Case 3:18-cv-02245-JD Document 264 Filed 02/24/23 Page 1 of 20
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`
`
`Edward R. Nelson III (Admitted Pro Hac Vice)
`Texas Bar No. 00797142
`Christopher G. Granaghan (Admitted Pro Hac Vice)
`Texas Bar No. 24078585
`ed@nelbum.com
`chris@nelbum.com
`NELSON BUMGARDNER CONROY P.C.
`3131 West Seventh Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-9111
`Facsimile: (817) 377-3485
`
`Timothy E. Grochocinski (Admitted Pro Hac Vice)
`Illinois Bar No. 6295055
`Charles Austin Ginnings (Admitted Pro Hac Vice)
`New York Bar No. 4986691
`tim@nelbum.com
`austin@nelbum.com
`NELSON BUMGARDNER CONROY P.C.
`15020 S. Ravinia Avenue, Suite 29
`Orland Park, Illinois 60462
`Telephone: (708) 675-1974
`
`Ryan E. Hatch
`California Bar No. 235577
`ryan@hatchlaw.com
`HATCH LAW PC
`13323 Washington Blvd., Suite 302
`Los Angeles, CA 90066
`Telephone: (310) 279-5076
`
`Attorneys for Plaintiff
`FIRSTFACE CO., LTD.
`
`
`UNITED STATES DISTRICT COURT
` NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`
`
`CASE NO. 3:18-cv-02245-JD
`
`
`PLAINTIFF’S REPLY IN SUPPORT OF
`MOTION FOR PARTIAL SUMMARY
`JUDGMENT
`
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`
`
`FIRSTFACE CO., LTD.,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`PLAINTIFF’S REPLY IN SUPPORT OF
`MOTION FOR PARTIAL SUMMARY JUDGMENT
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`
`
`CASE NO: 3:18-CV-02245-JD
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`Case 3:18-cv-02245-JD Document 264 Filed 02/24/23 Page 2 of 20
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`TABLE OF CONTENTS
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`SUMMARY JUDGMENT ON THE POWER BUTTON LIMITATIONS. ...................................1
`A.
`Judicial Estoppel Bars Apple from Disputing Infringement of These Limitations. ............1
`B.
`Even if Apple Is Not Estopped, Summary Judgment for Firstface Is Proper. .....................2
`i.
`Firstface did not waive the argument that “on/off” means “on or off.” ...................2
`ii.
`“On/off” means “on or off.” .....................................................................................3
`iii.
`The Court should grant summary judgment regardless of its construction. ............5
`SUMMARY JUDGMENT REGARDING APPLE’S INVALIDITY POSITIONS .......................6
`A.
`Apple’s Atrix 4G Invalidity Theories Fail as a Matter of Law. ...........................................7
`i.
`Apple misstates the scope of Firstface’s motion. .....................................................7
`ii.
`Apple misstates case law and testimony to try to avoid summary judgment. .........7
`iii.
`Firstface did not waive this argument. .....................................................................8
`iv.
`Apple’s efforts to conjure up factual disputes fail. ..................................................9
`The Apple Fingerprint Prototype Is Not Prior Art. ..............................................................9
`i.
`Apple has not shown who conceived of the Apple Fingerprint Prototype. ...........10
`ii.
`Apple has not shown conception of every claim element. .....................................11
`iii.
`Apple has not shown actual or constructive reduction to practice. ........................11
`iv.
`Apple has not shown diligence. .............................................................................12
`Apple’s iPhone 3GS/4 Invalidity Theories Are Barred by Estoppel. ................................13
`C.
`Apple’s New Enablement Defense Cannot Survive Summary Judgment. ........................15
`D.
`CONCLUSION ..............................................................................................................................15
`
`
`B.
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`PLAINTIFF’S REPLY IN SUPPORT OF
`MOTION FOR PARTIAL SUMMARY JUDGMENT
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`CASE NO.: 3:18-CV-02245-JD
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`I.
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`II.
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`III.
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`Case 3:18-cv-02245-JD Document 264 Filed 02/24/23 Page 3 of 20
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`TABLE OF AUTHORITIES
`
`
`
`
`
`Cases
`
`Andersen Corp. v. Fiber Composites, LLC,
`474 F.3d 1361 (Fed. Cir. 2007)..................................................................................................... 4, 5
`
`Baughman v. Walt Disney World Co.,
`685 F.3d 1131 (9th Cir. 2012) .......................................................................................................... 2
`
`Bracco Diagnostics v. Maia Pharms.,
`839 F. App’x 479 (Fed. Cir. 2020) ................................................................................................... 3
`
`C.R. Bard, Inc. v. M3 Systems, Inc.,
`157 F.3d 1340 (Fed. Cir. 1998)....................................................................................................... 10
`
`Contour IP Hldg. v. Gopro,
`No. 17-cv-4738, 2020 WL 109063 (N.D. Cal. Jan. 9, 2020) .......................................................... 13
`
`Curtiss-Wright Flow Control Corp. v. Velan, Inc.,
`438 F.3d 1374 (Fed. Cir. 2006)......................................................................................................... 5
`
`Dow Chem. Co. v. Astro-Valcour, Inc.,
`267 F.3d 1334 (Fed. Cir. 2001)....................................................................................................... 10
`
`Envirotech v. Redline Detection,
`No. 12-cv-1861, 2015 WL 4744394 (C.D. Cal. Jan. 29, 2015) ...................................................... 13
`
`Fox Grp., Inc. v. Cree, Inc.,
`700 F.3d 1300 (Fed. Cir. 2012)....................................................................................................... 10
`
`Karlin Tech. Inc. v. Surgical Dynamics, Inc.,
`177 F.3d 968 (Fed. Cir. 1999)........................................................................................................... 4
`
`Kruse Technology Partnership v. DMAX, Ltd.,
`No. SACV 09-00458-JVS, 2010 U.S. Dist. LEXIS 148990 (C.D. Cal. Sep. 21, 2010) ................... 4
`
`Lacayo v. Donahoe,
`No. 14-CV-04077-JSC, 2015 WL 993448 (N.D. Cal. Mar. 4, 2015) ............................................. 14
`
`Microchip Tech. v. Aptiv Servs. US,
`No. 17-cv-1194, 2020 WL 4335519 (D. Del. July 28, 2020) ......................................................... 13
`
`Optical Coating Lab. v. Applied Vision, Ltd.,
`No. C-92-4689 MHP, 1996 U.S. Dist. LEXIS 1476 (N.D. Cal. Feb. 5, 1996)................................. 3
`
`Poly-America, L.P. v. GSE Lining Technology, Inc.,
`383 F.3d 1303 (Fed. Cir. 2004)......................................................................................................... 8
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`Case 3:18-cv-02245-JD Document 264 Filed 02/24/23 Page 4 of 20
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`Rissetto v. Plumbers & Steamfitters Local 343,
`94 F.3d 597 (9th Cir. 1996) .............................................................................................................. 2
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`Silvestri v. Grant,
`496 F.2d 593 (C.C.P.A. 1974) ........................................................................................................ 10
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`Thor v. Howe,
`466 F.3d 173 (1st Cir. 2006) ............................................................................................................. 2
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`Tyco Healthcare Grp. v. Ethicon Endo-Surgery, Inc.,
`774 F.3d 968 (Fed. Cir. 2014)......................................................................................................... 11
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`PLAINTIFF’S REPLY IN SUPPORT OF
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`Case 3:18-cv-02245-JD Document 264 Filed 02/24/23 Page 5 of 20
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`I.
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`SUMMARY JUDGMENT ON THE POWER BUTTON LIMITATIONS.
`Apple fails to rebut Firstface’s showing that the accused products practice the power button
`limitations. Instead of addressing the merits, Apple argues Firstface waived every possible theory of how
`its products could practice the power button limitations. Firstface has waived nothing. But the Court
`need not wade into these arguments. The undisputed evidence shows that Apple successfully argued to
`the PTAB that a device with a button identical to the accused products’ power button meets the power
`button limitations. This estops Apple from maintaining that the accused products do not satisfy the power
`button limitations. The Court should grant partial summary judgment on this basis alone.
`Judicial Estoppel Bars Apple from Disputing Infringement of These Limitations.
`A.
`Apple’s arguments that judicial estoppel does not apply are based on misrepresentations of the
`PTAB record. Apple first argues that its position on the power button limitations is consistent with its
`position in the IPRs because, “[b]efore the PTAB, Apple explained that Firstface’s own infringement
`theories, if accepted, also showed invalidity.” ECF 257 at 9. Apple provides the Court with a side-by-side
`comparison of Firstface’s infringement contentions with one of Apple’s IPR petitions, and argues that
`“[b]y pointing to Firstface’s infringement theories, Apple did not concede them.” Id. But Apple did not
`mention Firstface’s infringement theories before the PTAB, let alone state that its arguments were based
`on them. The side-by-side comparison in Apple’s response does not appear anywhere in the record before
`the PTAB. Nor do Firstface’s infringement contentions. Apple argued, without reservation, that the
`“sleep/wake button” in the iOS 3.1 User Guide, which functioned exactly like the Accused Products, met
`the power button limitations. ECF 241-6 at 30-31, 66-67; ECF 241-7 at 28, 66. Apple’s attempt to run
`from that argument smacks of the very opportunism that judicial estoppel is meant to preclude.
`Second, Apple argues that it “did not persuade the PTAB to take a position regarding the ‘On/Off’
`limitation” because “the prior art’s satisfaction of that limitation was not at issue in the IPR.” ECF 257.
`Apple does not (and cannot) dispute that the Board found that the iOS 3.1 User Guide discloses “a power
`button configured to turn on and off the terminal by pressing” because it describes “an additional
`‘Sleep/Wake’ button that turns the power on and off.” ECF 241-8 at 17-18; ECF 241-9 at 21, 54. It does
`not matter that Firstface did not dispute that the iOS 3.1 User Guide discloses the power button
`limitations—judicial estoppel does not require that an issue was contested. See Baughman v. Walt Disney
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`Case 3:18-cv-02245-JD Document 264 Filed 02/24/23 Page 6 of 20
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`World Co., 685 F.3d 1131, 1133 (9th Cir. 2012) (“For a court to be misled, it need not itself adopt the
`statement; those who ‘induce[] their opponents to surrender have prevailed as surely as persons who
`induce the judge to grant summary judgment.’” (quoting Rissetto v. Plumbers & Steamfitters Local 343,
`94 F.3d 597, 604-05 (9th Cir. 1996))); see also Thor v. Howe, 466 F.3d 173, 181 (1st Cir. 2006) (“Unlike
`the doctrine of issue preclusion, judicial estoppel does not require that the issue have been actually
`litigated in the prior proceeding.”). Nor does it matter that the Board did not find the asserted claims to be
`unpatentable—the PTAB explicitly found that the iOS 3.1 User Guide discloses a button that turns “on
`and off” the device, just as the accused products include a button that turns “on and off” the device.
`Apple’s argument is contrary to the PTAB’s explicit finding.
`Finally, Apple argues that it would be prejudiced by applying judicial estoppel because
`“Firstface’s judicial estoppel argument is no more than a smokescreen to conceal its untimely departure
`from its infringement contentions.” As discussed elsewhere (see ECF 255 at 5-12), Firstface has not
`departed from its contentions. Regardless, Apple misses the point. Because of its arguments to the PTAB,
`Apple cannot dispute that the accused products’ power button turns on and off the device. If the power
`button turns on and off a device, it necessarily also turns on or off the device. So it does not matter if the
`Court construes “on/off” as “on and off” or “on or off”—Apple is stuck with its arguments to the PTAB
`either way. The Court should thus grant partial summary judgment of infringement.
`Even if Apple Is Not Estopped, Summary Judgment for Firstface Is Proper.
`B.
`The Court should grant summary judgment in Firstface’s favor even if judicial estoppel does not
`apply for two reasons. First, “on/off” means “on or off,” and the accused products’ power button
`undisputedly turns on the device. Second, even if “on/off” means “on and off,” the undisputed evidence
`shows the accused products’ power button turns on and off the device.
`i. Firstface did not waive the argument that “on/off” means “on or off.”
`Apple’s lead argument on the meaning of the power button limitations is that Firstface has waived
`the argument that “on/off” means “on or off.” Firstface already explained why this argument is wrong.
`ECF 255 at 6. The accused products’ power button meets the power button limitations because “each
`device can be turned on by pressing the button and holding it down” and “can be turned off by pressing
`the button, holding it down . . . , and dragging the slider that appears.” Id.; see also ECF 255-5 at 12. This
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`functionality satisfies the power button limitations regardless of how the Court construes them.
`Apple’s only new argument is that, in its claim construction brief, Apple stated that the
`“‘ON/OFF’ button . . . is intended to turn the terminal off from the on state and is also intended to turn it
`on from the off state,” and Firstface did not challenge that. ECF 257 at 3. Apple ignores that the parties
`did not brief “on/off” during claim construction. Apple made the statement to support its argument that
`an “activation button” must be mechanical. ECF 69 at 4-6. Firstface did not concede that Apple was
`correct but argued that the function of the “ON/OFF button” was irrelevant to whether the activation
`button must be mechanical. ECF 76 at 4. Apple contends the Court’s claim construction order “reflects
`the parties’ mutual understanding” because it noted that “[t]he ON/OFF button is described as a button
`that can be used to completely turn on and off the mobile communication terminal or switch it to the
`inactive state.” ECF 137 at 7. But the Court made this statement in finding the operation of the ON/OFF
`button irrelevant to whether the activation button must be mechanical. Id. The Court was not presented
`with, and did not resolve, any dispute about whether “on/off” means “on and off” or “on or off.”
`ii. “On/off” means “on or off.”
`For reasons Firstface has already stated, the Court should construe “on/off” as “on or off.” ECF
`236 at 14-15; ECF 255 at 5-6. Apple’s arguments to the contrary are unpersuasive.
`Apple first argues that Firstface’s “infringement contentions and claim construction briefs make
`clear . . . the ordinary meaning of the “On/Off” limitation requires a button that does both.” ECF 257.
`Firstface’s infringement contentions, however, never state that “on/off” means “on and off” but instead
`merely point to the functionality that Firstface contends satisfies the limitations, regardless of how
`“on/off” is construed. ECF 257-19 at 9-15; ECF 257-20 at 9-15. As explained above, Firstface’s claim
`construction briefing does not say anything about “on/off” because the term was not before the Court.
`Apple downplays the case law holding that a slash can mean “or,” arguing that “the case law is
`not so definitive.” ECF 257 at 5. But Apple says nothing about the Federal Circuit’s decision in Bracco
`Diagnostics v. Maia Pharms., 839 F. App’x 479 (Fed. Cir. 2020), which Firstface discussed extensively.
`ECF 236 at 15. The two cases Apple cites are irrelevant. In Optical Coating Lab. v. Applied Vision, Ltd.,
`the claim required “a linear magnetron-enhanced ion source device.” No. C-92-4689 MHP, 1996 U.S.
`Dist. LEXIS 1476, at *20 (N.D. Cal. Feb. 5, 1996). The plaintiff argued that “linear” encompassed
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`Case 3:18-cv-02245-JD Document 264 Filed 02/24/23 Page 8 of 20
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`“planar” because the specification used the term “linear/planar” Id. at *20. In other words, the plaintiff
`argued that the “/” meant “or” because “linear” and “planar” are “interchangeable.” Id. at *22-23. While
`the court rejected that argument, it was not addressing a situation in which a slash separates terms that are
`not interchangeable. And in Kruse Technology Partnership v. DMAX, Ltd., the meaning of “/” was not
`even at issue. No. SACV 09-00458-JVS, 2010 U.S. Dist. LEXIS 148990 (C.D. Cal. Sep. 21, 2010). The
`court was addressing whether a party was judicially estopped from arguing that the language “forming a
`fuel/air mixture” lacks a temporal limitation, not the meaning of the slash in “fuel/air.” Id. at *3-4.
`Apple’s arguments that the specification does not support reading “on/off” as “on or off” are
`wrong. Apple first argues “[t]he specification nowhere identifies a ‘power button’ that only turns on the
`device,” but instead “refers to an ‘ON/OFF button’ to turn off the device completely.” ECF 257 at 6. But
`this acknowledges that the “ON/OFF button” disclosed by the specification does not turn on and off the
`device—it only turns the device off. Apple further argues the specification’s use of “wired/wireless” and
`“his/her” do not support construing “on/off” as “on or off” but instead “merely confirms that the meaning
`of the forward slash is context-specific.” Id. Apple is right about one thing: the meaning of a slash is
`context specific. And, as the specification shows, a slash can mean “or.” Apple does not dispute that the
`slash in “his/her” means “or.” It contends that the “[t]he repeated reference to ‘functions’ (plural)” in the
`phrase “wired/wireless communication functions or other functions” suggest that the slash means “and.”
`Firstface submits that the slash in “wired/wireless” is best read as “or” because “wired” and “wireless”
`are opposites. See, e.g., ECF 238-1 at 3:11-20. But the meaning of the slash in “wired/wireless” is beside
`the point. As Apple concedes, a slash can mean “or.” And, for the reasons explained in Firstface’s motion
`for summary judgment and herein, “on/off” in the asserted patents means “on or off.”
`Apple also argues that claim differentiation is irrelevant because there are differences between the
`independent claims besides the power button limitations, and, “[w]here claims are not otherwise
`identical, the doctrine does not apply.” ECF 257 at 6 (citing Andersen Corp. v. Fiber Composites, LLC,
`474 F.3d 1361, 1369-70 (Fed. Cir. 2007)). This is not the law. Claim differentiation “is based on ‘the
`common sense notion that different words or phrases used in separate claims are presumed to indicate
`that the claims have different meanings and scopes.’” Andersen, 474 F.3d at 1369 (quoting Karlin Tech.
`Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed. Cir. 1999)). It “is a guide, not a rigid rule.”
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`Case 3:18-cv-02245-JD Document 264 Filed 02/24/23 Page 9 of 20
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`Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1381 (Fed. Cir. 2006) (internal
`quotation marks omitted). Differences between claims beyond the phrase at issue may be a reason not to
`apply the doctrine. For example, in Andersen, on which Apple relies, the court did not apply claim
`differentiation because there were “numerous other differences varying the scope of the claimed subject
`matter.” Andersen, 474 F.3d at 1370. Apple has cited no authority that claim differentiation is
`inapplicable anytime there are any differences between claims beyond the phrase at issue.
` Claim differentiation applies here. The only claim difference Apple cites other than the power
`button limitations is the asserted claims’ requirement that certain actions are performed “without
`additional user input.” ECF 257 at 7. The “without additional user input” limitations are entirely separate
`from the power button limitations. Indeed, “power button” does not appear in the claims apart from the
`power button limitations. There is, thus, no apparent reason why the patentee would use the term “a
`power button configured to turn on and off the terminal by pressing” in claim 1 of the asserted patents yet
`use the term “a power button for pressing to turn on/off the terminal” in the asserted claims unless the
`terms have different meanings. The Court should give effect to this difference in claim language.
`iii. The Court should grant summary judgment regardless of its construction.
`Apple does not dispute that the accused products meet the power button limitations if the Court
`construes “on/off” as “on or off.” Instead, its sole argument is that “Firstface has never presented this
`infringement theory in its infringement contentions and therefore has waived it.” ECF 257 at 8. As
`explained above and elsewhere, that is not true. The Court should thus grant summary judgment.
`Even if the Court adopts Apple’s view, summary judgment in Firstface’s favor is appropriate
`because “a user can turn on the Accused Products by pressing the power button and can turn them off by
`pressing and holding the power button and then dragging the slider,” and “under the plain claim
`language, it is sufficient if a power button press is one part of turning off the device.” ECF 236 at 18.
`Contrary to Apple’s argument, this understanding of the claims does not insert language; it respects the
`language, which requires a “pressing to turn on/off the terminal” with no further restrictions. For
`example, the claim does not say “pressing to turn on/off the terminal [without additional user input].”
`Apple’s contention that Firstface has waived the argument that the accused products’ power
`button turns on and off the device is wrong. ECF 257 at 8. Apple apparently believes that Firstface has
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`Case 3:18-cv-02245-JD Document 264 Filed 02/24/23 Page 10 of 20
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`waived any argument that the accused products practice the power button limitations under any
`construction. That is nonsensical. As Apple acknowledges in its own motion for summary judgment,
`Firstface’s infringement contentions state that the accused products have “a power button configured to
`turn the terminal on and off by pressing.” ECF 221 at 19. Those contentions point to the very same
`functionality that Dr. Almeroth identifies in his expert report. Apple does not argue otherwise. The
`Court should thus grant summary judgment on the power button limitations in Firstface’s favor.
`SUMMARY JUDGMENT REGARDING APPLE’S INVALIDITY POSITIONS
`II.
`In its motion, Firstface demonstrated why summary judgment is appropriate as to certain of
`Apple’s invalidity theories. Apple’s Opposition fails to overcome those arguments.
`First, summary judgment is appropriate as to Apple’s obviousness theories concerning the
`Motorola Atrix 4G. Apple raises four arguments, none of which have merit. Apple first alleges that its
`expert articulated obviousness theories in which references other than the Atrix 4G allegedly meet the
`“without additional user input” limitation. Those additional theories are not the subject of Firstface’s
`motion; Firstface only seeks summary judgment as to Apple’s theories in which Apple relies on the
`Atrix 4G as meeting the “without additional user input” limitations. Apple next alleges that the case law
`does not require any evidence of practicing a claimed method in order to invalidate a method claim
`through the sale of a device. Apple’s argument misrepresents both the case law and the evidence in this
`case; the fact is, only Apple’s expert and its counsel have demonstrated this uninstructed and unintended
`use of the Atrix 4G (and only years after Firstface’s invention date), and that is insufficient as a matter
`of law. Apple’s waiver argument likewise misrepresents the facts, as Firstface raised this issue during
`fact discovery and Apple never questioned it. And lastly, despite Apple’s efforts to misrepresent a
`Motorola witness’s testimony, there is no evidence that anyone ever used an Atrix 4G (or knew that the
`Atrix 4G could be used) in the manner Apple relies upon to allegedly satisfy the “without additional user
`input” limitations. Summary judgment is therefore appropriate as to these obviousness theories.
`Second, summary judgment is appropriate as to the Apple Fingerprint Prototype. Apple disputes
`that it has not identified who conceived of the Apple Fingerprint Prototype, but even in its Opposition it
`still cannot identify any inventor. While Apple points to witnesses it alleges were involved in the
`“development” of this prototype, such is insufficient as a matter of law. Apple also misinterprets case
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`PLAINTIFF’S REPLY IN SUPPORT OF
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`Case 3:18-cv-02245-JD Document 264 Filed 02/24/23 Page 11 of 20
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`law to attempt to skirt its obligation to show conception and reduction to practice (and diligence in that
`reduction) of the asserted claims. Apple’s misinterpretations and failures warrant summary judgment.
`Third, Apple alleges Firstface has not met its burden of demonstrating how IPR estoppel applies
`to Apple’s iPhone 3GS/4 invalidity theories when Apple relied on the User Guides for those devices in
`its IPR petitions and expert report. Firstface’s expert offered unrebutted testimony, based on Apple’s
`own expert’s analysis, of how the art Apple used in its petitions should subject Apple to IPR estoppel.
`The lone claim element Apple disputes is in fact disclosed in those guides.
`Finally, Apple freely admits that it has not pursued any lack of enablement defense in this case.
`Instead, Apple mischaracterizes Firstface’s expert’s testimony to conjure up a theory for that defense at
`the summary judgment stage. Apple fails to demonstrate how that testimony, even if correctly
`interpreted by Apple, allows it to sustain a lack of enablement defense disclosed for the first time in its
`response to Firstface’s Motion. The fact that Apple’s counsel would not answer Firstface’s inquiry as to
`what this theory was should tell the Court all it needs to know: Apple manufactured a new theory while
`preparing its Opposition, and its eleventh-hour argument cannot survive summary judgment.
`Apple’s Atrix 4G Invalidity Theories Fail as a Matter of Law.
`A.
`Apple has presented no evidence that the Atrix 4G was ever used in the manner Apple alleges
`meets the “without additional user input” limitations of the asserted claims. Mot. at 18-20.
`i. Apple misstates the scope of Firstface’s motion.
`Summary judgment is appropriate as to Apple’s obviousness theories in which Apple alleges the
`Atrix 4G meets the “without additional user input” limitations of the asserted claims because Apple has
`not shown that the Atrix 4G is prior art as to those elements. Mot. at 18-19. Despite that, Apple alleges
`Firstface failed to address its obviousness theories that combine the Atrix 4G with other art. Opp. at 11-
`13. At best, Apple misunderstands the basis for Firstface’s Motion. To the extent it was not already
`clear, Firstface clarifies that it seeks summary judgment as to theories that rely on the idea that the Atrix
`4G meets the “without additional user input” elements by Apple’s “single motion” theory.
`ii. Apple misstates case law and testimony to try to avoid summary judgment.
`Apple has offered no evidence that the Atrix 4G was designed or instructed to be used in the
`manner Apple and its expert allege meets the “without additional user input” limitations, which warrants
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`PLAINTIFF’S REPLY IN SUPPORT OF
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`Case 3:18-cv-02245-JD Document 264 Filed 02/24/23 Page 12 of 20
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`summary judgment. Mot. at 19-20. To attempt to avoid this, Apple mischaracterizes case law and the
`testimony of Mr. Corrigan. Because those arguments are incorrect, summary judgment is appropriate.
`Apple argues that Poly-America, L.P. v. GSE Lining Technology, Inc., 383 F.3d 1303 (Fed. Cir.
`2004) does not compel summary judgment. Opp. at 13-14. However, as Apple acknowledges, “[t]here,
`the Federal Circuit held that the prior art . . . was not ‘originally designed’ to perform the patented
`method, use of the product for that purpose ‘went against conventional wisdom,’ and ‘it was not even
`known that’ the product could perform the patented method.” Opp. at 14 (quoting Poly-Am., 383 F.3d at
`1308-09). There is no evidence that the Atrix 4G was “originally designed” to perform the method of the
`asserted claims. Nothing in the testimony Apple cites discuss the Atrix 4G being originally designed to
`operate that way. Rather, Mr. Corrigan’s testimony indicated that, under Apple’s “single motion” theory,
`“one physical hand motion . . . triggers two separate circuits” (ECF 257-12 at 66:17-18) and that the
`sample devices he had during his deposition “appear[ed] consistent” with devices Motorola sold in 2011
`(id. at 88:6-9). This testimony does not show that it was known (to him or anyone) in 2011 that the Atrix
`4G could be (much less was designed to be) operated in the manner Apple now argues.
`Moreover, Apple ignores that its “single motion” theory unquestionably “[goes] against
`conventional wisdom” about operating the Atrix 4G. Poly-Am., 383 F.3d at 1308-09. The Atrix 4G used
`a “swipe-style” fingerprint sensor, which requires a user to swipe his or her finger across the sensor.
`Mot. at 8. The “conventional wisdom” is that when waking up such a device, a user must both press the
`button and swipe his/her finger (i.e., an additional input besides pressing the button—and thus not
`“without additional user input” as claimed) to both wake up the device and capture a fingerprint to
`unlock the device. Apple’s attempt to shoehorn these two inputs into a “single motion” is not only a
`hindsight-based effort to attempt to read the device on the claims, but it does not negate the fact that
`those are separate inputs (a point Mr. Corrigan did not dispute, see ECF 257-12 at 65:25-66:18).
`iii. Firstface did not waive this argument.
`Apple also alleges that Firstface did not raise its argument about the Atrix 4G in response to
`Apple’s interrogatory seeking Firstface’s validity positions. Opp. at 14. But in the response Apple cites,
`Firstface stated, “Apple has not met its burden of establishing that the Motorola Atrix 4G is prior art to
`the Asserted Claims” and that “the Motorola Atrix 4G does not disclose [the “without additional user
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`PLAINTIFF’S REPLY IN SUPPORT OF
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`CASE NO: 3:18-CV-02245-JD
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`input” limitations]” but instead requires “multiple user inputs . . . , i.e., pressing the ‘Power & Sleep
`Key’ to ‘wake up the touchscreen’ and also swiping a finger across the fingerprint reader to attempt to
`unlock the Atrix 4G.” ECF 257-6 at 7-8. Moreover, Apple conveniently ignores that nowhe