Case 6:22-cv-01162-ADA Document 113 Filed 07/16/24 Page 1 of 7
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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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`Defendants.
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`NO. 6:22-cv-01162-ADA
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`JURY TRIAL DEMANDED
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`ORDER ON DISCOVERY DISPUTES
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`On June 4, 2024, Defendant Realtek Semiconductor Corporation (“Realtek”) presented
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`to the Court discovery disputes regarding Plaintiff ParkerVision, Inc.’s (“ParkerVision”)
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`discovery responses. The parties’ positions, requested relief, and the Court’s Orders are as
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`follows:
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`1.
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`ParkerVision’s failure to provide its factual basis for conception,
`reduction to practice, and diligence in response to Interrogatory Nos. 6
`and 7.
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`ParkerVision refuses to provide the factual bases that support its claimed earlier
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`Realtek’s Position
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`priority dates for the asserted claims. Instead, ParkerVision argues that its identification of a
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`large swath of random documents accompanying its infringement contentions is sufficient. It
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`is not, particularly given the differences in each of the dozens of asserted claims.
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`Realtek is entitled to know ParkerVision’s factual basis for conception, its factual
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`basis for reduction to practice, and its factual basis for diligence for each of the asserted
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`claims. Only ParkerVision can provide context for these documents, and to the extent there
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`are gaps, Realtek is entitled to know whether ParkerVision intends to argue that any missing
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`PARKERVISION, INC.,
`
`Plaintiff,
`
`v.
`
`REALTEK SEMICONDUCTOR CORP.,
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`NO. 6:22-cv-01162-ADA
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`JURY TRIAL DEMANDED
`
`ORDER ON DISCOVERY DISPUTES
`
`On June 4, 2024, Defendant Realtek Semiconductor Corporation (“Realtek”) presented
`
`to the Court discovery disputes regarding Plaintiff ParkerVision, Inc.’s (“ParkerVision”)
`
`discovery responses. The parties’ positions, requested relief, and the Court’s Orders are as
`
`follows:
`
`1.
`
`ParkerVision’s failure to provide its factual basis for conception,
`reduction to practice, and diligence in response to Interrogatory Nos. 6
`and 7.
`
`ParkerVision refuses to provide the factual bases that support its claimed earlier
`
`Realtek’s Position
`
`priority dates for the asserted claims. Instead, ParkerVision argues that its identification of a
`
`large swath of random documents accompanying its infringement contentions is sufficient. It
`
`is not, particularly given the differences in each of the dozens of asserted claims.
`
`Realtek is entitled to know ParkerVision’s factual basis for conception, its factual
`
`basis for reduction to practice, and its factual basis for diligence for each of the asserted
`
`claims. Only ParkerVision can provide context for these documents, and to the extent there
`
`are gaps, Realtek is entitled to know whether ParkerVision intends to argue that any missing
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`Case 6:22-cv-01162-ADA Document 113 Filed 07/16/24 Page 2 of 7
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`limitations are not material to the claim, or if it intends to fill these gaps with witness
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`testimony, and who those witnesses will be.
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`ParkerVision litigated these patents before and knows the evidence it will rely on to
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`support these earlier priority dates. But rather than disclose what it knows, ParkerVision is
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`withholding this information and preventing Realtek from addressing it in its invalidity report
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`due on July 9. ParkerVision’s refusal to disclose is improper and prejudicial.
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`Requested Relief: ParkerVision must supplement its response to Interrogatory Nos. 6
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`and 7 within 7 days to include all factual bases it intends to rely on to establish the priority
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`dates for each claim including separately identifying its factual bases for conception, its
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`factual bases for reduction to practice, and its factual bases for diligence, and any witnesses it
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`intends to rely on.
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`ParkerVision’s Position
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`There is also no dispute as to issue. ParkerVision agrees to supplement its responses
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`to Interrogatory Nos. 6 and 7 by June 21.
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`ORDER
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`The Court, having considered both Realtek’s and ParkerVision’s positions on the
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`discovery dispute, as well as other papers and evidence submitted in support and opposition,
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`hereby Orders that Realtek’s requested relief is DENIED.
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`2.
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`ParkerVision’s failure to produce technical, financial, and marketing
`documents on its practicing products in response to RFP Nos. 10, 11, 13,
`14, and 66.
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`Realtek’s Position
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`ParkerVision claimed on its website that its PV5870, PVD4840R02, and PVD4941R
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`products practice the asserted patents, yet ParkerVision has failed to produce documents
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`relating to these products.
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`2
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`Case 6:22-cv-01162-ADA Document 113 Filed 07/16/24 Page 3 of 7
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`These documents are directly related to damages. For example, Georgia-Pacific
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`Factor 8 focuses on “[t]he established profitability of the product made under the patent; its
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`commercial success; and its current popularity.” Similarly, Georgia-Pacific Factor 10
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`evaluates “[t]he nature of the patented invention; the character of the commercial
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`embodiment of it as owned and produced by the licensor; and the benefits to those who have
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`used the invention.”
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`Requested Relief: ParkerVision must produce technical, financial, and marketing
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`documents on PV5870, PVD4840R02, and PVD4941R within 14 days.
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`ParkerVision’s Position
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`There is no dispute. ParkerVision will produce additional documents regarding
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`practicing products by June 21.
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`The Court, having considered both Realtek’s and ParkerVision’s positions on the
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`ORDER
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`discovery dispute, as well as other papers and evidence submitted in support and opposition,
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`hereby Orders that Realtek’s requested relief is DENIED.
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`3.
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`ParkerVision’s failure to provide charts showing how the marked
`products practice the patents in response to Interrogatory No. 8.
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`Realtek’s Position
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`ParkerVision will not confirm whether it will provide charts for the marked products.
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`Rather, ParkerVision argues that if it intends to rely on these products for the purpose of
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`conception, it will produce then.
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`But ParkerVision is not entitled to sandbag Realtek by deciding later that it will rely
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`on these products. Either these products support conception or not. And regardless, if
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`ParkerVision asserts that they practice, Realtek is entitled to know how ParkerVision asserts
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`they practice for non-infringement, invalidity, and damages purposes. See LifeNet Health v.
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`3
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`Case 6:22-cv-01162-ADA Document 113 Filed 07/16/24 Page 4 of 7
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`LifeCell Corp., 2014 WL 4152113, *4-*5 (E.D. Va. 2014) (granting accused infringer’s
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`motion to compel patentee to provide claim charts mapping the asserted patents).
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`Requested Relief: ParkerVision must provide charts showing how PV5870,
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`PVD4840R02, and PVD4841R practiced at least one claim of each patent within 14 days in
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`response to Interrogatory No. 8.
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`ParkerVision’s Position
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`ParkerVision has already produced the documents (the factual basis) that would
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`support an earlier conception date of the asserted patents and reduction to practice.
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`ParkerVision will agree to supplement its response to Interrogatory No. 8 by June 21.
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`But despite ParkerVision’s agreement to supplement, Realtek is demanding that
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`ParkerVision provide claim charts showing how PV5870, PVD4840R02, and PVD4841R
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`practice at least one claim of each asserted patent. Preparing a claim chart, however, is not
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`fact discovery of a party. Preparing a claim chart that maps claim elements to facts and
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`evidence is something an expert would do and include in an expert report.
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`Accordingly, in addition to the documents/factual record it already produced,
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`ParkerVision will agree to provide Realtek with the claim charts it seeks if ParkerVision
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`decides to rely on an earlier conception date and reduction to practice for any of the patents-
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`in-suit.
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`ORDER
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`The Court, having considered both Realtek’s and ParkerVision’s positions on the
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`discovery dispute, as well as other papers and evidence submitted in support and opposition,
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`hereby Orders that Realtek’s requested relief is DENIED.
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`4.
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`ParkerVision’s failure to produce documents related to its Milo product
`and Realtek’s RTL8811AU in response to RFP Nos. 10, 11, 13, 14, and 66,
`or RFP Nos. 9 and 64.
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`Realtek’s Position
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`4
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`Case 6:22-cv-01162-ADA Document 113 Filed 07/16/24 Page 5 of 7
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`Either ParkerVision’s Milo product incorporating the Realtek Wi-Fi chip
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`RTL8811AU practices the asserted patents and should have been marked, or it does not
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`practice the asserted patents and is a non-infringing alternative. Either way, discovery on this
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`product is relevant.
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`ParkerVision has not produced any documents related to this product, and its failure
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`prejudices Realtek.
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`Requested Relief: ParkerVision must produce documents related to its Milo product
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`and Realtek’s RTL8811AU within 14 days.
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`ParkerVision’s Position
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`Realtek’s inquiry about ParkerVision’s Milo product is newly-raised, but in any
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`event, ParkerVision informed Realtek’s counsel that it will investigate whether it has any
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`responsive documents and produce them. ParkerVision will complete its investigation and
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`produce any responsive documents, to the extent they exist, by June 21. There is, therefore,
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`no dispute between the parties.
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`ORDER
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`The Court, having considered both Realtek’s and ParkerVision’s positions on the
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`discovery dispute, as well as other papers and evidence submitted in support and opposition,
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`hereby Orders that Realtek’s requested relief is DENIED.
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`5.
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`ParkerVision’s failure to produce documents that it produced in the Intel,
`Hisense, LG, and TCL litigations in response to RFP Nos. 47 and 48.
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`Realtek’s Position
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`For the last two months, ParkerVision has promised to confirm whether it produced in
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`this case the documents ParkerVision produced in its prior litigations involving the asserted
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`patents.
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`5
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`Case 6:22-cv-01162-ADA Document 113 Filed 07/16/24 Page 6 of 7
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`These documents are plainly relevant. Indeed, ParkerVision previously complained
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`that Realtek did not do its “due diligence” when identifying ParkerVision’s Milo product as a
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`practicing product since it was litigated in the Intel case. But the briefing is redacted and
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`ParkerVision has failed to produce documents that it produced in the Intel case.
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`ParkerVision’s failure to produce prejudices Realtek.
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`Requested Relief: ParkerVision must produce documents it produced in the Intel,
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`Hisense, LG, and TCL litigations within 7 days.
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`ParkerVision’s Position
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`ParkerVision’s document production is substantially complete. But ParkerVision
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`agrees to produce any additional documents (relevant and responsive to Realtek's discovery
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`requests) that were produced in the Intel, Hisense, LG and TCL cases by June 21.
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`ORDER
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`The Court, having considered both Realtek’s and ParkerVision’s positions on the
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`discovery dispute, as well as other papers and evidence submitted in support and opposition,
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`hereby Orders that Realtek’s requested relief is DENIED.
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`6.
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`ParkerVision’s failure to produce negotiations relating to its licenses in
`response to RFP No. 8.
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`Documents reflecting the negotiation of licenses to the asserted patents, including
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`Realtek’s Position
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`draft licenses and term sheets, are relevant to determine a reasonable royalty in this case.
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`Notably, ParkerVision alleged that its licensees Buffalo and Hisense infringed based, in part,
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`on the Realtek Wi-Fi chips. As such, any discussion of the number of units covered by the
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`license is highly relevant to damages here.
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`Requested Relief: ParkerVision must produce negotiations relating to its licenses
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`within 14 days.
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`ParkerVision’s Position
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`6
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`Case 6:22-cv-01162-ADA Document 113 Filed 07/16/24 Page 7 of 7
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`ParkerVision already produced its final executed license agreements. The final
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`agreements between ParkerVision and its licensees govern their relationship, not drafts or
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`email communications, which the Court’s OGP normally excludes from the scope of
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`discovery unless there is good cause. Thus, documents and email communications relating to
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`the negotiation of the agreements and drafts are not relevant to the parties’ claims and
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`defenses, and not proportional to the needs of this case and the issues at stake. ParkerVision
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`has already produced its licenses and should not be compelled to produce negotiation emails
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`and any drafts of license agreements it has entered over the years.
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`The Court, having considered both Realtek’s and ParkerVision’s positions on the
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`ORDER
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`discovery dispute, as well as other papers and evidence submitted in support and opposition,
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`hereby Orders that Realtek’s requested relief is DENIED.
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`SIGNED on this 16th day of July, 2024.
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`7
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