Case 6:21-cv-00520-ADA Document 47 Filed 05/02/22 Page 1 of 9
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`UNITED STATES DISTRICT COURT
`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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`LG ELECTRONICS, INC.,
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` Defendant.
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`Case No. 6:21-cv-00520-ADA
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`JURY TRIAL DEMANDED
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`PARKERVISION’S OPPOSITION TO
`LG’S MOTION TO FILE A SUR-SUR-REPLY BRIEF
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`I.
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`II.
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`Case 6:21-cv-00520-ADA Document 47 Filed 05/02/22 Page 2 of 9
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION .............................................................................................................. 1
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`ARGUMENT ...................................................................................................................... 1
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`A.
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`B.
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`C.
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`D.
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`ParkerVision’s Position Has Been Consistent. ....................................................... 1
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`LG Seeks to Change Its Position. ........................................................................... 2
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`Case Law Regarding Antecedent Basis Is Clear..................................................... 2
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`LG Seeks to Carve Out an Exception to Federal Circuit Case Law. ...................... 3
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`III.
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`CONCLUSION ................................................................................................................... 4
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`Case 6:21-cv-00520-ADA Document 47 Filed 05/02/22 Page 3 of 9
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`CreAgri, Inc. v. Pinnaclife Inc.,
`2013 U.S. Dist. LEXIS 55533, 2013 WL 1663611 (N.D. Cal. Apr. 16, 2013) .........................3
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`Enpat, Inc. v. Shannon,
`No. 6:11-CV-00084-GAP, 2011 U.S. Dist. LEXIS 137751 (M.D. Fla. Nov.
`30, 2011) ................................................................................................................................3, 4
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`In re Fought,
`941 F.3d 1175 (Fed. Cir. 2019)..........................................................................................2, 3, 4
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`Interactive Graphic Sols. LLC v. Microsoft Corp.,
`No. 6:21-CV-00462-ADA, D.I. 67 (W.D. Tex. Apr. 14, 2022) ................................................1
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`Pacing Techs. LLC v. Garmin Int’l, Inc.,
`778 F.3d 1021 (Fed. Cir. 2015)..............................................................................................3, 4
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`PersonalWeb Techs. LLC v. IBM,
`No. 16-CV-01266-EJD, 2017 U.S. Dist. LEXIS 76162
`(N.D. Cal. May 18, 2017) ..........................................................................................................3
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`Probir Kumar Bondyopadhyay v. United States,
`748 Fed. Appx. 301 (Fed. Cir. 2018) .....................................................................................2, 4
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`SEVEN Networks, LLC v. Apple Inc.,
`No. 2:19-CV-00115-JRG, 2020 U.S. Dist. LEXIS 55476
`(E.D. Tex. Mar. 31, 2020) ..................................................................................................2, 3, 4
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`TQ Delta, LLC v. 2WIRE, Inc.,
`No. 1:13-CV-01835-RGA, 2018 U.S. Dist. LEXIS 145171
`(D. Del. Aug. 24, 2018) .........................................................................................................3, 4
`USAA v. Wells Fargo Bank,
`2019 U.S. Dist. LEXIS 125386 (E.D. Tex. 2019) .....................................................................3
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`ii
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`Case 6:21-cv-00520-ADA Document 47 Filed 05/02/22 Page 4 of 9
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`I.
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`INTRODUCTION
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`LG’s untimely attempt to supplement its arguments should be denied. ParkerVision has
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`been consistent in its position regarding “cable modem” and its response to LG. And claims 16
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`and 17 of the ’835 patent were not a surprise to LG.1 Indeed, claim 17 is asserted against LG. But
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`when arguing “cable modem,” LG decided to strategically ignore these problematic claims in its
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`two briefs and, instead, chose to make misleading statements to avoid the issue. Now that it has
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`been called out, LG is unhappy that ParkerVision had the last word and regrets its decision to
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`ignore these claims. So LG seeks to address these claims in a “sur-sur-reply.”
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`II.
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`ARGUMENT
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`A.
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`ParkerVision’s Position Has Been Consistent.
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`ParkerVision’s position has always been that “cable modem” in the preamble of claim 1 is
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`limiting. D.I. 36 at 9. In its opening claim construction brief, without mentioning claims 16 or 17,
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`LG made the misleading statement: “the portion of the preamble that includes the phrase ‘[a] cable
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`modem’ does not provide an antecedent basis for any later term. In addition, cable modem is not
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`‘essential structure’ . . . .” 2 LG Op. Br. at 10. And then on page 11 of its opening brief, LG went
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`on to again state that: “the term ‘cable modem’ is merely a statement of intended use, does not
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`provide antecedence for any term in the body of the claim, is not essential structure, and does not
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`breathe life into the claims.” Id. at 11.
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`In response, ParkerVision argued that “cable modem” is the invention, not merely an
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`intended use in/with the invention; it is an essential structure that brings life, meaning and vitality
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`1 LG’s reliance on Interactive Graphic Sols. LLC v. Microsoft Corp., No. 6:21-CV-00462-ADA,
`D.I. 67 (W.D. Tex. Apr. 14, 2022) (J. Albright) is misplaced. LG Motion at 2. Interactive did not
`involve claim construction, the alleged new information did not pertain to claims on the face of a
`patent, and the Court noted that defendant’s reply brief (similar to ParkerVision’s reply) contained
`information pertinent to arguments that plaintiff made.
`2 Unless otherwise noted, all emphasis has been added.
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`1
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`to the claims. PV Resp. Br. at 11-12. In reply, LG doubled-down and again cited page 11 of its
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`opening brief. LG Reply Br. at 6. Accordingly, to further support its position, ParkerVision
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`responded by pointing out that “cable modem” in the preamble of claim 1 provides antecedent
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`basis for “the cable modem” in claims 16 and 17. See PV Sur-Reply Br. at 6.
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`B.
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`LG Seeks to Change Its Position.
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`Faced with claims 16 and 17, LG now seeks to back away from the position it took in its
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`opening brief – i.e., “the Federal Circuit routinely finds ‘a preamble limiting when it serves as
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`antecedent basis for a term appearing in the body of a claim.’ In re Fought, 941 F.3d 1175, 1178
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`(Fed. Cir. 2019).” LG Op. Br. at 10.
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`So LG points to fact-specific district court cases to back-track from its position.
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`Shockingly, LG misrepresents its own lead case on the issue. Specifically, LG represents that the
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`court in SEVEN Networks held that “a preamble of an independent claim need not be found limiting
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`merely because it appears in the body of a dependent claim. SEVEN Networks, LLC v. Apple Inc.,
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`No. 2:19-CV-00115-JRG. . . .).” LG Motion at 2-3. But LG notably omits the beginning of the
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`court’s statement, which reveals that the court was simply reciting the plaintiff’s position in that
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`case (not the court’s holding): “Plaintiff cites authority that, as a general matter, a preamble of an
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`independent claim need not be found limiting merely because it appears in the body of a dependent
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`claim.” SEVEN Networks, LLC v. Apple Inc., No. 2:19-CV-00115-JRG, 2020 U.S. Dist. LEXIS
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`55476, at *87 (E.D. Tex. Mar. 31, 2020).
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`C.
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`Case Law Regarding Antecedent Basis Is Clear.
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`Federal Circuit case law is clear – a preamble is limiting if its provides antecedent basis for
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`a term in the body of a claim. See In re Fought, 941 F.3d at 1178 (citing Pacing Techs. LLC v.
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`Garmin Int’l, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015)); Probir Kumar Bondyopadhyay v. United
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`States, 748 Fed. Appx. 301, 306 (Fed. Cir. 2018) (“A preamble may limit the scope of a patent
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`2
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`claim if it acts as a necessary component of the claimed invention by providing an antecedent basis
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`from which limitations in the body of the claim are derived.”).
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`District courts consistently apply this rule. For example, the Eastern District of Texas in
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`USAA v. Wells Fargo Bank, found that the term “a check deposit” in the preamble of an
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`independent claim was limiting because it provided “the only express antecedent reference” for
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`the term “the check deposit” in its dependent claim. 2019 U.S. Dist. LEXIS 125386 at *24-27
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`(E.D. Tex. 2019) (citing Pacing Techs., 778 F.3d at 1023-24); see also PersonalWeb Techs. LLC
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`v. IBM, No. 16-CV-01266-EJD, 2017 U.S. Dist. LEXIS 76162, at *35 (N.D. Cal. May 18, 2017)
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`(finding that the preamble of an independent claim was limiting where it provided antecedent basis
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`for a term in the dependent claim).
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`D.
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`LG Seeks to Carve Out an Exception to Federal Circuit Case Law.
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`Stuck with its statement regarding In re Fought, LG now seeks to carve out an exception
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`to the rule. Specifically, LG asserts that a term in an independent claim’s preamble is not
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`necessarily limiting when that term provides antecedent basis for a dependent claim. LG Motion
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`at 2-3. But in doing so, LG relies on fact-specific district court cases and ignores Federal Circuit
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`law.
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`As a threshold matter, other than CreAgri3 (which is an outlier and wrong), all of LG’s
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`cited cases – SEVEN Networks, TQ Delta, Enpat4 – held that the preamble of an independent claim
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`is limiting when it provides antecedent basis for a dependent claim. Indeed, with regard to TQ
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`3 CreAgri found that the independent claim preamble was not limiting at all, even though it
`provided antecedent basis for a dependent claim. CreAgri, Inc. v. Pinnaclife Inc., 2013 U.S. Dist.
`LEXIS 55533, 2013 WL 1663611 (N.D. Cal. Apr. 16, 2013). As the court in TQ Delta recognized,
`“CreAgri was decided before both the Federal Circuit’s decision in Pacing Techs., LLC v. Garmin
`Int’l, Inc., 778 F.3d 1021 (Fed. Cir. 2015) and the Northern District of California’s decision in
`PersonalWeb.” TQ Delta, 2018 U.S. Dist. LEXIS 145171 at *9, n.3.
`4 Enpat, Inc. v. Shannon, No. 6:11-CV-00084-GAP, 2011 U.S. Dist. LEXIS 137751, at *26 (M.D.
`Fla. Nov. 30, 2011).
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`3
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`Delta and Enpat, LG concedes this. LG Motion at 3. With regard to SEVEN Networks, LG omits
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`that the court found the preambles of the independent claims were limiting even though (similar to
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`the ’835 patent here) they only provided antecedent basis for terms in the dependent claims. Id. at
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`87-88.
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`Relying on TQ Delta and Enpat, LG asserts that a preamble of an independent claim can
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`be limiting only as to a dependent claim. LG glosses over that TQ Delta included a caveat to its
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`ruling5 and Enpat6 was decided before the key Federal Circuit case law on the issue of antecedent
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`basis. Indeed, nowhere in Pacing Techs., Bondyopadhyay, or In re Fought does the Federal Circuit
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`suggest that the preamble of an independent claim can be limiting only with respect to the
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`dependent claim but not the independent claim too.
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`III. CONCLUSION
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`Accordingly, ParkerVision respectfully requests the Court deny LG’s motion.
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`5 With regard to TQ Delta, LLC v. 2WIRE, Inc., No. 1:13-CV-01835-RGA, 2018 U.S. Dist. LEXIS
`145171 (D. Del. Aug. 24, 2018) (which found that the preamble of the independent claim was
`limiting with regard to the dependent claim), LG fails to mention the court’s note: “I note that, at
`the Markman hearing, neither party objected to the idea that a preamble could be construed as
`limiting a dependent claim, but not limiting the independent claim in which it appears.” Id. at *12.
`6 Notably, Enpat was decided in 2011 – well before the Federal Circuit discussion regarding
`antecedent basis in Pacing Techs. (2015), which was reaffirmed in Bondyopadhyay (2018) and In
`re Fought (2019).
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`4
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`Dated: May 2, 2022
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`OF COUNSEL:
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`Ronald M. Daignault
`Chandran B. Iyer
`Jason S. Charkow
`Stephanie R. Mandir
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`Daignault Iyer LLP
`rdaignault@daignaultiyer.com*
`cbiyer@daignaultiyer.com
`jcharkow@daignaultiyer.com*
`smandir@daignaultiyer.com
`8618 Westwood Center Drive
`Suite 150
`Vienna, VA 22182
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`* Not admitted to practice in Virginia
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` Respectfully submitted,
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`/s/Raymond W. Mort, III
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`Raymond W. Mort, III
`Texas State Bar No. 00791308
`THE MORT LAW FIRM, PLLC
`100 Congress Avenue, Suite 2000
`Austin, Texas 78701
`Tel/Fax: 512-865-7950
`raymort@austinlaw.com
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`Attorneys for Plaintiff ParkerVision, Inc.
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`Case 6:21-cv-00520-ADA Document 47 Filed 05/02/22 Page 9 of 9
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the foregoing document
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`was served to counsel of record for Defendant via electronic mail on May 2, 2022.
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`/s/ Raymond W. Mort, III
`Raymond W. Mort, III
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