`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`
`
`Plaintiff
`
`Civil Action NO. 5:19-cv-00036-RWS
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`DECLARATION OF MARK LIANG IN SUPPORT OF 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
`
`
`
`
`1
`
`
`
`Case 5:19-cv-00036-RWS Document 379-1 Filed 07/02/20 Page 2 of 4 PageID #: 17844
`
`
`I, Mark Liang, declare as follows:
`
`1.
`
`I am an attorney at the law firm of O’Melveny & Myers LLP, counsel for
`
`Defendant Apple Inc. (“Apple”) in this matter instituted by Plaintiff Maxell, Ltd. (“Maxell”). I
`
`am a member in good standing of the State Bar of California and have been admitted to practice
`
`before this Court. The statements below are based on personal knowledge and/or investigation
`
`of the facts stated herein and if called to testify could competently testify to their substance.
`
`2.
`
`Attached as Exhibit A is a true and correct copy of U.S. Patent No. 6,928,306
`
`titled “Portable Mobile Unit,” issued on August 9, 2005.
`
`3.
`
`Attached as Exhibit B is a true and correct copy of U.S. Patent No. 6,329,794
`
`titled “Information Processing Device And Method For Controlling Power Consumption
`
`Thereof,” issued on December 11, 2001.
`
`4.
`
`Attached as Exhibit C is a true and correct copy of U.S. Patent No. 6,122,347
`
`titled “System And Method For Self-Announcing A Caller Of An Incoming Telephone Call,”
`
`issued on September 19, 2000.
`
`5.
`
`Attached as Exhibit D is a true and correct copy of International Publication WO
`
`1996/027974 titled “A Telephone Set Having Calling Party Dependent Ringing,” published on
`
`September 12, 1996.
`
`6.
`
`Attached as Exhibit E is a true and correct copy of excerpts from the Initial
`
`Expert Report Of Robert Maher, Ph.D. Concerning Apple’s Infringement Of U.S. Patent No.
`
`6,928,306, dated May 7, 2020.
`
`7.
`
`Attached as Exhibit F is a true and correct copy of excerpts from the Opening
`
`Expert Report Of Dr. Benjamin B. Bederson Regarding Invalidity Of U.S. Patent Nos. 6,928,306
`
`And 10,084,991, dated May 7, 2020.
`
`8.
`
`Attached as Exhibit G is a true and correct copy of excerpts from the Initial
`
`2
`
`
`
`Case 5:19-cv-00036-RWS Document 379-1 Filed 07/02/20 Page 3 of 4 PageID #: 17845
`
`
`Expert Report Of Michael C. Brogioli, Ph.D. Concerning Apple’s Infringement Of U.S. Patent
`
`No. 6,329,794, dated May 7, 2020.
`
`9.
`
`Attached as Exhibit H is a true and correct copy of excerpts from the Declaration
`
`Of Michael C. Brogioli, Ph.D. In Support Of Maxell’s Proposed Claim Constructions, dated
`
`October 4, 2019.
`
`10.
`
`Attached as Exhibit I is a true and correct copy of excerpts from the transcript
`
`from the deposition of Maxell’s expert Dr. Michael Brogioli, taken on October 24, 2019.
`
`11.
`
`Attached as Exhibit J is a true and correct copy of excerpts from the transcript
`
`from the deposition of Maxell’s expert Dr. Robert Maher, taken on October 25, 2019.
`
`12.
`
`Attached as Exhibit K is a true and correct copy of excerpts from the transcript
`
`from the deposition of U.S. Patent No. 6,928,306’s inventor Shigeto Oeda, taken on February 19,
`
`2020.
`
`13.
`
`Attached as Exhibit L is a true and correct copy of excerpts from the file history
`
`of U.S. Patent No. 6,928,306 produced by Maxell with production numbers
`
`MAXELL_APPLE0000873 to MAXELL_APPLE0001182.
`
`14.
`
`Attached as Exhibit M is a true and correct copy of an Order from Maxell, Ltd. v.
`
`ZTE Corp., et al., No. 5:16-cv-00179-RWS (E.D. Tex.), issued on June 8, 2018.
`
`15.
`
`Attached as Exhibit N is a true and correct copy of the Jury Verdict Form from
`
`Maxell, Ltd. v. ZTE Corp., et al., No. 5:16-cv-00179-RWS (E.D. Tex.), dated June 29, 2018.
`
`16.
`
`Attached as Exhibit O is a true and correct copy of excerpts from Defendant ZTE
`
`(USA), Inc.’s Rule 50 Motion For Judgment As A Matter Of Law And Motion For New Trial
`
`Pursuant To Federal Rule 59 from Maxell, Ltd. v. ZTE Corp., et al., No. 5:16-cv-00179-RWS
`
`(E.D. Tex.), dated August 3, 2018.
`
`17.
`
`Attached as Exhibit P is a true and correct copy of the Joint Motion To Stay All
`
`3
`
`
`
`Case 5:19-cv-00036-RWS Document 379-1 Filed 07/02/20 Page 4 of 4 PageID #: 17846
`
`
`Deadlines And Notice Of Settlement from Maxell, Ltd. v. ZTE Corp., et al., No. 5:16-cv-00179-
`
`RWS (E.D. Tex.), dated February 4, 2019.
`
`18.
`
`Attached as Exhibit Q is a true and correct copy of excerpts from the transcript
`
`from the deposition of Maxell’s expert Dr. Robert Maher, taken on June 23, 2020.
`
` declare under penalty of perjury under the laws of the United States of America that the
`
` I
`
`foregoing is true and correct.
`
`Executed June 30, 2020, in San Francisco, California.
`
`
`
`/s/ Mark Liang
` Mark Liang
`
`
`
`
`
`4
`
`
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