Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 1 of 39
`
`Exhibit A
`
`
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 2 of 39
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`Advanced Silicon Technologies LLC,
`
`
`Plaintiff,
`
`v.
`
`NXP Semiconductors N.V.,
`NXP B.V., and
`NXP USA, Inc.,
`
`
`Defendants.
`
`
`
`Case No. 6:22-cv-00466-ADA-DTG
`
`
`
`
`Jury Trial Demanded
`
`
`
`
`
`LETTER OF REQUEST:
`REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE UNDER THE
`HAGUE CONVENTION OF 18 MARCH 1970 ON THE TAKING OF EVIDENCE
`ABROAD IN CIVIL OR COMMERCIAL MATTERS
`
`By the United States District Court,
`Western District of Texas, Waco Division
`Hon. Alan D Albright
`
`TO THE APPROPRIATE AUTHORITY IN FRANCE:
`
`The United States District Court for the Western District of Texas, Waco Division, presents
`
`its compliments to the appropriate judicial authority of France and requests international judicial
`
`assistance to obtain documentary evidence to be used in a civil proceeding pending before this
`
`Court in the above-captioned matter.
`
`This Court requests the assistance described herein under the Hague Convention of 18
`
`March 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters, as adopted and
`
`implemented in the United States of America at 28 U.S.C. § 1781 and which is in effect in France.
`
`The United States District Court for the Western District of Texas is a competent court of law and
`
`—2—
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 3 of 39
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`equity which properly has jurisdiction over this proceeding and has the power to compel the
`
`production of documents. The documentary evidence is intended for use in the above-captioned
`
`civil lawsuit and in the view of this Court will be highly relevant to the patent infringement claims
`
`asserted therein. In the proper exercise of its authority, this Court has determined that the
`
`documentary evidence cannot be secured except by the intervention of France's judicial authorities.
`
`1.
`
`Sender
`
`2. Central Authority of the Requested
`State
`
`3.
`
`Person to whom the executed
`request is to be returned
`
`4. Date by which the requesting
`authority requires receipt of the
`response to the Letter of Request
`
`U.S. District Judge Alan D Albright
`United States District Court for the Western
`District of Texas, Waco Division
`800 Franklin Avenue, Room 301
`Waco, Texas 76701
`United States of America
`Phone: +1-254-750-1510
`
`Ministère de la Justice
`Direction des Affaires Civiles et du Sceau
`Département de l'entraide, du droit international
`privé et européen (DEDIPE)
`13, Place Vendôme
`75042 Paris Cedex 01
`France
`Phone: +33 (1) 44 77 61 05
`Email: tania.jewczuk@justice.gouv.fr
`catherine.rumeau@justice.gouv.fr
`
`This Court; representatives of the parties as
`indicated below; the witnesses from whom
`evidence is requested as indicated below; and such
`other person(s) that you deem proper.
`
`As soon as reasonably practicable.
`
`In conformity with Article 3 of the Hague Convention on the Taking of Evidence Abroad
`5.
`in Civil or Commercial Matters, Federal Rule of Civil Procedure 28(b), and 28 U.S.C.A. §
`1781(b), the undersigned authority respectfully has the honor to submit the following request:
`
`—3—
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 4 of 39
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` a. Requesting judicial authority
`(Article 3(a))
`
` b. To the competent authority of
`(Article 3(a))
`
` c. Name of the case and any
`identifying number
`
`U.S. District Judge Alan D. Albright
`United States District Court for the Western
`District of Texas, Waco Division
`800 Franklin Avenue, Room 301
`Waco, Texas 76701
`United States of America
`Phone: +1-254-750-1510
`
`France
`
`Ministère de la Justice
`Direction des Affaires Civiles et du Sceau
`Département de l'entraide, du droit international
`privé et européen (DEDIPE)
`13, Place Vendôme
`75042 Paris Cedex 01
`France
`Phone: +33 (1) 44 77 61 05
`Email: tania.jewczuk@justice.gouv.fr
`catherine.rumeau@justice.gouv.fr
`
`Advanced Silicon Technologies LLC v. NXP
`Semiconductors N.V., NXP B.V., and NXP USA,
`Inc., Case No. 6:22-cv-00466-ADA-DTG, United
`States District Court for the Western District of
`Texas
`
`6. Name and addresses of the parties and their representatives (including representatives in
`the requested state (Article 3(b)):
`
` a. Plaintiff and Plaintiff's
`Representatives
`
`Advanced Silicon Technologies LLC ("AST")
`533 Congress Street
`Portland, Maine 04101
`
`AST is represented by:
`
`Brian A. Carpenter
`carpenter@caglaw.com
`Carstens, Allen & Gourley, LLP
`1105 Wooded Acres, Suite 415
`Waco, Texas 76701
`Telephone: (254) 294-1854
`
`Robert R. Brunelli
`rbrunelli@sheridanross.com
`Patrick A. Fitch
`pfitch@sheridanross.com
`Alex W. Ruge
`
`—4—
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 5 of 39
`
`aruge@sheridanross.com
`Brian Boerman
`bboerman@sheridanross.com
`Briana D. Long
`blong@sheridanross.com
`Angela J. Bubis
`abubis@sheridanross.com
`Sheridan Ross P.C.
`1560 Broadway, Suite 1200
`Denver, Colorado 80202
`Telephone: (303) 863-9700
`Facsimile: (303) 863-0223
`
` b. Defendant and Defendant's
`Representatives
`
`NXP USA, Inc.
`6501 W. William Cannon Drive
`Austin, Texas 78735
`
`NXP USA, Inc. is represented by:
`
`Richard S. Zembek
`Richard.zembek@nortonrosefullbright.com
`Norton Rose Fullbright US LLP
`Fullbright Tower
`1301 McKinney, Suite 5100
`Houston, Texas 77010
`Telephone: (713) 651-5151
`Facsimile: (713) 651-5246
`
`Eric C. Green
`eric.green@nortonrosefullbright.com
`Catherine Garza
`cat.garza@nortonrosefullbright.com
`Norton Rose Fullbright US LLP
`98 San Jacinto Blvd., Suite 1100
`Austin, Texas 78701
`Telephone: (512) 474-5201
`Facsimile: (512) 536-4598
`
` c. Other parties and their
`representatives
`
`N/A
`
`7.
`
`a. Nature of the proceedings
`(Article 3(c))
`
`Civil action alleging patent infringement of U.S.
`Patent Nos. 7,804,435 and 8,933,945
`(the "Asserted Patents") under the patent laws of
`the United States.
`
`—5—
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 6 of 39
`
` b. Summary of the complaint
`
` c. Summary of defenses and
`counterclaims
`
` d. Other necessary information or
`documents
`
`8.
`
`a. Evidence to be obtained or other
`judicial act to be performed
`(Article 3(d))
`
` b. Purpose of the evidence or
`judicial act sought
`
`NXP USA, Inc. has infringed and continues to
`infringe the Asserted Patents by making, using,
`importing, selling, and/or offering for sale various
`products.
`
`NXP USA, Inc. has denied all infringement
`allegations in their Original Answer to Plaintiff's
`Complaint and asserted 12 affirmative defenses.
`
`Allegro DVT's current address(es) are:
`
`12 Avenue Jean Kuntzmann
`Montbonnot-Saint-Martin
`France, 38330
`
`30 Rue Lavoisier
`Montbonnot-Saint-Martin
`France, 38330
`
`In order to present its claims that the Asserted
`Patents are infringed, valid, and enforceable and to
`determine any damages, Plaintiff seeks certain
`documents from Allegro DVT. Attachment A is a
`request for production of certain documents that
`Plaintiff believes are likely to be in the possession,
`custody, or control of Allegro DVT.
`
`With respect to the Asserted Patents, Allegro DVT
`has information and knowledge regarding video
`processing technologies used in certain products
`that Plaintiff alleges infringe the Asserted Patents.
`
`This evidence is directly relevant to Plaintiff's
`claims that the Asserted Patents are infringed,
`valid, and enforceable and to determining any
`damages under United States patent law.
`
`9.
`
`Identity and address of any person
`to be examined (Article 3(d))
`
`10. Questions to be put to the person
`to be examined or statement of the
`subject matter about which they
`are to be examined (Article 3(f))
`
`N/A
`
`N/A
`
`11. Documents or other property to be
`inspected (Article 3(g))
`
`See Attachment A.
`
`—6—
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 7 of 39
`
`12. Any requirement that the evidence
`be given on oath or affirmation
`and any special form to be used
`(Article 3(h))
`
`N/A
`
`13. Special methods or procedure to
`be followed (Articles 3, i, and 9)
`
`This Court respectfully requests the following:
`
`• That Allegro DVT be directed to produce
`the documents identified in Attachment A;
`
`•
`
`In the event the evidence cannot be taken in
`the manner requested, it is to be taken in
`such a manner as provided by local law; and
`
`• To the extent any request in this section is
`deemed incompatible with French principles
`of procedural law, it is to be disregarded.
`
`14. Request for notification of the time
`and place for the execution of the
`Request and identity and address
`of any person to be notified
`(Article 7)
`
`This Court respectfully requests that you notify this
`Court; the representatives of the parties as indicated
`above; the witness from whom evidence is
`requested as indicated above; and such other
`person(s) that you deem proper.
`
`15. Request for attendance or
`participation of judicial personnel
`of the requesting authority at the
`execution of the Letter of Request
`(Article 8)
`
`16. Specification of privilege or duty
`to refuse to give evidence under
`the law of the State of Origin
`(Article 11(b))
`
`No attendance of judicial personnel is requested.
`
`The privilege or duty of the witness(es) to refuse to
`give evidence shall be the same as if they were
`testifying under the applicable provisions of the
`Federal Rules of Civil Procedure, including if
`giving such evidence would (1) subject them to a
`real and appreciable danger of criminal liability in
`the United States, or (2) disclose a confidential and
`privileged communication between them and their
`respective attorneys.
`
`17. Fees and costs (Articles 14 and 26) Plaintiff will bear the reimbursable costs associated
`with this Request in accordance with the provisions
`of the Hague Convention.
`
`
`
`—7—
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 8 of 39
`
`DATE OF REQUEST:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Honorable Alan D Albright
`United States District Judge
`800 Franklin Avenue, Room 301
`Waco, Texas 76701
`United States of America
`
`[seal of the court]
`
`
`
`
`
`
`
`
`
`
`
`
`
`—8—
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 9 of 39
`
`
`
`Attachment A
`
`
`
`
`
`—9—
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 10 of 39
`
`REQUESTS FOR PRODUCTION OF DOCUMENTS
`
`
`
`
`
`DEFINITIONS
`
`1.
`
`"NXP" or "DEFENDANT" mean Defendant NXP USA, Inc. and includes all places
`
`of business and all subsidiaries, parents, related companies, predecessors, predecessors-in-interest,
`
`affiliates, past or present directors, officers, agents, representatives, employees, consultants,
`
`attorneys, entities acting in joint venture, licensing agreements, or partnership relationships with
`
`NXP and others acting on behalf of NXP.
`
`2.
`
`"LITIGATION" means the case pending in the United States District Court for the
`
`Western District of Texas (Waco Division), captioned Advanced Silicon Technologies LLC v. NXP
`
`Semiconductors N.V., NXP B.V., and NXP USA, Inc., Case No. 6:22-cv-00466-ADA-DTG (W.D.
`
`Tex.)
`
`3.
`
`"THE PATENTS-IN-SUIT" means U.S. Patent No. 7,804,435 and U.S. Patent No.
`
`8,933,945.
`
`4.
`
`"ACCUSED SYSTEMS" means any product, method, or system made, used, sold,
`
`offered for sale, and/or imported in the United States by DEFENDANT or at DEFENDANT'S
`
`request that incorporate patented technology covered by THE PATENTS-IN-SUIT, including but
`
`not limited to the products, systems, features, and functionalities identified in Advanced Silicon
`
`Technologies LLC's latest complaint and other similar products, systems, features, and
`
`functionalities.
`
`5.
`
`"YOU" and "YOUR" mean Allegro DVT and include the officers, directors, agents,
`
`employees, partners, parents, subsidiaries, predecessors-in-interest, and affiliates of YOURS and
`
`all other PERSONS acting or purporting to act on behalf of YOU who are subject to the direction
`
`or control of YOU.
`
`—10—
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 11 of 39
`
`6.
`
`"PERSON" shall mean any natural person, firm, partnership, group, association,
`
`corporation, trust, and any other business, governmental, or legal entity.
`
`7.
`
`"DOCUMENT" has the broadest meanings of "documents or electronically stored
`
`information" under Federal Rule of Civil Procedure 34 and the federal judiciary's interpretations
`
`thereof. It includes, without limitation, any writing and each original, or a copy in the absence of
`
`the original, and every copy bearing notes or markings not present on the original or copy, however
`
`produced or reproduced. "DOCUMENT" also refers to any tangible object other than a
`
`DOCUMENT as described above, and includes objects of every kind and nature as, but not limited
`
`to, prototypes, models, and specimens.
`
`8.
`
`"CONCERNING" means relating to, referring to, constituting, containing,
`
`embodying, comprising, reflecting,
`
`identifying, stating, connecting with, dealing with,
`
`commenting on, responding to, describing, illustrating, involving, or in any way pertaining to the
`
`subject to which the request is directed.
`
`9.
`
`The singular form of a word should be interpreted in the plural as well. Any pronoun
`
`should be construed to refer to masculine, feminine, or neutral gender as in each case is most
`
`appropriate. "And" and "or" shall be construed conjunctively or disjunctively, whichever makes
`
`the request more inclusive. "Including" shall be without limitation. "Each" and "any" shall mean
`
`any and all. The use of any tense of any verb includes also within its meaning all other tenses of
`
`the verb so used.
`
`10.
`
`If YOU find the meaning of any term in these requests to be unclear, then YOU
`
`should assume a reasonable meaning, state what that assumed meaning is, and answer the request
`
`on the basis of that assumed meaning.
`
`—11—
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 12 of 39
`
`INSTRUCTIONS
`
`1.
`
`These requests call for all information in YOUR possession, custody, or control, or
`
`in the possession of YOUR attorneys, agents, employees, officers, directors, representatives, or
`
`other PERSONS acting under YOUR authorization, employment, direction, or control.
`
`2.
`
`If YOU are unable to answer any of these requests in whole or in part after
`
`reasonable inquiry to secure the information requested, YOU should answer, to the extent possible,
`
`explaining why YOU are unable to answer in full, and provide whatever information that YOU
`
`have CONCERNING the unanswered portion.
`
`3.
`
`YOU and Advanced Silicon Technologies LLC shall meet and confer to determine
`
`the most efficient and cost-effective method of producing any electronically stored information
`
`(ESI).
`
`4.
`
`If YOU object to any request, state the ground(s) of the objection with sufficient
`
`specificity to permit the determination of the basis for such objection. Objection to a portion of
`
`any request does not relieve YOU of the duty to respond to the part to which YOU do not object.
`
`If YOU object to the scope or time period of a request and refuse to answer for the scope or time
`
`period, state YOUR objection and answer the request for the scope or time period YOU believe is
`
`appropriate (including in YOUR response a specific statement as to why YOU believe the scope
`
`or time period is inappropriate).
`
`5.
`
`If YOU withhold any information or DOCUMENT because YOU claim that it is
`
`protected by the work product doctrine, the attorney-client privilege, or any other privilege or
`
`protection, identify the information or DOCUMENT by description, date, author or source, a brief
`
`description of the nature and subject matter in sufficient detail to permit the parties to this
`
`—12—
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 13 of 39
`
`LITIGATION to assess the applicability of the asserted privilege or immunity, and state the
`
`grounds on which YOU base YOUR claim of privilege or protection.
`
`6.
`
`If a request requires, in whole or in part, YOUR review of a DOCUMENT which
`
`is known to have existed and cannot now be located or has been destroyed or discarded, state:
`
`a.
`
`b.
`
`c.
`
`d.
`
`the type of DOCUMENT;
`
`the subject matter of the DOCUMENT;
`
`the author and date of the DOCUMENT; and
`
`the circumstances under which the DOCUMENT was lost, destroyed, or
`
`discarded.
`
`7.
`
`Where an identified DOCUMENT is not in YOUR possession, custody, or control,
`
`state the names of the PERSONS who have possession, custody, or control of such DOCUMENT.
`
`If the DOCUMENT was in YOUR possession, custody, or control in the past but is no longer in
`
`YOUR possession, custody, or control, state what disposition was made of it; the reasons for such
`
`disposition; identify any PERSON(S) having any knowledge about such disposition; and identify
`
`the PERSON(S) responsible for such disposition.
`
`8.
`
`Advanced Silicon Technologies LLC and DEFENDANT are operating under the
`
`Protective Order filed September 1, 2022, and entered in the LITIGATION with the text order
`
`dates September 2, 2022. A copy of the Protective Order is included as Attachment B.
`
`—13—
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 14 of 39
`
`REQUESTS FOR PRODUCTION OF DOCUMENTS
`
`1.
`
`DOCUMENTS CONCERNING agreements between YOU and DEFENDANT,
`
`including agreements concerning YOU providing products or services to DEFENDANT.
`
`2.
`
`DOCUMENTS CONCERNING
`
`communications
`
`between YOU
`
`and
`
`DEFENDANT or third parties CONCERNING Advanced Silicon Technologies, LLC, the
`
`LITIGATION, or THE PATENTS-IN-SUIT.
`
`3.
`
`DOCUMENTS sufficient to identify by product name, model name, version,
`
`internal codename, and any taxonomy used by YOU or DEFENDANT each video processing unit
`
`("VPU"), power management component related to any VPU, or power management service
`
`related to any VPU that YOU designed, developed, manufactured, tested, supported, delivered, or
`
`otherwise worked on for or with DEFENDANT since May 2016.
`
`4.
`
`DOCUMENTS, including computer source code (e.g., a text listing of computer
`
`instructions, commands and data definitions expressed in a form suitable for input to an assembler,
`
`compiler, or other translator, including firmware), RTL code (i.e., register transfer level code that
`
`may define structure or operation of hardware), object code listings and descriptions of object
`
`code, data residing in a database or databases, including mask and layout files (e.g., GDS, .sip
`
`formats), process flow documents or recipes, technical specifications, user manuals, programming
`
`guides, and design guides, detailing the full operation and functionality of each VPU, power
`
`management component related to any VPU, or power management service related to any VPU
`
`that YOU designed, developed, manufactured, tested, supported, delivered, or otherwise worked
`
`on for or with DEFENDANT since May 2016.
`
`5.
`
`DOCUMENTS sufficient to show all revenue earned, received, booked, or
`
`otherwise realized by YOU, itemized by each product and service, CONCERNING products and
`
`—14—
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 15 of 39
`
`services YOU designed, developed, manufactured, delivered, or otherwise worked on for or with
`
`DEFENDANT on an annual basis since May 2016.
`
`6.
`
`DOCUMENTS detailing all the alleged benefits or value to DEFENDANT'S
`
`customers or end users of the VPU or power management products and services YOU designed,
`
`developed, manufactured, tested, supported, delivered, or otherwise worked on for or with
`
`DEFENDANT since May 2016.
`
`
`
`—15—
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 16 of 39
`
`Attachment B
`
`—16—
`
`

`

`
`
`Case 6:22-cv-00466-ADA-DTG Document 43 Filed 09/01/22 Page 1 of 3Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 17 of 39
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`ADVANCED SILICON TECHNOLOGIES
`LLC,
`
`
`CIVIL ACTION NO. 6:22-CV-0466-ADA-DTG
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`Plaintiff,
`
`v.
`
`NXP SEMICONDUCTORS N.V., NXP B.V.,
`AND NXP USA, INC.,
`
`
`Defendants.
`
`
`
`
`
`Joint Motion to Enter Agreed Protective Order
`
`Plaintiff Advanced Silicon Technologies LLC and Defendant NXP USA, Inc.1 have
`
`conferred and jointly move to enter the enclosed Agreed Protective Order, which the parties
`
`based on the Court’s Default Protective Order – Patent Cases.
`
`
`
`
`
`
`1 The parties filed a joint stipulation of dismissal without prejudice of Defendants NXP
`Semiconductors N.V. and NXP B.V. See ECF No. 34.
`
`—1—
`
`

`

`
`
`Case 6:22-cv-00466-ADA-DTG Document 43 Filed 09/01/22 Page 2 of 3Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 18 of 39
`
`Dated: September 1, 2022
`
`Respectfully submitted,
`
`
`By: /s/ Eric C. Green
`
`Richard S. Zembek (SBN 00797726)
`richard.zembek@nortonrosefulbright.com
`Norton Rose Fulbright US LLP
`Fulbright Tower
`1301 McKinney, Suite 5100
`Houston, Texas 77010-3095
`Tel.: (713) 651-5151
`Fax: (713) 651-5246
`
`Eric C. Green (SBN 24069824)
`eric.green@nortonrosefulbright.com
`Catherine Garza (SBN 24073318)
`cat.garza@nortonrosefulbright.com
`Norton Rose Fulbright US LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, Texas 78701
`Tel.: (512) 474-5201
`Fax: (512) 536-4598
`
`
`
`Attorneys for Defendants
`NXP Semiconductors N.V.,
`NXP B.V., and NXP USA, Inc.
`
`By: /s/ Patrick A. Fitch
`Brian A. Carpenter (State Bar No. 3840600)
`
`carpenter@cclaw.com
`Carstens & Cahoon, LLP
`1105 Wooded Acres, Suite 415
`Waco, Texas 76701
`(254) 294-1854 (Telephone)
`
`
`Robert R. Brunelli (admitted pro hac vice)
`
`rbrunelli@sheridanross.com
`Patrick A. Fitch (admitted pro hac vice)
`
`pfitch@sheridanross.com
`Alex W. Ruge (admitted pro hac vice)
`
`aruge@sheridanross.com
`Brian Boerman (admitted pro hac vice)
`
`bboerman@sheridanross.com
`Sheridan Ross P.C.
`1560 Broadway, Suite 1200
`Denver, Colorado 80202
`(303) 863-9700 (Telephone)
`(303) 863-0223 (Facsimile)
`litigation@sheridanross.com
`
`Attorneys for Plaintiff
`Advanced Silicon Technologies LLC
`
`
`
`
`
`
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`
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`—2—
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`

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`Case 6:22-cv-00466-ADA-DTG Document 43 Filed 09/01/22 Page 3 of 3Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 19 of 39
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`Certificate of Service
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`I hereby certify that, on September 1, 2022, I electronically filed the foregoing with the
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`Clerk of Court using the CM/ECF system, which will send notification of such filing to all counsel
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`of record in the above-referenced matter.
`
`
`
`
`
`
`
`/s/ Thomas J. Armento
`Thomas J. Armento
`Paralegal
`Sheridan Ross P.C.
`1560 Broadway, Suite 1200
`Denver, CO 80202
`(303) 863-9700 (Telephone)
`(303) 863-0223 (Facsimile)
`litigation@sheridanross.com
`
`
`
`—3—
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`

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`Case 6:22-cv-00466-ADA-DTG Document 43-1 Filed 09/01/22 Page 1 of 18Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 20 of 39
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`ADVANCED SILICON TECHNOLOGIES
`LLC,
`
`
`Plaintiff,
`
`CIVIL ACTION NO. 6:22-CV-0466-ADA-DTG
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`v.
`
`NXP SEMICONDUCTORS N.V., NXP B.V.,
`AND NXP USA, INC.,
`
`
`Defendants.
`
`
`
`
`
`AGREED PROTECTIVE ORDER
`
`WHEREAS, Plaintiff Advanced Silicon Technologies LLC (“AST”) and Defendants NXP
`
`Semiconductors N.V., NXP B.V., and NXP USA, Inc. (collectively, “NXP”), hereafter referred to
`
`as “the Parties,” believe that certain information that is or will be encompassed by discovery
`
`demands by the Parties involves the production or disclosure of trade secrets, confidential business
`
`information, or other proprietary information;
`
`WHEREAS, the Parties seek a protective order limiting disclosure thereof in accordance with
`
`Federal Rule of Civil Procedure 26(c):
`
`THEREFORE, it is hereby stipulated among the Parties and ORDERED that:
`
`1.
`
`Each Party may designate as confidential for protection under this Order, in whole or in part,
`
`any document, information, or material that constitutes or includes, in whole or in part,
`
`confidential or proprietary information or trade secrets of the Party or a Third Party to whom
`
`the Party reasonably believes it owes an obligation of confidentiality with respect to such
`
`document, information, or material (“Protected Material”). Protected Material shall be
`
`designated by the Party producing it by affixing a legend or stamp on such document,
`
`information, or material as follows: “CONFIDENTIAL.” The word “CONFIDENTIAL”
`
`
`
`1
`
`
`

`

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`Case 6:22-cv-00466-ADA-DTG Document 43-1 Filed 09/01/22 Page 2 of 18Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 21 of 39
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`shall be placed clearly on each page of the Protected Material (except deposition and hearing
`
`transcripts and natively produced documents) for which such protection is sought. For
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`deposition and hearing transcripts, the word “CONFIDENTIAL” shall be placed on the
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`cover page of the transcript (if not already present on the cover page of the transcript when
`
`received from the court reporter) by each attorney receiving a copy of the transcript
`
`after that attorney receives notice of the designation of some or all of that transcript as
`
`“CONFIDENTIAL.” For natively produced Protected Material, the appropriate
`
`designation shall be placed in the filename of each such natively produced document, and
`
`included on a slip-sheet when produced in hardcopy.
`
`2.
`
`Any document produced before issuance of this Order, including pursuant to the Court’s
`
`Order Governing Proceedings - Patent Case, with the designation “Confidential” or the like
`
`shall receive the same treatment as if designated “CONFIDENTIAL” under this order and
`
`any such documents produced with the designation “Confidential - Outside Attorneys’
`
`Eyes Only” shall receive the same treatment as if designated “CONFIDENTIAL -
`
`OUTSIDE ATTORNEYS’ EYES ONLY” under this Order, unless and until such document
`
`is re-designated to have a different classification under this Order.
`
`3.
`
`With respect to documents, information, or material designated “CONFIDENTIAL,”
`
`“CONFIDENTIAL - ATTORNEYS’ EYES ONLY,” “CONFIDENTIAL - OUTSIDE
`
`ATTORNEYS’ EYES ONLY,” or “CONFIDENTIAL
`
`- SOURCE CODE”
`
`(“DESIGNATED MATERIAL”),1 subject to the provisions herein and unless otherwise
`
`stated, this Order governs, without limitation: (a) all documents, electronically stored
`
`
`1 The term DESIGNATED MATERIAL is used throughout this Protective Order to refer to the
`class of materials designated as “CONFIDENTIAL,” “CONFIDENTIAL - ATTORNEYS’ EYES
`ONLY,” “CONFIDENTIAL - OUTSIDE ATTORNEYS’ EYES ONLY,” or “CONFIDENTIAL
`- SOURCE CODE,” individually and collectively.
`
`
`
`2
`
`
`

`

`
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`Case 6:22-cv-00466-ADA-DTG Document 43-1 Filed 09/01/22 Page 3 of 18Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 22 of 39
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`information, and/or things as defined by the Federal Rules of Civil Procedure; (b) all
`
`pretrial, hearing or deposition testimony, or documents marked as exhibits or for
`
`identification in depositions and hearings; (c) pretrial pleadings, exhibits to pleadings and
`
`other court filings; (d) affidavits; and (e) stipulations. All copies, reproductions, extracts,
`
`digests, and complete or partial summaries prepared from any DESIGNATED
`
`MATERIALS shall also be considered DESIGNATED MATERIAL and treated as such
`
`under this Order.
`
`4.
`
`A designation of Protected Material (i.e., “CONFIDENTIAL,” “CONFIDENTIAL -
`
`ATTORNEYS’ EYES ONLY,” “CONFIDENTIAL - OUTSIDE ATTORNEYS’ EYES
`
`ONLY,” or “CONFIDENTIAL - SOURCE CODE”) may be made at any time. Inadvertent
`
`or unintentional production of documents, information, or material that has not been
`
`designated as DESIGNATED MATERIAL shall not be deemed a waiver in whole or in part
`
`of a claim for confidential treatment. Any Party that inadvertently or unintentionally
`
`produces Protected Material without designating it as DESIGNATED MATERIAL may
`
`request destruction of that Protected Material by notifying the recipient(s) as soon as
`
`reasonably possible after the producing Party becomes aware of the inadvertent or
`
`unintentional disclosure, and providing replacement Protected Material that is properly
`
`designated.
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` The recipient(s) shall then destroy all copies of the inadvertently or
`
`unintentionally produced Protected Materials and any documents, information, or material
`
`derived from or based thereon.
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`5.
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`“CONFIDENTIAL” documents, information, and material may be disclosed only to the
`
`following persons, except upon receipt of the prior written consent of the designating Party,
`
`upon order of the Court, or as set forth in paragraph 15 herein:
`
`(a)
`
`Outside counsel of record in this Action for the Parties.
`
`
`
`3
`
`
`

`

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`Case 6:22-cv-00466-ADA-DTG Document 43-1 Filed 09/01/22 Page 4 of 18Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 23 of 39
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`(b)
`
`(c)
`
`(d)
`
`(e)
`
`Employees of such counsel assigned to and reasonably necessary to assist such
`counsel in the litigation of this Action.
`
`In-house counsel for the Parties who either have responsibility for making decisions
`dealing directly with the litigation of this Action, or who are assisting outside
`counsel in the litigation of this Action and who have read and agree in writing to
`be bound by this Order.
`
`Up to and including three (3) designated representatives of each of the Parties to the
`extent reasonably necessary for the litigation of this Action, except that any Party
`may in good faith request the other Party’s consent to designate one or more
`additional representatives, the other Party shall not unreasonably withhold such
`consent, and the requesting Party may seek leave of Court to designate such
`additional representative(s) if the requesting Party believes the other Party has
`unreasonably withheld such consent.
`
`Outside consultants or experts (i.e., not existing employees or affiliates of a Party or
`an affiliate of a Party) retained for the purpose of this litigation, provided that: (1)
`such consultants or experts are not presently employed by the Parties or of an
`affiliate of a Party hereto for purposes other than this Action; (2) before access is
`given, the consultant or expert has completed the Undertaking attached as Appendix
`A hereto and the same is served upon the producing Party with a current curriculum
`vitae of the consultant or expert, including a list of other cases in which the
`individual has provided a report or testified (at trial or deposition) and a list of
`companies that the individual has been employed by or provided consulting
`services pertaining to the field of the invention of the patent(s)-in-suit or the
`products accused of infringement within the last four years and a brief description
`of the subject matter of the consultancy or employment, at least ten (10) days before
`access to the Protected Material is to be given to that consultant or expert to object
`to and notify the receiving Party in writing that it objects to disclosure of Protected
`Material to the consultant or expert. The Parties agree to promptly confer and use
`good faith to resolve any such objection. If the Parties are unable to resolve any
`objection, the objecting Party may file a motion with the Court within fifteen (15)
`days of receipt of the notice, or within such other time as the Parties may agree,
`seeking a protective order with respect to the proposed disclosure. The objecting
`Party shall have the burden of proving the need for a protective order. No disclosure
`shall occur until all such objections are resolved by agreement or Court order.
`
`(f)
`
`Independent litigation support services, including persons working for or as court
`reporters, graphics or design services, jury or trial consulting services, and
`photocopy, document imaging, and database services retained by counsel and
`reasonably necessary to assist counsel with the litigation of this Action.
`
`(g)
`
`The Court and its personnel.
`
`6.
`
`A Party shall designate documents, information, or material as “CONFIDENTIAL” only
`
`upon a good faith belief that the documents, information, or material should be protected
`
`
`
`4
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`
`

`

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`Case 6:22-cv-00466-ADA-DTG Document 43-1 Filed 09/01/22 Page 5 of 18Case 6:22-cv-00466-ADA-DTG Document 71-1 Filed 03/16/23 Page 24 of 39
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`from public disclosure because such information contains confidential or proprietary
`