UNITED STATES DISTRICT COURT THE MIDDLE … · THE MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION PARKERVISION, INC., ... Carnegie Mellon Univ. v. Marvell Tech. Grp., ...

UNITED STATES DISTRICT COURT THE MIDDLE DISTRICT OF FLORIDA

JACKSONVILLE DIVISION

PARKERVISION, INC.,

Plaintiff,

v. Case No. 3:11-cv-719-J-37-TEM QUALCOMM INCORPORATED,

Defendant.

QUALCOMM’S MOTION FOR PARTIAL SUMMARY JUDGMENT AND

ACCOMPANYING MEMORANDUM OF LAW

REDACTED VERSION

Case 3:11-cv-00719-RBD-TEM Document 270 Filed 05/22/13 Page 1 of 32 PageID 8961

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TABLE OF CONTENTS

Page

Request for Oral Argument ......................................................................................................... 1

I. Introduction ...................................................................................................................... 1

II. Factual Background and Procedural History .............................................................. 3

A. Qualcomm and Its Subsidiaries Independently Developed Their Own Direct Downconversion Technology. ..................................................... 3

1. In the late 1990s, direct downconversion technology was well-known but had limitations preventing widespread implementation in cell phones. ............................................................ 3

2. In 1998, ParkerVision approached Qualcomm, saying that it had developed a direct-to-digital product that could replace Qualcomm’s existing downconversion technology. ........... 4

3. ParkerVision ultimately could not demonstrate working technology for cell phones, and the discussions ended in mid-1999. ................................................................................................. 5

4. By 2002, Qualcomm independently developed and implemented its “ZIF” direct downconversion technology, which ParkerVision concedes does not infringe. .............................. 7

5. In the mid-2000s, Qualcomm purchased Berkana and soon thereafter began incorporating Berkana’s noninfringing direct downconversion technology into Qualcomm’s chipsets. ................................................................................................... 8

B. ParkerVision Decides that Its Most Promising Business Strategy is Litigation and Initiates This Case. .................................................................... 9

III. Argument ........................................................................................................................ 11

A. ParkerVision Has Failed to Offer Any Evidence—or Even Contentions—that the Atheros Products Infringe Any of the Patents-in-Suit. .................................................................................................. 12

1. ParkerVision failed to submit the expert testimony required to prove infringement. ........................................................ 12

2. ParkerVision has failed to submit any other evidence to support a claim of infringement as to the Atheros products. ................................................................................................ 14

B. Qualcomm Is Entitled to Summary Judgment of No Pre-Suit Indirect Infringement for Four of the Six Asserted Patents. ....................... 14


TABLE OF CONTENTS (cont.)

Page

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1. To prevail on indirect infringement, ParkerVision must prove that Qualcomm had knowledge of the asserted patents. .................................................................................................. 14

2. ParkerVision cannot show that Qualcomm had pre-suit knowledge of four of the six asserted patents. ................................ 15

3. ParkerVision’s other evidence does not raise a triable issue of fact. .................................................................................................... 17

4. Because Qualcomm lacked pre-suit knowledge, the Court should grant partial summary judgment of no pre-suit indirect infringement. .......................................................................... 19

C. Qualcomm is Entitled to Summary Judgment that Its 50% Duty Cycle Products Do Not Infringe the Patents-in-Suit. ................................... 20

1. All asserted claims require discharge of energy from a storage device. ...................................................................................... 20

2. Dr. Prucnal has admitted that products which employ a 50% duty cycle do not discharge energy from a storage device. .................................................................................................... 22

3. Qualcomm’s 50% duty cycle products do not discharge energy from a storage device. ............................................................ 23

IV. Conclusion ...................................................................................................................... 25


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TABLE OF AUTHORITIES

Page(s) CASES

Apeldyn Corp. v. AU Optronics Corp., 831 F. Supp. 2d 817 (D. Del. 2011)............................................................................................18

AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320 (Fed. Cir. 2007) ..................................................................................................12

Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476 (1964) ...................................................................................................................15

Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., 888 F.Supp.2d 637 (W.D. Pa. 2012) ..........................................................................................12

Celotex Corp. v. Catrett, 477 U.S. 317 (1986) ...................................................................................................................11

Centricut LLC v. Esab Grp., Inc., 390 F.3d 1361 (Fed. Cir. 2004) ..................................................................................................12

Chalumeau Power Sys. LLC v. Alcatel-Lucent, No. 11-1175-RGA, 2012 WL 6968938 (D. Del. July 18, 2012) ....................................................19

DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) ..................................................................................................15

Fujitsu Ltd. v. Netgear, Inc., 620 F.3d 1321 (Fed. Cir. 2010) ..................................................................................................15

Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011) ..........................................................................................................15, 18

Intellect Wireless Inc. v. Sharp Corp., 10 C 6763, 2012 WL 787051 (N.D. Ill. Mar. 9, 2012) .................................................................15

Josendis v. Wall to Wall Residence Repairs, Inc., 662 F.3d 1292 (11th Cir. 2011) ..................................................................................................11

Lantech Inc. v. Keip Mach. Co., 32 F.3d 542 (Fed. Cir. 1993) ......................................................................................................12

McRee v. Goldman, 11-CV-00991-LHK, 2012 WL 3745190 (N.D. Cal. Aug. 28, 2012) .......................................17, 18


TABLE OF AUTHORITIES

Page

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Network Protection Sciences, LLC v. Fortinet, Inc., Case No. C 12-01106 WHA (N.D. Cal. May 9, 2013) ....................................................................... 2

Pacing Techs., LLC v. Garmin Int’l, Inc., 12-CV-1067, 2013 WL 444642 (S.D. Cal. Feb. 5, 2013) ........................................................15, 19

Proveris Scientific Corp. v. Innovasystems, Inc., 536 F.3d 1256 (Fed. Cir. 2008) ........................................................................................................... 12

Ultra-Tex Surfaces Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360 (Fed. Cir. 2000) ........................................................................................................... 12

Vasudevan Software, Inc. v. TIBCO Software Inc., No. C 11-6638 RS, 2012 WL 1831543 (N.D. Cal. May 18, 2012) ............................................. 17, 18

Zamora Radio, LLC v. Last.FM, Ltd., 758 F. Supp. 2d 1242 (S.D. Fla. 2010) ............................................................................................... 16

STATUTES

35 U.S.C. § 271(b), (c) ......................................................................................................................... 14, 17

OTHER AUTHORITIES

Fed. R. Civ. P. 56(a) .................................................................................................................................. 11

Local Rule 3.01(j) ........................................................................................................................................ 1


Qualcomm respectfully moves for partial summary judgment of

noninfringement on the three grounds described below and submits this brief in support of its

motion.

Request for Oral Argument

Pursuant to Local Rule 3.01(j), Qualcomm respectfully requests oral argument on

its Motion so that the parties may present their respective positions. Qualcomm estimates that a

hearing time of two hours will be sufficient for oral argument.

I. Introduction

In 1998, ParkerVision came to Qualcomm with ambitious claims about its

technology, contending that it could perform universal “direct downconversion” of cellular

telephone signals. Qualcomm was intrigued, and even hopeful. Although direct

downconversion was relatively easy to perform in simple wireless applications, doing it in

cellular was another matter altogether. Qualcomm offered to pay ParkerVision for the

technology—if ParkerVision could show it worked in cellular CDMA applications.

ParkerVision was never able to make that showing and then withdrew from the discussions. In

1999, Qualcomm and ParkerVision went their separate ways.

Qualcomm continued its independent research and development efforts, and

ultimately developed its own direct downconversion technology. Qualcomm’s technology

worked for cellular and indisputably does not infringe ParkerVision’s patents. Then in late

2005, Qualcomm acquired a promising start-up, Berkana, that had also developed its own direct

downconversion technology independently from ParkerVision. Qualcomm incorporated the

technology it acquired from Berkana into its own products. The direct downconversion

technologies that Qualcomm and Berkana developed are each very different from the


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technology claimed in the patents that issued to ParkerVision, patents that are invalid and/or

exceedingly narrow in scope.

Nevertheless, in 2011, ParkerVision filed this case against Qualcomm. While

ParkerVision’s case could have been presented efficiently, it has not been. Instead, ParkerVision

is accusing 71 Qualcomm products of infringing 86 claims of six patents. As another District

Court recently recognized, ParkerVision’s approach imposes a “bone-crushing burden” on

defendants even though the plaintiff knows that it is not feasible to present more than a handful

of claims to a jury—especially with technology as complicated as that involved here.1

Despite continuing to assert scores of claims against numerous accused products,

ParkerVision has failed to present any evidence to carry its burden of proof on infringement as

to whole categories of accused products and legal theories. Qualcomm now moves for

summary judgment on three such issues:

Qualcomm is entitled to summary judgment of non-infringement as to all products designed and sold by a company that Qualcomm acquired in 2011, Atheros Communications. ParkerVision has not submitted the expert testimony—or any other evidence—required to support its claim that any Atheros products infringe the Patents-in-Suit.

Qualcomm is also entitled to summary judgment on ParkerVision’s assertion that Qualcomm indirectly infringed four of the six Patents-in-Suit before ParkerVision sued, because ParkerVision presents no evidence that Qualcomm had pre-suit knowledge of any of those patents.

Finally, Qualcomm seeks summary judgment because ParkerVision’s expert has admitted that he cannot prove that the forty-nine “50% Duty Cycle” products ParkerVision accuses of infringement practice each element of the asserted claims.

1 Network Protection Sciences, LLC v. Fortinet, Inc., Case No. C 12-01106 WHA (N.D. Cal. May 9, 2013)

(“NPS imposed upon Fortinet a bone-crushing burden of conducting a prior art search for more than fifty patent claims”); (“It is impractical for either side to present fifteen claims at trial”); and (“Successful patent plaintiffs almost always present only one, two or three claims to a jury.”).


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Accordingly, Qualcomm requests that the Court enter partial summary judgment in

Qualcomm’s favor.

II. Factual Background and Procedural History

A. Qualcomm and Its Subsidiaries Independently Developed Their Own Direct Downconversion Technology.

1. In the late 1990s, direct downconversion technology was well-known but had limitations preventing widespread implementation in cell phones.

This case addresses the downconversion functionality in a wireless receiver. To

send information wirelessly, a transmitter must send a high-frequency signal that can travel

over the air, using the information to “modulate” the high-frequency signal before

transmission. (Ex. 1, ¶¶ 42-45.) To recover the information, a device receiving the high-

frequency signal must “downconvert” the signal by removing the high-frequency components.

(Ex. 1, ¶¶ 46-47.)

Engineers face difficult tradeoffs when designing downconversion components

for receivers. During the 1990s, most cell phone receiver chips used a “superheterodyne”

receiver architecture, which requires two stages of mixing to downconvert the signal from a

high-frequency to an intermediate frequency and then to the low-frequency, “baseband” signal.

(Ex. 1, ¶¶ 68-69.) In each stage, the receiver mixes the existing signal with a signal created by a

circuit within the receiver called a “local oscillator.” (Id.) Although the superheterodyne

receiver’s multiple stages required complex circuitry involving many components, its

outstanding performance characteristics met the rigorous specifications for cell phones.

Engineers have also known about direct downconversion circuits since the 1920s.

(Ex. 1, ¶¶ 70-71.) Although direct downconversion technology had advanced greatly by the late

1990s, it still suffered from implementation problems that limited its adoption in cell phones.


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(Ex. 1, ¶ 72.) One barrier preventing widespread adoption in cell phones was the local

oscillator. Using a traditional mixer for direct downconversion requires a local oscillator

operating at the same high frequency as the carrier signal. Using techniques existing at the

time, however, operating a local oscillator at that frequency presented numerous challenges to

meeting cell phone specifications.

2. In 1998, ParkerVision approached Qualcomm, saying that it had developed a direct-to-digital product that could replace Qualcomm’s existing downconversion technology.

ParkerVision approached Qualcomm in 1998 asserting that it had created a

downconversion component radically different from mixers. (Ex. 2 at PV00184626.)

ParkerVision claimed that its direct-to-digital (“D2D”) product made three leaps over existing

technology.

First, ParkerVision claimed that its D2D product would eliminate nearly all of

the complex circuitry required by superheterodyne receivers, and thus reduce costs. As a

Qualcomm employee noted, ParkerVision “[c]laims to eliminate all the IF stages.” (Ex. 3 at

QCPV001389987.)

Second, ParkerVision claimed that it had made a “universal” downconversion

device. Different cell phone standards and service providers operate on different frequency

bands. ParkerVision asserted that “D2D can be used to create the core for a universal receiver

solution” in which one set of hardware could be used to downconvert signals across the various

frequency bands. (Ex. 4 at 6; see also id. at 9 (D2D has wideband capability that “coupled with a

single low frequency, low power clock, allows for single or multi-band operation making it an

excellent solution for applications requiring 900 MHz, 1.9 GHz, and/or 2.5 GHz operation”)

(emphasis added).)


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Third, ParkerVision claimed to have discovered a way to avoid the limitations

associated with existing local oscillators that had created a roadblock preventing widespread

implementation of direct downconversion. As ParkerVision stated in an August 1998

presentation:

While “direct conversion” is known to all RF designers, its drawbacks are known as well. Generating a high level oscillator at the receive frequency is but one of the problems inherent with the implementations tried in the past that have ended up in the dustbin.

(Id. at 3.) ParkerVision allegedly sidestepped that problem by using a “low frequency, low

power clock input,” instead of a “high-level local oscillator at the receive frequency.” (Id. at 3.)

ParkerVision said that its D2D technology had “[n]o internal or external signals (local oscillators)

near the desired radio frequency band.” (Ex. 5 at QCPV001389992) (emphasis added).)

In sum, when ParkerVision approached Qualcomm in 1998, ParkerVision

asserted that it had developed a simple, universal, direct-to-digital receiver that could replace

the complex, frequency band-specific, multi-stage receivers Qualcomm used in its cell phone

receiver chips. Throughout the years, ParkerVision has reiterated these claims about its D2D

technology. For example, ParkerVision continued to proclaim in a 2002 presentation that,

unlike its simpler D2D design, “typical on-chip mixers require 4 balanced transistor pairs.”

(Ex. 6 at QCPV001392494 (emphasis added, capitalization omitted).)

3. ParkerVision ultimately could not demonstrate working technology for cell phones, and the discussions ended in mid-1999.

Some Qualcomm employees initially expressed enthusiasm about ParkerVision’s

claims. A business development executive, Jeff Jacobs, stated that the “[b]asic feeling is that if

you can do what you say you can do that it is very impressive and we could have a significant

interest but we have got to be shown that it can work.” (Ex. 7 at PV00184647.) Another


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employee working on the licensing side of the evaluation, Prashant Kantak, stated more

profusely that, “[w]hile sounding too good to be true, if indeed true, it could be the holy grail of

RF receivers.” (Ex. 8 at QCPV001390126.)

Other Qualcomm employees were skeptical. An engineer evaluating the project

cautioned: “Until we know what the inner working of the D2D is, this is pure speculation. We

cannot proceed further without details of the D2D architecture itself.” (Ex. 9 at

QCPV001547658.) Another engineer similarly stated: “[T]here are any number of approaches

that do exactly what [ParkerVision] does - sampler with impulses doing the sampling, a VLSI

mixer (Gilbert cell or other), the mixer in the Lucent paper. . . . My point is that this is the easy

part of direct conversion.” (Ex. 10 at QCPV001547792 (emphasis added).2)

Ultimately, ParkerVision could not demonstrate a downconversion device

meeting the rigorous specifications of Qualcomm chipsets. Following several rounds of testing,

there remained “a number of open issues and obstacles with D2D that need to be overcome

before it [could] be used as a direct down conversion receiver for CDMA.” (Ex. 12 at

QCPV001390519; see also Ex. 13 at QCPV001564760 (“As it stands today, [D2D] will not directly

meet the requirements of IS-98.”).) These unresolved obstacles included critical issues such as

LO radiation, DC offset, isolation, and baseband dynamic range. (Ex. 14, ¶ 155.)

The Qualcomm-ParkerVision discussions also broke down over financial issues.

Qualcomm submitted a proposal for a joint development agreement that conditioned any future

royalties on the actual workability of the technology. Soon afterwards, ParkerVision walked

away from the negotiations, claiming that it was considering another offer. Even after

2 See also Ex. 11 at QCPV001389395 (“We have run into several roadblocks in our mixer-based

implementation that I think would only be worse in a D2D approach. The problems concern the dynamic range required for CDMA, and specs regarding single and multi-tone jammers. These problems may or may not be solvable using D2D – if they aren’t, the D2D technology is of little or no value to us.”).


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ParkerVision walked away, Qualcomm confirmed that it was “still receptive to receiving the

proposals on the various licensing scenarios” but that “we still also believe that there is

considerable risk in applying D2D to CDMA applications and, in any case, it will require

considerable development effort.” (Ex. 15 at QCPV001390501.) ParkerVision did not reengage

in negotiations with Qualcomm. Nor has ParkerVision ever worked successfully with a third-

party to bring a cell phone chipset to market.

4. By 2002, Qualcomm independently developed and implemented its “ZIF” direct downconversion technology, which ParkerVision concedes does not infringe.

Around the same time as the Qualcomm-ParkerVision discussions, Qualcomm

began an internal program for developing direct downconversion receiver to replace

Qualcomm’s superheterodyne receiver. (Ex. 16 at QCPV011417641-42.) Qualcomm’s “ZIF”

(zero intermediate frequency) program resulted in the elimination of numerous receiver

components and redesign of many others. (Id. (describing “radioOne” ZIF architecture and

stating that “[e]ntire IF [intermediate frequency] section is removed with radioOne,” resulting

in a “[s]ignificant component reduction in Bill of Material”).)

As part of the ZIF program, Qualcomm also redesigned the local oscillator so

that it could handle the high frequencies needed for mixer-based direct downconversion.

Qualcomm was awarded several patents on its new local oscillator circuit design.3

Qualcomm shipped the first engineering samples including its ZIF design on

March 31, 2002. (Ex. 17 at QCPV011410409.) The first commercial product including the ZIF

design was the RFR6000 receiver. Qualcomm used the ZIF active-mixer architecture in a large

3 E.g., U.S. Patent Nos. 6,960,962 (Local oscillator leakage control in direct conversion processes);

7,062,229 (Discrete amplitude calibration of oscillators in frequency synthesizers); 7,546,097 (Calibration techniques for frequency synthesizers); 7,570,925 (Discrete amplitude calibration of oscillators in frequency synthesizers); and No. 8,019,301 (Calibration techniques for frequency synthesizers).


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number of commercially successful products from 2002 to 2006. (Ex. 18, ¶¶ 45-47.) Developing

ZIF required a significant investment of engineering time and resources, including hundreds of

engineer-months.

ParkerVision does not dispute that Qualcomm’s independently developed

active-mixer ZIF technology does not infringe any of the asserted patents. Nor does

ParkerVision dispute that ZIF allowed Qualcomm to achieve the benefits of transitioning from a

complex superheterodyne architecture to a much simpler and less expensive direct

downconversion configuration.

5. In the mid-2000s, Qualcomm purchased Berkana and soon thereafter began incorporating Berkana’s noninfringing direct downconversion technology into Qualcomm’s chipsets.

In the mid-2000s, Qualcomm purchased a company called Berkana Wireless Inc.

for $56 million. (Ex. 19 at QCPV009411884.) Berkana brought to Qualcomm a core of highly

qualified engineers and technology including a sophisticated phase lock loop circuit and a

design and prototype for a passive-mixer direct downconversion circuit. (See generally Ex. 20.)

Following the acquisition, Qualcomm’s engineers worked with the Berkana engineers to adapt

the Berkana passive mixer design for use in Qualcomm’s receiver chipsets. (Id.)

Qualcomm announced the release of the first product including the Berkana

architecture—the RTR6285—in February 2006 and imported the first prototype later that year.

(Ex. 21.) Qualcomm continues to employ many of the same basic Berkana designs to this day in

its receivers.

Although the Berkana direct downconversion design has many benefits, it does

not have several characteristics ParkerVision touted as benefits of its D2D design in 1999. For

example, Qualcomm does not have a universal downconverter, but instead must still use

different mixers and local oscillators for the different RF frequency bands used within the


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United States and around the world. (E.g., Ex. 22 at QCPV000000760.) Likewise, the Berkana

design does not employ the simple design proposed by ParkerVision. For example, Qualcomm

still uses the same four balanced transistor pairs that ParkerVision derided in the early 2000s as

being inferior to its D2D technology. (See Ex. 6 at QCPV001392494.)

Although ParkerVision has accused the Berkana passive mixer design of

infringement, Jeff Parker has conceded that Berkana had no access to, and did not copy,

ParkerVision’s technology. (See Ex. 23 at 260:8-261:8.)

B. ParkerVision Decides that Its Most Promising Business Strategy is Litigation and Initiates This Case.

After enduring millions of dollars in losses year after year, ParkerVision decided

to pursue a new business strategy in 2011. Without prior notice to Qualcomm, ParkerVision

filed its original complaint on July 21, 2011. (See Dkt. 1.) On September 16, 2011, Qualcomm

filed its Answer and Counterclaim, which included a request for a declaratory judgment of

noninfringement. (Dkt. 18.)

In its original complaint, ParkerVision accused two Qualcomm products of

infringing an unidentified number of claims in seven patents. (Complaint, ¶¶ 9, 11). On

January 30, 2012, ParkerVision served its infringement contentions, expanding the case to

accuse over 60 products and assert well over 80 claims from six patents.4 (See Ex. 24.) On

March 2, 2012, ParkerVision served amended infringement contentions. (Dkt. 152-7, at 2-3). On

August 27, 2012, ParkerVision moved for leave to serve supplemental infringement contentions

to accuse 25 new products. (Compare Dkt. 152-7, Section B and Dkt. 152-1, Section B).

ParkerVision’s infringement contentions cover a variety of product types—including 50% duty

4 In its infringement contentions, ParkerVision dropped two patents and added a third.


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cycle, 25% duty cycle, current mode, and voltage mode product types—that raise distinct

noninfringement issues.

The new list of accused products included, for example, 15 products with an

“AR” prefix. (Dkt. 152-1, Section B). Those products were all designed and sold by a company,

Atheros Communications, Inc., that Qualcomm acquired just before ParkerVision filed its

complaint (the “Atheros Products”).

Although it sought leave to accuse a host of products designed and sold by a

company that was entirely independent of Qualcomm, ParkerVision did not also seek leave to

amend its existing infringement contentions to support its claim of infringement as to the newly

accused products. Nevertheless, Qualcomm collected and produced voluminous schematics

regarding the Atheros Products. Those schematics, and other evidence, demonstrate that the

Atheros Products do not have the storage element required by the claims.

On November 16, 2012, this Court administratively terminated ParkerVision’s

motion, with instructions that ParkerVision should ask the Court to reactivate its motion after

the claim construction ruling—but only if ParkerVision still wished to seek leave to serve

supplemental infringement contentions. (See Dkt. 186) On February 20, 2013, the Court issued

its claim construction ruling. (Dkt. 243.) ParkerVision has not asked the Court to reactivate its

motion, nor has ParkerVision ever provided any infringement contentions for the products first

accused in August 27, 2012. Nevertheless, on December 14, 2012, in connection with a

discovery hearing, ParkerVision submitted a list of the products accused in this case to

Magistrate Judge Morris. (Ex. 25.) The Atheros Products are on that list.

On March 4, ParkerVision served a detailed expert report from Dr. Prucnal

addressing the alleged infringement of the Patents-in-Suit by 71 Qualcomm products. (See Ex.

26.) The report does not mention any of the Atheros Products. Nor does ParkerVision include


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the Atheros products in its damages calculations. On April 5, Qualcomm served an expert

report from Dr. Robert Fox addressing noninfringement. (See Ex. 27.) Dr. Fox opined that the

Atheros Products, as well as the other accused products, do not infringe the Patents-in-Suit.

In light of ParkerVision’s complete failure to submit any evidence (or even

contentions) regarding the alleged infringement by the Atheros Products, on May 17, 2013,

counsel for Qualcomm sent counsel for ParkerVision a letter regarding the Atheros Products. In

accordance with its counterclaims for declaratory relief, Qualcomm asked ParkerVision to

stipulate to a judgment of noninfringement as to those products. (See Ex. 28.) In response,

ParkerVision did not dispute that it had no evidence that the Atheros Products infringe. (See

Ex. 29.) To date, however, ParkerVision has declined to stipulate to a judgment of

noninfringement.

III. Argument

As detailed below, Qualcomm seeks partial summary judgment on three distinct

issues. Summary judgment is appropriate where “there is no genuine dispute as to any

material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a);

see Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). The movant bears the burden of establishing

the absence of any genuine issue of material fact by demonstrating “an absence of evidence to

support the nonmoving party’s case.” Celotex, 477 U.S. at 325. Once the moving party makes

this showing, “the burden shifts to the non-moving party to rebut that showing by producing

affidavits or other relevant and admissible evidence beyond the pleadings” showing that there

is a genuine issue for trial. Josendis v. Wall to Wall Residence Repairs, Inc., 662 F.3d 1292, 1314-15

(11th Cir. 2011) (citations and internal quotation marks omitted).


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A. ParkerVision Has Failed to Offer Any Evidence—or Even Contentions—that the Atheros Products Infringe Any of the Patents-in-Suit.

A patentee bears the burden of proving infringement. Ultra-Tex Surfaces Inc. v.

Hill Bros. Chem. Co., 204 F.3d 1360, 1364 (Fed. Cir. 2000). To do so, the patentee must establish

that each limitation of the claim is met by the accused device. Lantech Inc. v. Keip Mach. Co., 32

F.3d 542, 547 (Fed. Cir. 1993). ParkerVision has submitted no evidence that the Atheros

Products infringe.

1. ParkerVision failed to submit the expert testimony required to prove infringement.

If the subject matter of an asserted patent is “sufficiently complex to fall beyond

the grasp of an ordinary layperson” and if the defendant has provided an expert opinion of

noninfringement, a plaintiff must provide expert testimony to meet its burden. Proveris Scientific

Corp. v. Innovasystems, Inc., 536 F.3d 1256, 1267 (Fed. Cir. 2008); AquaTex Indus., Inc. v. Techniche

Solutions, 479 F.3d 1320, 1329 n.7 (Fed. Cir. 2007); Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd.,

888 F.Supp.2d 637, 641 (W.D. Pa. 2012) (requiring expert testimony to establish infringement

where Patents-in-Suit covered chip designs and defendant provided expert testimony of

noninfringement); Centricut LLC v. Esab Grp., Inc., 390 F.3d 1361 (Fed. Cir. 2004) (requiring

expert testimony if defendants presents expert testimony of noninfringement).

This case involves complex technology relating to the design and operation of

integrated circuits, as this Court has recognized. (Dkt. 162 at 2 (“The Court, now having the

benefit of the tutorial as well as the parties’ briefing and arguments related to claim

construction, finds that a technical advisor … would be a valuable asset to the Court given the

complex and technical nature of the Patents-in-Suit.”).) Accordingly, expert testimony was

required.


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Moreover, Qualcomm offered unrebutted expert opinion testimony that refuted

any claim that the Atheros Products infringe. Specifically, Qualcomm offered the expert

opinion of Dr. Robert Fox that the Atheros Products did not infringe for three independent

reasons. First, the Atheros products do not take discrete samples of energy from the carrier

signal and do not use energy from the carrier signal to create the downconverted signal, and,

therefore, do not perform the “energy sampling” that ParkerVision’s expert admits relates to

every asserted claim. (Ex. 27 at 266; Ex. 26 at 59; Ex. 30 at 107-08.) Second, the Atheros Products

do not contain a storage module or element coupled to the output of the downconversion

circuit as is required—either explicitly or inherently—by all the asserted claims.5 (Ex. 27 at 267.)

Third, the Atheros products do not use an “aliasing rate” of “less than or equal to twice the

frequency of the carrier signal” as required by a large number of asserted claims.6 (Ex. 27 at

267-68.)

Although ParkerVision submitted an expert report from Dr. Prucnal, that report

failed to address the Atheros Products at all. Dr. Prucnal’s infringement report specifically

names each of the products for which he conducted a “detailed infringement analysis.” (Ex. 26

at 113.) That list—and the rest of his report—does not include the Atheros Products. Indeed,

the report never even mentions the names or designations of any of the fourteen Atheros

Products. At deposition, Dr. Prucnal confirmed that he has no intention of offering opinions at

trial that Atheros Products infringe:

5 This element is required by (a) Claims 23-26, 31, 32, 135, 149, 150, 161, 192, 193, 198, 202 and 203 of the ‘551 Patent; (b) Claims 82, 90 and 91 of the ‘518 Patent; (c) claims 22, 23, 25 and 31 of the ‘371 Patent; (d) Claims 1, 4-6, 9 and 12-15 of the ‘734 Patent; (e) Claims 18-23 of the ‘342 Patent; and (f) Claims 5 and 6 of the ‘845 Patent.

6 Those claims include, at least, (a) Claims 1-3, 8, 9, 12, 20, 23-26, 31, 32, 39, 41, 50, 54, 55, 57, 92, 93, 108, 113, 126, 135, 149, 150, 161, 192, 193, 195, 196, 198, 202 and 203 of the ‘551 Patent; (b) Claims 1-3, 12, 17, 24, 27, 77, 81, 82, 90 and 91 of the ‘518 Patent; (c) Claims 1, 2, 22, 23, 25 and 31 of the ‘371 Patent; and (d) Claims 5 and 13 of the ‘734 Patent.


14

Q. You have no intent to offer any opinion at trial that any Atheros products infringe any of the patents-in-suit, correct?

A. My infringement opinion would be limited to what’s in my report and the products that I list there.

(Ex. 31 at 231-32.) As ParkerVision has not submitted the expert testimony required to raise a

triable issue of fact as to the Atheros Products, summary judgment is required.

2. ParkerVision has failed to submit any other evidence to support a claim of infringement as to the Atheros products.

Not only did ParkerVision fail to address the Atheros Products explicitly in its

expert report, but ParkerVision failed to establish that its infringement contentions, analysis, or

expert testimony of other Qualcomm products applies to the Atheros Products. Indeed, it could

not do so. It is undisputed that, prior to 2011, Atheros was an independent company with no

relationship to Qualcomm. (See Ex. 32 at 4.) Thus, its designs were entirely independent of

Qualcomm’s designs. After the acquisition, Atheros products continue to use the same basic

designs that Atheros developed prior to the acquisition by Qualcomm. (See Ex. 27 at 264.) As

Qualcomm’s downconversion designs are different from Atheros’ downconversion designs,

ParkerVision cannot fill the void in its expert reports by simply claiming that its contentions

and opinions regarding the Qualcomm products apply equally to the Atheros Products.

B. Qualcomm Is Entitled to Summary Judgment of No Pre-Suit Indirect Infringement for Four of the Six Asserted Patents.

1. To prevail on indirect infringement, ParkerVision must prove that Qualcomm had knowledge of the asserted patents.

Unlike direct infringement, which imposes strict liability for infringing acts,

indirect infringement7 requires proof that the defendant acted with a culpable mental state.

“[I]nduced infringement . . . requires knowledge that the induced acts constitute patent

7 Indirect infringement includes inducement (35 U.S.C. § 271(b)) and contributory infringement (35

U.S.C. § 271(c)).


15

infringement.” Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011). Likewise, for

contributory infringement, the patent owner must prove “that the alleged contributory infringer

knew that the combination for which his component was especially designed was both patented

and infringing.” Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488 (1964).

As an initial prerequisite to meeting this difficult mental-state element, the

patentee must prove that the accused infringer had knowledge of the asserted patent. DSU

Med. Corp. v. JMS Co., 471 F.3d 1293, 1304 (Fed. Cir. 2006) (en banc in pertinent part) (inducement

standard “necessarily includes the requirement that [the accused infringer] knew of the

patent”); Fujitsu Ltd. v. Netgear, Inc., 620 F.3d 1321, 1326 (Fed. Cir. 2010) (patentee must prove

that the accused contributory infringer “had knowledge of the patent”). To prove knowledge,

the plaintiff must either present direct evidence that the accused infringer actually knew of the

existence of the asserted patent or took steps to be willfully blind of such existence. Global-Tech

Appliances, 131 S. Ct. at 2068-71.

If the patentee fails to show pre-suit knowledge of an asserted patent, the

patentee may not recover pre-suit damages for indirect infringement. E.g., Pacing Techs., LLC v.

Garmin Int’l, Inc., 12-CV-1067, 2013 WL 444642, at *2 (S.D. Cal. Feb. 5, 2013); Intellect Wireless Inc.

v. Sharp Corp., 10 C 6763, 2012 WL 787051, at *11 (N.D. Ill. Mar. 9, 2012).

2. ParkerVision cannot show that Qualcomm had pre-suit knowledge of four of the six asserted patents.

ParkerVision provides the entirety of its purported evidence of Qualcomm’s pre-

suit knowledge in its infringement and damages expert reports.8 As detailed below, however,

8 The evidence of pre-suit knowledge relied on by ParkerVision is set forth in three paragraphs in the

expert report of ParkerVision’s damages expert, Paul Benoit (Ex. 33, ¶¶ 32-34) and just over two pages in the expert report of ParkerVision’s infringement expert, Dr. Paul Prucnal (Ex. 26 at 119-121).


16

none of the cited evidence raises a triable issue of fact for four of the six asserted patents: the

‘342, ‘734, ‘845, and ‘518 Patents.

(1) The ‘342 Patent

As the sole proof of Qualcomm’s alleged knowledge of the ‘342 Patent,

ParkerVision’s experts assert that “[t]he prosecution history of the ‘551 Patent includes

references . . . to the ‘Related Application’ Serial No. 10/972,133, which issued as the ‘342

Patent.” (Ex. 33, ¶ 33; Ex. 26 at 120; Ex. 34 at 226:20-227:1.)

The assertion, however, is simply incorrect. The prosecution history of the ‘551

Patent closed when the patent issued on May 9, 2000. (See Ex. 35; Ex. 33, ¶ 13.) The application

that became the ‘342 Patent, however, was not filed until October 25, 2004. (Ex. 35.) Thus, the

prosecution history of the ‘551 Patent could not have referenced the application of the ‘342

Patent.

(2) The ‘734 and ‘845 Patents

ParkerVision has cited no evidence that Qualcomm was aware of either of these

patents before this suit. (Ex. 33, ¶¶ 32-34; Ex. 26 at 119-121.) At his deposition, Mr. Benoit

confirmed that he did not know of any evidence that Qualcomm had pre-suit knowledge of the

patents. (Ex. 34 at 226:10-19.) See Zamora Radio, LLC v. Last.FM, Ltd., 758 F. Supp. 2d 1242, 1256-

57 (S.D. Fla. 2010) (granting summary judgment of no inducement where plaintiff “offered no

evidence that Defendants had any pre-suit knowledge” of the asserted patent).

(3) The ‘518 Patent

To demonstrate Qualcomm’s alleged knowledge of the ‘518 Patent,

ParkerVision’s experts point to a copy of the prosecution history of the ‘551 Patent produced

from the file of a Qualcomm employee. (Ex. 33, ¶ 33; Ex. 26 at 120; Ex. 34 at 225:25-226:9.) The

experts assert that Qualcomm had knowledge of the ‘518 patent, because the ‘551 prosecution


17

history contained “references to the then pending Patent Application Serial No. 09/376,359

which issued as the ‘518 Patent.” (Ex. 33, ¶ 33; Ex. 26 at 120.)

This evidence fails to raise a triable issue of fact, because knowledge of a patent

application is insufficient as a matter of law to establish knowledge of the later-issued patent. See

McRee v. Goldman, 11-CV-00991-LHK, 2012 WL 3745190, at *3 (N.D. Cal. Aug. 28, 2012) (“[M]ere

knowledge of a pending patent application . . . does not give rise to liability for inducement

under § 271(b).”—dismissing induced infringement claim with prejudice). As the Vasudevan

Software court held, “knowledge of the [asserted patent’s] existence was quite impossible before

it issued, and there is no indication . . . how [the accused infringer] may have later discovered

it.” Vasudevan Software, Inc. v. TIBCO Software Inc., No. C 11-6638 RS, 2012 WL 1831543, at *2

(N.D. Cal. May 18, 2012). Similarly here, Qualcomm could not have had actual knowledge of

the ‘518 patent before it existed, and ParkerVision has cited no evidence that Qualcomm

otherwise learned of the ‘518 patent after it issued.

3. ParkerVision’s other evidence does not raise a triable issue of fact.

(1) The 1998 to 1999 meetings between Qualcomm and ParkerVision do not show pre-suit knowledge.

ParkerVision’s technical expert, Dr. Prucnal, asserts that “Qualcomm has had

knowledge of the Patents-in-Suit since at least May 26, 1999, when Jeff Parker and David

Sorrells [of ParkerVision] met with Ben Miller and Charles Wheatley of Qualcomm to present

ParkerVision’s patent filings.” (Ex. 26 at 119; see also Ex. 33, ¶ 32.) Dr. Prucnal also relies on the

testimony of Prashant Kantak that, in the 1998 to mid-1999 timeframe, “he ‘was aware that

[ParkerVision] w[as] in the process of filing patents.’” (Ex. 26 at 119.)

These assertions cannot establish actual knowledge of the specific patents at

issue in this motion, because none of those patents issued before July 2001. (See Ex. 35; Ex. 33,


18

¶¶ 15, 20, 23, 26.) As noted above, an accused infringer cannot have actual knowledge of a

patent that has not yet issued. McRee v. Goldman, 2012 WL 3745190, at *3; see also Vasudevan

Software, 2012 WL 1831543, at *2; id. at *6 (“[M]ere knowledge of a pending patent application is

of little significance given the prospect that a patent may not ever be issued, or, if issued, be

altered or narrowed in scope.”).

These facts also fail as a matter of law to raise a triable issue of fact on willful

blindness. In Global-Tech, the Supreme Court recognized the high bar for proving willful

blindness: “(1) the defendant must subjectively believe that there is a high probability that a fact

exists and (2) the defendant must take deliberate actions to avoid learning of that fact.” Global-

Tech Appliances, 131 S. Ct. at 2070. This standard “gives willful blindness an appropriately

limited scope that surpasses recklessness and negligence.” Id.

Here, ParkerVision cannot meet either prong of the willful blindness test.

ParkerVision has no evidence showing a high probability that the patents addressed by this

motion would have been filed, issued, or asserted against Qualcomm. The 1998-1999 meetings

did not involve any of the applications that led to the issuance of the patents at issue in this

motion. (Ex. 36 at PV00184933.) Nor did Qualcomm have any reason to guess that

ParkerVision might file other applications reciting the specific claims in the patents addressed

by this motion. Likewise for the second prong, ParkerVision has not presented any evidence

that Qualcomm took “deliberate actions” to avoid learning of any ParkerVision patents. See

Vasudevan Software, 2012 WL 1831543, at *5-6; Apeldyn Corp. v. AU Optronics Corp., 831 F. Supp.

2d 817, 831 (D. Del. 2011) (granting summary judgment of no inducement despite evidence that

accused infringer could have, but did not, monitor competitors’ patents—“[a]t best, [the

patentee] has framed [the accused infringer] as a reckless or negligent defendant – not a

willfully deliberate one”).


19

(2) ParkerVision’s speculation from the Persico testimony does not preclude summary judgment.

Finally, Dr. Prucnal asserts that “Charles Persico testified that he was at least

aware of ParkerVision’s patents ‘three or four years ago.’” (Ex. 26 at 120-21.) The testimony

cited by Dr. Prucnal, however, is equivocal and unrelated to the specific patents at issue in this

motion. Mr. Persico testified only that he “saw that ParkerVision was referencing my patents,”

he “didn’t look at any of the detail,” and he did not look at any of the claims of any

ParkerVision patent. (Ex. 37 at 122:21-124:9.) The testimony Dr. Prucnal relies on, therefore,

does not provide any basis to infer that Qualcomm had knowledge of the specific patents at

issue in this motion. See Chalumeau Power Sys. LLC v. Alcatel-Lucent, No. 11-1175-RGA, 2012 WL

6968938, at *1 (D. Del. July 18, 2012) (rejecting theory that accused infringer might have learned

of patent as a result of suit filed against a different defendant as unduly speculative); Pacing

Techs., 2013 WL 444642, at *2 (rejecting inferences from accused defendant’s research and

development practices as “too speculative to support a reasonable inference that [it] knew of the

patent prior to commencement of this suit”).

4. Because Qualcomm lacked pre-suit knowledge, the Court should grant partial summary judgment of no pre-suit indirect infringement.

As shown above, ParkerVision has failed to adduce evidence of Qualcomm’s pre-

suit knowledge of the ‘342, ‘734, ‘845, and ‘518 Patents. ParkerVision first alleged indirect

infringement of the ‘342, ‘845, and ‘518 Patents on July 20, 2011 in its Complaint. (Dkt. 1.)

ParkerVision first accused Qualcomm of infringing the ‘734 Patent on January 30, 2012. (Ex. 24.)

Accordingly, Qualcomm respectfully requests the Court grant partial summary judgment of (1)

no indirect infringement for the ‘342, ‘845, and ‘518 Patents prior to July 20, 2011; and (2) no

indirect infringement for the ‘734 Patent prior to January 30, 2012.


20

C. Qualcomm is Entitled to Summary Judgment that Its 50% Duty Cycle Products Do Not Infringe the Patents-in-Suit.

Based on testimony from ParkerVision’s expert, Qualcomm is entitled to

summary judgment that its passive mixer products that use a 50% duty cycle (the “50% Duty

Cycle Products”) do not infringe the Patents-in-Suit.9 ParkerVision and its technical expert, Dr.

Prucnal, have taken the position that the Patents-in-Suit require the discharge of energy from a

storage device, i.e., a capacitor. Qualcomm’s 50% Duty Cycle Products connect two switches to

each storage capacitor. For 50% of the time, one switch is closed and providing charge to the

capacitor. For the other 50% of the time, the other switch is closed and providing charge to the

capacitor. Thus, although each switch is closed for only about 50% of the time, the capacitor is

always being charged. At his deposition, Dr. Prucnal admitted that in an “ideal” 50% duty

cycle product – where each switch is closed and providing charge for exactly 50% of the time –

there is no discharge of energy from the capacitor. ParkerVision advances no proof that

Qualcomm’s 50% Duty Cycle Products discharge energy from its capacitors and it is

indisputable that the switches in Qualcomm’s 50% Duty Cycle Products are each closed for at

least 50% of each frequency cycle. Those products cannot infringe.

1. All asserted claims require discharge of energy from a storage device.

Dr. Prucnal asserts that ParkerVision’s invention is “energy sampling.” (Ex. 26 at

44-53.) In Dr. Prucnal’s view, “energy sampling” requires first “transferring and accumulating

9 The 50% Duty Cycle Products are BTS4020, BTS4020BD, BTS4021, BTS4050, BTS4051, BTS4052,

BTS4054, BTS4055, BTS5045, BTS4025, FTR8700, MBP1600, MBP1610, MBP2600, MBP2700, MDM6085, MXC6369, MXU6219, QSC6055, QSC6065, QSC6075, QSC6085, RGR1000, RGR1100, RGR6240, RTR6236, RTR6237, RTR6280, RTR6285, RTR6285A, RTR6500, RTR8700, WCN1312, WCN1314, WCN1320, WCN2243, WCN3660, and the Bluetooth portions of the following products: QSC6155, QSC6165, QSC6175, QSC6185, QSC6195, QSC6295, QSC6695, QTR8200, QTR8201, QTR8600, QTR8600L and QTR8601.


21

energy from the modulated carrier signal onto a storage element such as a capacitor.” (Id. at

45.) Dr. Prucnal illustrates this concept through the use of the diagram below.

According to Dr. Prucnal, energy is transferred from the modulated carrier signal, which enters

the device at the antenna, to the “Large Storage Device” (the capacitor) when the switch (the

gate-like structure inside the box labeled “Energy Sampler”) is closed. (Id.) Critically, it is Dr.

Prucnal’s opinion that “[w]hen the switch opens, part of the accumulated non-negligible energy

in the capacitor is transferred to the load impedance — which is the impedance of the next stage

of the receiver circuit.” (Id. at 45.) In other words, in “energy sampling,” when the switch

opens, energy is discharged from the “Large Storage Device.”

Dr. Prucnal has opined that at least one element in all but one of the asserted

independent claims requires this discharge of energy out of a storage device. (See, e.g., Ex. 30 at

33-34, 64-65, 80-81.) The only asserted independent claim Dr. Prucnal has not opined includes a

limitation requiring discharge of energy from a storage device is Claim 13 of the ‘845 Patent.

(Id.)


22

2. Dr. Prucnal has admitted that products which employ a 50% duty cycle do not discharge energy from a storage device.

Mixers in receivers can operate at different “duty cycles.” A duty cycle is that

amount of time each switch in the mixer is closed during the course of one complete cycle or

“period” of the carrier signal. The accused devices use either a 25% or 50% duty cycle.

In an “ideal” 50% duty cycle product, each switch is closed for exactly half of

each cycle of the carrier signal. At his deposition, Dr. Prucnal testified about the following

illustration of Qualcomm’s 50% Duty Cycle Products that appears in the expert report of

Qualcomm’s non-infringement expert, Dr. Fox. The handwriting is Dr. Prucnal’s.

(Ex. 38 at 89.)

In this diagram, Dr. Prucnal circled three structures – two switches “M1” and

“M3” and a capacitor to the right of them (indicated by the two parallel lines). Dr. Prucnal

admitted during his deposition that both switches M1 and M3 are connected to and, in his

opinion, transfer energy to the circled capacitor. (Ex. 31 at 221:21-25.) He also admitted that in

an ideal 50% duty cycle product at all times during each cycle of the carrier signal either switch


23

M1 or switch M3 will be closed and therefore “transferring energy” to the capacitor. (Id. at 223,

lines 4-14.; 224, line 24 – 225, line 7.) Dr. Prucnal was clear that in such circumstance no energy

is discharged from the capacitor: “But in the ideal case, one is 50 percent duty cycle and they

both go to one capacitor because there is always current flowing from one or the other [switch]

into the capacitor, I can’t say that there is discharging.” (Id. at 230, lines 1-5.) Dr. Prucnal's

statement that “I can’t say there is discharging” is a candid admission that he cannot opine that

the relevant circuits infringe.

3. Qualcomm’s 50% duty cycle products do not discharge energy from a storage device.

ParkerVision does not dispute that all of Qualcomm’s 50% Duty Cycle Products

have the same basic structure set out in the diagram above, where each capacitor is connected to

two switches.10 (Ex. 31 at 226-230.) ParkerVision also does not dispute that both switches

provide charge to the capacitor during each cycle of the carrier signal. (Ex. 31 at 221.) The only

issue is whether at least one of the two switches connected to each capacitor in Qualcomm’s

50% Duty Cycle products is closed at all times during one cycle of the carrier signal – as

happens with an ideal 50% duty cycle. If the answer to that question is “yes,” then as Dr.

Prucnal admitted, no energy is discharged from the capacitor and the asserted claims that

require such discharge are not infringed.

In actual operation, the switches in Qualcomm’s 50% Duty Cycle Products are

each closed and providing a charge to the capacitor for more than 50% of each cycle of the carrier

signal. ParkerVision and Dr. Prucnal have not advanced any evidence that the switches in

Qualcomm’s 50% Duty Cycle Products are closed for less than 50% of each cycle. Dr. Prucnal

10 Some 50%Duty Cycle Products do not have a capacitor at the output of the switches, but are

alleged by Dr. Prucnal to have one. For the purpose of this motion, Qualcomm will adopt Dr. Prucnal’s position. Dr. Prucnal presents no argument that a product can infringe without such capacitor.


24

admitted that he did not model what happens to the charging and discharging of the capacitors

in the 50% Duty Cycle Products when both switches M1 and M3 are considered. (Ex. 31 at

228-229.) He testified, with reference to the diagram above, that he only modeled the operation

of one switch – M1, even though he admitted that both switches M1 and M3 are providing

charge to the capacitor. (Id.) This failure of proof alone is sufficient to grant Qualcomm

summary judgment.

However, Qualcomm documents made available to ParkerVision in discovery

indisputably establish that each of the 50% Duty Cycle Products employs a duty cycle where

each switch is closed and providing a charge for more than 50% of the time. For example, the

timing diagram below for the circuit design known as “GZIF4”11 illustrates the pairs of “LO”

control signals used to control paired switches such as M1 and M3:12

11 The GZIF4 circuit design is found in the following 50% Duty Cycle Products: MXU6219, RGR1000,

RGR1100, RTR6236, RTR6237, RTR6280, RTR6285, and RTR6285A

12 See Ex. 39 at QCPV000007891; see also Ex. 40 at QCPV000105059-60, 62-63; Ex. 39 at QCPV000007872 (stating that the LO buffer made for the circuit design known as Voltron and Ramsis was reused in GZIF4); Ex. 41 at QCPV000373563-65; Ex. 42 at QCPV000141579-80. The Voltron circuit design is found in the following 50% Duty Cycle Products: RTR6500 and MXC6369. The Ramsis circuit design is found in the following 50% Duty Cycle Products: QSC6055, QSC6065, QSC6075, QSC6085, and MDM6085.


25

This is exactly the

situation in which Dr. Prucnal admitted he “can’t say that there is discharging.” (Ex. 31 at

230:1-5.)

Unlike ParkerVision’s expert, Qualcomm’s expert Dr. Fox accurately recognized

in his report how the 50% Duty Cycle Products work and analyzed the effect both switches

have on the capacitor to which they are connected. Based on this analysis, Dr. Fox opined that

none of the 50% Duty Cycle products have a discharge cycle. (See, e.g., Ex. 21 at 199-204.) Dr.

Fox’s opinions in this regard are unrebutted and provide further grounds for granting summary

judgment of non-infringement.

IV. Conclusion

For the reasons set forth above, Qualcomm respectfully requests that the Court

enter judgment against ParkerVision:

(1) On ParkerVision’s claims that the Atheros Products (as defined herein) infringe any asserted claims, and on Qualcomm’s counterclaim seeking a declaration that such products do not infringe;

(2) On ParkerVision’s claims of induced and contributory infringement of the ‘342, ‘845, and ‘518 patents, for the period prior to July 20, 2011, and of the ‘734 Patent for the period prior to January 30, 2012;

(3) On ParkerVision’s claims that the 50% Duty Cycle Products (as defined herein) infringe any asserted claim, and on Qualcomm’s counterclaim seeking a declaration that such products do not infringe.


26

May 22, 2013

CRAVATH, SWAINE & MOORE LLP By: s/ Keith R. Hummel Keith R. Hummel (admitted pro hac vice)

[email protected] David Greenwald (admitted pro hac vice) [email protected] Worldwide Plaza 825 Eighth Avenue New York, New York 10019 Telephone: (212) 474-1000 Facsimile: (212) 474-3700

-and-

COOLEY LLP Stephen C. Neal (admitted pro hac vice)

[email protected] Timothy S. Teter (admitted pro hac vice) [email protected] Five Palo Alto Square 3000 El Camino Real Palo Alto, CA 94306-2155 Telephone: (650) 843-5182 Facsimile: (650) 849-7400

-and-

BEDELL, DITTMAR, DEVAULT, PILLANS & COXE, P.A. John A. DeVault, III

Florida Bar No. 103979 [email protected] Courtney K. Grimm Florida Bar No. 953740 [email protected] The Bedell Building 101 East Adams Street Jacksonville, Florida 32202 Telephone: (904) 353-0211 Facsimile: (904) 353-9307

Counsel for Defendant Qualcomm Incorporated


27

CERTIFICATE OF SERVICE

I HEREBY CERTIFY that on this 22nd day of May, 2013, I electronically filed the foregoing with the Clerk of the Court by using the CM/ECF system which will send a notice of electronic filing to all counsel of record.

s/ Keith R. Hummel Keith R. Hummel (admitted pro hac vice)

[email protected] Worldwide Plaza 825 Eighth Avenue New York, New York 10019 Telephone: (212) 474-1000 Facsimile: (212) 474-3700 Attorney for Defendant Qualcomm Incorporated

1131516/HN


Exhibit 1

Case 3:11-cv-00719-RBD-TEM Document 270-1 Filed 05/22/13 Page 1 of 7 PageID 8993

THE UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA


PARKERVISION, INC.,

Plaintiff,

v. Case No. 3:11-cv-719-J-37-TEM QUALCOMM INCORPORATED, OUTSIDE ATTORNEYS’ EYES

ONLY INFORMATION Defendant.

EXPERT REPORT OF DR. BEHZAD RAZAVI


- 15 -

V. Background on the Technology of the Patents-in-Suit

41. The following section provides background on the technology claimed in the

Patents-in-Suit. All of the material referenced herein reflects the state of the art before the

earliest claimed priority date of the asserted patents. I understand that I may be asked to

provide a tutorial on this technology at trial.

A. Wireless Communications Systems

42. Each of the Patents-in-Suit relate to the processing of high-frequency

electromagnetic signals, such as those transmitted in wireless communications to carry

information signals. The figure below shows, at a very basic level, how a wireless

communication system operates.

Razavi, RF Microelectronics (1998) Figure 3.2

43. At the transmitter, an information or “baseband” signal—which contains the

information to be transferred wirelessly, such as voice information from a telephone call— is

encoded onto a “carrier signal”3 by varying, or “modulating,” one or more properties of the

carrier signal according to the information signal. Modulation is the process of placing

information on a signal that otherwise carries no information. A signal whose properties (such

as amplitude or phase) do not change with time carries no information

44. Modulation can be effected by changing any of the characteristics of an RF signal:

3 I understand that “carrier signal” is a claim term that the parties have agreed means “an

electromagnetic wave that is capable of carrying information via modulation.”


- 16 -

amplitude, phase or frequency or any combination thereof. Amplitude modulation is used for

traditional AM radio, and frequency modulation is used for traditional FM radio. Most modern

communication systems today, such as cellular phone systems, use a combination of amplitude

and phase modulation to transmit greater amounts of information than can be achieved with

either amplitude or phase modulation alone.

45. The “modulated carrier signal”4 is transmitted through the physical transmission

medium, called the “channel.” In the case of most wireless devices, the medium of transmission

is the air.

46. At the receiver, the modulated carrier signal, which is received by an antenna, is

“demodulated” to retrieve the information signal. Demodulation is the extraction of the

information signal from a modulated carrier signal.

47. A modulated carrier signal that is received by a wireless communication device

must be down-converted to a lower frequency signal or to a baseband frequency before it can be

demodulated to extract the desired information.5 A carrier signal can be down-converted

directly to baseband in a single stage—a process known as “direct down-conversion” or “direct

conversion”—or, alternatively, it may be down-converted in two stages by first down-

converting the high frequency carrier signal to an intermediate frequency (“IF”) signal, and then

to a baseband frequency signal.

B. Wireless Signals

48. Wireless communications systems relay information over the air (and through

4 I understand that “modulated carrier signal” is a claim term that the parties have agreed to mean

“a carrier signal that is modulated by a baseband signal.”

5 In the case of pure amplitude modulation, the process of downconverting the modulated carrier signal will produce a demodulated baseband signal. For other types of modulation, downconversion and demodulation are different processes. In modern cell phones, for example, a separate baseband processor is dedicated to the recovery of information from the downconverted baseband signal.


- 24 -

stages by first down-converting the high frequency carrier signal to an IF signal, and then to

baseband. Receivers that perform direct downconversion are sometimes called homodyne

receivers, and typically use a single mixing stage to downconvert the carrier signal to baseband.

Receivers that perform downconversion in two steps, using an IF frequency, are called

superheterodyne receivers, and typically use two mixing stages in succession to downconvert

the carrier signal. Both homodyne and superheterodyne receivers have been well known in the

art for decades.

Homodyne Receiver Topology

Heterodyne Receiver Topology

1. Superheterodyne Receivers

68. In 1917, Edwin Howard Armstrong coined the term “superheterodyne” for a

receiver that, after filtering and amplifying the received RF signal, converted it to an IF signal

that could be amplified and filtered with relative ease, and then further converted to baseband.

The ease of filtering out unwanted, interfering signals received by the antenna was the initial


- 25 -

advantage that heterodyne systems had over direct conversion systems.

69. The component that performed the heterodyne function in these early

downconverters was known generically as a mixer and was implemented with a nonlinear

component, such as a vacuum tube. Later, as semiconductor technology developed, nonlinear

diodes or transistors were used. As described above, one of the two signals input to the mixer

was the received RF signal and the other signal was a signal generated locally within the

receiver by a “local oscillator.” The receiver generates the local oscillator signal at the frequency

at which it expects to receive the transmitted signal.

2. Homodyne and Synchrodyne Receivers

70. In 1924, F.M. Colebrook published a paper in Wireless World and Radio Review

describing a homodyne system where the local oscillator frequency was adjusted to equal the

received RF carrier frequency.13 This configuration resulted in the first use of a homodyne

architecture for direct down conversion. In the homodyne system, as it was named by

Colebrook, the difference frequency between the RF carrier and the local oscillator signal is

zero, so the baseband information on the RF signal is translated directly to its baseband

frequency from which the information can be recovered.

71. The synchrodyne receiver was an improvement to the homodyne system and was

first described by D.G. Tucker in 1947 in Electronic Engineering.14 The improvement disclosed

was synchronizing the local oscillator signal to the received RF signal such that the local

oscillator exactly matched not only the frequency of the received RF signal, but the phase of

13 Colebrook, F.M., “Homodyne,” Wireless World and Radio Review, No. 13 (1924), p. 774.

14 D.G. Tucker, “The Synchrodyne,” Electronic Eng., 19, March 1947, p. 7576 . In 1932, H. de Bellicize offered an architecture for receiving and demodulating AM signals using a superheterodyne receiver in which the intermediate frequency was zero. This system used a frequency locking technique that anticipated the synchrodyne receiver, but did not use the terms “homodyne” or “synchrodyne.”


- 26 -

oscillation as well. This process is now known as coherent demodulation.

3. Modern Direct Conversion Receivers

72. As detailed above, the concept of a direct conversion receiver was well

established decades ago, with the homodyne and synchrodyne receivers.15 However, these

were relatively primitive and suffered from a number of deficiencies that kept them in disfavor

relative to multistage superheterodyne architectures.

73. In the 1930’s and 1940’s, a new branch of communications engineering was

developed around the information theory of Claude Shannon and the sampling theory

developed by Harry Nyquist, both engineers at Bell Laboratories. Shannon’s work established

the theoretical limits on the amount of information that could be transmitted in a given

bandwidth in the presence of noise.16 Noise is an important concept in wireless

communications, and is discussed in detail below.

74. Shannon’s equation shows that the signal-to-noise ratio of the entire

communications link limits the rate at which information may be transmitted using a given

bandwidth, or range of frequencies, used by a signal. The development of ways to exploit this

insight has been happening over the decades following Shannon’s work.17

75. Nyquist famously established the Nyquist sampling theorem18, which enabled our

vast telecommunications infrastructure and laid the foundation for much of today’s digital

technology. The Nyquist sampling theorem simply states that all the information in a

15 Actually, the last stage of a superheterodyne receiver can also be viewed as a direct conversion

system, converting a low frequency RF signal (IF) to baseband.

16 Shannon, A mathematical theory of communication, Bell System Technical Journal, vol. 27, pp. 379–423 and 623–656, July and October, 1948.

17 Lee, The Design of CMOS Radio-Frequency Integrated Circuits, pp 56-57.

18 Nyquist, Certain factors affecting telegraph speed, Bell System Technical Journal, vol. 3, pp. 324–346, 1924


Exhibit 2



PARKERVISION ®

PRELIMINARY

UNIVERSAL DIRECT CONVERSION RECEIVER

29 January 1998

ParkerVision has developed a direct conversion receiver to replace today's two- or threestage receiver chains. This embodies a breakthrough circuit architecture, not an exercise in putting today's receiver chain on a single IC in a single process.

This UDCR exists today implemented in board form, Si CMOS IC, and GaAs IC form. The circuit architecture can also be implemented on Bipolar, BiCMOS, SiGe, InP, and other processes.

In the attached table, you will see the measured electrical performance of the IC, with an application circuit as shown.

This breakthrough technology enables a high level of integration, with at a minimum the receiver on a single IC. ParkerVision's UDCR can easily be added to a die containing other application circuit blocks. Accordingly, value flows to the manufacturer of radio equipment in six areas :

1. Bill of Materials reduction 2. Manufacturing cost and velocity 3. Materials management overhead 4. Time to Market 5. Manufacturing engineering 6. Circuit board power consumption

8493 BAYMEADOWS WAY. JACKSONVILLE. FL 32256 904-737-1367 FAX 904-731-0958

CONFIDENTIAL PV00184628


Exhibit 3



Exhibit 4






Exhibit 5




Exhibit 6




Exhibit 7


Gyton, Valerie

From: Sent: To: Subject:

Parker, Jeff Monday, August 17, 19984:34 PM Gyton, Valerie FW: JEFF JACOBS

Please print and keep in the Qualcomm file. Thx. JP

-Original Message-From: Gyton, Valerie

-Sent: Friday. August 14, 19985:04 PM To: Parker, Jeff

__ Subject: JEFF JACOBS

Following is a message received from Jeff Jacobs.

Rich Silpezia (sp.?) received message from Steve Silverman wondering how things were proceeding and looking for a half hour meeting with Irwin.

Let me share with you how things stand from the Qualcomm side.

Understand that you sent a couple of boards--problems with both boards so ball is in your court to send a new board that we can evaluate. Basic feeling is that if you can do what you say you can do that it is very impressive and we could have a significant interest but we have got to be shown that it can work. So, we are evaluating, we are doing our homework, we are taking it seriously.

There is a gentleman in our business development organization by the name of Prashant Kantak who will be your point of contact, he comes from that RF design world.

Call if you would like to talk with me, (619) 658-5800.

1

CONFIDENTIAL PV00184647


Exhibit 8



Exhibit 9


CONFIDENTIAL

1. Kesuiis oi u2u Tesiing:

Three tests were conducted for the D2D device: noise figure, lIP 3 , and dc offset. The D2D is a zero-IF device; RF is converted to baseband, analog I and Q. Since we had only one device, we used it as a mixer down-converting RF to a low frequency IF of less than 10 MHz. We swept noise figure and IIP3 versus IF frequencies of 100 kHz, 500 kHz, 1 MHz, 4 MHz and 10 MHz. The performance was constant over IF and the data is given below:

D2D Characterization

24

22 \

\ 20 \ -- r--r-- ----

(') 18 ~ --NF(d8)

u: . ....... IIP3(d8m) z 16

" .'

14

o 2 3 4 5 6 7 8 9 10

IF (MHz)

Figure 1: RF = 900 MHz, 225 MHz clock, V cc = 5V

The noise figure shown here is single sideband, assuming it is a double sideband device like a conventional mixer. Strictly speaking, it is unknown how many sidebands there are; if the D2D is a sampling device, there may be many sidebands. A single sideband measurement yielded an interesting result. In order to attenuate any images, an amplifier and pre-selection filter were placed at the D2D input. The single sideband noise power measured should have been lower than the double sideband noise power, although it was not. It was observed that source loading of the D2D affected the output noise level. Apparently, the pre-selection filter improperly loaded the D2D. No further investigation was made.

Technology Group Qualcomm Proprietary

QCPV001547653


CONFIDENTIAL

2.3 Risk Areas

• The high dynamic range baseband (delta-sigma) is risky. The D2D is not a panacea solution; there is a great deal of research to be done to integrate the D2D technology into a phone.

• Until we know what the inner working of the D2D is, this is pure speculation. We cannot proceed further without details of the D2D architecture itself.

• FM performance is subject to degradation due to I/f noise. The FM bandwidth is narrow and I/f noise becomes significant.

• The two intermodulation test tones produced a beat note in addition to the 1M. The beat note occurs at the difference frequency of the two tones. The beat note gets stronger as the supply voltage is reduced and was measured as strong as 20 dB below the jammer in one case. This effect is avoided in a heterodyne architecture but must be dealt with using the D2D. Knowing more about the D2D architecture will help solve this problem, however. IS-98 1M calls for two tones, at 900 and 1700 kHz. The beat note would be at 800 kHz, only 20 dB below the jammer for the worst case. The jammers are specified to be 58 dB above sensitivity, which implies the beat note is 38 dB above sensitivity. The digital filter would be required to reject this beat note at 800 kHz yet pass the 615 kHz signal bandwidth.

• The PCS noise figure is 5-10 dB higher than cellular. This could be too high for JSTD-OI8 compliance. The IIP3 is a few dB lower in the PCS band as well.

3. Standby Time Improvement:

To assess the impact on standby time (for slot cycle 1), the baseline used is a Panther based phone such as 6GP dual-mode. The D2D yields an 11% increase in standby time over that of the baseline phone from 63 to 71 hours. The digital architecture, power grid, and battery were held constant in the comparison, only the receiver RF architecture varied. Current consumption:

• D2D (for each I and Q) 2.25 rnA

• 2 SiGe LNA's I4mA

• BB IC I (for each I and Q) Buffer 3mA Modulator I2mA DSP 7mA

1 Assumption based on ~'i1ARS delta-sigma experience

Technology Group Qualcomm Proprietary

6

QCPV001547658


Exhibit 10


To:

From: Sent: Subject:

Bruce Judson[bjudson] c'vvheatley[cvvheatley]; pkantak[pkantak] Rob Gilmore Fri 6/18/199911:08:14 PM Re: Direct Conversion

Bluce, what you say here is incorrect. I am only considering approaches that can be implemented in an ASIC. My goal is an MSM that requires only an external LNA, PA, and diplexer to make a phone. The point is that there are any number of approaches that do exactly what PV does - a sampler with impulses doing the sampling, a VLSI mixer (Gilbert cell or other), the mixer in the Lucent paper. .. My point is that this is the easy part of direct conversion. The hard parts are LO radiation, DC offset, etc. PV only brings a low noise sampler to the table, but their implemented part has an 18 dB noise figure. We can beat that using a sample and hold driven by impulses, and certainly by almost any type of mixer you choose. We definitely will incorporate the chosen approach into an ASIC, hopefully the MSM. I am just suggesting that we focus our work on the direct conversion architecture - the sampler or mixer is rather trivial. The most important sampling concept in this whole thing is not PV's, it is using a fundamental clock to drive the sample and hold. This yields the lowest noise figure, and PV did not think of it. -Rob

At 08:51 PM 6/16/99 -0700, you wrote: >Sounds to me like we are talking about two different things. The mixer Rob >is looking to use is a Shockley Diode or high performance FET (GaAs or >such). The Parkervision scheme (from what I can gather) uses technology >that could be implemented on an ASIC. If my assumption is right, then we >may win by pursuing both. > > Bruce > > >At 04:17 PM 6/16/99 -0700, Chuck Wheatley wrote: »Rob » »Is this a recent decision? We were planning to have Bruce Judson evalute »the sampling idea over in bid L. Not that I am so fond of the PV device, »since it will defintely require some serious work, but I'd like to have us »all discuss this before we cancel the thing. » »Chuck » »in Hong Kong, back friday. » » » » At 05:22 PM 6/15/99 , Rob Gilmore wrote: »>Prashant, »> We are proceeding with an investigation of direct up and down conversion »>for use in phone design. We do not need Parkervision IPR to proceed. We »>can obtain an approximate 6 dB noise figure using a double balanced mixer. »>This is perhaps a few dB away from what the D2D can theoretically provide »>when used in a fundamental mode, but it is considerably better than what we »>have seen to date in the D2D device. Also, it is better than a D2D used in

CONFIDENTIAL QCPV001547792


Exhibit 11


Rob Gilmore, 10/4/99 2:12 PM -0700, Re: Fwd: ParkerVision Update X-Sender: [email protected] Date: Mon, 04 Oct 1999 14:12:54 -0700 To: Marv Blecker <mblecker> From: Rob Gilmore <rgilmore> Subject: Re: Fwd: ParkerVision Update Cc: cwheatley, dschrock, pkantak, jjacobs

Marv, I would still like to license the technology, but I do not think that using the D2D in our application is a slam dunk. We have run into several roadblocks in our mixer-based implementation that I think would only be worse in a D2D approach. The problems concern the dynamic range required for CDMA, and specs regarding single and multi-tone jammers. These problems mayor may not be solvable using D2D - if they aren't, the D2D technology is of little or no value to us. Much work is required in this regard, and the effort is currently not staffed at a sufficient level to answer the pertinent questions in a timely manner. Therefore, we either need to negotiate a cheap price, or mount a sizable investigatory effort in either Corporate or ASIC's to determine what the technology is worth. -Rob

At 12:44 PM 10/4/99 -0700, you wrote: >fyi > >If the consensus is that we would still like to discuss taking a >license for the PV D2D technology, then we will communicate that to >Broadview. I am assuming that there is still no interest internally >at proposing acquisition, especially considering the high valuation >and our ability to design around their technology; anybody disagree? >comments? > >Shares OUtstanding (fully diluted): 11.8 million >Warrants Issued: 3.2 Million (from 10Q 8/13/99) >Stock Price: 25 (close on 10/1/99) > >Valuation on shares outstanding (w/o Warrants) : $295 Million >Valuation on shares outstanding (including warrants) : $375 Million > > >--- begin forwarded text > > >From: "Parker, Jeff" <[email protected]> >To: "'[email protected]'" <pak>, .. '[email protected]'" <mblecker> >Subject: ParkerVision Update >Date: Mon, 4 Oct 1999 13:51:33 -0400 >X-Priority: 3 > >Marv and Prashant, > >I meant to call you late last week before David Creamer contacted Marv >and inform you that we have engaged Broadview to help us sort through >our business opportunities and possible acquisition of the company ->sorry about not calling before David contacted you. > >Please feel free to discuss with Broadview any aspects of your business >interest in ParkerVision. We are keeping the fact that we have engaged >Broadview confidential and so please keep our relationship with >Broadview as such, under our NDA. Broadview does not have disclosure of >how the D2D internals operate and so please do not discuss with theJn the >specifics about the D2D internal circuits.

Printed for Marv Blecker <[email protected]>

CONFIDENTIAL

1

1

QCPV001389395


Rob Gilmore, 10/4/99 2:12 PM -0700, Re: Fwd: ParkerVision Update > >Prashant, as to further additions to the extended NDA I would prefer to >wait until you or Marv have had an opportunity to have a dialog with >David Creamer. David is prepared to have a discussion as quickly as you >would like, so I don't believe this would delay anything for very long. > >Also, I have asked Broadview to update you folks on the progress we're >making in pushing the technology forward. One of the initiatives that >we've been working on that I believe you would find of value relates to >a CDMA D2D based single step transmitter. We have finished the 802.11 >DSSS WLAN implementation for both receive and transmit and have >confirmed the value of having the technology as linear and as efficient >as D2D is for the transmitter side of the equation. > >In essence we are able to go from baseband to an on-channel RF DSSS >vector modulator using only a 480Mhz LIO and a VERY simple baseband >fi1ter and then the traditional RF filter. The D2D transform provides >some nice gain. The sidebands and spectral regrowth are very well >behaved and we are able to use a medium power amp right up to its 1dB >compression point (ldB back-off point) -- with the net result being a >significant power reduction for the WLAN application -- we've reduced >the power consumption in transmit from the traditional 2.2W to 1W at the >exact same power out and with a better spectral mask than what the specs >ca1l for and from anything that we know is on the market today for WLAN. >All of this is in .5 micron CMOS except the final power amp. Also the >carrier suppression is better than currently shipping products providing >a slightly improved link budget. > >We are now building a CDMA version of this same vector modulator and we >hope to have the info on that performance shortly. I don't have a >completion date yet for a demo, but if you're interested please let >David Creamer know and we will keep you appraised of this as it evolves, >which should be fairly rapidly. > >Also, we have turned on our first D2D website -- www.d2d.com. Feel free >to cruise through that, although you folks have lots more info than >what's on that site. Although you may find our predictions for our next >pass of CMOS interesting as well as the app notes on the DSSS 802.11 >implementation. > >Best regards, > >Jeff Parker > >--- end forwarded text > > > >Marv >(619) 658-4210 >(619) 651-1975 (fax)

Printed for Marv Blecker <[email protected]>

CONFIDENTIAL

2

2

QCPV001389396


Exhibit 12



Exhibit 13



Exhibit 14


OUTSIDE ATTORNEYS’ EYES ONLY

REBUTTAL EXPERT REPORT OF TIM A. WILLIAMS

PARKERVISION V. QUALCOMM CASE NO. 3:11-CV-719-J-37-TEM



67

leakage, which is yet another reason any alleged valuation of the 1998-99 D2D

technology has no relevance in determining the value of the Patents-in-Suit.

e. Power Savings

153. As discussed in my Opening Report, power savings were another cited

benefit of the 1998-99 D2D technology that stemmed from its use of subharmonic

sampling.169 Although power savings were later claimed in the Patents-in-Suit, as

discussed above, none of the Accused Products uses subharmonic sampling. Therefore,

the power savings promised in the 1998-99 D2D technology have no relationship to the

power savings allegedly achieved by use of the patented technology, and any statements

concerning power savings in the 1998-99 D2D technology have no bearing on the value

of the Patents-in-Suit to Qualcomm.

C. The Technology Required for a Functional Cellular Receiver Was Not Taken from ParkerVision

1. The 1998-99 D2D Technology Did Not Enable and Is Not Necessary for a Successful Direct Downconversion Receiver Design

154. Although Qualcomm employees were initially excited about the potential

advantages of the 1998-99 D2D technology, once an extended NDA had been signed and

Qualcomm’s engineers were provided with technical details regarding ParkerVision’s

D2D design, they were generally disappointed.

155. Qualcomm’s engineers eventually concluded that while the 1998-99 D2D

technology may have solved some of the lesser problems associated with direct

downconversion radio architectures, it did not overcome the much more important

obstacles that had stymied earlier efforts by others to adopt direct conversion

169 Opening Report ¶ 68.



68

approaches in cellular applications. These obstacles included issues relating to LO

radiation, DC offset, isolation and baseband dynamic range.170

156. Ultimately, Qualcomm concluded that “[a]s it stands today, [D2D] will

not directly meet the requirements of IS-98 [a CDMA standard].”171 Accordingly,

Qualcomm informed ParkerVision that there were “a number of open issues and

obstacles with D2D that need to be overcome before it [could] be used as a direct down

conversion receiver for CDMA.”172

157. Qualcomm invited ParkerVision to return once it was able to “achieve

some concrete milestones on the CDMA receiver development front,”173 and indicated

that it would “welcome the opportunity” to receive a report showing the 1998-99 D2D

technology “meeting or surpassing the IS-95 receive performance requirements and the

issues QC [had] brought to PV’s attention in the past.”174

158. It is my understanding that ParkerVision never produced a report

showing the 1998-99 D2D technology’s ability to meet CDMA specifications or otherwise

demonstrated that its technology could be used in a commercially viable receiver. I am

aware of no evidence that Qualcomm sought to design any receiver chips by relying on

the 1998-99 D2D technology. 175

170 See, e.g., QCPV005518497-502; QCPV001547781; QCPV001547792-793 at QCPV001547792;

QCPV001568159.

171 QCPV001564760-762 at QCPV001564760.

172 QCPV001390519.

173 Id.

174 QCPV001390524-525 at QCPV001390524.

175 See Opening Report ¶¶ 53-122.


Exhibit 15


From: To: CC: Sent: Subject:

Don Schrock Marv Blecker rgilmore; sjha; cwheatley; jjacobs; pjacobs; saltman; lIupin; jlodenius; pkantak 10/11/1999 4:42:25 AM Re: Fwd: RE: ParkerVision Update

don't give them any more cdma info. they have already sucked our brains for cdma info they are now using. thx,don

At 6:23 PM -0700 10/10/99, Marv Blecker wrote: >comments? suggestions? > >--- begin forwarded text > > >From: "Parker, Jeff" <[email protected]> >To: "'Marv Blecker'" <mblecker>, "'[email protected]'" <pak> >Cc: "Sorrells, David" <[email protected]>, > "Baker, Jim" <[email protected]> >Subject: RE: ParkerVision Update >Date: Fri, 8 Oct 1999 19:45:35 -0400 >X-Priority: 3 > >Folks, > >Nice to hear from you and we are pleased that there is still interest in >the D2D technology and application to CDMA at QUALCOMM. > >1 will do a little brainstorming with our folks regarding different >ideas on how we might find synergies and possible business relationships >between us. In the meantime, we are optimistic (but not 100 positive) >that we may have a CDMA D2D transmitter up and going in the near future. >IF it turns out that it works as well as its 802.11 cousin AND IF it >turns out that it demonstrates the same benefits that we achieve in WLAN >(or even similar - i.e. good spectral performance, carrier suppression, >power consumption, etc.), then perhaps an update on that achievement >under our NDA by e'mail or FAX could then be followed by an in-person >visit. This might provide a better foundation for a next discussion >since there will have been some level of tangible progress and risk >mitigation with that achievement. While that isn't a full-up D2D >solution ( transmit without receive) there may be some interesting >tangible value that would be a better starting point than the more >purely theoretical place we are now. > >We are also very interested in seeing if there is a receiver development >program where we might have our organizations able to work together. Do >you have any thoughts on the various scope of ways we could work >together on such a project? David Sorrells has the next generation D2D >going through the foundry right now. With any luck we will have these >next IC's in 4-6 weeks. David has also been doing a thorough link budget >analysis for CDMA-One and is optimistic that at least one of the >variants will achieve adequate dynamic range and linearity for CDMA Zero >IF receiver applications. Any ideas on how QUALCOMM and PV could work >together to prove or disprove a D2D Zero IF Receiver are welcome. >Perhaps with a successful full-up transmitter proto this would be a good >jumping off place to start working together? > >Prashant, regarding the addition of another person for D2D analysis. I >would rather wait and see if we can find some working relationship to >get the dialog going again. Perhaps if the CDMA transmitter proto is >successful (and we are optimistic), then after such an update of info we >can find a way to get going again. Or, perhaps ideas to my question in >the paragraph above could trigger something. Do you have any specific >thoughts on what this additional person would be hoping to bring to the >analysis beyond the team that already has the disclosures?



> >1'11 try and come up with ideas. Yours are also very welcomed. > >Best regards, > >Jeff Parker > > > >-----Original Message----->From: Marv Blecker [mailto:[email protected]] >Sent: Thursday, October 07, 1999 6:00 PM >To: Prashant Kantak; Parker, Jeff; '[email protected]' >Subject: Re: ParkerVision Update > > >Jeff, > >As I told David last evening, if ParkerVision is ready to move >forward, we are still receptive to receiving the proposals on the >various licensing scenarios that you had agreed to provide us several >months ago. However, we still also believe that there is >considerable risk in applying D2D to CDMA applications and, in any >case, it will require considerable development effort. Perhaps there >is some way to work together on such a development? > >regards, > >At 12:16 PM -0700 10/7/99, Prashant Kantak wrote: »Jeff, »Marv and I talked to David Creamer yesterday, please get an update from »him. As you stated below, please let me know your decision on further »additions to the extended-NDA. Thanks. »Prashant » » » » » »At 01:51 PM 10/4/99 -0400, Parker, Jeff wrote: » >Marv and Prashant, » > » >1 meant to call you late last week before David Creamer contacted >Marv » >and inform you that we have engaged Broadview to help us sort through » >our business opportunities and possible acquisition of the company -» >sorry about not calling before David contacted you. » > » >Please feel free to discuss with Broadview any aspects of your >business » >interest in ParkerVision. We are keeping the fact that we have >engaged » >Broadview confidential and so please keep our relationship with » >Broadview as such, under our NDA. Broadview does not have disclosure >of » >how the D2D internals operate and so please do not discuss with them >the » >specifics about the D2D internal circuits. » > » >Prashant, as to further additions to the extended NDA I would prefer >to » >wait until you or Marv have had an opportunity to have a dialog with » >David Creamer. David is prepared to have a discussion as quickly as >you » >would like, so I don't believe this would delay anything for very >long. » > » >Also, I have asked Broadview to update you folks on the progress



Exhibit 16

Qualcomm Incorporated has sought leave to file this document under seal.


Exhibit 17



Exhibit 18



EXPERT REPORT OF TIM A. WILLIAMS CONCERNING OBJECTIVE INDICIA OF NONOBVIOUSNESS

PARKERVISION V. QUALCOMM

CASE NO. 3:11-CV-719-J-37-TEM



-13-

to the required level of specification. Success also depends on the timing of the

availability of the IP. That is, the IP must be better than the technology that is currently

available to internal design teams. Typically, successful IP licensing programs must

demonstrate that the technology to be licensed will accelerate a company’s entry into the

market with competitive or advanced performance or features.

B. History of Qualcomm’s Receiver Product Development

44. Until the late 1990s, Qualcomm used superheterodyne architectures in its

cellular receiver designs. I understand from my conversations with Rob Gilmore and

Paul Peterzell that in late 1998 or early 1999, Qualcomm initiated its first formal direct

conversion integrated circuits design project for cellular applications, which later came to

be known as the Zero Intermediate Frequency (“ZIF”) project.3 Paul Peterzell acted as

system designer for the project. The goal of the ZIF project was to develop a direct

conversion solution to replace the superheterodyne architecture in the downconverting

portion of Qualcomm’s receivers.4

45. Mr. Peterzell, working with Qualcomm’s IC design team, used

Qualcomm’s superheterodyne receiver design as a starting point for Qualcomm’s initial

direct conversion design for cellular applications. Several circuitry blocks within the

receiver were eliminated from the full superheterodyne design and the remaining blocks

were redesigned.5 By the end of 1999, the team had completed the redesign and built a

3 As part of my research, I spoke separately with Rob Gilmore and Paul Peterzell regarding

Qualcomm’s ZIF development. Except where otherwise noted, I rely on my conversations with Mr. Gilmore and Mr. Peterzell for the facts in this section.

4 See, e.g., QCPV011417627-693 at QCPV011417641-642.

5 See, e.g., id.



-14-

working prototype.6 The resulting product was named the RFR6000. The down-

converting portion of the RFR6000 receiver was comprised of an active Gilbert cell

mixer downconverter design that was similar to the one Qualcomm had used in prior

superheterodyne designs. This ZIF design was “taped out” – i.e., sent to the

manufacturer for production – at the end of 20017 and the first engineering samples were

shipped on March 31, 2002.8 It is my understanding that ParkerVision has not accused

any of Qualcomm’s active mixer receivers (e.g., the RFR6000) of infringing the Patents-

in-Suit and has admitted that active mixers were in existence prior to ParkerVision’s

inventions embodied in the Patents-in-Suit.9 Qualcomm developed several follow-on

direct conversion receiver products from 2002 through 2006 using the same active

Gilbert cell mixer receiver architecture, including the RFR6002, RFR6120, RFR6122,

RFR6125, RFR6200, RFR6202, RFR6250, RFR6300 and RFR6275.10

46. In the mid 2000s, Qualcomm started to design products using passive

mixers instead of active mixers in the receiver downconversion circuitry. As explained in

more detail below,11 Qualcomm acquired Berkana Wireless, Inc. (“Berkana”) on

December 30, 2005, and incorporated Berkana’s existing passive mixer architecture into

6 See QCPV011456162-164 at QCPV011456162.

7 See QCPV011402953-954 at QCPV011402953 (citing an 8/7/01 expected tape out date for the RFR6000); QCPV005739882-892 at QCPV005739889 (citing new tape out date of 9/5/2001).

8 See QCPV011410409.

9 See Plaintiff ParkerVision Inc.’s Disclosure of Asserted Claims and Infringement Contentions, dated March 2, 2012; Sorrells I Dep. 83:10-13, Nov. 30, 2012.

10 See QCPV011406120-127 at QCPV011406122-123; QCPV005484466-545 at QCPV005484469-470; QCPV005474415-458 at QCPV005474416.

11 See Section III. A. 1. d) ii.



-15-

the design of the RTR6285, the first Qualcomm RF product to use a Gilbert-quad passive

mixer core to implement a receiver front-end that performed direct downconversion.12

Qualcomm announced the release of the RTR6285 in February 2006,13 and the “dock

date” for the RTR6285 – i.e., the date the first prototype of the RTR6285 was imported

into the United States – was October 28, 2006.14 I understand that Qualcomm has since

developed many follow-on products using a passive mixer architecture design based on

the design incorporated into the RTR6285. Qualcomm subsequently acquired additional

passive mixer architecture designs through an asset purchase agreement with RFMD

WPAN Inc. (“RFMD”) on December 1, 2006 and the acquisition of Atheros

Communications, Inc. (“Atheros”) on December 30, 2011.15

47. A timeline of Qualcomm’s receiver development is depicted in Figure 2

below:16

12 See QCPV011163365-406 (reviewing Berkana receiver architecture for purposes of

implementation in RTR6285).

13 QCPV009411884-885; Press Release, Qualcomm, Qualcomm Announces World’s First Single-Chip, RF CMOS UMTS Transceiver with Integrated Receive Diversity and GPS (Feb. 13, 2006), available at http://www.qualcomm.com/media/releases/2006/02/13/qualcomm-announces-worlds-first-single-chip-rf-cmos-umts-transceiver.

14 Qualcomm’s First Supplemental Objections and Responses to ParkerVision’s First Set of Interrogatories (Nos. 1-9), Supplemental Exhibit A at A.11.

15 See QCPV011122213; Press Release, Qualcomm, Qualcomm to Acquire Atheros, Leader in Connectivity & Networking Solutions (January 5, 2011), available at http://www.qualcomm.com/media/releases/2011/01/05/qualcomm-acquire-atheros-leader-connectivity-networking-solutions; QCPV011163329-332 at QCPV01116329.

16 See QCPV011456162-164 at QCPV011456163; QCPV011414520; QCPV011452297-315; QCPV011401256-258; QCPV005739882-892 at QCPV005739889; QCPV011410409; QCPV009411922-923; QCPV009411884-885; Press Release, Qualcomm, Qualcomm Announces World’s First Single-Chip, RF CMOS UMTS Transceiver with Integrated Receive Diversity and GPS, (Feb. 13, 2006), available at http://www.qualcomm.com/media/releases/2006/02/13/qualcomm-announces-worlds-first-single-chip-rf-cmos-umts-transceiver; Qualcomm’s First Supplemental Objections and Responses to ParkerVision’s First Set of Interrogatories (Nos. 1-9), Supplemental Exhibit A at A.11.



-16-

Figure 2: Timeline of Qualcomm’s Receiver Development

III. Analysis of Objective Indicia of Nonobviousness

48. I understand that a patent claim can be found invalid if it is obvious to one

of ordinary skill in the art in view of the prior art. In making a determination whether a

claim is obvious, I understand that one must consider various factors that may tend to

show that the claim was not obvious, which have been called “objective indicia of

nonobviousness.” These include: (i) copying of the claimed invention by others; (ii)

commercial success of products incorporating the claimed invention; (iii) licensing of the

claim; (iv) prior art that teaches away from the claimed invention; (v) initial industry


Exhibit 19




Exhibit 20



Exhibit 21


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Qualcomm Announces World’s First Single-Chip, RF CMOS UMTS Transceiver with Integrated Receive Diversity and GPSSupport for Eight UMTS Bands, Four EGPRS Bands, Triple-Band Receive Diversity and GPS Integrated into Power-Optimized RTR6285 Device

SAN DIEGO – February 13, 2006 – Qualcomm Incorporated (Nasdaq: QCOM), a leading developer and

innovator of Code Division Multiple Access (CDMA) and other advanced wireless technologies, today

announced the industry's first single-chip UMTS radio frequency (RF) complementary metal oxide

semiconductor (CMOS) transceiver with receive diversity and GPS. The RTR6285™ is the world's most

advanced multi-mode UMTS/EGPRS transceiver with integrated receive diversity and GPS, providing global

roaming with multi-band UMTS and quad-band EGPRS. Integrated receive diversity on the RTR6285

transceiver enables increases in network capacity of up to 50 percent and of up to 100 percent for average

HSDPA data throughput. The integration of GPS functionality helps meet demand for location and emergency

services, while minimizing the cost of offering GPS by eliminating the need for many additional components.

“The RTR6285 transceiver's architecture provides the highest level of RF integration in the industry to achieve

the smallest footprint for a multi-band, multi-mode transceiver,” said Dr. Sanjay K. Jha, president of

Qualcomm CDMA Technologies. “This will enable device manufacturers to cost-effectively develop global

handsets with small and slim form-factors, while enabling increased capacity and throughput for network

operators with integrated receive diversity.”

The RTR6285 transceiver supports the following bands:

North American triple-band UMTS (bands 2, 4, 5)

Japanese triple-band UMTS (bands 1, 6, 9)

European, Chinese and rest-of-world triple-band UMTS (bands 1, 3, 8)

Global quadruple-band GSM and EDGE (800/900/1800/1900 MHz)

The RTR6285 transceiver features cost-effective 0.18 micron RF CMOS process technology to improve talk

and standby time and enhance performance. Innovative circuit design and topology further reduces handset

bill-of-materials costs by eliminating external passive components, such as select surface acoustic wave

filters, through integration and design architecture. A compact 8mm x 8mm package enables slim, sleek form-

factors for mobile handsets by replacing existing two-chip UMTS receive diversity RF chipset solutions.

› News and Media › Press Releases › Qualcomm Announces World’s First Single-Chip, RF CMOS UMTS Transceiver with...

Chipsets Technologies Solutions Search Qualcomm

Effective October 1, 2012, QUALCOMM Incorporated completed a corporate reorganization in which the assets of certain of its businesses and groups, as well as the stock of certain of its direct and

indirect subsidiaries, were contributed to Qualcomm Technologies, Inc. (QTI), a wholly-owned subsidiary of QUALCOMM Incorporated. Learn more about these changes ▶▶▶▶

Page 1 of 3Qualcomm Announces World’s First Single-Chip, RF CMOS UMTS Transceiver with Integrated Receive ...

5/22/2013http://www.qualcomm.com/media/releases/2006/02/13/qualcomm-announces-worlds-first-single-chip-rf-c...


Sampling is scheduled for the fourth quarter of 2006 as part of complete Mobile Station Modem™ (MSM™)

chipset solutions. The RTR6285 transceiver is compatible with the MSM7200™, MSM6280™, MSM6260™,

MSM6255A™ and MSM6245™ chipsets for UMTS networks, as well as the UMTS/CDMA2000® MSM7600™

chipset solution.

Mobile receive diversity combines RF signals from multiple antennas in order to improve overall received

signal strength, thereby enabling significant increases in network capacity. In addition, it enables mobile

devices to experience higher average data throughput at the cell edge for mobile broadband cellular data

networks. Receive diversity allows for better cellular coverage and in-building penetration, improved quality of

service with fewer dropped calls, and enhancement of all wireless services, including voice calls, mixed voice

and data traffic, voice over Internet Protocol applications and Multimedia Broadcast Multicast Services. The

RTR6285 transceiver's integration of receive diversity technology specifically reduces manufacturers' bill-of-

materials costs by eliminating the need for additional external radio components.

For more information on the RTR6285 transceiver, please visit www.umtschips.com/rtr6285.

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 on The Nasdaq Stock Market® under the ticker symbol QCOM.

Except for the historical information contained herein, this news release contains forward-looking statements

that are subject to risks and uncertainties, including the Company's ability to successfully design and have

manufactured significant quantities of CDMA components on a timely and profitable basis, the extent and

speed to which CDMA is deployed, change in economic conditions of the various markets the Company

serves, as well as the other risks detailed from time to time in the Company's SEC reports, including the report

on Form 10-K for the year ended September 25, 2005, and most recent Form 10-Q.

###

Qualcomm is a registered trademark of Qualcomm Incorporated. Mobile Station Modem, MSM, MSM7200, MSM7600, MSM6245, MSM6280, MSM6260, MSM6255A

and RTR6285 are trademarks of Qualcomm Incorporated. CDMA2000 is a registered trademark of the Telecommunications Industry Association (TIA USA). All other

trademarks are the property of their respective owners.

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©2013 QUALCOMM Incorporated. All Rights Reserved.

Nothing in these materials is an offer to sell any of the components or devices referenced herein. References to “Qualcomm” may mean Qualcomm Incorporated, or subsidiaries or business units

within the Qualcomm corporate structure, as applicable. Click here for more information about Qualcomm’s new corporate structure




Exhibit 22



Exhibit 23


In The Matter Of:

PARKERVISION, INC.

v.

QUALCOMM INCORPORATED, ET AL.

___________________________________________________

30(b)(1) & 30(b)(6) JEFFREY PARKER - Vol. 1December 12, 2012

___________________________________________________

CONFIDENTIAL - ATTORNEYS' EYES ONLY


CONFIDENTIAL - ATTORNEYS' EYES ONLY30(b)(1) & 30(b)(6) JEFFREY PARKER - 12/12/2012

1-800-325-3376 www.merrillcorp.com/lawMerrill Corporation - New York

Page 260

1 transmit technology. And I believe we spoke to them

2 about our receive technology but at a very high level.

3 Q. "High level" meaning, they didn't see a

4 demonstration --

5 A. Right.

6 Q. -- or the underpinnings --

7 A. Correct.

8 Q. Okay. Are you familiar with a company called

9 Berkana Wireless?

10 A. You know, I think we went through them on this

11 list. I recall them being a startup.

12 Q. I think on the list was Bergana, a whole

13 another company.

14 A. Oh, sorry.

15 Q. I am asking you about Berkana.

16 A. I think that was another startup. And as I

17 recall, they were a startup trying to do some

18 wireless -- I can't remember if it was basebands or

19 transceivers. I never met with Berkana, personally. I

20 think that some of my staff met with Berkana. I think

21 they were based out in Silicon Valley area.

22 Q. And do you know who at ParkerVision may have

23 met with Berkana?

24 A. I don't. I remember the name, but I honestly

25 don't recall who met with them.


CONFIDENTIAL - ATTORNEYS' EYES ONLY30(b)(1) & 30(b)(6) JEFFREY PARKER - 12/12/2012

1-800-325-3376 www.merrillcorp.com/lawMerrill Corporation - New York

Page 261

1 Q. Do you know of any agreements that were

2 executed between ParkerVision and Berkana?

3 A. I don't know of any agreements we executed with

4 Berkana.

5 Q. Are you aware of any knowledge that was

6 transferred to -- from ParkerVision to Berkana regarding

7 RF energy sampling?

8 A. Not that -- not that I am aware of.

9 Q. Are you familiar with a company named -- I

10 think you are, since you have used it before in selling

11 of stock.

12 You are familiar with a company named

13 Atheros.

14 A. I am.

15 Q. Atheros Communications, Inc.

16 A. Sure.

17 Q. And you're familiar with the fact that QUALCOMM

18 acquired Atheros a couple years ago, right?

19 A. Yes.

20 Q. Prior to QUALCOMM acquiring Atheros, had anyone

21 from ParkerVision had any contact with Atheros?

22 A. I visited Atheros.

23 Q. When did you visit Atheros?

24 A. That would have been in the late 2000s and it

25 was, specifically, to talk about your transmit tech --


Exhibit 24


-1-

UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA

JACKSONVILLE DIVISION PARKERVISION, INC., Plaintiff, v. QUALCOMM INCORPORATED, Defendant. QUALCOMM INCORPORATED, Counterclaim Plaintiff, v. PARKERVISION, INC., AND STERNE, KESSLER, GOLDSTEIN, & FOX PLLC, Counterclaim Defendants.

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

PLAINTIFF PARKERVISION INC.’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS

Plaintiff ParkerVision, Inc. (“ParkerVision”) hereby makes the following disclosure of

asserted claims and infringement contentions under the agreed case management report with

respect to U.S. Patent Nos. U.S. Patent Nos. 6,061,551 (the “’551 patent”), 6,266,518 (the “’518

patent”), 6,370,371 (the “’371 patent”), 6,963,734 (the “’734 patent”), 7,496,342 (the “’342

patent”), and 7,724,845 (the “’845 patent”) (collectively, the “patents-in-suit”), to Defendant

Qualcomm Inc. (“Qualcomm” or “Defendant”).

ParkerVision’s investigation is ongoing, and discovery is in its early stages. Accordingly,

these disclosures are based on information available to ParkerVision at this time. ParkerVision

reserves the right to supplement this disclosure after further discovery from Qualcomm,


-2-

particularly documents and other discovery regarding Qualcomm’s accused instrumentalities.

ParkerVision also reserves the right to assert additional claims of the patents-in-suit, accuse

different instrumentalities, or assert alternative literal and/or equivalent infringing elements in

Qualcomm’s accused instrumentalities.

I. INFRINGEMENT CONTENTIONS

A. Asserted Claims

ParkerVision contends that Qualcomm has infringed and continues to infringe claims 1,

2, 3, 8, 9, 12, 16, 20, 23, 24, 25, 26, 31, 32, 39, 41, 50, 54, 55, 57, 92, 93, 108, 113, 126, 135,

149, 150, 161, 192, 193, 195, 196, 198, 202, and 203 of the ’551 patent; claims 1, 2, 3, 12, 17,

24, 27, 77, 81, 82, 90 91 of the ’518 patent; claims 1, 2, 22, 23, 25, 31 of the ’371 patent; claims

1, 4, 5, 6, 9, 12, 13, 14, 15 of the ’734 patent; claims 18, 19, 20, 21, 22, 23 of the ’342 patent;

and claims 1, 3, 4, 5, 6, 7, 8, 9, 12, 13, 17, 18, 19, 20, 22, 23, 24 of the ’845 patent (collectively,

the “asserted claims”).

ParkerVision reserves the right to seek leave of the Court to add, delete, substitute, or

otherwise amend this list of asserted claims should further discovery, the Court’s claim

construction, or other circumstances so merit.

B. Accused Instrumentalities and Accused Products

ParkerVision identifies Qualcomm’s MDM6085, MDM6200, MDM6270, MDM6600,

MDM6610, MDM8200, MDM8200A, MDM8215, MDM8220, MDM8225, MDM8615,

MDM8655, MDM9200, MDM9225, MDM9600, MDM9625, QSC1100, QSC1110, QSC6010,

QSC6020, QSC6055, QSC6065, QSC6075, QSC6085, QSC6130, QSC6145, QSC6155,


QSD8250, QSD8650, QTR8200, QTR8600, QTR8600L, QTR8601, QTR8615, QTR8615L,

RFR6120, RFR6122, RFR6125, RFR6135, RFR6155, RFR6170, RFR6175, RFR6185,


-3-

RFR6500, RFR6525, RTR6285, RTR6350, RTR6500, RTR8600, RTR8600L, RTR8601,

RTR8605, RTR8700, RTR9605, WCD9304, WCD9310, WCD9320, WCN1310, WCN1312,

WCN1320, WCN2243, WCN3660, WTR1605, and WTR1605L products as “Accused

Products.” Of the Accused Products, ParkerVision identifies Qualcomm’s QSC6010, QSC6020,


QSC6175, QSC6185, QSC6195, QSC6240, RFR6120, RFR6122, RFR6125, RFR6135,

RFR6155, RFR6170, RFR6175, RFR6185, RFR6500, RFR6525, RTR6285, RTR6350,

RTR6500, WCD9304, WCD9310, WCD9320, WCN1310, WCN1312, WCN1320, WCN2243,

and WCN3660 products as “Fifty Percent Duty Cycle Accused Products.” As discovery is

ongoing, ParkerVision reserves the right to update or modify its list of Accused Products and

Fifty Percent Duty Cycle Accused Products.

The circuitry in the Accused Products that converts a signal on a carrier frequency to

baseband without conversion to an intermediate frequency, as identified in claims charts, is the

Accused Instrumentality.

C. Claim Charts

Claim charts showing infringement of the asserted claims by the Accused Products are set

forth as Attachments A.1 through A.6.

D. Literal Infringement and Doctrine of Equivalents

Except as stated otherwise in the claim charts, ParkerVision asserts that, under the proper

construction of the asserted claims, every limitation of the Asserted Claims of the Patents-in-Suit

is literally present in Qualcomm’s Accused Products. The claim charts further indicate where

ParkerVision contends that a claim limitation is met under the doctrine of equivalents in addition

to and as an alternative to literal infringement. ParkerVision reserves its right to amend its


-4-

infringement contentions to specifically assert infringement under the doctrine of equivalents to

account for Qualcomm’s proposed claim constructions.

E. Priority Dates

ParkerVision contends that the asserted claims of the patents in suit are entitled to a

priority date of no later than the dates specified in the following chart:

Patent Priority Date

6,061,551 October 21, 1998

6,266,518 October 21, 1998

6,370,371 claim 1: March 3, 1999

all other asserted claims: October 21, 1998

6,963,734 March 14, 2000

7,496,342 May 16, 2001

7,724,845 March 9, 2000

F. ParkerVision’s Products that Practice the Asserted Claims

ParkerVision’s Ellis product practices all asserted claims. ParkerVision’s PV20xx series

integrated circuits practice all asserted claims.

II. DOCUMENT PRODUCTION

ParkerVision intends to produce all relevant, non-privileged documents at this time.

However, the search for documents is ongoing, and ParkerVision reserves the right to

supplement its production and disclosures as deemed appropriate and necessary in the future.

Documents sufficient to evidence each discussion with, disclosure to, or other manner of

providing to a third party, or sale of or offer to sell, the claimed invention prior to the dates of

applications for the patents-in-suit are located at PV00028373-PV00028427.


-5-

The file histories of the patents in suit are located at PV00000214-PV00008384,

PV00008592-PV00010418, PV00010518-PV00012433, PV00012577-PV00013566,

PV00013971-PV00015654, and PV00015843-PV00028372.


-6-

January 30, 2012

Respectfully submitted, McKOOL SMITH, P.C. /s/ Douglas A. Cawley Douglas A. Cawley, Lead Attorney Texas State Bar No. 04035500 E-mail: [email protected] John Austin Curry Texas State Bar No. 24059636 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] 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.


-7-

CERTIFICATE OF SERVICE

I HEREBY CERTIFY that on this day, January 30, 2012, the foregoing document was

electronically served via email on counsel of record per the parties’ agreement.

/s/ Austin Curry

John Austin Curry


Exhibit 25







Exhibit 26


1 McKool 836140v6

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

JACKSONVILLE DIVISION PARKERVISION, INC.,

Plaintiff,

v.

QUALCOMM INC.,

Defendant.

§ § § § § § § § § § §

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

Jury Trial Demanded

OPENING EXPERT REPORT OF DR. PAUL PRUCNAL


44 McKool 836140v6

Sample-and-hold and track-and-hold impulse samplers have two main negative

characteristics compared to other types of passive mixers downconverters: (1) they accurately

track any noise and/or interference in the input signal; and (2) they have greatly reduced dynamic

range.

During the sampling instant of a sample-and-hold or a track-and-hold sampler, the

sampler’s capacitor voltage assumes the value of the input voltage plus the noise on the input

signal as quickly as possible (approximating an impulse response) with no memory from sample

interval to sample interval. It is my understanding that this would involve a small RC time

constant, which would not be possible if C is large, no matter how small the resistance is. A

small resistance would allow a large current, but the small capacitance would only allow

negligible amounts of energy to be transferred and stored. Thus, to generate an accurate voltage

sample, an impulse sampler does not transfer non-negligible amounts of energy.

Between sampling instants, a large output impedance is used so that the voltage plus the

noise at the sampling instants remains essentially flat “or is held” between samples. Any droop

or decay of the voltage sample is due to practical circuit parameters which degrades the accuracy

of the voltage sample.

3.4 Energy Sampling Direct Conversion

In an energy sampling direct down-converter, discrete energy samples are taken from the

modulated carrier signal and used to create a continuous power transfer to the load impedance.

Thus, ParkerVision’s energy sampling approach uses the modulated carrier signal’s own energy

to recreate the original baseband information that was modulated on the carrier signal, which is

different from other sampling down-converter receiver designs.50 By integrating the energy

50 Dep. of Charles Wheatley (Nov. 7, 2012) at 261-62, 266-67, 273.


45 McKool 836140v6

taken from the modulated carrier signal, including any noise therein, over a non-negligible

aperture period, the energy from the modulated carrier signal is down-converted to the baseband

signal and the baseband information can be extracted. At the same time, because the noise is

also integrated, the energy sampler acts as its own filter which reduces the noise and provides an

improved baseband signal to noise (SNR) performance. Although this process may distort the

carrier voltage waveform, such voltage distortion is a consequence of the energy sampling

process. Thus, energy sampling is capable of performing two functions simultaneously: (a)

demodulating the baseband signal from the modulated carrier signal and (b) filtering out noise.

Figure 11: Energy Sampler

Direct conversion receivers based on energy sampling downconverters generate the

baseband signal by transferring and accumulating energy from the modulated carrier signal onto

a storage element such as a capacitor. The modulated carrier signal is received by an antenna

and then amplified by an LNA (shown in Figure 11). When the switch closes, non-negligible

current from the RF carrier signal is allowed to flow into a relatively large capacitor. The

capacitor accumulates and stores energy while the switch is closed. When the switch opens, part

of the accumulated non-negligible energy in the capacitor is transferred to the load impedance—

which is the impedance of the next stage of the receiver circuit—creating a sawtooth-like


46 McKool 836140v6

waveform and generating the baseband signal. For example, the RTR8600 employs a switched

capacitor circuit to create an equivalent resistive load at the output of the demodulator.51 Unlike

other passive mixers, however, the energy sampler’s sawtooth-like waveform at the integrating

or storage element does not return to zero but, instead, it only discharges approximately half of

its accumulated energy. While the carrier signal is only sampled when the switch is closed, the

energy sampling circuit is transferring some energy to the load impedance of the next stage when

the switch is both open and closed. Thus, while the energy sampler is a discrete time sampling

circuit, the energy transfer to the load impedance is continuous.

As described above, the changes in the modulated carrier signal’s phase, frequency, or

amplitude represent the ones and zeros of the original digital information. By sampling the

energy of the modulated carrier signal, the receiver down-converts the modulated carrier signal

to a lower frequency and/or baseband signal and the ones and zeros of the original information

can be digitally processed. ParkerVision’s energy sampling approach recognizes that it is only

necessary to accurately reproduce the original baseband information rather than the modulated

carrier signal upon which the baseband information was encoded.

ParkerVision’s patented energy sampling technology (an innovation that has been

variously described as a “25% or 50% duty cycle passive mixer”, “charge domain receiver”,

“window integrating sampler”, or “direct sampling mixer”, among others), has performance

characteristics exceeding previous down conversion methods.52 Modern devices, such as cell

phones, are decreasing in size, using lower voltage semiconductors, and employing a wider range

of wireless protocols, which have led industry to adopt a down conversion architecture that can

51 See QCS1PV002000-02, QCS1PV0002361, QCS1PV0002376. Qualcomm has refused to provide signal waveforms or timing diagrams as requested by ParkerVision’s Interrogatory Number 25.

52 See PV00463886.


47 McKool 836140v6

achieve high performance under these constraints.53 In energy sampling, a signal’s energy is

transferred and accumulated in a storage device (often, but not limited to, a capacitor), where

controlled charge/discharge cycles create the downconverted baseband signal—which is the

information sent on the carrier.54 Whereas voltage sampling creates a high impedance path, thus

requiring large and impractical amplification of the input signal, energy sampling transfers

energy from the input to the output creating a low impedance path.55 The energy sampling

method creates an efficient system which requires less power, has greater dynamic range and

sensitivity, and uses less physical space compared to previous down conversion architectures.56

Among other attributes, it is also flexible in that it is able to downconvert signals in accordance

with multiple wireless protocols within a single integrated circuit.57 Because of its low cost, low

power consumption, and small size, ParkerVision’s energy sampling technology allows

increased performance, such as diversity receivers and multi-mode multi-band operation on a

single IC using today’s small geometry semiconductors with low voltages while eliminating

SAW filters, which cannot be accomplished in a cell phone with other demodulation

techniques.58

In an energy sampling circuit, during non-negligible apertures, a portion of the energy

(voltage times current times time) from the input signal is transferred to capacitive storage

circuitry. Between energy sampling aperture periods, a portion of the energy stored in the

capacitive storage circuitry is transferred to a low output impedance. What occurs between

53 Id.; see also http://www.wired.com/gadgetlab/2013/02/qualcomm-new-lte-chip/. 54 Id. 55 Id. 56 Id. 57 Id. 58 See http://www.eetimes.com/design/microwave-rf-design/4016178/Receive-diversity-helps-maximizing-throughput-in-HSDPA-networks.


48 McKool 836140v6

samples in energy sampling is the opposite of impulse sampling where the sample voltage is held

(no or negligible current flows) until the next sample occurs. If the charge/discharge cycle is

observed on an oscilloscope at the output of the energy sampler, it creates a “sawtooth” like

waveform. Observing this waveform indicates that energy is being transferred from the input to

the output and the baseband signal is being generated by the transferred energy.

It is my understanding that when down-conversion is done using energy sampling, the

output of the LNA is coupled through impedance matching circuitry that transfers the desired

amount of power from the LNA output to the input of the energy sampler.59 The energy sampler

switch or switches are gated open for an aperture that is a large fraction of the period of the radio

wave, such as 25%, also called a 25% “duty cycle.” The switch then closes for a time interval

that may be the remainder of duration of the period of the radio wave, such as 75%. For

example, if the carrier frequency is 1 GHz, a 25% aperture or duty cycle corresponds to the

switch being open for 0.25 nsec and closed for 0.75 nsec.

It is my understanding that, while the switch is closed during the aperture, in an energy

sampler, energy from the LNA are transferred to a capacitor by the flow of current into the

capacitor, transferring charge. The ability of the capacitor to store charge is determined by its

capacitance C, measured in Farads, and is related to the voltage on the capacitor by the relation

Q = CV. The flow of current into the capacitor over time is therefore determined by the

differential relation i(t) = CdV(t)/dt, or in other words, integrating the current and accumulating

the charge increases the energy stored in the capacitor resulting in an increased voltage on the

capacitor. It is important to note the resultant voltage on the capacitor as a result of energy

sampling may not be an accurate representation of the input voltage because current (charge) is

59 Discussions with David Sorrells.


49 McKool 836140v6

being transferred. The function that relates the capacitor voltage resulting from energy transfer is

characterized by its time constant, given by τ = RC, where R is the equivalent resistance of the

circuit seen by the capacitor. Transferring a substantial amount of energy to the capacitor

requires a relatively large capacitance to store the charge, a relatively small resistance so that

current will flow in to the capacitor, allowing the resultant voltage to increase with a time

constant that is appropriate for the aperture size, and having a sufficiently large aperture to allow

the capacitor to charge substantially and store and integrate energy.

For example, using a transimpedance amplifier as the LNA before the switch can provide

the low resistance required for efficient current flow into the capacitor. Also, it is my

understanding that the switch itself should have a low series resistance. At the end of the

aperture period, the potential energy stored on the capacitor is E = 0.5Q2/C or E = 0.5CV2. This

indicates that using a large capacitance C to store a substantial amount of charge increases the

energy transferred into the capacitor. The expressions also show that transferring substantial

energy requires having a sufficiently large aperture to enable energy and charge to be transferred

to the capacitor and increase the resultant voltage due to energy sampling. Thus, efficient energy

transfer into the capacitor involves several interdependent factors: efficient impedance matching

from the input circuit to the energy sampler input switch or switches, a relatively large capacitor

to store charge, a low equivalent resistance during charging to enhance current flow and to

provide a charging time constant that is commensurate with the aperture size, and a large

aperture size to enable the accumulation of charge on the capacitor.

It is my understanding that, at the end of the charging aperture, the switch or switches in

an energy sampler open and the capacitor discharges a portion of its charge to a load such as an

amplifier or a passive impedance network. For efficient power transfer, an impedance matching


50 McKool 836140v6

network should be used to deliver the desired amount of power from the capacitor to the

amplifier or passive impedance network. In addition, the output impedance seen by the capacitor

when the switch is open should be relatively low to allow current flow and charge (energy)

transfer to the output. A relatively low or small output impedance will result in a discharge time

constant RoutC, keeping in mind that a relatively large capacitance was chosen for charge storage.

The product RoutC is chosen so that the initial capacitor voltage decreases substantially during

the discharge cycle, transferring substantial energy to the output. However, the capacitor should

not discharge all of its energy when the switch or switches are open, because then the energy

sampling process would not allow the charge/discharge cycle to generate the baseband signal

waveform over time. Because each information bit may contain tens, hundreds, or thousands of

cycles of the RF carrier waveform, there are correspondingly tens, hundreds, or thousands of

energy samples taken per bit of baseband information, allowing the baseband signal to be

generated using the transferred energy which moves in a sawtooth-like fashion toward the

desired value of the baseband signal.

Thus, it is my understanding that the energy sampling process accurately reproduces the

baseband signal while efficiently transferring energy from the input LNA to the output of the

energy sampler. Because a large storage element is used, the energy sampler reduces the noise

power by low-pass filtering of the signal, thus smoothing out high frequency fluctuations. This

benefits both the signal-to-noise ratio and the noise figure of the system. In addition, because the

sampling process is energy-efficient, insertion loss is reduced and lower gain amplification

stages can be used, improving linearity, IIP2, and IIP3.

Receivers based on energy sampling technology have several advantages over receivers

based on traditional technologies. Receivers based on energy sampling have significantly


51 McKool 836140v6

improved sensitivity to weak carrier signals in the presence of large signal interferers and noise

due to their high dynamic range. Energy samplers have excellent linearity characteristics (IIP2,

IIP3) and a low path loss and noise figure. Their dynamic range is further increased because the

energy sampler integrates the noise over the aperture period or duty cycle which further increases

the output SNR. In contrast, the dynamic range of superheterodyne and traditional direct

conversion receivers is limited by the lower linearity and higher SNR of their active, continuous-

time down-converters or mixers. These traditional down-converters also require isolation

between their I and Q inputs. Power splitters or power splitter circuitry is used to meet the I and

Q isolation requirements and avoid the effects of cross-coupling. Passive power splitters add to

the conversion loss of the down-converter and power splitter circuitry increases the noise figure

and power consumption. Increased conversion losses and increases in noise figure requires more

receiver front end gain which further reduces the receiver’s overall linearity and dynamic range.

Conversely, energy samplers can sample the I and Q signals at discrete times and eliminate the

need for power splitters.

Due to the high dynamic range of energy sampling down-converters, the performance of

the receiver is increased and the design requirements for the remaining receiver circuitry is

reduced. In fact, ParkerVision’s WLAN products based on energy sampling had increased

dynamic range and increased sensitivity using fewer components than the competing

superheterodyne or traditional direct conversion WLAN receivers.60

Second, energy sampler based receivers reduce the effect of noise and interference. In

preserving the carrier signal waveform, traditional down-converter approaches also preserved the

noise introduced into the carrier signal. Energy sampling down-converters, however, reduce the

60 Discussions with David Sorrells.


52 McKool 836140v6

noise on the discrete time signal transferred to the output of the mixer; this is because they

integrate energy over a large sampling window and because they can integrate the energy from

multiple samples per data bit and in the process integrate and reduce the noise. Moreover,

energy sampling receivers unify demodulation (or data extraction) and filtering into a single

process and allow the removal of the power splitter or power splitter circuitry required by other

mixers.61 Traditional receivers used certain filtering steps after generating a baseband signal to

reject unwanted signals, whether from adjacent channels or random noise.

Finally, energy sampling eliminates multiple filtering and conversion steps, resulting in

fewer components, a smaller form factor, and reduced cost related to superheterodyne and other

direct conversion receivers. Compared to a superheterodyne receiver, an energy sampling

receiver does not have an IF stage and, therefore, it does not require an IF SAW filter, an IF

Variable Gain Amplifier (“VGA”), an IF local oscillator and control circuitry, or an IF mixer.62

Additionally, the energy sampling approach eliminates the need for large discrete or external

filters before the down-converter (such as an RF SAW filter) and the power splitter or power

splitter circuitry that isolates the I and Q RF carrier signals because its noise figure is low and

linearity, including its IIP3 and IIP2, is high—both SAW filter and the power splitter are

required in other direct-conversion receivers.63 Without these extra components, an energy

sampler is much more size- and cost-efficient—which allows the overall circuit to be much

smaller and consume less power in a market where “best-in-class performance, die size and

61 “Since we [Qualcomm] use resistor Ro to split the I/Q at the mixer, the I & Q paths should not be ON at the same time, else NF will degrade.” QCPV000000310. Qualcomm has also stated that it “[n]eed[s] separate mixers to isolate LNA outputs.” QCPV000000307. Both of these design constraints are because it does not have a power splitter in the circuit. 62 Dep. of Charles Persico (Oct. 23, 2012) at 202, 204-06; Dep. of Charles Wheatley (Nov. 7, 2012) at 244-45.

63 See QCPV010787084.


53 McKool 836140v6

current drain can be a key product differentiator.”64 Additionally, with the smaller size and

power consumption, the energy sampler opens the door for large increases in functionality in

terms of the number of cellular standards and cellular frequency bands that can be met per

receiver IC. For example, a phone employing energy sampling technology could incorporate

CDMA, WCDMA, GSM, GPS, and other cellular standards on a single receiver—allowing the

end user much greater flexibility and connectivity.

4. Non-Infringing Alternatives

It is my understanding that Qualcomm has argued that several devices, such as the

superheterodyne-based IFR3000, are acceptable non-infringing alternatives to ParkerVision’s

energy sampling D2D technology for cellular communication devices.65 It is also my

understanding that Qualcomm has alleged that the RTR6275, a member of the GZIF3

architecture, is a possible non-infringing alternative.66 After my review of this case, however, I

believe that the RTR6275 infringes the claims of the Patents-in-Suit and, thus, cannot be a non-

infringing alternative.67 I am not presently aware of any acceptable non-infringing, alternatives

to the inventions claimed in the asserted claims of the Patents-in-Suit, including energy sampling

for use as a downconverter in cellular phones. Nor has Qualcomm identified any acceptable,

non-infringing alternatives. In the paragraphs below, I will discuss why each of the alleged

acceptable non-infringing alternatives are not acceptable.

In general, superheterodyne mixers, active mixers, and voltage samplers would not serve

as workable non-infringing alternatives because none of these circuits meet the same

64 D. Kaczman, et al., A Single-Chip 10-Band WCDMA/HSDPA 4-Band GSM/EDGE SAW-less CMOS Receiver With DigRF 3G Interface and +90 dBm IIP2, IEEE J. of Solid-State Circuits, 718-38 (Mar. 2009). 65 Qualcomm’s Second Supplemental Resp. to ParkerVision’s Interrog. No. 7 (Sept. 4, 2012). 66 Id. 67 For a detailed analysis of RTR6275’s infringement of the Patents-in-Suit, see Appendices A-F.


59 McKool 836140v6

downconvert signals in accordance with multiple wireless protocols without the power, size, and

cost penalties associated with other down-conversion techniques.79

Because asserted claims 39 and 161 of the ’551 Patent and claims 3, 4, 5, 6, 7, 12 of the

’845 Patent include a “half cycle limitation” and claim 13 of the ’845 Patent includes a “1.5

cycle limitation,” Qualcomm argues that all products that use a 25% duty cycle are non-

infringing alternatives for each of those claims. However, products that use a 25% duty cycle

infringe the asserted claims of the Patents-in-Suit that do not have a half-cycle limitation and,

therefore, are not acceptable, non-infringing alternatives for any of those claims.

Thus, it is my opinion that there are no acceptable non-infringing alternatives to the

energy sampling invention taught in the Patents-in-Suit. This conclusion is further supported by

Table 1, which compares exemplary cost, component count, and size of Qualcomm’s

superheterodyne receivers, analog mixer receivers, and Accused Products. Figure 13 provides

images of cell phones used for the comparative analysis in Table 1; Figure 14 provides images of

the boards compared in Table 1, with the receiver’s portion of the board outlined in orange and

the receiver/transmitter shared portion of the board outlined in a purple-dotted line.

79 See sources cited supra note 73.


113 McKool 836140v6

claiming different embodiments of an invention, and thus file a continuation application to

protect those different embodiments.

10. My Infringement Analysis

10.1 Detailed Infringement Analysis

As a part of its pre-suit investigation of Qualcomm’s products, ParkerVision’s legal

counsel purchased a reverse engineering analysis and report from UBM TechInsights on the

QSC6270 integrated circuit, which is based on Qualcomm’s Solo design architecture. The UBM

TechInsights analysis and report show detailed circuit schematics and the circuit layout found in

the QSC6270, specifically the analog and mixed signal receiver circuitry.

Based on the infringement report and other publically available documents related to the

Accused Products, ParkerVision knew that a majority of Qualcomm’s RF receivers would have

the same infringing architecture. Thus, ParkerVision has accused the following Qualcomm RF

receiver design architectures of infringement of the Patents-in-Suit: Astra, Bahama, Bali,

Catalina, Clemente, Eagleray, Fiji, Fury, GZIF3, GZIF4, Halley, Hercules, Iceman, Iris,

Libra/Gemini, Magellan, Marimba, Merlin (QCT), Napoleon, Odyssey, Ramsis, Solo, Spitfire,

Tomahawk, Volans, Voltron, and Ywing. These design architectures correspond to the

following individual integrated circuits:

RGR6240, WCN2243, RGR6240, WCN2243, BTS4020, BTS4020BD, BTS4021, BTS4050, BTS4051, BTS4052, BTS4054, BTS4055, BTS5045, FTR8700, BTS4025, MBP2700, RTR6275, RTR6236 RTR6237, RTR6280, RTR6285, RTR6285A, MXU6219, RGR1000, RGR1100, QTR9215, RTR8700, RTR9605, WCN3660, WCN1312, MDM6200, MDM6600, QSC6155, QSC6165, QSC6175, QSC6185, QSC6195, QSC6295, QSC6695, QTR8200, QTR8201, QTR8215, QTR8600, QTR8600L, QTR8601, QTR8615, QTR8615L, RTR8201, RTR8600, RTR8601, RTR8605, QSC6155, QSC6165, QSC6175, QSC6185, QSC6195, QSC6295, QSC6695, QTR8200, QTR8201, QTR8600, QTR8600L, QTR8601, QSC1105, QSC1100, QSC1110, WTR1605, WTR1605L, QSC6055, QSC6065, QSC6075, QSC6085, MDM6085, QSC6270, QSC6240, MDM6270, ESC6270, ESC6240, MBP1600, MBP1610, MBP2600, WCN1314, RTR6500, MXC6369, WCN1320.


119 McKool 836140v6

10.1.2 Indirect Infringement

Since the issuance of the Patents-in-Suit, Qualcomm has continued to indirectly infringe

through active inducement and contributory infringement based on the Accused Products use

within the United States. The Patents-in-Suit are directly infringed by use of phones that employ

an Accused Product, such as phones from Apple, HTC, LG, Motorola, Nokia, Samsung, RIM,

Google, ZTE, and Palm. The method claims of the Patents-in-Suit are necessarily infringed by

use of phones from Apple, HTC, LG, Motorola, Nokia, Samsung, RIM, Google, ZTE, and Palm.

While Qualcomm has identified its U.S. and international corporate structure in its Response to

ParkerVision’s Interrogatory Number 18, I note that many of Qualcomm Inc.’s United States-

based corporate officers and employees hold the same or similar positions within its subsidiaries

such as Qualcomm Global Trading, Inc., Qualcomm Global Trading Pte. Ltd., Atheros

International LLC, Qualcomm Atheros, Inc., Qualcomm CDMA Technologies Asia-Pacific Pte.

Ltd., Qualcomm Technologies Inc., and Qualcomm Atheros Ltd.399

Additionally, it is my understanding that Qualcomm has had knowledge of the Patents-in-

Suit since at least May 26, 1999, when Jeff Parker and David Sorrells met with Ben Miller and

Charles Wheatley of Qualcomm to present ParkerVision’s patent filings.400 In particular

ParkerVision disclosed ten pending U.S. patent applications, including the application for what

became the ’551 Patent.401 In his deposition, Prashant Kantak even stated that he “was aware

that [ParkerVision] w[as] in the process of filing patents . . . I was told that they were. . . . I was

told by ParkerVision that they were filing patents.”402 In July 2000, Andy Oberst asked Prashant

399 Qualcomm’s Resp. to ParkerVision’s Interrog. No. 18; Qualcomm, Executive Officers, http://www.qualcomm.com/about/leadership (last visited Feb. 6, 2013). 400 PV00184931; see also QCPV001413470. 401 PV00184931; see also Dep. of Charles Persico (Oct. 23, 2012) at 124. 402 Dep. of Prashant Kantak (Oct. 19, 2012) at 82.


120 McKool 836140v6

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 D2D receiver technology.403 Kantak

responded that there was a risk only if Qualcomm decided “to go with [ParkerVision’s] direct

conversion technique.”404 In May 2002, Charles Wheatley, Klein Gilhousen, and Roberto

Padovani was made aware of ParkerVision’s U.S. Patent 6,370,371 regarding its D2D receiver

technology through a forwarded press release.405 A press release concerning the issuance of the

’551 Patent was found in the custodial files of Adam Tachner.406 A copy of the ’551 Patent was

found in the custodial files of Paul Peterzell.407 Qualcomm attorneys Sean English and Ray Hom

were aware of the ’551 Patents as of February 2001.408 Qualcomm attorneys Phil Wadsworth

and Charles Brown received email copies of documents protected by attorney client privilege

and work product doctrine that relate to the ’551 Patent.409 A copy of the prosecution history of

the ’551 Patent was found in the custodial files of Charles Brown.410 The prosecution history of

the ’551 Patent includes references to the then pending Patent Application Serial Number

09/376,359 which issued as the ’518 Patent and to the “Related Application” Serial Number

10/972,133, which issued as the ’342 Patent.411 Charles Persico testified that he was at least

403 QCPV001389982. 404 Id. 405 QCPV001575706 (email from Qualcomm co-founder Franklin Antonio). 406 Qualcomm’s Supplemental Response to ParkerVision’s Interrogatory Number 13, October 16, 2012; ACPV005736941.

407 Qualcomm’s Supplemental Response to ParkerVision’s Interrogatory Number 13, October 16, 2012; QCPV005535525.

408 Qualcomm’s Supplemental Response to ParkerVision’s Interrogatory Number 13, October 16, 2012.

409 Id.

410 Id.; QCPV005584752-5660.

411 See SK00000327 (Tenth Supplemental Disclosure Statement at 3).


121 McKool 836140v6

aware of ParkerVision’s patents “three or four years ago.”412 Thus, Qualcomm has had

knowledge of ParkerVision’s Patents-in-Suit since at least May 26, 1999.

10.1.2.1 Active Inducement Under 35 U.S.C. § 271(b)

Based upon the facts set forth above, including Qualcomm’s long knowledge of

ParkerVision, its technology and at least some of the patents-in-suit, Qualcomm has induced and

continues to induce, via the Accused Products, infringement of the following claims: (a) the ’551

Patent Claims 1, 2, 3, 8, 9, 12, 16, 20, 23, 24, 25, 26, 31, 32, 39, 41, 50, 54, 55, 57, 92, 108, 113,

126, 135, 161, 192, 193, 195, 196, 198, 202, and 203; (b) the ’518 Patent Claims 1, 2, 3, 12, 17,

24, 27, 77, 81, 82, 90, and 91; (c) the ’845 Patent Claims 1, 3, 4, 5, 6, 7, 8, 9, 12, 13, 17, 18, 19,

20, 22, 23, and 24; (d) the ’342 Patent Claims 18, 19, 20, 21, 22, and 23; (e) the 734 Patent

Claims 1, 4, 5, 6, 9, 12, 13, 14, and 15; and (f) the ’371 Patent Claims 1, 2, 22, 23, 25, and 31.

At the very least, since the institution of the lawsuit on July 20, 2011, Qualcomm has induced

and continues to induce, via the Accused Products, infringement of the aforementioned claims.

Qualcomm purposefully takes actions to induce infringement of the Patents-in-Suit by

advertising and promoting the Accused Products in the United States, instructing how to engage

in infringing use, and designing and manufacturing (or authorizing the manufacture of)

infringing products,413 and selling infringing products to OEMS/handset manufacturers whose

412 Dep. of Charles Persico (Oct. 23, 2012) at 123-24.

413 QCPV011178123 at 5, 25; see also User Guides listed infra at note 389; Device Specifications for certain ICs: QCPV000190181 (RGR6240 of the Astra Design Architecture); QCPV000148299 (WCN2243 of the Bahama Design Architecture); QCPV001381895 (BTS4020 of the Bali Design Architecture); QCPV001384928 (BTS4054 of the Catalina Design Architecture); QCPV001387460 (BTS5045 of the Clemente Design Architecture); QCPV000410926 (FTR8700 of the Eagleray Design Architecture); QCPV001386232 (BTS4025 of the Fiji Design Architecture); QCPV000380986 (MBP2700 of the Fury Design Architecture); QCPV000004190 (RTR6285-RTR6280 of the GZIF3 Design Architecture); QCPV000189327 (RTR6236, RTR6237 of the GZIF4 Design Architecture); QCPV000190662 (QTR9215 of the Halley Design Architecture); QCPV000149971 (WCN3660 of the Iris Design Architecture); QCPV000149006 (WCN1312 of the Libra-Gemini Design Architecture); QCPV000162777 (QTR8600L of the Magellan Design Architecture); QCPV000493465 (QSC6155, QSC6165, QSC6175, QSC6185, QSC6195, QSC6295, QSC6695, QSC8201 of the Marimba Design Architecture); QCPV000473131 (QSC1105 of the Merlin Design Architecture); QCPV000475425 (QSC1100, QSC1110 of the


Exhibit 27



Exhibit 28


May 17, 2013

ParkerVision, Inc. v. Qualcomm Incorporated Civil Action No. 3:11-cv-719-J-37-TEM

Dear Josh:

ParkerVision accuses these Atheros products of infringement: AR6002, AR6013, AR6014, AR6102, AR6122, AR9220, AR9223, AR9227, AR9271, AR9280, AR9281, AR9282, AR9283, AR9285 and AR9287 (collectively, the “Atheros Products”). However, as demonstrated in Qualcomm’s expert reports, the Atheros Products do not infringe any of the Asserted Claims. Indeed, neither ParkerVision nor its experts have offered any evidence to support ParkerVision’s claim that the Atheros Products infringe.

Will ParkerVision agree to the entering of the attached order granting summary judgment of non-infringement with regard to the Atheros Products? If not, then Qualcomm will move for summary judgment of non-infringement with regard to the Atheros Products.

I trust that ParkerVision will see the value in the parties cooperating so that the Court does not need to consider such a motion. Please let me know ParkerVision’s position as soon as possible and certainly by the close of business on Monday, May 20.

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




PARKERVISION, INC.,

Plaintiff,

v.

QUALCOMM INCORPORATED, Defendant.

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

STIPULATED MOTION AND ORDER FOR PARTIAL SUMMARY JUDGMENT

Plaintiff ParkerVision, Inc. (“ParkerVision”) has filed a claim of patent

infringement against Defendant Qualcomm Incorporated (“Qualcomm”) (Dkt. 158 ¶¶ 11-13),

and Qualcomm has filed a counterclaim seeking a declaration of non-infringement (Dkt. 248,

Counterclaim Count 1). The Qualcomm products ParkerVision has accused of infringing include

the following products made by Qualcomm Atheros, a subsidiary of Qualcomm: AR6002,

AR6013, AR6014, AR6102, AR6122, AR9220, AR9223, AR9227, AR9271, AR9280, AR9281,

AR9282, AR9283, AR9285 and AR9287 (collectively, the “Atheros Products”). (See Ex. A to

ParkerVision’s Motion for Leave to Serve Supplemental Infringement Contentions, (Dkt. 152-1);

Dec. 14, 2012 Ltr. from J. Budwin to Hon. Thomas E. Morris.)

The Atheros Products do not infringe U.S. Patent Nos. 6,061,551 (the “‘551

Patent”), 6,266,518 (the “‘518 Patent”), 6,370,371 (the “‘371 Patent”), 6,963,734 (the “‘734

Patent”), 7,496,342 (the “‘342 Patent”), and 7,724,845 (the “‘845 Patent”) (collectively, the

“Patents-in-Suit”), directly, indirectly, contributorily, by inducement, or in any other manner, for

at least the following reasons:


2

• The Atheros Products do not “transfer energy” and, therefore, do not perform “energy sampling” because (i) they do not take discrete samples of energy from the carrier signal; and (ii) they do not use energy from the carrier signal to create the downconverted signal as required by all the Asserted Claims; and

• The Atheros Products do not contain a storage module or element coupled to the output of a downconverter as explicitly required by the following Asserted Claims (and inherently required by the rest of the Asserted Claims): claims 23, 24, 25, 26, 31, 32, 135, 149, 150, 161, 192, 193, 198, 202 and 203 of the ‘551 patent; claims 82, 90, 91 of the ‘518 patent; claims 22, 23, 25, 31 of the ‘371 patent; claims 1, 4, 5, 6, 9, 12, 13, 14, 15 of the ‘734 patent; claims 18, 19, 20, 21, 22, 23 of the ‘342 patent; and claims 5, 6 of the ‘845 patent; and

• The Atheros Products do not use an “aliasing rate” of “less than or equal to twice the frequency of the carrier signal” as required by at least the following Asserted Claims: claims 1, 2, 3, 8, 9, 12, 16, 20, 23, 24, 25, 26, 31, 32, 39, 41, 50, 54, 55, 57, 92, 93, 108, 113, 126, 135, 149, 150, 161, 192, 193, 195, 196, 198, 202 and 203 of the ‘551 patent; claims 1, 2, 3, 12, 17, 24, 27, 77, 81, 82, 90, 91 of the ‘518 patent; claims 1, 2, 22, 23, 25, 31 of the ‘371 patent; and claims 5, 13 of the ‘734 patent.

Accordingly, the parties stipulate that partial summary judgment of non-

infringement may be GRANTED as to the Atheros Products.

McKOOL SMITH, P.C.

Douglas A. Cawley, Lead Attorney Texas State Bar No. 04035500 E-mail: [email protected] Richard Kamprath Texas State Bar No. 24078767 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]

CRAVATH, SWAINE & MOORE LLP s/ Keith R. Hummel Keith R. Hummel (admitted pro hac vice) E-mail: [email protected] David Greenwald (admitted pro hac vice) E-mail: [email protected] Worldwide Plaza 825 Eighth Avenue New York, New York 10019 Telephone: (212) 474-1000 Facsimile: (212) 474-3700 COOLEY, LLP Stephen C. Neal (admitted pro hac vice) (Trial Counsel) [email protected]


3

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] McKool Smith P.C. 300 West Sixth Street, Suite 1700 Austin, Texas 78701 Telephone: (512) 692-8700 Telecopier: (512) 692-8744 SMITH HULSEY & BUSEY 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] Counsel for Plaintiff ParkerVision, Inc.

Timothy S. Teter (admitted pro hac vice) [email protected] Five Palo Alto Square 3000 El Camino Real Palo Alto, California 94306-2155 Telephone: (650) 843-5182 Facsimile: (650) 849-7400 BEDELL, DITTMAR, DEVAULT, PILLANS & COXE, P.A. John A. DeVault, III Florida Bar No. 103979 E-mail: [email protected] Courtney K. Grimm Florida Bar No. 953740 E-mail: [email protected] The Bedell Building 101 East Adams Street Jacksonville, Florida 32202 Telephone: (904) 353-0211 Facsimile: (904) 353-9307 Counsel for Defendant Qualcomm Incorporated

ORDER

Pursuant to the stipulation of the parties, it is hereby ORDERED that partial

summary judgment of non-infringement is GRANTED as to ParkerVision’s claim and

Qualcomm’s first counterclaim with respect to the Atheros Products.

DONE AND ORDERED in Chambers in Orlando, Florida, this ____ day of

__________________, 2013.

_______________________________________ ROY B. DALTON JR.

UNITED STATES DISTRICT JUDGE


Exhibit 29


RE: ParkerVision v. Qualcomm

Josh Budwin <[email protected]> to:

Aaron Karp, [email protected], Brad Caldwell, Douglas A. Cawley

, [email protected], Jason Cassady, Kevin Burgess, Leah B. Buratti , [email protected], Gordon White, ParkerVision

, Richard Kamprath

05/20/2013 11:33 AM

Cc:

Keith Hummel, David Greenwald , James Canning, Peter Emmi, "[email protected]", "[email protected]",

"[email protected]" , "[email protected]", "[email protected]", "[email protected]"

Aaron -

We cannot agree to the attached form connected to your letter. That said, we'd be interested in discussing this idea further, particularly as coupled to some of your validity defenses, laches and equitable estoppel. As far as we can tell, while within the scope of your counterclaim, you have not put forth any evidence or assertions on any of the following validity grounds: (i) Section 101 for failure to claim patentable subject matter and/or double patenting, (ii) Section 102 for abandonment, prior foreign filing, and/or derivation; or (3) Section 112 for failure to set forth the best mode and/or . Additionally, your laches/equitable estoppel defenses have no support in the factual record whatsoever, and Qualcomm itself contends that the "ZIF" products, which form the basis of your laches/equitable estoppel defenses, do not infringe.

Accordingly, we would be willing to consider some type of joint motion to dismiss where we agree to forego our claims against the AR-prefix products, should you agree to forego the validity/equitable issues outlined above. As a procedural matter, the best vehicle may be for the parties to put together a joint motion to dismiss these claims.

If you have another procedure in mind, other than your form MSJ (which we won't agree to), please let us know.

Thanks.

________________________________

From: Aaron Karp [mailto:[email protected]]Sent: Friday, May 17, 2013 1:45 PMTo: [email protected]; Brad Caldwell; Douglas A. Cawley; [email protected]; Jason Cassady; Josh


Budwin; Kevin Burgess; Leah B. Buratti; [email protected]; Gordon White; ParkerVision; Richard KamprathCc: Keith Hummel; David Greenwald; James Canning; Peter Emmi; [email protected]; [email protected]; [email protected]; [email protected]; [email protected]; [email protected]: ParkerVision v. Qualcomm

Counsel,

Please see the attached correspondence.

Regards,

Aaron I. KarpCravath, Swaine & Moore LLPWorldwide Plaza825 Eighth AvenueNew York, NY 10019(212) 474-1654 (Bus.)(212) 474-3700 (Fax)

This e-mail is confidential and may be privileged. Use or disclosure of it by anyone other than a designated addressee is unauthorized. If you are not an intended recipient, please delete this e-mail from the computer on which you received it.


Exhibit 30


1


JACKSONVILLE DIVISION PARKERVISION, INC.,

Plaintiff,

v.

QUALCOMM INC.,

Defendant.

§ § § § § § § § § § §

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

Jury Trial Demanded

REBUTTAL EXPERT REPORT OF PAUL PRUCNAL


33

� L. Breems, et al., “A 1.8mW CMOS Modulator with Integrated Mixer for A/D Conversion of IF Signals,” ISSCC 1999 Session 3 Paper MP 3.2, and the associated presentation slides (collectively “Breems”); and

� U.S. Patent No. 5,015,963 “Synchronous Demodulator,” to J. Sutton (“Sutton”).

9.1. Weisskopf

It is my opinion that Weisskopf, which Dr. Razavi alleges anticipates or renders obvious

asserted claims of the ‘551, ‘518, ‘371, and ‘845 Patents, does not anticipate nor render obvious

the claimed inventions of the Patents-in-Suit. My review of Weisskopf, the “Rebuttal Expert

Report of Peter Weisskopf” (hereinafter “Weisskopf Report”) dated April 1, 2013, and

conversations with Mr. Weisskopf regarding the substance and teaching of his paper support my

conclusions set forth below regarding Weisskopf. Weisskopf describes a voltage sample-and-

hold circuit:

An ideal sample-and-hold buffer circuit should be capable of measuring the voltage stored on the hold capacitor for the duration of the hold cycle without discharging the capacitor. The advantage of buffer circuitry, which can as nearly as possible meet this ideal requirement, is evident in the FFT of the ideal subharmonic sample-and-hold simulation, as shown in Figure 1b.53

As a sample-and-hold circuit, it is my opinion that Weisskopf does not teach or suggest the

transfer of energy from a carrier signal to a storage device and the use of that energy to generate

a lower frequency signal or baseband. In fact, it actually teaches away from the transfer of

energy from a carrier signal to a storage device and the use of that energy to generate a lower

frequency signal or baseband. Therefore, at least the following elements of the Asserted Claims

of the ’551, ’518, ’371 and ’845 Patents are not taught or suggested by Weisskopf:

� “generating a lower frequency signal from the transferred energy” (as required by ’551, independent claim 1, and its dependents, claims 2, 3, 8, 9, 12, 16, 20, 39, 41, 50, 54, 55, 57, 92, 108, 113, and 126);

53 Weisskopf at 245.


34

� “wherein a lower frequency signal is generated from the transferred energy” (as required by ’551 independent claim 23, and its dependents, claims 24, 25, 26, 31, 32, 135, 161, 192, 193, 195, 196, 198, 202, and 203);

� “generating the baseband signal from the integrated energy” (as required by ’518 independent claim 1, and its dependents, claims 2, 3, 12, 17, 24, and 27);

� “generating the second signal from the integrated energy” (as required by ’518 independent claim 77, as its dependent, claim 81);

� “means for generating the baseband signal from the integrated energy (as required by ’518 independent claim 82);

� “means for generating the second signal from the integrated energy” (as required by ’518 independent claim 90, and its dependent claim 91);

� “wherein the lower frequency signal is generated from the transferred energy” (as required by ’371 independent claim 1);

� “wherein the lower frequency signal is generated from the transferred energy” (as required by ’371 independent claim 2, and its dependents, claims 22, 23, 25, and 31); and

� “whereby the accumulation results form a down-converted signal” (as required by ’845 independent claim 1, and its dependents, claims 3-9 and 12).

Weisskopf also teaches that discharging energy from the hold capacitor during the hold

time destroys the efficiency of the conversion to a lower frequency signal: “a sample-and-hold

circuit that has a low impedance load as shown in Figure 5” has a “poor hold duration [and]

manifests itself [with] an increasing inability of the sample-and-hold circuit to isolate the discrete

line spectra.”54 Thus, it is my understanding that Weisskopf teaches that transitioning energy to

the output will result in poor performance.

Weisskopf teaches that the output (i.e., the lower frequency signal and/or baseband)

should have “little harmonic energy:” “if the buffer can be made to have a high impedance the

output signal will contain little harmonic energy and a much stronger baseband downconverted

54 Weisskopf at 242-43.


64

� “wherein a lower frequency signal is generated from the transferred energy” (as required by ’551 independent claim 23, and its dependents, claims 24, 25, 26, 31, 32, 135, 161, 192, 193, 195, 196, 198, 202, and 203).

9.9. Mittel

It is my opinion that Mittel, which Dr. Razavi alleges anticipates or renders obvious

asserted claims of the ‘734 Patent, does not anticipate nor render obvious the claimed inventions

of this patent. Mittel describes a double balanced mixer with an active filter load and teaches

minimization of the current drain in the mixer and initial stages of the IF filter. Mittel discloses a

storage element coupled between two switches and describes it as part of a low-pass active filter

coupled to the collectors and emitters of a differential amplifier.89 This “differential second

order low pass active filter filters the differential current output of the common-base differential

amplifier 32 and generates a filtered differential mixer output signal.”90 Mittel teaches

optimizing the active filter, including the capacitor C3, to provide more gain and an improved

response shape at alternate output nodes.91 The presence of a capacitor coupled between two

switches is insufficient to conclude that a particular circuit practices the transfer of non-

negligible amounts of energy and the generation of a differential down-converted signal from the

transferred energy. Thus, it is my opinion that Mittel does not teach or suggest at least the

following elements of the Asserted Claims of the ’734 Patent:

� “a differential frequency down-conversion module that differentially receives an input signal . . . [and] outputs a differential down-converted output signal,” where the Court has construed “differential frequency down-conversion module” as “circuitry for frequency down-converting a carrier signal by differentially combining a positive and negative transferred energy samples” (as required by ‘734 independent claim 1, and its dependents, claims 4-6, 9); and

89 Mittel at 2:65-3: 13.

90 Mittel at 3:27-31.

91 Mittel at 3:43-48.


65

� “differentially receiving an input signal across a positive input terminal and a negative input terminal of a differential frequency down-conversion module . . . [and] differentially down-converting the received input signal to a differential down-converted output signal,” where the Court has construed “differential frequency down-conversion module” as “circuitry for frequency down-converting a carrier signal by differentially combining a positive and negative transferred energy samples” and “differentially down-converting” as “down-converting a carrier signal by differentially combining positive and negative transferred energy samples” (as required by ‘734 independent claim 12, and its dependents, claims 13-15).

9.10. ARRL

It is my opinion that ARRL, which Dr. Razavi alleges anticipates or renders obvious


of this patent. The ARRL reference pointed to by Dr. Razavi is a chapter from the 1995 ARRL


80

my opinion that Rudell does not teach sampling. Therefore, at least the following elements of

the Asserted Claims of the ‘342 Patent are not taught or suggested by Rudell:

� “controlling a charging and discharging cycle of the first and second capacitors with first and second switching devices electrically coupled to the first and second capacitors, respectively” (as required by ‘342 independent claim 18, and its dependent claims 19-23).

9.17. Breems

It is my opinion that Breems, which Dr. Razavi alleges anticipates or renders obvious


of this Patent. Breems describes a sigma-delta modulator with high input impedance: “Because

of its large transconductance the input nodes of the OTA are virtual grounds.”112 Breems also

teaches that the modulator has LO feedthrough: “the DAC signal is periodically distorted when

the mixer is shorted during this overlap time. This causes the high-frequency noise of the DAC

signal to be partly ‘mixed’ down by the mixer to baseband.”113 Also, Figure 3.2.2 of Breems

shows a lossy integrator with R and C of unspecified value in the feedback loop of an op amp.

Dr. Razavi points to circuitry titled “Input Stage Design” (see below) as anticipating the ‘342

Patent, but this circuit is a mixer with high impedance input and output; further, this figure and

Breems do not disclose the transfer or storage of energy and generating of the baseband signal

from the RF signal. Therefore, at least the following elements of the Asserted Claims of the ‘342

Patent are not taught by Breems:

� “performing a plurality of charging and discharging cycles of the first and second capacitors to generate first and second down-converted information signals across first and second impedance devices, respectively; wherein the information signal is used to store a charge on the first capacitor when the first switching device is closed and the inverted information signal is used to store a charge on the second capacitor when the

112 Breems at 52.

113 Breems at 52.


81

second switching device is closed” (as required by ‘342 independent claim 18, and its dependents, claims 19-23).

9.18. ‘551 Patent

It is my opinion that the ‘551 Patent, which Dr. Razavi alleges anticipates or renders

obvious asserted claims of the ‘342 Patent, does not invalidate the ‘342 Patent. Dr. Razavi’s


107

importance to this fact. Indeed, the ability of ParkerVision’s technology to reduce the number of

component parts required for the receiver to operate is one of its benefits.218

11.3. Rebuttal to Dr. Williams’s Opinions on “Licensing”

In ¶¶ 199-221 of his report, Dr. Williams discusses the secondary considerations of

nonobviousness factor of licensing as relevant to industry acquiescence. It is my opinion that the

1998-1999 negotiations between ParkerVision and Qualcomm as discussed in my Opening

Report demonstrate acquiescence in the Patents-in-Suit’s validity.

11.4. Rebuttal to Dr. Williams’s Opinions on “Teaching Away”

Although Dr. Williams states that “failure to teach is not the same as teaching away” in ¶

227 of his report, I have been advised that prior art can teach away from one solution because all

prior art taught a different solution.

For the reasons stated above in my discussion of the anticipation references propounded

by Qualcomm, the “prior art” taught way from ParkerVision’s invention and none of the prior art

renders the Patents-in-Suit obvious. The prior art teaches away from ParkerVision’s invention’s

transfer of non-negligible amounts of energy from the carrier signal.219 The prior art also teaches

away from the generation of the lower frequency signal or baseband from that transferred

energy.220

In ¶ 228 of his report, Dr. Williams concludes that “energy sampling” is not relevant to

the obviousness analysis because that term does not appear in any asserted claim in this case.

218 Prucnal Rep. at 23.

219 See, e.g., Crols at 740 (“[W]hen the LO signal is applied to the sources of the modulated transistors, a lower conversion gain is compensated by a lower power consumption for the LO signal source. This is another reason why the topology with the RF signal applied to the gates is preferred over the topology in which the LO signal is applied to the gates of the modulated transistors.”).

220 See, e.g., Weisskopf at 242 (“An ideal sample-and-hold buffer circuit should be capable of measuring the voltage stored on the hold capacitor for the duration of the hold cycle without discharging the capacitor.”).


108

Dr. Williams’s contention is based on semantics. ParkerVision generally uses the term “energy

sampling” as shorthand to describe its technology claimed in the Patents-in-Suit. “Energy

sampling” appears in the Court’s claim construction for the terms “output impedance match

circuit,” “substantially impedance matched input path,” and “input impedance match circuit.”221

The term “energy samples” also appears in the Court’s claim construction, such as in the

construction for the terms “differential frequency down-conversion.”222

11.5. Rebuttal to Dr. Williams’s Opinions on “Initial Industry Skepticism”

In ¶¶ 233-238 of his report, Dr. Williams opined that Qualcomm’s skepticism regarding

ParkerVision’s technology was not evidence of nonobviousness. I disagree. I understand that

general skepticism of those skilled in the art may be a relevant indicia of non-obviousness.

At the time period of the invention, the dominant design was superheterodyne receivers.

Superheterodyne receivers had more components, higher costs, greater power consumption, and

were larger in size than their direct conversion counterparts.223 Qualcomm also implemented

direct conversion ZIF receivers beginning around 2002.224

In early 1998, Qualcomm and ParkerVision began a dialogue regarding ParkerVision’s

patented technology, where Qualcomm expressed skepticism regarding ParkerVision’s

technology and patent claims.225 I detailed the 1998-1999 negotiations between ParkerVision

and Qualcomm regarding the technology described in the Patents-in-Suit in my Opening Report

and include select quotes by way of example below.

221 Prucnal Rep. at 15 and the Court's Claim Construction Order [Doc. 243].

222 Prucnal Rep. at 15 and the Court's Claim Construction Order [Doc. 243].

223 Prucnal Rep. at 35-37.

224 Williams Report at 43-45; Prucnal Rep. at 35-44.

225 Prucnal Rep. at 65; Dep. of Jeffrey Andrew Jacobs (Oct. 25, 2012) at 26-29; PV00184626.


Exhibit 31



Exhibit 32


Table of Contents

UNITED STATES

SECURITIES AND EXCHANGE COMMISSION WASHINGTON, D.C. 20549

FORM 10-K

(Mark One)

For the fiscal year ended December 31, 2010

OR

For the transition period from to

Commission File No. 0-50534

ATHEROS COMMUNICATIONS, INC. (Exact name of registrant as specified in its charter)

1700 Technology Drive, San Jose, CA 95110-1383 (Address of principal executive offices, Zip Code)

(408) 773-5200 (Registrant’s telephone number, including area code)

Securities registered pursuant to Section 12(b) of the Act: Common stock, $0.0005 par value per share The NASDAQ Stock Market LLC

Securities registered pursuant to Section 12(g) of the Act: None

Indicate by check mark if the registrant is a well-known seasoned issuer, as defined in Rule 405 of the Securities Act. Yes ⌧ No ¨

Indicate by check mark if the registrant is not required to file reports pursuant to Section 13 or Section 15(d) of the Act. Yes ¨ No ⌧

Indicate by check mark whether the registrant (1) has filed all reports required to be filed by Section 13 or 15(d) of the Securities Exchange Act of 1934 during the preceding 12 months (or for such shorter period that the registrant was required to file such reports), and (2) has been subject to such filing requirements for the past 90 days. Yes ⌧ No ¨

Indicate by check mark whether the registrant has submitted electronically and posted on its corporate Web site, if any, every Interactive Data File required to be submitted and posted pursuant to Rule 405 of Regulation S-T (§ 232.405 of this chapter) during the preceding 12 months (or for such shorter period that the registrant was required to submit and post such files). Yes ⌧ No ¨

Indicate by check mark if disclosure of delinquent filers pursuant to Item 405 of Regulation S-K is not contained herein, and will not be contained, to the best of registrant’s knowledge, in definitive proxy or information statements incorporated by reference in Part III of this Form 10-K or any amendment to Form 10-K. ¨

Indicate by check mark whether the registrant is a large accelerated filer, an accelerated filer, a non-accelerated filer or a smaller reporting company. See the definitions of “large accelerated filer,” “accelerated filer” and “smaller reporting company” in Rule 12b-2 of the Exchange Act. (Check one):

Indicate by check mark whether the registrant is a shell company (as defined in Rule 12b-2 of the Act). Yes ¨ No ⌧

⌧ ANNUAL REPORT PURSUANT TO SECTION 13 OR 15(d) OF THE SECURITIES EXCHANGE ACT OF 1934

¨ TRANSITION REPORT PURSUANT TO SECTION 13 OR 15(d) OF THE SECURITIES EXCHANGE ACT OF 1934

Delaware 77-0485570(State or other jurisdiction of incorporation or organization)

(I.R.S. Employer Identification No.)

Large accelerated filer ⌧ Accelerated filer ¨

Non-accelerated filer ¨ (Do not check if a smaller reporting company) Smaller reporting company ¨


Table of Contents

Our initial products served the WLAN market, with cost-effective solutions that helped make wireless connectivity broadly accessible to businesses and consumers. We have since expanded our technology portfolio through both acquisitions and internal development to address the multiple connectivity requirements of our customers and to deliver increasingly more complex connectivity platform solutions. Our expanded portfolio now includes Mobile WLAN, Ethernet, Bluetooth, Global Positioning System, or GPS, Powerline Communications, or PLC, Passive Optical Networking, or PON and broadband multiplexing, or MUX technologies. We have completed several acquisitions to help expand our product offerings and customer support including ZyDAS Technology Corporation, or ZyDAS, in 2006, Attansic Technology Corporation, or Attansic, u-Nav Microelectronics Corporation, or u-Nav, in 2007, Intellon Corporation, or Intellon, in 2009 and Opulan Technologies Corporation, or Opulan, in 2010.

The results of operations from these acquisitions have been included in our consolidated statements of operations since their respective acquisition dates.

We were incorporated as T-Span Systems Corporation in Delaware in May 1998. In May 2000, we changed our corporate name to Atheros Communications, Inc. Our website address is http://www.atheros.com. The information contained in our website does not form any part of this Annual Report on Form 10-K. However, we make available free of charge through our website our annual reports on Form 10-K, our quarterly reports on Form 10-Q, our current reports on Form 8-K and amendments to those reports filed or furnished pursuant to Section 13(a) or 15(d) of the Securities Exchange Act of 1934 as soon as reasonably practicable after we electronically file this material with, or furnish it to, the Securities Exchange Commission.

Merger Agreement with QUALCOMM Incorporated On January 5, 2011, we entered into an Agreement and Plan of Merger, or the Merger Agreement, by and among us, QUALCOMM

Incorporated, a Delaware corporation, or QUALCOMM, and T Merger Sub, Inc., a Delaware corporation and wholly owned subsidiary of QUALCOMM, or Sub, pursuant to which Sub will merge with and into Atheros, with Atheros continuing as the surviving corporation and a wholly owned subsidiary of QUALCOMM, or the Merger.

Pursuant to the terms of the Merger Agreement, at the effective time of the Merger, or the Effective Time, each share of our common stock, $0.0005 par value per share, issued and outstanding immediately prior to the Effective Time (other than (i) shares owned by QUALCOMM, Sub or us and (ii) shares in respect of which appraisal rights have been properly exercised) will be canceled and will be automatically converted into the right to receive $45.00 in cash, without interest. In connection with the Merger, each outstanding option to purchase our common stock will be automatically converted into an option to purchase QUALCOMM common stock, par value $0.0001 per share, at a conversion ratio equal to a fraction having a numerator equal to $45.00 and having a denominator equal to the average closing price of QUALCOMM’s common stock as reported on the NASDAQ for the 20 trading days immediately preceding the Effective Time, or the Exchange Ratio. In addition, each outstanding restricted stock unit award for our common stock will be automatically converted into a restricted stock unit award for QUALCOMM common stock at a conversion rate equal to the Exchange Ratio.

We and QUALCOMM have made customary representations and warranties in the Merger Agreement. Completion of the Merger is subject to customary closing conditions, including, but not limited to, (i) adoption of the Merger Agreement by our stockholders, (ii) expiration or termination of the applicable waiting period under the Hart-Scott-Rodino Antitrust Improvements Act of 1976, as amended, and other regulatory approvals, (iii) the absence of any order or injunction prohibiting the consummation of the Merger and (iv) truth and correctness of each party’s representations and warranties at closing. Each party is permitted to terminate the Merger Agreement under certain circumstances as set forth in the Merger Agreement.

Our Board of Directors unanimously approved the Merger Agreement and determined that the Merger Agreement and the Merger were advisable, fair to and in the best interest of us and our stockholders.

Our Business Our ability to design complex digital and analog connectivity solutions in standard digital CMOS enables us to cost-effectively address a

variety of high volume markets with our semiconductor products. We currently market our solutions to manufacturers of networking equipment, computing devices and consumer electronics devices for use in both wireless and wired connected products. Having established a leadership position in the WLAN market, we continue to expand the breadth and strength of our technology portfolio to address the multiple connectivity requirements of our customers and to deliver increasingly more complex connectivity platform solutions.

4


Exhibit 33


1

CONFIDENTIAL – ATTORNEYS’ EYES ONLY

UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF FLORIDA


PARKERVISION, INC.,

Plaintiff,

v.

QUALCOMM INCORPORATED,

Defendant.

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

QUALCOMM INCORPORATED,

Counterclaim Plaintiff,

v.

PARKERVISION, INC., AND STERNE,

KESSLER, GOLDSTEIN, & FOX PLLC,

Counterclaim Defendants.

SUPPLEMENTAL EXPERT REPORT OF PAUL C. BENOIT

March 25, 2013

Respectfully submitted,

Paul C. Benoit


6


conversion receivers and many types of RF carrier waveforms.27

The following patents resulted

from ParkerVision’s research and development efforts.

The ‘551 Patent

13. The ‘551 patent entitled “Method and system for down-converting electromagnetic signals”

was filed on October 21, 1998 and awarded to David F. Sorrells, Michael J. Bultman, Robert W.

Cook, Richard C. Looke, and Charley D. Moses, Jr. on May 9, 2000.28

14. The ‘551 patent abstract states that the patent discloses methods, systems, and apparatuses

for down-converting an electromagnetic (“EM”) signal by aliasing the EM signal.29

In an

embodiment, the EM signal is down-converted to an IF signal.30

In another embodiment, the EM

signal is down-converted to a demodulated baseband information signal.31

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.32

The ‘551 patent has been cited by other patents 29 times.33

The ‘551 relates to energy

sampling in receivers that include intermediate frequencies (IF’s), low IF’s, and direct

conversion (demodulated baseband signals). The ‘551 details energy sampling operation using a

variety of modulated carrier signals.

The ‘518 Patent

15. The ‘518 patent entitled “Method and system for down-converting electromagnetic signals

by sampling and integrating over apertures” was filed on August 18, 1999 and awarded to David

F. Sorrells, Michael J. Bultman, Robert W. Cook, Richard C. Looke, and Charley D. Moses, Jr.

on July 24, 2001.34

The ‘518 patent is a continuation of the ‘551 patent.35

27

ParkerVision’s Response to Qualcomm’s Interrogatory No. 3, March 5, 2012. 28

http://www.uspto.gov, U.S. Patent Number 6,061,551. 29





PV00463913 at 9. 34


http://www.uspto.gov, U.S. Patent Number 6,266,518.


7



for down-converting an EM signal by aliasing the EM signal.36

In an embodiment, the EM signal

is down-converted to an IF signal.37

In another embodiment, the EM signal is down-converted to

a demodulated baseband information signal.38

In another embodiment, the EM signal is a FM

signal, which is down-converted to a non-FM signal, such as a PM signal or an AM signal.39

The

‘518 relates to energy sampling in direct conversion receivers that convert modulated RF carrier

signals into demodulated baseband signals. The ‘518 details direct conversion energy sampling

operation using a variety of modulated carrier signals.

The ‘371 Patent

17. The ‘371 patent entitled “Applications of universal frequency translation” was filed on

March 3, 1999 and awarded to David F. Sorrells, Michael J. Bultman, Robert W. Cook, Richard

C. Looke, and Charley D. Moses, Jr. on April 9, 2002.40

The ‘371 patent is a continuation of

application serial number 09/176,027.41

18. The ‘371 patent abstract states that the patent is related to frequency translation such as, but

not limited to, frequency down-conversion, frequency up-conversion, enhanced signal reception,

unified down-conversion and filtering, and combinations and applications of same.

19. The ’371 patent indicates that one of the advantages of the invention is that it achieves high

frequency selectivity at substantially any frequency, including but not limited to RF and greater

frequencies.42

The ’371 patent relates to the use of energy sampling in devices including but not

limited to telephones, positioning units, and communication networks.

The ‘734 Patent

36









8


20. The ‘734 Patent entitled “Differential frequency down-conversion using techniques of

universal frequency translation technology” was filed on December 12, 2002 and awarded to

David F. Sorrells, Michael J. Bultman, Robert W. Cook, Richard C. Looke, Charley D. Moses,

Jr., Gregory S. Rawlins, and Michael W. Rawlins on November 8, 2005.43

The ‘734 patent is a

divisional of U.S. Patent Number 6,879,817.44


for down-converting an EM signal by aliasing the EM signal, and applications thereof.45

The

present invention is further directed to reducing or eliminating DC offset voltages and re-

radiation generated when down-converting an EM signal, as well as improving receiver dynamic

range.46

22. The ’734 patent indicates that some of the advantages of the invention are lower power

consumption, longer power source life, fewer parts, lower required package size, lower package

weight, lower cost, less tuning, and more effective signal transmission and reception.47

The

receivers of the present invention can receive and transmit signals across a broad frequency

range and the DC offset voltages and re-radiation generated by receivers are reduced or

eliminated in embodiments.48

The ‘734 patent relates to energy sampling in differential

embodiments, designs, and configurations and the advantages thereof.

The ‘342 Patent

23. The ‘342 patent entitled “Down-converting electromagnetic signals, including controlled

discharge of capacitors” was filed on October 25, 2004 and awarded to David F. Sorrells,

Michael J. Bultman, Robert W. Cook, Richard C. Looke, Charley D. Moses, Jr., Gregory S.

43








9


Rawlins, and Michael W. Rawlins on February 24, 2009.49

The ‘342 patent is a divisional of U.S.

Patent Number 7,010,286.50

24. The ‘342 patent abstract states that the patent is directed to methods, systems, and

apparatuses for down-converting and/or up-converting an electromagnetic signal, and

applications thereof.51

The ‘342 patent relates to energy sampling directly demodulating two

signals using separate energy samplers with one or more local oscillator signals. The two

demodulated signals can be in-phase (I) and quadrature-phase (Q) signals.

25. The ‘342 patent indicates that some of the advantages of the invention is that it provides

lower power consumption, longer power source life, fewer parts, lower cost, less tuning, and

more effective signal transmission and reception.52

These systems can receive and transmit

signals across a broad frequency range.53

The ‘845 Patent

26. The ‘845 patent entitled “Method and system for down-converting and electromagnetic

signal, and transforms for same” was filed on March 28, 2006 and awarded to David F. Sorrells,

Michael J. Bultman, Robert W. Cook, Richard C. Looke, Charley D. Moses, Jr., Gregory S.

Rawlins, and Michael W. Rawlins on May 25, 2010.54

The ‘845 patent is a continuation of U.S.

Patent Number 7,065,162.

27. The ‘845 patent abstract states that the patent is directed to methods, systems, and

apparatuses for down-converting an EM signal.55

The invention operates by receiving an EM

signal and recursively operating on approximate half cycles of a carrier signal.56

The recursive

49










11


integrated circuits that contain direct conversion receiver technology which infringes one or

more claims of each of the Patents-in-Suit.60

B. Indirect Infringement

31. I understand that ParkerVision further contends that Qualcomm indirectly infringes the

Patents-in-Suit by actively inducing direct infringement by its customers through designing,

advertising, manufacturing and selling integrated circuits that contain the accused direct

conversion receiver technology when it knew that the integrated circuits would be incorporated

into cellular telephones to be imported into the United States.61

32. I understand that ParkerVision contends that Qualcomm had pre-suit knowledge of the

Patents-in-Suit and, at a minimum, had knowledge of the Patents-in-Suit as a result of

ParkerVision filing this lawsuit. ParkerVision informed Qualcomm during the negotiations

between the parties in 1999 that ParkerVision had patents pending for the energy sampling

technology that was the subject of the negotiations.62

Specifically, ParkerVision disclosed ten

pending U.S. patent applications, including the application for what became the ’551 Patent.63

33. A press release concerning the issuance of the ‘551 Patent was found in the custodial files of

Adam Tachner.64

A copy of the ‘551 Patent was found in the custodial files of Paul Peterzell.65

Qualcomm attorneys Sean English and Ray Hom were aware of the ‘551 Patent as of February

2001.66

Qualcomm attorneys Phil Wadsworth and Charles Brown received email copies of

documents protected by attorney client privilege and work product doctrine that relate to the ‘551

Patent.67

Additionally, a copy of the prosecution history of the ‘551 Patent was found in the

60

ParkerVision’s Third Amended Complaint for Patent Infringement, pg. 3; Expert Report of Paul Prucnal. 61

ParkerVision’s Third Amended Complaint for Patent Infringement, pg. 3-4; Expert Report of Paul Prucnal. 62

Expert Report of Paul Prucnal at § 10.1.2; PV00184931; Deposition of Prashant Kantak at 82 (Oct. 19, 2012); see

also QCPV001413470. 63

PV00184931. 64

Qualcomm’s Supplemental Response to ParkerVision’s Interrogatory No. 13, October 16, 2012;

QCPV005736941. 65


QCPV005535525. 66

Qualcomm’s Supplemental Response to ParkerVision’s Interrogatory No. 13, October 16, 2012. 67

Qualcomm’s Supplemental Response to ParkerVision’s Interrogatory No. 13, October 16, 2012.


12


custodial files of Charles Brown.68

The prosecution history of the ‘551 Patent includes references

to the then pending patent Application Serial No. 09/376,359, which issued as the ’518 Patent

and to the “Related Application” Serial No. 10/972,133, which issued as the ’342 Patent.69

34. Prior to the filing of this lawsuit, Franklin Antonio received a ParkerVision press release

concerning the issuance of the ‘371 Patent.70

Mr. Antonio forwarded this press release in an

email to Klein Gilhousen, Roberto Padovani, and Charles Wheatley.71

The ‘371 Patent

references patent application Serial No. 09/176,022, which issued as the ’551 Patent, and notes

that it “is directed to related subject matter.”

35. I understand that ParkerVision also contends that Qualcomm purposefully takes actions to

induce the infringement of ParkerVision’s Patents-in-Suit, including advertising and promoting

infringing products in the United States, instructing how to engage in infringing use, and

designing and manufacturing (or authorizing the manufacture of) infringing products,72

and

selling infringing products to OEMS/handset manufacturers whose products will ultimately be

sold in the United States.73

I understand that ParkerVision further contends that Qualcomm

undertakes these actions to aid and encourage infringement with the knowledge and intent that

wireless devices containing the accused products will ultimately be sold into the United States.

36. Qualcomm knows that many of the accused products will be imported into the United States

and sold in the United States and is well aware of high profile products, such as the Apple

iPhone and Samsung Galaxy, that incorporate accused transceivers and are sold in the United

68


QCPV005584752 – QCPV005585660. 69

See SK00000327 (Tenth Supplemental Disclosure Statement at 3). 70


QCPV001575708. 71


QCPV001575708. 72

Expert Report of Paul Prucnal at §§ 10.1.1-10.1.2; QCPV011178123 at 5, 25; Deposition of Charles Persico at 55-

57, October 23, 2012. 73

Expert Report of Paul Prucnal at §§ 10.1.1-10.1.2; see PV00454655; HUAWEI-000001-002; KCI-

PRKR_00007.1-37.16; MMLLC-ParkerVision000001-015; NECAM 000001; RIM-PV0000001; Sony-PV0000001-

002.


Exhibit 34


In The Matter Of:

PARKERVISION, INC.

v.

QUALCOMM INCORPORATED ___________________________________________________

PAUL C. BENOIT - Vol. 1May 8, 2013

_________________________________________________

CONFIDENTIAL


CONFIDENTIAL

PAUL C. BENOIT - 5/8/2013

1-800-325-3376 www.merrillcorp.com/law

Merrill Corporation - New York

Page 225

1 of contributory infringement. And if your answer is, I

2 don't know if I did or not, that's fine. I just want to

3 know.

4 A. Well, so answering your other question and --

5 Q. Yeah.

6 A. -- obviously, it states in the report that this

7 is a calculation for induced infringement, right.

8 Q. Okay. Now, and in the course of your

9 discussion of indirect infringement in Paragraphs 31

10 through -- well, I guess through -- through 40, you

11 include three paragraphs that discuss QUALCOMM's

12 knowledge of certain patents prior to its being sued in

13 this action.

14 A. Yes.

15 Q. And those paragraphs are 32 through 34,

16 correct?

17 A. Yes.

18 Q. Are there any other paragraphs in your report

19 where you opine upon QUALCOMM's knowledge of any patents

20 prior to being sued by ParkerVision?

21 Well, look, I will withdraw that question

22 because I am under a clock here, I think the report will

23 speak for itself.

24 A. Sure.

25 Q. Are you aware of any evidence that QUALCOMM was


CONFIDENTIAL




Page 226

1 aware of the existence of the '518 patent-in-suit before

2 ParkerVision sued QUALCOMM?

3 MS. BURATTI: Objection.

4 A. Well, only that the '518 was a pending

5 application that was included in the reference from the

6 '551 Patent.

7 Q. Okay. And that's discussed in Paragraph 33 of

8 your report.

9 A. Yes.


11 aware of the existence of the '734 patent before



14 A. Not as I sit here.


16 aware of the existence of the '845 Patent before



19 A. Not as I sit hear.


21 aware of the existence of the '342 Patent before



24 A. Same answer as the '518, it was -- related

25 serial, related application which is -- that was part of


CONFIDENTIAL




Page 227

1 the '551 Patent.

2 Q. Are you aware of any evidence that QUALCOMM has

3 believed at any time that it is, in fact, infringing any

4 of the six patents-in-suit?

5 A. I am sorry. Your question is: Has QUALCOMM

6 admitted infringement?

7 Q. No. Are you aware of evidence that QUALCOMM

8 has believed at any time that it was infringing any of

9 the six patents-in-suit?

10 A. Assuming the patents were valid?

11 Q. Either way.

12 A. I guess maybe -- I have never had this question

13 asked to me before so I may not be interpreting it

14 correctly. They -- they know patents exist, right.

15 Q. Well --

16 A. At certain point, they know these patents were

17 filed and have been granted.

18 Q. They know when they are, presumably, when they

19 get sued and get a complaint.

20 A. Well, I mean they -- my report states that they

21 were aware of these patents. You just asked me

22 questions about whether I knew that they were aware of

23 the patents.

24 Q. Yes. But I think your answer for all the five

25 I asked about said either you acknowledge there was no


Exhibit 35


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

U.S. PATENT DOCUMENTS

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

FOREIGN PATENT DOCUMENTS

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.

204 Claims, 126 Drawing Sheets

LO 1110n


(12) United States Patent Sorrells et ai.

(54)

(75)

(73)

( * )

METHOD AND SYSTEM FOR DOWN-CONVERTING ELECTROMAGNETIC SIGNALS BY SAMPLING AND INTEGRATING OVER APERTURES

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 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 0 days.

This patent is subject to a terminal disclaimer.

(21) Appl. No.: 09/376,359

(22) Filed: Aug. 18, 1999

Related U.S. Application Data

(63) Continuation of application No. 09/176,022, filed on Oct. 21, 1998.

(51) Int. CI? ..................................................... HOlQ 11/12 (52) U.S. CI. ............................................. 455/1l8; 455/113 (58) Field of Search ..................................... 455/131, 139,

455/142,182.1,202,205,713,317,318, 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


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


111111 1111111111111111111111111111111111111111111111111111111111111 US006266518Bl

(10) Patent No.: US 6,266,518 Bl *Jui. 24, 2001 (45) Date of Patent:


4237692 C1 0035 166 A1 0099265 A1

3/1994 (DE) ................................ H04B/1/26 9/1981 (EP) ................................ H04B/1/26 1/1984 (EP) ................................ H03D/3/04


OTHER PUBLICATIONS

Translation of Specification and Claims of FR Patent No. 2245130, 3 pages. Aghvami, H. et aI., "Land Mobile Satellites Using the Highly Elliptic Orbits-The UK T-SAT Mobile Payload," 4th International Conf. On Satellite Systems for Mobile Communications and Navigation, Oct. 17-19, 1988, pp. 147-153. Akers, N.P. et aI., "RF Sampling Gates: a Brief Review," lEE Proc., vol. 133, Part A, No.1, Jan. 1986, pp. 45-49.


Primary Examiner-Vivian Chang Assistant Examiner~am Bhattacharya (74) Attorney, Agent, or Firm~terne, Kessler, Goldstein & Fox PLLC

(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.


1202

1204

1206

GENERIC DOWN-CONVERTING FLOWCHART



(54) APPLICATIONS OF UNIVERSAL FREQUENCY TRANSLATION

(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 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 0 days.

This patent is subject to a terminal disclaimer.

(21) Appl. No.: 09/261,129

(22) Filed: Mar. 3,1999


(63) Continuation-in-part of application No. 09/176,027, filed on Oct. 21, 1998, now abandoned.

(51) Int. CI? .............................. H04B 1/26; H04B 1/40 (52) U.S. CI. ........................ 455/323; 455/313; 327/113 (58) Field of Search .......................... 327/113; 455/313,

455/323, 333

(56) References Cited


2,057,613 A 2,241,078 A 2,270,385 A 2,283,575 A 2,358,152 A 2,410,350 A 2,451,430 A 2,462,069 A 2,462,181 A 2,472,798 A

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

111111 1111111111111111111111111111111111111111111111111111111111111

DE EP EP

US006370371Bl

(10) Patent No.: US 6,370,371 Bl * Apr. 9, 2002 (45) Date of Patent:

2,497,859 A 2,499,279 A 2,802,208 A 2,985,875 A 3,023,309 A 3,069,679 A 3,104,393 A 3,114,106 A 3,118,117 A 3,226,643 A

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

12/1965 McNair ....................... 325/40



4237692 C1 0035 166 A1 0099265 A1

3/1994 9/1981 1/1984


OTHER PUBLICATIONS

H04B/1/26 H04B/1/26 H03D/3/04

Translation of Specification and Claims of FR Patent No. 2245130, 3 pages. Aghvami, H. et aI., "Land Mobile Satellites Using the Highly Elliptic Orbits- The UK T -SAT Mobile Payload," 4th International Con! On Satellite Systems for Mobile Communications and Navigation, Oct. 17-19, 1988, pp. 147-153. Akers, N.P. et aI., "RF Sampling Gates: a Brief Review," lEE Proc., vol. 133, Part A, No.1, Jan. 1986, pp. 45-49.


Primary Examiner---nwayne Bost Assistant Examiner-Miguel D. Green (74) Attorney, Agent, or Firm~terne, Kessler, Goldstein & Fox, P.L.L.

(57) ABSTRACT

Frequency translation and applications of same are described herein. Such applications include, but are not limited to, frequency down-conversion, frequency up-conversion, enhanced signal reception, unified downconversion and filtering, and combinations and applications of same.


UOF MODULE 1922 (BAND PASS)

OUTPUT SAMPLE /) AND HOLD MODULE 1936

1991 ~I 1918 1920 ~ I



(54) DIFFERENTIAL FREQUENCY DOWN-CONVERSION USING TECHNIQUES OF UNIVERSAL FREQUENCY TRANSLATION TECHNOLOGY

(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 199 days.

(21) Appl. No.: 10/317,181

(22) Filed:

(65)

Dec. 12, 2002

Prior Publication Data

US 2003/0171107 A1 Sep. 11,2003


(62) Division of application No. 09/526,041, filed on Mar. 14, 2000.

(51) Int. CI? .................................................. H04B 1/10 (52) U.S. CI. ....................... 455/296; 455/326; 327/113;

327/356 (58) Field of Search ................................. 455/323, 326,

(56)

455/333, 313, 296, 303, 305; 327/113, 116, 356, 357

References Cited


2,057,613 A 10/1936 Gardner

9510

111111 1111111111111111111111111111111111111111111111111111111111111

DE DE DE DE

US006963734 B2

(10) Patent No.: (45) Date of Patent:

US 6,963,734 B2 Nov. 8,2005

2,241,078 A 2,270,385 A 2,283,575 A

5/1941 Vreeland 1/1942 Skillman 5/1942

(Continued)


3541 031 A1 4237692 C1

19627640 A1 19648915 A1

5/1986 3/1994 1/1997 6/1998

............ H03D/3/00

............ H04B/1/26

............ H03D/7/12 Roberts

(Continued)

OTHER PUBLICATIONS

DIALOG File 347 (JAPIO) English Language Patent Abstract for JP 2-131629,1 page (May 21, 1990-Date of publication of application). DIALOG File 347 (JAPIO) English Language Patent Abstract for JP 2-39632, 1 page (Feb. 8, 1990-Date of publication of application). DIALOG File 348 (European Patents) English Language Patent Abstract for EP 0 785 635 AI, 3 pages (Dec. 26, 1996-Date of publication of application). DIALOG File 348 (European Patents) English Language Patent Abstract for EP 35166 AI, 2 pages (Feb. 18, 1981-Date of publication of application).

(Continued)

Primary Examiner~ee Nguyen (74) Attorney, Agent, or Firm~terne, Kessler, Goldstein & Fox PLLC

(57) ABSTRACT

Methods, systems, and apparatuses for down-converting an electromagnetic (EM) signal by aliasing the EM signal, and applications thereof are described herein. Reducing or eliminating DC offset voltages and re-radiation generated when down-converting an electromagnetic (EM) signal is also described herein. Down-converting a signal and improving receiver dynamic range is also described herein.


,9500

9544 DIFFERENTIAL

OUTPUT SIGNAL 9530

9546


(12) United States Patent Sorrells et al.

(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)


(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(-)


(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)


This patent is subject to a tenninal disclaimer.

(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 36




Exhibit 37


CHARLES PERSICO

HGLITIGATION.COM

HG LITIGATION SERVICES

UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF FLORIDA


PARKERVISION, INC., ) ) Plaintiff, ) ) vs. ) Case No. ) 3:11-cv-719-J-37-TEMQUALCOMM INCORPORATED, ) ) Defendant. )__________________________________) )AND ALL RELATED CROSS-ACTIONS. )__________________________________)

PORTIONS OF THIS TRANSCRIPT ARE MARKED

CONFIDENTIAL, HIGHLY CONFIDENTIAL and/or ATTORNEYS EYES

ONLY AND ARE BOUND UNDER SEPARATE COVER

DEPOSITION OF CHARLES PERSICO

San Diego, California

Tuesday, October 23, 2012

Volume 1

Reported By:ELIZABETH BORRELLICSR No. 7844JOB No. 172411


CHARLES PERSICO

HGLITIGATION.COMHG LITIGATION SERVICES

Page 2

1 UNITED STATES DISTRICT COURT

2 MIDDLE DISTRICT OF FLORIDA

3 JACKSONVILLE DIVISION

4

5 PARKERVISION, INC., ) )

6 Plaintiff, ) )

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

8 QUALCOMM INCORPORATED, ) )

9 Defendant. )__________________________________)

10 )AND ALL RELATED CROSS-ACTIONS. )

11 __________________________________)

12

13

14

15 Videotaped Deposition of CHARLES

16 PERSICO, Volume 1, pages 1 through 233,

17 taken on behalf of Plaintiff/

18 Counterclaim Defendant ParkerVision,

19 Inc., at 4365 Executive Drive, 3rd

20 Floor, San Diego, California, beginning

21 at 9:30 a.m. and ending at 4:21 p.m., on

22 Tuesday, October 23, 2012, before

23 ELIZABETH BORRELLI, Certified Shorthand

24 Reporter No. 7844.

25


CHARLES PERSICO


Page 3

1 APPEARANCES OF COUNSEL:

2 For Plaintiff/Counterclaim Defendant ParkerVision,

3 Inc.:

4 MCKOOL SMITH Attorneys at Law

5 BY: JOSHUA BUDWIN, ESQ. BY: RICHARD A. KAMPRATH, ESQ. (via telephone)

6 300 Crescent Court Suite 1500

7 Dallas, Texas 75201 (214) 978-4210

8 [email protected] [email protected]

9 For Defendant/Counterclaim Plaintiff Qualcomm

10 Incorporated:

11 CRAVATH, SWAINE & MOORE LLP Attorneys at Law

12 BY: JOSEPH E. LASHER, ESQ. 825 Eighth Avenue

13 New York, New York 10019-7475 (212) 474-1922

14 [email protected]

15 -AND-

16 CADWALADER, WICKERSHAM & TAFT LLP Attorneys at Law

17 BY: JAMES T. BAILEY, ESQ. BY: HOWARD WIZENFELD, ESQ.

18 One World Financial Center New York, New York 10281

19 (212) 504-6776 [email protected]

20 [email protected]

21

22

23

24

25


CHARLES PERSICO


Page 4

1 For Counterclaim Defendant Sterne, Kessler, Goldstein & Fox PLLC:

2 GUNSTER LAW FIRM

3 Attorneys at Law BY: SCOTT WARREN DANGLER, ESQ.

4 450 East Las Olas Boulevard Suite 1400

5 Ft. Lauderdale, Florida 33301-4206

6 (954) 468-1304 [email protected]

7 (present via telephone)

8 Also Present:

9 MATT DOBBINS, Qualcomm in-house counsel JEFF PARKER

10 DAVE SORRELLS SIMONA VACKOVA, Videographer

11 PAUL PRUCNAL, via telephone

12

13

14

15

16

17

18

19

20

21

22

23

24

25


CHARLES PERSICO


Page 122

1 ParkerVision's direct conversion receiver

2 technology?

3 A. That is correct. I never tested the

4 technology myself.

5 Q. And do you recall receiving any testing

6 reports by others at Qualcomm who performed tests on

7 ParkerVision's direct conversion receiver

8 technology?

9 A. I think I might have seen some information

10 from the test results.

11 Q. And who would have prepared those test

12 results?

13 A. I don't know specifically who -- who did

14 that.

15 Q. Have you reviewed any of the patents that

16 are at issue in this case?

17 MR. BAILEY: Objection. Vague.

18 THE WITNESS: I'm not sure what patents

19 are at issue.

20 BY MR. BUDWIN:

21 Q. Have you reviewed any ParkerVision

22 patents?

23 MR. BAILEY: Same objection.

24 THE WITNESS: I think in the past I had --

25 since there's cases where ParkerVision had


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1 referenced some of the patents that I have when I

2 was with Philips Semiconductor, and they came up

3 when I was doing searches as referenced to my

4 patents, but I never looked at any of the patents in

5 detail.

6 BY MR. BUDWIN:

7 Q. Well, can you explain what you mean so --

8 you filed some patents when you were employed at

9 Philips; is that right?

10 A. That's correct.

11 Q. And it's your testimony that ParkerVision

12 has some later patents that reference some of your

13 patents when you were employed at Philips?

14 A. That's correct.

15 Q. And what was this timeframe that you were

16 cross-referencing the ParkerVision patents with your

17 patents that you had filed at Philips?

18 A. I don't think I would say I was

19 cross-referencing. I was checking on my patents,

20 you know, and doing a search and saw that

21 ParkerVision was referencing my patents.

22 Q. Okay.

23 What was the timeframe that you were

24 conducting the search of your patents?

25 A. It might have been three or four years


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1 ago.

2 Q. And you don't recall which ParkerVision

3 patents those were?

4 A. I did note that they had a lot of patents

5 that were -- you know, I didn't go into the detail.

6 I didn't look at any of the detail.

7 Q. Have you looked at any of the claims of

8 any ParkerVision patent?

9 A. No.

10 Q. Did you understand at the time of the

11 meetings with ParkerVision in 1999 that ParkerVision

12 had filed patents on its direct conversion receiver

13 technology?

14 A. I think they stated that during the

15 meeting.

16 Q. Now, do you recall working with a Qualcomm

17 employee named Saed Younis?

18 A. I know Saed Younis.

19 Q. Do you recall whether Mr. Younis was

20 involved in the evaluation of ParkerVision's

21 technology in 1999?

22 A. I believe he was.

23 Q. And what's your opinion of Mr. Younis, is

24 he a good engineer?

25 A. I think he's a, like a broad systems


Exhibit 38



Exhibit 39



Exhibit 40



Exhibit 41



Exhibit 42

