Case 5:19-cv-00036-RWS Document 130 Filed 11/14/19 Page 1 of 11 PageID #: 5394
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`Plaintiff
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`Civil Action NO. 5:19-cv-00036-RWS
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`v.
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`APPLE INC.,
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`Defendant.
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`JURY TRIAL DEMANDED
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`APPLE’S MOTION FOR LEAVE TO SUPPLEMENT INVALIDITY CONTENTIONS
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`Case 5:19-cv-00036-RWS Document 130 Filed 11/14/19 Page 2 of 11 PageID #: 5395
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION ............................................................................................................. 1
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`ARGUMENT ..................................................................................................................... 1
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`A.
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`B.
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`C.
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`D.
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`Factor 1: The Delay In Finding The Casio Camera Was Excusable ..................... 2
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`Factor 2: The Casio Camera Is Important Prior Art .............................................. 4
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`Factor 3: Maxell Will Not Suffer Any Prejudice ................................................... 5
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`Factor 4: Any Putative Prejudice Can Be Cured ................................................... 6
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`III.
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`CONCLUSION .................................................................................................................. 7
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`Case 5:19-cv-00036-RWS Document 130 Filed 11/14/19 Page 3 of 11 PageID #: 5396
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`I.
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`INTRODUCTION
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`Apple hereby moves under Patent Rule 3-6(b) for leave to supplement its invalidity
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`contentions to add the Casio QV-8000SX Digital Camera (“the Casio Camera”) as a prior art
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`product that invalidates the asserted claims of U.S. Patent No. 8,339,493 (the “’493 Patent).
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`Although Apple diligently searched for relevant prior art before serving its initial
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`invalidity contentions, Apple only discovered the Casio Camera prior art after it served its
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`contentions. Upon discovering this prior art around October 25, Apple notified Maxell and
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`provided an invalidity claim chart on November 4 to allow Maxell to fully examine this newly-
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`discovered prior art and Apple’s mapping of this prior art to the ’493 patent claims. Indeed,
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`Apple did this before Maxell’s deadline to make its preliminary selection of asserted patent
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`claims and offered to stipulate to an extension of that deadline to ensure that Maxell had
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`sufficient opportunity to review the prior art to make an informed selection of asserted patent
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`claims (Maxell declined). Apple has been diligent, the prior art reference is important to this
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`case, and the supplement will not prejudice Maxell or impact the case schedule. Accordingly,
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`there is good cause to grant Apple’s request to supplement.
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`II.
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`ARGUMENT
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`Apple has good cause, as required under P.R. 3-6(b), to supplement its invalidity
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`contentions to add this newly-discovered prior art. The Court has “broad discretion” to
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`determine whether good cause exists. S & E Enters., LLC v. SouthTrust Bank of Ala., NA, 315
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`F.3d 533, 535 (5th Cir. 2003). Courts in this District consider four factors to determine whether
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`good cause exists: “(1) the explanation for failure to meet the deadline; (2) the importance of the
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`thing that would be excluded; (3) potential prejudice in allowing the thing that would be
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`excluded; and (4) the availability of a continuance to cure such prejudice.” Alt v. Medtronic,
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`Inc., No. 2:04-CV-370, 2006 WL 278868, at *2 (E.D. Tex. Feb. 1, 2006) (citing
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`Case 5:19-cv-00036-RWS Document 130 Filed 11/14/19 Page 4 of 11 PageID #: 5397
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`STMicroelectronics, Inc. v. Motorola, Inc., 307 F. Supp. 2d 845, 850 (E.D. Tex. 2004)). All
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`factors weigh in favor of allowing Apple to supplement its invalidity contentions.
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`A.
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`Factor 1: The Delay In Finding The Casio Camera Was Excusable
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`Apple has been diligent in searching for prior art, and its discovery of the Casio Camera
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`prior art after service of its initial invalidity contentions was excusable. Apple’s diligence—both
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`in searching for prior art and in disclosing the new prior art to Maxell—supports a finding of
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`good cause. See Uniloc 2017, LLC v. Google LLC, No. 2:18-00497-JDG-RSP, Dkt. No. 98, at
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`*3 (E.D. Tex. Oct. 9, 2019) (granting motion for leave to supplement invalidity contentions
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`because defendant showed that it “exercised diligence in discovering the prior art”); Seven
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`Networks, LLC v. Google LLC, No. 2:17-cv-00442-JRG, Dkt. No. 218, at *4 (E.D. Tex. July 6,
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`2018) (finding “relative speed with which [Defendant] passed along the [new prior art] to
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`[Plaintiff] once it was received” demonstrated diligence).
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`First, Apple was diligent in searching for prior art before the August 14, 2019, deadline to
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`serve its invalidity contentions. Apple’s litigation counsel conducted numerous prior art
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`searches of publicly-available information. See Declaration of Luann Simmons (“Simmons
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`Decl.”), ¶ 2. Apple also retained an intellectual property law firm that specializes in patent
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`matters (Erise IP) and a prior art search firm (and theWise IP) to search for prior art relevant to
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`the ’439 patent. Id. at ¶¶ 3-4. Apple specifically investigated product prior art and, in fact,
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`located five prior art products that it included in its initial invalidity contentions. Id. at ¶ 5.
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`However, none of the firms discovered information relating to the Casio Camera before the
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`deadline for Apple’s invalidity contentions. Id. at ¶¶ 5-6.
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`Second, Apple’s discovery of the Casio Camera prior art after service of its invalidity
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`contentions was excusable because of the significant difficulty associated with locating technical
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`information about prior art products sold twenty years ago. The Casio Camera was a digital
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`Case 5:19-cv-00036-RWS Document 130 Filed 11/14/19 Page 5 of 11 PageID #: 5398
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`camera product sold by Casio in the late 1990s. See Simmons Decl., Ex. B at 1. Unlike patents
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`and technical publications, physical prior art products, such as the Casio Camera, are difficult to
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`find. There is no centralized database cataloging such products and their characteristics, and
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`there were already hundreds of digital camera models (if not more) on the market by the priority
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`date of the ’439 patent. See, e.g., Declaration of John Gibson (“Gibson Decl.”), ¶¶ 3-5. Thus,
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`searching for prior art products is a time-consuming and resource-intensive process that involves
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`manual searches, investigation, and follow-up. Although Apple did not find the Casio Camera
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`before the initial invalidity contentions deadline, it continued its diligent efforts to identify
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`relevant prior art as part of its on-going investigation of Maxell’s claims. Id., ¶¶ 2-3.
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`On or about October 16, a technical analyst working under the direction of Apple’s
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`counsel at Erise IP discovered a German website published by an individual camera enthusiast
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`that contained information relating to old models of digital cameras. See Gibson Decl., ¶ 3.
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`Based on his review of the website from October 16 to October 22, that analyst identified several
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`dozen early camera models, including the Casio Camera, that potentially included both video
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`recording and still image capturing modes—features relevant to the ’493 Patent. See id., ¶ 4.
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`The analyst immediately began searching for available technical information and product
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`literature for the Casio Camera. Id., ¶ 5. Following the leads from camera enthusiasts’ websites
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`to try to locate product information was time consuming because manufacturers like Casio
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`stopped selling these products nearly twenty years ago, literature and specifications were not
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`always archived from so long ago and, even if found, frequently did not contain sufficient
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`technical detail. Id.
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`As a result of diligent searching, the analyst found a copy of the Casio Camera’s product
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`manual. Id., ¶¶ 5-6. The product manual described the Casio Camera’s technical features in
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`Case 5:19-cv-00036-RWS Document 130 Filed 11/14/19 Page 6 of 11 PageID #: 5399
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`sufficient detail to confirm its relevance to the ’493 patent and this case. Id. As soon as the
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`relevance of the Casio Camera became apparent on October 25, Apple’s counsel prepared a
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`supplemental invalidity claim chart and promptly—within six business days of confirming the
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`relevance of the Casio Camera’s product manual—provided that chart to Maxell on November 4,
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`2019. See id., ¶ 6; Simmons Decl., Exs. A-B.
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`Because Apple was diligent in searching for prior art and in notifying Maxell promptly of
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`the discovery of the Casio Camera, Factor 1 weighs in favor of granting Apple leave to
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`supplement its invalidity contentions.
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`B.
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`Factor 2: The Casio Camera Is Important Prior Art
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`Under Factor 2, the Court should consider “the importance of the thing that would be
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`excluded” by a denial of the proposed supplementation. Medtronic, 2006 WL 278868, at *2.
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`The Casio Camera demonstrates prior invention, knowledge, and/or use of the purported
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`invention claimed by the ’493 patent. See Alcatel USA Sourcing, Inc. v. Microsoft Corp., No.
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`6:06-cv-500, slip op. at 5 (E.D. Tex. Oct. 3, 2008) (“Prior art references potentially rendering a
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`patent invalid are important.”). The Casio Camera also supports Apple’s contention that one of
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`skill in the art would have found the ’493 patent’s alleged inventions obvious in light of the
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`technology and knowledge existing in the art at the time of the earliest priority of the ’493 patent.
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`As this Court explained in a prior case, the ’493 patent relates “to an electric camera
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`having an image sensing device having a sufficient number of pixels that is capable of taking
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`highly detailed still images and moving video with reduced image quality without increasing
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`circuitry.” Maxell Ltd. v. Huawei Device USA Inc., No. 5:16-cv-00178-RWS, D.I. 175, at *74
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`(E.D. Tex. Jan. 31, 2018). The Casio Camera is exactly such a camera—it is a digital camera
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`capable of taking highly detailed, high-resolution still images and moving video with reduced
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`image quality using the same image sensing device. See, e.g., Simmons Decl., Ex. B at 10-12.
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`Case 5:19-cv-00036-RWS Document 130 Filed 11/14/19 Page 7 of 11 PageID #: 5400
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`Specifically, the Casio Camera anticipates several asserted claims of the ’493 patent under
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`Maxell’s apparent interpretation of the claim language, and, in combination with other references
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`already disclosed to Maxell, renders the remaining asserted claims obvious. See generally, id.
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`The importance of the Casio Camera is shown by the fact that Apple plans to select this prior art
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`among the small number of references it will pick for its preliminary election of prior art. See
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`D.I. 44 at 1. Thus, Apple will suffer significant prejudice if it is not allowed to present the Casio
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`Camera to the jury to prove invalidity. Accordingly, Factor 2 weighs in favor of granting Apple
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`leave to supplement its invalidity contentions.
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`C.
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`Factor 3: Maxell Will Not Suffer Any Prejudice
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`Maxell would not suffer any prejudice from allowing Apple’s proposed supplementation.
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`Apple timely informed Maxell of the new prior art by providing a detailed invalidity chart within
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`days of discovering the Casio Camera’s relevance to the ’493 patent. It did so before Maxell was
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`required to make its preliminary election of asserted claims, which Apple offered to extend and
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`Maxell rejected. See Simmons Decl., Ex. A. And Maxell’s final election of asserted claims is
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`more than four months away. See Dkt. No. 46 at 5, 6. Indeed, this case is still in its early stages.
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`No fact deposition has yet to take place and fact discovery will not end until March 31, 2020—
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`nearly five months after Apple’s disclosure. Opening expert reports are not due until April 2020,
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`and rebuttal expert reports—when Maxell’s experts must address Apple’s prior art—are not due
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`until May 2020. Maxell has ample time to conduct fact and expert discovery and to address any
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`issues raised by the Casio Camera.
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`Moreover, by the time Maxell filed its opening claim construction brief, 14 days had
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`passed from when Apple disclosed its proposed supplementation to Maxell. And because Apple
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`applies a mapping of the Casio Camera to the asserted claims of the ’493 patent consistent with
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`the mapping for other prior art cameras disclosed in Apple’s invalidity contentions, the Casio
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`Case 5:19-cv-00036-RWS Document 130 Filed 11/14/19 Page 8 of 11 PageID #: 5401
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`Camera does not raise any new claim construction issues.
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`Further, Apple seeks to supplement its invalidity contentions to add only one product
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`prior art reference that applies to only a single patent out of ten patents-in-suit. Although the
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`Casio Camera claim chart cites additional secondary references in support of obviousness
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`combinations, each charted secondary reference was already cited for the same claims in Apple’s
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`original invalidity contentions. See Simmons Decl., Ex. B at 1-2. Thus, the relative impact to
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`Maxell is low, if any, especially considering the significant time remaining in discovery. See,
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`e.g., Tyco Healthcare Grp. LP v. E-Z-M, Inc., No. 2:07-CV-262 (TJW), 2010 WL 7853420, at *1
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`(E.D. Tex. Apr. 1, 2010) (granting leave to supplement invalidity contentions sought six months
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`before trial).
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`Thus, Maxell will suffer no prejudice from Apple’s supplementation. See, e.g., E-Watch
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`Inc. v. Apple Inc., No. 2:12-cv-1061-JRG-RSP, Dkt. No. 230, at *3 (E.D. Tex. Dec. 5, 2014)
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`(finding “no substantial prejudice” in granting pre-Markman supplementation of invalidity
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`contentions). Therefore, Factor 3 weighs in favor of granting Apple leave to supplement its
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`invalidity contentions.
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`D.
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`Factor 4: Any Putative Prejudice Can Be Cured
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`With trial almost a year away, “the availability of a continuance to cure” any prejudice to
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`Maxell weighs strongly in favor of permitting Apple’s supplementation. Alt, 2006 WL 278868,
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`at *2. As discussed above, given that this case is in its early stages and that Apple promptly
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`disclosed the Casio Camera before Maxell’s preliminary election of prior art and opening claim
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`construction brief, no prejudice exists and no continuance should be necessary. However, given
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`that trial is nearly a year way, any putative prejudice to Maxell could be cured by a short
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`extension of the fact and/or expert discovery deadlines, should the Court deem an extension
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`necessary. See Sybase, Inc. v. Vertica Sys., Inc., No. 6:08 CV 24 (LD), 2009 WL 4574690 at *3
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`Case 5:19-cv-00036-RWS Document 130 Filed 11/14/19 Page 9 of 11 PageID #: 5402
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`(E.D. Tex. Nov. 30, 2009) (“[P]otential prejudice can easily be cured with an appropriate
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`continuance of the discovery deadline if needed.”). Therefore, even if there were some prejudice
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`to Maxell resulting from the proposed supplementation (there is not), such prejudice can easily
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`be cured by a continuance. Thus, Factor 4 also favors allowing the supplementation.
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`III. CONCLUSION
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`For the above reasons, Apple respectfully requests that the Court grant it leave to
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`supplement its invalidity contentions to include the Casio Camera prior art.
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`November 14, 2019
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`/s/ Luann L. Simmons
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`Luann L. Simmons (Pro Hac Vice)
`lsimmons@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center
`28th Floor
`San Francisco, CA 94111
`Telephone: 415-984-8700
`Facsimile: 415-984-8701
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`Xin-Yi Zhou (Pro Hac Vice)
`vzhou@omm.com
`Anthony G. Beasley (TX #24093882)
`tbeasley@omm.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
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`Laura Bayne Gore (Pro Hac Vice)
`lbayne@omm.com
`O’MELVENY & MYERS LLP
`Times Square Tower, 7 Times Square
`New York, NY 10036
`Telephone: 212-326-2000
`Facsimile: 212-326-2061
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`Melissa R. Smith (TX #24001351)
`melissa@gilliamsmithlaw.com
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`Case 5:19-cv-00036-RWS Document 130 Filed 11/14/19 Page 10 of 11 PageID #: 5403
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`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
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`Attorneys for Defendant Apple Inc.
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`Case 5:19-cv-00036-RWS Document 130 Filed 11/14/19 Page 11 of 11 PageID #: 5404
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court's
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`CM/ECF system per Local Rule CV-5(a)(3) on November, 14, 2019.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`CERTIFICATE OF CONFERENCE
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`On November 4, 2019, pursuant to Local Rule CV-7(h), counsel for Defendants met and
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`conferred with counsel for Plaintiff, and counsel for Plaintiff indicated that Plaintiff is opposed to
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`the relief sought by this Motion.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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