Case 5:19-cv-00036-RWS Document 483 Filed 08/04/20 Page 1 of 9 PageID #: 26427
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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 DAUBERT MOTION TO EXCLUDE
`TESTIMONY AND OPINIONS OF MAXELL’S EXPERTS FOR IMPROPER
`APPLICATION OF THE COURT’S CLAIM CONSTRUCTION
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`PUBLIC VERSION
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`PUBLIC VERSION
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`Case 5:19-cv-00036-RWS Document 483 Filed 08/04/20 Page 2 of 9 PageID #: 26428
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`III.
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`DR. ROSENBERG PROPERLY APPLIED THE COURT’S CONSTRUCTION
`OF THE MEANS-PLUS-FUNCTION TERMS IN THE NAVIGATION
`PATENTS .......................................................................................................................... 1
`DR. BYSTROM PROPERLY APPLIED THE COURT’S CONSTRUCTION OF
`“COMMUNICATION APPARATUS” IN THE ’991 PATENT. ..................................... 3
`DR. BROGIOLI PROPERLY APPLIED THE MEANS-PLUS-FUNCTION
`CONSTRUCTIONS FOR THE ’794 PATENT ................................................................ 4
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`-i-
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`Case 5:19-cv-00036-RWS Document 483 Filed 08/04/20 Page 3 of 9 PageID #: 26429
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`When faced with citations from Maxell’s experts’ reports—including from the
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`paragraphs Apple seeks to strike—demonstrating proper application of the Court’s constructions
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`faithfully, Apple casts them as an attempt to “distract the Court by pointing to unrelated expert
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`testimony that is not the subject of Apple’s motion.” Reply at 1. Instead of justifying its frivolous
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`motion and addressing the opinions of Maxell’s experts, Apple fails to address the specific
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`language in the reports and continues to interpret sentences and depositions testimony out of
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`context. When considered in the proper context and read in totality, it is clear that Drs.
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`Rosenberg, Bystrom, and Brogioli’s opinions correctly applied the Court’s claim constructions.
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`I.
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`Dr. Rosenberg Properly Applied the Court’s Construction of the Means-Plus-
`Function Terms In the Navigation Patents
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`Apple does not address the argument that Apple’s expert (Dr. Paradiso) and Apple
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`acknowledged in this case that paragraphs 519-522 and 657-660 of Dr. Rosenberg’s report—the
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`same paragraphs that Apple seeks to exclude—address “inclusion of a ‘Personal Handyphone
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`System (PHS) terminal’ in the accused products.” Opp. at 2-3. Apple does not explain how it is
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`possible for Dr. Rosenberg to include a PHS terminal in the Accused Products in the same
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`paragraphs of his expert report while also “treating PHS as optional” in these paragraphs.
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`Apple admits that “Dr. Rosenberg’s report [] account[s] for a scenario where a PHS is
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`required.” Reply at 1-2. While Apple states that it is not seeking to strike these opinions, it
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`continues its efforts to strike paragraphs 519-522 of Dr. Rosenberg’s report where—as
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`demonstrated by Maxell’s Opposition—he explicitly opines that each of the Accused Products
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`“includes a device for data communication of a portable telephone and a Personal Handyphone
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`System (PHS) terminal.” Opp. at 4-5.
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`Apple continues to take issue with Dr. Rosenberg’s use of the phrase “and/or” when
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`describing certain functionalities of a PHS consistent with the language of the specification. Opp.
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`at 6. But his use of the phase is not inconsistent with the Court’s construction. Nowhere in his
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`expert report does Dr. Rosenberg say that “PHS” is optional to show infringement, and Apple
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`has not shown this in its motion. The same is true for Dr. Rosenberg’s deposition where he
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`explicitly informed Apple that “even if PHS was required” he has shown this by showing a
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`“device for character communication” as very clearly described in the patent. Opp. at 8.
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`Lastly, and as expressed by Dr. Rosenberg during his deposition, Apple and its experts
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`are improperly applying the Court’s construction, not Maxell. The Court’s construction requires
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`a “CPU 71 and device for data communication 76 of a portable telephone and a Personal
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`Handyphone System (PHS) terminal.” D.I. 235 at 18. Dr. Rosenberg has shown that
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` correspond to the “device for data
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`communication 76 of a portable telephone and a Personal Handyphone System (PHS) terminal.”
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`Opp. at 3-6. Dr. Rosenberg’s opinions are clear, and there is no obfuscation. Apple is frustrated
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`because it wants to manufacture a non-infringement positon by interpreting the Court’s
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`construction as requiring two of the “device for data communication,” one for a portable
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`telephone and one for a PHS. For example,
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`Rosenberg opines that
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` Dr.
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`Court’s construction is not difficult to understand or apply, and Dr. Rosenberg has done just that.
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`Apple, however, wants to misunderstand and misapply the construction narrowly by stuffing an
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`entire PHS into the claim. This is improper and the reason Maxell moved to exclude such
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`opinions. See D.I. 369.
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`Case 5:19-cv-00036-RWS Document 483 Filed 08/04/20 Page 5 of 9 PageID #: 26431
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`II.
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`Dr. Bystrom Properly Applied the Court’s Construction of “Communication
`Apparatus” in the ’991 Patent
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`Apple’s arguments seeking to exclude Dr. Bystrom’s opinions demonstrate Apple’s
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`improper application of the Court’s construction, not Dr. Bystrom’s. This is clear from Apple’s
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`Motion For Summary Judgement on the same issue where Apple states the following:
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`D.I. 372 at 3 (highlights added). The Court construed “communication apparatus” to be a
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`“videophone function-added TV receiver.” The Court’s construction does not require a
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`videophone function-added TV receiver that must receive or decode a television broadcast signal
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`but not over the Internet. That is Apple’s overly narrow interpretation as evidenced by Dr.
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`Bederson’s opinions.
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`Indeed, Dr. Bystrom opines at length that the Accused Products do implement a
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`“videophone function added TV receiver” when they provide Apple TV functionality, and she
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`properly applies the Court’s construction when providing these opinions. Ex. 9, Bystrom Rpt. at
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`pp. 135-205. The fact that Dr. Bystrom applied the Court’s construction is abundantly clear from
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`her deposition testimony where she explained that in the construction does not require a decoder
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`for decoding television broadcast signals and/or a tuner (Ex. 10, Bystrom Dep. Tr. at 178:13-14)
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`and that “[w]hen looking at the claims, we have to look at the claim language [and] what is
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`expressly called out in the claims.” Id. at 197:23-25. And nowhere in the claim or the Court’s
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`construction is there any requirement of a decoder or a tuner, as Apple now seeks to import. This
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`is precisely the reason why Dr. Bederson’s opinions warrant exclusion, not Dr. Bystrom’s. See
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`Case 5:19-cv-00036-RWS Document 483 Filed 08/04/20 Page 6 of 9 PageID #: 26432
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`D.I. 369.1
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`III.
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`Dr. Brogioli Properly Applied the Means-Plus-Function Constructions for the ’794
`Patent
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`Apple’s challenge to Dr. Brogioli’s opinions boils down to a dispute over what qualifies
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`as a function/component device, and what does not. Apple’s Reply does nothing to change this
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`fact, and merely seeks to recast this Court’s claim construction orders (here and in the ZTE case)
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`as something they are not.
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`First, Apple would have this Court believe that a videophone or audio communication
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`device is inherently precluded from qualifying as a function/component device by virtue of it
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`containing a display. Of course, this is wrong. Neither of the Court’s orders excludes “displays”
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`from the enumerated classes of structure for the function/component device limitations. Nor do
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`they state that a display is inherently a common device instead of a function/component device.
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`Apple is of course free to present such arguments to a jury; however, Apple’s non-infringement
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`theories are no basis for excluding Dr. Brogioli’s infringement opinions.
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`Second, Apple’s argument that Maxell “attempts to wiggle out” of the Court’s claim
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`construction (Reply at 4) is belied by the record. Dr. Brogioli articulates the Court’s construction
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`and follows it to the letter. In doing so, he identifies within each of the Accused Products
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`exemplary audio communication and/or videophone devices which include a display, among
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`other components.2 Dr. Brogioli also includes theories whereby the display itself is the
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`1 Apple makes clear its intention of re-construing the Court’s construction narrowly by arguing
`that the specification “differentiates between ‘TV’ and ‘VOD’ functionality in all embodiments.”
`See Reply at 4. Once again, Apple is confirming that it is trying to import limitations from the
`specification into the claim because the claim makes no distinction between TV and VOD
`functionalities.
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`2 In its Reply, Apple appears to state that it does not seek to exclude infringement theories in
`which the “display” is part of the function/component device as opposed to the “display” itself.
`Reply at 5 (“Maxell’s arguments relating to other accused components that do not violate the
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`Case 5:19-cv-00036-RWS Document 483 Filed 08/04/20 Page 7 of 9 PageID #: 26433
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`function/component device, by virtue of being an integral component for videophone or audio
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`communication functionality. Neither is precluded by the Court’s claim construction.
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`Third, Apple’s characterization of the lack of a construction for “common” component
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`device as “irrelevant” (Reply at 5) misses the point. Apple relies on its own conception of what a
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`“common” device
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`is
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`in order
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`to summarily dismiss
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`the “display” as a candidate
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`function/component device. The fact remains that this term has not been construed, and there is
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`no indication in the specification that the display of an information processing device must be a
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`“common” device. See, e.g., D.I. 111-8 (’794 Patent) at 6:14-18 and Fig. 3. Nor should this
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`Court countenance Apple’s backdoor attempt to obtain a narrowing construction for the
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`function/component or “common” device limitations.
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`Accordingly, Maxell respectfully requests that this Court deny Apple’s Motion.
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`Dated: July 31, 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
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`Court’s construction are irrelevant to Apple’s Motion—Apple has moved to exclude only
`opinions by Dr. Brogioli that improperly identify a common component as an accused ‘function
`device’ or ‘component device.’”).
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`Case 5:19-cv-00036-RWS Document 483 Filed 08/04/20 Page 8 of 9 PageID #: 26434
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`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
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`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
`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 483 Filed 08/04/20 Page 9 of 9 PageID #: 26435
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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 31st 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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