Case 5:19-cv-00036-RWS Document 487 Filed 08/06/20 Page 1 of 8 PageID #: 26782
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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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`Plaintiff,
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`vs.
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`APPLE INC.,
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`Defendant.
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`Civil Action No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`APPLE INC.’S SUR-REPLY IN OPPOSITION TO MAXELL, LTD.’S MOTION FOR
`PARTIAL SUMMARY JUDGMENT OF NO INVALIDITY OF U.S. PATENT NOS.
`6,748,317, 6,580,999, AND 6,430,498 IN VIEW OF ABOWD AND CYBERGUIDE
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`Case 5:19-cv-00036-RWS Document 487 Filed 08/06/20 Page 2 of 8 PageID #: 26783
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`Apple’s opposition presents substantial evidence to support the public availability of the
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`Abowd article and related Cyberguide system before the July 12, 1999 critical date. For Abowd,
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`Apple cites library “MARC” records and supporting testimony from Apple’s librarian expert Mr.
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`Jacob Munford, to show that Abowd was publicly available at the University of Pittsburgh library
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`by October 1997. Opp. at 3-5, 7-8. For Cyberguide, as described in the related Abowd article,
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`prototypes practicing the asserted patents’ claimed features were presented at open houses at
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`Georgia Tech in 1996. Id. at 5, 11-12. In its reply, Maxell confirms that its motion rests merely
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`on “doubts about Apple’s evidence.” Reply at 1. But Maxell’s “doubts” do not support summary
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`judgment; rather, they only confirm the presence of fact disputes that preclude it.
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`Indeed, in challenging the public availability of Abowd, Maxell relies on unsupported and
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`false speculation that a library holding with a “Do Not Circulate” label is secret, and that
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`accessibility by hundreds of thousands of individuals affiliated with the University of Pittsburgh
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`is insufficient to show public availability. But as public webpages cited in Apple’s opposition
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`explain, “Do Not Circulate” merely denotes a library holding that cannot be used outside the
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`library, and accessibility by at least anyone affiliated with the University of Pittsburgh is sufficient
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`for public availability. Maxell’s objection to the webpages as not produced earlier in discovery is
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`unavailing. Courts permit non-moving parties to cite webpages to respond to arguments raised by
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`a moving party’s summary judgment motion.
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`Third, for the Cyberguide system, Maxell’s contention that prototypes are not prior art
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`because they were not “fully developed” before the critical date and later improved misapprehends
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`the legal requirements for public use. And Maxell’s complaints that there are insufficient “details”
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`about each prototype’s technical features and the extent of their public use merely present fact
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`disputes. For these reasons, the Court should deny Maxell’s motion.
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`Case 5:19-cv-00036-RWS Document 487 Filed 08/06/20 Page 3 of 8 PageID #: 26784
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`I.
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`Abowd’s Public Availability Is Supported By Expert Opinion And Library Records
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`As Apple’s librarian expert Mr. Munford explained, the best indicator of when a library
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`holding first becomes publicly available is the date in its “MARC” record. Opp. at 8. For the
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`Wireless Networks journal in which Abowd was published, the University of Pittsburgh library’s
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`MARC record shows the library began cataloguing issues of the journal on April 3, 1995. From
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`then on, the library would have received each issue of Wireless Networks as of the date of its
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`publication, including the October 1997 issue in which Abowd was included. Id.
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`Maxell’s reply mischaracterizes Apple’s statements about the MARC record as “attorney
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`argument.” Reply at 2-3. In truth, Apple’s statements follow directly from the opinions of Mr.
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`Munford which is competent evidence, sufficient to defeat summary judgment. Opp. at 8 (citing
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`Munford Report, Dkt. 429-3 at ¶¶10-15); see Metaswitch Networks Ltd. v. Genband US LLC, No.
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`2:14-cv-744-JRG, 2016 WL 943601, at *3 (E.D. Tex. Mar. 17, 2016) (“Summary judgment is
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`rarely appropriate where an expert’s opinion supports the non-movant”). Specifically, in his expert
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`report, Mr. Munford explained that for periodicals like Wireless Networks, a date of April 3, 1995
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`in MARC field “008” means that the University of Pittsburgh library would have received all
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`issues of that periodical after that date as they were published. Dkt. 429-3 at ¶13. Mr. Munford
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`confirmed that his understanding of the typical library practice for periodicals applied specifically
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`to the Wireless Networks journal at the University of Pittsburgh library using (1) the library’s
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`holdings information for Wireless Networks, which showed that the library held issues of the
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`journal dated between 1996 to 2003, and (2) the book bindery sticker for the October 1997, Volume
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`3 issue of Wireless Networks, which has a January-March 1998 date range, meaning the library
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`must have held that issue before that date range. Id.
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`Although Maxell and its putative expert Mr. Stoll―who has no background in library
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`practices (see Dkt. 357)―disagree with Mr. Munford’s expert opinions about what the MARC
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`Case 5:19-cv-00036-RWS Document 487 Filed 08/06/20 Page 4 of 8 PageID #: 26785
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`record and book bindery sticker represent (Reply at 3-4), their disagreements constitute fact
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`disputes that make summary judgment inappropriate. See, e.g., Candela Corp. v. Palomar Med.
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`Techs., Inc., No. 9:06-CV-277, 2008 WL 11441909, at *2 (E.D. Tex. Sept. 24, 2008) (“conflicting
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`expert opinions are sufficient to make summary judgment inappropriate.”).
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`II.
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`Apple’s Citation To Webpages To Rebut New Arguments Is Permissible
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`Maxell’s motion injected baseless challenges to Abowd, suggesting that a “Do Not
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`Circulate” label on a copy of Abowd meant it was a non-public library holding and that
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`accessibility by at least anyone affiliated with the University of Pittsburgh is insufficient to show
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`public availability under § 102. Opp. at 9-11. To refute Maxell’s challenges, Apple’s opposition
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`cited public webpages for the basic, non-controversial facts that “Do Not Circulate” denotes a
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`library holding that cannot be used outside of a library, but can still be accessed inside the library,
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`and that the University of Pittsburgh has about 400,000 students, faculty, and alumni. See Dkt.
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`429-5, 429-6, 429-13, 429-14, 429-15. Maxell asks the Court to disregard the webpages as
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`untimely and inadmissible because Apple did not produce them during discovery. Reply at 1-2.
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`Maxell’s request finds no legal basis and its cited cases provide none. Advanceme, Inc. v.
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`Rapidpay is inapposite. There, a court denied a defendant’s motion to supplement the record with
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`documents about a prior art reference just weeks before trial. No. 6:05-CV-424, 2007 U.S. Dist.
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`LEXIS 117675, at *12-13 (E.D. Tex. July 9, 2007). Similarly, in Cummins-Allison Corp. v. Glory
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`Ltd., a court denied a defendant’s attempt to rely on late-produced technical documents about its
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`own accused products to support non-infringement. No. 2:03-CV-358, 2006 U.S. Dist. LEXIS
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`105083, at *5 (E.D. Tex. Jan. 23, 2006). And in Intergraph Corp. v. Intel Corp., a court denied a
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`defendant’s motion to amend its invalidity contentions. No. 2:01-cv-160, 2002 U.S. Dist. LEXIS
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`29660, at *2 (E.D. Tex. June 18, 2002). None of Maxell’s cases even relate to the context of
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`Case 5:19-cv-00036-RWS Document 487 Filed 08/06/20 Page 5 of 8 PageID #: 26786
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`summary judgment and each involved a defendant attempting to supplement the record with late-
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`produced documents to support substantive non-infringement or invalidity defenses.
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`Apple is doing no such thing here. Rather, Apple cited public webpages to rebut new and
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`frivolous arguments that Maxell made in its summary judgment motion regarding “Do Not
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`Circulate” and the University of Pittsburgh. Opp. at 9-11. Courts permit parties opposing
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`summary judgment to cite public webpages and other evidence in responding to arguments injected
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`by the movant’s motion. Mobile Telecommunications Techs., LLC v. United Parcel Serv., Inc.,
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`No. 1:12-cv-03222-AT, 2015 WL 11199065, at *3-4 (N.D. Ga. Mar. 25, 2015) (permitting non-
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`moving party to cite a “website” and other un-produced documents to respond to issues “first put
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`into dispute in [a party’s] MSJ”); Alford v. Access Indus., Inc., No. 1:15-CV-59, 2016 WL
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`3460775, at *8 (E.D. Tex. Feb. 8, 2016). Moreover, Maxell raised these arguments for the first
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`time in its rebuttal expert reports, and did not ask Apple experts about them in deposition before
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`reiterating those arguments in its summary judgment motion. Apple thus had no opportunity or
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`reason to cite the webpages before its opposition brief. And critically, Maxell does not contest the
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`webpages’ authenticity or the veracity of their statements. Reply at 1-2. Thus, the five webpages
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`are admissible evidence that should be considered in support of Apple’s opposition.
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`III. Maxell’s Attacks Against Cyberguide Are Legally And Factually Flawed
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`As discussed in Apple’s opposition, Cyberguide is prior art because functioning prototypes
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`of the system were used by visitors at open houses at Georgia Tech’s GVU center by 1996. Opp.
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`at 11-12. Maxell’s reply fails to show otherwise. It instead simply reiterates the flawed arguments
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`from Maxell’s motion that: (1) Cyberguide prototypes used at the open houses cannot be prior art
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`because they were not “fully developed” before the critical date and Cyberguide was “later-
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`improved”; and (2) there are insufficient “details as to the nature of the public access” at the GVU
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`open houses. Reply at 5. Neither of Maxell’s arguments have merit or support summary judgment.
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`Case 5:19-cv-00036-RWS Document 487 Filed 08/06/20 Page 6 of 8 PageID #: 26787
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`First, the Federal Circuit has held that the mere existence of subsequent prototypes or
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`versions does not mean that an invention was experimental or not ready for patenting. New
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`Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1297 (Fed. Cir. 2002). Maxell’s two
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`cited cases do not hold differently. Juicy Whip, Inc. v. Orange Bang, Inc. is inapplicable: the
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`Federal Circuit found that a prior art system did not practice “at least one limitation of each asserted
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`claim,” and specifically identified the missing limitations. 292 F.3d 728, 737-40 (Fed. Cir. 2002).
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`Clock Spring, L.P. v. Wrapmaster, Inc. affirmed summary judgment of invalidity, and explained
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`that the “experimental use” exception to public use is limited to circumstances where the prior art
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`author conducted testing “for purposes of the filing of a patent application.” 560 F.3d 1317, 1327-
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`29 (Fed. Cir. 2009). Neither case supports disqualifying prior art due to subsequent prototypes or
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`improvements. And here, Maxell does not dispute that the key disclosures of Cyberguide on which
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`Apple’s expert, Dr. Joseph Paradiso, relies for his invalidity opinions were present in the
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`prototypes used by GVU open house visitors before September 23, 1996. Opp. at 6; Dkt. 429-7 at
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`APL-MAXELL_00713088. Any doubts that Maxell has about which specific features were
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`present in each Cyberguide prototype present fact disputes that prevent summary judgment.
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`Second, Maxell’s contention about insufficient “details as to the nature of the public
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`access” at the GVU open houses disregards Abowd’s disclosures. Abowd is very clear that the
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`“monthly open houses” permitted public visitors to use Cyberguide prototypes to explore labs and
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`projects in the GVU Center. Opp. at 14, Dkt. 429-2 at 56, Dkt. 429-7 at APL-
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`MAXELL_00713088. Maxell raises no contrary evidence or specific arguments as to why the
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`open houses would have been secret or otherwise do not constitute public uses under § 102. In
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`any event, Maxell’s vague doubts about the open houses only present additional fact disputes
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`regarding Cyberguide that preclude, rather than support, summary judgment.
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`Case 5:19-cv-00036-RWS Document 487 Filed 08/06/20 Page 7 of 8 PageID #: 26788
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`Dated: August 6, 2020
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`/s/ Luann L. Simmons
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`Luann L. Simmons (Pro Hac Vice)
`lsimmons@omm.com
`Mark Liang (Pro Hac Vice)
`mliang@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center
`28th Floor
`San Francisco, CA 94111
`Telephone: 415-984-8700
`Facsimile: 415-984-8701
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`Xin-Yi Zhou (Pro Hac Vice)
`vzhou@omm.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
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`Marc J. Pensabene (Pro Hac Vice)
`mpensabene@omm.com
`Laura Bayne Gore (Pro Hac Vice)
`lbayne@omm.com
`O’MELVENY & MYERS LLP
`Times Square Tower,
`7 Times Square
`New York, NY 10036
`Telephone: 212-326-2000
`Facsimile: 212-326-2061
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`Melissa R. Smith (TX #24001351)
`melissa@gilliamsmithlaw.com
`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
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`Attorneys for Defendant Apple Inc.
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`Case 5:19-cv-00036-RWS Document 487 Filed 08/06/20 Page 8 of 8 PageID #: 26789
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court’s
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`CM/ECF system per Local Rule CV-5(a)(3) on August 6, 2020.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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