Case 5:19-cv-00036-RWS Document 629 Filed 02/17/21 Page 1 of 19 PageID #: 32048
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`
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`MAXELL LTD.,
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`v.
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`APPLE INC.,
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`
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`Plaintiff,
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`Defendant.
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`
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`CASE NO. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`DEFENDANT APPLE INC.’S MOTION TO STAY PENDING PROCEEDINGS
`AT THE PATENT OFFICE OR, IN THE ALTERNATIVE TO CONTINUE TRIAL
`DUE TO THE COVID-19 PANDEMIC
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`

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`Case 5:19-cv-00036-RWS Document 629 Filed 02/17/21 Page 2 of 19 PageID #: 32049
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`I.
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`INTRODUCTION
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`Apple respectfully requests that the Court stay this case pending review of the six
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`currently asserted patents by the United States Patent and Trademark Office (“PTO”), or, at the
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`very least, continue the March 22 trial to later this year when all trial participants will have had
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`the opportunity to receive a COVID-19 vaccine. Because 7 of 10 currently asserted claims are
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`now subject to some form of review by the PTO, and the remaining 3 soon will be, it is not
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`necessary to risk the health of trial participants before the PTO finishes its review of the 10
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`asserted claims. All claims are likely to be cancelled by the PTO, and if any remain after the
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`PTO proceedings conclude, then the resulting trial will be streamlined and, more important,
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`safer.
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`As it currently stands, four out of six patents and seven out of ten claims that Maxell
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`asserts are presently subject to review—either in ex parte reexamination (“EPR”) or inter partes
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`review (“IPR”) proceedings—by the PTO. U.S. Patent Numbers 6,748,317, 6,580,999, and
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`8,339,493, and all asserted claims of each, are under review by the PTO in EPRs. U.S. Patent
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`Number 6,329,794, and all asserted claims of that patent are subject to instituted IPR. And
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`decisions whether to grant EPR requests regarding U.S. Patent Numbers 6,430,498 and
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`7,116,438 are expected any day. Apple respectfully submits that the resources of the Court and
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`the parties—and the health of those who would participate in an in-person trial in March—are
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`best conserved by staying this case while the PTO completes its work.
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`The fact that all 10 currently asserted claims are now or soon will be subject to some
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`form of review at the PTO constitutes a material change in circumstance similar to the change
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`that recently led Chief Judge Gilstrap to stay two different cases pending EPR notwithstanding
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`imminent trials. See Ramot at Tel Aviv Univ. Ltd. v. Cisco Sys., Inc., No. 2:19-CV-00225-JRG,
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`2021 WL 121154, at *2 (E.D. Tex. Jan. 13, 2021); AGIS Software Dev. LLC v. Google LLC, No.
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`2:19-CV-00361-JRG, at *5 (E.D. Tex. Feb. 9, 2021). As Judge Gilstrap recognized, “asserted
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`claims that have been rejected in the reexamination proceedings are almost surely to be modified
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`in some material way in response to their rejection, and they may be dropped completely,” such
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`that if the case were to proceed to trial, “there is a serious risk of wasted resources as to the
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`parties and the Court.” Ramot, 2021 WL 121154, at *2. The same is now true here, so the
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`parties and the Court would benefit from a stay until the PTO outcomes are final.
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`But, even if the Court were not inclined to await those outcomes, the Court should
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`minimally continue the trial to later this year, when the trial participants will have had the
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`opportunity to be vaccinated for COVID. In November 2020, the Court continued the trial in
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`this case to March as a result of the pandemic, but since then the pandemic has only gotten
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`worse, particularly in Texas and Bowie County. And scientists have recently discovered a more
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`contagious variant of COVID-19 that is beginning to spread in the United States. The CDC has
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`warned that this new variant could lead to another increase in new cases, making it uncertain
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`what the state of the pandemic in the U.S., Texas, and Bowie County will be as the March 22
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`trial nears. At the same time, the vaccine rollout is accelerating, and experts predict that by this
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`July, a substantial majority of people who want a vaccine will be able to get one.
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`As demonstrated below, Dr. Benjamin Neuman, a virologist and head of the Biology
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`Department at Texas A&M University-Texarkana, attests that proceeding with trial in March
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`would present a substantial risk to the health and safety of the jurors and jury venire, the
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`witnesses, the Court and its staff, the lawyers, and those in the surrounding communities who
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`will interact with the trial participants. Declaration of Benjamin Neuman, Ph.D. (“Neuman
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`Decl.”), attached hereto as Exhibit 1, ⁋⁋ 19-25. Because of this, Apple requests that at a
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`minimum the trial be continued to later in 2021, when the trial participants will have had an
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`opportunity to be vaccinated. Neither side will be prejudiced by a continuance, whereas
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`proceeding with trial now will limit the parties’ opportunity to present a full and fair case
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`because several witnesses outside of Texas will be unable to safely appear at trial. Especially
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`where many (if not all) of the asserted claims are likely to be cancelled by the Patent Office, such
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`a continuance is warranted.
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`II.
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`THIS CASE SHOULD BE STAYED PENDING THE OUTCOME OF POST-
`GRANT REVIEW PROCEEDINGS AT THE PATENT OFFICE.
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`Now that review proceedings have been granted or filed on all ten currently asserted
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`claims, the Court should exercise its inherent power to control its own docket by staying these
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`proceedings. See Soverain Software LLC v. Amazon.com, Inc., 356 F. Supp. 2d 660, 662 (E.D.
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`Tex. 2005) (citing Landis v. N. Am. Co., 299 U.S. 248, 254 (1936)). District courts typically
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`consider three factors when determining whether to grant a stay pending review proceedings by
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`the PTO: “(1) whether the stay will unduly prejudice the nonmoving party, (2) whether the
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`proceedings before the court have reached an advanced stage, including whether discovery is
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`complete and a trial date has been set, and (3) whether the stay will likely result in simplifying
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`the case before the court.” Dkt. No. 587 (citing Fall Line Patents, LLC v. Am. Airlines Grp., No.
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`6:17-cv-00202-RWS, 2018 WL 4169251, at *1 (E.D. Tex. May 21, 2018); NFC Techs. LLC v.
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`HTC Am., Inc., Case No. 2:13-cv-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11,
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`2015). “A stay is particularly justified when ‘the outcome of a PTO proceeding is likely to assist
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`the court in determining patent validity or eliminate the need to try infringement issues.’”
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`Ericsson Inc. v. TCL Commc’n Tech. Holdings, Ltd., No. 2:15-cv-00011, 2016 WL 1162162, at
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`*1 (E.D. Tex. Mar. 23, 2016) (quoting NFC Tech. 2015 WL 1069111, at *1).
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`Case 5:19-cv-00036-RWS Document 629 Filed 02/17/21 Page 5 of 19 PageID #: 32052
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`A.
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`All Ten Currently-Asserted Claims Either Are or Will Soon be Subject to
`Review.
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`In late 2019 and early 2020, Apple filed IPR petitions challenging all asserted claims in
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`the ten originally asserted patents. Apple then moved to stay the case pending the outcome of its
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`IPR petitions. See Dkt. No. 239. The Court denied Apple’s motion, but did so without prejudice
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`because the PTAB had not issued its institution decisions. See Dkt. No. 298. A few months
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`later, the PTAB instituted IPR proceedings on four of the ten originally asserted patents. The
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`PTAB, however, denied institution on the remaining six originally asserted patents. Given that
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`eight of the 20 originally asserted claims were subject to IPR proceedings, Apple renewed its
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`motion to stay last August. Dkt. No. 481. The Court denied Apple’s motion, finding that
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`invalidation of the eight instituted claims would not meaningfully simplify the case where the
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`majority of the then-asserted claims (12) remained to be resolved in this case. Dkt. No. 587 at 6.
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`Following the Court’s ruling, Apple prepared and filed requests for EPR on all remaining
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`asserted claims of the currently-asserted patents that are not subject to IPR proceedings.1 Apple
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`filed the first of those requests on December 10, 2020 and the last of them on February 12, 2021.
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`The Patent Office has now found substantial new questions of patentability as to the currently-
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`asserted claims of the ’317 (in two separate reexaminations), ’999, and ’493 patents and
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`therefore granted Apple’s requests for EPR on those patents. This means that seven of the ten
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`currently-asserted claims are now subject to EPR or IPR proceedings, and the remaining three
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`claims are subject to pending requests for EPR, which Apple expects to be granted in the next
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`several weeks. See Ex. 2 at 2 (average time from filing to decision on EPR ranges from less than
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`1 On February 2, 2021, Maxell served its Identification of Narrowed Patents and Asserted Claims
`for Trial, narrowing the asserted claims to (1) ’317 patent, claims 1 and 17; (2) ’999 patent, claim
`3; (3) ’498 patent, claim 3; (4) ’438 patent, claims 1 and 4; (5) ’794 patent, claims 1 and 14; and
`(6) ’493 patent, claims 5 and 6. See Ex. 3.
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`one month to 1.37 months); 37 CFR § 1.515(a) (requiring institution within three months of
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`filing for EPR).
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`B.
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`Chief Judge Gilstrap Has Recently Stayed Multiple Cases Under Similar
`Circumstances.
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`In circumstances similar to this case, Chief Judge Gilstrap recently stayed a case pending
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`EPR less than two months before trial was set to begin. See Ramot, 2021 WL 121154. In that
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`case, defendant Cisco filed a motion to stay pending IPR before IPRs were instituted. Id. at *1.
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`Judge Gilstrap denied the motion without prejudice, instructing Cisco that it could subsequently
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`seek a stay “if and when IPR proceedings are instituted by the PTAB.” Id. The PTAB later
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`denied institution of the IPRs on discretionary grounds, and Cisco thereafter filed EPR requests
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`on all three asserted patents. Id. Cisco eventually renewed its stay motion pending post-grant
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`review. Id.
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`On January 13—approximately six weeks before trial was set to begin—Judge Gilstrap
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`stayed the case in light of the “high probability that the asserted claims will change in scope as
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`part of the reexamination proceedings.” Id. at *2 (noting that “[w]hen claims are rejected in
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`an ex parte reexamination proceeding, the patent owner can narrow, cancel, or submit new
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`claims.”). As Judge Gilstrap reasoned, “asserted claims that have been rejected in the
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`reexamination proceedings are almost surely to be modified in some material way in response to
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`their rejection, and they may be dropped completely,” such that if the case were to proceed to
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`trial on the current claims, “there is a serious risk of wasted resources as to the parties and the
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`Court.” Id. He concluded:
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`Although this stay comes late in the progression of this case—with
`discovery complete, pretrial briefing submitted, and jury selection
`impending—there remain significant resources yet to be expended
`by the parties, including at the pretrial conference and preparations
`leading up to an actual trial of this case. In light of the high
`probability that the asserted claims will change in scope as part of
`the reexamination proceedings noted above, the Court finds that
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`considering the totality of the circumstances in this case at this
`time, a stay is warranted.
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`Id. Based on the same reasoning, Judge Gilstrap also recently stayed a two-patent case pending
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`ex parte reexamination three months before trial was set to begin. See AGIS, No. 2:19-CV-
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`00361-JRG, at *5 (E.D. Tex. Feb. 9, 2021). The situation in Ramot and AGIS are similar to the
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`instant case.
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`C.
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`As in Ramot and AGIS, the Stay Factors Favor a Stay Pending Review
`Proceedings in the PTO.
`1.
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`Factor One: The Review Proceedings Will Simplify This Case by
`Eliminating Issues for Trial.
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`The most important factor in the stay analysis is whether the stay is likely to simplify the
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`issues for trial. See Dkt. No. 587 at 5 (citing Uniloc 2017 LLC v. Samsung Elec. Am., Inc., NO.
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`2:19-CV-00259-JRG-RSP, 2020 WL 143360, at *5 (E.D. Tex. Mar. 24, 2020)). As in Ramot
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`and AGIS, the pending review proceedings here will meaningfully simplify this case as the PTO
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`continues to issue rejections of the asserted claims. As it stands now, seven of the ten currently
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`asserted claims are subject to EPR or IPR review, and there is a high likelihood that those claims
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`will be cancelled, rejected, or materially amended. For the ’794 patent subject to IPR, the odds
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`the PTAB will invalidate the asserted claims are higher than 80 percent. See Ex. 4 at 11. And
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`for the other patents, 79 percent of ex parte reexaminations result in the cancellation or
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`modification of the reexamined claims. See Ex. 5. Indeed, as Chief Judge Gilstrap recognized,
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`claims in reexamination are “almost surely to be modified in some material way in response to
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`their rejection, and they may be dropped completely.” Ramot, 2021 WL 121154, at *2. And
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`“when a claim is cancelled, the patentee loses any cause of action based on that claim, and any
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`pending litigation in which the claims are asserted becomes moot.” Fresenius USA, Inc. v.
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`Baxter Int’l, Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013).
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`With seven out of ten asserted claims in post-grant review (and the other three soon to
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`be), it is “past the point of speculation” that the issues in this case will be simplified or
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`eliminated through the actions of the PTO. Ramot, 2021 WL 121154, at *2. Even if the post-
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`grant review proceedings lead to cancellation of only some of the asserted claims, the issues still
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`will be simplified, because the post-grant reviews will add prosecution history that will inform
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`infringement and invalidity issues. See NFC Tech. 2015 WL 1069111, at *7 (“[A]ny disposition
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`by the PTAB is likely to simplify the proceedings before this Court.”). And for the ’794 patent
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`in IPR, estoppel will prevent Apple from arguing in this case that any surviving claims are
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`invalid on any ground Apple “raised or reasonably could have raised” in the IPR. See 35 U.S.C.
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`§ 315(e)(2). Thus, whether the claims survive or not, simplification will occur “to an appreciable
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`extent.” See Ramot, 2021 WL 121154, at *2.
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`2.
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`Factor Two: A Stay Will Not Unduly Prejudice Maxell.
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`A stay pending PTO review of all currently-asserted patents is not prejudicial, let alone
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`unduly so. In its prior order on Apple’s motion to stay, the Court concluded the prejudice factor
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`“cuts slightly against a stay” because “Maxell has an interest in the timely enforcement of its
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`patent rights.” Dkt. No. 298 at 3. In the Court’s second order, it explained that because “[t]he
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`parties present no new information that would disturb that finding,” the Court concluded “as
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`before,” that “the prejudice factor cuts slightly against a stay.” Dkt. No. 587 at 2-3.
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`But those findings came at a time when a minority of the asserted claims were subject to
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`post-grant review at the PTO. Now, seven out of the ten currently asserted claims are under
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`review at the PTO, and the remaining three claims should soon be subject to review. Because
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`the PTO has already decided to review a majority of the asserted claims, a stay would not
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`prejudice Maxell’s enforcement of its patent rights, given the high likelihood those patent rights
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`will be cancelled or modified in a material way. As Judge Gilstrap recognized, proceeding to
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`trial on claims that are “almost surely to be modified” will not vindicate any new patent rights
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`Maxell might obtain as a result of the reexaminations. See Ramot, 2021 WL 121154, at *2. A
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`stay will therefore avoid the prejudice associated with the “serious risk of wasted resources as to
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`the parties and the Court.” Id. And even if Maxell were to suffer some negligible prejudice as a
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`result of a stay, that prejudice is far outweighed by the simplification of issues through the post-
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`grant review proceedings. See Ramot, 2021 WL 121154, at *2-3; Realtime Data, LLC v.
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`Rackspace US, Inc., No. 6:16-CV-00961, 2017 WL 772654, at *4 (E.D. Tex. Feb. 28, 2017)
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`(“[A]s the Court has also recognized in previous cases, concerns such as timely enforcement of
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`patent rights are generally too generic, standing alone, to defeat a stay motion.”).
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`Moreover, Maxell’s purported prejudice argument is undermined by the fact that Maxell
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`delayed filing this lawsuit for at least six years after Apple released the first of the accused
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`products. See Visual Interactive Phone Concepts, Inc. v. Samsung Telecomm. Am., LLC, No. 11-
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`12945, 2012 WL 1049197, at *3 (E.D. Mich. Mar. 28, 2012) (finding lack of prejudice where
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`plaintiff delayed filing lawsuit for 13 months after release of accused product); IOENGINE, LLC
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`v. PayPal Holdings, Inc., No. CV 18-452-WCB, 2019 WL 3943058, at *7 (D. Del. Aug. 21,
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`2019) (Bryson, Circuit J.) (“As the Federal Circuit has stated, delays caused by the plaintiff
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`render arguments of timely enforcement unpersuasive.”) (collecting cases). Indeed, the Court
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`relied on “the fact that Maxell did not seek a preliminary injunction” to reject Maxell’s
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`“assertion that it needs injunctive relief as soon as possible.” Dkt. No. 298 at 3 n.3. In so ruling,
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`the Court cited recent precedent from Judge Payne “finding that failure to seek a preliminary
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`injunction weighs against any potential prejudice a patentee may suffer.” Id. (citing Uniloc 2017
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`LLC v. Samsung Elec. Am., Inc., No. 2:19-cv-00259-JRG-RSP, 2020 WL 1433960, at *4 (E.D.
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`Tex. Mar. 24, 2020)). Here, Maxell’s delay in bringing the suit combined with its failure to seek
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`a preliminary injunction “weighs against any potential prejudice” it can claim. Id.
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`Further, since Maxell does not compete with Apple and does not make any products that
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`practice the asserted patents, money damages in the form of a reasonable royalty will fully
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`compensate Maxell for any alleged harm. See NFC Tech., 2015 WL 1069111, at *2-3 (finding
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`no prejudice because “monetary relief will be sufficient” for a non-competitor); see also
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`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1338 (Fed. Cir. 2012)
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`(lack of direct competition is a substantial basis for denying a permanent injunction).
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`Furthermore, any delay in recovering money damages until after the Patent Office completes its
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`post-grant review does not constitute undue prejudice. See Parallel Networks Licensing, LLC v.
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`Ramquest Software, Inc., No. 4:19-cv-487, 2020 WL 1236266, at *2-3 (E.D. Tex. Mar. 13, 2020)
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`(“mere delay in collecting damages does not constitute undue prejudice.”). Indeed, “the Federal
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`Circuit has held, ‘[a] stay will not diminish the monetary damages to which [the plaintiff] will be
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`entitled if it succeeds in its infringement suit—it only delays realization of those damages and
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`delays any potential injunctive remedy.” CyWee Grp. Ltd. v. Samsung Elecs. Co., No.
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`217CV00140WCBRSP, 2019 WL 11023976, at *4 (E.D. Tex. Feb. 14, 2019) (Bryson, Circuit J.)
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`(quoting VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014)).
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`Finally, Maxell has not submitted declarations or other evidence to substantiate a specific
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`claim of prejudice. Alacritech, Inc. v. CenturyLink, Inc., No. 216CV00693-RWS-RSP, 2017 WL
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`4231459, at *2 (E.D. Tex. Sept. 22, 2017); Sec. People, Inc. v. Ojmar US, LLC, No. 14-CV-
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`04968-HSG, 2015 WL 3453780, at *5 (N.D. Cal. May 29, 2015) (collecting cases requiring
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`“evidence to substantiate an argument that” a stay “will result in prejudice to the non-moving
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`party”). As the party alleging prejudice, Maxell had the burden “to provide this Court sufficient
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`evidence to evaluate the degree of prejudice that [Maxell] may suffer as the result of a stay.”
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`Sec. People, 2015 WL 3453780, at *5. Maxell has never done so, despite two opportunities in
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`opposition to Apple’s two prior motions to stay. Accordingly, “this factor weighs in favor of a
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`stay,” since Maxell “has not presented evidence it would be prejudiced beyond the procedural
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`effect of the delay.” Alacritech, 2017 WL 4231459, at *2.
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`3.
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`Factor Three: The Stage of the Case Favors a Stay.
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`As in Ramot, the stage of the case also favors a stay here. Although the proceedings are
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`advanced, there “remain significant resources yet to be expended by the parties, including at the
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`pretrial conference and preparations leading up to an actual trial of this case.” Ramot, 2021 WL
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`121154, at *2. In Ramot, the court granted a stay less than two months before trial. Id. And
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`because the instant case involves twice as many asserted patents as Ramot (six versus three), the
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`“resources yet to be expended by the parties” are even more significant here, including preparing
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`and presenting more than 25 witnesses across the six asserted patents, who will come from all
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`over the country to attend trial. This is why the Federal Circuit has urged stays even when
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`substantial time and effort have already been expended, because the actual trial is “the most
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`burdensome task” in a patent case. Smartflash LLC v. Apple Inc., 621 F. App’x 995, 1005 (Fed.
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`Cir. 2015). Thus, even though this case is in its late stages, this factor favors a stay.
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`III.
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`PROCEEDING WITH TRIAL NOW WOULD JEOPARDIZE THE HEALTH
`AND SAFETY OF THE TRIAL PARTICIPANTS AND THE SURROUNDING
`COMMUNITY.
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`If the Court is not inclined to stay this case pending EPR and IPR review, at a minimum
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`the March 22 trial should be continued until later this year so that all participants who want one
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`can get a COVID-19 vaccine.
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`A.
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`The Number of COVID-19 Cases and Deaths Are Substantially Higher Now
`Than in November 2020, When the Court Continued the December Trial.
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`To date, more than 27 million Americans have contracted COVID-19, and more than
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`485,000 have died. Ex. 1 (Neuman Decl.) ⁋ 4. Texas has been particularly hard hit by the virus,
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`with more than 2.5 million cases and 41,000 deaths. Id. ⁋ 5. These numbers have significantly
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`worsened in the three months since the Court continued the trial to March 22. When the Court
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`continued trial in early November, the number of COVID-19 cases in Texas was approximately
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`one million, and the number of deaths was just above 20,000. Id. ⁋ 7. In just three months, those
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`numbers have more than doubled. Id. The same trends can be seen in Bowie County and the
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`surrounding counties. In early November, the number of cases in Bowie County was around
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`2,500 and the total number of deaths was 97. Id. ⁋ 8. Today, the total number of cases in Bowie
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`County is over 6,300, and the number of COVID-19 deaths is over 170. Id. ⁋ 5. Considering the
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`75-mile radius around Bowie County—an area encompassing the jury pool and those with whom
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`jurors and Court staff are likely to interact—those numbers increase to more than 84,000 cases
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`and nearly 2,000 deaths. Id. ⁋ 5.
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`In recent weeks, Texas has seen COVID-19 hospitalizations and cases trend downward
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`after a holiday season marked by a record-breaking surge. Nevertheless, new cases and
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`hospitalizations are still high. Id. ⁋ 9. And scientists have recently discovered in the U.S. new
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`COVID-19 variants, including a more contagious variant first identified in Britain. The CDC has
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`warned that this variant could become a significant source of infections in the United States,
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`potentially leading to another acceleration in cases as trial approaches. Id. ⁋ 10.
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`B.
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`A March Trial Poses a Health and Safety Risk for All Participants and the
`Surrounding Communities.
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`Proceeding with the March 22 trial creates an undue risk of COVID-19 spread and
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`infection for trial participants, courthouse staff, and the local communities in and around the
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`Texarkana Division. Id. ⁋⁋ 20-25. While Apple appreciates that the Court intends to take steps
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`to socially distance those in the courtroom and require masks except for the witness and
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`examining attorney, the trial would still require all participants to increase their risk of exposure
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`and spread of COVID-19. Indeed, even with these same precautions—masks and social
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`distancing required for all trial participants and court staff—13 trial participants at a November
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`trial in the Sherman Division of this District tested positive for COVID-19 during trial, resulting
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`in Judge Mazzant granting a mistrial. Id. ⁋ 21.
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`As with the November trial in the Sherman Division, the trial in this case would draw a
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`large group of people together—some in the courtroom and many others in workspaces in
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`Texarkana preparing for the trial—most of whom will have recently traveled from outside the
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`local area. On the first day of trial, it is likely that around 50 potential jurors will come to the
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`courthouse, and approximately 25 of them will be in the courtroom with at least ten to 15 others
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`(attorneys, client representatives, and courtroom staff). In a group of this size, given the present
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`existing COVID-19 cases in Bowie County and the surrounding areas, there is a high likelihood
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`that several will be carrying the virus and will be capable of transmitting it to others, most likely
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`while they are asymptomatic. Id. ⁋ 20.
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`Even after the jury is selected, the trial would continue to require a significant group of
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`people to remain together in the courtroom. And absent proper ventilation and filtration, the
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`courtroom is an environment that would present a high risk of COVID-19 transmission. Id. ⁋ 18.
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`By its very nature, a trial involves a great deal of speaking without wearing a mask. Speaking is one
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`of the main ways that COVID-19 is transmitted from person to person, because COVID-19 spreads
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`by aerosols or airborne droplets. Id. The risk of transmission by such particles is significantly
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`higher in an enclosed space without proper ventilation. Id. And, in addition to the courtroom, the
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`litigation teams will need to have significant groups of witnesses, lawyers, paralegals, and
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`assistants—likely 15 or more—in other local workspaces, preparing for trial.
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`The risk of transmission is compounded because most of the lawyers, client representatives,
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`and witnesses who will be participating in the trial will travel from outside the local area. Many of
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`the locations from which these participants will be coming—mostly large cities, such as Los
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`Angeles, San Francisco, and Washington, D.C.—have very high COVID-19 rates. Id. ⁋ 19. It is a
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`near certainty that the travel participants coming from these cities will be traveling to Texarkana
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`on planes with at least one person who is COVID-19 positive. See COVID-19 Event Risk
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`Assessment Planning Tool, https://covid19risk.biosci.gatech.edu/ (last visited Feb. 17, 2021).
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`Further, travel to Texarkana will require these people to pass through some of the country’s busiest
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`airports, including Dallas-Fort Worth.
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`Apple’s lawyers, witnesses, and client representatives would of course comply with the
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`Court’s safety procedures while at trial, and would comply with all local safety guidance while in
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`Texarkana. This would not, however, eliminate the risk that an asymptomatic person could
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`unknowingly bring COVID-19 to (or from) Texarkana, such as by contracting it en route. Id. ⁋ 20.
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`The parties and their witnesses will necessarily have to interact with the local community while
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`staying in Texarkana for trial. Because COVID-19 can be transmitted asymptomatically,
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`temperature and symptom screenings are not fully effective, and if even one person has it, then
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`everyone is at risk of infection, including everyone in the courtroom, the courthouse, and the
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`parties’ hotels and conference rooms. Even daily testing of trial participants would not
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`effectively reduce the risk of exposure to and spread of COVD-19, as evidenced by a COVID-19
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`breakout at a conference in California despite 450 negative COVID-19 tests from attendees. Id.
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`This also creates a risk of spreading the disease in the community. Such an increase would further
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`strain local hospitals and harm the local economy.
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`The trial will include participants who are at higher risk for severe illness if they become
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`infected. For example, Apple has three expert witnesses who are over 65, putting them in a
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`particularly high-risk category. Certain of Apple’s witnesses and lawyers also are responsible
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`for providing care to elderly family members or those with underlying conditions. Moreover, for
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`those trial participants coming from out of the county or state, there will be an undue risk of
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`transmitting the disease to their families and their communities when they return, and especially
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`in cases where family members are at higher risk, will need to self-quarantine. For all of these
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`reasons, a March 22 trial would pose an unnecessary risk to the participants and those they
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`interact with, both in Texarkana and when they return home. Id. ¶ 23.
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`C.
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`A Finite Continuance of the Trial Date Would Not Unduly Prejudice Maxell.
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`Should the Court not be inclined to await the outcome of the post-grant proceedings,
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`Apple suggests only a limited continuance of the trial is necessary, until later this year when
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`those trial participants who want to receive the COVID-19 vaccine have the opportunity to do so.
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`Thus far, in Bowie County, 5.4% of the vaccine-eligible population has received one or more
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`doses of the COVID-19 vaccine, and 2.7% are fully vaccinated. Id. ⁋ 14. Numbers in
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`surrounding counties are similar. Id. And Texas was the first state to administer 1 million
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`COVID-19 vaccines. Id. ⁋ 13. It was also recently announced that CHRISTUS St. Michael
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`Health System was named as a COVID-19 Vaccination Hub by the State of Texas to serve the
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`Texarkana region, which will accelerate the vaccination numbers in Bowie County and the
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`surrounding areas. Id. ⁋ 15. The vaccination rates will also increase in these areas, as well as
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`around the country, as the vaccine supply continues to increase. Just last week, it was announced
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`that the United States had secured an additional 200 million doses of the vaccine. Id. ⁋ 16. It is
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`expected that by Fall 2021, most people in the United States who want the COVID-19 vaccine
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`will be able to get it. Id. ⁋ 16. Thus, at a minimum, the Court should continue the trial until all
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`trial participants have the opportunity to become fully vaccinated.
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`For the reasons discussed above, a continuance of the trial date will not prejudice Maxell.
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`In contrast, proceeding with the March trial would unduly prejudice Apple. At least three of
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`Apple’s expert witnesses and two of its engineer fact witnesses will be unable to travel to
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`Texarkana for trial in March due to their age, underlying health conditions, or other COVID-19
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`health concerns. Even if these witnesses testify remotely via videoconference, that is no
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`substitute for the face-to-face interaction that is only possible with witnesses present in the
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`courtroom. Apple’s inability to present its witnesses in person would impinge upon Apple’s due
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`process rights to fully contest Maxell’s evidence. Due process protects a civil defendant's “right
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`to a full and fair opportunity to litigate an issue,” Hardy v. Johns-Manville Sales Cor