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

JACKSONVILLE DIVISION

PARKERVISION, INC.,

Plaintiff, Civil Action No. 3:11-cv-719-J-37TEM

vs.

QUALCOMM INCORPORATED,

Defendant.

PARKERVISION, INC.’S TRIAL BRIEF ON ISSUES OF LAW

Case 3:11-cv-00719-RBD-TEM Document 334 Filed 09/12/13 of 33 PageID 13215

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TABLE OF CONTENTS

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

II. ARGUMENT AND AUTHORITIES..................................................................................1

A. Qualcomm Willfully Infringed The Patents-in-Suit By Acting Despite An Objectively High Risk That Its Actions Infringed A Valid Patent. .........................................................................................1

1. Qualcomm knew of ParkerVision’s energy transfer sampling technology and possessed prototypes that embody the Patents-in-Suit. .........................................................................2

2. Before it began infringing, Qualcomm had actual knowledge of the Patents-in-Suit. ................................................................3

3. Qualcomm concluded after due diligence that ParkerVision’s patents are valid and that use of energy transfer sampling technology without a license would infringe..................................................................................5

4. Shortly before infringement began, Qualcomm revisited the ParkerVision approach. ...........................................................6

B. Qualcomm Cannot Meet Its Burden To Establish Laches.......................................6

1. Because ParkerVision filed suit less than six years after Qualcomm’s accused infringement began, the presumption of laches cannot arise. .............................................................7

2. Qualcomm cannot show unreasonable delay—upon discovering infringement, ParkerVision filed suit within one year.............................................................................................8

3. Qualcomm has not suffered any material prejudice ..................................14

C. To Establish Equitable Estoppel, Qualcomm Must Show Reliance On Misleading Conduct. .........................................................................17

1. ParkerVision consistently demonstrated to Qualcomm that it intended to enforce the Patents-in-Suit.........................................................................................................17

2. Qualcomm cannot demonstrate reliance on a misleading statement..................................................................................18

3. Qualcomm suffered no material prejudice.................................................19


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D. Qualcomm’s Cannot Meet Its Burden to Overcome Presumption of Validity of the Patents-in-Suit......................................................19

1. Qualcomm cannot meet its burden to prove that any Asserted Claim of the ’551, ’518,’371, or ’342 Patents is invalid as obvious. .....................................................................19

2. Qualcomm cannot meet its burden to prove that any Asserted Claim is not properly enabled. ....................................................22

3. Qualcomm cannot meet its burden to prove that any of the Asserted Claims are indefinite.........................................................23

E. ParkerVision Intends To Brief Injunctions At A Later Date. ................................25

III. CONCLUSION..................................................................................................................25


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TABLE OF AUTHORITIES

Page(s) CASES

A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992)........................................................................................ passim

Adv. Cardiovascular Sys., Inc. v. SciMed Life Sys., Inc., 988 F.2d F.2d 1157, 1162 (Fed. Cir. 1993) ...............................................................................9

Andrew Corp. v. Gabriel Elecs., Inc., 847 F.2d 819 (Fed. Cir. 1988)..........................................................................................................24

Apple, Inc., v. Samsung Elecs. Co., Case No. 11-CV-01846, 2013 U.S. Dist. LEXIS 13237 (N.D. Cal. Jan. 29, 2013)......................................25

BJ Servs. Co. v. Halliburton Energy Servs., Inc., 338 F.3d 1368 (Fed. Cir. 2003)..........................................................................................22, 23

Bristol Co. v. Bosch Rexroth Inc., 758 F. Supp. 2d 1172 (D. Colo. Dec. 27, 2010) ......................................................................15

Creative Internet Adver. Corp. v. Yahoo! Inc., No. 6:07-CV-354-JDL, 2009 U.S. Dist. LEXIS 65666 (E.D. Tex. July 29, 2009) .................11

Creative Internet Adver. Corp. v. Yahoo! Inc., No. 6:07-CV-354-JDL, 2009 U.S. Dist. LEXIS 65666 (E.D. Tex. July 29, 2009) .......7, 13, 14

Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349 (Fed. Cir. 2012)................................................................................................24

Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547 (Fed. Cir. 1997)................................................................................................13

Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366 (Fed. Cir. 2006)................................................................................................25

Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371 (Fed. Cir. 2001)................................................................................................24

Fashion House, Inc. v. K Mart Corp., 892 F.2d 1076 (1st Cir. 1989)..........................................................................................................10

Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770 (Fed. Cir. 1995)........................................................................................11, 15, 16

Geo M. Martin Co. v. Alliance Mach. Sys. Int'l, LLC, 618 F.3d 1294 (Fed. Cir. 2010) ......................................................................................19


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Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776 (Fed. Cir. 2010)..................................................................................................23

Hall v. Aqua Queen Mfg., Inc., 93 F.3d .....................................................................................................................................16

Hemstreet v. Computer Entry Sys. Corp., 972 F.2d 1290 (Fed. Cir. 1992)..........................................................................................15, 16

Honeywell Int’l, Inc. v. United States, 609 F.3d 1292 (Fed. Cir. 2010)................................................................................................23

i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010), aff’d 131 S. Ct. 2238 (2011) ....................................................2

In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc)..................................................................................2

In re Wands, 858 F.2d 731 (Fed. Cir. 1988)............................................................................................22, 23

Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363 (Fed. Cir. 2008)................................................................................................20

Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052 (Fed. Cir. 2005)..........................................................................................22, 23

Izume Prods. Co. v. Koninklijke Philips Elecs. N.V., 315 F. Supp. 2d 589 (D. Del. 2004) ..................................................................................................16

Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342 (Fed. Cir. 1998)................................................................................................22

LNP Eng’g Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347 (Fed. Cir. 2001)........................................................................................................24

Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928 (Fed. Cir. 2003)..................................................................................................20

Meyers v. Asics Corp., 974 F.2d 1304 (Fed. Cir. 1992)................................................................................................ passim

Meyers v. Brooks Shoe, Inc., 912 F.2d 1459 (Fed. Cir. 1990)..........................................................................................10, 14

Mformation Techs., Inc. v. Research in Motion Ltd., 830 F. Supp. 2d 815 (N.D. Cal. 2011) .......................................................................................7


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R2 Med. Sys. v. Katecho, Inc., 931 F. Supp. 1397 (N.D. Ill. 1996) ....................................................................................13, 14

Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818 (Fed. Cir. 1984)..................................................................................................24

State Contr. & Eng’g Corp. v. Condotte Am., Inc., 346 F.3d 1057 (Fed. Cir. 2003)........................................................................................................15

Ultimax v. CTS Cement Mfg. Corp., 587 F.3d 1339 (Fed. Cir. 2009)................................................................................................13

Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., No. 99-cv-274, 2004 U.S. Dist. LEXIS 10730 (D. Del. June 9, 2004), rev’d in part on other grounds, 425 F.3d 1366 (Fed. Cir. 2005) .......................................................................12

Wanlass v. Fedders, 145 F.3d 1461 (Fed. Cir. 1998)......................................................................................9, 10, 12

Wanlass v. GE, 148 F.3d 1334 (Fed. Cir. 1998)............................................................................................9, 12

Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355 (Fed. Cir. 2011)................................................................................................23

WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999)......................................................................................2, 19, 20

STATUTES

35 U.S.C. § 103(a) .........................................................................................................................19

35 U.S.C. § 112..............................................................................................................................22


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I. INTRODUCTION

To aid the Court in resolving the questions of law that it must determine after trial in this

case, ParkerVision respectfully submits this trial brief. The Court is tasked with the following

issues of law: (1) if the jury concludes that Qualcomm willfully infringed ParkerVision’s patents,

whether such infringement was objectively willful; (2) if the jury concludes that ParkerVision’s

Patents-in-Suit are invalid as obvious, the Court decides the ultimate legal question; (3) if the

jury concludes that ParkerVision’s Patents-in-Suit are invalid for lack of enablement, the Court

decides the ultimate legal question; (4) the issue of invalidity for indefiniteness; (5) Qualcomm’s

defense of laches; and (6) Qualcomm’s defense of equitable estoppel.1

II. ARGUMENT AND AUTHORITIES

A. Qualcomm Willfully Infringed The Patents-in-Suit By Acting Despite An Objectively High Risk That Its Actions Infringed A Valid Patent.

Qualcomm’s infringement of ParkerVision’s patents was no accident. On the contrary,

Qualcomm had specific knowledge of these patents as a result of negotiations with ParkerVision

in 1998 and 1999—and had been concerned enough about the patents to conduct detailed

investigations into their validity and scope. Qualcomm’s engineers reached the conclusion that

ParkerVision had invented something distinct from the prior art: “After reading all the references

provided by Seyfi, I think PV is doing something different.” Ex. 1. Qualcomm’s engineers

further concluded that “ParkerVision does have at least an element of the ‘holy grail & patents to

protect it.” Ex. 2. But Qualcomm chose not to make a deal with ParkerVision, thinking it could

save money by developing something itself: “If we can achieve the same without PV, why give

PV free money.” Ex. 3. After years of failed efforts to duplicate ParkerVision’s results,

Qualcomm decided to simply appropriate the technology that it knew full well that ParkerVision

had patented. In 2004, Qualcomm’s engineers internally decided that they would “go over parker

1 As reflected in the parties’ Pre-trial Statement, the parties request that the Court receive evidence as to Qualcomm’s defenses of laches and equitable estoppel outside the presence of the jury. The parties propose presenting evidence on these issues while the jury retires to deliberate.


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vision [sic] approach and see if we can make it work.” Ex. 4. Such conduct is classic willful

infringement. To prevail on an assertion of willful infringement, the plaintiff must prove (1) that

the accused infringer “acted despite an objectively high likelihood that its actions constituted

infringement of a valid patent”; and (2) “this objectively-defined risk . . . was either known or so

obvious that it should have been known to the accused infringer.” In re Seagate Tech., LLC, 497

F.3d 1360, 1371 (Fed. Cir. 2007) (en banc).

The first prong asks the Court to make an objective determination regarding recklessness,

leaving the ultimate legal question to the Court. Bard Peripheral Vascular, Inc. v. W.L. Gore &

Assocs., Inc., 682 F.3d 1003, 1008 (Fed. Cir. 2012). The Court’s objective determination entails

an “assessment of potential defenses based on the risk presented by the patent.” Id. The mere fact

that a defendant “presented several defenses at trial, including noninfringement and invalidity,”

does not preclude a finding of willful infringement. i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d

831, 860 (Fed. Cir. 2010), aff’d 131 S. Ct. 2238 (2011). The second prong of Seagate requires

the jury to focus on a subjective inquiry: whether “this objectively-defined risk . . . was either

known or so obvious that it should have been known to the accused infringer.” Seagate, 497 F.3d

at 1371. A finding of willful infringement is evaluated “in view of the totality” of the

circumstances. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1354 (Fed. Cir. 1999).

1. Qualcomm knew of ParkerVision’s energy transfer sampling technology and possessed prototypes that embody the Patents-in-Suit.

From the summer of 1998 through the spring of 1999, Qualcomm and ParkerVision

engaged in licensing negotiations regarding ParkerVision’s energy transfer sampling receiver

technology. During these negotiations, ParkerVision gave Qualcomm a detailed view of its

technology, going so far as to provide Qualcomm with several demonstration board prototypes

(named Eddie 1 and Eddie 2) that embodied the ParkerVision down-conversion technology

protected by ParkerVision’s Patents-in-Suit. Ex. 5 at 305:4-15. ParkerVision provided the

prototypes only after securing corporate nondisclosure agreements and multiple personal

nondisclosure agreements. Ex. 6 at 436:8-20; Ex. 7; Ex. 8. Qualcomm conducted tests on these


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boards for more than a year, ultimately concluding: “We are very impressed with the

performance! . . . The truth is Parker Vision have stumbled on something revolutionary . . .” Ex.

9.

2. Before it began infringing, Qualcomm had actual knowledge of the Patents-in-Suit.

In 1999, ParkerVision informed Qualcomm that ParkerVision had patents pending for its

down-conversion technology. Ex. 10; see also Ex. 11. And the evidence shows that Qualcomm

executives, attorneys, and product designers had ample actual knowledge of the Patents-in-Suit

before Qualcomm’s infringement began: Role at Qualcomm Name Knowledge of Patents-in-Suit

Senior Director Prashant Kantak Kantak admitted that he was aware that ParkerVision was filing for patents that would cover its energy transfer sampling technology. Ex. 12 at 82:9-17.

Vice President and General Counsel of Qualcomm Atheros

Adam Tachner Tachner had in his possession press releases regarding the ’551 patent and copies of the patent itself. Ex. 13; see also Ex. 14.

Vice President of Technology

Paul Peterzell Peterzell had in his possession press releases regarding the ’551 patent and copies of the patent itself. Ex. 15; see also Ex. 16.

Additionally, Peterzell sent and received email related to ParkerVision patents in July 2000. Ex. 17.

Vice President and in-house patent attorney

Charles Brown Brown had a copy of the ’551 Patent’s prosecution history in his files. Ex. 18.

Attorney Ray Hom Hom ordered a copy of the ’551 Patent and its file history in January 2001. Ex. 19.

Attorney Sean English English was aware of the ’551 Patent in or before February 2001. Ex. 17 at 103, 111.

Attorney Monique Hatch Hatch was aware of the ’551 Patent in or before February 2001. Ex. 17 at 110.

Attorney Victoria Pacey Pacey was aware of the ’551 Patent in or before February 2001. Ex. 17 at 110.

Attorney Stephanie Young Young was aware of the ’551 Patent in or before February 2001. Ex. 17 at 102.

Vice President of Technology

Chuck Wheatley Wheatley and Ben Miller met with Jeff Parker, David Sorrells, and ParkerVision’s patents lawyers to discuss


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Role at Qualcomm Name Knowledge of Patents-in-Suit

ten of ParkerVision’s pending patent applications one of which issued as the ’551 patent. Ex. 20. As a result of this meeting between Qualcomm and ParkerVision in May 1999, Qualcomm’s in-house patent lawyers and high level executives were aware that ParkerVision was in the process of filing additional “newer applications” to cover “holes” in their existing applications. Ex. 21; see also Ex. 22.

And as a result of meeting with ParkerVision and its patent lawyers and reviewing ParkerVision’s patent applications, Wheatly told Kantak, Jah, Persico, Antonio and others that: “Bottom line is, I think it is going to be very difficult for anybody to ever use this technique [energy transfer sampling] without stepping on one or more of [ParkerVision’s] claims.” Ex. 21.

Co-founder Franklin Antonio In 2000, Antonio circulated information within Qualcomm regarding ParkerVision patents issuing—specifically that ParkerVision’s ’371 Patent had just issued. Ex. 23.

Antonio also sent and received emails to Qualcomm lawyers in July 2000 and May 2002 related to ParkerVision patents. Ex. 17 at 104, 68.

Former General Counsel

Lou Lupin Lupin sent and received email related to ParkerVision patents in July 2000, December 2000, and January 2001. Ex. 17 at 1.

Former in-house lawyer for patent licensing, its general counsel, and current Vice Chairman

Steve Altman Altman sent email related to a ParkerVision patent in December 2000. Ex. 17 at 1.

Former head of Qualcomm Technologies and Ventures

Sanjay Jha Jha received email related to ParkerVision’s patents in July 2000. Ex. 17 at 1.

Former Executive Vice President and President of Qualcomm CDMA Technologies

Don Schrock Schrock sent and received email related to ParkerVision patents. Ex. 17 at 1.


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Additionally, Chuck Wheatley, Prashant Kantak, and other high level Qualcomm

employees attended a presentation by Jeff Parker and David Sorrells regarding ParkerVision’s

patents. Ex. 24. Thus, Qualcomm indisputably had pre-infringement knowledge of

ParkerVision’s patents.

3. Qualcomm concluded after due diligence that ParkerVision’s patents are valid and that use of energy transfer sampling technology without a license would infringe.

During its negotiations with ParkerVision, Qualcomm investigated the scope and validity

of ParkerVision’s patents—and concluded that ParkerVision was doing something different from

the prior art. Qualcomm employees Chuck Wheatley and Ben Miller reviewed ParkerVision’s

patent applications. See Ex. 21. Wheatley was convinced that ParkerVision’s applications were

all encompassing—writing “[ParkerVision is] trying to capture every possible version of any

use” of their technology; he also wrote that any holes “are being covered in newer applications.”

Id.

Qualcomm continued investigating ParkerVision’s patents; in March 1999, Prashant

Kantak, Chuck Wheatley and others wrote regarding Qualcomm’s ongoing “[l]egal due

diligence” on ParkerVision’s patents. Ex. 25. After Qualcomm sent ParkerVision two references

it thought anticipated ParkerVision’s energy transfer sampling technology, David Sorrells

explained to Chuck Wheatley “what it is that [ParkerVision] are doing that is lacking in the prior

art samplers.” Ex. 26. Chuck Wheatley then wrote internally that “[a]fter reading all the

references provided by Seyfi [to ParkerVision], I think PV is doing something different.” Ex. 1.

In April 1999, Andy Oberst wrote internally that “ParkerVision does have at least an element of

the ‘holy grail’ [and] patents to protect it.” Ex. 2. Others in the industry warned Qualcomm that

its products potentially infringed ParkerVision’s patented technology. Don Schrock, in

December 2000, received an email informing him that Mike Whitfield at First Union Securities

had heard that Qualcomm’s products “would require a license agreement between QCOM and

ParkerVision.” Ex. 27. Whitfield himself had “read [ParkerVision’s] specific patent . . . and it

appears very broad.” Id.


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Chuck Wheatley concluded that use of energy transfer sampling without a license would

infringe. “Bottom line is”—he warned the group—“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.” Ex. 21.2 In

July 2000, Andy Oberst asked Prashant Kantak if there was any risk to Qualcomm with regard to

the recent granting of ParkerVision’s U.S. Patent 6,091,940, which covered ParkerVision’s

energy transfer sampling technology. Ex. 28. Kantak responded that there was a risk only if

Qualcomm decided “to go with [ParkerVision’s] direct conversion technique.” Id. But in the face

of these conclusions from its own engineers, Qualcomm plowed ahead with its efforts to develop

products that would give it the benefits of ParkerVision’s technology.

4. Shortly before infringement began, Qualcomm revisited the ParkerVision approach.

Shortly before it began infringing Qualcomm intentionally revisited the ParkerVision

approach. In May 2004, Qualcomm product designers Steven Ciccarelli and Seyfi Bazarjani

revisited “the idea of RF sampling” for receivers using ParkerVision’s approach in Qualcomm’s

“next generation radio transceiver.” Ex. 4. Bazarjani stated he would “set up a meeting with

Chuck [Wheatley] to go over parker vision [sic] approach and see if we can make it work.” Id.

Yet Qualcomm did not reopen negotiations with ParkerVision, did not license the patents, and

did not pay ParkerVision a dime. Such conduct in the face of detailed knowledge of both

ParkerVision’s technology and its patents is necessarily willful infringement.

B. Qualcomm Cannot Meet Its Burden To Establish Laches.

To prevail on its laches defense, Qualcomm must prove two distinct factors. First, that

ParkerVision “delayed filing suit for an unreasonable and inexcusable length of time from the

time [it] knew or reasonably should have known of its claim” against Qualcomm. A.C. Aukerman

2 Notably, despite Qualcomm’s sizable legal section, it has not produced opinion of counsel in this case. The lack of an opinion of counsel supports a finding of willful infringement. Finjan Software, Ltd. v. Secure Computing Corp., C.A. No. 06-369 (GMS), 2009 U.S. Dist. LEXIS 72825, at *49 (D. Del. Aug. 18, 2009) (“While there is no longer an affirmative duty of care that requires an accused infringer to obtain an opinion of counsel, the fact that Secure did not seek any such opinion may be considered in the totality of circumstances surrounding willful infringement.”), aff’d in part, rev’d in part, 626 F.3d 1197 (Fed. Cir. 2010).


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Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1032 (Fed. Cir. 1992). Second, that “the delay

operated to the prejudice or injury” of Qualcomm. Id. Qualcomm bears the ultimate burden to

prove each element by a preponderance of the evidence. Id. at 1039.3 Courts typically find a

period of delay “‘unreasonable’ only when it ‘substantially exceeds’ four years.” Mformation

Techs., Inc. v. Research in Motion Ltd., 830 F. Supp. 2d 815, 840 (N.D. Cal. 2011); see also,

e.g., IXYS Corp. v. Advanced Power Tech., Inc., 321 F. Supp. 2d 1156, 1163 (N.D. Cal. 2004);

Creative Internet Adver. Corp. v. Yahoo! Inc., No. 6:07-CV-354-JDL, 2009 U.S. Dist. LEXIS

65666, at *8-9 (E.D. Tex. July 29, 2009) (refusing to find a three-year delay unreasonable). The

period of delay “is measured from the time the plaintiff knew or reasonably should have known

of the defendant’s alleged infringing activities to the date of suit.” Aukerman, 960 F.2d at 1032.

1. Because ParkerVision filed suit less than six years after Qualcomm’s accused infringement began, the presumption of laches cannot arise.

While courts typically find delays unreasonable only when substantially in excess of four

years, see IXYS, 321 F. Supp. 2d at 1163, a presumption of laches will arise only upon proof of a

delay in filing suit for more than six years after actual or constructive knowledge of the

infringement. Id. at 1035-36. There can be no presumption of laches in this case. Because six

years did not pass between Qualcomm’s introduction of the accused products and ParkerVision’s

filing of this suit, the presumption cannot arise as a matter of law. January 2006 Qualcomm first infringes the Patents-in-Suit with the RTR6275. Ex. 29

(Expert Report of P. Prucnal) at 63. July 20, 2011 ParkerVision files suit. Dkt. 1 at 1.

3 Even if the Court concludes that Qualcomm can establish the elements of laches by a preponderance of the evidence, preclusion of pre-suit damages is not required. Aukerman, 960 F.2d at 1033. Application of the laches defense remains “discretionary, and as an equitable matter, the district court is to look to all the facts and circumstances of the case and weigh the equities of the parties.” Id. A defendant who had engaged in particularly egregious behavior—such as “conscious copying”—may change the equities significantly in the plaintiff’s favor. Id. In the final analysis, “the length of delay, the seriousness of prejudice, the reasonableness of excuses, and the defendant’s conduct or culpability must be weighed to determine whether the patentee dealt unfairly with the alleged infringer by not promptly bringing suit.” Aukerman, 960 F.2d at 1034. Here the Court should decline to preclude ParkerVision from pre-suit recovery of damages, based upon Qualcomm’s long-standing knowledge of its infringement, as detailed in the willfulness discussion, supra.


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2. Qualcomm cannot show unreasonable delay—upon discovering infringement, ParkerVision filed suit within one year.

In the absence of a presumption of laches, Qualcomm must show that ParkerVision

unreasonably delayed in filing suit from the time that it had actual or constructive knowledge of

Qualcomm’s infringement. ParkerVision acted promptly to enforce its rights once it suspected

Qualcomm’s infringement—filing suit less than one year after this discovery.

a) Upon learning of Qualcomm’s infringement, ParkerVision filed suit within one year.

ParkerVision first learned of Qualcomm’s infringement no earlier than September 2010.

In the fall of 2010, ParkerVision employee Richard Harlan came across two Qualcomm patents

using Google’s patent search while researching DC offset technology. Ex. 30 at 16:13-17:1,

18:4-14. The patents—which described a technology resembling ParkerVision’s D2D

technology—led him to investigate further. Id. at 21:2-23. In early 2011, Harlan discovered a

conference paper (dated 2011) describing in detail a Qualcomm chip with characteristics similar

to ParkerVision’s energy transfer sampling technology covered by the Patents-in-Suit. Id. at

21:2-23; see Ex. 31. The conference paper included circuitry diagrams and timing diagrams

related to the operation of Qualcomm integrated circuits. See Ex. 31; Ex. 6. Concerned, Harlan

contacted ParkerVision’s Chief Technology Officer, and inventor of the Patents-in-Suit, David

Sorrells. Id. at 456:15-25, 421:22-424:8; Ex. 30 at 32:18-33:2. Sorrells proceeded to carefully

analyze the conference paper. Id. at 35:1-7. Upon reviewing the conference paper, Sorrells noted

that there were “several key concepts” that ParkerVision has in its Patents-in-Suit reflected in the

conference paper. Ex. 6 at 422:25-423:3. Sorrells then reported his findings to ParkerVision’s

CEO, Jeff Parker, and had others at ParkerVision verify his findings. Id. at 423:5-9.

Jeff Parker and David Sorrells decided further research was needed to verify their

suspicions that Qualcomm infringed the Patents-in-Suit. Id. at 423:19-22. They asked Harlan to

search for publicly available information regarding Qualcomm’s products in order to study the

direct conversion architecture being used by Qualcomm. Id. at 423:24-425:8. ParkerVision then

analyzed the publicly available materials describing Qualcomm’s products and the Patents-in-


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Suit, and decided to hire counsel. Id. at 424:25-425:8. ParkerVision then filed this lawsuit on

July 20, 2011. Dkt. 1 at 1. Because ParkerVision filed suit less than a year after suspecting

Qualcomm’s infringement of the Patents-in-Suit, Qualcomm cannot carry its burden to show

unreasonable delay.

b) Qualcomm’s arguments of constructive knowledge must fail.

Qualcomm will likely attempt to charge ParkerVision with constructive notice. See Ex.

32; Ex. 33. If a patentee knows facts that would “put upon a man of ordinary intelligence the

duty of inquiry,” the patentee is “chargeable with such knowledge as he might have obtained

upon inquiry.” Adv. Cardiovascular Sys., Inc. v. SciMed Life Sys., Inc., 988 F.2d F.2d 1157, 1162

(Fed. Cir. 1993). Constructive knowledge of infringement may be imputed only to a patentee

who is “negligently or willfully oblivious” to “pervasive, open and notorious activities that a

reasonable patentee would suspect were infringing.” Wanlass v. GE, 148 F.3d 1334, 1338 (Fed.

Cir. 1998). Where the facts known to the patentee do not establish a duty of inquiry or where the

patentee satisfies its duty but does not or could not discover the infringement, constructive

knowledge does not exist and the laches clock does not start. See id.; see also Wanlass v.

Fedders, 145 F.3d 1461, 1467 (Fed. Cir. 1998).

The Court should reject any constructive notice argument raised by Qualcomm because

ParkerVision could not reasonably have discovered Qualcomm’s infringement before it came

across the Qualcomm patents and conference paper in late 2010 and early 2011. See Ex. 34 at 2.

Qualcomm will likely attempt to establish constructive notice by pointing to three events: (1)

Qualcomm’s announcement of the release of its ZIF architecture, see Ex. 33; (2) the first

commercial shipment of Accused Products in 2006 and accompanying publicity, see id.; and (3)

ParkerVision’s possession of certain device specification documents for Accused Products, see

Ex. 6 at 427:1-431:3. Each argument lacks merit.

First, Qualcomm’s publicity regarding its ZIF architecture is irrelevant. Qualcomm did

not release the earliest Accused Product in this case (the RTR6275) until January 2006, so it is

legally and factually impossible for ParkerVision to have had constructive knowledge of


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Qualcomm’s infringement prior to 2006. As a matter of law, the laches period cannot begin to

run until the patents issue and infringement begins. See, e.g., Meyers v. Brooks Shoe, Inc., 912

F.2d 1459, 1462 (Fed. Cir. 1990) (overruled in part on other grounds by Aukerman Co., 960 F.2d

at 1038-39).

Second, Qualcomm also claims that the commercial shipping of accused products in 2007

should have notified ParkerVision of its infringement. Ex. 33. In support, Qualcomm refers to a

press release describing the QSC6055 chip. Ex. 3; Ex. 35. But the press release (and any other

similar publicity regarding Accused Products) is far too vague to put a ParkerVision on notice

that Qualcomm was infringing the Patents-in-Suit. Qualcomm’s press release describes the

receiver technology in extremely general terms that certainly does not go to the level of detail

provided in Qualcomm’s patents, conference paper or the reverse engineering report

ParkerVision obtained. Whether publicly available information should have put the plaintiff on

notice of possible infringement depends on the type and quality of information available.4 Here

the lack of sufficiently detailed technical information in Qualcomm’s press releases could not

have warned ParkerVision—a reasonably vigilant patentee—of the possibility of infringement.

Third, none of the documents in ParkerVision’s possession that Qualcomm may point to

include the level of technical detail sufficient to implicate infringement. At the outset,

Qualcomm should be precluded from arguing that laches applies based on certain allegedly

“confidential” or “proprietary” device specifications in ParkerVision’s possession because

Qualcomm failed to disclose this allegation in its response to ParkerVision’s interrogatory

regarding laches. (Nor did Qualcomm ever supplement its interrogatory responses to add these

factual allegations to its defense.)5 ParkerVision learned that Qualcomm might attempt to raise

4 See, e.g., Fedders, 145 F.3d at 1465–66 (“[T]he mere fact that single-phase motors are used in room air conditioners is not enough to suggest infringement because not all single-phase motors infringe. . . . For example, any advertisements for high-efficiency air-conditioners using single phase motors and having a capacitor capable of operating with specific characteristics should have alerted Wanlass to the prospect of infringement. . . .”).

5 See Fashion House, Inc. v. K Mart Corp., 892 F.2d 1076, 1081 (1st Cir. 1989) (affirming trial court’s exclusion of evidence based on party’s failure to completely answer interrogatory).


11 McKool 921049v8

this argument through Qualcomm’s deposition questioning of ParkerVision’s witnesses. See,

e.g., Ex. 6 at 419:8-424:10; Ex. 30 at 17:10-36:20.

In any event, the high level block diagrams and general performance measurements

contained in the device specification documents do not include sufficient technical detail to put

ParkerVision on notice of Qualcomm’s infringement. See, e.g., Ex. 36. As Sorrells noted in his

deposition, these documents include high-level specifications. Ex. 6 at 430:18-19. (“[T]here’s no

design information in here. It’s basically a block diagram level. It just allows me to do a

comparative analysis in terms of overall general specs and power consumption.”).

c) ParkerVision cannot be charged with earlier constructive knowledge due to the difficulty and expense of discovering infringement, as well as the multiple NDAs.

Even where a court finds some delay, reasonable excuses may justify all or part of a

delay. Creative Internet Adver. Corp., 2009 U.S. Dist. LEXIS 65666, at *8-9. Reasonable

excuses include reliance on a pre-existing agreement or the difficulty and expense of discovering

infringement. See Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 774 (Fed. Cir.

1995) (reversing summary judgment where trial court failed to consider whether reliance on

agreement with alleged infringer made delay reasonable). Any justification “for a period of time

deducts that time from the total period of delay.” Creative Internet Adver. Corp., 2009 U.S. Dist.

LEXIS 65666, at *8-9. Here, to the extent that the Court concludes that ParkerVision had

constructive notice of Qualcomm’s infringement and delayed in filing suit, any such delay would

be justified based on the parties’ non-disclosure agreements, the difficulty and expense of

discovering infringement, and the existence of closely related patents.

ParkerVision had no reason to suspect Qualcomm’s infringement due to the multiple non-

disclosure agreements Qualcomm signed. See Ex. 6 at 436:8-20. A party’s belief that a party will

honor a pre-existing agreement not to infringe may excuse all or part of a delay in bringing suit.

Gasser Chair Co., 60 F.3d at 774. Here, Qualcomm signed multiple nondisclosure agreements—

personal as well as corporate. See e.g., Ex. 37; Ex. 38. ParkerVision’s reasonable belief that

Qualcomm would abide by the terms of the non-disclosure agreements precludes a finding of


12 McKool 921049v8

constructive knowledge and unreasonable delay in this case.

Additionally, the Federal Circuit recognizes that a patentee’s duty to test products to

reveal infringement “is a function of [the test’s] cost and difficulty.” GE, 148 F.3d at 1337. For

certain inventions, determining whether an accused product infringes is “both easy and

inexpensive.” Id. at 1337. For other products, including the Accused Products, the complexity

and expense of testing prohibits a reasonable patentee from testing for infringement absent

cause.6 Qualcomm’s chip designs are not publically available. Without reverse engineering an

integrated circuit or seeing a disclosure such as that in Qualcomm’s 2011 conference paper

(which included circuitry and timing diagrams), it would not have been possible for ParkerVision

to learn the internal workings of Qualcomm’s integrated circuits. Ex. 6 at 439:21-440:2. To

confirm infringement, ParkerVision ultimately invested in a reverse engineering report—at a cost

of $128,000. Ex. 34 at 3. ParkerVision could not afford to obtain such an expensive analysis on a

routine basis. ParkerVision was diligent once it had a reason to suspect infringement in light of

Qualcomm’s conference paper in 2011, but it could not reasonably have discovered Qualcomm’s

transgressions at an earlier date.

d) Qualcomm’s secrecy precludes a finding of constructive knowledge and unreasonable delay

While the laches analysis focuses first on the patentee’s conduct, “the infringer’s

activities are relevant to whether the patentee’s conduct was reasonable, including the infringer’s

efforts to maintain the secrecy of its processes. . . . An infringer cannot cloak its activities in

secrecy and simultaneously accuse the patent holder of failing to . . . protect its rights.” Union

Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., No. 99-cv-274, 2004 U.S. Dist. LEXIS

10730 at *57 (D. Del. June 9, 2004) (emphasis added), rev’d in part on other grounds, 425 F.3d

1366 (Fed. Cir. 2005). Imputing constructive knowledge is improper when the infringement is

6 Fedders, 145 F.3d at 1465 (“Imposing a duty upon Wanlass to monitor the air-conditioning industry by periodically testing all others’ products, therefore, would be unreasonable. . . . Mr. Wanlass’s companies could not afford to purchase and dismantle every air-conditioner model on the market and test the single-phase motor found inside.”).


13 McKool 921049v8

“in secret,” and cannot be determined through testing. Eastman Kodak Co. v. Goodyear Tire &

Rubber Co., 114 F.3d 1547, 1559 (Fed. Cir. 1997); Ultimax v. CTS Cement Mfg. Corp., 587 F.3d

1339, 1350 (Fed. Cir. 2009). The evidence overwhelmingly establishes that ParkerVision could

not have detected Qualcomm’s infringement by studying or testing chips. Qualcomm never

would have revealed to ParkerVision how its chips worked, and the cost of reverse engineering is

very expensive. Ex. 34 at 3. Qualcomm’s secret infringement precludes a finding of constructive

knowledge and unreasonable delay in this case. See Eastman Kodak, 114 F.3d at 1559.

e) ParkerVision’s closely related patent precludes a finding of constructive knowledge and unreasonable delay.

Any attempt to charge ParkerVision with constructive knowledge fails to consider or

acknowledge that the Patents-in-Suit are closely related to three other patents that were originally

part of the complaint: the ’401 Patent, which issued in October 2010, the ’845 Patent, which

issued in May 2010, and the ’896 Patent, which issued in April 2009. See Dkt. 1 at 2-3; Exs. 39

(’401 Patent); 40 (’845 Patent); 41 (’896 Patent). In addition, the ’342 Patent—which still has

pending claims—did not issue until February 2009. Ex. 42 (’342 Patent). All four patents relate

to down-conversion technology, and there is significant overlap between the inventors and the

inventors on the remaining patents. The ’896 Patent claims priority to is part of the same family

as the ’551 Patent, which is still in the suit.

The great weight of authority holds that when patents are closely related, the time

between the issuance of the first and second patent is an excused period of delay for laches

purposes. See Brooks Shoe, 912 F.2d at 1462; Asics, 974 F.2d at 1307; Creative Internet, 2009

U.S. Dist. LEXIS 65666, at *6-7; IXYS, 321 F. Supp. 2d at 1163; see also R2 Med. Sys. v.

Katecho, Inc., 931 F. Supp. 1397, 1409 (N.D. Ill. 1996) (“Where patents are closely related, it is

generally reasonable for a patentee to delay filing suit under any of the patents until all have been

issued.”). This rule makes sense, as bringing claims on related patents together in one suit

“conserve[s] both the parties’ and the courts’ resources.” Brooks Shoe, 912 F.2d at 1462; IXYS,

321 F. Supp. 2d at 1163. And the rule has continuing vitality—it has, as is the case here, been


14 McKool 921049v8

extended by courts to excuse a delay associated with a later-issued patent even when that patent

was ultimately not asserted in the lawsuit. See Creative Internet, 2009 U.S. Dist. LEXIS 65666,

at *6-7; see also, e.g., TGIP, Inc. v. AT&T Corp., 527 F. Supp. 2d 561, 583 (E.D. Tex. 2007)

(excusing delay in filing on one patent for the period during which a related patent was in

reexamination).

Under this authority, any delay in bringing suit on the Patents-in-Suit until the issuance of

the four closely related patents was completed in October 2010 is excused. See Brooks Shoe, 912

F.2d at 1462; Asics, 974 F.2d at 1307; Creative Internet, 2009 U.S. Dist. LEXIS 65666, at *6-7;

IXYS, 321 F. Supp. 2d at 1163; R2, 931 F. Supp. at 1409; Aukerman, 960 F.2d at 1038. To

borrow from the relevant case law, “[i]n light of the close relationship of these patents,

[ParkerVision] was not required to bring suit under [any] patent until the issuance of the [’845]

patent” in May 2010. R2, 931 F. Supp. at 1409. When infringement first began in 2006, the ’551,

’518, and ’371 patents had issued. Dkt. 1 at 2-3. But the closely-related ’401, ’845, ’896, and

’342 patents had all been filed but had not yet issued. The law encourages judicial efficiency, and

ParkerVision was entitled to (and indeed, encouraged to) wait to file suit until all of the related

patents had issued in October 2010. The laches period could thus be at most less than one year—

far less than the four years of delay which courts typically require before making a finding of

laches.

3. Qualcomm has not suffered any material prejudice

Proof of “material prejudice” resulting from unexcused periods of delay is essential to a

laches defense; such prejudice may be economic or evidentiary. Aukerman, 960 F.2d at 1033.

Economic prejudice results where the infringer “will suffer the loss of monetary

investments or incur damages which likely would have been prevented by earlier suit.”

Aukerman Co., 960 F.2d at 1033. To establish economic prejudice, “conclusory averments are

not sufficient.” Brooks Shoe, 912 F.2d at 1463. Nor is mere evidence of investment in the

infringing products enough. Hemstreet v. Computer Entry Sys. Corp., 972 F.2d 1290, 1293-94

(Fed. Cir. 1992). Rather, there must be an “explicitly proven nexus” between any unexcused


15 McKool 921049v8

delay and the damaging change in economic position during that delay. Id.7 “The change must be

because of and as a result of the delay, not simply a business decision to capitalize on a market

opportunity.” Id. at 1294 (emphasis added).

Qualcomm fails to make such a showing. Instead, it makes only conclusory accusations

that it “continued to develop and produce its allegedly infringing direct down-conversion

receiver technology, thus increasing the scope of the alleged infringement.” Ex. 33. Qualcomm’s

argument must fail. Evidence that Qualcomm made investments or expanded its business during

the delay period is insufficient to establish economic prejudice. Gasser, 60 F.3d at 775.

First, Qualcomm has not and cannot identify a change in its position caused by any

purported delay in filing suit. Any assertion by Qualcomm of a nexus between the alleged delay

and economic prejudice fails because it relies on the conclusory allegation, unsupported by any

evidence, that it would have acted differently had it known of ParkerVision’s claims earlier.

Such arguments have repeatedly been rejected by the Federal Circuit.8 Second, ParkerVision’s

conduct has had no effect on Qualcomm’s decision to infringe and to continue infringement.

Indeed, Qualcomm still has not stopped infringing. Qualcomm continues to market and sell the

Accused Products without implementing a design-around in the two years since ParkerVision

filed suit.9 Qualcomm’s unabated infringement after this suit was filed negates a finding of

prejudice. “Indications that a party would not have acted differently had suit been brought earlier

include continuing to sell and design products after suit was ultimately filed . . . .” Bristol Co. v.

7 See also State Contr. & Eng’g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1066 (Fed. Cir. 2003) (“A nexus must be shown between the patentee's delay in filing suit and the expenditures; the alleged infringer must change his position ‘because of and as a result of the delay.’”); Gasser Chair Co., Inc. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 774 (Fed. Cir. 1995) (“Even a considerable investment during a delay period is not a result of the delay if it was a deliberate business decision to ignore [a] warning, and to proceed as if nothing had occurred.”).

8 See State Contr. & Eng’g Corp., 46 F.3d at 1066-67 (infringer failed to present evidence that it would have actually changed its design); Gasser, 60 F.3d at 775-76; Meyers v. Asics Corp., 974 F.2d 1304, 1308 (Fed. Cir. 1992); Hemstreet, 972 F.2d at 1293-94.

9 In January of this year, Qualcomm announced new products. Ex. 43. Qualcomm, however, has refused to provide any document production whatsoever on its new products, despite ParkerVision’s requests. See e.g., Ex. 44. If these new products were non-infringing, Qualcomm would be expected to tout them as non-infringing alternatives or design-arounds to ParkerVision’s patents-in-suit.


16 McKool 921049v8

Bosch Rexroth Inc., 758 F. Supp. 2d 1172, 1181 (D. Colo. Dec. 27, 2010).10 Third, Qualcomm’s

assertions that it does not infringe the Patents-in-Suit and that the Patents-in-Suit are invalid

demonstrate that Qualcomm was “indifferent” to whether or not ParkerVision sued, and was

simply making “a business decision to capitalize on a market opportunity.” Hemstreet, 972 F.2d

at 1294; see also Gasser, 60 F.3d at 775. There is simply no evidence that Qualcomm would

have pursued a different approach regarding infringement or validity, or acted differently, had

ParkerVision filed this suit earlier.

To establish evidentiary prejudice, Qualcomm must prove that any unexcused delay

caused such a loss of evidence as to render Qualcomm unable “to present a full and fair defense

on the merits.” Id. For evidentiary prejudice, the alleged infringer must state with particularity

what evidence has been lost by the alleged delay. Asics, 974 F.2d at 1308. And as with economic

prejudice, the defendant must prove that the loss of evidence resulted from the delay and would

not have occurred but for the delay. See Hall v. Aqua Queen Mfg., Inc., 93 F.3d 1548, 1558 (Fed.

Cir. 1996) (defendant “utterly failed to demonstrate that the allegedly prejudicial events occurred

after [plaintiff] knew or should have known of the allegedly infringing activities”). “Conclusory

statements that there are missing witnesses, that the witnesses’ memories have lessened, and that

there is missing documentary evidence, are not sufficient” to establish evidentiary prejudice.

Asics, 974 F.2d at 1308.

Qualcomm cannot demonstrate evidentiary prejudice. Qualcomm contends—vaguely—

that “Qualcomm’s ability to present an adequate defense to ParkerVision’s claims of

infringement may be impaired due to the loss of records, unavailability of witnesses or

unreliability of memories of long past events.” Ex. 33. But to establish evidentiary prejudice,

general and “[c]onclusory statements that there are missing witnesses, that witnesses’ memories

10 See also, Asics, 974 F.2d at 1308 (considering the fact that “[n]one of the defendants submitted evidence that they curtailed design and development of shoes in response to Meyers’ suit once it was actually filed” in finding no economic prejudice”); Izume Prods. Co. v. Koninklijke Philips Elecs. N.V., 315 F. Supp. 2d 589, 613 (D. Del. 2004) (continued infringement in the face of a filed suit suggests defendant “was more concerned about earning a profit than about [plaintiffs’] claim of infringement”).


17 McKool 921049v8

have lessened, and that there is missing documentary evidence, are not enough.” Asics, 974 F.2d

at 1308. Instead, Qualcomm must demonstrate that particular periods of unexcused delay caused

the loss of specific evidence, thereby rendering Qualcomm unable “to present a full and fair

defense on the merits.”11 See Aukerman, 960 F.2d at 1033. Qualcomm’s contentions are therefore

insufficient as a matter of law. See Asics, 974 F.2d at 1308.

C. To Establish Equitable Estoppel, Qualcomm Must Show Reliance On Misleading Conduct.

To invoke equitable estoppel, a defendant must prove three separate factors: (1) that

through misleading conduct, the plaintiff led the defendant to reasonably infer that it did not

intend to enforce its patent against the defendant; (2) the defendant relied on that conduct; and

(3) that due to its reliance, the defendant will be materially prejudiced if the plaintiff is allowed

to proceed with its claim. Aukerman, 960 F.2d at 1041. Conduct by the plaintiff may include

specific statements, action, inaction, or silence where there was an obligation to speak. Id. As

ParkerVision will show, Qualcomm cannot meet its burden to prove a single factor—let alone all

three.

1. ParkerVision consistently demonstrated to Qualcomm that it intended to enforce the Patents-in-Suit.

ParkerVision did not lead Qualcomm to believe that it did not intend to enforce its

patents. Rather, ParkerVision consistently demonstrated to Qualcomm that it believed in the

fundamental value of its technology and would vigorously protect its intellectual property.

ParkerVision updated Qualcomm regarding the status of its patents, insisted on personal as well

as corporate nondisclosure agreements, and filed suit immediately upon learning of Qualcomm’s

infringement.

Equitable estoppel requires misleading conduct on behalf of the plaintiff regarding its

intention to pursue infringement claims against the defendant. See Asics, 974 F.2d at 1304, 1308.

11 Qualcomm undermines this argument by contending that prior negotiations are irrelevant to this case. See Dkt. 325 at 2-9. Qualcomm cannot take the position that it has been prejudiced by fading memories and simultaneously attempt to exclude written documentation of events.


18 McKool 921049v8

Typically, this involves the patentee making affirmative statements to the infringer suggesting

that the patentee has no intention to assert its patent against the infringer. Aukerman, 960 F.2d at

1042 (finding that “[i]n the most common situation, the patentee specifically objects to the

activities currently asserted as infringement in the suit and then does not follow up for years.”).

Here, Qualcomm cannot show any evidence that ParkerVision made any affirmative statements

that it did not intend to assert its patents. In fact, the opposite is true. See Ex. 21. Qualcomm’s

internal emails show that it knew ParkerVision had every intention of protecting its intellectual

property: “[ParkerVision is] trying to capture every possible version of any use” of their device.

Id. Furthermore, Qualcomm knew that ParkerVision intended to fully protect its intellectual

property: “Bottom line is”—Wheatley warned—“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.” Id.

2. Qualcomm cannot demonstrate reliance on a misleading statement.

Qualcomm cannot demonstrate reliance on a misleading statement. Reliance is an

“essential” element “[t]o show reliance, the infringer must have had a relationship or

communication with the plaintiff which lulls the infringer into a sense of security.” Aukerman,

960 F.2d at 1042. In the absence of such evidence, Qualcomm offers conclusory assertions that it

relied on ParkerVision’s conduct. This is insufficient as a matter of law. See Asics, 974 F.2d at

1309 (reversing summary judgment in favor of the defendant on the basis of equitable estoppel

where “[d]efendants make numerous conclusory assertions that they relied on Meyers’ conduct,

but they have not presented undisputed facts to show that they did.”).

ParkerVision will show, through its experts Dr. Prucnal and Paul Benoit, that by using

ParkerVision’s energy transfer sampling technology, Qualcomm realized enormous gains in

product performance as well as profits. See Ex. 29. Because of the benefits, Qualcomm made a

business decision to infringe. See Ex. 28 (noting legal risk if Qualcomm decided “to go with

[ParkerVision’s] direct conversion technique.”). Qualcomm’s actions do not show that it was

“lulled into a sense of security”—instead, Qualcomm’s actions show willful infringement even

in the face of ParkerVision’s communicated intent to protect and enforce its intellectual property.


19 McKool 921049v8

See discussion in willfulness section, supra.

3. Qualcomm suffered no material prejudice.

Because Qualcomm cannot demonstrate misleading conduct nor reliance, the Court need

not address material prejudice. To demonstrate material prejudice, Qualcomm must show loss of

evidence or change of economic position due to the infringer’s reliance on the misleading

conduct of a patentee. Aukerman, 960 F.2d at 1043. Qualcomm has provided no such evidence.

Rather, it relies on conclusory averments. Ex. 33. As explained supra at Part II.B.4, such

conclusory statements are legally insufficient. Asics, 974 F.2d at 1308. And Qualcomm’s actions

directly contradict any implication that it changed its economic position due to its reliance on

ParkerVision. For example, Qualcomm has maintained its business decision to produce and sell

infringing products during the pendency of this suit.

The Court should conclude that Qualcomm’s equitable estoppel defense is without merit.

D. Qualcomm’s Cannot Meet Its Burden to Overcome Presumption of Validity of the Patents-in-Suit.

Qualcomm contends that the Patents-in-Suit are invalid on the following grounds: (i)

obviousness; (ii) lack of enablement; and (iii) indefiniteness. Issued patents are presumed valid.

As ParkerVision will show at trial, Qualcomm cannot overcome that presumption.

1. Qualcomm cannot meet its burden to prove that any Asserted Claim of the ’551, ’518,’371, or ’342 Patents is invalid as obvious.

Qualcomm argues that Asserted Claims in the Patents-in-Suit are invalid as obvious. Ex.

45 at e.g. ¶¶ 21, 249. As ParkerVision will show at trial, Qualcomm’s claim of obviousness falls

far short of meeting the required clear and convincing standard. See WMS Gaming, 184 F.3d at

1355. To prove obviousness, Qualcomm must prove by clear and convincing evidence that the

subject matter of the Asserted Claims of the Patents-in-Suit “would have been obvious at the

time the invention was made to a person of ordinary skill in the art to which the subject matter of

the invention pertains.” 35 U.S.C. § 103(a). The ultimate determination of obviousness is a legal

conclusion for the Court, based on underlying factual issues addressed by the jury. WMS

Gaming, 184 F.3d at 1355. Those underlying factual issues include: (1) the scope and content of


20 McKool 921049v8

the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed

invention and the prior art; and (4) objective evidence of non-obviousness. Id.

The Federal Circuit has reaffirmed in several recent opinions that the Court and jury must

consider secondary considerations of non-obviousness in determining whether the asserted

patents are obvious. See, e.g., Apple Inc. v. ITC, 2013 U.S. App. LEXIS 16282, *19 (Fed. Cir.

Aug. 7, 2013). The Federal Circuit emphasized that it has “repeatedly held that evidence relating

to all four Graham factors—including objective evidence of secondary considerations—must be

considered before determining whether the claimed invention would have been obvious to one of

skill in the art at the time of invention.” Id. The Federal Circuit continued, finding that exclusion

of evidence related to secondary considerations of non-obviousness “was not harmless” and

“[s]econdary considerations evidence . . . may be the most probative and cogent evidence in the

record.” Id. at *21.

The standard for obviousness involves two steps: (1) construction of the claims by the

court as a matter of law; and (2) a comparison of the construed claims to the prior art. Medichem,

S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003). Proving obviousness requires more than

conclusory statements: “there must be some articulated reasoning with some rational

underpinning to support the legal conclusion of obviousness.” Innogenetics, N.V. v. Abbott Labs.,

512 F.3d 1363, 1373 (Fed. Cir. 2008) (citations and quotations omitted).

Qualcomm cannot meet its burden. Furthermore, ParkerVision will show that the Patents-

in-Suit are nonobvious through two means: first, through the expert testimony of Dr. Prucnal and

David Sorrells, and second, through Qualcomm’s internal emails, which demonstrate Qualcomm

considered energy transfer sampling a significant advance in the state of the art.

a) None of the references identified by the Razavi Report render the Patents-in-Suit obvious.

Qualcomm contends that Asserted Claims in the Patents-in-Suit is invalid as obvious. Ex.

45 (Razavi Report) at e.g. ¶¶ 21, 249. Through its experts, Dr. Prucnal and David Sorrells,

ParkerVision will show that the Patents-in-Suit are non-obvious and that none of the references


21 McKool 921049v8

identified by Dr. Razavi render obvious the Asserted Claims of the Patents-in-Suit. Ex. 46

(Rebuttal Report of Paul Prucnal) at 31-81.

b) Qualcomm’s internal correspondence demonstrates that it considered the Patents-in-Suit a significant advance in the state of the art.

Furthermore, Qualcomm’s internal emails show that Qualcomm considered energy

transfer sampling a revolutionary breakthrough. In this case, evidence of the parties’

negotiations, and in particular Qualcomm’s internal commentary on the merits of ParkerVision’s

inventions and how the Patents-in-Suit differ from the prior art, is a relevant secondary

consideration of non-obviousness. Apple Inc., 2013 U.S. App. LEXIS 16282, *22. Qualcomm’s

internal reactions at the time demonstrate that the differences between the invention and the prior

art were vast. Indeed, the initial difficulty of the engineering department to understand the

invention, followed by a firm conviction that ParkerVision was “doing something different”

reflect the company’s reaction without hindsight bias that may improperly color an obviousness

analysis. Because energy transfer sampling presented a significant advance over available

technology, Qualcomm’s engineers—while excited at the prospect—initially had difficulty

understanding how energy transfer sampling worked. Ex. 47.

Far from obvious, Qualcomm thought the “ParkerVison approach” offered a totally

different solution. Saed Younis and other Qualcomm engineers concluded that “[t]he truth is

Parker Vision have [sic] stumbled on something revolutionary . . . .” Ex. 9. Likewise, Chuck

Wheatley stated in another internal email that, “[a]fter reading all the references provided by

Seyfi, I think PV is doing something different.” See Ex. 1. These were not isolated incidents.

Qualcomm’s Don Schrock wrote to Dr. Irwin Jacobs, Qualcomm’s CEO at the time, regarding

ParkerVision’s technology: “FYI, this is critical technology that we must land based on what we

have seen so far. It offers revolutionary rf versus power performnace [sic] based on early teat

[sic] resuls [sic].” Ex. 48. And Qualcomm’s Prashant Kantak wrote internally that ParkerVision

has “invented a new radio receiver technology that turns the conventional radio receiver design

on its head.” Ex. 49.


22 McKool 921049v8

2. Qualcomm cannot meet its burden to prove that any Asserted Claim is not properly enabled.

Qualcomm contends that Claims 23, 25, 161, 193, 202 of the ‘551 Patent, Claims 1, 27,

82 of the ‘518 Patent, and Claim 2 of the ‘371 Patent are invalid under 35 U.S.C. § 112 for lack

of enablement. Qualcomm bases this challenge on the enablement analysis in the Razavi Report.

Ex. 45 (Razavi Report) at ¶¶ 140-153, 351-353, 514-516. Qualcomm cannot meet its clear and

convincing burden of proof to show lack of enablement. See BJ Servs. Co. v. Halliburton Energy

Servs., Inc., 338 F.3d 1368, 1373 (Fed. Cir. 2003). A patent is enabling so long as the disclosure

permits one with ordinary skill in the art to make and use the invention “without undue

experimentation.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). While enablement is a

question of law, it rests on factual determinations decided by the jury. BJ Servs. Co., 338 F.3d at

1371. To prove non-enablement, Qualcomm carries the burden to come forward with sufficient

evidence to prove by clear and convincing evidence that the description fails to enable any mode

of making and using the invention. Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1070

(Fed. Cir. 2005).

Qualcomm cannot carry its burden to prove non-enablement for three reasons. First,

Qualcomm’s expert applied the legally incorrect test for enablement. Qualcomm’s argument

rests on an analysis of David Sorrells’ technology tutorial testimony, not the patents themselves.

Ex. 45 (Razavi Report) at ¶ 145. Qualcomm contends that the invention is non-enabling because

Sorrells’s presentation, as modified by Dr. Razavi, did not transfer energy in amounts

distinguishable from noise (and interferers) when the harmonic was changed from n = 1 to n = 9,

but no other input conditions or circuit component values were changed. This is the incorrect test

for enablement. Enablement does not require that the invention must be shown to work for all

potential sub-harmonic values at a particular set of input conditions and circuit component

values. Instead, Qualcomm “can carry its burden only by showing that all of the disclosed

alternative modes are insufficient to enable the claims.” See Johns Hopkins Univ. v. Cellpro,

Inc., 152 F.3d 1342, 1361 (Fed. Cir. 1998) (emphasis added). Even if the jury finds that the


23 McKool 921049v8

invention is not enabled at this single set of conditions and values chosen by Dr. Razavi,

Qualcomm still has failed to show by clear and convincing evidence that the invention is not

enabled for “all of the disclosed alternative modes.” Second, the Patents-in-Suit provide

examples operable at the ninth sub-harmonic. Figures 86, 88, 90, and 92 of the ’551 Patent show

example circuits operating at the ninth sub-harmonic. Ex. 50 at 108:56-109:20. Thus, the patents

expressly describe embodiments operating at the ninth sub-harmonic and Dr. Razavi does not

dispute nor address these examples in his report. See Invitrogen, 429 F.3d at 1071. Finally, Dr.

Razavi admits that with “some small modifications” he could make the allegedly non-enabled

circuit he modified work. Ex. 51 at 332:15-21. ParkerVision, through its expert Dr. Prucnal,

demonstrated a circuit operable at the ninth sub-harmonic. Ex. 46 (Prucnal Rebuttal) at 28-30.

Because the parties’ experts agree that those of ordinary skill in the art can make embodiments of

the invention work at the ninth sub-harmonic without undue experimentation, the claims by

definition are enabled. Wands, 858 F.2d at 736.

3. Qualcomm cannot meet its burden to prove that any of the Asserted Claims are indefinite.

Indefiniteness is a legal determination for the Court. BJ Servs. Co., 338 F.3d at 1372. As

the Court noted in its August 26, 2013 Order, when the question of definiteness involves factual

underpinnings, definiteness is amenable to jury resolution. See Dkt. 318 at 8.

Proof of indefiniteness must meet “an exacting standard.” Wellman, Inc. v. Eastman

Chem. Co., 642 F.3d 1355, 1366 (Fed. Cir. 2011). Only claims that cannot be construed—those

claims that are “insolubly ambiguous”—are indefinite. Haemonetics Corp. v. Baxter Healthcare

Corp., 607 F.3d 776, 783 (Fed. Cir. 2010). The burden is on Qualcomm to clearly demonstrate

by clear and convincing evidence that “one of ordinary skill in the relevant art could not discern

the boundaries of the claim based on the claim language, the specification, the prosecution

history, and the knowledge in the relevant art.” Wellman, Inc., 642 F.3d at 1366; see also

Honeywell Int’l, Inc. v. United States, 609 F.3d 1292, 1301 (Fed. Cir. 2010) (“If the meaning of

the claim is discernible, even though the task may be formidable and the conclusion may be one


24 McKool 921049v8

over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid

invalidity on indefiniteness grounds.”). That some claim language may not be precise does not

automatically render a claim invalid. Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d

818, 826 (Fed. Cir. 1984). Indeed, close questions of indefiniteness are properly resolved in

favor of the patentee. See Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1380

(Fed. Cir. 2001). The Court should reject Qualcomm’s argument of indefiniteness because (1)

the term “substantial” does not render Claims 161 and 202 of the ’551 Patent indefinite, and (2)

the term “accurate” does not render Claim 202 of the ’551 Patent and Claim 91 of the ’518

Patent indefinite.

a) The term “substantial” does not render Claims 161 and 202 of the ’551 Patent indefinite.

Qualcomm contends that Claims 161 and 202 of the ’551 Patent are indefinite for using

the phrase “substantial amounts of energy.” Ex. 45 (Razavi Report) at ¶¶ 137-138. The Court

should reject Qualcomm’s argument for three reasons. First, the law is clear that the meaning of

the term “substantial” in a patent claim is readily understandable and is not indefinite. See, e.g.,

Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1359 (Fed. Cir. 2012) (“This court has

repeatedly confirmed that relative terms such as ‘substantially’ do not render patent claims so

unclear as to prevent a person of skill in the art from ascertaining the scope of the claim.”).12

Second, ParkerVision intends to show through its expert Dr. Prucnal that an expert would readily

know the limitations imposed by the claims. See Ex. 46 (Prucnal Rebuttal Report) at 24-25.

Third, the Court has already construed the allegedly indefinite term as a matter of law. In its

Claim Construction Order, this Court construed “substantial amounts of energy” as “energy in

amounts that are distinguishable from noise.” Dkt. 243 at 10 & n.7, 13. Having construed the

allegedly indefinite term as a matter of the law, the Court has already determined that the term

“substantial amounts of energy” is not insolubly ambiguous.

12 See also LNP Eng’g Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1359-60 (Fed. Cir. 2001) (the term “substantially completely wetted” was not indefinite because the intrinsic evidence helped elucidate the term’s meaning); Andrew Corp. v. Gabriel Elecs., Inc., 847 F.2d 819, 821-22 (Fed. Cir. 1988) (the phrase “substantially equal” was not indefinite and adding that “[s]uch usages, . . . have been accepted . . . and upheld by the courts.”).


25 McKool 921049v8

b) The term “accurate” does not render Claim 202 of the ’551 Patent and Claim 91 of the ’518 Patent indefinite.

Likewise, Qualcomm cannot meet the exacting standard required to prove that the term

“accurate voltage reproduction” renders Claim 202 of the ’551 Patent and Claim 91 of the ’518

Patent indefinite The Court should conclude that the claims are readily understood by those of

ordinary skill in the art, and therefore, not indefinite.

ParkerVision will demonstrate that the claims are sufficiently definite for the following

two reasons: first, ParkerVision intends to show through Dr. Prucnal and David Sorrells that

“accurate voltage reproduction” is not insolubly ambiguous and, therefore, that Claim 202 of the

’551 Patent and Claim 91 of the ‘518 Patent are not invalid for indefiniteness. Second,

Qualcomm’s own expert, Dr. Razavi, applied this allegedly indefinite term with no difficulty in

his validity analysis. See Ex. 45 (Razavi Report) at ¶¶ 315-17 (interpreting the phrase

“substantially prevents accurate voltage reproduction of the carrier signal during apertures” to

mean that “the input signal is negatively impacted or distorted during each aperture” and he

contends that several references anticipate this claim limitation). A claim “that is amenable to

construction is not invalid on the ground of indefiniteness.” Energizer Holdings, Inc. v. Int’l

Trade Comm’n, 435 F.3d 1366, 1371 (Fed. Cir. 2006).13

E. ParkerVision Intends To Brief Injunctions At A Later Date.

ParkerVision intends to request an injunction to prevent continued infringement by

Qualcomm. ParkerVision will brief its request for an injunction post-trial.

III. CONCLUSION

For the foregoing reasons, ParkerVision respectfully requests that the Court accept the

above conclusions of law.

13 See also Apple, Inc., v. Samsung Elecs. Co., Case No. 11-CV-01846, 2013 U.S. Dist. LEXIS 13237, at *26 (N.D. Cal. Jan. 29, 2013) (expert’s application of “substantially centered” to accused products supported conclusion that term was not insolubly ambiguous).


September 12, 2013 Respectfully submitted, McKOOL SMITH, P.C. /s/ Douglas A. Cawley Douglas A. Cawley, Lead Attorney Texas State Bar No. 04035500 E-mail: [email protected] Richard A. Kamprath Texas State Bar No.: 24078767 [email protected] Ivan Wang Texas State Bar No.: 24042679 E-mail: [email protected] McKool Smith P.C. 300 Crescent Court, Suite 1500 Dallas, Texas 75201 Telephone: (214) 978-4000 Telecopier: (214) 978-4044 T. Gordon White Texas State Bar No. 21333000 [email protected] Kevin L. Burgess Texas State Bar No. 24006927 [email protected] Josh W. Budwin Texas State Bar No. 24050347 [email protected] Leah Buratti Texas State Bar No. 24064897 [email protected] Mario A. Apreotesi Texas State Bar No. 24080772 [email protected] Kevin Kneupper Texas State Bar No. 24050885 [email protected] James Quigley Texas State Bar No. 24075810 [email protected] 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) [email protected] ATTORNEYS FOR PLAINTIFF PARKERVISION, INC.


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 September 12, 2013. /s/ Leah Buratti Leah Buratti


McKool 922886v1

UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA

JACKSONVILLE DIVISION PARKERVISION, INC., Plaintiff, v. Qualcomm INCORPORATED, Defendant.

Case No. 3:11-cv-719-J-37TEM

EXHIBIT 1 TO PARKERVISION’S TRIAL BRIEF ON ISSUES OF LAW

OUTSIDE ATTORNEYS' EYES ONLY UNDER SEAL - SUBJECT TO PROTECTIVE ORDER - CONTAINS CONFIDENTIAL INFORMATION - TO BE

OPENED ONLY AS DIRECTED BY THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF

FLORIDA

Case 3:11-cv-00719-RBD-TEM Document 334-1 Filed 09/12/13 Page 1 of 1 PageID 13248

McKool 922886v1







FLORIDA


EXHIBIT 34


1


JACKSONVILLE DIVISION

PARKER VISION, INCORPORATED, § § Plaintiff, § § v. § Case No. 3:11-CV-719-J-37-TEM § QUALCOMM, INCORPORATED, § § Defendant, § ____________________________________§ QUALCOMM, INCORPORATED, § § Counterclaim Plaintiff, § § v. § § PARKER VISION, INCORPORATED, § § Counterclaim Defendant. § §

DECLARATION OF DAVID SORRELLS

I. Background and Experience

My name is David Sorrells and I provide this declaration in support of ParkerVision’s

Response to Qualcomm’s Motion to Strike ParkerVision’s Infringement Contentions.

I have over twenty-nine years of research and development experience in radio

frequency, mixed signal, and digital integrated circuits. I have been the chief technical officer of

ParkerVision since 1996 and a director since 1997.

II. Reverse Engineering of QSC6270 and Parker Vision’s Infringement Contentions

During the initial investigation into whether Qualcomm infringed the Patents-in-Suit,

Case 3:11-cv-00719-RBD-TEM Document 165-7 Filed 09/13/12 Page 1 of 12 PageID 6873Case 3:11-cv-00719-RBD-TEM Document 334-34 Filed 09/12/13 Page 2 of 13 PageID 13282

2

Parker Vision gathered as much publically available information regarding Qualcomm’s radio

frequency receiver integrated circuits as possible from sources like Qualcomm’s issued patents,

related papers, product data sheets, technical journal articles, and other publically available

information related to Qualcomm’s radio frequency receiver integrated circuits. Among other

references, I reviewed: (1) A 65nm CMOS SoC with Embedded HSDPA/EDGE

Transceiver, Digital Baseband and Multimedia Processor (published by Qualcomm); (2)

Single-Chip RF CMOS UMTS/EGSM Transceiver with Integrated Receive Diversity and GPS

(published by Qualcomm); (3) A Resistively Degenerated Wide-Band Passive Mixer with Low

Noise Figure and +60dBm IIP2 in .18um CMOS (published by Qualcomm); (4) U.S. Patent

Number 7,826,816 (assigned to Qualcomm); and (5) U.S. Patent Number 7,769,361 (assigned to

Qualcomm). Based on this information, I was able to understand the specifications and

operating characteristics of a host of Qualcomm’s products. This publically available

information was helpful in determining system-level operation and specifications--which is

essential in understanding functionality of an integrated circuit as a whole. Based on

Qualcomm’s publically available information, I was able to determine that many of Qualcomm’s

radio frequency receiver integrated circuits were functionally identical at a system-level.

At the same time, Qualcomm’s publically available information did not contain

transistor-level schematics, parameters, or layouts. While this level of detail is not necessary to

determine the functional or operational similarities of integrated circuits on a system-level, these

details would be required for ParkerVision to create in-depth claim charts in its infringement

contentions. These details cannot be determined by testing the normal operation of an integrated

circuit or by the naked eye.


3

In order to validate and construct its infringement contentions, ParkerVision’s legal

counsel purchased a reverse engineering analysis and report on the QSC6270 integrated circuit

from UBM TechInsights at a cost of approximately $128,000. The UBM TechInsights analysis

and report shows detailed circuit schematics and the circuit layout found in the QSC6270,

specifically the analog and mixed signal receiver circuitry.

III. Rebuttal to Dunworth Declaration

A. Dunworth’s Claim that the Accused Products Contain Different Receiver Circuitry and

Different Circuit Paths

ParkerVision acknowledges that general receiver design requirements are different for

cellular, Bluetooth, and wireless-LAN receivers especially when including the standard related

baseband processor circuitry commonly referred to as “receiver back-end circuitry.”

ParkerVision’s infringement contentions are currently directed to Qualcomm’s cellular receiver

designs, specifically the analog and mixed signal receiver front-end architecture and down-

converter circuitry, i.e., the receiver circuitry for down-converting a carrier signal to a lower

frequency signal including a baseband signal.

By examining Qualcomm’s issued patents, related papers, and other publically available

information pertaining to various Qualcomm integrated circuits, I determined that Qualcomm

uses identical: (1) receiver architectures with respect to our ICs; and (2) receiver down-converter

circuitry in all of its cellular receiver designs.

Both Qualcomm and Mr. Dunworth vaguely allege that most of the accused products do

not make use of the same RF circuit design as that found in the QSC6270. More specifically,


4

Qualcomm argues that GSM high-band, GSM low-band, WCDMA, and WCDMA receivers are

distinct circuit paths and that Parker Vision’s infringement contentions do not apply to each.

As a person having ordinary skill in the art would know, each of these circuit paths

contains an antenna, filters, amplifiers, and down-converters (mixers) among other elements.

The main distinctions between these receivers are not their system-level architecture, rather, it is

the frequency of the carrier signal that is used for transmission and the way the data is embedded

in the carrier signal. A person of ordinary skill in the art would know that there are no

distinctions between these RF front-ends that materially alter the architecture or the functionality

of the RF receiver’s analog and mixed-signal circuit design.

Contrary to Mr. Dunworth’s arguments, both the UBM TechInsights analysis and

ParkerVision’s infringement contentions contain circuit schematics that explicitly show these

five distinct RF front ends that correspond to the five signal paths that he claims are not

analyzed. The infringing down-conversion circuitry of the accused products is contained within

each of the five signal paths. Analyzing the information in the UBM TechInsights report, it can

be shown that all five paths contain identical receiver circuit architectures and down-converter

circuitry with respect to ParkerVision’s ICs. Any minimal circuit variations in each path in the

QSC6270 appear to be mainly due to the different receiver operational frequencies and include

slightly different passive switch sizes/configurations and different local oscillator (LO)

frequencies. These immaterial differences, however, are irrelevant to the Accused

Instrumentalities’ identical functionality with respect to our ICs. These five (5) receiver down-

converter paths are so identical that their outputs are tied together and they share the same output

node and output circuitry:


5


6

(ParkerVision’s Infringement Contentions Exhibit A.1 at page 7; Section of Figure 3.0, UBM

TechInsights Report.) It is important to note that the output circuitry connected to each passive

mixer (down-converter) switching circuitry performs the same function(s) using the same

circuitry and component values as shown by the additional detail below:


7


8

(Figures 3.1 and Section of Figure 3.2, UBM TechInsights Report.) ParkerVision’s infringement

contentions thus apply to at least one of the five receiver signal paths and their associated

circuitry.

B. Dunworth’s Claim that the Accused Products Contain Different Down-Conversion

Circuitry

The pertinent issue in this case is the functionality of the down-conversion circuitry in the

front end of Qualcomm’s radio frequency receivers. Qualcomm and Mr. Dunworth claim that

this circuitry in the QSC6270 integrated circuit is different than that found in many of the

accused products because the QSC6270 operates in “current mode” while an unidentified

number within the accused products operate in “voltage mode.”

ParkerVision’s energy sampling invention requires that energy be transferred at an

aliasing rate and can be implemented independent of whether the circuit is operated in current

mode or voltage mode. Additionally, some of ParkerVision’s asserted claims are directed

towards the input and output impedances required to transfer the desired amount of power:

(ParkerVision Infringement Contentions Exhibit A.1 at 14.) The ratio of these input and output

impedances determine whether a circuit should be classified as operating in a voltage mode or

current mode. Thus, ParkerVision’s claims cover the amount of energy transferred and are

independent of the operational mode and Mr. Dunworth’s distinction between voltage mode and


9

current mode has no bearing on whether Qualcomm’s Accused Instrumentalities infringe the

Patents-in-Suit.

C. Dunworth’s Claim that the Capacitor and Differential Capacitor at the Output Node of

the Mixers in QSC6270 is not Present in Many of the Accused Products

Mr. Dunworth first claims that the Patents-in-Suit require a capacitor at the output node

of the Mixer (down-converter) and that this capacitor is not present in many of the accused

products. ParkerVision’s disclosure, claims, and infringement contentions clearly describe that a

storage module can be comprised of passive circuitry, such as a capacitor or inductor, or active

circuitry, such as an operational amplifier integrator/filter, or a combination of all of the above.

(See ParkerVision’s Infringement Contentions Exhibit A.1 at pages 3, 5, 17.) Based on the

analysis of Qualcomm’s publically available documentation and the UBM TechInsights analysis,

each of the accused products contains a storage module as described in the Patents-in-Suit.

Mr. Dunworth also claims that the Patents-in-Suit require a differential capacitor between

the output nodes of the mixer (down-converter) and that this capacitor is not present in many of

the accused products. As discussed above, ParkerVision’s disclosure, claims, and infringement

contentions clearly describe that a storage module can be comprised of passive circuitry, such as

a capacitor or inductor, or active circuitry, such as an operational amplifier integrator/filter, or a

combination of all of the above. In Qualcomm’s patents and conference papers, Qualcomm

consistently depicts differential storage-element circuitry which is identical to that found in the

QSC6270 with respect to ParkerVision’s ICs:


10

(ParkerVision’s Infringement Contentions Exhibit A.1 at page 5.) Additionally, the differential

outputs of each down-converter will be coupled on the substrate of the integrated circuit, as

shown in the layout, in order to reduce noise. Based on the analysis of Qualcomm’s publically

available documentation and the UBM TechInsights analysis, each of the accused products

contains a storage module as described in the Patents-in-Suit.

D. Dunworth’s Claim that Many Accused Products Do Not Use the Same Duty Cycle as

the QSC6270

ParkerVision’s disclosure, claims, and infringement contentions explicitly encompass

different duty cycles and aperture widths. Many of ParkerVision’s claims detail the amount of

energy transferred during all or a portion of a half cycle of a carrier signal. Both 25% and 50%

duty cycle implementations as well as a wide range of duty cycles are expressly contemplated.

(See ParkerVision’s Infringement Contentions Exhibit A.1 at pages 16, 18.)

Q Differential Storage Element Circuitry

I Differential Storage Element Circuitry


11

E. Dunworth’s Claim that the RGR1000 Does Not Enable Direct Down-Conversion

While Mr. Dunworth’s claim that the RGR1000 does not enable direct down-conversion

may be true, Claim 1 of the ‘551 patent expressly contemplates “A method for down-converting

a carrier signal to a lower frequency signal comprising the steps of…” Additionally, Claim 62 of

the ‘551 patent states “The method of claim 1, wherein step (3) comprises the step of generating

an intermediate frequency signal from the transferred energy.” Therefore, down-conversion to

an intermediate frequency (IF) before conversion to baseband, which Mr. Dunworth claims the

RGR1000 is able to do, is explicitly contemplated in the Patents-in-Suit.

I declare under penalty of perjury under the laws of the United States of America that the

foregoing is true and correct.


12

Signed this 13 day of September, 2012.

__________________________________________ David Sorrells


EXHIBIT 35


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Qualcomm Samples Single-Chip Solutions for Low-Cost CDMA2000 HandsetsMore than Five Leading Manufacturers Already Developing Devices

LAS VEGAS – April 05, 2006 – Qualcomm Incorporated (Nasdaq: QCOM), a leading developer and innovator of

Code Division Multiple Access (CDMA) and other advanced wireless technologies, today announced the

sampling of its first-generation Qualcomm Single Chip™ (QSC™) solutions, the QSC6010™, QSC6020™ and

QSC6030™ products for CDMA2000® 1X networks, with more than five leading device manufacturers already

receiving shipments of the solutions and developing designs. These solutions deliver significant size, cost,

performance, talk-time and time-to-market benefits for entry-level CDMA2000 handsets. The Company also today

defined its previously announced second generation of QSC products, the QSC6055™ and QSC6065™

solutions, to address multi-band RF and simultaneous-GPS requirements. The second generation of QSC

solutions features 65 nanometer (nm) process technology, multiple network capacity-enhancing features,

optimized power consumption and extended multimedia, as well as enhanced navigation and position-location

capabilities.

The first mobile handset models based on first-generation QSC solutions are expected to launch by the fourth

quarter of 2006. The second generation of QSC solutions, including the QSC6055 from the Value Platform and

the QSC6065 from the Multimedia Platform, are expected to sample in the fourth quarter of 2006.

“Our first QSC products are enabling manufacturers to develop compelling handsets for Qualcomm’s very

important entry-level and mainstream CDMA2000 markets,” said Brian Rodrigues, senior director of product

management for Qualcomm CDMA Technologies. “With the announcement of the newly defined QSC6055 and

QSC6065 solutions, our handset manufacturer partners will now also be able to bring these single-chip solutions

to extended markets, including North America.”

Qualcomm’s QSC solutions are the industry’s first to integrate a CDMA2000 1X radio transceiver, baseband

modem, power management device and multimedia engines into a single chip. By dramatically reducing the

number of required discrete components and board-area savings in excess of 40 percent, manufacturers can

offer smaller and sleeker designs at lower cost. The QSC6010, QSC6020 and QSC6030 single-chip solutions

from the Company’s Value Platform offer cost-effective voice and data capabilities with basic multimedia. The

new QSC6055 and QSC6065 solutions expand the QSC family, bringing to market two new pin- and software

API-compatible configurations with additional features.

Capabilities of the first generation of QSC solutions will be showcased at CTIA 2006 in Qualcomm’s Booth

#2047, Hall C4/C5. For more information on the QSC family of single-chip solutions, visit

www.cdmatech.com/singlechip.

Qualcomm Incorporated (www.qualcomm.com) is a leader in developing and delivering innovative digital wireless

communications products and services based on CDMA and other advanced technologies. Headquartered in

San Diego, Calif., Qualcomm is included in the S&P 500 Index and is a 2005 FORTUNE 500® company traded

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EXHIBIT 36


McKool 922886v1







FLORIDA


EXHIBIT 39


(12) United States Patent

(54)

Sorrells et al.

APPARATUS AND METHOD FOR DOWN-CONVERTING ELECTROMAGNETIC SIGNALS BY CONTROLLED CHARGING AND DISCHARGING OF A CAPACITOR

(75) Inventors: David F. Sorrells, Middleburg, FL (US); Michael J. Bultman, Jacksonville, FL (US); Robert W. Cook, Switzerland, FL (US); Richard C. Looke, Jacksonville, FL (US); Charley D. Moses, Jr., Jacksonville, FL (US); Gregory S. Rawlins, Heathrow, FL (US); Michael W. Rawlins, Lake Mary, FL (US)

(73)

( * )

(21)

(22)

(65)

Assignee: ParkerVision, Inc., Jacksonville, FL

Notice:

(US)

Subject to any disclaimer, the term of this patent is extended or adjusted under 35 U.S.c. 154(b) by 1273 days.

This patent is subject to a tenninal disclaimer.

Appl. No.: 10/961,342

Filed: Oct. 12, 2004

Prior Publication Data

US 2007/0293182 Al Dec. 20, 2007

Related U.S. Application Data

(60) Division of application No. 09/855,851, filed on May 16,2001, now Pat. No. 7,010,286, which is a continuation-in-part of application No. 09/550,644, filed on Apr. 14,2000, now Pat. No. 7,515,896.

(60) Provisional application No. 60/204,796, filed on May 16, 2000, provisional application No. 60/213,363, filed on Jun. 21, 2000, provisional application No. 60/272,043, filed on Mar. 1,2001.

(51) Int. Cl. H04B 1126 (2006.01)

(52) U.S. Cl. ........................ 455/323; 455/333; 455/334 (58) Field of Classification Search ................. 455/313,

455/323,334,318,316,319,325,333,339, 455/340-341,130, 197.2,203,262,265,

455/284,287,326; 327/356-360 See application file for complete search history.

111111 1111111111111111111111111111111111111111111111111111111111111 US00782240 1 B2

(10) Patent No.: US 7,822,401 B2 *Oct. 26, 2010 (45) Date of Patent:

(56)

DE

References Cited

U.S. PATENT DOCUMENTS

2,057,613 A 10/1936 Gardner

(Continued)

FOREIGN PATENT DOCUMENTS

1936252 111971

(Continued)

OTHER PUBLICATIONS

Gaudiosi, J., "Retailers will bundle Microsoft's Xbox with games and peripherals," Video Store Magazine, vol. 23, Issue 36, p. 8, 2 pages (Sep. 2-8, 2001). English-language Translation of German Patent Publication No. DT 1936252, translation provided by TransperfectTranslations, 12 pages (Jan. 28, 1971-Date of publication of application).

(Continued)

Primary Examiner-Pablo N Tran (74) Attorney, Agent, or Firm-Sterne, Kessler, Goldstein & Fox P.L.L.c.

(57) ABSTRACT

Methods, systems, and apparatuses for down-converting and up-converting an electromagnetic signal. In embodiments, the invention operates by receiving an electromagnetic signal and recursively operating on approximate half cycles of a carrier signal. The recursive operations can be perfonned at a sub-hannonic rate of the carrier signal. The invention accumulates the results of the recursive operations and uses the accumulated results to fonn a down-converted signal. In embodiments, up-conversion is accomplished by controlling a switch with an oscillating signal, the frequency of the oscillating signal being selected as a sub-harmonic of the desired output frequency. When the invention is being used in the frequency modulation or phase modulation implementations, the oscillating signal is modulated by an infonnation signal before it causes the switch to gate a bias signal. The output of the switch is filtered, and the desired harmonic is output.

8 Claims, 94 Drawing Sheets

1620 1622

OUTPut(-)


EXHIBIT 40


(12) United States Patent Sorrells et al.

(54) METHOD AND SYSTEM FOR DOWN-CONVERTING AND ELECTROMAGNETIC SIGNAL, AND TRANSFORMS FOR SAME

(75) Inventors: David F. Sorrells, Middleburg, FL (US); Michael J. Bultman, Jacksonville, FL (US); Robert W. Cook, Switzerland, FL (US); Richard C. Looke, Jacksonville, FL (US); Charley D. Moses, Jr., DeBary, FL (US); Gregory S. Rawlins, Heathrow, FL (US); Michael W. Rawlins, Lake Mary, FL (US)

(73) Assignee: ParkerVision, Inc., Jacksonville, FL (US)

( *) Notice: Subject to any disclaimer, the term of this patent is extended or adjusted under 35 U.S.c. 154(b) by 592 days.


(21) Appl. No.: 11/390,153

(22) Filed:

(65)

Mar. 28, 2006


(63)

(60)

(51)

US 2006/0198474 Al Sep.7,2006


Continuation of application No. 09/550,642, filed on Apr. 14, 2000, now Pat. No. 7,065,162, which is a continuation-in-part of application No. 09/521,878, filed on Mar. 9, 2000, now abandoned. Provisional application No. 601129,839, filed on Apr. 16, 1999, provisional application No. 601158,047, filed on Oct. 7, 1999, provisional application No. 601171,349, filed on Dec. 21, 1999, provisional application No. 601171,496, filed on Dec. 22,1999, provisional application No. 601180,667, filed on Feb. 7, 2000, provisional application No. 601177,705, filed on Jan. 24, 2000, provisional application No. 601177,702, filed on Jan. 24, 2000, provisional application No. 601171,502, filed on Dec. 22,1999.

Int. Cl. H03D 1100 H04L 27106

(2006.01) (2006.01)

BASEBAND Q ANALOG

OR DIGITAL WAVEFORMS

111111 1111111111111111111111111111111111111111111111111111111111111 US007724845B2

(10) Patent No.: US 7,724,845 B2 *May 25, 2010 (45) Date of Patent:

(52) U.S. Cl. ....................................... 375/343; 375/324 (58) Field of Classification Search ................. 375/324,

(56)

DE

375/343 See application file for complete search history.

References Cited


2,057,613 A 10/1936 Gardner

(Continued)


1936252 111971

(Continued)

OTHER PUBLICATIONS

English-language Abstract of Japanese Patent Publication No. JP 58-031622, data supplied by ep.espacenet.com, 1 page. (Feb. 24, 1983-Date of publication of application).

(Continued)

Primary Examiner-Curtis B Odom (74) Attorney, Agent, or Firm-Sterne Kessler Goldstein & Fox, P.L.L.c.

(57) ABSTRACT

Methods, systems, and apparatuses, and combinations and sub-combinations thereof, for down-converting an electromagnetic (EM) signal are described herein. Briefly stated, in embodiments the invention operates by receiving an EM signal and recursively operating on approximate half cycles (1f2, 11h, 21h, etc.) of the carrier signal. The recursive operations can be performed at a sub-hannonic rate of the carrier signal. The invention accumulates the results of the recursive operations and uses the accumulated results to fonn a down-converted signal. In an embodiment, the EM signal is downconverted to an intermediate frequency (IF) signal. In another embodiment, the EM signal is down-converted to a baseband information signal. In another embodiment, the EM signal is a frequency modulated (FM) signal, which is down-converted to anon -FM signal, such as a phase modulated (PM) signal or an amplitude modulated (AM) signal.


!OPTIONAl! BANDPASS

PIMA COHBIh~R O. RECOfIl~~~TION III'TIONAl!

0',90',180' ACTIVE OR

PASSIVE

FIlTER


EXHIBIT 41



(54) METHOD AND SYSTEM FOR DOWN-CONVERTING AN ELECTROMAGNETIC SIGNAL, AND TRANSFORMS FOR SAME, AND APERTURE RELATIONSHIPS

(75)

(73)

( * )

Inventors: David F. Sorrells, Jacksonville, FL (US); Michael J. Bultman, Jacksonville, FL (US); Robert W. Cook, Switzerland, FL (US); Richard C. Looke, Jacksonville, FL (US); Charley D. Moses, Jr., Jacksonville, FL (US); Gregory S. Rawlins, Lake Mary, FL (US); Michael W. Rawlins, Lake Mary, FL (US)

Assignee: ParkerVision, Inc., Jacksonville, FL

Notice:

(US)

Subject to any disclaimer, the term of this patent is extended or adjusted under 35 U.S.c. 154(b) by ° days.


(21) Appl. No.: 09/550,644

(22) Filed: Apr. 14, 2000


(63) Continuation-in-part of application No. 09/521,879, filed on Mar. 9,2000, now abandoned, and a continuation-in-part of application No. 09/293,342, filed on Apr. 16, 1999, now Pat. No. 6,687,493, which is a continuation-in-part of application No. 091176,022, filed on Oct. 21,1998, now Pat. No. 6,061,551.

(51) Int. Cl. H03L 7108 (2006.01)

(52) U.S. Cl. ....................................... 455/313; 375/343 (58) Field of Classification Search ................. 455/313,

4551118,323,131,130,350,76,260,191.1, 455/91,182.1,112; 3271113; 375/130, 152,

375/142,143,150,316,343 See application file for complete search history.

111111 1111111111111111111111111111111111111111111111111111111111111 US007515896Bl

(10) Patent No.: US 7,515,896 Bl * Apr. 7,2009 (45) Date of Patent:

(56)

DE

References Cited


2,057,613 A 10/1936 Gardner ......................... 250/8

(Continued)


1936252 111971

(Continued)

OTHER PUBLICATIONS

Aghvami, H. et ai., "Land Mobile Satellites Using the Highly Elliptic Orbits- The UK T-SAT Mobile Payload," Fourth International Conference on Satellite Systems for Mobile Communications and Navigation, IEE, pp. 147-153 (Oct. 17-19, 1988).

(Continued)

Primary Examiner-Sam Bhattacharya (74) Attorney, Agent, or Firm-Sterne Kessler Goldstein & Fox, p.l.l.c.

(57) ABSTRACT

Methods, systems, and apparatuses, and combinations and sub-combinations thereof, for down-converting an electromagnetic (EM) signal are described herein. Briefly stated, in embodiments the invention operates by receiving an EM signal and recursively operating on approximate half cycles (1f2, 11h, 21h, etc.) of the carrier signal. The recursive operations can be performed at a sub-hannonic rate of the carrier signal. The invention accumulates the results of the recursive operations and uses the accumulated results to fonn a down-converted signal. In an embodiment, the EM signal is downconverted to an intermediate frequency (IF) signal. In another embodiment, the EM signal is down-converted to a baseband information signal. In another embodiment, the EM signal is a frequency modulated (FM) signal, which is down-converted to anon -FM signal, such as a phase modulated (PM) signal or an amplitude modulated (AM) signal.


14810

14810

14830

,14900

14901~4906 14904 TA

Si'tl~ So dt SOItI

T UItIJ,t.TAI

Si It-TI


EXHIBIT 42



(54) DOWN-CONVERTING ELECTROMAGNETIC SIGNALS, INCLUDING CONTROLLED DISCHARGE OF CAPACITORS

(75) Inventors: David F. Sorrells, Middleburg, FL (US); Michael J. Bultman, Jacksonville, FL (US); Robert W. Cook, Switzerland, FL (US); Richard C. Looke, Jacksonville, FL (US); Charley D. Moses, Jr., DeBary, FL (US); Gregory S. Rawlins, Heathrow, FL (US); Michael W. Rawlins, Lake Mary, FL (US)

(73) Assignee: Parkervision, Inc., Jacksonville, FL (US)

( *) Notice: Subject to any disclaimer, the term of this patent is extended or adjusted under 35 U.S.c. 154(b) by 868 days.

(21) Appl. No.: 10/972,133

(22) Filed: Oct. 25, 2004

(65)

(60)

(60)

(51)

(52)


US 2005/0085208 Al Apr. 21, 2005


Division of application No. 09/855,851, filed on May 16,2001, now Pat. No. 7,010,286, which is a continuation-in-part of application No. 09/550,644, filed on Apr. 14,2000.

Provisional application No. 60/272,043, filed on Mar. 1,2001, provisional application No. 60/213,363, filed on Jun. 21, 2000, provisional application No. 60/204, 796, filed on May 16,2000.

Int. Cl. H04B 1126 (2006.01) U.S. Cl. ....................... 455/313; 455/323; 455/334;

455/318; 327/356; 327/357; 327/358; 327/359; 327/360

111111 1111111111111111111111111111111111111111111111111111111111111 US007496342B2

(10) Patent No.: US 7,496,342 B2 Feb. 24,2009 (45) Date of Patent:

(58) Field of Classification Search ................. 455/313,

(56)

DE

455/323,334,318; 327/356,357,358,359, 327/360

See application file for complete search history.

References Cited


2,057,613 A 10/1936 Gardner

(Continued)


1936252 111971

(Continued)

OTHER PUBLICATIONS

English-language Abstract of Japanese Patent Publication No. JP 58-031622, data supplied by ep.espacenet.com, 1 page (Feb. 24, 1983-Date of publication of application).

(Continued)

Primary Examiner-Sanh D Phu (74) Attorney, Agent, or Firm-Sterne, Kessler, Goldstein & Fox P.L.L.c.

(57) ABSTRACT

Methods, systems, and apparatuses, for down-converting and up-converting an electromagnetic signal. In embodiments the invention operates by receiving an EM signal and recursively operating on approximate half cycles of the carrier signal. The recursive operations can be performed at a sub-harmonic rate of the carrier signal. The invention accumulates the results of the recursive operations and uses the accumulated results to form a down-converted signal. In embodiments, up-conversion is accomplished by controlling a switch with an oscillating signal, the frequency of the oscillating signal being selected as a sub-harmonic of the desired output frequency. When the invention is being used in the frequency modulation or phase modulation implementations, the oscillating signal is modulated by an information signal before it causes the switch to gate the bias signal. The output of the switch is filtered, and the desired harmonic is output.


1620 1622

OUiPUT(-)


EXHIBIT 43


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EXHIBIT 44


September 9, 2013

ParkerVision, Inc. v. Qualcomm Incorporated Civil Action No. 3:11-cv-719-J-37-TEM

Dear Josh:

I am responding to your recent e-mails about ParkerVision’s production of documents relating to its new chip. You have acknowledged that ParkerVision has had documents ready for production for the last several days, but is unilaterally refusing to produce them. That is improper. Unlike documents regarding a recent Qualcomm product that has never been accused of infringement, these documents are necessary to refute ParkerVision’s affirmative assertions in this case. We expect production of these documents immediately and reserve all rights to pursue appropriate action for ParkerVision’s deliberate delay in producing them.

Very truly yours,

James E. Canning

Joshua Budwin, Esq. McKool Smith, P.C. 300 West Sixth Street

Suite 1700 Austin, TX 78701

BY ELECTRONIC MAIL

212-474-1070


McKool 922886v1







FLORIDA


EXHIBIT 50


United States Patent [19]

Sorrells et ai.

[54] METHOD AND SYSTEM FOR DOWNCONVERTING ELECTROMAGNETIC SIGNALS

[75] Inventors: David F. Sorrells; Michael J. Bultman, both of Jacksonville; Robert W. Cook, Switzerland; Richard C. Looke; Charley D. Moses, Jr., both of Jacksonville, all of Fla.

[73] Assignee: Parkervision, Inc., Jacksonville, Fla.

[21] Appl. No.: 09/176,022

[22] Filed: Oct. 21, 1998

[51] Int. CI? ..................................................... HOlQ 11/12 [52] U.S. CI. .......................... 455/118; 455/313; 455/323;

455/324 [58] Field of Search ..................................... 455/131, 139,

455/142,182.1,202,205,313,317,318, 323, 118, 113, 324; 329/345, 347; 327/9,

91; 702/66, 70

[56] References Cited

Re.35,494 Re.35,829 2,057,613 2,241,078 2,270,385 2,283,575 2,358,152 2,410,350 2,451,430 2,462,069 2,462,181 2,472,798 2,497,859 2,499,279 2,802,208 2,985,875 3,023,309 3,069,679 3,104,393 3,114,106 3,118,117


4/1997 Nicollini ................................. 327/554 6/1998 Sanderford, Jr ......................... 375/200

10/1936 Gardner ...................................... 250/8 5/1941 Vreeland ................................... 179/15 1/1942 Skillman ................................... 179/15 5/1942 Roberts ....................................... 250/6 9/1944 Earp ..................................... 179/171.5

10/1946 Labin et al. ... ... ... ... ... .... ... ... ..... 179/15 10/1948 Barone ........................................ 250/8 2/1949 Chatterjea et al. ....................... 250/17 2/1949 Grosselfinger ............................ 250/17 6/1949 Fredendall ................................ 178/44 2/1950 Boughtwood et al. ..................... 250/8 2/1950 Peterson .................................... 332/41 8/1957 Hobbs ..................................... 343/176 5/1961 Grisdale et al. ........................ 343/100 2/1962 Foulkes ..................................... 250/17

12/1962 Sweeney et al. ....................... 343/200 9/1963 Vogelman ............................... 343/200

12/1963 McManus ................................. 325/56 1/1964 King et al. ................................ 332/22

(List continued on next page.)

CONVENTIONAL 1104 RECEIVER

1101,

LO 1110a

111111 1111111111111111111111111111111111111111111111111111111111111 US006061551A

[11] Patent Number:

[45] Date of Patent:

6,061,551 May 9, 2000


0035 166 A1 0193899 B1 0380351 A2

2/1981 European Pat. Off ........... H04B 1/26 9/1986 European Pat. Off ........... GOlS 7/52 8/1990 European Pat. Off ........ H03H 17/04


OTHER PUBLICATIONS

Akers, N.P. et aI., "RF sampling gates: a brief review," lEE Proceedings-A, vol. 133, Part A, No.1, Jan. 1986, pp. 45-49. Faulkner, Neil D. and Mestre, Enric Vilar, "Subharmonic Sampling for the Measurement of Short-term Stability of Microwave Oscillators," IEEE Transactions on Instrumentation and measurement, vol. IM-32, No.1, Mar. 1983, pp. 208-213. Itakura, T., "Effects of the sampling pulse width on the frequency characteristics of a sample-and-hold circuit," lEE Proceedings-Circuits, Devices and Systems, Aug. 1994, vol. 141, No.4, pp. 328-336.


Primary Examiner---noris H. To Assistant Examiner~am Bhattacharya Attorney, Agent, or Firm~terne, Kessler, Goldstein & Fox P.L.L.c.

[57] ABSTRACT

Methods, systems, and apparatuses for down-converting an electromagnetic (EM) signal by aliasing the EM signal are described herein. Briefly stated, such methods, systems, and apparatuses operate by receiving an EM signal and an aliasing signal having an aliasing rate. The EM signal is aliased according to the aliasing signal to down-convert the EM signal. The term aliasing, as used herein, refers to both down-converting an EM signal by under-sampling the EM signal at an aliasing rate, and down-converting an EM signal by transferring energy from the EM signal at the aliasing rate. In an embodiment, the EM signal is down-converted to an intermediate frequency (IF) signal. In another embodiment, the EM signal is down-converted to a demodulated baseband information signal. In another embodiment, the EM signal is a frequency modulated (FM) signal, which is down-converted to a non-FM signal, such as a phase modulated (PM) signal or an amplitude modulated (AM) signal.


LO 1110n


6,061,551 107

In FIG. 82A, when switch 8206 is closed, the impedance looking into circuit 8202 is substantially the impedance of storage module illustrated as the storage capacitance 8208, in parallel with the impedance of the load 8212. When the switch 8206 is open, the impedance at point 8214 approaches infinity. It follows that the average impedance at point 8214 can be varied from the impedance of the storage module illustrated as the storage capacitance 8208, in parallel with the load 8212, to the highest obtainable impedance when switch 8206 is open, by varying the ratio of the time that switch 8206 is open to the time switch 8206 is closed. Since the switch 8206 is controlled by the energy transfer signal 8210, the impedance at point 8214 can be varied by controlling the aperture width of the energy transfer signal, in conjunction with the aliasing rate.

An example method of altering the energy transfer signal 6306 of FIG. 63 is now described with reference to FIG. 71, where the circuit 7102 receives the input oscillating signal 7106 and outputs a pulse train shown as doubler output signal 7104. The circuit 7102 can be used to generate the energy transfer signal 6306. Example waveforms of 7104 are shown on FIG. 72B.

It can be shown that by varying the delay of the signal propagated by the inverter 7108, the width of the pulses in the doubler output signal 7104 can be varied. Increasing the delay of the signal propagated by inverter 7108, increases the width of the pulses. The signal propagated by inverter 7108 can be delayed by introducing a RIC low pass network in the output of inverter 7108. Other means of altering the delay of the signal propagated by inverter 7108 will be well known to those skilled in the art.

As can now be readily seen from this disclosure; many of the aperture circuits presented, and others, can be modified in the manner described above (e.g. circuits in FIGS. 68 H-K). Modification or selection of the aperture can be done at the design level to remain a fixed value in the circuit, or in an alternative embodiment, may be dynamically adjusted

108 example circuit in FIG. 85A can be included in the energy transfer signal module 6902. Alternate implementations will be apparent to persons skilled in the relevant art(s) based on the teachings contained herein. Alternate implementations

5 fall within the scope and spirit of the present invention. In this embodiment a state-machine is used as an example.

In the example of FIG. 85A, a state machine 8504 reads an analog to digital converter, AID 8502, and controls a digital to analog converter, DAC 8506. In an embodiment,

10 the state machine 8504 includes 2 memory locations, Previous and Current, to store and recall the results of reading AID 8502. In an embodiment, the state machine 8504 utilizes at least one memory flag.

The DAC 8506 controls an input to a voltage controlled oscillator, VCO 8508. VCO 8508 controls a frequency input

15 of a pulse generator 8510, which, in an embodiment, is substantially similar to the pulse generator shown in FIG. 681. The pulse generator 8510 generates energy transfer signal 6306.

In an embodiment, the state machine 8504 operates in 20 accordance with a state machine flowchart 8519 in FIG.

85B. The result of this operation is to modify the frequency and phase relationship between the energy transfer signal 6306 and the EM signal 1304, to substantially maintain the amplitude of the down-converted signal 1308B at an opti-

25 mum level. The amplitude of the down-converted signal 1308B can

be made to vary with the amplitude of the energy transfer signal 6306. In an embodiment where the switch module 6502 is a FET is shown in FIG. 66A, wherein the gate 6604

30 receives the energy transfer signal 6306, the amplitude of the energy transfer signal 6306 can determine the "on" resistance of the FET, which affects the amplitude of the downconverted signal 1308B. The energy transfer signal module 6902, as shown in FIG. 85C, can be an analog circuit that

35 enables an automatic gain control function. Alternate implementations will be apparent to persons skilled in the relevant art(s) based on the teachings contained herein. Alternate implementations fall within the scope and spirit of the to compensate for, or address, various design goals such as

receiving RF signals with enhanced efficiency that are in distinctively different bands of operation, e.g. RF signals at 40

900 MHz and 1.8 GHz.

present invention. 5.9 Other Implementations

The implementations described above are provided for purposes of illustration. These implementations are not intended to limit the invention. Alternate implementations, differing slightly or substantially from those described

5.7 Adding a Bypass Network In an embodiment of the invention, a bypass network is

added to improve the efficiency of the energy transfer module. For example, referring to FIG. 95 a bypass network 9502 (shown in this instance as capacitor 9512), is shown bypassing switch module 9504. In this embodiment the bypass network increases the efficiency of the energy trans-

45 herein, will be apparent to persons skilled in the relevant art(s) based on the teachings contained herein. Such alternate implementations fall within the scope and spirit of the present invention.

fer module when, for example, less than optimal aperture widths were chosen for a given input frequency on the 50

energy transfer signal 9506. The bypass network 9502 could be of different configurations than shown in FIG. 95. Such

6. Example Energy Transfer Downconverters Example implementations are described below for illus

trative purposes. The invention is not limited to these examples.

an alternate is illustrated in FIG. 90. 5.8 Modifying the Energy Transfer Signal Utilizing Feedback

FIG. 86 is a schematic diagram of an exemplary circuit to down convert a 915 MHz signal to a 5 MHz signal using a

55 101.1 MHz clock. FIG. 69 shows an embodiment of a system 6901 which

uses down-converted Signal 1308B as feedback 6906 to control various characteristics of the energy transfer module 6304 to modify the down-converted signal 1308B.

Generally, the amplitude of the down-converted signal 60

1308B varies as a function of the frequency and phase differences between the EM signal 1304 and the energy transfer signal 6306. In an embodiment, the down-converted signal 1308B is used as the feedback 6906 to control the frequency and phase relationship between the EM signal 65

1304 and the energy transfer signal 6306. This can be accomplished using the example logic in FIG. 85A. The

FIG. 87 shows example simulation waveforms for the circuit of FIG. 86. Waveform 8602 is the input to the circuit showing the distortions caused by the switch closure. Waveform 8604 is the unfiltered output at the storage unit. Waveform 8606 is the impedance matched output of the downconverter on a different time scale.

FIG. 88 is a schematic diagram of an exemplary circuit to downconvert a 915 MHz signal to a 5 MHz signal using a 101.1 MHz clock. The circuit has additional tank circuitry to improve conversion efficiency.

FIG. 89 shows example simulation waveforms for the circuit of FIG. 88. Waveform 8802 is the input to the circuit


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6,061,551 109

showing the distortions caused by the switch closure. Waveform 8804 is the unfiltered output at the storage unit. Waveform 8806 is the output of the downconverter after the impedance match circuit.

110 within a given area. The technique employed allows the system to be configured as a separate transmitter-receiver pair or a transceiver.

FIG. 90 is a schematic diagram of an exemplary circuit to 5

downconvert a 915 MHz signal to a 5 MHz signal using a 101.1 MHz clock. The circuit has switch bypass circuitry to improve conversion efficiency.

The basic objectives of the present system is to provide a new communication technique that can be applied to both narrow and wide band systems. In its most robust form, all of the advantages of wide band communications are an inherent part of the system and the invention does not require complicated and costly circuitry as found in conventional wide band designs. The communications system utilizes coherent signals to send and receive information and consists of a transmitter and a receiver in its simplest form. The receiver contains circuitry to turn its radio frequency input on and off in a known relationship in time to the transmitted signal. This is accomplished by allowing the transmitter timing oscillator and the receiver timing oscillator to operate at different but known frequencies to create a known slew rate between the oscillators. If the slew rate is

FIG. 91 shows example simulation waveforms for the circuit of FIG. 90. Waveform 9002 is the input to the circuit 10

showing the distortions caused by the switch closure. Waveform 9004 is the unfiltered output at the storage unit. Waveform 9006 is the output of the downconverter after the impedance match circuit.

FIG. 92 shows a schematic of the example circuit in FIG. 15

86 connected to an FSK source that alternates between 913 and 917 MHz, at abaud rate of 500 Kbaud. FIG. 93 shows the original FSK waveform 9202 and the downconverted waveform 9204 at the output of the load impedance match small compared to the timing oscillator frequencies, the circuit. IV. Additional Embodiments

Additional aspects/embodiments of the invention are considered in this section.

In one embodiment of the present invention there is provided a method of transmitting information between a transmitter and a receiver comprising the steps of transmitting a first series of signals each having a known period from the transmitter at a known first repetition rate; sampling by the receiver each signal in the first series of signals a single time and for a known time interval the sampling of the first series of signals being at a second repetition rate that is a rate different from the first repetition rate by a known amount; and generating by the receiver an output signal indicative of the signal levels sampled in step B and having a period longer than the known period of a transmitted signal.

In another embodiment of the invention there is provided a communication system comprising a transmitter means for transmitting a first series of signals of known period at a known first repetition rate, a receiver means for receiving the first series of signals, the receiver means including sampling means for sampling the signal level of each signal first series of signals for a known time interval at a known second repetition rate, the second repetition rate being different from the first repetition rate by a known amount as established by the receiver means. The receiver means includes first circuit means for generating a first receiver output signal indicative of the signal levels sampled and having a period longer than one signal of the first series of signals. The transmitter means includes an oscillator for generating an oscillator output signal at the first repetition rate, switch means for receiving the oscillator output signal and for selectively passing the oscillator output signal, waveform generating means for receiving the oscillator output signal for generating a waveform generator output signal having a time domain and frequency domain established by the waveform generating means.

The embodiment of the invention described herein involves a single or multi-user communications system that utilizes coherent signals to enhance the system performance over conventional radio frequency schemes while reducing cost and complexity. The design allows direct conversion of radio frequencies into baseband components for processing and provides a high level of rejection for signals that are not related to a known or controlled slew rate between the transmitter and receiver timing oscillators. The system can be designed to take advantage of broadband techniques that further increase its reliability and permit a high user density

20 transmitted waveform will appear stable in time, i.e., coherent (moving at the known slew rate) to the receiver's switched input. The transmitted waveform is the only waveform that will appear stable in time to the receiver and thus the receiver's input can be averaged to achieve the desired

25 level filtering of unwanted signals. This methodology makes the system extremely selective without complicated filters and complex encoding and decoding schemes and allows the direct conversion of radio frequency energy from an antenna or cable to baseband frequencies with a minimum number of

30 standard components further reducing cost and complexity. The transmitted waveform can be a constant carrier (narrowband), a controlled pulse (wideband and ultrawideband) or a combination of both such as a dampened sinusoidal wave and or any arbitrary periodic waveform thus

35 the system can be designed to meet virtually any bandwidth requirement. Simple standard modulation and demodulation techniques such as AM and Pulse Width Modulation can be easily applied to the system.

Depending on the system requirements such as the rate of 40 information transfer, the process gain, and the intended use,

there are multiple preferred embodiments of the invention. The embodiment discussed herein will be the amplitude and pulse width modulated system. It is one of the simplest implementations of the technology and has many common

45 components with the subsequent systems. A amplitude modulated transmitter consists of a Transmitter Timing Oscillator, a Multiplier, a Waveform Generator, and an Optional Amplifier. The Transmitter Timing Oscillator frequency can be determined by a number of resonate circuits

50 including an inductor and capacitor, a ceramic resonator, a SAW resonator, or a crystal. The output waveform is sinusoidal, although a squarewave oscillator would produce identical system performance.

The Multiplier component multiplies the Transmitter 55 Timing Oscillator output signal by 0 or 1 or other constants,

K1 and K2, to switch the oscillator output on and off to the Waveform Generator. In this embodiment, the information input can be digital data or analog data in the form of pulse width modulation. The Multiplier allows the Transmitter

60 Timing Oscillator output to be present at the Waveform Generator input when the information input is above a predetermined value. In this state the transmitter will produce an output waveform. When the information input is below a predetermined value, there is no input to the

65 Waveform Generator and thus there will be no transmitter output waveform. The output of the Waveform Generator determines the system's bandwidth in the frequency domain


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McKool 922886v1







FLORIDA
