`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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` Plaintiff,
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`PARKERVISION, INC.,
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` v.
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`ZYXEL COMMUNICATIONS
`CORPORATION,
` Defendant.
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`Case No. 6:20-cv-01010-ADA
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`JURY TRIAL DEMANDED
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`PARKERVISION, INC.’S DISCLOSURE OF
`PRELIMINARY INFRINGEMENT CONTENTIONS
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`Plaintiff ParkerVision, Inc. (“ParkerVision”) hereby makes the following disclosure of
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`asserted claims, infringement contentions, and document production to Defendant ZyXEL
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`Communications Corporation (“ZyXEL” or “Defendant”).
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`These infringement contentions (“ICs”) are based on ParkerVision’s current
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`interpretation of U.S. Patent Nos. 6,049,706 (the “’706 patent”); 6,266,518 (the “’518 patent”);
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`6,580,902 (the “’902 patent”); 7,110,444 (the “’444 patent”); 7,292,835 (the “’835 patent”);
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`8,588,725 (the “’725 patent”); 8,660,513 (the “’513 patent”); 9,118,528 (the “’528 patent”);
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`9,246,736 (the “’736 patent”); and 9,444,673 (the “’673 patent”) (collectively, the “patents-in-
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`suit”), teardowns, circuit extractions, and public information describing ZyXEL’s products.
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`ParkerVision reserves the right to amend its ICs and the asserted claims based on claim
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`construction proceedings and this Court’s claim construction rulings or rulings by other courts in
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`related cases, information obtained through discovery and/or otherwise as this case progresses.
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`ParkerVision reserves the right to amend its infringement contentions and asserted claims based
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`TCL, Hisense & ZyXel
`Ex. 1015
`Page 1
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`on any proceedings before the United States Patent and Trademark Office in connection with
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`ParkerVision’s patents.
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`A.
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`Identification of infringed claims.
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`The asserted claims of the patents-in-suit include those claims identified in the attached
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`claim charts. ParkerVision identified these asserted claims based on its current and preliminary
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`understanding and reserves the right to supplement its identification of infringed claims as
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`discovery proceeds, including identifying additional claims.
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`ParkerVision accuses ZyXEL of directly infringing the following claims of the patents-
`in-suit:
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`• At a minimum, claims 1, 2, 6, 7, 28, 34, 101, 102, 103, 105, 106, 107, 108, 109,
`111, 114, 115, 116, 117, 118, 123, 125, 127, 128, 129, 134, 135, 136, 137, 138,
`139, 152, 162, 164, 165, 166, 168, 172, 173, 175, 176, 179, 183, 184, 186, 187,
`190, and 194 of the ’706.
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`• At a minimum, claims 50 and 67 of the ’518 patent.
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`• At a minimum, claims 1, 2, 4, and 5 of the ’902 patent.
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`• At a minimum, claims 2, 3, and 4 of the ’444 patent.
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`• At a minimum, claims 1, 12, 13, 14, 15, and 17 of the ’835 patent.
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`• At a minimum, claims 1, 6, 7, 13, 14, and 16-19 of the ’725 patent.
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`• At a minimum, claims 19, 24, 27, and 28 of the ’513 patent.
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`• At a minimum, claims 1, 5, 9, 14, 15, and 17 of the ’528 patent.
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`• At a minimum, claims 1, 11, 15, 19, 21, 26, and 27 of the ’736 patent.
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`• At a minimum, claims 1, 2, 5, 6, 7, 13, 16, 17, 18, and 19 of the ’673 patent.
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`ZyXEL directly infringes one or more claims of the asserted patents by making, using,
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`offering for sale, selling, and/or importing in or into the United States products covered (either
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`literally or under the doctrine of equivalents) one or more claims of the patents-in-suit
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`(including, but not limited to, the ZyXEL’s products identified in the attached claim charts).
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`2
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`TCL, Hisense & ZyXel
`Ex. 1015
`Page 2
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`B.
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`Identification of accused instrumentalities.
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`ParkerVision identifies the accused instrumentalities based on its preliminary
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`understanding of information currently available to ParkerVision. This preliminary
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`understanding is obtained at least through ParkerVision’s independent investigation of ZyXEL’s
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`networking products, examination of teardowns and circuit extractions, and review of relevant
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`literature and manuals.
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`ParkerVision reserves the right to supplement its infringement contentions as discovery
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`proceeds and ZyXEL produces documents/information that are either required under the Court’s
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`local rules or responsive to ParkerVision’s discovery requests, including identifying additional
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`accused instrumentalities, which have features similar to the products set forth below. In due
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`course, after receiving discovery of products made, used, sold, offered for sale and/or imported
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`by ZyXEL in the United States, ParkerVision will supplement these IC’s as applicable.
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`In addition to the ZyXEL products specifically charted, the accused instrumentalities
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`include ZyXEL products that operate and/or are structurally the same as the products identified
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`in the attached claim charts. ZyXEL products that operate and/or are structurally the same as the
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`products in the attached claim charts infringe for the same reasons as those charted products.
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`The accused instrumentalities also include ZyXEL products that are considered sold in
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`the United States according to the Federal Circuit’s decision in Carnegie Mellon Univ. v. Marvell
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`Tech. Group. Ltd., No. 2014-1492 (Aug. 4. 2015).
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`Subject to the foregoing and based on the information currently available, ParkerVision
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`identifies the following accused instrumentalities, including all reasonably similar variants or
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`improvements, as the accused instrumentalities. Specifically, ParkerVision identifies that the
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`manufacture, use, sale, offer for sale, and/or importation in or into the United States by ZyXEL
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`3
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`TCL, Hisense & ZyXel
`Ex. 1015
`Page 3
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`of products including or embodying at least the following ZyXEL products directly infringe each
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`of the asserted claims of the patents-in-suit:
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`• ZyXEL networking products containing wireless module FCC ID: 88NBG6604; and
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`• ZyXEL networking products containing wireless module FCC ID: I88WAP6804.
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`C.
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`Chart identifying accused instrumentalities.
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`ParkerVision provides the attached claim charts, which identify where to find each
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`element of each asserted claim within the accused instrumentalities. These claim charts provide
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`ZyXEL with the requisite notice by identifying instrumentalities that incorporate or reflect the
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`recited claim elements. As such, these charts serve a notice function, and they do not present
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`every possible permutation or theory of ParkerVision’s case.
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`The claim charts are not intended to be an expert report on infringement or provide
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`detailed analysis of the claim terms or infringement. ParkerVision will disclose and produce an
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`expert report regarding infringement with appropriate analysis pursuant to the Court’s
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`Scheduling Order. These charts include infringement by ZyXEL, including diagrams, teardowns,
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`circuit extractions, and images of the accused products, and other publicly available documentary
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`evidence by way of example and not limitation.
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`The asserted claims include elements that are implemented, at least in part, by ZyXEL
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`confidential information. In some instances, the information used in them are, at least in part, not
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`publicly available. An analysis of ZyXEL (or other third parties’) technical information may be
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`necessary to more fully identify all infringing features and functionality. Accordingly, pursuant
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`to the Court’s Scheduling Order, ParkerVision reserves the right to supplement these charts once
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`such information is made available to ParkerVision.
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`4
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`TCL, Hisense & ZyXel
`Ex. 1015
`Page 4
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`Furthermore, ParkerVision reserves the right to revise these charts, as appropriate, upon
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`issuance of the Court’s Claim Construction Order, including the identification of whether any
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`such differences between the accused instrumentalities and the claims are insubstantial and
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`whether the accused instrumentalities read on the claim elements under the doctrine of
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`equivalents.
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`D.
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`Literal infringement and infringement under the doctrine of equivalents.
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`ParkerVision presently contends that the accused instrumentalities literally infringe the
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`above-asserted claims of the patents-in-suit as more specifically explained in the attached claim
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`charts. Further, ParkerVision asserts infringement under the doctrine of equivalents, to the extent
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`that the difference between any component of any product and any claim element is
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`insubstantial. In other words, to the extent literal infringement is purportedly absent, ZyXEL
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`products identified in the attached claim charts perform substantially the same function of the
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`invention recited in the claims, in substantially the same way to achieve substantially the same
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`result. ParkerVision reserves the right to add allegations of infringement under the doctrine of
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`equivalents or amend its doctrine of equivalents allegations to change in response to discovery,
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`ZyXEL’s claim construction and non-infringement positions, claim construction proceedings,
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`this Court’s claim construction rulings, rulings by other courts in related cases or any
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`proceedings before the United States Patent and Trademark Office regarding ParkerVision’s
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`patents.
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`5
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`TCL, Hisense & ZyXel
`Ex. 1015
`Page 5
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`E.
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`Patent priority dates.
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`The priority dates to which the asserted claims of the ParkerVision patents are entitled,
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`respectively, are identified below:
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`• The asserted claims of the ’706 patent are entitled to a priority date (i.e., earliest
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`date of invention) at least as early as October 21, 1998.
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`• The asserted claims of the ‘518 patent are entitled to a priority date (i.e., earliest
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`date of invention) at least as early as March 6, 1997.
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`• The asserted claims of the ‘902 patent are entitled to a priority date (i.e., earliest
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`date of invention) at least as early as August 21, 1997.
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`• The asserted claims of the ’444 patent are entitled to a priority date at least as early
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`as August 4, 1999.
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`• The asserted claims of the ’825 patent are entitled to a priority date at least as early
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`as September 24, 1998.
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`• The asserted claims of the ’725 patent are entitled to a priority date (i.e., earliest
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`date of invention) at least as early as on or about the date as provided in the table
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`below:
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`PRIOIRTY DATE
`CLAIM
`August 21, 1997
`’725 patent, claim 1
`August 21, 1997
`’725 patent, claim 6
`August 21, 1997
`’725 patent, claim 7
`’725 patent, claim 13 April 14, 2000
`’725 patent, claim 14 April 14, 2000
`’725 patent, claim 16 April 14, 2000
`’725 patent, claim 17 April 14, 2000
`’725 patent, claim 18 April 14, 2000
`’725 patent, claim 19 April 14, 2000
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`• The asserted claims of the ’513 patent are entitled to a priority date (i.e., earliest
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`date of invention) at least as early as October 21, 1998.
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`6
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`TCL, Hisense & ZyXel
`Ex. 1015
`Page 6
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`• The asserted claims of the ’528 patent are entitled to a priority date (i.e., earliest
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`date of invention) at least as early as October 21, 1998.
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`• The asserted claims of the ’736 patent are entitled to a priority date (i.e., earliest
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`date of invention) at least as early as October 21, 1998.
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`• The asserted claims of the ‘673 patent are entitled to a priority date (i.e., earliest
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`date of invention) at least as early as on or about the date as provided in the table
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`below:
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`PRIOIRTY DATE
`CLAIM
`August 21, 1997
`’673 patent, claim 1
`August 21, 1997
`’673 patent, claim 2
`August 21, 1997
`’673 patent, claim 5
`August 21, 1997
`’673 patent, claim 6
`October 21, 1998
`’673 patent, claim 7
`’673 patent, claim 13 August 21, 1997
`’673 patent, claim 16 October 21, 1998
`’673 patent, claim 17 August 21, 1997
`’673 patent, claim 18 August 21, 1997
`’673 patent, claim 19 October 21, 1998
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`F.
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`All documents evidencing conception and reduction to practice for each claimed
`invention.
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`Subject to ongoing discovery and investigation, and based on available information to
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`date, the accompanying production of documents bearing production numbers PV_015197 -
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`PV_015265, and the patents-in-suit evidence conception and/or reduction to practice for the
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`claimed inventions.
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`G.
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`Document production.
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`Documents bearing production numbers PV_000001- PV_015265 are provided herewith.
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`7
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`TCL, Hisense & ZyXel
`Ex. 1015
`Page 7
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`Dated: April 22, 2021
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`
`/s/ Stephanie Mandir
`Raymond W. Mort, III
`Texas State Bar No. 00791308
`raymort@austinlaw.com
`THE MORT LAW FIRM, PLLC
`100 Congress Avenue, Suite 2000
`Austin, Texas 78701
`Tel/Fax: 512-865-7950
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`Of Counsel:
`Ronald M. Daignault (pro hac vice)
`Chandran B. Iyer (pro hac vice)
`Jason S. Charkow (pro hac vice)
`Stephanie Mandir (pro hac vice)
`rdaignault@daignaultiyer.com
`cbiyer@daignaultiyer.com
`jcharkow@daignaultiyer.com
`smandir@daignaultiyer.com
`DAIGNAULT IYER LLP
`8200 Greensboro Drive - Suite 900
`Mclean, VA 22102
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`Attorneys for ParkerVision, Inc.
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`8
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`TCL, Hisense & ZyXel
`Ex. 1015
`Page 8
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