Case 5:19-cv-00036-RWS Document 473 Filed 08/03/20 Page 1 of 8 PageID #: 25957
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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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`Civil Action No. 5:19-cv-00036-RWS
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`v.
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`APPLE INC.,
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`Defendant.
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`JURY TRIAL DEMANDED
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`APPLE INC.’S SUR-REPLY IN SUPPORT OF ITS OPPOSITION TO MAXELL, LTD.’S
`MOTION TO STRIKE PORTIONS OF APPLE’S REBUTTAL EXPERT REPORTS
`BASED ON UNTIMELY CLAIM CONSTRUCTION POSITIONS
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`Case 5:19-cv-00036-RWS Document 473 Filed 08/03/20 Page 2 of 8 PageID #: 25958
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`Maxell’s Reply (D.I. 431) confirms its motion is simply a vehicle for expanding claim
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`scope. Maxell frames Apple’s experts’ technical analysis as claim construction by setting up
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`strawman positions and misrepresenting their opinions. But Apple’s experts have not proffered
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`any opinion that contradicts the Court’s Markman Order on construed terms or deviates from the
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`plain meaning of un-construed terms. Maxell’s Motion (D.I. 369) should be denied.
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`I.
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`Dr. Bederson’s Rebuttal Expert Report—the ’306 and ’991 Patents
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`’306 Patent: Maxell does not dispute that: (1) its own expert accused an iPhone’s
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`memory as a “sound source,” and (2) Claim 12 requires “at least two sound sources.” D.I. 406 at
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`2-3. Thus, Dr. Bederson’s opinion that a product with a single memory does not have “at least
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`two sound sources” is a straight-forward non-infringement opinion—he did not construe any
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`claim term. Similarly, Dr. Bederson cites the specification’s disclosure of “sound generation
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`protocols” to confirm his understanding of the term’s plain meaning, and his opinion that the
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`accused products do not use “a plurality of sound generation protocols” is based on the plain
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`requirement that there must be multiple such protocols. Id. at 4. Maxell cites Dr. Bederson’s
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`technical analysis of the accused products’ operation (Reply at 2), but these are not claim
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`construction opinions. There is no basis to strike Dr. Bederson’s report.
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`’991 Patent, TV Receiver: As explained in Apple’s motions (D.I. 358, D.I. 372), it is
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`Maxell—not Apple—who is trying to undo the Court’s claim construction. Dr. Bederson
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`faithfully applied the Court’s construction requiring a “videophone function-added TV receiver.”
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`The opinions Maxell cites—Dr. Bederson’s analysis of whether the accused products include TV
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`receiver components (e.g., television tuners), perform TV receiver functionality (e.g., receive
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`television broadcast signals), and conform to TV standards (e.g., NTSC, PAL, etc.)—are part of
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`his factual analysis of the accused products’ design and functionality. Dr. Bederson confirmed in
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`his deposition that he considered these features as part of the “totality of the evidence” to
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`Case 5:19-cv-00036-RWS Document 473 Filed 08/03/20 Page 3 of 8 PageID #: 25959
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`determine whether each accused product includes a “TV receiver.” D.I. 433, Ex. 6 at 240:17-
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`241:1. He did not define “TV receiver” and he did not deviate from the Court’s construction.
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`’991 Patent, “Display configured to …” and “Pauses”: Dr. Bederson’s non-
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`infringement opinions for these limitations directly apply the terms’ plain meaning to the
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`accused products’ designs. The “display” limitation plainly requires the display of two pieces of
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`information, and the words “pause” and “stop” are different requirements recited by the claims.
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`See ’991 Patent at Claims 1, 4. If Maxell wanted to construe “pause” and “stop” to have the
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`same meaning, it was incumbent on Maxell—not Apple—to seek construction of the terms.
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`II.
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`Dr. Paradiso’s Rebuttal Expert Report—the ’317, ’498, ’999 Patents
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`“Direction” limitations: Maxell cannot show that Dr. Paradiso deviated from the plain
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`meaning of two limitations requiring the display of a “direction” to a “destination” when he
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`opined that they are not infringed by the accused turn-by-turn route lines in Apple Maps.
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`Instead, Maxell makes an improper claim construction argument: that those limitations should
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`be construed broadly to encompass Figures 3(c)-(f), in addition to Figures 3(a)-(b). Reply at 3.
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`But Dr. Paradiso testified that he is not limiting his understanding of the claim language to
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`Figures 3(a)-(b). Ex. 21 at 196:14-197:21. And any dispute regarding whether the accused route
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`lines satisfy the “direction” limitations presents a fact issue for trial, not a basis to strike.
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` “PHS” Requirement: Maxell first attempts to mischaracterize Dr. Paradiso’s opinions
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`by asserting that the Court’s construction does not require “the entire PHS; it requires a
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`component of a PHS,” suggesting that Dr. Paradiso’s opinions treat PHS as a separate device.
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`Reply at 3. But at his deposition, Dr. Paradiso testified that the Court’s claim construction does
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`not require a “separate device or phone”; instead, it requires a component (e.g., a “chipset”) of a
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`PHS device. Ex. 21 at 187:17-188:11. Thus, Maxell’s argument is simply a strawman.
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`Maxell’s second criticism that Dr. Paradiso cites extrinsic evidence describing a “PHS”
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`Case 5:19-cv-00036-RWS Document 473 Filed 08/03/20 Page 4 of 8 PageID #: 25960
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`as using PSTN/ISDN networks is flawed for two reasons. First, Dr. Paradiso uses industry
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`evidence to provide context of what PHS technology is and Maxell cites no legal authority that
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`Dr. Paradiso may not do so. At any rate, any disagreement over whether PHS technology is
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`different from the accused products’ cellular technology is a factual dispute, not a claim
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`construction issue. Second, Maxell cites specification passages that purport to show that “PHS”
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`can use “cellular” networks. Reply at 3. But the specification’s mention of “cellular” describes
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`the patent’s “portable telephone” technology, not a “PHS.” E.g., ’317 at 5:16-21, 5:64-67.
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`Maxell’s other citations to the specification mentioning “wireless” and “Internet” are irrelevant;
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`neither is the same as “cellular” or inconsistent with using PSTN/ISDN.1
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`III. Dr. Bims’ Rebuttal Expert Report—the ’193 Patent
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`Maxell wrongly seeks to preclude Apple’s expert from testifying that the plain meaning
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`of “connected to” requires separately recited claim elements to be connected to each other.
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`Maxell again resorts to improper claim construction arguments by citing the specification. Reply
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`3-4. But the specification does not support Maxell’s position because it describes the recited
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`elements as separate, interconnected components in all figures and embodiments. E.g., ’193
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`Patent at 4:32-5:62, Fig. 1. Maxell argues that Dr. Bims’ invalidity report does not use the word
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`“separate,” but that report maps separate components to the claim elements and shows the
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`connections between them. E.g., D.I. 369, Ex. 18 at ¶ 174 (showing connection between
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`separate “receiver” and “encoder/decoder”). There is no inconsistency between Dr. Bims’
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`reports, and any inconsistency would be an issue for cross-examination, not a basis to strike.
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`IV. Dr. Bovik’s Rebuttal Expert Report—the ’493 Patent
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`“All”: Maxell argues that Dr. Bovik ignored the “N number” portion of the claim term.
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`1 Maxell’s argument that Apple did not mention “PHS” in its IPR petitions is irrelevant and misleading
`because Apple’s IPR petitions applied Maxell’s proposed constructions in this case, which did not require
`a “PHS” at all. Ex. 22 (’999 Patent IPR Pet.) at 12-14; Ex. 23 (’317 Patent IPR Pet.) at 15-16.
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`3
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`Case 5:19-cv-00036-RWS Document 473 Filed 08/03/20 Page 5 of 8 PageID #: 25961
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`This is simply untrue. See, e.g., D.I. 406, Ex. 10 ¶ 61 (addressing “N number” limitation).
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`Claim 5 defines “N number” as the number of pixel lines on the image sensor. See ’493 Patent at
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`Claim 5 (reciting “a light receiving sensor having an array of pixels … in an N number of
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`vertically arranged pixel lines”). No claim construction is necessary to support Dr. Bovik’s
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`understanding of the claim’s plain meaning. Thus, there is no basis to strike his opinions.
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`Claim 6: Maxell attacks a strawman argument. The dispute is not whether the claim
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`includes a negative limitation to exclude any device that performs post-processing, but whether
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`image stability correction during post-processing infringes the claim. It does not because Claim
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`6 plainly limits the claimed image stabilization operation to “when recording in the moving
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`video mode.” ’493 Patent at Claim 6. Maxell again has identified no basis to strike.
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`V.
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`Dr. Menascé’s Rebuttal Expert Reports—the ’438, ’586, and ’794 Patents
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`’438 Patent, “authentication process”: Maxell’s Reply confirms that the parties’
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`dispute is over how the accused products work, not over the agreed construction for the claim
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`term. Maxell does not mention the agreed construction, much less explain how Dr. Menascé
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`deviated from it. Instead, Maxell obscures the parties’ dispute by suggesting that there is some
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`dispute over whether the accused products use two-way communication. Reply at 4-5. But
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`Maxell’s expert Dr. Williams plainly accuses two-way communication as “authentication” by,
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`for example, pointing to both “advertise[]” and “return” signals as part of the accused
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`authentication process. See, e.g., D.I. 406, Ex. 13 at ¶¶ 322, 411. Maxell argues that Dr.
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`Williams does not mention the phrase “two-way” in his report, but admits that his theory is that
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`the “Discovery Flow”—a two-way communication—meets the claimed “authentication process”
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`limitation. Reply at 4-5. In fact, all infringement theories in Dr. Williams’ report involve two-
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`way communication. Maxell also argues that Apple has conceded that the accused AirDrop
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`feature’s “discovery flow” involves two-way communication. Id. at 5 n.3. This mischaracterizes
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`Case 5:19-cv-00036-RWS Document 473 Filed 08/03/20 Page 6 of 8 PageID #: 25962
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`the parties’ dispute, which is about how and when authentication is carried out, e.g., whether
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`Bluetooth carries out the claimed “authentication process.” D.I. 406 at 12. The dispute over
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`how the accused devices work is a factual issue for the jury, not a basis to strike.
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`’438 Patent, “display apparatus”: The parties selected a preamble term for
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`construction and the Court construed that term by adopting Maxell’s proposal. Now, Maxell
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`wants to avoid its own construction by arguing that the preamble is not limiting, despite having
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`taken the opposite position during Markman. See D.I. 406 at 12-13. This cannot be permitted.
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`’438 Patent, “if and only if”: Maxell is unable to explain how Dr. Menascé’s
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`understanding of the claims deviated from their plain meaning, and argues only that his analysis
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`uses words not found in the claims. Reply at 5. But an expert is not limited to using only words
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`from the claims to describe their plain meaning. The asserted claims require data exchange “if”
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`authentication is affirmed, and prohibits data exchange “if” authentication is not affirmed. ’438
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`Patent at Claims 1, 4. As Dr. Menascé explained, the plain meaning of the claims limits data
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`exchange to a scenario only if authentication is affirmed; otherwise, exchange is denied.
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`’794 Patent, “when”: Dr. Menascé applied his understanding of the plain meaning of
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`the “when” terms, and Maxell does not dispute that Dr. Menascé’s understanding is consistent
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`with Maxell’s own application of the terms in its infringement contentions. See D.I. 406 at 14-
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`15. Thus, there is no basis to strike Dr. Menascé’s opinions.
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`’586 Patent, “previously stores”: Maxell continues to misrepresent Dr. Menascé’s
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`opinions. Dr. Menascé did not opine that “previously stores” can only be accomplished through
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`factory programming. For Maxell to prove direct infringement, it must show that Apple has
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`programmed the accused memory to meet the “previously stores” limitation, either at the factory
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`or through some other means, which, as Dr. Menascé explained, Maxell failed to do.
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`Case 5:19-cv-00036-RWS Document 473 Filed 08/03/20 Page 7 of 8 PageID #: 25963
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`July 30, 2020
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`/s/ Luann L. Simmons
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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
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`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 473 Filed 08/03/20 Page 8 of 8 PageID #: 25964
`Case 5:19-cv-00036-RWS Document 473 Filed 08/03/20 Page 8 of 8 PageID #: 25964
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies 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 30. 2020.
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`/s/ Melissa R. Smith
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`Melissa R. Smith
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