Case 5:19-cv-00036-RWS Document 447-8 Filed 07/27/20 Page 1 of 8 PageID #: 24979
`Case 5:19-cv-00036—RWS Document 447-8 Filed 07/27/20 Page 1 of 8 PageID #: 24979
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`EXHIBIT 7
`EXHIBIT 7
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`Case 5:19-cv-00036-RWS Document 447-8 Filed 07/27/20 Page 2 of 8 PageID #: 24980
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
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`MAXELL, LTD.,
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`Plaintiff,
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`vs.
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`APPLE INC.,
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`Defendant.
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` Civil Action No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`DEFENDANT APPLE INC.’S SECOND AMENDED
`INITIAL AND ADDITIONAL DISCLOSURES
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`In accordance with Fed. R. Civ. P. 26(a)(1) and Paragraphs 1 and 3 of the Court’s June 25,
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`2019 Discovery Order for Patent Cases [ECF 42], Defendant Apple Inc. (“Apple”) provides the
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`following second amended initial and additional disclosures of information to Plaintiff Maxell,
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`Ltd. (“Maxell”). These disclosures are based upon Apple’s current knowledge and upon
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`information that is reasonably available to Apple at this time and within Apple’s possession,
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`custody, or control as of the present date. This investigation is ongoing, however, and Apple
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`expressly reserves the right to supplement these disclosures. Apple’s disclosures are made without
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`waiver of, or prejudice to, any objections that Apple may have regarding the subject matter of
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`these disclosures and any documents or individuals identified herein.
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`I.
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`INITIAL DISCLOSURES REQUIRED UNDER THE COURT’S DISCOVERY
`ORDER
`A.
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`The Correct Names of the Parties to the Lawsuit
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`The correct name of Apple is: Apple Inc. Apple refers to Maxell’s disclosures regarding
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`the correct names of other parties to the lawsuit.
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`Page 1 of 31
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`Case 5:19-cv-00036-RWS Document 447-8 Filed 07/27/20 Page 3 of 8 PageID #: 24981
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`B.
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`The Name, Address, and Telephone Number of Any Potential Parties
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`Apple is not currently aware of any potential additional parties to this lawsuit. Because the
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`identities of potential parties may be revealed through discovery in this matter, Apple specifically
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`reserves the right to identify and seek to join, upon a showing of good cause, potential parties as
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`discovery proceeds, if necessary.
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`C.
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`The Legal Theories and Factual Bases of the Disclosing Party’s Claims or
`Defenses
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`Apple is currently aware of the legal theories and factual bases of its claims and defenses
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`listed below. Apple incorporates its Answer in this case [ECF 118] and incorporates by reference
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`the responses and defenses asserted therein. Apple further incorporates by reference its responses
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`to Maxell’s interrogatories, including interrogatory number 10. Discovery is ongoing, and Apple
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`reserves the right to assert additional defenses. Apple also reserves the right to modify or
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`supplement its theories and/or the factual bases for its claims or defenses:
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`Non-infringement. Apple has not directly or indirectly infringed, either literally or under
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`the doctrine of equivalents, any valid and enforceable claim of any of U.S. Patent Nos. 6,748,317
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`(“’317 Patent”); 6,580,999 (“’999 Patent”); 8,339,493 (“’493 Patent”); 7,116,438 (“’438 Patent”);
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`6,408,193 (“’193 Patent”); 10,084,991 (“’991 Patent”); 6,928,306 (“’306 Patent”); 6,329,794
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`(“’794 Patent”); 10,212,586 (“’586 Patent”); and 6,430,498 (“’498 Patent”) (collectively, the
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`“Patents-in-Suit”). Apple does not manufacture, use, sell, or offer to sell in the United States, or
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`import into the United States, any product that includes each and every element of any asserted
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`claim of the Patents-in-Suit, or an equivalent, to the extent that Maxell is entitled to any equivalent.
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`Specifically, accused Apple products (and the operation thereof) are missing or do not perform
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`one or more elements or steps required by the asserted claims of the Patents-in-Suit. Further,
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`Apple products have substantial non-infringing uses. Apple also does not contribute to or induce
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`Page 2 of 31
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`Case 5:19-cv-00036-RWS Document 447-8 Filed 07/27/20 Page 4 of 8 PageID #: 24982
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`another’s infringement, and Apple has no intent to induce any alleged infringement. Moreover, at
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`least because Apple cannot be liable for infringement of any claims, Apple cannot be liable for
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`willfully infringing the Patents-in-Suit.
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`Invalidity. The asserted claims of the Patents-in-Suit are invalid under 35 U.S.C. §§ 101,
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`102, 103, 111, 112, 115, 116, 119, 132, 251, 256, and/or 282. Apple will provide detailed
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`invalidity contentions, prior art, and expert reports on invalidity in the time and manner provided
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`in the Patent Rules for the Eastern District of Texas and the Court’s scheduling orders.
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`Limitation on Damages. To the extent Maxell is entitled to any recovery under the
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`Patents-in-Suit, Maxell’s recovery is limited under 35 U.S.C. § 286 and because of Maxell’s
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`failure to comply with § 287 and/or § 288.
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`Estoppel, Waiver, Acquiescence, Patent Misuse and Unclean Hands. To the extent
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`Maxell is entitled to any recovery under the Patents-in-Suit, Maxell’s recovery is limited by the
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`equitable doctrines of estoppel, waiver, acquiescence, patent misuse, and unclean hands, including
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`because Maxell’s claims were waived and/or estopped, in whole or in part, by discussions between
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`and/or prior agreements entered between Maxell (or a related entity) and Apple.
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`No Willful Infringement. Maxell is not entitled to a finding of willful infringement
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`because Maxell cannot demonstrate that infringement occurred. Even if Maxell were able to
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`demonstrate that infringement had occurred, Maxell would still not be entitled to a finding of
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`willful infringement, including because, among other reasons, Maxell will not be able to show that
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`any alleged infringement by Apple constituted egregious misconduct. In addition, through prior
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`agreements and/or discussions, Maxell has waived in whole or in part its right to seek enhanced
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`damages for willful infringement.
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`Page 3 of 31
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`Case 5:19-cv-00036-RWS Document 447-8 Filed 07/27/20 Page 5 of 8 PageID #: 24983
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`Contact Information
`On information and belief,
`contact information is:
`
`Two Embarcadero Center
`8th Floor
`San Francisco, CA 94111
`Tel: (415) 576-0200; (650)
`326-2400
`Fax: (415) 576-0300; (650)
`326-2422
`On information and belief,
`contact information is:
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`600 13th Street, N.W.
`Washington, DC 20005
`Tel: (202) 756-8000
`Fax: (202) 756-8087
`On information and belief,
`contact information is:
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`30 Rockefeller Plaza
`44th Floor
`New York, NY 10112
`Tel: (212) 408-2561
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`On information and believe,
`Maxell, Ltd. is located in
`Kyoto, Japan.
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`Name
`Townsend and Townsend and
`Crew LLP
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`Named prosecution firm for
`the ’306 Patent
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`Subject(s)
`Prosecution of the ’306
`Patent and related patents and
`patent applications.
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`McDermott, Will & Emery
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`Named prosecution firm for
`the ’794 Patent
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`Prosecution of the ’794
`Patent and related patents and
`patent applications.
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`Baker Botts L.L.P.
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`Named prosecution firm for
`the ’586 Patent
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`Prosecution of the ’586
`Patent and related patents and
`patent applications.
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`Maxell, Ltd.
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`Investigations,
`communications, opinion,
`and/or negotiations relating to
`Apple’s alleged infringement
`of the Patents-in-Suit;
`invalidity and
`unenforceability of the
`Patents-in-Suit; Plaintiff’s
`alleged ownership of the
`Patents-in-Suit; licenses and
`settlement agreements related
`to the Patents-in-Suit; and
`acquisitions and valuations of
`the Patents-in-Suit.
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`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the Patents-in-
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`Page 13 of 31
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`Case 5:19-cv-00036-RWS Document 447-8 Filed 07/27/20 Page 6 of 8 PageID #: 24984
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`Name
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`Dr. Gregory Abowd
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`Mr. Kent Broddle
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`Mr. Patrick Murphy
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`Garmin Ltd.
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`Subject(s)
`Suit and related patents and
`patent applications.
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`Plaintiff’s relationship,
`communications, meetings,
`interactions with Apple,
`including any related
`agreements.
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`Plaintiff’s business plans,
`model, strategies, structure,
`history, finances, licensing
`practices.
`Authenticity, publication,
`date, development,
`conception, reduction to
`practice, public availability,
`and other facts related to prior
`art systems and references,
`including the
`Cyberguide/Abowd
`publication and related
`Cyberguide prior art system.
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`Invalidity of the Patents-in-
`Suit
`Authenticity, publication,
`date, development,
`conception, reduction to
`practice, public availability,
`and other facts related to prior
`art systems and references,
`including the Garmin
`NavTalk prior art system and
`related documentation and
`publications.
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`Invalidity of the Patents-in-
`Suit
`Pre-suit communications with
`Plaintiff
`Authenticity, publication,
`date, and other facts related to
`prior art systems and
`references.
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`Page 14 of 31
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`Contact Information
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`On information and belief,
`contact information is:
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`Dr. Gregory Abowd
`School of Interactive
`Computing
`Georgia Institute of
`Technology
`Tech Square Research
`Building
`85 Fifth St. NW
`Atlanta, GA 30308
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`Contact through O’Melveny
`& Myers
`
`Contact through O’Melveny
`& Myers
`On information and belief,
`contact information is:
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`Garmin Ltd.
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`Case 5:19-cv-00036-RWS Document 447-8 Filed 07/27/20 Page 7 of 8 PageID #: 24985
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`Name
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`Subject(s)
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`Casio America, Inc.
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`Invalidity of the Patents-in-
`Suit
`Authenticity, publication,
`date, and other facts related to
`prior art systems and
`references.
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`Invalidity of the Patents-in-
`Suit
`Sony Corporation of America Authenticity, publication,
`date, and other facts related to
`prior art systems and
`references.
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`Invalidity of the Patents-in-
`Suit
`Authenticity, publication,
`date, and other facts related to
`prior art systems and
`references.
`
`Invalidity of the Patents-in-
`Suit
`Authenticity, publication,
`date, and other facts related to
`prior art systems and
`references.
`
`Invalidity of the Patents-in-
`Suit
`Authenticity, publication,
`date, and other facts related to
`prior art systems and
`references.
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`Invalidity of the Patents-in-
`Suit
`Sale date(s) of prior art
`systems.
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`Ericsson Inc.
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`Classco Inc.
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`Microsoft Corporation
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`Mr. Juan Rosas
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`Contact Information
`1200 E. 151st St.
`Olathe, KS 66062
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`On information and belief,
`contact information is:
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`Casio America, Inc.
`570 Mt Pleasant Ave.
`Dover, NJ 07801
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`On information and belief,
`contact information is:
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`Sony Corp. of America
`550 Madison Avenue
`New York, NY 10022
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`On information and belief,
`contact information is:
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`Ericsson Inc.
`6300 Legacy Dr.
`Plano, TX 75024
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`On information and belief,
`contact information is:
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`Classco Inc.
`211 Putney Hill Road,
`Contoocook, NH 03229
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`On information and belief,
`contact information is:
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`Microsoft Corp.
`1 Microsoft Way
`Redmond, WA 98052
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`On information and belief,
`contact information is:
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`Microsoft Corp.
`1 Microsoft Way
`Redmond, WA 98052
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`
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`Page 15 of 31
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`Case 5:19-cv-00036-RWS Document 447-8 Filed 07/27/20 Page 8 of 8 PageID #: 24986
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court's
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`CM/ECF system per Local Rule CV-5(a)(3) on March 5, 2020.
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` /s/ Luann L. Simmons
` Luann L. Simmons
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`O’Melveny & Myers LLP
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`Page 31 of 31
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