Case 5:19-cv-00036-RWS Document 458 Filed 07/30/20 Page 1 of 12 PageID #: 25573
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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 NAVTALK ALLEGED PRIOR ART
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`Case 5:19-cv-00036-RWS Document 458 Filed 07/30/20 Page 2 of 12 PageID #: 25574
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`TABLE OF CONTENTS
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`I.
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`Apple Has Not Shown the Device it Relied on as Prior Art Was in Public Use or
`Sale ..................................................................................................................................... 1
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`II.
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`Apple’s Evidence Is Too Unreliable To Support its Burden Of Proof .............................. 3
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`III.
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`The Evidence Apple Relies Upon Is Inconclusive ............................................................ 4
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`i
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Anderson v. Liberty Lobby, Inc.,
`477 US 242 (1986) .....................................................................................................................5
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`Colucci v. Callaway Golf Co.,
`750 F. Supp. 2d 767 (E.D. Tex. 2010) ...................................................................................2, 5
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`Cummins-Allison Corp. v. Glory Ltd.,
`2006 U.S. Dist. LEXIS 105083 (E.D. Tex. Jan. 23, 2006) ........................................................5
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`Domain Prot., LLC v. Sea Wasp, LLC,
`426 F. Supp. 3d 355 (E.D. Tex. 2019) .......................................................................................3
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`Galindo v. Precision American Corp.,
`754 F. 2d 1212 (5th Cir. 1985) ..................................................................................................2
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`Krim v. BancTexas Grp., Inc.,
`989 F.2d 1435 (5th Cir. 1993) ...............................................................................................2, 4
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`ii
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`Case 5:19-cv-00036-RWS Document 458 Filed 07/30/20 Page 4 of 12 PageID #: 25576
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`TABLE OF EXHIBITS
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`(Including Exhibits From Maxell’s Motion, Dkt. 383)
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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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`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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`Declaration of David Ayres (March 24, 2020)
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`Deposition Transcript of L. Kent Broddle (April 17, 2020)
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`iii
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`Case 5:19-cv-00036-RWS Document 458 Filed 07/30/20 Page 5 of 12 PageID #: 25577
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`Apple’s response confirms that it has failed to meet the high bar to establish by clear and
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`convincing evidence that the “NavTalk” device it relies for its invalidity case is prior art that was
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`publicly sold in the United States over twenty years ago. It is now undisputed that Apple and its
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`experts have provided no evidence of public use or sale of the actual device at APL-
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`MAXELL_P01. Contrary to Apple’s desire, this is not “irrelevant.” Opp. at 3 (“Paragraphs 9 and
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`13 are irrelevant.”) Instead, it is crucial that Apple explain the origin of the device its expert
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`relies on for its invalidity analysis against each claimed element, and for Apple to verify that this
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`device is the same that was publicly used or sold on or before the July 12, 1999 critical date.
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`Apple’s Opposition either ignores these flaws or claims that they do not matter. As a
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`result, Apple cannot carry its burden of proving that the NavTalk device is prior art. Summary
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`judgment of no invalidity is therefore appropriate.
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`I.
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`Apple Has Not Shown the Device it Relied on as Prior Art Was in Public Use or Sale
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`Apple has failed to provide clear and convincing evidence to support a conclusion that
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`the NavTalk handheld electronic navigation device and accompanying user manual was in public
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`use in the United States on or before July 12, 1999. See Ex. 1, Paradiso Rep. at ¶ 132, Ex. 2, Stoll
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`Rep. at ¶¶ 157-95.1
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`Apple does not dispute it has not provided evidence of prior use of the NavTalk device
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`produced as APLMAXELL_P01. Opp. at 3. Instead, Apple asserts that evidence pertaining to
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`any NavTalk device equally applies because
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`the NavTalk device produced as
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`APLMAXELL_P01 is “representative of NavTalk devices sold before that [critical] date.” Id.
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`However, not only has Apple not provided any actual evidence to support this proposition, it has
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`also failed to acknowledge Maxell’s evidence that it does not. Therefore, Apple’s assertions boil
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`1 It is irrelevant whether the device was on sale on or before July 12, 1999 because 35 USC 102(b) requires the sales
`the be “more than one year prior to the date of the application” and there is no evidence that NavTalk was on sale on
`or before July 12, 1998.
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`1
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`down to nothing but conclusory attorney argument, that cannot be the basis to avoid summary
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`judgment. See Krim v. BancTexas Grp., Inc., 989 F.2d 1435, 1449 (5th Cir. 1993) (“Summary
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`judgment, to be sure, may be appropriate . . . if the nonmoving party rests merely upon
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`conclusory allegations, improbable inferences, and unsupported speculation.”); Galindo v.
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`Precision American Corp., 754 F. 2d 1212, 1216 (5th Cir. 1985).
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`Maxell has pointed to undisputed evidence on the record that shows that the NavTalk
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`device at APL-MAXELL_P01 lists a Copyright date of “1999-2000” on its software. Mot. Ex. 2,
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`Stoll Rep. at ¶ 192. This shows that the software installed on the device at APL-MAXELL_P01
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`was from at minimum the year 2000. It is Apple’s burden to show that a NavTalk device with a
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`software from the year 2000 is indeed “representative” of any NavTalk devices allegedly
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`publicly known before the July 12, 1999 critical date. But it has not done so here at all. Apple
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`defends its theory by noting its expert Dr. Paradiso “took photos of the copy produced as APL-
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`MAXELL_P01 and the box package that came with the copy” and it “matches the photos of
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`NavTalk on the manual” that was allegedly printed on January 1999. Opp. at 11. But even if
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`taken as true, this fact is completely unhelpful, as the external aesthetics of an electronic device
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`have no bearing on the functionalities/features of the device two decades ago.
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`Apple attempts to cure this defect by relying on the testimony of Mr. Broddle to allege
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`that “Garmin did not make any substantive changes to NavTalk during its product lifecycle.”
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`Opp. at 3. First, Mr. Broddle’s testimony is not corroborated by any evidence that shows no
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`changes to NavTalk were ever made. 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”). Second, not only
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`does Mr. Broddle not explain what qualifies as a “substantial” functionality update versus not, he
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`does not even confirm the version of the operating system (OS) installed on the device produced
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`2
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`at APLMAXELL_P01 to explain what changes it contained. Mot. Ex. 4, Broddle Dep. Tr.
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`187:15-24. These actions could have easily been done by Apple, but it’s expert did not.
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`Apple asks this Court to dismiss Maxell’s showings as “attorney argument” because
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`Maxell provides no evidence about what changes resulted from the software updates on the
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`NavTalk’s device. Opp. at 13. But it is Apple who must show that the device it claims is
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`“representative” of older NavTalk devices was not affected by changes resulting from these
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`software updates. Put simply: Apple must meet its burden to clearly and convincingly show that
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`the device it relies on is the same device as those known on or before the critical date—it has not.
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`II.
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`Apple’s Evidence Is Too Unreliable To Support its Burden Of Proof
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`Apple jumps around the undisputed fact that Dr. Paradiso’s opinions offered in this case
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`are largely based on information copied from an unknown source—the Broddle Declaration—
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`and recompiled by one with no personal knowledge of it—Mr. Ayres. See Ex. 2, Stoll Rep. at ¶¶
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`157-60, 164-65. Contrary to Apple’s assertion, it is simply not the case that Mr. Ayres’
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`“declaration’s statements are based on his review of Garmin’s company records for NavTalk.”
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`Opp. at 12. Mr. Ayres’ declaration is instead largely based on external knowledge that is not his
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`own. This is evidenced by the fact he uses “I am informed and believe” in three paragraphs of a
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`ten paragraph declaration an fact that Apple cannot deny and does not address. Ex. 3, Ayres
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`Decl. at ¶¶ 7, 8, 10. It is quite clear that Mr. Ayres’ declaration is based on Mr. Broddle’s
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`declaration minus a date change, and without corroborating evidence. See Ex. 2, Stoll Rep. at ¶¶
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`164-165; Ex. 4, Broddle Dep. Tr. at 210:14-211:1.
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`Apple asks the Court to disregard this as simply an attack on the credibility of Mr. Ayres’
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`declaration. Opp. at 12. But unlike its cited case, Maxell’s arguments cannot be “characterized as
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`a general attack on [the] credibility” of Mr. Ayres. Domain Prot., LLC v. Sea Wasp, LLC, 426 F.
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`Supp. 3d 355, 372 (E.D. Tex. 2019). Maxell instead merely points out that it is a fact in this case
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`3
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`that Mr. Ayres was not employed in Garmin until seven years after the relevant facts, yet he
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`submitted a declaration on such facts by copy-pasting it from an earlier declaration that had a
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`different date of prior sales. This type of evidence simply cannot support the high burden to
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`prove public use or sale by clear and convincing evidence. Apple’s own counsel acknowledged
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`that the “basis of the current declaration” of Mr. Ayres is a “heavily redacted version” of a
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`declaration that Apple does not even “know where it came from.” Mot. Ex. 4, Broddle Dep. Tr.
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`at 257:14-22 (“It’s basically the same”). Apple’s argument that Mr. Ayres’ declaration is
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`“corroborated” by Mr. Broddle’s matching prior declaration is disingenuous at best. Opp. at 12.
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`Apple’s response to Maxell’s finding that the sales record accompanying the declaration
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`of Mr. Ayres include a date of “10/09/13” only substantiates this reality. Apple explains—
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`without any corroboration—that the “10/19/13” date on the sales record “merely reflects when
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`the sales data was pulled from a query to Garmin’s database.” Opp. at 14. But there are no facts
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`in this case explaining who pulled those sales records on 10/19/13 because Mr. Ayers’
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`declaration has a date of March 24, 2020. Even in the light most favorable to Apple, this
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`unreliable evidence serves only to support improbable references and unsupported speculation.
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`Krim, 989 F.2d 1435, 1449 (5th Cir. 1993).
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`III. The Evidence Apple Relies Upon Is Inconclusive
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`Finally, the evidence that Apple does provide to support a finding that any NavTalk
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`device was publicly used on or before the critical date is inconclusive at best. Apple discusses
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`three pieces of evidence: 1) sales records allegedly showing shipments of NavTalk units to U.S.
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`customers in 1999; 2) the NavTalk User Manual allegedly approved for public release on
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`February 5, 1999; and 3) press releases allegedly announcing NavTalk’s upcoming release. Opp.
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`at 8, 14-15. Maxell has already discussed the flaws contained in each of these arguments. Mot. at
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`9 (sales records); Mot. at 10 (NavTalk User Manual “approved for distribution” is not evidence
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`4
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`of public distribution). And any press releases that announce a future release of NavTalk is also
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`not clear evidence of public use or sale at the time of such announcement, especially when it
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`includes an inconsistent sales price from those included in the sales records.
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`Regarding the Bills of Materials (BOM) provided, Apple falsely alleges that Maxell
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`“turned on a filter” “that hid” rows of the document. Opp. at 4, 14. But GARMIN_0000147 was
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`produced in this manner, and Maxell did not apply any filters. Neither Mr. Ayres, Dr. Paradiso,
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`nor Mr. Broddle mention anything about “hidden” rows during fact and expert discovery. Apple
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`now tries to overcome its own error by adding facts in response to a motion for summary
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`judgement. Cummins-Allison Corp. v. Glory Ltd., 2006 U.S. Dist. LEXIS 105083, at *5 (E.D.
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`Tex. Jan. 23, 2006) (“[d]iscovery misconduct may suggest that a party is not comfortable with its
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`position on the merits.”) Regardless of this fact, the outcome remains unchanged because the
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`BOM provides no evidence of use in 1999 and was created by Mr. Ayres in 2019.2
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`At bottom, “contemporaneous evidence” is required to show that the “prior art reference
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`was publicly used, offered for sale, or sold prior to the critical date.” See Colucci v. Callaway
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`Golf Co., 750 F. Supp. 2d 767, 773 (E.D. Tex. 2010). Here, however, Apple offers sales records
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`from 2013 and a declaration from an employee who has no personal knowledge about the facts
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`he declares about as he was not employed contemporaneously. Thus, Apple’s failure to carry its
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`burden does not simply go to the weight of the evidence. See Opp. at 11, 12. Rather, in
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`circumstances where, as here, no reasonable juror could find for the non-movant due to a lack of
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`clear and convincing proof, summary judgment is appropriate. See Anderson v. Liberty Lobby,
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`Inc., 477 US 242, 252 (1986). For these reasons, Maxell’s Motion should be granted.
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`2Apple’s attacks towards Mr. Stoll—a former USPTO Commissioner—do not generate a dispute of material fact.
`Maxell’s Motion does not depend on Mr. Stoll’s opinions but rests on the premise that even when all of the facts
`presented by Apple are taken in totality, it is clear that Appel did not meet its burden. Further, as Maxell explained
`in detail in its opposition in a co-pending motion, Mr. Stoll is well-placed to provide opinions on the NavTalk
`evidence of public use or sale, as he has done so for decades at the U.S. Patent Office. See Dkt. 397.
`5
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`Case 5:19-cv-00036-RWS Document 458 Filed 07/30/20 Page 10 of 12 PageID #: 25582
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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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`6
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`Case 5:19-cv-00036-RWS Document 458 Filed 07/30/20 Page 11 of 12 PageID #: 25583
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`71 S. Wacker Drive
`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`lmiranda@mayerbrown.com
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`Graham (Gray) M. Buccigross
`MAYER BROWN LLP
`3000 El Camino Real, Suite 2-300
`Palo Alto, CA 94306
`(650) 331-2000
`gbuccigross@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 458 Filed 07/30/20 Page 12 of 12 PageID #: 25584
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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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