Case 5:19-cv-00036-RWS Document 432 Filed 07/23/20 Page 1 of 11 PageID #: 23910
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`Plaintiff,
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`Defendant.
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`MAXELL’S REPLY IN SUPPORT OF MOTION TO
`STRIKE PORTIONS OF APPLE’S REBUTTAL EXPERT REPORT
`OF DR. DANIEL A. MENASCÉ REGARDING NON-INFRINGEMENT
`OF U.S. PATENT NO. 6,329,794 FOR OFFERING LEGAL OPINIONS
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`Case 5:19-cv-00036-RWS Document 432 Filed 07/23/20 Page 2 of 11 PageID #: 23911
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`I.
`II.
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`III.
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`TABLE OF CONTENTS
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`PAGE
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`INTRODUCTION ............................................................................................................. 1
`ARGUMENT ..................................................................................................................... 2
`A.
`Apple ignores Dr. Menascé’s legal conclusions .................................................... 2
`B.
`This dispute is not one of weight or credibility ..................................................... 5
`CONCLUSION .................................................................................................................. 5
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`ii
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`Case 5:19-cv-00036-RWS Document 432 Filed 07/23/20 Page 3 of 11 PageID #: 23912
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
`344 F.3d 1359 (Fed. Cir. 2003)..................................................................................................4
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`Intervet Inc. v. Merial Ltd.,
`617 F.3d 1282 (Fed. Cir. 2010)..................................................................................................3
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`Maxell, Ltd. v. ZTE (USA) Inc.,
`No. 5:16-cv-00179-RWS ...........................................................................................................5
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`Whirlpool Corporation v. TST Water, LLC,
`No. 2:15-cv-01528, 2018 WL 1536875 (E.D. Tex. Mar. 29, 2018) ..........................................3
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`iii
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`Case 5:19-cv-00036-RWS Document 432 Filed 07/23/20 Page 4 of 11 PageID #: 23913
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`I.
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`INTRODUCTION
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`Unable to justify the inexplicable decision by its expert to opine on legal issues, Apple
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`attempts to reframe the opinions as factual analyses and the dispute as one of credibility and
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`weight. A plain review of the challenged opinions tells a different story, and exposes Apple’s
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`arguments as deflection and obfuscation, nothing more.
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`First, Apple ignores Dr. Menascé’s misapplication of the law on prosecution history
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`estoppel. Dr. Menascé is unequivocal in his opinion that a claim amendment made during
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`prosecution bars all doctrine of equivalents opinions for that claim, regardless of scope. Of
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`course, Dr. Menascé is wrong. The estoppel must be commensurate with the scope of the
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`surrendered subject matter. Yet, Dr. Menascé fails to attempt such a proof, much less establish
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`that Dr. Brogioli’s equivalents opinions (covering two distinct theories and claim limitations)
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`reside in the surrendered territory between the original and amended claim. Even if a
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`presumption of estoppel does apply, this would necessarily mean that the rationale underlying
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`the amendment bears no more than a tangential relation to the equivalent.
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`Second, Apple’s argument that Maxell’s challenges go to the weight of Dr. Menascé’s
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`opinions is a red herring and should not be countenanced. This is not a matter of two experts
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`disagreeing on a technical issue, but rather one expert proffering opinions—legal conclusions—
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`that are beyond his area of expertise and are in any event erroneous.
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`Third, Apple’s excuses are belied by its June 30, 2020 Motion to Exclude Conclusory
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`Testimony and Opinions of Maxell’s Experts Relating to Doctrine of Equivalents and Source
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`Code (Dkt. 367), where Apple asks this Court to exclude one of Dr. Brogioli’s equivalents
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`theories based on prosecution history estoppel. Apple knows this is a legal issue, yet attempts to
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`proffer similar conclusions under the guise of technical expert testimony. Dr. Menascé’s
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`1
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`Case 5:19-cv-00036-RWS Document 432 Filed 07/23/20 Page 5 of 11 PageID #: 23914
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`opinions on the subject would only confuse the jury and empower it to decide an issue that is not
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`within its province to consider—all to the substantial prejudice of Maxell.
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`Paragraphs 380-389 should be stricken in their entirety.
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`II.
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`ARGUMENT
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`A.
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`Apple ignores Dr. Menascé’s legal conclusions
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`Apple’s characterization of the challenged paragraphs conveniently ignores the very
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`opinions that are the source of the impropriety. Apple sidesteps the first sentence of paragraph
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`386, which serves one undeniable purpose: inviting the jury to categorically dismiss all doctrine
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`of equivalents opinions by way of prosecution history estoppel. Paragraph 386 also conveys and
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`relies upon a misstatement and misapplication of controlling case law. Well aware that Dr.
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`Menascé is unqualified to provide such opinions, Apple shifts attention elsewhere, and casts the
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`lot of the challenged opinions as factual analysis or legal background. While portions of the
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`challenged opinions fit this mold, Apple cannot divorce the opinions from the context and
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`purpose in which they are provided.
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`Apple summarizes paragraph 386 from Dr. Menascé’s rebuttal report as follows:
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`Paragraph 386 recites Dr. Menascé’s understanding of the three criteria evaluated
`by courts in determining whether a patentee can rebut the presumption of
`surrender to avoid prosecution history estoppel—and thus invoke the doctrine of
`equivalents—and notes that Dr. Brogioli failed to consider any of these criteria.
`Maxell does not argue that Dr. Menascé’s recitation of the relevant criteria is
`incorrect or dispute that Dr. Brogioli failed to consider the criteria. This
`paragraph does not state any legal opinion.
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`Dkt. 402 at 5 (emphasis added). Lost in this summary is the first sentence of paragraph 386,
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`which states: “[b]ecause the scope of independent claim 2 of the ’151 Application was narrowed
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`by rewriting the dependent claim 5 into independent form and by adding the application claim
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`14, the doctrine of equivalents is not available for ’794 Patent Claims 1 and 9.” Dkt. 364, Ex. 1
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`(Menascé Reb. Rep.) at ¶ 386.
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`2
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`Case 5:19-cv-00036-RWS Document 432 Filed 07/23/20 Page 6 of 11 PageID #: 23915
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`This opinion is not only a legal conclusion, it is wrong. “Where an amendment narrows
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`the scope of the claims, and that amendment is adopted for a substantial reason related to
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`patentability, the amendment gives rise to a presumption of surrender for all equivalents that
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`reside in ‘the territory between the original claim and the amended claim.’” Intervet Inc. v.
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`Merial Ltd., 617 F.3d 1282, 1291 (Fed. Cir. 2010) (citing Festo Corp. v. Shoketsu Kinzokuo
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`Kogyo Kabushiki Co., 535 U.S. 722, 740 (2002)). In other words, the applicability of prosecution
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`history estoppel requires a comparison of the proposed equivalent with the “territory between the
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`original claim and the amended claim.” Id. See also Whirlpool Corporation v. TST Water, LLC,
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`No. 2:15-cv-01528, 2018 WL 1536875, at *9 (E.D. Tex. Mar. 29, 2018) (“Where an independent
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`claim, alone, is cancelled and a dependent claim from that independent claim is rewritten into
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`independent form, it is appropriate to apply prosecution history estoppel to the difference in
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`scope between the independent and dependent claims.”). Here, Dr. Menascé states the opposite,
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`urging the jury to dismiss the entirety of Dr. Brogioli’s doctrine of equivalents analysis—
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`consisting of two theories, covering two distinct claim limitations: 1[a]/9[a] (function/component
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`devices), and 1[f]/9[d-e] (power consumption reduction instruction)—without comparing either
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`of the two equivalents theories with the scope of the allegedly surrendered content.
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`Building on this flawed logic, Dr. Menascé states in the very next sentence that Dr.
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`Brogioli was therefore obligated to prove that one of three factors applies in order for his
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`doctrine of equivalents opinions to carry any weight:
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`Thus, to assert infringement under the doctrine of equivalents, Dr. Brogioli needs
`to show that either (a) his asserted equivalent was unforeseeable at the time of the
`application; (b) the rationale underlying the amendment bears no more than a
`tangential relation to the equivalent; or (c) the patentee could not reasonably have
`been expected to have described the equivalent in question. Dr. Brogioli offers no
`opinion showing any of the above.
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`3
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`Case 5:19-cv-00036-RWS Document 432 Filed 07/23/20 Page 7 of 11 PageID #: 23916
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`Dkt. 364, Ex. 1 at ¶ 386. This is also wrong. Dr. Menascé was not obligated to assess whether
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`prosecution history estoppel barred Maxell’s doctrine of equivalents theories. That is an issue for
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`this Court. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1369 (Fed.
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`Cir. 2003) (“Questions relating to the application and scope of prosecution history estoppel thus
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`fall within the exclusive province of the court. Accordingly, the determinations concerning
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`whether the presumption of surrender has arisen and whether it has been rebutted are questions
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`of law for the court, not a jury, to decide.”).
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`That issue notwithstanding, Dr. Menascé errs in his misguided analysis of the above
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`factors. Neither of Dr. Brogioli’s equivalents theories is commensurate with the scope of the
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`allegedly surrendered subject matter. As explained in Maxell’s Opposition to Apple’s Motion to
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`Exclude DOE and Source Code Opinions (Dkt. 405), the first theory addresses what
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`functionality qualifies as a function/component device (1[a]/9[a]); and the second theory
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`addresses what functionality qualifies as a power consumption reduction instruction (1[f]/9[d]).
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`Dkt. 405 at 7-9. The original and amended claims both recite the requisite function/component
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`devices, and the issuance of the power consumption reduction instruction to same. In other
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`words, the function/component devices and instructions are necessarily outside the scope of any
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`allegedly surrendered subject matter. At a minimum, the prosecution record demonstrates that
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`“the rationale underlying the amendment bears no more than a tangential relation to the
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`equivalent.” Dkt. 364, Ex. 1 at ¶ 386.
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`In view of the above, the only ostensible purpose of paragraph 386 is to “state a[] legal
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`opinion”—an opinion based on a misstatement and misapplication of law. Dkt. 402 at 5.
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`Paragraphs 387-389 build on the same erroneous conclusion by still failing to compare the scope
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`4
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`Case 5:19-cv-00036-RWS Document 432 Filed 07/23/20 Page 8 of 11 PageID #: 23917
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`of the equivalents theories with the allegedly surrendered subject matter. Paragraphs 380-385 are
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`also grounded in this context, and should be stricken for the same reasons.
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`B.
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`This dispute is not one of weight or credibility
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`Apple’s characterization of the instant dispute as one of weight or credibility is a red
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`herring, and false. Cross examination will not cure the impropriety of a technical expert
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`proffering legal conclusions, or insulate the jury from misstatements and misapplications of law.
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`Though Dr. Menascé may offer testimony regarding the state of the art at the time of the
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`invention, the foreseeability of certain equivalents, substantive positions or amendments made
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`during prosecution, and other issues of fact, he is not permitted to opine that Maxell’s doctrine of
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`equivalents theories are legally precluded. For this reason, Apple’s comparison of Dr. Menascé’s
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`“factual analysis” here with the jury verdict in the Maxell v. ZTE litigation is misplaced. There,
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`the jury was not permitted to consider whether the claims were directed to ineligible subject
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`matter, a legal issue. Rather, the jury ruled specifically on the factual inquiry of whether “the
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`claim elements of [claims 1 and 2] were well-understood, routine, and conventional to a person
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`of ordinary skill in the art.” Maxell, Ltd. v. ZTE (USA) Inc., No. 5:16-cv-00179-RWS, Dkt. 228
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`at 8. Dr. Menascé goes well beyond a factual analysis by concluding that prosecution history
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`estoppel precludes any reliance on the doctrine of equivalents.
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`Further, Apple is well aware that technical expert testimony is an improper vehicle to
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`challenge the propriety of Maxell’s doctrine of equivalents opinions. If Apple truly believed
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`these opinions were factual and proper, it would have rested on the testimony, and/or requested
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`partial summary judgment on the issue. Instead, Apple has asked this Court to exclude them,
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`belying any claim that these are not issues of law within the Court’s exclusive province.
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`III. CONCLUSION
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`For the foregoing reasons, Maxell’s Motion (Dkt. 364) should be granted.
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`Case 5:19-cv-00036-RWS Document 432 Filed 07/23/20 Page 9 of 11 PageID #: 23918
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`Dated: July 23, 2020
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`By:
`
`/s/ Jamie B. Beaber
`Geoff Culbertson
`Kelly Tidwell
`Patton, Tidwell & Culbertson, LLP
`2800 Texas Boulevard (75503)
`Post Office Box 5398
`Texarkana, TX 75505-5398
`Telephone: (903) 792-7080
`Facsimile: (903) 792-8233
`gpc@texarkanalaw.com
`kbt@texarkanalaw.com
`
`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`William J. Barrow
`Baldine B. Paul
`Tiffany A. Miller
`Michael L. Lindinger
`Saqib J. Siddiqui
`Bryan C. Nese
`Alison T. Gelsleichter
`Clark S. Bakewell
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006
`Telephone: (202) 263-3000
`Facsimile: (202) 263-3300
`jbeaber@mayerbrown.com
`agrimaldi@mayerbrown.com
`klevy@mayerbrown.com
`jfussell@mayerbrown.com
`wbarrow@mayerbrown.com
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`mlindinger@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`agelsleichter@mayerbrown.com
`cbakewell@mayerbrown.com
`
`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
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`Case 5:19-cv-00036-RWS Document 432 Filed 07/23/20 Page 10 of 11 PageID #: 23919
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`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 432 Filed 07/23/20 Page 11 of 11 PageID #: 23920
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 23rd day of July, 2020, with a copy of this document via
`the Court’s electronic CM/ECF system.
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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