Case 5:19-cv-00036-RWS Document 641 Filed 03/03/21 Page 1 of 44 PageID #: 32597
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`Plaintiff,
`
`Defendant.
`
`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`FILED UNDER SEAL
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`
`
`MAXELL, LTD.,
`
`v.
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`APPLE INC.,
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`
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`AMENDED JOINT FINAL PRE-TRIAL ORDER
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`Pursuant to the Court’s Amended Docket Control Order (Dkt. No. 623) and Rule 16 of
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`
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`the Federal Rules of Civil Procedure. The following parties submit this Amended Joint Pretrial
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`Order: Plaintiff Maxell, Ltd. (“Plaintiff” or “Maxell”) and Defendant Apple Inc. (“Defendant” or
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`“Apple”).
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`COUNSEL FOR THE PARTIES
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`1. Plaintiff:
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`Geoff P. Culbertson
`Kelly B. 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
`Baldine B. Paul
`Tiffany A. Miller
`Saqib J. Siddiqui
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`A.
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`PUBLIC VERSION
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`Case 5:19-cv-00036-RWS Document 641 Filed 03/03/21 Page 2 of 44 PageID #: 32598
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`Bryan C. Nese
`William J. Barrow
`Michael L. Lindinger
`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
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`wbarrow@mayerbrown.com
`mlindinger@mayerbrown.com
`agelsleichter@mayerbrown.com
`cbakewell@mayrbrown.com
`
`Robert G. Pluta
`Amanda S. Bonner
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`
`Graham M. Buccigross
`Mayer Brown LLP
`3000 El Camino Real
`Suite 2-300
`Palo Alto, CA 94306
`(650) 331-2000
`gbuccigross@mayerbrown.com
`
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`2. Defendant:
`
`Harry L. Gillam, Jr.
`Texas Bar No. 07921800
`Melissa Richards Smith
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`Case 5:19-cv-00036-RWS Document 641 Filed 03/03/21 Page 3 of 44 PageID #: 32599
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`Texas Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, TX 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`Email: gil@gillamsmithlaw.com
`Email: melissa@gillamsmithlaw.com
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`Mark D. Fowler (Pro Hac Vice)
`Brent K. Yamashita
`Christian Chessman
`DLA PIPER LLP (US)
`2000 University Ave.
`East Palo Alto, CA 94303-2214
`Tel: 650.833.2000
`Fax: 650.833.2001
`
`Sean C. Cunningham (Pro Hac Vice)
`Erin P. Gibson (Pro Hac Vice)
`Kevin Hamilton (Pro Hac Vice)
`David R. Knudson (Pro Hac Vice)
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101
`Tel: 619.699.2700
`Fax: 619.699.2701
`
`Michael Jay (Pro Hac Vice)
`DLA PIPER LLP (US)
`2000 Avenue of the Stars, Suite 400
`Los Angeles, CA 90067
`Tel: 310.595.3000
`Fax: 310.595.3300
`
`Aaron G. Fountain
`Zachary Loney
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, Texas 78701-3799
`Tel: 512.457.7000
`Fax: 512.457.7001
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`Dawn M. Jenkins
`DLA PIPER LLP (US)
`1000 Louisiana, Suite 2800
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`Case 5:19-cv-00036-RWS Document 641 Filed 03/03/21 Page 4 of 44 PageID #: 32600
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`Houston, TX 77002-5005
`Tel: 713.425.8490
`Fax: 713.300.6012
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`Paul Steadman
`Stephanie Lim (Pro Hac Vice)
`DLA PIPER LLP (US)
`444 West Lake Street, Ste. 900
`Chicago, IL 60606
`Tel: 312.368.4000
`Fax: 312.236.7516
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`STATEMENT OF JURISDICTION
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`This is a civil action arising under the Patent Laws of the United States, 35 U.S.C. § 101, et
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`B.
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`seq. The Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and
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`1338(a). Jurisdiction is not contested by any party.
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`C.
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`NATURE OF ACTION
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`Maxell’s Statement
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`This is a suit for patent infringement under 35 U.S.C. § 271. Apple infringes, literally or
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`under the doctrine of equivalents, one or more claims of U.S. Patent Nos. 6,748,317 (the “’317
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`Patent”), 6,580,999 (the “’999 Patent”), 8,339,493 (the “’493 Patent”), 7,116,438 (the “’438
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`Patent”), 6,329,794 (the “’794 Patent”), and 6,430,498 (the “’498 Patent”) (collectively, the
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`“Patents-in-Suit”).1 Further, Apple’s infringement is and has been willful. Maxell seeks an
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`injunction and both pre- and post-verdict damages to compensate Maxell for Apple’s acts of
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`infringement, but in no event less than a reasonable royalty for the infringement. Maxell also seeks
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`enhanced damages pursuant to 35 U.S.C. § 284 and recovery of its attorneys’ fees pursuant to 35
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`1 In its Complaint, Maxell also asserted infringement of U.S. Patent Nos. 6,408,193 (the “’193
`Patent”), 10,084,991 (the “’991 Patent”), 6,928,306 (the “’306 Patent”), and 10,212,586 (the
`“’586 Patent”). In compliance with the Court’s Order on narrowing (Dkt. No. 619), Maxell has
`not selected these patents for presentation at the March 2021 trial scheduled for this case.
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`Case 5:19-cv-00036-RWS Document 641 Filed 03/03/21 Page 5 of 44 PageID #: 32601
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`U.S.C. § 285, as well as its costs.
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`Apple’s Statement
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`Maxell’s claims are without merit. Apple does not infringe any asserted claim of the
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`Patents-in-Suit, either literally or under the doctrine of equivalents. Moreover, Apple’s alleged
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`infringement of the Patents-in-Suit has not been, and is not, willful. Additionally, each of the
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`asserted claims of the Patents-in-Suit is invalid as anticipated or obvious under 35 U.S.C. §§ 102
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`and/or 103. Further, the ’317 patent, the ’498 patent, and the ’999 patent are invalid for failing to
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`claim patent-eligible subject matter under 35 U.S.C. § 101.
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`Maxell is not entitled to any relief, including injunctive relief or monetary damages.
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`Maxell is not entitled to enhanced damages, nor is this an exceptional case entitling Maxell to its
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`attorneys’ fees and costs. Apple, however, is entitled to recovery of its attorneys’ fees under 35
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`U.S.C. § 285, as well as its costs, and any other relief the Court deems appropriate.
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`D.
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`CONTENTIONS OF THE PARTIES
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`The parties set forth below a summary of their contentions for trial. The parties do not
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`necessarily agree with each other’s summaries and contentions and reserve all objections.
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`Maxell’s Statement of Its Contentions
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`By providing these contentions, Maxell does not waive any of its motions in limine,
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`motions for summary judgment, Daubert motions, and/or motions to strike which, if granted,
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`would resolve some or all of these issues. Furthermore, Maxell’s contentions in this case are
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`detailed, in part, in its pleadings, infringement contentions, discovery responses and deposition
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`testimony, the expert reports and depositions of Maxell’s experts, and its motion briefing and
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`responses to Apple’s pending and anticipated motions, which are all incorporated by reference
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`herein.
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`1. Maxell is the owner by assignment of the Patents-in-Suit and possesses all rights of
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`recovery under the Patents-in-Suit, including the exclusive right to recover for past infringement.
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`2. Venue is proper in the United States District Court for the Eastern District of Texas,
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`Texarkana Division, in this case.
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`3. Jurisdiction is proper in this Court.
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`4. Maxell contends that the Patents-in-Suit are valid, enforceable, and infringed by Apple.
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`5. Maxell contends that Apple infringes, literally and under the doctrine of equivalents, claims
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`1 and 17 of the ’317 Patent by making, using, selling, offering for sell, and/or importing into the
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`United States the following products: iPhone 5c (A1456/A1532), iPhone 5s (A1453/A1533),
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`iPhone 6S (A1633/A1688), iPhone 6S Plus (A1634/A1687), iPhone SE (A1723/A1662), iPhone
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`6 (A1549/A1586), iPhone 6 Plus (1522/1524), iPhone 7 (A1660/A1778), iPhone 7 Plus
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`(A1661/A1784),
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`iPhone 8 (A1863/A1905),
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`iPhone 8 Plus (A1864/A1897),
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`iPhone X
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`(A1865/A1901), iPhone XS (A1920), iPhone XS Max (A1921), iPhone XR (A1984), iPhone 11
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`(A2111), iPhone 11 Pro (A2160), and iPhone 11 Pro Max (A2161) (“the ’317 Accused Products”).
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`6. Maxell contends that Apple infringes, literally and under the doctrine of equivalents, claim
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`3 of the ’999 Patent by making, using, selling, offering for sell, and/or importing into the United
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`States the following products: iPhone 6S (A1633/A1688), iPhone 6S Plus (A1634/A1687), iPhone
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`SE (A1723/A1662), iPhone 7 (A1660/A1778), iPhone 7 Plus (A1661/A1784), iPhone 8
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`(A1863/A1905), iPhone 8 Plus (A1864/A1897), iPhone X (A1865/A1901), iPhone XS (A1920),
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`iPhone XS Max (A1921), iPhone XR (A1984), iPhone 11 (A2111), iPhone 11 Pro (A2160), and
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`iPhone 11 Pro Max (A2161) (“the ’999 Accused Products”).
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`7. Maxell contends that Apple infringes, literally and under the doctrine of equivalents, claim
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`3 of the ’498 Patent by making, using, selling, offering for sell, and/or importing into the United
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`States the following products: iPhone 5c (A1456/A1532) (claim 3 only), iPhone 5s
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`(A1453/A1533) (claim 3 only), iPhone 6S (A1633/A1688), iPhone 6S Plus (A1634/A1687),
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`iPhone SE (A1723/A1662), iPhone 6 (A1549/A1586) (claim 3 only), iPhone 6 Plus (1522/1524)
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`(claim 3 only), iPhone 7 (A1660/A1778), iPhone 7 Plus (A1661/A1784), iPhone 8
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`(A1863/A1905), iPhone 8 Plus (A1864/A1897), iPhone X (A1865/A1901), iPhone XS (A1920),
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`iPhone XS Max (A1921), iPhone XR (A1984), iPhone 11 (A2111), iPhone 11 Pro (A2160),and
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`iPhone 11 Pro Max (A2161) (“the ’498 Accused Products”).
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`8. Maxell contends that Apple literally infringes claim 5 and infringes, literally and under the
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`doctrine of equivalents, claim 6 of the ’493 Patent by making, using, selling, offering for sell,
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`and/or importing into the United States the following products: iPhone 11 (A2111), iPhone 11 Pro
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`(A2160), iPhone 11 Pro Max (A2161), iPhone Xs (A1920), iPhone Xs Max (A1921), iPhone XR
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`(A1984), iPhone X (A1865/A1901), iPhone 8 Plus (A1864/A1897), iPhone 8 (A1863/A1905),
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`iPhone 7 Plus (A1661/A1784), iPhone 7 (A1660/A1778), iPhone 6s Plus (A1634/A1687), iPhone
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`6s (A1633/A1688), iPhone 6 Plus (A1522/A1524), iPhone 6 (A1549/A1586), iPhone SE
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`(A1723/A1662), iPhone 5s (A1453/A1533/A1457/A1518/ A1528/A1530), and iPhone 5c
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`(A1456/A1532) (“the ’493 Accused Products”).
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`9. Maxell contends that Apple literally infringes claims 1 and 4 of the ’438 Patent by way of
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`three infringement theories.
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`a. Under the first infringement theory, the “Airdrop Theory,” Maxell contends that
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`Apple infringes claims 1 and 4 of the ’438 Patent by making, using, selling, offering for sell, and/or
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`importing into the United States the following products: iPhone XS (A1920), iPhone XS Max
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`(A1921), iPhone XR (A1984), iPhone X (A1865/A1901), iPhone 8 Plus (A1864/A1897), iPhone
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`8 (A1863/A1905), iPhone 7 Plus (A1661/A1784), iPhone 7 (A1660/A1778), iPhone 6s Plus
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`(A1634/A1687),
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`iPhone 6s
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`(A1633/A1688),
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`iPhone SE
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`(A1723/A1662),
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`iPhone 6
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`(A1549/A1586), iPhone 6 Plus (A1522/A1524), iPhone 11 (A2111), iPhone 11 Pro (A2160),
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`iPhone 11 Pro Max (A2161), iPad Air 2 (A1566/A1567), iPad Air 3 (A2152/A2153/A2123), iPad
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`Mini 3 (A1599/A1600), iPad Mini 4 (A1538/A1550), iPad Mini 5 (A2124/A2126/A2133), iPad
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`Pro (A1701/A1709),
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`iPad Pro (A1652),
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`iPad Pro (A1673/A1674/A1675),
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`iPad Pro
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`(/A1980/A2013), iPad 5th generation (A1822/A1823), iPad 6th generation (A1893/A1954), iPad
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`7th generation (A2200/A2198/A2197), iPad Pro (2nd generation) (A1670/A1671), iPad Pro (3rd
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`generation) (A1876/A2014/A1895), iPod Touch 5th Generation (A1509/A1421), iPod Touch 6th
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`Generation (A1574), and iPod Touch 7th Generation (A2178) (“the ’438 Accused AirDrop
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`Products”).
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`b. Under the second infringement theory, the “Apple Watch Theory,” Maxell
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`contends that Apple infringes claims 1 and 4 of the ’438 Patent by making, using, selling, offering
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`for sell, and/or importing into the United States the following products: Apple Watch Series 5
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`(A2092/A2093/A2094/A2095),
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`Series
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`4
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`(A1975/A1976/A1977/A1978),
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`Series
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`3
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`(A1860/A1861/A1858/A1859), Series 1 (A1802/A1803) (“the ’438 Accused Watch Products”).
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`c. Under the third infringement theory, the “Pairable iPhone Theory,” Maxell
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`contends that Apple infringes claims 1 and 4 of the ’438 Patent by making, using, selling, offering
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`for sell, and/or importing into the United States the following products: iPhone 11 (A2111), iPhone
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`11 Pro (A2160), iPhone 11 Pro Max (A2161), iPhone XS (A1920), iPhone XS Max (A1921),
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`iPhone XR (A1984), iPhone X (A1865/A1901), iPhone 8 Plus (A1864/A1897), iPhone 8
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`(A1863/A1905), iPhone 7 Plus (A1661/A1784), iPhone 7 (A1660/A1778), iPhone 6s Plus
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`(A1634/A1687),
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`iPhone 6s
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`(A1633/A1688),
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`iPhone SE
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`(A1723/A1662),
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`iPhone 6
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`(A1549/A1586), and iPhone 6 Plus (A1522/A1524) (“the ’438 Pairable iPhone Products”).
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`10. Maxell contends that Apple infringes, literally and under the doctrine of equivalents, claims
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`1 and 14 of the ’794 Patent by making, using, selling, offering for sell, and/or importing into the
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`United States the following products: iPhone 11 (A2111), iPhone 11 Pro (A2160), iPhone 11 Pro
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`Max (A2161), iPhone XS (A1920), iPhone XS Max (A1921), iPhone XR (A1984), iPhone X
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`(A1865/A1901), iPhone 8 Plus (A1864/A1897), iPhone 8 (A1863/A1905), iPhone 7 Plus
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`(A1661/A1784), iPhone 7 (A1660/A1778), iPhone 6s Plus (A1634/A1687), iPhone 6s
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`(A1633/A1688), iPhone 6 Plus (A1522/A1524), iPhone 6 (A1549/A1586), iPhone SE
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`(A1723/A1662),
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`iPhone 5S
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`(A1453/A1533),
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`iPhone 5C
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`(A1456/A1532),
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`iPad Air
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`(A1474/A1475), iPad mini 2 (A1489/A1490), iPad Air 2 (A1566/A1567), iPad mini 3
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`(A1599/A1600), iPad mini 4 (A1538/A1550), iPad Pro (A1701/A1709), iPad Pro (A1584/A1652),
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`iPad Pro (A1673/A1674/A1675), iPad Pro (A1980/A2013), iPad (5th generation) (A1822/A1823),
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`iPad (6th generation) (A1893/A1954), iPad 7th generation (A2200/A2198/A2197), iPad Pro (2nd
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`generation) (A1670/A1671), iPad Pro (3rd generation) (A1876/A2014/A1895), iPad Air 3
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`(A2152/A2123/A2153), iPad mini 5 (A2133/A2124/A2126), iPod Touch 5th Generation
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`(A1509/A1421), iPod Touch 6th Generation (A1574), and iPod Touch 7th Generation (A2178),
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`Apple Watch Series
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`5
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`(A2092/A2093/A2094/A2095), Apple Watch Series
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`4
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`(A1975/A1976/A1977/A1978), Apple Watch Series 3 (A1860/A1861/A1858/A1859), Apple
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`Watch Series 2 (A1757/A1758/A1816/A1817), Apple Watch Series 1 (A1802/A1803), and Apple
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`Watch 1st Generation (A1553/A1554) (“the ’794 Accused Products”).
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`11. Maxell has contended, based on the sales information Apple provided through the first
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`quarter of 2020, that a reasonable royalty for the infringement of the ten initially asserted patents
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`would be at least $
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` through trial. However, Maxell’s expert has revised her
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`calculations in light of (1) the expected production of Apple’s updated sales information; (2) the
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`Court’s order on summary judgment related to notice (D.I. 586); and (3) the narrowing of the case.
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`Maxell currently contends that the reasonable royalty for the infringement of the six patents
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`selected for trial would be at least $
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` through trial under Maxell’s notice scenario and
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`at least $
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` through trial under Apple’s alternative notice scenario.2
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`12. Should Apple provide additional updated sales information, further updates would be
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`expected in advance of trial. Maxell would revise its reasonable royalty figures to reflect such
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`updates.
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`13. Maxell contends that Apple cannot prove by the appropriate burden any of its affirmative
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`defenses.
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`14. Maxell contends Apple’s alleged infringement is willful.
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`15. Maxell contends it is entitled to prejudgment interest.
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`16. Maxell contends it is entitled to enhanced damages.
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`17. Maxell contends that this is an exceptional case warranting an award of attorneys’ fees.
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`18. Maxell contends that it, and all its predecessors in interest, have complied with 35 U.S.C.
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`§ 287 as asserted in this case.
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`19. Maxell contends that it is entitled to an injunction against Apple. In the alternative, Maxell
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`contends that any denial of an injunction should be conditioned on payment of reasonable royalties
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`for future infringement, including during any stay of an injunction pending appeal.
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`20. Maxell denies Apple’s defenses that the patents-in-suit are invalid, unenforceable, and not
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`infringed by Apple.
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`2 Under Maxell’s notice scenario (as adjusted by the Court’s order on summary judgment (D.I.
`586), Apple had notice of its infringement of the ’317, ’999, ’498, and ’493 by at least December
`2013, and of the remaining patents by no later than May 2018. Under Apple’s alternative
`scenario, Apple had notice of its infringement of only the ’317 patent by at least December 2013,
`and of the remaining patents by no later than May 2018.
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`21. Maxell denies that Apple is entitled to its costs, a declaration that this case is exceptional,
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`or its attorneys’ fees.
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`22. Because Apple objects to including the details of the representative products stipulation in
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`the “Stipulations” section of this Order, which are also set forth in the February 10, 2021, Joint
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`Stipulation Regarding Representative Products for Trial, Maxell includes them in its own
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`contentions section as follows:3
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`For purposes of narrowing the issues for trial in this case only, the parties agreed that
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`certain products may be treated as representative of other products and that proof of
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`infringement or non-infringement of such representative products shall be treated as proof
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`as to the others. Specifically, for the purposes of infringement or non-infringement in this
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`case, the parties may treat the following products as representative of all of the accused
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`products for a particular Patent-in-Suit and proof of infringement or non- infringement
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`about the following products shall be treated as proof regarding all of the accused products
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`for a particular Patent-in-Suit:
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`
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`’317 Patent: iPhone 11 executing iOS 13 (A2111) is representative of all ’317 Accused
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`Products.
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`
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`’999 Patent: iPhone 11 executing iOS 13 (A2111) is representative of all ’999 Accused
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`Products.
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`
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`’498 Patent: iPhone 11 executing iOS 13 (A2111) is representative of all ’498 Accused
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`Products.
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`
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`’493 Patent: iPhone 8 executing iOS 11 (A1863/A1905) is representative of all ’493
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`3 Although Apple objects the recitation of the representative products stipulation is “inaccurate,”
`Apple provides no example of any actual inaccuracy. Apple also has no explanation for why the
`substance of the stipulation should be excluded.
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`Accused Products.
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`
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`’794 Patent: iPhone 8 executing iOS 11 (A1863/A1905) is representative of all ’794
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`Accused Products that are iPhones, except that the iPhone 11 executing iOS 13 (A2111) is
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`representative of the accused ’794 iPhones implementing the accused functionality of
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`Express Transit Mode. iPad 6th Generation executing iOS 11 (A1893/A1954) and the iPad
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`7th Generation executing iOS 13 (A2200/A2198/A2197) are equivalent for purposes of the
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`’794 patent, and are both representative of all ’794 Accused Products that are iPads and
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`iPod Touches. Apple Watch Series 5 LTE GPS executing watchOS 6 (A2094/A2095) is
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`representative of all ’794 Accused Products that are watches.
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`
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`’438 Patent: iPhone 11 executing iOS 13 (A2111) used in conjunction with any iOS device
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`(e.g., iPad Mini executing iOS 8 (A1432) or iPhone 8 (A1863/A1905) or iPod Touch 6th
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`generation (A1574)) is representative of all ’438 Accused Products accused of infringing
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`the ’438 Patent by implementing AirDrop. iPhone 11 executing iOS 13 (A2111) used in
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`conjunction with Apple Watch Series 5 executing watchOS 6 (A2094) is representative of
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`all ’438 Accused Products accused of infringing the ’438 Patent by pairing with an Apple
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`Watch. Apple Watch Series 5 executing watchOS 6 (A2094) used in conjunction with
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`iPhone 11 executing iOS 13 (A2111) is representative of all ’438 Accused Products
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`accused of infringing the ’438 Patent by pairing with an Apple iPhone.
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` All Patents: A representative version of an operations system (e.g., iOS 13, watchOS 6)
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`includes any of the subversions thereof (e.g., iOS 13.1, 13.2, watchOS 6.1, 6.2).
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`Apple’s Statement of Its Contentions
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`Apple provides the following statement of contentions without waiver of any affirmative
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`defense pled, any response given during discovery, or any opinion expressed by Apple’s experts.
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`By providing these contentions, Apple does not waive any of its motions in limine, motions for
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`summary judgment, Daubert motions, and/or motions to strike.
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`1. Apple contends that it has not infringed any asserted claim of the Patents-in-Suit, either
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`literally or under the doctrine of equivalents.4
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`2. Apple contends that prosecution history estoppel bars Maxell’s contention that the Apple
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`accused products infringe the ’794 patent under the doctrine of equivalents.
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`3. Apple contends that prosecution history estoppel bars Maxell’s contention that the Apple
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`accused products infringe the ’493 patent under the doctrine of equivalents.
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`4. Apple contends that the asserted claims of the Patents-in-Suit are invalid as obvious and
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`anticipated by the prior art under 35 U.S.C. §§ 102 and/or 103.
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`5. Apple contends that the asserted claims of the walking navigation patents—the ’317 patent,
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`the ’498 patent, and the ’999 patent—are invalid for failure to claim patent-eligible subject matter
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`under 35 U.S.C. § 101. The Court has already determined that the asserted claims of these three
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`patents are directed to the abstract idea of directing a user from one location to another. Dkt. No.
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`586. In addition, the elements in each of these asserted claims, taken individually and as a
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`combination, recite only well-understood, routine, or conventional activity or components, as both
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`the patents’ common specification and the state of the art make plain.
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`6. Japanese Patent Publication No. 2003-006110 to Yamazaki (“Yamazaki”) is prior art to the
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`’438 patent under at least 35 U.S.C. § 102(a).
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`7. U.S. Patent Application Publication No. 2003/0149874 to Balfanz (“Balfanz”) is prior art
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`4 Apple objects to the paragraph in Maxell’s Statement of its Contentions regarding
`representative products. Maxell’s characterization of the February 10, 2021, Joint Stipulation
`Regarding Representative Products for Trial (Dkt. No. 625) is inaccurate. The Joint Stipulation
`speaks for itself, and need not be reproduced in this Order. Apple also objects in that Maxell’s
`statement incorrectly suggests that Apple has a burden of proof on non-infringement.
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`to the ’438 patent under at least 35 U.S.C. § 102(a).
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`8. Apple asserts the Yamazaki reference in combination with the Balfanz reference against
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`the ’438 patent.
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`9. “Cyberguide: A Mobile Context-Aware Tour Guide” by Gregory D. Abowd, et al. dated
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`September 23, 1996 and re-published in Wireless Networks in October 1997 (“Abowd”) is prior
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`art to the ’317 patent, ’498 patent, and ’999 patent, under at least 35 U.S.C. § 102(a) and (b). Apple
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`asserts the Abowd reference against the ’317 patent, ’498 patent, and ’999 patent.
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`10. Cyberguide software and hardware system and materials and things describing the same
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`(“Cyberguide”) is prior art to the ’317 patent, ’498 patent, and ’999 patent, under at least 35 U.S.C.
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`§ 102(a) (b) and (g). Apple asserts the CyberGuide prior art against the ’317 patent, ’498 patent,
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`and ’999 patent.
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`11. NavTalk product and related materials and things describing the same (“NavTalk”) is prior
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`art to the ’317 patent, ’498 patent, and ’999 patent, under at least 35 U.S.C. § 102 (a) and (g).
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`Apple asserts the NavTalk prior art against the ’317 patent, ’498 patent, and ’999 patent.
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`12. Japanese Patent Publication No. JPH10-197277 to Maruyama et al. (“Maruyama”) is prior
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`art to the ’317 patent, ’498 patent, and ’999 patent, under at least 35 U.S.C. § 102(a). Apple asserts
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`the Maruyama reference against the ’317 patent, ’498 patent, and ’999 patent.
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`13. U.S. Patent No. 6,067,502 to Hayashida et al. (“Hayashida”) is prior art to the ’317 patent,
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`’498 patent, and ’999 patent, under at least 35 U.S.C. § 102(e). Apple asserts the Hayashida
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`reference against the ’317 patent, ’498 patent, and ’999 patent.
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`14. The Sony MVC-FD88 camera is prior art to the ’493 patent under at least 35 U.S.C. §
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`102(a). Apple asserts the Sony MVC-FD88 camera against the ’493 patent.
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`15. Japanese Unexamined Utility Model Publication No. U3064313 to Tagoshi is prior art to
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`the ’794 patent under at least 35 U.S.C. § 102(a). Apple asserts the Tagoshi reference against the
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`’794 patent.
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`16. Apple denies that Maxell has been damaged by Apple’s alleged infringement, and contends
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`Maxell is not entitled to any monetary damages under any theory, including a reasonably royalty
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`theory, nor is Maxell entitled to pre- and/or post-judgment interest.
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`17. Apple contends that its alleged infringement of the Patents-in-Suit has not been, and is not,
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`willful.
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`18. Apple contends that Maxell’s claims are barred under the doctrines of estoppel and waiver.
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`19. Apple contends Maxell is not entitled to enhanced damages under 35 U.S.C. § 284.
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`20. Apple contends Maxell’s claim for damages are barred in whole or in part under 35 U.S.C.
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`§ 287.
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`21. Apple contends Maxell is not entitled to any attorney’s fees or costs under 35 U.S.C. § 285.
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`22. Apple contends Maxell is not entitled to injunctive relief, or any relief whatsoever.
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`23. Apple is entitled to its costs, expenses, and attorneys’ fees under 35 U.S.C. § 285, and any
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`other relief the Court deems appropriate.
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`E.
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`STIPULATIONS AND UNCONTESTED FACTS
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`Uncontested Facts
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`1. Maxell filed its Original Complaint in this action on March 15, 2019.
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`2. Maxell is a Japanese corporation with a registered place of business at 1 Koizumi,
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`Oyamazaki, Oyamazaki-cho, Otokuni-gun, Kyoto, Japan.
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`3. Maxell is a wholly-owned subsidiary of Maxell Holdings, Ltd.
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`4. Apple Inc. is a corporation organized and existing under the laws of the State of California
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`and has its principal place of business at One Apple Park Way, Cupertino California 95014.
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`5. The ’317 Patent was issued by the United States Patent & Trademark Office (“PTO”) on
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`June 8, 2004 and is entitled Portable terminal with the function of walking navigation.
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`6. The subject matter recited in claims 1 and 17 of the ʼ317 Patent are entitled to an effective
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`filing date of July 12, 1999, and have a priority date of no later than this date.
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`7. The ’999 Patent was issued by the PTO on June 17, 2003 and is entitled Portable terminal
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`with the function of walking navigation.
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`8. The subject matter recited in claim 3 of the ʼ999 Patent is entitled to an effective filing date
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`of July 12, 1999, and has a priority date of no later than this date.
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`9. The ’498 Patent was issued by the PTO on August 6, 2002 and is entitled Portable terminal
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`with the function of walking navigation.
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`10. The subject matter recited in claim 3 of the ʼ498 Patent is entitled to an effective filing date
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`of July 12, 1999, and has a priority date of no later than this date.
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`11. The ’493 Patent was issued by the PTO on December 25, 2012 and is entitled Electric
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`Camera.
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`12. The subject matter recited in claims 5 and 6 of the ʼ493 Patent are entitled to an effective
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`filing date of January 11, 2000, and have a priority date of no later than this date.
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`13. The ’438 Patent was issued by the PTO on October 3, 2006 and is entitled Terminal for
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`information processing.
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`14. The subject matter recited in claims 1 and 4 of the ʼ438 Patent are entitled to an effective
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`filing date of May 22, 2003, and have a priority date of no later than this date.
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`15. The ’794 Patent was issued by the PTO on December 11, 2001 and is entitled Information
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`processing device and method for controlling power consumption thereof.
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`16. The subject matter recited in claims 1 and 14 of the ʼ794 Patent are entitled to an effective
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`filing date of May 22, 2000, and have a priority date of no later than this date.
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`Additional Trial Procedure Stipulations
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`1. The parties have agreed that each side will make the individuals who submitted expert
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`reports in this case available to testify at trial, either in person or through remote live testimony or
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`a trial deposition, and that neither side needs to designate the deposition testimony of the other
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`side’s experts; provided however that if despite this agreement any of these experts is unavailable
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`for trial, the party submitting a report for that expert agrees that the other party may submit a late
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`designation of that expert’s testimony.
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`2. Each party may use an exhibit that is listed on the other party’s exhibit list, to the same
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`effect as though it were listed on its own exhibit list, subject to evidentiary objections. Any exhibit,
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`once admitted, may be used equally by each party. The listing of an exhibit by a party on its exhibit
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`list does not waive any evidentiary or other objections to that exhibit should the opposing party
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`attempt to offer it into evidence.
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`3. The parties agree that any date listed on the exhibit list is not evidence of nor an admission
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`of the date of the document, and that failing to list a date is neither evidence of nor an admission
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`of whether the document is dated. The parties agree that any description of a document on an
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`exhibit list is provided for convenience only and shall not be used as an admission or otherwise as
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`evidence regarding that document.
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`4. Legible photocopies of the Patents-in-Suit and their USPTO file history may be offered as
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`evidence in lieu of certified copies thereof.
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`5. Legible photocopies of documents may be offered and received in evidence in lieu of
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`originals thereof, subject to all foundational requirements and other objections that might be made
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`to the admissibility of originals.
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`6. The parties agree that the demonstrative exhibits the parties intend to use at trial do not
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`need to be included on their respective lists of trial exhibits attached as Exhibits __ and __ to this
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`Order.
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`7. For purposes of Federal Rule of Evidence 901, the parties agree that all documents
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`produced by Maxell and appearing on their face to have originated from, or have been kept in the
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`ordinary course of business by Maxell, are authentic. The parties otherwise reserve all rights with
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`respect to the admissibility of any such documents.
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`8. For purposes of Federal Rule of Evidence 901, the parties agree that all documents
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`produced by Apple and appearing on their face to have originated from, or have been kept in the
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`ordinary course of business by, Apple are authentic. The parties otherwise reserve all rights with
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`respect to the admissibility of any such documents.
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`9. For purposes of Fede