Case 6:22-cv-01162-ADA Document 40-1 Filed 05/11/23 Page 1 of 4
`Case 6:22-cv-01162-ADA Document 40-1 Filed 05/11/23 Page 1 of 4
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`EXHIBIT A
`EXHIBIT A
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`Case 6:22-cv-01162-ADA Document 40-1 Filed 05/11/23 Page 2 of 4
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`Mark D. Siegmund
`msiegmund@cjsjlaw.com
`(254) 732-2242
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`April 14, 2023
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`Mr. Ron Daignault
`Via Email: rdaignault@daignaultiyer.com
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`RE: ParkerVision, Inc. v. Realtek Semiconductor Corp., Civ. No. 6:22-cv-01162-ADA
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`Dear Ron:
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`Please confirm that ParkerVision will dismiss the above-referenced action immediately.
`ParkerVision’s claims against Realtek are baseless and continuing this litigation wastes valuable
`party and judicial resources.
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`ParkerVision’s claims are frivolous at least because:
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`• ParkerVision cannot allege indirect infringement because there is no knowledge of the
`patents-in-suit during the relevant period;
`• ParkerVision cannot allege any acts of direct infringement in the U.S. because Realtek has
`not presence in the U.S.;
`• Certain accused products are licensed under the patents-in-suit;
`• ParkerVision does not mark its products or the products of its licensees; and
`• The patents-in-suit are not valid and enforceable.
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`If ParkerVision does not intend to dismiss this action, please provide ParkerVision’s responses to
`the information requested below.
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`No Indirect Infringement. Of the four patents-in-suit, three patents-in-suit (U.S. Patent No.
`6,049,706, U.S. Patent No. 6,266,518, and U.S. Patent No. 8,660,513) expired well before the
`initiation of this action. Because of this, ParkerVision can only recoup past damages for those
`three patents—namely from November 2016 (six years prior to the filing of the Complaint under
`35 U.S.C. § 286) to October 2018 (the date the patents expired). But Realtek had no knowledge
`of the patents during that time period. Without any evidence of knowledge, ParkerVision cannot
`state a claim against Realtek for indirect infringement. Commil USA, LLC v. Cisco Sys., Inc., 575
`U.S. 632, 639 (2015) (“Like induced infringement, contributory infringement requires knowledge
`of the patent in suit and knowledge of patent infringement.”).
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`To the extent that ParkerVision alleges that Realtek indirectly infringed U.S. Patent No. 6,049,706,
`U.S. Patent No. 6,266,518, and U.S. Patent No. 8,660,513, please provide the factual and legal
`basis for your claim.
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`CHERRY JOHNSON SIEGMUND JAMES
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` 400 AUSTIN AVE, 9TH FLOOR
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` WACO, TEXAS 76701
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`Case 6:22-cv-01162-ADA Document 40-1 Filed 05/11/23 Page 3 of 4
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`Mr. Ron Daignault
`April 14, 2023
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`No Direct Infringement. ParkerVision alleges that Realtek directly infringes because “Realtek
`uses the Realtek Chips at least by testing … the Realtek Chips in the United States.” Complaint
`¶¶ 48, 56, 66, and 75. But Realtek cannot test the Realtek Chips in the United States, because it
`has no presence in the United States. Realtek is based in Taiwan. Realtek has no offices in the
`United States, and no employees in the United States. Consequently, Realtek itself cannot test the
`Realtek Chips in the United States, and certainly did not do so from November 2016 to October
`2018.
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`To the extent that ParkerVision alleges that Realtek directly infringed U.S. Patent No. 6,049,706,
`U.S. Patent No. 6,266,518, and U.S. Patent No. 8,660,513, please provide the factual and legal
`basis for your claim.
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`The Accused Hisense Products Are Licensed. “On November 2, 2022, [ParkerVision] entered
`into a patent license and settlement agreement with Hisense.” ParkerVision, Form 10-Q dated
`November 14, 2022. Despite this license, ParkerVision alleges in its November 10, 2022
`Complaint that Hisense televisions incorporating the Realtek Chips infringe the patents-in-suit.
`See Complaint at ¶¶ 10, 15, 16, and 67.
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`To the extent that that ParkerVision maintains its claims against Realtek Chips in Hisense
`televisions, please provide the factual and legal basis for your claims.
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`No Past Damages. Because ParkerVision and its licensees do not mark their products, there are
`no past damages. Failure to mark products limits any damages prior to Realtek becoming aware
`of the patents and infringement allegations, which did not occur until the date of filing the
`Complaint. 35 U.S.C. § 287(a); see also Lubby Holdings LLC v. Chung, 11 F.4th 1355, 1359 (Fed.
`Cir. 2021) (plaintiff’s products were unmarked and defendant had no notice of infringement until
`date of the complaint which limited damages to the date of the complaint).
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`If ParkerVision contends that Realtek had notice of the allegations in suit prior to the date of the
`complaint filing, ParkerVision must promptly provide all evidence in support of that contention.
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`The Patents-In-Suit Are Invalid. As you know, the PTAB has found the asserted claims of U.S.
`Patent No. 7,292,835 unpatentable as a result of inter partes review. To the extent that
`ParkerVision requires the parties and the Court to waste resources litigating this patent, please
`provide your factual and legal basis for doing so.
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`Further, as you know, inter partes review was instituted on U.S. Patent No. 6,266,518, and
`ParkerVision was forced to disclaim the challenged claims to evade the proceeding. But this same
`art renders the remaining claims of U.S. Patent No. 6,266,518 and the related U.S. Patent Nos.
`6,049,706 and 8,660,513 invalid. To the extent that ParkerVision disagrees, please provide your
`basis for stating so.
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`CJSJLAW.COM
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`Case 6:22-cv-01162-ADA Document 40-1 Filed 05/11/23 Page 4 of 4
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`Mr. Ron Daignault
`April 14, 2023
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`Please confirm by April 19, 2023 whether ParkerVision intends to dismiss the Complaint; and, if
`not, ParkerVision’s bases to maintain the allegations as outlined above.
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`Sincerely,
`CHERRY JOHNSON SIEGMUND JAMES, PLLC
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` Mark D. Siegmund
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`CJSJLAW.COM
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