Case 5:19-cv-00036-RWS Document 379 Filed 07/02/20 Page 1 of 20 PageID #: 17823
`
`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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`
`
`
`
`
`
`vs.
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`APPLE INC.,
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`
`
`
`
`Defendant.
`
` Civil Action No. 5:19-cv-00036-RWS
`
`
`
`
`JURY TRIAL DEMANDED
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`
`
`
`
`
`
`
`APPLE INC.’S MOTION FOR PARTIAL SUMMARY JUDGMENT OF SUBJECT
`MATTER INELIGIBILITY UNDER 35 U.S.C. § 101 FOR U.S. PATENT NOS. 6,928,306
`AND 6,329,794
`
`

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`Case 5:19-cv-00036-RWS Document 379 Filed 07/02/20 Page 2 of 20 PageID #: 17824
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`TABLE OF CONTENTS
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`Page
`STATEMENT OF ISSUES ............................................................................................... 1 
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`STATEMENT OF UNDISPUTED MATERIAL FACTS ................................................ 1 
`
`A.
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`U.S. Patent No. 6,928,306 (“the ’306 Patent”) ...................................................... 1 
`
`1.
`
`2.
`
`3.
`
`Summary Of The ’306 Patent .................................................................... 1 
`
`Prosecution History .................................................................................... 3 
`
`State Of The Known Art ............................................................................ 3 
`
`B.
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`U.S. Patent No. 6,329,794 (“the ’794 Patent”) ...................................................... 4 
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`1.
`
`2.
`
`Summary Of The ’794 Patent .................................................................... 4 
`
`Maxell’s Prior Litigation Against ZTE ...................................................... 5 
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`LEGAL STANDARDS ..................................................................................................... 6 
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`ARGUMENT ..................................................................................................................... 6 
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`A.
`
`The ’306 Patent Is Invalid For Claiming Ineligible Subject Matter ...................... 6 
`
`1.
`
`2.
`
`Step One: The ’306 Asserted Claims Are Directed To An Abstract
`Idea ............................................................................................................. 6 
`
`Step Two: The ’306 Patent Asserted Claims Do Not Disclose An
`Inventive Concept .................................................................................... 10 
`
`B.
`
`The ’794 Patent Is Invalid For Claiming Ineligible Subject Matter .................... 11 
`
`1.
`
`2.
`
`Step One: The ’794 Asserted Claims Are Directed To An Abstract
`Idea ........................................................................................................... 11 
`
`Step Two: The ’794 Patent Asserted Claims Do Not Disclose An
`Inventive Concept .................................................................................... 14 
`
`CONCLUSION ................................................................................................................ 15 
`
`I.
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`II.
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`III.
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`IV.
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`V.
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`
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`i
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`

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`Case 5:19-cv-00036-RWS Document 379 Filed 07/02/20 Page 3 of 20 PageID #: 17825
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`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases 
`
`Alice Corp. v. CLS Bank Int’l,
`134 S. Ct. at 2347 (2014) ...................................................................................................... 6, 15
`
`Credit Acceptance Corp. v. Westlake Servs.,
`859 F.3d 1044 (Fed. Cir. 2017) .................................................................................................. 8
`
`Cyberfone Sys. LLC v. CNN Interactive Grp.,
`558 Fed.Appx. 988 (Fed. Cir. 2014) ......................................................................................... 14
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014) .................................................................................................. 8
`
`Digitech Image Tech’s v. Electronics for Imaging,
`758 F.3d 1344 (Fed. Cir. 2014) .................................................................................................. 8
`
`Enfish LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016) .................................................................................................. 9
`
`FairWarning IP, LLC v. Iatric Sys., Inc.,
`839 F.3d 1089 (Fed. Cir. 2016) .............................................................................................. 7, 8
`
`In re TLI Commc'ns LLC Patent Litig.,
`607 (Fed. Cir. 2016) .................................................................................................................. 14
`
`Internet Patents Corp. v. Active Network, Inc.,
`790 F.3d 1343 (Fed. Cir. 2015) .................................................................................................. 7
`
`Maxell, Ltd. v. ZTE Corp., et al.,
`No. 5:16-cv-00179-RWS (E.D. Tex.) ......................................................................................... 6
`
`TAGI Ventures, LLC v. Turner Sports Interactive, Inc.,
`No. 1:16-CV-3412-MHC, 2017 WL 3469528 (N.D. Ga. Feb. 17, 2017) ................................ 14
`
`Thales Visionix Inc. v. United States,
`850 F.3d 1343 (Fed. Cir. 2017) ............................................................................................ 9, 13
`
`Statutes 
`
`35 U.S.C. § 101 ........................................................................................................................... 1, 6
`
`Rules 
`
`Fed. R. Civ. P. 56(a) ....................................................................................................................... 6
`
`
`
`
`ii
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`

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`Case 5:19-cv-00036-RWS Document 379 Filed 07/02/20 Page 4 of 20 PageID #: 17826
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`Defendant Apple Inc. moves for summary judgment that the asserted claims of two asserted
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`patents―U.S. Patent Nos. 6,928,306 (“the ’306 Patent”) and 6,329,794 (“the ’794 Patent”)―are
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`directed to ineligible subject matter under 35 U.S.C. § 101 and Alice.
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`The ’306 Patent is directed to the abstract idea of combining sounds from at least two sound
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`sources to convey a signal. Humans have long combined sounds from two sources—e.g., singing
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`and clapping—to generate a new sound. There is nothing inventive about generating a sound from
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`“at least two” sound sources as opposed to one. What’s more, the ’306 Patent carries out this basic
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`human activity by combining sounds using a generic “sound generator,” “controller,” and “sound
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`sources,” techniques that the patent and Maxell’s expert admit were “already known.”
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`The ’794 Patent is directed to the abstract idea of prioritizing tasks for allocation of
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`resources in a battery-operable device. Prioritizing tasks and allocating time and energy to higher
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`priority tasks is a basic human activity. According to the patent, in “conventional” technologies,
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`a human user had to manually stop using a lower priority function (e.g., video calling) in order to
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`conserve power for higher priority functions (e.g., audio communication). The only purported
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`“improvement” is to use generic components (e.g., “a controller”) to automate what was previously
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`done manually. But simply automating human activities is not eligible subject matter, particularly
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`where, as here, the claims lack any implementation details and the patent claims no improvements
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`to any of the recited components. Accordingly, the ’306 and ’794 Patents are invalid under § 101.
`
`I.
`
`STATEMENT OF ISSUES
`
`Whether Claims 12 and 15 of the ’306 Patent and Claims 1 and 14 of the ’794 Patent are
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`directed to patent-ineligible subject matter under 35 U.S.C. § 101.
`
`II.
`
`STATEMENT OF UNDISPUTED MATERIAL FACTS
`A.
`
`U.S. Patent No. 6,928,306 (“the ’306 Patent”)
`1.
`
`Summary Of The ’306 Patent
`
`1
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`

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`1.
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`2.
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`The ’306 Patent claims priority to January 7, 2000. ’306 Patent (Ex. A) at Cover.
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`The alleged invention is “[a] portable mobile unit for alerting on incoming of a
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`signal by a ringing sound.” Id. at Abstract, 1:5-10, 1:62-2:56. The specification admits that
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`“generat[ing] the ringing sound for alerting of incoming phone calls” was already known in
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`“conventional cellular telephones.” Id. at 1:10-23. The alleged deficiency was simply that a user
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`could “confus[e] … the incoming call” with that of other cellular phones, such that there was a
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`need for “discriminating or differentiating the ringing sound of each [of] the cellular phone[s] from
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`others.” Id.; see Ex. E at ¶ 43. Yet, the patent admits that technologies for discriminating ringing
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`sounds in cellular phones already existed. For example, the patent admits that a “melody generator
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`… capable of producing different melodies” was “popular,” “widely prevailed,” and could
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`“discriminate” ringing sounds. ’306 Patent at 1:22-29. The patent also admits that using a “FM
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`[Frequency Modulation] sound source” or a “PCM [Pulse Code Modulation] sound source” to
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`synthesize alerting sounds was “already known.” Id. at 1:42-53.
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`3.
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`The patent’s purported solution is not an improved portable device with improved
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`performance or processing capacity. Nor is it an improved controller, sound source, or sound
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`generation protocol. Instead, the purported “invention” is merely to create sounds by combining
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`sounds from at least two sound sources. Id. at Abstract, 1:5-2:56. These “sound sources” include
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`a “FM sound source,” “PCM sound source,” and “sound data … of the MIDI method” or “MP3
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`method,” which the patent admits were “already known.” Id. at 1:42-53, 4:34-65, 5:6-7.
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`4.
`
`Asserted Claim 12 recites:
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`A portable mobile unit capable of alerting on incoming of a signal by a ringing sound,
`comprising:
`
`
`a ringing sound generator for generating the ringing sound in accordance with a
`plurality of patterns made of combination of at least two sound sources; and
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`
`2
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`

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`Case 5:19-cv-00036-RWS Document 379 Filed 07/02/20 Page 6 of 20 PageID #: 17828
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`a controller for controlling operations of said portable mobile unit, wherein said
`controller controls said ringing sound generator, so as to generate the ringing sound
`when the signal comes in, by selecting one pattern from said plurality of patterns.
`
`5.
`
`Asserted Claim 15 recites only minor, non-material variations—e.g., the ringing
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`sound is produced from two or more “sound generation protocols,” and the “controller” generates
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`the ringing sound when the incoming signal comes within a set time period (e.g., daytime hours).
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`2.
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`Prosecution History
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`6.
`
`During prosecution of the ’306 Patent, the Examiner rejected all pending claims as
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`anticipated or obvious over the prior art of record. See Ex. L at -960 to -965. In response, the
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`Applicant amended proposed Claim 8, which would become Claim 12 of the ’306 Patent, to
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`expressly require generating a ringing sound using “at least two sound sources.” Id. at -952; see -
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`956 to -957. The Applicant explained to the Examiner that the prior art of record “does not disclose
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`or suggest a need to generate a ringing sound using a [sic] multiple sound sources.” Id. at -934 to
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`-935. The Examiner then issued a Notice of Allowability. Id. at -899 to -904.
`
`3.
`
`State Of The Known Art
`
`7.
`
`Maxell’s expert Dr. Robert Maher confirmed that Pulse Code Modulation (PCM),
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`Frequency Modulation (FM), Musical Instrument Digital Interface (MIDI), and Moving Picture
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`Experts Group-1 Layer-3 (MP3) were standard methods for synthesizing or modeling sounds that
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`were well-known in the art as of January 2000. Ex. J at 53:9-22, 54:17-20, 55:14-18, 56:8-13; see
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`Ex. F at ¶¶ 114-117. He further testified that sound generation protocols are simply data stored in
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`“a PCM file,” “a MIDI file,” or “an FM […] file,” and such PCM, FM, and MIDI “protocols” were
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`also well-known. Ex. Q at 138:20-21, 140:15-141:1, 142:19-23; 184:13-185:15; 210:22-25.
`
`8.
`
`Dr. Maher also confirmed that the “controller” recited by the claims is not limited
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`to any specialized hardware, and the “ringing sound generator” can be any structural element that
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`makes a sound to alert the user. Ex. J at 57:20-23, 67:3-7.
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`3
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`

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`9.
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`Portable mobile units for alerting a user to an incoming call using different
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`ringtones comprised from at least two sound sources or sound generation protocols were well-
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`known as of January 2000. Id. at 45:5-18, 46:15-25; see Ex. F at ¶ 98-99.
`
`10.
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`U.S. Patent No. 6,122,347 (“Borland”), filed in 1997, discloses a cellular telephone
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`that signals an incoming call by combining a ringing sound, a different tone, and/or a caller’s self-
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`announcement. Ex. C at 15:1-17:27; Ex. F at ¶ 99.
`
`11.
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`International Pub. WO 1996/027974 (“Van der Salm”), published in 1996,
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`discloses a cellular telephone that produces a signal by combining synthesized or recorded
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`voice/music with multiple tones. Ex. D at 9:12-28, 17:1-12, 17:34-18:5, 18:7-31; Ex. F at ¶ 98.
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`12.
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`Borland and Van der Salm were not considered during the prosecution of the ’306
`
`Patent. See Ex. L at -926, -947, -967.
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`B.
`
`13.
`
`14.
`
`U.S. Patent No. 6,329,794 (“the ’794 Patent”)
`1.
`
`Summary Of The ’794 Patent
`
`The ’794 Patent claims priority to May 22, 2000. ’794 Patent (Ex. B) at Cover.
`
`The alleged invention is “an information processing device” that provides “power
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`in a prioritized manner to … function devices with higher usage priorities.” Id. at Abstract, 1:49-
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`52. The “information processing device” is nothing more than a generic “notebook computer[]”
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`(id. at 1:31-15) or telephone (id. at 1:63-65). And the “function devices” are also generic devices
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`comprised of generic elements, such as a “CPU and memory.” Id. at 6:14-19.
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`15.
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`The specification admits that methods for controlling power based on “usage
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`priority” were known and “conventional.” See id. at 2:14-17. One known power control method
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`involved having a human user “explicitly stop using the function device [having lower priority]”
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`to prevent battery capacity being depleted “to the point where the function device [having higher
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`4
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`

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`priority] will be inoperable.” Id. at 1:35-41. But this conventional technology placed the “burden
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`… on the user” to manually stop using the lower priority function device. Id. at 2:10.
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`16.
`
`To address this alleged deficiency, the patent does not claim an improved
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`information processing device or power control method. Rather, it simply proposes using a generic
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`“controller” in the “information processing device” to perform what was previously done manually
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`by a human—i.e., turn off power to lower-priority function devices when the battery level reaches
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`a pre-set reference level. Id. at 2:8-17.
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`17.
`
`The asserted Claims 1 and 14 are directed to an “information processing device”
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`comprised of a “controller” and other generic components that stop power usage of lower priority
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`devices when battery capacity is depleted to a certain level. Claim 1 recites:
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`An information processing device comprising:
`
`
`at least two function devices equipped with independent functions; and
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` a
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` power supply circuit for supplying power to each of said function devices, said
`power supply circuit including a battery, a capacity detector for detecting a
`remaining capacity of said battery, and a controller for controlling operation of said
`function devices based on said remaining capacity;
`
`wherein when said capacity detector detects remaining battery capacities NA and
`NB (where NA>NB), said controller sends a power consumption reduction
`instruction to each function device included in a set GA if NA is detected, each
`function device of the set GA having a lower usage priority, and to each function
`device of a set GB if NB is detected, each function device of set GB is not included
`in said set GA.
`
`Claim 14 recites only minor variations. It recites sending a “first power
`
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`18.
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`consumption reduction instruction” to “lower usage priority devices” when battery capacity
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`reaches a “first reference level,” and a “second power consumption reduction instruction” to
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`“higher usage priority devices” when battery capacity reaches a lower “second reference level.”
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`2.
`
`Maxell’s Prior Litigation Against ZTE
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`5
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`

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`Case 5:19-cv-00036-RWS Document 379 Filed 07/02/20 Page 9 of 20 PageID #: 17831
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`19.
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`In 2016, Maxell sued ZTE (USA) Inc., alleging infringement of the ’794 Patent,
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`among other patents. Maxell, Ltd. v. ZTE Corp., et al., No. 5:16-cv-00179-RWS (E.D. Tex.)
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`(“ZTE Action”). During the ZTE Action, this Court denied ZTE’s motion for summary judgment
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`that the ’794 Patent’s claims are invalid under § 101, finding that there was a fact dispute as to
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`whether the claims covered an inventive concept under Alice step two and that the fact dispute
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`should be addressed by a jury and post-trial proceedings. Ex. M at 9-10.
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`20.
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`The jury later resolved this fact dispute: following a seven-day trial and after
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`hearing all of the parties’ evidence, the jury found that Claim 1 of the ’794 Patent recites claim
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`elements that are “well-understood, routine, and conventional.” Ex. N at 8.
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`21.
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`ZTE then filed a Motion for Judgment as a Matter of Law requesting that the Court
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`find Claim 1 of the ’794 Patent invalid under § 101. See Ex. O at 57-60. The parties settled before
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`the Court decided the motion. See Ex. P.
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`III. LEGAL STANDARDS
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`Summary judgment should be granted “if the movant shows that there is no genuine dispute
`
`as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
`
`56(a). The Supreme Court has established a two-step framework for determining when a claim is
`
`invalid under § 101. The court must first determine whether a claim is “directed to” a patent-
`
`ineligible abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 208, 217 (2014). If
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`a claim is directed to an abstract idea, the court moves to step two where the court considers the
`
`elements of each claim individually and “as an ordered combination” to determine whether the
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`additional elements “transform the nature of the claim” into a patent-eligible application. Id.
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`IV. ARGUMENT
`A.
`
`The ’306 Patent Is Invalid For Claiming Ineligible Subject Matter
`1.
`
`Step One: The ’306 Asserted Claims Are Directed To An Abstract Idea
`
`6
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`

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`Case 5:19-cv-00036-RWS Document 379 Filed 07/02/20 Page 10 of 20 PageID #: 17832
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`(i) The Claims’ Focus Is Abstract. At Alice step one, the claims are considered in their
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`entirety to ascertain whether their “character as a whole” is directed to excluded subject matter.
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`Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Here, the
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`claims’ basic idea is combining sounds from two or more sources to convey a signal. The claims
`
`recite a “portable mobile unit” comprised of “a ringing sound generator for generating the
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`ringing sound”1 from a combination of “at least two sound sources” (Claim 12) or “at least two
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`… sound generation protocols” (Claim 15), and a “controller” for controlling the ringing sound
`
`generator to “generate the ringing sound when the signal comes.” ’306 Patent at Claims 12, 15.
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`The specification confirms the claims’ core idea. It explains that the alleged invention is
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`“[a] portable mobile unit for alerting on incoming of a signal by a ringing sound” comprised of
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`“a ringing sound generator for generating the ringing sound in a plurality of patterns” and “a
`
`controller” to “control the ringing sound generator to generate the ringing sound” upon an
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`“incoming call.” Id. at Abstract, 1:5-10. Further, during the prosecution of the ’306 Patent, the
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`applicant amended Claim 12 of the ’306 Patent to expressly require generating a ringing sound
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`using “at least two sound sources.” Ex. L at -952; see -956 to -957.
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`(ii) Similar Patents Have Been Found To Be Abstract. The Federal Circuit has found
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`similar claims abstract in numerous other cases. In FairWarning IP, LLC v. Iatric Sys., Inc., the
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`asserted claims were directed to a system for detecting misuse of sensitive data by “compiling and
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`combining” disparate information sources “to generate a full picture of a user’s [computer]
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`activity.” 839 F.3d 1089, 1096-97 (Fed. Cir. 2016). The court found the claims were directed to
`
`an abstract idea, reasoning that the “mere combination of data sources … does not make the claims
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`patent eligible.” Id. The court further explained that “to the extent that [plaintiff] suggests that its
`
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`1 All emphasis added unless otherwise noted.
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`7
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`claimed invention recites a technological advance relating to accessing and combining disparate
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`information sources, its claims do not recite any such improvement” because they “do not . . .
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`overcome a problem ‘specifically arising in the realm of computer [technology].’” Id. (citing DDR
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`Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). FairWarning’s
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`combination of disparate data sources is no different from the ’306 Patent asserted claims’
`
`combination of sounds from disparate sound sources or sound generation protocols to generate a
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`signal. Numerous other decisions have invalidated similar patents directed to combining different
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`sources of data without disclosing a technological improvement, including:
`
` A patent directed to “a system for maintaining a database of information about the items
`in a dealer’s inventory, obtaining financial information about a customer from a
`user, combining these two sources of information to create a financing package for
`each of the inventoried items, and presenting the financing packages to the user” were
`directed to an abstract idea. Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
`1044, 1054 (Fed. Cir. 2017).
`
` A patent directed to “configuring a computer system to combine data from multiple
`electronic data sources ... to synthesize a comprehensive report of structures for a
`dealer and a creditor to co-finance a purchase” was found to be abstract. Credit
`Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055-56 (Fed. Cir. 2017).
`
` A patent directed to a process of “taking two data sets and combining them into a
`single data set” to create a “device profile”—i.e., taking “existing information,” such
`as “measured chromatic stimuli, spatial stimuli, and device response characteristic
`functions” and “organizing this information into a new form”—was found to be
`abstract. Digitech Image Tech’s v. Elecs. for Imaging, 758 F.3d 1344, 1351 (Fed. Cir.
`2014).
`
`(iii) The Claims Embody A Basic Human Activity. Generating new sounds by combining
`
`different sounds is an ancient and basic human activity. For example, humans have long generated
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`sounds by combining sounds from “at least two” sound sources or sound generation protocols—
`
`e.g., stomping and chanting, or singing and clapping. Here, the “ringing sound generator” is one’s
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`feet, hands, and voice, which can each generate sounds “with a plurality of patterns” (e.g.,
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`humming different melodies). The “controller” that “controls said ringing sound generator, so as
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`8
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`to generate the ringing sound when the signal comes in, by selecting one pattern from said plurality
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`of patterns” is satisfied when a human spots an intruder enemy (incoming “signal”) and selects
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`stomping and chanting to “alert” of the intruder, or spots a friend and selects singing and clapping
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`to “alert” of a welcome visitor. The limitation in which the ringing sound is generated only “when
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`the signal comes within a period which is set up in advance” is satisfied when a human, upon
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`spotting a friend, sings and claps to “alert” of the visitor only during daytime hours and not during
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`nighttime hours. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1346-47 (Fed. Cir. 2017).
`
`(iv) The Claims Do Not Recite An Improvement To Computer Capabilities. In Enfish,
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`LLC v. Microsoft Corp., the Federal Circuit held that at Alice step one, courts should assess
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`“whether the focus of the claims is on the specific asserted improvement in computer capabilities
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`… or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked
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`merely as a tool.” 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Applying Enfish, the ’306 Patent
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`does not claim any improved computer technology, but instead invokes generic components to
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`carry out the basic human activity of combining at least two sounds. Although the patent purports
`
`to solve the need for “differentiating the ringing sound[s]” of cellular phones (’306 Patent at 1:10-
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`23), it admits that techniques for doing so already existed, “widely prevailed,” and were “popular,”
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`such as “a melody generator” that could produce different melodies “to discriminate [a user’s]
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`cellular phone from others.” Id. at 1:23-29. The patent also admits that using a FM or PCM sound
`
`source to generate “the ringing sound” was “already known.” Id. at 1:37-53. Further, Maxell’s
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`expert admitted that “sound generation protocols” are simply data stored in “a PCM file,” “a MIDI
`
`file,” or “an FM […] file,” and such PCM, FM, and MIDI “protocols” were also already known.
`
`Ex. Q at 138:20-21, 140:15-141:1, 142:19-23; 184:13-185:15; 210:22-25. Thus, the only
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`purported “improvement” is using “at least two” sound sources or sound generation protocols to
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`9
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`Case 5:19-cv-00036-RWS Document 379 Filed 07/02/20 Page 13 of 20 PageID #: 17835
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`generate a sound, instead of one. This is not an improvement to computer capabilities, but simply
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`performing a basic human activity using a conventional computer environment.
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`The other recited components are also generic and untethered to a specific structure—e.g.,
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`a “portable mobile unit,” “a controller,” and “a ringing sound generator.” Id. at Claims 12, 15.
`
`The patent itself confirms that the “portable mobile unit” is simply a “conventional” cellular phone
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`(id. at 1:11-12, 4:10-13), and the specification does not purport to claim an improved “controller”
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`or “ringing sound generator,” which were construed to have their plain and ordinary meaning. D.I.
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`235 at 28. Further, Maxell’s expert Dr. Maher confirmed that the “controller” is not limited to any
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`specialized hardware, and the “ringing sound generator” can be any structural element that makes
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`an alerting sound. Ex. J at 57:20-23, 67:3-7. Dr. Maher also confirmed that the “sound sources”
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`or “protocols” contemplated by the patent, including FM, PCM, MIDI, and MP3, were already
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`“known.” Id. at 53:9-22, 54:17-20, 55:14-18; Ex. Q at 184:13-185:15; see Ex. F at ¶¶ 114-117.
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`2.
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`Step Two: The ’306 Patent Asserted Claims Do Not Disclose An
`Inventive Concept
`
`As discussed in Section IV.A.1.(iv), the recited components of the asserted claims are
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`simply generic, known, and functional elements (e.g., a portable mobile unit, a ringing sound
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`generator, a controller, sound sources). Figures 1 and 15 and related text in 4:13-65 confirm that
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`these components are merely made up of generic elements (“antenna,” “coding/decoding
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`processing unit,” “microphone,” “receiver,” “memory,” and “display”) connected to each other in
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`a conventional way (e.g., the “sound sources” are connected to a “mixer” that mixes the sounds,
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`and the “mixer” is connected to a “speaker” that outputs the mixed sound). The patent does not
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`claim that the elements are combined in a novel way to comprise an improved device. Indeed,
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`Maxell’s expert admitted that the patent’s purported invention is not a new application processor,
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`sound source, or sound generation protocol, but simply “taking the known methods for generating
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`10
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`

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`Case 5:19-cv-00036-RWS Document 379 Filed 07/02/20 Page 14 of 20 PageID #: 17836
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`ringing sound and combining them.” Ex. Q at 25:23-26:1, 185:7-14, 186:16-187:14.
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`Nor is there anything inventive about producing sound signals by combining sounds from
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`“at least two” sound sources or sound generation protocols, instead of one. ’306 Patent at Claims
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`12, 15. Indeed, this was well known in the prior art. See Ex. J at 45:5-18, 46:15-25; Ex. F at ¶ 98-
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`99. For example, Borland disclosed a cellular phone that alerted a user of an incoming call by
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`combining a telephone’s regular ringer with a substantially different audible tone and/or a caller’s
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`self-announcement. See Ex. C at 15:1-17:27; Ex. F at ¶ 99. Similarly, Van der Salm disclosed a
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`cellular phone that produced a ringing sound by combining sounds from synthesized voice/music,
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`recorded voice/music, and/or multiple tones to signal an incoming call. See Ex. D at 9:12-28,
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`17:1-12, 17:34-18:5, 18:7-31, Claim 13, 23-24; Ex. F at ¶ 98. Thus, there is nothing inventive
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`about generating sound signals by combining at least two sound sources.
`
`B.
`
`The ’794 Patent Is Invalid For Claiming Ineligible Subject Matter
`1.
`
`Step One: The ’794 Asserted Claims Are Directed To An Abstract Idea
`
`(i) The Claims’ Focus Is Abstract. Here, the claims demonstrate that their basic idea is
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`prioritizing tasks for allocation of resources in a battery-operable device.
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`The body of each claim recites “lower” and “higher” “priority” devices and generic devices
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`for reducing power supply to lower priority devices when battery levels are low. Claim 1 recites
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`“[a]n information processing device” comprising “function devices,” “a power supply circuit for
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`supplying power,” “a battery,” “a capacity detector for detecting remaining [battery]
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`capacity,” and “a controller” that “sends a power consumption reduction instruction to each
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`function device” having “lower usage priority” when battery capacity reaches a certain level.
`
`Claim 14 similarly recites a controller that sends “a first power consumption reduction
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`instruction” to “component devices having a lower usage priority” when battery capacity drops
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`to a “first reference level,” and “a second power consumption reduction instruction” to
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`11
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`Case 5:19-cv-00036-RWS Document 379 Filed 07/02/20 Page 15 of 20 PageID #: 17837
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`“component devices having a higher usage priority” when battery capacity further drops to a
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`“second reference level.”
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`The specification confirms the claims’ core idea. It explains that the alleged invention is
`
`directed to the concept that “power consumption reduction operations … such as stopping
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`function devices with low priorities first based on the remaining capacity in the battery”
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`would allow “power to be maintained for function devices with high priorities.” ’794 Patent
`
`at Abstract, 1:62-65. Further, Maxell’s expert admitted that the patent is directed to solving the
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`problem that “information processing devices were not configured to prioritize one function …
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`over another.” Ex. G at ¶ 46.
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`(ii) The Claims Do Not Recite An Improvement To Computer Capabilities. Applying
`
`Enfish, the ’794 Patent does not claim any improved computer technology. The ’794 Patent alleges
`
`that prior art devices did not automatically control power supply to devices and instead relied on
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`a human user, who had to “explicitly stop” using the lower priority devices. ’794 Patent at 1:39-
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`41. The patent’s purported improvement is simply to automate what was previously performed by
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`a human—“stopping function devices with low priorities first based on the remaining capacity in
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`the battery.” Id. at 1:59-63. But the patent provides no implementation details to explain how this
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`is achieved. Instead, the claims recite an “information processing device” with generic
`
`components described with purely functional language—e.g. “a battery [for] supplying power,”
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`“a capacity detector for detecting remaining [battery] capacity,” and “a controller” for
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`“controlling operation” of function devices and sending “power consumption reduction
`
`instruction[s].” Id. at Claims 1, 14.
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`The functional components are all admittedly generic, conventional, and lacking in any
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`defined structure. For example, the specification confirms that the “common function device[s]”
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`12
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`Case 5:19-cv-00036-RWS Document 379 Filed 07/02/20 Page 16 of 20 PageID #: 17838
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`(id. at Claim 14) are comprised of generic elements, such as a “CPU and memory.” Id. at 6:14-
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`19. Maxell’s expert Dr. Brogioli admitted that the “capacity detecto