UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. DR. MICHAEL FARMWALD and RPX CORPORATION Petitioners,

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1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD DR. MICHAEL FARMWALD and RPX CORPORATION Petitioners, v. PARKERVISION, INC., Patent Owner. Case IPR PETITIONERS OPPOSITION TO PATENT OWNER S MOTION FOR ADDITIONAL DISCOVERY

2 I. Overview Patent Owner s Motion for Additional Discovery ( Motion ) should be denied. The Motion s application of the Garmin factors -- entirely based on speculation and innuendo -- completely ignores the voluntary testimony of Dr. Michael Farmwald (Ex. 1048) and RPX representative, Jeremy Brodsky (Ex. 1049), and the fact that Dr. Farmwald has a long-standing personal and financial interest in debunking what he has characterized as the "outrageously false or stupid" technical claims made by the Patent Owner that pre-dates the Qualcomm litigation by years. (Ex. 1051) For at least these reasons, Patent Owner's Motion fails to meet the interests of justice standard. II. Response to Factual Background A. Patent Owner Clings to Mere Speculation Patent Owner speculates that Qualcomm likely is a real-party-in-interest in view of the following (1)Petitioner s decision to challenge the same four ParkerVision patents asserted by ParkerVision against Qualcomm in the District Court for Florida; (2) Petitioner s selection of Qualcomm s litigation attorney James Bailey as IPR counsel; (3) Qualcomm s close relationship with RPX; and (4) the Board s denial of several RPX-filed IPRs, finding that RPX acted as proxy for its time-barred client, Apple Inc. Patent Owners reliance on these facts is misleading and prejudicial. 1

3 The Patent Owner s reliance is misleading in light of its failure to address the testimony of Dr. Farmwald and RPX s representative, Mr. Brodsky, concerning Qualcomm s lack of funding, control, or direction in any aspect of the related IPR proceedings. See Ex (3) (8) and Ex (1) (8). 1 In particular, the Motion ignores the testimony from Mr. Brodsky that Qualcomm is not a member of RPX; that Qualcomm ceased being a member of RPX more than six months prior to RPX s engagement of IPR counsel; and that RPX is not receiving any compensation from Qualcomm related to these IPRs. Ex. 1048, (2) (4). The Patent Owner s reliance is prejudicial as it suggests that the Board s conclusion in RPX Corp. v. VirnetX 2 that RPX acted as proxy for its time barred client, Apple Inc. necessarily supports the conclusion that RPX is acting as a proxy for its former client Qualcomm here. The panel assigned to these related IPRs is requested to look at the facts of this matter independent of the Board s decision in the VirnetX matter. As evidenced by Mr. Brodsky s declaration, Ex. 1048, Qualcomm is not a current client of RPX, and RPX is not secretively acting as a proxy for Qualcomm. B. Petitioner s Engagement of Mr. Bailey is of No Moment 1 Exhibits 1048 and 1049 were served on Patent Owner in August 2014 under seal. 2 IPR , paper 57 (June 23, 2014). 2

4 Petitioner s engagement of Mr. Bailey is of no moment. Mr. Bailey was one of twenty-five (25) counsel of record in the ParkerVision v. Qualcomm litigation. Attorneys from the law firm of Cooley LLP not Mr. Bailey actually tried the case. Importantly, any similarity between Qualcomm s invalidity positions and the positions taken by the Petitioner in the subject IPRs is largely due to Petitioner s use of portions of the trial record publicly posted on the investor relations portion of Patent Owner s web site. See, e.g., IPR , Paper 1, Footnote 1. As pointed out above, Qualcomm provides no funding, control, or direction in any aspect of the related IPR proceedings. Mr. Bailey s engagement by Petitioner does not negate that fact. See Denso v. Beacon Navigation, IPR , Paper 34, Section III.A (March 14, 2014). III. The Garmin Factors Are Not Satisfied A. Additional Discovery Will Not Uncover Useful Information In support of its position that the requested discovery will uncover useful information, the Motion restates the facts from Factual Background. Petitioner disputes that those facts should be outcome determinative for the reasons provided above. Patent Owner s Proposed Discovery Requests to Petitioner ( RFP ), Exhibit 2006, is problematic due its lack of clarity and overreaching requests. Consistent with the January 26, 2015 Order, Applicants conferred with Patent Owner counsel 3

5 in an attempt to agree on the scope of the RFP. A redlined version of the RFP is submitted herewith as Exhibit 1050 ( redlined RFP ). 3 The Patent Owner s RFP is overreaching for at least the following reasons. Neither RPX nor Dr. Farmwald is a party to the Qualcomm Litigations. Consequently, any requests for documents concerning the Qualcomm Litigations should be denied. Patent Owner s RFP request No. 3 is directed to documents reflecting the deliberations leading to and reasons why Petitioners prepared and filed the respective petitions for IPR. As such, all of the requested documents are clearly covered by the attorney-client privilege and work-product doctrine and Request No. 3 should be denied. Lastly, the RFP s definition of communication encompasses oral communications which the Board on the January 21, 2015 conference call made very clear should be limited to documents. Ex page 31, lines 3-8. Request No. 5 is exemplary of Patent Owner s over-reaching. The request is in one aspect particularly directed to money received from Qualcomm which 3 Petitioner does not warrant that it is in possession of any documents protected by attorney-client privilege, the work-product doctrine, or otherwise satisfying any of the requests of the redlined RFP. In response to receiving the redlined version of the RFP, Exhibit 1050, Patent Owner annotated that document to reflect where the parties stand as to the scope of the RFPs. See Exhibit

6 5 Case IPR Patent Owner should know from the declarations do not exist but also asks for what amounts to a full financial audit of RPX and Dr. Farmwald. B. Petitioner s Litigation Positions Petitioner does not have any litigation positions related to the subject IPRs and hence this factor is irrelevant. C. Farmwald and Brodsky are Available for Cross-examination Dr. Farmwald and Mr. Brodsky have voluntarily provided statements concerning Qualcomm s lack of funding, control, or direction in any aspect of the related IPR proceedings. Those statements were made with the knowledge that willful false statements are punishable under 18 USC Further, both Dr. Farmwald and Mr. Brodsky are available for cross-examination under oath. Hence, Patent Owner has alternative recourse. D. The Patent Owner s RFPs Require Clarification Petitioner has proposed clarifying changes to Patent Owner s RFP. See the redlined RFP, Exhibit E. The Patent Owner s RFPs are Overreaching For the reasons discussed in Section III.A, the Patent Owner s RFP is not narrowly tailored as required by Garmin. In view of the foregoing, Petitioner respectfully requests that the Board deny Patent Owner s Motion for Additional Discovery.

7 Respectfully submitted, Dated: February 4, 2015 /W. Todd Baker/ W. Todd Baker Reg. No. 45,265 OBLON /James T. Bailey/ James T. Bailey Reg. No. 44,518 THE LAW OFFICE OF JAMES T. BAILEY Customer Number Tel. (703) Fax. (703) (OMMN 02/10) 6

8 CERTIFICATE OF SERVICE Case IPR Pursuant to 37 C.F.R. 42.6(e), the undersigned certifies service of PETITIONERS OPPOSITION TO PATENT OWNER S MOTION FOR ADDITIONAL DISCOVERY on the counsel of record for the Patent Owner by filing this document through the Patent Review Processing System as well as delivering a copy via electronic mail to the following address: Robert Greene Sterne rsterne-ptab@skgf.com Michael Q. Lee mlee-ptab@skgf.com Byron L. Pickard bpickard-ptab@skgf.com Jason E. Stach jason.stach@finnegan.com Rick D. Nydegger rnydegger@wnlaw.com Dated: February 4, 2015 /W. Todd Baker/ W. Todd Baker Reg. No. 45,265 7