Case 5:19-cv-00036-RWS Document 159 Filed 12/06/19 Page 1 of 8 PageID #: 6200
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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’S REPLY IN SUPPORT OF
`MOTION FOR LEAVE TO SUPPLEMENT INVALIDITY CONTENTIONS
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`Case 5:19-cv-00036-RWS Document 159 Filed 12/06/19 Page 2 of 8 PageID #: 6201
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`Apple irrefutably demonstrated its diligence in finding the Casio Camera prior art
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`reference and the reference’s significant importance, and Maxell has failed to show it would
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`suffer any unfair prejudice if Apple is permitted to supplement its Invalidity Contentions.
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`Indeed, Maxell cannot articulate how adding a single prior art reference—a reference which
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`(applying Maxell’s argument) Maxell knew of well before filing this lawsuit—would impact any
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`position it has taken in this case or any of the pending deadlines.
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`Unable to show any prejudice, Maxell argues that Apple should have found the Casio
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`Camera earlier based on Maxell’s July 10 production of a single document that refers to
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`hundreds of cameras in website screenshots, among almost 200,000 pages of documents. But
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`this is nothing more than the type of hindsight argument that could be made with any prior art
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`reference—once you have found it, it is easy to be criticized that you should have found it
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`earlier. That the Casio Camera was included in a list of hundreds of cameras in screenshots
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`Maxell produced does not support any conclusion that Apple should have immediately picked it
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`out of the list, researched it, and appreciated its significance before serving its contentions. To
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`the contrary, Apple diligently searched for prior art and only became aware of the relevance of
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`the Casio Camera after serving its invalidity contentions. Apple’s diligence, the importance of
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`the reference, and the lack of prejudice to Maxell all weigh in favor of granting Apple’s Motion.
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`I.
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`APPLE HAS BEEN DILIGENT
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`The evidence presented in Apple’s Motion demonstrates that Apple diligently searched
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`for prior art, having conducted multiple searches by counsel and search firms, and that its
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`discovery of the Casio Camera after serving its initial invalidity contentions was excusable. D.I.
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`130 at 2-4. Maxell instead argues that Apple should have found the Casio Camera earlier based
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`on Maxell’s July 10 document production and because information relevant to this camera was
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`not difficult to find. See D.I. 148 at 3-6. Maxell is wrong on both points.
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`Case 5:19-cv-00036-RWS Document 159 Filed 12/06/19 Page 3 of 8 PageID #: 6202
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`First, Maxell’s production of screenshots from a German camera website does not
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`demonstrate a lack of diligence by Apple. On July 10, Maxell produced 3,774 documents,
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`totaling 193,586 pages, including 263 documents Maxell re-produced from its previous litigation
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`against ASUSTek. See Simmons Decl., ¶ 2. Buried within these documents was a 17-page
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`compilation of screenshots from the German website, produced without any accompanying
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`explanation or even the usual header or footer with the website’s address. Id., ¶ 3; Ex. 1. The
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`screenshots show a list of 390 cameras, identified by manufacturer and model number only—no
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`features or images of any cameras are disclosed. Id., Ex. 1. On one screenshot, “Casio QV-
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`8000SX (1999)” (the Casio Camera) is listed, among 49 other camera models on the same page.
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`Id. at MAXELL_APPLE0190995. The Casio Camera is not mentioned anywhere else in
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`Maxell’s production, nor is it cited in any of Asus’s claim charts Maxell produced. Maxell
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`asserts that to have been “reasonably diligent,” Apple should have (1) immediately (indeed on
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`July 10, the very day of the production) picked this 17-page compilation of screenshots out of
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`nearly 200,000 pages of documents and surmised its significance, (2) located the actual German
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`website from the screenshots, (3) researched the hundreds of products listed to identify the Casio
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`Camera as relevant prior art, (4) found the Casio Camera’s user manual, and (5) analyzed and
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`charted that user manual, all within the 5-week period between Maxell’s production and the due
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`date for Apple’s invalidity contention, while simultaneously analyzing hundreds of other prior
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`art references and products for all ten Asserted Patents. Maxell’s position is not reasonable.
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`Indeed, in Hearing Components, Inc. v. Shure, Inc., the Court rejected a similar argument
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`and granted defendant’s motion to supplement. No. 9:07-CV-104, 2008 WL 11348009, at *1
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`(E.D. Tex. June 5, 2008). Like Maxell, the plaintiff there argued that its production of the prior
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`art patent three months before defendant sought to supplement its contentions demonstrated
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`Case 5:19-cv-00036-RWS Document 159 Filed 12/06/19 Page 4 of 8 PageID #: 6203
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`defendant’s lack of diligence. Id. The Court disagreed, finding that because the patent was
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`produced “as part of an avalanche of paper and native application data,” the three-month delay
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`was understandable. Id. at *1-2. “[W]hile there was some delay, it was not inordinate” and the
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`“delay [could] be expected when a party conducts a proper investigation into the merits of its
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`potential defenses.” Id. Because “the claim construction hearing ha[d] not yet occurred and trial
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`[was] still seven months away,” and because “discovery [would] not close for more than four
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`months” the Court found “[g]ranting [Defendant’s] motion would permit [Plaintiff] sufficient
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`time to address these new prior art references and invalidity defenses with its experts and prepare
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`for depositions and trial accordingly.” Id. The same is true here—Apple’s delay was not
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`unreasonable and Maxell has ample time to address the new reference.
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`Second, Maxell’s claim that Apple was not diligent because Maxell was able to locate the
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`Casio Camera’s user manual with “a simple Google search” (D.I. 140 at 4) is irrelevant. With
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`the benefit of hindsight—after Apple already provided a claim chart—it is no surprise that
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`Maxell could easily find the documents Apple cited. But the right question is whether Apple
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`should have found the reference before serving its initial invalidity contentions, i.e., without the
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`benefit of the knowledge that it now has—and the answer is no. Locating product prior art is a
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`time-consuming process, particularly for 10 asserted patents and 90 claims. See D.I. 130 at 3.
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`Even if it were reasonable to expect Apple to have located and recognized the significance of the
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`German website from Maxell’s production (it is not), Apple would still have had to research
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`hundreds of cameras to determine the relevance of the Casio Camera. See D.I. 130-1 at ¶¶ 3-6.
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`And while Apple was able to find the Casio Camera within a few weeks of locating the same
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`German website in October, by then, Apple had acquired significant knowledge about the state
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`of the prior art from months of research. See id. Maxell’s argument that Apple could have
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`Case 5:19-cv-00036-RWS Document 159 Filed 12/06/19 Page 5 of 8 PageID #: 6204
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`honed in on the Casio Camera as quickly in July—without the benefit of months of analyzing
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`prior art and without additional details on the Casio Camera—is baseless. Thus, the fact that its
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`user manual can be found now with a Google search is simply a red herring.
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`After months of diligently searching for prior art, Apple found and identified as relevant
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`prior art the Casio Camera—that this discovery occurred in October 2019, after Apple had
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`served its invalidity contentions, was not the result of a lack of diligence and is understandable
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`and excusable. The diligence factor, therefore, favors granting Apple’s Motion.
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`II.
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`THE CASIO CAMERA IS AN IMPORTANT REFERENCE
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`Maxell knows well from Apple’s invalidity chart that the Casio Camera is an important
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`reference. See D.I. 130-4. And its argument to the contrary is not only unsupported but also
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`flies in the face of its simultaneous claim that it would suffer “unfair prejudice” from Apple’s
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`supplementation. D.I. 143 at 7. Maxell “cannot have it both ways. If [Maxell] believes these
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`references are indeed cumulative, not relevant to the validity of the patents-in-suit, or both, it is
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`not readily apparent … how [Maxell] could suffer any prejudice.” e-Watch Inc. v. Apple, Inc.,
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`No. 2:13-CV-1061-JRG-RSP, 2014 WL 12668405, at *2 (E.D. Tex. Dec. 5, 2014).
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`Apple demonstrated the importance and unique strengths of the Casio Camera in its
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`invalidity chart. In response, Maxell disingenuously cites the total number of references
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`disclosed in Apple’s invalidity contentions. But as Maxell well knows, Apple has already served
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`its preliminary election of prior art, and the Casio Camera is one of only seven references—and
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`one of only two products—remaining against U.S. Patent No. 8,339,493. See Simmons Decl.,
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`¶ 4. In view of Apple’s short list of prior art references and the importance of this reference,
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`denying Apple’s Motion to add this important reference would significantly prejudice Apple.
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`III. MAXELL MAKES NO SHOWING OF UNFAIR PREJUDICE
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`Maxell has not, and cannot, articulate any actual prejudice it would suffer from allowing
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`Case 5:19-cv-00036-RWS Document 159 Filed 12/06/19 Page 6 of 8 PageID #: 6205
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`Apple to add one prior art reference to this case. Indeed, under Maxell’s logic, if its July 10
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`production placed Apple on notice of the Casio Camera, then the same document should have
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`provided Maxell notice of the prior art as well. In fact, Maxell has had the German website
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`document for months because the document was originally produced during a prior case that
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`ended over nine months ago. See D.I. 148-1 at ¶ 3 (showing original production number of
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`“ASUS-MAX00019070”); Maxell, Ltd. v. ASUSTek Computer Inc., No. 3:18-cv-01788, D.I. 132,
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`Order of Dismissal (Mar. 4, 2019). Maxell does not contend it would have taken different claim
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`construction or infringement positions in view of this prior art, nor that any pending deadline
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`would need to be postponed. Thus, Maxell has no basis to claim prejudice.
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`Unable to identify prejudice, Maxell cites Seven Networks, LLC v. Google LLC, No.
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`2:17-cv-00442-JRG, 2018 WL 3327927 at *1 (E.D. Tex. July 6, 2018), but Seven Networks
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`supports Apple’s, not Maxell’s, position. There, the defendant had already sought leave for two
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`supplementations when it sought a third. Id. Even in view of these repeated motions, the Court
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`allowed the supplementation of one of the two new references requested by the defendant while
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`reminding the defendant that “[t]he Local Rules and the Patent Rules of the Eastern District of
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`Texas are not mere guidelines.” Id. at *2-3. In doing so, the Court found that diligence was
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`“greatly bolstered by the relative speed with which [the defendant] passed along the production
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`of [prior art information]” after its discovery. Id. The Court also found that because the plaintiff
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`already knew of the reference, any alleged prejudice “will be minimal.” See id. at *2. Here, too,
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`Maxell is not prejudiced. Apple provided a claim chart within days of finding the Casio Camera,
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`and Maxell—according to its own arguments—has known about this prior art from before it sued
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`Apple. This lack of prejudice strongly favors granting Apple’s Motion.
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`IV. CONCLUSION
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`Apple respectfully requests that the Court grant its motion for leave to supplement.
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`Case 5:19-cv-00036-RWS Document 159 Filed 12/06/19 Page 7 of 8 PageID #: 6206
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`December 6, 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 159 Filed 12/06/19 Page 8 of 8 PageID #: 6207
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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 December 6, 2019.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`7
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