Case 5:19-cv-00036-RWS Document 390 Filed 07/06/20 Page 1 of 24 PageID #: 19247
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`
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`MAXELL, LTD.,
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`v.
`
`APPLE INC.,
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`Plaintiff,
`
`Defendants.
`
`Civil Action No. 5:19-cv-00036
`
`JURY TRIAL DEMANDED
`
`
`
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`
`
`MAXELL, LTD.’S MOTION FOR PARTIAL SUMMARY JUDGMENT OF NO
`INVALIDITY OF U.S. PATENT NOS. 6,748,317, 6,580,999, AND 6,430,498 IN VIEW OF
`THE ABOWD AND CYBERGUIDE ALLEGED PRIOR ART
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`Case 5:19-cv-00036-RWS Document 390 Filed 07/06/20 Page 2 of 24 PageID #: 19248
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................................. 1
`LEGAL STANDARD ........................................................................................................ 2
`STATEMENT OF UNDISPUTED FACTS ...................................................................... 3
`STATEMENT OF THE ISSUES FOR THE COURT TO DECIDE ................................ 4
`ARGUMENT ..................................................................................................................... 4
`A.
`Apple has failed to show that the Abowd Publication is Prior Art ................. 5
`1.
`Abowd was not shown to have been publicly available at the
`University of Pittsburgh Library ................................................................ 7
`Abowd was not shown to have been publicly available at the
`Carnegie Mellon University Library .......................................................... 8
`Mr. Munford or Dr. Paradiso have not made any showing that
`Abowd was publicly accessible to one of skill in the art ......................... 10
`Apple has failed to show that the Cyberguide prototypes are prior art ....... 11
`B.
`CONCLUSION ................................................................................................................ 15
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`2.
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`3.
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`i
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`I.
`II.
`III.
`IV.
`V.
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`VI.
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`Case 5:19-cv-00036-RWS Document 390 Filed 07/06/20 Page 3 of 24 PageID #: 19249
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
`
`Acceleration Bay, LLC v. Activision Blizzard Inc.,
`908 F.3d 765 (Fed. Cir. 2018)............................................................................................5, 6, 8
`
`Am. Seating Co. v. USSC Grp., Inc.,
`514 F.3d 1262 (Fed. Cir. 2008)................................................................................................14
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ...................................................................................................................2
`
`Barry v. Medtronic, Inc.,
`230 F. Supp. 3d 630 (E.D. Tex. 2017) .....................................................................................14
`
`Barry v. Medtronic, Inc.,
`914 F.3d 1310 (Fed. Cir. 2019)................................................................................................14
`
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016)................................................................................................10
`
`Carella v. Starlight Archery,
`804 F.2d 135 (Fed. Cir. 1986)....................................................................................................2
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ...................................................................................................................2
`
`Clock Spring, L.P. v. Wrapmaster, Inc.,
`560 F.3d 1317 (Fed. Cir. 2009)............................................................................................3, 12
`
`Dey, L.P. v. Sunovion Pharm., Inc.,
`715 F.3d 1351 (Fed. Cir. 2013)................................................................................................14
`
`Eason v. Thaler,
`73 F.3d 1322 (5th Cir. 1996) .....................................................................................................2
`
`Finnigan Corp. v. Int’l Trade Commission,
`180 F.3d 1354 (Fed. Cir. 1999)..................................................................................................3
`
`Forsyth v. Barr,
`19 F.3d 1527 (5th Cir. 1994) .....................................................................................................2
`
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986)................................................................................................2, 5
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`ii
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`Case 5:19-cv-00036-RWS Document 390 Filed 07/06/20 Page 4 of 24 PageID #: 19250
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`TABLE OF AUTHORITIES—continued
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`Page(s)
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`Hilgraeve, Inc. v. Symantec Corp.,
`271 F. Supp. 2d 964 (E.D. Mich. 2003) .....................................................................................2
`
`Intellectual Ventures II LLC v. Sprint Spectrum, L.P.,
`No. 2:17-cv-00662-JRG-RSP, 2019 U.S. Dist. LEXIS 76941 (E.D. Tex. Apr.
`18, 2019) ................................................................................................................................5, 8
`
`Invitrogen Corp. v. Biocrest Mfg., L.P.,
`424 F.3d 1374 (Fed. Cir. 2005)................................................................................................14
`
`Jazz Pharms., Inc. v. Amneal Pharms., LLC,
`895 F.3d 1347 (Fed. Cir. 2018)..................................................................................................5
`
`Juicy Whip, Inc. v. Orange Bang, Inc.,
`292 F.3d 728 (Fed. Cir. 2002)..............................................................................................3, 13
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`Kyocera Wireless Corp., 545 F.3d 1340 ........................................................................................10
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`Microsoft Corp. v. i4i Limited Partnership,
`131 S. Ct. 2238, 564 U.S. 91 (2011) ..........................................................................................2
`
`Minnesota Min. & Mfg. Co. v. Chemque, Inc.,
`303 F.3d 1294 (Fed. Cir. 2002)..............................................................................................2, 5
`
`Navico Inc. v. Garmin Int’l, Inc.,
`No. 2:16-CV-00190-JRG-RSP, 2017 U.S. Dist. LEXIS 139806 (E.D. Tex.
`July 28, 2017)...........................................................................................................................12
`
`Ragas v. Tenn. Gas Pipeline Co.,
`136 F.3d 455 (5th Cir. 1998) .....................................................................................................2
`
`Samsung Elecs. Co. v. Infobridge Pte. Ltd.,
`929 F.3d 1363 (Fed. Cir. 2019)..................................................................................................5
`
`Schlumberger Tech. Corp. v. Bico Drilling Tools, Inc.,
`No. H-17-3211, 2019 U.S. Dist. LEXIS 98509 (S.D. Tex. June 12, 2019) .............................14
`
`In re Wyer,
`655 F.2d 221 (CCPA 1981) .......................................................................................................5
`
`Zimmer Tech. Inc. v. Howmedica Osteonics Corp.,
`476 F. Supp. 2d 1024 (N.D. Ind. 2007) .....................................................................................3
`
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`iii
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`Case 5:19-cv-00036-RWS Document 390 Filed 07/06/20 Page 5 of 24 PageID #: 19251
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`TABLE OF AUTHORITIES—continued
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`Page(s)
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`STATUTES
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`35 U.S.C. § 102 ................................................................................................................................4
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`35 U.S.C. § 282 ................................................................................................................................2
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`OTHER AUTHORITIES
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`Fed. R. Civ. P. 56(c) ........................................................................................................................2
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`iv
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`Case 5:19-cv-00036-RWS Document 390 Filed 07/06/20 Page 6 of 24 PageID #: 19252
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`TABLE OF EXHIBITS
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`Exhibit No. Description
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`1
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`2
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`3
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`4
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`Excerpts from the Opening Expert Report of Dr. Joseph A.
`Paradiso Regarding Invalidity of U.S. Patent Nos. 6,748,317,
`6,580,999, and 6,430,498 (May 7, 2020)
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`Expert Report of Robert L. Stoll (June 4, 2020)
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`Expert Report of Jacob Robert Munford Concerning
`Publication and Public Accessibility and exhibits (May 7, 2020)
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`Deposition Transcript of Jacob R. Munford (June 19, 2020)
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`I.
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`INTRODUCTION
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`Clear and convincing is a high burden to meet. It is this burden that Apple must meet to
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`establish that the “Abowd” publication was in fact publicly available almost twenty years ago
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`and the “Cyberguide” prototypes mentioned in the Abowd article were publicly used almost
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`twenty years ago. Instead of meeting this standard, Apple’s experts rely on library records of a
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`book that is available today and includes a “DO NOT CIRCULATE” warning as evidence of
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`public accessibility of Abowd in 1999 and mentioning of experimental testing of a variety of
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`prototypes with different functionalities in Abowd article as evidence that a Cyberguide prior art
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`system was known in 1999.
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`Even when considered in totality, these facts simply demonstrate that Apple has failed to
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`show by clear and convincing evidence that the Abowd publication and Cyberguide prototype
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`were accessible/known/used/sold two decades ago. This failing is fatal to Apple’s invalidity
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`analysis. Accordingly, pursuant to Federal Rule of Civil Procedure 56 and Local Rule CV-56,
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`Plaintiff Maxell, Ltd. moves for partial summary judgment of no invalidity in view of the
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`devices and documents collectively referred to by Dr. Joseph A. Paradiso (Dr. Paradiso) and Mr.
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`Jacob Robert Munford (Mr. Munford) as “Abowd” and “Cyberguide” (Ex. 1, Paradiso Rep. at ¶
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`120) on the basis that such devices and documents do not qualify as prior art under 35 U.S.C. §
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`102 against U.S. Patent Nos. 6,748,317 (the ’317 patent), 6,580,999 (the ’999 patent), and
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`6,430,498 (the ’498 patent) (together, “Maxell’s walking navigation patents”). There is no
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`factual dispute that Apple did not show by clear and convincing evidence that Abowd and
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`Cyberguide are prior art.1
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`1 Maxell also disputes that this prior art—as well as the remainder of Apple’s prior art—teach every limitation of
`Maxell’s walking navigation patents’ claims. Maxell is moving for summary judgment on the issue of public
`availability in order to focus the Court on the most clear-cut issues.
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`II.
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`LEGAL STANDARD
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`Summary judgment shall be rendered when there is no genuine issue as to any material
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`fact and that the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c);
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`Celotex Corp. v. Catrett, 477 U.S. 317, 323-25 (1986); Ragas v. Tenn. Gas Pipeline Co., 136
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`F.3d 455, 458 (5th Cir. 1998). Mere conclusory allegations, unsubstantiated assertions,
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`improbable inferences, and unsupported speculation are not competent summary judgment
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`evidence. See Eason v. Thaler, 73 F.3d 1322, 1325 (5th Cir. 1996); Forsyth v. Barr, 19 F.3d
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`1527, 1533 (5th Cir. 1994). Summary judgment must be granted if the nonmoving party fails to
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`make a showing sufficient to establish the existence of an element essential to its case and on
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`which it will bear the burden of proof at trial. Celotex, 477 U.S. at 322-23.
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`An issued patent enjoys a presumption of validity. See 35 U.S.C. § 282. This presumption
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`places the burden on the challenging party to prove the patent’s invalidity by clear and
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`convincing evidence. Microsoft Corp. v. i4i Limited Partnership, 131 S. Ct. 2238, 2242, 564
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`U.S. 91, 95 (2011). This standard applies to all “[f]acts establishing anticipation or underlying a
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`determination of obviousness.” Carella v. Starlight Archery, 804 F.2d 135, 138 (Fed. Cir. 1986).
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`Whether evidence qualifies as prior art is a legal determination based on underlying factual
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`findings. See Minnesota Min. & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir.
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`2002); In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). Accordingly, in the absence of clear and
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`convincing evidence on which a reasonable jury could conclude that a given product or
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`publication qualifies as prior art, the Court should grant summary judgment of no anticipation or
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`obviousness. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); see also Hilgraeve,
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`Inc. v. Symantec Corp., 271 F. Supp. 2d 964, 973-76 (E.D. Mich. 2003) (granting summary
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`judgment of no invalidity where the defendant “failed to adduce evidence” of the relevant date
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`for purposes of § 102(a)).
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`“When the asserted basis of invalidity is prior public use, the party with the burden of
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`proof must show that the subject of the barring activity met each of the limitations of the claim,
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`and thus was an embodiment of the claimed invention.” Juicy Whip, Inc. v. Orange Bang, Inc.,
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`292 F.3d 728, 737 (Fed. Cir. 2002). The challenger must create a record that shows “by clear and
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`convincing evidence that the claimed invention was in public use before the patent’s critical
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`date.” Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1325 (Fed. Cir. 2009). The party
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`challenging a patent on the basis of prior knowledge or prior public use must present sufficient
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`corroborating evidence to support a finding of invalidity. Finnigan Corp. v. Int’l Trade
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`Commission, 180 F.3d 1354, 1367 (Fed. Cir. 1999). “[C]orroboration is required of any witness
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`whose testimony alone is asserted to invalidate a patent, regardless of his or her level of
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`interest.” Id. at 1369. If a party relies on a product as prior art, it must show that the relied-upon
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`product qualifies as “prior art.” See, e.g., Zimmer Tech. Inc. v. Howmedica Osteonics Corp., 476
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`F. Supp. 2d 1024, 1045 (N.D. Ind. 2007) (granting summary judgment that physical product does
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`not qualify as prior art under 35 U.S.C. § 102).
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`III.
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`STATEMENT OF UNDISPUTED FACTS
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`The following facts are undisputed:
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`1.
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`The priority date of Maxell’s walking navigation patents is July 12, 1999. See Ex.
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`1, Paradiso Rep. at ¶ 116.
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`2.
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`Dr. Paradiso is Apple’s technical expert who provides opinions with respect to the
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`invalidity of the walking navigation patents. See Ex. 1, Paradiso Rep. at ¶ 2.
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`3.
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`Apple asserts that Maxell’s walking navigation patents are rendered obvious in
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`view of a document entitled Cyberguide: A Mobile Context-Aware Tour Guide by Abowd et al.
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`(hereinafter, “Abowd”). See Ex. 1, Paradiso Rep. at ¶ 167.
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`4.
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`Apple asserts that Maxell’s walking navigation patents are rendered obvious in
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`view of the Cyberguide prototype devices described in the Abowd document (hereinafter,
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`“Cyberguide” or “Cyberguide prototypes”). See Ex. 1, Paradiso Rep. at ¶ 167.
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`5.
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`Dr. Paradiso’s Opening Expert Report regarding the invalidity of Maxell’s
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`walking navigation patents does not make a single reference to the Expert Report of Jacob
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`Munford Concerning Publication and Public Accessibility of Abowd.
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`6.
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`The University of Pittsburgh library records accompanying Mr. Munford’s Expert
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`Report include the text “DO NOT CIRCULATE” on the sleeve of the book Wireless Networks
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`that Mr. Munford contends includes the Abowd publication. Ex. 2, Stoll Rep. at ¶ 118.
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`7.
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`Mr. Munford did not provide any facts with respect to the “DO NOT
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`CRCULATE” text in his expert report or during his deposition.
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`8.
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`Mr. Munford provides no opinions as to the public use of the Cyberguide
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`prototypes mentioned in the Abowd article.
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`IV.
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`STATEMENT OF THE ISSUES FOR THE COURT TO DECIDE
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`1.
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`Whether Apple has failed to establish by clear and convincing evidence that the
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`Abowd article and the Cyberguide prototypes qualify as prior art against Maxell’s walking
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`navigation patents under 35 U.S.C. § 102.
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`2.
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`Whether Maxell’s walking navigation patents—U.S. Patent Nos. 6,748,317,
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`6,580,999, and 6,430,498—are not invalid based on Abowd and Cyberguide.
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`V.
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`ARGUMENT
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`To qualify as prior art, a printed publication must have been available to the relevant
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`public before the patent’s priority date. 35 U.S.C. § 102 (pre-AIA). Hardware devices must have
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`been known, used publicly, or been on sale in this country before the patent’s priority date. Id.
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`Furthermore, this prior invention must not have been abandoned, suppressed, or concealed. Id. §
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`102(g)(2). Whether a piece of art satisfies any one of these standards is a distinct legal
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`determination based on distinct underlying factual issues. See Minnesota Min. & Mfg. Co., 303
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`F.3d at 1301; In re Hall, 781 F.2d at 899.
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`A.
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`Apple has failed to show that the Abowd Publication is Prior Art
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`A prior art reference is only considered to have been “described in a printed publication”
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`if it is publicly accessible. “Because there are many ways in which a reference may be
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`disseminated to the interested public, ‘public accessibility’ has been called the touchstone in
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`determining whether a reference constitutes a ‘printed publication’ . . . .” Jazz Pharms., Inc. v.
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`Amneal Pharms., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897,
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`898-99 (Fed. Cir. 1986)). A reference is considered publicly accessible if it was “disseminated or
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`otherwise made available to the extent that persons interested and ordinarily skilled in the subject
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`matter or art, exercising reasonable diligence, can locate it.” Id. at 1355-56 (citing In re Wyer,
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`655 F.2d 221, 226 (CCPA 1981)); see also Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d
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`1363, 1369 (Fed. Cir. 2019) (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d
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`765, 772 (Fed. Cir. 2018)). The burden is on the patent challenger to prove by clear and
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`convincing evidence that a prior art reference was publicly accessible. See id. at 1356.
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`“Several factors are used such as how widely circulated the reference was, whether the
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`reference was indexed in a manner that would have made it accessible to interested persons with
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`a reasonable degree of effort, and whether the reference was distributed with a pledge or
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`understanding that the contents would remain confidential.” Intellectual Ventures II LLC v.
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`Sprint Spectrum, L.P., No. 2:17-cv-00662-JRG-RSP, 2019 U.S. Dist. LEXIS 76941, at *6 (E.D.
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`Tex. Apr. 18, 2019). Facts and circumstances surrounding the reference’s disclosure to members
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`of the public may include, for example, indexing; however, “[t]he test for public accessibility is
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`not ‘has the reference been indexed?’ [but] where indexing is concerned, whether online or in
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`tangible media, the ultimate question is whether the reference was available to the extent that
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`persons interested and ordinarily skilled in the subject matter or art, exercising reasonable
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`diligence, can locate it.’” Acceleration Bay, LLC, 908 F.3d 765, 772 (internal quotations omitted)
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`(affirming PTAB’s conclusion that certain publications were not publicly accessible even when
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`those publications were placed on a library’s website because the publications were “not indexed
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`in a meaningful way” and that “the website’s advanced search form was deficient.”). The key
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`inquiry is whether or not a reference has been made “publicly accessible.” Id.
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`Dr. Paradiso, Apple’s technical expert, makes no effort to show that the Abowd
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`publication constitutes prior art under § 102. Dr. Paradiso simply relies first on the Abowd paper
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`being “dated September 23, 1996.” Ex. 1, Paradiso Rep. at ¶ 121. But this is apparently just a
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`bare reference to a date printed on Abowd’s cover page and offers no actual information about
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`public accessibility. Dr. Paradiso also relies on having “been informed that the Abowd paper was
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`published or publicly available no later than October 1997.” Ex. 1, Paradiso Rep. at ¶ 121; Ex. 2,
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`Stoll Rep. at ¶ 114. While Apple submitted a separate report of a librarian, Mr. Munford, Dr.
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`Paradiso make no mention of Mr. Munford in his report and does not even list Mr. Munford’s
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`expert report in the list of materials considered, yet he conclusory opines—without any facts—
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`that Abowd is “thus effective as prior art under at least § 102(a) and (b).” This alone is grounds
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`for summary judgment.
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`Aside from the glaring deficiency with Dr. Paradiso’s report, Mr. Munford’s
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`uncorroborated conclusion that Abowd was “available and accessible to the public in October
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`1997” does not cure the problem. Ex. 3, Munford Rep. at ¶ 16; Ex. 1, Paradiso Rep. at ¶ 121; Ex.
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`2, Stoll Rep. at ¶ 115. Mr. Munford’s Report does not set forth clear and convincing evidence
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`that Abowd was made available to the public before the critical date of Maxell’s walking
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`Case 5:19-cv-00036-RWS Document 390 Filed 07/06/20 Page 13 of 24 PageID #: 19259
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`navigation patents of July 12, 1999 (the “critical date”). Mr. Munford opines that Abowd was
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`published and publicly accessible prior to the critical date by virtue of having been included in
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`the book Wireless Networks, which itself was published and publicly accessible prior to the
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`critical date. Mr. Munford relies on two premises to support his belief: 1) the University of
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`Pittsburgh Library records (Ex. 3 Munford Rep. Exs. 2A and 2B); and 2) the Carnegie Mellon
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`University Library records (Ex. 3 Munford Rep. Exs. 2C and 2D). Yet, Mr. Munford’s Report
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`lacks the necessary evidence to corroborate either premise. Ex. 2, Stoll Rep. at ¶ 115.
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`1.
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`Abowd was not shown to have been publicly available at the
`University of Pittsburgh Library
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`There is insufficient evidence on the record to support a finding that Abowd was publicly
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`available at the University of Pittsburgh Library prior to the critical date. Neither exhibit
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`provided by Mr. Munford provides clear and convincing evidence to corroborate Mr. Munford’s
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`conclusion. Ex. 2, Stoll Rep. at ¶¶ 116, 119; Ex. 3 Munford Rep. Exs. 2A and 2B.
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`First, it appears that any distribution of Abowd at the time was meant to be confidential,
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`as evidenced by the “DO NOT CIRCULATE” warning sticker on the sleeve of the Wireless
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`Networks book, which Mr. Munford did not consider. Ex. 2, Stoll Rep. at ¶ 118. Mr. Munford
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`does not address this “DO NOT CIRCULATE” warning in his expert report. Thus, there are no
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`disputes as to the fact that the University of Pittsburgh Library records indicate that at least at
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`some point in the past, the Wireless Networks book that Mr. Munford relies on was meant to not
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`be circulated. Therefore, even if Wireless Networks existed in the University of Pittsburgh
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`Library System on or before July 12, 1999, the “DO NOT CIRCULATE” warnings indicate that
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`it was not meant to be disseminated to the public. This district recognizes that a reference that is
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`not “widely circulated” or that “was distributed with a pledge or understanding that the contents
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`would remain confidential” is not considered publicly accessible prior art. Intellectual Ventures
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`II LLC, No. 2:17-cv-00662-JRG-RSP, 2019 U.S. Dist. LEXIS 76941, at *6.
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`The “Holdings Information” exhibit provided by Mr. Munford also does not cure this
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`deficiency. To the contrary, rather than support Mr. Munford’s conclusion that Volume 3 of
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`Wireless Networks (containing Abowd)2 was publicly available at the University of Pittsburgh
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`Library in October, 1997, the “Holdings Information” plainly shows that only “1 Copy [has
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`been] Received as of 09-02-2004.” Ex. 3, Munford Rep. Ex. 2B at 40. Thus, there is no evidence
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`in this exhibit that can lead one to conclude that the library made the relevant volume of Wireless
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`Networks publicly available prior to the critical date. Ex. 2, Stoll Rep. at ¶ 120.
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`Lastly, Mr. Munford’s attempt to show the date of when the physical construction of the
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`book may have taken place is irrelevant to whether Abowd was “publicly accessible” to the
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`appropriate audience. See Ex. 3, Munford Rep. at ¶ 13; Ex. 2, Stoll Rep. at ¶ 123. The fact that
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`“multiple volumes” of a book were sent to a book bindery sheds no light on whether persons
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`interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence,
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`would have been able to locate it. See Acceleration Bay, LLC, 908 F.3d 765, 772.
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`2.
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`Abowd was not shown to have been publicly available at the Carnegie
`Mellon University Library
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`Mr. Munford has similarly failed to show by clear and convincing evidence that Volume
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`3 of Wireless Networks (containing Abowd) was made publicly available by the Carnegie Mellon
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`University Library prior to the critical date. See Ex. 2, Stoll Rep. at ¶¶ 124-133.
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`Mr. Munford claims that the “008 field of this MARC record indicates Wireless Networks
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`was first cataloged by the Carnegie Mellon University as of January 22, 1999.” Ex. 3, Munford
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`2 Mr. Munford makes no effort to show what volume of Wireless Networks included Abowd before the priority date
`of the walking navigation patents. Just because Abowd is included in a particular volume today has no bearing on
`whether Abowd was included and publicly available in a particular volume almost twenty years ago.
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`Rep. at ¶ 15; see Ex. 2, Stoll Rep. at ¶ 126. But the evidence shows that Wireless Networks
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`journal that Mr. Munford points to was Volume 1 from “Feb. 1995.” Ex. 3, Munford Rep. at ¶
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`15; Ex. 2, Stoll Rep. at ¶ 126-27. Yet Abowd was not even written at that time. Id. To the extent
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`Mr. Munford alleges that Volume 3 of the Wireless Networks included Abowd based on the
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`University of Pittsburgh “DO NOT CIRCULATE” volume, Mr. Munford sets forth no evidence
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`to show when Volume 3 of Wireless Networks that actually contains Abowd was acquired by the
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`Carnegie Mellon University Library or made available to the public.
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`Mr. Munford also concluded that anyone could have accessed Volume 3 of Wireless
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`Networks at any time prior to the critical date because “the entirety of IEEE Communications
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`Magazine” was allegedly accessible via ACM Digital Library and somehow the Abowd article
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`was included in this magazine.” Ex. 3, Munford Rep. at ¶ 15; Ex. 2, Stoll Rep. at ¶¶ 126-27. Mr.
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`Munford provides no fact to support his conclusory opinions that the Abowd article was
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`available in the IEEE Communications Magazine and/or was accessible via the ACM Digital
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`library. Further, the Wayback Machine that archives snapshots of Internet websites during
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`different time periods indicates that the ACM Digital Library was not even accessible on the web
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`until about the year 2010. Ex. 2, Stoll Rep. at ¶ 131.
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`Mr. Munford’s unsubstantiated claims do not answer the question of when Abowd was
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`actually publicly available, falling far short of the necessary burden required to assert it as prior
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`art. As Mr. Stoll explains, neither Dr. Paradiso nor Mr. Munford offer any evidence, nor any
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`mention, of whether (1) Carnegie Mellon had a publicly available website prior to the critical
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`date, (2) whether any version/volume of Wireless Networks was publicly available, (3) whether
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`Volume 3 was publicly available and when, (4) whether the ACM Digital Library possessed the
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`licensing rights to Abowd or Wireless Networks prior to the critical date, (5) whether Carnegie
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`Mellon and ACM Digital Library partnered up to provide access prior to the critical date, or (6)
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`even whether either of these two institutions had websites at that time. Ex. 2, Stoll Rep. at ¶ 132.
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`3.
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`Mr. Munford or Dr. Paradiso have not made any showing that Abowd
`was publicly accessible to one of skill in the art
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`Because there are many ways in which a reference may be disseminated to the interested
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`public, the ultimate question turns on whether it was “disseminated or otherwise made available
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`to the extent that persons interested and ordinarily skilled in the subject matter or art
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`exercising reasonable diligence, can locate it. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d
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`1331, 1348 (Fed. Cir. 2016) (citing Kyocera Wireless Corp., 545 F.3d 1340, 1350). Even if it
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`were assumed that Abowd was available at either the University of Pittsburgh Library or the
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`Carnegie Mellon University Library, Apple has provided no evidence to show that interested
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`members of the relevant public could have accessed it, or viewed or downloaded Abowd on or
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`before the critical date. See id. at 1348-49 (affirming the Board’s finding that the patent
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`challenger failed to carry its burden to establish the reference was prior art when it provided no
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`evidence that the online content was viewed or downloaded by one of ordinary skill in the art)
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`(emphasis added).
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`In addition to the “DO NOT CIRCULATE” warning addressed above, Mr. Munford also
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`provided deposition testimony that shows his conclusions regarding relevant public accessibility
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`were not supported. Specifically, Mr. Munford acknowledged that he does not know exactly
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`what the subject matter of the Abowd publication even is, instead generally defining it as “some
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`type of computer programming or computer engineering from a journal called Wireless
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`Networks.” Ex. 4, Munford Tr. at 34:10-16. But the subject matter of Maxell’s walking
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`navigation patents is not “wireless networks” or “some sort of networking.” As Dr. Paradiso
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`himself defines, one of ordinary skilled in the art of Maxell’s walking navigation patents is one
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`experienced in the field of “location- or sensor-based human-computer interaction.” Ex. 1,
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`Paradiso Rep. at ¶ 117. Mr. Munford provides no evidence that a member of the public with
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`experience in the field of “location- or sensor-based human-computer interaction” would have
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`been able to locate Abowd on or before the critical date. Mr. Munford could not possibly provide
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`this evidence when he was not informed by Dr. Paradiso of this critical fact. And Mr. Munford
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`himself acknowledges that he certainly is not one of ordinary skill in the subject matter of
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`Abowd to know any better. Ex. 4, Munford Tr. at 33:17-22 and 34:12-20. Even if it is assumed
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`that some members of the public may have had access to Abowd, there is no evidence to show
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`that the relevant public could have accessed, viewed, or downloaded Abowd on or before the
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`critical date.
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`Moreover, evidence relied upon by Mr. Munford indicates that, even today, at least the
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`electronic version of Wireless Networks at the University of Pittsburgh Library is available only
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`to “Pitt-affiliated users.” Ex. 2, Stoll Rep. at ¶¶ 121-22. Yet, Mr. Munford does not explain who
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`is and who is not a “Pitt-affiliated” user, and what library access restrictions were imposed in
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`1999. Mr. Munford simply never addresses this part of the evidentiary standard.
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`Without any evidence provided to show that Abowd was publicly available to those of
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`ordinary skill in the art prior to the critical date, summary judgment is warranted. Therefore, the
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`Court should find that Apple has failed to establish by clear and convincing evidence that Abowd
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`qualifies as prior art to Maxell’s walking navigation patents under 35 U.S.C. § 102 and,
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`accordingly, Maxell’s walking navigation patents are not invalid based on Abowd.
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`B.
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`Apple has failed to show that the Cyberguide prototypes are prior art
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`Separate from attempting to rely on the publication of Abowd itself, Dr. Paradiso also
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`relies on the discussions of testing prototypes within the Abowd article to show that “Dr.
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`Abowd’s team had developed fully operational prototypes of Cyberguide and