Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 1 of 22 PageID #: 1659
`Case 5:19-cv-00036—RWS Document 58-18 Filed 08/13/19 Page 1 of 22 PageID #: 1659
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`EXHIBIT P
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`EXHIBIT P
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`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 2 of 22 PageID #: 1660
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`MAXELL, LTD.,
`
`Plaintiff,
`
`
`
`
`
`
`
`vs.
`
`APPLE INC.,
`
`
`
`Defendant.
`
`
`
`
`
` Civil Action No. 5:19-cv-00036-RWS
`
`
`JURY TRIAL DEMANDED
`
`
`
`DEFENDANT APPLE INC.’S INITIAL AND ADDITIONAL DISCLOSURES
`
`Pursuant to the Court’s June 25, 2019 Discovery Order for Patent Cases [ECF 42] and the
`
`June 12, 2019 [Proposed] Docket Control Order [ECF 34-1], Defendant Apple Inc. (“Apple”)
`
`makes the following initial and additional disclosures of information to Plaintiff Maxell, Ltd.
`
`(“Maxell”). These disclosures are based on a reasonable investigation conducted in the time
`
`available. This investigation is ongoing, however, and Apple expressly reserves the right to
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`supplement these disclosures. Apple’s disclosures are made without waiver of, or prejudice to,
`
`any objections that Apple may have regarding the subject matter of these disclosures and any
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`documents or individuals identified herein.
`
`I.
`
`INITIAL DISCLOSURES REQUIRED UNDER THE COURT’S DISCOVERY
`ORDER
`A.
`
`The Correct Names of the Parties to the Lawsuit
`
`The correct name of Apple is: Apple Inc. Apple refers to Maxell’s disclosures regarding
`
`the correct names of other parties to the lawsuit.
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`
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`Page 1 of 21
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`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 3 of 22 PageID #: 1661
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`B.
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`The Name, Address, and Telephone Number of Any Potential Parties
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`Apple is not currently aware of any potential additional parties to this lawsuit. Because the
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`identities of potential parties may be revealed through discovery in this matter, Apple specifically
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`reserves the right to identify and seek to join, upon a showing of good cause, potential parties as
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`discovery proceeds, if necessary.
`
`C.
`
`The Legal Theories and Factual Bases of the Disclosing Party’s Claims or
`Defenses
`
`Apple is currently aware of the legal theories and factual bases of its claims and defenses
`
`listed below. Apple has not yet filed an Answer in this case but incorporates by reference the
`
`responses and defenses that will be asserted therein. Apple also incorporates by reference the
`
`responses and defenses raised in its Motion for Partial Dismissal of Plaintiff’s Complaint for
`
`Failure to State a Claim [ECF 27] and its Reply in support of same [ECF 37] (collectively, “Apple’s
`
`Motion to Dismiss”). Discovery is ongoing, and Apple reserves the right to assert additional
`
`defenses. Apple also reserves the right to modify or supplement its theories and/or the factual
`
`bases for its claims or defenses:
`
`Non-infringement. Apple has not directly or indirectly infringed, either literally or under
`
`the doctrine of equivalents, any valid and enforceable claim of any of U.S. Patent Nos. 6,748,317
`
`(“’317 Patent”); 6,580,999 (“’999 Patent”); 8,339,493 (“’493 Patent”); 7,116,438 (“’438 Patent”);
`
`6,408,193 (“’193 Patent”); 10,084,991 (“’991 Patent”); 6,928,306 (“’306 Patent”); 6,329,794
`
`(“’794 Patent”); 10,212,586 (“’586 Patent”); and 6,430,498 (“’498 Patent”) (collectively, the
`
`“Patents-in-Suit”). Apple does not manufacture, use, sell, or offer to sell in the United States, or
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`import into the United States, any product that includes each and every element of any asserted
`
`claim of the Patents-in-Suit, or an equivalent, to the extent that Maxell is entitled to any equivalent.
`
`Specifically, accused Apple products (and the operation thereof) are missing or do not perform
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`
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`Page 2 of 21
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`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 4 of 22 PageID #: 1662
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`one or more elements or steps required by the asserted claims of the Patents-in-Suit. Further,
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`Apple products have substantial non-infringing uses. Apple also does not contribute to or induce
`
`another’s infringement, and Apple has no intent to induce any alleged infringement. Moreover, at
`
`least because Apple cannot be liable for infringement of any claims, Apple cannot be liable for
`
`willfully infringing the Patents-in-Suit.
`
`Invalidity. The asserted claims of the Patents-in-Suit are invalid under 35 U.S.C. §§ 101,
`
`102, 103, 111, 112, 115, 116, 119, 132, 251, 256, and/or 282. Apple will provide detailed
`
`invalidity contentions, prior art, and expert reports on invalidity in the time and manner provided
`
`in the Patent Rules for the Eastern District of Texas and the Court’s scheduling orders.
`
`Limitation on Damages. To the extent Maxell is entitled to any recovery under the
`
`Patents-in-Suit, Maxell’s recovery is limited under 35 U.S.C. § 286 and because of Maxell’s
`
`failure to comply with § 287 and/or § 288.
`
`Estoppel, Waiver, Acquiescence, Patent Misuse and Unclean Hands. To the extent
`
`Maxell is entitled to any recovery under the Patents-in-Suit, Maxell’s recovery is limited by the
`
`equitable doctrines of estoppel, waiver, acquiescence, patent misuse, and unclean hands, including
`
`because Maxell’s claims were waived and/or estopped, in whole or in part, by discussions between
`
`and/or prior agreements entered between Maxell (or a related entity) and Apple.
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`No Willful Infringement. Maxell is not entitled to a finding of willful infringement
`
`because Maxell cannot demonstrate that infringement occurred. Even if Maxell were able to
`
`demonstrate that infringement had occurred, Maxell would still not be entitled to a finding of
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`willful infringement for at least the reasons set forth in Apple’s Motion to Dismiss, including
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`because, among other reasons, Maxell will not be able to show that any alleged infringement by
`
`
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`Page 3 of 21
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`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 5 of 22 PageID #: 1663
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`Apple constituted egregious misconduct. In addition, through prior agreements and/or discussions,
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`Maxell has waived in whole or in part its right to seek enhanced damages for willful infringement.
`
`License, Implied License, Exhaustion, First Sale. Maxell’s claims of infringement are
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`barred or limited to the extent that any allegedly infringing products or components thereof are
`
`supplied, directly or indirectly, to Apple or are imported, sold by, offered for sale by, made by, or
`
`made for, any entity or entities having express or implied licenses to the Patents-in-Suit, and/or
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`under the doctrines of exhaustion, first sale, or full compensation.
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`Lack of Entitlement to Injunction Relief. To the extent Maxell is entitled to any relief,
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`Maxell is not entitled to injunctive relief because it has not and will not suffer any irreparable
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`injury, remedies available at law are adequate to compensate any alleged injury, the balance of
`
`hardships does not favor an injunction, and the public interest would be disserved by a permanent
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`injunction.
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`Exceptional Case. Apple should receive its fees and costs pursuant to 35 U.S.C. § 285, as
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`this is an exceptional case. Apple is presently unable to compute these costs, as the majority of
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`them have not yet accrued, but Apple will provide computations of such costs at an appropriate
`
`time.
`
`D.
`
`Persons Having Knowledge of Relevant Facts
`
`Apple is currently aware of the following persons likely to have discoverable information
`
`that Apple may use to support its claims or defenses in this action, excluding those individuals
`
`who may have discoverable information that Apple may use solely for impeachment. Apple
`
`anticipates that other individuals may also have discoverable information and specifically reserves
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`the right to identify additional witnesses as discovery proceeds. By indicating the general subject
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`matter of information an individual may possess, Apple does not limit its right to call that
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`individual to testify concerning other subjects or agree that all topics within a subject matter would
`Page 4 of 21
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`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 6 of 22 PageID #: 1664
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`be relevant. Apple’s identification of an individual in these disclosures it no a representation by
`
`Apple regarding whether such individual will appear at trial.
`
`The below identified persons are not employed by or associated with Apple.
`
`Name
`Kishiko Maruyama
`
`Named inventor on the ’317,
`’999, and ’498 Patents
`
`Shigeru Shimada
`
`Named inventor on the ’317,
`’999, and ’498 Patents
`
`Toshiichirou Sasaki
`
`Named inventor on the ’317,
`’999, and ’498 Patents
`
`Takahiro Nakano
`
`Named inventor on the ’493
`Patent
`
`Ryuji Nishimura
`
`Named inventor on the ’493
`Patent
`
`
`
`Subject(s)
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’317, ’999,
`and ’498 Patents and related
`patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’317, ’999,
`and ’498 Patents and related
`patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’317, ’999,
`and ’498 Patents and related
`patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’493 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’493 Patent
`and related patents and patent
`applications.
`
`Page 5 of 21
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`Contact Information
`On information and belief,
`Kishiko Maruyama is located
`in Kodaira, Japan.
`
`On information and belief,
`Shigeru Shimada is located in
`Kodaira, Japan.
`
`On information and belief
`Toshiichirou Sasaki is located
`in Iwaki, Japan.
`
`On information and belief,
`Takahiro Nakano is located in
`Hitachinaka, Japan.
`
`On information and belief,
`Ryuji Nishimura is located in
`Yokohama, Japan.
`
`

`

`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 7 of 22 PageID #: 1665
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`Name
`Toshiro Kinugasa
`
`Named inventor on the ’493
`Patent
`
`Jun Maeoka
`
`Named inventor on the ’438
`Patent
`
`Yoshiaki Morimoto
`
`Named inventor on the ’438
`Patent
`
`Motoaki Satoyama
`
`Named inventor on the ’438
`Patent
`
`Koji Doi
`
`Named inventor on the ’438
`Patent
`
`Shinya Iguchi
`
`Named inventor on the ’438
`Patent
`
`Makoto Katagishi
`
`
`
`
`Subject(s)
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’493 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’493 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’438 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’438 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’438 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’438 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`
`Page 6 of 21
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`Contact Information
`On information and belief,
`Toshiro Kinugasa is located
`in Hiratsuka, Japan.
`
`On information and belief,
`Jun Maeoka is located in
`Kawasaki, Japan.
`
`On information and belief,
`Yoshiaki Morimoto is located
`in Kawasaki, Japan.
`
`On information and belief,
`Motoaki Satoyama is located
`in Sagamihara, Japan.
`
`On information and belief,
`Koji Doi is located in
`Yokohama, Japan.
`
`On information and belief,
`Shinya Iguchi is located in
`Fujisawa, Japan.
`
`On information and belief,
`Makoto Katagishi is located
`in Chigasaki, Japan.
`
`

`

`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 8 of 22 PageID #: 1666
`
`Name
`Named inventor on the ’193
`Patent
`
`Shirou Machida
`
`Named inventor on the ’193
`Patent
`
`Kazunori Iwabuchi
`
`Named inventor on the ’991
`Patent
`
`Hiroki Mizosoe
`
`Named inventor on the ’991
`Patent
`
`Mutsumi Shimoda
`
`Named inventor on the ’991
`Patent
`
`Setiawan Bondan
`
`Named inventor on the ’991
`Patent
`
`Manabu Sasamoto
`
`Named inventor on the ’991
`Patent
`
`
`
`Subject(s)
`the inventions claimed in and
`prosecution of the ’193 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’193 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’991 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’991 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’991 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’991 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’991 Patent
`
`Page 7 of 21
`
`Contact Information
`
`On information and belief,
`Shirou Machida is located in
`Yokohama, Japan.
`
`On information and belief,
`Kazunori Iwabuchi is located
`in Yokohama, Japan.
`
`On information and belief,
`Hiroki Mizosoe is located in
`Kawasaki, Japan.
`
`On information and belief,
`Mutsumi Shimoda is located
`in Kawasaki, Japan.
`
`On information and belief,
`Setiawan Bondan is located
`in Yamato, Japan.
`
`On information and belief,
`Manabu Sasamoto is located
`in Yokohama, Japan.
`
`

`

`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 9 of 22 PageID #: 1667
`
`Name
`
`Masayuki Matsuda
`
`Named inventor on the ’306
`Patent
`
`Tomohiro Esaki
`
`Named inventor on the ’306
`Patent
`
`Kazuyuki Takizawa
`
`Named inventor on the ’306
`Patent
`
`Akio Shinagawa
`
`Named inventor on the ’306
`Patent
`
`Chikako Takada
`
`Named inventor on the ’306
`Patent
`
`Shigeto Oeda
`
`Named inventor on the ’794
`Patent
`
`
`
`Subject(s)
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’306 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’306 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’306 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’306 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’306 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’794 Patent
`and related patents and patent
`applications.
`
`Page 8 of 21
`
`Contact Information
`
`On information and belief,
`Masayuki Matsuda is located
`in Tokyo, Japan.
`
`On information and belief,
`Tomohiro Esaki is located in
`Tokyo, Japan.
`
`On information and belief,
`Kazuyuki Takizawa is located
`in Tokyo, Japan.
`
`On information and belief,
`Akio Shinagawa is located in
`Tokyo, Japan.
`
`On information and belief,
`Chikako Takada is located in
`Tokyo, Japan.
`
`On information and belief,
`Shigeto Oeda is located in
`Fujisawa, Japan.
`
`

`

`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 10 of 22 PageID #: 1668
`
`Contact Information
`On information and belief,
`Naoki Mori is located in
`Yokohama, Japan.
`
`On information and belief,
`Hiromichi Ito is located in
`Yokohama, Japan.
`
`On information and belief,
`Masayuki Hirabayashi is
`located in Yokohama, Japan.
`
`On information and belief,
`Hideo Nishijima is located in
`Hitachinaka, Japan.
`
`On information and belief,
`Hitachi, Ltd. is headquartered
`in Tokyo, Japan.
`
`Name
`Naoki Mori
`
`Named inventor on the ’794
`Patent
`
`Hiromichi Ito
`
`Named inventor on the ’794
`Patent
`
`Masayuki Hirabayashi
`
`Named inventor on the ’586
`Patent
`
`Hideo Nishijima
`
`Named inventor on the ’586
`Patent
`
`Hitachi, Ltd.
`
`Previous assignee of the ’317,
`’999, ’493, ’438, ’193, ’306,
`’794, and ’498 Patents and
`alleged owner of relevant
`“intellectual property” (see
`Complaint [ECF 1] ¶ 4)
`
`
`
`Subject(s)
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’794 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’794 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’586 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’586 Patent
`and related patents and patent
`applications.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’317, ’999,
`’493, ’438, ’193, ’306, ’794,
`and ’498 Patents and related
`patents and patent
`applications.
`
`Alleged ownership, rights to,
`conception, reduction to
`practice, development,
`subject matter, scope, and
`prosecution of any other
`allegedly relevant patents
`
`Page 9 of 21
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`

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`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 11 of 22 PageID #: 1669
`
`Name
`
`Hitachi Consumer Electronics
`Co., Ltd.
`
`Previous assignee of the ’317,
`’999, ’493, ’438, ’193, ’306,
`’794, and ’498 Patents and
`alleged owner of relevant
`“intellectual property” (see
`Complaint [ECF 1] ¶ 4)
`
`
`
`Contact Information
`
`On information and belief,
`Hitachi Consumer Electronics
`Co., Ltd. is headquartered in
`Yokohama, Japan.
`
`Subject(s)
`and/or other intellectual
`property.
`
`Apple’s alleged infringement
`of the Patents-in-Suit;
`invalidity and
`unenforceability of the
`Patents-in-Suit; Plaintiff’s
`alleged ownership of the
`Patents-in-Suit; licenses and
`settlement agreements related
`to the Patents-in-Suit; and
`acquisitions and valuations of
`the Patents-in-Suit.
`
`Plaintiff’s relationship,
`communications, meetings,
`interactions with Apple,
`including any related
`agreements.
`
`Plaintiff’s business plans,
`model, strategies, structure,
`history, and finances.
`
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’317, ’999,
`’493, ’438, ’193, ’306, ’794,
`and ’498 Patents and related
`patents and patent
`applications.
`
`Apple’s alleged infringement
`of the Patents-in-Suit;
`invalidity and
`unenforceability of the
`Patents-in-Suit; Plaintiff’s
`alleged ownership of the
`Patents-in-Suit; licenses and
`settlement agreements related
`to the Patents-in-Suit; and
`
`Page 10 of 21
`
`

`

`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 12 of 22 PageID #: 1670
`
`Name
`
`Hitachi Maxell, Ltd.
`
`Previous assignee of the ’317,
`’999, ’493, ’438, ’193, ’306,
`’794, and ’498 Patents and
`alleged owner of relevant
`“intellectual property” (see
`Complaint [ECF 1] ¶ 4)
`
`
`
`Contact Information
`
`On information and belief,
`Hitachi Maxell, Ltd. is
`headquartered in Tokyo,
`Japan.
`
`Subject(s)
`acquisitions and valuations of
`the Patents-in-Suit.
`
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the Patents-in-
`Suit and related patents and
`patent applications.
`
`Plaintiff’s relationship,
`communications, meetings,
`interactions with Apple,
`including any related
`agreements.
`
`Plaintiff’s business plans,
`model, strategies, structure,
`history, finances, licensing
`practices.
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the ’317, ’999,
`’493, ’438, ’193, ’306, ’794,
`and ’498 Patents and related
`patents and patent
`applications.
`
`Apple’s alleged infringement
`of the Patents-in-Suit;
`invalidity and
`unenforceability of the
`Patents-in-Suit; Plaintiff’s
`alleged ownership of the
`Patents-in-Suit; licenses and
`settlement agreements related
`to the Patents-in-Suit; and
`acquisitions and valuations of
`the Patents-in-Suit.
`
`Alleged conception, reduction
`to practice, development,
`
`Page 11 of 21
`
`

`

`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 13 of 22 PageID #: 1671
`
`Name
`
`Mattingly, Stanger & Malur,
`P.C.
`
`Named prosecution firm for
`the ’317, ’999, ’438, ’193,
`and ’498 Patents
`
`
`Mattingly & Malur, PC
`
`Named prosecution firm for
`the ’991 Patent
`
`
`Subject(s)
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the Patents-in-
`Suit and related patents and
`patent applications.
`
`Plaintiff’s relationship,
`communications, meetings,
`interactions with Apple,
`including any related
`agreements.
`
`Plaintiff’s business plans,
`model, strategies, structure,
`history, finances, licensing
`practices.
`Prosecution of the ’317, ’999,
`’438, ’193, and ’498 Patents
`and related patents and patent
`applications.
`
`Prosecution of the ’991
`Patent and related patents and
`patent applications.
`
`
`Antonelli, Terry, Stout &
`Kraus, LLP
`
`Named prosecution firm for
`the ’493 Patent
`
`
`Prosecution of the ’493
`Patent and related patents and
`patent applications.
`
`
`Townsend and Townsend and
`Crew LLP
`
`
`Prosecution of the ’306
`Patent and related patents and
`patent applications.
`
`
`
`
`Page 12 of 21
`
`Contact Information
`
`On information and belief,
`contact information is:
`
`1800 Diagonal Road
`Suite 370
`Alexandria, VA 22314
`Tel: (703) 684-1120
`Fax: (703) 684-1157
`On information and belief,
`contact information is:
`
`1800 Diagonal Road
`Suite 210
`Alexandria, VA 22314
`Tel: (703) 684-1120
`Fax: (703) 684-1157
`On information and belief,
`contact information is:
`
`1300 N. 17th Street
`Suite 1800
`Arlington, VA 22209
`Tel: (703) 312-6600
`Fax: (703) 312-6666
`
`On information and belief,
`contact information is:
`
`Two Embarcadero Center
`
`

`

`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 14 of 22 PageID #: 1672
`
`Contact Information
`8th Floor
`San Francisco, CA 94111
`Tel: (415) 576-0200; (650)
`326-2400
`Fax: (415) 576-0300; (650)
`326-2422
`On information and belief,
`contact information is:
`
`600 13th Street, N.W.
`Washington, DC 20005
`Tel: (202) 756-8000
`Fax: (202) 756-8087
`On information and belief,
`contact information is:
`
`30 Rockefeller Plaza
`44th Floor
`New York, NY 10112
`Tel: (212) 408-2561
`
`On information and believe,
`Maxell, Ltd. is located in
`Kyoto, Japan.
`
`Name
`Named prosecution firm for
`the ’306 Patent
`
`
`Subject(s)
`
`McDermott, Will & Emery
`
`Named prosecution firm for
`the ’794 Patent
`
`
`Prosecution of the ’794
`Patent and related patents and
`patent applications.
`
`
`Baker Botts L.L.P.
`
`Named prosecution firm for
`the ’586 Patent
`
`
`Prosecution of the ’586
`Patent and related patents and
`patent applications.
`
`
`Maxell, Ltd.
`
`
`
`Apple’s alleged infringement
`of the Patents-in-Suit;
`invalidity and
`unenforceability of the
`Patents-in-Suit; Plaintiff’s
`alleged ownership of the
`Patents-in-Suit; licenses and
`settlement agreements related
`to the Patents-in-Suit; and
`acquisitions and valuations of
`the Patents-in-Suit.
`
`Alleged conception, reduction
`to practice, development,
`subject matter, and scope of
`the inventions claimed in and
`prosecution of the Patents-in-
`Suit and related patents and
`patent applications.
`
`Plaintiff’s relationship,
`communications, meetings,
`interactions with Apple,
`
`Page 13 of 21
`
`

`

`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 15 of 22 PageID #: 1673
`
`Name
`
`Authors, publishers, and
`custodians of prior art
`materials to be identified in
`Apple’s invalidity
`contentions
`
`All individuals identified in
`the Initial Disclosures served
`by Maxell in this litigation.
`Qualcomm Incorporated
`
`Intel Corporation
`
`Maxell Research and
`Development America, LLC
`(“MRDA”)
`Alan Loudermilk
`
`
`
`Contact Information
`
`Various
`
`See Initial Disclosures of
`Maxell.
`
`5775 Morehouse Dr.
`San Diego CA 92121
`Tel: (858) 587-1121
`
`2200 Mission College Blvd.
`Santa Clara, CA 95054
`Tel: (408) 765-8080
`
`3 Garret Mountain Plaza
`Suite 300
`Woodland Park, NJ 07424
`On information and belief,
`contact information is:
`
`511 N. Washington Ave.
`Marshall, TX 75670
`
`Subject(s)
`including any related
`agreements.
`
`Plaintiff’s business plans,
`model, strategies, structure,
`history, finances, licensing
`practices.
`Authenticity, publication,
`date, and other facts related to
`prior art systems and
`references.
`
`Invalidity of the Patents-in-
`Suit
`See Initial Disclosures of
`Maxell.
`
`The design, operation, and
`development of aspects of the
`accused products for the
`’193 Patent.
`The design, operation, and
`development of aspects of the
`accused products for the
`’193 Patent.
`Plaintiff’s alleged ties to the
`Eastern District of Texas
`
`Plaintiff’s alleged ownership
`of the Patents-in-Suit;
`licenses and settlement
`agreements related to the
`Patents-in-Suit; and
`acquisitions and valuations of
`the Patents-in-Suit.
`
`Plaintiff’s relationship,
`communications, meetings,
`interactions with Apple,
`including any related
`agreements.
`
`Plaintiff’s business plans,
`model, strategies, structure,
`
`Page 14 of 21
`
`

`

`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 16 of 22 PageID #: 1674
`
`Name
`
`Satoshi Matsuo
`
`Takashi Suzuki
`
`Shigemi Iwasaki
`
`Steven Washio
`
`
`
`
`Subject(s)
`history, finances, licensing
`practices.
`Pre-suit communications with
`Apple; Plaintiff’s alleged
`ownership of the Patents-in-
`Suit; licenses and settlement
`agreements related to the
`Patents-in-Suit; and
`acquisitions and valuations of
`the Patents-in-Suit; Plaintiff’s
`patent licensing and/or sale
`practices
`Pre-suit communications with
`Apple; Plaintiff’s alleged
`ownership of the Patents-in-
`Suit; licenses and settlement
`agreements related to the
`Patents-in-Suit; and
`acquisitions and valuations of
`the Patents-in-Suit; Plaintiff’s
`patent licensing and/or sale
`practices
`Pre-suit communications with
`Apple; Plaintiff’s alleged
`ownership of the Patents-in-
`Suit; licenses and settlement
`agreements related to the
`Patents-in-Suit; and
`acquisitions and valuations of
`the Patents-in-Suit; Plaintiff’s
`patent licensing and/or sale
`practices
`Pre-suit communications with
`Apple;
`
`Contact Information
`
`Best known to Plaintiff
`
`Best known to Plaintiff
`
`Best known to Plaintiff
`
`Maxell Corp. of America
`3 Garret Mountain Plaza
`Suite 300
`Woodland Park, NJ 07424
`
`The below identified persons are employed by Apple and may be contacted only through
`
`Apple’s counsel at O’Melveny & Myers, Two Embarcadero Center, 28th Floor, San Francisco,
`
`California 94111, (415) 984-8700.
`
`
`
`Page 15 of 21
`
`

`

`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 17 of 22 PageID #: 1675
`
`Name
`Scott Lopatin
`
`Rob Mayor
`
`Patrick Coleman
`
`Paul Hubel
`
`Andrew McMahon
`
`Cyril de la Cropte de
`Chanterac
`Ming Hu
`
`Mathew Shepard
`
`Christopher Garrido
`
`Ian Baird
`
`Chris Verwymeren
`
`Marc Krochmal
`
`Greg Novick
`
`Heather Mewes
`
`Michael Jaynes
`
`Apple Corporate
`Representative TBD
`
`
`Subject(s)
`Design, operation, and development of accused Find My
`Friends and Maps functionality and/or hardware
`Design, operation, and development of accused Find My
`Friends and Maps functionality and/or hardware
`Design, operation, and development of accused Find My
`Friends and Maps functionality and/or hardware
`Design, operation, and development of accused camera
`functionality and/or hardware
`Design, operation, and development of accused camera
`functionality and/or hardware
`Design, operation, and development of accused power
`management functionality and/or hardware
`Design, operation, and development of accused power
`management functionality and/or hardware
`Design, operation, and development of accused Do Not
`Disturb functionality and/or hardware
`Design, operation, and development of accused FaceTime and
`notification functionality and/or hardware
`Design, operation, and development of accused FaceTime and
`notification functionality and/or hardware
`Design, operation, and development of accused Siri
`notification functionality and/or hardware
`Design, operation, and development of accused AirDrop and
`authentication functionality and/or hardware
`Design, operation, and development of accused Watch
`functionality and/or hardware
`Pre-suit communications with Plaintiff; patent
`licensing/acquisition
`Sales and other financial information related to the accused
`Apple products.
`Marketing and advertising related to the accused Apple
`products.
`
`Apple anticipates that additional witnesses may be located or identified during the course
`
`of discovery in this action, and if so, will supplement these disclosures. Apple may also rely on
`
`persons who may be identified in documents produced by any party or non-party in connection
`
`with this action to support its claims or defenses. Apple also reserves the right to rely on Apple
`
`employees and/or other witnesses that have relevant knowledge that have not yet been implicated
`
`
`
`Page 16 of 21
`
`

`

`Case 5:19-cv-00036-RWS Document 58-18 Filed 08/13/19 Page 18 of 22 PageID #: 1676
`
`by Maxell’s claims. Apple also expects to rely upon expert testimony and will disclose such
`
`experts as required by Rule 26(a)(2) and the Court’s scheduling orders.
`
`E.
`
`Indemnity and Insuring Agreements
`
`Based on information reasonably available at this time, Apple is not aware of any insurance
`
`agreement meeting the criteria of ¶ 1(e) of the Discovery Order.
`
`Apple is currently investigating whether there exist any indemnity agreements meeting the
`
`criteria of ¶ 1(e) of the Discovery Order, including agreements with manufacturers and/or
`
`designers of components included within accused Apple products.
`
`F.
`
`Settlement Agreements Relevant to the Subject Matter of this Action
`
`Plaintiff’s settlement agreements from previous lawsuits relating to at least some of the
`
`Patents-in-Suit are relevant to the subject matter of this action. Based on information reasonably
`
`available at this time, Apple is not aware of any other settlement agreements meeting the criteria
`
`of ¶ 1(f) of the Discovery Order.
`
`G.
`
`Statement of Any Party to the Litigation
`
`Apple identifies the parties’ pleadings, disclosures, and contentions in this litigation. Apple
`
`also identifies all statements made by Maxell or any related entity in any previous litigation or
`
`other proceeding or publicly relating to the subject matter of this litigation. Apple expressly
`
`reserves its right to supplement these disclosures as discovery progresses.
`
`II.
`
`ADDITIONAL DISCLOSURES REQUIRED UN