Case 5:19-cv-00036-RWS Document 281 Filed 04/17/20 Page 1 of 10 PageID #: 9994
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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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`MAXELL, LTD.’S OPPOSITION TO APPLE INC.’S RENEWED MOTION TO
`COMPEL LICENSING AND NEGOTIATION DOCUMENTS AND FOR SANCTIONS
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`Case 5:19-cv-00036-RWS Document 281 Filed 04/17/20 Page 2 of 10 PageID #: 9995
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`Hitachi, Ltd. is not Maxell, Ltd., it is not an affiliate of Maxell, Maxell does not have
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`control over Hitachi, and Hitachi materials are outside of the possession, custody, or control of
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`Maxell. See D.I. 202. Apple’s renewed motion does not change any of these facts. The “new”
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`evidence Apple offers is universally mischaracterized, taken out of the context, and/or irrelevant.
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`And nothing changes the fact that Maxell already requested the materials sought by Apple to no
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`avail. As this Court recognized, it is unclear “what more Maxell could do to obtain the documents
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`requested.” Id. at 12. Apple provides no basis to revisit this Court’s prior holding.
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`A.
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`The MOU Does Not Provide Maxell The Ability to Obtain Documents
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`This Court considered the MOU between Hitachi, HCE, and Maxell and rejected the notion
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`that the MOU grants Maxell the present ability to control Hitachi documents. D.I. 202 at 7. The
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`renewed motion addresses none of the reasons the Court provided in its prior finding on this issue.
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`Apple asserts that Maxell’s witness testified that
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`. It is not.
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`The fact, though, is irrelevant. The Court did not reject that the MOU established control based on
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`the fact
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` it did so based on the terms of the MOU being
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`insufficient to establish control.
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`As the Court itself noted, the MOU provided for
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`Maxell’s own patents (such as this litigation),
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` Ex. A. Maxell’s licensing activities regarding
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`demand
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`states that
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` This provision thus provides Maxell with no ability to
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` here. Moreover, Apple does not address the fact that “the MOU
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`” D.I. 202 at 10. And, while
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`Apple points to testimony that Maxell could request that
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`there is no testimony that Maxell has a right to obtain such documents. Finally, while Apple
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`Case 5:19-cv-00036-RWS Document 281 Filed 04/17/20 Page 3 of 10 PageID #: 9996
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`complains that Maxell did not “invoke the MOU”—whatever that may mean—Apple does not
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`deny that Maxell did request the materials from Hitachi, and Hitachi ignored the request.
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`B. Maxell’s Business Relationships Do Not Establish Control
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`Apple asserts the relationship between Hitachi and Maxell has not disintegrated because
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`Maxell recently met with Hitachi personnel to discuss IP issues. Apple mischaracterizes this
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`testimony. The discussions were about
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` Ex. B, Kitagata Tr. at 118:8-11. Mr. Kitagata made clear
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`. Id. at 118:2-5, 119:25-120:7. He also confirmed there was
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`. Id. at 118:17-25.
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` do not establish Maxell’s control over Hitachi
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`any more than they give Maxell control over
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`. Using this logic, one could argue
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`. That is obviously not the case but underscores the disconnect.
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`Moreover, the Court rejected the argument that a business partnership with a Hitachi
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`subsidiary establishes control, noting in part that “Apple has not demonstrated that
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`the…partnership has any relationship
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`to
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`the asserted patents
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`in
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`this case or
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`the
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`licensing/communication documents sought here.” D.I. 202 at 8. The same conclusion applies to
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`the business relationship Apple raises in the renewed motion. Mot. at 3. The inventor that Apple
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`states works with Maxell, Mr. Takizawa, is not an employee of Hitachi. He works for a subsidiary
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`“Hitachi Industry & Control Solutions Ltd.,” or “Hi-ICS.” Ex. E, Takizawa Tr. at 10:3-10. He is
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`not “loaned” or “seconded” to Maxell. As he testified, he is “
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`Case 5:19-cv-00036-RWS Document 281 Filed 04/17/20 Page 4 of 10 PageID #: 9997
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`.” Id. at 14:9-11. And Apple offers no argument or evidence that
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`the subcontract work bears any relationship to the asserted patents or the requested documents.
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`There is no such relationship. See, e.g., id. at 37:8-10 (“
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`subsidiary, unrelated to this litigation or the asserted patents, does not demonstrate an “ongoing
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`.”). Subcontracted work by an employee of a Hitachi
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`exchange of documents” or establish Maxell’s control over Hitachi.
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`C.
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`The Inventor Depositions Do Not Establish Control
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`In its original motion, Apple argued that it “expects Hitachi to be involved in this litigation
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`through at least making inventors of the asserted patents available for deposition.” See D.I. 202 at
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`11. This Court held that, to the extent Maxell intends to rely on Hitachi employees to support its
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`case, such reliance supports a finding of control, but noted there was no evidence that Hitachi
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`assisted in making such witnesses available or would assist Maxell in any other manner. Id. at 11-
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`12. In its renewed motion, Apple still provides no such evidence.
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`Hitachi has not cooperated in this case or “offer[ed] its own employees for depositions.”
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`The only inventor currently employed by Hitachi who appeared for deposition is Mr. Maeoka.1
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`But Apple did not cite Mr. Maeoka on this issue because he testified clearly that he was not
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`required by Hitachi to attend the deposition, but “made the decision to participate of my own
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`volition.” Ex. F, Maeoka Tr. at 21:24-22:3; see also 22:17-21 (Q: Are you testifying today as part
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`of your work for Hitachi? A. No. As I said earlier, this was a request to me personally, so I am
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`participating on a personal basis. Hitachi Limited is not involved.”). Instead, Apple cites Mssrs.
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`Takizawa and Nakano, both of whom work for subsidiary Hi-ICS. Ex. E, Takizawa Tr. at 10:3-
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`10; Ex. G, Nakano Tr. at 9:21-24. Both made clear they did not feel obligated to attend the
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`1 Mr. Katagishi is employed by Hitachi but is seconded to a subsidiary. He confirmed he did not speak to anybody
`from Hitachi about attending the deposition. Ex. H, Katagishi Tr. at 35:22-24, 37:23-38:3.
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`Case 5:19-cv-00036-RWS Document 281 Filed 04/17/20 Page 5 of 10 PageID #: 9998
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`deposition as part of their employment. Ex. E, Takizawa Tr. at 142:3-15; Ex. G, Nakano Tr. at
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`29:3-7. Mr. Takizawa explicitly confirmed that nobody at Hitachi asked him attend the deposition.
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`Ex. E, Takizawa Tr. at 16:18-20. And the business relationship underlying Hi-ICS’s decision to
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`permit Mr. Nakano to attend deposition was the relationship between Maxell and Hi-ICS (not
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`Hitachi). Ex. G at 37:9-20. That Maxell agreed to reimburse them for travel to the United States
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`for depositions does not establish Hitachi involvement in the litigation or any arrangement with
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`Hitachi related to the case.2 Not a single piece of testimony Apple cited even mentions Hitachi.
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`Ultimately, Maxell relied on a single current Hitachi employee, with no evidence that
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`Hitachi assisted in making him available for deposition or otherwise assisted in the case. Whereas
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`the Court originally held that Hitachi’s anticipated involvement weighed slightly in favor of
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`finding control, Hitachi’s actual involvement (i.e., none) weighs against such a finding.
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`D.
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`Potential Payment of Inventor Bonuses Does Not Establish Control
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`Hitachi has no financial interest in this case. Pursuant to Japanese law and Maxell corporate
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`regulations (implementing the law), inventors are compensated for filing patent applications and
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`having inventions that contribute to product sales or royalty income. See Ex. A at Art. 4; Ex. B.
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`Kitagata Tr. at 57:11-17, 66:23-67:5, 71:9-19. The compensation applies to all Japanese inventors
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`regardless of their employer, not just “Hitachi employees” as Apple implies. Mot. at 4-5; Ex. B
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`Kitagata Tr. at 63:14-23. This is confirmed by the testimony of Messrs. Oeda and Nakano, cited
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`by Apple. Mot. at 5. While both inventors may potentially receive compensation for their
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`inventions, neither is an employee of Hitachi. See supra at Section C. Most importantly, Apple has
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`2 Maxell did not allege the inventors appeared for deposition on vacation. When asked whether Hitachi was
`permitting inventors to take time off work, Maxell’s counsel responded “I don’t know…[Y]ou can ask them if they
`are taking vacation days or if they’ve cleared this with their bosses.” Mot. at Ex. B6 (2/19/20 M&C Tr. at 31:2-8).
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`Case 5:19-cv-00036-RWS Document 281 Filed 04/17/20 Page 6 of 10 PageID #: 9999
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`not shown how a bonus paid directly to an inventor provides a financial interest to Hitachi.3
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`E.
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`Apple Has Not Shown Maxell Has Access to Hitachi Confidential Information
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`Information that was transferred from HCE to Maxell as part of the 2013 business transfer
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`and patent portfolio assignment, including internal file histories, are at Maxell. Far from claiming
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`to not being permitted to view such information, Maxell produced these materials in the litigation
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`or noted them in a privilege log as appropriate. It is this information that was discussed at the
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`inventor deposition with a Maxell representative in the room.4 Mot. at 5.
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`F. Maxell Has Not Misrepresented its Relationship with Hitachi
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`Apple argues one of the inventors (Mr. Maeoka) “testified that he had to obtain Hitachi
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`Ltd.’s approval to testify for Maxell” and “that Maxell’s counsel told him to not look for or produce
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`his Hitachi documents.” Mot. at 5-6. Setting aside that this argument does not identify any
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`misleading conduct, the facts as stated are inaccurate. As shown above, Mr. Maeoka participated
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`in the deposition of his own volition, with no Hitachi involvement. With respect to his search for
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`documents, Mr. Maeoka testified that nobody told him not to search for documents. Ex. F, Tr. at
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`53:8-10. To the contrary, he testified that he understood he had an obligation to search for
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`documents, but that he, personally, had no documents because “
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`” Id. at 43:21-24; 49:21-50:7; 90:2-13, 91:4-6. This
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`is exactly the position Maxell relayed to Apple prior to the depositions. Mot. at D2 (“
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`3 Apple asserts “there is no law requiring Maxell to pay Hitachi inventors.” Mot. at 5 (emphasis in original).
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`4 Furthermore, Maxell never asserted that it could not access Hitachi documents because its employees cannot view
`Hitachi confidential information. Maxell cannot view Hitachi documents because Maxell and Hitachi are separate
`entities and Maxell has no right to Hitachi confidential information. Maxell employees (like Apple employees) are
`not permitted to view Hitachi confidential information unless such information is provided to them by Hitachi.
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`Case 5:19-cv-00036-RWS Document 281 Filed 04/17/20 Page 7 of 10 PageID #: 10000
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`.”). Apple seems to complain that Maxell did not encourage
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`inventors to
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` company materials to respond to a subpoena.5
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`With respect to Mr. Oeda, Apple complains that he did not produce his notice regarding
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`compensation in connection with the prior ZTE case. Mot. at 6. Mr. Oeda testified that 1) he knew
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`he had an obligation to search for and produce documents listed in the subpoena, and 2) he
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`performed a search but found no responsive documents. Ex. I, Oeda Tr. at 31:2-14. This aligns
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`with Maxell’s representation that the inventors searched their files but located no responsive
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`documents. That a potentially relevant document was identified during the deposition does not
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`transform Maxell’s statement into a misrepresentation. Moreover, a compensation notice bears no
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`relation to the “licensing and negotiation documents” Apple seeks in its motion. And, while Apple
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`claims it was unable to question the witness on the issue, Apple did question Mr. Oeda about the
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`payment received after the ZTE case. See, e.g., id. at
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`Apple also misstates that Maxell relies on June 2013 negotiations conducted by Mr. Matsuo
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`while refusing to provide full discovery regarding those negotiations. Maxell produced all the
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`documents Mr. Matsuo gave Apple in June 2013—an exchange Apple does not dispute. See, e.g.,
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`Ex. J, Excerpt of Apple Rog Response. Apple’s complaint is not actually tied to the June 2013
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`negotiations at all. It is simply a reiteration of its request for earlier sales negotiation materials,
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`which Maxell has confirmed it does not have and on which it is not relying (D.I. 166 at 5-6), and
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`licenses (i.e., the very materials that are the subject of Apple’s motion).
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`Maxell also did not falsely instruct Apple to reach Mr. Matsuo through counsel. As Maxell
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`informed Apple, Maxell initially stated to contact Mr. Matsuo through counsel because, given
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`5 Moreover, Apple knows that such information must be sought from Hitachi itself, which is why such topics were
`included in Apple’s Letters of Request for International Judicial Assistance. D.I. 146.
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`Case 5:19-cv-00036-RWS Document 281 Filed 04/17/20 Page 8 of 10 PageID #: 10001
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`Maxell’s prior relationship with him, he held Maxell confidential and privileged information, and
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`Maxell believed it would have been better positioned to reach him than Apple could through
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`traditional channels. When Apple ultimately did seek to subpoena Mr. Matsuo (on February 21,
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`2020), Maxell agreed to reach out. Ultimately, however, Mr. Matsuo declined to have Mayer
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`Brown accept service on his behalf and informed Maxell’s counsel that all future communications
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`should go through his, and Hitachi’s, Japanese counsel.
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`Apple’s argument that it waited until the final weeks of fact discovery to subpoena Mr.
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`Matsuo based on Maxell’s instruction is an obvious attempt to excuse Apple’s own failure to
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`conduct timely discovery. Mr. Matsuo is a non-party living in Japan, who is under no obligation
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`to appear for deposition in the United States (as Apple demanded). If Apple had a true interest in
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`deposing him or enforcing a subpoena, it would have had to raise the issue months earlier so that
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`a deposition could be scheduled in Japan during fact discovery.
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`G. Maxell Should Not Be Precluded From Using All Hitachi Discovery
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`The bounds of Apple’s request that Maxell be precluded from relying on evidence from
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`Hitachi are not clear. If it is intended to cover materials received from Hitachi during the pendency
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`of this case (not including inventor testimony), Maxell does not oppose as it is unable to obtain
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`any such material either. If it is intended to cover materials conveyed from Hitachi to HCE and
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`then to Maxell (all of which were produced by Maxell in this case), there is no basis for the
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`sanction. Maxell has not selectively responded to any request or otherwise used Hitachi materials
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`as a sword and a shield. Rather, as stated now countless times, Maxell provided all relevant
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`information in its possession, custody, or control. Finally, there is also no basis to prohibit Maxell
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`from using any discovery that Apple may timely elicit from third-parties, Hitachi or its employees.
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`Maxell has not opposed or otherwise attempted to impede Apple’s ability to procure any such
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`discovery, and thus there would be no basis on which to prevent Maxell from using such discovery.
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`Case 5:19-cv-00036-RWS Document 281 Filed 04/17/20 Page 9 of 10 PageID #: 10002
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`Dated: April 15, 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
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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 281 Filed 04/17/20 Page 10 of 10 PageID #: 10003
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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 15th day of April 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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