Case 5:19-cv-00036-RWS Document 488 Filed 08/06/20 Page 1 of 8 PageID #: 26790
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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 NAVTALK
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`Case 5:19-cv-00036-RWS Document 488 Filed 08/06/20 Page 2 of 8 PageID #: 26791
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`Apple’s opposition presented substantial evidence demonstrating that NavTalk was sold
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`before the July 12, 1999 critical date and that the example unit of NavTalk that Apple produced as
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`APL-MAXELL_P01 is a representative specimen of units sold before that date. Maxell’s reply
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`arguments about the sale date of just APL-MAXELL_P01 itself are irrelevant because the asserted
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`prior art reference is NavTalk, not APL-MAXELL_P01 alone. And Maxell’s doubts about APL-
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`MAXELL_P01’s features versus those of other NavTalk units ignore the testimony of former
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`Garmin engineer Mr. Kent Broddle and tests performed by both parties’ experts. Even if credited,
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`Maxell’s doubts present fact disputes precluding, not supporting, summary judgment. Maxell’s
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`remaining arguments―that Apple’s evidence is “unreliable” or “inconclusive”―similarly evince
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`fact disputes that preclude summary judgment. Further, Maxell’s arguments hinge on its continued
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`disregard for much of the record, including contemporaneous news articles from January to March
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`1999 describing ongoing sales of NavTalk. Maxell’s motion should be denied.
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`I.
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`Apple’s Sample NavTalk Unit Is Representative Of Units Sold Before July 12, 1999
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`In its opposition, Apple explained that the asserted prior art reference is the NavTalk
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`product, many hundreds of which were sold before the July 12, 1999 critical date, thereby
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`qualifying NavTalk as prior art under § 102(a). Opp. at 9-12. The example unit produced as APL-
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`MAXELL_P01 is not itself the asserted prior art reference—rather, it is one piece of evidence that
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`demonstrates the features of NavTalk. Avoiding the merits of this evidence, Maxell’s reply
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`doubles down on its motion’s approach of arguing against APL-MAXELL_P01. But even
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`crediting Maxell’s arguments, they amount to nothing more than putative fact disputes about
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`whether APL-MAXELL_P01 is representative of NavTalk units sold before the critical date. Id.
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`Maxell’s arguments fail in any event because the record shows that APL-MAXELL_P01
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`is representative in all material respects of NavTalk units sold before July 1999. For example,
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`Maxell argues that APL-MAXELL_P01 has a “1999-2000” copyright date for its software,
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`Case 5:19-cv-00036-RWS Document 488 Filed 08/06/20 Page 3 of 8 PageID #: 26792
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`implying that the software changed after 1999. Reply at 2. But Mr. Broddle explained that any
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`software updates for NavTalk were to “fix bugs” or “errors” and “the functionality did not change
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`at all.” Dkt. 428-4 at 274:19-276:11. Thus, the “initial software release” in “early 1999” reflected
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`the features of later NavTalk units and the features described in the NavTalk User Manual. Id.
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`Notwithstanding the undisputed fact that Mr. Broddle wrote software for NavTalk, id. at
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`18:21-22:2, 24:4-13, Maxell argues his testimony that NavTalk’s software changes were not
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`“substantial” is vague and “not corroborated” by other evidence. Reply at 1-2. To the contrary,
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`Mr. Broddle’s testimony regarding software updates was clear on its face—“There’s no
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`substantive functionality change. It would be to correct minor errors and minor features.” Dkt.
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`428-4 at 275:11-23. And the record is replete with corroborating evidence, including from
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`Maxell’s own expert Dr. Rosenberg. Dr. Rosenberg tested the copy produced as APL-
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`MAXELL_P01 and described those tests as “confirm[ing]” the features of NavTalk as described
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`in the NavTalk User Manual and Mr. Broddle’s testimony. Dkt. 428-12 at ¶¶221-222, 268, 367,
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`386. Dr. Rosenberg identified no inconsistencies between APL-MAXELL_P01’s features in his
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`tests versus the features described in other evidence. In addition, a copy of the NavTalk User
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`Manual that came with APL-MAXELL_P01 has the same part number (“190-00147-00 Rev. A”)
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`and “January 1999” copyright date as the manual that Garmin approved for public release in
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`February 1999, according to Garmin’s records and Mr. Broddle’s testimony. Dkt. 428-7; Dkt.
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`428-2 at GARMIN_000001 (¶5), GARMIN_000006; Dkt. 428-4 at 128:10-129:11, 132:2-7. In
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`view of the substantial evidence that APL-MAXELL_P01 is representative of NavTalk units sold
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`before July 1999 and that qualify as prior art under § 102(a), Maxell’s reply—at best—does no
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`more than raises fact disputes that preclude summary judgment.
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`Case 5:19-cv-00036-RWS Document 488 Filed 08/06/20 Page 4 of 8 PageID #: 26793
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`Finally, there is no relevance to Maxell’s new argument that 35 U.S.C. § 102(b) requires
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`sales “more than one year” before the priority date, which would be July 12, 1998. Reply at 1 n.1.
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`Apple is asserting NavTalk as prior art under § 102(a)―which has no one-year bar―because
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`NavTalk was sold in the U.S. before July 12, 1999, meaning that it was “known or used by others”
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`in the U.S. before that date. Maxell’s attempt to shift the critical date one year earlier implicitly
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`concedes that NavTalk predates July 12, 1999, and therefore qualifies as prior art under § 102(a).
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`II. Maxell’s Attacks On Mr. Ayres’s Credibility Cannot Support Summary Judgment
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`As detailed in Apple’s opposition, Garmin in-house attorney, Mr. David Ayres, provided
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`sworn testimony regarding NavTalk’s public availability by March 1999 and supported his
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`statements with six exhibits, including specification control drawings, a sales record, and a press
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`release. Dkt. 428-2 and 428-3; GARMIN_000001-148 (Exhibits 1 to 6). Maxell’s reply tries to
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`recast its motion’s criticisms of Mr. Ayres, but its criticisms boil down to just attacking his
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`credibility, while identifying nothing actually wrong with Mr. Ayres’s statements.
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`Although Maxell does not dispute that at summary judgment, “a court must . . . avoid
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`credibility determinations and weighing of the evidence,” Maxell asserts that it is not making “a
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`general attack on [the] credibility’ of Mr. Ayres.” Reply at 3; Domain Prot., LLC v. Sea Wasp,
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`LLC, 426 F. Supp. 3d 355, 370 (E.D. Tex. 2019). But Maxell’s actual arguments belie its assertion.
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`Maxell argues that Mr. Ayres’s declaration is “unreliable” because it appears copied from a prior
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`declaration and is not based on his “personal knowledge,” and that Mr. Ayres’s sworn statement
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`that his declaration is “based on his review of Garmin’s company records” cannot be trusted.
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`Reply at 3-4. In effect, Maxell is asking the Court to find that Mr. Ayres is either not sufficiently
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`knowledgeable to make the statements in his declaration, or, worse, lying about his review of
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`Garmin records. Dkt. 428-2 at GARMIN_000001 (¶2). In either case, Maxell is asking the Court
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`to make a credibility determination, which is not permitted at summary judgment.
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`Case 5:19-cv-00036-RWS Document 488 Filed 08/06/20 Page 5 of 8 PageID #: 26794
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`Moreover, while disparaging Mr. Ayres, Maxell does not actually contest the truth of any
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`statement in his declaration concerning NavTalk. Nor could it, as every statement in the
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`declaration is based on an attached exhibit from Garmin’s company records (as Mr. Ayres states
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`in his declaration) and was also independently verified by Mr. Broddle in his deposition. Dkt.
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`428-2 and 428-3 at GARMIN_000001-5 (¶¶5-10); GARMIN_000005-148 (Exhibits 1 to 6); Dkt.
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`428-4 at 128:10-129:11, 132:2-7, 146:10-148:25. Indeed, Maxell’s lone attack against the
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`substance of the declaration is not against any statement by Mr. Ayres; instead, Maxell merely
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`notes as curious the “10/09/13” date that appears on the cover of the Exhibit 5 sales record for
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`NavTalk shipments in March 1999. Reply at 3; Dkt. 428-3 at GARMIN_0000146. But Maxell
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`does not articulate any reason for why the “10/09/13” date makes the sales record unreliable. And
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`both Mr. Ayres and Mr. Broddle confirmed that Exhibit 5 is a true and correct copy of a Garmin
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`sales record for NavTalk in March 1999. Dkt. 428-2 at GARMIN_0000003 (¶9); Dkt. 428-4 at
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`145:17-148:25. Any lingering questions Maxell has about that date only raise fact disputes that
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`should be decided at trial, not at summary judgment.
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`III. Maxell’s Assertion Of “Inconclusive” Evidence Warrants Denying Summary
`Judgment And Ignores Large Parts Of the Record
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`Apple’s opposition presents several pieces of documentary evidence―news articles,
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`copies of
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`the NavTalk User Manual, and
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`the exhibits attached
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`to Mr. Ayres’s
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`declaration―supporting NavTalk’s public availability before July 12, 1999. Opp. at 7-9. In its
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`reply, Maxell characterizes Apple’s documentary evidence as “inconclusive” because it is not
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`“contemporaneous evidence.” Reply at 4-5. Even if Apple’s evidence were “inconclusive,” that
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`would merely confirm the presence of fact disputes making summary judgment inappropriate.
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`At any rate, Maxell’s characterization of Apple’s evidence as not “contemporaneous” is
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`simply false and hinges on Maxell’s continuing refusal to acknowledge substantial parts of the
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`Case 5:19-cv-00036-RWS Document 488 Filed 08/06/20 Page 6 of 8 PageID #: 26795
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`evidentiary record that Apple has repeatedly highlighted. For example, Maxell asserts that Apple
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`is relying on “press releases that announce a future release of NavTalk.” Reply at 4-5. But Apple’s
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`opposition quoted several news articles from January to March 1999 describing public sales of
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`NavTalk units as a contemporaneous event, including a January 4, 1999 article in Wireless Week
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`magazine, stating that “this week,” Garmin “commercially launched” NavTalk for a price of $625
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`per unit. Mot. at 6, 8-9; Dkt. 428-8; see also Dkt. 428-9, 428-10. Apple also highlighted other
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`contemporaneous evidence, such as multiple copies of the NavTalk User Manual, with part number
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`(“190-00147-00 Rev. A”) and “January 1999” copyright date, which were approved for public
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`release in February 1999 according to Garmin’s documentation dating from the same time period
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`and Mr. Broddle’s
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`testimony.
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` Dkt. 428-7; Dkt. 428-2 at GARMIN_000001 (¶5),
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`GARMIN_000006; Dkt. 428-4 at 128:10-129:11, 132:2-7.
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`Finally, Apple’s opposition explained that another piece of contemporaneous evidence―a
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`Bill of Materials (BOM) spreadsheet for NavTalk that Garmin produced and attached as Exhibit 6
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`to Mr. Ayres’s declaration―is complete and has no missing rows. Opp. at 14. Maxell’s reply
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`responds to Apple’s explanation not on the merits, but on a procedural ground that it “add[s] facts
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`in response to a motion for summary judgment” after discovery. Reply at 5. Maxell’s procedural
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`objection misstates the record. Garmin produced the full spreadsheet during fact discovery. Dkt.
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`428-2 at GARMIN_0000001 (¶10), Dkt. 428-3 at GARMIN_0000148. And during expert
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`discovery, Apple demonstrated to Maxell and its expert Mr. Stoll how to view all of the rows and
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`data included in that spreadsheet by turning off a filter. Dkt. 428-5 at 149:5-150:22.
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`Accordingly, Apple has presented contemporaneous evidence of the type that Maxell
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`contends is needed to show NavTalk was known or used by others before the critical date of July
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`12, 1999, and therefore qualifies as prior art under § 102(a).
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`Case 5:19-cv-00036-RWS Document 488 Filed 08/06/20 Page 7 of 8 PageID #: 26796
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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 488 Filed 08/06/20 Page 8 of 8 PageID #: 26797
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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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