Case 5:19-cv-00036-RWS Document 343-9 Filed 06/03/20 Page 1 of 52 PageID #: 11365
`Case 5:19-cv-00036—RWS Document 343-9 Filed 06/03/20 Page 1 of 52 PageID #: 11365
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`EXHIBIT 8
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`EXHIBIT 8
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`

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`Case 5:19-cv-00036-RWS Document 343-9 Filed 06/03/20 Page 2 of 52 PageID #: 11366
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`
`
`Plaintiff,
`
`
`
`
`
`vs.
`
`APPLE INC.,
`
`
`
`
`
`Defendant.
`
` Civil Action No. 5:19-cv-00036-RWS
`
`JURY TRIAL DEMANDED
`
`DEFENDANT APPLE INC.’S FIRST SUPPLEMENTAL INVALIDITY CONTENTIONS
`PURSUANT TO PATENT LOCAL RULES 3-3 AND 3-4
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`

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`Case 5:19-cv-00036-RWS Document 343-9 Filed 06/03/20 Page 3 of 52 PageID #: 11367
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`I.
`
`INTRODUCTION
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`Pursuant to the Court’s Docket Control Order entered July 9, 2019 (D.I. 46) and Patent
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`Local Rules 3-3 and 3-4, Defendant Apple Inc. (“Apple”) provided its preliminary invalidity
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`contentions to Maxell, Ltd. (“Maxell”) for the asserted claims of U.S. Patent Nos. 6,748,317 (“the
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`’317 patent”); 6,580,999 (“the ’999 patent”); 8,339,493 (“the ’493 patent”); 7,116,438 (“the ’438
`
`patent”); 6,408,193 (“the ’193 patent”); 10,084,991 (“the ’991 patent”); 6,928,306 (“the ’306
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`patent”); 6,329,794 (“the ’794 patent”); 10,212,586 (“the ’586 patent”); 6,430,498 (“the ’498
`
`patent”) (collectively, the “Asserted Patents”) on August 14, 2019. Pursuant to the Court’s
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`February 24, 2020 Order Granting Apple’s Motion for Leave to Amend Invalidity Contentions
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`(D.I. 201), Apple provides these supplemental invalidity contentions (“First Supplemental
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`Invalidity Contentions”), which are subject to Apple’s Preliminary Election Of Prior Art, served
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`on November 18, 2019.
`
`Based on Maxell’s First Supplemental Disclosure of Asserted Claims and Infringement
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`Contentions (“Supplemental Infringement Contentions”) served on October 15, 2019, Maxell is
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`asserting claims 1-3, 5-15, 17, and 18 of the ’317 patent; claims 1-6 of the ’999 patent; claims 1,
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`3-6, 10, and 11 of the ’493 patent; claims 1-7 of the ’438 patent; claims 1, 6, and 7 of the ’193
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`patent; claims 1-5 and 8-12 of the ’991 patent; claims 2, 5, 6, and 12-15 of the ’306 patent; claims
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`1-3 and 5-14 of the ’794 patent; claims 1-2, 6-7, 9-10, 13-14, and 16-18 of the ’586 patent; and
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`claims 1, 3-5, 7-11, and 13 of the ’498 patent (collectively, “the Asserted Claims”), which are
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`subject to Maxell’s Preliminary Election of Asserted Claims, served on November 6, 2019. Apple
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`addresses the invalidity of the Asserted Claims in these First Supplemental Invalidity Contentions,
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`and concludes with a description of its document production and identification of additional
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`reservations and explanations.
`
`These First Supplemental Invalidity Contentions are based on the claim constructions or
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`

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`contain a written description of the invention . . . .” 35 U.S.C. § 112, ¶ 1. “To satisfy the written
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`description requirement, a patent applicant must convey with reasonable clarity to those skilled in
`
`the art that, as of the filing date sought, he or she was in possession of the invention.” ICU Medical,
`
`Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009) (internal quotation
`
`marks and citations omitted); see also Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332,
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`1340 (Fed. Cir. 2013). “The test [for written description support] requires an objective inquiry
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`into the four corners of the specification from the perspective of a person of ordinary skill in the
`
`art. Based on that inquiry, the specification must describe an invention understandable to that
`
`skilled artisan and show that the inventor actually invented the invention claimed.” Ariad
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`Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
`
`The specification must describe the claimed invention in sufficient detail so that a
`
`PHOSITA can recognize what is claimed. “The appearance of mere indistinct words in a
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`specification or a claim, even an original claim, does not necessarily satisfy that requirement.”
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`University of Rochester v. G.D. Searle & Co., 358 F.3d 916, 923 (Fed. Cir. 2004) (internal
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`quotation marks and citations omitted).
`
`The identified grounds noted below both individually and collectively render the Asserted
`
`Claims of the ’317, ’999, and ’498 patents invalid under the statutory requirements of § 112.
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`2.
`
`Indefiniteness Under 35 U.S.C. § 112, ¶ 2
`
`The Asserted Claims of the ’317, ’999, and ’498 patents fail to satisfy the requirements of
`
`§ 112, ¶ 2 because the scope of the following terms cannot be determined with reasonable certainty
`
`by a PHOSITA when reading the claims in light of the specification and prosecution history.
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`“said direction” (’317 patent, claims 1 and 10)
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`“said device connected to said server outputting said location information and said
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`direction information and receiving retrieved information based on said outputted
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`information at said server” (’317 patent, claim 5)
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`“said information is stores or roads information” (’317, claim 7)
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`“said destination” (’317 patent, claims 10 and 18; ’498 patent, claim 10)
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`“said location of another portable terminal” (’317 patent, claims 11-14)
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`“said walking navigation information” (’498 patent, claims 1, 5, 8, and 10; ’999
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`patent, claims 1, 5-6)
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`3.
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`Lack Of Enablement Under 35 U.S.C. § 112, ¶ 1
`
`The Asserted Claims of the ’317, ’999, and ’498 patents fail to satisfy the requirements of
`
`§ 112, ¶ 1 because the specification fails to provide an enabling disclosure for the following terms:
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`“said device connected to said server outputting said location information and said
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`direction information and receiving retrieved information based on said outputted
`
`information at said server” (’317 patent, claim 5)
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`4.
`
`Lack Of Written Description Under 35 U.S.C. § 112, ¶ 1
`
`The Asserted Claims of the ’317, ’999, and ’498 patents fail to satisfy the requirements of
`
`§ 112, ¶ 1 because the specification fails to provide an adequate written description of the following
`
`terms:
`
`“said device connected to said server outputting said location information and said
`
`direction information and receiving retrieved information based on said outputted
`
`information at said server” (’317 patent, claim 5)
`
`E.
`
`Invalidity Under 35 U.S.C. § 101
`
`To be valid under § 101, a claim must be directed to one of four eligible subject matter
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`categories: “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C.
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`’363. See Ex. B10.
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`Kinoshita ’828 in combination with Sato ’760, and further with Misawa ’482, Takase
`’483, Juen ’162, and/or Horii ’363. See Ex. B10.
`
`Kinoshita ’828 in combination with Misawa ’482, Takase ’483, Horii ’363, Ishman
`’575, and/or Juen ’162. See Ex. B10.
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`Kinoshita ’828 in combination with Sato ’760, and further with Misawa ’482, Takase
`’483, Horii ’363, Ishman ’575, and/or Juen ’162. See Ex. B10.
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`MVCFD83 in combination Sato ’760 and/or Horii ’363. See Ex. B11.
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`MVCFD83 in combination with Sato ’760 and/or Horii ’363, and further with Juen
`’162. See Ex. B11.
`
`MVCFD83 in combination with Sato ’760 and/or Horii ’363 and/or Juen ’162, and
`further with one of Misawa ’482, Takase ’483, or Ishman ’575. See Ex. B11.
`
`Sato ’760 in combination with one of Horii ’363, Juen ’162, Misawa ’482, or Takase
`’483. See Ex. B12.
`
`Sato ’760 in combination with one of Horii ’363 or Juen ’162, and further with one of
`Misawa ’482, Takase ’483, or Ishman ’575. See Ex. B12.
`
`QV8000SX in combination Sato ’760 and/or Horii ’363. See Ex. B13.
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`QV8000SX, alone or in combination with Sato ’760 and/or Horii ’363, and further with
`Juen ’162. See Ex. B13.
`
`QV8000SX, alone or in combination with Sato ’760 and/or Horii ’363 and/or Juen
`’162, and further with one of Misawa ’482, Takase ’483, or Ishman ’575. See Ex. B13.
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`2.
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`Motivation To Combine
`
`Apple hereby incorporates the legal background regarding obviousness combinations and
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`motivations to combine from Section
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` above. The motivations to combine various references
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`are included in the claim charts attached to these Invalidity Contentions. In addition, Apple
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`discloses additional motivations below.
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`The Asserted Claims of the ’493 patent are generally directed to apparatuses and techniques
`
`for capturing digital images. These technologies were widely known before the alleged priority
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`date of the ’493 patent, and were used in commercial products on sale and/or in public use before
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`the alleged priority date of the ’493 patent.
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`For example, the Asserted Claims of the ’493 patent recite “an image sensing device with
`
`a light receiving sensor having an array of pixels arranged vertically and horizontally in a grid
`
`pattern, in an N number of vertically arranged pixel lines” or similar limitations. By 2000, it was
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`conventional for digital cameras to include a light receiving sensor, such as a charge coupled
`
`device (CCD) image senor, having pixels arranged vertically and horizontally in a grid pattern.
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`See, e.g., Sato ’760 at 3:42-49, 4:41-46; Horii ’363 at 1:12-15, 6:5-8; Juen ’162 at 5:62-6:2;
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`Kinoshita ’828 at 3:68-4:4; Anderson ’535 at 10:29-44; Watanabe ’236 at 4:15-34; Kijima ’451 at
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`3:26-34; Inoue ’688 at [0013]; Apple QuickTake; Hitachi MPEGCAM; JVCGRDVL9500;
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`MVCFD83; QV8000SX. Indeed, the specification of the ’493 Patent admits that the use of such
`
`image sensing devices was known and conventional. See, e.g., ’493 patent at 1:23-2:53. Thus, to
`
`the extent any reference does not explicitly disclose these limitations, they would have been
`
`obvious to a PHOSITA in view of the level of skill in the art and/or one of the references charted
`
`in the attached exhibits because this represented the conventional approach for designing image
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`sensors.
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`The Asserted Claims of the ’493 patent recite “a signal processing unit, that generates
`
`image signals by using the output signals of the image sensing device” or similar limitations. By
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`2000, it was conventional (and necessary) for digital cameras to include signal processing circuitry
`
`for processing data captured by an image sensing device and generating resulting image signals.
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`See, e.g., Sato ’760 at 4:26-37; Horii ’363 at Fig. 1; Juen ’162 at 6:3-6; Kinoshita ’828 at 4:12-37;
`
`Anderson ’535 at Fig. 1; Watanabe ’236 at Fig. 1A; Kijima ’451 at Fig. 1; Inoue ’688 at Fig. 4;
`
`Apple QuickTake; Hitachi MPEGCAM; JVCGRDVL9500; MVCFD83; QV8000SX. Indeed, the
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`specification of the ’493 Patent admits that the use of such signal processing circuitry was known
`
`and conventional. See, e.g., ’493 patent at 1:23-2:53. Thus, to the extent any reference does not
`
`explicitly disclose these limitations, they would have been obvious to a PHOSITA in view of the
`
`level of skill in the art and/or one of the references charted in the attached exhibits because this
`
`represented the conventional approach for processing image data captured by an image sensing
`
`device.
`
`The Asserted Claims of the ’493 patent recite “a display unit with the display screen, to
`
`display an image corresponding to the image signals” or similar limitations. By 2000, it was well
`
`known that a digital camera could include a display screen, such as a LCD viewfinder, to display
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`an image corresponding to the image signals captured by the image sensor. See, e.g., Sato ’760 at
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`Fig. 1; Horii ’363 at 7:45-58; Juen ’162 at 6:23-35; Kinoshita ’828 at 5:6-14; Anderson ’535 at
`
`Fig. 1, 10:29-44; Watanabe ’236 at 6:14-24; Kijima ’451 at Abstract; Inoue ’688 at Figs. 2, 4;
`
`Apple QuickTake; Hitachi MPEGCAM; JVCGRDVL9500; MVCFD83; QV8000SX. Indeed, the
`
`specification of the ’493 Patent admits that the use of a display to monitor the capturing of images
`
`was conventional. See, e.g., ’493 patent at 2:1-17. A PHOSITA would have recognized the
`
`benefits of including such a display, including, for example, allowing the user to accurately frame
`
`the picture by providing a “live view” of the image being captured. There were many
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`commercially-available display screens on the market, and it was a matter of design choice for the
`
`camera maker to decide whether to include such as display. Thus, to the extent any reference does
`
`not explicitly disclose these limitations, they would have been obvious to a PHOSITA in view of
`
`the level of skill in the art and/or one of the references charted in the attached exhibits because this
`
`represented a well-known feature of digital cameras with known benefits.
`
`The Asserted Claims of the ’493 patent recite “wherein when recording an image in a static
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`image mode, the signal processing unit generates the image signals by using all signal charges
`
`accumulated in all N number of vertically arranged pixel lines of the image sensing device, to
`
`provide N pixel lines” or similar limitations. By 2000, it was a well-known, common goal for
`
`digital cameras to capture high-resolution digital images. See, e.g., Sato ’760 at 3:42-49, 4:41-46;
`
`Horii ’363 at 1:12-15, 6:5-8; Juen ’162 at 5:62-6:2; Kinoshita ’828 at 3:68-4:4; Anderson ’535 at
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`10:29-44; Watanabe ’236 at 4:15-34; Kijima ’451 at 3:26-34; Inoue ’688 at [0013]. Indeed, the
`
`specification of the ’493 Patent admits that capturing all pixel lines of an image sensing device for
`
`a still image was conventional. See, e.g., ’493 patent at 2:1-9 (in describing known prior art: “using
`
`the entire area of effective pixels including the area of image stabilization pixels in photographing
`
`a still image”). A PHOSITA would have recognized the benefits of using all pixel lines of the
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`image sensing device, including, for example, allowing the user to capture the maximum resolution
`
`allowable by the image sensor. Thus, to the extent any reference does not explicitly disclose these
`
`limitations, they would have been obvious to a PHOSITA in view of the level of skill in the art
`
`and/or one of the references charted in the attached exhibits because this represented a well-known
`
`technique for capturing high-resolution digital images.
`
`The Asserted Claims of the ’493 patent recite “wherein when monitoring the image in the
`
`static image mode, the signal processing unit generates the image signals by using pixel lines that
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`have been mixed or culled from the N number of vertically arranged pixel lines to only include
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`pixel lines separated from one another by intervals of a first distance” or similar limitations. By
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`2000, it was well known and conventional for digital cameras to include a display that has a lower
`
`resolution compared to the image sensor. See, e.g., Sato ’760 at Fig. 1; Horii ’363 at 7:45-58; Juen
`
`’162 at 6:23-35; Kinoshita ’828 at 5:6-14; Anderson ’535 at Fig. 1, 10:29-44; Watanabe ’236 at
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`6:14-24; Kijima ’451 at Abstract; Inoue ’688 at Figs. 2, 4; Apple QuickTake; Hitachi MPEGCAM;
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`JVCGRDVL9500; MVCFD83; QV8000SX. In view of various size, cost, and other design
`
`considerations, it was common for camera makers to use an LCD having a resolution lower than
`
`the resolution of the image sensor. Indeed, the specification of the ’493 Patent admits that mixing
`
`or culling pixel lines to produce a lower-resolution image for display during monitoring of the
`
`image was known and conventional. See, e.g., ’493 patent at 2:1-25. A PHOSITA would have
`
`recognized the benefits of mixing or culling pixel lines to produce a lower-resolution image for
`
`display during monitoring of the image in the static image mode, including, for example,
`
`accommodating the lower resolution of the display and/or ensuring sufficient bandwidth to provide
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`live viewing of the image being captured by the image sensor at a reasonable frame rate. See id.
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`Thus, to the extent any reference does not explicitly disclose these limitations, they would have
`
`been obvious to a PHOSITA in view of the level of skill in the art and/or one of the references
`
`charted in the attached exhibits because this represented a well-known technique for capturing
`
`digital images with known benefits.
`
`The Asserted Claims of the ’493 patent recite “wherein when recording the image in a
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`moving video mode, the signal processing unit generates the image signals by using a portion of,
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`or the entirety of, pixel lines which have been mixed or culled from the N number of vertically
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`arranged pixel lines to only include pixel lines separated from one another by intervals of a second
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`distance …” or similar limitations. By 2000, it was well known for digital cameras to include a
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`moving video mode in addition to a still image mode. See, e.g., Horii ’363 at Fig. 7; Juen ’162 at
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`Fig. 16; Kinoshita ’828 at Kijima ’451 at Abstract; Inoue ’688 at [0003]; Apple QuickTake; Hitachi
`
`MPEGCAM; JVCGRDVL9500; MVCFD83; QV8000SX. A PHOSITA would have recognized
`
`the benefits of incorporating a moving video mode, including, for example, improved functionality
`
`for the user. See id. Indeed, the specification of the ’493 Patent admits that the inclusion of a
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`moving video mode was known and conventional. See, e.g., ’493 patent at 1:26-29 (“In recent
`
`years, video cameras with a still image taking function and digital still cameras with a moving
`
`image taking function have become available.”). The specification of the ’493 Patent admits that,
`
`to maintain computability with television formats, it was well-known and necessary to capture
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`moving video at a resolution lower than that of the image sensor by mixing or culling the image
`
`data. See, e.g., ’493 patent at 2:2:26-35 (“In a digital still camera designed for taking still images,
`
`there has been a trend in recent years toward an increasing number of pixels used on the moving
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`video image sensing device in order to obtain higher resolution static image signals. When taking
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`a moving image or monitoring the video, it is necessary to generate signals that conform to the
`
`television system. The number of pixels on such an image sensing device, however, does not
`
`necessarily match the number of scanning lines of the television system and therefore some form
`
`of conversion means is required.”); 1:37-50 (“The NTSC system, for example, performs interlaced
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`scanning on two fields, each of which has an effective scanning line number of about 240 lines ….
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`That is, the signals of two vertically adjoining pixels in each field are mixed together inside or
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`outside the image sensing device to generate about 240 scanning lines, and the combinations of
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`pixels to be cyclically mixed together are changed from one field to another to achieve the
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`interlaced scanning.”); 2:10-17 (referencing JP H11-187306 for its thinning/mixing technique);
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`2:44-54 (referencing JP H09-270959 for its thinning/mixing technique). A PHOSITA would have
`
`also recognized the benefits of capturing moving video at a resolution lower than that of the image
`
`sensor by mixing or culling the image data, including, for example, lower data storage
`
`requirements, better battery life, enabling real-time processing of video images, and compatibility
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`with standard television display formats. See id. Thus, to the extent any reference does not
`
`explicitly disclose these limitations, they would have been obvious to a PHOSITA in view of the
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`level of skill in the art and/or one of one of the references charted in the attached exhibits because
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`this represented a well-known technique for capturing digital moving videos with known benefits.
`
`The Asserted Claims of the ’493 patent recite “an image-instability detector which detects
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`an image-instability of the electric camera” or similar limitations. By 2000, it was well known
`
`and conventional for digital cameras to include components for detecting and correcting image
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`instability. See, e.g., Misawa ’482 at 3:7-9, 4:60-5:8, 8:7-16, Figs. 1-3; Takase ’483 at 1:5-8, 3:38-
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`47, 3:57-4:3, 6:38-53, Figs. 3 and 5; Ishman ’575 at Abstract, 1:49-2:36, 2:58-61, 3:62-4:19, 7:24-
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`35, Figs. 2-3. Indeed, the specification of the ’493 Patent admits that the inclusion image stability
`
`correction in a digital camera was known and conventional. See, e.g., ’493 patent at 1:51-2:53
`
`(“Some image sensing devices to take moving images according to the NTSC system have an area
`
`of pixels for image stabilization added to the area of effective pixel area ….”). A PHOSITA would
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`have recognized the benefits of using an image-instability detector, including, for example,
`
`improved image output and reduced blurring. See id. Thus, to the extent any reference does not
`
`explicitly disclose these limitations, they would have been obvious to a PHOSITA in view of the
`
`level of skill in the art and/or one of the references charted in the attached exhibits because this
`
`represented a well-known technique for capturing digital images and/or videos with known
`
`benefits.
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`D.
`
`Invalidity Under 35 U.S.C. § 112
`
`Apple hereby incorporates the legal background regarding indefiniteness, enablement, and
`
`written description from Section II.D.1 above. The identified grounds noted below both
`
`individually and collectively render the Asserted Claims of the ’493 patent invalid under the
`
`statutory requirements of § 112.
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`1.
`
`Indefiniteness Under 35 U.S.C. § 112, ¶ 2
`
`The Asserted Claims of the ’493 patent fail to satisfy the requirements of § 112, ¶ 2 because
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`the scope of the following terms cannot be determined with reasonable certainty by a PHOSITA
`
`when reading the claims in light of the specification and prosecution history.
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`“vertically arranged pixel lines” (claims 1, 5, and 10)
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`“a number of effective scanning lines M of a display screen” (claim 1)
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`“mixing or culling signal charges accumulated in the N number of vertically
`
`arranged pixel lines” (claim 1)
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`“mixed or culled from the N number of vertically arranged pixel lines” (claims 5
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`and 10)
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`“to provide pixel lines only at pixel intervals of K1 pixels” / “to provide pixel lines
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`only at pixel intervals of K2 pixels” (claim 1)
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`“the output signals” (claims 1, 5, and 10)
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`“effective scanning lines” (claim 1)
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`“using the part of signal charges mixed or culled at pixel intervals of K2 pixels”
`
`(claim 4)
`
`“changing the pixel lines used, and the portion of the pixel lines used” (claim 6)
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`“changing the pixel lines used, and the portion of the pixel lines used” (claim 11)
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`“the first distance” (claim 10)
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`2.
`
`Lack Of Enablement Under 35 U.S.C. § 112, ¶ 1
`
`The Asserted Claims of the ’493 patent fail to satisfy the requirements of § 112, ¶ 1 because
`
`the specification fails to provide an enabling disclosure for the following terms:
`
`“mixing or culling signal charges accumulated in the N number of vertically
`
`arranged pixel lines” (claim 1)
`
`“mixed or culled from the N number of vertically arranged pixel lines” (claims 5
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`and 10)
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`“a value of K1 being different from a value of K2” (claim 1)
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`“where the second distance is different from the first distance” (claim 5)
`
`“wherein a value of the second distance is different from a value of the first
`
`distance” (claim 10)
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`3.
`
`Lack Of Written Description Under 35 U.S.C. § 112, ¶ 1
`
`The Asserted Claims of the ’493 patent fail to satisfy the requirements of § 112, ¶ 1 because
`
`the specification fails to provide an adequate written description of the following terms:
`
`“mixing or culling signal charges accumulated in the N number of vertically
`
`arranged pixel lines” (claim 1)
`
`“mixed or culled from the N number of vertically arranged pixel lines” (claims 5
`
`and 10)
`
`“a value of K1 being different from a value of K2” (claim 1)
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`“where the second distance is different from the first distance” (claim 5)
`
`“wherein a value of the second distance is different from a value of the first
`
`distance” (claim 10)
`
`4.
`
`Improper Dependent Claims Under 35 U.S.C. § 112, ¶ 4
`
`The Asserted Claims of the ’193 patent fail to satisfy the requirements of § 112, ¶ 4 because
`
`the following claims represent improper dependent form:
`
` “wherein during the moving video mode, the signal processing unit generates the
`
`image signals by using the signal charges mixed or culled at pixel intervals of K2
`
`pixels” (claim 3)
`
`51
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`Case 5:19-cv-00036-RWS Document 343-9 Filed 06/03/20 Page 15 of 52 PageID #: 11379
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`establishment over the authentication communication with the communication over the main
`
`wireless channel. See, e.g., Yamazaki ’110 at [0018], Fig. 5; Balfanz ’874 at [0018]; Nagano ’227
`
`at [0033], [0037], Fig. 7; Hamberg ’214 at Figs. 4, 8. A PHOSITA would have recognized the
`
`benefit of ensuring that the user who authenticated via the location limited channel is the same
`
`user communicating over the main wireless channel, thereby improving the security of the wireless
`
`system. Thus, to the extent any reference does not explicitly disclose these limitations, they would
`
`have been obvious to a PHOSITA in view of the level of skill in the art and/or one of the references
`
`charted in the attached exhibits because this represented a well-known approach for designing
`
`wireless communication systems with known benefits.
`
`D.
`
`Invalidity Under 35 U.S.C. § 112
`
`Apple hereby incorporates the legal background regarding indefiniteness, enablement, and
`
`written description from Section II.D.1 above. The identified grounds noted below both
`
`individually and collectively render the Asserted Claims of the ’438 patent invalid under the
`
`statutory requirements of § 112.
`
`1.
`
`Indefiniteness Under 35 U.S.C. § 112, ¶ 2
`
`The Asserted Claims of the ’438 patent fail to satisfy the requirements of § 112, ¶ 2 because
`
`the scope of the following terms cannot be determined with reasonable certainty by a PHOSITA
`
`when reading the claims in light of the specification and prosecution history.
`
`“short-distance communication unit” (claims 1, 4, 5)
`
`“data exchange” (claims 1, 4)
`
`“does not carry out data exchange” (claims 1, 4)
`
`“wherein a process is carried out to associate information on a communication
`
`establishment” (claim 5)
`
`60
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`Case 5:19-cv-00036-RWS Document 343-9 Filed 06/03/20 Page 16 of 52 PageID #: 11380
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`“An electronic notice-board system including a display apparatus according to
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`claim 4 wherein said display apparatus is an electronic notice board” (claims 6, 7)
`
`Claims 1 and 4 are directed to an “information-processing terminal” and a “display
`
`apparatus” but claim method steps such as “carries out data exchange” and
`
`accordingly are indefinite for improperly claiming two different subject-matter
`
`classes.
`
`2.
`
`Lack Of Enablement Under 35 U.S.C. § 112, ¶ 1
`
`The Asserted Claims of the ’438 patent fail to satisfy the requirements of § 112, ¶ 1 because
`
`the specification fails to provide an enabling disclosure for the following terms:
`
`“authentication process” (claims 1, 4)
`
`“allowance to use” (claims 1, 4)
`
`“does not carry out data exchange” (claims 1, 4)
`
`“contributing data” (claim 2)
`
`“adding a comment to contributed data” (claim 2)
`
`“wherein a process is carried out to associate information on a communication
`
`establishment between said first short-distance communication unit and said
`
`information-processing
`
`terminal with
`
`information on a communication
`
`establishment between said second communication unit and said information-
`
`processing terminal” (claim 5)
`
`3.
`
`Lack Of Written Description Under 35 U.S.C. § 112, ¶ 1
`
`The Asserted Claims of the ’438 patent fail to satisfy the requirements of § 112, ¶ 1 because
`
`the specification fails to provide an adequate written description of the following terms:
`
` “data exchange” (claims 1, 4)
`
`61
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`Case 5:19-cv-00036-RWS Document 343-9 Filed 06/03/20 Page 17 of 52 PageID #: 11381
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`“does not carry out data exchange” (claims 1, 4)
`
`“input unit for receiving an input” (claim 1)
`
`“contributing data” (claim 2)
`
`“adding a comment to contributed data” (claim 2)
`
`“means for selecting” (claim 3)
`
`“wherein a process is carried out to associate information on a communication
`
`establishment between said first short-distance communication unit and said
`
`information-processing
`
`terminal with
`
`information on a communication
`
`establishment between said second communication unit and said information-
`
`processing terminal” (claim 5)
`
`“electronic notice board” (claims 6, 7)
`
`E.
`
`Invalidity Under 35 U.S.C. § 101
`
`The Asserted Claims of the ’438 patent are invalid under § 101 because they are directed
`
`to the ineligible abstract idea of contributing data to a public notice board and claim
`
`implementations of this abstract idea using only conventional technology, as shown by the prior
`
`art identified above. The claims thus fail to disclose an inventive concept sufficient to transform
`
`the claimed abstract idea into a patent-eligible invention. Instead, the claims recites performing
`
`the abstract idea using broad functional language at a high level of generality without providing
`
`any specificity.
`
`V.
`
`’193 PATENT
`
`The ’193 patent was filed with the United States Patent and Trademark Office on
`
`November 9, 1999. In its Infringement Contentions, Maxell claims a priority date of November
`
`10, 1998. Apple reserves the right to serve additional or modified invalidity contentions should
`
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`B.
`
`Anticipation
`
`Apple contends that each prior art reference anticipates one or more claims of the ’193
`
`patent under at least 35 U.S.C. §§ 102(a), (b), (e), and/or (g), either expressly or inherently as
`
`understood by a PHOSITA:
`
`6. Mucke ’616. See Ex. D1.
`
`7. Nakayama ’059. See Ex. D2.
`
`C.
`
`Obviousness
`
`Apple contends that each prior art reference disclosed in the preceding Anticipation section
`
`may be combined with (1) information known to persons skilled in the art at the time of the alleged
`
`invention, (2) the applicant-admitted prior art in the specification, (3) any of the other anticipatory
`
`prior art references, and/or (4) any of the additional prior art references identified in this section to
`
`render these claims invalid as obvious.
`
`1.
`
`Exemplary Combinations
`
`Below is a listing of exemplary combinations of references that render obvious the Asserted
`
`Claims of the ’193 patent. For at least the reasons described below, it would have been obvious
`
`to a PHOSITA to combine any of a number of prior art references, including any combination of
`
`those identified below, to meet the limitations of the Asserted Claims of the ’193 patent. These
`
`exemplary combinations are alternatives to Apple’s anticipation and single-reference obviousness
`
`contentions, and, thus, they should not be interpreted as indicating that any of the individual
`
`references included in the exemplary combinations are not by themselves invalidating prior art
`
`under §§ 102 and/or 103. Apple reserves the right to identify additional combinations during
`
`expert discovery and later stages of the case.
`
`Mucke ’616 in view of Nakayama ’059 and/or Choi ’988. See Ex. D1.
`
`Nakayama ’059 in view of Applicant Admitted Prior Art and/or Waldroup ’863.
`
`64
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`Case 5:19-cv-00036-RWS Document 343-9 Filed 06/03/20 Page 19 of 52 PageID #: 11383
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`See Ex. D2.
`
`Waldroup ’863 in view of Geller. See Ex. D3.
`
`Waldroup ’863 in view of Geller and Mucke ’616. See Ex. D3.
`
`Waldroup ’863 in view of Nakayama ’059. See Ex. D3.
`
`2.
`
`Motivation To Combine
`
`Apple hereby incorporates the legal background regarding obviousness combinations and
`
`motivations to combine from Section
`
` above