Broadcom Corporation v. Emulex Corporation

MEMORANDUM in Support of MOTION to Amend Infringement Contentions 272

C.D. Cal.February 14, 2011

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 i BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS WILLIAM F. LEE (admitted pro hac vice) (william.lee@wilmerhale.com) DOMINIC E. MASSA (admitted pro hac vice) (dominic.massa@wilmerhale.com) JOSEPH J. MUELLER (admitted pro hac vice) (joseph.mueller@wilmerhale.com) LOUIS W. TOMPROS (admitted pro hac vice) (louis.tompros@wilmerhale.com) WILMER CUTLER PICKERING HALE AND DORR LLP 60 State Street Boston, MA 02109 Telephone: (617) 526-6000 Facsimile: (617) 526-5000 Attorneys for Plaintiff and Counterclaim Defendant BROADCOM CORPORATION UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA, SOUTHERN DIVISION BROADCOM CORPORATION, Plaintiff, v. EMULEX CORPORATION, Defendant. CASE No. SACV 09-01058 JVS (ANx) consolidated SACV 10-03963-JVS (ANx) PLAINTIFF BROADCOM CORPORATION’S MEMORANDUM OF LAW IN SUPPORT OF MOTION TO AMEND INFRINGEMENT CONTENTIONS UNDER PATENT LOCAL RULE 3-6 Hon. James V. Selna Hearing Date: March 7, 2011 Time: 1:30 p.m. Courtroom: 10C FILED UNDER SEAL (Pursuant to Confidentiality Order) And Related Counterclaims Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 1 of 21 Page ID #:8715 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ii BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS Table of Contents INTRODUCTION .................................................................................................... 1 II. BACKGROUND ................................................................................. 3 A. Discovery from Third Parties ..................................... 3 B. Additional Discovery from Emulex and ServerEngines ..................... 5 III. ARGUMENT....................................................................................... 7 A. Legal Standard ..................................................................................... 7 B. Broadcom’s Has Demonstrated Good Cause Under Patent Local Rule 3-6........................................................................... 9 IV. CONCLUSION..................................................................................15 Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 2 of 21 Page ID #:8716 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 iii BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS Table of Authorities FEDERAL CASES O2 Micro Int'l Ltd. V. Monolithic Power Systems, Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006) ............................................................7, 8 RULES N.D. Cal. Patent Local Rule 3-6…………………………………………….passim Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 3 of 21 Page ID #:8717 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 iv BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS Table of Exhibits Exhibit Description 1 Geiszler to Tompros, Nov. 4, 2010 2 Geiszler to Tompros, Dec. 10, 2010 3 Emulex’s Memorandum of Points and Authorities in Support of Its Motion to Enforce Patent Local Rules 3-1 and 3-6, Sept. 13, 2010 4 Gervais Dep., Mar. 25, 2010 5 Non-Party Toshiba America Electronics Components, Inc.’s Objections to Plaintiff Broadcom’s Rule 45 Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action, May 14, 2010 6 Liss to Geiszler, May 17, 2010 7 Liss to Geiszler, May 24, 2010 8 Geiszler to Liss, May 24, 2010 9 Liss to Renfro, Sept. 8, 2010 10 Liss to Short, Sept. 8, 2010 11 Geiszler to Liss, Sept. 10, 2010 12 Geiszler to Liss, Sept. 10, 2010 13 Short to Liss, Sept. 20, 2010 14 Liss to Renfro, Oct. 22, 2010 15 Liss to Kessel, Oct. 22, 2010 16 Geiszler to Renfro, Nov. 5, 2010 17 Geiszler to Kessel, Nov. 5, 2010 18 Liss to Sosteck, Dec. 17, 2010 19 Liss to Sostek, Jan. 19, 2011 20 Tompros to Cooper et al., Aug. 4, 2010 Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 4 of 21 Page ID #:8718 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 v BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS Exhibit Description 21 Tompros to Smith, Aug. 26, 2010 22 Tompros to Smith, Aug. 30, 2010 23 Geiszler to Tompros, Aug. 31, 2010 24 Tompros to Geiszler, Sept. 27, 2010 25 Geiszler to Tompros, Sept. 29, 2010 26 Broadcom’s Second Notice of Service of Revised Subpoenas to ServerEngines, Mar. 26, 2010 27 Geiszler to Johnston, Jul. 16, 2010 28 Liss to Blackburn, Sept. 8, 2010 29 Geiszler to Liss, Sept. 10, 2010 30 Geiszler to Tompros, Sept. 13, 2010 31 Tompros to Smith, Mar. 29, 2010 32 Emulex’s Reply Memorandum of Points and Authorities in Further Support of Its Motion to Enforce Patent Local Rules 3-1 and 3-6, Jun. 16, 2010 33 Plaintiff Broadcom Corporation’s First Set of Requests for Production of Documents, Electronically Stored Information, and Tangible Things to Defendant Emulex Corporation, Nov. 30, 2009 Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 5 of 21 Page ID #:8719 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 1 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS INTRODUCTION Plaintiff Broadcom Corporation has recently obtained additional nonpublic information from Defendant Emulex Corporation and third parties relevant to asserted U.S. Patent Nos. 6,424,194 (“the `194 patent”), 7,486,124 (“the `124 patent”), 7,724,057 (“the `057 patent”), 7,058,150 (“the `150 patent”), 7,471,691 (“the `691 patent”), 7,450,500 (“the `500 patent”), and 7,313,623 (“the `623 patent”). The new discovery was unavailable from other sources, and provides good cause for amendment of Broadcom’s Patent Local Rule 3-1 Infringement Contentions and submission of Final Infringement Contentions pursuant to the Court’s July 21, 2010 Order Regarding Pretrial and Trial Dates (“Court’s July 21 Order”). Throughout this case, Emulex has slowed the pace of discovery, including by: (1) citing a need to wait for the Court to resolve its Renewed Motion to Enforce Local Patent Rules 3-1 and 3-6 (“Emulex’s Motion to Enforce”), which the Court denied on November 4, 2010 (“Court’s November 4 Order”), (2) saying Emulex needed time to produce documents after acquiring ServerEngines Corporation, whom Broadcom had previously subpoenaed, (3) frequently failing to produce relevant documents ahead of depositions of Emulex witnesses (see, e.g., Ex. 1, Geiszler to Tompros, Nov. 4, 2010; Ex. 2, Geiszler to Tompros, Dec. 10, 2010), and (4) actively discouraging third parties from producing documents. As a result of Broadcom’s diligence and the Court’s November 4 Order denying Emulex’s Motion to Enforce, Emulex and certain third parties have produced additional documents. Broadcom now seeks to amend its infringement contentions to reflect this newly-obtained, nonpublic information. Specifically, Broadcom seeks to make the following amendments: Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 6 of 21 Page ID #:8720 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS 1. 2. Update Broadcom’s contentions related to Emulex’s BladeEngine 3 product for the asserted claims of the `194, `124, `057, and `150 patents, based on discovery received on January 28, 2011; 3. Update Broadcom’s contentions related to Emulex’s SOC 442 product for the asserted claims of the `194, `124, `057, and `150 patents, based on discovery received on January 14, 2011; 4. 5. Add Emulex’s BladeEngine 2 (“BE2”) and BladeEngine 3 (“BE3”) products as accused products under the asserted claims of the `623 patent, based on information produced last fall, after Emulex’s acquisition of ServerEngines Corporation (“ServerEngines”); 6. Update Broadcom’s contentions related to Emulex’s products accused of infringing the `691 and `500 patents, and add Emulex’s SOC 432 product as an accused product, based on documents received in October and November 2010 and six depositions taken between January 11, 2011 and February 3, 2011. All of Broadcom’s amendments are based on information made available only after Broadcom served its first amended infringement contentions, and these amendments will serve to sharpen the disputes to be adjudicated. Broadcom’s amendments are also timely under the Court’s scheduling order. Broadcom therefore respectfully requests that the Court grant Broadcom leave to amend. Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 7 of 21 Page ID #:8721 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS II. BACKGROUND Although Emulex obstructed Broadcom’s attempts to obtain relevant discovery, in some cases actively discouraging third parties from providing information, Broadcom has been able to obtain much of the discovery it sought. (Discovery is ongoing, and Broadcom is continuing to pursue documents and deposition testimony from Emulex and third parties.) As will be described, this discovery was the result of extensive negotiations and compromises on Broadcom’s part-and, for some materials, motion practice-demonstrating that Broadcom acted diligently in obtaining this information. A. Discovery from Third Parties Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 8 of 21 Page ID #:8722 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 9 of 21 Page ID #:8723 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS On November 4, 2010, the Court ultimately ruled that the BE3, Zephyr, and SOC 442 products were properly accused under Broadcom’s `194, `124, `057 and `150 patents, and that the Lancer product was properly accused under Broadcom’s U.S. Patent No. 7,295,555. (See Order [Dkt. No. 244] at 9-11.) B. Additional Discovery from Emulex and ServerEngines Broadcom also sought the discovery to which it was entitled from Emulex. In its first amended infringement contentions, served on July 30, 2010, Broadcom Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 10 of 21 Page ID #:8724 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS accused the following products of infringing the `691 and `500 patents: SOC 320, SOC 422, SOC 442, SOC 804, Model 830, Model 835, Model 850, Model 870, 355 Switch, 370 Switch, and Sequoia. During the month following service of its first amended infringement contentions, Broadcom repeatedly notified Emulex that its discovery responses remained severely deficient and asked whether Emulex would produce the specified documents. (See Ex. 20, Tompros to Cooper et al., Aug. 4, 2010; Ex. 21, Tompros to Smith, Aug. 26, 2010, Ex. 22, Tompros to Smith, Aug. 30, 2010.) On August 31, 2010, Emulex indicated that it did not believe certain products were properly accused, but that it would “work with Broadcom to tailor discovery requests to provide discovery and authorize third parties to provide discovery of such products, but only with respect to the specific features relevant to the asserted patents under which Emulex agrees Broadcom’s infringement contentions are proper.” (Ex. 23, Geiszler to Tompros, Aug. 31, 2010 (emphasis added).) On September 27, 2010, after making insufficient progress on discovery, Broadcom again provided Emulex with a comprehensive summary of the deficiencies in Emulex’s production. (Ex. 24, Tompros to Geiszler, Sept. 27, 2010.) Emulex then represented that it would “produce substantially all responsive electronic documents…by early November.” (Ex. 25, Geiszler to Tompros, Sept. 29, 2010.) Emulex has since produced thousands of pages of documents relevant to the accused products. With respect to products Emulex believed were not properly accused, Emulex did not even begin providing discovery in earnest until after the Court’s November 4, 2010 Order Denying Emulex’s Renewed Motion to Enforce. Additionally, Broadcom subpoenaed ServerEngines on March 26, 2010, explicitly requesting information regarding the BE2 and BE3 chips now accused of infringing the asserted claims of the `623 patent. (Ex. 26, Broadcom’s Second Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 11 of 21 Page ID #:8725 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 7 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS Notice of Service of Revised Subpoenas to ServerEngines, Mar. 26, 2010.) On July 16, 2010, Emulex contacted ServerEngines stating that “Emulex objects to ServerEngines’ production of any documents or information to Broadcom at this time.” (Ex. 27, Geiszler to Johnston, Jul. 16, 2010.) Broadcom responded that Emulex’s objections “lack a proper basis-and if ServerEngines continues to refuse to provide discovery, Broadcom will move to compel,” but that Broadcom was also “willing to discuss ways to make this process as minimally burdensome on ServerEngines as possible.” (Ex. 28, Liss to Blackburn, Sept. 8, 2010.) On September 10, 2010, Emulex asked Broadcom to refer all correspondence related to the ServerEngines subpoenas to Emulex’s counsel “due to Emulex’s recent acquisition of ServerEngines.” (Ex. 29, Geiszler to Liss, Sept. 10, 2010.) On September 13, 2010, Emulex informed Broadcom that “Emulex’s acquisition of ServerEngines closed on August 25, 2010, and Emulex is still in the process of integrating ServerEngines personnel and assets into Emulex.” (Ex. 30, Geiszler to Tompros, Sept. 13, 2010.) As such, discovery related to the BE2 and BE3 chips could not and did not commence in earnest until approximately October 2010. (See, e.g., ELX-PAT-03845730-40.) III. ARGUMENT A. Legal Standard Northern District of California Patent Local Rule 3-6 (adopted by the Court in this case) provides for amendment of infringement contentions “upon a timely showing of good cause.” (Patent Local Rule 3-6.) The Federal Circuit has held that under Rule 3-6, the “‘good cause’ requirement requires a showing of diligence.” O2 Micro Int’l Ltd. V. Monolithic Power Systems, Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). Good cause may be demonstrated by “recent discovery of nonpublic information about the Accused Instrumentality which was not Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 12 of 21 Page ID #:8726 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS discovered, despite diligent efforts, before the service of the Infringement Contentions.” (Patent Local Rule 3-6.) The Federal Circuit has interpreted this requirement to permit a party to amend if it shows that it “acted with diligence in promptly moving to amend when new evidence is revealed in discovery.” O2 Micro, 467 F.3d at 1366. This Court’s Scheduling Order likewise provides that Broadcom may, by today, “submit final infringement contentions . . . as is necessary due to . . . other good cause (including previously unavailable information produced during discovery).” (Order [Dkt. No. 171], Jul. 21, 2010 at 4 (emphasis added).) As outlined above, Emulex has consistently produced its own documents late, refused to provide documents for products it unilaterally decided were not properly accused, delayed in producing documents due to its acquisition of ServerEngines, and actively interfered with Broadcom’s pursuit of third-party discovery. Despite these obstructions, Broadcom has diligently pursued the information to which it was entitled, and supplemented its contentions ahead of the deadline set by the Court to submit final infringement contentions, and now timely seeks leave to submit its final infringement contentions.1 Broadcom has more than demonstrated the requisite good cause required by Patent Local Rule 3-6. In addition, Emulex can claim no prejudice. First, Emulex cannot claim that the timing of service is prejudicial in the context of the case schedule, as the Court’s scheduling order expressly contemplated final infringement contentions being served on February 4, 2011 upon a showing of good cause. Second, there are still almost two months before initial expert reports are to be exchanged. 1 As noted above, discovery is ongoing, and Broadcom reserves the right to rely at trial on additional evidence produced by Emulex or third parties during the final stage of discovery. Broadcom does not expect, however, that this information will materially change its infringement theories-the additional information should simply provide additional substantiation of those theories. Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 13 of 21 Page ID #:8727 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS Finally, the amendments comprise solely recently obtained documents and deposition testimony that more fully describe Emulex’s own products, all of which were previously accused under at least the asserted claims of one of the patents-in- suit. B. Broadcom’s Has Demonstrated Good Cause Under Patent Local Rule 3-6 Much of the nonpublic information Broadcom relies upon as the basis of its motion to amend was received only over the last month, and none was received prior to October 1, 2010, well after Broadcom served its first amended infringement contentions in July 2010. Thus, Broadcom acted with diligence in moving to amend promptly as new evidence was revealed through discovery and, therefore, has established the requisite good cause under Patent Local Rule 3-6. 1. Broadcom Recently Obtained Nonpublic Third-Party Discovery Related to Emulex’s BladeEngine 3 Products Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 14 of 21 Page ID #:8728 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 10 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS Broadcom did not have access to the circuit level schematics for the SerDes and clock recovery circuitry in Emulex’s BE3 product until the inspection of documents on January 28, 2011. The documents disclosed at the inspection revealed the circuit-level detail that confirmed the presence of the infringing functionality. It has been less than a week since Broadcom received the information it required to amend its contentions with respect to the BE3 products. As such, Broadcom has ample cause to amend and to submit final infringement contentions for Emulex’s BE3 products for the asserted claims of the `194, `124, `057, and `150 patents. (See Broadcom Corporation’s Final Disclosure of Asserted Claims and Infringement Contentions, Exs. H(I) (`194, BE3), L(I) (`124, BE3), O(II) (`150, BE3), S(I) (`057, BE3), Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 15 of 21 Page ID #:8729 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 11 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS 2 2. Broadcom Recently Obtained Nonpublic Third-Party Discovery Related to Emulex’s SOC 442 Product Broadcom’s first amended infringement contentions relied on the declaration of its expert, Dr. Vladimir Stojanovic, that the SOC 442 infringed the asserted claims based on the documentation available at the time. Again, it was not until the Court resolved the parties dispute with respect to the scope of the accused products that Emulex consented to discovery. After the Court’s November 4 Order, Broadcom diligently pursued and obtained the necessary discovery . The schematics received confirmed and reinforced Dr. Stojanovic’s understanding of the accused instrumentalities at the level of detail required to show clear infringement of the asserted claims of the `194, `124, `057, and `150 patents. Broadcom has had these documents (which consist of 517 pages of detailed, high resolution circuit schematics) for less than three weeks. As such, Broadcom has more than good cause to amend and to submit final infringement contentions for the SOC 442 product for the asserted claims of the `194, `124, `057, and `150 patents. (See Broadcom Corporation’s Final Disclosure of Asserted Claims and Infringement Contentions, Exs. H(III), L(III), O(IV), and S(III).) 3. Broadcom Recently Obtained Nonpublic Information from Emulex Related to the BE2, and BE3 Products 2 Note that Broadcom Corporation’s Final Disclosure of Asserted Claims and Infringement Contentions, Exs. H(II), L(II), O(III), and S(II) relate to Emulex’s products containing the Zephyr chip, and contain the portions of Exs. H, L, O, and S related to the Zephyr chip that were included in Broadcom’s First Amended Disclosure of Asserted Claims and Infringement Contentions, filed July 30, 2010. Further note that Ex. O(I) is unchanged from the chart that Broadcom previously disclosed as Exhibit N to Broadcom’s Opposition to Emulex’s Motion to Enforce, filed Oct. 1, 2010. Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 16 of 21 Page ID #:8730 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 12 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS Additionally, Broadcom accused Emulex’s OneConnect product, some varieties of which include the ServerEngines BE3 chip, of infringing the asserted claims of the `623 patent. Emulex objected to ServerEngines’ production of any discovery pursuant to Broadcom’s third party subpoenas (Ex. 27, Geiszler to Johnston, Jul. 16, 2010.) However, as a result of Emulex’s acquisition of ServerEngines, which closed on August 25, 2010, Emulex began selling both the BE2 and BE3 chips individually. As mentioned above, Emulex did not begin an earnest production of discovery related to ServerEngines until October and November 2010, (see, e.g., ELX-PAT-03845730-40, produced Nov. 11, 2010), citing the time it took to integrate ServerEngines into Emulex after the acquisition. As such, Broadcom did not receive the relevant discovery it had sought from Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 17 of 21 Page ID #:8731 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 13 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS ServerEngines regarding its BE2 and BE3 products until October and November 2010. This new information provides the requisite good cause for Broadcom to amend its infringement contentions and to submit final infringement contentions that include the BE2 and BE3 chips as accused products. (See Broadcom Corporation’s Final Disclosure of Asserted Claims and Infringement Contentions, Ex. M.) Moreover, Emulex’s OneConnect product, which includes the BE3 chip, was already accused of infringing the asserted claims of the `623 patent. Therefore, Emulex can claim no prejudice as a result of Broadcom’s addition of the BE2 and BE3 chips as accused products, now that Emulex distributes these chips individually as a result of its acquisition of ServerEngines. 4. Broadcom Recently Obtained Nonpublic Information Related to Emulex’s Fibre Channel Products Accused of Infringing the `691 and `500 Patents Broadcom accused 11 Emulex products of infringing the `691 and `500 patents (“Fibre Channel products”) in its first amended infringement contentions. Broadcom has since taken six depositions and has received thousands of documents related to the accused Fibre Channel products. As of the date Broadcom served its first amended infringement contentions, Emulex had produced virtually no documents related to the SOC 804, SOC 442, SOC 432, SOC 320, Model 850 and Model 870. Moreover, the SOC 432 was never released commercially, and as a result Broadcom could not learn of it from public sources-only through the discovery produced recently. As specific examples of this recent discovery, Broadcom took four depositions relevant to Emulex’s infringement of the asserted claims of the `691 and `500 patents in January 2011, and another two depositions-both of Emulex Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 18 of 21 Page ID #:8732 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 14 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS 30(b)(6) designees-in the last three days.3 Further, Emulex had provided virtually no meaningful discovery regarding the SOC 320, SOC 442, and SOC 804 by the time that Broadcom served its first amended infringement contentions. Nor had Emulex provided the relevant discovery regarding the products containing these SOCs, namely, the 355 and 370 Switch products (containing the SOC 320), the Model 830, 835, 850, and 870 products (containing the SOC 804), or the Sequoia product (containing the SOC 442). It was not until October 27, 30, and November 4, 2010 that Emulex produced the ASIC design specifications for the SOC 442, 320, and 804, respectively. The ASIC design specifications explain in detail how the accused functionality is performed in each product. (See, e.g., ELX-PAT-02277319-290; ELX-PAT-02165349-945; ELX-PAT-03122138-290.) This information was not available from previous discovery, which included customer-oriented “databooks” that merely describe the products’ capabilities without providing the necessary detail regarding the functionality. Finally, ASIC design specifications for the unreleased SOC 432 product were not produced by Emulex until October 30, 2010. (See ELX-PAT-02200685- 1132.) In fact, not even the SOC 432 databook was produced until that same day. (See ELX-PAT-02279709-773.) As such, Broadcom has demonstrated the requisite good cause for amending its infringement contentions and submitting final infringement contentions based 3 The depositions of Carl Mies (Jan. 11, 2011), Marty Stainbrook (Jan. 12, 2011), John Mensonides (Jan. 13, 2011), Thomas Hughes (Jan. 14, 2011), Gregory Warren (Feb. 2, 2011), and William Goodwin (Feb. 3, 2011) all provided information relevant to the Emulex products accused of infringing the `691 and `500 patents. (See generally, Mies Tr., Stainbrook Tr., Hughes Tr., Warren Rough Tr., and Goodwin Rough Tr.) Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 19 of 21 Page ID #:8733 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 15 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS on the previously unavailable information. IV. CONCLUSION For the foregoing reasons, Broadcom respectfully requests that the Court issue an order granting Broadcom’s motion to amend its Patent Local Rule 3-1 Infringement Contentions under Patent Rule 3-6 and to submit Final Infringement Contentions under the Court’s July 21, 2010 Order Regarding Pretrial and Trial Dates. Dated: February 4, 2011 By: /s/ Dominic E. Massa Dominic E. Massa WILMER CUTLER PICKERING HALE AND DORR LLP Attorneys for Plaintiff and Counterclaim Defendant BROADCOM CORPORATION Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 20 of 21 Page ID #:8734 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 16 BROADCOM’S MEMORANDUM ISO MOTION TO AMEND INFRINGEMENT CONTENTIONS Broadcom Corporation v. Emulex Corporation, Case No. SACV 09-01058 JVS (ANx) and SACV 10-03963-JVS (ANx) PROOF OF SERVICE Fed. R. Civ. P. 5(b) & L.R. 5-3 I, Jason H. Liss, hereby certify that a copy of the foregoing Plaintiff Broadcom Corporation’s Memorandum of Law in Support of Motion To Amend Infringement Contentions under Patent Local Rule 3-6. was served upon the following parties as indicated below on February 4, 2011. For Emulex Corporation: OC-ELX-PAT@gibsondunn.com smg@jmbm.com broadcom-emulex@fr.com (email addresses for service on Emulex per agreement of the parties) Via Hand Delivery Via Overnight Courier (1 copy) Via Facsimile Via Electronic Mail (1 copy) I certify under penalty of perjury that the foregoing is true and correct. /s/ Jason H. Liss Jason H. Liss Case 8:09-cv-01058-JVS -AN Document 287 Filed 02/14/11 Page 21 of 21 Page ID #:8735