Case 5:19-cv-00036-RWS Document 288-1 Filed 04/22/20 Page 1 of 42 PageID #: 10045
`Case 5:19-cv-00036—RWS Document 288-1 Filed 04/22/20 Page 1 of 42 PageID #: 10045
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`EXHIBIT A
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`EXHIBIT A
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`Case 5:19-cv-00036-RWS Document 288-1 Filed 04/22/20 Page 2 of 42 PageID #: 10046
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`IN THE UNITED STATES DISTRICT COURT
`OF THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`No. 5:19CV36-RWS
`SEALED
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`§§
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`§
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`§
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`MAXELL, LTD.
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`V.
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`APPLE INC.
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`ORDER ON MOTION TO COMPEL
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`The following motion has been referred to the undersigned United States Magistrate Judge
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`for decision in accordance with 28 U.S.C. § 636:
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`Maxell, Ltd.’s Opposed Motion to Compel (Docket Entry # 197).
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`The Court, having carefully considered the relevant briefing, is of the opinion the motion should be
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`GRANTED IN PART and DENIED IN PART. Apple’s request for costs and fees is denied.
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`I. BACKGROUND
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`Plaintiff Maxell, Ltd. (“Maxell”) filed its complaint for patent infringement against Apple
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`Inc. (“Apple”) on March 15, 2019. The First Amended Complaint for Patent Infringement (“FAC”)
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`alleges Apple infringes ten patents related to mobile device technology under theories of direct
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`infringement, induced infringement, willful infringement, and contributory infringement. Docket
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`Entry # 111. Maxell alleges that various aspects of Apple’s iPhone, iPad and Mac products infringe
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`the asserted patents, including: cameras; navigation capabilities; authentication systems;
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`telecommunications techniques; video streaming; “do not disturb” functionality; power management
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`technologies; and smartwatch integration. See Docket Entry # 171 at p. 1.
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`The FAC alleges that since at least June 2013, Apple has been aware of Maxell’s patents and
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`has had “numerous meetings and interactions regarding its infringement of these patents.” Docket
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`Entry # 111, ¶ 5. According to the FAC, these meetings included Apple’s representatives being
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`provided with detailed information regarding Maxell’s patents, the developed technology, and
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`“Apple’s ongoing use of the patented technology.” Id. The FAC alleges Maxell believed the parties
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`“could reach a mutually beneficial solution and to that end considered a potential business
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`transaction and continued to answer multiple inquiries from Apple over the course of several years,
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`including communicating with Apple as recently as late 2018.” Id. Maxell alleges Apple elected not
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`to enter into an agreement and did not license Maxell’s patents; rather, Apples continued, and
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`continues today, to make, use, sell, and offer for sale Maxell’s patented technology without license.
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`Id. For each patent, the FAC further states “Apple will thus have known and intended (since
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`receiving such notice) that its continued actions would actively induce and contribute to actual
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`infringement” of certain claims of each patent. See, e.g., id., ¶¶ 30, 44, 59, 72, 89, 102, 115, 132,
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`145, 160.
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`On March 16, 2020, District Judge Schroeder entered an order extending the deadline to
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`complete all fact depositions to April 21, 2020 and the deadline for initial expert reports to April 28,
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`2020. Docket Entry # 232. The dispositive motions deadline is currently June 30, 2020, and jury
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`selection and trial are scheduled October 26, 2020. Id.
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`II. MAXELL’S MOTION TO COMPEL
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`Maxell filed its opposed motion to compel on February 14, 2020, requesting the Court order
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`Apple to 1) produce all relevant technical documents related to the accused features and
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`functionalities of the accused products, 2) produce all non-source code documents made available
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`on the source code computers, 3) provide a fulsome response to Maxell Interrogatory No. 9, 4)
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`produce the eleven additional license agreements requested by Maxell, 5) produce all relevant buyer
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`2
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`surveys, owner surveys, and owner studies, and 6) produce the prior litigation documents requested
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`by Maxell.
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`Pursuant to the parties’ agreement, Apple filed an expedited “preliminary response” on
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`February 20, 2020. Docket Entry # 199. District Judge Schroeder referred the motion to the
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`undersigned on February 26, 2020. Two days later, Apple filed its response to Maxell’s motion to
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`compel, combining its preliminary response and the “present supplement in a single document.”
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`Docket Entry # 205 at n. 1.
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`Maxell filed its opposed motion for sanctions on March 5, 2020, wherein it requests the
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`Court preclude Apple from using the discovery it failed to timely produce, including discovery
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`produced after January 31, 2020; deem certain accused products/components and source code to be
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`representative of all versions of that product as detailed in the chart contained in the motion; and
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`assess monetary sanctions. Docket Entry # 210 at p. 1. According to Maxell, in the final stages of
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`discovery, it is “having to work through documents and source code that continue to be produced
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`instead of preparing for depositions and expert reports.”1 Id. (emphasis in original).
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`Noting it is not clear from the motion for sanctions which documents addressed in Maxell’s
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`motion to compel are still at issue, in its March 19, 2020 Order Denying Hearing on Motion to
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`Compel and Reserving Ruling on Motion for Sanctions to Later Date, the Court ordered Maxell to
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`file a reply to Apple’s response to Maxell’s motion to compel, clearly setting forth the documents
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`still at issue. Docket Entry # 236 at pp. 2, 5. On March 26, 2020, Maxell filed its reply as ordered.
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`1 Both parties have informed the Court they believe a hearing would be helpful to the resolution of the motion
`for sanctions. Maxell requests the Court hold a telephonic hearing. Given the seriousness of the relief requested in the
`motion for sanctions, Apple requests that motion be heard by the Court in person. The Court has previously indicated
`its agreement with Apple that, to the extent warranted after a review of all of the relevant briefing, an in-person hearing
`could be scheduled later in the case without impacting the overall case schedule and without any prejudice to Maxell.
`See Docket Entry # 236 at p. 5. As this time, the Court intends to schedule an in-person hearing when safe to do so.
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`3
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`Docket Entry # 244. Apple filed a surreply on March 31, 2020. Docket Entry # 258.
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`According to Maxell’s April 6, 2020 “Report Regarding Maxell Ltd.’s Motion to Compel”
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`(“supplemental report”), which the Court received as it was preparing to enter this order, Maxell and
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`Apple held an additional meet and confer on April 2 to discuss the status of each issue raised in
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`Maxell’s motion and were able to resolve some of the issues raised therein. Docket Entry # 266.
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`Apple filed its “Responsive Report” on April 7, 2020, addressing the status of certain issues which
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`Apple asserts Maxell “mischaracterized” in its report. Docket Entry # 268. On April 8, Maxell filed
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`a supplement to its supplemental report. Docket Entry # 270.
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`III. APPLICABLE LEGAL STANDARDS GOVERNING DISCOVERY
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`“The goal of discovery is to maximize relevant, nonprivileged matter while avoiding excess,
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`non-relevant or privileged information.” Drake v. Capital One, National Association, No. 4:16-CV-
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`00497, 2017 WL 1319560, at *1 (E.D. Tex. April 10, 2017). Federal Rule of Civil Procedure 26(b)
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`provides that the permissible scope of discovery includes “any nonprivileged matter that
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`is relevant to any party’s claim or defense and proportional to the needs of the case, considering the
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`importance of the issues at stake in the action, the amount in controversy, the parties’ relative access
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`to relevant information, the parties’ resources, the importance of the discovery in resolving the
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`issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.
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`Information within this scope of discovery need not be admissible in evidence to be
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`discoverable.” Matter of AET, Inc., Ltd., No. 1:10-CV-51, 2018 WL 4201264, at *2 (E.D. Tex. June
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`8, 2018) (quoting FED. R. CIV. P. 26(b)(1)).
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`The Court’s Discovery Order for Patent Cases requires the parties, without waiting discovery
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`requests, “produce or permit the inspection of all documents, electronically stored information, and
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`tangible things in the possession, custody, or control of the party that are relevant to the pleaded
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`claims or defenses involved in this action, except to the extent these disclosures are affected by the
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`time limits set forth in the Patent Rules for the Eastern District of Texas.”2 Docket Entry # 42 at pp.
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`2-3. Here, the Initial and Additional Disclosures deadline was July 10, 2019. Docket Entry # 46 at
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`p. 8.
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`In the Eastern District of Texas, Local Rule CV-26 also provides guidance in considering
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`whether information is relevant for discovery. The rule provides information is relevant if:
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`(1) it includes information that would not support the disclosing parties’ contentions;
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`(2) it includes those persons who, if their potential testimony were known, might
`reasonably be expected to be deposed or called as a witness by any of the parties;
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`(3) it is information that is likely to have an influence on or affect the outcome of a
`claim or defense;
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`(4) it is information that deserves to be considered in the preparation, evaluation or
`trial of a claim or defense; and
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`(5) it is information that reasonable and competent counsel would consider
`reasonably necessary to prepare, evaluate, or try a claim or defense.
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`Matter of AET, 2018 WL 4201264, at *2 (quoting E.D. Tex. Civ. R. CV-26(d)). Relevance “has been
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`construed broadly to encompass any matter that bears on, or that reasonably could lead to other
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`matters that could bear on, any issue that is or may be in the case.” Matter of AET, 2018 WL
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`4201264, at *2 (quoting Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978)
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`(citing Hickman v. Taylor, 329 U.S. 495, 501 (1947))). Nonetheless, “Rule 26 vests the trial judge
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`2 After disclosure is made pursuant to the Discovery Order for Patent Cases, each party is under a duty to
`supplement or correct its disclosures immediately if the party obtains information on the basis of which it knows that the
`information disclosed was either incomplete or incorrect when made, or is no longer complete or true. Docket Entry #
`42 at p. 6.
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`with broad discretion to tailor discovery narrowly.” Matter of AET, 2018 WL 4201264, at *2
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`(quoting Crawford-El v. Britton, 523 U.S. 574, 598 (1998)).
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`In addition to being relevant, discovery must be proportional. Federal Rule of Civil Procedure
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`26(b) has been amended, effective December 1, 2015. Samsung Elecs. Am., Inc. v. Yang Kun Chung,
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`321 F.R.D. 250, 284 (N.D. Tex. June 26, 2017) (“Samsung II”). “Under Rule 26(b)(1), [as amended,]
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`discoverable matter must be both relevant and proportional to the needs of the case which are
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`related but distinct requirements.”3 Id. at 279. The burden is on the party resisting discovery to
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`establish the discovery is not proportional. KAIST IP US LLC v. Samsung Electronics Co. Ltd., No.
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`2:16-CV-01314-JRG-RSP, 2017 WL 9937760, at *1 (E.D. Tex. Dec. 21, 2017) (citing Samsung
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`Elecs. Am., Inc. v. Yang Kun Chung, No. 3:15-CV-4108-D, 2017 WL 896897, at *11 (N.D. Tex.
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`Mar. 7, 2017) (“Samsung I”)); see also Samsung II, 321 F.R.D. at 284 (explaining the amendments
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`to Rule 26 do not alter the burdens imposed on the party resisting discovery).
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`“[J]ust as was the case before the December 1, 2015 amendments, under Rules 26(b)(1) and
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`26(b)(2)(C)(iii), a court can and must
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`limit proposed discovery that it determines is not
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`proportional to the needs of the case, considering the importance of the issues at stake in the action,
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`the amount in controversy, the parties’ relative access to relevant information, the parties’ resources,
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`the importance of the discovery in resolving the issues, and whether the burden or expense of the
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`proposed discovery outweighs its likely benefit
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`and the court must do so even in the absence of a
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`motion.” Samsung II, 321 F.R.D. at 284 (citing Crosby v. La. Health Serv. & Indem. Co., 647 F.3d
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`3 The 2015 amendments to Rule 26 deleted “from the definition of relevance information that appears ‘reasonably
`calculated to lead to the discovery of admissible evidence’ because ‘[t]he phrase has been used by some, incorrectly, to
`define the scope of discovery’ and ‘has continued to create problems’ given its ability to ‘swallow any other limitation
`on the scope of discovery.’” Robroy Indus. Tex., LLC v. Thomas & Betts Corp., No. 2:15-CV-512-WCB, 2017 WL
`319064, at *4 (E.D. Tex. Jan. 23, 2017) (quoting FED. R. CIV. P. 26, 2015 comm. note).
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`258, 264 (5th Cir. 2011)). Thus, as amended, Rule 26(b)(2)(C) provides that, “[o]n motion or on its
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`own, the court must limit the frequency or extent of discovery otherwise allowed by these rules or
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`by local rule if it determines that: (i) the discovery sought is unreasonably cumulative or duplicative,
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`or can be obtained from some other source that is more convenient, less burdensome, or less
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`expensive; (ii) the party seeking discovery has had ample opportunity to obtain the information by
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`discovery in the action; or (iii) the proposed discovery is outside the scope permitted by Rule
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`26(b)(1).” Samsung II, 321 F.R.D. at 284 (quoting FED. R. CIV. P. 26(b)(2)(C)).
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`Rule 26(c) further provides that the court “may, for good cause,” protect a party from “undue
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`burden or expense” by issuing an order forbidding the disclosure or discovery of certain matters,
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`specifying terms for the disclosure or discovery, or limiting the scope of disclosure or
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`discovery. Matter of AET, 2018 WL 4201264, at *2 (quoting FED. R. CIV. P. 26(c)(1)(D)).
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`Rule 37 of the Federal Rules of Civil Procedure allows a discovering party, on notice to other
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`parties and all affected persons, to “move for an order compelling disclosure or discovery.” Star
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`Creek Ctr., LLC v. Seneca Ins. Co., Inc., No. 4:17-CV-00607, 2018 WL 1934084, at *1 (E.D. Tex.
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`Apr. 23, 2018) (quoting FED. R. CIV. P. 37(a)(1)). The moving party bears the burden of showing that
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`the materials and information sought are relevant to the action or will lead to the discovery of
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`admissible evidence. Star Creek, 2018 WL 1934084, at *1 (citing Export Worldwide, Ltd. v. Knight,
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`241 F.R.D. 259, 263 (W.D. Tex. 2006)). Once the moving party establishes the materials requested
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`are within the scope of permissible discovery, the burden shifts to the party resisting discovery to
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`show why the discovery is irrelevant, overly broad, unduly burdensome or oppressive, and thus
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`should not be permitted. Id.
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`“The party seeking discovery, to prevail on a motion to compel, may well need to make its
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`own showing of many or all of the proportionality factors, including the importance of the issues at
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`stake in the action, the amount in controversy, the parties’ relative access to relevant information,
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`the parties’ resources, and the importance of the discovery in resolving the issues, in opposition to
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`the resisting party’s showing.” Samsung II, 321 F.R.D. at 284. But Rule 26(b)(1) “‘does not place
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`on the party seeking discovery the burden of addressing all proportionality considerations.’”
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`Samsung I, 325 F.R.D. at 595 (quoting Carr v. State Farm Mutual Auto. Ins. Co., 312 F.R.D. 459,
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`467 (N.D. Tex. 2015) (quoting FED. R. CIV. P. 26, 2015 comm. note)).
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`IV. DISCUSSION
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`A.
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`1.
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`Maxell’s motion to compel
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`Parties’ assertions
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`In its prior motion to compel filed August 15, 2019, Maxell expressed concerns about
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`Apple’s delayed document production, noting Apple could wait until the “final days of discovery to
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`provide relevant, responsive information.” Docket Entry # 56 at p. 2. Maxell asked the Court to
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`compel Apple to “substantially complete its document production.” Maxell Ltd. v. Apple Inc., No.
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`5:19-CV-00036-RWS, 2019 WL 7905454, at *1 (E.D. Tex. Nov. 13, 2019). Apple represented to
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`the Court it was complying with the Court’s Discovery Order for Patent Cases, having already
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`produced documents in at least five batches. Id. at *2.
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`On November 13, 2019, the Court issued an order granting in part and denying in part
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`Maxell’s motion to compel document production and responses to Interrogatory Nos. 2-9. See
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`Docket Entry # 126. The Court denied Maxell’s motion to compel document production, stating the
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`order did not reduce or eliminate Apple’s obligation to “produce or permit the inspection of all
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`documents, electronically stored information, and tangible things in [its] possession, custody, or
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`control that are relevant to the pleaded claims or defenses involved in this action.” Maxell Ltd., 2019
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`WL 7905454, at *2. Noting Maxell’s broad allegations necessarily contemplate extensive discovery
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`and document production, the Court noted Apple’s inability to complete document production by
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`the “Additional Disclosures” deadline was understandable. Id. Further noting the parties agreed
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`document production was still ongoing, the Court stated it could not determine at that time whether
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`Apple had met its discovery obligations to date. Id. The Court stated it expected Apple to
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`substantially complete all discovery by November 27, 2019, as agreed by Apple. Id.
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`In its current motion to compel filed February 14, 2020, Maxell asserts its prior concerns
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`regarding Apple’s delayed document production “have sadly come true.” Docket Entry # 197 at p.
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`1. Maxell asserts Apple initially produced “the bare minimum” regarding the operation of the
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`accused functionalities, “relying primarily on a limited source code production.” Id. According to
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`Maxell, a review of Apple’s productions, source code, and publicly available information indicates
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`there are relevant technical documents that had not been produced. Id. at p. 2. Maxell further asserts
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`Apple improperly produced over one thousand non-source code documents on source code
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`computers, improperly restricting Maxell’s ability to access, review, and use such materials. Id. at
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`p. 4. Maxell also raises various issues with Apple’s production of non-technical documents (forecast
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`documents, licenses, marketing surveys, and prior litigation documents). Id. at pp. 6-7. According
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`to Maxell, Apple treats the Court’s meet and confer requirement “much as it has the rest of its
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`discovery obligations, with a refusal to comply.”4 Id. at p. 2.
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`4 For example, Maxell states it made a written request on January 27, 2020 for Apple to produce eleven
`additional relevant licenses; on January 31, 2020, Apple stated Maxell had not supported its assertion of relevance and
`requested additional information, which Maxell provided the following day “along with a request to meet and confer.”
`Maxell claims Apple should have met and conferred and provided Maxell a final position by February 10, but on
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`In its response, Apple states Maxell did not properly meet and confer on each purported
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`dispute raised. According to Apple, Apple was investigating and has now produced the majority of
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`the documents addressed in Maxell’s motion. For those issues the parties properly discussed, Apple
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`represents it had already provided or was in the process of providing, or for those that Maxell never
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`specifically requested before filing its motion, “Apple will nonetheless be producing.” Docket Entry
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`# 205 at p. 1. Apple requests costs and sanctions, asserting Maxell “rush[ed] to court without
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`meeting-and-conferring” and its “motion paints a picture that Apple has intentionally withheld
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`documents by mischaracterizing or misrepresenting certain documents.” Id. at p. 7.
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`In its reply, Maxell contends the majority of the issues raised in the motion to compel have
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`not been resolved. Docket Entry # 244 at p. 1. Maxell explains “Apple’s representation of resolution
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`more often than not results from an overly-narrow view of the deficiencies (an issue that Maxell has
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`repeatedly highlighted to Apple).” Id. As one example, Maxell asserts, with respect to schematics,
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`the “deficiency was two-fold: 1) Apple failed to produce any schematics for 29 accused products,
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`and 2) Apple failed to produce complete schematics for many other products.” Id. (emphasis in
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`original). According to Maxell, “Apple’s response only addressed the missing 29 schematics while
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`ignoring Maxell’s request for complete schematics for the other products.” Id. For other alleged
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`deficiencies raised, Maxell asserts Apple similarly limited its responsive production, and response
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`to the motion, to the specific examples called out by Maxell and ignored the categories in full. Id.
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`Maxell’s reply sets forth in detail the alleged continuing deficiencies in Apple’s production of
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`technical documents and non-technical documents, as well as the continuing issues with Apple’s
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`production of non-source code documents on source code computers.
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`February 13, “Apple stated that it was looking into the issue, providing no detail about what it would provide (or not),
`and put off a meet and confer until its ‘investigation’ was complete.” Docket Entry # 197 at pp. 1-2.
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`Apple asserts Maxell “abuses the Court’s invitation to identify on reply which issues from
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`its original motion
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` are still outstanding by manufacturing new ‘disputes’ it hasn’t bothered to
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`properly discuss with Apple before filing this motion.” Docket Entry # 258 at p. 1. According to
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`Apple, “[e]very time Maxell cannot find a document in Apple’s production, Maxell declares it
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`‘missing,’” and “every time Apples questions whether a document is within the scope of discovery,
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`Maxell says Apple is ‘withholding’ it.” Id. Apple contends most, if not all, of these “disputes” could
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`have been resolved if Maxell “simply asked Apple to investigate them specifically.” Id.
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`The Court addresses each specific “dispute” below, starting with the alleged deficiencies in
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`Apple’s production of technical documents. The Court notes it has also reviewed the briefing related
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`to Maxell’s motion for sanctions, including the Declaration of Saqib J. Siddiqui in Support of
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`Maxell, Ltd.’s Reply in Support of Opposed Motion for Sanctions (“Siddiqui Decl.”). See Docket
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`Entry # 241-1. In that declaration, Maxell provides an index of productions made by Apple after
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`November 27, 2019 through March 24, 2020 (totaling 7,370 documents and 360,539 pages).5
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`Siddiqui Decl., ¶ 15.
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`2.
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`Alleged deficiencies in Apple’s production of technical documents
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`Complete Schematics
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`Apple represents in its response that it had already produced schematics covering most of the
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`120+ accused products (including schematics labeled with the model numbers that Maxell alleged
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`to be missing), and has not intentionally withheld any. Docket Entry # 205 at p. 1. In its reply,
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`5 Prior to the filing of Maxell’s current motion to compel, Apple made two productions of marketing surveys
`and reports (totaling thirty-five documents) in December 2019, three productions of documents (totaling 618 documents)
`in January 2020, and two productions of documents (totaling 3,643 documents) in early February 2020. Siddiqui Decl.,
`¶ 15. The remaining 3,074 documents were produced by Apple following the filing of Maxell’s current motion to compel.
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`Maxell asserts, based on the model numbers Apple has provided and without clarification from
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`Apple as to whether certain of the alleged missing schematics have now been produced, schematics
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`are still missing for
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` According to Apple’s surreply, Maxell did not identify any
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`missing schematics for Apple to clarify until Maxell’s motion to compel. Docket Entry # 258 at p.
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`2. Nevertheless, Apple represents in its surreply it “has produced all requested schematics and, where
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`needed, identified for Maxell bates numbers of requested schematics.” Id.
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`In its reply, Maxell further asserts Apple has failed to produce complete schematics for each
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`product (including, e.g., schematics that show the camera block and SOC).
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` According
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`to Apple’s surreply, the
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` schematics cited in Maxell’s original motion were produced
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`in August 2019. See, e.g., Docket Entry # 258, Ex. M, APL-MAXELL_00596752 (labeled as
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`and showing camera and SOC). Again, Apple has represented it has produced all requested
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`schematics and, where needed, identified for Maxell bates numbers of requested schematics. Docket
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`Entry # 258 at p. 2.
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`In its supplemental report, Maxell asserts the request for schematics was “resolved by 3/31/20
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`letter linking produced schematics to accused products,” but the request for block diagrams remains
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`unresolved. Docket Entry # 266 at p. 1. In its responsive report, Apple again asserts it “performed
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`a reasonable search for such diagrams consistent with the Discovery Order in this case and has
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`produced the results.” Docket Entry # 268 at p. 2. To the extent Apple has not already produced all
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`requested and complete schematics as represented, it shall do so immediately. Otherwise, this part
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`of Maxell’s motion is denied.
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`Documents Describing Cellular Fun ctionalities
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`According to Maxell, throughout this case, Apple has represented the cellular functionalities
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`ofthe accused products are implemented by Qualcomm and Intel components and the only relevant
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`documents were datashccts that Apple already produced. Pointing out Apple recently produced
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`proprietary Apple documents that describe cellular funetionalities, Maxell contends Apple’s
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`production proves that relevant, responsive documents exist at Apple.6 Docket Entry # 244 at p. 4
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`(citing Siddiqui Dccl., 111] 23-25). Maxell asserts Apple has not produced these materials for all
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`relevant products/components. For example, Apple produced—
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`nonnoonoonoonooo Anon—
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`Maxell further asserts Apple produced in March 2020 design specifications for some Apple
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`— swoon Don t
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`Aooonong no Man, the
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`design specifications themselves refer to additional documents and repositories for documents
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`describing relevant cellular funetionalities,—
`
`
`
`" In his declaration, Siddiqui states Maxell requested documents relating to‘— in
`the accused products, and explained that, because the fimctionality implicates multiple components, documents relating
`to such functionali
`could not exist solel with A le‘s com nent su
`liers.” Siddi ui Decl.,
`23. Accordin to
`
`the lack of documents relevant to
`
`In December 2019, Maxell a ain raised
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`nse to Maxell’s motion to com e], A
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`On March 6, 2020, followin the filin of its res
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`13
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`

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`Case 5:19-cv-00036-RWS Document 288-1 Filed 04/22/20 Page 15 of 42 PageID #: 10059
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`at p. 5 (citing Siddiqui Decl., ¶ 26). Maxell states Apple began producing such materials on March
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`25, 2020, but further states it is unclear whether the production is complete.
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`Similarly, Maxell asserts documents Apple produced cite to similar design specifications for
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` Docket Entry # 244
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`full versions of which have also not been produced. According to Maxell, “it is apparent Apple has
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`not searched for and produced documents discussing
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` either,” all of which are “extremely relevant functionality for this case and at least the
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`asserted ’193 patent.” Docket Entry # 244 at p. 5.
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`In connection with this topic, Maxell also raised the fact that many specifications produced
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`by Apple are incomplete or short versions. Maxell states it subpoenaed Broadcom in an attempt to
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`obtain complete datasheets for Broadcom and Avago components, but Avago’s outside counsel
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`conveyed to Maxell on February 25, 2020 that:
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`Apple reached out to us four weeks ago [e.g., January 28, 2020] requesting
`permission to produce the data sheets/technical specifications for the Broadcom
`products identified in your subpoena, which we gave them. So we are assuming that
`Apple has (or will) produce the relevant documents. Please let us know if that is
`incorrect.
`
`Docket Entry # 244 at p. 6 (citing Ex. H (2/25/20 E-mail from Bohmann to Culbertson)). Although
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`Apple produced complete
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` on
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`March 18, 2020, see Siddiqui Decl., ¶ 27, Maxell states it continues to await production of complete
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`versions of many such datasheets.
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`14
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`

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`Case 5:19-cv-00036-RWS Document 288-1 Filed 04/22/20 Page 16 of 42 PageID #: 10060
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`In its surreply, Apple states it accurately represented that the
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`functionality in Maxell’s asserted claims is found only in third-party documents, including from Intel
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`and Qualcomm. Docket Entry # 258 at pp. 2-3.
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`“similar” to Intel documents is based on the unsubstantiated belief that documents for one vendor
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` Apple argues Maxell’s request for Qualcomm documents
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`must exist for other vendors. Id.
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`Regarding Maxell’s complaint about
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` for
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`Apple asserts 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.” Id. According to Apple’s surreply, “Maxell ignores that Apple told Maxell that the
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` and Apple has already produced
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`the relevant source code for the chipsets used in both
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`a fact that Maxell
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`would have realized if it diligently reviewed Apple’s production.” Id.
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`In its supplemental report, Maxell claims the
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` and documents cited
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` design specifications issues remain unresolved, whereas the design specifications
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` issue is resolved by Apple’s March 31, 2020 production. Docket
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`in the
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`for the
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`Entry # 266 at p. 1. Regarding the requested design specifications for Qualcomm transceivers,
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`15
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`Case 5:19-cv-00036-RWS Document 288-1 Filed 04/22/20 Page 17 of 42 PageID #: 10061
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`Maxell asserts the issue is resolved subject to Apple’s agreement to perform an additional search for
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`and/or provide clarification regarding these documents. Id. at pp. 1-2.
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`In Apple’s responsive report, Apple notes all the items were raised for the first time in
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`Maxell’s reply and again represents it has produced the
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` it located after a
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`reasonable search. Docket Entry # 268 at p. 2. Regarding design specifications for
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` Apple
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`represents it will perform an additional search for and/or provide clarification regarding these
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`documents. Id. To the extent any such documents are located after this additional search, Apple shall
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`produce such documents (or provide clarification regarding the requested Qualcomm documents)
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`within ten days from the date of entry of this order. Otherwise, this part of Maxell’s motion is
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`denied.
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`The Court considers below the remaining issue of whether Apple should be ordered to search
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`for and produce different versions of every single specification/datasheet from
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`, and camera suppliers such as
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`and
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`Skyworks Code
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`Maxell’s motion noted a datasheet produced by third-party Skyworks for its
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`
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`16
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`Case 5:19-cv-00036-RWS Document 288-1 Filed 04/22/20 Page 18 of 42 PageID #: 10062
`Case 5:19-cv-00036-RWS Document 288-1 Filed 04/22/20 Page 18 of 42 PageID #: 10062
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`In its response, Apple represented it “has already produced or made available for inspection
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`all Skyworks related material, including computer files, that is was able to locate.” Docket Entry #
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`205 at p. 2. Maxell agrees in its reply (and supplemental report) the dispute regarding Skyworks
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`source code is resolved. However, Maxell asserts other Skyworks documentation remains missing
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`from Apple’s production, including complete (not partial or redacted) Skyworks datasheets and
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`Engineering Requirements Specifications.7 Docket Entry # 244 at p. 7.
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`In its surreply, Apple states it has conducted a further investigation in response to Maxell’s
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`request and, to the extent additional documents were located, those too have been produced in the
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`March 25, 2020 production. Docket Entry # 258