Case 5:19-cv-00036-RWS Document 525-1 Filed 09/01/20 Page 1 of 26 PageID #: 27633
`Case 5:19-cv-00036—RWS Document 525-1 Filed 09/01/20 Page 1 of 26 PageID #: 27633
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`EXHIBIT A
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`EXHIBIT A
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`Case 5:19-cv-00036-RWS Document 510 Filed 08/25/20 Page 1 of 25 PageID #: 27535Case 5:19-cv-00036-RWS Document 525-1 Filed 09/01/20 Page 2 of 26 PageID #: 27634
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`IN THE UNITED STATES DISTRICT COURT
`OF THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`No. 5:19CV36-RWS
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`§§
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`§
`§
`§
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`MAXELL, LTD.
`
`V.
`
`APPLE INC.
`
`ORDER ON MOTION FOR SANCTIONS
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`The following motion has been referred to the undersigned United States Magistrate Judge
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`for decision in accordance with 28 U.S.C. § 636:
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`Maxell, Ltd.’s Opposed Motion for Sanctions (Docket Entry # 210).
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`The Court, having carefully considered the relevant briefing and hearing arguments of counsel July
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`28, 2020, is of the opinion the motion should be DENIED.
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`I. BACKGROUND
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`Plaintiff Maxell, Ltd. (“Maxell”) filed its complaint for patent infringement against Apple
`
`Inc. (“Apple”) on March 15, 2019. The First Amended Complaint for Patent Infringement (“FAC”)
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`alleges Apple infringes ten patents related to mobile device technology under theories of direct
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`infringement, induced infringement, willful infringement, and contributory infringement. Docket
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`Entry # 111. Maxell alleges that various aspects of Apple’s iPhone, iPad, and Mac products infringe
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`the asserted patents, including: cameras; navigation capabilities; authentication systems;
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`telecommunications techniques; video streaming; “do not disturb” functionality; power management
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`technologies; and smartwatch integration. See Docket Entry # 171 at p. 1.
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`

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`II. BACKGROUND REGARDING
`APPLE’S DOCUMENT PRODUCTION
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`A.
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`Document production deadlines
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`The original Docket Control Order provided a July 10, 2019 deadline to comply with
`
`Paragraphs 1 and 3 of the Discovery Order (Initial and Additional Disclosures).1 Docket Entry # 46
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`at p. 8. The deadline to comply with Patent Rule 3-4 regarding the production of documents
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`sufficient to show how the accused instrumentalities work was August 14, 2019. Id. The fact
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`discovery deadline was March 31, 2020.2 Id. at p. 4.
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`B.
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`Maxell’s first motion to compel
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`It is instructive to consider the parties’ discovery disputes in determining whether sanctions
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`are appropriate now. In its first motion to compel filed August 15, 2019, Maxell asked the Court to
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`compel Apple to substantially complete its document production. At the hearing on September 17,
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`2019, Maxell raised issues as to the timing and scope of Apple’s discovery responses. Arguing it was
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`one month past the “last deadline for substantially completing discovery,” Maxell stated it was still
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`missing license agreements, marketing materials, technical documents, service manuals, etc. Docket
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`Entry # 100 at 46:24-47:13.
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`1 Paragraph 3 of the Discovery Order for Patent Cases provides, among other things, that each party shall,
`without awaiting a discovery request, produce or permit the inspection of all documents, electronically stored
`information, and tangible things in the possession, custody, or control of the party that are relevant to the pleaded claims
`or defenses involved in the action, except to the extent these disclosures are affected by the time limits set forth in the
`Patent Rules for the Eastern District of Texas. Docket Entry # 42 at pp. 2-3.
`
`2 The Docket Control Order was amended on March 16, 2020, extending the deadline to complete all fact
`depositions to April 21, 2020 and the deadline for initial expert reports to April 28, 2020. Docket Entry # 232. On April
`20, 2020, Judge Schroeder entered an Amended Docket Control Order, extending the deadline to complete all fact
`depositions to April 30, 2020. Docket Entry # 283 at p. 5. On May 8, 2020, the Court entered the parties’ Joint
`Stipulation Regarding Extension of Deadlines to Submit Initial and Rebuttal Expert Reports on the ’794 patent, ordering
`the parties exchange initial expert reports regarding the U.S. Patent. No. 6,329,794 on May 14, 2020 and exchange
`rebuttal expert reports regarding the same on June 11, 2020. Docket Entry # 325.
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`2
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`At the hearing, Apple pointed out there is no substantial completion of production deadline
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`in this case, and the deadline for completion of fact discovery was still six and a half months away.
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`Id. at 68:18-69:15; 73:24-74:2. Even so, Apple stated it would agree to a November 27, 2019
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`“substantial completion date” for its document production. Id. at 69:16-19. Although disputed by
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`Maxell, Apple’s counsel also represented Apple had produced technical documents under Patent
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`Rule 3-4 sufficient to show the functionality of the accused products. Id. at 78:23-79:19 (further
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`noting that some of the technical documents were not in Apple’s control but were in the control of
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`Qualcomm and Intel and third parties); see also id. at 97:16-21 (representing to the Court that under
`
`the definition of “sufficient to show” under Patent Rule 3-4 Apple had produced user manuals and
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`“the big ticket item which is source code”). Judge Schroeder noted that, with the “carve-out”
`
`regarding third-party technical documents, to the extent Apple did not meet that deadline, it would
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`be in violation of Patent Rule 3-4. Id. at 79:6-80:1.
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`On November 13, 2019, the Court issued an order granting in part and denying in part
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`Maxell’s first motion to compel document production and responses to Interrogatory Nos. 2-9. See
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`Docket Entry # 126. The Court denied Maxell’s motion to compel document production, noting
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`Apple had assured the Court it was complying with the Court’s Discovery Order (regarding initial
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`and additional disclosures). Id. at p. 3. The Court noted Apple had produced documents on July 10,
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`July 18, July 26, August 2, and August 14, and it was unreasonable to expect Apple to produce all
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`relevant documents, apart from those provided for in the Local Patent Rules, by July 10.3 Id. Noting
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`Maxell’s broad allegations necessarily contemplate extensive discovery and document production,
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`3 Noting the issue was not briefed and thus was not properly before the Court, Judge Schroeder did not address
`whether, as suggested by Maxell at the hearing, Apple had not produced “documentation sufficient to show the operation
`of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its P. R. 3-1(c) chart” as
`required by Patent Rule 3-4. Docket Entry # 126 at p. 3, n. 1.
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`3
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`the Court noted Apple’s inability to complete document production by the “Additional Disclosures”
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`deadline was understandable. Id. at pp. 3-4.
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`The Court stated the parties agreed document production was still ongoing, and Apple had
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`not taken the position that there was a category of documents it would not produce (other than those
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`addressed in Interrogatory No. 9).4 Id. at p. 4. The Court stated it could not determine at that time
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`whether Apple had met its discovery obligations to date. Id. The Court further stated it expected
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`Apple to substantially complete all discovery by November 27, 2019, as agreed by Apple at the
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`hearing. Id.
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`C.
`
`1.
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`Timeline relevant to Apple’s subsequent productions
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`December 2019
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`Apple made two productions of marketing surveys and reports in early December 2019.
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`Declaration of Saqib J. Siddiqui in Support of Maxell, Ltd.’s Reply in Support of Opposed Motion
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`for Sanctions (“Siddiqui Decl.”), ¶ 15.
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`In a letter dated December 18, 2019, Maxell raised (in thirteen pages) additional deficiencies,
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`including technical specifications for accused functionalities,
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` third-party component documents, twenty-two categories of source code, the improper
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`production of documents on the source code computers, and deficient interrogatory responses.
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`Docket Entry # 210 at pp. 9-10; see also Ex. H attached thereto. Maxell also subpoenaed suppliers
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`4 The Court notes Apple did address the issue of licenses at the hearing.
` Docket Entry # 100 at 71:18-72:14; 76:22-
`77:1 (further noting the parties’ dispute about the scope of the licensing agreements, which could be addressed later after
`Apple’s forthcoming production). Apple explained it had produced a few licenses but the bulk of the licenses required
`third-party consent, which Apple hoped to receive by the end of October. Id. at 78:8-22. Whereas Maxell had requested
`all licenses for every one of the products and reasonably similar products, Apple represented to the Court it had agreed
`to produce licenses relevant to the accused functionalities in the case. According to Apple, it was producing licenses
`based on technology rather than the products. Id. at 71:1-15.
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`4
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`of third-party component documents directly for component information. Id. at p. 5, n. 5 (stating that
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`in many instances, the suppliers resisted or delayed production, noting Apple should have the
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`documents and was given permission to produce them).
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`2.
`
`January 2020
`
`In early January 2020, Apple made three productions of documents (including specifications,
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`Bills of Materials, forecasts, and flowcharts). Siddiqui Decl., ¶ 15. Apple also responded to Maxell’s
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`December 18, 2019 letter via letter dated January 15, 2020. Docket Entry # 210, Ex. I. In the letter,
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`Apple stated Maxell’s unreasonable requests included demands for documents and source code that
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`had already been produced or that Apple had already advised Maxell could not be found after a
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`reasonable search; documents and source code that were neither relevant nor proportional to the
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`needs of the case; and newly-identified source code not previously requested in discovery and which
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`was not relevant to the accused functionalities in this case. Id. at p. 1. Nonetheless, Apple reiterated
`
`its commitment to work cooperatively with Maxell. Id. at p. 2. However, Apple stated its “agreement
`
`to investigate issues raised by Maxell” was “not a concession that Apple is or was required by the
`
`Local and/or Federal Rules to produce any additional documents or source code, particularly in view
`
`of Apple’s substantial productions.” Id.
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`After additional back and forth and a meet and confer, Apple represented on January 31, 2020
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`that “Apple has conducted a reasonable investigation for the accused functionalities and produced
`
`all responsive technical documents that could be located after a reasonable search.” Docket Entry
`
`# 210, Ex. K at p. 2.
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`3.
`
`February 2020
`
`Apple made two productions of documents
`
`) in early February
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`2020. Siddiqui Decl., ¶ 15. Believing material was still missing, Maxell filed its second motion to
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`compel on February 14, 2020. In its second motion to compel, Maxell requested the Court order
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`Apple to 1) produce all relevant technical documents related to the accused features and
`
`functionalities of the accused products, 2) produce all non-source code documents made available
`
`on the source code computers, 3) provide a fulsome response to Maxell Interrogatory No. 9, 4)
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`produce the eleven additional license agreements requested by Maxell, 5) produce all relevant buyer
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`surveys, owner surveys, and owner studies, and 6) produce the prior litigation documents requested
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`by Maxell.
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`On February 19-20, 2020, Apple produced source code for “Maps” for accused Watch
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`products and FaceTime for accused MacBook products. Apple also produced
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` more internal-
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`survey type documents.
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`Judge Schroeder referred Maxell’s second motion to compel to the undersigned on February
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`26, 2020. Docket Entry # 203. Two days later, Judge Schroeder issued an Order granting Apple’s
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`motion to compel infringement contentions compliant with P.R. 3-1(g). Docket Entry # 204. Judge
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`Schroeder ordered Maxell to serve revised infringement contentions to provide source code citations
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`with a degree of specificity consistent with the Court’s order by March 13, 2020. Id. at p. 5. The
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`Court stated that to the extent Maxell demonstrates through its second motion to compel that source
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`code production is incomplete, Maxell may move for leave to supplement its contentions. Id.
`
`4.
`
`March 2020
`
`Maxell filed its current motion for sanctions on March 5, 2020. That same day, Apple
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`produced source code for a new operating system released in September 2019 (iPadOS 13.1).5
`
`5 Apple states Maxell finally provided its overdue infringement contentions on March 13, 2020. According to
`Apple, Maxell did not cite much (at least 83%) of the additional source code it demanded Apple make available and
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`6
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`5.
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`April 2020
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`On April 8, 2020, the undersigned entered a forty-one page sealed Order, granting in part and
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`denying in part Maxell’s second motion to compel and denying Apple’s requests for costs and fees.
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`Docket Entry # 274. The Court considered three main issues raised in Maxell’s second motion to
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`compel: (1) alleged deficiencies in Apple’s production of technical documents; (2) continuing issues
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`with Apple’s production of non-source code documents on source code computers; and (3)
`
`continuing issues with Apple’s production of non-technical documents. The Court summarizes those
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`rulings below.
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`Technical documents
`
`Regarding alleged deficiencies in Apple’s production of technical documents, the Court
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`ordered as follows:
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`•
`
`•
`
`•
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`Complete schematics
`To the extent Apple has not already produced all requested and
`complete schematics as represented, it shall do so immediately.
`Otherwise, this part of Maxell’s motion is denied.
`
`Documents Describing Cellular Functionalities
`Regarding design specifications for
`
`, Apple represents it will perform an additional search for
`and/or provide clarification regarding these documents. Id. To the
`extent any such documents are located after this additional search,
`Apple shall produce such documents (or provide clarification
`regarding the requested Qualcomm documents) within ten days from
`the date of entry of this order. Otherwise, this part of Maxell’s motion
`is denied.
`
`Skyworks Code
`Regarding complete datasheets, Apple asserts the issue was resolved
`by Skyworks’ production of datasheets in response to Maxell’s
`subpoena, ‘and Maxell’s demand that Apple search for the same
`
`which Maxell claimed was a prerequisite to provide those contentions.
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`7
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`documents is not proportionate to Maxell’s needs given Skyworks’s
`production.’ Id. The Court agrees. Regarding
`, Apple represents it has ‘performed a
`reasonable search and produced what it found. Nothing suggests that
`such documents exist. Id. at p. 3. This part of Maxell’s motion is
`denied.
`
`Requirements Specifications
`To the extent Apple has in its possession any remaining
` Specifications corresponding to the
`
`chips that have not already been produced, they should be produced
`immediately. However, considering proportionality concerns, the
`Court is of the opinion the remainder of this part of Maxell’s motion
`should be denied. The Court finds further searches for complete
`versions of specifications/datasheets for
`
`, would provide little
`additional benefit to Maxell and would not be proportional to the
`needs of the case. . . .
`
`Testing Documents
`The Court is not convinced these reports are relevant and proportional
`therefore denies Maxell’s request regarding SAR Evaluation Reports.
`
`Application Processor Chipset User Manual/ Micro-Architecture
`Specification
`This part of Maxell’s motion is granted. To the extent any user
`manuals or
`
` have not been produced to Maxell, Apple shall produce
`such documents to Maxell immediately.
`
`Technical Specifications/Software Design Guides/Firmware Device
`Specification/ Hardware Abstraction Layer Specifications
`Having carefully considered the original briefing as well as the
`parties’ supplemental reports, the Court denies Maxell’s motion to
`compel regarding the two issues which Maxell contends are still
`unresolved.6 Regarding the first issue, Apple represents in its
`
`•
`
`•
`
`•
`
`•
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`6 The two issues were (1) “documents describing architecture or implementation details,” testing documents,
`technical specifications, and/or any additional relevant document describing any of the accused functionalities that
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`, and (2) documents
`and describing image processing, image stabilization, and/or power management for the Accused ’493 Products and the
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`8
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`responsive report it has performed a reasonable search and produced
`which it found, ‘including from the locations listed by Maxell when
`it identified by Apple engineers as containing potentially responsive
`documents.’ Docket Entry # 268 at p. 4. Regarding the second issue,
`Apple represents it produced documents after a reasonable search,
`‘including the
` Maxell alleged to be missing,
`from this source.’ Id. at p. 5.
`
`Camera Module Specifications
`Apple represents it has produced datasheets for camera components
`like the CMOS image sensor but has not located specifications for
`camera modules. Docket Entry # 258 at p. 7. Apple represents it is not
`aware of any additional responsive documents. This part of Maxell’s
`motion is denied.
`
`Source Code
`Maxell’s motion listed source code which Apple had not produced or
`had not identified as produced. Docket Entry # 197 at pp. 3-4. In their
`supplemental reports, the parties agree the issue is resolved based on
`Apple’s agreement to make the
` available for
`inspection once COVID-19 restrictions permit. . . .
`
`Redacted Documents
`Although not raised in Maxell’s motion to compel, Maxell asserts in
`its reply that many documents Apple produced in this case contain
`unexplained redactions. . . . This part of Maxell’s motion is denied.
`
`•
`
`•
`
`•
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`Docket Entry # 274 at pp. 11-27.
`
`Non-source code documents on source code computers
`
`Regarding continuing issues with Apple’s production of non-source code documents on
`
`source code computers, the Court ordered as follows:
`
`The Court is of the opinion Maxell’s request should be denied. Maxell’s request for
`production of spreadsheets in native format is inappropriate and contrary to the terms
`of the governing protective order. . . .
`
`Docket Entry # 274 at p. 31.
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`Accused ’794 Products.
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`9
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`Non-technical documents
`
`Regarding continuing issues with Apple’s production of non-technical documents, the Court
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`ordered as follows:
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`•
`
`•
`
`•
`
`•
`
`Forecast Documents
`In its surreply, Apple points out Maxell does not cite any such public
`report in its reply, nor does it clarify whether these are Apple or third-
`party reports. Docket Entry # 258 at p. 10. Regardless, Apple
`represents it has produced internal forecasts for the most recent
`quarters and will continue to produce updated forecasts up to trial. Id.
`Considering this representation and the further representations made
`in Apple’s responsive report, the Court is of the opinion this part of
`Maxell’s motion should be denied.
`
`Licenses
`Similar to District Judge Schroeder’s earlier finding, the Court finds
`Apple has not established why it should not be required to produce
`the additional license agreements Maxell asks for. Therefore, the
`Court grants this part of Maxell’s motion. Within ten days from the
`date of entry of this order, Apple shall produce to Maxell the license
`agreement
`
`.
`
`Marketing Surveys
`The parties’ supplemental reports advise this issue has been resolved.
`
`Prior Litigation Documents
`The Court agrees with Apple that requiring Apple to contact ‘its
`myriad prior outside counsel to look for additional documents or
`reports’ would not be proportional to the needs of the case, especially
`weighed against the minimal relevance of the requested documents.
`This part of Maxell’s motion is denied.
`
`Docket Entry # 274 at pp. 31-37.
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`III. MAXELL’S MOTION FOR SANCTIONS
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`In support of its motion for sanctions, Maxell relies on Apple’s alleged failure to satisfy
`
`Patent Rule 3-4 regarding its production of technical documents and Apple’s alleged failure to satisfy
`
`10
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`Judge Schroeder’s Order that Apple substantially complete its production of all relevant documents
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`by November 27, 2019. According to Maxell’s motion for sanctions, Apple has produced over
`
`documents and significant additional source code after November 27, 2019 (over
`
` documents
`
`having been produced since Apple’s January 31, 2020 representation of completion). Regarding
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`Apple’s alleged failure to satisfy Patent Rule 3-4, Maxell specifically identifies the following
`
`technical documents in its motion for sanctions: Apple’s February 19, 2020 production of source
`
`code for “Maps” for accused Watch products and for FaceTime for accused MacBook products; and
`
`Apple’s March 5, 2020 production of its new operation system, iPadOS 13.1, which runs on several
`
`of the accused products. Docket Entry # 210 at p. 9 In further arguing Apple failed to substantially
`
`complete production of all relevant documents by November 27, 2019, Maxell states Apple’s “late
`
`productions” consist of marketing surveys, third-party component datasheets, internal specifications,
`
`materials improperly produced on the source-code computers, and functionality flowcharts. Id. at p.
`
`10.
`
`Maxell states Apple’s so-called late production of technical documents and relevant
`
`information critical to its contentions has prejudiced Maxell, impairing its ability to prosecute its
`
`case. Id. Specifically regarding source code, Maxell asserts it has expended substantial time and
`
`money to repeatedly send attorneys and experts to perform review of incomplete source code, often
`
`without up-to-date interrogatory responses linking source code to operating systems/accused
`
`products or complete technical documents that describe the functionalities in the source code.
`
`Additionally, Maxell states Apple demanded that Maxell prepare supplemental infringement
`
`contentions based on incomplete source code, and then moved to compel further supplementation
`
`when it was dissatisfied with the results, thereby causing Maxell to expend unnecessary time and
`
`11
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`resources opposing a motion that was spurred by Apple’s own deficiencies, and preparing iterative
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`supplementations. Maxell claims the biggest prejudice “has been the divergence of time and effort
`
`spent addressing Apple’s discovery misconduct at the expense of analyzing discovery, preparing for
`
`depositions and expert reports, and preparing the case for trial.” Id. at p. 11. According to Maxell,
`
`“Apple’s eleventh-hour productions in February and March, when discovery is winding down and
`
`depositions are imminent, make this prejudice particularly acute.” Id.
`
`Asserting it has been prejudiced as a result of “Apple’s gamesmanship,” id., Maxell requests
`
`the following sanctions: (1) preclude Apple from using the discovery it failed to timely produce,
`
`including discovery produced after January 31, 2020; (2) deem certain accused products/components
`
`and source code to be representative of all versions of that product as detailed in a chart provided
`
`by Maxell; and (3) assess monetary sanctions against Apple.
`
`According to Apple, the Court does not even need to consider Maxell’s requested sanctions
`
`until the Court determines that Maxell has shown sanctionable conduct by Apple. Apple asserts
`
`Maxell has failed to show that Apple acted in bad faith, either by failing to comply with Patent Rule
`
`3-4, or by failing to substantially complete its production by November 27, 2019.
`
`At the July 28, 2020 hearing, Apple offered the following explanation as to why it continued
`
`to produce documents after its November 27, 2019 substantial completion of production and even
`
`after its January 31, 2020 representation of completion. According to Apple, Maxell buried Apple
`
`in continued demands for documents and source code that far exceeded any reasonable scope of
`
`discovery. Apple asserts that no matter what it produced, Maxell claimed something was missing.
`
`Apple states that in an attempt to avoid motion practice, Apple would go back and look for more,
`
`but each time Apple produced specifications or source code, Maxell would look for citations to other
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`12
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`specifications or source code and demand more documents, thus creating a pattern.
`
`For example, Apple states it was only in its second motion to compel (after vaguely alleging
`
`that Apple did not produce “all”schematics) that Maxell specifically identified the schematics it
`
`believed were missing. Docket Entry # 237 at p. 6. Similarly with regard to certain test documents,
`
`Apple states Maxell did not raise the issue with Apple until the second motion to compel; despite
`
`Apple’s assertion of irrelevance, Apple produced the documents anyway. Id. Regarding the fourteen
`
`source code projects identified in Maxell’s second motion to compel, Apple states it had already
`
`produced some version of each project before the motion. According to Apple, five were “missing
`
`certain versions which Apple promptly supplemented (as it would have done without a motion); the
`
`other nine were already complete and no further supplement was necessary.”7 Id.
`
`Regarding Maxell’s demands for third-party datasheets for all components of the accused
`
`productions, Apple states Maxell’s infringement contentions nowhere mention most of the
`
`components for which Maxell demanded datasheets.8 Id. at p. 5. Even so, Apple states it “identified
`
`information for Maxell’s laundry list of purportedly relevant components for more than 120 Accused
`
`Products” and supplemented accordingly.9 Id.
`
`7 On February 19-20, 2020, Apple produced source code for “Maps” for accused Watch products and FaceTime
`for accused MacBook products. According to Apple, it had already produced the bulk of the source code that implement
`FaceTime for both iOS and MacOS as part of the
` projects in 2019, including a version of this project
`before the Patent Rule 3-4 deadline. Apple states it also produced Maps source code for other platforms, including for
`various versions of iOS. Thus, Apple states its “inadvertent omission of two projects for a particular platform, while
`producing the same projects for others, hardly rises to the level of sanctionable conduct.” Docket Entry # 237 at p. 11.
`
`8 Apple states Maxell’s June 2019 infringement contentions vaguely alleged infringement of 90 claims from
`10 different patents by approximately 17 functionalities across more than 120 Accused Products and 19 operating
`systems, including Mac computers, iPhones, iPads, iPods, and Apple Watches sold from June 2012 to present. Docket
`Entry # 237 at pp. 2-3.
`
`9
`p. 5. Apple also located and produced datasheets. Id.
`
`. Docket Entry # 237 at
`
`13
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`

`

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`Even if sanctions were appropriate, which Apple disputes, Apple contends Maxell’s
`
`proposals go far beyond remedying the discovery deficiencies it alleges and, consistent with its
`
`overall strategy, seek to gain an unfair strategic advantage.10 Id. at p. 15. Apple argues “Maxell’s
`
`purpose is clarified even more so by the lack of connection between the alleged deficiencies and
`
`requested sanctions.” Id. (noting Maxell requests sanctions directed to numerous P.R. 3-1(g)
`
`software limitations based on the absence of third party hardware datasheets). Apple represents it
`
`has “long made available the source code for these software limitations and Maxell never alleges
`
`how any hardware information is relevant to those claims.” Id.
`
`Apple further argues as follows:
`
`While Apple has never refused to produce a single technical document or source code
`file that it has been able to locate, Maxell asserts that the Court should still sanction
`Apple because it did not finish addressing Maxell’s serial, goal-post-moving
`demands by a date (plucked from thin air) two months before fact discovery
`originally closed. But Maxell’s motion betrays its true motive: forcing a premature
`representative products agreement to ease Maxell’s burden, while avoiding the merits
`and raising Apple’s costs with each manufactured discovery dispute.11
`
`Id. at p. 2. Apple argues Maxell has suffered no prejudice, and its effort to broadly declare products
`
`to the “representative” is without merit.
`
`10 For example, seven of Maxell’s sanctions involve precluding Apple from disputing that “one accused product
`is representative of other products having the same category of components.” Docket Entry # 237 at p. 15 (emphasis
`in original). According to Apple, if one product has a “camera” Maxell seeks a finding of representativeness as to any
`other product that also has a camera, even if that product operates in completely different manner. Apple asserts Maxell’s
`proposed sanctions are not only without basis, but also technically incorrect. Id.
`
`11 Apple acknowledges it did meet with Maxell to discuss Maxell’s proposal that Apple agree to the use of
`representative products in this case. Apple states Maxell essentially wants Apple to agree to be sanctioned. Apple states
`it will continue to discuss the issue of representative products in an effort to streamline this case, but there is no
`requirement for Apple to agree to the proposal nor should representative products be proposed as a resolution to Maxell’s
`motion for sanctions.
`
`14
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`

`

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`IV. APPLICABLE LAW
`
`Generally, sanctions can be imposed pursuant to either Federal Rule of Civil Procedure 37(b)
`
`or the court’s inherent power. Smith v. Chrysler Grp., L.L.C., No. 1:15-CV-218, 2016 WL 7741735,
`
`at *3 n. 8 (E.D. Tex. Aug. 31, 2016) (citing Allstate Tex. Lloyd’s v. McKinney, 964 F. Supp. 2d 678,
`
`682 (S.D. Tex. 2013); also citing Rimkus Consulting Grp., Inc. v. Cammarata, 688 F. Supp. 2d 598,
`
`611-12 (S.D. Tex. 2010)). Rule 37(b) sanctions, however, apply to conduct occurring during the
`
`discovery process. Smith, 2016 WL 7741735, at *3 n. 8 (citing FED. R. CIV. P. 37(b); also citing
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`Allstate Tex. Lloyd’s, 964 F. Supp. 2d at 682).
`
`Federal Rule of Civil Procedure 37 authorizes the court to issue sanctions for a party’s failure
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`to comply with discovery orders. Innovation Sciences, L.L.C. v. Amazon.com, Inc., et al, No.
`
`4:18-CV-474-ALM, 2020 WL 4431875, at *1 (E.D. Tex. July 31, 2020) (citing FED. R. CIV. P.
`
`37(b)(2)(A), (C)). “Rule 37 sanctions must be applied diligently both ‘to penalize those whose
`
`conduct may be deemed to warrant such a sanction, [and] to deter those who might be tempted to
`
`such conduct in the absence of such a deterrent.” Id. (quoting Roadway Express, Inc. v. Piper, 447
`
`U.S. 752, 763–64 (1980) (alteration in original) (citation