Case 5:19-cv-00036-RWS Document 125 Filed 11/13/19 Page 1 of 11 PageID #: 5347
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.’S OPPOSITION TO APPLE INC.’S
`MOTION FOR PROTECTIVE ORDER TO PREVENT DEPOSITION OF IN-HOUSE
`LITIGATION COUNSEL
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`Case 5:19-cv-00036-RWS Document 125 Filed 11/13/19 Page 2 of 11 PageID #: 5348
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`When Apple wanted to show the Court it could not identify relevant components in its own
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`products—however far-fetched the claim—it offered to have Mr. Stein testify regarding his experience
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`trying to identify just one component. Apple stated
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`. Ex. A (September 17, 2019 Hearing Tr. at 98:3-15). Apple expected
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`the Court to rely on these representations regarding Mr. Stein’s experience, and to rule based on them.
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`But having made its representations to the Court, Apple now insists that having Mr. Stein testify on these
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`same issues is an “abuse of the discovery process.” Apple is playing games, asking the Court to rely on
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`“facts” that it refuses to have questioned.
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`Apple waived its ability to object to Maxell’s deposition of Mr. Stein on the limited issue that
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`Apple made relevant by putting it squarely before the Court. To avoid responding to an interrogatory
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`identifying select components, Apple told this Court
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`. Id. at 83:5-13. Apple represented it “
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`.” Id. at 98:3-15. “
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`. Id.
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`Since that day, Apple has backed away from its in-Court statements. For example, on October 2
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`Apple stated “Maxell mischaracterizes Apple’s representation to the Court as being unable to ‘identify the
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`relevant components in response to Interrogatory No. 6.’ Apple has never made any such representation.
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`Apple has instead correctly represented that filling out the 10,000-cell spreadsheet … is burdensome and
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`oppressive, if it is even possible.” Ex. B (Excerpt of Apple 10/2/19 Letter). Because Apple has not fully
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`responded to Interrogatory No. 6, and is now changing its positions regarding its in-Court statements, it is
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`Case 5:19-cv-00036-RWS Document 125 Filed 11/13/19 Page 3 of 11 PageID #: 5349
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`necessary to seek Mr. Stein’s deposition to determine the facts.1
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`Apple’s response confirms the importance of Mr. Stein’s deposition. Although Apple stated to the
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`Court that it “
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`accompanying Interrogatory No. 6, Apple now states Mr. Stein
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`” referring to the chart
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`but rather that his efforts were for some undefined different case. Ex. A (September 17, 2019 Hearing Tr.
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`at 98:3-15); Mot. at 5; see also, e.g., Apple Mot. at Ex. A (11/4/19 Meet and Confer Tr. at 10:16-19) (“Mr.
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`Stein has not attempted to collect information and that’s not what he was going to say to the Court to fill
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`out one of the lines in the chart… in this case.”). Furthermore, Apple later stated that “[t]he allegation …
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`that Apple represented ‘
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`’ is a mischaracterization of the statement actually made to the Court.” Ex.
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`C (Excerpt of Apple 10/11/19 letter). Apple and Mr. Stein have offered two different and conflicting
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`stories. Maxell is entitled to question Mr. Stein’s and Apple’s representation in its effort to get fulsome
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`discovery responses from Apple.
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`Additionally, Apple offered Mr. Stein as a fact witness to “explain[] the heavy burden associated
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`with tracking down component-level information based on his experience attempting to do so….,” stating
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`. Mot. at 5; Ex. A (September 17, 2019 Hearing Tr. at 98:3-15).
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`Maxell seeks to depose Mr. Stein in this capacity as well. Maxell will limit the deposition to the details of
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`and circumstances surrounding
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` proffered to the Court and Apple’s burden in collecting
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`component information. Such a limited deposition will not harass or waste time, nor will it risk disclosure
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`of legal theories or strategy. It will, however, enable the parties and the Court to determine the facts
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`relating to Apple’s discovery burden and close this issue.
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`1 This explains why Maxell served its deposition notice on October 8 rather than immediately following the
`hearing. Such timing does not establish that the information sought is not crucial, as Apple asserts, but rather that
`Maxell did not have reason to believe that Apple was misrepresenting its discovery efforts until later.
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`I.
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`ARGUMENT
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`A.
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`Shelton Does Not Apply to Mr. Stein’s Noticed Deposition
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`Maxell does not contest that Mr. Stein is Senior Litigation Counsel. However, Shelton does not
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`apply here due to the subject matter of the sought deposition. As the Eighth Circuit stated in Pamida, Inc.
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`v. E.S. Originals, Inc., “the Shelton test was intend[ed] to protect against the ills of deposing opposing
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`counsel in a pending case which could potentially lead to the disclosure of the attorney’s litigation
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`strategy.” 281 F.3d 726, 729-30 (8th Cir. 2002). Although the facts of Pamida may differ from those here,
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`the rationale is the same. No heightened protection is necessary in a situation such as this one, where
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`Maxell seeks to depose Mr. Stein regarding
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` that he allegedly performed in connection with
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`a different matter (as Apple now claims). There is no danger that questioning Mr. Stein on an effort to
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`collect information in an unrelated matter would reveal litigation theories or strategy with respect to this
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`litigation. Mr. Stein would be deposed in his capacity as a fact witness regarding the unrelated matter, not
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`as counsel to Apple in the current litigation. See, e.g., Am. Cas. Co. of Reading, Pennsylvania v. Krieger,
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`160 F.R.D. 582, 588 (S.D. Cal.1995) (stating deposition of opposing counsel may be appropriate where
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`attorney is a fact witness); aaiPharma, Inc. v. Kremers Urban Development Co., 361 F. Supp. 2d 770, 775
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`(E.D. Ill. 2005) (declining to apply Shelton in part because discovery was sought “regarding the
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`prosecution of the patents in suit, and not about the underlying litigation”).
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`Apple’s complaints that Mr. Stein’s deposition would unnecessarily add to the time and costs of
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`litigation or otherwise implicate Shelton’s reasons for prohibiting his deposition are without merit.
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`Preparing and sitting for a short deposition would not detract from Mr. Stein’s representation. Given that
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`Mr. Stein
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`, offering up anyone else for this issue would actually require
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`more of Mr. Stein’s time.
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` Deposing Mr. Stein directly is the most efficient course.
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`Maxell’s proposed deposition would not result in voluminous privilege objections requiring
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`resolution. Apple waived any claims of privilege related to t
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` when it disclosed details thereof
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`in full expectation that the Court would rely on such disclosure in rendering a decision on Maxell’s motion
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`to compel. Thus, a waste of time would only result if Apple insists on raising improper objections.
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`B.
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`A Deposition is Warranted even under the Shelton Three-Factor Test
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`Even if Shelton applies, the deposition is warranted. Apple acknowledges depositions of opposing
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`counsel are permitted in certain circumstances. See Mot. at 2 (citing Nguyen v. Excel Corp., 197 F.3d 200,
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`209 (5th Cir. 1999)). This is one such circumstance. Maxell does not seek a roving deposition of counsel
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`that will get into the contours of how it intends to litigate this case. Rather, Maxell seeks a deposition of
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`an individual offered to the Court regarding a specific alleged attempt to collect discovery that Apple
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`asked the Court to rely on for a motion to compel.
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`Even if Shelton applies, the factors are met. No other means exist for Maxell to obtain this
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`information. Apple stated that Mr. Stein hi
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`deposition, and that
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` that would be the subject of the
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`. Ex. A (Tr. at 98:3-15). As
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`Apple offered Mr. Stein’s experience to the Court, there is no doubt that he is the only possible deponent
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`suited to provide information regarding his experience. Any other deponent could only provide second-
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`hand knowledge, which is bound to be incomplete.
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`That Maxell also noticed a corporate deposition on discovery-related topics does not make Mr.
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`Stein’s deposition cumulative or suggest there are other means for Maxell to obtain this requested
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`information. Maxell seeks to depose Mr. Stein on a narrow issue—the circumstances surrounding
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`2 Moreover, if Mr. Stein is as involved in managing the litigation as Apple argues, he would be involved in the
`preparations and depositions of any Apple witnesses regardless of his knowledge on the topic.
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`Case 5:19-cv-00036-RWS Document 125 Filed 11/13/19 Page 6 of 11 PageID #: 5352
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` related to component identification—important to ongoing deficiencies in Apple’s
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`discovery responses, document production, and source code production. Maxell does not intend to broadly
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`probe into document collection, which is better suited for the noticed corporate deposition.
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`The information sought from Mr. Stein is relevant and non-privileged. Details regarding
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` and the burden associated with tracking down component-level information is relevant. Component-
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`level information is highly relevant to proving certain asserted elements of infringement. Notably, when
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`Apple needed information regarding
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` to support its opposition to Maxell’s motion to
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`compel, it plainly thought that the information was relevant to this case. Indeed, despite its current claims
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`that the information is irrelevant, Apple has never asked the Court to disregard Apple’s representations to
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`the Court. Apple still expects the Court to rely on them.
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`As discussed above, the information sought is not privileged. Maxell merely seeks facts regarding
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`attempts of one Apple employee to collect information identifying components incorporated into Apple
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`devices. To the extent there is any doubt whether these facts could constitute privileged information, such
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`doubt is erased here where Apple waived any privilege when it discussed the attempt in open court.
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`The information Maxell seeks is crucial to the preparation of its case. To target and narrow
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`discovery, Maxell propounded an early interrogatory seeking the identity of a limited set of relevant
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`components to establish infringement. Apple responded
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` to
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`provide such identification and instead asserts the information can be gleaned only from over 3,000 bills
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`of materials (“BOMs”).3 While Maxell is reviewing the BOMs to identify components, Apple’s alleged
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`inability to readily identify the components in its products (something Apple mostly certainly would be
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`able to do on a moment’s notice if a component was not performing properly) frustrates discovery. It
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`3 Although Apple stated that BOMs can be used to respond to Interrogatory No. 6, it has not supplemented its
`response to identify any documents. Indeed, Apple has not supplemented any responses to identify documents,
`even with respect to those interrogatories for which Apple stated it would produce and identify documents in
`response.
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`unquestionably takes Maxell’s counsel more time to search the BOMs than it would Apple employees
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`who are familiar with the accused products, BOMs, and terminology used by Apple and its suppliers to
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`describe components.4 There is also no guarantee Apple will not challenge the accuracy of the components
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`identified based on the BOMs. Instead of relying on a single interrogatory response, Apple’s position
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`requires Maxell to rely on more than 3,000 individual documents as evidence of just the components used
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`in the accused products (and even the BOMs do not contain all of the information responsive to Maxell’s
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`interrogatory). Given the impact such identification has on this case, the information sought by Maxell
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`from Mr. Stein has a crucial impact on Maxell’s ability to prepare its case.
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`C.
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`Maxell Has Not Engaged In Discovery Abuse
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`Apple’s conduct in this case can be summarized as “frustrate and complain.” Apple deliberately
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`withholds or delays discovery, frustrating Maxell’s ability to prosecute its case, and then Apple complains
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`when Maxell insists that Apple comply with its discovery obligations.
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`Maxell did not rush to Court “with no precedent whatsoever” on a theory that every document
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`must have been produced on the initial disclosure deadline. Rather, Maxell went to Court because Apple
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`refused to substantially complete its production by the dates explicitly required under the governing rules
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`and orders. It still has not. Further, Apple represented to the Court on September 17 that it had “
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`,” see Ex. A (Sept. 17,
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`2019 Hearing Tr. at 78:23-79:24), but it has since then produced over 1,000 technical documents
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`consisting of
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`, as well as additional source code—precisely the types of documents
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`Apple claimed it did not have, and for which Maxell was forced to move to compel. Maxell’s motion was
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`plainly warranted and is still warranted insofar as Apple’s discovery remains seriously deficient.
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`4 A significant number of these BOMs are also duplicates, further frustrating discovery.
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`Moreover, Apple’s argument that non-infringement positions do not have to be provided prior to expert
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`disclosure is not supported by “unambiguous precedent,” as Apple claims. Apple’s counsel even agreed
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`that “
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`.” Id. at 76:15-19. And, with respect to the component spreadsheet, Maxell
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`could simply have sought the “identification of all relevant components” rather than prepare a spreadsheet
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`identifying the specific information requested for the limited set of components.
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`Finally, Apple’s complaint regarding Maxell’s infringement contentions is completely unjustified.
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`Maxell’s supplemental contentions span more than 7,500 pages and provide an exhaustive and thorough
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`overview of Maxell’s infringement theories, along with exemplary supporting evidence, including source
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`code. This is despite the fact that Apple refused to provide a means by which Maxell could correlate the
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`produced source code to specific operating systems/accused products until almost a month later and
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`Apple’s document production and source code production remain deficient. Apple has broadly alleged
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`throughout this case that Maxell’s infringement contentions are insufficient, but has not once been able to
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`articulate a specific example or otherwise sought relief from the Court despite having Maxell’s contentions
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`now for five months. Indeed, should Apple make such complaints to the Court, Maxell will be happy for
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`the Court to review the contentions in order to put an end to Apple’s false claims.
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`Maxell wants to litigate this case on the merits efficiently. Every issue it has raised has been in
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`furtherance of this goal, including seeking Mr. Stein’s deposition. Identification of the relevant
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`components is an important issue, the resolution of which will move discovery forward efficiently.
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`II.
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`CONCLUSION
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`For the reasons set forth above, Maxell respectfully requests that the Court deny Apple’s Motion
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`for Protective Order and require Apple present Mr. Stein for deposition on the issue of Apple’s attempts
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`and ability to track down component-level information.
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`Case 5:19-cv-00036-RWS Document 125 Filed 11/13/19 Page 9 of 11 PageID #: 5355
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`Dated: November 11, 2019
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`By:
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`/s/ Jamie B. Beaber
`Geoff Culbertson
`Kelly Tidwell
`Patton, Tidwell & Culbertson, LLP
`2800 Texas Boulevard (75503)
`Post Office Box 5398
`Texarkana, TX 75505-5398
`Telephone: (903) 792-7080
`Facsimile: (903) 792-8233
`gpc@texarkanalaw.com
`kbt@texarkanalaw.com
`
`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`Baldine B. Paul
`Tiffany A. Miller
`Saqib J. Siddiqui
`Bryan C. Nese
`William J. Barrow
`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
`agelsleichter@mayerbrown.com
`cbakewell@mayerbrown.com
`
`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
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`Case 5:19-cv-00036-RWS Document 125 Filed 11/13/19 Page 10 of 11 PageID #: 5356
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`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 125 Filed 11/13/19 Page 11 of 11 PageID #: 5357
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 11th day of November, 2019, with a copy of this document
`via electronic mail.
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`The undersigned certifies that the foregoing document is authorized to be filed under seal
`pursuant to the Protective Order entered in this case.
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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`PUBLIC VERSION
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