Case 6:22-cv-01162-ADA Document 111 Filed 07/12/24 Page 1 of 12
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`PARKERVISION, INC.,
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`Plaintiff,
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`v.
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`REALTEK SEMICONDUCTOR CORP.,
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`Defendant.
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`Case No. 6:22-cv-01162-ADA
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`DEFENDANT REALTEK SEMICONDUCTOR CORP.’S RESPONSE TO
`PLAINTIFF PARKERVISION, INC.’S MOTION FOR PROTECTIVE ORDER
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`Case 6:22-cv-01162-ADA Document 111 Filed 07/12/24 Page 2 of 12
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`I.
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`INTRODUCTION
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`ParkerVision’s Motion provides no valid reason for this Court to block nonparty Intel
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`Corporation from producing a handful of relevant documents that Intel was prepared to produce
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`in the Northern District of California pursuant to a subpoena, the validity of which ParkerVision
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`does not dispute. ECF No. 107 (“Motion” or “Mot.”); ECF No. 107-2 (“Intel intends to produce
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`the documents responsive to Realtek’s subpoena on Monday, July 8.”). ParkerVision cannot
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`identify the required “clearly defined and serious injury” that it must show to obtain issuance of a
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`protective order in this Court to stop Intel’s compliance with a subpoena in a different district.
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`Indeed, ParkerVision cannot even establish that Intel’s production of a small set of documents
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`such as validity and invalidity expert reports would cause “annoyance, embarrassment, oppression,
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`or undue burden or expense” to anyone. See Fed. R. Civ. P. 26(c)(1).
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` Contrary to the Motion, the documents requested from Intel are directly relevant to this
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`case. The asserted patents here are related to the patents ParkerVision asserted against Intel, and
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`claim and disclose the same outdated radio frequency down conversion technology. As a result,
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`the asserted patents have overlapping claim language and invalidity issues as the patents addressed
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`in the Intel cases, and ParkerVision submitted declarations from Dr. Steer—its validity expert in
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`the Intel cases—as support for ParkerVision’s claim construction positions in this case. See ECF
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`Nos. 74-4, 74-5. Far from being an attempt to “evade” any requirements, Mot. at 2, or create any
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`burden or expense, Intel’s agreement to produce the requested documents resolved ParkerVision’s
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`stated objections to producing Intel’s confidential information in this case, and should have
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`obviated the need for any discovery motion at all. Through its Motion, ParkerVision wants to hide
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`statements made in prior litigations that are likely contrary to its positions in this litigation—and
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`such statements are undoubtedly discoverable. Therefore, Realtek respectfully requests that the
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`Case 6:22-cv-01162-ADA Document 111 Filed 07/12/24 Page 3 of 12
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`Court deny the Motion, and permit Intel to produce a limited set of responsive documents in the
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`Northern District of California subject to the valid subpoena.
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`II.
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`BACKGROUND
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`Over six months ago, on January 11, 2024, Realtek served its First Set of Requests for
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`Production to ParkerVision seeking, among other things, the documents that ParkerVision
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`produced in its other patent litigations, including its cases against Intel. See, e.g., Ex. A at 21
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`(Request No. 48). On February 20, 2024, ParkerVision served boilerplate objections and
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`responses, stating that it “is willing to meet and confer regarding the scope and relevance of this
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`Request.” Ex. B at 36-37 (Response to Request No. 48). Thereafter, the parties met and conferred
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`several times regarding ParkerVision’s productions, resulting in ParkerVision’s refusal to identify
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`the prior litigation documents ParkerVision was withholding subject to its unexplained objections,
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`notwithstanding the requirements of Rule 34. See Fed. R. Civ. P. 34(b)(2)(C); Ex. C (Apr. 25,
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`2024 G. Wang Email to A. Ciuffo).
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`On April 17, 2024, the parties further met and conferred, and Realtek specifically requested
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`that ParkerVision produce the validity and invalidity expert reports from its cases against Intel,
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`which were never identified as withheld, and missing from ParkerVision’s limited productions.
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`See Ex. C. During the meet and confer, ParkerVision’s counsel indicated that ParkerVision “would
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`not produce expert reports from other litigations given the confidential information of other
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`defendants [(i.e., nonparties in this action)]” in those reports, including the validity or invalidity
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`expert reports, which ParkerVision’s counsel represented “also include third party confidential
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`information.” Id. Realtek asked ParkerVision to identify which third party information was
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`included in the validity and invalidity reports “so that we can seek permission from these third
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`parties to have a copy of these reports.” Id. ParkerVision never responded to Realtek’s request,
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`and it did not identify which third party confidential information supposedly precluded
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`ParkerVision’s production.
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`With deadlines for the close of fact discovery and expert reports fast approaching, in an
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`effort to limit the parties’ discovery disputes, Realtek did what ParkerVision should have done in
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`response to Realtek’s January 2024 Requests for Production—Realtek sought approval directly
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`from Intel to produce Intel confidential information in this case. To facilitate that approval and
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`production of Intel’s documents under the applicable protective order in this case, Realtek issued
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`the June 3, 2024 Subpoena to Intel Corporation (the “Subpoena”). See ECF No. 107-1. The
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`Subpoena seeks, inter alia, production of documents in the Northern District of California, where
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`Intel’s Santa Clara headquarters are located. ECF No. 107-1 at 3. Specifically, the Subpoena
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`requests production of a handful of documents that Realtek understood could contain Intel
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`confidential information based on statements from ParkerVision’s counsel: (1) copies of validity
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`and invalidity expert reports exchanged in the Intel cases, (2) any argument, briefing, or court
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`orders regarding Intel’s marking defenses, and (3) deposition transcripts, including the transcripts
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`of depositions of ParkerVision’s expert witnesses. See id. at 9. Neither Intel nor ParkerVision
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`moved to quash or limit the Subpoena in the Northern District of California. Intel thereafter
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`identified and collected responsive documents, and indicated that it was prepared to produce
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`documents responsive to the Subpoena pursuant to the applicable protective order in this case. See
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`Ex. D (June 27, 2024 H. Hanson Email).
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`On June 26, 2024, ParkerVision’s counsel sent an email stating that it would move for a
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`protective order “to forbid Realtek’s requested discovery from Intel.” See Ex. E (June 26, 2024 Z.
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`Ellis Email). The parties met and conferred the next day, and ParkerVision’s counsel stated for
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`the first time that “good cause” existed for this Court to issue a protective order because the validity
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`and invalidity reports from the Intel cases—which involved related patents, with overlapping claim
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`language—were supposedly irrelevant to Realtek’s defenses and may cause jury confusion.
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`ParkerVision did not identify any harm it would suffer in the immediate production of the
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`documents.1 In response to outreach from ParkerVision’s counsel, Intel then stated that it would
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`hold off on producing responsive documents pending the Court’s resolution of the Motion, but
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`made clear that “Intel does not oppose the production of documents in response to Realtek’s
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`subpoena.” Ex. F (July 10, 2024 Email from H. Hanson) (emphasis added).2
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`III. ARGUMENT
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`ParkerVision concedes that it lacks any standing to quash or limit the Subpoena pursuant
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`to Rule 45, see Mot. at 3, but that is what ParkerVision is requesting from this Court, despite
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`characterizing its Motion as seeking entry of a protective order. See, e.g., Salmon v. Waffle House,
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`Inc., No. 19-cv-1349, 2020 WL 6708382, at *2 (E.D. La. Nov. 16, 2020) (“[A] plaintiff cannot
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`challenge a Rule 45 subpoena directed to a third party on the basis that ... the subpoena is overly
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`broad, or that the subpoena seeks information that is irrelevant because only the responding third
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`party can object and seek to quash a Rule 45 subpoena on those grounds.”). Of course, any motion
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`to quash the Subpoena should have been filed in the Northern District of California, where Intel’s
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`compliance is required (and already agreed to). Fed. R. Civ. P. 45(d)(3); Providence Title Co. v.
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`Truly Title, Inc., No. 4:21-cv-147-SDJ, 2022 WL 17981500, at *2 (E.D. Tex. Sept. 29, 2022) (court
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`1 ParkerVision’s counsel stated that this Court had denied a request for production of expert
`reports in the Intel cases, but ironically, pointed Realtek to a sealed transcript that ParkerVision
`has not produced and that Realtek cannot access. See Mot. at 6 (citing ParkerVision, Inc. v. Intel
`Corp., Case No. 6:20-cv-00108-ADA, ECF No. 163 at 78-91 (W.D. Tex. Sept. 13, 2022)).
`2 During the parties’ meet and confer, ParkerVision’s counsel also falsely stated that Intel agreed
`with ParkerVision, and did not want to produce documents. In fact, Intel was prepared to make a
`production, but had only held off based on ParkerVision’s representation that it would move for
`a protective order in this Court. ECF No. 107-2 (“Based on that representation, Intel will not
`make its production pursuant to Realtek’s subpoena next week.”).
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`lacked authority to rule on party’s motion to quash nonparty subpoena requiring compliance in a
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`different district). ParkerVision did not move to quash, and the Court should reject ParkerVision’s
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`attempt to subvert a valid Rule 45 subpoena.
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`When a party like ParkerVision lacks standing to quash a subpoena in another district and
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`requests entry of a protective order to halt nonparty discovery, courts have generally required (i) a
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`showing that the requested discovery is outside the scope of Rule 26(b)(1), (ii) a showing that the
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`party “believes its own interest is jeopardized by discovery sought from a third person,” and (iii)
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`that “good cause” exists. See, e.g., Mot. at 3; Kilmon v. Saulsbury Indus., Inc., No. MO:17-cv-99,
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`2018 WL 5800759, at *4 (W.D. Tex. Feb. 13, 2018) (citing 9A Charles Alan Write & Aurther R.
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`Miller, FEDERAL PRACTICE AND PROCEDURE § 2035 (3d ed.)). “Good cause” only exists when
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`disclosure will result in a “clearly defined and serious injury to the party seeking the protective
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`order.” Ruffin v. BP Expl. & Prod., Inc., No. CV 20-334, 2021 WL 4060975, at *3 (E.D. La. Sept.
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`7, 2021) (emphasis added). The Motion does not make any such showings, does not justify this
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`Court acting sua sponte to quash the Subpoena, and it should be denied.
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`First, relevance under Rule 26(b)(1) is broad, and ParkerVision is wrong that the requested
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`documents are irrelevant to the parties’ claims and defenses in this case. ParkerVision argues that
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`the documents requested in the Subpoena are irrelevant because there were “different patents” and
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`“different experts” in the Intel cases, Mot. at 2, 5-6, but the patents asserted in this case are all
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`related to the patents asserted in the Intel cases, they share overlapping claim language and terms,
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`and the same prior art has been asserted in both the prior Intel cases and in this case. Moreover,
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`ParkerVision submitted two declarations from Dr. Michael Steer as exhibits to its claim
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`construction brief in this case—Dr. Steer is the same expert witness that authored the validity
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`report in the Intel case sought by the Subpoena. See Mot. at 5; ECF Nos. 74-4, 74-5.
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`All the asserted patents in this case share the same inventors, and claim the same outdated
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`technology as the patents asserted against Intel; in particular, down-converting an input signal into
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`an output signal using a module. See U.S. Pat. No. 6,049,706 at 45:13-35; U.S. Pat. No. 6,266,518
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`at 114:56-115:3; U.S. Pat. No. 7,292,835 at 51:5-29; U.S. Pat. No. 8,660,513 at 190:62-
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`191:34. The technological background of the asserted patents is so similar that during the
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`prosecution of the ’513 Patent (asserted against Realtek) and the ’528 Patent (asserted against
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`Intel), the examiner relied on the same prior art reference to reject the claims in both
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`applications. Ex. G at 4 (U.S. Pat. No. 8,660,513 (the “’513 Patent” Non-Final Rejection)); Ex. H
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`at 4 (U.S. Pat. No. 9,118,528 (the “’528 Patent” Non-Final Rejection)). This Court has similarly
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`construed claim terms recited in several of the patents asserted against both Intel and Realtek.
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`ParkerVision, Inc. v. Intel Corp., Case No. 6:20-cv-00108-ADA, ECF No. 75 at 3-4, 6 (W.D. Tex.
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`Jan. 26, 2021); ECF No. 93 at 29-30, 33. Further, in inter partes review proceedings against U.S.
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`Patent No. 7,539,474, Intel cited several prior art references that Realtek identifies in its invalidity
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`disclosures in this case. Intel Corp. v. ParkerVision, IPR2020-01302, Paper 3 at 21, 50, 68
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`(P.T.A.B. Sept. 2, 2020). Accordingly, the positions taken by ParkerVision, Intel, and their experts
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`as to the scope and content of the prior art, the claimed features in the asserted patents, and how
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`those features read on ParkerVision’s products for purposes of marking, are all relevant to the
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`parties’ claims and defenses in this case.
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`ParkerVision’s remaining arguments as to relevance are beside the point. Taking
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`ParkerVision at its word that the experts in Intel “did not analyze the patents or claims at issue in
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`this case,” Mot. at 5, as explained above, those experts’ positions as to the scope and content of
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`prior art and the disclosures of related patents are still relevant to Realtek’s invalidity defenses
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`here, particularly in view of the similarity of the asserted claims and claim language at issue in this
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`case. ParkerVision also argues that the experts in the Intel cases analyzed “whether Intel chips
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`infringed ParkerVision’s patents,” Mot. at 5, but the Subpoena does not seek any expert reports or
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`testimony concerning infringement, and Intel has not objected on that basis. ECF No. 107-1 at 9.
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`Finally, if the requested expert reports contain confidential information “other than Intel
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`confidential information” as ParkerVision claims, Mot. at 6, then Intel can simply redact that
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`information from the documents when it produces them. None of these arguments shows that the
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`documents requested in the Subpoena are outside the scope of discovery of Rule 26(b)(1), or that
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`production would cause anyone any injury.
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`Second, ParkerVision identifies no interest that would be jeopardized if Intel were to
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`produce a handful of expert reports and testimony concerning validity, and the parties’ briefing
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`concerning Intel’s marking defenses.3 ParkerVision therefore lacks standing to obtain issuance of
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`a protective order. ParkerVision may protect its interests by raising any valid objections to the use
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`of these documents in the future, either before or at trial. Moreover, the Court should reject
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`ParkerVision’s overheated rhetoric and incorrect assertions as to why Realtek issued the Subpoena.
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`Realtek only subpoenaed Intel after ParkerVision stated that it would not produce the requested
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`documents due to confidentiality restrictions, and ignored Realtek’s efforts to resolve those
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`objections through joint outreach to the former defendants and other nonparties. See Ex. C. In
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`response to the Subpoena, Intel authorized Realtek’s outside counsel to view the requested
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`documents, and Intel does not oppose production subject to the applicable protective order in this
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`case. Ex. F. Thus, contrary to the Motion, the Subpoena would have reduced the burdens on the
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`3 ParkerVision sought to compel Realtek to produce charts in support of Realtek’s marking
`defenses, alleging that Realtek failed to “perform[] a Rule 11 investigation” because Realtek did
`not review the sealed “information found in the Intel papers.” See ECF No. 97 at 3. These are
`the very papers that Realtek seeks now (and that ParkerVision has failed to produce).
`ParkerVision cannot rely on sealed Intel confidential information as both a sword and a shield.
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`parties, and protected ParkerVision’s interests by resolving ParkerVision’s confidentiality
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`objections regarding the Intel confidential information in ParkerVision’s files.
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`Third, ParkerVision has not, and cannot, meet its burden to demonstrate “good cause” to
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`obtain issuance of a protective order pursuant to Rule 26(c). “Good cause” only exists when
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`disclosure will result in a “clearly defined and serious injury to the party seeking the protective
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`order.” Ruffin, 2021 WL 4060975, at *3; see also Moncevais v. Herrick, No. 7:22-CV-00441,
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`2023 WL 4666612, at *2 (S.D. Tex. July 20, 2023) (denying protective order); Kroy IP Holdings,
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`LLC v. Safeway, Inc., No. 2:12-CV-00800-WCB, 2015 WL 432012, at *3 (E.D. Tex. Feb. 2, 2015)
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`(denying motion to redact). “The Fifth Circuit places the burden on the party moving for a
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`protective order to specifically show good cause and a specific need for protection.” iLife Techs.
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`v. Nintendo of Am. Inc., No. 3:13-cv-4987-M, 2017 U.S. Dist. LEXIS 239063, at *9 (N.D. Tex.
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`Mar. 1, 2017). This burden “contemplates a particular and specific demonstration of fact as
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`distinguished from stereotyped and conclusory statements.” MiMedx Grp., Inc. v. Tissue
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`Transplant Tech., Ltd., No. SA-14-CA-719, 2014 WL 12634550, at *2 (W.D. Tex. Oct. 31, 2014)
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`citing United States v. Garrett, 571 F.2d 1323, 1326 n.3 (5th Cir. 1978); Shenzhen Tange Li'an E-
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`Com. Co. v. Drone Whirl LLC, No. 1:20-CV-00738-RP, 2021 WL 1080795, at *2 (W.D. Tex. Mar.
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`19, 2021) (finding no good cause).
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`In the Motion, however, ParkerVision does not even attempt to argue that Intel’s
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`production of a limited set of expert reports, depositions, and briefing would cause ParkerVision
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`injury, much less a “clearly defined and serious injury” satisfying the good cause standard and
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`warranting this Court’s intervention. ParkerVision does not need this Court’s protection to prevent
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`Realtek from seeing ParkerVision’s own experts’ statements and testimony as to the validity of its
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`patents—indeed, ParkerVision has already injected certain of those statements into this case. See
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`Case 6:22-cv-01162-ADA Document 111 Filed 07/12/24 Page 10 of 12
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`ECF Nos. 74-4, 74-5. Granting the Motion would allow ParkerVision to hide statements made in
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`prior litigations that are likely contrary to its positions in this litigation, yet rely on other statements
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`without providing Realtek with the full context. Indeed, ParkerVision has already cherry-picked
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`which documents it will produce in this litigation while withholding others without any
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`justification or even identification of the documents it is withholding. ParkerVision can cite no
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`authority for its assertion that good cause may exist for entry of a protective order simply because
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`a party thinks a handful of documents requested by a Subpoena are irrelevant, or unhelpful to that
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`party’s case.
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`IV. CONCLUSION
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`Each of the documents requested from Intel is relevant to the parties’ claims and defenses
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`in this case, Realtek sought productions of those documents from Intel to resolve ParkerVision’s
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`confidentiality objections, and ParkerVision has not shown any valid basis for this Court to quash
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`the Subpoena or issue a Protective Order. Accordingly, for the reasons stated herein, Realtek
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`respectfully requests that the Court deny the Motion and permit Intel to produce the documents
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`responsive to the Subpoena.
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`Date: July 12, 2024
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`Respectfully submitted,
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`/s/ Mark D. Siegmund
`Mark D. Siegmund
`State Bar No. 24117055
`CHERRY JOHNSON SIEGMUND JAMES
`PLLC
`The Roosevelt Tower
`400 Austin Avenue, 9th Floor
`Waco, Texas 76701
`Telephone: (254) 732-2242
`Fax: (866) 627-3509
`msiegmund@cjsjlaw.com
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`Case 6:22-cv-01162-ADA Document 111 Filed 07/12/24 Page 11 of 12
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`Lisa K. Nguyen (admitted)
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, CA 94304
`Telephone: 650-320-1800
`lisanguyen@paulhastings.com
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`Grace I. Wang (admitted)
`PAUL HASTINGS LLP
`220 Park Avenue
`New York, NY 10166
`Telephone: 212-318-6833
`gracewang@paulhastings.com
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`Emily Lipka (pro hac vice)
`PAUL HASTINGS LLP
`2050 M Street, NW
`Washington, DC 20036
`Telephone: 202-551-1936
`emilylipka@paulhastings.com
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`Counsel for Realtek Semiconductor Corp.
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`Case 6:22-cv-01162-ADA Document 111 Filed 07/12/24 Page 12 of 12
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`CERTIFICATE OF SERVICE
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`I hereby certify that on July 12, 2024, all counsel of record were served with the foregoing
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`document in accordance with the Federal Rules of Civil Procedure.
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`By: /s/ Mark D. Siegmund
`Mark D. Siegmund
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