UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
`
`PARKERVTSION, INC.,
`
`Plaintiff,
`
`V.
`
`Case No: 6:14-cv-687-PGB-LHP
`
`QUALCOMM INCORPORATED
`and QUALCOMM ATHEROS,
`INC.,
`
`
`
`Defendants.
`
`/
`
`SEALED ORDER
`
`This cause is before the Court on Defendants' Motion to Strike and Exclude
`
`Opinions Regarding Alleged Infringement and Validity Issues. (Does. 491,540 (the
`
`"Motion")). Plaintiff submitted a Response in Opposition. (Doe. 527). The Court
`
`heard Oral Argument on January 24, 2022, and upon due consideration,
`
`Defendants' Motion is granted.
`
`I.
`
`BACKGROUND
`
`Defendants' Motion consists of four parts in which it seeks the following: (i)
`
`to exclude a new "impedance translation" infringement theory, a new Tau off/T
`
`theory, and a new theory regarding the alleged reference potential; (2) to strike
`
`opinions that have been estopped by Parker Vision I and by the Federal Circuit's
`
`affirmance of the PTAB; (3) to strike pursuant to Daubert unreliable opinions due
`
`to the lack of testing and simulation; and (4) to strike '372 Patent infringement
`
`TCL & Hisense
`Ex. 1017
`Page 1
`
`

`

`opinions. (Doe. 540). Plaintiff has abandoned the '177 Patent and claim 107 of the
`
`'372 Patent, rendering moot the dispute over the allegedly new "impedance
`
`translation" infringement theory and the reference potential. (Does. 670, 677,
`
`14:13-17),
`
`II. DISCUSSION
`
`A.
`
`Tauoff/T
`
`Defendants move the Court to Strike Plaintiffs Tauoff/T theory, because the
`
`calculation is an infringement theory disclosed for the first time in Plaintiffs expert
`
`rebuttal report and because it lacks a sufficient scientific foundation. (Doe. 540,
`
`PP. 3-7)•
`
`i.
`
`Undisclosed Theories
`
`Defendants argue that Plaintiff cannot rely on theories disclosed for the first
`
`time in expert reports. Fed. R. Civ. P. 37(c); Finjan v. Cisco Sys., No 17-72, 2020
`
`WL 2322923, at *3 (N.D. Cal. May 11, 2020) ("It is well settled that expert reports
`
`may not introduce theories not set forth in contentions." (internal quotations,
`
`brackets, citation omitted)). The prejudicial effect of asserting a new infringement
`
`theory after discovery has closed is beyond dispute. See Klaus Tech v. Google, No.
`
`10-5899, 2018 WL 5109383, at *8 (N.D. Cal. Sept. 14, 2018). This is because the
`
`purpose of infringement contentions is to place Defendants on notice of Plaintiffs
`
`infringement theories. Auburn Univ. v. Intl Bus. Machs., Corp., 864 F. Supp. 2d
`
`1222, 1227 (M.D. Ala. 2012). Plaintiff contends the Tauoff/T theory is not an
`
`infringement theory and is offered to rebut the Defendants' validity contentions.
`
`2
`
`TCL & Hisense
`Ex. 1017
`Page 2
`
`

`

`(Doe. 677, 30:17-19, 32:23-33:2, 33:4-7). Therefore, Plaintiff does not seek to
`
`excuse the late disclosure of new theories. Outside the Box Innovations, LLC v.
`
`Travel Caddy, Inc., No. 1:05-CV-02482, 2008 WL 11337316, at *2 (M.D. Ga. Aug.
`
`26, 2008) (party seeking to amend infringement contentions after discovery of
`
`new evidence must be diligent). And it is undisputed that the calculation did not
`
`appear in Plaintiffs expert's initial report on its infringement contentions. (Doc.
`
`527, P. 3). As a result, the issue of timeliness concerns whether the Tauoff/T theory
`
`disclosed in the rebuttal report of Plaintiffs expert serves as an infringement
`
`theory or simply as a response to Defendants' prior art references.
`
`Defendants' counsel described the Tauoff/T calculation at oral argument as
`
`taking Tau-off and dividing it by T, then the relative value is used to decide whether
`
`something is a voltage sampler or an energy sampler. (Doc. 677, 15:8-11).
`
`Defendants argued that "according to ParkerVision . . . if something is an energy
`
`sampler. . . it falls within the claim [and infringes], and if something is a voltage
`
`sampler.. . it falls outside the claims." (Id. 15: ii—i6). And so, Plaintiff is using "this
`
`Tau-off over T theory to tell us what falls within what we've now defined as their
`
`receiver claims or what falls outside what we've defined as the receiver claims." (Id.
`
`15:17-20).
`
`Plaintiff agrees that the Tauoff/T theory was not disclosed in their expert's
`
`infringement report, and it does not intend to offer Tauoff/T for infringement. (Id.
`
`30:16-19, 31:11-13). Rather, Plaintiff contends the theory is offered to distinguish
`
`Defendants' prior art references because Tauoff/T will be used to show the prior art
`
`3
`
`TCL & Hisense
`Ex. 1017
`Page 3
`
`

`

`does not "show, teach, or disclose sufficient discharged in the capacitor to the
`
`load." (Id. 33:5-11). This is important because one of the claim limitations "is
`
`whether the capacitor discharges energy to a load, and that has to occur between
`
`samples." (Id. 32:4-6). Plaintiff claims "Tau measures the rate of discharge of the
`
`capacitor. If we compare it to the time between samples, then we know how much
`
`energy would be discharged compared to other, you know, types of circuits, and so
`
`it's directly responsive to arguments about that limitation." (Id. 32:23-33:2).
`
`Therefore, Tau0ff/T is offered to prove that Defendants' prior "art fails because it
`
`doesn't discharge from the capacitor to the load." (Id. 47:7-9).
`
`Defendants assert that Plaintiff is using Tauoff/T as an infringement theory
`
`and as a validity theory. (Id. 19:17-18). This prompted the Court to ask Plaintiffs
`
`counsel if he was willing to stipulate Tauoff/T will not be used to prove an accused
`
`product or device infringes. (Id. 31:9-10). Plaintiff provided this response:
`
`But, Your Honor, just to be clear, to the extent
`Ql.JALCOMM's expert testifies to the extent the accused
`products satisfy this limitation, then [the prior art
`reference] Sevenhans satisfies this limitation. I think it's
`fair for Parkervision to be able to use commonly
`understood principles of circuit components to show,
`well, in fact, if you do the math, the prior art behaves
`different from the accused products, and that would be
`directly responsive to QUALCOMM's expert's arguments
`on invalidity in that case.
`
`(Id. 31:14-21).
`
`Simply put, Plaintiff reserves the right to use the Tauoff/T calculation to show the
`
`prior art is a voltage sampler that does not teach the invention, including by first
`
`applying the calculation to prove the accused product is an energy sampler, which
`
`4
`
`TCL & Hisense
`Ex. 1017
`Page 4
`
`

`

`happens to also prove infringement. Defendants object to the calculation, first
`
`disclosed in a rebuttal expert report, from being used to prove an accused product
`
`infringes. (Id. 54:17-21). The prejudice to allowing a new infringement theory after
`
`the close of discovery and the creation of expert reports is obvious. ,
`
`To the extent Plaintiffs expert would use Tau0ff/T to offer an opinion on
`
`whether an accused product is an energy sampler or a voltage sampler, and thus
`
`infringes a patent-in-suit, the theory should have been disclosed in Plaintiffs
`
`infringement contentions and initial expert disclosure. It is of little comfort to
`
`Defendants that the infringement theory is cloaked in an argument that also
`
`attacks the Defendants' validity contention. 2 As discussed in the following section,
`
`the Court finds the Tau0ff/T theory does not satisfy Daubert and should be
`
`excluded both on the failure to disclose the theory in a timely manner and due to
`
`its lack of reliability.
`
`2.
`
`Daubert
`
`Federal Rule of Evidence 702 permits "[a] witness who is qualified as an
`
`expert by knowledge, skill, experience, training, or education" to testify in the form
`
`of an opinion. Rule 702 imposes an obligation on district courts to act as
`
`Plaintiff submits that its response to Defendants' Interrogatory Number 7, which asks Plaintiff
`how it distinguishes prior art, provided notice of the Tauocf/T theory. (Doc. 677, 33:4-14). The
`Court disagrees that the general assertion that "the prior art doesn't. . . teach. . . sufficient
`discharge in the capacitor to the load" provided notice of the Tauorr/T theory or how it would
`be applied to the accused products.
`
`2 The Court notes that in his rebuttal report Plaintiffs expert, Dr. Allen, calculated the Tau0g/T
`values for prior art circuits, two of the Plaintiffs products, and one of the accused products.
`(Doc. 542, ¶ 16).
`
`5
`
`TCL & Hisense
`Ex. 1017
`Page 5
`
`

`

`gatekeepers "to ensure that speculative, unreliable expert testimony does not reach
`
`the jury" under the mantle of reliability that accompanies "expert testimony."
`
`McCorvey v. Baxter Healthcare Corp., 298 F.3d 1253, 1256 (uth Cir. 2002); see
`
`Daithert v. Merrell Dow Pharms., Inc., 509 U.S. 579,589 (1993). This gatekeeping
`
`role applies "not only to testimony based on 'scientific' knowledge, but also to
`
`testimony based on 'technical' and 'otherwise specialized' knowledge." Kumho Tire
`
`Co., Ltd. v. Carmichael, 526 U.S. 137,141, 147-48 (1999).
`
`The party offering an expert opinion has the burden of establishing three
`
`criteria by a preponderance of the evidence: qualification, reliability, and
`
`helpfulness. See McClain v. Metaboljfe Intl, Inc., 401 F.3d 1233, 1238 (uth Cir.
`
`2005); Rink v. Cheminova, Inc., 400 F.3d 1286, 1292 (iith Cit. 2005). First, the
`
`witness must be "qualified to testify competently regarding the matters [s]he
`
`intends to address." Rink, 400 F.3d at 1291. Indicia of an expert's qualifications
`
`may be evidenced by education, training, work experience, publication in the
`
`pertinent field, and membership in professional societies. See Am. Tech. Res. v.
`
`United States, 893 F.2d 651, 66 (3d Cir. 1990).
`
`Second, the expert witness must employ "sufficiently reliable" scientific
`
`methods or principles to form her opinions. Rink, 400 F.3d at 1291. The reliability
`
`of an expert's methodology can be evaluated by considering a wide range of factors,
`
`including: (i) whether the expert bases her opinion on sufficient facts or data; (2)
`
`whether the expert unjustifiably extrapolates her research to reach an unfounded
`
`conclusion; () whether the expert considers or accounts for contradictory studies
`
`6
`
`TCL & Hisense
`Ex. 1017
`Page 6
`
`

`

`or data; (4) the extent to which the methods used rely on the expert's subjective
`
`interpretations; and () whether the expert is being as careful as an expert in the
`
`same field would be in conducting professional work outside the context of paid
`
`litigation. See Daubert, 509 U.S. at 593 -94; FED. R. EviD. 702 advisory committee
`
`notes to 2000 amendments.
`
`Third, the expert's testimony must "assist the trier of fact to understand the
`
`evidence or to determine a fact in issue." Daubert, 509 U.S. at 591. Expert
`
`testimonytheips where it concerns matters beyond the ken of the average juror and
`
`will allow:the jury to understand the evidence or to resolve a factual dispute. See
`
`Kumho Tire, 526 U.S. at 148-49. Conversely, there will be no need for an expert's
`
`opinion where the jury can decide a disputed issue through the application of
`
`common sense or simple logic considering the evidence and testimony presented
`
`at trial. See Dhillon v. Crown Controls Corp., 269 F.3d 865, 871 (7th Cir. 2001).
`
`Further, like all evidence and testimony, an expert's opinion must be relevant to
`
`an issue in the case and must hold probative value that outweighs the concerns
`
`listed in Rule 403. Daubert, 509 U.S. at 591.
`
`Defendants challenge the scientific basis behind the Tauoff/T calculation.
`
`(Doc. 540, P. ). They argue Plaintiff "offers no scientific support for the contention
`
`that a person of ordinary skill in the art can differentiate between 'energy sampler'
`
`circuits and 'voltage sampler' circuits by calculating what ParkerVision's expert
`
`calls 'Tauofr/T' calculations." (Id.). Defendants assert that Plaintiff fails to cite "a
`
`single journal article, book, or other piece of scientific literature supporting the use
`
`7
`
`TCL & Hisense
`Ex. 1017
`Page 7
`
`

`

`of 'Tauoff/T' calculations." (Id. at p. 6). Moreover, Defendants note the patents-in-
`
`suit do not discuss the Tau0ff/T calculations. (Id.).
`
`Defendants explain that Dr. Allen developed the theory using Tauoff/T
`
`calculations to determine whether a circuit is an energy sampler or a voltage
`
`sampler. (Doc. 677, 22:19-23:1). Applying Doubert to this opinion, Defendants
`
`argue the Plaintiff has failed to demonstrate the theory has been subject to peer
`
`review or publication, does not provide the potential rate of error, and fails to "link
`
`Tau-off over T as a calculation to whether or not something is a voltage sampler or
`
`an energy sampler."3 (Id. 23:2-11, 23:21-24:1). And Defendants submit Plaintiff
`
`failed to perform simulations in support of its theory. See Becton, Dickinson & Co.
`
`v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1257 (Fed. Cir. 2010) (holding plaintiff
`
`failed to prove literal infringement by not producing test data or a live
`
`demonstration).
`
`Defendants further contend the theory lacks reliability, because Plaintiffs
`
`experts disagree over whether one should use a 75% off period or a 25% off period
`
`when performing the calculation. (Doc. 540, p. 6). Dr. Allen, who first devised
`
`Tauoff/T as a calculation for discerning circuits as either voltage sampler from
`
`energy sampler, used a 25% off time in his calculation and admitted at deposition
`
`that he should have used a 75% off time. (Doc. 677, 25:13-23).4 Dr. Allen was
`
`3 Defendants admit that the "RC time constant Tau was known" and "that time was known,"
`(Doe. 677, 23:14-15). However, Defendants aver there is no evidence showing the calculation
`written as Tau over T. (Id. 23:15-17).
`
`4 Mien Deposition (Doe. 527-13, 360:2-10).
`
`8
`
`TCL & Hisense
`Ex. 1017
`Page 8
`
`

`

`replaced by Dr. Steer who disagreed with Dr. Allen and opined the correct Tau-off
`
`time is 25%, (Id. 26:1—fl). Defendants note that when Tauoff/T is applied to
`
`circuits which Plaintiff has previously characterized as energy samplers, (Doc. 327,
`
`pp. 15-16), the calculation shows them to be voltage circuits, further calling the
`
`reliability of the theory into question. 6 (Id. 18:14-19:5).
`
`Plaintiff tries to salvage the Tau0ff/T theory by arguing that the calculation is
`
`"textbook." (Doe. 527, pp. 4-5). Plaintiff submits that the "RC time constant Tau
`
`is expressed in seconds and relates to the time required to charge or discharge the
`
`capacitor through the resistance." (Ed. at P.
`
`). Plaintiff further argues that
`
`Defendants' expert, Dr. Razavi, states in his report that "accurate mathematical
`
`models can be created for all common circuit components," including "resistors,
`
`capacitors, and transistors." (Doe. 677, 29:17-20). Dr. Razavi's report, however, is
`
`discussing the computer simulations he performed of circuits disclosed in the prior
`
`art, described in the patents, and the accused products. (Doc. 533, 139). In that
`
`context, Dr. Razavi describes how mathematical models of a component in a circuit
`
`simulation can describe performance characteristics of the component. (Ed.).
`
`S Plaintiff claims the disagreement between Dr. Allen and Dr. Steer is not about methodology
`or reliability, but the Court disagrees, especially where the calculation as applied contradicts
`the embodiments disclosed in the patent.
`
`6 Figure 126A, 127A, and 129A have a Taug/T value of 4040.00, well over the threshold set by
`Dr. Allen for voltage sampler circuits. (See Slide 25, Qualcomm Presentation; Razavi Deel.
`Doc. 542, IN 32-34, 37-39). A value over 200 and the circuit does not qualify as an energy
`sampler. (Doc. 540, P. 7).
`
`9
`
`TCL & Hisense
`Ex. 1017
`Page 9
`
`

`

`Dr. Razavi does not opine that Tau0ff/T calculations reliably create a value
`
`above which a circuit is a voltage sampler and below which it is an energy sampler.
`
`As Defendants correctly observe, Plaintiff fails to offer a single scientific
`
`publication, test, or simulation that shows its Tau0ff/T calculation reliably
`
`differentiates between an energy sampler and a voltage sampler.7 The jury will be
`
`left with a credentialed expert offering the opinion that a calculation over 200 is a
`
`voltage sampler circuit without independent data supporting the reliability of the
`
`opinion.
`
`Simply put, the issue is not whether Tauoff/T is a recognized equation.
`
`Rather, the dispute is over the application of the calculation to distinguish circuits
`
`as energy samplers or voltage samplers. As Dr. Razavi states in his declaration, the
`
`numerical value proposed by Dr. Allen and Dr. Steer is arbitrary and is not
`
`supported by intrinsic or extrinsic evidence. (Doc. 542, ¶ 24). See MidAmerica C2L
`
`Inc. v. Siemens Energy, Inc., No. 20-11266, 2022 WL 456830, at *9 (nth Cir.
`
`2020) ("Something [does not] become 'scientific knowledge' just because [it is]
`
`uttered by a scientist; nor can an expert's self-serving assertion that his conclusions
`
`were derived by the scientific method be deemed conclusive." (citations omitted)).
`
`Accordingly, Plaintiff has failed to provide a reliable basis for its Tauoff/T theory,
`
`and Defendants' Motion to exclude the Tauoff/T theory is granted.
`
`7 See Declaration of Dr. Razavi (Doc. 542, ¶ 21).
`
`10
`
`TCL & Hisense
`Ex. 1017
`Page 10
`
`

`

`B.
`
`Collateral Estoppel
`
`1.
`
`Preclusive Effect of Factual Findings at the Board and
`Affirmed by the Federal Circuit
`
`The issue before the Court is whether factual findings regarding the
`
`teachings of prior art that were necessary to the judgement entered by the PTAB
`
`on the TPR petitions and affirmed by the Federal Circuit have preclusive effect such
`
`that Plaintiffs expert witnesses are prohibited from offering opinions that
`
`contradict the factual findings. The issue is complicated by the fact that the IPR
`
`petitions brought by Qualcomm challenge the validity of apparatus and method
`
`claims of the '940 patent. See Parker Vision, Inc. v. Qualcomm Inc., 903 F.3d 1354,
`
`1357-58 (Fed. Cir. 2018). The Board found certain apparatus claims of the '940
`
`patent were obvious and therefore unpatentable, and the judgment was affirmed
`
`by the Federal Circuit. Id. at 1359. There is no dispute over the preclusive effect of
`
`the Board's invalidity determinations that were affirmed by the Federal Circuit.
`
`The Board, however, found Qualcomm failed to prove invalidity of certain
`
`method claims of the '940 patent, because they "d[id] not speak to whether a
`
`person of ordinary skill in the art would have any reason" to combine the teachings
`
`of the prior art referenced to achieve the claimed invention. Id. at 1363. The
`
`Federal Circuit explained the distinction between proving invalidity when
`
`challenging an apparatus claim as opposed to a method claim, as follows:
`
`While Qualcomm was only required to identify a prior art
`reference that discloses an apparatus "capable of' performing
`the recited functions to prove that the apparatus claims would
`have been obvious, more was required with respect to the
`method claims. Specifically, Qualcomm needed to present
`
`11
`
`TCL & Hisense
`Ex. 1017
`Page 11
`
`

`

`evidence and argument that a person of ordinary skill would
`have been motivated to operate Nozawa [the prior art
`reference] in a manner that satisfied the. . . [claim] limitation.
`
`Id.
`
`Therefore, the Board made factual findings regarding what Qualcomm's prior art
`
`references disclose or teach, finding fault only with Qualcomm's failure to
`
`demonstrate that a person having ordinary skill in the art ("PHOSITA") would
`
`have any reason to operate or combine the prior art in a manner that satisfied the
`
`limitation. Id.
`
`Defendants submit the Federal Circuit's factual findings regarding what the
`
`prior art is "capable of' performing has preclusive effect such that Plaintiffs
`
`experts should be prevented from offering opinions contrary to those findings.
`
`(Doc. 677, 85:9-86:8). Defendants concede that Plaintiffs expert should be
`
`permitted to offer opinions on whether a PHOSITA would be motivated to use the
`
`prior art to accomplish that which it is "capable of' doing without relitigating
`
`factual findings regarding what the prior art teaches. (Id.). Plaintiff counters that
`
`collateral estoppel or preclusion of an issue or fact does not apply because a
`
`different burden of proof applies before the Board then at trial. (Doc. 527, P. 9;
`
`Doc. 677,83:10-19). Moreover, Plaintiff submits the factual findings by the Board,
`
`affirmed by the Federal Circuit, should not extend to the '372 patent, because the
`
`claim limitations are different. 8 (Doc. 677, 79:10-80:3).
`
`Plaintiffs argument distinguishing the claim terms in the '940 and '372 patents were not
`raised in their brief and was presented for the first time at the hearing.
`
`19
`
`TCL & Hisense
`Ex. 1017
`Page 12
`
`

`

`2.
`
`Standard of Review
`
`To apply collateral estoppel or issue preclusion to an issue or fact, the
`
`proponent must demonstrate the following:
`
`(i) the issue or fact is identical to the one previously litigated;
`(2) the issue or fact was actually resolved in the prior
`proceeding; (j) the issue or fact was critical and necessary to
`the judgment in the prior proceeding; (4) the judgment in the
`prior proceeding is final and valid; and () the party to be
`foreclosed by the prior resolution of the issue or fact had a full
`and fair opportunity to litigate the issue or fact in the prior
`proceeding.
`
`See In re Microsoft Corp. Antitrust Litig., 355 F.3d 322, 326 (4th Cir. 2004).
`
`As the Fourth Circuit explained, the doctrine of "collateral estoppel" or "issue
`
`preclusion" is a subset of the res judicata genre. Applying collateral estoppel
`
`"forecloses the relitigation of issues of fact or law that are identical to issues which
`
`have been actually determined and necessarily decided in prior litigation in which
`
`the party against whom [collateral estoppel] is asserted had a full and fair
`
`opportunity to litigate." Id. at 326 (citing Sedlack v. Braswell Servs. Group,
`
`Inc., 134 F.3d 219, 224 (4th Cir. 1998) (internal quotation marks and citation
`
`omitted)). To foreclose relitigation of a factual finding it must have been "essential
`
`to the judgment,' meaning that the judgment must be 'dependent upon the
`
`determinations." Id. (citing RESTATEMENT (SECOND) OF JUDGMENTS § 27 & cmt. h
`
`(1982)).
`
`Narrowing the focus of issue preclusion and collateral estoppel to patent
`
`litigation, the Federal Circuit held in XY v. Trans Ova Genetics, 890 F.3d 1282,
`
`1294 (Fed. Cir. 2018) that "an affirmance of an invalidity finding, whether from the
`
`13
`
`TCL & Hisense
`Ex. 1017
`Page 13
`
`

`

`district court or the PTAB has a collateral estoppel effect on all pending or co-
`
`pending actions." This is because "a patentee, having been afforded the
`
`opportunity to exhaust his remedy of appeal from a holding of invalidity, has had
`
`his 'day in court,' and a defendant should not have to continue 'defend[ing] a suit
`
`of infringement of [an] adjudged invalid patent." Ed. (citations omitted); cf. Papst
`
`Licensing GMGH& Co. v. Samsung, 403 F. Supp. 3d 571, 601-602 (E.D. Tex. 2019)
`
`(declining to give preclusive effect to a finding of invalidity by the PTAB where
`
`finding was not appealed to the Federal Circuit).
`
`In B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015), the
`
`Supreme Court addressed the preclusive effect of the Trademark Trial and Appeal
`
`Board's ("TTAB") conclusion that a mark should not be registered because the
`
`likelihood of confusion.9 The Court held that its cases and the Restatement
`
`(Second) of Judgments "make clear that issue preclusion is not limited to those
`
`situations in which the same issue is before two courts. Rather, where a single issue
`
`is before a court and an administrative agency, preclusion also often applies." Id.
`
`at 148. The Court concluded it "does not matter that the nAB and the Eighth
`
`Circuit use different factors to assess likelihood of confusion," because "[mjinor
`
`variations in the application of what is in essence the same legal standard do not
`
`defeat preclusion." rd. at 154.
`
`9 The decision of the TI'AB was not appealed to the Federal Circuit.
`
`14
`
`TCL & Hisense
`Ex. 1017
`Page 14
`
`

`

`3.
`
`Discussion
`
`In the instant case, Defendants asserted prior art reference to invalidate
`
`certain method claims of the '940 patent. The Board made factual findings
`
`concerning the teachings of the prior art, and those findings were critical and
`
`necessary to the Board's judgment that Qualcomm failed to carry the burden of
`
`proving invalidity. 10 The Board's judgment was appealed and was affirmed by the
`
`Federal Circuit, and Plaintiff had a full and fair opportunity to dispute Defendants'
`
`contentions regarding what the prior art was capable of doing; that is, what the
`
`prior art teaches. Accordingly, Plaintiffs expert may not offer opinions at trial that
`
`contradict the Board's factual findings on what the prior art teaches. See In re
`
`Microsoft Corp., 355 F.3d at 326. Nor may Plaintiffs experts contest at trial the
`
`Board's findings of invalidity which were affirmed on appeal. See Trans Ova
`
`Genetics, 890 F.3d at 1294. Plaintiffs expert, however, may offer opinions that a
`
`PHOSITA would not be motivated to use the prior art to accomplish that which it
`
`is "capable of" doing when discussing claims that were not invalidated by the Board
`
`and the Federal Circuit. 11 For these reasons, Defendants' Motion is granted.
`
`10 For example, the Federal Circuit affirmed the Board's factual finding that Nozawa discloses a
`plurality of integer-multiple harmonics, and Krauss and Ariie disclose a "first oscillating
`signal." Qualcomm Inc., 903 F.3d at 1360-61, 1364.
`
`11 The Court recognizes the burden of proof before the PTAB is lower than the burden
`Defendants carry at trial proving invalidity. As to claims invalidated by the PTAB and affirmed
`on appeal, the judgment has preclusive effect for the reasons discussed in this Order. As for
`factual findings regarding the teachings of prior art references where the Board found
`Qualcomm failed to prove invalidity, the Court finds there is no rational basis for disregarding
`the Board's determination, affirmed on appeal, simply because the finding is as to an element
`of the defense.
`
`15
`
`TCL & Hisense
`Ex. 1017
`Page 15
`
`

`

`The parties shall meet and confer in an attempt to reach agreement on the
`
`Board's factual findings regarding what the prior art teaches and the impact on
`
`Plaintiffs experts' testimony. If agreement cannot be reached, the parties may
`
`submit briefs on the issue no later than May 2, 2022, with responses due by May
`
`i6, 2022.
`
`C. PARKERVISION I
`
`The issue is whether factual findings by the Federal Circuit in Parker Vision,
`
`Inc. v. Qualcomm Inc., 621 F. App'x 1009 (Fed. Cir. 2015) (hereafter "Parker Vision
`
`1"), following a trial in the Middle District of Florida concerning how the accused
`
`devices function and interpreting two prior art references, are entitled to
`
`preclusive effect. Defendants move the Court for an Order preventing Plaintiffs
`
`new expert, Dr. Steer, from offering opinions inconsistent with positions taken by
`
`Plaintiffs former expert, Dr. Prucnal, and contrary to the factual findings
`
`articulated by the Federal Circuit. 12 (Doc. 540, pp. 13-15). Plaintiff argues the
`
`factual findings are not entitled to preclusive effect because different claims and
`
`different patents are at issue here, such that the issues of law or fact were not
`
`actually litigated in Parker Vision L (Doc. 527, pp. 9-12). The Court disagrees that
`
`the issue of fact preclusion as it relates to the accused devices or products and the
`
`Federal Circuit's interpretation of the prior art is inapplicable simply because
`
`12 Plaintiff does not deny that Dr. Steer intends to offer, if permitted, opinions regarding the
`manner in which the accused devices function that contradicts the factual findings made by
`the Federal Circuit. (Doe. 527, P. 9). Similarly, Plaintiff acknowledges its expert will take issue
`with the teachings of DeMaw and Weisskopf (the prior art). (Id. at pp. io—n).
`
`16
`
`TCL & Hisense
`Ex. 1017
`Page 16
`
`

`

`different patents and additional claim limitations are present. If Defendants were
`
`asking this Court to give preclusive effect to the Federal Circuit's factual findings
`
`as to the scope of claims at issue in ParkerVision I, Plaintiffs point may be well-
`
`taken, assuming the claims at issue here are materially different. But that is not the
`
`case. '3
`
`1.
`
`The Accused Devices
`
`In ParkerVision .1, "Dr. Prucnal's testimony focused on Qualcomm's
`
`Magellan product, but he testified that his opinion regarding the Magellan product
`
`applied to -each of Qualcomm's accused products." ParkerVision 1, 621 F. App'x at
`
`1012. Plaintiff stipulated at oral argument that the accused products involved here
`
`are same as those involved in ParkerVision I. (Doc. 677, 98:3-6, 98:19-99:2). On
`
`appeal, the Federal Circuit discussed in depth the expert testimony adduced at trial
`
`regarding how the accused devices function in reviewing the district court's
`
`decision to grant Qualcomm's motion for judgment as a matter of law ("JMOL")
`
`of non-infringement and its denial of JMOL on invalidity. Id. The Federal Circuit
`
`affirmed the trial court's finding of non-infringement and reversed the denial of
`
`JMOL on invalidity. Id. at 1012, 1024.
`
`13 The standard of review is the same asset forth in section II B of this Order. See In re Microsoft
`Corp. AnHtrustLitig., 355 F.3d 322,326 (4th Cir. 2004); see also Harris Trust and Sat'. Bank
`v. Ellis, 8io P.2d 700, 705 (7th Cir. 1987) ("When one party introduces evidence on a
`dispositive issue of fact, and an adverse party with opportunity and motive to contest the
`presentation chooses not to, the ensuing finding is entitled to the same respect as one litigated
`to the hilt.").
`
`17
`
`TCL & Hisense
`Ex. 1017
`Page 17
`
`

`

`The Federal Circuit made the following findings of fact each of which was
`
`critical and necessary to the judgment rendered: (i) "ParkerVision's infringement
`
`expert conceded that in the accused produces the baseband signal was created
`
`before, or 'upstream from,' the storage capacitor"; (2) "Dr. Prucnal testified that
`
`the accused products. [use] a specific type of circuitry called a 'double-balanced
`mixer"; () "[ut is undisputed that double-balanced mixers . . . can be used to
`
`convert high-frequency carrier signals into low-frequency baseband signals"; (4)
`
`Dr. Prucnal admitted "the double-balanced mixer create the baseband signal"; and
`
`() in its opinion on ParkerVision's motion for reconsideration, held the double-
`
`balanced mixer eliminates the carrier signal. See ParkerVision I, 621 F. App'x at
`
`1012-14; ParkerVision I, 627 F. App'x at 921-24.
`
`The Court finds the issue of fact here—how the accused products operate—
`
`is identical to the issue of fact in ParkerVision I, the issue of fact was resolved in
`
`ParkerVision I, the issue of fact was critical and necessary to the judgment in the
`
`prior proceeding, the judgment in the prior proceeding is final and valid; and the
`
`party to be foreclosed by the prior resolution of the issue or fact—ParkerVision—
`
`had a full and fair opportunity to litigate the issue or fact in the prior proceeding.
`
`Accordingly, the issues of fact decided in ParkerVision I are entitled to preclusive
`
`effect, and ParkerVision may not offer testimony or argument to contradict or
`
`rebut those factual findings.
`
`18
`
`TCL & Hisense
`Ex. 1017
`Page 18
`
`

`

`2.
`
`The Prior Art References
`
`In Parker Vision I, the Federal Circuit found DeMaw discloses a circuit that
`
`includes two transistors that qualify as switches, and these switches control the
`
`charging and discharging of two energy storage capacitors to generate the
`
`baseband signal. Parker Vision I, 621 F. App'x at 1022-24. The Federal Circuit
`
`found "the transistors designated as Qi. and Q2 in DeMaw correspond to the first
`
`and second switches in Figure i6H." ParkerVision I, 621 F. App'x at 1022.
`
`Moreover;•the Federal Circuit observed that "Dr. Razavi testified that 'charging and
`
`discharging of the first and second capacitors' occurs when the first and second
`
`switches (Qi and Q2) 'are turned on and off at a certain rate." Id. at 1023.
`
`Therefore, the Federal Circuit held,= "[b]ecause there is no basis on which a
`
`reasonable jury could reject the evidence the DeMaw anticipated claim 18 of the
`
`'342 patent, we reverse the district court's denial of Qualcomm's motion for JMOL
`
`of invalidity regarding claim i8." Id. The Federal Circuit's interpretation of DeMaw
`
`was critical and necessary to the judgment.
`
`Plaintiff does not quarrel with the Federal Circuit's factual finding, but it
`
`argues DeMa