Ixi Mobile (R&D) Ltd. et al v. Apple, Inc.

Northern District of California, cand-4:2015-cv-03755

LETTER addressed to Judge Richard J. Sullivan from Thomas S. Biemer dated June 15, 2015 re: Pre-Motion Request to Strike Joint Claim Terms Chart. Document filed by IXI IP,LLC, IXI Mobile (R&D) Ltd.

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DIRECT DIAL NUMBER: Thomas S. Biemer (215) 575-7025 tbiemer@dilworthlaw.com June 15, 2015 Honorable Richard J. Sullivan Courtroom: 905 Thurgood Marshall United States Courthouse 40 Foley Square New York, NY 10007 Re: IXI Mobile (R&D) Ltd. et al. v. Samsung Elecs. Co., Ltd., No. 14-cv-4355(RJS) IXI Mobile (R&D) Ltd. et al. v. BlackBerry Ltd., et al., No. 14-cv-4428(RJS) IXI Mobile (R&D) Ltd. et al. v. Apple Inc., No. 14-cv-7954(RJS) Dear Judge Sullivan: Plaintiffs IXI IP, LLC and IXI Mobile (R&D) Ltd. (collectively, "IXI") respectfully request a pre-motion conference for a motion to strike portions of the Joint Claim Terms Chart (Dkt. No. 68 1) (the "Joint Chart") in these matters. Specifically, IXI requests the Court strike three claim terms from the Joint Chart that Defendants argue are invalid for indefiniteness. 2 Defendants did not assert that these terms were indefinite in their Invalidity Contentions. They have declined to provide IXI with any information about the basis for their indefiniteness argument, and they have consistently refused to disclose whether an expert will address those issues. Therefore, the Court should not let Defendants argue that the terms are indefinite. In December 2014, the Court adopted the Parties' proposed Case Management Plan and Scheduling Order. (Dkt. No. 38). The Parties agreed, and the Court ordered, that the "substance and content of the parties' [infringement and invalidity] contentions shall generally follow Rules 3-1 and 3-3 of the Rules of Practice for Patent Cases before the Eastern District of Texas." Id. at 3. Rule 3-3(d) required Defendants to disclose in their Invalidity Contentions "[a]ny grounds of 1 "Dkt." refers to the docket in Case No. 14-cv-4355(RJS) (the Samsung Action). 2 The terms are "service repository software component to identify a service provided by the second wireless device," "service repository software component that identifies a plurality of services, in the short distance wireless network, associated with a plurality of wireless devices," and "thin terminal." 1500 Market Street  Suite 3500E  Philadelphia, PA 19102-2101  2155757000  fax: 215-575-7200 www.dilworthlaw.com  Cherry Hill, NJ  Harrisburg, PA  Washington, DC  Red Bank, NJ  Wilmington, DE Case Hon. Richard 4:15-cv-03755-HSG J. Sullivan Document 57 Filed 06/15/15 Page 2 of 3 June 15, 2015 Page 2 invalidity based on indefiniteness under 35 U.S.C. § 112(2) …." 3 A primary purpose of Rule 3-3 is to "'require parties to crystallize their theories of the case early in the litigation' so as to 'prevent the shifting sands approach to claim construction.'" O2 Micro Int'l, Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir. 2006) (quoting Atmel Corp. v. Info. Storage Devices, Inc., No. C 95–1987 FMS, 1998 WL 775115, at *2 (N.D. Cal. 1998). Although Defendants agreed to follow Rule 3-3, they have not done so. Defendants served their Invalidity Contentions on March 9, 2015, totaling nearly 8,000 pages. 4 Defendants asserted in section VI of the Invalidity Contentions that six terms of the Patents-in-Suit are invalid under 35 U.S.C. § 112, although they inexplicably did not list the only three terms that they now claim are indefinite. Obviously, having failed even to list those three terms, Defendants did not identify in their Invalidity Contentions any grounds upon which to base their corresponding indefiniteness argument under Rule 3-3(d). Notably, Defendants had several opportunities to correct their Invalidity Contentions, but they have failed to do so. IXI sent Defendants letters on March 17 and April 23, 2015, explaining that Defendants' indefiniteness assertions were insufficient, but Defendants refused to supplement their Invalidity Contentions. Courts have prohibited defendants from asserting indefiniteness for similar reasons, i.e., when the defendants fail to disclose an indefiniteness argument in their invalidity contentions. See Auxilium Pharm., Inc. v. Watson Labs., Inc., No. CIV.A. 12-3084 JLL, 2014 WL 2624780, at *4 (D.N.J. June 12, 2014) ("Rule 3.3(d) required [defendant], if it wanted to argue the patents were invalid for indefiniteness, to set forth the grounds for this argument in its invalidity contentions. . . . If the Court were to accept [defendant's] argument that it can argue the [] terms are indefinite, and therefore the patents-at-issue are invalid, during claim construction (or at trial) even though [defendant] failed to comply with Rule 3.3(d), Rule 3.3(d) would be rendered meaningless.); see also McDavid Knee Guard, Inc. v. Nike USA, Inc., 809 F. Supp. 2d 863, 878 (N.D. Ill. 2011) (finding indefiniteness arguments waived where defendant "did not identify th[e] basis for invalidating claim 22 in its invalidity contentions"). The Court should similarly bar Defendants from asserting indefiniteness arguments that they did not disclose in their Invalidity Contentions. If the Court were to permit Defendants to raise undisclosed theories, it would undermine the primary purpose of Rule 3-3 and would effectively undo the Parties' agreement about the disclosure of invalidity contentions. In addition, it would work a substantial hardship on IXI. Had Defendants disclosed their indefiniteness theories when they served their Invalidity Contentions, it would have given IXI since March 9 to prepare responsive definiteness arguments and work extensively with its 3 35 U.S.C. § 112(2) is now referred to as 112(b). This section sets forth the definiteness requirements for claim terms, including means-plus-function terms governed by 35 U.S.C. § 112(f). See, e.g., Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013) (affirming lower court's ruling that a means-plus-function claim was invalid for indefiniteness under 112(b)). 4 See Saffran v. Johnson and Johnson, No. 2:07-cv-0451(TJW), 2009 WL 8491495, at *1 (E.D. Tex. Feb, 24, 2009) ("The defendants' almost 800 pages of 'Invalidity Contentions' do not put the plaintiffs on real or useful notice."). 1500 Market Street  Suite 3500E  Philadelphia, PA 19102-2101  2155757000  fax: 215-575-7200 www.dilworthlaw.com  Cherry Hill, NJ  Harrisburg, PA  Washington, DC  Red Bank, NJ  Wilmington, DE Case Hon. Richard 4:15-cv-03755-HSG J. Sullivan Document 57 Filed 06/15/15 Page 3 of 3 June 15, 2015 Page 3 validity expert. It also would have given IXI an opportunity to serve additional discovery requests and to follow up on pending requests. Instead, Defendants' conduct has deprived IXI of the time to fully investigate and respond to Defendants' newly raised indefiniteness arguments. On May 29, 2015, during negotiations regarding the disputed terms in the Joint Chart, IXI first learned of the terms Defendants may assert to be indefinite. 5 Defendants cannot justify their failure to disclose their indefiniteness arguments by pointing to those negotiations. First, the noncommittal disclosure in the two weeks leading up to the filing of the Joint Chart does not restore the months of time that IXI has lost due to Defendants' failure to disclose the terms in their Invalidity Contentions, as the Court's Scheduling Order required. Second, in the negotiation about the Joint Chart, Defendants suggested that they intended to argue several different claim terms were indefinite, but they ultimately chose not to make those arguments to the Court. IXI did not know with certainty that Defendants intended to pursue their indefiniteness arguments with respect to the three terms at issue until June 8, 2015, when the Joint Chart was filed. Thus, IXI has not had a meaningful opportunity to prepare to rebut Defendants' indefiniteness positions. Defendants have compounded the prejudice to IXI here by stonewalling IXI's discovery requests regarding Defendants' potential invalidity arguments, including contentions that terms are indefinite. For example, each Defendant has refused to respond substantively to an Interrogatory that requests "any. . . invalidity. . . opinion Concerning the Patents-in-Suit. . . [and to] Identify the Opinions and all Persons involved." IXI has explained to Defendants that it needs to know, at a minimum, how Defendants intend to rely on expert testimony in their opposition to IXI's claim construction brief, but Defendants have refused to provide that information. See Lodsys, LLC v. Brother Int'l Corp., No. 2:11-CV-90-JRG, 2013 WL 6442185, at *1 (E.D. Tex. Mar. 12, 2013) ("The Court finds that a party may not rely upon an expert declaration that is produced for the first time along with the party's claim construction brief."). Although Defendants have informed IXI that they generally intend to rely on expert testimony, Defendants have refused to provide even the identity of their expert witness(es) or the purpose of the testimony. Defendants' refusal to participate meaningfully in discovery, coupled with their failure to timely disclose their indefiniteness arguments, raises the specter that Defendants will attempt to engage in trial by surprise, rather than a trial after the full and fair disclosure that the Federal Rules of Civil Procedure require and to which the Parties agreed – and that the Court ordered – through adoption of Rule 3-3 to govern the Invalidity Contentions. IXI respectfully requests leave to file a motion to strike portions of the Joint Chart in which Defendants assert indefiniteness arguments not disclosed in their Invalidity Contentions. Respectfully, /s/ Thomas S. Biemer Thomas S. Biemer cc: Counsel of Record 5 Defendants repeatedly stated that all claim dispute discussions prior to June 8 were preliminary, non-binding, and provided solely for discussion purposes. 1500 Market Street  Suite 3500E  Philadelphia, PA 19102-2101  2155757000  fax: 215-575-7200 www.dilworthlaw.com  Cherry Hill, NJ  Harrisburg, PA  Washington, DC  Red Bank, NJ  Wilmington, DE