Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 1 of 102 PageID #: 5174
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`
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`No. 5:19-cv-0036-RWS
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`§§§§§§§§§§
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`
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`MAXELL, LTD.,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`APPLE INC.’S ANSWER AND AFFIRMATIVE DEFENSES TO MAXELL, LTD.’S
`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
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`Defendant Apple Inc. (“Apple”), by and through the undersigned attorneys, responds to the
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`First Amended Complaint filed on October 23, 2019 (“FAC”) by Plaintiff Maxell, Ltd.
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`(“Plaintiff”) as follows:
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`OVERVIEW
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`1. Amended Complaint: This is an action for patent infringement by Maxell. Founded in
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`1961 as Maxell Electric Industrial Co., Ltd., Maxell is a leading global manufacturer of
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`information storage media products, including magnetic tapes, optical discs, and battery products
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`such as lithium ion rechargeable micro batteries and alkaline dry batteries, and the company has
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`over 50 years of experience producing industry-leading recordable media and energy products
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`for both the consumer and the professional markets. Maxell is also a leading manufacturer of
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`projectors and lenses and additionally sells various other devices, such as Bluetooth headsets,
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`wireless charging solutions, etc.
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`Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 2 of 102 PageID #: 5175
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`Apple’s Response: Apple admits that Plaintiff’s FAC purports to state an action for
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`alleged patent infringement. Apple is without information or knowledge sufficient
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`to form a belief as to the truth of the remaining allegations in Paragraph 1 and on
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`that basis denies them.
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`2. Amended Complaint: Maxell has built up an international reputation for excellence and
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`reliability, for pioneering the power supplies and digital recording for today’s mobile and multi-
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`media devices, and leading the electronics industry in the fields of storage media and batteries.
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`Apple’s Response: Apple is without information or knowledge sufficient to form a
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`belief as to the truth of the allegations in Paragraph 2 and on that basis denies them.
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`3. Amended Complaint: Since being one of the first companies to develop alkaline batteries
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`and Blu Ray camcorder discs, Maxell has always assured its customers of industry leading
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`product innovation and is one of the world’s foremost suppliers of memory, power, audio, and
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`visual goods.
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`Apple’s Response: Apple is without information or knowledge sufficient to form a
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`belief as to the truth of the allegations in Paragraph 3 and on that basis denies them.
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`4. Amended Complaint: As more fully described below, in 2009 Hitachi, Ltd. assigned
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`much of its intellectual property to Hitachi Consumer Electronics Co., Ltd., along with a
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`significant portion of its Consumer Business Group, including manufacturing and research and
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`development capabilities. Then, in 2013, Hitachi Consumer Electronics Co., Ltd. assigned the
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`intellectual property, including many of the patents in this case, along with the related
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`manufacturing and research and development capabilities, to Hitachi Maxell, Ltd., which later
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`assigned the assets to Maxell as a result of a reorganization and name change. This was an effort
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`to align the intellectual property with the licensing, business development, research and
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`Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 3 of 102 PageID #: 5176
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`development, and manufacturing efforts of Maxell, including in the mobile and mobile-media
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`device market. Maxell continues to sell products in the mobile device market including wireless
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`charging solutions, wireless flash drives, multimedia players, storage devices, and headphones.
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`Maxell also maintains intellectual property related to televisions, computer products, tablets,
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`digital cameras, and mobile phones. As a mobile technology developer and industry leader, and
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`due to its historical and continuous investment in research and development, including in this
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`District, Maxell owns a portfolio of patents related to such technologies and actively enforces its
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`patents through licensing and/or litigation. Maxell is forced to bring this action against Apple as
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`a result of Apple’s knowing and ongoing infringement of Maxell’s patents as further described
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`herein.
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`Apple’s Response: Apple specifically denies that it has infringed or is infringing,
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`directly, indirectly, or willfully, any valid claim of any asserted patent. Apple is
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`without information or knowledge sufficient to form a belief as to the truth of the
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`remaining allegations in Paragraph 4 and on that basis denies them.
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`5. Amended Complaint: Since at least June 2013, Apple has been aware of Maxell’s
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`patents and has had numerous meetings and interactions regarding its infringement of these
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`patents. These meetings included Apple’s representatives being provided with detailed
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`information regarding Maxell’s patents, the developed technology, and Apple’s ongoing use of
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`this patented technology. Through this process, Apple’s representatives requested and received
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`detailed explanations regarding Maxell’s patents and allegations. Maxell believed that the
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`parties could reach a mutually beneficial solution and to that end considered a potential business
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`transaction and continued to answer multiple inquiries from Apple over the course of several
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`years, including communicating with Apple as recently as late 2018. Apple elected, however,
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`Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 4 of 102 PageID #: 5177
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`not to enter into an agreement and did not license Maxell’s patents. Instead, Apple continued,
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`and continues today, to make, use, sell and offer for sale Maxell’s patented technology without
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`license.
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`Apple’s Response: Apple representatives had meetings and communicated with
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`Hitachi and/or Maxell representatives at various times from 2011 to May 2015,
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`including specifically in June 2013, and again in 2018, regarding various patents
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`allegedly owned during that timeframe by Hitachi and/or Maxell. Apple has not
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`entered into an express license agreement with Hitachi or its successors in interest,
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`including Maxell, under any of the asserted patents. Apple specifically denies that it
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`has infringed or is infringing, directly, indirectly, or willfully, any valid claim of any
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`asserted patent, and specifically denies that it is not licensed to practice the asserted
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`patents. Except as expressly admitted, Apple denies all remaining allegations in
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`Paragraph 5.
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`6. Amended Complaint: Since 2014, Maxell has had regular and continuous business in the
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`Eastern District of Texas. As a result of such business dealings and hopes to expand those and
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`other business dealings, a Maxell affiliate, Maxell Research and Development America, LLC
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`(“MRDA”), was founded in Marshall, Texas. Maxell and MRDA have and continue to regularly
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`meet and work to expand the research and development activities, business, and investments
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`being made by Maxell, MRDA, and their business partners in this District to further the goals of
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`these companies.
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`Apple’s Response: Apple is without information or knowledge sufficient to form a
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`belief as to the truth of the allegations in Paragraph 6 and on that basis denies them.
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`-4-
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`Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 5 of 102 PageID #: 5178
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`PARTIES
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`7. Amended Complaint: Plaintiff Maxell, Ltd. is a Japanese corporation with a registered
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`place of business at 1 Koizumi, Oyamazaki, Oyamazaki-cho, Otokuni-gun, Kyoto, Japan.
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`Apple’s Response: Apple is without information or knowledge sufficient to form a
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`belief as to the truth of the allegations in Paragraph 7 and on that basis denies them.
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`8. Amended Complaint: On information and belief, Defendant Apple Inc. is a California
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`corporation having a principal place of business located at One Apple Park Way, Cupertino,
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`California 95014. As of the filing of the original Complaint, Apple had regular and established
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`places of business at 2601 Preston Road, Frisco, Texas, and 6121 West Park Boulevard, Plano,
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`Texas, as well as other locations in Texas. Apple offers and sells its products and/or services,
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`including those accused herein of infringement, to customers and potential customers located in
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`Texas, including in the judicial Eastern District of Texas. Apple may be served with process
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`through its registered agent for service in Texas: CT Corporation System, 1999 Bryant Street,
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`Suite 900, Dallas, Texas 75201.
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`Apple’s Response: Apple admits that it is a corporation organized and existing
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`under the laws of the State of California and has its principal place of business at
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`One Apple Park Way, Cupertino California 95014. Apple admits that it previously
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`operated two retail stores located in Frisco and Plano, Texas, both of which were
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`closed in April 2019. Apple also admits that it has offices and retail stores in other
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`locations in Texas that are outside the Eastern District of Texas. Apple admits that
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`it sells its products and services throughout the United States, including in this
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`District. Apple admits that it may be served with process through its registered
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`-5-
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`Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 6 of 102 PageID #: 5179
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`agent for service in Texas. Except as expressly admitted, Apple denies all remaining
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`allegations in Paragraph 8.
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`NATURE OF THE ACTION, JURISDICTION, AND VENUE
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`9. Amended Complaint: Maxell brings this action for patent infringement under the patent
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`laws of the United States, 35 U.S.C. § 271 et seq.
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`Apple’s Response: Apple admits that Plaintiff’s FAC purports to state an action for
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`alleged patent infringement under the patent laws of the United States. Except as
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`expressly admitted, Apple denies all remaining allegations in Paragraph 9 and
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`specifically denies that it has infringed or is infringing, directly, indirectly, or
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`willfully, any valid claim of any asserted patent.
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`10. Amended Complaint: This Court has subject matter jurisdiction over the subject matter
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`of this action pursuant to 28 U.S.C. § 1331 and 1338(a) because the action arises under the patent
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`laws of the United States.
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`Apple’s Response: Apple admits that this Court has subject matter jurisdiction
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`over Plaintiff’s claims under 28 U.S.C. § 1331 and 1338. Except as expressly
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`admitted, Apple denies all remaining allegations in Paragraph 10 and specifically
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`denies that it has infringed or is infringing, directly, indirectly, or willfully, any
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`valid claim of any asserted patent.
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`11. Amended Complaint: This Court has personal jurisdiction over Apple. Apple conducts
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`business and has committed acts of direct and indirect patent infringement in this District, the
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`State of Texas, and elsewhere in the United States. Moreover, Apple is registered to do business
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`in the State of Texas, has offices and facilities in the State of Texas and this District, and actively
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`directs its activities to customers located in the State of Texas and this District.
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`-6-
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`Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 7 of 102 PageID #: 5180
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`Apple’s Response: Apple admits that it is registered to do business and has offices
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`and facilities in the State of Texas and that it sells its products and services to
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`customers throughout the United States, including in Texas and this District. Apple
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`has not contested, for purposes of this case, that this Court has personal jurisdiction
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`over Apple. Apple denies that it is subject to general personal jurisdiction in this
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`District. Except as expressly admitted, Apple denies all remaining allegations in
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`Paragraph 11 and specifically denies that it has infringed or is infringing, directly,
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`indirectly, or willfully, any valid claim of any asserted patent.
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`12. Amended Complaint: Venue is proper in this District pursuant to 28 U.S.C. § 1400(b).
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`As of the filing of the original Complaint, Apple had regular and established places of business
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`in this District, including Apple Stores located at 2601 Preston Road, Frisco, Texas and 6121
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`West Park Boulevard, Plano, Texas, and thus was deemed to reside in this District, has
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`committed acts of infringement described herein in this District, and has purposely transacted
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`business involving the accused devices in this District. Apple has not contested whether venue is
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`proper in this District pursuant to 28 U.S.C. § 1400(b).
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`Apple’s Response: Apple admits that it previously had retail stores in Frisco and
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`Plano, Texas, both of which were closed in April 2019, and that it has not contested,
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`for purposes of this case, whether venue is proper in this District under 28 U.S.C. §
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`1400(b). Apple denies that it has any regular or established places of business in
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`this District or resides in this District. Apple denies that venue in this District is
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`convenient or proper under 28 U.S.C. § 1404 for the reasons set forth in Apple’s
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`briefing on its amended motion to transfer (D.I. 57) and at oral argument before the
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`Court on that motion. Except as expressly admitted, Apple denies all remaining
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`Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 8 of 102 PageID #: 5181
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`allegations in Paragraph 12 and specifically denies that it has infringed or is
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`infringing, directly, indirectly, or willfully, any valid claim of any asserted patent.
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`13. Amended Complaint: Six of the patents accused of infringement herein, including U.S.
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`Patent Nos. 6,748,317; 8,339,493; 7,116,438; 6,408,193; 6,928,306; and 6,329,794, were
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`previously asserted in this District against Huawei Device Co., Ltd., Huawei Device USA, Inc.,
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`ZTE (USA), Inc., ZTE Corporation, and/or ASUSTeK Computer Inc. Further, U.S. Patent Nos.
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`6,580,999 and 6,430,498 are the parents of the previously asserted U.S. Patent No. 6,748,317 and
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`include similar subject matter as the one the Court is familiar with. During the course of these
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`lawsuits, this Court heard from the parties and their experts regarding the technology at issue in
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`these patents, construed numerous claim terms, and even conducted a jury trial, during which all
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`patents were found to be valid and willfully infringed. Accordingly, this Court has substantial
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`knowledge of and concerning the majority of the patents asserted in this lawsuit. Judicial
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`economy further supports venue in this District.
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`Apple’s Response: Apple admits that Plaintiff previously asserted U.S. Patent Nos.
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`6,329,794; 6,408,193; 6,748,317; 8,339,493; and 6,928,306 in this District against
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`ZTE (USA), Inc. and ZTE Corporation. Apple admits that Plaintiff previously
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`asserted U.S. Patent Nos. 7,116,438 and 6,928,306 in this District against Huawei
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`Device Co., Ltd. and Huawei Device USA, Inc. Apple admits that Plaintiff
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`previously asserted U.S. Patent No. 6,329,794 against ASUSTeK Computer Inc.
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`Apple admits that U.S. Patent No. 6,748,317 purports to be a continuation of U.S.
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`Patent Nos. 6,580,999 and 6,430,498. Apple admits that this Court held a jury trial
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`involving U.S. Patent Nos. 6,408,193; 6,748,317; 8,339,493; 8,736,729; 6,816,491;
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`8,098,695; and 6,329,794 that resulted in a verdict against ZTE USA, Inc. (“ZTE”).
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`Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 9 of 102 PageID #: 5182
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`Except as expressly admitted, Apple denies all remaining allegations in Paragraph
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`13 and specifically denies that venue in this District is convenient or proper under
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`28 U.S.C. § 1404 for the reasons set forth in Apple’s briefing on its motion to
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`transfer and at oral argument before the Court on that motion.
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`COUNT 1- [ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 6,748,317
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`14. Amended Complaint: Maxell incorporates paragraphs 1-13 above by reference.
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`Apple’s Response: Apple incorporates by reference its responses to Paragraphs 1-
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`13 of the FAC.
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`15. Amended Complaint: U.S. Patent No. 6,748,317 (the “ʼ317 Patent,” attached hereto at
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`Exhibit 1) duly issued on June 8, 2004 and is entitled Portable terminal with the function of
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`walking navigation.
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`Apple’s Response: Apple admits that the cover page of U.S. Patent No. 6,748,317
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`(the “ʼ317 patent”) states that it issued on June 8, 2004, and that its title is “Portable
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`terminal with the function of walking navigation.” Apple admits that a copy of the
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`’317 patent was attached to the FAC as Exhibit 1. Except as expressly admitted,
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`Apple denies all remaining allegations in Paragraph 15.
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`16. Amended Complaint: Maxell is the owner by assignment of the ʼ317 Patent and
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`possesses all rights under the ʼ317 Patent, including the exclusive right to recover for past and
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`future infringement.
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`Apple’s Response: Apple is without information or knowledge sufficient to form a
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`belief as to the truth of the allegations in Paragraph 16 and on that basis denies
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`them.
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`Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 10 of 102 PageID #: 5183
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`17. Amended Complaint: Eight years before Apple released its first GPS-enabled iPhone and
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`five years before Google launched its first Maps product, the inventors of the ʼ317 Patent were
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`experimenting with ways to deliver navigation services to the small sized screens of cellular
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`phones that were available in 1999. At the time of the priority date of the ʼ317 Patent, even the
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`Internet hosted map applications were geared to stationary desktop computers, not to mobile
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`phones. The inventors of the ʼ317 Patent recognized the benefits of delivering mapping services
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`to mobile phones and of supplementing those services with real-time location information from
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`the phones themselves. ʼ317 Patent, 1:10-30. The inventors were interested in specifically
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`improving mapping services on small screen phones within the narrow field of walking
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`navigation. Id. at 1:31-43. The inventors recognized that simply providing a map on the phone
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`was not enough because the small, text-based displays of the phones were ill-equipped to display
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`full maps or to enable meaningful user interactions. Id. at 2:17-36. The inventors also
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`recognized that there was a need to provide a solution that did not require the enormous amount
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`of cost required to download maps in real-time from a server linked to a computer network and
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`to process this map information in a format that is readable on the small screens of the phones.
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`Id. at 1:53-2:4. The inventors also recognized that a car navigation system from that time frame
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`also did not provide a useful solution because it could not be used by a pedestrian to guide
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`his/her walk due to the size and the lack of preciseness required to provide accurate route
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`information to a pedestrian. Id. at 1:31-43.
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`Apple’s Response: Apple denies all allegations in Paragraph 17.
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`18. Amended Complaint: It is against this backdrop that the inventors of the ʼ317 Patent set
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`about to solve the problem arising specifically in the realm of computer networks that—at that
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`time—lacked the ability to provide accurate and precise route guidance information to
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`pedestrians in a device that would be portable and that would not require the cost of constantly
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`downloading maps and processing this data over a computer network in real-time. Id. at 2:51-61.
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`Apple’s Response: Apple denies all allegations in Paragraph 18.
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`19. Amended Complaint: In order to solve this problem of computer, the inventors disclose a
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`portable device with a particular combination of hardware components tailored for delivering
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`mobile mapping services. The device includes a “[c]ellular antenna and ... an infrared ray
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`sensor” such as a “GSP [sic], PHS, or the like,” with which it can obtain “location information.”
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`Id. at 5:66-6:2. The specification discloses that “location information” is “a latitude/longitude or
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`coordinates and an altitude.” Id. at 5:62-64. Moreover, the device includes “a compass, a gyro,
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`and such a sensor as a clinometer,” with which it can obtain “direction information.” Id. at 6:2-
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`12. The specification discloses that “direction information” is “the direction of the tip of the
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`[device] or the orientation of the display screen.” Id. The ʼ317 Patent thus discloses a portable
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`device with a specific combination of hardware that has a particular set of capabilities and in
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`order to ensure that they did not preempt the concept of simply including a map on a computer,
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`the inventors claimed a combination of “devices” within a “portable terminal with the function of
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`walking navigation.” See e.g., id. at 10:42-57 (claim 1). Further, each of the claimed “devices”
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`recites a specific function that as a whole solve the problem of the prior art devices that could not
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`provide accurate and precise navigation information to pedestrians. Id.
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`Apple’s Response: Apple denies all allegations in Paragraph 19.
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`20. Amended Complaint: For example, claim 1 recites at least “a device for getting location
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`information,” “a device for getting direction information denoting an orientation,” “an input
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`device for inputting a destination,” and “a display” wherein the display specifically provides the
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`claimed functionality of displaying positions of a “destination and a present place, and a relation
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`of said direction and a direction from said present place to said destination.” Id. Further, the
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`display also specifically provides the claimed functionality of changing the display “according to
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`a change of said direction of said portable terminal orientation for walking navigation,” thus
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`ensuring that the portable terminal can guide the pedestrian accurately in real-time in response
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`to, for example, the pedestrian changing the direction he/she is walking. Independent claims 6
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`and 10 also recite similar combinations of hardware and also recite additional narrowing features
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`(e.g., “a device connected to a server”). Id. at 11:6-21 and 11:34-51. Similarly, at least
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`dependent claims 2, 3, 5, 7, and 11 also provide additional narrowing features limiting the claims
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`to specific improvements in the field providing navigation information on portable terminals.
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`See id. at 10:58-64, 11:3-5, 11:21-22, and 12:1-4.
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`Apple’s Response: Paragraph 20 states legal conclusions and opinions to which no
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`response is required. To the extent a response is required, Apple denies all
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`allegations in Paragraph 20.
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`21. Amended Complaint: When considered as a whole the combination of hardware recited
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`in the claims of the ʼ317 Patent is directed to a specific novel and non-obvious portable terminal
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`that includes specific functionality of providing guidance for walking navigation. Indeed, a jury
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`in this jurisdiction made a determination that when considered as a whole, at least claims 1-3 of
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`the ʼ317 Patent are directed to a novel device and are not invalid over prior art.
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`Apple’s Response: Apple admits that the jury in Maxell Ltd. v. ZTE USA, Inc., Case
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`No. 5:16-cv-00179-RWS (E.D. Tex.) found that ZTE did not prove by clear and
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`convincing evidence that claims 1-3 of the ’317 patent are invalid. Except as
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`expressly admitted, Apple denies all remaining allegations in Paragraph 21.
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`22. Amended Complaint: Further, the patentability of the ʼ317 Patent was challenged in
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`IPR2018-00235, wherein the Patent Trial and Appeal Board was asked to consider the teachings
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`of prior art (e.g., U.S. Patent Nos. 5,781,150, 5,173,709, and 5,592,382, and Japanese Patent
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`Application Publication No. H10-232992) in a challenge to the validity of claims 1-3, 6-8, 10,
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`15-17, and 20. In response, the Patent Trial and Appeal Board denied the petition, finding that
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`the information presented does not “demonstrate a reasonable likelihood that Petitioner would
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`prevail in showing that at least one of the challenged claims of the ʼ317 Patent is unpatentable.”
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`Apple’s Response: Apple admits that IPR2018-00235 asserted invalidity grounds
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`based on prior art including U.S. Patent Nos. 5,781,150, 5,173,709, and 5,592,382,
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`and Japanese Patent Application Publication No. H10-232992 in a challenge to the
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`validity of claims 1-3, 6-8, 10, 15-17, and 20 of the ’317 patent. Apple admits that
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`the Patent Trial and Appeal Board denied institution of the petition. Except as
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`expressly admitted, Apple denies all remaining allegations in Paragraph 22.
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`23. Amended Complaint: Apple has directly infringed one or more claims of the ʼ317 Patent
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`in this District and elsewhere in Texas, including at least claims 1-3, 5-15, 17, and 18 literally
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`and/or under the doctrine of equivalents, by or through making, using, importing, offering for
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`sale and/or selling its telecommunications technology, including by way of example a product
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`known as the iPhone XS.
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`Apple’s Response: Apple denies all allegations in Paragraph 23.
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`24. Amended Complaint: The iPhone XS includes a screen for displaying information, at
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`least a GPS chipset/cellular chipset/Wi-Fi chipset/iBeacon/compass/gyroscope for providing
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`location and/or orientation information, “Maps” and “Find My Friends” software that allows
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`users to access location information including the present location of the device and orientation
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`Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 14 of 102 PageID #: 5187
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`of the device and use such information to provide walking navigation information and/or share
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`location. The iPhone XS further uses location servers to provide walking navigation
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`information, route information, and/or to provide its position to additional devices in order to
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`allow users to walk to a particular shared location. For example, the following excerpts from
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`Apple’s websites provide non-limiting examples of the iPhone XS infringing at least claims 1-3,
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`5-15, 17, and 18 of the ʼ317 Patent:
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`See https://support.apple.com/en-us/HT201493
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`Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 15 of 102 PageID #: 5188
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`See https://www.apple.com/ios/maps/
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`Apple’s Response: Apple admits that certain versions of iOS support a “Maps”
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`application and a “Find My Friends” application. Apple admits that the screenshot
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`included in Paragraph 24 from https://support.apple.com/en-us/HT201493 purports
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`to be an excerpt from an Apple website. Apple denies that the screenshot included
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`in Paragraph 24 from https://www.apple.com/ios/maps/ is an accurate excerpt from
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`-15-
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`Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 16 of 102 PageID #: 5189
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`an Apple website. Except as expressly admitted, Apple denies all remaining
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`allegations in Paragraph 24 and specifically denies that it has infringed or is
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`infringing any valid and enforceable claim of any asserted patent.
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`25. Amended Complaint: The foregoing features and capabilities of the iPhone XS, and
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`Apple’s description and/or demonstration thereof, including in user manuals and advertising,
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`reflect Apple’s direct infringement by satisfying every element of at least claims 1-3, 5-15, 17,
`
`and 18 of the ʼ317 Patent, under 35 U.S.C. § 271(a).
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`Apple’s Response: Apple denies all allegations in Paragraph 25 and specifically
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`denies that it has infringed or is infringing any valid and enforceable claim of any
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`asserted patent.
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`26. Amended Complaint: On information and belief, Apple further infringes the ʼ317 Patent
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`through additional products utilizing the same or reasonably similar functionalities as described
`
`above with respect to the iPhone XS (collectively, “the ʼ317 Accused Products”). The ʼ317
`
`Accused Products include all iOS devices including “Maps” and/or “Find My Friends”
`
`applications, for example, Apple iPhones (e.g., iPhone XS (model no. A1920), iPhone XS Max
`
`(model no. A1921), iPhone XR (model no. A1984), iPhone X (model nos. A1865 and A1901),
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`iPhone 8 Plus (model nos. A1864 and A1897), iPhone 8 (model nos. A1863 and A1905), iPhone
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`7 Plus (model nos. A1661 and A1784), iPhone 7 (model nos. A1660 and A1778), iPhone 6s Plus
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`(model nos. A1634 and A1687), iPhone 6s (model nos. A1633 and A1688), iPhone 6 Plus
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`(model nos. A1522 and A1524), iPhone 6 (model nos. A1549 and A1586), iPhone SE (model
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`nos. A1723 and A1662), iPhone 5s (model nos. A1453 and A1533), iPhone 5c (model nos.
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`A1456 and A1532), iPhone 11 (model no. A2111), iPhone 11 Pro (model no. A2160), and
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`iPhone 11 Pro Max (model no. A2161)); Apple iPads with cellular functionality and/or Apple
`
`-16-
`
`

`

`Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 17 of 102 PageID #: 5190
`
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`iPads with Wi-Fi and Indoor Maps (e.g., iPad Air (model no. A1475), iPad mini 2 (model no.
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`A1490), iPad Air 2 (model no. A1567), iPad Air 3 (model nos. A2123 and 2153), iPad mini 3
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`(model no. A1600), iPad mini 4 (model no. A1550), iPad mini 5 (model nos. A2124 and A2126),
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`iPad Pro (model no. A1709), iPad Pro (model no. A1652), iPad Pro (model nos. A1674 and
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`A1675), iPad Pro (model no. A2013), iPad (5th generation) (model no. A1823), iPad (6th
`
`generation) (model no. A1954), iPad (7th generation) (model nos. A2200 and A2198), iPad Pro
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`(2nd generation) (model no. A1671), and iPad Pro (3rd generation) (model nos. A2014 and
`
`A1895)); and Apple Watches (Apple Watch Series 5 (model nos. A2092, A2093, A2094, and
`
`A2095), Apple Watch Series 4 (model nos. A1975, A1976, A1977, and A1978), Series 3 (model
`
`nos. A1860, A1861, A1858, and A1859), and Series 2 (model nos. A1757, A1758, A1816, and
`
`A1817)). For example, each of these products also include a “Maps” application, a “Find My
`
`Friends” application, and/or “Location” services as advertised on Apple’s website. Maxell
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`reserves the right to discover and pursue any additional infringing devices that incorporate
`
`infringing functionalities. For the avoidance of doubt, the ʼ317 Accused Products are identified
`
`to describe Apple’s infringement and in no way limit the discovery and infringement allegations
`
`against Apple concerning other devices that incorporate the same or reasonably similar
`
`functionalities.
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`Apple’s Response: Apple admits that certain versions of iOS support a “Maps”
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`application and a “Find My Friends” application. Except as expressly admitted,
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`Apple denies all remaining allegations in Paragraph 26 and specifically denies that
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`it has infringed or is infringing any valid and enforceable claim of any asserted
`
`patent.
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`-17-
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`

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`Case 5:19-cv-00036-RWS Document 118 Filed 11/06/19 Page 18 of 102 PageID #: 5191
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`
`27. Amended Complaint: Apple has indirectly infringed at least claims 1-3, 5-15, 17, and 18
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`of the ʼ317 Patent in this District and elsewhere in the United States by, among other things,
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`actively inducing the use, offering for sale, selling, or importation of at least the ʼ317 Accused
`
`Products. Apple’s customers who purchase devices and components thereof and operate such
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`devices and components in accordance with Apple’s instructions directly infringe one or more
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`claims of the ʼ317 Patent in violation of 35 U.S.C. § 271. Apple instructs its customers through
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`at least user guides or websites, such as those located at: https://support.apple.com/en-
`
`US/manuals or https://www.apple.com/ios/maps/. Apple is thereby liable for infringement of the
`
`ʼ317 Patent pursuant to 35 U.S.C. § 271(b).
`
`Apple’s Response: Apple admits that the identified websites located at
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`https://support.apple.com/en_US/manuals and https://www.apple.com/ios/maps/ are
`
`hosted at an Apple-owned domain. Except as expressly admitted, Apple denies all
`
`remaining allegations in Paragraph 27 and specifically denies that it has infringed
`
`or is infringing any valid and enforceable claim of any asserted patent.
`
`28. Amended Complaint: Apple has indirectly infringed at least claims 1-3, 5-15, 17, and 18
`
`of the ʼ317 Patent, by, among other things, contributing to the direct infringement of others,
`
`including customers of the ʼ317 Accused Products by making, offering to sell, or selling, in the
`
`United States, or importing a component of a patented machine, manufacture, or combination, or
`
`an apparatus for use in practicing a patented process, constitut