Case 5:19-cv-00036-RWS Document 198 Filed 02/19/20 Page 1 of 11 PageID #: 8543
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`Case No. 5:19-cv-00036-RWS
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`Plaintiff,
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`LEAD CASE
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`Defendant.
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.’S OPPOSED MOTION TO COMPEL1
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`1 In exchange for an extension in response time to a discovery letter sent by Maxell, Ltd. on December 18, 2019,
`Apple agreed to an expedited briefing schedule of three business days with respect to any resultant Motion to
`Compel. This applies to all issues herein except those related to Licenses, Marketing Surveys, and Prior Litigation
`Documents.
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`Case 5:19-cv-00036-RWS Document 198 Filed 02/19/20 Page 2 of 11 PageID #: 8544
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`Despite this Court’s clear discovery rules, and an order from the Court compelling Apple
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`to comply with its discovery obligations, Maxell is again in the unfortunate place of having to
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`seek the Court’s help. In its prior Motion to Compel, Maxell expressed concerns about Apple’s
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`discovery misconduct, including Apple’s delayed document production, such that Maxell would
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`be left with little time to review dense technical and financial material Apple was deliberately
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`withholding. Maxell’s concerns have sadly come true.
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`Apple’s discovery misconduct is not limited to a failure to produce materials, but also to
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`a pattern of abusing this Court’s discovery rules and procedures. For its P.R. 3-4 disclosures,
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`Apple produced the bare minimum it unilaterally deemed “sufficient to show” the operation of
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`the accused functionalities, relying primarily on a limited source code production; thereafter,
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`Apple took the stance that this was the extent of its obligation in this case. Every time Maxell
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`requested production of additional, obviously relevant materials, Apple objected on the basis the
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`requests were not proportional to the needs of the case (albeit never explaining why) and
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`demanded unprecedented, detailed explanations for why the materials should be produced (often
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`on a document-by-document basis). Even then, Apple limited production (if it happened at all) to
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`just a small subset of the relevant materials.
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`Apple’s misconduct also includes delaying repeated requests for meet and confers in a
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`plain rejection of the Discovery Order. For example, Maxell made a written request on January
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`27 for Apple to produce 11 relevant licenses. On January 31, Apple stated Maxell had not
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`supported its assertion of relevance and demanded additional information, which Maxell
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`provided the next day along with a request to meet and confer. Apple responded on February 3
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`and again demanded additional information, which Maxell yet again provided on February 5,
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`again with a request to meet and confer. Both times, Apple ignore the requested meet and confer.
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`Case 5:19-cv-00036-RWS Document 198 Filed 02/19/20 Page 3 of 11 PageID #: 8545
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`Under the Discovery Order, Apple should have met and conferred and provided Maxell a final
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`position by February 10. Yet, on February 13, Apple stated that it was looking into the issue,
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`provided no detail about what it would provide (or not), and put off a meet and confer until its
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`“investigation” was complete. Unfortunately, Apple treats the meet and confer requirement much
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`as it has the rest of its discovery obligations, with a refusal to comply.
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`I. Deficient Categories of Materials
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`Technical Documents. After months of back and forth regarding Apple’s technical document
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`production, Apple represented it had “conducted a reasonable investigation for the accused
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`functionalities and produced all responsive technical documents that could be located after a
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`reasonable search.” Ex. A (Excerpt of 1/31/2020 Letter). Although Apple’s representation would
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`appear to close the matter, Maxell’s review of Apple’s productions, source code, and publicly
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`available information indicates that relevant technical documents have in fact not been produced.
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`The sheer volume of materials that Apple claims do not exist raise questions into whether such
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`investigation was sufficient. Examples of such materials include:2
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`• Complete Schematics. Apple has not produced schematics for 29 accused products.
`Certain produced schematics are incomplete excerpts. For example,
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`• Documents Describing Cellular Functionalities. Relevant to the ’193 Patent, Maxell
`requested documents regarding how signals transmit through different components to
`send and receive signals to a cell tower. Apple stated
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`. Apple clearly has additional, relevant documentation.
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`2 Maxell provides at least one basis for its belief that additional documents exist in this Motion. Additional support
`for its belief is included in Exhibit B.
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`Case 5:19-cv-00036-RWS Document 198 Filed 02/19/20 Page 4 of 11 PageID #: 8546
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`•
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` Code. A datasheet produced by third-party
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`Apple has not produced code or settings information that it uses to configure/integrate
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`the asserted ’193 Patent.
`• Requirements Specifications. Apple produced
`, but none it provided to
`. Such documents exist according to, for example,
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`• Testing Documents. Apple produced nothing describing testing specifications or results
`for a majority of the accused functionalities (e.g., performance of open loop power
`control and inner loop power control as required by WCDMA standards, FaceTime, Low
`Power Mode, Siri features (Announce Calls, VoiceOver), AirDrop, Bluetooth pairing,
`unlocking via Bluetooth, Power Reserve Mode, Express Transit, Shutdown and boot-up
`procedures). Testing documents must exist based on, for example,
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`•
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`Apple produced
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`, but not for the
` in the iPhone 6S Plus, iPhone 6s, iPhone SE, iPad 5th generation (WiFi), iPad 5th
`generation (WiFi + Cellular), or iPod Touch 5th generation.
`• Technical Specifications
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`. Beyond publicly available user guides,
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`webpages, and
`describing the design, development, or operation of accused functionalities low power
`mode, implementation of Siri, Paired Unlock, Announce Calls, Location calculation by
`Maps, Open-loop power control, Closed-loop power control, Watch Application, Maps
`application, VoiceOver and Do Not Disturb, FaceTime functionality, Express Transit,
`Power Reserve Mode, Bluetooth functionality relevant to ’586 and ’438 Patents, and
`shutdown and boot-up for iOS and watch OS products.3
`• Camera Module Specifications. Apple produced documents corresponding only to
`image sensors in the cameras, not hardware specifications for the camera modules,
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`• Source Code. Apple stated its Source Code production would be complete on February
`12. Maxell is reviewing Code the week of February 17, but based on Apple’s February 6th
`interrogatory response, it appears Apple still has not produced the following Code (or has
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`3 Apple has previously stated tha
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`.” Ex. A (excerpt of 1/23/20 Meet and
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`Confer Tr. at11:3-9). It is difficult to believe that
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`Case 5:19-cv-00036-RWS Document 198 Filed 02/19/20 Page 5 of 11 PageID #: 8547
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`not identified which produced code relates to the noted operating systems):
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`Non-Source Code Documents on Source Code Computer. Maxell agreed to heightened
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`restrictions governing production of “Source Code,” including to review code on standalone
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`computers at Apple’s counsel’s offices during business hours and to printing restrictions of no
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`more than 250 pages total. D.I. 45 at 11(c). The agreement protects Source Code only, but Apple
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`produced over a thousand non-source code documents on the Source Code computers,
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`improperly restricting Maxell’s ability to access, review, and use such materials.
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`Maxell first raised this issue in September and again in December, at which point it
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`provided specific examples and requested their production. They included
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`highly relevant and directly addressing claimed functionality. Apple responded it was proper for
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`the documents to be on the Source Code computer because
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`. Ex. A (Excerpt of 1/15/2020
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`Case 5:19-cv-00036-RWS Document 198 Filed 02/19/20 Page 6 of 11 PageID #: 8548
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`Letter).
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`. Apple
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`collected materials from its Source Code repositories and placed them on the Source Code
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`computers so that the materials could be reviewed subject to the heightened restrictions.
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`qualify as Source Code for purposes of this case and the governing Protective Order.
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`Apple ultimately agreed to “investigat[e] the feasibility of separately producing the
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`documents,” but complained that the “process of doing so is time and labor intensive because
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`every document must be located, collected, and reviewed for source code.” Ex. A (Excerpt of
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`1/31/2020 Letter). To try to buy itself time, Apple requested Maxell prioritize the production.
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`Maxell declined. Apple asserts this “belies any claim that Maxell needs these documents” and
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`“confirms that this exercise is merely another manifestation of Maxell vexatiously litigating this
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`case.” Id. Not so. To “prioritize” requires Maxell to send attorneys cross-country to search for
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`and review documents under the improper heightened restrictions—i.e. to suffer the exact
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`prejudice it seeks to avoid. Apple, on the other hand, can do this without any such restrictions.
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`Apple has now started producing some of the documents.4 But this does not fix the issue.
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`Apple produced some of the spreadsheets as PDFs, which are virtually impossible to read. See
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`Ex. C (Excerpt of produced spreadsheet). Because of the illegibility, Maxell requested the
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`document be produced in native format. Apple refused, stating (inaccurately):
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`After making the documents available for inspection
` on the source code computer, we have produced, and continue to produce, the
`so-called “non-source code” documents in the ordinary course. Thus, these documents
`have already been produced in two different formats and there has been no refusal to
`produce anything. If I am missing some requirement to produce these documents a third
`time in yet another format, please let us know.
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`Ex. A (Excerpt of 2/10/2020 email). Maxell simply seeks the ability to review Apple’s
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`4 Notably, just two of the requested spreadsheets accounted for 134 produced pages and thus would have taken up
`53% of Maxell’s total allotted printouts from the Source Code computer.
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`Case 5:19-cv-00036-RWS Document 198 Filed 02/19/20 Page 7 of 11 PageID #: 8549
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`documents free of improper restrictions. Apple’s obstructive discovery should not be permitted.
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`Forecast Documents. The Court ordered Apple to respond to Maxell’s Interrogatory No. 9,
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`which requests facts and documents related to sales forecasts and projections for the accused
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`categories of products. D.I. 126 at 10. Apple has now produced
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`. 5 It strains belief Apple has only
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`Thus, Apple’s response and production (even after supplementation) remains incomplete.
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`Licenses. The Court also ordered Apple to respond in part to Maxell’s Interrogatory No. 3 by
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`identifying and providing certain information related to patent licenses or agreements related to
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`the Accused Products. In response, Apple identified roughly
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` agreements it contends “relate
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`to functionality accused by Maxell in its Infringement Contentions.” Maxell requested 11
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`additional agreements,7 explaining
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`they are relevant because
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`they relate
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`to accused
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`functionalities or establish Apple’s licensing policies for the accused products. For example,
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`prior to entering into a license agreement, HTC sued Apple for infringing U.S. Patent Nos.
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`7,716,505 and 7,765,414, which recite claims directed to power management similar to the
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`asserted ’794 Patent. Similarly, ZiiLabs asserted patents against Apple related to image data
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`processing in the accused products, thus implicating the same ISP components and their
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`functionality at issue for the asserted ’991 and ’493 Patents. Thus, the resultant licenses relate to
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`accused functionalities. While Apple may point to the number of agreements it produced to
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`argue it discharged its discovery obligations, volume does not equate to sufficiency. The Court
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`5 Apple’s current interrogatory response only identifies
`, though Maxell expects supplementation to reflect recent productions shortly.
`6 See, e.g., https://9to5mac.com/2019/11/25/iphone-12-5g-demand/ (stating “Apple is reportedly telling its supply
`chain partners to expect in excess of 100 million orders for the iPhone 12 next year….”).
`7 The agreements are with Immersion Corp., InterDigital, Inc., HTC Corp., Valencell Inc., Imagination
`Technologies, ZiiLabs Inc., Ltd., Kudelski Group, Wisconsin Alumni Research Foundation, Network-1
`Technologies, Inc., InterTrust Technologies Corp., and Mobile Telecommunications Technology LLC.
`6
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`Case 5:19-cv-00036-RWS Document 198 Filed 02/19/20 Page 8 of 11 PageID #: 8550
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`did not limit the scope of agreements Apple had to identify in response to Interrogatory No. 3
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`and Apple admits it did not produce all agreements related to the Accused Products. Even so,
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`Maxell requested production of only 11 agreements (out of surely hundreds that were not
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`produced) that Maxell’s research shows exist and are relevant. Apple should be held to the
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`Court’s prior Order and be required to produce this limited scope of additional materials.
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`Marketing Surveys. Maxell raised the lack of marketing materials in its first motion to compel,
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`and Apple still has not completed its production.
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`. Maxell
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`requested production of the
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` for the relevant timeframe, with no confirmation that
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`the documents will be produced or do not exist. An
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`produced. Maxell received no timely response to its inquiry whether additional such documents
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`exist. Survey documents go directly to the value of the accused functionalities.
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`Prior Litigation Documents. Given the incomplete nature of Apple’s production, as outlined in
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`part above, Maxell requested certain materials related to damages and infringement of accused
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`products in litigations relevant to issues present in this case, with overlapping products, features,
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`functionalities, or positions.8 Such documents will have information regarding the design,
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`operation, and value of accused functionalities and components.
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`The end of fact discovery is near. Yet, Apple continues to withhold discovery. Even if
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`Apple were to produce everything now, Maxell has been prejudiced by not having had the
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`benefit of access to relevant discovery in a timely manner. Maxell requests that Apple end its
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`misconduct and the Court compels Apple to do so.
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`8 Maxell has requested such materials from the cases against Apple brought by VirnetX, ZiiLabs, HTC, Wisconsin
`Alumni Research Foundation, Imperium IP Holdings, Kodak, and CalTech.
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`Case 5:19-cv-00036-RWS Document 198 Filed 02/19/20 Page 9 of 11 PageID #: 8551
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`Dated: February 14, 2020
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`By:
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`8
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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
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`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 198 Filed 02/19/20 Page 10 of 11 PageID #: 8552
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`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`CERTIFICATE OF CONFERENCE
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`I certify that Plaintiff Maxell, Ltd. has complied with the requirements of Local Rule CV-
`7(h) and the Discovery Order governing this case. Specifically, with respect to the issue of
`technical documents, non-source code documents on the source code computer, and forecasts,
`Maxell sent Apple a written statements outlining its deficient discovery on December 18, 2019.
`The parties held a telephonic meet and confer on January 23, 2020, which was attended by lead
`and local counsel for both parties. On January 15 and January 31, 2015, Apple provided a written
`response to Maxell’s December 18 letter stating its position on the deficient materials identified
`by Maxell. For the reasons stated in its Motion, Maxell and Apple were not able to reach
`agreement on the items identified in this motion.
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`With respect to the issue of licenses and prior litigation documents and marketing
`surveys, Maxell sent Apple a written statements outlining its deficient discovery on January 27
`and 28, 2020. Although the parties have exchanged emails regarding the licenses and prior
`litigation documents, and Maxell made multiple requests for a meet and confer, Apple did not
`provide its availability for a meet and confer or provide a written response stating whether it
`would or would not produce the requested materials within the timeframe set forth in the
`Discovery Order. On February 13 (more than 14 days after service of Maxell’s written
`statement), Apple stated it was “still working through some issues regarding the documents
`mentioned in your below email. We hope to have more information early next week and any
`meet and confer before that would be premature.” Given Apple’s refusal to address the issues
`within the time set forth in the Discovery Order, Maxell proceeded with its motion.
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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`/s/ Geoff Culbertson
`Geoff Culbertson
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`Case 5:19-cv-00036-RWS Document 198 Filed 02/19/20 Page 11 of 11 PageID #: 8553
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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 14th day of February 2020, with a copy of this document
`via electronic mail.
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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