Case 5:19-cv-00036-RWS Document 466 Filed 07/31/20 Page 1 of 8 PageID #: 25816
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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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`Plaintiff,
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`vs.
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`APPLE INC.,
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`Defendant.
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` Civil Action No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`DEFENDANT APPLE INC.’S REPLY IN SUPPORT OF
`ITS MOTION FOR PARTIAL SUMMARY JUDGMENT
`LIMITING MAXELL’S CLAIM FOR DAMAGES FOR
`THE ’999, ’498, ’493, AND ’317 PATENTS UNDER 35 U.S.C. § 287(A)
`AND
`FOR NO ENHANCED DAMAGES UNDER 35 U.S.C. § 284
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`Case 5:19-cv-00036-RWS Document 466 Filed 07/31/20 Page 2 of 8 PageID #: 25817
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`Maxell has not identified a single dispute of material fact to counter Apple’s showing that
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`it is entitled to summary judgment on Maxell’s claimed damages notice date under § 287(a), or
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`its claim for enhanced damages under § 284. Maxell nevertheless asks the Court to forego
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`making these decisions before trial by improperly passing to Apple the burden of proving actual
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`notice, and contradicting Federal Circuit precedent by predicating an enhanced damages decision
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`on a jury finding of willful infringement. Maxell’s arguments are meritless.
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`I.
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`MAXELL CANNOT MEET ITS BURDEN OF PROVING THAT IT GAVE
`APPLE ACTUAL NOTICE AS § 287(A) REQUIRES
`A. Maxell Presented No Record Evidence Of Any “Specific Charge Of
`Infringement” By A “Specific Accused Product” In
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`To survive summary judgment, Maxell needed to show that its
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` had an
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`“affirmative communication of a specific charge of infringement by a specific accused product
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`or device.” Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994).
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`It didn’t. What Maxell did present—
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`—confirms that Maxell never provided a specific
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`communication of infringement in June 2013. That Apple could
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` matters none; neither this sentence nor the letter ever suggests that any Apple product
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`is infringing any Maxell patent, and that is what the law requires. Amstead, 24 F.3d at 187.
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` D.I. 368-04 (Ex. C) at APL-MAXELL_00712197-198, does not help Maxell. “[M]ere
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`‘notice of the patent’s existence or ownership’ is not ‘notice of the infringement,’” and is
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`insufficient to satisfy § 287. Gart v. Logitech, Inc., 254 F.3d 1334, 1345 (Fed. Cir. 2001).
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`1
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`Case 5:19-cv-00036-RWS Document 466 Filed 07/31/20 Page 3 of 8 PageID #: 25818
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`Like the letters found insufficient for actual notice in Amsted and Massachusetts Inst. of
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`Tech. v. Abacus Software, Inc., the “message being conveyed” by
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` was
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`at most “an offer to license the technology, not that the patentee believes that the recipient is
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`currently using the technology and infringing.” No. 5:01-CV-344, 2004 WL 5268125, at *3
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`(E.D. Tex. Sept. 29, 2004). Maxell’s attack on the standard applied in Amstead and MIT
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`mischaracterizes Federal Circuit precedent. In Gart, the court did not suggest that merely
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`mentioning licensing was a specific charge of infringement. Instead, it found that the letter’s
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`combination of alleging a specific product practiced specific claims with urging the defendant to
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`investigate whether a license was “needed” made clear that the proposed license was “to insulate
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`a licensee from infringement charges.” 254 F.3d at 1346. Similarly, SRI Int’l, Inc. v. Advanced
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`Tech. Labs., Inc., 127 F.3d 1462 (Fed. Cir. 1997), found that a letter offering a license for a
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`patent and identifying “the activity that is believed to be an infringement” of that patent could be
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`found to be a “proposal to abate the infringement.” Id. at 1470. And Ralston Purina Co. v. Far-
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`Mar-Co, Inc., 772 F.2d 1570 (Fed. Cir. 1985) addressed what type of notice triggers an
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`affirmative duty of due care under the now-inapplicable Underwater Devices standard for willful
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`infringement, id. at 1577, not whether the notice was sufficient to start damages under § 287(a).
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`Absent a specific infringement charge against a “specific accused product,” Maxell
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`resorts to arguing that
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` D.I. 420 at 6. But a simple review of the letter shows that is incorrect,
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`(Ex. C) at APL-MAXELL_00712194. This distinguishes the
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` from the letters in
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`the cases Maxell cites. In Funai Elec. Co., Ltd. v. Daewoo Elecs. Corp., 616 F.3d 1357 (Fed.
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`Cir. 2010), identifying two specific models of accused products was sufficient. Id. at 1373. In
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` D.I. 368-04
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`Case 5:19-cv-00036-RWS Document 466 Filed 07/31/20 Page 4 of 8 PageID #: 25819
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`Philippi-Hagenbuch, Inc. v. W. Tech. Servs. Int’l, Inc., No. 12-1099, 2015 WL 5725248 (C.D.
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`Ill. Sept. 30, 2015), asserting that the defendant was “offering for sale water tanks that may
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`incorporate features similar to those found in [patentee’s] water tanks” was sufficient. Id. at *2.
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`In Optis Wireless Tech., LLC v. Huawei Techs. Co., No. 2:17-cv-00123-JRG-RSP, 2018 WL
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`3375192 (E.D. Tex. July 11, 2018), accusing specific technologies of infringing and enclosing a
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`spreadsheet correlating plaintiff’s purported standard essential patents to applicable standards
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`was sufficient. Id. at *6. The
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` has none of this specificity.
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`Finally, comparing the
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` to the
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` shows that counsel understood how to provide actual notice and confirms that the
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` was insufficient. Unlike the
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`, the
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` contained a
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`specific charge of infringement—“
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`”—
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`. D.I. 368-07 (Ex. F) at MAXELL_APPLE0108194.
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`B. Maxell Has Not Met Its Burden of Proving It Is Entitled to Earlier Dates
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`Apple never needed to “establish” that other meetings between Maxell and Apple “are
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`inadequate to support actual notice for the subject patents.” D.I. 420 at 10. Maxell, not Apple,
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`“bears the burden of proving compliance” with Section 287’s notice requirements. Nike, Inc. v.
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`Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998). And Maxell identified no evidence
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`that it is entitled to damages before the dates Apple concedes. Maxell’s bare references to
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`suggestion that
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` (D.I. 420 at 10) are devoid of even a
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`. Speculating there may have been such a charge is not evidence that can stave
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`off summary judgment in Apple’s favor. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
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`Case 5:19-cv-00036-RWS Document 466 Filed 07/31/20 Page 5 of 8 PageID #: 25820
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`II. MAXELL IS NOT ENTITLED TO ENHANCED DAMAGES UNDER § 284
`A.
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`The Issue is Ripe for the Court’s Decision
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`Maxell has no credible argument against the Court deciding this issue now. It “agrees
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`there is no requirement that a jury must consider willfulness before the district court may
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`exercise its discretion to enhance damages.” D.I. 420 at 11. And it accedes to Exergen Corp. v.
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`Kaz USA, Inc., where the Federal Circuit affirmed the district court’s denial of enhanced
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`damages without any consideration of willful infringement by the jury. 725 F. App’x 959, 971‒
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`72 (Fed. Cir. 2018). Even if willfulness and enhanced damages are “separate” inquiries, D.I.
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`420 at 11, when the undisputed facts show no egregious misconduct that is required for enhanced
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`damages, a jury willfulness finding is simply irrelevant. D.I. 368 at 11.
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`Maxell is dead wrong as a matter of law that “the Court can award enhanced damages
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`based on a jury finding of willful infringement.” D.I. 420 at 11. Enhanced damages require
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`“egregious behavior”; basic willfulness is not enough. Eko Brands, LLC v. Adrian Rivera
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`Maynez Enters., Inc., 946 F.3d 1367, 1378 (Fed. Cir. 2020). WesternGeco L.L.C. v. ION
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`Geophysical Corp., 837 F.3d 1358 (Fed. Cir. 2016), did not hold to the contrary, but rather set
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`forth the parameters of the jury’s willfulness consideration. Id. at 1362. Eko Brands precludes
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`Maxell’s attempt to interpret WesternGeco as extending to the § 284 decision.
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`B.
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`There is No Dispute of Material Fact to Preclude Summary Judgment in
`Favor of Apple
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`Maxell devotes the remainder of its opposition to factors that may be considered by the
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`Court in deciding whether to enhance damages under Read Corp. v. Portec, Inc., 970 F.2d 816
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`(Fed. Cir. 1992). This is a concession that the enhancement question is ripe. Although analyzing
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`the Read factors is not required when deciding enhanced damages, Presidio Components, Inc. v.
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`Am. Tech. Ceramics Corp., 875 F.3d 1369, 1382 (Fed. Cir. 2017), Maxell’s discussion of the
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`Case 5:19-cv-00036-RWS Document 466 Filed 07/31/20 Page 6 of 8 PageID #: 25821
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`Read factors shows there is no dispute of material fact precluding summary judgment for Apple.
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`For example, the Court has all of the evidence it needs about the parties’ discovery
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`disputes, should it wish to consider that under Read factor 3, since such disputes are not factual
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`issues heard by the jury. See Miller UK Ltd. v. Caterpillar, Inc., 2015 WL 7351674, No. 10-cv-
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`03770, at *10 (N.D. Ill. Nov. 20, 2015). And the Court has already rejected Maxell’s accusation
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`that Apple has committed any “misconduct” in this case supporting enhanced damages under §
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`284. See D.I. 126 at 3 (denying Maxell’s motion to compel document production); see also
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`Tannas v. Multichip Display, Inc., No. SACV 15-00282 AG (JCGx), 2018 WL 1033219, at *3
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`(C.D. Cal. Feb. 21, 2018) (denying enhanced damages under § 284 where “litigation conduct”
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`was egregious, but critically, “infringement conduct” was not egregious).
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`As to the other Read factors raised by Maxell, there is no factual dispute that
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`. See D.I. 368 at 12, 15. Indeed, these
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`positions were so strong that
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`. Maxell
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`cites no case that even suggests such pre-suit communications show any egregious behavior.
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`Finally, Maxell does not dispute that
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`368 at 15. Instead, it postures in unverified interrogatory responses that
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`. See D.I.
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` D.I. 420 at 15. This speculation cannot preclude
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`summary judgment, see Tesco Corp. v. Weatherford Int’l, Inc., 904 F. Supp. 2d 622, 636 (S.D.
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`Tex. 2012), but in any event
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` supersede it as actual record
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`evidence. Cleveland v. Policy Mgmt. Sys. Corp., 526 U.S. 795, 806 (1999). And even if true,
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`Maxell has no legal basis to argue that
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` constitute egregious conduct.
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`Case 5:19-cv-00036-RWS Document 466 Filed 07/31/20 Page 7 of 8 PageID #: 25822
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`Dated: July 29, 2020
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`/s/ Luann L. Simmons
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`
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`Luann L. Simmons (Pro Hac Vice)
`lsimmons@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
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`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
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`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
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`Attorneys for Defendant Apple Inc.
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`6
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`Case 5:19-cv-00036-RWS Document 466 Filed 07/31/20 Page 8 of 8 PageID #: 25823
`Case 5:19-cv-OOO36-RWS Document 466 Filed 07/31/20 Page 8 of 8 PageID #: 25823
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`CERTIFICATE OF SERVICE
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`The lmdersigned hereby ce11ifies that all c01msel of record who are deemed to have
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`consented to electronic service are being served with a copy of this docmnent via the Court’s
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`CM/ECF system per Local Rule CV—5(a)(3) on July 29. 2020.
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`/s/ Melissa R. Smith
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`Melissa R. Smith
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