Case 5:19-cv-00036-RWS Document 262 Filed 04/02/20 Page 1 of 8 PageID #: 9778
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`
`
`Plaintiff
`
`Civil Action NO. 5:19-cv-00036-RWS
`
`v.
`
`APPLE INC.,
`
`
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`Defendant.
`
`
`
`
`
`APPLE INC.’S SUR-REPLY TO
`MAXELL, LTD.’S MOTION FOR SANCTIONS
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`
`
`Plaintiff
`
`Civil Action NO. 5:19-cv-00036-RWS
`
`v.
`
`APPLE INC.,
`
`
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`Defendant.
`
`
`
`
`
`APPLE INC.’S SUR-REPLY TO
`MAXELL, LTD.’S MOTION FOR SANCTIONS
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 262 Filed 04/02/20 Page 2 of 8 PageID #: 9779
`
`
`Despite suing on ten software patents, identifying every single claim as having Patent
`
`Rule 3-1(g) software limitations, and demanding every bit of source code that has even the most
`
`remote connection to the accused features, Maxell now complains that does not want to use that
`
`code to prove its case. But ultimately the source code is what matters.
`
`
`
`
`
`
`
`
`
`
`
` While Apple has made an extraordinarily voluminous
`
`document production, it has not found documents describing each of the accused functionalities
`
`in the jury-friendly manner Maxell apparently desires. And Maxell cites no evidence to support
`
`its inflammatory charge that Apple has “withheld” technical documents or source code. Tacitly
`
`conceding this point, Maxell’s reply now suggests that Apple has produced so many documents
`
`as to “bur[y] [Maxell] in volumes of irrelevant documents.” D.I. 241 at 1. Maxell should not be
`
`rewarded for its overbroad demands for irrelevant documents and then cherry-picking a few
`
`allegedly missing documents to demand sanctions.
`
`I.
`
`Apple Complied With Patent Rule 3-4 And The Substantial Completion Date
`Despite Maxell’s Continued Failure to Comply With The Patent Rules
`
`Apple faithfully and timely complied with P.R. 3-4 by interviewing employees and
`
`producing documents and source code from custodial and non-custodial sources more than
`
`sufficient to show the operation of the accused functionalities, based on Apple’s best
`
`understanding of Maxell’s deficient infringement contentions. D.I. 237 at 3. Maxell does not
`
`dispute the diverse and substantive nature of Apple’s P.R. 3-4 production. D.I. 241 at 2. Nor
`
`does Maxell dispute that Apple’s voluminous production of such substantive documents and
`
`
`
`1
`
`
`
`Case 5:19-cv-00036-RWS Document 262 Filed 04/02/20 Page 3 of 8 PageID #: 9780
`Case 5:19-cv-00036-RWS Document 262 Filed 04/02/20 Page 3 of 8 PageID #: 9780
`
`source code readily distinguishes this case from those cited in Maxell‘s motion. UL 237 at 8.1
`
`Most importantly, Maxell did not in October 2019 and does not today, identify any material
`
`inability to sufficiently understand the accused functionalities based on Apple’s P.R. 3-4
`
`production—the governing standard for that rule. D.I. 237 at 2.
`
`There is similarly no serious question that Apple more than substantially completed its
`
`
`N|
`
`
`
`Case 5:19-cv-00036-RWS Document 262 Filed 04/02/20 Page 4 of 8 PageID #: 9781
`Case 5:19-cv-00036-RWS Document 262 Filed 04/02/20 Page 4 of 8 PageID #: 9781
`
`docmnent production by November 27, and the vollune of its productions after that date does not
`
`contradict that fact. DJ. 24] at 2. Rather, it proves Apple’s good faith willingness to produce
`
`information in responses to Maxell’s scorched-earth, ceaseless demands for irrelevant documents
`
`and
`
`code.—
`
`— Indeed, it is
`
`particularly ironic that Maxell asks the C01111 to completely disregard the vollune of documents
`
`and code Apple produced by the RR. 3-4 and substantial completion deadlines, arguing volume
`
`is no indicator of compliance, D1. 241 at 2, when at the same time it argues the vollune of
`
`documents and source code produced by Apple in response to Maxell’s specious demands
`
`somehow demonstrate a lack of compliance, id. at 1.—
`
`Maxell does not try to refilte the absence of any basis for demanding that Apple totally
`
`complete its document production two months before the end of fact discovery (i. e., by January
`
`31), let alone four months before the end of discovery (i.e., on November 27). BI. 237 at 8-9.
`
`Maxell’s claim, that documents were produced during the course of depositions, does not justify
`
`sanctions, especially where Maxell itself produced relevant doc1unents only after depositions of
`
`its witnesses, and continues in its refusal to produce responsive (though presumably lmfavorable
`
`to Maxell) documents. D.I. 237 at 9.
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 262 Filed 04/02/20 Page 5 of 8 PageID #: 9782
`Case 5:19-cv-00036-RWS Document 262 Filed 04/02/20 Page 5 of 8 PageID #: 9782
`
`Maxell’s manufactured complaints regarding Apple’s compliance with the Patent Rules
`
`and its attempts to blame Apple for its own lack of diligence in reviewing the discovery it
`
`demanded are particularly egregious given its own refusal to, even now, on the last day of
`
`discovery, comply with those same Patent Rules.—
`
`Granting sanctions would perversely reward Maxell for (1) burying Apple in demands for
`
`documents and source code that far exceed any reasonable scope of discovery, (2) avoiding good
`
`faith discovery discussions, (3) sandbagging Apple by refusing to specifically identify discovery
`
`issues in letters but then doing so in motion practice, and (4) doing all of the above to avoid its
`
`own obligations to provide compliant infringement contentions under the local Patent Rules.
`
`II.
`
`Maxell Has Suffered No Prejudice and Its Effort to
`Declare Products to be “Representative” Is Without Merit
`
`Maxell’s alleged prejudice—insufficient time to prepare for fact depositions, expert
`
`reports, or election of asserted claims—is provably false, even absent the recent extension. In
`
`the meet and confer for this motion and before the extension due to COVID—l9, Maxell
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 262 Filed 04/02/20 Page 6 of 8 PageID #: 9783
`
`
`affirmatively declared that it was not interested in Apple’s actual production of the discovery it
`
`now claims was so critical. Ex. 18, 3/3/20 Tr. at 8:13-9:6. Likewise, Maxell did not even think
`
`to request an extension for its expert reports, final election of claims, or depositions pending
`
`production of any alleged missing documents. The fact that such extensions were plainly
`
`available, as confirmed by recent events, belies any claim that Maxell’s asserted “prejudice” was
`
`unavoidably “locked-in.” D.I. 241 at 4.
`
`Maxell’s alleged prejudice relating to other documents is even more frivolous.
`
`
`
`
`
`
`
`
`
`
`
` The same applies to other documents and witnesses.
`
`
`
`
`
`
`
`
`
`
`
`In short, it is clear that Maxell has suffered no prejudice other than what it has itself
`
`manufactured through its apparent inability to participate in discovery in good faith.
`
`
`
`5
`
`
`
`Case 5:19-cv-00036-RWS Document 262 Filed 04/02/20 Page 7 of 8 PageID #: 9784
`
`
`March 31, 2020
`
`
`
`
`
`
`/s/ Luann L. Simmons
`
`
`
`Luann L. Simmons (Pro Hac Vice)
`lsimmons@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center
`28th Floor
`San Francisco, CA 94111
`Telephone: 415-984-8700
`Facsimile: 415-984-8701
`
`Xin-Yi Zhou (Pro Hac Vice)
`vzhou@omm.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
`
`Laura Bayne Gore (Pro Hac Vice)
`lbayne@omm.com
`O’MELVENY & MYERS LLP
`Times Square Tower, 7 Times Square
`New York, NY 10036
`Telephone: 212-326-2000
`Facsimile: 212-326-2061
`
`Melissa R. Smith (TX #24001351)
`melissa@gilliamsmithlaw.com
`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`
`Attorneys for Defendant Apple Inc.
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 262 Filed 04/02/20 Page 8 of 8 PageID #: 9785
`Case 5:19-cv-00036-RWS Document 262 Filed 04/02/20 Page 8 of 8 PageID #: 9785
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that all counsel of record who are deemed to have
`
`consented to electronic service are being served with a copy of this docmnent via the Coufl's
`
`CM/ECF system per Local Rule CV—5(a)(3) on March 31, 2020.
`
`/s/ Melissa R. Smith
`
`Melissa R. Smith
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
