Case 5:19-cv-00036-RWS Document 229 Filed 03/13/20 Page 1 of 10 PageID #: 9030
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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 FOR PROTECTIVE ORDER
`REGARDING CERTAIN MAXELL RULE 30(B)(6) DEPOSITION TOPICS
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`Case 5:19-cv-00036-RWS Document 229 Filed 03/13/20 Page 2 of 10 PageID #: 9031
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`Maxell served Apple with an 84-topic Rule 30(b)(6) deposition notice that included
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`overly-broad and (at best) marginally-relevant topics. Despite this, the parties are in agreement
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`about the scope of testimony (if any) Apple will provide on the topics in Maxell’s notice except
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`for the 15 that are the subject of this motion.1 Those 15 topics: (1) are redundant of Apple’s
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`written discovery responses, which are more comprehensive than any testimony that a corporate
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`witness could provide; (2) fail to identify the testimony sought with the required “reasonable
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`particularity” that would permit Apple to prepare a witness to testify; (3) seek plainly privileged
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`information from Apple’s in-house or outside counsel; and/or (4) seek discovery about
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`discovery. Maxell agreed to a 60-hour limit on Apple depositions in this case. D.I. 42 at 4. But
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`even a minimum inquiry into the full scope of the topics discussed below would exceed that
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`limit, to say nothing of the time required to address Maxell’s other Rule 30(b)(6) topics and
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`numerous Rule 30(b)(1) deponents. A protective order is, therefore, warranted.
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`I.
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`LEGAL STANDARD
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`“‘Good cause’ [for a protective order] exists when justice requires the protection of ‘a
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`party or person from [] oppression, or undue burden or expense.’” Ferko v. Nat’l Ass’n for Stock
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`Car Auto Racing, Inc., 218 F.R.D. 125, 133 (E.D. Tex. 2003). Rule 26, however, does not
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`permit a “‘scorched earth,’ ‘no stone unturned’ (potentially numerous times) approach to
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`discovery.” Finjan, Inc. v. ESET, LLC, No. 17CV183 CAB (BGS), 2018 WL 4772124, at *5
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`(S.D. Cal. Oct. 3, 2018).
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`1 The parties have worked together to narrow the disputes at issue. Apple is confining this
`motion to the disputes it understands, based on the parties’ meet-and-confer history, to be live
`and contested. Should Maxell raise additional disputes not addressed in the parties’ recent meet-
`and-confer, Apple will discuss them with Maxell as soon as possible, attempt to reach
`agreement, and raise with the Court if necessary.
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`1
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`Case 5:19-cv-00036-RWS Document 229 Filed 03/13/20 Page 3 of 10 PageID #: 9032
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`II.
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`ARGUMENT
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`A.
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`Topics 1, 3, and 8 Are Redundant of Apple’s Discovery Responses
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`Topic 1 seeks model numbers and code names for more than 120 Apple desktops,
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`laptops, iPods, iPhones, iPads, and Watches. And Topic 8 seeks, for each of these Accused
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`Products, “the preinstalled Version of iOS and all compatible Versions of iOS,” totaling over
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`3,961 combinations of Accused Products and operating systems. Ex. A 2/7/20 Pensabene Ltr. at
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`1. But Apple has already provided the information requested by Topics 1 and 8 in its 27 page-
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`long comprehensive response to Interrogatory No. 1. Topic 3 seeks, for each Accused Product,
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`the supplier name, product name, internal model number, and supplier model number for all
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`accused components.
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`Given the minutiae called for by these topics, all already provided by Apple’s
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`interrogatory responses, these topics plainly warrant a protective order. Beyond being
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`impossible, asking an Apple witness to memorize information that took months to compile, and
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`has already been provided to Maxell, is a textbook invitation of undue burden and harassment
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`not required by Rule 30(b)(6). Bayer Healthcare Pharm., Inc. v. River's Edge Pharm., LLC, No.
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`1:11-CV-01634-RLV, 2013 WL 11901530, at *2 (N.D. Ga. Apr. 26, 2013) (“There is no
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`requirement that a Rule 30(b)(6) witness memorize thousands of pages of documents and be able
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`to recall in exacting detail the minutia of such voluminous records.”).
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`Attempting to agree on the scope of these topics, and to understand whether it was
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`possible to reasonably prepare an Apple witness or witnesses to testify, Apple invited Maxell to
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`clarify the information it was seeking, for example, if there were any perceived discrepancies in
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`the information that an Apple witness could explain. Maxell declined.
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`2
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`Case 5:19-cv-00036-RWS Document 229 Filed 03/13/20 Page 4 of 10 PageID #: 9033
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`B.
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`Topics 4, 7, 29, and 58 Are Irrelevant and Lack Reasonable Particularity
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`Apple is already producing witnesses in response to other topics to testify about the
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`relevant technical operations of the accused functionality and components, as identified in
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`Maxell’s infringement contentions, including any technical requirements for such functionality.
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`These topics, however, are essentially boundless and extend far beyond any specific issues, the
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`subject of which might be relevant, and seek the impossible, i.e., a witness to testify about every
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`communication Apple has had with virtually every one of its suppliers.
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` Topic 7 seeks all communications concerning
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`all of the source code Apple has produced in this case. Topic 29 seeks all facts concerning the
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`negotiations and communications with third parties related to the research and development of
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`the accused features. Maxell has not limited these topics to any particular time, components, or
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`subjects of communication.
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`To avoid requiring court intervention, Apple asked that Maxell identify the specific
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`components and the specific types communications in which it was interested so that Apple
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`could consider whether it could designate any witness to address Maxell’s inquiries.
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`3
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`Case 5:19-cv-00036-RWS Document 229 Filed 03/13/20 Page 5 of 10 PageID #: 9034
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` This did not meaningfully limit the scope of the topics “with particularity.”
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`DarbeeVision, Inc. v. C&A Mktg., Inc., No. CV 18-0725 AG (SSX), 2019 WL 2902697, at *8
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`(C.D. Cal. Jan. 28, 2019) (explaining that “[i]t is not realistic to expect a 30(b)(6) witness to be
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`able to testify about every possible internal communication” and strongly encouraging the parties
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`to “meet and confer . . . so that Defendant will know what specific information Plaintiff wants
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`and can prepare the witness accordingly”).
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`C.
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`Topics 38 and 41 Improperly Seek Discovery About Discovery
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`Apple has already agreed that its witnesses will be prepared to discuss the identity and
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`storage of documents (including source code) related to the substantive subject matter of their
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`testimony (Ex. D, 2/14/20 Meet and Confer Tr. at 48:2-24), but Maxell’s notice seeks far more
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`and intrudes into attorney work product. Topics 38 and 41 inquire about “Defendant’s efforts to
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`preserve, identify, collect, and produce relevant and/or responsive information and Documents in
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`the Litigation” and “Defendant’s efforts to collect source code of the Accused Products.”
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`“In cases that involve reams of documents and extensive document discovery, the
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`selection and compilation of documents is often more crucial than legal research,” and an
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`attorney’s selection and review of those documents reflects “legal theories and thought
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`processes, which are protected as work product.” Shelton v. Am. Motors Corp., 805 F.2d 1323,
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`1329 (8th Cir. 1986). Accordingly, “courts will not compel” disclosure based solely on Maxell’s
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`“mere suspicion” that Apple “has not produced adequate documents.” Alley v. MTD Prod., Inc.,
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`No. 3:17-CV-3, 2018 WL 4689112, at *2 (W.D. Pa. Sept. 28, 2018) (denying 30(b)(6) topics
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`regarding Defendants’ systems for creating, storing, retrieving, and retaining documents). Such
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`requests are more properly resolved as “part of the general discovery meet-and-confer process
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`without the need for formal ‘discovery-on-discovery’ requests.” United Ass’n of Journeyman &
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`Apprentices of the Plumbing & Pipe Fitting Indus., Underground Util./landscape Local Union
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`4
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`Case 5:19-cv-00036-RWS Document 229 Filed 03/13/20 Page 6 of 10 PageID #: 9035
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`No. 355 v. Maniglia Landscape, Inc., No. 17-CV-03037-RS (LB), 2019 WL 7877821, at *2
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`(N.D. Cal. July 25, 2019). Apple’s counsel has kept Maxell’s counsel more-than-sufficiently
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`appraised of Apple’s participation in the discovery process, even though Maxell has not seemed
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`genuinely interested in actually discussing this with Apple. See, e.g., Ex. C, 3/4/20 Pensabene
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`Ltr. at 1 (noting “Maxell is not actually interested in resolving (or even discussing) the issues
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`raised in [Maxell’s] February 26 letter despite Apple’s willingness to do so.”).
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` “None of these
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`requests bear on plaintiff’s underlying claim” and “plaintiff’s meandering attempt to prove
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`defendant’s noncompliance with its discovery obligations” should be rejected. Id.
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`D.
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`Topics 39 and 56 Seek Common Interest Privileged Communications
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`Topic 39 seeks communications between Apple and its suppliers concerning the “search
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`for and/or production of relevant and/or responsive information and Documents” in this
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`litigation. Topic 56 seeks Apple’s communications with “any third party regarding the Patents-
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`in-Suit and/or this Litigation.” This is not the first time that Maxell has sought to pry into
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`Apple’s privileged information—Maxell’s first Rule 30(b)(1) notice in this case was to Apple’s
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`in-house counsel, which Maxell withdrew only after Apple moved to quash it. D.I. 116.
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`Maxell’s current request for a corporate designee to testify about Apple’s discussions
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`with third parties about the present litigation seeks privileged information about Apple’s
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`communications with its suppliers. See, e.g., Johnson Matthey Inc. v. Noven Pharmaceuticals,
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`Case 5:19-cv-00036-RWS Document 229 Filed 03/13/20 Page 7 of 10 PageID #: 9036
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`Inc., No. 2:07-CV-260-CE, slip. op. at 3-4 (E.D. Tex. Aug. 28, 2009) dkt. 164 (finding common
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`interest privilege between defendants and their suppliers); Mobile Micromedia Sols. LLC v.
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`Nissan N. Am., Inc., No. 5:05-CV-230, 2007 WL 9724766, at *5 (E.D. Tex. Nov. 14, 2007), on
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`reconsideration in part, No. 5:05-CV-230, 2007 WL 9724765 (E.D. Tex. Dec. 27, 2007)
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`(“Nissan and its suppliers were potential co-defendants in Mobile’s lawsuit and acted under a
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`threat of imminent litigation by Mobile”).
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`E.
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`Topic 63 Improperly Seeks Apple’s Legal Contentions
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`Apple’s technical witnesses will testify regarding the accused functionality and
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`alternative ways to implement such functionality. But topic 63 goes further, seeking Apple’s
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`legal contentions concerning “any acceptable, non-infringing alternatives.” To the extent
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`discoverable, this is already stated in Apple’s response to Interrogatory No. 8. A deposition
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`regarding such contentions is unnecessary. Where “the proposed deposition topics are complex
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`and highly technical, or involve legal issues that require the assistance of an attorney, the
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`interrogatory is the preferred device.” DarbeeVision, No. CV 18-0725 AG (SSX), 2019 WL
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`2902697, at *7 (collecting cases); BB&T Corp. v. United States, 233 F.R.D. 447, 449 (M.D.N.C.
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`2006) (“[U]ntil a party has first shown that the interrogatory process cannot be used, it may not
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`seek to use depositions for contention discovery.”).
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`F.
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`Topics 78, 79, and 80 Are Overbroad and Seek Irrelevant Information
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`Apple’s technical and marketing witnesses will testify regarding the departments
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`Case 5:19-cv-00036-RWS Document 229 Filed 03/13/20 Page 8 of 10 PageID #: 9037
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`involved in development and marketing of the Accused Products. However, Topics 78 and 79
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`are far broader, seeking Apple’s “corporate structure and organization” including “all
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`departments and divisions” that in any way touch the Accused Products and “any other
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`subsidiaries, affiliates, or related Entities as they relate to the Accused Products.” These topics
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`are irrelevant and Maxell has made no proffer to the contrary. Even if these topics were
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`marginally relevant, Maxell’s demand that Apple educate a witness on all departments and
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`divisions that in any way touch the over 120 desktops, laptops, iPods, iPhones, iPads, and
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`Watches sold over a six year period exemplifies a “‘scorched earth,’ ‘no stone unturned’ . . .
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`approach to discovery.” Sol IP, No. 218CV00526RWSRSP, 2020 WL 60140, at *2.
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`Topic 80 likewise seeks “facts related to any agreement to indemnify in connection with
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`the Litigation.” Maxell has not, and cannot, articulate any basis for relevance. Regardless, there
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`are no such agreements about which testimony may be provided.
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`III. CONCLUSION
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`Apple respectfully requests that the Court grant a protective order on topics 1, 3, 4, 7, 8,
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`29, 38, 39, 41, 56, 58, 63, 78, 79, and 80.
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`7
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`Case 5:19-cv-00036-RWS Document 229 Filed 03/13/20 Page 9 of 10 PageID #: 9038
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`March 12, 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 229 Filed 03/13/20 Page 10 of 10 PageID #: 9039
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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 12, 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 14, 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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