Case 5:19-cv-00036-RWS Document 318 Filed 05/06/20 Page 1 of 8 PageID #: 10375
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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 REPLY IN SUPPORT OF ITS 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 318 Filed 05/06/20 Page 2 of 8 PageID #: 10376
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`Maxell’s opposition (D.I. 299) confirms that it can comply with the Court’s prior orders
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`requiring source code specificity but refuses to do so. Maxell’s strategy is clear—run out the
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`clock and force Apple’s experts to disclose their invalidity opinions without the complete
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`understanding of Maxell’s infringement theories P.R. 3-1(g) entitles them to have. Maxell
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`presents a litany of excuses for why the Court should permit its noncompliance with P.R. 3-1(g)
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`and this Court’s orders, trotting out familiar tropes about Apple’s discovery responses (disputes
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`over which have been resolved largely in Apple’s favor), blaming “rigid source code restrictions”
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`(to which Maxell agreed and which Apple relaxed at Maxell’s request), and alleging Apple
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`moved too late (ignoring that Apple first raised this issue last November). Setting this hand-
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`waving aside, Maxell essentially repeats the same argument the Court previously rejected—that
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`the non-source code portions of its contentions are sufficiently clear to obviate the need for
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`specific source code contentions. In so doing, Maxell misses the point of P.R. 3-1(g), which
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`requires Maxell to identify “what source code of each Accused Instrumentality allegedly
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`satisfies” claim elements it has identified as “software limitations.” And Maxell makes no effort
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`to explain how its 70-page, multi-column source code appendices—blandly listing over
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`citations to complete source code files, many of them over 100 pages long—are “sufficiently
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`focused to the accused functionality.” See D.I. 204 at 5.
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`I.
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`Maxell Cannot Dispute That It Cites Large Ranges of Code Without Explanation
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`’493 Patent. For the “mixing or culling” limitation of the ’493 patent (element 5.e),
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`Maxell’s SSIC cite
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` source code files in their entirety for just one accused product (iPhone 6S
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`or “N71” running iOS 13).1 See D.I. 284-1 at ¶ 6. But regardless of the number of files cited,
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`the ultimate (and only) relevant question according to this Court’s prior order is whether Maxell
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`1 Maxell misrepresents its own SSIC as citing only
` files by ignoring the files listed on pages
`“source code” table. D.I. 284-01 at ¶ 6. And because Maxell lists multiple versions of files across
`multiple operating systems, the total number of files listed across all operating systems is much greater.
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` of its
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`1
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`Case 5:19-cv-00036-RWS Document 318 Filed 05/06/20 Page 3 of 8 PageID #: 10377
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`has cited code with “some focus on the accused functionality” to provide “fair notice” of the
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`same. D.I. 204 at 4. Here, Maxell has no response. It does not dispute that its SSIC cite well
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`over 100 pages of source code for this single limitation, nor does it dispute that the cited files
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`contain hundreds of different software functions. D.I. 284 at 3. And Maxell cannot point to
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`anything in its SSIC that explains which of these myriad “processing functions relate to the
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`accused functionality of ‘mixing or culling signal charges,’” as required. D.I. 204 at 3. Instead,
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`Maxell rehashes the argument the Court previously rejected that the “non-source code evidence”
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`in its P.R. 3-1(a) contentions is sufficiently clear. D.I. 299 at 3-4. But those do not sufficiently
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`disclose what source code functionality Maxell accuses for the limitations it has chosen to
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`designate as “software limitations”—that’s what P.R. 3-1(g) is for. Maxell argues, for example,
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`that it limited element 5.e to “
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`.” But its own citation shows that
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`Maxell uses this phrase interchangeably with the claim term: “
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`.” D.I. 299 at Decl. ¶ 4. Maxell never
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`explains how replacing “
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`” with “
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`” gives fair notice of which functions within
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`the hundreds of cited source code pages are relate to the “culling” limitation.
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`As for claim element 5.d, Maxell does not dispute its SSIC list 18 source code files in
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`their entirety for this single element. D.I. 284 at 3; D.I. 299 at 4. Maxell says it has limited this
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`element to “one infringement theory,” but then cites a paragraph listing “
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`.”
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`D.I. 299 at Decl. ¶ 5. And Maxell does not explain how its SSIC correlate these 18 source code
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`files (or any of their functions) to its existing infringement theories, as required by P.R. 3-1(g).
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`’794 Patent. Maxell does not dispute its SSIC cite 16 files for element 1.f and that just
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`one of those files—“
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`”—spans nearly 200 pages and covers over 100 different
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`functions and methods. D.I. 284 at 3. Maxell claims that it identified only “one theory” of
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`2
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`Case 5:19-cv-00036-RWS Document 318 Filed 05/06/20 Page 4 of 8 PageID #: 10378
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`infringement for element 1.f relating to “
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`” of the accused products, but then says that
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`this is merely “
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`.” D.I. 299 at 5. Maxell’s SSIC offer no explanation which
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`functions in these 16 source code files allegedly implement the accused “
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`” Maxell
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`identifies in its brief or the other nebulous allegations identified in its SSIC.
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`Maxell acknowledges that it printed a single-page,
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` function from “
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`”
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`that is “
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`.” D.I. 299 at 5. Maxell’s ability to print a specific function
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`from the 200-page file exemplifies the overbroad and noncompliant nature of Maxell’s P.R. 3-
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`1(g) citations. A single source code function can take up less than a single page. D.I. 284 at 4.
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`If Maxell intends to rely on a printed function, it must give fair notice of that rather than cite the
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`entire 200-page file (along with 15 other files) without explanation. Although Maxell can
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`identify allegedly relevant code for printing, it refuses to limit its SSIC to the printed pages or
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`otherwise any provide information specifying the relevant ranges of source code. Apple is not
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`asking for “expert report level detail,” which would presumably explain how the source code
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`functions map to claim elements. Rather, Apple is asking Maxell to comply with P.R. 3-1(g) and
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`simply identify which source code functions within that 200-page file (and other files) it believes
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`“satisf[y] the software limitations of the asserted claim elements.” See D.I. 204 at 4.
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`II. Maxell’s Grouping of Multiple Claim Elements Exemplifies Its Overbroad Citations
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`The SSIC cite the same source code files across groups of claim elements, violating P.R.
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`3-1(g)’s requirement for “element-by-element” analysis. Maxell’s only excuse is that some of
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`those elements have “nearly identical claim language” or “very similar functionality.” D.I. 299
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`at 5-6. The seven elements Maxell groups together for the ’794 patent—directed to everything
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`from
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`—show that neither is the case.
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`3
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`Case 5:19-cv-00036-RWS Document 318 Filed 05/06/20 Page 5 of 8 PageID #: 10379
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`D.I. 284 at 4. And unsurprisingly, Maxell’s grouping of 22 elements across the ’317, ’999, and
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`’498 patents include widely disparate elements. Id. at 5. Forcing Apple to look at product
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`screenshots referred to in textual descriptions as some kind of “Rosetta Stone” to divine what
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`functions in the 200-page “
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`,” 100-page “
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`,” and 20 other files are
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`accused of infringement is not what P.R. 3-1(g) requires. See D.I. 284 at 5.
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`III. Maxell Should Not Be Permitted to Continue to Hide The Relevant Source Code
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`Maxell has no intention to specifically disclose “what source code of each Accused
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`Instrumentality allegedly satisfies the software limitations of the asserted claim elements.” P.R.
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`3-1(g).2 Maxell treats this rule and the Court’s prior orders as mere suggestions. Indeed, just as
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`Apple predicted (D.I. 123 at 5-6), Maxell now wants its experts to be able to rely on source code
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`Apple produced before February 2020 not even specifically listed in its deficient SSIC. And
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`Maxell admits that it can provide the specificity the Court’s order guarantees Apple if it chooses
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`to—it disingenuously offered to provide this information for a single limitation out of the 20
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`asserted claims. See D.I. 299 at 2. Maxell cannot declare itself exempt from the even playing
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`field the local patent rules are designed to create.
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`It is of no moment that Apple’s engineers can “understand the accused functionalities”
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`and answer questions “regarding certain source code projects.” D.I. 299 at 6. It is unsurprising
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`that Apple’s engineers—many of whom wrote the very source code at issue—can answer
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`questions about printouts of selected source code functions. But P.R. 3-1(g) does not let Maxell
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`burden Apple’s engineers with sorting through Maxell’s 3,700-page infringement contentions to
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`guess what portions of source code are relevant to Maxell’s infringement theories. Being able to
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`2 Maxell baldly argues that its failure to provide compliant contentions has “no bearing on invalidity.”
`D.I. 299 at 6. But it is beyond question that Maxell’s infringement theories directly impact Apple’s
`invalidity defenses. See Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1322 (Fed. Cir. 2005) (“a
`product which would literally infringe if later in time anticipates if earlier”).
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`testify on printed source code (that may or may not correspond to the extent of Maxell’s
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`infringement theory) does not mean Apple has the fair notice P.R. 3-l(g) guarantees it.
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`None of Maxell’s remaining excuses have merit. Maxell frivolously argues that Apple’s
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`motion addresses only five patents—the SSIC ’8 source code charts for all 10 patents are prepared
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`in the same deficient manner and Apple’s motion presents representative examples of these
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`deficiencies. Maxell’s claim that it did not comply with P.R. 3-1(g) because Apple did not
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`produce source code early enough is betrayed by the— included in
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`Maxell’s FSIC . Moreover, the Court already dispensed with this argument when it required
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`Maxell to serve compliant contentions on March 13 for source code produced before February
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`12. See D1. 223. And Apple has been seeking Maxell’s compliance with P.R. 3-1(g) since last
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`October, raising its concerns again ~2 weeks afier finally receiving the Court-ordered SSIC .3
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`Maxell accuses Apple of delaying the case, but it is Maxell that has shirked its local rule
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`obligations and has necessitated a delay. If the Court generously gives Maxell a third chance to
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`comply with P.R. 3-l(g), Apple’s experts should be given time to review Maxell’s contentions
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`before disclosing their invalidity opinions. If the Court is not inclined to alter the case schedule,
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`Apple has offered a reasonable alternative: Maxell has failed to comply with this Court’s orders
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`and the Court should strike Maxell’s reliance on broad ranges of undifferentiated code. A single
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`- function can fit on a single printed page. Just like the deficient source code citations in
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`Sutton, Maxell’s cites to 7-pages or more of source code are deficient and should be struck.4
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`3 Maxell misr resents A le’s osition re ardin the availabili of remote code review. D1. 299 at 7
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` I .. D1. 299 at Dec . W 8-9. But no court
`1as suggeste t at App e s o
`penmt Maxe an its experts the same access as Apple‘s employees.
`4 There is no indication. as Maxell argues. that the Sutton case referred to 7 pages of source code listings.
`Rather. the deficient contentions in Sutton included actual source code pages and identification of actual
`source code fimctions. which are far narrower than Maxell’s SSIC. See Michael S Sutton Ltd. v. Nokia
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`Corp. 2009 WL 9051240. at *2 (ED. Tex. Feb. 13. 2009).
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`Case 5:19-cv-00036-RWS Document 318 Filed 05/06/20 Page 7 of 8 PageID #: 10381
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`May 1, 2020
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`/s/ Luann L. Simmons
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`
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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
`
`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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`6
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`Case 5:19-cv-00036-RWS Document 318 Filed 05/06/20 Page 8 of 8 PageID #: 10382
`Case 5:19-cv-00036-RWS Document 318 Filed 05/06/20 Page 8 of 8 PageID #: 10382
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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 docmnent via the Coufl's
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`CM/ECF system per Local Rule CV—5(a)(3) on May 1, 2020.
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`/s/ Melissa R. Smith
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`Melissa R. Smith
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