Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 1 of 21 PageID #: 24841
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`
`
`
`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 BRIEF IN OPPOSITION TO MAXELL, LTD.’S MOTION FOR
`PARTIAL SUMMARY JUDGMENT OF NO INVALIDITY OF U.S. PATENT NOS.
`6,748,317, 6,580,999, AND 6,430,498 IN VIEW OF ABOWD AND CYBERGUIDE
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`

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`Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 2 of 21 PageID #: 24842
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`TABLE OF CONTENTS
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`Page
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`STATEMENT OF ISSUE TO BE DECIDED................................................................... 2
`STATEMENT OF UNDISPUTED FACTS ...................................................................... 2
`A.
`Response To Plaintiff’s Statement Of Undisputed Facts ....................................... 2
`B.
`Additional Material Facts ...................................................................................... 3
`Facts About The Abowd Publication ..................................................................... 3
`Facts About Cyberguide ........................................................................................ 5
`Facts About Fact Witnesses And Apple’s Expert Witnesses ................................. 6
`Facts About Maxell’s Expert Robert Stoll. ............................................................ 6
`LEGAL STANDARDS ..................................................................................................... 7
`ARGUMENT ..................................................................................................................... 7
`Abowd Was Publicly Available By October 1997 And Thus Qualifies As
`A.
`A “Printed Publication” Under § 102 .................................................................... 7
`Library Records Show That Abowd Was Catalogued And Publicly
`1.
`Accessible By October 1997 ...................................................................... 7
`Maxell’s Arguments Rely On Impermissible Speculation Of Mr.
`Stoll ............................................................................................................ 8
`Cyberguide Was Ready For Patenting And In Public Use Prior To The
`Publication Of Abowd On September 23, 1996 .................................................. 11
`Abowd Discloses That Cyberguide Was Ready For Patenting And
`1.
`Used By The Public By September 23, 1996 .......................................... 11
`Maxell’s Arguments Rely On Flawed Legal Standards And
`Irrelevant Testimony Of Its Unqualified Expert Mr. Stoll ...................... 12
`CONCLUSION ................................................................................................................ 15
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`2.
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`2.
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`
`I.
`II.
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`III.
`IV.
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`V.
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`
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`B.
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`-i-
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`Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 3 of 21 PageID #: 24843
`TABLE OF AUTHORITIES
`
`
`Page
`
`
`Cases
`
`Alexsam, Inc. v. Best Buy Stores L.P.,
`No. 2:13-CV-2, 2013 WL 1795818, (E.D. Tex. Apr. 8, 2013), report and recommendation
`adopted, 2013 WL 1793928 (E.D. Tex. Apr. 26, 2013) ........................................................... 12
`
`Art+Com Innovationpool GmbH, v. Google LLC,
`712 F. App’x 976 (Fed. Cir. 2017) ........................................................................................... 14
`
`Atlanta Attachment Co. v. Leggett & Platt, Inc.,
`516 F.3d 1361 (Fed. Cir. 2008) ................................................................................................ 14
`
`Baron Servs., Inc. v. Media Weather Innovations LLC,
`717 F.3d 907 (Fed. Cir. 2013) .................................................................................................. 13
`
`Candela Corp. v. Palomar Med. Techs., Inc.,
`No. 9:06-CV-277, 2008 WL 11441909 (E.D. Tex. Sept. 24, 2008) ........................................... 9
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) .................................................................................................................... 7
`
`Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
`No. 2:14-CV-911-JRG-RSP, 2016 WL 4596108 (E.D. Tex. Sept. 3, 2016). ............... 11, 12, 13
`
`Correge v. Murphy,
`705 F.2d 1326 (Fed. Cir. 1983) ................................................................................................ 11
`
`Doe v. Angelina Cty., Texas,
`733 F. Supp. 245 (E.D. Tex. 1990) ........................................................................................... 13
`
`GoPro, Inc. v. Contour IP Holding LLC,
`908 F.3d 690 (Fed. Cir. 2018) .................................................................................................. 10
`
`Huawei Techs. Co. v. T-Mobile US, Inc.,
`No. 2:16-CV-00055-JRG-RSP, 2017 WL 5165606 (E.D. Tex. Oct. 15, 2017) ......................... 7
`
`Koninklijke Philips N.V. v. Zoll Med. Corp.,
`656 F. App’x 504 (Fed. Cir. 2016) ........................................................................................... 13
`
`Netscape Commc'ns Corp. v. Konrad,
`295 F.3d 1315 (Fed. Cir. 2002) ................................................................................................ 12
`
`New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,
`298 F.3d 1290 (Fed. Cir. 2002) ................................................................................................ 14
`
`-ii-
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`

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`Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 4 of 21 PageID #: 24844
`TABLE OF AUTHORITIES
`cont.
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`Page
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`Pronova Biopharma Norge AS v. Teva Pharm. USA, Inc.,
`549 F. App'x 934 (Fed. Cir. 2013) ............................................................................................ 12
`
`Stamps.com Inc. v. Endicia, Inc.,
`437 F. App’x 897 (Fed. Cir. 2011) ............................................................................................. 8
`
`TransWeb, LLC v. 3M Innovative Properties Co.,
`812 F.3d 1295 (Fed. Cir. 2016) ................................................................................................ 13
`
`Voter Verified, Inc. v. Premier Election Sols., Inc.,
`698 F.3d 1374 (Fed. Cir. 2012). ................................................................................................. 7
`
`Statutes
`
`35 U.S.C. § 102 ............................................................................................................................... 2
`
`Rules
`
`Fed. R. Civ. P. 56(c) ....................................................................................................................... 7
`
`
`
`
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`
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`-iii-
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`

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`Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 5 of 21 PageID #: 24845
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`Maxell’s Motion for Partial Summary Judgement of No Invalidity of U.S. Patent Nos.
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`6,748,317, 6,580,999, and 6,430,498 based on the public availability of Abowd and Cyberguide
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`(Dkt. 382 or “Mot.”) not only fails to identify an absence of a genuine dispute of material fact; it
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`instead raises a series of doubts about Apple’s evidence, confirming the existence of factual
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`disputes that preclude summary judgment. What’s more, Maxell’s doubts derive from the opinions
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`of an unqualified expert and patent attorney, Robert Stoll, that Apple has moved to strike (see Dkt.
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`357). Even if Mr. Stoll’s opinions are admissible, they also present fact disputes with Apple’s
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`experts that are for the jury to resolve.
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`For the Abowd publication, Maxell’s motion presents nothing more than fact disputes
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`about how library records for the publication should be interpreted. Apple’s librarian expert, Jacob
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`Munford―who has 10 years of experience and education in library sciences―opines that
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`“MARC” cataloguing records from two libraries show that Abowd was catalogued, indexed, and
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`publicly accessible at both libraries before the July 12, 1999 priority date of the ’317, ’999, and
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`’498 Patents (“Navigation Patents”). Maxell’s only rebuttal is the opinion of a patent attorney,
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`Mr. Stoll, who is unqualified to offer expert opinions on interpreting library record. See Dkt. 357
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`at 8-10. Mr. Stoll completely disregards the MARC records, which he admits he cannot interpret.
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`He instead misinterprets a “Do Not Circulate” label that appears on one copy of Abowd to mean
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`it was not publicly available. But “Do Not Circulate” merely denotes a library holding that cannot
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`be checked out and used outside of the library. The holding can still be accessed, reviewed, and
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`copied by anyone inside the library, as proved by the fact that Mr. Munford was able to review
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`and photocopy the very volume Maxell now bafflingly asserts was not publicly accessible.
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`Likewise, Cyberguide qualifies as prior art. The Abowd publication describes Cyberguide
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`as a virtual map on a portable device given to visitors of open houses at Georgia Tech by 1996.
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`1
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`

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`Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 6 of 21 PageID #: 24846
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`Maxell’s arguments to the contrary reflect its and Mr. Stoll’s flawed understanding of the legal
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`requirements for “public use.” The Federal Circuit has repeatedly held that public demonstrations
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`of prototypes are sufficient to demonstrate “public use,” even if the demonstrations are to a limited
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`audience and the prototype was still in development at the time. There is thus no legal relevance
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`to Mr. Stoll’s opinions that Cyberguide was presented to the “open houses” were not sufficiently
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`public or that later prototypes of Cyberguide existed.
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`Because Maxell’s doubts and Mr. Stall’s opinions are flawed and incompetent to support
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`summary judgment, Maxell’s motion should be denied.
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`I.
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`STATEMENT OF ISSUE TO BE DECIDED
`
`1.
`
`Whether there is a genuine dispute of material fact that Abowd was a printed
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`publication that was publicly available before July 12, 1999, the claimed priority date of the ’317,
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`’999, and ’498 Patents, and therefore qualifies as prior art to those patents under 35 U.S.C. § 102.
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`2.
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`Whether there is a genuine dispute of material fact that Cyberguide was known or
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`used by others in the United States before July 12, 1999, the claimed priority date of the ’317,
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`’999, and ’498 Patents, and therefore qualifies as prior art to those patents under 35 U.S.C. § 102.
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`II.
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`STATEMENT OF UNDISPUTED FACTS
`A.
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`Response To Plaintiff’s Statement Of Undisputed Facts
`
`1.
`
`2.
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`Paragraphs 1-4 and 8 are undisputed. Mot. at 3-4.
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`Paragraph 5 is disputed and irrelevant. Maxell contends that the opening invalidity
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`report of Apple’s technical expert Dr. Paradiso does not expressly reference Mr. Munford’s report
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`concerning the public availability of Abowd. Id. at 4. But Dr. Paradiso states in his report that he
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`was “informed that the Abowd paper was published or publicly available no later than October
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`1997.” Ex. 1 at ¶121. The “October 1997” date came from Mr. Munford’s report. Ex. 2 at ¶16.
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`In any event, it is irrelevant whether Dr. Paradiso expressly mentioned Mr. Munford by name.
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`
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`2
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`

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`Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 7 of 21 PageID #: 24847
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`3.
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`Paragraphs 6-7 are misleading. Maxell contends that a University of Pittsburgh
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`library copy of Abowd attached to Mr. Munford’s report is in a bound version of Wireless
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`Networks with a “Do Not Circulate” label on the sleeve and that Mr. Munford did not address that
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`label in his report or deposition. Mot. at 7-8. But whether a book includes a “Do Not Circulate”
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`label does not bear on the question of whether that book was publicly accessible to qualify as prior
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`art. “Do Not Circulate” is commonly used by libraries to denote that materials (e.g., journals,
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`periodicals, and reference books) cannot be checked out and used outside of a library―but the
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`label places no limits on whether those materials can be accessed, reviewed, and copied inside the
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`library. Exs. 3-4. Illustrating this point, Mr. Munford was able to access and make a copy of the
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`Abowd publication with the “Do Not Circulate” label and attach it to his report. Ex. 2 at Ex. 2A.
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`Mr. Munford did not address the “Do Not Circulate” label in his report because that label is
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`irrelevant to his opinion on public availability. Mr. Munford did not address the label at his
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`deposition because Maxell asked no questions about his opinions. Ex. 5.
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`B.
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`Additional Material Facts
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`Facts About The Abowd Publication
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`1.
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`Library catalog records are written in Machine Readable Catalog (“MARC”) code.
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`Ex. 2 at ¶10. A MARC record for a library holding contains numbered fields describing the
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`holding, metadata from the holding’s publisher, and dates relating to the acquisition of the holding.
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`Id. The “008” field of a MARC record denotes the creation date of the library record itself in the
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`library’s catalog and, thus, reflects the date of a holding’s public availability in that library. Id.
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`2.
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`Apple’s librarian expert, Mr. Jacob Munford, attached two copies of the Abowd
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`publication from two libraries to his expert report submitted in this matter. Id. at ¶¶12, 14.
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`3.
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`The first copy of Abowd came from the University of Pittsburgh library and is
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`attached as Exhibit 2A to Mr. Munford’s report. Id. at ¶12, Ex. 2A. The first copy was published
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`3
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`Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 8 of 21 PageID #: 24848
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`as an article in the October 1997, Volume 3 issue of the Wireless Networks journal that was in the
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`University of Pittsburgh library’s holdings. Id.
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`4.
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`Mr. Munford obtained the University of Pittsburgh library’s MARC record for its
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`copy of the Wireless Networks journal and attached it as Exhibit 2B to his report. Id. at ¶13, Ex.
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`2B. The MARC record’s “008” field has a number “950403,” which means that the University of
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`Pittsburgh library first catalogued the Wireless Networks journal on April 3, 1995, and would have
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`received each subsequent issue of Wireless Networks as they were released, including the October
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`1997, Volume 3 issue containing Abowd. Id.
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`5.
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`To further support that the University of Pittsburgh library would have received the
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`October 1997, Volume 3 issue of Wireless Networks when it issued, Mr. Munford included in
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`Exhibit 2B the library’s holding information for Wireless Networks, showing that the library
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`received all issues in perpetuity from 1996 to 2003. Id.
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`6.
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`Mr. Munford also noted that Volume 3 of
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`Wireless Networks was in a bound book. Id. at ¶13, Ex. 2A
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`(see unnumbered page before page 433). That book
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`included a sticker (excerpted right) showing that the
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`University of Pittsburgh library had sent the volume to a
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`book bindery in January to March 1998, meaning that the library must have had the volumes before
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`that date range. Id.
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`7.
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`The second copy of Abowd came from the Carnegie Mellon University library and
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`is attached as Exhibit 2C to Mr. Munford’s report. Id. at ¶14, Ex. 2C. The second copy was also
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`published as an article in the October 1997, Volume 3 issue of the Wireless Networks journal that
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`was in the Carnegie Mellon University library’s holdings. Id.
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`4
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`8.
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`Mr. Munford obtained the Carnegie Mellon University library’s MARC record for
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`its copy of the Wireless Networks journal and attached it as Exhibit 2D to his report. Id. at ¶15,
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`Ex. 2D. The MARC record’s “008” field has a number “990122,” which means that the Carnegie
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`Mellon University library first catalogued the Wireless Networks journal on January 22, 1999,
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`including all issues of that journal before that date. Id.
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`9.
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`Dr. Munford concluded based on these records that Abowd was publicly available
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`by no later than October 1997, the date by which it would have been received and catalogued by
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`the University of Pittsburgh library. Id. at ¶16.
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`Facts About Cyberguide
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`10.
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`Cyberguide was a handheld intelligent tour guide described in several publications,
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`including the Abowd publication, which has a date of “September 23, 1996.” Ex. 6.
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`11.
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`According to the Abowd publication, Dr. Gregory Abowd and his team at the
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`Georgia Institute of Technology developed and implemented fully-operational Cyberguide
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`prototypes. Id. at APL-MAXELL_00713088.
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`12.
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`Each of the Cyberguide prototypes was a mobile, hand-held device that provided a
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`user with location and orientation information. Id.
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`13.
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`Dr. Abowd’s team made Cyberguide prototypes available to members of the public
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`who visited his university’s Graphics, Visualization, and Usability (GVU) Center’s monthly open
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`houses and visitors could use the prototypes to navigate around the GVU Center. Id.
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`14.
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`The Cyberguide prototypes used by visitors could provide them with location
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`information, orientation information, and walking directions to various points of interest in and
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`around the GVU center. Id.
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`5
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`Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 10 of 21 PageID #: 24850
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`Facts About Fact Witnesses And Apple’s Expert Witnesses
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`15.
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`Dr. Gregory Abowd is the first-named author of the Abowd publication and
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`developer of Cyberguide. Id. at APL-MAXELL_00713087. Dr. Abowd is listed on Apple’s initial
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`disclosures served on March 5, 2020, which identified him as knowledgeable about Cyberguide
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`and Abowd. Ex. 7 at 14. Maxell never sought his deposition. Dkt. 283. Dr. Abowd is also listed
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`on Apple’s trial witness list, served on June 25, 2020. Ex. 8 at 2.
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`16.
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`The opening report on invalidity of Apple’s expert Dr. Joseph Paradiso identified
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`Cyberguide and Abowd as prior art to the Navigation Patents. Ex. 1 at ¶¶120-131. At Dr.
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`Paradiso’s deposition, Maxell asked him no questions regarding any prior art, including Abowd or
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`Cyberguide. See Ex. 9.
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`17.
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`Apple’s librarian expert Mr. Munford obtained his master’s degree in library
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`sciences in 2009 and has since served as a library director and researcher on library operations.
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`Ex. 2, CV. At his deposition, Maxell asked Mr. Munford no questions about the opinions in his
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`expert report concerning Abowd. See Ex. 5.
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`Facts About Maxell’s Expert Robert Stoll.
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`18. Maxell submitted a rebuttal expert report from Mr. Robert Stoll, challenging
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`whether certain prior art references, including Cyberguide and Abowd, qualify as prior art. See
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`Ex. 10 at ¶¶114-133 (addressing Abowd), ¶¶134-156 (addressing Cyberguide).
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`19. Maxell’s summary judgment motion cites to Mr. Stoll’s report as the basis for many
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`of its arguments. Mot. at 4 (¶6), 6-15.
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`20. Mr. Stoll is an attorney and currently practicing at a law firm. Ex. 10 at ¶2.
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`21. Mr. Stoll is not an expert or a person of ordinary skill in the art for any of the
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`technologies relevant to the Navigation Patents. Ex. 11 at 20:2-10.
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`6
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`22. Mr. Stoll has no education, training, expertise, or knowledge relating to library
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`sciences, library records, MARC records, catalogs, circulation, and public access rules. Id. at
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`22:11-15, 32:13-33:7.
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`23.
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`Apple has filed a pending Daubert motion to exclude all of Mr. Stoll’s opinions
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`because they are unsupported and Mr. Stoll is unqualified to render those opinions. Dkt. 357.
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`III. LEGAL STANDARDS
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`Summary judgment is proper if the evidence shows “no genuine issue as to any material
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`fact and the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c); Celotex
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`Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). “The court must consider evidence in the record
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`in the light most favorable to the non-moving party and draw all reasonable inferences in favor of
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`that party.” Huawei Techs. Co. v. T-Mobile US, Inc., No. 2:16-CV-00055-JRG-RSP, 2017 WL
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`5165606, at *2 (E.D. Tex. Oct. 15, 2017).
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`IV. ARGUMENT
`A.
`
`Abowd Was Publicly Available By October 1997 And Thus Qualifies As A
`“Printed Publication” Under § 102
`
`1.
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`Library Records Show That Abowd Was Catalogued And Publicly
`Accessible By October 1997
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`In challenging Abowd, Maxell omits much of the factual record and the legal standards
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`under which the public availability of library holdings are evaluated. When the full record and
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`correct legal standards are considered, the public availability of Abowd before the critical date
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`becomes clear and, at a minimum, presents a factual dispute precluding summary judgment.
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`The Federal Circuit has repeatedly held that cataloguing or “indexing is a relevant factor
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`in determining accessibility of potential prior art, particularly library-based references.” Voter
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`Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012). In Stamps.com
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`Inc. v. Endicia, Inc., the Federal Circuit found a prior art article was publicly available in 1993
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`
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`7
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`Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 12 of 21 PageID #: 24852
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`because “the article was catalogued by Carnegie Mellon University and listed as available on its
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`indexed website in 1993.” 437 F. App’x 897, 903 (Fed. Cir. 2011)
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`As Apple’s librarian expert Mr. Munford explains in his report, the best indicator of when
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`a library indexed and catalogued a holding is the date listed in the “008” field in the library’s
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`MARC record for that holding. Ex. 2 at ¶10. Mr. Munford considered the MARC records for two
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`separate copies of the Abowd publication, from the University of Pittsburgh library and Carnegie
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`Mellon University library, where each copy was published as an article in the October 1997,
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`Volume 3 issue of the Wireless Networks journal. Id. at ¶¶12, 14, Ex. 2A, 2C. The MARC record
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`for Wireless Networks at the University of Pittsburgh library shows that the library began
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`cataloguing issues of the journal in April 3, 1995, meaning that after that date, the library would
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`have acquired each issue of the journal as it was released, including the October 1997, Volume 3
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`issue. Id. at ¶13, Ex. 2B. Mr. Munford corroborated this understanding using (1) the library’s
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`holdings information for Wireless Networks, which shows the library acquired all issues of the
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`journal from 1996 to 2003, and (2) a sticker on the October 1997, Volume 3 issue, which showed
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`that the library had sent that issue to a book bindery between January and March 1998, meaning
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`that the library must have had that issue in its possession by that time, before sending it to be
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`bound. Id. The MARC record for the second copy shows that Carnegie Mellon University library
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`catalogued issues of Wireless Networks on January 22, 1999. Id. at ¶15, Ex. 2D.
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`Citing the foregoing evidence, Mr. Munford concluded that Abowd was publicly available
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`by no later than October 1997, the date by which it would have been indexed and catalogued by
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`the University of Pittsburgh library. Id. at ¶16.
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`2.
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`Maxell’s Arguments Rely On Impermissible Speculation Of Mr. Stoll
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`Maxell’s motion ignores the MARC records, even though they are best indicators of when
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`the libraries catalogued and thus made publicly available the Wireless Networks journal in which
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`8
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`Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 13 of 21 PageID #: 24853
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`Abowd was published. Instead, Maxell relies on the opinions of Mr. Stoll, whose interpretations
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`of the evidence conflict with Apple’s expert Mr. Munford, further evidencing the presence of a
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`material disputes of fact and “conflicting expert opinions [that] are sufficient to make summary
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`judgment inappropriate.” Candela Corp. v. Palomar Med. Techs., Inc., No. 9:06-CV-277, 2008
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`WL 11441909, at *2 (E.D. Tex. Sept. 24, 2008). Moreover, as discussed in Apple’s Daubert
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`motion, Mr. Stoll is completely unqualified to render opinions on Abowd’s availability in libraries.
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`Dkt. 357 at 8-10. Mr. Stoll, an attorney, admits to having no education, training, or expertise
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`relating to library sciences. Ex. 11 at 22:11-15, 32:13-33:7. He also admits to not knowing how
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`to interpret MARC records. Id. As detailed below, Mr. Stoll’s sheer ignorance of library practices
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`is evident in his opinions and the derivative arguments that Maxell makes in its motion.
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`First, citing Mr. Stoll, Maxell highlights the “Do Not Circulate” label that appears on the
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`sleeve of the University of Pittsburgh’s October 1997, Volume 3 issue of Wireless Networks as
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`evidence that the journal is not publicly accessible. Mot. at 7-8. But “Do Not Circulate” does not
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`denote a library holding that is secret. Instead, it is used by libraries only to denote that materials
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`(e.g., journals, periodicals, and references) cannot be checked out and used outside of a
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`library―those materials can still be accessed, reviewed, and copied by anyone inside the library.
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`Exs. 3, 4. Indeed, Mr. Munford made copy of Abowd despite “Do Not Circulate” label and
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`attached it to his report. Ex. 2 at Ex. 2A. That alone conclusively refutes Maxell’s speculation
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`that the label means the volume was not publicly accessible. Mr. Munford can confirm the
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`meaning of “Do Not Circulate” at trial and could have done so at his deposition if Maxell had
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`asked (or let Apple ask).
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`Second, citing Mr. Stoll, Maxell notes that the University of Pittsburgh’s holding
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`information for Wireless Networks identifies a date of “9-2-2004” beside “Copy received.” Mot.
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`9
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`Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 14 of 21 PageID #: 24854
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`at 8; Ex. 2 at Ex. 2B. But that date could simply refer to the date when the last issue of Wireless
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`Networks. At any rate, that date cannot somehow refute the MARC record, which shows that the
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`University of Pittsburgh received, indexed, and catalogued the journal starting in April 1995. At
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`a minimum, any dispute about its meaning is a fact dispute that precludes summary judgment.
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`Third, citing Mr. Stoll, Maxell suggests that Carnegie Mellon University’s records are
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`untrustworthy because they identify “Feb. 1995” as the date for the library’s Wireless Networks
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`holding, while Abowd was written later in 1996. Mot. at 9; Ex. 2 at Ex. 2D. But the “Feb. 1995”
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`date simply refers to the date of the first Volume 1 issue of Wireless Networks and signifies that
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`the library possesses issues of Wireless Networks starting with that first issue. Ex. 2 at Ex. 2D
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`(stating “Vol. 1, no. 1 (Feb. 1995)”). Abowd was published in the later October 1997, Volume 3
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`issue of Wireless Networks, which is part of the library’s holdings.
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`Fourth, Maxell contends that Mr. Munford is not a technical expert in the subject matter of
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`Abowd. Mot. at 10-11. Maxell’s contention is irrelevant―Mr. Munford is not opining on
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`Abowd’s technical subject matter; that is the role of Apple’s technical expert Dr. Paradiso. Mr.
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`Munford’s role is instead to opine on Abowd’s public availability in libraries. That is a subject
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`that Mr. Munford is qualified to address, whereas Maxell’s expert Mr. Stoll is not.
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`Fifth, citing Mr. Stoll, Maxell observes that the University of Pittsburgh’s online version
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`of Abowd is denoted as available only to “Pitt-affiliated users.” Mot. at 11. But Mr. Munford and
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`Apple are relying on the public availability of the hard copy of Abowd, not the online version. In
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`any event, “Pitt-affiliated users” could encompass nearly a half million people given that the school
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`has 28,391 current students, 5,600 staff and faculty, and 331,873 alumni. Exs. 12-14. Courts have
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`found documents to be “printed publications” when they were accessible to far fewer individuals.
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`See GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690, 693-96 (Fed. Cir. 2018) (finding sales
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`
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`10
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`

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`Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 15 of 21 PageID #: 24855
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`
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`catalog was publicly accessible because it was distributed at a trade show attended by about 1,000
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`people); Correge v. Murphy, 705 F.2d 1326, 1329-30 (Fed. Cir. 1983) (ruling that disclosure of
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`prior art at a meeting attended by 45 people was a sufficient public disclosure).
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`Sixth and finally, there is no relevance to Maxell’s contention that Apple’s technical expert
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`Dr. Paradiso’s invalidity report did not expressly cite Mr. Munford by name. See Mot. at 6. Dr.
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`Paradiso’s reliance on Mr. Munford was evident from Dr. Paradiso’s statement that he was
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`“informed that the Abowd paper was published or publicly available no later than October
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`1997”―the same date that Mr. Munford identified in his report as when Abowd was publicly
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`available. Ex. 1 at ¶121; Ex. 2 at ¶16. Dr. Paradiso could have confirmed his reliance on Mr.
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`Munford for the October 1997 date at his deposition if Maxell had simply asked.
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`Maxell’s attacks on Abowd thus amount to a series of factually flawed doubts, rather than
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`“competent summary judgment evidence.” See Core Wireless Licensing S.A.R.L. v. LG Elecs.,
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`Inc., No. 2:14-CV-911-JRG-RSP, 2016 WL 4596108, at *3 (E.D. Tex. Sept. 3, 2016). Moreover,
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`Maxell’s doubts are premised on the opinions of its unqualified expert Mr. Stoll. Those doubts
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`could be easily dismissed by Mr. Munford at trial and could have been dismissed sooner at his
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`deposition if Maxell had not intentionally avoided asking any substantive questions. Maxell’s
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`inferences cannot therefore provide a basis for granting summary judgment.
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`B.
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`Cyberguide Was Ready For Patenting And In Public Use Prior To The
`Publication Of Abowd On September 23, 1996
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`1.
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`Abowd Discloses That Cyberguide Was Ready For Patenting And Used
`By The Public By September 23, 1996
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`For Cyberguide, Maxell again relies on an incomplete and misleading rendition of the facts
`
`and law. When the full record and correct legal standards are considered, the public use of
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`Cyberguide before July 1999 presents, at best for Maxell, a factual dispute for the jury to resolve.
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`
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`11
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`Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 16 of 21 PageID #: 24856
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`Here, as the Abowd publication describes, by the date of its writing on September 23, 1996,
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`Dr. Abowd’s team had developed fully operational prototypes of Cyberguide. See Ex. 6 at APL-
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`MAXELL_00713088, -95-97, -101-102. And those prototypes were used by visiting members of
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`the public to navigate Georgia Tech’s GVU Center. See id. at APLMAXELL_00713088. Abowd
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`also discloses that by September 1996, Cyberguide was a fully-functional prototype that provided
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`users with location, orientation, and directions. Id.
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`On similar facts, the Federal Circuit has consistently held that demonstrations of working
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`prototypes to a limited, but public, audience qualify as a public use. Pronova Biopharma Norge
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`AS v. Teva Pharm. USA, Inc., 549 F. App’x 934, 942 (Fed. Cir. 2013) (holding that prior art system
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`was in public use because prior art inventor sent samples of the invention to a single third party
`
`who tested it); Netscape Commc'ns Corp. v. Konrad, 295 F.3d 1315, 1322 (Fed. Cir. 2002)
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`(affirming finding of public use where a prototype was demonstrated in front of university
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`personnel). In fact, in Alexsam, Inc. v. Best Buy Stores L.P., this District denied summary judgment
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`of no invalidity based on a prior art system, finding that evidence of a demonstration for just one
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`customer was sufficient to show that the system was publicly used. No. 2:13-CV-2, 2013 WL
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`1795818, at *18 (E.D. Tex. Apr. 8, 2013), report and recommendation adopted, 2013 WL 1793928
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`(E.D. Tex. Apr. 26, 2013). Thus, Cyberguide was in public use prior to September 1996.
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`2.
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`Maxell’s Arguments Rely On Flawed Legal Standards And Irrelevant
`Testimony Of Its Unqualified Expert Mr. Stoll
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`At summary judgment, the burden is on Maxell to establish the absence of a genuine issue
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`of material of fact for the jury to resolve. See Core Wireless, 2016 WL 4596108, at *1. Maxell’s
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`motion does little to meet its burden of presenting undisputed facts. To the contrary, Maxell’s
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`strategy has been to artificially limit the factual record―by not taking the deposition of Dr. Abowd
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`and asking no questions about Abowd or Cyberguide at Dr. Paradiso’s and Mr. Munford’s expert
`
`
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`12
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`Case 5:19-cv-00036-RWS Document 447 Filed 07/27/20 Page 17 of 21 PageID #: 24857
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`
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`depositions, see Ex. 7 at 14; Ex. 8 at 2; Exs. 5, 9―and then attempt to inflate that record with its
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`own self-serving assumptions. But on summary judgment, a court “cannot fill . . . factua