Case 5:19-cv-00036-RWS Document 227 Filed 03/11/20 Page 1 of 11 PageID #: 9003
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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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`Defendant.
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`JURY TRIAL DEMANDED
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`APPLE INC.’S MOTION TO COMPEL COMPLETE RESPONSES TO
`INTERROGATORY NOS 6, 10, 12, 17, AND 19
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`Case 5:19-cv-00036-RWS Document 227 Filed 03/11/20 Page 2 of 11 PageID #: 9004
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`TABLE OF AUTHORITIES
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`Page
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`I.
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`ARGUMENT ..................................................................................................................... 1
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`A.
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`B.
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`Maxell’s Has Not Responded (At All) To Interrogatory Nos. 6, 12, and 19 ......... 1
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`Maxell Improperly Relies on Rule 33(d) for Interrogatory Nos. 10 and 17 .......... 4
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`II.
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`CONCLUSION .................................................................................................................. 7
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`Case 5:19-cv-00036-RWS Document 227 Filed 03/11/20 Page 3 of 11 PageID #: 9005
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`According to Maxell, Apple should be forced to respond substantively and completely to
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`Maxell’s interrogatories, but the same type of response is not required of Maxell. Indeed, Maxell
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`has not even deigned to provide the same level of response that it has demanded (and has
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`convinced the Court to order) from Apple for the interrogatories that are the subject of this
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`motion. Maxell’s continued delay in meeting its basic written discovery obligations materially
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`prejudices Apple’s ability to defend itself in this case. Apple therefore requests that the Court
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`order Maxell to provide complete responses within two weeks of this Court’s decision.
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`I.
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`ARGUMENT
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`A. Maxell’s Has Not Responded (At All) To Interrogatory Nos. 6, 12, and 19
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`Interrogatory No. 6 asks Maxell to identify the portion(s) of the Asserted Patents that
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`Maxell contends evidence that the written description and enablement requirements are met:
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`For each claim limitation of the asserted claims of the Asserted Patents, explain
`and identify in chart or table format, by column and line number(s) (or by page
`and paragraph if the document does not include line numbers), the portion(s) of
`the Asserted Patents and any other documents or things that you contend evidence
`that each claim limitation meets each of the written description and enablement
`requirements of 35 U.S.C. § 112, Paragraph 1.
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`The information responsive to this interrogatory is unquestionably relevant as Apple has
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`specifically alleged—in its Patent Rule 3-3 invalidity disclosures—that the asserted patents are
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`invalid for lack of written description and lack of enablement under section 112. Yet, Maxell
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`provides no response to this interrogatory. Sol IP, LLC v. AT&T Mobility LLC, No. 2:18-cv-
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`00526-RWS-RSP, 2020 WL 60140, at *2 (E.D. Tex., Jan. 5, 2020) and Finjan, Inc. v. ESET,
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`LLC, No. 17CV183 CAB (BGS), 2018 WL 4772124, at *5 (S.D. Cal. Oct. 3, 2018), review
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`denied, No. 317CV00183CABBGS, 2018 WL 6075797 (S.D. Cal. Nov. 21, 2018) do not excuse
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`Maxell’s failure to answer for at least two reasons.
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`First, the patentee in Sol IP “provided citations to the pages and figures of those
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`Case 5:19-cv-00036-RWS Document 227 Filed 03/11/20 Page 4 of 11 PageID #: 9006
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`applications” and included “ample information from which defendants can evaluate how the
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`earlier applications support plaintiff’s claimed priority dates.” Sol IP, 2020 WL 60140, at *2.
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`Maxell has provided no response whatsoever. Ex. A, 2/21/20 Maxell’s Second Suppl. Response
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`to Apple’s First Set of Interrogatories at 23-24. Second, in both Sol IP and Finjan the courts
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`found that the requested discovery had either already been provided or other discovery vehicles
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`were available, including, for example, a deposition. Finjan, 2018 WL 6075797, at *3; Sol IP,
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`2020 WL 60140, at *2.
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` Because this information is
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`only available to Apple by interrogatory, a substantive and complete response is warranted.
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`Interrogatory No. 12 asks Maxell to state the date that it—and its predecessor-in-interest
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`Hitachi—first became aware that Apple was making, using, importing, offering for sale or
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`selling each accused product and to identify the person(s) most knowledgeable of that awareness:
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`For each Apple product you contend infringes any of the Asserted Patents, state
`the date that you first became aware that Apple was making, using, importing,
`offering for sale or selling each such product, describe how you obtained such
`awareness, and identify the person(s) most knowledgeable regarding such initial
`awareness.
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`But Maxell’s response is limited to Maxell’s knowledge, and doesn’t include Hitachi’s
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`knowledge. Ex. A, 2/21/20 Maxell’s Second Suppl. Response to Apple’s First Set of
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`Interrogatories at 40. What is more, Maxell’s response as to its own knowledge states only when
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`it became aware of Apple’s alleged awareness of the patents.1 Such a response “does not
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`properly address when [the patentee] first became aware of the products.” See FatPipe
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`Networks India Ltd. v. XRoads Networks, Inc., No. 2:09-CV-186, 2010 WL 3064369, at *3 (D.
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`Case 5:19-cv-00036-RWS Document 227 Filed 03/11/20 Page 5 of 11 PageID #: 9007
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`Utah Aug. 3, 2010) (ordering patentee to identify specific dates and individuals who first
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`discovered the products) (emphasis added). Maxell does not, and cannot, dispute that the
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`interrogatory seeks relevant information, e.g., acquiescence and exceptional case. See, e.g., id.;
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`UltimatePointer, L.L.C. v. Nintendo Co., No. 6:11-CV-496-LED, 2014 WL 12521379, at *3
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`(E.D. Tex. June 4, 2014) (ordering patentee to state the “specific dates” it first learned of each
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`accused product). A substantive and complete response is warranted.
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`Interrogatory No. 19 asks Maxell to provide the bases for its contention that it has
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`complied with 35 U.S.C. § 287, or to state its contention that compliance is not required:
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`To the extent Maxell contends that Maxell has complied with 35 U.S.C. § 287
`with respect to the Subject Products or that its compliance with 35 U.S.C. § 287
`for the Subject Products was not required, state the complete factual and legal
`bases for such contention. . . .
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` Ex. C,
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`2/24/20 Maxell’s First Suppl. Response to Apple’s Second Set of Interrogatories at 8.
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`should Maxell fail to prove actual notice, Maxell may not seek pre-suit damages unless it proves
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`compliance with section 287. See Huawei Techs. Co. v. T-Mobile US, Inc., No.
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`216CV00052JRGRSP, 2017 WL 4183103, at *2 (E.D. Tex. Sept. 4, 2017), report and
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`recommendation adopted, No. 216CV00052JRGRSP, 2017 WL 4251365 (E.D. Tex. Sept. 20,
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`2017). So long as the parties dispute actual notice, and so long as Maxell seeks pre-suit
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`damages, Apple is entitled to a response on whether Maxell can prove that it has complied with
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`section 287—the only way, outside of actual notice, that Maxell can obtain pre-suit damages. As
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`Maxell must prove compliance with section 287 absent actual notice, Maxell stating simply that
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`Case 5:19-cv-00036-RWS Document 227 Filed 03/11/20 Page 6 of 11 PageID #: 9008
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`it is “not relying” on section 287 is not responsive.
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`B. Maxell Improperly Relies on Rule 33(d) for Interrogatory Nos. 10 and 17
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`Interrogatory No. 10 asks Maxell to describe its communications with third parties
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`regarding infringement, and asks Maxell to identify specifics of those discussions:
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`Describe in detail all communications between you and anyone else regarding
`actual or potential infringement, licensing, assignment, damages and/or royalties
`(potential or actual) concerning the subject matter disclosed or claimed in the
`Asserted Patents, including, without limitation, the identity of each person or
`entity involved, the dates of each such communication, the products at issue, the
`patents and patent claims at issue, any resulting royalty rate(s), damages or other
`terms, and the outcome, result, and/or status of such communications, and the
`identity of any license agreements relating to any of the Asserted Patents.
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` Ex. A, 2/21/20 Maxell’s Second Suppl. Response to Apple’s First Set of Interrogatories
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`at 35-36. But to support its statement, Maxell cites Rule 33(d), and provides a non-descript list
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`of documents containing thousands of pages of contentions, non-OCRed foreign-language
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`documents, depositions transcripts, and other documents totaling 17,899 pages where Apple can
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`purportedly “ascertain relevant information responsive to this interrogatory.” Id. at 35-36.
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`Rule 33(d) applies only where “the burden of deriving or ascertaining the answer will be
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`substantially the same for either party.” D.I. 126 at 8.
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`Case 5:19-cv-00036-RWS Document 227 Filed 03/11/20 Page 7 of 11 PageID #: 9009
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` Maxell “may not avoid answers by imposing on the interrogating party a mass of
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`business records from which the answers cannot be ascertained by a person unfamiliar with
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`them.” D.I. 126 at 8 (quoting Quintel Tech. Ltd. v. Huawei Techs. USA, Inc., No. 4:15-cv-307-
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`AM-CMC, 2017 WL 3712346, at *7 (E.D. Tex. June 29, 2017).)2
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`Even if Maxell’s reliance on Rule 33(d) were proper, which it is not, the cited documents
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`cannot address the substance of all oral communications and a narrative response is required.
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`Interrogatory No. 17 asks Maxell to identify and describe the facts relating to Maxell’s
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`contention that it is entitled to past damages and identify all relevant documents (e.g., any
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`applicable assignment agreements) and individuals knowledgeable about Maxell’s claim:
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`For each Asserted Patent, identify and describe the basis for, and all facts and
`circumstances supporting, evidencing, or otherwise relating to, Maxell’s claim
`that it is entitled to damages for any alleged infringement by Apple for any time
`period before March 15, 2019, including the specific time period for which you
`contend damages are recoverable, and identify all relevant documents (e.g., any
`applicable assignment agreements) by production number and individuals
`knowledgeable about Maxell’s claim.
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`This interrogatory necessarily requires Maxell to identify the term(s) of any license agreement(s)
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`that Maxell contends convey the rights to collect past damages for each Asserted Patent. Maxell
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`readily admits that it has not done so. Ex. B, 1/30/20 Beaber Ltr. at 3-4. Instead, Maxell
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`responded by providing a non-descript list of bates ranges containing assignment documents,
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`documents exchanged during negotiations between Maxell and Apple, and license agreements
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`where Apple purportedly can “ascertain relevant information responsive to this interrogatory.”
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`Ex. C, 2/24/20 Maxell’s First Suppl. Response to Apple’s Second Set of Interrogatories at 3-4.
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`2 Maxell’s claim that only its attorneys have knowledge of the licenses to asserted patents does
`not preclude a response. In re Northrop Grumman Corp. ERISA Litig., No. CV 06-6213
`MMM(JCX), 2011 WL 13291073, at *1 (C.D. Cal. Jan. 24, 2011) (ordering responses to include
`“information acquired within the scope of plaintiffs’ counsel’s agency relationship with plaintiffs
`is imputed to plaintiffs (even if not independently known to plaintiffs)”).
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`Case 5:19-cv-00036-RWS Document 227 Filed 03/11/20 Page 8 of 11 PageID #: 9010
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`But Apple disputes that Maxell is entitled to the full scope of past damages. And Apple
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`is not in the same position as Maxell to ascertain the facts and circumstances surrounding
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`Maxell’s agreements, including what agreements and what terms in those agreements that
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`Maxell contends entitle it to collect past damages for each Asserted Patent. See, e.g., Mancini v.
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`Ins. Corp. of New York, No. CIV. 07CV1750-L NLS, 2009 WL 1765295, at *3 (S.D. Cal. June
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`18, 2009) (“Because Plaintiffs are more familiar with their contentions than [Defendants] could
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`be, the burden is not equal and the use of Rule 33(d) is inappropriate”); Fresenius Med. Care
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`Holding Inc. v. Baxter Int’l, Inc., 224 F.R.D. 644, 652 (N.D. Cal. 2004) (finding citation to
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`documents inadequate because “Baxter is more familiar with its contentions than is Fresenius, so
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`the burden is not equal”). Maxell must therefore identify the factual basis, including the specific
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`terms of any agreements, that Maxell contends entitles it to collect past damages. See Fleming v.
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`Escort, Inc., No. CV 09-105-S-BLW, 2011 WL 573599, at *2 (D. Idaho Feb. 13, 2011)
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`(interrogatories seeking “which portions of the document support Escort’s legal contention . . .
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`cannot be found in the documents but must be pointed out by counsel”).
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`C.
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`Case 5:19-cv-00036-RWS Document 227 Filed 03/11/20 Page 9 of 11 PageID #: 9011
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`II.
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`CONCLUSION
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`Apple respectfully requests that the Court order Maxell to provide complete responses to
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`Interrogatory Nos. 6, 10, 12, 17, and 19 within two weeks of the Court’s order. Further, because
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`Maxell’s improper reliance on Rule 33(d) directly contradicts its own demands of Apple, Apple
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`asks that the Court grant it fees and costs in moving to compel on Interrogatory Nos. 10 and 17.
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`Case 5:19-cv-00036-RWS Document 227 Filed 03/11/20 Page 10 of 11 PageID #: 9012
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`March 9, 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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`Case 5:19-cv-00036-RWS Document 227 Filed 03/11/20 Page 11 of 11 PageID #: 9013
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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 document via the Court's
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`CM/ECF system per Local Rule CV-5(a)(3) on March, 9, 2020.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`CERTIFICATE OF CONFERENCE
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`On February 19, 2020, pursuant to Local Rule CV-7(h), counsel for Defendants met and
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`conferred with counsel for Plaintiff, and counsel for Plaintiff indicated that Plaintiff is opposed to
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`the relief sought by this Motion.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`9
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