David v. Goliath - Handal opposition response to Apple motion ( 1 )
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Message: David v. Goliath - Handal opposition response to Apple motion ( 1 )
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Oct 24, 2013 06:17PM
I. BACKGROUND
A. The Currently Pending Cases
The currently pending e.Digital cases before this Court that have not been
resolved as of the date of the execution of this pleading are: 1) e.Digital
Corporation v. SanDisk Corporation, Case No. 3:12-cv-02698-DMS-WVG; 2)
e.Digital Corporation v. Mach Speed Technologies, LLC et al., Case No. 3:12-cv-
02877-DMS-WVG; 3) e.Digital Corporation v. Woodman Labs, Inc. et al., Case
No. 3:12-cv-02899-DMS-WVG; 4) e.Digital Corporation v. Pantech Wireless, Inc.
et al., Case No. 3:13-cv-00023-DMS-WVG; 5) e.Digital Corporation v. Fujifilm
Corporation et al., Case No. 3:13-cv-00112-DMS-WVG; 6) e.Digital Corporation
v. Research in Motion Limited et al.,Case No. 3:13-cv-00781-DMS-WVG; 7)
e.Digital Corporation v. ZTE Corporation et al., Case No. 3:13-cv-00782-DMSWVG;
and, 8) e.Digital Corporation v. Apple Inc. (this case), Case No. 3:13-cv-
00785-DMS-WVG. These cases are collectively referred to herein as the “In re
e.Digital Cases” or “In re e.Digital.”
B. Relevant Facts
e.Digital Corporation (“e.Digital”) has asserted that Apple infringes various
claims of e.Digital’s U.S. Patent Nos. 5,491,774 (“the ’774 patent”); 5,839,108
(“the ’108 patent”); 5,742,737 (“the ’737 patent”); 5,842,170 (“the ’170 patent”)
(collectively, the “Asserted Patents”). Similar claims were asserted against the
other In re e.Digital Defendants (collectively “Defendants”) who have joined or
may join Apple’s pending motions, though not all of the above-referenced patents
were asserted against each Defendant.
The ’774 patent and the ’737 patent were previously asserted against
unrelated parties in the United States District Court for the District of Colorado.
(e.Digital Corp. v. Pentax of America, Inc., Case No. 09-cv-2578-MSK-MJW
(D.Col.) (the “Colorado Case”).) On June 28, 2011, the Colorado District Court
entered an order construing several terms from the ’774 patent (the “Colorado
A. The Currently Pending Cases
The currently pending e.Digital cases before this Court that have not been
resolved as of the date of the execution of this pleading are: 1) e.Digital
Corporation v. SanDisk Corporation, Case No. 3:12-cv-02698-DMS-WVG; 2)
e.Digital Corporation v. Mach Speed Technologies, LLC et al., Case No. 3:12-cv-
02877-DMS-WVG; 3) e.Digital Corporation v. Woodman Labs, Inc. et al., Case
No. 3:12-cv-02899-DMS-WVG; 4) e.Digital Corporation v. Pantech Wireless, Inc.
et al., Case No. 3:13-cv-00023-DMS-WVG; 5) e.Digital Corporation v. Fujifilm
Corporation et al., Case No. 3:13-cv-00112-DMS-WVG; 6) e.Digital Corporation
v. Research in Motion Limited et al.,Case No. 3:13-cv-00781-DMS-WVG; 7)
e.Digital Corporation v. ZTE Corporation et al., Case No. 3:13-cv-00782-DMSWVG;
and, 8) e.Digital Corporation v. Apple Inc. (this case), Case No. 3:13-cv-
00785-DMS-WVG. These cases are collectively referred to herein as the “In re
e.Digital Cases” or “In re e.Digital.”
B. Relevant Facts
e.Digital Corporation (“e.Digital”) has asserted that Apple infringes various
claims of e.Digital’s U.S. Patent Nos. 5,491,774 (“the ’774 patent”); 5,839,108
(“the ’108 patent”); 5,742,737 (“the ’737 patent”); 5,842,170 (“the ’170 patent”)
(collectively, the “Asserted Patents”). Similar claims were asserted against the
other In re e.Digital Defendants (collectively “Defendants”) who have joined or
may join Apple’s pending motions, though not all of the above-referenced patents
were asserted against each Defendant.
The ’774 patent and the ’737 patent were previously asserted against
unrelated parties in the United States District Court for the District of Colorado.
(e.Digital Corp. v. Pentax of America, Inc., Case No. 09-cv-2578-MSK-MJW
(D.Col.) (the “Colorado Case”).) On June 28, 2011, the Colorado District Court
entered an order construing several terms from the ’774 patent (the “Colorado
OPPOSITION TO EX PARTE MOTION FOR Case No.: 3:13-CV-00785-DMS-WVG
ORDER SHORTENTING TIME -2-
HANDAL & ASSOCIATES
1200 THIRD AVE
SUITE 1321
SAN DIEGO, CA 92101
TEL: 619.544.6400
FAX: 619.696.0323
Markman Order”). No Markman Order was ever entered as to the ’737 patent. The
parties to the Colorado Case thereafter resolved their cases sometime after the
Colorado Markman Order.
During the May 29, 2013 Case Management Conference held in the present
litigation, the Defendants indicated their intent to file a motion to apply the
collateral estoppel doctrine with respect to the terms construed in the Colorado
Case. On May 30, 2013, this Court entered its Order after Case Management
Conference (“Case Management Order” or “CMO”) requiring Defendants to file
any motion to apply collateral estoppel no later than June 19, 2013. (Dkt# 21.)
Defendants, including Apple, thereafter filed a motion to apply the collateral
estoppel doctrine with respect to the term “sole memory of the received processed
sound electrical signals” as contained in Claims 33 and 34 of the ’774 patent.
(Dkt# 31.) Though the ’108 patent was not at issue in the Colorado Case,
Defendants also sought to apply the collateral estoppel doctrine with respect to a
similar term contained in claims 2 and 5 of the ’108 patent. e.Digital opposed the
motion and the Court heard oral argument.
On Thursday, August 22, 2013, this Court entered an order granting
Defendants’ motion to apply collateral estoppel as to both the ’774 patent and the
’108 patent (“Collateral Estoppel Order”).1 (Dkt # 45.) By Monday, August 26,
2013, just 2 business days after the Collateral Estoppel Order was entered and two
and a half weeks before the ENE in the Huawei case, e.Digital sent a letter to
counsel for Apple (and the other Defendants) proposing a joint motion for entry of
judgment as to the ’774 patent and ’108 patent, which would preserve the parties’
competing positions and e.Digital’s rights of appeal. (See, Exhibit A hereto.)
1 The Collateral Estoppel Order is file stamped August 21, 2013, but was not
entered, and thus the parties were not notified of the Order, until the following day.
ORDER SHORTENTING TIME -2-
HANDAL & ASSOCIATES
1200 THIRD AVE
SUITE 1321
SAN DIEGO, CA 92101
TEL: 619.544.6400
FAX: 619.696.0323
Markman Order”). No Markman Order was ever entered as to the ’737 patent. The
parties to the Colorado Case thereafter resolved their cases sometime after the
Colorado Markman Order.
During the May 29, 2013 Case Management Conference held in the present
litigation, the Defendants indicated their intent to file a motion to apply the
collateral estoppel doctrine with respect to the terms construed in the Colorado
Case. On May 30, 2013, this Court entered its Order after Case Management
Conference (“Case Management Order” or “CMO”) requiring Defendants to file
any motion to apply collateral estoppel no later than June 19, 2013. (Dkt# 21.)
Defendants, including Apple, thereafter filed a motion to apply the collateral
estoppel doctrine with respect to the term “sole memory of the received processed
sound electrical signals” as contained in Claims 33 and 34 of the ’774 patent.
(Dkt# 31.) Though the ’108 patent was not at issue in the Colorado Case,
Defendants also sought to apply the collateral estoppel doctrine with respect to a
similar term contained in claims 2 and 5 of the ’108 patent. e.Digital opposed the
motion and the Court heard oral argument.
On Thursday, August 22, 2013, this Court entered an order granting
Defendants’ motion to apply collateral estoppel as to both the ’774 patent and the
’108 patent (“Collateral Estoppel Order”).1 (Dkt # 45.) By Monday, August 26,
2013, just 2 business days after the Collateral Estoppel Order was entered and two
and a half weeks before the ENE in the Huawei case, e.Digital sent a letter to
counsel for Apple (and the other Defendants) proposing a joint motion for entry of
judgment as to the ’774 patent and ’108 patent, which would preserve the parties’
competing positions and e.Digital’s rights of appeal. (See, Exhibit A hereto.)
1 The Collateral Estoppel Order is file stamped August 21, 2013, but was not
entered, and thus the parties were not notified of the Order, until the following day.
Accordingly, Apple and the other Defendants were on notice as early as
August 26, 2013 – weeks before e.Digital and Huawei settled – that e.Digital
intended to appeal the Collateral Estoppel Order. The suggestion that e.Digital
intended to preclude Defendants from participating in any appeal is therefore
without basis.
Almost immediately after the August 26, 2013 letter was sent, e.Digital sent
drafts of proposed stipulated partial judgments to the Defendants, including Apple,
who received its draft stipulation for judgment on September 5, 2013. (See,
Exhibits B-C). After the drafts of the judgments and motions were sent to the
Defendants, the parties via their counsel in each case continued to negotiate the
language of the stipulated judgment and corresponding motion.
Many of the Defendants appeared to drag their feet at least to some extent on
providing feedback and/or final approval of the proposed judgments and
corresponding motions to be filed. In fact, counsel for e.Digital had to send one or
more reminder emails to many of the Defendants asking them what the status of
the proposed judgments/motions was. (See, Exhibit D).
During the negotiations mentioned above, most of the Defendants drafted
language and/or insisted on language for the judgment(s) and joint motions that
specifically asserted that the stipulated judgment was not a final judgment pursuant
to Fed. R. Civ. P. 54(b). e.Digital ultimately agreed and accepted such proposals.
Joint motions were filed in each of the In re e.Digital cases seeking approval of the
stipulated judgments except for one case, the SanDisk case.2 The joint motion in
the present case was filed on September 27, 2013. (Dkt #49).
In the meantime, e.Digital settled a portion of its claims with Huawei on
September 11, 2013 during an Early Neutral Evaluation Conference (“ENE”) held
2 A joint motion for dismissal of the ‘774 patent was filed in the SanDisk case on
October 23, 2013 and is still pending as of the execution of this pleading.
August 26, 2013 – weeks before e.Digital and Huawei settled – that e.Digital
intended to appeal the Collateral Estoppel Order. The suggestion that e.Digital
intended to preclude Defendants from participating in any appeal is therefore
without basis.
Almost immediately after the August 26, 2013 letter was sent, e.Digital sent
drafts of proposed stipulated partial judgments to the Defendants, including Apple,
who received its draft stipulation for judgment on September 5, 2013. (See,
Exhibits B-C). After the drafts of the judgments and motions were sent to the
Defendants, the parties via their counsel in each case continued to negotiate the
language of the stipulated judgment and corresponding motion.
Many of the Defendants appeared to drag their feet at least to some extent on
providing feedback and/or final approval of the proposed judgments and
corresponding motions to be filed. In fact, counsel for e.Digital had to send one or
more reminder emails to many of the Defendants asking them what the status of
the proposed judgments/motions was. (See, Exhibit D).
During the negotiations mentioned above, most of the Defendants drafted
language and/or insisted on language for the judgment(s) and joint motions that
specifically asserted that the stipulated judgment was not a final judgment pursuant
to Fed. R. Civ. P. 54(b). e.Digital ultimately agreed and accepted such proposals.
Joint motions were filed in each of the In re e.Digital cases seeking approval of the
stipulated judgments except for one case, the SanDisk case.2 The joint motion in
the present case was filed on September 27, 2013. (Dkt #49).
In the meantime, e.Digital settled a portion of its claims with Huawei on
September 11, 2013 during an Early Neutral Evaluation Conference (“ENE”) held
2 A joint motion for dismissal of the ‘774 patent was filed in the SanDisk case on
October 23, 2013 and is still pending as of the execution of this pleading.
by the magistrate assigned to this case, the Honorable Judge William V. Gallo.
e.Digital was not and is not at liberty to share the terms of the Huawei settlement
agreement with the other Defendants due to their confidential nature.
e.Digital and Huawei’s joint motion for entry of stipulated partial judgment
with respect to the ’774 patent and ’108 patent was filed October 7, 2013. See,
Case No. 3:13-cv-783, Dkt #70). Judgment was entered that same day and
e.Digital filed its notice of appeal in the Huawei case with the District Court on
October 8, 2013. (See, Case No. 3:13-cv-783, Dkt # 74). At least one Defendant,
ZTE, having notice of the filing of the appeal, still insisted on language in the joint
motion and/or stipulated judgment that specifically indicated that the judgment was
not a final judgment pursuant to Fed. R. Civ. P. 54(b). (See, Exhibits E-F).
Defendants, by their pending motions, now seek to unilaterally amend the
mutually agreed upon judgments as an apparent pretext for obtaining a stay of the
entire action. The instant motion further seeks to deprive e.Digital of a full and fair
opportunity to respond and should be denied for the reasons set forth below.
II. LEGAL STANDARD
“Ex parte motions are rarely justified.” Mission Power Engineering Co. v.
Continental Casualty Co., 883 F. Supp. 488, 490 (C.D. Cal. 1995). Ex parte
applications can only be brought under “extremely limited” circumstances. In re
Intermagnetics America, Inc., 101 B.R. 191, 193 (C.D. Cal. 1989). To justify ex
parte relief, the applicant must show both: (1) irreparable injury if the underlying
motion is heard according to regular noticed motion procedures and, (2) “it must
be established that the moving party is without fault in creating the crisis that
requires ex parte relief, or that the crisis occurred as a result of excusable neglect.”
Mission Power Engineering Co., supra, 883 F.Supp. at 492. Defendants have
failed to demonstrate any basis for expediting their motions.
III. APPLE AND THE OTHER DEFENDANTS HAVE FAILED TO
ESTABLISH GOOD CAUSE FOR AN ORDER SHORTENING TIME
e.Digital was not and is not at liberty to share the terms of the Huawei settlement
agreement with the other Defendants due to their confidential nature.
e.Digital and Huawei’s joint motion for entry of stipulated partial judgment
with respect to the ’774 patent and ’108 patent was filed October 7, 2013. See,
Case No. 3:13-cv-783, Dkt #70). Judgment was entered that same day and
e.Digital filed its notice of appeal in the Huawei case with the District Court on
October 8, 2013. (See, Case No. 3:13-cv-783, Dkt # 74). At least one Defendant,
ZTE, having notice of the filing of the appeal, still insisted on language in the joint
motion and/or stipulated judgment that specifically indicated that the judgment was
not a final judgment pursuant to Fed. R. Civ. P. 54(b). (See, Exhibits E-F).
Defendants, by their pending motions, now seek to unilaterally amend the
mutually agreed upon judgments as an apparent pretext for obtaining a stay of the
entire action. The instant motion further seeks to deprive e.Digital of a full and fair
opportunity to respond and should be denied for the reasons set forth below.
II. LEGAL STANDARD
“Ex parte motions are rarely justified.” Mission Power Engineering Co. v.
Continental Casualty Co., 883 F. Supp. 488, 490 (C.D. Cal. 1995). Ex parte
applications can only be brought under “extremely limited” circumstances. In re
Intermagnetics America, Inc., 101 B.R. 191, 193 (C.D. Cal. 1989). To justify ex
parte relief, the applicant must show both: (1) irreparable injury if the underlying
motion is heard according to regular noticed motion procedures and, (2) “it must
be established that the moving party is without fault in creating the crisis that
requires ex parte relief, or that the crisis occurred as a result of excusable neglect.”
Mission Power Engineering Co., supra, 883 F.Supp. at 492. Defendants have
failed to demonstrate any basis for expediting their motions.
III. APPLE AND THE OTHER DEFENDANTS HAVE FAILED TO
ESTABLISH GOOD CAUSE FOR AN ORDER SHORTENING TIME
No good cause exists for an order shortening time. Defendants’ motions are
based entirely on speculation and self-serving misrepresentations of fact.
Specifically, Defendants’ claim of irreparable harm if the currently noticed
Motions are not heard on an expedited basis is based entirely on the speculative
and unfounded notion that they may not be able to participate in the Huawei
appeal. Defendants have failed to show that they would be precluded from
participating in or defending any appeal that e.Digital may file if their pending
Motions are not heard on an expedited basis.
based entirely on speculation and self-serving misrepresentations of fact.
Specifically, Defendants’ claim of irreparable harm if the currently noticed
Motions are not heard on an expedited basis is based entirely on the speculative
and unfounded notion that they may not be able to participate in the Huawei
appeal. Defendants have failed to show that they would be precluded from
participating in or defending any appeal that e.Digital may file if their pending
Motions are not heard on an expedited basis.
21 Recommendations
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