Case 5:19-cv-00036-RWS Document 62 Filed 08/19/19 Page 1 of 10 PageID #: 1771
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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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`Plaintiff,
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`vs.
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`APPLE INC.,
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` Civil Action No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED 
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`Defendant.
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`DEFENDANT APPLE INC.’S RESPONSE TO
`MAXELL LTD.’S MOTION TO COMPEL
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`Case 5:19-cv-00036-RWS Document 62 Filed 08/19/19 Page 2 of 10 PageID #: 1772
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`Maxell’s motion runs roughshod over the law and the record and rejects out-of-hand
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`Apple’s good-faith attempts to address the parties’ disputes. It exposes Maxell’s disregard for the
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`local rules and reduces the meet-and-confer process to a box-checking exercise by giving the back
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`of Maxell’s hand to Apple’s compromise offers, ignoring controlling precedent—including from
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`this Court, and asking the Court to order Apple to provide information it already has provided (or
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`agreed to provide). Maxell also raises disputes that the parties never previously discussed, a clear
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`violation of L.R. CV-7(h). The only dispute that has matured to an impasse is Maxell’s attempt to
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`impose an arbitrary deadline for the production of all relevant documents in this case, that Maxell
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`has not abided by itself, and that is without any basis in the local rules, this Court’s orders, or this
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`District’s practice. Apple has consistently advised Maxell the status of Apple’s production of the
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`requested document categories. With over seven months left in fact discovery, Maxell’s
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`aspersions of “prejudice” ring hollow and are without explanation or basis.
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`With respect to Maxell’s broad, compound, and cumulative interrogatories, Apple already
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`confirmed in correspondence that it would, as a compromise, supplement several of its responses.
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`Indeed, as of the date of this opposition, Apple has now done. Maxell nonetheless rushed to file
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`its motion before receiving the responses, confirming it is not interested in the substance, but only
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`in instigating an unnecessary and wasteful discovery dispute.
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`Maxell’s Request to Impose an Arbitrary Document Production Deadline: Maxell’s
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`argument that July 10 was the deadline for Apple to have completely produced all documents in
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`this case is baseless and unreasonable. Paragraph 3(b) of the Discovery Order (1) eliminates the
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`need for Requests for Production and (2) defines the scope of what must be produced. D.I. 42 at
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`2-3. No court in this district has ever interpreted the Paragraph 3(b) date as a deadline to complete
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`document production, and Maxell’s motion cites none. Indeed, that there is a later date for Apple
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`Case 5:19-cv-00036-RWS Document 62 Filed 08/19/19 Page 3 of 10 PageID #: 1773
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`to complete its P.R. 3-4 technical production confirms that the Additional Disclosure date cannot
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`require Apple to complete its entire production. And in cases where courts in this district set a
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`deadline for the substantial completion of production, that date is months after the Paragraph 3(b)
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`date.1 As former Chief Judge Davis explained, the date for Additional Disclosures is when the
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`parties “shall begin” a “rolling document production to be substantially completed” later. Soverain
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`Software LLC v. Oracle Corp., No. 6:12-cv-00141-LED, D.I. 66 at 7 (E.D. Tex. Oct. 30, 2012).
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`Unsurprisingly, Maxell provided no authority supporting its novel interpretation of the
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`Court’s order during the meet-and-confer process. Illustrating the unreasonableness (and
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`arbitrariness) of its position, Maxell confirmed during the meet-and-confer that it expected Apple
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`to produce all technical documents on July 10, despite the separate, August 14 deadline for
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`production of technical documents in compliance with P.R. 3-4 (see D.I. 46 at 8). Moreover,
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`Maxell itself has not even complied with the interpretation it seeks to impose on Apple. Maxell’s
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`representation to the Court that it “substantially completed its production on July 10, excepting
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`documents needing third party consent” is false. D.I. 56 at 1 n.1. On July 29, Maxell produced
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`nearly 400 pages of its own pre-suit communications with Apple: documents clearly within
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`Maxell’s possession that should have been collected and readied for production when it filed its
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`complaint. Maxell’s own failure to meet the alleged July 10 deadline highlights its hypocrisy.
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`In any event, Apple has complied fully with the Discovery Order by diligently collecting
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`and producing documents. Maxell’s motion mentions only Apple’s initial July 10 production, but
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`withholds the fact that Apple made additional productions on July 18, July 26, and August 2 (and
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`has continued since). To date, Apple has produced over 775,000 pages of documents and made
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`1 See, e.g. Tessera Advanced Techs., Inc. v. Samsung Elecs. Co., Ltd., No. 2:17-CV-0671-JRG,
`D.I. 46 at 4 (E.D. Tex. Feb. 20, 2018) (setting the “Deadline to Substantially Complete
`Document Production” six months after the Paragraph 3(b) Initial & Additional Disclosure date).
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`2
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`Case 5:19-cv-00036-RWS Document 62 Filed 08/19/19 Page 4 of 10 PageID #: 1774
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`available for inspection nearly 700,000 source code files, and its productions continue. Maxell
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`also withholds from the Court Apple’s offer of compromise—made before Maxell filed its
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`motion—that it would produce financial data on August 14. See Ex. A at 2. Apple has now
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`produced such data. Maxell has not explained how Apple’s expedient productions are supposedly
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`prejudicial, nor has it identified any missing documents that impede its preparation. There is no
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`need for an arbitrary deadline for Apple to “substantially complete” its production, as Apple is
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`already acting in a diligent and reasonable manner consistent with local practice in this District.
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`Interrogatory Nos. 2, 7, and 8 (Premature Noninfringement Opinions): Willfully
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`ignoring direct precedent of which Apple made Maxell aware during the meet-and-confer process
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`(Ex. A at 3), Maxell moves to compel Apple’s noninfringement contentions despite this Court’s
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`unambiguous holding that these types of interrogatories are not permitted. Papst Licensing GmbH
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`& Co., KG v. Apple, Inc., No. 6:15-CV-01095-RWS, D.I. 388 (E.D. Tex. Jun. 16, 2017) (denying
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`a motion to compel a response describing the “factual basis for [Defendant’s] counterclaims and
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`defenses of noninfringement,” and noting that plaintiff “will be apprised of Defendant’s
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`noninfringement positions through the expert discovery process.”). It is not even a close question
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`in this district. E.g., Huawei Techs. Co. Ltd. v. T-Mobile US, Inc., Case No. 2:16-cv-00052-JRG-
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`RSP, Dkt. No. 337 at 1 (E.D. Tex. Aug. 25, 2017) (same). Similarly, by seeking discovery into
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`steps taken to avoid the alleged infringement or non-infringing alternatives, Maxell is prematurely
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`demanding that Apple disclose expert opinions and take noninfringment positions before even
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`knowing how the asserted claims will be construed. See, e.g., Promethean Insulation Tech. LLC
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`v. Sealed Air Cop., No. 2:13-cv-1113-JRG-RSP, 2015 WL 11027038, at *2 (E.D. Tex. Oct. 13,
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`2015) (“A party is not entitled to obtain early disclosure of expert opinions via interrogatory.”).
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`Maxell’s interrogatories are improper, and its motion to compel responses should be denied.
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`Case 5:19-cv-00036-RWS Document 62 Filed 08/19/19 Page 5 of 10 PageID #: 1775
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`Interrogatory No. 3 (Licenses): Maxell filed its Motion despite Apple’s agreement to
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`supplement its response to this interrogatory. See Ex. A at 3. Apple is already diligently reviewing
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`licenses to identify those that are relevant and to address third-party consent issues. And Apple
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`already informed Maxell that when this process is complete, Apple will produce the relevant
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`licenses and timely supplement its response to this interrogatory to identify the production
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`numbers. Maxell provides no basis for demanding the completion of license production by early
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`September, especially given that the parties have until March 2020 to complete depositions and
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`April 2020 to complete opening expert reports. Apple is already moving expediently and will
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`produce licenses and supplement its interrogatory response without delay.
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`Maxell also moves to compel all license agreements “that pertain to the accused products,
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`and information about how consideration was reached.” D.I. 56 at 4. Maxell never raised this
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`issue, either in correspondence or during the parties’ telephonic conference—a clear violation of
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`L.R. CV-7(h). The Court should therefore exercise its discretion to decline to consider this new
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`demand. See Motion Games, LLC v. Nintendo Co., Ltd., No. 6:12-CV-878-RWS-JDL, 2017 WL
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`2615436, at *2 (E.D. Tex. Jan. 4, 2017) (citing Dreschel v. Liberty Mut. Ins. Co., No. 3:14-cv-162,
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`2015 WL 6865965, at *2 (N.D. Tex. Nov. 9, 2015)). Even if considered, Maxell’s demand is
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`unreasonable and unsupported by the law. The accused products in this case include six years of
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`iPhones, iPads, iPods, Macs, and Apple Watches, all of which embody thousands of different
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`features and technologies that change with each new version. The scope of license discovery is
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`limited to those that relate to the “technology in dispute.” See Paltalk Holdings, Inc. v. Microsoft
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`Corp., No. 2:06-CV-367-DF (E.D. Tex. Feb. 11, 2009); see also ResQNet.com., Inc. v. Lansa, Inc.,
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`594 F.3d 860, 870 (Fed. Cir. 2010) (faulting a district court for relying on licenses with “no
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`relationship to the claimed invention,” nor even a “discernible link to the claimed technology.”)
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`Case 5:19-cv-00036-RWS Document 62 Filed 08/19/19 Page 6 of 10 PageID #: 1776
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`Apple’s production will include agreements relating to the accused technologies, but Apple should
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`not have to produce every license that might implicate any feature whatsoever in an iPhone, Mac
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`computer, or other accused product. Mirror Worlds Techs., LLC v. Apple, Inc. does not hold
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`otherwise—there, the plaintiff asked for all licenses reflecting a lump-sum payment over a specific
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`amount. No. 6:13-cv-419, 2016 WL 4265758, *1 (E.D. Tex. Mar. 17, 2016). The Court did not
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`hold that Apple had to produce all licenses that included rights that might potentially implicate the
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`accused products, and indeed, there is no precedent for such a broad demand. Id.
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`Interrogatory No. 4 (Sales and Profits): During the July 30 teleconference, Apple told
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`Maxell it would produce relevant financial data by August 14. See Ex. A at 4. As promised, Apple
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`produced financial data on the units sold, revenues, and costs for the accused products. Consistent
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`with its interrogatory response, Apple did not produce the requested information regarding the
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`“entities responsible for,” the “customers of,” or the “location of” sales or distribution. Apple
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`reiterated during the parties’ conference that it would not provide this information, and Maxell did
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`not ask for or explain why it allegedly needed it. Because Maxell failed to comply with L.R. 7(h),
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`the Court should decline to address Maxell’s demand. See Motion Games, 2017 WL 2615436, at
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`*2. Moreover, even if relevant, collecting this information would be unduly burdensome, not
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`proportional to the needs of the case, and cumulative, as Apple has already produced information
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`for its US sales. See, e.g., Paradox Sec. Sys. Ltd. v. ADT Sec. Servs., Inc., No. 2:06-CV-462 (TJW)
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`(E.D. Tex. Nov. 12, 2008) (denying a motion to compel “documents relating to the identity of all
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`of defendants’ U.S. customers and the sales associated with each U.S. customer”). Moreover,
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`Apple has already produced and is continuing to produce information regarding the “operation,
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`use, and marketing” of the accused products (D.I. 56 at 5).
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`Interrogatory No. 5 (First Awareness of Patents-in-Suit): Maxell again misrepresents
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`Case 5:19-cv-00036-RWS Document 62 Filed 08/19/19 Page 7 of 10 PageID #: 1777
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`Apple’s position and fails to inform the Court that Apple agreed to supplement its response by
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`August 14, after completing its review of voluminous pre-suit communications. Ex. A at 4. As
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`promised, Apple served a supplemental response on August 14 that identifies documents and
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`provides a narrative response. Apple also produced hundreds of documents and communications
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`reflecting the parties’ negotiations—a substantial portion of which were produced before Maxell
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`filed its motion, and some of which have not even been produced by Maxell. As Maxell admits,
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`the parties engaged in years of negotiations, and there is no basis to require Apple to provide a
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`narrative response describing each action taken over that entire time period. Maxell now has (to
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`the extent it did not already have) the relevant information through Apple’s response and document
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`production. Instead of waiting to review Apple’s response and production, Maxell again rushed
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`to Court with a motion seeking information it knew Apple already agreed to provide.
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`Interrogatory No. 6 (Component Information): By moving on this issue, Maxell
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`unabashedly asks the Court to compel—in a response to “one” interrogatory—four pieces of
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`information for each of 21 different components for each of the 121 accused products. This is
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`10,164 different pieces of information. Ex B.2 This interrogatory is improperly compound at best
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`and oppressive at worst. Rather than reveal the true scope of this request, Maxell attached to its
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`Motion only a misleading “excerpt” of the interrogatory that shows less than 1.5% of the chart
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`Maxell asks the Court to require Apple to complete. Compare D.I. 56 at Ex. C with Ex. B. Indeed,
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`this interrogatory comprises at least 21 (and likely more) discrete interrogatories because it seeks
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`answers to unrelated questions on unrelated accused components. For example, the question
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`seeking the identity of Apple’s GPS chipset vendor “can be answered fully and completely without
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`2 Apple is attaching a copy of the chart attached to Maxell’s interrogatory no. 6 that Maxell
`demands Apple complete that has been scaled to single-page height. If printed at normal size,
`the chart would violate the page requirements for this motion, as it stretches to 30 pages.
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`Case 5:19-cv-00036-RWS Document 62 Filed 08/19/19 Page 8 of 10 PageID #: 1778
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`answering” the question seeking Apple’s internal model number for its unrelated camera module.
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`See Krawczyk v. City of Dallas, No. 3:03-cv-0584, 2004 U.S. Dist. LEXIS 30011, at *7 (N.D. Tex.
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`Feb. 27, 2004); see also Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co., 315 F.R.D. 191,
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`196-97 (E.D. Tex. 2016) (warning against “allowing the multiplication of interrogatories to the
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`point that it defeats the purposes underlying the 25-interrogatory limit”). Apple raised its concern
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`and identified relevant case law during the parties’ conference, but instead of responding, Maxell
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`immediately declared an “impasse.” Apple therefore properly declined to answer this compound
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`interrogatory as written. Apple has not, however, withheld relevant information that is reasonably
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`available—Apple has produced hundreds of Bill of Materials (BOM) and Cost Pub. documents
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`from which Maxell can derive much of the requested component information.
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`Interrogatory No. 9 (Forecasts): The requested sales forecasts, to the extent they exist,
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`are irrelevant and not proportional to the needs of the case, because Apple (1) produced financial
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`data for actual sales, and (2) can provide supplemental discovery regarding sales extending beyond
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`fact discovery. Maxell’s only relevance argument is that it must estimate future damages. But
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`Maxell can make such an estimate by extrapolating from past sales—indeed, this was expressly
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`acknowledged by the Ericsson case cited in Maxell’s motion. See D.I. 56 at 7. Further, there is
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`no prejudice to Maxell not getting forecasts if Apple will itself not rely on them. Another court in
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`this district denied a similar motion to compel on this precise basis. See Droplets, Inc. v.
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`Overstock.com, Inc., No. 2:11-cv-401-JRG-RSP, D.I. 220 at 1 (E.D. Tex. Aug. 25, 2014)
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`(declining to compel production of “future sales projections” based on “Defendants’ stipulation
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`that they would not be permitted to utilize those documents at trial”). Apple would, of course, not
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`unfairly rely on irrelevant documents that have not been produced to Maxell.
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`Case 5:19-cv-00036-RWS Document 62 Filed 08/19/19 Page 9 of 10 PageID #: 1779
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`Dated: August 19, 2019
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`Respectfully submitted,
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`/s/ Luann L. Simmons
`Luann L. Simmons (Pro Hac Vice)
`lsimmons@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center
`28th Floor
`San Francisco, CA 94111
`Telephone: 415-984-8700
`Facsimile: 415-984-8701
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`Xin-Yi Zhou (Pro Hac Vice)
`vzhou@omm.com
`Anthony G. Beasley (TX #24093882)
`tbeasley@omm.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
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`Laura Bayne Gore (Pro Hac Vice)
`lbayne@omm.com
`O’MELVENY & MYERS LLP
`Times Square Tower, 7 Times Square
`New York, NY 10036
`Telephone: 212-326-2000
`Facsimile: 212-326-2061
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`Melissa R. Smith (TX #24001351)
`melissa@gilliamsmithlaw.com
`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
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`Attorneys for Defendant Apple Inc.
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`Case 5:19-cv-00036-RWS Document 62 Filed 08/19/19 Page 10 of 10 PageID #: 1780
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court's
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`CM/ECF system per Local Rule CV-5(a)(3) on August 19, 2019.
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` /s/ Melissa R. Smith
`Melissa R. Smith
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