Case 5:19-cv-00036-RWS Document 602 Filed 12/21/20 Page 1 of 9 PageID #: 31784
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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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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`Defendant.
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`MAXELL, LTD.’S MOTION IN LIMINE NO. 10 TO
`EXCLUDE EVIDENCE OR ARGUMENTS REGARDING PRIOR ART
`NOT ELECTED IN DEFENDANTS’ FINAL ELECTION OF PRIOR ART
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`Case 5:19-cv-00036-RWS Document 602 Filed 12/21/20 Page 2 of 9 PageID #: 31785
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`I.
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`INTRODUCTION1
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`At the beginning of this case, at Apple’s request, the parties agreed and jointly moved to
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`focus the asserted claims and prior art to be addressed in this litigation in order to “streamline[]
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`the issues in this case to promote a ‘just, speedy, and inexpensive determination’ of this action.”
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`See (D.I. 44) at 1 (“Focusing Order”). Maxell agreed to narrow its infringement case to twenty
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`claims, and Apple agreed to narrow its invalidity case to twenty prior art references. Id.
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`Notwithstanding this agreement and Order, Apple served a notice pursuant to 35 U.S.C. § 282 that
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`identifies hundreds of alleged prior art references on which it intends to rely at trial. Apple’s clear
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`intentions necessitate this motion to limit Apple’s trial evidence to the twenty references Apple
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`elected. See Apple’s Final Election of Prior Art (Ex. 1).2
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`II.
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`BACKGROUND
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`35 U.S.C. § 282(c) requires an accused infringer to disclose the prior art on which it intends
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`to rely at trial for “anticipation” or “showing the state of the art,” i.e., everything made available
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`to the public before the date of the patent. It serves as merely a notice function so that the patent
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`owner is not surprised at trial, and is required “at least thirty days before the trial.” This Court’s
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`Local Patent Rules make a § 282 notice superfluous, as they require the same information for the
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`same purpose. Notwithstanding, Apple served its notice on November 6, 2020.
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`Apple’s § 282 notice, however, was not confined to the twenty prior art references on which
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`Apple elected to rely for trial pursuant to the Focusing Order. Instead, Apple lists fifty-four patents,
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`thirty-five printed publications, six prior art products and systems, and incorporates by reference
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`1 During the parties meet and confer, the parties agreed to a five page briefing limit and Apple requested that it be
`given until January 15, 2020 to file a reply. Maxell does not oppose Apple’s request for an extension of time to file a
`five page reply.
`2Maxell raised its concerns with the Court during the Pre-Trial Conference. The Court encouraged the parties to
`meet and confer on the issue and indicated that the Court authorized Maxell’s motion to the extent the parties do not
`reach agreement on this issue. See Pre-Trial Tr. at 76:9-21.
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`1
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`hundreds of others, including “any prior art cited during…prosecution,” “Apple’s invalidity
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`contentions and references cited therein,” “invalidity contentions served on Maxell, Ltd. by any
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`other company…and the references cited therein,” “[e]ach IPR petition….and the references cited
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`therein,” and prior art cited in Apple’s expert reports or invalidity expert reports served in other
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`cases involving the patents-in-suit. Id. Apple’s § 282 notice (Ex. 2) at 1-7.
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`Maxell immediately objected, noting that Apple’s notice violated the Local Patent Rules
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`and this Court’s Focusing Order, and that it improperly expanded Apple’s invalidity case. See
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`Email from S. Siddiqui to M. Jay (Ex. 3), November 6, 2020. Without explanation, Apple replied
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`indicating that it disagreed and will not withdraw the notice. See Email from M. Jay to S. Siddiqui
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`(Ex. 4), November 9, 2020. In a related exchange with the PTAB, however, Apple indicated that
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`it intends to rely on prior art listed in its § 282 notice “to establish the state of the art relevant to
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`Petitioner’s 35 U.S.C. § 101 defense.” See Email from P. Hart to PTAB (Ex. 5), November 11,
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`2020. Then again during the Pre-Trial Conference, and on the parties’ numerous meet and confers
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`on this issue, Apple confirmed its intent to rely on unelected prior art based on opinions set forth
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`in its experts’ invalidity reports related to “the state of the art.” See Pre-Trial Tr. at 74:6-14.
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`III. ARGUMENT
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`The Focusing Order requires each side to narrow its case. For Apple, that required the
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`narrowing of prior art to 20 references or products/systems. Focusing Order (D.I. 44). Though
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`Apple ostensibly made a final election (Ex. 1), it has no intent of limiting its case to the elected
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`art. Rather, Apple seeks to present to the jury art already dropped and art Apple never identified
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`in this case.3 Such use would unfairly prejudice Maxell and confuse and mislead the jury. Thus,
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`3 The identified exhibits only represent the alleged prior art Apple may seek to enter into evidence. It does not limit
`the art that Apple may seek to discuss without such entry.
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`2
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`the Court should preclude Apple from introducing evidence or arguments based on unelected prior
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`art under Fed. R. Evid. 403 and as violative of the Court’s Focusing Order.
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`Apple states that it will use the references solely for the purpose of showing the “state of
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`the art” and/or to pursue invalidity under § 101.4 But that is a distinction without a difference.
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`First, the Focusing Order does not distinguish between prior art references used to anticipate a
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`claim or establish the state of the art. It simply and clearly refers to the total number of prior art
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`references Apple may assert in total and against any single patent (D.I. 44). Apple’s “explanation”
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`that it intends to use the prior art to show the “state of the art” and/or to pursue invalidity under §
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`101 does not somehow insulate Apple from violating the Focusing Order. Moreover, much of the
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`prior art cited in Apple’s notice is relevant only to patents where Apple does not even assert a 101
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`defense anyway, and the Court’s ruling on dispositive motions renders moot Apple’s 101 defense
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`for the ’306 and ’794 patents.
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`Second, courts have held that a notice under 35 U.S.C. § 282 cannot be used to circumvent
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`the local patent rules or other scheduling order requirements (e.g., Focusing Order requirements).
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`See ATD Corp. v. Lydall, Inc., 159 F.3d 534, 550–51 (Fed. Cir. 1998) (finding that § 282 does not
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`supersede the Federal Rules of Civil Procedure or the Patent Standing Order and Case Scheduling
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`Order). Further, courts have specifically rejected the “state of the art” argument Apple is pursuing,
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`noting that the “state of the art is a subset of the prior art.” see also Emcore Corp. v. Optium Corp.,
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`No. CIV. A. 7-326, 2009 WL 3381800, at *2 (W.D. Pa. Oct. 16, 2009) (confirming that the state
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`of the art is a subset of prior art and preventing defendant from expanding on its invalidity positions
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`through a § 282 notice). Apple seems “to think that under 35 U.S.C. § 282(c), [it] can put in
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`4 Noteworthy, much of the prior art cited in Apple’s § 282 notice is relevant only to patents where Apple does not
`even assert a 101 defense and the Court’s ruling on dispositive motions renders moot Apple’s 101 defense for the
`’306 and ’794 patents.
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`3
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`whatever [it] want[s] for ‘state-of-the-art background references’ . . . . But § 282” should “not
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`trump this court’s orders,” including the Focusing Order. Ultratec, Inc. v. Sorenson
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`Communications, Inc., Case No. 14-cv-66-jpd (W.D. Wisc. Sept. 22, 2015); see also Munchkin,
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`Inc. v. Luv N' Care, Ltd., No. 2:13-CV-07228-ODW, 2015 WL 847391, at *2 (C.D. Cal. Feb. 26,
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`2015).
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`Third, Apple’s conduct will mislead and confuse the jury. Apple intends for its experts to
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`rely on unelected prior art to provide opinions under the guise of the “state of the art,” while also
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`comparing the unelected prior art to the claim limitations. Apple’s only justification to do this is
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`that its experts included certain discussions of unelected prior art in their expert reports. Apple
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`believes this somehow makes it immune to the requirements of the Focusing Order. But just
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`because Apple’s experts included certain opinions in their expert reports does not mean that these
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`opinions were permitted in the first place, and should be presented at trial. Apple itself recognized
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`that simply including something in a report does not mean it is necessarily admissible, having also
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`filed motions in limine to exclude opinions in Maxell’s expert reports. See e.g., Dkt. No. 548 at 8
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`(seeking to exclude Steve Job’s discussions about “gyroscopes” relied upon by Dr. Madisetti and
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`Dr. Rosenberg).
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`Additionally, the jury will not be able to discern the difference between references formally
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`presented as invalidating, and which should properly be considered in deliberations regarding
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`anticipation and obviousness, versus references informally presented as showing the state of the
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`art. Apple should not be allowed to violate Fed. R. Evid. 403 or circumvent the clear language of
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`the Court’s Focusing Order by arguing that the references merely show “the state of the art,” just
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`like Maxell is not allowed to resurrect claims or bolster its damages case with evidence concerning
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`claims that were dropped. Allowing Apple to present countless references in this manner would
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`4
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`Case 5:19-cv-00036-RWS Document 602 Filed 12/21/20 Page 6 of 9 PageID #: 31789
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`undeniably confuse and mislead the jury (by sheer volume alone) and substantial prejudice
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`Maxell.5 If Apple believed it needed the unelected prior art to establish that the technology was
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`well known—i.e., if they are necessary to Apple’s invalidity case—then the references are being
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`used for invalidity and should have been included in Apple’s Final Election of Prior Art. Pactiv
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`Corp. v. Multisorb Techs., Inc., 10 C 461, 2013 WL 2384249, at *2 (N.D. Ill. May 29, 2013)
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`(Multisorb points out several cases that rejected similar attempts to offer previously undisclosed
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`materials as “background on the art” or “state of the art,” and this Court agrees that parties should
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`not be able to circumvent the disclosure requirements of our Local Patent Rules by offering such
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`materials as background.”); Life Techs. Corp. v. Biosearch Techs., Inc., No. 12–cv–00852–WHA,
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`2012 WL 4097740, at *1–2 (N.D.Cal. Sept. 17, 2012) (rejecting argument that references were
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`admissible as background material; stating that “courts have rejected such attempts to elude patent
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`local rules by defining material as ‘background’ or ‘context’”).
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`For whatever reason—whether it be deliberate strategy or negligent poor planning— Apple
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`did not include these references in its Final Election of Prior Art and should not now be able to
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`expand its invalidity case to include the references at trial.
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`IV. CONCLUSION
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`For the foregoing reasons, Maxell respectfully request that Apple be held to the Focusing
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`Order and the Court grant Maxell’s Motion in Limine no. 10 precluding Apple from introducing
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`evidence or arguments based on prior art that Apple explicitly dropped from the case by not
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`electing it.
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`5 It is also particularly notable that Apple is, on the one hand, demanding that Maxell drop more asserted patents
`from the case while, on the other hand, it seeks to substantially expand the case as it relates to invalidity.
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`5
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`Case 5:19-cv-00036-RWS Document 602 Filed 12/21/20 Page 7 of 9 PageID #: 31790
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`Dated: December 21, 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
`
`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
`
`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
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`6
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`Case 5:19-cv-00036-RWS Document 602 Filed 12/21/20 Page 8 of 9 PageID #: 31791
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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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`7
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`Case 5:19-cv-00036-RWS Document 602 Filed 12/21/20 Page 9 of 9 PageID #: 31792
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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 21st day of December, 2020, with a copy of this document
`via the Court’s CM/ECF system.
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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