Case 5:19-cv-00036-RWS Document 302 Filed 04/30/20 Page 1 of 11 PageID #: 10230
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`Plaintiff,
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`Defendant.
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`MAXELL, LTD.’S OPPOSITION TO 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 302 Filed 04/30/20 Page 2 of 11 PageID #: 10231
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`Maxell has not evaded its duty to provide compliant contentions. Although Apple claims
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`it was “owed” P.R. 3-1(g) contentions since last September, that is not so. A plaintiff need not
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`comply with P.R. 3-1(g) “until 30 days after source code” is produced. D.I. 42 at ¶ 3(a). The Court
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`acknowledged that Apple did not trigger P.R. 3-1(g) supplementation until February, holding:
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`“Maxell’s 30-day deadline began to run on February 12, 2020.” D.I. 204 at 5. Thus, Maxell served
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`P.R. 3-1(g) contentions on March 13, 2020 that were significantly narrowed from its First
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`Supplemental Infringement Contentions (FSIC) and fully compliant the Court’s Order and rules.
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`Apple’s claims of prejudice are unsupported. Whereas Apple’s counsel argues it cannot
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`“reasonably discern the accused functionality” from Maxell’s contentions,
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`. Siddiqui Decl. at ¶2. Regardless, to the extent there is any prejudice, it is
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`not from a lack of specificity in Maxell’s Second Supplemental Infringement Contentions (SSIC).
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`Rather, it is the result of Apple’s discovery tactics and adherence to rigid source code restrictions.
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`Apple controlled the deadline for Maxell’s P.R. 3-1(g) supplementation, as it was Apple’s
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`completion of source code production that triggered the event. Had Apple produced all relevant
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`code earlier (as Maxell requested), Maxell would have served its supplementation earlier.1 Apple’s
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`complaint that its experts cannot analyze the cited code is also self-created. Apple has had Maxell’s
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`infringement theories since June 2019 and was given insight into the code Maxell may rely on in
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`October 2019. If Apple chose to wait until the end of fact discovery to have its experts begin code
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`review, Apple should be the party to suffer the consequences. This is particularly true in view of
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`the fact that Apple could take steps to work around the current code review restrictions in view of
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`COVID-19, as suggested by Judge Gilstrap,2 but has chosen not to.
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`1 Apple continued its production of source code and documents after Maxell’s SSICs. Siddiqui Decl. at ¶ 3. Code for
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`2 “[P]andemic conditions may require production of computer source code in ways that are not consistent with the
`producing party’s normal security protocols.” Standing Order Regarding Pretrial Procedures During COVID-19.
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`Case 5:19-cv-00036-RWS Document 302 Filed 04/30/20 Page 3 of 11 PageID #: 10232
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`Apple’s requested relief reveals that the true motive behind the instant motion is the same
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`as many of Apple’s other motions: delay of trial. Apple waited more than a month after Maxell
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`served its SSICs before bringing this motion. And when the parties met and conferred to discuss
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`it, Apple would only identify a single example of deficiency. Although Maxell did not agree it was
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`necessary, Maxell offered to provide more detail with respect to that single example to avoid
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`motions practice.3 But Apple declined as it would then be without a basis on which to seek delay.
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`I.
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`Maxell’s SSICs are Significantly and Sufficiently Focused and Compliant
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`Apple’s motion amounts to a renewed demand for pinpoint citations, or at least citations
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`meeting the level of detail required for expert reports or motions for summary judgment on
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`infringement. Such detail is not required. This Court held the rules do “not require pinpoint
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`citations to source code in every case…. Plaintiff may cite to ranges of source code, even broad
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`ranges that include non-accused functionality, so long as that range has some focus on the accused
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`functionality and the defendant is fairly put on notice.” D.I. 204 at 4. “[W]hen a plaintiff cites large
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`and undifferentiated ranges of source code from which a defendant could not reasonably discern
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`the accused functionality, the contentions are insufficiently specific.” Id.; see also D.I. 145 at 1.
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`Maxell heeded the Court’s directive to provide focused source code citations. It narrowed
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`the source code cited in its FSICs from thousands of pages of source code files to just 70 pages.
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`More specifically, Maxell’s original contentions provided an overview of its infringement theories
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`in a cover document, which were expanded upon in appended claim charts that contained a textual
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`description and explanation of the accused functionalities for each accused claim element based
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`on documentary evidence including, e.g., screenshots of accused products, listings of components,
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`3 To the extent Apple argues that this demonstrates Maxell could further narrow its citations, Maxell does not deny
`the possibility in expert reports. Maxell’s experts have been diligently working on their reports and developing their
`detailed opinions. But infringement contentions are not required to provide the same level of detail as such reports.
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`Case 5:19-cv-00036-RWS Document 302 Filed 04/30/20 Page 4 of 11 PageID #: 10233
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`and/or Apple webpages. In its SSICs, Maxell added a reference to these charts, for each applicable
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`claim element, to a separate Sub-Appendix wherein Maxell identified the narrowed source code
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`files with paths applicable to the claim element. The detailed listing of code was broken down by
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`element and operating system or, where appropriate hardware/firmware. Although Apple asserts
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`these Sub-Appendices were not enough to render Maxell’s contentions compliant, an actual review
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`of the issues raised by Apple demonstrates otherwise.
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`’493 Patent. Maxell narrowed its identification of source code for element 5(e) from over
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`650 source code files to ten. Moreover,
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`. Maxell performed similar narrowing for element 5(d).
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`Apple’s argument that Maxell never identifies accused functions or explains how the
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`processing functions relate to the accused functionality of “mixing or culling signal charges”
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`completely ignores the textual disclosures in Maxell’s contentions, which the Court held must be
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`taken into account. D.I. 204 at 4 (“[S]ource code citation must provide a defendant with fair notice
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`of the software functionalities that are accused when the citations are read in light of the textual
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`disclosures.”). As to the “mixing and culling” element of 5(e), Maxell points to just one infringing
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`functionality—downsampling (or “downscaling”) of image data—in its contentions:
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`Upon information and belief the displayed image is a downsampled/culled version of
`the image on the sensor, or the array of pixels from the area of the image sensor
`selected for read-out….
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`Siddiqui Decl. at ¶4 (discussing claim 5(e)). Maxell initially provided evidence of such
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`downsampling/downscaling through actual operation of the phone and evaluation of camera
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`modules by demonstrating how in preview mode (“monitoring mode”) the resolution of the image
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`being rendered is scaled down from the total number of pixels in the image sensor, and
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`supplemented its contentions to provide detailed evidence through a small number of source code
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`Case 5:19-cv-00036-RWS Document 302 Filed 04/30/20 Page 5 of 11 PageID #: 10234
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`files. Given the singular identification of downsampling/downscaling, non-source code evidence,
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`and small number of code files cited, no guessing is required to discern the accused functionalities.
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`Further, for 19 Accused Products executing seven versions of operating systems, Maxell has
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`printed a mere 20 pages of source code, which provides a preview of Maxell’s infringement expert
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`report.4 These small excerpts, which show
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`provide expert-report level detail. This makes it clear that Apple is not actually seeking a narrowing
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`in order to understand Maxell’s theories, but rather wants pinpoint, expert-report-level citations in
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`advance of expert reports (or, more likely, to create an imaginary deficiency for delay purposes).5
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`Claim element 5(d) of the ’493 Patent requires that accused products use “all signal charges
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`accumulated in all N number of vertically arranged pixel lines” when recording an image in static
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`image mode. In its infringement contentions, Maxell has set forth only one infringement theory,
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`i.e., the recording of still pictures at certain resolutions:
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`the [accused products] each use N number ([e.g.], 3024 or fewer) pixel lines when
`recording images in static mode…. In other words, in these examples at one
`orientation, the [accused products] each capture still images that have 3024 vertically
`arranged pixel lines, using all of the vertically arranged pixel lines (N) available for
`static image capture in these products’ 12MP image sensing device.
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`Siddiqui Decl. at ¶5 (discussing claim 5(d)). Maxell even provided screenshots showing the
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`recording of the image, and the source code files simply, clearly, and precisely correspond to this
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`accused functionality of recording still pictures with certain resolutions.
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`’794 Patent. If Apple has any issues discerning the accused functionality, it is (again)
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`4 It is not appropriate to limit Maxell’s reliance on code to the printed excerpts. Because of tight printing restrictions
`for the code, Maxell could not print out all relevant code, but rather had to choose representative examples.
`5 This is further evidenced by a recent letter wherein Apple objected to printing of code from a file Apple states was
`not identified in the SSICs. Id. at ¶10. Apple clearly seeks to compel Maxell to identify specific source code in
`hopes that it can both preview expert opinion and later limit Maxell’s experts to the specified code. But, that a
`particular “code file was not cited in… infringement disclosures does not automatically preclude [use of the file] to
`support a theory that was timely disclosed.” Oracle America, Inc. v. Google Inc., No. 10-cv-3261, 2011 WL
`4479305, at *3 (N.D. Cal. Sept. 26, 2011). Apple’s attempt to prematurely limit Maxell’s case is improper.
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`Case 5:19-cv-00036-RWS Document 302 Filed 04/30/20 Page 6 of 11 PageID #: 10235
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`because Apple is improperly ignoring the textual descriptions in Maxell’s contentions. For claim
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`1(f), Maxell again identifies one theory of infringement related to the display: “As another example
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`of a function device that receives a power consumption reduction instruction, the iPhone XS’s
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`display screen dims upon entering low-power mode.” Id. at ¶6 (emphasis added). With this theory
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`stated, Apple is not left to “guess” what may be relevant from the “
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`” file. And again, to
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`the extent any clarity was needed, Apple could refer to the representative code printed from the
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`file (to which Apple even cites in its Motion), which is directed to
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`, for expert-
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`report level detail. There is no question that Apple is on notice of the accused functionality.
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`Feigned ignorance does not entitle Apple to early expert discovery or delay of the case.
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`’317/’999/’498 Patents. Apple’s claimed confusion with respect to “
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`particularly surprising. As the name suggests, the file
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`” is
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`For each claim where this file is cited, Maxell’s contentions include a screenshot of the relevant
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`view of the Maps application. Thus, if Maxell’s textual description and screenshots of the accused
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`functionality are read together with the cited code files, it is clear what functionality (and what
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`views) Maxell is accusing for each claim element. Again, no guessing on Apple’s part is necessary.
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`Treatment of Claim Elements Together. Although Maxell’s contentions address each
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`element separately, given the overlapping nature of many elements, it was appropriate for Maxell
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`to consider some elements together in the Sub-Appendices. The overlap is largely due to nearly
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`identical claim language that predictably relies on the same evidence to establish infringement,
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`such as claims 1(d) and 5(e) and 10(f) of the ’493 Patent, which are each directed to the mixing or
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`culling signal charges/pixel lines. Siddiqui Decl. at ¶7. In others, such as the elements for which
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`“
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`” was cited in connection with the ’317, ’999, ’498 Patents and the example set
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`forth by Apple for the ’794 Patent (Mot. at 4), the claim elements are directed to very similar
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`Case 5:19-cv-00036-RWS Document 302 Filed 04/30/20 Page 7 of 11 PageID #: 10236
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`functionality. To the extent different portions of the file may be relied upon to establish
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`infringement of different elements, the textual description provided in the contentions (which
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`address each element separately) sets forth the detail necessary to determine the portion of the
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`cited file relied on for each element. This is clear from the discussion of “
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`” above.
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`There is no indiscriminate grouping as claimed by Apple.
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`II.
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`There is No Basis for Apple’s Requested Relief
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`Apple’s requested relief is incommensurate with its motion (not surprising given Apple’s
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`true motivations). Apple requests a 30 day extension for all expert reports, including its invalidity
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`report. But Apple’s motion has no bearing on invalidity. Further, Apple’s motion only addresses
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`five asserted patents, yet it seeks an extension for deadlines for all patents and seeks to preclude
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`Maxell from relying on source code in support of its infringement claims for all patents.
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`At bottom there is no basis for any of the requested relief. When questioned in depositions
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`regarding certain source code projects, which are even higher level than the files cited in the SSICs,
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`. Siddiqui Decl. at ¶2.
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`the purpose of Apple’s initial Motion to Compel on this issue and completely contradicts Apple’s
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`current position. Apple has raised delay requests many times recently, both before the Court and
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`with Maxell. This is just another attempt to delay trial. But this motion warrants delay no more
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`than any other request Apple has made. The orders governing this case have always had 1) P.R. 3-
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`1(g) supplementation following completion of source code production by 30 days, and 2) expert
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`reports following the close of fact discovery by a week. See D.I. 42, 46. Despite knowing the
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`schedule, Apple nevertheless chose to wait until the final weeks of discovery to (nearly) complete
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`Case 5:19-cv-00036-RWS Document 302 Filed 04/30/20 Page 8 of 11 PageID #: 10237
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`its production (over the objection of Maxell) and trigger supplementation.6 Apple cannot now point
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`to its own choices and claim it has been prejudiced to the point that a delay is necessary.
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`While the challenges presented by COVID-19 were unforeseen, it was and still is within
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`Apple’s power to address them. Yet, Apple waited for Maxell to make detailed proposals for
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`source code review. Maxell offered solutions that would work for all parties and experts (e.g.,
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`remote review through a third party or Apple’s internal systems),7 but Apple opted for a different
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`proposal by Maxell and instead made code available at a third-party facility near Maxell’s counsel
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`(at Maxell’s expense). Though inconvenient, Maxell is making this solution work for it, and Apple
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`could have and still could proceed in a similar manner – though with far more flexibility given
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`these are its own experts. However, instead Apple has simply chosen to do nothing.
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`Apple’s alternative request to strike reliance on any file that is seven pages or longer when
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`printed is arbitrary and unwarranted.8 There is no rule that files over seven pages constitute “large
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`and undifferentiated ranges of source code.”9 Indeed, the fact that this discussion revolves around
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`singular files demonstrates otherwise. Moreover, contrary to Apple’s assertion, Maxell does not
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`cite any code “without any explanation.” Maxell provides thousands of pages of textual
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`descriptions of its infringement theories which, if actually read by Apple, elucidates what source
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`code is being relied upon. Though it is worth noting, again, that Apple’s engineers did not even
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`need such descriptions.
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`Apple’s motion lacks merit and should be denied in full.
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`6 Of course, Apple’s experts could have been reviewing code all along, particularly since Maxell served its FSICs in
`October 2019. After all,
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`7 When Maxell inquired into the use of internal systems,
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`. Id. at ¶9.
`8 Infringement contentions are to provide adequate notice of a plaintiff’s theories of infringement not to restrict or
`preclude use of evidence at trial. It would be extremely prejudicial to utilize infringement contentions in this way.
`9 Although not clear from the opinion, in Sutton, relied upon by Apple, it appears the Court was addressing a seven
`page code file listing rather than an actual string of source code. Sutton Ltd. v. Nokia Corp., WL 9051240, at *3.
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`Case 5:19-cv-00036-RWS Document 302 Filed 04/30/20 Page 9 of 11 PageID #: 10238
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`Dated: April 28, 2020
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`By:
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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 302 Filed 04/30/20 Page 10 of 11 PageID #: 10239
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`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 302 Filed 04/30/20 Page 11 of 11 PageID #: 10240
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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 28th 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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