IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
` Plaintiff,
`
`
`PARKERVISION, INC.,
`
`
`
` v.
`
`
`HISENSE CO., LTD. and HISENSE
`VISUAL TECHNOLOGY CO., LTD.
`(F/K/A QINGDAO HISENSE
`ELECTRONICS CO., LTD. and
`HISENSE ELECTRIC CO., LTD.),
` Defendants.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. 6:20-cv-00870-ADA
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`PARKERVISION, INC.’S DISCLOSURE OF
`PRELIMINARY INFRINGEMENT CONTENTIONS
`
`
`
`Plaintiff ParkerVision, Inc. (“ParkerVision”) hereby makes the following disclosure of
`
`asserted claims, infringement contentions, and document production to Defendants Hisense Co.,
`
`Ltd. and Hisense Visual Technology Co., Ltd. (f/k/a Qingdao Hisense Electronics Co., Ltd. and
`
`Hisense Electric Co., Ltd.) (collectively, “Hisense”).
`
`These infringement contentions (“ICs”) are based on ParkerVision’s current
`
`interpretation of U.S. Patent Nos. 6,049,706 (the “’706 patent”); 6,266,518 (the “’518 patent”);
`
`6,580,902 (the “’902 patent”); 7,110,444 (the “’444 patent”); 7,292,835 (the “’835 patent”);
`
`8,588,725 (the “’725 patent”); 8,660,513 (the “’513 patent”); 9,118,528 (the “’528 patent”);
`
`9,246,736 (the “’736 patent”); and 9,444,673 (the “’673 patent”) (collectively, the “patents-in-
`
`suit”), teardowns, circuit extractions, and public information describing Hisense’s products.
`
`ParkerVision reserves the right to amend its ICs and the asserted claims based on claim
`
`LG Ex. 1012
`LG Electronics Inc. v. ParkerVision, Inc.
`IPR2022-00245
`Page 00001
`
`
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
` Plaintiff,
`
`
`PARKERVISION, INC.,
`
`
`
` v.
`
`
`HISENSE CO., LTD. and HISENSE
`VISUAL TECHNOLOGY CO., LTD.
`(F/K/A QINGDAO HISENSE
`ELECTRONICS CO., LTD. and
`HISENSE ELECTRIC CO., LTD.),
` Defendants.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. 6:20-cv-00870-ADA
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`PARKERVISION, INC.’S DISCLOSURE OF
`PRELIMINARY INFRINGEMENT CONTENTIONS
`
`
`
`Plaintiff ParkerVision, Inc. (“ParkerVision”) hereby makes the following disclosure of
`
`asserted claims, infringement contentions, and document production to Defendants Hisense Co.,
`
`Ltd. and Hisense Visual Technology Co., Ltd. (f/k/a Qingdao Hisense Electronics Co., Ltd. and
`
`Hisense Electric Co., Ltd.) (collectively, “Hisense”).
`
`These infringement contentions (“ICs”) are based on ParkerVision’s current
`
`interpretation of U.S. Patent Nos. 6,049,706 (the “’706 patent”); 6,266,518 (the “’518 patent”);
`
`6,580,902 (the “’902 patent”); 7,110,444 (the “’444 patent”); 7,292,835 (the “’835 patent”);
`
`8,588,725 (the “’725 patent”); 8,660,513 (the “’513 patent”); 9,118,528 (the “’528 patent”);
`
`9,246,736 (the “’736 patent”); and 9,444,673 (the “’673 patent”) (collectively, the “patents-in-
`
`suit”), teardowns, circuit extractions, and public information describing Hisense’s products.
`
`ParkerVision reserves the right to amend its ICs and the asserted claims based on claim
`
`LG Ex. 1012
`LG Electronics Inc. v. ParkerVision, Inc.
`IPR2022-00245
`Page 00001
`
`
`
`construction proceedings and this Court’s claim construction rulings or rulings by other courts in
`
`related cases, information obtained through discovery and/or otherwise as this case progresses.
`
`ParkerVision reserves the right to amend its infringement contentions and asserted claims based
`
`on any proceedings before the United States Patent and Trademark Office in connection with
`
`ParkerVision’s patents.
`
`A.
`
`Identification of infringed claims.
`
`The asserted claims of the patents-in-suit include those claims identified in the attached
`
`claim charts. ParkerVision identified these asserted claims based on its current and preliminary
`
`understanding and reserves the right to supplement its identification of infringed claims as
`
`discovery proceeds, including identifying additional claims.
`
`ParkerVision accuses Hisense of directly infringing the following claims of the patents-
`in-suit:
`
`• 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, 140, 152, 162, 164, 165, 166, 168, 172, 173, 175, 176, 179, 183, 184, 186,
`187, 190, and 194 of the ’706.
`
`• At a minimum, claims 50 and 67 of the ’518 patent.
`
`• At a minimum, claims 1, 2, 4, and 5 of the ’902 patent.
`
`• At a minimum, claims 2, 3, and 4 of the ‘444 patent.
`
`• At a minimum, claims 1, 12, 13, 14, 15, 17, 18, 19, and 20 of the ’835 patent.
`
`• At a minimum, claims 1, 6, 7, 13, 14, and 16-19 of the ‘725 patent.
`
`• At a minimum, claims 19, 24, 27, and 28 of the ’513 patent.
`
`• At a minimum, claims 1, 5, 9, 14, 15, and 17 of the ’528 patent.
`
`• At a minimum, claims 1, 11, 15, 19, 21, 26, and 27 of the ‘736 patent.
`
`• At a minimum, claims 1, 2, 5, 6, 7, 13, 16, 17, 18, and 19 of the ’673 patent.
`
`IPR2022-00245 Page 00002
`
`
`
`Hisense directly infringes one or more claims of the asserted patents by making, using,
`
`offering for sale, selling, and/or importing in or into the United States products covered (either
`
`literally or under the doctrine of equivalents) one or more claims of the patents-in-suit
`
`(including, but not limited to, the Hisense products identified in the attached claim charts).
`
`B.
`
`Identification of accused instrumentalities.
`
`ParkerVision identifies the accused instrumentalities based on its preliminary
`
`understanding of information currently available to ParkerVision. This preliminary
`
`understanding is obtained at least through ParkerVision’s independent investigation of Hisense’s
`
`televisions, examination of teardowns and circuit extractions, and review of relevant literature
`
`and manuals.
`
`ParkerVision reserves the right to supplement its infringement contentions as discovery
`
`proceeds and Hisense produces documents/information that are either required under the Court’s
`
`local rules or responsive to ParkerVision’s discovery requests, including identifying additional
`
`accused instrumentalities, which have features similar to the products set forth below. In due
`
`course, after receiving discovery of products made, used, sold, offered for sale and/or imported
`
`by Hisense in the United States, ParkerVision will supplement these IC’s as applicable.
`
`In addition to the Hisense products specifically charted, the accused instrumentalities
`
`include Hisense products that operate and/or are structurally the same as the products identified
`
`in the attached claim charts. Hisense products that operate and/or are structurally the same as the
`
`products in the attached claim charts infringe for the same reasons as those charted products.
`
`The accused instrumentalities also include Hisense products that are considered sold in
`
`the United States according to the Federal Circuit’s decision in Carnegie Mellon Univ. v. Marvell
`
`Tech. Group. Ltd., No. 2014-1492 (Aug. 4. 2015).
`
`IPR2022-00245 Page 00003
`
`
`
`Subject to the foregoing and based on the information currently available, ParkerVision
`
`identifies the following accused instrumentalities, including all reasonably similar variants or
`
`improvements, as the accused instrumentalities. Specifically, ParkerVision identifies that the
`
`manufacture, use, sale, offer for sale, and/or importation in or into the United States by Hisense
`
`of products including or embodying at least the following Hisense products directly infringe each
`
`of the asserted claims of the patents-in-suit:
`
`• Hisense televisions containing wireless module FCC ID: PPQ-WN4519L; and
`
`• Hisense televisions containing wireless module FCC ID: 2AJVQ-ZDGFMT7612U.
`
`C.
`
`Chart identifying accused instrumentalities.
`
`ParkerVision provides the attached claim charts, which identify where to find each
`
`element of each asserted claim within the accused instrumentalities. These claim charts provide
`
`Hisense with the requisite notice by identifying instrumentalities that incorporate or reflect the
`
`recited claim elements. As such, these charts serve a notice function, and they do not present
`
`every possible permutation or theory of ParkerVision’s case.
`
`The claim charts are not intended to be an expert report on infringement or provide
`
`detailed analysis of the claim terms or infringement. ParkerVision will disclose and produce an
`
`expert report regarding infringement with appropriate analysis pursuant to the Court’s
`
`Scheduling Order. These charts include infringement by Hisense, including diagrams, teardowns,
`
`circuit extractions, and images of the accused products, and other publicly available documentary
`
`evidence by way of example and not limitation.
`
`The asserted claims include elements that are implemented, at least in part, by Hisense
`
`confidential information. In some instances, the information used in them are, at least in part, not
`
`publicly available. An analysis of Hisense (or other third parties’) technical information may be
`
`IPR2022-00245 Page 00004
`
`
`
`necessary to more fully identify all infringing features and functionality. Accordingly, pursuant
`
`to the Court’s Scheduling Order, ParkerVision reserves the right to supplement these charts once
`
`such information is made available to ParkerVision.
`
`Furthermore, ParkerVision reserves the right to revise these charts, as appropriate, upon
`
`issuance of the Court’s Claim Construction Order, including the identification of whether any
`
`such differences between the accused instrumentalities and the claims are insubstantial and
`
`whether the accused instrumentalities read on the claim elements under the doctrine of
`
`equivalents.
`
`D.
`
`Literal infringement and infringement under the doctrine of equivalents.
`
`ParkerVision presently contends that the accused instrumentalities literally infringe the
`
`above-asserted claims of the patents-in-suit as more specifically explained in the attached claim
`
`charts. Further, ParkerVision asserts infringement under the doctrine of equivalents, to the extent
`
`that the difference between any component of any product and any claim element is
`
`insubstantial. In other words, to the extent literal infringement is purportedly absent, Hisense
`
`products identified in the attached claim charts perform substantially the same function of the
`
`invention recited in the claims, in substantially the same way to achieve substantially the same
`
`result. ParkerVision reserves the right to add allegations of infringement under the doctrine of
`
`equivalents or amend its doctrine of equivalents allegations to change in response to discovery,
`
`Hisense’s claim construction and non-infringement positions, claim construction proceedings,
`
`this Court’s claim construction rulings, rulings by other courts in related cases or any
`
`proceedings before the United States Patent and Trademark Office regarding ParkerVision’s
`
`patents.
`
`
`
`
`
`IPR2022-00245 Page 00005
`
`
`
`E.
`
`Patent priority dates.
`
`The priority dates to which the asserted claims of the ParkerVision patents are entitled,
`
`respectively, are identified below:
`
`• The asserted claims of the ’706 patent are entitled to a priority date (i.e., earliest
`
`date of invention) at least as early as October 21, 1998.
`
`• The asserted claims of the ‘518 patent are entitled to a priority date (i.e., earliest
`
`date of invention) at least as early as March 6, 1997.
`
`• The asserted claims of the ‘902 patent are entitled to a priority date (i.e., earliest
`
`date of invention) at least as early as August 21, 1997.
`
`• The asserted claims of the ’444 patent are entitled to a priority date at least as early
`
`as August 4, 1999.
`
`• The asserted claims of the ’825 patent are entitled to a priority date at least as early
`
`as September 24, 1998.
`
`• The asserted claims of the ’725 patent are entitled to a priority date (i.e., earliest
`
`date of invention) at least as early as on or about the date as provided in the table
`
`below:
`
`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
`
`
`
`• The asserted claims of the ’513 patent are entitled to a priority date (i.e., earliest
`
`date of invention) at least as early as October 21, 1998.
`
`IPR2022-00245 Page 00006
`
`
`
`• The asserted claims of the ’528 patent are entitled to a priority date (i.e., earliest
`
`date of invention) at least as early as October 21, 1998.
`
`• The asserted claims of the ’736 patent are entitled to a priority date (i.e., earliest
`
`date of invention) at least as early as October 21, 1998.
`
`• The asserted claims of the ‘673 patent are entitled to a priority date (i.e., earliest
`
`date of invention) at least as early as on or about the date as provided in the table
`
`below:
`
`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
`
`
`F.
`
`All documents evidencing conception and reduction to practice for each claimed
`invention.
`
`Subject to ongoing discovery and investigation, and based on available information to
`
`date, the accompanying production of documents bearing production numbers PV_015197 -
`
`PV_015265, and the patents-in-suit evidence conception and/or reduction to practice for the
`
`claimed inventions.
`
`G.
`
`Document production.
`
`Documents bearing production numbers PV_000001- PV_015265 are provided herewith.
`
`
`
`IPR2022-00245 Page 00007
`
`
`
`Dated: March 17, 2021
`
`
`
`
`
`
`
`
`/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
`
`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
`
`Attorneys for ParkerVision, Inc.
`
`IPR2022-00245 Page 00008
`
`
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