Case 5:19-cv-00036-RWS Document 480 Filed 08/03/20 Page 1 of 10 PageID #: 26063
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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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`Defendant.
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.’S SUR-REPLY IN OPPOSITION TO DEFENDANT
`APPLE INC.’S MOTION TO STRIKE PORTIONS OF MAXELL’S OPENING
`EXPERT REPORTS THAT EXCEED THE SCOPE OF MAXELL’S
`P.R. 3-1 INFRINGEMENT CONTENTIONS AND NEW EXPERT
`THEORIES OFFERED AFTER EXPERT REPORTS
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`Case 5:19-cv-00036-RWS Document 480 Filed 08/03/20 Page 2 of 10 PageID #: 26064
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`III.
`IV.
`V.
`VI.
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` THEORY IN DR. MADISETTI’S REPORT .............................. 1
` THEORY IN DR. VOJCIC’S AND MR.
`CROCKETT’S REPORTS ................................................................................................ 3
` DOE THEORY IN DR. MADISETTI’S REPORT .................................... 4
`DR. TIM WILLIAMS REGARDING THE ’586 PATENT .............................................. 4
`APPLE WILL NOT SUFFER ANY PREJUDICE ............................................................ 5
`CONCLUSION .................................................................................................................. 5
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`Case 5:19-cv-00036-RWS Document 480 Filed 08/03/20 Page 3 of 10 PageID #: 26065
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`When faced with a similar motion in the context invalidity expert reports, Apple
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`emphasized that contentions serve a notice function, and “experts may elaborate on disclosed . . .
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`theories without using the same exact words as in [] contentions.” D.I. 346 at 7; see also Ex. 9,
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`Apple’s Presentation for Hearing on Maxell’s Motion to Strike at slide 20 (“Contentions . . .
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`need only provide fair notice”). In response, this Court found that “experts [are] not limited to
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`the precise words and phrases used in the contentions, and [parties are] entitled to add detail to
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`previously disclosed theories.” D.I. 444 at 5. Despite Apple’s contradictory positions on the
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`identical issue, the support here is undeniable—even more than what is required—including
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`Maxell’s experts’ uses in many instances of the precise words and phrases found in the
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`infringement contentions albeit with expansion. Accordingly, Apple’s Motion should be denied.
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`I.
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` Theory in Dr. Madisetti’s Report
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`In its Motion, Apple argued that
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` Mot. at 4. Thus, in its Opposition, Maxell
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`identified an excerpt from its infringement contentions describing the exact operation of the
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`“image sensor” reading out “lower number of lines” of pixels from the image sensor as part of
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`outputting the image to the image signal processor. Opp. at 4. The inquiry should close here. But
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`faced with this daunting evidence, Apple now shifts gears and—without citing to any expert
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`opinion—construes binning to be a “specific process that represent a 2x2 array of pixels in a
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`simplified format.” Reply at 2. On one hand, Apple argued to this Court that expert reports need
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`not include the exact same words as the ones included in the contentions, but when the shoe is on
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`the other foot, Apple wants Maxell’s infringement contentions to include Apple’s definition of
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`“binning” in order to put Apple on notice of a disclosed theory.
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`As Maxell has repeatedly explained in opposing numerous motions filed by Apple on
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`Case 5:19-cv-00036-RWS Document 480 Filed 08/03/20 Page 4 of 10 PageID #: 26066
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`these claim limitations, the infringement contentions provide sufficient notice that the accused
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`products downsample image data as part of outputting images in different resolutions. Opp. at 4.
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`Evidence of outputting of images in different resolutions by downsampling can be found in
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`various operations in the accused products including by applying scalers or by binning. Indeed,
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`binning operations are repeatedly and consistently disclosed in Maxell’s infringement
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`contentions. See Ex. 8, Inf. Cont., Appx. 3 at 108 (“On information and belief, the pixel binning
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`involves mixing pixels”); see also id. at 214 (same); Opp. at 3 (disclosing “binning” twelve
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`times). There is no new infringement theory. Binning is simply evidence of the accused products
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`mixing and culling pixels such that the accused products downsample pixels to output images in
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`different resolutions, just like they downsample while applying scalers.
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`Moreover, Apple admits that
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` is “Slo-Mo”
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`mode. Reply at 3. And while Apple says that the SSICs “lack any mention of ‘Slo-Mo’”, Maxell
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`disclosed Slo-Mo mode repeatedly in its First Infringement Contentions and in SSICs. See Opp.
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`at 5 (describing the disclosure of “slow motion” mode in the First Infringement Contentions); see
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`also Ex. 8, Inf. Cont., Appx. 3 at 296 (“Use camera to record videos on your iPhone and change
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`modes to take slow motion and time-lapse videos”).1
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`Thus, Maxell identified “binning” in its infringement contentions using the same words
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`used by Dr. Madisetti in his expert report, and Maxell identified “the only mode that uses sensor
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`binning” in its infringement contentions. Aside from using the same words and identifying the
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`1 Apple also alleges that Maxell “admits that its SSIC did not identify the actual sensor binning
`source code.” Reply at 2. Maxell makes no such concession. Maxell explicitly stated that it
`believes these source code files merely provide evidence of the disclosed theories and has only
`agreed to strike out certain source code files because Maxell does not intend to rely on these at
`trial. Therefore, Maxell decided to narrow down the disputes between the parties, an exercise
`reasonable counsel take all the time instead of disagreeing for the sake of disagreeing. Opp at 7.
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`Case 5:19-cv-00036-RWS Document 480 Filed 08/03/20 Page 5 of 10 PageID #: 26067
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`only mode that uses sensor binning, it is unclear what more Apple needed to be on notice of
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`Maxell’s infringement theory.
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`II.
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` Theory in Dr. Vojcic’s and Mr. Crockett’s Reports
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`Apple has not addressed any of Maxell’s detailed arguments explaining how Dr. Vojcic
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`and Mr. Crockett are not presenting a new infringement theory but are merely pointing to
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`evidence showing infringement by the disclosed power control function, including closed loop
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`power control and gain control of variable amplitude amplifier. Opp. at 7-9. Thus, Maxell simply
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`incorporates by reference its Opposition to rebut Apple’s conclusory statement that Dr. Vojcic
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`and Mr. Crockett “presented an entirely new infringement theory that accuses the
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` of meeting certain limitations.” Reply at 3.
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`Apple further alleges that Maxell “deceptively adds new annotations” to rebut Apple’s
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`argument that Maxell’s infringement contentions were limited to transmit path components.
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`Reply at 3-4. First, there was nothing “deceptive” about these annotations because Maxell
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`explicitly stated “red annotations added” in its brief, an exercise that is quite common in legal
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`writing when the writer wants to add emphasis or call attention to a particular portion of an
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`excerpt/quote. Opp. at 9. Second, as Apple demonstrates in the original image from the
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`infringement contentions, neither the transmit path nor the receive path was highlighted in the
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`infringement contentions; thus, Maxell was not limiting its infringement theories to transmit path
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`components. Third, Apple does not address Maxell’s argument that when discussing bias and
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`gain control, the infringement contentions explicitly highlighted amplifiers in the receive path
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`and identified them with datasheets. Opp. at 9-10.
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`In summary, Maxell’s experts do not present any new
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` theory but
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`only provide evidence of the disclosed theories, and Maxell’s infringement contentions were not
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`limited to transmit path components as alleged by Apple. Thus, none of Dr. Vojcic or Mr.
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`Case 5:19-cv-00036-RWS Document 480 Filed 08/03/20 Page 6 of 10 PageID #: 26068
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`Crockett’s opinions are directed to new infringement theories, and there is nothing to strike.
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`III.
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` DOE Theory in Dr. Madisetti’s Report
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`Apple alleges that “boilerplate language merely repeats the claim limitation; it does not
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`provide notice of Maxell’s DOE theory.” Reply at 4. First, as the Court held based on arguments
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`from Apple, “if [Apple] believed that [Maxell] improperly relied on ‘boilerplate’ language, it
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`should have raised the issue with the Court when it received the contentions.” D.I. 444 at 5
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`(parties names switched). For this reason alone, the Court should deny Apple’s untimely
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`complaints with respect to Maxell’s alleged used of boilerplate language in its contentions.
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`Second, as addressed in Maxell’s Opposition, Apple is performing an incomplete analysis
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`on the infringement contentions in trying to argue that it did not have sufficient notice of
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`infringing literally and under DOE. Opp. at 10-11. When the infringement contentions for claim
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`element [6.b] are considered in their entirety, it becomes clear that first they provide notice to
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`Apple that
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` infringes literally and then they provide notice that to the extent Apple alleges
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`that this limitation is not met literally, the accused products also infringe under DOE. Id. Dr.
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`Madisetti is merely elaborating on Maxell’s disclosed doctrine of equivalents theory, and there is
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`no new/undisclosed theory.
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`IV.
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`Dr. Tim Williams Regarding the ’586 Patent
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`Dr. Williams is not presenting any new opinions. Claims 1 and 16 do differ in claim
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`scope, i.e., claim 1 is directed to “[a] mobile terminal” and claim 16 is directed to “[a] lock state
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`control system.” Maxell will not agree to a stipulation that “Claims 1 and 16” do not differ in
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`scope when this is factually incorrect. But as Maxell noted in its Opposition, this Motion is
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`premature, and if Dr. Williams presents testimony at trial that is not supported by his expert
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`reports, Apple “may raise an appropriate objection at that time.” D.I. 444 at 6-7; see also Opp. at
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`12.
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`Case 5:19-cv-00036-RWS Document 480 Filed 08/03/20 Page 7 of 10 PageID #: 26069
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`V.
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`Apple Will Not Suffer Any Prejudice
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`Apple has not shown that Maxell has offered any infringement theories outside the scope
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`of its infringement contentions. Opp. at 13. More so, Apple has already argued that there is no
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`prejudice when experts address “allegedly ‘new opinions’ in [] responsive reports.” D.I. 346 at
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`15. Thus, under Apple’s own logic Apple has not identified any support of its assertions of
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`prejudice should its Motion be denied.
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`Further, even the alleged prejudice identified by Apple—that its experts were “forced to
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`analyze and respond to those new allegations in just one month”—is unfounded. On May 1, one
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`week before infringement expert reports were due, Apple indicated an intention to “ship” source
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`code computers to its experts’ homes so that the experts could have 24/7 access to source code.
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`D.I. 313 at 5. The remote review access was available for Apple’s experts2 providing unfettered
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`access to source code to develop non-infringement arguments. This conduct belies any notion of
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`the civility required under AT-3(e) and absolutely cures any “alleged” prejudice claimed by
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`Apple.
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`VI.
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`Conclusion
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`For all the reasons identified above and in its Opposition, Maxell respectfully requests
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`that this Court deny Apple’s Motion to Strike Portions of Maxell’s Opening Expert Reports that
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`Exceed the Scope of Maxell’s P.R. 3-1 Infringement Contentions and New Expert Theories
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`Offered After Expert Reports.
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`2 This came as a surprise to Maxell as its counsel and experts had no access to source code from
`March 16-April 16, 2020. Id. At that point, at Maxell’s expense, Apple made one computer
`available in a facility in Maryland after repeated requests and proposals by Maxell. Id. This
`review required Maxell’s attorney and expert to put themselves and their families in harm’s way
`during the pandemic. Although Maxell requested remote review, Apple stated that remote review
`was not an option. Id.
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`Case 5:19-cv-00036-RWS Document 480 Filed 08/03/20 Page 8 of 10 PageID #: 26070
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`Dated: July 30, 2020
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`By:
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`/s/ Jamie B. Beaber
`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 J. 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
`
`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
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`Case 5:19-cv-00036-RWS Document 480 Filed 08/03/20 Page 9 of 10 PageID #: 26071
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`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 480 Filed 08/03/20 Page 10 of 10 PageID #: 26072
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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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