Case 5:19-cv-00036-RWS Document 348 Filed 06/18/20 Page 1 of 21 PageID #: 12198
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`
`
`Plaintiff
`
`Civil Action NO. 5:19-cv-00036-RWS
`
`v.
`
`APPLE INC.,
`
`JURY TRIAL DEMANDED
`
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`APPLE INC.’S OPPOSITION TO DEFENDANT MAXELL, LTD.’S
`MOTION TO STRIKE PORTIONS OF DEFENDANT
`APPLE INC.’S INVALIDITY EXPERT REPORTS
`
`

`

`Case 5:19-cv-00036-RWS Document 348 Filed 06/18/20 Page 2 of 21 PageID #: 12199
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`TABLE OF CONTENTS
`
`
`
`I.
`II.
`
`2.
`
`Page
`INTRODUCTION ............................................................................................................. 1
`ARGUMENT ..................................................................................................................... 2
`A.
`Apple’s Expert Reports Do Not Present Any New Theories ................................. 2
`1.
`Apple Disclosed The Written Description And Enablement
`Theories Upon Which Its Experts Rely ..................................................... 2
`Apple More Than Adequately Disclosed Its Motivations To
`Combine ..................................................................................................... 3
`Apple’s Experts Present No New Invalidity Theories ............................... 8
`3.
`Apple’s Experts Do Not Provide Opinions Of Invalidity Based On Prior
`Art In Excess Of The Final Election Of Prior Art ............................................... 13
`Even If The Court Finds That There Are Any New Theories, Exclusion Is
`Not Warranted ...................................................................................................... 14
`
`B.
`
`C.
`
`
`
`i
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`

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`
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`Allergan, Inc. v. Teva Pharm. USA, Inc.,
`No. 2:15-cv-01455-WCB, 2017 U.S. Dist. LEXIS 225041 (E.D. Tex. Aug. 3,
`2017) ................................................................................................................................... 6, 15
`Biscotti Inc. v. Microsoft Corp.,
`2:13-cv-01015, 2017 WL 2267283 (E.D. Tex. May 24, 2017) ................................................ 3
`Elbit Sys. Land & C41 Ltd. v. Hughes Network Sys., LLC,
`No. 2:15-cv-00037-RWS-RSP (E.D. Tex. July 4, 2017) ........................................................ 15
`Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC,
`No. 2:15-CV-37-RWS-RSP, 2016 WL 9307563 (E.D. Tex. Sept. 27, 2016) .............. 7, 11, 12
`Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC,
`No. 215CV00037RWSRSP, 2017 WL 2651618 (E.D. Tex. June 20, 2017),
`report and recommendation adopted, No. 2:15-CV-00037-RWS, 2017 WL
`4693971 (E.D. Tex. July 31, 2017) ........................................................................................... 7
`EON Corp. IP Holdings, LLC v. Sensus USA Inc.,
`Case No. 6:09-cv-116 (E.D. Tex. Jan. 21, 2010) ................................................................ 7, 12
`Finisair Corp. v. DirecTV Grp., Inc.,
`424 F. Supp. 2d 896 (E.D. Tex. 2006) ...................................................................................... 7
`Freeny v. Fossil Grp., Inc.,
`No. 2:18-cv-00049 (E.D. Tex. May 30, 2019).......................................................................... 7
`Life Techns. Corp. v. Biosearch Techs., Inc.,
`No. 12-00852, 2012 WL 4097740 (N.D. Cal. Sept. 17, 2012) ................................................. 7
`LML Patent Corp. v. JPMorgan Chase & Co.,
`No. 2:08-cv-448, 2011 WL 5158285 (E.D. Tex. Aug. 11, 2011) ............................................. 7
`Network-1 Techs., Inc. v. Alcatel-Lucent USA Inc.,
`No. 6:11-cv-492-RWS-KNM (E.D. Tex. Oct. 11, 2017) ....................................................... 14
`O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
`467 F.3d 1355 (Fed. Cir. 2006)................................................................................................. 7
`PerdiemCo v. Industrack LLC,
`Case No. 2:15-cv-00727-JRG-RSP (E.D. Tex. Oct. 24, 2016) ................................................ 2
`PerdiemCo, LLC v. Industrack LLC,
`No. 2:15-cv-00727-JRG (E.D. Tex. Oct. 12, 2016) ................................................................ 15
`
`
`
`ii
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`
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`Personal Audio v. Togi Entm’t,
`Case No. 2:13-cv-00013-JRG-RSP, Dkt. 202 (E.D. Tex. Aug. 6, 2014) ............................... 14
`Realtime Data, LLC v. Packeteer, Inc.,
`No. 6:08-cv-144, 2009 WL 4782062 (E.D. Tex. Dec. 8, 2009) ............................................... 7
`Tyco Healthcare Grp. LP v. Applied Med. Res. Corp.,
`No. CIV.A. 9:06-CV-151, 2009 WL 5842062 (E.D. Tex. Mar. 30, 2009) .............................. 6
`RULES
`P.R. 3-3 ........................................................................................................................................... 3
`P.R. 3-3(b) ..................................................................................................................................... 12
`P.R. 3-3(c) ..................................................................................................................................... 12
`
`iii
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`
`I.
`
`INTRODUCTION
`
`Invalidity contentions are designed to give adequate notice to allow the parties to litigate
`
`their cases. Maxell cannot seriously dispute that it had more than adequate notice of all of
`
`Apple’s invalidity theories. Apple’s invalidity contentions fully complied with the Patent Rules,
`
`disclosing all of the prior art references and combinations Apple would rely on, and providing
`
`motivations to combine those references. In attempting to manufacture disputes, Maxell
`
`imagines novel legal requirements and attempts to fault Apple for not complying with these non-
`
`existent requirements. For example, Maxell suggests that prior art combinations must be
`
`disclosed on a claim limitation basis in invalidity contentions for an expert to rely on those
`
`combinations in a report. This District expressly holds otherwise: combinations do not need to
`
`be disclosed on a limitation basis in invalidity contentions. All that is required is to chart the
`
`prior art references and disclose which references will be combined, and motivations to combine
`
`them. Apple complied with that requirement.
`
`Similarly, Maxell criticizes experts for providing additional analysis of prior art and
`
`motivations to combine over the disclosure in Apple’s invalidity contentions, and its brief
`
`includes charts suggesting that Apple’s experts are presenting “new” theories by selecting
`
`snippets of Apple’s expert reports that Maxell claims do not use exactly the same words as parts
`
`of Apple’s invalidity contentions Maxell cites. In doing so, Maxell simply ignores other parts of
`
`Apple’s invalidity contentions that very clearly disclose the grounds Maxell accuses of being
`
`“new.” Also, this District holds that parties are not required to put forward their entire case in
`
`invalidity contentions; expert reports are necessarily more detailed.
`
`Unsurprisingly considering that Apple’s invalidity contentions clearly complied with the
`
`Patent Local Rules (“Patent Rules”), Maxell finds no authority to support its novel theories and
`
`the extreme relief it seeks for illusory disputes. To the contrary, the only cases Maxell cites do
`
`1
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`

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`not apply, because they involved a party who wholly failed to disclose entire prior art references
`
`or combinations. That simply is not the case here. Maxell’s motion should be denied.
`
`II.
`
`ARGUMENT
`
`A.
`
`Apple’s Expert Reports Do Not Present Any New Theories
`
`1.
`
`Apple Disclosed The Written Description And Enablement Theories
`Upon Which Its Experts Rely
`
`Maxell is wrong that Apple’s expert reports for Dr. Bims and Dr. Menascé present two
`
`new invalidity theories based on lack of written description and enablement. Mot. at 4.
`
`First, contrary to Maxell’s mischaracterization, Dr. Bims does not offer an opinion that
`
`any claims are invalid due to lack of written description or enablement. Mot. at 4. Rather, in
`
`criticizing Maxell’s improper application of the claims, Dr. Bims merely states that Maxell’s
`
`interpretation of the claims in its infringement contentions cannot be correct because it is not
`
`supported by a written description in the specification and it is not enabled. Ex. 2 ¶¶ 167-173.
`
`Under this District’s precedent, merely stating that Plaintiff’s infringement analysis would render
`
`the claims invalid (as Dr. Bims does here) is not a new invalidity theory. See PerdiemCo v.
`
`Industrack LLC, Case No. 2:15-cv-00727-JRG-RSP, Dkt. 256 at 4 (E.D. Tex. Oct. 24, 2016)
`
`(finding an expert presented no new invalidity theory when he instead was merely explaining
`
`“that the asserted claims would be invalid under [Plaintiff’s expert’s] infringement analysis”).
`
`Second, for Dr. Menascé’s report, Maxell admits that Apple disclosed in its Invalidity
`
`Contentions that each of the claimed elements of ’586 Patent Claim 1 was invalid based on lack
`
`of written description. Mot. at 4 (Apple “listed the individual terms/phrases as suffering from
`
`lack of written description.”). Maxell complains, however, that Dr. Menascé opined that the
`
`“flow” (i.e., the order of these claim elements) lacked adequate written description. Maxell
`
`contends that this is a “new” theory because it relies on considering claim 1 as a whole the
`
`2
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`

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`invalidity contentions did not mention the “overall flow .” Id. This is pure sophistry. The
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`allegedly missing “flow” / order of the claim elements is explicitly stated in the claim elements
`
`themselves. For example, Claim 1 recites that “when conditions are met, the controller controls
`
`the mobile terminal to transmit…,” “wherein the conditions include … after the mobile terminal
`
`is in the locked state…,” and “wherein the conditions include … after the performing, receiving,
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`by the controller, ...” as disclosed in Apple’s contentions. See, e.g., Inv. Cover Pl. at 127-128.
`
`Indeed, during prosecution, the applicant had to narrow the claims to this specific order or
`
`“flow” to obtain allowance of the claims. See Ex. 19 (’586 Patent File History excerpts). Thus,
`
`by disclosing that the individual claim terms lack written description, as Maxell admits Apple
`
`did, Apple necessarily disclosed this invalidity theory regarding the “flow” of Claim 1.
`
`Biscotti Inc. v. Microsoft Corp., cited by Maxell, does not hold otherwise. Biscotti
`
`merely holds that a party cannot raise new, belated lack of written description and enablement
`
`theories in expert reports. 2:13-cv-01015, 2017 WL 2267283, at *2 (E.D. Tex. May 24, 2017).
`
`Here, Maxell has not identified any new, belated lack of written description or enablement
`
`theory, and exclusion is not justified.
`
`2.
`
`Apple More Than Adequately Disclosed Its Motivations To Combine
`
`Where a defendant alleges a combination of prior art items renders a claim obvious, the
`
`Patent Rules provide “each such combination, and the motivation to combine such items, must
`
`be identified.” P.R. 3-3. There is no question that Apple did so here.
`
`Apple disclosed its prior art combinations and motivations to combine the prior art, and
`
`Maxell does not contend that Apple did not identify any motivations to combine for such
`
`combinations. See Mot. at 4-6. Instead, Maxell cherry-picks portions of the motivations to
`
`combine, as stated in Apple’s Invalidity Contentions, and compares them to cherry-picked
`
`portions of Apple’s expert reports’ discussions of motivations to combine. Maxell essentially
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`3
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`complains that the experts did not use identical words as the contentions, or that the experts
`
`provided finther explanation for a motivation that was clearly disclosed.
`
`First, various of Maxell’s allegedly “new” motivations are explicitly disclosed, often
`
`using almost identical language:
`
`Allegedly “New” Motivations in Report
`
`Previous Invalidity Contentions Disclosure
`
`Re I ort of Dr. Ha
`
`Bims
`
`
`
`Nakayama with Mucke — Application of
`TDMA system to CDMA device. 1“] 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. 111] 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. 1H] 259-263, 347-355, 364, 371, and
`375.
`
`“the known work of Nakayama in the field
`of TDMA transmission power control would
`prompt a variation thereof in the field of
`CDMA transmission power control based on
`the design incentive of ‘efficient operation of
`a CDMA wireless telephone system...” Ex.
`20.
`
`A POSITA “would have recognized the
`benefits of using a controller and memory
`to control bias and gain settings, including
`improved programmability and more efficient
`inte u ation.” Ex. 8 at 67-68; Ex. 26.
`
`“known for a CDMA cellular telephone to
`perform such open—loop and closed—loop
`power control according to a power control
`signal so as to control the transmitted
`power...” .’l93 Patent at 1:45—59; 9:52-64;
`see also Mucke at 1:38—51, Waldroup at
`Abstract. Ex. 8 at 66.
`
`Mucke discloses benefits of and strategies for
`maintaining linearity. Ex. 26.
`
`including improved programmability and
`more efficient integration.” Ex. 8 at 66—68
`
`A PHOSITA would have recognized the
`benefits of using a controller and memory to
`control bias and gain settings, including
`improved programmability and more efficient
`integration. Ex. 8 at 67-68.
`See above re open-loop and closed-loop.
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`Re o art of Dr. Daniel Menascé
`
`x. 4 - Schiffer with Kirkn -
`
`“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”
`
`11 246, App. D (pp. 22-23).
`
`“motivation to modify Schiffer ’063 to
`employ Kirkup ’746’s conditions would be so
`that the user can unlock their phone prior
`to entering communications range of the
`computer system. This would increase the
`convenience of Schiffer ’063’s system and
`would be a simple application of a known
`technique to a known device.” Ex. 11 at 14.
`
`“reduce the delay in unlocking computer
`system 110. This would increase the
`convenience...” Ex. 11 at 17.
`
`“By 2012, it was well known to set certain
`conditions, before a mobile terminal could
`be used to unlock another mobile terminal.
`
`See, e.g., de la Huerga ’534 at 12:53-57;
`Kirkup ’746 at [0040]; Schiffer ’603 at 4:10—
`13, 53—58, Fig. 2.
`A PHOSITA would have recognized the
`benefits of specifying certain conditions
`that must be met before a user could use a
`
`mobile terminal to unlock another device
`
`because this would increase the security of
`the system.” Ex. 8 at 122.
`
`Re i ort of Dr. Ben'amin Bederson
`
`x. l - 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 finther
`Asmussen’s stated goal” to ‘provide[] users
`with advanced features and capabilities.’”
`1H] 242, 244, Ex. F (pp. 70-71).
`
`“The preferred set top terminal provides
`both a menu generation capability as well as a
`number of advanced features and
`
`functional capabilities. Asmussen at 3:20-
`30.” Ex. 21 at 3.
`
`By 2008, it was well known that video
`telephone devices could include the ability to
`automatically restart the displaying of
`digital information upon receiving notice of a
`terminated videophone call. See, e. g., Allen
`’333 at [0008], [0027], [0084], [0096],
`[0101]; Anzures ’849 at 16:17-25, 19:55-62,
`Fig. 8B; Marley ’514 at [0022], Fig. 5. Ex. 8
`at 78-80.
`
`Like Asmussen, Allen teaches a set-top box
`device with a processor that automatically
`restarts displaying of the television program
`from the oint at which the video call
`
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`
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`commenced in response to the termination of
`the call. Ex. 21 at 62.
`
`
`
`Re I art of Dr. Alan Bovik
`
`x. 3 - Misawa with other nrior art
`
`“known benefits over other known
`stabilization
`techniques, such as optical image
`stabilization”;
`
`“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”;
`
`“benefits of using an image—instability
`detector [such as] improved image output
`and reduced blurring” See D.I. 341 at 5—6
`
`“in view of various size, cost, and other
`design considerations, it was common for
`camera makers to use an LCD...”
`“MVCFD83” (commercial camera). Ex. 8 at
`46-47.
`
`“well—known technique for capturing digital
`images and/or videos,” “improving similar
`devices in the same way,” and “combination
`of prior art elements according to known
`methods” See D.I. 341 at 6.
`
`“benefits of using an image-instability
`“to improve image quality and compensate
`detector [such as] improved image output
`for image blur caused by unintentional
`movements” 111] 132-133, 156-158, and pp. 84, and reduced blurring” See D1. 341 at 5—6.
`88, 112, and 115.
`
`
`
`Maxell presents a novel legal theory that expert opinions may be struck where the
`
`references and combinations were previously disclosed in invalidity contentions, along with
`
`motivations to combine, based on an expert merely expanding upon those motivations in their
`
`analyses and citing additional support from disclosed references. Because the Patent Rules do
`
`not require such granular disclosure, Maxell cites no case supporting its novel theory. Instead,
`
`the cases Maxell cites address a situation not present here: where expert reports disclosed
`
`entirely new prior art references or combinations for the first time.1
`
`1 In Ivco Healthcare Grp. LP v. Applied Med. Res. Corp. , the defendant did not disclose the
`combination. No. CIV.A. 9:06-CV-151, 2009 WL 5842062, at *3 (ED. Tex. Mar. 30, 2009). In
`Allergan, Inc. v. Teva Pharm. USA, Inc. , defendants did not disclose two references combined
`with other references. No. 2:15-cv—Ol455-WCB, 2017 US. Dist. LEXIS 225041, at *28 (ED.
`Tex. Aug. 3, 2017). In Freeny v. Fossil G17), Inc. , the defendant did not identify the disputed
`prior art reference as part of the underlying combination. No. 2: l8-cv-00049, Dkt. 109 at *5—6
`
`

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`Contrary to Maxell’s suggestion, the case law is clear that experts may elaborate on
`
`disclosed references and invalidity theories without using the same exact words as in invalidity
`
`contentions. See, e.g., Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC, No.
`
`215CV00037RWSRSP, 2017 WL 2651618, at *9 (E.D. Tex. June 20, 2017), report and
`
`recommendation adopted, No. 2:15-CV-00037-RWS, 2017 WL 4693971 (E.D. Tex. July 31,
`
`2017). In Elbit, for example, the plaintiffs argued that a defendant’s expert introduced a “new
`
`invalidity theory” by relying on an undisclosed add-on to a Personal Earth Station (“PES”)
`
`system prior art—the LANAdvantage feature —which allegedly provided Internet-related
`
`functionality to the PES. The court held that, while the phrase “LANAdvantage” may not have
`
`appeared in the defendants’ invalidity contentions, the contentions disclosed that the PES
`
`included TCP/IP functionality, which substantively put plaintiffs on notice. In denying the
`
`motion to strike contentions, the court stated that plaintiff’s argument “demands granularity not
`
`required by the local patent rules,” and the contentions adequately disclosed PES’s underlying
`
`functionality. Contentions are not intended to “require a party to set forth a prima facie case,”
`
`they need only provide “fair notice.” Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC,
`
`No. 2:15-CV-37-RWS-RSP, 2016 WL 9307563, at *3 (E.D. Tex. Sept. 27, 2016), citing EON
`
`Corp. IP Holdings, LLC v. Sensus USA Inc., Case No. 6:09-cv-116, Dkt. No. 122 at 4 (E.D. Tex.
`
`Jan. 21, 2010). Similarly here, Maxell identifies no substance of any reference, combination, or
`
`
`(E.D. Tex. May 30, 2019). In LML Patent Corp. v. JPMorgan Chase & Co., defendants
`acknowledged that they disclosed 28 new obviousness combinations. No. 2:08-cv-448, 2011
`WL 5158285, at *7 (E.D. Tex. Aug. 11, 2011). Realtime Data, O2 Micro, Life Techns., and
`Finisair likewise stand for the unremarkable principle that defendants must put plaintiff on
`notice of potentially invalidating art and combinations. See Realtime Data, LLC v. Packeteer,
`Inc., No. 6:08-cv-144, 2009 WL 4782062 (E.D. Tex. Dec. 8, 2009); O2 Micro Int’l Ltd. v.
`Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 n.12 (Fed. Cir. 2006); Life Techns. Corp. v.
`Biosearch Techs., Inc., No. 12-00852, 2012 WL 4097740, at *3 (N.D. Cal. Sept. 17, 2012);
`Finisair Corp. v. DirecTV Grp., Inc., 424 F. Supp. 2d 896, 901 (E.D. Tex. 2006).
`
`7
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`motivation that it did not have “fair notice” of, and the Local Patent Rules did not require Apple
`
`to make the disclosure Maxell now demands. Maxell, moreover, never identified any
`
`deficiencies in Apple’s invalidity contentions.
`
`3.
`
`Apple’s Experts Present No New Invalidity Theories
`
`Apple fairly and adequately disclosed the invalidity theories its experts present, and even
`
`a cursory review of Apple’s contentions would have revealed that. Mot. at 6.
`
`Indeed, several theories that Maxell now claims are “new” were explicitly disclosed:
`
`Alle_edl “New” 0 : inion in Re n orts
`
`Previous Invalidi Contentions Disclosure
`
`
`
`Menascé re ’438 Patent: Dr. Menasce’s
`opines that Yamazaki discloses “an
`‘attachment’ can be added to information
`posted on the electronic bulletin board using a
`‘dialogue’ format” Mot. at 7.
`
`“when information having an extremely large
`information volume is displayed on the
`display part 7 of the electronic bulletin board
`5, along with partitioning the information, it
`may be configured, as illustrated in FIG. 16,
`such that displaying a mark P meaning
`“subsequent screen present” to inform the
`information acquirer of the presence or
`absence of a subsequent screen [i.e., an
`attachment] and sending and receiving a
`control signal between the electronic bulletin
`board 5 and the mobile information terminal 8
`
`of the information acquirer using a dialogue
`format permits a plurality of screens to be
`displayed in order on the display part 7 of the
`electronic bulletin board 5.” Ex. 15 at 33
`
`“when information having an extremely large
`Menascé re ’483 Patent: “‘the electronic
`information volume is displayed on the
`bulletin can be used for communication
`display part 7 of the electronic bulletin board
`between two users’ .
`.
`. ‘A POSITA would
`5, along with partitioning the information, it
`use a ‘dialogue’ format employing multiple
`screens to allow for a two-way conversation’” may be configured, as illustrated in FIG. 16,
`such that displaying a mark P meaning
`“subsequent screen present” to inform the
`
`information acquirer of the presence or
`absence of a subsequent screen [i.e., an
`attachment] and sending and receiving a
`control signal between the electronic bulletin
`board 5 and the mobile information terminal 8
`
`of the information acquirer using a dialogue
`format .ermits a lurali of screens to be
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`displayed in order on the display part 7 of the
`electronic bulletin board 5.” Ex. 15 at 33
`
`“Yamazaki ’1 10 teaches that the bulletin
`
`board can be used to play a competitive
`game in which a plurality of information
`terminals can participate.” Ex. 15 at 34
`(users use the terminals and this shows
`communication between users).
`
`Kirkup was disclosed claim elements [1(c)] -
`[l(d)]. Also identified for elements [1(c)] and
`[1(c)] - [l(g)]- Elements [1(d)]-[1(g)], are all
`part of the same limitation. Ex. 22 at 7—10
`
`Menascé re ’586 Patent: “Menasce
`
`identifies the obviousness combination of
`
`Schiffer with Kirkup for claim 1(d). . . .
`However, Apple’s Invalidity Contentions do
`not rely on Kirkup for claim 1(d) in
`combination with Schiffer.” Mot. at 7.
`
`Re I ort of Dr. Ben'amin Bederson on the ’306 Patent and the ’991 Patent
`
`Bederson re ’306 Patent: “Bederson
`
`asserts that all asserted ’306 claims-including
`claim 15-are invalid as obvious over Borland
`
`Apple’s Invalidity Contentions disclosed that
`Apple would rely on Borland with the
`knowledge of a POSlTA. Ex. 8 at 88-90.
`
`in combination with the knowledge of a
`POSIT .” Mot. at 8.
`
`Bederson re ’991 Patent: “Like Asmussen,
`
`Allen teaches a set-top box device with a
`processor that automatically restarts
`displaying of the television program from the
`point at which the video call commenced in
`response to the termination of the call.
`. . .
`relies on the obviousness combination of
`
`Asmussen with Allen for claim 4. Mot. at 8-
`9.
`
`Allen discloses a “system and method for
`automatically answering and recording video
`calls” wherein, “[w]hen a video
`communication is terminated,” the system
`“plays back the television program being
`buffered from the point in time at which the
`communication commenced.” See, e.g., Ex.
`21 at 62-64.
`
`Asmussen + Allen combination disclosed,
`including for claim 4. See Ex. 7 at 4; Ex. 12
`at 2 (“Asmussen in view of Allen renders
`claims 2-5 and 9—12 obvious”). Apple also
`charted this combination for Claim 2 on
`
`which Claim 4 depends. Ex. 21.
`
`Re . 011 of Dr. Alan Bovik on the ’493 Patent
`
`“[Sony camera] MVCFD83 alone or in View
`Bovik re ’493 Patent: “Apple’s Invalidity
`of Misawa [or in view of other references]
`Contentions do not rely on the Sony [MVC-
`FD83/FD88] cameras alone or in combination teaches this limitation.” Ex. 14 at 155
`with Misawa for claim 6.” Mot. at 11.
`(referring to limitations of Claim 6).
`
`
`
`
`
`These disclosures are clear in the contentions. For example, for Dr. Bovik where Maxell
`
`contends that Apple’s contentions did not rely on the Sony cameras [e.g., MVC—FD83] alone or
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`Case 5:19-cv-00036-RWS Document 348 Filed 06/18/20 Page 14 of 21 PageID #: 12211
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`in combination with Misawa for Claim 6 (Mot. at 11), it can be plainly seen that they did:
`
`
`
`Ex. 14 at 155.
`
`For the remaining expert opinions, Maxell complains that experts discussed additional
`
`support from the disclosed references, discuss the same combination for other elements of the
`
`same claims, or discuss the same combinations for other similar claims. For some combinations,
`
`Maxell is wrong and the exact same elements were discussed. As discussed below, precedent in
`
`this district also holds that invalidity contentions need not disclose combinations for particular
`
`claim elements. Apple’s contentions provided adequate notice, and Maxell’s motion does not
`
`merit exclusion.
`
`For example, for Dr. Menascé, Maxell argues that the combinations of Nonogaki + Flynn
`
`for claims 1, 9, and 14 of the ’794 Patent are new. Mot. at 7-8. Apple explicitly disclosed this
`
`combination for these claims. See, e.g., Ex. 16 at 2 (“Nonogaki in view of Flynn renders obvious
`
`claims 1-3, 5-6, 8-12, and 14 ...”). Maxell appears to argue that Apple did not identify the use of
`
`Flynn in this combination for particular claim limitations: 1(c)(ii), 1(c)(iv), 9(d)(i), 9(d)(ii).
`
`Mot. at 8. But Apple disclosed Flynn for each of these claim limitations. Some examples are
`
`shown below:
`
`
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`10
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`Case 5:19-cv-00036-RWS Document 348 Filed 06/18/20 Page 15 of 21 PageID #: 12212
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`See Ex. 25 at 15 (Flynn’s disclosure of 1(c)(ii)), 9-21 (1(c)(iv)), 47-50 (9(d)(i)), 50-52 (9(d)(ii)),
`
`and 57 and 40-41 (claim 14).
`
`Comparing Dr. Bims’s ’193 Patent opinions to Apple’s Invalidity Contentions for (i) the
`
`combination of Mucke and Nakayama (Mot. at 9), and (ii) the combination of Waldroup and
`
`Mucke (Mot. at 10), Maxell argues that Nakayama was not charted for certain elements of Claim
`
`1 in the Mucke claim chart and Mucke was not charted for certain elements of Claim 1 in the
`
`Waldroup claim chart. Mot. at 9-10. But each of Nakayama and Mucke were fully charted in
`
`independent charts for all limitations of these claims. See Exs. 20 and 26. And, as Maxell
`
`concedes, the combinations were disclosed. Maxell complains that when Nakayama was
`
`mentioned in the Mucke chart, or when Mucke was mentioned in the Nakayama chart, these did
`
`not exhaustively repeat the larger claim charts for each reference.
`
`But again, Maxell is making up a rule that doesn’t exist. Invalidity contentions “need not
`
`identify which reference supplies which limitation in the combinations;” instead, charting the
`
`references and identifying the overall combination satisfies the rules. Elbit, 2016 WL 9307563,
`
`at *3. In Elbit, plaintiffs contended that a Supplemental Appendix was deficient because it did
`
`11
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`Case 5:19-cv-00036-RWS Document 348 Filed 06/18/20 Page 16 of 21 PageID #: 12213
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`not “disclose how Defendants propose the references should be combined—i.e., which elements
`
`from which references are being combined.” The court held, that this is not required by the
`
`Patent Rules. Instead, invalidity contentions “must chart each reference individually and must
`
`disclose which specific references are part of each obviousness combination, but need not
`
`identify which reference supplies which limitation in the combination.” Id. (observing that
`
`“‘contentions are not intended to require a party to set forth a prima facie case,’ they need only
`
`provide fair notice,” citing EON, Dkt. No. 122 at 4). See also P.R. 3-3(b); P.R. 3-3(c). Apple
`
`has provided the charts and identified the combinations, as discussed above and below.
`
`For Dr. Paradiso, Maxell argues that Dr. Paradiso relies on Cyberguide combined with
`
`Hayashida for ’999 Patent claims 1(d)(i) and 3, which Maxell calls a “new obviousness
`
`combination.” Mot. at 11. But Apple disclosed the combination of Cyberguide and Hayashida,
`
`and provided detailed claim charts for each. of Cyberguide and Hayashida, showing how each
`
`met the claim elements for Claims 1 and 3. See Inv. Cover Pl. at 12-14, 18-20, Exs. 28, 30, 29,
`
`30. Exs. 18, 30. This fully complies with the Patent Rules. See Elbit, 2016 WL 9307563, at *3.
`
`While Maxell contends that Apple did not disclose in the individual claim charts the Cyberguide
`
`and Hayashida combination for ’999 Patent Claim 3, Maxell clearly was on notice that (1) Apple
`
`would rely on the combination of Cyberguide and Hayashida, an