October 9, 2018
`
`VIA FEDERAL EXPRESS AND E-MAIL
`(hmewes@apple.com)
`
`Heather Mewes
`Principal Counsel, IP Transactions
`IP & Licensing Group
`Apple, Inc.
`1 Infinite Loop, MS 169-3IPL
`Cupertino, CA 95014
`
`Mayer Brown LLP
`1999 K Street, N.W.
`Washington, D.C. 20006-1101
`
`Main Tel +1 202 263 3000
`Main Fax +1 202 263 3300
`www.mayerbrown.com
`
`Jamie B. Beaber
`Direct Tel +1 202 263 3153
`Direct Fax +1 202 263 5209
`jbeaber@mayerbrown.com
`
`Re: Maxell’s Smartphone and Streaming Device Related Patents
`
`Dear Ms. Mewes,
`
`Thank you very much for your May 24, 2018 letter. My apologies for the delayed response. I
`was in trial on behalf of Maxell against ZTE in Texas with post-trial briefing just concluding,
`and I am still getting caught up on matters.
`
`As I am sure you are aware, the ZTE litigation was very favorable for Maxell, resulting in a
`$43.3 million verdict on seven patents in its portfolio, including U.S. Patent Nos. 6,748,317 (“’317
`Patent”); 8,339,493 (“’493 Patent”); 8,736,729 (“’729 Patent”); 6,408,193 (“’193 Patent”); 6,329,794
`(“’794 Patent”); 6,816,491 (“’491 Patent”); and 8,098,695 (“’695 Patent”). In addition to the
`favorable verdict, each of these asserted patents also survived IPR petitions filed by ZTE. We
`encourage you to review these matters. For example, Apple’s iPhone and iPad products,
`incorporate many of the same components that were at issue in the ZTE case and operate in the
`same infringing manner. Accordingly, Apple would benefit from a license. We encourage you to
`take another look at the patents and your analysis in view of the recent ZTE litigation as well as
`some of the family member patents that have since issued addressing some of the very issues and
`prior art raised in your letter.
`
`With respect to your letter, we appreciate but were a little surprised by your representation that
`Apple had assumed the negotiations had concluded. Since your last correspondence, Maxell and
`Apple have tried to separately and on multiple occasions negotiate a business arrangement
`between the parties, which Maxell believed would coincide with (if ever consummated) a
`payment to Maxell to license its patents consistent with prior offers. We understand that such
`negotiations were handled by a separate Apple business unit, but Maxell certainly considered
`these a continuation of its negotiations with Apple and assumed Apple did as well given that
`such business solutions were discussed at a higher level with Mr. Jeff Risher during the parties’
`licensing negotiations. Further, such business negotiations continued for a long period of time
`and Apple attempted to have Maxell enter into non-disclosure agreements and Apple’s Master
`
`Mayer Brown LLP operates in combination with other Mayer Brown entities with offices in Europe and Asia
`and is associated with Tauil & Chequer Advogados, a Brazilian law partnership.
`
`Apple v. Maxell
`IPR2020-00407
`Maxell Ex. 2019
`
`Page 1 of 3
`
`

`

`Mayer Brown LLP
`
`Heather Mewes
`October 9, 2018
`Page 2
`
`Development and Supply Agreement that would require Maxell to license its intellectual
`property rights to Apple as part of the business arrangement.
`
`As to the substance of your arguments and positions in the letter, Maxell is more than willing to
`enter into productive conversations but would prefer not to continue with a protracted, drawn out
`back and forth where the parties continuously exchange positions regarding infringement and
`validity to no end. Apple is a very sophisticated company with substantial resources. It has
`undeniably reviewed Maxell patents and assessed the tremendous value that a license from
`Maxell holds, and Maxell does not believe continuing to go back and forth with respect to a
`portfolio of thousands of patents is productive. That said, we encourage you to take another look
`at the patents and your analysis in view of the recent ZTE litigation as well as some of the family
`member patents that have since issued addressing many of the very issues and prior art raised in
`your 2015 letter.
`
`Claims
`
`81
`
`9,159,368
`
`1-5
`
`82
`
`6,697,563
`
`1, 3, 5, 7,
`9, 10
`
`Accused
`Product(s)
`iPhone, iPad,
`iPod Touch
`
`89
`
`9,369,761
`
`1, 2, 5,
`6, and 9
`
`iPhone, iPad,
`iPod Touch
`
`In addition to the patents we identified previously, Maxell would like to also call your attention
`to the following additional U.S. patents or applications (whose claims have now been allowed)
`that we believe are being infringed by Apple’s products:
`No. U.S. Pat.
`Accused
`Product(s) No. U.S. Pat./
`Appl. No. Claims
`No.
`iPhone,
`88
`iPad, iPod
`9,066,058
`1, 2, 4, 5
`Touch
`iPhone,
`iPad, iPod
`Touch
`iPhone,
`iPad, iPod
`Touch
`
`83
`
`8,005,960
`
`1, 3
`
`90
`
`8,571,392
`
`1-6
`
`84
`
`6,484,034
`
`1, 8, and
`9
`
`iPhone,
`iPad
`
`91
`
`10,057,371
`
`1-12
`
`85
`
`7,072,673
`
`86
`
`9,723,268
`
`1-4, 9,
`and 15
`
`1-4
`
`87 10,084,991
`
`1-16
`
`iPhone,
`iPad
`iPhone,
`iPad, iPod
`Touch
`iPhone,
`iPad, iPod
`Touch
`
`92
`
`10,070,099
`
`1 and 6
`
`93
`
`15/208,886
`
`1-10
`
`94
`
`13/874,535
`
`1, 3-5, 8,
`10, and
`12-25
`
`iPhone, iPad,
`iPod Touch
`iPhone, iPad,
`iPod Touch,
`MacBook,
`iCloud
`iPhone, iPad,
`iPod Touch
`iPhone, iPad,
`iPod Touch,
`Apple Watch
`iPhone, iPad,
`iPod Touch,
`Apple Watch
`
`Apple v. Maxell
`IPR2020-00407
`Maxell Ex. 2019
`
`Page 2 of 3
`
`

`

`Mayer Brown LLP
`
`Heather Mewes
`October 9, 2018
`Page 3
`
`If Apple is interested in discussing licensing terms, please let us know. Maxell is prepared to
`offer Apple a world-wide license on friendly terms.
`
`I look forward to your reply and the opportunity to discuss these matters with you or your
`representative.
`
`Sincerely,
`
`Jamie B. Beaber
`
`Apple v. Maxell
`IPR2020-00407
`Maxell Ex. 2019
`
`Page 3 of 3
`
`