`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`
`
`Plaintiff,
`
`
`
`
`
`vs.
`
`APPLE INC.,
`
`
`
`Defendant.
`
`
`
`
`
`
` Civil Action No. 5:19-cv-00036-RWS
`
`
`JURY TRIAL DEMANDED
`
`DECLARATION OF LUANN L. SIMMONS IN SUPPORT OF
`APPLE INC.’S MOTION TO STAY PENDING DETERMINATION OF
`INTER PARTES REVIEW OF THE PATENTS-IN-SUIT
`
`I, Luann L. Simmons, hereby declare as follows:
`
`1.
`
`I am an attorney at the law firm of O’Melveny & Myers LLP, counsel for
`
`Defendant Apple, Inc. (“Apple”) in this matter filed by Plaintiff Maxell, Ltd. (“Maxell”). I have
`
`personal knowledge of the facts stated herein and if called to testify could and would
`
`competently testify thereto.
`
`2.
`
`Attached as Exhibit A is a true and correct copy of the United States Patent
`
`Office’s Patent Trial and Appeal Board Statistics, which contains data valid as of February 29,
`
`2020. This document was retrieved from the USPTO’s website
`
`(https://www.uspto.gov/sites/default/files/documents/Trial_Statistics_2020_02_29.pdf) on
`
`March 18, 2020.
`
`3.
`
`Attached as Exhibit B is a true and correct copy of Lex Machina’s Patent Trial
`
`and Appeal Board Statistics for trials listing Apple Inc. as the Petitioner, which contains data
`
`1
`
`
`
`Case 5:19-cv-00036-RWS Document 239-1 Filed 03/24/20 Page 2 of 3 PageID #: 9329
`
`
`
`valid as of March 19, 2020. This document was retrieved from Lex Machina’s website on March
`
`20, 2020.
`
`4.
`
`Attached as Exhibit C is a true and correct copy of Lex Machina’s Patent Trial and
`
`Appeal Board Statistics for trials listing Erise IP, PA as counsel for the Petitioner, which contains
`
`data valid as of March 19, 2020. This document was retrieved from Lex Machina’s website on
`
`March 20, 2020.
`
`5.
`
`Apple filed IPR2020-00199, challenging the validity of U.S. Patent No. 6,329,794
`
`on December 19, 2019, and the PTAB accorded the Petition a filing date on December 23, 2019.
`
`6.
`
`Apple filed IPR2020-00200, challenging the validity of U.S. Patent No. 10,084,991
`
`on December 19, 2019, and the PTAB accorded the Petition a filing date on January 16, 2020.
`
`7.
`
`Apple filed IPR2020-00201, challenging the validity of U.S. Patent No. 7,116,438
`
`on December 19, 2019, and the PTAB accorded the Petition a filing date on December 23, 2019.
`
`8.
`
`Apple filed IPR2020-00202, challenging the validity of U.S. Patent No. 10,212,586
`
`on December 19, 2019, and the PTAB accorded the Petition a filing date on January 16, 2020.
`
`9.
`
`Apple filed IPR2020-00203, challenging the validity of U.S. Patent No. 6,408,193
`
`on December 20, 2019, and the PTAB accorded the Petition a filing date on January 13, 2020.
`
`10.
`
`Apple filed IPR2020-00204, challenging the validity of U.S. Patent No. 6,928,306
`
`on December 20, 2019, and the PTAB accorded the Petition a filing date on January 10, 2020.
`
`11.
`
`Apple filed IPR2020-00407, challenging the validity of U.S. Patent No. 6,748,317
`
`on January 13, 2020, and the PTAB accorded the Petition a filing date on February 12, 2020.
`
`12.
`
`Apple filed IPR2020-00408, challenging the validity of U.S. Patent No. 6,430,498
`
`on January 13, 2020, and the PTAB accorded the Petition a filing date on February 12, 2020.
`
`2
`
`
`
`Case 5:19-cv-00036-RWS Document 239-1 Filed 03/24/20 Page 3 of 3 PageID #: 9330
`
`
`
`13.
`
`Apple filed IPR2020-00409, challenging the validity of U.S. Patent No. 6,580,999
`
`on January 13, 2020, and the PTAB accorded the Petition a filing date on February 12, 2020.
`
`14.
`
`Apple filed IPR2020-00507, challenging the validity of U.S. Patent No. 8,339,493
`
`on March 17, 2020, and the PTAB has not yet accorded the Petition a filing date.
`
`15.
`
`On June 12, 2019, Maxell served its Infringement Contentions, in which it
`
`asserted a total of 90 claims.
`
`16.
`
`After Apple produced source code for the accused products, Maxell served
`
`supplemental infringement contentions on March 13, 2020. The claim charts in Maxell’s
`
`Infringement Contentions (as amended on March 13, 2020) include over 3,700 pages.
`
`17.
`
`On November 6, 2019, Maxell made its Preliminary Election of Asserted Claims,
`
`reducing the number of asserted claims to 40.
`
`18.
`
`This case is in the early stages of discovery. Fact discovery is not yet complete,
`
`most fact depositions remain, and expert discovery has not yet commenced.
`
`19.
`
`On March 23, 2020, I was informed by counsel that Maxell opposes the
`
`concurrently filed Motion to Stay Pending Determination of Inter Partes Review of the Patents-
`
`in-Suit.
`
`I declare under the penalty of perjury that the foregoing is true and correct.
`
`Executed in San Francisco, California, on this 24th day of March, 2020.
`
`
`
`/s/ Luann L. Simmons
`
`Luann L. Simmons
`
`
`
`3
`
`
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