United States District Court, M.D. Florida, Orlando Division
G. BYRON UNITED STATE DISTRICT JUDGE
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
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.
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. (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).
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
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.
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.
Negotiations to Limit Claims and Defenses
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 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.
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.
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
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.
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 ...