Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 1 of 23 PageID #: 7027
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`MAXELL, LTD.,
`
`v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`Case No. 5:19-cv-00036-RWS
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`PLAINTIFF MAXELL, LTD.’S
`REPLY CLAIM CONSTRUCTION BRIEF
`
`
`1
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 2 of 23 PageID #: 7028
`
`TABLE OF CONTENTS
`
`I.  THE LAW REQUIRES THAT CLAIM CONSTRUCTION MUST BEGIN WITH
`PLAIN AND ORDINARY MEANING ........................................................................... 2 
`II.  APPLE IS ATTEMPTING TO SHIFT ITS BURDEN WHEN SEEKING TO
`CONSTRUE NON-MEANS TERMS UNDER 35 U.S.C. § 112, ¶ 6 ............................ 3 
`III.  U.S. PATENT NO. 6,329,794 (“THE ’794 PATENT”) ...................................................... 4 
`“capacity detector for detecting a remaining capacity of said battery” .............................. 4 
`IV.  U.S. PATENT NO. 6,928,306 (“THE ’306 PATENT”) ...................................................... 5 
`“ringing sound generator” ................................................................................................... 5 
`V.  U.S. PATENT NO. 7,116,438 (“THE ’438 PATENT”) ...................................................... 7 
`A. 
`“an input unit for receiving an input entered by a user” ......................................... 7 
`B. 
`“means for selecting an object displayed on said display apparatus” ..................... 8 
`C. 
`“display apparatus” ................................................................................................. 8 
`D. 
`“adding a comment to contributed data” ................................................................ 9 
`VI.  U.S. PATENT NO. 10,084,991 (“THE ’991 PATENT”) .................................................... 9 
`“communication apparatus” ................................................................................................ 9 
`VII.  U.S. PATENT NO. 8,339,493 (“THE ’493 PATENT”) ................................................... 10 
`A. 
`“effective scanning lines . . . of a display screen” ................................................ 10 
`B. 
`the “culling” terms ................................................................................................ 12 
`C. 
`the “mixing” terms ................................................................................................ 13 
`VIII.  U.S. PATENT NOS. 6,748,317, 6,430,498, AND 6,580,999 ......................................... 13 
`A. 
`“a device for getting location information denoting a present place . . .” ............ 14 
`B. 
`“device for retrieving . . .” / “device for getting a location information [ . . . ]” .. 15 
`
`
`
`- ii -
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 3 of 23 PageID #: 7029
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Adidas AG v. Under Armour, Inc.,
`No. 1:14-CV-00130, Dkt. No. 201 (D. Del. Dec. 15, 2015) ....................................................15
`
`Apple Inc. v. Motorola, Inc.,
`757 F.3d 1286 (Fed. Cir. 2014)..................................................................................................1
`
`Arlington Indus., Inc. v. Bridgeport Fittings, Inc.,
`632 F.3d 1246 (Fed. Cir. 2011)................................................................................................12
`
`Azure Networks, LLC v. CSR PLC,
`771 F.3d 1336 (Fed. Cir. 2014)..................................................................................................2
`
`Blitzsafe Tex. LLC v. Mitsubishi Motors Corp.,
`No. 2:17-cv-00430, 2019 WL 2212646 (E.D. Tex. May 22, 2019) ........................................15
`
`Danco, Inc. v. Fluidmaster, Inc.,
`No. 5:16-cv-73, 2017 WL 4225217 (E.D. Tex. Sept. 17, 2017)..............................................15
`
`EPOS Techs. Ltd. v. Pegasus Techs. Ltd.,
`766 F.3d 1338 (Fed. Cir. 2014)................................................................................................10
`
`Finjan, Inc. v. Secure Computing Corp.,
`626 F.3d 1197 (Fed. Cir. 2010)..................................................................................................3
`
`Fonar Corp. v. General Elec. Co.,
`107 F.3d 1543 (Fed. Cir. 1997)..................................................................................................6
`
`GPNE Corp. v. Apple Inc.,
`830 F.3d 1365 (Fed. Cir. 2016)............................................................................................9, 10
`
`ION, Inc. v. Sercel, Inc.,
`No. 5:06-CV-236-DF, 2010 WL 3913225 (E.D. Tex. Sept. 16, 2010) .....................................3
`
`Koninklijke Philips N.V. v. ZOLL Lifecor Corp.,
`No. 2:12-cv-1369, 2016 WL 6917267 (W.D. Penn. Feb 3, 2016).............................................7
`
`Lexos Media IP, LLC v. APMEX, Inc.,
`No. 2:16-CV-00747, 2017 WL 1021366 (E.D. Tex. Mar. 16. 2017) ......................................13
`
`Maxell Ltd. v. Huawei Device USA Inc.,
`297 F. Supp. 3d 668 (E.D. Tex. 2018) ...................................................................................2, 4
`
`
`
`
`
`- iii -
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 4 of 23 PageID #: 7030
`
`Playtex Prods., Inc. v. Procter & Gamble Co.,
` 400 F.3d 901, 909 (Fed. Cir. 2005).............................................................................................8
`
`Mobilemedia Ideas, LLC v. Apple Inc.,
`178 F. Supp. 3d 209 (D. Del. 2016) ...........................................................................................6
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd.,
`521 F.3d 1351 (Fed. Cir. 2008)..................................................................................................3
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..................................................................................9
`
`PPG Indus. v. Guardian Indus. Corp.,
`156 F.3d 1351 (Fed. Cir. 1998)..................................................................................................3
`
`SRAM Corp. v. AD–II Eng’g Inc.,
`465 F.3d 1351 (Fed. Cir. 2006)................................................................................................15
`
`Thorner v. Sony Comput. Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012)................................................................................................12
`
`THX, Ltd. v. Apple, Inc.,
`No. 13-cv-01161, 2016 U.S. Dist. LEXIS 153557 (N.D. Cal. Nov. 4, 2016) .........................15
`
`Statutes
`
`35 U.S.C. § 112 ............................................................................................................................3, 6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 5 of 23 PageID #: 7031
`
`
`
`Exhibit 15
`
`Exhibit 16
`
`Exhibit 17
`
`TABLE OF EXHIBITS
`
`Apple Inc.’s Responsive Claim Construction Brief in OpenTV, Inc. v. Apple
` Inc., No. 5:15-cv-02008, Dkt. No. 82
`
`Niantic, Inc.’s Responsive Claim Construction Brief in Barbaro Techs. LLC
` v. Niantic, Inc., No. 3:18-cv-02955, Dkt. No. 90
`
`U.S. Patent No. 8,363,087
`
`Exhibit 18
`
`File History of U.S. Patent No. 9,124,758
`
`Exhibit 19
`
`U.S. Patent No. 9,432,618
`
`Exhibit 20
`
`U.S. Patent No. 9,723,268
`
`Exhibit 21
`
`IPR2019-00071, Petition
`
`
`
`v
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 6 of 23 PageID #: 7032
`
`Apple’s Responsive Claim Construction Brief (Dkt. No. 161) (“RCC”) is full of bluster
`
`but lacks substance. Apple urges the Court to limit claim elements to specific embodiments by
`
`improperly invoking 35 U.S.C. § 112, ¶ 6 and by ignoring the plain and ordinary meaning. And
`
`rather than address evidence that contradicts its positions, Apple makes baseless allegations of
`
`Maxell “mischaracterizing the record” and “misappl[ying] the law.” RCC at 1.
`
`The one example of Maxell’s “misleading citations” that Apple substantively addresses
`
`in its brief1 is not a mischaracterization and highlights Apple’s misapplication of the law. Maxell
`
`never states that Apple’s expert (Dr. Menasce) concluded a “capacity detector” does not denote
`
`sufficient structure. Instead, Maxell noted that Dr. Menasce’s opinion that there were four known
`
`structures for implementing the claimed “capacity detector” supports Maxell’s position that a
`
`POSITA2 would understand this term connotes sufficient structure, such as those identified, to
`
`avoid means-plus-function treatment. See RCC at 1 (citing to Dkt. No. 161-2 ¶ 63). This supports
`
`Maxell’s position because “[t]he correct inquiry, when ‘means’ is absent from a limitation, is
`
`whether the limitation, read in light of the remaining claim language, specification, prosecution
`
`history, and relevant extrinsic evidence, has sufficiently definite structure to a person of ordinary
`
`skill in the art.” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014). Apple wants
`
`to skip this step, assume § 112, ¶ 6 applies, and argue that Maxell is misapplying the law.
`
`At bottom, Maxell’s proposed constructions are supported by the law, and any alleged
`
`misapplication is borne out of Apple’s misunderstanding of the facts, or Apple’s desire to
`
`improperly limit the claims by importing examples from the specification.
`
`
`1 Without seeking leave, Apple circumvents the page limit with an eight page Appendix 1 in an
`attempt to rebut portions of Maxell’s Opening Brief. Apple’s Appendix should not be
`considered. To the extent it is, Maxell respectfully requests the Court also consider Appendix A
`filed herewith, responding to Apple’s examples of Maxell’s alleged “misleading” citation.
`2 Apple has not disputed any of the levels of POSITA set forth by Maxell.
`- 1 -
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 7 of 23 PageID #: 7033
`
`I.
`
`THE LAW REQUIRES THAT CLAIM CONSTRUCTION MUST BEGIN WITH
`PLAIN AND ORDINARY MEANING
`
`
`
`As Apple and its counsel have asserted in other cases “‘[c]laim terms are generally given
`
`their plain and ordinary meanings to one of skill in the art when read in the context of the
`
`specification and prosecution history.’” See Apple’s Resp. CC Brief in OpenTV, Inc. v. Apple
`
`Inc., No. 5:15-CV-02008-EJD (N.D. Cal. Apr. 12, 2016) (“Ex. 15”) at 1 (quoting Hill-Rom
`
`Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014)); see also Niantic’s Resp. CC
`
`Brief in Barbaro Techns., LLC v. Niantic, Inc., No. 3:18-CV-02955-RS (N.D. Cal. Feb. 25,
`
`2019) (“Ex. 16”) at 13 (“‘Real-time information’ needs no construction because it can be readily
`
`understood by a jury.”). These previous statements are not surprising. “There are ‘only two
`
`exceptions to [the] general rule’ that claim terms are construed according to their plain and
`
`ordinary meaning: ‘(1) when a patentee sets out a definition and acts as his own lexicographer, or
`
`(2) when the patentee disavows the full scope of the claim term either in the specification or
`
`during prosecution.’” Maxell Ltd. v. Huawei Device USA Inc., 297 F. Supp. 3d 668, 679 (E.D.
`
`Tex. 2018) (internal citation omitted).
`
`Despite these clearly established and practiced claim construction principles, Apple
`
`argues that Maxell’s position that certain terms should be given their plain and ordinary meaning
`
`is somehow “improper.” RCC at 2-3. This is contrary to law and Apple’s own position in other
`
`matters. And the cases Apple cites are distinguishable. In Azure Networks, LLC v. CSR PLC, the
`
`Court adopted a construction where “[t]he parties do not meaningfully dispute the ordinary and
`
`customary meaning of” MAC address. See Azure Networks, LLC v. CSR PLC, 771 F.3d 1336,
`
`1347-48 (Fed. Cir. 2014). Similarly, O2 Micro Int’l Ltd. and Eon Corp. IP Holdings LLC simply
`
`stand for the proposition that a Court should resolve the parties’ dispute such that a disputed
`
`issue of claim construction is not ultimately decided by the jury. This does not require a claim
`
`
`
`2
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 8 of 23 PageID #: 7034
`
`construction beyond the plain and ordinary meaning of a term. See Finjan, Inc. v. Secure
`
`Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) (rejecting the defendants’ argument that
`
`“the district court shirked its responsibility to construe a disputed claim term by adopting ‘plain
`
`and ordinary meaning[.]’”); see also ION, Inc. v. Sercel, Inc., No. 5:06-CV-236-DF, 2010 WL
`
`3913225, at *6 (E.D. Tex. Sept. 16, 2010). Here, the dispute between the parties is not with
`
`respect to the definition of the plain and ordinary meaning of the terms but rather if the plain and
`
`ordinary meaning should be limited as a result of lexicography or disclaimer.
`
`Moreover, Apple points to terms like “culling” and “capacity detector” to argue that they
`
`must be construed because “jurors—who likely will not have the technical training of a POSA—
`
`will be left to their own devices to guess what these disputed terms mean.” RCC at 3. But this
`
`misses the point. If the Court resolves the parties’ dispute as to whether the plain and ordinary
`
`meaning should or should not be altered, then further construction is not necessarily needed. See
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008)
`
`(“[D]istrict courts are not (and should not be) required to construe every limitation present in a
`
`patent’s asserted claims.”). Juries are instructed on the level of ordinary skill in the art tasked
`
`with determining infringement. That there is some inherent uncertainly with submitting such
`
`issues to the jury is a “necessary consequence of treating infringement as a question of fact,” not
`
`an indication that the terms need further construction. PPG Indus. v. Guardian Indus. Corp., 156
`
`F.3d 1351, 1355 (Fed. Cir. 1998).
`
`Proposing that terms do not need construction is well-accepted practice.
`
`II.
`
`APPLE IS ATTEMPTING TO SHIFT ITS BURDEN WHEN SEEKING TO
`CONSTRUE NON-MEANS TERMS UNDER 35 U.S.C. § 112, ¶ 6
`
`Despite case law and evidence to the contrary, including from prior proceedings where
`
`these terms were understood without applying 35 U.S.C. § 112, ¶ 6, Apple alleges that “capacity
`
`
`
`3
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 9 of 23 PageID #: 7035
`
`detector,” “ringing sound generator,” and “input unit” “recite purely functional language” and
`
`that somehow “Maxell has failed to rebut Apple’s evidence that these claim phrases are purely
`
`functional.” RCC at 3-4. Apple, however, is confusing the law. “[Section] 112, ¶ 6 does not
`
`apply to all functional claim language. There is a rebuttable presumption that § 112, ¶ 6 applies
`
`when the claim language includes ‘means’ or ‘step for’ terms, and that it does not apply in the
`
`absence of those terms.” See Huawei Device, 297 F. Supp. 3d at 679-80 (citations omitted,
`
`emphasis added). This “presumption stands or falls according to whether one of ordinary skill in
`
`the art would understand the claim with the functional language, in the context of the entire
`
`specification, to denote sufficiently definite structure.” Id.
`
`Here, none of the disputed terms use “means” or “step for.” Thus, Apple has the burden
`
`to establish that one of ordinary skill in the art would not understand these terms to denote
`
`sufficient structure. Apple has not met this burden. These terms denote sufficient structure and
`
`their plain and ordinary meaning would be readily apparent to a POSITA as evidenced by (1)
`
`prior court decisions construing terms such as input device and detector; (2) opinions of experts,
`
`jurors, this Court, and/or the PTAB in prior proceedings involving these patents where § 112, ¶ 6
`
`was not invoked; and (3) extrinsic evidence including opinions of Maxell’s experts.
`
`Contrary to what Apple alleges, Maxell is not misapplying the law by relying on
`
`“examples of possible structures” to avoid invocation of § 112, ¶ 6. RCC at 4. Rather, Maxell is
`
`pointing to examples along with the context of the specification and findings of prior cases to
`
`support its position that a POSITA would understand that these terms denote sufficient structure.
`
`III. U.S. PATENT NO. 6,329,794 (“THE ’794 PATENT”)
`
`“capacity detector for detecting a remaining capacity of said battery”
`
`First, Apple does not dispute that in the ZTE case, the parties, experts, this Court, the
`
`PTAB, and the jurors had no trouble understanding “capacity detector” without a construction by
`
`
`
`4
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 10 of 23 PageID #: 7036
`
`the Court. See Dkt. No. 136 at 3. The record thus includes undisputed evidence that “capacity
`
`detector” denotes sufficient structure and should be given its plain and ordinary meaning.
`
`Second, Apple’s expert stated “[t]he word ‘detector’ by itself does not denote sufficiently
`
`definite meaning to a person of ordinary skill in the art.” Dkt. No. 161-2 ¶ 61 (emphasis added).
`
`He argued that “detector” could be a temperature/smoke/motion/radar detector. Id. But when
`
`faced with Federal Circuit precedent confirming that the word detector denotes sufficient
`
`structure and Apple’s own acknowledgment in this case that “image instability detector” denotes
`
`sufficient structure, Apple tries to walk back its argument by saying context matters. RCC at 7-8.
`
`But of course context matters. Context is why a POSITA knows that a “capacity detector” in the
`
`context of ’794 patent—detecting remaining battery life—has sufficient structure. See e.g. Dkt.
`
`No. 161-2 ¶ 61 (wherein Apple’s expert describes the implementation of a battery capacity
`
`detector in one of four ways and a combination thereof). Context is why a POSITA will not
`
`confuse the claimed “capacity detector” with a temperature, smoke, motion, or radar detector.
`
`Third, Apple attempts to distinguish Apple v. Motorola by arguing that the decision was
`
`addressing the term “detector” in a different context. Yet, the Court’s holding is clear:
`
`A limitation has sufficient structure when it recites a claim term with a structural
`definition that is either provided in the specification or generally known in the
`art. See, e.g., Flo Healthcare, 697 F.3d at 1374 . . . . In Personalized Media, we
`found that the claim term “detector,” by itself, connoted sufficient structure to
`a person of ordinary skill in the art. 161 F.3d at 704-05 (agreeing with ALJ that
`“‘detector’ had a well-known meaning to those of skill in the electrical arts
`connotative of structure”). There, we contrasted the structural term “detector”
`with generic, non-structural, terms such as “means,” “element,” and “device.”
`
`
`757 F.3d at 1299 (emphases added). Thus, the Federal Circuit held that “detector” by
`
`itself denotes sufficient structure.
`
`IV. U.S. PATENT NO. 6,928,306 (“THE ’306 PATENT”)
`
`“ringing sound generator”
`
`
`
`5
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 11 of 23 PageID #: 7037
`
`This term does not use “means for” or “step for” language and therefore it is presumed
`
`that §112 ¶ 6 does not apply. Nothing Apple states rebuts this presumption. Specifically, this
`
`term “as used in the context of the claim and specification[s] need[s] no further construction”
`
`and is a “specific structural element.” Ex. 4 ¶¶ 31-32.
`
`Again, context matters and Apple cannot deny the fact that in the year 2000 and before,
`
`the phrase “your phone is ringing” would be readily understood by most people and at least by
`
`users of “portable mobile units,” as the claim requires. Thus, a POSITA would understand that
`
`“ringing sound generator” denotes sufficient structure and would not associate the claimed term
`
`with a gas generator or cowbell, as Apple’s expert declares. Ex. 5 ¶ 32-33.
`
`Apple relies on Mobilemedia Ideas, LLC v. Apple Inc., where the court construed “alert
`
`sound generator” as a means-plus-function term; however, the court there found that the
`
`specification explains the operation of a call where an alert is generated and “[t]he term
`
`‘generator’ is not otherwise found in the specification.” 178 F. Supp. 3d 209, 218-19 (D. Del.
`
`2016). Therefore, the specification itself had defined the term “by its function.” Id. Here, the
`
`’306 Patent discloses the claimed “ringing sound generator” and its structure numerous times.
`
`See ’306 Patent, 2:12-23, Figs. 1 and 15. Apple’s reliance on Mobilemedia is thus misplaced.
`
`Likewise, Apple’s reliance on Fonar Corp. v. General Electric Co., 107 F.3d 1543, 1551-
`
`52 (Fed. Cir. 1997) is misplaced. Apple relies on that case to argue that “a specification cannot
`
`use open-ended language to expand the scope of a means-plus-function term beyond the
`
`structure disclosed in the specification.” RCC at 10. Yet, this holding applies only where the
`
`court first invokes §112 ¶ 6. Fonar, 107 F.3d at 1551. Where the court in rejected GE’s argument
`
`that §112 ¶ 6 applied, it held that the claim was not limited to the “generic gradient wave form”
`
`disclosed in the specification. Id. 1550-51.
`
`
`
`6
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 12 of 23 PageID #: 7038
`
`Further, Fonar limited expanding the scope of that particular means term because of
`
`generic, boiler-plate language in the specification. See Koninklijke Philips N.V. v. ZOLL Lifecor
`
`Corp., No. 2:12-cv-1369, 2016 WL 6917267, *24-27 (W.D. Penn. Feb 3, 2016). Unlike the
`
`undisclosed other waveforms in Fonar, the ’306 Patent identifies additional structure—such as
`
`sound sources to be implemented by the ringing sound generator in addition to those depicted in
`
`Figure 1 (e.g., MP3 and “human voices or the like”). Apple is admittedly excluding these. See
`
`’306 Patent at 2:30-36 and 5:1-8; see also RCC at 10.
`
`V.
`
`U.S. PATENT NO. 7,116,438 (“THE ’438 PATENT”)
`A.
`
`“an input unit for receiving an input entered by a user”
`
`Apple does not dispute that Courts have held that “input section” and “input device” are
`
`not means-plus-function terms and should be given their plain and ordinary meaning. See Dkt.
`
`No. 136 at 9-11. Apple has provided no rationale to deviate from these prior holdings. Thus, as
`
`previously held, “input unit” should also be given its plain and ordinary meaning.3
`
`Additionally, Apple does not dispute that its own expert opined 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.” Dkt. No. 136 at 11;
`
`RCC at 10-11 (not rebutting its expert’s admission). Apple also does not dispute that the patentee
`
`explicitly used “means for” language in dependent claim 3 when it intended to invoke §112 ¶ 6.
`
`Dkt. No. 136 at 11; RCC at 10-11. Apple instead cites Fonar again to limit input unit to a
`
`“keyboard.” RCC at 11. But Fonar does not apply because the claimed term is not a means-plus-
`
`function term, and even if it was, the ’438 Patent sufficiently discloses that “the input/output unit
`
`103 can be any component as long as the component is capable of receiving an input entered by
`
`the user and displaying an output to the user.” ’438 Patent at 3:59-67. In other words, it does not
`
`3 While Courts have held “unit” is a nonce word, it is no more nonce than “device” or “section.”
`7
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 13 of 23 PageID #: 7039
`
`state simply “any other input unit,” but provides additional detail. Thus, the ’438 Patent
`
`explicitly provides alternatives to a keyboard, and all disclosed structures should be considered.
`
`Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 909 (Fed. Cir. 2005).
`
`B.
`
` “means for selecting an object displayed on said display apparatus”
`
`Apple’s proposal for this term follows the same rational as for “input unit” and “display
`
`apparatus.” RCC at 12. Apple’s proposal here should be rejected for the same reasons.
`
`C.
`
`“display apparatus”
`
`Apple’s complaint here boils down to the lexicographer using too many words in the
`
`specification to define display apparatus. RCC at 12. That is the lexicographer’s right, which
`
`Apple cannot take away. Apple is also wrong in alleging that the specification “repeatedly and
`
`consistently” describes the display apparatus as an electronic notice board and describes the
`
`purported invention as an electronic notice board. RCC at 12-14. This is because the ’438 Patent
`
`explicitly defines “display apparatus” without mentioning “electronic notice board” (’438 Patent
`
`at 2:5-10) and further discloses that “display unit 212 can be any display device as long as the
`
`display device is capable of displaying information” (’438 Patent at 4:50-52).4 The disclosure of
`
`’438 Patent could not be any clearer and is not limited to an electronic-notice board. It is correct
`
`that the specification provides an exemplary disclosure of electronic notice board, but that is
`
`why dependent claims 6 and 7 are directed to this embodiment and limit the display apparatus in
`
`those claims to “an electronic notice-board.” While the doctrine of claim differentiation is not a
`
`hard and fast rule it also should not be disregarded completely, especially when doing so would
`
`render claims indefinite.5 See Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en
`
`
`4Apple never addresses this non-limiting disclosure of display unit in its brief. RCC at 12-14.
`5Applying Apple’s proposal would cause claim 6 to read “An electronic notice-board system
`including an electronic notice board according to claim 4 wherein said electronic notice board is
`an electronic notice board.
`
`
`
`8
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 14 of 23 PageID #: 7040
`
`banc) (explaining that claims should be construed to preserve their validity).
`
`Moreover, contrary to Apple’s allegations, construing display apparatus according to the
`
`definition in the specification does not render the language of claim 4 superfluous because it
`
`would be included in the preamble of claim 4 and claims are often structured in a manner where
`
`the preamble breathes life into the body of the claim by reciting later claimed limitations.
`
`Thus, the term should be construed according to the disclosed lexicography.
`
`D.
`
`“adding a comment to contributed data”
`
`Maxell incorporates by reference its arguments from its Opening Brief. Dkt. No. 136 at
`
`12-13. “Comment” does not need any construction as it is a well-understood term.6
`
`VI. U.S. PATENT NO. 10,084,991 (“THE ’991 PATENT”)
`
`“communication apparatus”
`
`Apple does not dispute that Courts have held that “communication device” and terms
`
`including “communication” should be given their plain and ordinary meaning. See Dkt. No. 136
`
`at 15; RCC at 15-17 (unaddressed). For the same reasons as previously held, “communication
`
`apparatus” should also be given its plain and ordinary meaning.
`
`Apple further alleges that “communication apparatus” should be construed as
`
`“videophone function-added TV receiver” because the patent characterizes the claimed device in
`
`this manner and the situation is “nearly identical to that in GPNE.” RCC at 15-17. This, however,
`
`is incorrect for the following reasons. First, in GPNE Corp. v. Apple Inc., the Court found that
`
`the specification “repeatedly and exclusively uses these words [pager] to refer to the devices in
`
`the patented system.” 830 F.3d 1365, 1370 (Fed. Cir. 2016) (emphasis added). This is not the
`
`case in the ’991 Patent because the specification also repeatedly discloses an additional
`
`embodiment of a “video telephone system” separate from the “videophone function-added TV
`
`6 Maxell addresses Apple’s allegation about allegedly “distorting” testimony in Appendix A.
`9
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 15 of 23 PageID #: 7041
`
`receiver.” ’991 Patent, 2:56-60, 3:29-33, 4:8-10, 5:26-28, and 6:8-10. Apple alleges that this
`
`“embodiment includes ‘a plurality of videophone function-added TV receiver sets.’” RCC at 16
`
`n.8. But that is incorrect. The specification does not disclose that this embodiment includes a
`
`videophone function-added TV receiver, only that the video telephone system “uses” a
`
`videophone function-added TV receiver. ’991 Patent, 2:56-60. To use something is to include it
`
`within the structure.
`
`Second, in GPNE the “inventor’s Rule 131 declaration consistently and exclusively
`
`describes the invention as a system of pagers.” GPNE, 830 F.3d at 1371. No such declaration
`
`exists here, nor does any other disavowal of claim scope and a change in title does not create a
`
`disavowal. Third, the prosecution history of the ’991 Patent supports Maxell’s proposed
`
`construction because the first parent of the ’991 Patent issued with claims drawn to a “television
`
`receiver with video telephone function for receiving a digital broadcast program.” U.S. Patent
`
`No. 8,363,087 (“Ex. 17 at 31:42-48”). Then during prosecution in the family, patentee canceled
`
`claims drawn to “a television receiver with video telephone function” (“Ex. 18 at 5”) and
`
`replaced it with a claim directed to a “digital information signal receiving and transmitting
`
`apparatus” “to provide a clear description of the claim in the present invention.” Id. at 7-8 (new
`
`claim 2).7 Finally, even if the only disclosed embodiment was that of a videophone function-
`
`added TV receiver, it is improper to read specific embodiments into the claims. See EPOS Techs.
`
`Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1341 (Fed. Cir. 2014). GPNE does not apply and
`
`Apple’s proposal should be rejected because it excludes a disclosed embodiment.
`
`VII. U.S. PATENT NO. 8,339,493 (“THE ’493 PATENT”)
`A.
`
`“effective scanning lines . . . of a display screen”
`
`
`7 Additional parents of the ’991 Patent also issued with claims drawn to “digital information
`transmitting and receiving apparatus.” Ex. 19 at 32:28-42; Ex. 20 at 32:32-35.
`10
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 164 Filed 12/16/19 Page 16 of 23 PageID #: 7042
`
`Adopting Apple’s construction for “effective scanning lines” requires reading limitations
`
`from the specification. Apple provides no support for holding that an invention can be so limited
`
`without clear lexicography or clear disavowal—both of which are “exacting” standards, and do
`
`not apply here. Instead, Apple’s argument relies on a single passage in the background of the
`
`specification that describes an NTSC television standard. RCC at 19 (citing ’493 Patent at 1:37-
`
`43). But the specification never “defines” effective scanning lines to mean interlaced scanning,
`
`as Apple argues, and the same passage Apple cites expressly states that the NTSC system is just
`
`an “example.” See ’493 Patent at 1:37-43. Nevertheless, Apple reasons that because the 240
`
`effective scanning lines used in this example represents only half of the 480 lines used by an
`
`NTSC display, “effective scanning lines” must refer only to interlaced scanning. RCC at 19.
`
`Apple’s logic is circular. In this example, the specification already states that the NTSC
`
`system “performs interlaced scanning.” ’493 Patent at 1:37-43. While the “effective scanning
`
`lines” in the interlaced example may indeed be 240, they would just as logically be all 480 lines
`
`in a progressive system. All Apple has demonstrated (if anything) is that, in the context of this
`
`interlaced scanning example, “effective scanning lines” is used consistently with interlaced
`
`scanning. But that says nothing about how this term would be used in the broader context, such
`
`as in the context of both interlaced and progressive scanning, as in the invention of claim 1.
`
`Apple’s second argument accuses Maxell of “expand[ing] claim scope far beyond the
`
`disclosed invention” and yet simultaneously “excluding all disclosed embodiments.” RCC at 20.
`
`Apple’s argument here appears to be that, if claim 1 could cover progressive scanning, it would
`
`exclude embodiments that mix pixel lines to match the lines of an interlaced NTSC display. See
`
`id. However, Maxell’s construction encompasses both progressive and interlaced scanning
`
`displays. And while this term should include those preferred embodiments, it should not be
`
`
`
`11
`
`

`

`Case 5:19-cv-0003