Maxell Ltd. v. Apple Inc
5:19-cv-00036
E.D. Tex.Apr 24, 2020Background
- Maxell sued Apple alleging infringement of 10 patents covering mobile-device features (cameras, navigation, authentication, telecom, streaming, power management, Do Not Disturb, smartwatch integration) and alleged Apple had known of the patents since 2013.
- Maxell moved to compel broad discovery: technical documents (schematics, block diagrams, datasheets, testing protocols, SoC manuals, software/hardware design guides), non-source-code documents that Apple placed on source-code review computers, a fuller answer to Interrogatory No. 9, eleven additional license agreements, marketing/owner surveys, and certain prior-litigation materials.
- Apple responded that it performed reasonable searches and produced large document batches (including late productions), disputed many categorical complaints, and sought costs for alleged meet-and-confer failures. The parties exchanged supplemental reports and additional productions during briefing.
- Key discovery disputes concerned completeness of schematics/specs, third-party datasheets, testing protocols (including SAR reports), SoC user manuals and design guides, production format and the placement of non-source-code docs on source-code computers, additional license agreements, and prior-litigation materials.
- The magistrate judge granted the motion in part and denied it in part, ordered discrete additional productions (including certain license agreements and missing SoC manuals/specs in Apple’s possession), denied several broad or disproportionate demands (e.g., exhaustive searches for all historical datasheet versions, SAR reports, native spreadsheet production), and denied Apple’s request for fees and costs.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Schematics and block diagrams | Apple failed to produce schematics or produced incomplete schematics for many accused products | Apple already produced schematics, linked productions to model numbers, and conducted reasonable searches | Schematics found were produced/linked; Apple must produce any remaining schematics in its possession; Apple to perform additional targeted search and produce located Qualcomm design specs within 10 days; broad demands denied |
| Datasheets and requirements specifications | Apple produced truncated or short versions and omitted complete vendor datasheets and versions | Apple produced what it located; many complete third-party datasheets are held by vendors, not Apple | Apple must produce any remaining specs/datasheets in its possession; denied further broad searches for every historical version as disproportionate |
| Testing documents, incl. FCC/SAR reports | Testing protocols/results (including SAR evaluation reports) are relevant to infringement issues | Apple produced testing documents it located; SAR reports are FCC safety tests and not relevant to infringement | Production of testing docs required only to the extent they exist and were located; SAR Evaluation Reports not relevant or proportional and request denied |
| SoC user manuals and micro-architecture specs; technical design guides | Many SoC user manuals and micro-architecture specs are missing | Apple searched reasonably and produced materials it found | Granted for the cited SoCs: Apple must produce any missing user manuals/specs for those SoCs immediately |
| Non-source-code documents placed on source-code review computers and native-format spreadsheets | Apple improperly restricted access by putting >1,000 non-source-code docs on source-code computers and refused to provide native spreadsheets | Documents were kept with source code in ordinary course; Apple re-produced non-source-code docs outside source-code environment and in PDF; Protective Order protects code and descriptions | Dispute largely resolved — Apple produced non-source-code docs outside source-code computers; but Maxell’s demand for third production in native spreadsheet format is denied as contrary to Protective Order and disproportionate |
| Additional license agreements, forecasts, marketing surveys, prior-litigation documents | Requests for 11 additional licenses, forecasts beyond Q1 2020, surveys, and certain prior-litigation damages materials are relevant | Apple produced many licenses and surveys, will update forecasts, and argues additional licenses or prior-litigation materials are cumulative or not relevant | Apple must produce the additional license agreements identified by Maxell within ten days; forecast and survey issues are resolved by Apple’s representations; requests for expansive prior-litigation materials (e.g., broad Caltech materials) denied as not proportional |
Key Cases Cited
- Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340 (1978) (discovery relevance construed broadly)
- Hickman v. Taylor, 329 U.S. 495 (1947) (scope of discovery and work-product principles)
- Crawford-El v. Britton, 523 U.S. 574 (1998) (trial court discretion to tailor discovery)
- Samsung Electronics Am., Inc. v. Yang Kun Chung, 321 F.R.D. 250 (N.D. Tex. 2017) (post-amendment Rule 26 proportionality discussion)
- Carr v. State Farm Mut. Auto. Ins. Co., 312 F.R.D. 459 (N.D. Tex. 2015) (scope and burdens of proportionality inquiry)
- Export Worldwide, Ltd. v. Knight, 241 F.R.D. 259 (W.D. Tex. 2006) (burden on moving party to show relevance)
- Merritt v. Int'l Bhd. of Boilermakers, 649 F.2d 1013 (5th Cir. 1981) (expenses award for successful motions to compel unless opposition substantially justified)