IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC d/b/a

BRAZOS LICENSING AND

DEVELOPMENT,

Plaintiff,

v.

MICROSOFT CORPORATION, 

Defendant.

Civil Action No. 6:20-cv-00454-ADA

Civil Action No. 6:20-cv-00455-ADA

Civil Action No. 6:20-cv-00456-ADA

Civil Action No. 6:20-cv-00458-ADA

Civil Action No. 6:20-cv-00459-ADA

Civil Action No. 6:20-cv-00460-ADA

Civil Action No. 6:20-cv-00461-ADA

Civil Action No. 6:20-cv-00462-ADA

Civil Action No. 6:20-cv-00463-ADA

Civil Action No. 6:20-cv-00464-ADA

JURY TRIAL DEMANDED

DEFENDANT MICROSOFT CORPORATION’S OPPOSITION TO CORRECTED 

RULE 26 MOTION FOR PROTECTIVE ORDER BY NON-PARTY WADE & 

COMPANY (USA), INC. AND BY WSOU INVESTMENTS LLC

Case 6:20-cv-00454-ADA Document 85 Filed 09/03/21 Page 1 of 14
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TABLE OF CONTENTS

I. INTRODUCTION..................................................................................................1

II. BACKGROUND....................................................................................................2

III. ARGUMENT.........................................................................................................4

A. Wade and WSOU Waived Any Objections to the Subpoena..................................... 4

B. Wade and WSOU Did Not Timely Move for a Protective Order............................... 5

C. The Discovery Sought is Relevant to Core Issues in the Underlying Litigations........ 5

D. Wade Possesses Relevant Information That Warrants an Oral Deposition................. 6

IV. CONCLUSION......................................................................................................8

Case 6:20-cv-00454-ADA Document 85 Filed 09/03/21 Page 2 of 14
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TABLE OF AUTHORITIES

Page(s)

Cases

Amira Saad v. Walgreen, Co.,

No. 2:19-CV-09869-SB-JC, 2020 WL 8680004 (C.D. Cal. Dec. 20, 2020).......................... 4

Diamond Coating Techs., LLC v. Hyundai Motor Am.,

No. 8:13-CV-01480-MRP, 2015 WL 2088892 (C.D. Cal. Apr. 1, 2015), aff'd,

823 F.3d 615 (Fed. Cir. 2016)............................................................................................ 6

Fresenius Medical Care Holding Inc. v. Baxter Intern., Inc.,

224 F.R.D. 644 (N.D. Cal. 2004)........................................................................................ 6

Innovative Mktg. & Tech., L.L.C. v. Norm Thompson Outfitters, Inc.,

171 F.R.D. 203 (W.D. Tex. 1997)...................................................................................... 8

Jackson Mun. Airport Auth. v. Reeves,

No. 3:16-CV-246-CWR-FKB, 2020 WL 5648329 (S.D. Miss. Sept. 22, 2020)..................... 7

Limelight Networks, Inc. v. XO Communications, LLC,

2018 WL 678245 (E.D. Va., Feb. 2, 2018).......................................................................... 6

Orchestrate HR, Inc. v. Trombetta,

No. 3:13-cv-2110-P (N.D. Tex. Apr. 8, 2015)..................................................................... 5

Oskoui v. JPMorgan Chase Bank,

No. 12-CV-03511-FMO-AGRX, 2019 WL 8955363 (C.D. Cal. Apr. 1, 2019)..................... 7

Perez v. Boecken,

No. SA-19-CV-00375-XR, 2020 WL 2733954 (W.D. Tex. May 26, 2020), 

aff’d, No. SA-19-CV-00375-XR, 2020 WL 3163192 (W.D. Tex. June 12, 

2020) ................................................................................................................................ 4

U.S. ex rel. Schwartz v. TRW, Inc.,

211 F.R.D. 388 (C.D. Cal. 2002)........................................................................................ 4

Sound View Innovations, LLC v. Hulu, LLC,

No. 17-cv-4146-JAK-PLAX, 2018 WL 6164271 (C.D. Cal. June 12, 2018)......................... 6

Rules & Statutes

28 U.S.C. § 1746..................................................................................................................... 6

C.D. Cal. L.R. 37-1.................................................................................................................. 3

C.D. Cal. L.R. 37-2.................................................................................................................. 3

Case 6:20-cv-00454-ADA Document 85 Filed 09/03/21 Page 3 of 14
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C.D. Cal. L.R. 37-2.2............................................................................................................... 4

Fed. R. Civ. P. 26.................................................................................................................... 1

Fed. R. Civ. P. 26(b)(1)........................................................................................................... 5

Fed. R. Civ. P. 26(c)(2).........................................................................................................1, 8

Fed. R. Civ. P. 45(c)(2)(B)....................................................................................................... 4

Case 6:20-cv-00454-ADA Document 85 Filed 09/03/21 Page 4 of 14
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Defendant Microsoft Corporation (“Microsoft”) submits this Opposition to the 

Corrected1 Rule 26 Motion for Protective Order by Non-Party Wade & Company (USA), Inc. 

(“Wade”) and Plaintiff WSOU Investments, LLC (“WSOU”) (“the Motion”). 

I. INTRODUCTION.

The Motion arose out of Wade’s refusal to sit for a deposition in response to a subpoena 

served on April 9, 2021. Despite refusing to appear for a deposition, Wade did not serve any 

written objections to the deposition subpoena, did not move to quash the subpoena (after stating 

on an earlier meet and confer that it would do so), and did not respond to repeated requests to 

meet and confer. See Decl. of Irene Yang in Support of Opp’n to Mot. for Protective Order 

(“Yang Decl.”) Ex. 2. WSOU likewise never objected to the subpoena. Accordingly, the Motion 

is untimely, and Wade and WSOU have waived any objections.

Wade’s relevance to the litigations is clear. As an assignee of the Patents-in-Suit who 

then assigned the Patent Purchase Agreement to WSOU, Wade indisputably participated in 

events facially related to at least the valuation of the patents and WSOU’s standing to bring the 

lawsuits against Microsoft. Wade executed an agreement to purchase a portfolio of thousands of 

patents (including the Patents-in-Suit). Its current assertion of no documents and no knowledge 

relevant to those patents appears self-serving, and Microsoft should be able to test those claims. 

Microsoft therefore requests that the Court deny the Motion and instead, under Fed. R. Civ. P. 

26(c)(2), compel Wade to sit for a deposition on the topics identified at the earliest possible date 

prior to the close of fact discovery on September 30, 2021.

1 Wade and WSOU represented that the Motion was corrected simply to include the certificate of 

conference, see Motion at n.1, but the original version was never served on Microsoft. 

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II. BACKGROUND.

On June 2, 2020, WSOU filed twelve complaints against Microsoft alleging that 

Microsoft infringes twelve different patents, ten of which WSOU ultimately acquired from 

Wade. Wade originally executed a Patent Purchase Agreement (“PPA”) to purchase the portfolio 

comprising ten of the Patents-in-Suit2 from Alcatel Lucent, Nokia Solutions and Networks BV, 

and Nokia Technologies Oy. Yang Decl. Ex. 6C (WSOU-MICAL-0000026-502). It also entered 

into an Amendment to the PPA with the same entities. Yang Decl. Ex. 6D (WSOU-MICAL0000503-931). It then assigned the PPA and Amendment to the PPA to WSOU on August 21, 

2017. Yang Decl. Ex. 6A at Reel/Frame 044000/0140; Ex. 6B at WSOU-MICAL-0001802. 

Wade advertises itself as “a family office investment firm and merchant bank” including “a team 

of successful investors and established entrepreneurs with a breadth of experience across diverse 

sectors.” See Yang Decl. Ex. 5 at 3 (https://tinyurl.com/25yerev4). Wade purports to be located 

in Newport Beach, California with a registered address in Los Angeles, California. Yang Decl. 

Ex. 4, Ex. 5 at 20 (https://tinyurl.com/chpdypxd). Marc Wade is Wade’s CEO, Secretary, CFO, 

and Director. Id.

Microsoft issued a subpoena for documents and a subpoena for deposition testimony to 

Wade on April 6, 2021. Yang Decl. Ex. 1; see also, Ex. 2 at 10-11. After providing notice of the 

subpoenas to WSOU on April 6, the subpoenas were served on Marc Wade. Yang Decl. Ex. 3. 

On April 23, 2021, Wade contacted Microsoft about a 30-day extension to respond, and served 

bare-bones objections to the document subpoena. Yang Decl. Ex. 2 at 10. Microsoft agreed to 

2 Each of the ten patents is listed in the schedule recorded with the patent office. See Yang Decl. 

Ex. 6A at Reel/Frame 044000/0146, 0170, 0175, 0176, 0189, 0190, 0252, 0262, and 0271; Ex. 

6B (WSOU-MICAL-0001798-1952) at 1808, 1832, 1837-1838, 1851-1852, 1914, 1924, and 

1933.

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extend the response deadline to May 14 if documents and complete responses would be produced 

by that date. Id. at 9. 

Microsoft agreed to another 30-day extension of the deposition to June 14, 2021 in view 

of Wade’s representation that its collection of documents was ongoing. Id. at 8. On June 9, 2021, 

counsel for Wade indicated that Wade “will not appear for depositions” because Wade had 

“conducted a reasonable search and did not locate any relevant documents in [its] possession. 

[Wade] also do[es] not have relevant knowledge.” Id. at 7. Wade asked Microsoft to withdraw 

the subpoena, but Microsoft did not agree. Id. The June 14, 2021 deadline passed and on June 17, 

Microsoft again followed up to seek a witness’ availability for deposition. Id. at 7. The parties 

held another meet and confer on June 29, and Microsoft indicated that it would oppose a motion 

to quash and would not agree to a written response in lieu of sworn, live testimony given the 

relevance of Wade’s information to damages. Id. at 4.

After no motion to quash was filed, Microsoft followed up on the issue on July 19, but 

received no response. Id. On August 12, after it became clear that Wade was not going to file a 

motion to quash after all, Microsoft requested a meet and confer pursuant to C.D. Cal. L.R. 37-1 

in order to bring a motion to compel in the Central District of California, the court of 

compliance. Id.; see also, Yang Decl. Ex. 7 at p. 55 (C.D. Cal. L.R. 37-1). Microsoft followed up 

on August 17. Yang Decl. Ex. 2 at 3-4. After over six weeks of silence, Wade finally responded 

on August 20, 2021. Id. at 3. Wade and Microsoft held a meet and confer under C.D. Cal. L.R. 

37-1 on August 26, 2021, and pursuant to the C.D. Cal. L.R. 37-2 procedures, Microsoft sent 

Wade its half of a required “joint stipulation” containing Microsoft’s arguments in support of its 

Motion. Id. at 1-2. Under C.D. Cal. L.R. 37-2, Wade was supposed to provide its half of the joint 

submission within 7 days, by September 2, 2021, for filing with the Central District of 

Case 6:20-cv-00454-ADA Document 85 Filed 09/03/21 Page 7 of 14
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California. Yang Decl. Ex. 7 at pp. 56-57 (C.D. Cal. L.R. 37-2.2). Instead, Wade and WSOU 

filed this Motion on the evening of September 1, 2021.

III. ARGUMENT.

A. Wade and WSOU Waived Any Objections to the Subpoena.

Failure to serve timely, written objections to a subpoena within fourteen days under Rule 

45(c)(2)(B) waives any objections to the subpoena, its form, and its manner of service. See, e.g., 

Perez v. Boecken, No. SA-19-CV-00375-XR, 2020 WL 2733954, at *3 (W.D. Tex. May 26, 

2020), aff’d, No. SA-19-CV-00375-XR, 2020 WL 3163192 (W.D. Tex. June 12, 2020) (“A 

person commanded to produce materials may resist such subpoena by timely serving objections 

or asserting privileges within 14 days after service of the subpoena. [citing Fed. R. Civ. P. 

45(d)(2)(B)]. A failure to file objections results in the waiver of the same unless there are 

unusual circumstances present or good cause is shown.”); see also Amira Saad v. Walgreen, Co., 

No. 2:19-CV-09869-SB-JC, 2020 WL 8680004, at *6 (C.D. Cal. Dec. 20, 2020); U.S. ex rel. 

Schwartz v. TRW, Inc., 211 F.R.D. 388, 392 (C.D. Cal. 2002). 

Microsoft granted multiple extensions to Wade for the subpoena, ultimately extending the 

deadline from April 26 to June 14, 2021. Yang Decl. Ex. 2 at 8-10. However, Wade did not serve 

any formal objections to the deposition subpoena, and instead on June 9 asked Microsoft to 

withdraw it. Id. at 7. Microsoft declined, as the alleged current absence of documents does not 

compel a corresponding lack of knowledge regarding the purchase of a patent portfolio and the 

negotiation of its specific compensation terms. Id. Wade did not serve any objections by June 14 

and still has not served any formal objections or moved to quash, despite repeated follow up by

Microsoft. Id. at 1-7. Despite receiving notice of the subpoenas to Wade, WSOU never objected. 

Accordingly, Wade and WSOU have waived any objections to the deposition subpoena.

Case 6:20-cv-00454-ADA Document 85 Filed 09/03/21 Page 8 of 14
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B. Wade and WSOU Did Not Timely Move for a Protective Order

Because Wade and WSOU did not file the Motion until long after June 14, 2021, the

Motion for a Protective Order is also untimely. See, e.g., Orchestrate HR, Inc. v. Trombetta, No. 

3:13-cv-2110-P, at *3 (N.D. Tex. Apr. 8, 2015) (“A motion for a Rule 26(c) protective order is 

not timely if it is filed after the date or time set for the discovery at issue.”). There is no excuse 

for their delay. Microsoft repeatedly followed up with Wade by email, but Wade was silent for 

months and failed to engage in good faith efforts to promptly resolve this dispute. See generally 

Yang Decl. Ex. 2. Instead, Wade used the process outlined in the Central District of California 

local rules to continue to delay resolution of the issue and preview the arguments in Microsoft’s 

proposed motion to compel. See supra at 3-4. WSOU never objected, even by email, to the Wade 

subpoenas. In view of their conduct, there can be no good cause for this untimely Motion.

C. The Discovery Sought is Relevant to Core Issues in the Underlying 

Litigations.

Under the Federal Rules of Civil Procedure, “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 . . .” See Fed. R. Civ. P. 26(b)(1). The deposition topics set forth in Microsoft’s 

subpoena to Wade are targeted to key issues in the case; in particular, they are relevant to 

Microsoft’s assessment of WSOU’s damages theories in the underlying litigations and whether 

WSOU has standing to assert the patents at issue against Microsoft at all. 

For example, the subpoena seeks information regarding offers to buy, sell, obtain rights 

to, or license any of the Patents-in-Suit and communications with WSOU regarding the patents, 

the lawsuits, or Microsoft. See, e.g., Yang Decl. Ex. 1 at 15-16 (Dep. Topics 4, 6, 9-10). How 

Wade, a prior patent owner, and any other potential licensees or assignees valued the Patents-inSuit and portfolio comprising the Patents-in-Suit is directly relevant to the hypothetical 

Case 6:20-cv-00454-ADA Document 85 Filed 09/03/21 Page 9 of 14
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negotiation underlying a reasonable royalty damages analysis. Courts, including the court for 

compliance, have previously found that “patent acquisition agreements may have bearing on the 

issues of damages in a patent infringement suit.” Sound View Innovations, LLC v. Hulu, LLC, 

No. 17-cv-4146-JAK-PLAX, 2018 WL 6164271, at *2 (C.D. Cal. June 12, 2018) (citing 

Fresenius Medical Care Holding Inc. v. Baxter Intern., Inc., 224 F.R.D. 644, 653 (N.D. Cal. 

2004); Limelight Networks, Inc. v. XO Communications, LLC, 2018 WL 678245, at *6 (E.D. Va., 

Feb. 2, 2018)).

As another example, the subpoena seeks information regarding the nature and scope of 

Wade’s rights in the Patents-in-Suit and the assignment of the Patents-in-Suit. See, e.g., Yang 

Decl. Ex. 1 at 15-16 (Dep. Topics 5-7, 10). Though Wade claims it merely “explored the 

possibility of purchasing some patents from Nokia,” Motion at 2, Wade did in fact actually 

purchase the patents, as demonstrated by its execution of the underlying agreements. Wade is in 

possession of information regarding the nature and scope of its rights in the Patents-in-Suit, 

including the rights assigned to it and the rights it assigned to WSOU, which is relevant to 

standing. See, e.g., Diamond Coating Techs., LLC v. Hyundai Motor Am., No. 8:13-CV-01480-

MRP, 2015 WL 2088892, at *2 (C.D. Cal. Apr. 1, 2015), aff'd, 823 F.3d 615 (Fed. Cir. 2016). 

Finally, the subpoena seeks various categories of information surrounding the invention, 

named inventors, prosecution, and validity of the Patents-in-Suit. See, e.g., Yang Decl. Ex. 1 at 

15-16 (Dep. Topics 2-3, 8, 11-15). Wade would have been expected to review such information 

in the course of preparing to purchase the portfolio underlying the Patents-in-Suit. 

D. Wade Possesses Relevant Information That Warrants an Oral Deposition.

Wade’s only alleged basis for refusing to sit for a deposition is a declaration (not made

under penalty of perjury in accordance with 28 U.S.C. § 1746), claiming that Marc Wade does 

not have any responsive documents or knowledge. See Marc Wade Decl., Civil Action No. 6:20-

Case 6:20-cv-00454-ADA Document 85 Filed 09/03/21 Page 10 of 14
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cv-00454, Dkt No. 83-1. Even if that were true—and without a deposition, Microsoft has no way 

to verify that assertion—the documents produced in this litigation reveal that Wade executed a 

purchase agreement to acquire a portfolio of thousands of patents, including the Patents-in-Suit, 

and then ultimately assigned that purchase agreement to WSOU. Yang Decl. Exs. 6C at WSOUMICAL-00000031 (Section 4, Consideration); 6D. Further, even if Mr. Wade himself does not 

have knowledge, Wade can appoint someone else as a corporate representative for the deposition 

of Wade.

WSOU claims it has produced documents related to Wade and Company, see Motion at 

5, but WSOU has not produced any documents regarding Wade other than the executed 

agreements. Wade’s declaration and pattern of behavior in attempting to ignore its discovery 

obligations until the day before Microsoft was set to file a motion to compel in the Central 

District of California is telling. A business comprising a team of “successful investors” would 

surely generate documents and undertake diligence analysis in order to evaluate whether to 

purchase and assign a portfolio of thousands of patents as well as in negotiating the particular 

terms of that assignment. See Yang Decl. Ex. 5 at 3.

Thus, Wade possesses relevant information to testify at a deposition, and its request to 

withdraw the subpoena based on its failure to produce any documents should be disregarded. For 

similar reasons, Wade’s offer for a written declaration in lieu of a deposition should also be 

disregarded, as courts have repeatedly recognized the value of oral depositions over written 

testimony. See, e.g., Oskoui v. JPMorgan Chase Bank, No. 12-CV-03511-FMO-AGRX, 2019 

WL 8955363, at *4 (C.D. Cal. Apr. 1, 2019) (recognizing that the format of written testimony 

“does not permit the probing follow-up questions necessary” and prevents observation of the 

demeanor and credibility of the witness); Jackson Mun. Airport Auth. v. Reeves, No. 3:16-CVCase 6:20-cv-00454-ADA Document 85 Filed 09/03/21 Page 11 of 14
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246-CWR-FKB, 2020 WL 5648329, at *4–5 (S.D. Miss. Sept. 22, 2020) (“Written statements, 

in contrast [to oral depositions], are thought to be less useful, less likely to lead to truth. When a 

witness has an opportunity to write down his answers, he has the opportunity to ‘plan artful 

responses.’” (citing Innovative Mktg. & Tech., L.L.C. v. Norm Thompson Outfitters, Inc., 171 

F.R.D. 203, 204 (W.D. Tex. 1997))).

Because the deposition topics seek relevant information in Wade’s possession, the 

Motion should be denied and Wade should be compelled to produce a corporate witness to 

testify orally on all topics in the subpoena at the earliest possible date.

IV. CONCLUSION.

For the foregoing reasons, Microsoft respectfully requests that the Court deny the Motion 

and instead, under Fed. R. Civ. P. 26(c)(2), compel Wade to sit for a deposition on the topics 

identified at the earliest possible date prior to the close of fact discovery on September 30, 2021. 

Alternatively, if a representative of Wade is not available for a deposition prior to September 30, 

2021, Microsoft respectfully requests an order permitting the deposition to be taken after the 

close of fact discovery.

Respectfully submitted, 

Date: September 3, 2021 /s/ Barry K. Shelton

Of Counsel Barry K. Shelton

Texas State Bar No. 24055029

Michael J. Bettinger SHELTON COBURN LLP

Irene Yang 311 RR 620 S, Suite 205

SIDLEY AUSTIN LLP Austin, TX 78734

555 California St., Suite 2000 Telephone: (512) 263-2165

San Francisco, CA 94104 Fax: (512) 263-2166

Telephone: (415) 772-1200 bshelton@sheltoncoburn.com

Fax: (415) 772-7400

mbettinger@sidley.com

Attorneys for Defendant Microsoft 

Corporation

irene.yang@sidley.com

Case 6:20-cv-00454-ADA Document 85 Filed 09/03/21 Page 12 of 14
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Richard A. Cederoth 

John W. McBride

Richard M. Chen (admitted pro hac vice)

Kevin R. Oliver (admitted pro hac vice)

SIDLEY AUSTIN LLP

1 South Dearborn St.

Chicago, IL 60603

Telephone: (312) 853-7000

Fax: (312) 853-7036

rcederoth@sidley.com

jwmcbride@sidley.com

Attorneys for Defendant Microsoft 

Corporation

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CERTIFICATE OF SERVICE

I certify that on September 3, 2021, I electronically filed the foregoing with the Clerk of 

Court using the CM/ECF system, which will send notification of such filing to all counsel of 

record as identified below. 

/s/ Barry K. Shelton

Barry K. Shelton

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