Case 5:19-cv-00036-RWS Document 221 Filed 03/09/20 Page 1 of 21 PageID #: 8888
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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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`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 OPPOSED MOTION FOR SANCTIONS
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`PUBLIC VERSION
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`Case 5:19-cv-00036-RWS Document 221 Filed 03/09/20 Page 2 of 21 PageID #: 8889
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`Table of Contents
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`I. Background ............................................................................................................................ 1
`A. Governing Rules and Orders ........................................................................................ 1
`B. Maxell’s Efforts to Obtain Relevant Discovery ........................................................... 2
`C.
`Exemplary Exchange Regarding Deficiencies ............................................................. 4
`II.
`Legal Standard ................................................................................................................... 6
`III. Argument ............................................................................................................................ 7
`A.
`Apple’s Failure to Satisfy P.R. 3-4 ................................................................................ 7
`B.
`Failure to Satisfy Order Directing Substantial Completion of Production .............. 9
`C.
`Prejudice to Maxell ...................................................................................................... 10
`D.
`Requests for Sanctions ................................................................................................. 11
`IV. Conclusion ........................................................................................................................ 15
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`Case 5:19-cv-00036-RWS Document 221 Filed 03/09/20 Page 3 of 21 PageID #: 8890
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`Table of Authorities
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`Cases
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`Apple Inc. v. Samsung Elecs. Co., Ltd., 2012 WL 2862613 (N.D. Cal. July 11, 2012) ................. 6
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`Apple Inc. v. Samsung Elecs. Co., Ltd., No. C 11-1846, 2012 WL 1595784 (N.D. Cal. May 4,
`2012) ......................................................................................................................................... 13
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`Burnett v. Ford Motor Co., C.A. No. 3:13-cv- 14207, 2015 WL 1527875 (S.D.W.Va. Apr. 3,
`2015) ........................................................................................................................................... 8
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`Delphix Corp. v. Actifio, Inc., No. 13-cv-4613-BLF-HRL, 2015 WL 5693722 (N.D. Cal. Sept.
`29, 2015) ..................................................................................................................................... 8
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`Edward D. Ioli Trust v. Avigilon Corp., C.A. No. 2:10-cv-605-JRG, 2012 WL 5830711 (E.D.
`Tex., Nov. 6, 2013) ..................................................................................................................... 8
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`Hullinger v. Anand, No. CV 15-7185, 2016 WL 7444620 (C.D. Cal. Aug. 19, 2016) .................. 6
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`Morrison Knudsen Corp. v. Fireman’s Fund Ins. Co., 175 F.3d 1221 (10th Cir.1999) ................. 7
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`Personal Audio, LLC v. Apple, Inc., No. 9-cv-111, 2011 WL 6148587 (E.D. Tex. June 16, 2011)
`..................................................................................................................................................... 7
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`Roadway Express, Inc. v. Piper, 447 U.S. 752 (1980) ................................................................... 7
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`SynQor, Inc. v. Artesyn Techs., Inc., No. 2:07-CV-497, 2011 U.S. Dist. LEXIS 74337 (E.D. Tex.
`July 11, 2011).............................................................................................................................. 7
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`United States v. Ocwen Loan Servicing, LLC, No. 4:12-cv-543, 2016 WL 3189589 (E.D. Tex.
`Jun. 8, 2016) .............................................................................................................................. 12
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`VirnetX Inc. v. Cisco Sys., Inc., No. 6:10-CV-417, 2012 WL 7997962 (E.D. Tex. Aug. 8, 2012)
`................................................................................................................................................... 11
`Rules
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`Fed. R. Civ. P. 37(b)(2)(A) ............................................................................................................. 7
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`Fed. R. Civ. P. 37(b)(2)(C) ............................................................................................................. 7
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`Case 5:19-cv-00036-RWS Document 221 Filed 03/09/20 Page 4 of 21 PageID #: 8891
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`Two primary orders and the Local Patent Rules govern the scope and timing of discovery
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`in this case, and Apple has disobeyed them. Though Apple repeatedly represented to Maxell and
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`the Court that its document and source code productions were complete under the rules, the
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`representations were simply untrue. Moreover, Apple has refused to address its deficiencies in
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`good faith, often disregarding the materiality and relevance of the materials sought and accusing
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`Maxell of overreaching, harassing, and trying to drive up the costs of litigation. Now, however,
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`we are in the final stages of fact discovery, and Maxell is having to work through documents and
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`source code that continue to be produced instead of preparing for depositions and expert reports.
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`Even worse, Apple still has not produced fulsome, complete discovery for all accused products,
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`components, and functionalities. It is too late now for Maxell to review and make meaningful use
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`of such late produced materials. To remedy the prejudice, the Court should 1) preclude Apple
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`from using the discovery it failed to timely produce, including discovery produced after January
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`31; 2) deem certain accused products/components and source code to be representative of all
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`versions of that product as detailed in the chart below; and 3) assess monetary sanctions.
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`I.
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`Background
`A.
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`Governing Rules and Orders
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`Patent Rule 3-4(a) requires production of “[s]ource code, specifications, schematics, flow
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`charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects
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`or elements of an Accused Instrumentality identified by the patent claimant in its P.R. 3-1(c)
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`chart.” D.I. 62 at 1-2. At a September 2019 hearing, Apple represented to the Court that it had
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`timely complied with the P.R. 3-4 requirement. D.I. 90 (9/17/19 Hr’g. Tr. at 46:7-47:8). On this
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`point, the Court was very clear: “If you haven’t met that deadline, you’re in violation of the
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`Rule.” Id. at 46:21-22. To which, Apple’s counsel acknowledged: “we are taking the position
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`that we have met that deadline and that is a hard deadline.” Id. at 47:5-6. Despite such
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`Case 5:19-cv-00036-RWS Document 221 Filed 03/09/20 Page 5 of 21 PageID #: 8892
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`representation, Maxell’s review of Apple’s technical documents and source code revealed that
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`Apple had not only failed to meet the deadline but was withholding relevant documents and code
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`for certain accused products and versions of accused operating systems.
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`Beyond the Patent Rules, Apple has ignored the “Additional Disclosures” requirement of
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`this Court’s Discovery Order D.I. 42 at 3(b). When that deadline passed with only a paltry
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`production by Apple, Maxell quickly alerted the Court to ensure Apple’s timely compliance. D.I.
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`56. Maxell argued that Apple’s conduct must be addressed early “to avoid more prejudice from
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`Apple’s delays, including waiting until the final days of discovery to provide relevant,
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`responsive information.” Id. at 1. In response, the Court held: “Apple agreed to substantially
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`complete all discovery by November 27, 2019… and the Court expects it to meet this deadline.”
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`D.I. 126 at 4. The Order reiterated Apple’s obligation to “produce or permit the inspection of all
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`documents… in [its] possession, custody, or control that are relevant to the pleaded claims or
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`defenses….” Id. Acknowledging these obligations, Apple filed a Notice of Compliance on
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`November 27 representing that it substantially completed its document and source code
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`production. D.I. 147. In fact, however, Apple’s production was woefully incomplete.
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`B. Maxell’s Efforts to Obtain Relevant Discovery
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`Maxell has attempted to work with Apple on discovery from the beginning. On June 18,
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`2019, Maxell sent a letter identifying the most relevant categories of documents including, for
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`example, technical specifications, schematics, and source code relating to the accused features
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`and functionalities and to a limited number of implicated components, as well as non-technical
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`materials such as market studies and customer surveys. Ex. A (6/18/19 Ltr. Beaber to Simmons).
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`When Maxell asked whether there were any categories Apple would not produce, Apple
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`responded it was “unaware of any areas where the parties are at an impasse.” Ex. B (7/18/19 Ltr.
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`Beasley to Beaber). Apple also confirmed it would “continue to produce documents sufficient to
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`show information ‘relevant to the pleaded claims or defenses involved in this action’ on a rolling
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`basis….” Ex. C (7/18/19 Ltr. Beasley to Beaber). Although not then clear, Apple’s agreement to
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`produce documents “sufficient to show” relevant information, as opposed to the relevant
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`information itself, previewed Apple’s unduly narrow view of discovery.
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`Apple’s response to Maxell’s Motion to Compel made clear that Maxell would have to
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`push Apple to produce necessary relevant information. Maxell began to do so immediately. A
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`week after Apple’s in-Court representation that it had satisfied P.R. 3-4, Maxell sent a letter
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`detailing undeniable deficiencies with Apple’s productions. Ex. D (9/24/19 Ltr. Beaber to
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`Beasley). Given the limited types of documents Apple had produced,1 Maxell focused broadly on
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`additional categories of documents it believed should exist and be produced, asserting that “it is
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`almost certain that Apple has additional types of documents, including additional specifications,
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`internal technical presentations, service manuals, testing documents, and many more documents
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`from Apple’s [component] suppliers.” Id. Maxell identified deficiencies with Apple’s source
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`code production, including that Apple provided no way for Maxell to link any of the source code
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`to a particular version of operating system and/or Accused Product. Id.
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`Apple responded that it had complied with its obligation to produce documents
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`“sufficient to show the operation” of the accused functionalities and attacked Maxell’s additional
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`requests as impermissible under the Federal Rules. Ex. E (10/2/19 Ltr. Beasley to Beaber at 2).
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`Though Maxell raised these categories of materials at the outset of the case, to no objection,
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`Apple now asserted that “Maxell articulates no reasonable basis for why such documents are
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`relevant to the case, nor why any such documents would provide any different or non-cumulative
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`information of the accused functionalities above and beyond the documents already produced.”
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`1 At that time, Apple’s technical production consisted only of publicly available specifications, developer documents
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`, and a small number of documents related to a subset of components from three suppliers.
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`Case 5:19-cv-00036-RWS Document 221 Filed 03/09/20 Page 7 of 21 PageID #: 8894
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`Id. at 3. Apple asserted that “the source code provides the most complete and accurate
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`representation of how the accused Apple products actually work,” yet refused Maxell’s request
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`for a way to link the produced source code to the accused products: “Apple has no obligation …
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`to re-organize its source code to make review more convenient to Maxell.” Id. at 4-5.
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`The line was drawn. Apple resisted any attempt to expand its technical production
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`beyond those minimum documents that it decided were sufficient to show the operation of the
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`accused functionalities. Every time Maxell identified missing material, Apple responded that the
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`request was not proportional to the case2 and demanded specific explanations of relevance,
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`though such is clear from Maxell’s infringement contentions. This happened even when Maxell
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`raised a new document that fell within a previously-addressed category of materials.3 Thus,
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`every time Maxell identified a document or piece of source code as missing, the parties engaged
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`in weeks of discussion. The result is an uninterrupted five months of constant back and forth
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`regarding Apple’s deficient productions. All told, the parties have exchanged over 30 letters (not
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`counting emails) and held at least five telephonic meet and confers regarding Apple’s discovery
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`deficiencies, most lasting over an hour.4 See Miller Decl. at ¶ 19 (summarizing exchanges).
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`C.
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` Exemplary Exchange Regarding Deficiencies
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`Maxell’s efforts to obtain third-party component documents provides an example of the
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`efforts Maxell has had to unnecessarily expend to obtain relevant discovery. Although Maxell
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`requested such documents on June 18, 2019 (Ex. A), Apple’s P.R. 3-4 production only contained
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`a small handful of such documents. Maxell raised the deficiency at the hearing on its first Motion
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`2 Despite many requests to explain why Maxell’s requests were not proportional, Apple has provided no basis.
`3 For example, Maxell raised Apple’s failure to produce component documents as early as 9/24/19. On December
`18, Maxell identified specific components for which materials were missing. Ex. H. Apple responded “Maxell’s
`efforts to shoehorn demands for newly identified components into its prior requests is without merit…” Ex. I.
`4 This directly contradicts Apple’s assertion to the Court that Maxell’s approach to discovery is to vaguely allege
`deficiencies and then “run[] to court with aspersions of nefarious intent and misconduct.” D.I. 199 at 1. Maxell has
`only filed two motions to compel, the second one following nearly five months of discovery discussions. Apple has
`“run to the Court” more often than Maxell.
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`to Compel and in its follow-up letter thereto, identifying exemplary components present in
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`Maxell’s infringement contentions for which documents were not produced (e.g., Avago AFEM-
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`8056). D.I. 90 (9/17/19 Hr’g. Tr. at 13:22-14:17); Ex. D (9/24/19 Ltr. Beaber to Beasley).
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`Though Apple had not previously objected to producing these documents, its attitude changed:
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`Maxell appears to contend that if any third-party component is ever implicated by an
`accused feature in any incidental fashion whatsoever, beyond what Maxell has
`alleged in its infringement contentions, Apple must produce every technical
`document related to that component. This is not required by the local rules, and such
`a broad scope of discovery would impose an impossibly high and unreasonable
`burden on both Apple and its suppliers in a manner inconsistent with the
`proportionality rule under the Federal Rules of Civil Procedure. [ ] If there are
`specific, accused components for which Maxell legitimately contends it needs
`additional documents regarding accused functionality, where the component-level
`information are necessary to understand operation of the accused functionality, and
`that Maxell contends such documents are relevant, necessary, proportional to the
`needs of the case, and especially non-cumulative in light of the already-produced
`schematics, BOMs, user manuals, developer guides, and source code, please identify
`such components and articulate Maxell’s basis for such contention.
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`Ex. E (10/2/19 Ltr. Beasley to Beaber). Maxell noted the narrow scope of its request and
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`identified components for which the request was most important (e.g., Avago AFEM-8056). Ex.
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`F (10/8/19 Ltr. Beaber to Beasley). Following Apple’s November 27 production, Maxell
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`identified a significant number of component documents as still missing.5 Ex. H (12/18/19 Ltr.
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`Beaber to Beasley) (identifying, e.g., Avago AFEM-8056). In January, Apple responded that
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`“[s]pecifications regarding the components identified in Maxell’s letter… are not relevant to any
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`claim or defense… as evidenced by the facts that these components are not accused in Maxell’s
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`infringement contentions and have not been identified in any prior correspondence.”6 Ex. I
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`(1/15/20 Ltr. Pensabene to Beaber). But some components, like the Avago AFEM-8056, were
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`identified in Maxell’s contentions (see Ex. O (Excerpt of ’193 Inf. Contentions) at 44), and in
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`5 Maxell also subpoenaed the suppliers directly for component information. In many instances, the suppliers resisted
`or delayed production, noting that Apple should have the documents and was given permission to produce them.
`6 Maxell could not know of the identity of most of the implicated components until Apple provided such information
`in response to Maxell’s interrogatory, which Apple did not begin until the end of November.
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`prior correspondence. Apple complained that component discovery was irrelevant and not
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`proportional to the needs of the case, and argued Maxell never explained why it needed the
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`documents. Ex. I (1/15/20 Ltr. Pensabene to Beaber). Nonetheless, on February 10 Apple
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`produced many of the requested component documents, including the Avago datasheets Maxell
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`identified months earlier. But even then, many datasheets were incomplete excerpts. For
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`example, the AFEM-8056 datasheet contained only pages 1, 2, 66-74, and the back cover. Ex. N.
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`Although
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`been produced. Id. at 1.
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`II.
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`Legal Standard
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`s, they have not
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`Federal Rule 37(b)(2) states that if a party “fails to obey an order to provide or permit
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`discovery,” the court may issue “further just orders,” including without limitation that “facts be
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`taken as established for purposes of the action” and that the disobedient party be prohibited
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`“from supporting or opposing designated claims or defenses, or from introducing designated
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`matters in evidence.” Fed. R. Civ. P. 37(b)(2)(A). Instead of or in addition to these sanctions, a
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`court must order the party and/or their counsel “to pay the reasonable expenses, including
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`attorney’s fees, caused by the failure….” Fed. R. Civ. P. 37(b)(2)(C). “With respect to monetary
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`sanctions, once a violation is demonstrated, the disobedient party bears the burden of showing
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`that the failure was justified or that special circumstances make an award of expenses unjust.”
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`Hullinger v. Anand, No. CV 15-7185, 2016 WL 7444620, at *8 (C.D. Cal. Aug. 19, 2016) (citing
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`Apple Inc. v. Samsung Elecs. Co., Ltd., 2012 WL 2862613, at *6 (N.D. Cal. July 11, 2012).
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`“Rule 37 sanctions must be applied diligently both ‘to penalize those whose conduct may be
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`deemed to warrant such a sanction, [and] to deter those who might be tempted to such conduct in
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`the absence of such a deterrent.’” Roadway Express, Inc. v. Piper, 447 U.S. 752, 763-64 (1980).
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`Rule 37 sanctions are appropriate where parties show a complete disregard of their
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`discovery obligations and violate the Court’s discovery orders. See SynQor, Inc. v. Artesyn
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`Techs., Inc., No. 2:07-CV-497, 2011 U.S. Dist. LEXIS 74337, at *26-27 (E.D. Tex. July 11,
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`2011)(ordering Delta to pay $500,000.00 in civil contempt sanctions to SynQor and also granting
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`SynQor’s Motion for attorneys’ fees and costs that were attributable to Delta’s discovery
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`abuses). “A refusal to disclose information without substantial justification is ground for
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`sanctions.” Personal Audio, LLC v. Apple, Inc., No. 9-cv-111, 2011 WL 6148587 (E.D. Tex.
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`June 16, 2011) (citing Morrison Knudsen Corp. v. Fireman’s Fund Ins. Co., 175 F.3d 1221,
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`1229–30 (10th Cir.1999).
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`III. Argument
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`Maxell attempted to get ahead of Apple’s discovery abuses, bringing an early motion to
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`compel to clarify Apple’s obligations. Apple argued in response that, given the time then-
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`remaining in fact discovery, Maxell’s “aspersions of ‘prejudice’ ring hollow and are without
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`explanation or basis.” D.I. 62 at 1. But the prejudice Maxell tried to avoid has come to pass.
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`Apple disobeyed P.R. 3-4, the Discovery Order, and this Court’s order requiring substantial
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`completion of discovery by November 27, 2019. Apple refuses to acknowledge its failures,7 let
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`alone provide substantial justification for them. Apple’s actions have prejudiced Maxell and
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`warrant sanctions.
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`A.
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`Apple’s Failure to Satisfy P.R. 3-4
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`Apple acknowledges it was required to produce documents and source code sufficient to
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`show the operation of the accused functionalities by August 14, 2019. Under its narrow view of
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`this obligation, Apple believes that it can unilaterally pick and choose the amount and types of
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`7 Indeed, despite previously filing a Notice of Compliance with D.I. 126, Apple now posits that the Order did not
`actually require Apple to substantially complete its document production by November 27. Ex. M (3/4/20 Ltr.
`Pensabene to Beaber) (“Maxell identified no court order that Apple has violated other than its incorrect position that
`Apple was required by this Court’s prior orders to complete essentially all document production by November 27.”).
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`documents that are “sufficient to show” operation. But that interpretation of P.R. 3-4 has been
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`rejected in this District: the rule “requires the alleged infringer to produce any and all documents
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`describing the operation of any aspects or elements of an accused instrumentality.” Edward D.
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`Ioli Trust v. Avigilon Corp., C.A. No. 2:10-cv-605-JRG, 2012 WL 5830711, at *3 (E.D. Tex.,
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`Nov. 6, 2013).
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`Apple also believes it can pick and choose the types of documents that Maxell must rely
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`on to prove its case, repeatedly asserting that source code provides the most complete and
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`accurate representation of how the accused products work. See, e.g., Ex. E (10/2/19 Ltr. Beasley
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`to Beaber). Maxell should not, however, be forced to prove its case to the jury using the most
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`technical, and most restricted, discovery available. Alleged infringers must produce materials in
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`addition to source code. See e.g., Delphix Corp. v. Actifio, Inc., No. 13-cv-4613-BLF-HRL, 2015
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`WL 5693722, at *5 (N.D. Cal. Sept. 29, 2015) (“Under Patent L.R. 3-4, Delphix is required to
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`produce, in addition to source code, ‘specifications, schematics, flow charts, artwork, formulas,
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`or other documentation sufficient to show the operation of any aspects or elements of an
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`Accused Instrumentality ….’”); see also, e.g., Burnett v. Ford Motor Co., C.A. No. 3:13-cv-
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`14207, 2015 WL 1527875, at *5 (S.D.W. Va. Apr. 3, 2015) (Rejecting argument that source
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`code need not be produced because documents relevant and necessary for the analysis and
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`development of theory were already produced and holding “Plaintiffs should not be forced to
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`rely on Ford’s determination as to what is the ‘most relevant’ evidence in its possession.”).
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`Regardless, under any reading of the rule, Apple did not produce materials “sufficient to
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`show” the accused functionalities in August 2019. For example, at the outset Maxell identified
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`“Maps” as an accused functionality and accused certain iPhones, iPads, and Watches. See, e.g.,
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`Ex. P (Excerpt of ’317 Inf. Contentions). Maxell also identified FaceTime as an accused
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`functionality and accused certain iPhones, iPads, iPod Touches, and MacBooks. See, e.g., Ex. Q
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`(Excerpt of ’991 Inf. Contentions). Yet, Apple did not produce source code for 1) “Maps” for
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`any accused Watch products; or 2) FaceTime for any accused MacBook product until February
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`19, 2020—more than six months after its P.R. 3-4 deadline. Further, in September 2019, Apple
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`released a new operating system, iPadOS 13.1, which runs on several accused products.
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`Although Maxell has requested that code since at least November 14, 2019, Apple did not
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`address Maxell’s request until March 5, 2020. See Ex. G (11/14/19 Ltr. Beaber to Beasley). This
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`despite Apple’s contention that the source code is “the most complete and accurate” evidence.
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`B.
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`Failure to Satisfy Order Directing Substantial Completion of Production
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`The Court directed Apple to substantially complete production of all relevant documents
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`by November 27, 2019. D.I. 126. On that date, Apple submitted a Notice of Compliance
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`representing that it had. But Apple had to know that it was not being forthright. On December 6,
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`Apple for the first time produced internal customer surveys regarding the accused products.
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`Miller Decl. at ¶ 20. Maxell requested those materials in June 2019 and raised them in its first
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`motion to compel. Ex. A; D.I. 90 (9/17/19 Hr’g. Tr. at 39:22-40:2). But even Apple’s December
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`6 production was incomplete.
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`, which Maxell requested on January 28. Ex. J. Apple delayed responding until
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`February 12, indicating then it was “working through some issues regarding the documents.”8
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`Ex. L. Finally, on February 20, Apple produced nearly 250 more internal-survey type documents.
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`Following review of Apple’s November 27 productions and representations, Maxell
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`raised (in 13 pages) additional deficiencies, including technical specifications for accused
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`8 Apple made this statement after the time period set forth in the Discovery Order for meeting and conferring and
`providing a written response to a discovery request had expired, even though Maxell had made several requests for a
`meet and confer. Apple attacked Maxell’s inclusion of this issue in its motion to compel as “willfully ignoring this
`Court’s standing order requiring … meet and confer” (D.I. 205 at 1), but it is Apple that refused to meet and confer
`within the allotted time. Maxell is not required to wait indefinitely for Apple to respond to issues at its convenience.
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`functionalities,
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` third-party component
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`documents, 22 categories of source code, the improper production of documents on the source
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`code computer, and deficient interrogatory responses. Ex. H. After additional back and forth and
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`a meet and confer, Apple wrote on January 31 that “Apple has conducted a reasonable
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`investigation for the accused functionalities and produced all responsive technical documents
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`that could be located after a reasonable search.” Ex. K (1/31/20 Ltr. Pensabene to Beaber). But
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`Maxell believed material to be missing, and questioned the sufficiency of Apple’s reasonable
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`investigation. So Maxell filed a second motion to compel. Apple has produced over 4,200
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`documents since its January 31 representation of completion.9
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`All told, Apple has produced over 4,750 documents and significant additional source
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`code after November 27. Its late productions consist of, for example, marketing surveys, third-
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`party component datasheets, internal specifications, materials improperly produced on the
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`source-code computer (see D.I. 197), and
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`.
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`C.
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`Prejudice to Maxell
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`Maxell bears the burden to show that the accused products infringe its patents. Apple has
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`withheld evidence central to Maxell’s effort to carry that burden. This Court’s rules and
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`procedures are intended to facilitate discovery, save cost and time, and ensure the orderly
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`progression of cases. The early disclosure of technical documents and information is critical to
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`these intentions. Apple has abused the rules and procedures to withhold information, thereby
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`impairing Maxell’s ability to prosecute its case in exactly the way the rules and procedures are
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`designed to prevent. Apple’s conduct has required Maxell to dedicate countless hours and cost to
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`identifying and pursuing Apple’s production deficiencies. Regarding source code, Maxell has
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`9 Although many of these are believed to be the materials that were improperly produced on the source code
`computer (see D.I. 197), that is not true for all.
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`expended substantial time and money to repeatedly send attorneys and experts to perform review
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`of incomplete source code, often without up-to-date interrogatory responses linking source code
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`to operating systems/accused products or complete technical documents that describe the
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`functionalities in the source code. Moreover, Apple demanded that Maxell prepare supplemental
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`infringement contentions based on incomplete source code, and then moved to compel further
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`supplementation when it was dissatisfied with the results, thereby causing Maxell to expend
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`unnecessary time and resources opposing a motion that was spurred by Apple’s own
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`deficiencies, and preparing iterative supplementations.
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`The biggest prejudice on Maxell, however, has been the divergence of time and effort
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`spent addressing Apple’s discovery misconduct at the expense of analyzing discovery, preparing
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`for depositions and expert reports, and preparing the case for trial. Apple’s eleventh-hour
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`productions in February and March, when discovery is winding down and depositions are
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`imminent, make this prejudice particularly acute. And there is no doubt that Apple will continue
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`producing relevant materials up until the close of fact discovery. After months of fighting against
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`such a result, Maxell should not be the party that suffers from Apple’s gamesmanship.
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`D.
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`Requests for Sanctions
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`Maxell requests its fees and expenses incurred in connection with the filing of its second
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`motion to compel, this motion for sanctions, and for the iterative reviews of source code it has
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`been forced to perform. Monetary sanctions alone, however, are not sufficient. Apple’s persistent
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`resistance to Maxell’s reasonable discovery requests and delays in producing relevant
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`information have impeded Maxell’s ability to build its case. Monetary sanctions cannot remedy
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`this harm. Nor are they sufficient to deter such conduct in the future. Where hundreds of millions
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`of dollars are at stake, as here, Apple would be happy to pay a relatively small sum in exchange
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`for the ability to delay discovery and handicap Maxell’s case. Parties must be made aware that
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`they cannot just pay their way out of such discovery abuse. See, e.g., VirnetX Inc. v. Cisco Sys.,
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`Inc., No. 6:10-CV-417, 2012 WL 7997962, at *5 (E.D. Tex. Aug. 8, 2012) (“If the Court simply
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`imposes fees and expenses and orders completion of [the] deposition, it would be a nominal
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`sanction at best, as Apple would have accomplished what it conceivably wanted…. Such a
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`nominal sanction would not provide any deterrent effect and would not put VirnetX in the
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`position it was in prior to the termination of the deposition.”).
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`On January 31, following a meet and confer, Apple claimed (wrongly) it had “produced
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`all responsive technical documents that could be located after a reasonable search” and even
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`threatened to seek relief in response to Maxell’s requests for further production: “To the extent
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`Apple has agreed to investigate and produce additional technical documents and/or source code,
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`it does not concede that such additional documents or code are relevant or are necessary … and
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`the production of any additional code is w