Case 6:22-cv-01162-ADA Document 97 Filed 05/02/24 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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`Case No. 6:22-cv-01162-ADA
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`JURY TRIAL DEMANDED
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`PARKERVISION, INC.,
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`v.
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`Plaintiff,
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`REALTEK SEMICONDUCTOR CORP.,
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`Defendant.
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`ORDER ON DISCOVERY DISPUTE
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`On April 19, 2024, Plaintiff ParkerVision, Inc. (“ParkerVision”) presented to the Court
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`discovery disputes regarding Realtek’s response to ParkerVision’s Interrogatory No. 11. The
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`parties’ positions, requested relief, and the Court’s order is, as follows:
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`ParkerVision’s Position
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`Rule 11 requires a party to have a good faith belief for its allegations. A party must also
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`have a good faith belief for allegations in interrogatory responses. In its motion to dismiss and
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`interrogatory response, Realtek alleges that ParkerVision failed to mark. But what is the bases
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`for Realtek’s belief?
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`For months, ParkerVision has tried to obtain all of Realtek’s factual bases for its
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`allegations/beliefs. Despite repeated meet-and-confers, Realtek failed to provide this information
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`in its interrogatory response and says it will not do so until it reviews ParkerVision’s production.
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`Because Realtek must have a Rule 11 basis for its current allegations/beliefs, Realtek does not
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`need ParkerVision’s production to explain all factual bases. The claims of the patents-in-suit
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`Case 6:22-cv-01162-ADA Document 97 Filed 05/02/24 Page 2 of 5
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`relate to schematic-level details of RF chips. Thus, in order to allege failure to mark, Realtek
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`must have knowledge of ParkerVision’s products.
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`Realtek should (1) know each product name(s) that it currently believes should have been
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`marked, (2) for each asserted patent, know at least one claim that it believes covers each
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`product(s), (3) know the factual basis as to why the claim(s) cover each product, and (4) have
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`investigated ParkerVision’s products to determine failure to mark. Realtek’s arguments about
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`burden misses the point. This is discovery and ParkerVision is entitled to know all factual bases
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`for Realtek’s assertions/beliefs. Who has the burden regarding marking is beside the point.
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`In June 2023, Realtek filed a motion to dismiss, alleging that “ParkerVision did not mark
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`its products, which precludes ParkerVision from recovering any damages on the three expired
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`asserted patents.” Dkt. 54 at 3. In January 2024, ParkerVision served Interrogatory No. 11,
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`seeking Realtek’s bases for allegations that ParkerVision failed to mark.
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`In February 2024 (over eight months after its motion to dismiss), Realtek responded to
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`Interrogatory No. 11, referring back to its motion to dismiss filings (which provide no details
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`regarding marking) and stating its investigation was ongoing.
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`In March 2024, Realtek sent ParkerVision a letter stating that ParkerVision failed to mark
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`ParkerVision’s Milo Router and direct conversion transmitters/receivers including, but not
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`limited to, the PV5870 and PVD5870R.
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`On April 11-12, 2024, Realtek supplemented its interrogatory response, incorporating the
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`allegations in its letter and identifying Intel’s summary judgment papers on marking, third party
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`documents and ParkerVision product announcements. Realtek did not identify any claim of the
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`patents-in-suit that covers any product, any factual basis for its position that the claims cover the
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`patents, or any evidence that ParkerVision did not mark its products.
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`Case 6:22-cv-01162-ADA Document 97 Filed 05/02/24 Page 3 of 5
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`If Realtek performed a Rule 11 investigation, Realtek would know that:
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`(1) ParkerVision marked its PV5870 products with three of the asserted patents;
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`(2) this Court granted summary judgment against Intel regarding failure to mark the
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`PV5870 products, and
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`(3) the RF chip that ParkerVision used in Milo is the Realtek RTL8811AU chip
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`(information found in the Intel papers that Realtek cites). Thus, Realtek has conceded
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`that Realtek’s chip is covered by the patents-in-suit. And ParkerVision should be
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`entitled to know which claim(s) Realtek infringes.
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`Requested Relief: Order that: “Within three (3) days of this Order, Realtek shall
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`supplement Interrogatory No. 11 and identify (1) all products by name (or in the case of Milo, the
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`chip) that Realtek currently believes should have been marked, (2) for each product/component,
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`whether Realtek asserts
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`that ParkerVision sold, offered for sale, and/or made
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`the
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`product/component in the US, (3) for each product/component, the asserted patent(s) that Realtek
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`asserts should have been marked, (4) for each product/component, any and all claims of the
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`asserted patents that Realtek asserts covers that product/component, (5) for each claim, the detailed
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`factual bases for Realtek’s position as to why the claim covers the product/component, and (6) the
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`factual basis for Realtek’s position that ParkerVision failed to mark its products (e.g., the identity
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`of a product package or ParkerVision website that is not marked).”
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`Realtek’s Position
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`ParkerVision’s argument is completely contrary to well-established Federal Circuit
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`precedent concerning a failure to mark defense. As such, ParkerVision’s overly burdensome and
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`legally incorrect requests should be denied in their entirety. “The Arctic Cat burden of production
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`is a low bar predicated upon belief, not proof.” Solas Oled Ltd. v. Samsung Electronics Co., Ltd.,
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`2022 WL 1912873, at *2 (E.D. Tex. May 30, 2022) (emphasis added).
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`Consistent with district court and Federal Circuit precedent, Realtek served an Arctic Cat
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`notice letter on ParkerVision, alleging that ParkerVision’s Milo Router and its Direct Conversion
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`Quadrature Modulator/Demodulator (models PV5870 and PVD5870R RF I/Q) were not marked
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`in compliance with 35 U.S.C. § 287. Thus, not only has Realtek met its burden of production (a
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`low bar), but also shifted the burden to ParkerVision to prove either: (1) it does not practice the
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`patents; or (2) it marked its products. See also Arctic Cat Inc. v. Bombardier Recreational Prods.
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`Inc., 876 F. 3d 1350, 1368 (Fed. Cir. 2017) (“Once the alleged infringer meets its burden of
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`production, however, the patentee bears the burden to prove the products identified do not practice
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`the patented invention.”).
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`Noticeably absent from ParkerVision’s position statement is any support for its assertion
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`that Realtek must show in its initial burden of production that: which claim(s) of the asserted
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`patents are covered by the products; the factual basis as to why the claim(s) cover each product.
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`What is required is for Realtek to identify the products that it believes ParkerVision was required
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`to mark, which Realtek undisputedly did, in its Arctic Cat letter and its response to ParkerVision’s
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`interrogatory number 11. Ex. 1. See Solas, 2022 WL 1912873 at *2 (holding the burden is on [the
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`accused infringer] to timely identify unmarked products it believes practiced the [asserted
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`patent].”); Arctic Cat, 876 F.3d at 1368 (holding the alleged infringer bears the initial burden of
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`production to articulate the products it believes are unmarked) (emphasis added).
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`As ParkerVision admits, Realtek both timely identified the products it believes were not
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`marked (early in fact discovery), as well as the specific products. There is nothing more required
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`Case 6:22-cv-01162-ADA Document 97 Filed 05/02/24 Page 5 of 5
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`of Realtek and ParkerVision cannot point to another case requiring more. Because Realtek has
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`identified three products it believes ParkerVision did not mark, ParkerVision has ample notice
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`before the close of fact discovery to conduct whatever discovery it needs to show it complied with
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`the marking statute. Moreover, had Realtek waited until much later in fact discovery, ParkerVision
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`would likely argue it was prejudiced by a late disclosure of a marking defense, like the plaintiff
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`did in Solas. In fact, the Court in Solas held this very thing against Samsung. The Court stated “[i]t
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`is not necessary to wait, as Samsung did here, until deposition testimony ostensibly proves that the
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`unmarked products actually practiced the [asserted patent].” Id. at *2. Therefore, not only is
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`waiting until further fact discovery provides additional evidence supporting a failure to mark
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`prejudicial, it is not obligatory – as only a “belief” is required. Id.
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`Requested Relief: Order that “ParkerVision’s requested relief is denied.”
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`ORDER
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`The Court, having considered both ParkerVision and Realtek’s positions on the discovery
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`dispute, as well as other papers and evidence submitted in support and opposition, hereby
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`ORDERS, as follows:
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`ParkerVision’s requested relief is DENIED.
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`SIGNED on this 2nd day of May, 2024.
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