Case 5:19-cv-00036-RWS Document 236 Filed 03/19/20 Page 1 of 6 PageID #: 9133
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`IN THE UNITED STATES DISTRICT COURT
`OF THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`No. 5:19CV36-RWS
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`MAXELL, LTD.
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`V.
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`APPLE INC.
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`ORDER DENYING HEARING ON MOTION TO COMPEL
`AND RESERVING RULING ON MOTION FOR SANCTIONS TO LATER DATE
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`The following motions have been referred to the undersigned United States Magistrate Judge
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`for pretrial purposes in accordance with 28 U.S.C. § 636:
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`Maxell, Ltd.’s Opposed Motion to Compel (Docket Entry # 197); and
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`Maxell, Ltd.’s Opposed Motion for Sanctions (Docket Entry # 210).
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`Plaintiff Maxell, Ltd. (“Maxell”) filed its opposed motion to compel on February 14, 2020. Docket
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`Entry # 197. In its motion, Maxell requests the Court order Defendant Apple Inc. (“Apple”) to 1)
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`produce all relevant technical documents related to the accused features and functionalities of the
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`Accused Products, 2) produce all non-Source Code documents made available on the Source Code
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`computers, 3) provide a fulsome response to Maxell Interrogatory No. 9, 4) produce the license
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`agreements requested by Maxell, 5) produce all relevant Buyer Surveys, Owner Surveys, and Owner
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`Studies, and 6) produce the prior litigation documents requested by Maxell.
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`Pursuant to the parties’ agreement, Apple filed an expedited “preliminary response” on
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`February 20, 2020. Docket Entry # 199. District Judge Schroeder referred the motion to the
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`undersigned on February 26, 2020. Two days later, Apple filed its response to Maxell’s motion to
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`compel, combining its preliminary response and the “present supplement in a single document.”
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`Docket Entry # 205 at n. 1. Apple states Maxell did not properly meet and confer on each purported
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`dispute raised. According to Apple, the majority of those documents Apple was investigating and
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`has now produced. For those issues that the parties properly discussed, Apple represents it had
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`already provided or is in the process of providing, or for those that Maxell never specifically
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`requested before filing its motion, “Apple will nonetheless be producing.” Docket Entry # 205 at p.
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`1. Apple requests costs and sanctions, asserting Maxell “rush[ed] to court without meeting-and-
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`conferring” and its “motion paints a picture that Apple has intentionally withheld documents by
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`mischaracterizing or misrepresenting certain documents.” Id. at p. 7.
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`Maxell did not seek leave to file a reply. Instead, on March 5, 2020, Maxell filed its opposed
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`motion for sanctions, wherein it requests the Court preclude Apple from using the discovery it failed
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`to timely produce, including discovery produced after January 31; deem certain accused
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`products/components and source code to be representative of all versions of that product as detailed
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`in the chart contained in the motion; and assess monetary sanctions. Docket Entry # 210 at p. 1.
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`According to Maxell, in the final stages of discovery, it is “having to work through documents and
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`source code that continue to be produced instead of preparing for depositions and expert reports.”
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`Id. (emphasis in original). It is not clear from the motion for sanctions which documents addressed
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`in the motion to compel are still at issue. However, Maxell asserts “Apple still has not produced
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`fulsome, complete discovery for all accused products, components, and functionalities.” Id. Maxell
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`states it is “too late now” for it to “review and make meaningful use of such late produced
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`materials.” Id. Therefore, Maxell requests eighteen specific sanctions.
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`On March 6, 2020, the Court entered an Order Regarding Expedited Briefing Schedule and
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`Setting Hearing on Pending Motions. Docket Entry # 215. The Court ordered Apple to file an
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`expedited response to the motion for sanctions on or before March 16, 2020, and it set both motions
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`for hearing March 17, 2020. Although Maxell had indicated its willingness to waive reply briefing
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`on the motion for sanctions, the Court stated it would allow the parties to file reply briefing
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`following the Court’s hearing. Id. at p. 2.
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`On March 13, 2020, the undersigned issued an Order Regarding Hearing on Pending
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`Motions, cancelling the March 17, 2020 hearing previously set for oral arguments on the above
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`motions. Docket Entry # 230. In the order, the Court noted it had reviewed the briefing filed with
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`the Court to date and was of the opinion a hearing is not necessary. Id. However, the Court stated
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`to the extent any party is of the firm opinion a hearing is critical to the Court’s consideration of the
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`motions, a hearing could be reset but at a much later date given the potential limitations on travel
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`due to COVID-19. Id. The Court advised any party insisting upon oral argument on the motions to
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`notify the Court via email. Id.
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`The Court further modified the briefing schedule on the motion for sanctions, ordering Apple
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`to file its response on or before March 19, 2020, Maxell to file its reply on or before March 25, 2020,
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`and Apple to file its surreply on or before March 31, 2020. Id. Additionally, the Court advised that
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`if neither party responded the Court would rely solely on the briefing and rule as soon as practicable,
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`hopefully by the week of April 6, 2020. Id. at p. 2. Noting in a footnote Maxell had requested
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`expedited briefing and a single hearing on both motions due to the April 7, 2020 deadline for
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`opening expert reports, the Court advised the parties to raise with District Judge Schroeder the issue
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`of an extension of any scheduling order deadlines, if warranted. Id. at p. 2, n. 1.
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`On March 16, 2020, District Judge Schroeder entered an order extending the deadline to
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`complete all fact depositions to April 21, 2020 and the deadline for opening expert reports to April
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`28, 2020. Docket Entry # 232. The same day, Chief Judge Rodney Gilstrap entered General Order
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`20-03 regarding Court Operations Under Exigent Circumstances Created by the COVID-19
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`Pandemic.
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`Also on March 16, counsel for Maxell emailed the Court, notifying the Court Maxell believes
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`a hearing would be very helpful to the resolution of the motions but noted its concern that the
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`“timing of any in-person hearing will necessarily delay resolution of the motions beyond even the
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`amended expert report deadline of April 21, further causing prejudice to Maxell.” Maxell requests
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`the Court hold a telephonic hearing on the pending motions, wherein the parties would deliver their
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`presentations to the Court and each other ahead of time. Alternatively, the parties could provide
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`Webex presentations during the hearing.
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`In its email response March 16, counsel for Apple stated Apple also believes a hearing would
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`be helpful to the Court in deciding the pending motions. “In particular, Apple takes very seriously
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`Maxell’s allegations in those motions and believes the Court would benefit from a full airing of the
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`parties arguments and facts regarding those issues.” Apple is sensitive to the unprecedented health
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`issues presented by COVID-19, but given the seriousness of the relief requested in the motion for
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`sanctions in particular, requests that at least that motion be heard by the Court in person. Apple
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`believes that an in-person hearing could be scheduled later in the case without impacting the overall
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`case schedule and without any purported prejudice to Maxell.
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`As set forth in the Court’s General Order 20-03, the “CDC and other public health entities
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`have recommended social distancing to limit further community spread of COVID-19.” Taking into
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`consideration matters of public health, while reducing the size of public gatherings and the need for
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`travel,” the Court noted judges may use telephonic or video proceedings where deemed appropriate
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`by the presiding judge. Id. at pp. 1-2. However, General Order 20-03 “does not impact any court’s
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`continuing discretion to consider and decide particular matters on the papers alone.” Id. at p. 2. It
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`remains the Court’s opinion the motion to compel, to the extent there are any disputed documents
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`that remain in issue following Apple’s more recent productions, can be decided on the papers the
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`week of April 6, which is prior to the amended deadlines to complete fact depositions and provide
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`opening expert reports.
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`In an effort to streamline the issues remaining, the Court orders Maxell, on or before March
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`26, 2020, to file a reply to Apple’s response to Maxell’s motion to compel, clearly setting forth the
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`documents still at issue. Apple shall file any surreply on or before March 31, 2020. The parties are
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`allowed fifteen pages for the reply and surreply briefing. The Court will rule on the motion to
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`compel on the papers the week of April 6, 2020, as previously indicated.
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`Meanwhile, the briefing on the motion for sanctions will be also be ripe on March 31, 2020.
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`The Court agrees with Apple that, to the extent warranted after a review of all of the relevant
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`briefing, an in-person hearing could be scheduled later in the case without impacting the overall case
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`schedule and without any prejudice to Maxell.
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`Accordingly, it is
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`ORDERED that on or before March 26, 2020, Maxell shall file a reply to Apple’s response
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`to Maxell’s motion to compel, clearly setting forth the documents still at issue. Apple shall file any
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`surreply on or before March 31, 2020. The parties are allowed fifteen pages for the reply and surreply
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`briefing. The Court will rule on the motion to compel on the papers the week of April 6, 2020, as
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`previously indicated. It is further
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`ORDERED that the Court will determine at a later date whether an in-person hearing on
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`Maxell’s motion for sanctions is warranted. If so, the Court will schedule the hearing when safe to
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`do so. Otherwise, the Court will rule on the papers as soon as practicable.
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