Papst Licensing GmbH & Co., KG v. Apple, Inc.

RESPONSE in Opposition re Opposed MOTION to Lift Stay Temporarily for Limited Purpose

E.D. Tex.September 18, 2018

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION PAPST LICENSING GMBH & CO. KG, Plaintiff, v. APPLE INC., Defendant. § § § § § § § § § § § § Case No. 6:15-cv-01095-RWS DEFENDANT APPLE INC.’S OPPOSITION TO PLAINTIFF’S MOTION TO LIFT STAY TEMPORARILY FOR LIMITED PURPOSE Plaintiff Papst Licensing GmbH & Co. KG’s (“Papst”) motion to temporarily lift the stay is an unnecessary waste of judicial resources and is an improper tactic to belatedly shift litigation strategies to prejudice Defendant Apple Inc. due to Papst’s own lack of diligence. Dkt. No. 727. Papst has no legitimate basis to bring this motion at this stage given that appeals of the PTAB’s IPR decisions remain pending at the Federal Circuit. Lifting a stay should not be done in a piecemeal or temporary fashion. Instead, a stay should not be lifted until all appeals are exhausted regarding the IPR decisions. Moreover, Apple is severely prejudiced by the relief that Papst seeks as part of the requested temporary lift of the stay. Given that fact and expert discovery have been closed, Papst should not be allowed elect additional claims, amend infringement contentions and add additional products. As discussed in Apple’s concurrent opposition to Papst’s related motion, Papst had ample opportunity to raise these issues before the case was stayed, but it was not diligent and thus should not be given leave to do so now. Case 6:15-cv-01095-RWS Document 731 Filed 09/18/18 Page 1 of 3 PageID #: 420881 2 Papst could have included Claim 14 of the ’746 Patent when it served its final election of claims on March 14, 2017. By that point, the Court had already issued the claim construction order and Apple had already filed all 16 IPR petitions no later than January 2017. But Papst decided that it was not worth asserting Claim 14 of the ’746 Patent against Apple and instead selected 16 other claims which did not survive the PTAB’s scrutiny. Therefore, fact discovery and expert discovery proceeded—and Apple served its final election of prior art on April 21, 2017— without the prospect of Claim 14 returning to the case. Moreover, Papst has not been diligent in seeking to add Claim 14 to its elected claims. Even though IPRs were clearly contemplated, Papst never objected to the 16-claim limitation—which is based on the model set forth in the Eastern District of Texas’ General Order No. 13-20—when the parties negotiated the procedural schedule at the outset of the case. Similarly, Papst could have raised the quantity of elected claims issue right after the IPRs were instituted on the eve of the Court’s stay of this litigation on June 16, 2017. Instead, Papst waited more than a year to bring this motion as it waited for the PTAB’s final written decisions on the IPRs. Furthermore, Papst’s statements regarding the need to amend the infringement contentions based on Apple’s introduction of new products is misleading and a distraction. As detailed in Apple’s accompanying opposition on this issue, all products except for the iPhone 8, iPhone 8 Plus, and iPhone X were already released when the stay was entered. (Those models were released in September and November 2017.) And Papst served amended infringement contentions on April 6, 2017 but chose not to include three products that it now wants to add even though they were already released by that point (i.e., iPhone 7, iPhone 7 Plus, and iPad 9.7 inch). Papst should not be permitted to add these new products to this case. Moreover, Papst’s prior delays indicate there is no reason to lift the stay in this case until after all IPR appeals are exhausted. Case 6:15-cv-01095-RWS Document 731 Filed 09/18/18 Page 2 of 3 PageID #: 420882 3 For the foregoing reasons, Apple respectfully requests the Court deny Papst’s motion for leave to temporarily lift the stay because it is untimely and unnecessary. Dated: September 18, 2018 Respectfully submitted, /s/ Melissa Richards Smith David Alberti (admitted pro hac vice) dalberti@feinday.com Marc Belloli (admitted pro hac vice) mbelloli@feinday.com Jeremiah A. Armstrong (admitted pro hac vice) jarmstrong@feinday.com FEINBERG DAY ALBERTI LIM & BELLOLI LLP 1600 El Camino Real, Suite 280 Menlo Park, CA 94025 Telephone: (650) 618-4360 Facsimile: (650) 618-4368 Melissa Richards Smith melissa@gillamsmithlaw.com GILLAM & SMITH LLP 303 South Washington Avenue Marshall, TX 75670 Telephone: (903) 934-8450 Facsimile: (903) 934-9257 Attorneys for Defendant APPLE INC. CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court’s CM/ECF system per Local Rule CV-5(a)(3). Dated: September 18, 2018 /s/ Melissa Richards Smith Case 6:15-cv-01095-RWS Document 731 Filed 09/18/18 Page 3 of 3 PageID #: 420883