Case 3:18-cv-02245-JD Document 269 Filed 02/24/23 Page 1 of 18
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`
`BITA RAHEBI (CA SBN 209351)
`brahebi@mofo.com
`ALEX S. YAP (CA SBN 241400)
`ayap@mofo.com
`NICHOLAS R. FUNG (CA SBN 312400)
`nfung@mofo.com
`MORRISON & FOERSTER LLP
`707 Wilshire Boulevard
`Los Angeles, California 90017-3543
`Telephone: (213) 892-5200
`Facsimile: (213) 892-5454
`
`RICHARD S.J. HUNG (CA SBN 197425)
`rhung@mofo.com
`SHAELYN K. DAWSON (CA SBN 288278)
`shaelyndawson@mofo.com
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105-2482
`Telephone: (415) 268-7000
`Facsimile: (415) 268-7522
`Attorneys for Defendant
`APPLE INC.
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`
`FIRSTFACE CO., LTD.,
`Plaintiff,
`
`v.
`APPLE INC.,
`
`
`
`
`Defendant.
`
`Case No. 3:18-cv-02245-JD
`DEFENDANT APPLE’S REPLY IN
`SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT
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`APPLE’S REPLY ISO ITS MOT. FOR SUMMARY JUDGMENT
`CASE NO. 3:18-CV-02245-JD
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`Case 3:18-cv-02245-JD Document 269 Filed 02/24/23 Page 2 of 18
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`TABLE OF CONTENTS
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`I. 
`II. 
`
`III. 
`
`2. 
`
`3. 
`
`2. 
`3. 
`4. 
`5. 
`
`Page
`INTRODUCTION ............................................................................................................... 1 
`ARGUMENT ....................................................................................................................... 2 
`A. 
`The Asserted Claims Lack Written Description Support ......................................... 2 
`Firstface’s Citations Do Not Support Performing Fingerprint
`1. 
`Authentication Without “Additional User Input” ........................................ 2 
`Firstface’s Reliance on Other Functions Reinforces Its Written Description
`Problem ........................................................................................................ 3 
`What the Inventors Silently Knew and Whether the Claims Were Allowed
`Do Not Show Possession ............................................................................. 4 
`Dr. Almeroth’s Opinions Do Not Cure the Lack of Written Description .... 4 
`4. 
`Dr. Cockburn’s Obviousness Opinions Do Not Conflict ............................. 6 
`5. 
`The Specification Does Not Disclose Further Turning on the Display ....... 6 
`6. 
`The Korean Application’s Priority Date Does Not Help Firstface .............. 7 
`7. 
`Firstface Cannot Recover for Pre-Suit Inducement ................................................. 8 
`The Accused Products Lack a “Power Button for Pressing to Turn On/Off the
`Terminal,” as All Asserted Claims Require ............................................................. 8 
`Pressing the “Top,” “Side,” or Sleep/wake” Button Undisputedly Is
`1. 
`Insufficient to Turn Off the Accused Products ............................................ 8 
`Firstface’s New “On or Off” Theory Should Be Stricken ........................... 9 
`Apple Did Not Waive Its Ensnarement Defense ........................................ 10 
`Firstface Never Carried Its Burden to Present a Hypothetical Claim ........ 11 
`Even if Firstface Could Allege Equivalents, No Genuine Issues of Material
`Fact Preclude Summary Judgment in Apple’s Favor ................................. 12 
`The Accused Products Do Not Satisfy the “Without Additional User Input” or
`“One-Time Pressing” Limitations. ......................................................................... 13 
`The Accused Products Undisputedly Require Both Touching with Human
`1. 
`Flesh and Pressing for Fingerprint Authentication. ................................... 13 
`Firstface’s Expert and Counterarguments Confirm Non-Infringement ..... 13 
`2. 
`Dr. Cockburn’s Opinions Do Not “Undermine” Non-Infringement .......... 13 
`3. 
`CONCLUSION .................................................................................................................. 14
`
`B. 
`C. 
`
`D. 
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`APPLE’S REPLY ISO ITS MOT. FOR SUMMARY JUDGMENT
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`Case 3:18-cv-02245-JD Document 269 Filed 02/24/23 Page 3 of 18
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`
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Apple Inc. v. Firstface Co., Ltd.,
`2021 WL 4156323 (Fed. Cir. Sept. 13, 2021) ........................................................................... 4
`
`Cellspin Soft, Inc. v. Fitbit, Inc.,
`2022 WL 2784467 (N.D. Cal. June 15, 2022) ...................................................................... 5, 8
`
`Golden Bridge Tech., Inc. v. Apple Inc.,
`758 F.3d 1362 (Fed. Cir. 2014) ................................................................................................. 5
`
`Jang v. Boston Sci. Corp.,
`872 F.3d 1275 (Fed. Cir. 2017) ............................................................................................... 11
`
`Lockwood v. Am. Airlines,
`107 F.3d 1565 (Fed. Cir. 1997) ............................................................................................. 3, 5
`
`Microsoft Corp. v. i4i Ltd. P’ship,
`131 S. Ct. 2238 (2011) .............................................................................................................. 8
`
`O2 Micro Int’l, Ltd. v. Monolithic Power Sys.,
`467 F.3d 1355 (Fed. Cir. 2006) ................................................................................................. 5
`
`Raytheon Co. v. Cray, Inc.,
`330 F.R.D. 525 (W.D. Wis. 2019) ............................................................................................ 8
`
`Rivera v. ITC,
`857 F.3d 1315 (Fed. Cir. 2017) ................................................................................................. 5
`
`Sonos, Inc. v. Google LLC,
`591 F. Supp. 3d 638 (N.D. Cal. 2022) ...................................................................................... 9
`
`Veloz v. Pac. Gas & Elec. Co.,
`2014 WL 1865786 (N.D. Cal. May 8, 2014) ............................................................................ 5
`
`ZapFraud, Inc. v. Barracuda Networks, Inc.,
`528 F. Supp. 3d 247 (D. Del. 2021) .......................................................................................... 9
`
`APPLE’S REPLY ISO ITS MOT. FOR SUMMARY JUDGMENT
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`Case 3:18-cv-02245-JD Document 269 Filed 02/24/23 Page 4 of 18
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`INTRODUCTION
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`
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`I.
`
`Firstface’s opposition confirms that summary judgment in Apple’s favor is proper.
`On written description, Firstface does not dispute its expert’s concession that “the
`specification does not explicitly state that fingerprint authentication is performed without
`additional user input.” (D.I. 221-8 (“Almeroth Reb. Rpt.”), ¶ 1154.) Although Firstface offers a
`hodge-podge of citations to try to avoid invalidity, only one discusses fingerprint authentication at
`all. None discloses activating the display and performing fingerprint authentication in response to
`a single button press without additional user input. At its core, Firstface’s position is that the
`skilled artisan would have found that functionality to be obvious—but that is legally insufficient.
`On infringement of the “power button” limitation, Firstface’s concessions also doom its
`infringement positions. Firstface openly admits that pressing the “top,” “side,” or “sleep/wake”
`button will not, in fact, power off the accused devices. Instead, the user must “press[] and hold[]
`the button and then slide a slider on the device touchscreen” to do so. (D.I. 255 (“Opp.”) at 3.)
`Apple thus does not literally infringe. Firstface’s belated attempt to construe “on/off” during
`expert discovery and its failure to conduct a hypothetical claim analysis also defeat its
`infringement position. Firstface’s construction for “on/off” as “on or off” further is wrong on the
`merits. As for equivalents, Firstface does not dispute its expert’s admission that pressing a button
`alone is “simpler and less cumbersome” than pressing and sliding. (Id. at 7.) Nor does Firstface
`dispute that pressing and sliding is a “substantially different way” of turning off a device.
`On infringement of the “without additional user input” limitation, Firstface’s expert’s
`concessions again are fatal. Although Firstface contends that it would be “nonsensical” to
`characterize a button press using a finger as two separate inputs, its source code expert Nigel
`Jones has admitted that the Accused Products operate in exactly this way: “Upon detection of a
`finger on the sensor following a button press, . . . an unlock sequence starts to ensure the
`fingerprint is properly matched.” (D.I. 221-6, ¶ 91 (emphasis added).) Because there are no
`genuine disputed facts as to how the Accused Products operate, Apple is entitled to summary
`judgment of non-infringement for this reason as well.
`Finally, on indirect infringement, Firstface effectively concedes that Apple lacked pre-suit
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`knowledge of the patents, as it has agreed to forego claims for pre-suit damages. Apple therefore
`requests summary judgment of no indirect infringement as to at least pre-suit inducement.
`II.
`ARGUMENT
`A.
`The Asserted Claims Lack Written Description Support
`Firstface overcame Apple’s IPR challenges to the few surviving claims based on the
`“without additional user input” limitation. But Firstface first added that limitation in 2015, three
`years after the alleged priority date. It therefore struggles to identify specification support for this
`limitation. That lack of support renders the patents invalid.
`
`1.
`
`Firstface’s Citations Do Not Support Performing Fingerprint
`Authentication Without “Additional User Input”
`Both experts agree that the specification does not expressly refer to performing any
`function—whether fingerprint authentication or otherwise—“without additional user input.” (D.I.
`221-28 (“Cockburn Op. Rpt.”), ¶¶ 3003, 3004; D.I. 221-8, ¶ 1152.) Lacking such an express
`disclosure, Firstface offers a mish-mash of citations to try to save its claims. (Opp. at 13-14.)
`None of those citations helps Firstface. Only one refers to “fingerprint recognition”—as
`part of a long list of authentication methods. (D.I. 221-22 (“’373 patent”), 8:13-20). As for its
`other citations (4:36-40; 4:51-53; 4:61-65; 4:65-5:2; 5:52-55; 7:16-17; 8:7-12), all at most
`describe pressing a button to perform a function. (Opp. at 13-14.). None discusses performing a
`function, much less fingerprint authentication, without additional user input.
`To evade summary judgment, Firstface newly argues that the specification describes
`“benefits of performing the functions in response to a one-time press of the activation button.”
`(Opp. at 14 (citing ’373 patent, 1:34-41; 9:29-33; 11:61-65; 12:4-7).) As an initial matter,
`Firstface did not disclose this argument or the allegedly supportive citations in related
`interrogatory responses or in its expert’s report. Firstface therefore has waived this argument.
`See Apple, Inc. v. Samsung Elecs. Co., No. 11-cv-1846, 2012 WL 3155574, at *7 (N.D. Cal. Aug.
`2, 2012) (barring reliance on theories not disclosed in interrogatory responses).
`But even if otherwise, the referenced “benefits” are agnostic as to whether fingerprint
`authentication is performed with additional user input. For example, whether a manufacturer
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`adds or does not add a separate button to support a generic function (’373 patent, 1:34-41) is
`independent of how many times that button is pressed, or whether performing that function
`requires an input besides a press. Likewise, whether one desires to “significantly reduce traffic
`accident risks” (9:29-33) via a “voice communication function, a short message service SMS)
`function, [or] an Internet function” (9:22-28) does not inform which inputs the separate
`fingerprint authentication function requires. The same is true of the specification’s generic
`discussion of “enabl[ing] an advantageous function to be utilized and improv[ing] an interest of a
`terminal user” (11:61-65) and “enhanc[ing]” security using “a simple procedure” (12:4-7).
`As Apple explained in its opening papers (D.I. 221 (“Mot.”) at 10), the Federal Circuit has
`recognized that the specification provides scant support for the fingerprint authentication
`limitation: “Indeed, Firstface’s response cites only a bare listing of authentication methods
`without identifying an example in which pressing a button both activates a display and
`authenticates a user’s fingerprint.” Apple Inc. v. Firstface Co., Nos. 2021-1001, -1002, 2021 WL
`4156323, at *2 (Fed. Cir. Sept. 13, 2021). Although Firstface accuses Apple of being “wrong”
`and “misus[ing]” the Federal Circuit’s observation (Opp. at 15), Apple is not: Apple quotes the
`Federal Circuit directly. See also id. (noting “potential § 112 written description problem”).
`
`2.
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`Firstface’s Reliance on Other Functions Reinforces Its Written
`Description Problem
`To drum up written description support, Firstface points to the specification’s discussions
`of unrelated functions (e.g., camera and health-sensing features). (Opp. at 16-17.) Whether these
`unrelated functions require additional user input besides one-time pressing is irrelevant to
`whether fingerprint authentication is performed without additional user input.
`Although Firstface takes great care to avoid using the word “obviousness,” that is
`essentially what it is arguing—that performing fingerprint authentication without additional user
`input besides pressing the activation button would have been obvious, as one can perform other
`disclosed functions in that manner. This, of course, is insufficient. Under well-established law,
`“[o]ne shows that one is ‘in possession’ of the invention by describing the invention, with all its
`claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines, 107 F.3d 1565,
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`1572 (Fed. Cir. 1997); accord Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013,
`1016 (“It is not enough that a claimed invention is ‘an obvious variant of that which is disclosed
`in the specification.’”).
`Although Firstface cites Ariad Pharms. Inc. v. Eli Lilly & Co. for the proposition that the
`“specification need not ‘recite the claimed invention in haec verba’” (Opp. at 15), Firstface omits
`the very next clause: “a description that merely renders the invention obvious does not satisfy the
`[written description] requirement.” 598 F.3d 1336, 1352 (Fed. Cir. 2010) (citing Lockwood).
`Again, the alleged obviousness of performing fingerprint authentication without additional user
`input is not enough to save Firstface’s claims.
`
`3. What the Inventors Silently Knew and Whether the Claims Were
`Allowed Do Not Show Possession
`Straining to support its written description positions, Firstface alleges that Apple does not
`“dispute that the inventors possessed inventions using” “a number of authentication methods.”
`That is both wrong and beside the point.
`Apple does dispute whether the inventors possessed performing fingerprint authentication
`“without additional user input” as of the claimed priority date. This is particularly as the
`specification never refers to this, and the limitation was added to the claims three years later.
`Regardless, the test is not whether the inventors subjectively possessed the claimed invention, but
`whether the specification “reasonably convey[s] to those skilled in the art that the inventor had
`possession of the claimed subject matter as of the filing date.” Novartis, 38 F.4th at 1016-17. The
`specification does not do this.
`As another throwaway argument, Firstface alleges that the Patent Office’s failure to reject
`the claims on written description grounds “undermines” Apple’s lack of written description
`positions here. (Opp. at 20.) This argument is facially implausible; if the law were so, one could
`never successfully challenge validity post-issuance.
`4.
`Dr. Almeroth’s Opinions Do Not Cure the Lack of Written Description
`Dr. Almeroth’s conclusory opinions that the specification provides adequate written
`description for the “without additional user input” limitation do not preclude summary judgment.
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`The law is clear that possession “must be shown in the disclosure,” not proven via conclusory
`after-the-fact testimony. Novartis, 38 F.4th at 1016; accord Zoho Corp. v. Sentius Int’l LLC, 494
`F. Supp. 3d 693 (N.D. Cal. 2020) (expert testimony cannot overcome insufficient specification
`support); Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 919-29 (Fed. Cir. 2004) (same).
`Even if Firstface could defeat summary judgment using Dr. Almeroth’s opinions, he does
`not explain how or why a POSITA would understand that the inventors possessed performing
`fingerprint authentication in response to a one-time pressing of the activation button without
`additional user input. Dr. Almeroth merely quotes passages from the specification as allegedly
`“repeatedly describ[ing] functions being performed solely in response to a press of the activation
`button.” He then summarily opines, “[b]ased on th[ese] disclosures, [that] a POSITA would
`understand that the inventors possessed performing an operation, including fingerprint
`authentication, in response to a press of the activation button without additional user input.”
`(Almeroth Reb. Rpt., ¶ 1152.) This is insufficient, as he supports his position with no analysis.
`See SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1210 (Fed. Cir. 2013) (critiquing expert for
`not explaining “how” POSITA would arrive at alleged understanding).
`That Dr. Almeroth offered his conclusory opinions via report, rather than in response to
`leading questions, does not distinguish SkinMedica. (Opp. at 17.) Nor can Firstface distinguish
`Apple’s other cases by characterizing Dr. Almeroth’s opinions as “bolstered by ample analysis,”
`when that is untrue. (Id.) Firstface points to five paragraphs in his report (Almeroth Reb. Rpt., ¶¶
`1149-1153, 1155) that merely quote from the specification and then state the ultimate conclusion.
`(See, e.g., ¶ 1155 (“[T]he specifications reasonably convey to a POSITA that the inventors
`possessed performing fingerprint authentication in response to a press of the activation button
`without additional user input.”).) Firstface fails to point to anything in his report explaining why
`that ultimate conclusion is correct. It cannot do so, and therefore it cannot succeed.
`Finally, Firstface accuses Apple of mischaracterizing Dr. Almeroth’s positions on written
`description and non-obviousness, but the record is clear. (Opp. 18-19.) The prior art (including
`that to AuthenTec, now owned by Apple) amply described the operation of fingerprint sensors.
`Nevertheless, Dr. Almeroth has contended that the skilled artisan would have faced an
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`“insurmountable” task and required a “fair amount of experimentation” to implement the claimed
`fingerprint authentication feature using the prior art. (D.I. 221-24, 150:14-17, 153:4-7.)
`Despite that extreme position, Dr. Almeroth incongruously opines that the specification would
`have “reasonably conveyed” the inventors’ possession of fingerprint authentication in response to
`a button press without additional user input, even though the specification mentions “fingerprint
`authentication” only once. (Cockburn Op. Rpt., ¶ 3004; Almeroth Reb. Rpt., ¶ 1152.)
`Firstface and Dr. Almeroth cannot have it both ways. If true, as Dr. Almeroth alleges, that
`the skilled artisan could not have created the claimed inventions despite the rich available prior
`art, that same artisan would not have determined that Firstface’s inventors possessed fingerprint
`authentication without additional user input based on the specification’s scant disclosures.
`5.
`Dr. Cockburn’s Obviousness Opinions Do Not Conflict
`Dr. Cockburn’s opinions that the prior art’s expansive disclosures of fingerprint
`authentication invalidates the “without additional user input” limitation do not “undermine”
`Apple’s written description arguments. (Opp. at 20.) Obviousness and written description are
`two different standards. One standard allows consideration of obviousness, the other does not.
`Dr. Cockburn’s opinions as to the Bandyopadhyay, Fadell, Lemke, and Kodama references relate
`to obviousness. When it comes to written description, whether a limitation would have been
`obvious in view of the specification does not satisfy that requirement. See Rivera v. ITC, 857
`F.3d 1315, 1322 (Fed. Cir. 2017) (“The knowledge of ordinary artisans may be used to inform
`what is actually in the specification . . . but not to teach limitations that are not in the
`specification, even if those limitations would be rendered obvious by the disclosure in the
`specification”); Lockwood, 107 F.3d at 1571-72. Thus, Dr. Cockburn’s opinions on obviousness
`cannot rescue Firstface from its written description problem. See Rivera, 857 F.3d at 1322.
`6.
`The Specification Does Not Disclose Further Turning on the Display
`As the specification does not disclose performing fingerprint authentication without
`additional user input besides pressing the activation button, it also does not disclose activating the
`display when doing so. (See, e.g., ’373 patent, cl. 11 (“in response to the one-time pressing,
`[also] changing the terminal from the inactive state to the active state”).)
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`Firstface’s limited citations do not show otherwise. (Opp. at 19 (citing ’373 patent, 3:34-
`36, 4:36-39, 7:15-17). Drawn from three separate columns, these excerpts explain that the user
`can press the activation button to turn the display on (3:34-36), can perform a “predetermined
`operation” when switching to the active state (4:36-39), and can perform a “user authentication
`process . . . for security” by pressing that button (7:15-17). They do not refer to “fingerprint
`authentication” at all, much less to performing fingerprint authentication without additional user
`input and turning on the display in response to the one-time pressing of the activation button.1
`Like its arguments for the “without additional user input” limitation, Firstface’s position
`essentially is that performing fingerprint authentication without additional user input and
`simultaneously activating the display would have been obvious. That position is legally
`untenable because a limitation’s obviousness cannot satisfy the written description requirement.
`See Lockwood, 107 F.3d at 1572 (“One shows that one is ‘in possession’ of the invention by
`describing the invention, with all its claimed limitations, not that which makes it obvious.”).
`Again, obviousness and written description are two different standards and Firstface cannot use
`one standard to satisfy another.
`Firstface’s allegation that Apple has somehow waived this written description ground is
`untenable. Apple specifically raised this ground in its invalidity contentions. (Fung Reply Decl.,
`Ex. 1 at 44-45 (referring to failure to disclose, “upon one-time pressing of the activation button
`while the touch screen display is turned off, . . . turn[ing] on the touch screen display and further
`perform[ing] at least one of the first and second functions”).) Those same contentions cited the
`Federal Circuit’s observation that the specification “does not describe a single user input that both
`presses the activation button and scans a fingerprint” and Firstface’s failure to “identify[] an
`example in which pressing a button both activates a display and authenticates a user’s
`fingerprint.” (Id. at 46.) Firstface’s waiver allegation thus lacks merit.
`7.
`The Korean Application’s Priority Date Does Not Help Firstface
`Firstface suggests that the U.S. application’s claim of priority to an earlier-filed Korean
`
`1 The cited paragraph from Dr. Almeroth’s report also cannot support Firstface’s written
`description position, as it does not discuss turning on the display. (Opp. at 19 (citing Almeroth
`Reb. Rpt. ¶ 1154).)
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`application somehow helps its written description position. Not so.
`As a preliminary matter, under Droplets, Inc. v. E*TRADE Bank, the Korean application
`cannot provide written description support for the U.S. applications. 887 F.3d 1309, 1319 (Fed.
`Cir. 2018). (See Mot. at 9-10.) And Firstface concedes that its expert’s validity report “does not
`even reference the Korean application” for the “‘without additional user input’ limitations.”
`(Opp. at 16 (citing D.I. 221-8, ¶¶ 1145-1156).) Based on Firstface’s and its expert’s positions, the
`Korean application’s alleged disclosures cannot help Firstface.2 See Raytheon Co. v. Cray, Inc.,
`330 F.R.D. 525, 542 (W.D. Wis. 2019) (arguments undisclosed in expert report waived).
`Even assuming otherwise, Firstface’s and its expert’s position is that the relevant
`disclosures in the Korean and U.S. applications are “identical.” (Id. at 21 (also contending that
`“the same language in the Korean application . . . provides written description support”).) But
`Apple already explained that the U.S. patents lack adequate written description for the “without
`additional user input” limitation. If true, the allegedly “identical” disclosures in Firstface’s
`Korean application also must fail. (See also D.I. 221-26, 196:12-14 (explaining that Korean
`application “lacks written description . . . in [a] very similar way to the ’419 and ’373 patents”).)
`Stated otherwise, the written description deficiencies in Firstface’s U.S. patents apply equally to
`its Korean application, and summary judgment of no written description is appropriate.
`B.
`Firstface Cannot Recover for Pre-Suit Inducement
`Firstface effectively concedes that Apple lacked pre-suit knowledge of the patents, as it
`newly agrees not to seek pre-suit damages for induced infringement. (Opp. at 22.) The Court
`therefore should, at minimum, grant summary judgment of no pre-suit indirect infringement.
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`C.
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`The Accused Products Lack a “Power Button for Pressing to Turn On/Off the
`Terminal,” as All Asserted Claims Require
`1.
`Pressing the “Top,” “Side,” or Sleep/wake” Button Undisputedly Is
`Insufficient to Turn Off the Accused Products
`Firstface does not dispute that pressing the “top,” “side,” or “sleep/wake” button will not
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`2 Firstface implicitly acknowledges this waiver. When alleging that Dr. Almeroth “demonstrated
`. . . how all of the elements of the asserted claims (including the “without additional user input”
`limitations) are adequately described in the Korean application,” Firstface cites only to his
`infringement report. (Opp. at 21 (referring to Exs. 2, 9).)
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`turn the Accused Products off. (Mot. at 17-18.) To the contrary, Firstface concedes that the user
`must “press[] and hold[] the button and then slide[] a slider on the device touchscreen” to do so.
`(Opp. at 3.) As there is no genuine factual dispute as to whether the Accused Products satisfy the
`“On/Off” limitation, the Court should enter judgment of no literal infringement.
`2.
`Firstface’s New “On or Off” Theory Should Be Stricken
`As Apple explained in its opening papers, Firstface’s contentions uniformly alleged that
`the Accused Products infringe because they had “a power button configured to turn the terminal
`on and off by pressing.” (Mot. at 19.) Firstface’s contention that the Accused Products infringe
`because their accused “power buttons” turn the devices on or off therefore is new.
`Firstface characterizes Apple’s arguments regarding the newness of its infringement
`theory as “baseless” (Opp. at 6), but it cannot identify where it disclosed its “on or off” theory in
`its infringement contentions, its claim construction briefing, or its multiple amendments to its
`infringement contentions. Nor does Firstface dispute that it raised this theory for the first time in
`Dr. Almeroth’s infringement report. (Mot. at 19.)
`Although Firstface alleges that it has “always” asserted the same “functionality . . . of
`meeting[ing] the power button limitations” (Opp. at 6), that functionality has “always” included
`“turn[ing] off [the Accused Devices] by pressing the button, holding it down[,] . . . and dragging
`the slider that appears.” (Id.) Firstface has never accused turning on the Accused Devices alone
`of satisfying the “power button” limitation. Firstface’s failure to timely disclose its new “on or
`off” literal infringement theory warrants its preclusion and the entry of summary judgment in
`Apple’s favor. See Finjan, inc. v. Cisco Sys., Inc., No. 17-cv-72, 2019 WL 6174936, at *2 (N.D.
`Cal. Nov. 20, 2019 (party “may not use an expert report to introduce new infringement theories”).
`Were the Court inclined to consider Firstface’s new theory, summary judgment of no
`literal infringement in Apple’s favor would still be proper. Firstface’s new theory depends on
`interpreting “on/off” as “on or off.” As Apple has explained in its opening brief and its
`opposition to Firstface’s summary judgment motion, however, “on/off” means “on and off.”
`(Mot. at 19-20; D.I. 257 at 3-10.) Firstface’s contention that Apple is judicially estopped from
`arguing that the Accused Products do not satisfy the “On/Off” limitations is wrong for the reasons
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`that Apple set forth in its opposition to Firstface’s summary judgment motion. (D.I. 257 at 8-10.)
`3.
`Apple Did Not Waive Its Ensnarement Defense
`In its opening brief, Apple explained that it had raised an ensnarement defense, but
`Firstface had never proposed a hypothetical claim as required. Summary judgment in Apple’s
`favor of no infringement by equivalents therefore is proper.
`Contrary to Firstface’s allegations, Apple did not waive its ensnarement defense. Apple
`pled ensnarement in its Answer (D.I. 78 at 5), presented detailed invalidity contentions explaining
`how the asserted claims are invalid in view of the prior art, and presented an expert report from
`Dr. Cockburn detailing how Firstface’s equivalents allegations as to the “On/Off” limitation
`ensnared the prior art (Cockb