Case 5:19-cv-00036-RWS Document 452 Filed 07/29/20 Page 1 of 8 PageID #: 25379
`
`
`
`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 REPLY BRIEF IN SUPPORT OF ITS MOTION FOR PARTIAL
`SUMMARY JUDGMENT OF SUBJECT MATTER INELIGIBILITY UNDER 35 U.S.C.
`§ 101 FOR U.S. PATENT NOS. 6,748,317, 6,430,498, AND 6,580,999 [DKT. 359]
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 452 Filed 07/29/20 Page 2 of 8 PageID #: 25380
`
`
`Far from a “genuine invention,” the Navigation Patents claim the abstract idea of
`
`presenting navigation and location information to a walking user by displaying simple lines,
`
`arrows, or symbols on existing computers. Maxell provides no meaningful analysis to show
`
`otherwise. It provides only attorney arguments that the claims cover “hardware” to improve the
`
`“poor accuracy” of existing devices and a specific “graphical user interface.” But Maxell’s
`
`attorney arguments do not a create genuine dispute of material fact because they are contradicted
`
`by the both (1) the common specification, which states that the claimed hardware is “just like those
`
`of ordinary portable telephones,” ’317 at 2:62-31, and (2) testimony of its own expert, Dr.
`
`Rosenberg, who confirmed that the patents are unconcerned with “improvements to hardware,”
`
`such as “the accuracy or functionality” of “GPS, compasses, or any other sensors,” e.g., Ex. R at
`
`24:16-25:17, 69:9-25. The claimed user interface also fails to support patent-eligibility because it
`
`could scarcely be more primitive and generic―displaying a “location” using a “symbol,” a
`
`“direction” using an “arrow,” and a “route” using a “line.” In fact, the specification proposes such
`
`basic techniques so that they could be used even with “low in performance” prior art devices. Dr.
`
`Rosenberg confirmed that the claimed interface presents “less or simpler information” using “lines,
`
`arrows” as humans had done with “maps, papers, and pencils . . . before computers.” Id. at 200:15-
`
`201:13, 206:4-7, 209:5-15. Because there is nothing inventive or technological about using
`
`symbols, arrows, and lines to convey directions, the Navigation Patents are invalid under § 101.
`
`A.
`
`The Navigation Patents Claim An Abstract Idea
`
`At Alice step one, Maxell attempts to rebut Apple’s clear showing that the three Navigation
`
`Patents claim an abstract idea by simply block quoting every claim limitation and claim
`
`construction from each patent, and summarily concluding that the claims reflect “specific features”
`
`and “inventive concepts.” Opp. at 9, 10, 12, 14. To the extent Maxell provides any real analysis,
`
`it appears to contend that the claims cover (1) a “structured graphical user interface” for displaying
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 452 Filed 07/29/20 Page 3 of 8 PageID #: 25381
`
`
`directions and (2) “hardware” elements that resolve “poor accuracy and performance” in existing
`
`navigation technologies. Opp. at 9, 12. Maxell is incorrect on both counts.
`
`To support its first contention, Maxell cites three decisions to argue that graphical user
`
`interface claims are patent-eligible. Opp. at 7. But in all three, the courts emphasized that the user
`
`interfaces at issue were patentable because they were unconventional and specific:
`
`•
`
`•
`
`•
`
`In Data Engine Techs. LLC v. Google LLC, a claim used 95 words to specify an “electronic
`spreadsheet system for modeling user-specified information,” which the Court found to
`recite “a specific structure (i.e., notebook tabs) within a particular spreadsheet display that
`performs a specific function (i.e., navigating within a three-dimensional spreadsheet).” 906
`F.3d 999, 1006, 1009-10 (Fed. Cir. 2018).
`
`In Core Wireless Licensing S.A.R.L v. LG Elecs. Inc., a claim used 105 words to describe
`an “application summary window” that presented “an improved user interface” because it
`“allow[ed] the user to see the most relevant data or functions ‘without actually opening the
`application.’” 880 F.3d 1356, 1359, 1362 (Fed. Cir. 2018).
`
`In IDB Ventures LLC v. Charlotte Russe Holdings, Inc., a claim used 134 words to detail
`the operation of a “query dialog box” that provided a “specific improvement over prior
`systems, consisting of the use of the query dialog box to facilitate the presentation, sorting,
`and selection of text data objects” using a “specific structure.” Ex. N (2:17-cv-660-WCB-
`RSP, Dkt. 96) at 2, 8-9 (E.D. Tex. Oct. 31, 2018).
`
`Indeed, the Federal Circuit in Data Engine contrasted the claimed user interface that
`
`presented a “technical solution and improvement in computer spreadsheet functionality,” with the
`
`“conventional” and “generic” user interfaces the court had rejected as not patent-eligible in several
`
`prior cases. 906 F.3d at 1008, 1010. For example, in Affinity Labs of Texas, LLC v. DIRECTV,
`
`LLC, the Federal Circuit rejected a claim reciting a “graphical user interface” that simply
`
`“display[ed] a menu of options to the user,” as it was neither “directed to an improvement” nor a
`
`“technological means” to solving any problem. 838 F.3d 1253, 1261-62 (Fed. Cir. 2016).
`
`Here, the Navigation Patents do not claim an unconventional, improved computer user
`
`interface, such as a “three-dimensional spreadsheet” or novel “query dialog box.” They instead
`
`claim depicting directions using simple lines, arrows, and symbols:
`
`2
`
`

`

`Case 5:19-cv-00036-RWS Document 452 Filed 07/29/20 Page 4 of 8 PageID #: 25382
`
`
`• The ’317 Patent, Claim 1 recites displaying “positions” of a “present place” and
`“destination,” and a “direction” between them, while Claim 17 adds using an “arrow,”
`“bent line,” and “symbols” to denote the “starting and ending points”;
`
`• The ’999 Patent, Claim 3 recites displaying “direction from said present place to the
`location” of another terminal and the “distance” between them;
`
`• The ’498 Patent, Claim 3 denotes “direction” and “distance” using a “line” and Claim 13
`denotes a “full route” as a “bent line” with a “symbol” for the “present location.”
`
`The common specification’s figures further confirm that the claimed interface is just simple
`
`lines, arrows, and dots as symbols. E.g., ’317 at Figs. 1, 3, 5. Indeed, the specification expressly
`
`proposes such a primitive interface precisely because it was simple enough to be used with existing
`
`“low in performance” portable terminals from the 1990s. Id. at 1:49-52, 9:64-67. Maxell’s expert
`
`Dr. Rosenberg agreed the claimed interface “presents navigation information. . . through lines,
`
`arrows,” which was “less or simpler information” compared to existing prior art map interfaces
`
`and something that humans had done using “maps, papers, and pencils . . . before computers.” Ex.
`
`R at 200:15-201:13, 206:4-7, 209:5-15.
`
`Maxell’s second contention—that the claims recite improved hardware “devices” with
`
`better “accuracy”—is debunked by the specification and Maxell’s expert Dr. Rosenberg. The
`
`specification does not even mention poor accuracy as a problem, let alone propose any solutions
`
`to improve it. To the contrary, it explains that its “portable terminal” is “low in performance” and
`
`uses existing, generic hardware “devices”―a “display device,” “input device,” “memory device,”
`
`“device for data communication,” “device for getting location information,” and “device for
`
`getting direction information.”―“just like those of ordinary portable telephones.” ’317 at 2:62-
`
`3:1, 9:42-59, Fig. 10. Dr. Rosenberg confirmed at least a dozen different ways in his deposition
`
`that the Navigation Patents are not “about improvements to hardware and all of [the components]
`
`that we’re talking about right now, a compass, gyroscope, a sensor such as a clinometer, a CPU.”
`
`3
`
`

`

`Case 5:19-cv-00036-RWS Document 452 Filed 07/29/20 Page 5 of 8 PageID #: 25383
`
`
`Ex. R at 69:9-25, 205:2-10; see also, e.g., id. at 54:5-15, 60:10-23, 71:11-72:3, 86:9-20. He twice
`
`specifically rejected that the patents even concern―let alone improve―the “accuracy” of prior art
`
`navigation products. Id. at 24:16-25:17, 209:25-210:10. The Navigation Patents therefore disclose
`
`no technological improvements and are abstract at Alice step one.
`
`B.
`
`The Navigation Patents Disclose No Inventive Concept
`
`At Alice step two, Maxell makes three arguments to attempt to save its claims, none having
`
`merit. First, Maxell mischaracterizes Apple’s motion as only addressing “each claimed piece of
`
`hardware individually,” but not as a “specific arrangement.” Opp. at 13. In truth, Apple’s motion
`
`explained that as an “ordered combination,” the claimed hardware “devices” just make up a
`
`“portable terminal” that the specification characterizes as “conventional,” “low in processing
`
`capacity,” “low in performance,” and typical of “an ordinary portable telephone and a PHS
`
`terminal.” Mot. at 12-13; ’317 at 2:37-39, 3:64-66, 9:40-49. Even Dr. Rosenberg, Maxell’s expert,
`
`confirmed that the patents “don’t require any specific arrangement of the components”; the
`
`components “merely have to be together on the same portable terminal.” Ex. R at 46:3-47:4.
`
`Second, unable to find any statements from the patents themselves to support
`
`inventiveness, Maxell engages in misdirection by citing out-of-context statements from Apple’s
`
`expert Dr. Paradiso that commercial navigation products from the 2000s had “flaky” radar or GPS
`
`sensors, provided “very coarse location,” and did not work well “indoors.” Opp. at 1, 14. But the
`
`Navigation Patents do nothing to resolve these problems. Indeed, Dr. Rosenberg cited these same
`
`statements from Dr. Paradiso in his report (Ex. O at ¶¶657-675, 681); but when asked about them
`
`at deposition, Dr. Rosenberg admitted that the Navigation Patents do not “improve any of the
`
`sensors like the GPS or radar sensors that Dr. Paradiso identifies as being flaky or deficient” and
`
`the patents never “talk about indoor navigation.” Ex. R at 202:7-13, 205:2-23, 209:25-210:10.
`
`Third, Maxell argues the jury’s verdict in the ZTE case finding representative Claim 1 of
`
`4
`
`

`

`Case 5:19-cv-00036-RWS Document 452 Filed 07/29/20 Page 6 of 8 PageID #: 25384
`
`
`the ’317 Patent “well-understood, routine, and conventional” is irrelevant because in ZTE, the
`
`Court did not adopt means-plus-function constructions as in this case. Opp. at 15. But as already
`
`addressed at length in Apple’s motion, the Court’s constructions list components (“CPU,” “GPS,”
`
`“compass,” “gyroscope,” “PHS,” “device for data communication” and “equivalents thereof”) that
`
`the specification characterizes as generic and conventional. Mot. at 9-10, 12. The Court’s
`
`constructions therefore do not change the outcome and the ZTE jury’s should apply here.
`
`C.
`
`’317 Patent, Claim 1 Is Representative As Maxell’s Own Cited Case Confirms
`
`Contrary to Maxell’s assertion, Apple has made a prima facie showing that the ’317 Patent,
`
`Claim 1 is representative by analyzing the language from all five asserted claims to show that all
`
`are directed to the same abstract idea of “presenting navigation and location information to a
`
`walking user.” See Mot. at 6-8; supra § A; Semantic Search Techs. LLC v. Aldo U.S., Inc., 425 F.
`
`Supp. 3d 758, 771-72 (E.D. Tex. 2019) (finding “independent claims are representative because
`
`the Asserted Claims . . . recite little more than the same abstract idea.’”). Any differences among
`
`the claims―e.g., displaying a “bent line” versus an “arrow,” or displaying a “destination” versus
`
`a “location of another portable terminal”―are trivial and do not change the patents’ abstract idea.
`
`And Maxell’s citation to PPS Data, LLC v. Jack Henry & Assocs., 404 F. Supp. 3d 1021
`
`(E.D. Tex. 2019) only supports Apple’s position. The court in PPS found the defendant made a
`
`prima facie case showing of representativeness because (1) the four asserted patents were subject
`
`to a common terminal disclaimer; (2) the patents shared a common specification; and (3)
`
`defendant’s arguments were tethered to the claim language. Id. at 1034-36. The same three
`
`considerations apply here: (1) the later-filed ’999 and ’317 Patents have terminal disclaimers that
`
`end their terms by the expiration date of the earlier-filed ’498 Patent (Exs. P, Q); (2) all three
`
`Navigation Patents share a common specification; and (3) as discussed, Apple analyzed language
`
`from all five asserted claims. Thus, the ’317 Patent, Claim 1 is representative.
`
`
`
`5
`
`

`

`Case 5:19-cv-00036-RWS Document 452 Filed 07/29/20 Page 7 of 8 PageID #: 25385
`
`
`Dated: July 29, 2020
`
`
`
`
`
`
`/s/ Luann L. Simmons
`
`
`
`Luann L. Simmons (Pro Hac Vice)
`lsimmons@omm.com
`Mark Liang (Pro Hac Vice)
`mliang@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
`
`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
`
`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
`
`Attorneys for Defendant Apple Inc.
`
`
`6
`
`

`

`Case 5:19-cv-00036-RWS Document 452 Filed 07/29/20 Page 8 of 8 PageID #: 25386
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that all counsel of record who are deemed to have
`
`consented to electronic service are being served with a copy of this document via the Court’s
`
`CM/ECF system per Local Rule CV-5(a)(3) on July 29, 2020.
`
`
`
`
`
`
`
`
`
`
`
`/s/ Melissa R. Smith
`Melissa R. Smith
`
`
`
`
`
`
`7
`
`