`
`NOIN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`CASE NO. 5:19-CV-00036-RWS
`
`DEFENDANT APPLE INC.’S NOTICE OF PATENT OFFICE INSTITUTION ON
`ALL ASSERTED CLAIMS OF ALL ASSERTED PATENTS
`
`On March 4, 2021, Defendant Apple Inc. filed its reply brief in support its pending
`
`motion to stay, requesting that this action be stayed because, at the time, four of the six currently
`
`asserted patents were subject to post-grant review, and decisions for the remaining two patents
`
`were expected soon. See D.I. 644. Since the filing of its reply brief, Apple has received notice
`
`that the Patent Office granted ex parte reexamination of the asserted claims of U.S. Patent No.
`
`7,116,438 and U.S. Patent No. 6,430,498. Therefore, as the chart below shows, all asserted
`
`claims of all currently asserted patents are now involved in post-grant review proceedings:
`
`Asserted Patent
`U.S. Patent No. 6,430,498
`U.S. Patent No. 7,116,438
`U.S. Patent No. 6,748,317
`
`U.S. Patent No. 6,580,999
`U.S. Patent No. 8,339,493
`U.S. Patent No. 6,329,794
`
`EPR or IPR Case Number
`EPR No. 90/014,673
`EPR No. 90/014,678
`EPR No. 90/014,639
`EPR No. 90/014,662
`EPR No. 90/014,661
`EPR No. 90/014,640
`EPR No. 90/014,628
`IPR2020-00199
`
`Institution Date
`3/8/2021
`3/4/2021
`2/12/2021
`2/12/2021
`2/26/2021
`1/12/2021
`1/28/2021
`6/19/2020
`
`
`
`Case 5:19-cv-00036-RWS Document 649 Filed 03/08/21 Page 2 of 4 PageID #: 33117
`
`A copy of the institution decision for the ’438 patent is attached to this notice as Exhibit 1. A
`
`copy of the ’498 patent reexamination status is attached as Exhibit 2, and Apple will provide a
`
`full copy of the ’498 reexamination decision as soon as it is publicly available. The institution
`
`decisions for the remaining asserted patents were attached to Apple’s reply brief (D.I. 644) as
`
`Exhibits 1-6.
`
`Furthermore, the Patent Office also has instituted post-grant review proceedings on the
`
`previously asserted claims of the four non-elected Maxell patents, as follows:
`
`Non-Elected Patent
`U.S. Patent No. 6,408,193
`(non-elected)
`U.S. Patent No. 10,084,991
`(non-elected)
`U.S. Patent No. 6,928,306
`(non-elected)
`U.S. Patent No. 10,212,586
`(non-elected)
`
`EPR or IPR Case Number
`EPR No. 90/014,632
`
`Institution Date
`2/1/2021
`
`IPR2020-00200
`
`IPR2020-00204
`
`IPR2020-00202
`
`7/15/2020
`
`6/19/2020
`
`7/15/2020
`
`Dated: March 8, 2021
`
`Respectfully Submitted
`
`By: /s/ Mark D. Fowler
`Harry L. Gillam, Jr.
`Texas Bar No. 07921800
`Melissa Richards Smith
`Texas Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, TX 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`Email: melissa@gillamsmithlaw.com
`
`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
`
`
`
`Case 5:19-cv-00036-RWS Document 649 Filed 03/08/21 Page 3 of 4 PageID #: 33118
`
`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 Hack 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
`
`Dawn M. Jenkins
`DLA PIPER LLP (US)
`1000 Louisiana, Suite 2800
`Houston, TX 77002-5005
`Tel: 713.425.8490
`Fax: 713.300.6012
`
`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
`
`COUNSEL FOR DEFENDANT APPLE INC.
`
`
`
`Case 5:19-cv-00036-RWS Document 649 Filed 03/08/21 Page 4 of 4 PageID #: 33119
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on this 8th day of March 2021, all counsel of record who
`
`are deemed to have consented to electronic service are being served with a copy of this document
`
`through the Court’s CM/ECF system under Local Rule CV-5(a)(3). Any other counsel of record
`
`will be served by a facsimile transmission and/or first-class mail.
`
`/s/ Mark D. Fowler
`Mark D. Fowler
`
`WEST\293411593.1
`
`
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