Case 1:16-cv-00290-MN Document 113 Filed 10/29/18 Page 1 of 13 PageID #: 2741
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 16-290-MN
`
`JURY TRIAL DEMANDED
`
`)))))))))
`
`GODO KAISHA IP BRIDGE 1,
`
`Plaintiff,
`
`v.
`
`OMNIVISION TECHNOLOGIES, INC.,
`
`Defendant.
`
`OMNIVISION TECHNOLOGIES’ RESPONSE TO
`IP BRIDGE’S MOTION TO AMEND SCHEDULING ORDER
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`sobyrne@potteranderson.com
`
`Attorneys for Defendant OmniVision
`Technologies, Inc.
`
`OF COUNSEL:
`
`James C. Yoon
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Tel: (650) 493-9300
`
`Edward G. Poplawski
`Erik J. Carlson
`Lisa D. Zang
`WILSON SONSINI GOODRICH & ROSATI
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Tel: (323) 210-2901
`
`Jose C. Villarreal
`Henry Pan
`Diyang Liu
`WILSON SONSINI GOODRICH & ROSATI
`900 S. Capital of Texas Highway
`Las Cimas IV, 5th Floor
`Austin, TX 78746
`Tel: (512) 338-5400
`
`Dated: October 29, 2018
`5985631 / 43303
`
`

`

`Case 1:16-cv-00290-MN Document 113 Filed 10/29/18 Page 2 of 13 PageID #: 2742
`
`TABLE OF CONTENTS
`
`INTRODUCTION ...............................................................................................................1
`
`LEGAL STANDARD ..........................................................................................................1
`
`III.
`
`IP BRIDGE FAILED TO DILIGENTLY PURSUE FACT DISCOVERY AND
`LITIGATE THIS CASE ......................................................................................................2
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`IP Bridge Had Ample Time to Prepare for and Seek Discovery in This Case
`but Chose to Litigate Other Cases Instead ...............................................................2
`
`IP Bridge Has Failed to Show Diligence in Prosecuting This Case ........................3
`
`IP Bridge’s Proposed Schedule is Unworkable .......................................................5
`
`The Court Should Adopt OmniVision’s More Reasonable Proposed
`Modification to the Case Schedule ..........................................................................6
`
`IP Bridge Had Never Disputed the Use of Representative Products Until
`Seeking This Motion To Amend and OmniVision Has Diligently
`Supplemented Its Interrogatory Responses ..............................................................7
`
`CONCLUSION ....................................................................................................................9
`
`-i-
`
`

`

`Case 1:16-cv-00290-MN Document 113 Filed 10/29/18 Page 3 of 13 PageID #: 2743
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Dow Chemical Canada Inc. v. HRD Corp.,
`287 F.R.D. 268 (D. Del. 2012) ............................................................................................2
`
`Macqueen v. Union Carbide Corp.,
`2015 WL 167674 (D. Del. Jan. 8, 2015) ..........................................................................2, 5
`
`RULES
`
`Fed. R. Civ. P. 16(b)(4)................................................................................................................1, 2
`
`Fed. R. Civ. P. 33(d) ........................................................................................................................8
`
`-ii-
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`

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`Case 1:16-cv-00290-MN Document 113 Filed 10/29/18 Page 4 of 13 PageID #: 2744
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`INTRODUCTION
`
`Defendant OmniVision Technologies, Inc. (“OmniVision”) hereby files its response to
`
`Plaintiff Godo Kaisha IP Bridge 1’s (“IP Bridge’s”) Motion to Amend the Scheduling Order. IP
`
`Bridge has had ample opportunity to prosecute its case under the Court’s current scheduling order
`
`and its requested seven-month extension is not warranted. Discovery has been open for at least a
`
`year and IP Bridge has only now, at the end of fact discovery, chosen to seek an extension based
`
`on an incorrect description of the discovery that has occurred to date. OmniVision has diligently
`
`complied with its discovery obligations; it produced documents by the deadline for document
`
`production on October 8, 2018 and has provided fulsome answers to IP Bridge’s discovery
`
`requests. IP Bridge on the other hand, has made the strategic decision to prioritize litigating another
`
`case between the parties that is currently pending in the Northern District of California as Case no.
`
`17-cv-00778-BLF while failing to diligently prosecute the case in this Court. IP Bridge did not
`
`even serve its first set of documents requests until September 6, 2018—almost 11 months after the
`
`scheduling order was entered in this case and close to the end of discovery. This lack of diligence
`
`is fatal to IP Bridge’s motion as its problem is of its own making. To the extent any legitimate
`
`concern with the current schedule exists, OmniVision proposes that it be addressed with a six-
`
`week discovery extension limited to depositions and in line with previous schedule modifications.
`
`This extension would provide sufficient time for the parties to finish taking depositions on their
`
`way to an orderly close of fact discovery. IP Bridge shouldn’t be rewarded with a seven-month
`
`extension to cure its lack of diligence.
`
`LEGAL STANDARD
`
`A party seeking to modify a Scheduling Order must show “good cause” for the change.
`
`Fed. R. Civ. P. 16(b)(4). To establish good cause, IP Bridge must show that “despite its own
`
`

`

`Case 1:16-cv-00290-MN Document 113 Filed 10/29/18 Page 5 of 13 PageID #: 2745
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`diligent efforts, scheduling deadlines cannot be met.” Macqueen v. Union Carbide 2015 WL
`
`167674, at *3 (D. Del. Jan. 8, 2015) (internal citations omitted) (emphasis added). In deciding
`
`whether to modify a scheduling order, the Court may consider any prejudice to the party opposing
`
`the modification. Dow Chemical Canada Inc. v. HRD Corp., 287 F.R.D. 268 (D. Del 2012)
`
`(citation omitted). However, the good cause standard under Rule 16(b) hinges on the “diligence
`
`of the movant, and not on prejudice to the non-moving party.” Macqueen v. Union Carbide 2015
`
`WL 167674, at *3. If this Court finds that IP Bridge was not diligent, then this inquiry should end.
`
`Id.
`
`IP BRIDGE FAILED TO DILIGENTLY PURSUE FACT DISCOVERY AND
`LITIGATE THIS CASE
`
`A.
`
`IP Bridge Had Ample Time to Prepare for and Seek Discovery in This Case
`but Chose to Litigate Other Cases Instead
`
`IP Bridge filed this case over two and a half years ago, on April 22, 2016. D.I. 1. The
`
`Court entered a scheduling order on October 19, 2017. D.I. 37. The deadline to complete document
`
`production was August 28, 2018 and the close of fact discovery was November 6, 2018. On June
`
`22, 2018, the parties filed a stipulation extending the original document production deadline from
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`August 28, 2018 to October 8, 2018 to accommodate IP Bridge’s request “due to conflicts of
`
`counsel for Plaintiff Godo Kaisha IP Bridge 1 in other matters, and due to its expert’s limited
`
`availability under the current schedule.” D.I. 72. Notwithstanding the extension, IP Bridge waited
`
`until September 6, 2018 to serve its first set of requests for production. Subsequently, IP Bridge
`
`served five additional sets of requests for production totaling 97 RFP’s, the latest set being served
`
`on October 5, 2018.
`
`IP Bridge’s representation concerning OmniVision’s document production is incorrect. IP
`
`Bridge’s argument that OmniVision “had only produced 174 documents” when deposition
`
`discovery opened (D.I. 106 at 5) is based on the original deadline for document production. By
`
`2
`
`

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`Case 1:16-cv-00290-MN Document 113 Filed 10/29/18 Page 6 of 13 PageID #: 2746
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`the amended deadline of October 8, 2018, OmniVision had produced more than 1724 documents
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`totaling more than 43,000 pages. D.I. 107 ¶ 7.
`
`IP Bridge failed to pursue that discovery in a timely manner under the current schedule,
`
`and should not be permitted to receive another extension so it can burden OmniVision with
`
`additional discovery. It appears IP Bridge made a strategic decision not to diligently pursue
`
`discovery in this case, instead focusing on the Northern District of California case between the
`
`same parties. Now IP Bridge attempts to concoct discovery disputes at the 11th hour to slow this
`
`case down perhaps with the hope that the trial date can eventually be pushed back and the Northern
`
`District of California case can go to trial first.
`
`B.
`
`IP Bridge Has Failed to Show Diligence in Prosecuting This Case
`
`The burden lies on IP Bridge to prove its diligence. The facts, supported by the docket,
`
`demonstrate that the schedule was repeatedly amended at IP Bridge’s request, and IP Bridge only
`
`began serving RFP’s in September, 11 months after the schedule was entered. Plaintiff does not
`
`provide any explanation in its motion regarding its diligence in seeking discovery in this case.
`
`Instead, IP Bridge bases its showing of good cause entirely on incorrect assertions about the
`
`discovery that has occurred to date. D.I. 106 at 7-8. Thus, IP Bridge’s motion should be denied
`
`on its failure of proof.
`
`IP Bridge served its first set of requests for production on September 6, 2018. D.I. 82. IP
`
`Bridge’s subsequent requests for production served on September 10th, September 11th,
`
`September 19th, September 21st, and October 5th, all set deadlines for responding to them after
`
`the completion of document production, and the last set was served on almost the last possible day
`
`in view of the close of fact discovery. D.I. 86, 87, 89, 90. This barrage of requests for production
`
`at the end of discovery shows IP Bridge’s lack of diligence in prosecuting this case, and reflects a
`
`3
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`

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`Case 1:16-cv-00290-MN Document 113 Filed 10/29/18 Page 7 of 13 PageID #: 2747
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`troublesome litigation tactic to burden OmniVision as it drafted its Markman briefing and prepared
`
`for the Markman hearing. Furthermore, the documents sought in IP Bridge’s requests for
`
`production were not dependent on any information that IP Bridge alleges were recently produced
`
`by OminVision. Every request in IP Bridge’s first, second, and third sets of requests for production
`
`asks for documents in other cases to which OmniVision is a named party, involving completely
`
`different patents to those that are asserted in this case. E.g. D.I. 107 at Ex. 3. IP Bridge has failed
`
`to explain the relevance of these requested documents to this case. See Declaration of Erik J.
`
`Carlson in Support of OmniVision Technologies’ Response to IP Bridge’s Motion to Amend
`
`Scheduling Order filed concurrently herewith (“Carlson Decl.”) ¶ 6.
`
`Concurrent with these last-minute requests for production were a second set of
`
`interrogatories served on September 26, 2018, that again could have been served earlier in this
`
`case and in fact reference IP Bridge’s own infringement contentions that were served in January
`
`and March of 2018. D.I. 51; Carlson Decl. ¶ 2. IP Bridge also served two deposition notices in late
`
`September 2018 for depositions of two OmniVision employees. Carlson Decl. ¶¶ 3, 4. OmniVision
`
`diligently complied and made the two employees available for deposition on the dates in IP
`
`Bridge’s amended notices: one on October 10, 2018 and the other on October 17, 2018. D.I. 97,
`
`98.
`
`OmniVision, on the other hand, has diligently pursued its own discovery in this case by
`
`serving its first set of requests for production and interrogatories back on January 26, 2018.
`
`OmniVision continues to work to address some outstanding issues regarding IP Bridge’s responses
`
`and production regarding this discovery. Under these contrasting approaches to litigating that
`
`case, OmniVision believes that a seven-month extension of the schedule is extreme and
`
`unwarranted.
`
`4
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`

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`Case 1:16-cv-00290-MN Document 113 Filed 10/29/18 Page 8 of 13 PageID #: 2748
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`In MacQueen, the Court denied a motion to extend fact discovery by six months because
`
`it was plaintiff’s “lack of diligence —not good cause—that has given rise to the extension sought”
`
`as evidenced by “Plaintiff’s failure to timely begin discovery” and the plaintiff propounding its
`
`first set of discovery requests nearly 11 months after entering the scheduling order. MacQueen,
`
`2015 WL 167674 at *8. Here, the Court should similarly deny IP Bridge’s motion for extension
`
`because it served its first set of requests for production (served on September 6, 2018) nearly 11
`
`months after this Court entered its scheduling order on October 19, 2017. Also analogous, in
`
`MacQueen the Court denied the schedule extension because “Plaintiff could have raised her claim
`
`that [defendant’s] failure to respond to discovery requests should impact the case schedule” at any
`
`point “[b]ut during that time, Plaintiff did nothing.” Id. at *9 (“Plaintiff's lack of diligence is
`
`demonstrated not only in her significant delay in propounding discovery in the first instance, but
`
`also by her delay in failing to come forward earlier with any request for an extension.”). Similarly,
`
`IP Bridge could have raised its issue with the case schedule much earlier in this case but chose to
`
`wait until the close of fact discovery to move to amend the schedule. Indeed, IP Bridge had the
`
`opportunity to address the deadlines after claim construction when OmniVision agreed to
`
`accommodate IP Bridge’s request to extend the Markman briefing schedule; however, IP Bridge
`
`chose not to do so. Furthermore, there is no “good cause” for extending discovery in this case as
`
`OmniVision has diligently responded to IP Bridge’s discovery requests throughout this case.
`
`C.
`
`IP Bridge’s Proposed Schedule is Unworkable
`
`IP Bridge’s request for a seven-month extension is unworkable. IP Bridge’s proposal is
`
`also problematic because it compresses expert discovery dates by having reply expert reports,
`
`completion of expert depositions, and dispositive motions all due on the same day. There would
`
`be no opportunity to depose an expert based on the opinions in the expert’s reply report because
`
`5
`
`

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`Case 1:16-cv-00290-MN Document 113 Filed 10/29/18 Page 9 of 13 PageID #: 2749
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`reply expert reports are due on the last day of expert discovery. See D.I. 37 at ¶2(h). Additionally,
`
`opening briefs on dispositive motions would be incomplete. The opening briefs could not address
`
`the other side’s reply expert reports because those expert reports would be due on the same day
`
`that opening briefs on dispositive motions are due.
`
`On a meet and confer regarding this issue, OmniVision explained these flaws to IP Bridge
`
`and proposed a more reasonable modification to the schedule similar to the one OmniVision
`
`proposes below. Carlson Decl. ¶ 7. The proposal involved a limited six-week extension, which
`
`would allow completion of depositions but would not allow the parties to serve additional
`
`discovery requests on each-other. Carlson Decl. ¶ 7. Additionally, OmniVision would not withhold
`
`documents based on its objection to IP Bridge’s document requests that were served less than thirty
`
`days before the deadline for document production. Carlson Decl. ¶ 7. However, IP Bridge refused
`
`to entertain this proposal or compromise in any way. Further, when OmniVision asked for the
`
`basis for such a drastic change to the schedule, IP Bridge’s response was simply that “the
`
`Scheduling Order is unworkable.” Carlson Decl. ¶ 5.
`
`D.
`
`The Court Should Adopt OmniVision’s More Reasonable Proposed
`Modification to the Case Schedule
`
`The Court set a Markman hearing for October 31, 2018 after the parties stipulated to a
`
`seven week extension based on Plaintiff’s request. D.I. 72; 80. The original date for the Markman
`
`hearing in this case was September 5, 2018, so it is now set to occur eight weeks later that originally
`
`set. D.I. 37 ¶ 9.vii. Based on the prior changes to the schedule, OmniVision proposes an extension
`
`of around six weeks, amending the fact discovery cutoff only to allow time for finalizing deposition
`
`discovery and moving expert report deadlines as set forth below.
`
`6
`
`

`

`Case 1:16-cv-00290-MN Document 113 Filed 10/29/18 Page 10 of 13 PageID #: 2750
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`OmniVision Proposal Event
`Dec. 21, 2018
`Fact discovery cutoff extended to
`allow completion of depositions — no
`additional requests may be served on a
`party
`Opening expert reports due
`Rebuttal expert reports due
`Reply expert reports due
`Deadline to complete expert
`depositions
`Case dispositive and Daubert motions
`deadline
`Pretrial conference
`
`No change
`
`No change
`
`Jan. 18, 2019
`Mar. 4, 2019
`April 5, 2019
`No change
`
`Current Date
`Nov. 6, 2018
`
`Dec. 10, 2018
`Jan. 25, 2019
`Feb. 15, 2019
`Apr. 24, 2019
`
`May 8, 2019
`
`Oct. 15, 2019 at 10 am
`in Courtroom 4A
`Nov. 4, 2019
`
`No change
`
`Trial
`
`The reasonable six-week extension that OmniVision proposes addresses IP Bridge’s
`
`originally-stated reasons for seeking a schedule extension—the timing of expert reports in relation
`
`to a claim construction order. Carlson Decl. ¶ 5. Based on the Court’s form scheduling order, the
`
`parties should anticipate a claim construction order within 60 days of the Markman hearing, i.e., a
`
`claim construction order by December 30, 2018. OmniVision’s proposal would set the first expert
`
`report deadline on January 18, 2019, which should provide the parties enough time to prepare
`
`opening expert reports after receiving the Court’s order on claim construction.
`
`E.
`
`IP Bridge Had Never Disputed the Use of Representative Products Until
`Seeking This Motion To Amend and OmniVision Has Diligently
`Supplemented Its Interrogatory Responses
`
`IP Bridge seeks to improperly shift the burden to OmniVision by claiming deficiencies in
`
`OmniVision’s discovery responses. IP Bridge’s complaint that OmniVision has not produced core
`
`technical document information for all of the products that IP Bridge has accused was pressed for
`
`the first time by IP Bridge on September 25, 2018, despite the fact that OmniVision explicitly
`
`indicated its intent to rely upon representative products over nine months ago when it produced
`
`7
`
`

`

`Case 1:16-cv-00290-MN Document 113 Filed 10/29/18 Page 11 of 13 PageID #: 2751
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`core technical documents for eight representative products on December 4, 2017. Carlson Decl. ¶
`
`8. OmniVision added four additional representative products and produced core technical
`
`documents for them on August 9, 2018. Carlson Decl. ¶ 9. IP Bridge did not request for production
`
`of core technical documents for all accused products in response to either letter but instead waited
`
`until late in discovery to do so. Even now, IP Bridge has not presented any argument, let alone any
`
`evidence, that the use of representative products in this case is unsatisfactory. In fact, IP Bridge’s
`
`motion is completely silent about OmniVision’s use of representative products for its core
`
`technical document production. The use of representative products in this case is completely
`
`appropriate given that IP Bridge has accused over a hundred products of infringement in this case.
`
`Regarding IP Bridge’s complaint about OmniVision’s responses to its interrogatories,
`
`OmniVision diligently sought to obtain the information necessary to provide a response.
`
`OmniVision responded to the interrogatories in a timely manner on March 5, 2018 and
`
`supplemented these responses on April 20, 2018, and October 25, 2018. D.I. 57, 61, 111.
`
`Compiling the information necessary to respond to Interrogatory No. 1 was very burdensome given
`
`the breadth of products that IP Bridge accused, and OmniVision was diligent in compiling the
`
`information and making sure its response was as accurate as possible.
`
`IP Bridge did not appear to take any issue with the timing of OmniVision responses
`
`because, after the filing of the Joint Interim Status Report on April 6, 2018 (D.I. 60), IP Bridge did
`
`not inquire about the response to this interrogatory until a few weeks before filing its motion. Since
`
`then, OmniVision has supplemented its response to Interrogatory Nos. 1 and 7, including by
`
`identifying documents under Federal Rule of Civil Procedure 33(d) that have been available to IP
`
`Bridge since October 8, 2018 when OmniVision produced the documents by the deadline for
`
`document production. D.I. 111; Carlson Decl. ¶ 10.
`
`8
`
`

`

`Case 1:16-cv-00290-MN Document 113 Filed 10/29/18 Page 12 of 13 PageID #: 2752
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`Furthermore, for all of its complaints regarding OmniVision’s discovery responses, IP
`
`Bridge has reviewed the source code made available for inspection in this case only once, in March
`
`2018, over three months after it had been made available for inspection. IP Bridge has yet to review
`
`any of the supplemental core technical source code in this case.
`
`CONCLUSION
`
`IP Bridge failed to diligently litigate this case based on its strategic decision to prioritize
`
`litigating other cases. Therefore the Court should deny IP Bridge’s requested relief. As an
`
`alternative, it should adopt OmniVision’s more reasonable compromise to extend the case
`
`schedule.
`
`9
`
`

`

`Case 1:16-cv-00290-MN Document 113 Filed 10/29/18 Page 13 of 13 PageID #: 2753
`
`Respectfully submitted,
`POTTER ANDERSON & CORROON LLP
`
`By: /s/ David E. Moore
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`sobyrne@potteranderson.com
`
`Attorneys for Defendant OmniVision
`Technologies, Inc.
`
`OF COUNSEL:
`
`James C. Yoon
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Tel: (650) 493-9300
`
`Edward G. Poplawski
`Erik J. Carlson
`Lisa D. Zang
`WILSON SONSINI GOODRICH & ROSATI
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Tel: (323) 210-2901
`
`Jose C. Villarreal
`Henry Pan
`Diyang Liu
`WILSON SONSINI GOODRICH & ROSATI
`900 S. Capital of Texas Highway
`Las Cimas IV, 5th Floor
`Austin, TX 78746
`Tel: (512) 338-5400
`
`Dated: October 29, 2018
`5985631 / 43303
`
`10
`
`