Case 5:19-cv-00036-RWS Document 164-8 Filed 12/16/19 Page 1 of 11 PageID #: 7321
`
`Appendix A: Maxell’s Response to Apple’s Appendix 1 (Dkt. No. 161-20)
`
`Maxell’s Response
`
`As the underlining shows, Apple’s
`expert (Dr. Menasce) did provide
`four structures of implementing a
`capacity detector providing evidence
`that a POSITA would recognize
`“capacity detector” to have a known
`structure and also providing
`evidence that a POSITA would
`know the plain and ordinary
`meaning of this term. While Dr.
`Menasce’s conclusion was different,
`his opinions (underlined herein)
`support Maxell’s position.
`
`Page No.
`(D.I. 136)
`
`Maxell’s
`Characterization
`
`
`Apple’s Expert
`
`3, 5
`
`“Both parties’
`experts agree that
`the term connotes
`sufficient structure
`to a person of
`ordinary skill1 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.”
`
`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
`
`
`1Bold and italics were included in the original by Apple. Underlining has been added by Maxell.
`
`
`
`1
`
`

`

`Case 5:19-cv-00036-RWS Document 164-8 Filed 12/16/19 Page 2 of 11 PageID #: 7322
`
`Page No.
`(D.I. 136)
`
`Maxell’s
`Characterization
`
`Apple’s Expert
`
`Maxell’s Response
`
`(citing to Menasce
`Decl. at ¶ 63)
`
`“capacity detector” recited in the ’794 patent,
`claims 1 and 9.
`
`As the underlining shows, Apple’s
`expert (Dr. Paradiso) did testify that
`“battery capacity detector” has a
`“much more specific” structure than
`device. He even exclaimed “I’ll
`give you that.”
`
`Maxell’s has cited verbatim to what
`Dr. Paradiso stated, i.e., he agrees
`that a battery capacity detector has a
`much more specific structure than
`device.
`
`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)
`
`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
`…
`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.
`
`2
`
`

`

`Case 5:19-cv-00036-RWS Document 164-8 Filed 12/16/19 Page 3 of 11 PageID #: 7323
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`Page No.
`(D.I. 136)
`
`Maxell’s
`Characterization
`
`Apple’s Expert
`
`Maxell’s Response
`
`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)
`
`As the underlining shows, Apple’s
`expert (Dr. Bederson) did opine that
`this term “would be understood as
`anything that performs the function
`of generating . . . [s]ome examples
`include electric generators, engine
`generators, gas generators, motor
`generators, signal generators.” And
`further opined that “a person ringing
`a cow bell could be a ‘ringing sound
`generator.’”
`
`Maxell’s has quoted Dr. Bederson’s
`examples verbatim.
`
`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.”
`
`10-11
`
`
`
`Even Apple’s own
`expert opines that a
`person of ordinary
`skill in the art would
`
`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
`
`As the underlining shows, Apple’s
`expert (Dr. Menasce) did opine that
`he is aware of known structures for
`an input unit including a “mouse,
`
`3
`
`

`

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`Page No.
`(D.I. 136)
`
`Maxell’s
`Characterization
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`Apple’s Expert
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`Maxell’s Response
`
`keyboard, touch screen, touch-pen,
`[and] voice-activated inputs.”
`
`During his deposition, Dr. Menasce
`even confirmed that a POSITA
`would recognize a keyboard, a
`mouse, and voice recognition as an
`example of an input device.
`
`These examples provide evidence
`that a POSITA would have
`understood “input unit” to have a
`known structure and also provides
`evidence that a POSITA would
`know the plain and ordinary
`meaning of this term.
`
`
`
`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)
`
`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
`
`
`
`4
`
`

`

`Case 5:19-cv-00036-RWS Document 164-8 Filed 12/16/19 Page 5 of 11 PageID #: 7325
`
`Page No.
`(D.I. 136)
`
`Maxell’s
`Characterization
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`Apple’s Expert
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`Maxell’s Response
`
`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 –
`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?
`
`5
`
`“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.”
`
`13
`
`
`
`As the underlining shows, Dr.
`Menasce did testify that it is “right”
`that a lay person would not
`necessarily understand comment to
`be limited to written comments and
`that a lay person would give “all
`sorts of answers” explaining what a
`comment is because the person
`would understand this term.
`
`

`

`Case 5:19-cv-00036-RWS Document 164-8 Filed 12/16/19 Page 6 of 11 PageID #: 7326
`
`Page No.
`(D.I. 136)
`
`Maxell’s
`Characterization
`
`(citing to Menasce
`Dep. at 102:10-15)
`
`“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
`
`21
`
`
`
`Apple’s Expert
`
`Maxell’s Response
`
`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.
`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
`
`6
`
`As the underlining shows and as
`Apple’s proposed construction
`shows, Dr. Bovik does argue that
`claim 1 of the ’493 Patent should be
`limited to interlaced scanning.
`
`Further, Dr. Bovik does opine that
`the reason for this narrowing is
`because at the time of the invention
`of the ’493 Patent, “television
`
`

`

`Case 5:19-cv-00036-RWS Document 164-8 Filed 12/16/19 Page 7 of 11 PageID #: 7327
`
`Page No.
`(D.I. 136)
`
`Maxell’s
`Characterization
`
`the patent’s examples
`describe interlaced
`scanning.”
`(no citation provided)
`
`Apple’s Expert
`
`Maxell’s Response
`
`systems followed display standards
`that used scanning displays.” And
`according to Dr. Bovik these
`displays were considered scanning
`displays because “‘vertical blanking
`period’ is unique to raster scanning
`display” and “‘horizontal blanking
`period’ is also used in the context of
`a raster scanning display.”
`
`
`
`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 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
`
`
`
`7
`
`

`

`Case 5:19-cv-00036-RWS Document 164-8 Filed 12/16/19 Page 8 of 11 PageID #: 7328
`
`Page No.
`(D.I. 136)
`
`Maxell’s
`Characterization
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`Apple’s Expert
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`Maxell’s Response
`
`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, 8:813 (“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.
`
`8
`
`“Apple’s only
`justification for
`narrowing the proposed
`structure appears to be
`based on a construction
`proposed by ASUS in
`an inter partes petition
`
`28
`
`
`
`As the underlining shows, Dr.
`Paradiso did justify narrowing the
`proposed structure based on the
`construction proposed by ASUS in
`IPR 2019-00071, which is
`confirmed by Apple’s Responsive
`Claim Construction Brief where
`
`

`

`Case 5:19-cv-00036-RWS Document 164-8 Filed 12/16/19 Page 9 of 11 PageID #: 7329
`
`Page No.
`(D.I. 136)
`
`Maxell’s
`Characterization
`
`under a different claim
`construction standard.”
`(citing to Paradiso
`Decl. at ¶ 32)
`
`Apple’s Expert
`
`Maxell’s Response
`
`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 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,
`
`they have argued that this IPR
`created a disavowal.
`
`The remaining paragraphs cited by
`Apple provide Dr. Paradiso’s
`opinions on background technology
`related to indoor positioning. But
`the patent does not describe any of
`these details and/or goals about
`indoor positioning. Further, Apple
`had not provided any brief yet. That
`is why Maxell stated explicitly that
`“Apple’s only justification for
`narrowing the proposed structure
`appears to be . . .[the ASUS IPR].”
`Maxell did not say that the scope of
`Dr. Paradiso’s declaration was
`limited to the ASUS IPR only.
`Maxell took a position based on
`what its best guess was on what
`Apple’s argument appeared to be.
`
`
`
`
`
`
`9
`
`

`

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`Page No.
`(D.I. 136)
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`Maxell’s
`Characterization
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`Maxell’s Response
`
`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. ...
`
`I 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 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-
`
`
`
`10
`
`

`

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`Page No.
`(D.I. 136)
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`Maxell’s
`Characterization
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`Apple’s Expert
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`Maxell’s Response
`
`00071, Paper No. 7 at 9) which were also excerpted
`above.
`
`
`
`
`
`11
`
`