Case 5:19-cv-00036-RWS Document 162 Filed 12/13/19 Page 1 of 9 PageID #: 7012
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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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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`LEAD CASE
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`MAXELL, LTD.’S SUR-REPLY IN OPPOSITION TO APPLE’S MOTION FOR LEAVE
`TO SUPPLEMENT INVALIDITY CONTENTIONS
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`Case 5:19-cv-00036-RWS Document 162 Filed 12/13/19 Page 2 of 9 PageID #: 7013
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`In its Motion for Leave, Apple touted its diligence, noting particularly that it was able to
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`go from “discovering” the Digital Camera Museum website to charting the Casio Camera
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`identified therein in 20 days. Now, however, Apple argues it could not possibly have been
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`expected to have seen the same website in Maxell’s production and charted the same product in
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`five weeks. Apple also initially argued that its diligence was evidenced by the fact that finding
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`information about old Casio Camera products was difficult. But after Maxell showed such
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`representations to be untrue, Apple now says the availability of such information is irrelevant.
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`What all this really shows is that Apple was not diligent. Apple did not take its
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`obligations under the Patent Rules seriously, just has it has not taken its obligations under the
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`discovery rules seriously. If it had, Apple would have identified the website within Maxell’s
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`production and followed the lead, just as it did when it came across the same website months
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`later. Instead, Apple did the bare minimum to satisfy the P.R. 3-4 deadline and actively
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`continued its prior art search afterward, thinking the rules do not apply to Apple and it would
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`supplement its contentions later. That is not a basis for finding good case. Apple should not be
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`granted a second chance to untimely inject new prior art into the case.
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`I.
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`Apple’s Diligence is Belied By Its Own Recitation of the Facts
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`In Reply, Apple asserts that it is “not reasonable” to expect that Apple could have gone
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`from finding the “Digital Camera Museum” website printout in Maxell’s production to charting
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`the Casio Camera within the 5-week period between Maxell’s production and the due date for
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`Apple’s invalidity contentions. But by its own admission, Apple (1) located the “Digital Camera
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`Museum” website, (2) researched the hundreds of products listed to identify the Casio Camera as
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`relevant prior art, (3) found the Casio Camera’s user manual, and (4) analyzed and charted that
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`Case 5:19-cv-00036-RWS Document 162 Filed 12/13/19 Page 3 of 9 PageID #: 7014
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`user manual in less than three weeks.1 See Mot. (D.I. 130) at 3-4 (identifying the website as
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`being “discovered” on October 16 and claim chart being complete November 4). Thus, Apple’s
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`true assertion is that it is “not reasonable” for Apple to have found the website in Maxell’s
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`production and located the actual German website from the screenshots in the additional two
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`weeks. Two weeks, however, is ample time to review a production of less than 4,000 documents
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`and identify leads on prior art within that production. This is particularly true since the time it
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`should have taken to “locate[] the actual German website from the [produced] screenshots” is
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`negligible. The bottom of the produced pages contains the following:
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`Reply at Exhibit 1 (D.I. 159-2). A Google search for “The Digital Camera Museum” brings up
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`the website
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`in question as
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`the first hit. Miller Decl. at ¶2. Moreover, entering
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`“digicammuseum.com” into an internet address bar redirects you to the website in question.2 Id.
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`at ¶3. If Apple had diligently reviewed Maxell’s July 10 production, there is no question it would
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`have had ample time to follow through and include the Casio Camera in its Invalidity
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`1 Apple claims it was able to perform this analysis more efficiently in October because, by then,
`“Apple had acquired significant knowledge about the state of the prior art from months of
`research.” (Reply at 3). This just emphasizes Apple’s failure to timely begin its work on this
`case. Apple has been on notice of the ’493 Patent since at least June 25, 2013 (D.I. 1 at ¶ 59) and
`has had the Complaint since March 2019. It has had time for “months of research” well in
`advance of the P.R. 3-4 deadline. When setting the deadline for invalidity contentions, the
`Eastern District took into account the time needed by a defendant to prepare such contentions.
`Apple provided no reason why it should be given more time than all other defendants under the
`Local Patent Rules, especially when Apple, unlike many other defendants, had the benefit of
`prior invalidity contentions, arguments, and papers from prior Maxell cases where the same or
`related patents were asserted.
`2 Apple’s argument that the website was produced by Maxell “without any accompanying
`explanation” is irrelevant. Apple also did not have “any accompanying explanation” when it
`located the website on its own and deemed it to be something worth following up.
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`2
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`Case 5:19-cv-00036-RWS Document 162 Filed 12/13/19 Page 4 of 9 PageID #: 7015
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`Contentions served on August 14.
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`In its Motion, Apple asserted that its delay was further justified because “try[ing] to
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`locate product information was time consuming because manufacturers like Casio stopped
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`selling these products nearly twenty years ago, literature and specifications were not always
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`archived from so long ago…” and stated that the product manual was only found after “diligent
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`searching.” Mot. (D.I. 130) at 3. After Maxell demonstrated the ready availability of the Casio
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`Camera manual, however, Apple changed course and now asserts that the ease with which the
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`manual could be found is irrelevant because the right question is whether Apple should have
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`found the reference before serving its initial invalidity contentions. This is nonsensical. Of
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`course the alleged difficulty of finding the information (here it is remarkably easy) is relevant,
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`and Apple itself put the availability of the Casio Camera’s user manual squarely at issue when it
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`implied to the Court that such document was difficult to find.
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`The factual circumstances in Hearing Components, Inc. v. Shure, Inc. differ from those
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`here. As an initial matter, the defendant there was seeking leave based on the fact that relevant
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`prior art was produced by the plaintiff three months after Invalidity Contentions had been filed.3
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`No. 9:07-cv-00104-RHC, 2008 WL 11348009, at *1 (E.D. Tex. June 5, 2008). Maxell, however,
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`produced the relevant website before the contentions were due. Moreover, the Court in Hearing
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`Components did hold that defendant’s delay in seeking amendment weighed against granting
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`leave to amend. Id at *2. The Court, however, found the weight to be slight in view of the size of
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`plaintiff’s production and time that may be taken to go through it. Id. Here, Apple does not assert
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`merely that it should be granted leniency because additional time was needed to work through
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`3 Although Apple focused on the prior art that was located in plaintiff’s production, that was not
`the only issue before the Court in Hearing Components. The Court also considered the addition
`of prior art produced by a third party after invalidity contentions were filed and invalidity
`arguments that arose from inventor depositions that were taken after contentions were filed. Id.
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`3
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`Case 5:19-cv-00036-RWS Document 162 Filed 12/13/19 Page 5 of 9 PageID #: 7016
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`Maxell’s production. Even though more than four months had passed between Maxell’s
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`production and Apple’s motion, Apple never pointed to Maxell’s production at all. Rather, Apple
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`asserts that it independently discovered the website in October and is now trying to justify, after
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`the fact, why it did not timely review Maxell’s production. Also of note, in granting defendant’s
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`motion for leave, the Court in Hearing Components ultimately gave weight to the fact that the
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`defendant had pointed to several ways in which addition of the prior art references could be
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`important to its case, which were unchallenged by the plaintiff. Id. As discussed below, Apple
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`has made no such showing here.
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`II.
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`Apple Still Has Not Shown the Casio Camera to Be Important
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`Maxell is not trying to “have it both ways” by arguing that the addition of the Casio
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`Camera reference is both unimportant and prejudicial. Rather, Maxell highlighted the fact that
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`Apple failed to demonstrate the importance of the Casio Camera in view of the invalidity
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`contentions as a whole, including whether the new prior art discloses features not present in the
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`previously identified art, as required under the law. Tech Pharmacy Servs., LLC v. Alixa Rx LLC,
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`No. 4:15-CV-766, 2017 WL 2833460, at *5 (E.D. Tex. Jan. 19, 2017), reconsideration denied,
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`No. 4:15-CV-766, 2017 WL 1319556 (E.D. Tex. Apr. 10, 2017); MacroSolve, Inc. v. Antenna
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`Software, Inc., No. 6:11-CV-287-MHS-JDL, 2013 WL 3833079, at *3 (E.D. Tex. Jul. 23, 2013).
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`All Apple has stated is that it demonstrated the importance and unique strengths of the Casio
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`Camera in its invalidity chart and that it has chosen the Casio Camera as one of its seven
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`references against the ’493 Patent. While the foregoing may show that Apple believes the
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`reference to be important, it does not nothing to explain why the reference is important when
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`considered against the previously identified art. Even when challenged on the issue, Apple still
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`chose not to identify in its Reply even a single feature allegedly disclosed by the Casio Camera
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`that was not present in the previously asserted references.
`4
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`Case 5:19-cv-00036-RWS Document 162 Filed 12/13/19 Page 6 of 9 PageID #: 7017
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`III. Unfair Prejudice Does Not Support Granting Apple’s Motion
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`Ultimately, unable to show diligence or unique importance, Apple is left with an
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`argument that it should be granted leave to amend because the prejudice on Maxell is minimal.
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`Arguing that a lack of prejudice is the trumping factor, however, would render the P.R. 3-4
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`deadline virtually without meaning. Defendants would always be entitled to amend as long as
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`fact discovery was still open. If this was the intent of the Eastern District, it would have set the
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`invalidity contentions deadline to be later in the case. But it did not. It set the deadline early in
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`discovery, prior to claim construction, to ensure that a plaintiff had the possible invalidity
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`arguments before it when developing its case.
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`As Maxell noted previously, courts in this district agree. Specifically, they have held that
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`“[a] lack of prejudice… is not sufficient to demonstrate good cause without more; to hold
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`otherwise would change the showing from one of good cause to one of no prejudice and absolve
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`the movant from a failure based on harm to the opposing party alone.” SEVEN Networks, LLC v.
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`Google LLC, 2:17-cv-442-JRG, Dkt. No. 198, slip copy at 2 (E.D. Tex. June 8, 2018) (citing
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`Grudowski v. Butler Paper Co., 670 F. Supp. 242, 248 (N.D. Ind. 1987) (“By itself a lack of
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`prejudice is not sufficient to sanction deviation from important established procedures.”).
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`Apple brought its motion after the parties exchanged proposed claim constructions and
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`Apple’s motion has been set for argument on the same day as the Markman hearing. Given the
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`timing, Maxell could not have considered the prior art in formulating its claim construction
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`positions. Particularly where there is no good cause, Maxell should not be put at a disadvantage
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`where the delay is the result of Apple’s failure to take Court rules and deadlines seriously.
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`IV. CONCLUSION
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`Apple has not shown good cause for amending its invalidity contentions. Accordingly, its
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`motion should be denied.
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`5
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`Case 5:19-cv-00036-RWS Document 162 Filed 12/13/19 Page 7 of 9 PageID #: 7018
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`Dated: December 13, 2019
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`By:
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`6
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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
`Chicago, IL 60606
`(312) 782-0600
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`Case 5:19-cv-00036-RWS Document 162 Filed 12/13/19 Page 8 of 9 PageID #: 7019
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`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`7
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`Case 5:19-cv-00036-RWS Document 162 Filed 12/13/19 Page 9 of 9 PageID #: 7020
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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 13th day of December, 2019, with a copy of this
`document via the Court’s CM/ECF system.
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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`8
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