Case 5:15-cv-02008-EJD Document 80 Filed 03/18/16 Page 1 of 12
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`Robert F. McCauley (SBN 162056)
`robert.mccauley@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3300 Hillview Avenue
`Palo Alto, CA 94304-1203
`Telephone:
`(650) 849-6600
`Facsimile:
`(650) 849-6666
`
`Gerald F. Ivey (pro hac vice)
`Smith R. Brittingham IV (pro hac vice)
`Elizabeth A. Niemeyer (pro hac vice)
`John M. Williamson (pro hac vice)
`Rajeev Gupta (pro hac vice)
`Aidan C. Skoyles (pro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone:
`(202) 408-4000
`Facsimile:
`(202) 408-4400
`
`Stephen E. Kabakoff (pro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3500 SunTrust Plaza
`303 Peachtree Street, N.E.
`Atlanta, GA 30308-3263
`Telephone:
`(404) 653- 6400
`Facsimile:
`(404) 653-6444
`
`Attorneys for Plaintiffs
`OpenTV, Inc., Nagravision S.A., and Nagra France S.A.S.
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`
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`Case No. 5:15-cv-02008-EJD (NMC)
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`PLAINTIFFS’ REPLY IN SUPPORT
`OF RULE 54(B) CERTIFICATION
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`Date: August 18, 2016
`Time: 9:00 a.m.
`Courtroom: 4, 5th Floor
`Judge: Honorable Edward J. Davila
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`PLAINTIFFS’ REPLY - RULE 54(B) CERT.
`Case No. 5:15-cv-02008-EJD (NMC)
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`OPENTV, INC., NAGRAVISION S.A., and
`NAGRA FRANCE S.A.S.
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`Plaintiffs,
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`APPLE INC.,
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`Defendant.
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`Case 5:15-cv-02008-EJD Document 80 Filed 03/18/16 Page 2 of 12
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION .......................................................................................................... 1
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`ARGUMENT ................................................................................................................. 1
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`A.
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`B.
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`C.
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`Rule 54(b) Is Not Confined to “Rare,” “Harsh,” or “Infrequent” Cases ................ 1
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`There Is Strong Potential for Increased Judicial Efficiency Through Rule
`54(b) ................................................................................................................... 2
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`For Purposes of Rule 54(b), There Is Minimal Relevant Overlap Between the
`Claims of the Remaining Patents and the Patent Claims Held Ineligible .............. 4
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`1.
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`2.
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`General Factual Overlap Is Not Meaningful for Rule 54(b) ...................... 4
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`In This Case, Future Ineligibility Defenses Are Not Relevant to the
`Rule 54(b) Inquiry ................................................................................... 6
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`I.
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`II.
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`III.
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`CONCLUSION .............................................................................................................. 7
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`Case 5:15-cv-02008-EJD Document 80 Filed 03/18/16 Page 3 of 12
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Alice Corp. Pty. Ltd. v. CLS Bank International,
`134 S. Ct. 2347 (2014) ................................................................................................................ 3
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`Angoss II P’ship. v. Trifox, Inc,
`No. 98-cv-1459-SI, 2000 WL 288435 (N.D. Cal. Mar. 13, 2000) ................................................ 2
`
`Curtis-Wright Corp. v. Geeral Electric Co.,
`446 U.S. 1 (1980) .............................................................................................................. passim
`
`Ferring B.V. v. Actavis, Inc.,
`No. 13-cv-00477, 2014 WL 5419055 (D. Nev. Oct. 23, 2014) .................................................... 6
`
`HTC Corp. v. IPCom GMBH & Co., KG,
`285 F.R.D. 130 (D.D.C. 2012) ................................................................................................ 2, 6
`
`Nautilus Grp., Inc. v. Icon Health & Fitness, Inc.,
`308 F. Supp. 2d 1224 (W.D. Wash. 2003) ................................................................................... 2
`
`Remediation Products, Inc. v. Adventus Americas, Inc.
`No. 07-cv-153, 2011 WL 1272924 (W.D.N.C. Apr. 1, 2011) ...................................................... 5
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`Smart Systems Innovations, L.L.C. v. Chicago Transit Authority,
`No. 14-cv-08053 (N.D. Ill. Nov. 10, 2015) ..........................................................................3, 4, 6
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`Solannex, Inc. v. Miasole, Inc.,
`No. 12-cv-00832-PSG, 2013 WL 430984 (N.D. Cal. Feb. 1, 2013) ............................................. 7
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`Takeda Pharmaceutical Co. v. Handa Pharmaceuticals, LLC,
`No. 11-cv-01609-JCS (N.D. Cal. Apr. 30, 2013) ..................................................................... 4, 5
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`Trading Technologies Int’l, Inc. v. BCG Partners, Inc.,
`883 F. Supp. 2d 772 (N.D. Ill. 2012) ....................................................................................... 2, 5
`
`Ultramercial Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014) ..................................................................................................... 3
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`Warner-Lambert Co. v. Apotex Corp.,
`No. 98-cv-4293, 2001 WL 736024 (N.D. Ill. June 28, 2001) ....................................................... 2
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`WiAV Sols. LLC v. Motorola, Inc.,
`No. 3:09-cv-447, 2010 WL 883748 (E.D. Va. Mar. 8, 2010) ................................................5, 6, 7
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`Williamson v. Citrix Online LLC,
`792 F.3d 1339 (Fed. Cir. 2015) ................................................................................................... 3
`
`Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC,
`No. 04-cv-00346, 2010 WL 4115427 (N.D. Ill. Oct. 18, 2010) ................................................... 2
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`Case 5:15-cv-02008-EJD Document 80 Filed 03/18/16 Page 4 of 12
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`Rules
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`Fed. R. Civ. P. 54(b) ................................................................................................................ passim
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`Case 5:15-cv-02008-EJD Document 80 Filed 03/18/16 Page 5 of 12
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`INTRODUCTION
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`I.
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`Apple’s opposition to OpenTV’s request for Rule 54(b) certification is fundamentally based
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`on a misapprehension of the legal standard required by the rule and the purpose behind it.
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`Throughout its brief, Apple persistently and incorrectly asserts that Rule 54(b) certification is limited
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`only to “rare circumstances” and “infrequent harsh cases,” urging an over-exacting standard rejected
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`by the Supreme Court in Curtis-Wright Corp. v. General Electric, Co., 446 U.S. 1, 9–10 (1980). In
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`using that standard, Apple misses the point: there is “no just reason” for delaying an appeal on the
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`discrete legal issue of patent eligibility as it relates to two of the five patents-in-suit at this early
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`stage and on such a limited record. Fed. R. Civ. P. 54(b). Straying from the Curtis-Wright
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`framework, Apple emphasizes irrelevant facts, glosses over cases allowing certification in factually
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`similar scenarios and under the proper legal standard, and tries to show “no judicial efficiency”
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`through immaterial examples of lengthy patent appeals. None of Apple’s arguments, however, sets
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`forth a just and relevant reason to prevent an appeal. And nothing that Apple cites rebuts the fact
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`that the Federal Circuit has been moving swiftly in appeals involving discrete issues of patent
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`eligibility. A consolidated trial is possible if any dismissed patent claims are remanded on appeal,
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`and no judicial waste will transpire if not. Accordingly, because no “just reason” exists to delay
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`appeal, and there is strong potential of gaining judicial efficiency, this Court should grant OpenTV’s
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`motion for Rule 54(b) certification.
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`II.
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`ARGUMENT
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`A.
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`Rule 54(b) Is Not Confined to “Rare,” “Harsh,” or “Infrequent” Cases
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`Apple repeatedly refers to Rule 54(b) certification as an exceptional event that is limited to
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`“only . . . rare circumstances,” “infrequent harsh case[s],” “where necessary to avoid . . . harsh and
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`unjust result[s],” or “where there exists some danger of hardship.” (Dkt. 79 at 1, 3, 9.) But that is
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`not the correct standard. In Curtis-Wright, the Supreme Court vacated a decision denying Rule
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`54(b) certification on the ground that the moving party had failed to “show harsh or unusual
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`circumstances.” 446 U.S. at 9. The Court ruled that the “infrequent harsh case” standard used by
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`the appellate court in Curtis-Wright—and urged by Apple here—“reflect[ed] a misinterpretation of
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`the standard of review for Rule 54(b) certification.” Id. at 9–10. Indeed, it was precisely the same
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`PLAINTIFFS’ REPLY - RULE 54(B) CERT.
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`Case 5:15-cv-02008-EJD Document 80 Filed 03/18/16 Page 6 of 12
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`1946 Advisory Committee Note cited by Apple in the first paragraph of its opposition brief that the
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`Supreme Court described in Curtis-Wright as “neither workable nor . . . reliable” and as reflecting a
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`“misperception of the appellate function.” Id. As set forth in OpenTV’s motion, the correct
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`standard for determining whether “no just reason” exists under Rule 54(b) is to apply “sound judicial
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`discretion” by “tak[ing] into account judicial administrative needs as well as the equities involved.”
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`Id. at 8. Nothing more is required.
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`To the extent that Apple cites case law suggesting that the “infrequent harsh case” standard
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`still applies here, such reasoning is not endorsed by the Supreme Court and has been squarely
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`rejected by other courts as well. Angoss II P’shp. v. Trifox, Inc., No. 98-cv-1459-SI, 2000 WL
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`288435, at *2 (N.D. Cal. Mar. 13, 2000) (“Curtis-Wright . . . expressly rejected the rule that Rule
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`54(b) motions should be reserved for the “infrequent harsh case.’”); see also Nautilus Grp., Inc. v.
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`Icon Health & Fitness, Inc., 308 F. Supp. 2d 1224, 1229 (W.D. Wash. 2003) (stating, in a patent
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`case, that “the Supreme Court made clear in Curtiss-Wright that the moving party need not
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`necessarily show that it is the ‘infrequent harsh case’ to justify entering final judgment”); Warner-
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`Lambert Co. v. Apotex Corp., No. 98-cv-4293, 2001 WL 736024, at *2 (N.D. Ill. June 28, 2001)
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`(“[Patentee’s] assertion that Rule 54(b) certification is reserved for the infrequent harsh case results
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`from plaintiff’s misinterpretation of the Supreme Court’s holding in Curtis-Wright . . . .”). In
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`contrast, all of the opinions cited by OpenTV in support of Rule 54(b) certification properly applied
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`the “sound judicial discretion” standard and allowed for interlocutory appeal. E.g., HTC Corp. v.
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`IPCom GMBH & Co., KG, 285 F.R.D. 130 (D.D.C. 2012); Trading Techs. Int’l, Inc. v. BCG
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`Partners, Inc., 883 F. Supp. 2d 772 (N.D. Ill. 2012), rev’d and remanded on other grounds, 728 F.3d
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`1309 (Fed. Cir. 2013); Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, No. 04-cv-00346, 2010
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`WL 4115427 (N.D. Ill. Oct. 18, 2010), aff’d, 683 F.3d 1356 (Fed. Cir. 2012). Unlike the cases
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`Apple relies on, the authority cited by OpenTV provides the proper rubric for deciding this motion.
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`B.
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`There Is Strong Potential for Increased Judicial Efficiency Through Rule 54(b)
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`Apple sweepingly asserts that there “is no judicial efficiency that can be gained” by allowing
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`interlocutory appeal on the discrete issue of patent eligibility of the claims of the ’081 and ’429
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`patents. (Dkt. 79 at 6 (emphasis added).) Apple’s statement is plainly wrong and ignores the cases
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`PLAINTIFFS’ REPLY - RULE 54(B) CERT.
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`Case 5:15-cv-02008-EJD Document 80 Filed 03/18/16 Page 7 of 12
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`and facts refuting it. While Apple states that “OpenTV cherry-picks three Federal Circuit appeals
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`that completed within twelve months” (Dkt. 79 at 7), those three cases are in fact the result of
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`carefully inspecting the Federal Circuit’s docket for cases containing discrete issues of patent-
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`eligibility following the Supreme Court’s decision in Alice Corp. Pty. v. CLS Bank International,
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`134 S. Ct. 2347. For its part, Apple does not cite any comparable Federal Circuit cases following
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`Alice having lengthy appellate timelines. Apple instead confusingly cites a means-plus-function
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`case involving 35 U.S.C. § 112 (Williamson v. Citrix Online LLC, 792 F.3d 1339 (Fed. Cir. 2015)),
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`and a case involving 35 U.S.C. § 101 that was stuck in appellate purgatory while the Supreme Court
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`was in the process of hearing, deciding, and drafting Alice (Ultramercial Inc. v. Hulu, LLC, 772 F.3d
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`709 (Fed. Cir. 2014)). While both cases involved lengthy appeals, they are beside the point: Alice is
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`now the law and the Federal Circuit is deciding patent eligibility cases very quickly when it is the
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`only issue presented.
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`Apple’s lack of authority to support its position is further reflected by the fact that it ignores
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`Smart Systems Innovations, L.L.C. v. Chicago Transit Authority in opposing OpenTV’s judicial
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`efficiency argument.1 In Smart Systems, on facts nearly indistinguishable from those here, the court
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`found that the judicial efficiency gained by certifying patent eligibility issues for immediate appeal
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`was the primary justification for granting certification. No. 14-cv-08053 (N.D. Ill. Nov. 10, 2015),
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`slip op. at 3–4.2 Similar to this case, the Smart Systems court found that the “proposed appeal would
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`present a question of law on a limited record, and . . . [that] there [wa]s a solid chance of an appellate
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`decision before trial (if there is one).” Id. at 4. Undermining Apple’s assertion that “there would be
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`no efficiency gained because the parties would . . . need to conduct claim construction and discovery
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`on the remanded patents” (Dkt. 79 at 7), the Smart Systems court overcame a similar argument by
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`acknowledging that, “[i]f this Court’s decision is reversed, then the [c]ourt will have a chance to put
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`1 Apple states that the “cases OpenTV cites in support of its judicial efficiency argument are
`inapposite,” but then goes on to discuss two cases that are nowhere cited in OpenTV’s section on
`“Judicial Efficiency Strongly Favor[ing] Certification.” (Dkt. 79 at 6.) Apple never addresses Smart
`Systems—the only district court case substantively discussed in that section of OpenTV’s brief.
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`2 This Order is available from PACER and Docket Navigator. A copy is attached to this
`paper as an Addendum for the Court’s convenience.
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`PLAINTIFFS’ REPLY - RULE 54(B) CERT.
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`Case 5:15-cv-02008-EJD Document 80 Filed 03/18/16 Page 8 of 12
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`the brakes on before the trial,” slip op. at 4. The court explained that the potential of gaining
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`efficiency was substantial because “it would be much better to hold one [consolidated] trial . . . ,
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`rather than two.” Id. Of course, a similar application of “brakes” to accommodate one consolidated
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`trial would be appropriate here if the Federal Circuit disagrees with this Court’s patent-eligibility
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`decision.3 Thus, there is no just reason for completing all proceedings on the three other patents
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`before allowing OpenTV to appeal the legal question of whether the claims of ’081 and ’429 patents
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`are directed to eligible subject matter when there remains the potential for gaining judicial efficiency
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`through an immediate appeal.
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`C.
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`For Purposes of Rule 54(b), There Is Minimal Relevant Overlap Between the
`Claims of the Remaining Patents and the Patent Claims Held Ineligible
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`1.
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`General Factual Overlap Is Not Meaningful for Rule 54(b)
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`Apple asserts that the “overlap between the technology claimed by the Remaining Patents
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`and the technology claimed by the Dismissed Patents . . . weighs against . . . certification.” (Dkt. 79
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`at 5.) Apple is wrong. First, factual overlap is only relevant to the Rule 54(b) inquiry to the extent
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`that it affects whether the claims under review are separable from the others remaining to be
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`adjudicated. See Curtis-Wright, 466 U.S. at 8. Apple does not deny that the claims of ’081 and ’429
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`patents are divisible from the rest. Second, nothing in the cases Apple cites supports the proposition
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`that a general level of technological relatedness is meaningful for purposes of Rule 54(b)
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`certification. Apple argues that the court in Takeda Pharmaceutical Co. v. Handa Pharmaceuticals,
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`LLC, was “denying Rule 54(b) certification due to overlap in technology” (Dkt. 79 at 5), but that is a
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`broad and incorrect generalization. The Takeda court, following Curtis-Wright, found that “[g]iven
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`3 In OpenTV, Inc. v. Apple, Inc., No. 14-cv-01622 (N.D. Cal.), Apple filed a similar Rule 12
`motion, arguing one of the five asserted patents was invalid for claiming unpatentable subject matter.
`That motion was granted, just as Apple’s Rule 12 motion was granted here. Subsequently, Apple
`filed inter partes review (“IPR”) petitions with the Patent Office with respect to the four remaining
`patents, and then successfully moved to stay the entire litigation—a stay that will ultimately be in
`place for a year while the IPR proceedings finish. No. 14-cv-01622 (N.D. Cal. Oct. 21, 2015), ECF
`No. 222. Although OpenTV does not believe IPR petitions should be successful here, or that a stay
`during the pendency of any such proceedings would be justified, should Apple nonetheless pursue
`the same strategy as before, as it has stated it intends to do, that would provide further support for
`OpenTV’s request for an immediate appeal. If Apple intends to argue that a stay is appropriate here,
`then surely it must also concede that any appeal from the Court’s order dismissing the ’081 and ’429
`patents would be completed before a trial in this case.
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`that trial on the remaining claims is imminent (approximately one month away), the equities do not
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`strongly support entry of final judgment.” No. 11-cv-01609-JCS (N.D. Cal. Apr. 30, 2013), slip op.
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`at 3. It briefly mentioned that the “Federal Circuit w[ould] be required to familiarize itself with the
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`same technologies [twice],” id., but that was because the patent for which summary judgment was
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`granted related to the “controlled release formulation of dexlansoprazole” while the remaining patent
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`involved the “dexlansoprazole active ingredient.” No. 11-cv-01609-JCS (N.D. Cal. Apr. 25, 2013),
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`Plaintiffs’ Mot. for Rule 54(b) Cert. at 16, No. 11-cv-01609-JCS (N.D. Cal. Apr. 25, 2013), ECF No.
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`259. In other words, the case was on the eve of trial and the patents both involved the same complex
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`medicinal compound, dexlansoprazole. Likewise, in Remediation Products, Inc. v. Adventus
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`Americas, Inc., the parties had been litigating for nearly four years and creating a fact-intensive
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`record related to remediating groundwater with halogenated hydrocarbons by the time that Rule
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`54(b) certification on a patent-in-suit was sought. No. 07-cv-153, 2011 WL 1272924 (W.D.N.C.
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`Apr. 1, 2011). Thus, is its clear that Takeda and Remediation are very different from the facts here.
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`This case is in early stages, has little factual record as to the ’081 and ’429 patents, and the
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`technology is common among the patents only in that they relate generally to the field of
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`communicating data with interactive TVs.
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`Apple further alleges that “OpenTV misrepresents the facts by arguing that that is no factual
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`overlap because the patents-in-suit have ‘different inventors, family histories, written descriptions,
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`claims language, and prior art” (Dkt. 79 at 6). Apple misses the point. OpenTV argued quite clearly
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`that, following the Curtis-Wright framework, the asserted claims of the ’081 and the ’429 patents are
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`“divisible from the [remaining patent]” because each is unique for purposes of a Rule 54(b) analysis.
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`(Dkt. 75 at 6 (citing Trading Techs., 883 F. Supp. at 780, explaining that the relevant inquiry is
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`“whether the claims under review are separable from the others remaining to be adjudicated”).)
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`OpenTV, in fact, readily conceded that the patents are factually related to securely communicating
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`data, such as to interactive TVs, but argued that such a generalized level of factual relationship is not
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`meaningful under the relevant case law. (Id.) In WiAV Solutions LLC v. Motorola, Inc., for
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`example, the court certified an appeal on seven patents while two remained because, “while the
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`broad subject matter of the patents (wireless communications) [wa]s the same, the functionalities of
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`PLAINTIFFS’ REPLY - RULE 54(B) CERT.
`Case No. 5:15-cv-02008-EJD (NMC)
`
`

`
`Case 5:15-cv-02008-EJD Document 80 Filed 03/18/16 Page 10 of 12
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`
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`the remaining patents relate[d] to ‘short paging’ and ‘link adaptation’ while the [others’]
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`functionalities relate[d] to speech coding and decoding.” No. 3:09-cv-447, 2010 WL 883748, *2
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`(E.D. Va. Mar. 8, 2010). Along the same lines, the court in HTC Corp. certified an appeal on two
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`patents where one patent remained even though the defendant argued that the “technology involved
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`in [all] three patents relate[d] to mobile phones.” 285 F.R.D. at 132 (finding that the “[p]atents
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`de[alt] with different technologies” for purposes of Rule 54(b)).
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`That Apple can only point to the fact that the patents generally involve “content access
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`control for interactive television” and that two of the five patents (having four and seven inventors
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`each) have one common inventor demonstrates the weakness in its “factual relatedness” argument.
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`1 2 3 4 5 6 7 8 9
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`(Dkt. 79 at 6.) Apple does not dispute that the patents have different sets of inventors, family
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`histories, written descriptions, claim language, and prior art. Since Apple cannot point to anything
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`that actually relates the patents to each other, Apple is forced to instead rely heavily on OpenTV’s
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`inadvertent reference in one instance to separate “inventors” rather than separate “sets of inventors”
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`(compare Dkt. 75 at 1 and 6), as if that minor lack of clarity in OpenTV’s motion could magically
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`create factual relatedness between otherwise distinct patents and causes of action. Further, this case
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`has none of the facts of Ferring B.V. v. Actavis, Inc., No. 13-cv-00477, 2014 WL 5419055 (D. Nev.
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`Oct. 23, 2014), which Apple relies on throughout its opposition. In Ferring, the court denied
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`certification after dismissing three patents while one remained—but all four patents were from the
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`same patent family. In other words, unlike here, those patents all stemmed from the same patent
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`application, had identical sets of inventors, and had verbatim written descriptions. Moreover, as the
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`Smart Systems court recognized, the patent eligibility determination at the Rule 12(b)(6) stage does
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`“not require a deep-dive, or any in-depth examination, of the details of [accused products]” and is
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`based off of a very “limited record” of disputed facts. No. 14-cv-08053, slip op. at 4, 6. At bottom,
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`the claims of ’081 and ’429 patents are separable and Apple fails to identify any factual overlap
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`providing a “just reason” to delay an appeal.
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`2.
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`In This Case, Future Ineligibility Defenses Are Not Relevant to the Rule
`54(b) Inquiry
`
`Finally, Apple makes much of the fact that it may eventually raise patent eligibility defenses
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`6
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`PLAINTIFFS’ REPLY - RULE 54(B) CERT.
`Case No. 5:15-cv-02008-EJD (NMC)
`
`

`
`Case 5:15-cv-02008-EJD Document 80 Filed 03/18/16 Page 11 of 12
`
`
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`with respect to one of the three remaining patents. (Dkt. 79 at 3–4.) But Apple’s hypothetical
`
`defenses have little bearing on the Rule 54(b) analysis before the court at this juncture. As OpenTV
`
`explained in its opening brief, an appeal of the Court’s January 28, 2016 Order would only involve
`
`the discrete legal issue of whether the asserted claims of the ’081 and ’429 patents are eligible under
`
`§ 101. That inquiry is specific to the subject matter of those particular claims and supporting
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`specifications—and not to any of the claims of the remaining patents or their written descriptions.
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`See WiAV Sols., 2010 WL 883748, at *2 (the certified “issue [was] unique to [dismissed patents] and
`
`an appellate court will not have to consider it at all as to the remaining two patents”). Even if there
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`is hypothetically an appeal involving a § 101 issue following trial, it would be an altogether separate
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`1 2 3 4 5 6 7 8 9
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`analysis from the analysis of the claims of the ’081 and ’429 patents, and it would not provide a “just
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`reason” for delaying resolution of those claims dismissed at the Rule 12(b)(6) stage.
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`12
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`To support its positon that the Federal Circuit will be forced to hear the same legal issue
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`13
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`more than once, Apple cites Solannex, Inc. v. Miasole, Inc., No. 12-cv-00832-PSG, 2013 WL
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`14
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`430984 (N.D. Cal. Feb. 1, 2013). That case, however, serves only to emphasize why overlap is not
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`an issue here. In Solannex, the court was confronted with the “confounding position of presiding
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`over two separate cases involving the same parties, patents from the same family with many of the
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`same claim terms, the same and only inventor, the same prosecution counsel, the same litigation
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`counsel, many of the same witnesses, and the same accused products.” Id. at *1. After
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`consolidating the two cases, it denied Rule 54(b) certification as to one of the patents because “many
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`of the same terms” shared between “patents [that] all belong to the same patent family” would—
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`quite literally—present the same issue to the Federal Circuit in multiple appeals. Id. at *3. The facts
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`of Solannex demonstrate precisely the situation that this case is not, as the patents here involve
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`different sets of inventors, family histories, written descriptions, claims language, and prior art.
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`Despite Apple’s protestations otherwise, no appellate court will hear the same issue twice if
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`OpenTV’s motion for Rule 54(b) is granted.
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`27
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`III. CONCLUSION
`
`No just reason exists for delaying an appeal at this stage of the proceedings. OpenTV, Inc.
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`
`and Nagra France S.A.S. request that the Court enter partial judgment with respect to counts 1 and 4,
`
`
`
`
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`7
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`PLAINTIFFS’ REPLY - RULE 54(B) CERT.
`Case No. 5:15-cv-02008-EJD (NMC)
`
`

`
`Case 5:15-cv-02008-EJD Document 80 Filed 03/18/16 Page 12 of 12
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`
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`thereby certifying the January 28, 2016 Order for appeal under Rule 54(b).
`
`
`Dated: March 17, 2016
`
`
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`
`
`
`
`
`
`
`/s/ E. Niemeyer
`By:
`Robert F. McCauley (SBN 162056)
`robert.mccauley@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3300 Hillview Avenue
`Palo Alto, CA 94304-1203
`Telephone:(650) 849-6600
`Facsimile: (650) 849-6666
`
`Gerald F. Ivey (pro hac vice)
`Smith R. Brittingham IV (pro hac vice)
`Elizabeth A. Niemeyer (pro hac vice)
`John M. Williamson (pro hac vice)
`Rajeev Gupta (pro hac vice)
`Aidan C. Skoyles (pro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone:
`(202) 408-4000
`Facsimile: (202) 408-4400
`
`Stephen E. Kabakoff (pro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3500 SunTrust Plaza
`303 Peachtree Street, N.E.
`Atlanta, GA 30308-3263
`Telephone:(404) 653- 6400
`Facsimile: (404) 653-6444
`
`Attorneys for Plaintiffs
`OpenTV, Inc., Nagravision S.A., and Nagra France
`S.A.S.
`
`
`
`
`
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`PLAINTIFFS’ REPLY - RULE 54(B) CERT.
`Case No. 5:15-cv-02008-EJD (NMC)
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