Case 5:19-cv-00036-RWS Document 659-1 Filed 03/14/21 Page 1 of 3 PageID #: 33202
`Case 5:19-cv-00036—RWS Document 659-1 Filed 03/14/21 Page 1 of 3 PageID #: 33202
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`EXHIBIT A
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`EXHIBIT A
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`Case 5:19-cv-00036-RWS Document 659-1 Filed 03/14/21 Page 2 of 3 PageID #: 33203
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`Jenkins, Dawn
`From:
`Sent:
`To:
`
`Geoff Culbertson <gpc@texarkanalaw.com>
`Thursday, March 11, 2021 7:50 PM
`Susan Stradley; Steadman, Paul; Fountain, Aaron; agelsleichter@mayerbrown.com;
`agrimaldi@mayerbrown.com; astreff@mayerbrown.com; bmberg@omm.com;
`bmoon@omm.com; bnese@mayerbrown.com; bpaul@mayerbrown.com; Yamashita,
`Brent; bstevens@wscylaw.com; btrac@omm.com; bwilliamson_omm.com;
`cbakewell@mayerbrown.com; Chessman, Christian; cwestin@omm.com;
`dalmeling@omm.com; Knudson, David; Jenkins, Dawn; Gibson, Erin;
`gbuccigross@mayerbrown.com; gil@gillamsmithlaw.com; hcannom@wscylaw.com;
`jbeaber@mayerbrown.com; jfussell@mayerbrown.com; jquilici@orrick.com; Kelly
`Tidwell; Hamilton, Kevin; klevy@mayerbrown.com; krosen@gibsondunn.com;
`lbayne@omm.com; lmiranda@mayerbrown.com; lsimmons@omm.com; Fowler, Mark;
`mdrummondhansen@omm.com; melissa@gillamsmithlaw.com; Jay, Michael;
`mliang@omm.com; mlindinger@mayerbrown.com; mpensabene@omm.com;
`rpluta@mayerbrown.com; ryagura@omm.com; Cunningham, Sean;
`ssiddiqui@mayerbrown.com; Lim, Stephanie; tcox@gibsondunn.com;
`tmiller@mayerbrown.com; tom@gillamsmithlaw.com; vzhou@omm.com;
`wbarrow@mayerbrown.com; Loney, Zachary
`Subject:
`5:19-cv-00036-RWS Maxell Ltd. v. Apple Inc.
`Bosch v Ball-Kell.pdf; Rembrandt Wireless Technologies LP v Samsung Electronics Co
`Attachments:
`Ltd.pdf
`Ms. Stradley –
` Maxell’s submits the following summaries of the attached authorities in response to the Court’s request related to
`Apple’s objections to PX80, 81, 83, 84 & 86 (Made for iPod agreements).
`
`• As seen in, for example Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., No. 2:13-CV-213-JRG-RSP, 2015 WL
`627430, at *5 (E.D. Tex. Jan. 31, 2015), courts admit evidence in order to rebut or challenge a position taken by
`party. Here, Apple’s damages expert, Mr. Gunderson, relies on Apple’s alleged preference for lump sum payments
`as opposed to running royalties in rendering his damages opinion for this case, and similarly criticizes Ms.
`Mulhern for utilizing a running royalty calculation as part of her damages analysis, as is evident from, for example,
`Apple’s Daubert Motion to Exclude opinions and testimony of Maxell’s expert Carla Mulhern, (See, e.g., Apple
`Motion to Exclude Opinions and Testimony of Ms. Mulhern, Dkt. No. 362). The Made for iPod licenses, however,
`contain running royalties.
`• As seen in Bosch v. Ball-Kell, No. 03-1408, 2007 WL 601721, at *6 (C.D. Ill. Feb. 21, 2007), courts have also declined
`to preclude evidence regarding acts that took place prior to the relevant time period of infringement in order to
`provide, for example, chronology, background, and to outline the relationship between the parties: “However,
`their argument ignores the fact that the question of what evidence is admissible for purposes of determining
`damages is not the same as the question of what evidence is admissible for purposes of establishing chronology,
`providing background, outlining the relationship between the parties…”
`• Furthermore, “[e]vidence is relevant if: (a) it has any tendency to make a fact more or less probable than it would
`be without the evidence; and (b) the fact is of consequence in determining the action.” FED. R. EVID. 401. Apple
`denies willful infringement in this case. See, e.g., Pretrial Order (Dkt. 637) at 15. Willfulness looks at, for example,
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`Case 5:19-cv-00036-RWS Document 659-1 Filed 03/14/21 Page 3 of 3 PageID #: 33204
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`whether infringement was “done in bad faith.” See Proposed Jury Instructions (Dkt. 638-2) at 20. In determining
`whether Apple acted willfully, the jury is directed to “consider all facts,” including “[w]hether or not Apple acted
`consistently with the standards of behavior for its industry.” Id. Prior agreements between the parties are relevant
`to this consideration.
` Based on Maxell’s understanding of Apple’s objections and arguments from yesterday’s conference, Maxell is agreeable
`to a limiting order prohibiting the direct comparison between the licensing rates in the Made for iPod agreements and it
`damages request.
` Best regards,
` Geoff
` Geoff Culbertson
`Patton Tidwell & Culbertson, LLP
`2800 Texas Blvd.
`Texarkana, TX 75503
`Phone 903/792-7080
`Fax 903/792-8233
`gpc@texarkanalaw.com
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