Case 6:22-cv-01162-ADA Document 92 Filed 03/15/24 Page 1 of 13
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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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`Civil Action No. 6:22-cv-01162-ADA
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`REDACTED
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`DEMAND FOR JURY TRIAL
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`§
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`REALTEK SEMICONDUCTOR CORP.’S OPPOSITION TO PARKERVISION INC.’S
`MOTION TO AMEND THE SCHEDULING ORDER
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`Case 6:22-cv-01162-ADA Document 92 Filed 03/15/24 Page 2 of 13
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`Defendant Realtek Semiconductor Corp. (“Realtek”) submits this Opposition to Plaintiff
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`ParkerVision, Inc.’s (“ParkerVision’s”) untimely Motion for Extension of Time, Dkt. 86
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`(“Motion” or “Mot.”). ParkerVision does not meet its burden to extend the deadline to serve its
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`Final Infringement Contentions. See Fed. R. Civ. P. 16(b)(4).
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`I.
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`INTRODUCTION
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`ParkerVision has no basis to extend the deadline to serve Final Infringement Contentions.
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`First, ParkerVision had everything it needed to meet the deadline. Realtek provided source code
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`for all accused chips nearly six months ago, and ParkerVision itself waited three and a half
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`months to review the source code, and has only reviewed it a single time. Failure to diligently
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`review the source code is not a basis to extend the deadline. Second, ParkerVision’s
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`manufactured dispute regarding schematics is no excuse to extend the deadline. To the extent
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`that Realtek produces additional discovery that impacts the Infringement Contentions,
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`ParkerVision can move for leave to amend its contentions with good cause. But ParkerVision is
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`not entitled to change its infringement theories based on discovery (source code and schematics,
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`and the information contained therein) that have been available to ParkerVision for months (some
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`of which ParkerVision has not even reviewed). Third, an extension of the deadline will cause
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`Realtek to suffer incurable prejudice. ParkerVision’s requested extension will only further delay
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`resolution of ParkerVision’s stale and exceptionally weak infringement claims. Realtek is
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`entitled to expeditiously proceed to trial so that it can obtain a judgment establishing non-
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`infringement. Accordingly, Realtek respectfully requests that the Court deny the Motion.
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`II.
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`BACKGROUND
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`ParkerVision filed its Complaint on November 10, 2022, over four years after three of
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`the asserted patents expired in October 2018, and days before the remaining patent was found
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`Case 6:22-cv-01162-ADA Document 92 Filed 03/15/24 Page 3 of 13
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`invalid by the PTAB. Dkt. 1. On July 31, 2023, the Court entered an Agreed Scheduling Order
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`setting February 27, 2024 as the deadline for the parties to serve Final Infringement and Invalidity
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`Contentions. Dkt. 65 at 3. Just a few weeks ago, on February 21, 2024, ParkerVision submitted
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`another Agreed Scheduling Order, again setting February 27, 2024 as the deadline for Final
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`Contentions. Dkt. 84-1 at 3. The Court entered the Agreed Scheduling Order, setting jury
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`selection and trial for January 13, 2025. Dkt. 85.
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`ParkerVision incorrectly represents that the Court ordered production of schematics on
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`August 30, 2023. See Mot. at 2. It did not. The dispute before the Court at the August 30
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`hearing involved Realtek’s initial production of technical documents sufficient to show the
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`operation of the accused products, which Realtek made along with Realtek’s Preliminary
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`Invalidity Contentions. See, e.g., Ex. 1, Tr. at 3:10-13. Specifically, the parties disputed whether
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`ParkerVision’s allegations as to one accused Wi-Fi chip justified ParkerVision’s expansive
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`request for technical documentation concerning 22 Realtek chips, many of which have wholly
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`different designs, functionalities, and applications than the accused Wi-Fi chip. Id., Tr. at 9:10-
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`17. At the hearing, the Court gave the parties the option of working together to determine which
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`chips, if any, were representative, or for Realtek to produce technical documentation sufficient
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`to show the operation of the 22 chips. Id., Tr. at 17:23-18:18. Accordingly, Realtek produced
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`technical documentation sufficient to show the operation of the 22 chips.
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`Contrary to the Motion, Realtek provided ParkerVision with the technical information it
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`needed to prepare and disclose its Final Infringement Contentions for all 22 accused chips many
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`months ago. On September 18, 2023, Realtek made available for inspection a
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` for
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`each of the 22 accused chips under the source code protocol of the Protective Order. Ex. 2.
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` are human-readable text files that are viewable in any text editing application, and
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`Case 6:22-cv-01162-ADA Document 92 Filed 03/15/24 Page 4 of 13
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`which provide detailed and accurate design information for the accused chips. Declaration of
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`Dr. Shukri Souri (“Souri Decl.”), ¶¶ 7-8. For example, the produced
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`. Declaration of Kuan Yu Shih (“ Shih Decl.”), ¶ 2; Souri Decl. ¶ 8.
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`produced
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`. Souri Decl. ¶ 8. Critically, the
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`.
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`Shih Decl., ¶¶ 2-3. Consequently, the files are sufficient to show the relevant operations, and
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`provided the technical information ParkerVision needed for its contentions.
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`In response, and without even inspecting the
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`, ParkerVision demanded
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`production of chip schematics purportedly based on ParkerVision’s incorrect belief that
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` are not sufficient to show the operation of the accused chips. Realtek objected on multiple
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`bases. First, like many semiconductor companies, Realtek
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`. Shih Decl., ¶¶ 2-3; Souri Decl., ¶ 10.
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` Shih Decl., ¶ 2. Second, the most accurate documents
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`describing the final design of the Realtek chips are
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`.
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`Although Realtek maintained its objections to producing schematics, in an effort to
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`resolve the dispute, Realtek
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` and made available for inspection schematics for
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`14 chips
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` beginning on October 19, 2023. See Ex. 3.
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`Neither ParkerVision nor its expert reviewed any of the
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` or chip schematics
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`until January 3, 2024—over three and a half months after Realtek first made the
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`available for inspection. Ex. 4. Following that first and only review, on January 11, 2024,
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`ParkerVision alleged deficiencies in certain schematics, including that they were “pixelated” and
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`Case 6:22-cv-01162-ADA Document 92 Filed 03/15/24 Page 5 of 13
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`did not include circuitry that ParkerVision alleged to be relevant. Ex. 5 at 5-7. Although
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`ParkerVision’s allegations were incorrect and would have required Realtek engineers to spend
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`days, if not weeks, effectively creating thousands of new pages of images of the same information
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`already provided, in a further effort to resolve the dispute, on January 29, 2024, Realtek made
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`available for inspection additional schematics. Ex. 5 at 1. Since that time, neither ParkerVision
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`nor its expert has made any effort to review these additional schematics to determine
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`whether the additional schematics satisfied their demands.
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`On February 26, 2024, the day before the deadline to serve Final Infringement
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`Contentions, ParkerVision requested an extension of two months for all case deadlines, including
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`the trial date entered by the Court just a few days earlier.1 In requesting its extension,
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`ParkerVision pointed to “conflicting [] deadlines in ParkerVision, Inc. v. MediaTek, Inc., 3:22-
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`cv-01163-ADA.” Ex. 6 at 1. In response, Realtek stated that it was considering ParkerVision’s
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`request but would provide an interim extension until March 1, 2024. Id. ParkerVision’s counsel
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`indicated that this was unacceptable, stating that ParkerVision “plan[s] on filing a motion with
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`the court today without awaiting the interim deadline.” Id. (emphasis added). Relying on
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`ParkerVision’s statement, Realtek finalized and served its Final Invalidity Contentions in
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`compliance with the Court’s February 27 deadline. See Dkt. 85. But ParkerVision neither filed
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`a motion to extend nor served its Final Infringement Contentions. Rather, on March 1, 2024,
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`ParkerVision served “supplemental” infringement contentions without leave to amend and filed
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`the instant motion. Ex. 7.
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`1 ParkerVision requested a two month extension of all dates on December 22, 2023, the Friday
`before Christmas. ParkerVision did not follow up on this request until the day before the Final
`Infringement Contentions deadline (more than two months later), despite having negotiated and
`filed another amended schedule in this case in the interim (Dkt. 85).
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`Case 6:22-cv-01162-ADA Document 92 Filed 03/15/24 Page 6 of 13
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`Thus, there is no dispute that: (i) Realtek provided
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` for all 22 accused chips
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`for ParkerVision’s inspection in September 2023 – documents more than sufficient to show the
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`design and operation of the chips; (ii) at ParkerVision’s request, Realtek
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` provided
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`chip schematics for inspection beginning in October 2023, and
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` provided more chip
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`schematics for inspection on January 29, 2024, at great expense to Realtek; (iii) ParkerVision
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`and its expert delayed reviewing any of the
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` or chip schematics until January 3, 2024;
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`and, (iv) neither ParkerVision nor its expert has ever reviewed the additional schematics
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`provided on January 29, 2024. Based on this dilatory record, ParkerVision seeks months of delay
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`because the schedule in the instant action “conflicts” with the schedule in the MediaTek action,
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`which it chose to file contemporaneously with this action.
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`III. LEGAL STANDARD
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`Pursuant to Rule 16(b)(4) of the Federal Rules of Civil Procedure, “[a]schedule may be
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`modified only for good cause and with the judge’s consent.” As the party seeking to modify the
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`scheduling order, ParkerVision has the burden of showing “that the deadlines cannot reasonably
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`be met despite the diligence of the party needing the extension.” Filgueira v. U.S. Bank Nat’l
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`Ass’n, 734 F.3d 420, 422 (5th Cir. 2013) (per curiam) (internal quotation marks and citation
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`omitted); see also S&W Enterprises, L.L.C. v. SouthTrust Bank of Alabama, NA, 315 F.3d 533,
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`535 (5th Cir. 2003) (“The good cause standard requires the “party seeking relief to show that the
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`deadlines cannot reasonably be met despite the diligence of the party needing the extension.”).
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`Courts in the Fifth Circuit examine four factors in considering a party’s request to modify a
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`schedule: (i) the party’s explanation for its failure or inability to meet the deadline; (ii) the
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`importance of the modification of the deadline; (iii) the potential prejudice in allowing
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`modification; and (iv) the availability of a continuance to cure the prejudice. See S&W Enters.,
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`Case 6:22-cv-01162-ADA Document 92 Filed 03/15/24 Page 7 of 13
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`315 F.3d at 546.
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`IV. ARGUMENT
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`ParkerVision has not met its burden to establish that it was diligent, or that good cause
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`exists to extend the deadline for ParkerVision to serve its Final Infringement Contentions. Fed.
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`R. Civ. P. 16(b)(4). Indeed, all four factors for modification confirm that delaying the schedule
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`is not appropriate. First, ParkerVision had no basis for waiting until the day before the deadline
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`to request an extension of the entire schedule and then seeking modification from the Court only
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`after it failed to meet the deadline for serving Final Infringement Contentions. ParkerVision had
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`months to review the source code files, yet only viewed source code once, and never reviewed
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`the additional schematics that it had requested. Second, ParkerVision’s requested modification
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`to the Scheduling Order is of no import. ParkerVision has the opportunity to file a motion for
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`leave to amend its infringement contentions based on good cause if newly-produced discovery
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`warrants it. But ParkerVision is not entitled to amend its contentions based on discovery or
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`information that has been available to ParkerVision for nearly half of a year. Third, Realtek has
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`already suffered prejudice having served its Final Invalidity Contentions, and further delay will
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`cause Realtek to suffer even more prejudice should ParkerVision be allowed to further amend its
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`infringement contentions without good cause. Realtek is entitled to proceed to trial expeditiously
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`so that it can obtain a judgment of non-infringement. Fourth, the prejudice to Realtek is
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`incurable. Realtek has already expended substantial resources litigating this baseless suit and
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`divulged its Final Invalidity Contentions without ParkerVision’s timely reciprocation. Extending
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`the deadline to allow ParkerVision to add theories that it had ample time to include would
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`compound that expense and needlessly prolong this litigation. The Court should not reward
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`ParkerVision’s dilatory actions.
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`A.
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`(Lack of) Explanation for Failure to Meet the Deadline
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`ParkerVision’s bases for its failure to meet the Final Infringement Contentions deadline
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`are manufactured and empty.
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`First, after rejecting Realtek’s interim extension and stating it would immediately file a
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`motion to extend, ParkerVision inexplicably waited days after the deadline to request
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`modification of the Court’s Scheduling Order. On that basis alone, the Motion should be denied.
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`See Argo v. Woods, 399 F. App’x 1, 3 (5th Cir. Sept. 10, 2010) (unpublished) (“Since Woods has
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`failed to offer any reason why he could not have filed his motion before the deadline, we affirm
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`the district court’s denial of the motion.”). ParkerVision attempts to blame Realtek for
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`ParkerVision’s delays, but in its Motion, ParkerVision does not explain why it waited to make
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`its extension request until the day before the deadline for Final Infringement Contentions, or why
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`it did not make such a request along with the parties’ submission of the Agreed Scheduling Order
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`just a week prior. It was plainly reasonable for Realtek to assume that the February 27 deadline
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`would remain in place, and Realtek diligently worked to complete its Final Invalidity Contentions
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`in compliance with the Court’s Order. Even after making its request to extend, and Realtek
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`agreeing to a stopgap extension that ParkerVision refused, it unilaterally ignored the February 27
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`deadline and did not file the instant motion until three days after the deadline and after Realtek
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`had timely submitted its Final Invalidity Contentions. In doing so, ParkerVision presumes the
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`rules of the Court do not apply to it.
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`Second, ParkerVision was not diligent in initiating or pursuing technical discovery in this
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`case, and therefore cannot show good cause sufficient to extend a deadline based on purported
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`deficiencies in that discovery. See Olivarez v. T-Mobile USA, Inc., 997 F.3d 595, 602 (5th Cir.
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`2021) (good cause standard requires showing that “the deadlines cannot reasonably be met
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`Case 6:22-cv-01162-ADA Document 92 Filed 03/15/24 Page 9 of 13
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`despite the diligence of the party needing the extension”). Promptly following the August 30
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`hearing, Realtek made available
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` showing the operation of all 22 accused chips, but
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`ParkerVision simply did not review them. Instead, ParkerVision stated its preference for some
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`other type of evidence, incorrectly believing that the
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` are insufficient. However,
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`ParkerVision’s preference of evidence (that Realtek does not maintain in the ordinary course of
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`business) and incorrect belief do not justify its decision to delay many months in inspecting
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`Realtek’s technical production. See Squyres v. Helco Cos., 782 F.3d 224, 237 (5th Cir. 2015)
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`(district court did not abuse its discretion in finding no good cause where party waited five
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`months to initiate discovery and depositions). Nor has ParkerVision provided any justification
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`at all for its failure to inspect the additional schematics Realtek made available in January at
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`ParkerVision’s own request. See Reliance Ins. Co. v. La. Land & Exploration Co., 110 F.3d 253,
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`257 (5th Cir. 1997) (no abuse of discretion in denying amendment when plaintiff offered no
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`justification for its delay). And, even if ParkerVision has a good faith basis to compel further
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`production of unidentified schematics, it was required to file a motion to compel before the
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`passing of the deadline rather than seeking an omnibus extension of the entire schedule.
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`Finally, ParkerVision’s request to extend the entire schedule due to “conflicts” with the
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`schedule in the MediaTek case are non-specific and conjectural as ParkerVision did not provide
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`any concrete examples of actual conflicts or any reason to justify extending the case schedule by
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`two months. ParkerVision itself chose to file these cases concurrently and must bear the
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`consequences of that decision.
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`B. Modification of the Deadline is Unnecessary
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`ParkerVision seeks an extension of its deadline to serve Final Infringement Contentions by
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`two months. Realtek’s source code files confirm what ParkerVision must already know from its
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`Case 6:22-cv-01162-ADA Document 92 Filed 03/15/24 Page 10 of 13
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`own reverse engineering—that the accused chips operate
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`to the
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`Qualcomm chips that the Federal Circuit has already found to not infringe. ParkerVision, Inc. v.
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`Qualcomm Inc., 621 F. App’x 1009 (Fed. Cir. 2015). Thus, there is no need for ParkerVision to
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`have a further opportunity to amend, since it simply asserts the same flawed contentions that the
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`Federal Circuit has already rejected.
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`Notably, ParkerVision did in fact serve Final Infringement Contentions under the guise of
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`“supplemental” infringement contentions, albeit on March 1, 2024, three days after the deadline
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`came and went. These contentions, while belated, see Dkt. 85 at 3, should be its final.
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`ParkerVision is not prejudiced by keeping deadlines it agreed to—it can still move for leave to
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`amend those contentions, as long as there is good cause based on newly produced discovery (i.e.,
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`not simply reformatted versions of information that has already been produced). See, e.g., Cutting
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`Edge Vision, LLC v. TCL Tech. Grp. Corp., No. W-22-CV-00285-ADA, 2023 WL 4002539, at
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`*1-2 (W.D. Tex. June 14, 2023) (granting leave to supplement final infringement contentions for
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`good cause). An extension would only serve to obviate that good cause requirement and give
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`ParkerVision a second chance to review neglected evidence—rewarding ParkerVision for flouting
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`the rules of this Court.
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`C. Modification Would Significantly Prejudice Realtek
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`ParkerVision has been litigating the claims asserted in this action since 2020—first against
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`Realtek’s customers LG and TCL and now against Realtek itself. ParkerVision was forced to stay
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`the LG and TCL cases after it failed to diligently pursue third-party discovery in those cases. And
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`now, ParkerVision again fails to diligently litigate this case. Entering ParkerVision’s requested
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`modifications to the Scheduling Order would prejudice Realtek by further delaying resolution of
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`ParkerVision’s stale infringement claims against both Realtek and its customers, which would in
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`Case 6:22-cv-01162-ADA Document 92 Filed 03/15/24 Page 11 of 13
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`turn require Realtek to incur additional and avoidable costs. See Ward v. CNH America, LLC, 534
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`F. App’x 240, 3-4 (5th Cir. 2013) (citations omitted) (finding prejudice because it would impose
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`“additional and avoidable costs” as it “likely invites additional discovery and certainly additional
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`motion practice”).
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`D.
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`The Availability of Continuance to Cure the Prejudice
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`The Motion only purports to request an extension of time to serve Final Infringement
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`Contentions, but any such delay will prejudice Realtek’s preparation of non-infringement
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`positions, expert reports, and summary judgment motions, inevitably leading to an extension of
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`the trial date. “[T]he court is not obligated to reward litigants for their failure to comply with the
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`court’s scheduling order or make a timely request for modification or extension, especially when
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`they, like [ParkerVision] here, readily admit that they could have done so.” Andrews v.
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`Rosewood Hotels & Resorts LLC, C.A. No. 3:19-CV-01374-L, 2021 WL 47029734, at *6-7
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`(N.D. Tex. Oct. 8, 2021) (emphasis in original); id. (“[T]he court is concerned that [a
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`continuance] may in fact cause [] prejudice.” (emphasis in original)).
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`V.
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`CONCLUSION
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`For the reasons set forth herein, Realtek respectfully requests that the Court deny
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`ParkerVision’s untimely Motion.
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`Case 6:22-cv-01162-ADA Document 92 Filed 03/15/24 Page 12 of 13
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`DATED: March 8, 2024
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`Respectfully submitted,
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`/s/ Lisa K. Nguyen
`Mark D. Siegmund
`State Bar No. 24117055
`CHERRY JOHNSON SIEGMUND JAMES
`PLLC
`The Roosevelt Tower
`400 Austin Avenue, 9th Floor
`Waco, TX 76701
`Telephone: 254-732-2242
`Facsimile: 866-627-3509
`msiegmund@cjsjlaw.com
`
`Lisa K. Nguyen
`PAUL HASTINGS LLP
`1117 S. California Ave.
`Palo Alto, CA 94304
`Telephone: 650-320-1890
`lisanguyen@paulhastings.com
`
`Grace I. Wang (pro hac vice)
`PAUL HASTINGS LLP
`200 Park Ave.
`New York, NY 10166
`Telephone: 212-318-6833
`gracewang@paulhastings.com
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`Noah A. Brumfield (pro hac vice)
`Megan M. Ines (pro hac vice)
`ALLEN & OVERY LLP
`1101 New York Avenue, NW
`Washington, DC 20005
`Telephone: 202-683-3800
`noah.brumfield@allenovery.com
`megan.ines@allenovery.com
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`Counsel for Defendant
`Realtek Semiconductor Corp.
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`Case 6:22-cv-01162-ADA Document 92 Filed 03/15/24 Page 13 of 13
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on March 8, 2024 the foregoing was served on all
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`counsel of record by e-mail.
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`By: /s/ Lisa K. Nguyen
`Lisa K. Nguyen
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