Case 5:19-cv-00036-RWS Document 417 Filed 07/17/20 Page 1 of 20 PageID #: 21922
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`v.
`
`APPLE INC.,
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`Plaintiff,
`
`Defendant.
`
`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`
`
`MAXELL, LTD.’S OPPOSITION TO DEFENDANT APPLE INC.’S MOTION
`TO STRIKE PORTIONS OF MAXELL’S OPENING EXPERT REPORTS THAT
`EXCEED THE SCOPE OF MAXELL’S P.R. 3-1 INFRINGEMENT CONTENTIONS
`AND NEW EXPERT THEORIES OFFERED AFTER EXPERT REPORTS
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`Case 5:19-cv-00036-RWS Document 417 Filed 07/17/20 Page 2 of 20 PageID #: 21923
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`Table of Contents
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`PAGE
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`I.
`II.
`III.
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`IV.
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`INTRODUCTION ............................................................................................................. 1
`LEGAL STANDARDS ..................................................................................................... 1
`ARGUMENT ..................................................................................................................... 2
`A.
`Maxell’s Opening Expert Reports Do Not Contain Any New Infringement
`Theories.................................................................................................................. 2
`1.
` Theory in Dr. Madisetti’s Report ................................. 2
`2.
` Theory in Dr. Vojcic’s and Mr.
`Crockett’s Reports ..................................................................................... 7
` DOE Theory in Dr. Madisetti’s Report ................................. 10
`3.
`Dr. Tim Williams Does Not Intend to Offer Any Opinions Not Disclosed
`in His Expert Reports at Trial, and Thus There is Nothing to Strike................... 11
`Apple Has Not Shown That It Has Suffered Any Prejudice ................................ 13
`C.
`CONCLUSION ................................................................................................................ 14
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`B.
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`Case 5:19-cv-00036-RWS Document 417 Filed 07/17/20 Page 3 of 20 PageID #: 21924
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
`
`Bridgelux, Inc. v. Cree, Inc.,
`No. 9:06-cv-240, 2008 WL 5549448 (E.D. Tex. Aug. 20, 2008) ............................................12
`
`Core Wireless Licensing, S.A.R.L. v. LG Elecs., Inc.,
`No. 2:14-cv-91, 2016 WL 3655302 (E.D. Tex. Mar. 21, 2016) ..........................................2, 13
`
`EON Corp. IP Holdings, LLC v. Sensus USA Inc.,
`Case No. 6:09-cv-116, 2010 WL 346218 (E.D. Tex. Jan. 21, 2010) .........................................1
`
`Erfindergemeinschaft UroPep GbR v. Eli Lilly and Co.,
`240 F. Supp. 3d 605 (E.D. Tex. 2017) .....................................................................................13
`
`Laserdynamics, Inc. v. Quanta Computer, Inc.,
`No. 2:06-cv-348-JRG-CE, D.I. 724 (E.D. Tex. Jan. 18, 2011) ...............................................14
`
`Linex Techs., Inc. v. Belkin Int’l, Inc.,
`628 F. Supp. 2d 703 (E.D. Tex. 2008) .......................................................................................1
`
`Mobile Telecommunications Technologies, LLC v. Blackberry Corp.,
`No. 3:12-cv-1652, 2016 WL 2907735 (N.D. Tex. May 17, 2016) ............................................2
`
`Motion Games, LLC v. Nintendo Co.,
`No. 6:12-cv-878, 2015 WL 1774448 (E.D. Tex. Apr. 16, 2015) ..............................................2
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)................................................................................................11
`
`PerdiemCo, LLC v. IndusTrack LLC,
`No. 2:15-cv-00727, 2016 WL 8189021 (E.D. Tex. Oct. 25, 2016) .........................................14
`
`Realtime Data, LLC v. Packeteer, Inc.,
`No. 6:08-cv-144, 2009 WL 2590101 (E.D. Tex. Aug. 18, 2009) ........................................2, 13
`
`Tinnus Enterprises, LLC v. Telebrands Corp.,
`No. 6:15-cv-00551-RWS, 2019 WL 1556252 (E.D. Tex. Apr. 10, 2019) ..............................12
`
`Other Authorities
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`Fed. R. Civ. P. 26(a)(2)(B)(ii)..........................................................................................................8
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`Case 5:19-cv-00036-RWS Document 417 Filed 07/17/20 Page 4 of 20 PageID #: 21925
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`TABLE OF ABBREVIATIONS
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`Abbreviation
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`Description
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`Maxell
`Apple
`Infr. Cont.
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`Madisetti Rpt.
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`Markman Hr. Tr.
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`Vojcic Rpt.
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`Crockett Rpt.
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`Williams Dep. Tr.
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`Plaintiff Maxell, Ltd.
`Defendant Apple Inc.
`Plaintiff Maxell, Ltd’s Infringement Contentions Pursuant to
`Patent Local Rules 3-1 and 3-2 served June 12, 2019
`and appendices thereto and Plaintiff Maxell, Ltd’s Second
`Supplemental Infringement Contentions Pursuant to Patent
`Local Rules 3-1 and 3-2 served March 13, 2020 and appendices
`thereto
`Relevant Excerpts at Ex. 1
`Initial Expert Report of Vijay Madisetti, Ph.D. Concerning
`Apple’s Infringement of U.S. Patent No. 8,339,493, served May
`7, 2020
`Relevant Excerpts at Ex. 2
`Transcript of Markman Hearing dated January 8, 2020
`Relevant Excerpts at Ex. 3
`Initial Expert Report of Branimir Vojcic, Ph.D. Concerning
`Apple’s Infringement of U.S. Patent No. 6,408,193, served May
`7, 2020
`Relevant Excerpts at Ex. 4
`Expert Report of John Crockett Regarding Source Code
`Relating to Cellular Functionalities, served May 7, 2020
`Relevant Excerpts at Ex. 5
`Deposition Transcript of Tim A. Williams, Ph.D., dated June
`25, 2020
`Relevant Excerpts at Ex. 6
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`I.
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`INTRODUCTION
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`Apple’s Motion (D.I. 365) improperly conflates theories of infringement with evidence of
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`infringement. Maxell’s opening expert reports do not disclose any new infringement theories;
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`rather, they (1) provide a more technically detailed explanation of Maxell’s previously disclosed
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`infringement theories and (2) identify confidential evidence in support of such theories that was
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`produced by Apple during discovery and was not otherwise publicly available. The information
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`Apple seeks to strike is exactly the type of information and documentary evidence allowed and
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`required in an expert report under Rule 26. Apple’s attempt to address its disagreement with
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`Maxell’s expert’s application of existing infringement theories through a motion to strike is
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`improper. Cross examination—not exclusion—is the proper means for Apple to attack the bases
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`of the infringement opinions of Maxell’s experts. Moreover, there is no prejudice here as Apple’s
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`experts have already fully responded to these allegedly new infringement theories. The Court
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`should therefore deny Apple’s Motion in its entirety.
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`II.
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`LEGAL STANDARDS
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`Proper infringement contentions under P.R. 3-1 provide a defendant with notice of a
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`plaintiff’s infringement theories. Linex Techs., Inc. v. Belkin Int’l, Inc., 628 F. Supp. 2d 703, 706
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`(E.D. Tex. 2008) (noting “enough specificity is required to give an alleged infringer notice of the
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`patentee’s claims”); see also D.I. 204 at 4 and 338 at 4. “The Rules do not require the disclosure
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`of specific evidence nor do they require a plaintiff to prove its infringement case.” EON Corp. IP
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`Holdings, LLC v. Sensus USA Inc., Case No. 6:09-cv-116, 2010 WL 346218, at *2 (E.D. Tex.
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`Jan. 21, 2010). “Infringement contentions are not intended to act as a forum for argument about
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`the substantive issues but rather serve the purpose of providing notice to the Defendants of
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`infringement theories beyond the mere language of the patent claim.” Motion Games, LLC v.
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`Nintendo Co., No. 6:12-cv-878, 2015 WL 1774448, at *2 (E.D. Tex. Apr. 16, 2015); see also
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`Realtime Data, LLC v. Packeteer, Inc., No. 6:08-cv-144, 2009 WL 2590101, at *5 (E.D. Tex.
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`Aug. 18, 2009) (“[T]he preparation and supplementation of infringement contentions is a matter
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`of pleading and merely notifies a defendant of the asserted theories of infringement in order to
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`provide adequate notice and streamline discovery.”).
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`“Although expert infringement reports may not introduce theories not previously set forth
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`in infringement contentions,...the scope of infringement contentions and expert reports are not,
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`however, coextensive.’” Core Wireless Licensing, S.A.R.L. v. LG Elecs., Inc., No. 2:14-cv-91,
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`2016 WL 3655302, at *4 (E.D. Tex. Mar. 21, 2016) (internal citations omitted). A plaintiff’s
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`infringement contentions are “not required to cite all the evidence its experts would rely upon”
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`and do not need to “disclose the details of its experts’ analyses.” Id. In deciding a motion to
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`strike portions of an expert report on infringement, “[t]he critical question…is whether the expert
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`has permissibly specified the application of a disclosed theory or impermissibly substituted a
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`new theory altogether.” Mobile Telecommunications Technologies, LLC v. Blackberry Corp.,
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`No. 3:12-cv-1652, 2016 WL 2907735, at *1 (N.D. Tex. May 17, 2016).
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`III.
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`ARGUMENT
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`A.
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`Maxell’s Opening Expert Reports Do Not Contain Any New Infringement
`Theories
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`1.
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`“
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`” Theory in Dr. Madisetti’s Report
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`The
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` discussed in Dr. Madisetti’s expert report do not present a
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`new infringement theory. Rather, Maxell’s theory of infringement for the ’493 Patent (as
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`disclosed in its June 2019 contentions) is that Apple’s devices perform the mixing and culling
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`operation by processing pixel data to generate images of lower resolution than the number of
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`pixels in the image sensor (such as 1080p or 720p). Ex. 1, Infr. Cont., Appx. 3, at 179-181.
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`Maxell even performed exemplary math to show how the pixels used in the outputted images are
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`less than the pixels on the image sensor. Id. at 183-184. Furthermore, Maxell explicitly
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`identified
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` as evidence of this theory when it supplemented its infringement contentions
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`on March 13, 2020. Ex. 1, Inf. Cont., Appx. 3-A, at 14-17 (disclosing
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` twelve times
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`including for claim elements [5.e] and [5.f]) (highlighting added):
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`Maxell is at a loss as to what more information it could have provided in its infringement
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`contentions to put Apple on notice of this theory. Dr. Madisetti’s opinions merely provide
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`evidence of this theory by explaining that one way Apple’s accused products accomplish this
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`mixing or culling is by reducing the image signals from the image sensor.
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`In its Motion, Apple construes
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` in an attempt to distinguish them
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`to support its argument that Maxell did not disclose the infringement theory of “
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`” Apple
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`states that
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` Mot. at 4. Even applying Apple’s definition, Maxell disclosed the
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` that Apple now claims was missing. Specifically, Maxell disclosed in its infringement
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`contentions that the image sensor is selecting a lower number of pixels for reading out the image
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`as part of performing the downsampling/culling of pixels for claim 5:
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`Upon information and belief the displayed image is a downsampled/culled version
`of the image on the sensor, or the array of pixels from the area of the image
`sensor selected for read-out, with a lower number of lines than the image on
`the sensor as the resolution of the image sensor in the Apple ’493 Products is
`higher than the resolution of the display.
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`Ex. 1, Infr. Cont., Appx. 3, at 179. During the Markman process, counsel for Apple provided a
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`tutorial concerning the meaning of certain claim terms in the ’493 Patent, including mixing and
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`culling. Ex. 3, Markman Hr. Tr. at 135:10-22 (“an image sensor that includes 1200 lines in the
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`vertical direction and those lines are down converted into 240 lines to match the number of lines
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`within a field of display”), 145:6-147:3 (generally describing culling as selection of pixels).
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`Clearly, Apple and its counsel had no issue understanding that the image processing functions
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`(e.g., downsampling/downscaling) in the claims include the image sensor selecting fewer pixels
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`after down conversion. This is precisely the theory Maxell had disclosed in its infringement
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`contentions. Thus, even if Apple’s definition of “
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`” in its Motion is correct—which
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`Maxell does not concede—Maxell explicitly disclosed this theory in June 2019 by explaining
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`that the image sensor is selecting a downsampled/culled array of pixels to display.
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`Dr. Madisetti’s opinion that mixing or culling includes “
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`” (Mot. at 4) merely explains how Apple processes pixel data
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`to
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`downconvert/downsample/cull the number of pixels from the image sensor to the final outputted
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`image. Ex. 2, Madisetti Rpt. at ¶ 421. This is not a new theory; it is evidence obtained during
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`discovery that supports Maxell’s previously disclosed infringement theory.
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`Apple states that “Apple was unaware that the
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` feature was accused of
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`infringing Claim 5, [and] it could not have anticipated Maxell’s
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` infringement
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`theory.” Mot. at 5. But Maxell’s infringement contentions explicitly used the word “
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`”
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`and Maxell disclosed
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` in its June 2019 and March 2020 infringement contentions
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`numerous times, including for claim element [5.f]. Ex. 1, Infr. Cont., Appx. 3, at 115 (“choose
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`other frame rates” to record videos consistent with Slo-Mo), 124 (identifying different fps rates
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`for videos indicative of Slo-Mo functionality), 125 (“Video FPS”), 126 (“Video FPS”), 168
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`(“choose other frame rates”), 186 [5.f] (“record videos on your iPhone and change modes to take
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`slow motion and time-lapse videos” . . . “choose other frame rates”) (emphasis added), 187
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`(excerpt from Apple website showing video recording in different frame rates including “30 fps”
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`or “60 fps”), 188-190 (showing screenshots of “Record Video” at different fps: “As the
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`preceding screenshots show, the iPhone X can record moving videos in a variety of video
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`formats”) (emphasis added), and 191 (“Video Recording” excerpt from Apple’s website
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`showing video formats in different frame rates “fps”). Even a cursory review of Maxell’s
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`infringement contentions shows that the functionalities of image sensor downsampling/culling
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`pixels, “
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`” and
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` were disclosed.
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`Moreover, Apple points to paragraphs 366, 378, 390, 393, 404, 405, 420‒423, 432,
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`488‒493, 496‒498, 502, 504, 513, 516‒517, 538‒539, and 548 of Dr. Madisetti’s expert report
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`as being directed to the allegedly new
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` theory. Mot. at 3. But Apple’s citations are overly
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`broad. For example, paragraph 366 simply mentions
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` in passing; the real point of this
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`paragraph is to explain
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`. Ex. 2, Madisetti Rpt.
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`Likewise, paragraphs 404, 405, and 420 merely describe aspects of Apple’s source code files. Id.
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`Paragraphs 496-498 refer to
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`. Id. Apple’s allegation concerning paragraph 393 is the most off-base: this paragraph
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`discusses the
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`. Id. By simply
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`objecting to each instance of Dr. Madisetti’s use of the word “
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`” Apple makes clear that it
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`did not undertake a serious, substantive review of many of these paragraphs before moving to
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`strike.
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`Moreover, Apple points to a technical document to support its allegation that Maxell
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`knew that “Apple’s products perform ‘
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`’ since 2019” and withheld this theory.
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`Mot. at 5. This logic, however, exposes the flaw in Apple’s understanding of the purpose of the
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`contentions. It is a notice function. Maxell is not obligated to supplement its contentions each
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`time Apple produces a document that provides supporting evidence of Maxell’s infringement
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`theory. Further, while Apple points to the document produced in 2019, Apple fails to mention
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`that Apple withheld discovery of
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` for each of the image
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`sensors in the accused iPhones until the very last day of discovery (March 31, 2020). Even then,
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`Apple did not provide the
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` documents for all of the accused sensors until the evening of
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`April 17, 2020, after Maxell explicitly requested these. Ex. 7, Ltr. From J. Beaber to M.
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`Pensabene dated April 13, 2020. Thus, if anyone was withholding information, it was Apple, not
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`Maxell. Under Apple’s logic, Maxell would have needed to supplement the infringement
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`contentions numerous times up until April 13, 2020 when Apple produced the last set of
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`With respect to the 3 source code files (
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`) that Apple alleges were not included in Maxell’s infringement
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`.
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`contentions (Mot. at 4), Maxell contends that these files merely provide evidence of Maxell’s
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`previously disclosed infringement theories. However, in an effort to narrow the disputes between
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`the parties, Maxell agrees to not rely on these files and to strike portions of paragraphs 422-423
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`of Dr. Madisetti’s expert report as follows:
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`In short, Dr. Madisetti’s Report does not include any new
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` theory but
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`merely provides evidence of the claimed “mixing or culling” based on the testimony and
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`evidence produced by Apple in this case. Further, “
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`” operations were specifically,
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`repeatedly, and consistently disclosed in Maxell’s infringement contentions in June 2019 and
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`again in March 2020.
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`2.
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`Crockett’s Reports
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` Theory in Dr. Vojcic’s and Mr.
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`Apple alleges that Mr. Crockett and Dr. Vojcic are including a new undisclosed
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`infringement
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`theory for
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`the ’193 Patent by pointing
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`to a single source code file,
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`. Mot. at 7. Once again, this single source code file is not a new theory; it is
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`merely evidence in support of Maxell’s previously disclosed infringement theory that the accused
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`products perform the claimed function of “closed loop power control” and “gain control” of the
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`variable amplitude amplifier. Such evidence is not only allowed, but an essential part of an
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`expert report. See Fed. R. Civ. P. 26(a)(2)(B)(ii) (stating that an expert’s report must contain “the
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`facts or data considered by the witness in forming” his or her opinions). In fact, when opining on
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`this source code file, Mr. Crockett specifically explained that “[s]ource code related to
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`functionality was disclosed at Appendix 5-A at 5. Further,
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` See Ex. 5, Crockett Rpt. at 27, n. 1; see also Ex. 1, Inf. Cont., Appx. 5-A at
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`5 (including five references to “
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`” when disclosing infringement theories with source
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`code).
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`Apple tries to manufacture a distinction by stating that “Maxell’s SSIC alleged only that
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` was somehow never part of
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`Maxell’s disclosed infringement theories. Mot. at 6-7. Apple is wrong for several reasons. First,
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`Dr. Vojcic’s and Mr. Crockett’s expert reports explicitly explain that “
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`” Ex. 4, Vojcic Rpt. at
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`2087; Ex. 5, Crockett Rpt. at 27. As both experts explained, the
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`code file is evidence to support Maxell’s disclosed power control theories
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` source
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`opined that
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`. Notably, Dr. Vojcic also
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`that Apple is not moving to strike these portions of Dr. Vojcic’s expert report is a clear
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` Ex. 4, Vojcic Rpt. at ¶¶ 665-666 (emphasis added). The fact
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`admission that
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` is in fact being used in the context of Maxell’s previously disclosed
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`infringement theories
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`mischaracterizes.
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`Second,
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` as Apple
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`, which Maxell does not concede,
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`Maxell’s infringement contentions were never limited to t
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` for the claim
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`element “said controller controls a gain of said variable amplitude amplifier and a bias condition
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`of said power amplifier using a set of bias and gain data stored in said memory,” as alleged by
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`Apple. Indeed, Maxell explicitly identified the “unified Qualcomm RF front-end solution” in its
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`infringement contentions for this claim element with a block diagram showing both transit and
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`receive paths and components:
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`Ex. 1, Inf. Cont., Appx. 5 at 303 (red annotations added). Maxell was even more specific when
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`discussing bias and gain control, highlighting amplifiers in the receive path and identifying them
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`within datasheets. Id. at 290-291 (highlighting low-noise amplifiers in the “RX” path), 300
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`(highlighting control of “Low-Noise Amplifiers (LNA)” in the receive path), 315-316
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`(specifically identifying components in the receive path “low-noise amplifiers”), 325 (“Low-
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`Noise Amplifiers (LNA)”), and 328 (“unified Qualcomm RF front-end solution”). Again, Apple
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`is simply mischaracterizing the evidence cited by Maxell’s experts as a new theory, which it is
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`not. The theory was sufficiently disclosed. And this source code file provides evidence that the
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`accused products infringe the disclosed theory.
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`3.
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` DOE Theory in Dr. Madisetti’s Report
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`Apple argues that it did not have notice of Maxell’s doctrine of equivalents theory that
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` also achieves substantially the same result” as the
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`claimed “
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`” function for claim element 6.b of the ’493 Patent. Mot. at 7. While Apple
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`admits that Maxell did put Apple on notice that claim element 6.b also infringes under the
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`doctrine of equivalents, Apple blatantly only includes one sentence from Maxell’s infringement
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`contentions to argue that this was a “conclusory” theory. Mot. at 8.
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`To the contrary, Maxell explicitly disclosed Apple’s “VideoStabilizationMode,” which
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`corresponds to “VIS” mode, in its infringement contentions as accused functionality for this
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`claim element (Ex. 1, Inf. Cont., Appx. 3 at 211, 213) and then followed up this disclosure of
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`VIS with the following language putting Apple on notice that VIS also infringes under DOE:
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`To the extent Defendant argues that this limitation is not literally met in any
`Accused Apple ’493 Product, pursuant to P.R. 3-1(d), Maxell asserts that this
`limitation is met under the doctrine of equivalents because the identified structure
`matches the function, way, and result of the claimed element and, to the extent
`there is a difference, the difference is insubstantial. For example, to the extent that
`Defendant argues that the Accused Apple ’493 Products do not have an image-
`instability detector, each of these products include software, hardware, or a
`combination of the two that perform the equivalent function of detecting an
`amount of image-instability of the camera. Using this software, hardware, or
`combination of the two, these products perform substantially the same function as
`an image-instability detector sensing in substantially the same way as claimed.
`The performance of this function achieves substantially the same result, for
`example, detecting an image-instability of the electric camera.
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`Id. at 214-215. Dr. Madisetti is merely elaborating on Maxell’s disclosed doctrine of equivalents
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`theory by explaining that the disclosed VIS also meets claim element 6.b under the doctrine of
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`equivalents. That is, the same analysis relied on to show direct infringement, if found to be
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`lacking, is alternatively proof that the products infringe under the doctrine of equivalents. It
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`appears that Apple’s quarrel is with Dr. Madisetti’s application of Maxell’s doctrine of
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`equivalents theory—i.e., the expert’s opinion—and not Maxell’s failure to disclose the
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`underlying infringement theory in its infringement contentions.
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`B.
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`Dr. Tim Williams Does Not Intend to Offer Any Opinions Not Disclosed in
`His Expert Reports at Trial, and Thus There is Nothing to Strike
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`As Apple is aware, and Maxell agrees, expert witnesses cannot opine on the proper
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`construction of claim terms in front of the jury. See O2 Micro Int’l Ltd. v. Beyond Innovation
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`Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (“When the parties raise an actual dispute
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`regarding the proper scope of the[] claims, the court, not the jury, must resolve that dispute.”).
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`Dr. Williams will not be opining at trial on the difference in the “scope” of claims 1 and 16 as
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`Apple alleges. It is thus unclear what Apple is attempting to exclude in its Motion.
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`Apple agrees that Dr. Williams’s opinions in his expert report regarding the scope of
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`claims 1 and 16 of the ’586 Patent align with the opinions of Apple’s own expert. Mot. at 9. And
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`Dr. Williams did not present any new theory at his deposition. Consistent with his expert report,
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`Dr. Williams testified during his deposition that both mobile terminals are in locked state when
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`they perform the transmission. Ex. 6, Williams Dep. Tr. 241:10-14 (“after mobile terminal 1 is
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`in a locked state, the other terminals in the locked state and the other terminal is within
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`communication range of the transceiver while in a locked state performing the transmission.”)
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`(emphasis added). This is what Dr. Williams will also testify to at trial. i.e., both devices are
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`locked. Unsatisfied with this answer and in an attempt to manufacture a dispute, Apple’s counsel
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`continued to ask Dr. Williams questions about claim interpretation. In response, Dr. Williams
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`correctly noted that there are differences in claim scope between claims 1 and 16 because they do
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`not include identical language. For example, he explained that “[c]laim Element 1F doesn’t
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`restrict the short-range wireless communications of the transceiver after the -- after the
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`transmission.” Ex. 6, Williams Dep. Tr. 239:7-13 (emphasis added). Dr. Williams was merely
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`explaining that the claim does not talk about restricting the state of the mobile terminal after the
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`transmission is complete.
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`Put simply, claim 1 is directed to “[a] mobile terminal” and claim 16 is directed to “[a]
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`lock state control system,” and both claims do differ in scope, as Dr. Williams explained. But as
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`Dr. Williams described both in his expert reports and during his deposition, claims 1 and 16
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`include a condition whereby both mobile terminals communicate when they are locked, and this
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`is the second condition of both claims 1 and 16. Ex. 6, Williams Dep. Tr. 241:10-14. That was
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`the entire purpose of Dr. Williams’s testing of Apple’s accused products which he relied on in
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`part to show infringement, and that is the infringement theory Dr. Williams will be testifying to
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`at trial.
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`To the extent Apple believes that Dr. Williams provides an opinion outside the scope of
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`his expert reports or improperly discusses claim construction issues in front of the jury, Apple
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`should object to such testimony at trial rather than filing a motion to strike Dr. Williams’s future
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`hypothetical testimony. See, e.g., Tinnus Enterprises, LLC v. Telebrands Corp., No. 6:15-cv-
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`00551-RWS, 2019 WL 1556252, at *3 (E.D. Tex. Apr. 10, 2019) (“As to the contention that
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`[plaintiff’s expert] intends to offer opinions outside of his expert report, the Court finds no basis
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`to preemptively strike [plaintiff’s expert’s] opinions. Indeed, the record reflects that the
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`testimony in question was provided in response to Defendants’ questioning of [plaintiff’s expert]
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`during his deposition…Furthermore, the parties will provide the Court with copies of all expert
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`reports prior to the start of trial and the Court can appropriately take up any objections to expert
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`opinion being outside the scope during the course of testimony at trial.”); Bridgelux, Inc. v. Cree,
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`Inc., No. 9:06-cv-240, 2008 WL 5549448, at *4 (E.D. Tex. Aug. 20, 2008) (“[T]he court expects
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`that competent counsel will know how to properly and timely object during the proceedings. The
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`court will not preemptively strike testimony that has not yet been given.”).
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`Indeed, had Apple paid heed to the entirety of Dr. Williams’s deposition testimony,
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`Apple would have realized there was no need to file this Motion with respect to Dr. Williams. At
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`the end of his deposition, Dr. Williams confirmed that nothing he said in his deposition changes
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`any of the opinions that are included in his expert reports. Ex. 6, Williams Dep. Tr. 297:9-12
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`(“Q. Did anything you said during your deposition change any of the opinions that are included
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`in your expert reports? A. No.”).
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`C.
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`Apple Has Not Shown That It Has Suffered Any Prejudice
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`Apple will suffer not a hint of prejudice should its Motion be denied. As explained above,
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`Maxell has not offered any infringement theories outside the scope of its infringement
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`contentions, and Apple has not shown that it lacked sufficient notice of any of Maxell’s
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`infringement theories. At most, all Apple has shown is that Maxell’s experts relied on specific
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`evidence that was not identified in Maxell’s infringement contentions. But “[i]nfringement
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`contentions are not intended to require a party to set forth a prima facie case of infringement and
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`evidence in support thereof.” Realtime Data, 2009 WL 2590101, at *5; see also Core Wireless,
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`2016 WL 3655302, at *4 (“[Plaintiff’s] infringement contentions were not required to cite all the
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`evidence its experts would rely upon, nor was [plaintiff] required to disclose the details of its
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`experts’ analyses.”).
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`Even if the Court were to find that the infringement theories Apple complains about in its
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`Motion are not strictly found in Maxell’s infringement contentions, Apple’s experts have already
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`had the opportunity to fully respond to the merits of Maxell’s theories in their rebuttal expert
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`reports. See Erfindergemeinschaft UroPep GbR v. Eli Lilly and Co., 240 F. Supp. 3d 605, 626
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`(E.D. Tex. 2017) (finding no prejudice where plaintiff made no argument that it was deprived of
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`the opportunity to introduce evidence of its own or to respond meaningfully to defendant’s
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`evidence). And Apple had the opportunity to question Maxell’s experts at their depositions
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`regarding such theories. See Laserdynamics, Inc. v. Quanta Computer, Inc., No. 2:06-cv-348-
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`JRG-CE, D.I. 724 at 2 (E.D. Tex. Jan. 18, 2011) (“It is undisputed, however, that [plaintiff] had
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`the opportunity to, and did, question [defendant’s expert] regarding the opinions he set forth in
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`paragraph three. As such, the court concludes that [plaintiff] has not suffered prejudice as a result
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`of any untimely disclosure.”). Apple has not identified any substantial prejudice that would
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`warrant granting its Motion, such as requiring supplemental expert reports or entirely new expert
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`witnesses.
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`Given the lack of prejudice, the Court should deny Apple’s Motion. PerdiemCo, LLC v.
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`IndusTrack LLC, No. 2:15-cv-00727, 2016 WL 8189021, at *2 (E.D. Tex. Oct. 25, 2016)
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`(denying motion to strike because there was “no danger of unfair prejudice” to plaintiff).
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`IV.
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`CONCLUSION
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`For all the foregoing reasons, Maxell respectfully requests that this Court deny Apple’s
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`Motion to Strike Portions of Maxell’s Opening Expert Reports that Exceed the Scope of
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`Maxell’s P.R. 3-1 Infringement Contentions and New Expert Theories Offered After Expert
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`Reports.
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`Dated: July 15, 2020
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`/s/ Jamie B. Beaber
`Geoff Culbertson
`Kelly Tidwell
`Patton, Tidwell & Culbertson, LLP
`2800 Texas Boulevard (75503)
`Post Office Box 5398
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`By:
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`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
`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