Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 1 of 16
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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 REPLY IN SUPPORT OF
`MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 2 of 16
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`TABLE OF CONTENTS
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`I. THE AMENDED COMPLAINT PLEADS LEGAL CONCLUSIONS, NOT FACTS .... 2
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`Page
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`II. THE AMENDED COMPLAINT PLEADS NEITHER INFRINGEMENT NOR
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`DAMAGES ................................................................................................................................ 4
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`1. The Amended Complaint Provides No Basis for Direct or Indirect Infringement ..... 4
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`2. The Amended Complaint Fails to Sufficiently Plead that the Accused Chip Practices
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`Each and Every Limitation of the Identified Claims .................................................. 7
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`3. ParkerVision Pleads Legal Conclusions, Not Facts, To Support Its Assertion That It
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`Marked Its Products .................................................................................................... 8
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`III. AFTER YEARS OF LITIGATING THE SAME CLAIMS AGAINST LG AND TCL,
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`PARKERVISION FAILS TO PLEAD SUFFICIENT FACTS ................................................. 9
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`IV. CONCLUSION ................................................................................................................ 10
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`ii
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 3 of 16
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Addiction and Detoxification Institute LLC v. Carpenter,
`620 Fed. App’x 934 (Fed. Cir. 2015)................................................................................... 5
`
`AK Meeting IP LLC v. Zoho Corp.,
`2023 WL 1787303 (W.D. Tex. Feb. 6, 2023) ...................................................................... 6
`
`Arctic Cat Inc. v. Bombardier Recreational Prods. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017)............................................................................................ 9
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) .................................................................................................... passim
`
`Belknap v. Leon Cnty.,
`2023 WL 3604728 (W.D. Tex. Apr. 3, 2023) ...................................................................... 1
`
`Bombardier Aerospace Corp. v. U.S.,
`831 F.3d 268 (5th Cir. 2016) ............................................................................................... 9
`
`Carlton v. Freer Inv. Grp., Ltd.,
`No. 5:15-cv-00946-DAE, 2017 WL 11046201 (W.D. Tex. Aug. 8, 2017) ......................... 7
`
`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) ........................................................................................... 2, 3, 10
`
`e-Watch Inc. v. Avigilon Corp.,
`2013 WL 5231521 (S.D. Tex. Sept. 16, 2013) .................................................................... 9
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`831 F.3d 1369 (Fed. Cir. 2016)............................................................................................ 6
`
`Johnson v. BOKF Nat’l Ass’n,
`15 F.4th 356 (5th Cir. 2021) ................................................................................................ 2
`
`Lans v. Digital Equip. Corp.,
`252 F.3d 1320 (Fed. Cir. 2001)............................................................................................ 9
`
`LS Cloud Storage Tech., LLC v. Amazon.com, Inc.,
`2023 WL 2290291 (W.D. Tex. Feb. 27, 2023) .................................................................... 5
`
`Lyda v. CBS Corp.,
`838 F.3d 1331 (Fed. Cir. 2016)............................................................................................ 5
`
`Mayeaux v. Louisiana Health Service and Indem. Co.,
`376 F.3d 420 (5th Cir. 2004) ............................................................................................. 10
`
`
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`iii
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 4 of 16
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`MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp.,
`420 F.3d 1369 (Fed.Cir.2005).............................................................................................. 7
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`Ormco Corp. v. Align Technology, Inc.,
`463 F.3d 1299 (Fed. Cir. 2006)............................................................................................ 1
`
`PACT XPP Techs, AG v. Xilinx, Inc.,
`2012 WL 1029064 (E.D. Tex. 2012) ................................................................................... 9
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`Pulse Electronics, Inc. v. U.D. Electronic Corp.,
`530 F.Sup.3d 988 (S.D. Cal. 2021) .................................................................................. 3, 4
`
`Rotec Indus. v. Mitsubishi Corp.,
`215 F.3d 1246 (Fed. Cir. 2000)........................................................................................ 6, 7
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc.,
`617 F.3d 1296 (Fed. Cir. 2010)............................................................................................ 6
`
`Transocean Offshore Deepwater Drilling, Inc. v. Stena Drilling Ltd.,
`659 F.Supp.2d 790 (S.D. Tex. 2009) ................................................................................... 2
`
`Vervain, LLC v. Micron Tech., Inc.,
`No. 6:21-cv-00487-ADA, 2022 WL 23469 (W.D. Tex. Jan. 3, 2022) ............................ 2, 8
`
`WiTricity Corp. v. Momentum Dynamics Corp.,
`563 F. Supp. 3d 309 (D. Del. 2021) ..................................................................................... 8
`
`Statutes
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`35 U.S.C. § 271(a) ............................................................................................................. 3, 6, 7
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`Other Authorities
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`47 CFR 2.1204(a)(11)(iii) .......................................................................................................... 4
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`iv
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 5 of 16
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`ParkerVision’s Amended Complaint fails to allege facts that would give rise to any
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`infringement claim against Realtek. In its Opposition, ParkerVision avoids addressing the clear
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`law that renders its complaint defective, and resorts instead to insisting that its own conclusory
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`speculations are “facts.” What’s left is a broadside criticism of Realtek for properly asserting
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`its right to service. The Amended Complaint should be dismissed.
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`As a threshold matter, ParkerVision cannot overcome the fatal defect that half of the
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`identified claims are method claims, and black letter law precludes method claims from being
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`directly infringed through the sale or offer for sale of an apparatus. Ormco Corp. v. Align
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`Technology, Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006). For the remaining claims, with no
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`factual allegation plausibly indicating an infringing sale or offer for sale somewhere in the U.S.,
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`the complaint fails to state a claim for direct infringement pursuant to Twombly and Iqbal.
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`There is also no indirect infringement because ParkerVision cannot allege Realtek had
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`knowledge of the patents. Mot. at 10-11. ParkerVision confirms this defect, stating it is not
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`alleging indirect infringement “at this time.” Opp. at 1. With this conceded, the allegation that
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`“Realtek distributors” may “sell, offer to sell, and/or import infringing products on behalf of
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`Realtek in the U.S.” (id.) is a red herring of no importance.
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`As to the accused chip, ParkerVision concedes its Amended Complaint is just as
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`deficient as the original. ParkerVision provides a new schematic from an unspecified source,
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`but it was omitted from the Amended Complaint. Opp. at 13. This late addition does not save
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`the case from dismissal. Belknap v. Leon Cnty., 2023 WL 3604728 (W.D. Tex. Apr. 3, 2023)
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`(It is “inappropriate at the pleading stage . . . [to] ask[] this Court to look beyond the ‘four
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`corners of Plaintiffs’ Complaint.’”). Nor would the new schematic cure the defective complaint
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`because there remains no factual basis to allege the accused chip practices the purported point
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`of novelty to plausibly plead a cause of action. Vervain, LLC v. Micron Tech., Inc., No. 6:21-
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`cv-00487-ADA, 2022 WL 23469, at *5 (W.D. Tex. Jan. 3, 2022) (“[A] complaint nakedly
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`1
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 6 of 16
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`alleging that the accused product practices the claimed invention’s point of novelty will rarely
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`suffice.”); Mot. at 11-13.
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`On damages, ParkerVision argues “[a]ll allegations in the Amended Complaint are
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`taken as true,” citing Johnson v. BOKF Nat’l Ass’n, 15 F.4th 356, 361 (5th Cir. 2021). Opp. at
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`14. But ParkerVision fails Johnson’s threshold requirement that “[t]he court [only] accepts all
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`well-pleaded facts as true.” Id. at 5 (emphasis added). ParkerVision cannot recast legal
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`conclusions as facts to satisfy Johnson and overcome a motion to dismiss. Transocean
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`Offshore Deepwater Drilling, Inc. v. Stena Drilling Ltd., 659 F.Supp.2d 790, 794-5 (S.D. Tex.
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`2009).
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`Despite litigating the same claims and the same accused chip for years, ParkerVision’s
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`Amended Complaint remains deficient. Indeed, in freely citing to new material, ParkerVision
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`plainly expects the Court to grant leave for it to amend its complaint yet again. But this effort
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`at curing the Amended Complaint is itself insufficient. And importantly, ParkerVision should
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`not be allowed to so boldly flout the rules of this Court and the Federal Rules. The Court
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`should dismiss the Amended Complaint with prejudice.
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`I.
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`THE AMENDED COMPLAINT PLEADS LEGAL CONCLUSIONS, NOT
`FACTS
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`ParkerVision underscores that the Court must accept all “well-pleaded facts” as true.
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`Opp. at 5. But this only applies where ParkerVision has identified relevant “facts.” Here there
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`are none, much less any that are well-pleaded. ParkerVision offers only wholly unsubstantiated
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`beliefs in the form of “facts” that are (1) mere generalized recitations tailored to the elements
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`of the cause of action; (2) completely irrelevant; (3) demonstrably inaccurate; or some
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`combination of the three. This is unequivocally insufficient. Mot. at 7; see also De La Vega
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`v. Microsoft Corp., Nos. W-19-CV-00612-ADA, W-19-CV-00617-ADA, 2020 WL 3528411,
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`at *2 (W.D. Tex. Feb. 7, 2020) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)).
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`First, ParkerVision’s contention that its allegations of sales constitute “facts” conflates
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 7 of 16
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`fact with the legal element for infringement. Sale or offer for sale is an element of an
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`infringement claim. See 35 U.S.C. § 271(a). ParkerVision does not allege any fact beyond a
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`generalized recitation of this element. Opp. at 6 (“alleging that Realtek sells and/or offers to
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`sell products to United States customers;” “alleging that Realtek has distributors that sell and/or
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`offer to sell Realtek infringing products in the United States;” “alleging that Realtek has sales
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`. . . teams in the United States”). These are not facts. “Threadbare recitals of the elements of
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`a cause of action, supported by mere conclusory statements, do not suffice.” De La Vega, 2020
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`WL 3528411 at *2 (quoting Iqbal, 556 U.S. 662, 678 (2009)).
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`Notably, ParkerVision only pleads—with nothing more—that the Realtek chips exist
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`in third-party products that have found their way to the U.S. Opp. at 1, 6. Even accepted as
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`true, this would merely suggest that a sale or offer for sale possibly occurred somewhere in the
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`world. ParkerVision omits any allegation of a plausible sale by Realtek occurring in the U.S.
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`Iqbal, 556 U.S. at 678 (“Where a complaint pleads facts that are merely consistent with a
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`defendant’s liability, it stops short of the line between possibility and plausibility of entitlement
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`to relief”) (internal quotations omitted).
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`Indeed, the allegations more probably point to sales occurring outside the U.S.
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`ParkerVision alleges that LG, TCL, and HP incorporate the accused chip into their products, a
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`small component in the identified televisions and laptops. Am. Compl. (Dkt. 51) ¶¶ 10-14, 16.
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`The more logical inference is that these companies assemble the products outside the U.S. and
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`then import the products themselves (not through Realtek). Thus, while the element requires
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`a sale or offer in the U.S., ParkerVision’s allegation leads to the opposite inference.
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`Second, ParkerVision points to a series of red herrings. It is irrelevant whether Realtek
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`“has distributors that sell and/or offer to sell Realtek infringing products in the United States.”
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`See Opp. at 6, 8. Allegations as to third-party sales or offers impute no direct infringement by
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`Realtek. Moreover, nothing in this allegation (or the cited webpage) even remotely suggests
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 8 of 16
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`that these distributors sell or offer to sell the accused RTL8812BU chip. Pulse Electronics,
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`Inc. v. U.D. Electronic Corp., 530 F.Sup.3d 988, 1009 (S.D. Cal. 2021) (facts that may
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`“establish that Defendant may have sold some products in the U.S.” are not facts that “establish
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`that Defendant sold the Accused Products in the U.S.”).
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`As a further example of demonstrably irrelevant allegations, ParkerVision states that
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`“Realtek has sought authorization from the FCC to sell its products in the United States.” Opp.
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`at 6, 10. This fails to establish any infringement because the FCC compliance process does not
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`correspond to sale in the U.S. It is merely a regulatory step to allow chips into the U.S.—
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`whether imported by others, alone or as incorporated into other products. See 47 CFR
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`2.1204(a)(11)(iii). Again, this allegation merely suggests that Realtek chips might exist in
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`products of third parties within the U.S. It is not a plausible allegation that Realtek actually
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`sells (or offers to sell) these chips in the U.S. Iqbal, 556 U.S. at 678.
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`Ignoring the shortcomings of its purported facts, ParkerVision argues Realtek “simply
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`offer[s] alternative facts to those alleged in a complaint” while simultaneously arguing that
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`“Realtek does not contest (nor can it contest) these allegations.” Opp. at 5-6. Setting aside the
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`obvious inconsistency, ParkerVision once again misses the point. Realtek does not “offer
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`alternative facts.” Instead, Realtek explains why ParkerVision’s few purported facts are
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`irrelevant or insufficient to provide a factual basis to allege infringement.
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`II.
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`THE AMENDED COMPLAINT PLEADS NEITHER INFRINGEMENT NOR
`DAMAGES
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`1.
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`The Amended Complaint Provides No Basis for Direct or Indirect
`Infringement
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`ParkerVision would like the Court to infer that the Realtek RTL8812BU chip’s
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`presence in a third-party product available in the U.S. is the same as Realtek selling or offering
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`to sell the same chip in the U.S. No such inference is appropriate under Twombly or Iqbal, as
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`explained above. Seemingly acknowledging this shortcoming, ParkerVision insists that its
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 9 of 16
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`Amended Complaint properly accuses all “Realtek products that infringe.” Opp. at 7. It does
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`not. Aside from the sole reference to RTL8812BU, the Amended Complaint is silent as to any
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`Realtek product that might infringe, let alone an allegation of any infringing act in the U.S. To
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`survive a motion to dismiss, “[t]here must be some allegation of specific services or products
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`of the defendants which are being accused.” Addiction and Detoxification Institute LLC v.
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`Carpenter, 620 Fed. App’x 934, 937 (Fed. Cir. 2015). The law is clear that “[i]t is not enough
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`to say ‘you infringe my patent.’” Id.
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`ParkerVision attempts to set forth facts to support its direct infringement conclusions
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`by making general statements that merely suggest the sales of unspecified products. But even
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`that fails. First, ParkerVision points to a webpage indicating that distributors sell unspecified
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`Realtek products in the U.S. Opp. at 8. From this webpage, ParkerVision concludes that the
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`distributor acts as Realtek’s agent selling infringing products in the U.S. Id. This logic is
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`flawed. There are no facts suggesting that the distributor acts as Realtek’s agent, or that Realtek
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`owns, directs, or controls the distributor. Importantly, the Amended Complaint “must plausibly
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`allege that Defendants exercise the requisite ‘direction or control’ over the performance of the
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`claim steps, such that performance of every step is attributable to Defendants.” Lyda v. CBS
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`Corp., 838 F.3d 1331, 1340 (Fed. Cir. 2016). It does not.
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`Second, ParkerVision accuses Realtek of “disingenuously focus[ing] on other
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`exemplary portions of the Amended Complaint referring to CES 2020 and 2022” and failing
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`to address a new alleged fact that Realtek was present at the CES 2018 trade show (not pleaded
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`in the Amended Complaint). Opp. at 9-10. Even if this were relevant (it is not, as explained
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`below), it is ParkerVision that is disingenuous because that purported fact was never alleged.
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`Realtek properly addresses the facts alleged within the four corners of the Amended
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`Complaint—including CES 2020 and 2022, but not CES 2018. Am. Compl. (Dkt. 51) ¶¶ 15,
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`27; LS Cloud Storage Tech., LLC v. Amazon.com, Inc., 2023 WL 2290291, at *4 (W.D. Tex.
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`5
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 10 of 16
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`Feb. 27, 2023) (“A plaintiff may not use a response to add allegations that were not in the
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`original pleading itself.”); AK Meeting IP LLC v. Zoho Corp., 2023 WL 1787303, at *4 (W.D.
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`Tex. Feb. 6, 2023) (“[Plaintiff] cannot rehabilitate its Complaint through its opposition to a
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`motion to dismiss.”). Notably, ParkerVision does not dispute that the accused chip is discussed
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`nowhere in relation to CES 2020 and 2022. Opp. at 9-10. Nor does ParkerVision dispute that
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`CES 2020 and 2022 occurred well after three of the asserted patents had already expired.
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`ParkerVision’s decision to now focus on CES 2018 is only a concession that the Amended
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`Complaint’s trade show allegations do not lead to any plausible infringement inference.
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`Third, even if ParkerVision had pleaded in its Amended Complaint that “at 2018 CES
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`in Las Vegas, Realtek presented, sold, and/or offered for a sale a dongle including the
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`RTL8812BU,” Opp. at 9, these allegations would still be deficient. “[T]he location of the
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`contemplated sale controls whether there is an offer to sell within the United States,” and so,
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`the allegations must identify an offer to sell (with all material terms) that will be consummated
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`or performed within the U.S. Transocean Offshore Deepwater Drilling, Inc. v. Maersk
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`Contractors USA, Inc., 617 F.3d 1296, 1309 (Fed. Cir. 2010) (“The focus should not be on the
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`location of the offer, but rather the location of the future sale that would occur pursuant to the
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`offer.”); Halo Elecs., Inc. v. Pulse Elecs., Inc., 831 F.3d 1369, 1378 (Fed. Cir. 2016) (holding
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`that “pricing and contracting negotiations in the United States alone do not constitute or
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`transform those extraterritorial activities into a sale within the United States for purposes of §
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`271(a)”). In sum, even with this attempted re-write of the Amended Complaint, ParkerVision
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`offers no factual content to establish any sale took place in the U.S. in 2018 or any other time.
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`Last, ParkerVision reiterates its claim that FCC compliance submissions establish that
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`Realtek sells and/or offers to sell the accused chip to U.S. customers such as HP. Opp. at 8.
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`But as discussed above, ParkerVision’s allegation does not lead to the inference that Realtek
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`sells or offers to sell the accused chip in the U.S. The Patent Statute does not bar sales to U.S.
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 11 of 16
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`companies, only sales in the U.S. Rotec Indus. v. Mitsubishi Corp., 215 F.3d 1246, 1251 (Fed.
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`Cir. 2000) (finding that the only activities relevant to direct infringement are those that take
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`place within the borders of the U.S.). Moreover, providing the FCC evidence of compliance is
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`not an infringing act, nor does it logically imply that Realtek sold infringing products in the
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`U.S. MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1377
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`(Fed.Cir.2005) (“Mere knowledge that a product sold overseas will ultimately be imported into
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`the United States is insufficient to establish liability under section 271(a).”).
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`2.
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`The Amended Complaint Fails to Sufficiently Plead that the Accused
`Chip Practices Each and Every Limitation of the Identified Claims
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`ParkerVision’s argument as to how the Realtek chip practices the limitations of the
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`identified claims is preposterous. If read literally, ParkerVision now purports to have invented
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`the very concept of the integrated semiconductor chip. To allege that the accused chip
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`infringes, ParkerVision merely lists generic components present in nearly every electronic
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`within the last 100 years (“transistors/switches, capacitors, resistors/loads”) and argues that
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`they are configured exactly according to the claim language. Opp. at 11-12. This is the very
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`definition of “[t]hreadbare recitals of the elements” that lack factual support. See Iqbal, 556
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`U.S. at 678. The only conclusion to be drawn is that after years of litigating parallel cases on
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`the same patents and the same accused chip, ParkerVision has no facts on which to allege any
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`infringement by Realtek.
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`Rather than address its threadbare recital of generic electronic components and
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`verbatim claim language, ParkerVision misrepresents Realtek’s argument. ParkerVision
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`contends that Realtek insists on schematic diagrams. Opp. at 12. Not so. Realtek merely
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`explains that ParkerVision must show some facts beyond the undescriptive IC package and
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`conclusory statements that the Amended Complaint offers. Am. Compl. (Dkt. 51) at 5; Carlton
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`v. Freer Inv. Grp., Ltd., No. 5:15-cv-00946-DAE, 2017 WL 11046201, at *8 (W.D. Tex. Aug.
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`8, 2017) (“[E]very element of each cause of action must be supported by specific factual
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`7
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 12 of 16
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`allegations.”) (internal citation omitted).
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`Effectively admitting the deficiencies of its claims, ParkerVision cites to WiTricity
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`Corp. v. Momentum Dynamics Corp., 563 F. Supp. 3d 309, 328 (D. Del. 2021) to argue that
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`ParkerVision need not plead facts to allege that the accused chip meets the limitations of the
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`claims, given that Realtek does not make its schematics publicly available. Opp. at 12. But
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`this mischaracterizes WiTricity. There, it was undisputed that the plaintiff had alleged
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`sufficient facts for all but one claim element. WiTricity, 563 F. Supp. 3d at 327. Moreover,
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`the disputed claim element was not a structural limitation that the plaintiff could investigate,
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`but rather a result-based quality factor that required discovery to show. Id. Thus, the court
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`determined that the plaintiff had shown enough. Here, in contrast, ParkerVision asserts
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`“information and belief” for every claim element, including those discoverable with a
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`reasonable pre-suit investigation, such as a teardown analysis. Opp. at 12.
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`Further acknowledging its deficiencies, ParkerVision cites a schematic (the origin and
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`accuracy of which is unstated and uncertain) found nowhere in the Amended Complaint.1 Id.
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`at 13. But this improper citation does not cure the deficiency. The law requires ParkerVision
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`to allege more than pointing to transistors, switches, and capacitors found in all electronic
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`devices. Vervain, 2022 WL 23469, at * 5 (failing to plead factual content that the accused
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`product practices the point of novelty “begs the ‘obvious alternative explanation’ that
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`[defendant] is merely practicing the prior art.”); Mot 11-13.
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`3.
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`ParkerVision Pleads Legal Conclusions, Not Facts, To Support Its
`Assertion That It Marked Its Products
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`Once again, ParkerVision substitutes legal conclusions for facts that it insists this Court
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`1 The schematic appeared for the first time in ParkerVision’s preliminary infringement
`contentions (“PICs”) on June 20, 2023, which ParkerVision incredibly claims is confidential.
`On June 27, 2023, the parties met and conferred to discuss whether such marking is appropriate.
`ParkerVision refused to identify the source or provide a redacted version of the PICs. Realtek
`intends to raise the improper designation with the Court, particularly given ParkerVision’s
`directly contrary use of the purportedly confidential schematic in its public Opposition.
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 13 of 16
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`must accept. Opp. at 14. Specifically, ParkerVision argues that the Court should accept,
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`without question, that ParkerVision’s unsupported assertion of compliance with the marking
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`statute is sufficiently factual. Id. Such deference has no basis in law.
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`ParkerVision bears the burden of pleading that it complied with § 287(a)’s marking
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`requirement. Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1366
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`(Fed. Cir. 2017). When a complaint does not adequately allege compliance with the marking
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`statute, a claim for pre-litigation damages may be dismissed on a Rule 12(b)(6) motion. See
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`Lans v. Digital Equip. Corp., 252 F.3d 1320, 1328 (Fed. Cir. 2001). Non-cognizable damages
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`claims relating to marking may be ruled on at the motion to dismiss stage. See id.; see also e-
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`Watch Inc. v. Avigilon Corp., 2013 WL 5231521, at *3 (S.D. Tex. Sept. 16, 2013) (rejecting
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`argument that a request for pre-suit damages is not a “claim” subject to Rule 12(b)(6) and
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`granting motion to dismiss claim for pre-suit damages, noting that “The Federal Circuit,
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`however, specifically allows addressing the § 287(a) issue through a motion to dismiss.”).
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`ParkerVision must make a showing beyond the mere possibility that it complied with
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`the marking statute. It has not. See PACT XPP Techs, AG v. Xilinx, Inc., 2012 WL 1029064,
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`*2-*3 (E.D. Tex. 2012) (ruling on summary judgment that patentee “must prove its compliance
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`with the marking statute ‘beyond peradventure.’”); see also Iqbal 556 U.S. at 678 (“The
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`plausibility standard is not akin to a ‘probability requirement,’ but it asks for more than a sheer
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`possibility”). ParkerVision alleges no facts suggesting it complied with the marking statute,
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`such as which products practice, when they were marked, or how they were marked.
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`III. AFTER YEARS OF LITIGATING THE SAME CLAIMS AGAINST LG AND
`TCL, PARKERVISION FAILS TO PLEAD SUFFICIENT FACTS
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`ParkerVision has been litigating the same claims against TCL and LG for years. And
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`despite multiple opportunities to cure its claims against Realtek, ParkerVision’s Amended
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`Complaint remains frivolous. ParkerVision’s response to the motion to dismiss demonstrates
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`why a second amendment would be futile. ParkerVision has no answer to the reality that
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 14 of 16
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`Realtek does not infringe because Realtek does not itself have a presence in the U.S. Nor does
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`ParkerVision have an answer to the reality that ParkerVision and its licensees fail to mark their
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`products, eliminating any potential damages on the expired patents. Mot. at 4, 6-7, 13.
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`By relying on new, unalleged facts, the Opposition effectively concedes the inadequacy
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`of the Amended Complaint. Yet, none of these new facts move the needle as they suffer the
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`same deficiency as the “facts” set forth in the Amended Complaint. See Bombardier Aerospace
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`Corp. v. U.S., 831 F.3d 268, 284 (5th Cir. 2016) (futility of amendment supports decision to
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`deny motion to amend).
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`Here, ParkerVision has been afforded more than a fair opportunity to litigate these
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`claims—which have been pending against TCL and LG for years. ParkerVision has had years
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`to develop the factual basis for these claims against Realtek. Its failure to adequately plead
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`constitutes undue delay. Moreover, ParkerVision has repeatedly failed to cure the deficiencies
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`in its claims (because it cannot). Notably, ParkerVision has never denied that the purpose of
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`this frivolous case is to obtain discovery that it failed to timely pursue in the TCL and LG cases.
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`Mayeaux v. Louisiana Health Service and Indem. Co., 376 F.3d 420, 425 (5th Cir. 2004)
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`(permitting amendment where a “substantial reason” exists “such as undue delay, bad faith,
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`dilatory motive, repeated failures to cure deficiencies, or undue prejudice to the opposing
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`party.”).
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`Realtek urges the Court to hold ParkerVision accountable for its dilatory actions and
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`disregard for the rules by exercising its discretion to dismiss this matter with prejudice. See
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`De La Vega, 2020 WL 3528411, at *5, *7.
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`IV. CONCLUSION
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`For the foregoing reasons, Realtek respectfully requests the Court dismiss the Amended
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`Complaint with prejudice.
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 15 of 16
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`DATED: June 29, 2023
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`Respectfully submitted,
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` /s/ Mark D. Siegmund
`By:
`Mark D. Siegmund
`State Bar No. 24117055
`CHERRY JOHNSON SIEGMUND JAMES
`PLLC
`The Roosevelt Tower
`400 Austin Avenue, 9th Floor
`Waco, Texas 76701
`Telephone: (254) 732-2242
`Fax: (866) 627-3509
`msiegmund@cjsjlaw.com
`
`Lisa K. Nguyen
`ALLEN & OVERY LLP
`550 High Street
`Palo Alto, CA 94301
`Telephone: 650-388-1724
`lisa.nguyen@allenovery.com
`
`Noah A. Brumfield (pro hac vice)
`Megan M. Ines (pro hac vice)
`Emily P. Lipka (pro hac vice)
`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
`
`Grace I. Wang (pro hac vice)
`ALLEN & OVERY LLP
`1221 Avenue of the Americas
`New York, NY 10020
`Telephone: 212-756-1143
`grace.wang@allenovery.com
`
`Counsel For Realtek Semiconductor Corp.
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`Case 6:22-cv-01162-ADA Document 59 Filed 06/29/23 Page 16 of 16
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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 29, 2023, all counsel of record were served with the
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`foregoing document via electronic service.
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`By: /s/ Mark D. Siegmund
`Mark D. Siegmund
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