`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`PARKERVISION, INC.,
`
`Plaintiff,
`
`v.
`
`TCL INDUSTRIES HOLDINGS CO.,
`LTD., TCL ELECTRONICS HOLDINGS
`LTD., SHENZHEN TCL NEW
`TECHNOLOGY CO., LTD., TCL KING
`ELECTRICAL APPLIANCES
`(HUIZHOU) CO., LTD., TCL MOKA
`INT’L LTD., and TCL MOKA
`MANUFACTURING S.A. DE C.V.,
`
`Defendants.
`
` Case No. 6:20-cv-00945
`
` JURY TRIAL DEMANDED
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff ParkerVision, Inc. (“ParkerVision”), by and through its undersigned
`
`counsel, files this Complaint against Defendants TCL Industries Holdings Co., Ltd.,
`
`TCL Electronics Holding Ltd. (f/k/a TCL Multimedia Technology Holdings Ltd.),
`
`Shenzhen TCL New Technology Co., Ltd., TCL King Electrical Appliances (Huizhou)
`
`Co., Ltd., TCL Moka Int’l Ltd., and TCL Moka Manufacturing S.A. de C.V. (collectively,
`
`“TCL” or “Defendants”) for patent infringement of United States Patent Nos. 6,049,706;
`
`6,266,518; 6,580,902; 7,110,444; 7,292,835; 8,588,725; 8,660,513; 9,118,528; 9,246,736 and
`
`9,444,673 (the “patents-in-suit”) and alleges as follows:
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 1 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 2 of 44
`
`
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for patent infringement arising under the patent laws of
`
`the United States, 35 U.S.C. §§ 1 et seq.
`
`PARTIES
`
`2.
`
`Plaintiff ParkerVision is a Florida corporation with its principal place of
`
`business at 9446 Philips Highway, Jacksonville, Florida 32256.
`
`3.
`
`Defendant TCL Industries Holdings Co., Ltd. (“TCL Industries”) is a
`
`Chinese corporation with a principal place of business located at 22/F, TCL Technology
`
`Building, 17 Huifeng 3rd Road, Huizhou, Guangdong, 516000 P.R. China.
`
`4.
`
`Defendant TCL Electronics Holdings Ltd. (f/k/a TCL Multimedia
`
`Technology Holdings Ltd.) (“TCL Electronics”) is a limited liability company
`
`incorporated in the Cayman Islands with a registered address at P.O. Box 309, Ugland
`
`House, Grand Cayman, KY1-1104, Cayman Islands. TCL Electronics has a principal
`
`place of business at 7/F, Building 22E, 22 Science Park East Avenue, Hong Kong Science
`
`Park, Sha Tin, New Territories, Hong Kong.
`
`5.
`
`Defendant Shenzhen TCL New Technology Co., Ltd. (“TCL New
`
`Technology”) is a foreign corporation duly organized under the laws of the People’s
`
`Republic of China with a principal place of business located at 9/F, Building D4, TCL
`
`International E City, No. 1001, Zhongshan Park Road, Nanshan District, Shenzhen,
`
`Guangdong, 518067 P.R. China.
`
`6.
`
`Defendant TCL King Electrical Appliances (Huizhou) Co., Ltd. (“TCL
`
`King”) is a foreign corporation duly organized under the laws of the People’s Republic
`
`2
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 2 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 3 of 44
`
`
`
`of China with a principal place of business located at No. 78 Zhongkai Development
`
`Zone, Huizhou, 516006 P.R. China.
`
`7.
`
`Defendant TCL Moka Int’l Ltd. (“TCL Moka”) is a foreign corporation
`
`duly organized under the laws of Hong Kong with a principal place of business located
`
`at 7/F, Building 22E, 22 Science Park East Avenue, Hong Kong Science Park, Sha Tin,
`
`New Territories, Hong Kong.
`
`8.
`
`Defendant TCL Moka Manufacturing, S.A. de C.V. (“TCL Moka
`
`Manufacturing”) is a Mexican corporation with a principal place of business located at
`
`Camino Vecinal 2472, colonia, Canon del Padre, Tijuana Baja California.
`
`9.
`
`On information and belief, TCL Industries is a holding company and the
`
`ultimate corporate parent of Defendants TCL Electronics, TCL New Technology, TCL
`
`King, TCL Moka, and TCL Moka Manufacturing. See TCL Electronics Holding Limited
`
`Annual Report 2019 (available at
`
`https://doc.irasia.com/listco/hk/tclelectronics/annual/2019/ar2019.pdf) (Exhibit 1).
`
`3
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 3 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 4 of 44
`
`
`
`
`
`
`
`Ex. 1 at p. 134
`
`10.
`
` On information and belief, TCL Electronics is a parent of TCL’s television
`
`business group, comprising subsidiaries that manufacture, market, offer for sale, and
`
`sell television products, including the accused infringing products, in the United States,
`
`the State of Texas, and this judicial district. See, e.g.,
`
`http://electronics.tcl.com/en/about/overview.php (“[TCL Electronics] is one of the
`
`leading players in the global TV industry, and is engaged in the research and
`
`development, manufacturing and distribution of consumer electronic products.”). TCL
`
`New Technology is a “principal subsidiary” of TCL Electronics with “principal
`
`activities” of “[m]anufacture and sale of TV products.” See Ex. 1 at p. 135. TCL King is a
`
`4
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 4 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 5 of 44
`
`
`
`“principal subsidiary” of TCL Electronics with “principal activities” of “[m]anufacture
`
`and sale of TV products and trading of components.” See id. at p. 136. TCL Moka
`
`Manufacturing is a “principal subsidiary” of TCL Electronics with “principal activities”
`
`of “manufacture and sale of TV products.” See id. at p. 137. TCL Moka is a “principal
`
`subsidiary” of TCL Electronics and, on information and belief, is similarly involved in
`
`the manufacture, sale, and trading of TCL television products and components. See id.
`
`at p. 138.
`
`11. On information and belief, Defendants comprise a “vertically integrated
`
`industrial chain,” and thus act in concert to design, manufacture, sell, offer for sale,
`
`import, distribute, advertise, and/or otherwise promote the accused infringing
`
`products in the United States, the State of Texas, and this judicial district. See, e.g., Ex. 1;
`
`TCL Electronics Holding Limited Interim Report 2020 (available at
`
`https://doc.irasia.com/listco/hk/tclelectronics/interim/2020/intrep.pdf) (Exhibit 2)
`
`(“Benefitting from its leading positions in integrated supply chain, global channels,
`
`production capacity layout, hardware, software and content, TCL Electronics, as the
`
`brand driving force of the entire TCL display industry chain and a user-centric
`
`company, managed to expand its market share amid negative trend…”).
`
`12.
`
`In 2019, TCL Electronics also entered into a number of “connected
`
`transactions” with TCL Industries in furtherance of its mutual business interests and
`
`goals, including, but not limited to, (i) a Master Rental (2019-2021) Agreement; (ii) a
`
`Master Sale and Purchase (2019-2021) Agreement; and (iii) a Master Services (2019-2021)
`
`Agreement. See Ex. 1 at p. 109-110.
`
`5
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 5 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 6 of 44
`
`
`
`13. On information and belief, Defendants are operated as a single business
`
`entity and/or in concert with each other to sell, offer to sell, import, market, advertise,
`
`and/or otherwise promote TCL TVs, including the accused infringement products, in
`
`the United States, the State of Texas and this judicial district. On information and belief,
`
`the Defendants share directors, executives and/or employees. For example, Mr. Li
`
`Dongsheng is an Executive Director of TCL Electronics and a Director of TCL
`
`Industries. Ex. 1 at p. 36. Mr. Wang Cheng is the CEO and an Executive Director of TCL
`
`Electronics and the CEO of TCL Industries. Id. at p. 37.
`
`14. On information and belief, TCL Industries controls the business decisions
`
`of TCL Electronics and its subsidiaries including, but not limited to, TCL New
`
`Technology, TCL King, TCL Moka, and TCL Moka Manufacturing.
`
`JURISDICTION AND VENUE
`
`15.
`
`This Court has jurisdiction over the subject matter of this action pursuant
`
`to 28 U.S.C. §§ 1331 and 1338(a) because the action arises under the patent laws of the
`
`United States, 35 U.S.C. §§ 1 et seq.
`
`16.
`
`TCL is subject to this Court’s personal jurisdiction in accordance with due
`
`process and/or the Texas Long-Arm Statute. See Tex. Civ. Prac. & Rem. Code §§ 17.041
`
`et seq.
`
`17.
`
`This Court has personal jurisdiction over TCL because TCL has sufficient
`
`minimum contacts with this forum as a result of business conducted within the State of
`
`Texas and this judicial district. In particular, this Court has personal jurisdiction over
`
`TCL because, inter alia, TCL, on information and belief, has substantial, continuous, and
`
`6
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 6 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 7 of 44
`
`
`
`systematic business contacts in this judicial district, and derives substantial revenue
`
`from goods provided to individuals in this judicial district.
`
`18.
`
`TCL has purposefully availed itself of the privileges of conducting
`
`business within this judicial district, has established sufficient minimum contacts with
`
`this judicial district such that it should reasonably and fairly anticipate being hauled
`
`into court in this judicial district, has purposefully directed activities at residents of this
`
`judicial district, and at least a portion of the patent infringement claims alleged in this
`
`Complaint arise out of or are related to one or more of the foregoing activities.
`
`19.
`
`This Court has personal jurisdiction over TCL because TCL (directly
`
`and/or through its subsidiaries, affiliates, or intermediaries) has committed and
`
`continues to commit acts of infringement in this judicial district in violation of at least
`
`35 U.S.C. § 271(a). In particular, on information and belief, TCL uses, sells, offers for
`
`sale, imports, markets, advertises, and/or otherwise promotes the accused infringing
`
`products in the United States, the State of Texas, and this judicial district.
`
`20.
`
`TCL Electronics’ 2020 interim financial report (“2020 interim financial
`
`report”) discusses the shipment of TCL TVs in the North American markets, which
`
`includes the United States, and market share of TCL TVs in the North American
`
`markets, which includes the United States. Ex. 2 at p. 4, 7. On information and belief,
`
`sales of TCL TVs in the United States make up a majority of TCL’s revenue from the
`
`North American markets.
`
`21.
`
`The 2020 interim financial report discusses the rise in logistics costs in
`
`North American markets, which includes the United States, on information and belief,
`
`7
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 7 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 8 of 44
`
`
`
`related to TCL TVs. Id. at 16. With regard to TCL TVs, the 2020 interim financial report
`
`discusses that business in North America with low gross profit (low expenses) grew fast
`
`in the second quarter 2020. Id. at 23. The 2020 interim financial report discusses the sales
`
`volume of TCL TVs in North America, which includes the United States, for the first
`
`quarters of 2018, 2019 and 2020. Id. at 30.
`
`22.
`
` The 2020 interim financial report reports revenue from the North
`
`American market, which includes the United States, for TCL TVs in 2019 and 2020. Id. at
`
`pp. 51-52. On information and belief, this revenue includes revenue from the sales of the
`
`accused infringing products.
`
`
`
`8
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 8 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 9 of 44
`
`
`
`
`
`23.
`
`TCL Electronics’ 2019 annual financial report (“2019 financial report”)
`
`discusses market share of TCL TVs in the North American markets, which include the
`
`United States. Ex. 1 at p. 13. The 2019 financial report discusses sales volume in North
`
`America, which includes the United States, and production capacity being sufficient to
`
`9
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 9 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 10 of 44
`
`
`
`meet shipment demand in the North American markets, which include the United
`
`States. Id. at pp. 20, 22.
`
`24.
`
`The 2019 financial report reports revenue from the North American
`
`market, which includes the United States, for TCL TVs in 2018 and 2019. Id. at pp. 189-
`
`190. On information and belief, this revenue includes revenue from the sales of the
`
`accused infringing products.
`
`
`
`10
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 10 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 11 of 44
`
`
`
`
`
`25. On information and belief, TTE Technology, Inc. (d/b/a TCL North
`
`America and TCL USA) (“TCL USA”) is the exclusive distributor of TCL TVs, including
`
`the accused infringing products, in the United States, the State of Texas, and this judicial
`
`district. On information and belief, TCL USA is a wholly owned subsidiary of TCL
`
`Electronics. See Ex. 1 at p. 137.
`
`
`
`
`
`
`
`11
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 11 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 12 of 44
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Ex. 1 at p. 137
`
`26. On information and belief, TCL (directly and/or through its subsidiaries,
`
`affiliates, or intermediaries – including TCL USA) places the accused infringing
`
`products into the stream of commerce knowing they will be sold and used in the State
`
`of Texas and this judicial district. TCL televisions, for example, can be purchased
`
`through retailers throughout the State of Texas and in this judicial district including,
`
`without limitation, Best Buy, Target, Walmart, and Costco.
`
`27. On information and belief, TCL maintains control over websites accessible
`
`to residents of the State of Texas and this judicial district, through which TCL promotes
`
`and facilitates sales of the accused infringing products. For example, the website
`
`https://www.tclusa.com directs consumers in the United States, including those in the
`
`State of Texas and this judicial district, to purchase TCL infringing television systems
`
`from online stores, such as Amazon.
`
`12
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 12 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 13 of 44
`
`
`
`28.
`
`Customers can also purchase TCL infringing televisions at brick-and-
`
`mortar stores located in this judicial district. For example, and as illustrated below,
`
`customers can order TCL televisions, including the accused infringing TCL TV Model
`
`No. 40S325 (indicated by the yellow box (below)), for in-store pickup at the Best Buy in
`
`Waco, Texas (indicated by the red box).
`
`
`
`
`
`https://www.bestbuy.com/site/tcl-40-class-3-series-led-full-hd-smart-roku-
`tv/6302321.p?skuId=6302321
`
`29. Moreover, TCL has availed itself of the legal protections of the State of
`
`Texas in multiple lawsuits. For example, in Canon, Inc. v. TCL Electronics Holdings Ltd.
`
`f/k/a/ TCL Multimedia Technology Holdings, Ltd., 2-18-cv-00546 (E.D. Tex.), TCL
`
`Electronics, TCL New Technology, and TCL King were dismissed with prejudice,
`
`through an Order of the Court granting a joint motion to dismiss. In so filing a joint
`
`motion and thereafter obtaining the Order of dismissal with prejudice, TCL – through
`
`13
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 13 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 14 of 44
`
`
`
`TCL Electronics, TCL New Technology, and TCL King – purposefully availed itself to
`
`the protections, powers and resources of this State. Attached hereto as Exhibit 3 is a true
`
`and correct copy of the Order.
`
`30.
`
`TCL also availed itself of the legal protections of this State in American
`
`Patents LLC v. TCL Corp., et al., 4:18-cv-767 (E.D. Tex.), where TCL King filed
`
`counterclaims against American Patents LLC. In so doing, TCL – through TCL King –
`
`purposefully availed itself to the protections, powers, and resources of this State.
`
`Attached hereto as Exhibit 4 is a true and correct copy of TCL King’s Answer to and
`
`Counterclaims against American Patents LLC, filed on March 7, 2019.
`
`31.
`
`TCL also availed itself of the legal protections of this State in Nichia
`
`Corporation v. TCL Multimedia Technology Holdings, Ltd., 2:16-cv-1452-JRG (E.D. Tex.).
`
`TCL Electronics (using its former name, TCL Multimedia Technology Holdings, Ltd.)
`
`was dismissed, with prejudice, through an Order of the Court granting an agreed
`
`stipulation of dismissal. In so filing an agreed stipulation of dismissal and thereafter
`
`obtaining the order of dismissal with prejudice, TCL – through TCL Electronics Holding
`
`Ltd. – purposefully availed itself to the protections, powers, and resources of this State.
`
`Attached hereto as Exhibit 5 is a true and correct copy of the Order Granting Agreed
`
`Stipulation of Dismissal.
`
`32.
`
`TCL also availed itself of the legal protections of this State in Personalized
`
`Media Communications, LLC, v. TCL Corp. et al., 2:17-cv-443-JRG (E.D. Tex.), where TCL
`
`Electronics (using its former name, TCL Multimedia Technology Holdings, Ltd.) filed
`
`counterclaims against Personalized Media Communications, LLC. In so doing, TCL –
`
`14
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 14 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 15 of 44
`
`
`
`through TCL Electronics – purposefully availed itself to the protections, powers, and
`
`resources of this State. Attached hereto as Exhibit 6 is a true and correct copy of TCL
`
`Electronics’ Answer to and Counterclaims against Personalized Media
`
`Communications, LLC, filed on December 4, 2017.
`
`33.
`
`Venue is proper for all Defendants in this judicial district pursuant to 28
`
`U.S.C. §§ 1391(c) and/or 1400(b), and Brunette Mach. Works, Ltd. v. Kockum Indus., Inc.,
`
`406 U.S. 706 (1972). There is no clearly more convenient venue.
`
`BACKGROUND
`
`34.
`
`In 1989, Jeff Parker and David Sorrells started ParkerVision in
`
`Jacksonville, Florida. Through the mid-1990s, ParkerVision focused on developing
`
`commercial video cameras, e.g., for television broadcasts. The cameras used radio
`
`frequency (RF) technology to automatically track the camera’s subject.
`
`35. When developing consumer video cameras, however, ParkerVision,
`
`encountered a problem – the power and battery requirements for RF communications
`
`made a cost effective, consumer-sized product impractical. So, Mr. Sorrels and
`
`ParkerVision’s engineering team began researching ways to solve this problem.
`
`36. At the time, a decade’s-old RF technology called super-heterodyne
`
`dominated the consumer products industry. But this technology was not without its
`
`own problems – the circuity was large and required significant power.
`
`37.
`
`From 1995 through 1998, ParkerVision engineers developed an innovative
`
`method of RF direct conversion by a process of sampling a RF carrier signal and
`
`transferring energy to create a down-converted baseband signal.
`
`15
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 15 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 16 of 44
`
`
`
`38. After creating prototype chips and conducting tests, ParkerVision soon
`
`realized that its technology led to improved RF receiver performance, lower power
`
`consumption, reduced size and integration benefits. In other words, RF receivers could
`
`be built smaller, cheaper and with greater improved performance.
`
`39.
`
`ParkerVision’s innovations did not stop there. ParkerVision went on to
`
`develop additional RF down-conversion technologies, RF up-conversion technologies
`
`and other related direct-conversion technologies. ParkerVision also developed
`
`complementary wireless communications technologies that involved interactions,
`
`processes, and controls between the baseband processor and the transceiver, which
`
`improved and enhanced the operation of transceivers that incorporate ParkerVision’s
`
`down-converter and up-converter technologies. To date, ParkerVision has been granted
`
`over 200 patents related to its innovations including, the patents-in-suit.
`
`40.
`
`ParkerVision’s technology helped make today’s wireless devices, such as
`
`televisions, a reality by enabling RF chips used in these devices to be smaller, cheaper,
`
`and more efficient, and with higher performance.
`
`TCL
`
`41.
`
`TLC is a Chinese multinational electronics company headquartered in
`
`Huizhou, Guangdong Province, China. On information and belief, since at least 2014,
`
`TCL (or those acting on its behalf) has made, used, sold, offered for sale and/or
`
`imported televisions (“TCL Products”) in/into the United States.
`
`https://www.tclusa.com/about-us/press-releases/tcl-celebrates-five-years;
`
`https://www.tclusa.com/products.
`
`16
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 16 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 17 of 44
`
`
`
`42.
`
`TCL Products can be purchased through retailers throughout the United
`
`States including, without limitation, Best Buy, Target, Walmart, Costco, BJ Wholesale,
`
`B&H and PC Richards & Sons.
`
`43. On information and belief, as of 2019, TCL was the second largest brand of
`
`smart televisions in the United States. https://www.tclusa.com/about-us/press-
`
`releases/tcl-celebrates-five-years.
`
`44.
`
`TCL Products include modules (e.g., WCOHR2601) containing Wi-Fi chips
`
`including, without limitation, Realtek RT8812BU (each a “TCL Chip”; collectively, the
`
`“TCL Chips”). TCL Chips provide wireless connectivity for TCL Products.
`
`45.
`
`Below are images from a TCL television model no. 43S425 purchased from
`
`Best Buy.
`
`17
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 17 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 18 of 44
`
`
`
`
`
`
`
`18
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 18 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 19 of 44
`
`
`
`
`
`TCL Products include, without limitation, the televisions set forth below.
`
`TV Model No.
`65S427
`43S423
`55S426
`75Q825
`65R625
`55S427
`55R625
`43S525
`65S525
`55S525
`55S423
`43S421
`50S525
`50S423
`65S423
`75S425
`75R615
`32S301
`55S421
`32S325
`49S325
`
`FCC ID
`W8U65S427
`W8U43S423
`W8U55S426
`W8U75Q825
`W8U65R625
`W8U55S427
`W8U55R625
`W8U43S525
`W8U65S525
`W8U55S525
`W8U55S423
`W8U43S421
`W8U50S525
`W8U50S423
`W8U65S423
`W8U75S425
`W8U75R615
`W8U32S301
`W8U55S421
`W8U32S325
`W8U49S325
`
`19
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 19 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 20 of 44
`
`
`
`43S325
`40S325
`32S327
`32S425
`50S425
`49S425
`32S321
`65S425
`55S425
`49S403
`65S401
`43S403
`55S401
`65S517
`55S517
`65R613
`55R613
`49S517
`43S517
`75C807
`49S303
`43S303
`40S303
`28S303
`32S303
`55C807
`65C807
`
`
`W8U43S325
`W8U40S325
`W8U32S327
`W8U43S425
`W8U50S425
`W8U49S425
`W8U32S321
`W8U65S425
`W8U55S425
`W8U49S403
`W8U65S401
`W8U43S403
`W8U55S401
`W8U65S517
`W8U55S517
`W8U65R613
`W8U55R613
`W8U49S517
`W8U43S517
`W8U75C807
`W8U49S303
`W8U43S303
`W8U40S303
`W8U28S303
`W8U32S303
`W8U55C807
`W8U65C807
`
`THE ASSERTED PATENTS
`
`United States Patent No. 6,049,706
`
`46. On April 11, 2000, the United States Patent and Trademark Office duly
`
`and legally issued United States Patent No. 6,049,706 (“the ’706 patent”) entitled
`
`“Integrated Frequency Translation and Selectivity” to inventor Robert W. Cook et al.
`
`The ’706 patent is presumed valid under 35 U.S.C. § 282.
`
`20
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 20 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 21 of 44
`
`
`
`47.
`
`The ’706 patent is presumed valid under 35 U.S.C. § 282.
`
`48.
`
`ParkerVision owns all rights, title, and interest in the ’706 patent.
`
`United States Patent No. 6,266,518
`
`49. On July 24, 2001, the United States Patent and Trademark Office duly and
`
`legally issued United States Patent No. 6,266,518 (“the ’518 patent”) entitled “Method
`
`and System for Down-Converting Electromagnetic Signals by Sampling and Integrating
`
`Over Apertures” to inventor David F. Sorrells et al.
`
`50.
`
`The ’518 patent is presumed valid under 35 U.S.C. § 282.
`
`51.
`
`ParkerVision owns all rights, title, and interest in the ’518 patent.
`
`United States Patent No. 6,580,902
`
`52. On June 17, 2003, the United States Patent and Trademark Office duly and
`
`legally issued United States Patent No. 6,580,902 (“the ’902 patent”) entitled “Frequency
`
`Translation Using Optimized Switch Structures” to inventor David F. Sorrells et al.
`
`53.
`
`The ’902 patent is presumed valid under 35 U.S.C. § 282.
`
`54.
`
`ParkerVision owns all rights, title, and interest in the ’902 patent.
`
`United States Patent No. 7,110,444
`
`55. On September 19, 2006, the United States Patent and Trademark Office
`
`duly and legally issued United States Patent No. 7,110,444 (“the ’444 patent”) entitled
`
`“Wireless Local Area Network (WLAN) Using Universal Frequency Translation
`
`Technology Including Multi-Phase Embodiments and Circuit Implementations” to
`
`inventor David F. Sorrells et al.
`
`56.
`
`The ’444 patent is presumed valid under 35 U.S.C. § 282.
`
`21
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 21 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 22 of 44
`
`
`
`57.
`
`ParkerVision owns all rights, title, and interest in the ’444 patent.
`
`United States Patent No. 7,292,835
`
`58. On November 6, 2007, the United States Patent and Trademark Office
`
`duly and legally issued United States Patent No. 7,292,835 (“the ’835 patent”) entitled
`
`“Wireless and Wired Cable Modem Applications of Universal Frequency Translation
`
`Technology” to inventor David F. Sorrells et al.
`
`59.
`
`The ’835 patent is presumed valid under 35 U.S.C. § 282.
`
`60.
`
`ParkerVision owns all rights, title, and interest in the ’835 patent.
`
`United States Patent No. 8,588,725
`
`61. On November 19, 2013, the United States Patent and Trademark Office
`
`duly and legally issued United States Patent No. 8,588,725 (“the ’725 patent”) entitled
`
`“Apparatus, System, and Method For Down Converting and Up-Converting
`
`Electromagnetic Signals” to inventor David F. Sorrells et al.
`
`62.
`
`The ’725 patent is presumed valid under 35 U.S.C. § 282.
`
`63.
`
`ParkerVision owns all rights, title, and interest in the ’725 patent.
`
`United States Patent No. 8,660,513
`
`64. On February 25, 2014, the United States Patent and Trademark Office duly
`
`and legally issued United States Patent No. 8,660,513 (“the ’513 patent”) entitled
`
`“Method and System for Down-Converting an Electromagnetic Signal, and Transforms
`
`for Same, and Aperture Relationships” to inventor David F. Sorrells et al.
`
`65.
`
`The ’513 patent is presumed valid under 35 U.S.C. § 282.
`
`66.
`
`ParkerVision owns all rights, title, and interest in the ’513 patent.
`
`22
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 22 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 23 of 44
`
`
`
`United States Patent No. 9,118,528
`
`67. On August 25, 2015, the United States Patent and Trademark Office duly
`
`and legally issued United States Patent No. 9,118,528 (“the ’528 patent”) entitled
`
`“Method and System for Down-Converting an Electromagnetic Signal, and Transforms
`
`for Same, and Aperture Relationships” to inventor David F. Sorrells et al.
`
`68.
`
`The ’528 patent is presumed valid under 35 U.S.C. § 282.
`
`69.
`
`ParkerVision owns all rights, title, and interest in the ’528 patent.
`
`United States Patent No. 9,246,736
`
`70. On January 26, 2016, the United States Patent and Trademark Office duly
`
`and legally issued United States Patent No. 9,246,736 (“the ’736 patent”) entitled
`
`“Method and System for Down-Converting an Electromagnetic Signal” to inventor
`
`David F. Sorrells et al.
`
`71.
`
`The ’736 patent is presumed valid under 35 U.S.C. § 282.
`
`72.
`
`ParkerVision owns all rights, title, and interest in the ’736 patent.
`
`United States Patent No. 9,444,673
`
`73. On September 13, 2016, the United States Patent and Trademark Office
`
`duly and legally issued United States Patent No. 9,444,673 (“the ’673 patent”) entitled
`
`“Methods and Systems for Down-Converting a Signal Using a Complementary
`
`Transistor Structure” to inventor David F. Sorrells et al.
`
`74.
`
`The ’673 patent is presumed valid under 35 U.S.C. § 282.
`
`75.
`
`ParkerVision owns all rights, title, and interest in the ’673 patent.
`
`23
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 23 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 24 of 44
`
`
`
`CLAIMS FOR RELIEF
`
`COUNT I - Infringement of United States Patent No. 6,049,706
`
`76.
`
`The allegations set forth above are re-alleged and incorporated by
`
`reference as if they were set forth fully here.
`
`77.
`
`TCL directly infringes (literally and/or under the doctrine of equivalents)
`
`the ’706 patent by making, using, selling, offering for sale, and/or importing in/into
`
`the United States products covered by at least claim 1 of the ’706 patent.
`
`78.
`
`TCL products that infringe one or more claims of the ’706 patent include,
`
`but are not limited to, the TCL Products and any other TCL device that is capable of
`
`filtering and down-converting a higher-frequency signal to a lower-frequency signal as
`
`claimed in the ’706 patent.
`
`79.
`
`Each TCL Chip is/includes an apparatus for filtering and down-
`
`converting (e.g., a higher frequency RF signal to a lower frequency signal). Each TCL
`
`Chip includes a frequency translator, comprising a down-convert and delay module
`
`(e.g., module including one or more switches, capacitors, and resistors) to under-sample
`
`an input signal (e.g., high frequency RF signal) to produce an input sample of a down-
`
`converted image of said input signal, and to delay said input sample.
`
`80.
`
`Each TCL Chip also includes a filter, comprising at least a portion of said
`
`down-convert and delay module, at least one delay module (e.g., module having one or
`
`more capacitors) to delay instances of an output signal, and an adder (e.g., feedback
`
`capacitor of an operational amplifier) to combine at least said delayed input sample
`
`24
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 24 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 25 of 44
`
`
`
`with at least one of said delayed instances of said output signal to generate an instance
`
`of said output signal.
`
`81.
`
`The down-convert and delay module under-samples (e.g., at a sample rate
`
`below the Nyquist rate) said input signal according to a control signal (e.g., local
`
`oscillator (LO) signal), wherein a frequency of said control signal is equal to a frequency
`
`of said input signal plus or minus a frequency of said down-converted image, divided
`
`by n, where n represents a harmonic or sub-harmonic of said input signal.
`
`82.
`
`ParkerVision has been damaged by the direct infringement of TCL and is
`
`suffering and will continue to suffer irreparable harm and damages as a result of this
`
`infringement.
`
`COUNT II – Infringement of United States Patent No. 6,266,518
`
`83.
`
`The allegations set forth above are re-alleged and incorporated by
`
`reference as if they were set forth fully here.
`
`84.
`
`TCL directly infringes (literally and/or under the doctrine of equivalents)
`
`the ’518 patent by making, using, selling, offering for sale, and/or importing in/into the
`
`United States products covered by at least claim 67 of the ’518 patent.
`
`85.
`
`TCL products that infringe one or more claims of the ’518 patent include,
`
`but are not limited to, the TCL Products and any other TCL device that is capable of
`
`down-converting a higher-frequency signal to a lower-frequency signal as claimed in
`
`the ’518 patent.
`
`86.
`
`Each TCL Chip is/includes an apparatus for down-converting a carrier
`
`signal (e.g., high frequency RF signal) to a lower frequency signal (e.g., baseband
`
`25
`
`ParkerVision Ex. 2002
`IPR2021-00985
`Page 25 of 44
`
`
`
`Case 6:20-cv-00945 Document 1 Filed 10/12/20 Page 26 of 44
`
`
`
`signal). Each TCL Chip has a universal frequency down-converter (UFD), including a
`
`switch (e.g., transistor(s)), an integrator (e.g., feedback capacitor of an operational
`
`amplifier) coupled to the switch, a pulse generator (e.g., LO and/or LO circuitry)
`
`coupled to the switch; and a reactive structure (e.g., filter(s) having variable resistor-
`
`capacitor networks) coupled to the UFD.
`
`87.
`
`The pulse generator (e.g., LO and/or LO circuitry) outputs pulses (e.g.,
`
`pulses of an LO control signal) to the switch at an aliasing rate that is determined
`
`according to a frequency of the carrier signal +/− a frequency of the lower frequency
`
`signal) divided by N.
`
`88.
`
`The pulses have apertures (e.g., 25% duty cycle) and cause the switch to
`
`close and sample the carrier signal (e.g., high frequency RF signal). During an aperture
`
`of the LO control signal, the switch closes and energy from the carrier signal is
`
`transferred through the switch. Between each aperture of the LO control signal, the
`
`switch remains open, thereby preventing the flow of energy through t