Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 1 of 17 PageID #: 9795
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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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`Plaintiff
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`Civil Action NO. 5:19-cv-00036-RWS
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`v.
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`APPLE INC.,
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`JURY TRIAL DEMANDED
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`Defendant.
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`APPLE INC.’S SUR-REPLY TO
`MAXELL LTD.’S MOTION TO COMPEL
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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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`
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`Plaintiff
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`Civil Action NO. 5:19-cv-00036-RWS
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`v.
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`APPLE INC.,
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`
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`
`
`JURY TRIAL DEMANDED
`
`
`
`
`Defendant.
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`APPLE INC.’S SUR-REPLY TO
`MAXELL LTD.’S MOTION TO COMPEL
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 2 of 17 PageID #: 9796
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`TABLE OF CONTENTS
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`Page
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`TECHNICAL DOCUMENTS ........................................................................................... 2
`DOCUMENTS COLLECTED FROM
`APPLE’S SOURCE CODE REPOSITORIES .................................................................. 8
`NON-TECHNICAL DOCUMENTS ............................................................................... 10
`COSTS ............................................................................................................................. 12
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`I.
`II.
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`III.
`IV.
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`i
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 3 of 17 PageID #: 9797
`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 3 of 17 PageID #: 9797
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`Maxell’s reply confirms that it has no interest in actually getting the discoveiy it seeks.
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`Having raised a host of “disputes” in its opening brief (without a proper meet-and—confer)—
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`which Apple has mostly resolved—Maxell abuses the Court’s invitation to identify on reply
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`which issues—from its original motion—are still outstanding by manufactlu'ing new “disputes”
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`it hasn’t bothered to properly discuss with Apple before filing this motion. Every time Maxell
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`cannot find a document in Apple’s production, Maxell declares it “missing.” And every time
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`Apple questions whether a document is within the scope of discovery, Maxell says Apple is
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`“withholding” it. Most, if not all, of these “disputes” could have been resolved if Maxell simply
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`asked Apple to investigate them specifically. But Maxell prefers to manufacture opportunities to
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`poflray Apple as the party acting in bad faith, which is belied by at least the following examples:
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`not motion practice.
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`should have resolved this “dispute’
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`0 Maxell’s reply declares 24 schematics to be “still missing.” But Apple has produced
`every single one of these 24 schematics, and did so for many of them last August.
`Maxell apparently cannot find them because some are apparently not labeled with
`their intemal code names as other schematics were. Surely Maxell could have raised
`this issue informally without making it the Corut’s problem.
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`Were Maxell to have asked Apple for help in locating this document
`in onna y, 1t would have helped.
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`Maxell has (perhaps inadvertently)
`mischaracterized the relevant events. In November 2019—before Maxell demanded
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`such docmnents—Apple had produced them for all major generations of the accused
`products. In January 2020. Maxell requested additional specifications for non-
`accused roducts. A 1e ob'ected on relevance
`'01mds and Maxell withdrew its
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 4 of 17 PageID #: 9798
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`Maxell’s approach to discovery is clear: vaguely alleging discovery deficiencies without
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`specifying any issues for the parties to resolve, then running to court with aspersions of nefarious
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`intent and misconduct. That Maxell sent subsequent letters in February and March to “provide[]
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`more examples of what was missing or what is missing in Apple’s production as noted, more
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`broadly, in [Maxell’s] second motion to compel,” makes plain the obvious—Maxell failed to
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`specifically identify issues and meaningfully discuss them before filing its original motion to
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`compel. Ex. K, 3/3/20 Tr. 11:16-12:9 (emphasis added). Tellingly, Maxell refused to even
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`discuss the issues raised in those letters. Id. at 8:13-9:6. And its reply brief comprises a chaotic
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`mix of requests, including many for documents that Apple produced months ago.
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`I.
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`Technical Documents
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`Product Schematics:
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` Maxell alleges
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`that “Apple has refused to respond to Maxell’s request for clarification,” D.I. 244 at 3-4, but does
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`not dispute it did not identify any missing schematics for Apple to clarify until its motion to
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`compel.
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` Nevertheless, Apple has produced all requested schematics and,
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`where needed, identified for Maxell bates numbers of requested schematics. This demand
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`epitomizes Maxell’s disregard for the Court’s resources.
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`Documents Describing Cellular Functionalities:
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 5 of 17 PageID #: 9799
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` Maxell points to third-party documents that
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`contain these terms, which confirms what Apple has told Maxell all along.
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` Both projects have been discontinued for years and Apple merely questioned their
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`relevance to this case, which Maxell mischaracterizes as Apple “withholding discovery . . . based
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`on relevancy.”
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`Apple also produced datasheets for third party components it located after a reasonable
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`search once it obtained permission to do so. Where Maxell has alleged specific datasheets to be
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`incomplete, Apple researched to determine if a more “complete” version exists and whether it
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`has access.
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 6 of 17 PageID #: 9800
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` Nonetheless, Apple has conducted a further investigation in response
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`to Maxell’s request and, to the extent additional documents were located, those too have been
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`produced, as Maxell itself confirms. D.I. 244 at 7 n.4.
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`Vendor Requirements Specifications:
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` Apple nevertheless investigated and produced that document.
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`documents span an eight year period and cover many product generations—it is natural that their
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`content and level of detail vary. The fact that a longer, more detailed specification exists for one
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` These
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`4
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 7 of 17 PageID #: 9801
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`design does not mean the same must exist for every design.
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` Most critically, Maxell has not, and cannot, identify any information that it lacks to
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`pursue its case.
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`Testing Documents Specifications: Apple conducted a reasonable search and produced
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`relevant testing documents.
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` But again, demonstrating Apple’s good faith to
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`respond to even unreasonable requests, Apple undertook an investigation to search for, collect,
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`and produce such documents. Maxell now raises FCC certification tests. Typical of its no-
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`stone-unturned approach to discovery, Maxell provides no explanation for why SAR (“Specific
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`Absorption Rate”) Evaluation Reports prepared for FCC are relevant to its infringement claims.
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`D.I. 244 at 8. Based on Apple’s understanding, this report tests for the radiation levels of
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`cellular phones to ensure that they are safe for consumers1—Maxell has not, and cannot, provide
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`any relevancy explanation for this request. Having refused meet and confers, Maxell’s request
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`1 See, e.g., the FCC’s webpage on SAR at: https://www.fcc.gov/consumers/guides/specific-
`absorption-rate-sar-cell-phones-what-it-means-you.
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`5
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 8 of 17 PageID #: 9802
`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 8 of 17 PageID #: 9802
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`for such reports is too overbroad for Apple to agree that such documents are within the scope of
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`discovery. In any event, such specious proffer does not meet Maxell’s burden to compel.
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`Application Processor Chipset User Manual/ Micro—Architecture Specification:
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`Indeed, three of these documents were produced in August
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`2019. Apple conducted a reasonable search and produced user manuals and power architecture
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`specifications where formd.
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`Technical Specifications / Software Design Guides / Firmware Device Specification /
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`Hardware Abstraction Layer Specifications: Apple conducted a reasonable search for and
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`produced a substantial nmnber of technical docmnents describing the design, development, or
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`operation of accused flmctionalities, including specifically those identified in Maxell’s motion.
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`D1. 205 at 3. Maxell has now seemingly abandoned the demands in original motion. Apple
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`responds to Maxell‘s new demands below.
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`Wiki Databases: Apple has long produced documents from internal Wiki a
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`the extent relevant to the issues in dis ute—includin b November 2019.
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`o AISP Specifications and AISP Register Specifications: Maxell’s claim about AISP
`S ecifications and AISP Re ister S ecifications is a deliberate misre resentation. I
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 9 of 17 PageID #: 9803
`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 9 of 17 PageID #: 9803
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`Maxell mischaracterizes these exchanges. stating: “Apple has also produced some
`AISP Specifications, after initially withholdin based on an inc01rect re resentation
`that the did not relate to accused roducts.”
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`0
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`“Getting AirDrop on to iOS”: This issue was not raised in Maxell’s Febluary 14
`Motion and Maxell has not met its obligation to meet and confer with Apple on this
`issue before seeking relief from the C01u1. Moreover, Maxell does explain why it
`believes this document is relevant to its claims and, indeed, the name suggests
`othelwise.
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`Camera Module Specifications: Apple has produced datasheets for camera components
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`like the CMOS image sensor, but has not located specifications for camera modules. Apple is
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`not aware of any additional responsive documents.
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`Source Code: Maxell drops the lmfounded accusations in its motion of missing som‘ce
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`2 While labeled v. 0.3, in the hyperlink Maxell cites, the link leads to V. 0.1 of the document.
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 10 of 17 PageID #: 9804
`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 10 of 17 PageID #: 9804
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`code projects (made without even inspecting Apple’s most recent productions), D.I. 205 at 3. for
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`two other demands.—
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`shows Apple’s good-faith fulfillment of its discovery obligations and the meritless nature of
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`Maxell’s accusations.
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`Redacted Documents: This is a new issue that Maxell raised for the first time after
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`filing its February 14 motion. in its March 17 Letter. If Maxell had been willing to meet and
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`confer with Apple, as this Court’s Standing Order requires, Apple could have investigated the
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`issue and addressed it without the need for motion practice.—
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`II.
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`Documents Collected From Apple’s Source Code Repositories
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`Apple has now produced—twice—the so-called “non-soru‘ce code” documents described
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`in Maxelrs motion.—
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`— Producing them in that manner was entirely proper, as
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`“production of records as kept in the usual course of business ordinarily will make their
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`F
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 11 of 17 PageID #: 9805
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`significance pellucid.” See, e.g., CooperVision, Inc. v. Ciba Vision Corp., No. CIV A
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`206CV149, 2007 WL 2264848, at *4 (E.D. Tex. Aug. 6, 2007). Maxell’s reply cites how
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`Apple’s engineers (who are not lawyers and have no understanding of the Protective Order) may
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`classify technical documents containing source code, D.I. 244 at 11, but ignores that the
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`Protective Order that Maxell agreed to in this case protects not just the source code itself, but
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`documents containing “listings [or] descriptions of source code” as source code. D.I. 45 at 3.
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` Throughout this
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`process, Maxell repeatedly refused to identify additional documents it sought, including any that
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`might have been missed in Apple’s search. Ex. V, 1/31/20 Pensabene Ltr. at 4.
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`Maxell’s demand that Apple reproduce these documents for a third time, in a third
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`format, is without merit and borderline, if not outright, harassment. Indeed, the exhibit Maxell
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`4 Thus it is Maxell’s counsel that has an “incorrect interpretation of the definition of source
`code.” D.I. 244 at 11 n.6.
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`9
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 12 of 17 PageID #: 9806
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`submits clearly demonstrates that, contrary to Maxell’s representation, the electronic PDF
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`documents are just as legible as they would be in native format. D.I. 205, Ex. C, APL-
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`MAXELL_01196622 (zoomed in). Shifting its arguments, Maxell now alleges that native
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`spreadsheets are needed because they show calculations. But it does not explain why this
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`hypothetical distinction between PDFs and native spreadsheet files has any bearing on the
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`spreadsheets in this case (i.e., what types of calculations it alleges would be relevant).
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`III. Non-Technical Documents
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`Forecast Documents:
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`Licenses:
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` Nor does Maxell refute that it did not even try to meaningfully explain
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`the relevance of the additional licenses it requested until February 5. D.I. 244, Ex. M. Maxell
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`rebuffed Apple’s request for time to investigate those claims and filed its motion because, by
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`Maxell’s own admission, Apple needed 4 additional days to respond. D.I. 244 at 13.
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`Maxell’s request for licenses is illustrative of its conduct in the case generally,
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`demanding documents based on vague allegations of relevance, without any homework as to
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`whether those documents (e.g., WARF) could plausibly exist. Notably, Maxell’s reply makes no
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 13 of 17 PageID #: 9807
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`effort to bolster its paltry claim of relevance or respond to Apple’s specific arguments to the
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`contrary. Id. Instead, Maxell repeats its rote allegation that “they relate to accused
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`functionalities.” D.I. 244 at 13. Maxell then attaches its February 5 letter to its motion,
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`presumably asking the Court to rely on its explanations in that letter, e.g., that the licenses are
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`relevant because they concern the components at issue in this case.
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` Maxell should be held to that
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`representation—made to parry a motion to disqualify—and its vague claim of relevance based on
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`the categories of components should be rejected.
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`Maxell’s further suggestions that these licenses are relevant to “establish Apple’s
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`licensing policies for the accused products” is also meritless. D.I. 244 at 13. How can licenses
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`generated by settling litigation have any bearing on Apple’s policy for hypothetical pre-suit
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`negotiations? D.I. 205 at 5. Rote recitation of “magical” words does not show relevance. It is
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`not Apple’s duty to prove a lack of relevance, and Maxell’s does not carry its burden of showing
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`of any of these additional licenses (on top of the nearly 100 agreements Apple already produced)
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`are relevant or proportional to Maxell’s needs in this case.
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`Market Surveys: As Apple advised Maxell earlier in the same day that Maxell filed its
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`motion, Apple was investigating Maxell’s request for surveys and planned to get back to Maxell
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`with a response in a couple of days. D.I. 205 at 6. Apple fully agrees that Maxell’s request
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`“should not have taken a motion.” D.I. 244 at 14. Maxell’s tactic of resolving discovery
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`disputes through frivolous and abusive motion practice should not be encouraged.
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`Other Litigations: Maxell in its reply now states that it “limited its request for CalTech
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`litigation materials to damages,” but it did not inform the Court of this limitation in its motion to
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 14 of 17 PageID #: 9808
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`compel. D.I. 197 at 7. Presumably, Maxell hoped the Court would read Maxell’s mind.
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` Maxell’s persistence in seeking such documents despite their self-admitted irrelevance
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`epitomizes its approach to discovery. Maxell originally tried to allege that there are
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`“overlapping products, features, functionalities, or positions” to suggest that requested
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`documents were relevant to damages and infringement. D.I. 197 at 7.
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` Its inconsistent positions cast doubt on its generic claims of relevance for any of the listed
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`cases, and Maxell makes no effort to establish relevance with any particularity.
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`Regardless, Apple has only located three reports from the HTC and WARF cases. Apple
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`is not required to contact its myriad prior outside counsel to look for additional documents or
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`reports.
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` Weighted
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`against Maxell’s generic claim of relevance, such burden should not be imposed.
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`IV. Costs
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`That Maxell filed a motion to compel before, e.g., even telling Apple what schematics are
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`allegedly missing, betrays its claim that it “seeks the Court’s assistance as a last resort.” D.I. 244
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`at 14. Its efforts to rewrite history should be rejected. Maxell’s efforts to multiply costs began
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`early in this case, when Maxell filed its first motion to compel and asserted, with no precedent
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`whatsoever, that Apple was to have produced every responsive document in the company just
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`over three months after the case was filed. D.I. 56. The Court rightly rejected that as
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`12
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 15 of 17 PageID #: 9809
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`“unreasonable.” D.I. 126 at 3. And yes, Apple might have filed more discovery motions. But
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`that was to curb Maxell’s abuses of discovery, including seeking to depose Apple’s in-house
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`counsel supervising this case as its first 30(b)(1) notice, D.I. 116, and refusing to provide
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`infringement contentions that comply with the Patent Rules, D.I. 204, 223.
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`Maxell’s half-hearted response to the mischaracterization of documents in its original
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`motion also fails. D.I. 244 at 15. The problem is not with Maxell’s “understanding of the
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`documents on which it relied,” but rather its selective omission of words and context in its motion
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`to intentionally mislead the Court. D.I. 205 at 2, 7. The problem further lies in Maxell’s
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`inconsistent positions about the relevance of the documents from prior cases, which it did not
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`disclose to this Court.
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`Maxell preference for discovery by motion practice in lieu of meaningful efforts to
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`resolve issues without court intervention, identifying discovery issues for the first time in its
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`motions, and revising its requests in the replies to its motions, should not be encouraged.
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`Maxell’s subsequent refusal to even discuss the discovery it seeks should not be encouraged. Ex.
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`K, 3/3/20 Meet and Confer Tr. at 8:13-9:6.
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` Maxell’s deliberate refusal to comply with the Local Rules and the standing
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`orders of this Court should not be condoned.
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`13
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 16 of 17 PageID #: 9810
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`March 31, 2020
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`/s/ Luann L. Simmons
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`
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`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
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`Xin-Yi Zhou (Pro Hac Vice)
`vzhou@omm.com
`Anthony G. Beasley (TX #24093882)
`tbeasley@omm.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
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`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
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`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
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`Attorneys for Defendant Apple Inc.
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`14
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`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 17 of 17 PageID #: 9811
`Case 5:19-cv-00036-RWS Document 264 Filed 04/02/20 Page 17 of 17 PageID #: 9811
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this docmnent via the Coufl's
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`CM/ECF system per Local Rule CV—5(a)(3) on March 31, 2020.
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`/s/ Melissa R. Smith
`
`Melissa R. Smith
`
`
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