ParkerVision, Inc. v. QUALCOMM Incorporated et al
Filing
194
ORDER denying 108 Defendant Samsung's Motion to Strike Plaintiff ParkerVision, Inc.'s Infringement Contentions Regarding Non-Qualcomm Based Samsung Products. Signed by Judge Paul G. Byron on 8/11/2015. (SEN)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
ORLANDO DIVISION
PARKERVISION, INC.,
Plaintiff,
v.
Case No: 6:14-cv-687-Orl-40KRS
QUALCOMM INC., et al.,
Defendants.
ORDER
This cause comes before the Court on the following:
1. Defendant Samsung’s Motion to Strike Plaintiff ParkerVision, Inc.’s
Infringement Contentions Regarding Non-Qualcomm Based Samsung
Products (Doc. 108), filed April 13, 2015;
2. Plaintiff ParkerVision, Inc.’s Response in Opposition to Samsung’s Motion
to Strike Regarding ParkerVision’s Infringement Contentions (Doc. 122),
filed April 30, 2015;
3. Defendant Samsung’s Reply in Support [of] Motion to Strike Plaintiff
ParkerVision, Inc.’s Infringement Contentions Regarding Non-Qualcomm
Based Samsung Products (Doc. 130), filed May 18, 2015;
4. Plaintiff ParkerVision’s Sur Reply in Further Opposition to Samsung’s
Motion to Strike Regarding ParkerVision’s Infringement Contentions
(Doc. 135), filed June 3, 2015.
Upon consideration, the motion to strike is denied.
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I.
BACKGROUND
Plaintiff, ParkerVision, Inc. (“ParkerVision”), sues, among others, Samsung
Electronics
Co.,
Ltd.,
Samsung
Electronics
America,
Inc.,
and
Samsung
Telecommunications America, LLC (collectively, “Samsung”) for the infringement of
eleven patents.
Briefly, ParkerVision’s case revolves around transmitter, receiver,
transceiver, and baseband integrated circuits (collectively, “chips”) contained in cellular
telephones, tablets, and other types of devices. ParkerVision ultimately accuses 133 of
Samsung’s products, some of which utilize processors manufactured by co-defendant
Qualcomm, Inc. (“Qualcomm-based accused products”) and others that do not (“nonQualcomm-based accused products”). (Doc. 108-2). Samsung now moves the Court
pursuant to Federal Rule of Civil Procedure 16(f) to strike ParkerVision’s infringement
contentions to the extent they attempt to accuse Samsung’s non-Qualcomm-based
accused products.
Samsung seeks this relief because it believes ParkerVision’s
infringement contentions fail to adhere to the specificity requirements of this Court’s Case
Management and Scheduling Order.
II.
STANDARD OF REVIEW
Federal Rule of Civil Procedure 16(f) allows the Court to sanction a party who “fails
to obey a scheduling or other pretrial order.” Fed. R. Civ. P. 16(f)(1)(C). Permissible
sanctions include striking material from pleadings, dismissing the action, and imposing
reasonable fees and costs. Fed. R. Civ. P. 37(b)(2)(A)(ii)–(vii). “Rule 16(f) sanctions
were ‘designed to punish lawyers and parties for conduct which unreasonably delays or
otherwise interferes with the expeditious management of trial preparation.’” United States
v. Samaniego, 345 F.3d 1280, 1284 (11th Cir. 2003) (quoting Goforth v. Owens, 766 F.2d
1533, 1535 (11th Cir. 1985)). Although Rule 16(f) affords broad discretion to a district
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court, sanctions are generally warranted only where there is a “clear record of delay or
willful contempt” or other improper conduct. Goforth, 766 F.2d 1533 at 1535.
III.
DISCUSSION
Samsung asks the Court to sanction ParkerVision for failing to comply with the
portion of this Court’s Case Management and Scheduling Order (“CMSO”) requiring
pretrial disclosure of infringement contentions. That part of the CMSO provides as
follows:
A party making infringement contentions must serve on the
opposing party, but not file with the Court, disclosures of the
following information:
1.
The party shall disclose each asserted claim of
infringement.
2.
The party shall disclose the identity of each accused
device. This identification shall be as specific as
possible. The party shall identify each accused device
by name or model number, if known.
3.
For each element of each asserted claim, the party
shall disclose its contentions as to how each element
of each claim is found in each accused device.
4.
For each element of each asserted claim that the party
contends is governed by 35 U.S.C. § 112 ¶ 6, the party
shall disclose the function and structure of each
element and where the function and structure is
disclosed in the specification. The party shall also
disclose the identity of the structure(s), act(s), or
material(s) in each accused device that performs the
claimed function.
5.
The party shall disclose whether each element of each
asserted claim is claimed to be literally present or
present under the doctrine of equivalents in the
accused device.
(Doc. 92, pp. 2–3) (footnote omitted).
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Although ParkerVision served its disclosure of accused products (Doc. 108-2) and
infringement contentions (Doc. 122-1) on Samsung, Samsung contends that the
infringement contentions fail to comply with the CMSO’s specificity requirements. In
particular, Samsung takes issue with how ParkerVision alleged its infringement
contentions against non-Qualcomm-based accused products.
Instead of making
individual infringement contentions supporting each element of each claim against each
non-Qualcomm-based accused product, ParkerVision incorporated by reference its
infringement contentions against the Qualcomm-based accused products and indicated
that it intended to pursue the same theories of infringement as to both Qualcomm-based
and non-Qualcomm-based accused products.
Samsung argues that this shotgun
approach to ParkerVision’s infringement contentions obfuscates ParkerVision’s theories
of infringement as to each accused product and renders discovery unduly burdensome.
Samsung also contends that ParkerVision errs in its position that the non-Qualcommbased accused products function in the same manner as the Qualcomm-based accused
products and that ParkerVision’s approach to its infringement contentions has
impermissibly shifted the burden to Samsung to disprove this theory.
ParkerVision responds that its infringement contentions adequately comply with
the CMSO’s specificity requirements because ParkerVision is allowed to use
representative examples of accused products to show its infringement theories for the
remaining accused products. ParkerVision indicates that it engaged in extensive pre-suit
discovery in order to determine which of Samsung’s products allegedly infringed
ParkerVision’s asserted technology, including the reverse engineering of multiple
Qualcomm chips that appeared in various of Samsung’s flagship products. ParkerVision
explains that it made the decision not to reverse engineer every single chip in each
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accused product because the time and cost to do so would be astronomical. 1
ParkerVision further reveals that Samsung began placing non-Qualcomm chips in its
accused products after ParkerVision served its infringement contentions. ParkerVision
states that these non-Qualcomm-based accused products infringe its asserted
technology in the exact same manner and, therefore, that its infringement contentions for
the Qualcomm-based accused products apply equally to the non-Qualcomm-based
accused products.
The Court finds that sanctions against ParkerVision—particularly the striking of its
infringement
contentions—are unwarranted.
First,
ParkerVision’s
infringement
contentions as they currently stand sufficiently comply with the CMSO’s specificity
requirements. The purpose of infringement contentions is to provide the defendant with
notice of the plaintiff’s theories of infringement beyond what is disclosed in the complaint.
STMicroelectronics, Inc. v. Motorola, Inc., 308 F. Supp. 2d 754, 755 (E.D. Tex. 2004).
Additionally, where a plaintiff accuses a large number of products and asserts that each
accused product infringes the asserted technology in the same way, a representative
accused product can be used to outline the plaintiff’s infringement contentions against
other accused products. Linex Techs., Inc. v. Belkin Int’l, Inc., 628 F. Supp. 2d 703, 711
(E.D. Tex. 2008).
Here, Samsung takes no issue with ParkerVision’s infringement
contentions against the Qualcomm-based accused products, which appear to be detailed
and complete.
The fact that ParkerVision uses representative accused products is
therefore sufficient to show Samsung its theories of infringement for the non-Qualcommbased accused products.
1
In support, ParkerVision attaches the sworn declaration of its Patent and Technology
Specialist, who illuminates that it ordinarily costs over $90,000 and takes between
three to six months to reverse engineer one chip. (Doc. 122-2).
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Second, to the extent Samsung contends ParkerVision is mistaken in its belief that
the non-Qualcomm-based accused products function in the same manner as the
Qualcomm-based accused products, Samsung essentially asks the Court to address the
merits of ParkerVision’s case, which is inappropriate at this juncture. ParkerVision will
ultimately live or die by its infringement contentions. As the infringement contentions
currently stand, ParkerVision provides Samsung adequate notice of its case against each
accused product. Should ParkerVision be incorrect or impermissibly vague in its theories
of infringement, those are issues Samsung can pursue on summary judgment or at trial.
Finally, the parties continue to vigorously engage in discovery and the deadline for
ParkerVision to supplement or amend its infringement contentions has not yet passed.
In addition to the fact that this ongoing discovery and the upcoming Markman hearing
may allow ParkerVision to hone its theories of infringement, the striking of ParkerVision’s
otherwise sufficient infringement contentions is unwarranted.
IV.
CONCLUSION
For the aforementioned reasons, it is ORDERED AND ADJUDGED that
Defendant Samsung’s Motion to Strike Plaintiff ParkerVision, Inc.’s Infringement
Contentions Regarding Non-Qualcomm Based Samsung Products (Doc. 108) is
DENIED.
DONE AND ORDERED in Orlando, Florida on August 11, 2015.
Copies furnished to:
Counsel of Record
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