Case 6:21-cv-00916-ADA Document 130 Filed 01/30/23 Page 1 of 6
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`Case No. 6:21-cv-00916-ADA
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`Plaintiff,
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`JURY TRIAL DEMANDED
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`RFCYBER CORP.,
`
`v.
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`APPLE, INC.,
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`§
`§
`§
`§
`§
`§
`§
`§
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`§
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`Defendant.
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`ORDER REGARDING THE JANUARY 20, 2023, DISCOVERY DISPUTE HEARING
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`On January 20, 2023, the Court held a discovery dispute hearing in the above captioned
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`case. In accordance with the Court’s rulings from the bench, the Court enters the following Order
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`reflecting those rulings.
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`Issue #1: Compel RFCyber To Produce License Negotiation Documents With
`Licensees And Potential Licensees Of The Asserted Patents
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`Apple’s Position
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`Aside from producing three licenses to the asserted patents, RFCyber refuses to produce
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`documents relating to its licensing activities. For a company whose primary activity is licensing
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`its patents, it is not believable that RFCyber’s entire production of license-related documents
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`amounts to three licenses. For instance, RFCyber has not produced demand letters to other
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`companies or any negotiation communications relating to the three licenses it produced. These
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`demand letters and negotiation communications are critical to determining which patents
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`RFCyber considers to be its “key” patents in driving its licensing approach and how royalty rates
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`were arrived at, among other things. The Federal Circuit recently highlighted the importance of
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`negotiation communications in overturning an $85 million damages award because it was based
`
`
`
`Case No. 6:21-cv-00916-ADA
`
`Plaintiff,
`
`JURY TRIAL DEMANDED
`
`RFCYBER CORP.,
`
`v.
`
`APPLE, INC.,
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Defendant.
`
`ORDER REGARDING THE JANUARY 20, 2023, DISCOVERY DISPUTE HEARING
`
`On January 20, 2023, the Court held a discovery dispute hearing in the above captioned
`
`case. In accordance with the Court’s rulings from the bench, the Court enters the following Order
`
`reflecting those rulings.
`
`Issue #1: Compel RFCyber To Produce License Negotiation Documents With
`Licensees And Potential Licensees Of The Asserted Patents
`
`Apple’s Position
`
`Aside from producing three licenses to the asserted patents, RFCyber refuses to produce
`
`documents relating to its licensing activities. For a company whose primary activity is licensing
`
`its patents, it is not believable that RFCyber’s entire production of license-related documents
`
`amounts to three licenses. For instance, RFCyber has not produced demand letters to other
`
`companies or any negotiation communications relating to the three licenses it produced. These
`
`demand letters and negotiation communications are critical to determining which patents
`
`RFCyber considers to be its “key” patents in driving its licensing approach and how royalty rates
`
`were arrived at, among other things. The Federal Circuit recently highlighted the importance of
`
`negotiation communications in overturning an $85 million damages award because it was based
`
`
`
`Case 6:21-cv-00916-ADA Document 130 Filed 01/30/23 Page 2 of 6
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`on expert opinion that “the asserted patents were key patents,” despite his opinion being
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`“untethered to the facts of this case.” Apple Inc. v. Wi-LAN Inc., 25 F.4th 960, 973 (Fed. Cir.
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`2022) (finding the plaintiff’s CEO “expressly testified that the [asserted] ’757 patent was not
`
`discussed in initial negotiations of the Doro license agreement” and that “the [asserted] ’145
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`patent was not discussed in negotiations of the Doro license agreement.”).
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`RFCyber is withholding these critical documents (without serving a log of withheld
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`documents) by claiming the documents are protected from discovery by Federal Rule of
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`Evidence 408. However, FRE 408 is not a rule against discoverability, only admissibility. Two-
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`Way Media LLC v. AT&T Inc., 2011 WL 13113724, at *3-4 (W.D. Tex. Mar. 7, 2011) (“[A]t
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`least some communications made in furtherance of licensing/settlement negotiations are
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`discoverable, as Rule 408 permits their use in some aspects of trial.”). RFCyber may later seek
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`to exclude use of FRE 408 communications at trial, but it cannot withhold them from discovery.
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`Relief Sought: Order RFCyber to produce documents concerning RFCyber’s negotiation of
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`licenses, including demand letters to other parties, which are responsive to Apple RFP Nos. 7
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`and 9.
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`RFCyber’s Position
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` RFCyber has already produced all responsive documents in its possession, custody, or
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`control. For example, RFCyber has not sent and does not have any “demand letters” to other
`
`parties.
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`Moreover, there are no “negotiation communications” as Apple contends. All
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`discussions regarding the prior licenses were conducted through outside counsel or during
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`mediation. Aside from a “Memorandum of Understanding” executed during the Samsung
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`mediation, the only documents exchanged were drafts of settlement agreements sent via email
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`
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`2
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`
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`Case 6:21-cv-00916-ADA Document 130 Filed 01/30/23 Page 3 of 6
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`between outside counsel for RFCyber and outside counsel for the other parties. RFCyber is in
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`the process of producing the Memorandum of Understanding.
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`RFCyber’s counsel explained the above when the parties met and conferred. Moreover,
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`Apple was already aware that all negotiations were exclusively conducted by attorneys from its
`
`deposition of Dr. Pan, RFCyber’s CEO (“We authorized our attorneys to conduct those certain
`
`negotiations.”).
`
`Apple has not requested any emails, much less emails from outside counsel. Nor has
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`Apple even attempted to show good cause for the production of any emails.
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`The Court should, accordingly, deny Apple’s request.
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` Relief Sought: Order Denying Apple’s Request.
`
`The Court’s Ruling:
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`It is hereby ORDERED that Apple’s motion to compel further production of documents
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`responsive to Apple’s RFP Nos. 7 and 9 is DENIED as RFCyber represents that all responsive
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`documents have been produced.
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`Issue #2: Apple’s Request For 60-Day Extension Of Case Deadlines
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`Apple’s Position
`
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`At a December 13, 2022 discovery hearing, the Court remarked that it was “giving you
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`permission in advance to go beyond the discovery deadline and push those initial dates back.”
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`12/13/2022 Hr’g Tr. at 23:7-9. Following up the Court’s remarks, Apple now requests a 60-day
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`extension of case deadlines to allow time to complete fact discovery (which currently closes on
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`January 17) and to allow additional time for the Court to rule on Apple’s motion to transfer (ECF
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`No. 93) and motion to stay pending transfer (ECF No. 109). Except for rescheduling the
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`Markman hearing to mid-September, there have been no case extensions.
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`
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`3
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`Case 6:21-cv-00916-ADA Document 130 Filed 01/30/23 Page 4 of 6
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`As of this writing, there are at least 19 depositions left to be taken during fact discovery,
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`including six depositions of third-party witnesses, several of whom are outside the United States.
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`For its part, RFCyber has noticed the depositions of 13 Apple witnesses, not including the three
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`witnesses deposed during venue discovery. Apple has produced two 30(b)(6) witnesses and one
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`30(b)(1) witness for depositions already, and offered a third 30(b)(6) witness for deposition on
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`December 13, 2002, just before he went out on paternity leave. RFCyber refused to take that
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`deposition, so now this witness (whom Apple expects to testify at trial) is now unavailable until
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`March 3, 2023.
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`In addition, RFCyber has done a number of things over the holidays that have made
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`completing fact discovery on the current schedule nearly impossible, including: (a) refusing to
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`produce key documents, as outlined in Issue Nos. 1 and 2 above; (b) adding a new RFCyber
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`witness to its initial disclosures on December 19, 2022; (c) serving three new deposition notices
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`of Apple employees on December 27, 2022; and (d) initially refusing to accept service of
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`subpoenas for two witnesses identified on RFCyber’s initial disclosures as witnesses to be
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`contacted through RFCyber’s counsel.
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`RFCyber’s counterproposal for an extension is unworkable, because it would require
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`multiple depositions to be taken after the close of fact discovery, followed by wasteful
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`supplemental expert reports. RFCyber will suffer no prejudice by this short extension, especially
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`because it is a non-practicing entity seeking only money damages.
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`Relief Sought: Extend case deadlines by 60 days to complete fact discovery and allow the Court
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`additional time to decide Apple’s Motion for Intra-District Transfer to the Austin Division (ECF
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`No. 93) and Motion to Stay Pending Transfer (ECF No. 109).
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`RFCyber’s Position
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`4
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`Case 6:21-cv-00916-ADA Document 130 Filed 01/30/23 Page 5 of 6
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`Apple goes far beyond the Court’s remarks and seeks a two-month extension to all case
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`deadlines.
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`While RFCyber offered to agree to a short extension of discovery deadlines without
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`affecting the trial schedule, Apple’s extension is far longer than required, and appears calculated
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`to delay the trial date.
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`Apple seeks to delay the case based on its own dilatory conduct. RFCyber served its
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`30(b)(6) notice on November 2, 2022. On December 1, Apple for the first time informed
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`RFCyber that Mr. Elrad would be its designee as to 18 topics, and that Mr. Elrad was available
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`on December 13. Despite RFCyber’s diligent efforts, with only 8 business days’ notice, it was
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`not able to take Mr. Elrad’s deposition on the single day Apple offered. On December 5, Apple
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`stated that Mr. Elrad would not be available any other day until after the close of discovery.
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`Apple has refused to designate any other witness for the 18 topics, despite having numerous
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`other employees who work on the relevant systems.
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`Apple’s other complaints are similarly meritless. Apple did not raise any concerns with
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`RFCyber’s production until December 20, 2022. As discussed above, RFCyber has worked to
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`produce documents since that time. Apple does not explain why it cannot make its 3 additional
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`witnesses available with more than a month’s notice. Moreover, RFCyber offered to forego
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`those witnesses’ depositions if Apple provided a witness for the 18 topics during the discovery
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`period. Finally, RFCyber has already offered deposition dates for its two additional witnesses.
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`In short, Apple seeks to be rewarded with a two-month extension for waiting until the
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`entire discovery period was nearly over to seek documents and offer deposition dates. The Court
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`should decline to do so.
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`5
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`Case 6:21-cv-00916-ADA Document 130 Filed 01/30/23 Page 6 of 6
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` Relief Sought: Extend fact discovery by 14 days, with commensurate extensions to expert
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`discovery as outlined below:
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`•
`•
`•
`•
`•
`•
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`•
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`•
`•
`•
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`Close of Fact Discovery: 1/17 to 1/31
`Opening Expert Reports: 1/24 to 2/7
`Rebuttal Expert Reports: 2/21 to 3/7
`Deposition of Oren Elrad: 3/3
`Deadline to supplement Opening Reports based on Mr. Elrad’s testimony: 3/10
`Deadline to Supplement Rebuttal Reports in response to Supplemental Opening
`Reports based on Mr. Elrad’s testimony: 3/17
`Close of Expert Discovery: 3/14 to 3/21 (up to 3/24 for experts who submitted
`supplemental rebuttal reports based on Mr. Elrad’s testimony)
`Second Meet and Confer regarding Elections: 3/21 (no change)
`Dispositive motions and Daubert motions: 3/28 (no change)
`No change to other dates.
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`The Court’s Ruling:
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`It is hereby ORDERED that all case deadlines are extended by 60 days.
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`SIGNED this 30th day of January, 2023.
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`6
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