Case 5:19-cv-00036-RWS Document 474 Filed 08/03/20 Page 1 of 8 PageID #: 25983
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`Plaintiff,
`
`
`
`
`
`
`
`vs.
`
`APPLE INC.,
`
` Civil Action No. 5:19-cv-00036-RWS
`
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`Defendant.
`
`DEFENDANT APPLE INC.’S REPLY IN SUPPORT OF ITS MOTION FOR
`PARTIAL SUMMARY JUDGMENT OF SUBJECT MATTER INELIGIBILITY
`UNDER 35 U.S.C. § 101 FOR U.S. PATENT NOS. 6,928,306 AND 6,329,794
`
`

`

`Case 5:19-cv-00036-RWS Document 474 Filed 08/03/20 Page 2 of 8 PageID #: 25984
`
`
`Simply applying an abstract idea to a generic, physical device does not make the idea
`
`patentable. Indeed, Alice Corp. Pty. Ltd. v. CLS Bank Int’l expressly held “that a computer
`
`‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ . . . is beside the point.”
`
`573 U.S. 208, 223-24 (2014). Maxell does not dispute at Alice step one that the ’306 Patent’s
`
`claims are performed using “general-purpose computer equipment,” and similarly that the ’794
`
`Patent merely invokes generic devices. At Alice step two, unable to cite anything in the patents or
`
`even its own experts to support an inventive concept, Maxell instead resorts to conclusory attorney
`
`arguments that fail to create a genuine dispute of material fact. Because the ’306 and ’794 Patents’
`
`claims fail both steps of Alice, they are invalid under § 101.
`
`I.
`
`The ’306 Patent Is Directed To An Abstract Idea, Not Improving Computers
`
`At Alice step one, Maxell articulates that the ’306 Patent is directed to using “multiple
`
`sound sources or sound generation protocols” “to generate the ringing sound.” Opp. at 3-6, 8-11.
`
`But this is simply the abstract idea of combining sounds from two or more sources (i.e., “multiple
`
`sound sources” or “protocols”) to convey a signal (i.e., “the ringing sound”). Mot. at 7.
`
`Simply applying the ’306 Patent’s abstract idea to a generic computer device does not
`
`transform the idea into a patent-eligible improvement. Maxell concedes that “the claims can be
`
`performed using general-purpose computer equipment,” but argues that this deficiency is “of no
`
`moment” to the question of patentability. Opp. at 6. But an abstract idea is not made patentable
`
`by virtue of tying it to a physical device or component. To the contrary, the Federal Circuit has
`
`repeatedly held that the invocation of “off-the-shelf, conventional computer” devices is “not even
`
`arguably inventive.” Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir.
`
`2016). Further, none of the recited components are limited to specific structures and thus the
`
`claims are not directed to improved hardware. See D.I. 235 at 28 (rejecting means-plus-function
`
`constructions limiting term to specific structures). Rather, the “controller” and “ringing sound
`
`
`
`1
`
`

`

`Case 5:19-cv-00036-RWS Document 474 Filed 08/03/20 Page 3 of 8 PageID #: 25985
`
`
`generator” limitations have their plain meanings that specify only what functions these
`
`components perform, but do not define any new or improved structure, either individually or in
`
`combination. Accordingly, the claims’ invocation of “general-purpose computer equipment” fails
`
`to disclose an improvement to computer capabilities. For the same reasons, Maxell’s citation to
`
`Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303 (Fed. Cir. 2020) is inapposite. Opp. at 6-
`
`7. There, the Federal Circuit found that claims enabling reduced latency disclosed a technological
`
`improvement. 957 F.3d at 1307. No such technological improvement exists here.
`
`Indeed, Maxell fails to identify any technological improvement imparted by the claims. Its
`
`argument that the patent discloses an improvement because it uses “multiple” sound sources or
`
`protocols to generate a ringing sound, instead of one, only supports Apple’s position. See Opp. at
`
`3-6, 8-11. First, the argument simply rephrases the abstract idea of combining sounds from two
`
`or more sources to convey a signal. Second, it is undisputed that the sound sources or protocols
`
`contemplated by the patent (e.g., FM, PCM, MIDI, and MP3) were already known. Third, Maxell
`
`concedes that generating a sound using a single sound source or protocol was also known. Id. at
`
`4, 10. Thus, using at least two—instead of one—sound sources or protocols to generate a sound
`
`simply uses known technology to carry out an abstract idea; it does not advance the technology.
`
`Maxell also argues that the patent eliminates the need for increased memory capacity. Id.
`
`at 3-4, 6, 10. But as Maxell concedes, the patent’s solution is to mix multiple sound sources or
`
`protocols to generate a ringing sound, rather than pre-recording and storing that sound. Id. at 10.
`
`Thus, the alleged benefit of not needing to store sounds arises not from any technological
`
`improvement, but “flow[s] from performing an abstract idea”—generating a sound using two or
`
`more sources. BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018).
`
`II.
`
`The ’306 Patent Does Not Disclose An Inventive Concept
`
`At Alice step two, Maxell advances nothing more than unsupported attorney arguments
`
`
`
`2
`
`

`

`Case 5:19-cv-00036-RWS Document 474 Filed 08/03/20 Page 4 of 8 PageID #: 25986
`
`
`that fail to create a genuine dispute of material fact. Maxell summarily concludes that the patent’s
`
`use of multiple “sound sources” implements “a technological solution.” Opp. at 11. But Maxell’s
`
`alleged solution is simply an application of the patent’s abstract idea—combining sounds from
`
`two or more sources to convey a signal—to generic mobile devices. Id. This is insufficient to
`
`qualify as an inventive concept. See BSG Tech, 899 F.3d at 1290-91 (“[i]f a claim’s only ‘inventive
`
`concept’ is the application of an abstract idea using conventional and well-understood techniques,
`
`the claim has not been transformed into a patent-eligible application of an abstract idea”). Indeed,
`
`as Maxell’s own expert conceded, the claims simply “tak[e] the known methods for generating
`
`ringing sound[s] and combin[e] them.” D.I. 360, Ex. Q at 25:23-26:1, 185:7-14, 186:16-187:14.
`
`Similarly, Maxell argues that the patent discloses an “inventive concept” by reducing the
`
`space required for storing sound. Opp. at 10. But the fact that a ringing sound “is generated when
`
`the signal comes in as opposed to being stored” is not inventive, as the specification admits that
`
`the generation of sounds without storage was already known in the prior art. See ’306 at 1:12-60;
`
`see also D.I. 360, Ex. C at 15:1-64 (describing a prior art device that generated a signal upon an
`
`incoming call by combining a telephone’s ringer and a caller’s self-announcement); Ex. D at 9:12-
`
`28, 17:1-12, 17:34-18:5, 18:7-31. Thus, the ’306 Patent fails to disclose an inventive concept.
`
`III. The ’794 Patent Is Directed To An Abstract Idea Without A Specific Solution
`
`At Alice step one, Maxell contends that the ’794 Patent “assign[s] different priorities to the
`
`function devices within the information processing device [] and control[s] the individual
`
`operation of the function devices based on remaining battery capacity.” Opp. at 12-13. But that
`
`characterization is simply a rephrasing of the abstract idea of prioritizing tasks (i.e., “function
`
`devices”) for allocation of resources (i.e., “battery capacity”) in a battery-operable device.
`
`Maxell’s generic, vague assertion that the claims provide “an improvement” “that plainly
`
`allow it to do things it could not do before” fails. Opp. at 12. This assertion skirts what the ’794
`
`
`
`3
`
`

`

`Case 5:19-cv-00036-RWS Document 474 Filed 08/03/20 Page 5 of 8 PageID #: 25987
`
`
`Patent is about: using generic, functional devices to automate what was previously performed by
`
`a human—i.e., “stopping function devices with low priorities first based on the remaining capacity
`
`in the battery.” ’794 at 1:59-63, 1:39-41. Neither the specification nor the claims disclose any
`
`specific implementation details for how this automation is achieved, and Maxell cites to none.
`
`Instead, Claims 1 and 14 simply recite generic, functional components—e.g., “a battery [for]
`
`supplying power,” “a capacity detector for detecting remaining [battery] capacity,” and “a
`
`controller” for “controlling operation” of function devices. Simply invoking generic devices as
`
`tools to carry out an abstract idea is not “inventive.” BSG Tech, 899 F.3d at 1290-91.
`
`Maxell also fails to support its assertion that the use of a “capacity detector” provides a
`
`technological improvement. Opp. at 13. Again, simply pointing to a physical component is
`
`insufficient to transform an abstract idea into a patentable invention. Maxell cannot explain what
`
`is unique or inventive about a “capacity detector.” Indeed, during Markman, Maxell’s expert Dr.
`
`Brogioli admitted that the recited “capacity detector” can be implemented using generic, off-the-
`
`shelf “Battery Management IC” chips from known vendors. D.I. 235 at 22-23; D.I. 136, Ex. 1 at
`
`¶ 32. Further, Dr. Brogioli also admitted that combining a “capacity detector,” a “controller,” and
`
`software is not inventive, but is well known to those skilled in the art. In his Markman declaration,
`
`Dr. Brogioli stated that “[a] person of ordinary skill in the art . . . would have understood how to
`
`integrate software into a ‘capacity detector’ for detecting the remaining capacity of a battery,” and
`
`would have known how to connect such a component to a “commercially available”
`
`“microcontroller” for controlling the claimed operation. D.I. 136, Ex. 1 at ¶ 33. Likewise, the
`
`patent’s inventor admitted that the patent is “not limited to [any] specific devices.” D.I. 360, Ex.
`
`K at 82:1-7. Thus, there can be no dispute that the claimed “capacity detector,” whether
`
`individually or combined with other recited claim elements, fails to provide a technological
`
`
`
`4
`
`

`

`Case 5:19-cv-00036-RWS Document 474 Filed 08/03/20 Page 6 of 8 PageID #: 25988
`
`
`improvement and simply uses generic components to implement an abstract idea.
`
`IV.
`
`The ’794 Patent Does Not Disclose An Inventive Concept
`
`At Alice step two, Maxell contends that Apple has not offered analysis of whether the
`
`combination of elements was “well-understood, routine, and conventional.” Opp. at 14. But
`
`Apple’s motion explained: (1) the specification confirms that the recited conventional components
`
`are connected in a conventional way to comprise an ordinary information processing device, and
`
`(2) the patent’s inventor testified that no “specific arrangement is required.” Mot. at 15. Maxell
`
`cannot manufacture a factual dispute by citing its expert Dr. Brogioli’s conclusory statement that
`
`the combination of elements is “inventive,” because he cites no supporting evidence and fails to
`
`actually identify any purported improvement from the combination of elements. Opp. at 14-15;
`
`see D.I. 426, Ex. E at ¶¶ 235, 242; see Allergan Sales, LLC v. Teva Pharm. USA, Inc., 2:15-cv-
`
`01471-JRG-RSP, 2017 WL 4800734, at *8 (E.D. Tex. Sept. 28, 2017) (“expert testimony [that] is
`
`not supported by, and even conflicts with, the evidence upon which it is based, and is thus . . .
`
`conclusory expert testimony.”). Further, Dr. Brogioli’s conclusory statement contradicts his
`
`Markman declaration admitting that the combination of components used to implement the ’794
`
`Patent claims were well known. D.I. 136, Ex. 1 at ¶¶ 32-34 (identifying commercially available
`
`“capacity detector” and “controller,” and explaining known ways to combine and program them).
`
`Finally, in arguing that the jury verdict in the ZTE case was unsupported by any evidence,
`
`Maxell cites only to its own post-trial motion from that case that advances that same argument.
`
`D.I. 426, Ex. F. Maxell’s argument that the exact words “well-understood,” “routine,” and
`
`“conventional” were not used during questioning of one expert does not preclude that relevant
`
`evidence was presented during trial. In any event, Maxell cites to nothing from the record or its
`
`experts explaining that the ’794 Patent is directed to an inventive concept, let alone what the
`
`purported “inventive concept” is. The ZTE jury verdict’s findings therefore apply here.
`
`
`
`5
`
`

`

`Case 5:19-cv-00036-RWS Document 474 Filed 08/03/20 Page 7 of 8 PageID #: 25989
`
`
`Dated: July 30, 2020
`
`
`
`
`
`
`
`
`/s/ Luann L. Simmons
`
`
`
`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
`
`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
`
`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
`
`Attorneys for Defendant Apple Inc.
`
`
`6
`
`

`

`Case 5:19-cv-00036-RWS Document 474 Filed 08/03/20 Page 8 of 8 PageID #: 25990
`Case 5:19-cv-00036-RWS Document 474 Filed 08/03/20 Page 8 of 8 PageID #: 25990
`
`CERTIFICATE OF SERVICE
`
`The lmdersigned hereby ce11ifies that all c01msel of record who are deemed to have
`
`consented to electronic service are being served with a copy of this docmnent via the Court’s
`
`CM/ECF system per Local Rule CV—5(a)(3) on July 30. 2020.
`
`/s/ Melissa R. Smith
`
`Melissa R. Smith
`
`