Case 5:19-cv-00036-RWS Document 161-20 Filed 12/09/19 Page 1 of 9 PageID #: 7003
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`Case 5:19-cv-00036—RWS Document 161-20 Filed 12/09/19 Page 1 of 9 PageID #: 7003
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`APPENDIX 1
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`APPENDIX 1
`
`

`

`Case 5:19-cv-00036-RWS Document 161-20 Filed 12/09/19 Page 2 of 9 PageID #: 7004
`Appendix 1: Maxell’s Misleading Citations to Apple’s Experts
`
`Page No.
`(D.I. 136)
`3, 5
`
`Maxell’s Characterization
`
`“Both parties’ experts agree that
`the term connotes sufficient
`structure to a person of ordinary
`skill in the art in the form of one or
`more known hardware and/or
`software solutions.”
`(citing to Menasce Decl. at ¶ 63)
`
`“In fact, both parties’ experts were
`able to identify a number of
`software and hardware solutions for
`implementing the capacity detector,
`confirming that the term itself
`conveys ‘a variety of structures’ to
`persons skilled in the art.”
`(citing to Menasce Decl. at ¶ 63)
`
`5
`
`“Another of Apple’s experts in this
`case even conceded that ‘battery
`capacity detector’ has a ‘much
`more’ specific structure than the
`claim term ‘device.’”
`(citing to Paradiso Dep. Tr. at 48:24-
`49:1)
`
`Apple’s Expert
`
`Menasce Decl. (Simmons Decl., Ex. A) at ¶ 63:
`
`
`And even if the “capacity detector” is limited to those devices that perform
`the function of “detecting a remaining battery capacity of [a] battery,” this
`does not sufficiently describe a structure for such devices. This is
`because there can be many different classes of structures that could
`perform the function of “detecting a remaining capacity of [a] battery.”
`For example, this function could be performed by a software that
`implements an algorithm that determines the remaining capacity of a
`battery. This function could be performed by a specialized hardware
`component specifically built for the purposes of determining the remaining
`capacity of a battery. This function could be performed by an analog
`circuit designed to output a signal that corresponds to the remaining
`capacity of a battery. This function could also be performed by a digital
`circuit that turns on or off based on the remaining capacity of a battery.
`This function could be performed by any combination of the hardware or
`software devices that are listed above. Therefore, a person of ordinary
`skill in the art around the filing of the ’794 patent would not have known
`what structure is intended for a “capacity detector” recited in the ’794
`patent, claims 1 and 9.
`
`Paradiso Dep. Tr. (Simmons Decl., Ex. L) at 47:21-48:5, 48:20-49:9
`(objections omitted):
`
`
`Q. What do you mean by the fact that these terms do not connote any
`specific structure?
`A. A device can be anything. It can be an abacus, it can be a palmtop
`computer or phone. It’s a very generic term, so it’s very open. And in a
`patent, when you interpret a patent, you need to define what the device is,
`what you mean by “device.” And this is something that PTAB agreed
`with, also you guys agreed with in the former IPR.
`
`1
`
`

`

`Case 5:19-cv-00036-RWS Document 161-20 Filed 12/09/19 Page 3 of 9 PageID #: 7005
`Appendix 1: Maxell’s Misleading Citations to Apple’s Experts
`
`Page No.
`(D.I. 136)
`
`Maxell’s Characterization
`
`7
`
`“Apple’s expert justifies this by
`arguing that the sound generator
`could be confused with ‘electric
`generators, engine generators, gas
`generators, motor generators, signal
`generators,’ or even a ‘cow bell.’”
`(citing to Bederson Decl. at ¶ 32)
`
`
`Apple’s Expert
`
`…
`Q. Would a term like, for example, “GPS” provide sufficient structure?
`A. “GPS receiver” would.
`Q. Would you -- something like a “battery capacity detector” provide
`sufficient structure?
`A. For a device, and not in this context. You’re talking about a totally
`different patent, perhaps.
`Q. Different context, yeah.
`A. I think it depends. There are so many ways of doing a battery
`capacity detector, but that is much more specific than “device,” I’ll give
`you that.
`
`Bederson Decl. (Simmons Decl., Ex. B) at ¶¶ 32-33:
`
`
`At the outset, I note that one of ordinary skill in the art would not
`understand the term “generator” to denote sufficiently definite structure.
`Instead, the “generator” term would be understood as anything that
`performs the function of generating. Indeed, in different contexts, the
`word “generator” can be used to refer to entirely different classes of
`structures. Some examples include electric generators, engine
`generators, gas generators, motor generators, signal generators, and
`many others.
`
`Further, one of ordinary skill in the art would not understand the term
`“ringing sound generator” to convey any definite structure or device.
`Although the term does not use the “means for…” formulation, the term
`“ringing sound generator” is merely a descriptive term that repeats its
`intended function, i.e., to generate a ringing sound. Thus, one of ordinary
`skill in the art would understand that a “ringing sound generator” could
`be anything that generates a ringing sound. For example, a person
`ringing a cow bell could be a “ringing sound generator.”
`
`2
`
`

`

`Case 5:19-cv-00036-RWS Document 161-20 Filed 12/09/19 Page 4 of 9 PageID #: 7006
`Appendix 1: Maxell’s Misleading Citations to Apple’s Experts
`
`Page No.
`(D.I. 136)
`10-11
`
`Maxell’s Characterization
`
`Even Apple’s own expert opines that
`a person of ordinary skill in the art
`would understand that “input unit”
`corresponds to known structures
`such as a “mouse, keyboard, touch
`screen, touch-pen, [and] voice-
`activated inputs.
`(citing to Menasce Decl. at ¶ 79 and
`Menasce Dep. Tr. at 85:12-18 and
`86:13-15)
`
`Apple’s Expert
`
`Menasce Decl. (Simmons Decl., Ex. A) at ¶ 79:
`
`
`The term “input unit” is not a term of art used in the field relevant to the
`’438 patent. There is no commonly understood structure for an “input
`unit.” This is because many different classes of structure can act as an
`“input unit.” For example, “input unit” could refer to a wide variety of
`structures implemented by many possible hardware/software alternatives
`(e.g., mouse, keyboard, touch screen, touch-pen, voice-activated inputs).
`Some of these input mechanisms are more appropriate for some
`applications as compared to others. For example, touch-pen is more
`appropriate for inputting hand-written text, drawings, and voice-activated
`inputs nay be more appropriate for people with some types of disabilities.
`Therefore, a person of ordinary skill in the art around the filing of the
`’438 patent would not have known what structure is intended for an
`“input unit for receiving an input entered by a user.”
`
`
`Menasce Dep. Tr. (Simmons Decl., Ex. J) at 84:24-85:18 and 86:13-16:
`(objections omitted):
`
`
`Q. And a person of ordinary skill in the art would understand the touch
`screen is a type of input; right?
`. . .
`A. Well, it’s -- at the time we had -- a person of ordinary skill in the art at
`that time would probably not have touch screens. Touch screens, I believe,
`were not that prevalent at the time of the ’438 patent. So, if you told that
`person that touch screen is an input device, they may not have understood
`that properly.
`Q. Right. What about a keyboard?
`A. Keyboard, that’s an example.
`Q. What about a mouse?
`A. That’s another example --
`
`3
`
`

`

`Case 5:19-cv-00036-RWS Document 161-20 Filed 12/09/19 Page 5 of 9 PageID #: 7007
`Appendix 1: Maxell’s Misleading Citations to Apple’s Experts
`
`Apple’s Expert
`
`Q. Voice recognition?
`A. -- of an input device.
`…
`Q. Did you have to do any special research to come up with these
`examples of input units?
`A. No. These are examples that I know about based on my experience.
`
`Menasce Dep. Tr. (Simmons Decl., Ex. J) at 98:3-10, 99:22-100:2, 102:10-22
`(objections omitted):
`
`
`Q. The way you’re interpreting comment, is that sort of the lay person’s
`understanding of comment, like any person on the street would understand
`the term?
`A. As I said before, comment is not a term of art. So it depends on the
`context. You have to qualify what you mean by comment.
`
` …
`
`
`
`
`Q. Is that context narrower than how a lay person would understand the
`word comment?
`A. Yes, it is, because if you asked a lay person on the street what is a
`comment, you would get all sorts of answers, right? That’s a very broad
`term.
`
` …
`
`
`
`
`Q. I think you said before that a lay person wouldn’t necessarily
`understand a comment to be limited to written comments; right?
`A. Without getting to the context of this, right. But comment here has a
`very well defined meaning.
`
`4
`
`Page No.
`(D.I. 136)
`
`Maxell’s Characterization
`
`13
`
`“Likewise, Apple attempts to limit
`the claimed “comment” to “written
`content” only. But even Apple’s
`expert admits that lay persons
`would understand the meaning of
`‘comment’ and that a comment as
`it is generally understood would not
`be limited just to written content.”
`(citing to Menasce Dep. at 102:10-
`15)
`
`

`

`Case 5:19-cv-00036-RWS Document 161-20 Filed 12/09/19 Page 6 of 9 PageID #: 7008
`Appendix 1: Maxell’s Misleading Citations to Apple’s Experts
`
`Page No.
`(D.I. 136)
`
`Maxell’s Characterization
`
`21
`
`“Apple’s expert, Dr. Bovik, argues
`that claim 1 of the ’493 Patent
`should be limited to interlaced
`scanning displays because the
`patent’s use of ‘vertical’ and
`‘horizontal’ ‘blanking periods’
`suggests that the patent’s examples
`describe interlaced scanning.”
`(no citation provided)
`
`Apple’s Expert
`
`Q. Right. I’m asking the guy on the street. Someone comes up to you, as
`I’m sure they always do, and says, Dr. Menasce, what does comment
`mean. You wouldn’t tell them that it has to be written; right?
`A. I would say comment in which context. That would be my answer.
`
`Bovik Decl. (Simmons Decl., Ex. C) at ¶¶ 31-33:
`
`
`There is a short time gap between the display of the bottom-rightmost pixel
`and the display of the top-leftmost pixel of the next field, during which the
`scanning mechanism may move from the bottom right corner of the screen
`back to the top left corner of the screen. This period of time is referred to
`as a “vertical blanking period” or “VBI.” This “vertical blanking period”
`is unique to a raster scanning display, and it is mentioned over 20 times
`in the specification of the ’493 Patent. See, e.g., ’493 Patent at 1:42, 1:56,
`5:19-62, 7:52-56, 9:2, 9:31, 10:51-61, 10:64-11:5, 13:28, 13:43-55. The
`specification also refers to the “horizontal blanking period” (e.g., ’493
`Patent at 5:58-62, 7:47, 8:60, 11:2, 13:57). The “horizontal blanking
`period” refers to the time gap between the completion of scanning of one
`line to the beginning of scanning for the next line. The concept of
`“horizontal blanking period” is also used in the context of a raster
`scanning display.
`…
`At the time of the invention of the ’493 Patent, television systems followed
`display standards that used scanning displays. At the time of the invention,
`NTSC, PAL, and SECAM were three common television systems used
`around the world. Each of these television systems used interlaced display.
`…
`A person of ordinary skill in the field of ’493 Patent at the time of the
`alleged invention would have been familiar with the NTSC or PAL
`display standard, and would have known that both systems use interlaced
`scanning display, i.e., a scanning display in which there are two fields
`
`5
`
`

`

`Case 5:19-cv-00036-RWS Document 161-20 Filed 12/09/19 Page 7 of 9 PageID #: 7009
`Appendix 1: Maxell’s Misleading Citations to Apple’s Experts
`
`Page No.
`(D.I. 136)
`
`Maxell’s Characterization
`
`28
`
`“Apple’s only justification for
`narrowing the proposed structure
`appears to be based on a
`construction proposed by ASUS in
`an inter partes petition under a
`different claim construction
`standard.”
`(citing to Paradiso Decl. at ¶ 32)
`
`Apple’s Expert
`
`that are interlaced to create one frame of image. See, e.g., ’493 Patent at
`1:30-34 (“In a video camera to photograph moving images, it is generally
`assumed that the video is viewed on a display such as television monitor
`and thus the camera is designed to produce output signals conforming to a
`television system such as NTSC and PAL.”); 1:37-43. In an interlaced
`display (shown in the illustration below right), one frame of image is
`divided into two fields, one containing even-numbered lines, and one
`containing odd-numbered lines. See e.g., ’493 Patent at Figs. 4, 6, 8, 8:8-
`13 (“FIG. 6 shows combinations of pixels to be cyclically mixed on the A
`field and the B field . , , . In the interlaced scanning, scanning lines of the
`A field and the B field are located at the centers of adjoining scanning lines
`on other field.”) This is in contrast to what is called “progressive scan”
`display (shown in the illustration below left), which displays the full frame
`one line at a time from top to bottom. Although both “interlaced scan” and
`“progressive scan” were known at the time of the ’493 Patent, common
`television systems of the time, such as NTSC and PAL, used interlaced
`scan method.
`Paradiso Decl. (Simmons Decl., Ex. D) ¶¶ 28-32:
`
`
`The “device for getting location information,” according to the ’498
`specification, therefore requires a wireless receiver (such as a wireless
`antenna, a GPS, or PHS, etc.), and an infrared ray sensor, and a control
`unit “for analyzing received data, thereby calculating location
`information.” Id.
`
`
`
`The goal of the Asserted Navigation Patents is to facilitate walking
`navigation, i.e., providing location information to a walking user. See ’498
`Patent at 1:10-13. To achieve this, a POSITA would understand that the
`experience of the walking user would be improved by providing functional
`location determination for both open/outdoor areas and in
`obstructed/indoor areas. Especially at or around the time of the alleged
`
`6
`
`

`

`Case 5:19-cv-00036-RWS Document 161-20 Filed 12/09/19 Page 8 of 9 PageID #: 7010
`Appendix 1: Maxell’s Misleading Citations to Apple’s Experts
`
`Apple’s Expert
`
`invention, 1999, GPS/wireless signals worked well in outdoor or otherwise
`unobstructed areas, but were not ideal for providing location information
`indoors or in environments where signals are obstructed. …
`
`At around the time of the alleged invention, I am aware that combinations
`of infrared sensors and beacons were often used to provide location
`information in places where GPS was unavailable, such as indoors. For
`example, I have launched and run several projects in my own research
`team that leveraged and developed localization technology of various sorts,
`have put together classes at MIT involving indoor localization (e.g.,
`MAS.S61, ‘Emerging Technologies in Location-Aware Computing’), and
`have advised students in my own group and across the Media Lab and MIT
`in this area. Several of my projects have used IR and/or RF to locate users
`within a building or relative to one another. See, e.g., UberBadge, a
`wearable computer platform with multiple processors, including RF and IR
`communication (https://resenv.media.mit.edu/#Projects#the-uberbadge).
`
`Therefore, to achieve the goal of walking navigation, a POSITA would
`have understood, consistent with the disclosures in the specification, that a
`combination of GPS and some means of indoor location determination,
`likely an infrared sensor, would be required to cover as many potential use
`scenarios as possible. Extrinsic evidence confirms that a POSITA at the
`time of the alleged invention would have known that an infrared ray sensor
`was commonly used, in conjunction with GPS, to obtain location
`information. Specifically, those skilled in the art understood that infrared
`ray sensors were especially adept at determining location when a walking
`user is indoors. …
`
` have also been informed that the Patent Trial and Appeal Board adopted
`in IPR2019-00071 (ASUSTek Computer Inc., et al. v. Maxell, Ltd.) the
`construction that Apple now proposes. There, the Petitioner ASUSTek
`
`7
`
` I
`
`Page No.
`(D.I. 136)
`
`Maxell’s Characterization
`
`

`

`Case 5:19-cv-00036-RWS Document 161-20 Filed 12/09/19 Page 9 of 9 PageID #: 7011
`Appendix 1: Maxell’s Misleading Citations to Apple’s Experts
`
`Page No.
`(D.I. 136)
`
`Maxell’s Characterization
`
`
`
`Apple’s Expert
`
`proposed the same construction offered by Apple here, and Maxell did not
`dispute it. The PTAB noted that the construction was “supported by the
`cited portions of the Specification of the ’498 patent” (IPR2019-00071,
`Paper No. 7 at 9) which were also excerpted above.
`
`
`8
`
`