in the united states district court for the … trial demanded ... defendant/counterclaim-plaintiff...

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

JACKSONVILLE DIVISION

PARKERVISION, INC.,

Plaintiff,

v. APPLE INC. and QUALCOMM INCORPORATED

Defendants.

Case No. 3:15-cv-1477-BJD-JRK JURY TRIAL DEMANDED

DEFENDANT APPLE INC.’S ANSWER AND COUNTERCLAIMS TO PLAINTIFF

PARKERVISION, INC.’S AMENDED COMPLAINT Defendant/Counterclaim-Plaintiff Apple Inc. hereby answers Plaintiff/Counterclaim-

Defendant ParkerVision, Inc.’s Amended Complaint (“Complaint”) as follows:

ANSWER

THE PARTIES

1. Apple lacks sufficient knowledge or information on which to admit or deny the

allegations of paragraph 1 of the Complaint and on that basis denies them.

2. Apple admits the allegations contained in paragraph 2 of the Complaint.


4. Apple lacks knowledge or information sufficient to form a belief about the truth

of the allegations contained in paragraph 4 of the Complaint, and on that basis denies them.


of the allegations contained in paragraph 5 of the Complaint, and therefore denies the same.



Case 3:15-cv-01477-BJD-JRK Document 97 Filed 03/26/18 of 23 PageID 4558

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NATURE OF THE ACTION

11. Apple admits that ParkerVision’s Complaint purports to bring a civil action for

patent infringement under the patent laws of the United States, 35 U.S.C. § 1, et seq. Apple

admits that the sole remaining patent-in-suit is U.S. Patent No. 9,118,528 (“the ‘528 Patent”),

entitled “Method and System For Down-Converting an Electromagnetic Signal, and Transforms

For Same, and Aperture Relationships.” Apple denies that the patents-in-suit include U.S. Patent

Nos. 6,879,817 (“the ‘817 Patent); 7,929,638 (“the ‘638 Patent”); and 8,571,135 (“the ‘135

Patent”). Pursuant to a motion filed on March 16, 2018, the parties have jointly moved to dismiss

the ‘817 Patent, ‘683 Patent, and ‘135 Patent from the case. Apple admits that copies of the ‘817,

‘638, ‘135, and ‘528 Patents were attached as Exhibits 1 through 4, respectively, to the

Complaint, filed on December 14, 2015.



13. Apple admits that ParkerVision litigated ParkerVision v. Qualcomm, No. 11-719

(M.D. Fla. July 20, 2011) (“ParkerVision I”) and that Qualcomm prevailed both in the district court

and at the Federal Circuit. Apple admits that ParkerVision sued Qualcomm, Samsung, and others in


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ParkerVision v. Qualcomm, et al., No. 14-687 (M.D. Fla. May 2, 2014) (“ParkerVision II”). Apple

admits that the Patent-in-Suit in this action is not the same as the patents-in-suit in ParkerVision I

and ParkerVision II, but denies that the Patent-in-Suit in this action describes or claims inventions

that are patentably distinct from those in ParkerVision I and ParkerVision II. Apple denies any

remaining allegations contained in paragraph 13 of the Complaint.

JURISDICTION AND VENUE


15. Apple denies the allegations contained in paragraph 15 of the Complaint, but for

purposes of this litigation only, does not assert lack of personal jurisdiction as a defense to this

action.



17. Apple denies that the Samsung Defendants are parties to this action. Apple

otherwise lacks knowledge or information sufficient to form a belief about the truth of the

allegations contained in paragraph 17 of the Complaint, and on that basis denies them.

18. Apple denies that the LG Defendants are parties to this action. Apple lacks

knowledge or information sufficient to form a belief about the truth of the allegations contained

in paragraph 18 of the Complaint, and on that basis denies them.

19. Apple denies the allegations contained in paragraph 19 of the Complaint.


COUNT I

21. Apple incorporates by reference the responses contained in paragraphs 1 through

20 above.


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22. Apple denies that the ‘817 patent remains asserted in this action, and therefore, a

response to this allegation is not required. Apple otherwise denies that the ‘817 patent is valid

and infringed by Apple and denies any remaining allegations of this paragraph.




















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31. Apple denies that the ‘817 patent remains asserted in this action, and that

Samsung is a Defendant, and therefore, a response to this allegation is not required. Apple

otherwise denies that the ‘817 patent is valid and infringed by Apple and denies any remaining

allegations of this paragraph.









34. Apple denies that the ‘817 patent remains asserted in this action, and that LG is a

Defendant, and therefore, a response to this allegation is not required. Apple otherwise denies

that the ‘817 patent is valid and infringed by Apple and denies any remaining allegations of this

paragraph.


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paragraph.




paragraph.


COUNT II


37 above.











7























8






















paragraph.


9




paragraph.




paragraph.


COUNT III


57 above.











10
























11












paragraph.




paragraph.




paragraph.



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COUNT IV


74 above.


77. Apple admits that it provides devices with radio frequency (“RF”) receivers,

transceivers, and/or other semiconductors that enable wireless technology. Apple denies the

remaining allegations contained in paragraph 77 of the Complaint.


79. Apple admits that what purport to be claim charts were attached to the Complaint

as Exhibits 30-32. Apple denies that any Apple product infringes any valid claims of the ‘528

Patent. Apple denies any remaining allegations contained in paragraph 79 of the Complaint.











85. Apple denies that Samsung is a Defendant, and therefore, a response to this

allegation is not required. Apple otherwise lacks knowledge or information sufficient to form a


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belief about the truth of the allegations contained in paragraph 85 of the Complaint, and on that

basis denies them.




basis denies them.




basis denies them.

88. Apple denies that LG is a Defendant, and therefore, a response to this allegation is

not required. Apple otherwise lacks knowledge or information sufficient to form a belief about

the truth of the allegations contained in paragraph 88 of the Complaint, and on that basis denies

them.




them.




them.



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RESPONSE TO PARKERVISION’S PRAYER FOR RELIEF

Apple denies that ParkerVision is entitled to any relief requested in its Prayer for Relief,

either as prayed or otherwise. To the extent that ParkerVision’s Prayer for Relief may be deemed

to allege any facts, Apple denies each and every allegation.

AFFIRMATIVE DEFENSES

Apple reserves the right to amend its Answer, including by asserting additional defenses

as discovery progresses. Without altering any applicable burdens of proof, Apple alleges the

following affirmative defenses:

FIRST DEFENSE – FAILURE TO STATE A CLAIM

92. ParkerVision’s Complaint fails to state a claim upon which relief can be granted.

SECOND DEFENSE – NONINFRINGEMENT OF THE ‘528 PATENT

93. Apple has not infringed, and currently does not infringe, any valid claim of the

‘528 Patent directly, indirectly, contributorily, by inducement, under the doctrine of equivalents,

or in any other manner. The Apple products identified by ParkerVision as allegedly

incorporating the Qualcomm WTR1625 and/or WTR3925 transceivers, and any other Qualcomm

device that is capable of down-converting a higher frequency signal into a lower frequency

signal, and any other Apple product alleged to incorporate such Qualcomm devices, do not

infringe.

94. Any and all products or actions of Apple accused of infringement have substantial

uses that do not infringe and do not contribute to the alleged infringement of the claims of the

‘528 Patent.


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THIRD DEFENSE – INVALIDITY OF THE ‘528 PATENT

95. The claims of the ‘528 Patent are invalid for failure to comply with one or more

provisions of patentability, including those set forth in 35 U.S.C. §§ 101, 102, 103, and 112, by

way of example as explained below.

96. The claims of the ‘528 Patent are invalid under pre-AIA 35 U.S.C. §§ 102 and

103 because they are anticipated, or rendered obvious, by prior art, at least including U.S. Patent

No. 6,240,000 to Tayloe (“Tayloe”) and “The Merigo Method: SSB Generator/Producing a

Demodulator” by Yasuo Nozawa (“Nozawa”). Tayloe has a priority date of October 15, 1998,

and is prior art to all claims of the ‘528 Patent under 35 U.S.C. § 102(e) (pre-AIA). Like the ‘528

Patent, Tayloe discloses an apparatus that receives an I/Q modulated oscillating voltage and

downconverts it using four frequency down-conversion modules, followed by two subtractor

modules. Nozawa was published in 1993 and is prior art to all claims of the ‘528 Patent under at

least 35 U.S.C. §§ 102(a) and/or 102(b) (pre-AIA). Like the ‘528 Patent, the Nozawa receiver

also receives an I/Q modulated oscillating voltage. The Nozawa receiver consists of a

transformer at the input, followed by switches that are driven by 25% local oscillator signals, and

then the switches connect to capacitors, so that when each switch turns on, it delivers energy

from the input RF signal to the capacitors. Each capacitor is connected to a 1.3 kilo-ohm resistor,

going to a virtual ground. When the corresponding switch turns off, the voltage on the capacitor

begins to discharge through that 1.3 kilo-ohm resistor. The claims of the ‘528 Patent are

anticipated by, or obvious in light of, at least Tayloe and Nozawa.

97. The claims of the ‘528 Patent are also invalid under pre-AIA 35 U.S.C. § 112 at

least because they are indefinite. For example, independent claim 1 is an indefinite “hybrid”

claim because it is directed to both an apparatus and a method of using that apparatus. Claim


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language directed to both an apparatus and a method of using that apparatus renders a claim

indefinite under section 112, paragraph 2, because so-called hybrid claims create uncertainty as

to whether infringement requires using the apparatus in the manner recited in the claims, or

whether mere making or selling of the claimed apparatus constitutes infringement.

FOURTH DEFENSE – LIMITATION ON DAMAGES

98. ParkerVision is barred or limited in recovery, in whole or in part, by 35 U.S.C. §§

286, 287, and 28 U.S.C. § 1498.

FIFTH DEFENSE – PATENT EXHAUSTION / DOUBLE RECOVERY

99. ParkerVision is barred from recovering monetary damages and other relief from

Apple under the doctrines of patent exhaustion and under the prohibition of double recovery

from manufacturers and their customers. ParkerVision accuses Apple’s products of infringement

based on their inclusion of Qualcomm devices. To the extent that Apple purchased such devices

from Qualcomm, and ParkerVision may obtain any monetary damages or other relief from

Qualcomm, any claim for relief for Apple’s allegedly infringing conduct is barred. Qualcomm is

a party to this action, and ParkerVision cannot recover from Apple based on infringement

occurring in Qualcomm devices.

SIXTH DEFENSE – PROSECUTION HISTORY ESTOPPEL

100. ParkerVision is estopped from construing any claim of the Patent-in-Suit to be

infringed or have been infringed, either literally or under the doctrine of equivalents, by any

method or product manufactured, used, imported, sold or offered for sale by Apple in view of the

prior art and because of admissions and statements ParkerVision made to the USPTO during

prosecution of the applications leading to the issuance of the Patent-in-Suit.


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SEVENTH DEFENSE – EQUITABLE ESTOPPEL AND/OR WAIVER

101. ParkerVision’s claims against Apple with respect to the Patent-in-Suit are barred

by equitable estoppel, laches, and/or waiver.

EIGHTH DEFENSE – COLLATERAL ESTOPPEL AND/OR RES JUDICATA

102. ParkerVision’s claims against Apple with respect to the Patent-in-Suit are barred

by collateral estoppel and/or res judicata as a result of ParkerVision I.

RESERVATION OF RIGHTS

Apple reserves all other affirmative defenses pursuant to Rule 8(c) of the Federal Rules

of Civil Procedure, the Patent Laws of the United States, and any other defenses, at law or in

equity, that now exist or in the future may be available based on discovery and further factual

investigation in the case.

PRAYER FOR RELIEF

WHEREFORE, Apple respectfully requests that this Court enter a Judgment and Order

dismissing the Complaint, and:

A. Declaring that all asserted claims of the Patent-in-Suit are invalid, not infringed,

and/or unenforceable;

B. Finding that this case is an exceptional case pursuant to 35 U.S.C. § 285 or

otherwise, and awarding Apple its costs, together with reasonable attorneys’ fees and all of its

expenses for defending this suit; and

C. Awarding Apple any such other costs and further relief as the Court may deem

just and proper.


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COUNTERCLAIMS

Defendant/Counterclaim-Plaintiff Apple, Inc. (“Apple”), for its Counterclaims against

Plaintiff/Counterclaim-Defendant ParkerVision, Inc. (“ParkerVision”), upon knowledge as to

matters relating to itself and upon information and belief as to all other matters, alleges as

follows:

PARTIES

1. Apple, Inc. is a California corporation with its principal place of business at 1

Infinite Loop, Cupertino, California 95014.

2. ParkerVision is a Florida Corporation with its principal place of business at 7915

Baymeadows Way, Jacksonville, Florida 32256.

JURISDICTION AND VENUE

3. This Court has jurisdiction and venue over these counterclaims pursuant to 28

U.S.C. §§ 1331, 1332, 1338(a), 1367, 1391, 1400(b), 2201, and 2202.

4. Apple seeks, inter alia, declaratory relief pursuant to 28 U.S.C. §§ 2201 through

2202 and Rule 57 of the Federal Rules of Civil Procedure.

5. ParkerVision is a resident of the State of Florida and, by filing this action, has

submitted to this Court’s exercise of personal jurisdiction.

BACKGROUND

6. On December 16, 2015, ParkerVision filed its Amended Complaint against Apple

Inc., Qualcomm Incorporated, Samsung Electronics Co., Ltd., Samsung Electronics America,

Inc., Samsung Telecommunications America, LLC, Samsung Semiconductor, Inc., LG

Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics Mobilecomm U.S.A., Inc.


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ParkerVision asserted infringement of the following U.S. Patents: U.S. Patent Nos. (1)

6,879,817; (2) 7,929,638; (3) 8,571,135; (4) 9,118,528.

7. This is the third of four cases that ParkerVision has filed against Apple’s supplier

Qualcomm. First, ParkerVision asserted eight patents in ParkerVision v. Qualcomm, No. 11-719

(M.D. Fla. July 20, 2011) (“ParkerVision I”), in which Qualcomm prevailed both in the district

court and at the Federal Circuit. ParkerVision then sued Qualcomm, Samsung, and others in

ParkerVision v. Qualcomm, et al., No. 14-687 (M.D. Fla. May 2, 2014) (“ParkerVision II”),

originally asserting eleven patents. ParkerVision dismissed six patents from that action, which is

currently stayed pending the Federal Circuit’s decision in ParkerVision’s appeal of the Patent

Trial and Appeal Board’s decision invalidating certain claims of another ParkerVision patent.

Third, ParkerVision filed the present litigation (“ParkerVision III”). And fourth, ParkerVision

filed a complaint with the International Trade Commission against Qualcomm, Apple, and others

in Certain RF Capable Integrated Circuits and Products Containing the Same, Inv. No. 337-TA-

982 (“ParkerVision IV”). After the Staff of the ITC issued a pre-trial brief calling into question

ParkerVision’s claims, and after a highly unfavorable evidentiary ruling by the Administrative

Law Judge, ParkerVision withdrew its ITC complaint in its entirety on the eve of trial.

8. On August 10, 2016, the Court issued an Order granting dismissal of the Samsung

Defendants from this Case. On July 31, 2017, the Court issued an Order granting dismissal of the

LG Defendants from this Case.

9. On March 16, 2018, Apple, Qualcomm, and ParkerVision filed a joint motion to

dismiss the ‘817, ‘638, and ‘135 Patents from this Case.

10. The sole remaining patent in this case is the ‘528 Patent. This patent purports to

disclose a concept called “energy transfer sampling,” which is the same underlying concept as in


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the patents ParkerVision previously asserted unsuccessfully against Apple’s supplier Qualcomm.

The ‘528 Patent does not describe or enable any technology useful for CDMA, WCDMA, or

LTE devices. The ‘528 Patent does not describe, enable, or claim down-conversion using a

double-balanced mixer.

11. The ‘528 Patent describes and claims I/Q embodiments of ParkerVision’s alleged

down-conversion invention. But the use of I/Q down-converters was well known to those of

ordinary skill in the art prior to ParkerVision’s alleged invention. The only embodiments of I/Q

down-converters described in the ‘528 Patent uses the inverted gate configuration, wherein the

input signal is first coupled to a series capacitor followed by a switch to ground or other

reference potential.

12. Prior to the filing of the complaint in this action, ParkerVision was on notice that

the Qualcomm accused devices do not perform ParkerVision’s energy transfer sampling.

ParkerVision has no basis to assert that any of the accused Apple products incorporating the

accused Qualcomm products, including the WTR1625 and WTR3925, infringe any claim of the

‘528 Patent.

FIRST COUNTERCLAIM

(Declaration of Non-Infringement of U.S. Patent No. 9,118,528)

13. Apple incorporates by reference paragraphs 1 through 12 above as though full

stated herein.

14. ParkerVision claims to be owner of all right, title, and interest in the ‘528 Patent.

15. ParkerVision has accused Apple of infringement of the ‘528 Patent and has

created a substantial, immediate, and real controversy between the parties as to the infringement

of the ‘528 Patent.


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16. Apple, including the iPhone 6 smartphone, iPhone 6S smartphone, and iPad Air

tablet, has not infringed, and currently does not infringe, any valid claim of the ‘528 Patent

directly, indirectly, contributorily, by inducement, under the doctrine of equivalents, or in any

other manner, and ParkerVision is entitled to no relief for any claim of alleged infringement.

SECOND COUNTERCLAIM

(Declaration of Invalidity of U.S. Patent No. 9,118,528)

17. Apple incorporates by reference paragraphs 1 through 16 above as though full

stated herein.

18. ParkerVision contends that the asserted claims of the ‘528 Patent are valid and

has created a substantial, immediate, and real controversy between the parties as to the invalidity

of the asserted claims of the ‘528 Patent.

19. Each asserted claim of the ‘528 Patent is invalid for failure to comply with one or

more provisions of 35 U.S.C. §§ 101, 102, 103, and 112, and ParkerVision is entitled to no relief

for any claim relating to their alleged validity.

PRAYER FOR RELIEF

WHEREFORE, Apple respectfully requests that this Court enter a Judgement and Order:

A. Declaring that all asserted claims of the Patents-in-Suit are invalid, not infringed,

and/or unenforceable;

B. Finding that this case is an exceptional case pursuant to 35 U.S.C. § 285 or

otherwise, and awarding Apple its costs, together with reasonable attorneys’ fees and all of its

expenses for defending this suit; and

C. Awarding Apple any such other costs and further relief as the Court may deem

just and proper.


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JURY DEMAND

Pursuant to Federal Rule of Civil Procedure 38(b), Apple demands trial by jury on all

issues so triable as to the Counterclaims and Affirmative Defenses.

Dated: March 26, 2018 Respectfully submitted,

/s/ Edward Soto Edward Soto Florida Bar Number: 265144 [email protected] WEIL, GOTSHAL & MANGES LLP 1395 Brickell Ave, Suite 1200 Miami, FL 33131 Phone: (305) 577-3177 Fax: (305) 374-7159

Brian E. Ferguson – Trial Counsel (admitted pro hac vice) Robert T. Vlasis (admitted pro hac vice) WEIL, GOTSHAL & MANGES LLP 2001 M Street NW Suite 600 Washington, D.C. 20036 Tel. (202) 682-7000 Fax. (202) 857-0940

Counsel for Apple Inc.


Certificate of Service I certify that on March 26, 2018, I electronically filed the foregoing with the Clerk of the Court by using the CM/ECF system. I further certify that I mailed the foregoing document and the notice of electronic filing by first-class mail to the following non- CM/ECF participants: None. By: Edward Soto 1 Edward Soto (Bar No. 265144) [email protected] Counsel for Defendant Apple Inc.


in the united states district court for the … trial demanded ... defendant/counterclaim-plaintiff...

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