Ixi Mobile (R&D) Ltd. et al v. Samsung Electronics Co., Ltd. et al

Northern District of California, cand-4:2015-cv-03752

OPPOSITION/RESPONSE (re 166 MOTION for Leave to Amend its Infringement Contentions and Asserted Claims to Amend/Correct) filed by Samsung Electronics America Inc, Samsung Electronics Co Ltd.

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3 1 Gregory S. Arovas, P.C. (pro hac vice) Harrison J. Frahn IV (CA Bar No. 206822) Todd M. Friedman, P.C. (pro hac vice) hfrahn@stblaw.com 2 KIRKLAND & ELLIS LLP SIMPSON THACHER & BARTLETT LLP 601 Lexington Avenue 2475 Hanover Street 3 New York, New York 10022 Palo Alto, California 94304 Telephone: (212) 446-4800 Telephone: (650) 251-5000 4 Facsimile: (212) 446-4900 Facsimile: (650) 251-5002 greg.arovas@kirkland.com 5 todd.friedman@kirkland.com Attorneys for Defendant Apple Inc. 6 Attorneys for Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. 7 [Additional Counsel Listed on Signature Page] 8 9 UNITED STATES DISTRICT COURT 10 FOR THE NORTHERN DISTRICT OF CALIFORNIA 11 OAKLAND DIVISION 12 13 IXI MOBILE (R&D) LTD. and IXI IP, LLC, Case No. 4:15-cv-03752-HSG Plaintiffs, 14 DEFENDANTS' OPPOSITION TO v. PLAINTIFFS' MOTION FOR LEAVE 15 TO AMEND ITS INFRINGEMENT SAMSUNG ELECTRONICS CO., et al., CONTENTIONS AND ASSERTED 16 Defendants., CLAIMS Defendant. 17 Date: May 9, 2019 Time: 2:00 p.m. 18 Courtroom: 2, Fourth Floor Judge: Hon. Haywood S. Gilliam, Jr. 19 IXI MOBILE (R&D) LTD. and IXI IP, LLC, Case No. 4:15-cv-03755-HSG 20 (RELATED CASE) Plaintiffs, 21 v. 22 APPLE INC., Defendant. 23 24 25 26 27 28 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 TABLE OF CONTENTS 2 Page 3 I. INTRODUCTION................................................................................................................1 4 II. BACKGROUND ..................................................................................................................2 5 A. Procedural Background and Original Infringement Contentions ......................2 6 B. Invalidation of IXI's Originally Asserted Claims .................................................3 7 C. Reexamination of the '033 Patent and Subsequent Inter Partes Reviews ..........4 8 D. Ongoing Reexamination of the '532 Patent ...........................................................4 9 III. ARGUMENT ........................................................................................................................5 10 A. Res Judicata Bars IXI's Proposed Assertion of the '033 Patent's New Reexamination Claims. ............................................................................................5 11 1. The Originally Asserted Claims of the '033 Patent and the New 12 Reexamination Claims Represent the Same Cause of Action…………..6 13 2. The Previous Administrative Proceedings and This District Court Litigation Involve the Same Cause of Action for Purposes of Res 14 Judicata….....................................................................................................8 15 3. The Other Requirements for Res Judicata Also Are Met………………10 16 B. IXI Cannot Assert Draft Claims Not Yet Issued by the PTO. .............................11 17 C. IXI Has Failed To Provide Basic Information Required to Evaluate the 18 Practical Impact of Its Motion. ...............................................................................13 19 IV. CONCLUSION ....................................................................................................................17 20 21 22 23 24 25 26 27 28 i DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 TABLE OF AUTHORITIES 2 Page(s) 3 Cases 4 Acer, Inc. v. Tech. Props. Ltd., 5 No. 5:08-CV-00877 JF/HRL, 2011 WL 1838768 (N.D. Cal. May 13, 2011) ...............................12, 15 6 Apple Inc. v. Samsung Electronics Co., No. CV 12-00630 LHK, 2012 WL 5632618 (N.D. Cal. Nov. 15, 2012) ............................................16 7 Application of Herr, 377 F.2d 610 (CCPA 1967) ......................................................................................10 8 Astoria Fed. Sav. & Loan Ass'n v. Solimino, 9 501 U.S. 104 (1991) ...............................................................................................................................8 10 Baker by Thomas v. Gen. Motors Corp., 11 522 U.S. 222 (1998) ...............................................................................................................................9 12 Bojorquez v. Abercrombie & Fitch, Co., 193 F. Supp. 3d 1117 (C.D. Cal. 2016) .................................................................................................9 13 Bonin v. Calderon, 14 59 F.3d 815 (9th Cir. 1995) ...................................................................................................................5 15 Cal. Comput. Prods., Inc. v. Simplicity Pattern Co., 16 No. CV-69-1763, 1977 WL 22791 (C.D. Cal. May 23, 1977) .......................................................... 8-9 17 Gayler v. Wilder, 51 U.S. 477 (1850) ...............................................................................................................................11 18 Guzik Technical Enterprises, Inc. v. Western Digital Corp., 19 No. 5:11-CV-03786-PSG, 2013 WL 6092852 (N.D. Cal. Nov. 19, 2013)..........................................14 20 Ho Keung Tse v. eBay Inc., 21 No. C 11-01812 WHA, 2011 WL 13257446 (N.D. Cal. Aug. 29, 2011) ...................................... 11-12 22 JAT Wheels Inc. v. JNC Wheel Collection, No. CV 14-04898 JVS MRWX, 2014 WL 4568323 (C.D. Cal. Sept. 8, 2014) ..................................12 23 Karl Storz Endoscopy-America, Inc. v. Stryker Corp., 24 No. C 09-00355 WHA, 2011 WL 5574807 (N.D. Cal. Nov. 16, 2011) ..............................................14 25 Marsh v. Nichols, Shepherd & Co., 128 U.S. 605 (1888) .............................................................................................................................12 26 27 MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373 (Fed. Cir. 2018) ................................................8, 10 28 ii DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 Momenta Pharm., Inc. v. Bristol-Myers Squibb Co., 915 F.3d 764 (Fed. Cir. 2019)..............................................................................................................10 2 Mpoyo v. Litton Electro-Optical Sys., 3 430 F.3d 985 (9th Cir. 2005) ...........................................................................................................5, 10 4 Senju Pharm. Co. v. Apotex Inc., 5 746 F.3d 1344 (Fed. Cir. 2014).................................................................................................... passim 6 Target Training Int'l, Ltd. v. Extended Disc N. Am., Inc., 645 F. App'x 1018 (Fed. Cir. 2016) ....................................................................................................10 7 Xiaohua Huang v. Open-Silicon, Inc., 8 No. 18-CV-00707-JSW (LB), 2018 WL 5099275 (N.D. Cal. Aug. 27, 2018) .............................. 14-15 9 Statutes 10 35 U.S.C. § 271(a) .....................................................................................................................................12 11 35 U.S.C. § 318 ......................................................................................................................................5, 11 12 Regulations 13 37 C.F.R. 42.73(d)(3)(i) ...............................................................................................................................4 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 iii DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 I. INTRODUCTION 2 After several years of inter partes review ("IPR") proceedings before the Patent Trial and Appeal 3 Board ("PTAB"), as well as an appeal to the Court of Appeals for the Federal Circuit, all of the 4 originally asserted claims of U.S. Patent No. 7,039,033 (the "'033 Patent") have been cancelled by the 5 United States Patent and Trademark Office ("PTO"). Similarly, all but one of the originally asserted 6 claims of U.S. Patent No. 7,295,532 (the "'532 Patent") have been cancelled. With claim 10 of the '532 7 Patent remaining, and the stay having been lifted, this case should move forward on that single claim. 8 Instead, IXI seeks to expand this case to include an array of new claims from both asserted 9 patents. IXI seeks to add an unidentified set of claims of the '033 Patent that issued from an ex parte 10 reexamination that IXI filed during the course of the appeal to the Federal Circuit. Without explanation 11 as to the propriety of this request, IXI also seeks to add draft claims proposed in the ongoing ex parte 12 reexamination of the '532 Patent—claims that the PTO has not yet considered, let alone allowed. In so 13 doing, IXI improperly stretches the boundaries of the infringement claims it is permitted to assert in this 14 case under controlling law. Accordingly, IXI's motion for leave to amend its infringement contentions 15 to add the new claims should be denied on at least three independent grounds. 16 First, IXI's request to add new claims from the '033 Patent is barred by res judicata. IXI seeks 17 leave to assert new claims that it obtained through reexamination of the patent following a final 18 determination of obviousness by the PTAB and the Federal Circuit against all of IXI's originally 19 asserted claims. In Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344 (Fed. Cir. 2014), the Federal Circuit 20 addressed a set of facts very similar to this case, where a party sought to assert new claims that had been 21 obtained via reexamination following a judgment of invalidity of the originally asserted claims from the 22 same patent. The Federal Circuit held that the newly obtained claims—which were necessarily narrower 23 in scope than the original claims, due to PTO rules—raised the "same cause of action" as the originally 24 asserted claims, and that the patentee therefore was precluded from asserting the new claims. See Senju 25 Pharm., 746 F.3d at 1350-54. In reaching that conclusion, the Federal Circuit noted that "[a]t its core, 26 what [the patentee] seeks is a do-over." Id. at 1353. "Having lost its suit, [the patentee] seeks to use 27 reexamination to obtain a second bite at the apple," which "is exactly what claim preclusion was 28 designed to prevent." Id. IXI's request to assert newly issued claims of the '033 Patent against 1 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 Samsung and Apple, after losing on the merits of all of the originally asserted claims of the same patent, 2 likewise amounts to an improper attempt at a "do-over," and is barred by res judicata. As such, IXI's 3 motion to amend its infringement assertions regarding the '033 Patent should be denied as futile. 4 Second, IXI's request to add proposed draft claims that have not been issued by the PTO is 5 premature. Regarding the '532 Patent, IXI seeks leave to assert infringement of proposed, but not yet 6 allowed or issued, claims pending in the ongoing ex parte reexamination of the '532 Patent (the "'532 7 Reexam"). It is axiomatic that courts do not have subject matter jurisdiction over infringement 8 allegations directed to patent claims that the PTO has yet to issue. In certain cases, attempts to assert 9 such claims have even been sanctioned as frivolous. IXI's improper request to amend its infringement 10 contentions to assert the proposed draft claims therefore should also be denied. 11 Third, IXI fails to meet the good cause standard for amendment because it has not made a 12 sufficient showing of good cause. IXI fails to enumerate which of the 104 new and proposed 13 reexamination claims it seeks to add to this case. IXI fails to identify any additional products it plans to 14 accuse. IXI also fails to proffer any amended or proposed infringement contentions or claim charts 15 applying the new claims to Defendants' products. While IXI may prefer to wait and see if the Court will 16 permit its improper assertions before doing this work, its conduct runs counter to the jurisprudence of 17 this District in requiring patentees to show good cause for amendment and contrasts with that of the 18 patentees in IXI's own legal authorities. On this record, the Court should deny IXI's motion. 19 II. BACKGROUND 20 A. Procedural Background and Original Infringement Contentions 21 IXI filed these lawsuits against Samsung Electronics Co. Ltd. and Samsung Electronics America 22 Inc. (collectively, "Samsung") and Apple Inc. ("Apple" and, together with Samsung, "Defendants") on 23 June 17, 2014 and October 2, 2014, respectively, in the Southern District of New York.1 In its 24 complaints, IXI asserted four patents: the '033 Patent, the '532 Patent, and U.S. Patent Nos. 7,426,398 25 and 7,016,648 (the "'398 Patent" and the "'648 Patent"). The '398 Patent was voluntarily dismissed 26 before the case was transferred to this Court. 27 1 28 IXI also filed suit against BlackBerry Limited and BlackBerry Corporation, but voluntarily dismissed its complaint against BlackBerry without prejudice on February 5, 2019. 2 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 On February 3, 2015, Defendants moved to transfer this case from the Southern District of New 2 York to this Court. While Defendants' motion to transfer was pending, Defendants served their 3 preliminary invalidity contentions on March 9, 2015. IXI then served its most recent infringement 4 contentions on April 15, 2015. IXI's infringement contentions asserted 41 claims from the three 5 remaining patents-in-suit: 6 Patent Claims Asserted in IXI's Contentions 7 '033 1, 4-7, 12, 14-15, 22-23, 25, 28, 34, 39, 40, 42, 46 8 '532 1, 4-5, 7-10, 12, 14-16, 23, 24 9 '648 1-2, 7, 9, 14-16, 22-23, 27, 30 10 11 (Ex. 1, 4/15/15 IXI Second Amend. Disclosure of Asserted Claims at 2). 12 The parties submitted a joint claim construction statement on June 8, 2015. (Dkt. 68).2 13 Defendants deposed a co-inventor of the '532 and '033 Patents on July 1, 2015. IXI filed its opening 14 claim construction brief on July 8, 2015. (Dkt. 73). Defendants deposed IXI's claim construction expert 15 on July 28, 2015. Defendants' motion to transfer the case to this Court was granted on August 6, 2015. 16 B. Invalidation of IXI's Originally Asserted Claims 17 On June 18 and 19, 2015, Samsung and Apple filed petitions for IPR with the PTAB on all 18 asserted claims of the three remaining patents-in-suit. On December 30, 2015, the PTAB instituted 19 review of all of the challenged claims, except claim 10 of the '532 Patent. The PTAB subsequently held 20 that all of the instituted claims were obvious. IXI appealed the Final Written Decision finding 21 unpatentable all challenged claims of the '033 Patent to the Federal Circuit, but did not appeal the 22 PTAB's decisions regarding the '532 and '648 Patents. On September 10, 2018, the Federal Circuit 23 affirmed the PTAB's decision regarding the '033 Patent. The PTO issued an inter partes review 24 certificate cancelling the challenged claims of the '033 Patent on January 16, 2019. The PTO separately 25 issued inter partes review certificates cancelling the challenged claims of the '648 and '532 Patents 26 (except for claim 10 of the '532 Patent) respectively on February 9 and 27, 2018. 27 28 2 Citations to docket numbers are to the docket in Case No. 4:15-CV-03752-HSG. 3 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 C. Reexamination of the '033 Patent and Subsequent Inter Partes Reviews 2 In March 2017, after the PTAB found all asserted claims of the '033 Patent obvious, and during 3 the pendency of IXI's appeal of that decision to the Federal Circuit, IXI sought an ex parte 4 reexamination of the '033 Patent. In February 2018, the ex parte reexamination of the '033 Patent 5 concluded, resulting in one revised claim (claim 56) and 68 new claims (claims 57 through 124). In its 6 present motion to amend, IXI now seeks to assert an unidentified number of those new claims in this 7 case through the present motion to amend. 8 D. Ongoing Reexamination of the '532 Patent 9 On April 3, 2018, Apple requested ex parte reexamination of several claims of the '532 Patent, 10 including asserted claim 10. In its request, Apple proposed four separate grounds for invalidity of claim 11 10. On May 23, 2018, the PTO granted Apple's request for reexamination proceedings for all of the 12 challenged claims of the '532 Patent, including claim 10—the only claim upon which the PTAB did not 13 institute IPR previously. On September 25, 2018, the PTO issued its first Office Action, rejecting all of 14 the challenged claims. (See Ex. 2, 9/25/18 Office Action). The PTO rejected claim 10 on each of the 15 four grounds proposed by Apple, and claim 10 therefore stands rejected in the '532 Reexam. (See id. at 16 12-26). On February 20, 2019, IXI submitted its response to the first Office Action, and proposed 17 adding 35 new claims to the '532 Patent. (Ex. 3, 2/20/19 Response to Office Action). The PTO has not 18 yet issued an Office Action addressing the proposed claims. 19 In early March, Apple submitted a petition to the PTO requesting that the PTO deny entry of 20 IXI's proposed claims in the '532 Reexam because IXI pursued these new claims based on a declaration 21 from an expert witness while that expert had an ongoing engagement with Apple in this case. (See Ex. 22 4, Apple Petition at 5-15). That petition also asked the PTO to correct various errors made in the 23 reexamination of the '033 Patent, including, inter alia, the PTO's failure to determine whether IXI's 24 proposed new claims were patentably distinct from the originally asserted and now cancelled claims, 25 which it was required to do under 37 C.F.R. 42.73(d)(3)(i). (See id. at 1-4, 15-18). 26 It presently is unknown whether the proposed new claims that are pending before the PTO in the 27 '532 Reexam will ever issue, whether the claims will be amended in response to rejections from the 28 PTO, or how long it will take to fully resolve the issue of their patentability. 4 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 III. ARGUMENT 2 "Futility of amendment can, by itself, justify the denial of a motion for leave to amend." Bonin 3 v. Calderon, 59 F.3d 815, 845 (9th Cir. 1995). Here, IXI's proposed amendments with regard to both 4 the '033 and the '532 Patents are futile. As explained below, IXI's attempt to vastly expand the scope of 5 this case—which Defendants already successfully narrowed through IPR proceedings—improperly 6 disregards controlling law barring IXI's proposed assertions of newly issued '033 Patent claims and 7 still-pending '532 Patent proposed claims. 8 A. Res Judicata Bars IXI's Proposed Assertion of the '033 Patent's New Reexamination Claims. 9 10 In its current infringement contentions, served on April 15, 2015, IXI asserted 17 original claims 11 of the '033 Patent against Defendants. As noted above, the PTAB held that all of these claims were 12 obvious, the Federal Circuit affirmed the PTAB's decision, and the claims are now cancelled.3 Res 13 judicata (i.e., claim preclusion) now bars IXI's request to amend its infringement contentions to pursue a 14 "do-over" using newly issued claims of the '033 Patent that it obtained via reexamination. "Res judicata 15 applies when 'the earlier suit. . . (1) involved the same 'claim' or cause of action as the later suit, (2) 16 reached a final judgment on the merits, and (3) involved identical parties or privies.'" Mpoyo v. Litton 17 Electro-Optical Sys., 430 F.3d 985, 987 (9th Cir. 2005) (citation omitted); see also Senju Pharm., 746 18 F.3d at 1348 ("[U]nder the doctrine of res judicata, a judgment 'on the merits' in a prior suit involving 19 the same parties or their privies bars a second suit based on the same cause of action"). For purposes of 20 determining whether two proceedings involve the same "cause of action," a "cause of action is defined 21 by the transactional facts from which it arises, and the extent of the factual overlap." Senju Pharm., 746 22 F.3d at 1349. As explained below, the PTAB and Federal Circuit proceedings that resulted in a finding 23 of obviousness, and subsequent cancellation, of the original claims of the '033 Patent shared the same 24 transactional facts with the proceedings involving the '033 Patent that IXI proposes to conduct in this 25 Court. The two proceedings therefore involve the same cause of action, and the final judgment and 26 same parties requirements for applying res judicata also are met. 27 3 28 Under the relevant statutory provisions, the PTAB's invalidity determination becomes final once "the time for appeal has expired or any appeal has terminated." 35 U.S.C. 318(b). 5 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 1. The Originally Asserted Claims of the '033 Patent and the New Reexamination Claims Represent the Same Cause of Action. 2 3 Because the PTAB's findings of obviousness regarding the originally asserted claims of the '033 4 Patent—and the Federal Circuit's affirmance of that decision—involved the same patent under which 5 IXI now attempts to assert newly obtained claims, the same cause of action is at issue, and res judicata 6 applies. In Senju Pharm., the Federal Circuit rejected an argument that "reexamination created a new 7 cause of action because the reexamined patent claims are substantially different from the claims in the 8 original [asserted] patent." Senju Pharm., 746 F.3d at 1350. Rather, the Federal Circuit explained that 9 "claims that emerge from reexamination do not in and of themselves create a new cause of action that 10 did not exist before." Id. at 1352 (emphasis added). That is because statutory restrictions upon the 11 scope of claims that can be obtained through reexamination ensure that "reexamination does not provide 12 larger claim scope to a patentee than the patentee had under the original patent claims." Id. at 1353. 13 The Federal Circuit specifically confirmed that the new reexamination claims presented the same 14 cause of action as the original claims because one "could readily ascertain that the reexamined claims 15 were essentially the original claims with the addition of limitations designed to avoid prior art." Id. 16 Here, too, it is apparent that the '033 Patent's new reexamination claims are essentially the original 17 claims with additional limitations to avoid the prior art. By way of illustration, the table below 18 compares original claim 1 of the '033 Patent with new claim 65 (highlighting in green the elements that 19 are identical, and in yellow those that were added to the new claim). 20 Original Claim 1 New Reexamination Claim 65 21 A system for providing access to the Internet, A system for providing access to the Internet, 22 comprising: comprising: 23 a first wireless device, in a short distance wireless a first wireless device, in a short distance wireless 24 network, having a software component to access network, having a software component to access 25 information from the Internet by communicating information from the Internet by communicating 26 with a cellular network in response to a first with a cellular network in response to a first 27 short-range radio signal, wherein the first wireless short-range radio signal, wherein the first wireless 28 6 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 device communicates with the cellular network device communicates with the cellular network 2 and receives the first short-range radio signal; and and receives the first short-range radio signal, 3 wherein the first wireless device comprises router 4 software to establish the short distance wireless 5 network, wherein the router software comprises a 6 routing component for exchange of IP packets; 7 wherein the first wireless device includes a 8 speaker, a microphone, and a touchscreen, 9 wherein the first wireless device includes 10 software applications including a telephony 11 application, a personal information manager 12 application including emails, and a location 13 application for providing a current location of the 14 first wireless device; and, 15 a second wireless device, in the short distance a second wireless device, in the short distance 16 wireless network, to provide the first short-range wireless network, to provide the first short-range 17 radio signal, radio signal, 18 wherein the software component includes a wherein the software component includes a 19 network address translator software component to network address translator software component to 20 translate between a first Internet Protocol ("IP") translate between a first Internet Protocol ("IP") 21 address provided to the first wireless device from address provided to the first wireless device from 22 the cellular network and a second address for the the cellular network and a second address for the 23 second wireless device provided by the first second wireless device provided by the first 24 wireless device, wireless device, 25 wherein the software component includes a wherein the software component includes a 26 service repository software component to identify service repository software component to identify 27 a service provided by the second wireless device. a service provided by the second wireless device. 28 7 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 Notably, IXI acknowledged during the reexamination that new limitations were added to avoid the prior 2 art asserted in the preceding IPR, stating that a "number of features" were "included in new claims 57- 3 129, that are not addressed by the grounds or references as applied in IPR2015-01444." (Ex. 5, IXI 4 Reexamination Request at 46). Because the new reexamination claims that IXI obtained are "essentially 5 the original claims with the addition of limitations designed to avoid prior art," the new claims present 6 the same cause of action as the original claims from the same patent. Senju Pharm., 746 F.3d at 1353. 7 Further, in considering whether a new reexamination claim could ever be sufficiently different 8 from the original claims to avoid res judicata, the Federal Circuit noted that "in the absence of a clear 9 showing that such a material difference in fact exists in a disputed patentable reexamination claim, it can 10 be assumed that the reexamined claims will be a subset of the original claims and that no new cause of 11 action will be created." Id. at 1353 (emphasis added). IXI has not made any such showing. To the 12 contrary, IXI asserts that the new claims will not "change the complexity or scope of this case," because 13 they "relate to the same technology, asserted patents, and parties" as the originally asserted claims. 14 (Dkt. 166, IXI Mot. at 7). It therefore is beyond dispute that the '033 Patent's new reexamination claims 15 present the same cause of action as the '033 Patent's original, and now cancelled, claims for purposes of 16 res judicata. 17 2. The Previous Administrative Proceedings and This District Court Litigation Involve the Same Cause of Action for Purposes of Res Judicata. 18 19 While Senju Pharm. happened to involve a previous finding of invalidity in a district court 20 action, courts have confirmed that claim preclusion also may be based upon final determinations 21 obtained in previous administrative proceedings: 22 We have long favored application of the common-law doctrines of collateral estoppel (as to issues) and res judicata (as to claims) to those determinations of administrative bodies 23 that have attained finality. "When an administrative agency is acting in a judicial capacity and resolves disputed issues of fact properly before it which the parties have had 24 an adequate opportunity to litigate, the courts have not hesitated to apply res judicata to 25 enforce repose." 26 Astoria Fed. Sav. & Loan Ass'n v. Solimino, 501 U.S. 104, 107 (1991) (citation omitted); see also 27 MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018) (confirming that PTAB 28 rulings have preclusive effect in court litigation); Cal. Comput. Prods., Inc. v. Simplicity Pattern Co., 8 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 No. CV-69-1763, 1977 WL 22791, at *2 (C.D. Cal. May 23, 1977) (holding that "[u]nder the doctrines 2 of res judicata and collateral estoppel, plaintiff is barred from" pursuing infringement assertions in 3 district court after reissue claims from the same patent were rejected in a PTO proceeding). 4 Here, res judicata applies to the final determination of obviousness by the PTAB and Federal 5 Circuit. The PTAB acted in a judicial capacity to determine that the '033 Patent's claims were obvious, 6 and it provided both IXI and Defendants an ample opportunity to present their respective positions 7 before it resolved the issue via a determination of obviousness. The PTAB's administrative ruling also 8 was rendered final by affirmance on appeal by the Federal Circuit. Therefore, IXI's current attempt at a 9 "do-over" for the new '033 Patent claims is precluded. 10 Further, there is a significant overlap between the transactional facts involved in the prior IPR 11 proceedings (and the Federal Circuit affirmance) and the proposed assertions in this case. See Senju 12 Pharm., 746 F.3d at 1349 (a "cause of action is defined by the transactional facts from which it arises, 13 and the extent of the factual overlap"). Under the AIA statute, IPRs offer parties the opportunity to 14 pursue a freestanding cause of action regarding invalidity, in lieu of or supplementary to a district court 15 action. Defendants' IPR challenge involved transactional facts regarding the nature and scope of the 16 '033 Patent and the teachings of the relevant prior art. In this case, the counterclaims likewise request a 17 finding of invalidity of the '033 Patent. (Ex. 6, 9/26/14 Answer & Counterclaims at 13-14). IXI's 18 infringement claims also implicate the issue of validity, including via the affirmative defense of 19 invalidity. (Id. at 8). Thus, the transactional facts in this case regarding the question of the '033 20 Patent's validity overlap substantially, if not completely, with the transactional facts at issue in the IPR.4 21 In addition to the significant factual overlap between the IPR proceedings and this case, IXI's 22 Federal Circuit appeal involved an additional overlap of transactional facts with this case. Although the 23 AIA provides a freestanding statutory cause of action to challenge validity in an administrative 24 25 4 This extensive overlap is in no way diminished by the existence of other relevant facts pertaining to certain aspects of IXI's district court claims, such as its request for damages against various accused 26 products. See Baker by Thomas v. Gen. Motors Corp., 522 U.S. 222, 234 (1998) ("We see no reason why the preclusive effects of an adjudication on parties and those 'in privity' with them, i.e., claim 27 preclusion and issue preclusion (res judicata and collateral estoppel), should differ depending solely upon the type of relief sought in a civil action"); Bojorquez v. Abercrombie & Fitch, Co., 193 F. 28 Supp. 3d 1117, 1125 (C.D. Cal. 2016) (rejecting argument that res judicata did not apply due to alleged differences where the "central issue in both cases" was the same). 9 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 proceeding before the PTAB, a Federal Circuit appeal implicates traditional constitutional requirements, 2 such as standing. See, e.g., Momenta Pharm., Inc. v. Bristol-Myers Squibb Co., 915 F.3d 764, 768 (Fed. 3 Cir. 2019) (dismissing appeal from IPR ruling on grounds that "judicial review of agency action remains 4 subject to the constitutional foundation of injury-in-fact, lest the court occupy only an advisory role"). 5 Thus, there is also an overlap in the transactional facts that permitted IXI to pursue its Federal Circuit 6 appeal regarding the '033 Patent's validity—which encompasses the case or controversy between the 7 parties regarding IXI's infringement assertions against Defendants' accused products as part of the 8 constitutional basis for the appeal—and the facts that permit it to undertake this district court action for 9 alleged infringement of the same patent. 10 Accordingly, while the reexamination claims in this case were obtained following a 11 determination of obviousness in the IPR proceedings (that was affirmed on appeal to the Federal 12 Circuit), as opposed to the district court ruling at issue in Senju Pharm., that is a distinction without a 13 difference for purposes of claim preclusion. The Federal Circuit's analysis in Senju Pharm.—where it 14 found the patentee was barred from seeking a "do-over" or "obtain[ing] a second bite at the apple" by 15 asserting new reexamination claims after the original claims were held to be invalid—applies directly to 16 this case. Senju Pharm., 746 F.3d at 1353. Thus, IXI's request to amend its infringement contentions to 17 assert the new reexamination claims "is exactly what claim preclusion was designed to prevent." Id.5 18 Thus, the Court should not allow IXI to add the new claims. 19 3. The Other Requirements for Res Judicata Also Are Met. 20 As noted above, claim preclusion requires a "final judgment on the merits" in a proceeding that 21 "involved identical parties or privies.'" Mpoyo, 430 F.3d at 987. Those requirements are satisfied here. 22 First, the PTAB entered a determination of obviousness of all originally asserted claims of the 23 '033 Patent, the Federal Circuit affirmed the PTAB's determination that the claims were obvious, and 24 25 5 In a non-precedential opinion in Target Training, the Federal Circuit suggested in dicta that new 26 reexamination claims could be asserted after the original claims were invalidated in ex parte reexamination—without addressing whether res judicata would result from the reexamination. 27 Target Training Int'l, Ltd. v. Extended Disc N. Am., Inc., 645 F. App'x 1018, 1025-26 (Fed. Cir. 2016). This is not surprising given that ex parte reexaminations have long been held not to support 28 preclusion. Application of Herr, 377 F.2d 610 (CCPA 1967). In contrast, inter parties proceedings, such as the IPR at issue here, do support preclusion. See, e.g., MaxLinear, 880 F.3d at 1376. 10 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 the PTO has formally cancelled all of those claims. IXI did not pursue any further appeals or request 2 any rehearing, and the time for it to do so has passed. The judgment of obviousness for the originally 3 asserted and now cancelled claims therefore is final. See 35 U.S.C. § 318 (specifying that an IPR ruling 4 becomes final after "the time for appeal has expired or any appeal has terminated"). 5 Second, the parties to this case were also involved in the PTAB and Federal Circuit proceedings. 6 As noted above, the IPR proceeding was jointly filed by Samsung and Apple, and IXI obviously 7 appeared in the IPRs to attempt to defend its claims' validity. IXI, Samsung, and Apple likewise were 8 parties to the Federal Circuit appeal. 9 B. IXI Cannot Assert Draft Claims Not Yet Issued by the PTO. 10 IXI's attempt to amend its contentions to add the claims that IXI has proposed in the '532 11 Reexam, but the PTO has not yet considered, ignores the fundamental tenet of patent law that one 12 cannot infringe non-issued claims. In particular, in the ongoing '532 Reexam, IXI has proposed 35 draft 13 patent claims for the PTO to evaluate. (Ex. 3, 2/20/19 Response to Office Action). These draft claims 14 have not been allowed, much less issued. Indeed, they may never issue if the PTO continues to reject 15 IXI's arguments asserted in the '532 Reexam. IXI nevertheless now seeks to add an unidentified 16 number of these proposed claims to this case.6 (Dkt. 166, IXI Mot., Relief Requested). However, these 17 draft claims remain a legal nullity and under clear legal standards discussed below—none of which IXI 18 even attempts to address—cannot be added to this case.7 19 It is axiomatic that the Court cannot hear a dispute without subject matter jurisdiction. And 20 courts lack subject matter jurisdiction over draft patent claims that have not been issued by the PTO. 21 See Gayler v. Wilder, 51 U.S. 477, 493 (1850) ("The inventor of a new and useful improvement 22 certainly has no exclusive right to it, until he obtains a patent. This right is created by the patent, and no 23 suit can be maintained by the inventor against any one for using it before the patent is issued."); Ho 24 25 6 IXI is also arguing in the '532 Reexam that original claim 10 (the only claim currently asserted in 26 this case) and original claim 11 (not asserted) are patentable in light of the prior art submitted by Apple in support of its reexamination request. 27 7 Potential assertion of claims that may issue in the future from the '532 Reexam is also barred by res 28 judicata, as discussed earlier in connection with the '033 Patent. However, it is premature to address this issue before issuance of any '532 Reexam claims. 11 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 Keung Tse v. eBay Inc., No. C 11-01812 WHA, 2011 WL 13257446, at *1 (N.D. Cal. Aug. 29, 2011) 2 (explaining, in denying plaintiff's attempt to assert non-issued patent claim currently pending in 3 reexamination, that "[i]n the patent context, infringement allegations are not sufficient to create a case or 4 controversy unless they are made with respect to a patent that has issued before a complaint is filed," 5 and holding, "Plaintiff's infringement allegations are not based on any existing patent claim or any 6 patent claim that existed when the complaint was filed. As such, there is no case or controversy over 7 which jurisdiction can be exercised.") (internal quotes and citations omitted); see also Marsh v. Nichols, 8 Shepherd & Co., 128 U.S. 605, 612 (1888) ("Until the patent is issued, there is no property right in it; 9 that is, no such right as the inventor can enforce."). In fact, attempts to assert pending claims that were 10 not yet issued have even been sanctioned as frivolous. See JAT Wheels Inc. v. JNC Wheel Collection, 11 No. CV 14-04898 JVS MRWX, 2014 WL 4568323, at *2 (C.D. Cal. Sept. 8, 2014) (imposing sanctions 12 under Rule 11 because it "was clearly objectively unreasonable for STR to assert infringement claims 13 against JNC based upon pending patent applications"). 14 Further, the governing Patent Laws provide that "whoever without authority makes, uses, offers 15 to sell, or sells any patented invention, within the United States. . . during the term of the patent 16 therefore, infringes the patent." 35 U.S.C. § 271(a) (emphasis added). Here, IXI's draft claims in the 17 '532 Reexam have not issued, and thus their terms have not started and IXI cannot enforce them. 18 Accordingly, there can be no claim for infringement of IXI's draft claims proposed, but not yet allowed 19 or issued, in the '532 Reexam. Indeed, there is no certainty that these draft claims will ever issue, much 20 less when they will issue or what scope the issued claims will have. 21 Further, the Acer case cited in IXI's motion notes the various practical problems with attempting 22 to assert claims that are still pending before the PTO. In particular, the Court observed that it makes no 23 sense for a "party awaiting USPTO action [to] assert all potential claims," because "[i]nstead of 24 promoting an orderly process, such a request would add confusion and uncertainty to the litigation." 25 Acer, Inc. v. Tech. Props. Ltd., No. 5:08-CV-00877 JF/HRL, 2011 WL 1838768, at *3 (N.D. Cal. May 26 13, 2011). In contrast, the Court indicated it was helpful for a party to have "offered to assert claims 27 conditionally," only with regard to claims for which the PTO had already issued a "NIRC" (i.e., a notice 28 of intent to issue a reexamination certificate). See id. Claims subject to a NIRC have already been 12 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 approved by the PTO and will issue imminently. That is essentially the opposite scenario from IXI's 2 proposal here, where IXI seeks to assert pending, draft claims for which the PTO has not yet even issued 3 an initial Office Action and where it remains unclear whether the claims will issue at all, whether they 4 will be amended during prosecution, and when the PTO's final disposition will be made. 5 IXI acknowledged this fundamental tenet of patent law in its prior submissions, but now chose to 6 ignore this problem. For example, IXI's December 21, 2018 reply brief in support of its Motion to Lift 7 Stay plainly conveyed its understanding that it cannot assert the draft claims before they issue: 8 Defendants suggest that the stay should be maintained because additional claims may issue in the reexamination of the '532 Patent. (Defs' Opp. Br. at 12.) At this time, no 9 new claims have issued, and even if they did, IXI has not decided whether it would assert such hypothetical new claims in this litigation. If and when such claims issue and if and 10 when IXI seeks to include such claims in the case, this Court will have discretion as to 11 whether to allow such claims at that time. At this point, the Defendants' conjecture about the possibility of the PTO issuing additional patent claims for the '532 Patent is irrelevant 12 to the stay issue before the Court. 13 (Dkt. 148 at 15:2-8) (emphasis added). This Court should deny IXI's attempt to side-step the bedrock 14 principle of patent law that one cannot sue for infringement of a patent claim that does not exist. Not 15 only can Defendants not infringe such non-issued patent claims, but IXI's request to inject these claims 16 to this case is barred by lack of subject matter jurisdiction. 17 C. IXI Has Failed To Provide Basic Information Required to Evaluate the Practical Impact of Its Motion. 18 19 Even apart from the fact that IXI is legally precluded from asserting both the new claims 20 resulting from the '033 Reexam and the draft new claims pending in the ongoing '532 Reexam, IXI has 21 failed to provide basic information that is needed to evaluate its desired amendments' impact upon this 22 case. First, IXI has not provided any proposed amended infringement contentions for any of the new 23 claims and products that it now seeks to add to this case—which IXI has had more than sufficient time 24 to prepare given that the new '033 Reexam claims issued over a year ago and Defendants' products are 25 readily available for purchase. Indeed, IXI has not even identified any of the new claims or accused 26 products it seeks to add to the case. IXI's failure to do so contradicts any attempt to show good cause 27 and conflicts with the case law it relies on in support of its motion. Second, should IXI be permitted to 28 amend its infringement contentions as it desires without making clear what amendments are 13 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 contemplated, Defendants would face undue prejudice in defending against a host of new claims without 2 the ability to set a proper schedule for addressing additional claim limitations. Presumably, IXI prefers 3 to hold off on doing the work of developing its proposed amendments while it waits to see if the Court 4 will permit its legally-barred assertions. But this approach fails to show good cause for any amendments 5 that are found not be legally precluded and futile. 6 Courts in this District routinely reject motions for leave to amend infringement contentions 7 where the movant fails to provide proposed amended infringement contentions—and even where the 8 movant fails to provide sufficiently detailed proposed amended infringement contentions. For example, 9 in Guzik Technical Enterprises, Inc. v. Western Digital Corp., the court summarized its prior ruling 10 denying the plaintiff's motion for leave to amend its infringement contentions because the plaintiff did 11 not provide proposed amended infringement contentions to the court or the defendant. See No. 5:11- 12 CV-03786-PSG, 2013 WL 6092852, at *2 (N.D. Cal. Nov. 19, 2013). In particular, in Guzik, the 13 plaintiff "sought leave. . . to amend its infringement contentions," but "did not offer its proposed 14 amended infringement contentions to the court" or the defendant. Id. Instead, and as IXI has done here, 15 the plaintiff in Guzik "sought leave only on the grounds that it had good cause and [the defendant] would 16 not be prejudiced based on its own assessment of its contentions." Id. The court then "heard argument 17 regarding [plaintiff's] motion," and "issued its order the same day denying [plaintiff's] request for 18 leave" because, "absent a review of the proposed infringement contentions, the court could not evaluate 19 good cause or possible prejudice." Id. 20 Similarly, in Karl Storz Endoscopy-America, Inc. v. Stryker Corp., the plaintiff sought leave to 21 supplement its infringement contentions with new products and infringement theories. See No. C 09- 22 00355 WHA, 2011 WL 5574807, at *1 (N.D. Cal. Nov. 16, 2011). In denying the plaintiff's motion, the 23 court reasoned that the plaintiff "has not submitted any proposed supplemental infringement 24 contentions," and explained that it was therefore "impossible to evaluate how the new contentions differ 25 from the initial contentions, what evidence supports the new contentions, and what evidence was 26 discovered, and whether the changes would prejudice [the defendant]." Id. at *2. Accordingly, the 27 court held that the plaintiff had "not met its burden of showing good cause for amendment." Id.; see 28 also Xiaohua Huang v. Open-Silicon, Inc., No. 18-CV-00707-JSW (LB), 2018 WL 5099275, at *5 14 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 (N.D. Cal. Aug. 27, 2018) (denying plaintiff's motion to amend infringement contentions where 2 plaintiff's "proposed amendments fail[ed] to comply with Local Rule 3-1," "simply add[ed] and 3 intersperse[d]" boilerplate language, and failed to "identify [the] accused instrumentalities 'as 4 specific[ally] as possible,' 'by name or model number, if known,' or 'by any product, device, or 5 apparatus which, when used, allegedly results in the practice of the claimed method or practice'"). 6 As in Guzik and Karl-Storz, IXI has completely failed to provide the Court and Defendants with 7 any proposed amended infringement contentions, or even to identify the new claims or new products 8 that it wants to add to its infringement contentions. Instead, IXI vaguely requests "to add new claims 9 that issued as a result of the '033 Patent Reexamination"; "to add claims that are currently pending in the 10 '532 Patent Reexamination"; and "to include new products for '532 Patent, Claim 10." (Dkt. 166, IXI 11 Mot., Relief Requested). IXI gives no specifics as to which claims, which products, or which 12 combinations of the two it wants to assert. Given that the new claims resulting from the '033 Reexam 13 issued over a year ago, and the Defendants' products are readily available for public purchase, IXI's 14 failure to provide proposed amended infringement contentions is inexplicable. Moreover, without 15 proposed amended infringement contentions and an identification of the claims and new products that 16 IXI wants to add to this case, it is impossible to evaluate the prejudice Defendants will face should IXI 17 be allowed to amend its infringement contentions. As indicated in Guzik and Karl-Storz, such a scant 18 proposal is insufficient to establish good cause to amend. 19 Indeed, IXI's own authorities show what it should have done to establish good cause. In Acer, 20 for example, the patentee "served the proposed amendments to its infringement contentions the same 21 day" that it received a Reexamination Certificate confirming the patentability of the new claims it 22 sought to add to the case for one of the patents-in-suit. See Acer, 2011 WL 1838768, at *1. Similarly, 23 as provided above, the patentee served proposed amended infringement contentions for the other patent- 24 in-suit after the PTO issued a notice of intent to issue a reexamination certificate for that patent. Id. 25 Accordingly, the patentee in Acer not only identified each specific claim that it sought to add to its 26 infringement contentions, but it also filed proposed amended infringement contentions for each claim 27 and each new product that it sought to accuse, which the court relied on in finding that the patentee was 28 diligent. Id. at *4. IXI has failed to take any of these steps, evidencing a lack of diligence. 15 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 IXI also cites Apple Inc. v. Samsung Electronics Co., No. CV 12-00630 LHK, 2012 WL 2 5632618, at *2 (N.D. Cal. Nov. 15, 2012), for the proposition that "[c]ourts of the Northern District of 3 California have found good cause for leave to amend when the defendant released new products, so long 4 as the plaintiff acted diligently in seeking leave to amend." (Dkt. 166 at 4). However, in that case, 5 when Apple released potentially infringing new products, Samsung gave notice a week later that it was 6 going to amend its contentions and provided a copy of its proposed amendments, which the court 7 viewed as establishing diligence. Apple, 2012 WL 5632618, at *2 (emphasis added). Here, IXI has not 8 provided Defendants with any notice regarding any new products that it seeks to add to this case, much 9 less provided proposed amended infringement contentions for such products. Simply put, IXI's failure 10 to provide a single proposed amended infringement contention or to identify the claims and new 11 products it wants to add to this case contravenes the case law upon which IXI itself relies in support of 12 its motion and shows its lack of diligence.8 IXI's motion should be denied on this basis, as well. 13 Further, the vague nature of IXI's request to amend makes it difficult to determine the impact of 14 its proposed amendments upon the schedule and progress of this case. The Parties litigated this case for 15 over a year before the Court stayed the case on November 12, 2015. (Dkt. 133). Before the Court 16 stayed the case, the parties dedicated substantial work and resources to addressing the originally asserted 17 claims. Defendants served their invalidity contentions on March 9, 2015. The parties submitted a joint 18 claim construction statement on June 8, 2015. (Dkt. 68). IXI filed its opening claim construction brief 19 on July 8, 2015. (Dkt. 73). Defendants deposed a co-inventor of the '532 and '033 Patents on July 1, 20 2015. Defendants also deposed IXI's claim construction expert on July 28, 2015. Without knowing the 21 nature of IXI's proposed amendments, Defendants cannot determine whether this case will essentially 22 start anew and to what extent Defendants will be required to invest significant efforts on new issues 23 relating to, for example, claim construction, infringement, and validity. 24 And if, some months from now, IXI finally succeeds in obtaining some version of the currently 25 pending draft claims in the '532 Reexam, this would require even more effort from Defendants to 26 8 27 In the parties' proposed schedule, Defendants proposed a future date for IXI to provide infringement contentions with source code citations. (Dkt. 158, Joint Case Management Statement at 12). At the 28 motion to amend stage, IXI should at least provide a basic version of its proposed amended contentions—and can then add source code citations on the proposed contention date in the future. 16 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 address the new limitations posed in those claims. Having stressed the importance of a speedy 2 resolution when asking the Court to lift the stay, IXI should have provided a full disclosure of the nature 3 of its proposed amendments so the impact of such amendments can be evaluated. 4 IV. CONCLUSION 5 For the foregoing reasons, Apple and Samsung respectfully request that the Court deny IXI's 6 motion to amend its infringement contentions. 7 March 21, 2019 Respectfully submitted, KIRKLAND & ELLIS LLP 8 9 By /s/ Todd M. Friedman Gregory S. Arovas, P.C. (admitted pro hac vice) 10 Todd M. Friedman, P.C. (admitted pro hac vice) KIRKLAND & ELLIS LLP 11 601 Lexington Avenue New York, New York 10022 12 Telephone: (212) 446-4800 Facsimile: (212) 446-4900 13 greg.arovas@kirkland.com todd.friedman@kirkland.com 14 David Rokach (admitted pro hac vice) 15 KIRKLAND & ELLIS LLP 300 N. LaSalle 16 Chicago, Illinois 60654 Telephone: (312) 862-2000 17 Facsimile: (212) 862-2200 david.rokach@kirkland.com 18 Brandon Brown 19 KIRKLAND & ELLIS LLP 555 California Street 20 San Francisco, California 94104 Telephone: (415) 439-1400 21 Facsimile: (415) 439-1500 brandon.brown@kirkland.com 22 Attorneys for Samsung Electronics Co., Ltd. and Samsung 23 Electronics America, Inc. 24 25 26 27 28 17 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 By /s/ Harrison J. Frahn IV Harrison J. Frahn IV (CA Bar No. 206822) 2 SIMPSON THACHER & BARTLETT LLP 2475 Hanover Street 3 Palo Alto, California 94304 Telephone: (650) 251-5000 4 Facsimile: (650) 251-5002 hfrahn@stblaw.com 5 6 Attorneys for Apple Inc. 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 18 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG 3 1 ATTESTATION OF CONCURRENCE IN FILING 2 Pursuant to the Northern District of California Local Rule 5-1(i)(3), I attest that concurrence in 3 the filing of this document has been obtained from the other Signatories to this document. 4 5 By /s Todd M. Friedman 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 19 DEFS.' OPP. TO PLS.' MOT. FOR LEAVE TO AMEND CASE NO. 15-CV-03755-HSG