Case 6:21-cv-00984-ADA Document 30 Filed 03/08/22 Page 1 of 4
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`JAWBONE INNOVATIONS, LLC,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`DISCOVERY DISPUTE ORDER
`
`Civil Action 6:21-cv-00984-ADA
`
`
`
`
`
`The Court rules on the following discovery dispute between Plaintiff and Defendant.
`
`Apple’s Statement
`
`The immense scope of Jawbone Innovations’s infringement case is untenable because
`
`Jawbone Innovations has asserted an excessive number of claims. With the exception of the ’543
`
`Patent, Jawbone Innovations has asserted every claim of every asserted patent for a total of 203
`
`claims. What’s more, Jawbone Innovations asserts all 203 claims against over 50 Apple products,
`
`including “all versions and variants” of MacBooks, iPhones, and AirPods manufactured since
`
`2015. The sheer number of asserted claims against the identified accused products contradicts the
`
`purpose of infringement contentions: to “streamline discovery and narrow the issues for claim
`
`construction, summary judgment, and trial.” Mobile Telecomms. Techs., LLC v. Blackberry Corp.,
`
`No. 3:12-CV-1652, 2016 WL 2907735, at *1 (N.D. Tex. May 17, 2016); see also Quartz Auto
`
`Techs. LLC v. Lyft, Inc., 6:20-cv-00156-ADA (Albright, J.) (W.D. Tex. July 4, 2020) (ordering
`
`plaintiff to narrow number of asserted claims to 50 prior to exchanging claim terms for
`
`construction). As just one example of the untenable nature of Jawbone Innovations’s assertion,
`
`this Court limits the total number of claim terms to be construed to 12 terms when more than five
`
`

`

`Case 6:21-cv-00984-ADA Document 30 Filed 03/08/22 Page 2 of 4
`
`patents are asserted. The parties will be hard pressed to arrive at just 12 terms to submit to the
`
`Court when there are over 200 claims being asserted.
`
`Consequently, Apple sent a letter to Jawbone Innovations on February 1, 2020, requesting,
`
`among other things, that Jawbone Innovations narrow the number of claims it is asserting. During
`
`a meet-and-confer on February 22, Jawbone Innovations refused, insisting that Apple must first
`
`serve invalidity contentions and its accompanying technical document production before Jawbone
`
`Innovations would consider any reduction in the number of asserted claims in this case. Jawbone
`
`Innovations thus insists on forcing Apple to expend significant resources to address dozens of
`
`claims that will not be asserted at trial.
`
`Under similar circumstances in other cases, this Court has ordered plaintiffs to significantly
`
`reduce the number of asserted claims before requiring defendants to serve invalidity
`
`contentions. See, e.g., Jenam Tech., LLC v. Google LLC, No. 6:20-cv-00453-ADA, Dkt. No. 35
`
`(W.D. Tex. Aug. 28, 2020) (reducing claims from over 450 to 65 total); Tr. of Oral Argument at
`
`11:18–13:20, Onstream Media Corp. v. Facebook, Inc., No. 1:20-cv-00214-ADA, Dkt. No. 34 at
`
`12-13 (W.D. Tex. June 3, 2020) (reducing claims from 118 to 12 independent claims); see also
`
`Dexcom, Inc. v. Abbott Diabetes Care, Inc., No. 6:21-cv-00690, Dkt. No. 57 (W.D. Tex. Nov. 16,
`
`2021) (reducing claims from over 300 to no more than 100 and extending deadline for service of
`
`invalidity contentions).
`
`Jawbone’s Statement
`
`Jawbone respectfully submits that Apple’s request to reduce the number of asserted claims
`
`to 65 is premature and unwarranted before service of invalidity contentions and Apple’s initial
`
`production. In re Katz Interactive Call Proc. Litig., 639 F.3d 1303, 1313 n.9 (Fed. Cir. 2011)
`
`(“[A] claim selection order could come too early in the discovery process, denying the plaintiff the
`
`

`

`Case 6:21-cv-00984-ADA Document 30 Filed 03/08/22 Page 3 of 4
`
`opportunity to determine whether particular claims might raise separate issues of infringement or
`
`invalidity in light of the defendants’ accused products and proposed defenses.”). Jawbone notes
`
`that Apple did not seek to meet and confer with Jawbone’s lead counsel prior to requesting
`
`Jawbone’s position on this issue, and informed Jawbone that it considered its discussion with non-
`
`lead counsel to satisfy the lead counsel meet and confer requirement. Notwithstanding Apple’s
`
`refusal to follow the Court’s procedures, Jawbone provides its position herein.
`
`Jawbone informed Apple that it would agree to a phased reduction of asserted claims and
`
`prior art beginning after Apple’s invalidity contentions and initial production; Apple refused and
`
`instead asks the Court to reduce asserted claims now.
`
`The Court should deny Apple’s request because important aspects of the accused products’
`
`relevant functionality and operation are not readily apparent from public documents. Thus,
`
`Jawbone requires Apple’s production to determine the strength of the infringement read for each
`
`claim. Moreover, Jawbone requires Apple’s invalidity contentions to properly assess the strength
`
`of each claim. Accordingly, without Apple’s production of its internal technical documents that
`
`show the operation of the accused products, and without Apple’s invalidity contentions, Jawbone
`
`is not able to make an informed determination of which claims are most appropriate to
`
`assert. Arctic Cat, Inv. v. Polaris Indus. Inc., 2015 WL 3756409, at *4 (D. Minn. 2015) (noting
`
`that patentee was “entitled to discover Arctic Cat’s infringement and invalidity contentions prior
`
`to reducing its claims. Polaris cannot know what claims raise separate issues of infringement or
`
`invalidity until after Arctic Cat serves its invalidity and non-infringement defenses.”)
`
`Indeed, numerous Courts have noted that limiting claims is not appropriate before the
`
`patentee receives discovery and invalidity contentions. E.g., Carl Zeiss AG v. Nikon Corp., 2018
`
`WL 1858183, at *1-2 (C.D. Cal. Mar. 1, 2018) (denying motion to limit claims before discovery
`
`

`

`Case 6:21-cv-00984-ADA Document 30 Filed 03/08/22 Page 4 of 4
`
`was complete); Regents of the Univ. of Minn. v. AT&T Mobility LLC, 2016 WL 7670604, at *2 (D.
`
`Minn. 2016) (“Without better understanding which of the University's claims are viable and which
`
`are not—an understanding that will only be gained through further fact discovery that is far from
`
`being concluded—the Court has a paucity of information against which to gauge what an
`
`appropriate number of claims should be in this case.”); see also In re Katz, 639 F.3d at 1313 n.9.
`
`The situation here is no different and Jawbone should receive at least Apple’s invalidity
`
`contentions and initial production before reducing the number of asserted claims. The Court should
`
`therefore deny Apple’s request to delay its invalidity contentions.
`
`ORDER
`
`The Court generally will not require a plaintiff to reduce its number of asserted claims
`
`without the benefit of discovery, claim construction, and invalidity contentions. The Court hereby
`
`DENIES Apple’s request for relief in its entirety. The Court reminds Plaintiff to meet and confer
`
`in good faith to reduce the number of asserted claims before the ordered deadlines, and a refusal
`
`to do so will be held against Plaintiff at that time.
`
`
`
`SIGNED this 8th day of March, 2022.
`
`
`
`
`
`
`
`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
`
`