Case 5:19-cv-00036-RWS Document 335 Filed 05/20/20 Page 1 of 11 PageID #: 10510
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`Plaintiff,
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`Defendant.
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`MAXELL, LTD.’S OPPOSITION TO APPLE INC.’S OPPOSED
`MOTION FOR LEAVE TO CONDUCT TWO DEPOSITIONS
`AFTER THE FACT DEPOSITION DEADLINE
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`Case 5:19-cv-00036-RWS Document 335 Filed 05/20/20 Page 2 of 11 PageID #: 10511
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`Apple’s motion for leave to conduct two fact depositions after the April 30 deposition
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`deadline is untimely. With respect to Mr. Murphy, the motion comes too late and with respect to
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`Mr. Watrous the motion is premature. While Apple attempts to draw parallels between these two
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`untimely depositions, the two cases are very different and should be denied on different grounds.
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`As to Mr. Murphy, Apple intentionally delayed not only noticing, but taking any of the necessary
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`steps to secure the deposition testimony within the fact discovery period. Apple’s delays in this
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`regard were not COVID-related – Apple could have subpoenaed Mr. Murphy at any time during
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`the fact discovery period and could have taken steps to obtain dates, locations, testimony, etc.
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`Rather, Apple intentionally delayed taking any steps in order to evaluate how the facts and
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`testimony timely disclosed during fact discovery unfolded. Only after deciding it did not like the
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`facts as developed did Apple issue a subpoena for Mr. Murphy’s deposition testimony after the
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`close of fact discovery and at the very end of the extended discovery period for certain limited
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`depositions. Such tactics and gamesmanship should not be permitted.
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`Mr. Murphy is a prior Apple employee, and Apple has unquestionably known of Mr.
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`Murphy’s role in prior negotiations between Apple and Hitachi/Maxell since the outset of this
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`case. Notwithstanding, Apple took no steps during the fact discovery period to secure Mr.
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`Murphy’s deposition testimony. Indeed, Apple did not even include Mr. Murphy in its Initial
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`Disclosures until the end of the fact discovery period when it amended its Initial Disclosures.
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`Apple’s tactics in this regard were designed to evaluate how the timely disclosed facts and
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`testimony developed in the case. When Apple decided it did not like those facts, it initiated
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`untimely efforts with respect to Mr. Murphy in hopes of changing those facts. The current motion
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`as to Mr. Murphy, filed long after the close of fact discovery, requesting an indefinite extension
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`to take the deposition of a witness known to Apple since the outset of the case, demonstrates that,
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`Case 5:19-cv-00036-RWS Document 335 Filed 05/20/20 Page 3 of 11 PageID #: 10512
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`as with Apple’s prior discovery motions, it is filed for an improper purpose. As explained below,
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`Apple’s request should be denied based on its lack of diligence and the prejudice to Maxell.
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`As to Mr. Watrous, Maxell has informed Apple numerous times, including during the meet
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`and confer for this Motion, that Maxell does not and will not oppose a later deposition of Mr.
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`Watrous once Apple makes a determination that he will be called at trial. More specifically, as a
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`result of COVID responsibilities, Apple substituted Ms. Mewes for Mr. Watrous as a 30(b)(6)
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`witness on certain topics. At that time, Apple indicated that it may still call Mr. Watrous at trial
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`and would make Mr. Watrous available for deposition if and when Apple determined Mr. Watrous
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`would appear at trial. Maxell did not object at that time, nor has it since that time. Rather, Apple
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`has yet to make a determination on whether it will call Mr. Watrous at trial. Therefore, Apple’s
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`motion is both unnecessary and premature.
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`I.
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`STATEMENT OF FACTS
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`Mr. Murphy is a former Apple employee who participated in the prior negotiations between
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`Hitachi/Maxell and Apple concerning a license to the asserted patents. In fact, the first
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`communication with Apple concerning an offer to license Maxell’s smartphone and tablet patent
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`portfolio was directed to Mr. Murphy. Ex. 1, June 25, 2013 Letter to P. Murphy
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`(MAXELL_APPLE0108220-21). Mr. Murphy’s role in Apple’s prior negotiations was apparent
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`early in this case. For example, Maxell identified the June 25, 2013 letter as a basis for its
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`willfulness claim in the original Complaint filed on March 15, 2019. D.I. 1 at ¶¶ 5, 30, 44, 59, and
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`160. Maxell produced the June 25, 2013 letter to Mr. Murphy to Apple on July 10, 2019. Ex. 2,
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`July 10, 2019 Maxell Document Production Letter. Apple itself identified Mr. Murphy as having
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`information relevant to this case as early as its August 14, 2019 interrogatory responses. Ex. 3,
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`Excerpt from 8/14/19 Apple’s Response to Interrogatory No. 5. Despite this knowledge, Apple did
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`not add Mr. Murphy to its Initial Disclosures until nearly 7 months later on March 5, 2020, just
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`before fact discovery closed. Although Mr. Murphy currently resides in Japan, Apple did not
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`subpoena or notice Mr. Murphy as a 30(b)(1), 30(b)(6), or third-party witness before the March
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`31, 2020 fact discovery deadline and has not shown that it took any of the necessary steps to obtain
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`deposition testimony, let alone hold a deposition in Japan, which must begin at least six weeks
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`before the deposition can take place. D.I. 46 and 232.
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`Apple’s only apparent mention of its interest in deposing Mr. Murphy during fact discovery
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`was in a parenthetical in a March 14, 2020 e-mail, just over two weeks before the close of fact
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`discovery. Motion at Ex. G, 3/14/20 Simmons E-mail. The parties’ Emergency Joint Motion to
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`Partially Amend the Docket Control Order in view of COVID-19 filed on March 15, 2020 stated
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`that “COVID-19 concerns have resulted in the postponement of the depositions of an Apple
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`engineer and a third-party fact witness.” D.I. 231 (emphasis added). Contrary to Apple’s assertion
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`(Motion at 3), Maxell understood the “third-party fact witness” to refer to Mr. Alan Loudermilk (a
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`third-party witness subpoenaed by Apple on February 28 and originally scheduled to be deposed
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`on March 24) and/or Mr. Kent Broddle (a third-party witness subpoenaed by Apple on March 6
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`and originally noticed to be deposed on March 31), not Mr. Murphy. Both Mr. Loudermilk and
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`Mr. Broddle were subpoenaed by Apple prior to the March 31, 2020 close of fact discovery, and
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`the extension requested in the parties’ Emergency Joint Motion was to enable the scheduled
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`depositions to be postponed. Mr. Murphy’s deposition was never noticed or scheduled during fact
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`discovery, and therefore his deposition could not have been the “postponed” third-party deposition
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`identified in the Emergency Joint Motion.
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`Mr. Watrous is a current Apple employee. On March 5, 2020, Apple identified Mr. Watrous
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`as a 30(b)(6) witness on topics related
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`. Motion at Ex. B, 3/5/20 Pensabene E-mail.
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`Thereafter, Apple withdrew Mr. Watrous’s designation and assigned his 30(b)(6) topics to another
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`Case 5:19-cv-00036-RWS Document 335 Filed 05/20/20 Page 5 of 11 PageID #: 10514
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`witness—Heather Mewes. Maxell proceeded with Ms. Mewes’ deposition and raised no issue
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`regarding lack of preparedness. At the time, Apple reassigned the topics, stating: “If Apple intends
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`to call Mr. Watrous to testify at trial, we will give Maxell an opportunity to take his deposition
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`after the pandemic subsides.” Motion at Ex. H, 4/10/20 Simmons E-mail. Currently, Apple has
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`confirmed that it still has not yet determined whether it intends to call Mr. Watrous to testify at
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`trial. Ex. 4, 5/1/20 Meet and Confer Tr. at 11:13-17. Maxell has indicated that it does not and will
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`not oppose a later deposition for Mr. Watrous if Apple decides to call Mr. Watrous at trial.
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`II.
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`LEGAL STANDARDS
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`Federal Rule of Civil Procedure 16(b)(4) provides that “[a] schedule may be modified only
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`for good cause and with the judge’s consent.” S&W Enters., L.L.C. v. SouthTrust Bank of Ala.,
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`NA, 315 F.3d 533, 536 (5th Cir. 2003). “To establish ‘good cause’ a party must show that it ‘could
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`not have met the deadline despite its diligence’ along with satisfaction of the four-part test.” Todd
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`v. Grayson County, No. 4:13-cv-574, 2014 WL 3385188, at *1 (E.D. Tex. July 10, 2014).
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`III. ARGUMENT
`A.
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`There is No Good Cause for Mr. Murphy’s Untimely Deposition
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`Apple provides no explanation for its significant delay. As explained above, Mr.
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`Murphy is a former Apple employee. Apple has been aware of Mr. Murphy’s role as a
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`representative of Apple in the prior negotiations with Hitachi and Maxell since the outset of this
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`case. Maxell identified a June 25, 2013 letter to Mr. Murphy in the original Complaint filed on
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`March 15, 2019 and produced the letter to Apple on July 10, 2019. Apple itself identified Mr.
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`Murphy as the recipient of the letter in its August 14, 2019 interrogatory responses. But Apple did
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`not add Mr. Murphy to its Initial Disclosures until March 5, 2020, just before the close of fact
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`discovery and took no steps during the fact discovery period to obtain his testimony. Although
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`Apple characterizes its Amended Initial Disclosures as “identif[ying] Mr. Murphy as a witness,”
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`Case 5:19-cv-00036-RWS Document 335 Filed 05/20/20 Page 6 of 11 PageID #: 10515
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`the addition is at most identification of a potential witness. Indeed, Apple’s March 5, 2020
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`amendment identified many party and third-party potential witnesses, most of which Apple did
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`not seek to depose. See Ex. 5, Excerpt from 3/5/20 Disclosures. Thus, Apple’s own actions show
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`its Amended Initial Disclosures does not equate to notice of Apple’s intent to depose a third-party.
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`The earliest date that Apple arguably could have given Maxell notice of its intent to depose
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`Mr. Murphy is March 14, just over two weeks before the close of fact discovery. See Motion at
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`Ex. G. However, this alleged “notice” was only in the form of an e-mail (and even then, only a
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`parenthetical in an e-mail). Apple did not take the first step in attempt to secure Mr. Murphy’s
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`deposition testimony until April 30, 2020, one month after the close of fact discovery. Ex. 6,
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`Excerpt from 4/30/20 Subpoena to P. Murphy.
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`Even if Apple’s March 14 e-mail is viewed as notice of Apple’s intent to depose Mr.
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`Murphy, such notice does not equate to proper diligence in order to obtain timely discovery of a
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`witness Apple has known of since the outset of the case. And these facts certainly do not warrant
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`Apple’s requested indefinite extension. Apple argues that it “specifically informed Maxell of its
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`intent to depose Mr. Murphy on March 14, more than two weeks before the original close of fact
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`discovery” and that the “restrictions on depositions imposed by Japanese law prevented Apple
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`from being able to proceed with his deposition.” Motion at 4. This is incorrect. The two weeks that
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`remained of fact discovery was not even close to sufficient notice for a U.S. litigation deposition
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`in Japan. Specifically, after making a reservation and six weeks prior to the deposition, Apple was
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`required to send a certified copy of the court order/commission and statutory deposition fees to the
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`U.S. Embassy or U.S. Consulate General in order to move forward with a deposition in Japan. See
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`Ex. 7, Depositions in Japan at https://jp.usembassy.gov (“Please note that your reservation will be
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`cancelled without further notice if we do not receive [the fees] six weeks prior to the deposition.”).
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`Additionally, at least three weeks prior to the deposition, Apple was required to pay the
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`reservation fee and apply for a deposition visa at the Japanese Embassy or a Consulate in the U.S.
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`Id. Apple does not assert that it had satisfied either of these requirements when it allegedly
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`provided Maxell notice of the intended depositions with only two weeks left in discovery.
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`Based on the foregoing, it is clear that COVID-19 did not prevent Apple from completing
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`Mr. Murphy’s deposition, but rather that Apple simply failed to timely start the process to
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`subpoena or otherwise schedule Mr. Murphy’s deposition within the fact discovery period in the
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`first place. Apple provides absolutely no excuse for this failure.
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`The importance of the discovery. Apple has known of Mr. Murphy’s involvement in
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`Apple-Maxell negotiations since the outset of the case. If Apple genuinely believed that Mr.
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`Murphy’s testimony was as important to this case as it contends (Motion at 6-7), Apple would
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`have undertaken necessary steps, including issuing a subpoena and coordinating dates, locations,
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`etc. for the deposition during the fact discovery period. Merely putting Maxell on notice of Mr.
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`Murphy’s status as a witness during the final weeks of fact discovery is insufficient. Moreover,
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`precluding Apple’s untimely deposition of Mr. Murphy would not prevent Apple from rebutting
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`Maxell’s willfulness allegations. Indeed,
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`. Rather, Apple simply does not like the
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`timely disclosed facts and testimony in this case and wants a mulligan.
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`Potential Prejudice. Allowing Mr. Murphy’s deposition at this stage of the case and
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`rewarding Apple’s lack of diligence will significantly prejudice Maxell. Mr. Murphy’s deposition
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`has the potential to reveal new facts that may affect Maxell’s willfulness allegations and Apple’s
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`defenses thereto. But the time for fact discovery, including two limited extensions to fact
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`Case 5:19-cv-00036-RWS Document 335 Filed 05/20/20 Page 8 of 11 PageID #: 10517
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`discovery, has already closed. D.I. 232 and 238. As of the filing of this opposition, the parties are
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`halfway through expert discovery, having submitted initial expert reports on May 7, 2020. D.I.
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`283. Should Apple decide that it will call Mr. Murphy as a live witness at trial, Maxell asserts that
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`the proper course would be to allow a later deposition of Mr. Murphy closer to trial, once it is clear
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`whether COVID-19 restrictions will be lifted sufficiently that Mr. Murphy can attend and that a
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`deposition can be held (like with Mr. Watrous).
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`Availability of a continuance to cure the prejudice. A continuance would exacerbate,
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`not cure, the prejudice to Maxell. Apple asserts that it cannot “proceed with an in-person deposition
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`at a U.S. Embassy until COVID-19 travel restrictions are relaxed.” Mot. at 6. Given the current
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`status of the pandemic, it is unclear when such restrictions will be removed. Apple should not be
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`permitted to indefinitely hold up the entire case schedule, including trial, for the deposition of a
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`third-party witness who was known to Apple from the outset of the case yet but for which no
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`efforts to timely secure his testimony were taken.
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`B.
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`Apple’s Motion With Respect to Mr. Watrous is Premature
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`Because Apple has not even decided whether to call Mr. Watrous at trial, this issue is not
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`ripe. If Apple decides not to bring Mr. Watrous to trial, his deposition is not necessary.
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`Accordingly, Apple’s Motion with respect to Mr. Watrous is premature and is simply burdening
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`the Court with unnecessary briefing. Moreover, given the parties’ agreement to undertake a later
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`deposition of Mr. Watrous if Apple decides to bring him to trial, a motion for leave is not required.
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`See Fed. R. Civ. P. 30(a)(2)(A) (“A party must obtain leave of court…if the parties have not
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`stipulated to the deposition.”). For these reasons, the Court should deny Apple’s Motion as to Mr.
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`Watrous as premature.
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`IV. CONCLUSION
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`In view of the foregoing, Maxell submits that Apple’s motion for leave should be denied.
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`Case 5:19-cv-00036-RWS Document 335 Filed 05/20/20 Page 9 of 11 PageID #: 10518
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`Dated: May 18, 2020
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`By:
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`/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
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`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`William J. Barrow
`Baldine B. Paul
`Tiffany A. Miller
`Michael L. Lindinger
`Saqib J. Siddiqui
`Bryan C. Nese
`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
`wbarrow@mayerbrown.com
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`mlindinger@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`agelsleichter@mayerbrown.com
`cbakewell@mayerbrown.com
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`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
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`Case 5:19-cv-00036-RWS Document 335 Filed 05/20/20 Page 10 of 11 PageID #: 10519
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`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 335 Filed 05/20/20 Page 11 of 11 PageID #: 10520
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`CERTIFICATE OF SERVICE
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`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.
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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