Case 6:22-cv-01162-ADA Document 63 Filed 07/27/23 Page 1 of 5
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`PARKERVISION, INC.,
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`Plaintiff,
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`v.
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`REALTEK SEMICONDUCTOR CORP.,
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`Defendant.
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`NO. 6:22-cv-01162-ADA
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`DISCOVERY ORDER
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`Issue: Whether ParkerVision must redact its Infringement Contentions, produce documents
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`underlying its Infringement Contentions, and disclose the third party source of the schematics
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`included therein.
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`Defendant’s Position:
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`ParkerVision contends the schematics in its preliminary infringement contentions are
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`from a third party and contain confidential information of both a third party and itself.
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`However, ParkerVision provides no basis for its claim of proprietary confidential information.
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`The parties have met and conferred and ParkerVision refuses to provide a redacted version that
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`can be shared with Realtek’s in-house counsel. Further, ParkerVision refuses to disclose the
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`identity of the third party.
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`ParkerVision’s confidentiality designation on its preliminary infringement contentions
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`is improper.
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`First, the confidentiality designation is arbitrary. ParkerVision already put some of the
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`exact same schematics in the public domain, including them in its Opposition to Realtek’s
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`Motion to Dismiss and a second complaint filed against Realtek. See Dkt. 56 at 13. See also
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`Case 6:22-cv-01162-ADA Document 63 Filed 07/27/23 Page 2 of 5
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`ParkerVision, Inc. v. Realtek Semiconductor Corp., 6:23-cv-00374-ADA, Dkt. 1 at 19-21, 24-
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`27, 30-33.
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`Second, ParkerVision has failed to meet its burden to establish confidentiality. See,
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`e.g., 340b Holdings, LLC v. Bobo. 1:20-CV-197-RP, 2020 WL 9720461, at *2 (W.D. Tex. Apr.
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`15, 2020). In Arigna Tech. Ltd. v. Samsung Electronics Co. et al., Arigna refused “to allow
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`Defendants to share the contentions with third parties, despite Arigna accusing third party
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`components from [third party suppliers] of infringement.” Disc. Order, Case No. 6:21-cv-943-
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`ADA (Feb. 23, 2022) at 2. Like ParkerVision, “Arigna’s refusal [was] based on its unsupported
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`claim that its contentions are confidential” and, like ParkerVision, Arigna refused to “identify
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`what, specifically, is confidential or whose confidential information is at issue, despite repeated
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`requests by Defendants.” Id. (emphases in original). Here, ParkerVision makes similar,
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`unsubstantiated assertions that its “contentions are properly marked ‘confidential’” seemingly
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`on the sole basis that the “process” used to generate the schematics “takes months” and “is
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`expensive.” Such are not proper grounds for claiming confidentiality.
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`Regardless, even if the third party schematics are confidential (they are not)
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`ParkerVision can serve a redacted version. Indeed, in Arigna, Judge Albright ordered just
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`that. Arigna at 5. There is no reason why ParkerVision cannot provide the same here.
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`Third, the result of ParkerVision’s refusal to serve redacted contentions is to deny
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`Realtek’s in-house counsel from assessing the infringement contentions. Instead, ParkerVision
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`puts Realtek in an impossible position by giving an ultimatum—Realtek’s in-house counsel
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`cannot access the contentions unless Realtek agrees that the schematic accurately describes the
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`accused chip shown in the schematics—an impossible concession for Realtek to make without
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`first seeing the contentions themselves. And unlike in Arigna, where the defendants sought
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`redacted contentions to share with third parties accused of infringement, ParkerVision’s refusal
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`Case 6:22-cv-01162-ADA Document 63 Filed 07/27/23 Page 3 of 5
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`is even more egregious—here, Realtek merely seeks redacted contentions to share with the
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`party accused of infringement.
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`Finally, there is no basis for ParkerVision to withhold the name of the third party. To
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`the contrary, ParkerVision’s refusal to disclose prejudices Realtek’s ability to defend itself. In
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`particular, if the third party is a foreign entity, Realtek will seek leave to serve letters rogatory
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`now to ensure that it is able to obtain discovery from this third party during the discovery
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`period.
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`Requested Relief:
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`Order that “Responding Party serve a copy of its preliminary infringement contentions
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`with confidential information redacted, produce documents underlying its preliminary
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`infringement contentions, and disclose the third party source of the schematics included
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`therein.”
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`Plaintiff’s Position:
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`ParkerVision’s contentions are properly marked “confidential” and Realtek’s in-house
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`counsel does not need to see them to assess infringement.
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`One cannot look at a chip and see its components/configuration. So ParkerVision had
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`a third-party reverse engineer a Realtek chip and generate numerous schematics. ParkerVision
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`used some of these schematics in its contentions.
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`Reverse engineering requires taking numerous images using an electron microscope,
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`removing a chip layer, and repeating the process over multiple layers. Skilled individuals use
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`software to line up images and generate schematics.
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`The chip portions that were chosen for analysis and resulting layout of the schematics
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`are proprietary to ParkerVision and its vendor. These schematics are not published or otherwise
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`publicly available. Thus, the schematics are confidential – with the exception of a few portions
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`of a few schematics. Specifically, ParkerVision disclosed a few portions in litigation with
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`Realtek after Realtek complained that it could not understand ParkerVision’s Complaints.
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`ParkerVision is not claiming that these few portions are confidential. The contentions,
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`however, contain images and annotations/discussions of other undisclosed schematics. Thus,
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`the contentions are properly marked “confidential.”
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`The problem here is of Realtek’s own making. ParkerVision proposed a compromise:
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`if Realtek confirmed that Realtek’s actual schematics are the same as ParkerVision’s
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`schematics, Realtek’s in-house counsel can view the contentions. Realtek refused. Instead,
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`Realtek asserts that it is impossible to do a comparison because Realtek cannot see
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`ParkerVision’s schematics. Not so. Realtek’s outside counsel/disclosed experts can readily
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`compare the schematics.
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`Indeed, Realtek’s request is a slippery slope. A party could use the same argument in
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`discovery to request the opposing party produce any/all confidential documents with redactions
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`so that the party’s employees can assess the case.
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`Further, Realtek’s complaint that ParkerVision is “deny[ing] Realtek’s in-house
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`counsel from assessing the infringement contentions . . .” is nonsense. Realtek’s in-house
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`counsel does not need ParkerVision’s contentions. Realtek has actual schematics for its chips.
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`Realtek’s outside counsel can use actual schematics to explain ParkerVision’s contentions to
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`its client. Notably, Realtek does not claim that it cannot assess infringement with its own
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`schematics.
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`Realtek cites Arigna to support its request. But this case actually hurts Realtek. In
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`Arigna, the infringing product was a component from a third-party vendor used in Defendants’
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`products. Thus, Defendants themselves did not know the configuration/operation of the
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`component that was being accused and, without contentions, the Defendants couldn’t
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`determine how they were infringing. Plaintiff was ordered to produce redacted contentions.
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`Here, the infringing products are Realtek’s own chips for which it has actual schematics and,
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`thus, its outside counsel can explain how Realtek is infringing without Realtek having
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`contentions. Moreover, in Arigna, the Court ordered that “Arigna does not need to produce
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`documents underlying its preliminary infringement contentions or disclose the sources of
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`diagrams therein at this time.” Arigna, 5 (emphasis added).
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`Additionally, Realtek’s claim that it needs the reverse-engineering firm’s identity to
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`subpoena them is a red herring. Infringement will be based on Realtek’s actual schematics.
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`The reverse-engineering firm does not have information relevant to this case.
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`Requested Relief:
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`Order that “Realtek’s motion is denied. ParkerVision does not need to serve a copy of
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`its preliminary infringement contentions with confidential information redacted. ParkerVision
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`also does not need to produce documents underlying its preliminary infringement contentions
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`or disclose the third-party source of the schematics at this time.”
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`Court’s Order:
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`After reviewing the briefing, the applicable law, and the Parties arguments addressed
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`at the discovery hearing held on July 19, 2022, the Court ORDERS the following:
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`ParkerVision shall provide redacted versions of ParkerVisions
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`infringement
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`contentions no later than August 2, 2023;
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`Defendant’s remaining requested relief is DENIED.
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`IT IS SO ORDERED.
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`SIGNED this 27th day of July, 2023
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`DEREK T. GILLILAND
`UNITED STATES MAGISTRATE JUDGE
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