Case 5:19-cv-00036-RWS Document 293 Filed 04/23/20 Page 1 of 11 PageID #: 10127
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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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`Defendant.
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`JURY TRIAL DEMANDED
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`APPLE INC.’S RENEWED MOTION TO COMPEL
`INFRINGEMENT CONTENTIONS COMPLIANT WITH PATENT RULE 3-1(G)
`AND FOR SCHEDULE EXTENSION OR, IN THE ALTERNATIVE, TO PRECLUDE
`MAXELL’S RELIANCE ON SOURCE CODE FOR INFRINGEMENT
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`Case 5:19-cv-00036-RWS Document 293 Filed 04/23/20 Page 2 of 11 PageID #: 10128
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`TABLE OF CONTENTS
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`I.
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`II.
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`MATERIAL FACTS ......................................................................................................... 1
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`LEGAL STANDARD ........................................................................................................ 2
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`III.
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`ARGUMENT ..................................................................................................................... 2
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`A.
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`B.
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`C.
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`D.
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`Maxell’s Citation to Undifferentiated Ranges of Source Code Without
`Explanation Does Not Provide Fair Notice of Its Infringement Theories ............. 2
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`Maxell’s Bulk Listing of Source Code Across Multiple Claim
`Elements Does Not Provide Fair Notice of Its Infringement Theories .................. 4
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`The Court Should Again Order Maxell To Comply With
`P.R. 3-1(g), And Grant Schedule Relief to Cure Apple’s Prejudice...................... 5
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`In the Alternative, Striking Maxell’s Citations to “Large
`And Undifferentiated Ranges of Source Code” is Warranted ............................... 6
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`IV.
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`CONCLUSION .................................................................................................................. 7
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`Case 5:19-cv-00036-RWS Document 293 Filed 04/23/20 Page 3 of 11 PageID #: 10129
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`Maxell first owed Apple source code contentions that complied with P.R. 3-1(g) last
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`September but, seven months and two court orders later, Apple still has not received them.
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`Maxell’s First Supplemental Infringement Contentions (FSIC) came nowhere close to complying
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`with that rule—
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` Apple raised this issue with the Court and the Court agreed with Apple, finding that
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`Maxell’s FSIC did not provide Apple “fair notice” of the source code functionality that Maxell
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`asserts is relevant to its infringement theories. D.I. 204 at 4-5. The Court also ordered Maxell to
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`provide contentions that are “sufficiently focused to the accused functionality” with a “degree of
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`specificity” consistent with that Order. D.I. 204 at 5. Despite that clear instruction, Maxell’s
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`Second Supplemental Infringement Contentions (SSIC) are woefully insufficient.
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`Maxell’s refusal to comply with P.R. 3-1(g) continues to materially prejudice Apple’s
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`ability to defend itself. Because expert discovery begins in two weeks (D.I. 283), Apple brings
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`this issue to the Court’s attention again and seeks expedited consideration. The Court may cure
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`Apple’s prejudice either (1) by requiring Maxell comply with its prior order and by extending the
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`case schedule, or (2) by partially striking Maxell’s contentions in the manner Apple proposes.
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`I.
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`MATERIAL FACTS
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`Maxell alleges that every currently-asserted claim has “software limitations” governed by
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`P.R. 3-1(g). D.I. 204 at 2. But Maxell feigns compliance with this rule. As this Court already
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`found, Maxell’s FSIC cited “a large number of undifferentiated source code files and folders
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`insufficiently tied to the accused functionalities without explanation.” Id. at 5. The Court
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`rejected Maxell’s subsequent efforts to delay, and ordered Maxell to serve compliant contentions
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`by March 13. Id. at 6; D.I. 223 at 2-3. What Apple received from Maxell that day, however, still
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`included
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` “source code” charts listing hundreds of file names with no substantive explanation
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`that would help Apple “reasonably discern the accused functionality” among the cited source
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`Case 5:19-cv-00036-RWS Document 293 Filed 04/23/20 Page 4 of 11 PageID #: 10130
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`code files, as the Court’s Order required. See, e.g., Zhou Decl., ¶¶ 6-8.
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`II.
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`LEGAL STANDARD
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`Because Maxell “cho[se] to cite to source code” in this case, it owed Apple “fair notice of
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`the software functionalities that are accused when the citations are read in light of the textual
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`disclosures.” D.I. 204 at 4. While Maxell “may cite to ranges of source code,” the cited code
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`must have “some focus on the accused functionality,” e.g., “where such ranges correspond to
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`some logical descriptor related to claim limitation.” Id. Contentions are insufficiently specific
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`where a party “cites large and undifferentiated ranges of source code from which a defendant
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`could not reasonably discern the accused functionality.” Id. at 5. Citing large, undifferentiated
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`ranges of source code “without explanation” is also a hallmark of insufficiency. Id.
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`Maxell must identify source code “on an element-by-element basis for each asserted
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`claim.” D.I. 204 at 2 (quoting D.I. 42 at 2); see also Michael S Sutton Ltd. v. Nokia Corp., No.
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`6:07CV203, 2009 WL 9051240, at *3 (E.D. Tex. Feb. 13, 2009). Neither the parties nor the
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`Court “should be required to guess which part of the source code citations . . . allegedly infringe
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`each claim element.” Finjan, Inc. v. Check Point Software Techs., Inc., No. 18-CV-02621-
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`WHO, 2019 WL 955000, at *6 (N.D. Cal. Feb. 27, 2019).
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`III. ARGUMENT
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`A. Maxell’s Citation to Undifferentiated Ranges of Source Code Without
`Explanation Does Not Provide Fair Notice of Its Infringement Theories
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`The Court ordered Maxell to remedy deficiencies in its FSIC, but Maxell did not do so.
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`Maxell’s SSIC continue to cite “large and undifferentiated ranges of source code” without any
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`“focus on the accused functionality” and “without explanation.” See D.I. 204 at 4-5.
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`In its first motion on this issue, Apple demonstrated (and the Court agreed) that, as one
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`example, Maxell failed to provide fair notice regarding its infringement theories for the
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`Case 5:19-cv-00036-RWS Document 293 Filed 04/23/20 Page 5 of 11 PageID #: 10131
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` See D.I. 123 at 2; D.I. 204 at 3. But Maxell did not
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`cure this deficiency in response to the Court’s order—
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` But
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`Maxell also cites 10 other files for this limitation. Indeed, for this limitation alone, Maxell’s
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`SSIC cover hundreds of pages of source code and hundreds of functions, and never identify
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`which functions Maxell accuses of infringement, and never
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` To make matters worse, the SSIC even includes a catch-all
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`citation to “[o]ther files similar to those identified . . .” in its claim charts, further obfuscating the
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`source code Maxell actually contends is relevant.
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` But Maxell never explains
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`which part(s) of these 200 pages concern the functionality it believes relates to this limitation.
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` These examples epitomize the deficiencies of the SSIC.
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`Because Maxell “has been able to analyze [Apple’s] source code” for months, it is
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`overdue for Maxell to “provide a more detailed claim chart that shows specifically where each
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`element of every accused device is found.” Sutton, 2009 WL 9051240, at *3. Indeed, Maxell
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`3
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`Case 5:19-cv-00036-RWS Document 293 Filed 04/23/20 Page 6 of 11 PageID #: 10132
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`OUTSIDE ATTORNEYS’ EYES ONLY – SOURCE CODE
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`has shown it is capable of narrowing the portions of these files that it believes are relevant:
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` But Maxell continues to hide the ball by citing the entire 12,000-line, 200-page file for
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`multiple claim limitations in its contentions. Thus, the SSIC do not provide “fair notice of the
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`software functionalities that are accused” of infringement. D.I. 204 at 4.
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`B. Maxell’s Bulk Listing of Source Code Across Multiple Claim
`Elements Does Not Provide Fair Notice of Its Infringement Theories
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`By listing groups of source code files for multiple claim elements, Maxell does not cite
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`source code with any focus on particular claim elements, as it was ordered to do. D.I. 204 at 4-5.
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`In Sutton, the court found contentions that “grouped two limitations together and referenced an
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`exhibit . . . consist[ing] of seven pages of source code” to be deficient because the plaintiff “has
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`not identified where in the seven pages that the individual elements can be found.” 2009 WL
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`9051240, at *2-3.
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`1 That Maxell has dropped claims 3, 5, and 6 does not reduce the breath of the bulk citation.
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`4
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`Case 5:19-cv-00036-RWS Document 293 Filed 04/23/20 Page 7 of 11 PageID #: 10133
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`OUTSIDE ATTORNEYS’ EYES ONLY – SOURCE CODE
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` So instead of citing source code “sufficiently focused to the accused
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`functionality”—as required—Maxell listed “large and undifferentiated ranges of source code”
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`from which Apple cannot “reasonably discern the accused functionality.” D.I. 204 at 5. This
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`leaves Apple “required to guess which part of the source code citations . . . allegedly infringe
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`each claim element.” Finjan, 2019 WL 955000, at *6. Thus, the SSIC fail to provide fair notice
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`of how Maxell intends to rely on the myriad functions in Apple’s source code.
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`C.
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`The Court Should Again Order Maxell To Comply With P.R. 3-1(g), And
`Grant Schedule Relief to Cure Apple’s Prejudice
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`Apple continues to be prejudiced by Maxell’s refusal to disclose compliant infringement
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`contentions. The parties expect to complete most fact depositions in April and opening expert
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`reports are due in two weeks. D.I. 283. Because, Maxell defied the Court’s prior order (and P.R.
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`3-1(g)) by citing large, undifferentiated ranges of source code in its SSIC without explanation,
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`Apple is still in the dark about what functionalities Maxell claims are relevant to the P.R. 3-1(g)
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`“software limitations,”
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` See D.I. 204 at 3.
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`5
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`Case 5:19-cv-00036-RWS Document 293 Filed 04/23/20 Page 8 of 11 PageID #: 10134
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`Apple’s prejudice is now further compounded by COVID-19. D.I. 231 at 3.2 Because
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`Maxell’s SSIC insufficiently link source code functionality to the asserted “software limitations,”
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`and due to travel restrictions and shelter-in-place orders limiting access to Apple’s source code
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`computers, Apple’s experts have not had an opportunity to analyze the cited source code files to
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`even guess at Maxell’s infringement theories. Requiring Apple’s experts to formulate their
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`invalidity opinions and to prepare to rebut Maxell’s experts’ infringement opinions, without the
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`full picture of Maxell’s infringement contentions they are owed and that this Court has already
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`required, is fundamentally prejudicial and would defeat the purpose of the Local Patent Rules: to
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`provide “all parties with adequate notice and information with which to litigate their cases.”
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`Computer Acceleration Corp. v. Microsoft Corp., 503 F. Supp. 2d 819, 822 (E.D. Tex. 2007).
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`Thus, should the Court afford Maxell another opportunity to comply, Apple’s experts should
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`have a reasonable time to review those contentions before their opening expert reports.
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`Accordingly, Apple respectfully requests that the Court: (1) again order Maxell to serve
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`contentions compliant with P.R. 3-1(g) within 10 days, (2) extend the due date of opening expert
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`reports to 30 days after Maxell complies with the Court’s order, and (3) order expedited briefing
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`for any subsequent dispute relating to the sufficiency of Maxell’s third P.R. 3-1(g) contentions.
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`D.
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`In the Alternative, Striking Maxell’s Citations to “Large And
`Undifferentiated Ranges of Source Code” is Warranted
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`Alternatively, Apple respectfully requests that the Court strike Maxell’s citations to any
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`source code file that is seven pages or longer when fully printed. Files longer than that typically
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`exceed 500 lines of code and implement multiple software functions and methods which make it
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`unreasonable for Apple to guess what portions of these lengthy files are relevant to the
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` Yet Apple’s experts continue to be
`without access to the source code computers due to various shelter-in-place orders.
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`Case 5:19-cv-00036-RWS Document 293 Filed 04/23/20 Page 9 of 11 PageID #: 10135
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`limitations for which Maxell cites them. See Sutton, 2009 WL 9051240, at *2-3 (finding
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`contentions deficient because it identifies “seven pages of source code, and [Plaintiff] has not
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`identified where in the seven pages that the individual elements can be found”). Thus, listing
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`files longer than six pages—without any explanation—constitutes citing “large and
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`undifferentiated ranges of source code” in violation of the Court’s Order. See D.I. 204 at 5.
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`Permitting the case to proceed on the current schedule without requiring Maxell to
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`provide compliant contentions would effectively allow Maxell to achieve its goal of hiding the
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`scope of its reliance on source code until expert reports. Having refused to provide Apple fair
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`notice of that code despite multiple opportunities to do so, striking Maxell’s citations to source
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`code files longer than six pages when printed is the only remedy—other than a schedule
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`extension—that would prevent Maxell from ambushing Apple with infringement theories newly
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`disclosed in its expert reports. See Computer Acceleration, 503 F. Supp. 2d at 822.
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`Accordingly, if the Court is not inclined to alter the overall case schedule, Apple
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`respectfully requests the Court to strike from the SSIC citations to all source code files seven
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`pages or longer when that file is fully printed.3 See Zix Corp. v. Echoworx Corp., No. 2:15-CV-
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`1272-JRG, 2016 WL 3410367, at *3 (E.D. Tex. May 13, 2016) (striking deficient contentions);
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`Sutton, 2009 WL 9051240, at *3 (finding seven pages to be unreasonable).
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`IV. CONCLUSION
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`Apple respectfully requests that the Court (1) order Maxell to comply with P.R. 3-1(g)
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`within 10 days and permit Apple 30 days to review those contentions before expert reports, or
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`(2) strike from Maxell’s SSIC cites to source code files seven pages or longer when fully printed.
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`3
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` Thus, precluding Maxell from relying for any purpose on
`certain of its cited source code files would presumably not be fatal to its infringement case.
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`Case 5:19-cv-00036-RWS Document 293 Filed 04/23/20 Page 10 of 11 PageID #: 10136
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`April 20, 2020
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`/s/ Luann L. Simmons
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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
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
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`Marc J. Pensabene (Pro Hac Vice)
`mpensabene@omm.com
`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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`Case 5:19-cv-00036-RWS Document 293 Filed 04/23/20 Page 11 of 11 PageID #: 10137
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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 document via the Court's
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`CM/ECF system per Local Rule CV-5(a)(3) on April 20, 2020.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`CERTIFICATE OF CONFERENCE
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`On April 20, 2020, pursuant to Local Rule CV-7(h), counsel for Defendants met and
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`conferred with counsel for Plaintiff. Subsequent to the meet-and-confer teleconference, counsel
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`for Plaintiff offered to supplement Maxell’s P.R. 3-1(g) contentions only for the
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`limitation at issue in the case. The parties were unable to resolve their disputes, and Plaintiff
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`, but declined to supplement them for any of the other
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`indicated that it opposes the relief sought by this Motion.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`9
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