Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 1 of 18 PageID #: 7332
`
`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 165 Filed 12/17/19 Page 2 of 18 PageID #: 7333
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`TABLE OF CONTENTS
`
`I. CLAIM CONSTRUCTION MUST BEGIN WITH PLAIN MEANING ......................... 1
`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”) ...................................................... 3
`IV. U.S. PATENT NO. 6,928,306 (“THE ’306 PATENT”) ...................................................... 4
`V. U.S. PATENT NO. 7,116,438 (“THE ’438 PATENT”) ...................................................... 5
`A.
`“an input unit for receiving an input entered by a user” ......................................... 5
`B.
`“means for selecting an object displayed on said display apparatus” ..................... 6
`C.
`“display apparatus” ................................................................................................. 6
`D.
`“adding a comment to contributed data” ................................................................ 7
`VI. U.S. PATENT NO. 10,084,991 (“THE ’991 PATENT”) .................................................... 7
`VII. U.S. PATENT NO. 8,339,493 (“THE ’493 PATENT”) ..................................................... 8
`A.
`“effective scanning lines . . . of a display screen” .................................................. 8
`B.
`the “culling” and “mixing” terms ........................................................................... 9
`VIII. U.S. PATENT NOS. 6,748,317, 6,430,498, AND 6,580,999 ........................................... 9
`A.
`“a device for getting location information denoting a present place . . .” .............. 9
`B.
`“device for retrieving . . .” / “device for getting a location information [ . . . ]” .. 10
`
`- ii -
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`

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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 3 of 18 PageID #: 7334
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Apple Inc. v. Motorola, Inc.,
`757 F.3d 1286 (Fed. Cir. 2014)..............................................................................................1, 4
`
`Azure Networks, LLC v. CSR PLC,
`771 F.3d 1336 (Fed. Cir. 2014)..................................................................................................2
`
`Finjan, Inc. v. Secure Computing Corp.,
`626 F.3d 1197 (Fed. Cir. 2010)..................................................................................................2
`
`Fonar Corp. v. General Electric Co.,
`107 F.3d 1543 (Fed. Cir. 1997)..................................................................................................5
`
`GPNE Corp. v. Apple Inc.
`830 F.3d 1365, 1370 (Fed. Cir. 2016) .......................................................................................7
`
`Hill-Rom Servs., Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014)..................................................................................................1
`
`Int’l Rectifier Corp. v. IXYS Corp.,
`361 F.3d 1363 (Fed. Cir. 2004)..................................................................................................9
`
`ION, Inc. v. Sercel, Inc.,
`2010 WL 3913225 (E.D. Tex. Sept. 16, 2010) ..........................................................................2
`
`Koninklijke Philips N.V. v. ZOLL Lifecor Corp.,
`No. 2:12-cv-1369, 2016 WL 6917267 (W.D. Penn. Feb 3, 2016) .............................................5
`
`Maxell Ltd. v. Huawei Device USA Inc.,
`297 F. Supp. 3d 668 (E.D. Tex. 2018) ...................................................................................2, 3
`
`Mobilemedia Ideas, LLC v. Apple Inc.,
`178 F. Supp. 3d 209 (D. Del. 2016) ...........................................................................................4
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)..................................................................................................2
`
`Playtex Prods., Inc. v. Procter & Gamble Co.,
`400 F.3d 901 (Fed. Cir. 2005)....................................................................................................6
`
`PPG Indus. v. Guardian Indus. Corp.,
`156 F.3d 1351 (Fed. Cir. 1998)..................................................................................................2
`
`- iii -
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`

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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 4 of 18 PageID #: 7335
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`SRAM Corp. v. AD–II Eng’g Inc.,
`465 F.3d 1351 (Fed. Cir. 2006)................................................................................................10
`
`THX, Ltd. v. Apple, Inc.,
`No. 13-cv-01161, 2016 U.S. Dist. LEXIS 153557 (N.D. Cal. Nov. 4, 2016) .........................10
`
`Statutes
`
`35 U.S.C. § 112 ............................................................................................................................3, 4
`
`iv
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`

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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 5 of 18 PageID #: 7336
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`TABLE OF EXHIBITS
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`Exhibit 15
`
`Exhibit 16
`
`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
`
`Exhibit 17
`
`File History of U.S. Patent No. 9,124,758
`
`Exhibit 18
`
`IPR2019-00071, Petition
`
`v
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`

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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 6 of 18 PageID #: 7337
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`Apple’s Responsive Claim Construction Brief (Dkt. No. 161) (“RCC”) urges the Court to
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`limit claim elements to specific embodiments by improperly invoking 35 U.S.C. § 112, ¶ 6 and
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`by ignoring the plain and ordinary meaning. And rather than address evidence that contradicts its
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`positions, Apple makes baseless allegations of Maxell “mischaracterizing the record” and
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`“misappl[ying] the law.” RCC at 1. Yet, the one example of Maxell’s “misleading citations” that
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`Apple substantively addresses1 is not a mischaracterization and actually highlights Apple’s
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`misapplication of the law. Maxell never states that Apple’s expert (Dr. Menasce) concluded a
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`“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
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`detector” supports Maxell’s position that a POSITA would understand this term connotes
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`sufficient structure to avoid means-plus-function (“MPF”) treatment. See RCC at 1 (citing to
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`Dkt. No. 161-2 ¶ 63). This supports Maxell’s position because “[t]he correct inquiry, when
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`‘means’ is absent from a limitation, is whether the limitation, read in light of the remaining claim
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`language, specification, prosecution history, and relevant extrinsic evidence, has sufficiently
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`definite structure to a person of ordinary skill in the art.” Apple Inc. v. Motorola, Inc., 757 F.3d
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`1286, 1298 (Fed. Cir. 2014). Apple wants to skip this step, assume § 112, ¶ 6 applies, and argue
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`that Maxell is misapplying the law.
`
`At bottom, Maxell’s proposed constructions are supported by the law.
`
`I.
`
`CLAIM CONSTRUCTION MUST BEGIN WITH PLAIN 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
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`specification and prosecution history.” See Apple’s CC Brief (“Ex. 15”) at 1 (quoting Hill-Rom
`
`1 Without leave, Apple circumvents the page limit with an eight page Appendix 1 in an attempt to rebut
`portions of Maxell’s CC Brief. To the extent it is considered, Maxell requests the Court also consider
`Appendix A herewith, responding to Apple’s examples of Maxell’s alleged “misleading” citation.
`- 1 -
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`

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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 7 of 18 PageID #: 7338
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`Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014)); see also Niantic’s Resp. CC
`
`Brief (“Ex. 16”) at 13. These statements are not surprising. “There are ‘only two exceptions to
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`[the] general rule’ that claim terms are construed according to their plain and ordinary meaning:”
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`(1) lexicography or (2) disavowal. Maxell Ltd. v. Huawei Device USA Inc., 297 F. Supp. 3d 668,
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`679 (E.D. Tex. 2018). Despite these principles, Apple argues that Maxell’s plain and ordinary
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`meaning constructions are somehow “improper.” RCC at 2-3. This is contrary to law.
`
`The cases Apple cites are distinguishable. In Azure Networks, the Court adopted a
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`construction where “[t]he parties do not meaningfully dispute the ordinary and customary
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`meaning of” MAC address. See Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347-48
`
`(Fed. Cir. 2014). Similarly, O2 Micro stands for the proposition that a disputed issue of claim
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`construction is not ultimately decided by the jury. This does not require a claim construction
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`beyond the plain and ordinary meaning. 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., 2010 WL 3913225, at *6 (E.D. Tex. Sept. 16,
`
`2010). 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 Inno. 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 tasked with determining infringement. That there is some inherent
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`uncertainly with submitting such issues to the jury is a “necessary consequence of treating
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`infringement as a question of fact,” not an indication that the terms need construction. PPG
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`Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998).
`
`2
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`

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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 8 of 18 PageID #: 7339
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`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
`
`detector,” “ringing sound generator,” and “input unit” “recite purely functional language” and
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`that somehow “Maxell has failed to rebut Apple’s evidence that these claim phrases are purely
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`functional.” RCC at 3-4. “[Section] 112, ¶ 6 does not apply to all functional claim language.
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`There is a rebuttable presumption that § 112, ¶ 6 applies when the claim language includes
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`‘means’ or ‘step for’ terms, and that it does not apply in the absence of those terms.” See
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`Huawei, 297 F. Supp. 3d at 679-80 (citations omitted, emphasis added). This “presumption
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`stands or falls according to whether one of ordinary skill in the art would understand the claim
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`with the functional language . . . to denote sufficiently definite structure.” Id.
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`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
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`sufficient structure. Apple has not met this burden. These terms denote sufficient structure and
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`their plain and ordinary meaning would be readily apparent to a POSITA as evidenced by the
`
`record. Contrary to what Apple alleges, Maxell is pointing to examples along with the context of
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`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”)
`
`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
`
`the Court. See Dkt. No. 136 at 3. The record thus includes undisputed evidence that “capacity
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`detector” denotes sufficient structure and should be given its plain and ordinary meaning.
`
`3
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`

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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 9 of 18 PageID #: 7340
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`Second, Apple’s expert stated “[t]he word ‘detector’ by itself does not denote sufficiently
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`definite meaning to a person of ordinary skill in the art.” Dkt. No. 161-2 ¶ 61 (emphasis added).
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`He argued that “detector” could be a temperature/smoke/motion/radar detector. Id. But when
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`faced with legal precedent and Apple’s own acknowledgment that “image instability detector”
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`denotes sufficient structure, Apple tries to walk back its argument by saying context matters.
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`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
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`POSITA will not confuse the claimed “capacity detector” with a smoke or motion detector.
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`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:
`
`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.”
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`757 F.3d at 1299 (emphases added). “Detector” by itself does denote sufficient structure.
`
`IV.
`
`U.S. PATENT NO. 6,928,306 (“THE ’306 PATENT”)
`
`“Ringing sound generator” does not use “means for” or “step for” language and therefore
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`it is presumed that §112 ¶ 6 does not apply. Nothing Apple states rebuts this presumption. Again,
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`context matters and in the year 2000 and before, the phrase “your phone is ringing” would be
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`readily understood by users of “portable mobile units,” as the claim requires. Thus, a POSITA
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`would understand that “ringing sound generator” denotes sufficient structure and would not
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`associate it with a gas generator or cowbell. Ex. 5 ¶ 32-33. Apple relies on Mobilemedia Ideas,
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`LLC v. Apple Inc., where the court construed “alert sound generator” as a MPF term; however,
`4
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`

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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 10 of 18 PageID #: 7341
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`the court there found that the specification itself had defined the term “by its function” because
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`“[t]he term ‘generator’ is not otherwise found in the specification.” 178 F. Supp. 3d 209, 218-19
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`(D. Del. 2016). Here, the ’306 Patent discloses the claimed “ringing sound generator” and its
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`structure numerous times. See ’306 Patent, 2:12-23, Figs. 1 and 15.
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`Likewise, Apple’s reliance on Fonar Corp. v. General Electric Co., 107 F.3d 1543, 1551-
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`52 (Fed. Cir. 1997) is misplaced, as the holding only applies where the court first invokes §112 ¶
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`6. Fonar, 107 F.3d at 1550-51. Further, Fonar limited expanding the scope of that particular
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`means term because of generic, boiler-plate language in the specification. See Koninklijke Philips
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`N.V. v. ZOLL Lifecor Corp., 2016 WL 6917267, *24-27 (W.D. Penn. Feb 3, 2016). Unlike the
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`undisclosed other waveforms in Fonar, the ’306 Patent identifies additional structure which
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`should not be excluded. ’306 Patent at 2:30-36 and 5:1 (e.g., MP3 and “human voices”).
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`V.
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`U.S. PATENT NO. 7,116,438 (“THE ’438 PATENT”)
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`A.
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`“an input unit for receiving an input entered by a user”
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`Apple does not dispute that Courts have held that “input section” and “input device” are
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`not MPF terms and should be given their plain and ordinary meaning. See Dkt. No. 136 at 9-11.
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`Apple has provided no rationale to deviate from these prior holdings. Thus, as previously held,
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`“input unit” should also be given its plain and ordinary meaning.2 Additionally, Apple does not
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`dispute that its own expert opined that a POSITA would understand that “input unit” corresponds
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`to known structures such as a “mouse, keyboard, touch screen, touch-pen, [and] voice-activated
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`inputs.” Dkt. No. 136 at 11; RCC at 10-11 (not rebutting its expert’s admission). Apple also does
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`not dispute that the patentee explicitly used “means for” language in dependent claim 3 when it
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`intended to invoke §112 ¶ 6. Dkt. No. 136 at 11; RCC at 10-11. Apple instead cites Fonar again
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`to limit input unit to a “keyboard.” RCC at 11. But Fonar does not apply because the claimed
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`2 While Courts have held “unit” is a nonce word, it is no more nonce than “device” or “section.”
`5
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`

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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 11 of 18 PageID #: 7342
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`term is not a MPF term, and even if it was, the ’438 Patent sufficiently discloses that “the
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`input/output unit 103 can be any component as long as the component is capable of receiving an
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`input entered by the user and displaying an output to the user.” ’438 Patent at 3:59-67. In other
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`words, it does not state simply “any other input unit,” but provides additional detail. Thus, the
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`’438 Patent explicitly provides alternatives to a keyboard, and all disclosed structures should be
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`considered. Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 909 (Fed. Cir. 2005).
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`B.
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`“means for selecting an object displayed on said display apparatus”
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`Apple’s proposal for this term follows the same rational as for “input unit” and “display
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`apparatus.” RCC at 12. Apple’s proposal here should be rejected for the same reasons.
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`C.
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`“display apparatus”
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`Apple’s complaint here boils down to the lexicographer using too many words in the
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`specification to define display apparatus. RCC at 12. That is the lexicographer’s right, which
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`Apple cannot take away. Apple is also wrong in alleging that the specification “repeatedly and
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`consistently” describes the display apparatus as an electronic notice board and describes the
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`purported invention as an electronic notice board. RCC at 12-14. The ’438 Patent explicitly
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`defines “display apparatus” without mentioning “electronic notice board” (’438 Patent at 2:5-10)
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`and further discloses that “display unit 212 can be any display device as long as the display
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`device is capable of displaying information” (’438 Patent at 4:50-52). The specification provides
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`an exemplary disclosure of electronic notice board, but that is why dependent claims 6 and 7 are
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`directed to this embodiment and limit the display apparatus in those claims to “an electronic
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`notice-board.” While the doctrine of claim differentiation is not a hard and fast rule it also should
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`not be disregarded completely, especially when doing so would render claims indefinite.3
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`3Apple’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.
`6
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`

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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 12 of 18 PageID #: 7343
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`Moreover, construing display apparatus according to the definition in the specification does not
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`render the language of claim 4 superfluous because it would be included in the preamble of claim
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`4 and claims are often structured in a manner where the preamble breathes life into the body of
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`the claim by reciting later claimed limitations.
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`D.
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`“adding a comment to contributed data”
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`“Comment” does not need any construction. See Dkt. No. 136 at 12-13.
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`VI.
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`U.S. PATENT NO. 10,084,991 (“THE ’991 PATENT”)
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`Apple does not dispute the precedent holding that “communication device” and terms
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`including “communication” should be given their plain and ordinary meaning. See Dkt. No. 136
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`at 15; RCC at 15-17 (unaddressed). For the same reasons, “communication apparatus” should
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`also be given its plain and ordinary meaning. Apple alleges that the situation is “nearly identical
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`to that in GPNE.” RCC at 15-17. This, however, is incorrect. First, in GPNE Corp. v. Apple Inc.,
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`the Court found that the specification “repeatedly and exclusively uses these words [pager] to
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`refer to the devices in the patented system.” 830 F.3d 1365, 1370 (Fed. Cir. 2016) (emphasis
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`added). This is not the case in the ’991 Patent because the specification also repeatedly discloses
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`an additional embodiment of a “video telephone system” separate from the “videophone
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`function-added TV receiver.” Dkt. No. 136 at 15-16. Contrary to Apple’s allegations, this
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`embodiment does not include “a plurality of videophone function-added TV receiver sets” (RCC
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`at 16 n.8) but rather that the video telephone system “uses” a videophone function-added TV
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`receiver. ’991 Patent, 2:56-60. Using is not the same as including.
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`Second, in GPNE the “inventor’s Rule 131 declaration consistently and exclusively
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`describes the invention as a system of pagers.” GPNE, 830 F.3d at 1371. No such declaration
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`exists here, or any other disavowal. Third, the prosecution history of the ’991 Patent supports
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`Maxell’s proposal because claims drawn to a “television receiver with video telephone function”
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`7
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`

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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 13 of 18 PageID #: 7344
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`were canceled during prosecution of parents (Ex. 17 at 5) and replaced with a claim directed to a
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`“digital information signal receiving and transmitting apparatus” (id. at 7-8). Thus, GPNE does
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`not apply.
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`VII. U.S. PATENT NO. 8,339,493 (“THE ’493 PATENT”)
`
`A.
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`“effective scanning lines . . . of a display screen”
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`Apple’s argument relies on a single passage in the background of the specification that
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`describes an NTSC television standard to justify importing limitations. RCC at 19 (citing ’493
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`Patent at 1:37-43). But the specification never “defines” effective scanning lines to mean
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`interlaced scanning, and the same passage Apple cites expressly states that the NTSC system is
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`just an “example.” See ’493 Patent at 1:37-43. Apple reasons that because the 240 effective
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`scanning lines used in this example represents only half of the 480 lines used by an NTSC
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`display, “effective scanning lines” must refer only to interlaced scanning. RCC at 19. In this
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`example, the specification already states that the NTSC system “performs interlaced scanning.”
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`’493 Patent at 1:37-43. While the “effective scanning lines” in the interlaced example may
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`indeed be 240, they would just as logically be all 480 lines in a progressive system. This example
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`says nothing about excluding progressing systems.
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`Apple’s second argument accuses Maxell of “expand[ing] claim scope far beyond the
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`disclosed invention” and yet simultaneously “excluding all disclosed embodiments.” RCC at 20.
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`Apple’s argument appears to be, if claim 1 could cover progressive scanning, it would exclude
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`embodiments that mix pixel lines to match the lines of an interlaced NTSC display. See id.
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`However, Maxell’s construction encompasses both progressive and interlaced scanning displays.
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`And while this term should include those preferred embodiments, it should not be limited to
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`them. Apple’s final argument is that Maxell’s construction “adds a requirement that is found
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`nowhere in the claims or specification”: “an actually displayed image.” RCC at 21. But the
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`8
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`

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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 14 of 18 PageID #: 7345
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`specification repeatedly equates “effective scanning lines” with an “actually displayed image,”
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`including in the background passage that Apple believes limits claim 1 to interlaced scanning.
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`’493 Patent at 1:37-43 (“… each of which has an effective scanning line number of about 240
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`lines (the number of scanning lines actually displayed on the monitor…”)) (emphasis added).
`
`B.
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`the “culling” and “mixing” terms
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`For these terms, Apple’s construction lifts language from the specification under the
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`guise of a “definition” without satisfying the “exacting” standard required to limit a claim term
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`via lexicography. With respect to the culling terms Apple even goes further and rewords the
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`description in the patent it relies upon for support. For example, the ’493 Patent describes an
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`exemplary “culling operation” whereby “only one line of signal charges of pixels is read out for
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`every predetermined number of lines.” See ’493 Patent at 10:9-12. But Apple then errs by
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`distorting this description into “selecting pixels for output by skipping pixels at predetermined
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`intervals.” RCC at 22. With respect to the culling terms, Apple points to nothing in the
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`specification that limits culling to “collecting,” and Apple’s addition of “combined transfer”
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`appears nowhere in the ’493 Patent. The issue is not whether “post-transfer process” or any
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`particular type of processing should be excluded from the construction of “mixing” (it should
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`not); rather, the issue is whether “mixing” should be unduly limited as Apple proposes by
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`seeking to carve out claim scope (“post-transfer process”) without justification. Apple never
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`explains why it is proper to rewrite the words the inventors chose; it merely provides conclusory
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`sentences and alleges that a person of ordinary skill would have “understood” this to be the
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`meaning. But when the inventors have chosen language, it is improper to depart from that choice.
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`See Int’l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1374 (Fed. Cir. 2004).
`
`VIII. U.S. PATENT NOS. 6,748,317, 6,430,498, AND 6,580,999
`
`A.
`
`“a device for getting location information denoting a present place . . .”
`
`9
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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 15 of 18 PageID #: 7346
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`Apple alleges that a disclaimer justifies their proposal. Yet, there is no disclaimer. ASUS
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`proposed a construction in the IPR under a different standard, explicitly stating that “for
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`purposes of this IPR only…Petitioners propose the following BRI constructions.” See IPR2019-
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`00071, Paper 1 (“Ex. 18”) at 18 (emphasis added). Second, Maxell explained that ASUS’s
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`Petition should not be instituted because it failed to meet the PTAB’s requirements under 37
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`CFR § 42.104 and explicitly stated that “Patent Owner does not contend that such a construction
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`is proper” and that Maxell “reserves all rights regarding arguments for the construction of these
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`terms under the Phillips standard.” Dkt. 161-18 (“Ex. Q to RCC”) at 10, 14. Maxell even went
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`further by explaining that “the Petitioner’s proposed structure are overly narrow and conflate
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`various alternative structures disclosed in the specification.” Id. at 10 n.3. And when discussing
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`the prior art—Maxell explicitly stated that it was “[u]sing Petitioner’s own proposed
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`construction” in the arguments. Id. at 13 (emphasis added). ASUS had put forth a construction
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`for the purposes of its “IPR only” and then failed to apply this construction causing its Petition to
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`be non-compliant with the rules of the PTAB. Maxell simply pointed this out, explicitly
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`reserving its right to dispute ASUS’s claim construction while identifying the flaws in the
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`construction. This is not a disavowal. See THX, Ltd. v. Apple, Inc., No. 13-cv-01161, 2016 U.S.
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`Dist. LEXIS 153557, at *13 (N.D. Cal. Nov. 4, 2016) (Apple conceding that courts are not
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`“bound by PTAB’s construction”).
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`B.
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`“device for retrieving . . .” / “device for getting a location information [ . . . ]”
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`Apple argues that the structure of this term should be limited based on this Court’s prior
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`construction for a different MPF term. But for reasons explained in Maxell’s Opening Brief, the
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`portable telephone and PHS terminal are used as examples and were not intended to limit the
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`structure to require two devices of data communications, one from a portable terminal and one
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`from a PHS terminal, as Apple now seeks. Dkt. No. 136, at 28-30.
`10
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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 16 of 18 PageID #: 7347
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`Dated: December 17, 2019
`
`
`
`/s/ Jamie B. Beaber
`Geoff Culbertson
`Kelly Tidwell
`Patton, Tidwell & Culbertson, LLP
`2800 Texas Boulevard (75503)
`Post Office Box 5398
`Texarkana, TX 75505-5398
`Telephone: (903) 792-7080
`Facsimile: (903) 792-8233
`gpc@texarkanalaw.com
`kbt@texarkanalaw.com
`
`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`Baldine B. Paul
`Tiffany A. Miller
`Saqib Siddiqui
`Bryan Nese
`William J. Barrow
`Clark S. Bakewell
`Alison T. Gelsleichter
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006
`Telephone: (202) 263-3000
`Facsimile: (202) 263-3300
`jbeaber@mayerbrown.com
`agrimaldi@mayerbrown.com
`klevy@mayerbrown.com
`jfussell@mayerbrown.com
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`wbarrow@mayerbrown.com
`cbakewell@mayerbrown.com
`agelsleichter@mayerbrown.com
`
`- 11 -
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`

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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 17 of 18 PageID #: 7348
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`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`
`Counsel for Plaintiff Maxell, Ltd.
`
`12
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`Case 5:19-cv-00036-RWS Document 165 Filed 12/17/19 Page 18 of 18 PageID #: 7349
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record who are deemed to have consented to electronic
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`service are being served this 17th day of December, 2019, with a copy of this document via the
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`Court’s CM/ECF system.
`
`/s/ Jamie B. Beaber
`Jamie B. Beaber
`
`13
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`