Case 5:19-cv-00036-RWS Document 245 Filed 03/26/20 Page 1 of 11 PageID #: 9509
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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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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.’S OPPOSITION TO 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 245 Filed 03/26/20 Page 2 of 11 PageID #: 9510
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`Table of Contents
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`A. Maxell Has Appropriately Responded to Interrogatory Nos. 6, 12, and 19 ............. 1
`B. Maxell Properly Relies on Rule 33(d) for Interrogatory Nos. 10 and 17 .................. 4
`C. Maxell Has Not “Selectively Responded” with Information on Behalf of Hitachi... 6
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`Case 5:19-cv-00036-RWS Document 245 Filed 03/26/20 Page 3 of 11 PageID #: 9511
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`Apple’s motion is an attempt to show it is an aggrieved party, to distract the Court from
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`Apple’s own discovery misconduct. While Maxell has spent well over half a year pushing Apple
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`for relevant discovery regarding the design and operation of the accused products and
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`functionalities, Apple has demanded discovery that is plainly outside the scope of the case, or very
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`clearly outside Maxell’s possession, custody and control, to deflect from the relevant discovery it
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`has and continues to improperly withhold. Here, for example, Apple (1) demands that Maxell
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`provide a basis for a position Maxell does not hold and is not asserting and (2) insists again that
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`Maxell provide information that is Hitachi’s and not Maxell’s (or within Maxell’s possession,
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`custody or control). Finally, Apple requested Maxell provide all communications between Maxell
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`and certain other entities, but then claims Maxell’s production of these very communications is
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`not responsive and now demands Maxell summarize these for Apple.
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`Apple’s motion is a clear attempt to distract from its own discovery misconduct by lobbing
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`accusations at Maxell. These allegations are unsupported by the record and should be rejected.
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`A. Maxell Has Appropriately Responded to Interrogatory Nos. 6, 12, and 19
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`Interrogatory No. 6 requests that Maxell provide, “for each claim limitation of the
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`asserted claims,” “in chart or table format,” support for the contention that each claim limitation
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`meets the written description and enablement requirements of 35 U.S.C. § 112, ¶ 1. The request
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`relates to every claim limitation of every asserted claim. But the Asserted Patents are presumed
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`valid, and Apple has not alleged lack of enablement or written description for each asserted
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`limitation. See Ex. A (Excerpts of Apple Invalidity Contentions). Apple’s demand that Maxell
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`provide support for claim limitations that even Apple has not challenged improperly seeks to shift
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`the burden to Maxell to demonstrate validity and is overly broad, unduly burdensome, and not
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`proportional to the needs of the case. Maxell should not have to defend against claims that have
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`not been put at issue.
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`Case 5:19-cv-00036-RWS Document 245 Filed 03/26/20 Page 4 of 11 PageID #: 9512
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`Courts facing similar interrogatories have not required responses. One such court held:
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`Although this interrogatory is framed in terms of claim-by-claim priority dates, the
`request for mapping claim elements to particular portions of specifications, albeit to
`justify the associated priority dates, seems to make it more like some sort of written
`description contentions. And, although the Court does not find parties are absolutely
`precluded from seeking discovery in a chart format…, the Court recognizes that
`demanding this level of specificity in a claim chart, particularly the mapping it
`demands, is a significant burden. It … is the type of “scorched earth,” “no stone
`unturned” (potentially numerous times) approach to discovery the changes to Rule
`26 were intended to curb. Given the other avenues for discovering this information
`already provided and the burden imposed in responding to it, the Court finds no
`further response to the interrogatory is required.
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`Finjan, Inc. v. ESET, LLC, No. 3:17-cv-00183-CAB-BGS, 2018 WL 4772124, at *5 (S.D. Cal.
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`Oct. 3, 2018), adopted by, No. 3:17-CV-00183-CAB-BGS, 2018 WL 6075797 (S.D. Cal. Nov. 21,
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`2018)). Building off such rationale, and relying on the fact that the defendants did not limit their
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`interrogatory to the claims for which they asserted § 112 support to be lacking, this Court has
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`similarly held that such element-by-element mapping is not proportional to the needs of the case.
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`Sol IP, LLC v. AT&T Mobility LLC, No. 2:18-cv-00526-RWS-RSP, 2020 WL 60140, at *2 (E.D.
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`Tex., Jan. 5, 2020). Noteworthy, both of these cases dealt with the establishment of priority dates,
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`not the broader blanket validity analysis Apple is pushing here.1
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`Interrogatory No. 12 asks that Maxell state the date that it first became aware of Apple’s
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`manufacture, use, or sale each accused product. Although Apple’s heading asserts “Maxell Has
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`Not Responded (At All) To” Interrogatory No. 12, even the body of Apple’s motion demonstrates
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`that to be untrue. Maxell has responded as to Maxell’s first awareness: “Maxell became aware of
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`[Apple’s infringement] when it took over the negotiations with Defendant and continued its
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`investigation thereafter, resulting in the filing of the Complaint for this litigation . . . . Maxell
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`1 Apple complains that Maxell’s fact witnesses do not have information responsive to this interrogatory,
`but Maxell made inventors available for deposition, who could have been questioned on these topics.
`Experts will also be available to address the issue to the extent raised by Apple in its expert reports.
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`Case 5:19-cv-00036-RWS Document 245 Filed 03/26/20 Page 5 of 11 PageID #: 9513
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`further incorporates herein by reference its response, including any supplements or amendments
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`thereto, to Defendant’s Interrogatory No. 1.” D.I. 224 at Ex. A (“Page 40”). Apple’s complaint is
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`not that Maxell has not responded, but rather that Maxell has not identified when Hitachi became
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`aware of the accused products. But, outside of the information regarding the first licensing meeting
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`in June 2013 that was transferred to Maxell from Hitachi Consumer Electronics (HCE) and
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`Maxell’s subsequent actions (all of which was detailed in Maxell’s response to Interrogatory No.
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`1, incorporated by reference), Maxell is not in possession, custody, or control of information
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`related to Hitachi’s investigation and knowledge. This issue was already addressed by the Court
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`in its denial of Apple’s prior motion to compel. D.I. 202.
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`Interrogatory No. 19 states “To the extent Maxell contends that Maxell has complied with
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`35 U.S.C. § 287 with respect to [Practicing/Licensed Products] or that its compliance with 35
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`U.S.C. § 287 for the [Practicing/Licensed Products] was not required, state the complete factual
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`and legal bases for such contention.” Importantly, this interrogatory covers only constructive
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`notice through marking and Maxell very clearly responded that it is not relying on constructive
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`notice under 35 U.S.C. § 287 in this litigation:
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`Maxell is not relying on compliance with the marking of its products or its licensees’
`products to satisfy 35 U.S.C. § 287 for purposes of notice in this litigation. As noted in
`responses to other interrogatories and in its Complaint, Maxell has relied on the notice
`provision of 35 U.S.C. § 287.
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`D.I. 224. at Ex. C (“Page 8”). Maxell also clarified this in correspondence and during a meet and
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`confer. See, e.g., Ex. B, 2/19/20 Ltr. Beaber to Pensabene (“Given Maxell’s position that it is not
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`‘contending’ that it complied with the marking requirement or that compliance was not required
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`for purposes of notice in this litigation, no further information in response was required.”). Maxell
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`should not be forced to address how it can prove constructive notice when it has committed not to
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`rely on constructive notice. As it states in its response, Maxell has relied on the actual notice
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`Case 5:19-cv-00036-RWS Document 245 Filed 03/26/20 Page 6 of 11 PageID #: 9514
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`provision of 35 U.S.C. § 287. In view of Maxell’s clearly stated position, the information Apple
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`seeks is not relevant to any claim or defense. Apple’s continued demand is unquestionably overly
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`broad, unduly burdensome, and not proportional to the needs of the case.
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`B. Maxell Properly Relies on Rule 33(d) for Interrogatory Nos. 10 and 17
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`Interrogatory No. 10 asks Maxell to “[d]escribe in detail all communications” between
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`Maxell and any third-party regarding the subject matter of the Asserted Patents as well as the
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`identity of any license agreements relating to the patents. In response, Maxell identified (1) in
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`narrative format, the licenses which may cover the Asserted Patents and where in its production
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`such licenses could be found, (2) in narrative format, the entities that Maxell or HCE offered to
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`license and/or engaged in licensing or settlement discussions, but with whom no license was
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`concluded, (3) in narrative format, the complaints filed by Maxell in furtherance of its licensing
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`efforts, (4) where in its production the exact communications of which Apple was asking could be
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`found, and (5) where deposition testimony of its corporate representative, which touched on this
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`topic, could be located. Ex. C. In other words, Maxell provided a narrative response and an
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`identification pursuant to Rule 33(d) of the exact communications requested in the interrogatory.
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`Maxell’s response, in part through the identified documents, therefore provides all the details of
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`the communications, including the identity of persons involved, dates of communications,
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`products/patents discussed, outcome of communications, and resulting royalty rates and terms.
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`Although Maxell did not exclusively do so, this is precisely the type of interrogatory for
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`which it is appropriate to rely on Rule 33(d). The interrogatory seeks details on every
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`communication. The best response to this is to produce every communication, which is what
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`Maxell did. Anything less would be less than a full response. For example, had Maxell created an
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`index of the produced communications from scratch, that would have provided a limited summary
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`of the information that the documents themselves convey.
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`Case 5:19-cv-00036-RWS Document 245 Filed 03/26/20 Page 7 of 11 PageID #: 9515
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`To the extent that is what Apple seeks, the burden of doing so is the same for Apple as for
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`Maxell. Apple’s “unfamiliarity” would not prevent it from being able to review the precise
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`communications it requested. The communications do not use proprietary or internal codes or
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`nomenclature.2 And Apple’s request for oral communications is redundant because relevant oral
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`communications were memorialized in the written communications. Finally, Maxell has not sought
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`to avoid responding based on knowledge being held by an attorney versus Maxell itself.
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`Interrogatory No. 17 seeks the basis and support for Maxell’s claim that it is entitled to
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`damages for infringement prior to the filing of this lawsuit, including an identification of the
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`specific time period for which damages are recoverable. In response, Maxell incorporated by
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`reference its response to Interrogatory No. 1 (which set forth details regarding Maxell’s actual
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`notice of infringement to Apple) and its response confirming it is not relying on constructive notice
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`in this case. Maxell further identified the specific time periods before March 15, 2019 for which it
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`contends damages are recoverable for each asserted patent (which correspond to the actual notice
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`dates), the assignment documents between HCE, Hitachi Maxell, and Maxell, Ltd., and the prior
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`negotiation materials between Apple, HCE, Maxell, and MCA. Apple’s characterization of
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`Maxell’s response as “a non-descript list of bates ranges” is simply wrong.3
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`Apple apparently asserts Maxell’s response is deficient because Maxell has not identified
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`the specific terms of the assignments that convey the rights to collect past damages. Apple argues
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`it is not in the same position as Maxell to determine what agreements Maxell contends entitle it to
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`collect past damages. But Maxell’s response does not task Apple with doing so. Maxell identified
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`2 Apple asserts that Maxell is in a better place to ascertain facts surrounding the communications. But
`many communications originate from Hitachi, Ltd./HCE. With respect to such communications, Maxell’s
`knowledge is limited to the materials received from Hitachi/HCE, which were produced.
`3 Even where Maxell identified documents, Maxell described each of the categories of documents
`identified, meaning even the list of identified materials is very much the opposite of “non-descript.”
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`Case 5:19-cv-00036-RWS Document 245 Filed 03/26/20 Page 8 of 11 PageID #: 9516
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`only a few assignments: the 2013 Agreement between HCE and Hitachi Maxell and related IP
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`Memorandum of Understanding (although in Japanese, Maxell produced English translations),
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`2017 Patent Assignment Agreement between Hitachi Maxell and Maxell, Ltd., and the public
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`versions of such assignments recorded with the PTO. Apple need not wade through thousands of
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`pages and make wild guesses. Maxell identified the agreements it contends entitle it to collect past
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`damages. As such, Maxell has provided a fulsome and complete response.
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`The cases Apple cited do not support Apple’s demand. In Mancini, the plaintiff attempted
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`to respond with “all facts can be found within the entire universe of documents involved in the
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`underlying litigation, including expert reports, discovery responses, pleadings and depositions.”
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`Mancini v. Ins. Corp. of New York, No. CIV. 07CV1750-L NLS, 2009 WL 1765295, at *2 (S.D.
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`Cal. June 18, 2009). That is light years from Maxell’s narrow but complete response, citing only
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`a handful of assignment documents that support the contention addressed by the interrogatory.
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`Fleming dealt with an interrogatory requesting where in each conception document each claim
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`limitation was found. Fleming v. Escort, Inc., No. CV 09-105-S-BLW, 2011 WL 573599, at *2
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`(D. Idaho Feb. 13, 2011). It appears the interrogatory in Fleming specifically sought the detailed
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`information, unlike here where Apple’s current demand, which goes beyond the interrogatory
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`itself, is more of an afterthought intended to manufacture a discovery dispute.
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`C.
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`Maxell Has Not “Selectively Responded” with Information on Behalf of
`Hitachi
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`Apple’s continued accusations regarding Maxell’s treatment of Hitachi information has
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`reached the point of harassment. Apple already moved to compel Maxell to produce materials on
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`behalf of Hitachi. In response, Maxell set forth the history of its relationship with Hitachi,
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`including the transfer of materials related to the assignment of the asserted patents. D.I. 166 at 1-
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`2. And Maxell made clear it has produced the relevant materials it received from Hitachi in this
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`Case 5:19-cv-00036-RWS Document 245 Filed 03/26/20 Page 9 of 11 PageID #: 9517
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`case and has no ability to demand additional materials from Hitachi. Id. at 2. This was true for the
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`documents Apple sought in its prior motion and it is true for the information Apple seeks now.
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`Maxell is not “selectively responding” to anything. It is providing the information it has within its
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`possession, custody, or control—which is all Maxell can do. This was acknowledged by the Court
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`in denying Apple’s prior motion. See D.I. 202 at 12 (holding that Apple had not demonstrated that
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`Maxell has sufficient control over documents in Hitachi’s possession and noting “the Court is
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`unsure what more Maxell could do to obtain the documents requested.”).
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`Apple provides no facts or evidence on which to raise this issue anew. That Maxell
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`coordinated the depositions of inventors in their individual capacity was already before the Court.
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`The inventors’ deposition testimony does not change the calculus. Mssrs. Takizawa and Nakano
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`are not employees of Hitachi, Ltd. They are employees of Hitachi Industry & Control Solutions
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`Ltd. (“HiCS”), a subsidiary. Ex. D, Takizawa Tr. at 10:3-8; Ex. E, Nakano Tr. at 9:21-24. Both
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`deponents made it clear their trip was covered by Maxell/Mayer Brown, not Hitachi Ltd. Ex. D at
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`20:15-21:5, 22:1-8; Ex. E at 29:16-30:8. Both individuals confirmed their employment did not
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`require them to attend the deposition. Ex. D at 142:3-15; Ex. E at 29:3-12. And Apple’s assertion
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`that the inventors “expect to receive a bounty” is both a mischaracterization of the facts and
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`irrelevant to the issue of control. See, e.g., Ex. E at 70:20-24 (statement that inventor did not “know
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`for sure” if he would receive monetary compensation if Maxell is successful). With respect to work
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`being performed between HiCS and Maxell, the Court has already noted that a business
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`relationship between Maxell and a Hitachi subsidiary, unrelated to the asserted patents, does not
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`establish control. D.I. 202 at 8.
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`In view of the foregoing, Apple’s motion to compel should be denied in full.
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`Case 5:19-cv-00036-RWS Document 245 Filed 03/26/20 Page 10 of 11 PageID #: 9518
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`Dated: March 24, 2020
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`By:
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`/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
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`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`Baldine B. Paul
`Tiffany A. Miller
`Saqib J. Siddiqui
`Bryan C. 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
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`Robert G. Pluta
`Amanda Streff Bonner
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`(312) 782-0600
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`Case 5:19-cv-00036-RWS Document 245 Filed 03/26/20 Page 11 of 11 PageID #: 9519
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`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 24th day of March 2020, with a copy of this document via
`electronic mail.
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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