Case 5:19-cv-00036-RWS Document 148 Filed 11/29/19 Page 1 of 10 PageID #: 6129
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`Plaintiff,
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`Defendant.
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`MAXELL, LTD.’s OPPOSITION TO APPLE’S MOTION FOR LEAVE TO
`SUPPLEMENT INVALIDITY CONTENTIONS
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`Case 5:19-cv-00036-RWS Document 148 Filed 11/29/19 Page 2 of 10 PageID #: 6130
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`On July 10, 2019, Maxell produced a document from the Digital Camera Museum website
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`regarding old models of digital cameras, including the Casio QV-8000SX (“Casio Camera”). Decl.
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`of Tiffany Miller (“Miller Decl.”) at ¶¶ 2-4 (showing excerpt of produced Digital Camera Museum
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`screenshots). Four months later, Apple asserts good cause exists to supplement its invalidity
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`contentions because someone discovered the same website on October 16, 2019. Mot at 3, Gibson
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`Decl. at ¶ 3. Good cause does not exist. Apple cannot claim it has been diligent, and the website
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`was difficult to locate, when it was produced by Maxell months earlier. Apple’s motion
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`demonstrates that Apple has treated the Patent Rule deadlines the same way it treated the discovery
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`deadlines in this case—it looks at them as a starting point for compliance. Apple has serially
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`avoided its obligations before this Court, likely in hope that the case would be transferred and it
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`would be given a second chance to prepare its case. Such games should not be rewarded and Apple
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`should not be permitted to untimely add readily-discoverable products to the case.
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`I.
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`LEGAL STANDARD
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`Under the Local Rules, leave to amend invalidity contentions “may be made only by order
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`of the Court, which shall be entered only upon a showing of good cause.” P.R. 3-6(b). Good cause
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`“requires a showing of diligence.” O2 micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d
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`1355, 1366 (Fed. Cir. 2006). For this analysis, the Court weighs multiple factors, which include
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`(1) the length of and reason for the delay, including whether the moving party has been diligent,
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`(2) the importance of the amendment, (3) the potential prejudice in allowing the amendment, and
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`4) the availability of a continuance to cure such prejudice. See e.g., Allure Energy, Inc. v. Nest
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`Labs, Inc., 84 F.Supp.3d 538, 540-41 (E.D. Tex. 2015) (quoting Computer Acceleration Corp. v.
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`Microsoft Corp., 481 F.Supp.2d 620, 625 (E.D. Tex. 2007)); Arbitron, Inc. v. Int’l Demographics
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`Inc., 2008 WL 4755761, at *1 (E.D. Tex. Oct. 29, 2008) (citing S & W Enters., L.L.C. v. Southtrust
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`Bank of Ala., NA, 315 F.3d 533, 535 (5th Cir. 2003)).
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`Case 5:19-cv-00036-RWS Document 148 Filed 11/29/19 Page 3 of 10 PageID #: 6131
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`II.
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`ARGUMENT
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`Apple’s motion is nothing more than an effort to correct for its own lack of diligence.
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`Maxell produced the website in question over a month before Apple’s invalidity contentions were
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`due. If Apple had simply reviewed the production—as any diligent defendant would—and
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`followed up on the information therein, it could have easily met its deadline. A party must show
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`good cause to supplement its contentions. Given the foregoing, Apple cannot.
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`A.
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`Apple’s explanation for its delay in identifying the Casio Camera is
`misleading.
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`The first factor in evaluating a defendant’s motion for leave to amend invalidity
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`contentions—the length of and reason for the delay, including whether the moving party has been
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`diligent—weighs heavily against Apple.
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`Apple’s statement that it has been diligent in developing its invalidity defenses is belied by
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`the facts. Apple asserts that it, a law firm working on its behalf, and a prior art search firm all
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`performed prior art searches prior to the deadline for Apple’s invalidity contentions. Mot. at 2.
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`Yet, according to Apple, Apple was not aware of—and apparently could not discover—the Casio
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`Camera until Erise IP “discovered a German website published by an individual camera enthusiast
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`that contained information relating to old models of digital cameras.” Mot. at 3. That website was
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`http://digitalkameramuseum.de. Mot. at Gibson Decl. ¶ 3. Screenshots of this exact website,
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`however, had been produced by Maxell on July 10, 2019. Miller Decl. at ¶¶ 2-3. Maxell provides
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`in the accompanying Declaration screenshots from http://digitalkameramuseum.de taken on
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`November 21, 2019 and as produced by Maxell on July 10, 2019. Miller Decl. at ¶¶ 3-4 (produced
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`screenshot), ¶ 5 (screenshot taken November 21, 2019). Both specifically contain the identification
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`of the Casio QV-8000SX, which establishes conclusively that Apple had the information about
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`this alleged prior art product as early as July 10, 2019, more than a month before its Invalidity
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`Case 5:19-cv-00036-RWS Document 148 Filed 11/29/19 Page 4 of 10 PageID #: 6132
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`Contentions were first due. Id. Apple cannot rely on a website it has had in its possession for over
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`four months as a basis for adding new prior art to the case now.
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`Apple’s claims that information regarding the Casio Camera was difficult to locate—
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`setting aside the fact it was already in Apple’s possession by July 10—are similarly misleading.
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`Apple asserts that “[f]ollowing the leads from camera enthusiasts’ websites to try to locate product
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`information was time consuming because manufacturers like Casio stopped selling these products
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`nearly twenty years ago, literature and specifications were not always archived from so long
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`ago….” Mot. at 3. But in its proposed supplementation, the primary Casio Camera document on
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`which Apple relies is the product User’s Guide. See Mot. at Ex. B. Casio itself provides a copy on
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`its website, under “Manuals,” as shown below:
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`Miller Decl., at ¶¶ 6-7. All Apple had to do was check the Casio website, or run a simple Google
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`search, hardly the difficult, time consuming process Apple claims.
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`Even assuming it took several days for Apple to locate information regarding the Casio
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`Camera once identified, had Apple actually been diligent, it still would have had time to determine
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`the alleged relevance of the Camera prior to the deadline for its invalidity contentions. Specifically,
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`Apple asserts it discovered the German website on October 16 and the relevance of the camera
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`became apparent nine days later, on October 25. Mot. at 3-4. Given Maxell’s production of the
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`website on July 10, Apple should have reached its conclusion as early as July 19, a month before
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`its contentions were due on August 14. Miller Decl. at ¶ 2; D.I. 46 (DCO).
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`This Court has regularly denied requests to supplement invalidity contentions where a
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`defendant could not establish why it did not include the reference in the contentions in the first
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`instance. See, e.g., Imperium IP Holdings (Cayman), Ltd. v. Samsung Elecs. Co., No. 4:14-CV-
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`371, 2016 WL 3854700, at *2 (E.D. Tex. Mar. 28, 2016) (“The Court finds that Defendants have
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`not demonstrated diligence or shown good cause to amend. Defendants do not provide an adequate
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`explanation for why they did not include the proposed references and combinations in the original
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`invalidity contentions.”); Innovative Display Techs. LLC v. Acer Inc., No. 2:13-CV-00522-JRG,
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`2014 WL 2796555, at *1-2 (E.D. Tex. Jun. 19, 2014) (denying motion to supplement, stating in
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`part, “While Defendants have acted promptly in bringing these new arts to the attention of Plaintiff
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`and the Court, they have failed to explain why, with reasonable diligence, they could not have
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`discovered such arts prior to the deadline for filing Invalidity Contentions.”); MacroSolve, Inc. v.
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`Antenna Software, Inc., No. 6:11-CV-287-MHS-JDL, 2013 WL 3833079, at *3 (E.D. Tex. Jul. 23,
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`2013) (“Defendants were not diligent in their investigation, discovery, and presentation of prior
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`art references, and further, lack an adequate explanation for failing to present these references at
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`an earlier date. With respect to GEICO, it cannot account for its activities between the date it filed
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`its invalidity contentions on September 24, 2012, and the date it finally sought to amend the
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`Case 5:19-cv-00036-RWS Document 148 Filed 11/29/19 Page 6 of 10 PageID #: 6134
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`invalidity contentions on April 16, 2013.”); Smith & Nephew, Inc. v. Arthrex, Inc., 2007 U.S. Dist.
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`Ct. Motions 639136 (E.D. Tex. Dec. 2, 2009) (“Because an attempt to amend invalidity
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`contentions asks the Court to waive the deadline for the submission of those contentions, the
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`movant must show that it could not have included the proffered amendment at the proper time,
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`despite reasonable diligence.”) (citations omitted).
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`There is no reason that Apple should not have known about the German camera website
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`until October. It was produced directly to them in July. In view of Apple’s failure to review or
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`follow up on Maxell’s production, Apple’s claimed diligence in informing Maxell of the new prior
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`art is irrelevant. Apple provides no justifiable basis for its delay. It was not diligent and Factor 1
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`weighs strongly against granting leave to add the camera to the case at this stage.
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`B.
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`Apple has not shown the Casio Camera to be important.
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`The second factor in evaluating a defendant’s motion for leave to amend its invalidity
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`contentions—the importance of the amendment—also weighs against Apple.
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`Apple asserts that the Casio Camera is important prior art because it anticipates several
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`asserted claims of the ’493 patent and renders the remaining asserted claims obvious. Mot. at 5.
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`But the mere fact a reference may support a claim of invalidity cannot alone establish importance
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`of the reference or good cause. If that were the rule, the factor would be meaningless because a
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`party would never seek leave to add a reference it did not believe supported its position.
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`In considering this factor, the importance of the reference must be considered in view of
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`the invalidity contentions as a whole, including whether the new prior art discloses features not
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`present in the previously identified art. See, e.g., Tech Pharmacy Servs., LLC v. Alixa Rx LLC, No.
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`4:15-CV-766, 2017 WL 2833460, at *5 (E.D. Tex. Jan. 19, 2017), reconsideration denied, No.
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`4:15-CV-766, 2017 WL 1319556 (E.D. Tex. Apr. 10, 2017) (denying leave to amend invalidity
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`contentions where proposed amendment was meant to supplement details of previously disclosed
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`Case 5:19-cv-00036-RWS Document 148 Filed 11/29/19 Page 7 of 10 PageID #: 6135
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`prior art product); MacroSolve, No. 6:11-CV-287, 2013 WL 3833079, at *3 (in a discussion
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`holding that defendants had failed to prove that prior art references were important, “GEICO fails
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`to show the distinctive value of the recently discovered prior art references. In other words, GEICO
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`does not show the seven references are not cumulative in light of the other 250 prior art references
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`already asserted …”).
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`In its invalidity contentions, Apple identified 28 prior art patents and publications and 5
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`prior art systems for the ’493 Patent. Miller Decl. at ¶ 8. Apple has not argued, let alone shown,
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`that the Casio Camera discloses features that were not present in the previously asserted references.
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`Given Apple’s failure to demonstrate some unique importance of the Casio Camera, this factor too
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`weighs against granting Apple’s motion for leave.
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`C.
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`Unfair prejudice and availability of a continuance to Maxell do not support
`granting Apple’s motion.
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`Apple did not disclose the Casio Camera until after the parties had already filed the P.R.
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`4-3(a) Joint Claim Construction and Prehearing Statement. D.I. 46 (DCO). Courts have deemed
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`that the disclosure of new prior art even before this deadline were prejudicially late. See, e.g.,
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`Seven Networks, LLC v. Google LLC, No. 2:17-cv-00442-JRG, Dkt. No. 218, at *5 (E.D. Tex. July
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`6, 2018) (“Additionally, this reference was not disclosed to SEVEN until after the P.R. 4-1
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`deadline. While Defendants argue that “SEVEN had ample opportunity to review Xiao before the
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`P.R. 4-2 deadline and has not identified any claim terms or constructions relevant to this
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`reference,” the time between the P.R. 4-1 and 4-2 disclosures is a relatively short 20 days. Their
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`argument essentially ‘requir[es] SEVEN to investigate and defend against contentions that are not
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`now, and may never be, included in this case,’ and places too high a burden on a plaintiff.”).
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`Further, even if the prejudice to Maxell were deemed low or remediable by a continuance,
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`courts in this district have held that “[a] lack of prejudice [ ], supposing that there was truly no
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`Case 5:19-cv-00036-RWS Document 148 Filed 11/29/19 Page 8 of 10 PageID #: 6136
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`prejudice, is not sufficient to demonstrate good cause without more; to hold otherwise would
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`change the showing from one of good cause to one of no prejudice and absolve the movant from
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`a failure based on harm to the opposing party alone.” SEVEN Networks, LLC v. Google LLC, 2:17-
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`cv-442-JRG, Dkt. No. 198, slip copy at 2 (E.D. Tex. June 8, 2018) (citing Grudowski v. Butler
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`Paper Co., 670 F. Supp. 242, 248 (N.D. Ind. 1987) (“By itself a lack of prejudice is not sufficient
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`to sanction deviation from important established procedures.”).
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`“The Local Rules and the Patent Rules of the Eastern District of Texas are not mere
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`‘guidelines.’ Litigants and the Court both rely on the Local Rules and Patent Rules to ensure an
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`orderly litigation and the proper development of the same. This struggles to happen when one
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`side’s theory of the case is constantly shifting.” Seven Networks, No. 2:17-cv-00442-JRG, Dkt.
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`No. 218, at *4. Apple itself has touted the purpose of the importance of early disclosures in moving
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`to strike Maxell’s infringement contentions. See, e.g., D.I. 123 at 1, 6. It is surprising Apple would
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`simultaneously criticize Maxell’s thorough contentions as defeating the purpose of the local rules
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`while requesting the Court to permit Apple’s own shifting contentions. Apple cannot be left to
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`comply with the rules and deadlines at its convenience. It has already become a problem in this
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`litigation and will continue to be so should they be permitted leave to amend their invalidity
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`contentions based on the circumstances here.
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`III. CONCLUSION
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`Apple has again exhibited that it does not believe it must comply with the deadlines of this
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`case. Apple’s proffered “diligence” in discovering the Casio Camera is undermined by the facts of
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`the case, as well as by simple internet searches. There is no justifiable basis for why Apple did not
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`or could not have identified the Casio Camera in its initial invalidity contentions. Without any such
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`basis, there is no good cause for granting leave to amend.
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`Case 5:19-cv-00036-RWS Document 148 Filed 11/29/19 Page 9 of 10 PageID #: 6137
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`Dated: November 29, 2019
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`By:
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`9
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`/s/ Geoff Culbertson
`Geoff Culbertson
`Kelly Tidwell
`Patton, Tidwell & Culbertson, LLP
`2800 Texas Boulevard (75503)
`Post Office Box 5398
`Texarkana, TX 75505-5398
`Telephone: (903) 792-7080
`Facsimile: (903) 792-8233
`gpc@texarkanalaw.com
`kbt@texarkanalaw.com
`
`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`Baldine B. Paul
`Tiffany A. Miller
`Saqib J. Siddiqui
`Bryan C. Nese
`William J. Barrow
`Alison T. Gelsleichter
`Clark S. Bakewell
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006
`Telephone: (202) 263-3000
`Facsimile: (202) 263-3300
`jbeaber@mayerbrown.com
`agrimaldi@mayerbrown.com
`klevy@mayerbrown.com
`jfussell@mayerbrown.com
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`wbarrow@mayerbrown.com
`agelsleichter@mayerbrown.com
`cbakewell@mayerbrown.com
`
`Robert G. Pluta
`Amanda Streff Bonner
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`(312) 782-0600
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`Case 5:19-cv-00036-RWS Document 148 Filed 11/29/19 Page 10 of 10 PageID #: 6138
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`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 29th day of November, 2019, with a copy of this document
`via the Court’s CM/ECF system.
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`/s/ Geoff Culbertson
`Geoff Culbertson
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`10
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