Case 5:15-cv-02008-EJD Document 85 Filed 04/13/16 Page 1 of 17
`REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED
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`
`GEORGE A. RILEY (S.B. #118304)
`griley@omm.com
`LUANN L. SIMMONS (S.B. #203526)
`lsimmons@omm.com
`MELODY DRUMMOND HANSEN (S.B. #278786)
`mdrummondhansen@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center, 28th Floor
`San Francisco, California 94111-3823
`Telephone:
`(415) 984-8700
`Facsimile:
`(415) 984-8701
`
`RYAN K. YAGURA (S.B. #197619)
`ryagura@omm.com
`XIN-YI ZHOU (S.B. #251969)
`vzhou@omm.com
`BRIAN M. COOK (S.B. #266181)
`bcook@omm.com
`KEVIN MURRAY (S.B. #275186)
`kmurray2@omm.com
`O’MELVENY & MYERS LLP
`400 South Hope Street
`Los Angeles, California 90071-2899
`Telephone:
`(213) 430-6000
`Facsimile:
`(213) 430-6407
`
`Attorneys for Defendant Apple, Inc.
`
`
`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE
`
`OpenTV, Inc., Nagravision, SA, and Nagra
`France S.A.S.,
`
`v.
`
`Apple Inc.,
`
`Plaintiffs,
`
`Defendant.
`
`Case No. 5:15-CV-02008-EJD
`
`DEFENDANT’S MOTION TO
`PRECLUDE RELIANCE ON CERTAIN
`INVENTION DATES AND TO STRIKE
`CERTAIN ALLEGATIONS
`
`Judge: Honorable Edward J. Davila
`Hearing Time: 9:00 a.m.
`Hearing Date: Thursday, Sept. 15, 2016
`Courtroom: San Jose Courtroom 4
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`APPLE’S MOT. TO PRECLUDE
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`Case 5:15-cv-02008-EJD Document 85 Filed 04/13/16 Page 2 of 17
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION .............................................................................................................. 2
`LEGAL BACKGROUND ON PATENT PRIORITY DATES AND THE
`NORTHERN DISTRICT OF CALIFORNIA’S REQUIREMENT THAT THEY
`BE DISCLOSED EARLY IN LITIGATION ..................................................................... 2
`FACTUAL BACKGROUND ............................................................................................. 4
`THE COURT SHOULD PRECLUDE OPENTV FROM ASSERTING
`INVENTION DATES EARLIER THAN THOSE DISCLOSED IN ITS PATENT
`LOCAL RULE 3-1(f) DISCLOSURES AND STRIKE ALL LATE
`DISCLOSURES OF EARLIER INVENTION DATES AND ALL QUALIFYING
`LANGUAGE ...................................................................................................................... 6
`OpenTV seeks to flagrantly disregard its obligations under Patent Local
`A.
`Rules 3-1(f) and 3-2(b) ........................................................................................... 6
`Apple relied on OpenTV’s Local Rule 3-1(f) and 3-2(b) disclosures in
`formulating its invalidity defenses and would suffer significant prejudice if
`OpenTV were allowed to rely on priority dates other than those alleged in
`its October 15, 2015 disclosure ............................................................................... 7
`The appropriate remedy is to preclude OpenTV from asserting invention
`dates earlier than those disclosed in its Patent Local Rule 3-1(f) disclosures ........ 8
`OpenTV cannot demonstrate good cause pursuant to Patent L.R. 3-6 to
`amend its Patent L.R. 3-1(f) and 3-2(b) disclosures, and cannot
`demonstrate good cause pursuant to Fed. R. Civ. P. 16(b) to extend the
`deadline for compliance with Patent L.R. 3-1(f) and 3-2(b) disclosures .............. 10
`OpenTV’s vague alleged June, 2001 conception date for the ’169 Patent
`should be limited to June 30, 2001 at the earliest ................................................. 13
`CONCLUSION ................................................................................................................. 13
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`B.
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`C.
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`D.
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`I.
`II.
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`III.
`IV.
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`V.
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`Case 5:15-cv-02008-EJD Document 85 Filed 04/13/16 Page 3 of 17
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`
`
`Cases
`
`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,
`796 F.2d 443 (Fed. Cir. 1986) .....................................................................................................2
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`BioGenex Labs. v. Ventana Med. Sys.,
`2005 U.S. Dist. LEXIS 45531 (N.D. Cal. Feb. 24, 2005) .........................................................10
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`Blue Spike, LLC v. Adobe Sys.,
`No. 14-1647, 2015 U.S. Dist. LEXIS 8778 (N.D. Cal. Jan. 26, 2015) ...........................4, 10, 13
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`Fleming v. Escort, Inc.,
`774 F.3d 1371 (Fed. Cir. 2014) ...................................................................................................2
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`Harvatek Corp. v. Cree, Inc.,
`No. 14-5353, 2015 U.S. Dist. LEXIS 93388 (N.D. Cal. July 17, 2015) .................................3, 9
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`Johnson v. Mammoth Recreations, Inc.,
`975 F.2d 604 (9th Cir. 1992) ...............................................................................................10, 11
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`Mahurkar v. CR Bard, Inc.,
`79 F. 3d 1572 (Fed. Cir. 1996) ....................................................................................................3
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`O2 Micro Int’l, Ltd. v. Monolithic Power Sys.,
`467 F.3d 1355 (Fed. Cir. 2006) .......................................................................................8, 10, 11
`
`Singh v. Brake,
`222 F.3d 1362 (Fed. Cir. 2000) ...................................................................................................8
`
`Taurus IP, LLC v. DaimlerChrysler Corp.,
`726 F.3d 1306 (Fed. Cir. 2013) ...............................................................................................3, 7
`
`Thought, Inc. v. Oracle Corp.,
`No. 12-5601, 2015 U.S. Dist. LEXIS 137113 (N.D. Cal. Oct. 7, 2015) ........................... passim
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`Statutes
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`35 U.S.C. § 102 .................................................................................................................................2
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`35 U.S.C. § 103 .................................................................................................................................2
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`Other Authorities
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`Fed. R. Civ. P. 16 ....................................................................................................................2, 9, 10
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`Case 5:15-cv-02008-EJD Document 85 Filed 04/13/16 Page 4 of 17
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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`Fed. R. Civ. P. 37 ..............................................................................................................................9
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`L.R. 3-1 ................................................................................................................................... passim
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`L.R. 3-2 ................................................................................................................................... passim
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`L.R. 3-6 ...........................................................................................................................................10
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`L.R. 4 .................................................................................................................................................7
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`Case 5:15-cv-02008-EJD Document 85 Filed 04/13/16 Page 5 of 17
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`NOTICE OF MOTION
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`PLEASE TAKE NOTICE THAT on September 15, 2016 at 9:00 a.m. in Courtroom 4
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`before the Honorable Edward J. Davila, Defendant Apple, Inc. (“Apple”) requests the Court grant
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`the following motion.
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`Apple moves to preclude OpenTV, Inc., Nagravision, SA, and Nagra France S.A.S.
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`(collectively, “OpenTV”) from asserting conception and reduction to practice dates earlier than
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`those identified in its Patent L.R. 3-1(f) and 3-2(b) disclosures, including striking all qualifying
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`language from that disclosure (e.g., “at least as early as”) and all interrogatory responses asserting
`such earlier invention dates. This motion relates to the three remaining patents-in-suit,1 U.S.
`Patent Nos. 6,233,736 (“the ’736 Patent”), 7,055,169 (“the ’169 Patent”), and 7,725,740 (“the
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`’740 Patent”) (collectively, the “asserted patents”).
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`The Scheduling Order in this case directs that “any disputes with respect to discovery or
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`disclosure are referred to the assigned Magistrate Judge. Any disputes regarding any party’s
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`Patent Disclosures—including any request to amend pursuant to Patent L.R. 3-6—are likewise
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`referred to the assigned Magistrate Judge.” Dkt. 58 at 1. This motion does not seek additional
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`discovery or disclosures from OpenTV, and does not seek permission to amend pursuant to Patent
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`L.R. 3-6, but rather seeks a preclusionary sanction under Fed. R. Civ. P. 16(f). See, e.g., Order
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`Re Defendant’s Discovery Letter, Harvatek Corp. v. Cree, Inc., No. 14-5353, Dkt. 50 at 1 (N.D.
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`Cal. June 9, 2015) (deeming discovery letter seeking order precluding patentee from asserting a
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`certain conception date appropriate for resolution before the district judge rather than the
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`magistrate), attached to the accompanying Declaration of Melody Drummond Hansen
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`(“Drummond Hansen Decl.”) as Exhibit 9. If the Court deems this motion to be more appropriate
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`for resolution before the Magistrate Judge, then Apple requests the Court refer the motion to the
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`Magistrate Judge.
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`1 The Court held two other patents-in-suit, U.S. Patent Nos. 6,148,081 and 7,644,429, invalid, and
`OpenTV has requested permission to pursue an interlocutory appeal. Dkt. 75 at 6. Apple
`reserves the right to bring this motion with respect to those patents as well, if the Court’s finding
`of invalidity is reversed on appeal.
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`APPLE’S MOT. TO PRECLUDE
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`Case 5:15-cv-02008-EJD Document 85 Filed 04/13/16 Page 6 of 17
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`MEMORANDUM OF POINTS AND AUTHORITIES
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`INTRODUCTION
`The dates of invention of the asserted patents and the supporting documentation are
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`
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`I.
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`critical disclosures in this litigation. Apple needed those disclosures early in the case so that it
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`could identify relevant prior art and prepare its defenses during claim construction. Early
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`disclosure of invention dates is so important that the Court’s Local Patent Rules and Scheduling
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`Order required OpenTV to disclose the alleged invention dates, and all documents supporting the
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`alleged invention dates, over five months ago on October 15, 2015. See Patent L.R. 3-1(f), 3-
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`2(b); Dkt. 58 at 2 (Scheduling Order). OpenTV originally seemed to comply with Rules 3-1(f)
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`and 3-2(b) on October 15, 2015, but has now engaged in repeated attempts to depart from its
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`original disclosures. Thus, pursuant to Fed. R. Civ. P. 16(f)(1)(C), Apple requests the Court
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`preclude OpenTV from asserting conception and reduction to practice dates other than those
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`identified in its October 15, 2015 Patent L.R. 3-1(f) and 3-2(b) disclosures, preclude OpenTV
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`from relying on supporting documentation other than what was specifically identified in
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`OpenTV’s Patent L.R. 3-2(b) disclosure, strike all qualifying language (e.g., “at least as early as”)
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`in OpenTV’s Rule 3-1(f) and 3-2(b) disclosures, strike all earlier conception and reduction to
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`practice dates proposed in OpenTV’s subsequent interrogatory responses, and limit OpenTV to
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`asserting a conception date at the end of the date range it proposes for the ’169 Patent—June 30,
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`2001.
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`II.
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`LEGAL BACKGROUND ON PATENT PRIORITY DATES AND THE
`NORTHERN DISTRICT OF CALIFORNIA’S REQUIREMENT THAT THEY BE
`DISCLOSED EARLY IN LITIGATION
`A patent is invalid if someone else invented first, i.e., if a prior art reference predates the
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`invention claimed in the patent. See 35 U.S.C. §§ 102, 103 (statutes governing validity of
`patents).2 The invention date is presumed to be the filing date indicated on the face of the patent,
`unless the patent owner proves an earlier date. See Bausch & Lomb, Inc. v. Barnes-
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`2 Substantial modifications to 35 U.S.C. § 102 went into effect on March 16, 2013, but the old
`version of § 102 applies in this case because the applications that led to the asserted patents were
`filed before March 16, 2013. See Fleming v. Escort, Inc., 774 F.3d 1371, 1374 n.1 (Fed. Cir.
`2014).
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`Hind/Hydrocurve, Inc., 796 F.2d 443, 449 (Fed. Cir. 1986). The invention date is earlier than the
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`filing date where the patent owner proves (1) the inventor conceived of the invention and reduced
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`it to practice prior to date of the reference, or (2) the inventor conceived of the invention prior to
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`the date of the reference and diligently reduced it to practice after the date of the reference.
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`Mahurkar v. CR Bard, Inc., 79 F. 3d 1572, 1577 (Fed. Cir. 1996). In either of those situations,
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`the “priority” date will be the conception date. Id. Proving an earlier priority date cannot be done
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`with oral testimony from the inventor alone, it also requires independent corroboration, typically
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`consisting of documentary evidence. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d
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`1306, 1324 (Fed. Cir. 2013). If the patent owner proves a priority date for the patent that is
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`before the date of the reference, then the reference will not invalidate the patent. Id. at 1322.
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`Thus, Patent Local Rule 3-1(f) requires the party alleging infringement to disclose: “For
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`any patent that claims priority to an earlier application, the priority date to which each asserted
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`claim allegedly is entitled; . . . .” Patent Local Rule 3-2(b) further requires the party alleging
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`infringement to disclose “[a]ll documents evidencing the conception . . . of each claimed
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`invention, which were created on or before the date of application for the patent in suit or the
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`priority date identified pursuant to Patent L.R. 3-1(f), whichever is earlier.” In other words, Rule
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`3-1(f) at least “requires a patent holder to assert a specific date of conception,” and Rule 3-2(b) at
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`least “requires the proactive and expedient production of evidence of that conception date.” See
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`Thought, Inc. v. Oracle Corp., No. 12-5601, 2015 U.S. Dist. LEXIS 137113, at *15 (N.D. Cal.
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`Oct. 7, 2015) (Orrick, J.) (precluding reliance on certain priority date where supporting
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`documentation was disclosed late), citing Harvatek Corp. v. Cree, Inc., No. 14-5353, 2015 U.S.
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`Dist. LEXIS 93388, at *2 (N.D. Cal. July 17, 2015) (same). These requirements exist because:
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`The purpose of the local rules to crystallize the parties’ theories early in litigation
`would be frustrated if Patent Local Rule 3-1 and 3-2 were read to allow a plaintiff
`to avoid specifying a conception date or provide any documents that support this
`date. (“[defendant’s] failure to identify a specific conception date has allowed it to
`reverse the order of the procedure contemplated by our Patent Local Rules, giving
`it a preview of [plaintiff’s] invalidity contentions before offering a concrete
`conception date.”). Indeed, many of Oracle’s theories of invalidity rely on prior
`art, which is heavily affected by the conception date.
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`Thought, 2015 U.S. Dist. LEXIS 137113 at *16 (citation omitted), citing Harvatek, 2015 U.S.
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`APPLE’S MOT. TO PRECLUDE
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`Case 5:15-cv-02008-EJD Document 85 Filed 04/13/16 Page 8 of 17
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`Dist. LEXIS 93388 at *2.
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`Thought clarified some potential ambiguity in the Patent Local Rules by rejecting the
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`patentee’s argument that Patent L.R. 3-1(f) only requires conception date disclosures for “any
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`patent that claims priority to an earlier application.” Thought, 2015 U.S. Dist. LEXIS 137113 at
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`*13–15. And Thought also rejected the argument that the term “priority date” in Rule 3-1(f)
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`“refers solely to priority to an earlier application, and not necessarily to the date of conception
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`and reduction to practice.” Id. (citations and quotations omitted).
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`For Patent L.R. 3-1(f), patentees are not permitted to vaguely identify their conception and
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`reduction to practice dates with qualifying language such as “no later than.” See, e.g., Blue Spike,
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`LLC v. Adobe Sys., No. 14-1647, 2015 U.S. Dist. LEXIS 8778, at *13–*24 (N.D. Cal. Jan. 26,
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`2015) (striking without leave to amend the “no later than” language from a patentee’s Patent L.R.
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`3-1(f) disclosure). And patentees must identify a specific date, “not a start date, end date, or date
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`range.” Id. For Patent L.R. 3-2(b), patentees are required to “separately identify by production
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`number which documents correspond to each category.”
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`III.
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`FACTUAL BACKGROUND
`OpenTV served its Patent L.R. 3-1(f) and 3-2(b) disclosures on October 15, 2016. See Ex.
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`1. There, OpenTV asserted “a priority date at least as early as” the priority date “stated on the
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`face of” each asserted patent. Ex. 1 at 6. OpenTV did not disclose any intent to rely on any
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`earlier conception or reduction to practice dates, other than a June 2001 conception date for the
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`’169 Patent. Id. at 7. OpenTV stated it had “not produced privileged documentation with this
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`disclosure.” Id. OpenTV identified its Patent L.R. 3-2(b) disclosure documents as bates
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`numbered OPENTV2008-00008615 - OPENTV2008-00009148, which consisted of
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`approximately 500 pages of documents. Id.
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`On November 23, 2015, Apple served interrogatories on OpenTV, including one
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`requesting,
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`For each asserted claim of the OpenTV Asserted Patents, describe in detail the
`circumstances surrounding the conception and reduction to practice of the claimed
`invention, including, but not limited to the specific dates that you contend each
`asserted claim was conceived and reduced to practice; acts of diligence in
`reducing the claimed invention to practice; all evidence that you contend
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`Case 5:15-cv-02008-EJD Document 85 Filed 04/13/16 Page 9 of 17
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`corroborates said dates and/or diligence; the geographic location of and
`participants in such activity; and all persons with information concerning such
`circumstances and evidence.
`Ex. 2 at 12; Drummond Hansen Decl. ¶ 2. Apple also served Requests for Production on that
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`same date requesting supporting documentation for any alleged dates of conception and reduction
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`to practice. Ex. 10 at 7–10; Drummond Hansen Decl. ¶ 10. On December 7, 2015, Apple served
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`its invalidity contentions, identifying its prior art and the corresponding dates for that prior art.
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`See generally, Ex. 3.
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`On December 23, 2015, OpenTV provided its unverified response to Apple’s
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`Interrogatory No. 8. Ex. 2 at 12–14. In response to the interrogatory’s request for a description
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`of “all evidence” that “corroborates” the conception dates, OpenTV identified the same bates
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`range identified in its Patent L.R. 3-2(b) disclosure. Compare Ex. 2 at 13 with Ex. 1 at 7. Thus,
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`Apple sent OpenTV a letter requesting a meet and confer. Ex. 4 at 1–3. In that letter, Apple
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`asked OpenTV to confirm that the OPENTV2008-00008615 - OPENTV2008-00009148 bates
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`range was a complete identification of all evidence that OpenTV intended to rely on to support
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`the alleged conception dates for the asserted patents. Id. at 1.
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`On February 11, 2016, the parties held a meet and confer. Ex. 6 at 1. On that call,
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`OpenTV refused to commit to a date by which they would identify invention dates with certainty
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`and disclose all supporting documents, and refused to identify which of the 500 pages of
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`supporting documentation corresponded to which asserted patent. Id. at 1–2. Also, OpenTV
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`indicated that it was basing the June 2001 conception date on privileged documents that it had not
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`produced. Ex. 6 at 1.
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`Two weeks later, OpenTV backtracked on its L.R. 3-1(f) disclosure and its response to
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`Interrogatory No. 8 by alleging in an email that the’736 Patent was conceived on Sept. 14, 1995,
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`and stating that the file history for the ’736 Patent was the supporting documentation. Ex. 5 at 1;
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`Drummond Hansen Decl. ¶ 11. This new conception date predates some of Apple’s prior art. Ex.
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`3 at 13–16 (identifying the “Wistendahl” reference and others with priority dates during or before
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`Sept., 1995). OpenTV offered no explanation for why it had not disclosed this theory in its Patent
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`L.R. 3-1(f) disclosure on Oct. 15, 2015, and no explanation for why it had not identified the file
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`5
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`Case 5:15-cv-02008-EJD Document 85 Filed 04/13/16 Page 10 of 17
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`history in its Patent L.R. 3-2(b) disclosure. See id. Over a month later, OpenTV served a
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`supplemental unverified response to Interrogatory No. 8, which incorporated its alleged
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`September 14, 1995 conception date for the ’736 Patent. Ex. 8 at 3.
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`On March 4, 2016, Apple sent another letter to follow up on the meet and confer that took
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`place on February 11, 2016. Ex. 6 at 1. On March 14, 2016, OpenTV continued its backtracking,
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`and stated that it might allege “an invention date of
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`” for the ’740 Patent. Ex. 7 at 1.
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`OpenTV did not identify any supporting documentation. See id. OpenTV stated that “we cannot
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`confirm that we will never assert an earlier date, either in this litigation or in any inter partes
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`review proceeding you might request.” Id. This new possible
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` priority date also
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`predates some of Apple’s prior art. See Ex. 3 at 55–56.
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`IV.
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`THE COURT SHOULD PRECLUDE OPENTV FROM ASSERTING INVENTION
`DATES EARLIER THAN THOSE DISCLOSED IN ITS PATENT LOCAL RULE
`3-1(f) DISCLOSURES AND STRIKE ALL LATE DISCLOSURES OF EARLIER
`INVENTION DATES AND ALL QUALIFYING LANGUAGE
`A.
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`OpenTV seeks to flagrantly disregard its obligations under Patent Local
`Rules 3-1(f) and 3-2(b)
`Patent Local Rules 3-1(f) and 3-2(b) required OpenTV to disclose conception and
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`reduction to practice dates and corroborating documentation, and to identify the bates numbers
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`corresponding to that documentation. See Thought, 2015 U.S. Dist. LEXIS at *15, supra Part II.
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`OpenTV disclosed its invention dates and supporting documentation in accordance with the
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`Court’s Scheduling Order on October 15, 2015. See Ex. 1; Dkt. 58. But recently, OpenTV has
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`made it clear that OpenTV did not comply with its Rule 3-1(f) and 3-2(b) obligations. Instead,
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`OpenTV has begun changing its allegations regarding conception dates. OpenTV’s first change
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`was on February 26, 2016, when it alleged a conception date of Sept. 14, 1995 for the ’736
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`Patent. Ex. 5 at 1. This second change was egregious, because the allegedly supporting
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`document for the change is the file history of the ’736 Patent (see Ex. 5). This file history was in
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`OpenTV’s possession at least by Oct. 15, 2015, when OpenTV produced a copy of that file
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`history to Apple. Drummond Hansen Decl. ¶ 11. OpenTV’s second change was on March 14,
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`2016, when it alleged a possible invention date of
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` for the ’740 Patent. Ex. 7 at 1.
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`Even worse, OpenTV has made it clear that these and all other alleged priority dates are subject to
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`APPLE’S MOT. TO PRECLUDE
`5:15-CV-02008-EJD
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`Case 5:15-cv-02008-EJD Document 85 Filed 04/13/16 Page 11 of 17
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`further change. See, e.g., Ex. 7 (“we cannot confirm that we will never assert an earlier date”).
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`It is also likely that OpenTV has supporting documentation that it has refused to produce.
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`OpenTV cannot merely rely on inventor testimony to prove its alleged invention dates because
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`corroboration, typically in the form of documentary evidence, is required. See Taurus IP, 726
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`F.3d at 1324. OpenTV has identified no supporting documentation for the alleged June 2001
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`conception date of the ’169 Patent or for the alleged
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` invention date of the ’740
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`Patent. See Ex. 2 at 13; Ex. 7 at 1.
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`OpenTV has alleged that the documents supporting its June 2001 conception date for the
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`’169 Patent are privileged. Ex. 6 at 1. If OpenTV does not want to introduce evidence proving
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`the June 2001 conception date on privilege grounds, then it will be unable to carry its burden of
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`proving an earlier priority date. But OpenTV may be planning to produce more documents in
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`support of the June 2001 date at a later time. If OpenTV had any documents supporting its June
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`2001 conception date, then it was required to produce them on October 15, 2015, and specifically
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`identify the bates range corresponding to those documents. See Dkt. 58; Patent L.R. 3-2(b);
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`Thought, 2015 U.S. Dist. LEXIS at *15, supra Part II. It is too late to do so now, over five
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`months past the deadline.
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`In sum, OpenTV seeks to flagrantly disregard its obligations under Patent Local Rules 3-
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`1(f) and 3-2(b) by continuing to disclose invention dates and supporting documentation well after
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`the deadline for such disclosures.
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`B.
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`Apple relied on OpenTV’s Local Rule 3-1(f) and 3-2(b) disclosures in
`formulating its invalidity defenses and would suffer significant prejudice if
`OpenTV were allowed to rely on priority dates other than those alleged in its
`October 15, 2015 disclosure
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`In order to formulate its invalidity defenses, Apple has searched for and evaluated a large
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`body of prior art, including prior art dated after OpenTV’s new priority dates. Drummond
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`Hansen Decl. ¶ 12. The majority of the work required to evaluate possible prior art stems from
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`the fact that many of the terms used in the asserted claims are ambiguous. Id. This ambiguity is
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`what leads to the claim construction process specified in the Court’s Patent Local Rules. See
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`Patent L.R. 4. To attempt to clarify all potentially dispositive ambiguities, the parties submitted a
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`APPLE’S MOT. TO PRECLUDE
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`Case 5:15-cv-02008-EJD Document 85 Filed 04/13/16 Page 12 of 17
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`list of joint and disputed claim constructions in the Joint Claim Construction and Prehearing
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`Statement on Jan. 29, 2016. Dkt. 74; Dkt. 58. Apple’s agreed and disputed constructions are, in
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`part, oriented toward clarifying whether the scope of the asserted claims extends to what is
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`disclosed by the prior art. Drummond Hansen Decl. ¶ 12. If certain of Apple’s prior art are no
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`longer relevant to this action (because they are predated by new conception dates), then Apple
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`will have wasted considerable time and effort. Drummond Hansen Decl. ¶ 12. And if certain key
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`prior art is no longer available, Apple may have to significantly revise its invalidity defenses.
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`Drummond Hansen Decl. ¶ 12.
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`Late production of the supporting documentation may impact the Court’s claim
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`construction proceedings for the additional reason that the documentation is likely to consist of
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`inventor notebooks or other evidence created by the inventor. See, e.g., Singh v. Brake, 222 F.3d
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`1362, 1366 (Fed. Cir. 2000) (discussing corroborating evidence consisting of inventor
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`notebooks). Such evidence can illuminate the meaning of the claim terms and the scope of the
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`invention.
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`The waste and inefficiency that OpenTV’s actions have caused is impossible to estimate
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`with any certainty, primarily because OpenTV still has not committed to any particular invention
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`dates. If OpenTV were permitted to rely on invention dates other than those in its October 15,
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`2015 Patent L.R. 3-1(f) disclosure, then Apple would need to reevaluate significant portions of its
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`invalidity case, along with significant portions of the claim construction process. In such an
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`eventuality, all claim construction deadlines would need to be shifted forward to a date late
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`enough for Apple to reformulate its invalidity defenses and corresponding claim constructions to
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`account for whatever priority dates OpenTV eventually commits to.
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`C.
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`The appropriate remedy is to preclude OpenTV from asserting invention
`dates earlier than those disclosed in its Patent Local Rule 3-1(f) disclosures
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`The Federal Circuit has evaluated situations of non-compliance with Patent L.R. 3-1 and
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`explained that district courts may “impose any ‘just’ sanction for the failure to obey a scheduling
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`order, including ‘refusing to allow the disobedient party to support or oppose designated claims or
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`defenses, or prohibiting that party from introducing designated matters in evidence.’” O2 Micro
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`APPLE’S MOT. TO PRECLUDE
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`Case 5:15-cv-02008-EJD Document 85 Filed 04/13/16 Page 13 of 17
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`Int’l, Ltd. v. Monolithic Power Sys., 467 F.3d 1355, 1363 (Fed. Cir. 2006), citing Fed. R. Civ. P.
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`16(f)(1)(C) and 37(b)(2)(B).
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`In Thought, this Court applied a preclusion remedy when faced with a patentee’s late
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`compliance with Patent L.R. 3-2(b). See 2015 U.S. Dist. 137113 at *9–17. There, the patentee
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`asserted an invention date of May 1996 for the sole patent-in-suit in an interrogatory response on
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`March 11, 2013. Id. at * 9. However, at that time, the patentee provided no supporting
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`documentation. Id. at *10–11. The patentee then served its Patent L.R. 3-1 and 3-2 disclosures
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`on April 12, 2013, which “asserted that all patents other than the ones it specifically discussed
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`‘claim priority as of their filing dates at the latest.’” Id. The defendant served its invalidity
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`contentions on August 2, 2013, in reliance on the patentee’s “failure to provide any evidence in
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`support of the earlier invention date.” Id. at *11. When the patentee later attempted to introduce
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`the supporting documentation, the defendant requested the Court “preclude [the patentee] from
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`asserting an invention date prior to the filing date of the [patent-in-suit].” Id. at *11. The Court
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`granted the motion, finding that “[n]either [the patentee’s] Rule 3-1 and 3-2 disclosures, nor its
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`responses to [defendant’s] interrogatories, provided a response sufficient for [the patentee] to rely
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`on a May, 1996 invention date.” Id. at *17.
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`Here, OpenTV’s actions are more egregious than those in Thought. OpenTV has now
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`changed its alleged invention dates twice and has provided no supporting documentation for
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`several of those dates. For example, it has not provided documentary support for either the
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`alleged June 2001 conception date of the ’169 Patent, or for the
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` invention date for
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`the ’740 Patent. See supra, Part IV.A. As in Thought, Apple has relied on the invention dates
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`disclosed in OpenTV’s Patent L.R. 3-1 disclosure in formulating its defenses. See supra, Part
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`IV.B. OpenTV should not be allowed to hide the ball on critical facts by disregarding the Court’s
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`Scheduling Order and the requirements of the Patent Local Rules. If permitted to do so, OpenTV
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`would frustrate the purpose of Patent L.R. 3-1 and 3-2, which is to allow the parties to crystallize
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`their theories early in patent litigation. See Thought, 2015 U.S. Dist. LEXIS 137113 at *16.
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`This Court has applied the remedy requested here in cases other than Thought as well.
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`See, e.g., Harvatek, 2015 U.S. Dist. LEXIS 93388 at *1 (striking patentee’s supplemental
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`APPLE’S MOT. TO PRECLUDE
`5:15-CV-02008-EJD