Case 5:19-cv-00036-RWS Document 226 Filed 03/10/20 Page 1 of 7 PageID #: 8994
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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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`Civil Action NO. 5:19-cv-00036-RWS
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`v.
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`APPLE INC.,
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`JURY TRIAL DEMANDED
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`Defendant.
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`APPLE INC.’S RESPONSE TO MAXELL, LTD.’S MOTION
`FOR EXTENSION OF TIME TO SUPPLEMENT
`INFRINGEMENT CONTENTIONS PURSUANT TO P.R. 3-1(G)
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`Case 5:19-cv-00036-RWS Document 226 Filed 03/10/20 Page 2 of 7 PageID #: 8995
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`Outside of simply producing all source code in the entire company for each of the
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`accused products and for every accused operating system version Apple has released for those
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`products over the last six years, which is plainly not required, there was no way for Apple to ever
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`satisfy Maxell’s goalpost-moving approach to source code discovery in this case. This approach
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`has allowed Maxell to successfully delay its compliance with Patent Rule 3-1(g) by six months
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`from its September 13, 2019 deadline to amend under Patent Rule 3-1(g). See D.I. 46 at 8. Now
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`faced with an order requiring them to finally produce compliant source code contentions, which
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`also specifically contemplates that Apple is continuing to produce source code to satisfy
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`Maxell’s serial requests for source code, Maxell is trying to delay its compliance even further.
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`Fact discovery closes at the end of this month, depositions of Apple’s technical witnesses are
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`underway, and Maxell has still not told Apple in which, of the
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` source code files
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`that Apple has produced in this case, there is source code that relates to more than 110 claim
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`limitations that Maxell has conceded are source code-relevant limitations, in compliance with the
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`Patent Rules. Prejudice to Apple’s ability to prepare its defense is plain, and Maxell should not
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`be excused from its Patent Rule 3-1(g) obligations or the Court’s order any further.
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`According to Patent Rule 3-4, on August 14, 2019, Apple made available more than
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` source code files that were plainly sufficient to describe the features Maxell accused in
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`its Patent Rule 3-1 disclosures. After Apple agreed to extend the time for Maxell to comply with
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`Patent Rule 3-1(g), it finally served source code infringement contentions on October 15. But as
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`this Court has now determined, Maxell’s citations to “large number of undifferentiated source
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`code files and folders” were not “sufficiently focused” and did not comply with its obligations
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`under the Local Patent Rules. D.I. 204 at 5.
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`It remains Apple’s position that the additional files Maxell has requested (and that Apple
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`1
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`Case 5:19-cv-00036-RWS Document 226 Filed 03/10/20 Page 3 of 7 PageID #: 8996
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`has produced) following Apple’s August 2019 production are not necessary to understand the
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`relevant operation of the accused features, to comply with Patent Rule 3-1(g), or to prove any
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`element of its case.1 Nevertheless, Apple has worked diligently to produce all of the source code
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`that Maxell has requested. On January 31, to avoid further disputes and to clarify the record,
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`Apple sent Maxell a letter and chart detailing the status of all source code issues that Maxell had
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`raised, and stated Apple’s expectation that it has made, or will, make available all requested code
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`by February 12. Ex. A, 1/31/20 Pensabene Ltr. & Exhibit. Apple then confirmed its satisfaction
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`of the open items in a February 14 letter. Thus, it was Apple’s understanding that, as of
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`February 12, it had fully addressed all source code issues identified by Maxell in response to
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`Apple’s motion to compel, as well any others that had been raised since that time.
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`Rather than respond to Apple’s letters, and before even inspecting what Apple had
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`produced, Maxell ran to court and filed its February 14 motion to compel, which included 14
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`source code issues that it identified as allegedly having not been addressed. Because Maxell had
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`not even inspected what Apple produced before filing its motion or had bothered to meet and
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`confer with Apple, it is of no surprise that Maxell was largely mistaken in its motion. In fact, at
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`least 9 of the 14 source code projects that Maxell identified in its motion had either already been
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`produced or do not exist. Apple promptly addressed the remaining five projects, which Maxell
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`first brought to Apple’s attention in that motion to compel, in just a couple of days, just as Apple
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`would have had Maxell simply picked up the phone or written to Apple to discuss them.
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`Maxell now seeks to delay supplementing its infringement contentions until March 23,
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`roughly a week before the close of fact discovery, because just five projects of source code were
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`1 Based on Maxell’s argument that these files were all necessary, Apple expects that Maxell will
`cite to the specific relevant portions of these files in its infringement contentions.
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`2
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`Case 5:19-cv-00036-RWS Document 226 Filed 03/10/20 Page 4 of 7 PageID #: 8997
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`missing from the
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` source code files Apple has produced in this case. But the Court’s
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`February 28 Order already clearly states how this issue is to be addressed:
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`Maxell’s deadline to serve revised infringement contentions pursuant to this Order
`is March 13, 2020. To the extent that Maxell demonstrates through its motion to
`compel that source code production is incomplete, Maxell may move for leave to
`supplement its contentions.
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`D.I. 204 at 5. The Court has, thus, already decided how Maxell is to handle any amendments
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`necessitated by source code Apple produced after February 12. Consistent with that order,
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`Maxell must serve supplemental contentions by March 13. And should Maxell desire to
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`supplement its contentions after that, with source code from within any of the five projects Apple
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`produced after February 12, Maxell may seek leave of court to do so. But as Apple told Maxell
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`before it filed this motion, Apple will promptly consider such a request with the expectation that
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`the issue should be capable of resolution with an unopposed motion. Maxell’s piecemeal
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`requests for additional code does not excuse its wholesale failure to provide compliant
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`infringement contentions for all 10 asserted patents and the dozens of accused products based on
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`the massive amount of source code Apple produced prior to February 12, the vast majority of
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`which have no connection to five source code projects produced just a couple of days after
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`February 12. Patent Rule 3-1(g) would be meaningless if a plaintiff could simply circumvent
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`compliance by making serial demands for additional source code.
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`Maxell’s remaining excuse is also meritless. Maxell did not serve Interrogatory No. 12—
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`seeking information about source code project names and operating systems—until October 4,
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`2019, 51 days after Apple made its source code available in this case, and 3 weeks after the
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`original deadline for Maxell’s Patent Rule 3-1(g) supplemental infringement contentions.
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`Regardless, Apple has responded to Interrogatory No. 12 and repeatedly supplemented that
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`response on a rolling basis, including on December 12, January 31, February 6, March 3, and
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`3
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`Case 5:19-cv-00036-RWS Document 226 Filed 03/10/20 Page 5 of 7 PageID #: 8998
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`most recently, March 5, in response to Maxell’s continuing source code demands. Despite
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`Apple’s diligent supplementation, at no time has Maxell updated its infringement contentions to
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`incorporate any of this information or the additional code it has demanded be produced in this
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`litigation.
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`For these reasons, Apple respectfully asks that the Court deny Maxell’s motion.
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`Case 5:19-cv-00036-RWS Document 226 Filed 03/10/20 Page 6 of 7 PageID #: 8999
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`March 6, 2020
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`/s/ Luann L. Simmons
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`Luann L. Simmons (Pro Hac Vice)
`lsimmons@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center
`28th Floor
`San Francisco, CA 94111
`Telephone: 415-984-8700
`Facsimile: 415-984-8701
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`Xin-Yi Zhou (Pro Hac Vice)
`vzhou@omm.com
`Anthony G. Beasley (TX #24093882)
`tbeasley@omm.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
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`Laura Bayne Gore (Pro Hac Vice)
`lbayne@omm.com
`O’MELVENY & MYERS LLP
`Times Square Tower, 7 Times Square
`New York, NY 10036
`Telephone: 212-326-2000
`Facsimile: 212-326-2061
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`Melissa R. Smith (TX #24001351)
`melissa@gilliamsmithlaw.com
`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
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`Attorneys for Defendant Apple Inc.
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`5
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`Case 5:19-cv-00036-RWS Document 226 Filed 03/10/20 Page 7 of 7 PageID #: 9000
`Case 5:19-cv-00036-RWS Document 226 Filed 03/10/20 Page 7 of 7 PageID #: 9000
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this docmnent via the Coufl's
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`CM/ECF system per Local Rule CV—5(a)(3) on March 6, 2020.
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`/s/ Melissa R. Smith
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`Melissa R. Smith
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