Case 5:19-cv-00036-RWS Document 350 Filed 06/23/20 Page 1 of 9 PageID #: 12795
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`Plaintiff,
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`Defendant.
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`MAXELL, LTD.’S REPLY IN SUPPORT OF ITS MOTION TO STRIKE
`PORTIONS OF DEFENDANT APPLE INC.’S OPENING EXPERT REPORTS
`BASED ON UNDISCLOSED OR UNELECTED INVALIDITY THEORIES
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`Case 5:19-cv-00036-RWS Document 350 Filed 06/23/20 Page 2 of 9 PageID #: 12796
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`Maxell is not making up rules that contradict this Court’s precedent. In this case, the
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`parties mutually agreed to the Court’s Focusing Order for the purpose of “streamlin[ing] the
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`issues in this case to promote a ‘just, speedy, and inexpensive determination’ of this action.”
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`Apple’s argument that it “provided adequate notice” for its invalidity theories is contrary to this
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`stated intent and belied by the facts. Apple’s Final Election, in view of its contentions, identified
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`the specific invalidity theories it would rely on for each limitation, intentionally including
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`particular combinations of references for certain limitations and excluding them for others. Now,
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`Apple asks the Court to disregard these theories and the specific notice that was provided and
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`permit Apple to change its invalidity theories and rely on combinations of references that Apple
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`intentionally did not disclose for certain limitations. Apple should not be permitted to engage in
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`such a misleading practice in stark contrast to the intent of the Court’s Focusing Order.1
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`As to the motivations to combine, it is Apple (not Maxell) that cherry-picks examples in
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`an attempt to show the current opinions were rooted in the contentions. But this sleight of hand is
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`insufficient to satisfy P.R. 3-3(b)’s requirement to disclose the motivation to combine each
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`particular combination of prior art. And although Apple states that it is not offering opinions that
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`exceed the scope of its Final Election, its experts rely on charts and other evidence to the
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`contrary. Apple’s improper expert opinions must be stricken, and Maxell should be awarded its
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`attorneys’ fees and costs for the prejudice it has suffered in addressing the untimely theories.
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`I.
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`New Opinions on Lack of Enablement/Written Description
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`The Bims Rpt. Apple argues that “Dr. Bims does not offer an opinion that any claims are
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`invalid due to lack of written description or enablement” because he “merely states that Maxell’s
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`interpretation of the claims in its infringement contentions cannot be correct because it is not
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`1 Tech Pharmacy Services, LLC v. Alixa Rx LLC, 2017 WL 3283325, at *4 (E.D. Tex. Aug. 2, 2017) (adherence to
`the Rules prevents “loopholes through which parties may practice litigation by ambush”).
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`Case 5:19-cv-00036-RWS Document 350 Filed 06/23/20 Page 3 of 9 PageID #: 12797
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`supported by a written description in the specification and it is not enabled.” Opp. at 2. Whether
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`characterized as an invalidity or claim construction argument, the time to make either has passed.
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`Apple admits the opinion is provided in response to Maxell’s infringement contentions, positions
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`known to Apple prior to serving its invalidity contentions and the claim construction process.
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`Yet, Apple did not raise it until expert reports—impermissible per P.R. 3-3(d). See PerdiemCo v.
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`Industrack LLC, Case No. 2:15-cv-00727, D.I. 256 at 5 (E.D. Tex. Oct. 24, 2016) (declining to
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`strike opinions offered by defendant’s rebuttal non-infringement expert because the expert
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`simply adopted the opinions of defendant’s invalidity expert which had been properly disclosed).
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`The Menascé ’438/’586 Rpt. Apple’s assertion that individual claim elements lack
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`written description does not support its new theory regarding the flow (i.e., order) of the claim
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`elements lacking written description. Opp. at 3. The individual steps and the overall flow are
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`separate considerations. Apple did not mention flow in its contentions. In fact, Apple did not
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`even challenge every step within the flow as lacking written description. Ex. 8 at 127-128.
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`Accordingly, Apple’s identification of a select number of claimed conditions as lacking written
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`description did not provide sufficient notice that it was challenging all claimed conditions
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`(disclosed or not), taken together, as lacking written description.
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`II.
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`New Motivations to Combine
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`Apple’s alleged identification of support for its challenged motivations to combine is
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`misleading. In moving to strike, Maxell compared the motivations provided for certain
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`combinations by the expert to the motivations provided for those same combinations in Apple’s
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`contentions. For example, Maxell identified “Application of TDMA system to CDMA device” as
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`a new motivation to combine Nakayama with Mucke in Dr. Bims’s Rpt. The quote from its
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`contentions that Apple identified in response (“the known work of Nakayama in the field of
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`TDMA transmission power control...” Opp. at 4), however, was a motivation disclosed with
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`Case 5:19-cv-00036-RWS Document 350 Filed 06/23/20 Page 4 of 9 PageID #: 12798
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`respect to the combination of Nakayama with Waldroup, a different prior art reference. Ex. 20
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`at 11. Apple cannot mix and match motivations and combinations. Patent Rule 3-3(b) requires
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`the disclosure for each obviousness combination: “If a combination of items of prior art makes a
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`claim obvious, each such combination, and the motivation to combine such items, must be
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`identified.” Id. (emphasis added). And for many of the motivations, Apple merely points to
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`generic, boilerplate “motivations” that are not specific to any particular obviousness
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`combination. Opp. at 4-6. This does not comply with P.R. 3-3(b) for the same reason.
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`Apple also claims that several of the challenged motivations are “merely expanding”
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`upon motivations previously identified. But this is not true; Apple is adding entirely new
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`motivations. See Mot. at 5-6. And it is these new motivations that Maxell seeks to strike. Thus,
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`contrary to Apple’s assertion, Maxell seeks only to enforce P.R. 3-3(b).2
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`III. New Invalidity Theories
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`Menascé re ’438 Patent. By adding “i.e., an attachment” in brackets, Apple attempts to
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`retroactively add support for its new “attachment” theory where no support existed in its original
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`contentions. Opp. at 8. Apple did not characterize Yamazaki’s “second screen” as “an
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`attachment,” and the original citations pointed to a different embodiment. Further, Apple’s
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`supposed support for its “‘dialog’ format” argument supports instead a competitive game theory
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`Maxell is not seeking to strike. Id. at 9; Mot. at 7.
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`Bederson re ’306 Patent. A boilerplate statement in Apple’s contentions that “each prior
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`art reference disclosed…may be combined with (1) information known to” a POSITA is not
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`sufficient to support Apple’s current assertion that claim 15 is invalid as obvious over Borland in
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`combination with the knowledge of a POSITA. Ex. 8 at 89. As explained by Maxell, the
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`2 Apple further asserts that “Maxell…never identified any deficiencies in Apple’s invalidity contentions.” Opp. at 8.
`It is unclear how Apple believes Maxell should have identified missing motivations to combine in Apple’s invalidity
`contentions. Maxell had no notice that Apple would rely on such motivations until it received the expert reports.
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`Case 5:19-cv-00036-RWS Document 350 Filed 06/23/20 Page 5 of 9 PageID #: 12799
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`supporting chart only set forth obviousness theories based on Borland in view of other prior art,
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`not on Borland in combination with the knowledge of a POSITA. Mot. at 8.
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`Menascé (Schiffer + Kirkup), Bederson (Asmussen + Allen), Menascé (Flynn +
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`Nonogaki), Bims (Mucke + Nakayama / Waldroup + Mucke), Paradiso (Cyberguide +
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`Hayashida). Apple provided claim charts for obviousness combinations. In these charts, Apple
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`specifically identified the prior art/combinations that it was relying upon for each claim
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`limitation (e.g., in its chart combining Schiffer with Kirkup for the ’586 Patent (Ex. 11), for
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`claim 1(c), Apple identified Schiffer in view of de la Huerga, and Kirkup, but for claim 1(d),
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`Apple identified Schiffer only). Further, Apple bargained for Maxell cutting down its claims to
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`20 in exchange for specifically identifying the combinations it would rely on at trial. Now, Apple
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`asserts that it can rely on combinations that were not specifically disclosed (e.g., Schiffer in view
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`of Kirkup for claim 1(d)) so long as the art was generally charted. Apple should not be permitted
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`to engage in such a misleading practice. Where it identified in its contentions, on a limitation-by-
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`limitation basis, the combinations it intended to rely upon, it should not now be permitted to rely
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`on combinations it previously chose not to disclose. Apple explicitly took positions, put Maxell
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`on notice of these specific combinations, and Maxell reasonably relied on them. After leading
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`Maxell away from particular theories, Apple cannot now inject them back into the case. Apple
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`should not be permitted to rely on obviousness combinations for any claim limitations not
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`disclosed in its invalidity contentions.3 This would be like permitting Maxell to change its
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`election of claims such that Maxell can now elect an independent claim where it had previously
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`elected only a dependent claim because the elected claim is a combination of the two claims.
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`3 See Freeny v. Fossil Grp., Inc., No. 2:18-cv-00049, 2019 WL 8688586, at *2 (E.D. Tex. July 25, 2019) (striking
`expert’s reliance when a claim chart was provided but Kurple was not listed as an obviousness combination); Cywee
`Grp. Ltd. v. Samsung Elecs. Co., No. 2:17-CV-140-WCB, 2018 WL 4100760, at *2 (E.D. Tex., July 2, 2018)
`(“Local Patent Rule 3-3(b)…calls for disclosure of combinations, not just references, and thus does not expect the
`patentee to consider every possible combination of the references disclosed.”).
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`Case 5:19-cv-00036-RWS Document 350 Filed 06/23/20 Page 6 of 9 PageID #: 12800
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`Bovik re ’493 Patent. Apple points to one sentence in its invalidity contentions, void of
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`any analysis, in an attempt to show that it properly disclosed the obviousness combinations of the
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`Sony MVC-FD83/FD88 cameras alone or with Misawa for claim 6. Opp. at 9-10. But, that
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`sentence cites back to the analysis for claim 4 (“See supra, Claim 4(a)”), which relies on
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`MVCFD83 in combination with one of Sato, Horii, or Juen and Misawa. Mot. at 11. This one
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`sentence without any analysis is insufficient to properly disclose the obviousness combinations
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`of the Sony MVC-FD83/FD88 cameras alone or with Misawa for claim 6 per P.R. 3-3(c).
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`IV. Opinions In Excess of the Final Election of Prior Art
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`Despite taking 14 days to meet and confer after Maxell identified unsupported
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`anticipation opinions of Dr. Bims (Ex. 2 ¶¶ 133, 258) and Dr. Paradiso (Ex. 5 ¶ 152; Exs. C1,
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`C2, D1, D2, and E2), Apple now alleges that these experts do not offer opinions on anticipation,
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`even though they do. The Court should therefore strike these opinions.
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`Dr. Bovik. Apple argues that Dr. Bovik’s reliance on two Sony cameras is proper
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`because “[t]hese are not two references” as defined by the Focusing Order. Opp. at 14. But
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`nowhere does the Focusing Order claim that two separate products may serve as a single
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`reference; it merely states that related evidence can constitute the same “reference” as the
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`product itself. See D.I. 44 at 1 n.1. Because Apple does not and cannot deny that Dr. Bovik treats
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`the MVC-FD83/FD88 as separate devices, his opinions on these devices should be stricken.
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`Dr. Bims. Apple does not dispute Dr. Bims’s unelected reliance on AAPA as a prior art
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`reference (Mot. at 10-11). Therefore, these opinions should also be stricken.
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`V.
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`CONCLUSION
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`For the foregoing reasons, and for the reasons set forth in its Motion, Maxell respectfully
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`requests that this Court strike Apple’s untimely and/or unelected invalidity grounds and award
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`Maxell its attorneys’ fees and costs incurred due to Apple’s disregard for the Local Patent Rules.
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`Case 5:19-cv-00036-RWS Document 350 Filed 06/23/20 Page 7 of 9 PageID #: 12801
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`Dated: June 23, 2020
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`By:
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`/s/ Jamie B. Beaber
`Geoff Culbertson
`Kelly Tidwell
`Patton, Tidwell & Culbertson, LLP
`2800 Texas Boulevard (75503)
`Post Office Box 5398
`Texarkana, TX 75505-5398
`Telephone: (903) 792-7080
`Facsimile: (903) 792-8233
`gpc@texarkanalaw.com
`kbt@texarkanalaw.com
`
`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`William J. Barrow
`Baldine B. Paul
`Tiffany A. Miller
`Michael L. Lindinger
`Saqib J. Siddiqui
`Bryan C. Nese
`Alison T. Gelsleichter
`Clark S. Bakewell
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006
`Telephone: (202) 263-3000
`Facsimile: (202) 263-3300
`jbeaber@mayerbrown.com
`agrimaldi@mayerbrown.com
`klevy@mayerbrown.com
`jfussell@mayerbrown.com
`wbarrow@mayerbrown.com
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`mlindinger@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`agelsleichter@mayerbrown.com
`cbakewell@mayerbrown.com
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`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
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`Case 5:19-cv-00036-RWS Document 350 Filed 06/23/20 Page 8 of 9 PageID #: 12802
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`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 350 Filed 06/23/20 Page 9 of 9 PageID #: 12803
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 23rd day of June, 2020, with a copy of this document via
`electronic mail pursuant to Local Rule CV-5(d).
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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