Case 5:15-cv-02008-EJD Document 93 Filed 05/04/16 Page 1 of 16
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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
`
`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 REPLY IN SUPPORT
`OF ITS MOTION TO PRECLUDE
`RELIANCE ON CERTAIN
`INVENTION DATES AND TO STRIKE
`CERTAIN ALLEGATIONS
`
`Judge: Honorable Nathanael Cousins
`Hearing Time: 1:00 p.m.
`Hearing Date: June 1, 2016
`Courtroom: San Jose Courtroom 7
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`APPLE’S REPLY ISO MOT. TO PRECLUDE
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`Case 5:15-cv-02008-EJD Document 93 Filed 05/04/16 Page 2 of 16
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`III.
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`IV.
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`2.
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`3.
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`B.
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`C.
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`INTRODUCTION .............................................................................................................. 1
`OPENTV DID NOT COMPLY WITH PATENT L.R. 3-1(F) OR 3-2(B) ......................... 2
`A.
`OpenTV’s interpretation of Patent L.R. 3-1(f) and 3-2(b) is wrong ....................... 2
`1.
`Thought and Harvatek interpret Patent L.R. 3-1(f) to require the
`patentee to disclose alleged conception dates ............................................. 2
`OpenTV’s alleged distinction between conception dates and priority
`dates is wrong .............................................................................................. 3
`Judge Gilliam’s oral ruling has been superseded by persuasive
`written decisions ......................................................................................... 5
`OpenTV establishes no diligence to support its assertion of a September
`14, 1995 conception date for the ’736 Patent .......................................................... 6
`It is too late for OpenTV to demonstrate diligence to produce documents
`supporting its alleged June 2001 conception date for the ’169 Patent .................... 8
`OpenTV Should Be Precluded From Changing Its Conception Date
`Allegation For The ’740 Patent ............................................................................... 9
`OpenTV has not complied with its discovery obligations and therefore its
`interrogatory responses should be struck to the extent they provide late
`conception dates .................................................................................................... 10
`APPLE WILL BE PREJUDICED IF OPENTV IS NOT REQUIRED TO
`COMPLY WITH PATENT L.R. 3-1(f) AND 3-2(b) ....................................................... 10
`A.
`OpenTV’s arguments regarding prejudice are unsupported and wrong ............... 11
`B.
`OpenTV’s discussion of the impact of OpenTV’s conception dates on
`Apple’s invalidity defenses supports granting this Motion................................... 12
`CONCLUSION ................................................................................................................. 13
`
`D.
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`E.
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`APPLE’S REPLY ISO MOT. TO PRECLUDE
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`Case 5:15-cv-02008-EJD Document 93 Filed 05/04/16 Page 3 of 16
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`
`
`Cases
`
`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Burroughs Wellcome Co. v. Barr Labs.,
`40 F.3d 1223 (Fed. Cir. 1994) .....................................................................................................4
`
`Harvatek Corp. v. Cree, Inc.,
`No. 14-5353, 2015 U.S. Dist. LEXIS 93388 (N.D. Cal. July 17, 2015) ........................... passim
`
`Johnson v. Mammoth Recreations, Inc.,
`975 F.2d 604 (9th Cir. 1992) .......................................................................................................6
`
`In re Katz Interactive Call Processing Patent Litig.,
`2009 U.S. Dist. LEXIS 132104 (C.D. Cal. Aug. 3, 2009) ........................................................10
`
`Mahurkar v. CR Bard, Inc.,
`79 F.3d 1572 (Fed. Cir. 1996) .....................................................................................................4
`
`Thought, Inc. v. Oracle Corp.,
`No. 12-5601, 2015 U.S. Dist. LEXIS 137113 (N.D. Cal. Oct. 7, 2015) ........................... passim
`
`Statutes
`
`35 U.S.C. § 102 .................................................................................................................................4
`
`Other Authorities
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`Fed. R. Civ. P. 26 ............................................................................................................................10
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`Patent L.R. 3-1 and 3-2 ........................................................................................................... passim
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`APPLE’S REPLY ISO MOT. TO PRECLUDE
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`Case 5:15-cv-02008-EJD Document 93 Filed 05/04/16 Page 4 of 16
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`INTRODUCTION
`OpenTV’s Opposition (“Opp.”) interprets the word “priority date” in Patent L.R. 3-1(f) to
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`
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`I.
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`only include filing dates of patents, not conception dates. That interpretation of Patent L.R. 3-1(f)
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`has been explicitly rejected by this Court in multiple cases. And the distinction OpenTV attempts
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`to draw between the term “conception date” and the term “priority date” implicitly conflicts with
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`the use of those terms in the statutes written by Congress and the interpretation of those statutes
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`by the Federal Circuit. Apple’s Motion (“Mot.”), in contrast, correctly relies on the Thought, Inc.
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`v. Oracle Corp., No. 12-5601, 2015 U.S. Dist. LEXIS 137113 (N.D. Cal. Oct. 7, 2015), and
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`Harvatek Corp. v. Cree, Inc., No. 14-5353, 2015 U.S. Dist. LEXIS 93388 (N.D. Cal. July 17,
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`2015), opinions that interpret this Court’s Patent Local Rules and apply those rules in nearly
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`identical circumstances. OpenTV’s lengthy Opposition buries its short discussion of those cases
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`and fails to offer any meaningful distinctions. Instead, OpenTV relies on an oral ruling by Judge
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`Gilliam in a separate case. To the extent Judge Gilliam’s ruling conflicts with Thought and
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`Harvatek, this Court should adhere to Thought and Harvatek because they are more persuasive,
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`they explicitly reject OpenTV’s arguments, and they involve nearly identical factual
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`circumstances.
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`Rather than provide a reasoned application of law to facts, OpenTV’s motion provides
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`hyperbole, calling Apple’s motion “extreme,” “unwarranted,” and “disingenuous,” and alleges
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`that Apple’s motion presents a “parade of horribles.” OpenTV’s hyperbole and refusal to
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`meaningfully address Thought, Harvatek, and the other cases cited in Apple’s motion signals the
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`weakness of OpenTV’s position.
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`In its opening brief, Apple argued OpenTV could not demonstrate diligence at this late
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`hour to support good cause to amend its Patent Local Rule 3-1(f) and 3-2(b) disclosures. In
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`response, OpenTV chose to make no attempt to demonstrate any diligence. Because OpenTV
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`implicitly concedes it cannot demonstrate diligence, Apple’s motion should be granted. The
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`conception events in question occurred over ten years ago, and OpenTV has presented no reason
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`why it could not have provided information about those events by the October 15, 2015 deadline.
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`APPLE’S REPLY ISO MOT. TO PRECLUDE
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`Case 5:15-cv-02008-EJD Document 93 Filed 05/04/16 Page 5 of 16
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`II.
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`OPENTV DID NOT COMPLY WITH PATENT L.R. 3-1(F) OR 3-2(B)
`A.
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`OpenTV’s interpretation of Patent L.R. 3-1(f) and 3-2(b) is wrong
`1. Thought and Harvatek interpret Patent L.R. 3-1(f) to require the
`patentee to disclose alleged conception dates
`OpenTV boldly argues that “none of the cases Apple cites requires disclosure of
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`conception dates in response to Patent L.R. 3-1(f).” Opp. at 10:14–:15. To the contrary, Apple’s
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`Motion quotes Thought and Harvatek, which state: “Patent L.R. 3-1(f) particularly requires a
`patent holder to assert a specific date of conception, not a date range, . . . .” Thought, 2015 U.S.
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`Dist. LEXIS 137113 at *14 (citing Harvatek, 2015 U.S. Dist. LEXIS 137113 at *5) (emphasis
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`added). Thus, these cases explicitly require disclosure of conception dates. Mot. at 3:16–:18.
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`OpenTV makes two thin attempts to distinguish Thought. First, OpenTV argues that
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`Thought “chose to follow the reasoning in Harvatek” because the patentee “had not cited any case
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`to show that Harvatek was incorrect.” Opp. at 11:3–:11. But Thought followed Harvatek not
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`based on a lack of precedent to the contrary, but instead based on the purpose of Patent L.R. 3-
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`1(f), as explained in Harvatek and expanded upon and endorsed by Thought. See Thought, 2015
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`U.S. Dist. LEXIS 137113 at *13–*17. Thought explained that the purpose of the rule was to
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`allow the parties to crystallize their theories early in litigation and avoid gamesmanship. Id. at
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`*16. The mere fact that Judge Gilliam reached a different conclusion is unpersuasive considering
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`his remarks at oral argument did not address the purpose of Patent L.R. 3-1(f).
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`OpenTV’s second distinction has two parts, and the first does not have any apparent
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`relevance. OpenTV incorrectly argues that the patentee’s documents (i.e., evidence) in Thought
`did not or could not prove the patentee’s alleged conception date (i.e., a fact). Opp. at 11:12–:14.
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`That argument reflects a misunderstanding of civil procedure. Thought resulted from a pretrial
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`motion to preclude, not a summary judgment motion or bench trial. No facts could have been
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`proven or disproven in Thought, and the court had no reason to consider those issues. See 2015
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`U.S. Dist. LEXIS 137113 at *13–*17. In the next part, OpenTV argues that the patentee in
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`Thought failed to seek leave to amend, whereas OpenTV claims that it will seek leave to amend
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`eventually, if necessary. Opp. at 11:14–:24. But OpenTV will never seek leave to amend its
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`APPLE’S MOT. TO PRECLUDE
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`Case 5:15-cv-02008-EJD Document 93 Filed 05/04/16 Page 6 of 16
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`Patent L.R. 3-1(f) disclosure because it does not believe Patent L.R. 3-1(f) requires disclosure of
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`conception dates. OpenTV has committed to relying on a late disclosed conception date for the
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`’736 Patent, and refuses to move to amend, so this motion is ripe for resolution. Additionally, the
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`motion is also ripe because, as explained in Apple’s Motion, OpenTV cannot demonstrate the
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`diligence required to amend its contentions and produce additional documentation at this late
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`hour, and Apple will suffer prejudice if OpenTV is allowed to do so. Mot. at 10:10–12:27.
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`OpenTV attempts to distinguish Harvatek by incorrectly alleging that it “focused on [the
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`patentee’s] use of a date range rather than a specific date for the priority date” at issue. Opp. at
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`10:20–11:2. In fact, Harvatek granted a motion “to strike patent holder's supplemental
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`production of evidence of the conception date of its invention and to preclude patent holder from
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`asserting a conception date prior to filing the application for the patent-in-suit.” Harvatek, 2015
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`U.S. Dist. LEXIS 137113 at *1. Thus, OpenTV’s argument ignores the analysis, holding, and
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`guidance provided by Harvatek, and instead attempts to marginalize the case on a non-existent
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`ground.
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`OpenTV argues that its non-committal, “at least as early as” language does not violate
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`Harvatek and Blue Spike because OpenTV was “unaware” of Apple’s objection to that language
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`until April 4, 2016. Opp. at 10:24–:27. OpenTV’s argument is irrelevant—the case law holds
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`that “at least as early as” language does not comply with Patent L.R. 3-1(f) and shall be struck.
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`Harvatek, 2015 U.S. Dist. LEXIS 137113 at * 1; Blue Spike, 2015 U.S. Dist. LEXIS 8778 at *23–
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`24. OpenTV offers no case law or argument to the contrary. Additionally, OpenTV
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`misunderstands its own “at least as early as” language when it argues that the request to strike is
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`irrelevant because OpenTV does not plan to assert a later conception date. Opp. 10:26–11:2.
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`The language “at least as early as” is relevant to Apple’s motion to strike because it implies that
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`OpenTV may seek an earlier date, which is directly contrary to Harvatek and Blue Spike.
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`2.
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`OpenTV’s alleged distinction between conception dates and priority
`dates is wrong
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`OpenTV incorrectly argues that the term “conception date” is distinct from the term
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`“priority date” for the purposes of Patent L.R. 3-1(f). Opp. at 8:11–10:13. As explained in
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`APPLE’S MOT. TO PRECLUDE
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`Case 5:15-cv-02008-EJD Document 93 Filed 05/04/16 Page 7 of 16
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`Apple’s opening motion, that exact argument was considered in Thought and rejected. Mot. at
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`4:2–:7. OpenTV ignores Thought’s rejection of that argument, and instead cites to case law that
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`says nothing about the proper interpretation of Patent L.R. 3-1(f). See Opp. at 8:19–:26.
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`Contrary to OpenTV’s arguments, Congress and the Federal Circuit interpret a conception
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`date to be the priority date in circumstances relevant to Patent L.R. 3-1(f). Mahurkar v. CR Bard,
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`Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996), explains that the “conception date” becomes the
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`“priority date” if the patent owner can prove the inventor conceived of the invention before the
`filing date of the patent application. Specifically, Mahurkar explained that 35 U.S.C. § 102(g)1
`“contains the basic rule for determining priority,” and that determination is based on conception
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`and reduction to practice dates and activities. 79 F.3d at 1577 (emphasis added). Indeed, §102(g)
`states: “In determining priority of invention under this subsection, there shall be considered not
`only the respective dates of conception and reduction to practice of the invention, but also the
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`reasonable diligence of one who was first to conceive and last to reduce to practice, from a time
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`prior to conception by the other.” 35 U.S.C. § 102(g) (emphases added).
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`Tellingly, OpenTV avoids providing any response to Mahurkar, which was cited in
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`Apple’s Motion on this exact issue. Mot. at 3:1–:6. OpenTV also avoids any mention of 35
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`U.S.C. § 102(g) in its long list of statutes. Opp. at 8:21–:22. And the cases cited by OpenTV do
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`not hold, suggest, or even discuss whether a conception date can be a priority date. Instead, for
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`example, Burroughs Wellcome Co. v. Barr Labs., 40 F.3d 1223, 1227–28 (Fed. Cir. 1994),
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`directly contradicts OpenTV’s argument—the majority of its analysis is about whether the
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`patentee’s evidence of conception was strong enough to establish priority to the alleged
`conception date. See id. at 1229 (“Thus, in awarding priority to Smith based on his constructive
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`reduction to practice, the court relied not on the inherent unpredictability of the science, but on
`the absence of any evidence to corroborate an earlier conception for either of the parties.”
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`(emphases added)).
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`Rather than cite statutes or Federal Circuit cases that might support its argument, OpenTV
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`1 Section 102(g) was updated by the American Invents Act (“AIA”) in 2013, but the old, pre-AIA
`version applies in this case. Mot. at 2:26–:28.
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`APPLE’S MOT. TO PRECLUDE
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`Case 5:15-cv-02008-EJD Document 93 Filed 05/04/16 Page 8 of 16
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`relies on Judge Gilliam’s decision, even though he did not provide a written opinion nor explain
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`his reasoning in any detail. Opp. at 9:10–:15. To the extent Judge Gilliam determined the term
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`“priority date” cannot include a “conception date,” his interpretation contradicts Thought, the
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`purpose of Patent L.R. 3-1(f), and the use of the terms “priority” and “conception date” by
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`Congress and the Federal Circuit.
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`OpenTV argues that interpreting a “conception date” to be the “priority date” for purposes
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`of Patent L.R. 3-1(f) “would be nonsensical” given Patent L.R. 3-2(b)’s requirement that the
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`patentee disclose conception documents that predate the priority date. Opp. at 8:26–9:9. Thought
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`and Harvatek interpreted the term “priority date” to refer to “conception date” because, rather
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`than being nonsensical, that reading is supported by the purpose of the rule, which is to allow the
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`parties to crystallize their theories early in litigation and avoid gamesmanship. Mot. at 3:22–4:1.
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`Additionally, Patent L.R. 3-2(b) requires the patentee to produce documents that predate the
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`conception date because, given the corroboration rule, those documents are likely to be important
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`evidence that will prove or disprove the conception date allegation. See Mot. at 3:5–:10. Here,
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`Apple must have those documents in order to evaluate the strength of OpenTV’s priority claim.
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`OpenTV also complains that Apple did not raise the issues in this Motion earlier. Opp. at
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`9:16–10:10. But Apple did not know OpenTV was going to disregard Patent L.R. 3-1(f) until
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`February 26, 2016, when OpenTV first committed to departing from its Patent L.R. 3-1(f)
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`disclosure regarding the ’736 Patent. Mot. at 6:21–7:1; Dkt. 85-7. Apple sent an email raising
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`these issues and requesting a meet and confer on March 29, 2016. Dkt. 91-5 at 3. OpenTV
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`should not be complaining given it admits it failed to identify its alleged conception date and
`supporting documents for the ’736 Patent until February 26, 2016—over four months past the
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`deadline. That it took Apple one month to request a meet and confer to discuss OpenTV’s failure
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`to comply with the rules is inconsequential.
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`3.
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`Judge Gilliam’s oral ruling has been superseded by persuasive written
`decisions
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`Judge Gilliam did not issue a written opinion, so the parties can only speculate regarding
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`the reasons for his decision. In the context of asking questions at oral argument, Judge Gilliam
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`Case 5:15-cv-02008-EJD Document 93 Filed 05/04/16 Page 9 of 16
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`indicated that he did not believe Patent L.R. 3-1(f) required disclosure of conception dates. Opp.
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`at 3:22–:25. But he did not provide any further explanation or explicitly state the reasons for his
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`ruling. This Court has since issued written decisions in Harvatek and Thought that analyzed the
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`same issue and reached different conclusions. Those decisions were issued before OpenTV
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`provided its Patent L.R. 3-1(f) and 3-2(b) disclosures. And the prior dispute between the parties
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`placed OpenTV on notice that disclosure of conception dates and supporting documentation was
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`critically important to Apple. Considering the conception dates and supporting documentation
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`came into existence over ten years ago, there was no reason OpenTV could not have complied
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`with Thought and Harvatek and provided accurate conception dates and all supporting documents
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`on the October 15, 2015 deadline.
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`B.
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`OpenTV establishes no diligence to support its assertion of a September 14,
`1995 conception date for the ’736 Patent
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`OpenTV does not dispute that it did not allege a September 14, 1995 conception date for
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`the ’736 Patent in its Patent L.R. 3-1(f) disclosure and does not dispute that it intends to allege
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`that date as the conception date in this case. Opp. at 11:25–12:20. OpenTV also does not dispute
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`that it will not move to amend or attempt to show diligence to support good cause to amend
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`because it does not believe Patent L.R. 3-1(f) requires disclosure of conception dates. Id. Thus,
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`this issue is ripe for resolution.
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`Under the law of the Ninth Circuit, OpenTV must show good cause to change its
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`conception date for the ’736 Patent. Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 609
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`(9th Cir. 1992). For good cause, “the focus of the inquiry is upon the moving party’s reasons for
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`seeking modification . . . [i]f that party was not diligent, the inquiry should end.” Id. at 609; Mot.
`at 10:10–11:7. OpenTV makes no attempt to show diligence, for it knows it cannot. See Opp. at
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`11:25–12:20. As explained in Softvault Sys., Inc. v. Microsoft Corp., a patentee’s failure to
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`investigate public documents to identify its conception date is the polar opposite of diligence.
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`No. 06-0016, 2007 U.S. Dist. LEXIS 33060, at *2 (E.D. Tex. May 4, 2007); Mot. at 11:8–:28.
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`Because OpenTV cannot demonstrate diligence, the inquiry is ended and the Court should
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`preclude OpenTV from asserting the September 14, 1995 conception date for the ’736 Patent.
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`APPLE’S MOT. TO PRECLUDE
`5:15-CV-02008-EJD
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`6
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`Case 5:15-cv-02008-EJD Document 93 Filed 05/04/16 Page 10 of 16
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`Even if OpenTV had attempted to show diligence, OpenTV’s other arguments would be
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`unavailing. OpenTV’s arguments are backwards because they essentially amount to an incorrect
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`assertion that Apple bore the burden of diligence and Apple was supposed to have complied with
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`Patent L.R. 3-1(f) and 3-2(b) on behalf of OpenTV. See Opp. at 11:25–12:20. In other words,
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`OpenTV is incorrectly asserting that Apple was supposed to have (1) investigated OpenTV’s
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`potential conception date, which is often based on evidence in the possession of only the patentee,
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`(2) predicted OpenTV’s eventual conception date allegation, and (3) prepared its invalidity
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`defenses on the basis of that prediction rather than the conception dates OpenTV alleged in its
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`Patent L.R. 3-1(f) disclosure. See Opp. at 11:25–12:20. This inefficient process, which is
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`inherently proposed by OpenTV, is contrary to this Court’s Local Patent Rules. The purpose of
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`Patent L.R. 3-1(f) and 3-2(b) is “to crystallize the parties’ theories early in litigation.” Thought,
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`2015 U.S. Dist. LEXIS 137113 at *16. This purpose “would be frustrated if Patent Local Rule 3-
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`1 and 3-2 were read to allow a plaintiff to avoid specifying a conception date or provide any
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`documents that support this date” because a patentee’s “failure to identify a specific conception
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`date [allows] it to reverse the order of the procedure contemplated by our Patent Local Rules,
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`giving it a preview of [the accused infringer’s] invalidity contentions before offering a concrete
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`conception date.” Id. (quoting Harvatek, 2015 U.S. Dist. LEXIS 93388 at *6).
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`OpenTV alleges Apple was on “notice” of OpenTV’s allegation of the September 14,
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`1995 conception date because OpenTV produced one document (a prosecution history) among
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`thousands of pages of other documents. Opp. at 11:25–12:20. But Patent L.R. 3-1(f) does not
`permit compliance by document dump. Instead, Patent L.R. 3-1(f) requires the patentee identify a
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`specific conception date, which OpenTV did not do.
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`OpenTV’s allegation that Apple is “seeking to insulate itself from its own knowledge”
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`that OpenTV would assert a September 14, 1995 conception date is false. See Opp. at 12:15–:20.
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`In OpenTV’s Patent L.R. 3-1(f) disclosure, OpenTV alleged the priority date for the ’736 Patent
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`was February 8, 1996. Dkt. 85-3 at 6:8–:9. Thus, Apple knew that OpenTV was asserting
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`February 8, 1996 as the priority date, and had no reason to predict that OpenTV was wrong about
`its own allegation and would eventually change its mind and decide to assert a September 14,
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`APPLE’S MOT. TO PRECLUDE
`5:15-CV-02008-EJD
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`7
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`Case 5:15-cv-02008-EJD Document 93 Filed 05/04/16 Page 11 of 16
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`1995 priority date instead.
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`Indeed, OpenTV’s arguments reflect a fundamental misunderstanding of Patent L.R. 3-
`1(f). That rule does not require OpenTV to prove the fact of the conception date—facts must be
`proven at trial. Instead, Patent L.R. 3-1(f) requires OpenTV to disclose its allegation about the
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`fact it will try to prove at trial. Apple cannot simply search public documents to predict
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`OpenTV’s allegations about facts, because an allegation about the fact of a conception date is
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`based on strategic considerations, judgment, and the totality of evidence, such as inventor
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`testimony, third party witness testimony, and various public and nonpublic documents that Apple
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`may not have.
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`C.
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`It is too late for OpenTV to demonstrate diligence to produce documents
`supporting its alleged June 2001 conception date for the ’169 Patent
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`Apple’s Motion argues that OpenTV should be precluded from producing additional
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`documentation to support its alleged June 2001 conception date for the ’169 Patent. Mot. at
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`9:17–:26; Dkt. 85-1 (Apple’s Proposed Order). Rather than directly address this argument,
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`OpenTV first sets up a straw man—it argues that “OpenTV expressly identified its claim of a
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`June 2001 date for the ’169 Patent disclosures” and therefore, Apple is wrong when it says
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`OpenTV is “hiding the ball.” Opp. at 12:21–:28. Of course, Apple’s motion identified OpenTV’s
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`June 2001 conception date allegation, did not ask for OpenTV to be precluded from asserting that
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`date, and did not allege OpenTV was hiding that alleged date. Mot. at 4:19–:20; Dkt. 85-1.
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`Rather than address Apple’s arguments, OpenTV’s Opposition creates non-existent disputes.
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`OpenTV is “hiding the ball” because OpenTV has failed to produce documentary
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`evidence supporting its June 2001 conception date, which it is required to produce by Patent L.R.
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`3-2(b). Mot. 9:17–:26. OpenTV’s confusion again arises from its misunderstanding of the
`difference between allegations and facts. Apple must have the evidence that supports OpenTV’s
`conception date allegations in order to take further discovery and evaluate the merit of those
`allegations, i.e., whether OpenTV will be able to prove the fact of its alleged conception date at
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`trial. By hiding its evidence, possibly until the day of trial, OpenTV is simply attempting a trial
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`by ambush strategy that the federal courts have roundly rejected by instituting rules like the
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`APPLE’S MOT. TO PRECLUDE
`5:15-CV-02008-EJD
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`8
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`Case 5:15-cv-02008-EJD Document 93 Filed 05/04/16 Page 12 of 16
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`Patent Local Rules, which instead require the parties to “crystallize” their “theories early in
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`litigation.” Thought, 2015 U.S. Dist. LEXIS 137113 at *16.
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`Next, OpenTV argues that whether it “might” produce additional documents to support its
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`June 2001 date is not before the Court and is irrelevant. Opp. at 13:5–:17. OpenTV is wrong—
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`that is exactly the issue Apple is bringing to the Court. Thought and Harvatek both precluded
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`patentees from asserting conception dates where the patentees did not timely disclose those
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`conception dates pursuant to Patent L.R. 3-1(f) and 3-2(b).
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`OpenTV also argues that Judge Gilliam interpreted the Patent Local Rules to not require
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`OpenTV to determine whether to immediately waive privilege. Opp. at 13:8–:9. But the Patent
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`Local Rules required OpenTV to identify conception dates and produce supporting
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`documentation over five months ago. The rules do not provide any exception that would allow
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`OpenTV to claim privilege in order to hide its supporting documentation until over five months
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`past the deadline, only to reveal its evidence long after previewing Apple’s invalidity case. A
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`contrary interpretation would conflict with Thought and Harvatek, which explain that the purpose
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`of the rules is to allow the parties to crystallize their theories early in litigation and avoid
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`gamesmanship. See Mot. at 3:22–:27. The conception events in question occurred over ten years
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`ago, and there was no reason for OpenTV to wait to disclose its evidence and allegations.
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`Finally, in response to Apple’s request that the June 2001 date range be limited to June 30,
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`2001, OpenTV simply asks the Court not to issue a ruling while it conducts its supposedly
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`ongoing privilege investigation. Opp. at 13:13–:17. But, as explained above, it is too late for
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`OpenTV to show any diligence in its privilege investigation. And, as explained in Blue Spike
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`(which OpenTV ignores), Patent L.R. 3-1(f) requires identification of a date, not a “date range.”
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`Mot. at 13:3–:8. Thus, the rule is applicable, Apple’s interpretation is supported by precedent,
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`and Apple requests the Court rule on the motion.
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`D.
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`OpenTV Should Be Precluded From Changing Its Conception Date
`Allegation For The ’740 Patent
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`OpenTV’s discussion of the conception date for the ’740 Patent is again absent of any
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`attempt to show diligence in their alleged investigations. See Opp. at 13:18–:28. For that reason
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`APPLE’S MOT. TO PRECLUDE
`5:15-CV-02008-EJD
`
`9
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`Case 5:15-cv-02008-EJD Document 93 Filed 05/04/16 Page 13 of 16
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`alone, OpenTV should be precluded from changing its conception date allegation or producing
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`additional documents in the future to support that allegation. OpenTV’s arguments also further
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`reinforce that, even now, five months past the deadline, OpenTV is still considering further
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`changes to its conception date allegations. Thus, Apple’s Motion is timely and should be granted,
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`for the same reasons nearly identical motions were granted in Thought and Harvatek.
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`E.
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`OpenTV has not complied with its discovery obligations and therefore its
`interrogatory responses should be struck to the extent they provide late
`conception dates
`Apple served Interrogatory No. 8 regarding conception dates to seek further details
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`surrounding the conception dates OpenTV was required to disclose pursuant to Patent L.R. 3-1(f)
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`and 3-2(b). Mot. at 4:24–5:2. OpenTV incorrectly argues that its responses to Interrogatory No.
`8 provides the “same information” OpenTV provided in its Patent Local Rule disclosures. Opp.
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`at 14:7–:9 (emphasis added). In fact, as OpenTV admits, its interrogatory responses provide a
`conception date allegation for the ’736 Patent that is different than the allegation provided in
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`OpenTV’s Patent L.R. disclosures. Opp. at 14:8–:12. Thus, Apple brought this motion to strike
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`that different allegation from OpenTV’s interrogatory response because it constitutes a violation
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`of Patent L.R. 3-1(f). Mot. at 10:5–:9. In response, OpenTV essentially argues that federal
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`courts cannot strike portions of interrogatory responses because parties responding to
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`interrogatories have a duty to supplement under Fed. R. Civ. P. 26(e)(1). Opp. at 10:7–:14.
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`OpenTV’s position is unsupported by any reasoning or case law, and district courts frequently
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`strike late interrogatory responses, which has the effect of precluding the responding party from
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`making the struck allegation a