in the united states district court jacksonville ......case 3:15-cv-01477-bjd-jbt document 187 filed...

IN THE UNITED STATES DISTRICT COURTFOR THE MIDDLE DISTRICT OF FLORIDA

JACKSONVILLE DIVISION

PARKERVISION, INC., )

Plaintiff, )

v. ) Case No. 3:15-cv-01477-BJD-JBT

APPLE INC., et al., )

Defendants. )

PLAINTIFF PARKERVISION, INC.'S MOTION TO

COMPEL DEFENDANT OUALCOMM INCORPORATED

REDACTED DOCUMENT -- UNREDACTED DOCUMENT HAS BEEN FILED UNDER SEAL

Case 3:15-cv-01477-BJD-JBT Document 187 Filed 01/12/20 of 16 PageID 6064

TABLE OF CONTENTS

PAGE

L INTRODUCTION ...................................................................... 1

II. LOCAL RULE 3.04(A) STATEMENT ..................................... 2

III. STATEMENT OF FACTS .......................... .......... 4.....................

IV. LEGAL STANDARD ...................~--.......................................... 5

V. ARGUMENT AND AUTHORITIES ........................................ 6

A. QUALCOMM SHOULD BE COMPELLED TOPROVIDE A FULL AND COMPLETE RESPONSE TO

INTERROGATORY NO. 11 ........................................... 7

1. Qualcomm's reliance on Rule 33(d) is improper .. 7

VI. CONCLUSION ........................................................................ 12

u


TABLE OF AUTHORITIES

Pages)

CASQS

Arlhrex, Inc. v. Parcus Med.,No. 2:11-cv-694, 2012 U.S. Dist. LEXIS 124173 (M.D. Fla.. Aug. 31,

2012) ..............................................................................................................................5

Commercial Union Ins. Co. v. Westrope,730 F.2d 729 (11th Cir. 1984) .......................................................................................5

Disa v. Ashley Furniture Indus.,No. 8:14-cv-1915-T-27AEP, 2015 U.S. Dist. LEXIS 188443 (M.D.

Fla. Aug. 26, 2015) ........................................................................................................6

Facedouble, Inc. v. Face.com, Inc.,No. 12cv1584-DMS (MDD), 2014 U.S. Dist. LEXIS 19245 (S.D. Cal.

Feb. 13, 2014) ....................................................................:.......................................8,9

LascrDynamics, Inc. v. Asus Comput. Intl,No. 2:06-CV-348, 2009 U.S. Dist. LEXIS 3878 (E.D. Tex. Jan. 21,

2009) ....:........................... ..........................8 .................................................................:..

Local Access, LLC v. Peerless Network, Inc.,No. 6:17-cv-236-Or1-40TBS, 2017 U.S. Dist. LEXIS 192439 (M.D.

Fla. Nov. 21, 2017) ........................................................................................................5

Psenner v. Victoria's Secret Stores, LLC',No. 1:13-CV-01295-AWI-SMS, 2014 U.S. Dist. LEXIS 154783 (E.D.

Cal. Oct. 31, 2014) .............................................................................................:.....9, 10

SEC v Elfindepan,206 F.R.D. 574 (M.D.N.C. 2002) ......................................................................9, 10, 11

United States ex rel. Landis v. Tailwind Sports Cvrp.,

317 F.R.D. 592 (D.D.C. 2016) .....................................................................................10


I. INTRODUCTION

Plaintiff ParkerVision, Inc. ("ParkerVision") moves to compel Defendairt

Qualcomm Inc. ("Qualcomin") to provide a complete answer to Interrogatory No. 11,

which seeks information concerning what the correct values are for certain capacitors and

resistors in the accused products, to allow ParkerVision to prove how the accused products

are configured and work. Specifically, because Qualcomm previously criticized

ParkerVision's own calculation of those values, ParkerVision has requested that

Qualcomm identify Oualcomm's position as to what these correct values are, to mitigate

or cure any such criticism here.

But Qualcomm refused to identify the correct .values and instead invoked

Rule 33(d), identifying over two thousand documents and instructing ParkerVision to

review those documents and calculate the values for itself. Qualcomm's reliance on

Rule 33(d) is improper for at least the following reasons:

• Qualcomm's position as to which values are correct is known only to

Qualcomm. ParkerVision cannot ascertain this information on its own by

reviewing the thousasids of document identified by Qualcomm.

• Even if ParkerVision could somehow ascertain Qualcomm's own position from

the identified documents—which it cannot—ParkerVision's burden to do so

would be greater than Qualcomm's, and Rule 33(d) therefore is inapplicable.

• Even if Rule 33(d) were applicable here, it requires Qualcomm to specifically

identify the document iri which each requested value can be found, which

Qualcomm has wholly failed to da here.


• Many of the documents cited by Qualcomm are not business records as required

by Rule 33(d).

Accordingly, Qualcomm should be compelled to provide a complete response to

the interrogatory.

II. LOCAL RULE 3.04(A) STATEMENT

ParkerVision's Interro~atory No. 11

For each Cellular Mode and/or band supported by each Qualcomm Product, identify the

receive signal path (low band, mid band, high band, and ultra-high band), the transmit

jammer filter (also referred to as the "TxJ Filter" or "TX LPF") capacitance value (C~),

the TxJ Filter resistor value (R~x), the trans-impedance amplifier (TIA} feedback

capacitance value (CFBi ), and the TIA feedback resistor (RFs) value in the format shown in

the table below:

QualconunRX Signal

PathTxJ Filter TIA feedback

PI'odUCtCellular Mode Bancl

(LB, MB, CTX RTX CFB KFBHB

~VTK3925 FDD-LTE 1

QUALCOMM'S RESPONSE TO INTERROGATORY NO. 11:

In addition to the Objections to Definitions and Instructions set forth above, Qualcomm

objects to this interrogatory as vague and ambiguous, including to the extent that it uses

the phrase "each Cellular Mode and/or band supported by each Qualcomm Product."

Qualcomm further objects to this interrogatory as improper to the extent that it prematurely

seeks contentions and/or expert disclosure. Such information will be provided in

accordance with the Court's scheduling order.

Subject to, and without waiving the foregoing objections, Qualcomm identifies pursuant to

Rule 33(d) documents that have been produced in this matter, including, but not limited to,

(ij the schematics, design reviews, AutoGen documents, and software made available to

ParkerVision, (ii) the deposition testimony taken in this matter and related matters,

including particularly the multiple depositions of Dr. Behzad Razavi and James Jaffee, (iii)

the expert and fact witness statements from ui re the Matter RF Capable Integrated Circuits

and Products Containing the Same, No. 337-TA-982 (I"I'C), including particularly the

witness statements from Dr. Behzad Razavi and James Jaffee, (iv) the interrogatory

2


responses in this matter and related matters, including particularly Qualcomm

Incorporated's and Qualcomm Atheros, Inc.'s Fifth Supplemental Objections and

Responses to Parkervision's First Set of Common Interrogatories (1-8), and (v) the

following documents produced in this matter: QCPVI100412454, QCPVI100412454,

QCPVII00412436, QCPVII00821335, QCPVII01045511, QPVIII_00025224,

QPVITC00294656, QPVITC00394696, QPVITC00410221, QPVITCO(}417914,

QPVITC~0673538, QPVTTC0067820~, QPVITC00685859, QPVITC00826870,

QSC2PVITC0000067, QPVITC01234887, QPVITC01234888, QPVITC01235172,

QPVITC01239801, QPVTI'C01243384, QPVITC01243653, QPVITC01243667,

QPVTTC01243687, QPVITC01244011, QPVITC01244260, QPVITC01244404,

QPVITC01244415, QPVITC01244441, QPVITC01244661, QPVITC01244724,

QPVITC01244909, QPVITC01245d74, QPVITC01245084, QPVITC01246056,

QPVITC01246115, QPVTTC01246127, QPVITC01246177, QPVTTC01246179,

QPVITC01247401, QPVTI'C01247402, QPVITC01247403, QPVITC01247429,




QPVITC01248042, QPVITC01248072, QPViTC01248Q73, QPVITC01248077,





QPVITC01248721, QPVTTC01248743, QPVITC01248809, QPVITC01248892,





QPVITC01249900-QPVITC01249990, QPVITC01250031, QPVITC01250095,

QPVITC01250158, QPVITC01250191, QPVITC01250217, QPVTTC01250331,



QPVITC01250929, QPVTTC01250938, QPVITC01250991, QPVITC01251119,






QPVITC01252832, QPVITCU1252833, QPVITC01252834, QPVITC01253035,


QPVITC01253663, QPVITC01253689, QPVITC01253690, QPVITC012594U8-

QPVITC01259503, QPVITC01259726, QPVITC01259727, QPVTI'C01259728,

QPVITC01259729, QPVTI'C01259730, QPVITC01259731, QPVTTC~1259504-




QPVITC01259680, QPVITC01259681,QPVITC01259737, QPVITC01259683,QPVITC01259685, QPVTTC01259739,QP V ITC012 59740-QPV ITC01259791,QP VITC01259792-QPVITC01259822,QP VIII_00025253-QP VIII_00025284.

III. STATEMENT OF FACTS

QPVITC01259736, QPVITC01259682,

QPVITC01259684, QPVITC01259738,QPVITC01259686, QPVITC01259687,QP V ITC01259688-QP V ITC01259725,

QPVIII_00024555-QPVIII_00025223, and

On October 11, 2019, ParkerVision propounded on Qualcomm Interrogatory

No. 11. ParkerVision's request seeks critical circuit values to understand and prove how

the accused transceivers function. In the ITC investigation, Qualcomm criticized

ParkerVision for identifying and using the wrong values. ParkerVision's request seeks to

mitigate any further criticism by requiring Qualcomm to identify Qualcomm's position as

to what the correct values are. Qualcomm's expert previously identified such values for

some accused products in the prior ITC Investigation: ParkerVision was asking Qualcomm

to confirm those values and identify similar information for all accused products.

On November 15, 2019 Qualcoinm provided thEir objections and response to

Interrogatory No. 11. Qualcomm relied on Rule 33(d) and pointed ParkerVision to a mass

of 2,114 documerrts. Qualcomm provided no basis for i#s reliance on Rule 33(d). On

December 10, 2019, ParkerVision objected to Qualcomm's reliazice on Rule 33(d) and

enumerated several reasons why Qualcomm's reliance on Rule 33(d) was improper. See

Ex. A. On December 12, 2019 Qualconun disagreed with ParkerVision's position. See

Ex. B. On December 16, 2019, the parties met az~d conferred birt could not come to a

resolution. ParkerVision explained that Qualcomm's expert had already pointed to the

relevant values for portions of two of the accused transceivers and that ParkerVision was

asking Qualcomm to do the same for all the accused products. See Ex. C.

4


Qualcomm. stated that it would endeavor to get some information by the end of the

week but could not guarantee it. See Ex. C. In light of upcoming depositions,1and with the

end of discovery approaching, ParkerVision cannot wait any longer for the values.

IV. LEGAL STANDARD

"The overall purpose of discovery under the Federal Rules is to require the

disclosure of all relevant information so that the ultimate resolution of disputed issues in

any civil action may be based on a full and accurate understanding of the true facts, and

therefore embody a fair and. just result." Local Access, I,I,C v. Peerless Network, Inc., No.

6:17-cv-236-Or1-40TBS, 2017 U.S. Dist.. LEXIS 192439, at'~5 (M.D. Fla. Nov. 21, 2017)

(citations omitted). The Federal Rules provide that when a party serving discovery does

not receive an adequate response, then the serving party may request an order compelling

disclosure. Arthrex, Inc. v. ParcusMed., No. 2:x,1-cv-694, 2012 U.S. Dist. LEXIS 124173,

at *2 (M.D. Fla. Aug. 31,2012); Fed. R. Civ. P. 37(a). Whether to grant the motion to

compel is at~the discretion of the trial court. Corn»zercial Union Ins. Co. v. Westrope, 730

F.2d 729, 731 (11th Cir. 1984) (citations omitted).

Rule 26(b) provides in relevant part:

Parties may obtain discovery regarding any nonprivileged

matter that is relevant to any party's claim or defense and

proportional to the needs of the case, considering the

importance of the issues at stake in the action, the amount in

controversy, the parties' relative access to relevant

information, the parties' resources, the importance of the

discovery in resolving the issues, and whether the burden or

expense of the proposed discovery outweighs its likely

benefit.

Fed. R. Civ. P. 26(b)(1).

F~


Rule 26 further imposes an obligation on parties to conduct "a reasonable inquiry

that, with respect to a disclosure, it is complete and correct at the time it is made." Disa v.

Ashley Furniture Indus., No. 8:14-cv-1915-T-27AEP, 2015 U.S. Dist. LEXIS 188443, at

*4 (M.D. Fla. Aug. 26, 2015).

V. ARGUMENT AND AUTHORITIES

The Rule 26(b)(1) factors establish that ParkerVision is entitled to the highly

critical information requested in Interrogatory 11:

(i) The information ParkerVision seeks to discover is crucial to ParkerVision's

case because the requested values concern and are relevant to the configuration,

operation of the accused products and, thus, whether they infringe

ParkerVision's patent.

(ii) The amount in controversy is substvrtial. ParkerVision seeks to recover

millions of dollars in damages.

(iii) Qualcomm is amulti-billion dollar corporation with access to substantially

more resources than ParkerVision.

(iv) The discovery is critical to resolving the issues in this action because

ParkerVision intends to use the requested values to prove that the accused

products infringe ParkerVision's patent. Moreover, based on Qualcomm's past

arguments, whether ParkerVision obtains the correct values will factor heavily

into Qualcomm's arguments concerning whether ParkerVision has met its

burden of proving how the accused products work and whether they infringe.

3


(v) The benefit of the requested discovery (critical to ParkerVision) substantially

outweighs any burden or expense to Qualcomm of the proposed discovery

(nominal).

For the reasons discussed below, Qualcornm has not satisfied its obligation to

provide ParkerVision with this critical requested information. In refusing to provide the

requested values and instead directing ParkerVision to review thousands of documents,

Qualcomm has not made "diligent effort to provide a response that (i) fairly meets and

complies with the'discovery request and (ii) imposes no unnecessary burden or expense on

the requesting party." Middle District Discovery (2015) at 5.

A. QUALCOMM SHOULD BE COMPELLED TO PROVIDE A FULL

AND COMPLETE RESPONSE TO INTERROGATORY NO.11

1. Qualcomm's reliance on Rule 33(d) is improper

Qualcomm's reliance on Rule 33(d) is improper for several reasons. First, the

subject matter of Interrogatory No. 11 makes Rule 33(d) inapplicable here. The Middle

District's Discovery Handbook observes that "a party may in very limited circumstances

[] produce business records in lieu of answering interrogatories." Middle District

Discovery (2015) at 13. This not one of those limited circumstances because Interrogatory

No. 11 seeks Qualcomm's position, under oath, as to the correct values for the identified

components. Whether ParkerVision could somehow reach it~~ own conclusions as to those

values bases on a review of tens of thousands of pages of documents Qualcomm identified

in its response is irrelevant because the result would be ParkerVision's conclusions, not

Qualcomm's. Qualcomin would be free to challenge those conclusions, as it has done

previously. Qualcomm's position as to which values are correct is known only to

7


Qualcom►n. ParkerVision cannot ascertain this information on its own by reviewing

documents. Indeed, during the ITC investigation, Qualcomm asserted that some of its

docume~its were incorrect and that to determine correct values, one needed to consult

different sources. Therefore, Rule 33(d) is inapplicable and ParkerVision requests

Qualcomm to provide the requested information.

Second, contrary to Qualcomm's claim, •the burdens to the respective parties to

determine the requested information are not substantially equal. Rule 33(d) is proper only

where "the burden of deriving or ascertaining the answer [from the documents at issue is]

substantially the same for either party." Fed. R. Civ P. 33. Even if ParkerVision could

somehow ascertain Qualcomm's own position from the identified documents—which it

cannot—ParkerVision's burden to do so would be much greater than Qualcomm's. In

LaserDynamfcs, Inc. v. Asus Compi4t. Intl, No. 2:06-CV-348, 2009 U.S. Dist. LEXIS 3878

(E.D. Tex. Jan. 21, 2009),.the court held that it was improper for Defendants to rely on

Rule 33(d) when the interrogatories in question were "directed to the functionality to the

defendants' own products." Id. at 8. The court further noted that "[i]t is implausible for

the defendants to contend that the plaintiff stands on equal footing when it comes to

determining how the defendants' own products operate." Id.

In the instant case, Qualcomm engineers know exactly where to find this

information because this information is fundamental to the operation of Qualcomm's

transceivers, and Qualcomm's engineers designed the transceivers to operate in a specific

manner. Facedouble, Inc. a Face.com, Inc., No. 12cv1584-DMS (MDD), 2014 U.S. Dist.

LEXIS 19245, at *6 (S.D. Cal. FeU. 13, 2014) (compelling defendant to provide a guide or


road map to its source code and noting "[a]fter all engineers employed by Defendant wrote

the code with an object in mind."). ParkerVision bears a substantially greater burden in

determining the requested values than does Qualcom►n.

Further, Qualcomm's assertion that this request "would require thousands of

calculations" and is "unduly burdensome" lacks merit. Qualcomm already has this

information and would not be required to do any calculations.

nowhere

nearthe thousands of calculations Qualcomm claims this request would require. Moreover,

to the extent that Qualcornm thinks ParkerVision is requesting thousands of values, during

the meet and confer, ParkerVision clarified that the information it was requesting was the

same information to which Qualcomm's expert cited, but for all the accused transceivers.

See Ex. C.

Third, even if reliance on Rule 33(d) were proper here, that rule requires Qualcomm

to specifically identify the document in which each requested value can be found, which

Qualcomm has wholly failed to do here. When relying on Rule 33(d), the responding party

must "precisely specif y] for each interrogatory ...the actual documents where information

will be found." SEC v Elfindepan, 206 F.R.D. 574, 576 (M.D.N.C. 2002) (citation

omitted). In Psenner a Victoria's Secret Stores, LLC, No. 1:13-CV-01295-AWI-SMS,

2014 U.S. Dist. LEXIS 154783 (E.D. Cal. Oct. 31, 2014), the court fowid the use of Rule

D


33(d) inadequate "because it failed to identify where in the records the answers could be

found." Psenner.v..Victoria's Secret Stores, LLC, No. 1:13-CV-01295-AWI-SMS, 2014

U.S. Dist. LEXIS 154783, at 6-7 (E.D. Ca1. Oct. 29, 2014). The court noted that "[a]t a

minimum, the response referring to business records must provide the category and

location of records which will provide the answers, and if the records are voluminous, the

response must include an index uidin the party to the responsive documents." The court

further stated: "ff the party cannot identify which specific documents contain the answer

to the interrogatories, they must completely answer the interrogatories without referring to

the documents." Id. at 5 (citation omitted). Moreover, the Middle District's Discovery

Handbook requires the producing party to "[s]pecify the documents to be produced in

sufficient detail to permit the interrogating party to locate and identify the records and to

ascertain the answer as readily as could the party from whom the discovery is sought," and

notes that "it behooves the producing party to make the document search as simple as

possible, or the producing party may be required to answer the interrogatory in full."

Middle District Discovery (2015) at 13-14.

Here, Qualcomm has provided no such index, has not made the document search

"as simple as possible," and has not provided "sufficient detail" to permit ParkerVision "to

locate and identify the records and to ascertain as readily as could" Qualcomm. Instead,

Qualcomm has generally identified tens of thousands of pages of documents. But

referencing a mass of documents or records in this manner does not comply with Rule

33(d). See e.g.; United States ex rel. Landis v. Tailwind Sports Corp., 317 F.R.D. 592, 594

(D.D.C. 2016) (citations omitted). "Document dumps or vague references to documents

10


do not suffice." SEC v Elfrndepan, 206 F.R.D.. 574, 576 (M.D.N.C. 2002) (citations

omitted). As agreed during the meet and confer, Mr. Gardner stated that Qualcomm

engineers know exactly where to look for this information. See Ex. C. At a minimum, •

Qualcomm engineers should be able to generate an index to guide ParkerVision to the

responsive documents.

Further, in its response to uiterrogatory No. 11, several of the files referenced by

Qualcomm appear to have hundreds of versions. For example,

. ParkerVision has no way of knowing which version includes the

correct register settings, whether both versions of the file were provided to the public at

different times, or whether neither of the versions of the file were provided to the public.

Finally, reliance on Rule 33(d) is improper because many of the documents to

which Qualcomm cites are not business records as required by the rule. While some of the

cited documents likely are business records, documents such as "deposition testimony,"

"expert and fact witness statements," and. "interrogatory responses" clearly are not. Thus,

it is improper for Qualcomm to reference them under Rule 33(d). "Pleadings, depositions,

[and] exhibits...are not Rule 33(d) business records." SEe vElfindepan, 206 F.R.D. 574,

577-578 (M.D.N.C. 2002) (citations omitted). Inclusion of non-business records in

Qualcomm's response only makes the response more voluminous and more burdensome

for ParkerVision to find the information it seeks in I~iterrogatory No. 11. ParkerVision

11


requests that Qualcomm be compelled to provide a guide to the information or to answer

the interrogatory in full.

VI. CONCLUSION

For the foregoing reasons, ParkerVision respectfully requests that the Court grant

its motion and compel Qualcomm to provide a complete answer to Interrogatory No. 11,

Local Rule 3.01(Q) Certification

Pursuant to Local Rule 3.01(g), ParkerVision's attorneys conferred in good faith

with Qualcomm's atton~eys, wlio object to the relief sought in this motion.

Dated: December 23, 2019

MINTZ, LEVIN, COHN, FERRIS,GLOVSKI' AND POPEO PC

SMITH HULSEY & BUSEY

Michael T. Renaud (Mass BB(~ No. 629783)

James M. Wodarski (Mass BBO No. 627036)

Michael J. McNamara (Mass BBO No. 665885)

Daniel B. Weinger (Mass BBO No. 681770)

Kristina R. Cary (Mass BBO No. 688759)

One Financial CenterBoston, MA 0211.1Tel: (617) 542-6000Facsimile: (617) [email protected]@[email protected]@[email protected]

By /s/John R. ThomasStephen ll. BuseyJohn R. Thomas

Florida Bar Nurriber 117790Florida Bar Number 77107One Independent Drive, Suite 3300

Jacksonville, Florida 32202Tel: (904) 359-7700Facsimile: (904) 359-7708busey@smithhulsey. comjthomas @smithhulsey. com

Attorneys for PlaintiffPark-erVrsion, Inc.

12


CERTIFICATE OF SERVICE

I certify that on December 23, 2d 19, a copy of the foregoing was served by email

to counsel for Qualcomm Inc.

/s/John R. ThomasAttorney

1055164

13


in the united states district court jacksonville ......case 3:15-cv-01477-bjd-jbt document 187 filed...

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