Case 5:19-cv-00036-RWS Document 221-1 Filed 03/09/20 Page 1 of 8 PageID #: 8909
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`Plaintiff,
`
`Case No. 5:19-cv-00036-RWS
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`MAXELL, LTD.,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`
`
`
`DECLARATION OF TIFFANY A. MILLER IN SUPPORT OF
`MAXELL, LTD.’S OPPOSED MOTION FOR SANCTIONS
`
`
`I, Tiffany A. Miller, hereby declare and state as follows:
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`1.
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`I am an attorney at Mayer Brown LLP, counsel for Plaintiff Maxell, Ltd.
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`(“Maxell”) in the above-captioned lawsuit. I submit this declaration in support of Maxell’s
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`Opposed Motion for Sanctions. I have personal knowledge of the statements herein, and, if
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`called to do so, I could and would testify competently as to the same.
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`2.
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`Attached as Exhibit A is a true a correct copy of a letter sent from Jamie Beaber
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`to Luann Simmons on June 18, 2019.
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`3.
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`Attached as Exhibit B is a true a correct copy of a letter sent from Tony Beasley
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`to Jamie Beaber on July 18, 2019.
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`4.
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`Attached as Exhibit C is a true a correct copy of a letter sent from Tony Beasley
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`to Jamie Beaber on July 18, 2019.
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`5.
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`Attached as Exhibit D is a true a correct copy of a letter sent from Jamie Beaber
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`to Tony Beasley on September 24, 2019.
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`Case 5:19-cv-00036-RWS Document 221-1 Filed 03/09/20 Page 2 of 8 PageID #: 8910
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`6.
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`Attached as Exhibit E is a true a correct copy of a letter sent from Tony Beasley
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`to Jamie Beaber on October 2, 2019.
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`7.
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`Attached as Exhibit F is a true a correct copy of a letter sent from Jamie Beaber to
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`Tony Beasley on October 8, 2019.
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`8.
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`Attached as Exhibit G is a true a correct copy of a letter sent from Jamie Beaber
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`to Tony Beasley on November 14, 2019.
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`9.
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`Attached as Exhibit H is a true a correct copy of a letter sent from Jamie Beaber
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`to Tony Beasley on December 18, 2019.
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`10.
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`Attached as Exhibit I is a true a correct copy of a letter sent from Marc Pensabene
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`to Jamie Beaber on January 15, 2020.
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`11.
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`Attached as Exhibit J is a true a correct copy of an email sent from Tiffany Miller
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`to Marc Pensabene on January 28, 2020.
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`12.
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`Attached as Exhibit K is a true a correct copy of a letter sent from Marc
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`Pensabene to Jamie Beaber on January 31, 2020.
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`13.
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`Attached as Exhibit L is a true a correct copy of an email sent from Marc
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`Pensabene to Tiffany Miller on February 12, 2020.
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`14.
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`Attached as Exhibit M is a true a correct copy of a letter sent from Marc
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`Pensabene to Jamie Beaber on March 4, 2020.
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`15.
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`Attached as Exhibit N is a true a correct copy of the entire document produced by
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`Apple in this litigation bearing bates range APL-MAXELL_01198576 – 588.
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`16.
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`Attached as Exhibit O is a true and correct excerpt of Maxell’s Infringement
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`Contentions Appendix 5: Preliminary Infringement Contentions of U.S. Patent No. 6,408,193,
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`served on June 12, 2019.
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`Case 5:19-cv-00036-RWS Document 221-1 Filed 03/09/20 Page 3 of 8 PageID #: 8911
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`17.
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`Attached as Exhibit P is a true and correct excerpt of Maxell’s Infringement
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`Contentions Appendix 1: Preliminary Infringement Contentions of U.S. Patent No. 6,748,317,
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`served on June 12, 2019.
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`18.
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`Attached as Exhibit Q is a true and correct excerpt of Maxell’s Infringement
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`Contentions Appendix 6: Preliminary Infringement Contentions of U.S. Patent No. 10,084,991,
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`served on June 12, 2019.
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`19.
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`The below table provides a high-level overview of the letters exchanged, and
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`meet and confers held, between Maxell and Apple related to Apple’s document and source code
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`productions and interrogatory responses. Although additional e-mails exist, they have not been
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`included for the most part:
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`Date
`6/18/19
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`7/11/19
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`7/12/19
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`7/15/19
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`To/From
`Letter from J. Beaber (Maxell) to
`L. Simmons (Apple)
`Letter from J. Beaber (Maxell) to
`L. Simmons (Apple)
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`Letter from T. Beasley (Apple) to
`J. Beaber (Maxell)
`Letter from J. Beaber (Maxell) to
`T. Beasley (Apple)
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`7/18/19
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`Letter from T. Beasley (Apple) to
`J. Beaber (Maxell)
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`7/18/19
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`7/19/19
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`Letter from T. Beasley (Apple) to
`J. Beaber (Maxell)
`Letter from J. Beaber (Maxell) to
`T. Beasley (Apple)
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`7/25/19
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`Letter from T. Beasley (Apple) to
`J. Beaber (Maxell)
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`
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`Subject Matter
`Identification of categories of documents that Maxell
`believed to be most relevant to its claims and defenses.
`Follow-up to Apple Initial and Additional Disclosures
`regarding deficient Apple production and providing
`examples of missing materials.
`Response to 7/11/19 Maxell letter stating Apple would
`continue to produce documents on a rolling basis.
`Response to 7/12/19 Apple letter setting forth position
`with respect to Additional Disclosures, requesting
`confirmation that Apple would comply with P.R. 3-4,
`and requesting date certain when Apple would
`substantially complete production.
`Response to 7/15/19 Maxell letter setting forth
`disagreement with Maxell’s interpretation of
`Additional Disclosure requirement, stating intention to
`timely comply with P.R. 3-4, and declining to provide
`date certain for substantial completion of production.
`Response to 6/18/19 Maxell Letter acknowledging
`categories of materials requested by Maxell.
`Response to 7/18/19 Apple Letter supporting position
`regarding Additional Disclosures.
`
`Identification of deficiencies and improper objections
`present in Apple’s response to Maxell’s First Set of
`Interrogatories.
`Response to 7/19/19 Maxell Letter setting forth
`disagreement with Maxell’s interpretation of
`Additional Disclosure requirement, confirming Apple
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`Case 5:19-cv-00036-RWS Document 221-1 Filed 03/09/20 Page 4 of 8 PageID #: 8912
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`7/30/19
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`Telephonic Meet and Confer
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`8/2/19
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`Letter from T. Beasley (Apple) to
`J. Beaber (Maxell)
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`8/5/19
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`Filing of Maxell First Motion to
`Compel (D.I. 56)
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`8/16/19
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`8/22/19
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`Letter from J. Beaber (Maxell) to
`T. Beasley (Apple)
`Letter from T. Beasley (Apple) to
`J. Beaber (Maxell)
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`8/30/19
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`Telephonic Meet and Confer
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`8/30/19
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`9/17/19
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`9/23/19
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`9/24/19
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`Letter from T. Beasley (Apple) to
`J. Beaber (Maxell)
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`Hearing on Maxell Motion to
`Compel
`Letter from J. Beaber (Maxell) to
`T. Beasley (Apple)
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`Letter from J. Beaber (Maxell) to
`T. Beasley (Apple)
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`10/2/19
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`Letter from T. Beasley (Apple) to
`J. Beaber (Maxell)
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`is continuing and will continue to produce documents,
`and declining to provide date certain for substantial
`completion of production.
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`With respect to Interrogatories, defends objections and
`states intent to supplement several responses in due
`course.
`Parties discussed dispute regarding Additional
`Disclosure requirement and walked through individual
`interrogatories.
`Response pursuant to Paragraph 9(a) of Discovery
`Order providing Apple’s positions on production
`pursuant to the Additional Disclosures requirement and
`its responses to Maxell’s First Set of Interrogatories.
`Motion to Compel requesting Apple be ordered to
`substantially complete document production by
`September 6, 2019 and to provide substantive complete
`interrogatory responses to Maxell Interrogatory Nos. 2,
`3, 4, 5, 6, 7, 8, and 9.
`Identification of deficiencies in Apple’s responses to
`Maxell’s Second Set of Interrogatories.
`Response to 8/16/19 Maxell Letter defending
`objections and responses to Maxell’s Second Set of
`Interrogatories and agreeing to supplement one
`response.
`Parties discussed issues raised with respect to Maxell’s
`Second Set of Interrogatories.
`Response pursuant to Paragraph 9(a) of Discovery
`Order providing Apple’s positions on its responses to
`Maxell’s Second Set of Interrogatories.
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`Addition of newly released products to case and
`requesting productions and interrogatory responses be
`supplemented to reflect addition of such products.
`Challenge to Apple’s representation that technical
`document production was complete. Identifies potential
`additional types of documents Apple is expected to
`have based on publicly available information. Raises
`issues with format of source code production and
`identifies deficiencies in source code production.
`Response to 9/24/19 Maxell Letter confirming
`compliance with P.R. 3-4 and characterizing Maxell’s
`requests for further production as exceeding the scope
`of F.R.C.P. 26(b)(1). For specific requested categories
`of documents, requests explanation of basis for
`contending documents are relevant and their collection
`and production not disproportionate to Maxell’s needs.
`With respect to source code, states code was produced
`in manner kept in ordinary course of business and
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`Case 5:19-cv-00036-RWS Document 221-1 Filed 03/09/20 Page 5 of 8 PageID #: 8913
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`10/4/2019 Telephonic Meet and Confer
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`10/8/19
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`Letter from J. Beaber (Maxell) to
`T. Beasley (Apple)
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`10/11/19
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`Letter from J. Beaber (Maxell) to
`T. Beasley (Apple)
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`10/16/19
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`Letter from T. Beasley (Apple) to
`J. Beaber (Maxell)
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`10/22/19
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`11/4/19
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`Letter from T. Beasley (Apple) to
`J. Beaber (Maxell)
`Telephonic Meet and Confer
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`11/14/19
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`Letter from J. Beaber (Maxell) to
`T. Beasley (Apple)
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`11/27/19
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`Letter from T. Beasley (Apple) to
`J. Beaber (Maxell)
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`confirms Apple is investigating raised issues.
`Parties discussed issues raised in Maxell’s 9/24/19
`Letter, including incomplete production of technical
`documents and source code.
`Follow up to 10/2/19 Apple Letter and 10/4/19 Meet
`and Confer setting forth position regarding proper
`scope of discovery, clarifying that Maxell only seeks
`documents relevant to accused features and
`functionalities (and identifying the features and
`functionalities), providing explanation of why Apple’s
`production is deficient and further production is
`necessary, and repeating relevance of requested source
`code.
`Follow up to 10/4/19 Meet and Confer responding to
`certain information provided by Apple during meet and
`confer related to source code, identifying 27 categories
`of further missing source code, and addressing non-
`source code technical documents described in source
`code but not produced.
`Response to 10/8/19 Maxell Letter reiterating Apple’s
`position regarding compliance with and interpretation
`of P.R. 3-4, noting disagreement with Maxell
`characterization of Apple technical production, and
`stating Apple’s response regarding each category of
`documents identified by Maxell in 10/8/19 letter. With
`respect to source code categories raised by Maxell,
`stated Maxell had not provided any substantive analysis
`to demonstrate relevance of the requested code, but
`noted investigation into issues.
`Response to 10/11/19 Maxell Letter addressing each
`category of source code requested.
`Parties discussed Maxell’s claims regarding deficiency
`of Apple’s technical production. Apple took position
`that it had already produced the most relevant
`information and that the additional documents
`requested are not proportional to the needs of the case.
`Parties walked through source code requests by
`category.
`Follow-up on Court’s Order on Maxell’s Motion to
`Compel, setting forth Maxell’s expectations in view of
`Order. With respect to source code, letter provides
`identification of operating system versions for which
`certain project code was not produced. Letter also
`raises issues with privilege log supplementation.
`Response to 11/14/19 Maxell Letter providing
`positions regarding timing of expected interrogatory
`response supplementations, confirming substantial
`completion of Apple document and source code
`production, and responding to issue of privilege log
`supplementation.
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`Case 5:19-cv-00036-RWS Document 221-1 Filed 03/09/20 Page 6 of 8 PageID #: 8914
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`12/3/19
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`Letter from J. Beaber (Maxell) to
`T. Beasley (Apple)
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`12/9/19
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`Letter from T. Beasley (Apple) to
`J. Beaber (Maxell)
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`12/18/19
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`Letter from J. Beaber (Maxell) to
`T. Beasley (Apple)
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`1/15/20
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`Letter from M. Pensabene (Apple)
`to J. Beaber (Maxell)
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`1/23/20
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`Telephonic Meet and Confer
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`1/24/20
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`Letter from J. Beaber (Maxell) to
`M. Pensabene (Apple)
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`1/31/20
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`Letter from M. Pensabene (Apple)
`to J. Beaber (Maxell)
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`Response to 11/27/19 Apple Letter stating it will
`review Apple’s “substantially complete” productions
`and following up on perceived issues with respect to
`Apple’s interrogatory responses and proposed timing of
`supplementation.
`Response to 12/3/19 Maxell Letter defending discovery
`conduct in case to date, noting potential further
`production of “marginally relevant” documents in
`response to Maxell’s ongoing requests, and responding
`to issues raised by Maxell with respect to interrogatory
`responses.
`Letter following review of Apple’s “substantially
`complete” document and source code productions,
`identifying deficient categories: technical
`specifications/design specifications describing certain
`enumerated functionalities,
` and
`similar documents for each implicated
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`third-party component documents, 22 categories of
`source code, non-source code documents produced on
`source code machine (providing 16 examples), and
`responses to Interrogatory nos. 1, 6, 9, 10, and 12. The
`letter also followed up on the previously raised
`privilege log issue.
`Response to 12/18/19 Maxell Letter disagreeing with
`characterizations of Apple’s production as deficient and
`asserting Maxell’s letter demonstrates lack of good
`faith and was only sent to harass and impose undue
`burden. Letter addresses portions of most categories
`raised in Maxell’s letter, largely noting requests are not
`relevant and proportional, but generally signaling
`investigation into issues.
`Parties discussed the deficiencies raised in Maxell’s
`12/18/19 letter. Apple generally represented that it had
`investigated each deficiency and was producing any
`relevant materials that were found following a
`reasonable investigation. The parties discussed
`Maxell’s requests for source code on a category-by-
`category basis.
`Letter following up on 1/23/20 meet and confer
`requesting clarification regarding scope of Apple’s
`reasonable investigation and raising issue with respect
`to missing testing documents. Letter also follows up on
`source code discussion for one category of requested
`documents, and requests that Apple respond to
`Maxell’s identification of missing projects by source
`code version sent on 11/14/19.
`Letter following up on 1/23/20 meet and confer and
`1/24/20 Maxell Letter, reiterating position with respect
`to P.R.3-4 production and addressing the general
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`Case 5:19-cv-00036-RWS Document 221-1 Filed 03/09/20 Page 7 of 8 PageID #: 8915
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`2/5/20
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`Letter from J. Beaber (Maxell) to
`M. Pensabene (Apple)
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`2/14/20
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`Filing of Maxell Second Motion to
`Compel (D.I. 197)
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`2/14/20
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`Letter from M. Pensabene (Apple)
`to J. Beaber (Maxell)
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`2/19/20
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`Letter from J. Beaber (Maxell) to
`M. Pensabene (Apple)
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`2/26/20
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`2/26/20
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`Letter from J. Beaber (Maxell) to
`M. Pensabene (Apple)
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`Letter from M. Pensabene (Apple)
`to J. Beaber (Maxell)
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`3/4/20
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`Letter from M. Pensabene (Apple)
`to J. Beaber (Maxell)
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`completeness of Apple’s technical document and
`source code production, though noting some source
`code remained to be produced. Letter also defends
`production of technical documents on source code
`computer and responds to Maxell’s identification of
`missing projects by source code version sent on
`11/14/19.
`Response to 1/31/20 Apple letter, addressing
`statements made by Apple regarding mandatory
`citation to materials produced in response to Maxell
`requests and cost-shifting. Also identifies categories for
`which Maxell believed documents were still missing
`and addresses ongoing issue regarding request for
`.
`Motion to Compel requesting Apple be ordered to
`produce certain technical documents (
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`), non-source code documents produced on source
`code computer, forecast documents, licenses, and
`litigation materials.
`Response to 2/5/20 Maxell Letter stating that, with
`exception of Express Transit source code, all of
`Maxell’s source code and technical document
`complaints have been addressed.
`Response to 2/14/20 Apple letter setting forth
`disagreement with representation that all complaints
`have been adequately addressed. Raises issues with
` production, production of non-
`source code documents stored on source code
`computer, and prejudice raised by piecemeal source
`code production.
`Letter following up on Motion to Compel identifying
`further deficiencies that fall within the category of
`technical documents raised in Maxell’s motion.
`Response to 2/19/20 Maxell Letter and 2/21/20 Maxell
`email addressing issues related to
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`production and production of non-source code
`documents stored on source code computer and
`attacking Maxell’s continued requests for materials.
`Response to 2/26/20 Letter and 3/3/20 meet and confer
`regarding Maxell’s proposed Motion for Sanctions,
`stating that Apple is looking into issues raised in
`2/26/20 letter, that Maxell’s proposed Motion is
`unsupported, and that Apple does not believe it can
`consider Maxell’s proposals for representative products
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`Case 5:19-cv-00036-RWS Document 221-1 Filed 03/09/20 Page 8 of 8 PageID #: 8916
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`or sanctions at this time, based on Maxell’s current
`infringement contentions.
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`20.
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`Apple’s December 6, 2019 production marked the first time Mayer Brown was
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`able to identify an internal customer survey produced by Apple.
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`I declare under penalty of perjury under the laws of the United States of America that the
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`above is true and correct and that this Declaration was executed on March 5, 2020 in
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`Washington, D.C.
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`Dated: March 5, 2020
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`By:
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`_______________________
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`Tiffany A. Miller
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