Case 5:19-cv-00036-RWS Document 304 Filed 05/01/20 Page 1 of 8 PageID #: 10251
`
`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.,
`
`Defendant.
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`APPLE INC.’S REPLY IN SUPPORT OF ITS
`MOTION TO COMPEL LICENSING AND
`NEGOTIATION DOCUMENTS AND FOR SANCTIONS
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 304 Filed 05/01/20 Page 2 of 8 PageID #: 10252
`Case 5:19-cv-00036-RWS Document 304 Filed 05/01/20 Page 2 of 8 PageID #: 10252
`
`Maxell’s Opposition reduces to an rulsupported argument—directly contradicted by
`
`record evidence—that Maxell does not have a relationship with Hitachi.1 Confronted with the
`
`extensive record that Apple presented in its opening brief, Maxell’s opposition resorted to
`
`disavowing its own 30(b)(6) testimony. obfuscating critical facts about Maxell and Hitachi’s
`
`current relationships in footnotes, and arguing that Maxell’s relationship with Hitachi is limited
`
`to certain subsidiaries. certain employees, and certain types of obligations.
`
`I.
`
`Maxell’s Rule 30(b)(6) corporate designee plainly testified that:
`
`
`
`1 This brief refers to Hitachi, Ltd. as “Hitachi,” Hitachi Industly Control Solutions as “Hitachi
`ICS,” Hitachi Consumer Electronics C0., Ltd. as “HCE,” and combinations of more than one
`Hitachi subsidiary as “Hitachi subsidiaries.”
`
`

`

`Case 5:19-cv-00036-RWS Document 304 Filed 05/01/20 Page 3 of 8 PageID #: 10253
`
`
`Maxell offers no support for this narrow interpretation, contradicted by its sworn testimony. And
`
`Maxell never explains why Hitachi would refuse to hand over documents about patents it gave to
`
`Maxell to assert where Hitachi and its subsidiaries have repeatedly offered their help and
`
`
`
`
`
`employee’s testimony to assist Maxell in this litigation.
`
`
`
`
`
`
`
`
`
` Tellingly, neither Maxell’s corporate witness nor counsel previously claimed such
`
`a limit.
`
`
`
`
`
`
`
`letter it sent to Hitachi requesting documents was characterized as “a courtesy to Apple,” an
`
` Finally, Maxell never explains why the carefully worded
`
`entity to whom Hitachi owes no contractual obligation. D.I. 166-2.
`
`
`
`
`
`
`
`II. Maxell’s Selective Production Of Licenses Based on Sword-And-Shield Tactics
`
`While Maxell previously alleged it had “produced all prior licenses of which it was aware
`
`and had control,” D.I. 166 at 6, Maxell does not appear to deny that it actually has the licenses
`
`Apple seeks, D.I. 280 at 6 (alleging that, of the requested documents, Maxell only does not have
`
`the “earlier sales negotiation materials”). Documents that show Hitachi (or Maxell) exhausted
`
`the patent rights Maxell now asserts or that show Hitachi (or Maxell) previously licensed the
`
`2
`
`

`

`Case 5:19-cv-00036-RWS Document 304 Filed 05/01/20 Page 4 of 8 PageID #: 10254
`
`
`patents are relevant to Apple’s claims and defenses. Maxell should be ordered to produce them.
`
`III. Maxell And Hitachi’s Relationship Is Much Deeper Than Maxell Is Willing To Admit
`
`Hitachi is not an unrelated third party to this case.
`
`
`
`relationship is only with certain Hitachi subsidiaries and that each witness chose to participate,
`
`implying they personally desired to travel more than 20 hours for the sole purpose of being
`
` Maxell’s argument that its
`
`deposed, is not credible.
`
` Indeed, some Hitachi subsidiaries’ employees testified for Maxell because of their
`
`
`
`
`
`employers’ relationships with Maxell.
`
`
`
`
`
`
`
` Maxell’s
`
`
`
`
`
`
`
`only rebuttal is to point out that Mr. Takizawa probably would not be fired for failure to attend
`
`and Mr. Nakano had the option to say no. D.I. 280 at 3‒4. Maxell’s rebuttals rely on the
`
`misconception that jobs are mere checklists of tasks to avoid being fired.
`
`Maxell implies that the witnesses personally desired to fly to the U.S. to be deposed. But these
`
`
`
`depositions are not personal travel.
`
`
`
`
`
`3
`
`

`

`Case 5:19-cv-00036-RWS Document 304 Filed 05/01/20 Page 5 of 8 PageID #: 10255
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Companies with the separation that Maxell alleges exists between
`
`it and Hitachi do not reimburse each other’s employees’ business expenses. Maxell’s only
`
`response is the conclusory statement that reimbursement “does not establish Hitachi involvement
`
`in the litigation or any arrangement with Hitachi related to the case.” D.I. 280 at 4.
`
`
`
`
`
`
`
`Maxell prepared Hitachi witnesses for their depositions and gave them counsel. Maxell
`
`orchestrated the six witnesses’ depositions and preparation, and Maxell personnel and counsel
`
`prepared the witnesses and Maxell’s counsel represented them. Ex. D1 at 93:11‒19; Ex. D2.
`
` But this fact shows that Hitachi treats its employees and its subsidiaries’
`
`employees like one and the same. Even Maxell falls under this umbrella.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Maxell tries to argue this merely shows a relationship between
`
`Maxell and Hitachi ICS, but Maxell never answers how Maxell and Hitachi ICS are related if not
`
`4
`
`

`

`Case 5:19-cv-00036-RWS Document 304 Filed 05/01/20 Page 6 of 8 PageID #: 10256
`
`
`through Hitachi, Hitachi ICS’s parent and Maxell’s former parent and current shareholder.
`
`IV. Maxell Shared Privileged Information With Mr. Matsuo, A Hitachi Employee
`
`Maxell’s Opposition admits that “[Mr. Matsuo] held Maxell confidential and privileged
`
`information.” D.I. 280 at 6-7. But Mr. Matsuo is an employee of Hitachi—not Maxell. Thus,
`
`Maxell has either waived privilege by sharing it with Mr. Matsuo, or Maxell and Hitachi are so
`
`close that they continue to share common interest in the Asserted Patents. In any event, Maxell
`
`does not dispute that Apple followed Maxell’s (now disavowed) instructions in seeking to
`
`depose Mr. Matsuo. D.I. 254 at 6-7.
`
`
`
` it was obligated to correct its disclosures “in a timely
`
`manner.” Fed. R. Civ. P. 26(e)(1)(A). Maxell’s claim that Apple delayed in seeking his
`
`deposition ignores that Apple was justified in relying on Maxell’s instructions: Maxell made
`
`available six other employees of Hitachi and its subsidiaries for depositions in February.
`
`Maxell’s failure to procure Mr. Matsuo or update his contact information ensured that only
`
`Maxell could obtain Hitachi’s testimony.
`
`V.
`
`Sanctions Are Necessary To Correct The Prejudice Caused By Maxell
`
`Maxell’s opposition exposes its duplicity. Maxell argues that it has not received any
`
`materials from Hitachi other than “inventor testimony.” D.I. 280 at 7. But Maxell also argues that
`
`the “inventor testimony” was not from Hitachi and that it came voluntarily from the individual
`
`witnesses. Id. at 5. Maxell also says it provided all “relevant” information in its possession,
`
`custody, or control. Id. at 7. But Maxell tellingly excludes licenses from documents “it does not
`
`have.” Id. at 6. The tact that Maxell has taken has denied Apple from receiving discovery to
`
`which it is entitled, including Mr. Matsuo’s deposition and Hitachi licenses to the asserted patents,
`
`so Maxell should be precluded from relying on any documents that originated from Hitachi and
`
`testimony from any Hitachi or Hitachi subsidiary witnesses. See D.I. 254 at 7.
`
`5
`
`

`

`Case 5:19-cv-00036-RWS Document 304 Filed 05/01/20 Page 7 of 8 PageID #: 10257
`
`
`April 28, 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 304 Filed 05/01/20 Page 8 of 8 PageID #: 10258
`Case 5:19-cv-00036-RWS Document 304 Filed 05/01/20 Page 8 of 8 PageID #: 10258
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that all c01msel of record who are deemed to have
`
`consented to electronic service are being served with a copy of this docmnent via the Court's
`
`CM/ECF system per Local Rule CV—5(a)(3) on April 28, 2020.
`
`/s/ Melissa R. Smith
`
`Melissa R. Smith
`
`