Case 5:19-cv-00036-RWS Document 334 Filed 05/20/20 Page 1 of 4 PageID #: 10506
`
`
`
`
`
`
`MAXELL, LTD.,
`
`v.
`
`APPLE INC.,
`
`
` IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`Plaintiff,
`
`Defendant.
`
`Case No. 5:19-cv-00036-RWS
`
`JURY TRIAL DEMANDED
`
`
`
`
`MAXELL, LTD.’S RESPONSE TO APPLE INC.’S NOTICE OF SUPPLEMENTAL
`FACTS IN SUPPORT OF APPLE’S RENEWED MOTION TO COMPEL LICENSING
`AND NEGOTIATION DOCUMENTS AND FOR SANCTIONS D.I. 254
`
`On May 15, 2020, Apple filed a notice of supplemental facts in support of its Renewed
`
`Motion to Compel Licensing and Negotiation Documents and for Sanctions (D.I. 330). Apple
`
`alleges that there are “supplemental facts” relevant to its motion, suggesting there are some new
`
`facts the Court must consider, and presumably that Apple could not have brought these to the
`
`Court’s attention when it filed its renewed motion. In fact, Apple’s notice is, at the very least, a
`
`blatant and deliberate attempt to mislead the Court, and Apple’s filing of the Notice speaks
`
`volumes about Apple’s willingness to manufacture “facts” (or “supplemental facts”) in support of
`
`its baseless motion.
`
`The new information Apple suggests is necessary for the Court to consider is Maxell’s
`
`. These are addressed in Carla Mulhern’s expert report (Maxell’s
`
`damages expert report). However, these “new” facts have been known to Apple since July of last
`
`
`
`year.
`
`
`
`1
`
`PUBLIC VERSION
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 334 Filed 05/20/20 Page 2 of 4 PageID #: 10507
`
`
`
`
`First, Apple has the
`
`
`
`, and has had them for almost 10
`
`months. Maxell produced them to Apple in an early production in this case on July 29, 2019.
`
`Apple has also had Maxell’s 30(b)(6) testimony from the ZTE case, in which Maxell’s witness
`
`discusses these agreements. Maxell produced those transcripts on July 10, 2019, more than 10
`
`months ago. Maxell has also had Ms. Mulhern’s expert report from the ZTE case, as well as her
`
`deposition testimony from that case, in which she discusses these same license agreements for
`
`about 7 months. Maxell produced them on September 16, 2019.
`
`Second, Apple has known about Maxell’s reliance on these agreements for almost 10
`
`months. Maxell first identified the license agreements and its prior 30(b)(6) testimony discussing
`
`the agreements in response to Interrogatory Nos. 10 and 11, served July 29, 2019. Maxell identified
`
`Ms. Mulhern’s prior report and testimony in supplemental response to Interrogatory No. 11 on
`
`October 19, 2019. There is no scenario in which Apple can honestly claim not to have known since
`
`last year about the agreements, Ms. Mulhern’s use of the agreements, or Maxell’s reliance on
`
`them. Apple’s claim that these are “supplemental facts” now is troublingly disingenuous.
`
`Third, these “new” facts are irrelevant to Apple’s motion and have no bearing on whether
`
`Maxell controls Hitachi, Ltd. Maxell has been clear from the outset that it received these
`
`documents (and others) from HCEC in 2013 when Maxell acquired HCEC’s consumer business
`
`and patent portfolio. Maxell timely produced all relevant documents in its possession, custody and
`
`control, in this case, which included these documents. But neither the fact that Maxell received
`
`these documents in 2013, nor their relevance to this case, establish control. They do not establish
`
`Hitachi ownership of Maxell or any right of Maxell to demand documents from Hitachi. All they
`
`show is that in 2013 HCEC did in fact transfer to Maxell relevant materials.
`
`Apple’s continued allegations of selective reliance, and raising of irrelevant “supplemental
`
`
`
`2
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 334 Filed 05/20/20 Page 3 of 4 PageID #: 10508
`
`
`
`facts” furthers the knowing and deliberate gross misrepresentations that Apple has made in
`
`
`
`connection with this issue since it was first raised. Maxell is not Hitachi and does not have control
`
`over Hitachi, no matter how many times Apple says it. Maxell has produced the relevant materials
`
`it has within its possession, custody, or control. It cannot produce anything it does not have within
`
`its possession, custody or control. Finally, Maxell already asked Hitachi for the materials Apple
`
`seeks and Hitachi ignored the request.
`
`
`
`Dated: May 18, 2020
`
`
`By:
`
`
`
`
`3
`
`/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 J. Siddiqui
`Bryan C. 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
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 334 Filed 05/20/20 Page 4 of 4 PageID #: 10509
`
`
`
`
`
`
`
`
`
`
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`wbarrow@mayerbrown.com
`agelsleichter@mayerbrown.com
`cbakewell@mayerbrown.com
`
`Robert G. Pluta
`Amanda Streff 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.
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 18th day of May 2020, with a copy of this document via
`electronic mail.
`
`
`/s/ Jamie B. Beaber
`Jamie B. Beaber
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`PUBLIC VERSION
`
`