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IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA

JACKSONVILLE DIVISION

PARKERVISION, INC.,

Plaintiff, Case No. 3:11-cv-719-J-37JRK

vs.

QUALCOMM INCORPORATED,

Defendant.

PARKERVISION’S RESPONSE IN OPPOSITION TO QUALCOMM’S RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW AND MOTION FOR NEW

TRIAL REGARDING NONINFRINGEMENT

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TABLE OF CONTENTS

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

II. LEGAL STANDARD ......................................................................................................... 1

III. JMOL REGARDING DIRECT INFRINGEMENT SHOULD BE DENIED. ................... 2

A. ParkerVision Presented Legally Sufficient, Unrefuted Evidence That all of The Infringing Products Infringe The Asserted Claims. ................................................ 2

B. There Is Legally Sufficient Evidence That The Infringing Products Satisfy The “Generating” Limitations. ....................................................................................... 5

1. The asserted claims require the transfer of energy from the carrier signal and generation of the baseband signal from the transferred energy. .......... 5

2. ParkerVision provided legally sufficient evidence that the Infringing Products met the “energy transfer” and the “generating” limitations. ........ 6

3. Qualcomm’s “double-balanced mixer” arguments are irrelevant. .............. 8

4. Qualcomm’s “TX filter” arguments are irrelevant. .................................. 10

C. The Infringing Products Satisfy The “Sampling” Limitations. ............................ 12

D. The Infringing Products Satisfy The Other Limitations. ...................................... 15

IV. JMOL REGARDING INDIRECT INFRINGEMENT SHOULD BE DENIED. ............. 15

A. Qualcomm Was Aware of or Willfully Blind to Each of the Patents-in-Suit. ...... 15

1. Deference is due to the jury’s induced infringement verdict. ................... 16

2. Legally sufficient evidence supports the jury’s finding. ........................... 17

3. Qualcomm’s good-faith belief defenses fail. ............................................ 18

V. QUALCOMM’S REQUEST FOR A NEW TRIAL SHOULD BE DENIED. ................ 20

VI. CONCLUSION ................................................................................................................. 20

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TABLE OF AUTHORITIES

Page(s) CASES

Alloc, Inc. v. Pergo, LLC, 2010 WL 3860382 (E.D. Wis. 2010) .........................................................................................5

Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 610 F. Supp. 2d 998 (D. Minn. 2009) ......................................................................................16

Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249 (Fed. Cir. 2010)..........................................................................................3, 5, 6

Broadcom Corp. v. Emulex Corp., 732 F.3d 1325 (Fed. Cir. 2013)............................................................................................4, 10

Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683 (Fed. Cir. 2008)............................................................................................16, 18

Carnegie Mellon Univ. v. Marvell Tech. Group, LTD, No. 09-290, 2013 U.S. Dist. LEXIS 135208 (W.D. Pa. Sept. 23, 2013) .................................18

Eugene Baratto, Textures, LLC v. Brushstrokes Fine Art, Inc., 701 F. Supp. 2d 1068 (W.D. Wis. 2010) ...................................................................................5

i4i Ltd P’ship v. Microsoft Corp., 670 F. Supp. 2d 568 (E.D. Tex. 2009) aff’d 598 F.3d 831 (Fed. Cir. 2010) ...........................20

Implicit Networks Inc. v. F5 Networks Inc., 2013 U.S. Dist. LEXIS 34984 (N.D. Cal. Mar. 13, 2013) .........................................................5

Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142 (Fed. Cir. 2004)................................................................................................10

L&W, Inc. v. Shertech, Inc., 471 F.3d 1311 (Fed. Cir. 2006)..................................................................................................5

Lamonica v. Safe Hurricane Shutters, Inc., 711 F.3d 1299 (11th Cir. 2013) .................................................................................................2

Lee v. Mike’s Novelties, No. LA CV10-02225 .................................................................................................................5

Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209 (Fed. Cir. 2006)................................................................................................16

Medtronic Vascular, Inc. v. Boston Sci. Corp., No. 2:06-CV-78, 2008 U.S. Dist. LEXIS 53373 (E.D. Tex. July 11, 2008) .............................5

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PACT XPP Techs., AG v. Xilinx, Inc., No. 2:07-CV-563-RSP ...............................................................................................................4

Penny v. Williams & Fudge, Inc., 840 F. Supp. 2d 1314 (M.D. Fla. 2012) .............................................................................1, 7, 9

Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342 (Fed. Cir. 2007)..................................................................................................5

Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 702 F.3d 1351 (Fed. Cir. 2012)..................................................................................................8

Rodriguez v. Farm Stores Grocery, Inc., 518 F.3d 1259 (11th Cir. 2008) .................................................................................................8

Smith & Nephew, Inc. v. Arthrex, Inc., 502 F. App’x 945 (Fed. Cir. 2013) ....................................................................................16, 17

Source Search Techs., LLC v. Lending Tree, LLC, 588 F.3d 1063 (Fed. Cir. 2009)................................................................................................12

Streck, Inc. v. Research & Diagnostic Sys., 665 F.3d 1269 (Fed. Cir. 2012)..................................................................................................4

Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569 (Fed. Cir. 1991)..............................................................................................4, 5

TiVo, Inc. v. Echostar Communs. Corp., 516 F.3d 1290 (Fed. Cir. 2008)..............................................................................................3, 4

Versata Software, Inc. v. SAP Am., Inc., 717 F.3d 1255 (Fed. Cir. 2013)............................................................................................6, 10

Warfield v. Stewart, 434 F. App’x 777 (11th Cir. 2011) ......................................................................................3, 10

OTHER AUTHORITIES

Fed. R. Civ. P. 7(b) & 50(a)(2) ......................................................................................................15

Rule 50(a)...................................................................................................................................3, 10

Rule 50(b) ................................................................................................................................3, 104

Rules 704 and 705 ............................................................................................................................4

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INTRODUCTION I.

The Court should deny Qualcomm’s Renewed Motion for Judgment as a Matter of Law

and Motion for New Trial Regarding Noninfringement (dkt. 501). Qualcomm has not, and

cannot, satisfy the requirements for either request.

At trial, ParkerVision presented legally sufficient evidence of Qualcomm’s infringement.

With the expert testimony of Dr. Prucnal and Mr. Sorrells, ParkerVision showed infringement

through Qualcomm’s own circuit schematics and technical documents. ParkerVision established

that: (1) the Magellan and Solo designs infringe the asserted claims; (2) the Infringing Products

are materially the same as the Magellan and Solo designs for infringement purposes; and (3)

Qualcomm had the requisite mental state for induced infringement. Qualcomm strategically

chose not to provide any rebuttal testimony or evidence regarding infringement. Notably,

Qualcomm did not cross-examine Dr. Prucnal on his testimony that the Magellan design was

representative of the Infringing Products. Nor did it present any evidence that its litigation

arguments constituted good-faith noninfringement or validity defenses held by Qualcomm.

Instead, its motion is based on a selective quotation of Dr. Prucnal’s cross-examination. The jury

weighed the whole of the testimony and evidence, and found infringement. Because legally

sufficient evidence supports the jury’s verdict, JMOL must be denied.

There is also no basis for a new trial: the jury’s verdict is supported by the great weight of

the evidence and there was no miscarriage of justice. Although Qualcomm impugns the jury, the

fact remains that this well-educated group engaged in careful and extensive deliberations. There

is no reason to think that the jury was impermissibly swayed by emotion as opposed to evidence.

LEGAL STANDARD II.

Judgment as a matter of law is appropriate when no “legally sufficient evidentiary basis

allows a reasonable jury to find for the nonmoving party on an issue.” Penny v. Williams &

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Fudge, Inc., 840 F. Supp. 2d 1314, 1318 (M.D. Fla. 2012) (citations omitted). Thus, JMOL is

appropriate “only if the facts and inferences point overwhelmingly in favor of the moving party,

such that reasonable people could not arrive at a contrary verdict.” Lamonica v. Safe Hurricane

Shutters, Inc., 711 F.3d 1299, 1312 (11th Cir. 2013) (citation omitted).

JMOL REGARDING DIRECT INFRINGEMENT SHOULD BE DENIED. III.

A. ParkerVision Presented Legally Sufficient, Unrefuted Evidence That All Of The Infringing Products Infringe The Asserted Claims.

Legally sufficient evidence supports the jury’s infringement verdict for each Infringing

Product. Dr. Prucnal offered element-by-element, claim-by-claim testimony showing that the

Magellan products infringe. He also testified that the other Infringing Products infringe—for the

same reasons, and under the same analysis. Trial Tr. 10/10 at 65:7-12. He explained that he

studied the design documents and schematics for each Infringing Product—as reflected in his

detailed expert report—and “concluded that the design documents and circuits show that the

circuits are substantially the same as they relate to the patents.” Id. at 64:19-65:12. Dr. Prucnal

thus confirmed that his testimony: (1) was based on studying Qualcomm’s circuit schematics,

technical documents, and product design reviews, id. 10/9 at 173:15-20, 206:12-22, 212:6-8; and

(2) “appl[ied] to each of the accused products,” id. at 212:11-16. Therefore, he confirmed, for the

same reasons as detailed for the Magellan products, the other Infringing Products “also infringe.”

Id. 10/10 at 64:9-65:12. Importantly, Qualcomm never cross-examined Dr. Prucnal on this point,

never presented evidence of any alleged difference between the Infringing Products relevant to

infringement, and never presented any contrary testimony. The jury weighed his unchallenged

and unrebutted testimony, had access to the underlying documents in its deliberations, and

returned a verdict form specifically checking each product it found to infringe.1

1 Qualcomm states that the jury’s infringement finding on the Marimba design “is a clear sign of a verdict gone

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The TiVo case is applicable and controlling here. Qualcomm argues that TiVo is

distinguishable because the Infringing Products “indisputably address different standards and

have different circuit designs and different component values.” Dkt. 501 at 21-22. But it never

presented any such evidence to the jury and never cross-examined Dr. Prucnal on this point.

Although its motion newly raises some alleged differences among the Infringing Products, it

“points to no distinction among [them] that would require separate analysis.” See TiVo, Inc. v.

Echostar Communs. Corp., 516 F.3d 1290, 1308 (Fed. Cir. 2008) (emphasis added).2 In light of

the record developed at trial, Dr. Prucnal provided unrebutted and unchallenged testimony based

on his separate analysis of each design that the Infringing Products “are substantially the same as

they relate to the patents.” Trial Tr. 10/10 at 65:7-12. No witness testified to the contrary and

Qualcomm’s unsupported argument is irrelevant. See Becton, Dickinson & Co. v. Tyco

Healthcare Grp., LP, 616 F.3d 1249, 1260 (Fed. Cir. 2010) (“Unsupported attorney argument,

presented for the first time on appeal, is an inadequate substitute for record evidence.”).

Moreover, Qualcomm’s own party-admission in PX387 supports Dr. Prucnal’s testimony: when

asked to “identify and describe all differences between the [Infringing Products] with respect to

the receiver (or receiver function) that performs direct conversion,” its interrogatory response

merely identified each Infringing Product as a passive mixer and failed to identify a single

difference. JX23 at 4. All evidence of record material to the issue supports the jury’s verdict.3

awry.” Dkt. 501 at 21. However, the verdict form was jointly submitted by the parties—Qualcomm agreed to its inclusion. See Trial Tr. 10/15 at 80:2-4. The parties also agreed that the Marimba design was inadvertently included on the verdict form and jointly brought it to the Court’s attention. Id. 10/22 at 13:6-14:3. ParkerVision also did not seek damages on the Marimba portion of these products. Id. 88:9-22. Moreover, Qualcomm waived its right to bring a Rule 50(b) motion based on the inclusion of the Marimba design on the verdict form because it was not included in their Rule 50(a) motion. See Warfield v. Stewart, 434 F. App’x 777, 780-81 (11th Cir. 2011). 2 See also id. (“there is nothing improper about an expert testifying in detail about a particular device and then stating that the same analysis applies to other allegedly infringing devices that operate similarly, without discussing each type of device in detail”). 3 Dr. Prucnal’s testimony is also supported by the testimony of Mr. Sorrells regarding Qualcomm’s QSC6270 (Solo design). Mr. Sorrells testified in detail about the reverse engineering report and other public information regarding

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The rules of evidence and Federal Circuit authority confirm the propriety and sufficiency

of Dr. Prucnal’s testimony. Rule 704 states that opinion testimony may embrace ultimate issues.

Fed. R. Evid. 704. Rule 705 further provides that an expert may offer such “an opinion—and

give the reasons for it” without discussing “the underlying facts or data.” Fed. R. Evid. 704. In

Symbol, the Federal Circuit confirmed that “testimony on the ultimate issue of infringement is

permissible in patent cases,” and the “responsibility for challenging the factual underpinnings of

the testimony [falls] squarely on [the defendant] during cross-examination.” Symbol Techs., Inc.

v. Opticon, Inc., 935 F.2d 1569, 1575 (Fed. Cir. 1991). Like the defendant in Symbol, Qualcomm

“failed to seize the opportunity, provided by the Rule, to demonstrate that [Dr. Prucnal’s]

testimony was factually incorrect.” See id. at 1576.4 Having chosen “not to expose [Dr.

Prucnal’s] testimony to the glaring light of cross-examination on this issue,” Qualcomm “cannot

here recoup for its failed litigation strategy.” See id. Dr. Prucnal’s unrebutted and uncontested

testimony that each Infringing Product infringes is legally sufficient evidence that supports the

jury’s verdict. See TiVo, 516 F.3d at 1308; Symbol Techs., 935 F.2d at 1575-76.5

Recent district court decisions follow this authority. In PACT, for example, the court

denied JMOL under Rules 704 and 705 and Symbol, finding that, “[i]n light of Defendants’

failure to cross-examine [the expert] on any of these [disputed] limitations, [his] opinion

testimony is prima facie evidence of Defendants’ infringement.” PACT XPP Techs., AG v.

this product. Trial Tr. 10/8 at 75:10-16; 77:6-15. Just as Dr. Prucnal found, Mr. Sorrells also concluded that the QSC6270 infringes the asserted claims of the Patents-in-Suit. Id. 10/7 at 194:10-11; 10/8 at 89:9-15. 4 Dr. Prucnal’s testimony is consistent with his expert report on infringement. See Prucnal Expert Report (Ex. 1) at 23-47 (stating that “[e]ach of the following architectures infringe in substantially the same way as the Magellan architecture, and each architecture is substantially similar to the Magellan architecture in all respects material to infringement” and then pointing to specific schematic pages in evidence for each architecture). Qualcomm had ample notice of Dr. Prucnal’s theories of infringement but nonetheless failed to cross-examine him on this point. 5 See also Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (finding substantial evidence supporting jury’s commercial success finding because, in “important” part, the record contained unrebutted testimony establishing nexus between claimed invention and product success); Streck, Inc. v. Research & Diagnostic Sys., 665 F.3d 1269, 1289 (Fed. Cir. 2012) (finding that unrebutted testimony that particular cells embodied by patent worked in same way as other cells was sufficient to support lower court’s grant of JMOL on enablement).

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Xilinx, Inc., No. 2:07-CV-563-RSP, dkt. 441 at 11 (E.D. Tex. Aug. 28, 2013), attached as Ex. 2.6

The courts thus agree: testimony regarding a representative product constitutes prima facie

evidence of infringement, and a defendant’s failure to cross-examine or rebut that testimony

constitutes a “failed litigation strategy.” See Symbol Techs., 935 F.2d at 1576.

The case law cited by Qualcomm does not support JMOL—most of those cases, in fact,

do not involve JMOL. L&W, for example, addressed a grant of summary judgment. L&W, Inc. v.

Shertech, Inc., 471 F.3d 1311, 1314 (Fed. Cir. 2006). The Federal Circuit held that the patentee

failed to satisfy its summary-judgment burden—proving the absence of any factual dispute—

when it merely “assumed” that all the accused products were alike. Id. at 1318. Of course there is

no mere assumption here: there is unrebutted expert testimony supported by substantial record

evidence and a report containing hundreds of pages of underlying facts. In addition, every

inference had to be drawn against the grant of summary judgment in the patentee’s favor in

L&W; here, however, every inference must be drawn in favor of the jury’s infringement finding.7

B. There Is Legally Sufficient Evidence That The Infringing Products Satisfy The “Generating” Limitations.

1. The asserted claims require the transfer of energy from the carrier signal and generation of the baseband signal from the transferred energy.

6 The court in Lee similarly denied JMOL. Lee v. Mike’s Novelties, No. LA CV10-02225 JAK (JCx), dkt. 198 at 11-12 (C.D. Cal. May 15, 2012), attached as Ex. 3. The court found “[t]here is no legal support for Defendants’ position that Plaintiff had a burden that extended beyond presenting [the] representative products. If Defendants wished to present evidence to rebut Plaintiff’s prima facie case of infringement with respect to certain accused products, they had the opportunity to do so at trial.” Id. 7 Qualcomm’s reliance on the Medtronic, Baratto, Alloc, and Implicit cases suffers from similar deficiencies—none addresses the controlling rules of evidence, none involved any expert analysis of each product (before or at trial), and none suggests that the Court may disregard unrebutted and uncontested expert testimony that the same analysis applies to other allegedly infringing devices. Medtronic Vascular, Inc. v. Boston Sci. Corp., No. 2:06-CV-78, 2008 U.S. Dist. LEXIS 53373, at *7-11 (E.D. Tex. July 11, 2008); Eugene Baratto, Textures, LLC v. Brushstrokes Fine Art, Inc., 701 F. Supp. 2d 1068, 1080-1081 (W.D. Wis. 2010); Alloc, Inc. v. Pergo, LLC, 2010 WL 3860382, (E.D. Wis. 2010); Implicit Networks Inc. v. F5 Networks Inc., 2013 U.S. Dist. LEXIS 34984, at *41 (N.D. Cal. Mar. 13, 2013). The Implicit case supports ParkerVision’s position: it distinguished the facts in that case from those in TiVo and explained that, “under the ‘proxy’ theory, an expert who analyzes only one [accused] device in depth can testify that other accused products operate similarly.” 2013 U.S. Dist. LEXIS 34984, at *12-13&n.21. The Pharmastem and Becton cases do not even address representative products. Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1354 (Fed. Cir. 2007); Becton, 616 F.3d at 1257-59.

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The asserted claims require the transfer of energy from a carrier signal to a storage

device, e.g., a capacitor (the “energy transfer” limitation), and the use of that transferred energy

to generate a lower frequency or baseband signal (the “generating” limitation). See, e.g., ’551

Patent at claim 23, 85:48-58; Trial Tr. 10/8 at 87:6-88:5. By controlling a switching device,

“non-negligible amounts” of energy (or samples) from the carrier signal are transferred into a

capacitor. See, e.g., ’551 Patent at 98:4-27; Trial Tr. 10/8 at 83:3-18. Although the carrier signal

itself is not present after the switching device, its energy is transferred to the capacitor after

being sampled by the switching device. See Trial Tr. 10/10 at 217:21-218:3.

2. ParkerVision provided legally sufficient evidence that the Infringing Products met the “energy transfer” and the “generating” limitations.

Dr. Prucnal and Mr. Sorrells8 testified that energy is transferred from the carrier signal to

storage elements in the Infringing Products. Trial Tr. 10/8 at 81:14-84:11; 10/9 at 230:1-238:7;

10/10 at 17:2-23:10. The Infringing Products incorporate transistors with local oscillator (“LO”)

signals controlling their respective gates to turn them on and off. Id. 10/9 at 230:1-232:6. The

transistors operate as switches conducting current from the carrier signal into the capacitors

when the switch is closed. Id. at 230:1-232:6, 233:5-237:22 (discussing JX62 at 17). Dr. Prucnal

explained that “when the transistor [in the Infringing Products] closes, some of the current from

the carrier signal is connected to the output. And that’s how the current appears in the output.”

Id. 10/9 at 237:14-22. When the switches are open, they do not conduct current from the carrier

8 Qualcomm’s argument about the sufficiency of Mr. Sorrells’ testimony is improperly raised. See Dkt. 501 at 5, 21 n.56. Under the guise of sufficiency of the evidence, Qualcomm challenges the admissibility of Mr. Sorrells’ testimony, its evidentiary basis, and whether it is properly tied to the QSC6270 product. Id. “Such questions should be resolved under the framework of the Federal Rules of Evidence and through a challenge under Daubert.” Versata Software, Inc. v. SAP Am., Inc., 717 F.3d 1255, 1264 (Fed. Cir. 2013) (rejecting challenges of the jury’s damages award based on methodology used by the plaintiff’s expert). Here, Qualcomm did not seek to exclude Mr. Sorrells’ infringement testimony in its Daubert motion. See dkt. 288. At trial, the Court also denied Qualcomm’s motion to exclude Mr. Sorrells’ testimony. Trial Tr. 10/7 at 131:15-135:22. And when ParkerVision moved to display the reverse engineering report, Qualcomm did not object. Id. 10/8 at 71:17-72:10. Because the evidentiary bases for Qualcomm’s argument have been waived or rejected, the Court should reject this improperly raised argument.

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signal. Id. 10/8 at 58:10-59:12; 10/9 at 230:1-232:6; 10/10 at 25:2-27:19.

Dr. Prucnal and Mr. Sorrells testified further that the Infringing Products generate the

baseband signal from the transferred energy. Id. 10/8 at 86:19-89:6; 10/9 at 256:5-262:21; 10/10

at 11:18-15:22, 25:6-27:19, 54:17-63:11, 240:11-246:9. These devices include both a capacitor at

the switch outputs and a low impedance load in the form of a transimpedance amplifier (“TIA”)

downstream of the capacitors. Id. Dr. Prucnal explained that when the switch closes, “energy

flows from the carrier signal at the input of the switch through the switch and charges the

capacitor.” Id. at 10/10 at 242:11-20. “When this switch opens,” he continued, “that capacitor

then releases this energy and discharges it to the rest of the circuit.” Id. Thus the evidence shows

that when the switch is closed, energy from the carrier signal is transferred to the capacitor(s);

when the switch is open, the energy stored in the capacitor discharges through the low

impedance TIA, generating the baseband signal. Dr. Prucnal concluded that the Infringing

Products met the “generating” limitations “because the energy … from the carrier signal is

transferred through the switch. It’s accumulated by the capacitor. And that energy is then used to

generate the baseband signal following the capacitor.” Id. at 246:4-9.

This evidence provided more than a legally sufficient evidentiary basis for the jury’s

verdict. Qualcomm improperly asks the Court to disregard Dr. Prucnal’s direct and re-direct

testimony (and Mr. Sorrells’ testimony) and instead credit only selected portions of his cross-

examination. However, in the context of a JMOL, the Court does not reweigh the evidence or

witness credibility. Penny, 840 F. Supp. 2d at 1318. That was the jury’s responsibility, and the

jury was free to “believe or disbelieve any witness, in whole or part.” Trial Tr. 10/15 at 149:9-14.

As explained below, ParkerVision believes that Dr. Prucnal’s direct and re-direct testimony is

consistent with the portions of his testimony to which Qualcomm points. Nonetheless, “[e]ven if

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[an expert’s] direct and cross-examination are not entirely consistent, the jury had the ultimate

discretion to evaluate his credibility and weigh his presentation.” Presidio Components, Inc. v.

Am. Tech. Ceramics Corp., 702 F.3d 1351, 1359 (Fed. Cir. 2012). Drawing all inferences in

ParkerVision’s favor, JMOL is inappropriate.9

3. Qualcomm’s “double-balanced mixer” arguments are irrelevant.

Qualcomm argues that the “double-balanced mixers—not energy in the capacitors—

generate the lower frequency signal.” Dkt. 501 at 10-12. It also argues that its “double-balanced

mixers use extra transistors and a self-canceling ‘criss-cross’ design to eliminate the RF and LO

signals and generate the lower frequency signal from the RF signal.” Id. Because the assertions

are contradicted by the evidence and no Qualcomm witness testified in support of these

arguments or explained how this resulted in non-infringement of any claim, JMOL is improper.

Dr. Prucnal rejected the contention that the “criss-cross” design of the Infringing

Products is relevant to generating the baseband signal. He testified that “[c]risscrossing itself

doesn’t create the lower frequency signal.” Trial Tr. 10/10 at 136:7-21; see also id. at 132:1-6.

He explained that “the actual baseband signal on the baseband path is created after the

capacitor.” Id. at 136:13-21. He also testified that (1) the output of the switches is labeled

“baseband,” id. 10/9 at 215:22-216:7, 229:14-25, 243:15-244:2; 10/10 at 137:9-12; and (2) the

output constituted the “baseband signal path.” Id. 10/10 at 131:21-25, 132:7-12, 136:7-21.10 Dr.

Prucnal’s testimony that the output of the mixer is labelled “baseband” or is part of the

“baseband signal path” does not mean that the baseband signal is generated prior to the

9 “The issue is not whether the evidence was sufficient for [Qualcomm] to have won, but whether the evidence was sufficient for it to have lost.” See Rodriguez v. Farm Stores Grocery, Inc., 518 F.3d 1259, 1264-65 (11th Cir. 2008). 10 Qualcomm also points to a Magellan design document (DX605 at 17) to support its mixer argument. Dkt. 501 at 12. DX605 states that the “mixer downconverts the RF signal to baseband signal,” but it is unclear what circuitry is or is not included in the document’s “mixer.” For example, PX847 at 1999 is a circuit schematic of the “PRX_FE mixer” for the Magellan design and it includes several capacitors. Interpreting DX605 in light of this schematic, DX605’s “mixer” satisfies the “energy transfer” and “generating” limitations of the asserted claims.

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capacitors or that energy from the carrier signal is not used to generate the baseband signal.

Rather, and as Dr. Prucnal and Mr. Sorrells unequivocally testified at trial, the down-converted

baseband signal is created as a result of the charging and discharging of the capacitor. Id. 10/8 at

86:19-89:6; 10/9 at 256:5-262:21; 10/10 at 11:18-15:22, 25:6-27:19, 54:17-63:11, 240:11-246:9.

Next, Qualcomm argues that the double-balanced mixer “cancels” the carrier signal. As

Dr. Prucnal testified, the carrier signal is present at the switch inputs in the Infringing Products.

Id. 10/10 at 217:1-5. The opening and closing of the switches samples the carrier signal so that

“energy from the carrier signal appears at the output” and then “charges the capacitor.” Id. at

217:1-5, 242:11-20. Thus, as Dr. Prucnal explained, the carrier signal “itself in its entirety does

not go through the switch,” id. at 218:1-3, but its energy is transferred to the capacitor while

switches are closed. Id. at 217:1-5, 217:21-24, 242:11-20. The evidence shows that the Infringing

Products meet the “energy transfer” limitations, see, e.g., ’551 Patent, claim 23 (“wherein said

storage module receives non-negligible amounts of energy transferred from a carrier signal”).

Lastly, comments by Dr. Razavi, Qualcomm’s invalidity expert, cannot support JMOL,

particularly given the substantial evidence supporting the jury’s verdict of infringement. First,

Dr. Razavi’s generalized comments regarding “double-balanced mixers” were entirely divorced

from any comparison to the Infringing Products or asserted claims. Second, and at best,

Qualcomm can only suggest that Dr. Razavi’s testimony about some unspecified “double-

balanced mixer” conflicts with infringement testimony by Dr. Prucnal and Mr. Sorrells.11

However, even assuming that a conflict exists, it is inappropriate grounds for JMOL—it was the

jury’s job to weigh the evidence and resolve any disagreement between the experts. See Penny,

840 F. Supp. 2d at 1318. Third, whether some unspecified “double-balanced mixer” existed in

11 ParkerVision objected to the introduction of Dr. Razavi’s paper (DX1150) as the “backdoor” entry of unasserted prior art. As a result, Qualcomm limited its use to establishing Dr. Razavi’s “bona fides.” Trial Tr. 10/11 at 5:17-6:2. It should not now be permitted to use Dr. Razavi’s testimony thereon to “backdoor” a noninfringement argument.

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the prior art is wholly irrelevant—practicing the prior art is not a defense to infringement. See

Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1153 (Fed. Cir. 2004).12

4. Qualcomm’s “TX filter” arguments are irrelevant.

Qualcomm also argues that the “generating” limitations are not satisfied because the

capacitors in the TX filter block an unwanted transmit signal and do not generate the baseband.

Dkt. 501 at 13-18. The jury considered Qualcomm’s argument and rejected it in favor of the

evidence of infringement ParkerVision presented. This evidence showed that the Infringing

Products transfer energy from the carrier signal to the capacitors and that this transferred energy

is then used to generate the baseband signal.

Both Dr. Prucnal and Mr. Sorrells detailed how the Infringing Products satisfy the

“energy transfer” and “generating” limitations. Trial Tr. 10/8 at 86:19-89:6; 10/9 at 256:5-

262:21; 10/10 at 11:18-15:22, 25:6-27:19, 54:17-63:11, 240:11-246:9. Dr. Prucnal explained that

during the sampling process energy from the carrier signal is transferred to capacitors within

both the “mixer” and “TX filter” sections of the Magellan design. Id. 10/9 at 254:15-255:22

(identifying capacitors within the mixer (PX847 at 1999) and TX filter (PX847 at 2001)). Dr.

Prucnal further explained that “the choice of components within the filter was for more than one

purpose” and that these capacitors are “also serving the purpose of transferring energy.” Trial Tr.

10/10 at 188:20-24, 190:11-20; see also id. at 182:21-183:5 (disagreeing that TX filter was

designed so that transferred energy “would simply go flying right by the capacitor”).13

12 Qualcomm waived its right to bring a Rule 50(b) motion for non-infringement based on Dr. Razavi’s testimony because it was not included in their Rule 50(a) motion. See Warfield, 434 F. App’x at 780-81. 13 Qualcomm’s labeling of certain capacitors as a “TX filter” does not preclude those capacitors from being used as a storage element for down-conversion. See Trial Tr. 10/10 at 188:20-24, 190:17-20. As Dr. Razavi conceded, “it doesn’t matter what you call something … it depends on how it works.” Id. 10/11 at 241:2-12. Even if the capacitor functions as a TX filter sometimes and a storage element other times (or performs both functions simultaneously), it is well settled that an accused device that “sometimes, but not always, embodies a claim[] nonetheless infringes.” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1333 (Fed. Cir. 2013); see also Versata, 717 F.3d at 1262.

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Dr. Prucnal contradicted Qualcomm’s argument that the TX filter has no effect on the

mixer output. See dkt. 501 at 15. Dr. Prucnal explained that the carrier signal’s energy would not

merely pass by the capacitors, but would flow into the capacitors. Trial Tr. 10/9 at 237:14-22;

10/10 at 245:21-246:1 (emphasizing importance of the “switch” circuitry to causing carrier

signal energy to charge and discharge the capacitors), 249:12-20, 250:24-251:11. He testified

that the “TX Filter is needed in order to provide the charging when the switch is closed, the

storing of energy. And when the switch is opened, be discharging.” Id. at 10/10 at 247:3-19. He

further explained that in a low pass filter, any input signal with a frequency greater than zero

would cause current to flow into the capacitor. Id. at 250:6-20.14

Qualcomm’s argument that there is no evidence that the capacitors collect energy from

the carrier signal is belied by the record. See dkt. 501 at 16-17.15 Dr. Prucnal explained that,

together, two pieces of evidence show that energy is transferred through the switches into the

capacitors, Trial Tr. 10/10 at 25:14-21: (1) citing JX62, he explained that the document shows

that 0.11 μA of current from the carrier signal flows from the output of the switches and into the

capacitors in the “TX Filter” block, id. 10/9 at 233:5-237:22; and (2) he explained that each

baseband signal path contains a separate switch which turns on and off during each carrier signal

period. Id. at 238:21-251:15. Dr. Prucnal testified that the switch in each path is “very important

because it’s the switch that completes the circuit and allows energy to flow into the capacitor. If

it were not a switch circuit, this would not be a capacitor that’s being charged and discharged. It

14 Dr. Prucnal also did not testify that if the TX filter “were ripped out” that the mixer output would be unchanged. See dkt. 501 at 15. Instead, he testified that the amount of current available at that node would be unchanged if the filter were ripped out, and then further explained that the TX filter provides necessary “matching to the next stage, which is helping to enable the proper flow of current” and is “needed to provide the charging when the switch is closed, the storing of energy” and the discharging of energy when the switch is open. Trial Tr. 10/10 at 247:3-19. 15 Qualcomm also argues that Dr. Prucnal provided “legally inadequate testimony … without the required scientific evidence” because he “abandoned his computer simulations.” Dkt. 501 at 16-17. Unsurprisingly, Qualcomm cites no authority for its proposition. And, as Dr. Prucnal testified on re-direct, he did not rely on computer simulations to show infringement, especially in light of the other evidence of infringement. Trial Tr. 10/10 at 229:17-231:11.

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would just be a continuous flow.” Id. 10/10 at 245:21-247:1.

C. The Infringing Products Satisfy The “Sampling” Limitations.

The Court construed “sampling” to require “reducing a continuous-time signal to a

discrete-time signal.” Dkt. 243 at 6. Instead of applying this construction, Qualcomm advances a

new construction, arguing that the Infringing Products cannot infringe because they allegedly

“redirect the continuous time signal through various paths in the mixer core, rather than sample

it.” Dkt. 501 at 19-20. Qualcomm’s new construction (and argument) notwithstanding, JMOL

should be denied. The evidence shows that the output of the switches at each signal path is a

discrete-time signal, satisfying the Court’s claim construction of “sampling.”

ParkerVision provided legally sufficient evidence that the Infringing Products satisfy the

“sampling” limitations. Mr. Sorrells and Dr. Prucnal testified that the switches in the Infringing

Products reduce the continuous-time carrier signal to discrete-time samples. See, e.g., Trial Tr.

10/8 at 58:2-12, 84:12-86:18; 10/9 at 224:1-232:25; 10/10 at 54:17-63:11. When a switch is on,

current from the carrier signal flows from its input to its output; and when it is off, no current

flows. Id. 10/9 at 230:1-232:6, 237:14-22, 244:3-245:1; 10/10 at 17:13-24, 25:14-21, 27:3-12,

57:8-59:18, 242:11-20, 243:14-247:1; see also JX62 at 26. As Dr. Prucnal explained, the carrier

signal is sampled “[s]o the carrier itself in its entirety does not go through the switch,” Trial Tr.

10/10 at 217:25-218:3, but a portion of the “energy from the carrier signal appears at the output.”

Id. at 216:23-217:5. Thus, a switch only allows current (or energy) to flow during discrete times

of each carrier signal period, thereby sampling the carrier signal.16 Dr. Prucnal explained that an

image from Dr. Fox’s report also showed that the output of a switch is a discrete-time signal. Id.

16 Dr. Razavi provided similar analysis, explaining sampling means that “by turning the switch on and off, … we let the energy go through or not go through.” Trial Tr. 10/11 at 139:3-14. He explained that this is what the Court’s construction of sampling entails “in layman’s language.” Qualcomm should not now be heard to advance a contrary understanding of the “sampling” limitations. Source Search Techs., LLC v. Lending Tree, LLC, 588 F.3d 1063, 1075 (Fed. Cir. 2009) (“it is axiomatic that claims are construed the same way for both invalidity and infringement.”).

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10/10 at 242:11-20 (describing that when the LO pulse is high, a switch closes, and energy from

the continuous-time carrier signal (circled below in red) is sampled creating a discrete-time

signal at the switch output (circled in black), which then flows into the capacitors (this is why the

color-coding in the figure is shown stopping at the capacitor input)).

None of Qualcomm’s arguments about “sampling” render JMOL appropriate. First, the

evidence shows that the carrier signal is sampled—the input of each switch in the Infringing

Products is a continuous-time signal; the output of each switch is a discrete-time signal. As Dr.

Prucnal explained, when the switch is on, a sample of energy from the carrier signal flows from

the input to the capacitors; and when that switch is off, no current flows through the switch.

While the switch is off, “that capacitor then releases this energy and discharges it to the rest of

the circuit.” Trial Tr. 10/10 at 242:11-20, 243:14-244:7, 249:12-20. As a result of sampling, the

Infringing Products use a discrete-time signal to charge each of the capacitors satisfying the

Court’s “sampling” construction. Id. at 10/8 at 87:6-88:14; 10/10 at 55:12-59:25.

Second, Qualcomm’s argument about the carrier signal being “redirected” is a red

herring. ParkerVision was required to show (and did show, as shown above) that the Infringing

Products satisfy the Court’s “sampling” claim construction. It is true that the “sampling”

limitations are not met if “there’s always a connection from the input to the output” because in

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that situation, the signal at the output is continuous, not discrete as required by the Court’s claim

construction. As Mr. Sorrells explained, this type of constant connection from an input to an

output only occurs if “there is no off time” (i.e., if there’s no time during which all of the

switches connected to a single output are off). Trial Tr. 10/8 at 127:9-17. If a single continuous-

time carrier signal is alternatingly directed down multiple separate output paths with alternating

off times for each output path (as with the I/Q demodulation in the Infringing Products), then the

single continuous-time carrier signal has been reduced to multiple discrete-time signals on

multiple outputs. Dr. Prucnal explained this when he testified that the Infringing Products

demodulate two signals from a single carrier signal by separating an In-phase (“I”) signal and a

Quadrature (“Q”) signal. Id. 10/9 at 245:8-252:7. To extract both pieces of information, the I and

Q mixers have separate output signal paths that are not connected (meaning that each output path

is alternatively on or off), as seen in JX62 at 17 (and Dr. Fox’s figure above). Id. In addition,

each Infringing Product has two separate outputs for each I and Q down-converter (i.e. two I

paths and two Q paths—creating additional on and off times in each path), as shown in JX62 at

17 (and Dr. Fox’s figure above). Id. As Dr. Prucnal testified, the Infringing Products thus create

four separate discrete-time outputs from the one input continuous-time carrier signal—two

discrete-time outputs on both the I path and the Q path. Id. Because each of the four outputs is

separate and not recombined, there is not a single output path containing all of the carrier

signal’s energy. Rather each output path carries a discrete-time signal (reduced from the

continuous-time carrier signal) and each separately satisfies the “sampling” limitations. Id.

Third, ParkerVision established that each Infringing Product samples, including the

alleged 50% duty cycle products. As established above, Dr. Prucnal analyzed the schematics and

design documents for each product and concluded each infringes. See supra Part III.A. He also

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testified that none of the Infringing Products always operate with a duty cycle of 50% or greater,

and, thus, they all have an “off time” satisfying the “sampling” limitations. Trial Tr. 10/10 at

65:13-66:3.17 Having set forth prima facie evidence that the Infringing Products infringe, the

burden shifted to Qualcomm to rebut or cross-examine Dr. Prucnal’s testimony and establish the

noninfringement significance, if any, of a 50% duty cycle. Qualcomm did not.

D. The Infringing Products Satisfy The Other Limitations.

Qualcomm’s conclusory argument that ParkerVision “failed to present proof” regarding

three other limitations is insufficient and incorrect. Dkt. 501 at 20-21. The argument fails to

specify supporting evidence and should be denied. See Fed. R. Civ. P. 7(b) & 50(a)(2). The

argument also fails because Dr. Prucnal offered element-by-element, claim-by-claim testimony

showing that the Infringing Products infringe. He explained the “impedance matching”

limitations and the infringing use thereof. Id. 10/10 at 11:5-16:6, 29:8-31:6. He explained the

“accurate voltage reproduction” limitation and how energy transfer to the capacitors prevents

accurate voltage reproduction. Id. at 16:7-23:10, 38:19-39:24. And he explained that the same

evidence showing that the Infringing Products down-convert also shows that the baseband signal

is a “demodulated baseband signal.” Id. at 35:12-38:1.

JMOL REGARDING INDIRECT INFRINGEMENT SHOULD BE DENIED. IV.

A. Qualcomm Was Aware of or Willfully Blind to Each of the Patents-in-Suit.

ParkerVision presented legally sufficient evidence that Qualcomm not only knew about

and possessed copies of ParkerVision’s patents, but also met with ParkerVision to discuss its

patented technology, viewed demonstrations of the patented technology, and to this day retains

17 The design documents further support Dr. Prucnal’s conclusion. See, e.g., JX56 at 48 (duty cycle of Bahama design between 30 and 70%); JX57 at 44 (same for Libra/Gemini design).

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demonstration prototypes that embody the Patents-in-Suit.18 Qualcomm admitted it had pre-suit

knowledge of the ’551 and ’518 Patents, that it designs the Infringing Products to comply with

United States cellular standards, and that it is aware that these products are brought into the

United States by its customers. See, e.g., JX28 at 5; JX29 at 5-7; JX38 at 9.19

1. Deference is due to the jury’s induced infringement verdict.

The intent to induce infringement “may be inferred from all of the circumstances.”

Broadcom, 543 F.3d at 699 (citation omitted). The jury was free to weigh the evidence presented

by the parties, including both direct and circumstantial evidence. See Liquid Dynamics Corp. v.

Vaughan Co., 449 F.3d 1209, 1219 (Fed. Cir. 2006). “The drawing of inferences, particularly in

respect of an intent-implicating question is peculiarly within the province of the fact finder that

observed the witnesses.” Broadcom, 543 F.3d at 700.

Underscoring the uphill battle it faces, Qualcomm’s motion does not include citation to a

single case where JMOL disturbed a jury’s finding of a culpable mental state for inducement. See

Dkt. 501 at 23-25. Indeed, the Federal Circuit recently held a jury’s inducement verdict was

improperly overturned on JMOL because it saw “no reason to disturb” the verdict. Smith &

Nephew, Inc. v. Arthrex, Inc., 502 F. App’x 945, 949-50 (Fed. Cir. 2013) (nonprecedential). The

Court found the jury’s verdict was sufficiently supported by the facts that the defendant’s

executives and engineers had knowledge of the asserted patent, that the “instructions for use of

the [accused product] . . . paralleled the method steps of the asserted patent,” and that the

18 Trial Tr. 10/7 at 193:16-281:17; 10/8 at 9:12-93:10; 10/8 (Wheatley); 10/8 (Kantak); 10/9 at 3:23-60:21; see also PX86; PX177; PX37;PX45; PX64; PX307; PX91; PX92; PX97; PX114; PX115; PX154; PX164; JX28; PX133; PX162; PX699; PX322; PX92; PX833; PX834; PX177. 19 The jury’s infringement verdict is unaffected by its verdict finding of no willfulness. Willful infringement has a higher burden of proof—clear and convincing evidence—than induced infringement—preponderance of the evidence. In another case involving Qualcomm, the Federal Circuit established that the jury’s verdict on willful infringement is irrelevant to the sufficiency of the evidence for inducement verdict. See Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 699 (Fed. Cir. 2008) (finding “a lack of culpability for willful infringement does not compel a finding of non-infringement under an inducement theory”); Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 610 F. Supp. 2d 998, 1016-17 (D. Minn. 2009).

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defendant “made no attempt” to investigate non-infringement. Id. at 950.

2. Legally sufficient evidence supports the jury’s finding.

ParkerVision set forth legally sufficient evidence that Qualcomm infringed knowingly or

with willful blindness. It introduced evidence that high-level Qualcomm engineers, executives,

and lawyers spent months studying ParkerVision’s technology and its patents, leaving many of

these employees impressed with the technology.20 Mr. Sorrells testified that he provided several

prototype boards embodying the patents-in-suit to Qualcomm. Trial Tr. 10/8 at 24:15-25:12;

PX80. Mr. Sorrells also detailed ParkerVision’s patent coverage and how to make and use the

technology to Qualcomm. Trial Tr. 10/8 at 20:22-43:1. After the patent disclosure, Dr. Wheatley,

one of Qualcomm’s most senior engineers, wrote that he “most probably knew a lot more about

how [ParkerVision’s invention] works . . . than they do” and concluded that “[b]ottom line is, I

think it is going to be very difficult for anybody to ever use this technique without stepping on

one or more of their claims.” PX699. Qualcomm understood that it “could not afford to let

[ParkerVision’s technology] get by [it],” PX85, and so it tried to “tie” the technology to itself.

PX163; see also PX566 (stating “[ParkerVision’s technology] would be huge . . ., we cannot

afford to miss out.”). Then, after the two companies failed to reach a license agreement,

Qualcomm continued to monitor ParkerVision’s products and patents and, in 2002, requested and

then internally disseminated a ParkerVision presentation. PX584; PX308. When Qualcomm’s

early ZIF products began to lose competitive advantage, Qualcomm senior engineers, including

those involved in the evaluation of ParkerVision’s technology, investigated technologies for the

next-generation designs, and in 2004 (as design of the first Infringing Products began) decided to

20 See, e.g., Trial Tr., 10/9 (Kantak); PX699 (showing that Qualcomm engineer Dr. Wheatley reviewed ParkerVision’s patent applications with a Qualcomm attorney); Trial Tr. 10/9 at 199:14-203:11, 203:24-204:17; PX37 (describing ParkerVision’s invention as “holy grail”); PX307 (stating that Qualcomm engineers were “very impressed” with ParkerVision’s technology and concluding it had “stumbled on to something revolutionary”); PX959 (explaining benefits of ParkerVision’s invention and asserting that Qualcomm should “give credit to PV”).

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“go over the PV approach” to see whether they could “make it work.” PX322.21

The inducement verdict is also supported by the absence of an opinion-of-counsel. The

“failure to procure such an opinion may be probative of intent” to induce. Broadcom, 543 F.3d at

699.22 The jury was instructed that it “may consider all the circumstances, including whether or

not [Qualcomm] obtained the advice of a competent lawyer.” Trial Tr. 10/15 at 165:18-25.

3. Qualcomm’s good-faith belief defenses fail.

Qualcomm’s good-faith belief of invalidity defense fails. a.

Qualcomm failed to introduce evidence that it held a good-faith belief that the patents-in-

suit were invalid. Its defense is based on the invalidity testimony of Dr. Razavi, its expert hired

after the suit began. Dkt. 501 at 23-24. Qualcomm has no evidence of awareness by its personnel

of any of the invalidity theories advanced by Dr. Razavi or its reliance on any such theory at any

point in time (before or after the suit began). Moreover, Dr. Razavi’s lawsuit-related opinions

can have no bearing on Qualcomm’s state of mind during the more than six years of

infringement before suit was filed. Further, Qualcomm presented no evidence or testimony that

any of its employees shared Dr. Razavi’s opinions—whether before or after the lawsuit was

filed. Without evidence that the “basis for such invalidity defense was known to the infringers,”

Dr. Razavi’s opinions are irrelevant to Qualcomm’s state of mind.23 In fact, the only evidence

relevant to Qualcomm’s state of mind shows that Qualcomm actually believed the patents-in-suit

21 ParkerVision also introduced evidence that ParkerVision’s technology “led to” Qualcomm’s first-generation ZIF products. See, e.g., JX7 (“consideration of [ParkerVision’s invention] led to an interesting concept”); Trial Tr. 10/22 at 40:11-47 (acknowledging that a Qualcomm engineer believed Qualcomm’s “examination of ParkerVision’s D2D technology … led to [its] development of ZIF architecture”). 22 Id. (“Because opinion-of-counsel evidence, along with other factors, may reflect whether the accused infringer knew or should have known that its actions would cause another to directly infringe, we hold that such evidence remains relevant to the second prong of the intent analysis.”). 23 Carnegie Mellon Univ. v. Marvell Tech. Group, LTD, No. 09-290, 2013 U.S. Dist. LEXIS 135208, at *142 (W.D. Pa. Sept. 23, 2013) (“[I]n order for Marvell to have a ‘reasonable defense’ to infringement” for the infringement period, “there needs to be some proof that the basis for such invalidity defense was known to the infringers or even the person having ordinary skill in the art.”).

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were valid: Qualcomm senior engineers reviewed ParkerVision patent applications, conducted an

independent search for references, and determined that ParkerVision had invented “something

revolutionary” and “something different” from the prior art. See PX699; PX154; PX307.

Qualcomm good-faith belief of noninfringement defense fails. b.

During the trial’s first phase, Qualcomm opted not to call any witnesses regarding

infringement. Instead, Qualcomm relied on its cross-examination of Dr. Prucnal and Mr.

Sorrells. Contrary to Qualcomm’s assertion, cross-examination tactics are not sufficient (or

proper) grounds to establish a good-faith defense of noninfringement (either before or after suit

was filed). Qualcomm has no evidence linking its cross-examination arguments to the mental

state of any of its employees at any point in time.

Qualcomm’s argument that JMOL is required because “it had no reason to believe that

double-balanced mixers followed by low-pass filters were infringing” is also unavailing. See dkt.

501 at 23. Qualcomm undisputedly knew of the patents-in-suit. As such, the labels Qualcomm

uses to describe its products are irrelevant; what matters is how the products operate and whether

Qualcomm had a good faith belief that such products did not practice the asserted claims. See

Trial Tr. 10/11 at 241:9-13. Qualcomm introduced no evidence whatsoever that any of its

personnel believed that “a double-balanced mixer” did not infringe or the basis for any such

belief. Moreover, in 1999 ParkerVision taught Qualcomm engineers and executives that “if a

filter directly follows the energy storage device, it falls under our claims.” PX160 at 22.

The emails pointed to by Qualcomm are unpersuasive and at best conflict with

ParkerVision’s evidence. For example, Dr. Wheatley’s statement that “we are NOT using their

technique” in 2000 cannot support a good-faith belief in non-infringement because it was made

six years before infringement began and concerned products not accused of infringement. See

DX951. Because all reasonable inferences are drawn in ParkerVision’s favor, and it is not the

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Court’s role to (re)weigh the evidence, these emails do not render JMOL appropriate.

In sum, Qualcomm’s litigation-created defenses fail to establish a good faith belief of

noninfringement. i4i Ltd P’ship v. Microsoft Corp., 670 F. Supp. 2d 568, 581-582 (E.D. Tex.

2009) aff’d 598 F.3d 831, 860 (Fed. Cir. 2010) (“[t]he number of creative defenses that [a

defendant] is able to muster in an infringement action after years of litigation and substantial

discovery is irrelevant” to an analysis of the mental state of the infringer).

QUALCOMM’S REQUEST FOR A NEW TRIAL SHOULD BE DENIED. V.

Qualcomm’s request for a new trial should be denied for many of the reasons discussed

above with respect to Qualcomm’s JMOL requests. The infringement verdict is not against the

great weight of evidence; rather it is supported by legally sufficient evidence in all respects.

ParkerVision also did not make improper arguments, did not engage in character attacks, and

properly presented evidence from the 1998-99 negotiations according to the Court’s Daubert

ruling and trial instructions. In many instances Qualcomm failed to object to the alleged

“attacks” and had every opportunity to call witnesses or present evidence to explain or contradict

the evidence. And for the reasons set forth above, ParkerVision did not argue an erroneous

construction of the “generating” limitations.24 The well-educated and diligent jury followed the

Court’s instructions and delivered a verdict based upon the evidence. A new trial is not

warranted.25

CONCLUSION VI.

For all these reasons, Qualcomm’s Motion (dkt. 501) should be denied.

24 In fact, Qualcomm’s counsel advanced a similar understanding while cross-examining Dr. Prucnal and Mr. Sorrells and in closing arguments. Trial Tr. 10/8 at 148:7-149:3, 168:23-169:3, 171:11-23; 10/10 at 90:19-91:14; 10/15 at 108:21-111:11. 25 Qualcomm’s arguments in support of its request for a new trial are repeated in another JMOL motion, dkt. 499. The reasons why a new trial is not appropriate on any of the grounds set forth by Qualcomm are further discussed in ParkerVision’s response to dkt. 499.

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January 24, 2014

Respectfully submitted,

McKOOL SMITH, P.C.

/s/ Douglas A. Cawley Douglas A. Cawley, Lead Attorney Texas State Bar No. 04035500 E-mail: dcawley@mckoolsmith.com Richard A. Kamprath Texas State Bar No.: 24078767 rkamprath@mckoolsmith.com Ivan Wang Texas State Bar No.: 24042679 E-mail: iwang@mckoolsmith.com McKool Smith P.C. 300 Crescent Court, Suite 1500 Dallas, Texas 75201 Telephone: (214) 978-4000 Telecopier: (214) 978-4044

Kevin L. Burgess Texas State Bar No. 24006927 kburgess@mckoolsmith.com Josh W. Budwin Texas State Bar No. 24050347 jbudwin@mckoolsmith.com Leah Buratti Texas State Bar No. 24064897 lburatti@mckoolsmith.com Mario A. Apreotesi Texas State Bar No. 24080772 mapreotesi@mckoolsmith.com Kevin Kneupper Texas State Bar No. 24050885 kkneupper@mckoolsmith.com James Quigley Texas State Bar No. 24075810 jquigley@mckoolsmith.com McKool Smith P.C. 300 West Sixth Street, Suite 1700 Austin, Texas 78701 Telephone: (512) 692-8700 Telecopier: (512) 692-8744

SMITH HULSEY & BUSEY

/s/ James A. Bolling Stephen D. Busey James A. Bolling Florida Bar Number 117790 Florida Bar Number 901253 225 Water Street, Suite 1800 Jacksonville, Florida 32202 (904) 359-7700 (904) 359-7708 (facsimile) jbolling@smithhulsey.com

ATTORNEYS FOR PLAINTIFF PARKERVISION, INC.

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CERTIFICATE OF SERVICE

I hereby certify that a true and correct copy of the above and foregoing document has

been served on all counsel of record via the Court’s ECF system on January 24, 2014.

/s/ Leah Buratti Leah Buratti