S I M P S O N T H A C H ER & B A R TLE T T L LP 2475 H ANOVER STREE T PALO ALTO, CA 94304 (6 5 0) 2 5 1 -5 0 0 0 FAC S IM ILE (650) 251 -5002 DIRECT D IAL N UMBER E-MAIL ADDRESS (650) 251-5065 email@example.com VIA ECF AND EMAIL (SULLIVANNYSDCHAMBERS@NYSD.USCOURTS.GOV) June 18, 2015 Re: IXI Mobile (R&D) Ltd., et al. v. Apple Inc., 14-cv-7954 (RJS) IXI Mobile (R&D) Ltd., et al. v. BlackBerry Ltd., et al., 14-cv-4428 (RJS) IXI Mobile (R&D) Ltd., et al. v. Samsung Elecs. Co., Ltd., 14-cv-4355 (RJS) Honorable Richard J. Sullivan United States District Judge Thurgood Marshall United States Courthouse 40 Foley Square New York, NY 10007 Dear Judge Sullivan: Defendants Apple Inc. ("Apple"), BlackBerry Limited and BlackBerry Corporation ("BlackBerry"), and Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. ("Samsung") (collectively, "Defendants") jointly respond to the pre-motion letter submitted by Plaintiffs IXI Mobile (R&D), Ltd. and IXI IP, LLC (collectively, "IXI") dated June 15, 2015. IXI has requested a pre-motion conference to strike three claim terms (the "Disputed Terms") from the Joint Claim Terms Chart (Dkt. No. 68 in the Apple case) (the "Joint Chart"). IXI seeks extraordinary relief that is unnecessary, and, moreover, the alleged dispute is moot. For all of the reasons outlined below, Defendants respectfully request that Plaintiffs' request be denied. Plaintiffs' request is unnecessary because Defendants have already remedied the alleged problem by properly supplementing under this District's local rules. Local Patent Rule 9 requires parties to supplement their contentions in a timely manner under Fed. R. Civ. P. 26(e). Rule 26(e), in turn, requires supplementation when "the party learns that in some material respect the disclosure or response is incomplete or incorrect, and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing." Defendants have already supplemented their invalidity contentions pursuant to these rules, and thus, this issue is moot. Earlier supplementation was not feasible. Defendants had not even determined until May that these terms were possibly indefinite. Because the means-plus-function terms were BEIJIN G HO N G K ON G HOUST ON LO N D ON LO S AN GE LE S NE W Y OR K S ÃO P A U L O SE OU L T O K Y O W A S H I N G T O N, D. C. SIMPSON THACHER & BARTLETT LLP Honorable Richard J. Sullivan -2- June 18, 2015 not expressed using the presumptive words "means for," it was only through Defendants' continued study of the claims and specification that Defendants recognized the significance of the Disputed Terms. Furthermore, Federal Circuit law is evolving on this issue. In Williamson v. Citrix Online, LLC, No. 13-1130, at 15 (Fed. Cir. Jun. 16, 2015) (en banc), decided a week after the Joint Chart, but illustrating the changing nature of 35 U.S.C. Â§ 112 Â¶ 6 analyses, the Federal Circuit held that it "should abandon characterizing as 'strong' the presumption that a limitation lacking the word 'means' is not subject to Â§ 112, para. 6" and that "nonce words" should be addressed under Â§ 112 Â¶ 6. As soon as Defendants had determined that the Disputed Terms were indeed indefinite, Defendants disclosed that to IXI, in writing, as part of the agreed-upon meet and confer process leading up to the filing of the Joint Chart. After that disclosure, IXI remained silent throughout the following weeks of claim construction negotiations, not once asking for clarification or explanation or even implying that the terms had not been properly disclosed. It was during that process that Defendants explained to IXI their basis for the indefiniteness of these terms, including showing IXI that, for the terms governed by Â§ 112 Â¶ 6, the specification failed to have the required structure. As a result, IXI has not been prejudiced or disadvantaged due to any "delay" by the Defendants. To begin with, Defendants expressly told IXI in the invalidity contentions that without "IXI's claim constructions, Defendants cannot provide a complete list of Â§ 112 Defenses." Further, as the parties agreed when they set the case schedule, IXI will have had almost six weeks between learning of these three terms' constructions and IXI's opening claim construction brief in July. Defendants disclosed each of the Disputed Terms over a month ago in the parties' initial exchange of proposed terms for construction on May 12, 2015. Initially, IXI responded to that disclosure only with a simple statement that "Plaintiffs' position is that no claim terms need construction and they all have their plain and ordinary meanings." Following additional exchanges and as part of the meet and confer process, IXI altered its position by offering a construction of "thin terminal" to be a "relatively low power peripheral to an application server." IXI's alternate construction, which itself included an indefinite term of degree, confirmed for Defendants as of June 2 that the term "thin terminal" was indefinite. The same was also true for the means plus function terms, where IXI's alternative constructions failed to provide the requisite structure and confirmed that the terms should be treated under Â§ 112 Â¶ 6. This timeline shows the claim construction process working as it is supposed to, on the dates and events the parties agreed to. IXI should not be allowed to now play "gotcha" by imposing a different set of standards. None of the cases Plaintiffs cite support their argument; the cases are not even relevant to proceedings in this Court. The O2 Micro and Auxilium cases originate from courts in other districts that were applying local patent rules that require parties to seek leave and show "good cause" to amend invalidity contentions. That standard does not apply here, where Local Rule 9 requires supplementation where new information arises. Furthermore, unlike the Defendants here, the parties seeking leave to amend in O2 Micro SIMPSON THACHER & BARTLETT LLP Honorable Richard J. Sullivan -3- June 18, 2015 and Auxilium sought amendment after substantial delay. Similarly inapposite are Atmel, where the plaintiff sought to amend infringement contentions after claim construction, and McDavid Knee Guard, where the defendant never raised indefiniteness before summary judgment. Indeed, IXI and Defendants had discussed adopting all the E.D. Tex. Local Patent Rules. However, the parties ultimately chose to reference only E.D. Tex. P.R. 3-1 and 3-3 so that the "substance and content" of the contentions would generally follow those rules. Scheduling Order at 3 (Dkt. No. 22 in the Apple case). The parties did not agree to adopt any other E.D. Tex. Local Patent Rules, including P.R. 3-6 which, like the rules referenced in O2 Micro and Auxilium, requires seeking leave and showing good cause. Thus, S.D.N.Y. Local Patent Rule 9 controls. Likewise, IXI has no basis for its complaint that Defendants failed to disclose experts for claim construction, or that it has missed out on any other opportunity for discovery. To begin with, definiteness is a matter of law and fact discovery from Defendants is irrelevant. Further, the parties never agreed to any required disclosure of claim construction experts. The case Plaintiffs rely upon is grounded on a specific E.D. Tex. Local Patent Rule not relevant here that expressly requires an exchange of expert declarations. See Lodsys, LLC v. Brother Int'l Corp., No. 2:11-CV-90, 2013 WL 6442185, at *1 (E.D. Tex. Mar. 12, 2013) (applying E.D. Tex. P.R. 4-3). Under the rules the parties adopted for this case, there are no pre-motion disclosure requirements for experts and, indeed, IXIâwho will file their claim construction brief firstâhave not themselves provided any of the information they want from Defendants. Lastly, even if the issue weren't moot, Plaintiffs have not made and cannot make the high showing necessary to preclude Apple from presenting its case on the Disputed Terms. Indeed, IXI's letter did not even mention the exacting standard that governs their motion to strike. Excluding evidence and argument is a "drastic sanction" reserved for only the most egregious of situations, and "courts have generally not ordered preclusion," even where a party, unlike the situation here, actually failed to supplement and its failure was neither justified nor harmless. See Gayle Martz, Inc. v. Sherpa Pet Grp., LLC, 651 F. Supp. 2d 72, 81 (S.D.N.Y. 2009). For the reasons set forth above, Defendants respectfully request that the Court reject IXI's request to file a motion to strike. Defendants greatly appreciate the Court's consideration. Respectfully submitted, /s/ Harrison J. Frahn IV Harrison J. Frahn IV SIMPSON THACHER & BARTLETT LLP Honorable Richard J. Sullivan -4- June 18, 2015 For Apple Inc. and on behalf of all Defendants cc: Thomas Steven Biemer, Esq. Gregory A. Blue, Esq. Joshua D. Wolson, Esq. John J. Higson, Esq. Mark W. Halderman, Esq. Gary D. Colby. Esq. Marshall Beil, Esq. Jason W. Cook, Esq. Brian C. Riopelle, Esq. Derek H. Swanson, Esq. Gregory S. Arovas, Esq. Todd M. Friedman, Esq. James E. Marina, Esq. David Rokach, Esq. James Henry McConnell, Esq.