Case 5:19-cv-00036-RWS Document 320 Filed 05/06/20 Page 1 of 9 PageID #: 10401
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` IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`Plaintiff,
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`Defendant.
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`MAXELL, LTD.’S SUR-REPLY IN OPPOSITION TO
`APPLE INC.’S RENEWED MOTION TO COMPEL INFRINGEMENT CONTENTIONS
`COMPLIANT WITH PATENT RULE 3-1(G) AND FOR SCHEDULE EXTENSION OR,
`IN THE ALTERNATIVE, TO PRECLUDE MAXELL’S RELIANCE ON SOURCE
`CODE FOR INFRINGEMENT
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`Case 5:19-cv-00036-RWS Document 320 Filed 05/06/20 Page 2 of 9 PageID #: 10402
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`Apple’s intentions are clear. Push trial by any means possible. Having been denied the
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`ability by this Court twice and by the Federal Circuit, Apple is now trying to push the same goal
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`by continuing to argue that Maxell’s SSICs are non-compliant when Apple itself cannot dispute
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`that
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`need for any further specificity. D.I. 306 at 4.1 Surprisingly, Apple states that this fact is of “no
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`moment.” If
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`(cited in the SSICs) within these directories provide. If Apple’s counsel chooses not to
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` understand what functionalities the source code files
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` gain an understanding of how Apple’s
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`products function, that is their choice. Maxell should not be penalized for it.
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`Apple argues Maxell is trying to “run out the clock” by not providing compliant
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`contentions. D.I. 306 at 1. If anything, Apple’s own discovery delays caused the deadline for
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`Maxell’s P.R. 3-1(g) infringement contentions to fall on March 12, 2020.2 D.I. 204 at 5. Had Apple
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`produced all relevant source code earlier and taken time to provide Maxell with information
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`identifying the accused products to which the source code belongs,3 Maxell could and would have
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`complied with P.R. 3-1(g) earlier. Apple should not be rewarded for its own delays.
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`I.
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`Maxell Provides Source Code Filenames With Explanation
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`Apple alleges that Maxell has cited to “large ranges of code without explanation,” but this
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`is not correct:
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` D.I.
`1 Apple alleges that
`306 at 4-5. This is untrue. Every single example Maxell provided in its Opposition—and there are more—includes
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`2 Apple alleges that Maxell’s discovery disputes were resolved “largely in Apple’s favor” but omits the fact that
`many issues were denoted as resolved prior to the Court’s order only because of productions made by Apple in
`March 2020 (the month fact discovery closed) after Maxell filed its Motion. See D.I. 266.
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`Case 5:19-cv-00036-RWS Document 320 Filed 05/06/20 Page 3 of 9 PageID #: 10403
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`’493 Patent. Maxell is at a loss of what more information it can provide that will clue
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`Apple in on the infringement theory for these claim elements. As this Court may recall, during
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`Markman, counsel for Apple provided a tutorial over the meaning of the terms in this patent,
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`including mixing and culling. Hr. Tr. at 135:10-22 (“an image sensor that includes 1200 lines in
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`the vertical direction and those lines are down converted into 240 lines to match the number of
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`lines within a field of display”); 145:6-147:3 (generally describing culling as selection of pixels).
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`Clearly, Apple and its counsel had no problem understanding what image processing functions
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`(e.g., downsampling/downscaling) the claims related to at that time. But when it comes to Apple’s
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`products or code, Apple’s counsel fails to comprehend even simple operations as
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`. Indeed, to provide clear identification of its infringement theory, in June
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`2019, Maxell included pictures showing an iPhone capturing pictures and then outputting pictures
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`after a reduced resolution and included a table identifying the mathematical ratios it believed
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`applied to the image sensors when this operation occurs. Maxell’s SSICs include
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` Then Maxell printed less than 20 pages4 of code for the entire
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`’493 Patent. Maxell’s infringement theory for the ’493 Patent has never changed from what was
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`identified in June 2019 with screen shots showing the camera operations of an iPhone.5
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`’794 Patent. Even in its Complaint, Maxell explained that the accused functionalities are
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`directed to “Low Power Mode.” D.I. 1 at ¶ 126 (including screenshot of “Low Power Mode”). In
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`its June 2019 contentions, Maxell specifically pointed to screen dimming in low power mode for
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`this claim element. D.I. 299 at 4-5. Further, in its SSICs Maxell included the following explanation
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`of how the cited source code projects correspond to the various accused functionalities:
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`4With the exception of
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`Meaning on average Apple would need to review a total of 35 pages per patent to get an understanding of the
`excerpts of source code Maxell’s experts consider most pertinent for all of the claim elements for a particular patent.
`5 Apple’s complaint that Maxell’s contentions recite “non-limiting examples” is a red herring. If Apple believes
`Maxell’s expert opinions fall outside the scope of the contentions, Apple will be able to file a Motion to Strike.
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`Case 5:19-cv-00036-RWS Document 320 Filed 05/06/20 Page 4 of 9 PageID #: 10404
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`SSIC Appendix 8-A at 1. Again, short of providing pinpoint, expert-report-level citations, Maxell
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`does not know what more it can do in the way of disclosing its infringement theory.
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`’317/’999/’498 Patents. Apple complains that it is somehow prejudiced because Maxell’s
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`SSICs are “[f]orcing Apple to look at product screenshots referred to in textual descriptions… to
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`divine what functions” are accused.6 D.I. 306 at 4. The Court directed Apple to read code citations
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`in light of the textual disclosures. D.I. 204 at 4. The screenshots identify the infringement theory
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`with specificity by including actual evidence of the accused operation. Apple cannot refuse to look
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`at the evidence and simultaneously complain that it cannot discern what is accused.
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`II. Maxell’s Grouping Of Multiple Claim Elements Is Not Overbroad
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`Where applicable, Maxell has identified the same source code files for certain claim
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`elements because Apple
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`. Apple’s counsel summed it up perfectly: “t
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`.” Motions Hr. Tr. 48:13-15 (January 8, 2020). Thus Maxell must identify the complete
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`source code calls when a particular element is met by multiple files. Any differentiation between
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`elements would be abundantly clear had Apple reviewed the screenshots included in the SSICs.
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`III. Maxell Has Not Hidden The Relevant Source Code
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`Apple misleadingly complains about the total number of source code files identified in
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`Maxell’s SSICs as evidence of Maxell trying to “hide” relevant source code. This is not true. First,
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`the “1,300” number (D.I. 306 at 1) is misleading. The SSICs are directed to 87 accused products
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`6 In addition to these patents, Apple makes this argument about the’794 Patent as well.
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`Case 5:19-cv-00036-RWS Document 320 Filed 05/06/20 Page 5 of 9 PageID #: 10405
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`in different categories, spanning seven years, and a total of 40 claims7 across ten patents. Apple’s
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`count of “1,300” includes
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` even though the infringement theory/functionality is the same (e.g., counting
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` even though it is identified for the
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`same theory i.e., as a device for getting location information). When counted correctly, the SSICs
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`include roughly 333 unique files,8 with a large number of files usually grouped together under the
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`same directory for a particular patent. This amounts to an average of 33 unique files per asserted
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`patent and/or 17 files per currently asserted 20 claims. The files are laid out in plain sight.
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`Second, the number of files is largely due to the fact that Apple has repeatedly refused to
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`engage in a discussion about representative products. This is despite the fact that
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` as it relates to material aspects of the accused functions
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`(e.g., AirDrop, Maps, Unlock, Find My Friends, Pairing, FaceTime, Low Power Mode, and/or
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`Power Amplifier configuration upon boot-up). Thus, Apple forced Maxell to identify the same
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`source code files across 87 products but now complains that Maxell has identified too much while
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`also objecting strenuously when Maxell prints a source code file that is not identified specifically
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`(e.g.,
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`Third, Maxell’s offer to provide more specificity with respect to a single claim element
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`was an attempt to avoid motion practice and was raised during the meet and confer because that
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`was the only example Apple would provide and meet and confer over.
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`Fourth, Apple’s assertion that the cherry-picked examples provided in its motion are
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`7 The SSICs were served prior to Maxell’s Final Election of Asserted Claims.
`8 Counted manually so may include minor errors.
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`Case 5:19-cv-00036-RWS Document 320 Filed 05/06/20 Page 6 of 9 PageID #: 10406
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`representative of the source code charts for all 10 patents is unsupported. Charts for certain other
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`patents, for examples, contain significantly fewer total code citations. For example, only 16 source
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`code files (within three directories) are cited for the ’586 Patent, and only 15 files are cited for the
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`’438 Patent. In short, Maxell has made every effort possible to provide as much information as
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`possible with respect to infringement contentions and it can do no more.
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`IV. Any Alleged Prejudice Will Now Be Cured Due To 24/7 Source Code Access
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`Apple does not explain how not having pinpoint citations to source code impairs Apple’s
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`experts in drafting their invalidity reports. No “Apple” product has been identified as prior art, so
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`Apple’s source code has nothing to do with the alleged prior art products. Apple also has not even
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`sought source code for any alleged prior art product. Its cries of prejudice are wholly unsupported.
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`Further, even the “alleged” prejudice that Apple claims because its experts may have to
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`review on average 33 unique files per patent now rings hollow. On May 1—one week before
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`Infringement Reports are due—Apple indicated an intention to “ship” source code computers to
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`its experts’ homes so that they can easily review code at their leisure. This came as a surprise to
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`Maxell as its counsel and experts which had no access to source code from March 16-April 16,
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`2020 at which point, at Maxell’s expense, Apple made one computer available in a facility in
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`Maryland after repeated requests and proposals by Maxell. Although Maxell requested remote
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`review, Apple stated it was not an option. This review required Maxell’s attorney and expert to
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`put themselves and their families in harm’s way during the pandemic. But now, when Maxell’s
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`experts have no time to take advantage of it, remote review is available for Apple’s experts. This
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`conduct belies any notion of the civility required under AT-3(e) and absolutely cures any “alleged”
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`prejudice claimed by Apple.9
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`9 Unlike Apple’s disregard for the health and safety of Maxell’s counsel and experts, Maxell intends to agree to
`Apple’s proposal assuming the same accommodations will be made for Maxell’s counsel and experts going forward.
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`Case 5:19-cv-00036-RWS Document 320 Filed 05/06/20 Page 7 of 9 PageID #: 10407
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`Dated: May 4, 2020
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`By:
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`6
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`/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
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`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`Baldine B. Paul
`Tiffany A. Miller
`Saqib J. Siddiqui
`Bryan C. Nese
`William J. Barrow
`Alison T. Gelsleichter
`Clark S. Bakewell
`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
`agelsleichter@mayerbrown.com
`cbakewell@mayerbrown.com
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`Robert G. Pluta
`Amanda Streff Bonner
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`(312) 782-0600
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`Case 5:19-cv-00036-RWS Document 320 Filed 05/06/20 Page 8 of 9 PageID #: 10408
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`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 320 Filed 05/06/20 Page 9 of 9 PageID #: 10409
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 4th day of May, 2020, with a copy of this document via
`electronic mail.
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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