Another Peculiar Anti-Patent Court Decision in ParkerVision v. Qualcomm

“ParkerVision v. Qualcomm is arguably a case study of what happens when a judge imposes his strongly held personal view. Judge Paul Byron literally said that juries cannot understand technology and, to that end, got rid of a case.”

https://depositphotos.com/31248541/stock-photo-opinion-business-concept.htmlInfringing patented inventions feels like stealing, from the innovator’s perspective, much like a smash and grab at a jewelry store. Politicians refuse to fix the gutted patent system so it can protect U.S. startups and small inventors. The American Dream is slipping away, as it consolidates into the hands of just a few tech giants and sending whatever is left to China.

Case in point, ParkerVision v. Qualcomm, which illustrates just how anti-patent some courts have become. In this case the importance of ParkerVision’s seminal semiconductor chip technology that helped to transform cellphones into smartphones is at issue. ParkerVision invested tens of millions in R&D, but the courts have allowed it to be taken from them and transferred to a multinational corporation free of charge.

ParkerVision v. Qualcomm

ParkerVision v. Qualcomm is really several cases. ParkerVision first sued Qualcomm in 2011 (“ParkerVision I”) alleging that Qualcomm infringed certain ParkerVision patents that disclosed a new radio frequency receiver. ParkerVision I was filed in the Middle District of Florida and was assigned to Judge Roy Dalton.  In 2013, a jury found that ParkerVision’s patents are not invalid, and that Qualcomm infringed. The jury awarded ParkerVision $173 million in damages. With an ongoing royalty, the potential total damages award was nearly a billion dollars.

Judge Dalton stated on the record that “there is certainly going to be an ongoing royalty” and sent the parties to negotiate the royalty rate so that he could enter his final Order. Several weeks later, Judge Dalton shockingly overturned the jury’s verdict and granted Qualcomm’s summary judgment of non-infringement, thus killing the case (this curious decision will be the subject of a future article).

During ParkerVision I, Qualcomm disclosed documents that showed infringement on different ParkerVision radio frequency receiver patents as well as ParkerVision transmitter patents. As a result, in 2014, ParkerVision filed a second patent infringement suit against Qualcomm in the Middle District of Florida (“ParkerVision II”). That case was assigned to Judge Paul Byron in the same courthouse as ParkerVision I.

The Long Wait for Trial

During the pendency of ParkerVision II, Qualcomm filed several IPR (inter partes review) challenges with the Patent Trial and Appeal Board (PTAB), resulting in a stay of the case. By 2018, the PTAB and the U.S. Court of Appeals for the Federal Circuit ruled largely in favor of ParkerVision, and the stay was lifted.

Qualcomm then filed a motion for summary judgment of non-infringement based on collateral estoppel, arguing that the claims of the receiver patents asserted in ParkerVision I are the same as the receiver patents asserted in ParkerVision II and therefore cannot be asserted a second time. If the court accepted Qualcomm’s arguments, the same failed infringement theory in ParkerVision I would apply, leaving only the transmitter patents in play.

In a January 2020 order, Judge Byron denied Qualcomm’s motion for summary judgment, finding that the receiver patents in ParkerVision II were not substantially similar to the receiver patents in ParkerVision I.

Despite the court having already found against Qualcomm, in February 2021, Qualcomm filed another motion for summary judgment on the same collateral estoppel theory, along with Daubert motions to exclude ParkerVision’s technical expert testimony and summary judgment motions of non-infringement on the transmitter patents.

Even though his January 2020 order denied Qualcomm’s motion, in March 2022, Judge Byron issued a new order, opposite to his previous order, granting Qualcomm’s motion by finding that the receiver patents in ParkerVision II were substantially similar to the receiver patents in ParkerVision I. The remainder of his dubious order killed the rest of the lawsuit.

Why would Judge Byron issue two contradictory orders on essentially the same issue?

‘Juries Can’t Understand This Stuff’

In a January 2022 hearing, prior to his March 2022 order, Judge Byron made known his strongly held personal view that a jury could not understand technology and that his court “should be out of it”:

“We all know the jury isn’t going to follow 99 percent of what you all are talking about in this trial. Right? We all know that. They’re going to come up with a rough idea of who deserves to win, but the nuances of a patent case, there’s no way a jury understands this which is why this shouldn’t be tried to a jury, in my opinion. They will never understand. This should be PTAB 100 percent. We should be out of it, but that’s how it is.”

At multiple times during this hearing, Judge Byron expressed his resentment of patent law and this case (“You’re dealing with a non-patent lawyer. Thank God.”) and even questioning Qualcomm’s lawyers on which ParkerVision patents would be knocked out if he accepted Qualcomm’s arguments (“What exactly is out, which patents, which claims?”). It seemed as if Judge Byron was searching for any excuse to punt ParkerVision’s case.

The Court’s Errors

There were three reasons, in my view, why Judge Byron made egregious error in his rulings killing ParkerVision’s case.

First, Judge Byron ruled that technical experts must perform their own simulations to prove infringement, regardless of whether it can be proven numerous other ways, and thus excluded ParkerVision’s expert from the case, who instead relied on Qualcomm’s own confidential information and engineers to reach his conclusions. The other ParkerVision expert was excluded; his report was deemed unreliable because he only relied on non-confidential information. These rulings left ParkerVision with no technical expert testimony.

Second, in ParkerVision II, Qualcomm argued in its summary judgment motion that the receiver patents asserted in ParkerVision I were substantially similar to the receiver patents in ParkerVision II, therefore, ParkerVision I’s non-infringement ruling applied to ParkerVision II. Although Judge Byron denied Qualcomm’s motion on the same issue in January 2020 ruling that the patents in the two cases are different, Qualcomm filed a second motion for summary judgment in February 2021. In this second bite at the apple, Judge Byron relied solely on Qualcomm’s expert report, ultimately finding for Qualcomm in its motion for summary judgement.

Third, summary judgment requires that the moving party show that there is no genuine dispute of any fact. Not surprisingly, Qualcomm argued that their RF transmitter products work differently than the ParkerVision transmitter patent claims. ParkerVision countered by showing that there are material differences of expert opinion that are supported by the patent disclosures and by ParkerVision’s expert report. There were genuinely disputed facts. But having thrown out ParkerVision’s experts, Judge Byron effectively eliminated the dispute related to the facts.

What Happened in ParkerVision v. Qualcomm is an Injustice to All Patent Holders

ParkerVision v Qualcomm is arguably a case study of what happens when a judge imposes his strongly held personal view. Judge Paul Byron literally said that juries cannot understand technology and, to that end, got rid of a case. Whether you agree with the statement or sentiment that juries cannot understand technology, it is indisputable that this statement is inconsistent with the Supreme Court’s mandates relating to patent trials, and the U.S. Constitution. It is also a window into Judge Byron’s psyche; He does not like patent cases, period.

ParkerVision’s groundbreaking inventions are not trivial. Their chip shocked the tech world with greater range, faster data, and improved signal quality. They did that with a fraction of the energy consumption using a smaller number of parts which enabled the miniaturization of cellular chipsets thereby opening space for all the features offered by today’s smartphones.

It seems to me that Judge Byron’s lopsided decision resulted in a denial of all due process to ParkerVision after patiently waiting eight years for its day in court. Judge Byron supplanted a jury trial with his own opinions and levied enormous harm on those who invested millions of dollars and decades of R&D to radically improve technology that we all use today and to transfer it to a multinational company at no cost.

If ParkerVision cannot enforce its patent rights, neither can anyone else. The innovators, startups, and investors that power American innovation deserve better.


Image Source: Deposit Photos
Author: tashatuvango
Image ID: 31248541 

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7 comments so far. Add my comment.

  • [Avatar for Paul Morinville]
    Paul Morinville
    June 8, 2022 04:41 pm

    B. Tarmy. No, I am not paid. This is a case where a huge multinational corporation ripped off the technology of a startup, which is very similar thing that happened to me and thousands of others.

    I took up this case because because it fits well into my personal war with bad law and corrupt government officials who have destroyed the patent system, and thereby destroyed my company and my way of making a living. It’s personal to me, and I have written many stories about others as well – none of whom have paid me.

    If there are any facts that you believe I have misrepresented, please bring them forward. I will happily show you exactly where they came from in the formal record.

  • [Avatar for John Birdsall]
    John Birdsall
    June 8, 2022 02:56 pm

    Great job, well articulated article that calls into question Judge Byron’s decision making process.
    Can we request a Federal review of his actions?

  • [Avatar for B. Tarmy]
    B. Tarmy
    June 8, 2022 02:28 pm

    Is this guy getting paid by ParkerVision to write articles after ParkerVision loses? People should read the judge’s order excluding ParkerVision’s experts for themselves. It is not “anti-patent” just because the plaintiff lost. ParkerVision dug its own grave by previously arguing that simulations are necessary to show infringement, but then they never ran simulations! And they also used their own inventor as an infringement “expert” even though he could not have access to the defendant’s confidential materials.

  • [Avatar for Mort]
    Mort
    June 7, 2022 10:45 am

    I believe Judge Byrons’ dissent is similar to how SCOTUS would want to react to Patent Cases, as patent law can be interpreted as Pet Feces Strewn across the Courtroom floor, however in his case He possibly had reservations between what is morally right or simply the threat of Reprisal from an insider adversary that would haunt him forever. At this level he should have actually “Admitted” that this case should be decided by a Jury and he will have to bear the burden of Guilt for his Indecision.

  • [Avatar for Pro Say]
    Pro Say
    June 7, 2022 10:43 am

    “Why would Judge Byron issue two contradictory orders on essentially the same issue?”

    Silly question.

    Mere mortals don’t get to ask Gods why they do what they do.

  • [Avatar for concerned]
    concerned
    June 7, 2022 08:36 am

    My CAFC oral hearing has passed one month and still pending a decision. No Rule 36.

    I was thinking that, for the CAFC to rule against me, the CAFC would have to write in effect “This court does not care if the patent applicant has evidence from every possible end user (have you ever heard of that fact?), we do not care if this evidence, plus other evidence and the specs, reveal that no person could do the claimed process in their mind (mental steps), this court completely overrules said evidence in favor of what the law may say after SCOTUS added words to the law. And then our ruling contracts the evidence and what the law states before abridged and after abridged. Although PTAB said the applicant met the law as expressed and we find he actually meets the secret definition of the reworked law, we affirm”

    One CAFC judge did say our arguments should be in front of SCOTUS. Perhaps a fourth SCOTUS judical exception could be penned “Evidence is barred except if it works against the patent holder as in Alice and Mayo.”

    The particular case in the article does not surprise me as there is no Rule of Law. Anything and everything goes as the bench sees fit.

    In my opinion, CAFC should stick it to SCOTUS and rule in my favor. Make SCOTUS defend their nonsense or put up $500,000 and accept my challenge: No third party can waive consent of the release of confidential information from the mind and without the knowledge of the person in question.

  • [Avatar for C. Whewell]
    C. Whewell
    June 7, 2022 07:23 am

    Thanks for that. If a Jury can’t understand technology, then its not a Jury of one’s peers as far as the invention is concerned, and some might say that the entire case must be re-tried b/c of an apparent lack of due process – the Court failed to provide a properly-constituted Jury, the the Judges own open admission ?

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