Case 5:19-cv-00036-RWS Document 348-6 Filed 06/18/20 Page 1 of 7 PageID #: 12316
`Case 5:19-cv-00036—RWS Document 348-6 Filed 06/18/20 Page 1 of 7 PageID #: 12316
`
`EXHIBIT 23
`
`EXHIBIT 23
`
`

`

`Case 5:19-cv-00036-RWS Document 348-6 Filed 06/18/20 Page 2 of 7 PageID #: 12317
`
`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
`
`
`
`
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 348-6 Filed 06/18/20 Page 3 of 7 PageID #: 12318
`
`
`• “display calling message” (Claim 5).
`
`4.
`
`Improper Dependent Claims Under 35 U.S.C. § 112, ¶ 4
`
`The Asserted Claims of the ’991 patent fail to satisfy the requirements of § 112, ¶ 4 because
`
`the following claims represent improper dependent form:
`
`• “The communication apparatus according to claim 3, wherein when the processor
`
`receives the inbound videophone call notice while displaying the first digital
`
`information on the display, the processor switches a function of processing video
`
`information of the first digital information to a function of processing video
`
`information of the second digital information of the videophone call” (Claim 4);
`
`• “The method according to claim 10, further comprising the step of: upon receiving
`
`the inbound videophone call notice while displaying the first digital information,
`
`switching a function of processing video information of the first digital information
`
`to a function of processing video information of the second digital information of
`
`the videophone call” (Claim 11).
`
`E.
`
`Invalidity Under 35 U.S.C. § 101
`
`The Asserted Claims of the ’991 patent are invalid under § 101 because they are directed
`
`to the ineligible abstract idea of pausing one task to complete another, 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 claim recites performing the abstract idea using
`
`broad functional language at a high level of generality without providing any specificity.
`
`VII.
`
`’306 PATENT
`
`The ’306 patent was filed with the United States Patent and Trademark Office on January
`
`4, 2001. In its Infringement Contentions, Maxell claims a priority date of January 7, 2000. Apple
`
`86
`
`

`

`Case 5:19-cv-00036-RWS Document 348-6 Filed 06/18/20 Page 4 of 7 PageID #: 12319
`
`
`reserves the right to serve additional or modified invalidity contentions should Maxell be permitted
`
`to amend or modify its claimed priority date.
`
`A.
`
`Prior Art
`
`Apple identifies the following prior art now known to Apple to anticipate and/or render
`
`obvious one or more claims of the ’306 patent under at least 35 U.S.C. §§ 102(a), (b), (e), (g),
`
`and/or 103.
`
`1.
`
`Prior Art Patents and Publications
`
`The following patents and publications are prior art for Asserted Claims of the ’306 patent
`
`under at least 35 U.S.C. §§ 102(a), (b), (e), and/or (g). Invalidity claim charts for these references
`
`are attached as Exhibits F1 through F6.
`
`1. U.S. Patent No. 6,122,347 (“Borland ’347”), filed on November 13, 1997, and
`issued on September 19, 2000 to David J. Borland.
`
`2. U.S. Patent No. 6,216,017 (“Lee ’017”), filed on August 13, 1998, and issued on
`April 10, 2001 to Ki-Tae Lee et al.
`
`3. U.S. Patent No. 4,330,780 (“Masaki ’780”), filed on January 3, 1980, and issued
`on May 18, 1982 to Masaru Masaki.
`
`4. International Patent Publication No. WO 1996/027974 (“Van der Salm ’974”), filed
`on March 8, 1996 by Peter Van der Salm et al., and published on September 12,
`1996.
`
`5. U.S. Patent No. 5,007,076 (“Blakley ’076”), filed on November 3, 1989, and issued
`on April 9, 1991 to James R. Blakley.
`
`6. U.S. Patent No. 4,894,649 (“Davis ’649”), filed on January 7, 1988, and issued on
`January 16, 1990 to Walter L. Davis.
`
`7. U.S. Patent No. 6,373,925 (“Guercio ’925”), filed on September 24, 1997, and
`issued on April 16, 2002 to David J. Guercio et al.
`
`8. UK Patent Application No. GB 2323245 (“Haestrup ’245”), filed on March 14,
`1997 by Jan Haestrup et al., and published on September 16, 1998.
`
`9. CN Patent No. 1190303A (“Huang ’303”), filed on December 19, 1997 by Bazhong
`Huang, and published on August 12, 1998.
`
`87
`
`

`

`Case 5:19-cv-00036-RWS Document 348-6 Filed 06/18/20 Page 5 of 7 PageID #: 12320
`
`
`10. U.S. Patent No. 5,646,979 (“Knuth ’979”), filed on December 20, 1995, and issued
`on July 8, 1997 to Stephen B. Knuth.
`
`11. U.S. Patent No. 5,526,406 (“Luneau ’406”), filed on September 9, 1994, and issued
`on June 11, 1996 to David J. Luneau.
`
`12. U.S. Patent No. 3,686,635 (“Millington ’635”), filed on June 9, 1971, and issued
`on August 22, 1972 to Raymond J. Millington et al.
`
`13. U.S. Patent No. 6,763,105 (“Miura ’105”), filed on November 13, 1998, and issued
`on July 13, 2004 to Nazomi Miura et al.
`
`14. Motorola Telecommunications Device Data by Motorola Inc. (“MC3417/18
`Datasheet”). Based on information available to Apple, Apple believes that this
`reference was published in the U.S. by Motorola Inc. in 1984.
`
`15. U.S. Patent No. 6,328,570 (“Ng ’570”), filed on June 10, 1998, and issued on
`December 11, 2001 to Kai Kong Ng.
`
`16. European Patent Application Publication No. EP 0848533 (“Peters ’533”), filed on
`December 2, 1997 by Daniel V. Peters, and published on June 17, 1998.
`
`17. U.S. Patent No. 4,924,499 (“Serby ’499”), filed on February 25, 1988, and issued
`on May 8, 1990 to Victor M. Serby.
`
`18. International Patent Publication No. WO 1996/002999 (“Sremac ’999”), filed on
`July 19, 1995 by Steve Sremac, and published on February 1, 1996.
`
`Apple’s investigation into prior art patent and publication references remains ongoing and
`
`Apple reserves the right to identify and rely on additional patent or publication references that
`
`describe or are otherwise related to the prior art systems identified below based on information
`
`obtained through discovery.
`
`2.
`
`Prior Art Systems
`
`The following systems are anticipatory prior art for the Asserted Claims of the ’306 patent
`
`under at least 35 U.S.C. §§ 102(a), (b) and/or (g):
`
`1. Products, components, systems, and methods invented, designed, developed,
`reduced to practice, and/or in public use or on sale related to CIDney Voice
`Announce Systems (“CIDney Voice Announce Systems”), as exemplified in claim
`charts in Exhibit F5. As part of these Invalidity Contentions, Apple has produced
`documents relating to CIDney Voice Announce Systems. Based on information
`available to Apple, Apple believes that this system was in public use and/or on sale
`
`88
`
`

`

`Case 5:19-cv-00036-RWS Document 348-6 Filed 06/18/20 Page 6 of 7 PageID #: 12321
`
`
`in the U.S. by 1997.
`
`2. Products, components, systems, and methods invented, designed, developed,
`reduced to practice, and/or in public use or on sale related to Nokia Model 8860
`(“Nokia Phone Systems”), as exemplified in claim charts in Exhibit F6. As part of
`these Invalidity Contentions, Apple has produced documents relating to Nokia
`Phone Systems. Based on information available to Apple, Apple believes that this
`system was in public use and/or on sale in the U.S. by May 1999.
`
`3. Products, components, systems, and methods invented, designed, developed,
`reduced to practice, and/or in public use or on sale related to Nokia Model 3210
`(“Nokia 3210”), as exemplified in claim charts in Exhibit F6. As part of these
`Invalidity Contentions, Apple has produced documents relating to Nokia 3210.
`Based on information available to Apple, Apple believes that this system was in
`public use and/or on sale in the U.S. by March 1999.
`
`4. Products, components, systems, and methods invented, designed, developed,
`reduced to practice, and/or in public use or on sale related to Talking Caller ID by
`Stealth Software (“Talking Caller ID Systems”), as exemplified in claim charts in
`Exhibit F5. As part of these Invalidity Contentions, Apple has produced documents
`relating to Talking Caller ID Systems. Based on information available to Apple,
`Apple believes that this system was in public use and/or on sale in the U.S. by 1998.
`
`Apple’s investigation into prior art systems remains ongoing and Apple reserves the right
`
`to identify and rely on systems that represent different versions or are otherwise related variations
`
`of the systems identified above. Apple further reserves the right to revise, amend, update, and/or
`
`supplement the information provided in these Invalidity Contention (including the attached claim
`
`charts) based on additional information and evidence obtained through discovery. Apple also
`
`reserves the right to rely on any system, product, or public knowledge or use that embodies or
`
`otherwise incorporates any of the prior art patents and publications listed above. In addition to the
`
`prior art products, components, systems, and methods described above, Apple also reserves the
`
`right to rely on documents and publications relating to the prior art listed above as prior art
`
`publications.
`
`B.
`
`Anticipation
`
`Apple contends that each prior art reference anticipates one or more claims of the ’306
`
`89
`
`

`

`Case 5:19-cv-00036-RWS Document 348-6 Filed 06/18/20 Page 7 of 7 PageID #: 12322
`
`
`patent under at least 35 U.S.C. §§ 102(a), (b), (e), and/or (g), either expressly or inherently as
`
`understood by a PHOSITA:
`
`1. Borland ’347. See Ex. F1.
`
`2. Lee ’017. See Ex. F2.
`
`3. Masaki ’780. See Ex. F3.
`
`4. Van der Salm ’974. See Ex. F4.
`
`5. CIDney Voice Announce Systems. See Ex. F5.
`
`6. Nokia Phone Systems. See Ex. F6.
`
`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 ’306 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 ’306 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.
`
`90
`
`