Case 5:19-cv-00036-RWS Document 499 Filed 08/11/20 Page 1 of 13 PageID #: 26924
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`Plaintiff,
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`Defendant.
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.’S SUR-REPLY TO DEFENDANT APPLE INC.’S MOTION FOR
`PARTIAL SUMMARY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT
`NOS. 10,084,991 AND 8,339,493
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`Case 5:19-cv-00036-RWS Document 499 Filed 08/11/20 Page 2 of 13 PageID #: 26925
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`I.
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`TABLE OF CONTENTS
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`CLAIM 5 OF THE ’493 PATENT DOES NOT REQUIRE A “PIXEL LINE” TO
`INCLUDE ALL PIXELS FROM ONE EXTREME END OF THE IMAGE
`SENSOR TO THE OTHER. .............................................................................................. 1
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`II.
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`“N NUMBER” IN CLAIM 5 OF THE ’493 PATENT DOES NOT MEAN “ALL
`PIXELS.” ........................................................................................................................... 2
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`III. APPLE’S ARGUMENTS FOR THE ’991 PATENT ALSO FAIL. ................................. 4
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`Case 5:19-cv-00036-RWS Document 499 Filed 08/11/20 Page 3 of 13 PageID #: 26926
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Blue Spike, LLC v. Texas Instr., Inc.,
`No. 6:12-cv-499-MHS-CMC, 2014 WL 5299320 (E.D. Tex. Oct. 16, 2014) ...........................4
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`Callpod, Inc. v. T Tech., Inc.,
`No. 2:11-CV-326-JRG-RSP, 2013 WL 3832426 (E.D. Tex. July 22, 2013) ............................2
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`Nobel Biocare Services AG v. Instradent USA, Inc.,
`903 F. 3d 1365 (Fed. Cir. 2018).................................................................................................3
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`SuperGuide Corp. v. DirecTV Enters.,
`358 F.3d 870 (Fed. Cir. 2004)....................................................................................................4
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`Case 5:19-cv-00036-RWS Document 499 Filed 08/11/20 Page 4 of 13 PageID #: 26927
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`TABLE OF ABBREVIATIONS
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`Abbreviation
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`Description
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`’493 Patent
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`U.S. Patent No. 8,339,493 (attached as Ex. 1)
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`’991 Patent
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`U.S. Patent No. 10,084,991 (attached as Ex. 2)
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`“all N number” limitation “all signal charges accumulated in all N number of vertically arranged pixel
`lines,” as recited by claim 5 of the ’493 Patent
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`Apple
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`Defendant Apple Inc.
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`Bederson Reb. Rep.
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`Rebuttal Expert Report of Dr. Benjamin J. Bederson Regarding Non-
`Infringement of U.S. Patent Nos. 6,928,306 and 10,084,991 (excerpts
`attached to Opposition as Ex. 9)
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`Bovik Reb. Rpt.
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`Bystrom Inf. Rep.
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`Rebuttal Expert Report of Dr. Alan C. Bovik Regarding Non-Infringement
`of U.S. Patent No. 8,339,493, served June 4, 2020 (excerpts attached to
`Opposition as Ex. 5)
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`Initial Expert Report of Maja Bystrom, Ph.D. Concerning Apple’s
`Infringement of U.S. Patent No. 10,084,991, served May 7, 2020 (excerpts
`attached to Opposition as Ex. 8)
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`Madisetti Dep.
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`Deposition of Vijay Madisetti, Ph.D., taken June 26, 2020 (excerpts
`attached to Opposition as Ex. 3)
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`Madisetti Inf. Rep.
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`Initial Expert Report of Vijay Madisetti, Ph.D. Concerning Apple’s
`Infringement of U.S. Patent No. 8,339,493, served May 7, 2020 (excerpts
`attached to Opposition as Ex. 4)
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`Maxell
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`Mot.
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`Opposition
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`Reply
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`Plaintiff Maxell, Ltd.
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`Apple’s Motion for Partial Summary Judgment of Non-Infringement of
`U.S. Patent Nos. 10,084,991 and 8,339,493, served June 30, 2020 (Dkt.
`372)
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`Maxell’s Opposition to Apple’s Motion for Partial Summary Judgment of
`Non-Infringement of U.S. Patent Nos. 10,084,991 and 8,339,493 (Dkt. 422)
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`Defendant Apple’s Reply in Support of Its Motion for Partial Summary
`Judgment of Non-Infringement of U.S. Patent Nos. 10,084,991 and
`8,339,493 (Dkt. 425)
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`Case 5:19-cv-00036-RWS Document 499 Filed 08/11/20 Page 5 of 13 PageID #: 26928
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`Exhibit
`No.1
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`TABLE OF EXHIBITS
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`Description
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`U.S. Patent No. 8,339,493
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`U.S. Patent No. 10,084,991
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`Excerpts from the Deposition of Vijay Madisetti, Ph.D., taken June 26, 2020
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`Excerpts from the Initial Expert Report of Vijay Madisetti, Ph.D. Concerning
`Apple’s Infringement of U.S. Patent No. 8,339,493, served May 7, 2020
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`Excerpts from the Rebuttal Expert Report of Dr. Alan C. Bovik Regarding Non-
`Infringement of U.S. Patent No. 8,339,493, served June 4, 2020
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`Excerpts from Day 1 of the Deposition of Maja Bystrom, Ph.D., taken June 17,
`2020
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`Excerpts from the Deposition of Benjamin J. Bederson, Ph.D., taken June 18, 2020
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`Excerpts from the Initial Expert Report of Maja Bystrom, Ph.D. Concerning
`Apple’s Infringement of U.S. Patent No. 10,084,991, served May 7, 2020
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`Excerpts from the Rebuttal Expert Report of Dr. Benjamin J. Bederson Regarding
`Non-Infringement of U.S. Patent Nos. 6,928,306 and 10,084,991, served June 4,
`2020
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`10
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`Excerpts from the Declaration of Dr. Jeffery J. Rodriguez, submitted by Petitioner
`Apple Inc. in IPR2020-00597
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`1 “Opp., Ex. __” in this brief refers to the exhibits to the Declaration of Bryan Nese, filed with Maxell’s Opposition
`(Dkt. 422).
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`Case 5:19-cv-00036-RWS Document 499 Filed 08/11/20 Page 6 of 13 PageID #: 26929
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`After getting its IPRs filed based on broad claim interpretations, Apple presented a slew
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`of new, much-narrower claim constructions in its June 2020 rebuttal expert reports and summary
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`judgment motions. Two of those new constructions are at issue here.
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`First, Apple does not deny that it seeks to construe “all signal charges accumulated in all
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`N number of vertically arranged pixel lines” in claim 5 of the ’493 Patent. Apple’s unapologetic
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`approach to this issue is not only untimely but also unsupported by the intrinsic evidence.
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`Second, Apple fails to justify its new construction for the ’991 Patent, instead offering
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`only a perfunctory retort that does not address the plain factual issues raised in Maxell’s
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`Opposition. See Reply at 4-5.
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`I.
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`Claim 5 of the ’493 Patent Does Not Require a “Pixel Line” to Include All Pixels
`From One Extreme End of the Image Sensor to the Other.
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`Apple makes no effort to justify its construction of “pixel line” as requiring an entire row
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`of pixels. Its Reply offers no evidence to support that position and fails to address the intrinsic
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`evidence that contradict its construction, which Maxell pointed out. See Opp. at 4-7.
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`Instead, Apple relies on its own products to show how the ’493 Patent’s claim language
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`should be interpreted. E.g., Reply at 2. Using the iPhone 5s as an example, Apple argues
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`Apple’s Reply addresses only one of the numerous portions of the specification that
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`support Maxell’s interpretation of the “all N number” limitation: the description of Figure 5.
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`Compare Opp. at 9-10 (citing ’493 Patent at 5:7-15, 7:15-20, 7:34-37, 10:3-6, 12:37-48, 13:16-
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`22, 14:11-13, FIG. 5, FIG. 9) with Reply at 2 (citing only ’493 Patent at 6:39-59).
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`2 This also fails as a non-infringement argument. Apple’s Reply does not explain
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`, see Reply at 2, and thus under a proper construction the satisfaction of this claim
`limitation cannot be disputed.
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`Case 5:19-cv-00036-RWS Document 499 Filed 08/11/20 Page 7 of 13 PageID #: 26930
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`But Figure 5 is not just a “video embodiment” (Reply at 2); it is an explanation of the
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`physical structure of the sensor that applies to all recording modes, including for static images.
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`For example, this discussion speaks in general terms about the design of the image sensor and
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`the desire to display “images” (i.e., both static and video recordings) on a screen that has an
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`aspect ratio different from that the image sensor. Opp., Ex. 1 (’493 Patent) at 6:39-59. In such
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`circumstances, using “the signals of all horizontal [i.e., vertically arranged] pixels” would
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`produce a displayed image that “looks vertically elongate[d], compared with the original image.”
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`Id. at 6:47-52. To correct this, the patent teaches that it is “necessary to output … only those
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`signals coming from a pixel area with the horizontal width conforming to the aspect ratio” of the
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`screen. Id. at 6:52-55. Nowhere does the patent state that this feature applies only to video.
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`Indeed, Dr. Madisetti explained that the design of the sensor described here and else-
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`where in the patent “applies to the static and the video.” Ex. 3 (Madisetti Dep.) at 135:2-6. None
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`of Apple’s experts have rebutted this testimony, and Apple’s Reply offers no contrary evidence.
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`Apple’s reliance on Callpod is therefore misplaced. Here, Maxell is not looking to the
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`specification to “deviat[e] from the clear language of the claims.” See Callpod, Inc. v. T Tech.,
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`Inc., No. 2:11-CV-326-JRG-RSP, 2013 WL 3832426, at *6 (E.D. Tex. July 22, 2013). Instead,
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`Maxell is using the specification to counter Apple’s overly narrow interpretation of “pixel line”
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`as an entire row of pixels spanning from one side of the image sensor to the other. Maxell’s
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`approach thus keeps with “[t]he general rule that the specification may be used as an aid to
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`interpret, but not change, the meaning of the claim language.” See id. Apple’s efforts to change
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`the meaning of “pixel line” to suit its needs should be rejected.
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`II.
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`“N Number” in Claim 5 of the ’493 Patent Does Not Mean “All Pixels.”
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`Apple’s Reply continues to focus on one word (“all”) while ignoring others (“N
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`number”). See Reply at 3 (“But ‘all’ does not mean ‘some.’”). Of course “all” does not mean
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`Case 5:19-cv-00036-RWS Document 499 Filed 08/11/20 Page 8 of 13 PageID #: 26931
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`“some”—but that is not the issue. The issue is whether “N number” means “all pixel rows,” as
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`Apple believes. Mot. at 5-6 (equating “all N number of vertically arranged pixel lines” to “all
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`pixel rows”). Apple’s Reply cites no evidence to support this rewrite. See Reply at 3-4
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`(disagreeing with Maxell’s evidence but citing none to support its own construction).
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`Apple finally gets it right when it admits that “[w]hatever N is for a product, Claim
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`element 5.d requires using ‘all N number of … pixel lines’ for recording a static image.” Id. at 3
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`(emphasis removed). As Maxell showed, Apple has not disputed that
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`. Compare Opp., Ex. 4 (Madisetti Inf. Rep.) at pp. 220-21 (
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`) with Opp., Ex. 5 (Bovik Reb. Rep.) at pp. 32-38 (
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`). It is irrelevant whether
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`, and that is all that claim 5 requires.
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`Regardless of whether “comprising” “reach[es] into each [claim element] to render every
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`word and phrase therein open-ended” (Reply at 3), here, the claim uses another open-ended
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`transition (“having”) to expressly show that “N” is a floor, not a ceiling. See Nobel Biocare
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`Services AG v. Instradent USA, Inc., 903 F. 3d 1365, 1380 (Fed. Cir. 2018) (“having” interpreted
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`as open-ended). Both the claim’s plain language and the patent’s specification confirm that
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`“having” is open-ended in this context. E.g., Opp., Ex. 1 (’493 Patent), 5:7-15, 10:3-6, 13:16-22.
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`Apple is wrong to argue that “the specification does not describe any embodiment using a
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`subset of pixels to record static images.” Reply at 4. As Maxell showed in its Opposition, the
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`’493 Patent describes an embodiment in which “the area extracted from the light receiving
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`surface of the image sensing device can be changed to three different areas,” each of which are
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`Case 5:19-cv-00036-RWS Document 499 Filed 08/11/20 Page 9 of 13 PageID #: 26932
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`less than the size of the entire 1200 by 1600 array. Opp., Ex. 1 (’493 Patent) at 11:59-63. Despite
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`Maxell’s pointing this out, Apple never addresses this evidence in its Reply. The specification
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`describes the use of “effective” pixels and “an area of pixels for image stabilization added to the
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`area of effective pixel[s],” thus expressly contemplating that more pixels exist in the sensor
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`beyond the claimed N number. Id. at 1:51-58; see Opp., Ex. 4 (Madisetti Inf. Rep.) at ¶ 322.
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`Apple’s interpretation of “effective” pixels is also incorrect. Apple again ignores the
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`evidence that the inventors’ use of the term “effective pixels” differs from that
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`. See Opp., Ex. 3 (Madisetti Dep.) at 113:7-114:13, 115:24-116:17. Apple presents no
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`evidence that “effective pixels” is a term of art that should be interpreted the same way in a
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`patent application filed in January 2000 as in a technical specification written by different
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`engineers more than a decade later.
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`Maxell is also not “importing” the word effective into the claims. Reply at 4. Rather,
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`Maxell is merely pointing out an embodiment where fewer than “all pixels” are used to record
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`static images, thereby proving that “N number” should not be construed as “all pixels of an
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`image sensor,” as Apple argues. See Mot. at 4. If the ’493 Patent’s inventors had wanted to claim
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`“N” as “all pixels of an image sensor,” they could have done so. See SuperGuide Corp. v.
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`DirecTV Enters., 358 F.3d 870, 880 (Fed. Cir. 2004) (“Had the patentees intended to limit the
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`disputed claim terms … they could have easily done so ….”). The fact that they did not is
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`powerful evidence that the claims are not so limited. See Blue Spike, LLC v. Texas Instr., Inc.,
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`No. 6:12-cv-499-MHS-CMC, 2014 WL 5299320, at *5 (E.D. Tex. Oct. 16, 2014).
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`III. Apple’s Arguments for the ’991 Patent Also Fail.
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`As for the ’991 Patent, there are plain factual issues that preclude a finding of summary
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`judgment. See Opp. at 15 (citing Ex. 8 (Bystrom Inf. Rep.) at pp. 135-205; Ex. 9 (Bederson Reb.
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`Rep.) at ¶¶ 187-89, 197). Apple’s Reply fails to refute these facts. See Reply at 4-5.
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`Case 5:19-cv-00036-RWS Document 499 Filed 08/11/20 Page 10 of 13 PageID #: 26933
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`Apple also has not denied that it seeks to further narrow “videophone function-added TV
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`receiver” to include three additional requirements not found in this Court’s construction. See id.
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`Instead, Apple accuses Maxell of “modify[ing] the Court’s claim construction.” Id. at 4. Yet
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`Maxell and its expert merely explain how the accused Apple devices comport with the ’991
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`Patent’s description of a videophone function-added TV receiver, such as its VOD functionality.
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`Regardless of whether the ’991 Patent “differentiates between TV receiver and VOD
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`functionalities” (id. at 5), the patent makes clear that every embodiment need not include
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`traditional “TV” capabilities and may include only VOD functionality: “The videophone
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`function-added TV receiver … receives digital broadcast programs, downloads VOD contents
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`and/or makes a videophone call with another videophone function-added TV receiver.” Opp., Ex.
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`2 (’991 Patent) at 7:62-67 (emphasis added). Apple’s Reply never addresses this language.
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`Figure 4 of the patent does not contradict this. That figure lists “TV” (not “TV receiver,”
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`as Apple states), “VOD,” and “PHONE” as possible functions of the videophone function-added
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`TV receiver. Opp., Ex. 2 (’991 Patent) at FIG. 4. These are just buttons on a remote control, not a
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`list of requirements the receiver must have. See id. at 6:58-59. Moreover, Apple hasn’t explained
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`why it would be proper to read in the “TV” function but not the “PHONE” function.
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`Apple also has not sufficiently explained why its arguments are factual contentions and
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`not claim construction arguments. Taking the position that “the TV receiver must be capable of”
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`performing broadcast functions (Mot. at 13 (emphasis added)) is not “undisputed factual
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`support” (Reply at 5); it is a legal argument asking to further narrow the claim.
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`Accordingly, the question is not is an iPhone, iPad, or iPod Touch a television receiver?
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`Rather, the relevant inquiry is whether the accused products are “videophone function-added TV
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`receivers,” as described in the ’991 Patent. That is a question for the jury to answer.
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`Case 5:19-cv-00036-RWS Document 499 Filed 08/11/20 Page 11 of 13 PageID #: 26934
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`Dated: August 7, 2020
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`By:
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`/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
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`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
`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
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`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
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`Case 5:19-cv-00036-RWS Document 499 Filed 08/11/20 Page 12 of 13 PageID #: 26935
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`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 499 Filed 08/11/20 Page 13 of 13 PageID #: 26936
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 22nd day of July, 2020, with a copy of this document via
`electronic mail pursuant to Local Rule CV-5(d).
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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