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Case 3:17-cv-01375-DMS-MDD Document 672 Filed 03/11/19 PageID.

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1 Nina S. Tallon, DC Bar No. 479481, appearing pro hac vice


WILMER CUTLER PICKERING HALE AND DORR LLP
2 1875 Pennsylvania Avenue NW
3 Washington, DC 20006
Phone: 202-663-6000 / Fax: 202-663-6363
4 Joseph J. Mueller, MA Bar No. 647567, appearing pro hac vice,
5 WILMER CUTLER PICKERING HALE AND DORR LLP
60 State Street
6 Boston, MA 02109
Phone: 617-526-6000 / Fax: 617-526-5000
7
Juanita R. Brooks, SBN 75934, brooks@fr.com
8 Seth M. Sproul, SBN 217711, sproul@fr.com
9 FISH & RICHARDSON P.C.
12390 El Camino Real
10 San Diego, CA 92130
11 Phone: (858) 678-5070/ Fax: (858) 678-5099
Ruffin B. Cordell, DC Bar No. 445801, pro hac vice, cordell@fr.com
12
Lauren A. Degnan, DC Bar No. 452421, pro hac vice, degnan@fr.com
13 FISH & RICHARDSON P.C.
1000 Maine Avenue, Suite 1000
14
Washington, D.C. 20024
15 Phone: 202-783-5070 / Fax: 202-783-2331
16
[Additional counsel identified on signature page]
17
18 Attorneys for Defendant/Counterclaim Plaintiff Apple Inc.

19 UNITED STATES DISTRICT COURT


20 SOUTHERN DISTRICT OF CALIFORNIA
21 QUALCOMM INCORPORATED, Case No. 3:17-cv-1375-DMS-MDD
22 Plaintiff, APPLE INC.’S NOTICE OF MOTION
23 FOR JUDGMENT AS A MATTER OF
v. LAW PURSUANT TO RULE 50(a)
24
25 APPLE INC.,
26 Defendant.

27 AND RELATED COUNTERCLAIMS.


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Case No. 3:17-CV-01375-DMS-MDD
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1 TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:


2 Please take notice that Defendant Apple Inc. (“Apple”) hereby files its Motion
3 for Judgment as a Matter of Law Pursuant to Federal Rule of Civil Procedure 50(a).
4 Pursuant to Rule 50(a), Apple moves for judgment as a matter of law that
5 Apple has not infringed any claim of any asserted patent; that Qualcomm cannot meet
6 its burden to show willful infringement; and that Qualcomm is not entitled to its
7 claimed damages. Judgment as a matter of law is appropriate because “a reasonable
8 jury would not have a legally sufficient basis” to find for Qualcomm on any of these
9 issues. Fed. R. Civ. P. 50(a).
10 Apple’s motion is supported by the accompanying Memorandum of Points and
11 Authorities and such other written and oral argument and authorities that may be
12 presented at or before any hearing of this motion.
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1 Dated: March 11, 2019 Respectfully submitted,


2 By: /s/ Nina S. Tallon _
3 Nina S. Tallon, DC Bar No. 479481
pro hac vice, nina.tallon@wilmerhale.com
4 WILMER CUTLER PICKERING HALE AND DORR LLP
5 1875 Pennsylvania Avenue NW
Washington, DC 20006
6 Phone: 202-663-6000 / Fax: 202-663-6363
7 Mark D. Selwyn, SBN 244180,
mark.selwyn@wilmerhale.com
8 WILMER CUTLER PICKERING HALE AND DORR LLP
9 950 Page Mill Road
Palo Alto, CA 94304
10 Phone: 650-858-6000 / Fax: 650-858-6100
11 William F. Lee, MA Bar No. 291960
12 pro hac vice, william.lee@wilmerhale.com
Joseph J. Mueller, MA Bar No. 647567
13 pro hac vice, joseph.mueller@wilmerhale.com
Timothy Syrett, MA Bar No. 663676
14 pro hac vice, timothy.syrett@wilmerhale.com
Richard W. O’Neill, pro hac vice,
15 richard.o’neill@wilmerhale.com
16 Bradley M. Baglien, pro hac vice,
bradley.baglien@wilmerhale.com
17 WILMER CUTLER PICKERING HALE AND DORR LLP
60 State Street
18 Boston, MA 02109
19 Phone: 617-526-6000 / Fax: 617-526-5000

20 Juanita R. Brooks, SBN 75934, brooks@fr.com


Seth M. Sproul, SBN 217711, sproul@fr.com
21 Frank Albert, SBN 247741, albert@fr.com
Joanna M. Fuller, SBN 266406, jfuller@fr.com
22 Katherine D. Prescott, SBN 215496
23 prescott@fr.com
Betty H. Chen, SBN 24056720
24 betty.chen@fr.com
FISH & RICHARDSON P.C.
25 500 Arguello Street, Suite 500
26 Redwood City, CA 94063
Phone: 650-839-5070 / Fax: 650-839-5071
27
Ruffin B. Cordell, DC Bar No. 445801
28 pro hac vice, cordell@fr.com
Lauren A. Degnan, DC Bar No. 452421
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1 pro hac vice, degnan@fr.com


FISH & RICHARDSON P.C.
2 1000 Maine Avenue, S.W. Suite 1000
3 Washington, D.C. 20024
Phone: 202-783-5070 / Fax: 202-783-2331
4
William A. Isaacson, DC Bar No. 414788
5 pro hac vice, wisaacson@bsfllp.com
Karen L. Dunn, DC Bar No. 1002520
6 pro hac vice, kdunn@bsfllp.com
7 BOIES, SCHILLER & FLEXNER LLP
1401 New York Avenue, N.W.
8 Washington, DC 20005
Phone: 202-237-2727 / Fax: 202-237-6131
9
10 Benjamin C. Elacqua, TX SBN 24055443
pro hac vice, elacqua@fr.com
11 John P. Brinkmann, TX SBN 24068091
pro hac vice, brinkmann@fr.com
12 FISH & RICHARDSON P.C.
One Houston Center, 28th Floor
13 1221 McKinney
14 Houston, TX 77010
Phone: 713-654-5300 / Fax: 713-652-0109
15
Brian P. Boyd, GA SBN 553190
16 pro hac vice, bboyd@fr.com
17 FISH & RICHARDSON P.C.
1180 Peachtree St., NE, 21ST Floor
18 Atlanta, GA 30309
Phone: 404-892-5005 / Fax: 404-892-5002
19
Attorneys for Apple Inc.
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1 CERTIFICATE OF SERVICE
2 The undersigned hereby certifies that a true and correct copy of the above and
3 foregoing document has been served on March 11, 2019 to all counsel of record
4 who are deemed to have consented to electronic service via the Court’s CM/ECF
5 system per Civil Local Rule 5.4. Any other counsel of record will be served by
6 electronic mail, facsimile and/or overnight delivery.
7 Executed on March 11, 2019 at San Diego, CA.
8
9 /s/ Nina S. Tallon
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4 Case No. 3:17-CV-01375-DMS-MDD


Case 3:17-cv-01375-DMS-MDD Document 672-1 Filed 03/11/19 PageID.38084 Page 1 of 29

1 Nina S. Tallon, DC Bar No. 479481, appearing pro hac vice


WILMER CUTLER PICKERING HALE AND DORR LLP
2 1875 Pennsylvania Avenue NW
3 Washington, DC 20006
Phone: 202-663-6000 / Fax: 202-663-6363
4 Joseph J. Mueller, MA Bar No. 647567, appearing pro hac vice,
5 WILMER CUTLER PICKERING HALE AND DORR LLP
60 State Street
6 Boston, MA 02109
Phone: 617-526-6000 / Fax: 617-526-5000
7
Juanita R. Brooks, SBN 75934, brooks@fr.com
8 Seth M. Sproul, SBN 217711, sproul@fr.com
9 FISH & RICHARDSON P.C.
12390 El Camino Real
10 San Diego, CA 92130
11 Phone: (858) 678-5070/ Fax: (858) 678-5099
Ruffin B. Cordell, DC Bar No. 445801, pro hac vice, cordell@fr.com
12
FISH & RICHARDSON P.C.
13 1000 Maine Avenue, Suite 1000
Washington, D.C. 20024
14
Phone: 202-783-5070 / Fax: 202-783-2331
15
16 [Additional counsel identified on signature page]

17 Attorneys for Defendant/Counterclaim Plaintiff Apple Inc.


18 UNITED STATES DISTRICT COURT
19
SOUTHERN DISTRICT OF CALIFORNIA
20
QUALCOMM INCORPORATED, Case No. 3:17-cv-1375-DMS-MDD
21
Plaintiff, MEMORANDUM IN SUPPORT OF
22 APPLE INC.’S MOTION FOR
v. JUDGMENT AS A MATTER OF LAW
23
PURSUANT TO RULE 50(a)
24 APPLE INC.,
TRIAL DATE: MARCH 4, 2019
25 Defendant. JUDGE: HON. DANA SABRAW
26 AND RELATED COUNTERCLAIMS.
27
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Case No. 3:17-CV-01375-DMS-MDD
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1 TABLE OF CONTENTS
2 Page
3
I. INTRODUCTION ..........................................................................................1
4
II. APPLE IS ENTITLED TO JUDGMENT AS MATTER OF LAW OF
5 NON-INFRINGEMENT .................................................................................1
6
A. Legal Standards ....................................................................................1
7
B. Apple Is Entitled to Judgment of Non-Infringement of the ’949
8 Patent ....................................................................................................2
9
C. Apple Is Entitled to Judgment of Non-Infringement of the ’490
10 Patent ....................................................................................................7
11 D. Apple Is Entitled to Judgment of Non-Infringement of the ’936
12 Patent ..................................................................................................11
13 III. APPLE IS ENTITLED TO JUDGMENT AS A MATTER OF LAW
14 OF NO WILLFULNESS ..............................................................................16

15 IV. APPLE IS ENTITLED TO JUDGMENT AS A MATTER OF LAW


ON QUALCOMM’S DAMAGES CLAIMS.................................................18
16
17 V. CONCLUSION ............................................................................................21

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1 TABLE OF AUTHORITIES
2 Page(s)
3
Federal Cases
4
Am. Calcar, Inc. v. Am. Honda Motor Co., Inc.,
5 No. 06-cv-2433, 2009 WL 10672071 (S.D. Cal. Mar. 2, 2009) .......................... 16
6
Apple Inc. v. Samsung Elecs. Co.,
7 695 F.3d 1370 (Fed. Cir. 2012) ............................................................................4
8 Asetek Danmark A/S v. CMI USA Inc.,
9 852 F.3d 1352 (Fed. Cir. 2017) ............................................................................3
10 Asyst Techs., Inc. v. Emtrak, Inc.,
11 402 F.3d 1188 (Fed. Cir. 2005) ............................................................................2

12 Behne v. 3M Microtouch Sys., Inc.,


11 F. App’x 856 (9th Cir. 2001) ...........................................................................1
13
14 Carl Zeiss Vision Intern. GMBH v. Signet Armorlite, Inc.,
No. 07-cv-0894, 2010 WL 3636180 (S.D. Cal. Sept. 13, 2010) ...........................1
15
Conoco, Inc. v. Energy & Envtl. Int’l, L.C.,
16 460 F.3d 1349 (Fed. Cir. 2006) ............................................................................2
17
CSP Techs., Inc. v. Sud-Chemie AG,
18 643 Fed. Appx. 953 (Fed. Cir. 2016)....................................................................2
19 Enfish, LLC v. Microsoft Corp.,
20 822 F.3d 1327 (Fed. Cir. 2016) .......................................................................... 13
21 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
22 535 U.S. 722 (2002) .............................................................................................2

23 Frac Shack Inc. v. Fuel Automation Station LLC¸


No. 16-cv-02275, 2018 WL 5792613 (D. Colo. Nov. 5, 2018)........................... 13
24
25 Halo Electronics, Inc. v. Pulse Electronics, Inc.,
136 S. Ct. 1923 (2016) ....................................................................................... 15
26
Honeywell Int’l Inc. v. Hamilton Sundstrand Corp.,
27 370 F.3d 1131 (Fed. Cir. 2004). ...........................................................................2
28
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1 Lear Siegler, Inc. v. Sealy Mattress Co. of Mich., Inc.,


873 F.2d 1422 (Fed. Cir. 1989) ...................................................................... 5, 14
2
3 Lucent Techs. Inc. v. Gateway, Inc.,
No. 02-cv-2060, 2007 WL 925354 (S. D. Cal. Mar. 6, 2007)............................. 14
4
Meyer Intellectual Props. Ltd. v. Bodum, Inc.,
5
690 F.3d 1354 (Fed. Cir. 2012) ............................................................................1
6
Plano Encryption Techs., LLC v. Alkami, Inc.,
7 No. 2:16-cv-1032, 2017 WL 3654122 (E.D. Tex. Aug. 23, 2017) ...................... 13
8
Read Corp. v. Portec, Inc.,
9 970 F.2d 816 (Fed. Cir. 1992) ............................................................................ 16
10 Riles v. Shell Expl. & Prod. Co.,
11 298 F.3d 1302 (Fed. Cir. 2002) ............................................................................1
12 Sleep Number Corp. v. Sizewise Rentals, LLC,
13 No. ED CV 18-00356, 2018 WL 5263065 (C.D. Cal. June 26, 2018) ................ 16

14 State Contracting & Eng’g Corp. v. Condotte Am., Inc.,


346 F.3d 1057 (Fed. Cir. 2003) .......................................................................... 16
15
16 Stickle v. Heublein, Inc.,
716 F.2d 1550 (Fed. Cir. 1983) .......................................................................... 15
17
Torres v. City of Los Angeles,
18 548 F.3d 1197, 1205 (9th Cir. 2008) ....................................................................1
19
In re Varma,
20 816 F.3d 1352 (Fed. Cir. 2016) .......................................................................... 13
21 VirnetX, Inc. v. Cisco Sys., Inc.,
22 767 F.3d 1308 (Fed. Cir. 2014) ............................................................................1
23 Vulcan Eng’g Co. v. Fata Aluminum, Inc.,
24 278 F.3d 1366 (Fed. Cir. 2002) .......................................................................... 15

25 WesternGeco L.L.C. v. ION Geophysical Corp.,


837 F.3d 1358 (Fed. Cir. 2016) .......................................................................... 15
26
27 Wordtech Sys., Inc. v. Integrated Networks Sols., Inc.,
609 F.3d 1308 (Fed. Cir. 2010) .......................................................................... 17
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1 Rules
2 Federal Rule of Civil Procedure 50(a) ................................................................. 1, 17
3
Local Rule 5.4......................................................................................................... 23
4
5
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1 I. INTRODUCTION
2 Pursuant to Federal Rule of Civil Procedure 50(a), Defendant Apple Inc.
3 (“Apple”) respectfully moves for judgment as a matter of law (“JMOL”) that (1)
4 Apple has not infringed any claim of any asserted patent; (2) Plaintiff Qualcomm
5 Incorporated (“Qualcomm”) cannot meet its burden to show willfulness; and (3)
6 Qualcomm is not entitled to its claimed damages.
7 Judgment as a matter of law is appropriate when “a party has been fully heard
8 on an issue during a jury trial and the court finds that a reasonable jury would not
9 have a legally sufficient evidentiary basis to find for the party on that issue.” Fed. R.
10 Civ. P. 50(a)(1). In evaluating whether JMOL is proper, courts in this Circuit look to
11 whether the trial evidence, when viewed in the light most favorable to the non-moving
12 party, “permits only one reasonable conclusion.” Carl Zeiss Vision Intern. GMBH v.
13 Signet Armorlite, Inc., No. 07-cv-0894, 2010 WL 3636180, at *1 (S.D. Cal. Sept. 13,
14 2010) (quoting Torres v. City of Los Angeles, 548 F.3d 1197, 1205 (9th Cir. 2008));
15 see also Behne v. 3M Microtouch Sys., Inc., 11 F. App’x 856, 858-59 (9th Cir. 2001)
16 (“Judgment as a matter of law is proper if the evidence, construed in the light most
17 favorable to the non-moving party, allows only one reasonable conclusion[.]”).
18 II. APPLE IS ENTITLED TO JUDGMENT AS MATTER OF LAW OF
NON-INFRINGEMENT
19 A. Legal Standards
20 To establish infringement, Qualcomm must prove by a preponderance of the
21 evidence that the accused products satisfy every limitation in the asserted claims. If
22 even one limitation is missing or not met as claimed, there is no literal infringement.
23 See Riles v. Shell Expl. & Prod. Co., 298 F.3d 1302, 1308 (Fed. Cir. 2002); see also
24 Meyer Intellectual Props. Ltd. v. Bodum, Inc., 690 F.3d 1354, 1370 (Fed. Cir. 2012).
25 “To find infringement under the doctrine of equivalents, any differences
26 between the claimed invention and the accused product must be insubstantial.”
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1 VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1322 (Fed. Cir. 2014). Prosecution
2 history estoppel “limits the broad application of the doctrine of equivalents by barring
3 an equivalents argument for subject matter relinquished when a patent claim is
4 narrowed during prosecution.” Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d
5 1349, 1363 (Fed. Cir. 2006) (citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
6 Co., 535 U.S. 722, 733-34 (2002)). Prosecution history estoppel applies when the
7 applicant “mak[es] a narrowing amendment to the claim” for a reason “[]related to
8 patentability.” Conoco, 460 F.3d at 1363; see also Festo, 535 U.S. at 735; Honeywell
9 Int’l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1141-43 (Fed. Cir. 2004).
10 Application of the doctrine of equivalents is also limited by the “all elements rule,”
11 which provides that the doctrine does not apply if doing so would vitiate an entire
12 claim limitation—i.e., asserting an infringement theory that would effectively
13 eliminate the claim limitation or render it meaningless. See Asyst Techs., Inc. v.
14 Emtrak, Inc., 402 F.3d 1188, 1195 (Fed. Cir. 2005). The doctrine of equivalents is
15 also limited by the disclosure-dedication doctrine, which “bars a patentee from using
16 the doctrine of equivalents to recapture claim scope that it disclosed in the
17 specification but did not literally include in the patent’s claims.” CSP Techs., Inc. v.
18 Sud-Chemie AG, 643 Fed. Appx. 953, 958 (Fed. Cir. 2016).
19 B. Apple Is Entitled to Judgment of Non-Infringement of the ’949
Patent
20
Qualcomm accuses Apple’s iPhone 7, 7 Plus, 8, 8 Plus, and X containing an
21
Intel baseband chipset of infringing claims 1, 2, and 8 of U.S. Patent No. 8,838,949
22
(the “’949 patent”). Qualcomm failed to introduce evidence at trial that would allow
23
a reasonable jury to conclude that Apple infringes any asserted ’949 patent claim,
24
either literally or under the doctrine of equivalents.
25
First, as Qualcomm itself has confirmed, it offered no evidence at trial on
26
asserted claim 8. Apple is thus entitled to a judgment that it does not infringe that
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1 claim. (Trial Tr. at 1040:2-9 (Qualcomm’s counsel confirming no evidence presented


2 regarding claim 8); id. [Rinard] at 358:4-9 (confirming Dr. Rinard “only spoke about
3 [claims] 1 and 2”); id. at 388:13-18 (Dr. Rinard admitting he “presented [his]
4 infringement opinions with respect to two claims in the ’949 patent, claim 1 and claim
5 2” and no other claims).)
6 Second, Qualcomm also admits that it offered no evidence directed to an
7 indirect infringement theory for any asserted ’949 patent claim; as such, judgment is
8 warranted in Apple’s favor on those infringement theories as well. (Id. at 1039:20-
9 1040:1 (Qualcomm’s counsel confirming no evidence presented on indirect
10 infringement); id. [Rinard] at 388:22-389:4 (Dr. Rinard admitting he did not offer
11 contributory infringement or inducement opinions for any claim).)
12 Third, no reasonable jury could conclude that the accused products meet the
13 requirement for the modem processor to be configured “to scatter load each received
14 data segment based at least in part on the loaded image header.” Dr. Rinard admitted
15 that Segment 0 is a received segment that contains data—i.e., that it meets the plain
16 meaning of a “data segment.” (Id. at 399:19-20 (“Q. There is no dispute [Segment 0]
17 is received. A. That’s right as well.”); id. at 401:18-20 (“Q. To be very, very clear,
18 [Segment 0] is a segment that contains data, correct? A. Correct.”).) He also did not
19 offer any opinion that Segment 0 is scatter loaded at all—including based at least in
20 part on the loaded image header. (Id. at 397:23-398:5 (confirming no opinion offered
21 that Segment 0 is scatter loaded).) And, he conceded that Segment 0 is not loaded
22 into memory based on what he described as the “image header,” i.e., the combination
23 of the ELF program header table and the ELF header. (Id. at 361:12-18 (“Q. In fact,
24 neither the ELF program header table nor the ELF header specifies where Segment 0
25 will be placed in system memory, correct? A. That’s right.”); id. at 361:19-362:2 (“Q.
26 Claim 1 requires an image header, correct? A. It has to have an image header, yes.
27 Q. And the image header has to specify where the data segments are to be placed in
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1 system memory, right? A. I believe you’re reading the claim correctly. . . . Q. It


2 doesn’t do that for Segment 0; we can agree on that? A. Yes.”).) Therefore, because
3 the evidence confirms that Segment 0 is a received data segment that is not “scatter
4 loaded based at least in part on the loaded image header,” no reasonable jury could
5 find infringement of claims 1 or 2.
6 Dr. Rinard argued that Segment 0 is not a “data segment.” But the parties are
7 required to apply plain meaning to that term, and Dr. Rinard did not identify how that
8 plain meaning—i.e., a segment that contains data—is not met. (Dkt. 637-4
9 [Qualcomm’s Proposed Suppl. Jury Instructions] at 4; Dkt. 637-2 [Apple’s Proposed
10 Suppl. Jury Instructions] at 3.) See Asetek Danmark A/S v. CMI USA Inc., 852 F.3d
11 1352, 1359-60 (Fed. Cir. 2017) (affirming instruction to apply ordinary meaning to
12 unconstrued claim terms). Therefore, no reasonable jury could accept that argument.
13 Dr. Rinard also argued that Apple infringes because claim 1 is a “comprising”
14 claim. (Trial Tr. [Rinard] at 307:11-23.) But that argument is legally wrong. The
15 fact that claim 1 uses the word “comprising” cannot be used to vitiate the requirement
16 to scatter load “each received data segment” (instead, it simply means that claim 1
17 can still be met if things other than data segments are received but not scatter loaded).
18 See Apple Inc. v. Samsung Elecs. Co., 695 F.3d 1370, 1379 (Fed. Cir. 2012) (rejecting
19 argument that use of “comprising” in a claim that required “a plurality of heuristic
20 models” where “each heuristic module” used a predetermined algorithm could be met
21 despite “the addition of other modules that do not use different heuristic algorithms
22 because such addition would impermissibly wipe out the express limitation that
23 require[d] every module to have a unique heuristic algorithm”).1
24 Dr. Rinard also offered a new opinion for the first time on cross examination
25 that Apple infringes because claims 1 and 2 supposedly only require scatter loading
26
27 1
All emphases have been added unless otherwise indicated.
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1 just two received data segments—regardless of how many other data segments are
2 received. (Trial Tr. [Rinard] at 398:16-399:17, 410:23-411:19, 411:25-412:5, 412:19-
3 413:7, 415:3-23.) Apple has moved to strike this new opinion because (1) it was
4 undisclosed, and (2) it would be error to allow the jury to consider that argument,
5 which is premised on a legally incorrect reading of the claim. (See Dkt. 663 [Mot. to
6 Strike].) No reasonable jury could find infringement for this reason as well.
7 Fourth, Qualcomm and Dr. Rinard both admit that Qualcomm did not offer
8 any evidence concerning the doctrine of equivalents for the ’949 patent. (Trial Tr. at
9 1040:11-22 (Qualcomm’s counsel confirming no evidence presented on doctrine of
10 equivalents for ’949 patent); id. [Rinard] at 389:11-13 (“Q. You weren’t asked a single
11 question by your lawyer about the doctrine of equivalents, correct? A. That’s
12 correct.”).) Apple is therefore entitled to JMOL on Qualcomm’s doctrine of
13 equivalents theories for the ’949 patent. See Lear Siegler, Inc. v. Sealy Mattress Co.
14 of Mich., Inc., 873 F.2d 1422, 1425 (Fed. Cir. 1989) (“The evidence and argument on
15 the doctrine of equivalents cannot merely be subsumed in plaintiff’s case of literal
16 infringement.”).
17 In any event, the evidence confirms that Qualcomm’s pre-trial equivalents
18 argument under the “each received data segment” limitation is barred by prosecution
19 history estoppel. Qualcomm overcame prior art rejections by adding the limitation
20 requiring scatter loading “each received data segment,” while arguing this new
21 limitation was “patentably distinguishable.” Further, Qualcomm’s argument would
22 vitiate the limitation and substantially alter the scope of the claim. Allowing the
23 claims to cover a scenario in which some data segments are not scatter loaded using
24 the claimed approach would defeat the purported efficiency gained from that
25 approach. Moreover, the evidence at trial confirmed that the function-way-result test
26 for equivalents is not met because at least the way is substantially different (loading
27 data segments in ways other than based on the image header) and the result is
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1 substantially different (potential delayed loading of the executable software image


2 contrary to the patent’s claim to improve the efficiency of such loading processes).
3 Finally, no reasonable jury could find that the accused products meet the
4 “image header” requirement of the asserted claims. The parties’ agreed construction
5 of image header is “a header associated with the entire image that specifies where the
6 data segments are to be placed.” (Trial Tr. [Rinard] at 359:9-14.) On cross
7 examination, Dr. Rinard admitted that the parties’ agreed construction of “image
8 header” requires that “the image header has to specify the final designation for each
9 segment.” (Id. at 359:19-21 (“Q. And the image header has to specify the final
10 designation for each segment, correct? A. I believe that’s the correct interpretation of
11 image header, correct.”).)
12 Yet, Dr. Rinard admitted that what he alleges is the image header in the accused
13 products—the combination of the ELF Header and ELF Program Header Table—does
14 not specify where in system memory Segment 0 will be placed. (Id. at 361:12-18 (“Q.
15 In fact, neither the ELF program header table nor the ELF header specifies where
16 Segment 0 will be placed in system memory, correct? A. That’s right.”); id. at 361:19-
17 362:2 (“Q. Claim 1 requires an image header, correct? A. It has to have an image
18 header, yes. Q. And the image header has to specify where the data segments are to
19 be placed in system memory, right? A. I believe you’re reading the claim correctly.
20 … Q. It doesn’t do that for Segment 0; we can agree on that? A. Yes.”).) As discussed
21 above, Segment 0 is a “data segment”; therefore, no reasonable jury could find that
22 Apple’s accused products meet the “image header” requirement—because there is no
23 dispute that what Dr. Rinard identifies as the claimed “image header” fails to specify
24 where in system memory Segment 0 will be placed.
25
26
27
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1 C. Apple Is Entitled to Judgment of Non-Infringement of the ’490


Patent
2
Qualcomm accuses the iPhone 7, 7 Plus, 8, 8 Plus, and X containing an Intel
3
baseband chipset of infringing claim 31 of U.S. Patent No. 9,535,490 (“the ’490
4
patent”). Qualcomm failed to introduce evidence at trial that would allow a
5
reasonable jury to conclude that the accused Apple iPhones infringe the sole asserted
6
’490 patent claim, either literally or under the doctrine of equivalents.
7
First, Qualcomm introduced no evidence at all regarding any purported indirect
8
infringement of the ’490 patent. Indeed, Dr. Baker expressly confirmed during cross-
9
examination that he did not present any opinions on induced or contributory
10
infringement. (Trial Tr. [Baker] at 548:12-19.) JMOL is therefore appropriate on
11
these issues.
12
Second, the evidence at trial confirmed that the accused iPhones do not have
13
“an application processor configured to hold [uplink] data” as required by claim 31.
14
Rather, in the accused products, uplink data is held in memory external to the
15
application processor. Dr. Baker testified that in the accused iPhones, uplink data is
16
not stored in Apple’s A10 and A11 processor logic chip. (Id. at 554:13-16.) Instead,
17
Dr. Baker confirmed that uplink data is stored in DRAM (or dynamic random access
18
memory), which is a separate chip that is attached to the A10 and A11’s processor
19
logic chip. (Id. at 554:13-16 (“In the accused iPhones, the data is stored in
20
DRAM[.]”); id. at 554:17-555:4 (“The processor logic chip and the DRAM chips are
21
different chips.”).) As Dr. Baker further testified, Apple’s own documents confirm
22
that the DRAM memory is external to the processor logic chip. (Id. at 559:17-560:14
23
(conceding that DX-451 [Top Level Micro-Architecture Specification] describes the
24
DRAM memory as external to the processor logic chip).)
25
Third, the evidence confirmed that the accused iPhones do not have a “modem
26
processor configured to hold [downlink] data.” Rather, in the accused iPhones,
27
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1 downlink data is held in memory external to the modem processor. During cross-
2 examination, Dr. Baker conceded that in the accused iPhones, “[d]ownlink data is
3 stored in the modem processor in external DRAM chips to the logic chip in the
4 modem processor[.]” (Trial Tr. [Baker] at 570:3-6; see also id. at 570:7-10
5 (conceding that in the accused iPhones, the DRAM chip is a different and separate
6 chip from the modem processor logic chip).) Based on this record, no reasonable jury
7 could find that the accused iPhones have “an application processor configured to hold
8 [uplink] data” or a “modem processor configured to hold [downlink] data.”
9 Moreover, Qualcomm’s arguments that the accused products satisfy, under the
10 doctrine of equivalents, the “[application/modem] processor configured to hold”
11 limitations of claim 31 of the ’490 patent are barred by the “all elements rule.”
12 Applying claim 31 to allow uplink and downlink data to be held anywhere on either
13 side of the PCIe communication bus in the accused iPhones would render the
14 “[application/modem] processor configured to hold” language of claim 31
15 meaningless and would replace that language with just “hold.” Dr. Baker agreed that
16 claim 31 requires “an application processor configured to hold” data. (Id. at 565:17-
17 19.) By contrast, for example, claim 16 does not specify “about the memory or where
18 it’s located.” (Id. at 566:9-21.)
19 Qualcomm’s doctrine of equivalents arguments for these limitations are also
20 barred by the disclosure-dedication doctrine because the specification of the ’490
21 patent discloses two embodiments for storing data—i.e., storing data in external
22 memory “coupled to the processor” or in a “storage medium . . . integral to the
23 processor”—but Qualcomm drafted claim 31 to cover only the latter embodiment.
24 Dr. Baker confirmed that the ’490 patent describes two different ways to store data:
25 “the storage could be coupled to the processor” “or it may be integral to the
26 processor.” (Id. at 565:4-10; see also JX-7 [’490 Patent] at 17:15-19 (disclosing
27 storage medium “coupled to the processor” and storage medium “integral to the
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1 processor”).) Claim 31 claims storage integral to the processor, but cannot cover
2 storage coupled to the processor under the disclosure-dedication doctrine.
3 Even if Qualcomm were not barred by the “all elements rule” or by the
4 disclosure-dedication doctrine, the evidence at trial confirmed that the accused
5 iPhones do not satisfy the “[application/modem] processor configured to hold”
6 limitation of claim 31 of the ’490 patent under the doctrine of equivalents because the
7 accused iPhones are substantially different from the claimed invention. Storing data
8 in external DRAM (as in the accused iPhones) is substantially different from storing
9 data in internal memory (as required by the claimed invention) because, for example,
10 storing data in internal memory allows for faster data access and transmission, and
11 consumes less power. As Dr. Baker confirmed, there are differences between SRAM
12 memory internal to the processor and external DRAM memory, including that SRAM
13 allows for faster access to data and consumes less power compared to DRAM. (Trial
14 Tr. [Baker] at 568:6-23.) Dr. Baker also testified that DRAM is generally less
15 expensive than SRAM per unit of storage. (Id. at 568:24-569:1.) No reasonable jury
16 could find that Qualcomm has met its burden to show infringement under the doctrine
17 of equivalents.
18 Fourth, the evidence at trial showed that the accused iPhones do not transmit
19 uplink data “after transmission” of the held downlink data. Instead, as Dr. Baker
20 admitted on cross-examination, uplink and downlink data transfers overlap in the
21 accused products. (Id. at 572:5-8 (“Q. Because in the iPhones, as you’ve talked about,
22 the period when the downlink data is transmitted overlaps with the period when uplink
23 data is transmitted, correct? A. Yes.”).) Transmission of uplink data after
24 transmission of held downlink data (as required by the claimed invention) is distinct
25 from overlapping uplink and downlink data transmissions (as in the accused iPhones)
26 because the claimed invention requires sequential data transfers. (JX-7 [’490 Patent]
27 at claim 31: “wherein the modem processor is further configured [to] pull data from
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1 the application processor after transmission of the modem processor to application


2 data.”) During cross-examination, both Dr. Baker and Mr. Krishna conceded that
3 claim 31 can be practiced using a half-duplex bus, which only supports sequential
4 data transfers. (Trial Tr. [Krishna] at 457:5-458:25; id. [Baker] at 575:13-22.) As
5 Mr. Krishna explained, half-duplex buses are like “a one-lane highway” that can only
6 transmit data in one direction at a time. (Id. [Krishna] at 458:16-25.) Mr. Krishna
7 was further impeached with testimony in which he admitted that Figure 5, which he
8 testified illustrates the claimed invention, shows that all the downlink data is sent
9 followed by all the uplink data in the same active power cycle. (Id. [Krishna] at 455:4-
10 6; id. at 460:20-461:20.) Finally, both Mr. Krishna and Dr. Baker conceded that it is
11 possible to use a PCIe bus to connect a modem processor to an application processor
12 without infringing the ’490 patent. (Id. [Krishna] at 473:14-22; id. [Baker] at 545:16-
13 19.) Accordingly, no reasonable jury could find that the iPhones transmit uplink data
14 “after transmission” of the held downlink data.
15 Qualcomm’s arguments that the accused products satisfy, under the doctrine of
16 equivalents, the “after transmission” limitation of the ’490 patent are barred by
17 prosecution history estoppel. Qualcomm has not overcome the presumption of
18 estoppel because Qualcomm’s amendments and arguments during prosecution
19 required a specific scheduling technique narrowing the “after transmission” limitation
20 to exclude overlapping uplink and downlink transmissions. (JX-8 [’490 File History]
21 at 366-67, 371-74.) Qualcomm’s argument is also barred by the “all elements rule”
22 because applying claim 31 to allow the transmission of uplink data to occur before
23 the transmission of all downlink data would vitiate the uplink “after transmission” of
24 downlink limitation.
25 Even if Qualcomm were not barred by prosecution history estoppel or by the
26 “all elements rule,” the evidence at trial demonstrated that the accused iPhones do not
27 satisfy the “after transmission” limitation of claim 31 of the ’490 patent under the
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1 doctrine of equivalents because the claimed invention is substantially different from


2 the accused iPhones. In the accused iPhones, the transfer of downlink data overlaps
3 with the transfer of uplink data, whereas the claimed invention requires sequential
4 data transfers. See infra at 9-10. Dr. Baker offered nothing more than a conclusory
5 opinion on the doctrine of equivalents. (Trial Tr. [Baker] at 515:21-516:10.)
6 Although Dr. Baker testified that the accused iPhones achieve the same result, he
7 failed to meaningfully explain how the accused iPhones perform the same function in
8 the same way to achieve that same result. (Id.) As a result, no reasonable jury could
9 find infringement of the claim under the doctrine of equivalents.
10 D. Apple Is Entitled to Judgment of Non-Infringement of the ’936
Patent
11
Qualcomm accuses the iPhone 8, 8 Plus, and X containing an Intel baseband
12
chipset of infringing claims 19, 25, and 27 of U.S. Patent No. 8,633,936 (the “’936
13
patent”). Qualcomm failed to introduce evidence at trial that would allow a
14
reasonable jury to conclude these products infringe any asserted ’936 patent claim,
15
directly or indirectly, literally or under the doctrine of equivalents.
16
First, Qualcomm offered no evidence at all on asserted claim 25. Qualcomm’s
17
expert, Dr. Murali Annavaram, offered testimony only on claims 19 and 27. (See
18
Trial Tr. [Annavaram] at 703:4-7 (“Q. . . . Am I right, you only testified about two
19
claims, independent claim 19 and dependent claim 27? That’s the extent of your
20
infringement opinion? A. That is correct, ma’am.”); see also id. at 635:8-656:25
21
(opinion on claim 19); id. at 657:1-12 (opinion on claim 27).) Accordingly, Apple is
22
entitled to JMOL on claim 25 of the ’936 patent.
23
Second, Qualcomm introduced no evidence at all regarding any purported
24
indirect infringement of the ’936 patent. Dr. Annavaram expressly confirmed that he
25
had offered no opinion on indirect infringement. (Id. at 661:20-662:6 (testifying that
26
27
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1 he offered no opinion on contributory or induced infringement).) JMOL is therefore


2 appropriate on the issues of induced and contributory infringement.
3 Third, the evidence showed that the accused Apple products do not meet the
4 ’936 patent’s “compiler” limitations, which recite that the graphics and conversion
5 instructions are “executable” instructions “generated by a compiler that compiles
6 graphics application instructions.” (JX-1 [’936 Patent] at claim 19; see also Trial Tr.
7 [Annavaram] at 671:20-23, 672:2-4.) The evidence showed that three, separate
8 compilers are required to generate executable instructions for the graphics processing
9 unit in the accused Apple products. Apple’s Metal Front-End Compiler (“Metal
10 Compiler”) takes as input Metal shading language and outputs Apple Intermediate
11 Representation (“AIR”) code. (E.g., Trial Tr. [Annavaram] at 642:11-16, 676:3-11.)
12 Apple’s Mid-Level Translator Compiler (“Translator Compiler”) takes as input the
13 AIR code and outputs LLVM-IR code. (E.g., id. at 642:22-24, 678:7-13, 678:20-23.)
14 And Apple’s AGX Back-End Compiler (“AGX Compiler”) takes as input the LLVM-
15 IR code and outputs instructions that are executable by the graphics processing unit.
16 (E.g., id. at 680:10-24.)
17 None of these three compilers meets claim 19’s requirement to both compile
18 “graphics application instructions” and generate “executable” instructions. As Dr.
19 Annavaram testified:
20 1. The Metal Compiler outputs AIR code, not executable instructions. (Trial Tr.

21 [Annavaram] at 676:7-11 (“Q. And then is it accurate to say, sir, that what
22 happens then from the front-end compiler it’s -- the output of the front-end
23 compiler is something called AIR; is that right? A. The front-end compilation
24 process generally [outputs] what is called AIR, Apple Intermediate
25 Representation, that we talked about.”); see also PX-2753 [Duprat Dep.] at
26 208:11-14 (“Q. Is the AIR intermediate representation executed on the [GPU]?
27
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1 A. It is not. And it is never transmitted to the GPU.”) (played at Trial Tr.


2 626:6).)
3 2. The Translator Compiler neither takes as input graphics application instructions
4 nor outputs executable code. (Trial Tr. [Annavaram] at 678:20-23 (“Q. What
5 goes into the midlevel compiler are not the graphics application instructions,
6 right? Those went into the front-end compiler on the Mac, correct? A. That is
7 fair to say, yes.”); id. at 679:22-25 (“Q. . . . Just to make sure we’re clear then,
8 what comes out of the midlevel compiler, this LLVM(IR) is not machine
9 executable code, correct? A. IR is not machine executable code.”); see also id.
10 at 678:7-13, 679:4-9.)
11 3. The AGX Compiler does not take as its input graphics application instructions.

12 (Id. at 680:25-681:9 (“Q. And -- but what goes in the back-end compiler are
13 not the graphics applications instructions? A. It’s the IR. . . . Q. So they’re not
14 graphics application instructions, correct, sir? A. That’s correct.”); see also id.
15 at 680:10-20.)
16 Summarizing the flaws in his own analysis, Dr. Annavaram testified: “Neither of [the
17 front-end nor the back-end] will do the job of transforming high-level programming
18 language to execut[able] [] instructions in the machine.” (Id. at 643:14-17.)
19 Because these facts were undisputed, Dr. Annavaram’s infringement opinion
20 was premised on considering the Metal, Translator, and AGX Compilers to be a single
21 combined “chain.” (Id. at 643:2-5, 671:7-10.) The evidence does not support this
22 contention, and instead shows that the Metal Compiler runs on a separate device and
23 at a different time than the Translator and AGX Compilers. (Id. at 688:22-689:1 (“Q.
24 . . . [T]he front-end compilation occurs on one device, the Mac, and the back-end
25 compilation occurs on a different device, the iPhone, correct, sir? A. That’s correct,
26 ma’am.”); id. at 686:9-11 (“Q. And those compilations don’t even have to happen at
27 the same time under your scenario? A. That certainly is true.”); see also id. at 642:19-
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1 21, 642:25-643:1, 673:14-20, 676:15-19, 680:5-9, 685:5-9.) Rather, these separate


2 compilers are separated by Apple’s App Store, which puts an entire marketplace in
3 between application developers and iPhone users—each with opposing interests in an
4 arms-length purchase-and-sale transaction. (Id. at 676:15-19.) The different
5 compilers that each opposing group uses are thus separate compilers, and none meets
6 the claim language requiring a compiler that both compiles graphics application
7 instructions and generates executable instructions. See, e.g., In re Varma, 816 F.3d
8 1352, 1363 (Fed. Cir. 2016) (“For a dog owner to have ‘a dog that rolls over and
9 fetches sticks,’ it does not suffice [to] have two dogs, each able to perform just one of
10 the tasks.”); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1342 (Fed. Cir.
11 2016); Frac Shack Inc. v. Fuel Automation Station LLC¸ No. 16-cv-02275, 2018 WL
12 5792613, at *5 (D. Colo. Nov. 5, 2018) (concluding that while the claimed system
13 may have multiple controllers, “[e]ach of these controllers must be able to both
14 respond to multiple signals from sensors, and provide multiple signals to valves” to
15 meet the claim language); Plano Encryption Techs., LLC v. Alkami, Inc., No. 2:16-
16 cv-1032, 2017 WL 3654122, at *10 (E.D. Tex. Aug. 23, 2017) (holding that a claim
17 reciting “a storage medium having stored therein a plurality of programming
18 instructions” was limited to a device in which “one particular medium must store all
19 of these instructions”).2
20
2
21 None of the theories advanced by Dr. Annavaram justifies merging Apple’s
three separate compilers into a theoretical chain. First, Dr. Annavaram testified that
22 a portion of the ’936 patent specification disclosed a single compiler that runs on
23 different platforms. (Trial Tr. [Annavaram] at 711:3-712:10.) But this passage in fact
describes a multi-processor compiler—not multiple, separate compilers. (JX-1 [’936
24 Patent] at 13:66-14:2 (“[C]ompiler 402 may be formed by one or more processors
25 executing computer-readable instructions associated with the compiler software.”);
see also Trial Tr. [Annavaram] at 720:11-19.) And the following passage, also cited
26 by Dr. Annavaram, discloses the entire multi-processor compiler being implemented
27 on a development platform, not a single compiler formed out of different platforms.
(JX-1 [’936 Patent] at 14:2-4 (“In one aspect, these one or more processors may be
28
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1 Fourth, Qualcomm offered no evidence of infringement of the “compiler”


2 limitations—or any other limitations of the ’936 patent—under the doctrine of
3 equivalents. Dr. Annavaram expressly confirmed that he had offered no opinion on
4 infringement under the doctrine of equivalents. (Trial Tr. [Annavaram] at 662:7-9.)
5 Accordingly, JMOL on the doctrine of equivalents is appropriate. See Lear Siegler,
6 873 F.2d at 1425 (“The evidence and argument on the doctrine of equivalents cannot
7 merely be subsumed in plaintiff’s case of literal infringement.”).3
8
9
part of, or implemented in, the application development platform used by application
10 developers.”).) Further, Dr. Annavaram confirmed that the claims of the ’936 patent
do not used the word compiler “chain,” which is the focus of his analysis. (Trial Tr.
11
[Annavaram] at 671:15-19.) Second, Dr. Annavaram opined that Apple considers the
12 Metal, Translator, and AGX Compilers a single compiler. (Id. at 644:2-645:7,
712:11-713:7.) But the out-of-context statements Dr. Annavaram says support his
13
conclusion do not change the undisputed facts showing that none of Apple’s three
14 compilers meet the claim language—in particular because the document cited in Dr.
15 Annavaram’s demonstratives predates the release of the accused products by seven
years. (Id. at 691:20-24, 692:19-22, 699:9-11.)
16 3
Any doctrine of equivalents opinion for the “compiler” limitations would have
17 been futile because the doctrine of equivalents is unavailable for those limitations due
to prosecution history estoppel, which applies because Qualcomm added these
18 limitations via amendment to overcome the prior art. (See JX-2 [’936 File History]
19 at .417 (showing language added via amendment); id. at .385 (amendment made in
response to the examiner’s rejection of the claim as “unpatentable over Holmer
20 (US007418606B2) and Leung (US005784588A)”); id. at .431-32 (applicant arguing
21 to the examiner that: (i) “current amendments further emphasize the differences
between claim 1 and Holmer”; (ii) “compiler” limitations were a “contrast to the
22 techniques of Holmer”; and (iii) then claim 21 (current claim 19) was “allowable for
23 at least all the same reasons” as claim 1).) The presumption of estoppel cannot be
overcome at least because Qualcomm cannot show that the rationale for amendments
24 to the “compiler” limitations was no more than tangentially related to the equivalent.
25 See Lucent Techs. Inc. v. Gateway, Inc., No. 02-cv-2060, 2007 WL 925354, at *7 (S.
D. Cal. Mar. 6, 2007), aff’d, 525 F.3d 1200, 1217-18 (Fed. Cir. 2008) (finding
26 amendments made during prosecution “directly related to the same subject matter
27 and . . . not tangential”); Dkt. 580 [Summary Judgment Order] at 6 (concluding
“Qualcomm [had] not met its burden to show the [tangential relation] exception
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1 III. APPLE IS ENTITLED TO JUDGMENT AS A MATTER OF LAW OF NO


WILLFULNESS
2
3 To the extent the Court finds that Qualcomm has not waived its arguments

4 regarding willful infringement (see Dkt. 636 [Apple Trial Brief] at 21-23; Dkt. 608

5 [Amended Joint Pretrial Order] at 12), Apple is entitled to judgment as a matter of

6 law of no willfulness. Based on the evidence presented at trial, no reasonable jury

7 could find that Apple’s alleged infringement was willful. As the Supreme Court

8 explained in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923, 1933

9 (2016), “culpability [for willful infringement] is generally measured against the

10 knowledge of the actor at the time of the challenged conduct.” “The subjective

11 willfulness of a patent infringer, intentional or knowing, may warrant enhanced

12 damages, without regard to whether his infringement was objectively reckless.” Id.

13 Whether an accused infringer has reasonable litigation defenses is relevant to whether

14 or not its conduct is “egregious” enough to enhance damages. WesternGeco L.L.C. v.

15 ION Geophysical Corp., 837 F.3d 1358, 1363 (Fed. Cir. 2016) (observing that, after

16 Halo, “objective reasonableness is one of the relevant factors” in determining whether

17 enhanced damages are warranted). To show willfulness, a patentee must prove that

18 the alleged infringer acted without a “reasonable basis for believing it had a right to
19 do the acts.” Stickle v. Heublein, Inc., 716 F.2d 1550, 1565 (Fed. Cir. 1983) (“[M]ore
20 is necessary to support a finding of ‘willfulness’ than that the infringing acts were not

21 inadvertent. The court must determine that the infringer acted in disregard of the

22 patent, that is, that the infringer had no reasonable basis for believing it had a right to

23 do the acts.”); see also Vulcan Eng’g Co. v. Fata Aluminum, Inc., 278 F.3d 1366,

24 1378 (Fed. Cir. 2002) (“The tort of willful infringement arises upon deliberate

25 disregard for the property rights of the patentee. … When it is found that the infringer

26
27 applie[d]” where Qualcomm rewrote the claim and “added the [pertinent] limitation
to the claimed invention”).
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1 acted without a reasonable belief that its actions would avoid infringement, the
2 patentee has established willful infringement, which may be accompanied by
3 enhanced damages.”); Read Corp. v. Portec, Inc., 970 F.2d 816, 826 (Fed. Cir. 1992)
4 (“[T]his court has approved such awards where the infringer acted in wanton
5 disregard of the patentee’s patent rights, that is, where the infringement is willful.”).
6 Although, post-Halo, reasonable defenses are no longer a per se bar to a finding
7 of willfulness, they remain highly relevant to assessing an accused infringer’s
8 subjective intent. Here, where Qualcomm has offered no evidence of any subjective
9 intent by Apple to infringe any asserted patent claim, and Apple has offered several
10 reasonable defenses to Qualcomm’s claims (including defenses that are supported by
11 the record in ITC Investigation No. 337-TA-1065),4 judgment as a matter of law on
12 the issue of willfulness is appropriate. See Am. Calcar, Inc. v. Am. Honda Motor Co.,
13 Inc., No. 06-cv-2433, 2009 WL 10672071, at * 2 (S.D. Cal. Mar. 2, 2009) (granting
14 motion for judgment as a matter of law of no willful infringement where defendant
15 raised “substantial question” about validity of asserted patent); see also State
16 Contracting & Eng’g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1063-64 (Fed. Cir.
17
18 4
Qualcomm successfully moved in limine to exclude evidence relating to the
19 outcomes of the companion ITC Investigation No. 1065. At least two of the outcomes
from that Investigation are relevant to rebut Qualcomm’s willfulness arguments,
20 should the Court determine that those arguments are not waived. First, Qualcomm
21 asserted the same claims of the ’936 patent in that Investigation as it does in this case.
The Administrative Law Judge determined that Apple does not infringe the asserted
22 claims of the ’936 patent, a determination that the ITC has decided not to review,
23 making it a final determination. Cf. Sleep Number Corp. v. Sizewise Rentals, LLC,
No. ED CV 18-00356, 2018 WL 5263065, at *7 (C.D. Cal. June 26, 2018) (holding
24 that a prior ITC investigation finding infringement permitted an inference of willful
25 infringement in the subsequent district court case). Second, Qualcomm also asserted
the ’949 patent in the ITC Investigation, but withdrew the patent prior to the hearing.
26 In sum, there are two outcomes that strongly undercut any claim of willfulness against
27 Apple with respect to the ’936 and ’949 patents.

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1 2003) (upholding trial court’s grant of Rule 50 motion on no willful infringement


2 because defendants had “a substantial defense to infringement”).
3 IV. APPLE IS ENTITLED TO JUDGMENT AS A MATTER OF LAW ON
QUALCOMM’S DAMAGES CLAIMS
4
5 Even if Qualcomm could establish liability—and it cannot for the reasons set

6 forth above—the evidence at trial confirmed that Qualcomm is not entitled to its

7 claimed damages. Qualcomm has not met its burden of proving damages, and its

8 damages case rests entirely on expert testimony that is premised on unreliable

9 methodologies. See Wordtech Sys., Inc. v. Integrated Networks Sols., Inc., 609 F.3d

10 1308, 1318-22 (Fed. Cir. 2010).

11 For the ’936 and ʼ490 patents, the evidence confirmed that Qualcomm’s

12 damages theory was built on a series of unreasonable and unsupported steps. First,

13 Qualcomm’s technical experts were not able to reliably determine the power savings

14 purportedly created by the technologies claimed in the asserted patents. For the ʼ490

15 patent, Qualcomm’s expert Dr. Baker admitted that he had not performed any testing

16 of Apple’s actual products (Trial Tr. [Baker] at 531:1-7 (“A. One might ask why I

17 didn’t just look at the Apple phones directly and make measurements on the Apple

18 phones, and to do that I would need to be able to enable disable the downlink/uplink
19 synchronization, and I didn’t have access to the software, so I had to use these
20 documents to guide me in what would be a reasonable use of the power in the phone”)

21 and had instead looked at Qualcomm’s test platform. (Id. at 530:24-531:1.) Further,

22 to determine the component power usage figures, Dr. Baker relied on studies that did

23 not include Apple iPhones. (Id. at 532:6-21.)

24 For the ʼ936 patent, Dr. Annavaram provided no evidence that the benchmark

25 test results from PX-726, which are the basis of his opinion that using the accused

26 conversion instructions reduces the number of required instructions (and power) by

27 an average of 18.5%, are representative of the average use of an iPhone. (Id.

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1 [Annavaram] at 657:24-659:10.) In addition, Dr. Annavaram conceded that he had


2 no basis to dispute that Apple had enabled constant hoisting (id. at 719:5-10), and that
3 if data is hoisted into the state load program as 16-bit data, there is no need for the
4 MFUNI conversion instruction. (Id. at 716:3-10.) But his calculations failed to
5 account for constant hoisting. Further, Dr. Annavaram used Dr. Baker’s unreliable
6 determination that the GPU accounts for 14% of power consumption in the accused
7 iPhones. (Id. at 660:1-8.) Finally, for his estimate that 59% of the shader power is
8 consumed by the GPU, Dr. Annavaram relied on an analysis of Qualcomm’s products,
9 not the accused iPhones. (Id. at 660:9-19, 706:5-707:6, 706:22-707:6 (“Q. Yet despite
10 all that, instead of using Apple information in this chart, you used information that
11 came from a document that was talking about Qualcomm products, not Apple
12 products; is that right, sir? A. Yes.”).)
13 Second, Qualcomm’s survey expert, Jeffrey Prince, Ph.D., used unreliable
14 methods to attempt to calculate the value of additional battery life. Dr. Prince started
15 with a survey from another case that was not designed for the three asserted patents.
16 (Id. [Prince] at 759:19-760:14.) Thus, Dr. Prince sought to quantify the value of two
17 extra hours of “heavy use” of a smartphone, which is unrelated to the ’949 and ’490
18 patents and not apportioned to the battery life improvements Qualcomm claims are
19 offered by those patents. (See id. at 761:24-762:10; 768:7-19, 771:8-773:5 (“Q. And
20 the bottom line, sir, is you didn’t test the features in your survey against of all of these
21 other features, did you? A. I didn’t need to. Q. But you didn’t do it. A. I did not.”);
22 id. at 836:17-23.) Dr. Prince’s survey also tested only seven attributes of his
23 hypothetical phones, excluding many significant features of the accused devices. (Id.
24 at 770:6-773:5 (“Q. We can go on and on. There are [sic] many, many other features
25 in the iPhone beyond the ones that you tested, correct? A. That’s right.”).) That
26 narrow focus, coupled with the lack of a “none of the above” option (allowing survey
27 not to select a hypothetical phone) led to unreliable results, such as that consumers
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1 would be willing to pay $112.97 more for airplane mode—even where there are much
2 less expensive phones offering that feature. (Id. at 768:20-21 (“Q. And you did not
3 include a none-of-the-above, right? A. That’s right.”); id. at 769:3-10, 777:16-
4 778:12.)
5 Third, Dr. Kennedy relied on Dr. Annavaram’s and Dr. Baker’s faulty power
6 savings analysis and Dr. Prince’s flawed survey results to reach unreliable damages
7 conclusions. (Id. [Kennedy] at 901:24-902:3 (“Q. Sir, you created a formula for your
8 hypothetical negotiation directed to power savings, correct? A. Created a formula.
9 The power savings come directly from the technical experts.”); id. at 904:6-11, 905:2-
10 10, 912:24-913:4, 913:24-914:7.) Moreover, Dr. Kennedy used a figure of thirteen
11 cents per minute of battery life based on Dr. Prince’s survey (id. at 916:3-16), but Dr.
12 Prince offered no opinion supporting the value of one minute of battery life. (Id.
13 [Prince] at 774:14-16.)
14 For the ʼ949 patent, Dr. Kennedy based his damages on his estimate of the cost
15 of a 32 MB NAND flash component. (Id. [Kennedy] at 922:7-11.) But to derive this
16 cost estimate, he relied on a single retail price from Arrow.com, even though he
17 conceded that Apple would not have purchased from Arrow.com. (Id. at 925:24-
18 926:7, 926:17-18 (“Q. And you used a website that Apple wouldn’t use, correct? A.
19 Correct.”).)
20 As to all three patents, Dr. Kennedy’s conclusion that the parties would have
21 agreed to a 50/50 split is without support of any real-world evidence. (Id. at 927:11-
22 13, 928:9-18, 929:19-21, 930:24-931:10.) Further, Qualcomm has presented no
23 evidence that Apple would have agreed to a running royalty structure for patents such
24 as those asserted here. Dr. Kennedy identified no evidence that Apple has ever
25 entered into a running royalty agreement for non-standard essential patents such as
26 the patents asserted in this case. (Id. at 933:12-16.) To the contrary, the evidence is
27 that Apple’s practice has been to enter into lump sum agreements. (Id. at 933:17-
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1 934:5, 934:25-935:13, 935:20-936:7, 936:8-11 (“Q. And Apple, of course, in this


2 hypothetical negotiation of yours would be bringing their lump sum preference to the
3 table, correct? A. Sure.”); PX-2758 [Whitt Dep.] at 19:3-15, 65:20-66:7 (played at
4 Trial Tr. 729:4-5).)
5 Because Qualcomm’s damages claims are speculative and based entirely on
6 unreliable expert testimony, judgment as a matter of law should enter that Qualcomm
7 is not entitled to its claimed damages.
8 V. CONCLUSION
9 For all the foregoing reasons, Apple respectfully requests that the Court grant
10 judgment as a matter of law in Apple’s favor on the issues of non-infringement,
11 willfulness, and damages.
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1 Dated: March 11, 2019 Respectfully submitted,


2 By: /s/ Nina S. Tallon___________
3 Nina S. Tallon, DC Bar No. 479481
pro hac vice, nina.tallon@wilmerhale.com
4 WILMER CUTLER PICKERING HALE AND DORR LLP
1875 Pennsylvania Avenue NW
5 Washington, DC 20006
6 Phone: 202-663-6000 / Fax: 202-663-6363

7 Mark D. Selwyn, SBN 244180,


mark.selwyn@wilmerhale.com
8 WILMER CUTLER PICKERING HALE AND DORR LLP
950 Page Mill Road
9 Palo Alto, CA 94304
10 Phone: 650-858-6000 / Fax: 650-858-6100

11 William F. Lee, MA Bar No. 291960


pro hac vice, william.lee@wilmerhale.com
12 Joseph J. Mueller, MA Bar No. 647567
13 pro hac vice, joseph.mueller@wilmerhale.com
Timothy Syrett, MA Bar No. 663676
14 pro hac vice, timothy.syrett@wilmerhale.com
Richard W. O’Neill, pro hac vice,
15 richard.o’neill@wilmerhale.com
Bradley M. Baglien, pro hac vice,
16 bradley.baglien@wilmerhale.com
17 WILMER CUTLER PICKERING HALE AND DORR LLP
60 State Street
18 Boston, MA 02109
Phone: 617-526-6000 / Fax: 617-526-5000
19
20 Juanita R. Brooks, SBN 75934, brooks@fr.com
Seth M. Sproul, SBN 217711, sproul@fr.com
21 Frank Albert, SBN 247741, albert@fr.com
Joanna M. Fuller, SBN 266406, jfuller@fr.com
22 Katherine D. Prescott, SBN 215496
prescott@fr.com
23 Betty H. Chen, SBN 24056720
24 betty.chen@fr.com
FISH & RICHARDSON P.C.
25 500 Arguello Street, Suite 500
Redwood City, CA 94063
26 Phone: 650-839-5070 / Fax: 650-839-5071
27
Ruffin B. Cordell, DC Bar No. 445801
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1 pro hac vice, cordell@fr.com


Lauren A. Degnan, DC Bar No. 452421
2 pro hac vice, degnan@fr.com
3 FISH & RICHARDSON P.C.
1000 Maine Avenue, S.W. Suite 1000
4 Washington, D.C. 20024
Phone: 202-783-5070 / Fax: 202-783-2331
5
William A. Isaacson, DC Bar No. 414788
6 pro hac vice, wisaacson@bsfllp.com
7 Karen L. Dunn, DC Bar No. 1002520
pro hac vice, kdunn@bsfllp.com
8 BOIES, SCHILLER & FLEXNER LLP
1401 New York Avenue, N.W.
9 Washington, DC 20005
10 Phone: 202-237-2727 / Fax: 202-237-6131

11 Benjamin C. Elacqua, TX SBN 24055443


pro hac vice, elacqua@fr.com
12 John P. Brinkmann, TX SBN 24068091
pro hac vice, brinkmann@fr.com
13 FISH & RICHARDSON P.C.
14 One Houston Center, 28th Floor
1221 McKinney
15 Houston, TX 77010
Phone: 713-654-5300 / Fax: 713-652-0109
16
17 Brian P. Boyd, GA SBN 553190
pro hac vice, bboyd@fr.com
18 FISH & RICHARDSON P.C.
1180 Peachtree St., NE, 21ST Floor
19 Atlanta, GA 30309
Phone: 404-892-5005 / Fax: 404-892-5002
20
21 Attorneys for Apple Inc.

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1 CERTIFICATE OF SERVICE
2 The undersigned hereby certifies that a true and correct copy of the above and
3 foregoing document has been served on March 11, 2019 to all counsel of record
4 who are deemed to have consented to electronic service via the Court’s CM/ECF
5 system per Civil Local Rule 5.4. Any other counsel of record will be served by
6 electronic mail, facsimile and/or overnight delivery.
7 Executed on March 11, 2019 at San Diego, CA.
8
9 /s/ Nina S. Tallon
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