Case 5:19-cv-00036-RWS Document 312 Filed 05/04/20 Page 1 of 5 PageID #: 10330
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`
`
`v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`Case No. 5:19-cv-0036-RWS
`
`
`JURY TRIAL DEMANDED
`
`
`
`MAXELL, LTD.’S OPPOSED MOTION FOR LEAVE TO FILE A SUR-REPLY IN
`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
`
`
`Plaintiff Maxell, Ltd. (“Maxell”), through undersigned counsel, respectfully submits this
`
`Opposed Motion for Leave to file a Sur-Reply, filed simultaneously herewith, in Opposition to
`
`Apple Inc.’s (“Apple”) 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. (D.I. 284).
`
`There is good cause for Maxell’s proposed filing of its Sur-Reply at this time. With respect
`
`to motions to compel, reply briefing is generally not permitted. See Standing Order Regarding
`
`“Meet and Confer” Obligations Relating to Discovery Disputes at ¶1. The Court, however, ordered
`
`that Apple may file a reply brief in support of its motion. D.I. 287. Although not explicitly stated
`
`in the Court’s Order, it appears that reply briefing may have been permitted to enable Apple to
`
`respond to Maxell’s Opposition in lieu of a response that would typically be made at an in-person
`
`hearing on the motion. Assuming that is correct, and Maxell will not be permitted to address
`
`Apple’s Reply at a hearing, Maxell submits that it should be provided an equal opportunity to
`
`

`

`Case 5:19-cv-00036-RWS Document 312 Filed 05/04/20 Page 2 of 5 PageID #: 10331
`
`
`respond to the arguments raised in Apple’s Reply. Maxell specifically seeks to file a Sur-Reply of
`
`5 pages, which is equal in length to the Reply filed by Apple (D.I. 306). Maxell further notes that
`
`it is submitting its proposed Sur-Reply prior to the parties’ filing of a joint report regarding the
`
`results of their meet and confer. D.I. 287. Thus, consideration of Maxell’s Sur-Reply would not
`
`require any enlargement of the time set by the Court for consideration of Apple’s motion and does
`
`not disturb Apple’s request for expedited treatment.
`
`Maxell’s proposed Sur-Reply is further warranted by the fact that Apple’s motion is not
`
`merely a motion to compel, but also contains a request for an extension that, based on the timing
`
`of its motion, would likely result in 1) Apple being given additional time to prepare a rebuttal to
`
`Maxell’s infringement expert report and 2) an extension of the case schedule that would delay trial.
`
`In the alternative, Apple requests the sanction that Maxell be precluded from relying on portions
`
`of source code (which Apple has called “the most complete and accurate representation of how
`
`accused Apple Products actually work” (see D.I. 210 a 4)) to support its allegations of
`
`infringement. Maxell deserves the opportunity to be heard prior to being subject to such a sanction.
`
`Maxell’s proposed Sur-Reply is also necessary in order to address arguments specifically
`
`addressed by Apple for the first time in its Reply, including arguments regarding at least 1) the
`
`sufficiency of Maxell’s textual descriptions in its infringement contentions, 2) the impact of the
`
`infringement contentions on Apple’s invalidity expert reports, and 3) the understanding of cited
`
`source code by Apple engineers. Furthermore, Maxell’s proposed Sur-reply is necessary to afford
`
`Maxell the opportunity to discuss Apple’s newly identified approach to source code review, which
`
`is directly relevant to its claims of prejudice, that was disclosed by Apple on May 1, 2020—after
`
`the filing of Maxell’s Opposition (but prior to Apple’s Reply).
`
`
`
`2
`
`

`

`Case 5:19-cv-00036-RWS Document 312 Filed 05/04/20 Page 3 of 5 PageID #: 10332
`
`
`In view of the foregoing, Maxell submits that good cause exists to grant it leave to file the
`
`proposed Sur-Reply to its Opposition.
`
`
`
`Dated: May 4, 2020
`
`
`
`
`
`By:
`
`/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
`
`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`Baldine B. Paul
`Tiffany A. Miller
`Saqib Siddiqui
`Bryan 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
`
`
`
`3
`
`

`

`Case 5:19-cv-00036-RWS Document 312 Filed 05/04/20 Page 4 of 5 PageID #: 10333
`
`
`
`Robert G. Pluta
`Amanda S. Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`
`Counsel for Plaintiff Maxell, Ltd.
`
`
`
`4
`
`

`

`Case 5:19-cv-00036-RWS Document 312 Filed 05/04/20 Page 5 of 5 PageID #: 10334
`
`
`CERTIFICATE OF CONFERENCE
`
`I hereby certify that Plaintiff Maxell, Ltd. has complied with the requirements of Local
`Rule CV-7(h) governing this case. Specifically, lead and local counsel for the parties discussed
`this request on a telephone conference held May 4, 2020. Apple’s counsel indicated that Apple
`would oppose the motion.
`
`
`
`/s/ Jamie B. Beaber
`Jamie B. Beaber
`
`
`
`
`
`/s/ Geoff Culbertson
`Geoff Culbertson
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 4th day of May, 2020, with a copy of this document via the
`Court’s CM/ECF system per Local Rule CV-5(a)(3).
`
`
`/s/ Jamie B. Beaber
`Jamie B. Beaber
`
`
`
`
`
`
`
`
`
`
`
`