Case 5:19-cv-00036-RWS Document 477 Filed 08/03/20 Page 1 of 12 PageID #: 26012
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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 NO. 8,339,493 IN VIEW OF THE
`SONY MVC-FD83 AND MVC-FD88 CAMERAS
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`Case 5:19-cv-00036-RWS Document 477 Filed 08/03/20 Page 2 of 12 PageID #: 26013
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`TABLE OF CONTENTS
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`I.
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`II.
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`The Evidence Apple Relies Upon Is Inconclusive. ........................................................... 1
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`Ample Evidence Shows That There Were Different Versions of the Sony
`Cameras.............................................................................................................................. 3
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`Case 5:19-cv-00036-RWS Document 477 Filed 08/03/20 Page 3 of 12 PageID #: 26014
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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) .......................................................................................3
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`Ductcap Prods. Inc. v. J&S Fabrication Inc.,
`No. 10-CV-00110, 2013 WL 595219 (E.D. Wis. Feb. 15, 2013) ..............................................2
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`Galindo v. Precision American Corp.,
`754 F. 2d 1212 (5th Cir. 1985) ..................................................................................................1
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`Krim v. BancTexas Grp., Inc.,
`989 F.2d 1435 (5th Cir. 1993) ...................................................................................................1
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`Navico Inc. v. Garmin Int’l, Inc.,
`No. 2:16-CV-00190-JRG, 2017 U.S. Dist. LEXIS 139806 (E.D. Tex. July 28,
`2017) ..........................................................................................................................................4
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`Case 5:19-cv-00036-RWS Document 477 Filed 08/03/20 Page 4 of 12 PageID #: 26015
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`TABLE OF EXHIBITS
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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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`5
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`6
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`7
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`8
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`9
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`10
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`11
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`12
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`13
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`14
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`Excerpts from the Opening Expert Report of Dr. Alan C. Bovik
`Regarding Invalidity of U.S. Patent No. 8,339,493
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`Subpoena to Sony to Produce Documents (March 6, 2020)
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`Subpoena to Sony to Testify at a Deposition (March 6, 2020)
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`Service Manual for MVC-FD83/FD88 Cameras (SCA0004377)
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`Sony Sales Data (SCA0004493)
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`Declaration of Susan West
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`Image of “P06” Version of MVC-FD88 Camera
`(MAXELL_APPLE0274104)
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`Image of “P07” Version of MVC-FD88 Camera (APL-
`MAXELL_01099037)
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`Image of “P06” Version of MVC-FD88 Camera
`(MAXELL_APPLE0274105)
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`Image of “P07” Version of MVC-FD88 Camera (APL-
`MAXELL_01099039)
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`Sony Digital Image Training Guide (SCA0003619)
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`Apple’s Reply to Patent Owner Preliminary Response in
`the ’493 Patent IPR Proceeding, filed July 20, 2020
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`Excerpts from the Rebuttal Expert Report of Vijay Madisetti,
`Ph.D., Concerning Validity of U.S. Patent No. 8,339,493,
`served June 4, 2020
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`Excerpts from the Expert Report of Robert L. Stoll, served June
`4, 2020
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`Apple’s opposition (Dkt. 425) does little to address its glaring failure of proof regarding
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`the public availability of the Sony MVC-FD83 and MVC-FD88 cameras. Apple has no evidence
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`explaining the origin of these devices, and no one took any steps to verify that the specific
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`cameras Apple analyzed were sold prior to the ’493 Patent’s January 2000 priority date. Apple
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`made no effort to trace the chain of title for these products or to confirm that they were not
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`modified or had their components replaced since their alleged sale in 1999.
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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 Sony MVC-FD83 and MVC-FD88
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`cameras are prior art. Summary judgment of no invalidity is therefore appropriate.
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`I.
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`The Evidence Apple Relies Upon—Sales, Manuals, and Magazines—Is Inconclusive.
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`Sales Data. Apple does not dispute that the Sony sales data it relies on to show public
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`availability nowhere indicates
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`from Sony explained this either. It is further undisputed that the Sony cameras were
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` Opp. at 4. Instead, Apple assumes that, because it subpoenaed Sony’s U.S.
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`subsidiary, it must have received U.S. sales data. Id. at 8. But Apple cites nothing to support that
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`assumption. Indeed, it is equally probable that this Sony subsidiary maintained sales data for the
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`entire North American region, including Canada and Mexico, or even maintained worldwide
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`sales data to track how U.S. sales compared to other countries. There is simply no evidence.
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`Apple’s unsupported assumptions about this sales data is no reason to deny Maxell’s
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`motion. 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 conclusory
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`allegations, improbable inferences, and unsupported speculation.”); Galindo v. Precision
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`American Corp., 754 F. 2d 1212, 1216 (5th Cir. 1985) (“unsupported allegations” improper).
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`Apple’s reliance on Ductcap Products (Opp. at 8-9) does not alter this reality. In that
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`case, the party asserting public sale of a prior art product provided two declarations from
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`knowledgeable witnesses attesting to the product’s sale. Ductcap Prods. Inc. v. J&S Fabrication
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`Inc., No. 10-CV-00110, 2013 WL 595219, at *6 (E.D. Wis. Feb. 15, 2013). That is not the case
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`here. The parties in Ductcap also did not dispute where those sales took place. See id. at *5-7.
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`Here,
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` Ductcap is inapplicable.
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`Product Manuals. Apple next argues that Sony’s manuals corroborate its inconclusive
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`sales data. Opp. at 9. A mere copyright date on a manual, however, cannot prove where or when
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`those products were sold. Indeed, Apple admits that “the Sony MVC-FD83/88 Service Manual
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`was first released in May 1999”—months before these devices were supposedly first offered for
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`sale in October/November 1999. Id. These copyright dates do not equate to sale dates.
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`Magazines. Similarly, Apple’s discussion of magazine advertisements never addresses
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`which version of the Sony cameras these ads relate to. See id. at 5-6, 9. Not one of these ads
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`provides sufficient information to determine whether the cameras Apple uses in its invalidity
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`analysis were the same as those mentioned in the ads. Indeed, many list only a model number
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`and price. See, e.g., Opp., Ex. F at 17; Opp., Ex. G at 3, 17, 19. The ads that offer more
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`information simply state a resolution and tout a digital zoom and floppy drive speed. See, e.g.,
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`Opp. Ex. G at 2, 4, 7, 9, 12, 16, 18. None of these ads mention video recording resolutions or the
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`ability to monitor in static image mode, as in claim 5 of the ’493 Patent.
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`Most critically, none of these ads explain how the Sony cameras allegedly generate image
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`signals by mixing or culling pixel lines in the manner required by the ’493 Patent. Apple has no
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`evidence that the cameras advertised in these ads perform these functions at all, much less that
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`they perform them in the same way as the unidentified cameras used in its invalidity analysis.
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`Also, the scant information these ads provide shows that different versions of the cameras
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`existed: a “Family Photo and Video” ad for the MVC-FD83 camera lists a resolution of “1024 x
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`960,” Opp., Ex. G at 7, while a “Camera City” ad lists a resolution of “1024 x 768,” id. at 12.
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`No Concession. Finally, Maxell has not “conceded” that the Sony cameras were sold
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`prior to the ’493 Patent’s priority date. Opp. at 8. Rather, it is Maxell’s position that, while Apple
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`argues that some version of a Sony camera was offered in late 1999, there is no evidence that the
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`specific Sony cameras at issue here—the ones Apple uses to show invalidity of the ’493 Patent—
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`were the same as whatever might have been offered for sale earlier. Apple’s failure to offer such
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`evidence dooms its invalidity theory. 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”).
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`II.
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`Ample Evidence Shows That There Were Different Versions of the Sony Cameras.
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`The existence of different versions of the Sony cameras is not just “speculation.” Opp. at
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`1, 10. Rather, the samples themselves, along with documents produced by Sony demonstrate
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`differences in the cameras’ features. The products have different serial numbers, different
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`production locations, different labeling, and different still image capture resolutions. Mot. at 6, 9-
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`10. The difference in still image capture alone—stated as “1280 x 960” in one instance and “up
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`to 1280 x 768” in another—is proof that different versions exist. See Mot., Ex. 11 at 2.
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`Apple asserts that it is relying on “all Sony MVC-FD83/88 products known and used in
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`the U.S. before January 2000, s their features and functionality are demonstrated by manuals,
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`product specifications, marketing documents, advertisements….” Opp. at 1, 10, 14. But Apple
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`offers no support from legal authority or this Court’s focusing orders for this. Its position here
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`also contradicts its assertions to the USPTO, which state that Apple is here relying on “the Sony
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`device itself”— not the printed publications describing it. Ex. 12, IPR Reply, at 4.
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`Apple next criticizes Maxell for not citing support from its own experts. Opp. at 11. Of
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`course Maxell’s experts agree that Apple has failed to carry its burden to show that the Sony
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`cameras are prior art. Ex. 13, Madisetti Rep., at ¶¶ 131-46; Ex. 14, Stoll Rep., at ¶¶ 196-220.1
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`Maxell’s decision not to cite this evidence in its motion was to avoid the appearance of this being
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`just another “battle of the experts.” It is not. In fact, not one of Apple’s experts has offered
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`opinions about the different versions of the Sony cameras and which version Apple used here.
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`When evidence of different camera versions contradicts Apple’s position, it simply
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`dismisses it. For example, as proof that different versions of the Sony cameras existed, Maxell
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`pointed to different image capture resolutions described in Sony’s Digital Image Training Guide
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`for the MVC-FD88 camera. Mot. at 9-10 (citing Mot., Ex. 11 at 2 (
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`). Apple simply brushes this off as a
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`“typographical error,” Opp. at 12, yet it offers no evidence to support that conclusion. Because
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`other documents list the
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` resolution, Apple assumes, everything else must be wrong.
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`Id. Nowhere does Apple show that there did not exist a version of the camera that captured
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`images “
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`,” even though it is Apple’s burden to resolve such issues. See Navico
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`Inc. v. Garmin Int’l, Inc., No. 2:16-CV-00190-JRG, 2017 U.S. Dist. LEXIS 139806, at *11 (E.D.
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`Tex. July 28, 2017). Ignoring inconvenient evidence cannot satisfy that burden.
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`Different resolutions also exist for the MVC-FD83 camera. Compare Opp., Ex. G at 7
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`(
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`) with Opp., Ex. G at 12 (
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`). There is no
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`evidence that this difference is a “typographical error.” Thus, Apple is wrong to claim that
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`Maxell has not identified evidence of different versions of the Sony cameras. See Opp. at 10.
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`1 Apple’s complaints about Mr. Stoll’s expertise (Opp. at 11) are the subject of a separate motion and have been
`addressed elsewhere.
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`These differences in resolutions are material: they affect not only Apple’s assertions
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`about the use of “all N number” of vertically arranged pixel lines to record static images, but
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`they also impact the assumptions Apple’s expert makes about the alleged downscaling in both
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`video recording mode and static image monitoring mode, both of which depend on this
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`resolution for Apple’s calculation of the claimed intervals of a first and second distance.
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`It is immaterial that Apple’s expert purportedly “verified” that two of the cameras’
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`components matched what was described in a Sony manual. Opp. at 12. That these two
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`components—among the many involved in the image processing in the Sony cameras—may
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`have been the same says nothing about whether the cameras’ firmware had changed, whether
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`their software had been updated, or whether any other components (such as the LCD screen2)
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`were replaced or modified. Apple’s expert has not addressed any of these issues and took no
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`steps to ensure that whatever he analyzed was the same as what was allegedly sold in 1999.
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`Although Apple identifies some similarities among the different versions of the Sony
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`cameras, id. at 12-13, it does not address all of the features required by claim 5 of the ’493
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`Patent. Apple has no evidence that the different versions of the Sony cameras allegedly record
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`moving videos and monitor in static image mode using pixel lines that have been “mixed or
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`culled” in the manner required by claim 5. Apple has no evidence that the cameras perform these
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`functions at all, much less that they perform them in the same way across all versions. The sales
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`data, the Sony documents, the magazine articles, and its expert are all silent on this point.
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`Apple’s failure to carry its burden does not simply go to the weight of the evidence. See
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`id. at 13. Rather, in circumstances where, as here, no reasonable juror could find for the non-
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`movant due to a lack of clear and convincing proof, summary judgment is appropriate. See
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`Anderson v. Liberty Lobby, Inc., 477 US 242, 252 (1986).
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`2 Indeed, Apple repeatedly references the use of “replacement screens” in the Sony cameras. Opp. at 4, 11-12.
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`Case 5:19-cv-00036-RWS Document 477 Filed 08/03/20 Page 10 of 12 PageID #: 26021
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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
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`Robert G. Pluta
`Amanda Streff Bonner
`Luiz Miranda
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`Dated: July 30, 2020
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`Case 5:19-cv-00036-RWS Document 477 Filed 08/03/20 Page 11 of 12 PageID #: 26022
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`MAYER BROWN LLP
`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 477 Filed 08/03/20 Page 12 of 12 PageID #: 26023
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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, with a copy of this document via
`electronic mail pursuant to Local Rule CV-5(d).
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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