Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 1 of 27 PageID 20031

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1 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 1 of 27 PageID PARKERVISION, INC., IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION Plaintiff, Civil Action No. 3:11-cv-719-J-37TEM vs. QUALCOMM INCORPORATED, Defendant. PARKERVISION, INC. S RESPONSE IN OPPOSITION TO QUALCOMM S MOTION FOR JUDGMENT AS A MATTER OF LAW OF NONINFRINGEMENT McKool v13

2 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 2 of 27 PageID TABLE OF CONTENTS I. LEGAL STANDARD...1 II. THE JMOL REGARDING DIRECT INFRINGEMENT SHOULD BE DENIED...1 A. ParkerVision Has Presented Substantial, Unrefuted Evidence That Qualcomm s Products Infringe the Asserted Claims of the Patents-in-Suit...1 B. There Is Substantial Evidence That the Accused Products Generate the Baseband Signal From Energy Transferred From the Carrier Signal Qualcomm applies an incorrect legal standard Qualcomm s baseband argument is incorrect Qualcomm s energy-transfer argument is incorrect C. The Accused Products Meet the Sampling Limitation...12 D. The Alleged 50% Duty Cycle Products Infringe In the Same Manner As The Other Accused Products...14 E. ParkerVision Presented Substantial Evidence For All Claim Limitations...14 F. Mr. Sorrells Opinion is Evidence of Infringement of the Accused Products...15 G. Circumstantial Evidence Also Supports the Jury s Verdict that the Accused Products Infringe the Asserted Claims of the Patents-in-Suit...15 III. THE JMOL REGARDING INDIRECT INFRINGEMENT SHOULD BE DENIED...17 A. Qualcomm Was Aware of or Willfully Blind to Each of the Patents-in-Suit Qualcomm had pre-suit knowledge of the patentsin-suit Sufficient evidence supports the jury s finding McKool v13 i

3 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 3 of 27 PageID Qualcomm s intended-use argument fails...18 B. The Interactions Further Support the Jury s Infringement Verdict...20 IV. CONCLUSION...20 McKool v13 ii

4 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 4 of 27 PageID TABLE OF AUTHORITIES CASES Page(s) Action Marine, Inc. v. Cont l Carbon Inc., 481 F.3d 1302 (11th Cir. 2007)...1, 7 Advanced Bodycare Solutions, LLC v. Thione Intern., Inc., 615 F.3d 1352 (11th Cir. 2010)...1 Alloc, Inc. v. Pergo, LLC, 2010 WL (E.D. Wis. 2010)...6 Bell Commc n Research, Inc. v. Vitalink Commc n Corp., 55 F.3d 615 (Fed. Cir. 1995)...11 Broadcom Corp. v. Emulex Corp., 2013 U.S. App. LEXIS (Fed. Cir. Oct. 7, 2013)...4, 11 Commil USA, LLC v. Cisco Sys., 720 F.3d 1361 (Fed. Cir. 2013)...19 Eugene Baratto, Textures, LLC v. Brushstrokes Fine Art, Inc., 701 F. Supp. 2d 1068 (W.D. Wis. 2010)...6 Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct (2011)...19 Implicit Networks Inc. v. F5 Networks Inc., 2013 U.S. Dist. LEXIS (N.D. Cal. Mar. 13, 2013)...6 L&W, Inc. v. Shertech, Inc., 471 F.3d 1311 (Fed. Cir. 2006)...5, 14 Lee v. Mike s Novelties, No. LA CV JAK (JCx), dkt. 198 at (C.D. Cal. May 15, 2012)...4 PACT XPP Techs., AG v. Xilinx, Inc., No. 2:07-CV-563-RSP, dkt. 441 at 11 (E.D. Tex. Aug. 28, 2013)...4 Penny v. Williams & Fudge, Inc., 840 F. Supp. 2d 1314 (M.D. Fla. 2012)...1, 7 Pfaff v. Wells Elecs., 124 F.3d 1429 (Fed. Cir. 1997)...4 McKool v13 iii

5 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 5 of 27 PageID Streck, Inc. v. Research & Diagnostic Sys., 665 F.3d 1269 (Fed. Cir. 2012)...4 Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569 (Fed. Cir. 1991)...3, 4 TiVo, Inc. v. Echostar Communs. Corp., 516 F.3d 1290 (Fed. Cir. 2008)...2, 4, 6 Toshiba Crop v. Imation Corp., et al., 681 F.3d 1358 (Fed. Cir. 2012)...19 Versata Software, Inc. v. SAP Am. Inc., 717 F.3d 1255 (Fed. Cir. 2013)...11 OTHER AUTHORITIES FED. R. CIV. P , 4, 7 FED. R. EVID FED. R. EVID , 4 FED. R. EVID McKool v13 iv

6 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 6 of 27 PageID ParkerVision files this response in opposition to Qualcomm s Rule 50(a) Motion for Judgment as a Matter of Law of Noninfringement ( JMOL ) (Dkt. 398). 1 I. LEGAL STANDARD Judgment as a matter of law is only permissible when, drawing all reasonable inferences in the light most favorable to the nonmoving party, no legally sufficient evidentiary basis allows a reasonable jury to find for the nonmoving party on an issue. 2 Additionally, [i]n ruling on a Rule 50 motion, the Court may not make credibility determinations or weigh the evidence. 3 The Court reviews the record as a whole, but must disregard all evidence favorable to the moving party that the jury is not required to believe. 4 ParkerVision, as the non-moving party, need only put forth evidence suggesting that reasonable minds could reach differing verdicts. 5 II. THE JMOL REGARDING DIRECT INFRINGEMENT SHOULD BE DENIED A. ParkerVision Has Presented Substantial, Unrefuted Evidence That Qualcomm s Products Infringe the Asserted Claims of the Patents-in-Suit Substantial evidence supports the jury s verdict of infringement for each Accused Product. Dr. Prucnal first offered element-by-element, claim-by-claim testimony demonstrating that the Magellan products infringe the Patents-in-Suit. He then testified that the other Accused Products infringe for the very same reasons, and under the very same analysis. 6 As Dr. Prucnal 1 Given the submission of this case to the jury, the Court should wait to address Qualcomm s JMOL arguments in any renewal of the Rule 50(a) motion under Rule 50(b). FED. R. CIV. P. 50(b). ParkerVision nevertheless submits this 50(a) response out of an abundance of caution and to confirm that Qualcomm s arguments are without merit. 2 Penny v. Williams & Fudge, Inc., 840 F. Supp. 2d 1314, 1318 (M.D. Fla. 2012) (Baker, J.); see also Advanced Bodycare Solutions, LLC v. Thione Intern., Inc., 615 F.3d 1352, 1360 (11th Cir. 2010)). 3 Penny, 840 F. Supp. 2d at Id. 5 See id.; see also Action Marine, Inc. v. Cont l Carbon Inc., 481 F.3d 1302, 1309 (11th Cir. 2007) (stating that denial of a motion for judgment as a matter of law is only appropriate if the facts and inferences point overwhelmingly in favor of one party, such that reasonable people could not arrive at a contrary verdict ). 6 Trial Tr., 10/10 at 65:7-12; see also, e.g., Ex. 1 at (stating that [e]ach of the following architectures infringe in substantially the same way as the Magellan architecture, and each architecture is substantially similar to the Megallan architecture in all respects material to infringement and then pointing to specific schematic pages for each architecture). McKool v13 1

7 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 7 of 27 PageID explained, he had studied the design documents and schematics for all of the Accused Products as reflected in the detailed analysis included in his expert report and had concluded that the design documents and circuits show that the circuits [of the Accused Products] are substantially the same as they relate to the patents. 7 Dr. Prucnal thus confirmed that his testimony and analysis concerning the Magellan products appl[ied] to each of the accused products, 8 and that therefore, for the same reasons, the other Accused Products also infringe. 9 The jury had access to these documents in its deliberations, and returned a verdict form specifically checking each accused product that it found to be infringing. The Federal Circuit confirmed the propriety and sufficiency of this approach in TiVo, where the Circuit held that there is nothing improper about an expert testifying in detail about a particular device and then stating that the same analysis applies to other allegedly infringing devices that operate similarly, without discussing each type of device in detail. 10 The expert in TiVo addressed a claim limitation with respect to one model of the accused devices, and then testified that the same analysis applies to other allegedly infringing devices that operate similarly. 11 The expert opined that the other accused devices operate similarly but did not discuss each type of device in detail. 12 The Court held this testimony proper and sufficient. 13 This rule makes sense it would be an egregious waste of judicial and party resources to require an expert to offer the same testimony again and again when he can simply confirm that the detailed analysis offered for one accused product also applies to other accused products. 7 Trial Tr., 10/10 at 64:19-65:12; see also, e.g., Ex. 1 at (stating that [e]ach of the following architectures infringe in substantially the same way as the Magellan architecture, and each architecture is substantially similar to the Megallan architecture in all respects material to infringement and then pointing to specific schematic pages for each architecture ). 8 Trial Tr., 10/9 at 206:12-22, 212: Trial Tr., 10/10 at 65: TiVo, Inc. v. Echostar Communs. Corp., 516 F.3d 1290, 1308 (Fed. Cir. 2008). 11 Id. 12 Id. 13 Id. at McKool v13 2

8 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 8 of 27 PageID The rules of evidence and other controlling Federal Circuit authority further explain why such testimony is proper and sufficient to support a finding of infringement. Rule 704, for example, confirms that opinion testimony may embrace ultimate issues. 14 And Rule 705 further provides that an expert may offer such an opinion and give the reasons for it without discussing the underlying facts or data. 15 In Symbol Technologies, the Federal Circuit confirmed that, under Rules 704 and 705, testimony on the ultimate issue of infringement is permissible in patent cases, and the responsibility for challenging the factual underpinnings of the testimony [falls] squarely on [the defendant] during cross-examination. 16 Qualcomm suggests that Dr. Prucnal was required to waste precious trial time walking the jury through the many hundreds of pages of his expert report providing the facts and data underlying his unrebutted and uncontested testimony that the Accused Products operate similarly as they relate to the patents. The Federal Circuit holds otherwise the responsibility for challenging those factual underpinnings fell squarely on Qualcomm. 17 But like the defendant in Symbol Technologies, [Qualcomm] failed to seize the opportunity, provided by the Rule, to demonstrate that [Dr. Prucnal s] testimony was factually incorrect. 18 And having chosen not to expose [Dr. Prucnal s] testimony to the glaring light of cross-examination on this issue, Qualcomm cannot here recoup for its failed litigation strategy. 19 Dr. Prucnal s opinion testimony that all of the Accused Products infringe with his unrebutted and uncontested explanation that his claim-byclaim analysis of the Magellan products applies equally to all of the Accused Products 14 FED. R. EVID. 704; see also FED. R. EVID. 702 (permitting experts to testify in the form of an opinion). 15 FED. R. EVID. 705 ( Unless the court orders otherwise, an expert may state an opinion and give the reasons for it without first testifying to the underlying facts or data. But the expert may be required to disclose those facts or data on cross-examination. ). 16 Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1575 (Fed. Cir. 1991). 17 See id. 18 Id. at See id. McKool v13 3

9 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 9 of 27 PageID constitutes substantial evidence supporting the jury verdict for purposes of Rule Recent district court decisions follow this authority. In PACT, for example, the court denied JMOL under Rules 704 and 705 and Symbol Technologies, finding that, [i]n light of Defendants failure to cross-examine [the expert] on any of these [disputed] limitations, [his] opinion testimony is prima facie evidence of Defendants infringement. 21 And the court in Lee also denied JMOL under this authority, rejecting a contention of insufficient evidence where Plaintiff submitted only a single example of the hundreds of allegedly infringing pipes sold by Defendants. 22 As the court found, [t]here is no legal support for Defendants position that Plaintiff had a burden that extended beyond presenting [the] representative products. If Defendants wished to present evidence to rebut Plaintiff s prima facie case of infringement with respect to certain accused products, they had the opportunity to do so at trial. Defendants do not contend that they attempted to submit such evidence. 23 The courts thus agree: testimony regarding a representative product will constitute prima facie evidence of infringement, and a defendants failure to rebut that testimony constitutes a failed litigation strategy. 24 Significantly, the reason for Qualcomm s failed litigation strategy is clear. Qualcomm did not challenge the representative-product issue on Daubert, did not address it on cross, and elected not to call any of its own witnesses who might speak to it. Qualcomm did so knowing that it could not rebut Dr. Prucnal s testimony on the representative-product issue because it had effectively conceded the point: its interrogatory responses and its experts agreed with Dr. Prucnal. When asked to identify and describe all differences between the [Accused Products] 20 See TiVo, 516 F.3d at 1308; Symbol Techs., 935 F.2d at ; see also, e.g., Broadcom Corp. v. Emulex Corp., , 2013 U.S. App. LEXIS 20411, at *23 (Fed. Cir. Oct. 7, 2013); Streck, Inc. v. Research & Diagnostic Sys., 665 F.3d 1269, 1289 (Fed. Cir. 2012); Pfaff v. Wells Elecs., 124 F.3d 1429, 1439 (Fed. Cir. 1997). 21 PACT XPP Techs., AG v. Xilinx, Inc., No. 2:07-CV-563-RSP, dkt. 441 at 11 (E.D. Tex. Aug. 28, 2013), attached as Ex Lee v. Mike s Novelties, No. LA CV JAK (JCx), dkt. 198 at (C.D. Cal. May 15, 2012), attached as Ex Id. 24 See Symbol Techs., 935 F.2d at McKool v13 4

10 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 10 of 27 PageID with respect to the receiver (or receiver function) that performs direct conversion, Qualcomm referred ParkerVision to PX387 (attached as Ex. 7), identifying each listed product as a passive mixer and failing to identify a single difference. 25 Qualcomm s experts, Dr. Fox and Dr. Williams, also provided opinions that each of the Accused Products are substantially the same for infringement purposes. 26 Dr. Fox used the Magellan products as representative of all the Accused Products in his report: [t]he mixer configuration in the Magellan circuit design, pictured below, is representative of the structure of all Accused Products other than the Voltage Mode Products. 27 He further asserted that each of the Accused Products uses a doublebalanced mixer... and [a] schematic of a typical double-balance mixer is set forth below. 28 Dr. Williams likewise explained that the Magellan architecture is generally representative of the Accused Products in this case. 29 In analyzing the Accused Products, he consider[ed] the RTR8600 chip, which has functionalities generally representative of Qualcomm s transceiver chips. 30 In short, Qualcomm did not cross-examine or rebut Dr. Prucnal s representativeproduct testimony because it is factually accurate. 31 The case law cited by Qualcomm does not support its JMOL arguments none of those cases, in fact, involve JMOL at all. L&W, for example, addressed a grant of summary judgment not JMOL. 32 The Federal Circuit held that the patentee failed to satisfy its high 25 See JX23 at 4, attached as Ex In addition to the evidence he studied, Dr. Prucnal informed his opinion based on the testimony and reports of Qualcomm s experts Dr. Fox and Dr. Williams. Trial Tr., 10/10 at 241:17-245: See, e.g., Ex. 2 (Fox Apr. 25, 2013 Report) at 196 (emphasis added). The referenced Voltage Mode Products were dropped from the lawsuit before trial. See Dkt Ex. 2 (Fox Apr. 25, 2013 Report) at 32; see also id. at ( As shown in the annotated figure below, which depicts a typical architecture found in the Accused Products, the differential mixers in the Accused Products receive a signal (shown in blue) at one input and an inverted version of that signal (shown in green) at the second input. ). 29 See Ex. 3 (Williams Mar. 4, 2013 Report) at Id. (emphasis added). 31 Dr. Prucnal s testimony is also supported by the testimony of Mr. Sorrells regarding Qualcomm s Solo architecture. Mr. Sorrells testified in detail regarding the UBM TechInsights reverse engineering report ( UBM Report ) and other public information regarding Qualcomm s Solo architecture Accused Product. Trial Tr., 10/8 at 75:10-16; 77:6-15. Just as Dr. Prucnal found, Mr. Sorrells also concluded that the Qualcomm Solo Accused Products infringe the asserted claims of the Patents-in-Suit. Trial Tr., 10/7 at 194:10-11; Trial Tr., 10/8 at 89: L&W, Inc. v. Shertech, Inc., 471 F.3d 1311, 1314 (Fed. Cir. 2006) McKool v13 5

11 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 11 of 27 PageID summary-judgment burden proving the absence of any factual dispute when it had merely assumed that all the accused products were alike. 33 Of course there is no mere assumption here: there is an unrebutted expert opinion supported by substantial record evidence and a report containing hundreds of pages of underlying facts and data. In addition, every inference had to be drawn against the grant of summary judgment in L&W; here however, every inference must be drawn in favor of the jury s verdict in this case. Qualcomm s Baratto, Alloc, and Implicit cases all suffer from the same deficiency none involve JMOL, none address the controlling rules of evidence, and none suggest that unrebutted and uncontested expert trial testimony explaining that the same analysis applies to other allegedly infringing devices, 34 can be disregarded on a JMOL review. 35 B. There Is Substantial Evidence That the Accused Products Generate the Baseband Signal From Energy Transferred From the Carrier Signal Qualcomm next argues that no evidence shows that the accused products generate the lower frequency baseband signal from energy transferred from the carrier signal. 36 More specifically, Qualcomm argues that: (1) the undisputed evidence shows that Qualcomm s products generate the baseband at the output of the double-balanced mixer, before any energy reaches the storage device; and (2) no evidence shows any non-negligible amounts of energy from the baseband signal being transferred into the storage device. 37 Contrary to Qualcomm s mischaracterizations, ParkerVision presented substantial (indeed, overwhelming) evidence to allow the jury to reject Qualcomm s arguments. Qualcomm s JMOL motion should be denied. 33 Id. at TiVo, 516 F.3d at Eugene Baratto, Textures, LLC v. Brushstrokes Fine Art, Inc., 701 F. Supp. 2d 1068, (W.D. Wis. 2010); Alloc, Inc. v. Pergo, LLC, 2010 WL , (E.D. Wis. 2010); Implicit Networks Inc. v. F5 Networks Inc., 2013 U.S. Dist. LEXIS 34984, at *41 (N.D. Cal. Mar. 13, 2013). The Implicit case clearly supports ParkerVision s position: it distinguished the facts in that case from those in TiVo and explained that, under the proxy theory, an expert who analyzes only one [accused] device in depth can testify that other accused products operate similarly U.S. Dist. LEXIS 34984, at *12-13&n Dkt. 398 at Id. Qualcomm also argues that the asserted claims require generating the lower frequency baseband signal from energy transferred from the carrier signal, but this is not disputed by the parties. McKool v13 6

12 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 12 of 27 PageID Qualcomm applies an incorrect legal standard Qualcomm s JMOL motion is premised on an incorrect application of the law. As discussed above, in determining whether judgment as a matter of law is appropriate, the Court reviews the record as a whole, but it must disregard all evidence favorable to the moving party that the jury is not required to believe. 38 Qualcomm strategically chose not to call any fact or expert witnesses to testify regarding infringement issues. As such, Qualcomm s JMOL is based solely on Mr. Neal s crossexamination of Dr. Prucnal. However, [i]n ruling on a Rule 50 motion, the court must draw all reasonable inference in favor of the nonmoving party and may not make credibility determinations or weigh the evidence. 39 Qualcomm s JMOL motion improperly asks the Court to set aside Dr. Prucnal s testimony in direct and re-direct examination (and the entirety of Mr. Sorrells testimony), and instead credit only Mr. Neal s cross-examination of Dr. Prucnal. 40 Both Mr. Sorrells and Dr. Prucnal testified that Qualcomm s Accused Products generate the lower frequency baseband signal from energy transferred from the carrier signal. 41 Additionally, Qualcomm s schematics and design documents for the Accused Products together show that the Accused Products generate the lower frequency baseband signal from energy transferred from the carrier signal. 42 Qualcomm provides no explanation or argument as to how this testimony and evidence is not a sufficient basis for the jury s verdict as a matter of law. Disregarding all evidence in favor of Qualcomm that the jury is not required to believe, and drawing all reasonable inferences in favor of ParkerVision, Qualcomm s JMOL motion should be denied Penny, 840 F. Supp. 2d at 1318 (quoting Reeves, 530 U.S. at 150). 39 Id. (emphasis added); see also Cleveland, 369 F.3d at See Penny, 840 F. Supp. 2d at 1318; see also Action Marine, 481 F.3d at Trial Tr., 10/8 at 86:19-89:6; Trial Tr., 10/10 at 240:11-242: Id. 43 See Penny, 840 F. Supp. 2d at McKool v13 7

13 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 13 of 27 PageID Qualcomm s baseband argument is incorrect. Both Dr. Prucnal and Mr. Sorrells testified that energy is transferred from the carrier signal to storage elements in the Accused Products as required by the asserted claims as construed by the Court. 44 Each of the Accused Products incorporates transistors with local oscillator ( LO ) signals controlling their respective gates to turn them on and off. 45 These transistors operate as switches: they are on, or conduct current from the RF carrier signal into the storage devices, during the aperture periods when the LO signal is high. 46 The switches are off, or do not conduct current from the RF carrier signal, during the non-aperture period when the LO signal is low. 47 The switches transform a continuous-time signal (the RF carrier signal at the input to the energy transfer sampler) into a discrete-time signal (the discrete part of the RF carrier signal that is allowed to pass through the switches and is put into the storage element). 48 These on and off cycles occur during each carrier signal period. 49 When a switch is closed, current flows from the carrier signal to a storage element at the output of the switch. 50 As different switches in the Accused Products have different LO signals, the switches open and close during different parts or phases of the carrier signal s period. 51 Thus, energy is transferred from the carrier signal through different switches to different storage elements during each carrier signal period. 52 Mr. Sorrells and Dr. Prucnal both explained this operation of the Accused Products at trial. 53 Both Dr. Prucnal and Mr. Sorrells also testified that the energy transferred from the carrier signal to the storage element is then discharged from the storage element to generate the 44 Trial Tr., 10/8 at 81:14-84:11; Trial Tr., 10/9 at 230:1-251:15, 238:1-7; Trial Tr., 10/10 at 22:9-.25:1 45 Trial Tr., 10/9 at 230:1-232:6. 46 Trial Tr., 10/9 at 230:1-232:6. 47 Trial Tr., 10/8 at 58:10-60:14; Trial Tr., 10/9 at 230:1-232:6; Trial Tr. 10/10 at 25:2-28:2. 48 Trial Tr., 10/8 at 85:6-89: Trial Tr., 10/9 at 232: Trial Tr. 10/9 at 233:5-237:22 (discussing JX-62 (RTR8600 Magellan Design Document) at 17) 51 Trial Tr., 10/8 at 245:9-247: Trial. Tr., 10/8 at 79:12-89:6. 53 See Trial Tr., 10/8 at 81:14-84:11; Trial Tr., 10/9 at 224:1-238:7; Trial Tr., 10/10 at 17:2-23:10, 32:2-35:5, 54:17-60:5, 236:16-238:16. McKool v13 8

14 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 14 of 27 PageID lower frequency or baseband signal in the Accused Products as required by the asserted claims. 54 Each of the Accused Products includes both a storage element at the output of each switch and a low impedance load in the form of a transimpedance amplifier ( TIA ) with feedback impedance. 55 When a switch turns on and conducts current from the RF carrier signal, energy from the carrier signal is transferred to the storage element after the switch. 56 When that switch then turns off and current is not flowing from the carrier signal, the energy that is stored in the storage element is then discharged through the low impedance load. 57 Qualcomm also argues that because the circuit node at the output of the mixer is labeled baseband in the Accused Products, the lower frequency signal or baseband signal is present at the output of the energy transfer sampler devices before the storage elements. Dr. Prucnal testified that the output of the energy sampler switches are labeled baseband 58 or are the baseband signal path 59 (e.g., BBI_+ at PX-847) along with several other internal signal path nodes within the Accused Products. 60 Similarly, the entire signal path after the energy transfer sampler is labeled baseband in the Accused Products, including the baseband outputs of the chip itself (e.g., PRXBBOP ) 61 but the lower frequency or baseband signal, as these terms have been construed by the Court, is not available until after the storage element. 62 The lower frequency or baseband signal as the term was construed by the Court is only generated by the flow of energy into and out of the storage elements within the Accused Products and, thus, the lower frequency 54 Trial Tr., 10/8 at 86:19-89:8; Trial Tr., 10/9 at 256:5-263:11; Trial Tr., 10/10 at 11:5-16:6, 25:6-28:2, 54:17-63: Id. 56 Id. 57 Id. 58 Trial Tr., 10/9 at 215:25-216:7. 59 Trial Tr., 10/10 at 131:21-25; 132:7-12; 136: Trial Tr., 10/9 at 238:21-251: PX 847 at QSC1PV Trial Tr., 10/9 at 256:5-263:11 (discussing the 551 means for generating the baseband signal from the integrated energy claim element) (emphasis added); Trial Tr., 10/10 at 39:25-41:11 (discussing the 551 wherein said storage module receives and integrates controlled substantial amounts of energy transferred from the carrier signal over aperture periods claim element) (emphasis added). McKool v13 9

15 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 15 of 27 PageID or baseband signal only becomes available after the storage elements Qualcomm s energy-transfer argument is incorrect. The asserted claims require transferring non-negligible amounts of energy from the carrier signal not from the baseband signal. 64 Qualcomm s argument regarding this claim element is inapposite because it does not apply the correct claim language: Qualcomm entirely reads out carrier signal from the claim and replaces it with baseband signal. Qualcomm argues that, in the Accused Products, the baseband signal generated by the double balanced mixer is a low-frequency signal and [t]his low-frequency signal passes by the capacitor without transferring any non-negligible amounts of energy from the baseband signal into the capacitor. 65 Dr. Prucnal testified that in a low pass filter, any input signal with a frequency greater than zero would cause current to flow into the capacitor. 66 Dr. Prucnal also testified that the figure in Dr. Fox s report at DX-367 at page 46 and 238, which shows the operation of the Accused Products, shows that energy is not bypassing the capacitor because the waveforms indicate that a charging and discharging cycle are occurring on that capacitor. 67 Qualcomm also argues that the Accused Products do not transfer energy into the storage device in amounts that are distinguishable from noise because TX jammer signals are millions of times larger than the carrier signal-of-interest. The claims require transferring energy in amounts that are distinguishable from noise; the claims and the claim constructions are agnostic as to interferers and jammers. 68 Dr. Prucnal testified that noise consists of statistically random signals that are generated from within the circuit itself such as thermal noise, white noise, flicker noise, 63 Id. This is like a like a pizza oven, that cooks a pizza as it travels over a conveyor belt. The raw dough that goes in at the beginning is called pizza, but as the pizza travels over the path of the oven, it is still a pizza, but it has been changed, becoming the finished, baked pizza at the end of the path through the oven. 64 See dkt. 243 at (claim construction order construing Transferring Energy and Similar Terms). 65 Doc. 398 at Trial Tr., 10/10 at 250: Trial Tr., 10/10 at 250:21-251:9. 68 See, e.g., Trial Tr., 10/9 at 224:1-238:7, 256:5-263:11; Trial Tr., 10/10 at 9:12-16:6, 23:24-28:2, 28:6-29:5, 31:12-35:5, 39:25-41:11, 42:4-43:5, 54:17-63:22, 236:16-238:16. McKool v13 10

16 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 16 of 27 PageID or pink noise. 69 Unlike noise, jammers or interferers are not random and consist of out-of-band electromagnetic signals other than the carrier signal-of-interest. 70 Qualcomm s expert on validity, Dr. Razavi, testified that noise does not include jammers or interferers and that the claims do not mention interferers or jammers. 71 Dr. Prucnal also testified that the Accused Products transfer energy in amounts that are distinguishable from noise because the Accused Products function and because they drive the low impedance TIA. 72 Qualcomm next argues that the storage elements are labeled as part of a TX Jammer or a TX Filter circuit in the Accused Products, however what something is called is irrelevant to its infringement. 73 Qualcomm s labeling of a capacitor as a TX Jammer filter does not preclude the same capacitor from being used as a storage element for the downconversion circuitry. 74 Even if the capacitor functions as a TX Jammer filter sometimes and a storage element other times (or performs both functions simultaneously), it is well settled that an accused device that sometimes, but not always, embodies a claim[] nonetheless infringes. 75 Additionally, Dr. Prucnal testified that the TX Filter is needed in order to provide the charging when the switch is closed, the storing of energy. And when the switch is opened, be discharging. So it s a necessary part of the energy transfer. 76 The Court has construed transferring non-negligible amounts of energy from the carrier signal element to mean transferring energy in amounts that are distinguishable from noise. Dr. Prucnal cited to JX62, which shows that 0.11 μa of current flows out of the mixer and Trial Tr.,10/10 at 237:2-238:16 70 See, e.g., Trial Tr., 10/10 at 237:2-238:16; Trial Tr., 10/11 at 208:2-211:1. 71 See, e.g., id. 72 See, e.g., Trial Tr., 10/9 at 224:1-238:7, 256:5-263:11; Trial Tr., 10/10 at 9:12-16:6, 23:24-28:2, 28:6-29:5, 31:12-35:5, 39:25-41:11, 42:4-43:5, 54:17-63:22, 236:16-238: Trial Tr., 10/10 at 188:20-24, 190: See, e.g., Trial Tr., 10/10 at 188:20-24, 190: Broadcom Corp. v. Emulex Corp., 2013 U.S. App. LEXIS 20411, at *18 (Fed. Cir. Oct. 7, 2013) (quoting Bell Commc n Research, Inc. v. Vitalink Commc n Corp., 55 F.3d 615, (Fed. Cir. 1995)); see also Versata Software, Inc. v. SAP Am. Inc., 717 F.3d 1255, 1262 (Fed. Cir. 2013). 76 Trial Tr., 10/10 at 247: McKool v13 11

17 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 17 of 27 PageID μa of current flows out of the TX Filter. 77 Dr. Prucnal also testified that each baseband path (i.e., BBI_+, BBI_-, BBQ_+, and BBQ_-) contains a separate switch which is turning on and off during each carrier signal period. 78 Dr. Prucnal testified that these two pieces of evidence together show that energy is transferred through the switch into the storage element when the switch is on, and that energy is also discharged out of the storage element to generate the lower frequency or baseband signal when the switch is off. 79 Mr. Sorrells and Dr. Prucnal both explained this operation of the Accused Products during the trial testimony. 80 Mr. Sorrells and Dr. Prucnal also testified that the transferred energy is distinguishable from noise. 81 C. The Accused Products Meet the Sampling Limitation The Court construed sampling to require reducing a continuous-time signal to a discrete-time signal. 82 Instead of applying the Court s construction, Qualcomm advances a new construction of sampling, arguing that [i]n a current mode product, the incoming signal is always being funneled into at least one path in the mixer. 83 Qualcomm further argues that the continuous time signal must be reduced such that, at some times, the continuous signal is not continuing on. 84 Qualcomm s assertions notwithstanding, the output of the samplers at each signal path are discrete-time signals, which satisfy the Court s claim construction. The Accused Products sample as required by the asserted claims. As Dr. Prucnal testified, the operation of the switches in each of the Accused Products reduces the continuous-time carrier signal to discrete-time lower frequency signals. 85 When each switch is on, it allows the carrier 77 Trial Tr., 10/9 at 233:5-237:22; see JX Trial Tr., 10/9 at 238:21-251: Trial Tr., 10/10 at 25: Trial Tr., 10/7 at 279:4-15, 278:12-279:3; Trial Tr., 10/10 at 25:14-21; 242:12-244:5. 81 Trial Tr., 10/7 at 278:12-279:3; Trial Tr., 10/08 at 71:2-15, 78:19-79:23, 80:25-82:17, 83:3-84:11; Trial Tr., 10/10 at 40:15-25, 236:16-238: Dkt. 243 at Dkt. 398 at Id. 85 See, e.g., Trial Tr., 10/8 at 84:12-86:18; Trial Tr., 10/9 at 224:1-238:7; Trial Tr., 10/10 at 9:12-11:4, 23:24-25:5, 28:6-29:5, 42:4-43:5, 54:17-63:22. McKool v13 12

18 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 18 of 27 PageID signal to flow from the switch s input to its output. 86 When each switch is off, no signal flows through the switch. 87 Like a light switch being turned on and off repeatedly, the switch is sometimes on and sometimes off. 88 Therefore, each switch only allows current to flow, or a signal to pass, during discrete times of each carrier signal period. 89 Cellular communication standards modulate multiple signals onto a single carrier signal by combining both an In-phase ( I ) and a Quadrature ( Q ) signal onto the carrier signal. 90 To get both pieces of information off of the carrier signal, both the I and Q downconverters in the Accused Products have separate outputs that do not recombine with each other after downconversion as seen in exhibit JX62 at And, because the Accused Products operate in a double balanced configuration, two separate outputs are created by each I and Q downconverter, namely the plus ( P ) output and the minus or negative ( M or N ) output as shown in JX-62 at As Dr. Prucnal testified, each Accused Product actually creates four separate outputs during the downconversion process from the four discrete time signals created by the switching operation. 93 Because each of these outputs are discrete from one another, there is not a single output path that contains all of the carrier signal s energy. 94 Qualcomm s Magellan design documents show that the continuous-time input signal is reduced to a discrete-time signal. JX-62 at 17 shows that 0.25 μa of current goes into the mixer and that 0.11 μa of current goes out of the mixer. 95 The Accused Products are samplers as defined by the Court Trial Tr., 10/9 at 175:16-176:1, 225:7-10, 226:10-23, 227:2-10, 230:1-8, 231:18-232:6, 237:14-22, 239:5-19, 244:22-245:1; Trial Tr., 10/10 at 17:13-24, 25:14-26:9, 27:3-19, 36:9-22, 44:14-45:25, 57:8-59:18, 65:13-15, 242:11-243:3, 244:15-245:8, 245:21-247:1. 87 Id. 88 Id. 89 Id. 90 Trial Tr., 10/9 at 245:8-252:7. 91 Id. 92 Id. 93 Id. 94 Id. 95 JX-62 at Id; see also, Trial Tr., 10/9 at 239:5-19, 241:21-242:25; Trial Tr., 10/10 at 35:22-38:1. McKool v13 13

19 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 19 of 27 PageID D. The Alleged 50% Duty Cycle Products Infringe In the Same Manner As The Other Accused Products As discussed above, Dr. Prucnal analyzed all of the schematics and design documents for the Accused Products and concluded that none of the Accused Products always operate with a duty cycle of 50% or greater. 97 Moreover, the schematics 98 and design documents 99 have been admitted into evidence. Qualcomm conceded the point by failing to raise the issue during cross examination or through a witness of its own. Not only is Qualcomm s cited case 100 inapposite, but ParkerVision s infringement evidence related to alleged 50% duty products went unchallenged as discussed in Sections I(A) & (B) above. E. ParkerVision Presented Substantial Evidence For All Claim Limitations Qualcomm also erroneously argues that ParkerVision put on no evidence regarding several limitations. As discussed above in Section III(A), each of the three limitations Qualcomm mentions 101 were addressed by Dr. Prucnal at trial. First, Dr. Prucnal extensively discussed the Court s construction of the impedance matching limitations and the infringing use of output impedance matching by the Accused Products. 102 Second, Dr. Prucnal explained the accurate voltage reproduction limitation and discussed how energy transfer to the capacitors in the Accused Products prevents accurate voltage reproduction as required by this limitation. 103 Third, Dr. Prucnal explained that the same evidence showing that the Accused Products down-convert a carrier signal to a baseband signal also shows that the lower frequency signal is a demodulated baseband signal. 104 Without any contrary evidence, the evidence presented by ParkerVision is 97 Trial Tr. 10/10 at 65:13-66:3. 98 PX JX61, JX56, JX75, DX821, JX63, JX64, JX91, JX90, JX59, JX57, JX62, JX76, JX78, JX68, JX51, JX46, JX58, JX53, JX55, DX L&W, Inc. v. Shertech, Inc., 471 F.3d 1311 (Fed. Cir. 2006) (dealing with summary judgment ruling). 101 Dkt. 398 at Trial Tr., 10/10 at 11:5-16:6 (discussing impedance matching of second signal from claim 90 of the 518 patent), 29:8-31:6 (discussing output impedance matching from claim 25 of 551 patent). 103 Trial Tr., 10/10 at 16:7-23:10 (claim 91 of 518 patent), 38:19-39:24 (claim 202 of 551 patent). 104 Trial Tr., 10/10 at 35:12-38:1. McKool v13 14

20 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 20 of 27 PageID sufficient as a matter of law to show that the Accused Products infringe each element of each of the asserted claims of the Patents-in-Suit. F. Mr. Sorrells Opinion is Evidence of Infringement of the Accused Products Qualcomm s argument that Mr. Sorrells testimony is legally insufficient evidence to demonstrate infringement is unpersuasive. The reverse engineering report of Qualcomm s QSC6270 Accused Product provided sufficient evidentiary basis for Mr. Sorrells opinion that the Accused Products infringe the asserted claims of the Patents-in-Suit. 105 And Mr. Sorrells infringement analysis was thorough and highly detailed. 106 Additionally, Qualcomm did not take issue with the accuracy or reliability of the materials relied upon by Mr. Sorrells. The UBM Report relied on by Mr. Sorrells is exhaustive, including the circuitry and control signals of Qualcomm s Solo chip. 107 Further, as Mr. Sorrells testified, he was able to determine that the Solo chip was the same chip described in the 2011 Qualcomm conference paper that Mr. Sorrells also used in his analysis. 108 Moreover, Qualcomm s unsupported assertion that the 2011 conference paper does not contain any of the values needed to conduct a proper infringement analysis 109 is belied by the evidence. Not only does the paper include a high level schematic, but it also includes noteworthy timing diagrams and performance specifications. 110 Further, Qualcomm fails to account for the connection between the 2011 paper and the UBM report, as Mr. Sorrells repeatedly discussed. 111 G. Circumstantial Evidence Also Supports the Jury s Verdict that the Accused Products Infringe the Asserted Claims of the Patents-in-Suit In addition to the direct evidence cited above, which shows that Qualcomm s Accused 105 Trial Tr. 10/8 at 75: See, e.g., Trial Tr. 10/8 at 65:1-89: See, e.g., Trial Tr. 10/8 at 75: Qualcomm s arguments related to the adequateness of the values in the report and its source (which regularly performs such reverse engineering) is an issue for the jury to consider. 108 See Trial Tr. 10/8 at 60:25-61:8; JX Dkt. 398 at See JX See, e.g., Trial Tr. 10/8 at 65:1-89:18. McKool v13 15

21 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 21 of 27 PageID Products meet all of the claim elements of the asserted claims of the Patents-in-Suit, ParkerVision has put forth substantial circumstantial evidence that Qualcomm s Accused Products infringe. ParkerVision has introduced evidence that high-level Qualcomm engineers, executives, and lawyers spent months studying ParkerVision s technology 112 and its patents. 113 And, as ParkerVision continued to disclose more and more about how its technology worked, Qualcomm became more of a believer than it had been when it started the evaluation. 114 Many of Qualcomm s engineering and business evaluators were extremely impressed with ParkerVision s technology. 115 Qualcomm understood that it could not afford to let [ParkerVision s technology] get by us and into the hands of its competitors. 116 Consequently, Qualcomm made the decision to negotiate with ParkerVision in order to tie its technology to Qualcomm. 117 After the two companies failed to reach an agreement, Qualcomm continued to monitor ParkerVision s products and patents. 118 ParkerVision introduced substantial evidence to support its assertion that ParkerVision s technology led to Qualcomm s first-generation ZIF products. 119 In fact, the testimony of Qualcomm s corporate representative, Mr. Jaffee, shows that at least one Qualcomm engineer felt that Qualcomm s examination of ParkerVision s D2D 112 See, e.g., the video deposition testimony of Mr. Prashant Kantak displayed at Trial Tr., 10/9 at 158:21-159: See e.g., PX 699 (showing that high-level Qualcomm engineer Dr. Wheatley reviewed ParkerVision s patent applications with a Qualcomm patent attorney). 114 See, e.g., PX See, e.g., Trial Tr., 10/09 at 199:14-203:11, 203:24-204:17; see also, PX 37 (describing ParkerVision s technology as the virtual holy grail of RF transceivers); PX 307 (stating that Qualcomm engineers were very impressed with ParkerVision s technology and concluding that ParkerVision stumbled on to something revolutionary); PX 959 (explaining the benefits of ParkerVision s invention and asserting that Qualcomm should give credit to PV ). 116 PX 85; see also, PX 566 (stating that [ParkerVision s technology] would be huge for ASIC products, we cannot afford to miss out. ). 117 PX See, e.g., PX 584 (showing Qualcomm founder Franklin Antonio, in 2002, discussing the issuance of a ParkerVision patent. 119 See, e.g., JX 7 (explaining that Qualcomm s consideration of [ParkerVision s invention] led to an interesting concept). McKool v13 16

22 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 22 of 27 PageID technology led to [its] development of ZIF architecture. 120 When Qualcomm s early ZIF architecture began to lose its competitive advantage in the marketplace, high-level Qualcomm engineers, including those who participated in Qualcomm s evaluation of ParkerVision s technology, sought to investigate disruptive technologies for the company s next-generation designs. 121 In 2004 (shortly before infringement began), these Qualcomm engineers decided to go over the PV approach in order to determine whether or not they could make it work. 122 III. THE JMOL REGARDING INDIRECT INFRINGEMENT SHOULD BE DENIED A. Qualcomm Was Aware of or Willfully Blind to Each of the Patents-in-Suit. ParkerVision presented sufficient evidence that Qualcomm not only knew about and possessed copies of ParkerVision s patents, but also met with ParkerVision to discuss its patented technology, viewed demonstrations of the patented technology, and retained demonstration prototypes that embodied the Patents-in-Suit. 123 Qualcomm admitted Pre-Suit knowledge of two of the Patents-in-Suit: the 551 and 518 Patents Qualcomm had pre-suit knowledge of the patents-in-suit. The 518 Patent is a continuation of the 551 Patent. 125 Mr. Sorrells testified that he and other ParkerVision engineers taught Qualcomm how to make and use ParkerVision s downconversion technology protected by the 518 and 342 patents during the negotiations. 126 The jury heard testimony that ParkerVision went so far as to give Qualcomm multiple demonstration boards, including the Eddie-2 prototype, which embodied ParkerVision s 120 Trial Tr., 10/22 at 40:11-41: PX Id. 123 Trial Tr., Oct. 7, 2013 at 193:16-281:17; Trial Tr., Oct. 8, 2013 at 9:12-93:10; Trial Tr., Oct. 8, 2013 (Wheatley); Trial Tr., Oct. 8, 2013 (Kantak Direct); Trial Tr., Oct. 9, 2013 (AM) at 3:23-60:21. see, e.g., PX86; PX177; PX37; PX45; PX64; PX307; PX091; PX092; PX097; PX114; PX115; PX154; PX164; JX28; PX133; PX162; PX699; PX322; PX92; PX307; PX833; PX834; PX177; PX322; PX JX28 at PX Trial Tr., 10/8 at 19:25-37:8. McKool v13 17

23 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 23 of 27 PageID energy transfer sampling technology, including each of the Patents-in-Suit. 127 Mr. Sorrells testified that Qualcomm retained ParkerVision s Eddie-2 prototype to the present day the board was discovered on Qualcomm s premises during discovery in this case. 128 And the record contains s showing that Qualcomm carefully tracked the granting of ParkerVision s patents. 129 The jury reasonably credited this testimony and documentary evidence and concluded that Qualcomm infringed each of the Patents-in-Suit Sufficient evidence supports the jury s finding. Qualcomm next argues that ParkerVision s evidence has no bearing as to Qualcomm s mental state in designing the Magellan architecture. Qualcomm cites no case law to support its assertion that the time gap between when Qualcomm learned how to make and use ParkerVision s downconversion technology and introduction of the Magellan architecture necessitates disturbing the jury s reasonable determination of infringement. Furthermore, as explained above, there is no dispute that the Magellan architecture is the same as the other infringing architectures in regard to infringement of the asserted claims of the Patents-in-Suit or that the first infringing products were sold in 2006 approximately eighteen months after Quaclomm s about revisiting the ParkerVision approach. 131 Dr. Pruncal testified: I ve concluded that the design documents and circuits show that the circuits are substantially the same [as the Magellan architecture] as they relate to the patents. And they also infringe Qualcomm s intended-use argument fails. Qualcomm asserts that, because ParkerVision allegedly failed to prove that Qualcomm s mixer and filter designers actually intended to use the accused circuitry as energy samplers, 127 Trial Tr., 10/8 at 24:15-25: Trial Tr., 10/8 at 24:15-25: PX See dkt See supra III.A; PX Trial Tr., 10/10 at 65:7-65:12. McKool v13 18

24 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 24 of 27 PageID Qualcomm cannot be found to have induced infringement of the Patents-in-Suit. 133 This argument fails for a number of reasons. First, it ignores the fact that the inducement standard does not require intentional infringement it is met with a showing of knowledge or willful blindness. 134 More importantly, Qualcomm points to no case law holding that the knowledge or intention of a particular designer of an accused component, as opposed to that of the corporation as a whole, controls as it pertains to an active inducement analysis. Qualcomm also ignores the fact that ParkerVision produced substantial evidence that a litany of Qualcomm s upper level engineers and executives were aware of the technology disclosed in the Patents-in-Suit and were aware of or willfully blind to the infringing design and function of the Accused Products. 135 Finally, the fact that some of the circuitry related to the Accused Products may have provide a side benefit of other than energy sampling (e.g., TX filtering) 136 is not relevant to determining whether Qualcomm is inducing other to infringe the asserted claims of the Patentsin-Suit. 137 As Dr. Prucnal correctly testified, the accused circuitry is serving the purpose of transferring energy, which is what the patent is about. 138 Furthermore, as Dr. Prucnal testified, the circuit schematics and design documents of the Accused Products, which were readily available to the high-ranking Qualcomm engineers and executives with knowledge of ParkerVision s technology, 139 show how the accused circuitry actually infringes Dkt. 398 at Commil USA, LLC v. Cisco Sys., 720 F.3d 1361, 1367 (Fed. Cir. 2013) (citing Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011)). 135 See supra III.G. 136 See DKT. 398 at See e.g., Toshiba Crop v. Imation Corp., et al., 681 F.3d 1358 (Fed. Cir. 2012) (holding that a substantial noninfringing use does not preclude a finding of inducement). 138 Trial Tr., 10/10 at 190:10-190: As Qualcomm s own corporate representative testified, design documents like High-Level-Design-Reviews are created for, among other reasons, internal peer review and are released in [Qualcomm s] internal protected documentation system. Trial Tr., 10/21 at 258:11, 259: See, e.g., Trial Tr. 10/9 at 231:7-11; see also PX846, PX847, PX853 (schematics of Accused Products); see also PX502 at , 500; PX511 at 687, 696; PX1003 at 498; DX867 at 123, 125, ; JX64 at , ; JX134 at , 028; JX76 at 144, , , 157, 249; JX78 at , 553; JX68 at ; DX625 at 283; PX487 at , 349 (design documents of Accused Products). McKool v13 19

25 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 25 of 27 PageID B. The Interactions Further Support the Jury s Infringement Verdict. The interactions provide substantial circumstantial evidence of infringement. Mr. Sorrells, an inventor of the Patents-in-Suit, testified that he provided a prototype board to Qualcomm, the Eddie-2, that embodied ParkerVision s patented downconversion technique. 141 Mr. Sorrells also testified that, as negotiations progressed, he walked Qualcomm through ParkerVision s patents and taught Qualcomm how to make and use the patented technology. 142 In response, Qualcomm conducted an investigation into the scope and validity of ParkerVision s patents, concluding: Bottom line is, I think it is going to be very difficult for anybody to ever use this technique without stepping on one or more of their claims. 143 Dr. Prucnal also examined Qualcomm s internal s after it tested the Eddie-2 board and explained that the test results Qualcomm achieved using ParkerVision s technology were very good. 144 The jury saw that, after reviewing the test results, Qualcomm engineers concluded ParkerVision have stumbled on something revolutionary and that these test results were shared with others at Qualcomm. 145 And the jury saw that Don Schrock Qualcomm s Executive Vice President concluded that This is critical technology that we must land based on what we have seen so far. It offers revolutions RF versus power performance based on early [test] results. 146 In addition, shortly before Qualcomm began infringing, Seyfi Bazarjhani ed Steve Ciccarelli and stated that he would set up a meeting with Chuck to go over parker vision approach and see if we can make it work. 147 IV. CONCLUSION For all these reasons, Qualcomm s Motion for JMOL (dkt. 398) should be denied. 141 Trial Tr., 10/8 at 24:15-25:12; see also PX Trial Tr., 10/8 at 20:22-43: Trial Tr. 10/8 at 42:16-43:22; PX Trial Tr., 10/9 at 203:21-204: Trial Tr., 10/9 at 204:12-20; see also PX Trial Tr. 10/9 at 204:18-205:20; see also PX PX 322. McKool v13 20

26 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 26 of 27 PageID October 31, 2013 Respectfully submitted, McKOOL SMITH, P.C. /s/ Douglas A. Cawley Douglas A. Cawley, Lead Attorney Texas State Bar No Richard A. Kamprath Texas State Bar No.: Ivan Wang Texas State Bar No.: McKool Smith P.C. 300 Crescent Court, Suite 1500 Dallas, Texas Telephone: (214) Telecopier: (214) SMITH HULSEY & BUSEY /s/ James A. Bolling Stephen D. Busey James A. Bolling Florida Bar Number Florida Bar Number Water Street, Suite 1800 Jacksonville, Florida (904) (904) (facsimile) ATTORNEYS FOR PLAINTIFF PARKERVISION, INC. T. Gordon White Texas State Bar No Kevin L. Burgess Texas State Bar No Josh W. Budwin Texas State Bar No Leah Buratti Texas State Bar No Mario A. Apreotesi Texas State Bar No Kevin Kneupper Texas State Bar No James Quigley Texas State Bar No McKool Smith P.C. 300 West Sixth Street, Suite 1700 Austin, Texas Telephone: (512) Telecopier: (512) McKool v13

27 Case 3:11-cv RBD-TEM Document 475 Filed 10/31/13 Page 27 of 27 PageID CERTIFICATE OF SERVICE I hereby certify that a true and correct copy of the above and foregoing document has been served on all counsel of record via the Court s ECF system on October 31, /s/ Richard A. Kamprath Richard A. Kamprath McKool v13

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32 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 1 of 24 2 of PageID 25 PageID #: IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION PACT XPP TECHNOLOGIES, AG v. XILINX, INC., et al. Case No. 2:07-CV-563-RSP MEMORANDUM ORDER After a five-day trial, the jury found that Xilinx and Avnet willfully infringed claims 1, 3, 17, and 30 of U.S. Patent No. 6,119,181, and claim 8 of the U.S. Patent No. 6,338,106, and that the claims are not invalid. (Verdict, Dkt. No. 370.) The jury also found that PACT did not offer to sell in the U.S. or import into the U.S. a patented product. (Id.) The jury awarded $15,399,900 as a reasonable royalty for Defendants infringement. (Id.) Before the Court is Defendants Renewed Motion for Judgment as a Matter of Law of Non-Infringement, Invalidity, and No Standing, or in the Alternative, for a New Trial (Dkt. No. 400, filed June 27, 2012). APPLICABLE LAW A. Judgment as a Matter of Law Judgment as a matter of law is appropriate [i]f a party has been fully heard on an issue during a jury trial and the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue.... Fed. R. Civ. P. 50(a) & (b). The grant or denial of a motion for judgment as a matter of law is a procedural issue not unique to patent law, reviewed under the law of the regional circuit in which the appeal from the district court would usually lie. Finisar Corp. v. DirectTV Group, Inc., 523 F.3d 1323, 1332 (Fed. Cir. 2008). Under Fifth Circuit law, a court is especially deferential to a jury s verdict, and will not reverse the jury s findings unless they are not supported by substantial evidence. Baisden v. I m Ready Productions, Inc., 693 F.3d 491, 499 (5th Cir. 2012). A motion for judgment as a matter

33 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 2 of 24 3 of PageID 25 PageID #: of law must be denied unless the facts and inferences point so strongly and overwhelmingly in the movant s favor that reasonable jurors could not reach a contrary conclusion. Id. at 498 (citation omitted). In other words, [t]here must be more than a mere scintilla of evidence in the record to prevent judgment as a matter of law in favor of the movant. Arismendez v. Nightingale Home Health Care, Inc., 493 F.3d 602, 606 (5th Cir. 2007). The Court must review all evidence in the record, and draw all reasonable inferences in favor of the nonmoving party. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000). However, [c]redibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge. Id. [T]he court should give credence to the evidence favoring the nonmovant as well as that evidence supporting the moving party that is uncontradicted and unimpeached, at least to the extent that that evidence comes from disinterested witnesses. Id. at 151 (citation omitted). B. New Trial After a jury trial, the Court may grant a new trial on all or some issues for any reason for which a new trial has heretofore been granted in an action at law in federal court. Fed. R. Civ. P. 59(a). A new trial may be granted, for example, if the district court finds the verdict is against the weight of the evidence, the damages awarded are excessive, the trial was unfair, or prejudicial error was committed in its course. Smith v. Transworld Drilling Co., 773 F.2d 610, (5th Cir. 1985). When a motion for a new trial questions the sufficiency of the evidence, the Court must review all the evidence in a light most favorable to the jury s verdict and the motion must be denied unless the evidence points so strongly and overwhelmingly in favor of one party that the court believes that reasonable persons could not arrive at a contrary conclusion. Dawson v. Wal-Mart Stores, Inc., 972 F.2d 205, 208 (5th Cir. 1992)

34 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 3 of 24 4 of PageID 25 PageID #: DISCUSSION A. Direct Infringement Defendants move for judgment as a matter of law that the asserted claims are not directly infringed. (Mot. at 6-21.) To prove infringement, the patentee must show the presence of every element or its equivalent in the accused device. Lemelson v. United States, 752 F.2d 1538, 1551 (Fed. Cir. 1985). Determining infringement is a two-step process: [f]irst, the claim must be properly construed, to determine the scope and meaning. Second, the claim, as properly construed must be compared to the accused device or process. Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1129 (Fed. Cir. 2011) (citing Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993)). A determination of infringement is a question of fact that is reviewed for substantial evidence when tried to a jury. ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1311 (Fed. Cir. 2007). 1. Interface or Interface Unit Defendants argue that PACT failed to present substantial evidence that the infringing products satisfy the interface or interface unit element. (Motion at 6-12.) In particular, Defendants argue that PACT failed to present substantial evidence that the accused products contain a permanent implementation of a bus system control. The interface element is required by all of the claims the jury found to be infringed. The Court adopted the parties proposed construction that an interface or interface unit means a unit providing permanent implementation of a bus system control for communicating information across a shared boundary. (Claim Construction Order at 20, Dkt. No. 201.) The Court also adopted the parties proposed construction for the related term bus system, which means a system used to communicate information according to a bus protocol. (Id. at 12.) - 3 -

35 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 4 of 24 5 of PageID 25 PageID #: Dr. Nick Tredennick, PACT s technical expert, testified that each RocketIO, EMAC, and PCIe unit in the accused products constitute an interface or interface unit. (5/15 a.m. Tr. 79:8-80:23 and 5/15 p.m. Tr. 59:25-60:16.) Dr. Tredennick explained to the jury that the RocketIO, EMAC, and PCIe units are permanently implemented in the infringing productions because the units are hard cores that are always present on the chip, and the units are not built out of configurable logic blocks (CLBs). (5/15 a.m. Tr. 122:1-21.) For each type of interface unit, Dr. Tredennick pointed to specific evidence supporting his opinion that the interface units are permanently implemented. With respect to the RocketIO, Xilinx s documents confirmed that the RocketIO is a hard core placed in the FPGA fabric. (5/15 a.m. Tr. 123:4-24.) Dr. Tredennick also relied on an admission by a Xilinx engineer (Ralph Wittig) at a deposition that the RocketIO is dedicated and permanent : Question: Let me ask the -- the question again. Does the Rocket IO have dedicated or permanent hardware that controls the transmission of data to external advices? And his answer was: It has the driver that is dedicated and permanent. (5/15 a.m. Tr. 123:25-125:1.) Turning to the EMAC, the jury was shown a Xilinx document that identified the EMAC as one of the hard IP core blocks in the Virtex-4 FPGA, which is one of the accused products. (5/15 a.m. Tr. 125:2-11.) Dr. Tredennick also relied on the deposition testimony of Mr. Menon, who was an engineering manager at Xilinx with responsibility for the RocketIO, EMAC, and PCIe units. (5/15 a.m. Tr. 125:12-126:4.) Mr. Menon testified at his deposition that the EMAC is a hard core, and confirmed that EMAC units are not synthesized out of CLBs. (Id.) - 4 -

36 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 5 of 24 6 of PageID 25 PageID #: As to the PCIe, a Xilinx document confirmed that the PCIe unit is always present on the chip and that it is not made out of CLBs: by having hard-coded PCI Express functionality, [the accused Virtex-5 product]... will be able to interface to those peripherals without using CLB resources. (5/15 a.m. Tr. 126:5-23.) Dr. Tredennick also relied on Mr. Menon s deposition testimony, where Mr. Menon admitted that the accused Virtex-5 products include a PCIe unit even before the user touches the product. (5/15 a.m. Tr. 126:24-127:12.) PACT presented substantial evidence that the RocketIO, EMAC, and PCIe provide a permanent implementation of a bus system control. For the RocketIO, the jury was presented evidence that a serializer and deserializer is the permanent implementation of a bus system control inside the RocketIO. (5/15 a.m. Tr. 127:18-128:12.) For the EMAC, the evidence showed that a permanent hardware implementation of flow control is the bus system control in the EMAC. (5/15 a.m. Tr. 127:13-129:1.) Similarly, the evidence showed that the permanently implemented PCIe unit automatically handles flow control. (5/15 a.m. Tr. 129:2-12.) Next, PACT presented testimony from Dr. Tredennick that the RocketIO, EMAC, and PCIe communicate information across a shared boundary. (5/15 a.m. Tr. 129:23-131:13.) Dr. Tredennick showed the jury diagrams of the accused products, and pointed out the shared boundaries. (Id.) The evidence showed that a serializer converts parallel lines of incoming data and into serial lines of data, and that a deserializer converts serial lines of incoming data into parallel lines of data. (Id. at 128:5-12; 5/14 p.m. Tr. 62:24-63:13 (Mr. Vorbach s testimony).) Dr. Tredennick explained that [f]low control manages slight differences in speed between the input and output of the bus. (5/15 a.m. Tr. 128:24-129:1.) Despite the foregoing evidence, Defendants contend that there was no substantial evidence that the accused products contain an interface or interface unit with a permanent - 5 -

37 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 6 of 24 7 of PageID 25 PageID #: implementation of a bus system control. (Mot. at 7-8.) First, Defendants argue that the components identified as the bus system controls in the accused products are not permanent because the bus system controls must be programmed with at least some CLBs, and programming with CLBs is never permanent. (Mot. at 7-8.) Second, Defendants argue that PACT s infringement theory relies on an erroneous interpretation and application of the Court s claim construction. (Mot. at 8-11.) The Court turns its attention first to the claim construction argument. Defendants argue that Dr. Tredennick misapplied the Court s construction of the term interface unit by interpreting a bus system control to mean an aspect of the bus system control. (Mot. at 9-12.) Defendants argue that Dr. Tredennick s testimony relies on this false premise, and that the components he identified as being permanent bus system controls (the serializer/deserializer in the RocketIO and the flow control hardware in the EMAC and PCIe) do not satisfy the Court s construction because the accused FPGAs cannot communicate or control the bus system using those components alone. (Mot. at 10 (emphasis added).) In other words, Defendants contend that a bus system control must implement all aspects of control for a bus system. PACT contends that it is the Defendants who are advancing an erroneous interpretation of the term a bus system control. PACT argues that the parties agreed construction requires permanent implement of only a bus system control (i.e. one more bus system controls); it does not require every bus system control or all bus system controls to be permanent. (Resp. at 8.) Moreover, PACT contends that Defendants mischaracterize Dr. Tredennick s testimony. According to PACT, Dr. Tredennick never testified that the interface unit only needed to implement an aspect of a bus system control, as Defendants misstate but instead testified that - 6 -

38 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 7 of 24 8 of PageID 25 PageID #: he reads a bus system control in the Court s claim construction as a bus system control, and I interpret that to be an aspect of bus system control. (Resp. at 8-9 (emphasis in original).) The Court agrees with PACT that a bus system control, as that term is used in the parties agreed construction of interface unit, does not require a single control for a bus system. The parties agreed construction of interface unit recites: a unit providing permanent implementation of a bus system control for communicating information across a shared boundary. (Claim Construction Order at 20, Dkt. No. 201.) This agreement was reached by highly sophisticated patent litigators, who are undoubtedly aware that the plain and ordinary meaning of a is one or more. 1 The Court finds that the plain and ordinary meaning of the parties agreed construction of the term interface unit only requires a permanent implementation of one or more bus system controls. Accordingly, Dr. Tredennick s testimony suggesting that a bus system control implements an aspect of bus system control is not inconsistent with the Court s claim construction. The Court turns to Defendants argument that the identified bus system controls in the accused products are not permanent because the bus system controls must be programmed with at least some CLBs in order to communicate information according to a bus protocol, and that programming with CLBs is never permanent. (Mot. at 7-9.) According to Defendants, the RocketIO, EMAC, and PCIe units cannot communicate information according to a bus protocol without at least some programming with CLBs, and therefore cannot be a permanent implementation of a bus system control. (See Mot. at 7-8.) However, this argument relies on the same premise underpinning Defendants claim construction argument, namely, that an interface unit must fully implement the entire bus system control such that the bus system 1 Defendants expert, Mr. McAlexander conceded that a, as used in the agreed construction, means one or more. (5/17 a.m. Tr. 14:5-11.) - 7 -

39 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 8 of 24 9 of PageID 25 PageID #: control fully implements a bus protocol. (See Mot. at 8-9 (distinguishing evidence that the RocketIO, PCIe, and EMAC building blocks are a permanent implementation of a bus system control on the grounds that the evidence misapplies the Court s claim construction).) Therefore this argument must also be rejected. The Court finds that there is substantial evidence to support the jury s finding that the infringing products each have an interface or interface unit. 2. Re-Programmable, Dynamically Reconfigurable Cells Defendants argue that there is no substantial evidence that the DSP48 blocks within the infringing products have re-programmable, dynamically reconfigurable cells because there is no substantial evidence that a change in OPMODE halts the DSP48, or that the OPMODE resets the DSP48 with a new configuration. (Mot. at 15.) Defendants cite evidence from their own witnesses they contend shows that the opposite is true. (Id.) The re-programmable, dynamically reconfigurable cells element is only required by claim 17 of the 181 patent. The Court construed the term to mean a cell that can be halted and reset with a new configuration, while any remaining cells continue with the same function. (Claim Construction Order at 38, Dkt. No. 201.) Related constructions are reproduced below: cell Term Construction configurable element(s) (Id. at 13 (agreed construction).) configurable element a component of a logic unit, which can be set for a special function by a configuration string/word (Id. at 14 (agreed construction).) configuration string configurable a series of bits of any length that represents a valid setting for the element to be configured, so that an operable unit is obtained (Id. at 15 (agreed construction).) capable of having the function and interconnection of a logic unit, a FPGA cell, logic cell, or a PAE set - 8 -

40 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 9 of PageID of 25 PageID #: configured configuration (Id. at 25.) having set the function and interconnection of a logic unit, a FPGA cell, logic cell, or a PAE (Id. at 25.) the function and interconnection of a logic unit, a FPGA cell, logic cell, or a PAE. (Id. at 26.) During the trial, PACT s expert witness, Dr. Tredennick, explained in detail his opinion that the DSP48s in the infringing products are re-programmable, dynamically reconfigurable cells. (5/15 a.m. Tr. 150:9-157:11.) As to whether a change in OPMODE halts the DSP48, or that the OPMODE resets the DSP48 with a new configuration, there is substantial evidence that DSP48s in the infringing products meet both requirements. Dr. Tredennick testified that the OPMODE is a little like an instruction that sets the function and interconnection for the [DSP48]. (Id. at 152:10-12.) Dr. Tredennick explained how changing the OPMODE changes the function of the DSP48, and changes the inputs and outputs (i.e. the interconnection). (Id. at 153:5-155:4.) Finally, Dr. Tredennick was specifically asked whether the DSP48 is a cell that can be halted and reset with a new configuration while any remaining cells continue with the same function : Q. And, Dr. Tredennick, the Court s construed dynamically reconfigurable to be -- I 'm sorry -- dynamically reconfigurable cell is a cell that can be halted and reset with a new configuration while any remaining cells continue with the same function. Do the DSP48s do that? A. Yes. That s actually what [Xilinx witness (Ms. Wong) deposition] testimony tells us. It says it s possible to change the OPMODE for DSP -- one DSP slice without changing the OPMODEs for the other DSP slices. So, yes, it s possible. Q. Are the DSP48s actually halted and reset with a new configuration? - 9 -

41 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 10 of of PageID 25 PageID #: (Id. at 155:12-25.) A. Yes. They re clocked so that they stop, and then the OPMODE changes, and then they continue. In light of Dr. Tredennick s testimony, which the jury apparently accepted, the Court finds that there is substantial evidence to support the jury s finding that the DSP48s in the infringing products constitute re-programmable, dynamically reconfigurable cells. 3. Remaining Limitations Defendants contend that there is no substantial evidence that the infringing products meet the following limitations: lines or buses providing communication with or connecting to other devices; a multidimensional programmable cell architecture ; a state machine ; an address generator ; dynamically reconfigurable cells ; a first bus ; a primary logic unit/processing unit ; or a register. (Mot. at ) PACT argues that Defendants motion for judgment as a matter of law on these grounds should be denied because Defendants failed to cross-examine Dr. Tredennick or to offer contrary evidence from its own witnesses on these limitations, [and therefore] the jury was certainly entitled to accept Dr. Tredennick s testimony. (Resp. at (citation omitted).) Defendants respond that PACT bears the burden of demonstrating that the [infringing products] meet every limitation of the asserted claims, regardless of whether Defendants cross-examined Dr. Tredennick on every single limitation. (Reply at 4 (citations omitted).) Defendants do not dispute that they failed to cross-examine Dr. Tredennick on these limitations. As an expert witness, Dr. Tredennick was permitted to testify in the form of an opinion. Fed. R. Evid Unless required by the Court, an expert witness is not required to testify to the underlying facts or data supporting an opinion, [b]ut the expert may be required to disclose those facts or data on cross-examination. Fed. R. Evid Moreover, an expert s opinion is

42 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 11 of of PageID 25 PageID #: not objectionable merely because it embraces an ultimate issue. Fed. R. Evid In Symbol Technologies, Inc. v. Opticon, Inc., the Federal Circuit recognized that one of the purposes of Rule 705 is to abbreviate trials by permitting opinion testimony without factual foundation, and found that [p]atent cases, so often typified by lengthy testimony on complex technical issues are particularly served by this purpose. 935 F.3d 1569, 1576 (Fed. Cir. 1991). The Federal Circuit affirmed a jury verdict of infringement where the patentee rested on unchallenged expert testimony and failed to offer contrary evidence: Id. at In short, [Plaintiff] was permitted to rest its prima facie case on [Plaintiff s expert s] testimony, including charts, that the patents were infringed, and the District Court was free to accept or reject that evidence. Of course, by resting its case on summary testimony, [Plaintiff] was left exposed to a profound risk that [Defendant], during its defense or cross-examination of [Plaintiff s expert], would demonstrate that the accused devices were noninfringing under a different and proper construction of the claims. [Defendant] willingly permitted [Plaintiff] to bear this risk, but chose not to expose [Plaintiff s expert s] testimony to the glaring light of cross-examination on this issue. Having lost below, [Defendant] cannot here recoup for its failed litigation strategy. In view of the legal effect of the expedited procedure, we must reject [Defendant s] contention that [Plaintiff] failed to present a prima facie case of infringement. Since [Defendant] offers no argument that its products do not infringe on the facts, we need not review infringement itself. In light of Defendants failure to cross-examine Dr. Tredennick on any of these limitations, Dr. Tredennick s opinion testimony is prima facie evidence of Defendants infringement. The Court has reviewed the evidence cited by the parties, and finds that Defendants have failed to identify any evidence from the trial demonstrating that these limitations are not met. Thus, the jury was free to rely on Dr. Tredennick s opinion that the remaining limitations were met

43 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 12 of of PageID 25 PageID #: That the jury chose to accept Dr. Tredennick s testimony is not surprising. Dr. Tredennick struck the Court as a well-qualified and credible expert witness. Dr. Tredennick received a Ph.D. in electrical engineering from the University of Texas. (5/15 a.m. Tr. 66:18-67:5.) After obtaining his Ph.D., he spent 35 years working in the semiconductor industry for leading companies in the field including Motorola, IBM, and Altera. (Id. at 66:3-12; 67:10-69:15.) He was involved in a successful microprocessor startup that was successfully taken public, and subsequently acquired by AMD. (Id. at 68:11-69:1.) At the time PACT s patents were filed, Dr. Tredennick was the chief scientist at Altera, an FPGA company and Xilinx s major competitor. (Id. at 69:2-17.) While there, Dr. Tredennick obtained two patents of his own for reconfigurable computing. (Id. at 69:18-21.) Dr. Tredennick has published articles, a number of which involve reconfigurable computing or FPGAs, and has been a keynote speaker at a number of FPGA conferences. (Id. at 70:5-21.) In 2002, Xilinx itself paid Dr. Trendennick to be the keynote speaker at its Programmable World Conference, which had 8,000 attendees. (Id. at 73:6-16.) At the time, Xilinx issued a press release stating that Dr. Tredennick is a true industry pioneer. (Id. at 74:7-9.) These are only a few examples of the career accomplishments presented to the jury, and say nothing about his honorable military service. The Court finds that PACT presented substantial evidence that the infringing products meet the following limitations: lines or buses providing communication with or connecting to other devices; a multidimensional programmable cell architecture ; a state machine ; an address generator ; dynamically reconfigurable cells ; a first bus ; a primary logic unit/processing unit ; and a register. Accordingly, Defendants motion for judgment of matter as of a law on the grounds of no direct infringement is DENIED

44 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 13 of of PageID 25 PageID #: B. Induced Infringement Defendants move for judgment as a matter of law that the asserted claims are not indirectly infringed. (Mot. at ) Whoever actively induces infringement of a patent shall be liable as an infringer. 35 U.S.C. 271(b). To prove a claim of induced infringement, the patentee must establish first that there has been direct infringement, and second that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another s infringement. ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1313 (Fed. Cir. 2007) (citation omitted). A determination of infringement is a question of fact that is reviewed for substantial evidence when tried to a jury. ACCO Brands, Inc., 501 F.3d at Proof of Direct Infringement Defendants contend that PACT has failed to present substantial evidence that any of Defendants customers directly infringe the asserted patents. (Mot. at ) The direct infringement prong of induced infringement requires that the patentee prove actual instances of direct infringement or show that the accused products necessarily infringe. ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1313 (Fed. Cir. 2007). However, direct evidence of instances of direct infringement is not required. Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1364 (Fed. Cir. 2012). Circumstantial evidence may suffice if the evidence shows that at least one person directly infringed an asserted claim during the relevant time period. Id. First, the Court has considered and rejected Defendants arguments that the accused products do not directly infringe on their own. (See infra.) Therefore, there is substantial evidence in the record that the accused products necessarily infringe. However, PACT also presented substantial evidence that Defendants customers directly infringe by using the RocketIO, EMAC, and PCIe units in the accused products to communicate with an external device. Dr. Tredennick testified that there is direct infringement anytime a

45 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 14 of of PageID 25 PageID #: customer uses the RocketIO, EMAC, or PCIe unit of an accused product to communicate with an external device. (5/15 p.m. Tr. 20:3-7.) Dr. Tredennick identified Cisco, Alcatel-Lucent, Intel, Toshiba, Huawei, Siemens Medical, and Convey Computers as customers that directly infringe the asserted patents by using the RocketIO, EMAC, or PCIe units of the accused products to communicate with an external device. (Id. at 30:19-25.) This testimony was based in part on the deposition testimony of Xilinx s corporate representative (Ralph Wittig), who identified the major customers of the RocketIO. (Id. at 31:1-20.) PACT also relied on customer surveys as circumstantial evidence that Defendants customers use the RocketIO, PCIe, and EMAC units to communicate with external devices. In one survey of customers concerning features of the accused Virtex products (PX 149), 48 customers identified the RocketIO as among the top 5 features, and 16 customers ranked the RocketIO as the top feature. (Id. at 31:24-32:6.) In the same survey, 13 customers ranked the EMAC as among the top 5 features, and one customer ranked it number one. (Id. at 32:7-12.) When asked Does your application include Ethernet MACs?, 45% of respondents said yes. (PX149 at XL ) For the PCIe, 14 customers ranked the feature in the top 5, and two customers ranked it number one. (5/15 p.m. Tr. at 32:13-15.) When the customers were asked how likely it was that their next design would use the RocketIO, 11 responded that it was likely, 30 responded that it was very likely, and 64 responded that it was certain. (Id. at 32:20-33:1.) In a different survey (PX 150), 95% of customers said they planned to use the RocketIO, a majority said they planned to use the EMAC, and a large majority said they planned to use the PCIe. (Id. at 33:7-34:4.) The majority of customers interviewed for the survey were located in North America. (PX 150 at XL ) Dr. Tredennick testified that it was his opinion that such high numbers of respondents indicating that they planned to use RocketIO, EMAC, and

46 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 15 of of PageID 25 PageID #: PCIe features of the accused products made it very likely that customers actually use those features. (5/15 p.m. Tr. at 32:16-19; 33:24-34:4.) Moreover, the evidence that customers were using EMACs in their current applications supports the jury s implicit finding of instances of direct infringement. The Court finds that a reasonable juror could properly infer from the evidence that Defendants customers were directly infringing the asserted claims by using the RocketIO, EMAC, and PCIe units in the accused products in an infringing manner. In their reply brief, Defendants argue that there is no evidence that the acts of direct infringement occurred in the United States. (Reply at 9.) However, the evidence shows that Defendants largest customers are companies with a significant U.S. presence (e.g., Cisco, Intel, and Alcatel-Lucent), and there are significant sales of accused products in the United States. A significant portion of the survey respondents were based in North America, and likely the United States. In short, there was substantial evidence in the record supporting the jury s implicit finding that instances of direct infringement occurred in the United States. 2. Evidence of Intent Defendants argue that there is no substantial evidence that Defendants intended for anyone to infringe, or that Defendants had knowledge that their customer s acts might infringe the asserted claims. (Mot. at ) [I]nducement requires that the [defendant] knowingly induced infringement and possessed specific intent to encourage another s infringement. DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc). The defendant must also have knowledge that the induced acts constitute patent infringement. Global-Tech Appliances, Inc. v. SEB, S.A., 131 S. Ct. 2060, 2068 (2011). There is substantial evidence that Defendants had knowledge of the asserted patents, and had knowledge that their customers acts would constitute patent infringement. Avnet admitted in its interrogatory responses that it had knowledge of the asserted patents as early as December

47 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 16 of of PageID 25 PageID #: , 2007, when this lawsuit was filed. (5/15 p.m. Tr. 30:13-18.) As to Xilinx, an internal sent by David Parlour on March 15, 2003 to several Xilinx employees (including trial witness Ivo Bolsons) referred to twelve patents owned by PACT, including the asserted patents. Mr. Parlour noted his impression that PACT s patent portfolio **[s]eems like a strong portfolio**. (PX98; 5/15 p.m. Tr. 27:20-28:12.) Xilinx attempted to explain away the significance of this to the jury by arguing that the strong portfolio characterization was based solely on the number of patents in the portfolio, and did not reflect any opinion as to the quality of the patents. However, the jury was certainly free to not accept Xilinx s explanation, particularly in light of the other evidence suggesting that Xilinx was of the opinion that PACT had a strong patent portfolio and was interested in acquiring PACT s patents. For example, in 2005, Dr. Bolsons wrote: They [(PACT)] are, however, well positioned from a patent point of view. If you believe that coarse grain arrays will prevail in the future, they have a strong patent portfolio of 60+ patents filed and 30 approved in this field. In summary, I would not bet my dollars on PACT but I would be interested in their patents. (PX112 ( from Ivo Bolsons to Flip Gianos).) In their proposed findings of fact and conclusions of law, Defendants recount much of the compelling documentary and testimonial evidence offered at the trial regarding the detailed discussions of PACT s patented technology with Xilinx all of which occurred well before this lawsuit was filed. (See Defs. Proposed Findings of Fact at 17-18, Dkt. No. 397.) From 2001 to 2006, PACT had at least 10 meetings with 15 to 20 different Xilinx employees. The evidence shows that PACT sought to convince Xilinx of the value of PACT s technology with the hope that Xilinx would incorporate PACT s technology into Xilinx s FPGA products. Although PACT failed in its endeavor, the evidence strongly suggests that Xilinx gained a detailed understanding of PACT s technology, including the asserted patents

48 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 17 of of PageID 25 PageID #: Defendants nonetheless contend that they did not know that their acts, or that the acts of their customers, infringe the asserted patents because PACT never told Xilinx during the course of these discussions that PACT believed Xilinx s products infringe. Of course, there was no requirement that PACT inform Defendants that it believed they were infringing in order for Defendants to know of their own infringement. Moreover, Mr. Vorbach explained that PACT did not know of Xilinx s infringement until 2007 because PACT misunderstood how Xilinx s products were designed. (5/14 p.m. Tr. 83:25-84:5; 86:4-15; 114:12-24; 187:9-188:3.) Mr. Vorbach believed that Xilinx s products had a fine grained design. On the other hand, PACT s technology uses a coarse grained design. At no time during their discussions did Xilinx ever correct Mr. Vorbach s misunderstanding of the design of Xilinx s products. Although Xilinx may not have had a duty to set Mr. Vorbach straight, it certainly cannot argue that it was reasonable to rely on PACT s failure to have accused Defendants of infringement when PACT was operating under an incorrect understanding of their products design. There is substantial evidence that Defendants intended for their customers to infringe the asserted patents. Evidence of active steps taken to encourage direct infringement, such as advertising an infringing use or instructing how to engage in an infringing use, shown an affirmative intent that the product be used to infringe. MEMC Elec. Mat ls, Inc. v. Mitsubishi Mat ls Silicon Corp., 420 F.3d 1369, (Fed. Cir. 2005) (quoting Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 936 (2005). Dr. Tredennick testified that Defendants provide user manuals that instruct customers how to configure the [accused products] and put them in an application that uses a [RocketIO, EMAC, or PCIe] to communicate with external devices, and therefore directly infringe the asserted patents. (5/15 p.m. Tr. 19:15-20:5.) Defendants also supply application notes, reference designs, software,

49 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 18 of of PageID 25 PageID #: websites, and training courses that teach or encourage customers to use the accused products in an infringing manner. (Id. at 20:8-30:12.) Therefore, PACT presented substantial evidence that Defendants intended for their customers to use the accused products in an infringing manner. Because there is substantial evidence of instances of direct infringement, and substantial evidence that Defendants knowingly induced infringement and possessed the specific intent to encourage their customers infringement, Defendants motion for judgment as a matter of law of no indirect infringement is DENIED. C. Invalidity Defendants move for judgment as a matter of law that the asserted claims are invalid as anticipated or as obvious. (Mot. at ) Patents are presumed valid and overcoming this presumption requires clear and convincing evidence. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1354 (Fed. Cir. 2010) (en banc). A patent claim is invalid as anticipated if the claimed invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention by the applicant. 35 U.S.C. 102(a) (2006). Anticipation requires the presence in the prior art of each and every limitation of the claimed invention. Amgen, Inc. v. Hoffman-La Roche Ltd., 580 F.3d 1340, 1366 (Fed. Cir. 2009). Anticipation is a question of fact. Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008). A patent claim is invalid as obvious if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 35 U.S.C. 103(a) (2011). Obviousness is a question of law based on underlying factual findings: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective

50 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 19 of of PageID 25 PageID #: indicia of nonobviousness. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012) (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, (1966). Although the Court must determine the ultimate legal question of obviousness, the Court must presume that the jury resolved all underlying factual disputes in favor of the verdict and must accept the jury s findings if supported by substantial evidence. 688 F.3d at Defendants relied on the testimony of their expert Mr. McAlexander to prove that the asserted claims are invalid. Mr. McAlexander testified that the asserted patents are either (1) anticipated by U.S. Patent No. 6,052,779 to DeHon (relying on inherency for some of the claim limitations), or (2) obvious in view of the combination of DeHon with the PCI Bus Standard. (5/17 a.m. Tr 37:8-13 and 44:13-20.) Defendants argue that no reasonable jury could have concluded that the patents are not invalid. (Mot. at ) PACT argues that the jury was free to not accept Mr. McAlexander s conclusory testimony, that Mr. McAlexander failed to show that several limitations were present in the DeHon or PCI prior art, and that there is substantial rebuttal evidence supporting a finding that the asserted claims are not invalid. (Resp. at ) The Court finds that a reasonable juror could find that the asserted claims are not invalid as anticipated. Mr. McAlexander offered testimony in the form of short (almost summary) opinions that the various limitations of the asserted claims were disclosed in the prior art. (See 5/17 a.m. Tr. 37:8-44:20 (Mr. McAlexander s direct examination concerning the DeHon and PCI prior art).) The summary nature of Mr. McAlexander s testimony is belied by the fact that Defendants cite numerous demonstrative slides in their motion to support their argument that the jury was presented with evidence that various limitations were disclosed in the prior art. (See Mot. at 25.) Although Mr. McAlexander s demonstratives may have pointed to where various limitations may be found in the prior art, the jury was instructed that demonstrative exhibits are

51 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 20 of of PageID 25 PageID #: not evidence, and therefore Mr. McAlexander s demonstratives cannot be the sole evidentiary basis for contending that a fact is established in the record. In any event, Mr. McAlexander s treatment of various limitations was not particularly compelling in light of Defendants burden of proof, and therefore a reasonable juror could properly discredit his testimony. Although the parties agreed that the preamble term bus system required construction (and the Court adopted the parties agreed construction for this term 2 ), Mr. McAlexander nonetheless failed to opine or explain how the DeHon prior art teaches a bus system, as that term has been construed. (See Claim Construction Order at 12-13; 5/17 a.m. Tr. 38:23-39:8 (Mr. McAlexander s testimony skipping over the bus system term).) Defendants argue that Mr. McAlexander addressed the bus system limitation when he testified regarding the interface unit limitation. (Reply at 9 (citing 5/17 a.m. Tr. 39:21-40:1; 40:23-41:5).) The testimony cited by Defendants does not support their argument. In that portion of his testimony, Mr. McAlexander merely pointed out what he contends is the interface unit taught by the DeHon prior art, and did not explain (or opine) how DeHon discloses a bus system. (5/17 a.m. Tr. 39:19-40:4.) At best, Mr. McAlexander s testimony can be read to suggest that a bus system control is inherently present in DeHon because DeHon contemplates implementing the PCI protocol and the PCI protocol requires a state machine. (5/17 a.m. Tr. 40:20-41:10.) In other words, Mr. McAlexander contends that the bus system control inherently present in the DeHon prior art is the state machine described in the PCI prior art. However, this theory does not satisfy the claim limitation. Under the Court s construction, the interface unit must provide a permanent implementation of a bus system control. (Claim Construction Order at 20.) Mr. McAlexander admitted on cross-examination that a permanent 2 The agreed construction for bus system is a system used to communicate information according to a bus protocol. (Claim Construction Order at )

52 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 21 of of PageID 25 PageID #: state machine is not required by PCI, that the state machine can be implemented in a permanent or a non-permanent way, and that the PCI specification says nothing about whether the state machine is permanent. (5/17 a.m. Tr. 405:4-107:13.) Therefore, a juror would not be wrong to conclude that that a permanent state machine is not inherently present in DeHon. Mr. McAlexander s testimony regarding other limitations, such as a multidimensional programmable cell architecture, dynamically reconfigurable cells, and an address generator, was similarly unconvincing. 3 Based on the evidence, the Court finds that a reasonable juror could find that the asserted claims are not invalid as anticipated. Turning to the issue of obviousness, Defendants relied on the combination of DeHon and the PCI prior art. Both references were before the jury, and Defendants argued that the limitations missing from the DeHon prior art were inherently present, as illustrated by the teachings and disclosures in the PCI prior art. The jury clearly disagreed with this argument, and found that not all limitations were present in the prior art. Even if the references are combined as Mr. McAlexander suggested, the Court finds that the combination of DeHon and the PCI Specification fails to teach or disclose at least a bus system control. Therefore, the Court finds that the asserted claims are not invalid as obvious. Defendants motion for judgment as a matter of law on the grounds that the asserted claims are invalid is DENIED. D. Claims Not Asserted at Trial Defendants move for judgment as a matter of law that they do not infringe the patents listed in the complaint for which no evidence of infringement was offered at trial: U.S. Patent 3 To the extent Mr. McAlexander offered his opinion that all limitations were present in the prior art, a reasonable jury was well within its rights to give less credit to, or even disregard, Mr. McAlexander s testimony. During cross-examination, Mr. McAlexander admitted to not being offered as an expert in the field of FPGAs, to not having worked for an FPGA company, or to have taken any courses specific to FPGAs. (5/17 a.m. Tr. 52:8-13; 53:4-6; 53:20-25.) Mr. McAlexander also admitted to having served as an expert in forty cases in the past five years. (Id. at 54:19-55:3.)

53 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 22 of of PageID 25 PageID #: Nos. 6,088,795; 6,728,871; 6,542,998; 5,943,242; 6,859,869; 7,028,107; 6,513,077; 6,526,520; and 7,237,087 (hereinafter, the dropped patents ). (Mot. at 27.) PACT contends that granting judgment as a matter of law that the dropped patents are not infringed is improper. (Resp. at ) PACT argues that it voluntarily reduced the number of patents and claims asserted to make the trial of this case manageable, but that it always reserved its right to later assert the dropped patents. PACT notes that the dropped patents were not listed in the pretrial order, were not mentioned in the preliminary jury instructions stating the contentions of the parties, and that no evidence regarding the dropped patents was presented at trial. (Id. at n. 29.) Because the infringement of the dropped patents was not at issue at trial, PACT contends that it would be reversible error for the Court to grant judgment as a matter of law. (Id. at 29.) The Court finds that the infringement of U.S. Patent Nos. 6,088,795; 6,728,871; 6,542,998; 5,943,242; 6,859,869; 7,028,107; 6,513,077; 6,526,520; and 7,237,087 was not an issue actually litigated at trial. The parties agreed preliminary jury instructions do not mention the dropped patents, nor did the preliminary instructions given by the Court refer to the dropped patents. (See Dkt. No at 4; Tr. 35:10-12 (Court s preliminary instruction to the jury that [t]he case involves U.S. Patent Nos. 6,119,181 and 6,338, ).) Defendants do not point to any evidence offered during the trial concerning the infringement of the dropped patents. Finally, the dropped patents were not mentioned in the final jury instructions or listed on the verdict form. Therefore, the infringement of the dropped patents was not an issue actually litigated during the trial. The Court must deny Defendants motion for judgment of a matter of law that the dropped patents are not infringed because the infringement of the dropped patents was not actually litigated. See Alcon Research Ltd. v. Barr Labs. Inc., 837 F. Supp. 2d 364, 392 (D. Del

54 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 23 of 24 of PageID 25 PageID #: ). Although Alcon is not binding authority, the Delaware court s reasoning is sound and relies on binding authority. The Delaware court relied on Tol-O-Matic, Inc. v. Proma Produkt- Und Marketing Gesellschaft m.b.h. for the proposition that: Pleadings do not suffice to support a judgment when the subject matter was not litigated, or fairly placed in issue, during the trial.... There must be sufficient and explicit notice of the claims at risk. When the pleadings are not in complete harmony with the issues that were litigated and adjudicated, it is the pleadings that may be conformed to the judgment, not vice versa. 945 F.3d 1546, (Fed. Cir. 1991), abrogated on other grounds, Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995). The Delaware court also relied on the Federal Circuit s reversal of a trial court judgment that claims neither litigated nor placed in issue during trial were invalid. 800 Adept, Inc. v. Murex Securities, Ltd., 539 F.3d 1354, 1368 (Fed. Cir. 2008). The case cited by Defendants, Advanced Transformer Co. v. Levinson, is inapposite because the trial court had determined that infringement was at issue in the trial, and the Federal Circuit found that that trial court had not clearly erred in making that determination. 837 F.2d 1081, 1084 (Fed. Cir. 1998). Accordingly, Defendants motion for judgment as a matter of law of noninfringement is DENIED. E. Standing Defendants move for judgment as a matter of law that Plaintiff PACT XPP Technologies, AG lacks standing to assert U.S. Patent Nos. 6,119,181 and 6,338,106. (Mot. at 28.) Defendants argue that the patents on their face show that the patents were assigned to PACT GmbH, and that Mr. Vorbach testified to the fact that PACT GmbH and Plaintiff PACT XPP Technologies, AG are different legal forms. (Id.) Defendants contend that they are entitled to judgment as a matter of law because there was no evidence offered of an assignment of the patents from PACT GmbH to Plaintiff. (Id.)

55 Case Case 3:11-cv RBD-TEM 2:07-cv RSP Document Filed Filed 08/28/13 10/31/13 Page Page 24 of of PageID 25 PageID #: The Court finds that there is substantial evidence that Plaintiff PACT XPP Technologies, AG is the owner of the patents and that Plaintiff has standing to assert them. The reexamination certificates of the patents show that the patents were assigned to Plaintiff PACT XPP Technologies, AG. (See PX787 and PX788.) Mr. Vorbach offered undisputed testimony that PACT GmbH underwent a change in legal form producing PACT XPP Technologies, AG, and Mr. Vorbach offered undisputed testimony that Plaintiff owns the patents. (5/14 a.m. Tr. 115:14-25; 133:25-134:2; 135:6-8.) Defendants motion for judgment of matter of law on the grounds that Plaintiff lacks standing is DENIED. CONCLUSION Having found that Defendants are not entitled to judgment as a matter of law on the grounds raised in their motion and are not otherwise entitled to a new trial, Defendants Renewed Motion for Judgment as a Matter of Law of Non-Infringement, Invalidity, and No Standing, or in the Alternative, for a New Trial (Dkt. No. 400) is DENIED