Case 6:21-cv-00520-ADA Document 60 Filed 07/12/22 Page 1 of 7
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`UNITED STATES DISTRICT COURT
` WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
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`PARKERVISION, INC.,
`
`
`
` Plaintiff,
`
`
`
`
`
`
`
` v.
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`Civil Action No. 6:21-cv-00520-ADA
`
`LG ELECTRONICS, INC.,
`
` Defendant.
`
`
`
`
`UNOPPOSED MOTION FOR ISSUANCE OF LETTERS ROGATORY
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`Pursuant to Federal Rule of Civil Procedure 4(h)(2) and 4(f)(2)(B), Plaintiff
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`ParkerVision, Inc. (“ParkerVision”) respectfully requests that this Court issue Letters
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`Rogatory in the form attached as Exhibit 1 to the Appropriate Judicial Authority of
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`Taiwan, compelling the production of documents and testimony from third party
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`Realtek Semiconductor Corp. (“Realtek”). ParkerVision brings this motion in order to
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`obtain relevant evidence not available to it by any other means.
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`I.
`
`Background.
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`To support its infringement claims in this case, ParkerVision had chip-level
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`extractions of the accused chips used in LGE’s accused products such as its smart
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`televisions. The asserted patents in this case are U.S. patent nos. 6,049,706; 6,266,518;
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`6,580,902; 7,110,444; 7,292,835; 8,588,725; 8,660,513; 9,118,528; 9,246,736 and 9,444,673
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`(the “Asserted Patents”). The technology described and claimed in the Asserted Patents
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`1
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`
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`UNITED STATES DISTRICT COURT
` WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`PARKERVISION, INC.,
`
`
`
` Plaintiff,
`
`
`
`
`
`
`
` v.
`
`Civil Action No. 6:21-cv-00520-ADA
`
`LG ELECTRONICS, INC.,
`
` Defendant.
`
`
`
`
`UNOPPOSED MOTION FOR ISSUANCE OF LETTERS ROGATORY
`
`Pursuant to Federal Rule of Civil Procedure 4(h)(2) and 4(f)(2)(B), Plaintiff
`
`ParkerVision, Inc. (“ParkerVision”) respectfully requests that this Court issue Letters
`
`Rogatory in the form attached as Exhibit 1 to the Appropriate Judicial Authority of
`
`Taiwan, compelling the production of documents and testimony from third party
`
`Realtek Semiconductor Corp. (“Realtek”). ParkerVision brings this motion in order to
`
`obtain relevant evidence not available to it by any other means.
`
`I.
`
`Background.
`
`To support its infringement claims in this case, ParkerVision had chip-level
`
`extractions of the accused chips used in LGE’s accused products such as its smart
`
`televisions. The asserted patents in this case are U.S. patent nos. 6,049,706; 6,266,518;
`
`6,580,902; 7,110,444; 7,292,835; 8,588,725; 8,660,513; 9,118,528; 9,246,736 and 9,444,673
`
`(the “Asserted Patents”). The technology described and claimed in the Asserted Patents
`
`1
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`
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`Case 6:21-cv-00520-ADA Document 60 Filed 07/12/22 Page 2 of 7
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`relates to, among other things, integrated circuit chips used for wi-fi, Bluetooth and
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`cellular communications. Realtek is the manufacturer and supplier of the chips that
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`LGE uses in certain of its products, including televisions, and those chips read on the
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`Asserted Patents (“Realtek Chips”).
`
`
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`On May 26, 2022, ParkerVision served document requests and interrogatories on
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`LGE, including documents and interrogatories relating to the circuit level design,
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`operation and functionality of the Realtek Chips and other technical details about the
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`Realtek Chips. Subject to LGE’s various general and specific objections to the document
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`requests, it stated that “to the extent such documents exist, are in the custody and/or
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`control of LGE, and have not already been produced, LGE will produce documents
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`sufficient to show information responsive to [the] Request[s].” In recent subsequent
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`meet-and-confers regarding ParkerVision’s written discovery, however, LGE stated that
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`it is not in possession, custody or control of documents relating to the technical details
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`of the Realtek Chips and therefore ParkerVision may only obtain that discovery from
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`Realtek.
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`Accordingly, ParkerVision has reason to believe that Realtek is in possession of
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`information that is relevant to ParkerVision’s infringement claims. Specifically,
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`ParkerVision has reason to believe that Realtek has schematics, chip design documents
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`and other technical documents relating to the operation and functionality of the Realtek
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`Chips and to the values and specifications of certain components in the Realtek Chips
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`that provide layer-by-layer chip-level details of the Realtek Chips at issue in this case.
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`2
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`Case 6:21-cv-00520-ADA Document 60 Filed 07/12/22 Page 3 of 7
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`ParkerVision therefore respectfully requests the Court to issue Letters Rogatory
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`requesting that Realtek be compelled to produce all documents that are responsive to
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`ParkerVision’s requests for production, and a witness to testify on each of the
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`deposition topics, as set forth in Attachments A and B to Exhibit 1 (collectively
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`“ParkerVision’s Discovery Requests”).
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`II.
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`Argument.
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`“Federal courts may issue letters rogatory to foreign tribunals, agencies, or
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`officers in order to seek ‘assistance in the production of evidence located in the foreign
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`country.” Blitzsafe Tex. v. Jaguar Land Rover, No. 2:17-cv-00424-JRG, 2019 U.S. Dist.
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`LEXIS 240026, at *2 (quoting United States v. El-Mezain, 664 F.3d 467, 516-17 (5th Cir.
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`2011), as revised (Dec. 27, 2011)). Federal courts have “inherent power” to issue letters
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`rogatory. Nat. Gas Pipeline Co. of Am. v. Energy Gathering, Inc., 2 F.3d 1397, 1408 (5th Cir.
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`1993); accord 28 U.S.C. § 1781. In the Fifth Circuit, “[t]he decision to issue a letter
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`rogatory is . . . entrusted to the sound discretion of the district court . . . .” El-Mezain, 664
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`F.3d at 517. Further, there “must be a ‘good reason’ to deny a request for letters
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`rogatory, at least when the request is made pursuant to Fed. R. Civ. P. 28(b).” Triump
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`Aerostructures v. Comau, Inc., No. 3:14-cv-2329-L, 2015 U.S. Dist. LEXIS 125347, at *8
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`(N.D. Tex. Sep. 18, 2015) (internal citations omitted); see also id. at *9 (stating that letters
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`rogatory or letters of request should be consistent with Rule 26(b)(1)).
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`ParkerVision’s Discovery Requests are within the scope of discovery defined by
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`Rule 26. Specifically, the documents requested in Attachment A seek circuit-level detail
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`of the accused chips used in LGE’s accused products, technical information and other
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`3
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`Case 6:21-cv-00520-ADA Document 60 Filed 07/12/22 Page 4 of 7
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`information regarding the Realtek Chips that Realtek has sold or otherwise provided to
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`LGE directly or through a third party, the agreements between Realtek and LGE and
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`other third parties relating to the Realtek Chips, and information relating to the
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`marketing and sale of Realtek Chips. The deposition topics recited in Attachment B
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`relate to the documents requested in Attachment A, as described generally above, and
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`the authentication and business-record nature of the requested documents. The
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`requested documents and deposition testimony are therefore important to
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`ParkerVision’s ability to demonstrate LGE’s infringement of the Asserted Patents and to
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`properly and fully respond to LGE’s defenses.
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`There are no alternative means of obtaining the requested information from LGE
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`as LGE has informed ParkerVision that it is not in possession, custody or control of
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`documents relating to the technical details of the Realtek Chips and directed
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`ParkerVision to obtain that discovery from Realtek. Further, Realtek has no known
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`subsidiary or otherwise affiliated entity located in the United States on whom a
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`subpoena could be served. Based on LGE’s stated inability to produce any of the
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`documents and deposition testimony sought and no known Realtek-affiliated company
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`located in the United States, there are no alternative means of obtaining the discovery
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`ParkerVision seeks.
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`Accordingly, ParkerVision respectfully requests the Court to return: (a) the
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`original copy of the signed and issued Letters Rogatory; and (b) one certified copy, to
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`the undersigned counsel. ParkerVision will then transmit the issued Letters Rogatory to
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`Case 6:21-cv-00520-ADA Document 60 Filed 07/12/22 Page 5 of 7
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`the United States Department of State to oversee transmission of the Letters Rogatory to
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`Taiwan through diplomatic channels as provided in 28 U.S.C. § 1781(a)(2).
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`III. Conclusion.
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`For the foregoing reasons, the Court should issue an order issuing Letters
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`Rogatory directed to the Appropriate Judicial Authority of Taiwan. The information
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`sought through this Motion and Letters Rogatory are within the scope of discovery
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`permitted under Rule 26 of the Federal Rules of Civil Procedure and necessary for
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`ParkerVision to prosecute its claims in the above-captioned action.
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`Dated: July 12, 2022
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`
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`Respectfully submitted,
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`/s/ Raymond W. Mort, III
`Raymond W. Mort, III
`Texas State Bar No. 00791308
`raymort@austinlaw.com
`THE MORT LAW FIRM, PLLC
`100 Congress Avenue, Suite 2000
`Austin, Texas 78701
`Tel/Fax: 512-865-7950
`
`Of counsel:
`Ronald M. Daignault (pro hac vice)*
`Chandran B. Iyer (pro hac vice)
`Jason S. Charkow (pro hac vice)*
`Stephanie R. Mandir (pro hac vice)
`Zachary H. Ellis
`(Texas State Bar No. 24122606)*
`Christian E. Samay (pro hac vice)*
`DAIGNAULT IYER LLP
`8618 Westwood Center Drive – Suite 150
`Vienna, VA 22182
`rdaignault@daignaultiyer.com
`cbiyer@daignaultiyer.com
`jcharkow@daignaultiyer.com
`smandir@daignaultiyer.com
`zellis@daignaultiyer.com
`csamay@daignaultiyer.com
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`5
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`Case 6:21-cv-00520-ADA Document 60 Filed 07/12/22 Page 6 of 7
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`*Not admitted in Virginia
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`Attorneys for Plaintiff ParkerVision, Inc.
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`Case 6:21-cv-00520-ADA Document 60 Filed 07/12/22 Page 7 of 7
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`CERTIFICATE OF CONFERENCE
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`Pursuant to Local Rule CV-7(G), the undersigned hereby certifies that Plaintiff’s
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`counsel contacted Intel’s counsel and received confirmation that they do not oppose this
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`Motion.
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`/s/ Ronald M. Daignault
`Ronald M. Daignault
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