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
19455157.2 - 0 - REPLY ISO EX PARTE APPLICATION CASE NO.: CV 09-4150 DDP (AJWx)
Brad D. Brian (State Bar No. 079001)
Stuart N. Senator (State Bar No.: 148009)
MUNGER, TOLLES & OLSON LLP
355 South Grand Avenue
Los Angeles, CA 90071-1560
Telephone: (213) 683-9100
Facsimile: (213) 687-3702
Brad.Brian@mto.com
Stuart.Senator@mto.com
Special Counsel for Defendants / Counterclaimants
CAPTARIS, INC. and OPEN TEXT CORPORATION
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
J2 GLOBAL COMMUNICATIONS
INC., and ADVANCED MESSAGING
TECHNOLOGIES, INC.,
Plaintiffs,
vs.
CAPTARIS, INC. and OPEN TEXT
CORPORATION,
Defendants.
CASE NO. CV 09-4150-DDP (AJWx)
[1] DEFENDANTS’ REPLY BRIEF
IN SUPPORT OF EX PARTE
APPLICATION FOR
TELEPHONIC CONFERENCE
AND SUPPLEMENTAL BRIEFING
OF ADDITIONAL ISSUES IN
CONJUNCTION WITH
RESOLUTION OF MOTION TO
DISQUALIFY
AND RELATED CROSS-ACTION
Case 2:09-cv-04150-DDP-AJW Document 401 Filed 12/06/12 Page 1 of 3 Page ID #:9362
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
19455157.2 - 1 - REPLY ISO EX PARTE APPLICATION CASE NO.: CV 09-4150 DDP (AJWx)
There is no legitimate dispute that plaintiffs’ proposed order goes
beyond the issues that have been previously briefed and argued. Whether or not
issues related to the sanctions that plaintiffs have now proposed came up at some
point, this is not a substitute for formal briefing, presentation of evidence and
argument, especially when the proposed sanctions are substantive in nature, are
dispositive of certain defenses, and would obstruct Open Text’s litigation of this
case. See, e.g., Oregon RSA No. 6 v. Castle Rock Cellular of Oregon Limited
Partners, 76 F.3d 1003, 1007 (9th Cir. 1996) (reversing sanctions award for lack of
a hearing).
The standard for imposing evidentiary sanctions and terminating
sanctions (which is what the striking of defenses would be) is not the same as the
standard for disqualification. For example, the Ninth Circuit has held that “a
finding of ‘willfulness, fault, or bad faith’ is required for dismissal to be proper.”
Anheuser-Busch, Inc. v. Natural Beverage Distribs., 69 F.3d 337, 348 (9th Cir.
1995). There has been no briefing on whether that standard is met here (such as on
whether Open Text has acted willfully or in bad faith). To impose evidentiary or
terminating sanctions where there has been no presentation on whether the rigorous
standard for imposing such sanctions has be met would be contrary to the law and
highly prejudicial to Open Text. See Western Systems, Inc. v. Ulloa, 958 F.2d 864,
873 (9th Cir. 1992) (“The next point raised by the Ulloas has merit, however. It is
that they never received “an appropriate hearing,” id., and had no proper
opportunity in the district court to contest the questions of bad faith and the amount
of the sanctions. ).
Likewise, although plaintiffs reference the proposed order recently
submitted by defendants, defendants’ expression of potential willingness to accept a
particular remedy is not a concession that more severe remedies of the same “type”
would be appropriate. Indeed, even if the Court concludes that a certain type of
Case 2:09-cv-04150-DDP-AJW Document 401 Filed 12/06/12 Page 2 of 3 Page ID #:9363
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
19455157.2 - 2 - REPLY ISO EX PARTE APPLICATIONCASE NO.: CV 09-4150 DDP (AJWx)
remedy is appropriate, defendants should have an opportunity to contest the
“amount” or magnitude of such remedy.
The flaws in plaintiffs’ argument are illustrated by plaintiffs’ cursory
discussion of their belated proposal for the Court’s striking of certain defenses.
Plaintiffs depict defendants’ defenses as co-extensive with the issues raised during
Dr. Farber’s deposition. But plaintiffs’ current position is difficult to reconcile with
their proposed order, which could be construed as seeking the dismissal of all of
defendants’ invalidity and inequitable conduct defenses. Indeed, most of
defendants’ defenses involve issues that have no even arguable nexus to Dr. Farber
or Mr. Findley. For example, as further briefing on this issue would show, one of
the bases of defendants’ defenses is that the very products that plaintiffs accuse of
infringement actually pre-dated the asserted patents. In other words, if the accused
products are deemed to infringe, then the existence of the accused products would
also have the effect of invalidating the patents. Defendants also rely on other prior
art references that are completely unrelated to any work by Dr. Farber, or any work
that Mr. Findley may have performed when he was an associate at Kenyon &
Kenyon. Striking such defenses on the current record would be improper, highly
prejudicial and would not remedy the alleged misconduct that gives rise to
plaintiffs’ motion to disqualify.
DATED: December 6, 2012 MUNGER, TOLLES & OLSON LLP
By: /s/ Brad D. Brian
Brad D. Brian
Special Counsel for Defendants /
Counterclaimants
Captaris, Inc. and Open Text Corporation
Case 2:09-cv-04150-DDP-AJW Document 401 Filed 12/06/12 Page 3 of 3 Page ID #:9364
