Case 5:19-cv-00036-RWS Document 96 Filed 10/07/19 Page 1 of 7 PageID #: 4317
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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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`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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`Defendant.
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`MAXELL, LTD.’S OPPOSED MOTION FOR LEAVE TO SUPPLEMENT
`INFRINGEMENT CONTENTIONS TO ADD NEWLY RELEASED PRODUCTS
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`Within the past month, Apple Inc. (“Apple”) has commercially released new products that
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`Maxell believes operate in substantially the same way for purposes of infringement as prior models
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`of the iPhone, Apple Watch, and iPad that are already included in Plaintiff Maxell, Ltd.’s
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`(“Maxell”) Infringement Contentions. Maxell seeks leave to supplement its infringement
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`contentions to add the newly released products, for which good cause exists. Apple opposes this
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`request, but Apple’s opposition has nothing to do with the merits of Maxell’s request. Instead,
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`Apple’s opposition is part of its ongoing attempt to delay the case and obstruct Maxell’s ability to
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`hold Apple accountable for years of willful infringement.
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`Setting aside Apple’s gamesmanship, good cause exists to grant Maxell leave to
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`supplement its infringement contentions to add the newly released products.
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`I.
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`Relevant Facts
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`Pursuant to the Docket Control Order (D.I. 46), Maxell served its P.R. 3-1 and 3-2
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`Disclosure of Asserted Claims and Infringement Contentions on June 12, 2019. More than three
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`months later, Apple released the following new products: iPhone 11, iPhone 11 Pro, iPhone 11 Pro
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`Max, Apple Watch Series 5, and iPad 10.2 (collectively, “Newly Released Products”).
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`Case 5:19-cv-00036-RWS Document 96 Filed 10/07/19 Page 2 of 7 PageID #: 4318
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`Apple made the new iPhone 11, iPhone 11 Pro, iPhone 11 Pro Max, and Apple Watch
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`Series 5 available in stores and for delivery on September 20, 2019. See Exhibit A (Apple press
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`release regarding iPhone and Apple Watch). Apple made the new iPad 10.2 available in stores
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`and for delivery on September 30, 2019. See Exhibit B (Apple press release regarding iPad).
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`Upon announcement of the Newly Released Products, Maxell reviewed publicly available
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`materials and determined that the Newly Released Products likely operate in substantially the same
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`way for purposes of infringement as prior models of the devices previously charted by Maxell.
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`Based on its determination, Maxell reached out to Apple within days of the new iPhone and Watch
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`release and informed Apple that Maxell intends to move the Court for leave to supplement its
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`infringement contentions to add the Newly Released Products. Exhibit C (September 23, 2019
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`Letter Maxell to Apple). In order to provide Maxell sufficient time to evaluate the Newly Released
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`Products themselves, Maxell stated that it would provide Apple with the supplementation on or
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`before October 31, 2019. During a teleconference held on October 4, 2019, Apple indicated that it
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`would oppose Maxell’s motion for leave.
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`II.
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`Argument
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`A.
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`Good cause exists to add the Newly Released Products to Maxell’s
`Infringement Contentions.
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`There is good cause for permitting Maxell leave to amend its infringement contentions.
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`Courts consider four factors in determining whether good cause exists for supplementing
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`infringement contentions: (1) the explanation for the party’s failure to meet the deadline; (2) the
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`importance of the matter that would be excluded; (3) the potential prejudice to the opposing party;
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`and (4) the availability of a continuance to cure any prejudice. S&W Enters., LLC v. SouthTrust
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`Bank of Alabama, NA, 315 F.3d 533, 536 (5th Cir. 2003); see also Motion Games, LLC v. Nintendo
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`Co., No. 6:12-cv-00878, 2015 WL 1774448, at *2 (E.D. Tex. Apr. 16, 2015).
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`Case 5:19-cv-00036-RWS Document 96 Filed 10/07/19 Page 3 of 7 PageID #: 4319
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`Maxell could not have included the Newly Released Products in its originally served
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`infringement contentions. The iPhone 11, iPhone 11 Pro, iPhone 11 Pro Max, Apple Watch Series
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`5, and iPad 10.2 were not yet released (or even announced) when Maxell’s infringement
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`contentions were due on June 12, 2019. See Exhibits A, B. Once such products were announced,
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`Maxell diligently reviewed the technical specifications regarding the products that were made
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`publicly available and ordered the new products for evaluation. Even before the release of the iPad
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`10.2, Maxell informed Apple of its intent to supplement its infringement contentions, and offered
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`to provide such supplement within a month of the release of the new iPad.
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`The importance of adding the Newly Released Products to the case is self-evident. The
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`new products infringe the asserted patents in the same way that the previously charted products
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`infringe the asserted patents. If Maxell is not permitted to add the products to the case, Maxell will
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`have no choice but to file a second case on the same asserted patents and infringement theories in
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`order to ensure that Apple is not profiting from infringement of Maxell’s products through the
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`introduction of new products. It is in the interest of judicial and party economy to enable the parties
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`to fully resolve their dispute with respect to the asserted patents in a single action.
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`Furthermore, given Maxell’s determination that the newly released products operate in
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`substantially the same way for purposes of infringement as previously charted models, Maxell
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`does not expect that its supplement will substantially alter Maxell’s infringement theories as set
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`forth in its initial contentions. Given the foregoing, granting Maxell’s motion for leave would not
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`prejudice Apple. Because Apple will suffer no prejudice, there is no need to cure the prejudice.
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`Were such a need justified, there is ample time in the case to cure such prejudice, as claim
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`construction briefing has yet to begin. Therefore, Apple has sufficient time to address any issues
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`raised by the supplemental claim charts, particularly in view of the fact that Maxell’s infringement
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`theories are not expected to change.
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`Case 5:19-cv-00036-RWS Document 96 Filed 10/07/19 Page 4 of 7 PageID #: 4320
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`B.
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`Apple’s Opposition is Meritless and Obstructionist.
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`When asked for the basis of its opposition, Apple indicated it does not oppose the idea of
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`adding newly released products to the case. Apple also did not state it opposes the motion on any
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`basis found in the factors set forth in S&W Enterprises, LLC v. SouthTrust Bank of Alabama, NA.
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`315 F.3d 533 (5th Cir. 2003). Instead, Apple stated it is opposed to this motion because it does not
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`believe this Court should hear the infringement claims against the new Apple products. Apple
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`stated it believes only a court in the Northern District of California may hear this case.
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`Apple’s conduct with respect to this motion shows Apple’s true intent: to delay any efforts
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`to move this case forward to an ultimate resolution of the case on its merits. It helps explain
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`Apple’s discovery misconduct throughout this case, as well—Apple continues to deliberately
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`withhold relevant, discoverable materials in order to frustrate Maxell’s prosecution of Apple’s
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`infringement. Indeed, Apple stated at the meet and confer that it intends to move the Court to stay
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`all proceedings until the Court issues an order on the motion to transfer. From the start, Apple had
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`no intention of litigating this case as it is required to do, no intention of complying with its
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`discovery obligations, and no intention of accepting this Court’s authority.
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`This is especially plain here, where the newly released Apple products are virtually certain
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`to be added to the case whether it is pending in the Eastern District of Texas or the Northern
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`District of California. Apple’s opposition is meritless and very clearly obstructionist.
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`III. Conclusion
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`Apple’s Newly Released Products were not publicly released at the time Maxell served its
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`initial infringement contentions. Upon their release, Maxell has worked diligently to evaluate the
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`new products, determine they are appropriately included in the case, and apprise Apple of its intent
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`to add the new products to the case. Maxell has further agreed to provide such supplemental claim
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`charts no later than October 31, 2019. Given the fact that Maxell does not anticipate its requested
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`Case 5:19-cv-00036-RWS Document 96 Filed 10/07/19 Page 5 of 7 PageID #: 4321
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`supplementation will alter its infringement theories, and given the current stage of the case, there
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`is good cause to permit Maxell leave to supplement. For these reasons, and those set forth above,
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`Maxell respectfully requests that the Court grant Maxell’s motion for leave.
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`Dated: October 7, 2019
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`By:
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`5
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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
`
`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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`Case 5:19-cv-00036-RWS Document 96 Filed 10/07/19 Page 6 of 7 PageID #: 4322
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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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`6
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`Case 5:19-cv-00036-RWS Document 96 Filed 10/07/19 Page 7 of 7 PageID #: 4323
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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 7th day of October, 2019, with a copy of this document via
`electronic mail pursuant to Local Rule CV-5(d).
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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