Case 5:19-cv-00036-RWS Document 36-1 Filed 06/12/19 Page 1 of 4 PageID #: 408
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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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`Defendant.
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`Case No. 5:19-cv-0036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`ORDER FOCUSING PATENT CLAIMS AND PRIOR ART TO REDUCE COSTS
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`The Court ORDERS as follows:
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`1.
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`This Order supplements all other discovery rules and orders. It streamlines the
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`issues in this case to promote a “just, speedy, and inexpensive determination” of this action, as
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`provided by Federal Rule of Civil Procedure 1.
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`Phased Limits on Asserted Claims and Prior Art References
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`2.
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`By the date set in the Court’s Docket Control Order governing the above captioned
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`case, the patent claimant shall serve a Preliminary Election of Asserted Claims, which shall assert
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`no more than ten (10) claims from each patent and not more than a total of [Apple proposes 25
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`Case 5:19-cv-00036-RWS Document 36-1 Filed 06/12/19 Page 2 of 4 PageID #: 409
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`claims1; Maxell proposes 60 claims2].3 By the date set in the Court’s Docket Control Order
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`governing the above captioned case, the patent defendant shall serve a Preliminary Election of
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`Asserted Prior Art, which shall assert no more than twelve (12) prior art references against each
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`patent and not more than a total of [Apple proposes 31 references4; Maxell proposes 70
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`references5].6
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`1 The language highlighted in blue is proposed by Apple and disputed by Maxell. Apple
`proposes limits that are only slightly lower than in the Model Order to account for the fact that
`three of the 10 asserted patents are in a single family. Maxell, meanwhile, proposes expanding
`the case from 46 claims identified in the Complaint to 60 claims in its Preliminary Election—
`nearly double the limit of the Model Order. There is no justification for such a drastic departure,
`and Maxell cannot reasonably intend to try anywhere close to 32 claims (its proposed Final
`Election limit). Indeed, in Maxell’s recent case against ZTE, Maxell asserted close to the same
`number of patents as here but went to trial with only 16 claims at trial and stipulated to partial
`dismissal of four claims from the ’317 Patent (also asserted here) several months before trial.
`Maxell has shown that it can narrow its case and should do so here to allow the parties to
`efficiently and effectively present their claims and defenses to the jury.
`2 Language highlighted in green is proposed by Maxell and disputed by Apple. Because this case
`involves ten (10) patents (only three of which are in the same family) and covers a range of
`diverse technologies and accused products, Maxell believes that the circumstances in this case
`warrant expanding the limits as set forth in the Model Order. Maxell’s proposal of 60 claims
`represents a substantial reduction considering the 132 total claims included in the asserted
`patents. 
`3 Apple proposes including the following footnote: “For purposes of this Order, if the patent
`claimant asserts a dependent claim, the independent claim from which it depends shall also be
`counted against the total number of allowed claims, whether it is asserted or not.” If Maxell
`asserts a dependent claim at trial, it must necessarily prove infringement of the corresponding
`independent claim, regardless of whether it is formally asserted; it is, therefore, fair and
`reasonable to count that independent claim against the limit. Maxell disputes the inclusion of
`this footnote, which is not present in the Court’s Model Order, as it would unreasonably restrict
`the number of asserted claims available to Maxell.
`4 Apple proposes limits on prior art that are proportional to its proposed limits on asserted
`claims. Maxell does not dispute Apple’s proposal, but believes it is appropriate to raise the limit
`on prior art references commensurate with the proposed raised limit on asserted claims.
`5 Language highlighted in green is proposed by Maxell and disputed by Apple. 
`6 For purposes of this Order, a prior art instrumentality (such as a device or process) and
`associated references that describe that instrumentality shall count as one reference, as shall the
`closely related work of a single prior artist.
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`Case 5:19-cv-00036-RWS Document 36-1 Filed 06/12/19 Page 3 of 4 PageID #: 410
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`3.
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`By the date set in the Court’s Docket Control Order governing the above captioned
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`case, the patent claimant shall serve a Final Election of Asserted Claims, which shall identify no
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`more than five (5) asserted claims per patent from among the ten previously identified claims and
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`no more than a total of [Apple proposes 10 claims7; Maxell proposes 32 claims8]. By the date set
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`in the Court’s Docket Control Order governing the above captioned case, the patent defendant
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`shall serve a Final Election of Asserted Prior Art, which shall identify no more than six (6) asserted
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`prior art references per patent from among the twelve prior art references previously identified for
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`that particular patent and no more than a total of [Apple proposes 16 references9; Maxell proposes
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`32 references10]. For purposes of this Final Election of Asserted Prior Art, each obviousness
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`combination counts as a separate prior art reference.
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`4.
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`If the patent claimant asserts infringement of only one patent, all per-patent limits
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`in this order are increased by 50%, rounding up.
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`Modification of this Order
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`5.
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`Subject to Court approval, the parties may modify this Order by agreement, but
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`should endeavor to limit the asserted claims and prior art references to the greatest extent possible.
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`Absent agreement, post-entry motions to modify this Order’s numerical limits on asserted claims
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`7 Language highlighted in blue is proposed by Apple and disputed by Maxell. Apple believes its
`proposed limits are appropriate for the reasons stated above.
`8 Language highlighted in green is proposed by Maxell and disputed by Apple. Maxell believes
`that the circumstances in this case as noted above warrant expanding the limits.  
`9 Language highlighted in blue is proposed by Apple. Apple believes its proposed limits are
`appropriate for the reasons stated above. Maxell does not dispute Apple’s proposal, but believes
`it is appropriate to raise the limit on prior art references commensurate with the proposed raised
`limit on asserted claims.
`10 Language highlighted in green is proposed by Maxell and disputed by Apple. 
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`Case 5:19-cv-00036-RWS Document 36-1 Filed 06/12/19 Page 4 of 4 PageID #: 411
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`and prior art references must demonstrate good cause warranting the modification. Motions to
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`modify other portions of this Order are committed to the sound discretion of the Court.11
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`IT IS SO ORDERED.
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`11 This Order contemplates that the parties and the Court may further narrow the issues during
`pretrial proceedings in order to present a manageable case at trial. 
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