Case 5:19-cv-00036-RWS Document 523 Filed 08/31/20 Page 1 of 11 PageID #: 27616
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`Plaintiff,
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`Defendant.
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`MAXELL, LTD.’S OPPOSITION TO
`APPLE INC.’S OPPOSED MOTION FOR LEAVE TO EXTEND THE DEADLINE TO
`DEPOSE PATRICK MURPHY
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`Case 5:19-cv-00036-RWS Document 523 Filed 08/31/20 Page 2 of 11 PageID #: 27617
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`Apple asks the Court to ignore the case schedule, Apple’s failure to act in a diligent manner
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`during discovery, and the resultant prejudice to Maxell, all for the deposition of a person whose
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`testimony Apple now says provides nothing new to the case. When Apple first sought leave to
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`depose Mr. Murphy, it was based on the assertion that Apple needed critical information regarding
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`the June 2013 negotiations between Apple and Hitachi from someone who was there. See, e.g.,
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`D.I. 307 at 6-7; D.I. 409 at 3-5. Now, Apple admits it never needed the testimony at all because it
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`will, in Apple’s own words, be “entirely consistent with the detailed description of those pre-suit
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`communications that Apple already provided” and “will not provide any new or different material
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`facts.” Mot. at 4. Apple’s confidence in what Mr. Murphy’s testimony will show belies Apple’s
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`earlier story that Mr. Murphy’s untimely deposition was necessary only because Apple had
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`originally planned to obtain information about the negotiations through a third-party Hitachi
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`employee, Mr. Matsuo, rather than the friendly, former employee of Apple, Mr. Murphy. This
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`completely undermines the basis on which Apple initially moved for Mr. Murphy’s deposition and
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`for which the Court granted Apple’s request.
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`Based on Apple’s new position that Mr. Murphy has no new details to offer, Apple asserts
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`that supplementation of expert reports or dispositive motions will not be warranted. Mot. at 4. If
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`that is the case, Apple’s demand for more time to take the deposition should be denied as nothing
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`more than a nuisance on Maxell and the Court. Given how hard Apple is pressing for the
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`deposition, however, it is likely not the case. As Maxell previously noted, Apple’s belated attempt
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`to depose Mr. Murphy is but an attempt to counter the discovery previously taken in the case which
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`is adverse to Apple. Apple does not like the current set of facts and is relying on Mr. Murphy to
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`hopefully change them. As such, Apple’s about face on the nature of the facts with respect to which
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`Mr. Murphy will testify is misleading at best. Further, Mr. Murphy’s testimony at this late date
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`will unquestionably prejudice Maxell, as noted in Maxell’s opposition to Apple’s initial motion.
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`Had Apple timely and diligently sought Mr. Murphy’s deposition, Maxell could have sought the
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`deposition of other attendees of the early meetings between Hitachi and Apple.
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`Furthermore, Apple’s requested extension of the deadline to depose Mr. Murphy is not
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`“modest.” The Court’s Order permitting Mr. Murphy’s deposition gave Apple one month to do so.
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`D.I. 409. Apple now requests two full additional months to complete the deposition and does not
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`stop there. Apple explicitly notes in its motion that, if it cannot complete the deposition by October
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`15, it may request additional time. Mot. at 5. In granting Apple leave to depose Mr. Murphy, the
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`Court held that “the prejudice of allowing a late deposition here cannot be discounted.” D.I. 409
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`at 4. Although Apple asserts its proposed extension still leaves almost 2 months before the new
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`trial date, Apple ignores the potential impact that Mr. Murphy’s testimony has on other pending
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`deadlines and trial preparation. The Court set a deadline for Mr. Murphy’s deposition in order to
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`strike a balance between Apple’s alleged “need” for the testimony and the prejudice that would be
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`inflicted on Maxell from its proceeding after the close of discovery. Although Apple asserts that
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`such balance can be maintained with its proposed new deadline, the facts as presented by Apple,
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`and the remaining schedule for this case, show otherwise. Apple’s requested extension should be
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`denied based on the “new” basis which underlies its request and the serious prejudice to Maxell.
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`I.
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`LEGAL STANDARDS
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`The parties do not dispute the legal standard set forth in Apple’s Motion. Mot. at 1-2.
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`II.
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`ARGUMENT
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`No good cause exists to extend the time for Mr. Murphy’s deposition. Apple failed to act
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`in a diligent manner during discovery and now provides no compelling justification for another
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`opportunity to make up for that failure. The inconsistencies in Apple’s initial motion and its
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`extension request should give the Court pause in granting Apple’s request. In short, the Court
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`should deny Apple’s repeated efforts to take a deposition that Apple now admits it does not need.
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`A. That COVID-19 Could Prevent Mr. Murphy’s Deposition Was A Known Factor
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`When Apple originally sought leave to take Mr. Murphy’s deposition, Maxell raised the
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`concern that, given the status of the pandemic, it was unclear when travel restrictions would be
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`removed and Apple’s motion thus amounted to a request to keep fact discovery open indefinitely.
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`See, e.g., D.I. 332 at 7. In arguing against this concern, Apple oversold the state of affairs in Japan
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`with respect to its relaxation of travel restrictions. Specifically, during the hearing, Apple presented
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`various avenues to conduct the deposition outside of Japan and gave the appearance that the
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`deposition would be able to occur “shortly after applicable travel restrictions lift at the end of July.”
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`See D.I. 409 at 5. The Order setting the deadline of August 15 suggests the Court anticipated the
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`deposition could be completed by then based, at least in part, on Apple’s representations.
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`What has come to pass is not surprising. Apple had no true basis on which to represent to
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`the Court that it could complete the deposition shortly after the end of July. Its representations
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`were based on hopes, not facts. Indeed, the article Apple cites in its current motion was published
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`a week after Apple made such arguments to the Court and it states that “Japan will commence
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`negotiations to resume business travel with some 10 countries and regions including China, South
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`Korea and Taiwan….” Ex. 1 (emphasis added). It was always possible, if not likely, that the travel
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`restrictions would remain in place, as Maxell cautioned. Moreover, Japan’s restrictions apply
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`differently to foreign nationals and nationals. Only the former are denied permission to enter Japan.
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`Mot. at Ex. 3. Though Apple asserts Mr. Murphy would be stranded were he to leave the country
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`for deposition, Apple does not actually provide any details regarding Mr. Murphy’s nationality.
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`Having obtained leave to depose Mr. Murphy by representing it could quickly complete
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`the deposition (based on nothing more than Apple’s hopes), Apple should not be permitted again
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`to assert that limited additional time will enable the deposition to take place—again on nothing
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`more than Apple’s hope that this may be the case. This chain of events was completely foreseeable
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`and not a sufficient basis on which to draw out fact discovery even further. If Apple would have
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`reasonably acted and timely sought Mr. Murphy’s deposition in the year plus time period it had to
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`undertake such deposition (like Maxell arranged for the depositions of the inventors located in
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`Japan), Apple would not now be in this situation.
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`B. Apple Itself Admits the Discovery Is Not Important
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`In first seeking to obtain leave to take Mr. Murphy’s deposition, Apple espoused the
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`importance of obtaining discovery from someone with personal knowledge of the June 2013
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`meeting between Apple and Hitachi on which Maxell bases its claim to past damages. D.I. 307 at
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`7. Apple stated: “Mr. Murphy, therefore, is the only witness who can shed light on the highly-
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`disputed pre-suit communications between Apple and Hitachi. Mr. Murphy’s testimony is
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`therefore irrefutably important to this case.” Id. at 6-7 (internal citations omitted). This was the
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`core basis for the Court granting Apple’s initial request. In its current motion, Apple abandons this
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`position. Apple cites to the Court’s prior order regarding importance of the discovery, but does not
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`itself re-assert such importance. No longer claiming that Mr. Murphy is needed to “shed light” on
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`the prior negotiations, Apple now “proffers that Mr. Murphy’s testimony will be entirely consistent
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`with the detailed description of [the pre-suit communications between Apple and Hitachi] that
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`Apple already provided to Maxell in Apple’s interrogatory responses, and the documents cited
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`therein” and concedes that “Mr. Murphy will not provide any new or different material facts….”
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`Mot. at 4. Apple cannot have it both ways. It cannot argue the testimony is important to satisfy this
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`factor and then turn around and state that it will introduce nothing new in order to satisfy another.
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`Given Apple’s knowledge of Mr. Murphy’s involvement in the June 2013 negotiations and
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`its clearly close contact with Mr. Murphy, if Apple genuinely believed that Mr. Murphy’s
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`Case 5:19-cv-00036-RWS Document 523 Filed 08/31/20 Page 6 of 11 PageID #: 27621
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`testimony was important to this case, or genuinely believed that it wanted a witness to support its
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`description of the prior negotiations, it would have undertaken the necessary steps for the
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`deposition before the final days of the fact discovery period. Apple has current employees, who
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`appeared for deposition in this case already, who were directly involved in and presented testimony
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`regarding the prior negotiations between the parties. Apple also has Mr. Murphy’s documents from
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`the negotiations, which were produced in this case. See, e.g., Mot. at 4 (referencing documents
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`cited in interrogatory responses). Apple has also told the Court that it believes there are no issues
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`of fact regarding the negotiations anyway—moving for summary judgment on the matter. D.I. 368.
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`Extending discovery for Apple (again) to take testimony merely to corroborate evidence already
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`presented is not important enough to outweigh the prejudice. Apple’s current extension request
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`should be rejected based exclusively on its misrepresentation of the facts either in its initial motion
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`or in its current extension request, as taking a consistent position on these facts would either
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`undercut the bases of Apple’s initial motion or its extension request.
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`C. The Potential Prejudice to Maxell Weighs Against Apple’s Requested Extension
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`As noted above, Apple argues opposing sides when it comes to the importance of Mr.
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`Murphy’s testimony. As it turns out, Apple’s arguments are also inconsistent within its discussion
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`of the prejudice factor. Whereas Apple asserts that Mr. Murphy will not provide any new or
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`different material facts that would warrant supplementation of expert reports or dispositive
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`motions (Mot. at 4), Apple also asserts that his testimony is directly relevant to the issue of whether
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`Maxell has failed to meet its burden of showing that it is entitled to enhanced or pre-suit damages—
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`the subject of one of Apple’s motions for partial summary judgment. Mot. at 4-5. Both assertions
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`cannot be true. If Mr. Murphy’s testimony is not prejudicial to Maxell because no new facts will
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`be revealed, then discovery should not be held open until October 15, or later, in order for the
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`deposition to be held. Or, if Mr. Murphy’s testimony is imperative to the issue of enhanced or pre-
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`suit damages, then the late introduction of the facts is prejudicial to Maxell. At a minimum, if
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`Apple’s statements are true, then its motion for summary judgment on damages must be denied
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`because there are still relevant, outstanding facts that may be presented in the case.1
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`Allowing Mr. Murphy’s deposition at this very late stage of the case will significantly
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`prejudice Maxell as it has the potential to reveal new facts that may affect Maxell’s willfulness
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`allegations and Apple’s defenses thereto. As noted in Maxell’s opposition to Apple’s initial
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`motion, Maxell has no opportunity at this time to depose other individuals that attended these
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`meetings to rebut testimony from Mr. Murphy – an opportunity that Maxell would have had if
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`Apple would have timely requested and deposed Mr. Murphy. Of course, this was Apple’s tactic
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`all along. Indeed, the Court itself recognized that “the prejudice of allowing a late deposition here
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`cannot be discounted” where the “parties have completed all other discovery, served expert reports
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`and filed dispositive motions.” D.I. 409 at 5. Although Apple attempts to downplay the potential
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`prejudice, its double-talk on the issue thwarts such attempt.
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`Apple’s argument that its requested extension would not be prejudicial because trial in this
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`case has been rescheduled is also unpersuasive. Apple’s argument completely ignores the other
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`deadlines in the case. The hearing on dispositive and Daubert motions and motions to strike will
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`be held October 8, 2020, before Apple’s proposed extended deadline. D.I. 505. As noted, Mr.
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`Murphy’s testimony is potentially relevant to one pending motion, and having the testimony follow
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`1 Apple’s argument that, because Maxell made no effort to depose Mr. Murphy, it cannot now claim that his
`testimony was needed for its reports or motions (Mot. at 4) is completely misplaced. Maxell has consistently taken
`the position that Mr. Murphy’s testimony is not important or necessary to the case. This does not, however, lessen
`the fact that, if his testimony is made part of the record, it becomes a fact that Maxell must address in presenting its
`case and defending its positions. Certainly Apple has addressed evidence and testimony in its expert reports that
`Apple insisted during discovery were irrelevant and unnecessary to the case. As Maxell noted during the hearing on
`Apple’s initial motion, Maxell would have sought depositions of other individuals attending the initial meetings
`between Hitachi and Apple if Mr. Murphy’s deposition was timely requested and held. Maxell obviously no longer
`has the opportunity to rebut Mr. Murphy’s testimony. This prejudice arises solely from Apple’s untimely request.
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`Case 5:19-cv-00036-RWS Document 523 Filed 08/31/20 Page 8 of 11 PageID #: 27623
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`the hearing on that motion is prejudicial and inefficient. Apple’s proposed new deadline is also
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`only a week before the parties must file the joint final Pretrial Order, Proposed Jury Instructions,
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`Jury Verdict, and Motions in Limine on October 22, 2020, and less than a month before the Pretrial
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`Conference, which is set for November 12, 2020. D.I. 502. A week is not enough time to account
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`for the new facts Apple may be seeking to inject into the case via Mr. Murphy.2 And, Apple keeps
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`open the possibility of requesting an even further extension should it not actually be able to
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`complete the deposition by October 15. Mot. at 5.
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`D. Availability of a Continuance to Cure the Prejudice
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`Apple asserts that, other than the extension it requests, there is no need for any other
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`continuance. Maxell agrees a continuance would not be appropriate. It still remains uncertain when
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`Mr. Murphy’s deposition will be able to proceed and Apple should not be permitted to hold this
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`case up indefinitely to obtain testimony from an individual who was known to it from the outset
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`of the case and for whom Apple asserts the testimony will introduce no different material facts.
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`The fact Apple does not seek to continue the trial does not, however, demonstrate an
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`absence of prejudice. Rather, it confirms the potential prejudice on Maxell that could result from
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`allowing Apple to take a deposition so close to trial. Given the proffers in its motion, it is clear
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`that Apple knows exactly what testimony Mr. Murphy will provide and is able to adjust its case to
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`address it in advance. Maxell has been afforded no such luxury.
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`III. CONCLUSION
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`In view of the foregoing, Maxell submits that Apple’s motion for leave should be denied.
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`This litigation is too far along to continue to give Apple chances to inject new facts into the case.
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`2 Apple also omits the fact that it created the extension opportunity for itself. The trial in this case was rescheduled
`in order to accommodate the rescheduling of another trial that was done at Apple’s request. VirnetX Inc., et al., v.
`Apple Inc., Case No. 6:12-cv-00855-RWS, Order, Docket No. 934 (E.D. Tex., Aug. 10, 2020) (granting Apple’s
`Motion to Continue Trial and resetting trial for October 26, 2020).
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`Case 5:19-cv-00036-RWS Document 523 Filed 08/31/20 Page 9 of 11 PageID #: 27624
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`Dated: August 31, 2020
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`By:
`
`/s/ Jamie B. Beaber
`Geoff Culbertson
`Kelly Tidwell
`Patton, Tidwell & Culbertson, LLP
`2800 Texas Boulevard (75503)
`Post Office Box 5398
`Texarkana, TX 75505-5398
`Telephone: (903) 792-7080
`Facsimile: (903) 792-8233
`gpc@texarkanalaw.com
`kbt@texarkanalaw.com
`
`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`William J. Barrow
`Baldine B. Paul
`Tiffany A. Miller
`Michael L. Lindinger
`Saqib J. Siddiqui
`Bryan C. Nese
`Alison T. Gelsleichter
`Clark S. Bakewell
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006
`Telephone: (202) 263-3000
`Facsimile: (202) 263-3300
`jbeaber@mayerbrown.com
`agrimaldi@mayerbrown.com
`klevy@mayerbrown.com
`jfussell@mayerbrown.com
`wbarrow@mayerbrown.com
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`mlindinger@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`agelsleichter@mayerbrown.com
`cbakewell@mayerbrown.com
`
`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
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`Case 5:19-cv-00036-RWS Document 523 Filed 08/31/20 Page 10 of 11 PageID #: 27625
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`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 523 Filed 08/31/20 Page 11 of 11 PageID #: 27626
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 31st day of August, 2020, with a copy of this document via
`the Court’s electronic CM/ECF system.
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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