Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 1 of 27 PageID #: 1019
`Case 5:19-cv-00036—RWS Document 53-16 Filed 08/02/19 Page 1 of 27 PageID #: 1019
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`EXHIBIT O
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`EXHIBIT 0
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`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 2 of 27 PageID #: 1020
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`MAXELL, LTD.,
`
`v.
`
`APPLE INC.,
`
`
`
`Plaintiff,
`
`Defendant.
`
`Civil Action No. 5:19-cv-00036
`
`JURY TRIAL DEMANDED
`
`MAXELL, LTD.’S
`INITIAL AND ADDITIONAL DISCLOSURES
`
`Pursuant to the Docket Control Order (Dkt. No. 46), and in accordance with Fed. R. Civ.
`
`P. 26(a)(1) and Paragraphs 1 and 3 of the Discovery Order (Dkt. No. 42), Plaintiff Maxell, Ltd.
`
`(“Maxell”), through its undersigned counsel, provides the following initial and additional
`
`disclosures to Defendant Apple Inc. (“Apple” or “Defendant”).
`
`THE PARTIES
`
`These mandatory disclosures are based upon Maxell’s current knowledge and upon
`
`information that is reasonably available to Maxell at this time and within Maxell’s possession,
`
`custody, or control as of the present date. These disclosures represent a good faith effort to
`
`identify information Maxell reasonably believes is relevant to the claims and defenses in this
`
`case. Maxell has not completed its investigation, discovery, and evaluation of the facts and
`
`evidence that may ultimately be relevant to this case and reserves the right to supplement,
`
`amend, modify, or alter these disclosures consistent with Fed. R. Civ. P. 26(e) as new
`
`information becomes available.
`
`
`
`
`
`

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`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 3 of 27 PageID #: 1021
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`By making these disclosures, Maxell does not represent that every individual or entity
`
`identified herein necessarily possesses information that Maxell will use to support its claims and
`
`defenses, or that the individual or entity possesses relevant information. Nor does Maxell
`
`represent that it is identifying every document, tangible thing, or witness that it may use to
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`support its claims and defenses.
`
`Nothing herein should be construed as an admission or acceptance by Maxell as to the
`
`admissibility or relevance of any document or fact referenced in these disclosures. These
`
`disclosures are further made without waiving in any way: (i) the right to object on the grounds
`
`of competency, privilege, the work product doctrine, relevancy, materiality, hearsay, undue
`
`burden, or any other proper ground, to the use of any such information for any purpose, in whole
`
`or in part, in this action or any other action or proceeding; and (ii) the right to object on any
`
`grounds, at any time, to any other discovery request or proceeding involving or relating to the
`
`subject matter of these disclosures. Maxell does not waive its right to assert any other objection
`
`authorized by the Federal Rules of Civil Procedure, the Local Rules of the Court, or any other
`
`applicable law or rule in response to interrogatories, requests for admissions, questions at
`
`depositions, or any other discovery requests involving or relating to the subject matter of these
`
`disclosures.
`
`Maxell reserves the right to continue its investigation and discovery of facts, witnesses,
`
`and documents, which may reveal additional information about the issues in this lawsuit. Maxell
`
`reserves the right at the time of trial to produce, refer to, and offer into evidence any additional
`
`documents, facts, and evidence from any source, and testimony from any witness that may be
`
`ascertained through their continuing discovery and trial preparation, notwithstanding the
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`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 4 of 27 PageID #: 1022
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`reference to witnesses, documents and information in these initial disclosures. All the
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`disclosures set forth below are made subject to the above objections and qualifications.
`
`Maxell’s Disclosures
`
`I.
`
`Paragraph 1(a): “the correct names of the parties to this action;”
`
`The correct name of the Plaintiff is Maxell, Ltd. To the best of Maxell’s knowledge, the
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`correct name of the Defendant in this case is Apple Inc.
`
`II.
`
`Paragraph 1(b): “the name, address, and telephone number of any potential parties;”
`
`
`
`III.
`
`Maxell is not currently aware of any other potential parties to the lawsuit.
`
`Paragraph 1(c): “the legal theories and, in general, the factual bases of the disclosing
`party’s claims or defenses (the disclosing party need not marshal all evidence that may be
`offered at trial);”
`
`
`
`The legal theories and the factual bases for Maxell’s claims are generally disclosed in
`
`Maxell’s Complaint for Patent Infringement, filed March 15, 2019 (Dkt. No. 1) and in Maxell’s
`
`P.R. 3-1 Disclosures, served June 12, 2019, which are all incorporated herein by reference.
`
`Maxell provides the following brief description of its legal theories and factual bases for its legal
`
`claims based upon information available to Maxell at this time. Full discovery has not yet begun,
`
`and Maxell expects to discover additional information that may be relevant to its legal theories
`
`and claims. Maxell, therefore, reserves the right to supplement, amend and/or correct the
`
`following disclosures as necessary to conform to the evidence obtained through discovery.
`
`Maxell’s infringement and damages claims will also be the subject of expert testimony, and
`
`Maxell will make the required expert disclosures according to the deadlines set forth in the
`
`Docket Control Order entered in this case. Those disclosures, when made, are also hereby
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`incorporated by reference in their entirety.
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`
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`

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`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 5 of 27 PageID #: 1023
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`1.
`
`Infringement of U.S. Patent No. 6,748,317
`
`Maxell is the assignee of U.S. Patent No. 6,748,317 (“the ’317 Patent”). The ’317 Patent
`
`is duly issued, and the asserted claims of the ’317 Patent are valid and non-obvious. Maxell
`
`alleges that Apple makes, uses, imports, offers for sale, and/or sells Apple telecommunications
`
`technology that infringes upon the asserted claims of the ’317 Patent, and that Apple has induced
`
`others to infringe and contributed to the infringement by others of the asserted claims of the ’317
`
`Patent. Apple has been on notice of the ’317 Patent since at least June 25, 2013, and, at the latest,
`
`the service of Maxell’s Complaint in this case (Dkt. No. 1). Since at least June 25, 2013, Apple
`
`has also been aware of an objectively high likelihood that its actions constituted and continue to
`
`constitute infringement of the ’317 Patent, and that the ’317 Patent is valid. As such, Apple
`
`willfully infringes the ’317 Patent. Maxell is entitled to no less than a reasonable royalty for
`
`damages sustained due to Apple’s infringement of the ’317 Patent.
`
`Maxell further refers Apple to Maxell’s P.R. 3-1 disclosures.
`
`2.
`
`Infringement of U.S. Patent No. 6,580,999
`
`Maxell is the assignee of U.S. Patent No. 6,580,999 (“the ’999 Patent”). The ’999 Patent
`
`is duly issued, and the asserted claims of the ’999 Patent are valid and non-obvious. Maxell
`
`alleges that Apple makes, uses, imports, offers for sale, and/or sells Apple telecommunications
`
`technology that infringes upon the asserted claims of the ’999 Patent, and that Apple has induced
`
`others to infringe and contributed to the infringement by others of the asserted claims of the ’999
`
`Patent. Apple has been on notice of the ’999 Patent since, at the least, June 25, 2013, and, at the
`
`latest, the service of Maxell’s Complaint in this case (Dkt. No. 1). Since at least June 25, 2013,
`
`Apple has also been aware of an objectively high likelihood that its actions constituted and
`
`continue to constitute infringement of the ’999 Patent, and that the ’999 Patent is valid. As such,
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`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 6 of 27 PageID #: 1024
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`Apple willfully infringes the ’999 Patent. Maxell is entitled to no less than a reasonable royalty
`
`for damages sustained due to Apple’s infringement of the ’999 Patent.
`
`Maxell further refers Apple to Maxell’s P.R. 3-1 disclosures.
`
`3.
`
`Infringement of U.S. Patent No. 8,339,493
`
`
`
`Maxell is the assignee of U.S. Patent No. 8,339,493 (“the ’493 Patent”). The ’493 Patent
`
`is duly issued, and the asserted claims of the ’493 Patent are valid and non-obvious. Maxell
`
`alleges that Apple makes, uses, imports, offers for sale, and/or sells Apple telecommunications
`
`technology that infringes upon the asserted claims of the ’493 Patent, and that Apple has induced
`
`others to infringe and contributed to the infringement by others of the asserted claims of the ’493
`
`Patent. Apple has been on notice of the ’493 Patent since at least, June 25, 2013, and, at the
`
`latest, the service of Maxell’s Complaint in this case (Dkt. No. 1). Since at least June 25, 2013,
`
`Apple has also been aware of an objectively high likelihood that its actions constituted and
`
`continue to constitute infringement of the ’493 Patent, and that the ’493 Patent is valid. As such,
`
`Apple willfully infringes the ’493 Patent. Maxell is entitled to no less than a reasonable royalty
`
`for damages sustained due to Apple’s infringement of the ’493 Patent.
`
`Maxell further refers Apple to Maxell’s P.R. 3-1 disclosures.
`
`4.
`
`Infringement of U.S. Patent No. 7,116,438
`
`
`
`Maxell is the assignee of U.S. Patent No. 7,116,438 (“the ’438 Patent”). The ’438 Patent
`
`is duly issued, and the asserted claims of the ’438 Patent are valid and non-obvious. Maxell
`
`alleges that Apple makes, uses, imports, offers for sale, and/or sells Apple telecommunications
`
`technology that infringes upon the asserted claims of the ’438 Patent, and that Apple has induced
`
`others to infringe and contributed to the infringement by others of the asserted claims of the ’438
`
`Patent. Apple has been on notice of the ’438 Patent since at least, May 17, 2018, and, at the
`
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`

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`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 7 of 27 PageID #: 1025
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`latest, the service of Maxell’s Complaint in this case (Dkt. No. 1). Since at least May 17, 2018,
`
`Apple has also been aware of an objectively high likelihood that its actions constituted and
`
`continue to constitute infringement of the ’438 Patent, and that the ’438 Patent is valid. As such,
`
`Apple willfully infringes the ’438 Patent. Maxell is entitled to no less than a reasonable royalty
`
`for damages sustained due to Apple’s infringement of the ’438 Patent.
`
`Maxell further refers Apple to Maxell’s P.R. 3-1 disclosures.
`
`5.
`
`Infringement of U.S. Patent No. 6,408,193
`
`
`
`Maxell is the assignee of U.S. Patent No. 6,408,193 (“the ’193 Patent”). The ’193 Patent
`
`is duly issued, and the asserted claims of the ’193 Patent are valid and non-obvious. Maxell
`
`alleges that Apple makes, uses, imports, offers for sale, and/or sells Apple telecommunications
`
`technology that infringes upon the asserted claims of the ’193 Patent, and that Apple has induced
`
`others to infringe and contributed to the infringement by others of the asserted claims of the ’193
`
`Patent. Apple has been on notice of the ’193 Patent since at least, May 17, 2018, and, at the
`
`latest, the service of Maxell’s Complaint in this case (Dkt. No. 1). Since at least May 17, 2018,
`
`Apple has also been aware of an objectively high likelihood that its actions constituted and
`
`continue to constitute infringement of the ’193 Patent, and that the ’193 Patent is valid. As such,
`
`Apple willfully infringes the ’193 Patent. Maxell is entitled to no less than a reasonable royalty
`
`for damages sustained due to Apple’s infringement of the ’193 Patent.
`
`
`
`
`
`Maxell further refers Apple to Maxell’s P.R. 3-1 disclosures.
`
`6.
`
`Infringement of U.S. Patent No. 10,084,991
`
`Maxell is the assignee of U.S. Patent No. 10,084,991 (“the ’991 Patent”). The ’991 Patent
`
`is duly issued, and the asserted claims of the ’991 Patent are valid and non-obvious. Maxell
`
`alleges that Apple makes, uses, imports, offers for sale, and/or sells Apple telecommunications
`
`
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`

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`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 8 of 27 PageID #: 1026
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`technology that infringes upon the asserted claims of the ’991 Patent, and that Apple has induced
`
`others to infringe and contributed to the infringement by others of the asserted claims of the ’991
`
`Patent. Apple has been on notice of the ’991 Patent since at least, October 9, 2018, and, at the
`
`latest, the service of Maxell’s Complaint in this case (Dkt. No. 1). Since at least October 9, 2018,
`
`Apple has also been aware of an objectively high likelihood that its actions constituted and
`
`continue to constitute infringement of the ’991 Patent, and that the ’991 Patent is valid. As such,
`
`Apple willfully infringes the ’991 Patent. Maxell is entitled to no less than a reasonable royalty
`
`for damages sustained due to Apple’s infringement of the ’991 Patent.
`
`Maxell further refers Apple to Maxell’s P.R. 3-1 disclosures.
`
`7.
`
`Infringement of U.S. Patent No. 6,928,306
`
`
`
`Maxell is the assignee of U.S. Patent No. 6,928,306 (“the ’306 Patent”). The ’306 Patent
`
`is duly issued, and the asserted claims of the ’306 Patent are valid and non-obvious. Maxell
`
`alleges that Apple makes, uses, imports, offers for sale, and/or sells Apple telecommunications
`
`technology that infringes upon the asserted claims of the ’306 Patent, and that Apple has induced
`
`others to infringe and contributed to the infringement by others of the asserted claims of the ’306
`
`Patent. Apple has been on notice of the ’306 Patent since, at the least, May 17, 2018, and, at the
`
`latest, the service of Maxell’s Complaint in this case (Dkt. No. 1). Since at least May 17, 2018,
`
`Apple has also been aware of an objectively high likelihood that its actions constituted and
`
`continue to constitute infringement of the ’306 Patent, and that the ’306 Patent is valid. As such,
`
`Apple willfully infringes the ’306 Patent. Maxell is entitled to no less than a reasonable royalty
`
`for damages sustained due to Apple’s infringement of the ’306 Patent.
`
`Maxell further refers Apple to Maxell’s P.R. 3-1 disclosures.
`
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`

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`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 9 of 27 PageID #: 1027
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`8.
`
`Infringement of U.S. Patent No. 6,329,794
`
`
`
`Maxell is the assignee of U.S. Patent No. 6,329,794 (“the ’794 Patent”). The ’794 Patent
`
`is duly issued, and the asserted claims of the ’794 Patent are valid and non-obvious. Maxell
`
`alleges that Apple makes, uses, imports, offers for sale, and/or sells Apple telecommunications
`
`technology that infringes upon the asserted claims of the ’794 Patent, and that Apple has induced
`
`others to infringe and contributed to the infringement by others of the asserted claims of the ’794
`
`Patent. Apple has been on notice of the ’794 Patent since at least May 17, 2018, and, at the latest,
`
`the service of Maxell’s Complaint in this case (Dkt. No. 1). Since at least May 17, 2018, Apple
`
`has also been aware of an objectively high likelihood that its actions constituted and continue to
`
`constitute infringement of the ’794 Patent, and that the ’794 Patent is valid. As such, Apple
`
`willfully infringes the ’794 Patent. Maxell is entitled to no less than a reasonable royalty for
`
`damages sustained due to Apple’s infringement of the ’794 Patent.
`
`Maxell further refers Apple to Maxell’s P.R. 3-1 disclosures.
`
`9.
`
`Infringement of U.S. Patent No. 10,212,586
`
`
`
`Maxell is the assignee of U.S. Patent No. 10,212,586 (“the ’586 Patent”). The ’586 Patent
`
`is duly issued, and the asserted claims of the ’586 Patent are valid and non-obvious. Maxell
`
`alleges that Apple makes, uses, imports, offers for sale, and/or sells Apple telecommunications
`
`technology that infringes upon the asserted claims of the ’586 Patent, and that Apple has induced
`
`others to infringe and contributed to the infringement by others of the asserted claims of the ’586
`
`Patent. Apple has been on notice of the ’586 Patent since at least October 9, 2018, and, at the
`
`latest, the service of Maxell’s Complaint in this case (Dkt. No. 1). Specifically, at least as early
`
`as October 9, 2018, Maxell placed Apple on notice of the ’586 Patent application, and of the fact
`
`that the claims of the application had already been allowed by the PTO. Since at least October 9,
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`

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`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 10 of 27 PageID #: 1028
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`2018, Apple has also been aware of an objectively high likelihood that its actions would
`
`constitute infringement of the ’586 Patent upon its issuance, and, since at least February 19,
`
`2019, Apple has also been aware that the ’586 Patent is valid. As such, Apple willfully infringes
`
`the ’586 Patent. Maxell is entitled to no less than a reasonable royalty for damages sustained due
`
`to Apple’s infringement of the ’586 Patent.
`
`Maxell further refers Apple to Maxell’s P.R. 3-1 disclosures.
`
`10.
`
`Infringement of U.S. Patent No. 6,430,498
`
`
`
`Maxell is the assignee of U.S. Patent No. 6,430,498 (“the ’498 Patent”). The ’498 Patent
`
`is duly issued, and the asserted claims of the ’498 Patent are valid and non-obvious. Maxell
`
`alleges that Apple makes, uses, imports, offers for sale, and/or sells Apple telecommunications
`
`technology that infringes upon the asserted claims of the ’498 Patent, and that Apple has induced
`
`others to infringe and contributed to the infringement by others of the asserted claims of the ’498
`
`Patent. Apple has been on notice of the ’498 Patent since at least June 25, 2013, and, at the
`
`latest, the service of Maxell’s Complaint in this case (Dkt. No. 1). Since at least June 25, 2013,
`
`Apple has also been aware of an objectively high likelihood that its actions constituted and
`
`continue to constitute infringement of the ’498 Patent, and that the ’498 Patent is valid. As such,
`
`Apple willfully infringes the ’498 Patent. Maxell is entitled to no less than a reasonable royalty
`
`for damages sustained due to Apple’s infringement of the ’498 Patent.
`
`Maxell further refers Apple to Maxell’s P.R. 3-1 disclosures.
`
`IV.
`
`Paragraph 1(d): “the name, address, and telephone number of persons having
`knowledge of relevant facts, a brief statement of each identified person’s connection with
`the case, and a brief, fair summary of the substance of the information known by such
`person”
`
`Maxell identifies the following individuals, corporations, or business entities as
`
`potentially having knowledge of relevant facts:
`
`
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`

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`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 11 of 27 PageID #: 1029
`
`Name
`
`Kishiko
`Maruyama
`
`Address and Telephone
`Number
`Contact through
`undersigned counsel.
`
`Shigeru
`Shimada
`
`Contact through
`undersigned counsel.
`
`Toshiichirou
`Sasaki
`
`Contact through
`undersigned counsel.
`
`Connection to
`the Case
`Named inventor
`of the ’317,
`’999, and ’498
`Patents
`
`Named inventor
`of the ’317,
`’999, and ’498
`Patents
`
`Named inventor
`of the ’317,
`’999, and ’498
`Patents
`
`Summary of Information
`
`Conception and reduction to
`practice of the ’317, ’999,
`and ’498 Patents
`
`Conception and reduction to
`practice of the ’317, ’999,
`and ’498 Patents
`
`Conception and reduction to
`practice of the ’317, ’999,
`and ’498 Patents
`
`Takahiro
`Nakano
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’493
`Patent
`
`Conception and reduction to
`practice of the ’493 Patent
`
`Ryuji
`Nishimura
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’493
`Patent
`
`Conception and reduction to
`practice of the ’493 Patent
`
`Toshiro
`Kinugasa
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’493
`Patent
`
`Conception and reduction to
`practice of the ’493 Patent
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 12 of 27 PageID #: 1030
`
`Name
`
`Jun Maeoka
`
`Address and Telephone
`Number
`Contact through
`undersigned counsel.
`
`Connection to
`the Case
`Named inventor
`of the ’438
`Patent
`
`Summary of Information
`
`Conception and reduction to
`practice of the ’438 Patent
`
`Yoshiaki
`Morimoto
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’438
`Patent
`
`Conception and reduction to
`practice of the ’438 Patent
`
`Motoaki
`Satoyama
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’438
`Patent
`
`Conception and reduction to
`practice of the ’438 Patent
`
`Koji Doi
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’438
`Patent
`
`Conception and reduction to
`practice of the ’438 Patent
`
`Shinya Iguchi
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’438
`Patent
`
`Conception and reduction to
`practice of the ’438 Patent
`
`Makoto
`Katagishi
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’193
`Patent
`
`Conception and reduction to
`practice of the ’193 Patent
`
`
`
`
`
`

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`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 13 of 27 PageID #: 1031
`
`Name
`
`Address and Telephone
`Number
`Shirou Machida Contact through
`undersigned counsel.
`
`Connection to
`the Case
`Named inventor
`of the ’193
`Patent
`
`Summary of Information
`
`Conception and reduction to
`practice of the ’193 Patent
`
`Kazunori
`Iwabuchi
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’991
`Patent
`
`Conception and reduction to
`practice of the ’991 Patent
`
`Hiroki Mizosoe Contact through
`undersigned counsel.
`
`Named inventor
`of the ’991
`Patent
`
`Conception and reduction to
`practice of the ’991 Patent
`
`Mutsumi
`Shimoda
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’991
`Patent
`
`Conception and reduction to
`practice of the ’991 Patent
`
`Setiawan
`Bondan
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’991
`Patent
`
`Conception and reduction to
`practice of the ’991 Patent
`
`Manabu
`Sasamoto
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’991
`Patent
`
`Conception and reduction to
`practice of the ’991 Patent
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 14 of 27 PageID #: 1032
`
`Name
`
`Masayuki
`Matsuda
`
`Address and Telephone
`Number
`Contact through
`undersigned counsel.
`
`Connection to
`the Case
`Named inventor
`of the ’306
`Patent
`
`Summary of Information
`
`Conception and reduction to
`practice of the ’306 Patent
`
`Tomohiro Esaki Contact through
`undersigned counsel.
`
`Named inventor
`of the ’306
`Patent
`
`Conception and reduction to
`practice of the ’306 Patent
`
`Kazuyuki
`Takizawa
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’306
`Patent
`
`Conception and reduction to
`practice of the ’306 Patent
`
`Akio
`Shinagawa
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’306
`Patent
`
`Conception and reduction to
`practice of the ’306 Patent
`
`Chikako
`Takada
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’306
`Patent
`
`Conception and reduction to
`practice of the ’306 Patent
`
`Shigeto Oeda
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’794
`Patent
`
`Conception and reduction to
`practice of the ’794 Patent
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 15 of 27 PageID #: 1033
`
`Name
`
`Naoki Mori
`
`Address and Telephone
`Number
`Contact through
`undersigned counsel.
`
`Connection to
`the Case
`Named inventor
`of the ’794
`Patent
`
`Summary of Information
`
`Conception and reduction to
`practice of the ’794 Patent
`
`Hiromichi Ito
`
`Contact through
`undersigned counsel.
`
`Named inventor
`of the ’794
`Patent
`
`Conception and reduction to
`practice of the ’794 Patent
`
`Masayuki
`Hirabayashi
`
`Hideo
`Nishijima
`
`Antonelli,
`Terry, Stout &
`Kraus LLP
`
`Melvin Kraus
`
`Contact through
`undersigned counsel.
`
`Contact through
`undersigned counsel.
`
`Last known address:
`1300 N 17th Street
`Suite #1800
`Arlington, VA 22209
`(703) 312-6600
`Last known address:
`1300 N 17th Street
`#1800
`Arlington, VA 22209
`(703) 312-6600
`
`Named inventor
`of the ’586
`Patent
`Named inventor
`of the ’586
`Patent
`Prosecution
`counsel for the
`’493 and ’586
`Patents
`
`Prosecution
`counsel for the
`’493 Patent
`
`Conception and reduction to
`practice of the ’586 Patent
`
`Conception and reduction to
`practice of the ’586 Patent
`
`Prosecution history of the
`’493 and ’586 Patents
`
`Prosecution history of the
`’493 Patent
`
`Paul J.
`Skwierawski
`
`655 15th St. NW
`Washington, DC 20005
`(919) 238-4620
`
`Prosecution
`counsel for the
`’493 and ’586
`Patents
`
`Prosecution history of the
`’493 and ’586 Patents
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 16 of 27 PageID #: 1034
`
`Name
`
`Mattingly &
`Malur, P.C. /
`Mattingly,
`Stanger &
`Malur, P.C. /
`Mattingly,
`Stanger, Malur
`& Brundidge,
`P.C.
`
`Daniel J.
`Stanger
`
`Address and Telephone
`Number
`1800 Diagonal Road
`Suite 210
`Alexandria, VA 22314
`(703) 684-1120
`
`Connection to
`the Case
`Prosecution
`counsel for the
`’317, ’999,
`’438, ’193,
`’991, and ’498
`Patents
`
`Summary of Information
`
`Prosecution history of the
`’317, ’999, ’438, ’193,
`’991, and ’498 Patents
`
`1925 Ballenger Avenue,
`Suite 560
`Alexandria, VA 22314
`(703) 684-1470
`
`Prosecution
`counsel for the
`’193 Patent
`
`Prosecution history of the
`’193 Patent
`
`Shrinath Malur
`
`1800 Diagonal Road
`Suite 210
`Alexandria, VA 22314
`(703) 684-1120
`
`Prosecution
`counsel for the
`’498 and ’438
`Patents
`
`Prosecution history of the
`’498 and ’438 Patents
`
`John R.
`Mattingly
`
`1800 Diagonal Road
`Suite 210
`Alexandria, VA 22314
`(703) 684-1120
`
`Prosecution
`counsel for the
`’317, ’999,
`’498, ’991, and
`’438 Patents
`
`Prosecution history of the
`’317, ’999, ’498, ’991, and
`’438 Patents
`
`Townsend and
`Townsend and
`Crew LLP /
`Kilpatrick
`Townsend &
`Stockton LLP
`
`Two Embarcadero
`Center, 8th Floor
`San Francisco, CA
`94111
`
`Prosecution
`counsel for the
`’306 Patent
`
`Prosecution history of the
`’306 Patent
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 17 of 27 PageID #: 1035
`
`Name
`
`Robert C.
`Colwell
`
`Steve Y. Cho
`
`Neil D.
`Gershon
`
`McDermott
`Will & Emery
`
`Arthur J.
`Steiner
`
`Gene Z.
`Rubinson
`
`Address and Telephone
`Number
`Last known address:
`Two Embarcadero
`Center, 8th Floor, San
`Francisco, CA 94111
`6100 219th Street SW
`Suite 580
`Mountlake Terrace, WA
`98043
`(425) 348-3500
`
`1011 High Ridge Road
`Stamford, CT 06905
`(203) 329-0289
`
`500 N. Capitol Street
`NW
`Washington, DC 20001
`
`
`44 Canal Center Plaza
`Suite 305
`Alexandria, VA 22314
`(703) 519-9951
`
`Last known address:
`500 N. Capitol Street
`NW
`Washington, DC 20001
`(202) 756-8000
`
`Connection to
`the Case
`Prosecution
`counsel for the
`’306 Patent
`
`Prosecution
`counsel for the
`’306 Patent
`
`Prosecution
`counsel for the
`’306 Patent
`
`Prosecution
`counsel for the
`’794 Patent
`
`
`Prosecution
`counsel for the
`’794 Patent
`
`Summary of Information
`
`Prosecution history of the
`’306 Patent
`
`Prosecution history of the
`’306 Patent
`
`Prosecution history of the
`’306 Patent
`
`Prosecution history of the
`’794 Patent
`
`Prosecution history of the
`’794 Patent
`
`Prosecution
`counsel for the
`’794 Patent
`
`Prosecution history of the
`’794 Patent
`
`Michael E.
`Fogarty
`
`500 N. Capitol Street
`NW
`Washington, DC 20001
`(202) 756-8372
`
`Prosecution
`counsel for the
`’794 Patent
`
`Prosecution history of the
`’794 Patent
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 18 of 27 PageID #: 1036
`
`Name
`
`Keith E. George
`
`Address and Telephone
`Number
`1090 Vermont Avenue
`NW,
`Suite 1200
`Washington, DC 20005
`(202) 808-7369
`
`Connection to
`the Case
`Prosecution
`counsel for the
`’794 Patent
`
`Summary of Information
`
`Prosecution history of the
`’794 Patent
`
`Baker Botts
`LLP
`
`Jonathan D.
`Cocks
`
`Henry Chen
`
`30 Rockefeller Plaza
`44th Floor
`New York, NY 10112-
`4498
`
`30 Rockefeller Plaza
`New York, New York
`10112-4498
`(212) 408-2500
`
`69 Charlton Street
`New York, NY 10014
`(646) 397-1251
`
`
`Prosecution
`counsel for the
`’586 Patent
`
`Prosecution
`counsel for the
`’586 Patent
`
`Prosecution history of the
`’586 Patent
`
`Prosecution history of the
`’586 Patent
`
`Prosecution
`counsel for the
`’586 Patent
`
`Prosecution history of the
`’586 Patent
`
`Tatsuya
`Yamamoto
`
`Contact through
`undersigned counsel.
`
`Employee of
`Maxell, Ltd.
`
`Koji Kaniwa
`
`Contact through
`undersigned counsel.
`
`Employee in
`the Optronics
`Division of
`Maxell, Ltd.
`
`Corporate information of
`Maxell, Ltd.; assignment
`and acquisition of the
`asserted patents; and
`Maxell research and
`development, products, and
`markets
`
`Corporate information of
`Maxell, Ltd.; assignment
`and acquisition of the
`asserted patents; and
`Maxell research and
`development, products, and
`markets
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 19 of 27 PageID #: 1037
`
`Name
`
`Nobuyuki Kaji
`
`Address and Telephone
`Number
`Contact through
`undersigned counsel.
`
`Connection to
`the Case
`Employee of
`Maxell, Ltd.
`
`Kenji
`Nakamura
`
`Contact through
`undersigned counsel.
`
`Norio Kitagata
`
`Contact through
`undersigned counsel.
`
`Hitachi, Ltd.
`
`Satoshi Matsuo
`
`6-6 Marunouchi 1-
`chome, Chiyoda-ku,
`Tokyo, 100-8280 Japan
`+81-3-3258-1111
`Contact through
`undersigned counsel.
`
`Alan R.
`Loudermilk
`
`Contact through
`undersigned counsel.
`
`
`
`
`
`Summary of Information
`
`Corporate information of
`Maxell, Ltd.; assignment
`and acquisition of the
`asserted patents; and
`Maxell research and
`development, products, and
`markets
`
`Corporate information of
`Maxell, Ltd.; licensing of
`Maxell patents
`
`Corporate information of
`Maxell, Ltd.; assignment
`and acquisition of the
`Asserted Patents; and
`Maxell research and
`development, products, and
`markets
`
`Prior owner of the Asserted
`Patents.
`
`Employee in
`the IP
`Department of
`Maxell, Ltd.
`
`Employee in
`the Optronics
`Division of
`Maxell, Ltd.
`
`
`
`Employee of
`Hitachi, Ltd.
`
`Licensing of Maxell
`patents
`
`Licensing of Maxell
`patents
`
`Representative
`of Hitachi
`Maxell, Ltd. in
`licensing
`negotiations
`
`

`

`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 20 of 27 PageID #: 1038
`
`Name
`
`Heather Mewes
`
`Address and Telephone
`Number
`Principal Counsel, IP
`Transactions
`One Apple Park Way,
`Cupertino, CA 95014
`
`Connection to
`the Case
`Employee of
`Apple Inc.
`
`Summary of Information
`
`Licensing of Maxell
`patents
`
`Jayna Whitt
`
`One Apple Park Way,
`Cupertino, CA 95014
`
`Employee of
`Apple Inc.
`
`Licensing of Maxell
`patents
`
`Jeff Risher
`
`Faraday Future
`18455 S Figueroa St.
`Los Angeles, CA 90248
`
`Former
`employee of
`Apple Inc.
`
`Licensing of Maxell
`patents
`
`Maxell
`Corporation of
`America, Inc.
`
`Contact through
`undersigned counsel.
`
`
`
`Relationship between
`Maxell and Apple; prior
`negotiations between Maxell
`and Apple
`
`Intel
`Corporation
`
`2200 Mission College
`Blvd.
`Santa Clara, CA 95054-
`1549
`
`Component
`Supplier
`
`Skyworks
`Solutions, Inc.
`
`c/o Corporation Service
`Company
`84 State Street
`Boston, MA 02109
`
`Component
`Supplier
`
`Technical design and
`operation of implicated
`components, including
`without limitation modems,
`controllers, RF
`transceivers, and power
`management ICs
`
`Technical design and
`operation of implicated
`components, including
`without limitation GPS
`LNA, RF switches,
`amplifiers, power amplifier
`modules, and front-end
`modules
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 53-16 Filed 08/02/19 Page 21 of 27 PageID #: 1039
`
`Name
`
`Broadcom Inc.
`
`Address and Telephone
`Number
`1320 Ridder Park Drive
`San Jose, California
`95131
`
`Connection to
`the Case
`Component
`Supplier
`
`Dialog
`Semiconductor
`
`675 Campbell
`Technology Pkwy
`Suite 150
`Campbell, California
`95008
`
`Component
`Supplier
`
`Sony
`Corporation of
`America
`
`c/o Corporation Service
`Company
`80 State Street
`Albany, NY 12207
`
`Component
`Supplier
`
`Qorvo, Inc.
`
`7628 Thorndike Road
`Greensboro, NC 27409
`
`Component
`Supplier
`
`Qualcomm Inc.
`
`5775 Morehouse Dr.
`San Diego CA 92121
`
`Component
`Supplier
`
`Summary of Information
`
`Technical design and
`operation of implicated
`components, including
`without limitation front-
`end modules and power
`amplifier modules
`
`Technical design and
`operation of implicated
`components, including
`without limitation power
`management ICs
`
`Technical design and
`operation of implicated
`components, including
`without limitation image
`sensors
`
`Technical design and
`operation of implicated
`components, including
`without limitation front-
`end modules, power
`amplifiers, envelope
`trackers, and transmit
`modules
`
`Technical desig