Case 6:22-cv-01162-ADA Document 107 Filed 07/05/24 Page 1 of 8
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
` Plaintiff,
`
`
`PARKERVISION, INC.,
`
`
`
` v.
`
`REALTEK SEMICONDUCTOR CORP.,
`
` Defendant.
`
`
`
`
`
` Case No. 6:22-cv-01162-ADA
`
` JURY TRIAL DEMANDED
`
`
`
`
`
`
`PLAINTIFF PARKERVISION INC.’S OPPOSED MOTION
`FOR PROTECTIVE ORDER
`
`
`
`1
`
`
`
`
`
`

`

`Case 6:22-cv-01162-ADA Document 107 Filed 07/05/24 Page 2 of 8
`
`I.
`
`INTRODUCTION
`
`Realtek is attempting to evade the requirements of Rule 26 as well as this Court’s authority.
`
`Realtek seeks discovery from ParkerVision’s former litigation adversary, Intel; specifically expert
`
`reports, deposition transcripts, and briefing from the ParkerVision-Intel litigation. The Intel case,
`
`however, related to entirely different patents and products and involved different experts. The
`
`discovery Realtek seeks is irrelevant to this case. Additionally, the discovery contains third-party
`
`confidential information other than Intel’s own confidential information.
`
`Realtek seeks this discovery despite the fact that ParkerVision shared with Realtek Intel’s
`
`previous efforts in support of a similar tactic in its litigation with ParkerVision. Realtek knows that
`
`Intel moved this Court for discovery into expert materials from ParkerVision’s prior litigations
`
`with Qualcomm. And it knows that this Court denied Intel’s request.
`
`To side-step this Court’s involvement, Realtek avoided a motion to compel ParkerVision
`
`to produce the same information in this case. Instead, it subpoenaed third-party Intel hoping that
`
`Intel would voluntarily provide the material that Realtek seeks, and this Court would never get
`
`involved.
`
`This is not the first time Realtek tried to evade this Court’s authority. In particular, this
`
`Court previously denied Realtek’s efforts to uncover the identity of (and materials from) a chip
`
`extraction company that was involved in ParkerVisions’ pre-suit analysis of a Realtek chip. Yet,
`
`Realtek still sent a subpoena to a chip company seeking the very information this Court blocked.
`
`For the foregoing reasons, ParkerVision moves for a protective order to preclude Realtek’s
`
`requested discovery.1
`
`
`1 Realtek also seeks to depose Intel. If the Court grants this motion, the deposition should also be
`precluded.
`
`
`
`2
`
`

`

`Case 6:22-cv-01162-ADA Document 107 Filed 07/05/24 Page 3 of 8
`
`
`
`II.
`
`LEGAL STANDARD
`
`Rule 26(c)(1) permits “any party” to move for a protective order to protect a party from
`
`undue burden or expense, including limiting the scope of disclosure or discovery to certain matters.
`
`Fed. R. Civ. P. 26(c)(1); iLife Techs. v. Nintendo of Am. Inc., No. 3:13-cv-4987-M, 2017 U.S. Dist.
`
`LEXIS 239063, at *9 (N.D. Tex. Mar. 1, 2017). Thus, “a party has standing to move for a protective
`
`order pursuant to Rule 26(c) even if the party does not have standing pursuant to Rule
`
`45(d).” Kilmon v. Saulsbury Indus., Inc., No. MO:17-CV-99, 2018 U.S. Dist. LEXIS 237653, at
`
`*10 (W.D. Tex. Feb. 13, 2018).
`
`The Fifth Circuit places the burden on the party moving for a protective order to
`
`specifically show good cause and a specific need for protection. See In re Terra Int'l, 134 F.3d 302,
`
`306 (5th Cir.1998); Carr v. St. Farm. Mut. Auto. Ins. Co., 312 F.R.D. 459, 465 (N.D. Tex. 2015).
`
`In other words, the party resisting discovery has the burden “to show that the requested discovery
`
`does not fall within Rule 26(b)(1)’s scope of proper discovery—often referred to in shorthand as
`
`‘relevance’ for purposes of discovery—or that a discovery request would impose an undue burden
`
`or expense.” Carr, 312 F.R.D. at 464. But even where a moving party lacks standing to request a
`
`Rule 26(c) protective order on behalf of a nonparty, courts have found within their “inherent
`
`power” to manage discovery the ability to sua sponte issue a protective order under Rule 26(c) to
`
`effectuate the moving party's request. Providence Title Co. v. Truly Title, Inc., No. 5:21-cv-147-
`
`SDJ, 2022 U.S. Dist. LEXIS 233861, at *8-9 (E.D. Tex. Sept. 29, 2022).
`
`“Rule 26(c) confers broad discretion on the trial court to decide when a protective order is
`
`appropriate and what degree of protection is required.” Seattle Times Co. v. Rhinehart, 467 U.S.
`
`
`
`3
`
`

`

`Case 6:22-cv-01162-ADA Document 107 Filed 07/05/24 Page 4 of 8
`
`20, 36 (1984). Thus, the court may forbid the discovery or limit the scope of discovery to certain
`
`matters. Fed. R. Civ. P. 26(c).
`
`III. ARGUMENT
`
`Realtek seeks to avoid this Court’s authority regarding discovery issues in order to obtain
`
`irrelevant information that falls outside of the scope of Rule 26(b)(1).
`
`On June 3, 2024, Realtek subpoenaed Intel seeking the production of expert
`
`invalidity/validity reports, deposition transcripts, and non-public patent marking briefing from
`
`ParkerVision’s prior litigation against Intel—ParkerVision, Inc. v. Intel Corporation, No. 6:20-cv-
`
`00108-ADA (W.D. Tex. Feb. 11, 2020).2
`
`In particular, Realtek sought the following materials from Intel:
`
`1. Expert reports shared in the ParkerVision-Intel Litigations between Intel and ParkerVision
`regarding invalidity or validity of the Intel-Asserted Patents or Related Patents.3
`
`2. Documents relating to or containing briefing, argument, or any order regarding whether
`ParkerVision failed to comply with 35 U.S.C. 287, the “Marking Statute” from the
`ParkerVision-Intel Litigations.
`
`3. Deposition transcripts of ParkerVision’s witnesses from the ParkerVision-Intel Litigations
`including but not limited to ParkerVision’s expert witnesses and fact witnesses including
`ParkerVision’s corporate designees and any named inventors on the Intel-Asserted Patents.
`
`On June 21, 2024, Intel informed ParkerVision that Intel intended to comply with the
`
`
`
`subpoena and produce (1) the invalidity report of Intel’s expert (Dr. Subramanian), (2) the validity
`
`
`2 Ex. 1 at 3-11. While there were two cases against Intel, the 108 Case was the only case that
`proceeded to expert reports, depositions, and patent marking briefing.
`3 The subpoena defines “Related Patents” to mean: (1) any United States or foreign patent or patent
`application related to any Intel-Asserted Patent by way of subject matter or claimed priority date,
`(2) all parent, grandparent or earlier, divisional, continuation, continuation-in-part, provisionals,
`reissue, reexamination, and foreign counterpart patents and applications of thereof, and/or (3) any
`patent or patent application filed by one of more of the same applicant(s) (or his or her assignees)
`that refers to any of (1) or (2) herein.
`
`
`
`
`4
`
`

`

`Case 6:22-cv-01162-ADA Document 107 Filed 07/05/24 Page 5 of 8
`
`report of ParkerVision’s expert (Dr. Steer), (3) the deposition transcripts of Dr. Subramanian and
`
`Dr. Steer, (4) non-public patent marking briefing, and (5) the deposition transcripts of all of
`
`ParkerVision’s witnesses (which ParkerVision has produced to Realtek). Ex. 1 at 1. ParkerVision
`
`immediately informed Intel that it would move for a protective order.
`
`ParkerVision understands that, to date, Intel has not produced any of these materials. Ex.
`
`2.
`
`ParkerVision seeks a protective order regarding (1) the invalidity report of Dr.
`
`Subramanian, (2) the validity report of Dr. Steer, (3) the deposition transcripts of Dr. Subramanian
`
`and Dr. Steer, and (4) non-public patent marking briefing.
`
`There are significant differences between the Realtek case and the Intel case. Thus, the
`
`materials that Realtek seeks falls outside of Rule 26.
`
`First, the Intel expert reports and expert deposition testimony related to different patents,
`
`products, and issues that are not at issue here.
`
`ParkerVision v. Intel4
`6,580,902
`7,539,474
`8,588,725
`9,118,528
`9,246,736
`9,444,673
`
`ParkerVision v. Realtek
`6,049,706
`6,266,518
`7,292,835
`8,660,513
`
`
`
`Second, Dr. Subramanian and Dr. Steer are not experts in the Realtek case. And these
`
`experts did not analyze the patents or claims asserted in the Realtek case. These experts were
`
`tasked with analyzing whether Intel chips infringed ParkerVision’s patents and whether the claims
`
`of the patents asserted against Intel were valid. None of this information is relevant to the present
`
`
`4 ParkerVision asserted these patents in its Third Amended Complaint. See generally
`ParkerVision, Inc. v. Intel Corporation, No. 6:20-cv-00108-ADA, ECF No. 167 (W.D. Tex. Oct.
`4, 2022). Thus, the expert reports, depositions, and marking issues related only to these patents.
`
`
`
`5
`
`

`

`Case 6:22-cv-01162-ADA Document 107 Filed 07/05/24 Page 6 of 8
`
`case against Realtek. Notably, their reports and deposition transcripts also contain third-party
`
`confidential information other than Intel confidential information, which should be protected.
`
`Indeed, Intel tried a similar tactic in its litigation with ParkerVision—Intel sought expert
`
`materials from ParkerVision’s prior litigations with Qualcomm. This Court denied Intel’s request.
`
`See ParkerVision, Inc. v. Intel Corp., Case No. 6:20-cv-00108-ADA, ECF No. 163 at 78-91 (W.D.
`
`Tex. Sept. 13, 2022). Notably, ParkerVision told Realtek about the Court’s order, which likely
`
`explains why Realtek subpoenaed Intel instead of trying to get this material from ParkerVision
`
`directly.
`
`Third, because different patents are involved in the Realtek and Intel cases, patent marking
`
`related to patents in the Intel case are completely irrelevant to patent marking of the different
`
`patents at issue in the Realtek case.
`
`Finally, to the extent that Realtek wants to inject additional prior art into this case, the time
`
`for final invalidity contentions has long passed.
`
`Notably, this is not the first time Realtek tried to evade this Court’s authority. In particular,
`
`this Court previously denied Realtek’s efforts to uncover the identity of (and materials from) a chip
`
`extraction company that was involved in ParkerVisions’ pre-suit analysis of a Realtek chip. See
`
`ECF No. 98 at 5. Yet, Realtek sent a subpoena to a chip company—TechInsights—seeking the
`
`very information that the Court blocked. See generally Ex. 3.
`
`At bottom, Realtek is attempting to short-circuit Rule 26 in an effort to copy whatever
`
`information Intel prepared against ParkerVision. Realtek cannot wholly adopt Intel’s unrelated
`
`case using irrelevant information. The Court should bar Realtek from obtaining discovery from
`
`Intel through a subpoena.
`
`
`
`
`
`6
`
`

`

`Case 6:22-cv-01162-ADA Document 107 Filed 07/05/24 Page 7 of 8
`
`IV. CONCLUSION
`
`For the foregoing reasons, the Court should grant ParkerVision’s motion and prohibit
`
`Realtek from seeking the following discovery from Intel: (1) the invalidity report of Dr.
`
`Subramanian (2) the validity report of Dr. Steer, (3) the deposition transcripts of Dr. Subramanian
`
`and Dr. Steer, and (4) patent marking briefing from the Intel case.
`
`
`
`Dated: July 5, 2024
`
`
`
`
`
`
`
`
`
`/s/ Jason S. Charkow
`Raymond W. Mort, III
`Texas State Bar No. 00791308
`raymort@austinlaw.com
`THE MORT LAW FIRM, PLLC
`501 Congress Avenue, Suite 150
`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 Mandir (pro hac
`vice)
`rdaignault@daignaultiyer.com
`cbiyer@daignaultiyer.com
`jcharkow@daignaultiyer.com
`smandir@daignaultiyer.com
`DAIGNAULT IYER LLP
`8229 Boone Blvd., Suite 450
`Vienna, VA 22182
`*Not admitted in Virginia
`
`Attorneys for ParkerVision, Inc.
`
`7
`
`

`

`Case 6:22-cv-01162-ADA Document 107 Filed 07/05/24 Page 8 of 8
`
`CERTIFICATE OF CONFERENCE
`
`On the 27th day of June, 2024, the undersigned counsel conferred with lead opposing
`
`counsel concerning the relief sought in this Motion, and was advised that opposing counsel
`
`opposed this Motion.
`
`/s/ Jason S. Charkow
`Jason S. Charkow
`
`
`
`8
`
`