Case 5:19-cv-00036-RWS Document 379-14 Filed 07/02/20 Page 1 of 17 PageID #: 18019
`Case 5:19-cv-00036—RWS Document 379-14 Filed 07/02/20 Page 1 of 17 PageID #: 18019
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`EXHIBIT M
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`EXHIBIT M
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`Case 5:16-cv-00179-RWS Document 181 Filed 06/08/18 Page 1 of 16 PageID #: 11138Case 5:19-cv-00036-RWS Document 379-14 Filed 07/02/20 Page 2 of 17 PageID #: 18020
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`CIVIL ACTION NO. 5:16-CV-00179-RWS
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`SEALED
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`§§§§§§§§§§
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`MAXELL, LTD.,
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`Plaintiff,
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`v.
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`ZTE CORPORATION, ZTE USA INC.,
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`Defendants.
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`ORDER
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`On May 2, 2018, the Court heard oral argument on a variety of motions. Based on the
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`parties’1 briefing and argument, the Court rules as follows:
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`• ZTE’s Motion to Exclude Portions of Expert Opinion Testimony (Docket No. 154) is
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`DENIED;
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`• ZTE’s Motion for Summary Judgment Regarding Non-Infringement under Doctrine of
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`Equivalents (Docket No. 152) is GRANTED-IN-PART and DENIED-IN-PART;
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`• ZTE’s Motion for Summary Judgment of Invalidity of U.S. Patent No. 5,396,443 (Docket
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`No. 151) is DENIED AS MOOT;
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`• ZTE’s Motion for Summary Judgment of Noninfringement of U.S. Patent Nos. 5,396,443
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`and 6,748,317 (Docket No. 153) is DENIED AS MOOT with respect to the ’443 patent
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`and DENIED with respect to the ’317 patent;
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`1 The parties in this matter are Maxell, Ltd. (“Maxell”) and ZTE USA, Inc. (“ZTE”). The patents discussed in this
`order include: U.S. Patent Nos. 5,396,443 (“the ’443 patent”); 6,748,317 (“the ’317 patent”); 6,329,794 (“the ’794
`patent”); 8,339,493 (“the ’493 patent”); 8,736,729 (“the ’729 patent”); 6,408,193 (“the ’193 patent”); 6,816,491
`(“the ’491 patent”) and 8,098,695 (“the ’695 patent”).
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`• Maxell’s First Daubert Motion to Exclude Mr. Scott Andrews’ Untimely Opinions On
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`Indefiniteness and Unreliable Opinions On Obviousness of U.S. Patent No. 6,748,317
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`(Docket No. 147) is GRANTED-IN-PART and DENIED-IN-PART;
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`• ZTE’s Motion for Summary Judgment of Invalidity of U.S. Patent Nos. 6,748,317 and
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`6,329,794 (Docket No. 143) is DENIED;
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`• Maxell’s Motion for Partial Summary Judgment of No Invalidity under 35 U.S.C. § 103 of
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`Claims 1-3 and 5-14 of U.S. Patent No. 6,329,794 (Docket No. 146) is GRANTED-IN-
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`PART and DENIED-IN-PART;
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`• Maxell’s Motion For Partial Summary Judgment of No Invalidity under 35 U.S.C. § 103
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`of Claims 5-6 of U.S. Patent No. 8,339,493 and Claims 1-2 of U.S. Patent No. 8,736,729
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`(Docket No. 144) is DENIED;
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`• Maxell’s Second Daubert Motion To Exclude Dr. Barmak Mansoorian’s Conclusory
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`Opinions on Obviousness of U.S. Patent Nos. 8,339,493 and 8,736,729 Pursuant to Fed. R.
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`Evid. 702 (Docket No. 148) is DENIED;
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`• Maxell’s Motion For Partial Summary Judgment of No Invalidity under 35 U.S.C. § 103
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`of Claims 1-7 of U.S. Patent No. 6,408,193 (Docket No. 145) is DENIED AS MOOT;
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`• Maxell’s Third Daubert Motion To Exclude Dr. Zhi Ding’s Unreliable Opinions On
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`Obviousness of U.S. Patent No. 6,408,193 (Docket No. 149) is DENIED;
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`• ZTE’s Motion For Summary Judgment of Noninfringement U.S. Patent No. 6,408,193
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`(Docket No. 155) is DENIED;
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`• ZTE’s Motion for Summary Judgment of Noninfringement of U.S. Patent Nos. 6,816,491
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`and 8,098,695 (Docket No. 156) is GRANTED-IN-PART and DENIED-IN-PART; and
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`• Maxell’s Fourth Daubert Motion To Exclude Portions of The Expert Report of Dr. Ketan
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`Mayer-Patel Concerning U.S. Patents Nos. 6,816,491 and 8,098,695 (Docket No. 150) is
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`DENIED.
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`I.
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`ZTE’s Motion to Exclude Portions of Expert Opinion Testimony (Docket No. 154)
`ZTE moves to exclude the opinion testimony of Maxell’s damages expert, Carla Mulhern,
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`based on (1) her reliance on a one percent high-end per-unit royalty rate; (2) apportionment; (3)
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`reliance on consumer surveys; and (4) failure to consider comparable, reliable licenses. Mulhern’s
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`opinion. Docket No. 154. ZTE’s concerns about Mulhern’s opinions relate more to the credibility
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`of the evidence, not its admissibility. Accordingly, ZTE’s motion is DENIED with memorandum
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`opinion to follow.
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`ZTE’s Motion for Summary Judgment Regarding Non-Infringement under Doctrine of
`II.
`Equivalents (Docket No. 152)
`ZTE moves for summary judgment of noninfringement based on the doctrine of
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`equivalents for each patent-in-suit. Docket No. 152. Maxell responds that considering its experts’
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`literal infringement opinions in conjunction with the doctrine of equivalence opinions provides
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`sufficient basis to withstand summary judgment. Docket No. 60.
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`“[A] patentee must ... provide particularized testimony and linking argument as to the
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`‘insubstantiality of the differences’ between the claimed invention and the accused device or
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`process, or with respect to the function, way, result test when such evidence is presented to support
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`a finding of infringement under the doctrine of equivalents. Such evidence must be presented on a
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`limitation-by-limitation basis.” Texas Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d
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`1558, 1567 (Fed.Cir.1996). This rule applies in the summary judgment context. AquaTex Indus.,
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`Inc. v. Techniche Sols., 479 F.3d 1320, 1328 (Fed. Cir. 2007).
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`Having reviewed the expert reports, the Court finds that Maxell’s experts have not provided
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`sufficient linking testimony regarding the ’491 and ’695 patents. See Cambrian Sci. Corp. v. Cox
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`Commc’ns, Inc., 617 F. App’x 989, 994 (Fed. Cir. 2015). For the ’491 patent, Plaintiff’s expert,
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`Dr. Robert Maher, only states his ultimate conclusion:
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`[T]o the extent that ZTE argues that the demultiplexer from element
`[1.b] extracts the method of compression and encoding which is
`applied for compressing the audio data sequence from anything
`other than header information, it is my opinion that that the extracts
`the method of compression and encoding in a manner that is
`substantively equivalent to the use of header information.
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`Docket No. 60-7 at 44. Dr. Maher does not support this statement, however, with references to
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`any specific facts. Likewise, for the ’695 patent, Dr. Maher makes the same statement. Id. at 45.
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`Because Dr. Maher’s opinion on equivalence is insufficient, ZTE’s motion for summary judgment
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`is GRANTED with respect to the ’491 and ’695 patents. In light of the parties’ stipulation (Docket
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`No. 115) and representations at the hearing, the motion is DENIED as moot with respect to the
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`’443 and ’193 patents. The motion is DENIED in all other respects with memorandum opinion to
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`follow.
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`ZTE’s Motion for Summary Judgment of Invalidity of U.S. Patent No. 5,396,443 (Docket
`III.
`No. 151)
`In light of the parties’ stipulation that Maxell’s claim of infringement and ZTE’s
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`counterclaim for noninfringement and invalidity are dismissed (Docket No. 115), this motion is
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`DENIED AS MOOT.
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`ZTE’s Motion for Summary Judgment of Noninfringement of U.S. Patent Nos.
`IV.
`5,396,443 and 6,748,317 (Docket No. 153)
`ZTE moves for summary judgment of noninfringement as to the ’443 and ’317 patents. In
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`light of the parties’ stipulation, the motion is DENIED AS MOOT with respect to the ’443 patent.
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`With respect to the ’317 patent, ZTE maintains the following arguments: (1) that Plaintiff
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`failed to provide evidence or opinions based on the version of AT&T navigator distributed with
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`the accused products; (2) that the pre-installed version of AT&T navigator is capable of providing
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`any orientation information at all; and (3) that the accused products do provide orientation as
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`required by the claims. Docket No. 153 at 8–13.
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`Maxell has provided sufficient evidence to withstand summary judgment on ZTE’s
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`arguments. Maxell’s expert, Dr. Michael Caloyannides, has testified that his opinions would not
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`change regardless of the version of AT&T navigator used. Docket No. 63-6 at 355:23–356:16.
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`With respect to orientation information, there is a factual dispute as to what results a user could
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`obtain from AT&T Navigator and whether the “blue dot with an arrow” interface shows
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`orientation. Id. at 321:16–324:4; see also id. at 272:13–19 (“Q. Okay. And as we’ve discussed,
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`there’s a dispute as to whether or not you could get the same data with an earlier version of AT&T
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`Navigator that Mr. Andrews says is the version that’s on the phone as shipped; right? A. That’s
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`what he claims, yes.); 293:13–297:25. Accordingly, ZTE’s motion for summary judgment on this
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`basis is DENIED with memorandum opinion to follow.
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`Maxell’s First Daubert Motion to Exclude Mr. Scott Andrews’ Untimely Opinions On
`V.
`Indefiniteness and Unreliable Opinions On Obviousness of U.S. Patent No. 6,748,317 (Docket
`No. 147)
`Maxell moves to exclude the invalidity opinions of ZTE’s expert, Scott Andrews, because
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`(1) he presents indefiniteness arguments that the Docket Control Order (“DCO”) requires to have
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`been raised at the Markman stage and (2) because his obviousness opinions are conclusory. Docket
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`No. 147.
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`First, Maxell seeks to exclude indefiniteness opinions relating to the following terms in the
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`’317 patent: “said destination,” “a device for retrieving a route from said present place to said
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`destination,” “said grid information of said route,” and “a portable terminal with walking
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`navigation.”
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`In its preliminary claim constructions, ZTE identified “said destination” (as part of the term
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`“a relation of said direction and a direction from said present place to said destination) and “a
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`device for retrieving a route from said present place to said destination” as indefinite. Docket No.
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`147-4. In the parties’ joint claim-construction submission, ZTE changed course, agreeing that “a
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`device for retrieving a route from said present place to said destination” was not indefinite and
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`should receive a “plain and ordinary meaning” construction. See Docket No. 108-2 in Case No.
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`5:16-cv-178. In its claim construction brief, ZTE stated that the disputed term containing “said
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`destination” should receive “its ordinary and customary meaning as proposed by Maxell.” See
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`Docket No. 100 at 35 in Case No. 5:16-cv-178. Having agreed to Maxell’s construction and
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`withdrawn its indefiniteness challenge to these two terms, ZTE cannot now argue these positions
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`at trial. Accordingly, Maxell’s motion to exclude is GRANTED on this basis.
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`For the other two terms—“said grid information of said route” and “a portable terminal
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`with walking navigation”—there is no underlying party agreement or reliance. The Court’s DCO
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`order states that, “[i]n lieu of early motions for summary judgment, the parties are directed to
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`include any arguments related to the issue of indefiniteness in their Markman briefing, subject to
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`the local rules’ normal page limits.” Docket No. 70 in Case No. 5:16-cv-178.
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`The Court does not require, however, that parties move for summary judgment on
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`indefiniteness to preserve the argument for trial. Indeed, some indefiniteness questions may not
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`be resolvable at Markman and may be submitted to the jury when there are underlying factual
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`disputes; others may not become apparent until after the Court issues its claim construction.
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`Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co., 240 F. Supp. 3d 605, 625–626 (E.D. Tex.
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`2017); BJ Servs. Co. v. Halliburton Energy Servs., Inc., 338 F.3d 1368, 1372 (Fed. Cir. 2003)
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`(“Like enablement, definiteness, too, is amenable to resolution by the jury where the issues are
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`factual in nature”); WesternGeco L.L.C. v. ION Geophysical Corp., 876 F. Supp. 2d 857, 871–72
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`(S.D. Tex. 2012) (“Although indefiniteness is a question of law, it requires a factual determination
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`as to what one skilled in the art would have understood by looking at the patent”). Accordingly,
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`Maxell’s motion with respect to these remaining two terms is DENIED.
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`Maxell also argues that Mr. Andrews’s obviousness opinions should be excluded because
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`his report does not explain how the references relate to each other for any given limitation and or
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`detail a motivation to combine references for several combinations. For example, Maxell faults
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`Mr. Andrews’s obviousness opinion based on the Norris and Colley references. Docket No. 68 at
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`3–4. But the critiques Maxell raises of the opinions go to their weight, not reliability. Accordingly,
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`the Maxell’s motion on this basis is DENIED.
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`ZTE’s Motion for Summary Judgment of Invalidity of U.S. Patent Nos. 6,748,317 and
`VI.
`6,329,794 (Docket No. 143)
`ZTE moves for summary judgment of invalidity under 35 U.S.C. § 101 the ’317 and ’794
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`patents. For the ’317 patent, ZTE identifies the abstract idea as a “portable terminal provided with
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`the function of walking navigation, which can supply location-related information to the walking
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`user.” Docket No. 143 at 5. According to ZTE, the claims do not present an inventive concept,
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`as the patent does not improve cell phones, PDAs and GPS-location information. Id. at 6. ZTE
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`also claims that the patent claims preempt providing location information and direction-based
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`navigation for a walking user of a portable terminal. Id. at 8.
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`In response, Maxell argues that the patent claims involve specific improvements to the user
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`interface while engaging in walking navigation, for example, the changing of the display based on
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`the orientation of the device. Docket No. 65 at 13–14. Maxell also argues that whether the
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`particular elements in combination are conventional is a fact issue which should be left for the jury
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`to resolve or should be construed in favor of Maxell as the non-movant. Id. at 15.
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`For the ’794 patent, ZTE argues that the claims are directed to the abstract idea of sending
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`power consumption reduction instructions to a portion of said function/component devices.
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`Docket No. 143 at 14. ZTE contends that Maxell has argued that the function devices be construed
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`as hardware, software, or a combination of the two that consumes power and implements one or
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`more functions of the information processing device, which raises a preemption concern. Id. at
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`15.
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`Maxell responds that the ’794 patent is not directed to an abstract idea and is contains an
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`inventive concept. Docket No. 65 at 3–9. In response to ZTE’s preemption argument, Maxell
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`suggests that power consumption instructions, “even in the context of prioritizing power
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`consumption, could be sent in response to a variety of triggers and would not infringe the ’794
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`patent so long as those instructions were not sent to a subset of function devices because the battery
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`levels decreased below a threshold tied to the priority of that subset.” Id. at 10.
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`Patent eligibility under § 101 is an issue of law, but the legal conclusion may contain
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`underlying factual issues. Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d
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`1336, 1340–41 (Fed. Cir. 2013). The Supreme Court has established a two-part test for patent
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`eligibility. Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). In determining
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`whether a claim is patent-ineligible under Alice, the Court must “first determine whether the claims
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`at issue are directed to a patent-ineligible concept.” Id. Claims directed to software inventions do
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`not automatically satisfy this first step of the inquiry. Enfish, LLC v. Microsoft Corp., 822 F.3d
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`1327, 1335 (Fed. Cir. 2016). Rather, “the first step in the Alice inquiry . . . asks whether the focus
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`of the claims is on [a] specific asserted improvement in computer capabilities . . . or, instead, on .
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`. . an ‘abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335–36.
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`If the Court determines that the claims are directed to an abstract idea, it must then
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`determine whether the claims contain an inventive concept sufficient to transform the claimed
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`abstract idea into a patent-eligible application. Alice, 134 S. Ct. at 2357. An inventive concept is
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`“some element or combination of elements sufficient to ensure that the claim in practice amounts
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`to ‘significantly more’ than a patent on an ineligible concept.” DDR Holdings, LLC v. Hotels.com,
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`L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014). The Court “consider[s] the elements of each claim
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`both individually and as an ordered combination to determine whether the additional elements
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`transform the nature of the claim into a patent-eligible application.” Alice, 134 S. Ct. at 2355
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`(internal quotation marks omitted). Even if each claim element, by itself, was known in the art,
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`“an inventive concept can be found in the non-conventional and non-generic arrangement of
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`known, conventional pieces.” Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827
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`F.3d 1341, 1350 (Fed Cir. 2016).
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`“The question of whether a claim element or combination of elements is well-understood,
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`routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer
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`v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). This fact must be proven by clear and convincing
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`evidence. Id. (citing Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91, 95 (2011)). “Whether
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`something is well-understood, routine, and conventional to a skilled artisan at the time of the patent
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`is a factual determination.” Id. at 1369. “Whether a particular technology is well-understood,
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`routine, and conventional goes beyond what was simply known in the prior art.” Id.
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`Even accepting ZTE’s suggestion that the patents are both directed to abstract ideas and
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`accepting ZTE’s formulation of the abstract ideas for either patent as correct, there is a genuine
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`dispute of material fact as to whether either patent contains an inventive concept. With respect to
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`the ’317 patent, Maxell points to the opinion of its expert, Dr. Michael Braasch, in which he opines
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`at length that the specific combination of limitations do not perform only routine or well-
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`understood activities. See Docket No. 65-6 at 62–356.
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`Likewise, Maxell has presented evidence that the components in the claims adapted to
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`perform the invention of the ’794 patent would not be conventional. See Docket No. 65-3 at ¶¶
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`79–90. Specifically, Dr. Joshua Phinney, Maxell’s validity expert, opines that the’794 patent
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`solves a problem that existed in power management for conventional information processing
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`devices. Id. at ¶ 86. According to Dr. Phinney, “conventional information processing devices
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`would attempt to increase power efficiency, for example, by reducing the power required by the
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`device as a whole or by stopping/restricting operations of unused functions in the device—much
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`like the prohibiting of activation of auxiliary camera devices described in the Ogawa reference.”
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`Id. at ¶ 87. Dr. Phinney further suggests that conventional power management did not prioritize
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`one function over another, which the ’794 patent solves by assigning different priorities to the
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`function devices of an information processing device. Id. at ¶ 87–89. Even ZTE’s expert, Dr.
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`Andrew Wolfe, opined that modems in particular are able to be specialized for certain usages that
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`would go beyond the understanding of a person of ordinary skill in the art. Docket No. 65-5 at
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`81:16– 82:9. Given that the parties’ experts’ dispute whether either patent provides an inventive
`
`concept, this motion is DENIED without prejudice to the issue being raised in post-trial briefing.
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`VII. Maxell’s Motion for Partial Summary Judgment of No Invalidity under 35 U.S.C. § 103
`of Claims 1-3 and 5-14 of U.S. Patent No. 6,329,794 (Docket No. 146)
`Maxell moves for summary judgment that claims 1-3 and 5-14 of the ’794 patent are not
`
`rendered obvious by U.S. Patent No. 6,031,999 (“Ogawa”) in view of U.S. Patent No. 5,560,022
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`(“Dunstan”) and U.S. Patent No. 6,345,180 (“Reichelt”). Docket No. 146 at 1. Specifically,
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`Maxell asks the Court to construe the term “remaining capacity of said battery” in claims 1 and 9
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`of the ’794 patent. Id. Maxell argues that further construction is necessary because, although the
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`Court construed this term as having its plain and ordinary meaning at Markman, the parties now
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`disagree about the plain and ordinary meaning of the term. Id. at 4–5. According to Maxell, if the
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`Court adopts its proposed construction for this term, ZTE’s obviousness arguments necessarily
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`fail. Id. at 1.
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`Maxell proposes that “remaining capacity of said battery” be construed to mean “remaining
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`charge stored in the battery.” Id. at 6. In support of its position, Maxell points to the patent
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`specification, where the patent states “[a]s the remaining capacity in the battery is reduced due to
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`the function of the device . . . the power supply section will, as described above, target the function
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`device for power supply cutoff.” Id. at 7 (citing ’794 patent at 2:21–26). Maxell suggests that this
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`disclosure reflects the common feature of batteries: That their remaining charge drops as they are
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`used. Id.
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`ZTE first argues that construction of this term is unnecessary. Docket No. 59 at 2–3. If
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`the Court does choose to construe the term, however, ZTE argues that it should reject Maxell’s
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`proposal as overly narrow. Id. at 4. ZTE suggests that the term “remaining charge” does not
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`appear in the patent and that it is known that battery capacity can change over time with battery
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`use. Id. at 4–5. ZTE points to a message from Apple, Inc. posted to customers relating to reduced
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`battery capacity and the definition of capacity found in “ordinary English dictionaries.” Id. at 5.
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`The parties’ disagreement appears to have arisen after the Court’s Markman Order was
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`issued in the context of expert reports. Given that the parties’ dispute about the plain and ordinary
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`meaning of the term is still unresolved, the Court finds good cause to construe the term “remaining
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`capacity of said battery.” O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
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`1360 (Fed. Cir. 2008) (“When the parties raise an actual dispute regarding the proper scope of
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`these claims, the court, not the jury, must resolve that dispute”).
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`Based on the parties arguments in the briefing, the Court adopts Maxell’s proposed
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`construction and construes “remaining capacity of said battery” to mean “remaining charge stored
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`in the battery.” This construction is supported by the specification, which includes language
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`recognizing that remaining battery “capacity” is a function of device use: “As the remaining
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`battery capacity in the battery is reduced due to the function of the device . . . the power supply
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`section will, as described above, target the function device for power supply cutoff.” ’794 patent
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`at 2:21–26. Conversely, ZTE’s argument relies primarily on extrinsic evidence of the meaning of
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`the term “battery capacity” to laypersons, but “[o]rdinary meaning is not something that is
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`determined in a vacuum . . . [and] a word describing patented technology takes its definition from
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`the context in which it was used by the inventor.” Eon Corp. IP Holdings LLC v. Silver Spring
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`Networks, Inc., 815 F.3d 1314, 1319 (Fed. Cir. 2016); see Phillips v. AWH Corp., 415 F.3d 1303,
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`1317 (Fed. Cir. 2005) (explaining that “extrinsic evidence ‘can shed useful light on the relevant
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`art,’ ” but is “ ‘less significant than the intrinsic record in determining ‘the legally operative
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`meaning of claim language.’ ” ). Accordingly, Maxell’s motion, to the extent it requests this
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`construction, is GRANTED.
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`Adoption of this construction, however, does not require the Court grant summary
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`judgment on ZTE’s obviousness theory. The briefing highlights a series of factual disputes
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`between the parties’ experts. For example, Dr. Phinney opines that the Ogawa patent uses the term
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`capacity differently than how it is used in the ’794 patent, ZTE’s expert. Docket No. 59-7 at ¶
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`247. But Dr. Wolfe, opines that Ogawa discloses monitoring battery levels with a charge
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`monitoring device. Docket No. 59-8 at ¶ 136. At deposition, Dr. Wolfe further opined that Ogawa
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`uses “battery capacity” to refer to “a current level of charge in the battery.” Docket No. 59-9 at
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`50:8–12. Because a genuine issue of material fact exists, Maxell’s motion for summary judgment
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`is DENIED in all other respects.
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`ZTE raises a question of whether it will be permitted to serve invalidity contentions in light
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`of the Court’s adoption of Maxell’s construction. Docket No. 59 at 3. Because ZTE’s expert has
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`provided an opinion consistent with Maxell’s proposed construction, supplementation is
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`unnecessary in this case. See Docket No. 146-3 at ¶¶ 116–19, 246–50, and 313–15.
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`VIII. Maxell’s Motion For Partial Summary Judgment of No Invalidity under 35 U.S.C. § 103
`of Claims 5-6 of U.S. Patent No. 8,339,493 and Claims 1-2 of U.S. Patent No. 8,736,729 (Docket
`No. 144)
`Maxell moves for summary judgment that claims 5-6 of the ’493 patent and claims 1-2 of
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`the ’729 patent are not invalid under 35 U.S.C. § 103. Docket No. 144. Based on the parties’
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`briefing and the oral argument, ZTE has identified sufficient evidence to withstand summary
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`judgment on its invalidity counterclaims. Accordingly, the motion is DENIED with memorandum
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`opinion to follow.
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`IX. Maxell’s Second Daubert Motion To Exclude Dr. Barmak Mansoorian’s Conclusory
`Opinions on Obviousness of U.S. Patent Nos. 8,339,493 and 8,736,729 Pursuant to Fed. R. Evid.
`702 (Docket No. 148)
`Maxell moves to exclude certain opinions of Dr. Barmak Mansoorian, ZTE’s technical
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`expert, regarding the ’493 patent and the ’729 patent. Specifically, Maxell argues that Dr.
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`Mansoorian fails to provide a motivation to combine and copies hundreds of pages of prior art
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`references without demonstrating the relationship of each reference for a given limitation. Docket
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`No. 148 at 1–2. Having reviewed the briefing and argument, the Court finds that Maxell’s
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`concerns are more relevant to the credibility and weight of the evidence. Accordingly, the motion
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`is DENIED with memorandum opinion to follow.
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`Maxell’s Motion For Partial Summary Judgment of No Invalidity under 35 U.S.C. § 103
`X.
`of Claims 1-7 of U.S. Patent No. 6,408,193 (Docket No. 145)
`Based on Maxell’s representation at the hearing, this motion is DENIED AS MOOT. See
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`Sealed H’rg Tr. at 164:11–20.
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`XI. Maxell’s Third Daubert Motion To Exclude Dr. Zhi Ding’s Unreliable Opinions On
`Obviousness of U.S. Patent No. 6,408,193 (Docket No. 149)
`Maxell challenges Dr. Zhi Ding’s opinion as unreasonably vague and for failure to provide
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`a motivation to combine. To the extent this motion is not mooted by the parties’ agreement that
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`ZTE will drop invalidity arguments based on the applicant’s admitted prior-art references (see
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`Docket No 70 at 1 n. 1), the motion is DENIED with memorandum opinion to follow.
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`XII. ZTE’s Motion For Summary Judgment of Noninfringement U.S. Patent No. 6,408,193
`(Docket No. 155)
`ZTE moves for summary judgment of noninfringement of the ’193 patent based on a
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`perceived distinction between the Court’s preliminary constructions and ultimate Markman Order.
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`Specifically, the Court initially construed the term “device that includes a first-stage amplifier, two
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`filters, an up-converter, and a second-stage amplifier” to mean “an amplifier whose output
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`amplitude may be varied to provide a variable gain in response to a control signal.” The Court’s
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`ultimate construction, however, contained a minor modification: “an amplifier whose output
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`amplitude may be varied and that provides a variable gain in response to a control signal”
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`(emphasis added).
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`According to ZTE, “[t]he preliminary construction could allow a control signal to directly
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`control the output of the amplifier, which in turn would control the gain, [but t]he final
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`construction, within the scope of the claim makes it clear that the gain is directly controlled by the
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`control signal.” This is incorrect. The minor re-wording of the Court’s claim construction was an
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`edit for clarity and does not change the construction in the way ZTE contends. Indeed, even ZTE
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`conceded at the hearing that its own expert did not change his opinion based on this difference
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`between the preliminary and final constructions and that this fact was irrelevant only because
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`Maxell did not file a motion for summary judgment on the issue. Sealed H’rg Tr. at 162:16–163:6
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`(“THE COURT: Well, it does raise the question of why wasn’t ZTE’s expert report changed on
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`the basis of this difference, if the difference is so significant, as you suggest? MR. MOORE: Well,
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`first of all, Your Honor, that doesn’t really have a lot to do with the motion that we’re talking about
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`here today, right? THE COURT: Well, it has to do with fairness and reasoning. MR. MOORE:
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`Fairness and reasoning, yes. If they were to bring a motion, a summary judgment motion of no
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`invalidity based on this issue, we would be happy to have that discussion with them. It’s not really
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`today’s issue. The art used -- THE COURT: I know, but what it suggests to me is it's not quite as
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`important as you're telling me it is.”).
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`ZTE’s other concerns regarding Dr. Caloyannides opinions are relevant to the weight of
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`the evidence and are not an appropriate basis on which to grant summary judgment. Accordingly,
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`ZTE’s motion is DENIED with memorandum opinion to follow.
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`XIII. ZTE’s Motion for Summary Judgment of Noninfringement of U.S. Patent Nos.
`6,816,491 and 8,098,695 (Docket No. 156)
`ZTE moves for summary judgment on non-infringement with respect to the ’491 and ’695
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`patents. With respect to the doctrine of equivalence issues raised in the motion, the motion is
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`GRANTED for the reasons identified with respect to ZTE’s Motion for Summary Judgment
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`Regarding Non-Infringement un