017 U.S. Dist. LEXIS 20945 (N.D. Cal. Feb. 14, 2017) .................................. 21
`
`Walker v. Stryker Corp.,
`No. 22-CV-264-MMA-DDL, 2022 WL 16577537 (S.D. Cal. Nov.
`1, 2022) ................................................................................................................. 9
`
`Yodlee, Inc. v. Cashedge, Inc.,
`No. 05- cv-1550, 2007 WL 2261566 (N.D. Cal. Aug. 6, 2007)....... 17, 18, 23, 24
`
`Zest IP Holdings, LLC v. Implant Direct MFG, LLC,
`No. 10CV0541-GPC-WVG, 2014 WL 358430 (S.D. Cal. Jan. 31,
`2014) ............................................................................................................. 19, 20
`
`Other Authorities
`
`Patent L.R. 3.3 ......................................................................................................... 19
`
`Patent L.R. 3.6 .................................................................................................. passim
`
`
`
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`I.
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`INTRODUCTION
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`Taction alleges that its asserted patents cover a planar vibration module that
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`uses ferrofluid, an oil with small magnetic particles. Taction claims an effective filing
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`date of September 24, 2014. Apple started selling the iPhone 6 on September 14,
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`2014—10 days before Taction filed for its patents—and the iPhone 6 included a
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`planar vibration module that used ferrofluid, making the iPhone 6 invalidating prior
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`art to Taction’s patents. In an attempt to bury this invalidating prior art, Taction seeks
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`to preclude Apple from relying on the undisputed fact that the iPhone 6 vibration
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`module used ferrofluid. Taction’s motion to strike is an attempt to gain unwarranted
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`litigation advantage and should be denied.
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`Apple properly disclosed the iPhone 6 as prior art in its initial invalidity
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`contentions, and Apple promptly supplemented its contentions to add information
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`about the use of ferrofluid as the facts unfolded. The iPhone 6 was developed nearly
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`ten years ago, and even though it is an Apple product, the key component here (the
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`vibration module) was developed by third parties, before the creation of Apple’s own
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`haptic engineering group. Developing facts surrounding the use of ferrofluid in the
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`iPhone 6 presented a unique challenge, and Apple was diligent in pursuing it.
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`In attempting to exclude the fact that the iPhone 6 vibration model used
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`ferrofluid, Taction wrongly focuses on whether Apple had the right to amend to add
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`those facts under Patent L.R.’s 3.6(a) and (b), which relate to amending invalidity
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`contentions based on claim construction or amended infringement contentions. But
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`for the supplementation challenged by Taction, Apple did not present a new invalidity
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`argument or combination based on claim construction or new infringement theories.
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`Instead, Apple’s supplement merely documented newly discovered facts about its
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`previously asserted iPhone 6 prior art, as allowed by Patent L.R. 3.6’s requirement
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`“to timely supplement disclosures.” Instead, Apple’s supplement merely documented
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`newly discovered facts about its previously asserted iPhone 6 prior art. This is allowed
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`by Patent L.R. 3.6, which requires “timely supplement[ation of] disclosures.” Even if
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`Apple was required to seek leave to show good cause, Apple submits that good cause
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`exists because Apple was diligent in determining and disclosing that the iPhone 6
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`used ferrofluid.
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`There is no undue prejudice to Taction. Apple supplemented its invalidity
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`contentions on November 18, 2022, three months before the close of fact discovery.
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`At that point, Taction had not yet taken any depositions, and Taction took its first
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`deposition on December 21, one month later. Moreover, the first deposition relating
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`to the iPhone 6 occurred on February 8, two and a half months after Apple
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`supplemented its contentions. Apple’s supplementation required no additional
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`discovery, nor did it impact the schedule. Taction had full opportunity to take
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`discovery on the ferrofluid issue, and it did so, including questioning several of
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`Apple’s Rule 30(b)(6) witnesses about it. Taction suffered no undue prejudice from
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`this amendment.
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`Taction has waived its ability to raise this dispute. Judge Burkhardt requires
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`discovery disputes to be raised within 30 days of the service of the challenged
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`discovery. Apple amended its invalidity contentions on November 18, 2022, but
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`Taction did not file the joint discovery dispute papers until January 31, 2023, 73 days
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`Taction’s motion seeks the extraordinary remedy of striking a fact—not to
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`remedy a prejudice—purely for litigation advantage. It fails for procedural reasons
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`and on the merits and should be denied.
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`II.
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`BACKGROUND
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`A.
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`Scheduling Orders
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`The Court issued its Case Management Order on August 10, 2021. ECF No.
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`34. On October 21, 2021, Apple filed IPRs against the patents-in-suit, and on October
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`25, 2021, filed a motion to stay the case, which the Court granted on January 26, 2022.
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`See ECF No. 76. The Court lifted the stay on June 2, 2022. See ECF No. 98. At the
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`same time, the Court issued an Amended Case Management Order, setting new
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`deadlines in the case. ECF No. 99. On September 23, 2022, the Court granted the
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`parties’ joint request to amend and extend the case schedule. The Court set the close
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`of fact discovery on February 10, 2023, and the deadline to serve opening expert
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`reports on February 24, 2023. ECF No. 140 at 1-2. On February 3, 2023, the Court
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`partially granted another joint request from the parties to further extend the schedule,
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`such that, inter alia, the deadline for expert report disclosures would be extended by
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`two weeks, to March 10 and April 7, respectively. ECF No. 174. At the joint request
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`of the parties, the Court allowed certain depositions to be taken out of time, after the
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`close of fact discovery. ECF No. 188.
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`B.
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`Taction’s Asserted Patents and Apple’s Accused Products
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`Apple appreciates that the Court, having construed the claims in this case, is
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`knowledgeable about the general disclosure of the asserted patents, and refers to the
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`Court’s Claim Construction Order for a discussion thereof. ECF No. 141. In brief,
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`Taction asserts two patents, the ’885 Patent and the ’117 Patent. The patents disclose
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`“a thin, flat vibration module with a movable member that is electromagnetically
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`actuated to produce motion in-plane.” E.g., ECF No. 1-2 (’885 patent) at col. 3 ll. 51-
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`53. They further disclose the use of ferrofluid to damp the moving portion of the
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`module. E.g., id. at col. 4 ll. 6-8.
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`Apple provides haptic feedback in its iPhones and Watches with vibration
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`modules. Since 2014 for the Watch and 2015 for the iPhone, Apple has branded its
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`vibration module the “Taptic Engine.” Taction accuses of infringement Apple’s
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`Taptic Engine in iPhones starting with the iPhone 8 and the Watch starting with the
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`Series 3. The Apple Taptic Engines include ferrofluid.
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`C. Apple’s Invalidity Contentions and Related Discovery
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`Apple served initial invalidity contentions on October 22, 2021. These initial
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`invalidity contentions included references to, and detailed claim charts for, the iPhone
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`6 vibration modules. See ECF 204-1 through 204-4. These charts did not include
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`references to the use of ferrofluid in the iPhone 6 modules. At the time, the presence
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`of ferrofluid in the iPhone 6 had not been discovered. Nevertheless, Apple disclosed
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`and charted everything it then knew about the iPhone 6, except for the yet-
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`undiscovered ferrofluid. Apple served supplemental invalidity contentions on January
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`7, 2022. The supplemental invalidity contentions also included discussion of the
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`iPhone 6 prior art products.
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`Pursuant to the Court’s Amended Case Management Order of June 2, 2022, the
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`Court held a Markman hearing on September 15, 2022, and issued its claim
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`construction order on September 28, 2022. In that order, the Court found two
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`disclaimers limiting the asserted claims. ECF No. 141 at 17. The disclaimers were not
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`anticipated by either party as part of claim construction. Following entry of the claim
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`construction order, Taction served amended infringement contentions on October 31,
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`2022, in which it addressed the disclaimers found by the Court in new theories of
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`infringement. Pursuant to Patent L.R. 3.6(b), Apple prepared and served Amended
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`Invalidity Contentions on November 18, 2022. Under Rule 3.6(b), a defendant is
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`entitled to serve amended contentions as of right if the plaintiff changes its
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`infringement theory in amended infringement contentions or if the Court’s claim
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`construction order necessitates it. Patent L.R. 3.6(b)(1), (2). Taction does not
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`challenge the bulk of Apple’s amendments—it only takes issue with the added fact of
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`ferrofluid in the iPhone 6.
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`In September of 2022, shortly after the stay was lifted, Apple’s resumed
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`investigation in this case revealed that the iPhone 6 may have used ferrofluid. Sproul
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`Decl. at ¶ 10. Through September and October of 2022, further investigation
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`eventually confirmed that the original iPhone 6—now nearly 10 years old—did in fact
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`contain ferrofluid. As Apple was set to amend its contentions on November 18 as of
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`right, Apple also supplemented its invalidity contentions to include the newly
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`discovered information about the iPhone 6’s use of ferrofluid. As part of this
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`supplementation, Apple also identified and produced newly discovered documents
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`that disclose the ferrofluid in the iPhone 6.
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`Taction did not seek to challenge this supplementation until December 29,
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`2022, when it first emailed Apple noting its objection to the supplementation in the
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`Amended Invalidity Contentions. Sproul Decl. at ¶ 14. The parties met and conferred
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`on January 12, 2023. Id. And Taction filed its joint discovery statement on January
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`31, 2023. Id. Under Judge Burkhardt’s Rules, Taction’s deadline to meet and confer
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`was December 2, 2022. Its deadline to file its dispute papers was December 19, 2022.
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`Taction missed these deadlines for raising a discovery dispute by almost six weeks.
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`On order by Judge Burkhardt, (ECF No. 176) Taction filed its discovery dispute
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`as a fully noticed motion. ECF No. 204, Taction’s Motion to Strike Apple’s Amended
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`Invalidity Contentions, referred to herein as “MTS.”
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`The first deposition in this case occurred on December 21, 2022—over a month
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`after Apple’s supplementation—when Taction deposed Apple engineer Alex Lee.
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`Sproul Decl. at ¶ 17. Mr. Lee is now the head of the Haptics Engineering team at
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`Apple but is not personally knowledgeable about the iPhone 6, did not work on the
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`iPhone 6, and did not testify about the iPhone 6. The bulk of the depositions of Apple’s
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`engineers took place between mid-January and mid-February 2023. Apple designated
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`two witnesses to testify for the company on Rule 30(b)(6) topics about the iPhone 6
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`and specifically its use of ferrofluid: Dr. John Morrell, who was deposed on February
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`8, and Dr. Shingo Yoneoka, who was deposed on February 14. See Ex. 1 (2022-12-
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`21 Apple HC-AEO 30b6 Designees and Topics at 4 (designating John Morrell)), Ex.
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`2 (2023-02-12 Apple HC-AEO 2d Amd 30b6 Designees and Topics (designating
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`Shingo Yoneoka)) at 8. Additionally, on February 17, 2023, Apple engineer Dr. Jere
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`Harrison testified that Apple engineering documents disclose that ferrofluid was used
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`in the iPhone 6. See Ex. 3 (2023-02-17 Harrison Depo Tr.) at 209:4-19. Fact discovery
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`closed on February 12, 2023. Former Apple engineer Arman Hajati also testified
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`about his knowledge of ferrofluid in the iPhone 6. Ex. 4 (2023-02-20 Hajati Depo Tr.)
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`at 24:24-25:3.
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`INVALIDITY CONTENTIONS
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`Taction also served written discovery on Apple relating to the iPhone 6 and its
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`use of ferrofluid, albeit very late in discovery. See Sproul Decl. ¶ 18, Ex. 8 (2023-01-
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`11 Plaintiff Taction Technology, Inc’s Third Set of Interrogatories to Apple [Nos. 13-
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`25]) at Interrogatory Nos. 16, 22, 23. Apple responded to these requests on February
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`10, 2023. See Sproul Decl. at ¶ 18, Ex. 9 (2023-02-10 Defendant Apple HC-AEO
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`Responses to Taction Technology, Inc.’s Third Set of Interrogatories [Nos. 13-25]).
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`Opening expert reports are due on March 10, 2023. Taction has not sought or
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`identified any additional discovery needed on this issue.
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`III. LAW
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`In the Southern District of California, the Patent Local Rules govern
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`amendment and supplementation of invalidity contentions. Patent L.R. 3.6(b) sets out
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`two circumstances under which parties can amend their invalidity contentions as of
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`right. First, a party may amend where the plaintiff has served Amended Infringement
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`Contentions that the defending party believes in good faith requires amendment.
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`Second, a party may amend within fifty (50) days after service of the court’s Claim
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`Construction Ruling if the amending party “believes in good faith that the claim
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`construction differs from that proposed by such party.” Patent LR 3.6 also states that
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`“[t]his rule does not relieve any party from its obligations under Fed. R. Civ. Proc. 26
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`to timely supplement disclosures and discovery responses.” That is, the Southern
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`District of California Patent Local Rules specifically require supplementation of
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`newly discovered information; this supplementation sentence does not mention filing
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`of a motion. Although this Court’s Patent Local Rules are patterned on the Patent
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`Local Rules of the Northern District of California, this supplementation requirement
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`in this Court’s Rules represents a noticeable departure from the requirement in the
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`Northern District Rules, which require a motion even to supplement.1
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`1 Northern District Patent L.R. 3-6 states that “Amendment of the Infringement
`Contentions or the Invalidity Contentions may be made only by order of the Court
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`6
`DEFENDANT APPLE INC.’S OPPOSITION TO MOTION TO STRIKE AMENDED
`INVALIDITY CONTENTIONS
`Case No. 3:21-cv-00812-TWR-JLB
`
`

`

`Case 3:21-cv-00812-TWR-JLB Document 230 Filed 03/16/23 PageID.6408 Page 11 of 30
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`Even if the conditions of Rule 3.6(b)(1) or (2) are not met, a party may seek to
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`amend contentions to add new theories and prior art references “upon a timely motion
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`showing good cause.” Patent L.R. 3.6(b)(3). “To establish good cause under Patent
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`Local Rule 3.6(b)(3), the moving party must demonstrate that it has acted diligently
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`and the opposing party will not be prejudiced.” Regents of Univ. of Cal. v. Affymetrix,
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`Inc., No. 17-CV-01394-H-NLS, 2018 WL 4053318, at *2 (S.D. Cal. Aug. 24, 2018)
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`(granting motion to amend invalidity contentions) (internal cites and quotes omitted).
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`When considering whether to allow amendment to invalidity contentions,
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`courts “take[] into account the relevance of the prior art and the difficulty of locating
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`it.” See e.g. Peregrine Semiconductor Corp. v. RF Micro Devices, Inc., No.
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`313CV00725HWMC, 2014 WL 12781782, at *2 (S.D. Cal. July 21, 2014) (allowing
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`amendment of invalidity contentions where prior art was old and developed by third
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`parties). Courts also consider the extent of the amendments and are more likely to
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`allow amendment where prior art had been previously disclosed. See Kilopass Tech.
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`Inc. v. Sidense Corp., No. C 10-02066 SI, 2012 WL 1901198, at *3 (N.D. Cal. May
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`24, 2012) (granting defendant’s motion to amend invalidity contentions where
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`amendment provided more information “on previously disclosed and charted prior art
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`18
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`references” that did not “substantially depart” from the original contentions).
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`upon a timely showing of good cause.” It goes on to list “[n]on-exhaustive examples
`of circumstances that may, absent undue prejudice to the non-moving party, support
`a finding of good cause.” This list includes; “(a) A claim construction by the Court
`different from that proposed by the party seeking amendment; (b) Recent discovery
`of material, prior art despite earlier diligent search; and (c)Recent discovery of
`nonpublic information about the Accused Instrumentality which was not discovered,
`despite diligent efforts, before the service of the Infringement Contentions.” In
`contrast to this Court’s Patent Local Rules, Northern District Patent Local Rule 3-6
`states that “[t]he duty to supplement discovery responses does not excuse the need to
`obtain leave of court to amend contentions.” This Courts’ Patent Local Rules were
`drafted later and based on the Northern District’s Rules. This is a distinct difference.
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`
`7
`DEFENDANT APPLE INC.’S OPPOSITION TO MOTION TO STRIKE AMENDED
`INVALIDITY CONTENTIONS
`Case No. 3:21-cv-00812-TWR-JLB
`
`

`

`Case 3:21-cv-00812-TWR-JLB Document 230 Filed 03/16/23 PageID.6409 Page 12 of 30
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`Contrary to Taction’s hyper-restrictive view of amending under the Patent
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`Local Rules, supplementation as Apple did here is entirely proper. To the extent good
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`cause must be shown, good cause exists for reasons shown below.
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`IV. ARGUMENT
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`Taction’s motion to strike fails for three reasons. First, Taction waived its
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`ability to bring this challenge. It had to bring this dispute within 30 days of service of
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`Apple’s invalidity contentions and instead waited 73 days. Second, Apple was
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`obligated to supplement its contentions to disclose the use of ferrofluid in the prior art
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`reference. Notably, Apple did not add an entirely new reference or theory; it merely
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`updated a fact of a previously disclosed reference. Third, Apple is justified under Rule
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`3.6(b)(3), which allows amendment for good cause. Apple has good cause because it
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`was diligent in determining that the iPhone 6 had ferrofluid, and Taction will not be
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`prejudiced by allowing such amendment. Taction’s motion should be denied.
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`A. Taction Waived Its Challenge to Apple’s Invalidity Contentions
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`Taction failed to timely raise its dispute regarding Apple’s invalidity
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`contentions and therefore waived it. Under Judge Burkhardt’s Civil Chambers Rules,
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`discovery disputes are to be raised with the Court within 30 days of the service of the
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`written discovery at issue. The rules are unequivocal on this, and this requirement was
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`reinforced by the recently Amended Scheduling Order issued by Hon. J. Burkhardt:
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`Discovery disputes must be brought to the Court’s attention in the time
`and manner required by § V of Judge Burkhardt’s Civil Chambers
`Rules. All discovery disputes must be raised within 30 calendar
`days of the service of an objection, answer, or response that
`becomes the subject of dispute, or the passage of a discovery due date
`without response or production, and only after counsel (and any
`unrepresented parties) have met and conferred to resolve the dispute.
`See J. Burkhardt Civ. Chambers R. § V.
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`ECF No. 140 at 2 (emphasis in original).
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`Judge Burkhardt’s Civil Chambers Rules (CCR) require counsel to meet and
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`confer “within 14 calendar days of the event giving rise to” a discovery dispute. CCR
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`8
`DEFENDANT APPLE INC.’S OPPOSITION TO MOTION TO STRIKE AMENDED
`INVALIDITY CONTENTIONS
`Case No. 3:21-cv-00812-TWR-JLB
`
`

`

`Case 3:21-cv-00812-TWR-JLB Document 230 Filed 03/16/23 PageID.6410 Page 13 of 30
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`at §V.A. The parties must also contact the Court regarding any unresolved discovery
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`dispute “[n]o later than 30 calendar days after the date upon which the event giving
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`rise to the discovery dispute occurred (see § V.E.).” CCR at §V.B. The Rules are clear
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`that “the event giving rise to the discovery dispute is the date of the service of the
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`answer/response”—i.e., November 18, 2022. CCR at §V.E (emphasis added).
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`Apple served its Amended Invalidity Contentions on November 18, 2022.
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`Taction did not raise any issue with these Contentions until December 29, 2022,
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`nearly 6 weeks after Apple served them. Taction did not request to meet and confer
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`on this dispute until January 10, 2023, more than 7 weeks after the date of service.
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`The parties conferred on January 12 and lodged a Joint Discovery Statement with the
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`Court regarding this dispute on January 31, 2022, more than 10 weeks after the date
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`of the service of Apple’s Amended Invalidity Contentions.
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`In the January 31 Joint Discovery Statement, Taction sought to excuse its delay
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`by arguing that the event giving rise to the dispute was Apple’s refusal to withdraw
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`its contentions when Apple responded to Taction’s December 29, 2022 email first
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`raising the dispute. See Ex. 5 (2023-01-31 JDS re Inv. Cont.) at 1. Such an
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`interpretation is contrary to the express language of Judge Burkhardt’s Rules. The
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`Rules are explicit that the event is the service of the discovery, not some later time
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`when a party refuses to comply with a request to withdraw the discovery. Taction’s
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`failure to timely raise the dispute with Apple within 14 days after service of the
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`Amended Contentions and Taction’s failure to file the dispute with the Court within
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`30 days both waive Taction’s ability to pursue the dispute. Failure to “commence the
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`meet and confer process within 14 calendar days of the event giving rise to the
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`[discovery] dispute” results in waiver. See Ex. 5 (2023-01-31 JDS re Inv. Cont.) at 3;
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`see also Walker v. Stryker Corp., No. 22-CV-264-MMA-DDL, 2022 WL 16577537,
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`at *2 (S.D. Cal. Nov. 1, 2022) (denying motion to compel deposition as untimely for
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`failing to comply with Burkhardt Civil Chambers Rules §V.A. and V.B when
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`“Defendants’ counsel waited two months to initiate a meet and confer with Plaintiff’s
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`9
`DEFENDANT APPLE INC.’S OPPOSITION TO MOTION TO STRIKE AMENDED
`INVALIDITY CONTENTIONS
`Case No. 3:21-cv-00812-TWR-JLB
`
`

`

`Case 3:21-cv-00812-TWR-JLB Document 230 Filed 03/16/23 PageID.6411 Page 14 of 30
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`counsel and waited an additional two weeks” to raise the dispute with the court); see
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`also eMove, Inc. v. Hire a Helper LLC, No. 17-CV-00535-CAB-JLB, 2018 WL
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`2554243, at *2 (S.D. Cal. Mar. 26, 2018) (denying motion to bar testimony at trial as
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`untimely and procedurally improper when “Plaintiffs waited until February 27, 2018
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`to meet and confer [about a dispute that arose on January 24] and did not contact
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`Judge Burkhardt pursuant to her Civil Chambers rules prior to filing the instant ex
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`parte motion on March 16, 2018”).
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`Taction missed the deadline set by Chambers Rules §V.A. and §V.B. It didn’t
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`reach out to Apple until December 29, 2022, it didn’t meet and confer until January
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`10, 2023, and it didn’t file the joint discovery statement until January 31. Taction’s
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`delay waived this dispute.
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`B. Apple’s Supplementation Is Proper Under the Rules
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`The Patent Local Rules of this District allow for supplementation of invalidity
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`contentions, and indeed require it, upon the discovery of new facts. Here, Apple
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`served amended invalidity contentions as of right under the Court’s scheduling order,
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`ECF No. 34, which allows amendment if a Court’s claim construction was unexpected
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`and new invalidity contentions are warranted: “A party opposing a claim of
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`infringement must serve final amended invalidity contentions, within the meaning of
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`Patent LR 3.6(b)(2), not later than fifty (50) days after service of the Court’s Claim
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`Construction ruling.” Here, the Court found that the claims are limited by a disclaime