Case 5:19-cv-00036-RWS Document 212 Filed 03/06/20 Page 1 of 6 PageID #: 8836
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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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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`Defendant.
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`LEAD CASE
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.’S OPPOSED MOTION FOR EXTENSION OF TIME TO
`SUPPLEMENT INFRINGEMENT CONTENTIONS PURSUANT TO P.R. 3-1(g)
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`Case 5:19-cv-00036-RWS Document 212 Filed 03/06/20 Page 2 of 6 PageID #: 8837
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`Pursuant to the Court’s Order (D.I. 204) and in view of the state of the discovery
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`described below, Maxell seeks a 10-day extension of time to supplement its infringement
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`contentions pursuant to P.R. 3-1(g) on March 23, 2020 as opposed to March 13, 2020.
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`In the Order, the Court states that, “[b]ased on Apple’s representation [that it completed
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`its source code production on February 12], Maxell’s 30-day deadline began to run on February
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`12, 2020. Accordingly, Maxell’s deadline to serve revised infringement contentions pursuant to
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`this Order is March 13, 2020.” D.I. 204 at 5. But the representation the Court relied upon in
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`setting its deadline was not accurate. Apple did not complete its source code production on
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`February 12. It in fact made at least one additional production on February 19. See Ex. B (2/20/20
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`Email Zhou to Siddiqui).
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`In addition to producing source code after February 12, Apple has not provided an up-
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`to-date response to Maxell’s interrogatory which requests that Apple identify, for each directory
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`of source code made available, the accused products and/or operating system versions to which
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`each directory corresponds. Apple admits that its most recent response to this interrogatory,
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`dated February 6, 2020, addresses only “source code made available for inspection as of January
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`31” and does not identify the corresponding accused products/operating system versions
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`associated with any code produced after that date. See Ex. C (2/18/20 Email Pensabene to
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`Siddiqui). This means that as of the filing of this Motion, Apple has not provided the necessary
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`information for Maxell to conduct a meaningful source code review and provide citations in its
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`supplemental contentions, for at least the source code produced since January 31. Apple also
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`admits that it still has not produced source code for Express Transit mode, an accused
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`functionality for the ’794 Patent and a deficiency Maxell identified as early as October 11, 2019.
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`See Ex. A (2/26/20 Ltr. Pensabene to Beaber at fn. 1); Ex. D (10/11/19 Ltr. Beaber to Zhou at
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`Case 5:19-cv-00036-RWS Document 212 Filed 03/06/20 Page 3 of 6 PageID #: 8838
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`2).1
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`Moreover, based on Apple’s February 6 supplemental interrogatory response linking
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`source code to accused products/operating system versions, it appears that Apple still has not
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`produced source code for any accused functionality2 for iPadOS, which is the operating system
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`for eleven accused iPad products.3 Maxell identified this deficiency to Apple as early as
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`November 14, 2019. Ex. E (11/14/19 Ltr. Beaber to Beasley and Zhou).
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`The requested extension is necessary in view of the above-stated facts regarding Apple’s
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`source code production. Perhaps recognizing the faults in its source code production, and the
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`fact that it produced source code after its represented date of February 12, even Apple relayed to
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`Maxell that it expected Maxell to serve supplemental contentions by March 23—the date Maxell
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`now requests of the Court. Ex. A (2/26/20 Ltr. Pensabene to Beaber at 2-3). In view of Apple’s
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`correspondence, Maxell was surprised to learn Apple opposes this modest extension. Ex. F
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`(3/2/2020 Email Pensabene to Miller).
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`Apple asserts that the Court’s Order requires that Maxell must serve its supplemental
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`contentions by March 13 and then, if Maxell wishes to address the code that Apple produced on
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`February 19, Maxell should seek leave to do so. Id. Given that it is already known and admitted
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`that Apple produced source code after the date represented to and relied upon by the Court, it is
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`highly inefficient to require Maxell to prepare back-to-back supplemental contentions and go
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`1 Apple states
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`. See Ex. A.
`2 These include, at least, Maps, AirDrop, FaceTime, Find My Friends, Bluetooth pairing, and
`Camera functionality.
`3 These include the “12.9-inch iPad Pro, 11-inch iPad Pro, 10.5-inch iPad Pro, 9.7-inch iPad
`Pro, iPad (7th generation), iPad (6th generation), iPad (5th generation), iPad mini (5th
`generation), iPad mini 4, iPad Air (3rd generation), and iPad Air 2”). See
`https://www.apple.com/ipados/.
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`2
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`Case 5:19-cv-00036-RWS Document 212 Filed 03/06/20 Page 4 of 6 PageID #: 8839
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`through the process of seeking leave of Court to do so. Maxell should not be required to expend
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`this additional effort based on Apple’s failure to meet its own deadline. It is also contrary to the
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`applicable rule: Maxell “need not comply with P.R. 3-1 for those claim elements until 30 days
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`after source code for each Accused Instrumentality is produced by the opposing party.” P.R. 3-
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`1(g). Apple’s source code production was not completed on February 12.
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`Maxell will endeavor to supplement its P.R. 3-1 Disclosures as ordered by the Court to
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`the best of Maxell’s ability, even given the remaining holes in Apple’s source code production
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`and related interrogatory response. However, Maxell’s agreement to supplement its P.R. 3-1
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`Disclosures is not a concession that Maxell has not been prejudiced as a result of Apple’s
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`piecemeal and belated source code production. Indeed, Maxell has been (and continues to be)
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`prejudiced by Apple’s discovery conduct and despite agreeing to supplement, reserves its rights
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`to seek adequate remedies and relief.
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`Dated: March 3, 2020
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`By:
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`3
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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
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`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
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`Case 5:19-cv-00036-RWS Document 212 Filed 03/06/20 Page 5 of 6 PageID #: 8840
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`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
`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). Specifically, Maxell sent Apple an email on February 29, 2020 stating its intention to move
`for the extension requested herein and sought Apple’s position on such motion. Apple responded
`via email on March 2, 2020 stating it would oppose any such request. On March 3, 2020, the
`parties held a telephonic meet and confer, which was attended by lead and local counsel for both
`parties. Maxell and Apple were not able to reach agreement related to the extension requested
`by Maxell in this 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 212 Filed 03/06/20 Page 6 of 6 PageID #: 8841
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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 3rd day of March, 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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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`I hereby certify that the foregoing document is authorized to be filed under seal pursuant
`to the Protective Order entered in this case.
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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