Case 6:22-cv-01162-ADA Document 116 Filed 07/19/24 Page 1 of 6
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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` Plaintiff,
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`PARKERVISION, INC.,
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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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` JURY TRIAL DEMANDED
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`PLAINTIFF PARKERVISION INC.’S REPLY
`IN SUPPORT OF MOTION FOR A PROTECTIVE ORDER
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`Case 6:22-cv-01162-ADA Document 116 Filed 07/19/24 Page 2 of 6
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`I.
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`Argument.
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`First, Realtek concedes that the Intel litigation was based on entirely different patents,
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`different products, and different experts than in the Realtek case, and offers no analysis regarding
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`how the material it seeks from the Intel case is relevant to the Realtek case.
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`Realtek argues that the patents asserted in this case are all “related to” the patents asserted
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`in the Intel case, that they share overlapping claim language and terms, and that a same single
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`piece of prior art has been asserted in both the Intel case and the Realtek case. Opp. at 6. But
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`Realtek fails to provide the Court any explanation of how such high-level similarities warrant
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`producing expert reports, deposition transcripts, and briefing containing Intel and third-party
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`confidential information.
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`Realtek instead ventures into a fishing expedition to find any connection between the
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`Intel case and the Realtek case—e.g., the patents have the same inventors, this Court has
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`construed overlapping claim terms, that one piece of prior art was cited during prosecution of
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`two distinct non-overlapping patents, and that there exists prior art references Realtek identified
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`in its invalidity contentions as did Intel in a non-related inter partes review proceedings before
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`the Patent Trial and Appeal Board. Opp at 6-7. But Realtek offers no explanation or analysis
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`regarding how these high-level connections apply to its invalidity or infringement defenses in the
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`Realtek case. These facts do not meet the necessary burden of production. Fed. R. Civ. P.
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`26(b)(1) (“whether the burden or expense of the proposed discovery outweighs its likely
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`benefit.”).
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`Tellingly, Realtek fails to even acknowledge that Rule 26(b)(1) does not confer blanket
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`relevance for any prior litigation merely because it included a “related patent” or because of an
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`overlapping piece of prior art referenced in an irrelevant PTAB proceeding.
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`Case 6:22-cv-01162-ADA Document 116 Filed 07/19/24 Page 3 of 6
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`Moreover, Realtek ignores, and fails to distinguish, the critical differences between the
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`Realtek case and the Intel case such that the documents it seeks cannot be relevant: (i) there is
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`not a single overlapping patent, (ii) there is not a single overlapping accused product, (iii) Dr.
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`Subramanian is not an expert in the Realtek case nor opined on any Realtek product, (iv) Dr.
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`Steer1 is not an expert in the Realtek case nor has he opined on any Realtek product, and (v) with
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`regard to validity and infringement, neither Dr. Subramanian nor Dr. Steer analyzed the patents
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`or claims asserted in the Realtek case. Instead, these experts were tasked with analyzing whether
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`Intel chips infringed ParkerVision’s patents and whether the claims of the patents asserted
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`against Intel were valid.
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`This applies equally to patent marking—because wholly different patents are involved in
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`the Realtek and Intel cases, patent marking issues in Intel are irrelevant to patent marking of
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`different patents regarding different products in the Realtek case.
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`Realtek’s broadbrush arguments and failure to provide even a de minimis explanation or
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`analysis regarding the relevance of the Intel material is further evidence that Realtek is simply
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`trying to short-circuit Rule 26 in an effort to copy whatever information Intel prepared against
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`ParkerVision. Indeed, with no basis whatsoever, Realtek resorts to speculating that ParkerVision
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`must be “hiding” contrary positions that could be relevant here. Realtek’s desperate argument has
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`no merit. Materials from the Intel case are outside the scope of Rule 26(b)(1).2
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`Second, Realtek fails to address that in ParkerVision’s case with Intel (similar to what
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`Realtek is trying to do here), Intel sought expert materials from ParkerVision’s prior litigations
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`1 Dr. Steer did not provide any opinions regarding claim construction in the Realtek case. Dr. Steer
`provided a declaration in another litigation before this Court, which was merely appended as an
`exhibit to ParkerVision’s Markman brief.
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` Realtek also seeks to depose Intel. If the Court grants this motion, the deposition should also be
`precluded.
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`2
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`Case 6:22-cv-01162-ADA Document 116 Filed 07/19/24 Page 4 of 6
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`with a third party, which this Court denied. See ParkerVision, Inc. v. Intel Corp., Case No. 6:20-
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`cv-00108-ADA, ECF No. 163 at 78-91 (W.D. Tex. Sept. 13, 2022). ParkerVision told Realtek
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`about the Court denying Intel’s request for such discovery. Yet, Realtek fails to provide any
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`analysis demonstrating why it is entitled to a different outcome here. Realtek tried to avoid the
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`Court’s ruling the same way by serving a subpoena directly on Intel instead of moving to compel
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`ParkerVision to produce the same information. Realtek hoped that Intel would simply produce
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`the materials without the Court getting involved. Notably, this is not the first time Realtek has
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`tried an end-run around on ParkerVision and the Court’s authority, hoping to get lucky with a
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`subpoena. See Dkt. 107.
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`Third, Realtek ignores that the discovery it seeks—expert reports and deposition
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`transcripts —contains third-party confidential information other than Intel’s own confidential
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`information. Realtek argues that “Intel can simply redact that information from the documents
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`when it produces them,” but ignores the extensive undue burden and expense that would be
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`required to determine, confirm, and redact Intel and other confidential information across
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`thousands of pages. Opp. at 8. Realtek further suggests that, in the alternative, it can simply
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`“seek permission from these third parties to have a copy of these reports,” continuing to ignore,
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`and rather compound, the undue burden and expense required to produce this irrelevant
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`information. Opp. at 3; Fed. R. Civ. P. 26(c)(1) (“undue burden or expense”).
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`Further, Realtek repeatedly claims that Intel—a former ParkerVision litigation
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`adversary—does not oppose production of documents in response to Realtek’s subpoena. But
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`that is not correct. Intel is caught in the middle of the parties’ dispute and so Intel has simply
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`stated that it “takes no position on ParkerVision’s motion” and affirmed that it will not produce
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`the requested documents until this motion is resolved. See Dkt. 111, Ex. F. Accordingly, Intel’s
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`Case 6:22-cv-01162-ADA Document 116 Filed 07/19/24 Page 5 of 6
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`intended cooperation to produce documents in compliance with a subpoena is predicated on the
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`Court’s ruling on ParkerVision’s motion. That Intel will adhere to the Court’s directive has no
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`bearing on whether Intel documents from a previous case are relevant to the Realtek case here.
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`Fourth, Realtek’s failure to establish relevance of the information it seeks alone
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`constitutes good cause for a protective order pursuant to Rule 26(c). But further, production of
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`confidential material from the Intel case will cause unwarranted and overly burdensome
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`additional discovery, unjustified disclosure of Intel and third-party confidential information, the
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`potential for delays in discovery and during trial, and jury confusion. Opp. at 8 (“ParkerVision
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`may protect its interest by raising any valid objections to the use of these documents in the
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`future, either before or at trial”). Realtek cannot provide a legitimate basis for relevance that
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`outweighs the burden of producing the requested material. Fed. R. Civ. P 26(c)(1) (“annoyance,
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`embarrassment, oppression, or undue burden or expense”).
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`Finally, Realtek attempts to justify its direct-subpoena approach on Intel by noting the
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`fast-approaching close of fact discovery and expert reports. Opp. at 4. Yet Realtek is in no rush
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`when it comes to its own discovery obligations in this case. Realtek has continued to delay and
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`obstruct ParkerVision’s discovery efforts. To date, Realtek has only produced documents in
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`response to a small percentage of discovery requests with dozens of Requests for Production
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`outstanding. Worse yet, despite being ordered to produce documents responsive to numerous
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`categories of document requests, Realtek has simply not done so. See Dkt. 104. It is apparent that
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`Realtek wishes to unilaterally determine which rules it abides by with no regard for conducting
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`proper fact discovery in this case. Realtek should be focused on complying with its discovery
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`obligations and litigating the case instead of focusing on its efforts to copy whatever irrelevant
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`information Intel prepared against ParkerVision.
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`Case 6:22-cv-01162-ADA Document 116 Filed 07/19/24 Page 6 of 6
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`II.
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`CONCLUSION
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`For the foregoing reasons, the Court should grant ParkerVision’s motion for a protective
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`order and prohibit Realtek from seeking discovery from Intel regarding: (1) the invalidity report
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`of Dr. Subramanian (2) the validity report of Dr. Steer, (3) the deposition transcripts of Dr.
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`Subramanian and Dr. Steer, and (4) patent marking briefing from the Intel case.
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`Respectfully submitted,
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`Dated: July 19, 2024
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`/s/ Jason S. Charkow
`Raymond W. Mort, III
`Texas State Bar No. 00791308
` raymort@austinlaw.com
`THE MORT LAW FIRM, PLLC
`501 Congress Avenue, Suite 150
`Austin, Texas 78701
`Tel/Fax: 512-865-7950
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`Of Counsel:
`Ronald M. Daignault* (pro hac vice)
`Chandran B. Iyer (pro hac vice)
`Jason S. Charkow* (pro hac vice)
`Elizabeth Bernard* (admitted to practice)
`Stephanie Mandir (pro hac vice)
`rdaignault@daignaultiyer.com
`cbiyer@daignaultiyer.com
`jcharkow@daignaultiyer.com
`ebernard@daignaultiyer.com
`smandir@daignaultiyer.com
`DAIGNAULT IYER LLP
`8229 Boone Blvd., Suite 450
`Vienna, VA 22182
`*Not admitted in Virginia
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`Attorneys for ParkerVision, Inc.
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