Case 6:22-cv-01162-ADA Document 98 Filed 05/02/24 Page 1 of 5
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`UNITED STATES DISTRICT COURT
`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-1162-ADA
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`DISCOVERY ORDER
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`On April 9, 2024, counsel for Defendant Realtek Semiconductor Corp.’s (“Realtek”) and
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`Plaintiff ParkerVision, Inc. (“ParkerVision”) submitted to the Court a chart summarizing a
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`discovery dispute.
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`As to the dispute, Realtek requested that ParkerVision produce reverse engineering
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`reports relied upon in its briefing and preliminary and supplemental infringement contentions.
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`ParkerVision requested that the Court deny Realtek’s request.
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`REALTEK’S POSITION
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`ParkerVision refuses to produce reverse engineering (“teardown”) reports and related
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`documents that it relied upon to allege infringement of the accused Realtek chips in its
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`Opposition to Realtek’s Motion to Dismiss the Amended Complaint (Dkt. 56 at 13), Preliminary
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`Infringement Contentions (“PICs”), and supplemental PICs.
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`ParkerVision’s only basis for its refusal is relevance, asserting it will not rely on the
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`teardowns in the future, and instead will rely on Realtek documents and source code in its Final
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`Infringement Contentions. But ParkerVision “cannot avoid disclosure by disavowing any intent
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`Case 6:22-cv-01162-ADA Document 98 Filed 05/02/24 Page 2 of 5
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`to use the requested information in the future. It already has relied on that information to support
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`its infringement claims by repeatedly citing it throughout the preliminary infringement
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`contentions . . . As such, it is relevant.” Koninklijke Philips Elecs. N.V. v. ZOLL Med. Corp.,
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`2013 WL 812484, *3 (D. Mass. 2013) (quotations and citations omitted).
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`Although ParkerVision relies Arigna to argue that the teardowns should not be produced
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`unless its experts rely on the teardowns, the ultimate outcome of that case proves Realtek’s point.
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`First, the Court ultimately granted defendant’s motion to compel Arigna to make available for
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`inspection the Tech Insights reports. Second, ParkerVision heavily relies on the teardowns
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`beyond the PICs. On June 8, 2023, Realtek moved to dismiss this action for failure to state a
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`claim (Dkt. 54). In its Opposition to Realtek’s Motion, filed on June 22, 2023 (Dkt. 56 at 13),
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`On June 20, 2023 ParkerVision served its PICs, and these same teardowns were cited and
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`reproduced tens-to-hundreds of times, forming the sole factual basis underlying ParkerVision’s
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`PICs. ParkerVision continued to rely on the same teardowns in its supplemental PICs on July
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`18, 2023, as the reverse-engineered schematics were again on nearly every page of its 160+
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`pages of supporting infringement charts, and as recently as March 1, 2024 when it served another
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`supplement. Here, to streamline the case, discovery into the teardowns should be done in fact
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`discovery, not expert discovery (which would inevitably lead to supplements and further delay).
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`Once discovery formally opened on January 11, 2024, Realtek served two Requests for
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`Production requesting these reports.
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`Request No. 13 seeks “[a]ll Documents and Things relating to any reverse engineering,
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`inspection, testing, evaluation, teardown, or analysis of any Accused Products, including the
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`source of the schematics identified in ParkerVision’s Reply to Realtek’s Motion to Dismiss (Dkt.
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`56) at 13,” and Request No. 14 seeks “[a]ll Documents and Things relating to any reverse
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`engineering, inspection, testing, evaluation, teardown, or analysis of any of Realtek’s products.”
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`ParkerVision cannot cherry-pick information from its teardown reports. Realtek is
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`entitled to the complete reports, which almost certainly confirm that the accused Realtek chips
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`do not infringe. See In re Unilin Decor N.V., 153 Fed. Appx. 726, 728 (Fed. Cir. Oct. 19, 2005)
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`(finding district court did not abuse discretion in allowing discovery into testing of the alleged
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`infringing product).
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`PARKERVISION’S POSITION
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`In effect, Realtek is asking the Court to reverse a ruling Judge Gilliland made earlier in
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`this case—a ruling based on this Court’s decision in Arigna. Realtek conveniently neglects to
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`mention in its position statement that Judge Gilliland already heard the issue Realtek now
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`presents. Nevertheless, there is nothing improper about Judge Gilliland’s previous ruling.
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`On July 19, 2023, Judge Gilliland considered and ruled on the same very issue Realtek
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`raises now. See July 19, 2023 Transcript of Discovery Hearing (Sealed) (Attached).
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`The dispute this Court referred to Judge Gilliland stemmed from ParkerVision
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`designating its preliminary infringement contentions confidential, because those contentions
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`included confidential information from a third-party engineering firm that ParkerVision retained
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`to perform a schematic extraction of a Realtek chip.
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`Relevant here, Realtek sought ParkerVision’s pre-suit investigation materials underlying
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`ParkerVision’s preliminary infringement contentions and requested the Court to order
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`ParkerVision to “produce the underlying source documents and to disclose the source of its
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`materials.” 7/19/23 Hrg. Tr. at 4.
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`After argument, Judge Gilliland ordered: “At this time, one, in keeping with what the
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`Court’s done in the past, the documents underlying the infringement contentions are not to be
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`produced unless and until those are relied on by experts.” Id. at 12. In doing so, Judge Gilliland
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`considered this Court’s prior ruling in Arigna Tech. Ltd. v. Samsung Electronics Co. et al., Disc.
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`Order, Case No. 6:21-cv-943-ADA (Feb. 23, 2022). In that case, the Court ruled that “Arigna
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`does not need to produce documents underlying its preliminary infringement contentions or
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`disclose the sources of diagrams therein at this time.” Id. at 5.
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`Realtek’s assertion that “the Court ultimately granted defendant’s motion to compel
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`Arigna to make available for inspection the Tech Insights reports”—and the implication that this
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`Court’s changed its mind—is disingenuous. Realtek neglects to mention that Defendant
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`subsequently filed an unopposed motion for the reports, which this Court granted. Arigna Tech.
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`Ltd. v. Apple Inc., Case 6:23-cv-00712-ADA, Dkt. 140. Thus, Judge Gilliland’s reliance on the
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`Court’s original order in Arigna is still proper.
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`ParkerVision plans to rely on Realtek’s own documents, source code and schematics, and
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`its expert’s analysis and opinions to establish infringement in this case. Thus, as ParkerVision
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`explained to Realtek’s counsel, unless and until ParkerVision relies on the third-party schematic
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`extractions/reverse engineering report, they are not relevant to any claims or defenses in this case
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`nor will they lead to the discovery of admissible evidence.
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`If ParkerVision or its expert decides to rely on the third-party schematic
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`extractions/reverse engineering report, the decision will be made before the close of fact
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`discovery and ParkerVision will produce them during fact discovery. Thus, there will not be any
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`delay as Realtek speculates. But until such time, and as Judge Gilliland ruled previously (based
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`on this Court’s order in Argina Tech.), ParkerVision should not be compelled to produce any
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`underlying documents or other pre-suit investigation materials from its third-party engineering
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`firm that it relied on for its preliminary infringement contentions.
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`CONCLUSION
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`The Court, upon consideration of the parties’ respective requests, is of the opinion that
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`ParkerVision need not produce documents underlying the infringement contentions unless and
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`until they are relied on by experts. Accordingly, Realtek’s request is DENIED.
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`SIGNED this 2nd day of May, 2024.
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