Case 2:22-cv-00134-JRG-RSP Document 59 Filed 09/06/22 Page 1 of 15 PageID #: 857
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`ADVANCED MICRO DEVICES, INC.
`and ATI TECHNOLOGIES ULC,
`
` Plaintiffs,
`
`v.
`
`TCL INDUSTRIES HOLDINGS CO.,
`LTD., ET AL.,
`
` Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Case No. 2:22-cv-00134-JRG-RSP
`
`DISCOVERY ORDER
`Before the Court is the Joint Motion for Entry of Partially Disputed Discovery Order.
`
`Dkt. No. 54. The parties' dispute concerns ¶ 12(a), which addresses whether the parties can use
`
`discovery produced in a parallel ITC investigation—ITC Investigation No. 337-TA-1318—in
`
`this case. AMD seeks a cross-use provision that provides if “the producing party is a party” to
`
`this action, and a protective order “substantively equivalent” to that of the ITC is in place in
`
`this action (e.g., "outside attorneys’ eyes only" confidentiality), then the discovery produced
`
`by that party shall be treated as reproduced in this action. Dkt. No. 54 at 3. In response,
`
`Realtek proposes that the parties agree to meet and confer, in good faith, to reach agreement
`
`as to the use and admissibility in this proceeding of discovery from the ITC investigation.
`
`After reviewing the parties’ respective positions, the Court GRANTS IN PART the
`
`motion and adopts Realtek’s proposal. It is therefore ORDERED that:
`
`1.
`
`Initial Disclosures. In lieu of the disclosures required by Federal Rule of Civil
`
`Procedure 26(a)(1), each party shall disclose to every other party the following
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`ADVANCED MICRO DEVICES, INC.
`and ATI TECHNOLOGIES ULC,
`
` Plaintiffs,
`
`v.
`
`TCL INDUSTRIES HOLDINGS CO.,
`LTD., ET AL.,
`
` Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Case No. 2:22-cv-00134-JRG-RSP
`
`DISCOVERY ORDER
`Before the Court is the Joint Motion for Entry of Partially Disputed Discovery Order.
`
`Dkt. No. 54. The parties' dispute concerns ¶ 12(a), which addresses whether the parties can use
`
`discovery produced in a parallel ITC investigation—ITC Investigation No. 337-TA-1318—in
`
`this case. AMD seeks a cross-use provision that provides if “the producing party is a party” to
`
`this action, and a protective order “substantively equivalent” to that of the ITC is in place in
`
`this action (e.g., "outside attorneys’ eyes only" confidentiality), then the discovery produced
`
`by that party shall be treated as reproduced in this action. Dkt. No. 54 at 3. In response,
`
`Realtek proposes that the parties agree to meet and confer, in good faith, to reach agreement
`
`as to the use and admissibility in this proceeding of discovery from the ITC investigation.
`
`After reviewing the parties’ respective positions, the Court GRANTS IN PART the
`
`motion and adopts Realtek’s proposal. It is therefore ORDERED that:
`
`1.
`
`Initial Disclosures. In lieu of the disclosures required by Federal Rule of Civil
`
`Procedure 26(a)(1), each party shall disclose to every other party the following
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`Case 2:22-cv-00134-JRG-RSP Document 59 Filed 09/06/22 Page 2 of 15 PageID #: 858
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`information:
`
`(a)
`
`(b)
`
`(c)
`
`the correct names of the parties to the lawsuit;
`
`the name, address, and telephone number of any potential parties;
`
`the legal theories and, in general, the factual bases of the disclosing party’s
`
`claims or defenses (the disclosing party need not marshal all evidence that may
`
`be offered at trial);
`
`(d)
`
`the name, address, and telephone number of persons having knowledge of
`
`relevant facts, a brief statement of each identified person’s connection with the
`
`case, and a brief, fair summary of the substance of the information known by
`
`any such person;
`
`(e)
`
`any indemnity and insuring agreements under which any person or entity
`
`carrying on an insurance business may be liable to satisfy part or all of a
`
`judgment entered in this action or to indemnify or reimburse for payments
`
`made to satisfy the judgment;
`
`any settlement agreements relevant to the subject matter of this action; and
`
`any statement of any party to the litigation.
`
`(f)
`
`(g)
`
`2.
`
`Disclosure of Expert Testimony. A party must disclose to the other parties the
`
`identity of any witness it may use at trial to present evidence under Federal Rule of
`
`Evidence 702, 703 or 705, and:
`
`(a)
`
`if the witness is one retained or specially employed to provide expert testimony
`
`in the case or one whose duties as the party’s employee regularly involve
`
`giving expert testimony, provide the disclosures required by Federal Rule of
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`Case 2:22-cv-00134-JRG-RSP Document 59 Filed 09/06/22 Page 3 of 15 PageID #: 859
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`Civil Procedure 26(a)(2)(B) and Local Rule CV-26; and
`
`(b)
`
`for all other such witnesses, provide the disclosure required by Federal Rule of
`
`Civil Procedure 26(a)(2)(C).
`
`3.
`
`Additional Disclosures. Without awaiting a discovery request,1 each party will make
`
`the following disclosures to every other party:
`
`(a)
`
`provide the disclosures required by the Patent Rules for the Eastern District of
`
`Texas with the following modifications to P.R. 3-1 and P.R. 3-3:
`
`i.
`
`If a party claiming patent infringement asserts that a claim element is a
`
`software limitation, the party need not comply with P.R. 3-1 for those
`
`claim elements until 30 days after source code for each Accused
`
`Instrumentality is produced by the opposing party. Thereafter, the party
`
`claiming patent infringement shall identify, on an element-by-element
`
`basis for each asserted claim, what source code of each Accused
`
`Instrumentality allegedly satisfies the software limitations of the
`
`asserted claim elements.
`
`ii.
`
`If a party claiming patent infringement exercises the provisions of
`
`Paragraph 3(a)(i) of this Discovery Order, the party opposing a claim of
`
`patent infringement may serve, not later than 30 days after receipt of a
`
`Paragraph 3(a)(i) disclosure, supplemental “Invalidity Contentions” that
`
`amend only those claim elements identified as software limitations by
`
`the party claiming patent infringement.
`
`1 The Court anticipates that this disclosure requirement will obviate the need for requests for
`production.
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`(b)
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`produce or permit the inspection of all documents, electronically stored
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`information, and tangible things in the possession, custody, or control of the
`
`party that are relevant to the pleaded claims or defenses involved in this action,
`
`except to the extent these disclosures are affected by the time limits set forth in
`
`the Patent Rules for the Eastern District of Texas; and
`
`(c)
`
`provide a complete computation of any category of damages claimed by any
`
`party to the action, and produce or permit the inspection of documents or other
`
`evidentiary material on which such computation is based, including materials
`
`bearing on the nature and extent of injuries suffered, except that the disclosure
`
`of the computation of damages may be deferred until the time for Expert
`
`Disclosures if a party will rely on a damages expert.
`
`4.
`
`5.
`
`Protective Orders. The Court will enter the parties’ Agreed Protective Order.
`
`Discovery Limitations. The discovery in this cause is limited to the disclosures
`
`described in Paragraphs 1-3 together with: 40 interrogatories per side, 40 requests for
`
`admissions per side, 60 hours of depositions of the parties, depositions on
`
`written questions of custodians of business records for third parties, 60 hours of
`
`nonparty depositions per side, and 5 expert witnesses per side. “Side” means a party
`
`or a group of parties with a common interest. Any party may later move to modify
`
`these limitations for good cause.
`
`6.
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`Privileged Information. There is no duty to disclose privileged documents or
`
`information. However, the parties are directed to meet and confer concerning
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`privileged documents or information after the Status Conference. By the deadline set
`
`in the Docket Control Order, the parties shall exchange privilege logs identifying the
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`documents or information and the basis for any disputed claim of privilege in a manner
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`that, without revealing information itself privileged or protected, will enable the other
`
`parties to assess the applicability of the privilege or protection. Any party may move
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`the Court for an order compelling the production of any documents or information
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`identified on any other party’s privilege log. If such a motion is made, the party
`
`asserting privilege shall respond to the motion within the time period provided by
`
`Local Rule CV-7. The party asserting privilege shall then file with the Court within 30
`
`days of the filing of the motion to compel any proof in the form of declarations or
`
`affidavits to support their assertions of privilege, along with the documents over which
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`privilege is asserted for in camera inspection.
`
`7.
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`Signature. The disclosures required by this Order shall be made in writing and signed
`
`by the party or counsel and shall constitute a certification that, to the best of the
`
`signer’s knowledge, information and belief, such disclosure is complete and correct as
`
`of the time it is made. If feasible, counsel shall meet to exchange disclosures required
`
`by this Order; otherwise, such disclosures shall be served as provided by Federal Rule
`
`of Civil Procedure 5. The parties shall promptly file a notice with the Court that the
`
`disclosures required under this Order have taken place.
`
`8.
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`Duty to Supplement. After disclosure is made pursuant to this Order, each party is
`
`under a duty to supplement or correct its disclosures immediately if the party obtains
`
`information on the basis of which it knows that the information disclosed was either
`
`incomplete or incorrect when made, or is no longer complete or true.
`
`9.
`
`Discovery Disputes.
`
`(a)
`
`Except in cases involving claims of privilege, any party entitled to receive
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`disclosures (“Requesting Party”) may, after
`
`the deadline for making
`
`disclosures, serve upon a party required to make disclosures (“Responding
`
`Party”) a written statement, in letter form or otherwise, of any reason why the
`
`Requesting Party believes that the Responding Party’s disclosures are
`
`insufficient. The written statement shall list, by category, the items the
`
`Requesting Party contends should be produced. The parties shall promptly
`
`meet and confer. If the parties are unable to resolve their dispute, then the
`
`Responding Party shall, within 14 days after service of the written statement
`
`upon it, serve upon the Requesting Party a written statement, in letter form or
`
`otherwise, which identifies (1) the requested items that will be disclosed, if
`
`any, and (2) the reasons why any requested items will not be disclosed. The
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`Requesting Party may thereafter file a motion to compel.
`
`(b)
`
`An opposed discovery related motion, or any response thereto, shall not exceed
`
`7 pages. Attachments to a discovery related motion, or a response thereto, shall
`
`not exceed 5 pages. No further briefing is allowed absent a request or order
`
`from the Court.
`
`(c)
`
`Prior to filing any discovery related motion, the parties must fully comply with
`
`the substantive and procedural conference requirements of Local Rule CV-7(h)
`
`and (i). Within 72 hours of the Court setting any discovery motion for a
`
`hearing, each party’s lead attorney (see Local Rule CV-11(a)) and local counsel
`
`shall meet and confer in person or by telephone, without the involvement or
`
`participation of other attorneys, in an effort to resolve the dispute without Court
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`intervention.
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`(d)
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`Counsel shall promptly notify the Court of the results of that meeting by filing
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`a joint report of no more than two pages. Unless excused by the Court, each
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`party’s lead attorney shall attend any discovery motion hearing set by the Court
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`(though the lead attorney is not required to argue the motion).
`
`(e)
`
`Any change to a party’s lead attorney designation must be accomplished by
`
`motion and order.
`
`(f)
`
`Counsel are directed to contact the chambers of the undersigned for any “hot-
`
`line” disputes before contacting the Discovery Hotline provided by Local Rule
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`CV- 26(e). If the undersigned is not available, the parties shall proceed in
`
`accordance with Local Rule CV-26(e).
`
`10.
`
`No Excuses. A party is not excused from the requirements of this Discovery Order
`
`because it has not fully completed its investigation of the case, or because it challenges
`
`the sufficiency of another party’s disclosures, or because another party has not made
`
`its disclosures. Absent court order to the contrary, a party is not excused from
`
`disclosure because there are pending motions to dismiss, to remand or to change
`
`venue.
`
`11.
`
`Filings. Only upon request from chambers shall counsel submit to the court courtesy
`
`copies of any filings.
`
`12.
`
`Proposed Stipulations by the Parties Regarding Discovery.
`
`(a) 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
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`- 7 -
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`submissions (such as contentions and expert reports) and things (collectively,
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`“Discovery”) 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.
`
`(b) The parties agree that no electronic mail (“email”) (including attachments) need be
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`searched or produced in response to the parties’ respective discovery requests
`
`(including interrogatories, requests for production, and requests for admission)
`
`served in this case. Email attachments maintained separately as independent
`
`documents or files may not be withheld from discovery on the basis of having been
`
`transmitted or obtained by email. For the avoidance of doubt, nothing in this
`
`Stipulation is intended to prevent, and does not prevent, a party from producing
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`and relying on its own emails in this case, or requesting, compelling, and relying
`
`on emails produced by a third party.
`
`All documents, including any electronically stored information (“ESI”),
`
`shall be produced in accordance with Section 10 the parties’ discovery stipulation
`
`filed in ITC Investigation, 337-TA-1318, and with a Bates number assigned to this
`
`case.
`
`The following sources will not be searched under any circumstances, and as
`
`such need not be preserved for this case or any litigation or proceeding involving
`
`the same subject matter: automated disaster recovery backup systems and/or
`
`disaster recovery backup tapes; RAM or temporary files; temporary internet files,
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`history, cache, cookies, and other on-line access data; data in metadata fields that
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`are updated automatically such as last-opened dates; data remaining from systems
`
`no longer in use that is unintelligible on the systems in use; residual, fragmented,
`
`damaged, permanently deleted, and unallocated data; legacy computer systems,
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`personal digital assistants; mobile devices; cell phones; USB flash drives, or the
`
`like; portable disks; voicemail systems; archived emails; Slack; and, instant
`
`messaging logs.
`
`The parties agree that non-testifying experts shall not be subject to
`
`discovery if a testifying expert is not relying on the opinions formed by or work
`
`performed by such non-testifying experts. For the avoidance of doubt, by merely
`
`citing to or relying on source code printouts that were printed out by a non-
`
`testifying expert, a testifying expert is not relying on the work of a non-testifying
`
`expert. To the extent a testifying expert is relying on the work or opinions of a non-
`
`testifying expert in forming his or her final report, trial or deposition testimony, or
`
`any opinion in this case, nothing in this Stipulation is intended to restrict discovery
`
`relating to the testifying expert’s communications, including with other experts,
`
`that identify facts or data or assumptions on which the testifying expert relies. For
`
`avoidance of doubt, the parties agree that any retained expert or consultant may not
`
`share any confidential business information received under the Protective Order
`
`with any other individual not authorized under the Protective Order, which the
`
`parties agree includes any technical/non-clerical support staff of any technical
`
`consultant or expert (e.g., other recognized experts, doctoral candidates, post-
`
`docs). The parties agree non-clerical support staff of economic consultants or
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`experts, who are performing economic analysis, need not be separately identified
`
`and subscribe to the Protective Order.
`
`Inadvertent production of privileged information shall be governed by the
`
`Federal Rules. Notwithstanding this, if a receiving party discloses to a person or an
`
`entity other than the producing party any Privileged Information that was
`
`inadvertently or unintentionally produced or disclosed by another party, such
`
`disclosure shall not be deemed a waiver of the attorney-client privilege, common-
`
`interest privilege, work product immunity, or any other applicable privilege or
`
`immunity, either as to the specific Privileged Information disclosed or produced, or
`
`as to any other Privileged Information relating thereto or on the same or related
`
`subject matter (and none of the parties will assert such a waiver). In such
`
`circumstances, after the producing party provides written notice (or notice on the
`
`record if the producing party becomes aware of the inadvertent or unintentional
`
`disclosure at a deposition or hearing) designating such Privileged Information as
`
`within an applicable privilege or immunity, the receiving party shall cooperate in
`
`good faith to protect the applicable privilege or immunity with respect to the
`
`disclosed Privileged Information, including retrieval or destruction of all copies, to
`
`the extent possible.
`
`The parties agree that material withheld from production on the ground of
`
`privilege need not be included on a privilege log. Notwithstanding this provision,
`
`Privileged Information shall be included on a privilege log in the event of
`
`inadvertent production of privileged material when and if applicable in view of the
`
`applicable rules or Court orders.
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`Case 2:22-cv-00134-JRG-RSP Document 59 Filed 09/06/22 Page 11 of 15 PageID #: 867
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`Any party who receives documents from a third party pursuant to a
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`subpoena shall reproduce those documents to the other parties within three
`
`business days. To the extent feasible, the parties shall endeavor to produce or make
`
`available any source code produced by a third party, whether on a source code
`
`computer or in hard copy, within one (1) business day to each party. If a party or
`
`third party cannot meet these requirements, the parties will meet and confer
`
`regarding the production or reproduction of the documents, as appropriate. The
`
`parties agree that they shall reproduce such third party materials in fewer than three
`
`business days when necessary such as, for example, in the event such documents
`
`may be used in a deposition. To the extent feasible, all third party documents shall
`
`be produced at least 24 hours before the commencement of that third party’s
`
`deposition. Documents produced by a Third Party within 24 hours of the
`
`commencement of a deposition shall be produced to the other parties as soon as
`
`practicable. To the extent that the reproduction of the documents by the receiving
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`party is proscribed by a protective order amendment/addenda (e.g., source code),
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`the receiving party shall notify the other parties that such documents have been
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`produced by the third party and make such documents available pursuant to the
`
`terms of the protective order.
`
`The parties agree that a party scheduling a deposition of any third-party
`
`will use best efforts to notify the other parties at least 10 business days before any
`
`deposition takes place or to involve the other parties in discussions with the third
`
`party regarding deposition scheduling. The parties also agree that any third-party
`
`witnesses appearing at a deposition may be questioned by all parties to this case,
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`except that the parties will make best efforts not to duplicate other parties’
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`questioning. This agreement does not preclude a party from subpoenaing its own
`
`third-party deposition on the same third- party.
`
`In the event a party seeks to serve any materials in a hard copy—e.g.,
`
`documents, physical media, or source code—the parties will coordinate in advance
`
`to identify the proper recipient and address for any such materials.
`
`When the size of the file containing any such document is larger than
`
`approximately 15 MB, and cannot be practicably transmitted in a smaller zipped
`
`file, same day service of the documents in electronic form shall be made via secure
`
`file transfer over FTP, extranet, or other secure file sharing and transfer service,
`
`with access credentials served by email or hand delivery of electronic media. 2
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`Parties may also serve hard copies of documents if necessary for timely service
`
`provided, however, that the serving parties shall contemporaneously notify the
`
`parties, via electronic service on the designated email addresses, of the hard copy
`
`service, and further electronic copies of those documents also shall be provided to
`
`the parties. As noted, if a party will serve materials via hand delivery, the parties
`
`will coordinate to identify the proper recipient and address for such materials in
`
`recognition that offices may be closed and attorneys may be working remotely
`
`during COVID.
`
`If a party inadvertently fails to designate information as confidential
`
`pursuant to the Protective Order in this case, that party shall promptly notify the
`
`other parties that such information should have been designated confidential and
`
`2 In such circumstances, the document to which such voluminous attachments relate shall still be
`served by email as provided.
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`Case 2:22-cv-00134-JRG-RSP Document 59 Filed 09/06/22 Page 13 of 15 PageID #: 869
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`should be treated as confidential going forward. Where appropriate, the designating
`
`party shall provide replacement copies of such materials bearing the appropriate
`
`confidentiality designation. The parties agree that any inadvertent failure to
`
`designate information with one of the designations provided for in the Protective
`
`Order shall not be deemed a waiver of, nor prejudice to, any applicable designation
`
`with respect to the confidentiality of such information or document, provided that
`
`the party notifies the receiving party(ies) in writing promptly after discovery of
`
`such inadvertent failure to designate.
`
`Upon being notified that the information was inadvertently not designated
`
`as confidential, the receiving parties shall take reasonable steps to retrieve the
`
`information from any recipients of such information who previously had been
`
`provided the confidential information and who are not authorized to access such
`
`confidential information under the Protective Order. The receiving parties shall
`
`return or certify the secure destruction of all copies of the originally improperly
`
`designated materials. If the receiving party has reason to believe that the
`
`information has been disseminated to persons from whom it has not been able to
`
`retrieve the information through reasonable steps, it shall inform the producing
`
`party of that fact.
`
`No party shall argue that another party is in breach of the Protective Order
`
`for any use of confidential information during the time that the information was not
`
`designated as confidential, unless it was clear from the face of such information
`
`that its lack of confidential designation was mistaken.
`
`Deposition testimony may be retroactively designated as confidential (1) if
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`Case 2:22-cv-00134-JRG-RSP Document 59 Filed 09/06/22 Page 14 of 15 PageID #: 870
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`retroactively designated within ten business days after the deposition, (2) if the
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`parties consent, or (3) if the Court or other body with authority so orders.
`
`Counsel for a receiving party may request permission to provide a redacted,
`
`non- confidential version of a confidential submission/paper from a designating
`
`party(ies) to the receiving party, and shall provide a draft redacted version of such
`
`submission/paper to the designating party(ies) for approval as part of its request for
`
`permission. The designating party(ies) shall endeavor to respond within five (5)
`
`business days to such requests by either: (i) confirming that the redacted version
`
`does not have the designating party’s(ies’) confidential information; or (ii)
`
`identifying the portion(s) of the redacted version the designating party(ies) asserts
`
`to contain its confidential information.
`
`To the extent possible, each confidential submission/paper shall identify in
`
`the confidentiality header the party and/or third party supplier(s) that provided
`
`Confidential Information contained in that submission/paper.
`
`13.
`
`Standing Orders. The parties and counsel are charged with notice of and are required
`
`to fully comply with each of the Standing Orders of this Court. Such are posted on the
`
`Court’s website at http://www.txed.uscourts.gov/?q=court-annexed-mediation-plan.
`
`The substance of some such orders may be included expressly within this Discovery
`
`Order, while others (including the Court’s Standing Order Regarding Protection of
`
`Proprietary and/or Confidential Information to Be Presented to the Court During
`
`Motion and Trial Practice) are incorporated herein by reference. All such standing
`
`orders shall be binding on the parties and counsel, regardless of whether they are
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`Case 2:22-cv-00134-JRG-RSP Document 59 Filed 09/06/22 Page 15 of 15 PageID #: 871
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`expressly included herein or made a part hereof by reference.
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`- 15 -
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