Case 5:19-cv-00036-RWS Document 475 Filed 08/03/20 Page 1 of 8 PageID #: 25991
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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 OF NON-INFRINGEMENT OF
`U.S. PATENT NOS. 10,084,991 AND 8,339,493
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`Case 5:19-cv-00036-RWS Document 475 Filed 08/03/20 Page 2 of 8 PageID #: 25992
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`Maxell fails to establish any genuine issue of material fact sufficient to defeat summary
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`judgment of non-infringement of the ’493 and ’991 Patents. There is no factual dispute that the
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`accused products do not use “all signal charges …” as recited in all asserted claims of the ’493
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`Patent and that they do not include a “TV receiver” as required by the only asserted claim of the
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`’991 Patent. Unable to cite any evidence to dispute this, Maxell resorts to misinterpreting claim
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`terms and misapplying the Court’s claim construction in an attempt to enlarge the claims’ scope.
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`But these efforts do not change that there is no genuine dispute of material fact that the accused
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`products do not infringe, and Apple’s Motion (D.I. 372, “Mot.”) should be granted.
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`I.
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`The Accused Products Do Not Infringe Claims 5-6 Of The ’493 Patent
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`Claim element 5.d of the ’493 Patent recites two separate requirements: a device must use
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`“[1] all signal charges accumulated in [2] all N number of vertically arranged pixel lines” to
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`record static images. There is no dispute that Apple’s products satisfy neither requirement.
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`A.
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`The Accused Products Do Not “us[e] all signal charges accumulated in …
`pixel lines” To Record Static Images
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`Apple’s Motion demonstrates that none of the accused products use all active, light-
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`receiving pixels in any pixel line—i.e., all signal charges accumulated in a pixel line—to record
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`a static image. Mot. at 6-7. Maxell concedes as such. See D.I. 422 (“Opp.”) at 2, 9-11.
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`In an attempt to deflect from this fact, Maxell inexplicably and impermissibly now points
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`to Apple’s products to support a new interpretation of its own claims.
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` Opp. at 10. But
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`Claim 5 plainly requires use of “all signal charges accumulated in … pixel lines,” and the
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`accused products do not do so. Maxell cannot now pick and choose which signal charges count
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`1 Maxell’s premise that OPB pixels do not accumulate signal charges is also incorrect because the OPB
`pixels, although not light sensitive, do generate signal charges. See Mot., Ex. A at ¶ 69.
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`1
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`Case 5:19-cv-00036-RWS Document 475 Filed 08/03/20 Page 3 of 8 PageID #: 25993
`Case 5:19-cv-00036-RWS Document 475 Filed 08/03/20 Page 3 of 8 PageID #: 25993
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`based on how Apple’s products operate. -
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`— Thus, the iPhone SS does not use “all signal charges accumulated in
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`pixel lines.” The other accused products do not infringe for the same reason. [(1, Exs. 9—24.
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`In an attempt to salvage its case with respect to the ’493 Patent, Maxell resorts to making
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`new claim constluction arglunents, pointing to a video embodiment, Figlu‘e 5, to claim that the
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`patent contemplates an embodiment that only uses a part of each pixel line. Opp. at 10. But this
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`too is a distraction. Figure 5 relates only to the “moving video mode,” not the “static image
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`mode” which is the relevant mode for the “all signal charges” limitation. See ’493 Patent at
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`6:39-59 (describing Figure 5’s cropping of video output to match “an NTSC standard television
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`monitor”). The specification’s description of a video embodiment cannot overcome the claim’s
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`clear, unambiguous language requiring use of “all signal charges acc1unulated in
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`pixel lines”
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`for static image recording. See Callpod, Inc. v. T Teclm., Inc, No. 2:11-cv-326-JRG—RSP, 2013
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`WL 3832426. *6 (ED. Tex. July 22, 2013) (“When the ‘claim language is clear on its face,’ a
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`court’s consideration of the other intrinsic evidence is ‘restricted to deteunining if a deviation
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`from the clear language of the claims is specified”) (citation omitted).
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`Case 5:19-cv-00036-RWS Document 475 Filed 08/03/20 Page 4 of 8 PageID #: 25994
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`B.
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`The Accused Products Do Not Use “all N number of vertically arranged pixel
`lines” To Record Static Images
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`The accused products also do not have “a light receiving sensor having an array of pixels
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`… in an N number of vertically arranged pixel lines,” that uses “all N number of vertically
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`arranged pixel lines of the image sensing device” for static image recording as required by
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`Claim 5. Again misconstruing the plain language of the claims, Maxell argues that for an image
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`sensor having 1650 pixel lines, the “all N number” limitation is met even if only 1600 pixels
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`lines are used to record still images. Opp. at 4. But “all” does not mean “some.” Maxell’s
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`arbitrary interpretation renders “all” meaningless and is improper for the reasons outlined below.
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`First, contrary to Maxell’s assertion, “open-ended transitional phrases” such as
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`“comprising” cannot “abrogate claim limitations” and do not “reach into each [claim element] to
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`render every word and phrase therein open-ended.” Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337,
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`1343 (Fed. Cir. 2007). Here, the claim limitation “all” must be met.
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`Second, Maxell’s attempt to construe “N number” as an arbitrary variable to argue that
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`the claim does not require using all pixel lines is irreconcilable with how that term is used
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`elsewhere in Claim 5. See Opp. at 4-5. Claim element 5.a recites a “light receiving sensor”
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`having pixels arranged “in an N number of … pixel lines.” ’493 Patent at Claim 5. “N” is not
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`an arbitrary number—it is the number of pixel lines on the image sensor of a given product.
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`Whatever N is for a product, Claim element 5.d requires using “all N number of … pixels lines”
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`for recording a static image. Maxell’s construction of “N number” cannot overcome the claim’s
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`plain requirement that “all” such number of pixel lines must be used. See id.
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`Third, Maxell’s reliance on embodiments that describe recording videos using a subset of
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`pixels to argue that “all N number” of pixel lines is not “all” pixel lines also fails. See Opp. at 5-
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`6; ’493 Patent at 6:39-59 (describing outputting video to television), 4:64-5:15 (describing
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`Case 5:19-cv-00036-RWS Document 475 Filed 08/03/20 Page 5 of 8 PageID #: 25995
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`“image stabilization” for “moving video mode”); 6:60-7:20 (describing outputting video to
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`television). These video embodiments are inapplicable to the static image mode required by the
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`“all N number” limitation. Maxell cites its expert’s unsupported testimony to argue that these
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`video embodiments can be transposed to static image recording (Opp. at 8), but the specification
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`does not describe any embodiment using a subset of pixels to record static images and therefore
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`does not support Maxell’s position. See Mot., Ex. A at ¶¶ 62-63.
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`Fourth, Maxell’s reliance on the specification’s discussion of “effective” pixels to argue
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`that “all N number” does not include all pixel lines also fails. See Opp. at 6-8. Claim 5 does not
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`use the word “effective”—but uses the word “all” twice—and there is no basis to import
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`“effective” from the specification to the claims.
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`As the Markman Order explains: “When taking still images, all of the effective pixels
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`on the image sensing device are used to produce signals with as high a resolution as possible.”
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`D.I. 235 at 41. This requirement is consistent with the plain language of Claim 5, requiring the
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`use of “all signal charges accumulated in all N number of vertically arranged pixel lines” to
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`record static images.
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` Thus, summary judgment of non-infringement is appropriate.
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`II.
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`The Accused Products Do Not Infringe Claim 4 Of The ’991 Patent
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`Summary judgement is warranted because the accused products do not have a “TV
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`receiver” and thus cannot satisfy Claim 4’s “communication apparatus” limitation. Maxell
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`presents no factual disputes and improperly attempts to modify the Court’s claim construction by
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`Case 5:19-cv-00036-RWS Document 475 Filed 08/03/20 Page 6 of 8 PageID #: 25996
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`relying on unclaimed embodiments in the specification. See Tinnus Enters., LLC v. Telebrands
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`Corp., No. 6:16-cv-00033-RWS, 2017 WL 3457104, at *2-3 (E.D. Tex. Aug. 11, 2017) (finding
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`it improper “constru[e] the Court’s construction” using “the specification”).
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`Maxell argues that the Court’s construction of “communication apparatus” as a
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`“videophone function-added TV receiver” can be met by a video-on-demand (“VOD”) device.
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`Opp. at 13-14. But the specification does not support
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`Maxell’s position because it differentiates between TV
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`receiver and VOD functionalities. For example, Figure 4
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`illustrates “TV” and “VOD” separately, and all embodiments
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`distinguish between “TV program viewing function” and
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`“VOD function.” See ’991 Patent at 9:13-24, 10:13-23, Fig.
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`4. Thus, having VOD functionality does not qualify a device
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`as a TV receiver. More importantly, the Court’s construction requires a “videophone function-
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`added TV receiver,” not a “videophone function-added VOD player.” D.I. 235 at 56.
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`Apple’s Motion demonstrates that the accused products do not have a TV receiver: they
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`do not include TV receiver components (e.g., television tuners), do not perform TV receiver
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`functionality (e.g., receive television broadcast signals), and do not conform to TV standards
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`(e.g., NTSC, PAL, SECAM, ATSC, DVB, ISDB, or DTMB). Mot. at 11. Maxell misrepresents
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`Apple’s recitation of evidence as “claim construction” arguments. Opp. at 14-15. But Apple is
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`not construing any claim term, but rather providing undisputed factual support for its motion.
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`An iPhone, iPad, or iPod Touch is not a television receiver. Like most other internet-
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`capable computing devices, they can run software apps to stream videos over the internet. But
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`that does not make every computer a TV receiver. Thus, summary judgment should be granted.
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`Case 5:19-cv-00036-RWS Document 475 Filed 08/03/20 Page 7 of 8 PageID #: 25997
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`Dated: 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 475 Filed 08/03/20 Page 8 of 8 PageID #: 25998
`Case 5:19-cv-00036-RWS Document 475 Filed 08/03/20 Page 8 of 8 PageID #: 25998
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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 30. 2020.
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`/s/ Melissa R. Smith
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`Melissa R. Smith
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