Case 5:19-cv-00036-RWS Document 129 Filed 11/14/19 Page 1 of 11 PageID #: 5377
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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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`Plaintiff
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`Civil Action NO. 5:19-cv-00036-RWS
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`v.
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`APPLE INC.,
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`Defendant.
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`JURY TRIAL DEMANDED
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`APPLE INC.’S MOTION TO COMPEL INFRINGEMENT CONTENTIONS
`COMPLIANT WITH PATENT RULE 3-1(G) OR, IN THE ALTERNATIVE, TO
`PRECLUDE MAXELL’S RELIANCE ON SOURCE CODE FOR INFRINGEMENT
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`Case 5:19-cv-00036-RWS Document 129 Filed 11/14/19 Page 2 of 11 PageID #: 5378
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`TABLE OF AUTHORITIES
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`Page
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`I.
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`II.
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`INTRODUCTION ............................................................................................................. 1
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`MATERIAL FACTS ......................................................................................................... 1
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`III.
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`LEGAL STANDARD ........................................................................................................ 3
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`IV. ARGUMENT ..................................................................................................................... 4
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`A.
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`B.
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`Maxell’s SIC Fails to Disclose Its Infringement Theories With Specificity. ........ 4
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`Maxell Has No Excuse For Its Failure to Comply with P.R. 3-1(g). ..................... 6
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`V.
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`CONCLUSION .................................................................................................................. 7
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`Case 5:19-cv-00036-RWS Document 129 Filed 11/14/19 Page 3 of 11 PageID #: 5379
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`I.
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`INTRODUCTION
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`The Local Patent Rules, through P.R. 3-1(g), plainly required Maxell to provide “pinpoint
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`citations to source code” in its infringement contentions to give Apple “adequate notice” of
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`Maxell’s infringement theories. UltimatePointer, LLC v. Nintendo Co., No. 6:11-CV-496-LED,
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`2013 WL 6253767, at *3 (E.D. Tex. Dec. 3, 2013). Maxell has not done so, and is now refusing
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`to supplement its contentions, despite the fact that Apple first made source code available for
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`Maxell’s inspection in August and Apple tolled—at Maxell’s request—the deadline for Maxell
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`to provide its P.R. 3-1(g) contentions. Maxell’s refusal to supplement contravenes the purpose
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`of the Local Patent Rules, which are designed to provide “all parties with adequate notice and
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`information with which to litigate their cases” and deter “litigation by ambush.” Computer
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`Acceleration Corp. v. Microsoft Corp., 503 F. Supp. 2d 819, 822 (E.D. Tex. 2007).
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`Instead of providing pinpoint citations to source code, Maxell chose merely to list source
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`code file and folder names for each limitation it contends is practiced by software—identifying
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`more than hundreds and even thousands of files as relevant for each “software” limitation. It
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`never tried to identify any “single structure, process, algorithm, feature or function” alleged to
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`infringe these software limitations. Connectel, LLC v. Cisco Sys., Inc., 391 F. Supp. 2d 526, 528
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`(E.D. Tex. 2005). And it never explained how it contends the source code allegedly satisfies
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`each claim limitation. Maxell’s bulk listing of source code gives Apple no notice of Maxell’s
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`source code-based infringement theories. Thus, Apple respectfully requests the Court require
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`that Maxell immediately provide compliant infringement contentions or preclude Maxell from
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`relying on source code evidence for its infringement case.
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`II. MATERIAL FACTS
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`In its original infringement contentions, Maxell alleged that every currently asserted
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`claim includes one or more “software limitations” governed by P.R. 3-1(g). This Rule required
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`1
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`Case 5:19-cv-00036-RWS Document 129 Filed 11/14/19 Page 4 of 11 PageID #: 5380
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`Maxell to “identify, on an element-by-element basis for each asserted claim, what source code …
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`allegedly satisfies the software limitations” within 30 days of source code production. D.I. 42 at
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`2. Based on Maxell’s broad designations, Apple made available for inspection approximately
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`900,000 files in 185 clearly named directories on August 14, 2019. And at Maxell’s request,
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`Apple tolled the time for Maxell to comply with Rule 3-1(g) by a month.1 But, when Maxell
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`served its Supplemental Infringement Contentions (“SIC”), instead of providing pinpoint
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`citations to source code—as required under the Patent Rules—Maxell only identified long lists
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`of file and folder names for each alleged software limitation.
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`For example, claim element 1(d) of U.S. Patent No. 8,339,493 recites “mixing or culling
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`signal charges accumulated in the N number of vertically arranged pixel lines ….” Maxell
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`contends that this is a P.R. 3-1(g) limitation that implicates software. But instead of identifying
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`“what source code … allegedly satisfies” this limitation, the SIC lists 47 pages of source code
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`files and folder names—identifying 6 full folders and 682 individual files in other folders—just
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`for this single limitation. See Ex. B (excerpt). One of the folders Maxell listed alone contains
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`over 27,000 additional files. Thus, Maxell’s SIC identified tens of thousands of files (which
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`would translate into hundreds of thousands of pages if printed), all without further explanation of
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`the listed code, for a single software limitation. As another example, claim element 1(f) of U.S.
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`Patent No. 10,084,991 recites “paus[ing] the displaying of the first digital information and
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`render[ing] the camera operative.” Maxell asserted that this too is a P.R. 3-1(g) limitation, but
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`1 Maxell did not even begin the process of clearing its experts for source code review—a process
`of which it was aware it must satisfy at least beginning when the parties first filed the protective
`order on June 26, 2019—until after Apple made its source code production in August. And, to
`date, Maxell has not printed a single page of code, nor has any of Maxell’s experts who are
`expected to offer infringement opinions even reviewed the produced code.
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`2
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`Case 5:19-cv-00036-RWS Document 129 Filed 11/14/19 Page 5 of 11 PageID #: 5381
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`listed 74 full folders and more than 70 pages of file names. See Exs. A, C. Apple cannot divine
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`from these long lists what portions of code Maxell contends satisfy the relevant limitations.2
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`Apple requested that Maxell correct its SIC, but Maxell refused. Simmons Decl. ¶ 6.
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`III. LEGAL STANDARD
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`P.R. 3-1 requires a patentee to disclose its “particular theories of infringement,” Zix Corp.
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`v. Echoworx Corp., No. 2:15-CV-1272-JRG, 2016 WL 3410367, at *1 (E.D. Tex. May 13,
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`2016), including the “single structure, process, algorithm, feature or function of any accused
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`product” alleged to infringe, Connectel, 391 F. Supp. 2d at 528. Infringement contentions that
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`fail to identify “what specific parts of the accused products practice the relevant software claim
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`elements” may be stricken. Zix, 2016 WL 3410367, at *2. P.R. 3-1(g) is also plain on its face:
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`requiring that Maxell identify the “source code” that “allegedly satisfies” the claim limitations.
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`Indeed, specific line-item identification of source code is the required practice in this
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`District. Michael S Sutton Ltd. v. Nokia Corp., No. 6:07-CV-203, 2009 WL 9051240, at *2
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`(E.D. Tex. Feb. 13, 2009) (explaining that a plaintiff must identify the “location of the [claimed
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`elements] in the source code” and finding general citations to 83 pages of source code
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`insufficient); see also UltimatePointer, LLC, 2013 WL 6253767, at *3 (requiring “pinpoint
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`citations” to source code); Wi-LAN, Inc. v. Acer, Inc., No. 2:07-CV-473-TJW, 2010 WL
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`9593050, at *1 (E.D. Tex. July 29, 2010) (requiring plaintiff to supplement by “identifying the
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`source code lines”); Treehouse Avatar LLC v. Valve Corp., No. C17-1860-RAJ, 2019 WL
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`917403, at *2 (W.D. Wash. Feb. 25, 2019) (“[T]he Northern District of California, Central
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`District of California, and Eastern District of Texas, generally hold that in software cases, once
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`2 These are just two of many examples of Maxell’s bulk listing of source code, including
`substantially overlapping 45+ page lists of file names for each asserted claim of the ’493 patent.
`The SIC lists 10 or more pages of source code folders and file names (i.e., hundreds of files)
`each for 57 claim elements, including 25 or more pages for 39 claim elements.
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`3
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`Case 5:19-cv-00036-RWS Document 129 Filed 11/14/19 Page 6 of 11 PageID #: 5382
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`source code has been provided to plaintiffs, they must supplement their infringement contentions
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`with pinpoint source code citations.”) (emphasis added); Finjan, Inc. v. Check Point Software
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`Techs., Inc., No. 18-CV-02621-WHO, 2019 WL 955000, at *6 (N.D. Cal. Feb. 27, 2019)
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`(requiring specific “pinpoint source code citations” under similar Patent Rules).
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`IV. ARGUMENT
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`A. Maxell’s SIC Fails to Disclose Its Infringement Theories With Specificity.
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`Maxell’s SIC fails to “provide enough specificity to give [Apple] notice of the patentee’s
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`claims” for the software limitations. Michael S Sutton Ltd., 2009 WL 9051240, at *2. As
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`explained above, Maxell identified thousands of source code files for claim element 1(d) of the
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`’493 Patent. See Ex. B. The listed source code spans practically every aspect of image-related
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`functionality, ranging from code used to capture image data from the image sensor to code used
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`to display a “slide show.” Since the listed source code covers all aspects of image processing,
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`Apple is at a loss as to Maxell’s actual infringement theory with respect to the “mixing or
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`culling” limitation. This is designed to tactically disadvantage Apple. Because the constructions
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`of “mixing” and “culling” are disputed (see D.I. 99 at 16), Maxell’s overbroad listing of various
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`code allows it the freedom to choose whatever portion of the source code it will later rely on in
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`its expert reports without having to disclose its theories before the claim construction hearing.
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`This is precisely the type of “litigation by ambush” tactic the Patent Rules are designed to
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`prohibit. See Computer Acceleration, 503 F. Supp. 2d at 822.
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`Maxell cannot hide its infringement theories among long lists of source code files.
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`Rather, Maxell is required to “identify the particular claim components in each claim, map those
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`components onto the features of the allegedly infringing products, and pinpoint cite source code
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`that practices that component.” Check Point Software, 2019 WL 955000, at *6 (emphasis
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`added); see also Zix, No. 2:15-CV-1272-JRG, 2016 WL 3410367, at *2 (contentions must
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`identify the “specific parts of the accused products [that] practice the relevant software claim
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`elements”). Maxell’s “analysis” of source code includes nothing more than “simply parrot[ting]
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`claim language without identifying any particular supporting language in its sources or linking
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`the cited sources to particular source code.” Check Point Software, 2019 WL 955000, at *5.
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`And Maxell has not explained what algorithms in source code, individually or in combination,
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`infringe any claim element. By citing “multiple sets of source code … with little or no
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`explanation for which set of citations relate to the relevant claim limitation,” Maxell has not
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`disclosed “how any particular set of source code practices the asserted claim limitation.” Id. at
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`*5. Maxell’s tactic “creates incalculable alternatives of infringement theories,” making it “next
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`to impossible to know what its infringement theories are.” Id. at *7.
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`In pre-motion correspondence, Maxell relied on Finjan, Inc. v. Proofpoint, Inc., No. 13-
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`CV-05808-HSG, 2015 WL 9023166 (N.D. Cal. Dec. 16, 2015), to argue that it does not need to
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`provide pinpoint citations. While Finjan did not require pinpoint citations, Maxell’s reliance on
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`it is misplaced because it did not apply P.R. 3-1(g)’s specific requirement. Nevertheless, Finjan
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`required that “plaintiff … sufficiently identif[y] its theory of infringement through other means.”
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`Id. at *2. But Maxell has not provided any means to decipher its infringement theories. And
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`subsequent decisions have criticized Finjan for undermining the “early and specific disclosure”
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`of contentions required by the local Patent Rules. Kinglite Holdings Inc. v. Micro-Star Int’l Co.,
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`No. CV-14-03009-JVS-PJWX, 2016 WL 6762573, at *2-3 (C.D. Cal. June 15, 2016) (requiring
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`pinpoint citations). And a 2019 N.D. Cal. decision specifically required the same plaintiff to
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`provide “pinpoint source code citations ... as required by the Patent Local Rules.” Check Point,
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`2019 WL 955000, at *7. Apple is not aware of any decision—and Maxell has not cited any—
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`that replaced this District’s longstanding rule requiring specificity with Finjan’s 2015 holding.
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`There is a reason why courts routinely require pinpoint citations to source code. Without
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`specific contentions, Maxell would be allowed to freely mix and match previously-undisclosed
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`combinations of software algorithms to create a “shifting sands” approach to patent litigation that
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`the Patent Rules intend to prevent. Keranos, LLC v. Silicon Storage Tech., Inc., 797 F.3d 1025,
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`1035 (Fed. Cir. 2015).
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`B. Maxell Has No Excuse For Its Failure to Comply with P.R. 3-1(g).
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`This District has also rejected Maxell’s argument, made in pre-motion correspondence,
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`that it need not cite source code with specificity to comply with P.R. 3-1(g) because it “otherwise
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`compl[ied] with P.R. 3-1.” See Zix, No. 2:15-CV-1272-JRG, 2016 WL 3410367, at *2. But
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`Maxell “triggered P.R. 3-1(g) of the Discovery Order” by designating claim elements as software
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`limitations. Id. And after demanding voluminous source code from Apple by doing so, Maxell
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`cannot “reverse course on whether or not P.R. 3-1(g) applies whenever it is either convenient or
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`advantageous.” Id. at *3. If Maxell has now determined that certain claim limitations do not
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`implicate source code, it should have withdrawn them as “software limitations” in its
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`contentions. Maxell did not do so, and it must now disclose specific citations to source code.
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`The Court should also reject Maxell’s self-serving claim that the volume of source code
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`Apple has produced justifies its deficient SIC. Maxell itself requested that Apple produce a large
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`amount of source code through its original contentions and subsequent conferences with Apple’s
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`counsel. During those conferences, Maxell argued that the amount at stake in this case justifies
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`its disproportionate demands for source code discovery. Maxell cannot change its position now
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`to argue that source code Apple made available in response to Maxell’s disproportionate
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`demands—at Apple’s great expense—somehow excuses Maxell’s failure to comply with the
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`Patent Rules. Indeed, the complexity of this case mandates more, not less, specific disclosure of
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`infringement theories. See Realtime Data, LLC v. Packeteer, Inc., No. 6:08-CV-144, 2009 WL
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`2590101, at *6 (E.D. Tex. Aug. 18, 2009) (“With a lawsuit of great complexity, it is all the more
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`imperative to avoid springing new claims on Defendants at a late stage.”).
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`Maxell’s reliance on Thomas Swan & Co. v. Finisar Corp., No. 2:13-CV-178-JRG, 2014
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`WL 12599221, at *2 (E.D. Tex. Apr. 16, 2014) to argue that it has sufficiently narrowed the code
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`is also misplaced. There, the Court found that the plaintiff’s citations—to “9,000 to 15,000 lines
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`of source code”—provided sufficient notice of its contentions. Id. The total volume cited in the
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`entire Swan case—equivalent to a few dozen source code files produced by Apple—pales in
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`comparison to the thousands of files Maxell has cited for just one claim element. Moreover,
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`Maxell has demonstrated that it is capable of citing specific lines of source code by doing so in
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`discovery correspondence. See Simmons Decl. ¶ 5; Michael S Sutton, 2009 WL 9051240, at *3
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`(requiring specific disclosure where patent owner was clearly capable of narrowing the code).
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`Lastly, Maxell’s continued demands for disproportionate source code discovery,
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`including for claim elements that it did not even designate as “software limitations,” does not
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`excuse Maxell from complying with the Patent Rules. This case is in the claim construction
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`phase, and Apple has been unduly prejudiced by Maxell’s failure to disclose its infringement
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`theories on software limitations. Maxell cannot avoid its obligations by asking for more source
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`code (while at the same time complaining that the volume of the produced code is too large to
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`provide specific citations). The Patent Rules require Maxell to disclose its infringement theories
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`with specificity, and Maxell cannot circumvent these rules by requesting more code.
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`V.
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`CONCLUSION
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`Apple respectfully requests that the Court require Maxell to correct the deficiencies in its
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`infringement contentions or preclude Maxell from relying on source code evidence.
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`Case 5:19-cv-00036-RWS Document 129 Filed 11/14/19 Page 10 of 11 PageID #: 5386
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`November 12, 2019
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`/s/ Luann L. Simmons
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`Luann L. Simmons (Pro Hac Vice)
`lsimmons@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center
`28th Floor
`San Francisco, CA 94111
`Telephone: 415-984-8700
`Facsimile: 415-984-8701
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`Xin-Yi Zhou (Pro Hac Vice)
`vzhou@omm.com
`Anthony G. Beasley (TX #24093882)
`tbeasley@omm.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
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`Laura Bayne Gore (Pro Hac Vice)
`lbayne@omm.com
`O’MELVENY & MYERS LLP
`Times Square Tower, 7 Times Square
`New York, NY 10036
`Telephone: 212-326-2000
`Facsimile: 212-326-2061
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`Melissa R. Smith (TX #24001351)
`melissa@gilliamsmithlaw.com
`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
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`Attorneys for Defendant Apple Inc.
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`Case 5:19-cv-00036-RWS Document 129 Filed 11/14/19 Page 11 of 11 PageID #: 5387
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court's
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`CM/ECF system per Local Rule CV-5(a)(3) on November 12, 2019.
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`/s/Melissa R. Smith
`Melissa R. Smith
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`CERTIFICATE OF CONFERENCE
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`On November 4, 2019, pursuant to Local Rule CV-7(h), counsel for Defendants met and
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`conferred with counsel for Plaintiff, and counsel for Plaintiff indicated that Plaintiff is opposed to
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`the relief sought by this Motion.
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`/s/Melissa R. Smith
`Melissa R. Smith
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`9
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