Case 8:18-cv-01580-JVS-ADS Document 95 Filed 07/01/19 Page 1 of 7 Page ID #:3116
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`Jonathan D. Baker (SBN 196062)
`jdbaker@dickinsonwright.com
`Craig Y. Allison (SBN 161175)
`callison@dickinsonwright.com
`DICKINSON WRIGHT RLLP
`800 W. California Avenue, Suite 110
`Sunnyvale, CA 94086
`Telephone: (408) 701-6200
`Facsimile: (844) 670-6009
`Steven R. Daniels (SBN 235398)
`sdaniels@dickinsonwright.com
`Michael D. Saunders (SBN 259692)
`msaunders@dickinsonwright.com
`DICKINSON WRIGHT PLLC
`607 W. 3rd Street, Suite 2500
`Austin, Texas 78701
`Telephone: (512) 770-4200
`Facsimile: (844) 670-6009
`Attorneys for Defendant Roku, Inc.
`Additional counsel on signature page
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`UNIVERSAL ELECTRONICS INC.,
`Case No. 8:18-cv-01580-JVS-ADS
`a Delaware Company,
`Plaintiff,
`
`v.
`ROKU, INC.,
`a Delaware Company,
`Defendant.
`
`
`
`ROKU’S REPLY IN SUPPORT OF
`ITS MOTION TO SUPPLEMENT
`INVALIDITY CONTENTIONS
`Judge: Hon. James V. Selna
`Date:
`July 15, 2019
`Time: 1:30 p.m.
`Courtroom: 10C
`
`
`ROKU’S REPLY IN SUPPORT OF ITS MOTION
`TO SUPPLEMENT INVALIDITY CONTENTIONS
`
`
`
`CASE NO. 8:18-CV-01580-JVS-ADS
`
`Universal Electronics Inc., Exhibit 2007
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

`

`Case 8:18-cv-01580-JVS-ADS Document 95 Filed 07/01/19 Page 2 of 7 Page ID #:3117
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`I.
`
`INTRODUCTION
`Earlier this year, Roku conducted an exhaustive search for prior art, spending
`hundreds of hours of attorney and technical patent searcher time, and culminating in
`hundreds of pages of charts attached to its initial invalidity contentions, which were
`served on February 14, 2019. Approximately two months later, before Markman
`briefing commenced, and months before the close of discovery, Roku discovered
`four references related to those previously disclosed in its initial invalidity
`contentions. Within two weeks of this discovery, Roku identified the references to
`UEI and provided complete supplemental contentions for the four references.
`Patent Local Rule 3-6 provides several specific examples of good cause to
`allow supplementation of contentions, one of which is “recent discovery of material,
`prior art despite earlier diligent search.” The undisputed facts show that Roku meets
`this good cause standard, and UEI’s opposition brief fails to successfully challenge
`those facts or to establish undue prejudice. Roku’s motion to supplement should be
`granted.
`II. DISCUSSION.
`A. Roku Was Diligent in Supplementing Its Invalidity Contentions
`Roku’s opening brief shows that Roku was diligent in bringing the
`supplemental prior art references to UEI’s attention. Some (but not all) courts break
`the diligence inquiry into two parts—diligence in supplementing invalidity
`contentions after finding the prior art, and diligence in discovering the basis for the
`supplemental contentions. See, e.g., West v. Jewelry Innovations, Inc., C 07-1812
`JF (HRL), 2008 WL 4532558, at *2 (N.D. Cal. Oct. 8, 2008).
`UEI does not dispute that Roku’s supplementation was diligent under the first
`prong—Roku provided notice of the supplemental prior art within three days of
`finding it, and provided complete invalidity contentions, including invalidity claim
`charts, within 10 days after that. UEI’s quarrel is solely with the second prong. But
`
`ROKU’S REPLY IN SUPPORT OF ITS MOTION
`TO SUPPLEMENT INVALIDITY CONTENTIONS
`
`1
`
`CASE NO. 8:18-CV-01580-JVS-ADS
`
`Universal Electronics Inc., Exhibit 2007
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

`

`Case 8:18-cv-01580-JVS-ADS Document 95 Filed 07/01/19 Page 3 of 7 Page ID #:3118
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`none of UEI’s cited cases stand for the proposition that supplementing infringement
`contentions early in discovery, a little more than two months after serving initial
`contentions, before claim construction briefing, and months before the close of
`discovery, is anything other than diligent.
`UEI’s cited cases regarding diligence are either factually distinct because of
`the lateness of the supplementation, or not on point legally. See Symantec Corp. v.
`Acronis Corp., Case No. 11-5310 EMC (JSC), 2013 WL 5368053, *3 (N.D. Cal.,
`Sept. 25, 2013) (denying defendant’s motion to amend invalidity contentions which
`were filed on the day of the close of fact discovery); O2 Micro Int'l Ltd. v. Monolithic
`Power Sys., Inc., 467 F.3d 1355, 1367-68 (Fed. Cir. 2006) (affirming lower court’s
`denial of defendant’s motion, made after the close of fact discovery, to amend
`invalidity contentions and to modify schedule to allow additional discovery); West
`v. Jewelry Innovations, Inc., C 07-1812 JF (HRL), 2008 WL 4532558, at *3 (N.D.
`Cal. Oct. 8, 2008) (denying defendant’s motion to amend invalidity contentions
`made after claim construction hearing and when hearing on motion was within 40
`days of close of fact discovery); Takeda Pharm. Co. v. TWI Pharms., Inc., Case No.
`13-cv-012420-LHK, 2015 WL 1227817, at *5 (N.D. Cal. Mar. 17, 2015) (granting
`motion to strike defendant’s amended expert report, which included new theories
`not in defendant’s invalidity contentions); Integrated Circuit Sys., Inc. v. Realtek
`Semiconductor Co., 308 F. Supp. 2d 1106, 1107 (N.D. Cal. 2004) (denying
`defendant’s motion, made on the eve of the claim construction hearing, to compel
`plaintiff to supplement initial disclosures to add new products plaintiff was now
`accusing of infringement and stating that plaintiff must move to amend infringement
`contentions if it wished to include the new products); Finjan, Inc. v. Blue Coat Sys.,
`Case No. 5:13-cv-03999-BLF, 2014 WL 5305906, at *1 (N.D. Cal. Oct. 16, 2014)
`(denying plaintiff’s motion to amend infringement contentions filed after claim
`construction briefing and about a year after complaint filed) (see also Allison Reply
`
`ROKU’S REPLY IN SUPPORT OF ITS MOTION
`TO SUPPLEMENT INVALIDITY CONTENTIONS
`
`2
`
`CASE NO. 8:18-CV-01580-JVS-ADS
`
`Universal Electronics Inc., Exhibit 2007
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

`

`Case 8:18-cv-01580-JVS-ADS Document 95 Filed 07/01/19 Page 4 of 7 Page ID #:3119
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`Decl. Ex. 10 (selected pages of the Finjan docket with relevant filings marked)).
`The case closest to the facts of this motion is this Court’s decision in Glaukos
`Corp. v. Ivantis, Inc., No. SACV 13-620 JVS (C.D. Cal. May 20, 2019) (Selna, J.)
`(see Allison Reply Decl. Ex. 10). In that case, this Court allowed supplementation
`of invalidity contentions early in discovery and before claim construction briefing.
`As in this case, in Glaukos, the defendant’s “amendments are limited in substantive
`scope, mostly serving to clarify and add detail to [defendant’s] existing theories of
`invalidity.” Glaukos, at 2. Here, Roku is providing prior art having additional detail
`about the already disclosed prior art products, e.g., Remote Commander,
`PebblesDraw, SlideShow Commander, and Shortcutter for the Janik patents and the
`TC 1000 product for the ’532 patent.
`Other cases cited in Roku’s opening brief with similar facts include this
`Court’s decision in Dobeck v. Cobra Eng’g, Inc., No. SACV 16-1570 JVS, 2017
`WL 8186769 (C.D. Cal. Apr. 12, 2017) (Selna, J.) and Apple Inc. v. Samsung Elecs.
`Co., No. CV 12-00630, 2012 WL 5632618, at *5 (N.D. Cal. Nov. 15, 2012). In both
`cases, the courts allowed supplementation of contentions brought early in the case.
`In its opposition, UEI did not even attempt to distinguish the Glaukos, Dobeck, or
`Apple cases.
`Roku had forty-five days between the identification of the asserted claims and
`the deadline to search for relevant prior art and provide invalidity contentions and
`claim charts on 108 asserted claims. For the Myers supplemental references, UEI
`notes that the references were included on a list of publications on a website—and
`acknowledged that this list included over 80 publications. For the ’532 patent
`supplemental reference, UEI makes much of the fact that the ’374 patent was a cited
`reference to the ’532 patent. Indeed, it was—along with 92 other references listed
`on the patent. And the ’374 patent was indeed discussed in reexamination
`proceedings—of two totally unrelated patents, the Janik ’504 and ’505 patents,
`
`ROKU’S REPLY IN SUPPORT OF ITS MOTION
`TO SUPPLEMENT INVALIDITY CONTENTIONS
`
`3
`
`CASE NO. 8:18-CV-01580-JVS-ADS
`
`Universal Electronics Inc., Exhibit 2007
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

`

`Case 8:18-cv-01580-JVS-ADS Document 95 Filed 07/01/19 Page 5 of 7 Page ID #:3120
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`which have different inventors and cover unrelated technology. UEI falls far short
`of overcoming Roku’s showing of diligence, both on the law and on the facts.
`B. UEI Has Not Established Undue Prejudice
`UEI’s sole claim to prejudice is that it chose its narrowed set of claims before
`it saw Roku’s supplementation (but three weeks after UEI received Roku’s massive
`initial invalidity contentions). But UEI does not provide any specifics regarding the
`alleged prejudice. For example, UEI does not point out any alternative claims it
`would have chosen, or any it would have dropped, or any other action it would have
`taken had it had the supplemental contentions earlier. UEI simply states in a
`conclusory fashion that it will be prejudiced by the supplementation. Such
`conclusory allegations fall far short of demonstrating undue prejudice sufficient to
`justify denying Roku’s motion.
`As for the Janik patents, UEI does not dispute that the prior art products
`discussed in the Myers prior art reference in the initial invalidity contentions
`(Remote Commander, Pebblesdraw, SlideShow Commander, and Shortcutter) are
`the same prior art products discussed in the supplemental Myers references. UEI
`instead refers (sometimes incorrectly) to a handful of differences in the supplemental
`invalidity charts as compared to the initial charts. First, such differences alone,
`without being tied to some alleged harm to UEI, do not establish prejudice. But what
`is notable is how few such examples UEI can find, demonstrating how the
`supplemental contentions add only additional details to the products disclosed in the
`initial Myers and TC 1000 references. For example, for the ’309 and ’504 patents,
`UEI points to one difference between initial and supplemental charts for each patent.
`For the ’505 patent, UEI alleges, incorrectly, that claim 10 in the initial invalidity
`chart for the Myers reference reads “NA.” It does not. In fact, it gives a lengthy
`citation from page 37 of the Myers prior art reference. See Allison Reply Decl. Ex.
`11, at 10. UEI is correct in stating that the supplemental invalidity contentions for
`
`ROKU’S REPLY IN SUPPORT OF ITS MOTION
`TO SUPPLEMENT INVALIDITY CONTENTIONS
`
`4
`
`CASE NO. 8:18-CV-01580-JVS-ADS
`
`Universal Electronics Inc., Exhibit 2007
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

`

`Case 8:18-cv-01580-JVS-ADS Document 95 Filed 07/01/19 Page 6 of 7 Page ID #:3121
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`claim 10 of the ’505 patent incorporate by reference the discussion under claim 5.
`That was done because claim 10 (involving cursor control) had already been
`adequately described previously under the discussion of claim 5, and Roku saw no
`need to repeat the discussion.
`There is also no prejudice with respect to the ’374 patent. Despite what UEI
`says in its opposition, the ’374 patent does not focus on or disclose new features. For
`example, UEI states that the term “activity modes” does not appear in the initial
`TC 1000 invalidity chart. But the TC 1000 invalidity chart expressly mentions
`“activities” multiple times for multiple limitations, including the “Watch TV”
`activity and the functionality for “Creating New Activities.” See Allison Reply Decl.
`Ex. 12, at 1, 2. Moreover, while the TC 1000 chart did not expressly use the term
`“macro,” the prior art chart did provide an in-depth discussion of the underlying
`features of a macro. See Allison Reply Decl. Ex. 12, at 1. (“For example, when you
`select the activity Watch TV, the touchscreen displays an activity screen with
`buttons to display your TV channels, and to turn power on and off for all devices
`assigned to the activity.”). Finally, other portions of the TC 1000 prior art expressly
`refer to macros, including the section, “Working with macros.” See Allison Reply
`Decl. Ex. 13, at 19. Therefore, any generalized claim of prejudice based upon
`allegedly new art that “UEI could not have reviewed for informing its claim
`selections” is unfounded.
`UEI has simply not established that it will be unduly prejudiced by Roku’s
`supplementation, and Roku’s motion to supplement its invalidity contentions should
`be granted on that basis alone. See, e.g., Apple Inc. v. Samsung Elecs. Co., No. CV
`12-00630, 2012 WL 5632618, at *5-6 (N.D. Cal. Nov. 15, 2012) (motion to
`supplement contentions granted upon a showing of lack of prejudice alone).
`
`
`ROKU’S REPLY IN SUPPORT OF ITS MOTION
`TO SUPPLEMENT INVALIDITY CONTENTIONS
`
`5
`
`CASE NO. 8:18-CV-01580-JVS-ADS
`
`Universal Electronics Inc., Exhibit 2007
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

`

`Case 8:18-cv-01580-JVS-ADS Document 95 Filed 07/01/19 Page 7 of 7 Page ID #:3122
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`III. CONCLUSION.
`For the reasons set forth above, Roku respectfully requests that the Court grant
`Roku’s motion to supplement its invalidity contentions.
`Respectfully submitted,
`
`Dated: July 1, 2019
`
`
`
`
`
`/s/ Jonathan D. Baker
`Jonathan D. Baker (SBN 196062)
`Craig Y. Allison (SBN 161175)
`DICKINSON WRIGHT RLLP
`800 W. California Avenue, Ste. 110
`Sunnyvale, CA 94086
`Telephone: (408) 701-6200
`Facsimile: (844) 670-6009
`jbaker@dickinsonwright.com
`callison@dickinsonwright.com
`Steven R. Daniels (SBN 235398)
`Michael D. Saunders (SBN 259692)
`DICKINSON WRIGHT PLLC
`607 W. 3rd Street, Ste. 2500
`Austin, Texas 78701
`Telephone: (512) 770-4200
`Facsimile: (844) 670-6009
`sdaniels@dickinsonwright.com
`msaunders@dickinsonwright.com
`Steven A. Caloiaro (SBN 284410)
`DICKINSON WRIGHT PLLC
`100 West Liberty Street, Ste. 940
`Reno, NV 89501
`Telephone: (775) 343-7500
`Facsimile: (844) 670-6009
`scaloiaro@dickinsonwright.com
`Attorneys for Defendant
`Roku, Inc.
`
`ROKU’S REPLY IN SUPPORT OF ITS MOTION
`TO SUPPLEMENT INVALIDITY CONTENTIONS
`
`6
`
`CASE NO. 8:18-CV-01580-JVS-ADS
`
`Universal Electronics Inc., Exhibit 2007
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`