e.Digital

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almost 11 years ago

in response to Black Labs Rule's message

e.Digital Corporation,
Plaintiff,
v.
Apple Inc.,
Defendant.

INTRODUCTION
Plaintiff and Counter-Defendant e.Digital Corporation (“Plaintiff” or
“e.Digital”) submits the following objections to the “Defendants’ Reply In Support
Of Motion To Amend The Stipulated Partial Judgment To Certify The Collateral
Estoppel Order” (“Reply”); the “Declaration Of Kevin J. O’Shea In Support Of
Reply In Support Of Defendants’ Reply In Support Of Motion To Amend The
Stipulated Partial Judgments To Certify The Collateral Estoppel Order For
Immediate Appeal” (“Reply Dec. O’Shea”) and, Exhibits 4-5 attached thereto (Dkt
#66, et seq.) filed by Defendant Apple Inc. (“Apple”) on or about December 6,
2013.
These objections are made in support e.Digital’s opposition to “Apple’s
Notice Of Motion And Motion To Amend The Stipulated Partial Judgment To
Certify The Collateral Estoppel Order For Immediate Appeal”, Dkt #53 et. seq.,
(“Motion to Amend”) as well as Defendant GoPro’s joinder therein. The Motion
to Amend is set be heard by this Court on or before December 20, 2013 at 1:30
p.m.
Apple has brought up several new arguments and set forth new exhibits in its
Reply submitted in support of its Motion to Amend which were not a part of its
moving motion papers with respect to its Motion to Amend. Plaintiff requests that
the Court strike and/or not consider portions of and/or the entirety of the following
documents filed by Apple on December 6, 2013:
1) Page 1, Lines 5-15; Page 2, Lines 8-11; Page 2, Lines 14-20; Page 3,
Line 25; Page 4, Lines 1-6; Page 4, Lines 24-28; Page 5 Lines 1-28; Page 6, Lines
1-28; Page 7, Lines 1-16; Page 7, Lines 1-16; Page 10, Lines 5-16 ; and, Page 10,
Lines 25-28 of “Defendants’ Reply In Support Of Motion To Amend The Stipulated
Partial Judgment To Certify The Collateral Estoppel Order” (Dkt #66; Exhibit A
hereto);
2) Page 2, Paragraph 1, Lines 10-12; and, Page 2, Paragraph 2, Lines 13-

16 of “Declaration Of Kevin J. O’Shea In Support Of Reply In Support Of
Defendants’ Reply In Support Of Motion To Amend The Stipulated Partial
Judgments To Certify The Collateral Estoppel Order For Immediate Appeal, (Dkt
#66-1);
3) Exhibit 4 to the “Declaration Of Kevin J. O’Shea In Support Of Reply
In Support Of Defendants’ Reply In Support Of Motion To Amend The Stipulated
Partial Judgments To Certify The Collateral Estoppel Order For Immediate
Appeal (Dkt #66-2); and,
4) Exhibit 5 to the “Declaration Of Kevin J. O’Shea In Support Of Reply
In Support Of Defendants’ Reply In Support Of Motion To Amend The Stipulated
Partial Judgments To Certify The Collateral Estoppel Order For Immediate
Appeal (Dkt #66-3).
The relevant portions of the Reply are attached hereto as Exhibit A for the
Court’s reference. The grounds for this request and Plaintiff’s objections with
respect to the above are set forth herein.
II. OBJECTIONS
A. Objection Number One: Plaintiff objects to portions of the Reply,
portions of the Dec. O’Shea, and Exhibits 4-5 in their entirety on
the grounds that these pleadings constitute new matters that were
not brought up in Apple’s moving papers.
Apple’s Reply, the Dec. O’Shea, and Exhibits 4-5 constitute new matter(s)
not raised in the moving papers for Apple’s Motion to Amend. (Dkt #53, et. seq.).
Apple did not file the Dec. O’Shea or Exhibits 4-5 until they filed their reply. (Dkt
#66-1, 66-2, 66-3).
Additionally, Apple brings up new arguments in its Reply to which e.Digital
has had no chance to address in its opposition. Most, if not all, of these new
arguments could have been, but were not, brought up in Apple’s moving
paperwork for its Motion to Amend. Specifically, Apple makes arguments for the

first time that:
1) (allegedly) Plaintiff cannot appeal from any of the In re e.Digital
cases without a “proper Rule 54(b) certification” in the Huawei case (or all the In
re e.Digital cases) and/or without final resolution of all the cases.” (Reply, Page
1, Lines 5-15; Page 2, Lines 8-11; Page 3, Line 25; Page 4, Lines 1-6, 24-28; Page
5 Lines 1-28; Page 6, Lines 1-28; Page 7, Lines 1-16; see, Exhibit A hereto);
2) (allegedly) “Defendants’ Motion Is Not Moot Because The Federal
Circuit Has Not Dismissed the Huawei Appeal And This Court Can Enter A Rule
54(b) Certification In the Huawei Case To Provide Appellate Jurisdiction.” (Reply,
Page 10, Lines 5-16, 25-28; see, Exhibit A hereto); and/or
3) The Court should stay the In re e.Digital cases because e.Digital filed
new cases concerning the ‘108 patent. (Reply, Page 2, Lines 14-20).
Plaintiff asserts that it is improper for the moving party to “shift gears” and
introduce new facts or different legal arguments in the reply brief than presented in
the moving papers. New documents and issues cannot be raised in a reply. See,
e.g., Lentinj v. California Center for the Arts Escondido, 370 F.3d 837, 843 n. 6
(9th Cir. 2004); Lujan v. National Wildlife Federation (1990) 497 US 871, 894–
895, 110 S.Ct. 3177, 3192 (court has discretion to disregard late-filed factual
matters); Zamani v. Carnes (9th Cir. 2007) 491 F3d 990, 997 (“district court need
not consider arguments raised for the first time in a reply brief”); see also Ojo v.
Farmers Group, Inc. (9th Cir. 2009) 565 F3d 1175, 1186, fn. 12; Giovanni v. Bank
of America, Nat. Ass'n, 2013 WL 1663335, *4 (C.D. Cal. April 7, 2013); Provenz
v. Miller, 102 F.3d 1478, 1483 (9th Cir. 1996); Davenport v. M/V New Horizon,
2002 WL 32098289 at *3 (N.D.Cal.Dec. 18, 2002).
e.Digital has not been given the opportunity to review or respond to such
arguments in its opposition to the Motion to Amend. Accordingly, Plaintiff
respectfully requests that the Court not consider and/or strike the Paragraph 1,
Lines 10-12; and, Paragraph 2, Lines 13-16 of the Dec. O’Shea; Apple’s Exhibits

4-5; and/or, those pages of the Reply that reference new arguments to include Page
1, Lines 5-15; Page 2, Lines 8-11; Page 2, Lines 14-20; Page 3, Line 25; Page 4,
Lines 1-6; Page 4, Lines 24-28; Page 5 Lines 1-28; Page 6, Lines 1-28; Page 7,
Lines 1-16; Page 7, Lines 1-16; Page 10, Lines 5-16 ; and, Page 10, Lines 25-28.
(See, Exhibit A hereto).
Alternatively, if the Court is inclined to consider such new arguments and/or
grant Apple’s Motion to Amend based upon any of the new matters brought up in
Apple’s Reply (or supporting documents therewith), e.Digital requests leave to file
a 5 page supplemental opposition which addresses these new arguments, alleged
evidence/exhibits provided by Apple for the first time in its Reply.
B. Objection Number Two: Plaintiff objects to portions of the Reply,
portions of the Dec. O’Shea, and Exhibits 4-5 in their entirety on
the grounds that the Court Has No Jurisdiction to Consider
Anything With Respect to the Huawei Appeal or Stipulated
Judgment Entered in the Huawei Case and/or Such Matters Lack
Relevance to Apple’s Motion To Amend (and GoPro’s Joinder
Therein)
As noted above, Apple for the first time makes certain arguments with
respect to some alleged defect with the stipulated, final judgment entered in the
Huawei case and/or with respect to the alleged issue of whether the Federal Circuit
has jurisdiction to consider the appeal filed in the Huawei matter.
e.Digital disputes Apple’s newly stated position(s) with respect thereto and
further objects that such arguments and/or matters lack relevance to Apple’s
Motion to Amend (and GoPro’s joinder therein).
Federal Rules of Civil Procedure, Rule 7(b) requires: “an application to the
court for an order shall be by motion which, unless made during a hearing or trial,
shall be made in writing, shall state with particularity its grounds therefore,
and shall set forth the relief or order sought.” (emphasis added).

Here, Apple has not sought in its Motion to Amend any relief with respect to
the Huawei case, any relief with respect to amending the stipulated, final judgment
in the Huawei case, and/or any relief related to the supposed jurisdictional issue
with the Huawei appeal. Apple’s notice of motion and/or its moving paperwork say
absolutely nothing about any relief sought with respect to the Huawei case or the
Huawei appeal. (See, Dkt #53, et. seq.).
Rather, at best, Apple has sought only to amend the stipulated judgment
and/or certify the Collateral Estoppel Order in its case alone per the statements
Apple made in its notice of motion for the Motion to Amend: “Apple Inc. will,
and hereby does submit this motion to amend the partial judgment(Rec. Doc.
No. 51) to certify the Collateral Estoppel Order for immediate appeal.”
(emphasis added). (See,“Apple’s Notice Of Motion And Motion To Amend The
Stipulated Partial Judgment To Certify The Collateral Estoppel Order For
Immediate Appeal, Dkt #53, Page 2, Lines 6-7).
The same is true for Defendant GoPro who only sought to amend the
stipulated judgment and/or certify the Collateral Estoppel Order in its case alone.
(See, e.Digital v. Woodman Labs, dba GoPro, Case Number 3:12-cv-02899-DMSWVG,
Dkt #72).
Accordingly, the issue of whether the stipulated judgment in the Huawei
case is allegedly defective (which e.Digital disputes) and/or can (or should) be
amended is not before the Court and thereby lacks relevance to Apple’s Motion to
Amend (as joined in by GoPro). The Court has no jurisdiction to consider such
matters and e.Digital objects to any consideration thereof.
Similarly, the issue of whether the Federal Circuit may or may not have
jurisdiction to determine the Huawei appeal is also not before this Court with
respect to Apple’s Motion to Amend. Again, Apple and/or GoPro have not sought
any relief in the notice of motion, GoPro’s joinder, and/or the moving paperwork
for the Motion to Amend with respect to the Huawei Defendants, the Huawei case,

the Huawei stipulated judgment, or the Huawei appeal, nor could they as they are
not parties to the Huawei case.
The Motion to Amend is limited to the relief sought by Apple and GoPro—
namely their request(s) to amend the stipulated judgments in their respective cases
and/or to certify the Collateral Estoppel Order in their respective cases. (See, Dkt
#53, et seq.). Any other matters, to include those with respect to the Huawei
appeal, are not before this Court in Apple’s Motion to Amend (or GoPro’s joinder
therein).
Even if this were not the case, this Court would have no jurisdiction to
consider any jurisdictional issues with respect to the Huawei appeal as that would
most likely be left up to the Federal Circuit to decide. During pendency of an
appeal, the district court generally is divested of jurisdiction over those aspects of
the case involved in the appeal. See, e.g., Griggs v. Provident Consumer Discount
Co., 459 US 56, 58, 103 S.Ct. 400, 402 (1982); Pro Sales, Inc. v. Texaco, USA,
792 F2d 1394, 1396, fn. 1 (9th Cir. 1986) (holding that the district court had no
jurisdiction to amend its judgment after a notice of appeal had been filed); Mc-
Clatchy Newspapers v. Central Valley Typographical Union No. 46, 686 F2d 731,
734–735 (9th Cir. 1982) (holding that the district court had no jurisdiction to enter
amended order that would change nature of issue on appeal); Davis v. United
States, 667 F2d 822, 824 (9th Cir. 1982) (holding that the district court had no
jurisdiction to rule on a motion to amend the pleadings after an appeal from a final
judgment had been filed).
Indeed, it is unclear on what basis Apple or GoPro can bring up said
issue(s) with the Court in their Reply or otherwise given that: 1) Huawei has not
sought any relief with respect to Apple’s Motion to Amend or with respect to the
stipulated judgment entered in the Huawei case; 2) Huawei has not joined in
Apple’s Motion to Amend; 3) the notice of motion and moving paperwork by
Apple (and the joinder of GoPro) say nothing about seeking any relief with respect

to the Huawei appeal, seeking to amend the stipulated judgment in the Huawei
case, or seeking any relief related to some alleged jurisdictional defect therewith;
and/or, 4) Apple (or GoPro) having no standing to bring such issues to the Court
inasmuch as they are not parties in the Huawei case or parties of interest therein.
There is no motion with respect to the Huawei stipulated judgment or
Huawei appeal before this Court. With the above in mind, the Court has no
jurisdiction to consider such matters and e.Digital objects to any consideration
thereof.
Dated: December 9, 2013
HANDAL & ASSOCIATES
By: /s/Pamela C. Chalk
Anton N. Handal
Pamela C. Chalk
Gabriel G. Hedrick
Attorneys for Plaintiff
e.Digital Corporation