621 F. App'x 1009
Fed. Cir.2015Background
- ParkerVision alleges Qualcomm infringed ParkerVision’s energy-sampling down-converting patents (the ’551, ’518, ’371, and ’342).
- Energy sampling purportedly converts a high-frequency carrier to baseband using storage capacitors and switches, differing from conventional voltage sampling.
- Representative claim 23 of the ’551 patent recites generating a baseband signal from energy transferred at an aliasing rate via a storage module and switch.
- Trial split: validity/infringement in phase one; damages and willfulness in phase two; jury found infringement but no willfulness; damages were awarded, JMOL later sought.
- District court granted JMOL of non-infringement while denying invalidity; ParkerVision appeals and Qualcomm cross-appeals on invalidity and damages.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does the accused Quin Qualcomm generate baseband energy from capacitor energy? | ParkerVision asserts capacitor energy participates in baseband generation via a mixer-capacitor path. | Qualcomm argues mixer alone generates baseband; capacitors merely filter jammers, not generate baseband energy. | No infringement; baseband generated at mixer output, not by capacitor energy. |
| Do 50% duty cycle products infringe the sampling limitation? | Dr. Prucnal says 50% duty cycle still yields sampling via continuous input/output. | Jury vetted 50% duty cycle as non-infringing due to continuous path; 25% duty cycle may infringe, but 50% does not. | Affirmed JMOL of non-infringement for all 50% duty cycle products. |
| Is Weisskopf anticipatory of the asserted claims? | Weisskopf allegedly transfers non-negligible energy and generates baseband using that energy. | Weisskopf may not disclose non-negligible energy transfer or baseband generation in the asserted sense. | Weisskopf anticipates many asserted claims; district court reversed on those claims. |
| Does Weisskopf anticipate claim 27 of the ’518 patent (transferring energy during off-time)? | Weisskopf discloses energy transfer and baseband generation with implications for transfer during off-time. | Weisskopf discloses non-discharge scenarios and does not teach the claimed off-time energy transfer. | District court properly denied JMOL; jury not against weight of evidence; no new trial on that issue. |
| Does DeMaw anticipate claim 18 of the ’342 patent (differential energy sampling with charging/discharging)? | DeMaw’s dual-FET balanced mixer corresponds to the differential energy sampling circuit in Fig. 16H. | DeMaw does not expressly disclose charging and discharging to generate a baseband, but it is inherently implicit. | DeMaw anticipates claim 18; JMOL of invalidity granted. |
Key Cases Cited
- Weisskopf, No official reporter citation () (cited as prior art reference in anticipation, discussed extensively)
- Glasser v. S. Conn. Paper Co., 363 F.2d 449 (CCPA 1966) (anticipation requires not exact words; same limitation need not be in identical terms)
- Verdegaal Bros. v. Union Oil Co., 814 F.2d 628 (Fed. Cir. 1987) (broad claim language governs anticipation analysis)
- Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360 (Fed. Cir. 1991) (anticipation and claim construction interplay)
- Teva Pharm. Indus. Ltd. v. AstraZeneca Pharm. LP, 661 F.3d 1378 (Fed. Cir. 2011) (claim scope and prior art considerations in invalidity analysis)