Case 5:19-cv-00036-RWS Document 251 Filed 03/30/20 Page 1 of 11 PageID #: 9603
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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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` FILED UNDER SEAL
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`MAXELL, LTD.’S OPPOSITION TO APPLE INC.’S MOTION FOR PROTECTIVE
`ORDER REGARDING CERTAIN MAXELL RULE 30(B)(6) DEPOSITION TOPICS
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`Case 5:19-cv-00036-RWS Document 251 Filed 03/30/20 Page 2 of 11 PageID #: 9604
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`Table of Contents
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`A. Maxell Has the Right to Ask Deponents About Apple’s Discovery Responses ........ 1
`Topics 4, 7, 29, and 58 Are Not Irrelevant and Do Not Lack Reasonable
`B.
`Particularity.................................................................................................................... 3
`Topics 38 and 41 Regarding Discovery Are Proper .................................................... 4
`Apple Cannot Rely on the Common Interest Privilege To Avoid Topics 39 and 56 5
`Topic 63 Does Not improperly Seek Legal Contentions ............................................. 6
`Topics 78-80 Seek Appropriate, Relevant Testimony ................................................. 7
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`C.
`D.
`E.
`F.
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`Case 5:19-cv-00036-RWS Document 251 Filed 03/30/20 Page 3 of 11 PageID #: 9605
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`Apple served a 30(b)(6) deposition notice to Maxell with 96 topics, yet it complains that
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`Maxell’s 84-topic notice is unreasonable. Numbers aside, many of the very topics that Apple
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`seeks to exclude are topics in its own notice. Prior to Apple’s motion, Maxell pointed out this
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`obvious inconsistency, but Apple refused to reconcile its positions. And whereas Maxell worked
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`with Apple to find an agreeable scope of topics for Maxell’s representatives, Apple largely
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`refused. In fact, Apple’s motion essentially ignores Maxell’s attempts to clarify and narrow the
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`topics. Instead, Apple wishes to avoid many of the topics altogether. The Court should not allow
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`this latest of Apple’s attempts to hinder relevant discovery.
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`A. Maxell Has the Right to Ask Deponents About Apple’s Discovery Responses
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`Topic Nos. 1, 3, and 8 cover the model names and numbers, certain component identity
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`and costs, and installed versions of iOS for the accused devices. Maxell acknowledges that Apple
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`provided some information in its interrogatory responses (though issues remain) and Maxell is
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`not asking Apple to prepare a witness to memorize and/or verbally provide the same information.
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`Rather, Maxell needs to clarify and follow-up on information that is not self-evident from the
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`responses. Depositions are the most efficient way to get these answers.
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`Apple asserts that it invited Maxell to provide clarity on these topics, but that Maxell
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`declined. Mot. at 2. That is simply not the case. During the parties’ meet and confer, Maxell
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`explained what it was seeking, and even provided specific examples, such as “
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`” and “
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`.”1 Ex. A (2/10/20 M&C Tr. at 8:9-17). Apple just
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`1 Apple recently produced schematics allegedly corresponding to accused products but with different model
`numbers from those provided in interrogatory responses. Apple also needs to explain the new model numbers.
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`Case 5:19-cv-00036-RWS Document 251 Filed 03/30/20 Page 4 of 11 PageID #: 9606
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`responded with “I don’t see how that’s called for in Topic 1.” Id. at 8:18-19. Apple did not want
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`to clarify the topics; it wanted a preview of the specific questions: “If you’re legitimately
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`interested in getting information, the way to do that, I would suggest, is to tell us specifically
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`what you’re interested in. We could then confer about it….”; “if there’s more narrow
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`identifications of what you’re interested in you know, even as far as your specific questions, if
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`you’re really legitimately interested in getting the information…” Id. at 23:13-20, 24:6-14. But
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`Maxell is not required to provide a deposition outline to justify topics.
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`The case Apple cites does not support its request either. In Bayer, the defendant moved
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`for sanctions against the plaintiff for failure to produce a knowledgeable and prepared 30(b)(6)
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`witness. Bayer Healthcare Pharm., Inc. v. River’s Edge Pharm., LLC, No. 1:11-CV-01634-RLV,
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`2013 WL 11901530, at *2 (N.D. Ga. Apr. 26, 2013). The Court denied the motion, holding that
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`the plaintiff’s witness was prepared and noting “[t]here is no requirement that a Rule 30(b)(6)
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`witness memorize thousands of pages of documents and be able to recall in exacting detail the
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`minutia of such voluminous records.” Id. The Court also held that Rule 30(b)(6) requires only a
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`“good faith, conscientious effort to designate appropriate persons and to prepare them to testify
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`fully and non-evasively about the subjects.” Id. That is all Maxell asks of Apple.
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`As set forth above, Maxell does not expect an Apple witness to memorize the information
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`provided in interrogatory responses. Indeed, Maxell intends to provide a copy of the responses to
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`Apple’s deponents for reference. Maxell acknowledges that Apple’s witness may not be able to
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`address every question, but Maxell is entitled to a knowledgeable Apple witness that has a
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`general understanding of the model/coding nomenclature used at Apple. More importantly, any
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`Apple complaint at this stage is premature. The appropriate time to address these issues, should
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`they arise, is after the deposition.
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`Case 5:19-cv-00036-RWS Document 251 Filed 03/30/20 Page 5 of 11 PageID #: 9607
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`B.
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`Topics 4, 7, 29, and 58 Are Not Irrelevant and Do Not Lack Reasonable Particularity
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`Apple’s treatment of these topics ignores the parties’ meet and confer. This is shown by
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`Apple’s assertion that Maxell has not limited these topics. Mot. at 3. This assertion is not only
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`belied by the facts, it is shown to be untrue by the very next paragraph in Apple’s motion.
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`With respect to Topics 4, 29, and 58, Maxell clarified during the meet and confer that it
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`was not seeking all communications with third parties or all facts related to the purchase of the
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`implicated components. Maxell stated it seeks “testimony about the sorts of documents and
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`information Apple would have provided to its suppliers,
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`” and noted this testimony is relevant for infringement and damages.
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`Ex. A (2/10/20 M&C Tr. at 12:5-13:5). Even then, Apple objected that it could not prepare
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`someone to cover “all 10,000 cells” of the spreadsheet used by the parties to identify components
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`and component costs. Yet, the number of cells in the spreadsheet is not representative of the
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`number of implicated components, which is closer to
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`. And, as Apple acknowledges in its
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`motion, Maxell narrowed the topics further by identifying less than a dozen component suppliers
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`for whom the requested information is sought. Mot. at 3.
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`As explained, Maxell wants to know the types of communications and types of
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`information exchanged with the relevant Apple suppliers. This does not require preparation
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`regarding every communication or every purchase, but someone knowledgeable with Apple’s
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`component design and purchasing process.
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`With respect to Topic 7, Maxell clarified that it does not seek all communications
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`concerning source code, but rather “we want to know how Apple decides what source code to
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`write for what feature functionality, how that’s communicated. We’re looking for the sorts of
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`functional requirements that you would get in those communications.” Ex. A (2/10/20 M&C Tr.
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`Case 5:19-cv-00036-RWS Document 251 Filed 03/30/20 Page 6 of 11 PageID #: 9608
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`at 19:24-20:6). Maxell has long complained that Apple must have documents that reflect
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`communications among engineers describing relevant source code functionality.
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`C.
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`Topics 38 and 41 Regarding Discovery Are Proper
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`Topic 38 is directed to “All facts related to Defendant’s efforts to preserve, identify,
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`collect, and produce relevant and/or responsive information and Documents….” and Topic 41
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`relates to “efforts to collect source code…” Apple propounded an almost identical topic:
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`“Maxell’s efforts to preserve, locate, collect, and produce documents and information in
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`connection with this Action.” Ex. B at Topic 93. Apple questioned Maxell’s witness on these
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`issues and does not explain why Apple should not provide a witness on the same issues.
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`Earlier in this case, Maxell sought the deposition of Apple’s in-house attorney, Andrew
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`Stein, to obtain details regarding Apple’s collection of information. In opposing the deposition,
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`Apple stated “the question of what information exists that would be responsive to your
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`Interrogatory in this case and what it would take to get it, to the extent that’s relevant, that’s
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`covered by a 30(b)(6) topic for which we would have to produce a witness, and it wouldn’t be
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`Andrew Stein.” Ex. C (11/4/19 Meet and Confer Tr. at 17:5-11). Apple further stated; “whether
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`this information is … obtainable and what it would take to get it, those are covered by your
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`30(b)(6) topics. And that’s something that we think would be appropriate for deposition
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`testimony….” Id. at 22:17-23:3. Despite having committed to providing a witness on this issue
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`when it suited their immediate needs, Apple now oddly objects to any inquiry into the issue.
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`The Court also noted the propriety of discovery regarding document collection:
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`THE COURT: Have any depositions been taken so far on the type of information you're
`looking for?
`MR. LEVY: Not yet, Your Honor. We haven’t done depositions. I mean, you know, part
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`Case 5:19-cv-00036-RWS Document 251 Filed 03/30/20 Page 7 of 11 PageID #: 9609
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`of the way this is done, part of the reason the way this is typically done is you get all the
`documents and you figure out from those documents what questions you have.
`THE COURT: Not always. Not always. Sometimes, but not always.
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`Ex. D (11/17/19 Hr’g. Tr. at 55:9-17).
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`Apple asserts these issues “are more properly resolved as part of the general discovery
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`meet-and-confer process” and that Apple “has kept Maxell’s counsel more than sufficiently
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`appraised of Apple’s participation in the discovery process.” Mot. at 4-5. But Apple has only
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`stated whether it will or will not investigate something and has refused to provide any details
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`regarding its search and collection. See Ex. E (1/23/20 M&C Tr. at 15:3-16:9) (responding to
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`Maxell’s request for confirmation that word searching had been performed in relevant document
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`repositories with work product objection). As plainly evident from pending motions, the meet
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`and confers on such issues have not been sufficient to address this topic. This topic succinctly
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`demonstrates the obstinance with which Apple has approached discovery throughout this case.
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`D.
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`Apple Cannot Rely on the Common Interest Privilege To Avoid Topics 39 and 562
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`Apple claims Common Interest Privilege to withhold discoverable information, but has
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`not satisfied its burden of demonstrating that the privilege even applies. F.R.C.P. 26(b)(5). “The
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`common-interest privilege protects communications between co-defendants and their counsel in
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`actual litigation and communications between potential co-defendants and their counsel.”
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`Cypress Lake Software, Inc. v. Samsung Elecs. Am., Inc., No. 6:18-CV-30-JDK, 2019 WL
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`6699742, at *3 (E.D. Tex. June 26, 2019) (citing BCR Safeguard Holding, L.L.C. v. Morgan
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`Stanley Real Estate Advisor, Inc., 614 F. App’x 690, 703 (5th Cir. 2015)). Apple invokes the
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`privilege to protect communications with component suppliers who are neither co-defendants nor
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`2 Apple tries to draw a parallel between this issue and Maxell’s prior request to depose Mr. Stein. A deposition of
`Mr. Stein was proper in view of statements made before the Court, and not an attempt “to pry into Apple’s
`privileged information.” See D.I. 121. Maxell withdrew the notice when the Court granted Maxell’s Motion to
`Compel, which mooted the immediate need for that deposition, not because it was inappropriate. D.I. 132.
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`Case 5:19-cv-00036-RWS Document 251 Filed 03/30/20 Page 8 of 11 PageID #: 9610
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`potential co-defendants. Maxell made clear that its infringement claims here are not carried out
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`solely by any one component, but implicate numerous components that must work together to
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`achieve the infringing feature or functionality. The component suppliers are in no danger of
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`being accused of infringement on these patents. This is in contrast to the cases Apple cites.
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`Perhaps most telling is that the suppliers themselves have not invoked it. Whereas Apple
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`refuses to answer questions regarding its third-party communications, the component suppliers
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`have readily informed Maxell about their communications with Apple. See, e.g., Ex. F (Email
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`Chain with
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` Counsel) (“We have communicated to Apple that we do not have any
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`objections to their producing the full versions ….”). Further, when asked whether a common
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`interest agreement exists, Apple’s counsel repeatedly indicated that it would not respond.
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`This issue is important. This month, a supplier indicated that it had communicated to
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`Apple consent to produce certain documents. When Maxell followed up with Apple directly,
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`Apple stated it had not produced the materials previously because the supplier had originally
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`objected to the production. Ex. G. It is clear Apple is withholding documents based on alleged
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`objections by third parties, but has not relayed this information to enable Maxell to follow-up on
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`the issue. Maxell needs this information to prevent this with respect to other suppliers.
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`E.
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`Topic 63 Does Not improperly Seek Legal Contentions
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`Topic 63 seeks “facts related to acceptable, non-infringing alternatives.” Maxell
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`previously moved to compel an interrogatory response on this topic, which the Court granted,
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`acknowledging that, if Apple waited until expert discovery to address the issue, it “would
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`deprive Maxell of the opportunity to conduct its own discovery into the existence, availability
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`and feasibility of these alternatives.” D.I. 126 at 10. Yet after being ordered to respond, Apple
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`now seeks to limit discovery only to its interrogatory response and block Maxell’s ability to
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`question a witness on the alternatives identified therein.
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`Case 5:19-cv-00036-RWS Document 251 Filed 03/30/20 Page 9 of 11 PageID #: 9611
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`Maxell made its intended scope clear: “we want to ask about the feasibility, viability, []
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`commercial acceptability of” the alternatives listed in the interrogatory, “[w]e’re not talking
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`about expert testimony. We’re just talking about the [ ] feasibility, the viability of these non-
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`infringing alternatives. Testimony from… people who would, know the product, … know their
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`market, … the marketing people who would talk about the commercial acceptability of it.” Ex. H
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`(2/14/20 Tr. at 24:9-16, 25:4-12). Given this, it is unclear why Apple is seeking a protective
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`order. To the extent Apple has no position on the alternatives, its witness can say so. But just as
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`importantly, Apple must also be precluded from developing such positions for its own experts to
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`rely on to support the proffered alternatives. These are facts, not legal contentions, and both this
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`Court and others in this District have held that fact discovery into the issue is appropriate. D.I.
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`126 at 10; Godo Kaisha IP Bridge 1 v. Broadcom Ltd., No. 2:16-CV-134-JRG-RSP, 2017 WL
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`2869344, at *2-3 (E.D. Tex. Apr. 20, 2017).
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`F.
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`Topics 78-80 Seek Appropriate, Relevant Testimony
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`Apple propounded topics to Maxell that are almost identical. See Ex. B at Topics 2, 3, 5.
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`It cannot be proper for Apple to seek this discovery from Maxell, but not vice versa.
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`Maxell’s Topic 80 covers agreements for indemnification. Apple has raised a
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`License/Exhaustion defense in this case based on prior agreements with certain component
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`suppliers. See D.I. 118 at 98. Maxell does not believe that such a defense is viable given that its
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`infringement claims are not based on any single component. See supra at 5. To the extent Apple
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`has had indemnification-related communications regarding this litigation, the information related
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`thereto goes directly to this issue. See Ex. H (2/14/20 Tr. at 42:15-43:7).
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`In view of the foregoing, the Court should deny Apple’s request for a protective order on
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`topics 1, 3, 4, 7, 8, 29, 38, 39, 41, 56, 58, 63, 78, 79, and 80.
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`Case 5:19-cv-00036-RWS Document 251 Filed 03/30/20 Page 10 of 11 PageID #: 9612
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`Dated: March 26, 2020
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`By:
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`8
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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
`
`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
`
`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 251 Filed 03/30/20 Page 11 of 11 PageID #: 9613
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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 26th 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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