Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 1 of 28 PageID 1290

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1 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 1 of 28 PageID 1290 PARKERVISION, INC., v. Plaintiff. QUALCOMM INCORPORATED, IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION CASE NO.: 3:11-CV-719-J-37-TEM Defendant. / QUALCOMM INCORPORATED, v. Counterclaim Plaintiff, PARKERVISION, INC, AND STERNE, KESSLER, GOLDSTEIN & FOX PLLC, Counterclaim Defendants. / COUNTERCLAIM-DEFENDANT, STERNE, KESSLER, GOLDSTEIN & FOX PLLC S MOTION TO DISMISS WITH PREJUDICE OR TO STRIKE PORTIONS OF QUALCOMM S COUNTERCLAIM AND DEMAND FOR JURY TRIAL OR, IN THE ALTERNATIVE, MOTION TO ABATE QUALCOMM S COUNTERCLAIM AND DEMAND FOR JURY TRIAL Counterclaim-Defendant, Sterne, Kessler, Goldstein & Fox PLLC ( SKGF ), moves to dismiss Counterclaim-Plaintiff, Qualcomm Incorporated s ( Qualcomm ), Counterclaim and Demand for Jury Trial [D.E. 91] with prejudice, pursuant to Rules 12(b)(6) and 10(b) of the Federal Rules of Civil Procedure or to strike portions of its counterclaim, pursuant to Rule 12(f), or in the alternative to abate Qualcomm s claims, and states as follows in support:

2 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 2 of 28 PageID 1291 I. Introduction and Background This case originated when ParkerVision, Inc. ( ParkerVision ) filed a complaint for patent infringement against Qualcomm for allegedly stealing technology for which Qualcomm would have otherwise been made to pay billons to ParkerVision. SKGF did not prepare or file the complaint and has never represented ParkerVision in this action, but it did prosecute the patents ( Patents-in-Suit ) before the Patent and Trademark Office ( PTO ) nearly a decade ago. In response to the complaint, Qualcomm filed an aggressive counterclaim against ParkerVision seeking to declare the Patents-in-Suit invalid for having been procured through inequitable conduct. In doing so, Qualcomm launched the atomic bomb of patent law, so called because unlike validity defenses, which are claim specific.inequitable conduct regarding any single claim renders the entire patent unenforceable. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1288 (Fed. Cir. 2011)(internal citations omitted). But Qualcomm did not stop there; it unleashed a nuclear arsenal against its counsel, SKGF, as well. Qualcomm accuses SKGF committing fraud on the PTO to aid ParkerVision in obtaining the Patents-in-Suit years earlier and claims, based solely on reckless inferences that ignore the undisputed record here, that SKGF breached its fiduciary duties and an agreement with Qualcomm when it allegedly represented ParkerVision in this litigation. In doing so, Qualcomm has taken the plague of inequitable conduct to a new low. Id. at ( [T]he habit of charging inequitable conduct in almost every major patent case has become an absolute plague. Reputable lawyers seem to feel compelled to make the charge 2

3 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 3 of 28 PageID 1292 against other reputable lawyers on the slenderest of grounds to represent their client s interests, perhaps. )(internal citations omitted). But Qualcomm s third attempt at a counterclaim 1 fails miserably as a nuclear weapon and is much more akin to a scud. Qualcomm does not plead enough factual matter to make its claims plausible on [their] face. Its claims are based on guesswork, reckless inferences and, in some cases, allegations that it knows are false. Having again failed to state claims for breach of fiduciary duty and breach of contract against SKGF, Qualcomm s Second Amended Counterclaim should be dismissed with prejudice. II. Argument A. A claim is appropriately dismissed if the factual allegations do not render it plausible on its face. Federal Rule of Civil Procedure 8(a)(2) requires a short and plain statement of the claim showing that the pleader is entitled to relief. Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct (2007) (citation omitted). [D]etailed factual allegations are not required, but the Rule does call for sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face as opposed to a claim that is merely possible. Ashcroft v. Iqbal, 556 U.S. 662, 674, 129 S.Ct (2009)(quoting Id. at 570). A claim is facially plausible when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged. Id. at 674 (emphasis added). Where a pleading contains facts that are merely consistent with a defendant s liability, it stops short of the line between possibility and plausibility of 1 Qualcomm s Answer to ParkerVision s First Amended Complaint and Qualcomm s Counterclaim and Demand for Jury Trial [D.E. 91] is referred to as the Second Amended Counterclaim and [S.A.C. _ ]. 3

4 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 4 of 28 PageID 1293 entitlement to relief. Id. (quoting Twombly, 550 U.S. at 557). In other words, plausibility requires facts consistent with liability plus something to tip the scales. Human Genome Sciences, Inc. v. Genetech, Inc., No.2:11-cv-6519-MRP, 2011 WL , at *3 (C.D. Cal. Dec. 9, 2011)(interpreting Iqbal, 556 U.S. at 674). The analysis at the pleading stage is two-fold. A court considering a motion to dismiss may begin by identifying allegations that, because they are mere conclusions, are not entitled to the assumption of truth. Id. at 675. If any factual allegations remain, a court may assume their veracity but it need not draw unsupported inferences or accept unwarranted deductions of fact as true. See Cooper v. Centric Group, LLC, No. 3:10CV849J32MCR, 2011 WL , at *1-2 (M.D. Fla. April 11, 2011). Where the well-pled facts do not permit a court to infer more than the mere possibility of misconduct, the [counterclaim] has alleged but it has not shown that the pleader is entitled to relief and dismissal is warranted. Iqbal, 556 U.S. at 675 (citing Fed. R. Civ. P. 8(a)(2)). B. Qualcomm s breach of fiduciary duty claim against SKGF must be dismissed for failure to state a claim because Qualcomm has failed to sufficiently allege (1) a breach of duty, (2) causation, and (3) resulting damages. The type of claim asserted in Count IX is equivalent to a legal malpractice claim. See Resolution Trust Corp. v. Holland & Knight, 832 F.Supp. 1528, 1531 (S.D. Fla. 1993). In a legal malpractice claim, whether based on breach of fiduciary duty or negligence, the plaintiff must allege and prove that the lawyer breached a duty and that the breach is the proximate cause of particular damage suffered by the plaintiff. See Bankers Trust Reality, Inc. v. Kluger, 672 So. 2d 897, (Fla. 3d DCA 1996)(dismissing counts for legal malpractice and breach of fiduciary duty because complaint failed to allege damages and a 4

5 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 5 of 28 PageID 1294 causal connection to the alleged breaches of duty); Herbin v. Hoeffel, 806 A.2d 186, 196 (D.C. App. 2002) (dismissing count for legal malpractice amounting to a breach of fiduciary duty, based on revealing client confidences, because plaintiff failed to allege facts supporting causation and injury)(applying the more lenient, and now discarded, no set of facts standard under Rule 12(b)(6)). 2 Qualcomm has failed to sufficiently allege facts that plausibly support each of breach, proximate cause, and damages. 1. Qualcomm s allegations do not plausibly support its claims of breach. Qualcomm s allegations of breach of duty by SKGF rest entirely on reckless inferences and unwarranted deductions. Qualcomm claims that SKGF breached its fiduciary duty of loyalty in two ways: (1) by [improperly] providing legal counsel to ParkerVision in preparing to file this action [S.A.C. 172]; and (2) when one of its partners, Robert Sterne, participated in and failed to recuse himself from ParkerVision board discussions concerning the initiation of the present litigation against Qualcomm [S.A.C. 173]. Qualcomm alleges no facts to plausibly support these conclusions. Instead, its claim rests on conclusory allegations or negative inferences improperly drawn from neutral facts one stacked atop another to infer that the alleged breaches occurred. These inferences are not entitled to a presumption of truth. See Iqbal, 556 U.S. at 675 (determining that [t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements do not suffice to state a claim and should be rejected). 2 SKGF is an intellectual property law firm headquartered in Washington D.C. [S.A.C. 3]. Qualcomm is headquartered in California. [S.A.C. 1] Although there may ultimately be a choice-of-law issue in this case, it appears unnecessary for the Court to make a choice-of-law determination at this stage because Florida law, D.C. law, and California law on these issues do not appear to be materially different. 5

6 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 6 of 28 PageID 1295 The factual allegations pled to support Qualcomm s claim that these purported breaches occurred are limited to the following: (1) Qualcomm retained SKGF in 2010 to work on six matters, two of which were ongoing at the time this suit was filed, [S.A.C. 145 & 148] 3 ; (2) [SKGF] has also served ParkerVision as its patent counsel for many years, including as prosecution counsel for the Patents-in-Suit, [S.A.C. 136; see also S.A.C. 149]; (3) [o]ne of [SKGF s] founding partners, Robert Sterne, served as a member of ParkerVision s board from 2000 to 2003, and then again from 2006 to the present [S.A.C. 137]; (4) ParkerVision paid [SKGF] more than $15,000,000 in legal fees during the period from 1999 to 2010 [S.A.C. 138]; (5) SKGF attorneys were also compensated with options to purchase ParkerVision Stock and Robert Sterne himself accumulated over 200,000 ParkerVision stock options [S.A.C. 139]; (6) [d]uring a conference call with investment analysts, the day after the filing of the Complaint, Jeffrey Parker, ParkerVision s CEO, stated that when ParkerVision discovered Qualcomm s infringement they took the information to [their] legal counselors immediately and that those counselors helped walk [ParkerVision] through the process of verification [S.A.C. 150](emphasis added); (7) during the same call, Jeffrey Parker stated that [SKGF] started from day one analyzing the core invention [s]o, they ve been very involved in the creation and prosecution of the patent and they will continue to be [S.A.C. 152](emphasis added); (8) that at the time those statements were made, ParkerVision s website identified [SKGF] as the company s Patent Counsel [S.A.C. 151], and (9) that, although, SKGF responded to Qualcomm s pre- 3 For each of those matters, Qualcomm further alleges that it executed an engagement letter prepared by [SKGF] (together, the 2010 Engagement Letters ) and that those letters waived only certain conflicts of interest, none of which would apply here. [S.A.C ]. Because this allegation is conclusory, it is not identified in this section. Nonetheless, as discussed infra, the 2010 Engagement Letters are an integral part of Qualcomm s claims. 6

7 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 7 of 28 PageID 1296 counterclaim inquiries stating that [SKGF] will not enter its appearance or otherwise act as counsel for ParkerVision in the pending Florida matter or any related litigation and will not advise ParkerVision or its litigation counsel regarding the Florida matter or any other litigation with Qualcomm, that SKGF s response was silent as to whether SKGF helped prepare this action against Qualcomm, and whether Robert Sterne had recused himself from any ParkerVision board discussions concerning the initiation of this action. [S.A.C ]. But these factual allegations, even if taken as true, do not support a plausible or even a possible basis for liability. The first five facts are purely neutral. And these facts that SKGF represented ParkerVision for a number of years, that it prosecuted the Patents-in-Suit, that ParkerVision paid SKGF for that work, and that SKGF s founding partner has served as a ParkerVision board member and owns ParkerVision stock suggest absolutely no wrongdoing whatsoever. As Qualcomm admits in paragraph 168 of its Second Amended Counterclaim, it is inferring that SKGF committed the purported breaches based solely on (a) Mr. Parker s comments at the July 21 conference call [with investors] and the inherent technical complexity of the Patents-in-Suit, which Qualcomm asserts means SKGF must have prepared the claims filed by ParkerVision s litigation counsel, who are counsel of record here; (b) SKGF s refusal to respond to all of Qualcomm s questions about whether SKGF assisted ParkerVision in preparing to file this action, which were posed by Qualcomm s counsel in a letter to SKGF after Mr. Parker s July 21, 2011 statements; and (c) SKGF s refusal to provide Qualcomm with the specifics of the services provided to ParkerVision. 7

8 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 8 of 28 PageID 1297 [S.A.C. 168; S.A.C. 166 (admitting that, at the time Qualcomm filed suit, it was only assuming that SKGF committed the alleged breaches because, according to Qualcomm, SKGF had not provided clear and unequivocal answers to the questions posed by Qualcomm s prior letters regarding the services previously provided to ParkerVision)]. The unsupported inferences that Qualcomm has chosen to draw, and bottom its third attempt to state claims against SKGF on, are nothing more than rank speculation. Twombly prohibits the accreditation of this type of unsupported conjecture. Twombly, 550 U.S. at 545 (concluding that the pleading lacked enough factual matter to raise the claim above the speculative level, stop[ping] short of the line between possibility and plausibility ). But, even if such inferences were not precluded under Twombly, Qualcomm s claims are not plausible on their face because the inferences are contradicted by other allegations in its pleading. Qualcomm relies on select statements by Mr. Parker from a July 21, 2011 conference call to suggest that SKGF improperly assisted ParkerVision in filing this litigation: 150. Q: [H]elp us here, understand the discovery process that you found these infringements were occurring. Evidently they ve been going on for a good while, how did they come to the forefront? A: Well, I can t really go into the detail of how we discovered this. That s going to come out in the lawsuit. But I am comfortable saying to you that when we discovered it, we took the information to our legal counselors immediately. They helped walk us through the process of verification and we are absolutely certain of this infringement Although Parker did not identify the legal counselors who helped ParkerVision walk through the process of verification, ParkerVision s website identified [SKGF] as the company s Patent Counsel. The website did not identify any other law firm serving that function During the July 21 conference call, another analyst asked Parker about Robert Sterne s role specifically in the decision to file this action: Could you talk about Bob Sterne s involvement in making this decision? To which Parker responded: Right. Well, [SKGF] started from day one analyzing the core invention So, they ve been 8

9 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 9 of 28 PageID 1298 very involved in the creation and prosecution of the patent and they will continue to be. [S.A.C ](emphasis added). But nowhere does Mr. Parker state that SKGF prepared the complaint in this action or that SKGF was, or even would, represent ParkerVision against Qualcomm. And Qualcomm conveniently ignores other statements by Mr. Parker on the same call that explain that, while SKGF prosecuted the patents in suit at the PTO years earlier, other legal experts had been and would be called upon to litigate this infringement action on behalf of ParkerVision not Mr. Sterne or any other SKGF attorney. See Exhibit A, a copy of the transcript of the July 21, 2011 special conference call held by ParkerVision, at p And despite Qualcomm s baseless, self-serving inferences to the contrary, SKGF did respond to its pre-counterclaim inquiries regarding SKGF s representation of ParkerVision in this litigation. Qualcomm even admits in paragraphs 155 and 165 that SKGF explicitly advised it that SKGF is not representing ParkerVision with respect to the patent infringement claims against Qualcomm, nor regarding ParkerVision s defense of the counterclaim Qualcomm filed against ParkerVision and that SKGF would not enter its appearance or otherwise act as counsel for ParkerVision in the pending Florida matter or advise ParkerVision or its litigation counsel regarding the Florida matter or any other litigation with Qualcomm [S.A.C. 155 & 165]. These unambiguous representations were affirmed at the Hearing on Qualcomm s Motion for Preliminary Injunction (hereinafter Hearing and 4 As recited infra, Qualcomm references and draws (unsupported) inferences from the July 21, 2011 special conference call in its Second Amended Counterclaim ( ), but Qualcomm failed to attach it as an exhibit despite its apparent importance and centrality to its claims. The Court is entitled to take notice of the full contents of the published transcripts referenced in the Second Amended Counterclaim, from which the truncated quotations were taken. See Twombly, 550 U.S. at 568, n. 13 (citing Fed. R. Evid. 201). 9

10 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 10 of 28 PageID 1299 Tran. ) by counsel for SKGF and counsel for ParkerVision. See Tran. 25:13-26:19 (SKGF s counsel affirmed that [SKGF] did nothing with respect to preparing the complaint, drafting the complaint, putting the complaint together, and since the lawsuit was filed have done absolutely nothing to advance the cause of ParkerVision ); 28:5-29:15; 36:11-37:13 ( ParkerVision has not received any confidential information from [SKGF] and [SKGF] will not represent ParkerVision in this litigation ). Further, any supposed failure to unequivocally respond, in Qualcomm s opinion, to it s accusations concerning the specifics of services SKGF provided to ParkerVision does not give rise to a plausible claim that SKGF breached a fiduciary duty owed to Qualcomm. SKGF s refusal to provide further details in this regard is logically and more definitely explained by its ethical obligations and the fiduciary duties owed to its other client, ParkerVision. SKGF has no right to reveal one client s confidences to another client when the other client simply demands it, and SKGF cannot tell one client whether it did, or did not, provide advice to another client on any matter. 5 Such neutral and entirely proper conduct in refusing to respond to Qualcomm s demands cannot supply an inference sufficient to breathe life into its factually deficient claim. See Iqbal, 556 U.S. at 676 (concluding that Iqbal s factual allegations, although consistent with defendants liability, were not sufficient to nudge his claims across the line from conceivable to plausible given more likely 5 Qualcomm certainly understands this basic tenet of the attorney-client relationship, despite its contentions to the contrary. Qualcomm insisted that the attached 2010 Engagement Letter at Exhibit B be redacted to delete references to the subject matter of its representation because that information is a protected client confidence. Yet, Qualcomm contends here that SKGF s refusal to provide similar details to Qualcomm of ParkerVision s engagement of SKGF renders plausible its claim that SKGF improperly represented ParkerVision in preparing to file this litigation. Qualcomm should not be permitted to have it both ways. Just as SKGF agreed to redact those portions of the 2010 Engagement Letters reciting the details of its representation of Qualcomm, SKGF has not disclosed the subject matter of the services it provided to ParkerVision because it, too, is protected by SKGF s duty of confidentiality. 10

11 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 11 of 28 PageID 1300 explanations for defendants actions); Twombly, 550 U.S. at (acknowledging that certain conduct was consistent with illegality, the Court nevertheless concluded that the allegations did not plausibly suggest liability because they were not only compatible with, but indeed were likely explained by lawful, independent behavior)(emphasis added). Similarly, Qualcomm fails to allege a single fact that reasonably supports its accusation that Robert Sterne participated in and failed to recuse himself from ParkerVision board discussions concerning the initiation of [this litigation]. [S.A.C. 173]. The only reasonable inferences that can be drawn from Qualcomm s allegations are that (1) Mr. Sterne is a current board member and (2) that he has accumulated ParkerVision stock. These inferences are facially insufficient to support the claimed breach. But even more damning to Qualcomm s claim is that this purported breach is also directly contradicted by the record a record that Qualcomm had prior to filing both its second and third installments of this claim, but chose to ignore. In his affidavit, filed on November 30, 2011 in support of SKGF s Opposition to Qualcomm s Motion for Preliminary Injunction [D.E , hereinafter Sterne Aff. ], Mr. Sterne declared, under the penalty of perjury, that he recused himself and did not participate in the decision of ParkerVision s board to initiate this [l]itigation against Qualcomm. 6 Sterne Aff. at 5. Mr. Sterne s sworn affirmations confirmed the representations of SKGF in its motion to dismiss Qualcomm s original counterclaim filed over four months ago. And, more than that, Qualcomm admits that, prior to filing the original counterclaim, SKGF had not yet responded 6 Given Mr. Sterne s affidavit and Qualcomm s failure to allege any facts in its third counterclaim to support this supposed breach, it is questionable that counsel for Qualcomm discharged his Rule 11 obligation in filing that pleading. 11

12 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 12 of 28 PageID 1301 to Qualcomm s demand for it to know whether Mr. Sterne had recused himself. So, what then, is the basis for Qualcomm s claim? Qualcomm may argue that even if it now knows that SKGF is not currently representing ParkerVision in this litigation, it was and is entitled to rely on the only information it had available at the time it filed its claims Mr. Parker s statements on the July 21, 2011 analyst call and SKGF s failure to provide Qualcomm with the details of the services provided to ParkerVision to conclude that SKGF improperly provided legal counsel to ParkerVision in preparing to file this action. [S.A.C. 172]. But as demonstrated above, this type of rank speculation cannot support a plausible claim, and the sheer fact that Qualcomm may have lacked sufficient information to state a claim does not excuse its counsel s Rule 11 obligations. See, e.g., Twombly, 550 U.S. at 555 (quoting 5 C. Wright & A. Miller, Federal Practice and Procedure 1216, pp (3d ed. 2004) and stating that [t]he pleading must contain something more than a statement of facts that merely creates a suspicion [of] a legally cognizable right of action ). But, most significantly, even if Qualcomm was permitted to assume that SKGF assisted ParkerVision in conducting [an] infringement analysis, Qualcomm alleges no facts that show that SKGF s conduct was not permitted by the 2010 Engagement Letters. 7 [S.A.C. 167]. And it cannot. The supposed misconduct providing a patent analysis and/or opinion on infringement is expressly permitted by the consent provided SKGF in 7 Qualcomm contended in its prior opposition that it is not required to allege in its counterclaim facts to contradict an affirmative defense that SKGF might assert i.e., that SKGF s representation of ParkerVision in connection with this action is permitted by certain engagement letters executed in [D.E. 75 at 13]. But even if consent were an affirmative defense, it appears on the face of the Second Amended Counterclaim and may be properly considered now. Haddad v. Dudek, 784 F.Supp.2d 1308, (M.D. Fla. 2011)(affirmative defense properly considered when existence of defense can be judged from face of complaint, and stating that, in so considering, court may refer to papers attached to motion to dismiss). 12

13 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 13 of 28 PageID 1302 those letters. See Exhibit B, an example of the 2010 Engagement Letters (redacted per Qualcomm s request). 8 In is pleading, Qualcomm makes the straw man claim that while requesting waivers of certain types of conflicts of interest, [the 2010 Engagement Letters] did not call upon Qualcomm to waive the conflict of interest that would arise if [SKGF] represented another client in litigation against Qualcomm while Qualcomm was a current client of [SKGF]. [S.A.C. 146 (quoting not quite accurately language from the 2010 Engagement Letters providing [SKGF] understands that this consent does not extend to concurrent representation of clients adverse to Qualcomm in a litigation concurrent with the firm s representation of Qualcomm. )(emphasis added)]. But Qualcomm does not attach any of the 2010 Engagement Letters to its pleading, nor does it quote the entirety of the consent provision. A fair reading of the entire agreement demonstrates the full scope of the consent provided to SKGF. See Ex. B. And while the consent provision does have its express limits that is, SKGF could not have concurrently represented another client adverse to Qualcomm in a litigation at the same time it was representing Qualcomm the 2010 Engagement Letters expressly permit SKGF to be adverse to Qualcomm in a variety of other disputes and transactions, including patent analysis and opinions which, by definition, would include SKGF analyzing the patents held by another client and advising that client whether Qualcomm s products infringed its patent. As such, and because, as demonstrated supra, Qualcomm has failed to allege any facts supporting its contention that SKGF was (or is) 8 Because the 2010 Engagement Letters are central to Qualcomm s claims, are enforceable, and their authenticity is not in dispute, the Court may properly consider them in ruling on SKGF s Motion to Dismiss. See SFM Holdings, Ltd. v. Banc of America Sec., LLC, 600 F.3d 1334 (11th Cir. 2010)(determining that the district court properly considered extrinsic relationship-forming agreements that were referenced in plaintiff s pleading on defendant s motion to dismiss). 13

14 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 14 of 28 PageID 1303 representing ParkerVision in [this] litigation, and has failed to show that any other alleged conduct would not be permitted under the 2010 Engagement Letters upon which it relies, Qualcomm s claim is not plausible and should be dismissed. 2. Because Qualcomm has not pled sufficient facts to support a reasonable inference that SKGF s alleged breaches are the cause of each of its alleged injuries, Qualcomm s claim is not plausible and should be dismissed. Qualcomm s allegations do not plausibly support causation and injury sufficient to withstand a motion to dismiss. To establish proximate cause, the plaintiff must show that but for the lawyer s breach of duty, the plaintiff would not have suffered the particular damages claimed. See Kirkland & Ellis v. CMI Corp., No. 95C7457, 1996 WL , at *10 (N.D.Ill. Sept. 30, 1996) (dismissing breach of fiduciary duty claim because plaintiff could not show proximate causation, i.e., that but for the lawyers alleged conduct, plaintiff would not have incurred the alleged damages); Olmstead v. Emmanuel, 783 So. 2d 1122, 1125 and 1128 (Fla. 1st DCA 2001) (dismissing legal malpractice claim with prejudice because plaintiff could not establish that, but for the lawyer s negligence, the plaintiff would have prevailed on the underlying claim). And to properly plead damages, the plaintiff must allege that he has suffered an actual injury stemming from the lawyer s alleged misconduct. See Loftin v. KPMG LLP, No CIV, 2003 WL , at *7-8 (S.D. Fla. Sept. 10, 2003)(applying the obsolete no set of facts standard); Sentinel Products Corp. v. Platt, No. CIVA GAO, 2002 WL , at *2 (D. Mass. July 22, 2002) (to sue attorney for breach of fiduciary duty, the client must be able to prove that the breach caused him some specific harm)(emphasis added)(emphasis added); Bankers Trust Reality, Inc., 672 So. 2d at ; Herbin, 806 A.2d at

15 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 15 of 28 PageID 1304 Qualcomm has wholly failed to allege but for causation. Nor has it adequately pled an actual injury resulting from SKGF s alleged breaches. Qualcomm alleges that SKGF breached its fiduciary duty of loyalty to Qualcomm in two specific ways: (1) by [improperly] providing legal counsel to ParkerVision in preparing to file this action [S.A.C. 172] and (2) when one of its partners, Robert Sterne, participated in and failed to recuse himself from ParkerVision board discussions concerning the initiation of the present litigation against Qualcomm [S.A.C. 173]. Qualcomm claims that it has been damaged as a result of these two alleged breaches in three ways: (1) by being required to defend against [ParkerVision s infringement] lawsuit [S.A.C. 174]; (2) by losing the value of the opinion work that [SKGF] performed on the two matters that were still ongoing at the time the Complaint was filed [S.A.C. 175], and (3) through the payment of fees to [SKGF] during the period when [SKGF] was assisting ParkerVision in its action against Qualcomm [S.A.C. 176]. a. Causation. Qualcomm has not alleged that, but for SKGF s conduct in allegedly helping ParkerVision prepare to file this litigation and purportedly allowing an SKGF partner to participate in ParkerVision board discussions about filing suit Qualcomm would not have suffered the alleged harm of being required to defend itself in the underlying litigation. Specifically, nowhere has Qualcomm alleged that but for these alleged breaches, ParkerVision would not have filed suit to protect its patents from infringement. SKGF did not file the infringement suit on behalf of ParkerVision. The infringement action was instituted by Smith, Hulsey & Busey and Allen, Dyer, Doppelt, Milbrath & 15

16 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 16 of 28 PageID 1305 Gilchrist, P.A. ( Allen Dyer ), ParkerVision s litigation counsel that filed the Complaint for Patent Infringement [D.E. 1]. Ava K. Doppelt, Esq. and Brian R. Gilchrist, Esq., the Allen Dyer attorneys who appeared as counsel of record for ParkerVision here, are both Board Certified by the Florida Bar in intellectual property law. Likewise, McKool Smith, P.C., ParkerVision s lead trial counsel in this action, filed the First Amended Complaint [D.E. 60] against Qualcomm, not SKGF. Qualcomm has no good faith basis to believe that these firms failed to discharge their duties to independently evaluate ParkerVision s claims and determine that ParkerVision had a good faith basis to sue Qualcomm for patent infringement prior to filing its pleadings. Fed. R. Civ. P. 11. This was true when Qualcomm filed its original counterclaim and has been made all the more clear since then, calling into question Qualcomm s Rule 11 basis to continue to make such an allegation in its third rendition of its counterclaim. At the Hearing, counsel for ParkerVision advised the Court and Qualcomm that [his] firm [McKool Smith, P.C.] did an independent evaluation of the patents and of the assertion against Qualcomm and that, in the course of that evaluation, it did not speak on any substantive basis to any lawyer of [SKGF], nor did [it] review any materials prepared by [SKGF]. Trans. 36:22-37:4. Thus, it is impossible for Qualcomm to continue to allege that it would not have been sued for infringement but for SKGF s alleged improper pre-litigation conduct. See Sentinel, 2002 WL at *4 (finding that causation was not established where plaintiff did not demonstrate that result would have been different if it had been represented by a different, conflict-free attorney). Furthermore, Qualcomm does not and cannot allege that but for Mr. Sterne s alleged participation in ParkerVision s board discussions, that ParkerVision would not have 16

17 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 17 of 28 PageID 1306 filed the infringement suit. No where does Qualcomm allege that Mr. Sterne was the sole impetus for the infringement action, or that the numerous other ParkerVision board members would not have voted to protect ParkerVision s patent rights absent Mr. Sterne s alleged participation in those discussions. Thus, even if Qualcomm s meritless and wholly unsupported accusation that Mr. Sterne participated in and failed to recuse himself from ParkerVision board discussions [S.A.C. 173] constituted a plausible breach, Qualcomm s claim separately fails for its inability to plead causation. Similarly, Qualcomm cannot allege that, but for SKGF purportedly assisting ParkerVision in filing this action, and but for Mr. Sterne s supposed involvement in ParkerVision s board meetings, Qualcomm would not have lost the value of the opinion work SKGF was performing for Qualcomm. It was not SKGF s or Mr. Sterne s conduct that caused SKGF to withdraw from any ongoing opinion work; it was Qualcomm s action in alleging that, among other things, SKGF committed fraud on the PTO that precipitated SKGF s withdrawal. These types of allegations by a client against its lawyers create a conflict of interest requiring withdrawal. See D.C. R. Prof l Conduct, Rules 1.16(a) and 1.7(b)(4) & (d); Fla. R. Prof l Conduct, Rules (a) and 4-1.7(a). Indeed, irrespective of whether SKGF committed the purported breaches and even if Qualcomm had not sued SKGF for breach of fiduciary duty or breach of contract, SKGF s withdrawal would have been mandated under the applicable rules given Qualcomm s accusations of SKGF s fraud on the PTO. See Therasense, Inc, 649 F.3d at 1288 (explaining the serious nature and ruinous consequences of the charge of inequitable conduct against a prosecuting patent attorney). 17

18 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 18 of 28 PageID 1307 Accordingly, it cannot be said that but for SKGF s alleged breaches, Qualcomm would not have been harmed by losing the value of the opinion work at the time SKGF withdrew. b. Damages. Qualcomm has also failed to sufficiently allege damages stemming from SKGF s or Mr. Sterne s alleged misconduct. Even if the Court were to conclude that Qualcomm s factual allegations supported the claimed breaches, Qualcomm s contention that it has been damaged by having to defend the infringement suit is insufficient and premature because, until there is a resolution of the infringement claims, it is impossible to say that Qualcomm actually suffered any damage as a result of those breaches. See, e.g., Loftin, 2003 WL , at *7-8; Kirkland & Ellis, 1996 WL , at *9 (in suit alleging that lawyers malpractice and breach of fiduciary duty in client s underlying infringement suit caused client to suffer damages in form of lost judgments and lost settlement proceeds, the court found that the entire issue of damages was mooted by the later invalidation of client s patents through no fault of the lawyers). If Qualcomm is ultimately found liable for infringing the patents at issue, Qualcomm cannot claim that it has been damaged by having to defend the infringement suit. Thus, until the patent infringement claims are resolved, Qualcomm s claim is speculative and too remote to state a claim for breach of fiduciary duty. Likewise, Qualcomm s claim that it lost the value of SKGF s opinion work because it will need to retain replacement counsel to complete, or possibly restart, the opinion work left unfinished by SKGF [S.A.C. 185] is premature and speculative. [S]peculative harm or the risk of future harm not yet realized does not suffice to establish a cause of action for malpractice. Alhino v. Starr, 112 Cal.App.3d 158, (Cal. App. 1980); see also 18

19 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 19 of 28 PageID 1308 Hold v. Manzini, 736 So. 2d 138, 142 (Fla. 3d DCA 1999). Qualcomm has failed to allege any facts that would show that Qualcomm did not receive fair value from the work performed by SKGF, or that replacement counsel will need to correct or redo any work SKGF performed, or, for that matter, that it has incurred any fees or costs in actually retaining replacement counsel. The mere fact that SKGF withdrew from its representation of Qualcomm does not support the conclusion that Qualcomm has been damaged or that it lost the value of SKGF s earlier legal work. If lost value could be presumed whenever a lawyer withdrew or was fired from a matter, even in the absence of malpractice, the client would always have a claim for damages against the lawyer. That is not the law. Finally, there is no factual support in Count IX to render plausible Qualcomm s claim that it was injured through the payment of fees to [SKGF] during the period when [SKGF] was assisting ParkerVision in its action against Qualcomm. [S.A.C. 176]. Qualcomm s conclusory contention upon which this claim is based that it need not show damages, but only that SKGF received Qualcomm s payments for legal fees during the period of improper concurrent representation [D.E.75 at 14] presumes, but misses the point. Even if, as Qualcomm alleges, it does not need to demonstrate actual monetary harm incurred as a result of SKGF s alleged misconduct, Qualcomm does need to show that SKGF breached a fiduciary duty before it is entitled to pursue an equitable claim for disgorgement. To hold otherwise would credit an unadorned, the-defendant-unlawfully-harmed-me-accusation that Twombly and Iqbal teach is insufficient to state a claim under Rule 8. See Iqbal, 556 U.S. at 677 (internal citations omitted). As discussed in Section B.1., above, Qualcomm has 19

20 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 20 of 28 PageID 1309 failed to plausibly establish that SKGF committed the alleged breaches. Accordingly, Count IX must be dismissed. C. Qualcomm s breach of fiduciary duty claim against SKGF must be dismissed because it improperly commingles claims for compensatory damages and disgorgement, which require different elements of proof. In addition to failing to sufficiently allege the elements of breach of fiduciary duty required to recover compensatory damages, Qualcomm has improperly commingled that claim with its claim for equitable disgorgement of attorney s fees in Count IX, in violation of Rule 10(b), Federal Rules of Civil Procedure. For clarity, Rule 10(b) requires that each claim must be stated in a separate count. The Court may dismiss claims that are improperly combined in one count. See Perez v. Radioshack Corp., 2002 WL , * 2 (S.D. Fla. April 23, 2002)(dismissing counts which combined various theories of recovery that required different elements of proof and different defenses)(applying obsolete no set of facts standard); Hughes v. American Tripoli, Inc., No. 2:04CV485FTM29DNF, 2006 WL , at *2 (M.D. Fla. May 30, 2006)(applying obsolete no set of facts standard). Although a request for equitable relief can sometimes be made in the same count as a request for compensatory damages, the requests cannot be properly combined into a single count here because a claim for a lawyer s breach of fiduciary duty seeking compensatory damages requires different elements of proof and different defenses than a claim for disgorgement of attorney s fees. To succeed on the former claim, the plaintiff must allege and prove that the lawyer breached a duty, and that the breach is the proximate cause of the particular damage suffered by the plaintiff. See Bankers Trust Reality, Inc., 672 So. 2d at As to the latter, disgorgement of legal fees is an equitable remedy that is available 20

21 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 21 of 28 PageID 1310 when a lawyer engages in a clear and serious violation of duty to a client. Bode & Grenier, L.L.P. v. Knight, No (RWR), 2011 WL , *6-7 (D. D.C. Sept. 20, 2011) 9 ; see also Searcy, Denney, Scarola, Barnhardt & Shipley, P.A. v. Scheller, 629 So.2d 947, (Fla. 4th DCA 1993). Although disgorgement is an extraordinary remedy, if a clear and serious violation of duty can be established, the client is not required to prove that the breach caused them actual injury. See id. Allowing Qualcomm to combine a request for disgorgement with the other alleged damages in Count IX would be particularly unfair here, where the compensatory damages are clearly precluded and the combination is an apparent and inappropriate attempt to salvage claims that SKGF showed to be meritless in its two prior motions to dismiss. [D.E 34 & 70]. Accordingly, Count X should be dismissed for improperly combining claims under Rule 10(b). D. Qualcomm s breach of contract claim against SKGF must be dismissed for failure to state a claim because Qualcomm has not sufficiently alleged (1) breach, (2) causation, and (3) resulting damages. Count XI for breach of contract against SKGF must be dismissed for the same reasons as Count IX; it fails to state a claim because Qualcomm has failed to sufficiently allege breach, causation, and damages. See Sentinel, 2002 WL , at *3-4; Vega v. T- 9 Qualcomm has contended Bode & Grenier, LLP v. Knight, No (RWR), 2011 WL , *6-7 (D. D.C. Sept. 20, 2011) does not stand for the proposition cited and actually stands for a contradictory proposition: regardless of the type of relief sought, the elements of a claim for breach of fiduciary duty are the same. [D,E, 75 at 15]. Qualcomm is wrong. To quote the opinion verbatim: In order to state a claim under District of Columbia Law for breach of fiduciary duty, the defendants must allege that: (1) defendant owed plaintiff a fiduciary duty; (2) defendant breached that duty; and (3) to the extent plaintiff seeks compensatory damages the breach proximately caused an injury. Id. at *6. And, in fact, one of the cases cited by Qualcomm, Hendry v. Pelland, 73 F.3d 397 (D.C. Cir. 1996) in its prior oppositions to SKGF s motions to dismiss makes this exact point. [See, e.g., D.E. 75 at 3 & 15, n.6]. There, the court distinguished between breach of fiduciary duty claims seeking compensatory damages and those seeking disgorgement of fees and concluded: clients suing their attorney for breach of the fiduciary duty of loyalty and seeking disgorgement of legal fees as their sole remedy need prove only that their attorney breached that duty, not that the breach caused them injury. Id. at 403. Because Qualcomm seeks compensatory damages this standard clearly does not apply. 21

22 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 22 of 28 PageID 1311 Mobile USA, Inc., 564 F.3d 1256, 1272 (11th Cir. 2009); Jia Di Feng v. See-Lee Lim, 786 F.Supp.2d 96, (D.D.C. 2011). 1. The factual allegations pled by Qualcomm do not plausibly support the claimed breaches. In Count XI, Qualcomm alleges that SKGF materially breached the January 12, 1999 letter agreement by [improperly] representing ParkerVision and participating on behalf of ParkerVision in litigation against Qualcomm [S.A.C. 188], and through SKGF s continued representation of ParkerVision and participation on behalf of ParkerVision in connection with this litigation [S.A.C. 189]. Qualcomm alleges that, in the agreement, SKGF agreed that it would not participate in litigation against Qualcomm, at least as long as SKFG continued to represent Qualcomm. [S.A.C. 143] But the purported breaches of the agreement are based entirely on the same unsupported inferences and self-serving assumptions purporting to substantiate Qualcomm s claim for breach of fiduciary duty in Count IX. As such, SKGF incorporates its arguments in Section B.1. here. 2. Because Qualcomm has not pled enough factual matter to support a reasonable inference that SKGF s supposed breaches are the cause of each of its alleged injuries, Qualcomm s claim is not plausible and should be dismissed. Qualcomm alleges the very same damages that it claims it suffered as a result of SKGF s purported breach of fiduciary duty. [Compare S.A.C and S.A.C ]. Count XI is insufficient to state a claim because, as in Count IX, Qualcomm has not sufficiently alleged that SKGF s supposed breaches representing and participating on behalf of ParkerVision in litigation against Qualcomm caused Qualcomm to suffer the alleged harm. Thus, SKGF incorporates the same arguments set forth in Section B.2. 22

23 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 23 of 28 PageID 1312 Furthermore, disgorgement is not a remedy for breach of contract. See Proudfoot Consulting Co. v. Gordon, 576 F.3d 1223, 1242 (11th Cir. 2009)(applying Florida law); Koplowitz v. Girard, 658 So. 2d 1183, 1184 (Fla. 4th DCA 1995) ( The goal of an award of damages in a breach of contract action is to restore the injured party to the condition which he would have been in had the contract been performed A party can neither receive more than it bargained for nor should it be put in a better position that it would have been in had the contract been properly performed. )(internal citations omitted here). Thus, Qualcomm s remedy of disgorgement, if any, limited to its claim for breach of fiduciary duty. Accordingly, Count XI must be dismissed for failure to state a claim because it fails to sufficiently allege breach, causation, and damages. E. Alternatively, if the Court does not dismiss Qualcomm s breach of fiduciary duty and breach of contract claims entirely, the Court should strike Qualcomm s allegations of damages that are not available as a matter of law or are unsupported by the factual allegations. If the Court declines to dismiss Counts IX and XI in their entirety, SKGF moves, in the alternative, to strike each of Qualcomm s allegations of damages that are unsupported by the factual allegations or unavailable as a matter of law pursuant to Rule 12(f), Federal Rules of Civil Procedure. The purpose of a motion to strike under Rule 12(f) is to clean up the pleadings, streamline litigation, and avoid unnecessary forays into immaterial matters. Slone v. Judd, No. 8:09CV1175T27TGW, 2009 WL , at *1 (M.D. Fla. Dec. 29, 2009) (citations omitted). Under Rule 12(f), the Court has discretion to strike impertinent or unsupported demands for damages. See id. at *1-2 (granting defendant s motion to strike certain unsupported allegations and plaintiff s demands for punitive damages and loss of 23

24 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 24 of 28 PageID 1313 companionship); Parsons v. Okaloosa County School Dist., No. 3:09CV254/WS/EMT, 2010 WL , *2-3 (N.D. Fla. March 30, 2010) (striking demand for punitive damages). In Counts IX and XI, Qualcomm alleges that it has been damaged in the following ways: (1) by being required to defend against [ParkerVision s infringement] lawsuit [S.A.C. 174 & 190]; (2) by losing the value of the opinion work that [SKGF] performed on the two matters that were still ongoing at the time the Complaint was filed [S.A.C. 175 & 191], and (3) through the payment of fees to SKGF during the period when SKGF was assisting ParkerVision in its action against Qualcomm. [S.A.C. 176 & 192; see also Prayer For Relief C and D]. For the reasons set forth in Sections B.2. and D.2, all three of Qualcomm s allegations of damage are unsupported and/or unavailable as a matter of law. But if the Court finds any of them viable, SKGF requests that the Court strike the other allegations and corresponding paragraphs of Qualcomm s Prayer for Relief. F. Alternatively, Qualcomm s claims against SKGF should be abated or stayed until the underlying patent infringement claims are resolved because its claims against SKGF have not accrued. If Qualcomm s claims against SKGF are not dismissed on the grounds set forth above, the claims should be abated until the underlying patent infringement proceeding is concluded because Qualcomm s claims against SKGF are premature. See Blumberg v. USAA Cas. Ins. Co., 790 So. 2d 1061, 1065 (Fla. 2001). A malpractice claim, like that alleged against SKGF in Count IX, accrues when the client incurs damages at the conclusion of the related or underlying judicial proceedings. Id. Redressable harm for legal malpractice cannot be established until an adverse judgment has been rendered against the client. Hold, 736 So. 2d at 142. Until that time, the claim is hypothetical and damages are speculative. Id. 24

25 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 25 of 28 PageID 1314 In this case, the underlying patent infringement suit against Qualcomm has just begun. Any purported damage to Qualcomm is purely speculative. The fact that Qualcomm is incurring attorney s fees or other expenses in defending the infringement claims is not sufficient to establish redressable harm for purposes of its claims against SKGF. See Bierman v. Miller, 639 So. 2d 627, 628 (Fla. 3d DCA 1994). Moreover, Qualcomm s claim that it has lost the value of SKGF s opinion work because it will need to retain replacement counsel to finish, or possibly restart, the opinion work is also a premature, speculative claim for potential future damages. See Hold, 736 So.2d at 142. Thus, Qualcomm s malpractice claim is premature and should be abated or stayed until the underlying infringement suit is concluded or Qualcomm can otherwise demonstrate actual redressable harm caused by SKGF. For the same reasons, Qualcomm lacks redressable damages on its breach of contract claim against SKGF, Count XI. Accordingly, Count XI is also premature and should be abated or stayed. III. Conclusion. For the foregoing reasons, SKGF respectfully requests that the Court grant its motion to dismiss with prejudice each of Qualcomm s claims against SKGF or, alternatively, grant its motion to strike Qualcomm s improper claims for damages from Counts IX and XI. Alternatively, if the claims against SKGF are not dismissed, SKGF requests that the Court abate or stay all claims against SKGF until the underlying patent infringement claims are resolved. 25

26 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 26 of 28 PageID 1315 Dated: April 6, 2012 By: /s/ David M. Wells David M. Wells Trial Counsel Florida Bar # David R. Atkinson Florida Bar # Katherine H. Underwood Florida Bar # Counsel for Sterne, Kessler, Goldstein & Fox PLLC GUNSTER, YOAKLEY & STEWART, P.A. 225 Water Street, Suite 1750 Jacksonville, FL Telephone: Facsimile: CERTIFICATE OF SERVICE (Documents filed via CM/ECF) I hereby certify that on the 6th day of April, 2012, I electronically filed the foregoing document with the Clerk of the Court using CM/ECF. I also certify that the foregoing document is being served this day on all counsel of record or pro se parties identified on the attached Service List in the manner specified, either via transmission of Notices of Electronic filing generated by CM/ECF or in some other authorized manner for those counsel or parties who are not authorized to receive electronically Notices of Electronic Filing. / s/ David M. Wells David M. Wells 26

27 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 27 of 28 PageID 1316 ELECTRONIC MAIL SERVICE LIST CASE NO.: 3:11-cv-719-J-37-TEM Counsel for Defendant, Counterclaim Plaintiff Qualcomm Incorporated John A. DeVault, III Courtney Kneece Grimm Bedell, Dittman, DeVault, Pillans & Coxe, P.A. The Bedell Building 101 East Adams Street Jacksonville, FL Phone: Facsimile: FLABAR# Keith R. Hummel David Greenwald Joseph Everett Lasher Peter A. Emmi Cravath, Swaine & Moore LLP Worldwide Plaza 825 Eighth Avenue New York, New York Phone: Fax: Christopher A. Hughes John Moehringer Robert Pollaro Cadwalader, Wickersham & Taft LLP One World Financial Center New York, New York Phone: Fax:

28 Case 3:11-cv RBD-TEM Document 99 Filed 04/06/12 Page 28 of 28 PageID 1317 Counsel for Plaintiff, Counterclaim Defendant, ParkerVision Ava K. Doppelt Brian R. Gilchrist Jeffrey Scott Boyles Allen, Dyer, Doppelt, Milbrath & Gilchrist, PA 255 S Orange Ave Ste 1401 PO BOX 3791 Orlando, FL Phone: Fax: Stephen D. Busey busey@smithhulsey.com James Arthur Bolling jbolling@smithhulsey.com Smith, Hulsey & Busey 225 Water St Ste 1800 PO BOX Jacksonville, FL Phone: Fax: T. Gordon White gwhite@mckoolsmith.com McKool Smith P.C. 300 West 6 th Street, Suite 1700 Austin, TX Phone: J. Austin Curry acurry@mckoolsmith.com Douglas Cawley dcawley@mckoolsmith.com McKool Smith, P.C. 300 Crescent Court Suite 1500 Dallas, TX Phone: Fax: JAX_ACTIVE

29 Case 3:11-cv RBD-TEM Document 99-1 Filed 04/06/12 Page 1 of 13 PageID 1318 IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION CASE NO.: 3:11-CV J-37-TEM PARKERVISION, INC., Plaintiff. v. QUALCOMM INCORPORATED, Defendant. / QUALCOMM INCORPORATED, Counterclaim Plaintiff, v. PARKERVISION, INC, AND STERNE, KESSLER, GOLDSTEIN & FOX PLLC, Counterclaim Defendants. / Exhibit A

30 Case 3:11-cv RBD-TEM Document 99-1 Filed 04/06/12 Page 2 of 13 PageID /21/11 FINDISCLOSURE 11:30:00 Page 1 7/21/11 FD (Fair Disclosure) Wire 11:30:00 Loaded Date: 07/28/2011 Presentation FD (FAIR DISCLOSURE) WIRE Copyright 2011 CCBN, Inc. and Roll Call, Inc. July 21, 2011 Parkervision Inc Conference Call Qualcomm Patent Infringement - Final OPERATOR: Good morning, and welcome to the ParkerVision special conference call and webcast. Today's conference is being recorded, and all listeners are in a listen-only mode. Following the presentation, we will open up the conference call for questions and answers. The Company has requested that questions and answers be limited to 1 question and 1 follow-up per caller. As it is now time for opening remarks and introductions, I would like to turn the conference over to Ron Stabiner with the Wall Street Group. Please go ahead, sir. RON STABINER, VP, WALL STREET GROUP: Okay. Thank you, Shannon. Good morning, and thank you for joining us. Before we get started, I would like to remind listeners that this conference call will contain forward-looking statements, which involve known and unknown risks and uncertainties about our business and the economy, and other factors that may cause actual results to differ materially from our expected achievements and anticipated results. Included in these factors is the ability to maintain technological advantages in the marketplace, the ability to increase manufacturing capacity to meet demands, achieving timely market introduction and acceptance of product, maintaining our patent protection, and the availability of capital, among others. Given these uncertainties and other factors for our business, listeners are cautioned not to place undue reliance on any forward-looking statement contained within this conference call. Additional materials concerning these and other risks can be found in our filings with the Securities and Exchange Commission. I will now turn the call over to Jeffrey Parker, Chairman and Chief Executive Officer of ParkerVision, who will discuss the IP litigation launched by the Company late yesterday afternoon. Please go ahead, Jeff. JEFFREY PARKER, CHAIRMAN AND CEO, PARKERVISION INC: Thank you, Ron, and good morning to all of you joining us. Yesterday, ParkerVision filed a complaint against Qualcomm in the US Federal District Court, alleging infringement of a number of our patents. The 7 patents in this suit relate to electromagnetic signal down conversion, and the use of this technology for creating RF receivers. The infringed patents were filed by ParkerVision beginning as early as 1998, and collectively, they contain over 400 claims. From what we've determined to date, ParkerVision's intellectual property is widely deployed in Qualcomm's prod Thomson Reuters. No Claim to Orig. US Gov. Works.