Case 5:19-cv-00036-RWS Document 343 Filed 06/03/20 Page 1 of 22 PageID #: 11288
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`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
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`
`
`MAXELL, LTD.’S OPPOSED MOTION TO STRIKE PORTIONS OF
`DEFENDANT APPLE INC.’S OPENING EXPERT REPORTS BASED
`ON UNDISCLOSED OR UNELECTED INVALIDITY THEORIES
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`PUBLIC VERSION
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`PUBLIC VERSION
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`Case 5:19-cv-00036-RWS Document 343 Filed 06/03/20 Page 2 of 22 PageID #: 11289
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`Table of Contents
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`PAGE
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`STATEMENT OF FACTS .............................................................................................. 1
`I.
`LEGAL STANDARDS .................................................................................................... 2
`II.
`III. ARGUMENT .................................................................................................................... 4
`A.
`Previously Undisclosed Invalidity Theories....................................................... 4
`1.
`New Opinions on Lack of Enablement/Written Description ............... 4
`2.
`New Motivations to Combine .................................................................. 5
`3.
`New Invalidity Theories .......................................................................... 6
`4.
`The Applicable Factors Support Exclusion of the New
`Invalidity Positions................................................................................. 11
`Opinions In Excess of the Final Election of Prior Art .................................... 12
`B.
`IV. CONCLUSION .............................................................................................................. 15
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`Case 5:19-cv-00036-RWS Document 343 Filed 06/03/20 Page 3 of 22 PageID #: 11290
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`
`Allergan, Inc. v. Teva Pharms. USA, Inc.,
`Case No. 2:15-CV-1455-WCB, 2017 U.S. Dist. LEXIS 225041 (E.D. Tex.
`Aug. 3, 2017) .............................................................................................................................6
`
`Biscotti Inc. v. Microsoft Corp.,
`No. 2:13-cv-01015, 2017 WL 2267283 (E.D. Tex. May 24, 2017) ..........................................4
`
`Finisair Corp. v. DirecTV Group, Inc.,
`424 F. Supp. 2d 896 (E.D. Tex. 2006) .....................................................................................12
`
`Freeny v. Fossil Group, Inc.,
`No. 2:18-cv-00049, 2019 WL 8688586 (E.D. Tex. July 25, 2019) ................................. passim
`
`Life Techns. Corp. v. Biosearch Technologies, Inc.,
`No. 12-00852, 2012 WL 4097740 (N.D. Cal. Sept. 17, 2012) ................................................12
`
`LML Patent Corp. v. JPMorgan Chase & Co.,
`No. 2:08-cv-448, 2011 WL 5158285 (E.D. Tex. Aug. 11, 2011) ..............................................6
`
`O2 Micro Intern. Ltd. v. Monolithic Power Systems, Inc.,
`467 F.3d 1355 (Fed. Cir. 2006)..................................................................................................6
`
`Realtime Data, LLC v. Packeteer, Inc.,
`No. 6:08-cv-144, 2009 WL 4782062 (E.D. Tex. Dec. 8, 2009) ................................................3
`
`Tech Pharmacy Services, LLC v. Alixa Rx LLC,
`No. 4:15-CV-766, 2017 WL 3283325 (E.D. Tex. Aug. 2, 2017) ..............................................2
`
`Tyco Healthcare Group LP v. Applied Medical Resources Corp.,
`No. 9:06-cv-151, 2009 WL 5842062 (E.D. Tex. Mar. 30, 2009) ....................................4, 6, 12
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`Other Authorities
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`Fed. R. Civ. P. 16(f) .........................................................................................................................3
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`Case 5:19-cv-00036-RWS Document 343 Filed 06/03/20 Page 4 of 22 PageID #: 11291
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`Abbreviation
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`Maxell
`Apple
`POSITA/PHOSITA
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`Bederson Rpt.
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`Bims Rpt.
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`Bovik Rpt.
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`Menascé ’438/’586 Rpt.
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`Paradiso Rpt.
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`Menascé ’794 Rpt.
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`Final Election
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`Invalidity Contentions
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`
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`TABLE OF ABBREVIATIONS
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`Description
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`Plaintiff Maxell, Ltd.
`Defendant Apple Inc.
`Person of Ordinary Skill in the Art
`Opening Expert Report of Dr. Benjamin B. Bederson Regarding
`Invalidity of U.S. Patent Nos. 6,928,306 and 10,084,991
`(Relevant Excerpts at Ex. 1)
`Opening Expert Report of Dr. Harry V. Bims Regarding
`Invalidity of U.S. Patent No. 6,408,193
`(Relevant Excerpts at Ex. 2)
`Opening Expert Report of Dr. Alan C. Bovik Regarding
`Invalidity of U.S. Patent No. 8,339,493
`(Relevant Excerpts at Ex. 3)
`Opening Expert Report of Dr. Daniel A. Menascé Regarding
`U.S. Patent Nos. 7,116,438 and 10,212,586
`(Relevant Excerpts at Ex. 4)
`Opening Expert Report of Dr. Joseph A. Paradiso Regarding
`Invalidity of U.S. Patent Nos. 6,748,317, 6,580,999, 6,430,498
`(Relevant Excerpts at Ex. 5)
`Opening Expert Report of Dr. Daniel A. Menascé Regarding
`U.S. Patent No. 6,329,794
`(Relevant Excerpts at Ex. 6)
`Apple’s Final Election of Prior Art served April 7, 2020
`(Ex. 7)
`Defendant Apple Inc.’s Invalidity Contentions Pursuant to
`Patent Local Rules 3-3 and 3-4 served August 14, 2019 and
`Defendant Apple Inc.’s First Supplemental Invalidity
`Contentions Pursuant to Patent Local Rules 3-3 and 3-4 served
`March 4, 2020 and exhibits thereto
`(Relevant Excerpts at Exs. 8-18)
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`ii
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`Case 5:19-cv-00036-RWS Document 343 Filed 06/03/20 Page 5 of 22 PageID #: 11292
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`The Local Patent Rules require early disclosure of all prior art references, combinations
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`of references, and motivations to combine, along with invalidity theories based on enablement or
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`written description. This is in order to guide and narrow discovery in patent cases. To further
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`narrow this case, the parties agreed to a Focusing Order (D.I. 44), requiring the parties to narrow
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`the asserted claims and prior art before expert discovery. Though purporting to comply with this
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`Order, Apple’s invalidity reports contain many opinions that exceed the scope Apple’s Invalidity
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`Contentions or Final Election of Asserted Prior Art. Having failed to timely disclose and elect
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`these positions, Apple should not be permitted to circumvent the rules and rely on them now.
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`Thus, the Court should exclude any expert testimony relating to the previously undisclosed or
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`unelected invalidity positions and preclude Apple from relying on such positions at trial. In
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`addition, the deadline for rebuttal validity reports (June 41) will occur before briefing on this
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`Motion is complete. As such, should the Court grant Maxell’s Motion, Maxell also requests the
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`Court award Maxell its attorneys’ fees and costs for the prejudice it has suffered in addressing
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`Apple’s untimely theories.
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`I.
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`STATEMENT OF FACTS
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`Local Patent Rule (“P.R.”) 3-3 requires timely disclosure of all prior art references and
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`combinations of references alleged to render an asserted claim invalid as well as invalidity
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`theories based on enablement or written description. For each disclosed combination of
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`references, P.R. 3-3 further requires timely disclosure of the alleged motivation to combine such
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`references. On the date set forth by the Docket Control Order (D.I. 46) for such disclosures
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`(August 14, 2019), Apple served its Invalidity Contentions. Such contentions were supplemented
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`once, with leave of Court, on March 4, 2020. (Collectively, “Invalidity Contentions”).
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`1 Pursuant to this Court’s May 8, 2020 Order (D.I. 325), rebuttal expert reports regarding the ’794 Patent are due
`June 11, 2020.
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`Case 5:19-cv-00036-RWS Document 343 Filed 06/03/20 Page 6 of 22 PageID #: 11293
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`Pursuant to the Order Focusing Patent Claims and Prior Art (D.I. 44), Apple served its
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`Final Election of Asserted Prior Art on April 7, 2020 (“Final Election”). Ex. 7. Apple’s Final
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`Election was required to “identify no more than six (6) asserted prior art references per patent
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`from among the twelve prior art references previously identified for that particular patent and no
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`more than a total of 20 prior art references. For purposes of this Final Election of Asserted Prior
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`Art, each obviousness combination counts as a separate prior art reference.” D.I. 44 at ¶ 3
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`(emphasis added). The parties agreed to this Focusing Order as a bargained-for exchange, where
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`Maxell was required to cut down its asserted claims to twenty, which it did. In response, Apple
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`was required to elect no more than a total of 20 prior art references/combinations. Apple did not.
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`On May 7 and 14, 2020, Apple served its expert reports on invalidity, which improperly
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`disclosed several categories of previously undisclosed invalidity theories, including new lack of
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`enablement/written description theories, new motivations to combine, and new anticipation and
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`obviousness opinions. Apple’s invalidity expert reports also contain opinions outside the scope
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`of Apple’s Final Election.2 Thus, the Court should strike these untimely invalidity theories.
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`II.
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`LEGAL STANDARDS
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`“Local Patent Rules exist to further the goal of full, timely discovery and provide all
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`parties with adequate notice and information with which to litigate their cases, not to create
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`supposed loopholes through which parties may practice litigation by ambush.” Tech Pharmacy
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`Services, LLC v. Alixa Rx LLC, No. 4:15-CV-766, 2017 WL 3283325, at *4 (E.D. Tex. Aug. 2,
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`2017). P.R. 3-3 requires the defendant to serve “invalidity contentions,” which must include: (1)
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`the identity of each item of prior art, (2) whether each such item anticipates or renders obvious
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`2 After receiving Apple’s expert reports, Maxell approached Apple regarding the issues raised herein. Apple alleges
`that these new positions are just a discussion of the state of the art. This is incorrect. Apple’s experts have detailed
`sections dedicated to the state of the art, and Maxell is not moving to strike these. Instead, Maxell is moving to strike
`new, undisclosed opinions and/or opinions not supported by Apple’s Final Election.
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`2
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`each asserted claim, and the identity of the combination of prior art that makes a claim obvious
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`and the motivation to combine such art, (3) a chart identifying where specifically in each item of
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`prior art each asserted claim element is found, and (4) any grounds of invalidity based on
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`indefiniteness, enablement, or written description. See P.R. 3-3(a)-(d). The purpose of P.R 3-3
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`“is to place the Plaintiff on notice of potentially invalidating art that Defendants will assert in
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`their case and at trial.” Realtime Data, LLC v. Packeteer, Inc., No. 6:08-cv-144, 2009 WL
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`4782062, at *2 (E.D. Tex. Dec. 8, 2009). A defendant’s invalidity contentions are “deemed to be
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`that party’s final contentions.” P.R. 3-6(a). After the deadline for serving invalidity contentions
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`has passed, a party may amend its contentions if it believes that the claim construction order
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`requires it, if the opposing party amends its infringement contentions, or “by order of the Court,
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`which shall be entered only upon a showing of good cause.” P.R. 3-6(a), (b); see also D.I. 46 at 8
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`(stating that after the deadline for invalidity contentions, “except as provided in Patent Rule 3-
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`6(a), it is necessary to obtain leave of Court to add and/or amend invalidity contentions…”).
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`A court has the inherent power to enforce its orders and to impose sanctions. Fed. R. Civ.
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`P. 16(f). In determining whether to exclude evidence based on a failure to comply with the Patent
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`Rules, the Court considers the following: (1) the danger of unfair prejudice to the non-movant;
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`(2) the length of the delay and its potential impact on judicial proceedings; (3) the reason for the
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`delay, including whether it was within the reasonable control of the movant; (4) the importance
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`of the particular matter, and if vital to the case, whether a lesser sanction would adequately
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`address the other factors to be considered and deter future violations of the court’s Scheduling
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`Orders, Local Rules, and Federal Rules of Civil Procedure; and (5) whether the offending party
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`was diligent in seeking an extension, or in supplementing discovery, after an alleged need to
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`disclose the new matter became apparent. See Tyco Healthcare Group LP v. Applied Medical
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`3
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`Case 5:19-cv-00036-RWS Document 343 Filed 06/03/20 Page 8 of 22 PageID #: 11295
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`Resources Corp., No. 9:06-cv-151, 2009 WL 5842062, at *1-2 (E.D. Tex. Mar. 30, 2009).
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`III.
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`ARGUMENT
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`A.
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`Previously Undisclosed Invalidity Theories
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`1.
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`New Opinions on Lack of Enablement/Written Description
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`When Apple served its opening expert reports, the reports contained new lack of
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`enablement and written description invalidity theories that were not included in Apple’s
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`Invalidity Contentions. The new theories are:
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` The Bims Rpt. asserts: “Maxell’s apparent interpretation of ‘receiver . . . for outputting a
`power control signal derived from said transmitting power control signal sent from said
`cell-site station’ would render the claims of the ’193 Patent invalid for lack of written
`description and enablement.” Ex. 2 at ¶ 168; see also id. at ¶¶ 168-173 and 278 n.2. This
`was not one of the four terms/phrases that Apple identified in its Invalidity Contentions
`as suffering from lack of enablement or written description. Ex. 8, Inv. Cont. at 69-70.
`
` The Menascé ’438/’586 Rpt. contains new opinions about lack of written description for
`the flow of unlocking conditions in claim 1 of the ’586 Patent (“the specification of the
`’586 patent does not include any disclosure or describe any embodiment teaching that the
`unlocking conditions follow issued claim 1’s required flow”). Ex. 4 at ¶¶ 249-258. Such
`theory relies on all elements/steps of claim 1 taken together. In its Invalidity Contentions,
`however, Apple had merely listed individual terms/phrases as suffering from lack of
`written description, with no mention regarding the overall flow of steps. Ex. 8, Inv. Cont.
`at 127-128. 3
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`The Patent Rules required Apple to identify “[a]ny grounds of invalidity based on…enablement
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`or written description under 35 U.S.C. § 112(1) of any of the asserted claims.” P.R. 3-3(d).
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`Because Apple failed to do so, these newly-disclosed written description and enablement
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`invalidity theories should be struck. Biscotti Inc. v. Microsoft Corp., No. 2:13-cv-01015, 2017
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`WL 2267283, at *2 (E.D. Tex. May 24, 2017) (granting motion to strike portions of defendant’s
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`expert report containing belatedly disclosed written description/enablement theories).
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`2.
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`New Motivations to Combine
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`3 Apple did the same for alleged written description, enablement, and indefiniteness, listing dozens of claim
`terms/phrases for each of the asserted patents despite forwarding only a handful of 112-based opinions in its expert
`reports. See Ex. 8, Inv. Cont. at 32-33, 49-51, 60-62, 68-70, 80-86, 95-97, 112-118, and 125-128. Listing nearly
`every term fails under some provision of 112 is not within the spirit of the Patent Rules, either.
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`Apple’s opening expert reports also contain new motivations to combine prior art
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`references that were not included in Apple’s Invalidity Contentions, as follows:
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`Motivations in Inv. Cont. for ’193 Patent
`Conventional approach for designing
`CDMA cellular telephones, implementing
`the IS-95 CDMA standard, and/or for
`electronic design, with the known benefits.
`Ex. 8 at 65-68.
`(no mention of TDMA)
`
`Nakayama with Mucke:
`“to increase the power efficiency of the
`transmitter… by minimizing the current
`consumption of the power amplifier.” Ex. 9,
`Ex. D1 (pp. 13, 16, 20, 23, 32, 35).
`(no mention of TDMA)
`
`Waldroup with Mucke:
`“to allow for the transmission and reception
`of digitized voice, as required by the CDMA
`standard.” Ex. 10, Ex. D3 (pp. 11, 13-14).
`
`Motivations in Inv. Cont. for ’586 Patent
`(re : Schiffer with Kirkup)
`“increase the security of the system”,
`“increase the convenience and usability of
`the system”, “reduce the delay in unlocking
`the computer system (or second mobile
`terminal” Ex. 8 at 122-125; Ex. 11, Ex. H1
`(pp. 14, 17, and 18)
`(Kirkup not mentioned for claim 1[d])
`Motivations in Inv. Cont. for ’991 Patent
`(re: Asmussen with Allen)
`Conventional/well-known approach for
`designing video telephone devices; benefits
`of automatically pausing display,
`automatically rendering the camera
`operative, automatically restarting the
`display, and/or displaying information
`indicating the outbound videophone call on
`the display; “improving similar devices in
`the same way”; “Combining prior art
`elements according to known methods.”
`Ex. 8 at 76-80; Ex. 12, Ex. E2 (p. 62).
`Motivations in Inv. Cont. for ’493 Patent
`(re: Misawa with other prior art)
`“benefits of using an image-instability
`detector [such as] improved image output
`
`New Motivations in Bims Rpt. (Ex. 2)
`Nakayama with Mucke - Application of TDMA system
`to improve CDMA device. ¶¶ 135-138.
`Nakayama with Mucke - Simplifying the processing
`operation for controlling bias value and using Mucke’s
`design alternative as an obvious choice to try. ¶¶ 139-142.
`Waldroup with Mucke - “improved techniques for
`limiting transmit power and preserving battery resources”;
`“improved techniques for open-loop power control and
`closed loop-power control”; “implementing a table for
`storing power control values”; “design could be improved
`with respect to overall system efficiency while
`maintaining linearity”; “obvious adjustment to try… to
`achieve the benefit of controlling linearity of the
`transmitter output power”; “increase the efficiency of the
`transmitter”; “furthers the goal of ‘precise mobile station
`power control’”; “motivated to add bias information to the
`gain data”; both Waldroup and Mucke disclose open-loop
`power control and closed-loop power control in a CDMA
`cellular phone. ¶¶ 259-263, 347-355, 364, 371, and 375.
`New Motivations in Menascé ’438/’586 Rpt. (Ex. 4)
`(re : Schiffer with Kirkup)
`“avoid the cumbersome scenario of a user being required
`to unlock the device prior to entering the short-distance
`communication range”; “avoid the situation in which an
`unauthorized person acquires an unlocked mobile terminal
`and is able to automatically use it to unlock the second
`device in order to obtain unauthorized access” ¶ 246, App.
`D (pp. 22-23).
`New Motivations in Bederson Rpt. (Ex. 1)
`(re: Asmussen with Allen)
`Simplifying user experience and/or way user interacts
`with set top terminal through eliminating the need for the
`additional step of the user pressing a button, decreasing
`likelihood of buffer exhausting available storage,
`broadening the feature set and maximizing use of
`available storage, eliminating chance of pressing wrong
`button; “obvious improvement … as Allen teaches a way
`to improve the user’s experience and thus a way to further
`Asmussen’s stated goal” to ‘provide[] users with advanced
`features and capabilities.’” ¶¶ 242, 244, Ex. F (pp. 70-71).
`
`New Motivations in Bovik Rpt. (Ex. 3)
`(re: Misawa with other prior art)
`“known benefits over other known stabilization
`techniques, such as optical image stabilization”;
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`and reduced blurring”; “well-known
`technique for capturing digital images
`and/or videos”; “improving similar devices
`in the same way”; “combination of prior art
`elements according to known methods”;
`“MVCFD83 and…Misawa…emphasize the
`signal being compatible with NTSC
`transmission Protocols” Ex. 8 at 43-49; Ex.
`13, Ex. B8 (pp. 30, 40); Ex. 14, Ex. B11
`(pp. 96, 110, 129, 139).
`
`“improved functionality without adding size and bulk to
`the device”; “many commercial cameras … already
`included electronic stabilization features for video
`capture”; “expectation of success from the combination or,
`at a minimum, it would have been obvious to try”; “to
`improve image quality and compensate for image blur
`caused by unintentional movements” ¶¶ 132-133, 156-
`158, and pp. 84, 88, 112, and 115.
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`The Local Patent Rules state that “[i]f a combination of items of prior art makes a claim obvious,
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`each such combination, and the motivation to combine such items, must be identified.” P.R. 3-
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`3(b). Because Apple failed to do so, these newly-disclosed motivations to combine should be
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`struck. Tyco, 2009 WL 5842062 at *3 (“[Defendant] was required to disclose any combination
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`of, or motivation to combine, prior art it was asserting against a particular claim in its Invalidity
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`Contentions. Failure to do so, unless substantially justified or harmless, means the evidence will
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`be excluded.”); Allergan, Inc. v. Teva Pharms. USA, Inc., Case No. 2:15-CV-1455-WCB, 2017
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`U.S. Dist. LEXIS 225041, at *28-29 (E.D. Tex. Aug. 3, 2017) (concluding that defendant would
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`not be allowed to rely on certain prior art references to show a motivation to combine because
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`defendant had not properly disclosed such motivation under P.R. 3-3(b)).
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`3.
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`New Invalidity Theories
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`A party’s invalidity contentions are “deemed to be that party’s final contentions.” P.R. 3-
`
`6(a); see also O2 Micro Intern. Ltd. v. Monolithic Power Systems, Inc., 467 F.3d 1355, 1366 at
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`n.12 (Fed. Cir. 2006) (stating contentions “are designed to require parties to crystallize their
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`theories of the case early in the litigation and to adhere to those theories once… disclosed.”).
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`Theories not disclosed in a party’s invalidity contentions will be stricken. LML Patent Corp. v.
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`JPMorgan Chase & Co., No. 2:08-cv-448, 2011 WL 5158285, at *7 (E.D. Tex. Aug. 11, 2011)
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`(granting motion to strike obviousness combinations not disclosed in invalidity contentions).
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`Case 5:19-cv-00036-RWS Document 343 Filed 06/03/20 Page 11 of 22 PageID #: 11298
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`The Menascé ’438/’586 Rpt. sets forth six theories for why Yamazaki teaches the
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`limitation claim 2(b) of the ’438 Patent, only four of which were disclosed in the contentions:
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`Menascé ’438/’586 Rpt.
`(Ex. 4 at App. C, pp. 53-58)
`“an ‘attachment’ can be added to information
`posted on the electronic bulletin board using a
`‘dialogue’ format”
`“maps corresponding to Mapcodes can be added to
`posted contributions”
`
`“a ‘dialogue’ format employing multiple screens
`can be used to permit multiple screens to be
`displayed”
`“a URL can be included in a post, and information
`received from the website indicated by the URL
`can be added to the electronic bulletin board post”
`“the bulletin board can be used to play a
`competitive game in which a plurality of
`information terminals can participate”
`“the electronic bulletin board can be used for
`communication between two users”… “A POSITA
`would use a ‘dialogue’ format employing multiple
`screens to allow for a two-way conversation”
`
`Inv. Cont. at Ex. C4
`(Ex. 15 at pp. 33-37)
`
`N/A
`
`“other types of comments including maps
`corresponding to Map codes can be added to
`posted comments”
`“a ‘dialogue’ format employing multiple screens
`can be used to permit multiple screens to be
`displayed”
`“a URL can be added to the contributed data”
`
`“The bulletin board can be used to play a
`competitive game in which a plurality of
`information terminals can participate”
`N/A
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`Apple provided no explanation for its inclusion of the two new theories. They should thus be
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`stricken for not being timely disclosed in the Invalidity Contentions.
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`With respect to the ’586 Patent, the Menascé ’438/’586 Rpt. identifies the obviousness
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`combination of Schiffer with Kirkup for claim 1(d). Ex. 4 at App. D (pp. 20-23). However,
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`Apple’s Invalidity Contentions do not rely on Kirkup for claim 1(d) in combination with
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`Schiffer. Ex. 11, Ex. H1 to Inv. Cont. at pp. 9-11. This thus constitutes a new obviousness
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`combination and should be stricken. Freeny v. Fossil Group, Inc., No. 2:18-cv-00049, 2019 WL
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`8688586, at *2 (E.D. Tex. July 25, 2019) (granting plaintiff’s motion to strike defendant’s
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`reliance on a prior art reference not identified in defendant’s invalidity contentions for certain
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`claim limitations in an obviousness combination).
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`With respect to the ’794 Patent, the Menascé ’794 Rpt. relies on the obviousness
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`Case 5:19-cv-00036-RWS Document 343 Filed 06/03/20 Page 12 of 22 PageID #: 11299
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`combination of Nonogaki with Flynn for claims 1(c)(ii), 1(c)(iv), 9(d)(i), 9(d)(ii), and 14. Ex. 6
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`at App. E (pp. 19-25, 27-34, 44-58, and 60-66). However, Apple’s Invalidity Contentions do not
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`rely on Flynn in combination with Nonogaki for these claim limitations. Ex. 16, Ex. G6 to Inv.
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`Cont. at pp. 10-11, 14-15, 34-37, and 41. Dr. Menascé’s reliance on Flynn for claims 1(c)(ii),
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`1(c)(iv), 9(d)(i), 9(d)(ii), and 14 in combination with Nonogaki constitutes new obviousness
`
`combinations and thus should be stricken. See Freeny, 2019 WL 8688586, at *2.
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`The Bederson Rpt. asserts that all asserted ’306 claims—including claim 15—are invalid
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`as obvious over Borland in combination with the knowledge of a POSITA. Ex. 1 at ¶ 142. While
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`Apple’s Invalidity Contentions asserted “Borland, alone or in combination with” certain prior art
`
`rendered claim 15 obvious, the supporting chart only set forth obviousness theories based on
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`Borland in view of other prior art, not on Borland in combination with the knowledge of a
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`POSITA. Ex. 17, Ex. F1 to Inv. Cont. at pp. 22-23 (citing pp. 14-16). More specifically, the
`
`Invalidity Contentions state, e.g.: “A PHOSITA would have been motivated to incorporate
`
`Miura’s or Serby’s teachings regarding setting the time zone… into Borland’s telephone system”
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`because, in part, “a PHOSITA would have recognized that such a feature would have been
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`desirable… based on Borland’s disclosure of a ‘no-call’ setting.” Id. at 15-16. The Bederson Rpt.
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`drops the other prior art and switches reliance on the “no-call setting” as a motivation to combine
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`to a primary theory stating, e.g.: “a POSITA would have been motivated to modify Borland, and,
`
`in particular, its ‘no-call’ embodiments, such that its portable mobile unit further comprises a
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`calendar function.” Ex. 1, Bederson Rpt. at Ex. C, p. 25. This new theory should be stricken.
`
`The Bederson Rpt. for the ’991 Patent relies on the obviousness combination of
`
`Asmussen with Allen for claim 4. Ex. 1 at Ex. F (pp. 85-87). However, Apple’s Invalidity
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`Contentions do not rely on Allen for claim 4 in combination with Asmussen. Ex. 12, Ex. E2 to
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`Inv. Cont. at 65 (providing notice of “Asmussen in view of any of Marley, Saburi, and Bear”).
`
`Dr. Bederson’s reliance on Allen for claim 4 in combination with Asmussen constitutes a new
`
`obviousness combination and thus should be stricken. See Freeny, 2019 WL 8688586, at *2.
`
`For claims 1 and 6 of the ’193 Patent, the Bims Rpt. relies on “Mucke in view of
`
`Nakayama” for all limitations of claims 1 and 6. Ex. 2, Bims Rpt. at pp. 52-116. However,
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`Apple’s reliance on Nakayama in combination with Mucke in its Invalidity Contentions was
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`limited to only a subset of limitations:
`
`Element
`
`1(a)
`1(b)
`1(c)
`1(d)
`1(e)
`1(f)
`1(g)
`1(h)
`1(i)
`1(j)
`1(k)
`1(l)
`1(m)
`1(n)
`6(a)
`6(b)
`
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`
`Inv. Cont. at Ex. D1
`(Ex. 9 at pp. 1-39)
`Mucke
`Nakayama
`
`X
`X
`X
`X
`
`X
`X
`
`Bims Rpt.
`(Ex. 2 at pp. 52-116)
`Mucke
`Nakayama
`X (¶¶ 151-153)
`X (¶ 158)
`X (¶ 162)
`X (¶ 165)
`X (¶¶ 175-176)
`X (¶ 179)
`X
`X
`X
`X
`X (¶¶ 222-223)
`X (¶¶ 228-229)
`X
`X
`X (¶¶ 252-253)
`X (¶ 255)
`
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`
`Dr. Bims’s reliance on Nakayama for claim limitations 1(a)-1(f), 1(k)-1(l), and 6(a)-(b) in
`
`combination with Mucke constitutes new obviousness combinations and thus should be stricken.4
`
`See Freeny, 2019 WL 8688586, at *2.
`
`Similarly, for claims 1 and 6 of the ’193 Patent, the Bims Rpt. relies on “Waldroup in
`
`view of Mucke” for all limitations of claims 1 and 6. Ex. 2, Bims Rpt. at pp. 116-189. However,
`
`4 In addition, the Final Election identified Mucke in combination with Nakayama, not vice versa. Thus, this
`invalidity theory also violates the Court’s Focusing Order.
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`Apple’s reliance on Mucke in combination with Waldroup in its Invalidity Contentions was
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`limited to only a subset of limitations:
`
`Inv. Cont. at Ex. D3
`(Ex. 10 at pp. 1-45)
`Waldroup
`Mucke
`
`X
`X
`
`Element
`
`1(pre)
`1(a)
`1(b)
`1(c)
`1(d)
`1(e)
`1(f)
`1(g)
`1(h)
`1(i)
`1(j)
`1(k)
`1(l)
`1(m)
`1(n)
`6(a)
`6(b)
`
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`
`Bims Rpt.
`(Ex. 2 at pp. 116-189)
`Waldroup
`Mucke
`X (¶ 266)
`X (¶¶ 271-272)
`X (¶¶ 275-276)
`X (¶¶ 280-281)
`X (¶¶ 286-287)
`X
`X
`X (¶¶ 301-302)
`X (¶¶ 307-308)
`X (¶¶ 314-317)
`X (¶¶ 320-322)
`X (¶¶ 326-330)
`X (¶¶ 336-338)
`X (¶¶ 343-355)
`X (¶¶ 360-364)
`X (¶¶ 368-371)
`X (¶¶ 374-375)
`
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`
`Dr. Bims’s reliance on Mucke for claim limitations 1(pre)-(d), 1(g)-(n), and 6(a)-(b) in
`
`combination with Waldroup constitutes new obviousness combinations and thus should be
`
`stricken.5 See Freeny, 2019 WL 8688586, at *2.
`
`Furthermore, the Bims Rpt. includes opinions with respect to Mucke and Nakayama in
`
`view of Applicant Admitted Prior Art (“AAPA”) for claim limitations 1(pre), 1(b)-1d), 1(f)-(g),
`
`1(i), 1(k), and 1(m). Ex. 2, Bims Rpt. at ¶¶ 147, 154, 161, 166, 180, 191, 210, 223, 230, and 239.
`
`But Apple never identified the combination of Mucke with AAPA in its invalidity contentions.
`
`See Ex. 8, Inv. Cont. at 64 (specifically identifying “Nakayama in view of Applicant Admitted
`
`Prior Art” without including Mucke). The only place Apple relied on AAPA in combination with
`
`Mucke was for limitation 1(a), which Maxell does not seek to strike. See Ex. 9, Ex. D1 to Inv.
`
`5 In addition, the Final Election identified Waldroup in combination with Mucke, not vice versa. Thus, this invalidity
`theory also violates the Court’s Focusing Order.
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`Cont. at 4. Accordingly, Dr. Bims’s reliance on Mucke in view of AAPA for the aforementioned
`
`claim limitations constitutes new obviousness combinations and should be stricken.
`
`The Paradiso Rpt. for the ’999 Patent relies on the obviousness combination of
`
`Cyberguide with Hayashida for claims 1(d)(i) and 3. Ex. 5, Paradiso Rpt. at Ex. E4 (pp. 13, 19,
`
`and 21). However, Apple’s Invalidity Contentions did not rely on Hayashida for claims 1(d)(i)
`
`and 3 in combination with Cyberguide. Ex. 18, Ex. A12 to Inv. Cont. at pp. 20-25 and 32. This
`
`thus constitutes new obviousness combinations and should be stricken. See Freeny, 2019 WL
`
`8688586, at *2.
`
`The Bovik Rpt. for the ’493 Patent relies on the obviousness combinations of the Sony
`
`MVC-FD83/FD88 cameras alone or in combination with Misawa for claim 6. Ex. 3, Bovik Rpt.
`
`at ¶ 20, 135 (including chart). But Apple’s Invalidity Contentions do not rely on the Sony
`
`cameras alone or in combination with Misawa for claim 6. Ex. 8 at p. 43; Ex. 14, Ex. B11 to Inv.
`
`Cont. at 2 (providing notice of “MVCFD83 in view of Sato and/or Horii and/or Juen and further
`
`in view of Misawa, Takase, or Ishman”), 129 (“A PHOSITA would have found it obvious to
`
`modify MFCFD83’s device, as further modified by Sato and/or Horii and/or Juen, to have an
`
`image-instability detector that detects an image-instability of the electric camera, as taught by
`
`Misawa.”), and 155 (same) (citing 128-154). Apple’s invalidity contentions only asserted that
`
`MVCFD83 in combination with one of Sato, Horii, or Juen and Misawa render claim 6 obvious,
`
`not MVCFD83 in combination with Misawa alone. Id. Dr. Bovik’s reliance on the Sony MVC-
`
`FD83/FD88 camera alone or in combination with Misawa for claim 6 constitutes new
`
`obviousness combinations and thus should be stricken. See Freeny, 2019 WL 8688586, at *2.
`
`4.
`
`The Applicable Factors Support Exclusion of the New Invalidity Positions
`
`Permitting Apple to rely on new invalidity positions would unduly prejudice Maxell.
`
`Whereas Maxell should