Case 3:15-cv BJD-JRK Document 49 Filed 05/12/17 Page 1 of 6 PageID 2283

Transcription

1 Case 3:15-cv BJD-JRK Document 49 Filed 05/12/17 Page 1 of 6 PageID 2283 UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION PARKERVISION, INC., Case No. 3:15-CV-1477-BJD-JRK Plaintiff, APPLE INC., QUALCOMM INCORPORATED, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, SAMSUNG SEMICONDUCTOR, INC., LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC. and LG ELECTRONICS MOBILECOMM U.S.A., INC. v. Defendants. DEFENDANTS STATUS REPORT AND RESPONSE TO PARKERVISION S MOTION TO OPEN THE CASE AND LIFT STAY Pursuant to the Court s February 12, 2016 Order (Dkt. 41), Defendants Qualcomm Incorporated, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc. and LG Electronics MobileComm U.S.A., Inc. (collectively, Defendants ) 1 hereby provide the Court with the following status report. This status report also serves as a response to ParkerVision s Motion to Open the Case and Lift Stay (Dkt. 48.) Defendants 1 Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America, LLC and Samsung Semiconductor, Inc. were dismissed on August 10, (Dkt. 43.) 1

2 Case 3:15-cv BJD-JRK Document 49 Filed 05/12/17 Page 2 of 6 PageID 2284 do not oppose administratively reopening the case and setting a date for a case management conference. As set forth below, however, Defendants request that the Court order the parties to conduct a Rule 16 conference within 30 days of lifting the stay given the state of the case at the time of the stay, and to file a case management report within 14 days of the Rule 16 conference. I. History and Status of Parallel ITC Proceedings This action was stayed on February 12, 2016, in light of a parallel ITC Proceeding. 2 (Dkt. 41.) ParkerVision asserted the same four patents in the ITC Proceeding that it asserted in the amended complaint in this action (Dkt. 3): U.S. Patent Nos. 6,879,817 (the 817 Patent ), 7,929,638 (the 638 Patent ), 8,571,135 (the 135 Patent ), and 9,118,528 (the 528 Patent ). During the course of the ITC Proceeding, ParkerVision withdrew all infringement allegations with respect to three of the four patents-in-suit, and the parties prepared for trial on the remaining patent (the 528 Patent). In its pretrial brief, the Office of Unfair Imports Investigations ( OUII ) an independent body who participates on behalf of the public in ITC investigations concluded that the evidence would show that the asserted 528 claims were invalid, not infringed, and subject to collateral estoppel precluding ParkerVision s infringement theory. 3 OUII reached similar conclusions about the The parallel ITC proceeding was titled Certain RF Capable Integrated Circuits and Products Containing the Same, Investigation No. 337-TA-982 ( ITC Proceeding ). 3 During the pendency of the ITC Proceeding, ParkerVision exhausted all appeals in the first litigation against Qualcomm where Judge Dalton and the Federal Circuit (twice) held that Qualcomm integrated circuits did not infringe ParkerVision s energy transfer sampling inventions when the U.S. Supreme Court denied ParkerVision s petition for certiorari. ParkerVision v. Qualcomm, 136 S. Ct (2016); see also ParkerVision v. Qualcomm, 27 F. Supp. 3d 1266 (M.D. Fla. 2014); ParkerVision v. Qualcomm, No. 14-2

3 Case 3:15-cv BJD-JRK Document 49 Filed 05/12/17 Page 3 of 6 PageID 2285 and 817 Patents. 4 In his pre-trial rulings, the Administrative Law Judge ( ALJ ) denied ParkerVision s attempt to introduce untimely evidence and theories. (337-TA-982, Orders 13, 20, 26.) After 15 months of litigation before the ITC, and two days before trial was set to start, ParkerVision stated that it could no longer proceed with its case in light of the ALJ s rulings. ParkerVision moved to terminate the ITC Proceedings and simultaneously announced that it planned on pursuing the action before this Court instead (where it was not facing the same unfavorable rulings that it had received in the ITC Proceeding). The ALJ issued an initial determination granting the motion to terminate the matter, and the U.S. International Trade Commission determined not to review the ALJ s initial determination. II. Defendants Position on Case Reopening and Case Management Deadlines Given that there are no issues for appeal, the ITC s decision dismissing the complaint is now final. As a result, Defendants agree that the conditions for the current stay are no longer present and do not oppose administratively reopening this case. Defendants similarly do not oppose setting initial case management conference dates as contemplated by Local Rule Defendants note, however, ParkerVision has been unwilling to inform Defendants whether it intends to assert the 817 Patent, 638 Patent, and the 135 Patent in this case despite the substantial non-infringement and invalidity evidence that caused ParkerVision to drop those patents in the ITC Proceeding. 1612, (Dkt. 95-1), 621 Fed. App x (Fed. Cir. July 31, 2015); ParkerVision v. Qualcomm, 627 F. App x 921 (Fed. Cir. Oct. 2, 2015). 4 ParkerVision had not dropped the 817 and 638 patents at the time of OUII s prehearing brief. OUII concluded that the evidence was expected to show that the accused products did not infringe either patent, all asserted claims of the 817 patent and certain claims of the 638 Patent were invalid, and ParkerVision s claims with respect to the 817 patent were subject to collateral estoppel precluding ParkerVision s infringement theory. 3

4 Case 3:15-cv BJD-JRK Document 49 Filed 05/12/17 Page 4 of 6 PageID 2286 In addition, Apple and the LG entities had not responded to the complaint at the time of the stay, 5 and the deadlines for their responses will need to be reset. As a result, Defendants request that the case management report deadlines be set far enough in the future so that the parties can have a meaningful dialogue about the issues in dispute and a potential schedule. Defendants propose that the Court order the parties to conduct a Rule 16 conference within 30 days of lifting the stay, and to file a case management report within 14 days of the Rule 16 conference. Dated: May 12, 2017 COOLEY LLP By: /s/ Matthew J. Brigham Stephen C. Neal (pro hac vice) nealsc@cooley.com Jeffrey Karr (pro hac vice) jkarr@cooley.com Matthew Brigham (pro hac vice) mbrigham@cooley.com Benjamin G. Damstedt (pro hac vice) bdamstedt@cooley.com 3175 Hanover Street Palo Alto, CA Phone: (650) Fax: (650) Eamonn Gardner (pro hac vice) egardner@cooley.com 4401 Eastgate Mall San Diego, CA Phone: (858) Fax: (858) Stephen R. Smith (pro hac vice) stephen.smith@cooley.com BEDELL, DITTMAR, DEVAULT, PILLANS & COXE, P.A. John A. DeVault, III Florida Bar No jad@bedellfirm.com The Bedell Building 101 East Adams Street Jacksonville, Florida Phone: (904) Fax: (904) Counsel for Defendants Qualcomm Incorporated, LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics MobileComm U.S.A. SIDLEY AUSTIN LLP Brian R. Nester (pro hac vice) bnester@sidley.com Michael R. Franzinger (pro hac vice) mfranzinger@sidley.com Wonjoo Suh (pro hac vice) wsuh@sidley.com 1501 K Street, N.W. 5 LG s response and ParkerVision s response to Qualcomm s counterclaims, for example, were still not due for a number of months. (Dkt. 31, 37, 38.) 4

5 Case 3:15-cv BJD-JRK Document 49 Filed 05/12/17 Page 5 of 6 PageID Pennsylvania Ave, NW, Suite 700 Washington, DC Phone: (202) Fax: (202) Counsel for Defendant Qualcomm Incorporated Washington, D.C Phone: (202) Fax: (202) Counsel for Defendants LG Electronics, Inc., LG Electronics U.S.A., Inc. and LG Electronics MobileComm U.S.A., Inc. WEIL, GOTSHAL & MANGES LLP Brian E. Ferguson (pro hac vice) brian.ferguson@weil.com Robert T. Vlasis III (pro hac vice) Robert.vlasis@weil.com 1300 Eye Street, N.W., Suite 900 Washington, D.C Tel: Fax: Edward Soto edward.soto@weil.com 1395 Brickell Ave, Suite 1200 Miami, FL Phone: (305) Fax: (305) Counsel for Defendant Apple Inc. 5

6 Case 3:15-cv BJD-JRK Document 49 Filed 05/12/17 Page 6 of 6 PageID 2288 CERTIFICATE OF SERVICE I hereby certify that on May 12, 2017, I electronically filed the foregoing with the Clerk of the Court by using the CM/ECF system. I further certify that I mailed the foregoing document and the notice of electronic filing by first-class mail to the following non-cm/ecf participants: none. By: /s/ Matthew J. Brigham Matthew J. Brigham (pro hac vice) mbrigham@cooley.com Counsel for Defendant Qualcomm Incorporated 6