Case 5:19-cv-00036-RWS Document 440 Filed 07/24/20 Page 1 of 8 PageID #: 24250
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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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`Plaintiff
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`Civil Action NO. 5:19-cv-00036-RWS
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`v.
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`APPLE INC.,
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`JURY TRIAL DEMANDED
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`Defendant.
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`APPLE INC.’S REPLY IN SUPPORT ITS MOTION TO EXCLUDE
`THE TESTIMONY OF ROBERT L. STOLL (D.I. 357)
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`Case 5:19-cv-00036-RWS Document 440 Filed 07/24/20 Page 2 of 8 PageID #: 24251
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`Maxell’s opposition confirms that Mr. Stoll is not qualified to offer opinions about the
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`public accessibility or contents of the Abowd, Cyberguide, NavTalk, or Sony Cameras prior art
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`references, and his opinions should be excluded. Maxell admits that Mr. Stoll has no expertise in
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`interpreting the types of documents on which he bases his opinions (e.g., library records, sale
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`records, mailing labels, prior art). D.I. 397 at 13 (acknowledge that “he does not purport to be an
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`expert” in these documents). And his USPTO experience does not replace substantive expertise
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`in the relevant fields of library science, navigation devices, and camera technologies. Just as a
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`patent examiner is not de facto qualified to explain the terminology of engineering documents as
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`an expert in litigation based on her prosecution experience, Mr. Stoll is not qualified to offer
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`expert testimony on library records, sales records, mailing labels, or the prior art simply because
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`he held various USPTO positions or because these types of documents might be reviewed in
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`prosecution. Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362 (Fed. Cir. 2008).
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`Despite his undisputed lack of expertise, Maxell claims Mr. Stoll will opine on “what
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`Apple’s experts [allegedly] should have done (but failed to do) to meet their obligations for
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`public accessibility according to USPTO practices and procedures.” D.I. 397 at 8. He purports
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`to explain the “sufficiency (or lack thereof)” of Apple’s evidence as it would be perceived by the
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`USPTO. Id. at 13. But this is not a proceeding before the USPTO. Nor is it a case about
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`USPTO procedures. Mr. Stoll’s purported opinions about USPTO practices relate to legal
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`standards for determining public accessibility that are not the same as this Court’s, and are
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`therefore irrelevant and inappropriate in this context. D.I. 357 at 9; Ex. 4, Stoll Tr. 126:18-
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`127:1, 168:19-169:5 (“I believe they are similar, but I’m not sure they are identical”); D.I. 397 at
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`8 (clear and convincing in this litigation); In re Epstein, 32 F.3d 1559, 1563 (Fed. Cir. 1994)
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`(preponderance of the evidence to prove public accessibility before USPTO). Even if Apple
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`1
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`Case 5:19-cv-00036-RWS Document 440 Filed 07/24/20 Page 3 of 8 PageID #: 24252
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`were to cross-examine Mr. Stoll and show that Apple had satisfied USPTO practices, it would be
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`the wrong legal standard for this Court. Such testimony would serve only to confuse the jury.
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`That Mr. Stoll seeks to usurp the jury by applying the law to determine the “sufficiency”
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`of Apple’s evidence—in a hypothetical USPTO proceeding based on inapplicable legal
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`standards—more than justifies excluding his opinions about the prior art status of Abowd,
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`Cyberguide, NavTalk, and Sony Cameras.1 D.I. 357 at 10; Estate of Sowell v. United States, 198
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`F.3d 169, 171-72 (5th Cir. 1999) (excluding attorney testimony applying the law to determine
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`“what a hypothetical estate executor, faced with the identical facts” should have acted). Further
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`reasons to exclude his opinions about these references are described below.
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`I.
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`Mr. Stoll Is Unqualified To Opine On Whether Abowd Was Publicly Accessible
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`Maxell admits that Mr. Stoll does not have any “specific credentials in the field of library
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`science” (D.I. 397 at 9), but purports that his testimony is nonetheless admissible because Mr.
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`Stoll will testify on the sufficiency of Apple’s evidence based on his “experience performing
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`similar analyses at the USPTO.” Id. at 9-10. But how the USPTO would analyze public
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`accessibility is not an issue in this case. Moreover, Mr. Stoll has already attempted to mislead
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`the Court with his lay testimony, alleging that “Do Not Circulate” means Abowd was kept
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`hidden from the public. D.I. 382 at 7-8. An expert with knowledge of library circulation rules
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`would know that language merely denotes materials that cannot be take home from the library.
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`Ex. 5. Library records do not “speak for themselves,” but instead require someone with subject
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`matter expertise to help guide the jury. D.I. 357 at 9-10. Mr. Stoll has no such expertise, and his
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`1 Maxell concedes that testimony about patent law principles, claim construction, inequitable
`conduct, and undisclosed opinions about prosecution are improper. D.I. 357 at 5-8; D.I. 397 at 7.
`Maxell also is unable to genuinely dispute that Mr. Stoll’s opinions about third-party IPRs are
`improper, instead resorting to trying to draw legally incorrect parallels to Apple’s experts’
`technical analyses, including whether their art had been considered by the USPTO. D.I. 397 at 7.
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`2
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`Case 5:19-cv-00036-RWS Document 440 Filed 07/24/20 Page 4 of 8 PageID #: 24253
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`lay testimony on the public accessibility of Abowd must be excluded.
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`II. Mr. Stoll Is Unqualified To Opine On Cyberguide’s Public Availability
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`Experts who opine on the functions and components of a prior art device must have
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`expertise in the relevant scientific field. Sundance, 550 F.3d at 1364. Yet Maxell claims that
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`Mr. Stoll will use “his USPTO expertise to interpret specific language in Abowd” and opine on
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`“features,” “purposes,” and “components” of the Cyberguide prior art. D.I. 397 at 10-11.
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`Maxell’s claim that Mr. Stoll’s opinions are not “based on technical evidence” is contradicted by
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`his report, testimony, and Maxell’s opposition. D.I. 357 at 11. Maxell suggests, for example,
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`that Mr. Stoll will claim, based on his reading of the prior art, a prototype was “undeveloped
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`‘proof of concept’” and that a smiley face was a placeholder for later development. D.I. 397 at
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`11. To determine if a prototype is “undeveloped” requires an understanding of what features a
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`skilled artisan would have considered sufficient for functioning. And technical expertise is
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`required to explain the stage of development of a prior art’s user interface. The Federal Circuit
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`does not permit unqualified lawyers to testify about the scope of public use and whether it was
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`enabling to avoid misleading “the jury to seemingly sound conclusions without ever providing a
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`well-grounded factual basis in the pertinent art.” Sundance, 550 F.3d at 1365 & n.8.
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`III. Mr. Stoll’s Testimony About NavTalk’s Public Use Should Be Excluded
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`Mr. Stoll’s opinions on the sufficiency of evidence showing that NavTalk and its manual
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`were publicly accessible should be excluded for similar reasons. Maxell admits that Mr. Stoll is
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`not an expert in electronic devices. D.I. 397 at 11. His efforts to instruct the jury on the part
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`numbers for the NavTalk device, manual, and packaging in prior art user manuals from the
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`1990s constitutes technical testimony for which Mr. Stoll has no expertise. Ex. 4, Stoll Tr.
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`140:6-141:3 (
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`).
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`And Maxell admits that Mr. Stoll has no training to review sale records and bill of materials.
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`3
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`Case 5:19-cv-00036-RWS Document 440 Filed 07/24/20 Page 5 of 8 PageID #: 24254
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`D.I. 397 at 11. If, as Mr. Stoll claims, these are plain English documents that do not require
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`expertise to understand, then his testimony “interpret[ing] documents which are clear on their
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`face” is unhelpful for the jury. Ningbo Bonny Decorative Material Co. v. E. Sys., Inc., No. 17-
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`114, 2020 WL 1333164, at *5 (N.D. Miss. Mar. 23, 2020) (excluding testimony about invoices
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`that “speak for themselves”); D.I. 357 at 9-10. Mr. Stoll further admits that his reading of
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`Garmin’s declaration and deposition is based on his experiences as a lawyer. D.I. 357 at 12
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`(acknowledge that patent examiners are not trained to read depositions). Fifth Circuit courts
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`require, however, “that a proffered expert bring to the jury more than the lawyers can offer in
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`argument.” Robroy Indus.-Texas, LLC v. Thomas & Betts Corp., No. 15-512-WCB, 2017 WL
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`1319553, at *10 (E.D. Tex. Apr. 10, 2017). Contrary to Maxell’s claim, Robroy stands for more
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`than the narrow proposition that “one cannot become an expert by simply reading deposition[s]”
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`(D.I. 397 at 12), but “[m]ore generally” that an expert cannot simply read transcripts that a jury
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`can understand for themselves. Robroy, 2017 WL 1319553, at *9.
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`Mr. Stoll disclaims subject matter knowledge. The Court should therefore exclude his
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`opinion because he is either offering legal analyses as a lawyer or offering lay testimony as
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`someone who lets the documents speak for themselves, either of which is improper.
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`IV. Mr. Stoll’s Testimony About Sony Cameras’ Public Sale Should Be Excluded
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`Mr. Stoll’s testimony about Sony Cameras should be excluded for two reasons. First, Mr.
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`Stoll testified that the USPTO does not review actual prior art devices and that his comparisons
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`of the cameras in this case is based on his legal training to analyze “infringement type of issues.”
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`D.I. 357 at 13. To the extent a jury needs guidance on labels and UL stickers to determine if two
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`cameras are the same model, only an expert with knowledge of cameras can offer that type of
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`infringement analysis. See Sundance, 550 F.3d at 1363. Claiming that no expertise is needed,
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`Mr. Stoll alleges the camera markings “speak for themselves” and that “[i]t’s clear that there are
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`differences.” D.I. 357 at 13.2 Again, courts do not permit a non-percipient fact witness to parade
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`as an expert and testify about plain English documents that speaks for themselves. Id.
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`Second, Maxell baldly claims, with no support whatsoever, that Mr. Stoll does not need
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`any expertise in any of the underlying documents to conclude the Sony Cameras were not on
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`sale, e.g., magazine labels, training guides, sales records, but can instead use his knowledge of
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`USPTO practice. D.I. 397 at 13. Experience before the USPTO, however, does not qualify you
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`to provide expert testimony in litigation about the substance and disclosure of documents that
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`might be submitted in prosecution. Sundance, 550 F.3d at 1362. The flaw in Maxell’s approach
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`is exemplified by Mr. Stoll’s testimony on the dates on a magazine label. D.I. 357 at 13; Ex. 1,
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`Stoll Report ¶¶ 215-216. Mr. Stoll admits that he does not know what dates are routinely
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`included on a mailing label. Ex. 4, Stoll Tr. 173:19-174:8. He insists that it is Apple’s duty to
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`inform him of the same. Id. But it is not Apple’s role to educate Mr. Stoll on what an expert in
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`the field would immediately know about structure, scope, and meaning of a magazine’s label.
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`V. Mr. Stoll’s Refusal To Disclose His Methodology Justifies Exclusion
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`Confirming the legal nature of his testimony, Mr. Stoll cannot explain his methods on the
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`basis of attorney-client privilege. D.I. 397 at 15. Mr. Stoll does not base his opinions solely on
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`the MPEP, but also on his experience as a lawyer applying his legal training to interpret
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`depositions and analyze “infringement type of issues.” D.I. 357 at 12-13.
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`2 Maxell’s claims that Mr. Stoll has “familiarity” with counterfeits (D.I. 397 at 13-14) is a red
`herring, as Mr. Stoll acknowledges he is not an expert in the subject or labeling of electronic
`devices. D.I. 357 at 13. This case does not involve counterfeits and Mr. Stoll does not claim to
`have applied any expertise in the same, as opposed to his layperson reading of the labels.
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` D.I. 357 at 14-15.
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`5
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`Case 5:19-cv-00036-RWS Document 440 Filed 07/24/20 Page 7 of 8 PageID #: 24256
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`July 22, 2020
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`/s/ Luann L. Simmons
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`Luann L. Simmons (Pro Hac Vice)
`lsimmons@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center
`28th Floor
`San Francisco, CA 94111
`Telephone: 415-984-8700
`Facsimile: 415-984-8701
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`Xin-Yi Zhou (Pro Hac Vice)
`vzhou@omm.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
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`Marc J. Pensabene (Pro Hac Vice)
`mpensabene@omm.com
`Laura Bayne Gore (Pro Hac Vice)
`lbayne@omm.com
`O’MELVENY & MYERS LLP
`Times Square Tower, 7 Times Square
`New York, NY 10036
`Telephone: 212-326-2000
`Facsimile: 212-326-2061
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`Melissa R. Smith (TX #24001351)
`melissa@gilliamsmithlaw.com
`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
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`Attorneys for Defendant Apple Inc.
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`6
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`Case 5:19-cv-00036-RWS Document 440 Filed 07/24/20 Page 8 of 8 PageID #: 24257
`Case 5:19-cv-OOO36-RWS Document 440 Filed 07/24/20 Page 8 of 8 PageID #: 24257
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this docmnent via the Coufl's
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`CM/ECF system per Local Rule CV—5(a)(3) on July 22. 2020.
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`/s/ Melissa R. Smith
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`Melissa R. Smith
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