Case 3:18-cv-02273-BEN-JLB Document 58 Filed 03/26/20 PageID.594 Page 1 of 7
`
`JAMES C. YOON, State Bar No. 177155
`jyoon@wsgr.com
`SARA L. TOLBERT, State Bar No. 300945
`stolbert@wsgr.com
`JAMIE Y. OTTO, State Bar No. 295099
`jotto@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI P.C.
`650 Page Mill Road
`Palo Alto, California 94304-1050
`Telephone: (650) 493-9300
`Fax: (650) 565-5100
`
`Attorneys for Defendants
`Blast Motion, Inc. and
`Taylor Made Golf Company, Inc.
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`NEWSPIN SPORTS, LLC,
`Plaintiff,
`
`v.
`BLAST MOTION, INC., and TAYLOR
`MADE GOLF COMPANY, INC.,
`Defendants.
`
`Case No.: 3:18-cv-02273-BEN-JLB
`
`DEFENDANTS’ OPPOSITION TO
`EX PARTE MOTION TO EXTEND
`CLAIM CONSTRUCTION
`DEADLINES
`
`Complaint Filed: Sept. 28, 2018
`
`Judge: Hon. Roger T. Benitez
`Courtroom: 5A-5th Flr.
`
`Magistrate Judge: Hon. Jill L.
`Burkhardt
`Courtroom: Suite 5140
`
`Hearing Date and Time: N/A
`
`DEFS’ OPP. TO EX PARTE MOT. TO
`EXTEND CLAIM CONSTRUCTION DEADLINES
`
`CASE NO. 3:18-CV-02273-BEN-JLB
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`Case 3:18-cv-02273-BEN-JLB Document 58 Filed 03/26/20 PageID.595 Page 2 of 7
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`I.
`
`INTRODUCTION
`Pursuant to Magistrate Judge Jill Burkhardt’s Chambers Rules Section VI and VII,
`Defendants Blast Motion, Inc. and Taylor Made Golf Company, Inc. (collectively,
`“Defendants”) submit this opposition to Plaintiff NewSpin Sports, LLC’s (“NewSpin”)
`ex parte motion to extend claim construction deadlines.
`In its ex parte motion, NewSpin, for the first time in this litigation, asserts that it
`lacks documents needed for claim construction. This assertion is both false and baseless.
`NewSpin has all the documents necessary for claim construction. NewSpin has already
`identified constructions for the terms it seeks to construe, identified constructions for
`claim terms proposed by Defendants, and identified intrinsic and extrinsic evidence to
`support its proposed constructions of the disputed claim terms. Indeed, NewSpin met and
`conferred with Defendants concerning the scope of the constructions – all without access
`to technical documentation it alleges is insufficient under Patent L.R. 3.4. NewSpin
`never explains how Defendants’ internal documents would suddenly become relevant to
`construe the terms of NewSpin’s patents. NewSpin’s position is wrong as a matter of
`law. The Federal Circuit has expressly declared that it is legal error to interpret claims in
`light of the accused products. See SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107,
`1118 (Fed. Cir. 1985) (“A claim is construed in the light of the claim language, the other
`claims, the prior art, the prosecution history, and the specification, not in light of the
`accused device.”) (emphasis in original). Even if the documentation NewSpin claims it
`needs was relevant, the time to identify such information and documents—all of which
`would be extrinsic evidence—has long since passed. The Patent Local Rules prohibit the
`introduction of any new extrinsic evidence at this stage.
`Now, only a week before opening claim construction briefs are due and in
`violation of Judge Burkhardt’s Chamber Rules, Plaintiff attempts to use Defendants’
`forthcoming document production and the circumstances imposed by COVID-19 to argue
`that it cannot electronically file its claim construction briefs. The Court should deny
`
`DEFS’ OPP. TO EX PARTE MOT. TO
`EXTEND CLAIM CONSTRUCTION DEADLINES
`
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`Case 3:18-cv-02273-BEN-JLB Document 58 Filed 03/26/20 PageID.596 Page 3 of 7
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`NewSpin’s request because NewSpin fails to demonstrate good cause to move the case
`schedule.
`II. NEWSPIN HAS NOT DEMONSTRATED GOOD CAUSE TO MOVE
`THE CLAIM CONSTRUCTION DEADLINES
`A. Claim Construction is Not Impacted by Defendants’ Document Production
`Until NewSpin’s ex parte motion, filed a week before opening claim construction
`briefs are due, NewSpin did not make it known to Defendants that it would need
`Defendants’ supplemental production to identify its claim construction positions.
`NewSpin served Preliminary Claim Constructions on January 27, 2020, and Responsive
`Claim Constructions on February 10, 2020. During counsels’ February 17, 2020
`telephonic meet and confer—used to narrow the claim construction issues and finalize
`preparation of the Joint Claim Construction Chart, Worksheet and Hearing Statement
`pursuant to Patent L.R. 4.1(e)—NewSpin did not mention that it needed any
`supplemental document production1 in order to finalize its claim construction positions.
`The parties filed their Joint Claim Construction Chart, Joint Claim Construction
`Worksheet, and Joint Hearing Statement on February 24, 2020, identifying all of the
`intrinsic and extrinsic evidence on which the parties would rely to support their proposed
`claim constructions. See Dkt. Nos. 49, 50, 51.
`NewSpin does not (and cannot) articulate why it would need Defendants’ internal
`technical documents to construe terms of its asserted patents. Intrinsic evidence is the
`best source for interpreting an asserted claim term. See Vitronics Corp. v. Conceptronic,
`
`1 Defendants dispute that they are in violation of Patent L.R. 3.4 in light of their
`production of documents sufficient to show the operation of the Accused Products,
`which include engineering drawings, technical specifications and marketing documents
`explaining the design and operation of the Accused Products. Defendants are also
`preparing its supplemental production due on April 14, 2020 as discussed during the
`March 18, 2020 telephonic discovery hearing with the Court.
`
`DEFS’ OPP. TO EX PARTE MOT. TO
`EXTEND CLAIM CONSTRUCTION DEADLINES
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`Case 3:18-cv-02273-BEN-JLB Document 58 Filed 03/26/20 PageID.597 Page 4 of 7
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`90 F.3d 1576, 1582 (Fed. Cir. 1996). Even if extrinsic evidence is used, it “cannot be
`used to vary the meaning of the claims as understood based on a reading of the intrinsic
`record.” Shinsedai Co. v. Nintendo Co., No. 11-cv-2799-IEG-MDD, 2013 U.S. Dist.
`LEXIS 200944, at *10 (S.D. Cal. Apr. 26, 2013) (citing Phillips v. AWH Corp., 415 F.3d
`1303, 1319 (Fed. Cir. 2005)). Of the ten terms in dispute, NewSpin takes the position
`that eight should be construed according to their plain and ordinary meaning. See Dkt.
`No. 51. The only extrinsic evidence identified by NewSpin is (1) an expert declaration
`that will explain the understanding of a person of ordinary skill in the art and a discussion
`of the technological background or (2) third-party dictionary definitions or technical
`papers. See Dkt. No. 50. NewSpin does not cite to any public or internal Blast Motion
`documents in support of its claim construction positions. It does not need to because
`claim construction is a separate analysis from infringement. See Koninklijke Phillips
`N.V. v. Zoll Lifecor Corp., No. 2:12-cv-1369, 2016 U.S. Dist. LEXIS 168547, at *113
`(W.D. Pa. Feb. 3, 2016) (“claim construction is undertaken before the infringement
`analysis, largely with a blind-eye to the effect of a particular construction on
`infringement.”). Further confirmation that NewSpin does not need additional documents
`to support its claim constructions is its position that none of disputed claim terms are case
`dispositive. See Dkt. No. 49 at 2.
`NewSpin’s request to the Court that Defendants supplement their document
`production was made on the basis of its need to determine infringement positions.2
`NewSpin does not mention the supposed lack of documents for claim construction. Ex. 1
`at 2 (“None of these documents describe the operation of the Accused Products at the
`
`2 While counsel for NewSpin and counsel for Defendants had discussed the possibility of
`a stay of the case schedule, no agreement on the issue was ever reached. Nor can
`NewSpin point to any. See Wojcio Decl. ¶ 5 (“Ms. Tolbert responded favorably to this
`proposal and said she would discuss it with her client), ¶ 7 (noting that counsel for
`Defendants never indicated whether Defendants would join or oppose a motion to stay).
`
`DEFS’ OPP. TO EX PARTE MOT. TO
`EXTEND CLAIM CONSTRUCTION DEADLINES
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`Case 3:18-cv-02273-BEN-JLB Document 58 Filed 03/26/20 PageID.598 Page 5 of 7
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`level of detail required for purposes of determining infringement. . . These are all
`relevant to Plaintiff’s claims of infringement in this case.”) (emphasis added).
`Even if NewSpin wanted to amend its positions on claim construction at this point,
`it would not be allowed to do so under this district’s Patent Local Rules because the
`deadline to identify constructions and evidence in support has passed pursuant to the
`Court’s Case Management Order Regulating Discovery and Other Pretrial Proceedings in
`a Patent Case (Dkt. No. 43). The parties identified all of the intrinsic and extrinsic
`evidence on which they would rely upon to support their proposed claim constructions on
`February 24, 2020. See Dkt. Nos. 49, 50, 51. Claim construction discovery closed on
`March 13, 2020. Dkt. No. 43 ¶ 7. If NewSpin wanted further discovery to assist in
`formulating its claim construction positions, it should have made a timely request for
`Defendants’ document production or filed a motion with the Court well before it was
`required to identify supporting evidence on February 24, 2020.
`B. Claim Construction Briefing is Not Impacted by Current Office Closures
`While Defendants are mindful of the evolving nature and difficulties associated
`with the restrictions associated with COVID-19, NewSpin does not present sufficient
`justification to delay the proceedings at this time. Defendants’ counsel’s offices are
`similarly closed until April 7, and Defendants’ counsel are also subject to “shelter in
`place” restrictions. However, claim construction issues have already been identified,
`submitted to the Court, and all that is left to do is file the claim construction briefs
`electronically and attend the hearing.3 To argue that a claim construction brief cannot be
`submitted remotely has the same effect of arguing that no court deadline can be met. But
`this cannot be true, given that NewSpin filed the instant ex parte motion.
`
`3 Defendants note that the currently-scheduled date for the claim construction hearing on
`April 30, 2020 is not impacted by the Order of the Chief Judge No. 18, which has
`continued jury trials to at least April 16, 2020.
`
`DEFS’ OPP. TO EX PARTE MOT. TO
`EXTEND CLAIM CONSTRUCTION DEADLINES
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`Case 3:18-cv-02273-BEN-JLB Document 58 Filed 03/26/20 PageID.599 Page 6 of 7
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`Although NewSpin complains that Defendants cited to the same circumstances, it
`misses a key distinction. Namely, that submission of briefing (of which the substance has
`already been settled) through ECF is significantly less onerous than coordinating with
`multiple individuals to collect documents, working with a third-party vendor to process
`the documents, and ensuring that the law firm staff can produce the documents. It was
`these reasons the Court permitted Defendants until April 14 to supplement.
`C. NewSpin’s Motion Violates Judge Burkhardt’s Chambers Rules
`Judge Burkhardt’s Chambers Rules provide that “any request to reschedule a court
`proceeding or deadline shall be made in writing no less than 10 calendar days before the
`affected date. Untimely requests will be granted only upon a showing of both good cause
`and excusable neglect for the party’s failure to act before time had expired.” See
`Chambers Rules Section VII (emphasis in original). While the parties had discussed the
`possibility of a stay of deadlines at least as early as March 12, 2020 during a meet and
`confer and counsel for NewSpin had raised moving for a stay of deadlines during the
`March 18, 2020 Discovery Conference with the Court, NewSpin never took any steps to
`move forward with its proposal until it sought Defendants’ consent on March 23, 2020
`(See Wojcio Decl. ¶ 8)—eight days before opening claim construction briefs are due.
`Defendants have been diligently preparing to file its opening claim construction brief
`next week, and there is no reason why NewSpin could not have made its request earlier.
`NewSpin cannot demonstrate good cause, let alone excusable neglect to act within the
`requisite 10-calendar day deadline.
`III. CONCLUSION
`For the foregoing reasons, Defendants respectfully request that the Court deny
`NewSpin’s ex parte motion to extend the claim construction deadlines and proceed with
`the claim construction deadlines set forth in the Court’s November 29, 2019 Case
`Management Order [Dkt. No. 43].
`
`DEFS’ OPP. TO EX PARTE MOT. TO
`EXTEND CLAIM CONSTRUCTION DEADLINES
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`Case 3:18-cv-02273-BEN-JLB Document 58 Filed 03/26/20 PageID.600 Page 7 of 7
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`DATED: March 26, 2020
`
`Respectfully submitted,
`
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`
`By:
`
`/s/ Sara L. Tolbert
`Sara L. Tolbert
`
`Attorneys for Defendants
`Blast Motion, Inc. and Taylor Made Golf
`Company, Inc.
`
`DEFS’ OPP. TO EX PARTE MOT. TO
`EXTEND CLAIM CONSTRUCTION DEADLINES
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