Case 5:19-cv-00036-RWS Document 322-1 Filed 05/06/20 Page 1 of 9 PageID #: 10415
`Case 5:19-cv-00036—RWS Document 322-1 Filed 05/06/20 Page 1 of 9 PageID #: 10415
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 5:19-cv-00036—RWS Document 322-1 Filed 05/06/20 Page 1 of 9 PageID #: 10415
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 5:19-cv-00036-RWS Document 322-1 Filed 05/06/20 Page 2 of 9 PageID #: 10416
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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 SUR-SUR-REPLY IN SUPPORT OF ITS
`MOTION TO COMPEL LICENSING AND
`NEGOTIATION DOCUMENTS AND FOR SANCTIONS
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`Case 5:19-cv-00036-RWS Document 322-1 Filed 05/06/20 Page 3 of 9 PageID #: 10417
`Case 5:19-cv-00036-RWS Document 322-1 Filed 05/06/20 Page 3 of 9 PageID #: 10417
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`Maxell’s Sur—Reply (D.I. 308) is a last—ditch (and unsuccessful) attempt to further
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`obfuscate its efforts to play “keep away” with materials from Hitachi that are plainly relevant to
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`Apple’s defenses. Indeed, on one hand, Maxell will apparently t1y to convince the jury that
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`Hitachi invented iPhone before Apple did (“Hitachi was developing smartphone technology for
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`ahnost 20 years before the first iPhone ever came out”) and that Maxell and Hitachi are one-and-
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`the—same (“Until recently, Maxell was actually affiliated with Hitachi”). Maxell v. ZTE, 5:16—
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`179, Dkt. 293 at 5719-10, 58: 19-21. While on the other, Maxell’s relationship with Hitachi1
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`suddenly vanishes when Maxell is called to account for it through discovery. But the record is
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`replete with instances of Maxell leveraging its business relationship with Hitachi conceming this
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`litigation to get information it wants:
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`The prejudice to Apple is self—evident. But Maxell would not be the first plaintiff to play this
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`game and lose. See J.S.T. Corp. v. Robert Bosch LLC, 2019 WL 2354631. at *8 (ED. Mich.
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`June 3, 2019). And it is hardly Apple’s argument (as Maxell hypothesizes) that every corporate
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`relationship. no matter how tenuous, is deep enough—like Maxell’s is with Hitachi—to support
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`1 This brief refers to Hitachi, Ltd. as “Hitachi,” Hitachi Industry Control Solutions as “Hitachi
`ICS,” Hitachi Consumer Electronics C0., Ltd. as “HCE,” and combinations of more than one
`Hitachi subsidiary as “Hitachi subsidiaries.”
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`Case 5:19-cv-00036-RWS Document 322-1 Filed 05/06/20 Page 4 of 9 PageID #: 10418
`Case 5:19-cv-00036-RWS Document 322-1 Filed 05/06/20 Page 4 of 9 PageID #: 10418
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`discovery. The Court has “inherent authority to prevent unfairness to [Apple] resulting from
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`[Maxell’s] proven, one-sided. access to” Hitachi and its subsidiaries, and Apple submits it should
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`exercise that authority based on the record that Apple has established here. 10’.2
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`1.—
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`Its corporate witness, Mr. Kitagata. testified
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`Mr. Kitagata’s testimony would otherwise be nonsensical. D1. 300 at 1-2.
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`Maxell newly alleges that the support required by the MOU is limited to_
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`witnesses (and Maxell’s own counsel) had ever argued that. Id. at 2 H2; UL 300 at 2.3 The
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`express language of the provision, permitting
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`_ does not support Maxell’s litigation—inspired interpretation. D.I. 300 at 2.
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`2 While Hitachi is actively helping Maxell—it has no compelling interest in responding to
`A Ie’s re uests, includino this C 01111’s Letters R0 ato . D.I. 146, D.I. 254—01. A4.
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`Case 5:19-cv-00036-RWS Document 322-1 Filed 05/06/20 Page 5 of 9 PageID #: 10419
`Case 5:19-cv-00036-RWS Document 322-1 Filed 05/06/20 Page 5 of 9 PageID #: 10419
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`' A
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`II.
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`Apple Has Established That Maxell Can Get
`Documents And Information from Hitachi When It Suits Maxell
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`—. Maxewsclannmmm
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`witness personally chose to paiticipate in their depositions” is belied by their actual testimony.
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`D.I. 254 at 3-4; D.I. 300 at 3; UL 254-01. B3. B4. B7. B8.5—
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`“experience a trip to the United States” for wholly personal reasons is laughable. D.I. 308 at 3.6
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`Whether or not it is routine to reimbiu‘se witnesses directly, id.—
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`The agreement to make these payments fuither
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`4 Maxell states that it is not withholding licenses and that Apple stretched the record to claim
`otheiwise. D1. 308 at 2—3. Apple, however. was merely citing Maxell’s Opposition. D.I. 300 at
`2. While Maxell claims to have produced all licenses. its failure to produce documents and
`licenses it can obtain from Hitachi and its subsidiaries remains at issue.
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`5 U
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`.)
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`Case 5:19-cv-00036-RWS Document 322-1 Filed 05/06/20 Page 6 of 9 PageID #: 10420
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`evidences ongoing relationships concerning this litigation and supports a finding of control.
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` Though Maxell claims this is not a sharing of management, it confirms a business
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`relationship deep enough to support a finding of control.
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`III. Maxell Did Not Timely Update Its Initial Disclosures Regarding Mr. Matsuo
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`Maxell cannot reconcile its present arguments with its actions in this litigation. Maxell
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`and Mr. Loudermilk claim that
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` But if this was true, Maxell’s initial disclosures about Mr. Matsuo have
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`been wrong from the beginning of this case, Maxell knew it, and never told Apple about it. D.I.
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`254 at 6-7; D.I. 300 at 5. Maxell argues that Apple was late in seeking his deposition, D.I. 308 at
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`5, but Apple contacted Maxell on February 21 (more than five weeks before the original close of
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`fact discovery) and Maxell noticed several fact depositions of Apple engineers after that date,
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`contradicting Maxell’s new view the Apple was dilatory. Rule 26 required Maxell to correct its
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`disclosures “in a timely manner” and Maxell did not do so, effectively denying Apple any
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`opportunity to depose Mr. Matsuo. D.I. 300 at 5.
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`IV.
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`Precluding Maxell From Relying On Hitachi Is Appropriate
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`Apple submits that Maxell’s duplicity should preclude it from relying for any purpose on
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`documents from or testimony about Hitachi at trial.7 Maxell asserts that it did not
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`7 Maxell’s exclamatory assertion that this would even prevent it from relying on the Asserted
`Patents is not a serious one; trial lawyers successfully navigate such issues in every trial (e.g., by
`redacting information that is the subject of an exclusionary order).
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`4
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`Case 5:19-cv-00036-RWS Document 322-1 Filed 05/06/20 Page 7 of 9 PageID #: 10421
`Case 5:19-cv-00036-RWS Document 322-1 Filed 05/06/20 Page 7 of 9 PageID #: 10421
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`“misrepresentfl its relationship with, or its ability to obtain matelials fi'om, Hitachi,” D.I. 308 at
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`5, but the record speaks for itself:
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`Maxell’s Assertion
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`What the Record Shows Instead
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`This presents a textbook situation for the C01111 to exercise its inherent power to deter such a
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`“one-sided” approach to discovery. J.S. T. Corp, 2019 WL 2354631, at *8. The record is plain:
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`Maxell could have (and should have) exerted the same control over Hitachi to produce
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`documents in response to Apple’s requests that it exe11ed to get Hitachi to produce named
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`inventors for deposition. But Maxell’s shell game ensured that only Mare/I could get the
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`evidence it wanted from Hitachi and its subsidiaries in this litigation.
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`'JI
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`Case 5:19-cv-00036-RWS Document 322-1 Filed 05/06/20 Page 8 of 9 PageID #: 10422
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`May 4, 2020
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`/s/ Luann L. Simmons
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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
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`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 322-1 Filed 05/06/20 Page 9 of 9 PageID #: 10423
`Case 5:19-cv-00036-RWS Document 322-1 Filed 05/06/20 Page 9 of 9 PageID #: 10423
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all c01msel 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 Court's
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`CM/ECF system per Local Rule CV—5(a)(3) on May 4, 2020.
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`/s/ Melissa R. Smith
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`Melissa R. Smith
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