Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 1 of 15 PageID #: 814
`
`Exhibit 1
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 2 of 15 PageID #: 815
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`ADVANCED MICRO DEVICES, INC.; and ATI
`TECHNOLOGIES ULC,
`
`Plaintiffs,
`
`v.
`
`
`TCL INDUSTRIES HOLDINGS CO., LTD.; TCL
`INDUSTRIES HOLDINGS (H.K.) LIMITED;
`TCL ELECTRONICS HOLDINGS LIMITED;
`TCL TECHNOLOGY GROUP CORPORATION;
`TTE CORPORATION; TCL HOLDINGS (BVI)
`LIMITED; TCL KING ELECTRICAL
`APPLIANCES (HUIZHOU) CO. LTD.;
`SHENZHEN TCL NEW TECHNOLOGIES CO.,
`LTD.; TCL MOKA INTERNATIONAL
`LIMITED; TCL SMART DEVICE (VIETNAM)
`CO., LTD; MANUFACTURAS AVANZADAS
`SA DE CV; TCL ELECTRONICS MEXICO, S
`DE RL DE CV; TCL OVERSEAS MARKETING
`LTD.; and REALTEK SEMICONDUCTOR
`CORP.,
`
`
`Defendants.
`
`C. A. NO. 2:22-CV-00134
`
`JURY TRIAL DEMANDED
`
`
`DISCOVERY ORDER
`
`After a review of the pleaded claims and defenses in this action, in furtherance of the
`
`management of the Court’s docket under Federal Rule of Civil Procedure 16, and after receiving
`
`the input of the parties to this action, it is ORDERED AS FOLLOWS:
`
`1.
`
`Initial Disclosures. In lieu of the disclosures required by Federal Rule of Civil Procedure
`
`26(a)(1), each party shall disclose to every other party the following information:
`
`(a)
`
`(b)
`
`the correct names of the parties to the lawsuit;
`
`the name, address, and telephone number of any potential parties;
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 3 of 15 PageID #: 816
`
`
`
`
`(c)
`
`the legal theories and, in general, the factual bases of the disclosing party’s claims
`
`or defenses (the disclosing party need not marshal all evidence that may be offered
`
`at trial);
`
`(d)
`
`the name, address, and telephone number of persons having knowledge of relevant
`
`facts, a brief statement of each identified person’s connection with the case, and a
`
`brief, fair summary of the substance of the information known by any such person;
`
`(e)
`
`any indemnity and insuring agreements under which any person or entity carrying
`
`on an insurance business may be liable to satisfy part or all of a judgment entered
`
`in this action or to indemnify or reimburse for payments made to satisfy the
`
`judgment;
`
`(f)
`
`(g)
`
`any settlement agreements relevant to the subject matter of this action; and
`
`any statement of any party to the litigation.
`
`2.
`
`Disclosure of Expert Testimony. A party must disclose to the other parties the identity
`
`of any witness it may use at trial to present evidence under Federal Rule of Evidence 702,
`
`703 or 705, and:
`
`(a)
`
`if the witness is one retained or specially employed to provide expert testimony in
`
`the case or one whose duties as the party’s employee regularly involve giving expert
`
`testimony, provide the disclosures required by Federal Rule of Civil Procedure
`
`26(a)(2)(B) and Local Rule CV-26; and
`
`(b)
`
`for all other such witnesses, provide the disclosure required by Federal Rule of Civil
`
`Procedure 26(a)(2)(C).
`
`- 2 -
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 4 of 15 PageID #: 817
`
`
`
`3.
`
`Additional Disclosures. Without awaiting a discovery request,1 each party will make the
`
`following disclosures to every other party:
`
`(a)
`
`provide the disclosures required by the Patent Rules for the Eastern District of
`
`Texas with the following modifications to P.R. 3-1 and P.R. 3-3:
`
`i.
`
`If a party claiming patent infringement asserts that a claim element is a
`
`software limitation, the party need not comply with P.R. 3-1 for those claim
`
`elements until 30 days after source code for each Accused Instrumentality
`
`is produced by the opposing party. Thereafter, the party claiming patent
`
`infringement shall identify, on an element-by-element basis for each
`
`asserted claim, what source code of each Accused Instrumentality allegedly
`
`satisfies the software limitations of the asserted claim elements.
`
`ii.
`
`If a party claiming patent infringement exercises the provisions of
`
`Paragraph 3(a)(i) of this Discovery Order, the party opposing a claim of
`
`patent infringement may serve, not later than 30 days after receipt of a
`
`Paragraph 3(a)(i) disclosure, supplemental “Invalidity Contentions” that
`
`amend only those claim elements identified as software limitations by the
`
`party claiming patent infringement.
`
`(b)
`
`produce or permit the inspection of all documents, electronically stored
`
`information, and tangible things in the possession, custody, or control of the party
`
`that are relevant to the pleaded claims or defenses involved in this action, except to
`
`
`1 The Court anticipates that this disclosure requirement will obviate the need for requests
`for production.
`
`- 3 -
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 5 of 15 PageID #: 818
`
`the extent these disclosures are affected by the time limits set forth in the Patent
`
`Rules for the Eastern District of Texas; and
`
`(c)
`
`provide a complete computation of any category of damages claimed by any party
`
`to the action, and produce or permit the inspection of documents or other
`
`evidentiary material on which such computation is based, including materials
`
`bearing on the nature and extent of injuries suffered, except that the disclosure of
`
`the computation of damages may be deferred until the time for Expert Disclosures
`
`if a party will rely on a damages expert.
`
`4.
`
`5.
`
`Protective Orders. The Court will enter the parties’ Agreed Protective Order.
`
`Discovery Limitations. The discovery in this cause is limited to the disclosures described
`
`in Paragraphs 1-3 together with: [40 interrogatories per side, 40 requests for admissions
`
`per side (unlimited for authentication), 60 hours of party depositions, depositions on
`
`written questions of custodians of business records for third parties, 60 hours of nonparty
`
`depositions per side, and 5 expert witnesses per side. “Side” means a party or a group of
`
`parties with a common interest.]
`
`Any party may later move to modify these limitations for good cause.
`
`6.
`
`Privileged Information. There is no duty to disclose privileged documents or
`
`information. However, the parties are directed to meet and confer concerning privileged
`
`documents or information after the Status Conference. By the deadline set in the Docket
`
`Control Order, the parties shall exchange privilege logs identifying the documents or
`
`information and the basis for any disputed claim of privilege in a manner that, without
`
`revealing information itself privileged or protected, will enable the other parties to assess
`
`the applicability of the privilege or protection. Any party may move the Court for an order
`
`- 4 -
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 6 of 15 PageID #: 819
`
`
`
`
`compelling the production of any documents or information identified on any other party’s
`
`privilege log. If such a motion is made, the party asserting privilege shall respond to the
`
`motion within the time period provided by Local Rule CV-7. The party asserting privilege
`
`shall then file with the Court within 30 days of the filing of the motion to compel any proof
`
`in the form of declarations or affidavits to support their assertions of privilege, along with
`
`the documents over which privilege is asserted for in camera inspection.
`
`7.
`
`Signature. The disclosures required by this Order shall be made in writing and signed by
`
`the party or counsel and shall constitute a certification that, to the best of the signer’s
`
`knowledge, information and belief, such disclosure is complete and correct as of the time
`
`it is made. If feasible, counsel shall meet to exchange disclosures required by this Order;
`
`otherwise, such disclosures shall be served as provided by Federal Rule of Civil Procedure
`
`5. The parties shall promptly file a notice with the Court that the disclosures required under
`
`this Order have taken place.
`
`8.
`
`Duty to Supplement. After disclosure is made pursuant to this Order, each party is under
`
`a duty to supplement or correct its disclosures immediately if the party obtains information
`
`on the basis of which it knows that the information disclosed was either incomplete or
`
`incorrect when made, or is no longer complete or true.
`
`9.
`
`Discovery Disputes.
`
`(a)
`
`Except in cases involving claims of privilege, any party entitled to receive
`
`disclosures (“Requesting Party”) may, after the deadline for making disclosures,
`
`serve upon a party required to make disclosures (“Responding Party”) a written
`
`statement, in letter form or otherwise, of any reason why the Requesting Party
`
`believes that the Responding Party’s disclosures are insufficient. The written
`
`- 5 -
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 7 of 15 PageID #: 820
`
`
`
`
`statement shall list, by category, the items the Requesting Party contends should be
`
`produced. The parties shall promptly meet and confer. If the parties are unable to
`
`resolve their dispute, then the Responding Party shall, within 14 days after service
`
`of the written statement upon it, serve upon the Requesting Party a written
`
`statement, in letter form or otherwise, which identifies (1) the requested items that
`
`will be disclosed, if any, and (2) the reasons why any requested items will not be
`
`disclosed. The Requesting Party may thereafter file a motion to compel.
`
`(b)
`
`An opposed discovery related motion, or any response thereto, shall not exceed 7
`
`pages. Attachments to a discovery related motion, or a response thereto, shall not
`
`exceed 5 pages. No further briefing is allowed absent a request or order from the
`
`Court.
`
`(c)
`
`Prior to filing any discovery related motion, the parties must fully comply with the
`
`substantive and procedural conference requirements of Local Rule CV-7(h) and (i).
`
`Within 72 hours of the Court setting any discovery motion for a hearing, each
`
`party’s lead attorney (see Local Rule CV-11(a)) and local counsel shall meet and
`
`confer in person or by telephone, without the involvement or participation of other
`
`attorneys, in an effort to resolve the dispute without Court intervention.
`
`(d)
`
`Counsel shall promptly notify the Court of the results of that meeting by filing a
`
`joint report of no more than two pages. Unless excused by the Court, each party’s
`
`lead attorney shall attend any discovery motion hearing set by the Court (though
`
`the lead attorney is not required to argue the motion).
`
`(e)
`
`Any change to a party’s lead attorney designation must be accomplished by motion
`
`and order.
`
`- 6 -
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 8 of 15 PageID #: 821
`
`
`
`
`(f)
`
`Counsel are directed to contact the chambers of the undersigned for any “hot-line”
`
`disputes before contacting the Discovery Hotline provided by Local Rule CV-
`
`26(e). If the undersigned is not available, the parties shall proceed in accordance
`
`with Local Rule CV-26(e).
`
`
`
`10.
`
`No Excuses. A party is not excused from the requirements of this Discovery Order because
`
`it has not fully completed its investigation of the case, or because it challenges the
`
`sufficiency of another party’s disclosures, or because another party has not made its
`
`disclosures. Absent court order to the contrary, a party is not excused from disclosure
`
`because there are pending motions to dismiss, to remand or to change venue.
`
`11.
`
`Filings. Only upon request from chambers shall counsel submit to the court courtesy
`
`copies of any filings.
`
`12.
`
`Proposed Stipulations by the Parties Regarding Discovery.
`
`a. Notwithstanding paragraph 14 of the Protective Order (Order No. 1), and paragraph 18
`
`(Order No. 14) of ITC Investigation No. 337-TA-1318, so long as: (a) this District
`
`Court action is either not stayed or any stay of the District Court action relating to the
`
`ITC proceedings will be lifted; (b) and a protective order will be entered in this District
`
`Court action (or if no protective order is entered, a similar confidentiality agreement
`
`between the parties) with provisions substantively equivalent to the provisions in the
`
`protective order (including any amendments or supplements thereto) in Investigation
`
`No. 337-TA-1318, during the pendency of the parallel ITC proceedings, and following
`
`the termination of the ITC proceedings, documents, source code, discovery responses,
`
`transcripts, testimony and exhibits thereto, pleadings or submissions (such as
`
`contentions and expert reports) and things (collectively, “Discovery”) produced in the
`
`- 7 -
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 9 of 15 PageID #: 822
`
`
`
`
`ITC proceedings, including Discovery containing information that is confidential to a
`
`third party, can be used in this District Court action to which the producing party is a
`
`party. Such documents and things need not be reproduced in this District Court action
`
`and shall be treated as if produced in this District Court action with the appropriate
`
`level of confidentiality afforded by the protective order in place in that action. The
`
`parties may subsequently negotiate and agree that information falling within certain
`
`classifications of protection under the protective order in the ITC Investigation may be
`
`subject to certain lower levels of confidentiality in the protective order entered by the
`
`District Court after the Investigation has terminated. Prior to the final termination of
`
`this Investigation, the parties shall meet and confer regarding additional provisions that
`
`should be added to this agreement, if any, to enable them to otherwise comply with
`
`their obligations under paragraph 14 of the ITC Protective Order (Order No. 1).
`
`Nothing in this provision precludes a requesting party from seeking additional
`
`discovery it deems necessary. 
`
`b. The parties agree that no electronic mail (“email”) (including attachments) need be
`
`searched or produced in response to the parties’ respective discovery requests
`
`(including interrogatories, requests for production, and requests for admission) served
`
`in this case. Email attachments maintained separately as independent documents or
`
`files may not be withheld from discovery on the basis of having been transmitted or
`
`obtained by email. For the avoidance of doubt, nothing in this Stipulation is intended
`
`to prevent, and does not prevent, a party from producing and relying on its own emails
`
`in this case, or requesting, compelling, and relying on emails produced by a third party.  
`
`- 8 -
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 10 of 15 PageID #: 823
`
`
`
`
`All documents, including any electronically stored information (“ESI”), shall be
`
`produced in accordance with Section 10 the parties’ discovery stipulation filed in ITC
`
`Investigation, 337-TA-1318, and with a Bates number assigned to this case.
`
`The following sources will not be searched under any circumstances, and as such
`
`need not be preserved for this case or any litigation or proceeding involving the same
`
`subject matter: automated disaster recovery backup systems and/or disaster recovery
`
`backup tapes; RAM or temporary files; temporary internet files, history, cache, cookies,
`
`and other on-line access data; data in metadata fields that are updated automatically such
`
`as last-opened dates; data remaining from systems no longer in use that is unintelligible on
`
`the systems in use; residual, fragmented, damaged, permanently deleted, and unallocated
`
`data; legacy computer systems, personal digital assistants; mobile devices; cell phones;
`
`USB flash drives, or the like; portable disks; voicemail systems; archived emails; Slack;
`
`and, instant messaging logs.
`
`The parties agree that non-testifying experts shall not be subject to discovery if a
`
`testifying expert is not relying on the opinions formed by or work performed by such non-
`
`testifying experts. For the avoidance of doubt, by merely citing to or relying on source
`
`code printouts that were printed out by a non-testifying expert, a testifying expert is not
`
`relying on the work of a non-testifying expert. To the extent a testifying expert is relying
`
`on the work or opinions of a non-testifying expert in forming his or her final report, trial
`
`or deposition testimony, or any opinion in this case, nothing in this Stipulation is intended
`
`to restrict discovery relating to the testifying expert’s communications, including with
`
`other experts, that identify facts or data or assumptions on which the testifying expert relies.
`
`For avoidance of doubt, the parties agree that any retained expert or consultant may not
`
`- 9 -
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 11 of 15 PageID #: 824
`
`
`
`
`share any confidential business information received under the Protective Order with any
`
`other individual not authorized under the Protective Order, which the parties agree includes
`
`any technical/non-clerical support staff of any technical consultant or expert (e.g., other
`
`recognized experts, doctoral candidates, post-docs). The parties agree non-clerical support
`
`staff of economic consultants or experts, who are performing economic analysis, need not
`
`be separately identified and subscribe to the Protective Order.
`
`Inadvertent production of privileged information shall be governed by the Federal
`
`Rules. Notwithstanding this, if a receiving party discloses to a person or an entity other
`
`than the producing party any Privileged Information that was inadvertently or
`
`unintentionally produced or disclosed by another party, such disclosure shall not be deemed
`
`a waiver of the attorney-client privilege, common-interest privilege, work product
`
`immunity, or any other applicable privilege or immunity, either as to the specific Privileged
`
`Information disclosed or produced, or as to any other Privileged Information relating
`
`thereto or on the same or related subject matter (and none of the parties will assert such a
`
`waiver). In such circumstances, after the producing party provides written notice (or notice
`
`on the record if the producing party becomes aware of the inadvertent or unintentional
`
`disclosure at a deposition or hearing) designating such Privileged Information as within an
`
`applicable privilege or immunity, the receiving party shall cooperate in good faith to
`
`protect the applicable privilege or immunity with respect to the disclosed Privileged
`
`Information, including retrieval or destruction of all copies, to the extent possible.
`
`The parties agree that material withheld from production on the ground of privilege
`
`need not be included on a privilege log. Notwithstanding this provision, Privileged
`
`- 10 -
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 12 of 15 PageID #: 825
`
`
`
`
`Information shall be included on a privilege log in the event of inadvertent production of
`
`privileged material when and if applicable in view of the applicable rules or Court orders.
`
`Any party who receives documents from a third party pursuant to a subpoena shall
`
`reproduce those documents to the other parties within three business days. To the extent
`
`feasible, the parties shall endeavor to produce or make available any source code produced
`
`by a third party, whether on a source code computer or in hard copy, within one (1) business
`
`day to each party. If a party or third party cannot meet these requirements, the parties will
`
`meet and confer regarding the production or reproduction of the documents, as appropriate.
`
`The parties agree that they shall reproduce such third party materials in fewer than three
`
`business days when necessary such as, for example, in the event such documents may be
`
`used in a deposition. To the extent feasible, all third party documents shall be produced at
`
`least 24 hours before the commencement of that third party’s deposition. Documents
`
`produced by a Third Party within 24 hours of the commencement of a deposition shall be
`
`produced to the other parties as soon as practicable. To the extent that the reproduction of
`
`the documents by
`
`the
`
`receiving party
`
`is proscribed by a protective order
`
`amendment/addenda (e.g., source code), the receiving party shall notify the other parties
`
`that such documents have been produced by the third party and make such documents
`
`available pursuant to the terms of the protective order.
`
`The parties agree that a party scheduling a deposition of any third-party will use
`
`best efforts to notify the other parties at least 10 business days before any deposition takes
`
`place or to involve the other parties in discussions with the third party regarding deposition
`
`scheduling. The parties also agree that any third-party witnesses appearing at a deposition
`
`may be questioned by all parties to this case, except that the parties will make best efforts
`
`- 11 -
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 13 of 15 PageID #: 826
`
`
`
`
`not to duplicate other parties’ questioning. This agreement does not preclude a party from
`
`subpoenaing its own third-party deposition on the same third-party.
`
`In the event a party seeks to serve any materials in a hard copy—e.g., documents,
`
`physical media, or source code—the parties will coordinate in advance to identify the
`
`proper recipient and address for any such materials.
`
`When the size of the file containing any such document is larger than approximately
`
`15 MB, and cannot be practicably transmitted in a smaller zipped file, same day service of
`
`the documents in electronic form shall be made via secure file transfer over FTP, extranet,
`
`or other secure file sharing and transfer service, with access credentials served by email or
`
`hand delivery of electronic media.2 Parties may also serve hard copies of documents if
`
`necessary for timely service provided, however, that the serving parties shall
`
`contemporaneously notify the parties, via electronic service on the designated email
`
`addresses, of the hard copy service, and further electronic copies of those documents also
`
`shall be provided to the parties. As noted, if a party will serve materials via hand delivery,
`
`the parties will coordinate to identify the proper recipient and address for such materials in
`
`recognition that offices may be closed and attorneys may be working remotely during
`
`COVID.
`
`If a party inadvertently fails to designate information as confidential pursuant to the
`
`Protective Order in this case, that party shall promptly notify the other parties that such
`
`information should have been designated confidential and should be treated as confidential
`
`going forward. Where appropriate, the designating party shall provide replacement copies
`
`
`2 In such circumstances, the document to which such voluminous attachments relate shall
`still be served by email as provided.
`
`- 12 -
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 14 of 15 PageID #: 827
`
`
`
`
`of such materials bearing the appropriate confidentiality designation. The parties agree that
`
`any inadvertent failure to designate information with one of the designations provided for
`
`in the Protective Order shall not be deemed a waiver of, nor prejudice to, any applicable
`
`designation with respect to the confidentiality of such information or document, provided
`
`that the party notifies the receiving party(ies) in writing promptly after discovery of such
`
`inadvertent failure to designate.
`
`Upon being notified that the information was inadvertently not designated as
`
`confidential, the receiving parties shall take reasonable steps to retrieve the information from
`
`any recipients of such information who previously had been provided the confidential
`
`information and who are not authorized to access such confidential information under the
`
`Protective Order. The receiving parties shall return or certify the secure destruction of all
`
`copies of the originally improperly designated materials. If the receiving party has reason
`
`to believe that the information has been disseminated to persons from whom it has not been
`
`able to retrieve the information through reasonable steps, it shall inform the producing party
`
`of that fact.
`
`No party shall argue that another party is in breach of the Protective Order for any
`
`use of confidential information during the time that the information was not designated as
`
`confidential, unless it was clear from the face of such information that its lack of confidential
`
`designation was mistaken.
`
`Deposition testimony may be retroactively designated as confidential (1) if
`
`retroactively designated within ten business days after the deposition, (2) if the parties
`
`consent, or (3) if the Court or other body with authority so orders.
`
`- 13 -
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 54-1 Filed 08/26/22 Page 15 of 15 PageID #: 828
`
`
`
`
`Counsel for a receiving party may request permission to provide a redacted, non-
`
`confidential version of a confidential submission/paper from a designating party(ies) to the
`
`receiving party, and shall provide a draft redacted version of such submission/paper to the
`
`designating party(ies) for approval as part of its request for permission. The designating
`
`party(ies) shall endeavor to respond within five (5) business days to such requests by either:
`
`(i) confirming that the redacted version does not have the designating party’s(ies’)
`
`confidential information; or (ii) identifying the portion(s) of the redacted version the
`
`designating party(ies) asserts to contain its confidential information.
`
`To the extent possible, each confidential submission/paper shall identify in the
`
`confidentiality header the party and/or third party supplier(s) that provided Confidential
`
`Information contained in that submission/paper.
`
`13.
`
`Standing Orders. The parties and counsel are charged with notice of and are required to
`
`fully comply with each of the Standing Orders of this Court. Such are posted on the Court’s
`
`website at http://www.txed.uscourts.gov/?q=court-annexed-mediation-plan. The substance
`
`of some such orders may be included expressly within this Discovery Order, while others
`
`(including the Court’s Standing Order Regarding Protection of Proprietary and/or
`
`Confidential Information to Be Presented to the Court During Motion and Trial Practice)
`
`are incorporated herein by reference. All such standing orders shall be binding on the
`
`parties and counsel, regardless of whether they are expressly included herein or made a
`
`part hereof by reference.
`
`
`
`
`
`- 14 -
`
`