UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner
`_______________
`
`Case: IPR2020-00199
`
`U.S. Patent No. 6,329,794
`_______________
`
`
`
`
`
`PATENT OWNER SUR-REPLY TO PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 6,329,794
`
`
`
`
`
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`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner
`_______________
`
`Case: IPR2020-00199
`
`U.S. Patent No. 6,329,794
`_______________
`
`
`
`
`
`PATENT OWNER SUR-REPLY TO PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 6,329,794
`
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`Case IPR2020-00199
`Patent No. 6,329,794
`Patent Owner Sur-Reply
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`PATENT OWNER’S EXHIBIT LIST
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`
`
`Description
`Letter from Maxell to Apple dated May 17, 2018
`Apple Preliminary Election of Art
`Apple invalidity contention cover document
`Hikishima Claim Chart from District Court Action
`March 16, 2020 Scheduling Order from District Court Action
`May 31, 2019 Scheduling Order from District Court Action
`Letter from Maxell to Apple dated October 9, 2018
`’241 IPR Preliminary Response
`’241 IPR Institution Decision
`March 6, 2017 Scheduling Order from Maxell v. ZTE
`March 19, 2018 Scheduling Order from Maxell v. ZTE
`Docket from District Court Action
`January 8, 2020 Minute Order from District Court Action
`August 28, 2019 Minute Order from District Court Action
`September 18, 2019 Minute Order from District Court Action
`April 20, 2020 Scheduling Order from District Court Action
`Declaration of Tiffany A. Miller
`Maxell Final Election of Asserted Claims
`Togoshi Chart from District Court Action
`Standing Order re COVID-19
`Transcript of September 18, 2020 Deposition of Louis Hruska
`Appendix F from Opening Report of Dr. Daniel A. Menascé
`Regarding U.S. Patent No. 6,329,794
`Declaration of Michael C. Brogioli, Ph.D.
`
`
`Exhibit #
`2001
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
`2019
`2020
`2021
`2022
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`2023
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`
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`ii
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION .......................................................................................... 1
`I.
`POWER CONSUMPTION REDUCTION INSTRUCTION ........................ 2
`II.
`III. HIKISHIMA FAILS TO DISCLOSE OR SUGGEST A POWER
`CONSUMPTION REDUCTION INSTRUCTION AS CLAIMED IN
`CLAIMS 1 AND 9........................................................................................ 20
`IV. HIKISHIMA FAILS TO DISCLOSE CLAIMS 2 AND 3 .......................... 24
`V. HIKISHIMA AND TAGOSHI FAIL TO DISCLOSE CLAIMS 8 &
`14 .................................................................................................................. 25
`VI. CONCLUSION ............................................................................................. 27
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`I.
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`
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`INTRODUCTION
`A power consumption reduction instruction is disclosed broadly in the ’794
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`Patent, but a switch signal is not encompassed within the meaning of the
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`instruction. Power cutoff to the function devices—if it occurs—is accomplished as
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`disclosed and claimed by the changeover controllers. The claimed power
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`consumption reduction instruction is just that: an instruction. An instruction may
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`instruct a device to stop operations, reduce operating speed, and/or otherwise
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`prepare for power supply cutoff. The intrinsic record makes this clear, and the
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`challenged claims make clear that a switch or changeover controller is distinct
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`from a power consumption reduction instruction. Thus, it is Apple, not Maxell,
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`attempting to import limitations into the claims and ascribe functionality to the
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`instruction that is not supported by the intrinsic record. Apple’s purpose in doing
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`so is obvious: to manufacture a power consumption reduction instruction in
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`Hikishima where none exists.
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`Hikishima’s switch signal is not an instruction to stop operations, reduce
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`operating speed, and/or otherwise prepare for power supply cutoff. Indeed,
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`Hikishima discloses no instruction at all. An instruction precedes an event, such as
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`stopping operations, reducing operating speed, or preparing for power cutoff.
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`Hikishima skips any issuance of an instruction to function devices and simply cuts
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`off the power via a switch, similar to the changeover controllers disclosed in the
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`
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`’794 Patent. What is critically missing from Hikishima is the instruction preceding
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`the event—the claimed power consumption reduction instruction. Absent such an
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`instruction in Hikishima, Apple cannot show that the challenged claims are
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`unpatentable.
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`The Board should confirm the patentability of all the challenged claims.
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`II.
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`POWER CONSUMPTION REDUCTION INSTRUCTION
`Maxell’s construction of the claimed “power consumption reduction
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`instruction” is consistent with the intrinsic record. Apple tries to contort
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`Hikishima’s switch signal into a power consumption reduction instruction. The
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`power consumption reduction instruction has many applications, but it is clear
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`from the intrinsic record that opening a switch to cut off power to a device is not
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`the same as sending it a power consumption reduction instruction.
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`In its reply, Apple continues to employ imprecise language to transform
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`Hikishima’s switch signal into a power consumption reduction instruction. Paper
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`22 at 2. For example, Apple states “Maxell asserts the power consumption
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`reduction instruction encompasses1 (1) stopping operations; (2) reducing operating
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`speed; and/or (3) preparing for power supply cutoff, but the instruction cannot
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`1 All emphases added unless otherwise noted.
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`encompass cutting off the power supply by a switch.” Id. Apple’s purposeful and
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`
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`imprecise use of “encompasses” gets to the heart of the matter. The ’794 Patent’s
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`power consumption reduction instruction does not “encompass” any of the litany
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`of items Apple lists. Rather, as Maxell argues consistent with the intrinsic record
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`(see, e.g., Paper 17 at 15-31), the power consumption reduction instruction is “an
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`instruction to stop operations, reduce operating speed, and/or otherwise prepare for
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`power supply cutoff.” Paper 17 at 15. In the ’794 Patent and claims, actual power
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`supply cutoff is performed (if at all) by a switch, and occurs after the controller
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`sends the power consumption reduction instruction to the function device. Ex.
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`2023, ¶¶ 43-45. Put another way, issuance of the instruction from the controller
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`precedes performance of power reduction operations by the function device, such
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`as stopping operations or reducing operating speed, as well as power supply cutoff
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`(to the extent it occurs). Ex. 1001, at 7:4-7 (“The function device 1 receives the
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`power consumption reduction instruction and performs power consumption
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`reduction operations such as stopping operations or reducing operating speed.”);
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`see also id., Claim 1 (“a controller for controlling operation of said function
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`devices based on said remaining capacity….”) and Claim 3 (“a changeover device
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`capable of cutting off power to part or all of at least one function device…”). The
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`’794 Patent clearly distinguishes between power consumption reduction
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`instructions and any subsequent power consumption reduction operations. Id.
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`
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`A. The Power Consumption Reduction Instruction is Separate From
`and Precedes Any Operation Such as the Act of Power Cutoff
`Apple’s argument that “the objective of the instruction is cutting off the
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`power supply” is simply not true. Paper 22 at 3. The ’794 Patent is not so limited.
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`The objective of the instruction is instruction of the function devices.2 See, e.g., Ex.
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`1001, 7:3-8; 8:30-10:25. Again, evidence from the intrinsic record confirms that
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`the power consumption reduction instruction is separate from and precedes the act
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`of power cutoff—if such cutoff occurs at all—and demonstrates exemplary
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`purposes of the instruction. The ’794 Patent specification does not equate the act of
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`cutting off power to a “power consumption reduction instruction.” Apple tacitly
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`acknowledges the instruction must precede the act, and that power cutoff is not
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`necessarily the result of the act. Paper 22 at 4 (“All of the embodiments (except
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`arguably the Figs. 6-7 embodiment), send a power consumption reduction
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`instruction that initiates a series of steps culminating in cutting off the power
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`supply to the function devices.”)
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`2 For ease of reference “function device” used herein references the “function
`devices” of claim 1 and the “component devices” of Claim 9.
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`1.
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`The Intrinsic Record Is Clear That An Instruction Precedes
`An Operation.
`The claims, specification, and figures are all clear that the power
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`consumption reduction instruction is sent by the controller to the function device
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`and that only as a result of the instruction are power consumption reduction
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`operations performed:
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`In the present invention, a power supply circuitry includes a capacity
`detector detecting a remaining capacity of a battery and a controller
`issuing power consumption reduction instructions to independently
`operable function devices based on their priority levels. As a result,
`power consumption reduction operations are possible such as
`stopping function devices with low priorities first based on the
`remaining capacity in the battery.
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`Ex. 1001 at 1:55-62; see also 3:35-38, 4:57-60, and Figs. 1-3, 6, 10, 11. With
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`respect to what constitutes the power consumption reduction instruction, the
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`specification provides several examples, none of which include cutting off a power
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`supply by opening a switch.
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`In the Figure 5 embodiment, the power consumption reduction instruction is
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`an instruction indicating to the function device that the power supply will soon be
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`cut off, i.e., the instruction precedes an act:
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`In this embodiment, a power consumption reduction instruction is
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`assumed to mean cutoff from the power supply. Thus, in the
`following description
`the power
`consumption
`reduction
`instruction will be referred to as a power supply cutoff warning.
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`Ex. 1001 at 4:52-56. This instruction allows the function device to prepare for its
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`eventual cutoff from the power supply:
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`The function device 1 receives the power supply cutoff warning from
`the controller 108 and puts the function device 1 in a state where a
`cutoff from the power supply will not lead to problems.
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`Id. at 4:57-60. See also Ex. 2023, at ¶41. It is clear from the intrinsic record that it
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`is not the instruction that cuts off power, but rather power supply cutoff is
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`performed by the changeover controller:
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`The power supply section 101 includes…a changeover controller A
`104 capable of switching between activation and stopping of power
`to a function device 1 and a function device 2; a changeover
`controller B 105 capable of switching between activation and
`stopping of power to the function device 1….
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`Ex. 1001 at 3:25-34. See also Ex. 2023, at ¶¶ 43-45. Indeed, in the context of the
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`Figure 5 embodiment, after the reception of the power consumption reduction
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`instruction, “the function device 1 sends the controller 108 a power consumption
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`reduction completion notification.” Ex. 1001, at 4:60-62. It is clear from the
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`specification that such a power consumption reduction completion notification
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`could not be sent to the controller if power to the function device had already been
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`cut off by a switch. This evidence further confirms the proper construction of the
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`power consumption reduction instruction, and is consistent with the invention
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`disclosed in the ’794 Patent by ensuring that information processing devices power
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`down function devices in a controlled manner to ensure that they are operable for
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`future use. Ex. 2023 at ¶ 61.
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`The ’794 Patent discloses that the controller may issue a power consumption
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`reduction instruction to a function device to allow it to put itself “in a state where a
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`cutoff from the power supply will not lead to problems.” Ex. 1001 at 4:57-60; Ex.
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`2023, at ¶¶ 63-64. For example, the power consumption reduction instruction may
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`consist of a “power supply cutoff warning” (4:60-62), an instruction to “stop
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`operation” (Claims 2 and 10), and/or an instruction to “reduc[e] operating speed”
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`(7:4-7). After receiving the power consumption reduction instruction and readying
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`itself for power supply cutoff, the controller may cut off the power supplied to the
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`function device using a changeover controller (e.g., a switch). Id. 4:57-5:2; Ex.
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`2023, at ¶¶ 67-69.
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`B. Apple’s Attempt To Conflate The Power Consumption Reduction
`Instruction With The Act Of Cutting Off Power Should Be
`Rejected
`Apple attempts to conflate two distinct processes: (1) the instruction that
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`precedes possible power supply cutoff, and (2) subsequent power supply cutoff.
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`Paper 22 at 4. Apple’s argument that sending a power consumption reduction
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`instruction means the power supply is cutoff is wrong. Id. at 5. Apple’s argument
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`that “the instruction also serves as a warning that power supply cutoff is to occur
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`via the instruction” is also wrong. Id. Power supply cutoff does not occur via the
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`instruction; it occurs, if at all, via the changeover controller. See, e.g., Ex. 1001,
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`at 4:65-5:2 (“The controller 108 checks for a power supply cutoff permission
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`notification from the function device 1 (110) at operation 504. Once this
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`notification is issued, the changeover controller B (105) cuts off power at
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`operation 505.”)
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`1.
`Apple Ignores the Intrinsic Evidence
`Apple ignores the evidence from the intrinsic record set forth above that
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`power supply cutoff occurs (if at all) only after the controller sends the power
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`consumption reduction instruction to the function device. It also ignores the
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`figures of the ’794 Patent, which depict these two distinct processes, namely,
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`distinct components and signal paths for issuing the instruction and cutting off
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`power. This can be seen particularly by examining the Figures of the ’794 Patent.
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`For example, Figs. 1, 10, and 11 depict changeover controllers for cutting off
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`power, and separate paths for issuance of the power consumption reduction
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`instructions:
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`Id. at Figs. 1, 10, and 11; see also Ex. 2023, at ¶¶ 64-65. Figures 2 and 3 depict
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`distinct power and signal lines between the power supply circuit and the function
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`devices. See Ex. 2021, at 31:15-17 (Mr. Hruska distinguishing “heavier” line as
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`relating to the supply of power). Consistent among all of the embodiments are the
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`distinct components and signal paths for issuing the power consumption reduction
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`instruction and the operation of cutting off power. Thus, the actual power supply
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`cutoff is performed by a switch (changeover controller), and occurs after the
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`controller sends the power consumption reduction instruction to the function
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`device, if at all. Ex. 2023, at ¶¶ 43-45. Apple’s expert Mr. Hruska conceded that
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`the only function of the changeover controller was to act as a switch for power.
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`Ex. 2021, at 33:9-17; see also id. at 36:16-37:2 (“I see the power lines as going
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`through the changeover controllers, and I don’t see the line going from the
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`controller directly to the function device impacting those power lines. So I don’t
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`think there’s any way it would be a power consumption reduction instruction.”)
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`Thus,
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`the changeover controller (switch) cannot also provide a power
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`consumption reduction instruction.
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`2.
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`Apple Focuses On Certain Embodiments To The Exclusion
`Of Others
`Apple makes much of the disclosure referencing a power consumption
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`
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`reduction instruction as “assumed to mean cutoff from the power supply.” Paper
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`22 at 6. Apple further attempts to distinguish between the specification’s use of
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`“power supply cutoff warning” and “power consumption reduction instruction,”
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`arguing that the former is used in “all but the Figs. 6-7 embodiment,” and the
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`latter is used in the Figs. 6-7 embodiment. Id. To be sure, both phrases are used
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`throughout the specification, and the term “power supply cutoff warning” is also
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`used in the Figs. 6-7 embodiment, even though it is clear (and acknowledged by
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`Apple) that the embodiment is directed to “power consumption reduction
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`operations such as stopping operations or reducing operating speed.” Ex. 1001,
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`7:4-7; Figs 6-7. In fact, Figure 6 depicts signal lines between the controller and the
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`function devices—for power consumption reduction instructions—but nothing for
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`changeover/switching functionality. Power lines are only depicted between the
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`function devices and power stabilizer/charging controller 103:
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`Regardless, whether referred to as a “power consumption reduction
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`instruction” or a “power supply cutoff warning,” a POSITA would recognize the
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`claimed power consumption reduction instruction as a condition precedent to the
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`changeover controller cutting off power, or to the function device stopping
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`operations or reducing speed. Ex. 2023, ¶¶42-43.
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`In the context of the Fig. 5 embodiment, it is only after the “controller 108
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`checks for a power supply cutoff permission notification from the function device
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`1 (110) at operation 504,” that the process flow proceeds in cutting off the power
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`supply to the function device. Ex. 2023, ¶43; Ex. 1001 at 4:65-68. In fact,
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`a function device that has been sent a power consumption reduction
`instruction may elect to cease its intended function, but still remain
`active in one of many states such as a low-power state, or non-
`functional but online from a power consumption standpoint. Such a
`state allows much more robust functionality of the function device,
`such as the ability to enter varying states of power consumption, as
`well as reporting and collecting of various metrics to be used within
`the system such as diagnostic and monitoring information. In addition,
`the ability to take such a function device from a low- power state, and
`back to a higher power consumption state is desirable from a system
`design standpoint.
`Ex. 2023, ¶ 53; see also id., ¶¶51-52. The objective of the instruction is instruction
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`of the function devices. See, e.g., Ex. 1001, 8:30-10:25. As such, and consistent
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`with the specification, the phrase “power consumption reduction instruction”
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`should be construed to mean “an instruction to stop operations, reduce operating
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`
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`speed, and/or otherwise prepare for power supply cutoff” and should exclude the
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`act of power supply cutoff by way of a switch. Paper 17, at 15-27; Ex. 2023, ¶¶54-
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`55.
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`3.
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`There Is No Evidence That Cutting Off Power To A
`Function Device Inherently Provides A Warning To A
`Function Device
`Apple attempts to reconcile the statement in the Figure 5 embodiment that
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`the power consumption reduction instruction “is assumed to mean cutoff from the
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`power supply” and, according to Apple, “because there is power supply cutoff, the
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`power consumption reduction instruction is a power supply cutoff warning.”
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`Reply at 6. But there is no evidence in the record to suggest that cutting off power
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`to a function device inherently provides a warning to the function device. Instead,
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`the evidence is to the contrary—abrupt cutoff of power does not provide a
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`warning in and of itself—the power supply cutoff warning set forth in the ’794
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`Patent is sent so that the function device can prepare for power supply cutoff
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`and/or perform its own power consumption reduction operations. Ex. 1001, at
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`4:57-5:15; see also Ex. 2023, ¶¶ 61-63.
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`Indeed, the Fig. 5 embodiment only makes sense in the context of a warning
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`sent before the switch is opened. 3 Additionally, even the Fig. 5 embodiment
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`contemplates scenarios in which the power supply is not cutoff (e.g., if the
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`function device does not provide permission), scenarios which would not be
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`possible if the instruction were simply a “power supply cutoff” instruction. See
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`Ex. 1001, at 4:57-5:2.
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`Apple focuses myopically on Dr. Brogioli’s testimony that the patent’s
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`description at 4:52-54 “doesn’t necessarily align” with the ’794 Patent’s overall
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`description. Paper 22 at 11 (citing Ex. 1051 at 14:5-16:12). But Apple improperly
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`truncates Dr. Brogioli’s testimony:
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`And so there’s a little bit of a mismatch between these two sentences
`in that the first one’s stating, in this embodiment, the power
`consumption reduction instruction is assumed to mean cut off from
`the power supply. I think that really needs to be taken into context
`with the larger specification….I would say this sentence as it’s
`written…is that the power assumption [sic] reduction instruction
`in this case is a power supply cutoff warning, and part of this
`overall broader process that the claims are describing. So when
`looking at the prior sentence that you referenced that sentence taken in
`
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`3 Contrary to Apple’s characterization, Maxell is not denigrating its own patent,
`nor is Maxell trying to “change the patent’s express definition of a power
`consumption reduction instruction.” Paper 22 at 10.
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`isolation doesn’t necessarily align with that overall description in the
`specification various embodiments….
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`Ex. 1051 at 14:5-16:12. In spending several pages attacking Maxell and Dr.
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`Brogioli for engaging in claim construction analysis to properly interpret the
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`meaning of the term power consumption reduction instruction based on the full
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`specification, Apple attempts to shift focus away from its purposeful ignorance of
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`expressly disclosed embodiments and the purpose(s) of the claimed power
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`consumption reduction instruction.
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`4.
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`Apple’s Expert Confusingly Testified That A Power Supply
`Cutoff Warning Is Not A Power Consumption Reduction
`Instruction
`Apple fails to meaningfully address its expert’s confusing testimony that the
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`“power supply cutoff warning” is not a type of power consumption reduction
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`instruction:
`
`Q. Okay. So I think you identified one type of power consumption
`reduction instruction there, which is a cutoff instruction. Is that fair?
`A. Yes.
`Q. Are there any other types of power consumption reduction
`instructions, expressly disclosed in the ’794 patent?
`I’m not aware of any.
`A.
`
`Ex. 2021, at 25:9-26:3.
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`Q. Going back to column 4, go to line 54. I’ll read this again.
`Thus, in the following description the power consumption reduction
`instruction will be referred to as a power supply cutoff warning.
`
`That warning is not a type of power consumption reduction
`instruction, in your opinion, correct?
`A. Well, I see that ’794 makes that statement. In the following
`description, that reduction instruction is going to be referred to. So I
`think
`they’re providing another phrase
`to
`indicate a power
`consumption reduction instruction. But that’s not making it equal.
`Is the warning referenced here a type of power consumption
`Q.
`reduction instruction?
`A. No, I haven’t found that. I see where you’ve directed my
`attention a couple times now, I don’t see that that is making them the
`same thing. It’s not.
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`Id. at 26:11-27:5. Apple and its expert fail to analyze the other power
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`consumption reduction instruction embodiments (e.g., as referenced with respect
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`to Figures 2, 3, 6, 7, and 10), which also distinguish between the instruction and
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`the power supply cutoff.
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`Of course, Apple’s motivation for contorting the disclosure is obvious:
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`Hikishima merely discloses opening a switch to cut off power—Hikishima fails to
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`disclose an instruction, and certainly not the claimed power consumption
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`reduction instruction set forth in the ’794 Patent. Paper 17, at 39-46; Ex. 2023,
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`Patent No. 6,329,794
`Patent Owner Sur-Reply
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`¶¶104-113. In the ’794 Patent, the instruction is expressly sent to the function
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`device so that the function device can prepare for power supply cutoff and/or
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`perform its own power consumption reduction operations. Ex. 1001, at 7:3-7.
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`The power consumption reduction instruction cannot refer to both the power
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`supply cutoff (by switch) and the power supply cutoff warning in the same
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`embodiment. Apple’s expert Mr. Hruska agrees. Ex. 2021, 26:11-27:5 And the
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`only sensible interpretation, per the testimony of Dr. Brogioli and the intrinsic
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`evidence, is that the power consumption reduction instruction from the Figure 5
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`embodiment is a “power supply cutoff warning”—distinct from the act of cutting
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`off the power supply.
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`C.
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`It is Apple, Not Maxell, That Invites Legal Error By Improperly
`Construing Power Consumption Reduction Instruction
`Apple argues that Maxell is attempting to import limitations into the claims,
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`but it really is Apple that is attempting to do so. Paper 22 at 7. Apple attempts to
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`characterize the act/operation of opening a switch as equivalent to issuance of a
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`power consumption reduction instruction. In so doing, Apple injects functionality
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`into the “power consumption reduction instruction” that is solely within the
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`province of the changeover controller. But neither the claims nor any disclosed
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`embodiment describe a situation where the instruction is equated with opening a
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`switch. Even the Fig. 5 embodiment fails to support Apple’s attempt to equate
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`Hikishima’s switch signal with a power consumption reduction instruction, as it
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`suggests at most indication that power supply cutoff will soon occur.
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`Completely missed by Apple is that the power consumption reduction
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`instruction is an instruction for the function device to act—e.g., to prepare, to stop,
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`or to reduce operating speed. Maxell does not contend claims 1 and 9 preclude the
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`act of power supply cutoff. Apple agrees that the result of the power consumption
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`reduction instruction is not claimed in claims 1 and 9. Paper 22 at 7. What is clear
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`from the specification and the scope of the claims, is that the instruction itself
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`cannot cut off the power supply—that act belongs within the sole domain of the
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`changeover controller. Paper 17 at 29-30; Ex. 2023, ¶¶42, 45. The text of claim 3
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`elucidates this point:
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`An information processing device according to claim 1, wherein said
`power supply circuitry includes a changeover device capable of
`cutting off power to part or all of at least one function device, said
`controller controlling said changeover device based on said remaining
`capacities NA and NB of said battery.
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`Ex. 1001, Claim 3. Claim 3 makes clear that to the extent power supply cutoff
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`occurs, it is achieved through the changeover controller. Apple appears to agree,
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`Patent Owner Sur-Reply
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`but then attempts to expand the definition of instruction to include the act of
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`cutting off the power:
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`Just as the step of stopping operations of the function device is a
`separate setup from sending the power consumption reduction
`instruction, cutting off the power supply is a separate step from
`sending the power consumption reduction instruction. It is the
`sending of the power consumption reduction instruction that triggers
`cutting off the power supply…. Therefore, cutting off the power
`supply is properly within the scope of a power consumption
`reduction instruction.
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`Paper 22 at 9. But it does not follow that if cutting off the power supply is a
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`separate step from sending the power consumption reduction instruction, that the
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`operation of cutting off the power supply is properly within the scope of a power
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`consumption reduction instruction. Such a reading is not supported by the intrinsic
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`record.
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`Nor does the ’794 Patent provide an “express definition” of a power
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`consumption reduction instruction as “assumed to mean cutoff from the power
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`supply,” as Apple contends. Id. at 13. In this regard, it is Apple, not Maxell,
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`attempting to disregard certain portions of the specification. As Maxell explained
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`in its Patent Owner Response, Apple’s reliance on one particular sentence in the
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`specification to the exclusion of others in the specification is unreasonable. See
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`Paper 17 at 27-30. Apple’s attempt to include cutting off the power supply via a
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`switch within the construction of “power consumption reduction instruction”
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`should be rejected. Apple has not pointed to any embodiment that includes the act
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`of cutting off power within the definition of the power consumption reduction
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`instruction.
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`III. HIKISHIMA FAILS TO DISCLOSE OR SUGGEST A POWER
`CONSUMPTION REDUCTION INSTRUCTION AS CLAIMED IN
`CLAIMS 1 AND 9
`Both independent claims 1 and 9 require a controller that sends a power
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`consumption reduction instruction to each function/component device based on
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`remaining battery capacity. Ex. 1001, cl. 1 & 9. According to Apple and its expert,
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`a “POSITA would have understood a control signal sent through the intermediate
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`power source switch in Hikishima opens the switch, which in turn sends an
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`instruction to the mapped function device.” Paper 22 at 15 (emphasis added). This
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`understanding exposes the unreasonableness of Apple’s construction of “power
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`consumption reduction instruction.” Opening a switch would send no such
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`instruction; opening a switch would act to cut off any signal or instruction of any
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`kind—thus depriving the function device of any reception of an instruction. Ex.
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`2023, at ¶¶ 123-135.
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`Apple’s attempt at explaining that the instruction need not be sent directly to
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`the function device is beside the point. Apple continues to conflate “control” with
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`the actual claim limitations, which require a controller that sends power
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`consumption reduction instructions to the function/component devices. Ex. 2023,
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`at ¶ 137. “A function device may be controlled by turning off its power supply, but
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`that does not necessarily mean that a signal was [sent from the controller] to the
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`function device.” Id. The structure of Hikishima—switches disposed between the
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`controller and function devices—precludes any instruction from reaching the
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`function devices. Moreover, Hikishima does not disclose issuance of any preceding
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`signals from the controlling circuit 78 to the alleged function devices prior to the
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`opening of power source switches 80 and 82.
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`Instead, controlling circuit 78 issues a signal (indicated in green) to warning
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`display circuit 84:
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`Ex. 2023, at ¶ 107 (citing Ex. 1004 at Fig 1). But these warning signals are
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`notifications regarding the operating status of the alleged function devices intended
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`for the user of the portable device or a third-party user communicating with it—not
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`instructions to the alleged function devices. Ex. 1004 at [0026] (“In step S20, the
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`controlling circuit 78 controls the warning display circuit 84 to perform a process
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`indicating to an operator or another party of communication that video image
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`communication will end.”). See also Ex. 2023, at ¶
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