Case 6:22-cv-01162-ADA Document 53 Filed 06/01/23 Page 1 of 14
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`PARKERVISION, INC.,
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`Plaintiff,
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`v.
`REALTEK SEMICONDUCTOR CORP.,
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`Defendant.
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`Case No. 6:22-cv-01162-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANT’S REPLY IN SUPPORT OF ITS MOTION TO DISMISS
`FOR FAILURE TO STATE A CLAIM AND, IN THE ALTERNATIVE,
`STAY PENDING APPEAL OF PTAB FINAL WRITTEN DECISION
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`Case 6:22-cv-01162-ADA Document 53 Filed 06/01/23 Page 2 of 14
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`TABLE OF CONTENTS
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`THIS ACTION SHOULD ULTIMATELY BE DISMISSED ........................................... 1
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`THIS ACTION SHOULD BE STAYED PENDING FEDERAL CIRCUIT
`APPEAL OF PTAB INVALIDATION OF U.S. PATENT NO. 7,292,835 ....................... 1
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`A.
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`ParkerVision Cannot Claim Undue Prejudice Given Its Own Delay ......................3
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`Monetary recovery is adequate to compensate for the stay. ........................3
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`A stay of 10 months does not cause undue prejudice. .................................4
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`B.
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`C.
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`Judicial Resources Have Only Been Expended Addressing Plaintiff’s
`Failure to Follow Rules and Pleading Standards .....................................................5
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`Simplification ...........................................................................................................6
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`CONCLUSION ................................................................................................................... 8
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`Case 6:22-cv-01162-ADA Document 53 Filed 06/01/23 Page 3 of 14
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Neonode Smartphone LLC v. Samsung Elecs. Co. Ltd.,
`6:20-cv-00507-ADA, ECF No. 70 (W.D. Tex. Mar. 22, 2023) ............................................4, 5
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`NFC Tech. LLC v. HTC Am., Inc.,
`No. 2:13-cv-1058, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) ............................................2
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`Ohio Willow Wood Co. v. Alps South, LLC,
`735 F.3d 1333 (Fed. Cir. 2013)..................................................................................................7
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`ParkerVision, Inc. v. LG Elecs., Inc.,
`No. 6:21-CV-00520, Dkt. 1 (W.D. Tex. May 22, 2021) ...........................................................2
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`ParkerVision, Inc. v. LG Electronics, Inc.,
`No. 6:21-CV-00520, Dkt. 66 (W.D. Tex. Jan. 30, 2023) ..........................................................2
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`ParkerVision, Inc. v. TCL Indus. Holdings Co., Ltd.,
`No. 6:20-CV-00945, Dkt. 1 (W.D. Tex. October 12, 2020) ......................................................1
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`ParkerVision, Inc. v. TCL Industries Holdings Co., Ltd.,
`Fed. Cir. No. 23-1417, Dkt. 1 (Jan. 23, 2023) ...........................................................................4
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`Sonrai Memory Ltd. v. Western Digit. Techs., Inc.,
`No. 6:21-cv-01168-ADA, 2022 WL 3108818 (W.D. Tex. Aug. 4, 2022) ................................5
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`Stingray Music USA, Inc. v. Music Choice,
`No. 2:16-cv-00586-JRG-RSP, 2017 WL 9885167 (E.D. Tex. Dec. 12, 2017) .........................3
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`Transocean Offshore Deepwater Drilling, Inc. v. Seadrill Ams., Inc.,
`No. H-15-144, 2015 WL 6394436 (S.D. Tex. Oct. 22, 2015) ...................................................4
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`Tyche Licensing LLC v. Realtek Semiconductor Corp.,
`Case No 2:22-cv-00149-JRG-RSP, Dkt. 12 (E.D. Tex. Nov. 21, 2022) ...............................5, 6
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`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)..................................................................................................3
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`Xylon Licensing LLC v. Lone Star Nat’l Bancshares-Texas, Inc.,
`No. 6:21-CV-00302-ADA, 2022 WL 2078030 (W.D. Tex. June 8, 2022) ...............................5
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`Statutes
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`35 U.S.C. § 286 ................................................................................................................................3
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`Case 6:22-cv-01162-ADA Document 53 Filed 06/01/23 Page 4 of 14
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`Other Authorities
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`Fed. R. Civ. P. 15(a)(1), (3) .............................................................................................................1
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`Case 6:22-cv-01162-ADA Document 53 Filed 06/01/23 Page 5 of 14
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`This case should be dismissed or stayed, and ParkerVision’s response confirms it.
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`ParkerVision alleges that Realtek directly infringes the four patents-in-suit. But ParkerVision does
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`not (and cannot) plead any factual basis for such allegations. In apparent acknowledgment of the
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`gross deficiencies in its Complaint, ParkerVision chose not to substantively oppose Realtek’s
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`motion to dismiss. Instead, to further delay dismissal of its case, ParkerVision filed an equally
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`deficient Amended Complaint. See Dkt. 51.
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`The purpose for ParkerVision’s gamesmanship is simple. It is a ploy to delay dismissal
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`and harass Realtek into providing discovery—not for its sham suit against Realtek, but instead for
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`use in ParkerVision’s parallel lawsuits against LG and TCL. ParkerVision’s tactics should not be
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`rewarded.
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`At bottom, this case should be dismissed. In the alternative, the Court should impose a
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`short stay (likely 10 months) to prevent the parties and the Court from wasting significant resources
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`litigating a patent that the PTAB has already invalidated in a Final Written Decision (“FWD”).
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`THIS ACTION SHOULD ULTIMATELY BE DISMISSED
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`ParkerVision’s Amended Complaint suffers a number of the same—and additional—
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`deficiencies as outlined in Realtek’s Motion. Pursuant to Rule 15, Realtek will file a renewed
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`Motion to Dismiss addressing the Amended Complaint on June 8, 2023. See Fed. R. Civ. P.
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`15(a)(1), (3).
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`THIS ACTION SHOULD BE STAYED PENDING FEDERAL CIRCUIT APPEAL
`OF PTAB INVALIDATION OF U.S. PATENT NO. 7,292,835
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`In response to Realtek’s alternative request to stay, ParkerVision’s Opposition takes the
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`exact opposite position it took in other litigation. The reason is plain. It seeks to game this
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`Court’s procedures to obtain discovery to which it has no right.
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`Case 6:22-cv-01162-ADA Document 53 Filed 06/01/23 Page 6 of 14
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`Years ago starting in 2020, ParkerVision asserted infringement of the very same patents
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`by the very same product (Realtek RTL8812BU chips allegedly incorporated into TCL and LG
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`televisions) in ParkerVision, Inc. v. TCL Indus. Holdings Co., Ltd., No. 6:20-CV-00945, Dkt. 1
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`(W.D. Tex. October 12, 2020) and ParkerVision, Inc. v. LG Elecs., Inc., No. 6:21-CV-00520,
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`Dkt. 1 (W.D. Tex. May 22, 2021). Rather than immediately pursue the requisite foreign
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`discovery it would need for its cases, ParkerVision dawdled for years only seeking letters
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`rogatory on the eve of the fact discovery deadline.
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`Failing to timely seek discovery, ParkerVision resorted to staying its cases against TCL
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`and LG. In doing so, ParkerVision specifically argued that the Court should stay these earlier-
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`filed litigations pending ParkerVision’s appeal of the PTAB FWD of the ’835 patent:
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`Given the overlap of allegations between the present case, the Realtek and MediaTek
`Litigations . . . and ParkerVision’s appeals of the Final Written Decisions in the ’444 and
`’835 IPRs finding each of the asserted claims of the two challenged patents unpatentable,
`ParkerVision and LGE jointly request the Court to stay this case pending final resolution
`of the last of the Realtek and MediaTek Litigations and ’444 and ’835 IPRs, including
`any appeals from each such proceeding. . . . The parties submit that such stay will
`preserve the Court’s and the parties’ resources and allow for the most efficient
`resolution of the allegations in both this litigation and the Realtek and MediaTek
`Litigations. (emphasis added).
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`ParkerVision, Inc. v. LG Electronics, Inc., No. 6:21-CV-00520, Dkt. 66, at 4 (W.D. Tex. Jan. 30,
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`2023). Notably, ParkerVision argued that staying the case pending the appeal would be the most
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`efficient resolution for the Realtek litigation as well.
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`Now, when convenient, ParkerVision argues the exact opposite. ParkerVision’s
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`unprincipled arguments should be given no weight. Regardless, these new arguments fail to
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`overcome the fact that each stay factor favors staying this case. Specifically, Plaintiff itself set
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`aside “timely enforcement” of its claims in favor of appeal, the case is in its infancy and a trial
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`date has yet to be set, and stay would prevent the waste of significant judicial and party resources
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`Case 6:22-cv-01162-ADA Document 53 Filed 06/01/23 Page 7 of 14
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`on a patent that is almost certainly invalid. See NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-
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`1058, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015) (setting forth stay factors); see Mot. at
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`14.
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`A.
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`ParkerVision Cannot Claim Undue Prejudice Given Its Own Delay
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`Monetary recovery is adequate to compensate for the stay.
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`Only months after moving this Court to stay enforcement of the very same claims based
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`on the very same appeal, ParkerVision now disingenuously argues that its “interest in the timely
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`enforcement of its patent rights . . . will be undermined” by a nearly identical stay. Opp. at 3.
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`ParkerVision’s arguments are without merit because no injunction is available on its expired
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`patents and any damages it might claim would be unaffected.
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`First, as discussed in Realtek’s motion (and ignored by ParkerVision), any delay will not
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`affect the monetary damages ParkerVision is seeking. Mot. at 14. ParkerVision is a non-practicing
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`entity. Thus, any potential prejudice from a stay is minimal, because the non-practicing plaintiff
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`will always be made whole by monetary recovery. See Stingray Music USA, Inc. v. Music Choice,
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`No. 2:16-cv-00586-JRG-RSP, 2017 WL 9885167, at *2 (E.D. Tex. Dec. 12, 2017) (“The Court
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`concludes a stay will not unduly prejudice [plaintiff]. The present facts are similar to those in
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`VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307 (Fed. Cir. 2014), in which the Federal
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`Circuit noted a stay does not diminish the monetary damages to which a successful infringement
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`plaintiff is entitled.”). This is underscored when, as here, a “plaintiff did not move for a
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`preliminary injunction, which contradicts [its] assertion [that] it cannot wait for a decision on
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`infringement.” Id.
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`Case 6:22-cv-01162-ADA Document 53 Filed 06/01/23 Page 8 of 14
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`Second, as discussed in Realtek’s Motion (and again, ignored by ParkerVision), the ’835
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`patent is the only patent-in-suit that did not expire in October 2018.1 Mot. at 14. Thus, no matter
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`the length of the stay, and in light of the six-year bar on damages, see 35 U.S.C. § 286, the damages
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`period for U.S. Patent Nos. 6,049,706, 6,266,518, and 8,660,513 is limited to November 10, 2016
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`(six years prior to original complaint filing) to October 21, 2018 (patent expiration). Put simply,
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`the applicable period for damages is “set in stone,” and further underscores that a stay would not
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`cause undue prejudice. See Transocean Offshore Deepwater Drilling, Inc. v. Seadrill Ams., Inc.,
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`No. H-15-144, 2015 WL 6394436, at *3-4 (S.D. Tex. Oct. 22, 2015) (“[B]ecause the asserted
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`patents are set to expire in May 2016, the time window for calculating any ‘license fee’ that
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`[plaintiff] might ultimately be entitled to is set in stone. Therefore, any ‘prejudice’ [plaintiff] may
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`suffer can be compensated in the form of monetary damages.”) (internal citations omitted).
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`A stay of 10 months does not cause undue prejudice.
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`ParkerVision relies on Neonode Smartphone LLC v. Samsung Elecs. Co. Ltd., 6:20-cv-
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`00507-ADA, ECF No. 70 at 4 (W.D. Tex. Mar. 22, 2023) to argue that “the median time to
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`disposition in Federal Circuit appeals from the Patent and Trademark Office is 15 months” and
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`that “Courts have found such a delay to disfavor stay.” Opp. at 4 (quotation omitted). But Neonode
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`does not support ParkerVision; to the contrary, it supports Realtek.
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`First, assuming the median time to appeal acknowledged in Neonode, the stay here would
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`only be 10 months. The appeal of the ’835 Final Written Determination (“FWD”) was docketed
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`on January 23, 2023, and the opening brief was filed on May 5, 2023. See generally ParkerVision,
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`Inc. v. TCL Industries Holdings Co., Ltd., Fed. Cir. No. 23-1417, Dkt. 1 (docketing appeal) and
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`Dkt. 5 (opening brief filed).
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`U.S. Patent Nos. 6,049,706, 6,266,518, and 8,660,513 each claim continuity to U.S. Patent.
`No. 6,061,551, which was filed on October 21, 1998—and expired on October 21, 2018.
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`Thus, the appeal will likely resolve in less than a year. In that time, the Court and parties
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`would waste significant resources exchanging contentions, construing terms, and seeking
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`discovery on a patent that will almost certainly be confirmed as invalid.
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`Second, in Neonode, the Court, in fact, continued to stay the case as to the patent found
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`invalid by the PTAB. There, the Court was evaluating whether to extend a several-year stay
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`pending Federal Circuit appeals of PTAB FWDs (only one of which found the claims invalid).2
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`See Neonode, 6:20-cv-00507-ADA, ECF No. 70 at 6-8. Thus, the Court’s discussion of time-to-
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`decision statistics and concerns for loss of evidence was compounded by the nearly three years
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`that had already passed since the complaint was filed. More importantly, despite those concerns,
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`the Court continued the stay with respect to the invalid patent.
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`There is no risk of undue prejudice to ParkerVision if the Court stays this action (in the
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`exact same manner it has done in other actions as requested by ParkerVision).
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`B.
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`Judicial Resources Have Only Been Expended Addressing Plaintiff’s Failure
`to Follow Rules and Pleading Standards
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`There can be no legitimate question that the stage of the litigation favors stay. The case is
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`still in its infancy as no discovery has taken place, and no scheduling order has even been issued.
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`See Mot. at 15; see also Xylon Licensing LLC v. Lone Star Nat’l Bancshares-Texas, Inc., No. 6:21-
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`CV-00302-ADA, 2022 WL 2078030, at *3 (W.D. Tex. June 8, 2022); see also Sonrai Memory
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`Ltd. v. Western Digit. Techs., Inc., No. 6:21-cv-01168-ADA, 2022 WL 3108818, at *2 (W.D. Tex.
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`Aug. 4, 2022). Yet ParkerVision argues “that this factor does not weigh in favor of a stay as much
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`The case faced multiple stays. The case was filed on June 8, 2020, and stayed on and off
`until the order lifting the final stay on March 22, 2023. See Dkt. 1 (Compl.); Dkt. 70 (Order). For
`example, the first scheduling order was issued on Nov. 13, 2020. Dkt. 35. The first stay, pending
`a decision on a motion to transfer, was granted on Dec. 11, 2020. Dkt. 36. Parties stipulated to
`staying the case pending PTAB FWDs on Aug. 11, 2021. Parties again stipulated to stay the case
`on Apr. 11, 2022. The Order cited by Plaintiff was a denying a motion to stay on Mar. 22, 2023.
`Dkt. 70.
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`as it ordinarily would” because “this Court has already spent its resources on this case due to
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`Realtek’s dilatory tactics.” Opp. at 5. That is ridiculous. If any party has engaged in
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`gamesmanship causing delays and unnecessary motion practice in this Court, it is ParkerVision,
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`which has ignored this Court’s rules, the Federal Rules, and due process.
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`First, ParkerVision should have served this Complaint via letters rogatory as required under
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`U.S. and Taiwan law. In Tyche Licensing LLC v. Realtek Semiconductor Corp., Case No 2:22-cv-
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`00149-JRG-RSP (E.D. Tex.), another plaintiff requested letters rogatory to serve Realtek on
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`November 21, 2022, more than a week after the complaint in this case was filed. And the Tyche
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`plaintiff properly served Realtek through letters rogatory on March 28, 2023, more than two
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`months ago. Thus, if ParkerVision “had chosen to properly litigate this case from the beginning,
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`the case would now be further along.” Opp. at 5.
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`Second, it was ParkerVision who filed a motion for alternative service, then filed a baseless
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`motion for default while that motion was pending, and then withdrew the motion for alternative
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`service. This unnecessary motion practice was caused by ParkerVision—and ParkerVision
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`alone—to purposefully waste Realtek’s time and resources (with the Court as a casualty).
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`Regardless, ParkerVision’s failure to follow basic service rules does not change the fact that there
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`is still a significant amount of work left to be done in the case.
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`C.
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`Simplification
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`Finally, staying this case would simplify the issues for this Court. For the ’706, ’518, and
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`’513 patents—the entire discoverable universe of evidence would be from 2016 to 2018—the only
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`possible damages period. See Mot. at 15. However, if the parties were to move forward litigating
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`the ’835 patent—the scope of discoverable information vastly expands, as the ’835 patent
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`purportedly expires in 2025. This broadened scope could potentially pull in entirely different
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`Case 6:22-cv-01162-ADA Document 53 Filed 06/01/23 Page 11 of 14
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`employees, teams, and data than just the expired patents—and at the risk of wasting all of it.
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`ParkerVision does not dispute this.
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`Rather ParkerVision claims that awaiting Federal Circuit guidance on the issues in this case
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`would not simplify the case. ParkerVision’s arguments are nonsensical and self-contradicting.
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`First, ParkerVision admits that the Federal Circuit ruling “may affect some of the claims at issue
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`here.” Opp. at 7. ParkerVision dismissively states that “the Court can use its discretion to adjust
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`the case schedule and assess what impact, if any, the appellate ruling would have.” Id. But it is
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`far simpler to do that before the Court and the parties have invested substantial resources in
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`litigating the patents than after such investment.
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`Second, ParkerVision argues that the Federal Circuit will “maybe invalidate a fraction of
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`the claims at issue.” Opp. at 7. As a threshold matter, 74% of all PTAB IPR appeals are affirmed.
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`Mot. at 15. Further, there may be only “nine claims on appeal,” but the Federal Circuit opinion
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`will have collateral estoppel effects beyond the claims at issue. Indeed, collateral estoppel applies
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`where there is “identity of the issues” and does not require patent claims to be “identical.” Ohio
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`Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013). “If the differences
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`between the unadjudicated patent claims and adjudicated patent claims do not materially alter the
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`question of invalidity, collateral estoppel applies.” Id. at 1342. That is the case here.
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`Third, ParkerVision boasts that this case concerns the alleged infringement “of up to 321
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`other claims.” Opp. at 6. But in ParkerVision’s own words: “This is an impossible result.” Id.
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`ParkerVision will not try 321 claims to a jury, nor should the Court and parties litigate 321 claims.
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`Rather, to simplify the issues and to give ParkerVision a fair chance to decide which claims it
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`should assert, the case should be stayed pending the ’835 IPR appeal.
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`Case 6:22-cv-01162-ADA Document 53 Filed 06/01/23 Page 12 of 14
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` CONCLUSION
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`For the reasons discussed herein and in Realtek’s Motion, Realtek respectfully submits that
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`alternative to dismissal, the instant action should be stayed pending the Federal Circuit’s review
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`of the FWD for the ’835 patent, as there would be no prejudice to Plaintiff, the parties have not
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`substantively begun the case, any stay would be minimal, and the issues and scope of the case
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`would be substantially simplified.3
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`At a minimum, the ’835 patent should be severed from this action and stayed.
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`Case 6:22-cv-01162-ADA Document 53 Filed 06/01/23 Page 13 of 14
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`Dated: June 1, 2023
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`Respectfully submitted,
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`By: /s/ Mark D. Siegmund
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`Mark D. Siegmund
`State Bar No. 24117055
`CHERRY JOHNSON SIEGMUND JAMES
`PLLC
`The Roosevelt Tower
`400 Austin Avenue, 9th Floor
`Waco, TX 76701
`Telephone: (254) 732-2242
`Facsimile: (866) 627-3509
`msiegmund@cjsjlaw.com
`
`Lisa K. Nguyen
`ALLEN & OVERY LLP
`550 High Street, Second Floor
`Palo Alto, CA 94301
`Telephone: (650) 388-1724
`lisa.nguyen@allenovery.com
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`Noah A. Brumfield
`Megan M. Ines
`Emily P. Lipka
`ALLEN & OVERY LLP
`1101 New York Avenue, NW
`Washington, DC 20005
`Telephone: (202) 683-3881
`noah.brumfield@allenovery.com
`megan.ines@allenovery.com
`emily.lipka@allenovery.com
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`Grace I. Wang
`ALLEN & OVERY LLP
`1221 Avenue of the Americas
`New York, NY 10020
`Telephone: (212) 756-1143
`grace.wang@allenovery.com
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`Attorneys for Defendant
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`Case 6:22-cv-01162-ADA Document 53 Filed 06/01/23 Page 14 of 14
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on June 1, 2023, the foregoing was served on all
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`counsel of record by ECF.
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` /s/Mark D. Siegmund
`Mark D. Siegmund
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