Parkervision, Inc. v. Qualcomm Incorporated, 116 F.4th 1345

ParkerVision sued Qualcomm for patent infringement relating to wireless signal down-conversion technology in a 2011 action, and later, a 2014 action with new but related patents.
In ParkerVision I (the 2011 case), a JMOL of non-infringement was granted due to a specific claim limitation (the "generating limitation") requiring down-conversion occur after an energy storage device (capacitor).
In the 2014 action, different patents and claims (some receiver and some transmitter) were asserted, but the district court found collateral estoppel based on ParkerVision I and granted Qualcomm summary judgment of non-infringement.
The district court also excluded ParkerVision’s validity and infringement expert testimony via Daubert motions, affecting both the infringement and invalidity analyses.
On appeal, the Federal Circuit found the district court erred in claim scope analysis (not performing claim construction), in applying collateral estoppel from IPRs, and in excluding ParkerVision’s expert testimony without adequate basis, vacating judgment and remanding for further proceedings.

Issue	ParkerVision's Argument	Qualcomm's Argument	Held
Collateral estoppel effect of ParkerVision I	Claims in 2014 action do not have the "generating limitation," so collateral estoppel does not apply	Claims are materially identical; estoppel applies to bar infringement	District court erred by not construing claim scope; summary judgment vacated and remanded for claim construction
Exclusion of validity expert (Daubert, IPR collateral estoppel)	Board’s IPR findings should not estop validity expert from testifying on method claims not found unpatentable	IPR findings estop ParkerVision from contradicting Board’s findings on prior art for all claims	Board’s findings in IPR (preponderance standard) do not estop arguments under higher clear and convincing standard in district court; exclusion reversed
Exclusion of infringement expert testimony for lack of testing/simulation	Expert relied on accepted technical documents; lack of expert-run simulation/testing shouldn’t bar opinion	Opinions unreliable without own empirical testing or simulation	Testing and simulation not necessary; basis for exclusion faulty; exclusion reversed
Summary judgment on transmitter claims due to excluded evidence	Should not be granted as exclusion of expert evidence was improper	Should be granted as opinions were excluded and unrebutted	Judgment relied on exclusion of expert evidence which was in error; vacated

ParkerVision, Inc. v. Qualcomm Inc., [citation="621 F. App'x 1009"] (Fed. Cir. 2015) (affirmed JMOL of non-infringement based on claim construction)
Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91 (2011) (clear-and-convincing evidence standard for invalidity in district court)
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (intrinsic evidence is key to claim construction)
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (claim construction must be based on intrinsic evidence)
Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (subsidiary factual findings in claim construction are for district court, legal conclusions reviewed de novo)
B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015) (collateral estoppel exceptions when different standards apply)
Google LLC v. IPA Techs. Inc., 34 F.4th 1081 (Fed. Cir. 2022) (burden in IPR is preponderance of the evidence)
United States v. Doak, 47 F.4th 1340 (11th Cir. 2022) (expert testimony must have a good, reasoned basis at admissibility stage)