Case 1:23-cv-00324-ADA Document 359 Filed 12/18/24 Page 1 of 5
`
`TO IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`
`AUSTIN DIVISION
`CARBYNE BIOMETRICS, LLC,
`Plaintiff, Civil Action No. 1:23-cv-00324
`Vs.
`APPLE INC., JURY TRIAL
`Defendant.
`
`PLAINTIFF CARBYNE BIOMETRICS, LLC’S OBJECTIONS TO APPLE’S 101
`MEMORANDUM OF LAW, FINDINGS OF FACT, AND CONCLUSIONS OF LAW
`
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 359 Filed 12/18/24 Page 2 of 5
`
`Carbyne objects to Apple’s Memorandum of Law regarding the eligibility of the Asserted
`Claims under 35 U.S.C. § 101 submitted as Ex. 21 (Dkt. 341-23) to the Joint Pretrial Order (Dkt.
`341). Apple’s memorandum is unnecessary as the parties have briefed Apple’s motion to dismiss
`and motion for summary judgment regarding the patent eligibility of the Asserted Claims under §
`101 and the issue is presently ripe for the Court to decide. Further the parties have provided the
`Court with their competing jury instructions regarding § 101 with detailed explanations advocating
`for their instructions and objections to the opposing party’s instruction. Carbyne reasserts the
`positions it has taken in its responsive briefing to Apple’s motions to dismiss and for summary
`judgment, its proposed § 101 jury instruction, and its objections to Apple’s proposed instruction.
`
`To briefly summarize, should the Court rule in Carbyne’s favor for Apple’s motions to
`dismiss and for summary judgment, the Court may resolve Apple’s motions at Alice Step One,
`obviating the need for the jury to address any issue relating to patent eligibility under § 101. If the
`Court finds that there is a factual issue for the jury to resolve at Alice Step 2, Carbyne has provided
`its proposed jury instruction that the Court may issue and/or consider. Apple’s memorandum has
`cited no case to support its recommended procedure of the Court specifically identifying the
`abstract idea for the jury and instructing the jury as to the specific inventive concept it must assess.
`Apple’s position is an extrapolation from the Supreme Court’s decision in Alice its progeny.
`Carbyne’s jury instruction allows for the jury to decide the inventive concept provided for by the
`Asserted Claims under Alice Step Two, as the law requires. See Ollnova Techs. Ltd. v. ecobee
`Techs. ULC, No. 2:22-CV-00072-JRG, 2024 WL 4107482, at *5 (E.D. Tex. Sept. 6, 2024) (stating
`it is for “the jury to conclude that the claims recite an inventive concept beyond the Court's
`
`identified abstract idea”).
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 359 Filed 12/18/24 Page 3 of 5
`
`Carbyne objects to Apple’s proposed conclusions of law and findings of fact (Dkt. 341-24)
`as inaccurate and irrelevant. However, should the Court determine there is a jury issue relevant to
`Alice Step 2, Carbyne requests that it also be permitted to promptly submit proposed findings of
`fact and conclusions of law should the Court find such a submission helpful. Carbyne also
`maintains its objections to Apple’s proposed § 101 jury instructions and proposed trial procedure
`
`expressed in its memorandum submitted with the Joint Pretrial Order.
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 359 Filed 12/18/24 Page 4 of 5
`
`Dated: December 18, 2024 McKOOL SMITH, P.C.
`
`/s/ Joshua W. Budwin
`
`Joshua W. Budwin
`
`Lead Attorney
`
`Texas State Bar No. 24050347
`jbudwin@mckoolsmith.com
`George T. Fishback, Jr.
`
`Texas State Bar No. 24120823
`gfishback@McKoolSmith.com
`Caroline Burks
`
`Texas State Bar No. 24126000
`cburks@McKoolSmith.com
`McKooL SMITH, P.C.
`
`303 Colorado Street Suite 2100
`Austin, TX 78701
`
`Telephone: (512) 692-8700
`Telecopier: (512) 692-8744
`
`Richard A. Kamprath
`
`Texas State Bar No. 24078767
`rkamprath@McKoolSmith.com
`Bradley Jarrett
`
`Texas State Bar No. 24128518
`bjarrett@mckoolsmith.com
`Daniel Iliasevitch
`
`Texas State Bar No. 24125631
`diliasevitch@McKoolSmith.com
`McKooL SMITH, P.C.
`
`300 Crescent Court, Suite 1500
`Dallas, TX 75201
`
`Telephone: (214) 978-4210
`
`Jennifer L. Truelove
`
`Texas State Bar No. 24012906
`jtruelove@mckoolsmith.com
`Kevin Burgess
`
`Texas State Bar No. 24006927
`kburgess@mckoolsmith.com
`McKooL SMITH, P.C.
`
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
`
`Phone: (903) 923-9000
`
`ATTORNEYS FOR PLAINTIFF
`CARBYNE BIOMETRICS, LLC
`
`
`
`
`
`
`
`
`Case 1:23-cv-00324-ADA Document 359 Filed 12/18/24 Page 5 of 5
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the above and foregoing document has been
`served on all counsel of record via the Court’s ECF system on December 18, 2024.
`
`/s/ Joshua W. Budwin
`Joshua W. Budwin
`
`
`
`
`
`
`
`
`
`