Case 5:19-cv-00036-RWS Document 416 Filed 07/17/20 Page 1 of 23 PageID #: 21842
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`
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`MAXELL, LTD.’S OPPOSITION TO APPLE INC.’S DAUBERT MOTION
`TO EXCLUDE CONCLUSORY TESTIMONY AND OPINIONS OF MAXELL’S
`EXPERTS RELATING TO DOCTRINE OF EQUIVALENTS AND SOURCE CODE
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`PUBLIC VERSION
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`Case 5:19-cv-00036-RWS Document 416 Filed 07/17/20 Page 2 of 23 PageID #: 21843
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`Table of Contents
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`PAGE
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`I.
`II.
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`III.
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`INTRODUCTION ............................................................................................................. 1
`ARGUMENT ..................................................................................................................... 2
`A.
`Apple ignores the context and scope of Maxell’s DOE opinions .......................... 2
`B.
`Prosecution history estoppel does not bar Dr. Brogioli’s DOE opinions .............. 6
`C.
`Dr. Rosenberg’s structural equivalents opinions are also proper ........................ 10
`D.
`Apple mischaracterizes Maxell’s source code opinions ...................................... 11
`CONCLUSION ................................................................................................................ 15
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`Case 5:19-cv-00036-RWS Document 416 Filed 07/17/20 Page 3 of 23 PageID #: 21844
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Fractus, S.A. v. Samsung Elecs. Co.,
`No. 6:09-cv-203, 2012 U.S. Dist. LEXIS 90398 (E.D. Tex. June 28, 2012) ............................2
`
`GeoTag, Inc. v. Frontier Communications Corp.,
`No. 2:10-cv-00265, 2014 WL 282731 (E.D. Tex. Jan. 24, 2014) .............................................6
`
`Intervet Inc. v. Merial Ltd.,
`617 F.3d 1282 (Fed. Cir. 2010)..............................................................................................7, 9
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`Paice LLC v. Toyota Motor Corp.,
`504 F.3d 1293 (Fed. Cir. 2007)..................................................................................................2
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`Spectrum Pharms., Inc. v. Sandoz Inc.,
`802 F.3d 1326 (Fed. Cir. 2015)..................................................................................................6
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`Whirlpool Corp. v. TST Water, LLC,
`No. 2:15-cv-01528, 2018 WL 1536875 (E.D. Tex. Mar. 29, 2018) ..........................................8
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`Case 5:19-cv-00036-RWS Document 416 Filed 07/17/20 Page 4 of 23 PageID #: 21845
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`TABLE OF ABBREVIATIONS
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`Abbreviation
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`Description
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`Maxell
`Apple
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`Madisetti Rpt.
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`Bims Rpt.
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`Vojcic Rpt.
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`Bystrom Rpt.
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`Williams Rpt.
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`Brogioli Rpt.
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`Menascé Rpt.
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`Rosenberg Rpt.
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`Maher Rpt.
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`Bims Dep. Tr.
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`Rosenberg Dep. Tr.
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`Plaintiff Maxell, Ltd.
`Defendant Apple Inc.
`Initial Expert Report of Vijay Madisetti, Ph.D. Concerning
`Apple’s Infringement of U.S. Patent No. 8,339,493, served May
`7, 2020
`Relevant Excerpts at Ex. 1
`Opening Expert Report of Dr. Harry V. Bims Regarding
`Invalidity of U.S. Patent No. 6,408,193, served May 7, 2020
`Relevant Excerpts at Ex. 2
`Initial Expert Report of Branimir Vojcic, Ph.D. Concerning
`Apple’s Infringement of U.S. Patent No. 6,408,193, served May
`7, 2020
`Relevant Excerpts at Ex. 3
`Initial Expert Report of Maja Bystrom, Ph.D. Concerning
`Apple’s Infringement of U.S. Patent No. 10,084,991, served
`May 7, 2020
`Relevant Excerpts at Ex. 4
`Initial Expert Report of Tim Williams, Ph.D. Concerning
`Apple’s Infringement of U.S. Patent No. 10,212,586
`Relevant Excerpts at Ex. 5
`Initial Expert Report of Michael C. Brogioli, Ph.D. Concerning
`Apple’s Infringement of U.S. Patent No. 6,329,794, served May
`14, 2020
`Relevant Excerpts at Ex. 6
`Rebuttal Expert Report of Dr. Daniel A. Menascé Regarding
`Non-Infringement of U.S. Patent No. 6,329,794, served June
`11, 2020
`Relevant Excerpts at Ex. 11
`Initial Expert Report of Craig Rosenberg, Ph.D. Concerning
`Apple’s Infringement of U.S. Patent Nos. 6,748,317, 6,430,498,
`and 6,580,999, served May 7, 2020
`Relevant Excerpts at Ex. 12
`Initial Expert Report of Robert Maher, Ph.D. Concerning
`Apple’s Infringement of U.S. Patent No. 6,928,306, served May
`7, 2020
`Relevant Excerpts at Ex. 13
`Deposition transcript of Dr. Harry V. Bims dated June 24, 2020
`Relevant Excerpts at Ex. 14
`Deposition transcript of Craig Rosenberg, Ph.D. dated June 15,
`2020
`Relevant Excerpts at Ex. 15
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`Madisetti Dep. Tr.
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`Deposition transcript of Vijay Madisetti, Ph.D. dated June 25,
`2020
`Relevant Excerpts at Ex. 16
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`Case 5:19-cv-00036-RWS Document 416 Filed 07/17/20 Page 6 of 23 PageID #: 21847
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`I.
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`INTRODUCTION
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`Apple asks this Court to divest Maxell of its equivalents theories and source code
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`analyses for six patents based on a mischaracterization of cherry-picked testimony and
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`misapplied law.
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`In its 2.5-page critique of Drs. Maher, Vojcic, Madisetti, and Rosenberg’s doctrine of
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`equivalents opinions, Apple ignores the preceding literal infringement analyses which
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`necessarily frame their context, and are themselves evidence of infringement under the doctrine
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`of equivalents. Further, instead of analyzing or even acknowledging the actual opinions it asks
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`this Court to exclude, Apple excerpts three paragraphs from one expert’s report, and improperly
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`casts them as representative of the lot. A plain review of all twenty-four challenged paragraphs
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`tells a different story, exposing Apple’s characterization as incomplete, if not deliberately
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`deceiving. The same goes for Apple’s request to exclude Dr. Rosenberg’s structural equivalents
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`opinions, which finds no basis in the record, the testimony of its own expert, or the law.
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`Apple’s request to exclude Dr. Brogioli’s doctrine of equivalents opinions should also be
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`denied. Apple first faults Dr. Brogioli for not conducting a prosecution history estoppel analysis,
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`which case law precludes him from doing, and then misapplies the applicable standard. Any
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`subject matter allegedly surrendered during prosecution plainly does not align with the doctrine
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`of equivalents opinions that Apple seeks to exclude. This much is clear from the record, and the
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`non-infringement report of its own expert, which characterizes the purpose of the pertinent claim
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`amendment differently from Apple.
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`Apple’s request to exclude source code opinions fares no better. As this Court is aware,
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`this case involves several categories and generations of products; and many aspects of the
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`accused functionality cut across different software versions. As a result, Maxell’s experts have
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`included tables or other summaries mapping accused features (e.g., FaceTime) across the
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`specific files for each relevant software version (
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`). Apple seeks
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`to cast these opinions as conclusory or unsupported, even though their purpose is self-evident,
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`particularly in view of the related detailed analyses—including deposition testimony by Apple’s
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`corporate witnesses on technical and source code issues—that Apple chooses to ignore.
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` For these reasons and as explained in greater detail below, Apple’s Motion (Dkt. 367)
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`should be denied.
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`II.
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`ARGUMENT
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`A.
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`Apple ignores the context and scope of Maxell’s DOE opinions
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`Apple provides scant argument or evidence in its request to exclude Maxell’s doctrine of
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`equivalents opinions, ignoring the actual analyses in the paragraphs it seeks to exclude as well as
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`preceding infringement testimony. It is settled that an expert is not required to “re-start his
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`testimony at square one when transitioning to a doctrine of equivalents analysis.” Paice LLC v.
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`Toyota Motor Corp., 504 F.3d 1293, 1305 (Fed. Cir. 2007). Indeed, “an expert may explicitly or
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`implicitly incorporate his earlier testimony into the DOE analysis.” See Fractus, S.A. v. Samsung
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`Elecs. Co., No. 6:09-cv-203, 2012 U.S. Dist. LEXIS 90398, at *25 (E.D. Tex. June 28, 2012).
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`When viewed in the appropriate scope and context, the doctrine of equivalents opinions of Drs.
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`Maher, Vojcic, Madisetti, and Rosenberg are undeniably proper.
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`Dr. Madisetti’s DOE Opinions. Apple seeks to exclude paragraphs 125, 550, and 633-
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`635 of Dr. Madisetti’s infringement report. Paragraphs 125 and 550 contain introductory or
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`summary statements, and there is no basis for excluding them. Paragraphs 633-635 are contained
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`in subsection X.B.3 (spanning paragraphs 578-636), where Dr. Madisetti provides a detailed
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`infringement analysis regarding claim limitation 6[b] of the ’493 Patent. Relying on this same
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`analysis, which discusses source code and other technical documentation, paragraphs 633-635
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`address why Apple’s products also infringe under the doctrine of equivalents.
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`Specifically, at paragraph 634, Dr. Madisetti explains
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`that “
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`addressed at length in the preceding paragraphs. Ex. 1, Madisetti Rpt.; see also id. at ¶ 587
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`”—a function
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`(describing
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`(showing how
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`) and ¶¶ 588-590
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`). Dr. Madisetti
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`also explains that the accused products perform image stabilization in substantially the same
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`way—i.e.,
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`587-590. Dr. Madisetti also explains that the accused functionality yields the same results,
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`—again as described earlier in the same subsection. Id. at ¶¶
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`relying on the deposition testimony of an Apple engineer, who admits that
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` Id. at ¶ 634. Continuing, Dr. Madisetti states that
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`“[t]he evidence I’ve cited in this section proves these functions, ways, and results are
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`insubstantially different.” Id. Thus, Dr. Madisetti states that the evidence referenced in
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`subsection X.B.3 (¶¶ 578-636) also supports his doctrine of equivalents opinions and
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`conclusions. Apple ignores this critical context.
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`Dr. Vojcic’s DOE Opinions. Apple seeks to exclude paragraphs 82 and 831-835.
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`Paragraph 82 is an introductory sentence for claim 1 supported by subsequent opinions, and there
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`is no basis for excluding it. Apple ignores the detailed analyses contained in the remaining
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`challenged paragraphs and those preceding them. Paragraphs 831-835 are contained within
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`subsection X.A.13(b), spanning paragraphs 761-838. In this subsection, Dr. Vojcic explains at
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`length how
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` is an equivalent of the claimed “variable amplitude
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`amplifier,” analyzing and relying upon evidence from
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` and other technical documents in the process. In paragraphs 818-835, Dr. Vojcic
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`walks through
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` documents to support his opinions that
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` correspond to the claimed variable amplitude amplifier literally or under the
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`doctrine of equivalents. For example, Dr. Vojcic specifically points to
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` Ex. 3, Vojcic Rpt. at ¶ 830. Dr. Vojcic
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`also discusses other
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` documents explicitly stating that
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` Id. at ¶ 833 (emphasis added). Thus, Dr. Vojcic’s opinions are reliable and grounded
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`in evidence.
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`Dr. Rosenberg’s DOE Opinions. Apple seeks to exclude paragraphs 520-522 and 660 of
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`Dr. Rosenberg’s report. Again, Apple not only mischaracterizes the scope of these paragraphs,
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`but it ignores surrounding paragraphs that provide critical context.
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`Paragraphs 520-522 are in subsection X.B.1, spanning paragraphs 516-640, where Dr.
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`Rosenberg explains how the accused products include a “a device for retrieving a route from said
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`present place to said destination” literally and under the doctrine of equivalents. Specifically, Dr.
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`Rosenberg relies on source code, technical documents, deposition testimony of three Apple
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`engineers, and videos showing the functionality of the accused products to show how
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` retrieve a route from said present place to said destination
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`literally and under the doctrine of equivalents. Dr. Rosenberg explains at length how
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` correspond to the claimed device for data communication by citations from the
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`’317 Patent (¶¶ 519, 521, 522) and various pieces of evidence discussed in this section. Ex. 12,
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`Rosenberg Rpt. He specifically explains how
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` as disclosed in the patent. Id. at ¶ 522. This is plainly not
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`conclusory, and Apple’s Motion (Dkt. 367) addresses none of it.
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`Similarly, paragraph 660 is in subsection X.D.2, which spans paragraphs 656-664 and
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`relates to claim limitation 1[c] of the ’317 Patent. Id. In this subsection, Dr. Rosenberg analyzes
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`and relies upon deposition testimony, source code, and other technical documentation, in
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`concluding that
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` that infringe the claim limitation
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`1[c] both literally and under the doctrine of equivalents. Id. at ¶¶ 657-747.
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`Dr. Maher’s DOE Opinions. Apple seeks to exclude paragraphs 78, 82, 129, 130, 145,
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`191-193, and 207, yet only explicitly addresses paragraphs 191-193. Regardless, Apple’s limited
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`analysis ignores the context in which these opinions are proffered.
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`Paragraphs 129 and 130 are contained within subsection X.A.2, spanning paragraphs
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`104-130 of Dr. Maher’s report, which addresses claim limitation 12[a] of the ’306 Patent. When
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`read in the context of preceding paragraphs 104-128, it is clear that the doctrine of equivalents
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`opinions disclosed in paragraphs 129 and 130 are supported by evidence from Apple’s engineer
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`(e.g., ¶ 105), source code (¶¶ 106, 122), product testing (¶ 128), and other technical
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`documentation (e.g., ¶¶ 113-128). Ex. 13, Maher Rpt. Dr. Maher specifically identifies the
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`infringes the claim limitation both literally and under the doctrine of equivalents. The same goes
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`for paragraphs 191-193, which are contained in subsection X.B.2 and span paragraphs 167-193
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`where Dr. Maher analyzes numerous pieces of evidence to demonstrate that the accused products
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`include
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` Id. When read in the context of the broader subsection, it is clear that the
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`doctrine of equivalents opinions are supported by evidence from Apple’s engineers, source code,
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`product testing, and overall analyses of the accused products. Apple ignores this evidence and
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`analyses.
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`Paragraphs 82, 145, and 207 are all introductory sentences, relating to claims 12, 13, and
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`15, respectively. Per above, Dr. Maher establishes that claims 12 and 13 are infringed both
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`literally under the doctrine of equivalents. Claim 15 depends from claim 13. Accordingly, the
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`opinions expressed in these paragraphs are also proper.
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`B.
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`Prosecution history estoppel does not bar Dr. Brogioli’s DOE opinions
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`Apple faults Dr. Brogioli for not doing what the law precludes him from doing—offering
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`legal conclusions. Dr. Brogioli sets forth the proper legal standard for infringement under the
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`doctrine of equivalents, and analyzes Maxell’s doctrine of equivalents theories based on that
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`standard. Ex. 6, Brogioli Rpt. at ¶¶ 35-37, 350-359, 686-705, 952-961, 1159-1178. Dr. Brogioli
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`does not—contrary to Apple’s expert—conduct a legal analysis of whether prosecution history
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`estoppel bars Maxell’s doctrine of equivalents theories. Doing so would have been impermissible
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`as a matter of law. Spectrum Pharms., Inc. v. Sandoz Inc., 802 F.3d 1326, 1337 (Fed. Cir. 2015)
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`(“[w]hether prosecution history estoppel applies, and thus whether the doctrine of equivalents is
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`available for a particular claim limitation, is a question of law.”). See also GeoTag, Inc. v.
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`Frontier Communications Corp., No. 2:10-cv-00265, 2014 WL 282731, at *1 (E.D. Tex. Jan. 24,
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`2014) (“Prosecution history estoppel is a matter of law for a judge to decide, rather than a jury.”)
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`(citations omitted).
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`That issue notwithstanding, a proper analysis of Dr. Brogioli’s doctrine of equivalents
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`opinions in view of the prosecution history and controlling precedent demonstrates that such
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`estoppel does not apply. Moreover, Apple’s arguments conflict with its expert’s characterization
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`of the subject claim amendments, which bear no relation to the challenged opinions.
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`Though an “amendment [that] is adopted for a substantial reason related to
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`patentability…gives rise to a presumption of surrender,” the estoppel “does not completely bar
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`the benefit of the doctrine of equivalents from all litigation related to the amended claim.”
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`Intervet Inc. v. Merial Ltd., 617 F.3d 1282, 1291 (Fed. Cir. 2010). The “district court must look
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`to the specifics of the amendment and the rejection that provoked the amendment to determine
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`whether estoppel precludes the particular doctrine of equivalents argument being made.” Id.
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`(citing omitted). Here, a comparison of the narrowing amendment with the challenged doctrine
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`of equivalents theory reveals no overlap in scope. Below is a summary of pertinent events from
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`the prosecution history.
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`On April 10, 2001, the USPTO issued an Office Action, rejecting original claims 1-4 and
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`6-13 of U.S. Patent Application No. 09/657,151 (“the ’151 Application”), the application which
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`eventually would issue as the ’794 Patent. In doing so, the Examiner indicated that original claim
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`5 “would be allowable if rewritten in independent [form] including all of the limitations of the
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`base claim and any intervening claims.” Ex. 7, Apr. 10, 2001 Office Action at 2, 4
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`(MAXELL_APPLE000281 - 283). On July 10, 2001, applicants submitted a Response,
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`amending claim 5 to independent form (i.e., to include the limitations of base claim 2, which was
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`subsequently cancelled), and claims 6, 7, 9, 11, and 12 to depend from claim 5. Applicants also
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`added new claims 14-19 to “substantially track dependent claims 6, 9, 10, 11, and 12.” Ex. 8, Jul.
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`10, 2001 Resp. at 6 (MAXELL_APPLE0000293). In their “Remarks,” applicants stated that the
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`amendments were made in view of the Examiner’s indication of allowability. Id. Original claims
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`2 and 5 are reproduced below for the Court’s convenience:
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`Ex. 9, Original ’151 Application at 13 (MAXELL_APPLE0000219) (annotated).
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`Id. at 14 (MAXELL_APPLE0000220) (annotated). Per the above excerpt, original claims 2 and
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`5 both required a “controller” that “sends a power consumption reduction instruction” to the
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`function devices. The amended version of claim 5 illustrates this fact, where the “power
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`consumption reduction instruction” limitation is not underlined. Ex. 10, Jul. 10, 2001 Response
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`at 9 (MAXELL_APPLE0000296).
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`Thus, any allegedly surrendered subject matter would necessarily exclude the “controller
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`send[ing] a power consumption reduction instruction” to the function devices, as that subject
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`matter was contained in the dependent and independent claims. See Whirlpool Corp. v. TST
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`Water, LLC, No. 2:15-cv-01528, 2018 WL 1536875, at *9 (E.D. Tex. Mar. 29, 2018) (“Where an
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`independent claim, alone, is cancelled and a dependent claim from that independent claim is
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`rewritten into independent form, it is appropriate to apply prosecution history estoppel to the
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`difference in scope between the independent and dependent claims.”). This claim limitation is
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`the same limitation addressed by Dr. Brogioli in his doctrine of equivalents analysis at
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`paragraphs 686-705 and 1159-1178 of his infringement report—the same/only opinions Apple
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`moves to exclude. For example, at paragraph 688, Dr. Brogioli clarifies that his doctrine of
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`equivalents analysis (paragraphs 686-705) addresses whether
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`Ex. 6, Brogioli Rpt. at ¶ 688. See also id. at ¶ 1161 (stating same regarding paragraphs 1159-
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`1178).
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`At a minimum, this demonstrates that “the rationale underlying the narrowing
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`amendment bore no more than a tangential relation to the equivalent in question.” Intervet Inc. v.
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`Merial Ltd., 617 F.3d 1282, 1291 (Fed. Cir. 2010) (quoting Festo Corp. v. Shoketsu Kinzoku
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`Kogyo Kabushiki Co., 344 F.3d 1359, 1368 (Fed. Cir. 2003) (en banc)).
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`In addition, Apple’s arguments conflict with that of its expert (Dr. Menascé), who in
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`addition to contending that the above-referenced amendments preclude reliance on the doctrine
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`of equivalents for any claim limitations, regardless of scope1 (Ex. 11, Menascé Rpt. at ¶ 386),
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`characterizes the narrowing amendment as addressing claim limitations which bear no relation to
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`the doctrine of equivalents opinions at issue here:
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`Applicant was trying to overcome the prior art (Eiraku) that included at least two
`“function devices” and was trying to overcome the prior art by further
`requiring there to be no overlap between the first set of function devices and
`the second set of the function devices that are affected at different battery levels.
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`1 As explained in Maxell’s Motion to Strike Portions of Defendant Apple Inc.’s Rebuttal Expert Report of Dr.
`Daniel A. Menascé Regarding Non-Infringement of U.S. Patent No. 6,329,794 (Dkt. 374), Dr. Brogioli proffers two
`sets of doctrine of equivalents opinions in his infringement report,
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`. Apple’s Motion (Dkt. 367)
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`seeks to exclude the latter.
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`Id. at ¶ 389 (emphasis added). The doctrine of equivalents opinions at issue pertain to
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`—the narrowing amendment (as
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`conceded by Apple’s expert) does not. Thus, Dr. Brogioli’s opinions are plainly not
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`commensurate with the scope of the narrowing amendments.
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`C.
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`Dr. Rosenberg’s structural equivalents opinions are also proper
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`Apple seeks to exclude paragraphs 520-522 and 660 as being “devoid of any facts or
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`analysis.” Dkt. 367 at 5. Apple is wrong at least for the reasons stated above in Section I.A.
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`Further, Apple ignores Dr. Rosenberg’s opinions explaining how the ’317 and ’999 Patents
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`describe PHS functions, and how these functions are performed by the structural equivalent of a
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`WiFi or cellular modem.
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`Apple’s discussion about modern-day WiFi or cellular modems as “after rising”
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`technology is a red herring and factually incorrect. First, WiFi and cellular functionality were
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`well known at the time the ’317 and ’999 Patents were filed, by way of their reference to both
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`“cellular” and “wireless” antennae, and a “wireless network.” See, e.g., Ex. 17, ’317 Patent
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`4:13-19 (“wireless antenna”), 5:64-67 (“cellular antenna”), 9:21-26 (“wireless network”).
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`Second, Apple’s expert agreed that the original WiFi 802.11 standard was published in 1997 (Ex.
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`14, Bims Dep. Tr. at 16:14-22) and that from 1997-1999, work on the WiFi standards continued.
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`Id. at 18:4-18 (“the focus of the 802.11 working group is to focus on the development of a
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`wireless local area network technology that we commonly call WiFi”). Similarly, Dr. Bims
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`admits that GSM (TDMA) and CDMA systems were known “by the spring of 1990,” and the
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`products accused in this case continue to implement these cellular functionalities. Ex. 2, Bims
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`Rpt. at ¶¶ 52-54; Ex. 3, Vojcic Rpt. at ¶¶ 90, 93. Based on the foregoing—all of which Apple
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`ignores—Dr. Rosenberg opines that the cellular and WiFi modems in the accused products are
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`structural equivalents to the device of data communication.
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`Further, Apple mischaracterizes Dr. Rosenberg’s deposition testimony by alleging that he
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`was unaware of the after-arising technology requirement. To the contrary, Dr. Rosenberg stated
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`that he was aware that “infringement of legal standards limitations are different from
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`nonfunctional limitations” and that he performed a means-plus-function analysis. Ex. 15,
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`Rosenberg Dep. Tr. 120:16-23. Dr. Rosenberg further stated he was aware that doctrine of
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`equivalents and structural equivalents are different legal standards. Id. at 121:3-7. Dr. Rosenberg
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`also confirmed that he applied the structure supplied by the Court, and that none of the
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`equivalent structures are after-arising technology. Id. at 121:20-122:2, 122:10-15.
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`Lastly, attorney argument related to a particular figure did not create collateral estoppel.
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`Nor does it stand for the proposition that Apple urges. Maxell’s counsel did not state that a PHS
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`is precluded from being a structural equivalent to a WiFi or cellular modem. To the contrary, and
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`as Apple acknowledges, Maxell’s counsel explained that a PHS is “a kind of portable
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`telephone…that worked a little bit differently.” Dkt. 367 at 6-7. Apple’s argument is nothing
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`more than a last-ditch attempt to shoehorn an unsupported claim construction into this case.
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`D.
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`Apple mischaracterizes Maxell’s source code opinions
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`The source code citations of Drs. Madisetti, Bystrom, Maher, and Williams are proper.
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`As Apple knows, the software at issue in many instances covers multiple versions (e.g., iOS 7-
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`13) for a particular class of accused products (e.g., iPhones). In instances where these software
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`versions are materially the same, Maxell’s experts provide detailed analyses for particular
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`version(s), and then cite corresponding code from other versions. Apple seeks to exclude these
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`undisputed opinions without justification. Apple’s request should be denied for three reasons.
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`First, Maxell’s experts should be allowed to present these tables to the jury because they
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`depict the actual source code that the experts reviewed and relied upon in formulating their
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`opinions.
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`Second, it is the existence of the files themselves on which Maxell’s experts rely.
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`Maxell’s experts should be permitted to explain
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`to show that certain
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`accused products infringe in the same manner.2
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`Third, as shown below, when considered in the proper context, each expert’s reliance on
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`source code was far from conclusory, as wrongly claimed by Apple.
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`Dr. Madisetti’s Source Code Opinions. Apple seeks to exclude paragraphs 122, 317,
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`418-419, 563, and 625 of Dr. Madisetti’s report for referencing a source code table. In doing so,
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`Apple ignores the purpose of the table and the totality of Dr. Madisetti’s source code analysis.
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`Dr. Madisetti analyzes source code in at least sections VIII (¶ 121), X.A.6.b, X.A.7.b, and
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`X.B.3.a of his report, in many instances discussing particular software version(s) (e.g., iOS 7 or
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`13), and then referencing corresponding code in other versions, as listed in his Exhibit C. Apple
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`would have had Dr. Madisetti copy and paste his source code analysis for each particular iOS
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`version at issue. The purpose of the source code table is to expedite this process. When asked
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`questions about the code at his deposition, Dr. Madisetti was able to knowledgeably explain his
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`source code opinions, despite transparent attempts by Apple’s counsel to manufacture disputes.
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`See, e.g., Ex. 16, Madisetti Dep. Tr. at 176:18-178:24; 180:5-181:22; 188-190; 189:7-19; 190:1-
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`11.
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`2 At trial, the experts’ testimony is limited to the scope of their reports and depositions. To the extent the experts
`attempts to proffer testimony beyond that scope, Apple can of course object. And if Apple believes more
`explanation is needed for any particular source code files, it may explore those issues during cross examination. To
`exclude these opinions entirely, however, would be premature and inappropriate.
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`Dr. Bystrom’s Source Code Opinions. Apple moves to strike paragraphs 117, 127, 131,
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`146, 390-391, 416, 425, 436, 449-450, 484, 498-499, 522, 581, 602-603, and 638, alleging that
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`“Dr. Bystrom cites to a table listing over 120 source code files, where many of the files listed in
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`the table do not appear in the body of her report and Dr. Bystrom does not explain how those
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`files relate to her infringement opinions.” Dkt. 367 at 11. Apple is wrong.
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`Paragraph 117 of Dr. Bystrom’s report identifies the same source code files for three
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`different software versions (iOS 11-13), for each relevant claim element. Then, Dr. Bystrom
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`explains with support from additional evidence that “
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`” Ex. 4, Bystrom ’991 Rpt. at ¶ 117. Continuing, in
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`paragraphs 118-149, Dr. Bystrom provides a detailed source code analysis, relying on Apple
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`30(b)(6) deposition testimony to relate the source code descriptions to the accused products. Id.
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`Dr. Bystrom identifies a similar source code table in paragraphs 390-391 of her report and
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`provides citations to similar deposition testimony and analysis of the code in paragraphs 392-
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`408. Id. In paragraphs 416 and 425, Dr. Bystrom confirms
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`. Id.
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`In paragraph 436, Dr. Bystrom provides a source code table to support her opinion that
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`different versions of iOS function in materially the same way by explaining that
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` Id. Paragraphs 484, 522, 581, and 638
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`follow a similar format.
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`In paragraph 449, Dr. Bystrom provides another source code table, followed by an
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`analysis in view of deposition testimony (¶¶ 450-467), to explain how the source code shows
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`. Paragraphs 498-507 and 602-621 follow a similar format.
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`The foregoing opinions are well-reasoned and supported by detailed analyses and
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`evidence, including deposition testimony from Apple witnesses. Apple’s request to exclude them
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`should be denied.
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`Dr. Maher’s Source Code Opinions. Apple seeks to exclude paragraphs 51, 62, and 72
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`of Dr. Maher’s report. The propriety of these opinions, however, is clear on their face.
`o Paragraph 51 includes a table, excerpted from Apple’s Response to Maxell’s
`Interrogatory No. 12. Dr. Maher uses this table to illustrate that
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` Ex. 13, Maher Rpt. at ¶ 50. See
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`also id. at ¶ 40.
`o Paragraph 62 simply explains that
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`. Id. Similarly,
`in paragraph 72, Dr. Maher explains that he travelled to California to review source code
`related to the same functionality. Id.
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`Thus, the paragraphs that Apple seeks to exclude are not even “source code” opinions but
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`background information explaining the relevancy of the source code Dr. Maher reviewed.
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`Dr. Williams’ Source Code Opinions. Apple moves to exclude paragraphs 283-298, 310,
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`331-333, 362-365, 473-476, 590-598, 612, 634-636, 666-669, and 777-780. Apple complains
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`that “the analysis in each of sections [1.d]-[1.g] simply refers back to section [1.c] and does not
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`provide any specific functions or lines of code that support Dr. Williams’ opinions with respect
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`to those elements.” Dkt. 367 at 11. With respect to limitation 1[c], Apple casts those source code
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`opinions aside, ignoring the substantial detail and analysis therein, as well as preceding
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`paragraphs. Apple’s request should be denied.
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`In paragraph 102, Dr. Williams explains how a handful of source code files
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` are tied to the accused functionality—the
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`pairing/unlocking functionality in the iPhone/Watch and Watch/Mac scenarios—in part based on
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`deposition testimony. Ex. 5, Williams Rpt. at ¶¶ 103-104. Dr. Williams also provides a detailed
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`table with function calls and specific line numbers, and describes the operation of these functions
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`through diagrams. Id. at ¶¶ 106-118. Apple ignores all of this analysis.
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`Turning to the opinions Apple does address, in paragraphs 283-298, Dr. Williams
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`provides a detailed source code analysis, relying among other things on deposition testimony and
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`function and line citations, for claim element 1[c] of the ’586 Patent, which is the “controller”
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`limitation and, per the claim, unlocks the another mobile terminal when conditions 1[e]-1[g] are