With or without this amendment, this case exemplifies the lunacy of the patent system with respect to software. Everything Apple just (tentatively) won against Samsung they could be forced to disgorge to Interval.
So who are the winners in all of this? It certainly will not be any company that actually makes something. The only winners will be those patent holders who make nothing (because they are immune to infringement counterclaims) and the members of the patent and litigation bar. So, please, someone tell us again about how patents are important to innovation (and improving our economy) when it comes to software.
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE
INTERVAL LICENSING LLC,
Plaintiff,
v.
APPLE, INC.,
Defendant.
Case No. C11-708 MJP
Lead Case No. C10-1385 MJP
JURY DEMAND
Plaintiff’s Motion for Leave to
Amend its Supplemental
Infringement Contentions
NOTE ON MOTION
CALENDAR: September 7, 2012
PLAINTIFF’S MOTION FOR LEAVE TO
AMEND ITS SUPPLEMENTAL INFRINGEMENT CONTENTIONS
I. INTRODUCTION
On July 20, 2012, and in accordance with the Court’s most recent Scheduling Order,
Interval served its Local Patent Rule 120 Supplemental Disclosure of Asserted Claims and
Infringement Contentions for the ‘652/’314 Patents Track (“Supplemental Infringement
Contentions”) on defendant Apple Inc. (“Apple”). Now, pursuant to Local Patent Rule 124 and
applicable law, Interval moves the Court for leave to amend its Supplemental Infringement
Contentions to include an additional infringing product—Apple’s new OS X Mountain Lion
operating system (“OS X”).1 Interval gave Apple a copy of its proposed Second Supplemental
______________________________
1 In this motion, Interval’s amendments to its Supplemental Infringement Contentions, and the accompanying
exhibits, Interval will use the broad term “OS X” to refer to both Apple’s OS X Mountain Lion operating system and to any future, infringing revisions thereof.
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Infringement Contentions including OS X on August 10, 2012, and Interval has attempted to
come to an agreement with Apple since that date, but Apple remains opposed to this Motion.
Interval has good cause to amend its Supplemental Infringement Contentions to include
the OS X software. First, Interval did not include OS X in its July 20, 2012 Supplemental
Infringement Contentions because Apple had not yet released OS X to the market. Without an
opportunity to examine OS X in detail to determine precisely how it infringes the patents-in-suit,
Interval could not supplement its infringement contentions with the level of detail that the local
patent rules require. Second, Interval was diligent in amending its Supplemental Infringement
Contentions when Apple did release OS X. In particular, immediately following OS X’s release
on July 25, 2012, Interval diligently investigated the software, determined precisely how it
infringes the patents-in-suit, assembled highly detailed, proposed amended Supplemental
Infringement Contentions that include Apple’s OS X software, and served its proposed Second
Supplemental Infringement Contentions on Apple—all in a span of just sixteen days. Third,
requiring Interval to pursue OS X in separate litigation would be duplicative of the current
litigation, an inefficient waste of judicial resources, and unduly burdensome to Interval. The
contentions for OS X parallel those of products already in the case. In fact, denying Interval’s
motion for leave would be unduly burdensome to Apple as well, since Apple would be forced to
litigate OS X in a separate patent infringement suit when that litigation could be handled
expeditiously in the present case.
Fourth, granting Interval leave to add OS X to the list of accused products would not
prejudice Apple because many of the infringing features of OS X are already present in, or are at
least similar to, other Apple products that have already been accused (e.g., iOS). Interval even
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notified Apple when serving its July 20 Supplemental Infringement Contentions that Interval
planned to accuse OS X of infringement shortly after Apple released the software. Accordingly,
Interval requests that this Court grant its motion for leave to amend its supplemental infringement
contentions.
II. LEGAL STANDARDS
The Western District of Washington’s Local Patent Rule governing amendment of
infringement contentions reads:
Amendment of the Infringement Contentions or the Invalidity Contentions may be
made only by order of the Court upon a timely showing of good cause. Nonexhaustive
examples of circumstances that may, absent undue prejudice to the
non-moving party, support a finding of good cause include: (a) a claim
construction by the Court different from that proposed by the party seeking
amendment; (b) recent discovery of material prior art despite earlier diligent
search; and (c) recent discovery of nonpublic information about the Accused
Device which was not discovered, despite diligent efforts, before the service of the
Infringement Contentions. The duty to supplement discovery responses does not
excuse the need to obtain leave of court to amend contentions.
Local Patent Rule 124. The burden of establishing good cause to amend contentions lies with the
moving party. O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir.
2006).
In evaluating good cause, this Court considers factors such as:
(1) the reasons proffered for the need to amend after the deadline for submitting
contentions had passed, (2) the diligence of the moving party, (3) the importance of
the proposed amendments, together with any prejudice to the moving party if
amendment is denied, (4) potential prejudice to the non-moving party, and (5) the
availability of a continuance to cure any prejudice.
Baden Sports, Inc. v. Wilson Sporting Goods Co., No. 2:11-cv-00603-MJP, Doc. 80, at 2 (W.D.
Wash. June 28, 2012) (order on defendant’s motion for leave to amend) (citing Convolve, Inc. v.
Compaq Computer Corp., 2007 WL 700904, at *2 (S.D.N.Y. Mar. 7, 2007)).
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III. ARGUMENT
In light of the above factors, good cause exists for this Court to grant Interval leave to
amend its Supplemental Infringement Contentions.
A. OS X Was Not Publicly Available at the Time of Interval’s Infringement
Contentions
Defendant Apple released OS X on July 25, 2012, five days after Interval filed its
Supplemental Infringement Contentions in accordance with the Court’s Scheduling Order.
Compare Ex. A, Apple Press Release with Ex. B, Interval’s Post-Stay Infringement Contentions,
at 20. The fact that OS X was not available at the time Interval filed its Supplemental
Infringement Contentions strongly supports a finding of good cause for leave to amend.
First, Interval could not have complied with the Local Patent Rules’ requirements without
access to OS X. The Local Patent Rules require a detailed mapping of an accused product’s
features to the asserted patent claims. See Local Patent Rule 120. Without an actual copy of
OS X, Interval could not have conducted a thorough investigation of OS X’s features in light of
the patent claims and therefore could not have disclosed the necessary details of OS X’s
infringing features as required under the Local Patent Rules.
Second, OS X’s actual features were not publicly known prior to its release. Although the
public may have been aware of OS X’s inevitable release, the details regarding specific features
would have been purely speculative until the operating system’s actual release. In other words,
Interval could not have established whether OS X in fact infringes Interval’s patents-in-suit until
Apple placed OS X on the market. The Local Patent Rules explicitly identify such a discovery of
previously nonpublic information as good cause for leave to amend. Local Patent Rule 124(c).
Third and finally, it is common practice among courts to grant a plaintiff leave to amend if
a defendant introduces a new product on the market after the plaintiff filed its infringement
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contentions. See TiVO, Inc. v. Verizon Commc’ns, Inc., No. 2:09-cv-257-JRG, 2012 WL
2036313, at *2 (E.D. Tex. June 6, 2012) (granting leave to amend infringement contentions when
patentee knew of the eventual release of the accused product but actual sales did not occur until
after infringement contentions were filed); Smartphone Techs LLC v. HTC Corp., No. 6:10cv580
LED-JDL, 2012 WL 1424173, at *3 (E.D. Tex. Mar. 16, 2012) (finding good cause to amend by
adding products released after infringement contentions were due but not for products that were
available beforehand); Network Appliance, Inc. v. Sun Microsystems, Inc., Nos. C-07-06053 EDL,
C-07-05488 EDL, 2009 WL 2761924, at *3 (N.D. Cal. Aug. 31, 2009). Accordingly, the first
factor of this Court’s good cause analysis weighs heavily in Interval’s favor.
B. Interval Was Diligent In Investigating OS X and Promptly Filed This Motion
Interval was diligent in investigating OS X, in preparing highly detailed, proposed
amendments to its Supplemental Infringement Contentions to include OS X, and in filing this
motion for leave. As previously mentioned, Apple began selling OS X to the public on July 25,
2012. Ex. A. Given the time necessary to investigate the software and develop the claim charts
required by the Local Patent Rules, a delay of only sixteen days between the date OS X became
available (July 25) and the date on which Interval served Apple with its proposed Second
Supplemental Infringement Contentions including OS X (August 10) is reasonable. In addition,
Interval diligently prepared this motion and diligently met-and-conferred with Apple between
August 10 and the filing of this motion to determine whether Apple would oppose this motion.
Exs. C-D, E-mails to Apple’s Counsel re: Opposition to this Motion and Meet-and-Confer Calls.
The requirement for diligence in amending infringement contentions strikes a balance
between the need to amend infringement contentions as new information becomes available and
the need to crystallize legal theories. O2 Micro, 467 F.3d at 1365–66. Consistent with this
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purpose, Interval’s intent is not ambush and subterfuge but instead to raise legal issues that have
naturally arisen during the course of litigation. First, Interval filed this motion as soon as it had an
opportunity to review OS X and develop detailed infringement contentions in accordance with the
local patent rules. Second, Interval told Apple that Interval would be investigating OS X and
potentially filing this motion before Apple even released OS X. Ex. E, E-mail to Apple’s Counsel
re: Amendment of Infringement Contentions. Third and last, at no point during this litigation has
Interval demonstrated any propensity for unwarranted delays or underhanded tactics. To the
contrary, Interval’s actions demonstrate diligence and cooperation—not attempts to sandbag
Apple—and therefore weigh in favor of granting leave to amend.
C. Inclusion of OS X is Important to Resolve the Current Dispute Between Interval
and Apple
The addition of OS X to the current litigation is important and necessary to resolve the
dispute between Apple and Interval. If OS X were excluded, Interval would file a separate
lawsuit, leading to unnecessarily duplicative litigation. Such inefficiency flies in the face of the
intent behind the Local Patent Rules. See Local Patent Rule 101 (“These rules are designed to
. . . generally reduce the cost of patent litigation.”); TiVO, Inc., 2012 WL 2036313, at *2 (stating
that “[c]onsiderations of judicial economy” weighed heavily in favor of permitting an amendment
to infringement contentions to include new products). Accordingly, this factor also weighs in
Interval’s favor.
D. Apple Would Not Be Significantly Prejudiced By The Proposed Amendment
The addition of OS X does not significantly prejudice Apple because OS X’s infringing
features are similar to those of other, already-accused products (e.g., Apple’s iOS) and Apple still
has time to conduct any necessary discovery and expert analysis.
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First, a cursory overview of the accused products plainly demonstrates the emphasis
Apple places on maintaining consistency across its product lines. OS X and the accused
Notification Center are no exception. The Notification Center concept is present throughout the
accused products—including other Apple operating systems—with limited variation in its look,
feel, and functionality. Given the general similarities between OS X and iOS, adding OS X and its
specific implementation of Notification Center to the list of accused products should create little,
if any, shift in Apple’s current litigation strategy.
Second, even if adding OS X causes prejudice to Apple, the close of discovery and trial
are still far away. According to the latest Scheduling Order, expert discovery does not conclude
until May 2013 and trial is not scheduled until October 2013. Ex. F, Scheduling Order. This is a
significant amount of time for Apple to fully investigate Interval’s amended contentions, thereby
mitigating (if not fully eliminating) any potential prejudice.
E. A Continuance is Unnecessary
Finally, although this Court considers the availability of a continuance in its good cause
analysis, such a consideration is unnecessary at such an early phase in the instant litigation. As
discussed above, the close of discovery and trial are almost a full year away, providing Apple
with plenty of time to investigate and conduct any necessary discovery on Interval’s proposed
amended infringement contentions. See Ex. F. Because the potential prejudice to Apple caused by
adding OS X is minimal or non-existent, and in light of the time Apple still has to address the
amended Supplemental Infringement Contentions, the need for a continuance at this point is
obviated.
IV. CONCLUSION
For these reasons, the factors that this Court considers in determining good cause for leave
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to amend infringement contentions weigh heavily in Interval’s favor. Accordingly, Interval
respectfully requests this Court to grant this motion and to enter the attached order.
Dated: August 23, 2012
/s/ Nick Patel
Justin A. Nelson
WA Bar No. 31864
[email]
Matthew R. Berry
WA Bar No. 37364
[email]
SUSMAN GODFREY L.L.P.
[address telephone fax]
Max L. Tribble, Jr.
[email]
Matthew Behncke
[email]
SUSMAN GODFREY L.L.P.
[address telephone fax]
Michael F. Heim
[email]
Eric J. Enger
[email]
Nathan J. Davis
[email]
Nick P. Patel
[email]
HEIM, PAYNE & CHORUSH, L.L.P.
[address telephone fax]
Douglas Wilson
[email]
HEIM, PAYNE & CHORUSH, L.L.P.
[address telephone fax]
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Attorneys for INTERVAL LICENSING LLC
9/p>
CERTIFICATE OF SERVICE
I hereby certify that on August 23, 2012, I electronically filed the foregoing document
with the Clerk of the Court using the CM/ECF system, which will send notification of such filing
to:
Attorneys for AOL, Inc.
Cortney Alexander
Robert Burns
Elliott Cook
Gerald Ivey
Molly Terwilliger
Attorneys for Apple, Inc.
David Almeling
Brian Berliner
George Riley
Jeremy Roller
Scott Wilsdon
Neil Yang
Xin-Yi Zhou
Attorneys for Google, Inc. and YouTube, LLC
Aaron Chase
Dimitrios Drivas
Warren Heit
Kevin McGann
Wendi Schepler
Scott Johnson
Shannon Jost
Theresa Hsin-Yi Wang
Attorneys for Yahoo! Inc.
Francis Ho
Richard S.J. Hung
Michael Jacobs
Matthew Kreeger
Dario Machleidt
Eric Ow
Mark Walters
Gregory Wesner
By: /s/ Nick Patel
Nick P. Patel
Attorney for INTERVAL LICENSING LLC
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