Case 5:19-cv-00036-RWS Document 491 Filed 08/06/20 Page 1 of 8 PageID #: 26827
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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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`Civil Action No. 5:19-cv-00036-RWS
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`v.
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`APPLE INC.,
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`Defendant.
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`JURY TRIAL DEMANDED
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`APPLE INC.’S SUR-REPLY IN SUPPORT OF ITS OPPOSITION TO MAXELL, LTD.’S
`MOTION FOR SUMMARY JUDGMENT OF NO INVALIDITY UNDER
`35 U.S.C. §§ 102 AND 103 OF CLAIMS 7, 16, AND 17 OF U.S. PATENT NO. 10,212,586
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`Case 5:19-cv-00036-RWS Document 491 Filed 08/06/20 Page 2 of 8 PageID #: 26828
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`Apple’s Opposition showed that Maxell’s summary judgment motion should be denied
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`because it asks the Court to resolve a battle of the experts predicated on factual disputes about
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`the prior art. See Opp. at 3-7. Apple pointed to Dr. Menascé’s opinions and the teachings of
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`Schiffer and Kirkup—ample evidence allowing a jury to conclude that the asserted claims are
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`invalid. See, e.g. id. Maxell’s reply ignores the evidence and reverts to mischaracterizing Dr.
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`Menascé’s opinions and the prior art. For anticipation, Maxell ignores that Schiffer’s access
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`code discloses information “about” a second device based on the claims and specification (see
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`Opp. at 5, 8-9; Reply at 1-2) and imagines a discrepancy in how Dr. Menascé reads asserted
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`claims for invalidity versus non-infringement (see Reply at 2-3). For obviousness, Maxell again
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`disregards distinctions between anticipation and obviousness, and suggests that if Schiffer does
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`not teach the disputed “memory” limitation, it cannot render the claims obvious alone or in
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`combination with Kirkup. See id at 3-4. Maxell also wrongly contends that Dr. Menascé’s
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`opinions about the state of the art and knowledge of a POSITA are “irrelevant” to obviousness
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`and dismisses Kirkup’s teachings. Id. at 4. Finally, after Apple showed that none of the cases
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`Maxell cited supported summary judgment in Maxell’s favor, Maxell now abandons those cases
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`and cites eight new ones. None of them support summary judgment of no invalidity here.
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`Maxell’s motion should be denied.
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`I.
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`Argument
`A. Maxell’s Reply Ignores the Anticipation Evidence, Attempting to Overcome
`a Factual Dispute with Attorney Argument.
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`Apple’s Opposition explained Dr. Menascé’s opinion that the access code stored on the
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`first mobile terminal (the mobile phone) in Schiffer is information “about” the second mobile
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`terminal (the computer system) because it is both used to unlock the second mobile terminal (the
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`computer system) and is stored on the second mobile terminal (the computer system) in addition
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`Case 5:19-cv-00036-RWS Document 491 Filed 08/06/20 Page 3 of 8 PageID #: 26829
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`to being stored on the first mobile terminal (the mobile phone). See Opp. at 3-5, 8-9. That
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`opinion is plainly on target with what it means for information stored on one device to be
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`“about” a second device in the context of the ’586 patent, which likewise treats information as
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`being “about” a second device where it is used to unlock that device. See id. at 3-4, 9. Maxell’s
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`Reply (like its Motion) acknowledges that Dr. Menascé opines the access code stored on
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`Schiffer’s mobile phone “is information ‘about’ the computer system because it is a code that
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`unlocks the computer system, and because it is stored not only on the mobile phone, but also on
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`the computer system itself.” Reply at 1 (citing Opp. at 9) (emphasis added). Maxell does not
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`explain how this fails to meet the “about” limitation based on the ordinary meaning of “about” in
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`light of the ’586 patent’s claims and specification—indeed, beyond acknowledging Apple’s
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`position, Maxell does not explain how Schiffer’s access code being used to unlock the computer
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`system is distinct from what is described in the specification. Maxell instead relies on only
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`attorney argument that because the access code in Schiffer is “about” the first mobile terminal
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`(the mobile phone), it cannot also be “about” the second mobile terminal (the computer system),
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`id. at 1-2, and insists that Dr. Menascé’s contrary opinion is somehow a “belated claim
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`construction argument.” Id. at 3 n.3. Not so—Dr. Menascé is simply applying the plain and
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`ordinary meaning of “about” in a manner consistent with the ’586 patent. Indeed, it is Maxell
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`who is attempting to restrict the meaning of “information about” to a narrower scope than its
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`plain and ordinary meaning by arguing that it must be a unique identifier for the second device.
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`See Opp. at 9.
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`To distract from Dr. Menascé’s well-supported expert opinion that Schiffer anticipates
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`the claims, Maxell now contends that Dr. Menascé applied a different claim scope for invalidity
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`and non-infringement. Reply at 2-3. Maxell’s argument fails for three reasons. First, the claim
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`Case 5:19-cv-00036-RWS Document 491 Filed 08/06/20 Page 4 of 8 PageID #: 26830
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`scope applied by Dr. Menascé is identical. For invalidity, Dr. Menascé opines that information
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`stored on Schiffer’s mobile phone (the unlocking device) is “about” the computer system (the
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`device that is unlocked). See Opp. at 5. He applies this same meaning for non-infringement.
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`See Reply Ex. 5 at ¶ 303 (“Maxell must show that the memory of the iPhone (which it identifies
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`as the unlocking device) must previously store information about the Apple Watch (which it
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`identifies as the device that is unlocked remotely).”). Second, for non-infringement, the parties’
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`dispute is not about whether information stored on the iPhone is “about” the Apple Watch.
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`Rather the dispute is about whether such information is previously stored at the time of
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`infringement (e.g., when Apple makes or sells the Accused Products). See Reply Ex. 5, ¶¶ 303-
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`306. Third, Maxell’s Reply ignores that obviousness is different from literal infringement: a
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`claim may be obvious in view of the prior art even if portions of a limitation are not explicitly
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`disclosed, but literal infringement requires Maxell to show that accused products practice the
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`claims as written.
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`Maxell does not discuss—much less distinguish—the in-district cases Apple cited
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`establishing that conflicting evidence regarding prior art disclosures, including dueling expert
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`opinions, precludes summary judgment of no invalidity. See, e.g., Opp. at 8, 10, 14 (citing EVM
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`Sys., Cioffi, & Saint Lawrence Commc’ns.). Maxell argues that Schiffer’s disclosure cannot
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`reasonably be interpreted to invalidate the claims. See Reply at 2 n.2. (attempting to distinguish
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`Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205 (Fed. Cir. 2003)). That
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`is incorrect, as explained above and in Apple’s Opposition. The primary case Maxell relies on is
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`distinguishable. In Cheese Sys. v. Tetra Pak Cheese & Powder Sys. (Reply at 3, 5), a key
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`limitation was entirely missing from the prior art and the accused infringer did not “address this
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`glaring shortcoming in its anticipation argument. 725 F.3d 1341, 1344-45, 1351 (Fed. Cir. 2013).
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`Case 5:19-cv-00036-RWS Document 491 Filed 08/06/20 Page 5 of 8 PageID #: 26831
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`There is no such “glaring shortcoming” in Schiffer, and Dr. Menascé has provided reasons a jury
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`could find that Schiffer is discloses the asserted claims.
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`B. Maxell’s Ignores Differences Between Obviousness and Anticipation
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`Maxell argues that Schiffer does not render the limitation obvious essentially for the
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`same reasons as it does not anticipate (Reply at 3-5) ignoring genuine factual disputes regarding
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`whether the claims as a whole (including the memory limitation) would have been obvious to a
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`POSITA based on the evidence cited in Apple’s Opposition. For example, Apple pointed to
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`disclosures from Schiffer (see Opp. at 1, 3-6, 8-9, 11-13), disclosures from Kirkup, (id. at 1, 3, 6,
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`11-12), the understanding of a person of skill in the art (id. at 4-6, 8-9, 11-14), motivations to
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`combine the references (id. at 6, 12), the scope and content of the prior art (id. at 4-6, 11-12),
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`level of skill in the art and state of the art (id. at 6, 12), alleged differences between the prior art
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`and the ’586 patent (id. at 4-6, 13), and secondary considerations (id. at 13-14)—almost all
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`evidence used only to support obviousness, not anticipation. Maxell sweeps such evidence aside,
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`arguing that the POSITA’s knowledge and Dr. Menascé’s opinions on these topics is
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`“irrelevant.” Reply at 4.
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`Maxell’s other arguments also do not support granting its motion. For example, Maxell
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`simply dismisses Kirkup, calling it “redundant” to Schiffer. Reply at 1, 4. But Maxell’s attorney
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`argument on Kirkup’s similarities to Schiffer at best provides reasons to combine them; it does
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`not show that a jury cannot find that the claims are obvious.1
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`Maxell abandons the cases cited in its Motion, citing new cases on Reply that likewise
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`fail to support summary judgment here. In Cheese Sys. (Reply at 3, 5), for example, an expert’s
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`1 Also, to the extent Schiffer is similar to Kirkup, that supports Apple’s position that Schiffer
`discloses the claimed limitation. The PTAB recently instituted an IPR finding that Apple
`demonstrated that Kirkup teaches the memory limitation. Declaration of Melody Drummond
`Hansen in Support of Apple’s Sur-Reply, Ex. 7 (’586 IPR Institution Decision) at 36-38, 53-55.
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`Case 5:19-cv-00036-RWS Document 491 Filed 08/06/20 Page 6 of 8 PageID #: 26832
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`“initial report . . . contained a single paragraph addressing invalidity.” 725 F.3d at 1354. Here,
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`Dr. Menascé’s opinions are extensive. See Opp. Exs. 4 (Menascé Invalidity Report) & 5
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`(Menascé Appx. D). In Shire LLC v. Amneal Pharmaceuticals, LLC (Reply at 5 n.6),
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`obviousness required overcoming an “added burden” because the primary reference was “listed
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`on the face of the patents-in-suit,” and the record showed “no reason or motivation why one of
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`skill in the art would combine” the references. 802 F.3d 1301, 1307-09 (Fed. Cir. 2015). Here,
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`neither Schiffer nor Kirkup was considered during prosecution, and Maxell concedes that it is
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`not arguing that Dr. Menascé’s combination of the two references is “per se inappropriate.”
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`Reply at 4. Unigene Labs., Inc. v. Apotex, Inc. (Reply at 5 n.6) involved a highly fact-specific
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`analysis where the Federal Circuit affirmed that using citric acid at a particular concentration was
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`not obvious because citric acid played only a “vague role” in even the closest prior art, and the
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`prior art “teaches away” from using citric acid. 655 F.3d 1352, 1362-64 (Fed. Cir. 2011). Here,
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`the prior art is highly analogous and does not teach away from the disputed limitation. Finally,
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`in Canon Inc. v. Color Imaging, Inc. (Reply at 5 n. 6) the disputed references were “clearly non-
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`analogous art.” 2015 U.S. Dist. LEXIS 179445 at *100-102. Not so here—like the ’586 Patent,
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`both Schiffer and Kirkup are directed to using one device to wirelessly unlock another device
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`and Maxell has not argued otherwise.
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`II.
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`Conclusion
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`Maxell’s motion should be denied.
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`Case 5:19-cv-00036-RWS Document 491 Filed 08/06/20 Page 7 of 8 PageID #: 26833
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`August 6, 2020
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`/s/ Luann L. Simmons
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`Luann L. Simmons (Pro Hac Vice)
`lsimmons@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 491 Filed 08/06/20 Page 8 of 8 PageID #: 26834
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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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