Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 1 of 51 PageID #: 18088
`Case 5:19-cv-00036-RWS Documenfiéfii—fc figfiflflpZ/ZO Page 1 of 51 PageID #: 18088
`
`EXHIBIT 2
`
`EXHIBIT 2
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`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 2 of 51 PageID #: 18089
`
`AO 88B (Rev. 02/14) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action
`
`UNITED STATES DISTRICT COURT
`for the
` Eastern District of Texas
`__________ District of __________
`
`Civil Action No.
`
`5:19-cv-00036-RWS
`
`))))))
`
`Maxell Ltd.
`Plaintiff
`v.
`Apple Inc.
`
`Defendant
`
`To:
`
`SUBPOENA TO PRODUCE DOCUMENTS, INFORMATION, OR OBJECTS
`OR TO PERMIT INSPECTION OF PREMISES IN A CIVIL ACTION
`Sony Corp. of America
`550 Madison Avenue, New York, NY 10022
`(Name of person to whom this subpoena is directed)
`✔
`(cid:117) Production: YOU ARE COMMANDED to produce at the time, date, and place set forth below the following
`documents, electronically stored information, or objects, and to permit inspection, copying, testing, or sampling of the
`material:
`See Attachment A.
`
`Place:
`
`O’Melveny & Myers LLP
`Times Square Tower, 7 Times Square
`New York, NY 10036
`
`Date and Time:
`
`03/20/2020 9:00 am
`
`(cid:117) Inspection of Premises: YOU ARE COMMANDED to permit entry onto the designated premises, land, or
`other property possessed or controlled by you at the time, date, and location set forth below, so that the requesting party
`may inspect, measure, survey, photograph, test, or sample the property or any designated object or operation on it.
`
`Place:
`
`Date and Time:
`
`The following provisions of Fed. R. Civ. P. 45 are attached – Rule 45(c), relating to the place of compliance;
`Rule 45(d), relating to your protection as a person subject to a subpoena; and Rule 45(e) and (g), relating to your duty to
`respond to this subpoena and the potential consequences of not doing so.
`03/06/2020
`Date:
`
`CLERK OF COURT
`
`Signature of Clerk or Deputy Clerk
`
`OR
`
`/s/ Laura Bayne Gore
`Attorney’s signature
`
`Apple Inc.
`The name, address, e-mail address, and telephone number of the attorney representing (name of party)
`, who issues or requests this subpoena, are:
`Laura Bayne Gore, O'Melveny & Myers LLP, 7 Times Square, New York, NY 10036; lbane@omm.com; 212-326-2251
`Notice to the person who issues or requests this subpoena
`If this subpoena commands the production of documents, electronically stored information, or tangible things or the
`inspection of premises before trial, a notice and a copy of the subpoena must be served on each party in this case before
`it is served on the person to whom it is directed. Fed. R. Civ. P. 45(a)(4).
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 3 of 51 PageID #: 18090
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`AO 88B (Rev. 02/14) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action (Page 2)
`
`Civil Action No.
`
`5:19-cv-00036-RWS
`
`PROOF OF SERVICE
`(This section should not be filed with the court unless required by Fed. R. Civ. P. 45.)
`
`I received this subpoena for (name of individual and title, if any)
`.
`
`on (date)
`
`(cid:117) I served the subpoena by delivering a copy to the named person as follows:
`
`(cid:117) I returned the subpoena unexecuted because:
`
`on (date)
`
`; or
`
`Unless the subpoena was issued on behalf of the United States, or one of its officers or agents, I have also
`tendered to the witness the fees for one day’s attendance, and the mileage allowed by law, in the amount of
`$
`.
`
`My fees are $
`
`for travel and $
`
`for services, for a total of $
`
`0.00
`
`.
`
`.
`
`I declare under penalty of perjury that this information is true.
`
`Date:
`
`Additional information regarding attempted service, etc.:
`
`Server’s signature
`
`Printed name and title
`
`Server’s address
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`PUBLIC VERSION
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`

`

`Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 4 of 51 PageID #: 18091
`
`AO 88B (Rev. 02/14) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action(Page 3)
`
`(c) Place of Compliance.
`
`Federal Rule of Civil Procedure 45 (c), (d), (e), and (g) (Effective 12/1/13)
`(ii) disclosing an unretained expert’s opinion or information that does
`not describe specific occurrences in dispute and results from the expert’s
`study that was not requested by a party.
`(C) Specifying Conditions as an Alternative. In the circumstances
`described in Rule 45(d)(3)(B), the court may, instead of quashing or
`modifying a subpoena, order appearance or production under specified
`conditions if the serving party:
`(i) shows a substantial need for the testimony or material that cannot be
`otherwise met without undue hardship; and
`(ii) ensures that the subpoenaed person will be reasonably compensated.
`
` (1) For a Trial, Hearing, or Deposition. A subpoena may command a
`person to attend a trial, hearing, or deposition only as follows:
` (A) within 100 miles of where the person resides, is employed, or
`regularly transacts business in person; or
` (B) within the state where the person resides, is employed, or regularly
`transacts business in person, if the person
` (i) is a party or a party’s officer; or
` (ii) is commanded to attend a trial and would not incur substantial
`expense.
`
` (2) For Other Discovery. A subpoena may command:
` (A) production of documents, electronically stored information, or
`tangible things at a place within 100 miles of where the person resides, is
`employed, or regularly transacts business in person; and
` (B) inspection of premises at the premises to be inspected.
`
`(d) Protecting a Person Subject to a Subpoena; Enforcement.
`
` (1) Avoiding Undue Burden or Expense; Sanctions. A party or attorney
`responsible for issuing and serving a subpoena must take reasonable steps
`to avoid imposing undue burden or expense on a person subject to the
`subpoena. The court for the district where compliance is required must
`enforce this duty and impose an appropriate sanction—which may include
`lost earnings and reasonable attorney’s fees—on a party or attorney who
`fails to comply.
`
` (2) Command to Produce Materials or Permit Inspection.
`(A) Appearance Not Required. A person commanded to produce
`documents, electronically stored information, or tangible things, or to
`permit the inspection of premises, need not appear in person at the place of
`production or inspection unless also commanded to appear for a deposition,
`hearing, or trial.
`(B) Objections. A person commanded to produce documents or tangible
`things or to permit inspection may serve on the party or attorney designated
`in the subpoena a written objection to inspecting, copying, testing, or
`sampling any or all of the materials or to inspecting the premises—or to
`producing electronically stored information in the form or forms requested.
`The objection must be served before the earlier of the time specified for
`compliance or 14 days after the subpoena is served. If an objection is made,
`the following rules apply:
`(i) At any time, on notice to the commanded person, the serving party
`may move the court for the district where compliance is required for an
`order compelling production or inspection.
` (ii) These acts may be required only as directed in the order, and the
`order must protect a person who is neither a party nor a party’s officer from
`significant expense resulting from compliance.
`
` (3) Quashing or Modifying a Subpoena.
`(A) When Required. On timely motion, the court for the district where
`compliance is required must quash or modify a subpoena that:
` (i) fails to allow a reasonable time to comply;
`(ii) requires a person to comply beyond the geographical limits
`specified in Rule 45(c);
`(iii) requires disclosure of privileged or other protected matter, if no
`exception or waiver applies; or
`(iv) subjects a person to undue burden.
`(B) When Permitted. To protect a person subject to or affected by a
`subpoena, the court for the district where compliance is required may, on
`motion, quash or modify the subpoena if it requires:
`(i) disclosing a trade secret or other confidential research,
`development, or commercial information; or
`
`(e) Duties in Responding to a Subpoena.
`
` (1) Producing Documents or Electronically Stored Information. These
`procedures apply to producing documents or electronically stored
`information:
`(A) Documents. A person responding to a subpoena to produce documents
`must produce them as they are kept in the ordinary course of business or
`must organize and label them to correspond to the categories in the demand.
`(B) Form for Producing Electronically Stored Information Not Specified.
`If a subpoena does not specify a form for producing electronically stored
`information, the person responding must produce it in a form or forms in
`which it is ordinarily maintained or in a reasonably usable form or forms.
`(C) Electronically Stored Information Produced in Only One Form. The
`person responding need not produce the same electronically stored
`information in more than one form.
`(D) Inaccessible Electronically Stored Information. The person
`responding need not provide discovery of electronically stored information
`from sources that the person identifies as not reasonably accessible because
`of undue burden or cost. On motion to compel discovery or for a protective
`order, the person responding must show that the information is not
`reasonably accessible because of undue burden or cost. If that showing is
`made, the court may nonetheless order discovery from such sources if the
`requesting party shows good cause, considering the limitations of Rule
`26(b)(2)(C). The court may specify conditions for the discovery.
`
`(2) Claiming Privilege or Protection.
`(A) Information Withheld. A person withholding subpoenaed information
`under a claim that it is privileged or subject to protection as trial-preparation
`material must:
`(i) expressly make the claim; and
`(ii) describe the nature of the withheld documents, communications, or
`tangible things in a manner that, without revealing information itself
`privileged or protected, will enable the parties to assess the claim.
`(B) Information Produced. If information produced in response to a
`subpoena is subject to a claim of privilege or of protection as
`trial-preparation material, the person making the claim may notify any party
`that received the information of the claim and the basis for it. After being
`notified, a party must promptly return, sequester, or destroy the specified
`information and any copies it has; must not use or disclose the information
`until the claim is resolved; must take reasonable steps to retrieve the
`information if the party disclosed it before being notified; and may promptly
`present the information under seal to the court for the district where
`compliance is required for a determination of the claim. The person who
`produced the information must preserve the information until the claim is
`resolved.
`
`(g) Contempt.
`The court for the district where compliance is required—and also, after a
`motion is transferred, the issuing court—may hold in contempt a person
`who, having been served, fails without adequate excuse to obey the
`subpoena or an order related to it.
`
`For access to subpoena materials, see Fed. R. Civ. P. 45(a) Committee Note (2013).
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 5 of 51 PageID #: 18092
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`Plaintiff,
`
`
`
`
`
`
`
`vs.
`
`APPLE INC.,
`
`
`
`
`
`Defendant.
`
` Civil Action No. 5:19-cv-00036-RWS
`
`
`JURY TRIAL DEMANDED
`
`
`
`DEFENDANT APPLE INC.’S NOTICE OF SUBPOENA TO PRODUCE DOCUMENTS
`TO SONY CORPORATION OF AMERICA
`
`Pursuant to Rules 34 and/or 45 of the Federal Rules of Civil Procedure, Defendant Apple
`
`Inc., by and through undersigned counsel of record, have issued the attached Subpoena to Sony
`
`Corporation of America (“Sony”) for the production of documents and things listed in Attachment
`
`A hereto. Sony is required to produce the requested documents at O’Melveny & Myers LLP,
`
`Times Square Tower, 7 Times Square, New York, NY 10036, or at such place as the parties
`
`mutually agree, on March 20, 2020.
`
`Pursuant to the Stipulated Protective Order (Attachment B), the requested documents may
`
`be produced under the relevant protections offered by the Stipulated Protective Order.
`
`
`
`
`
`
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`PUBLIC VERSION
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`

`

`Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 6 of 51 PageID #: 18093
`
`
`Dated: March 6, 2020
`
`
`
`
`
`/s/ Laura Bayne Gore
`
`
`
`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
`
`Xin-Yi Zhou (Pro Hac Vice)
`vzhou@omm.com
`Anthony G. Beasley (TX #24093882)
`tbeasley@omm.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
`
`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
`
`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
`
`Attorneys for Defendant Apple Inc.
`
`
`
`
`
`
`
`PUBLIC VERSION
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`

`

`Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 7 of 51 PageID #: 18094
`
`
`ATTACHMENT A
`DEFINITIONS
`Unless the context indicates otherwise, the following words and phrases have the
`
`meanings given:
`“Sony,” “You” and “Your” mean Sony Corporation of America and any of its
`1.
`predecessors, successors, assigns, agents, employees, officers, directors, affiliates, partners,
`subsidiaries, parent corporations, investors, attorneys or other persons acting on its behalf,
`including but not limited to Sony Corporation.
`“Hitachi” means Hitachi, Ltd. and any of its predecessors, successors, assigns,
`2.
`agents, employees, officers, directors, affiliates, partners, subsidiaries, parent corporations,
`investors, attorneys or other persons acting on its behalf, including but not limited to the entities
`either currently or formerly known as Hitachi Consumer Electronics Co. Ltd., Hitachi Maxell,
`Ltd., Maxell Holdings, Ltd., and/or Maxell, Ltd.
`“Maxell Asserted Patents” means U.S. Patent Nos. 6,748,317; 6,580,999;
`3.
`8,339,493; 7,116,438; 6,408,193; 10,084,991; 6,928,306; 6,329,794; 10,212,586; and 6,430,498.
`“Related Patents” means (a) any patent or patent application which claims
`4.
`priority from any of the Maxell Asserted Patents, (b) any patents or patent applications that claim
`priority from any patent on which any of the Maxell Asserted Patents claims priority, (c) any
`patents or patent applications on which any of the Maxell Asserted Patents depends for priority,
`(d) any reissues or reexaminations of any of the aforementioned patents or patent applications,
`and (e) any foreign counterparts of any of the aforementioned patents or patent applications—all
`whether or not abandoned and whether or not issued.
`“Sony DCR-TRV900” means the Sony DCR-TRV900, as shown in the picture
`5.
`below and described in https://www.sony.net/SonyInfo/News/Press_Archive/199807/98-068/,
`and in “Sony Digital Video Camera Recorder Operating Instructions” for DCR-TRV900,
`available at https://www.sony.com/electronics/support/res/manuals/3864/38646321M.pdf (the
`“DCR-TRV900 Manual”).
`
`
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`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 8 of 51 PageID #: 18095
`
`
`
`“Sony MVC-FD83” means the Sony MVC-FD83, as shown in the picture below
`6.
`and described in “Sony Digital Still Camera Operating Instructions” for MVC-FD83/FD88
`available at https://www.sony.com/electronics/support/res/manuals/W000/W0007221M.pdf (the
`“Mavica Manual”).
`
`
`“Sony MVC-FD88” means the Sony MVC-FD88, as shown in the picture below
`7.
`and described in “Sony Digital Still Camera Operating Instructions” for MVC-FD83/FD88
`available at https://www.sony.com/electronics/support/res/manuals/W000/W0007221M.pdf (the
`“Mavica Manual”).
`
`
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`PUBLIC VERSION
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`

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`Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 9 of 51 PageID #: 18096
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`
`
`The term “date” means the exact date, if known, or the closest approximation to
`8.
`the exact date as can be specified, including without limitation, the year, month, week in a
`month, or part of a month.
`The term “document” shall be construed under the broadest possible construction
`9.
`under the Federal Rules of Civil Procedure and shall include without limitation any written,
`recorded, graphic, or other matter, whether sent or received or made or used internally, however
`produced or reproduced and whatever the medium on which it was produced or reproduced
`(whether on paper, cards, charts, files, or printouts; tapes, discs, belts, video tapes, audiotapes,
`tape recordings, cassettes, or other types of voice recording or transcription; computer tapes,
`databases, e-mails; pictures, photographs, slides, films, microfilms, motion pictures; or any other
`medium), and any other tangible item or thing of readable, recorded, or visual material of
`whatever nature including without limitation originals, drafts, and all non-identical copies of
`each document (which, by reason of any variation, such as the presence or absence of hand-
`written notes or underlining, represents a distinct version). By way of example, the term
`“document(s)” as used herein shall include, without limitation: correspondence; blueprints;
`memoranda; notes; diaries; letters; telegraphs; telegrams; telexes; e-mails; minutes; agendas;
`contracts; reports; studies; checks; statements; receipts; returns; summaries; pamphlets; circulars;
`press releases; advertisements; books; inter-office and intra-office communications; handwritten
`or typewritten notes; notations or summaries of telephone conversations, meetings, or
`conferences; bulletins; computer printouts; databases; teletypes; telefax; invoices; worksheets;
`
`
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`PUBLIC VERSION
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`

`Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 10 of 51 PageID #: 18097
`
`
`photographs; tape recordings; and all other tangible items of readable, recorded, or visual
`material of any kind.
`“Relate” or “relating to” means consisting of, referring to, reflecting, concerning,
`10.
`or being in any way logically or factually connected with the matter discussed.
`11.
`If a document once existed, but has been lost, destroyed, erased, or otherwise is
`no longer in your possession, identify the document and state the details concerning the loss or
`destruction of such document, including the name and address of the present custodian of any
`such document known to you.
`12.
`In the event any document is withheld on a claim of attorney/client privilege or
`work product immunity, provide a detailed privilege log that describes the nature and basis for
`your claim and the subject matter of the document withheld, in a manner sufficient to disclose
`facts upon which you rely in asserting your claim, and to permit the grounds and reasons for
`withholding the document to be identified. Such description should, at a minimum, include:
`a. the date of the document;
`b. an identification of each and every author of the document;
`c. an identification of each and every person who received the document;
`d. an identification of each and every person from whom the document was
`received;
`e. a description of the subject of the document; and
`f. sufficient further information concerning the document and circumstances thereof
`necessary to explain the claim of privilege or immunity and permit the
`adjudication of the propriety of that claim.
`
`
`
`
`
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`PUBLIC VERSION
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`

`

`Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 11 of 51 PageID #: 18098
`
`
`REQUESTS FOR PRODUCTION
`REQUEST FOR PRODUCTION NO. 1:
`Any agreements entered into between Sony and Hitachi that include or convey any rights
`to Sony under any of the Maxell Asserted Patents or Related Patents.
`REQUEST FOR PRODUCTION NO. 2:
`
`Documents sufficient to show the sale of the Sony DCR-TRV900 by Sony in the United
`States prior to January 11, 2000.
`REQUEST FOR PRODUCTION NO. 3:
`
`Documents sufficient to show the sale of the Sony MVC-FD83 by Sony in the United
`States prior to January 11, 2000.
`REQUEST FOR PRODUCTION NO. 4:
`
`Documents sufficient to show the sale of the Sony MVC-FD88 by Sony in the United
`States prior to January 11, 2000.
`REQUEST FOR PRODUCTION NO. 5:
`
`Documents sufficient to show the operation and components of the Sony DCR-TRV900
`relating to (1) the pixel resolution of the image sensor(s); (2) the pixel resolution of still images;
`(3) the pixel resolution of video files; (4) the pixel resolution of the display screen used to
`preview scene before capturing still images; and (5) the pixel resolution conversion method; such
`documents including, for example, user manuals, instructions, guides, release notes, technical
`support documents, datasheets, specifications, source code, bills of materials (BOMs), service
`manuals, and/or schematics of the internal architecture.
`REQUEST FOR PRODUCTION NO. 6:
`
`Documents sufficient to show the operation and components of the Sony MVC-FD83
`relating to (1) the pixel resolution of the image sensor(s); (2) the pixel resolution of still images;
`(3) the pixel resolution of video files; (4) the pixel resolution of the display screen used to
`preview scene before capturing still images; and (5) the pixel resolution conversion method; such
`documents including, for example, user manuals, instructions, guides, release notes, technical
`
`
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 12 of 51 PageID #: 18099
`
`
`support documents, datasheets, specifications, source code, bills of materials (BOMs), service
`manuals, and/or schematics of the internal architecture.
`REQUEST FOR PRODUCTION NO. 7:
`
`Documents sufficient to show the operation and components of the Sony MVC-FD88
`relating to (1) the pixel resolution of the image sensor(s); (2) the pixel resolution of still images;
`(3) the pixel resolution of video files; (4) the pixel resolution of the display screen used to
`preview scene before capturing still images; and (5) the pixel resolution conversion method; such
`documents including, for example, user manuals, instructions, guides, release notes, technical
`support documents, datasheets, specifications, source code, bills of materials (BOMs), service
`manuals, and/or schematics of the internal architecture.
`REQUEST FOR PRODUCTION NO. 8:
`
`Documents related to the marketing and advertising of the Sony DCR-TRV900 in the
`United States, including, for example, sales brochures, print advertisements, marketing
`specifications, and other promotional materials.
`REQUEST FOR PRODUCTION NO. 9:
`
`Documents related to the marketing and advertising of the Sony MVC-FD83 in the
`United States, including for example, sales brochures, print advertisements, marketing
`specifications, and other promotional materials.
`REQUEST FOR PRODUCTION NO. 10:
`
`Documents related to the marketing and advertising of the Sony MVC-FD88 in the
`United States, including, for example, sales brochures, print advertisements, marketing
`specifications, and other promotional materials.
`REQUEST FOR PRODUCTION NO. 11:
`Documents sufficient to identify the date the DCR-TRV900 Manual was first
`disseminated to public.
`
`
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 13 of 51 PageID #: 18100
`
`
`REQUEST FOR PRODUCTION NO. 12:
`Documents sufficient to identify the date the Mavica Manual was first disseminated to
`
`public.
`REQUEST FOR PRODUCTION NO. 13:
`Documents sufficient to indicate whether the DCR-TRV900 Manual was included with
`the sale of the Sony DCR-TRV900 in the United States.
`REQUEST FOR PRODUCTION NO. 14:
`Documents sufficient to indicate whether the Mavica Manual was included with the sale
`of the Sony MVC-FD83 in the United States.
`REQUEST FOR PRODUCTION NO. 15:
`Documents sufficient to indicate whether the Mavica Manual was included with the sale
`of the Sony MVC-FD88 in the United States.
`REQUEST FOR PRODUCTION NO. 16:
`Documents sufficient to show the design, specification, and operation of the Sony
`ICX232AQ CCD solid-state image sensor; such documents including, for example, user
`manuals, instructions, guides, release notes, technical support documents, datasheets,
`specifications, and/or source code.
`
`
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 14 of 51 PageID #: 18101
`Case 5:19-cv-00036-RWS Documentfifigfic EjfigsqgfiZ/ZO Page 14 of 51 PageID #: 18101
`
`ATTACHMENT B
`
`ATTACHMENT B
`
`PUBLIC VERSION
`
`

`

`Case 5:19-cv-00036-RWS Document 380-4 Filed 07/02/20 Page 15 of 51 PageID #: 18102
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`Case 5:19-cv-00036-RWS Document 45 Filed 07/02/19 Page 1 of 37 PageID #: 530
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`Civil Action No. 5:19-cv-00036-RWS
`
`JURY TRIAL DEMANDED
`
`AGREED PROTECTIVE ORDER
`REGARDING THE DISCLOSURE AND USE OF DISCOVERY MATERIALS
`
`Plaintiff Maxell, Ltd. (“Plaintiff”) and Defendant Apple Inc. (“Defendant”)
`
`anticipate that documents, testimony, or information containing or reflecting confidential,
`
`proprietary, trade secret, and/or commercially sensitive information are likely to be disclosed
`
`or produced during the course of discovery, initial disclosures, and supplemental disclosures
`
`in this case and request that the Court enter this Order setting forth the conditions for treating,
`
`obtaining, and using such information.
`
`Pursuant to Rule 26(c) of the Federal Rules of Civil Procedure, the Court finds
`
`good cause for the following Agreed Protective Order Regarding the Disclosure and Use of
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`Discovery Materials (“Order” or “Protective Order”).
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`1.
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`PURPOSES AND LIMITATIONS
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`(a)
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`Protected Material designated under the terms of this Protective Order shall
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`be used by a Receiving Party solely for this case or any related appellate proceeding, and shall not
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`be used directly or indirectly for any other purpose whatsoever.
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`AGREED PROTECTIVE ORDER – PAGE 1
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`(b)
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`The Parties acknowledge that this Order does not confer blanket protections
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`on all disclosures during discovery, or in the course of making initial or supplemental disclosures
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`under Rule 26(a). Designations under this Order shall be made with care and shall not be made
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`absent a good faith belief that the designated material satisfies the criteria set forth below. If it
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`comes to a Producing Party’s attention that designated material does not qualify for protection at
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`all, or does not qualify for the level of protection initially asserted, the Producing Party must
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`promptly notify all other Parties that it is withdrawing or changing the designation.
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`2.
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`DEFINITIONS
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`(a)
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`“Discovery Material” means all items or information, including from any
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`non-party, regardless of the medium or manner generated, stored, or maintained (including, among
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`other things, testimony, transcripts, or tangible things) that are produced, disclosed, or generated
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`in connection with discovery or Rule 26(a) disclosures in this case.
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`(b)
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`“Outside Counsel” means (i) outside counsel who appear on the pleadings
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`as counsel for a Party and (ii) partners, associates, and staff of such counsel to whom it is
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`reasonably necessary to disclose the information for this litigation.
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`(c)
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`For the purpose of this Protective Order only, “Patents-in-suit” means U.S.
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`Patent Nos. 6,748,317 (“the ’317 patent”); 6,580,999 (“the ’999 patent”); 8,339,493 (“the ’493
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`patent”); 7,116,438 (“the ’438 patent”); 6,408,193 (“the ’193 patent”); 10,084,991 (“the ’991
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`patent”); 6,928,306 (“the ’306 patent”); 6,329,794 (“the ’794 patent”); 10,212,586 (“the ’586
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`patent”); and 6,430,498 (“the ’498 patent”), and any other patent asserted in this action, as well as
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`any related patents, patent applications, provisional patent applications, continuations, and/or
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`divisionals.
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`AGREED PROTECTIVE ORDER – PAGE 2
`732788077.1
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`Case 5:19-cv-00036-RWS Document 45 Filed 07/02/19 Page 3 of 37 PageID #: 532
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`(d)
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` “Party” means any party to this case, including all of its officers, directors,
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`employees, consultants, retained experts, and outside counsel and their support staffs.
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`(e)
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`“Producing Party” means any Party or non-party that discloses or produces
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`any Discovery Material in this case.
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`(f)
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`“Receiving Party” means any Party who receives Discovery Material from
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`a Producing Party.
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`(g)
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`“Protected Material” means any Discovery Material that is designated as
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`“CONFIDENTIAL,” “CONFIDENTIAL - ATTORNEYS’ EYES ONLY,” or “CONFIDENTIAL
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`- OUTSIDE ATTORNEYS’ EYES ONLY - SOURCE CODE,” as provided for in this Order.
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`Protected Material shall not include: (i) advertising materials that have been actually published or
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`publicly disseminated; and (ii) materials that show on their face they have been disseminated to
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`the public.
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`(h)
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`“Source Code” means computer code, scripts, assembly, binaries, object
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`code, source code listings and descriptions of source code, object code listings and descriptions of
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`object code, Hardware Description Language (HDL) or Register Transfer Level (RTL) files that
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`describe the hardware design of any ASIC or other chip, and Computer Aided Design (CAD) files
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`that describe the hardware design of any component.
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`3.
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`COMPUTATION OF TIME
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`The computation of any period of time prescribed or allowed by this Order shall
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`be governed by the provisions for computing time set forth in Federal Rules of Civil
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`Procedure 6.
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`AGREED PROTECTIVE ORDER – PAGE 3
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`Case 5:19-cv-00036-RWS Document 45 Filed 07/02/19 Page 4 of 37 PageID #: 533
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`4.
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`SCOPE
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`(a)
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`The protections conferred by this Order cover not only Discovery Material
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`governed by this Order as addressed herein, but also any information copied or extracted
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`therefrom, as well as all copies, excerpts, summaries, or compilations thereof, plus testimony,
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`conversations, or presentations by Parties or their counsel in court or in other settings that might
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`reveal Protected Material.
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`(b)
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`Nothing in this Protective Order shall prevent or restrict a Producing Party’s
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`own disclosure or use of its own Protected Material for any purpose.
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`(c)
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`Notwithstanding the provisions of this Order, any Producing Party may
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`provide written consent permitting any Receiving Party to use the Producing Party’s Protected
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`Material in court or in any court filing.
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`(d)
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`This Order is without prejudice to the right of any Party to seek further or
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`additional protection of any Discovery Material or to modify this Order in any way, including,
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`without limitation, an order that certain matter not be produced at all.
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`5.
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`DURATION
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`Even after the termination of this case, the confidentiality obligations imposed by
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`this Order shall remain in effect until a Producing Party agrees otherwise in writing or a court order
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`otherwise directs.
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`6.
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`ACCESS TO AND USE OF PROTECTED MATERIAL
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`(a)
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` Basic Principles. All Protected Material shall be used solely for this case
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`or any related appellate proceeding, and not for any other purpose whatsoever, including without
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`limitation any other litigation, patent prosecution or acquisition, patent reexamination or reissue
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`AGREED PROTECTIVE ORDER – PAGE 4
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`proceedings, or any business or competitive purpose or function. Protected Material shall not be
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`distributed, disclosed or made available to anyone except as expressly provided in this Order.
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`(b)
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`Patent Prosecution Bar. Absent the written consent of the Producing Party,
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`any person who receives one or more items designated “CONFIDENTIAL – ATTORNEYS’
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`EYES ONLY