CONFIDENTIAL - PARTIES AND BOARD ONLY
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DR. MICHAEL FARMWALD and RPX CORPORATION
`Petitioner
`
`v.
`
`PARKERVISION, INC.
`Patent Owner
`
`Case IPR20 14-00947
`Patent 6,061 ,551
`
`PATENT OWNER'S MOTION FOR
`AUTHORIZATION TO APPLY FOR SUBPOENA
`
`MaiiS/op "PATENTBOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Farmwald and RPX Exhibit 1064, pg. 1
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DR. MICHAEL FARMWALD and RPX CORPORATION
`Petitioner
`
`v.
`
`PARKERVISION, INC.
`Patent Owner
`
`Case IPR20 14-00947
`Patent 6,061 ,551
`
`PATENT OWNER'S MOTION FOR
`AUTHORIZATION TO APPLY FOR SUBPOENA
`
`MaiiS/op "PATENTBOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Farmwald and RPX Exhibit 1064, pg. 1
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR2014-00947
`U.S. Patent No. 6,061,551
`
`EXHlliIT LIST
`
`Ex. No.
`
`Description
`
`Previously
`Filed
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`The Authoritative Dictionary of IEEE Standards Terms,
`Institute of Electrical and Electronics Engineers, 7th ed.,
`2000
`Sclater et aI., McGraw-Hili Electronics Dictionary,
`McGraw-Hili, Inc., 6th ed., 1997.
`8-13-14 e-mail from ParkerVision's counsel to
`Petitioner's counsel.
`Estabrook et aI., A Mixer Computer-Aided Design Tool
`Based in the Time Domain, IEEE MIT -S Digest, pp.
`1107- 1110 (1988).
`Not Used
`Patent Owner's Proposed Discovery Requests to
`Petitioner
`Transcript of Conference Call in JPR2014-00946,
`IPRZO 14-00947, and IPRZOI4-00948, held on January 21 ,
`2015.
`Email from ParkerVision's counsel to Petitioner' s counsel
`with Patent Owner's Proposed Discovery Requests to
`Petitioner attached (Jan. 26,20 IS).
`ParkerVision Press Release, "ParkerVision's Patent
`Portfolio Once Again Recognized for Its Strength by The
`Patent Board" (Mar. 19,2014).
`ParkerVision Press Release, "ParkerVision' s Patent
`Portfolio Leads Telecom Sector" (Mar. 28, 2013).
`Complaint filed in Parker Vision, Inc. v. Qualcommlnc.,
`No.3: ll-cv-00719 (M.D. Fla.), filed on July 20, 2011.
`Return of Service of Summons in a Civil Action in
`ParkerVision. lnc. v. Qualcomm Inc., No. 3:II-cv-00719
`(M.D. Fla.), dated July 21 , 2011.
`Verdict Form in Parker Vision, Inc. v. Qualcomm Inc.,
`No.3 : ll-cv-00719 (M.D. Fla.), dated October 17,2013.
`
`- 11 -
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`Farmwald and RPX Exhibit 1064, pg. 2
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR20 14-00947
`U.S. Patent No. 6,061,551
`
`Ex. No.
`
`Description
`
`Previously
`Filed
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`Docket Report for Parker Vision, Inc. v. Qualcomm Inc.,
`No. 3:11-cv-00719 (M.D. Fla.).
`Not Used
`RPX Press Release, "Semiconductor Leaders Push RPX
`Network to 65 Clients" (Oct. 4, 2010).
`RPX Presentation, "The Market for Patents and Patent
`Litigation" (May 21, 2012).
`RPX's "Client Relations" webpage at
`http://www.rpxcorp.comlrpx-membership/rpx-client-
`relations/ .
`RPX's "Why Join" webpage at
`htlp://www.rpxcorp.comlwhy-join-rpx!.
`RPX's 2013 Annual Report.
`Transcript of Conference Call, Dr. Michael Farmwald
`and RPX Corporation v. Parker Vision, Inc., Cases
`IPR20 14-00946, JPR20 14-00947, and IPR20 14-00948,
`dated February 6, 2015.
`Patent Owner's Revised Proposed Discovery Requests to
`Petitioner.
`E-mail of 03-03-2015 from the Board to Petitioner
`Counsel and Patent Owner Counsel.
`Declaration of Bruce A. Fette, Ph.D., in Support of Patent
`Owner's Response to Petition with Curriculum Vitae.
`Transcript of Deposition Asad Abidi, Ph.D., with Errata,
`Cases IPR20 14-00946, IPR20 14-00947, and IPR20 14-
`00948, held on February 8-9, 2015.
`Simulation Schematics ofWeisskopfs energy sampling
`system and circuits (Replacement)
`Excerpts from The Authoritative Dictionary of IEEE
`Standards Terms, Institute of Electrical and Electronics
`Engineers, 7th ed.
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`- III -
`
`Farmwald and RPX Exhibit 1064, pg. 3
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR2014-00947
`U.S. Patent No. 6,061,55 1
`
`Ex_ No.
`
`Description
`
`Previously
`Filed
`
`X
`
`X
`
`X
`
`X
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`2034
`
`2035
`
`2036
`
`2037
`
`Friis, "Noise Figures of Radio Receivers," Proceedings of
`the I.R.E. (July 1944).
`Definition of "Noise Factor (Noise Figure)," Proceedings
`of the T.R.E., Standards on Receivers: Definitions of Term
`(Dec. 1952).
`Excerpts from Pettai, "Noise in Receiving Systems"
`(published 1984).
`Declaration in Support of Motion for Pro Hac Vice
`Admission of Russ M. Herman Under 37 C.F.R. §
`42.10(c)
`Transcript of Deposition of Dr. Michael Farmwald, Cases
`IPR2014-00946, IPR2014-00947, and IPR2014-00948,
`held on May 22, 2015.
`Email from Bob Friese, Farmwald's counsel, to Keith
`Hummel, Qualcomm's counsel (Oct. 18,2011),
`RPXOO0284.
`Invoice for legal services to Farmwald (Nov. 30, 20 II),
`RPXOO0313 .
`Dr. farmwald's hand-written notes from call with Alex
`Rogers, Qualcomm counsel, RPXOO0312.
`Transcript of Deposition of Jeremy Brodsky, Cases
`IPR20 14-00946, IPR20 14-00947, and IPR20 14-00948,
`held on April 28, 2015.
`Letter from Robert Greene Sterne, ParkerVision's
`counsel, to Alex Rogers, Qualcomm Inc. 's counsel (June
`12,2015)
`
`- IV -
`
`Farmwald and RPX Exhibit 1064, pg. 4
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case TPR2014-00947
`U.S. Patent No. 6,061,SS 1
`
`I.
`
`Introduction
`
`ParkerVision, Inc. requests authorization to apply for a subpoena directed to
`
`Qualcomm Incorporated and Alex Rogers, Qualcomm's in-house counsel, under
`
`37 C.F.R. § 42.S2(a). The proposed requested discovery, set forth in Attachments
`
`A and B hereto, is narrowly tailored to elicit documents and testimony relevant to
`
`whether Qualcomm is a real party-in-interest ("RPI") in this IPR. The Board
`
`authorized this motion in its June 9, 20lS Order. Paper 34 at 3.
`
`II. Factual Background
`
`Since institution, ParkerV ision has di ligently sought additional discovery on
`
`the issue of whether Qualcomm is an RPI to Petitioners, Farmwald and RPX Corp.,
`
`in this and the related lPR proceedings (IPR20 14-00946 and IPR20 14-00948). In
`
`its motion for additional discovery from Petitioners on this issue, Paper 14,
`
`ParkerVision demonstrated a high probability that Petitioners possess relevant,
`
`useful information--{lvidence confirm ing that Qualcomm is an RPI and,
`
`consequently, that this IPR is barred- based on the following public information:
`
`• Served with a complaint nearly four years ago alleging infringement of a set
`
`of claims of the same patents challenged in the related IPR proceedings,
`
`Parker Vision v. Qualcomm, No. 3:I I-cv-00719 (M.D. Fla.) ("the Qualcomm
`
`litigation"), Qualcomm was time-barred under § 3IS(b) from petitioning for
`
`IPR as of the date the petitions were filed. Exs. 201 1 at 2-4; 2012.
`
`- I -
`
`Farmwald and RPX Exhibit 1064, pg. 5
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR20 14-00947
`U.S. Patent No. 6,061,551
`• Although ParkerVision owns over 200 patents, Petitioners challenged only
`
`the patents asserted in the Qualcomm litigation. See Exs. 2009; 20 I 0; 20 II.
`
`• Qualcomm was an RPX client for years, and the essence ofRPX's business
`
`model is to "serve as an extension of the client's in-house legal team," and to
`
`act as proxy to those accused of patent infringement to "selectively clear"
`
`them of infTingement liability as part of RPX's "patent risk management
`
`solutions," which "include[] the facilitation of challenges to patent validity."
`
`See Exs. 2016; 2017 at 15; 2018; 2019; 2020 at 3-5, 26, 53.
`
`•
`
`In the past, RPX served as proxy for undisclosed accused patent infringers,
`
`filing IPR petitions on behalf of time-barred clients. See RPX Corp. v.
`
`VirnelX, Inc., IPR20 14-001 7 I, Paper 57 at 7-10 (June 23, 2014).
`
`• Petitioners have no independent reason to challenge the patents because
`
`Parker Vision never sued or threatened to sue them on any patent,
`
`ParkerVision never offered to license any patent to them, and Petitioners do
`
`not make, use, or sell commercial products related to any patent.
`
`• Petitioners are represented by James Bailey, a Qualcomm litigation team
`
`member, Ex. 2014 at Okt. No. 129, and advance invalidity positions nearly
`
`identical to those in the Qualcomm litigation, Ex. 1007 at 6 n.2, 192-195.
`
`In response to the Board's order, Paper 23, Petitioners produced documents
`
`and ParkerVision deposed Farmwald and Jeremy Brodsky, an RPX representative .
`
`- 2 -
`
`Farmwald and RPX Exhibit 1064, pg. 6
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR20 14-00947
`U.S. Patent No. 6,061,551
`As summarized below, Petitioners' documents and testimony revealed additional
`
`facts that support a finding that the requested discovery from Qualcomm and Alex
`
`Rogers is also likely to uncover relevant infOtmation useful in this proceeding-
`
`i.e., that Qualconun is an RP[ and, thus, this [PR is time-barred under § 3IS(b):
`
`• Farmwald was a paid consultant for Qualcomm in the Qualcomm litigation.
`
`Ex. 2032 (Farmwald Dep. Tr.), 35:8-36:3, 60:14-63:9; Ex. 2033; Ex. 2034.
`
`• Before filing the petitions, Farmwald sought Qualcomm's permission,
`
`through Alex Rogers, to use its expert from the Qualcomm litigation in these
`
`IPR proceedings. Ex. 2032, 68:18-70:16. Qualcomm, through Alex Rogers,
`
`later instructed Farmwald not to use its expert and Farmwald complied by
`
`retaining a different expert. [d. , 70: 17-7\: 13; Ex. 2035.
`
`• Farmwald also repeatedly conferred with Alex Rogers and members of the
`
`Qualcomm litigation trial team (two of whom he retained to challenge the
`
`asserted patents) to discuss, inter alia, the filing of the petitions, expert
`
`selection for these IPRs, and the unfairness of § 3\5(b)'s I-year bar to
`
`Qualcomm. Ex. 2032, 32: 11-35:4, 68: 18-69:25, 75: 19-81: 19, 109:22-110:8.
`
`• Qualcomm was a client of RPX for years but ceased being a client on Sep-
`
`tember 10,2013, only months before the petitions were fi led. Ex. 1048 at ~2 .
`
`• None ofRPX' s clients have been threatened with a suit by ParkerVision
`
`regarding the challenged patents. Ex. 2036 (Brodsky Dep. Tr..), 13: 18-21.
`
`- 3 -
`
`Farmwald and RPX Exhibit 1064, pg. 7
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR20 I 4-00947
`U.S. Patent No. 6,061,551
`• Before filing the petitions, representatives of Qualcomm and RPX discussed
`
`the filing ofIPR petitions by RPX against the patents at issue in the
`
`Qualcomm litigation. Ex. 1048 at 1,5; Ex. 2036, 47: 10-48: 14.
`
`III.
`
`37 C.F.R. § 42.52(a) and Real Parties-Tn-Interest
`
`Under 37 C.F.R. § 42.52(a), a motion for authorization to compel testimony
`
`or the production of documents must "describe the general relevance of the
`
`testimony [or] document[s]" sought and "identify the witness by name or title; and
`
`... the general nature of the document[s]." 37 C.F.R. § 42.52(a).
`
`Failing to identifY all RPls in a petition renders the petition incomplete. See
`
`35 U.S.C. § 312(a); Zoll Lifecor Corp. v. Philips E/ecs. N. Am. COtp., lPR2013-
`
`00606, Paper 13 at 11-12 (Mar. 20, 20 14). Further, "[a]n [lPRJ may not be
`
`instituted if the petition requesting the proceeding is filed more than I year after
`
`the date on which the ... real party in interest ... is served with a complaint
`
`alleging infringement of the patent." 35 U.S.C. § 315(b). Determining if a party is
`
`an RPT "is a highly fact-dependent question." 77 Fed. Reg. 48,756,48,759 (Aug.
`
`14, 2012). A "common consideration is whether the non-party exercised or could
`
`have exercised control over a party's participation in a proceeding." ld.
`
`IV.
`
`ParkerVision Seeks Relevant Information in the Interest of Justice
`
`ParkerVision requests discovery needed in the interest of justice to
`
`determine whether Qualcomm is an RPI and, therefore, whether this TPR is barred
`
`- 4 -
`
`Farmwald and RPX Exhibit 1064, pg. 8
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR20 14-00947
`U.S. Patent No. 6,061,551
`under § 315(b). Each Om·min factor is satisfied here. See Oarmin 1m ·1 Inc. v.
`
`Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (Mar. 5, 20 13).
`
`A.
`
`It is highly likely that the requested additional discovery will uncover
`relevant, useful information.
`
`The public information outlined above, together with the following
`
`information obtained from Petitioners, demonstrate a high probability that the
`
`requested discovery from Qualcomm and Alex Rogers will uncover relevant,
`
`useful information that confirms Qualcomm is an RPI and this IPR is barred.
`
`(I) The evidence shows beyond speculation that Qualcomm is a real party(cid:173)
`in-interest wit h respect to Farmwald.
`
`At his deposition, Farmwald asserted that he filed the related IPR proceed-
`
`ings because he has a short position in ParkerVision stock and, in his view, the
`
`patents are invalid. Ex. 2032, 9: 14- 1 0: 13. But neither reason credibly explains his
`
`filing the petitions. First, Farmwald admits that finding the challenged patents un-
`
`patentable would not "have that much of an effect" on his short position in Parker-
`
`Vision stock.ld., 54:16-22. Second, regarding his view of the patents' invalidity,
`
`Farmwald offers no reason why he is challenging the particular patents at issue in
`
`the Qualcomm litigation among the hundreds owned by ParkerVision. Nor does
`
`Farmwald' s years-long smear campaign against ParkerVision and its technology
`
`adequately explain these proceedings given their cost. [d., 27:8-18, 132:20-133:3;
`
`see www.pvnotes.com. Instead, the likely explanation is that Qualcomm is an RPI.
`
`- 5 -
`
`Farmwald and RPX Exhibit 1064, pg. 9
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR20 14-00947
`U.S. Patent No. 6,061,551
`Farmwald was a paid consultant for Qualcomm in the Qualcomm litigation,
`
`which was ongoing when the IPR petitions were filed. As evidenced by an email
`
`between counsel for Farmwald and Qualcomm, Farmwald agreed to consult Qual-
`
`comm's litigation team, and in return, Qualcomm agreed to pay an outstanding
`
`$34, 111.87 legal invoice of his. Ex. 2033 (email); Ex. 2034 (invoice). Farmwald
`
`admitted that Qualcomm paid at least this invoice, Ex. 2032,63:5-9, and he, in
`
`tum, "pass[ed] along prior art" to Qualcomm, id., 35:8-36:3 . Farmwald also
`
`regularly communicated with Qualcomm's litigation counsel during trial to provide
`
`"feed-back on how [he] perceived things during the tria!''' [d., 60: 14-61 :5.
`
`Two weeks after the jury's verdict that ParkerVision's claims are infringed
`
`and not invalid, Farmwald met with Qualcomm's in-house counsel (Alex Rogers)
`
`and litigation counsel (Tim Teter) on November 9,2013, regarding fi ling IPR
`
`petitions challenging the patents asserted in the Qualcomm litigation. Ex. 1049 at
`
`~7; Ex. 2032, 68: 18-69:25. Fannwald was aware, at this time, that Qualcomm was
`
`time-barred from petitioning fo r IPR on these patents. Ex. 2032, 70:2-9.
`
`At this meeting, Farmwald sought Qualcomm's permission to use its expert
`
`from the Qualcomm litigation, Dr. Behzad Razavi, in these IPR proceedings. Id.,
`
`68: 18-24, 70: 10-1 6. Qualcomm, through Alex Rogers, later instructed Fannwald
`
`not to use Dr. Razavi, id., 70:17-23 ("They told me 1 could not use Rezavi [sic].");
`
`Ex. 2035 (notes from call with Alex Rogers), and Farmwald complied by retaining
`
`- 6-
`
`Farmwald and RPX Exhibit 1064, pg. 10
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR20 I 4-00947
`U.S. Patent No. 6,061,551
`a different expert, Ex. 1004, Ex. 2032, 70:24-71: 13. The fact that Farrnwald solici-
`
`ted Qualcomm's permission to use its expert, and acquiesced to Quaicomm's de-
`
`mand, indicates that Qualcomm actually exercised control over a critical decision
`
`in this IPR-a level of control sufficient to establish Qualcomm as an RPI.
`
`Further, shortly after the verdict, members of Qualcomm's litigation team-
`
`James Bailey and Richard Thill- began representing Farmwald in challenging the
`
`palents at issue.ld., 109:22-110:8. And in addition to their November 2013 meet-
`
`ing, Farmwald had several conversations with Tim Teter regarding the Qualcomm
`
`litigation's outcome and expert selection for these IPRs. Jd., 32: 11-35:4, 75: 19-
`
`79:17. Farmwald also spoke with Alex Rogers in March 2014 to discuss, inter alia,
`
`the unfairness of § 315(b)'s one-year bar to Qualcomm. Jd. , 79:23-81 :19. The stra-
`
`tegic selection of Qualcomm's litigation counsel for these IPRs and Fannwald's
`
`repeated consultation with Qualcomm's counsel are additional evidence that Qual-
`
`comm exercised or could have exercised control over these IPRs and is an RPI.
`
`(2)
`
`The evidence shows beyond speculation that Qualcomm is a real party(cid:173)
`in-interest with respect to RPX.
`
`Like Farmwald, RPX lacks any significant stake in the Board finding the
`
`challenged patents unpatentable. For example, RPX admits that none of its clients
`
`have been threatened with suit by ParkerVision. Ex. 2036, 13 : 18-21.
`
`
`
`- 7 -
`
`Farmwald and RPX Exhibit 1064, pg. 11
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR2014-00947
`U.S. Patent No. 6,061,551
`But these reasons do not adequately
`
`explain RPX's wiIlingness to incur the cost of these proceedings in challenging the
`
`particular patents at issue in the Qualcomm litigation. As with Farmwald, the
`
`logical explanation for RPX's involvement is that Qualcomm is an RPI.
`
`As discussed above, Qualcomm was, for years, a client of RPX, whose
`
`services include "facilitat[ing] ... challenges to patent validity." Ex. 2020 at 4.
`
`According to RPX's witness, Mr. Brodsky, Qualcomm stopped being a client of
`
`RPX on September 10, 201 3-nine months before these petitions were filed. Ex.
`
`1048 at ~2.
`
`
`
`
`
`
`
`Mr. Brodsky further testified that in February 2014, representatives of Qual-
`
`comm and RPX discussed the filing oflPR petitions by RPX against the patents at
`
`issue in the Qualcomm litigation. Id., 47: 1 0-48:14; Ex. 1048 a1115. Mr. Brodsky
`
`asserted that RPX's motive for this call was to determine if Qualcomm wanted to
`
`rejoin RPX. Id. But this motive is incredulous given that RPX-at that very time-
`
`was briefing RPI issues arising from its filing of IPR petitions as a proxy for its
`
`time-barred client, Apple, Inc. See VirnetX, IPR2014-0017I, Paper 20 (Feb. 3,
`
`2014) (RPX opposition). A more likely reason for this call was to g ive Qualcomm
`
`an opportunity to advise on IPR petitions that it was time-barred from filing.
`
`- 8 -
`
`Farmwald and RPX Exhibit 1064, pg. 12
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR2014-00947
`U.S. Patent No. 6,061,551
`Qualcomm's unexplained (and likely strategic) withdrawal from RPX only
`
`months before the petitions were filed, after years of membership, and the
`
`February 2014 call between Qualcomm and RPX regarding the petitions evidence
`
`that Qualcomm exercised or could have exercised control over these proceedings
`
`and is an RPI. Buttressing this finding is RPX's lack of any other credible reason
`
`to file the petitions and its role as a "facilitat[or] of challenges to patent validity."
`
`B.
`
`The requested discovery does not seek Petitioners' litigation positions.
`
`The requested discovery seeks information regarding Qualcomm's relation-
`
`ships with Petitioners, not Petitioners' litigation positions. See Garmin at 13.
`
`C.
`
`ParkerVision cannot generate equivalent information by other means.
`
`ParkerVision cannot generate equivalent information by means other than
`
`the requested discovery. See id. at 13-14. [fQualcomm secretly is funding or
`
`controlling the [PRs, QuaJcomm and Petitioners are likely the only sources of
`
`information concerning such activity. And although ParkerVision obtained limited
`
`discovery from Petitioners on this issue, Qualcomm almost certainly possesses
`
`documents and information unique to that which was produced by Petitioners.
`
`Indeed, Farmwald's testimony is inconsistent. For example, after admitting
`
`to entering into a consulting agreement with Qualcomm vis-a-vis the Qualcomm
`
`litigation, Farmwald stated that an agreement was discussed but not reached. Ex.
`
`2032, 13: 19-14:8. Only Qualcomm and Mr. Rogers can resolve this inconsistency.
`
`- 9 -
`
`Farmwald and RPX Exhibit 1064, pg. 13
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case JPR20 14-00947
`U.S. Patent No. 6,061,551
`On June 12, 2015, ParkerYision's counsel requested that Qualcomm vol un-
`
`tarily produce the requested discovery. Ex. 2037. Qualcomm has yet to respond.
`
`Thus, ParkerYision must subpoena Qualcomm to obtain the requested discovery.
`
`D.
`
`The instructions are easily understandable.
`
`The requested discovery's instructions are easily understandable and
`
`identical to the instructions approved by this panel in Paper 25. See Garmin at 14.
`
`E.
`
`The requested discovery is narrowly tailored and not burdensome.
`
`The requested discovery, which is limited to the five document requests in
`
`Attach. A and nine deposition topics in Attach. B I, is "sensible and responsibly
`
`tailored according to a genuine need." See id. Compliance with this discovelY will
`
`not require significant expenditure of resources or significantly burden meeting
`
`this proceeding's deadlines. Jfthis motion is granted, ParkerYision will serve the
`
`discovery immediately and offer to depose the witness at a convenient location.
`
`Y. Conclusion
`
`For the foregoing reasons, ParkerYision respectfully requests that the Board
`
`authorize it to apply for a subpoena to Qualcomm and Alex Rogers seeking the
`
`specific, narrowly-tailored discovery in Attachments A and B, respectively.
`
`I ParkerVision proposes to depose Mr. Rogers personally. If the Board limits the
`
`requested testimony to a Qualcomm representative in the style of Fed. R. Civ. P.
`
`30(b)(6), ParkerVision will include those topics with its subpoena to Qualcomm.
`
`- 10-
`
`Farmwald and RPX Exhibit 1064, pg. 14
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR20 14-00947
`U.S. Patent No. 6,061,551
`
`~4:e~~
`
`Robert Greene Sterne (Reg. No. 28,912)
`Michael Q. Lee (Reg. No. 35,239)
`STERNE, KESSLER, GOLDSTEIN & F o x P.L.L.C.
`
`Rick D. Nydegger (Reg. No. 28,651)
`VVORKMANINYDEGGERPC
`
`Jason E. Stach (Reg. No. 54,464)
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`Attorneys for Patent Owner
`
`Date: June 16,2015
`
`1100 New York Avenue, N.W.
`Washington,D.C.20005
`(202) 371-2600
`
`- II -
`
`Farmwald and RPX Exhibit 1064, pg. 15
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR2014-00947
`U.S. Patent No. 6,061,551
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing PATENT OWNER'S
`
`MOTION FOR AUTHORIZATION TO APPLY FOR SUBPOENA and all
`
`associated exhibits were served electronically via e-mail on June 16, 2015, in their
`
`entireties on the following counsel of record for Petitioner:
`
`W. Todd Baker (Lead Counsel)
`cpdocketbaker@oblon.com
`Obion Spivak
`1940 Duke Street
`Alexandria, VA 223 14
`Phone: (703) 412-6383
`Fax: (703) 413-2220
`
`James T. Bailey (Back-up Counsel)
`jtb@jtbaileylaw.com
`The Law Office of James T. Bai ley
`(No Address Provided)
`
`Phone: (9 17) 626-1356
`
`~4:~
`
`Robert Greene Sterne (Reg. No. 28,912)
`Michael Q. Lee (Reg. No. 35,239)
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Rick D. Nydegger (Reg. No. 28,65 1)
`WORKMAN I NYDEGGERI'C
`
`Jason E. Stach (Reg. No. 54,464)
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`Attorneys for Patent Owner
`
`Date: June 16,2015
`
`- 12 -
`
`Farmwald and RPX Exhibit 1064, pg. 16
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`
`ATTACHMENT A
`
`ParkerVision requests that Qua\comm Incorporated produce the following
`
`documents and things.
`
`INSTRUCTIONS
`
`1.
`
`In responding to and producing documents and things responsive to
`
`these Requests, Qualcomm is to comply with Federal Rules of Civil Procedure 26
`
`and 34, the Board's Scheduling Order, and the instructions in the Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14,2012).
`
`2.
`
`Identify any responsive documents of which Qua\comm is aware but
`
`cannot produce because they have been lost or destroyed or are no longer in
`
`Qualcomm's possession, custody, or control.
`
`3.
`
`If Qua\comm finds the meaning of any term in the Requests unci ear,
`
`Qualcomm should assume a reasonable meaning, state what the assumed meaning
`
`is, and produce documents and things on the basis of that assumed meaning.
`
`DEFINITIONS
`
`I.
`
`The term "Farmwald" means Dr. Michael Farmwald and all of his
`
`present and former employees, representatives, consultants, contractors, attorneys,
`
`agents, and all other persons or entities acting on behalf of Farmwald.
`
`2.
`
`The term "RPX" means RPX Corporation and all of its predecessors,
`
`divisions, departments, subsidiaries, parents, affiliates, present and former
`
`Farmwald and RPX Exhibit 1064, pg. 17
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR20 14-00947
`U.S. Patent No. 6,061 ,551
`directors, officers, employees, representatives, consultants, contractors, attorneys,
`
`agents, and all other persons or entities acting on behalf ofRPX.
`
`3.
`
`The term "Qua\comm" means Qualcornm Incorporated, Qualcomm
`
`Atheros, Inc., and all of their predecessors, divisions, departments, subsidiaries,
`
`parents, affiliates, present and former directors, officers, employees,
`
`representatives, consultants, contractors, attorneys, agents, and all other persons or
`
`entities acting on behalf of Qualcomm.
`
`4.
`
`The term "Related IPR Proceedings" means the following inter partes
`
`review proceedings initiated by Petitioners against Patent Owner: IPR2014-00946,
`
`IPR20 14-00947 and IPR20 14-00948.
`
`5.
`
`The term "Challenged Patents" means the following patents which are
`
`the subject of the Related IPR Proceedings: U.S. Patent Nos. 6,266,518; 6,061,551;
`
`and 6,370,371 .
`
`6.
`
`The term "Qualcomm Litigation" means the litigation styled
`
`Parker Vision, Inc. v. Qualcommlnc., No. 3:11-cv-719-J-37TEM (M.D. Fla. July
`
`20,2011).
`
`7.
`
`The term "documents" means all documents and electronically stored
`
`information and is defined to be synonymous in meaning and equal in scope to
`
`Federal Rule of Civil Procedure 34.
`
`-2-
`
`Farmwald and RPX Exhibit 1064, pg. 18
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case 1PR20 14-00947
`U.S. Patent No. 6,061,551
`The term "communications" means any transmittal of information,
`
`8.
`
`recognizing that Qualcomm is not required or requested to produce an oral
`
`communication.
`
`REQUESTS FOR PRODUCTION
`
`Reguest for Production No.1
`
`Documents reflecting, summarizing, or memorializing the deliberations
`
`leading to and reasons why Qualcomm withdrew as a client of RPX or a subscriber
`
`to RPX's services on or about September 10, 2013.
`
`Reg uest for Production No.2
`
`Communications, and documents reflecting, summarizing, or memorializing
`
`communications (e.g., calendar entries, recordings, transcripts, notes, and
`
`summaries), involving Qualcomm, on the one hand, and RPX, on the other hand,
`
`concerning Qualcomm re-enrolling as a client ofRPX or re-subscribing to RPX's
`
`services, including the teleconference held in or around February 2014 between
`
`representatives of Qua1comm and RPX.
`
`Reguest for Production No.3
`
`Communications, and documents reflecting, summarizing, or memorializing
`
`communications (e.g., calendar entries, recordings, transcripts, notes, and
`
`summaries), involving Qualcomm, on the one hand, and either or both of
`
`Farmwald or RPX, on the other hand, concerning the Related IPR Proceedings, the
`
`- 3 -
`
`Farmwald and RPX Exhibit 1064, pg. 19
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`
`Case lPR20 14-00947
`U.S. Patent No. 6,06 1,55 1
`Challenged Patents, or the Qualcomm Litigation, including any communications
`
`concerning Qualcomm's funding, control, or direction (e.g. the selection or
`
`suggestion of prior-art references) in any aspect of the Related IPR Proceedings, or
`
`related to the retention or destruction of communications or documents concerning
`
`Qualcomm's funding, control, or direction in any aspect of the Related lPR
`
`Proceedings.
`
`Reguest for Production No.4
`
`Agreements and proposals for agreements, and documents reflecting
`
`discussions of either, to which Qualcomm, on the one hand, and Falmwald and/or
`
`RPX, on the other hand, are or were parties, that concern the Related lPR
`
`Proceedings, the Challenged Patents, or the Qualcomm Litigation, including any
`
`agreements and proposals of agreements and documents reflecting discussions of
`
`either regarding the retention of Mr. James Bailey as Petitioners' counsel of record
`
`in the Related IPR Proceedings.
`
`Reguest for Production No.5
`
`Documents sufficient to show (i) all funds or other consideration (including
`
`in-kind) provided directly or indirectly by, or expected to be provided by,
`
`Qualcomm to Farmwald or RPX and (ii) all funds or other consideration (including
`
`in-kind) provided by Qualcomm to Farmwald or RPX with the purpose of funding
`
`the Related lRP Proceedings.
`
`- 4 -
`
`Farmwald and RPX Exhibit 1064, pg. 20
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`
`ATTACHMENT B
`
`ParkerVision will limit the deposition testimony of Alex Rogers, Qualcomm
`
`Incorporated's in-house counsel, to the following topics.
`
`DEFINITIONS
`
`1.
`
`The term "Farmwald" means Dr. Michael Farrnwald and all of his
`
`present and former employees, representatives, consultants, contractors, attorneys,
`
`agents, and all other persons or entities acting on behalf ofFarmwald.
`
`2.
`
`The term "RPX" means RPX Corporation and all of its predecessors,
`
`divisions, departments, subsidiaries, parents, affiliates, present and former
`
`directors, officers, employees, representatives, consultants, contractors, attorneys,
`
`agents, and all other persons or entities acting on behalf of RPX.
`
`3.
`
`The tenn "Quaicomm" means Qualcomm Incorporated, Qualcomm
`
`Atheros, Inc., and all of their predecessors, divisions, departments, subsidiaries,
`
`parents, affiliates, present and former directors, officers, employees,
`
`representatives, consultants, contractors, attorneys, agents, and all other persons or
`
`entities acting on behal f of Qualcomm.
`
`4.
`
`The term "Related IPR Proceedings" means the following inter partes
`
`review proceedings initiated by Petitioner against Patent Owner: IPR20 14-00946,
`
`IPR20 I 4-00947 and IPR2014-00948.
`
`Farmwald and RPX Exhibit 1064, pg. 21
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CONFIDENTIAL - PARTIES AND BOARD ONLY
`Case IPR2014-00947
`U.S. Patent No. 6,061,551
`The term "Challenged Patents" means the following patents which are
`
`5.
`
`the subject of the Related IPR Proceedings: U.S. Patent Nos. 6,266,518; 6,061,551;
`
`and 6,370,371.
`
`6.
`
`The term "Qualcomm Litigation" means the litigation styled
`
`Parker Vision, Inc. v. Qualcomm Inc., No. 3:II-cv-719-J-37TEM (M.D. Fla. July
`
`20,201 I).
`
`7.
`
`The term "documents" means all documents and electronically stored
`
`information and is defined to be synonymous in meaning and equal in scope to
`
`Federal Rule of Civil Procedure 34.
`
`8.
`
`The tel·m "communications" means any transmittal of information,
`
`recognizing that you are not required or requested to produce an oral
`
`communication.
`
`Topic No.]
`
`DEPOSITION TOPICS
`
`Deliberations leading to and reasons why Qualcomm withdrew as a client of
`
`RPX or a subscriber to RPX's services on or about September 10, 2013.
`
`Topic No, 2
`
`Communications involving Qualcomm, on the one haod, and RPX, on the
`
`other hand, concerning Qualcomm re-enrolling as a client ofRPX or re-
`
`- 2-
`
`Farmwald and RPX Exhibit 1064, pg. 22
`Farmwald and RPX v. ParkerVision
`IPR2014-00947 (PUBLIC REDACTED)
`
`
`
`CO
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