Case 5:19-cv-00036-RWS Document 457 Filed 07/30/20 Page 1 of 14 PageID #: 25535
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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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`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 REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY
`JUDGMENT OF NO INVALIDITY OF U.S. PATENT NOS. 6,748,317, 6,580,999, AND
`6,430,498 IN VIEW OF THE ABOWD AND CYBERGUIDE ALLEGED PRIOR ART
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`Case 5:19-cv-00036-RWS Document 457 Filed 07/30/20 Page 2 of 14 PageID #: 25536
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`TABLE OF CONTENTS
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`I.
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`This Court Should Give No Weight to Inadmissible Evidence ......................................... 1
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`II.
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`Apple Cannot Show That Abowd or Cyberguide Qualify As Prior Art ............................ 2
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`A. Abowd’s Public Accessibility ...................................................................................... 2
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`B. Cyberguide’s Public Use .............................................................................................. 4
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`i
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`Case 5:19-cv-00036-RWS Document 457 Filed 07/30/20 Page 3 of 14 PageID #: 25537
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Acceleration Bay, LLC v. Activision Blizzard Inc.,
`908 F.3d 765 (Fed. Cir. 2018)....................................................................................................3
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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) .......................1, 2
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`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016)..................................................................................................2
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`Brandon v. Sage Corp.,
`808 F.3d 266 (5th Cir. 2015) .....................................................................................................1
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`Candela Corp. v. Palomar Med. Techs., Inc.,
`No. 9:06-CV-277, 2008 WL 11441909 (E.D. Tex. Sept. 24, 2008) ..........................................4
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`Clock Spring, L.P. v. Wrapmaster, Inc.,
`560 F.3d 1317 (Fed. Cir. 2009)..................................................................................................5
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`Colucci v. Callaway Golf Co.,
`750 F. Supp. 2d 767 (E.D. Tex. 2010) .......................................................................................5
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`Cummins-Allison Corp. v. Glory Ltd.,
`2006 U.S. Dist. LEXIS 105083 (E.D. Tex. Jan. 23, 2006) ........................................................2
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`Dey, L.P. v. Sunovion Pharm., Inc.,
`715 F.3d 1351 (Fed. Cir. 2013)..................................................................................................5
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`Galindo v. Precision American Corp.,
`754 F. 2d 1212 (5th Cir. 1985) ..................................................................................................3
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`Intergraph Corp. v. Intel Corp.,
`No. 2:01-cv-160, 2002 U.S. Dist. LEXIS 29660 (E.D. Tex. June 18, 2002) ............................2
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`Invitrogen Corp. v. Biocrest Mfg., L.P.,
`424 F.3d 1374 (Fed. Cir. 2005)..................................................................................................4
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`Juicy Whip, Inc. v. Orange Bang, Inc.,
`292 F.3d 728 (Fed. Cir. 2002)....................................................................................................5
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`Krim v. BancTexas Grp., Inc.,
`989 F.2d 1435 (5th Cir. 1993) ...............................................................................................1, 3
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`ii
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`Case 5:19-cv-00036-RWS Document 457 Filed 07/30/20 Page 4 of 14 PageID #: 25538
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`Oram v. Linderman,
`No. CV-12-02450-PHX-FJM (BSB), 2014 U.S. Dist. LEXIS 78138 (D. Ariz.
`June 9, 2014) ..............................................................................................................................2
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`Stamps.com Inc. v. Endicia, Inc.,
`437 F. App’x 897 (Fed. Cir. 2011) ............................................................................................4
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`Other Authorities
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`Fed. R. Civ. P. 56(c)(2) ....................................................................................................................2
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`iii
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`Case 5:19-cv-00036-RWS Document 457 Filed 07/30/20 Page 5 of 14 PageID #: 25539
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`TABLE OF EXHIBITS
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`(Including Exhibits From Maxell’s Motion, Dkt. 382)
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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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`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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`Expert Report of Robert L. Stoll (June 4, 2020)
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`Expert Report of Jacob Robert Munford Concerning
`Publication and Public Accessibility and exhibits (May 7, 2020)
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`Deposition Transcript of Jacob R. Munford (June 19, 2020)
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`Document entitled “Cyberguide: A Mobile Context-Aware
`Tour Guide” (“Abowd”)
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`iv
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`Case 5:19-cv-00036-RWS Document 457 Filed 07/30/20 Page 6 of 14 PageID #: 25540
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`TABLE OF ABBREVIATIONS
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`Term
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`Meaning
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`Maxell’s Motion or
`Mot.
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`Maxell’s Motion for Partial Summary Judgment of No
`Invalidity of U.S. Patent Nos. 6,748,317, 6,580,999,
`and 6,430,498 in View of the Abowd and Cyberguide
`Alleged Prior Art (Dkt. 382)
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`Opp.
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`Apple’s Response in Opposition to Maxell’s
`Motion for Partial Summary Judgment of No Invalidity
`of U.S. Patent Nos. 6,748,317, 6,580,999, and
`6,430,498 in View of the Abowd and Cyberguide
`Alleged Prior Art (Dkt. 429)
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`v
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`Case 5:19-cv-00036-RWS Document 457 Filed 07/30/20 Page 7 of 14 PageID #: 25541
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`Apple’s response confirms that the evidence on record does not meet the bar to establish
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`by clear and convincing evidence that the “Abowd” publication and “Cyberguide” prototypes
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`were publicly available prior to the critical date. Apple acknowledges that there are “a series of
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`doubts about Apple’s evidence.” Opp. at 1. These doubts do not create factual disputes. Instead,
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`they resolve the legal question of whether Apple’s evidence shows that the Abowd publication
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`was accessible to the public over twenty years ago, and that a Cyberguide prototype was in
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`public use over twenty years ago.
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`Realizing its failure, Apple introduces six new evidentiary exhibits in its Response never
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`produced before in this case. Opp. Exs 3, 4, 12-14. No expert has opined on this evidence. Apple
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`cannot supplement discovery in an effort to create a factual dispute retroactively. Advanceme,
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`Inc. v. Rapidpay, No. 6:05-CV-424, 2007 U.S. Dist. LEXIS 117675, at *12-13 (E.D. Tex. July 9,
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`2007). Further, the evidence presented does not create any genuine issue of material fact.
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`Brandon v. Sage Corp., 808 F.3d 266, 270 (5th Cir. 2015). Apple provides nothing more than
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`unsupported attorney arguments that are unavailing to the question of public accessibility or
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`public use. Krim v. BancTexas Grp., Inc., 989 F.2d 1435, 1449 (5th Cir. 1993) (“[s]ummary
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`judgment [] may be appropriate . . . if the nonmoving party rests merely upon conclusory
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`allegations, improbable inferences, and unsupported speculation.”). Even in the light most
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`favorable to Apple, the totality of evidence does not provide a legally sufficient basis to show
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`that Abowd was publically accessible, or that Cyberguide was in public use. In fact, it
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`demonstrates that Apple is scrambling at the last minute to meet its burden. These failings are
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`fatal to Apple’s invalidity analysis, and this Court should therefore grant Maxell’s Motion.
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`I.
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`This Court Should Give No Weight to Inadmissible Evidence
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`In an attempt to create a factual dispute, Apple is using its response to submit new
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`evidence after discovery has closed and both sides experts have submitted expert reports and
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`1
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`Case 5:19-cv-00036-RWS Document 457 Filed 07/30/20 Page 8 of 14 PageID #: 25542
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`been deposed. See Opp. Exs. 3-4, 12-14 (containing alleged screenshots taken on July, 2020);
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`Dkt. 429, Liang Decl. Apple has offered no basis for failing to produce this evidence earlier. This
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`Court recognizes such tactics, and precludes supplementing the record with evidence introduced
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`after the close of discovery. 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) (citing cases); Cummins-Allison Corp. v.
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`Glory Ltd., 2006 U.S. Dist. LEXIS 105083, at *5 (E.D. Tex. Jan. 23, 2006) (“[d]iscovery
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`misconduct may suggest that a party is not comfortable with its position on the merits.”)
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`The time for introducing new evidence of Abowd’s public accessibility has passed, and
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`Apple’s new evidence is inadmissible at trial and should be given no weight. Advanceme, Inc.,
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`2007 U.S. Dist. LEXIS 117675, at *12-13 (“this district does not favor the introduction of
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`evidence obtained after the completion of discovery”); see also Intergraph Corp. v. Intel Corp.,
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`No. 2:01-cv-160, 2002 U.S. Dist. LEXIS 29660, at *2 (E.D. Tex. June 18, 2002) (“[t]he rules
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`have teeth [and] they put structure to litigation that otherwise would be unmanageable.”).
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`Inadmissible evidence has no place in a summary judgment motion. Fed. R. Civ. P. 56(c)(2);
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`Oram v. Linderman, No. CV-12-02450-PHX-FJM (BSB), 2014 U.S. Dist. LEXIS 78138, at *12
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`(D. Ariz. June 9, 2014) (“[w]ithout admissible evidence, Plaintiff fails to create a genuine issue
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`of disputed fact.”). Apple’s new evidence—Exhibits 3, 4, 12-14—should be given no weight.
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`II.
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`Apple Cannot Show That Abowd or Cyberguide Qualify As Prior Art
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`A. Abowd’s Public Accessibility—Apple has not shown that Abowd was publicly
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`accessible by an interested artesian exercising reasonable diligence to locate it at the time. Blue
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`Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016). Apple’s arguments are
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`premised on two assumptions: 1) because a prior version of the Wireless Networks journal was
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`catalogued by the Pittsburgh library in 1995, the library must have also have catalogued a future
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`version of the journal containing Abowd “as it was released”; and 2) the library must have had
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`2
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`Case 5:19-cv-00036-RWS Document 457 Filed 07/30/20 Page 9 of 14 PageID #: 25543
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`the journal in its possession before it sent it to binding in 1998. But even in the light most
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`favorable to Apple, this is mere speculation.
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`First, Apple’s argument that the MARC record of the 1995 version of the Wireless
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`Networks journal shows when Abowd was catalogued at the Pittsburgh library is flawed. Apple
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`makes an unsupported attorney argument that the MARC record shows the library began
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`cataloguing issues of the journal in April 3, 1995. Opp. at 8. But Apple notes Abowd was written
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`on September 23, 1996. Opp. at 5. Thus, without more, the MARC record of the first volume has
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`no bearing on when future volumes of the journal—such as the volume containing Abowd—
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`were catalogued. Apple’s conclusion that this must “mean that after that date, the library would
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`have acquired each issue of the journal as it was released” is wishful speculation. Id.
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`Second, Apple argues that “the library must have had [Abowd] in its possession by
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`[1998] before sending it to be bound.” Opp. at 8. This is yet another unfounded conclusion. It’s
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`impossible to know when the journal containing Abowd arrived at the library because there is no
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`evidence or testimony about it. But even if true that the library had the journal in its possession
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`before it was bound in 1998, this has no bearing on the public accessibility of Abowd.
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`Apple’s unsupported assumptions about the MARC record and the journal binding is no
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`reason to deny Maxell’s motion. See Krim v. BancTexas Grp., Inc., 989 F.2d 1435, 1449 (5th
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`Cir. 1993) (“Summary judgment, to be sure, may be appropriate ... if the nonmoving party rests
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`merely upon conclusory allegations, improbable inferences, and unsupported speculation.”);
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`Galindo v. Precision American Corp., 754 F. 2d 1212, 1216 (5th Cir. 1985).
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`Even if this Court accepts Apple’s arguments as true, the test for public accessibility is
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`not library possession or when catalogued. Acceleration Bay, LLC v. Activision Blizzard Inc.,
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`908 F.3d 765, 772 (Fed. Cir. 2018). Apple’s own authority explains this, finding that an article
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`was publicly accessible not just because it was catalogued at Carnegie Mellon, but because it was
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`3
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`Case 5:19-cv-00036-RWS Document 457 Filed 07/30/20 Page 10 of 14 PageID #: 25544
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`“listed as available on its indexed website . . . a public forum where leaders in the field . . . would
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`have had access to.” Stamps.com Inc. v. Endicia, Inc., 437 F. App'x 897, 903 (Fed. Cir. 2011).
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`Here, Apple agrees that there is no question of website indexing because Apple is relying only
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`on “public availability of the hard copy” accompanied by attorney speculation. Opp. at 10.
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`Apple’s remarks towards former USPTO Commissioner Mr. Stoll do not generate a
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`dispute of material fact. Maxell’s Motion does not depend on Mr. Stoll’s opinions but rests on
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`the premise that even when all of the facts presented by Apple are taken in totality, Apple has
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`failed to show how MARC records that pre-date the date listed on the article, a journal that has
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`“DO NOT CIRCULATE” stamped on it, and sending a journal for bindery establish by clear and
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`convincing evidence that Abowd was publicly available two decades ago. Apple simply failed to
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`meet its burden.1 Unlike the differing technical opinions between experts in Candela Corp. v.
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`Palomar Med. Techs., Inc., No. 9:06-CV-277, 2008 WL 11441909, at *2 (E.D. Tex. Sept. 24,
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`2008), pointing to a lack of evidence on public accessibility does not create “conflicting expert
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`opinions” of material fact. If this was the case here, Apple would not need to introduce new
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`exhibits to try to manufacture factual disputes.
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`B. Cyberguide’s Public Use—Apple’s arguments are equally insufficient to show a
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`Cyberguide prototype it relies on was in public use and ready for patenting on or before the
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`critical date. Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1378-79 (Fed. Cir. 2005).
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`Apple’s essentially argues that: 1) it does not need to show which prototype it uses as prior art
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`because every prototype was a fully-functional prototype with location, orientation, and
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`directions; and 2) at least one prototype was demonstrated to visitors to navigate the GVU open
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`houses and the quantity of attendees is irrelevant. Opp. at 11-15. Both of these arguments are
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`1Mr. Stoll’s qualifications are discussed at Dkt. 397. Further, Mr. Stoll does highlight various inconsistencies in the
`evidence (e.g., unexplained dates) but he does not dispute the meaning of “DO NO CIRCULATE” because Mr.
`Munford has not offered any meaning at all—something he should have given Apple’s position that it is a
`specialized term only an expert librarian can understand. Mot. Ex. 2, Stoll Rep. at ¶ 18, Opp. at 9.
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`4
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`Case 5:19-cv-00036-RWS Document 457 Filed 07/30/20 Page 11 of 14 PageID #: 25545
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`flawed as a matter of law and unsupported. Apple has not provided a single citation to its
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`expert’s report because Dr. Paradiso does not provide any opinion or analysis regarding which
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`prototype he is relying on to opine that the claims are obvious. Id.
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`First, Apple must show the specific subject of the barring public use activity that “met
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`each of the limitations of the claim.” Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728, 737
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`(Fed. Cir. 2002). To do this, it must show “by clear and convincing evidence the claimed
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`invention was in public use before the patent’s critical date.” Clock Spring, L.P. v. Wrapmaster,
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`Inc., 560 F.3d 1317, 1325 (Fed. Cir. 2009). It cannot meet its burden by generally referring to a
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`collection of prototypes, each with a different alleged public use date, without any specificity. Id.
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`This is especially true considering some prototypes were never fully developed.2 Contrary to
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`Apple’s claims, it is not “irrelevant that the demonstrated prototype was later subject to
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`improvements, evaluations, or testing.” Opp. at 14. A later-improved prototype cannot have the
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`public use date of its predecessor. Juicy Whip, Inc., 292 F.3d 728 at 737.
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`Second, regardless of audience size, there must actually be public use. Dey, L.P. v.
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`Sunovion Pharm., Inc., 715 F.3d 1351, 1355 (Fed. Cir. 2013). Yet, even in the light most
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`favorable, Apple has failed to provide any details as to the nature of the public access in the
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`GVU “open houses” such as how its “visitors” were selected or any other circumstances
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`surrounding the control of the experimentation that took place. Apple cannot now cure this
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`evidentiary shortcoming with uncorroborated arguments. Opp. at 13. Put simply, Apple’s failure
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`of proof dooms this invalidity theory. See Colucci v. Callaway Golf Co., 750 F. Supp. 2d 767,
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`773 (E.D. Tex. 2010) (“contemporaneous evidence” is required to show that the “prior art
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`reference was publicly used, offered for sale, or sold prior to the critical date”).
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`Accordingly, Maxell’s motion should be granted because Apple did not meet its burden.
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`2 See Ex. 5 (Abowd) at 5 (confirming that no prototype was built to work both indoors and outdoors).
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`Case 5:19-cv-00036-RWS Document 457 Filed 07/30/20 Page 12 of 14 PageID #: 25546
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`Dated: July 30, 2020
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`By:
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`/s/ Jamie B. Beaber
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`
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`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
`MAYER BROWN LLP
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`Case 5:19-cv-00036-RWS Document 457 Filed 07/30/20 Page 13 of 14 PageID #: 25547
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`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 457 Filed 07/30/20 Page 14 of 14 PageID #: 25548
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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 30th day of July 2020 via the Court’s CM/ECF system.
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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