Case 6:21-cv-00520-ADA Document 48 Filed 05/06/22 Page 1 of 6
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`PARKERVISION, INC.,
`
`
`
`
`
`LG ELECTRONICS, INC.,
`
`
`
`
`v.
`
`Plaintiff,
`
`Defendant.
`
`
`
`
`
`
`
`
`
`
`Case No. 6:21-cv-00520-ADA
`
`JURY TRIAL DEMANDED
`
`
`
`LGE’S REPLY TO PARKERVISION’S OPPOSITION TO LGE’S MOTION FOR
`LEAVE TO FILE A SUR-SUR-REPLY CLAIM CONSTRUCTION BRIEF
`
`
`
`
`

`

`Case 6:21-cv-00520-ADA Document 48 Filed 05/06/22 Page 2 of 6
`
`Defendant LG Electronics Inc. (“LGE”) submits this Reply brief in support of its motion
`
`for leave to serve an additional claim construction brief. Dkt. Nos. 45, 46.
`
`ParkerVision does not dispute it raised a new argument in its Sur-Reply. In its
`
`Opposition, ParkerVision does not dispute that the first time it raised dependent claims 16 and 17
`
`to argue that the preamble of independent claim 1 is limiting was in its claim construction Sur-
`
`Reply. Nor does ParkerVision dispute that it could have raised this argument in its Responsive
`
`claim construction brief.1
`
`No prejudice to ParkerVision. ParkerVision does not identify any harm or prejudice in
`
`allowing a sur-sur-reply. That is because no such harm or prejudice exists. Indeed, ParkerVision
`
`devotes most of its Opposition (Opp. 2-4) to responding to the arguments made in LGE’s proposed
`
`sur-sur-reply. ParkerVision, moreover, will have the opportunity to further respond to LGE’s
`
`arguments at the Markman hearing.
`
`ParkerVision’s case law discussion omits significant details. LGE’s opening brief for
`
`the instant motion establishes that there is no bright-line rule that a preamble of an independent
`
`claim is always limiting when it provides antecedence for a dependent claim. ParkerVision’s
`
`attempt to distinguish LGE’s cases that establish this point omit significant details. ParkerVision,
`
`for example, argues that SEVEN Networks found the preambles of independent claims limiting
`
`
`1 ParkerVision incorrectly states that LGE’s statement in its opening brief that “cable modem”
`does not provide an antecedence basis “for any later term” is misleading. Opp. 1. As LGE’s brief
`makes clear, this statement was made in the context of only claim 1 – not claims 16 and 17 – as
`claim 1 is the only claim that was before the court for construction of the preamble. LGE Op. Br.
`(Dkt. No. 31) at 10.
`
`1
`
`

`

`Case 6:21-cv-00520-ADA Document 48 Filed 05/06/22 Page 3 of 6
`
`even though these preambles provided antecedent basis only for terms in dependent claims.2 Opp.
`
`4. ParkerVision, however, omits that the court also found that the preambles of the independent
`
`claims, unlike here, gave life, meaning and vitality to the claims. SEVEN Networks at *32
`
`(“Instead, the preambles of Claims 13 and 23 give “life, meaning, and vitality” to the interactions
`
`involving the first computer and the second computer recited in the bodies of Claims 13 and 23.”).
`
`ParkerVision, as another example, notes that the court in TQ Delta stated that neither party at the
`
`Markman hearing objected to the notion that a preamble could be limiting as to a dependent claim
`
`but not an independent claim. ParkerVision, however, omits that the Court also stated that it did
`
`not believe that the Federal Circuit created a bright-line rule that a preamble in an independent
`
`claim is always limiting when it provides antecedent basis for a dependent claim. TQ Delta, LLC
`
`v. 2WIRE, Inc., No. 1:13-CV-01835-RGA, 2018 WL 4062617, at *5 (D. Del. Aug. 24, 2018) (“I
`
`do not read Pacing Techs. as creating a bright-line rule that a preamble is limiting whenever it
`
`provides antecedent basis for a term in a dependent claim.”). In addition, ParkerVision argues that
`
`“nowhere in Pacing Techs., Bondyopadhyay, or In re Fought does the Federal Circuit suggest that
`
`the preamble of an independent claim can be limiting only with respect to the dependent claim but
`
`not the independent claim too.” Opp. 4. But ParkerVision omits that this was not at issue in any
`
`of these three cases.
`
`
`2 ParkerVision incorrectly argues (Opp. 2) that LGE misrepresented SEVEN Networks, LLC v.
`Apple, Inc., No. 2:19-CV-00115-JRG, 2020 WL 1536152 (E.D. Tex. 2020). LGE cited to SEVEN
`Networks to support its argument that there is no bright-line rule that a preamble of an independent
`claim is limiting merely because it appears in the body of a dependent claim. That is precisely
`what SEVEN Networks says. See id. at *8 (“In some cases, the preamble of the independent claim
`may be limiting as to a dependent claim but not as to the independent claim from which it
`depends.”).
`
`2
`
`

`

`Case 6:21-cv-00520-ADA Document 48 Filed 05/06/22 Page 4 of 6
`
`Because ParkerVision raised a new argument in its Sur-Reply that it could have raised in
`
`its Responsive brief and because there is no prejudice to ParkerVision by allowing a sur-sur-reply,
`
`LGE respectfully submits that its motion should be granted.
`
`
`
`Dated: May 6, 2022
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Melissa R. Smith
`Melissa R. Smith
`GILLAM & SMITH, LLP
`TX State Bar No. 24001351
`303 S. Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`melissa@gillamsmithlaw.com
`
`Steven Pepe
`Matthew Shapiro
`James Stevens
`Michael Morales
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036-8704
`Tel: 212.596.9000
`Fax: 212.596.9090
`Steven.Pepe@ropesgray.com
`Matthew.Shapiro@ropesgray.com
`James.Stevens@ropesgray.com
`Michael.Morales@ropesgray.com
`
`David S. Chun
`Stepan Starchenko
`ROPES & GRAY LLP
`1900 University Ave., 6th Floor
`East Palo Alto, CA 94303-2284
`Tel: 650.617.4000
`Fax: 650.617.4090
`David.Chun@ropesgray.com
`Stepan.Starchenko@ropesgray.com
`
`Scott Taylor
`(Admission application forthcoming)
`ROPES & GRAY LLP
`
`3
`
`

`

`Case 6:21-cv-00520-ADA Document 48 Filed 05/06/22 Page 5 of 6
`
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
`Tel: 617.951.7000
`Fax: 617.951.7050
`Scott.Taylor@ropesgray.com
`
`Attorneys for Defendant LG Electronics Inc.
`
`
`
`
`
`4
`
`

`

`Case 6:21-cv-00520-ADA Document 48 Filed 05/06/22 Page 6 of 6
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, on May 6, 2022, all counsel of record who are deemed to
`
`have consented to electronic service are being served with a copy of this document.
`
`
`
`
`
`/s/ Melissa R. Smith
`Melissa R. Smith
`
`
`
`5
`
`