Case 5:19-cv-00036-RWS Document 449 Filed 07/27/20 Page 1 of 8 PageID #: 25121
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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
`CONCLUSORY TESTIMONY AND OPINIONS OF MAXELL’S EXPERTS
`RELATING TO DOCTRINE OF EQUIVALENTS AND SOURCE CODE
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`Case 5:19-cv-00036-RWS Document 449 Filed 07/27/20 Page 2 of 8 PageID #: 25122
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`Maxell’s experts Drs. Maher, Vojcic, Madisetti, Rosenberg, Brogioli, Bystrom, and
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`Williams proffer conclusory doctrine-of-equivalents and/or source code opinions that lack
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`analysis and factual support. Similarly, Maxell’s opposition does nothing more than restate its
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`experts’ conclusions, without citing any relevant supporting analysis to demonstrate the
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`admissibility of the challenged opinions, tacitly admitting that none exists. Without supporting
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`analysis or facts, these opinions are unreliable and irrelevant and should be excluded.
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`I.
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`DRS. MAHER, VOJCIC, MADISETTI, AND ROSENBERG’S CHALLENGED
`DOCTRINE OF EQUIVALENTS OPINIONS ARE UNSUPPORTED
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`It is well-settled that sufficient doctrine of equivalents opinions require an articulation of
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`how the differences between the claimed invention and the accused device are insubstantial.
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`Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1343 (Fed. Cir. 2016); Texas
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`Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996); Colucci
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`v. Callaway Golf Co., 748 F. Supp. 2d 629, 632 (E.D. Tex. 2010). Maxell’s opposition is unable
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`to point to any such articulation. Tellingly, Maxell’s single use of any variation of the word
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`“insubstantial” in its opposition is tantamount to the conclusory nature of the challenged
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`opinions. See Opp. at 3 (quoting Dr. Madisetti’s opinion that “[t]he evidence I’ve cited in this
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`section proves these functions, ways, and results are insubstantially different”). As in Genband
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`US LLC v. Metaswitch Networks Corp., Maxell’s experts’ “conclusory opinions,” “unsupported
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`by ‘facts or data’ and based on no discernable ‘principles and methods,’” “are not admissible
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`under Fed. R. Evid. 702.” No. 2:14-CV-33-JRG-RSP, 2016 WL 3475688, at *2 (E.D. Tex. Jan
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`7, 2016); see also Eolas Techs. Inc. v. Amazon.com, Inc., No. 6:15-CV-1038-RWS, 2016 WL
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`7666160, at *3 (E.D. Tex. Dec. 5, 2016) (“Plaintiff’s blanket statement that elements not literally
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`infringed are ‘infringed under the doctrine of equivalents because the difference between the
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`claimed inventions and Defendants’ infringement, if any, are insubstantial and the accused
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`1
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`Case 5:19-cv-00036-RWS Document 449 Filed 07/27/20 Page 3 of 8 PageID #: 25123
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`instrumentalities perform the same function in the same way to achieve the same result as such
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`limitations’ does not meet the requirement of [P.R. 3-1(d)].”).1
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`Unable to point to any non-conclusory doctrine of equivalents opinions, Maxell resorts to
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`arguing these opinions are sufficient based on their literal infringement analysis. See Opp. at 2-6
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`(“Apple … ignor[es] the … preceding infringement testimony”), (“Dr. Madisetti provides a
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`detailed infringement analysis regarding claim limitation 6[b] of the ’493 Patent. Relying on this
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`same analysis, … paragraphs 633-635 address why Apple’s products also infringe under the
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`doctrine of equivalents.”). Unless Maxell is admitting that Apple does not literally infringe the
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`Asserted Patents, it is nonsensical for Maxell to rely on its experts’ literal infringement analyses
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`as evidence of their articulation of the differences between the claimed invention and the accused
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`device and the insubstantiality of those differences. See, e.g., Amgen Inc. v. F. Hoffman-La
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`Roche Ltd., 580 F.3d 1340, 1382 (Fed. Cir. 2009) (“[E]vidence and argument on the doctrine of
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`equivalents cannot merely be subsumed in plaintiff’s case of literal infringement.”); see also
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`Eolas Techs., 2016 WL 7666160, at *3 (“In light of Plaintiff’s admission that its contentions
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`relate to literal infringement,” “Plaintiff’s current ICs do not cover DOE claims.”). Because the
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`challenged opinions are devoid of any factual support or analysis, they should be excluded.
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`II.
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`DR. BROGIOLI’S CHALLENGED DOCTRINE OF EQUIVALENTS OPINIONS
`MISAPPLY THE LAW OF PROSECUTION HISTORY ESTOPPEL
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`Maxell’s opposition misrepresents the scope of surrender that arose from the redrafting of
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`application claim 5, which was revised as shown below to overcome the Eiraku reference and
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`obtain the ’794 Patent (non-underlined portions represent the dependent claim as originally filed
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`1 If such blanket statements are insufficient for infringement contentions, then Maxell’s experts’
`blanket statements are certainly insufficient for expert testimony, where the bar is higher. See,
`e.g., ROY-G-BIV Corp. v. ABB, Ltd., 63 F. Supp. 3d 690, 699 (E.D. Tex. 2014) (explaining the
`higher standard for expert reports as compared to infringement contentions).
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`2
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`Case 5:19-cv-00036-RWS Document 449 Filed 07/27/20 Page 4 of 8 PageID #: 25124
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`and underlined portions represent the additions to transform the claim into independent form).
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`Dkt. 367-08 at MAXELL_APPLE0000296 (’794 Patent File History Excerpts) (highlights
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`added). The limitations present in the original dependent claim 5 (i.e., the non-underlined
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`portions) are subject to prosecution history estoppel. See Felix v. Am. Honda Motor Co., 562
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`F.3d 1167, 1183 (Fed. Cir. 2009) (“[T]he cancellation of original independent claim 1 coupled
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`with the rewriting of original dependent claim 7 as independent claim 14 gave rise to a
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`presumption of surrender applicable to all limitations … that correspond to the limitations of
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`claim 7.”). There is no dispute that the challenged opinions are directed to the highlighted
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`portions of the claim—all of which is subject to the presumption of surrender. Nor is there any
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`dispute that the amendment was made for the purpose of securing the patent, as Dr. Brogioli
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`himself admitted. See Ex. 10 (Brogioli Rebuttal Report) at ¶ 71 (“[T]he applicants were clear
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`that the purpose of their claim amendments … was to secure allowance of all claims, per the
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`guidance of the Examiner.”). The presumption of surrender arises regardless of whether the
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`amendment was made to avoid an asserted prior art reference under § 102 (i.e., Eiraku) or merely
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`to “secure allowance.” See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd., 535 U.S.
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`722, 736, (2002) (estoppel is not limited to narrowing amendment made for purposes of avoiding
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`3
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`Case 5:19-cv-00036-RWS Document 449 Filed 07/27/20 Page 5 of 8 PageID #: 25125
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`prior art, but applies to any “narrowing amendment made to satisfy any requirement of the Patent
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`Act”).
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`III. DR. ROSENBERG’S CHALLENGED STRUCTURAL EQUIVALENTS
`OPINIONS ARE UNSUPPORTED
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`Maxell’s opposition attempts to supplement Dr. Rosenberg’s opinions on structural
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`equivalents by arguing that “WiFi and cellular functionality” were not “after arising
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`technologies” to the ’317 and ’999 Patents because the “original WiFi 802.11 standard was
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`published in 1997” and “CDMA systems were known ‘by the spring of 1990.’” See Opp. at 10.
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`But in making these arguments, Maxell merely highlights what’s missing from Dr. Rosenberg’s
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`report―any opinions about structural equivalents and its exclusion of “after arising technology.”
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`None of Maxell’s arguments are found in Dr. Rosenberg’s report. Indeed, to support its
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`arguments, Maxell cites not to Dr. Rosenberg, but to testimony of an Apple expert (Dr. Bims)
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`regarding patents unrelated to the ’317 and ’999 Patents that Dr. Rosenberg considered. Id.
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`Dr. Rosenberg’s report has no infringement opinions based on structural equivalents, and
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`the deposition portions Maxell cites fail to help its cause. Id. at 11. For example, Dr. Rosenberg
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`admitted he was “not aware of the after-arising technology” exclusion and “never addressed” it
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`in his report because he “didn’t think it was relevant.” Dkt. 367-5 at 121:14-122:22.
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`Accordingly, Dr. Rosenberg’s opinions regarding structural equivalents should be excluded.
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`IV. DRS. MADISETTI, BYSTROM, MAHER, AND WILLIAMS’ CHALLENGED
`SOURCE CODE OPINIONS LACK ANALYSIS
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`See Opp. at 11. Tellingly, in support of its analysis, Maxell provides zero citations to its experts’
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`Case 5:19-cv-00036-RWS Document 449 Filed 07/27/20 Page 6 of 8 PageID #: 25126
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`opinions. See id. at 11-12. Instead of showing its experts’ opinions are “undisputed,” Maxell’s
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`opposition instead proves Apple’s argument that the experts did not provide any opinions.
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` In Radware, Ltd. v. F5 Networks, Inc., the court excluded an expert’s
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`opinion because his report “consist[ed] solely of citations to evidence and his conclusions on [the
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`particular issue],” rightly concluding that the expert “did not perform any technical analysis that
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`would assist the jury” and explaining that Rule 26 and Federal Rule of Evidence 702 require an
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`expert “to offer something to close the analytical gap between the evidence and his opinions.”
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`No. 13-cv-02024, 2016 WL 590121, at *2 (N.D. Cal. Feb. 13, 2016).
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` Opp. at 12.
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`Fed. R. Evid. 702(a); Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 591 (1993).
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`5
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`Case 5:19-cv-00036-RWS Document 449 Filed 07/27/20 Page 7 of 8 PageID #: 25127
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`Dated: July 23, 2020
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`/s/ Luann L. Simmons
`Luann L. Simmons (Pro Hac Vice)
`lsimmons@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center
`28th Floor
`San Francisco, CA 94111
`Telephone: 415-984-8700
`Facsimile: 415-984-8701
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`Xin-Yi Zhou (Pro Hac Vice)
`vzhou@omm.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
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`Marc J. Pensabene (Pro Hac Vice)
`mpensabene@omm.com
`Laura Bayne Gore (Pro Hac Vice)
`lbayne@omm.com
`O’MELVENY & MYERS LLP
`Times Square Tower, 7 Times Square
`New York, NY 10036
`Telephone: 212-326-2000
`Facsimile: 212-326-2061
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`Melissa R. Smith (TX #24001351)
`melissa@gilliamsmithlaw.com
`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
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`Attorneys for Defendant Apple Inc.
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`6
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`Case 5:19-cv-00036-RWS Document 449 Filed 07/27/20 Page 8 of 8 PageID #: 25128
`Case 5:19-cv-OOO36-RWS Document 449 Filed 07/27/20 Page 8 of 8 PageID #: 25128
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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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