Case 5:19-cv-00036-RWS Document 296 Filed 04/27/20 Page 1 of 8 PageID #: 10186
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`
`
`Plaintiff
`
`Civil Action NO. 5:19-cv-00036-RWS
`
`v.
`
`APPLE INC.,
`
`
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`Defendant.
`
`
`
`APPLE INC.’S REPLY IN SUPPORT OF ITS
`MOTION FOR PROTECTIVE ORDER (D.I. 228)
`
`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`
`
`Plaintiff
`
`Civil Action NO. 5:19-cv-00036-RWS
`
`v.
`
`APPLE INC.,
`
`
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`Defendant.
`
`
`
`APPLE INC.’S REPLY IN SUPPORT OF ITS
`MOTION FOR PROTECTIVE ORDER (D.I. 228)
`
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 296 Filed 04/27/20 Page 2 of 8 PageID #: 10187
`
`
`
`Notwithstanding the unique challenges presented by COVID-19, Apple has diligently
`
`scheduled, prepared, and offered the depositions of 17 fact witnesses regarding more than 50 of
`
`the 84 topics in Maxell’s Rule 30(b)(6) notice. Despite the problems with the topics in this
`
`motion, Maxell’s rapidly diminishing deposition time, the impending date of opening expert
`
`reports, and the further depositions that these topics would necessitate, Maxell refuses to drop the
`
`remaining topics in dispute. And its suggestion that the proper time to resolve these disputes is
`
`only after depositions have concluded, D.I. 242 at 2, ignores relevant case law and all but ensures
`
`untimely motion practice that threatens the schedule. A protective order remains warranted.
`
`I.
`
`Maxell Admits That the Information It Seeks From
`Topics 1, 3, and 8 Is Not Self-Evident, But Refuses To Clarify
`
`Maxell does not dispute that Topics 1, 3, and 8 seek corporate testimony about the same
`
`information that Apple already provided in its interrogatory responses:
`
`
`
`
`
`
`
`
`
`. While Maxell asserts it is not asking witnesses to “memorize” that
`
`information, it nonetheless demands witnesses so it can “clarify and follow-up on” information
`
`that is “not self-evident” from Apple’s interrogatory responses. D.I. 242 at 1. In the run-up to
`
`this motion, Apple sought clarification from Maxell: tell us what you want to clarify / follow-up
`
`on about these responses so we can investigate and consider preparing a witness, but Maxell
`
`refused. If what Maxell wants to clarify is “not self-evident” from the responses, and Maxell
`
`refuses to say, Apple cannot be expected to read minds.
`
`Recognizing the absurd breadth of these topics as written, Maxell now purports to seek
`
`testimony about a “
`
`.” D.I. 242 at 2.
`
`1
`
`
`
`Case 5:19-cv-00036-RWS Document 296 Filed 04/27/20 Page 3 of 8 PageID #: 10188
`
`
`
`
`
`
`
` Maxell refuses to identify more than just a single example of the information it
`
`might seek. D.I. 242 at 1. Its suggestion that the parties take up the issue only after deposition
`
`are over make evident that Maxell is more interested in generating post-deposition motion
`
`practice rather than genuinely seeking clarity. Because Maxell is unwilling to identify the “not
`
`self-evident” subject matter of its inquiry, a protective order is warranted.
`
`II.
`
`Topics 4, 7, 29, and 58 Still Lack Reasonable Particularity
`
`Through these topics Maxell seeks Apple’s testimony as to
`
`
`
`
`
`
`
` Maxell does not dispute it has not identified
`
`any specific components for which it seeks this information,
`
` Maxell further claims it has narrowed the topic to communications concerning “
`
`D.I. 242 at 3.
`
`
`
`Topic 7 seeks
`
`
`
`
`
`
`
`.”
`
`
`
`
`
`
`
`
`
`. Maxell says it wants testimony on “
`
`
`
`s,” D.I. 242 at 3, but omits that Apple
`
`has already agreed to provide such testimony in response to Topic 6.
`
`2
`
`
`
`Case 5:19-cv-00036-RWS Document 296 Filed 04/27/20 Page 4 of 8 PageID #: 10189
`
`
`
`
`
`
`
`
`
`
`
`topic, Apple is already providing responsive information within the scope of Topic 7 in response
`
`. Thus, to the extent Maxell has narrowed the
`
`to Topic 6 and no additional information is needed.
`
`III. Topics 38 and 41 Improperly Seek Discovery About
`Discovery and Maxell’s Response Attacks a Strawman
`
`Maxell does not dispute that numerous courts have rejected Maxell’s open-ended topics
`
`seeking discovery-on-discovery. D.I. 228 at 4-5. Rather, Maxell strikes at a strawman.
`
`
`
`
`
`
`
` Given the volume of Apple’s productions—
`
`—Maxell’s demand
`
`that Apple make additional witnesses available for the sole purpose of testifying about Apple’s
`
`extensive efforts to address Maxell’s myriad, unreasonable discovery demands has no bearing on
`
`any substantive issues in this case and exemplifies Maxell’s strategy of manufacturing discovery
`
`disputes over obtaining substantive discovery. Id. at 5. Maxell already filed a now-largely-
`
`denied motion to compel, and its “meandering attempt to prove defendant’s noncompliance with
`
`its discovery obligations” at this time should be rejected. Id.
`
`IV.
`
`Topics 39 and 56 Seek Common Interest Privileged Communications
`
`Common interest privilege shields communications between a defendant like Apple and
`
`its potential-co-defendant suppliers where there is a palpable fear of litigation. D.I. 228 at 5-6.
`
`A “palpable threat” of litigation does not require each third party to “contemplate a specific
`
`3
`
`
`
`Case 5:19-cv-00036-RWS Document 296 Filed 04/27/20 Page 5 of 8 PageID #: 10190
`
`
`
`product that could infringe.” Power-One, Inc. v. Artesyn Techs., Inc., No. CIV A 205CV463,
`
`2007 WL 1170733, at *2 (E.D. Tex. Apr. 18, 2007) (explaining that a “joint effort to develop a
`
`shared protocol for the facilitation of product development” justifies common interest privilege).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` And Maxell does not refute that the dispute about the scope of
`
`licenses to Apple’s suppliers gives rise to a common interest privilege. D.I. 228 at 6.
`
`Lastly, Maxell’s suggestion that it needs this discovery to police its third-party subpoenas
`
`(now after the close of fact discovery) does not justify invading this privilege. Maxell’s own
`
`exhibits show that such disputes have been resolved as “part of the general discovery meet-and-
`
`confer process without the need for formal ‘discovery-on-discovery’ requests.” D.I. 228 at 4-5.
`
`V.
`
`Topic 63 Improperly Seeks Apple’s Legal
`Contention and Maxell’s Response Attacks a Strawman
`
`Topic 63 seeks testimony concerning “
`
`.” Maxell once again
`
`attacks a strawman.
`
`
`
`
`
`
`
` But Apple objected to
`
`Maxell’s demand that its fact witnesses respond to hypothetical, opinion questions about
`
`4
`
`
`
`Case 5:19-cv-00036-RWS Document 296 Filed 04/27/20 Page 6 of 8 PageID #: 10191
`
`
`
`viability, feasibility, or commercial acceptability beyond the existing knowledge of the company.
`
`
`
`
`
`
`
` Apple should not be required to prepare a fact witness to provide opinions about
`
`analyses that Apple has not conducted on its own. This squarely is expert testimony.
`
`VI.
`
`Topics 78, 79, and 80 Are Overbroad and Seek Irrelevant Information
`
`Maxell does not refute the breath of topics 78 and 79, seeking “
`
`
`
`
`
`that these topics are justified because Apple has promulgated similar topics ignores the disparity
`
`.” D.I. 228 at 6-7. Maxell’s suggestion
`
`in the scope of the topics. Id.
`
`relevance these topics might provide does not justify Maxell’s scorched-earth approach.
`
`. Id. Whatever marginal
`
`Topic 80 likewise seeks “
`
`n.”
`
`
`
`
`
`
`
`
`
`
`
`Apple respectfully requests that the Court grant a protective order on topics 1, 3, 4, 7, 8,
`
`29, 38, 39, 41, 56, 58, 63, 78, 79, and 80.
`
`5
`
`
`
`Case 5:19-cv-00036-RWS Document 296 Filed 04/27/20 Page 7 of 8 PageID #: 10192
`
`
`
`April 22, 2020
`
`
`
`
`
`
`
`/s/ Luann L. Simmons
`
`
`
`
`
`Luann L. Simmons (Pro Hac Vice)
`lsimmons@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center
`28th Floor
`San Francisco, CA 94111
`Telephone: 415-984-8700
`Facsimile: 415-984-8701
`
`Xin-Yi Zhou (Pro Hac Vice)
`vzhou@omm.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
`
`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
`
`Melissa R. Smith (TX #24001351)
`melissa@gilliamsmithlaw.com
`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`
`Attorneys for Defendant Apple Inc.
`
`
`
`6
`
`
`
`Case 5:19-cv-00036-RWS Document 296 Filed 04/27/20 Page 8 of 8 PageID #: 10193
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that all counsel of record who are deemed to have
`
`consented to electronic service are being served with a copy of this document via the Court's
`
`CM/ECF system per Local Rule CV-5(a)(3) on April, 22, 2020.
`
`
`
`
`
`
`
`
`
`
`
`/s/ Melissa R. Smith
`Melissa R. Smith
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
