Case 5:19-cv-00036-RWS Document 221-2 Filed 03/09/20 Page 1 of 6 PageID #: 8917
`Case 5:19-cv-00036—RWS DocumeHUMQVEflédCO‘S/OQIZO Page 1 of 6 PageID #: 8917
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`EXHIBIT A
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`EXHIBIT A
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`PUBLIC VERSION
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`Case 5:19-cv-00036-RWS Document 221-2 Filed 03/09/20 Page 2 of 6 PageID #: 8918
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`June 18, 2019
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`BY ELECTRONIC DELIVERY
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`Mayer Brown LLP
`1999 K Street, N.W.
`Washington, D.C. 20006-1101
`Main Tel +1 202 263 3000
`Main Fax +1 202 263 3300
`www.mayerbrown.com
`
`Jamie B. Beaber
`Direct Tel +1 202 263 3153
`Direct Fax +1 202 263 5209
`jbeaber@mayerbrown.com
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`Luann L. Simmons
`O’Melveny & Myers LLP
`Two Embarcadero Center
`28th Floor
`San Francisco, CA 94111
`lsimmons@omm.com
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`Re: Maxell, Ltd. v. Apple Inc., Case No. 5:19-cv-00036-RWS (E.D. Tex.) – Apple’s
`Upcoming Paragraph 3 and P.R. 3-4 Disclosures
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`Dear Ms. Simmons:
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`In a good faith effort to assist Apple in complying with its Discovery Order Paragraph 3
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`and Patent Rule 3-4 obligations, Maxell identifies the following categories of documents that
`Maxell presently believes to be the most relevant to its claims and defenses:
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`1. Service manuals, technical specifications, schematics, block diagrams, research and
`development documents, and any similar documents demonstrating the design and
`operation of the Accused Features or Functions1 of the Accused Products.2
`2. Full source code for each Accused Product in directory format as released, compiled,
`and/or executed on the Accused Product.
`3. User manuals, product catalogues, product guides, brochures, and/or product selection
`guides for the Accused Products.
`4. Documents identifying the manufacturer and model number of the components used in
`the Accused Products that are implicated by the Asserted Patents, as set forth in Maxell,
`Ltd.’s First Set of Interrogatories at Interrogatory No. 6.
`5. Technical specifications, schematics, block diagrams, and source code for the
`components used in the Accused Products that are implicated by the Asserted Patents, as
`set forth in Maxell, Ltd.’s First Set of Interrogatories at Interrogatory No. 6.
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`1 See Maxell, Ltd.’s First Set of Interrogatories at Definitions and Instructions, ¶ 27.
`2 See Maxell, Ltd.’s First Set of Interrogatories at Definitions and Instructions, ¶ 18.
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`Mayer Brown LLP operates in combination with other Mayer Brown entities with offices in Europe and Asia
`and is associated with Tauil & Chequer Advogados, a Brazilian law partnership.
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`Case 5:19-cv-00036-RWS Document 221-2 Filed 03/09/20 Page 3 of 6 PageID #: 8919
`Mayer Brown LLP
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`L. Simmons
`June 18, 2019
`Page 2
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`6. Technical specifications, schematics, block diagrams, and source code relating to the
`components used for “Location” services, “Maps,” and “Find Friends” applications in the
`Accused Apple ’317/’999/’498 Products.3
`7. Technical specifications, schematics, block diagrams, and source code relating to the
`imaging/camera components, image sensor, image processor, and the processing of
`images in the Accused Apple ’493 Products,4 including image stabilization and camera
`zooming during the capture, recording and/or displaying of still and/or video images.
`8. Technical specifications, schematics, block diagrams, and source code relating to
`communication components in the Accused Apple ’438 Products,5 including Bluetooth,
`WiFi, cellular components and the authentication process required to use such
`components for at least “AirDrop” and pairing of iPhones with Apple Watches.
`9. Technical specifications, schematics, block diagrams, and source code relating to control
`of transmission power, reception of communication signals, power amplification of
`transmission signals, performing power control, and/or encoding and decoding of audio
`information in the Accused Apple ’193 Products.6
`10. Technical specifications, schematics, block diagrams, and source code relating to
`receiving and displaying video information from another device or server, conducting a
`video phone call, controlling the reception and display of video information before,
`during, and after conducting a video phone call including, without limitation, these
`functionalities in the “FaceTime” application and applications relating to the function of
`receiving video information from a server including the “iTunes,” “TV,” and “Photos”
`applications implemented in the Accused Apple ’991 Products.7
`11. Technical specifications, schematics, block diagrams, and source code relating to
`controlling the generation and outputting of audible notifications based on an incoming
`signal and/or preventing the output based on time related settings including, without
`limitation, functionalities of Siri “Announce Calls,” “Do Not Disturb,” and/or
`“VoiceOver” in the Accused Apple ’306 Products.8
`12. Technical specifications, schematics, block diagrams, and source code relating to power
`supply, power monitoring, power management and battery saving in the Accused Apple
`’794 Products,9 including power management for the display, the wi-fi, the antenna, the
`camera, Bluetooth, application processor, cellular modem, other electronic components in
`and out of a sleep-mode, “Low Power Mode” functionality, functionality that controls the
`display of low battery icon, and/or “Power Reserve Mode” in the Accused Apple ’794
`Products.
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`3 See Maxell, Ltd.’s Patent Rule 3-1 and 3-2 Disclosure of Asserted Claims and Infringement Contentions, Section
`B.
`4 See id.
`5 See id. As used herein, the Accused Apple ’438 Products refers collectively to the “’the Accused Apple ’438
`AirDrop Products,” the “Accused Apple ’438 Watch Products,” and the “Accused Apple ’438 Pairable Products.”
`6 See id.
`7 See id.
`8 See id.
`9 See id.
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`Case 5:19-cv-00036-RWS Document 221-2 Filed 03/09/20 Page 4 of 6 PageID #: 8920
`Mayer Brown LLP
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`L. Simmons
`June 18, 2019
`Page 3
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`13. Technical specifications, schematics, block diagrams, and source code relating to
`communication units that implement authentication process with another device and
`communicate with another device to control an unlocking operation, these features or
`functions include without limitation the “Watch” application implemented on iPhones,
`the “Unlock with iPhone” functionality in the “Watch Application” on iPhones, the
`“Unlock with iPhone” functionality in Apple watches, the functionality of pairing of
`Apple watches with iPhones and Mac products, and/or the functionality of unlocking
`Mac products with an Apple watch in the Accused Apple ’586 Products.10
`14. Non-public, permanent confidential documents submitted to the FCC for the Accused
`Products.
`15. Documents identifying the internal code names, model numbers, or identifiers and
`external model numbers of the Accused Products.
`16. Documents identifying the Build IDs of code implemented in the processors of the
`Accused Products including, for example, the code implemented in the modems and/or
`application processors and/or image signal processors.
`17. Documents identifying for each Accused Product the preinstalled version of iOS and all
`compatible versions of iOS.
`18. Documents showing the date of first sale, first offer for sale, or first importation into the
`United States of the Accused Products.
`19. Sales data (quantity and value) and profit data for the Accused Products from 2013 to
`present, including data maintained in the ordinary course of business regarding individual
`sales of the Accused Products such as the date of sale, entity responsible for sale,
`customer(s), location of sale and delivery, and costs associated with the sale.
`20. Price lists for the Accused Products from 2013 to present.
`21. Documents showing the cost allocation from 2013 to present of the components in the
`Accused Products that are implicated by the Asserted Patents, as set forth in Maxell,
`Ltd.’s First Set of Interrogatories at Interrogatory No. 6.
`22. Financial reports to shareholders or investors from 2013 to present, and annual and
`quarterly profit and loss statements from 2013 to present.
`23. Any financial statements or reports filed with any government agency, including the
`SEC, from 2013 to present.
`24. Marketing materials, market studies, and customer surveys relating to the Accused
`Products, particularly studies focused on the benefits, extent of use, and reasons for
`releasing the Accused Products.
`25. Sales forecasts and/or projections prepared by or for Apple related to the projected
`revenue, profitability, and/or units of iPhones, iPads, iPod Touches, Apple Watches, and
`Mac Products expected or anticipated to be sold or distributed in the United States on or
`before 2022.
`26. Meeting notes or presentations related to the Accused Products.
`27. Business plans for the Accused Products.
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`10 See id.
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`Case 5:19-cv-00036-RWS Document 221-2 Filed 03/09/20 Page 5 of 6 PageID #: 8921
`Mayer Brown LLP
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`L. Simmons
`June 18, 2019
`Page 4
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`28. Documents or correspondence relating to Apple’s licensing practices, policies, or
`strategy.
`29. Patent license agreements between Apple and any third-parties pertaining to the Accused
`Products or products that are reasonably similar to the Accused Products.
`30. Documents regarding any efforts to design around the Asserted Patents.
`31. Documents relating to any comparison between the Asserted Patents and the Accused
`Products.
`32. Documents relating to Hitachi, Ltd., Hitachi Consumer Electronics Co., Ltd., Hitachi
`Maxell, Ltd., and/or Maxell, Ltd., and or any subsidiary or affiliate thereof.
`33. Documents evidencing or relating to prior communications with Hitachi, Ltd., Hitachi
`Consumer Electronics Co., Ltd., Hitachi Maxell, Ltd., and/or Maxell, Ltd., and or any
`subsidiary or affiliate
`thereof, concerning
`the Asserted Patents,
`including
`communications related
`to any potential patent
`license agreement or business
`arrangement.
`34. Documents referring or relating to Apple’s first awareness of each of the Asserted
`Patents.
`35. Any document alleged to be prior art to the Asserted Patents.
`36. Agreements involving the Accused Products, including sample sales agreements,
`distribution agreements, and/or manufacturing and development agreements relating to
`any Accused Products.
`37. Corporate organization charts or documents identifying individuals most knowledgeable
`about the Accused Products, including identities of individuals responsible for testing,
`developing, marketing, and selling any such Accused Products.
`38. Corporate organization charts or documents identifying individuals most knowledgeable
`about the Accused Features or Functionalities of the Accused Products, including
`identities of individuals responsible for testing, developing, any implementing any such
`Accused Features or Functions.
`39. Apple’s document retention policy.
`40. Documents referring or relating to differences in operation between the Accused Products
`as they relate to the Accused Features or Functions.
`41. Documents referring or relating to any modifications to the Accused Products’ source
`code, including without limitation any communications concerning the reasons for such
`modifications.
`42. Any sales training or service materials relating to any of the Accused Products.
`43. Documents relating to any study, search, or investigation conducted by or on behalf of
`Apple to obtain information relevant to the patentability, validity, enforceability or scope
`of any of the Asserted Patents, including without limitation, any search for prior art to
`any of the Asserted Patents.
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`* * * * *
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`The foregoing categories are not exhaustive but merely intended to assist Apple in its
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`document collection efforts. Maxell reserves the right to identify additional categories of relevant
`documents.
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`Case 5:19-cv-00036-RWS Document 221-2 Filed 03/09/20 Page 6 of 6 PageID #: 8922
`Mayer Brown LLP
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`L. Simmons
`June 18, 2019
`Page 5
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`cc: Counsel of Record
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`Sincerely,
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`Jamie B. Beaber
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`PUBLIC VERSION
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