Case 5:19-cv-00036-RWS Document 451 Filed 07/27/20 Page 1 of 10 PageID #: 25148
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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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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.’S REPLY IN SUPPORT OF ITS MOTION TO STRIKE
`PORTIONS OF DEFENDANT APPLE INC.’S REBUTTAL EXPERT REPORTS
`BASED ON UNTIMELY CLAIM CONSTRUCTION POSITIONS
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`Case 5:19-cv-00036-RWS Document 451 Filed 07/27/20 Page 2 of 10 PageID #: 25149
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`TABLE OF CONTENTS
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`Dr. Bederson’s Rebuttal Expert Reports – the ’306 and ’991 Patents ............................... 1
`I.
`Dr. Paradiso’s Rebuttal Expert Report – the ’317, ’498, and ’999 Patents ....................... 2
`II.
`Dr. Bims’ Rebuttal Expert Report – the ’193 Patent ......................................................... 3
`III.
`IV. Dr. Bovik’s Rebuttal Expert Report – the ’493 Patent ...................................................... 4
`V.
`Dr. Mensacé’s Rebuttal Expert Reports – the ’438, ’586, and ’794 Patents ..................... 4
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`-i-
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`Case 5:19-cv-00036-RWS Document 451 Filed 07/27/20 Page 3 of 10 PageID #: 25150
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`Apple’s Opposition confirms Maxell’s position. Despite fighting for the ability to
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`construe additional claim terms and having received that ability from the Court, Apple developed
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`a strategy of not seeking constructions for terms it wanted its experts to interpret narrowly in
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`their rebuttal non-infringement expert reports under the guise of “plain and ordinary meaning.”
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`This strategy has allowed Apple to: (1) keep the scope of the claims broad for purposes of
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`pursuing its invalidity goals in front of the PTAB or the jury; and (2) confuse the jury by
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`disguising these claim construction positions as “factual disputes.” If Apple’s experts truly
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`believed that the plain and ordinary meanings of these terms are as stated in their non-
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`infringement expert reports, surely they would have mentioned these meanings in their invalidity
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`expert reports or in the IPRs. But Apple’s experts deliberately mentioned these alleged “plain
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`and ordinary meanings” for the first time in their non-infringement expert reports. This approach
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`should be stopped in its tracks.
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`I.
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`Dr. Bederson’s Rebuttal Expert Reports – the ’306 and ’991 Patents
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`’306 Patent. Apple is mischaracterizing Dr. Bederson’s clear claim construction
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`argument as plain and ordinary meaning. In his non-infringement report, Dr. Bederson stated:
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`Opp. at Ex. 2, Bederson Rpt. at ¶ 51 (emphasis added). Dr. Bederson is unequivocally opining
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`that the accused products do not meet the ringing sound generator claim element because the
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`accused products include a single memory. But the claim does not “recite” multiple memories.
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`This is the same argument Apple unsuccessfully offered at the Markman hearing by requiring
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`ringing sound generator to include multiple memories, and now Apple is attempting to make that
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`same argument by requiring at least two sound sources to mean at least two memories. See Opp.
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`Case 5:19-cv-00036-RWS Document 451 Filed 07/27/20 Page 4 of 10 PageID #: 25151
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`at Ex. 2, Bederson Rpt. at ¶¶ 56-67 (including paragraphs of opinions that read like a claim
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`construction declaration discussing how the specification discloses multiple memories). Dr.
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`Bederson goes even further and opines on how the specification discloses specific types of
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`coding methods in the sound sources, concluding that the claim is not met because the accused
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`products do not “alert the user of an incoming call via synthesizing any sounds.” Id. at ¶¶ 62-67.
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`It is clear that Dr. Bederson is limiting the claims to require multiple memories and specific
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`types of coding requiring synthesizing of sound, despite the fact that Dr. Bederson’s invalidity
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`reports try to invalidate the same claims without mentioning memory once. Mot. at 4.
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`’991 Patent. As Apple admits, Dr. Bederson argues that the accused products do not
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`meet the “videophone function-added TV receiver” limitation because of the “lack of a TV tuner
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`and inability to receive and decode broadcast program signals transmitted according to television
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`standards.” Opp. at 4. Thus, Dr. Bederson is construing “videophone function-added TV
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`receiver” to necessarily require a TV tuner compliant with television standards, even though the
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`Court’s construction never mentions TV tuner or TV standards and the ’991 Patent discloses
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`accessing a video on demand server to access content over the Internet. See D.I. 404 at 9-11; see
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`also D.I. 422 at 11-15.
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`With respect to the term “display configured to display at least the first and the second
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`digital information,” Apple admits they are adding a temporal limitation (Opp. at 5) and with
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`respect to “pauses,” Apple admits that it is construing “pauses” to exclude stops. Opp. at 5.
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`II.
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`Dr. Paradiso’s Rebuttal Expert Report – the ’317, ’498, and ’999 Patents
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`“Direction” Limitations. Both Apple’s Opposition and Dr. Paradiso at his deposition
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`confirm that he is construing the claim to exclude embodiments disclosed in Figure 3. Ex. 15,
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`Paradiso Dep. Tr., at 85:21-86:9 (“interpreting this with the assistance of figures 3(a) through
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`3(b)”); see also Opp. at 6 (“Maxell objects that Dr. Paradiso did not consider Figures 3(c)-(f) in
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`Case 5:19-cv-00036-RWS Document 451 Filed 07/27/20 Page 5 of 10 PageID #: 25152
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`determining the scope of the ‘direction’ limitations. Mot. at 7. But those embodiments are not
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`relevant.”) (emphasis added). Figures 3(c)-(f) are absolutely relevant as the ’317 Patent
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`addresses Figure 3 collectively without characterizing (a)-(f) as being directed to different
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`embodiments where one excludes the others. Ex. 14, ’317 Patent, 4:51-53 (“FIG. 3 shows how
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`data compression is controlled for the “Route Guidance Service” by the portable terminal…with
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`the function of walking navigation”). Nothing in the claim requires a “straight line or arrow.”
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`PHS Requirement. The Court’s construction does not require the entire PHS; it requires
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`a component of a PHS (device for data communication). See D.I. 404 at 6-9. Apple admits that
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`Dr. Paradiso is relying on extrinsic evidence to limit the meaning of PHS to exclude cellular
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`communication protocols and limit to using PSTN or ISDN only networks. Opp. at 7-8. And yet
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`Dr. Paradiso admits that the specification does not limit PHS in such a way. Mot. at 8. Indeed,
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`the ’317 Patent explicitly discloses relying on cellular networks. Ex. 14, ’317 Patent at 5:64-67
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`(“cellular”), 9:21-26 (“wireless network”), 1:45-52 and 2:44-49 (Internet communications).1
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`III.
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`Dr. Bims’ Rebuttal Expert Report – the ’193 Patent
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`Apple’s Opposition confirms that Dr. Bims is construing “connected to” in the asserted
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`claims to necessarily require “separate discrete dedicated analog components for ‘receiver’
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`‘transmitter’ ‘encoder/decoder’ and ‘controller’” and that a “dedicated encoder/decoder
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`apparatus that is outside of and connected to the controller” needs to be present. Mot. at 8. But
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`“discrete or dedicated are not expressly found in the claim” or the patent. Ex. 21, Bims Dep. Tr.
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`at 89:3-7, 92:7-13. Apple fails to address several of Maxell’s arguments in its Opposition. First,
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`the ’193 Patent explicitly teaches away from limiting the claims in this way. Ex. 17, ’193 Patent
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`1 If this was truly a plain and ordinary meaning dispute, Apple or Dr. Bederson would have mentioned
`PHS’s when arguing invalidity of the same claim elements. Instead, in its IPR Apple does not even
`mention PHS for these came claim elements let alone a PHS limited to non-cellular communications,
`instead construing the term to not require a PHS. Ex. 25, IPR2020-00409 Pet. at 29-31; Ex. 26, IPR2020-
`00409 Expert Decl. Ex. 1003 at ¶¶ 106-108; Ex. 27, IPR2020-00407 Pet. at 16; id. at 40-41.
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`Case 5:19-cv-00036-RWS Document 451 Filed 07/27/20 Page 6 of 10 PageID #: 25153
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`3:30-41, 10:47-60. Second, if this truly was a plain and ordinary meaning dispute, Dr. Bims
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`would not have interpreted the claim by pointing to the same “logic circuit 23” of prior art
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`Waldroup as two components and same “baseband processing circuit 15” of prior art Nakayama
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`as three components. Mot. at 9. Third, Apple’s IPR never mentions “separate” or “dedicated”
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`components when mapping the prior art. Ex. 22, IPR2020-00203 Pet.2
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`IV.
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`Dr. Bovik’s Rebuttal Expert Report – the ’493 Patent
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`The Opposition confirms that Apple is construing “all signal charges accumulated in all
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`N number of . . .pixel lines” to exclude “N number.” Opp. at 9. “All N number…of pixel lines”
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`does not mean “all pixel lines.” See D.I. 422 at 3-11. Regarding claim 6, there is no negative
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`limitation in the claim excluding “image stability correction” from being during, for example,
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`post-processing. Opp. at 10.
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`V.
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`Dr. Mensacé’s Rebuttal Expert Reports – the ’438, ’586, and ’794 Patents
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`Authentication Process. Dr. Menascé opines that “an authentication is necessarily a
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`two-way communication” (Ex. 4, Menascé ’438/’586 Rpt. at ¶ 90) even though there is no
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`mention of “two-way” in the Court’s construction. The word “two-way” never appears in
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`Apple’s IPR for the ’438 Patent. Ex. 23, IPR2020-00201 Pet. Apple admits Dr. Menascé is
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`construing this term to require two-way communication, but Apple attempts to discount this by
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`alleging that Dr. Menascé is just agreeing with Dr. Williams. Opp. at 12. And yet Dr. Menascé
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`states in his report that he disagrees with Dr. Williams. Ex. 4, Menascé ’438/’586 Rpt. at ¶ 90.
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`Furthermore, Dr. Williams never mentions “two-way” communication in any portion of his
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`report let alone in paragraphs 152, 322, or 411. Dr. Williams’ report describes how “AirDrop
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`2 Apple also does not address that Dr. Bims mentions “separate” over twenty times in his non-
`infringement report. See Ex. 2. In contrast, “separate” was not even mentioned once in Dr. Bims’
`invalidity report to discuss the arrangement of components. See Ex. 18.
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`Case 5:19-cv-00036-RWS Document 451 Filed 07/27/20 Page 7 of 10 PageID #: 25154
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`Discovery Flow” meets the claimed authentication under the Court’s construction, not that
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`authentication is met because of two-way communication.3
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`Display Apparatus. There is no construction in this case that the preamble of a claim is
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`limiting. Apple’s opposition confirms that Dr. Menascé is construing the preamble to be limiting
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`without any construction in this case of the same and is essentially relying on attorney oral
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`argument given at the Markman hearing. Opp. at 12-13.
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`if and only iff. The claim recites “if” not “if and only if.” The words of the claims
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`matter. Dr. Menascé literally said that the claims “can be rewritten using the logical if and only if
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`(shortened as iff) connector.” Ex. 4, Menascé ’438/’586 Rpt. at ¶ 55. Rewriting is not
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`“explaining” the plain and ordinary meaning.
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`’794 Patent. Apple admits that it wants the jury to decide whether “when” as recited by
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`the claim excludes the scenario where the second event occurs any time after the first occurs.
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`Opp. at 14. This is not a factual dispute, and the jury should not be charged with resolving claim
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`construction disputes.
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`’586 Patent. Apple’s argument is cyclical and admits that Dr. Menascé is construing
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`“memory which previously stores” to mean previously stores in the factory. Opp. at 15 (stating
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`). There is no requirement in the claim that the accused devices must come pre-
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`paired from the factory. There is also no mention of being pre-paired or stored in the factory in
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`Apple’s corresponding IPR. Ex. 24, IPR2020-00202 Pet. at 25-28.
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`Accordingly, the opinions identified in Apple’s Motion should be stricken.
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`3 In trying to cast Dr. Menascé’s claim construction opinion as the mere application of plain and ordinary
`meaning, Apple’s counsel has now admitted that Dr. Mensacé’s non-infringement opinion was incorrect
`in arguing that
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`Opp. at 12.
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`Case 5:19-cv-00036-RWS Document 451 Filed 07/27/20 Page 8 of 10 PageID #: 25155
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`Dated: July 23, 2020
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`By:
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`/s/ Jamie B. Beaber
`Geoff Culbertson
`Kelly Tidwell
`Patton, Tidwell & Culbertson, LLP
`2800 Texas Boulevard (75503)
`Post Office Box 5398
`Texarkana, TX 75505-5398
`Telephone: (903) 792-7080
`Facsimile: (903) 792-8233
`gpc@texarkanalaw.com
`kbt@texarkanalaw.com
`
`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`William J. Barrow
`Baldine B. Paul
`Tiffany A. Miller
`Michael L. Lindinger
`Saqib J. Siddiqui
`Bryan C. Nese
`Alison T. Gelsleichter
`Clark S. Bakewell
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006
`Telephone: (202) 263-3000
`Facsimile: (202) 263-3300
`jbeaber@mayerbrown.com
`agrimaldi@mayerbrown.com
`klevy@mayerbrown.com
`jfussell@mayerbrown.com
`wbarrow@mayerbrown.com
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`mlindinger@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`agelsleichter@mayerbrown.com
`cbakewell@mayerbrown.com
`
`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
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`Case 5:19-cv-00036-RWS Document 451 Filed 07/27/20 Page 9 of 10 PageID #: 25156
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`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 451 Filed 07/27/20 Page 10 of 10 PageID #: 25157
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 23rd day of July, 2020, with a copy of this document via
`electronic mail pursuant to Local Rule CV-5(d).
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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