Case 5:15-cv-02008-EJD Document 107 Filed 06/09/16 Page 1 of 5
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`OPENTV, INC., et al.,
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`Plaintiffs,
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`v.
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`APPLE INC.,
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`Defendant.
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`Case No.15-cv-02008-EJD (NC)
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`ORDER GRANTING DEFENDANT’S
`MOTION TO STRIKE
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`Re: Dkt. No. 85
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`Defendant Apple Inc. moves to preclude plaintiff OpenTV from asserting
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`conception and reduction to practices dates other than those identified in OpenTV’s
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`October 15, 2015, disclosures under Patent Local Rule 3-1(f) and 3-2(b); to preclude
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`OpenTV from relying on supporting documentation other than what was specifically
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`identified in OpenTV’s Patent Local Rule 3-2(b) disclosures; to strike all earlier
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`conception and reduction to practices dates proposed in OpenTV’s subsequent
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`interrogatory responses; and to limit OpenTV to asserting a conception date at the end of
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`the date range it proposes for the ‘169 patent—June 30, 2001. Dkt. No. 85 at 2. OpenTV
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`opposes the motion. Dkt. No. 91.
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`I. BACKGROUND
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`Plaintiffs OpenTV, Inc., Nagravision, SA, and Nagra France S.A.S. (collectively,
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`“OpenTV”) sue defendant Apple Inc., alleging that Apple infringes U.S. Patent Nos.
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`6,233,736 (the ‘736 patent), 7,055,169 (the ‘169 patent), and 7,725,740 (the ‘740 patent).
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`Case 5:15-cv-02008-EJD Document 107 Filed 06/09/16 Page 2 of 5
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`Apple contests the validity of these patents.
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`On October 15, 2015, OpenTV served its Patent Local Rule disclosures under rules
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`3-1(f) and 3-2(b). Dkt. No. 85-3, Exh. 1. In those disclosures, OpenTV asserted “a
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`priority date at least as early as” the priority date “stated on the face of” each asserted
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`patent. Exh. 1 at 6.
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`On November 23, 2015, Apple served interrogatories on OpenTV, including one
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`requesting, the “circumstances surrounding the conception and reduction to practice”
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`including “the specific dates that you contend each claim was conceived.” Dkt. No. 85-4,
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`Exh. 2 at 12. Apple also served requests for production requesting supporting
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`documentation for any alleged dates of conception. Dkt. No. 85-12, Exh. 10 at 7-10.
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`On December 23, 2015, OpenTV provided its interrogatory response, identifying
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`the same bates range of 500 pages that it had previously listed with its October disclosures.
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`Dkt. No. 85-4, Exh. 2 at 12-14.
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`In mid-February, after the parties met and conferred, OpenTV identified a
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`conception date of September 14, 1995, for the ‘736 patent, which predates some of
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`Apple’s prior art. Dkt. No. 85-7, Exh. 5. On March 14, 2016, OpenTV stated that it might
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`allege a conception date for the ‘740 patent which predates the filing of the patent and
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`some of Apple’s prior art. Dkt. No. 85-9, Exh. 7.
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`II. DISCUSSION
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`Apple moves to preclude OpenTV’s disclosures under Federal Rule of Civil
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`Procedure 16(f)(1)(C), which permits the Court to issue any just order regarding discovery,
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`including sanctions for failure to obey a scheduling order.
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`In support of its motion, Apple points to two decisions form this district directly on
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`point. In Harvatek Corporation v. Cree, Inc. et. al., Case No. 14-cv-5353 WHA, 2015 WL
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`4396379 (N.D. Cal. July 17, 2015), Judge Alsup struck the patent holder’s “open-ended”
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`conception date. Judge Alsup reasoned that the Patent Local Rules are designed to make
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`parties more efficient by stating with particularity the claims early in the case. Id. at * 2.
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`Additionally, Judge Alsup concluded that the patent holder’s late disclosure of a
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`Case 5:15-cv-02008-EJD Document 107 Filed 06/09/16 Page 3 of 5
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`conception date prejudiced the accused infringer by creating “shifting sands,” which the
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`local rules were designed to prevent. Id. at * 3.
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`In Thought, Inc. v. Oracle Corp., Case No. 12-cv-5601 WHO, 2015 WL 5834064
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`(N.D. Cal. Oct. 7, 2015), Judge Orrick similarly granted the accused infringer’s motion to
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`strike a late-disclosed invention date. Judge Orrick noted that Patent Local Rule 3-2(b)
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`requires the party alleging infringement to provide “all documents evidencing the
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`conception . . . of each claimed invention, which were created on or before the date of
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`application for the patent in suit or the priority date identified pursuant to Patent L.R. 3-
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`2(f), whichever is earlier.” Id. at * 5. Judge Orrick concluded that this includes disclosure
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`of the conception date. Id. (citing Blue Spike, LLC v. Adobe Sys., Inc., 14-cv-1647 YGR
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`(JSC), 2015 WL 335842, at * 7 (N.D. Cal. Jan. 26, 2015)).
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`In response, OpenTV argues that this case is different from Thought and Harvatek
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`for two main reasons. First, OpenTV argues that it need not disclose a conception date
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`according to the local rules, only a priority date. Second, OpenTV argues that in the other
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`cases, plaintiff was seeking to rely on newly produced documents, and those documents
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`were the subject of the motions. Here, Apple is preemptively moving to prevent OpenTV
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`from relying on documents supporting an earlier conception date at any point in the future
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`of the litigation. As such, OpenTV argues that it is prejudiced because it cannot
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`demonstrate good cause, since the argument is hypothetical, not concrete.
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`As to the first argument, OpenTV is correct that the Patent Local Rules explicitly
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`require disclosure of a priority date. Patent L.R. 3-2(b). A priority date refers to the date
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`of the earliest filed patent application. 35 U.S.C. § 119. “Generally, a patent is awarded to
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`the first party to reduce an invention to practice, unless the other party can show that it was
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`the first to conceive an invention and that it exercised reasonable diligence in later
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`reducing the invention to practice.” Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577
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`(Fed. Cir. 1996)). A conception date will necessarily predate a priority date. Id. Proof of
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`a conception date requires more than the inventor’s testimony, and typically a patent
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`holder must provide documentary evidence. Taurus IP, LLC v. DaimlerChrysler Corp.,
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`Case 5:15-cv-02008-EJD Document 107 Filed 06/09/16 Page 4 of 5
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`726 F.3d 1306, 1323-24 (Fed. Cir. 2013). A patent holder’s asserted priority and
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`conception date is pivotal to the accused infringer’s assessment of relevant prior art. Id. at
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`1323.
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`In the Northern District of California, the Patent Local Rules require disclosure of
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`the priority date and also the documents that the patent holder will use to demonstrate an
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`earlier conception date. Patent L.R. 3-2(b), 3-2(f). In addition to the disclosures under the
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`Patent Local Rules, Apple served interrogatories on OpenTV seeking specific conception
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`dates for each asserted claim. In its responses, OpenTV did not identify a specific
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`conception date for the ‘736 patent. However, in February 2016, OpenTV identified a
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`conception date for the ‘736 patent of September 14, 1995, which predates the priority date
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`on the face of the patent by a year and a half.
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`The Court agrees with Judge Orrick’s reasoning in Thought that OpenTV had an
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`obligation to disclose its conception date and the relevant documents to support the
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`conception date under the Patent Local Rules. Additionally, OpenTV failed to answer
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`Apple’s interrogatory in a timely manner.
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`As to OpenTV’s second argument, the Court disagrees with OpenTV that Apple’s
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`request to prevent OpenTV from asserting any other conception date is premature. Federal
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`Rule of Civil Procedure 26 (requiring initial disclosures), the Patent Local Rules, and the
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`Court’s case management schedule set forth deadlines by which the parties can reasonably
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`expect to understand the nature and scope of the dispute at issue in a given case.
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`Additionally, Apple had a one-year deadline to determine if it would challenge the patents-
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`in-suit as invalid in an IPR proceeding. Thus, it is not premature to expect that the parties
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`disclose key information in the case early and in accordance with the scheduling deadlines.
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`III. CONCLUSION
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`In conclusion, the spirit of the patent local rules is to ensure early crystallization of
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`the parties’ theories, and specifically, to place the burden on the plaintiff to quickly decide
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`on and disclose the contours of its case. See Atmel Corp. v. Information Storage Devices
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`Inc., No. 95-cv-1987 FS, 1998 WL 775115, at *2 (N.D. Cal. Nov. 5, 1998); Harvatek, 14-
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`Case 5:15-cv-02008-EJD Document 107 Filed 06/09/16 Page 5 of 5
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`cv-5353 WHA, 2015 WL 4396379, at *3.
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`The Court GRANTS Apple’s motion to preclude plaintiff OpenTV from asserting
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`conception and reduction to practices dates other than those identified in OpenTV’s
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`October 15, 2015, disclosures under Patent Local Rule 3-1(f) and 3-2(b); to preclude
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`OpenTV from relying on supporting documentation other than what was specifically
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`identified in OpenTV’s Patent Local Rule 302(b) disclosures; to strike all earlier
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`conception and reduction to practices dates proposed in OpenTV’s subsequent
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`interrogatory responses; and to limit OpenTV to asserting a conception date at the end of
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`the date range it proposes for the ‘169 patent—June 30, 2001.
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` Any party may object to this ruling within 14 days. Fed. R. Civ. P. 72(a).
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`IT IS SO ORDERED.
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`Dated: June 9, 2016
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`_____________________________________
`NATHANAEL M. COUSINS
`United States Magistrate Judge
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