Case 5:19-cv-00036-RWS Document 250 Filed 03/30/20 Page 1 of 9 PageID #: 9550
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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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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` FILED UNDER SEAL
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`MAXELL, LTD.’S REPLY IN SUPPORT OF OPPOSED MOTION FOR SANCTIONS
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`Case 5:19-cv-00036-RWS Document 250 Filed 03/30/20 Page 2 of 9 PageID #: 9551
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`Maxell is not attempting to weaponize discovery or use sanctions to lessen its burden.
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`Maxell simply wants to litigate the merits on a level playing field.1 But Apple has forced Maxell
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`to litigate the case with one hand behind its back, using the very rules meant to streamline
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`discovery to justify Apple’s improper tactics, all the while pointing to discovery volume (now
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`even making irrelevant comparison to other cases) to mask its failures to produce blatantly
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`relevant, and easily accessible, discovery that (sometimes) miraculously turns up on the eve of
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`Apple’s witnesses being deposed. Apple’s constant and incorrect reliance on P.R. 3-4’s
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`“sufficient to show” language to justify its paltry initial productions, Rule 26’s proportionality
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`standard to avoid and/or delay producing clearly relevant materials, and the Court’s meet and
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`confer requirements to draw out production by weeks, or even months, to prevent Maxell from
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`raising issues with the Court was deliberate, prejudicial and justifies sanctions.
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`Apple exacerbated the misconduct by repeatedly mischaracterizing limitations as
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`“software limitations” in order to rely on its production of source code (and volumes of
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`irrelevant documents), laying bare Apple’s strategy: force Maxell to prove infringement via the
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`least jury-friendly, most restrictive evidence—source code—while producing key technical
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`documents late in the case (if ever) and buried in volumes of irrelevant documents to limit
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`Maxell’s use of the documents. Such conduct may be acceptable to Apple, but in this District,
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`the Patent Rules and other discovery rules are intended to prevent such abuses. Apple’s actions
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`cannot be undone now and cannot be left unchecked.
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`A.
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`Apple Failed to Comply with the Discovery Rules
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`Apple relies on mere volume to demonstrate compliance. But volume does not equate to
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`substance. Apple produced thousands of pages of parts lists and publicly available website pages,
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`1 From the outset of this case Maxell has wanted to focus on the merits and Apple has obstructed these efforts. This
`is seen in Maxell’s initial motion to compel, which Apple opposed and this Court granted. Notwithstanding Maxell’s
`efforts and the Court’s Order on that initial motion to compel, Apple has continued its obstructionist behavior.
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`Case 5:19-cv-00036-RWS Document 250 Filed 03/30/20 Page 3 of 9 PageID #: 9552
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`and many duplicate documents, claiming the volume of materials satisfied P.R. 3-4.2 Maxell’s
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`motion is not based on a lack of volume, it is based on the fact that Apple delayed and evaded
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`production of highly relevant materials (even after called out by Maxell).3 Apple’s own brief
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`proves it did not substantially complete discovery on November 27. Apple admits it produced
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`over 300,000 pages (21% of total) and 0.7 million source code files (30.4% of total) since then.
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`Opp. at 4, fn. 3; see also Siddiqui Decl. at ¶¶15-16 (identifying post-Nov. 27 productions). While
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`absolute completion was not required, Apple’s continued productions of highly relevant
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`documents (many repeatedly demanded by Maxell) are not a mere trickle of materials.4
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`Apple also does not deny it did not produce certain code by the P.R. 3-4 deadline, but
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`complains Maxell cherry-picked the examples. But the examples were chosen because they
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`demonstrate obvious failures and because they are directly tied to requested sanctions. For
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`example, Maxell called out the failure to timely produce watchOS Maps source code because it
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`supports the requested sanction that Maps in watchOS be treated the same as in iOS. Apple’s
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`argument that it had previously produced Maps source code for other platforms does not justify
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`its late production of watchOS Maps, but shows why Maxell’s requested relief is narrow and
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`appropriate. See App’x A at No. 13. The same is true for the sanction related to FaceTime in
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`macOS versus iOS. Id. at 10. Similarly, Apple’s responses regarding incomplete component
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`identification confirms that Apple has not yet identified the subject components as ordered by the
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`Court. Yet it argues that the sanction is not warranted because it identified components for other
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`products or the components could be gleaned from its production. Id. at 3, 4.
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`2 By the P.R. 3-4 deadline, Apple produced 12,647 documents. 6,700+ were publicly available, 3,000+ were BOMs.
`3 While this motion is based in part on issues raised in Maxell’s Motion to Compel (MTC), it is not limited to such
`issues. To the extent Apple addresses the MTC issues, Maxell disagrees and will respond in its briefing on the MTC.
`4 As but one example of Apple’s delay strategy at work, the day before this filing Apple responded to a discovery
`letter after a full two week delay, essentially claiming it had produced the requested materials all along, when some
`had been produced during the two weeks Apple delayed in responding to the letter. In that letter, too, Apple feigned
`innocence, wondering why Maxell had not found the requested (and late-produced) materials in the first place. Ex.
`BB.
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`Case 5:19-cv-00036-RWS Document 250 Filed 03/30/20 Page 4 of 9 PageID #: 9553
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`At bottom, Apple manipulates facts to make it appear that its P.R. 3-4 code production
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`was complete and that everything produced since was marginally relevant. This could not be
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`further from the truth. Even setting aside code for late-added products, Maxell cites to a total of
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`206 source code projects in its second supplemental infringement contentions.5 Of these, 68
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`(33%) were not produced and/or linked to a particular platform until after Maxell served its first
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`supplemental contentions in October. See Siddiqui Decl. at ¶17 (providing breakdown by patent).
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`Moreover, Apple’s source code production of
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`, impacting at least 16 products, is
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`still incomplete. Id. at ¶¶18-19. Apple’s conduct was and continues to be prejudicial.
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`Apple attacks Maxell for relying on a deadline, chosen “out of thin air,” for completion
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`of discovery. But this was not Maxell’s deadline—the Court set November 27 as the deadline
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`for the substantial completion of discovery at Apple’s suggestion. D.I. 126. And Apple
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`repeatedly stated in correspondence and to the Court that its document and source code
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`productions as of that date were substantially complete. Apple took it a step further on January
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`31 when it stated unequivocally that its reasonable search was complete and that Maxell’s
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`continued demands were irrelevant, unreasonable, and even sanctionable. Mot. at 12. If Apple
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`truly believes this, it should not oppose the narrow sanctions.6
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`B.
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`The Requested Sanctions Are Not A Backdoor Attempt At Representative Products
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`Maxell’s motive has never been to force representative products and Maxell’s sanctions
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`do not include a blanket request for representative products. Even in its original infringement
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`contentions, Maxell provided support for its theories for each accused product. And Maxell has
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`5 That Maxell may not have included a project does not establish that the request for the project was improper or that
`Maxell’s experts did not study/analyze such code to identify the code that Maxell did include in the contentions.
`Maxell cannot cite to every relevant piece of evidence in view of source code printing and trial time restrictions.
`6 Apple’s claims that its deficiencies are justified because of Maxell’s “vague” infringement contentions has no
`footing in the record. When the parties discussed the adequacy of the contentions early on, Apple confirmed that it
`was not challenging their sufficiency. Ex. R (7/22/19 Ltr. Fussell to Beasley). The only challenge Apple raised was
`with source code citations. But given that the code citations only added support for thoroughly-laid out theories, any
`complaint regarding their sufficiency cannot support an untimely or deficient production.
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`Case 5:19-cv-00036-RWS Document 250 Filed 03/30/20 Page 5 of 9 PageID #: 9554
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`always sought to obtain fulsome discovery for every product in order to establish infringement
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`for every product—only Apple’s conduct has prevented Maxell from doing so.
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`C.
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`The Recent Extension Does Not Eliminate Maxell’s Prejudice
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`The recent extension due to COVID-19 does not eliminate prejudice. Depositions had
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`already begun and, at least twice, Apple produced documents relevant to the deposition the night
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`before, without providing notice that the production may be relevant to the deposition. See
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`Siddiqui Decl. at ¶20-22. Moreover, Apple’s production was incomplete prior to the depositions.
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`App’x A at No. 8, 14-16. For example, Apple’s technical witness for the ’794 patent has been
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`deposed, but Apple still has not produced relevant evidence Maxell requested for months for this
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`patent.7 For depositions that have passed, the prejudice is locked in place. Also locked-in are
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`Maxell’s final election of asserted claims and its infringement contentions, which Maxell had to
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`make without the benefit of complete document and code production. See App’x A at No. 9.
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`Maxell also continues to be prejudiced even in areas where Apple has started remedying
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`the deficiencies. Maxell repeatedly requested documents relating to cellular functionality (e.g.,
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`gain/bias control, open- and closed-loop power control). In response, Apple claimed (including
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`in filings to this Court) that i
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`. D.I. 199 at 1;
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`Siddiqui Decl. at ¶23. Yet this month, Apple began producing materials such as
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`. Id. at ¶24.
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` would have been invaluable to Maxell’s source code review had it been produced on time
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`pursuant to P.R. 3-4. Apple still has not provided
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`7 Apple has not produced
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`. See Siddiqui Decl. at 20, 27; App’x A. at Nos. 14-16.
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` for at least 8 other accused products.
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`Case 5:19-cv-00036-RWS Document 250 Filed 03/30/20 Page 6 of 9 PageID #: 9555
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`Also this month, Apple began producing
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`. All this information is
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`critical to show infringement of the ’193 Patent. Id. at ¶25. And this month, Apple produced
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`complete
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` for some (not all) of the implicated power amplifiers, which
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`contain information that
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`. Id. at ¶27. Apple’s recent
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`production of these highly relevant documents (for some, but not all accused products),
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`demonstrates the alarming ease with which Apple repeatedly made misrepresentations starting in
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`August 2019, and continuing into March 2020.8 Regardless, these partial productions are
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`insufficient to cure Maxell’s prejudice, especially where the recent productions are code Maxell
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`is unable to review.9 App’x A at Nos. 5-9, 11-12, 14-17.
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` Apple’s response that limitations are software limitations and Maxell identifies no
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`missing hardware information is belied by the discovery abuses shown above and in the attached
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`table. And it does not negate the need for Maxell’s requested sanction. App’x A at Nos. 5-9, 11-
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`12. There are no claims where Maxell relied solely on software. See D.I. 145. Maxell identified
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`both hardware and software because they work side-by-side.
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`Finally, Apple still continues to make significant productions of both documents
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`(154,101 pages and counting just since March 10) and source code (which Maxell cannot review
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`due to office closures and travel restrictions). Siddiqui Decl. at ¶15-16. As long as productions
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`continue, so does the prejudice. Moreover, no extension can eliminate the prejudice from
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`Apple’s failure to produce any documents regarding certain functionalities. Maxell’s sanctions
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`should be granted.
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`. The timing of production for this document reveals that Apple’s “reasonable search” was anything but.
`. If Apple’s representation is true
`9 The exception is for the final sanction related to
`(pending confirmation from a 30(b)(6) deponent), Maxell withdraws this requested sanction.
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`Case 5:19-cv-00036-RWS Document 250 Filed 03/30/20 Page 7 of 9 PageID #: 9556
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`Dated: March 25, 2020
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`By:
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`6
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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 250 Filed 03/30/20 Page 8 of 9 PageID #: 9557
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`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 250 Filed 03/30/20 Page 9 of 9 PageID #: 9558
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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 25th 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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