Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 1 of 77
`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 1 of 77
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`EXHIBIT G
`EXHIBIT G
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`

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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 2 of 77
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`Ocean Semiconductor LLC,
`
`
`
`
`Plaintiff,
`
`
`v.
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`MediaTek Inc. and MediaTek USA Inc.
`(“MediaTek”),
`Defendant.
`
`
`
`
`Civil Action No.: 6:20-cv-1210-ADA
`
`
`
`
`
`
`
`DEFENDANT MEDIATEK’S RESPONSES TO PLAINTIFF’S FIRST SET OF
`REQUESTS FOR PRODUCTION OF DOCUMENTS (NOS. 1-42)
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`Pursuant to Rules 34 of the Federal Rules of Civil Procedure and the Local Rules,
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`Defendants MediaTek Inc. and MediaTek USA Inc. (collectively, “MediaTek”) hereby object
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`and respond to Plaintiff Ocean Semiconductor LLC’s (“Ocean”) First Set of Requests for
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`Production of Documents Nos. 1-42 (the “Requests”) as follows.
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`GENERAL OBJECTIONS AND QUALIFICATIONS
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`The general objections and qualifications listed below are hereby incorporated by
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`reference and made part of MediaTek’s response to every request, regardless of whether they are
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`or are not reiterated within the specific responses below.
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`1.
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`MediaTek bases its objections and responses upon information presently available
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`and will further supplement or amend these objections and responses as discovery progresses.
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`Discovery is ongoing and MediaTek is still pursuing its investigation and analysis of the facts
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`and law pertaining to this lawsuit and has not yet completed such investigation and analysis.
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`2.
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`MediaTek responds to each Request as it interprets and understands each Request
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`with respect to the issues in this lawsuit. If Ocean asserts a different interpretation of any
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 3 of 77
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`Request, MediaTek reserves the right to supplement or amend its responses or objections.
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`Ocean’s Requests also contain terms or phrases with specific legal significance. Neither
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`MediaTek’s objections nor responses, nor the production of documents or things in response to
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`any request, are an admission or indication that such documents are relevant to any legal theory,
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`or that any of the legal terms used have any applicability in their legal sense to any documents or
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`things produced by MediaTek in response to the Requests. MediaTek objects to each Request
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`that calls for legal conclusions or includes factual characterizations by Ocean. By responding,
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`MediaTek does not accept or admit to the truth or accuracy of Ocean’s factual characterizations.
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`3.
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`Any response that indicates that MediaTek will produce documents or things
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`should not be construed to mean that responsive documents in fact exist; only that, if such
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`relevant, non-privileged, non-objectionable documents or things exist, are in MediaTek’s
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`possession, custody, or control, and are located after a reasonable search of the location or
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`locations where responsive documents or things are likely to be located, such documents or
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`things will be produced in a timely manner.
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`4.
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`MediaTek objects to the Requests, and the Definitions and Instructions that
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`accompany them, to the extent that they seek to impose obligations and demands on MediaTek
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`greater than or more extensive than those required by the Federal Rules of Civil Procedure, the
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`Local Rules of the United States District Court for the Western District of Texas, or any other
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`applicable authority.
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`5.
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`MediaTek objects to each Request that seeks production of “any,” “each,”
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`“every,” or “all” documents or things when a subset of documents or things will suffice to
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`provide the requested information. The burden or expense of collecting the documents or things
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`called for by any such Request outweighs its likely benefit.
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`2
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 4 of 77
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`6.
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`MediaTek objects to each Request that calls for documents or things that are not
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`within the possession, custody, or control of MediaTek.
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`7.
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`MediaTek objects to each Request, and the Definitions and Instructions that
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`accompany it, that requests that MediaTek creates or produces documents or things that
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`MediaTek does not maintain in the ordinary course of its business, or that MediaTek create or
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`produce documents or things in a particular format or at a particular level of detail that MediaTek
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`does not maintain in the ordinary course of its business.
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`8.
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`MediaTek objects to each Request that calls for production of documents or
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`things that are publicly available or equally available to Ocean, and therefore are of no greater
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`burden for Ocean to obtain than for MediaTek to obtain.
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`9.
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`MediaTek objects to each Request that seeks documents or things that MediaTek
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`is not permitted to disclose pursuant to confidentiality obligations to third parties or by court
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`order. To the extent any such documents or things are responsive, relevant, and non-privileged,
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`MediaTek will produce that information and/or those documents in accordance with the Court’s
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`standing protective order and after complying with its obligations to third parties and/or court
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`orders.
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`10. MediaTek objects to each Request that seeks documents or things protected from
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`disclosure by the attorney-client privilege, work product doctrine, common interest privilege, or
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`any other privilege or immunity against disclosure (collectively, as used here, “privilege”).
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`Nothing contained in these responses should be considered a waiver of any privilege. MediaTek
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`does not intend to produce documents or things that would divulge any privileged information.
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`Any such disclosure is inadvertent and shall not be deemed a waiver of any applicable privilege.
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`3
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 5 of 77
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`11. MediaTek objects to each Request as it is either (1) not limited as to time, in
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`which case it is overly broad and unduly burdensome or (2) necessarily seeks information and
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`documents that encompass time periods not relevant to the above-captioned action. Patentees
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`may not recover under § 271(g) for any product in the possession of or in transit to the alleged
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`infringer before notice of infringement. 35 U.S.C. § 287(b). Any Request seeking Information
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`before October 2020, when Ocean sent its first demand letter to MediaTek, is therefore not
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`relevant to any claim or defense in this action.
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`12. MediaTek objects to each Request, and the Definitions and Instructions that
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`accompany them, that alters the plain meaning of any specific Request, on the ground that such
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`alteration renders the request vague, ambiguous, overly broad, and/or unduly burdensome.
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`13. MediaTek objects to the Requests as premature to the extent that they call for
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`documents or things that are the subject of expert testimony when the parties have not yet
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`engaged in expert discovery or exchanged expert reports. MediaTek will produce such
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`documents or things, if appropriate, in accordance with the applicable schedule in this case
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`and/or any discovery and procedural stipulation between the parties governing this Action.
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`MediaTek objects to these Requests to the extent they prematurely seek information related to
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`MediaTek’s contentions in this Action.
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`14. MediaTek objects to the Requests as unduly burdensome and not proportional to
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`the to the needs of the case (considering the importance of the issues at stake in the action, the
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`parties’ access to relevant information, the parties’ resources, the importance of the discovery in
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`resolving the issues, and whether the burden or expense of the proposed discovery outweighs its
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`likely benefit) to the extent they call for the search and production of email or other
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`electronically stored information (ESI). Ocean has not shown good cause for any such request or
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`4
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 6 of 77
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`proposed a procedure identifying custodians and search terms it believes MediaTek should
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`search as required by the Court’s Order Governing Proceedings. MediaTek
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`15. MediaTek objects to the definition of “Plaintiff,” “Ocean Semiconductor,”
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`“Ocean,” and to any Request incorporating those terms on the grounds that they encompass
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`entities or individuals other than plaintiff Ocean Semiconductor LLC because i) they seek
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`information more readily available to Ocean, and ii) they seek information that is not
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`proportional to the needs of the case, considering the importance of the issues at stake in the
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`action, the parties’ access to relevant information, the parties’ resources, the importance of the
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`discovery in resolving the issues, and whether the burden or expense of the proposed discovery
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`outweighs its likely benefit.
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`16. MediaTek objects to the definition of “MediaTek,” “Defendants,” “You,” “Your,”
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`and to any Request incorporating those terms on the grounds that they encompass entities or
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`individuals over whom MediaTek does not have control and over whose documents MediaTek
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`does not have possession, custody, or control. MediaTek Inc. and MediaTek USA Inc. provide
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`these responses exclusively on their own behalf and do not purport to speak for others.
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`17. MediaTek objects to the definition of “Other Defendant,” “Other Defendants,”
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`and to any Request incorporating those terms on the grounds that they encompass entities or
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`individuals other than the named defendants in related district court litigations (1:20-cv-12310
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`(D. Mass.), 1:20-cv-12311 (D. Mass.), 4:20-cv-00991 (E.D. Tex.), 6:20-cv-01211 (W.D. Tex.),
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`6:20-cv-01212 (W.D. Tex.), 6:20-cv-01213 (W.D. Tex.), 6:20-cv-01214 (W.D. Tex.), 6:20-cv-
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`01215 (W.D. Tex.), 6:20-cv-01216 (W.D. Tex.)) and are therefore not proportional to the needs
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`of the case, considering the importance of the issues at stake in the action, the parties’ access to
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`5
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 7 of 77
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`relevant information, the parties’ resources, the importance of the discovery in resolving the
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`issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.
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`18. MediaTek objects to the definition of “Infringing Instrumentalities” and any
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`Request incorporating this term on the grounds that it is vague, ambiguous, and seeks
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`information that is not reasonably calculated to lead to the discovery of admissible evidence. The
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`definition of “Infringing Instrumentalities” includes “similar systems, products, devices, and
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`integrated circuits including, for example, products manufactured at 16nm technology node.”
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`However, Ocean’s Requests do not explain
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`in what way
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`the unnamed “Infringing
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`Instrumentalities” are to be similar to the enumerated ones. Further, Ocean’s deficient
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`Infringement Contentions did not provide notice of infringement theories as to any MediaTek
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`products, nor has Ocean shown how they are “reasonably similar” to each other, if at all. See
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`Honeywell Int’l, Inc. v. Acer Am. Corp., 655 F. Supp. 2d 650, 656 (E.D. Tex. 2009) (“[Plaintiff]
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`must demonstrate that its PICs gave [defendant] notice of a specific theory of infringement and
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`that the products for which it seeks discovery operate in a manner reasonably similar to that
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`theory”). Ocean’s Infringement Contentions merely indiscriminately name all of the products
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`listed on MediaTek’s website without tying the products to fabrication by a specific foundry or
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`demonstrating any evidence that those products are fabricated using the ASML, PDF, and
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`Applied Materials tools accused of performing the asserted claims. It would be unduly
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`burdensome and not proportionate to the needs of the case for MediaTek to produce documents
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`relating to each of its products, especially where Ocean has not tied those products to the alleged
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`infringement in this case and MediaTek will not do so. MediaTek will not provide information
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`about any systems, products, devices, or integrated circuits for which Ocean has not provided
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`reasonable notice of corresponding infringement allegations. MediaTek also objects to this
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`6
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 8 of 77
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`definition as vague and ambiguous in that includes items that are not MediaTek product numbers
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`or cannot be reasonably associated with MediaTek product numbers, including Helio G, Helio A,
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`Helio P, Helio X, mid-range 4G devices, Google Mobile Services express devices, MiraVision,
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`and MT81XX SPI.
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`19. MediaTek objects
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`to
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`the definition of “LineWorks” and any Request
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`incorporating this term on the grounds that Ocean’s Infringement Contentions did not provide
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`notice of infringement theories as to any LineWorks systems and therefore it is vague,
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`ambiguous, and seeks information that is not reasonably calculated to lead to the discovery of
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`admissible evidence. MediaTek will not provide information about any systems, products,
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`devices, or integrated circuits for which Ocean has not provided reasonable notice of
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`corresponding infringement allegations.
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`20. MediaTek objects to the definition of “ASML Manufacturing Equipment” and
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`any Request incorporating this term to the extent it includes “similar lithography, metrology, and
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`inspection systems designed, developed, assembled, and/or manufactured by ASML (e.g.,
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`systems with similar technical and functional features).” Ocean’s deficient Infringement
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`Contentions did not provide notice of infringement theories as to unnamed ASML products, nor
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`has Ocean shown how they are “reasonably similar” to the TWINSCAN and YieldStar, if at all.
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`See Honeywell Int’l, 655 F. Supp.2d at 656. Therefore, this term is vague, ambiguous, and seeks
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`information that is not reasonably calculated to lead to the discovery of admissible evidence.
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`MediaTek will not provide information about any systems, products, devices, or integrated
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`circuits for which Ocean has not provided reasonable notice of corresponding infringement
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`allegations.
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`7
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 9 of 77
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`21. MediaTek objects to the definition of “AMAT Manufacturing Equipment” and
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`any Request incorporating this term to the extent it includes “similar APC/FDC and/or factory
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`automation systems designed, developed, assembled, and/or manufactured by Applied Materials
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`(e.g., systems with similar technical and functional features).” Ocean’s deficient Infringement
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`Contentions did not provide notice of infringement theories as to unnamed Applied Materials
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`products, nor has Ocean shown how they are “reasonably similar” to E3 and SmartFactory, if at
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`all. See Honeywell Int’l, 655 F. Supp.2d at 656. Therefore, this term is vague, ambiguous, and
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`seeks information that is not reasonably calculated to lead to the discovery of admissible
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`evidence. MediaTek will not provide information about any systems, products, devices, or
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`integrated circuits for which Ocean has not provided reasonable notice of corresponding
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`infringement allegations.
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`22. MediaTek objects to the definition of “camLine Manufacturing Equipment” and
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`any Request incorporating this term on the grounds that Ocean’s Infringement Contentions did
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`not provide notice of infringement theories as to any camLine Manufacturing Equipment.
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`Therefore, this term is vague, ambiguous, and seeks information that is not reasonably calculated
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`to lead to the discovery of admissible evidence. MediaTek will not provide information about
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`any systems, products, devices, or integrated circuits for which Ocean has not provided
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`reasonable notice of corresponding infringement allegations.
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`23. MediaTek objects to the definition of “PDF Manufacturing Equipment” and any
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`Request incorporating this term to the extent it includes “similar analytics systems designed,
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`developed, assembled, and/or manufactured by PDF Solutions (e.g., systems with similar
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`technical and functional features).” Ocean’s deficient Infringement Contentions did not provide
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`notice of infringement theories as to unnamed PDF products, nor has Ocean shown how they are
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 10 of 77
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`“reasonably similar” to Exensio, if at all. See Honeywell Int’l, 655 F. Supp.2d at 656. Therefore,
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`this term is vague, ambiguous, and seeks information that is not reasonably calculated to lead to
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`the discovery of admissible evidence. MediaTek will not provide information about any systems,
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`products, devices, or integrated circuits for which Ocean has not provided reasonable notice of
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`corresponding infringement allegations.
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`24. MediaTek objects to the definition of “Manufacturing Equipment” and any
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`Request
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`incorporating
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`this
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`term
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`including because
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`it
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`incorporates
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`the
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`terms ASML
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`Manufacturing Equipment, AMAT Manufacturing Equipment, camLine Manufacturing
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`Equipment, and PDF Manufacturing Equipment and MediaTek incorporates those objections as
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`if set forth herein. MediaTek further objects to the definition of “Manufacturing Equipment” to
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`the extent it includes “similar in-house, proprietary, and/or third-party equipment and/or tool
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`(e.g., systems with technical and functional features similar to any ASML Manufacturing
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`Equipment, AMAT Manufacturing Equipment, camLine Manufacturing Equipment, and/or PDF
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`Manufacturing Equipment) designed, developed, assembled, manufactured, used, utilized,
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`installed, implemented, and/or deployed by You for the manufacture, fabrication, and/or
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`assembly of any and all Infringing Instrumentalities.” Ocean’s deficient Infringement
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`Contentions did not provide notice of infringement theories as to unnamed ASML, Applied
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`Materials, camLine, or PDF products, nor has Ocean shown how these unnamed products are
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`“reasonably similar” to the TWINSCAN, YieldStar, E3, SmartFactory, or Exensio, if at all. See
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`Honeywell Int’l, 655 F. Supp.2d at 656. Therefore, this term is vague, ambiguous, and seeks
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`information that is not reasonably calculated to lead to the discovery of admissible evidence.
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`MediaTek will not provide information about any systems, products, devices, or integrated
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`9
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 11 of 77
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`circuits for which Ocean has not provided reasonable notice of corresponding infringement
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`allegations.
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`25. MediaTek objects to the definition of “Equipment Manufacturers” and any
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`Request incorporating this term to the extent it encompasses any manufacturer of Manufacturing
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`Equipment Ocean did not include in its Complaint or Infringement Contentions and is therefore
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`vague, ambiguous, and seeks information that is not reasonably calculated to lead to the
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`discovery of admissible evidence. MediaTek will not provide information about any systems,
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`products, devices, or integrated circuits for which Ocean has not provided reasonable notice of
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`corresponding infringement allegations.
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`26. MediaTek objects to the definition of “Third-Party Manufacturers” and any
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`Request incorporating this term to the extent it encompasses any third-party manufacturer of
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`Infringing Instrumentalities Ocean did not include in its Complaint or Infringement Contentions
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`and is therefore vague, ambiguous, and seeks information that is not reasonably calculated to
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`lead to the discovery of admissible evidence. MediaTek will not provide information about any
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`systems, products, devices, or integrated circuits for which Ocean has not provided reasonable
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`notice of corresponding infringement allegations.
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`27. MediaTek objects to the definition of “MES” and any Request incorporating this
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`term to the extent it encompasses any systems Ocean did not include in its Complaint or
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`Infringement Contentions and is therefore vague, ambiguous, and seeks information that is not
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`reasonably calculated to lead to the discovery of admissible evidence. MediaTek will not provide
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`information about any systems, products, devices, or integrated circuits for which Ocean has not
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`provided reasonable notice of corresponding infringement allegations.
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`10
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 12 of 77
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`28. MediaTek objects to the definition of “Prior Art” and to any Request
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`incorporating that term to the extent it calls for a legal conclusion. MediaTek will interpret “prior
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`art” consistently with the requirements set forth in Title 35 of the United States Code.
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`29. MediaTek objects to the definition of “Identify” and “Identity,” and to any
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`Request incorporating these terms, as vague, ambiguous, overly broad, and unduly burdensome,
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`and to the extent that they purport to create obligations that exceed the scope of permissible
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`discovery in that they seek information that i) is not proportional to the needs of the case,
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`considering the importance of the issues at stake in the action, the parties’ access to relevant
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`information, the parties’ resources, the importance of the discovery in resolving the issues, and
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`whether the burden or expense of the proposed discovery outweighs its likely benefit, and ii) is
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`not relevant to any party’s claim or defense.
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`30. MediaTek objects to the definition of “Describe,” and to any Request
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`incorporating this term, as vague, ambiguous, overly broad, and unduly burdensome, and to the
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`extent that they purport to create obligations that exceed the scope of permissible discovery in
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`that they seek information that i) is not proportional to the needs of the case, considering the
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`importance of the issues at stake in the action, the parties’ access to relevant information, the
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`parties’ resources, the importance of the discovery in resolving the issues, and whether the
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`burden or expense of the proposed discovery outweighs its likely benefit, and ii) is not relevant
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`to any party’s claim or defense.
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`31. MediaTek objects to the definition of “Relate to,” “Related to,” “Relating to,”
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`“Concerning,” and to any Request incorporating any of these terms, as vague, ambiguous, overly
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`broad, and unduly burdensome, and to the extent that they are meant to be different from,
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 13 of 77
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`inconsistent with, or broader than their plain meaning. Any such definition is inherently vague,
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`ambiguous, misleading, and unreasonable.
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`32. MediaTek incorporates by reference its General Objections and Qualifications as
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`set forth in MediaTek’s Responses to Plaintiff’s First Set of Interrogatories (Nos. 1-15).
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`OBJECTIONS AND RESPONSES TO REQUESTS
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`REQUEST FOR PRODUCTION NO. 1:
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`Documents sufficient
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`to
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`identify all Your products,
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`including
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`the Infringing
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`Instrumentalities, that are/were manufactured, fabricated, and/or assembled by, or on behalf of,
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`You, Third-Party Manufacturer(s), and/or Equipment Manufacturer(s) through the use,
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`utilization, installation, implementation, and/or deployment of any and all Manufacturing
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`Equipment since December 2014, including the identification of all versions and models of any
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`such product.
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`RESPONSE TO REQUEST FOR PRODUCTION NO. 1:
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`MediaTek incorporates its General Objections and Qualifications as set forth above.
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`MediaTek also objects to this Request to the extent it seeks documents not reasonably available
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`to MediaTek. Specifically, this request seeks documents in the possession of Third-Party
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`Manufacturers and Equipment Manufacturers. MediaTek further objects to this Request as
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`overly broad, unduly burdensome, and beyond the scope of permissible discovery to the extent
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`that it seeks documents related to an irrelevant time period. In particular, this Request seeks
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`documents relating to documents on MediaTek products since December 2014, including
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`information before October 2020, when Ocean sent its first demand letter to MediaTek.
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`Patentees may not recover under § 271(g) for any product in the possession of or in transit to the
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`alleged infringer before notice of infringement. 35 U.S.C. § 287(b). Documents relating to
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 14 of 77
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`MediaTek products before October 2020 are therefore not relevant to any claim or defense in this
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`action. MediaTek further objects to this Request because it seeks information about
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`Instrumentalities that were not accused in this action, either in Ocean’s Complaint or its
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`Infringement Contentions. MediaTek will not provide information about these unaccused
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`instrumentalities as they are not relevant to any claim or defense in this action. MediaTek
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`further objects to this Request because it seeks information relating to MediaTek’s activities
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`outside of the United States. U.S. patent law “makes no claim to extraterritorial effect.”
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`Deepsouth Packing Co. v. Laitram Corp., 406 U. S. 518, 531 (1972). Conversely, territoriality is
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`satisfied when and only when one of the domestic actions of making, using, selling, or importing
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`is proved to be present. Carnegie Mellon Univ. v. Marvel Tech. Grp., 807 F.3d 1283, 1306 (Fed.
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`Cir. 2015).
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`Subject to and without waiving the General Objections and Qualifications, as well as the
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`specific objections above, and to the extent MediaTek understands this request, MediaTek asserts
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`that it does not have responsive, relevant, and non-privileged documents within its possession,
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`custody, or control. MediaTek is unable to identify products pursuant to Request for Production
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`No. 1 because it does not manufacture, fabricate, or assemble any product itself, nor does it have
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`knowledge as to what equipment is involved in the manufacturing, fabrication, or assembly of its
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`products.
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`Further, Ocean’s Infringement Contentions merely indiscriminately name all of the
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`products listed on MediaTek’s website without tying the products to fabrication by a specific
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`foundry or demonstrating any evidence that those products are fabricated using the ASML, PDF,
`
`and Applied Materials tools accused of performing the asserted claims. It would be unduly
`
`burdensome and not proportionate to the needs of the case for MediaTek to produce documents
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 15 of 77
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`relating to each of its products, especially where Ocean has not tied those products to the alleged
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`infringement in this case and MediaTek will not do so. MediaTek will not provide information
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`about any systems, products, devices, or integrated circuits for which Ocean has not provided
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`reasonable notice of corresponding infringement allegations. MediaTek is continuing to
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`investigate the subject matter of this Request and will supplement, amend, or revise its response
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`to this Request pursuant to Fed. R. Civ. P. 26(e) or as may be warranted in light of ongoing
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`discovery, to the extent any non-privileged, relevant documents responsive to this Request are
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`located.
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`REQUEST FOR PRODUCTION NO. 2:
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`
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`Documents relating to the use, sale, or offer for sale within the United States, and/or
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`importation into the United States, of each product identified in Request for Production No. 1,
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`since December 2014, including the identification of all versions and models of any such
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`product.
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`RESPONSE TO REQUEST FOR PRODUCTION NO. 2:
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`MediaTek incorporates its General Objections and Qualifications as set forth above.
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`MediaTek further objects to this Request to the extent it impermissibly shifts Ocean’s burden of
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`proof regarding domestic action of infringement to MediaTek. MediaTek also objects to this
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`Request to the extent it seeks documents not reasonably available to MediaTek. Specifically,
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`this request seeks documents in the possession of Third-Party Manufacturers, Equipment
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`Manufacturers, or MediaTek customers. MediaTek further objects to this Request as overly
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`broad, unduly burdensome, and beyond the scope of permissible discovery to the extent that it
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`seeks documents related to an irrelevant time period. In particular, this Request seeks documents
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`relating to documents on MediaTek products since December 2014, including information before
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`
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`14
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 16 of 77
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`October 2020, when Ocean sent its first demand letter to MediaTek. Patentees may not recover
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`under § 271(g) for any product in the possession of or in transit to the alleged infringer before
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`notice of infringement. 35 U.S.C. § 287(b). Documents relating to MediaTek products before
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`October 2020 is therefore not relevant to any claim or defense in this action. MediaTek further
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`objects to this Request because it seeks information about Instrumentalities that were not accused
`
`in this action, either in Ocean’s Complaint or its Infringement Contentions. MediaTek will not
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`provide information about these unaccused instrumentalities as they are not relevant to any claim
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`or defense in this action. MediaTek further objects to this Request because it seeks information
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`relating to MediaTek’s activities outside of the United States. U.S. patent law “makes no claim
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`to extraterritorial effect.” Deepsouth Packing Co. v. Laitram Corp., 406 U. S. 518, 531 (1972).
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`Conversely, territoriality is satisfied when and only when one of the domestic actions of making,
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`using, selling, or importing is proved to be present. Carnegie Mellon Univ. v. Marvel Tech.
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`Grp., 807 F.3d 1283, 1306 (Fed. Cir. 2015).
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`Subject to and without waiving the General Objections and Qualifications, as well as the
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`specific objections above, and to the extent MediaTek understands this request, MediaTek asserts
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`that it does not have responsive, relevant, and non-privileged documents within its possession,
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`custody, or control. MediaTek is unable to identify products pursuant to Request for Production
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`No. 1 because it does not manufacture, fabricate, or assemble any product itself, nor does it have
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`knowledge as to what equipment is involved in the manufacturing, fabrication, or assembly of its
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`products. MediaTek is continuing to investigate the subject matter of this Request and will
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`supplement, amend, or revise its response to this Request pursuant to Fed. R. Civ. P. 26(e) or as
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`may be warranted in light of ongoing discovery, to the extent any non-privileged, relevant
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`documents responsive to this Request are located.
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`
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`15
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`Case 6:20-cv-01214-ADA Document 54-8 Filed 02/16/22 Page 17 of 77
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`REQUEST FOR PRODUCTION NO. 3:
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`
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`Documents sufficient to identify any and all Third-Party Manufacturers contracted,
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`engaged, retained, instructed, or requested by, or on behalf of, You to manufacture, fabricate,
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`and/or assemble those products identified in Request for Production No. 1, since December
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`2014, including the location of any and all manufacturing and/or fabrication facilities where such
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`products are/were manufactured, fabricated, and/or assembled.
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`RESPONSE TO REQUEST FOR PRODUCTION NO. 3:
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`MediaTek incorporates its General Objections and Qualifications as set forth above.
`
`MediaTek also objects to this Request as overly broad, unduly burdensome, and beyond the
`
`scope of permissible discovery to the extent that it seeks documents related to an irrelevant time
`
`period. In particular, this Request seeks documents relating to Third-Party Manufacturers since
`
`December 2014, including information before October 2020, when Ocean sent its first demand
`
`letter to MediaTek. Patentees may not recover under § 271(g) for any product in the possession
`
`of or in transit to the alleged infringer before notice of infringement. 35 U.S.C. § 287(b). Third-
`
`Party Manufacturers information before October 2020 is therefore not relevant to any claim or
`
`defense in this action. MediaTek further objects to this Request because it seeks information
`
`about Instrumentalities that were not accused in this action, either in Ocean’s Complaint or its
`
`Infringement Contentions. MediaTek will not provide information about these unaccused
`
`instrumentalities as they are not relevant to any claim or defense in this action. MediaTek
`
`further objects to this Request because it seeks information about Third-Party Manufacturers that
`
`were not accused in this action, either in Ocean’s Complaint or its Infringement Contentions.
`
`MediaTek will not provide information about these unaccused Third-Party Manufacturers as they
`
`are not relevant to any claim or defense in this action. Media