Case 5:19-cv-00036-RWS Document 448 Filed 07/27/20 Page 1 of 8 PageID #: 25111
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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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`vs.
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`APPLE INC.,
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`Defendant.
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` Civil Action No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`DEFENDANT APPLE INC.’S REPLY IN SUPPORT OF ITS DAUBERT MOTION
`TO EXCLUDE TESTIMONY AND OPINIONS OF MAXELL’S EXPERTS FOR
`IMPROPER APPLICATION OF THE COURT’S CLAIM CONSTRUCTION
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`Case 5:19-cv-00036-RWS Document 448 Filed 07/27/20 Page 2 of 8 PageID #: 25112
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`Maxell’s Opposition (D.I. 404) to Apple’s Daubert Motion on Claim Construction (D.I.
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`358) confirms that its experts did not follow the Court’s Markman Order. Rather than defending
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`its experts’ actual testimony as staying within the four corners of the constructions, Maxell uses
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`its opposition to challenge the merits of the Court’s constructions or to distract the Court by
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`pointing to unrelated expert testimony that is not the subject of Apple’s motion. At bottom,
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`Maxell and its experts are neither permitted to contradict the Court’s constructions nor to argue
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`claim construction directly to the jury. Thus, all opinions of Drs. Rosenberg, Bystrom, and
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`Brogioli that are inconsistent with the Court’s Markman Order should be excluded.
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`I.
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`Dr. Rosenberg’s Opinions That Fail To Apply The Court’s Construction Of Means-
`Plus-Function Terms Requiring A PHS Should Be Excluded (’317, ’999 Patents)
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`This Court’s construction was “CPU 71 and device for data communication 76 of a
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`portable telephone and a Personal Handyphone System (PHS) terminal.” D.I. 235 at 18. Dr.
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`Rosenberg’s report repeatedly replaced the conjunctive “portable telephone and a [PHS]
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`terminal” with the disjunctive “portable telephone and/or a PHS terminal,” and he then testified
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`in his deposition that he specifically did so to re-urge Maxell’s rejected Markman position that a
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`“PHS is not required” because “many different places” in the specification “use the word ‘or’ or
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`use the word ‘and/or’ too.” See D.I. 358 at 4-6 (citing Dr. Rosenberg’s report and deposition).
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`Maxell tries to rewrite Dr. Rosenberg’s testimony, but no amount of obfuscation can avoid the
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`fact that the Court’s construction makes clear a PHS is required, and Maxell and Dr. Rosenberg
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`should be prohibited from arguing to the jury that a PHS is optional.
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`The bulk of Maxell’s Opposition is irrelevant to Apple’s Motion. Maxell spends three
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`pages piecing together excerpts from Dr. Rosenberg’s report that account for a scenario where a
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`PHS is required. D.I. 404 at 2-5. Dr. Rosenberg’s report does include opinions that pay lip
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`service to PHS as a requirement, but it also includes opinions treating PHS as optional. Apple’s
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`Case 5:19-cv-00036-RWS Document 448 Filed 07/27/20 Page 3 of 8 PageID #: 25113
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`Motion seeks to strike only those opinions “that expressly or implicitly contradict the Court’s
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`constructions” by treating PHS as optional. D.I. 358 at 6. The subject of Apple’s motion is
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`therefore the many opinions in paragraphs 519-522 and 657-660 of his report which, as he
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`confirmed in his deposition, reflect his belief that a PHS is optional. D.I. 358 at 4-6. That some
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`of Dr. Rosenberg’s other opinions do not violate the Court’s order is obviously irrelevant.
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`Maxell also attempts to justify Dr. Rosenberg’s use of “and/or” and his deposition
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`testimony that a “PHS” is optional. D.I. 404 at 6-8. But Maxell’s explanation is riddled with
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`contradicting statements. In one sentence, Maxell states that “Apple has mischaracterized [Dr.
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`Rosenberg’s testimony] as evidence of Dr. Rosenberg treating the PHS as an optional
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`requirement,” suggesting that Maxell agrees a PHS is required. Id at 7. But in the very next
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`sentence, Maxell states that “Dr. Rosenberg explained that the Court’s construction does not
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`require a PHS.” Id. Maxell cannot have it both ways—it must either acknowledge that the
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`Court’s construction requires “PHS” or stand behind its expert’s opinion that PHS is optional.
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`As best as Apple can decipher Dr. Rosenberg’s position, he appears to argue that the
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`Court’s construction only requires a “device for data communication,” and the portable
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`telephone and PHS are just “two examples of devices for data communication.” D.I. 358, Ex. 2
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`at 88:16-89:4. Maxell attempts to justify (and modify) this position by analogizing the Court’s
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`construction to requiring “brake pads of a car” and arguing that the “construction requires a
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`device for data communication of a PHS (the brake pads), not the entirety of the PHS (the car).”
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`D.I. 404 at 8. But Maxell’s apparent position that the latter half of the Court’s construction is
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`irrelevant verbiage or mere examples contradicts the Court’s Markman Order. See D.I. 235 at 17
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`(citing “the clear disclosure of device for data communication 76’s structure: ‘an ordinary
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`portable telephone and a PHS’”) (emphasis original). The Court’s construction plainly requires
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`Case 5:19-cv-00036-RWS Document 448 Filed 07/27/20 Page 4 of 8 PageID #: 25114
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`that the “device for data communication” must be “of a portable telephone and a Personal
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`Handyphone System (PHS) terminal.” Id. at 18. Thus, a “device for data communication” that
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`only supports a portable telephone, but not a PHS, cannot satisfy the Court’s construction.
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`Apple respectfully requests that the Court strike the opinions in paragraphs 519-522 and
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`657-660 of Dr. Rosenberg’s report referring to “portable telephone and/or a PHS terminal” and
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`preclude Dr. Rosenberg from testifying at trial that PHS is optional.
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`II.
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`Dr. Bystrom’s Opinions Disregarding The Court’s Construction Requiring
`“Videophone Function-Added TV Receiver” Should Be Excluded (’991 Patent)
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`Maxell attempts to justify Dr. Bystrom’s improper opinions by (1) attacking Apple’s
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`factual evidence of non-infringement, and (2) re-arguing the construction of “communication
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`apparatus” by citing embodiments from the ’991 Patent. D.I. at 404 at 9-11. Tellingly, Maxell’s
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`Opposition presents no explanation on how Dr. Bystrom’s report adheres to the Court’s
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`Markman Order, and, in fact, includes no citation to the Court’s order at all. See id.
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`Maxell begins by attacking the non-infringement opinions of Apple’s expert, Dr.
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`Bederson. But Dr. Bederson’s analysis that the accused products do not include
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` is part of his factual analysis of the accused products’ design. See D.I. 404 at 9-10.1
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`Maxell fails to explain how Dr. Bederson’s factual analysis on non-infringement (in his rebuttal
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`report) somehow justifies Dr. Bystrom’s claim construction opinions (in her opening report)
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`based on dictionaries and specification embodiments. See D.I. 358 at 8-9.
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`Second, Maxell only confirms that it is engaging in improper claim construction by citing
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`the specification to argue that a “communication apparatus” must include the “video-on-demand
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`1 While Dr. Bederson cited this evidence as part of his analysis that the accused products do not
`include a TV receiver, he did not opine that the any claim term should be construed to require
` See Ex. 6 (Bederson Dep. Tr.) at 223:6-241:6.
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`Case 5:19-cv-00036-RWS Document 448 Filed 07/27/20 Page 5 of 8 PageID #: 25115
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`(VOD)” embodiment. See D.I. 404 at 10-11. Maxell’s and Dr. Bystrom’s attempt to undo the
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`Court’s construction of “communication apparatus” as a “videophone function-added TV
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`receiver” based on a specific embodiment should not be permitted at trial. See D.I. 235 at 56;
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`Tinnus Enters., LLC v. Telebrands Corp., No. 6:16-cv-00033-RWS, 2017 WL 3457104, at *2-3
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`(E.D. Tex. Aug. 11, 2017) (excluding expert’s opinions that “constru[e] the Court’s
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`construction” using “the specification” and other evidence).
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`Maxell’s argument that Apple is attempting to exclude the specification’s VOD
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`embodiment from the Court’s construction is a strawman. See D.I. 404 at 10-11. Neither Apple
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`nor its expert has argued that a “videophone function-added TV receiver” cannot have video-on-
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`demand functionality. But just having video-on-demand functionality is insufficient to qualify a
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`device as a “TV receiver” if it does not include television reception functionality. This is
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`entirely consistent with ’991 Patent’s disclosure, which differentiates between “TV” and “VOD”
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`functionality in all embodiments. See, e.g., ’991 Patent at 9:13-24, 10:13-23, Fig. 4.
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`III. Dr. Brogioli’s Opinions That Fail To Apply The Court’s Construction Of Means-
`Plus-Function Terms Should Be Excluded (’794 Patent)
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`Maxell fails to identify any basis to justify Dr. Brogioli’s opinions that include common
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`components within the scope of the “function/component devices” terms.
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`First, Maxell attempts to wiggle out of the Court’s constructions by arguing that they
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`merely reflect “dicta” from the prior Huawei case. See D.I. 404 at 12-13. But the claim terms
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`construed by this Court in Huawei—“function devices equipped with independent functions”
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`(Claim 1) and “component devices for performing different functions in the device” (Claim 9)—
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`are the exact terms at issue in Apple’s Motion. See D.I. 358 at 10. The parties agreed to adopt
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`the Court’s prior constructions for these terms during Markman (D.I. 99 at 3), and the Court
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`incorporated them in the Markman Order issued in this case. See D.I. 235 at 6-7. If Maxell
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`Case 5:19-cv-00036-RWS Document 448 Filed 07/27/20 Page 6 of 8 PageID #: 25116
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`disagreed with the Court’s constructions or the underlying reasoning, it was incumbent on
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`Maxell—not Apple—to seek re-construction of these terms in this case.
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`Second, Maxell argues that the “common” devices terms from Claims 8 and 14 were not
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`construed. D.I. 404 at 12. This is irrelevant. In construing the “function/component devices”
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`terms, the Huawei Order makes clear that these terms cannot encompass common components.
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`Maxell Ltd. v. Huawei Device USA Inc., 297 F. Supp. 3d 668, 739 (E.D. Tex. 2018) (“In context
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`of the specification as a whole, it is clear that the functions of the common function device are
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`not the claimed functions.”). Dr. Brogioli misapplied the Court’s order by accusing common
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`components as “function/component devices.” D.I. 358 at 12-13. Apple’s Motion seeks to strike
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`Dr. Brogioli’s opinions on these construed terms, not his opinions on the un-construed terms.
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`Third, Maxell argues that the Court’s exclusion of common components from the scope
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`of “function/component devices” is limited to only the CPU and memory—the only two
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`examples in the specification. D.I. 404 at 13. But the Court’s Order does not limit common
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`devices to just these examples. Rather, it explains that all components shared among two or
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`more functions are excluded from the terms. Huawei, 297 F. Supp. 3d at 739 (in construing
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`“function devices,” explaining that a “common device is ‘needed by both’ function devices”).
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`Lastly, Maxell’s arguments relating to other accused components that do not violate the
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`Court’s construction are irrelevant to Apple’s Motion—Apple has moved to exclude only
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`opinions by Dr. Brogioli that improperly identify a common component as an accused “function
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`device” or “component device.” Because Maxell does not dispute that the accused products’
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`display is shared among multiple functions—including between videophone and audio
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`communication functions—any infringement theory that maps a display to a “function device” or
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`“component device” violates the Court’s Order and should be stricken.
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`Case 5:19-cv-00036-RWS Document 448 Filed 07/27/20 Page 7 of 8 PageID #: 25117
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`Dated: July 23, 2020
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`/s/ Luann L. Simmons
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`
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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
`
`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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`Case 5:19-cv-00036-RWS Document 448 Filed 07/27/20 Page 8 of 8 PageID #: 25118
`Case 5:19-cv-OOO36-RWS Document 448 Filed 07/27/20 Page 8 of 8 PageID #: 25118
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`CERTIFICATE OF SERVICE
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`The lmdersigned hereby ce11ifies that all c01msel 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 Court’s
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`CM/ECF system per Local Rule CV—5(a)(3) on July 23. 2020.
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`/s/ Melissa R. Smith
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`Melissa R. Smith
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`