Case 5:19-cv-00036-RWS Document 206 Filed 03/03/20 Page 1 of 10 PageID #: 8621
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`
`
`Plaintiff
`
`Civil Action NO. 5:19-cv-00036-RWS
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.’S RESPONSE TO
`MAXELL LTD.’S MOTION TO COMPEL1
`
`
`
`1 Pursuant to the parties’ agreement, Apple responded on an expedited basis to the issues Maxell
`raised in its December 18, 2019 letter. D.I. 199. Apple now supplements that response to
`address the remaining issues raised in Maxell’s motion to compel (D.I. 197). For the Court’s
`convenience, Apple combined its preliminary response and the present supplement in a single
`document.
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 206 Filed 03/03/20 Page 2 of 10 PageID #: 8622
`
`
`
`Continuing in its unabashed, scorched-Earth approach to discovery, Maxell’s motion
`
`exposes the true motive behind that approach: to trash Apple before this Court at every
`
`opportunity. Indeed, Maxell filed its motion to compel only after willfully ignoring this Court’s
`
`standing order requiring it to actually meet and confer on each and every purported “dispute” it
`
`now raises. And its only excuse for ignoring this Court’s standing order is that, for some of the
`
`documents at issue, Apple requested a couple of days to investigate so it could present a definite
`
`response. Indeed, the majority of the documents Apple was investigating have now been
`
`produced. Even as to those issues that the parties properly discussed, Maxell now demands
`
`documents that Apple has already provided or is in the process of providing, or that Maxell never
`
`specifically requested before filing its motion, but that Apple will nonetheless be producing.
`
`The chaotic state of Maxell’s demands encapsulates its approach to discovery: vaguely
`
`alleging discovery deficiencies without specifying any issues for the parties to resolve, then
`
`running to court with aspersions of nefarious intent and misconduct. This contravenes the stated
`
`goal of “maximiz[ing] the best use of the Court’s limited resources.” 6/3/16 Standing Order re
`
`Meet and Confer. Accordingly, Maxell’s motion should not only be denied, but Maxell should
`
`be sanctioned for its failure to respect the Court’s standing order. Id.
`
`Technical Documents:
`
`• Schematics: Apple has produced schematics covering nearly all the accused products, has
`actually produced several of the schematics that Maxell claims are missing (APL-MAXELL:
`00258023, 00257882, 00123893, 00393816, 00258121, 00123321), and has not intentionally
`withheld any. Were Maxell to have identified to Apple which schematics it believed were
`missing before it filed its motion, Apple could have investigated and the parties could have
`dispensed with this “dispute.” But Maxell did not, and its previous, vague reference to
`“schematics for all products,” along with other equally vague and non-specific complaints
`was not sufficient for Apple to realize any were missing from the set it produced after a
`reasonable search. Ex. D, 2/5/20 Beaber Ltr. at 1. Instead, Maxell avoided any meaningful
`meet and confer, and identified allegedly missing documents only for the first time in this
`motion. This belies its claimed need for the documents and exposes its motive: to unfairly
`and incorrectly portray Apple as failing to comply with discovery. A 5-minute meet-and-
`
`1
`
`

`

`Case 5:19-cv-00036-RWS Document 206 Filed 03/03/20 Page 3 of 10 PageID #: 8623
`
`
`
`confer would have saved the parties’ and this Court’s resources on this issue. But now that
`Maxell has identified the documents it believes are missing, Apple has undertaken a search
`and will produce those non-privileged documents it is able to locate.
`
`• Documents Describing Cellular Functionalities/Testing Documents (re CDMA power
`control):
`
`
` Ex. A, 1/15/20 Pensabene Ltr. at 2-3. The example Maxell cites (APL-
`MAXELL_01004324) is not to the contrary.
`
`
`
`
`
`
`
`
`
`
`• Skyworks Code: Seeking to manufacture a dispute, Maxell mischaracterizes a third-party
`document to argue that Apple has access to, and should therefore produce, the source code of
`that third-party. But, Apple has already produced or made available for inspection all
`Skyworks related material, including computer files, that it was able to locate. Nothing has
`been withheld.
`
`
`
`
`
`
`
`
`
`
`
`
`
` Maxell’s citation to lot codes, which like serial numbers are
`irrelevant to how a product operates, to argue that Apple has withheld source code is at best a
`gross misreading or at worst a deliberate misrepresentation of the document.
`
`• Vendor Requirements Specifications: As Maxell acknowledges, Apple produced
`requirements specifications for Broadcom and other third parties that might relate to accused
`functionalities, and its previous reasonable search did not return any such documents for
`Intel.
`
`
`
` These physical characteristics have no relevance to any accused
`functionality and in no way suggest that Apple has any other documents relevant to this case.
`
`• Testing Documents: Once again, Maxell seeks to manufacture a dispute by misrepresenting
`the documents. Apple produced testing documents relating to the accused functionalities, to
`the extent they exist and could be located in a reasonable search.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`
`

`

`Case 5:19-cv-00036-RWS Document 206 Filed 03/03/20 Page 4 of 10 PageID #: 8624
`
`
`
` The physical assembly
`of the hardware has no relevance to any accused functionalities. Nor does testing on phone
`bending cited in Maxell’s Exhibit B.
`
`• Application Processor Chipset User Manual/ Micro-Architecture Specification: As
`Maxell acknowledges, Apple already conducted a reasonable investigation and produced
`responsive manuals/specifications. Prior to receiving Maxell’s motion, Maxell never told
`Apple that it believed such documents were missing for any particular chipset.
`
`
`
`
`
`
`• Technical Specifications / Software Design Guides / Firmware Device Specification /
`Hardware Abstraction Layer Specifications: Contrary to Maxell’s mischaracterization,
`Apple conducted a reasonable search for and produced a substantial number of technical
`documents describing the design, development, or operation of accused functionalities,
`including specifically those identified in Maxell’s motion. For example, for “Bluetooth
`functionality” alone, Apple produced approximately 90 such documents. Ex. B, Exemplary
`Cites. While Maxell may not believe that other documents could not be located (DI 197 at 3
`n.3), that is the case and Maxell will have the opportunity to explore that further in
`depositions. Apple has no obligation to turn over every rock and interview every engineer in
`the company looking for documents that Maxell believes may exist.
`
`• Camera Module Specifications: Apple has produced datasheets for camera components
`like the CMOS image sensor, but has not located specifications for camera modules. Apple
`is not aware of any additional responsive documents.
`
`• Source Code: On January 31, 2020, Apple provided Maxell a detailed chart listing what
`Apple understood to be Maxell’s last source code requests, and that confirmed Apple’s
`understanding that it had already satisfied those requests or, for a few, would be satisfied by
`February 12. Apple later confirmed its satisfaction of the open items in a February 14 letter.
`Rather than respond to either letter, and before even inspecting what Apple had produced,
`Maxell ran to court. But, for at least 9 of the 14 projects that Maxell requested, Apple has
`either already produced them or they do not exist. The remaining projects, which Maxell
`first brought to Apple’s attention in its motion to compel, have already been produced. Thus,
`all source code issues raised in Maxell’s motion have been resolved.
`
`As noted, for some of the above categories (e.g., Cellular Functionality, Vendor
`
`Requirements Specifications, Testing Documents), Maxell’s speculation and cited documents do
`
`not demonstrate that other responsive documents exist. Regardless, Apple is conducting a
`
`further investigation to confirm that it has more-than-satisfied its discovery obligations and, if
`
`any additional documents are located, will promptly produce them.
`
`: The so-called “non-source
`
`3
`
`

`

`Case 5:19-cv-00036-RWS Document 206 Filed 03/03/20 Page 5 of 10 PageID #: 8625
`
`code” documents described in Maxell’s motion have now already been produced twice in this
`
`case.
`
`. See, e.g.,
`
`
`
`
`
`Rapp v. Maxim Healthcare Servs., Inc., No. 4:13-CV-51, 2014 WL 5341872, at *2 (E.D. Tex.
`
`Sept. 30, 2014).
`
`
`
` Apple then undertook the extraordinarily burdensome
`
`effort to search more than 1.63 M files made available in this case for documents that may not
`
`contain source code and then review those documents to confirm they contained no code. Apple
`
`then produced these so-called non-source code documents for a second time, in the exact
`
`manner Maxell requested and before Maxell filed its motion to compel. Maxell’s demand that
`
`Apple reproduce these documents for a third time, in a third format, is without merit and
`
`borderline, if not outright, harassment. Indeed, the exhibit Maxell submits clearly demonstrates
`
`that, contrary to Maxell’s representation, the electronic PDF documents are just as legible as they
`
`would be in native format. Ex. C, APL-MAXELL_01196622 (zoomed in). Indeed, if one
`
`printed the native documents they would look identical to the PDFs as produced.
`
`Forecast Documents: As Maxell acknowledges, Apple has already produced the
`
`forecasts used in Apple’s business operations, including two internal forecasts.
`
`
`
` To the extent Maxell complains that Interrogatory
`
`
`
`No. 9 was not yet updated, that has been addressed and a supplemental response served today.
`
`Licenses: Apple has already produced nearly 100 agreements. As is typical of Maxell’s
`
`requests in this case, Maxell’s abrupt demand for additional documents in this category on
`
`January 27 was accompanied by no explanation of how it believed they relate to any accused
`
`4
`
`

`

`Case 5:19-cv-00036-RWS Document 206 Filed 03/03/20 Page 6 of 10 PageID #: 8626
`
`
`
`functionalities. Maxell rebuffed Apple’s requests for that explanation, rebuffed Apple’s requests
`
`for time to evaluate Maxell’s request, and rebuffed Apple’s requests for time to consult with the
`
`other parties to those licenses. Maxell’s lack of scrutiny in these requests is exemplified by its
`
`demand for a license with Wisconsin Alumni Research Foundation that does not exist. Even a
`
`cursory investigation would have revealed that Apple prevailed in this dispute.2
`
`
`
` As for the remaining agreements, Maxell’s generic proffer that “they relate to
`
`accused functionalities or establish Apple’s licensing policies for the accused products” is
`
`insufficient to bring them within the scope of discovery in this case.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`. None of the other agreements that Maxell requests relate to the accused
`
`functionalities or the so-called hypothetical negotiation in this case. Further, Maxell’s
`
`ambiguous argument that these additional agreements are somehow relevant to Apple’s
`
`“licensing policies” does not explain how these are not cumulative to the 100 agreements Apple
`
`already produced and to testimony from Apple’s forthcoming corporate deponent on such
`
`policies. It is not Apple’s duty to prove a lack of relevance, and Maxell’s no-stone-unturned
`
`
`2 https://www.reuters.com/article/&apple-wins-reversal-in-university-of-wisconsin-patent-
`lawsuit-idUSKCN1M81TV
`
`5
`
`

`

`Case 5:19-cv-00036-RWS Document 206 Filed 03/03/20 Page 7 of 10 PageID #: 8627
`
`
`
`search for additional agreements should be rejected.
`
`Market Surveys: As Apple advised Maxell—earlier in the day that Maxell filed its
`
`motion—Apple was investigating Maxell’s request for surveys and intended to respond to
`
`Maxell in a couple of days. Ex. G, 2/14/20 Meet and Confer Tr. at 37:21-38:8. But without
`
`waiting, Maxell filed the its motion without completing the meet-and-confer. Apple now
`
`confirms that it has already produced the requested marketing surveys, just as it was in the
`
`process of doing when Maxell filed its motion.
`
`Other Litigations: Making specious arguments of relevance, Maxell now seeks
`
`documents relating to prior Apple litigations, including The California Institute of Technology v.
`
`Broadcom Ltd., et al., No:2:16-cv-3714 (C.D. Cal.). Maxell’s about-face on the relevance of
`
`CalTech is breathtaking.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Maxell’s vague assertion in its motion now stands in sharp contrast to its specific and repeated
`
`previous denials of relevance. Its inconsistent positions cast doubt on its generic claims of
`
`relevance for any of the listed cases.
`
`
`
`
`
`6
`
`

`

`Case 5:19-cv-00036-RWS Document 206 Filed 03/03/20 Page 8 of 10 PageID #: 8628
`
`
`
`
`
`
`
`
`
` Even though these are outside the scope of discovery in this case,
`
`and without prejudice to its view that they are irrelevant, Apple will produce these reports.
`
`Request for Costs and Sanctions: Contrary to Local Rule AT-3(b), and by rushing to
`
`court without meeting-and-conferring, Maxell’s motion paints a picture that Apple has
`
`intentionally withheld documents by mischaracterizing or misrepresenting certain documents.
`
`See Intellectual Ventures II LLC v. Sprint Spectrum, L.P., No. 217CV00662JRGRSP, 2019 WL
`
`2959568, at *6-7 (E.D. Tex. Apr. 18, 2019), report and recommendation adopted, No.
`
`217CV00661JRGRSP, 2019 WL 1987204 (E.D. Tex. May 6, 2019) (ordering party “to be
`
`prepared to address . . . the mischaracterizations” in its motion, including selective deletions that
`
`changed the substance of quoted language). But, Maxell never provided the Court the
`
`appropriate context for its partial quotes, or copies of the document passages from which those
`
`quotes are taken. Id. at *5 n.4 (noting that the omitted “parenthetical language does not appear
`
`anywhere in Defendants’ briefing”).
`
`Lastly, much of Maxell’s motion (and the court’s intervention) could have (and should
`
`have) been avoided had Maxell engaged in good faith meet and confer efforts, reviewed Apple’s
`
`discovery before making its motion, and identified with specificity the issues that it believed
`
`Apple needed to resolve. Instead, Maxell believed it more advantageous to hide from Apple the
`
`actual disputes at issue, unilaterally declare an impasse and only reveal them in its motion.
`
`7
`
`

`

`Case 5:19-cv-00036-RWS Document 206 Filed 03/03/20 Page 9 of 10 PageID #: 8629
`
`
`
`February 28, 2020
`
`
`/s/ Luann L. Simmons
`
`
`
`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.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
`
`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
`
`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
`
`Attorneys for Defendant Apple Inc.
`
`8
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 206 Filed 03/03/20 Page 10 of 10 PageID #: 8630
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that all counsel of record who are deemed to have
`
`consented to electronic service are being served with a copy of this document via the Court's
`
`CM/ECF system per Local Rule CV-5(a)(3) on February 28, 2020.
`
`
`
`
`
`
`
`
`
`
`
`/s/ Melissa R. Smith
`Melissa R. Smith
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`9
`
`