Case 5:19-cv-00036-RWS Document 648 Filed 03/08/21 Page 1 of 8 PageID #: 33108
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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 NOTICE OF STATUS OF MOTIONS IN LIMINE
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`Pursuant to the Court’s Order (Dkt. No. 634), Plaintiff Maxell, Ltd. (“Plaintiff” or
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`“Maxell”) and Defendant Apple Inc. (“Defendant” or “Apple”) hereby jointly submit to the Court
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`their notice on the status of their agreement (or not) on the Parties’ pending motions in limine:
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`Agreed
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`The parties agree on the following motions in limine as presented below.
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` Maxell Motion in Limine #3: Apple agrees it will not present Google Maps as a
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`noninfringing alternative to the asserted patents. Apple may seek relief from this order if
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`Maxell opens the door on this issue.
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` Maxell Motion in Limine #4: Apple agrees it will not assert a practicing the prior art
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`defense to infringement.
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` Maxell Motion in Limine #6: Apple agrees it will not present Apple’s COVID-19 response
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`efforts to the jury.
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`Case 5:19-cv-00036-RWS Document 648 Filed 03/08/21 Page 2 of 8 PageID #: 33109
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`Possible Agreement
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`Although the parties have not agreed on the following motion in limine, they are still in discussions
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`and may come to agreement before the pretrial conference.
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` Apple Motion in Limine #1: The parties are currently discussing a stipulation to resolve
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`the outstanding issues on this motion in limine.
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` Maxell Motion in Limine #5: Apple agrees that it will not argue or present evidence
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`denigrating the United States Patent and Trademark Office and its employees, including
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`regarding overwork, quotas, and awards or promotions at the USPTO. To the extent,
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`however, that Maxell opens the door on these issues by, for example, offering argument or
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`testimony about the patent examination process in the USPTO or the quality of such
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`process, Apple will seek leave from the Court to argue or present evidence of the issues
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`identified above. The parties agree that testimony or argument going only to the fact that
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`the USPTO issued the patents-in-suit and that once the USPTO issues a patent, the patent
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`is presumed valid, do not themselves open the door to Apple arguing or presenting evidence
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`denigrating the USPTO and/or its Examiners. However, Maxell believe that Apple’s
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`position on what constitutes opening the door here is still far too narrow. Merely “offering
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`argument or testimony about the patent examination process at the USPTO” cannot open
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`the door to argument or evidence by Apple denigrating the USPTO and its employees.
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`Indeed, the Patent Video “The Patent Process: An Overview for Jurors” - that will be shown
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`to the jury at trial - contains a summary of the patent examination process. Maxell should
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`be able to refer to the Patent Video and its contents without opening the door to Apple
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`denigrating the USPTO and its employees.
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`Case 5:19-cv-00036-RWS Document 648 Filed 03/08/21 Page 3 of 8 PageID #: 33110
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`Not Agreed
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`The parties do not agree on the following motions in limine.
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` Apple Motion in Limine #6:
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`Apple’s Position: As Apple made clear at the November 12, 2020 hearing, Apple’s damages
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`expert, Lance Gunderson, will not provide any testimony about Steve Jobs or statements that Steve
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`Jobs made. Nevertheless, Maxell still seeks to offer statements by Steve Jobs because Mr.
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`Gunderson discussed in his report that Apple is a successful and innovative company. But
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`statements from Steve Jobs that are at least a decade old, and in many cases much older, are simply
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`not relevant to that issue. Courts in this District and elsewhere have routinely excluded testimony
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`and argument about Steve Jobs and statements that he made because they pose a significant risk
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`of undue prejudice to Apple and jury confusion. See, e.g., Contentguard Holdings, Inc. v.
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`Amazon.com, Inc., No. 2:13-cv-01112-JRG, 2015 WL 11089490, at *5 (E.D. Tex. Sept. 4, 2015)
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`(precluding plaintiffs from offering argument, evidence, or testimony about statements made by
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`Steve Jobs to biography writer Walter Isaacson); Apple iPod iTunes Antitrust Litig., No. 05-cv-
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`0037-YGR, 2014 WL 12719192, at *4 (N.D. Cal. Nov. 18, 2014) (precluding plaintiffs from
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`offering evidence or eliciting testimony regarding Steve Jobs’s character). For these same reasons,
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`Apple’s MIL #6 should be granted here. To the extent that Maxell seeks to show, as it claims
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`below, that Mr. Gunderson purportedly did not consider certain information in forming his
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`opinions, it can do so without any reference to Steve Jobs or statements that Steve Jobs made.
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`Similarly, statements that Steve Jobs made about the axis gyro in the iPhone 4 are not relevant to
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`the invalidity of the ’493 patent, and suffer from the same issues of undue prejudice and jury
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`confusion.
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`3
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`Case 5:19-cv-00036-RWS Document 648 Filed 03/08/21 Page 4 of 8 PageID #: 33111
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`Maxell’s Position: An order completely prohibiting the mention of Apple’s founder and longtime
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`leader is wildly overbroad and inappropriate. Maxell agrees it will not offer evidence or make
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`arguments about: (1) political positions taken by Apple or its leadership or (2) media reports
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`unrelated to this litigation without first seeking Court approval. The one remaining issue is Apple’s
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`request to prohibit any evidence or argument “about Steve Jobs.” Maxell agrees that no evidence
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`or argument can be made “about Steve Jobs” without first seeking Court approval so long as this
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`agreement or any order does not include evidence related to statements made by Steve Jobs.
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`Maxell should be allowed to offer evidence related to statements made by Steve Jobs because,
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`once Apple’s expert Mr. Gunderson relied upon numerous magazines, articles, e-news and other
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`documents to explain the reasons why Apple is one of the most successful and innovative
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`companies in the world, Maxell is entitled to cross-examine him as to why he ignored some articles
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`and considered others in reaching that opinion. The offer by Apple to not tender into evidence an
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`article relied upon by Mr. Gunderson that references statements by Steve Jobs or the offer to not
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`mention the name Steve Jobs is of no moment and does not resolve the remaining dispute as the
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`expert’s opinion about Apple is not being withdrawn. To prohibit full examination of the expert’s
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`bias or reason for “cherry picking” only the good fruit or evidence to reach an opinion, is
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`fundamentally unfair. Additionally, statements by Steve Jobs relate to non-obviousness for Patent
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`‘493. See, e.g., Madisetti Validity Rep. at ¶¶ 122, 239, 365. When Steve Jobs mentioned that
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`“adding a 3 axis gyro [to the iPhone 4] is fantastic” and calling the gyro “a really cool piece of
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`evidence”, this is recognition by Apple of what the ‘493 Patent’s inventors had disclosed a decade
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`earlier. Apple’s cases are no assistance. Contentguard Holdings, Inc. provides no information as
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`to the statements in dispute though it appears that Walter Isaacson took statements about Mr. Jobs’
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`childhood and character.
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` See https://www.latimes.com/books/la-et-1029-book-20111029-
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`4
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`Case 5:19-cv-00036-RWS Document 648 Filed 03/08/21 Page 5 of 8 PageID #: 33112
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`story.html. In Apple iPod iTunes Antitrust Litig, the court only limited evidence of Steve Jobs’
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`character. Maxell does not intend to offer statements about the character of Steve Jobs.
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` Apple Motion in Limine #8:
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`Apple’s Position: Apple agrees that Maxell can offer argument or testimony about the simple fact
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`that Apple’s employee witnesses are indeed compensated by Apple. But Maxell should not be
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`permitted to ask these Apple witnesses about the amount of their compensation, any other details
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`about their compensation, such as sources of compensation, or how much Apple stock they own.
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`This information is not relevant to any issue in the case, including because Apple’s employees
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`have no direct financial stake in the outcome of this case. Further, any alleged probative value of
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`such information is substantially outweighed by the tendency of such questions to embarrass or
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`harass the witness and confuse the jury. See Droplets, Inc. v. Overstock.com, Inc., No. 2:11-CV-
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`401-JRG-RSP, 2014 WL 11515642, at *1 (E.D. Tex. Dec. 10, 2014) (excluding references to net
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`worth of individuals employed by plaintiff and references to payments to expert for work on behalf
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`of plaintiff unrelated to current litigation); Finjan, Inc. v. Blue Coat Sys., Inc., No. 13–cv–03999–
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`BLF, 2015 WL 4129193, at *4 (N.D. Cal. June 8, 2015) (excluding under FRE Rule 403 references
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`to compensation of plaintiff’s consultants not related to case).
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`Maxell’s Position: Maxell agrees not to ask any Apple witness the amount of that employee’s
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`annual salary. Maxell also agrees to ask any Apple witness if that employee owns Apple stock and
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`the number of shares owned, but Maxell will not ask the value of the employee’s shares. Otherwise,
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`the fact that a witness is paid by Apple, excluding expert compensation, and the extent of any stock
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`ownership is relevant to show bias. The over breadth of Apple’s request is clear as it would
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`preclude questioning regarding a fact witness being paid or otherwise compensated for their
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`Case 5:19-cv-00036-RWS Document 648 Filed 03/08/21 Page 6 of 8 PageID #: 33113
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`testimony either directly or indirectly by Apple.
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`Dated: March 8, 2021
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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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`/s/ Mark D. Fowler
`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)
`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
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`6
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`Case 5:19-cv-00036-RWS Document 648 Filed 03/08/21 Page 7 of 8 PageID #: 33114
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`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
`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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`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, Texas 78701-3799
`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
`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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`Case 5:19-cv-00036-RWS Document 648 Filed 03/08/21 Page 8 of 8 PageID #: 33115
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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 4th day of March, 2021, 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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