Case 5:19-cv-00036-RWS Document 441 Filed 07/24/20 Page 1 of 21 PageID #: 24263
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`Plaintiff,
`
`vs.
`
`APPLE INC.,
`
`Defendant.
`
`Civil Action No. 5:19-cv-00036-RWS
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`APPLE INC.’S OPPOSITION TO MAXELL, LTD.’S MOTION FOR PARTIAL
`SUMMARY JUDGMENT OF NO INVALIDITY OF U.S. PATENT NO. 8,339,493 IN
`VIEW OF THE SONY MVC-FD83 AND MVC-FD88 CAMERAS
`
`

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`Case 5:19-cv-00036-RWS Document 441 Filed 07/24/20 Page 2 of 21 PageID #: 24264
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`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`II.
`III.
`
`IV.
`V.
`
`VI.
`
`INTRODUCTION ............................................................................................................. 1
`STATEMENT OF ISSUE TO BE DECIDED................................................................... 2
`STATEMENT OF UNDISPUTED FACTS ...................................................................... 2
`A.
`Response To Maxell’s Statement Of Undisputed Facts ........................................ 2
`B.
`Additional Material Undisputed Facts ................................................................... 3
`LEGAL STANDARDS ..................................................................................................... 7
`ARGUMENT ..................................................................................................................... 8
`A.
`The Sony MVC-FD83/88 Were Known And Used In The U.S. Before
`January 11, 2000, The Priority Date of the ’493 Patent ......................................... 8
`Maxell’s Speculation That There Were Different Versions Of The Sony
`MVC-FD83/88 Is Unsupported And Wrong ....................................................... 10
`CONCLUSION ................................................................................................................ 15
`
`B.
`
`
`
`
`
`-i-
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`

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`Case 5:19-cv-00036-RWS Document 441 Filed 07/24/20 Page 3 of 21 PageID #: 24265
`TABLE OF AUTHORITIES
`
`
`Page
`
`
`Cases
`
`ACCO Brands, Inc v. PC Guardian Anti-Theft Prods.,
`592 F. Supp. 2d 1208 (N.D. Cal. 2008) ...................................................................................... 9
`
`Billups-Rothenberg, Inc. v. Associated Reg’l and Univ. Pathologists, Inc.,
`642 F.3d 1031 (Fed. Cir. 2011) .................................................................................................. 7
`
`BroadSoft, Inc. v. CallWave Commc’ns LLC,
`282 F. Supp. 3d 771 (D. Del. 2017) .......................................................................................... 15
`
`Carella v. Starlight Archery,
`804 F.2d 135 (Fed. Cir. 1986) .................................................................................................... 7
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) .................................................................................................................... 7
`
`Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp.,
`635 F.3d 1373 (Fed. Cir. 2011) ................................................................................................ 13
`
`Domain Prot., LLC v. Sea Wasp, LLC,
`426 F. Supp. 3d 355 (E.D. Tex. 2019) .................................................................................. 7, 13
`
`Ductcap Prod. Inc. v. J & S Fabrication Inc.,
`No. 10-CV-00110, 2013 WL 595219 (E.D. Wis. Feb. 15, 2013) ............................................... 8
`
`Duncan Parking Techs., Inc. v. IPS Grp., Inc.,
`914 F.3d 1347 (Fed. Cir. 2019) .................................................................................................. 7
`
`Ferring B.V. v. Barr Labs., Inc.,
`437 F.3d 1181 (Fed. Cir. 2006) ................................................................................................ 11
`
`In re Enhanced Sec. Research, LLC,
`739 F.3d 1347 (Fed. Cir. 2014) .................................................................................................. 9
`
`Med. Instrumentation & Diagnostics Corp. v. Elekta AB,
`344 F.3d 1205 (Fed. Cir. 2003) .................................................................................................. 8
`
`Minnesota Min. & Mfg. Co. v. Chemque, Inc.,
`303 F.3d 1294 (Fed. Cir. 2002) .................................................................................................. 8
`
`Navico Inc. v. Garmin Int’l Inc.,
`No. 2:16-CV-00190-JRG-RSP, 2017 U.S. Dist. LEXIS 139806 (E.D. Tex. July 28, 2017) ... 14
`
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) .................................................................................................. 7
`
`-i-
`
`

`

`Case 5:19-cv-00036-RWS Document 441 Filed 07/24/20 Page 4 of 21 PageID #: 24266
`TABLE OF AUTHORITIES
`cont.
`
`Page
`
`ResQNet.com, Inc. v. Lansa, Inc.,
`382 F. Supp. 2d 424 (S.D.N.Y. 2005) ...................................................................................... 15
`
`Sonos, Inc. v. D&M Holdings Inc.,
`No. 14-cv-1330-WCB, 2017 U.S. Dist. LEXIS 180708 (D. Del. Nov. 1, 2017) ..................... 15
`
`Statutes
`
`35 U.S.C. § 102(a) ...................................................................................................................... 2, 7
`
`Rules
`
`Fed. R. Civ. P. 56(c) ....................................................................................................................... 7
`
`
`
`
`
`
`
`-ii-
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`

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`Case 5:19-cv-00036-RWS Document 441 Filed 07/24/20 Page 5 of 21 PageID #: 24267
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`I.
`
`INTRODUCTION
`
`Maxell’s Motion for Partial Summary Judgment of No Invalidity of U.S. Patent No.
`
`8,339,493 In View of the Sony MVC-FD83 and MVC-FD88 Cameras (D.I. 370, “Motion”)
`
`challenges the prior art status of these products, yet the same Motion admits that these products
`
`were sold in the United States before January 11, 2000, the alleged priority date of the ’493 Patent.
`
`See, e.g., Mot. at 10 (“there were … Sony [MVC-FD83/88] cameras available both before and
`
`after the priority date”); id. at 9 (“a trio of [1999] magazine advertisements … suggest that some
`
`version of the MVC-FD83 and MVC-FD88 cameras were offered for sale”). Substantial
`
`evidence—including sales data, product manuals, marketing documents, and advertisements—
`
`unequivocally confirms that the Sony MVC-FD83 and MVC-FD88 cameras (collectively, the
`
`“MVC-FD83/88”) were known and used in the U.S. before January 2000. On the basis of this
`
`evidence and Maxell’s own admissions, the Motion should be denied.
`
`Conceding the public availability of the Sony MVC-FD83/88 before the ’493 Patent’s
`
`priority date, Maxell’s Motion resorts to a wholly unsupported, red herring argument: it disputes
`
`whether the three physical samples of the Sony MVC-FD83/88 that Apple’s expert examined were
`
`sold before January 2000. Maxell’s argument misses the mark. The prior art at issue is not just
`
`Apple’s three samples—instead, it includes all Sony MVC-FD83/88 products known and used in
`
`the U.S. before January 2000, as their features and functionality are demonstrated by manuals,
`
`product specifications, marketing documents, advertisements, and the three physical samples,
`
`among other evidence.
`
`Moreover, Maxell’s argument is premised on its speculation that there were different
`
`“versions” of the Sony MVC-FD83/88, some of which may have been sold after the ’493 Patent’s
`
`priority date and may have differed materially from products sold before that date. But there is no
`
`evidence whatsoever to support Maxell’s speculation that there were different “versions” of the
`
`
`
`1
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`

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`products, and Maxell cannot identify any material differences among the prior art products. On
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`the contrary, multiple documents dated before January 2000 consistently describe the Sony MVC-
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`FD83/88 as having the same relevant attributes and features—e.g., still image, video, image sensor,
`
`and display resolutions—as the product samples tested by Apple. Accordingly, there is at least a
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`triable issue of material fact as to whether the Sony MVC-FD83/88 products known and used
`
`before January 2000 had the relevant features that Apple relies on to invalidate the asserted claims
`
`of the ’493 Patent. Thus, Maxell’s Motion should be denied.
`
`II.
`
`STATEMENT OF ISSUE TO BE DECIDED
`
`Whether there is a genuine issue of material fact that the Sony MVC-FD83/88 cameras
`
`were known and used in the U.S. before January 11, 2000, the claimed priority date of the ’493
`
`Patent, and therefore constitute prior art to the ’493 Patent under at least 35 U.S.C. § 102(a).
`
`III.
`
`STATEMENT OF UNDISPUTED FACTS
`A.
`
`Response To Maxell’s Statement Of Undisputed Facts
`
`1.
`
`2.
`
`Paragraphs 1, 2, and 8 in Maxell’s statement of facts are undisputed.1
`
`Paragraphs 3 and 5 in Maxell’s statement of facts are disputed with respect to
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`Maxell’s assertion that Apple’s product samples reflected different product “versions.” Apple’s
`
`expert Dr. Alan Bovik analyzed three product samples: one MVC-FD83 camera (APL-
`
`MAXELL_P03, hereinafter “P03”) and two MVC-FD88 cameras (APL-MAXELL_P06,
`
`hereinafter “P06,” and APL-MAXELL_P07, hereinafter “P07”). D.I. 370, Ex. 1 at ¶¶ 112, 120.
`
`P06 and P07 are not different versions of the MVC-FD88. On the contrary, the analysis performed
`
`
`1 Regarding Paragraph 2, Apple contends that the MVC-FD83 and MVC-FD88 camera models
`constitute one elected prior art reference under the Court’s Order Focusing Patent Claims and Prior
`Art to Reduce Costs. See D.I. 44 at 1 n.1 (“closely related work of a single prior artist” “shall
`count as one reference”). The MVC-FD83 and MVC-FD88 were sibling models that were sold in
`the same time period, were often advertised together, and share the same user manual, service
`manual, and marketing documents. See, e.g., Exs. C-H.
`
`
`
`2
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`

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`by Dr. Bovik confirms that they have the same relevant technical characteristics, such as image
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`sensor resolution. Ex. A at ¶¶ 112-119, pp. 70-73.
`
`3.
`
`Paragraph 4 in Maxell’s statement of facts is disputed. Apple made available for
`
`inspection physical copies of the user manual for the Sony MVC-FD83/88 product samples. See
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`Ex. B (2/26/20 Zhou Ltr) (offering for inspection physical exhibit “APL-MAXELL_P0301 Sony
`
`MVC-FD83/88 user manual”).
`
`4.
`
`Paragraph 6 in Maxell’s statement of facts is disputed to the extent Maxell contends
`
`that only the three product samples examined by Apple’s expert constitute prior art. Apple
`
`contends that all Sony MVC-FD83/88 products known or used in the U.S. before January 11, 2000
`
`constitute prior art to the ’493 Patent. See Ex. K (Apple’s 8/14/2019 Invalidity Contentions) at 38
`
`(identifying as prior art “[p]roducts, components, systems, and methods … in public use or on sale
`
`related to the Sony MVCFD83/FD88”).
`
`5.
`
`Apple objects to Paragraph 7 of Maxell’s statement of facts to the extent it attempts
`
`to obfuscate the Sony entity that produced documents in this case. Apple subpoenaed Sony
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`Corporation of America (“SCA”), a U.S. corporation based in New York. D.I. 370, Ex. 2.
`
`6.
`
`Paragraph 9 in Maxell’s statement of facts is disputed. Ms. West’s Declaration
`
`includes descriptions of the documents produced by SCA. See D.I. 370, Ex. 6 at ¶¶ 4-5.
`
`B.
`
`1.
`
`Additional Material Undisputed Facts
`
`Apple subpoenaed SCA, a U.S. corporation based in New York, for “[d]ocuments
`
`sufficient to show the sale of the [Sony MVC-FD83/88] by Sony in the United States prior to
`
`January 11, 2000.” D.I. 370, Ex. 2. at RFP Nos. 3 and 4.
`
`2.
`
`
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`3
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`3.
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`SCA provided a declaration from a knowledgeable employee attesting that Sony
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`Electronics Inc. is “a wholly owned subsidiary of SCA responsible for Sony’s electronics business
`
`in the U.S.” D.I. 370, Ex. 6 at ¶ 2. The declaration further attests that the documents produced by
`
`SCA were “created at or near the time of the information recorded in the documents.” Id. at ¶ 5(b).
`
`4.
`
`The Sony MVC-FD83/88 User Manual includes a copyright date of 1999 on its
`
`cover. Ex. C at APL-MAXELL_00716451. It also includes a section titled “For the Customers in
`
`the United States and Canada.” Id. at APL-MAXELL_00716454.
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`5.
`
`The Sony MVC-FD83/88 Service Manual was first released in May 1999. D.I. 370,
`
`Ex. 4 at SCA0004492 (showing date of “1999.05” as “Official Release”); Ex. D (1999 version) at
`
`APL-MAXELL_01147532. It was updated in October 2001 to include a two-page “Supplement-
`
`1.” D.I. 370, Ex. 4 at SCA0004490-92. The supplement explains that replacement screens for
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`MVC-FD83 (“LCD Type C”) and MVC-FD88 (“LCD Type S”) can now “be used for both MVC-
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`FD83 and MVC-FD88” for repair. Id. at SCA0004490. No other information was added in the
`
`supplement. See id.
`
`6.
`
`The Sony MVC-FD83/88 Service Manual indicates that the products sold in
`
`different countries, including the U.S., share the same technical characteristics and components.
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`D.I. 370, Ex. 4 at SCA0004377-78. The only exception is that products sold in Japan are
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`designated with different model numbers (MVC-FD83K and MVC-FD88K, respectively) but “are
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`the same as MVC-FD83/FD88 except accessories and packing materials.” Id. at SCA0004378.
`
`7.
`
`A June 13, 1999 edition of the newspaper the Daily Sentinel (Grand Junction,
`
`Colorado) advertised that Circuit City offered the MVC-FD83 on sale for $699.99 and the MVC-
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`4
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`FD88 on sale for $899.99. Ex. E. The advertisement describes the MVC-FD88 as having a “1280
`
`x 960 Color Resolution.” Id.
`
`8.
`
`A November 16, 1999 edition of PC Magazine advertised the MVC-FD83 for
`
`$699.95 and the MVC-FD88 for $899.95, both available through Warehouse.com, an online
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`retailer of computer products. Ex. F at APL-MAXELL_01463585, -601.
`
`9.
`
`An October 1999 edition of Popular Photography magazine contained over a dozen
`
`advertisements from various U.S. retailers for the MVC-FD83/88, including advertisements from:
`
`a. Abe’s of Maine, a camera and electronics store in Brooklyn, NY. Ex. G at APL-
`MAXELL_01509142. The advertisement describes the MVC-FD88 as having “1.3
`Million Pixels.” Id.
`
`b. Beach Camera, a store in Green Brook, NY. Id. at -9143. The advertisement
`describes the MVC-FD88 as having “1.3 Million Pixels.” Id.
`
`c. Marine Park, a camera and video store in Brooklyn, NY. Id. at -9144. The
`advertisement describes the MVC-FD88 as having “1.3 Million Pixels.” Id.
`
`d. CameraWorld.com. Id. at -9145.
`
`e. Family Photo & Video. Id. at -9147.
`
`f. Camera Zone, a store in Brooklyn, NY. Id. at -9148 to -9149. The advertisement
`describes the MVC-FD88 as having a “1280 x 960 resolution” and “1.3 Megapixel
`CCD.” Id. at -9149.
`
`g. B&H Photo Video, a store in New York, NY. Id. at -9150, -9151.
`
`h. CCI Camera City Inc., a store in Brooklyn, NY. Id. at -9152.
`
`i. The Photo Specialists, a store in Brooklyn, NY. Id. at -9154, -9155.
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`j. TriState Camera & Video, a store in New York, NY. Id. at -9156. The
`advertisement describes the MVC-FD88 as having a “1280 x 960” resolution. Id.
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`k. Smile Photo. Id. at -9157.
`
`l. Focus Camera & Video, a store in Brooklyn, NY. Id. at -9158. The advertisement
`describes the MVC-FD88 as having a “1280 x 960” resolution. Id.
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`5
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`m. Adorama, a camera and electronics store. Id. at -9159.
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`The Sony MVC-FD83/88 User Manual, the 1999 version of the Sony MVC-
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`10.
`
`FD83/88 Service Manual, the 2001 version of the Sony MVC-FD83/88 Service Manual, and other
`
`Sony documents all describe the MVC-FD88 as having a maximum still image resolution of “1280
`
`x 960” and/or an image sensor with approximately 1.3 million pixels, and the MVC-FD83 as
`
`having a non-interpolated maximum still image resolution of “1024 x 768” and/or an image sensor
`
`with approximately 850,000 pixels.2 See Ex. C at APL-MAXELL_00716484, -486, -504; Ex. D
`
`at APL-MAXELL_01147545, -546, -550; D.I. 370, Ex. 4 at SCA0004390, -91, -95; D.I. 370, Ex.
`
`11 at SCA0003619, -20; Ex. H at SCA0003618.
`
`11.
`
`The Sony MVC-FD83/88 User Manual, the 1999 version of the Sony MVC-
`
`FD83/88 Service Manual, the 2001 version of the Sony MVC-FD83/88 Service Manual, and other
`
`Sony documents all describe the MVC-FD83/88 as capable of capturing videos at resolutions of
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`“320 x 240” and “160 x 112,” and having a display screen resolution of approximately 84,000
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`pixels. See Ex. C at APL-MAXELL_00716468, -484, -505, -515; Ex. D at APL-
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`MAXELL_01147532, -541, -545, -550; D.I. 370, Ex. 4 at SCA0004377, -86, -90, -95; D.I. 370,
`
`Ex. 11.
`
`12.
`
`Dr. Bovik tested the operation of the P03 sample (MVC-FD83) and P06 sample
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`(MVC-FD88) products. Ex. A at ¶ 120. Consistent with the specifications in Sony’s manuals and
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`documents, Dr. Bovik confirmed that the maximum still image resolution of P03 and P06 are 1024
`
`x 768 (non-interpolated) and 1280 x 960, respectively. Id. at pp. 70-73. Dr. Bovik also confirmed
`
`
`2 The MVC-FD83 camera allows for image interpolation to provide an image resolution higher
`than the resolution of its image sensor. See Ex. C at APL-MAXELL_00716486 to -487. Thus,
`some documents describe a higher image resolution for this camera model. The MVC-FD88
`camera does not allow for interpolation. See id.
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`6
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`that the P03 and P06 can each capture videos having resolutions of 320 x 240 and 160 x 112. Id.
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`at pp. 78-81.
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`13.
`
`Under Dr. Bovik’s direction, Sage Analytical Lab, LLC (“Sage”) measured the
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`image sensor and display screen resolutions of the P07 sample (MVC-FD88) product. Ex. A at ¶¶
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`113-117. Dr. Bovik confirmed that the P07’s image sensor resolution is consistent with a
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`resolution of 1280 x 960 and its display screen resolution is consistent with a resolution of
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`approximately 84,000 pixels. Id. at ¶¶ 99, 100, 117.
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`IV.
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`LEGAL STANDARDS
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`Summary judgment is proper only when there is “no genuine issue as to any material fact
`
`and the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c); Celotex
`
`Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). In ruling on a motion for summary judgment, the
`
`court must draw “all reasonable inferences in favor of the non-movant.” Billups-Rothenberg, Inc.
`
`v. Associated Reg’l and Univ. Pathologists, Inc., 642 F.3d 1031, 1036 (Fed. Cir. 2011); Domain
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`Prot., LLC v. Sea Wasp, LLC, 426 F. Supp. 3d 355, 370 (E.D. Tex. 2019) (citation omitted).
`
`Under pre-AIA 35 U.S.C. § 102(a), a patent is invalid if the claimed invention was “known
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`or used by others in this country … before the invention thereof by the applicant for a patent.”3
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`This requirement is met whenever the relevant “knowledge or use … is accessible to the public.”
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`Carella v. Starlight Archery, 804 F.2d 135, 139 (Fed. Cir. 1986). For example, public sale, public
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`disclosure, and public use all qualify as “knowledge or use” under pre-AIA § 102(a). See, e.g.,
`
`Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1305 (Fed. Cir. 2006) (“instruction sheet[s]”
`
`distributed to potential users of prior art system sufficient to corroborate prior knowledge);
`
`
`3 Pre-AIA 35 U.S.C. § 102 controls because the ’493 Patent was filed before the effective date of
`the America Invents Act (AIA). See ’493 Patent at Cover; Duncan Parking Techs., Inc. v. IPS
`Grp., Inc., 914 F.3d 1347, 1357 n.3 (Fed. Cir. 2019) (Pre-AIA § 102 “applies to patents with
`effective filing dates before March 16, 2013”).
`
`
`
`7
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`

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`Case 5:19-cv-00036-RWS Document 441 Filed 07/24/20 Page 12 of 21 PageID #: 24274
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`Minnesota Min. & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294 (Fed. Cir. 2002) (providing samples
`
`to third parties constitutes public use); Ductcap Prod. Inc. v. J & S Fabrication Inc., No. 10-CV-
`
`00110, 2013 WL 595219, at *5-6 (E.D. Wis. Feb. 15, 2013) (third party sales records are sufficient
`
`to show public use). The determination of whether a product constitutes prior art under § 102(a)
`
`is a question of fact. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
`
`1222 (Fed. Cir. 2003) (reversing summary judgment of no invalidity because genuine issues of
`
`material fact under § 102 existed).
`
`V.
`
`ARGUMENT
`A.
`
`The Sony MVC-FD83/88 Were Known And Used In The U.S. Before
`January 11, 2000, The Priority Date of the ’493 Patent
`
`The evidence unequivocally supports—and critically, Maxell concedes—that the Sony
`
`MVC-FD83/88 were known and used in the U.S. before the January 11, 2000 alleged priority date
`
`of the ’493 Patent. See Mot. at 9 (“a trio of [1999] magazine advertisements … suggest that some
`
`version of the MVC-FD83 and MVC-FD88 cameras were offered for sale”); 10 (“there were …
`
`Sony [MVC-FD83/88] cameras available both before and after the priority date”).
`
` D.I. 370, Ex. 5. Maxell
`
`argues that these records do not prove that the sales took place in the U.S. Mot. at 8. But Apple
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`subpoenaed SCA, a U.S. corporation, for sales data “in the United States prior to January 11,
`
`2000.” D.I. 370, Ex. 2.4 In response, SCA produced sales data for Sony Electronics Inc., “a wholly
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`owned subsidiary of SCA responsible for Sony’s electronics business in the U.S.” D.I. 370, Ex.
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`6 at ¶ 2. Thus, there can be no dispute that the Sony MVC-FD83/88 were sold—and thus known
`
`and used—in the U.S. before January 2000. See, e.g., Ductcap Prod. Inc., 2013 WL 595219, at
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`4 All emphasis added unless otherwise noted.
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`
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`8
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`Case 5:19-cv-00036-RWS Document 441 Filed 07/24/20 Page 13 of 21 PageID #: 24275
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`*5-6 (granting defendant’s motion for summary judgment and finding third party business records
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`of selling prior art sufficient to establish public use under § 102(a)).
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`Second, documents produced by SCA corroborate that the Sony MVC-FD83/88 were
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`known and used in the U.S. and show that user and service manuals were copyrighted in 1999.
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`For example, the Sony MVC-FD83/88 User Manual bears a copyright date of 1999 and includes
`
`a section “For the Customers in the United States and Canada.” Ex. C at APL-
`
`MAXELL_00716451, -6454. Similarly, the Sony MVC-FD83/88 Service Manual was first
`
`released in May 1999 and states that the products were intended for U.S. customers. D.I. 370, Ex.
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`4 at SCA00004378 (listing “US” as a product “Destination”), -492 (showing date of “1999.05” for
`
`“Official Release”); see also D.I. 370, Ex. 6 at ¶ 5(b) (declaration attesting that documents
`
`produced by SCA were “created at or near the time of the information recorded in the documents”).
`
`Third, advertisements from over a dozen U.S. retailers confirm that the Sony MVC-
`
`FD83/88 were offered for sale in the U.S. before January 2000, including: (1) a June 1999
`
`newspaper in Colorado advertising the Sony MVC-FD83/88 on sale at a Circuit City store (Ex. E),
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`(2) an October 1999 edition of Popular Photography magazine containing over a dozen
`
`advertisements from various U.S. retailers (Ex. G), and (3) a November 1999 edition of PC
`
`Magazine advertising the Sony MVC-FD83/88 on sale at an online U.S. retailer (Ex. F). This
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`evidence further corroborates that the products were on sale in the U.S. before the ’493 Patent’s
`
`priority date. See In re Enhanced Sec. Research, LLC, 739 F.3d 1347, 1354-1355 (Fed. Cir. 2014)
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`(finding that “evidence of [prior art’s] advertisements” corroborate the date of prior art); ACCO
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`Brands, Inc v. PC Guardian Anti-Theft Prods., 592 F. Supp. 2d 1208, 1219 (N.D. Cal. 2008)
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`(finding that a magazine advertisement describing the prior art “tends to prove that the [prior art]
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`was on sale before the priority date”).
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`9
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`Case 5:19-cv-00036-RWS Document 441 Filed 07/24/20 Page 14 of 21 PageID #: 24276
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`Overwhelming evidence supports that the Sony MVC-FD83/88 were known and used in
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`the U.S. before January 2000, as Maxell concedes in its Motion.
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`B. Maxell’s Speculation That There Were Different Versions Of The Sony
`MVC-FD83/88 Is Unsupported And Wrong
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`Conceding that the Sony MVCFD83/88 cameras constitute prior art, Maxell’s Motion
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`attempts to limit Apple’s prior art reference to the three physical samples examined by Apple’s
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`expert and disputes whether those specific samples were sold before January 11, 2000. Mot. at 1,
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`4-10. To support this argument, Maxell speculates that there were different “versions” of the Sony
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`MVC-FD83/88, and argues that the “versions” examined by Apple’s expert do not reflect the
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`features and attributes of the products sold before the ’493 Patent’s priority date. See id. But
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`Maxell fails to identify any evidence stating or even suggesting that there were multiple versions
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`of the Sony MVC-FD83/88, nor any evidence showing material differences among the alleged
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`“versions.” Maxell’s unsupported speculations cannot serve as a sufficient basis for summary
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`judgment.
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`First, Maxell misrepresents Apple’s prior art. Apple’s invalidity defense is not limited to
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`the three product samples its expert examined. Rather, the asserted prior art includes all Sony
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`MVC-FD83/88 products known and used in the U.S. before January 2000, as their features and
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`functionality are demonstrated by manuals, product specifications, marketing documents,
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`advertisements, physical samples (including Apple’s), and other evidence. In other words, Apple’s
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`product samples are just a part of the evidence that show how the Sony MVC-FD83/88 products
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`operated.
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`Second, Maxell asks the Court to draw an unreasonable inference in its favor to find that
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`there were different “versions” of the Sony MVC-FD83/88. Mot. at 4-10. Maxell argues that
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`because the product labels on the P06 and P07 samples show different numbers and manufacturing
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`10
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`Case 5:19-cv-00036-RWS Document 441 Filed 07/24/20 Page 15 of 21 PageID #: 24277
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`locations, they must be different “versions.” Id. at 5-6. This is contrary to the proper legal standard
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`requiring all reasonable inferences to be drawn in Apple’s favor on this Motion. Moreover,
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`Maxell’s “[c]onclusory allegations and attorney arguments” constitute pure speculation
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`insufficient to defeat a summary judgment motion—let alone support one. Ferring B.V. v. Barr
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`Labs., Inc., 437 F.3d 1181, 1193 (Fed. Cir. 2006) (unsupported “attorney arguments are
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`insufficient to overcome a motion for summary judgment”).
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`Indeed, Maxell’s Motion does not even cite support from its own experts. Maxell first
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`presented its argument that there were different product “versions” in the report of its alleged
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`expert Robert Stoll. Ex. I at ¶¶ 199-214. Mr. Stoll is a practicing attorney (id. at ¶ 2) who admitted
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`during deposition to have no expertise regarding Sony’s or the electronic industry’s practices for
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`labeling products. Ex. J (Stoll Dep. Tr.) at 169:6-170:18. Apparently having recognized that Mr.
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`Stoll is wholly unqualified to offer opinions on the Sony MVC-FD83/88’s product labels, Maxell
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`chose not to cite Mr. Stoll’s report in its Motion but to continue advancing the same baseless,
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`speculative arguments. But there is no evidence in the record that the numbers on the product
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`labels describe product versions, and the record evidence refutes Maxell’s claim that there were
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`different versions of products sold in different countries. D.I. 370, Ex. 4 at SCA0004378. None
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`of the Sony documents—including the products’ user and service manuals—or public
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`advertisements indicate that there were different product “versions.” See, e.g., Ex. C; Ex. D; D.I.
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`370, Ex. 4. Thus, Maxell’s speculative arguments are unsupported by the record evidence.
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`Further, Maxell argues that because there were two versions of the MVC-FD83/88 Service
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`Manual, the first published in 1999 and a revision published in 2001, the products described in
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`those manuals must be different. Mot. at 10. This argument is again refuted by the very evidence
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`Maxell cites. As expressly stated in the document itself, the Service Manual was revised in 2001
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`11
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`Case 5:19-cv-00036-RWS Document 441 Filed 07/24/20 Page 16 of 21 PageID #: 24278
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`to add a two-page supplement explaining that replacement screens were interchangeable between
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`the MVC-FD83 and MVC-FD88 models during repair. D.I. 370, Ex. 4 at SCA0004490 to -492.
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`Indeed, a comparison between the two versions shows that the design and specifications for the
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`MVC-FD83/88 products are identical. Compare D.I. 370, Ex. 4 at SCA0004403 to -4409 (block
`
`diagrams) and SCA0004468 to -4485 (parts list) with Ex. D at APL-MAXELL_01147558 to -
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`47564 (block diagrams) and APL-MAXELL_01147623 to -47640 (parts list).
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`Similarly, Maxell cites a typographical error in Sony’s “Digital Image Training Guide”—
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`which erroneously lists a “1280 x 768” resolution but then lists the correct “1280 x 960” resolution
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`in the same paragraph—and speculates that different versions of the MVC-FD88 model must exist.
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`Mot. at 9-10; D.I. 370, Ex. 11 at SCA0003620 (“SXGA High Resolution (1280 x 960)”). But the
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`MVC-FD88 does not a support a capture resolution of 1280 x 768, and as discussed below, its
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`manuals, all other Sony documents, and advertisements consistently confirm that the correct
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`maximum resolution is 1280 x 960.
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`Third, even if different product “versions” existed, Maxell fails to identify any differences
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`among the alleged “versions” that would have any impact on Apple’s invalidity defense. To the
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`contrary, all evidence confirms that the product samples Apple’s expert tested accurately reflect
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`the relevant features and functionality of the MVC-FD83/88 sold before the ’493 Patent’s alleged
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`priority date. For example, Dr. Bovik verified that the P07 product sample’s image sensor and
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`image processing chips match the components specified in the circuit block diagram of Sony’s
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`1999 service manual. Ex. A at pp. 57-59, 61-63.
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`Indeed, all relevant technical features of the product samples that Apple’s expert Dr. Bovik
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`measured and tested—including their still image capture, video capture, image sensor, and preview
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`screen resolutions—match the specifications described in Sony’s documents and public
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`12
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`Case 5:19-cv-00036-RWS Document 441 Filed 07/24/20 Page 17 of 21 PageID #: 24279
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`advertisements predating January 2000. For example, multiple evidentiary sources confirm that
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`the MVC-FD88 model has a maximum still image resolution of 1280 x 960 or approximately 1.3
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`million pixels: (1) Sony’s 1999 service manual, (2) Sony’s 1999 user manual, (3) other Sony
`
`documents, and (4) dozens of advertisements from 1999.5 Similarly, multiple sources also
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`consistently describe the MVC-FD88 as capable of capturing video at resolutions of 320 x 240 and
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`160 x 112, and having a display resolution of approximately 84,000 pixels.6 These are the same
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`resolutions confirmed through Dr. Bovik’s examination of the product samples. Ex. A at ¶¶ 113-
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`117, pp. 68-73, pp. 75-81.
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`Fourth, Maxell’s argument that Apple’s product samples are not probative of the features
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`of the MVC-FD83/88 sold before January 2000, if anything, goes to the weight of the evidence
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`and is not sufficient to dismiss Apple’s invalidity defense on summary judgment. See Crown
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`Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635 F.3d 1373, 1384 (Fed. Cir.
`
`2011) (“Where there is a material dispute as to the credibility and weight … summary judgment
`
`is usually inappropriate.”); Domain Prot., 426 F. Supp. 3d at 370 (in ruling on a motion for
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`summary judgment, “a court must draw all reasonable inferences in favor of the nonmoving party,
`
`and avoid credibility determinations and weighing of the evidence”).
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`For example, Maxell argues that Apple has not disclosed how the P03, P06, and P07
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`product samples were purchased or whether they were modified or updated. Mot. at 5, 7. But the
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`5 Ex. D (Sony MVC-FD83/88 Service Manual) at APL-MAXELL_01147545, -