ParkerVision, Inc. v. QUALCOMM Incorporated et al
Filing
297
ORDER granting 284 Motion Addressing Election of Claims and Accused Products. See Order for details. Signed by Judge Paul G. Byron on 7/23/2019. (JRJ)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
ORLANDO DIVISION
PARKERVISION, INC.,
Plaintiff,
v.
Case No: 6:14-cv-687-Orl-40LRH
QUALCOMM INCORPORATED,
QUALCOMM ATHEROS, INC., HTC
CORPORATION and HTC AMERICA,
INC.,
Defendants.
/
ORDER
This cause is before the Court on ParkerVision’s Motion Addressing Election of
Claims and Accused Products, (Doc. 284), Defendant Qualcomm’s Response in
Opposition, (Doc. 285), and ParkerVision’s Reply, (Doc. 289). With the benefit of the
parties’ briefing and after oral argument, the Court finds Plaintiff ParkerVision did not
abandon claims in certain patents-at-issue by virtue of the correspondence exchanged
between the parties. Rather, the parties were in the process of negotiating the potential
reduction in claims and corresponding prior art references, but the negotiations collapsed
and were never memorialized by an Order of this Court.
Accordingly, Plaintiff may proceed on all patents and claims which were not
invalidated via the Inter Partes Review (IPR) proceeding. Plaintiff Parkervision stipulated
in their briefing and at oral argument that claims 88–92 of the ‘372 patent are abandoned,
and the Court orders that those claims are dismissed. Defendant Qualcomm stipulated
that accused devices not identified in the Complaint may be included in this litigation for
the sake of judicial economy. The parties shall meet and confer on necessary
modifications to the Case Management Scheduling Order, including a briefing schedule
to address whether any patents and claims brought in the instant litigation are affected
by ParkerVision I.
I.
BACKGROUND
1.
The IPR
This litigation has a complex history, beginning with ParkerVision’s complaint
alleging the infringement of seven patents. (Doc. 1). In the First Amended Complaint,
ParkerVision added four patents. 1 (Doc. 26). As is customary, the parties provided the
Court with a technology tutorial, (Doc. 157), and the Court held a claim construction
hearing. (Doc. 198). Following the claim construction hearing, the parties filed a Joint
Motion to Dismiss Certain Claims and Covenant not to Sue, (Doc. 228), which the Court
granted. (Doc. 246). The Motion to Dismiss informed the Court that certain terms
discussed at the claim construction hearing no longer required interpretation by the Court.
(Doc. 228). As the case progressed, the parties stipulated to the dismissal of the Samsung
Defendants, (Doc. 255), and the Court granted the dismissal. (Doc. 256). The litigation
was ultimately stayed pending the IPR proceeding. (Docs. 255, 256).
Plaintiff ParkerVision appealed three final written decisions of the U.S. Patent Trial
and Appeal Board in which the Board held certain claims of the ‘940 patent unpatentable
as obvious. ParkerVision, Inc. v. Qualcomm, Inc., 903 F.3d 1354, 1357 (Fed. Cir. 2018).
Qualcomm challenged the apparatus and method claims of the ‘940 patent as being
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ParkerVision has elected to proceed with the ‘940, ‘372, ‘907, and ‘177 patents, which
were all disclosed in the First Amended Complaint and Plaintiff’s Claim Construction
Brief. (Doc. 284, pp. 2–3; Docs. 124, 148).
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obvious. Id. at 1358. The Board determined the apparatus claims would have been
obvious. Id. at 1359. The Federal Circuit affirmed the Board’s finding that claims 4, 21,
22, 23, 100, 113–16, 118, 119, 281, 283–86, 288, 289, 293, 309–12, 314–15, and 319
are unpatentable. Id. at 1362. The Federal Circuit also affirmed the Board’s determination
that claims 1, 2, 18, 81–84, 86, 88–91, 93, 94, 251–54, 256, 258–61, 263, and 264 are
unpatentable. Id. at 1364.
As for the method claims, the Federal Circuit agreed with the Board’s
determination that Qualcomm’s petitions were deficient because “they ‘d[id] not speak to
whether a person of ordinary skill in the art would have any reason to’ operate” the prior
art in a manner that generates a plurality of integer-multiple harmonics. Id. at 1363.
Accordingly, the court affirmed the Board’s determination that claims 25, 26, 363–66, 368,
369, and 373 were not proven unpatentable. Id. As noted above, Plaintiff Parkervision
stipulated in its briefing and at oral argument that claims 88–92 of the ‘372 patent are
abandoned.
2.
Negotiations to Limit Claims and Defenses
ParkerVision filed a Motion to Limit the Number of Asserted Patent Claims and
Prior Art References for Claim Construction Briefing. (Doc. 112). Qualcomm opposed the
limitation, (Doc. 127), and the issue was discussed during the claim construction hearing.
ParkerVision explained that their proposal was to identify a “nonlimiting” list of terms to
the defendants who would in turn identify a limited amount of prior art. (Doc. 211, 231:20–
232:13). In furtherance of these negotiations, ParkerVision identified in written
correspondence certain patents and claims it intended to proceed with, subject to
reciprocal limitations by Qualcomm on prior art references. (Doc. 284, pp. 6–7, (quoting
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Ex. 6)). ParkerVision unequivocally conditioned its claim limitation upon Qualcomm
upholding its “end of the bargain.” (Id. at p. 7). Qualcomm responded in November 2015
by identifying fourteen primary references and eight (8) other reference that they do not
anticipate using, but this representation was subject to reconsideration once the Court
issued its claim construction decision and ParkerVision served its expert report. (Id. at p.
7 (quoting Ex. 7)). Later that month ParkerVision made a second nonlimiting identification
of patents and claims. (Id. at p. 8 (quoting Ex. 8)). This process repeated in December
2015. (Id. (quoting Ex. 9)). The Joint Motion to Dismiss Certain Claims was filed the day
after the third nonlimiting disclosure by ParkerVision.
Qualcomm contends the correspondence in which the parties discuss limiting
claims and prior art references is binding and that ParkerVision should not be permitted
to pursue patents and claims which were the foundation of its First Amended Complaint
and subject to the claim construction briefing. ParkerVision asserts that absent a motion
to dismiss, and an order granting the motion, the claims remain alive. ParkerVision is
correct.
II.
DISCUSSION
It is undisputed that the four patents now pursued by ParkerVision were disclosed
in the First Amended Complaint and that no order has been entered by this Court
narrowing the number of claims ParkerVision may pursue for each patent. At best,
Qualcomm argues the negotiations to limit the number of claims and prior art references
precludes ParkerVision from pursuing claims other than those discussed in the
negotiations. Qualcomm candidly agreed during oral argument that no precedent from
the Federal Circuit supports this proposition. The Court finds that Qualcomm’s argument
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fails to give adequate weight to the fact that both parties conditioned their willingness to
limit claims or prior art references: ParkerVision’s nonlimiting list of claims was
conditioned on Qualcomm acting in good faith on the reduction of prior art references,
and Qualcomm’s reduction of prior art reference was conditioned on the Court’s Order on
claim construction and Plaintiff’s expert disclosures. There was no meeting of the minds,
and even if an agreement had been reached, an Order of this Court was required to
finalize the dismissal of claims. The parties know this, because on other occasions during
this litigation they filed joint motions to dismiss claims which prompted an Order formally
dismissing the claims.
Moreover, the parties understand amendment of infringement contentions
following reexamination is permissible. Ecomsystems, Inc. v. Shared Mktg. Servs., No.
8:10-cv-1531-T-33MAP 2012 U.S. Dist. LEXIS 194157, at *3 (M.D. Fla. Jan 25, 2012).
Here, ParkerVision’s request to elect certain claims comes after a three-year delay in the
proceedings caused by Qualcomm’s initiation of IPR proceedings. In view of the stay,
ParkerVision acted promptly once appellate review by the Federal Circuit concluded.
Now, with the benefit of the Board’s determinations, as affirmed by the Federal Circuit,
ParkerVision is positioned to elect claims from the four patents-at-issue. ParkerVision
notes, and Qualcomm does not dispute, that on June 9, 2015, ParkerVision served
Qualcomm with Supplemental Infringement Contentions, including updated infringement
contention charts, that included each of the ‘940, ‘372, ‘907, and ‘177 patents and each
claim identified for each of the four patents. (Doc. 284, p. 4).
Qualcomm submits that their inability to rely upon “the promises ParkerVision
made about narrowing the scope of this case to claims identified in ParkerVision’s
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December 2015 letter” is prejudicial. (Doc. 285, p. 10). The prejudice consists of the need
to re-depose two third-party inventors, analyze additional prior art, and file additional
motions. (Id.). This argument is unavailing. Qualcomm knew that ParkerVision’s
“nonlimiting” election of claims was just that: nonlimiting. The parties were negotiating—
nothing more. If Qualcomm failed to investigate defenses relevant to claims that
ParkerVision might pursue in the event the negotiations failed, they did so at their own
peril. This is not to say the Court will permit ParkerVision to proceed to trial on forty-five
claims, nor will the Court necessarily allow Qualcomm to present unlimited prior art
references. The Court’s admonition during the Markman hearing remains: if the case
becomes too unwieldly, the Court will limit the number of claims and prior art references.
The Court is mindful of ParkerVision’s Due Process concerns regarding the limiting of
claims; however, the Court retains the authority to limit the number or claims or to sever
patents and claims for separate trial if necessary.
Accordingly, the Court finds that the negotiations between the parties concerning
potential limitations of claims and prior art is nonbinding. ParkerVision may proceed on
the patents and claims identified in their motion. Qualcomm agrees that ParkerVision
should be permitted to expand the scope of accused products to include “WTR5975” and
“new products that may be revealed in discovery.” (Doc. 285, p. 11). Qualcomm does not
object to the inclusion of products there were introduced after the stay was put in place.
(Id.). Qualcomm quite properly conditions their acquiescence on being afforded adequate
time for discovery, no changes in infringement theories, and time to assert responsive
invalidity contentions. (Id.). The Court agrees that ParkerVision may not serve
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infringement contentions raising new theories. Notwithstanding the IPR proceeding and
appeal, the case does not completely start anew.
III.
CONCLUSION
ParkerVision’s
Memorandum Addressing Election of Claims and Accused
Products (Doc. 284) is GRANTED. ParkerVision may proceed with the following patents
and claims:
’940 Patent (10 claims): 24, 25, 26, 331, 364, 365, 366, 368,
369, 373
’372 Patent (12 claims): 95, 96, 99, 100, 103, 104, 107, 108,
109, 110, 126, 127
’907 Patent (7 claims): 1, 2, 10, 13, 14, 15, 23
’177 Patent (11 claims): 1, 2, 3, 5, 7, 8, 9, 10, 11, 12, 14
ParkerVision may elect Accused Products at-issue at the time of the stay, as well as new
products released during the pendency of the stay, consistent with this Order. Within
fourteen (14) days of this Order, the Parties shall meet and confer either in person or
telephonically to discuss amendment to the Case Management and Scheduling Order
and, if deemed appropriate, shall submit a proposed Amended Case Management and
Scheduling Order for the Court’s consideration.
Within twenty-one (21) days of this Order, the parties shall submit to the Court a
list of the terms discussed during the Markman hearing which continue to require
construction by the Court. To the extent any party contends additional claim construction
is required in view of the Board’s determinations in the IPR proceeding, the Federal
Circuit’s opinion, or due to the procedural setting of the case, such party shall file a motion
within twenty-one (21) days of this Order articulating the basis for additional claim
construction briefing and the proposed construction of disputed terms. The response in
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opposition, if any, will be filed within fourteen (14) days of the motion for additional claim
construction briefing. Finally, within fourteen (14) days of this Order, the parties shall meet
and confer to establish a briefing schedule for the effect, if any, of ParkerVision I on any
patents or claims at issue in the instant litigation and shall file a notice of the briefing
schedule with the Court.
DONE AND ORDERED in Orlando, Florida on July 23, 2019.
Copies furnished to:
Counsel of Record
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