Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 1 of 33 PageID 13076

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1 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 1 of 33 PageID UNITED STATES DISTRICT COURT THE MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION PARKERVISION,INC., QUALCOMM INCORPORATED, Plaintiff, v. Case No. 3:11-cv-719-J-37-TEM Defendant. QUALCOMM S MOTIONS IN LIMINE Redacted Version Publicly Filed

2 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 2 of 33 PageID TABLE OF CONTENTS Page I. INTRODUCTION II. MOTION IN LIMINE #1: THE COURT SHOULD EXCLUDE ALL EVIDENCE OF QUALCOMM S INTERACTIONS WITH PARKERVISION A. Facts Surrounding the Interactions B. The Court Should Exclude Evidence of the Interactions The Events of 1998 and 1999 Have Limited Relevance or Probative Value a. The Events of Are Not Probative of Issues of Infringement b. The Discussions Are Irrelevant to Issues of Damages c. The Discussions Are Irrelevant to Issues of Invalidity The Prejudice Resulting from Introduction of Evidence Regarding 1998 and 1999 Substantially Outweighs Any Probative Value C. The Court Should At Least Exclude the Financial Modeling and Offers III. MOTION IN LIMINE #2: THE COURT SHOULD PRECLUDE PARKERVISION FROM OFFERING EVIDENCE OF ITS ALLEGED NEW CHIP OR FROM ASSERTING THAT IT COMPETES WITH QUALCOMM A. ParkerVision Failed to Provide Timely Discovery Regarding the New Chip B. The Court Should Exclude Any Evidence or Claim that ParkerVision Competes with Qualcomm IV. MOTION IN LIMINE #3: THE COURT SHOULD NOT ALLOW ANY IRRELEVANT AND CUMULATIVE OPINION TESTIMONY FROM PARKERVISION S EXECUTIVES V. MOTION IN LIMINE #4: PARKERVISION SHOULD NOT BE ALLOWED TO ASSERT THAT ANY PRODUCTS OTHER THAN THOSE ADDRESSED IN DR. PRUCNAL S REPORT INFRINGE THE PATENTS-IN-SUIT VI. MOTION IN LIMINE #5: PARKERVISION S ONLY EVIDENCE REGARDING ITS DOCTRINE OF EQUIVALENTS ARGUMENT IS INSUFFICIENT VII. MOTION IN LIMINE #6: PARKERVISION PRESENTED NO DAMAGES REPORT ON CONTRIBUTORY INFRINGEMENT AND CANNOT PRESENT EVIDENCE ON IT AT TRIAL i.

3 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 3 of 33 PageID TABLE OF CONTENTS (continued) Page VIII. MOTION IN LIMINE #7: THE COURT SHOULD PRECLUDE PARKERVISION FROM ARGUING THE PRESUMPTION OF VALIDITY IX. MOTION IN LIMINE #8: THE COURT SHOULD PRECLUDE EVIDENCE BASED ON PARKERVISION EMPIRICAL FORMULAS INSTEAD OF THE ACTUAL FACTS X. MOTION IN LIMINE #9: THE COURT SHOULD NOT ALLOW DR. PRUCNAL TO TESTIFY BASED ON DOCUMENTS FROM 3LP ADVISORS, A LITIGATION CONSULTING FIRM RETAINED BY PARKERVISION XI. MOTION IN LIMINE #10: THE COURT SHOULD EXCLUDE ALL REFERENCES TO DEFICIENT METHODOLOGIES AND OPINIONS BY PARKERVISION S DAMAGES EXPERT XII. MOTION IN LIMINE #11: THE COURT SHOULD NOT ALLOW PARKERVISION TO ACCUSE QUALCOMM OF IMPROPERLY RETAINING THE EVALUATION BOARD OR OTHERWISE BREACHING THE PARTIES NDA XIII. MOTION IN LIMINE #12: THE COURT SHOULD PRECLUDE PARKERVISION FROM COMMENTING ON QUALCOMM S TOTAL REVENUE OR PROFITS XIV. CONCLUSION ii.

4 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 4 of 33 PageID TABLE OF AUTHORITIES Page(s) CASES Air Turbine Tech., Inc. v. Atlas Copco AB, 410 F.3d 701 (Fed. Cir. 2005)...14, 18 AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320 (Fed. Cir. 2007)...14 Chiron Corp. v. Genentech, Inc., 363 F.3d 1247 (Fed. Cir. 2004)...19 Cook ex. Rel. Tessier v. Sheriff of Monroe County, 402 F.3d 1092 (11th Cir. 2005)...22, 23 CSX Trans., Inc. v. Gilkison, No. 5:05CV202, 2012 WL (N.D. W.Va. Dec. 6, 2012)...8 Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993)... passim Hendrix v. Evenflo Co., Inc., 255 F.R.D. 568 (N.D. Fla. 2009)...20 Hewlett-Packard Co. v. Mustek Sys., 340 F.3d 1314 (Fed. Cir. 2003)...16, 17 Honeywell Int l, Inc. v. Hamilton Sundstrand Corp., 523 F.3d 1304 (Fed. Cir. 2008)...15 i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010)...15 Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir. 2004)...19 Lear Siegler, Inc. v. Sealy Mattress Co. of Michigan, Inc., 873 F.2d 1422 (Fed. Cir. 1989)...16, 17 Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009)...15 McRee v. Goldman, 11-CV LHK, 2012 WL (N.D. Cal. Aug. 28, 2012)...5 Omega Patents, LLC v. Fortin Auto Radio, Inc., No. 6:05-cv-1113-Orl-22DAB, 2007 WL (M.D. Fla. Feb. 5, 2007)...14, 18 iii.

5 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 5 of 33 PageID TABLE OF AUTHORITIES (continued) Page(s) Oracle Am., Inc. v. Google Inc., 798 F. Supp. 2d 1111 (N.D. Cal. 2011)...6 Power Integrations, Inc. v. Fairchild Semiconductor Int l, Inc., 711 F.3d 1348 (Fed. Cir. 2013)...21 Proveris Scientific Corp. v. Innovasystems, Inc., 536 F.3d 1256 (Fed. Cir. 2008)...13, 14 Smith and Nephew, Inc. v. Arthrex, Inc., No. 2:07-cv-335-TJW-CE, 2010 WL (E.D. Tex. Feb. 5, 2010)...17 Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558 (Fed. Cir. 1996)...16 Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011)...6, 23, 24 United States v. Frazier, 387 F.3d 1244 (11th Cir. 2004)...6, 22, 23 Vasudevan Software, Inc. v. TIBCO Software Inc., No. C RS, 2012 WL (N.D. Cal. May 18, 2012)...5 Wang Labs v. Toshiba Corp., 993 F.2d 858 (Fed. Cir. 1993)...14 Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997)...16 STATUTES 35 U.S.C. 271(c)...19 OTHER AUTHORITIES Fed. R. Civ. P , , 11 iv.

6 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 6 of 33 PageID TABLE OF AUTHORITIES (continued) Page(s) Fed. R. Evid , , 6, 24, passim , 21, v.

7 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 7 of 33 PageID I. INTRODUCTION. This case involves six lengthy and dense patents, difficult technology, and complicated issues of proof. A trial focused on just the nuts and bolts of the patent case would fully occupy a jury and this Court s time. But, based on what Qualcomm has seen, ParkerVision intends to focus the jury s attention elsewhere: on a story filled with irrelevant evidence of interactions between the parties that occurred a full seven years before Qualcomm s first allegedly infringing product was built, and indeed, even before the patent-in-suit issued. Qualcomm believes that ParkerVision plans to argue a story of intrigue that it exposed its technology to a big company, which, seven years later, allegedly used it without paying because it is more likely to prevail on that story than on the questions of whether the patents are actually valid or infringed. But the only cause of action ParkerVision actually pled in this case is patent infringement, and permitting ParkerVision to focus on the companies dealings years before the first alleged infringement will derail the core patent trial in favor of a collateral set of issues that would be prejudicial, time consuming to rebut, and ultimately irrelevant to the question of whether or not Qualcomm s accused products fall within the limitations of any valid claims of ParkerVision s patents The Court should not allow ParkerVision to take the trial down this path. Instead, Qualcomm requests that the Court exclude the following irrelevant, prejudicial or improper evidence: Any evidence of the interactions between the parties. Such evidence is irrelevant to any issues in the case and is unduly prejudicial. Any evidence of ParkerVision s allegedly new chip or assertion that ParkerVision competes with Qualcomm. ParkerVision did not provide timely discovery on this issue and has no evidence to support testimony that ParkerVision is a competitor in receiver chip. Any purported expert opinion testimony from ParkerVision s executives. ParkerVision failed to serve a required expert report and the testimony is entirely duplicative of the expert opinions actually and properly disclosed. 1.

8 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 8 of 33 PageID Any argument for which ParkerVision has submitted no evidence. This includes argument that any non-accused product infringes the patents, evidence that Qualcomm infringes under the doctrine of equivalents (no opinion offered by ParkerVision s expert), and evidence of damages arising from alleged contributory infringement (no opinion offered by ParkerVision s expert). Any argument that the presumption of validity is separate from the evidentiary burden for proving invalidity. Otherwise, ParkerVision may persuade the jury that Qualcomm has to clear an even higher burden to prove validity than it already does. Any expert testimony that is not based on facts or reliable documents such as documents created by unknown individuals at the litigation consulting firm hired by trial counsel. Any evidence or expert testimony based on Benoit s inherently flawed damages analysis. Any evidence or allegation that Qualcomm breached the parties NDA or otherwise acted improperly by retaining ParkerVision s evaluation board. Such evidence is irrelevant and prejudicial. Any evidence regarding Qualcomm s total profits and revenue much of which is derived from products or businesses not at issue in this case. Exclusion of this improper, irrelevant and prejudicial evidence will help ensure a fair trial. 1 II. MOTION IN LIMINE #1: THE COURT SHOULD EXCLUDE ALL EVIDENCE OF QUALCOMM S INTERACTIONS WITH PARKERVISION. Because this is a patent infringement case, the central questions are whether the accused products literally infringe the six patents-in-suit, which issued in 2000, 2001, 2002, 2005, 2009, and 2010, and whether the patents are valid. Qualcomm began selling the accused products in 2006 the relevant time for any damages calculation. Thus, any evidence regarding the parties interactions in 1998 and 1999, which involved discussions about a very different business transaction during a very different time technologically, is a prejudicial distraction. It should be excluded because its limited probative value is substantially outweighed by the risk that it will cause unfair prejudice and confuse and mislead the jury. 1 Qualcomm certifies that it has met and conferred regarding this motion as required by the local rules. 2.

9 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 9 of 33 PageID A. Facts Surrounding the Interactions. In 1998 and 1999, Qualcomm was using a superheterodyne (multistage) downconversion architecture. At that time, ParkerVision and Qualcomm discussed a potential business relationship involving ParkerVision s direct downconversion technology, D2D. (Dkt. 270, Qualcomm s Summary Judgment Motion, at 4-5, Exs. 2-5.) Based on ParkerVision s bold claims about its technology, Qualcomm was intrigued and assigned some engineers to evaluate the technology that ParkerVision claimed to able to provide. (Id. at 5-6, Exs. 7-9.) While evaluating the technical merits of ParkerVision s claims, Qualcomm also did some internal analysis of various possible financial scenarios and discussed potential deal terms with ParkerVision. Eventually, Qualcomm offered royalty rates of in exchange for an exclusive, worldwide license to all of ParkerVision s future patents and ParkerVision s know-how on the condition that ParkerVision could demonstrate that its claims were true and that the technology actually worked in cell phones. (Ex. 1, QCPV ) Although the engineering analysis had raised serious questions about the value of ParkerVision s technology, Qualcomm engaged in financial discussions to obtain what amounted to an option on the technology in case it could be made to work. The parties never reached agreement on the financial terms. (Dkt. 270 at 6-7.) By the time the financial discussions ended in mid-1999, the RF engineering specialists within Qualcomm had concluded that the ParkerVision technology was not particularly novel, would require substantial effort by Qualcomm to incorporate into any cell phone product if it even could and that Qualcomm could independently develop its own direct downconversion technology using a different approach. (Dkt. 270 at 6, Exs ) That is exactly what Qualcomm did. (Id. at 7-8, Exs ) Qualcomm completed a prototype of its own direct downconversion receiver design in November 1999 and introduced the first direct 3.

10 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 10 of 33 PageID downconversion receiver called ZIF (for Zero IF ). Qualcomm s initial ZIF direct downconversion products which ParkerVision has not accused of infringement were sold by the millions for many years starting in the early 2000 s. B. The Court Should Exclude Evidence of the Interactions. 1. The Events of 1998 and 1999 Have Limited Relevance or Probative Value. The events of 1998 and 1999 have limited relevance to the issues in this case. If admitted, evidence of the discussions will only serve to confuse the jury, unfairly prejudice the jury against Qualcomm, and create the risk that the jury will decide the complex patent issues that arose years later simply because Qualcomm looked at the technology in 1999 and made an offer to license it. Accordingly, evidence of the events should be excluded. Fed. R. Evid. 402, 403. a. The Events of Are Not Probative of Issues of Infringement. The discussions that occurred in 1998 and 1999 cannot be relevant or probative on the issue of direct infringement. The patents-in-suit issued in 2000 ( 551 patent), 2001 ( 518 patent), 2002 ( 371 patent), 2005 ( 734 patent), 2009 ( 342 patent), and 2010 ( 845 patent). Qualcomm did not introduce the first allegedly infringing product until Evidence of interactions in does not relate to whether products released seven years later practice the claims of patents that had not yet even issued. Similarly, the discussions that occurred in 1998 and 1999 have limited probative value to Qualcomm s alleged knowledge of the patents for ParkerVision s indirect infringement or willfulness case. (See Dkt. 270.) While the Court relied on certain Qualcomm communications about the patent applications that ParkerVision disclosed (only one of which resulted in a patentin-suit) in ruling on Qualcomm s summary judgment motion regarding knowledge, other 4.

11 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 11 of 33 PageID evidence of the interactions in are not probative to the issue of inducement. 2 For example, review of ParkerVision s prototype evaluation board or offers made to license the technology are irrelevant to whether Qualcomm had knowledge of later issued patents. Accordingly, the Court should at least preclude ParkerVision from relying on evidence from the interactions other than those communications showing that Qualcomm may have had knowledge of ParkerVision s patent applications. And even one piece of that evidence should be excluded under 403. In the summary judgment order, the Court cited an in which Qualcomm stated it would be very difficult for anybody to ever use ParkerVision s methods without stepping on one or more of their claims. (Dkt. 320, at 3). For inducement, ParkerVision must establish that Qualcomm had knowledge of the patent-in-suit, believed that it was infringing that patent, and believed that it was valid. A general statement about a group of applications only one of which resulted in a patent-in-suit is not particularly probative of whether Qualcomm knew about later issued patents or believed it infringed unidentified claims that had not issued or, in most instances, had not even been drafted yet. On the other hand, admission of the statement has a high risk of confusing and unfairly prejudicing the jury against Qualcomm. Specifically, the jury may rely on that statement to conclude that Qualcomm actually infringes one of the limited number of claims at issue without requiring actual proof of such infringement. That is not proper and the statement should be excluded. Fed. R. Evid In order to preserve the issue for any appeal that might be necessary, Qualcomm reasserts its argument that, as a matter of law, knowledge of pending patent applications are not relevant to the knowledge requirement for induced infringement or willfulness. See McRee v. Goldman, 11-CV LHK, 2012 WL , at *3 (N.D. Cal. Aug. 28, 2012); Vasudevan Software, Inc. v. TIBCO Software Inc., No. C RS, 2012 WL , at *2 (N.D. Cal. May 18, 2012) ( knowledge of the [asserted patent s] existence was quite impossible before it issued, and there is no indication... how [the accused infringer] may have later discovered it. ). 5.

12 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 12 of 33 PageID b. The Discussions Are Irrelevant to Issues of Damages. Qualcomm has challenged ParkerVision s entire damages theory, which is based on the events of 1999, in its Daubert motion. Regardless of the outcome of that motion, the evidence of the negotiations in is not relevant or probative of ParkerVision s damages case and should be excluded under Rule 402 and 403. See, e.g., United States v. Frazier, 387 F.3d 1244, 1263 (11th Cir. 2004) ( Because of the powerful and potentially misleading effect of expert evidence, sometimes expert opinions that otherwise meet the admissibility requirements may still be excluded by applying Rule ); see also Oracle Am., Inc. v. Google Inc., 798 F. Supp. 2d 1111, 1120 (N.D. Cal. 2011) (excluding damages expert s opinion applying Nash Bargaining Solution under Rule 403). Without repeating its prior arguments, the negotiations of the terms of a deal in are too different to provide any insight into what the parties would have agreed to in a hypothetical negotiation in ParkerVision s evidence of the negotiations in is irrelevant because of the changes in technology in general, and in Qualcomm s products in particular, that occurred during those seven years. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1318 (Fed. Cir. 2011) (stating that any damages analysis must account for the facts as they exist at the relevant time.). 3 By 2000, Qualcomm had developed its own successful, non-infringing direct downconversion solution, which it then went on to sell for the next six years before developing the products that 3 ParkerVision, in opposition to Qualcomm s Daubert motion, remarkably asserts that the financial modeling that Qualcomm did in is not subject to the Federal Circuit s comparability requirement because (1) those discussions are not licenses, and (2) Benoit is using them to measure the benefit to Qualcomm not determine the royalty rate. First, the Federal Circuit has said that actual license agreements must be comparable. (Dkt. 305, ParkerVision s Daubert Opposition, at 7-8.) To think that offers that were rejected and financial modeling that was never even shared with ParkerVision both far more dubious than an actual license agreement is subject to a lesser standard is not plausible. Second, the argument that Benoit is using the discussions to measure the benefit to Qualcomm does not alter the requirement that he consider the market differences that might impact that value. (Id.) ParkerVision cannot dispute that the alleged benefit to Qualcomm is relevant to a reasonable royalty calculation. Indeed, that benefit is a critical piece of the Georgia-Pacific factors. The Federal Circuit has stated that an analysis of all Georgia-Pacific factors must account for the facts as they existed at the relevant time. Uniloc, 632 F.3d at A simple example makes this point: the value of a patent on a basic television set would have been much different in 1925 than in

13 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 13 of 33 PageID ParkerVision now accuses of infringement. (Dkt. 270 at 7-8, Exs ) Thus, any potential benefit that Qualcomm was allegedly calculating from a technology and know-how transfer in was completely different from the benefit that Qualcomm would have realized from the hypothetical patent license in In 1999, Qualcomm was considering the benefits of moving from a superheterodyne to a direct downconversion architecture. But by the time of the hypothetical negotiation, Qualcomm had already made that move with products that ParkerVision does not accuse of infringing the patent-in-suit. Any evidence regarding the alleged benefit to Qualcomm in 1999 is irrelevant and not probative. c. The Discussions Are Irrelevant to Issues of Invalidity. ParkerVision might also attempt to rely on statements made by Qualcomm business people about the supposedly revolutionary nature of the technology to support its validity case. But those statements are not relevant and should be excluded. At the time most of Qualcomm s statements were made, the patents-in-suit had not issued and most had not even been applied for. Qualcomm s statements about ParkerVision s technology were made on the basis of what ParkerVision was saying it had. And, in 1998 and 1999, ParkerVision was claiming to have far more than what was later claimed in the patents and allowed by the patent office. For example, ParkerVision claimed to have a universal downconverter, which was something far more revolutionary than a direct downconverter. 4 Thus, any comments by Qualcomm about the revolutionary nature of as-yet unknown and different technology are irrelevant to the validity of specific claims from the patents-in-suit. Indeed, immediately after the March 1999 meeting, Qualcomm sent a memo indicating that it believed that ParkerVision s technology was not novel. (Ex. 2, PV ) 4 ParkerVision s use of the term universal frequency downconverter then is different than the manner in which the Court construed it. At the time, ParkerVision used that term to mean one downconverter that could universally convert every frequency something that has never been done and a claim that ParkerVision has abandoned. 7.

14 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 14 of 33 PageID The Prejudice Resulting from Introduction of Evidence Regarding 1998 and 1999 Substantially Outweighs Any Probative Value. Any probative value of the discussions is extremely limited and is substantially outweighed by the prejudice resulting from their admission. See Fed. R. Evid The central issue in this case is whether the Qualcomm products practice each and every element of the asserted claims and what are the damages appropriate for any infringement of those specific claims. Faced with complex technology and difficult legal concepts, in considering issues of liability, admission of the negotiations creates the risk that the jury will confuse ParkerVision s generic statements from the era about an energy sampling prototype with the specific scope of the asserted claims, which this Court has carefully construed. Similarly, when considering damages, the jury may also confuse Qualcomm s willingness to make an offer for a risk-free option to an exclusive, worldwide technology agreement with what it would have agreed to in a hypothetical negotiation in 2006 for a non-exclusive, U.S.-only bare patent license. The risk of unfair prejudice and jury confusion far outweigh the probative value of this evidence. In addition, evidence regarding the internal modeling or financial offers may be confusing and unfairly prejudicial. The numbers used in the financial modeling are large because they are estimates of Qualcomm s worldwide sales numbers far greater than the U.S. sales figures that are the basis for damages in this case. Showing jurors the vast revenue that Qualcomm recognizes worldwide could improperly inflate any damages award in this case. See, e.g., CSX Trans., Inc. v. Gilkison, No. 5:05CV202, 2012 WL , at *8 (N.D. W.Va. Dec. 6, 2012) (granting in part and deferring in part motion in limine to preclude evidence under Rule 403 where party argued that inclusion of such fees in documentation submitted to the jury 8.

15 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 15 of 33 PageID could easily confuse and mislead the jury, which would then prejudice [party] by opening the door to an inflated damages award ). C. The Court Should At Least Exclude the Financial Modeling and Offers. Even if the Court does not exclude all communications from the period, the Court should exclude the financial information or licensing offers. For the reasons stated above, internal modeling to evaluate a potential transaction or actual offers for a completely different agreement at a very different time technology is irrelevant and prejudicial. III. MOTION IN LIMINE #2: THE COURT SHOULD PRECLUDE PARKERVISION FROM OFFERING EVIDENCE OF ITS ALLEGED NEW CHIP OR FROM ASSERTING THAT IT COMPETES WITH QUALCOMM. On July 2, 2013, ParkerVision issued a press release announcing the availability of a receiver chip that supposedly incorporates D2D, the PVD2510R. Three weeks later, on July 23, 2013, ParkerVision notified Qualcomm that it was making schematics and a sample of the new chip available for inspection. (Ex. 3, from Buratti to Canning.) In response to inquiries by Qualcomm, ParkerVision stated that it intended to have its fact witnesses testify that it was now selling a receiver chip that incorporates D2D. The Court should not allow ParkerVision to offer any such evidence or assert that it competes with Qualcomm. A. ParkerVision Failed to Provide Timely Discovery Regarding the New Chip. The Court should exclude evidence of the new chip because ParkerVision improperly delayed providing discovery. Fed. R. Civ. P. 26, 37. It is undisputed that Qualcomm served several requests seeking production of documents relating to any ParkerVision chip that practices D2D. (Ex. 4, Letter Canning to Budwin, at 1-3.) But ParkerVision failed to produce such documents until July 23, ParkerVision may assert that its production was timely because the new chip was just announced in July But a party does not design and manufacture a new integrated circuit in 9.

16 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 16 of 33 PageID a matter of weeks. A real chip, that has real commercial potential, takes planning and development a year or two or more in advance. ParkerVision must have had designs of this product and product plans long before the close of discovery in November 2012, and certainly before July 23, ParkerVision s witnesses have admitted as much. At his deposition on November 13, 2012, Jeffrey Leach, ParkerVision s Director of Sales, testified: Q. What product plans is this referring to? A. Well, it could be twofold. We do have plans to do our own receiver on the CDMA product line, so that would be one. And then the LGIT, let me read this again. If LGIT finds a baseband partner, that is something that we would do with them as well. But I would really move this towards, primarily, doing a CDMA receiver, that would be replacement for that FCI part. Q. And do your plans relating to a receiver on the CDMA product line -- strike that. Are your plans relating to a receiver on the CDMA product line described in any documents? A. I believe they are. (Ex. 5, Leach Dep. Tr. at 225:13-226:9.) ParkerVision has also now released a datasheet regarding the PVD2510R. That datasheet contains. (Ex. 6, PVD2510R datasheet, at 10.) Finally, on July 31, 2013, ParkerVision produced additional documents to Qualcomm regarding the PVD2510R. (Ex. 7, Letter from Mendez to Canning.) One of the documents contains data from. (Ex. 8, PV at 14.) ParkerVision s failure to produce these documents earlier is inexcusable and does not appear to be the result of inadvertence. ParkerVision apparently made the deliberate decision not to produce such documents until it was too late for Qualcomm to meaningfully use them. 10.

17 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 17 of 33 PageID Finally, Qualcomm has suffered prejudice as a result of ParkerVision s failure to produce these documents. Information regarding this chip would have been important to rebut certain assertions made by ParkerVision. For example, ParkerVision asserts that its technology results in power and area savings. Unfortunately, the belated production deprives Qualcomm of the opportunity to make such showing, or rebut ParkerVision s claims of commercial viability, through expert testimony or otherwise. Accordingly, the only appropriate remedy is to preclude ParkerVision from relying on this chip at trial. Fed. R. Civ. P. 26, 37. B. The Court Should Exclude Any Evidence or Claim that ParkerVision Competes with Qualcomm. Qualcomm also believes that ParkerVision will assert that it competes with Qualcomm. First, the Court should preclude such testimony because of ParkerVision s belated production of documents regarding the new chip its only receiver chip. Second, based on the initial review of documents regarding the PVD2510R, Qualcomm does not believe that it is a viable commercial product. (Ex. 6, PVD2510R datasheet, at 1.) As ParkerVision s own experts have admitted, In addition, when asked for 10 samples of the new chip for testing, ParkerVision refused. Instead, 11.

18 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 18 of 33 PageID ParkerVision provided 1 sample and indicated that it was not manufacturing the chip and could not supply more. (Ex. 9, Letter from Canning to Budwin, at 4.) Any company that cannot even supply 10 samples of a supposedly available chip cannot claim to be a commercially viable competitor in an industry where volumes are in the many, sometimes hundreds, millions of units a year. Evidence that ParkerVision is allegedly competing with Qualcomm is also prejudicial. Allowing ParkerVision to claim that it is a competitor of Qualcomm when it is not will require Qualcomm to disprove that fact. This will be an unnecessary sideshow that distracts from the relevant issues in the case. IV. MOTION IN LIMINE #3: THE COURT SHOULD NOT ALLOW ANY IRRELEVANT AND CUMULATIVE OPINION TESTIMONY FROM PARKERVISION S EXECUTIVES. ParkerVision apparently intends to submit opinion testimony from its executives, Mr. Parker and Mr. Sorrells, on the ultimate issues in this case. For example, Sorrells states that he intends to testify on his understanding of Qualcomm s infringement of the asserted claims of the patents-in-suit of which Mr. Sorrells is a named inventor. (Ex. 10, Disclosure of Testimony By Jeffrey Parker and David Sorrells, at 14.) Sorrells states that his opinions will be based on, among other things, ParkerVision s January 30, 2012, March 2, 2012 and August 27, 2012 infringement contentions, his attendance of the depositions of various Qualcomm witnesses, and his review and analysis of the UBM TechInsights report discussed in ParkerVision s infringement contentions. (Id. at ) Similarly, Parker intends to testify regarding the amount of damages that Qualcomm should be required to pay ParkerVision as a result of this case, including but not limited to, the amount of a royalty that ParkerVision would have reasonably accepted in any actual or contemplated negotiation between ParkerVision and Qualcomm. (Id. at 2.) Mr. Parker s anticipated testimony is allegedly based on, among other things, his attendance of the depositions of various Qualcomm witnesses, and his experience 12.

19 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 19 of 33 PageID in business, including licensing negotiations over the past thirty years. (Id. at 2-11.) The Court should exclude any such opinions. Neither Parker nor Sorrells are qualified to offer expert opinions on liability or damages. Also, the testimony from Parker and Sorrells is cumulative of the testimony that ParkerVision s retained experts will provide. Dr. Prucnal is ParkerVision s retained expert witness on issues of alleged infringement and validity. ParkerVision also plans to present the alleged expert testimony of Paul Benoit on issues of damages. The Court should not allow ParkerVision to submit two purported experts on the exact same subject matter at trial. Indeed, Parker and Sorrell s proposed testimony offers nothing more to any issues in this case. Whether Parker and Sorrells subjectively believed that Qualcomm s products infringe the patents, that the patents are valid, or how much Qualcomm should have to pay has no bearing on those ultimate issues at trial. Parker and Sorrells state of mind is simply irrelevant. Not only does Parker and Sorrells testimony have no probative value, it is unfairly prejudicial. As the Supreme Court noted in Daubert, [e]xpert evidence can be both powerful and quite misleading because of the difficulty in evaluating it. Because of this risk, the judge in weighing possible prejudice against probative force under Rule 403 of the present rules exercises more control over experts than over lay witnesses. Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 595 (1993). If Parker and Sorrells are qualified as experts, the jury may accord their fact testimony greater weight. The Court should not risk such prejudice and should preclude this irrelevant and unfairly prejudicial testimony. V. MOTION IN LIMINE #4: PARKERVISION SHOULD NOT BE ALLOWED TO ASSERT THAT ANY PRODUCTS OTHER THAN THOSE ADDRESSED IN DR.PRUCNAL S REPORT INFRINGE THE PATENTS-IN-SUIT. As both parties have agreed, when a case involves complex technology, expert testimony is required to establish infringement. Proveris Scientific Corp. v. Innovasystems, Inc., 536 F.3d 13.

20 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 20 of 33 PageID , 1267 (Fed. Cir. 2008); AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320, 1329 n.7 (Fed. Cir. 2007). Here, one of the issues relevant to damages is whether any non-infringing alternatives existed at the time of the hypothetical negotiation. Qualcomm s expert, Dr. Fox, analyzed not just the accused products, but also the schematics for other products on sale in 2006 and opined that none of Qualcomm s products infringe the patents-in-suit. (Ex. 11, Fox Rep. at (opining that Qualcomm s RTR6000 design does not infringe the patents-in-suit)). Dr. Prucnal fails to offer any opinion of infringement on certain of the products discussed by Dr. Fox. Accordingly, the Court should preclude ParkerVision from disputing that such products are non-infringing alternatives. Air Turbine Tech., Inc. v. Atlas Copco AB, 410 F.3d 701, 713 (Fed. Cir. 2005) (upholding Southern District of Florida decision excluding expert testimony insofar as his testimony exceeded the material disclosed in his expert report ); Omega Patents, LLC v. Fortin Auto Radio, Inc., No. 6:05-cv-1113-Orl-22DAB, 2007 WL , at *3 (M.D. Fla. Feb. 5, 2007) (precluding party from soliciting on direct examination any opinion in which [the expert] includes an analysis or basis that was not disclosed in one of [his] reports ). The Court should preclude ParkerVision from asserting that any products sold by Qualcomm before 2006 infringe for a second reason because ParkerVision has essentially admitted it. In calculating a reasonably royalty, ParkerVision was required to present evidence of what royalty the parties would have agreed to in a hypothetical negotiation at the time of the first infringement. See Wang Labs v. Toshiba Corp., 993 F.2d 858, (Fed. Cir. 1993). By agreeing that the proper date for the hypothetical negotiation is 2006, ParkerVision has admitted that the first infringement occurred on that date. (Ex. 12, Benoit Rep. 137.) ParkerVision cannot, having agreed that the first infringement occurred in 2006, argue at trial that Qualcomm s earlier products utilizing direct downconversion infringe. 14.

21 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 21 of 33 PageID In response, ParkerVision may assert that Qualcomm bears the burden of proof on noninfringing alternatives and it was not required to submit expert testimony on this issue. First, ParkerVision is simply wrong. Qualcomm does not bear the burden on this issue. The patentee bears the burden of proving a reasonable royalty. Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009). The availability of non-infringing alternatives is one of the Georgia-Pacific factors that must be considered. See i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831, 854 (Fed. Cir. 2010). Second, regardless of who bears the initial burden, Qualcomm submitted expert testimony that certain non-accused products did not infringe. (See, e.g., Ex. 11 Fox Rep. at ) If ParkerVision wanted to argue otherwise, it was obligated to present expert testimony. ParkerVision never offered an expert opinion on the RTR6000 or other designs addressed by Dr. Fox and it should not be allowed to offer any evidence or opinion at trial contesting Qualcomm s well-established position that such products are non-infringing alternatives. 5 VI. MOTION IN LIMINE #5: PARKERVISION S ONLY EVIDENCE REGARDING ITS DOCTRINE OF EQUIVALENTS ARGUMENT IS INSUFFICIENT. Under the doctrine of equivalents, a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is equivalence between the elements of the accused product or process and the claimed elements of the patented invention. Honeywell Int l, Inc. v. Hamilton Sundstrand Corp., 523 F.3d 1304, 1312 (Fed. Cir. 2008) (citing Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997)). In applying the doctrine of equivalents, courts apply the function-way-result test the allegedly infringing device and claimed limitation must perform substantially the 5 ParkerVision may assert that it could not prove infringement by other products because Qualcomm refused to produce documents regarding non-accused products. But as is clear from Dr. Fox s report, Qualcomm produced technical documentation that shows how the RTR6000 (among others) works. (See Ex. 11, Fox Rep. at 254). If ParkerVision wanted to claim that they infringed the patents, it had the design documents necessary to do so. 15.

22 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 22 of 33 PageID same function in substantially the same way to obtain substantially the same result. Warner- Jenkinson, 520 U.S. at 38. Any testimony that does so, including from an expert, must be particularized and link each of the function, means, and result of the claimed invention to those of the accused product on a limitation-by-limitation basis. Lear Siegler, Inc. v. Sealy Mattress Co. of Michigan, Inc., 873 F.2d 1422, (Fed. Cir. 1989); Hewlett-Packard Co. v. Mustek Sys., 340 F.3d 1314, 1323 (Fed. Cir. 2003); Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996) ( Generalized testimony as to the overall similarity between the claims and the accused infringer s product or process will not suffice. ). Here, ParkerVision s only evidence on the doctrine of equivalents is the boilerplate testimony of its technical expert that does nothing more than restate the doctrine of equivalents standard. Such evidence is incompetent opinion testimony. See Fed. R. Evid. 702(c) (stating that expert opinion testimony must apply reliable methods to the facts of the case. ). Dr. Prucnal never provides the particularized testimony linking the function, means or result of the claimed invention with that of the accused product. Indeed, in a case involving limitations in over 80 claims asserted against more than 70 different products, Dr. Prucnal s doctrine of equivalents analysis spans a mere 11 lines in his expert report. 6 In total, his analysis states: In my opinion, the claim elements of the Patents-in-Suit are met literally as explained in the Appendices; however, to the extent they are not met literally, they are met under the doctrine of equivalents, as discussed above in section Each of the Accused Products contains elements or performs steps corresponding to each and every requirement of the claim that is equivalent to, if not literally met by, the Accused Products. A person having ordinary skill in the art would have considered any differences between the invention taught in the Patents-in-Suit and the Accused Products to be insubstantial or would have found 6 Dr. Prucnal s claim charts contain only one mention of the doctrine of equivalents. In the claim chart for claim 13 of the 845 patent, Dr. Prucnal provides additional boilerplate equivalence language for one of several claim elements. (Ex. 13, Prucnal Rep. Appendix C at ) This is insufficient for three reasons. First, it lacks any particularized testimony or linking argument for each of the function, way and result elements of the applicable test. Second, Dr. Prucnal provides no equivalents analysis for the remainder of the limitations in claim 13. Third, Dr. Prucnal s two sentences purport to establish the equivalence between the claimed invention and more than 70 accused products. 16.

23 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 23 of 33 PageID that the structure or action: (1) performs substantially the same function and (2) works in substantially the same way (3) to achieve substantially the same result as the requirement of the claim. A person having ordinary skill in the art at the time of Qualcomm s infringement would have known of these differences in structure. (Ex. 13, Prucnal Rep. at 118.) 7 This is exactly the type of boilerplate language that cannot support a claim for infringement under the doctrine of equivalents and that should not be allowed before a jury. Hewlett Packard Co., 340 F.3d at ; Smith and Nephew, Inc. v. Arthrex, Inc., No. 2:07-cv-335-TJW-CE, 2010 WL , *8-9 (E.D. Tex. Feb. 5, 2010) (precluding expert from testifying as to the equivalence of certain elements because he provided only boilerplate assertions of infringement under the doctrine of equivalents and the opinion lacks any particularized testimony and linking argument for the doctrine of equivalents analysis. ). The fact that Dr. Prucnal offered opinions regarding literal infringement does not make his boilerplate testimony on the doctrine of equivalents any more sufficient. As the Federal Circuit has said, [t]he evidence and argument on the doctrine of equivalents cannot merely be subsumed in plaintiff s case of literal infringement. Lear Siegler, Inc., 873, F.2d at 1425; Smith and Nephew, Inc., 2010 WL at *9. Thus, ParkerVision s only evidence regarding the doctrine of equivalents is incompetent and irrelevant and should not be allowed before the jury. VII. MOTION IN LIMINE #6: PARKERVISION PRESENTED NO DAMAGES REPORT ON CONTRIBUTORY INFRINGEMENT AND CANNOT PRESENT EVIDENCE ON IT AT TRIAL. In support of its damages case, ParkerVision submitted the expert report of Paul Benoit. Benoit never provided an opinion on damages arising from Qualcomm s alleged contributory infringement. Accordingly, as Qualcomm argued in its Daubert motion, Benoit should not be allowed to offer any opinion on contributory infringement damages at trial, or any other testimony or evidence on damages arising from alleged contributory infringement. 7 Section of Prucnal s report contains no analysis. Instead, it merely recites the requirements for infringement under the doctrine of equivalents. 17.

24 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 24 of 33 PageID As it did in response to Qualcomm s Daubert challenge, ParkerVision may assert that Benoit offered an opinion on contributory infringement because: (1) he offered an opinion indirect infringement, of which contributory infringement is one type; and (2) in most cases, the measure of damages for inducement and contributory infringement are the same. (See Dkt. 305 at 20.) ParkerVision is incorrect. First, in his report, Benoit expressly limited his indirect infringement analysis to inducement. (Ex. 12, Benoit Rep. 31.) Benoit never mentions contributory infringement in his report, meaning any later reference to indirect infringement damages is limited to inducement damages. Indeed, Benoit confirmed that his report was so limited during his deposition. When asked whether his report included an opinion on damages for contributory infringement, Benoit replied [w]ell, so answering your other question and obviously, it states in the report that this is a calculation for induced infringement, right. (Ex. 14, Benoit Dep. Tr. 223:18-225:7.) Benoit has not provided any report on contributory infringement, and he cannot offer any such opinion at trial. Air Turbine Tech., 410 F.3d at 713 (excluding portions of expert testimony that exceeded material disclosed in expert report); Omega Patents, 2007 WL , at *3 (precluding party from soliciting new opinions based on any analysis or basis that was not disclosed in expert s reports). Second, ParkerVision is incorrect that the damages for induced infringement and contributory infringement are the same. Unlike damages for induced infringement, which might reach extraterritorial sales, damages for contributory infringement are expressly limited to sales that occur in the United States. 35 U.S.C. 271(c). Thus, the royalty base applicable to the different indirect infringement theories may be different and a separate analysis of both is required. 18.

25 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 25 of 33 PageID VIII. MOTION IN LIMINE #7: THE COURT SHOULD PRECLUDE PARKERVISION FROM ARGUING THE PRESUMPTION OF VALIDITY. The Federal Circuit has held that [t]he presumption of validity is one of law, not fact, and does not constitute evidence to be weighed against the challenger s evidence. Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, (Fed. Cir. 2004). Instead, the presumption of validity and heightened burden of proving invalidity are... different expressions of the same thing a single hurdle to be cleared. Id. at 1259; see also Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1323 (Fed. Cir. 2004) ( [T]he grant of a patent does not create a presumption of validity beyond the requirement that the party seeking to invalidate a patent must prove invalidity by clear and convincing evidence. ). The Court should preclude ParkerVision from arguing the presumption of validity to the jury and otherwise implying that it is separate and distinct from the clear and convincing evidence standard. 8 Qualcomm s concern about ParkerVision s intent is not speculation. ParkerVision s expert treated the two separately in his expert report. (See Ex. 15, Prucnal Rebuttal Rep. at 7-8 (discussing presumption of validity in one section of report and burden of proving invalidity in another). If ParkerVision is allowed to argue the presumption of validity to the jury separate from the clear and convincing evidence standard, the jury may well believe that the presumption of validity and the heightened burden of proof are distinct requirements both of which must be overcome to find a patent invalid. That is not the law and the Court should not risk the jury applying an even higher burden of proof to Qualcomm s 8 Qualcomm is aware of and acknowledges this Court s decision in the Graphic Packaging case on a similar motion in limine, but respectfully submits that the Court must, at a minimum, preclude ParkerVision from implying that the presumption is separate and distinct from the burden of proof. The most clear way of doing so is to preclude reference to the presumption of validity at all. But at a minimum, ParkerVision should not be allowed, as its expert has done in his report, to treat the presumption as a separate issue from the burden of proof. That is not the law. 19.

26 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 26 of 33 PageID invalidity defenses than already exists especially not for a presumption that is not even evidence. IX. MOTION IN LIMINE #8: THE COURT SHOULD PRECLUDE EVIDENCE BASED ON PARKERVISION EMPIRICAL FORMULAS INSTEAD OF THE ACTUAL FACTS. Three of ParkerVision s asserted claims, claims of the 342 Patent, require a capacitor to discharge a specific range of the total charge stored when a corresponding switch is open. ( 342 Patent: 52:58 54:2 (claim 19: 6%-50%; claim 20: 10%-25%; claim 21: 15%- 30%).) The only evidence that Dr. Prucnal cites as allegedly supporting these discharge ranges is simulations submitted in his opening report. (Ex. 13, Prucnal Rep. Appendix D at ) These simulations, however, are misleading and should be excluded under Federal Rules of Evidence 401, 402, and 403 because they are irrelevant and can only confuse the jury. Hendrix v. Evenflo Co., Inc., 255 F.R.D. 568, (N.D. Fla. 2009) (excluding one opinion that was not based on sufficiently reliable methodology and would create a risk of unfair prejudice and another set of utterly baseless and unreliable opinions based on the prejudice likely to result to [other side] were the court to admit [expert s] inconsistent and factually unsupported opinions ). The capacitor discharge in all of these simulations is dependent upon the value of the load resistance (R1), which Prucnal selected according to ParkerVision empirical formulas and not based on actual parameter values available from Qualcomm s schematics. (Ex. 16, Prucnal Dep. Tr. at 101:9-13.) Indeed, Prucnal set the RC time constant in his simulations to be the same for all accused products, effectively fixing the discharge percentage to have a value that falls within the ranges of all three of these claims. (Id. at 102:6-8.) Dr. Prucnal only performed one simulation two days before his deposition in which he used a load resistance value purportedly taken from Qualcomm s schematics. (Id. at 95:12-22; 119:4-12; 123:17-23.) That 20.

27 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 27 of 33 PageID 13102

28 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 28 of 33 PageID XI. MOTION IN LIMINE #10: THE COURT SHOULD EXCLUDE ALL REFERENCES TO DEFICIENT METHODOLOGIES AND OPINIONS BY PARKERVISION S DAMAGES EXPERT. On July 8, 2013, Qualcomm submitted a Daubert Motion to preclude the testimony of ParkerVision s damages expert, Paul Benoit. (Dkt. 288, Qualcomm s Daubert Motion.) Qualcomm seeks to exclude Benoit s testimony on the grounds that: (1) Benoit s opinion was not the result of a reliable methodology applied to reliable data; and (2) Benoit is not qualified to provide economic and mathematical opinions about market demand and Nash Bargaining. (Id.) Qualcomm maintains that Benoit s flawed methodologies should render his testimony inadmissible under Daubert. Fed. R. Evid. 702 and 703. The evidence that Benoit plans to present is so inherently flawed that it should also be excluded for its prejudicial nature. Fed. R. Evid The Eleventh Circuit has made clear that even expert testimony that passes Rule 702 muster can be excluded under Rule 403: Because of the powerful and potentially misleading effect of expert evidence, sometimes expert opinions that otherwise meet the admissibility requirements may still be excluded by applying Rule Simply put, expert testimony may be assigned talismanic significance in the eyes of lay jurors, and, therefore, the district courts must take care to weigh the value of such evidence against its potential to mislead or confuse. Frazier, 387 F.3d at 1266 (citation omitted); accord Cook ex. Rel. Tessier v. Sheriff of Monroe County, 402 F.3d 1092, 1111 (11th Cir. 2005). See also Daubert, 509 U.S. at 595 (because [e]xpert evidence can be both powerful and quite misleading, a judge exercises more control over experts than over lay witnesses under 403). Because any probative value is substantially outweighed by the risk of unfair prejudice and the potential to confuse or mislead the jury, the Court should exclude the following aspects of Benoit s expert testimony under Rule 403: Any reference to revenues and profits from standalone baseband products. 22.

29 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 29 of 33 PageID Any argument or assertion that the asserted claims account for any specific percentage of Qualcomm s profits, including 81%. Any argument or assertion regarding a proposed 50/50 profit split, including reliance on the Nash Bargaining Solution. Any argument or assertion that the Symbol-ParkerVision agreement may be used to calculate damages. Any argument or assertion regarding Benoit s intangible assets testimony. Qualcomm has explained why Benoit s opinions on each of these issues are flawed and irrelevant in its Daubert motion. (Dkt. 288.) The Court should not allow such inherently unreliable and flawed evidence before a jury especially from a purported expert. See Cook ex rel. Tessier, 402 F.3d at 1111; Frazier, 387 F.3d at 1266 see also See Uniloc, 632 F.3d at 1320 ( the disclosure that a company has made $19 billion dollars in revenue from an infringing product cannot help but skew the damages horizon for the jury, regardless of the contribution of the patented component to this revenue. ). XII. MOTION IN LIMINE #11: THE COURT SHOULD NOT ALLOW PARKERVISION TO ACCUSE QUALCOMM OF IMPROPERLY RETAINING THE EVALUATION BOARD OR OTHERWISE BREACHING THE PARTIES NDA. ParkerVision has no claim that Qualcomm violated the Non Disclosure Agreement ( NDA ) between the parties. Indeed, ParkerVision could not because the evidence does not support such a claim. Similarly, ParkerVision has presented no evidence that Qualcomm used the evaluation board and presentations provided by ParkerVision in for any improper reason. Accordingly, the fact that Qualcomm retained the board or presentations has no evidentiary value to ParkerVision s infringement claims. Moreover, any discussion of these issues will only serve to unfairly prejudice Qualcomm and confuse and distract the jury from the real issues in the case. Qualcomm will undoubtedly be prejudiced if the jury wrongly infers that Qualcomm did something impermissible with 23.

30 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 30 of 33 PageID ParkerVision s evaluation board and presentations despite no evidence that it did or somehow violated the NDA between the parties. Thus, in the unlikely event that the Court finds Qualcomm s retention of the ParkerVision evaluation board and presentations to be relevant to Plaintiffs infringement claims, this Court should exercise its inherent discretion under Rule 403 to exclude any evidence of these issues. Fed. R. Evid ParkerVision s only explanation for why this evidence is necessary is that the retention of the evaluation board is necessary to establish the chain of custody. But Qualcomm will not dispute chain of custody. Qualcomm s witness will admit that the board sat in a file drawer, disregarded and unused, from 1999 until after this case was filed and Qualcomm located it while searching for responsive documents and materials in discovery. As a result, any evidence of these issues is irrelevant and thus inadmissible. Fed. R. Evid. 401 and 402. XIII. MOTION IN LIMINE #12: THE COURT SHOULD PRECLUDE PARKERVISION FROM COMMENTING ON QUALCOMM S TOTAL REVENUE OR PROFITS. Qualcomm sells many products and generates revenue from many sources that have nothing to do with the patents-in-suit. ParkerVision should not be allowed to disclose Qualcomm s overall profits and revenues to the jury. 9 Such evidence has no probative value to ParkerVision s damages. As the Federal Circuit has acknowledged the disclosure that a company has made $19 billion dollars in revenue from an infringing product cannot help but skew the damages horizon for the jury, regardless of the contribution of the patented component to this revenue. See Uniloc, 632 F.3d at Here, the revenue is not just the total revenue from accused products it is total revenue and profits from all sources. If the Federal Circuit 9 During the meet and confer, ParkerVision stated that it would agree to this motion if Qualcomm agreed to make it mutual. Qualcomm could not agree. ParkerVision and Qualcomm are in different positions in this lawsuit and the prejudice that Qualcomm might suffer from admission of its total revenue or profits does not apply to ParkerVision. 24.

31 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 31 of 33 PageID found it improper to admit evidence of the total revenue from alleging infringing sales, admission of total revenue and profit from all sources is certainly improper. XIV. CONCLUSION. The issues of liability and damages and the technology in this case are already complicated. The jury should only hear facts necessary to decide the complex technical and damages issues without more. Accordingly, for the reasons stated above, the Court should grant Qualcomm s motions in limine. August 29, 2013 Respectfully submitted, COOLEY LLP By: /s/ Timothy S. Teter Stephen C. Neal (admitted pro hac vice) nealsc@cooley.com Timothy S. Teter (admitted pro hac vice) teterts@cooley.com Five Palo Alto Square 3000 El Camino Real Palo Alto, CA Telephone: (650) Facsimile: (650) and- CRAVATH, SWAINE & MOORE LLP Keith R. Hummel (admitted pro hac vice) khummel@cravath.com David Greenwald (admitted pro hac vice) dgreenwald@cravath.com Worldwide Plaza 825 Eighth Avenue New York, New York Telephone: (212) Facsimile: (212) and- 25.

32 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 32 of 33 PageID BEDELL, DITTMAR, DEVAULT, PILLANS & COXE, P.A. John A. DeVault, III Florida Bar No Courtney K. Grimm Florida Bar No The Bedell Building 101 East Adams Street Jacksonville, Florida Telephone: (904) Facsimile: (904) Counsel for Defendant Qualcomm Incorporated 26.

33 Case 3:11-cv RBD-TEM Document 325 Filed 08/29/13 Page 33 of 33 PageID CERTIFICATE OF SERVICE I HEREBY CERTIFY that on this 29th day of August, 2013, I electronically filed the foregoing with the Clerk of the Court by using the CM/ECF system which will send a notice of electronic filing to all counsel of record for all publicly filed documents. All documents covered by the concurrently filed motion to seal have been served via on ParkerVision's counsel. /s/ Timothy S. Teter Timothy S. Teter (admitted pro hac vice) teterts@cooley.com Five Palo Alto Square 3000 El Camino Real Palo Alto, CA Telephone: (650) Facsimile: (650) Attorney for Defendant Qualcomm Incorporated

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37 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 1 of 1 PageID EXHIBIT 2 Qualcomm Incorporated has sought leave to file this document under seal

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46 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 2 of 4 PageID CONFIDENTIAL - ATTORNEYS' EYES ONLY JEFFREY LEACH - 11/13/ UNITED STATES DISTRICT MIDDLE DISTRICT OF FLORIDA 2 JACKSONVILLE DIVISION 3 PARKERVISION, INC., 4 Plaintiff, 5 vs. 6 QUALCOMM INCORPORATED, 7 Defendant. CASE NO. 3:11-cv-719-J-37-TEM QUALCOMM INCORPORATED Counterclaim Plaintiff, PARKERVISION, INC. and 11 STERNE, KESSLER, GOLDSTEIN & FOX PLLC, 12 Counterclaim Defendants. 13 ******************************************************* ORAL AND VIDEOTAPED DEPOSITION OF 14 JEFFREY LEACH NOVEMBER 13, CONFIDENTIAL - ATTORNEYS' EYES ONLY ******************************************************* 16 ORAL AND VIDEOTAPED DEPOSITION OF JEFFREY LEACH, 17 produced as a witness at the instance of QUALCOMM 18 Incorporated, and duly sworn, was taken in the 19 above-styled and numbered cause on the 13th day of 20 November, 2012, from 9:29 a.m. to 6:12 p.m., before 21 Caroline Chapman, CSR in and for the State of Texas, 22 reported by Computerized Stenotype Machine, 23 Computer-Assisted Transcription, at the Law Offices of 24 McKool Smith, 300 West 6th Street, Suite 1700, Austin, 25 Texas pursuant to the Federal Rules of Civil Procedure. Page 1 Merrill Corporation - New York

47 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 3 of 4 PageID CONFIDENTIAL - ATTORNEYS' EYES ONLY JEFFREY LEACH - 11/13/ here before? Page THE REPORTER: Those are new. 3 THE WITNESS: Okay, good. 4 Q. (By Mr. Lasher) Mr. Leach, do you have what's 5 been marked as Exhibit 44? 6 A. Yes, I do. 7 Q. And this is the ParkerVision Form 10-K filed 8 March 30th, 2012, correct? 9 A. Yes. 10 Q. Direct your attention to Page 5 of this 11 document. 12 A. Yes. 13 Q. I will direct your attention to the fourth 14 paragraph down, four lines up, to where it says, "Our 15 development and marketing efforts since 2005 have been 16 primarily focused on a portion of our transmit 17 technologies, however, incorporation of some of our 18 receiver technology and mobile applications is also 19 contemplated in our production plans." 20 Did I read that right? 21 A. Yes. 22 Q. What product plans is this referring to? 23 A. Well, it could be twofold. We do have plans to 24 do our own receiver on the CDMA product line, so that 25 would be one. And then the LGIT, let me read this Merrill Corporation - New York

48 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 4 of 4 PageID CONFIDENTIAL - ATTORNEYS' EYES ONLY JEFFREY LEACH - 11/13/ again. If LGIT finds a baseband partner, that is Page something that we would do with them as well. But I 3 would really move this towards, primarily, doing a CDMA 4 receiver, that would be replacement for that FCI part. 5 Q. And do your plans relating to a receiver on the 6 CDMA product line -- strike that. 7 Are your plans relating to a receiver on 8 the CDMA product line described in any documents? 9 A. I believe they are. 10 Q. And who at ParkerVision would have possession 11 of those documents? 12 A. I would. 13 Q. Would they be stored on your computer? 14 A. Yeah, probably. 15 Q. Would you have them, also, on a hard copy? 16 A. No, I doubt it. They would be stored on my 17 computer. 18 Q. Do you know if they have been produced in this 19 litigation? 20 MS. BURATTI: Objection, calls for 21 speculation. 22 A. I will answer the same way I answered before: 23 My entire laptop was produced for this litigation, so 24 better question for Bill Black, what was given to you. 25 Bill Black, is that his name? Merrill Corporation - New York

49 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 1 of 1 PageID EXHIBIT 6 Qualcomm Incorporated has sought leave to file this document under seal

50 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 1 of 2 PageID EXHIBIT 7

51 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 2 of 2 PageID MCKOOL SMITH Direct 300 Crescent Court Suite 1500 Dallas, Texas Telephone: (214) Facsimile: (214) July 31, 2013 Via FTP James E. Canning Cravath, Swain & Moore LLP Worldwide Plaza 825 Eighth A venue New York, NY RE: ParkerVision, Inc. v. Qualcomm Inc., Case No. 3:11-cv-719-J-37- TEM Dear Mr. Canning: Two zip files entitled PV043 and PV044 containing documents being produced in connection with the above referenced matter were loaded to the FTP site. The documents are bearing bates numbered PV PV Please contact me if you have any questions. Fgards, r I \.' I. I McKool Smith A Professional Corporation Attorneys Austin I Dallas I Houston I Los Angeles I Marshall I New York I Silicon Valley 1 Washington, DC McKool vl

52 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 1 of 1 PageID EXHIBIT 8 Qualcomm Incorporated has sought leave to file this document under seal

53 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 1 of 6 PageID EXHIBIT 9

54 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 2 of 6 PageID 13129

55 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 3 of 6 PageID amplifier. We do not understand the basis for your refusal to provide these documents, and ask that you reconsider your position. Your refusal to provide us with this information and documentation prejudices Qualcomm s ability to understand the design and function of the products. ParkerVision s Document Production We discussed ParkerVision s document production relating to the PVD2510R and the various issues identified in my August 12, 2013 letter. You confirmed that ParkerVision asserts that the PVD2510R incorporates or embodies the alleged inventions claimed by the asserted claims of the patents-in-suit. You first took the position that ParkerVision s production regarding the chip was complete, even though ParkerVision has not produced documents relating to the chip that would be responsive to numerous Qualcomm document requests, including the list of Qualcomm document requests set forth in my letter. You suggested that if Qualcomm were to file a motion to compel production, the motion would be denied because it would be filed after the close of discovery. We then pointed out that many of the documents at issue would not have been created until after the close of discovery and that ParkerVision has a duty to supplement its production. You agreed but said that you were not going to spend $800,000 of my client s money to perform a document collection and review so close to trial. The fact that the collection and production of responsive documents relating to the PVD2510R would impose some burden on ParkerVision does not excuse ParkerVision from having to fulfill its admitted duty to supplement its production, including through the production of responsive s and other internal documents. Additionally, ParkerVision cannot make an incomplete production by selectively deciding which documents about the PVD2510R to produce and which documents not to produce. If allowed to do so, ParkerVision would be able to rely upon the limited number of produced documents relating to the PVD2510R as a sword to support its arguments while improperly shielding all other documents relating to the PVD2510R from discovery. You then offered to consider producing specific documents that we identify. As I explained, Qualcomm is not required to serve requests for specific documents but ParkerVision is required to produce documents responsive to the requests Qualcomm served last year during the fact discovery period, and my letter provided specific examples of categories for which ParkerVision had produced no responsive documents, including any financial, sales, pricing, marketing, cost or inventory-related documents relating to the chip. You then stated that there were no marketing documents other than what appears on ParkerVision s website and that there were no sales documents as there have been no sales of the chip. Of course, there must have been s and other internal documents created that relate to the marketing materials on ParkerVision s website but you have refused to produce such materials. ParkerVision appears to contend that these products are being offered for sale yet, aside from a website, you refuse to produce any documentation relating to offers to sell. We then asked whether ParkerVision would produce cost information showing the price of all the components listed in the bill of materials. We noted that

56 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 4 of 6 PageID ParkerVision had produced a list of the components necessary to build evaluation boards for the PVD2510R (see PV ) and asked that you provide the cost information for each of the components listed. You said that you would do so, if that information is available. It would be very surprising if such information were not available. Additional Document Production Relating to the PVL2520R Low Noise Amplifier We have asked that ParkerVision provide cost information for each of the components in the list of components necessary to build an evaluation board for the PVL2520R (see PV ). ParkerVision is claiming to be a viable supplier of chips in the cellphone market, but in refusing to produce information relating to the LNA, ParkerVision is precluding Qualcomm s ability to test that assertion in court. Additionally, as we explained during the call, ParkerVision has asserted that Qualcomm has achieved cost savings through its alleged use of ParkerVision s technology. We are therefore entitled to test this purported savings by discovering the costs of the various components of ParkerVision s downconverter product, including the PVL2520R LNA that ParkerVision has publicly stated can be part of such a product. By refusing to produce this information, ParkerVision is again precluding Qualcomm s ability to test ParkerVision s assertion relating to a material aspect of the alleged invention.

57 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 5 of 6 PageID Production of Samples You stated that ParkerVision could not produce ten samples of the PVD2510R that Qualcomm can use for testing purposes because ParkerVision has only a handful of chips. How many chips does ParkerVision currently have? When does it expect to get delivery of additional chips? Have any additional chips been ordered? Again, ParkerVision apparently hopes to make significant claims in court relating to these devices, but refuses to provide Qualcomm with the opportunity to challenge the assertions through analysis and testing of the devices. Supplementation of Interrogatory Responses ParkerVision agreed to supplement its interrogatory responses, including Interrogatories No. 12 and No. 18, to provide information concerning the PVD2510R. You agreed to serve those supplemental responses by August 23. We agreed to serve supplemental interrogatory responses providing updated financial data by August 23 as well. Deposition Testimony Regarding the PVD2510R You also offered to have Qualcomm provide a list of questions about the PVD2510R that you would bring to your client to answer. You stated that ParkerVision would be willing to stipulate to the answers provided in response to those questions. While we appreciate this offer, we believe that Qualcomm is entitled to take deposition testimony from a ParkerVision witness regarding the PVD2510R, a topic that we were not able to explore fully during fact discovery. During our call, you agreed to consider this request. Please let us know by August 23 if ParkerVision will make a witness available. This goes to the prejudice referred to repeatedly above i.e., ParkerVision s desire to make significant assertions in court regarding its abilities as a chip supplier while, at the same time, precluding Qualcomm from a fair opportunity to challenge those assertions. * * *

58 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 6 of 6 PageID Qualcomm continues to reserve the right to move to exclude any evidence of the PVD2510R or the PVL2520R based upon its disclosure so late in this case and ParkerVision s refusal to produce documents responsive to Qualcomm s document requests that relate to the PVD2510R or the PVL2520R. Very truly yours, James E. Canning Joshua Budwin, Esq. McKool Smith, P.C. 300 West Sixth Street Suite 1700 Austin, TX BY ELECTRONIC MAIL

59 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 1 of 30 PageID EXHIBIT 10

60 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 2 of 30 PageID UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION PARKERVISION, INC., Plaintiff, v. QUALCOMM INCORPORATED, Defendant. QUALCOMM INCORPORATED, Counterclaim Plaintiff, PARKERVISION, INC. and STERNE, KESSLER, GOLDSTEIN & FOX PLLC, Counterclaim Defendants. / / CASE NO.: 3:11-cv-719-J-37-TEM PARKERVISION S RULE 26(A)(2)(C) DISCLOSURE OF TESTIMONY BY JEFFREY PARKER AND DAVID SORRELLS Pursuant to Rule 26(a)(2)(A) of the Federal Rules of Civil Procedure, Plaintiff ParkerVision, Inc. ( ParkerVision ) notifies Qualcomm Incorporated ( Qualcomm ) that Jeffrey Parker and David Sorrells may be used at trial to present evidence under Rules 702, 703, or 705 of the Federal Rules of Evidence. Mr. Parker and Mr. Sorrells have not been retained or specially employed to provide expert testimony in the case, nor do their duties as the party s employee regularly involve giving expert testimony. Rule 26(a)(2)(B). McKool v1 1

61 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 3 of 30 PageID Pursuant to Rule 26(a)(2)(C) of the Federal Rules of Civil Procedure, ParkerVision provides Qualcomm with the following summary of the facts and opinions to which the witness is expected to testify. Jeffrey Parker: In ParkerVision s October 5, 2012 Amended Initial Disclosures, ParkerVision informed Qualcomm that Jeffrey Parker may be expected to testify regarding [f]acts and opinions regarding the amount of damages that Qualcomm should be required to pay ParkerVision as a result of this case, including, but not limited to, the amount of a royalty that ParkerVision would have reasonably accepted in any actual or contemplated negotiation between ParkerVision and Qualcomm. ParkerVision s Amended Initial Disclosures at 2. Mr. Parker s testimony will include the information discussed in his December 12-13, 2012 deposition, will be based upon the documents exchanged between ParkerVision and Qualcomm as a part of their licensing discussions, will be based upon his attendance of the depositions of various Qualcomm witnesses, and will be based upon his experience in business, including licensing negotiations over the past thirty years. Mr. Parker provided a summary of his expected testimony in his December 12-13, 2012 deposition. For example, as Mr. Parker testified in his December 13, 2012 deposition: 13 EXAMINATION BY MR. BUDWIN: 15 Q. Good afternoon, Mr. Parker. I just handed you 16 a copy of a document that's been marked as Exhibit A. Yes. 18 Q. And do you see it is entitled, "Plaintiff McKool v1 2

62 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 4 of 30 PageID ParkerVision's Amended Initial Disclosures"? 20 A. I do. 21 Q. Would you turn to the second page. 22 A. Yes. 23 Q. And there is a -- there is your name and there 24 is a description of subjects known by you. 25 Do you see that? 1 A. Yes Q. And part of it includes facts and opinions 3 regarding the amount of damages that QUALCOMM should be 4 required to pay ParkerVision as a result of this case, 5 including but not limited to, the amount of a royalty 6 that ParkerVision would have reasonably accepted in any 7 actual or contemplated negotiation between ParkerVision 8 and QUALCOMM. 9 Do you see that? 10 A. I do. 11 Q. Are you prepared to testify about those 12 subjects in your deposition in the last two days? 13 A. Yes, I am, or was or have been. * * * 204 McKool v1 3

63 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 5 of 30 PageID Q. Now, can you briefly outline for us the 6 methodology that you believe -- or the methodologies 7 that you believe could be used to determine the areas 8 that are the subject of the initial disclosure? 9 A. Well, I believe the methodologies that would be 10 appropriate to speak to this subject would be to start 11 with the negotiation that ParkerVision had with QUALCOMM 12 back in the 1999 time frame. And I believe we would 13 then take that negotiation and we would have to compare 14 it to what that negotiation would look like had QUALCOMM 15 come back to ParkerVision when they started using our 16 technology. And if they would have asked to license the 17 technology and had permission to use the technology, and 18 we would have, I guess -- I will call them, normalize 19 the financial terms for the fact that, in 1999 when we 20 were negotiating with them, we had no patents. Now we 21 have patents and a significant portfolio covering the 22 technology at hand. 23 I would understand what QUALCOMM wanted to 24 use the technology for in terms of application, whether 25 they wanted it exclusively or non-exclusively. I would have -- I would make an assessment of what are the McKool v1 4

64 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 6 of 30 PageID non-infringing alternatives that QUALCOMM has or doesn't 3 have available to it. And then I would need information 4 regarding some information that I believe is 5 confidential to QUALCOMM that I would have to have to 6 make an educated assessment which would deal with their 7 use of our technology. 8 Q. So let me make sure that I understand. You 9 have outlined a methodology. And would that methodology 10 start with by looking at the negotiations the parties 11 had previously? 12 A. Yes. 13 MR. HUMMEL: Object to the form. 14 Q. (By Mr. Budwin) And then you used a term about 15 describing how you would bring those negotiations 16 forward. What was that term? 17 MR. HUMMEL: Same objection. 18 A. Normalize, basically. 19 Q. (By Mr. Budwin) What do you mean by 20 "normalize"? 21 A. Well, what I mean by that is: When QUALCOMM 22 was negotiating with ParkerVision, since we are using 23 that as a starting point, in 1999, the world was 24 different. ParkerVision's patents weren't issued. It McKool v1 5

65 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 7 of 30 PageID hadn't been proven, yet, that there were no design around or no non-infringing alternatives for 2 ParkerVision's technology for many of the applications 3 that we believed QUALCOMM wanted to use the technology 4 for. 5 Q. You mean, account for events between the time 6 of the negotiation and the time of the infringement. 7 A. Correct. 8 MR. HUMMEL: Objection. 9 A. And we would, also, be looking at the 10 difference between QUALCOMM becoming ParkerVision as a 11 customer before the fact versus QUALCOMM coming to the 12 ParkerVision Company after the fact. 13 Q. (By Mr. Budwin) Now, you have outlined a 14 methodology. Are you able to calculate a number using 15 that methodology today? 16 A. I am not able to calculate a number today from 17 that methodology. 18 Q. Why not? 19 A. Well, I would need to have from QUALCOMM 20 financial information to be able to make the 21 calculation. McKool v1 6

66 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 8 of 30 PageID Q. Would you like to have access to QUALCOMM's 23 financial information? 24 A. Yes, I would like to have access to that. 25 Q. Has QUALCOMM made that information available to 1 you? A. That has not been made available to me. 3 Q. Now, are there any other methodologies that you 4 believe could be used to calculate damages in this case? 5 MR. HUMMEL: Object to the form. 6 A. Well, yes. I believe we can, also, look at 7 what ParkerVision's technology has done helping QUALCOMM 8 grow its business and have a competitive advantage in 9 the marketplace and the result of that. 10 Q. (By Mr. Budwin) And what do you -- can you 11 elaborate on that a little bit more? What are some of 12 the factors that would be considered in that discussion? 13 A. Well, the factors that we would consider in 14 that situation would be: What has QUALCOMM been able to 15 achieve in market share beyond its competitors in the 16 use of our technology? What has QUALCOMM's 17 profitability or financial results been able to achieve 18 in use of our technology? What competitive advantages McKool v1 7

67 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 9 of 30 PageID did our technology bring that maybe gave QUALCOMM 20 significant advantages over its competition and grew its 21 share of market or allowed it to distinguish itself 22 against its competitors? 23 Q. So now you have outlined a second methodology. 24 Do you believe that there is, potentially, a third 25 methodology that could be used? MR. HUMMEL: Object to the form. 2 A. Uhm. 3 Q. (By Mr. Budwin) Is it -- does the use of your 4 patent invention result in fewer components in an 5 integrated circuit? 6 MR. HUMMEL: Object to the form. 7 A. Yes. There is, also, a methodology where 8 ParkerVision can assess savings that QUALCOMM has 9 enjoyed by using our technology, therefore, increasing 10 its financial results for itself. 11 Q. (By Mr. Budwin) And you're the CEO of 12 ParkerVision. 13 A. Yes, I am. 14 Q. And would you be the person who would have the 15 actual negotiations with QUALCOMM at the time of McKool v1 8

68 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 10 of 30 PageID infringement or whatever time the Court deems proper? 17 A. I would be. 18 Q. And would you have used the methodologies that 19 you have outlined for us to determine your negotiating 20 position at that time? 21 MR. HUMMEL: Object to the form. 22 A. I absolutely would. * * * Q. (By Mr. Budwin) Mr. Parker, how long have you 22 been in business? 23 A. Since 1979 or ' Q. How many companies have you started in that 25 time frame? A. Two companies, one which became public. One 2 which was sold to United Technologies and the second 3 company, a division was sold to Thomson Electronics. 4 Q. And throughout the time -- your time -- your 5 experience in management, have you been involved in 6 licensing discussions of various types for technology, 7 product sales, business sales, things of that nature? 8 A. I have. 9 Q. Okay. Were you personally involved in the 10 prior licensing discussions with QUALCOMM? McKool v1 9

69 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 11 of 30 PageID A. Yes. 12 Q. And do you have documents and information in 13 your personal possession related to the actual 14 negotiations between yourself and QUALCOMM? 15 A. I do. 16 Q. Okay. And can you testify about the actual 17 negotiations based upon the facts as known to you? 18 A. I can. 19 Q. Okay. And the methodologies that you outlined 20 when I was asking you questions earlier, are those based 21 on your reasonable -- reasonable perception of the facts 22 as known to you, together with your experience in 23 business? 24 A. Yes, they are. * * * Q. You've heard of something called a reasonable 14 royalty? 15 A. I have. 16 Q. And you have heard of something called a 17 hypothetical negotiation. 18 A. I have. 19 Q. And you would be the person at ParkerVision McKool v1 10

70 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 12 of 30 PageID responsible for making a licensing decision on a 21 reasonable royalty in any hypothetical negotiation with 22 QUALCOMM as related to any infringement of your patents; 23 is that right? 24 A. I would be, yes. Additional portions of Mr. Parker s December 12-13, 2012 may also likewise be relevant to Mr. Parker s expected testimony. Mr. Parker may also be expected to testify about the documents exchanged between ParkerVision and Qualcomm as a part of their licensing discussions. Such documents include, but are not limited to: 1. February 5, 1998: Letter to Jeff Jacobs from Jeff Parker (PV ) 2. June 9, 1998: Non-Disclosure Agreement between Qualcomm and ParkerVision (PV ) 3. August 10, 1998: Fax to Jeff Jacobs from Jeff Parker (PV ) 4. August 13, 1998: Letter to Irwin Jacobs from Stephen Silverman of SilverSolutions (PV ) 5. August 14, 1998: from Valerie Gyton to Jeff Parker (PV ) 6. August 18, 1998: string between Prashant Kantak and Jeff Parker (PV ) 7. August 19, 1998: string between Prashant Kantak and Jeff Parker (PV ) 8. August 25, 1998: string between Jeff Parker and Jeff Jacobs (PV ) 9. September 1, 1998: from Joe Hamilla to Jeff Parker (PV ) 10. September 2, 1998: from Jeff Parker to Prashant Kantak (PV ) 11. September 8, 1998: from Prashant Kantak to Jeff Parker (PV ) 12. September 10, 1998: from Jeff Parker to Prashant (PV ) McKool v1 11

71 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 13 of 30 PageID September 11, 1998: from Prashant to Jeff Parker (PV ) 14. September 14, 1998: string between Jeff Jacobs to Jeff Parker (PV ) 15. October 6, 1998: from Prashant to Jeff Parker (PV ) 16. October 9, 1998: string between Jeff Parker to Prashant (PV ) 17. November 6, 1998: string between Jeff Parker and Prashant (PV ) 18. November 20, 1998: string between Jeff Parker to Prashant (PV ) 19. November 24, 1998: string between Jeff Parker to Prashant (PV ) 20. December 3, 1998: string between Jeff Parker to Prashant (PV ) 21. January 12, 1999: Waiver of Conflict for Sterne Kessler (PV ) 22. February 3, 1999: from Prashant to Jeff Parker (PV ); from Prashant to Jeff Parker and Sorrells (PV ) 23. February 9, 1999: Fax from Jeff Parker to Prashant (PV ) 24. February 11, 1999: Fax from Jeff Parker to Prashant (PV ) 25. March 2, 1999: Notes from meeting with Prashant and Johan (PV ) 26. March 4, 1999: from Prashant to Rob Sterne (PV ): notes regarding board meeting with Qualcomm (PV ) 27. March 15, 1999: Signed NDA (PV ) 28. March 16, 1999: Notes regarding disclosure meeting (PV ); Notes regarding meeting (PV ); Notes and handwritten notes (PV ) 29. March 24, 1999: Fax from Sterne to Prashant (PV ) 30. March 25, 1999: Fax from Saed Younis to Jeff Parker and David Sorrells (PV ) 31. April 22, 1999: from David Sorrells PV to Chuck of QUALCOMM (PV ) 32. April 23, 1999: string among Chuck Wheatley, David Sorrells, and Jeff Parker (PV ) McKool v1 12

72 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 14 of 30 PageID May 3, 1999: Term Sheet regarding proposed agreement between Qualcomm and ParkerVision (PV ) 34. May 26, 1999: Meeting between PV and QUALCOMM (PV ) 35. June 4, 1999: Fax from Michael Q. Lee (Sterne Kessler) to Jeff Parker (PV ) 36. June 10, 1999: Letter from Prashant to Jeff Parker (PV ); Nonexclusive License Outline (PV ); Markup of Qualcomm s proposed terms (PV ) 37. June 28, 1999: string between Prashant and Jeff Parker (PV ) 38. June 30, 1999: from Jeff Parker to Prashant (PV ) 39. July 7, 1999: from Prashant to Jeff Parker (PV ) 40. August 12, 1999: from Jeff Parker to Prashant and Marv Blecker (PV ) 41. August 13, 1999: from Marv Blecker to Jeff Parker (PV ) 42. August 16, 1999: ParkerVision Board Meeting (PV ) 43. November 30, 2000: Letter from Jeff Parker to Prashant (PV ) 44. December 19, 2002: NDA between PV and QUALCOMM (PV ) And, other documents exchanged between, or related to, the negotiations between Qualcomm and ParkerVision. Finally, Mr. Parker s expected testimony will be based upon his experience in business, including starting and selling numerous companies, and including his personal experience in licensing negotiations over the past thirty years. Mr. Parker discussed his experience in his deposition. See e.g. J. Parker Depo. (12/13/12) at 10:13-34:4; J. Parker Depo. (12/13/12) at 211:21-212:24. David Sorrells: In ParkerVision s October 5, 2012 Amended Initial Disclosures, ParkerVision informed Qualcomm that David Sorrells may be expected to testify regarding [f]acts and opinions McKool v1 13

73 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 15 of 30 PageID consistent with those set forth in his September 13, 2012 declaration, as well as ParkerVision s January 30, 2012 and March 2, 2012 infringement contentions, and the August 27, 2012 infringement contentions attached to ParkerVision s Motion to File Amended Infringement Contentions, including but not limited to Qualcomm s infringement of each of the patents-insuit. ParkerVision s Amended Initial Disclosures at 2. Mr. Sorrells is expected to testify about his understanding of Qualcomm s infringement of the asserted claims of the patents-in-suit of which Mr. Sorrells is a named inventor, including the information discussed in his November 30- December 1, 2012 deposition, his September 13, 2012 declaration, ParkerVision s January 30, 2012 infringement contentions, March 2, 2012 infringement contentions, and August 27, 2012 infringement contentions. In addition, Mr. Sorrells s testimony will be based upon the documents exchanged between ParkerVision and Qualcomm as a part of their licensing discussions, will be based upon his attendance of the depositions of various Qualcomm witnesses, will be based upon his review and analysis of the UBM TechInsights Report discussed in ParkerVision s infringement contentions, and his experience designing RF circuits over the past thirty years. Mr. Sorrells provided a summary of his expected testimony in his November 30- December 1, 2012 deposition. For example, as Mr. Sorrells testified in his December 1, 2012 deposition: 10 EXAMINATION BY MR. BUDWIN: 12 Q. Good morning, Mr. Sorrells. 13 A. Morning, Mr. Budwin. 14 Q. Now, do you recall an exchange yesterday McKool v1 14

74 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 16 of 30 PageID with Mr. Hummel where you testified, quote, I'm 16 prepared to walk through the claims and show you 17 which claims are asserted against Qualcomm that these 18 products, referring to the ParkerVision products, 19 practice? 20 A. Yes, sir, I do. 21 Q. During the course of this deposition were 22 you ready, willing, and able to walk counsel through 23 an understanding of how each of the asserted claims 24 in this case are practiced by the ParkerVision 25 products identified in the interrogatory response 1 that Mr. Hummel asked you about? A. Yes, sir. 3 Q. And did he ask you any questions about that 4 today? 5 A. No, sir. 6 Q. Now, I'm going to hand you a document which 7 will be marked, I believe, as Exhibit (Exhibit Number 36 marked.) 9 Q. (BY MR. BUDWIN) Exhibit 36 is a copy of 10 ParkerVision's amended initial disclosures. And I'm 11 going to ask you to turn to the second page. McKool v1 15

75 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 17 of 30 PageID A. Yes, sir. 13 Q. Do you see your name listed there, David F. 14 Sorrells? 15 A. Yes, in the middle of the page. 16 Q. And it says, "Inventor of one or more of 17 the patents in suit." Do you see that? 18 A. Yes, sir. 19 Q. That's true? That's true, isn't it? 20 A. Yes, sir. 21 Q. Okay. "ParkerVision's prior relationship 22 with Qualcomm." That's something that you're 23 prepared to testify about and did to a certain extent 24 today? 25 A. Yes, sir Q. "Facts and opinions consistent with those 2 set forth in his September 13th, 2012, declaration." 3 Do you see that? 4 A. Yes, sir. 5 Q. Now, do you recall that declaration? It's 6 the one submitted in opposition to a motion to strike 7 the infringement contentions. 8 A. I do. McKool v1 16

76 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 18 of 30 PageID Q. Were you prepared to testify about the 10 facts and opinions set forth in that declaration, 11 including your beliefs regarding Qualcomm's 12 infringement? 13 A. Yes, sir, I was. 14 Q. Were you asked any questions about that 15 declaration or your beliefs regarding Qualcomm's 16 infringement during the course of your deposition? 17 A. No, sir. 18 Q. Then it continues, "As well as 19 ParkerVision's January 30th, 2012, and March 2nd, , infringement contentions and the August 27th, , infringement contentions attached to 22 ParkerVision's motion to file amended infringement 23 contentions, including but not limited to Qualcomm's 24 infringement of each of the patents in suit." Do you 25 see that? 1 A. Yes, sir, I do Q. Were you ready, willing, and able to 3 testify about ParkerVision's theories of infringement 4 as set forth in the three infringement contentions 5 noted in the initial disclosures? McKool v1 17

77 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 19 of 30 PageID A. Yes, sir, I was. 7 Q. And were you asked any questions about 8 those during the course of this deposition? 9 A. No, sir. 10 Q. Now, based upon your knowledge, do you 11 firmly believe that Qualcomm infringes your patents? 12 A. Yes, sir, I do. 13 Q. And have you looked at publicly available 14 information that you believe shows Qualcomm's 15 infringement of your patents? 16 A. Yes, sir, I have. 17 Q. Now, Mr. Hummel asked you questions. I 18 believe he used the word whether you believed 19 Qualcomm stole your patented invention. Do you 20 recall that? 21 A. Yes. 22 Q. Do you see your patented invention as you 23 disclosed it to Qualcomm through the course of all of 24 the meetings that you had with Qualcomm's personnel, 25 within the Qualcomm products that you're aware of? 1 A. Yes, sir, I do. *** 435 McKool v1 18

78 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 20 of 30 PageID Q. So let's break this down just to make sure 23 that we're on the same page. You've got a paper in 24 Exhibit 37 that's dated in 2011 and is published by 25 Qualcomm. Is that right, sir? 1 A. Yes Q. Okay. And in the paper published by 3 Qualcomm in 2011, you see circuitry and timing 4 diagrams related to the operation of Qualcomm 5 integrated circuits? 6 A. As well as what's written in the text. *** Q. Prior to seeing the paper in Exhibit 37, 5 which is dated in 2011, did you have any knowledge of 6 the internal workings of any of the Qualcomm products 7 that are accused of infringement in this case such 8 that you suspected infringement of those products? 9 A. No. 10 MR. HUMMEL: Object to the form. 11 Q. Now, I believe you were also testifying 12 about your patent in Exhibit 38? 13 A. Yes, sir. 14 Q. Now, is it true that one of the figures McKool v1 19

79 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 21 of 30 PageID that you see in your patent shows both the circuitry 16 layout and a timing diagram that corresponds to the 17 circuitry and the timing diagram for the Qualcomm 18 product described in the paper in Exhibit 37? 19 A. Yes. And there are many in this patent. I 20 just showed two as an example. *** Q. Then what's the basis for your view that 5 all of the Qualcomm products accuse all of the -- 6 infringe all of the asserted claims? 7 A. This -- the QSC6270, and I believe the 8 RTR -- I don't remember the number. There's another 9 chip -- are exemplary chips that -- what I did was, 10 is I found that this paper corresponded to -- this 11 architecture corresponded to two Qualcomm patents. 12 And then I looked and saw, on Qualcomm's ICs, that you know, when you make an IC, you basically list 14 what patents are covered by -- are covered in that 15 IC. And I was able to see those two patents on the 16 vast majority of Qualcomm ICs Q. So your entire infringement analysis is 18 based on the document you have in your hand, 19 Exhibit 37? McKool v1 20

80 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 22 of 30 PageID *** Q. Is that correct, sir? *** A. My entire infringement -- my infringement 4 analysis was originally based on this paper, two 5 Qualcomm patents -- actually, that's not true. There 6 was two or three papers, two Qualcomm patents, and 7 the reverse teardown report for the QSC Q. Okay. Have you looked at any other 9 material to support your infringement analysis than 10 those things that you've just testified about? 11 A. Yes. 12 Q. What else? 13 A. There is a repository of information that's 14 been collected on Qualcomm's ICs that I -- I've been 15 able to look at. 16 Q. And have -- go ahead. I'm sorry. 17 A. No, I'm sorry. Go ahead. 18 Q. No. Continue. 19 A. I've seen many papers since this that 20 support this type of architecture. 21 Q. Do you expect to testify about infringement McKool v1 21

81 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 23 of 30 PageID of ParkerVision's products at trial in this action? 23 MR. BUDWIN: You can answer the 24 question to the extent that you understand it. 25 A. I believe so, yes, sir. 1 (Exhibit Number 39 marked.) Q. Let me show you Sorrells Exhibit Number Do you recognize this document? 4 A. Yes, sir. 5 Q. What is this document? 6 A. It was prepared, as a result of, I believe, 7 Mr. Parker asking me to put my thoughts on paper as 8 to be able to explain why I thought Qualcomm was 9 infringing our patents. 10 Q. Okay. And this is -- this analysis is for 11 the '518 patent? 12 A. No. This -- well, let me see. This 13 analysis -- oh, I'm sorry. You're asking which claim 14 I applied it to. 15 Q. Uh-huh. 16 A. Oh, yes. Yes. '518. Yes, sir, up at the 17 top. 18 Q. Okay. Have you done one for the other 19 patents in suit? McKool v1 22

82 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 24 of 30 PageID MR. BUDWIN: You can answer yes or 21 no. 22 A. Yes. 23 Q. And which patents have you performed this 24 type of analysis for in the patents in suit? 25 A. All six. *** Q. Have you seen detailed claim charts that 7 match up each of the elements for each of the 8 asserted claims against the accused products? 9 A. I have read ParkerVision's infringement 10 contentions, yes. *** Q. (BY MR. BUDWIN) Mr. Sorrells, do you 13 firmly believe that each of the Qualcomm products 14 accused of infringement in this case infringe each of 15 the asserted claims? 16 MR. HUMMEL: Object to the form. 17 A. I do. 18 Q. Now, Mr. Hummel was asking you some 19 questions about that and I want to make sure that we 20 set the record straight. What MR. HUMMEL: Move to strike the 22 comment. McKool v1 23

83 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 25 of 30 PageID Q. What publicly available information have 24 you been able to review that confirms your belief 25 that each of the accused Qualcomm products infringes each of the asserted claims of your patents? 2 MR. HUMMEL: Object to the form. 3 A. I have reviewed Qualcomm's papers and some 4 of Qualcomm's patents with the associated IC. 5 Q. Okay. You also reviewed a reverse 6 engineering report from UBM TechInsights? 7 A. Yes, sir, I have. 8 Q. Now -- and I believe you told Mr. Hummel 9 this. Did you also look at how Qualcomm -- certain 10 Qualcomm patents and how Qualcomm marks those patents 11 on its products? 12 A. Yes. On the integrated circuits there's 13 usually a document that shows which patents are -- or 14 which patents are -- that -- for one particular IC, 15 which patents are associated with that IC. 16 Q. And based upon your review of this 17 information, do you believe that all of the accused 18 products infringe each of the asserted claims? 19 A. I do. McKool v1 24

84 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 26 of 30 PageID Q. Okay. Now, Mr. Hummel asked you whether 21 you had -- I think it was phrased, whether you had 22 personally done all of the accused products. Do you 23 recall that? 24 A. Yes. 25 Q. Did you understand his question to be referring to whether you had a reverse engineering 2 report from UBM TechInsights for each of those 3 products? 4 MR. HUMMEL: Object to the form. 5 A. No, I did not. 6 Q. Okay. What did you understand his question 7 to be referring to? 8 A. Had I -- had I conducted the same level 9 analysis on every IC as -- as I did for the QSC and the RTR -- there's another one. There are two. 11 I can't recall. 12 Q. Now, you have reverse engineering reports 13 for those two integrated circuits. Is that correct? 14 A. No, just the one. 15 Q. Okay. You have a reverse engineering 16 report for the QSC6270? McKool v1 25

85 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 27 of 30 PageID A. Yes. 18 Q. And based upon your review of that, you 19 believe that that product infringes? 20 A. Yes, sir. 21 Q. And then based upon your review of the 22 other publicly available information, you believe 23 that the other Qualcomm integrated circuits infringe 24 in a similar manner? 25 A. Yes, sir Q. Now, since your -- since the time of that 2 analysis and the analysis in the document which I 3 believe is Exhibit 39 that Mr. Hummel marked, but 4 didn't -- 5 A. Yes. 6 Q. -- didn't ask you about, the ParkerVision 7 claim analysis document, have you had occasion to 8 learn additional facts about Qualcomm's infringement? 9 A. Yes. 10 Q. Have you attended some of the depositions 11 in this case? 12 A. Yes, sir, I have. 13 Q. And has your participation in this case, McKool v1 26

86 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 28 of 30 PageID including attending the deposition of the Qualcomm 15 engineers, served to confirm your belief of 16 Qualcomm's infringement? 17 MR. HUMMEL: Object to the form. 18 A. Yes, sir, it has. 19 Q. Are you ready, willing, and able to come to 20 trial to testify about your personal beliefs 21 regarding Qualcomm's infringement? 22 A. I am. *** Q. Mr. Sorrells, I know it's been a long 12 couple of days and so there's something that I 13 believe you forgot in responding to Mr. Hummel's 14 question, so I'm going to try to refresh your 15 recollection. 16 Do you recall reviewing a declaration 17 from a Qualcomm engineer, Jeremy Dunworth? 18 A. I do. 19 Q. Okay. Mr. Dunworth, as a Qualcomm 20 engineer, has access to all of the Qualcomm 21 schematics for all of the Qualcomm accused products 22 in this case, does he not? 23 A. I believe so, yes. McKool v1 27

87 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 29 of 30 PageID Q. And you understand that Mr. Dunworth, in 25 his declaration, attempted to explain the differences between the QSC6270 and the other accused products in 2 this case. Do you recall that, sir? 3 A. I do recall that. 4 Q. And because Qualcomm chose to file 5 Mr. Dunworth's declaration in a publicly available 6 manner, you were able to review that declaration, 7 were you not? 8 A. I was. *** Q. Okay. Now, you have looked at a schematic 17 for the 6270? 18 A. Yes. 19 Q. Then you reviewed Mr. Dunworth, the 20 Qualcomm engineer, declaration where he endeavors to 21 explain the differences at a schematic level between 22 the 6270 and the other accused products in this case? 23 A. Yes. 24 Q. And you provided a response to that 25 declaration? 1 A. Yes. 464 McKool v1 28

88 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 30 of 30 PageID Q. And are you prepared to testify about the 3 substance of that response in this deposition and at 4 trial? 5 A. Yes. 6 Q. Is that what the document in the initial 7 disclosure says? 8 A. Yes. 9 Q. Did Mr. Hummel ask you about that at all? 10 A. No. Additional portions of Mr. Sorrells s November 30-December 1, 2012 deposition may also likewise be relevant to Mr. Sorrell s expected testimony. As indicated in ParkerVision s Amended Initial Disclosures, as well as in Mr. Sorrells s deposition, an additional summary of Mr. Sorrells s expected testimony regarding Qualcomm s infringement of the asserted claims of the patents-in-suit may be found in his September 13, 2012 declaration, ParkerVision s January 30, 2012 infringement contentions, March 2, 2012 infringement contentions, and August 27, 2012 infringement contentions, each of which are incorporated herein by reference. Mr. Sorrells may also be expected to testify about the documents exchanged between ParkerVision and Qualcomm as a part of their licensing discussions. Such documents include, but are not limited to those identified in the summary of Mr. Parker s expected testimony above. Finally, Mr. Sorrells s expected testimony will be based upon his thirty years experience designing RF circuits. Mr. Sorrells discussed his experience in his deposition. See e.g. D. Sorrells Depo. (11/30/12) at 150:12-152:16. McKool v1 29

89 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 1 of 1 PageID EXHIBIT 11 Qualcomm Incorporated has sought leave to file this document under seal

90 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 1 of 5 PageID EXHIBIT 12

91 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 2 of 5 PageID PARKERVISION, INC., v. Plaintiff, QUALCOMM INCORPORATED, UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION Defendant. QUALCOMM INCORPORATED, Case No. 3:11-cv-719-J-37TEM Counterclaim Plaintiff, v. PARKERVISION, INC., AND STERNE, KESSLER, GOLDSTEIN, & FOX PLLC, Counterclaim Defendants. SUPPLEMENTAL EXPERT REPORT OF PAUL C. BENOIT March 25, 2013 Respectfully submitted, Paul C. Benoit 1 CONFIDENTIAL ATTORNEYS EYES ONLY

92 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 3 of 5 PageID integrated circuits that contain direct conversion receiver technology which infringes one or more claims of each of the Patents-in-Suit. 60 B. Indirect Infringement 31. I understand that ParkerVision further contends that Qualcomm indirectly infringes the Patents-in-Suit by actively inducing direct infringement by its customers through designing, advertising, manufacturing and selling integrated circuits that contain the accused direct conversion receiver technology when it knew that the integrated circuits would be incorporated into cellular telephones to be imported into the United States I understand that ParkerVision contends that Qualcomm had pre-suit knowledge of the Patents-in-Suit and, at a minimum, had knowledge of the Patents-in-Suit as a result of ParkerVision filing this lawsuit. ParkerVision informed Qualcomm during the negotiations between the parties in 1999 that ParkerVision had patents pending for the energy sampling technology that was the subject of the negotiations. 62 Specifically, ParkerVision disclosed ten pending U.S. patent applications, including the application for what became the 551 Patent A press release concerning the issuance of the 551 Patent was found in the custodial files of Adam Tachner. 64 A copy of the 551 Patent was found in the custodial files of Paul Peterzell. 65 Qualcomm attorneys Sean English and Ray Hom were aware of the 551 Patent as of February Qualcomm attorneys Phil Wadsworth and Charles Brown received copies of documents protected by attorney client privilege and work product doctrine that relate to the 551 Patent. 67 Additionally, a copy of the prosecution history of the 551 Patent was found in the 60 ParkerVision s Third Amended Complaint for Patent Infringement, pg. 3; Expert Report of Paul Prucnal. 61 ParkerVision s Third Amended Complaint for Patent Infringement, pg. 3-4; Expert Report of Paul Prucnal. 62 Expert Report of Paul Prucnal at ; PV ; Deposition of Prashant Kantak at 82 (Oct. 19, 2012); see also QCPV PV Qualcomm s Supplemental Response to ParkerVision s Interrogatory No. 13, October 16, 2012; QCPV Qualcomm s Supplemental Response to ParkerVision s Interrogatory No. 13, October 16, 2012; QCPV Qualcomm s Supplemental Response to ParkerVision s Interrogatory No. 13, October 16, Qualcomm s Supplemental Response to ParkerVision s Interrogatory No. 13, October 16, CONFIDENTIAL ATTORNEYS EYES ONLY

93 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 4 of 5 PageID reasonable royalty for the use made of the invention by the infringer, together with interest and costs fixed by the court. In common usage, 35 U.S.C. 284 damages are divided into two broad categories, lost profits and a reasonable royalty. A. LOST PROFITS 135. Lost profits may be awarded for sales the patent holder can demonstrate it would have made, but for the allegedly infringing sales of the defendant. If the patent holder cannot demonstrate it would have made the defendant s sales in the absence of infringement, the patent holder is entitled to recover no less than a reasonable royalty. As of the date of this report, I have not been asked to calculate lost profit damages. B. REASONABLE ROYALTY DAMAGES 136. A reasonable royalty is defined as the amount that would have been established in a hypothetical arms-length negotiation between a willing licensor (patent owner) and a willing licensee (alleged infringer) at the time of first alleged infringement. In establishing the reasonable royalty rate in this hypothetical willing licensor/licensee negotiation, courts have established a number of factors to be considered, including those established by the Georgia Pacific 386 case (the GP Factors ). ParkerVision and Qualcomm would have assumed that the Patents-in-Suit are valid, enforceable, and would be infringed by Qualcomm unless a license was granted The reasonable royalty analysis focuses on the economic positions of ParkerVision and Qualcomm at the time of the hypothetical negotiation and the likely outcome of such negotiation given their respective bargaining positions. It is my understanding that infringement of at least one of the Patents-in-Suit by Qualcomm is alleged to have commenced in January Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp (S.D.N.Y. 1970). 387 QCPV Accused product RTR6275 was initially sold during Qualcomm s second fiscal quarter of 2006, which corresponds to calendar months January 2006 through March CONFIDENTIAL ATTORNEYS EYES ONLY

94 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 5 of 5 PageID Accordingly, the date of the hypothetical negotiation between ParkerVision and Qualcomm for use of the Patents-in-Suit is in or around January In calculating reasonable royalty damages, two determinations must generally be made: (1) the appropriate royalty base, and (2) the reasonable royalty rate. i. Royalty Base 139. Technologies are typically licensed based on either lump-sum royalty payments, running royalty payments, or some combination thereof. Lump-sum royalties are paid at the time that the technology is licensed, and are therefore based on estimates of revenue and profit that were expected to be generated from sales of the product embodying the technology at the time of negotiation. As such, lump-sum royalties tend to shift the risk of implementation, commercial success, and technological obsolescence to the licensee, whereas running royalties, which are paid periodically during the course of the licensee s use of the technology, cause the licensor to share in such risks Running royalties tend to take the form of either a percentage of revenue or an amount per unit sold of the product that embodies the licensed technology. The percentage of revenue or amount per unit paid by the licensee is referred to as the royalty rate, and the amount of revenue and number of units manufactured or sold of the product that embodies the licensed technology is referred to as the royalty base. The licensor and licensee must agree on whether the royalty base will consist of revenue, units manufactured, units sold, or some other metric. This determination is in part a function of the licensee s ability to account for both revenue and units, and to provide the licensor with such information upon payment of the royalty and upon request of the licensor In determining the royalty base that would have been agreed to between ParkerVision and Qualcomm, I have reviewed the agreements produced in connection with this matter. I have also reviewed negotiations between the parties for use of the Patents-in-Suit. Each licensing agreement proposed by Qualcomm or ParkerVision involved a running royalty. Although I am aware that the parties considered, 59 CONFIDENTIAL ATTORNEYS EYES ONLY

95 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 1 of 12 PageID EXHIBIT 13

96 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 2 of 12 PageID IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION PARKERVISION, INC., Plaintiff, v. QUALCOMM INC., Defendant. Civil Action No. 3:11-cv TEM Jury Trial Demanded OPENING EXPERT REPORT OF DR. PAUL PRUCNAL 1 McKool v6

97 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 3 of 12 PageID quarter of Qualcomm s total revenues. 395 Qualcomm designs and imports the Accused Products into the United States for use in the United States. 396 Qualcomm has provided information indicating that it has sold the Accused Products in the United States since at least Qualcomm designs and imports the Accused Products into the United States for use in the United States. 398 In my opinion, each of the Accused Products infringes at least one of the claims of the Patents-in-Suit Doctrine of Equivalents In my opinion, the claim elements of the Patents-in-Suit are met literally as explained in the Appendices; however, to the extent they are not met literally, they are met under the doctrine of equivalents, as discussed above in section Each of the Accused Products contains elements or performs steps corresponding to each and every requirement of the claim that is equivalent to, if not literally met by, the Accused Products. A person having ordinary skill in the art would have considered any differences between the invention taught in the Patents-in-Suit and the Accused Products to be insubstantial or would have found that the structure or action: (1) performs substantially the same function and (2) works in substantially the same way (3) to achieve substantially the same result as the requirement of the claim. A person having ordinary skill in the art at the time of Qualcomm s infringement would have known of these differences in structure. 395 Eric Nee,, Qualcomm Hits The Big Time Pushing a little-known digital cellular technology from surf's-up San Diego, this $4-billion-a-year hotshot wants to be THE NEXT INTEL, FORTUNE, May 15, 2000, available at Qualcomm s Resp. to ParkerVision s Interrog. No. 16 n Qualcomm s Resp. to ParkerVision s Interrog. Nos. 1, 16, Qualcomm s Resp. to ParkerVision s Interrog. No. 16 n McKool v6

98 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 4 of 12 PageID APPENDIX C CLAIM CHART SHOWING INFRINGEMENT OF THE 845 PATENT BY QUALCOMM S RADIO FREQUENCY RECEIVER DESIGN ARCHITECTURES AND QUALCOMM S QSC6270 INTEGRATED CIRCUIT McKool v1

99 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 5 of 12 PageID A system for downconverting an electromagnetic signal comprising: McKool v1 Page 126 of 158

100 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 6 of 12 PageID wherein a second control signal pulse of said second control signal occurs 1.5 cycles of a frequency of said input signal after the occurrence of a first control signal pulse of said first control signal. McKool v1 Page 140 of 158

101 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 7 of 12 PageID The system of claim 13, further comprising: a third finite time integrating module that receives said input signal, wherein said third finite time integrating module down-converts said input signal according to a third control signal and outputs a down-converted quadrature-phase signal McKool v1 Page 141 of 158

102 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 8 of 12 PageID APPENDIX D CLAIM CHART SHOWING INFRINGEMENT OF THE 342 PATENT BY QUALCOMM S RADIO FREQUENCY RECEIVER DESIGN ARCHITECTURES AND QUALCOMM S QSC6270 INTEGRATED CIRCUIT

103 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 9 of 12 PageID The method of claim 18, wherein the first capacitor discharges between six percent to fifty percent of the total charge stored therein during a period of time that the first switching device is open, and wherein the second capacitor discharges between six percent to fifty percent of the total charge stored therein during a period of time that the second McKool v1 Page 186

104 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 10 of 12 PageID switching device is open. 20. The method of claim 18, wherein the first capacitor discharges between ten percent to twenty-five percent of the total charge stored therein during a period of time that the first switching device is open, and wherein the second capacitor discharges between ten percent to twenty-five percent of the McKool v1 Page 187

105 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 11 of 12 PageID total charge stored therein during a period of time that the second switching device is open. 21. The method of claim 18, wherein the first capacitor discharges between fifteen percent to thirty percent of the total charge stored therein during a period of time that the first switching device is open, and wherein the second capacitor McKool v1 Page 188

106 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 12 of 12 PageID discharges between fifteen percent to thirty percent of the total charge stored therein during a period of time that the second switching device is open. 22. The method of claim 18, further McKool v1 Page 189

107 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 1 of 5 PageID EXHIBIT 14

108 Case 3:11-cv RBD-TEM Document Filed 08/29/13 Page 2 of 5 PageID In The Matter Of: CONFIDENTIAL