Case 5:19-cv-00036-RWS Document 323 Filed 05/06/20 Page 1 of 6 PageID #: 10424
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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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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
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`Case No. 5:19-cv-0036-RWS
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`JURY TRIAL DEMANDED
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`APPLE’S OPPOSITION TO MAXELL’S MOTION FOR LEAVE TO FILE A SUR-
`REPLY IN FURTHER OPPOSITION TO APPLE’S RENEWED MOTION TO COMPEL
`INFRINGEMENT CONTENTIONS COMPLIANT WITH PATENT RULE 3-1(G)
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`Maxell’s strategy with source code in this case—from the beginning—has been plain and
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`simple: use the “software limitation” allowance of P.R. 3-1(g) to obfuscate (at best) or hide (at
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`worst) Maxell’s infringement contentions. Infringement contentions are the guiding light in patent
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`cases like this one. They cabin the scope of discovery. See Connectel, LLC v. Cisco Sys., Inc.,
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`391 F. Supp. 2d 526, 527-28 (E.D. Tex. 2005). They inform the scope of a defendant’s invalidity
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`contentions. Id.; P.R. 3-3(a). They cabin the scope of infringement expert reports. Biscotti Inc.
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`v. Microsoft Corp., No. 2:13-CV-01015-JRG-RSP, 2017 WL 2267283, at *3 (E.D. Tex. May 24,
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`2017). And like they inform the scope of invalidity contentions, they inform the scope of invalidity
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`expert reports. See Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1322 (Fed. Cir. 2005).
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`P.R. 3-1(g) allowed Maxell to delay giving infringement contentions for “software limitations”
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`and though Apple has been fighting for such contentions now for months, it still has not received
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`them. This is despite two Apple motions to compel, one swiftly-rejected Maxell motion for an
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`extension of time, eight briefs (D.I. 123, 145, 154, 207, 214, 284, 299, 306), one hearing, and two
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`court orders (D.I. 204, 223).
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`Case 5:19-cv-00036-RWS Document 323 Filed 05/06/20 Page 2 of 6 PageID #: 10425
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`The Court’s previous substantive order on Maxell’s failure to comply with P.R. 3-1(g) (D.I.
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`204) was a very simple (and correct) one: Maxell’s first attempt to comply with P.R. 3-1(g) widely
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`missed the mark, and Maxell must correct this failure to give Apple fair notice of the source code
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`on which it intended to rely to show infringement. The Court was explicit in how Maxell needed
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`to comply. But Maxell could not muster compliance. As such, the prejudice to Apple’s ability to
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`understand Maxell’s infringement contentions continues with opening expert reports due Thursday
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`absent any extension of the schedule.1
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`Now Maxell seeks to continue its campaign of shirking compliance with P.R. 3-1(g), and
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`the Court’s prior order on this issue, by requesting a sur-reply. Indeed, with no new substantive
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`arguments because Apple’s reply raised none, Maxell scrapes the bottom of the barrel to waste
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`pages lobbing baseless, ad hominem attacks against Apple and its counsel. None of what Maxell’s
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`motion for leave presents is good cause for a sur-reply.
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`First, Apple did not raise any new arguments in Reply, and “the impact of the infringement
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`contentions on Apple’s invalidity expert reports[,]” D.I. 312 at 2, is not one. According to Apple’s
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`opening brief: “Requiring Apple’s experts to formulate their invalidity opinions . . . without the
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`full picture of Maxell’s infringement contentions . . . would defeat the purpose of the Local Patent
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`Rules: . . . .” D.I. 284 at 6. That Maxell only waved its hands in its opposition, D.I. 299 at 6
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`(“Apple’s motion has no bearing on invalidity.”), does not warrant a “do-over.”
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`Second, no further explanations from Maxell about the “textual descriptions in [Maxell’s]
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`infringement contentions” and Apple’s engineers’ understanding of code citations are warranted.
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`1 The parties agreed to expedite briefing on this issue, and the Court graciously accepted that
`agreement. D.I. 287. Maxell claims that its sur-reply will not endanger this schedule, but its new
`and inflammatory arguments necessitate a response from Apple, which it has tried its best to do
`on the Court’s original schedule on this issue.
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`Case 5:19-cv-00036-RWS Document 323 Filed 05/06/20 Page 3 of 6 PageID #: 10426
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`D.I. 312 at 2. Maxell had a full opportunity to (and did) make such arguments and present evidence
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`to the Court in its Opposition. Apple’s Reply does not cite any new portions of Maxell’s
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`infringement contentions or testimony. Replying to Maxell’s Opposition does not, as appears to
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`be Maxell’s position, warrant a sur-reply. And it certainly does not justify Maxell’s entirely new
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`citations to its Complaint and the Markman transcript as purported evidence for its compliance
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`with P.R. 3-1(g) (D.I. 313 at 2); these are arguments it could have made in its Opposition.
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`Third, the relief Apple seeks (standing alone) does not create good cause. D.I. 312 at 2.
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`Apple fully presented that request in its Renewed Motion, D.I. 284 at 5-7, and Maxell fully
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`responded, D.I. 299 at 6-7. Apple presents no new (or different) request for relief in Reply.
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`Finally, Maxell’s ad hominem attacks on Apple’s May 1 proposal for source code review
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`also provide no good cause. Subsequent to Chief Judge Gilstrap’s April 20 order regarding source
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`code review in view of COVID-19, Standing Order Regarding Pretrial Procedures in Civil Cases
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`Assigned to Chief District Judge Rodney Gilstrap During the Present Covid-19 Pandemic, at ¶ 20,
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`Apple investigated the feasibility of allowing third-parties
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`—Apple’s crown jewel intellectual property, its source code, and the
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`protections such unprecedented access would require. Apple offered this extraordinary solution
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`to Maxell as soon as possible. But Maxell’s argument is just mudslinging: Apple’s motion
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`concerns disclosures Maxell made on March 13 for source code produced before February 12; that
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`Maxell may not have had normal access to review Apple source code after March 16 has no
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`bearing on the question of whether Maxell’s March 13 SSIC complied with P.R. 3-1(g) and the
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`Court’s order.
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`At bottom, the Court’s Standing Order permits Apple’s Opening Motion and Maxell’s
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`Opposition. D.I. 287. And the Court specifically allowed Apple to file a Reply, in lieu of a hearing,
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`Case 5:19-cv-00036-RWS Document 323 Filed 05/06/20 Page 4 of 6 PageID #: 10427
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`so that Apple—as the moving party—could respond to Maxell’s Opposition. Apple did not
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`understand the Court’s order as an invitation for yet more briefing from Maxell (or Apple) or for
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`Maxell to ambush Apple with new arguments to jam Apple in view of the agreed schedule.
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`Accordingly, Apple respectfully requests that the Court deny Maxell’s motion for leave to
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`file a sur-reply. But if the Court is inclined to accept Maxell’s sur-reply, Apple respectfully
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`requests leave to file a response of the same length, attached hereto as Exhibit 1.
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`Case 5:19-cv-00036-RWS Document 323 Filed 05/06/20 Page 5 of 6 PageID #: 10428
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`May 5, 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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`Case 5:19-cv-00036-RWS Document 323 Filed 05/06/20 Page 6 of 6 PageID #: 10429
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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 document via the Court's
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`CM/ECF system per Local Rule CV-5(a)(3) on May 5, 2020.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`6
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