Case 5:19-cv-00036-RWS Document 223 Filed 03/09/20 Page 1 of 3 PageID #: 8971
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL LTD.,
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`Plaintiff,
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`v.
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`APPLE INC,
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`Defendant.
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`CIVIL ACTION NO. 5:19-CV-00036-RWS
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`ORDER
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`Before the Court is Maxell’s motion for extension of time to supplement infringement
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`contentions pursuant to P.R. 3-1(g). Docket No. 207. Maxell filed this motion following the
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`Court’s order compelling Maxell to produce supplemental infringement contentions by March 13,
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`2020. Docket No. 204.
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`Maxell seeks an extension of its deadline to file from March 13, 2020, to March 23, 2020.
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`Maxell asserts that the March 13, 2020 deadline is based on Apple’s incorrect representation that
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`its source code production was complete on February 12, 2020. Docket No. 207 at 2. Maxell
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`further asserts that Apple has not identified the corresponding accused products/operating system
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`versions associated with any code produced after January 31, 2020. Maxell claims that, as a result,
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`it does not have necessary information to conduct a meaningful source code review and provide
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`citations to material produced after January 31. Id. at 2.
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`Apple responds that Maxell has engaged in a “goalpost-moving approach to source code
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`discovery” which has allowed them to delay compliance with P.R. 3-1(g) for six months. Docket
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`No. 214 at 1. Apple further asserts that Maxell attempts to delay its compliance with P.R. 3-1(g)
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`Case 5:19-cv-00036-RWS Document 223 Filed 03/09/20 Page 2 of 3 PageID #: 8972
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`with “serial requests for source code.” Id. Apple asserts that much of the source code has been
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`available since August 2019 and that any source code produced after that date is not necessary to
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`comply with P.R. 3-1(g). Id. at 2.
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`Accusations that the other party has not complied with its pre-trial obligations is a recurrent
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`theme in this litigation. See Docket No. 56 (Maxell’s Motion to Compel Apple to Produce Timely
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`Discovery); Docket No. 123 (Apple’s Motion to Compel Infringement Contentions Compliant
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`with Rule 3-1(g)); Docket No. 156 (Apple’s Motion to Compel Licensing and Negotiation
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`Documents); Docket No. 197 (Maxell’s Motion to Compel). Each party argues that the other is
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`engaged in a pattern of bad behavior. See Docket No. 199; Docket No. 210. In addressing the
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`party’s motions, the Court is aware of this history.
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`The Court ordered Maxell to produce infringement contentions compliant with Rule 3-1(g)
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`by March 13, 2020, based on Apple’s representation that source code production was complete on
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`February 12, 2020. Mindful of Maxell’s pending motion to compel, the Court noted that Maxell
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`could seek leave to supplement its contentions should it succeed in demonstrating that Apple’s
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`representation was incorrect. Docket No. 204 at 5.
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`It would be improper at this point to allow Maxell to further delay serving supplemental
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`infringement contentions. The rules requiring infringement contentions are “designed to require
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`parties to crystallize their theories of the case early in the litigation and to adhere to those theories
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`once they have been disclosed.” LG Electronics Inc. v. Q-Lity Computer Inc., 211 F.R.D. 360
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`(N.D. Cal 2002). Although Maxell insists that Apple’s source code production is incomplete, it is
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`clear that Apple has already produced a substantial amount of source code. In light of the purpose
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`of infringement contentions, then, the proper resolution to the parties’ disputes is to require Maxell
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`to serve infringement contentions reflecting the source code that has been produced while allowing
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`Case 5:19-cv-00036-RWS Document 223 Filed 03/09/20 Page 3 of 3 PageID #: 8973
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`Maxell a later opportunity to supplement its contentions to reflect any necessary source code
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`produced pursuant to its motion to compel. PersonalWeb Tech. v. Google Inc., No. C13-01317-
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`EJD, 2014 WL 218164, at *1–2 (N.D. Cal. Jan. 17, 2014) (noting a history of allowing further
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`supplemented infringement contentions following a motion to compel).
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`Though rolling infringement contentions are generally disfavored, Nike, Inc. v. Adidas Am.,
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`Inc., 479 F. Supp. 2d 664, 669–70 (E.D. Tex 2007), allowing a party to delay serving infringement
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`contentions for resolution of every discovery dispute is likewise disfavored. Accordingly,
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`Maxell’s motion for extension of time is DENIED. Maxell shall produce infringement contentions
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`reflecting source code that was produced prior to February 12, 2020. Following resolution of
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`Maxell’s motion to compel (and the completion of source code production pursuant to such motion
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`to compel, if applicable), Maxell may seek leave to supplement its contentions.
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`Page 3 of 3
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`.
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`____________________________________
`ROBERT W. SCHROEDER III
`UNITED STATES DISTRICT JUDGE
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`SIGNED this 9th day of March, 2020.
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