Case 5:19-cv-00036-RWS Document 269 Filed 04/08/20 Page 1 of 8 PageID #: 9880
`
`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.,
`
`Defendant.
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`APPLE INC.’S REPLY IN SUPPORT OF ITS
`MOTION TO COMPEL COMPLETE RESPONSES TO
`INTERROGATORY NOS 6, 10, 12, 17, AND 19
`
`
`
`
`
`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.,
`
`Defendant.
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`APPLE INC.’S REPLY IN SUPPORT OF ITS
`MOTION TO COMPEL COMPLETE RESPONSES TO
`INTERROGATORY NOS 6, 10, 12, 17, AND 19
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 269 Filed 04/08/20 Page 2 of 8 PageID #: 9881
`
`
`
`The rules of discovery apply equally to both parties. Yet, with only three weeks until
`
`expert reports, Maxell still refuses—often with no authority whatsoever—to respond to basic
`
`questions about (1) the factual basis for its contentions responding to Apple’s position that the
`
`Asserted Patents are not enabled and lack a proper written description, (2) the specific dates it
`
`became aware of the accused products, (3) the factual basis for its claim to past damages, and (4)
`
`a narrative description of its licensing communications with third parties. This is not
`
`inadvertent—Maxell’s stonewalling sharply contrasts with the cases Maxell cites and its own
`
`demands of Apple. Even if Maxell were to correct these deficiencies now, it would nevertheless
`
`have profited from its failure to provide this discovery. Such a reward is not warranted.
`
`I.
`
`Apple Withdraws Interrogatory No. 19 Because Maxell Finally
`Agreed It Will Not Seek Damages Before It Can Prove Actual Notice
`
`
`
`
`
` That is inadequate—to the extent Maxell is unable
`
`to prove actual notice as of the dates it has alleged (as Apple disputes), it must prove constructive
`
`notice to collect damages for the full time period to which it claims it is entitled. D.I. 224 at 3.
`
`
`
`
`
`
`
`
`
`
`
` Apple, therefore, understands Maxell to be agreeing (i.e. a
`
`stipulation would be “redundant”) with Apple’s understanding, as stated in its March 26 letter.
`
`
`
`1
`
`
`
`Case 5:19-cv-00036-RWS Document 269 Filed 04/08/20 Page 3 of 8 PageID #: 9882
`
`
`
`
`
`
`
`II. Maxell Provided No Substantive Response To Interrogatory Nos. 6 And 12
`
`Interrogatory No. 6 asks Maxell to identify the portion(s) of the Asserted Patents that
`
`Maxell contends evidence written description and enablement. As Apple advances invalidity
`
`theories on those grounds, there is no dispute this is relevant. D.I. 224 at 1. Maxell cites Sol IP
`
`and Finjan to argue that responding in “chart or table format” is not proportional to the needs of
`
`this case, D.I. 240 at 1. But Maxell ignores that the patentee in Sol IP had already “provided
`
`citations to the pages and figures of those applications” and “ample information from which
`
`defendants can evaluate how the earlier applications support plaintiff’s claimed priority dates.”
`
`D.I. 240 at 2; Sol IP, 2020 WL 60140, at *1. Maxell has not.1
`
`
`
`
`
`
`
`
`
`
`
` A complete response is therefore warranted.
`
`Interrogatory No. 12 asks Maxell to identify the date it first became aware that “Apple
`
`was making, using, importing, offering for sale or selling” each accused product. But instead,
`
`Maxell responded with the date it became aware of Apple’s purported infringement. But what
`
`Apple actually asked for is undisputedly relevant. D.I. 224 at 2-3. And Maxell’s “response” is
`
`plainly non-responsive. D.I. 224 at 2; FatPipe Networks India Ltd. v. XRoads Networks, Inc.,
`
`1
`
`
`
`disclose Maxell’s factual contentions.
`
`2
`
`
`
`
`
`
` They were therefore unable to
`
`
`
`Case 5:19-cv-00036-RWS Document 269 Filed 04/08/20 Page 4 of 8 PageID #: 9883
`
`No. 2:09-CV-186, 2010 WL 3064369, at *2-3 (D. Utah Aug. 3, 2010).
`
`
`
`
`
`
`
`
`
` Because Apple started selling the vast majority of accused products
`
`after 2013, Maxell has no excuse for not telling Apple when it became aware of those products
`
`and cannot refuse to give that information to Apple now. D.I. 224 at 3.
`
`III. Maxell’s Improper Reliance on Rule 33(d) for Interrogatory Nos. 10 and 17
`
`Interrogatory No. 10 asks Maxell to describe its communications with third parties
`
`regarding infringement of the asserted patents. Maxell claims its response is a “narrative,” D.I.
`
`240 at 4, but it merely lists the names third parties it has licensed, communicated with, and sued.
`
`
`
`
`
` Maxell’s bulk, non-descript citation list does not place Apple in the same position as
`
`Maxell is already in to understand Maxell’s communications with more than 40 third parties.2
`
`Exemplifying this disparity is the fact that among the cited documents are slide presentations,
`
`word documents, and book chapters with no clear indication of date, author, or recipients:
`
`
`2 Maxell claims to have identified “categories of documents” listed, but does not identify any
`specific document corresponding to its non-descript list of bates numbers. D.I. 224-1 at 1-2.
`
`3
`
`
`
`Case 5:19-cv-00036-RWS Document 269 Filed 04/08/20 Page 5 of 8 PageID #: 9884
`
`
`
`
`This is precisely the “mass of business records” for which this Court has already found Rule
`
`33(d) to be improper in this case. D.I. 126 at 8; D.I. 224 at 4-5. Maxell should be held to this
`
`same standard and be compelled to provide a narrative response.3
`
`Interrogatory No. 17 asks Maxell to identify and describe the facts relating to Maxell’s
`
`contention that it is entitled to past damages and identify the relevant documents.
`
`
`
`
`
`identify the factual basis of its contentions, e.g., the terms of any agreements that would convey
`
` Maxell does not dispute that it did not
`
`it rights to collect past damages.
`
`
`
`
`
`
`
`Maxell tries to distinguish the case law on the specific facts, ignoring that “courts have
`
`consistently held that [Rule 33(d)] cannot be used with respect to contention interrogatories.”
`
`Fleming v. Escort, Inc., No. 09-105, 2011 WL 573599, at *2 (D. Idaho Feb. 13, 2011). Indeed,
`
`3
`
`
`
`
`
`
`
`
`4
`
`
`
`Case 5:19-cv-00036-RWS Document 269 Filed 04/08/20 Page 6 of 8 PageID #: 9885
`
`
`
`Rule 33(d) was found to be improper even where only 13 documents had been cited, because
`
`“[the responding party] is more familiar with its contentions . . . so the burden is not equal.”
`
`Fresenius Med. Care Holding Inc. v. Baxter Int’l, Inc., 224 F.R.D. 644, 652 (N.D. Cal. 2004).
`
`
`
`
`
`IV. Maxell Should Be Compelled to Answer Interrogatories Nos. 10 and 12
`Based on Information It Can Plainly Obtain from Hitachi
`
`Maxell’s charade on this issue now exposed by the parade of Hitachi witnesses that
`
`Maxell offered for deposition in this case.
`
`
`
`4
`
`4
`
`
`
`
`
`5
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`).
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 269 Filed 04/08/20 Page 7 of 8 PageID #: 9886
`
`
`
`April 6, 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.
`
`
`
`6
`
`
`
`Case 5:19-cv-00036-RWS Document 269 Filed 04/08/20 Page 8 of 8 PageID #: 9887
`
`
`
`
`
`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 document via the Court's
`
`CM/ECF system per Local Rule CV-5(a)(3) on April 6, 2020.
`
`
`
`
`
`
`
`
`
`
`
`/s/ Melissa R. Smith
`Melissa R. Smith
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
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
