Case 5:19-cv-00036-RWS Document 323-1 Filed 05/06/20 Page 1 of 9 PageID #: 10430
`Case 5:19-cv-00036—RWS Document 323-1 Filed 05/06/20 Page 1 of 9 PageID #: 10430
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 5:19-cv-00036-RWS Document 323-1 Filed 05/06/20 Page 2 of 9 PageID #: 10431
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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
`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 323-1 Filed 05/06/20 Page 3 of 9 PageID #: 10432
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`P.R. 3-1(g) and the Court’s orders plainly explain what Maxell was required to disclose
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`to Apple with respect to source code Apple produced before February 12. Maxell fell far short
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`of complying with either, and its strategy is plain: force Apple to disclose its expert opinions
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`without the fair notice of the full complement of Maxell’s infringement contentions (P.R. 3-1(a)
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`and 3-1(g)) to which Apple is entitled.
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`Maxell does not and cannot dispute the core facts underlying Apple’s motion: (1)
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`Maxell’s SSIC lists whole source code files for each claim element (or for groups of claim
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`elements), (2) each file can comprise dozens or hundreds of printed pages and a multitude of
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`software functions, (3) a single software function can typically fit on a single page, and (4)
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`Maxell can—but refuses to—specifically identify which software functions it actually accuses of
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`infringement. Maxell’s sur-reply repeats the same illogical argument from its Opposition—that
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`because Apple’s “engineers understood and answered questions about the cited source code
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`files,” they must have “underst[ood] what accused functionalities” are at issue in this case. D.I.
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`313 at 1. If this were the test, then P.R. 3-1(g) would be rendered meaningless and the Patent
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`Rules would be turned on their head: it would be a defendant’s obligation to dig through
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`thousands of lines of source code across hundreds of files just to divine the single (or few) pages
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`in each file that relates to a plaintiff’s infringement theory. But, as the Court already found, P.R.
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`3-1(g) requires Maxell to give Apple fair notice of its source code contentions and to do so in a
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`manner “sufficiently focused to the accused functionality.”
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`Maxell’s Sur-Reply rehashes its argument (already rejected by the Court) that its P.R. 3-
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`1(a) non-source code claim charts, the complaint, Markman arguments, and Apple engineers’
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`testimony give Apple sufficient notice and justify its failure to comply with P.R. 3-1(g). Maxell
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`Case 5:19-cv-00036-RWS Document 323-1 Filed 05/06/20 Page 4 of 9 PageID #: 10433
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`also again touts familiar excuses, like Apple’s supposed “discovery delays.”1 But it is Maxell’s
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`refusal to provide compliant contentions that necessitates delay (or striking them in part).
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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. Maxell does not dispute that its SSIC cite a dozen source code files for
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`claim element 5.e
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` or that hundreds of pages (and functions) are found
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`within those files. D.I. 284 at 2-3; D.I. 306 at 1-2. And Maxell abandons the “textual
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`disclosures” touted in its Opposition, (D.I. 306 at 1-2), and now argues that the Markman hearing
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`demonstrates Apple’s understanding of this claim element and no further explanation is
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`necessary. D.I. 313 at 2. There is no exception in P.R. 3-1(g) for claim elements construed by
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`the Court. The Court has already rejected Maxell’s reliance on screenshots and unsupported
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`conjecture about Apple’s software as a substitute for compliance with P.R. 3-1(g). D.I. 156 at 1-
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`2; see D.I. 204 at 2. Those contentions do not sufficiently disclose what source code
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`functionality Maxell accuses for its designated “software limitations”—that is what P.R. 3-1(g) is
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`for. D.I. 306 at 2.2 And Maxell’s claim that it does not know what more it can do is betrayed by
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`its offer to providing more detailed contentions for the
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` element, and its
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`ability to identify and print specific portions of source code. D.I. 313 at 2, 4; D.I. 306 at 4.
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`’794 Patent. Maxell does not dispute that its SSIC cite 16 files for element 1.f and that
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`just one of those files spans ~200 pages and over 100 functions. D.I. 284 at 3; D.I. 306 at 2-3.
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`Nothing in Maxell’s complaint or generic description of source code directory names—each of
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`1 Maxell does not dispute that its complaints about Apple’s discovery were resolved “largely in
`Apple’s favor.” D.I. 313 at 1 n.2. That Apple voluntarily produced some documents after
`Maxell’s motion simply confirms Maxell’s failure to meet and confer before filing its motion.
`2 Maxell suggests that Apple should simply move to strike Maxell’s expert reports (which Apple
`may be forced to do). D.I. 313 at 2 n.5. But Maxell’s failure to crystalize its theories before
`expert reports is inherently prejudicial to the Court and Apple and severely hinders the Court’s
`and Apple’s ability to police those reports. D.I. 284 at 5 (citing Finjan).
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`Case 5:19-cv-00036-RWS Document 323-1 Filed 05/06/20 Page 5 of 9 PageID #: 10434
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`which contains thousands of files—explains what functions in these 16 source code files
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`allegedly implement the accused
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` Apple is not asking for expert reports (“how” a
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`particular piece of source code shows infringement), but only for Maxell to give it fair notice of
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`which software functions Maxell believes are relevant. D.I. 306 at 3.
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`II. Maxell’s Grouping of Multiple Claim Elements Exemplifies Its Overbroad Citations
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`Maxell does not dispute that its SSIC cite source code across groups of claim elements.
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`D.I. 284 at 4-5; D.I. 306 at 3-4. Maxell largely abandons its claim that these disparate claims are
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`“similar,” and instead presents a red herring—the source code files are “linked to each other.”
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`D.I. 313 at 3. All computer programs are built using source code files that call or link to each
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`other. This does not justify Maxell’s grouping of disparate claim elements to the same source
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`code. P.R. 3-1(g) requires “an element-by-element” analysis, which cannot be satisfied by citing
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`the same group of files across 22 claim elements of three patents.
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`III. Maxell Should Not Be Permitted To Continue To Hide the Relevant Source Code
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`Maxell’s 70-page, multi-column source code appendices list over
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`in their entirety. D.I. 306 at 1. Maxell argues that this
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` number includes different versions
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`of the same files listed across multiple operating systems. D.I. 313 at 4.3 But different versions
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`of a file across 7 operating system generations are not necessarily the same. By listing entire
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`files, rather than identifying the specific accused functions in those files, Maxell has made it
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`impossible to determine whether any differences between versions of the same file are material.
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`Maxell’s reliance on the average number of files per patent/claim being only a dozen is
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`misplaced. D.I. 313 at 4. But Maxell grouped multiple claim elements together, artificially
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`3 Maxell complains that Apple has not agreed to representative products. D.I. 313 at 4. But
`Maxell chose to make this case as big as it is, and infringement remains Maxell’s burden to
`prove. Moreover, at a minimum, Maxell’s continuing failure to comply with P.R. 3-1(g) made it
`impossible for Apple to have agreed to representative products.
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`Case 5:19-cv-00036-RWS Document 323-1 Filed 05/06/20 Page 6 of 9 PageID #: 10435
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`lowering the average number. Maxell’s allegation that Apple’s examples (from five out of the
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`ten patents) are cherry-picked repeats the same misleading emphasis on numbers. Maxell
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`suggests that it has cited only
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` source code files for the ’586 Patent, D.I. 313 at 5, ignoring that
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`Maxell had grouped 14 elements into a single bucket and bulk listed code. With many files
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`being several hundred pages long, it should be no surprise that the cited files contain myriad
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`functions none of which Maxell has identified with specificity. Regardless of the number of files
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`cited, the Court’s prior order explains that the relevant question is whether Maxell has cited the
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`accused code with “some focus on the accused functionality” to provide “fair notice” of the
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`same. D.I. 306 at 4. Maxell has not done so.
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`IV. Maxell’s Excuses Do Not Cure the Prejudice
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`Maxell argues that the Court should reward its failure to comply with P.R. 3-1(g) by
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`requiring Apple to disclose invalidity expert reports without receiving compliant contentions.
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`D.I. 313 at 5. Maxell sets up a straw-man argument, arguing that P.R. 3-1(g) contentions do not
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`impact Apple’s invalidity expert reports because Apple is not relying on its
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` for invalidity. Id. Maxell cites no support for this argument because it is nonsensical.
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`The Patent Rules require that Maxell give Apple and its experts the opportunity to understand
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`what source code is accused—e.g., what image processing functions are accused as
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`—to be able to identify the closest prior art features to demonstrate invalidity. Apple is
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`unaware of any precedent, and Maxell has cited none, that requires a defendant’s expert to opine
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`on invalidity without the fair notice of the plaintiff’s infringement theories the P.R. require.
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`Maxell’s failure to comply with P.R. 3-1(g) with pre-February 12 source code is without
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`justification. Even according to Maxell, it had normal access to Apple’s source code until March
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`16, days after the Court ordered it to render the SSIC that are now the subject of this motion. So
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`any complication caused to that access by COVID-19 mattered none to Maxell’s ability to
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`Case 5:19-cv-00036-RWS Document 323-1 Filed 05/06/20 Page 7 of 9 PageID #: 10436
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`produce compliant source code contentions when the Court ordered it to do so by March 13.
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`Even still, Apple worked diligently to set up a source code computer that Maxell’s
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`counsel and experts could access—at Maxell’s request, based on a proposal sent by Maxell, and
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`using a secure facility identified by Maxell. And Apple made it clear that it would agree to a
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`reasonable schedule extension so long as its experts get a reasonable amount to time to review
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`any supplemental contentions. Now, Maxell concedes that its own proposal was flawed because
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`it “put [Maxell’s counsel and expert] and their families in harm’s way” (D.I. 313 at 5), but
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`somehow seeks to blame Apple for accepting Maxell’s proposal. In view of the continuing
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`shelter-in-place orders and Judge Gilstrap’s recent General Order, Apple has now developed an
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`alternative process for third-party experts to access its code—and Apple immediately offered that
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`process to Maxell along with a schedule extension so its experts could further review the source
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`code before opening reports. Maxell’s inflammatory accusations misrepresent the facts and are
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`wholly irrelevant to the issue presented to the Court.
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`No amount of Apple’s source code review can overcome Maxell’s failure to comply with
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`P.R. 3-1(g)—absent compliant disclosures, Apple’s invalidity experts would be left to guess
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`which software functions are accused of infringement even if they reviewed every page of the
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` of complete files listed in the SSIC. Such a tactical advantage is an unjust benefit of
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`failing to comply with P.R. 3-1(g) and this Court’s orders.
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`If the Court gives Maxell a third chance to comply with P.R. 3-1(g), Apple’s experts
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`should have time to study Maxell’s contentions before disclosing their invalidity opinions. If the
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`Court is not inclined to alter the case schedule, the Court should strike Maxell’s reliance on
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`broad ranges of undifferentiated code that Apple produced prior to February 12, 2020.
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`Case 5:19-cv-00036-RWS Document 323-1 Filed 05/06/20 Page 8 of 9 PageID #: 10437
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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 323-1 Filed 05/06/20 Page 9 of 9 PageID #: 10438
`Case 5:19-cv-00036-RWS Document 323-1 Filed 05/06/20 Page 9 of 9 PageID #: 10438
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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 5, 2020.
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`/s/ Melissa R. Smith
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`Melissa R. Smith
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