Case 5:19-cv-00036-RWS Document 231 Filed 03/15/20 Page 1 of 13 PageID #: 9043
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`
`
`v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`Case No. 5:19-cv-0036-RWS
`
`
`JURY TRIAL DEMANDED
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`
`
`EMERGENCY JOINT MOTION TO PARTIALLY AMEND
`DOCKET CONTROL ORDER
`
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`Plaintiff Maxell, Ltd. and Defendant Apple Inc. hereby jointly move to amend the current
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`Docket Control Order (Dkt. No. 46) as to the above-captioned matter with respect to the timing of
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`fact depositions, expert reports and discovery, and dispositive motion briefing. The proposed
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`amendments do not impact the dates for trial or the pretrial conference.
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`Emergency treatment of this Motion is justified in view of the impact that the Motion has
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`on travel currently scheduled to occur beginning the morning of March 17, 2020. Throughout just
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`this week, Mayer Brown (counsel for Maxell) has at least three attorneys scheduled to travel to
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`New York City and the San Francisco/Palo Alto area of California to take depositions, and
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`O’Melveny & Myers (counsel for Apple) has at least three attorneys scheduled to travel to the San
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`Francisco/Palo Alto area of California to defend these depositions. The Parties’ Motion seeks to
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`extend the deadline for such depositions so that attorneys, deponents, court reporters, and
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`videographers can postpone travel to and appearances in locations that are significantly impacted
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`by the COVID-19 pandemic until there is more certainty regarding the safety of these activities.
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`I.
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`The Requested Amendments Are Necessary in View of COVID-19
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`On March 13, 2020, President Trump declared a national emergency due to the COVID-
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`Case 5:19-cv-00036-RWS Document 231 Filed 03/15/20 Page 2 of 13 PageID #: 9044
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`19 pandemic. The White House has identified Santa Clara County—where Apple is headquartered
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`and over a dozen remaining fact depositions are scheduled to take place—as one of two regions in
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`the United States having “widespread transmission of coronavirus disease 2019 (COVID-19).”1
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`Apple has closed all of its retail stores in the U.S. until March 27 and has allowed all employees
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`to work remotely if their job allows.2 Although restrictions have not been officially placed on
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`travel within the United States, the CDC has acknowledged that crowded travel settings like
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`airports increase risk of exposure to COVID-19 and countless businesses (including the law firms
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`representing both parties) have banned all non-essential travel in order to decrease the rate of
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`spread of the disease. The situation is rapidly changing—there are multiple reports of new
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`infections on a daily basis, and regular changes to travel restrictions.3
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`The other locations implicated are (1) the Washington, DC metropolitan area, where most
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`of Maxell’s counsel participating in the depositions work and reside; (2) the Greater Los Angeles
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`area in Southern California, where several of Apple’s counsel participating in the depositions work
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`and reside; and, (3) New York, where another deposition is set to take place this week. All three
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`localities have taken significant measures in response to the spread of the novel coronavirus.
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`Public schools in and around Washington, D.C. and Los Angeles have closed until at least the end
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`of March, and some until mid-April.4 Even the Pentagon is stopping domestic travel as of March
`
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`1 http://whitehouse.gov/briefings-statements/white-house-coronavirus-task-force-announces-
`community-mitigation-strategies-seattle-santa-clara/
`2 https://www.apple.com/newsroom/2020/03/apples-covid-19-response/
`3 https://www.usatoday.com/story/travel/airline-news/2020/03/14/coronavirus-travel-president-
`trump-adds-united-kingdom-ireland-flight-restrictions/5050097002/
`4 https://www.cnn.com/world/live-news/coronavirus-outbreak-03-14-20-intl-
`hnk/h_09c381eb236b1c1478ae35c1e703e346; https://www.latimes.com/california/story/2020-
`03-13/los-angeles-schools-closure-possible-cornavirus
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`2
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`

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`Case 5:19-cv-00036-RWS Document 231 Filed 03/15/20 Page 3 of 13 PageID #: 9045
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`16.5
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`COVID-19 has already had a significant impact on this case. COVID-19 concerns have
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`resulted in the postponement of the depositions of an Apple engineer and a third-party fact witness.
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`One of Maxell’s experts has placed himself in self-quarantine in California, and another of
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`Maxell’s expert is unable to travel due to school closures. Several other of Maxell’s experts are
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`over the age of 60 and thus fall within the subgroup of older adults who at a higher risk for severe
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`illness from COVID-19.6 These experts are unable to travel to review Apple’s source code,
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`conduct testing of the accused devices, and/or meet with counsel for preparation of the depositions
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`and their expert reports.
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`The impacts of the travel required for the depositions, and especially those in Northern
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`California and New York, would be felt by the families of counsel as well.7 Having traveled to
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`higher-risk areas such as these, the travelers (particularly the parties’ counsel traveling from
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`Washington, DC or Southern California to the Northern California area) would either have to be
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`quarantined apart from their families for two weeks upon returning, or have their spouses, children,
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`and other family members be quarantined as well. This could further impact their respective
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`communities, all of which makes clear why officials have recommended against travel at this time.
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`In view of the COVID-19 pandemic and under the guidance issued by Chief Judge Gilstrap,
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`the parties conferred to discuss “viable solutions that allows the case to continue while minimizing
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`the potential health risks.” Saint Lawrence Commc’n LLC v. Amazon.com Inc., No. 2:19-CV-
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`5 https://www.nbcnews.com/news/us-news/pentagon-halts-all-domestic-travel-amid-coronavirus-
`pandemic-n1158781
`6 https://www.cdc.gov/coronavirus/2019-ncov/high-risk/high-risk-complications.html
`7 As of the time of this filing, at least fifteen depositions are scheduled to take place between
`March 18th to March 31st requiring at least seven Mayer Brown attorneys to travel from the
`Washington, D.C. area to San Francisco/Palo Alto and New York.
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`3
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`Case 5:19-cv-00036-RWS Document 231 Filed 03/15/20 Page 4 of 13 PageID #: 9046
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`00027-JRG, D.I. 79 at *2 (E.D. Tex. Mar. 12, 2020). Consistent with Judge Gilstrap’s guidance,
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`Apple proposes to conduct the remaining depositions remotely using video-conference
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`technology, which Apple believes would allow the parties to complete fact discovery without
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`exposing witnesses, counsel, court reporters, and other personnel to unnecessary health risks.
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`Apple is also willing to work with Maxell to address technological challenges relating to the use
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`of documents and source code during remote depositions. Apple believes that the impact of
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`COVID-19 will likely extend beyond March and that the use of remote deposition technology will
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`likely be unavoidable without other scheduling modifications.
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`Maxell contends this is not a workable solution here. First, remote depositions are already
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`difficult and inefficient, but in cases such as this one that are document and source code intensive,
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`they are prohibitively complicated.8 Indeed, under the Protective Order, counsel for Maxell is not
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`permitted to bring copies of the source code to the deposition. It must be identified in advance and
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`brought to the deposition by the producing party. D.I. 45 at ¶ 11(c)(xi). This could make a video
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`deposition covering source code all but impossible given the constraints of the Protective Order,
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`in some cases limiting Maxell’s counsel’s ability to have the source code available for both counsel
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`(located in a video-conference room as opposed to a secure, locked facility) and the witness
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`(located presumably in a video-conference facility in California). Further, as noted above, Maxell’s
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`experts cannot travel to Northern California to inspect Apple’s source code as a result of the
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`COVID-19 situation. Apple produced 15 additional source code folders at the end of last week and
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`still has further source code to produce that Maxell has been and will be unable to review in the
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`coming weeks as a result of the COVID-19 situation. Moreover, Mayer Brown has instituted a
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`8 To date, the parties have used just over 100 exhibits, with several multiples of that number
`expected to be used in the next 15 depositions.
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`4
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`Case 5:19-cv-00036-RWS Document 231 Filed 03/15/20 Page 5 of 13 PageID #: 9047
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`mandatory work from home policy on alternate days next week causing some of the fifteen
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`depositions to fall on the days attorneys on this team are mandated to work from home. With
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`school closures in effect, it will be quite challenging to take such video depositions from home
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`with children in the house and the lack of availability of childcare. While video depositions
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`solution might be appropriate if it were (1) workable with loosened protective order restrictions
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`and (2) the only alternative available, that is not the case here. As explained above, the current
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`case schedule has sufficient time built-in to enable the taking of in-person depositions after the
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`current fact discovery cut-off without impacting other major deadlines.
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`II. Maxell Contends That Amendment is Further Justified in View of Magistrate Judge
`Craven’s March 13, 2020 Order Cancelling Hearing
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`In addition to the impact on public health and welfare, and accommodating those
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`individuals who have already self-quarantined, Maxell contends that the requested extensions to
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`the expert report and dispositive/Daubert motion briefing deadlines are further justified by
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`Magistrate Judge Craven’s Order cancelling the hearing set for March 17, 2020 on Maxell’s
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`pending Motion to Compel and Motion for Sanctions.9 D.I. 230. The Order resets the briefing
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`schedule on Maxell’s Motion for Sanctions, which will now be completed March 31, 2020, and
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`states that orders on Maxell’s pending motions are intended to issue the week of April 6, 2020 (if
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`neither party requests hearing). The Order further stated that, “[t]o the extent either party believes
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`an extension of any scheduling order deadlines (other than the pretrial and trial deadlines) is
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`warranted in light of this order, the Court advises the parties to raise the issue with District Judge
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`Schroeder.” D.I. 230 at fn. 1. Maxell contends that the timing of Judge Craven’s proposed ruling
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`relative to the current expert deadlines (opening reports due April 7) further warrants the
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`extensions proposed herein. Likewise, the impacted fact depositions will affect the ability of
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`9 Apple does not join in this section.
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`5
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`Case 5:19-cv-00036-RWS Document 231 Filed 03/15/20 Page 6 of 13 PageID #: 9048
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`experts to form opinions and prepare reports, which will have a corresponding effect on the timing
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`of potential dispositive and Daubert motions. Accordingly, good cause supports each proposed
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`extension.
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`III. Requested Amendments
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`In view of the foregoing, the parties jointly request that depositions currently scheduled to
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`take place between now and March 31 be postponed, and that the deadline to reschedule and
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`complete fact depositions be extended by 21 days to April 21, 2020. This extension would allow
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`the parties to continue discussions regarding the most efficient (and safe) methods of completing
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`discovery if travel remains an issue beyond March 31. The current deadline for remaining fact
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`discovery (e.g., written discovery, document productions, and motions to compel10) would remain
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`unchanged, as those activities may be conducted without travel. To accommodate the timing of
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`depositions, the parties further request that the deadline to complete expert reports, expert
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`discovery, and dispositive motions/Daubert motions similarly be extended by 21 days. Given that
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`there are currently more than three months between the deadline for filing dispositive motions and
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`the hearing on such motions, the parties believe that the proposed amendments can be made
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`without impacting the hearing on dispositive motions, pretrial disclosures and filings, the pretrial
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`conference, or trial.
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`A table representing the current deadlines and proposed amendments is set forth below:
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`
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`10 The parties agree that further motions to compel can be filed after the close of fact discovery
`only for issues arising entirely after that deadline (e.g., a witness’s refusal to answer a question in
`a deposition after that deadline).
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`6
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`

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`Case 5:19-cv-00036-RWS Document 231 Filed 03/15/20 Page 7 of 13 PageID #: 9049
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`Proposed
`Amended Date
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`Original Date
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`3 DAYS after
`conclusion of
`Trial
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`October 26,2020
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`Court designated date
`– not flexible without
`good cause - Motion
`Required
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`October 26, 2020
`
`Court designated date
`– not flexible without
`good cause - Motion
`Required
`October 6, 2020
`
`September 29,
`2020
`
`[1 week before
`pretrial]
`September 29,
`2020
`
`[1 week before
`pretrial]
`September 22,
`2020
`
`[2 weeks before
`pretrial]
`
`Event
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`Parties to file Motion to Seal Trial Exhibits, if they wish
`to seal any highly confidential exhibits.
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`EXHIBITS: See Order Regarding Exhibits below.
`9:00 a.m. JURY TRIAL before Judge Robert W.
`Schroeder III, Texarkana, Texas.
`
`For planning purposes, parties shall be prepared to start
`the evidentiary phase of trial immediately following jury
`selection.
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`9:00 a.m. JURY SELECTION before Judge Robert W.
`Schroeder III, Texarkana, Texas.
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`10:00 a.m. PRETRIAL CONFERENCE before Judge
`Robert W. Schroeder III, Texarkana, Texas.
`
`Discuss trial logistics and voir dire procedure. Resolve
`any pending motions or objections.
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`Lead trial counsel must attend the pretrial conference.
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`File a Notice of Time Requested for (1) voir dire, (2)
`opening statements, (3) direct and cross examinations,
`and (4) closing arguments.
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`File Responses to Motions in Limine.
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`File Motions in Limine and pretrial objections.
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`The parties are ORDERED to meet and confer to resolve
`any disputes before filing any motion in limine or
`objection to pretrial disclosures.
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`
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`7
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`

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`Case 5:19-cv-00036-RWS Document 231 Filed 03/15/20 Page 8 of 13 PageID #: 9050
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`September 22,
`2020
`
`[2 weeks before
`pretrial]
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`September 15,
`2020
`
`[3 weeks before
`pretrial]
`September 8,
`2020
`
`[4 weeks before
`pretrial]
`
`September 8,
`2020
`
` [4 weeks before
`pretrial]
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`August 25, 2020
`
` [6 weeks before
`pretrial]
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`September 15,
`2020
`
`Court designated date
`– not flexible without
`good cause - Motion
`Required
`
`File Joint Final Pretrial Order, Joint Proposed Jury
`Instructions with citation to authority and Form of the
`Verdict for jury trials.
`
`Parties shall use the pretrial order form on Judge
`Schroeder’s website.
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`Proposed Findings of Fact and Conclusions of Law with
`citation to authority for issues tried to the bench.
`Exchange Objections to Rebuttal Deposition Testimony.
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`Notice of Request for Daily Transcript or Real Time
`Reporting of Court Proceedings due.
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`If a daily transcript or real time reporting of court
`proceedings is requested for trial or hearings, the party or
`parties making said request shall file a notice with the
`Court.
`Exchange Rebuttal Designations and Objections to
`Deposition Testimony.
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`For rebuttal designations, cross examination line and page
`numbers to be included.
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`In video depositions, each party is responsible for
`preparation of the final edited video in accordance with
`their parties’ designations and the Court’s rulings on
`objections.
`Exchange Pretrial Disclosures (Witness List, Deposition
`Designations, and Exhibit List) by the Party with the
`Burden of Proof.
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`Video and Stenographic Deposition Designation due.
`Each party who proposes to offer deposition testimony
`shall serve a disclosure identifying the line and page
`numbers to be offered.
`10:00 a.m. HEARING ON ANY REMAINING
`DISPOSITIVE MOTIONS (INCLUDING DAUBERT
`MOTIONS) before Judge Robert W. Schroeder III,
`Texarkana, Texas.
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`8
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`

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`Case 5:19-cv-00036-RWS Document 231 Filed 03/15/20 Page 9 of 13 PageID #: 9051
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`Any Remaining Dispositive Motions11 due from all
`parties and any other motions that may require a
`hearing (including Daubert motions).
`
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`Motions shall comply with Local Rule CV-56 and Local
`Rule CV-7. Motions to extend page limits will only be
`granted in exceptional circumstances. Exceptional
`circumstances require more than agreement among the
`parties.
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`For each motion filed, the moving party shall provide the
`Court with one (1) copy of the completed briefing
`(opening motion, response, reply, and if applicable,
`surreply), excluding exhibits, in a three-ring binder
`appropriately tabbed. All documents shall be double-
`sided and must include the CM/ECF header. These copies
`shall be delivered to Judge Schroeder’s chambers in
`Texarkana as soon as briefing has completed.
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`Respond to Amended Pleadings.
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`Parties to Identify Rebuttal Trial Witnesses.
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`Parties to Identify Trial Witnesses; Amend Pleadings
`(after Markman Hearing).
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`It is not necessary to file a Motion for Leave to Amend
`before the deadline to amend pleadings. It is necessary to
`file a Motion for Leave to Amend after the deadline.
`However, except as provided in Patent Rule 3-6, if the
`amendment would affect infringement contentions or
`invalidity contentions, a motion must be made pursuant to
`Patent Rule 3-6 irrespective of whether the amendment is
`made prior to this deadline.
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`Expert Discovery Deadline.
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`June 9, 2020
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`Court designated date
`– not flexible without
`good cause – Motion
`Required
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`June 30, 2020
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`Court designated
`date – not flexible
`without good
`cause – Motion
`Required
`
`June 2, 2020
`
`[1 week before
`dispositive
`motions]
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`May 26, 2020
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` [2 weeks before
`dispositive
`motions]
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`June 23, 2020
`
`[1 week before
`dispositive
`motions]
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`June 16, 2020
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`[2 weeks
`before
`dispositive
`motions]
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`May 26, 2020
`
`[2 weeks before
`dispositive
`motions]
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`June 16, 2020
`
`[2 weeks
`before
`dispositive
`motions]
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`9
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`

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`Case 5:19-cv-00036-RWS Document 231 Filed 03/15/20 Page 10 of 13 PageID #: 9052
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`May 26, 2020
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`[5 weeks
`before
`dispositive
`motions]
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`April 28, 2020
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`[9 weeks
`before
`dispositive
`motions]
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`Parties designate rebuttal expert witnesses (non-
`construction issues), rebuttal expert witness reports due.
`Refer to Local Rules for required information.
`
`If, without agreement, a party serves a supplemental
`expert report after the rebuttal expert report deadline has
`passed, the serving party must file notice with the Court
`stating service has occurred and the reason why a
`supplemental report is necessary under the circumstances.
`Parties with burden of proof designate expert witnesses
`(non-construction issues). Expert witness reports due.
`Refer to Local Rules for required information.
`
`Final Election of Asserted Prior Art.
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`April 21, 2020 Deadline to complete all fact depositions.
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`Fact discovery deadline (with exception of fact
`depositions).
`
`May 5, 2020
`
`[5 weeks before
`dispositive
`motions]
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`April 7, 2020
`
`[9 weeks before
`dispositive
`motions]
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`April 7, 2020
`
`[9 weeks before
`dispositive
`motions]
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`March 31, 2020
`
`[10 weeks before
`dispositive
`motions]
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` A
`
` proposed Docket Control Order is submitted herewith.
`
`Dated: March 15, 2020
`
`
`
`
`
`By:
`
`/s/ Jamie B. Beaber
`
`Geoff Culbertson
`Kelly Tidwell
`Patton, Tidwell & Culbertson, LLP
`2800 Texas Boulevard (75503)
`Post Office Box 5398
`Texarkana, TX 75505-5398
`Telephone: (903) 792-7080
`Facsimile: (903) 792-8233
`gpc@texarkanalaw.com
`kbt@texarkanalaw.com
`
`
`
`11 I.e. any motions on issues other than indefiniteness.
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`
`
`10
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`

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`Case 5:19-cv-00036-RWS Document 231 Filed 03/15/20 Page 11 of 13 PageID #: 9053
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`
`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`Baldine B. Paul
`Tiffany A. Miller
`Saqib Siddiqui
`Bryan Nese
`William J. Barrow
`Alison T. Gelsleichter
`Clark S. Bakewell
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006
`Telephone: (202) 263-3000
`Facsimile: (202) 263-3300
`jbeaber@mayerbrown.com
`agrimaldi@mayerbrown.com
`klevy@mayerbrown.com
`jfussell@mayerbrown.com
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`wbarrow@mayerbrown.com
`agelsleichter@mayerbrown.com
`cbakewell@mayerbrown.com
`
`Robert G. Pluta
`Amanda S. Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`
`Counsel for Plaintiff Maxell, Ltd.
`
`
`
`/s/ Luann L. Simmons
`
`Luann L. Simmons (Pro Hac Vice)
`lsimmons@omm.com
`O’MELVENY & MYERS LLP
`
`
`
`
`
`
`
`11
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`

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`Case 5:19-cv-00036-RWS Document 231 Filed 03/15/20 Page 12 of 13 PageID #: 9054
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`Two Embarcadero Center
`28th Floor
`San Francisco, CA 94111
`Telephone: 415-984-8700
`Facsimile: 415-984-8701
`
`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
`
`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
`
`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
`
`Attorneys for Defendant Apple Inc.
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`
`
`12
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`

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`Case 5:19-cv-00036-RWS Document 231 Filed 03/15/20 Page 13 of 13 PageID #: 9055
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 15th day of March, 2020, with a copy of this document via
`the Court’s CM/ECF system per Local Rule CV-5(a)(3).
`
`
`
`
`/s/ Jamie B. Beaber
`Jamie B. Beaber
`
`
`
`
`
`
`
`
`
`