Case 6:22-cv-01162-ADA Document 111-1 Filed 07/12/24 Page 1 of 25
`Case 6:22-cv-01162-ADA Document 111-1 Filed 07/12/24 Page 1 of 25
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`EXHIBIT A
`EXHIBIT A
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`Case 6:22-cv-01162-ADA Document 111-1 Filed 07/12/24 Page 2 of 25
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`PARKERVISION, INC.,
`Plaintiff,
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`v.
`REALTEK SEMICONDUCTOR CORP.,
`Defendant.
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`Case No. 6:22-cv-01162-ADA
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`REALTEK SEMICONDUCTOR CORP.’S FIRST SET OF REQUESTS FOR
`PRODUCTION TO PLAINTIFF PARKERVISION, INC.
`REGARDING FACT DISCOVERY
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`Pursuant to Rules 26 and 34 of the Federal Rules of Civil Procedure, Defendant Realtek
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`Semiconductor Corp. (“Realtek”) requests that Plaintiff ParkerVision, Inc. (“Plaintiff” or
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`“ParkerVision”) respond to the following Requests for Production (“Requests”) in accordance
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`with the Federal Rules of Civil Procedure, and apply the Definitions and Instructions set forth
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`below.
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`DEFINITIONS AND INSTRUCTIONS
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`1.
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`“You,” “Plaintiff,” or “ParkerVision” means (i) Plaintiff ParkerVision, Inc., (ii)
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`its present or former directors, principals, owners, members, officers, employees, agents,
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`representatives, accountants, investigators, consultants, attorneys, and predecessors or successors
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`in interest, and any parent, subsidiary, joint venture, affiliated entities or other legal entities that
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`are wholly or partially owned or controlled, either directly or indirectly, that were in existence
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`during the applicable period of time covered by these Requests; (iii) any other Person acting on
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`their behalf or on whose behalf they acted; and (iv) any other Person otherwise subject to their
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`control, or which controls them, or with which they are under common control.
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`2.
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`“Defendant” or “Realtek” means Realtek Semiconductor Corp.
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`3.
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`4.
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`“Party” or “Parties” refers to the Defendant and the Plaintiff.
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`“Action” means the case captioned ParkerVision, Inc. v. Realtek Semiconductor
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`Corp., Case No. 6:22-cv-01162-ADA in the Western District of Texas, and any appeals thereof.
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`5.
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`“Complaint” means the Complaint for Patent Infringement filed by ParkerVision,
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`Inc. in this Action on November 10, 2022, as well as any supplements thereof or amendments
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`thereto.
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`6.
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`“’706 Patent” means U.S. Patent No. 6,049,706—including any reexamination
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`certificate and certificate of correction.
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`7.
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`“’518 Patent” means U.S. Patent No. 6,266,518—including any reexamination
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`certificate and certificate of correction.
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`8.
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`“’835 Patent” means U.S. Patent No. 7,292,835—including any reexamination
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`certificate and certificate of correction.
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`9.
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`“’513 Patent” means U.S. Patent No. 8,660,513—including any reexamination
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`certificate and certificate of correction.
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`10.
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`“Asserted Patents” or “Patents-in-Suit” mean the ’706 Patent, the ’518 Patent, the
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`’835 Patent, and the ’513 Patent.
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`11.
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`“Related Application” means any parent or ancestral application related in any
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`way to the Asserted Patents and any continuing application, continuation-in-part application,
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`divisional application, file-wrapper continuation, reexamination proceeding, reissue application,
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`abandoned application or foreign counterpart application for that patent.
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`12.
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`13.
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`“Related Patent” means any patent that issued from any Related Application.
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`“Prior Art” has the same meaning as it has in the applicable version of 35 U.S.C.
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`§§ 102 and/or 103. This meaning includes any patent, printed publication, physical product or
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`component, prior knowledge, prior use, prior sale or offer for sale, or other act or event defined
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`in 35 U.S.C. §§ 102 and/or 103, taken alone or in combination.
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`14.
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`“Written Description” shall refer to the requirement that “[t]he specification shall
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`contain a written description of the invention” as set forth in 35 U.S.C. § 112.
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`15.
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`“Enabling Disclosure” shall refer to the requirement that “[t]he specification shall
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`contain a written description of . . . the manner and process of making and using [the invention],
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`in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it
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`pertains, or with which it is most nearly connected, to make and use the same…” as set forth in
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`35 U.S.C. § 112.
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`16.
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`“Named Inventor” shall mean any person listed as an inventor on the face of any
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`patent-in-suit.
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`17.
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`18.
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`“Third Party” means any person or entity other than ParkerVision and Realtek.
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`“Document” is used in the most comprehensive and inclusive sense permitted by
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`the Federal Rules of Civil Procedure, and includes but is not limited to all of the following matter
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`in Your actual or constructive possession, custody, or control: all written, handwritten,
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`typewritten, drawn, graphic, printed, recorded, magnetic, optical, electronic, or otherwise
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`produced or reproduced matter or medium of any kind on which any intelligence or information
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`is recorded or stored, or from which any intelligence or information can be obtained, translated,
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`if necessary, by ParkerVision through detection devices into reasonably usable form.
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`“Document” includes but is not limited to the original and any non-identical copy, whether
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`different from the original because of any notes, marks, alterations, writings, or other changes
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`made on said copy or otherwise. By way of example, and not by way of limitation, “Document”
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`includes any advertising literature; agreement; archive record; bank record or statement;
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`blueprint; book; book of account; booklet; brochure; calendar; chart; check; circular; coding
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`form; communication (including without limitations intra- or inter-company communication);
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`compilation; computer printout; computer-readable form; computer software and firmware,
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`including supporting indices, data, documentation, flow charts, comments, object code, source
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`code, and computer programs relating thereto; contract; copy; correspondence (including without
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`limitation cablegrams, radiograms, telegrams, and telefaxes); data (in any form); database; diary;
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`direction; display; draft of any document; drawing; e-mail or electronic mail; file (whether
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`current or expired); film; flyer; forecast; form; graph; handbook; history; index; information that
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`has been stored, recorded, or transmitted electronically (including but not limited to voicemail,
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`video mail, and electronic mail, and information stored or recorded on, or transmitted by, cellular
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`telephones, smartphones, or other communication devices, personal digital assistants or other
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`handheld computers, home or business computers, desktop computers, laptop computers, main-
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`frame computers, notebook computers, personal computers, networked or stand-alone
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`computers, or Internet websites); instruction; instruction book, booklet, manual, or sheet;
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`invoice; job requisition; ledger; legal pleadings or filings of any kind; letter; license; machinery
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`manual; magazine; magnetic media of any kind (including but not limited to disks, floppy disks,
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`tapes, back-up tapes, or other media containing computer software, firmware, or data of any
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`kind); manual; map; memorandum; minutes or other records of meetings, conferences, or
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`telephone or intercom conversations, including lists of persons attending the meetings,
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`conferences or conversations; newsletter; newspaper or other clipping; note; notebook (including
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`but not limited to laboratory, engineering, or other notebooks); operator manual; opinion; optical
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`disc or other optical medium of any kind containing computer software, firmware, or data of any
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`kind; pamphlet; paper; patent, patent application, periodical or other publication; phonorecord;
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`photograph (whether digital or analog); portfolio; PowerPoint presentation or any portion
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`thereof; press release; price list; print; printed circuit board; project history; promotional
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`literature; proposal; quotation; receipt; record; recorded Read-Only-Memory (ROM); recording;
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`report; sales literature; schematic; server log; sketch; slide; solicitation; spreadsheet; statement;
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`statistical compilation; stenographic notes; study; summary (including any memoranda, minutes,
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`notes, records, or summary of any: (a) telephone or intercom conversation or message, (b)
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`personal conversation or interview, or (c) meeting or conference); telephone log; test results;
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`text; transparency; travel or expense report or record; video mail; video recording; video tape;
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`voice mail; voice recording; voucher; work paper or worksheet; written contract, license, or sales
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`agreement; written offer for purchase or sale; and any other written or documentary material of
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`any nature.
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`19.
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`“Communication” and “communications” shall mean any transmission of
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`information by any means, including without limitation telephone conversations, letters,
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`telegrams, teletypes, telexes, telecopies, telefacsimiles, computer linkups, wireless transmissions,
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`written memoranda, electronic devices, voicemail, e-mail, and face-to-face conversations.
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`20.
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`“Thing” or “Things” is used in the most comprehensive and inclusive sense
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`permitted by the Federal Rules of Civil Procedure, and includes, but is not limited to, objects of
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`every kind and nature other than a Document. By way of example, and not by way of limitation,
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`“thing” or “things” includes prototypes, models, specimens, and the like, and commercially
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`manufactured items.
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`21.
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`“Agreement” shall mean any contract, undertaking, promise, covenant,
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`arrangement, or understanding, or other agreement of whatever kind or nature whatsoever,
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`whether written or oral, including all supplements and additions, changes, amendments, and
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`modifications therefor, and all cancellations, revocations, rescissions, and terminations thereof.
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`22.
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`“Person” shall mean: (a) natural persons (also referred to as “individuals”); (b)
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`business or legal entities, including, without limitation, corporations, partnerships, joint ventures,
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`firms, associations, professional corporations, organizations, and proprietorships; and (c)
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`governmental bodies or agencies.
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`23.
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`“Address” shall mean the city, state, and country of the residence or place of
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`business. If the person or business has more than one Address, provide each.
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`24.
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`“Discuss,” “concern” or “concerning,” “refer to,” and “relate to” or “relating to”
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`shall mean, directly or indirectly, and in whole or in part, pertaining to, mentioning, commenting
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`on, connected with, describing, analyzing, explaining, showing, reflecting, identifying, setting
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`forth, dealing with, embodying, comprising, consisting of, containing, constituting, resulting
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`from, recording, or in any way relevant to, a particular subject.
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`25.
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`“Licensee” or “Assignee” means any entity with which Plaintiff has a license,
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`assignment, covenant not to sue, or other understanding, written, oral or implied, that the entity
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`has any rights to one or more of the Asserted Patents or related patents, may practice one or more
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`claims of one or more of the Asserted Patents or related patents and/or that Plaintiffs will not file
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`suit or otherwise enforce against that entity one or more claims of one or more of the Asserted
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`Patents or related patents.
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`26.
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`“Accused Products” refers to the products ParkerVision identifies in Section B of
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`its Amended Disclosure of Preliminary Infringement Contentions dated July 18, 2023.
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`27.
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`“Potentially Infringing Products” refers to products [made by Realtek] that
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`ParkerVision does not explicitly identify or describe in the Complaint or other pleadings, but that
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`Realtek has reason to believe, based on the Plaintiff’s allegations, discovery requests, or other
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`Communications, may be within the scope of one or more claims of at least one of the Patents-
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`in-Suit.
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`28.
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`“Related Actions” means any proceedings involving the Patents-in-Suit and/or the
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`Accused Products and/or Potentially Infringing Products including but not limited to
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`ParkerVision, Inc. v. MediaTek Inc. et al., 6:23-CV-00732 (W.D. Tex.); ParkerVision, Inc. v.
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`NXP Semiconductors N.V. et al., 6:23-CV-00389 (W.D. Tex.); ParkerVision, Inc. v. Texas
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`Instruments Inc., 6:23-CV-00384 (W.D. Tex.); ParkerVision, Inc. v. MediaTek Inc. et al., 6:23-
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`CV-00375 (W.D. Tex.); ParkerVision, Inc. v. MediaTek Inc. et al., 6:22-CV-01163 (W.D. Tex.);
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`ParkerVision, Inc. v. LG Electronics Inc., 6:21-CV-00520 (W.D. Tex.); ParkerVision, Inc. v.
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`TCL Industries Holdings Co., Ltd. et al., 6:20-CV-00945 (W.D. Tex.); ParkerVision, Inc. v. Intel
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`Corporation, 6:20-CV-00108 (W.D. Tex.); ParkerVision, Inc. v. Intel Corporation, 6:20-CV-
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`00562 (W.D. Tex.); ParkerVision, Inc. v. Hisense Co., Ltd. et al, 6:20-CV-00870 (W.D. Tex.);
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`ParkerVision, Inc. v. ZyXEL Communications Corporation, 6:20-CV-01010 (W.D. Tex.);
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`ParkerVision, Inc. v. Buffalo Inc., 6:20-CV-01009 (W.D. Tex.); ParkerVision, Inc. et al v. TCL
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`Technology Group Corp., 5:20-CV-01030 (C.D. Cal.); ParkerVision, Inc. v. Qualcomm
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`Incorporated et al., 6:14-CV-00687 (M.D. Fla.); ParkerVision, Inc. v. Qualcomm Incorporated,
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`3:11-CV-00719 (M.D. Fla.); IPR2014-00946; IPR2021-00985 and IPR2022-00246.
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`29.
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`As used herein, “transfer” or “transferred” shall mean any transfer of ownership,
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`possession, use, or control, by sale, lease, lending or other means.
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`30.
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`31.
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`The singular includes the plural and vice versa.
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`As used herein, “any,” “all,” “every,” or “each” should be understood to include
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`and encompass “any and all.”
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`32.
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`As used herein, “day” or “date” shall mean the exact day, month, and year if
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`ascertainable, or if not, the best available approximation (including relationship to other events).
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`33.
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`The terms “identity” and “identify”:
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`(a) When used with respect to a natural person, shall mean to state the
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`person’s full name and present or last known home and business Address, telephone number,
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`employer or business affiliation, employment history, and educational background;
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`(b) When used with respect to a document, shall mean to state the author or
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`originator of the document, each person to whom the document was addressed and to whom a
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`copy of the document was given or sent, the date appearing on the face of the document, the date
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`of preparation of the document, the date and manner of distribution of the document, the general
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`nature or a description of the document (i.e., whether it is a letter, memorandum, drawing, etc.)
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`and the number of pages of which it consists, the subject of the document, a brief description of
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`the contents of the document, the identity of the person who can authenticate the document, the
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`source of the document, and the present or last-known custodian of the document;
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`(c) When used with respect to a patent or patent application, shall mean to
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`state: (i) its country; (ii) its patent and application numbers; (iii) its dates of filing, publication,
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`and grant; (iv) the names of the individual patentees (as the term “patentees” is used under
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`United States practice) and corporate applicants or assignees; (v) its title; (vi) the identity of each
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`corresponding U.S. and foreign patent application and patent; (vii) the docket number or other
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`designation thereof used by or on behalf of ParkerVision; and
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`(d) When used with respect to a corporation, shall mean to state: (i) its name;
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`(ii) its place of incorporation or organization; (iii) its principal place of business; and (iv) the
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`identity of all persons affiliated with the corporation who have knowledge of the matter with
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`respect to which it is named in response to a Request.
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`34.
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`The terms “and” and “or” shall be construed conjunctively when such
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`construction would bring within the Requested Documents, Things, or information that would
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`otherwise be outside of its scope, and shall be construed disjunctively when such construction
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`would bring within the Requested Documents, Things, or information that would otherwise be
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`outside of its scope.
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`35.
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`The use of a verb in any tense shall be construed as including the use of the verb
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`in all other tenses.
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`36.
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`In answering the following Requests, furnish all available information, including
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`information in the possession, custody, or control of any of Plaintiff’s attorneys, directors,
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`officers, agents, employees, representatives, associates, investigators or division affiliates,
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`partnerships, parents or subsidiaries, and persons under Plaintiff’s control, who have the best
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`knowledge, not merely information known to Plaintiff based on Plaintiff’s own personal
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`knowledge. If you cannot fully respond to the following Requests after exercising due diligence
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`to secure the information requested thereby, so state, and specify the portion of each Request that
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`cannot be responded to fully and completely. In the latter event, state what efforts were made to
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`obtain the requested information and the facts relied upon that support the contention that the
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`Requests cannot be answered fully and completely; and state what knowledge, information or
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`belief Plaintiff has concerning the unanswered portion of any such Requests.
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`37.
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`If ParkerVision’s response to a particular Request is a statement that ParkerVision
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`lacks the ability to comply with that Request, ParkerVision must specify whether the inability to
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`comply is because the particular item or category of information never existed, has been
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`destroyed, has been lost, misplaced, or stolen, or has never been, or is no longer, in
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`ParkerVision’s possession, custody, or control, in which case the name and Address of any
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`person or entity known or believed by you to have possession, custody, or control of that
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`information or category of information must be identified.
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`38.
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`If, because of a claim of privilege, You do not respond to any Request or subpart
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`thereof, or You withhold any document or thing, set forth the privilege claimed, the facts upon
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`which You rely to support the claim of privilege, and furnish a list identifying each Document
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`and Thing for which the privilege is claimed, together with the following additional information:
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`(a)
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`A brief description of the nature and subject matter of the document or
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`thing, including the title and type of document (i.e., whether it is a letter, memorandum, drawing,
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`etc.) or thing;
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`(b)
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`(c)
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`(d)
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`The document’s date or the thing’s date of creation;
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`The identity of the author(s) or creator(s);
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`The identity of the person(s) to whom the document is addressed or to
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`whom the thing has been provided, including all persons who received copies, photographs, or
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`other representations of the document or thing;
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`(e)
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`(f)
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`(g)
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`(h)
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`(i)
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`The identity of the person(s) to whom the document or thing was sent;
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`The identity of the present custodian of the document or thing;
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`The current location of the document or thing;
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`For each document, its number of pages; and
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`The Request or subpart to which the document, information, or other thing
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`is otherwise responsive.
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`39.
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`The singular and masculine form of a noun or pronoun shall embrace, and shall be
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`read and applied as, the plural or the feminine or neuter, as the particular context makes
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`appropriate.
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`40. With respect to each of the foregoing Requests, unless otherwise stated in a
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`particular Request, the information sought is that which is current to the date of ParkerVision’s
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`response thereto.
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`41.
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`If You object to answering any Request, state the basis of Your objection(s),
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`identify the type or categories of information, and respond with respect to all information for
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`which an objection does not apply.
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`42.
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`ParkerVision’s obligation to respond to these Requests is continuing and its
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`responses are to be supplemented to include subsequently acquired information in accordance
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`with the requirements of the Federal Rules of Civil Procedure.
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`REQUESTS FOR PRODUCTION
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`REQUEST NO. 1:
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`All Documents and Things referring or relating to the Asserted Patents.
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`REQUEST NO. 2:
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`All Documents and Things relating to any plan or decision to file this Action against
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`Realtek.
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`REQUEST NO. 3:
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`All Documents and Things relating to any Third Party’s past or present right, title, or
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`interest in the Patents-in-Suit and the outcome of this Action.
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`REQUEST NO. 4:
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`All Documents and Things relating to ParkerVision’s claim of damages, including
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`Documents and Things supporting or refuting ParkerVision’s contention that this is an
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`exceptional case within the meaning of 35 U.S.C. § 285, and Documents and Things concerning
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`any reasonable royalty to which ParkerVision contends it is entitled and the basis for its
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`computation, including Documents and Things pertaining to the royalty rate ParkerVision relies
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`on for computation, and any of the fifteen factors given for determining a reasonable royalty in
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`Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970),
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`modified and aff’d, 446 F.2d 295 (2d Cir. 1971).
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`REQUEST NO. 5:
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`All Documents and Things relating to any valuation of the Asserted Patents, including the
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`valuation of any portfolio or collection of patents in which one or more of the Asserted Patents
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`has been offered for sale, license, assignment, or transfer.
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`REQUEST NO. 6:
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`All Agreements referring or relating to the Asserted Patents.
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`REQUEST NO. 7:
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`All Documents and Things referring or relating to ParkerVision’s claim of ownership or
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`rights to the Asserted Patents, including Documents referring or relating to any assignment,
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`license, offer to license, sale, offer for sale, or transfer of any right or interest (legal or financial)
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`in the Asserted Patents.
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`REQUEST NO. 8:
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`All Documents and Things referring or relating to the licensing of the Asserted Patents,
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`including but not limited to each Agreement and draft Agreement in which any right, title, or
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`interest in the Asserted Patents was licensed, Communications or Documents reflecting any
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`proposed or actual royalty rate or payment for licensing the Asserted Patents, cease-and-desist
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`letters involving the Asserted Patents and Communications or Documents relating thereto, and
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`Communications or Documents reflecting discussions, negotiations, inquiries, or proposals
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`relating to the licensing of the Asserted Patents, including but not limited to any valuations
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`relating thereto.
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`REQUEST NO. 9:
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`All Documents and Things relating to any non-infringing alternative to any product
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`believed to infringe or accused of infringing any asserted claim of the Asserted Patents, whether
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`or not You contend such items to be non-infringing alternatives by ParkerVision.
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`REQUEST NO. 10:
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`All Documents and Things referring or relating to ParkerVision’s costs, revenues,
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`income, profits, or losses, including all financial and income statements on a quarterly and
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`annual basis for each year since ParkerVision was founded, annual reports, and shareholder
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`reports.
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`REQUEST NO. 11:
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`All Documents and Things supporting or refuting ParkerVision’s contention that as a
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`result of Realtek’s alleged infringement of the Asserted Patents, ParkerVision has been injured
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`and been caused financial damage, including Documents and Things that ParkerVision reviewed,
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`referenced, consulted, or relied upon in forming the basis for its allegations that any alleged
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`infringement was the cause of injury to ParkerVision, Documents and Things referring or
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`relating to the nature and amount of any injury to ParkerVision, and Documents and Things
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`concerning the amount of financial damages which ParkerVision contends it suffered and the
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`basis for its computation.
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`REQUEST NO. 12:
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`All Documents and Things relating to ParkerVision’s contention that the Accused
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`Products infringe the asserted claims of the Asserted Patents, either literally or under the doctrine
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`of equivalents, and either directly or indirectly.
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`REQUEST NO. 13:
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`13
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`Case 6:22-cv-01162-ADA Document 111-1 Filed 07/12/24 Page 15 of 25
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`All Documents and Things relating to any reverse engineering, inspection, testing,
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`evaluation, teardown, or analysis of any Accused Products, including the source of the
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`schematics identified in ParkerVision’s Reply to Realtek’s Motion to Dismiss (Dkt. 56) at 13.
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`REQUEST NO. 14:
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`All Documents and Things relating to any reverse engineering, inspection, testing,
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`evaluation, teardown, or analysis of any of Realtek’s products.
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`REQUEST NO. 15:
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`All Documents and Things relating to Your analysis, consideration, or evaluation of
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`whether any product, device, apparatus, method, process, or system infringes any asserted claim
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`of any of the Patents-in-Suit, including, without limitation, all Documents relating to any test,
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`evaluation, or reverse engineering of any product, device, apparatus, method, process, or system.
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`REQUEST NO. 16:
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`All Documents and Things relating to any product, device, apparatus, method, process, or
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`system that You contend embodies or practices any asserted claim of the Patents-in-Suit, either
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`alone or in combination, including any such product, device, apparatus, method, process, or
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`system marketed by You or any Licensee to the Patents-in-Suit.
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`REQUEST NO. 17:
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`All Documents and Things referring or relating to activities undertaken to commercialize
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`the claimed subject matter of the Patents-in-Suit, whether successful or not, including all
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`contracts, purchase orders, invoices, advertisements, marketing materials, offer letters, beta site
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`Case 6:22-cv-01162-ADA Document 111-1 Filed 07/12/24 Page 16 of 25
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`testing agreements, and third party or joint development agreements exchanged with any third
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`party, sufficient to show each discussion with or disclosure to a third party.
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`REQUEST NO. 18:
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`All Documents and Things referring or relating to any activities undertaken to enforce the
`Patents-in-Suit against any Person.
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`REQUEST NO. 19:
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`All Documents and Things relating to any plan, proposal, or strategy for enforcing the
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`Patents-in-Suit.
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`REQUEST NO. 20:
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`All Documents and Things relating to any opinions about the patentability, enforceability,
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`scope, or infringement of the Patents-in-Suit, including but not limited to statements by any
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`Named Inventor, or opinions of counsel.
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`REQUEST NO. 21:
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`All Documents and Things relating to any plan or decision to seek patent protection for
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`the claimed subject matter of the Patents-in-Suit.
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`REQUEST NO. 22:
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`All Documents and Things relating to the preparation and filing of any applications that
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`led to the issuance of the Patents-in-Suit.
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`REQUEST NO. 23:
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`All Documents and Things relating to the prosecution of the Patents-in-Suit.
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`REQUEST NO. 24:
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`15
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`Case 6:22-cv-01162-ADA Document 111-1 Filed 07/12/24 Page 17 of 25
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`All Documents relating to any plan or decision to cite or not to cite prior art to the U.S.
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`Patent and Trademark Office during the prosecution of the Patents-in-Suit.
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`REQUEST NO. 25:
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`All Documents and Things referring or relating to all Prior Art that pertains to the
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`claimed subject matter of the Patents-in-Suit, whether or not cited to the U.S. Patent and
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`Trademark Office, including all Prior Art known to You, the Named Inventors of the Patents-in-
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`Suit, and the prosecuting attorneys prior to and during the pendency of the Asserted Patents, and
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`any Prior Art known as of the present.
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`REQUEST NO. 26:
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` All Documents and Things relating to the identification, selection, or determination of
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`the proper Named Inventors for the Patents-in-Suit.
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`REQUEST NO. 27:
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`All Documents and Things relating to communications between You and any Named
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`Inventor relating to the Patents-in-Suit.
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`REQUEST NO. 28:
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`All Documents and Things relating to any problem allegedly solved by any invention
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`disclosed or claimed in the Patents-in-Suit.
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`REQUEST NO. 29:
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`All Documents and Things relating to the conception, diligence, reduction-to-practice,
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`design, and/or development of the Patents-in-Suit.
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`REQUEST NO. 30:
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`All Documents and Things referring or relating to any experimentation or testing of the
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`claimed subject matter of the Patents-in-Suit before the issuance of the Patents-in-Suit.
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`Case 6:22-cv-01162-ADA Document 111-1 Filed 07/12/24 Page 18 of 25
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`REQUEST NO. 31:
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`All Documents and Things referring or relating to the contributions of each Person
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`involved in the activities that resulted in the issuance of the Patents-in-Suit, including, but not
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`limited to, all files relating to such contributions of each such Person.
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`REQUEST NO. 32:
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`For each Person who is alleged to have invented any invention claimed in the Asserted
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`Patents, any Related Patents, Related Application(s), or foreign counterparts: all publications
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`authored by such Person regarding the subject matter of the Asserted Patents, including articles,
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`books, and presentations; all patents, patent file histories, and patent applications on which such
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`Person is a named inventor; and Documents and Things sufficient to show the background,
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`education, and work history of such Person, including a resume or curriculum vitae.
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`
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`REQUEST NO. 33:
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`All invention disclosure statements, lab notebooks, source code, schematics, flow charts,
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`artwork, and other Documents and Things making any reference to, or referring in any way to,
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`the conception, design, development activities, reduction-to-practice, or commercialization of the
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`subject matter of each asserted claim of the Asserted Patents, including Documents and Things
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`that were created on or before the date of application for the Asserted Patents or the priority date
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`claimed, whichever is earlier, evidencing the conception, reduction-to-practice, design, and
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`development of each claimed invention, and all drawings or written descriptions of the claimed
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`subject matter of the Asserted Patents.
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`REQUEST NO. 34:
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`If You contend that any claim of any Asserted Patent is entitled to a priority date prior to
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`Case 6:22-cv-01162-ADA Document 111-1 Filed 07/12/24 Page 19 of 25
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`the filing date of that patent, all Documents and Things relating to any factual and legal bases for
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`that contention.
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`REQUEST NO. 35:
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`All Documents and Things referring or relating to the level of skill in the art relevant to
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`any asserted claim of the Asserted Patents.
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`REQUEST NO. 36:
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`All Documents and Things referring or relating to any secondary considerations or
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`objective indicia of non-obviousness that You contend shows the non-obviousness of any
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`asserted claim of the Asserted Patents, including but not limited to Documents and Things
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`sufficient to show any nexus between any claimed secondary considerations or objective indicia
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`of non-obviousness to any claimed inventions, long-felt need for the subject matter of the claim,
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`failure of others to solve a problem solved by the subject matter of the claim, unexpected results,
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`or commercial success.
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`REQUEST NO. 37:
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`All Documents and Things referring or relating to drawings or written descriptions of the
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`claimed subject matter of the Patents-in-Suit.
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`REQUEST NO. 38:
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`All Documents and Things referring or relating to disclosures to any Person of any aspect
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`of the development of the claimed subject matter of the Patents-in-Suit, including the first
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`disclosure, whether oral or written, of any invention disclosed or claimed in the Patents-in-Suit.
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`REQUEST NO. 39:
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`All Documents and Things re