Case 5:19-cv-00036-RWS Document 356 Filed 06/29/20 Page 1 of 8 PageID #: 12835
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`Plaintiff
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`Civil Action No. 5:19-cv-00036-RWS
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`v.
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`APPLE INC.,
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`Defendant.
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`JURY TRIAL DEMANDED
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`APPLE INC.’S SUR-REPLY IN OPPOSITION TO MAXELL’S MOTION TO STRIKE
`PORTIONS OF DEFENDANT APPLE’S INVALIDITY EXPERT REPORTS
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`Case 5:19-cv-00036-RWS Document 356 Filed 06/29/20 Page 2 of 8 PageID #: 12836
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`I.
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`INTRODUCTION
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`Apple’s Opposition demonstrated, in detailed side-by-side comparisons, that each alleged
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`“new” theory identified by Maxell had in fact been disclosed in Apple’s contentions. Chastened
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`by Apple’s clear showing, Maxell resorts to mischaracterizing Apple’s contentions and the
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`patent claims, and feigning an inability to understand Apple’s contentions. But Maxell has not
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`shown any violation of any rules. Simply put, there is nothing to strike.
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`II.
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`ARGUMENT
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`Maxell does not even address, let alone rebut Apple’s response to, more than twenty of
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`the complaints in its original Motion. Compare Motion at 5‒6 with Reply at 2‒3. Apple,
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`therefore, understands that Maxell has withdrawn those complaints, or has no substantive
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`response to Apple’s clear showing. Maxell’s motion should be denied as to all such complaints.
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`The few remaining complaints that Maxell continues to press in its Reply are equally
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`without merit and should also be denied. Apple responds to each of these below.
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`A.
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`Apple’s Reports Do Not Contain New Written Description Theories
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`Dr. Bims’s Report ‒ Contrary to Maxell’s mischaracterization, Dr. Bims did not opine
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`that the claims are invalid for lack of written description; he opined that, for purposes of his
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`§ 103 analysis, he would not adopt Maxell’s new, and impermissible, claim construction. He
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`explained that he disagreed with Maxell’s new claim interpretation because it lacked support in
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`the specification. Ex. 2 at ¶173 (explaining that, “if the receiver is required to output a signal
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`that controls the gain of the variable amplitude amplifier or the bias of the power amplifier,”
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`then the claim would lack written description). Further, as Dr. Bims explicitly states in his
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`report (id. at ¶167), his opinions on this issue were in direct response to new claim construction
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`arguments presented by Maxell for the first time in a Patent Owner Preliminary Response
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`(“POPR”) that Maxell filed in a related IPR in April 2020, four months after the parties filed
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`Case 5:19-cv-00036-RWS Document 356 Filed 06/29/20 Page 3 of 8 PageID #: 12837
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`their claim construction briefs and only four weeks before expert reports were due. Id. (“In
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`[Maxell’s POPR], Maxell appears to argue that the ‘receiver’ must be the component that outputs
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`the signal.”). Tellingly, Maxell asks the Court to strike paragraphs 168‒173 without even
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`mentioning paragraph 167. Motion at 4.
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`PerdiemCo v. Industrack LLC is instructive here. Case No. 2:15-cv-00727-JRG-RSP,
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`Dkt. 256 at 4 (E.D. Tex. Oct. 24, 2016). In PerdiemCo, the defendant’s expert explained that he
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`did not apply the plaintiff’s infringement expert’s claim interpretation in his non-infringement
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`analysis because that interpretation would render the claim invalid. Id. The plaintiff argued that
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`this was a late invalidity opinion because it used the word “invalid.” Id. The court saw through
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`the semantics and held that this was a proper non-infringement opinion regarding why the expert
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`disagreed with the infringement expert’s analysis. Id. Similarly, Dr. Bims’s explanation for
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`rejecting Maxell’s claim interpretation for his § 103 analysis is proper and should not be struck.
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`Dr. Menascé Report ‒ Maxell’s entire argument is premised on the notion that “[t]he
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`individual steps and the overall flow are separate considerations.” Reply at 2. This is incorrect.
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`As explained in Apple’s opposition, the “flow” of these claims is recited as an integral part of the
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`individual steps, which Maxell does not dispute were addressed in Apple’s contentions. Opp. at
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`(citing Ex. 8 at 127‒128 (addressing the “flow” of claim elements, such as “when conditions are
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`met,” “wherein the conditions ... after the mobile terminal is in the locked state,” and “wherein
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`conditions include ... after the performing, receiving, by the controller”)). Maxell has no
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`response to this disclosure. Reply at 2. Instead, tacitly acknowledging this flaw in its argument,
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`Maxell raises a new argument in Reply that Apple’s contentions did not challenge the sufficiency
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`of the written description for each step within the flow. Id. This new argument is nonsensical.
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`If two of three steps of a flow are not described in the patent, the entire flow was not described.
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`Even if Maxell’s argument made sense logically, it is factually incorrect. Ex. 8 at 127‒128.
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`2
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`Case 5:19-cv-00036-RWS Document 356 Filed 06/29/20 Page 4 of 8 PageID #: 12838
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`B.
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`Apple Disclosed Its Combinations And Motivations to Combine
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`In Reply, Maxell focuses on one motivation to combine. For the rest of its motivation to
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`combine complaints, Maxell ignores the clear disclosures that Apple mapped in its Opposition
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`and makes the bald contention that the motivations are still “new.” Opposition at 4‒6. Maxell’s
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`request to strike these other motivations should be denied as Maxell does not even attempt to
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`support its position, and Apple’s objective evidence has proven Maxell’s complaints wrong.
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`For Dr. Bims’s opinion that a POSITA would be motivated by “[a]pplication of TDMA
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`system to improve CDMA device,” Apple disclosed this motivation in its Nakayama chart and
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`said “The known work of Nakayama in the field of TDMA transmission power control would
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`prompt a variation thereof in the field of CDMA transmission power control.” Ex. 20 at 1, 11.
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`Both Waldroup and Mucke are CDMA art. Ex. 10 at 2 (“The present invention relates … to the
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`field of output power control in code division multiple access (CDMA) wireless telephones”),
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`Ex. 26 at 2 (“radiotelephones that are compatible with a code division, multiple access (CDMA)
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`protocol.”). Further, the sentence that follows in the contentions makes clear that the opinions
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`are not limited to any one CDMA prior art reference, but would apply to any CDMA reference,
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`such as Mucke: “Additionally, such a receiver is a necessary part of any CDMA telephone …”
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`Id. at 11. It is thus irrelevant that the specific sentence Maxell points to uses Waldroup as an
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`example. Apple’s contentions made clear this motivation would equally apply to Mucke.
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`C.
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`Apple Disclosed Its Invalidity Grounds
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`Menascé re ’438 Patent ‒ Maxell does not dispute that Apple disclosed and charted
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`Yamazaki, or that the relevant disclosure of Yamazaki was charted for the limitations in
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`question. Instead, Maxell complains that Dr. Menascé uses different words (“attachment” and
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`“dialog”) to “characterize” elements of Yamazaki, which were indisputably disclosed in the
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`contentions. Reply at 3; Ex. 15 at 33‒34. There is no rule limiting expert reports to the
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`Case 5:19-cv-00036-RWS Document 356 Filed 06/29/20 Page 5 of 8 PageID #: 12839
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`vocabulary that appeared in invalidity contentions. Maxell’s complaint is baseless.
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`Bederson re ’306 Patent ‒ Maxell complains that Apple’s contentions were insufficient
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`because Apple did not chart a POSITA’s knowledge with Borland. Reply at 3. First, there is no
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`requirement to chart a POSITA’s knowledge. Elbit Sys. Land & C41 Ltd. v. Hughes Network
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`Sys., LLC, No. 2:15-cv-00037-RWS-RSP, at *2 (E.D. Tex. July 4, 2017). Second, if there was
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`uncertainty (there wasn’t), Maxell should have sought clarity during discovery rather than
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`waiting to strike Apple’s reports after the fact. See Fenner Invs., Ltd. v. Hewlett–Packard Co.,
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`No. 6:08-cv-273, 2010 WL 786606, at *3 (E. D. Tex. Feb. 26, 2010) (“If Defendants were
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`unclear as to the scope of the contentions, it was their responsibility to work with Plaintiff,
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`informally or through motion practice, to clarify the issue.”).
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`Apple charted combinations ‒ Maxell seeks to rewrite this District’s rules in two ways.
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`First, Maxell counts the same prior art combination as two separate combinations if asserted
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`against two limitations of the same claim of the same patent. Reply at 4. This is simply not the
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`rule, and Maxell cites no support for this incredible, novel theory. Second, Maxell argues that a
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`defendant must identify in invalidity contentions which reference of a disclosed combination
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`supplies each limitation of the asserted claim. Id. This, too, is not the law. Elbit Sys. Land &
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`C4I Ltd. v. Hughes Network Sys., LLC, No. 2:15-CV-37-RWS-RSP, 2016 WL 9307563, at *3
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`(E.D. Tex. Sept. 27, 2016) (invalidity contentions “need not identify which reference supplies
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`which limitation in the combination,” it is sufficient to chart each reference individually).
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`It is undisputed that Apple charted each reference to each limitation as required by P.R.
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`3-3(c), and disclosed the combinations of these references as required by P.R. 3-3(b). The fact
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`that Apple went beyond the requirements of the local rules and provided extra details in some
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`charts for some limitations does not somehow eviscerate this undeniable compliance.
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`Bovik re ’493 Patent ‒ Maxell’s Motion complained that Apple did not disclose “Sony
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`4
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`Case 5:19-cv-00036-RWS Document 356 Filed 06/29/20 Page 6 of 8 PageID #: 12840
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`[MVC-FD83/FD88] cameras alone or in combination with Misawa for claim 6,” even though
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`Apple clearly stated in its chart at claim 6, “MVCFD83 alone or in view of Misawa.” Ex. 14 at
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`155. Maxell now argues in Reply that it was confused because Apple’s chart at claim 6 cited its
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`chart for claim 4, where Apple included disclosures from MVCFD83, Misawa, and other
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`references. Maxell does not contend that Apple’s charting of MVCFD83 or Misawa was
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`deficient, and Maxell has not identified any violation of any rules.
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`D.
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`Apple’s Invalidity Grounds Do Not Exceed Its Final Election
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`Dr. Bims and Dr. Paradiso ‒ In an effort to manufacture a dispute where none exists,
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`Maxell asks the Court to strike opinions that do not exist; neither expert offers an opinion of
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`anticipation. Opposition at 13‒14.
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`Dr. Bovik ‒ Maxell agreed that “the closely related work of a single prior artist” shall
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`count as one reference, and the Court entered that Discovery Order provision. D.I. 44 at 1 n.1.
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`The Sony MVC-FD83 and MVC-FD88 are related models that share the same user and service
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`manual—both of which say “MVC-FD83/FD88” on their cover page. Exs. 33, 34. They are
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`closely related work of a single prior artist, and under the Discovery Order, are one reference.
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`Dr. Bims ‒ First, Apple is not relying on applicant admitted prior art (“AAPA”) as a
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`prior art reference against the ’193 Patent, so there is no invalidity ground to strike. Further, the
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`portions that Maxell seeks to strike are Dr. Bims’s discussions of the asserted ’193 Patent
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`itself—but it would be absurd to prohibit discussion of disclosures of the ’193 Patent in an
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`invalidity report for the ’193 Patent. See, e.g., Ex. 2 at ¶¶ 147, 154 (“The ’193 Patent further
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`admits…”). Second, Dr. Bims’s discussion of AAPA is relevant to provide context for the
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`claims. This District regularly permits this, even if the reference was not charted and not elected.
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`See, e.g., Elbit, No. 2:15-cv-00037-RWS-RSP, at *2 (E.D. Tex. July 4, 2017).
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`Case 5:19-cv-00036-RWS Document 356 Filed 06/29/20 Page 7 of 8 PageID #: 12841
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`June 29, 2020
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`/s/ Luann L. Simmons
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`
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`Luann L. Simmons (Pro Hac Vice)
`lsimmons@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center
`28th Floor
`San Francisco, CA 94111
`Telephone: 415-984-8700
`Facsimile: 415-984-8701
`
`Xin-Yi Zhou (Pro Hac Vice)
`vzhou@omm.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
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`Marc J. Pensabene (Pro Hac Vice)
`mpensabene@omm.com
`Laura Bayne Gore (Pro Hac Vice)
`lbayne@omm.com
`O’MELVENY & MYERS LLP
`Times Square Tower, 7 Times Square
`New York, NY 10036
`Telephone: 212-326-2000
`Facsimile: 212-326-2061
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`Melissa R. Smith (TX #24001351)
`melissa@gilliamsmithlaw.com
`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
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`Attorneys for Defendant Apple Inc.
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`Case 5:19-cv-00036-RWS Document 356 Filed 06/29/20 Page 8 of 8 PageID #: 12842
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
`consented to electronic service are being served with a copy of this document via the Court's
`CM/ECF system per Local Rule CV-5(a)(3) on June 29, 2020.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`7
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