Case 2:22-cv-00134-JRG-RSP Document 54 Filed 08/26/22 Page 1 of 6 PageID #: 808
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No.: 2:22-cv-00134-JRG-RSP
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`JURY TRIAL DEMANDED
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`ADVANCED MICRO DEVICES, INC., ET
`AL.,
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`TCL INDUSTRIES HOLDINGS CO., LTD.;
`ET AL.,
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`Plaintiffs,
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`v.
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`Defendants.
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`JOINT MOTION FOR ENTRY OF PARTIALLY DISPUTED DISCOVERY ORDER
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`Plaintiffs Advanced Micro Devices, Inc. and ATI Technologies ULC (collectively,
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`“AMD”) and Defendant Realtek Semiconductor Corp. (“Realtek”) hereby move the Court for
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`entry of a Partially Disputed Discovery Order. AMD’s proposed Discovery Order is attached
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`hereto as Exhibit 1 and Realtek’s proposed Discovery Order is attached hereto as Exhibit 2.
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`The parties have met and conferred and agree on all provisions of the proposed Discovery
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`Order for this case with the exception of Paragraph 12(a). The Parties’ competing versions of this
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`provision are shown in the table below:
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`Plaintiffs’ Version of Paragraph 12(a)
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`Defendant’s Version of Paragraph 12(a)
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`Notwithstanding paragraph 14 of the
`Protective Order (Order No. 1), and paragraph
`18 (Order No. 14) of ITC Investigation No.
`337-TA-1318, so long as: (a) this district
`court action is either not stayed or any stay of
`the district court action relating to the ITC
`proceedings will be lifted; (b) and a protective
`order will be entered in this district court
`action (or if no protective order is entered, a
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`The AMD plaintiffs, Realtek defendants, and
`TCL defendants in this action (“the parties”)
`agree that they will meet and confer, in good
`faith, to reach agreement as to the use and
`admissibility in this proceeding of documents,
`source code, discovery responses, transcripts,
`testimony and exhibits thereto, pleadings or
`submissions (such as contentions and expert
`reports) and things (collectively, “Discovery”)
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`1
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`

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`Case 2:22-cv-00134-JRG-RSP Document 54 Filed 08/26/22 Page 2 of 6 PageID #: 809
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`produced in the ITC proceedings, consistent
`with the obligations of the parties under Order
`No. 1 in 337-TA-1318 (ITC Protective Order)
`and Order No.14 (Amending the Protective
`Order). The parties agree that they will use
`their best efforts to reach agreement on these
`issues so as to avoid the unnecessary
`duplication of discovery in this litigation.
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`similar confidentiality agreement between the
`parties) with provisions substantively
`equivalent to the provisions in the protective
`order (including any amendments or
`supplements thereto) in Investigation No.
`337-TA-1318, during the pendency of the
`parallel ITC proceedings, and following the
`termination of the ITC proceedings,
`documents, source code, discovery responses,
`transcripts, testimony and exhibits thereto,
`pleadings or submissions (such as contentions
`and expert reports) and things (collectively,
`“Discovery”) produced in the ITC
`proceedings, including Discovery containing
`information that is confidential to a third
`party, can be used in this district court action
`to which the producing party is a party. Such
`documents and things need not be reproduced
`in this District Court action and shall be
`treated as if produced in this district court
`action with the appropriate level of
`confidentiality afforded by the protective
`order in place in that action. The parties may
`subsequently negotiate and agree that
`information falling within certain
`classifications of protection under the
`protective order in the ITC Investigation may
`be subject to certain lower levels of
`confidentiality in the protective order entered
`by the District Court after the Investigation
`has terminated. Prior to the final termination
`of this Investigation, the parties shall meet
`and confer regarding additional provisions
`that should be added to this agreement, if any,
`to enable them to otherwise comply with their
`obligations under paragraph 14 of the ITC
`Protective Order (Order No. 1). Nothing in
`this provision precludes a requesting party
`from seeking additional discovery it deems
`necessary
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`I.
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`Plaintiffs’ Position:
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`AMD has filed an opposed motion for discretionary stay of this case (Dkt. No. 37), because
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`litigating this case while simultaneously litigating the co-pending International Trade Commission
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`2
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`action, 337-TA-1318 (“ITC Investigation”), would be a waste of public and private resources given
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`the overlap in parties and in the asserted patents and technology. See Dkt. No. 37. AMD’s
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`proposed cross-use provision is reasonable and in line with Realtek’s own positions concerning
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`the efficiencies that can be gained by having the discovery produced by the parties in the ITC
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`Investigation be treated as produced in this action under a substantively equivalent protective
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`order.
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`AMD’s proposed cross-use provision provides that if “the producing party is a party” to
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`this action, and a protective order “substantively equivalent” to that of the ITC is in place in this
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`action (e.g., outside attorneys’ eyes only confidentiality), then the documents, discovery responses,
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`etc. produced by that party (and all of which are parties to this action) shall be treated as re-
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`produced in this action. See Ex. A at 12(a). This is consistent with the position Realtek asserted
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`in its opposition to AMD’s motion for discretionary stay wherein it argued that “[d]ocument
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`production[s], contentions, fact discovery, expert discovery, claim construction rulings, etc. can
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`be used for efficiencies and avoiding duplication of discovery “without a stay of this case.” Dkt.
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`No. 43 at 12 (Aug. 5, 2022) (emphases added).
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`By contrast, in an email response on August 25, 2022, Realtek stated that “we think it is
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`prudent for the parties to meet and confer, on a case-by-case basis, as to what materials from the
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`ITC investigation can be used in the district court or to find solutions that achieve the desired
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`efficiency consistent with the ITC protective order.” AMD respectfully submits that not only is
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`AMD’s approach expressly consistent with the ITC protective order, but Realtek’s “case by case”
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`approach will only needlessly increase inefficiencies and increase the likelihood of unnecessary
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`disputes requiring this Court’s involvement. Finally, the parties’ proposed limits on discovery in
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`Paragraph 5, e.g., limits on hours of deposition per party, only make sense if there is a full cross
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`3
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`use in this action of depositions of party witnesses in the ITC—otherwise those limits would be
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`overly narrow. AMD has repeatedly informed Realtek that it would not be willing to agree to
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`limits more narrow than the Court’s default order without a comprehensive cross-use provision.
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`AMD’s proposed cross-use provision benefits both sides, and should be adopted.
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`II.
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`Defendant’s Position:
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`Realtek proposes that the parties agree to meet and confer, in good faith, to reach agreement
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`as to the use and admissibility in this proceeding of documents, discovery responses, transcripts,
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`testimony, expert reports, and other discovery from ITC Investigation No. 337-TA-1318,
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`consistent with the obligations of the parties under Order No. 1 in 337-TA-1318 (ITC Protective
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`Order) and Order No.14 (Amending the Protective Order). Realtek proposes that the parties use
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`their best efforts to reach agreement on these issues so as to avoid the unnecessary duplication of
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`discovery in this litigation.
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`Most discovery in the ITC investigation is governed by Order No. 1, the Protective Order,
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`under which every attorney agrees to utilize “confidential business information solely for the
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`purposes of this investigation.” During a discovery teleconference on August 24, 2022, Judge
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`Elliot made it clear to the parties that any “Confidential Business Information” produced under the
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`ITC Protective Order can only be used for the purposes of that investigation, and cannot be “used”
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`in any other case, even if it is “re-produced” in another case. For example, while AMD and Realtek
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`can agree to produce their own documents in both litigations, the parties may be precluded from
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`producing and/or using in this litigation deposition transcripts, hearing testimony, expert reports,
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`discovery responses and other documents from the ITC Investigation that contain Confidential
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`Business Information under the ITC Protective Order. This is further complicated by the fact that
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`third parties in the ITC Investigation have been subpoenaed and are producing Confidential
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`Business Information in the ITC Investigation, such as ARM, Roku, Samsung, Microsoft, and
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`4
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`Khronos Group. Such third-party CBI is likely to permeate discovery responses, deposition and
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`hearing testimony, expert reports, and other discovery materials in the ITC. Accordingly, it is not
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`possible for the parties—consistent with the ITC Protective Order—to make a blanket agreement
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`for the production and use of all ITC discovery materials in this litigation, in advance of knowing
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`the content of those materials. That said, Realtek is committed to avoiding duplication of efforts
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`and streamlining this litigation wherever possible, and therefore, has proposed a provision by
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`which the parties agree to meet and confer in good faith, on a case-by-case basis, to determine
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`whether and how discovery and other materials from the ITC investigation can be produced and/or
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`used in this litigation, so the parties can achieve efficiencies where feasible.
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`Respectfully submitted,
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`By: /s/ J. Mark Mann____
`J. Mark Mann
`State Bar No. 12926150
`G. Blake Thompson
`State Bar No. 24042033
`MANN | TINDEL | THOMPSON
`201 E. Howard Street
`Henderson, Texas 75654
`Tel: (903) 657-8540
`Fax: (903) 657-6003
`Email: Mark@TheMannFirm.com
`Email: Blake@TheMannFirm.com
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`Attorneys for Defendant Realtek
`Semiconductor Corp.
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`Dated: August 26, 2022
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`By: /s/ Eric H. Findlay_____
`Eric H. Findlay
`State Bar No. 00789886
`Brian Craft
`State Bar No. 04972020
`FINDLAY CRAFT, P.C.
`102 N. College Ave. Suite 900
`Tyler, Texas 75702
`Tel: (903) 534-1100
`Fax: (903) 534-1137
`Email: efindlay@findlaycraft.com
`Email: bcraft@findlaycraft.com
`
`Michael T. Renaud
`James M. Wodarski
`Michael J. McNamara
`Adam S. Rizk
`Samuel F. Davenport
`William A. Meunier
`Marguerite McConihe
`Matthew A. Karambelas
`Catherin Xu
`Nana Liu
`Tianyi Tan
`MINTZ LEVIN COHN FERRIS
` GLOVSKY AND POPEO PC
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`5
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`Case 2:22-cv-00134-JRG-RSP Document 54 Filed 08/26/22 Page 6 of 6 PageID #: 813
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`One Financial Center
`Boston, MA 02111
`617-542-6000
`
`Jonathan J. Engler
`MINTZ LEVIN COHN FERRIS
` GLOVSKY AND POPEO PC
`555 12th Street NW, Suite 1100
`Washington, DC 20004
`202-434-7446
`
`Attorneys for Plaintiffs ATI Technologies ULC
`and Advanced Micro Devices, Inc.
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`CERTIFICATE OF CONFERENCE
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`The parties have conferred pursuant to Local Rule CV-7(h) and agree to the entry of the
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`partially disputed Discovery Order, subject to the Court’s approval.
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`/s/ Eric H. Findlay
` Eric H. Findlay
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`CERTIFICATE OF SERVICE
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` The undersigned hereby certifies that on August 26, 2022, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`the Court's CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Eric H. Findlay
` Eric H. Findlay
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`6
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