Case 5:19-cv-00036-RWS Document 494 Filed 08/10/20 Page 1 of 8 PageID #: 26866
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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 PARTIAL SUMMARY JUDGMENT OF
`NO INVALIDITY OF U.S. PATENT NO. 8,339,493 IN VIEW OF
`THE SONY MVC-FD83 AND MVC-FD88 CAMERAS
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`Case 5:19-cv-00036-RWS Document 494 Filed 08/10/20 Page 2 of 8 PageID #: 26867
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`Substantial evidence—including sales data, manuals, marketing documents, and
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`advertisements—confirms that the Sony MVC-FD83/88 were known and used in the U.S. before
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`January 2000, the ’493 Patent’s priority date. Maxell cannot identify any evidence to the
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`contrary, much less a lack of a factual dispute as to the evidence that Apple has put forward.
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`Instead, Maxell resorts to speculation, arguing that despite Apple’s evidence it is “equally
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`probable” that the products were not sold in the U.S. before January 2000. D.I. 459 (“Reply”) at
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`1. Maxell’s argument is self-defeating: if there are factual disputes for the jury to resolve, such
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`as whether the Sony products were sold in the U.S. before January 2000, Maxell’s Motion for
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`Partial Summary Judgment (D.I. 370, “Mot.”) of no invalidity based on the Sony MVC-FD83/88
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`products should be denied.
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`Maxell goes on to speculate that there were different “versions” of the products, some of
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`which may have been sold after the ’493 Patent’s priority date and may have differed from
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`products sold before that date. Maxell’s Reply, however, confirms that this argument is also
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`baseless. No record evidence describes or even suggests different product versions with material
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`differences. Accordingly, there are genuine issues of material fact triable to the jury as to
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`whether the Sony MVC-FD83/88 products were known and used before January 2000 and
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`whether they had the relevant features that Apple relies on to invalidate the claims of the ’493
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`Patent. Thus, Apple respectfully requests that Maxell’s Motion be denied.
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`I.
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`The Sony MVC-FD83/88 Were Known And Used In The U.S. Before January 2000
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`Substantial evidence confirms that the Sony MVC-FD83/88 products were known and
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`used in the U.S. before the ’493 Patent’s priority date. See D.I. 425, (“Opp.”) at 1, 8-10. Unable
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`to overcome this evidence, Maxell’s Reply relies instead on manufactured facts and speculation.
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`First, Maxell’s speculation that the sales data produced by Sony could include “Canada
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`and Mexico” or “worldwide sales” (Reply at 1) is unsupported by any evidence. As Apple’s
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`1
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`Case 5:19-cv-00036-RWS Document 494 Filed 08/10/20 Page 3 of 8 PageID #: 26868
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`Opposition showed, the Sony Electronics Inc. sales records showing sales of
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` units of the
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`Sony MVC-FD83/88 were produced in response to a subpoena for U.S. sales data from a U.S.
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`corporation responsible for Sony’s electronics business in the U.S. Opp. at 3-4. No evidence
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`suggests this data includes sales to Mexico, Canada, or any country other than the U.S.
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` Second, by speculating that it is somehow “equally probable” that Sony Electronics
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`Inc.’s sales records reflect foreign sales (Reply at 1), Maxell effectively concedes that summary
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`judgment is not proper. The Court must draw “all reasonable inferences in favor of the non-
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`movant,” here Apple. Billups-Rothenberg, Inc. v. Associated Reg’l and Univ. Pathologists, Inc.,
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`642 F.3d 1031, 1036 (Fed. Cir. 2011). So even if there were two “equally probable” inferences,
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`one of which favors Apple, Maxell’s Motion must be denied.
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`Third, Maxell attacks each piece of evidence in isolation, but ignores that the pieces
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`corroborate each other. For example, Maxell makes up another fact—that the Sony MVC-
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`FD83/88 were “first offered for sale in October/November 1999” (Reply at 2)—to argue that the
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`service manual’s May 1999 date is not probative of when the products were publicly available.
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`But the actual evidence refutes Maxell’s argument. For example, a Circuit City advertisement on
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`June 13, 1999 (Opp., Ex. E)—just weeks after May 1999—corroborates the service manual’s
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`date to show that the products were publicly available before October/November 1999—they
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`were available for sale in mid-1999.
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`Similarly, Maxell argues that the product advertisements—taken in complete isolation—
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`do not contain “sufficient information” to describe all relevant features of the products. Reply at
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`2-3. That is irrelevant. As Maxell admits, the advertisements describe the Sony MVC-FD83/88
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`by their model numbers and certain product features, such as image resolution, digital zoom
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`capability, and drive speed. Id. at 2. These advertisements confirm that the products were
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`2
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`Case 5:19-cv-00036-RWS Document 494 Filed 08/10/20 Page 4 of 8 PageID #: 26869
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`publicly sold before January 2000, and the attributes described in the advertisements—e.g., the
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`model numbers and technical features—link them to Apple’s other evidence, including sales
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`data, product manuals, marketing documents, and physical samples, which do describe all the
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`relevant features of the products. See Opp. at 13-14.
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`The evidence as a whole confirms that the Sony MVC-FD83/88 were known and used in
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`the U.S. before January 2000. Maxell’s Reply confirms that there is at least a triable issue of
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`material fact that precludes summary judgement.
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`II. Maxell Cites No Evidence Showing Different Versions of MVC-FD83/88
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`None of Sony’s sale records, user and service manuals, marketing documents,
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`advertisements, or product labels describe different “versions” of the Sony MVC-FD83/88. See,
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`e.g., Opp., Exs. C-H. It would be unreasonable to infer that Sony sold different versions of these
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`products without ever mentioning them in any of its documents. Yet, that is the inference Maxell
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`asks the Court to draw.
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`In an attempt to avoid evidence predating the ’493 Patent that describes the relevant
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`features of the MVC-FD83/88, Maxell argues that Apple’s prior art is limited to only its three
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`physical samples and excludes any “printed publications” describing the products. Reply at 3-4.
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`This argument is baseless. The Court’s Focusing Order states that “a prior art instrumentality …
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`and associated references that describe that instrumentality shall count as one reference.” D.I. 44
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`at 1 n.1. And Apple’s election of prior art identifies “[p]roducts … in public use or on sale
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`related to the Sony MVCFD83/FD88 digital camera (‘MVCFD83’) as well as documents
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`describing the MVCFD83.” Ex. L at 3. As Apple’s Opposition explains, multiple documents
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`dated before January 2000—including manuals, marketing documents, and advertisements—
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`corroborate and confirm the relevant features of the product samples tested by Apple’s expert.
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`Opp. at 14-15. Maxell cannot unilaterally limit Apple’s evidence to only the product samples.
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`Case 5:19-cv-00036-RWS Document 494 Filed 08/10/20 Page 5 of 8 PageID #: 26870
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`Moreover, that the product samples have “different serial numbers, different production
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`locations, [and] different labeling” (Reply at 3) does not support an inference that different
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`product versions existed. To the contrary, Apple’s Opposition demonstrates that all relevant
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`evidence in the record refutes such an inference by consistently describing the same technical
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`features and functionality for the MVC-FD83/88. Opp. at 11-12.
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`Next, Maxell insists that a typographical error in Sony’s “Digital Image Training Guide”
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`is not an error but proof that different versions of the MVC-FD88 existed. Reply at 3-4. But that
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`document, excerpted on the right, lists
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`the correct “1280 x 960” resolution and
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`then erroneously specifies “1280 x 768”
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`in the same paragraph. Mot., Ex. 11 at
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`SCA0003620. Nothing in this document suggests that two versions of the MVC-FD88 existed.
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`And all other Sony documents, product manuals, advertisements, and product samples confirm
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`that the MVC-FD88’s correct resolution is 1280 x 960. Opp. at 12-13. At best, “there is a
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`material dispute as to the credibility and weight” of this evidence—a single discrepancy in one
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`document cannot serve as the basis for summary judgment. See Crown Packaging Tech., Inc. v.
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`Ball Metal Beverage Container Corp., 635 F.3d 1373, 1384 (Fed. Cir. 2011).
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`Similarly, Maxell argues that because certain advertisements list different resolutions for
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`the MVC-FD83, different versions must exist. Reply at 4. But Apple’s Opposition explains that,
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`unlike the MVC-FD88, the MVC-FD83 allows for image interpolation that increases output
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`resolution to be higher than its image sensor’s native resolution. See Opp. at 6 n.2. Thus, it is
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`not surprising that some documents describe resolutions higher than the MVC-FD83’s non-
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`interpolated, native resolution of 1024 x 768. The ’493 Patent’s asserted claims do not require
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`4
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`Case 5:19-cv-00036-RWS Document 494 Filed 08/10/20 Page 6 of 8 PageID #: 26871
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`image interpolation. See ’493 Patent at Claims 5-6. Accordingly, Apple’s invalidity defense
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`relies only on the native resolution (i.e., 1024 x 768) of the MVC-FD83. See Opp. at 6, Ex. A at
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`70-73. Sony’s manuals consistently describe the same native resolution, and Apple’s expert
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`confirmed this resolution through testing. Id., Ex. A at 73; Ex. C at APL-MAXELL_00716486
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`to -87; Ex. D at APL-MAXELL_01147546. The other resolutions cited in Maxell’s Reply are
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`irrelevant to this case and do not suggest there were different versions of the MVC-FD83.
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`Finally, Maxell argues that the evidence does not prove that all MVC-FD83/88 products
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`perform image downscaling—which is relevant to the ’493 Patent’s “mixed or culled”
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`limitation—in the same way. Reply at 5. This argument fails because, as with Maxell’s other
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`arguments, no evidence suggests that different product versions performed different image
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`downscaling. Analyzing the evidence in the record, Apple’s expert Dr. Bovik described at
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`length how the Sony MVC-FD83/88 practice or render obvious the “mixed or culled”
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`limitations. See Opp., Ex. A at pp. 74-78. Dr. Bovik also confirmed that the product samples he
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`tested use the same image processing chips for downscaling images as specified in Sony’s
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`documents. Id. at 57-59, 61-53. As Apple’s Opposition explains, Maxell’s arguments based on
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`alleged firmware updates and hardware changes are unsupported. See Opp. at 13-14.
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`Maxell’s arguments mischaracterize the evidence and are premised on unsupported
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`speculation. But even crediting those arguments, Maxell’s Reply demonstrates that there is at
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`least a triable issue of material fact for the jury. There is more than enough evidence for a
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`reasonable jury to conclude that the Sony MVC-FD83/88 were known and used in the U.S.
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`before the ’493 Patent’s priority date, and that these products had the relevant features Apples
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`relies on for its invalidity defense. Thus, Maxell’s Motion should be denied.
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`5
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`Case 5:19-cv-00036-RWS Document 494 Filed 08/10/20 Page 7 of 8 PageID #: 26872
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`Dated: August 6, 2020
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`/s/ Luann L. Simmons
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`
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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
`
`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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`6
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`Case 5:19-cv-00036-RWS Document 494 Filed 08/10/20 Page 8 of 8 PageID #: 26873
`Case 5:19-cv-00036-RWS Document 494 Filed 08/10/20 Page 8 of 8 PageID #: 26873
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`CERTIFICATE OF SERVICE
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`The lmdersigned hereby ce11ifies that all c01msel of record who are deemed to have
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`consented to electronic service are being served with a copy of this docmnent 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
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`Melissa R. Smith
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`