Case 6:22-cv-01162-ADA Document 54 Filed 06/08/23 Page 1 of 21
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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.
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`REALTEK SEMICONDUCTOR CORP.,
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`Defendants.
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`NO. 6:22-cv-01162-ADA
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`§
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`DEFENDANT’S MOTION TO DISMISS WITH PREJUDICE
`PLAINTIFF’S AMENDED COMPLAINT FOR FAILURE TO STATE A CLAIM
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`Case 6:22-cv-01162-ADA Document 54 Filed 06/08/23 Page 2 of 21
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`TABLE OF CONTENTS
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`Page
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`Introduction ........................................................................................................................ 1
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`I.
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`II. Summary of the Arguments ............................................................................................... 2
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`III. Factual Background ............................................................................................................ 3
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`1. ParkerVision Filed This Case as a Backdoor Attempt to Obtain Discovery .............. 3
`2. ParkerVision’s Infringement Allegations Are Facially Deficient ............................... 4
`3. ParkerVision Alleges Infringing Acts in the United States Based On Unsupported
`Speculation that Realtek or Others Used the Accused Chip ....................................... 6
`4. Realtek Attempted to Resolve this Dispute without Motion Practice ........................ 6
`IV. Legal Principles .................................................................................................................. 7
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`1. Pleading Standards ...................................................................................................... 7
`2. Direct Infringement ..................................................................................................... 7
`3.
`Indirect Infringement .................................................................................................. 8
`V. Argument ............................................................................................................................ 8
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`1. ParkerVision Has No Basis for Direct Infringement Because Realtek Is Not Present
`in the United States ..................................................................................................... 8
`2. ParkerVision Has No Basis for Indirect Infringement Because Realtek Had No
`Knowledge of the Asserted Patents .......................................................................... 10
`3. ParkerVision Fails to Plead Any Factual Content to Support a Cause of Action ..... 11
`4. ParkerVision Cannot Recover Damages for the Expired Patents Because Realtek
`Had No Actual or Constructive Notice ..................................................................... 13
`VI. The Amended Complaint Should Be Dismissed with Prejudice ...................................... 13
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`VII. Conclusion ........................................................................................................................ 14
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`ii
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`Case 6:22-cv-01162-ADA Document 54 Filed 06/08/23 Page 3 of 21
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Aeritas, LLC v. Darden Corp.,
`No. 6:20-CV-00938-ADA, 2021 WL 4868430 (W.D. Tex. Oct. 18, 2021) ...................... 12
`
`American Med. Sys., Inc. v. Med. Eng’g Corp.,
`6 F.3d 1523 (Fed. Cir. 1993)................................................................................................ 3
`
`Arctic Cat Inc. v. Bombardier Recreational Prods. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017).......................................................................................... 13
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ..................................................................................................... 7, 8, 9
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) ................................................................................................... 7, 9, 13
`
`In re Billing of Lading Transmission & Processing Sys. Pat. Litig.,
`681 F.3d 1323 (Fed. Cir. 2012)............................................................................................ 8
`
`Bot M8 LLC v. Sony Corp. of Am.,
`4 F.4th 1342 (Fed. Cir. 2021) .......................................................................................... 3, 7
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`Carlton v. Freer Inv. Grp., Ltd.,
`No. 5:15-cv-00946-DAE, 2017 WL 11046201 (W.D. Tex. Aug. 8, 2017) ......................... 7
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`Castlemorton Wireless, LLC v. Bose Corp.,
`No. 6:20-CV-00029-ADA, 2020 WL 6578418 (W.D. Tex. July 22, 2020) ...................... 10
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`Commil USA, LLC v. Cisco Sys., Inc.,
`575 U.S. 632 (2015) ....................................................................................................... 2, 10
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`De La Vega v. Microsoft Corp.,
`Nos. W-19-CV-00612-ADA, W-19-CV-00617-ADA, 2020 WL 3528411
`(W.D. Tex. Feb. 7, 2020) ............................................................................................... 9, 14
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`Edwin Vega v. Maxim Integrated Prods.,
`No. 5:15-CV-1138-DAE, slip op. (W.D. Tex. June 14, 2016) .......................................... 11
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`Hourexchange, LLC v. Student Loan Benefits, Inc.,
`No. 1:22-CV-00356-RP, 2023 WL 139150 (W.D. Tex. Jan. 9, 2023) .............................. 11
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`Innomemory, LLC v. Cullen/Frost Bankers, Inc.,
`No. 6:22-CV-00672-ADA, slip op. (W.D. Tex. Sept. 30, 2022) ......................................... 3
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`iii
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`Case 6:22-cv-01162-ADA Document 54 Filed 06/08/23 Page 4 of 21
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`Lifetime Indus., Inc. v. Trim-Lok, Inc.,
`869 F.3d 1372 (Fed. Cir. 2017)............................................................................................ 8
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`Lubby Holdings LLC v. Chung,
`11 F.4th 1355 (Fed. Cir. 2021) .......................................................................................... 13
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`MEMC Elec. Materials, Inc. c. Mitsubishi Materials Silicon Corp.,
`420 F.3d 1369 (Fed. Cir. 2005)............................................................................................ 8
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`NTP, Inc. v. Research in Motion, Ltd.,
`418 F.3d 1282 (Fed. Cir. 2005)........................................................................................ 2, 8
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`Ortiz & Assocs. Consulting, LLC v. Ricoh USA, Inc.,
`No. 6:21-CV-01178-ADA, 2023 WL 2904583 (W.D. Tex. Apr. 11, 2023) ....................... 8
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`Pellegrini v. Analog Devices, Inc.
`375 F.3d 1113 (Fed. Cir. 2004)............................................................................................ 8
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`Rotec Indus., Inc. v. Mitsubishi Corp.,
`215 F.3d 1246 (Fed. Cir. 2000)............................................................................................ 8
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`Sightline Payments, LLC v. Everi Holdings Inc.,
`No. 6:21-CV-01015-ADA, 2022 WL 2078215 (W.D. Tex. Jun. 1, 2022) ........................ 10
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`Report and Recommendations of the United States Magistrate Judge, Textron
`Innovations, Inc. v. DJI,
`6:21-cv-00740-ADA, Dkt. 264 (W.D. Tex. Mar. 29, 2023) .............................................. 10
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`Vervain, LLC v. Micron Tech., Inc.,
`No. 6:21-cv-00487-ADA, 2022 WL 23469 (W.D. Tex. Jan. 3, 2022) .................. 11, 12, 13
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`Yip v. Hugs to Go LLC,
`377 F. App’x 973 (Fed. Cir. 2010) ...................................................................................... 9
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`Statutes
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`35 U.S.C. § 271(a) ................................................................................................................. 7, 8
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`35 U.S.C. § 271(b) ..................................................................................................................... 8
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`35 U.S.C. § 287(a) ................................................................................................................... 13
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`Other Authorities
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`Fed. R. Civ. P. 12(b)(6).......................................................................................................... 1, 7
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`Fed. R. Civ. P. 15(a) ................................................................................................................ 14
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`iv
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`Case 6:22-cv-01162-ADA Document 54 Filed 06/08/23 Page 5 of 21
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`Realtek Semiconductor Corporation (“Realtek”) respectfully requests that the Court
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`dismiss with prejudice the Amended Complaint filed by ParkerVision, Inc. (“ParkerVision”)
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`pursuant to Federal Rule of Civil Procedure 12(b)(6).
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`I.
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`INTRODUCTION
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`The Amended Complaint filed by ParkerVision is just as frivolous as its Original
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`Complaint. Nothing in its amendment states a claim for infringement any more than the
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`Original that was withdrawn. The changes are superficial; ParkerVision’s purpose is clear.
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`This amendment is an improper tactic to delay an inevitable dismissal in the hope that the delay
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`gives ParkerVision a chance at the discovery it otherwise has no basis to obtain.
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`ParkerVision hastily filed this action solely to obtain discovery after unsuccessfully
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`litigating the very same claims against Hisense Co., Ltd., TCL Industry Holdings Co., and LG
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`Electronics Inc. But in its haste, ParkerVision apparently neglected to perform an adequate
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`pre-suit investigation. If it had, it would have determined that it has no case against Realtek.
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`In its Original Complaint, ParkerVision alleged that Realtek directly infringes the four asserted
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`patents “by testing” the accused products in the United States. But, as set forth in its original
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`motion to dismiss, Realtek is a Taiwan company with no presence in the United States, and
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`does not perform any testing of the accused products in the United States. As such,
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`ParkerVision failed to plead facts to support such allegations in its Original Complaint, because
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`no such facts exist.
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`Now, desperate to delay dismissal of this case, ParkerVision has filed the Amended
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`Complaint alleging that Realtek directly infringes the four asserted patents “by demonstrating
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`and testing (or having others on its behalf demonstrate and test, including without limitation
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`HP Inc. and other U.S. customers, as well as Cortina Access, Inc. and Ubilinx Technology
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`Inc.)” the accused products in the United States. But again, ParkerVision fails to plead facts to
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`support such allegations.
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`Case 6:22-cv-01162-ADA Document 54 Filed 06/08/23 Page 6 of 21
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`It is time to stop wasting the resources of the parties and the Court. This case should
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`be dismissed with prejudice.
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`II.
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`SUMMARY OF THE ARGUMENTS
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`ParkerVision has no basis to bring this action against Realtek for four separate and
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`independent reasons.
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`First, ParkerVision cannot state a plausible claim for direct infringement. It is black-
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`letter law that the situs of infringement must be within the United States. NTP, Inc. v. Research
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`in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) (abrogated on other grounds). ParkerVision
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`states without any basis that Realtek directly infringes “by demonstrating and testing” the
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`accused products in the United States. Am. Compl. (Dkt. 51) ¶¶ 53, 61, 71, 80. But Realtek
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`has no presence in the United States, and ParkerVision’s baseless allegations that HP and
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`Realtek affiliate non-parties Cortina and Ubilinx are somehow acting on Realtek’s behalf do
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`not resolve that fact. Direct infringement requires that Realtek itself perform the allegedly
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`infringing act—ParkerVision cannot allege indirect acts of others to support a direct
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`infringement claim.
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`Second, ParkerVision cannot state a plausible claim for indirect infringement.
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`Requisite for indirect infringement are both knowledge of the patent and knowledge that the
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`induced acts would cause infringement. Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632,
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`639 (2015). But nowhere does the Amended Complaint allege that Realtek had knowledge of
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`the patents, let alone knowledge of patent infringement. Thus, to the extent that ParkerVision
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`attempts to alternatively claim that Realtek induces HP, Cortina, and Ubilinx to infringe, these
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`claims must also fail.
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`Third, ParkerVision fails to plead a plausible claim of infringement based on the
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`accused Realtek RTL8812BU chip. It is also black-letter law that a complaint “must support
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`its entitlement to relief with ‘factual content,’ not just conclusory allegations that the accused
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`2
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`product(s) meet every claim limitation.” Innomemory, LLC v. Cullen/Frost Bankers, Inc., No.
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`6:22-CV-00672-ADA, slip op. at *3 (W.D. Tex. Sept. 30, 2022) (citing Bot M8 LLC v. Sony
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`Corp. of Am., 4 F.4th 1342, 1352 (Fed. Cir. 2021)). Here, there is no factual content that
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`supports a claim for relief—only conclusory supposition “on information and belief” that the
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`accused Realtek chip practices each of the limitations. In fact, the only technical information
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`the Original Complaint cited to allege practice of the claim elements was the information
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`related to the wrong defendant. And, apparently, ParkerVision “cured” this mistake by
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`removing the information altogether from the Amended Complaint without replacing it.
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`Last, ParkerVision did not mark its products, which precludes ParkerVision from
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`recovering any damages on the three expired asserted patents. Specifically, because all but
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`one of the asserted patents expired in 2018 (and the last one found invalid by the PTAB),
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`damages would have only been available if ParkerVision marked its products from 2016 to
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`2018. See American Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1539 (Fed. Cir. 1993).
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`Because ParkerVision fails to plead any facts related to marking, it cannot recover any damages
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`(or secure any other remedy) on the three expired asserted patents.
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`Accordingly, ParkerVision fails to state any plausible claim to relief, and its Amended
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`Complaint should be dismissed with prejudice.
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`III.
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`FACTUAL BACKGROUND
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`1.
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`ParkerVision Filed This Case as a Backdoor Attempt to Obtain Discovery
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`This case is a product of ParkerVision’s dilatory actions in other earlier-filed cases. In
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`the Amended Complaint filed on May 25, 2023, ParkerVision alleges that TCL and LG
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`televisions incorporating a Realtek RTL8812BU chip purportedly infringe the four asserted
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`patents. Am. Compl. (Dkt. 51), e.g., ¶¶ 10-14.1 These are the very same allegations that
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`1 The Original Complaint also alleged that Hisense televisions incorporating a Realtek
`RTL8812BU chip infringe the four asserted patents. Although Realtek notified ParkerVision
`that the Hisense products were licensed and therefore it was improper for ParkerVision to
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`appeared years ago in ParkerVision’s complaints in ParkerVision, Inc. v. TCL Indus. Holdings
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`Co., No. 6:20-CV-00945 (filed on October 12, 2020) and ParkerVision, Inc. v. LG Elecs., Inc.,
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`No. 6:21-CV-00520 (filed on May 22, 2021).
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`Despite knowing for years that it would need discovery from Realtek, ParkerVision
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`failed to timely seek Letters Rogatory for foreign discovery in each of those cases.
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`Consequently, ParkerVision filed this action against Realtek, then used the filing of this action
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`to stay the TCL and LG cases.2
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`2.
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`ParkerVision’s Infringement Allegations Are Facially Deficient
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`As the Amended Complaint acknowledges, “Realtek is a foreign corporation organized
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`and existing under the laws of Taiwan with a place of business located at No. 2, Innovation
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`Road II, Hsinchu Science Park, Hsinchu 300, Taiwan.” Am. Compl. (Dkt. 51) ¶ 3. Realtek
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`has no offices or employees in the United States, nor does the Amended Complaint allege so.
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`See generally id. Rather, the Amended Complaint merely alleges that Realtek has indirect
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`affiliates that “are registered in the United States,” and identifies Cortina and Ubilinx. Id. ¶ 6.
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`Accordingly, the Amended Complaint includes no factual content establishing that Realtek has
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`a presence in the United States (because Realtek has no such presence).
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`The Amended Complaint alleges that Realtek infringes four patents: U.S. Patent No.
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`6,049,706; U.S. Patent No. 6,266,518; U.S. Patent No. 7,292,835; and U.S. Patent No.
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`8,660,513. Three of the patents—the ’706, ’518, and ’513 patents—expired on October 21,
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`2018. On November 17, 2022, one week after ParkerVision filed the Original Complaint, the
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`PTAB issued a Final Written Decision determining all challenged claims of the remaining
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`allege that these products infringe, ParkerVision only dropped these allegations after Realtek
`filed a motion to dismiss.
`2 The Hisense action was dismissed based on settlement on November 30, 2022. No. 6:20-cv-
`00870-ADA, Dkt. 81. The TCL action was stayed on January 11, 2023. No. 6:20-cv-00945-
`ADA, Dkt. 77. The LG action was stayed on February 24, 2023. No. 6:21-cv-00520-ADA,
`Dkt. 67.
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`patent—the ’835 patent—unpatentable. See IPR2021-00985, Paper 44.
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`Tacitly acknowledging that it has no claim for indirect infringement, the Amended
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`Complaint only seeks relief for direct infringement. The Amended Complaint expressly states:
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`ParkerVision has been damaged by the direct infringement of Realtek and is suffering
`and will continue to suffer irreparable harm and damages as a result of this
`infringement.
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`Am. Compl. (Dkt. 51) ¶¶ 58, 68, 77, 87.
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`ParkerVision respectfully requests that the Court enter judgment . . . finding that
`Realtek directly infringes one or more claims of each of the patents-in-suit.
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`Id. at 23. In contrast, the Amended Complaint never expressly references indirect or induced
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`infringement.
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`But, although the Amended Complaint expressly seeks relief for direct infringement, it
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`fails to support those claims. Specifically, the Amended Complaint is void of factual
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`allegations supporting a claim that Realtek products infringe the asserted patents or that Realtek
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`performs any infringing acts. The Amended Complaint points to Realtek’s attendance at CES
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`(Consumer Electronics Show) in 2020 and 2022 to allege that Realtek purportedly “exhibited,
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`demonstrated, and used a number of products containing Realtek Wi-Fi chips.” Id. at 15.
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`Setting aside the fact that this is well after the expiration date of three of the asserted patents,
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`the press releases cited do not relate to the accused Realtek chip at all.
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` See
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`https://www.realtek.com/en/press-room/news-releases/item/realtek-to-demonstrate-full-
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`range-of-connectivity-multimedia-and-consumer-electronics-solutions-at-2020-ces;
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`https://www.realtek.com/en/press-room/news-releases/item/realtek-to-announce-full-range-
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`of-communications-network-multimedia-and-consumer-electronics-solutions-at-2022-ces
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`(cited in Am. Compl. (Dkt. 51) ¶ 15).
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`With respect to the accused Realtek chip itself, the Amended Complaint generally cites
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`to documents and lists of products sold by both LG and TCL to establish that these products
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`incorporate the accused Realtek chip. But none of these documents show the architecture or
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`design of the accused Realtek chip, or establish how the accused Realtek chip works. Tellingly,
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`in describing how the accused Realtek chip allegedly practices an identified claim in the
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`asserted patents, each of the elements are pled “on information and belief” and parrot the claim
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`language. ParkerVision pleads no facts that would provide a reasonable belief that the accused
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`Realtek chip practices any of the claim elements.
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`3.
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`ParkerVision Alleges Infringing Acts in the United States Based On
`Unsupported Speculation that Realtek or Others Used the Accused Chip
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`With respect to Realtek’s actions, ParkerVision’s infringement allegations for all of the
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`asserted patents are based on a conclusory statement that Realtek, or its affiliates or customers,
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`demonstrate or test the accused Realtek chips in the United States:
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`On information and belief, Realtek uses the Realtek Chips at least by demonstrating
`and testing (or having others on its behalf demonstrate and test, including without
`limitation HP Inc. and other U.S. customers, as well as Cortina Access, Inc. and Ubilinx
`Technology Inc.) the Realtek Chips in the United States.
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`Am. Compl. (Dkt. 51) ¶¶ 53, 61, 71, 80. Unsurprisingly, the Amended Complaint includes no
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`factual basis to support its allegation that Realtek did any demonstrations or testing or had
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`others demonstrate or test on its behalf in the United States, particularly during the limited
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`damages period between 2016 and 2018. Nor does the Amended Complaint include a single
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`allegation of pre-suit knowledge of the patents or infringement to support a claim that Realtek
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`induced infringement by having others test on its behalf.
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`4.
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`Realtek Attempted to Resolve this Dispute without Motion Practice
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`On April 14, 2023, in an effort to resolve this case without motion practice, counsel for
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`Realtek sent counsel for ParkerVision a letter confirming that Realtek has no presence in the
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`United States, and did not test the accused Realtek chips in the United States from November
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`2016 to October 2018. Ex. A. Then, when ParkerVision did not respond, Realtek filed its
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`original motion to dismiss (Dkt. 40). ParkerVision responded to this motion by filing its still
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`deficient Amended Complaint on May 25, 2023 (Dkt. 51). On June 1, 2023, Realtek wrote to
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`ParkerVision again, reiterating its earlier request that ParkerVision dismiss its baseless case
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`against Realtek. Ex. B. The April 14 and June 1 letters each requested that ParkerVision
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`dismiss the case, or provide its factual basis for continuing to assert infringement. Id.
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`ParkerVision did not respond.
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`IV.
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`LEGAL PRINCIPLES
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`1.
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`Pleading Standards
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`A party may move to dismiss a complaint that fails to state a claim upon which relief
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`can be granted. Fed. R. Civ. P. 12(b)(6). To survive a motion to dismiss under Rule 12(b)(6),
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`the plaintiff must plead facts sufficient to “state a claim to relief that is plausible on its face.”
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`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544,
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`570 (2007)). A claim “has facial plausibility when the plaintiff pleads factual content that
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`allows the court to draw the reasonable inference that the defendant is liable for the misconduct
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`alleged.” Iqbal, 556 U.S. at 678. “[C]onclusory statements” and “[t]hreadbare recitals of the
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`elements” that lack factual support cannot overcome a motion to dismiss. See id.; see also
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`Twombly, 550 U.S. at 557 (2007) (a “naked assertion” without “factual enhancement” is not
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`sufficient to overcome a motion to dismiss). To survive a 12(b)(6) motion in this Court, “every
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`element of each cause of action must be supported by specific factual allegations.” Carlton v.
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`Freer Inv. Grp., Ltd., No. 5:15-cv-00946-DAE, 2017 WL 11046201, at *8 (W.D. Tex. Aug. 8,
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`2017) (internal citation omitted). Although the “level of detail required in any given case will
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`vary,” it “must be enough to raise a right to relief above the speculative level.” Bot M8 LLC v.
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`Sony Corp. of Am., 4 F.4th 1342, 1353-54 (Fed. Cir. 2021) (citing Twombly, 550 U.S. at 555).
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`2.
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`Direct Infringement
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`Section 271(a) sets forth the requirements for a claim for direct infringement of a patent.
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`This section provides:
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`Except as otherwise provided in this title, whoever without authority makes, uses, offers
`to sell, or sells any patented invention, within the United States or imports into the
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`United States any patented invention during the term of the patent therefor, infringes
`the patent.
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`35 U.S.C. § 271(a). The accused product must embody the complete patented invention to
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`constitute direct infringement. See Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1252
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`(Fed. Cir. 2000). “To survive a Rule 12(b)(6) motion on a direct infringement claim, the
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`plaintiff must plead facts that plausibly, not merely possibly, suggest that the accused product
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`meets each limitation of the asserted claim(s).” Ortiz & Assocs. Consulting, LLC v. Ricoh USA,
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`Inc., No. 6:21-CV-01178-ADA, 2023 WL 2904583, at *4 (W.D. Tex. Apr. 11, 2023); see
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`Iqbal¸ 556 U.S. at 678.
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`Further, “the U.S. patent laws ‘do not, and were not intended to, operate beyond the
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`limits of the United States’” and its territories. Pellegrini v. Analog Devices, Inc.¸ 375 F.3d
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`1113, 1117 (Fed. Cir. 2004). Thus, “Section 271(a) is only actionable against patent
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`infringement that occurs within the United States.” NTP, 418 F.3d at 1313.
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`3.
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`Indirect Infringement
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`Section 271(b) of the Patent Act provides that “[w]hoever actively induces infringement
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`of a patent shall be liable as an infringer.” 35 U.S.C. § 271(b). To succeed on such a claim,
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`the patentee must show that the accused infringer (1) knowingly induced direct infringement
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`and (2) possessed “specific intent” to induce that infringement. See MEMC Elec. Materials,
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`Inc. c. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1378 (Fed. Cir. 2005). To state a
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`claim for relief for induced patent infringement, “a complaint must plead facts plausibly
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`showing that the accused infringer ‘specifically intended [another party] to infringe [the patent]
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`and knew that the [other party]’s acts constituted infringement.’” Lifetime Indus., Inc. v. Trim-
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`Lok, Inc., 869 F.3d 1372, 1379 (Fed. Cir. 2017) (alterations in original) (quoting In re Billing
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`of Lading Transmission & Processing Sys. Pat. Litig., 681 F.3d 1323, 1339 (Fed. Cir. 2012)).
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`V.
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`ARGUMENT
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`1.
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`ParkerVision Has No Basis for Direct Infringement Because Realtek Is
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`Not Present in the United States
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`ParkerVision fails to plead facts sufficient to raise even a possible, let alone plausible,
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`inference that Realtek—a Taiwanese entity with no offices or employees in the United States—
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`practices the asserted patents in the United States. A complaint must plead factual allegations
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`sufficient to permit “the reasonable inference that the defendant is liable for the misconduct
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`alleged,” based on “more than a sheer possibility that a defendant has acted unlawfully.”
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`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Twombly, 550 U.S. at 557). Courts need
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`not accept “a legal conclusion couched as a factual allegation” and “[t]hreadbare recitals of the
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`elements of a cause of action, supported by mere conclusory statements, do not suffice.” De
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`La Vega v. Microsoft Corp., Nos. W-19-CV-00612-ADA, W-19-CV-00617-ADA, 2020 WL
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`3528411, at *2 (W.D. Tex. Feb. 7, 2020) (quoting Iqbal, 556 U.S. at 678).
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`Plaintiff’s claims of direct infringement rise and fall on an allegation that Realtek itself
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`infringes by “demonstrating and testing” the accused products in the United States. See Am.
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`Compl. (Dkt. 51) ¶¶ 53, 61, 71, 80. But, this conclusory statement is not supported in the
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`Amended Complaint. As ParkerVision admits, Realtek is “a foreign corporation organized . .
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`. under the laws of Taiwan with a place of business” in Taiwan. Id. ¶ 3. There are no Realtek
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`offices in the United States, nor are there any Realtek employees in the United States. Without
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`any presence in the United States, Realtek cannot itself “demonstrate” or “test” the products in
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`the United States. Thus, there is no basis or support for ParkerVision’s allegation of direct
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`infringement.
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`To the extent that ParkerVision points to the two affiliates registered in the United
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`States to support its direct infringement claim, such an allegation is grossly deficient. As a
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`threshold matter, the Complaint must plead facts to establish that Realtek “itself engaged in
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`infringing acts.” Yip v. Hugs to Go LLC, 377 F. App’x 973, 978 (Fed. Cir. 2010). “[R]ote
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`allegations [that Realtek and its affiliates form] a ‘common business enterprise’ [that] establish
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`9
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`Case 6:22-cv-01162-ADA Document 54 Filed 06/08/23 Page 14 of 21
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`
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`an alter ego theory” are insufficient. Sightline Payments, LLC v. Everi Holdings Inc., No. 6:21-
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`CV-01015-ADA, 2022 WL 2078215, at *9 (W.D. Tex. Jun. 1, 2022). Mere “activities
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`consistent with the parent’s and subsidiary’s relationship should not give rise to a finding of an
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`alter ego.” Id. at *4. Moreover, Plaintiff failed to plead or even mention alter ego theory or
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`common business enterprise in its Amended Complaint; thus, any argument under alter ego is
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`improper and completely lacking.3
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`More importantly, ParkerVision pleads no factual basis to support its allegation of
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`demonstration or testing, particularly between 2016 and 2018. Regardless of whether Realtek’s
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`affiliates are alter egos (and they are not), the sheer possibility that they demonstrate or test in
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`the United States is deficient as a matter of law. Specific factual content that supports
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`ParkerVision’s statement that Realtek demonstrates or tests the accused products in the United
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`States is simply absent from the Amended Complaint.
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`2.
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`ParkerVision Has No Basis for Indirect Infringement Because Realtek Had
`No Knowledge of the Asserted Patents
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`There is no basis for indirect infringement because ParkerVision fails to plead any facts
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`that show that Realtek had knowledge of the asserted patents or infringement. A claim of
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`indirect infringement requires “knowledge of the patent in suit and knowledge of patent
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`infringement.” Commil., 575 U.S. at 639. To survive a 12(b)(6) motion, ParkerVision would
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`have needed to plead a plausible theory for the contention that Realtek had knowledge of the
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`patent and the alleged infringement, as well as what it alleges to be the act of indirect
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`infringement. See Castlemorton Wireless, LLC v. Bose Corp., No. 6:20-CV-00029-ADA, 2020
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`WL 6578418, at *5 (W.D. Tex. July 22, 2020) (“Because Castlemorton’s complaint does not
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`plead any facts that would support an allegation of pre-suit knowledge, the Court agrees with
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`3 See Report and Recommendations of the United States Magistrate Judge, Textron
`Innovations, Inc. v. DJI, 6:21-cv-00740-ADA, Dkt. 264 (W.D. Tex. Mar. 29, 2023) (Striking
`plaintiff’s "pierce-the-veil theory as there were no factual allegations sufficient to put
`Defendants on notice of the theory.”).
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`10
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`Case 6:22-cv-01162-ADA Document 54 Filed 06/08/23 Page 15 of 21
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`Bose.”). The Amended Complaint fails to provide a plausible theory for both.
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`ParkerVision is completely silent regarding when or how Realtek was supposed to have
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`any pre-suit knowledge of the patents, let alone knowledge of the alleged infringement. This
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`alone forecloses any claim of indirect infringement. See Edwin Vega v. Maxim Integrated
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`Prods., No. 5:15-CV-1138-DAE, slip op. at *9 n.5 (W.D. Tex. June 14, 2016) (“The Court
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`assumes that Plaintiffs have alleged only claims of direct infringement, given that they have
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`not pled any knowledge with regard to a claim of indirect infringement or contributory
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`infringement.”). And without knowledge, ParkerVision’s conclusory speculation that Realtek
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`has “others on its behalf demonstrate and test” the accused Realtek chips in the United States
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`(Am. Compl. (Dkt. 51) ¶¶ 53, 61, 71, 80) is simply irrelevant.
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`3.
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`ParkerVision Fails to Plead Any Factual Content to Support a Cause of
`Action
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`The Amended Complaint fails to plausibly plead any cause of action. At minimum,
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`“there must be some factual allegations that, when taken as true, articulate why it is plausible
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`that the accused product infringes the patent claim.” Hourexchange, LLC v. Student Loan
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`Benefits, Inc., No. 1:22-CV-00356-RP, 2023 WL 139150, at *2 (W.D. Tex. Jan. 9, 2023) (citing
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`Bot M8, 4 F.4th 1342 at 1353). Yet here, ParkerVision provides no factual allegations
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`pertaining to the functionality of the accused products.
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`These bare assertions must fail. “In cases involving complex technology, a complaint
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`nakedly alleging that the accused product practices the claimed invention’s point of novelty
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`will rarely suffice.” Vervain, LLC v. Micron Tech., Inc., No. 6:21-cv-00487-ADA, 2022 WL
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`23469, at *5 (W.D. Tex. Jan. 3, 2022). Here, the Amended Complaint alleges that “the nut of
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`the invention,” Id. at *5, is “an innovative method of RF direct conversion by a process of
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`sampling