Case 5:19-cv-00036-RWS Document 56 Filed 08/05/19 Page 1 of 11 PageID #: 1092
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
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`Civil Action No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`PLAINTIFF MAXELL, LTD.’S OPPOSED MOTION TO COMPEL DEFENDANT
`APPLE INC. TO PRODUCE TIMELY DISCOVERY
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`Case 5:19-cv-00036-RWS Document 56 Filed 08/05/19 Page 2 of 11 PageID #: 1093
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`Apple is engaged in a sharp and calculated strategy to delay discovery in a fashion that is
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`guaranteed to prejudice Maxell and disrupt the Court’s Docket Control Order. Apple’s responses
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`and objections show that Apple treats deadlines as starting points for collecting discovery. The
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`result is a woefully deficient production and interrogatory “responses” that suggest answers in
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`the future, if at all. This must be addressed now to avoid more prejudice from Apple’s delays,
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`including waiting until the final days of discovery to provide relevant, responsive information.
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`I.
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`The Court Should Order Apple to Substantially Complete its Document Production
`by September 6, 2019.
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`On July 10, each party was to produce “all documents… that are relevant to the pleaded
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`claims or defenses involved in this action, except to the extent these disclosures are affected by
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`the time limits set forth in the Patent Rules….” D.I. 42 at 3(b); D.I. 46. Disregarding “all
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`documents,” Apple contends July 10 is merely the date for productions to begin. Apple thus
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`produced only 190 documents—with no user manuals, licenses, sales, or marketing information.1
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`Apple claims it will produce some of these materials by August 14, Apple’s LPR 3-4 deadline.
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`But Apple insists it can continue to slow-roll production at least until the close of fact discovery.
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`Under any interpretation of the Discovery Order and Patent Rules, Apple’s document
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`production should be substantially complete by August 14—including “all documents” required
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`by ¶3(b) of the Discovery Order and those required by LPR 3-4. Despite Maxell’s repeated
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`requests, and offers of two different proposed deadlines, Apple refuses to provide any date
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`certain by which its production will be substantially complete other than the close of discovery.
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`In the ordinary case, Maxell would have served RFPs along with other discovery (on
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`June 18) and Apple would have had to produce its materials within 30 days—July 18—or seek
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`1 Maxell substantially completed its production July 10, excepting documents needing third party consent.
`It sought consent once the Protective Order issued and produced most such materials. Apple claims it
`withheld documents pending consent, but provides no details about whether consent has yet been sought.
`1
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`Case 5:19-cv-00036-RWS Document 56 Filed 08/05/19 Page 3 of 11 PageID #: 1094
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`additional time from the Court. F.R.C.P. 34(b). But this Court’s experience with patent cases,
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`including the unique discovery challenges they present, led to the development of a model
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`discovery that requires early and robust disclosures from the parties. The Court’s mandatory
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`Additional Disclosures are intended to “obviate the need for requests for production.” D.I. 42 at
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`fn. 1. Rather than the 30 days allowed under Rule 34, the Court set a date certain for the
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`production of all relevant materials—July 10. D.I. 46. In direct defiance of the purpose of the
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`Discovery Order, Apple seeks to evade timely document production in a way it could not under
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`the traditional operation of Rule 34. Apple should not be permitted to game the system this way.
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`As of this filing, Apple’s production is deficient. Apple has not produced any sales or
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`marketing documentation, a majority of its licenses, or corporate organization and policy
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`documentation. It produced some technical documentation, but is still deficient in this category
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`too. Maxell requests that Apple be ordered to substantially complete its production of all relevant
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`materials by September 6 (3.5 weeks after the latest it should have done so under the rules).2
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`II.
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`Apple’s Must Provide Substantive, Complete Interrogatory Responses.
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`Apple has not provided substantive, complete responses to any of Maxell’s first set of
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`interrogatories and has agreed to fully “supplement” only one. Apple’s refusals to respond are
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`based on improper objections; sometimes Apple simply states it will provide a response in the
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`future. Such unilateral delay of discovery without good cause or seeking an extension from
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`Maxell or the Court is contrary to F.R.C.P. 33(b)(2). Maxell requests that Apple be required to
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`provide substantive, binding responses no later than September 6 (7 weeks after initially due).
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`Interrogatory Nos. 3, 4, 5, and 9 seek information regarding Apple’s licenses, sales,
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`awareness of the asserted patents, and forecasts. For each, Apple responded: “At an appropriate
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`2Apple also tries to use its delayed production as a way to avoid providing timely interrogatory responses.
`It is for this reason too that it is necessary to provide a date certain for substantial completion.
`2
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`Case 5:19-cv-00036-RWS Document 56 Filed 08/05/19 Page 4 of 11 PageID #: 1095
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`time contemplated by the Docket Control Order…, Apple will identify documents pursuant to
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`[F.R.C.P.] 33(d) from which Maxell may derive [responsive] information.” See Ex. A. The
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`“appropriate time” to respond to an interrogatory is 30 days after service. F.R.C.P. 33(b)(2).
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`Apple’s use of Rule 33(d) as a placeholder to buy time to substantively respond is improper.
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`Rule 33(d) requires “specifying the records that must be reviewed, in sufficient detail to enable
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`the interrogating party to locate and identify them….” It “requires more than a promise to
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`produce certain unspecified records at some future time.” Parks, LLC v. Tyson Foods, Inc., No.
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`5:15-cv-00946, 2015 U.S. Dist. LEXIS 112861, at *13-14 (E.D. Pa. August 25, 2015).
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`When confronted, Apple agreed to update the responses to identify relevant documents
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`“as soon as they are produced.” But this agreement, when accompanied by delays in document
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`production, provides no assurance that Apple will provide fulsome responses at any time before
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`the close of fact discovery. As noted, Apple refuses to commit to a date by which its production
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`will be substantially complete, which means there is no date by which Maxell can expect Apple’s
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`response to the interrogatories to be complete. This is true even for interrogatories for which
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`Apple has provided a date certain for supplementation given Apple’s tendency to treat deadlines
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`as dates for providing initial, rather than complete, responses.
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`Apple’s intent to delay is evident from its statement that Maxell cannot “unilaterally
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`change Apple’s production obligations by virtue of its interrogatories.” A party is not required to
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`respond to an interrogatory using F.R.C.P. 33(d). Apple could provide a narrative response,
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`which has no impact on the production. By relying on documents to respond to interrogatories
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`while simultaneously withholding the production of such documents, Apple is depriving Maxell
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`of its ability to obtain discovery in this case until Apple decides it is time. Apple should be
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`required to provide complete response to these interrogatories by September 6.
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`3
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`Case 5:19-cv-00036-RWS Document 56 Filed 08/05/19 Page 5 of 11 PageID #: 1096
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`Interrogatory No. 2 seeks Apple’s basis for its contention that any accused product does
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`not infringe. In its initial disclosures, Apple states that it “is currently aware of the legal theories
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`and factual bases of its claims and defenses listed below,” which includes non-infringement. See,
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`Ex. B (excerpt of Apple Initial Disclosures). But Apple refuses to provide a response, stating it
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`seeks early disclosure of expert opinions and that non-infringement contentions are not required.
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`Maxell recognizes it may not seek early expert opinion and does not intend to do so. Rather,
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`Maxell seeks the factual bases for non-infringement that Apple has already explicitly stated is
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`within its possession. If Apple has “legal theories and factual bases” for its claims of non-
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`infringement currently within its possession, Apple must be compelled to disclose them now.
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`Interrogatory No. 3 seeks certain information regarding Apple’s patent licenses that
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`relate to the Accused Products. Ex. A. Apple stated it will eventually produce and identify a
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`subset of its licenses that it unilaterally deems are “reasonably relevant to the technology and/or
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`functionalities accused in this case and reasonably proximate to the dates of a hypothetical
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`negotiation or negotiations asserted by Maxell,” but refuses to identify all licenses that relate to
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`the accused, or reasonably similar, products. Apple also provides no detail regarding how it is
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`making its relevance determinations and refuses to provide information regarding how the
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`royalty/consideration of each license was determined. Apple should not be permitted to limit its
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`discovery in this way. License agreements that pertain to the accused products, and information
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`about how consideration was reached, are highly relevant to a damages analysis—at least to
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`Georgia-Pacific factors 2 and 12 and to the form of a license that would have been entered into
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`as a result of a hypothetical negotiation. This is true even if the technology of the agreements is
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`arguably dissimilar from that of the asserted patents. See, e.g., Mirror Worlds Techs., LLC v.
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`Apple Inc., No. 6:13-cv-419, 2016 WL 4265758, at *1 (E.D. Tex. Mar. 17, 2016) (granting
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`4
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`Case 5:19-cv-00036-RWS Document 56 Filed 08/05/19 Page 6 of 11 PageID #: 1097
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`motion to compel license agreements related to wireless technology when patents were arguably
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`directed to unrelated technology because they may be relevant to Georgia-Pacific factors 2 and
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`12 and to the form of a license). Moreover, Maxell should not be asked to trust Apple to be the
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`arbiter of what license agreements are relevant to Maxell’s claims, particularly when it is clear
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`Apple is so resistant to providing timely, responsive discovery.
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`Interrogatory No. 4 seeks certain information relating to Apple’s sales and profits from
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`the accused products. Apple has stated it will eventually produce information regarding
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`revenues, costs, and/or profits relating to U.S. sales, but refuses to provide units sold, or entities
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`responsible for sales/distribution, customers of sales/distributions. Information regarding Apple’s
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`sales networks and distribution channels is relevant to the issue of damages. Furthermore,
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`authorized sellers of Apple’s products may have information regarding the operation, use, and
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`marketing of the accused products and Maxell is entitled to know the identity of such entities.
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`Interrogatory No. 5 seeks information regarding Apple’s first awareness of the asserted
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`patents. Ex. A. Apple states it will eventually produce and identify documents regarding when
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`Apple first learned of the patents, but refuses to provide details regarding the circumstances
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`surrounding such awareness, such as actions taken upon becoming aware. Maxell is alleging
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`willful infringement in this litigation, which is based in part on years of negotiations between the
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`parties. The circumstances surrounding Apple’s first awareness of the patents and actions taken
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`since are thus squarely relevant to the claims of this case and must be provided.
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`Interrogatory No. 6 seeks the part number and supplier of the relevant components and
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`the cost to Apple of such components. Ex. A. To eliminate doubt about what Maxell seeks,
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`Maxell provided an excel chart with the interrogatory that Apple could fill in, which identified
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`the specific components and which information was sought. Ex. C. Apple refused to respond,
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`5
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`Case 5:19-cv-00036-RWS Document 56 Filed 08/05/19 Page 7 of 11 PageID #: 1098
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`stating it is compound3 and constitutes at least 21 separate interrogatories. Apple’s position is
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`absurd. Interrogatory subparts are not counted as discrete subparts if they are “logically or
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`factually subsumed within and necessarily related to the primary question.” Krawczyk v. City of
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`Dallas, No.3:03-cv-0584, 2004 U.S. Dist. LEXIS 30011, at *7 (E.D. Tex. Feb. 27, 2004). Maxell
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`could have simply propounded an interrogatory asking Apple to provide the requested
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`information for the relevant components implicated by the asserted patents. That Maxell
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`attempted to clarify and limit the scope of what constitutes a “relevant component” should not be
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`held against it and suddenly transform a single interrogatory into 21.
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`Following meet and confer, Apple stated it will produce and identify Bills of Materials
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`(BOMs) for the accused products in response to this interrogatory. Reliance on F.R.C.P. 33(d) is
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`not appropriate here. First, the BOMs do not have the requested cost information. Second, the
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`burden on Maxell of working through BOMs produced as separate 100+ page PDFs for each
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`accused product to identify relevant components is substantially greater than it would be for a
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`highly sophisticated company like Apple, who undoubtedly meticulously tracks this information,
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`to perform searches on its own system. This is particularly true given that Apple is aware of the
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`terminology it uses to describe the various components, which may be unknown to Maxell.
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`Interrogatory No. 7 asks Apple to identify any steps taken to avoid infringing any claim
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`of an asserted patent. Ex. A. Apple responds that it has not infringed and otherwise refuses to
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`provide any response on the basis of an objection that the interrogatory seeks expert discovery.
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`While Apple may takes steps in the future that may implicate expert discovery, such objection
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`does not apply to prior conduct. If Apple took any steps in the past to avoid infringement, that is
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`a fact that Maxell is entitled to discover now.
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`3 Apple also improperly objects to Interrogatories 1, 3-5, and 9 as compound, intending to use those
`objections as a basis to avoid answering future interrogatories. Maxell requests the Court nip these
`discovery games in the bud and order Apple to comply with its discovery obligations.
`6
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`Case 5:19-cv-00036-RWS Document 56 Filed 08/05/19 Page 8 of 11 PageID #: 1099
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`Interrogatory No. 8 asks Apple to describe any acceptable, non-infringing alternatives.
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`Apple again refuses to respond on the basis that the interrogatory seeks expert discovery. This
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`District has held that a defendant must identify non-infringing alternatives prior to the deadline
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`for expert disclosures to enable a plaintiff to conduct discovery into the alternatives. See, e.g.,
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`Godo Kaisha IP Bridge 1 v. Broadcom Ltd., No. 2:16-CV-134-JRG-RSP, 2017 WL 2869344, at
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`*2-3 (E.D. Tex. Apr. 20, 2017)(striking expert opinions based on non-infringing alternatives not
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`previously disclosed, stating “Defendants provide no adequate explanation for failing to disclose
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`its non-infringing alternatives and the prejudice to [Plaintiff] for failing to respond to the
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`interrogatory is significant.”). Apple cannot withhold this discovery until expert reports.
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`Interrogatory No. 9 asks Apple to identify documents related to sales forecasts and
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`projections for the accused categories of products. Although Apple stated in its response that it
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`will produce documents related to the specific accused products, following meet and confer it
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`now appears that Apple refuses to provide even this information. Forecasts are relevant to the
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`issue of damages. Where a damages expert calculates patent damages as a lump-sum royalty, she
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`may estimate future use of the patented invention. Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d
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`1301, 1327 (Fed. Cir. 2009). This District recently upheld a damages assessment that
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`“conservatively account[ed] for future sales of accused products based on forecasts and
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`inferences drawn from [defendant’s] past sales.” Ericsson Inc., et al, v. TCL Commc’ns Tech.
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`Holdings, Inc., No. 2:15-cv-00011-RSP, 2018 WL 2149736, at *7 (E.D. Tex. May 10, 2018).
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`III.
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`Conclusion
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`Maxell requests that Apple be ordered to substantially complete its production and
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`provide fulsome, binding interrogatory responses by no later than September 6. Otherwise,
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`Apple will continue to ignore its discovery obligations to will severely prejudice Maxell.
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`7
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`Case 5:19-cv-00036-RWS Document 56 Filed 08/05/19 Page 9 of 11 PageID #: 1100
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`Dated: August 5, 2019
`
`By:
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`8
`
`/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
`Baldine B. Paul
`Tiffany A. Miller
`Saqib J. Siddiqui
`Bryan C. Nese
`William J. Barrow
`Alison T. Gelsleichter
`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
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`wbarrow@mayerbrown.com
`agelsleichter@mayerbrown.com
`
`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`
`

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`Case 5:19-cv-00036-RWS Document 56 Filed 08/05/19 Page 10 of 11 PageID #: 1101
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`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`CERTIFICATE OF CONFERENCE
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`I certify that Plaintiff Maxell, Ltd. has complied with the requirements of Local Rule CV-
`7(h) and the Discovery Order governing this case. Specifically, Maxell sent Apple a written
`statements outlining its deficient discovery on July 19, 2019. The parties held a telephonic meet
`and confer on July 30, 2019, which was attended by lead and local counsel for both parties. On
`August 2, 2019, Apple provided a written response to Maxell’s July 19 letter stating the
`requested items that it would disclose and the reasons why any requested items would not be
`disclosed. Although the parties discussed their respective positions, they did not come to an
`agreement regarding the items identified in this motion.
`
`/s/ Jamie B. Beaber
`Jamie B. Beaber
`
`9
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`Case 5:19-cv-00036-RWS Document 56 Filed 08/05/19 Page 11 of 11 PageID #: 1102
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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
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`electronic service are being served this 5th day of August, 2019, with a copy of this document via
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`the Court’s electronic CM/ECF system.
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`Dated: August 5, 2019
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
`
`10
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