Case 5:19-cv-00036-RWS Document 455 Filed 07/29/20 Page 1 of 13 PageID #: 25505
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
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`Plaintiff,
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`Defendants.
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`Civil Action No. 5:19-cv-00036
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.’S SUR-REPLY IN OPPOSITION OF APPLE’S
`MOTION TO EXCLUDE THE TESTIMONY OF ROBERT L. STOLL
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`Case 5:19-cv-00036-RWS Document 455 Filed 07/29/20 Page 2 of 13 PageID #: 25506
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`TABLE OF CONTENTS
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`This Is a Question of Weight, Not Admissibility. ............................................................. 2
`Mr. Stoll’s Opinions on Public Accessibility Are Relevant and Admissible. ................... 2
`A.
`The Abowd Publication ......................................................................................... 2
`B.
`The Cyberguide Prototypes.................................................................................... 3
`C.
`The Navtalk Device ............................................................................................... 4
`D.
`The Sony Cameras ................................................................................................. 4
`Apple’s New Evidence Should Be Given No Weight. ...................................................... 5
`CONCLUSION .................................................................................................................. 5
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`I.
`II.
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`III.
`IV.
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`i
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`Case 5:19-cv-00036-RWS Document 455 Filed 07/29/20 Page 3 of 13 PageID #: 25507
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Advanceme, Inc. v. Rapidpay,
`No. 6:05-CV-424, 2007 U.S. Dist. LEXIS 117675 (E.D. Tex. July 9, 2007) ...........................5
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`Cybergym Research, LLC v. Icon Health & Fitness, Inc.,
`No. 2:05-CV-527, 2007 U.S. Dist. LEXIS 102197 (E.D. Tex. Sep. 4, 2007) ...........................1
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`Greene v. Toyota Motor Corp.,
`No. 3:11-CV-207-N, 2014 U.S. Dist. LEXIS 190973 (N.D. Tex. May 7, 2014) ......................5
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`Ihde v. HME, Inc.,
`No. 4:15-CV-00585, 2017 U.S. Dist. LEXIS 120933 (E.D. Tex. Aug. 1, 2017) ......................2
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`Network-1 Techs. v. Alcatel-Lucent USA, Inc.,
`No. 11-CV-492, 2017 U.S. Dist. LEXIS 154434 (E.D. Tex. Sep. 21, 2017) ............................1
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`Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008)..................................................................................................4
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`Zimmer Surgical, Inc. v. Stryker Corp.,
`365 F. Supp. 3d 466 (D. Del. 2019) ...........................................................................................2
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`ii
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`Case 5:19-cv-00036-RWS Document 455 Filed 07/29/20 Page 4 of 13 PageID #: 25508
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`TABLE OF EXHIBITS
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`Exhibit No. Description
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`1
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`2
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`3
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`4
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`5
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`6
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`Expert Report of Robert L. Stoll (June 4, 2020)
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`Excerpts from the Deposition of Robert Stoll (June 18, 2020)
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`Excerpts from the Opening Expert Report of Dr. Joseph A.
`Paradiso Regarding Invalidity of U.S. Patent Nos. 6,748,317,
`6,580,999, and 6,430,498 (May 7, 2020)
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`Excerpts from the Opening Expert Report of Dr. Alan C. Bovik
`Regarding Invalidity of U.S. Patent No. 8,339.493 (May 7,
`2020)
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`Expert Report of Jacob Munford Concerning Publication and
`Public Accessibility (May 7, 2020)
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`Excerpts from the USPTO Manual of Patent Examining
`Procedure, Ninth Edition, Revision 10.2019 (Last Revised June
`2020)
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`iii
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`Case 5:19-cv-00036-RWS Document 455 Filed 07/29/20 Page 5 of 13 PageID #: 25509
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`TABLE OF ABBREVIATIONS
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`Term
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`Meaning
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`Apple
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`Defendant Apple Inc.
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`Maxell
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`Plaintiff Maxell, Ltd.
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`Mot.
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`Apple’s Motion to Exclude the Testimony of Robert L. Stoll
`(Dkt. 357)
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`Munford
`Rep.
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`Expert Report of Jacob Munford Concerning Publication and
`Public Accessibility, served May 7, 2020 (excerpts attached as
`Ex. 5)
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`Opp.
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`Maxell’s Opposition to Apple’s Motion to Exclude the
`Testimony of Robert L. Stoll (Dkt. 397)
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`Stoll Dep. Deposition of Robert L. Stoll, taken June 18, 2020 (excerpts
`attached as Ex. 2)
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`Stoll Rep.
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`Expert Report of Robert L. Stoll, served June 4, 2020 (excerpts
`attached as Ex. 1)
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`USPTO
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`United States Patent and Trademark Office
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`iv
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`Case 5:19-cv-00036-RWS Document 455 Filed 07/29/20 Page 6 of 13 PageID #: 25510
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`Apple’s Reply offers nothing new. It simply repeats the same stale arguments and
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`distinguishable case law as its opening brief. In particular, Apple fails to explain why any
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`criticisms it has of Mr. Stoll’s testimony cannot be cured by capable cross-examination.
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`Apple does not challenge Mr. Stoll’s qualifications to testify regarding USPTO practices
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`and procedures, nor does it dispute that courts routinely find such testimony to be proper. Apple
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`also has no response to the authority cited in Maxell’s Opposition that plainly permits such
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`experts to present on issues such as pre-suit notice and marking, patent priority dates, laches,
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`unclean hands, waiver, and estoppel. See Opp. at 3 (citing Zimmer Surgical, Inc. v. Stryker
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`Corp., 365 F. Supp. 3d 466, 497 (D. Del. 2019); Network-1 Techs. v. Alcatel-Lucent USA, Inc.,
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`No. 11-CV-492, 2017 U.S. Dist. LEXIS 154434, at *14 (E.D. Tex. Sep. 21, 2017); Cybergym
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`Research, LLC v. Icon Health & Fitness, Inc., No. 2:05-CV-527, 2007 U.S. Dist. LEXIS 102197,
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`at *18 (E.D. Tex. Sep. 4, 2007)). Mr. Stoll should likewise be permitted to testify regarding
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`public availability and the use and sale of alleged prior art references, including the kinds of
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`evidence the USPTO considers in determining if publications and products are prior art.
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`Rather than address any of these issues directly, Apple’s Reply continues to misconstrue
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`Mr. Stoll’s opinions. Both Maxell’s Opposition and Mr. Stoll himself during his deposition
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`repeatedly assured Apple that he would be testifying only on matters related to USPTO practice
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`and procedure—not on technical issues or on legal standards. Opp. at 6; Stoll Dep., at 19:2-4,
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`58:20-59:2, 118:15-21, 120:11-21, 122:21-123:11, 217:3-13. The basis for Apple’s continued
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`fear that Mr. Stoll will testify regarding anything else remains a mystery.
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`Apple’s assertion that Mr. Stoll provides opinions “related to legal standards for
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`determining public accessibility that are not the same as this Court’s” is simply incorrect. Reply
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`at 1. Mr. Stoll is not providing any opinions on legal standards to instruct the Court or the jury on
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`1
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`Case 5:19-cv-00036-RWS Document 455 Filed 07/29/20 Page 7 of 13 PageID #: 25511
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`the law, but is instead applying established legal principles of public availability used by the
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`USPTO—the same standard used in this Court—to perform his analysis. Opp. at 1, 9.
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`As re-iterated below, Mr. Stoll’s opinions on the discrepancies and insufficiency of
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`Apple’s evidence are based on his qualified expertise at the USPTO performing the same sort of
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`analyses, and any disagreement of its value to the jury is a question of weight, not admissibility.
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`Apple’s motion should be denied.
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`I.
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`This Is a Question of Weight, Not Admissibility.
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`Even though Apple has already questioned Mr. Stoll during his deposition, it continues to
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`declare that cross-examination would be impossible because Mr. Stoll’s experience differs from
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`the experience of Apple’s expert. Reply at 1-2. But that is a question of weight, not admissibility.
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`See Zimmer, 365 F. Supp. 3d at 497; Ihde v. HME, Inc., No. 4:15-CV-00585, 2017 U.S. Dist.
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`LEXIS 120933, at *31 (E.D. Tex. Aug. 1, 2017). Mr. Stoll is well-qualified to provide an
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`analysis of the discrepancies found in Apple’s evidence of public knowledge, use, or sale, and
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`Apple can cross-examine Mr. Stoll on these issues, or rely on its expert’s opposing opinions.
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`II. Mr. Stoll’s Opinions on Public Accessibility Are Relevant and Admissible.
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`Despite repeatedly being told that Mr. Stoll will not testify on technical issues, Apple still
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`believes this to be the case. Reply at 3-5. Again, Mr. Stoll will not testify on legal standards or
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`technical issues. Instead, based on his decades of experience performing similar analysis at the
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`USPTO, Mr. Stoll offers an analysis on the underlying factual evidence of public accessibility,
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`public knowledge, public use, and public sale related to the printed publication and products
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`Apple relies on as prior art: Abowd, Cyberguide, the Navtalk device, and the Sony Cameras.
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`A.
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`The Abowd Publication
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`Apple continues to mischaracterize Mr. Stoll’s testimony on Abowd. Specifically, Apple
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`asserts that Mr. Stoll should not offer opinions on the public accessibility of Abowd because
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`Case 5:19-cv-00036-RWS Document 455 Filed 07/29/20 Page 8 of 13 PageID #: 25512
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`“how the USPTO would analyze public accessibility is not an issue in this case.” Reply at 2.
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`But Mr. Stoll has no desire to opine on any hypotheticals. Instead, Mr. Stoll performs an
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`analysis of the public accessibility of Abowd by pointing out facts to the jury that Apple’s own
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`library expert overlooked. See Opp. at 9; Opp., Ex. 1, Stoll Rep. at ¶ 118-20. Mr. Stoll does more
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`than just repeat those facts: he puts them into the proper context based on his experience and
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`expertise with USPTO practice and procedure. The cross-examination of Apple’s witnesses
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`alone cannot stand in for this analysis.
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`B.
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`The Cyberguide Prototypes
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`Mr. Stoll’s analysis on the public use of the Cyberguide prototypes is similarly sound.
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`Here, Apple clings to Sundance for its theory that Mr. Stoll is offering technical analysis
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`reserved for one with “technical expertise.” Reply at 3. On this point, Apple asserts that Mr.
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`Stoll’s recognition that some Cyberguide prototypes were “‘undeveloped’ requires an
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`understanding of what features a skilled artisan would have considered sufficient for
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`functioning.” Id.
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`This is not an accurate picture of Mr. Stoll’s opinions. Mr. Stoll did not “determine” that
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`the Cyberguide prototype relied on by Apple was not fully developed. Rather, that determination
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`was already made by the author of Abowd—the source of Apple’s prior art disclosures. Opp.,
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`Ex. 3, Munford Rep., Exhibit 2C, Abowd at 425 (“We first built a proof of concept tour of the
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`Georgia Tech campus (shown in figure 4). We also developed a more functional outdoor
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`prototype … described later.” (emphasis added)). Mr. Stoll has not offered any technical
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`opinions. Instead, he has explained that several prototypes of Cyberguide existed, some which
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`remained a “proof of concept,” and that Apple’s expert, Dr. Paradiso, fails to acknowledge this
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`or explain whether he is relying on the “proof of concept” device or some other version for his
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`invalidity opinions. Opp., Ex. 1, Stoll Rep., at ¶ 140. Far from a technical opinion, Mr. Stoll’s
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`Case 5:19-cv-00036-RWS Document 455 Filed 07/29/20 Page 9 of 13 PageID #: 25513
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`testimony instead discusses the insufficiency of Apple’s evidence. Id. Based on his USPTO
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`expertise and the evidence before him, Mr. Stoll concludes that there is “not enough information
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`provided to understand what prototype Dr. Paradiso is relying on as prior art.” Id. at ¶ 143.
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`There is nothing technical about this conclusion.
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`C.
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`The Navtalk Device
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`Apple’s arguments regarding Navtalk simply repeat what it has already said in its
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`opening brief. Compare Reply at 3-4 with Mot. at 12-13. As Maxell already explained, Mr. Stoll
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`need not be an expert on sales records and bills of materials to offer his opinions: he relies on his
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`expertise reviewing these kinds of materials “[a]s someone who worked at the Patent Office” to
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`opine on public accessibility. Opp., Ex. 2, Stoll Dep., at 145:13-14.
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`Further, Mr. Stoll’s analysis of the defects and unreliability of the evidence relied on by
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`Apple for the Navtalk device is more than just an attempt to “read transcripts” to the jury. Reply
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`at 4; see Opp., Ex. 1, Stoll Rep., at ¶¶ 157-60. It is instead an analysis of the evidence presented,
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`viewed through the lens of his USPTO expertise, to explain that it is insufficient for Dr. Paradiso
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`to base his opinions solely on a declaration that was copied and pasted from another declarant
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`from another case ten years ago. See Opp., Ex. 1, Stoll Rep., at ¶ 165. Reading from a transcript
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`alone would not substitute for Mr. Stoll’s analysis of this evidence based on his expertise.
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`D.
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`The Sony Cameras
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`For the Sony Cameras, Apple’s Reply again misapplies Sundance and mischaracterizes
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`Mr. Stoll’s testimony. Reply at 4-5. Mr. Stoll’s opinions here highlight the differences between
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`these cameras, based in part on his experience identifying inauthentic and counterfeit products
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`while at the USPTO. Opp., Ex. 2, Stoll Dep., at 169:18-170:18. Also, unlike the expert in
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`Sundance, Mr. Stoll is not testifying on the technical issues of noninfringement or invalidity. See
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`Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1361-62 (Fed. Cir. 2008).
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`4
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`Case 5:19-cv-00036-RWS Document 455 Filed 07/29/20 Page 10 of 13 PageID #: 25514
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`Apple’s final complaint about Mr. Stoll’s mention of a magazine mailing label is
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`confusing at best. Reply at 5. It is Apple’s burden to prove clearly and convincingly the public
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`availability of the Sony Cameras, and Mr. Stoll does not need to be an expert in the field of
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`magazine labels—whatever that might mean—to point out that a particular mailing label shows a
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`date that is after the critical date as a basis for his opinion that Apple has not met its burden.
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`III. Apple’s New Evidence Should Be Given No Weight.
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`Apple attempts to use its Reply to submit new evidence: a website screenshot discussing
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`what a “non-circulating” note in the “location field” means at the Yale Library. Reply, Ex. 5.
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`Purportedly, Apple offers this new evidence to contradict Mr. Stoll’s opinions on a similar stamp
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`found on Abowd. Apple’s submission is improper. See Greene v. Toyota Motor Corp., No. 3:11-
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`CV-207-N, 2014 U.S. Dist. LEXIS 190973, at *4 (N.D. Tex. May 7, 2014) (“A movant may not
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`submit, and the Court will not consider, new evidence with a reply brief.”).
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`Maxell’s opposition did not raise any issue about the meaning of Abowd’s “DO NOT
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`CIRCULATE” designation. Instead, Maxell merely noted that the finding of an unexplained
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`label that calls into question a book’s public accessibility is the kind of evidence Mr. Stoll is
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`adept to analyze given his experience at the USPTO. Opp. at 9. It was improper for Apple to first
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`present this document—which no expert has relied upon and no party produced during
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`discovery—in a reply brief. See Advanceme, Inc. v. Rapidpay, No. 6:05-CV-424, 2007 U.S. Dist.
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`LEXIS 117675, at *12-13 (E.D. Tex. July 9, 2007) (“[T]his district does not favor the
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`introduction of evidence obtained after the completion of discovery.”). Apple’s new evidence is
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`thus untimely and, ultimately, irrelevant to the issue of whether Mr. Stoll should testify.
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`IV. CONCLUSION
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`For at least the foregoing reasons, Apple’s Motion to Exclude the Testimony of Robert
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`Stoll should be denied.
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`5
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`Case 5:19-cv-00036-RWS Document 455 Filed 07/29/20 Page 11 of 13 PageID #: 25515
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`Dated: July 29, 2020
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`6
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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 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
`Luiz Miranda
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`Case 5:19-cv-00036-RWS Document 455 Filed 07/29/20 Page 12 of 13 PageID #: 25516
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`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`lmiranda@mayerbrown.com
`
`Graham (Gray) M. Buccigross
`MAYER BROWN LLP
`3000 El Camino Real, Suite 2-300
`Palo Alto, CA 94306
`(650) 331-2000
`gbuccigross@mayerbrown.com
`
`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 455 Filed 07/29/20 Page 13 of 13 PageID #: 25517
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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 29th day of July 2020, with a copy of this document via
`the Court’s CM/ECF system.
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`
`
`/s/ Jamie B. Beaber
`Jamie B. Beaber
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