Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 1 of 10 PageID #: 8516
`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 1 of 10 PageID #: 8516
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE EASTERN DISTRICT OF TEXAS
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`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`v.
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`APPLE INC .,
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`Plaintljf
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`Defendants.
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`
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`Case No. 5:19-cv-00036—RWS
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`JURY TRIAL DEMANDED
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`JOINT NOTICE
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`Pursuant to the Court’s Order dated January 16, 2020 (Dkt. 186), Plaintiff Maxell, Ltd.
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`(“Plaintiff’ or “Maxell”) and Defendant Apple Inc., (“Defendant” or “Apple”) hereby file this
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`Joint Notice regarding the status of Apple’s source code production. The parties conducted a
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`meet and confer call on January 23, 2020 on which source code issues were discussed. Lead and
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`local counsel were present on the call for both parties. The parties’ positions are stated herein:
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`I.
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`Production Of Source Code And Supplemental Infringement Contentions
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`Maxell’s Position: Maxell informed Apple that it will supplement its infringement
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`contentions within 30 days of Apple representing and Maxell verifying that all the relevant
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`source code has been made available for inspection. During the meet and confer call and in
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`subsequent correspondence (including in Apple’s portion of this Notice below), Apple has
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`confmned that its source code production was and continues to be incomplete, including with
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`respect to core accused functionalities. For example, Apple still has n_ot produced source code
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`for iPhone 11, iPhone 11 Pro, iPhone 11 Pro Max. Further, Apple still has not produced
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`

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`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 2 of 10 PageID #: 8517
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`_ for watchOS 5.0 and 6.0. See Apple’s Interrogat01y Response to Interrogatory
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`No. 14.1 Similarly, Apple has still not produced— for iOS 13.0, watchOS
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`5.0, and 6.0. See id. This despite the fact that Apple has represented in this case that “the most
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`accurate and complete information about how Apple products produce ringtones, VoiceOver,
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`and Siri notifications is source code, including, for example,—
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`Despite the clear relevance of these fimctionalities to Maxell’s infringement contentions
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`and Maxell raising these deficiencies with Apple on multiple occasions, the deficiencies remain.
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`Thus, Apple’s continued representation that it complied with P.R. 3-4 by “produc[ing] technical
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`documents and source code sufficient to determine the operation of the accused fimctionalities. ..
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`in August 2019” is simply a fallacy. By its own admission, Apple has yet to fully comply with
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`P.R. 3-4 and is hiding behind the “sufficient to determine the operation” language. Further, in
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`August 2019, Apple did not make available for inspection source code for- for any of
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`the watch products,2_for any of the accused products, 3 and- for various
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`models.4 As these examples show (and there are many more) Apple failed miserably to comply
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`with P.R. 3-4,5 in some instances completely failing to produce source code or relevant versions
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`of the accused operating system. For this reason alone, Apple’s motion to compel was premature
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`and is moot.
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`watchOS 5.0 and 6.0 is executed on Apple Watch model nos. A1803. A1802 A1817. A1816 A1758.
`1
`A1757 A1859. A1858. A1861. A1860. A1978. A1977. A1976. A1975. A2095. A2094. A2093. A2092.
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`2
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`d—was not produced for watchOS 1.0. watchOS 2.0. watchOS 3.0. and watchOS 4.0. which15
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`execute on at east Apple Watch model nos. A1554. A1553. A1803. A1802. A1817. A1816. A1758. A1757.
`A1859. A1858. A1861. and A1860
`3 —was not produced for any of iOS 7-12 or watchOS 1-4
`4
`108 7.0-9 lS executed on iPhone 68 Plus. iPhone 68. iPhone 6 Plus. iPhone 6. iPhone SE. iPhone 55. iPhone
`5C. and additional accused modes of iPads.
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`Indeed. Apple still has not even produced schematics for all of the Accused Products. which would be
`5
`necessary to comply with the requirements of PR. 3-4.
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`

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`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 3 of 10 PageID #: 8518
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`Regardless of the number of files produced (an issue Apple has focused on instead of
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`substance), Apple has failed to produce relevant code related to accused products and
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`functionalities. Although such source code should have been produced at the outset of this
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`litigation in accordance with the Local Patent Rules, Apple continuously refused to produce
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`specific code until Maxell identified it with what Apple deemed to be adequate specificity (a
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`difficult undertaking for Maxell not knowing what source code might exist). Even after Maxell
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`identified specific source code that should exist but that had not been produced, Apple’s
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`production has taken months and then was produced in a manner in which Maxell could not
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`determine which source code files related to which products.6 Further, the source code for the
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`“recently released products,” which code Maxell requested in September, ahnost 5 months ago,
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`still hasn’t been provided. Apple now states its source code production will be completed by
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`February 12, 2020, which is 6 months after Apple’s source code production should have been
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`complete. 7 Further, Apple has previously represented that its source code production was
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`complete only for Maxell to inspect the code at significant cost8 and find continuing deficiencies
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`related to the accused fimctionality.9
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`After expending significant time and resources to conduct a review of this incomplete source code. Apple
`6
`required Maxell to propound an additional interrogatory to obtain information necessary to understand Apple‘s
`source code production. Apple then waited the full response period prior to responding to the interrogatory with the
`necessary information.
`7
`Instead of cherry-picking source code files to produce. Apple should have just produced the full source
`code for each accused product as Maxell originally requested. This would have clearly been the least burdensome
`approach for Apple and the most efficient with respect to getting the source code timely produced. Instead, Apple
`has chosen a course which has hampered a meaningful review by Maxell and caused both parties to needlessly incur
`substantial costs not just reviewing source code but also addressing deficiencies between counsel and with the Court.
`8
`Notably. Maxell had discussions with Apple’s counsel before beginning its source code review regarding
`the substantial cost associated with source code review. Maxell requested that Apple confirm its source code
`production was complete so that Maxell would not needlessly incur substantial cost associated with source code
`review only to determine that it could not meaningfully review the code made available or need to return to
`complete its review. Apple’s misconduct has therefore caused Maxell to needlessly incur substantial costs that
`could have been easily avoided.
`9
`Apple states that Maxell has identified “certain source code files" as missin when they had been
`previously produced. This was the case for two instances. -
`. Apple fails to mention
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`

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`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 4 of 10 PageID #: 8519
`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 4 of 10 PageID #: 8519
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`Maxell is hopeful, though not confident based on the history of this case, that Apple’s
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`source code production will in fact be completed by February 12 and no motion to compel will
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`be necessary. Maxell, however, reserves the right to bring such a motion if its review of Apple’s
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`source code after February 12 reveals such production to remain deficient. Such reservation is
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`particularly warranted in View of Apple’s representations of completeness in the past, which
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`Maxell has found to be inaccurate, and Apple’s ongoing position that it will only produce
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`additional code if identified with specificity by Maxell. We trust that Apple’s most recent
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`representation is accurate and that Apple has (or will by February 12) finally produced all
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`relevant code (and not just those gaps in the code that Maxell has been able to identify as
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`examples with specificity). Apple is obviously best positioned to identify relevant source code,
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`and that it has placed the burden on Maxell (who is not familiar with what code even exists) to
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`identify missing code with specificity is nonsensical and contrary to the Local Rules. Maxell’s
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`ability in this regard is obviously limited. Maxell can only make such identifications based on its
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`review of the source code that is produced, including the code that remains to be produced by
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`February 12.
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`In addition to Apple’s continuing source code deficiencies, there are numerous other
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`discovery deficiencies that Apple has not cured, which directly impact Maxell’s ability to
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`meaningfully review Apple’s source code production as also touched upon during the last
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`hearing before the Court. These obviously also impact Maxell’s ability to determine which
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`source code is ultimately to be included within its infringement contentions. Such deficiencies,
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`that Maxell had previously identified these files as missing. Then in a subsequent serial production. Apple made
`these files available amongst additional newly produced source code files without identifying or explaining what
`“new" files have been produced. where they have been produced. and/or without supplementing their interrogatory
`responses. Each time. however. Apple has made a serial production Maxell has incurred costs to review this code
`and identified additional deficiencies to Apple. For these two files. Maxell thought they continued to be missing but
`withdrew its request when Apple identified the locations where Apple made the files available.
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`

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`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 5 of 10 PageID #: 8520
`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 5 of 10 PageID #: 8520
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`including Apple’s production of technical documents, license agreements, and non-source code
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`technical documents Apple improperly produced on the source code computer, were also
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`discussed on the parties’ most recent meet and confer and are likely to be the subject of an
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`unfortunate but necessary motion to compel. 1°
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`Apple’s Position: Pursuant to PR. 3-4, Apple produced technical documents and source code
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`sufficient to determine the operation ofthe accused fiJnctionalities, including-
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`— in August 2019 after a reasonable investigation based on Maxell’s initial
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`infringement contentions. That this production did not include every possible source code file
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`and every possible technical document that pertains to every unobvious facet of Maxell’s
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`infringement contentions is not a surprise; Fed. R. Civ. P. 26 and PR. 3-4 do not require such a
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`scorched-earth investigation—overturning every rock and interviewing every engineer in the
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`company, to collect, review, and produce every bit of source code and every document that
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`Maxell decides is “relevant” and calls for Apple to produce. Indeed, this Court rejected such a
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`View when it denied Maxell’s motion to compel Apple to produce this information with its July
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`Initial Disclosures. That Apple has asked Maxell for clarification as to some of its requests is
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`eminently reasonable. Indeed, many of Maxell’s requests have been for source code that Apple
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`has already produced, doesn’t exist, or have been so vague that Apple cannot understand the
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`specific source code that Maxell actually seeks or its relevance to Maxell’s infringement
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`Apple takes issue with Maxell’s request of seeking inspection of each of the accused products “regardless
`1°
`of whether there are any differences relevant to Maxell’s infringement allegations.“ But Apple created this problem.
`Maxell remains open to the parties agreeing on a representative product and has served discovery requests to
`confirm that certain accused products frmction the same way relative to the infiinging frmctionality. Yet. Apple
`denied all these discovery requests. Further. Apple identified hundreds of versions of operating systems in its
`interrogatory response. while producing source code for fewer versions. To the extent that Apple agrees that there
`are no meaningful diflermces relevant to the infringing functionality for certain accused products and supplements
`its discovery responses to reflect this. Maxell is willing to narrow its request for inspection to only such products.
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`

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`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 6 of 10 PageID #: 8521
`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 6 of 10 PageID #: 8521
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`contentions. Maxell has also sought source code for claim limitations for which it did not rely on
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`PR. 3-1(g) and did not label as a “software” limitation, giving Apple no prior signal whatsoever
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`that Maxell sought source code for it. Moreover, Maxell’s citation to thousands of source code
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`files, including directories containin-, in its October 15, 2019 “supplemental
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`infringement contentions” belies any claim from Maxell that the state of Apple’s source code
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`production was so insufficient as of the PR. 3—4 compliance date that Maxell could not abide by
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`its obligations lmder P.R. 3-1(g) in any respect.
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`Notwithstanding that Maxell’s post-PR. 3-4 requests for source code are neither relevant
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`nor proportional to the needs of the case, Apple has satisfied the vast majority of those requests
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`at great burden and expense by producing— As a result, as of
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`the date of this Notice, Apple has produced— in this case.
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`The only requests that Apple has yet to satisfy include those for recently released—products
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`(which weren’t formally added to this case until November) and for which Maxell had not
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`sufficiently identified the specific code it was seeking. Maxell has now clarified those requests
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`at Apple’s urging, Apple is investigating those clarified requests and, to the extent code is
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`located, Apple aims to make such code available for Maxell’s review by no later than February
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`12, 2020.
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`In its continuing effort to use discovery as a litigation weapon and to hide the ball
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`regarding its true infringement contentions, Maxell has adopted a typical plaintiff’s tactic of
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`making serial claims that Apple’s source code production is “deficient,” thereby delaying its P.R.
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`3—1(g) compliance. The true goal of Maxell’s serial requests is made most clear by its conduct in
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`this case and its recent discovery demands. For example, Maxell has made repeated claims that
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`certain source code files were “missing” when, in fact, they had been produce long ago and
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`

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`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 7 of 10 PageID #: 8522
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`would have been readily identified had Maxell taken the time necessary to review the enormous
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`volume of code that it has demanded be produced. Similarly, tacitly acknowledging that Apple
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`will have satisfied by February 12 all of the source code “deficiencies” that Maxell has alleged,
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`Maxell now claims as of February 1 that its “ability to meaningfully review Apple’s source code
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`production” is “directly impacted” by Apple’s alleged failure to produce certain patent licenses
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`that Maxell believes exist regarding settlements of other, unrelated patent disputes. (See
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`Maxell’s Position, above.)
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`Maxell also refers to so—called “non-source code” technical documents that it
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`mischaracterized as “improperly produced on the source code computer.” In fact, these files
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`were maintained in Apple’s source code repositories in the ordinary course of business and,
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`therefore, properly made available on the source code computer exactly “as they are kept in the
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`usual course of business.” See, e.g., Rapp v. Maxim Healthcare Servs., Inc., No. 4:13-CV-51,
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`2014 WL 5341872, at *2 (ED. Tex. Sept. 30, 2014). Moreover, many of these so-called “non-
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`source code” docrunents actually contain or refer to source code and their production in the
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`ordinary course, outside the source code computer, would be contrary to the requirements of the
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`protective order in this case. Notwithstanding the above, and as an accommodation to Maxell,
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`Apple agreed to investigate what Maxell has referred to as “non-source code” documents and
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`produce those documents outside the source code computer to the extent they do not, in fact,
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`include any references to code. In an effort to expedite this very labor intensive process, Apple
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`asked that Maxell identify any documents or class of documents that Maxell considered high
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`priority. Most telling of Maxell’s true intentions, Maxell declined to do so. This belies any
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`claim that Maxell needs these documents to prepare its case and confirms that this exercise is
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`merely another manifestation of Maxell vexatiously litigating this case.
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`

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`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 8 of 10 PageID #: 8523
`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 8 of 10 PageID #: 8523
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`Confirming Maxell’s scorched earth approach to source code production, in a another
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`transparent attempt to impose unnecessary discovery expenses on Apple, Maxell has just this last
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`Friday (January 31), demanded that Apple make available for inspection every single accused
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`product, each with every compatible version of accused operating systems. Taken literally, this
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`request seeks inspection of ahnost 4,000 product/operating system combinations, regardless of
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`whether there are any differences relevant to Maxell’s infringement allegations. Like its many
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`unnecessary source code requests, such a demand can have no legitimate goal other than to
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`impose expense and burden on Apple.
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`With only eight weeks remaining in fact discovery, the time for Maxell to comply with
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`P.R. 3-1(g) has long passed. If Maxell fails to supplement its infringement contentions within 30
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`days of Apple addressing the handful of open source code issues, Apple expects it will be
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`necessary to seek the Court’s assistance in requiring Maxell to meaningfully comply with its
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`discovery obligations and PR. 3-l(g).
`
`Dated: February 3, 2020
`
`/s/ Jamie B. Beaber
`
`/s/ Luann L. Simmons
`
`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
`
`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
`
`Xin—Yi Zhou (Pro Hac Vice)
`vzhou@omm.com
`Anthony G. Beasley (TX #24093882)
`tbeasley@omm.c0m
`O’MELVENY & MYERS LLP
`
`400 S. Hope Street
`Los Angeles, CA 90071
`
`

`

`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 9 of 10 PageID #: 8524
`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 9 of 10 PageID #: 8524
`
`Baldine B. Paul
`
`Tiffany A. Miller
`Saqib Siddiqui
`Bryan Nese
`William J. Barrow
`
`Clark S. Bakewell
`
`Alison T. Gelsleichter
`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
`cbakewell@mayerbrown.com
`agelsleichter@mayerbrown.com
`
`Amanda K. Streff
`
`MAYER BROWN LLP
`
`71 S. Wacker Drive
`
`Chicago, IL 60606
`(312) 782-0600
`astreff@mayerbrown.com
`
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
`
`Marc J. Pensabene (Pro Hac Vice)
`mpensabene@omm.com
`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
`
`Bo Moon (Pro Hac Vice)
`bmoon@omm.com
`O’MELVENY & MYERS LLP
`
`610 Newport Center Drive, l7tll Floor
`Newport Beach, CA 92660
`Telephone: 949-823-6900
`Facsimile: 949-823-6994
`
`Melissa R. Smith (TX #24001351)
`melissa@gilliamsmithlaw.com
`Bobby Lamb (TX #24080997)
`wrlamb@gillamsmithlaw.com
`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`
`Counselfor PIaintiijaerI, Ltd.
`
`Attorneys for Defendant Apple Inc.
`
`

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`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 10 of 10 PageID #: 8525
`Case 5:19-cv-00036-RWS Document 196 Filed 02/06/20 Page 10 of 10 PageID #: 8525
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record who are deemed to have consented to electronic
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`service are being served this 3rd day ofFebnlaly, 2020, with a copy of this document via electronic
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`mail.
`
`/s/ Jamie B. Beaber
`
`Jamie B. Beaber
`
`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`The undersigned certifies that the foregoing document is authorized to be filed lmder seal
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`pursuant to the Protective Order entered in this case.
`
`/s/ Jamie B. Beaber
`
`Jamie B. Beaber
`
`10
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`