Case 5:19-cv-00036-RWS Document 486 Filed 08/05/20 Page 1 of 9 PageID #: 26773
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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 SURREPLY TO APPLE INC.’S MOTION FOR PARTIAL
`SUMMARY JUDGMENT OF SUBJECT MATTER INELIGIBILITY UNDER
`35 U.S.C. § 101 FOR U.S. PATENT NOS. 6,748,317, 6,430,498, AND 6,580,999
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`Case 5:19-cv-00036-RWS Document 486 Filed 08/05/20 Page 2 of 9 PageID #: 26774
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`Apple’s Reply (Dkt. 452) (“Reply”) still does not address the claim language of the
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`individual claims, still does not follow the Federal Circuit’s criteria for determining whether user
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`interface patents are directed to abstract subject matter, and still does not address the myriad
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`evidence showing that the claims recite novel and inventive concepts relating to new
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`technological environments. Accordingly, Apple’s Motion should be denied.
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`As an initial matter, Apple’s Reply relies on an extremely misleading claim about the
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`common specification that needs to be corrected. As stated by Apple, the common specification:
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`explains that its “portable terminal” is “low in performance” and uses existing,
`generic hardware “devices”―a “display device,” “input device,” “memory
`device,” “device for data communication,” “device for getting
`location
`information,” and “device for getting direction information.”―“just like those of
`ordinary portable telephones.” ’317 at 2:62-3:1, 9:42-59, Fig. 10.
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`Reply at 3 (emphasis in Reply); see also id. at 1, 4 (quoting the same passage). But Apple has
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`deceptively reordered the words used by the specification. In fact, this quoted passage makes
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`clear that the inventions are accomplished by adding unconventional devices to existing devices:
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`In order to achieve the above objects, the portable terminal of the present
`invention with the function of walking navigation is provided with data
`communication, input, and display devices just like those of ordinary portable
`telephones and PHS terminals, as well as a device for getting location information
`and a device for getting direction information denoting the user's present place.
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`’317 Patent at 2:62-3:1. Thus, opposite to Apple’s misleading statement, the Navigation Patents
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`claim inventions that are not accomplished using an ordinary portable terminal.
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`Ultimately, the claimed inventions allow a portable terminal to more accurately present
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`navigation information to a user within existing constraints on GPS (and similar devices) by
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`using a novel combination of components paired with a user interface. See ’317 Patent at
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`29:64:65 (“the portable terminal is assumed to be low in performance just like a portable
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`telephone and a PHS”). While each of the Navigation Patents claims a different solution, the
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`solutions improve existing devices: they do not fix the known limitations of GPS itself, but
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`Case 5:19-cv-00036-RWS Document 486 Filed 08/05/20 Page 3 of 9 PageID #: 26775
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`instead allow portable terminals to remedy these limitations by using such devices as “a device
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`for getting direction information denoting an orientation of [the] portable terminal” in a novel
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`combination with additional hardware including, for example, a device for getting location
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`information. See ’498 Patent at Claim 10 (on which Claim 13 depends). It is in this context that
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`Dr. Rosenberg testified that the invention did not recite improvements in the underlying devices,
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`with the clarification that the combination was a new arrangement that enabled new navigation
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`functionality:
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`Q. Going one-by-one, the patent doesn’t make any improvements to the GPS
`technology, correct?
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`A. Well, I think that could be taken out of context. It does utilize a specific
`arrangement of technologies and user interface display to make GPS technologies
`applicable and usable and useful for walking navigation.
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`Reply at Ex. R (Rosenberg Dep. Tr.) at 25:18-25 (objection omitted). Apple is wrong to jump
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`from statements about individual components to stating that “[t]he Navigation Patents therefore
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`disclose no technological improvements.” Reply at 4. This is simply incorrect.
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`I.
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`APPLE DOES NOT JUSTIFY ITS USE OF A REPRESENTATIVE CLAIM
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`Apple has failed to show that Claim 1 of the ’317 Patent is representative for two reasons:
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`it never carried its burden to make a prima facie case demonstrating inventiveness and it did not
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`address the substantial and legally relevant claim language-based distinctions shown in Maxell’s
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`Opposition. Apple entirely ignores this Court’s repeated guidance that “the representativeness
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`inquiry must be ‘directly tethered to the claim language.’” See, e.g., PPS Data, 404 F. Supp. 3d.
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`at 1031. Instead, Apple merely points to “terminal disclaimer,” a “common specification,” and
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`then makes the conclusory statement that it had “analyzed language from all five asserted
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`claims.” Reply at 5. This is insufficient to carry Apple’s burden. The claims have different
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`recited combinations of hardware and have different user interfaces tied to different
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`functionalities enabled by that hardware, but Apple has not tethered any argument about
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`representativeness to these different claim requirements in the claim language of the Navigation
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`Patents.
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`Accordingly, because Claim 1 of the ’317 Patent has not been shown to be representative,
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`Apple’s arguments regarding the claim limitations of Claim 1 of the ’317 Patent do not apply to
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`any other challenged claim. This means that Apple’s arguments regarding Claim 17 of the ’317
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`Patent, Claim 3 of the ’999 Patent, and Claims 3 and 13 of the ’498 Patent are insufficient to
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`prove invalidity by clear and convincing evidence as a threshold matter. See CXT Sys., 2019 U.S.
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`Dist. LEXIS 51915 at *13-15.
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`II.
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`ALICE STEP-ONE
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`The challenged claims of the Navigation Patents succeed at Alice step-one because they
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`“require a specific, structured graphical user interface paired with a prescribed functionality
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`directly related to the graphical user interface’s structure that is addressed to and resolves a
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`specifically identified problem in the prior state of the art.” Data Engine, 906 F.3d at 1009-10.
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`As detailed in Maxell’s Opposition, the challenged claims are directed to improving the
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`navigation abilities of portable terminals, and do so by pairing new recited structures with new
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`features of the claimed user interfaces. Opposition at 7-12 (detailing the pairing between the user
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`interfaces and the claimed structure). As such, the challenged claims are “directed to a specific
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`asserted improvement to the functionality of the [portable terminal] system itself.” Uniloc USA,
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`957 F.3d at 1309. This is a patent-eligible improvement to existing devices.
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`Apple is incorrect when it tries to distinguish the framework for user interfaces
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`established by the Federal Circuit by merely declaring that the Navigation Patents’ claimed user
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`interfaces are not “specific.” Reply at 2-3. On the contrary, the claim language requires that very
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`specific aspects be included in the recited user interfaces, for example:
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` The “display displays said route and displays a direction of movement by the arrow”
`and “displays said route with a bent line using symbols denoting starting and ending
`points and displays symbols denoting said present place on said route” (’317 at Cl.17);
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` A “full route from said starting point to said destination is shown with a bent line that is
`distinguished between starting and ending points and said present place is shown with a
`symbol on said line to supply said route guidance information as said walking
`navigation information” (’498 Patent at Cl. 10, on which Cl. 13 depends);
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` The “direction from said present place to the location of said another portable terminal
`is displayed with the distance information [and] using the symbols denoting the said
`present location and said location of another portable terminal” (’999 at Cl. 3).
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`The claimed user interfaces are therefore not just any user interface—for example, the claims do
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`not recite that a user interface, any user interface, should be used without specifying novel
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`aspects—but rather have specific display requirements relating to distance, route, and
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`orientation, all of which are paired with the improved functionality of the claimed portable
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`terminals. See Opposition at 7-12; Data Engine, 906 F.3d at 1009-10. Indeed, this is why
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`different hardware combinations are claimed by the challenged claims: different combinations of
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`hardware devices enable different claimed features of the user interfaces. Id.
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`Accordingly, the Navigation Patents are patent eligible at Alice step-one according to the
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`Federal Circuit’s guidance for when user interfaces are directed to particular applications and not
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`abstract concepts. There is no need to proceed to Alice step-two.
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`III.
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`ALICE STEP-TWO
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`But even if the Court finds that the challenged claims of the Navigation Patents are
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`directed to an abstract concept (which they are not), then it is still inappropriate to find that the
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`challenged claims lack an inventive concept, because Apple has failed to prove that the
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`technological environments which the claims recite were merely well-understood, routine, and
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`conventional. Apple ignores that “an inventive concept can be found in the non-conventional and
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`non-generic arrangement of known, conventional pieces.” BASCOM Global Internet Servs. v.
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`Case 5:19-cv-00036-RWS Document 486 Filed 08/05/20 Page 6 of 9 PageID #: 26778
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`AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
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`For example, Apple is entirely silent on the very telling evidence that the Garmin
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`NavTalk, which stated that it went “beyond conventional equipment,” did not include a compass
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`or gyroscope as recited by the challenged claims. See Opposition at 13. Indeed, Apple’s own
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`expert stated that “no other products combining cellular communication capabilities with
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`advanced GPS/navigation capabilities in a single portable, consumer device existed at that time.”
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`Id. This makes the claimed devices, which offer technological capabilities beyond the Garmin
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`NavTalk, new and unconventional based on the evidence about the then-existing technology.
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`Apple has also not addressed, except by deceptively re-ordering language as explained
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`above, why the common specification of the Navigation Patents distinguishes the claimed
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`technical environments from the prior art (as reflected by the claims). See, e.g., id. at 14; ’317
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`Patent at 2:62-3:1. And Apple has not addressed why other companies, such as Microsoft and
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`Nokia, did not conceive of the technical environments claimed by the Navigation Patents. See
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`Opposition at 1, 14. And Apple has not addressed why Apple itself did not include a gyroscope
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`in its devices until 2010 if the technical solutions to existing navigation devices claimed by the
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`Navigation Patents was so conventional. See id. at 14.
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`Apple’s silence is damning, demonstrating a lack of merit in its position and that there
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`exist many active factual disputes relating to the inventive concept. The Navigation Patents
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`present the inventive concept of using a “non-conventional and non-generic arrangement” of
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`components that, paired with the recited user interfaces, bypass existing limitations to GPS and
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`other location-finding components to create a portable terminal that actively assists users with
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`Navigation in ways not previously conceived. Such inventive concepts, as specified in the claim
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`language of the Navigation Patents, also render the challenged claims patent eligible.
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`For the reasons detailed herein, the Court should deny Apple’s Motion (Dkt. 359).
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`Case 5:19-cv-00036-RWS Document 486 Filed 08/05/20 Page 7 of 9 PageID #: 26779
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`Dated: August 5, 2020
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`By:
`
`/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
`Chicago, IL 60606
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`6
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`Case 5:19-cv-00036-RWS Document 486 Filed 08/05/20 Page 8 of 9 PageID #: 26780
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`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`
`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 486 Filed 08/05/20 Page 9 of 9 PageID #: 26781
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 5th day of August, 2020, with a copy of this document
`via electronic mail pursuant to Local Rule CV-5(d).
`
`/s/ Jamie B. Beaber
`Jamie B. Beaber
`
`
`
`