Case 5:19-cv-00036-RWS Document 603 Filed 12/22/20 Page 1 of 8 PageID #: 31822
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`Plaintiff,
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`Defendant.
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`JOINT STATUS REPORT
`REGARDING FRAMEWORK TO NARROW ISSUES FOR TRIAL
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`Pursuant to the telephonic meeting held with Judge Schroeder on December 7, 2020,
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`Plaintiff Maxell, Ltd. (“Plaintiff” or “Maxell”) and Defendant Apple Inc. (“Defendant” or
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`“Apple”) discussed potential proposals to narrow the issues to be heard at the trial for the above-
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`captioned matter, scheduled for March 22, 2021. While proposals were exchanged between the
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`parties, the parties were unable to reach agreement. The parties provide the Court with this Joint
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`Status Report and are prepared to either discuss the below with the Court on a conference call at
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`the Court’s convenience or brief the issue in detail, as the Court may find most appropriate.
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`The proposals of the parties are set forth below:
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`Case 5:19-cv-00036-RWS Document 603 Filed 12/22/20 Page 2 of 8 PageID #: 31823
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`I.
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`Maxell’s Proposal
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`Maxell offered the following proposal to Apple for narrowing:
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` Maxell will drop the ’586 and ’193 patents;
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` Maxell will bring its asserted claims down to no more than 12 asserted claims;
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` Apple will execute a representative product stipulation consistent with the focus of
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`expert discovery in the case and agreeable to Maxell;
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` Apple will narrow its prior art invalidity challenges to one ground per asserted
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`claim (a ground being one anticipatory reference or one obviousness combination),
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`excluding its 101 challenges; and
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` Apple will agree to Maxell’s motion in limine regarding Apple’s 282 election of
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`prior art (as presented orally during the pre-trial conference).
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`Maxell’s proposal was a package deal dependent upon Apple agreeing to the items set forth above.
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`Maxell’s proposal provides both Parties more than sufficient time to fully and fairly present
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`their cases in the time permitted by the Court for trial. From the twenty (20) asserted claims set
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`forth in the pretrial order, Maxell’s proposed narrowing represents, at minimum, a reduction of
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`forty percent (40%) of the asserted claims – effectively making this a six (6) patent case (three
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`of the remaining patents are related) with no more than twelve (12) asserted claims.1 Maxell’s
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`proposed narrowing would bring this case to a size smaller than that successfully presented against
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`ZTE by Maxell a few years ago in this Court.
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`Moreover, in addition to Maxell’s overall proposal to bring its asserted claims down from
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`1 The 40% reduction is a conservative calculation of the narrowing proposed by Maxell. Indeed, considering
`Maxell’s proposal to drop the ’586 and ’193 patents alone (without the proposed further narrowing of asserted
`claims to no more than twelve (12)), reflects a reduction of 45% of the pages dedicated by Maxell in its
`infringement expert reports. When considering the proposed further narrowing of asserted claims to no more than
`twelve (12), the reduction exceeds 50% of the pages dedicated by Maxell in its infringement expert reports.
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`2
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`Case 5:19-cv-00036-RWS Document 603 Filed 12/22/20 Page 3 of 8 PageID #: 31824
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`twenty (20) to no more than twelve (12), Maxell was extremely thoughtful in its selection of the
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`’586 and ’193 patents for narrowing. As the Court may recall from the recent ZTE trial, the claims
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`of the ’193 patent are extremely dense with many claim elements.2 The asserted claims of the ’586
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`patent are similarly dense.3 These patents would certainly take an inordinate amount of time
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`compared to the remaining patents. In comparison, Apple’s focus for narrowing is principally
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`designed to reduce its damages exposure, which is improper.4
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`Finally, Apple’s criticisms of Maxell’s narrowing proposal lack merit. First, Apple’s
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`position that Maxell’s proposal still maintains an eight (8) patent case for trial is belied by Apple’s
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`own statements. Recently, Apple’s counsel indicated that Maxell’s previous ten (10) patent case
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`could basically be looked at as an eight (8) patent case.5 At least at that time, Apple shared
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`Maxell’s view that the three related patents should be viewed as a single patent for trial
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`presentation purposes. That view should only be stronger now that Maxell has proposed to also
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`limit the total number of asserted patent claims to no more than twelve (12). Second, Apple’s
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`position that Maxell’s proposal provides insufficient time for witness testimony, does not comport
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`with the facts. Apple is well aware that many of the witnesses identified by Apple as “will call”
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`witnesses will either not be called at all, be called by short deposition designations, or will be very
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`brief.6 As such, Apple’s arguments lack relevant substance.
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`2 For example, asserted claim 1 of the ’193 patent contains thirteen (13) dense limitations and the patent accused
`two completely different architectures requiring two different experts from Maxell.
`3 For example, asserted claim 7 effectively contains nine (9) dense limitations and the patent would require
`Maxell’s experts to walk through three (3) categories of Apple operating systems (iOS, watchOS, and macOS).
`4 Indeed, Apple’s instance that it will assert as many prior art references as it wishes to show “the state of the art”
`(see Maxell’s Motion in Limine No. 10) and otherwise for purposes of the navigation patents and under Section 101,
`shows that Apple is not genuinely interested in narrowing this matter for trial, but rather only wishes to limit its
`damages and infringement exposure.
`5 “[T]his case is currently postured as a ten-patent case headed for trial …, as I mentioned before, we have three
`patents that are related and seven that are unrelated. So we’re really going to be trying – you could look at it as
`basically an eight-patent case.” M. Fowler, October 8, 2020, MSJ Hr. Tr. At 10:14-20 (emphasis added).
`6See e.g., PanOptis v. Apple, where Apple was able to present its witnesses in a 5 unrelated patents/ 6-day jury trial.
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`3
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`Case 5:19-cv-00036-RWS Document 603 Filed 12/22/20 Page 4 of 8 PageID #: 31825
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`II.
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`Apple’s Proposal
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`Apple’s proposal is the only one that will afford the parties a full and fair opportunity to
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`present their claims and defenses in the trial time currently allotted (which Apple understands to
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`be eight days of trial time, with six-and-a-half days of witness testimony after taking into account
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`jury selection, openings and closings, etc.). Apple’s need to have the opportunity to fully defend
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`itself is particularly pronounced given that Maxell’s damages claim is still over $493 million even
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`if it drops the two patents it proposes dropping. Under Apple’s proposal, Maxell would dismiss
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`four of the ten patents from the case, including the patent it previously agreed to drop (the ’586
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`patent) but is now including in its “case-narrowing” proposal. In exchange, Apple will execute a
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`representative product stipulation, on a patent-by-patent basis, by electing one model of
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`iPhone/iPad/Watch for each patent except where the infringement read requires multiple devices
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`(namely the ’586 and ’438 patents). Furthermore, Apple will narrow its prior art invalidity
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`challenges to one “ground” per patent (a “ground” being one anticipatory reference or one
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`obviousness combination), except that this narrowing of the invalidity defenses will not: (a) apply
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`to the prior art defenses to the three “Nav” patents (the ’317, ’498 and ’999 patents); (b) apply to
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`Section 101 challenges; and (c) preclude Apple’s experts from discussing other (non-elected) prior
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`art references when describing the state of the art, consistent with their expert reports. Like
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`Maxell’s proposal, this is a package proposal dependent on Maxell’s dismissal of four patents.
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`For several reasons, Maxell’s proposal is unworkable. First, six-and-a-half days for
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`witness testimony is not enough time to present evidence in an eight-patent case. For those eight
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`patents, the parties have identified 31 “will call” witnesses (15 fact witnesses and 16 expert
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`witnesses), which averages out to just over an hour of testimony time for each witness.7 That is
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`7 This calculation is based on an estimate of six hours per day of testimony time.
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`4
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`Case 5:19-cv-00036-RWS Document 603 Filed 12/22/20 Page 5 of 8 PageID #: 31826
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`not enough time to present complete testimony from each witness in this complex case. Maxell
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`has routinely pointed to the Maxell v. ZTE case to support its claim that the parties can somehow
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`try an eight-patent case in eight trial days. The ZTE trial, however, was a full trial day longer than
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`the trial time allotted here, and ZTE called only five witnesses in its case-in-chief, all of whom
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`were experts. In contrast, for the eight patents under Maxell’s proposal, Apple will need to call
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`nine Apple engineers to explain how the accused features work, four technical experts, two prior
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`art fact witnesses, one librarian expert, and at least three damages-related witnesses (one fact
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`witness and two experts). Second, Maxell continues to contend that its narrowing proposal would
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`be “like a six (6) patent case” by lumping together the three so-called “Nav” patents, but each of
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`those patents has different asserted claims with different requirements, and, importantly, different
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`infringement theories and therefore different noninfringement and invalidity theories. So it is not
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`appropriate to lump them together as a single “patent,” especially where Maxell is seeking nearly
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`$240 million in damages on those three patents alone. Third, even under Apple’s proposal of an
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`actual six-patent case, the parties still expect to call a minimum of 25 “will call” witnesses.
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`Depending on the six patents Maxell elects for trial, Apple will need to call at least five Apple
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`engineers to explain how the accused features work, plus at least four experts to offer
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`noninfringement and invalidity opinions, plus damages-related fact and expert witnesses. Short of
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`dropping entire defenses (which Apple should not be required to do), there is nothing more Apple
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`can do to shorten its trial presentation. And for many of the patents, Maxell asserts multiple
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`infringement theories. The only way the parties will be able to try this case in the time allotted is
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`through Maxell dismissing additional patents—at least four of the ten, which includes the patent
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`that Maxell represented to the Court it was already dropping (the ’586 patent).
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`5
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`Case 5:19-cv-00036-RWS Document 603 Filed 12/22/20 Page 6 of 8 PageID #: 31827
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`Dated: December 22, 2020
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`/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
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`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
`Clark S. Bakewell
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006
`Telephone: (202) 263-3000
`Facsimile: (202) 263-3300
`jbeaber@mayerbrown.com
`agrimaldi@mayerbrown.com
`klevy@mayerbrown.com
`jfussell@mayerbrown.com
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`wbarrow@mayerbrown.com
`agelsleichter@mayerbrown.com
`cbakewell@mayerbrown.com
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`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
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`/s/ Harry L. Gillam, Jr.
`Harry L. Gillam, Jr.
`Texas Bar No. 07921800
`Melissa Richards Smith
`Texas Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, TX 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`Email: gil@gillamsmithlaw.com
`Email: melissa@gillamsmithlaw.com
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`Mark D. Fowler (Pro Hac Vice)
`Brent K. Yamashita
`Christian Chessman
`DLA PIPER LLP (US)
`2000 University Ave.
`East Palo Alto, CA 94303-2214
`Tel: 650.833.2000
`Fax: 650.833.2001
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`Sean C. Cunningham (Pro Hac Vice)
`Erin P. Gibson (Pro Hac Vice)
`Kevin Hamilton (Pro Hac Vice)
`David R. Knudson (Pro Hac Vice)
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101
`Tel: 619.699.2700
`Fax: 619.699.2701
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`Michael Jay (Pro Hac Vice)
`DLA PIPER LLP (US)
`2000 Avenue of the Stars, Suite 400
`Los Angeles, CA 90067
`Tel: 310.595.3000
`Fax: 310.595.3300
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`Aaron G. Fountain
`Zachary Loney
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, Texas 78701-3799
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`6
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`Case 5:19-cv-00036-RWS Document 603 Filed 12/22/20 Page 7 of 8 PageID #: 31828
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`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Tel: 512.457.7000
`Fax: 512.457.7001
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`Dawn M. Jenkins
`DLA PIPER LLP (US)
`1000 Louisiana, Suite 2800
`Houston, TX 77002-5005
`Tel: 713.425.8490
`Fax: 713.300.6012
`Paul Steadman (Pro Hac Vice)
`Stephanie Lim (Pro Hac Vice)
`DLA PIPER LLP (US)
`444 West Lake Street, Ste. 900
`Chicago, IL 60606
`Tel: 312.368.4000
`Fax: 312.236.7516
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`Paul Steadman
`Stephanie Lim (Pro Hac Vice)
`DLA PIPER LLP (US)
`444 West Lake Street, Ste. 900
`Chicago, IL 60606
`Tel: 312.368.4000
`Fax: 312.236.7516
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`Counsel for Defendant Apple Inc.
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`7
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`Case 5:19-cv-00036-RWS Document 603 Filed 12/22/20 Page 8 of 8 PageID #: 31829
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 22nd day of December, 2020, with a copy of this document
`via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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