Case 5:19-cv-00036-RWS Document 485-1 Filed 08/05/20 Page 1 of 5 PageID #: 26471
`
`
`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.
`
`DECLARATION OF LUANN L. SIMMONS IN SUPPORT OF
`APPLE INC.’S RENEWED MOTION TO STAY PENDING DETERMINATION OF
`INTER PARTES REVIEW OF THE PATENTS-IN-SUIT
`
`I, Luann L. Simmons, hereby declare as follows:
`
`1.
`
`I am an attorney at the law firm of O’Melveny & Myers LLP, counsel for
`
`Defendant Apple, Inc. (“Apple”) in this matter filed by Plaintiff Maxell, Ltd. (“Maxell”). I have
`
`personal knowledge of the facts stated herein and if called to testify could and would
`
`competently testify thereto.
`
`2.
`
`Attached as Exhibit A is a true and correct copy of the United States Patent
`
`Office’s Patent Trial and Appeal Board Statistics, which contains data valid as of June 30, 2020.
`
`This document was retrieved from the USPTO’s website
`
`(https://www.uspto.gov/sites/default/files/documents/Trial_Statistics_20200630_.pdf) on August
`
`3, 2020.
`
`3.
`
`Attached as Exhibit B is a true and correct copy of Lex Machina’s Patent Trial
`
`and Appeal Board Statistics for trials listing Apple Inc. as the Petitioner, which contains data
`
`1
`
`
`
`
`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.
`
`DECLARATION OF LUANN L. SIMMONS IN SUPPORT OF
`APPLE INC.’S RENEWED MOTION TO STAY PENDING DETERMINATION OF
`INTER PARTES REVIEW OF THE PATENTS-IN-SUIT
`
`I, Luann L. Simmons, hereby declare as follows:
`
`1.
`
`I am an attorney at the law firm of O’Melveny & Myers LLP, counsel for
`
`Defendant Apple, Inc. (“Apple”) in this matter filed by Plaintiff Maxell, Ltd. (“Maxell”). I have
`
`personal knowledge of the facts stated herein and if called to testify could and would
`
`competently testify thereto.
`
`2.
`
`Attached as Exhibit A is a true and correct copy of the United States Patent
`
`Office’s Patent Trial and Appeal Board Statistics, which contains data valid as of June 30, 2020.
`
`This document was retrieved from the USPTO’s website
`
`(https://www.uspto.gov/sites/default/files/documents/Trial_Statistics_20200630_.pdf) on August
`
`3, 2020.
`
`3.
`
`Attached as Exhibit B is a true and correct copy of Lex Machina’s Patent Trial
`
`and Appeal Board Statistics for trials listing Apple Inc. as the Petitioner, which contains data
`
`1
`
`
`
`Case 5:19-cv-00036-RWS Document 485-1 Filed 08/05/20 Page 2 of 5 PageID #: 26472
`
`
`valid as of August 3, 2020. This document was retrieved from Lex Machina’s website on
`
`August 3, 2020.
`
`4.
`
`Attached as Exhibit C is a true and correct copy of Lex Machina’s Patent Trial and
`
`Appeal Board Statistics for trials listing Erise IP, PA as counsel for the Petitioner, which contains
`
`data valid as of August 3, 2020. This document was retrieved from Lex Machina’s website on
`
`August 3, 2020.
`
`5.
`
`Attached as Exhibit D is a true and correct copy of an excerpt from the Rebuttal
`
`Expert Report of Branimir Vojcic, Ph.D. Concerning Validity of U.S. Patent No. 6,408,193, dated
`
`June 4, 2020.
`
`6.
`
`Attached as Exhibit E is a true and correct copy of the Decision Granting
`
`Institution of Inter Partes review for U.S. Patent No. 6,928,306 (IPR2020-00204), dated June 19,
`
`2020.
`
`7.
`
`Attached as Exhibit F is a true and correct copy of the Decision Granting Institution
`
`of Inter Partes review for U.S. Patent No. 6,329,794 (IPR2020-00199), dated June 19, 2020.
`
`8.
`
`Attached as Exhibit G is a true and correct copy of the Decision Granting
`
`Institution of Inter Partes review for U.S. Patent No. 10,084,991 (IPR2020-00200), dated July 15,
`
`2020.
`
`9.
`
`Attached as Exhibit H is a true and correct copy of the Decision Granting
`
`Institution of Inter Partes review for U.S. Patent No. 10,212,586 (IPR2020-00202), dated July 15,
`
`2020.
`
`10.
`
`Attached as Exhibit I is a true and correct copy of Maxell’s Final Election of
`
`Asserted Claims, dated March 17, 2020.
`
`2
`
`
`
`Case 5:19-cv-00036-RWS Document 485-1 Filed 08/05/20 Page 3 of 5 PageID #: 26473
`
`
`11.
`
`Attached as Exhibit J is a true and correct copy of Plaintiff Maxell, Ltd.’s
`
`Identification of Trial Witnesses, dated June 25, 2020.
`
`12.
`
`Attached as Exhibit K is a true and correct copy of Apple Inc.’s Trial Witness List,
`
`dated June 25, 2020.
`
`13.
`
`Attached as Exhibit L is a true and correct copy of Plaintiff Maxell, Ltd.’s
`
`Identification of Rebuttal Trial Witnesses, dated July 2, 2020.
`
`14.
`
`Five of the 10 Patents-in-Suit—the ’193, ’493, ’317, ’999, and ’498 Patents—have
`
`already expired. The ’794 Patent will expire on September 7, 2020.
`
`15.
`
`On June 12, 2019, Maxell served its Infringement Contentions, in which it
`
`asserted a total of 90 claims from the 10 Patents-in-Suit.
`
`16.
`
`The parties and the Court agreed in the Court’s Focusing Order that 90 claims,
`
`particularly given the wide range of technologies reflected in those claims, created far too broad
`
`of a scope for this case and both parties would need to narrow it by reducing asserted claims and
`
`prior art.
`
`17.
`
`Apple, nonetheless, promptly began searching for and evaluating prior art for all 90
`
`claims, and, within seven months, finished searching for and analyzing thousands of prior art
`
`references for each of the 90 claims at issue; prepared invalidity contentions, including 63 claim
`
`charts mapping prior art to asserted claims; coordinated with technical experts; and drafted and
`
`filed nine IPR petitions.
`
`18.
`
`On November 6, 2019, Maxell made its Preliminary Election of Asserted Claims,
`
`reducing the number of asserted claims to 40.
`
`19. Maxell’s November 2019 narrowing dropped claims that recited several unique
`
`limitations, allowing Apple to narrow its search and analysis to only those claims still at issue.
`
`3
`
`
`
`Case 5:19-cv-00036-RWS Document 485-1 Filed 08/05/20 Page 4 of 5 PageID #: 26474
`
`
`20.
`
`On March 17, 2020, Maxell made its Final Election of Asserted Claims, reducing
`
`the number of asserted claims to 20.
`
`21.
`
`Apple filed IPR2020-00199, challenging the validity of claims 1-3 and 5-14 of U.S.
`
`Patent No. 6,329,794, on December 19, 2019. The PTAB found that the challenged claims are
`
`reasonably likely to be unpatentable and instituted inter partes review on June 19, 2020.
`
`22.
`
`Apple filed IPR2020-00204, challenging the validity of claims 2, 5, 6, and 12-15
`
`of U.S. Patent No. 6,928,306, on December 20, 2019. The PTAB found that the challenged claims
`
`are reasonably likely to be unpatentable and instituted inter partes review on June 19, 2020.
`
`23.
`
`Apple filed IPR2020-00201, challenging the validity of claims 1-7 of U.S. Patent
`
`No. 7,116,438, on December 19, 2019, and the PTAB denied institution on June 19, 2020.
`
`24.
`
`Apple filed IPR2020-00203, challenging the validity of claims 1, 6, and 7 of U.S.
`
`Patent No. 6,408,193, on December 20, 2019, and the PTAB denied institution on July 6, 2020.
`
`25.
`
`Apple filed IPR2020-00200, challenging the validity of claims 1-5 and 8-12 of U.S.
`
`Patent No. 10,084,991, on December 19, 2019. The PTAB found that the challenged claims are
`
`reasonably likely to be unpatentable and instituted inter partes review on July 15, 2020.
`
`26.
`
`Apple filed IPR2020-00202, challenging the validity of claims 1-2, 6-7, 9-10, 13-
`
`14, and 16-18 of U.S. Patent No. 10,212,586, on December 19, 2019. The PTAB found that the
`
`challenged claims are reasonably likely to be unpatentable and instituted inter partes review on
`
`July 15, 2020.
`
`27.
`
`Apple filed IPR2020-00407, -00408, and -00409 challenging the validity of the
`
`related ’317, ’498, and ’999 Patents on January 13, 2020.
`
`4
`
`
`
`Case 5:19-cv-00036-RWS Document 485-1 Filed 08/05/20 Page 5 of 5 PageID #: 26475
`
`
`28.
`
`Apple filed IPR2020-00407, challenging the validity of claims 1-3, 5, 10-15, 17,
`
`and 18 of U.S. Patent No. 6,748,317, on January 13, 2020, and the PTAB’s institution decision is
`
`due by August 12, 2020.
`
`29.
`
`Apple filed IPR2020-00408, challenging the validity of claims 1, 3-5, 7-11, and 13
`
`of U.S. Patent No. 6,430,498, on January 13, 2020, and the PTAB’s institution decision is due by
`
`August 12, 2020.
`
`30.
`
`Apple filed IPR2020-00409, challenging the validity of claims 1-6 of U.S. Patent
`
`No. 6,580,999, on January 13, 2020, and the PTAB’s institution decision is due by August 12,
`
`2020.
`
`31.
`
`Apple filed IPR2020-00507, challenging the validity of claims 1, 3-6, and 10-11 of
`
`U.S. Patent No. 8,339,493, on March 17, 2020, and the PTAB’s institution decision is due by
`
`September 25, 2020.
`
`32.
`
`Apple’s final petition, filed March 17, 2020, involved unique third-party discovery
`
`issues that required additional time to resolve.
`
`I declare under the penalty of perjury that the foregoing is true and correct.
`
`Executed in San Francisco, California, on this 3rd day of August, 2020.
`
`
`
`/s/ Luann L. Simmons
`Luann L. Simmons
`
`
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
