UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`MAXELL, LTD.
`Patent Owner
`
`Case IPR2020-00597
`U.S. Patent No. 8,339,493
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`

`

`B.
`
`C.
`D.
`
`E.
`
`Reply to Patent Owner Preliminary Response
`IPR2020-00597
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`
`TABLE OF CONTENTS
`
`I.
`
`THE FINTIV FACTORS SUPPORT INSTITUTING IPR ..................... 1
`A.
`FACTOR 1: LACK OF EVIDENCE OF STAY RENDERS THIS FACTOR
`NEUTRAL ............................................................................................ 1
`FACTOR 3: APPLE WAS DILIGENT AND HAD NO TACTICAL
`ADVANTAGE ....................................................................................... 2
`FACTOR 4: THERE IS NO ISSUE OVERLAP ............................................ 3
`FACTOR 6: APPLE’S STRONG PETITION OUTWEIGHS OTHER
`FACTORS ............................................................................................ 5
`ADDITIONAL CONSIDERATIONS UNDER FACTOR 6 FAVOR
`INSTITUTION ....................................................................................... 6
`II. THIS PROCEEDING AND IPR2020-00203 ARE MATERIALLY
`DIFFERENT .............................................................................................. 7
`III. THE NHK/FINTIV FRAMEWORK SHOULD BE
`OVERTURNED ......................................................................................... 8
`THE NHK/FINTIV FRAMEWORK IS LEGALLY INVALID .......................... 8
`A.
`THE NHK/FINTIV FRAMEWORK ENCOURAGES GAMESMANSHIP...........10
`B.
`IV. APPLE HAS MET ITS BURDEN OF SHOWING THAT CASIO
`WAS PUBLICLY AVAILABLE; HULU DOES NOT REQUIRE
`WHAT MAXELL ARGUES IT DOES ...................................................11
`
`
`
`i
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`Reply to Patent Owner Preliminary Response
`IPR2020-00597
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`Apple submits this reply pursuant to the authorization of the Board to address
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`the Fintiv factors, Maxell’s Hulu argument, as well as the material differences
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`between this proceeding and IPR2020-00203. Ex. 1056 (Board’s Email).
`
`The POPR urges denying the petition under § 314(a) based on misapplying
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`the Fintiv factors and unduly focusing on the time between the current trial date in
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`the district court litigation (“Texas case”) and an expected Final Written Decision
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`(“FWD”). Other factors favor institution, including Petitioner’s strong showing on
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`the merits, a lack of overlap in prior art between the Petition and the Texas case, and
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`the complexities of litigation. A balanced weighing of the factors shows that the
`
`patent system would best be served by instituting review.
`
`I.
`
`THE FINTIV FACTORS SUPPORT INSTITUTING IPR
`A.
`
`Factor 1: Lack of Evidence of Stay Renders This Factor Neutral
`
`On April 27, 2020, the Texas Court denied Apple’s request for a stay without
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`prejudice to re-filing the motion. Ex. 1052. The Board, “in the absence of specific
`
`evidence, [] will not attempt to predict how the district court in the related district
`
`court litigation will proceed because the court may determine whether or not to stay
`
`any individual case, including the related one, based on a variety of circumstances
`
`and facts beyond [its] control and to which the Board is not privy.” Sand Revolution
`
`II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-01393, Paper
`
`24 at 7 (June 16, 2020) (Informative). Thus, this factor is neutral.
`1
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`Reply to Patent Owner Preliminary Response
`IPR2020-00597
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`
`Factor 3: Apple Was Diligent And Had No Tactical Advantage
`
`B.
`
`It is not the case that Apple “purposefully chose to delay filing its petition,”
`
`(POPR at 21) and any suggestion that some tactical purpose drove its timing is
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`without merit. Indeed, Maxell was the one that gained a tactical advantage by placing
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`an undue burden on Apple’s IPR preparation from asserting 90 claims for 10 patents
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`early in the litigation (Ex. 1057 at 2) and only narrowing them after the bar date.
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`Maxell originally asserted ‘493 Patent claims 1, 3-6, 10 and 11 in the
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`litigation. Id. Claim 1 includes a narrow limitation not found in any other
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`independent claims. Specifically, claim 1 requires that “N is equal to or greater than
`
`three times a number of effective scanning lines M.” Ex. 1001 at 17. This forced
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`Apple to search for this narrow limitation in the prior art—a search that extended to
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`October 2019. Apple then needed more time to locate witnesses and documentary
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`proof to establish public availability. Petition, 10-12. But on the eve of the bar date,
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`Maxell reduced its asserted claims to only claims 5 and 6, neither of which include
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`the narrow limitation of claim 1. Ex. 1053. Had Maxell not forced Apple to search
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`for the narrow concept in Claim 1, this petition would have been filed much earlier.
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`And, in order to avoid burdening the Board with multiple petitions, Apple carefully
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`sought to locate and narrow its prior art selection such that it could file a single
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`petition challenging the asserted claims of the ‘493 Patent. See Med-El Elek. Geräte
`
`GES.M.B.H v. Advanced Bionics AG, IPR2020-00190, Paper 15 at 13-14 (June 3,
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`
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`2
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`2020); see also Apple v. Maxell, IPR2020-0020, Paper 11 at 20 (“Petitioner’s
`
`explanation is consistent with the AIA’s legislative history as to the one-year
`
`statutory bar under § 315(b).”) (July 15, 2020). It is disingenuous to suggest Apple
`
`delayed its filing for a strategic advantage when it was Maxell who strategically
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`benefited from dropping claim 1 at the IPR bar date. Thus, this factor favors Apple.
`
`C.
`
`Factor 4: There Is No Issue Overlap
`
`This factor strongly favors Apple because the subject matter that the Board
`
`will consider does not overlap with the litigation. First, Maxell cannot dispute that
`
`Apple seeks IPR on wholly different grounds of invalidity here than it does in the
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`Texas Case, as outlined below. Ex. 1047 (Apple’s Final Election of Prior Art):
`
`Grounds
`
`Claims
`
`Unique Issues
`
`-- Is the Sony MVC system
`prior art?
`-- Does the Sony MVC
`anticipate and teach mixing
`and culling?
`
`-- Is the Casio manual a
`printed publication?
`-- Does Juen disclose
`mixing and culling?
`
`
`
`Texas
`Case
`
`Juen + Anderson
`Juen + Anderson + Misawa
`Sony MVC-FD83/FD88
`Sony MVC + Misawa
`
`5
`6
`5
`6
`
`IPR
`
`Casio + Juen
`Casio + Juen + Takase
`Casio + Juen + Misawa
`
`1, 3, 5, 10
`4
`6, 11
`
`
`Second, as noted above, claim 1 has a materially different scope from the other
`
`claims. This material difference in the proceedings will not be one addressed in the
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`Texas Case. In addition, the IPR presents unique issues relating to the mixing and
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`Reply to Patent Owner Preliminary Response
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`culling limitation: “signal processing unit generates the image signals by using pixel
`
`lines that have been mixed or culled from the N number of vertically arranged pixel
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`lines.” Ex. 1001, claim 5. For this limitation, the IPR relies on Juen’s teaching of
`
`mixing and culling. Petition at 40-43. In the litigation, only the Sony system is used
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`for teaching this limitation. Ex. 1058 at 74-78 (Apple’s Expert Report on ‘439
`
`Invalidity). Misawa, when used in combination with Sony, is only used to teach the
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`image instability detector of claim 6. Id, at 82-88.
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`Third, Maxell’s broad contention that Casio and Sony are “the same” ignores
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`the basic fact that these are two different cameras from two different manufacturers.
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`Of course they disclose similar technology because they both show that the claim
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`limitations are unpatentable. But they invalidate these limitations in different ways,
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`with different teachings, and different motivations to combine. The Casio reference
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`is a printed publication limited to a user manual. But in the litigation, Apple relies
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`on the Sony device itself and a supporting body of evidence outlining the operation
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`of that device that includes the printed manual, a service manual, advertisements,
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`microscopic images of the sensors, tear down testing, Sony’s employees, and other
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`evidence that is unavailable in the IPR. Id. at 53-82. As such, “to a trier of fact, the
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`consideration of [Sony] is different than the consideration of [Casio] because each
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`reference is unique and requires the trier of fact to understand each reference’s
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`distinctive disclosures so that the trier of fact can determine what is, or is not,
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`Reply to Patent Owner Preliminary Response
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`disclosed and decide whether the references teach, or do not teach, what is required
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`by the claims.” Apple v. Maxell, IPR2020-00200, Paper 11 at 22 (July 15, 2020).
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`Fourth, Maxell has filed a summary judgment motion in the litigation seeking
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`to prevent the jury from hearing the merits of the Sony camera (while arguing to this
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`Board that the same issues will be heard by the district court). Maxell’s motion is
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`premised entirely on an alleged failure of proof, not on the merits. Ex. 1060 at 1. The
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`Court will be examining issues completely disassociated from the IPR such as the
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`existence of sales receipts and chain of title for the Sony camera. The court will
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`analyze this evidence under the clear and convincing standard. Id. at 2 (citing cases).
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`As such, any ruling by the Court will not present a conflicting opinion because the
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`Board will analyze different evidence under a different standard—reasonable
`
`likelihood of success. Hulu, IPR2018-01039, Paper 29 at 7.
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`Finally, because Apple has eliminated the chance of inconsistent findings by
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`presenting different grounds to the PTAB than in the Texas Case, there is no risk of
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`duplicative efforts. See Sand Revolution II, LLC v. Cont’l Intermodal Grp.–Trucking
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`LLC, IPR2019-01393, Paper 24, 11-12 (June 16, 2020); Apple Inc. v. Seven
`
`Networks, LLC, IPR2020-00156, Paper 10 at 12-19 (June 15, 2020).
`
`D.
`
`Factor 6: Apple’s Strong Petition Outweighs Other Factors
`
`This factor favors Apple because its strong showing on the merits outweighs
`
`the other factors. See Apple Inc. v. Seven Networks, LLC, IPR2020-00156, Paper 10
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`Reply to Patent Owner Preliminary Response
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`at 20-22. For example, Maxell’s POPR does not challenge whether Casio discloses
`
`claim 1’s “N is equal to or greater than … [three] M” limitation. Also, Apple has
`
`presented Juen for its teachings on mixing/culling and Maxell devotes nearly all of
`
`its arguments to attacking Casio and ignores Juen for this limitation. And, as noted
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`below, Maxell’s arguments against Casio as prior art are factually unsupported.
`
`E. Additional Considerations under Factor 6 Favor Institution
`
`Maxell also fails to present other key factors that weigh in favor of institution.
`
`First, addressing the invalidity of the ‘493 patent in IPR serves the public interest
`
`because Maxell has asserted this patent against multiple defendants. Petition at 7.
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`Second, the Board is well suited to address the complex technical subject
`
`matter, such as how Casio’s CCD displays and arranges its pixels. Presenting this
`
`subject matter to a jury poses a number of challenging issues, especially with a total
`
`of 10 asserted patents to try in just a short one-week trial. Within that context, the
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`‘439 patent’s validity is likely to occupy only one hour of trial. Instituting the IPR
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`“avoids potentially complicated and overlapping jury issues of ten patents, while
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`allowing the panel to focus on multiple issues in depth that only involve the ‘439
`
`patent. Therefore, this IPR trial will provide the parties with an in-depth analysis of
`
`the ‘439 patent, providing a full record that will enhance the integrity of the patent
`
`system.” Seven Networks, IPR2020-00156, Paper 10 at 22.
`
`Finally, the uncertainties created by the COVID-19 pandemic counsel in
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`6
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`favor of institution. Texas has recently experienced a significant increase in COVID-
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`Reply to Patent Owner Preliminary Response
`IPR2020-00597
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`19 cases. Ex. 1059. The likelihood of a jury commencing at the scheduled time
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`remains in doubt, while the Board, by contrast, has continued to hold hearings. See,
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`e.g., Ex. 1061 (W.D.Tex. General Order canceling trials); Ex. 1062 at Docket Nos.
`
`301 and 293 (MV3 Partners v. Roku, Docket Sheet) (transcripts unavailable for 90
`
`days); Ex. 1063 (N.D.Ill. General Order canceling trials).
`
`II. THIS PROCEEDING AND IPR2020-00203 ARE MATERIALLY
`DIFFERENT
`
`The Board invited Apple to brief “what, if any, material differences exist
`
`between the facts presented in this case and those presented in the related IPR2020-
`
`00203 matter.” Ex. 1056. Fundamental, material differences exist between these
`
`proceedings, the most important of which is the lack of overlap.
`
`In the ‘00203 matter, Apple used the following references in the IPR and the
`
`Texas Case (IPR2020-00203, Paper 9-10, at 9 and Ex. 1047):
`
`IPR2020-00203
`
`Texas Case
`
`Mucke + Nakayama
`Waldroup + Mucke
`
`Grounds
`
`Claims
`
`1, 6
`
`1, 6, 7
`
`IPR
`
`Waldroup + Nakayama
`
`
`In the ‘00203 matter, that panel found that “both of the references relied on in
`
`the Petition are asserted in the underlying litigation” and that “the assertion of
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`Reply to Patent Owner Preliminary Response
`IPR2020-00597
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`Waldroup and Nakayama in both proceedings may result in duplication of work and
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`create the potential for inconsistent decisions.” Paper 12, 14.
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`Setting aside whether the Board’s analysis was correct, no concern of overlap
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`and duplication of work exists in this proceeding. The main issues in this proceeding
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`rest almost exclusively on the disclosures of the Casio reference, which is not
`
`asserted as prior art in the Texas Case. Supra Section I.C.
`
`This case, instead, aligns more closely with the recently issued decision in
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`Apple Inc. v. Maxell, Ltd., IPR2020-00200, Paper 11 (July 15, 2020). In the ‘00200
`
`proceeding, the Board found that despite overlap of the primary references between
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`the two proceedings (a fact not present here), the different scope of the challenged
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`claims in the IPR and the material differences between the secondary references
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`presented unique issues warranting institution. Id. at 15-22.
`
`III. THE NHK/FINTIV FRAMEWORK SHOULD BE OVERTURNED
`A.
`The NHK/Fintiv Framework Is Legally Invalid
`
`The NHK/Fintiv framework is legally invalid for three primary reasons. First,
`
`the PTO lacks authority to deny institution based on non-statutory factors. The AIA
`
`establishes the conditions that must be satisfied to institute IPR, e.g., 35 U.S.C.
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`§311(c)(1), (2); §312(a)(1)-(5); §314(a); §315(a)(1), (b), and the conditions under
`
`which IPR may nonetheless not be instituted, e.g., §325(d); Pub. L. No. 112-29,
`
`§6(c)(2)(B). “In light of Congress’s special care in drawing so precise a statutory
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`scheme,” it is “improper” to consider non-statutory factors. University of Texas Sw.
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`Med. Ctr. v. Nassar, 570 U.S. 338, 356 (2013).
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`The AIA further precludes the PTO from denying institution based on non-
`
`statutory efficiency considerations because Congress already specified how parallel
`
`litigation should be accounted for. §311(c)(2); §315; §325(d). Congress granted the
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`PTO discretion to decide how to manage IPR when there is a parallel proceeding
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`before the PTO, §315(d), but permitted “overlap” between IPR and parallel
`
`litigation, §301(a), (d); §315(e)(2). “It would have made little sense for Congress to
`
`insist on” such rules if the Director could deny institution for his own efficiency
`
`reasons. SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018).
`
`Moreover, the NHK/Fintiv framework contravenes Congress’s judgment to
`
`allow IPR if filed within one year of the commencement of parallel infringement
`
`litigation. §315(b); cf. §315(a)(1). Congress crafted that limit “to minimize”—not
`
`eliminate—overlap between IPR and litigation. Thryv, Inc. v. Click-To-Call Techs.,
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`LP, 140 S. Ct. 1367, 1374-1375 (2020). Statutory limitations on filing inherently
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`“take[] account of delay,” and therefore other “case-specific circumstances”—like
`
`the NHK-Fintiv factors—“cannot be invoked to preclude adjudication of a claim …
`
`brought within the [statutory] window.” Petrella v. Metro-Goldwyn-Mayer, Inc.,
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`572 U.S. 663, 667, 677-680, 685 (2014).
`
`The NHK/Fintiv framework is also arbitrary and capricious. The factors
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`Reply to Patent Owner Preliminary Response
`IPR2020-00597
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`require speculation about the likely course of parallel litigation, which will produce
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`irrational and unfair outcomes. And if trial is rescheduled after a non-institution
`
`decision, as often happens, an IPR petitioner will have lost any avenue for
`
`expeditious resolution of patent validity. These unpredictable risks will undermine
`
`the PTO’s efficiency goal by incentivizing accused infringers to splinter issues and
`
`petition for IPR prematurely. See 157 Cong. Rec. S5430 (Sept. 8, 2011).
`
`Finally, the NHK/Fintiv framework is invalid because it is a substantive rule
`
`that was adopted without public notice and comment. “[T]he Director has no
`
`substantive rule making authority with respect to interpretations of the Patent Act.”
`
`Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313, 1341 (Fed. Cir.
`
`2020) (additional views of Prost, C.J., Plager, & O’Malley, JJ.). And although
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`agencies “must use notice-and-comment procedures” when adopting substantive
`
`rules, Kisor v. Wilkie, 139 S. Ct. 2400, 2420 (2019), the Director designated NHK
`
`and Fintiv as precedential (i.e., a binding rule) without such procedures.
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`B.
`
`The NHK/Fintiv Framework Encourages Gamesmanship
`
`The NHK/Fintiv framework is also bad policy because it encourages
`
`inefficient gamesmanship. The framework will induce plaintiffs to sue in fast-
`
`moving districts in hopes of setting trial before the FWD. It will encourage plaintiffs
`
`to hide important claims early in litigation to delay the filing of IPR petitions. And
`
`it may cause plaintiffs to assert many patents in their complaint to increase the
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`Reply to Patent Owner Preliminary Response
`IPR2020-00597
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`“overlap” with an IPR petition, only then to withdraw a patent from the lawsuit once
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`institution of IPR has been denied. Accused infringers may respond by quickly filing
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`petitions on more patents and claims without fully understanding the infringement
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`allegations against them. And the pressure to act immediately will diverts efforts
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`from alternative dispute resolution.
`
`IV. APPLE HAS MET ITS BURDEN OF SHOWING THAT CASIO WAS
`PUBLICLY AVAILABLE; HULU DOES NOT REQUIRE APPE
`SHOW COMMUNICATIONS BETWEEN CASIO AND ETCHELLS
`
`In its POPR, Maxell argues Mr. Etchells declaration is insufficient to establish
`
`the Casio manual as prior art. Maxell’s argument, however, is premised on a faulty
`
`premise. Specifically, Maxell argues that “Apple provides no evidence of any
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`communication from Casio Mr. Etchells.” POPR, 39. Maxell cites to the precedential
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`Hulu decision, suggesting the law requires Apple to establish the existence of such
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`communications. It does not.
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`In Hulu, the Board emphasized that the question of whether a reference is a
`
`printed publication is not a heightened standard at institution. Instead, the question
`
`is “whether the information in the petition and in any response “shows that there is
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`a reasonable likelihood that the petitioner would prevail with respect to at least 1 of
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`the claims challenged in the petition.” Hulu, LLC v. Sound View Innovations, LLC,
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`IPR2018-01039, Paper 29 at 7 (Dec. 20, 2019); 35 U.S.C. § 314(a). Moreover, in
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`determining whether “[a] given reference is ‘publicly accessible’ [depends] upon a
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`satisfactory showing that such document has been disseminated or otherwise made
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`available to the extent that persons interested and ordinarily skilled in the subject
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`matter or art exercising reasonable diligence, can locate it.” Id. at 10-11. Notably
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`absent from the Board’s analysis in Hulu (or any other case) is a requirement that
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`the petitioner establish communications between the persons interested and
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`ordinarily skilled in the art and the publisher of the given reference. As noted above,
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`at institution, the question is simply one of whether the petitioner has established a
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`“reasonable likelihood.” Thus, Maxell is incorrect that Apple must establish
`
`communications between Casio and Mr. Etchells under Hulu to meet its burden of
`
`establishing public availability.
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`When the proper legal standard is considered, it is clear Maxell’s argument
`
`against Mr. Etchells is simply one of disagreement with his factual statements.
`
`Maxell faults Apple for allegedly providing no evidence of communication between
`
`Mr. Etchells and Casio, but Maxell ignores Mr. Etchells’ express statement in his
`
`declaration that “I reached out to Casio requesting the QV8000SX digital Camera.”
`
`Ex. 1007, 3. If Maxell believes Mr. Etchells is not being truthful, then Maxell is fully
`
`entitled to take Mr. Etchells deposition after institution. But the answer is not denial
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`of institution based on an incorrect legal standard and the lack of any contrary
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`evidence from Maxell.
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`Reply to Patent Owner Preliminary Response
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`Respectfully submitted,
`
`
`
`
`
`
`
`BY: /s/ Adam P. Seitz
`
`
`Jennifer C. Bailey, Reg. No. 52,583
`
`Adam P. Seitz, Reg. No. 52,206
`Paul R. Hart, Reg. No. 59,646
`
`COUNSEL FOR PETITIONER
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`
`Updated Exhibit List
`
`Exhibit 1001 U.S. Patent No. 8,339,493 (“’493 Patent”)
`Exhibit 1002 File History of U.S. Patent No. 8,339,493 (“File History for ’493
`Patent”)
`Exhibit 1003 Declaration of Dr. Jeffrey J. Rodriguez (“Rodriguez Dec.”)
`(including Appendix A)
`Exhibit 1004 Casio LCD Digital Camera QV-8000SX User’s Guide (“Casio”)
`Exhibit 1005 U.S. Patent No. 7,903,162 to Juen (“Juen”)
`Exhibit 1006 U.S. Patent No. 5,502,483 to Takase, et al. (“Takase”)
`Exhibit 1007 Declaration of David Etchells (“Etchells Dec.”) (including
`Appendices A-I)
`Exhibit 1008 U.S. Patent No. 5,444,482 to Misawa, et al. (“Misawa”)
`Exhibit 1009 Docket Control Order, Maxell Ltd. v. Apple Inc, No. 5:19-cv-
`0036-RWS (E.D. Tex. July 9, 2019), ECF No. 46
`Exhibit 1010 Complaint for Patent Infringement, Maxell Ltd. v. Apple Inc, No.
`5:19-cv-0036-RWS (E.D. Tex. Mar. 15, 2019), ECF No. 1
`Exhibit 1011 P.R. 4-3 Joint Claim Construction and Prehearing Statement
`(Docket No. 99), from Maxell, Ltd. v. Apple Inc., 5:19-cv-00036-
`RWS (E.D. Tex. Oct. 16, 2019)
`Exhibit 1012 U.S. Patent No. 4,949,117 to Heyningen (“Heyningen”)
`Exhibit 1013 U.S. Patent No. 5,150,109 to Berry (“Berry”)
`Exhibit 1014 U.S. Patent No. 6,335,760 to Sato (“Sato”)
`Exhibit 1015 U.S. Patent No. 5,642,171 to Baumgartner (“Baumgartner”)
`Exhibit 1016 CCD Arrays, Cameras, and Displays, 2d. Ed. (JCD Publ. 1998)
`(“CCD Arrays”)
`Exhibit 1017 U.S. Patent No. 4,740,828 to Kinoshita (“Kinoshita”)
`Exhibit 1018 U.S. Patent No. 6,018,363 to Horii (“Horii”)
`Exhibit 1019 EP 0 802 688 B1 to Inoue (“Inoue”)
`Exhibit 1020 U.S. Patent No. 6,512,541 to Dunton (“Dunton”)
`Exhibit 1021 U.S. Patent No. 6,563,535 to Anderson (“Anderson”)
`Exhibit 1022 U.S. Patent No. 4,612,575 to Ishman (“Ishman”)
`Exhibit 1023 File History for U.S. Application Serial No. 15/959,774
`Exhibit 1024 File History for U.S. Application Serial No. 15/386,656
`Exhibit 1025 U.S. Patent No. 6,067,071 to Kotha (“Kotha”)
`Exhibit 1026 Declaration of Edward Lang (“Lang Dec.”)
`Exhibit 1027 Declaration of Grace Siller (“Siller Dec.”) (including Ex. A)
`
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`Exhibit 1028 Declaration of Susan VanderSchans (“VanderSchans Dec.”)
`(including Ex. A)
`Exhibit 1029 VHS Camcoder with Electronic Image Stabilizer, Ohima, et al.,
`IEEE Trans, on CE, Vol. 35, No. 4 (Nov. 1989), pp. 749-757
`Exhibit 1030
`Intentionally Left Blank
`Exhibit 1031
`Intentionally Left Blank
`Exhibit 1032
`Intentionally Left Blank
`Exhibit 1033
`Intentionally Left Blank
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`Exhibit 1047 Apple's Final Election of Prior Art
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`Exhibit 1052 Order Denying Motion to Stay Without Prejudice
`Exhibit 1053 Maxell’s Final Election of Asserted Claims
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`Exhibit 1056 Board’s Email Authorizing Reply
`Exhibit 1057 Maxell’s June 12, 2019, Infringement Contentions
`Exhibit 1058 Apple’s Expert Report on Invalidity for the ’493 Patent
`Exhibit 1059 New Report on COVID-19 Cases in Texas
`Exhibit 1060 Maxell’s Summary Judgment Motion on the ’493 Patent
`Exhibit 1061 W.D.Tex. Order Canceling Trials Due to Pandemic
`Exhibit 1062 MV3 v. Roku – Docket Sheet Showing Delayed Trial Due to
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`Exhibit 1063 N.D.Ill. Order Canceling Trials Due to Pandemic
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`Reply to Patent Owner Preliminary Response
`IPR2020-00597
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`Reply to Patent Owner Preliminary Response
`IPR2020-00597
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`CERTIFICATE OF SERVICE ON PATENT OWNER
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`UNDER 37 C.F.R. § 42.6
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on July 20, 2020
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`the foregoing Petitioner Apple Inc.’s Preliminary Reply was served via electronic
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`filing with the Board and via Electronic Mail on the following practitioners of record
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`for Patent Owner:
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`Robert G. Pluta (rpluta@mayerbrown.com)
`Maxell-Apple-Service@mayerbrown.com
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`/s/ Adam P. Seitz
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`Adam P. Seitz, Reg. No. 52,206
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`ATTORNEY FOR PETITIONER
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