ANTON HANDAL (Bar No. 113812)

anh@handal-law.com

GABRIEL HEDRICK (Bar No. 220649)

ghedrick@handal-law.com

HANDAL & ASSOCIATES

750 B. Street, Suite 2510

San Diego, California 92101

Tel: 619.544.6400

Fax: 619.696.0323

Attorneys for Plaintiff and Counter-Defendant

E.DIGITAL CORPORATION

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA

e.Digital Corporation,

Plaintiff,

v.

ArcSoft, Inc., dba as Closeli and as

simplicam.

Defendant.

Case No. 3:15-cv-00056-BEN-DHB

PLAINTIFF E.DIGITAL

CORPORATION’S OPPOSITION

TO DEFENDANT ARCSOFT, INC.’S

EX PARTE APPLICATION TO

POSTPONE MARKMAN HEARING

UNTIL DECISION ON RENEWED

MOTION TO STAY

Ctrm: 5A (5th Floor - Schwartz)

Assigned to the Honorable

Judge Roger T. Benitez

e.Digital hereby respectfully requests that the ex parte motion of Defendant

ArcSoft, Inc. (“ArcSoft”) to postpone the upcoming Markman hearing be denied

and that the claim construction hearing go forward as scheduled. Once in place,

“[a] schedule may be modified only for good cause and with the judge’s consent.”

FRCP 16(b)(4). ArcSoft has failed to establish good cause for postponing the

Markman hearing currently scheduled for January 21, 2016.

As an initial matter, e.Digital hereby notifies the Court that it will oppose

ArcSoft’s pending motion to stay the entirety of this case pending resolution of the

petitions for inter partes review filed by non-parties Google, Inc., Nest, Inc. and

Dropcam, Inc. Nevertheless, even if the Court were inclined to grant ArcSoft’s

motion to stay, the claim construction hearing should go forward as scheduled.

ArcSoft does not meet its burden of establishing good cause. The “good

cause” standard for modifying a scheduling order requires the moving party to

show that the existing schedule cannot be met despite the diligence of the moving

party. Johnson v. Mammoth Recreations, 975 F.2d 604, 609 (9th Cir. 1992) (“The

district court may modify the pretrial schedule ‘if it cannot reasonably be met

despite the diligence of the party seeking the extension’”), citing FRCP 16

advisory committee’s notes (1983 amendment); see also Lucas v. Breg, Inc., 2015

U.S. Dist. LEXIS 164534, *8-9 (S.D. Cal., December 8, 2015) (J. Stormes).

ArcSoft fails to show that the pending IPRs would prevent it from being prepared

for the scheduled Markman hearing. Instead, it improperly seeks what would

amount to a preliminary and partial ex parte ruling on its noticed motion to stay the

entirety of these proceedings.

ArcSoft fails to offer any reasoning as to why or how the pending IPRs

would affect the Court’s claim constructions if the hearing proceeds as scheduled.

It merely argues that “review will significantly streamline the case,” without

specifically referencing any impact on the current claim construction issues.

(ArcSoft Ex Parte Motion (Doc. No. 51) at 1:24-25.) The disputed terms appear in

every independent claim at issue in this case. If any of the claims survive, whether

in whole, or even if amended, the Court will still have to construe these terms.

Moreover, to the extent the Patent Trial and Appeal Board has or will

construe any of the terms at issue here, those findings will not be binding on this

Court since the PTO construes terms according to their “broadest reasonable

interpretation” (“BRI”) and this Court must construe patent terms according to

Philips, i.e., “the meaning that [a] term would have to a person of ordinary skill in

the art in question at the time of the invention.” Compare In re Rambus, Inc., 753

F.3d 1253, 1255-1256 (Fed. Cir. 2014), 37 C.F.R. 42.100(b), and Philips v. AWH

Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). ArcSoft has therefore failed to show

and cannot show that the pending IPRs will have any effect on the construction of

the claim terms at issue in the present case.

Finally, little to no efficiencies will be gained by postponing the claim

construction hearing. As noted above, the PTAB’s claim constructions will not be

binding on this Court. Moreover, the bulk of the time and expense of claim

construction is already behind the parties. There are only five terms for the Court

to consider, two of which are essentially the same: “social signature,” “social

template,” “social hierarchy,” “first detected sensor value,” and “second detected

sensor value.” (See Doc. Nos. 46 and 47.) The first three of these terms has

already been construed by the Court in e.Digital v. Dropcam, Inc., Northern

District of California, Case No. 3:14-cv-04922-JST. (See Doc. No. 46 at 2:19-3:2

and Exhibit I thereto.) Thus, the only new term(s) for the Court to consider is “first

detected sensor value”/“second detected sensor value.” With respect to the three

“social terms,” the variations in the parties’ constructions from the Dropcam

Court’s proposed constructions are minimal. Furthermore, claim construction

briefing has already been completed and the hearing is only ten (10) days from the

date of this opposition. Thus, the large bulk of the work in preparing for the

hearing has already been completed.

Based on the foregoing, e.Digital respectfully requests that the claim

construction hearing scheduled for January 21, 2016 go forward as scheduled and

that ArcSoft’s ex parte application to postpone the hearing be denied.

Respectfully submitted.

HANDAL & ASSOCIATES

Date: January 11, 2016 By: /s/ Gabriel G. Hedrick

Gabriel G. Hedrick

Attorney for Plaintiff

E.DIGITAL CORPORATION