Case 5:19-cv-00036-RWS Document 492 Filed 08/07/20 Page 1 of 8 PageID #: 26845
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`Plaintiff,
`
`Case No. 5:19-cv-00036-RWS
`
`JURY TRIAL DEMANDED
`
`
`
`
`MAXELL, LTD.,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`
`
`MAXELL, LTD.’S SURREPLY TO DEFENDANT’S MOTION FOR PARTIAL
`SUMMARY JUDGMENT OF SUBJECT MATTER INELIGIBILITY UNDER 35 U.S.C. §
`101 FOR U.S. PATENT NOS. 6,928,306 AND 6,329,794
`
`
`
`
`
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 492 Filed 08/07/20 Page 2 of 8 PageID #: 26846
`
`
`Apple’s approach to patent eligibility is a formula for invalidating any patent—that which
`
`the Supreme Court warned against. First, identify an abstract concept that is in the same
`
`technology area as the claimed inventions such as “combining two sound sources.” Next, dismiss
`
`all context from the claims as mere conventional “general-purpose computer equipment” or
`
`“generic devices” while ignoring unconventional claim elements. And lastly, convert factual
`
`issues into legal ones by, for example, defining the claimed inventions by the prior art—failing
`
`to even address the non-conventionality arguments that allowed the claims to issue in the first
`
`place.
`
`Rather than abstracting the claims beyond recognition and dismissing every limitation as
`
`merely conventional (an issue for § 103 not § 101), the law requires evaluating the ordered
`
`combination of elements, as a whole, to determine whether it implicates “the concern that drives”
`
`the abstract idea exception—i.e. undue pre-emption. Alice Corp. Pty. V. CLS Bank Int’l, 134 S.
`
`Ct. 2347, 2354, 189 L.Ed. 2d 296 (2014). “[B]ecause essentially every routinely patent-eligible
`
`claim” involves an abstract idea, the question is whether the patent claims the abstract idea itself
`
`or only a patentable application of that idea. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
`
`1335 (Fed. Cir. 2016).
`
`At bottom, Apple’s Reply (Dkt. 464) (“Reply”) does not address the language of the
`
`individual claims of the ’306 and ’794 Patents, fails to address the distinctions made by Maxell
`
`regarding Apple’s alleged analogous precedent, and simply glosses over the evidence showing
`
`that the claims recite novel and inventive concepts in an unconventional manner. Accordingly,
`
`Apple’s Motion should be denied.
`
`I.
`
`The claims of the ’306 Patent satisfy both steps of the eligibility inquiry.
`
`Apple argues that the’306 Patent’s claims are directed to the abstract idea of “combining
`
`sounds from two or more sources.” Reply at 1. While the technology area may be characterized
`1
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 492 Filed 08/07/20 Page 3 of 8 PageID #: 26847
`
`
`that way at a stratospheric level, the patent claims are clearly not directed to that over-
`
`generalized idea. At most, they recite an application of that idea to a concrete, technical solution
`
`for mobile phones.
`
`The claims do not preempt every way of combining two sound sources. First, they are
`
`directed specifically to the problem of indiscriminate and disruptive notifications of an incoming
`
`call on a mobile device. Second, they choose specific sounds sources and sound generation
`
`protocol unique to digital audio production (as Apple recognizes: “e.g., FM, PCM, and MIDI”,
`
`Reply at 2) for generating unique ringing sounds on a mobile device. E.g., ’306 Patent at 434-
`
`5:18. Third, they recite a specific way of generating a ringing sound in a mobile device, based on
`
`when the signal comes in, to account for limited memory availability. Id. at 6:11-15. Fourth, the
`
`specification describes concrete examples (on a physical, not abstract, mobile phone)
`
`demonstrating how those ringing sounds are generated on a mobile device (e.g., using FM, PCM,
`
`and MIDI sound sources (’306 Patent at 4:34-6:34, Figs. 1, 16, 17A-C)) and how they are used to
`
`combine the two sources of sound data (e.g., mixing the sounds to producing a ringing melody
`
`and announcement of the caller’s name, id. at 8:48-9:58). In short, the ’306 patent does not
`
`“monopolize every potential solution to the problem” of combining sounds from two or more
`
`sources. See DDR Holdings, 773 F.3d at 1259. Nor do the claims patent the “result” of
`
`combining sounds rather than a specific way of doing so. The claims recite a way to generate a
`
`notification on a mobile device when a call is received using multiple sound sources or sound
`
`generation protocol. The claims are clearly directed to “the means or method of producing a
`
`certain result” rather than to “the result or effect produced.” See McRO, Inc. v. Bandai Namco
`
`Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016); see also Affinity Labs of Texas, LLC v.
`
`
`
`2
`
`

`

`Case 5:19-cv-00036-RWS Document 492 Filed 08/07/20 Page 4 of 8 PageID #: 26848
`
`
`DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (striking claims “untethered to any
`
`specific or concrete way of implementing”).
`
`For the foregoing reasons, claims 12 and 15 of the ’306 Patent are not directed to an
`
`abstract idea. Instead, they are directed to a specific solution to a technical problem, which raises
`
`no concerns of undue preemption or of patenting ends rather than means. The eligibility analysis
`
`ends there, and Apple’s refusal to even address the technological improves noted in Maxell’s
`
`opposition and in the specification (Reply at 2) underscore this point.
`
`The claims are also patent eligible, however, because they recite an inventive concept.
`
`Apple’s approach to step 2 of the inquiry is circular—strip the claim of all verbiage and context,
`
`characterize them generally as the abstract idea Apple erroneously contends the claims are
`
`“directed to,” and conclude that the claims recite nothing more than conventional components to
`
`accomplished the idea. See Reply at 3. Needless to say, that approach is insufficient. Even where
`
`“the limitations of the claims, taken individually, recite generic computer, network, and Internet
`
`components, none of which is inventive by itself,” “an inventive concept can be found in the
`
`nonconventional and non-generic arrangement of known, conventional pieces.” Bascom Global
`
`Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). Here,
`
`contrary to Apple’s fiction that “Maxell advances nothing more than unsupported attorney
`
`arguments” (Reply at 2), expert testimony establishes that the recited combination of elements
`
`was “non-conventional and non-generic” at the time of patenting. See Maxell’s Opp. at 9-11
`
`(citing Dr. Maher’s Expert Report throughout). Ultimately, the ordered combination of elements
`
`are directed to specific improvements to existing technology, just like the inventive claims in
`
`Bascom. Further, the claims recite an inventive concept under the “technological arts test”
`
`applied in DDR because they affect an improvement in the operation of handsets by changing the
`
`
`
`3
`
`

`

`Case 5:19-cv-00036-RWS Document 492 Filed 08/07/20 Page 5 of 8 PageID #: 26849
`
`
`way those handsets typically work. DDR. 773 F.3d at 1257-58. The ’306 Patent’s claims thus
`
`recite an inventive concept.
`
`II.
`
`The claims of the ’794 Patent satisfy both steps of the eligibility inquiry.
`
`Apple’s eligibility analysis for the ’794 Patent follows the same broken formula. Apple
`
`maintains that the claims are directed to “using generic, functional devices to automate what was
`
`previously performed by a human.” Reply at 4. Once again, Apple has failed to establish how a
`
`human could “send a power consumption reduction instruction” to a function device. This is
`
`different from manually forgoing use of a particular function and/or turning off a device—
`
`concepts which extend well beyond the scope of the claims. Regardless, claims 1 and 14 do not
`
`preempt the oversimplified characterization that Apple urges.
`
`As an initial matter, the claims do not preempt every way of stopping lower priority
`
`function devices based on battery capacity. Instead, they provide a specific implementation of a
`
`solution that addresses the technical problem of powering down a device in a controlled manner,
`
`by incorporating a “capacity detector” in the “power supply circuitry” and sending “power
`
`consumption reduction instruction[s]” to lower priority components in accordance with specific
`
`instructions or metrics. See e.g., ’794 Patent at 1:55-62, claim 1 and 14. Accordingly, the claims
`
`do not simply recite the idea of stopping lower priority devices based on battery capacity.
`
`Instead, they recite using specific metrics by way of a capacity detector and a series of power
`
`reduction instructions to improve the functionality of a device itself.
`
`Nor are the claims merely directed to the “result” of selectively stopping lower priority
`
`devices. Instead, the claims recite a way of prioritizing functions within a device by assigning
`
`priority values, detecting battery capacity, and using these metrics to reduce power consumption
`
`by issuing instructions to those components. ’794 Patent at Claims 1, 14. This inventive concept
`
`is rooted within the power supply circuitry and the “non-conventional and non-generic
`4
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 492 Filed 08/07/20 Page 6 of 8 PageID #: 26850
`
`
`arrangement of components.” Opp. at 13-15. Apple’s Reply dismisses Dr. Brogioli’s testimony
`
`as conclusory, but this analysis is rooted in the claim language, which Apple ignores. Apple has
`
`not established that the ordered combination was known or non-conventional. To the contrary,
`
`the ordered combination satisfies DDR’s technological arts test because it changes the way
`
`information processing devices work to conserve power for high priority functions within the
`
`device. DDR Holdings, 773 F.3d at 1257-58. Accordingly, claims 1 and 14 of the ’794 Patent are
`
`also directed to an inventive concept.
`
`III. CONCLUSION
`
`For the above reasons, the Court should deny Apple’s Motion (Dkt. 360).
`
`Dated: August 7, 2020
`
`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
`
`
`
`5
`
`

`

`Case 5:19-cv-00036-RWS Document 492 Filed 08/07/20 Page 7 of 8 PageID #: 26851
`
`
`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
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`
`Counsel for Plaintiff Maxell, Ltd.
`
`
`
`6
`
`

`

`Case 5:19-cv-00036-RWS Document 492 Filed 08/07/20 Page 8 of 8 PageID #: 26852
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 7th day of August, 2020, with a copy of this document
`via the Court’s CM/ECF system.
`
`
`
`
`/s/ Jamie B. Beaber
`Jamie B. Beaber
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`