Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 1 of 52 PageID #: 4027
`
`Maxell Ltd.’s Motion to Compel
`Apple to Produce Timely Discovery
`
`September 17, 2019
`
`
`
`Maxell Ltd.’s Motion to Compel
`Apple to Produce Timely Discovery
`
`September 17, 2019
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 2 of 52 PageID #: 4028
`
`Apple’s Discovery Misconduct
`• Deadlines are due dates, not start dates
`• Must comply with all discovery obligations
`– Expert discovery obligations do not obviate fact discovery obligations
`– Facts must be disclosed even if Apple does not want or like them
`– Partial answers make for incomplete discovery
`• “Have not gotten to it yet” is not good cause
`
`2 2
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 3 of 52 PageID #: 4029
`
`Apple’s Discovery Misconduct
`• Disputes are two-pronged: timing and scope
`• Apple focuses on timing to avoid the genuine disputes on scope
`• An effort to kick the can down the road
`– to avoid doing the real work of discovery
`– hoping the case will be transferred
`– hoping to ignore discovery obligations for a bit longer
`• The parties have real, substantive disputes now
`
`3 3
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 4 of 52 PageID #: 4030
`
`Document Production
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 5 of 52 PageID #: 4031
`
`Substantial Completion of Document Production
` • July 10, 2019: Deadline to Comply with Paragraphs 1 & 3 of the Discovery
`Order (DCO, D.I. 46)
`• Paragraph 3(b):
`
`Discovery Order, D.I. 42
`
`5 5
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 6 of 52 PageID #: 4032
`
`Substantial Completion of Document Production
` • August 14, 2019: Deadline to Comply with P.R. 3-3 and 3-4 (DCO, D.I. 46)
`• P.R. 3-4:
`
`Local Patent Rule 3-4
`
`6 6
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 7 of 52 PageID #: 4033
`
`Substantial Completion of Document Production
` • Taken together, document production should have been substantially
`complete no later than August 14, 2019
`• Today, on September 17, production still missing:
`– License Agreements
`– Marketing Materials
`– Internal Corporate Organization and Policy Materials
`– Apple Technical Documents (e.g., Internal Technical Specifications,
`Software Design Guides, FCC Testing Documents)
`– Third Party Technical Documents
`– Service Manuals
`
`7 7
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 8 of 52 PageID #: 4034
`
`Apple treats deadlines as starting dates, not due dates
` Document Production Correspondence
`
`
`
`
`
`Interrogatory Responses
`
`Aug. 2, 2019 Ltr. Apple to Maxell
`
`8 8
`
`Apple Response to Rog No. 9
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 9 of 52 PageID #: 4035
`
`Substantial Completion of Document Production
` • In briefing, Apple asserts the deadline is the date for productions to
`begin
`
`Opposition at 2
`
`9 9
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 10 of 52 PageID #: 4036
`
`Substantial Completion of Document Production
`
`
`
`10 10
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 11 of 52 PageID #: 4037
`
`Substantial Completion of Document Production
`
`
`
`“Comply”, not “Begin Compliance”
`
`11 11
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 12 of 52 PageID #: 4038
`
`Apple Suggests it is Complying
` • “Apple has consistently advised Maxell the status of Apple’s production of
`the requested document categories. With over seven months left in fact
`discovery, Maxell’s aspersions of “prejudice” ring hollow and are without
`explanation or basis.” Opposition at 1.
`• “To date, Apple has produced over 775,000 pages of documents and made
`available for inspection nearly 700,000 source code files, and its productions
`continue.” Opposition at 1-2.
`• “Apple is already acting in a diligent and reasonable manner consistent with
`local practice in this District.” Opposition at 2.
`
`12 12
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 13 of 52 PageID #: 4039
`
`No Intention to “Comply”
` • Apple has never provided a date for anticipated completion, other than
`the “close of fact discovery”
`• Apple’s rolling productions to date are overstated
`– Of the 13,169 documents produced, nearly 1/3 (4,263) are duplicates
`– Large portion of documents are publicly available website pages
`• Apple admits that it has not produced whole categories of documents
`(will address some during interrogatories discussion)
`
`
`13 13
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 14 of 52 PageID #: 4040
`
`Apple Knows What to Produce
`• Apple admits it is aware of the legal theories and factual bases—it must produce
`the corresponding documents
`
`
`14 14
`
`Apple Initial Disclosures, at 3.
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 15 of 52 PageID #: 4041
`
`Maxell Substantially Completed Document
`Production
` • Maxell has not mis-represented its own production
`– Production was substantially complete by July 10
`– Documents produced after July 10 are almost entirely third party
`documents
`• July 29 production of pre-suit communications were
`communications with non-party Maxell Corporation of America
`
`15 15
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 16 of 52 PageID #: 4042
`
`Maxell Has Not “Rushed to Court”
`• Maxell followed the discovery dispute process faithfully
`
`– Maxell provided 3 written statements regarding materials that should be
`produced and support where appropriate – July 10, 15, and 19 (this is after June
`18 letter identifying documents that should be produced)
`– Apple provided written response July 25, Aug 12
`• Apple asked for a specific deadline from Maxell to see if the parties are at an impasse
`• Maxell offered September 6; Apple refused any date (including Sept 30)
`– Parties were aware of each others’ positions prior to meet and confer
`• Clearly prolonging argument on issues would not be fruitful; two meet and confers confirmed the
`impasse, including last week
`• Notably, Maxell is moving on timing and scope, on items Apple explicitly stated it would not timely
`produce (scope addressed with interrogatories)
`16 16
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 17 of 52 PageID #: 4043
`
`Requested Relief
` • Apple should be ordered to substantially complete its document
`production—of all relevant documents—by September 30
`– “substantially complete” is not a difficult concept for experienced
`litigators
`– Scope of contested documents addressed with the interrogatories
`
`
`Motion at 1
`
`17 17
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 18 of 52 PageID #: 4044
`
`Responses to Maxell’s First Set of
`Interrogatories
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 19 of 52 PageID #: 4045
`
`Interrogatory Nos. 2, 7, 8
`
`• Apple Response: Apple has not engaged in any acts that constitute direct or indirect
`infringement of any valid claim of any Patent-in-Suit, either literally or under the
`doctrine of equivalents, willfully or otherwise. Apple will disclose its non-infringement
`defenses in its rebuttal expert report, according to the schedule contemplated by the
`Docket Control Order (D.I. 46), as required by the local rules in the Eastern District of
`Texas. On the basis of its objections, Apple will not otherwise respond to this
`interrogatory.
`
`19 19
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 20 of 52 PageID #: 4046
`
`Interrogatory Nos. 2, 7, 8
`
`• Apple Response: Apple has not engaged in any acts that constitute direct or
`indirect infringement of any valid claim of any Patent-in-Suit, either literally
`or under the doctrine of equivalents, willfully or otherwise. On the basis of its
`objections, Apple will not otherwise respond to this interrogatory at this
`time.
`
`20 20
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 21 of 52 PageID #: 4047
`
`Interrogatory Nos. 2, 7, 8
`
`• Apple Response: Apple has not engaged in any acts that constitute direct or indirect
`infringement of a valid claim of any Patent-in-Suit, either literally or under the doctrine of
`equivalents, willfully or otherwise. At an appropriate time contemplated by the Docket
`Control Order (D.I. 46), Apple will disclose expert opinions relating to acceptable
`alternatives to the purported inventions claimed by Patents-in-Suit. On the basis of its
`objections, Apple will not otherwise respond to this interrogatory at this time.
`21 21
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 22 of 52 PageID #: 4048
`
`Interrogatory Nos. 2, 7, 8
`• No. 2: Non-infringement contentions.
`• No. 7: Steps taken to avoid infringing any claim of any Patent-in-Suit.
`• No. 8: Non-infringing alternatives.
`• Apple Position: Refuse to respond because prematurely calls for expert
`opinion
`
`22 22
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 23 of 52 PageID #: 4049
`
`Interrogatory Nos. 2, 7, 8
`• Maxell only seeks facts currently within Apple’s possession, not expert opinion
`Interrogatory No. 2 (noninfringement):
`
`
`23 23
`
`Apple Initial Disclosures, at 3.
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 24 of 52 PageID #: 4050
`
`Interrogatory Nos. 2, 7, 8
`• Maxell only seeks facts currently within Apple’s possession, not expert opinion
`Interrogatory No. 7 (acts to avoid infringement):
`– Facts, not expert opinion
`– Steps taken in the past to avoid infringement cannot arguably fall within the purview
`of expert testimony or be categorized as seeking a non-infringement position
`– Apple either did or did not take steps to avoid infringement; these are facts, not
`expert opinion
`– In meet and confer, Apple offered to provide this information if/when Apple
`decides to rely on it
`• That it not the standard for discoverability!
`
`
`
`24 24
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 25 of 52 PageID #: 4051
`
`Interrogatory Nos. 2, 7, 8
`• Maxell only seeks facts currently within Apple’s possession, not expert opinion
`Interrogatory No. 8 (noninfringing alternatives):
`– Facts, not expert opinion
`– District has held that a defendant must identify non-infringing alternatives prior to
`the deadline for expert disclosures to enable a plaintiff to conduct discovery into
`the technical feasibility and acceptance of the alternative.
`• Godo Kaisha IP Bridge 1 v. Broadcom Ltd., No. 2:16-cv-134-JRG-RSP (E.D. Tex., Apr. 20, 2017)
`– Must be able to explore the feasibility, adequacy, acceptance of alleged alternatives;
`cannot be done after close of fact discovery
`• Apple engineers?; customers?; suppliers?; carriers?
`
`25 25
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 26 of 52 PageID #: 4052
`
`Interrogatory Nos. 2, 7, 8 – Requested Relief
`• Provide full, complete responses to the interrogatories
`• In a timely manner (by September 30)
`• Be held to the responses absent good cause
`– No never-ending “supplemental responses” without good cause
`– Responses are due by their deadlines, not when Apple is ready to disclose
`the facts to Maxell
`– No “Seventh Supplemental Response . . .” on the last day of fact discovery
`
`26 26
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 27 of 52 PageID #: 4053
`
`Interrogatory No. 3
`
`27 27
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 28 of 52 PageID #: 4054
`
`Interrogatory No. 3
`• Apple states it is undertaking review of, and will produce, licenses “reasonably
`relevant to the technology and/or functionalities accused in this case and
`reasonably proximate to the dates of a hypothetical negotiation or negotiations
`asserted by Maxell”
`– What is “reasonably relevant”?
`• Apple refuses to say
`• No details at all about how relevance determination is being made
`– Apple objects to each description of accused feature or functionality—
`claims not to understand
`
`
`
`28 28
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 29 of 52 PageID #: 4055
`
`Interrogatory No. 3
`– What is “reasonably relevant”?
`• Apple objects to each description of accused feature or functionality—claims not to
`understand
`
`
`
`29 29
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 30 of 52 PageID #: 4056
`
`Interrogatory No. 3
`• Even if “reasonably relevant” licenses acceptable, still have disputes
`• Apple refuses to provide information regarding how the
`royalty/consideration of licenses determined
`• Apple refuses to provide a date by which production will be substantially
`complete
`
`
`30 30
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 31 of 52 PageID #: 4057
`
`Interrogatory No. 3 –
`Maxell did not “rush to court”
` • Maxell:
`
`Maxell Letter, July 19, 2019
`
`31 31
`
`Apple Response to Rog No. 3
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 32 of 52 PageID #: 4058
`
`Interrogatory No. 3 – Requested Relief
`• Provide full, complete response to the full interrogatory
`– all licenses or an agreed scope
`– information on royalty determinations
`• In a timely manner (by September 30)
`• Be held to the response absent good cause
`
`32 32
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 33 of 52 PageID #: 4059
`
`Interrogatory No. 4
`
`33 33
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 34 of 52 PageID #: 4060
`
`Interrogatory No. 4
`
`34 34
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 35 of 52 PageID #: 4061
`
`Interrogatory No. 4
`• Sales networks and distribution channels are relevant:
`– Damages
`– May have information regarding operation, use, and marketing of
`accused products
`• How are the functionalities and features used and valued by customers, vendors,
`and carriers?
`• What functionalities and features are emphasized, touted, or otherwise marketed
`by customers, vendors, and carriers?
`
`
`
`35 35
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 36 of 52 PageID #: 4062
`
`Interrogatory No. 4 (Sales Data) – Maxell did not
`“rush to court”
` • Maxell:
`
`Maxell Letter, July 19, 2019
`
`36 36
`
`Apple Response to Rog No. 4
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 37 of 52 PageID #: 4063
`
`Interrogatory No. 4 – Requested Relief
`• Provide full, complete response to the full interrogatory
`– Information on entities responsible for sales and distribution
`– Information on customers
`• In a timely manner (by September 30)
`• Be held to the response absent good cause
`
`
`37 37
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 38 of 52 PageID #: 4064
`
`Interrogatory No. 5
`
`38 38
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 39 of 52 PageID #: 4065
`
`Interrogatory No. 5
`
`39 39
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 40 of 52 PageID #: 4066
`
`Interrogatory No. 5
`• Actions taken are relevant:
`– Damages and willfulness
`• Steps to avoid infringement
`• Acknowledgement of potential infringement
`• Details of Apple’s knowledge and understanding of the patents
`• How the actions correspond with Apple’s standard procedures
`• Nothing done at all?
`
`40 40
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 41 of 52 PageID #: 4067
`
`Interrogatory No. 5 – Requested Relief
`• Provide full, complete response to the full interrogatory
`– Information on actions taken as a result of notice/awareness
`• In a timely manner (by September 30)
`• Be held to the response absent good cause
`
`
`41 41
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 42 of 52 PageID #: 4068
`
`Interrogatory No. 6
`
`42 42
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 43 of 52 PageID #: 4069
`
`Interrogatory No. 6
`
`43 43
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 44 of 52 PageID #: 4070
`
`Interrogatory No. 6
`• Interrogatory could have been directed to “relevant components”
`
`
`
`
`
`
`– Maxell narrowed scope and targeted discovery to only 21
`components
`
`
`
`44 44
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 45 of 52 PageID #: 4071
`
`Interrogatory No. 6
`• Apple’s objections are not credible
`
`
`
`
`
`
`
`– Apple’s sophisticated engineers and counsel must understand
`these relatively common industry terms
`
`
`
`45 45
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 46 of 52 PageID #: 4072
`
`Interrogatory No. 6
`• Apple asserts interrogatory comprises at least 21 discrete
`interrogatories
`– At most, it’s 2:
`• Identification of Part: Supplier and Internal/Supplier model numbers
`required to be able to identify part and discuss with both Apple and
`Supplier
`• Cost of each Part
`– Asking for information on the components; Maxell should
`not be penalized for trying to help Apple understand the
`information being sought
`
`
`46 46
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 47 of 52 PageID #: 4073
`
`Interrogatory No. 6
`• If Apple is collecting relevant documents, it must know the identity
`of these parts
`• Production of BOMs Not an Acceptable Response
`– Apple has produced over 3,000 Bills of Material – averaging
`~30/accused product
`– BOMs are up to 500 pages long (see example)
`– Do not state the effective dates
`– Difficult for those outside Apple to identify relevant components
`when nomenclature used by Apple is unknown
`• Not OMM Associate vs Mayer Brown Associate, but Apple as opposed to others
`
`
`
`47 47
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 48 of 52 PageID #: 4074
`
`Interrogatory No. 6 – Requested Relief
`• Provide full, complete response to the full interrogatory
`– Fill out the chart
`– Alternative: give a one-day deposition on the sole topic of this chart (time
`not to count against party deposition time)
`• In a timely manner (by September 30)
`• Be held to the response absent good cause
`
`
`48 48
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 49 of 52 PageID #: 4075
`
`Interrogatory No. 9
`
`49 49
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 50 of 52 PageID #: 4076
`
`Interrogatory No. 9
`• Forecasts and projections are relevant:
`– Damages, where calculated as a lump-sum royalty
`
`
`• In meet and confer, Apple asked Maxell to wave this request since
`Apple does not intend to rely on projections or forecasts
`– That it not the standard for discoverability!
`
`
`50 50
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 51 of 52 PageID #: 4077
`
`Interrogatory No. 9 – Requested Relief
`• Provide full, complete response to the full interrogatory
`– Produce forecasts and/or projections
`• In a timely manner (by September 30)
`• Be held to the response absent good cause
`
`
`51 51
`
`
`
`Case 5:19-cv-00036-RWS Document 81-2 Filed 09/18/19 Page 52 of 52 PageID #: 4078
`
`どうもありがとうございました！
`
`Thank you!
`
`Americas | Asia | Europe | Middle East
`
`mayerbrown.com
`
`Mayer Brown is a global services provider comprising associated legal practices that are separate entities, including Mayer Brown LLP (Illinois, USA), Mayer Brown International LLP (England), Mayer Brown (a Hong Kong partnership) and Tauil & Chequer Advogados (a Brazilian law partnership) (collectively the “Mayer Brown
`Practices”) and non-legal service providers, which provide consultancy services (the “Mayer Brown Consultancies”). The Mayer Brown Practices and Mayer Brown Consultancies are established in various jurisdictions and may be a legal person or a partnership. Details of the individual Mayer Brown Practices and Mayer
`Brown Consultancies can be found in the Legal Notices section of our website. “Mayer Brown” and the Mayer Brown logo are the trademarks of Mayer Brown. © Mayer Brown. All rights reserved.
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
