Court Favors Judgment for Qualcomm against ParkerVision

Case Filed: Jul 11, 2014

Origin Case: 3:11-cv-00719

Case Summary:

Jacksonville, Florida-based ParkerVision filed a complaint against California-based Qualcomm accusing them of infringing several U.S. patents covering methods and devices for down-converting electromagnetic (radio frequency) signals by energy sampling. The suit was originally filed in Florida Middle District Court in Jul 2011.

Patents-in-Suit:

The patents involved in suit are:

U.S. Patents Current Assignee[i]	Title	Issue Date	Expiration Date[ii]
US6061551 ParkerVision	Method and system for down-converting electromagnetic signals	May 05, 2000	Oct 21, 2018
US6266518 ParkerVision	Method and system for down-converting electromagnetic signals by sampling and integrating over apertures	Jul 24, 2001	Aug 18, 2019
US6370371 ParkerVision	Applications of universal frequency translation	Apr 09, 2002	May 03, 2019
US7496342 ParkerVision	Down-converting electromagnetic signals, including controlled discharge of capacitors	Feb 24, 2009	Apr 14, 2020
US7515896 ParkerVision	Method and system for down-converting an electromagnetic signal, and transforms for same, and aperture relationships	Apr 04, 2009	Oct 21, 2018
US7724845 ParkerVision	Method and system for down-converting and electromagnetic signal, and transforms for same	May 25, 2010	May 09, 2020
US7822401 ParkerVision	Apparatus and method for down-converting electromagnetic signals by controlled charging and discharging of a capacitor	Oct 26, 2010	Apr 14, 2020
US6963734 ParkerVision	Differential frequency down-conversion using techniques of universal frequency translation technology	Nov 08, 2005	May 03, 2020

^*Current Assignee information sourced from MaxVal’s Assignment Database.

As in Complaint:

ParkerVision alleged that Qualcomm infringed the claims of the patent-in-suit by using energy sampling in the integrated circuits of various receiver and transceiver products that Qualcomm sells to original equipment manufacturers (OEM), who incorporates those products in mobile communication devices such as smartphones. The suit named a few Qualcomm’s transceiver chips such as Astra, Bahama, Eagleray, Halley, Hercules, Iceman, Iris, etc. that are used in phones and other electronic devices.

ParkerVision demanded Court to enter judgment in favor and issue an order blocking Qualcomm from using the patented technology or award compensatory damages and a reasonable royalty.  

Case Proceedings:

According to Court documents, Qualcomm denied that it infringed ParkerVision’s patents and contended that the patents are invalid.

The parties filed motions for summary judgment regarding validity (filed by ParkerVision) and non-infringement (filed by Qualcomm). However, court denied the parties’ respective motions for summary judgment. A jury trial was held in Oct 2013 and the jury returned verdict rejecting Qualcomm’s invalidity claims and finding that Qualcomm infringed the ’551, ‘518, ‘371 and ‘342 patents. Following the jury verdict, Qualcomm moved for judgment as a matter of law (JMOL) concerning invalidity and non-infringement. In May 2014, the court held a hearing and granted Qualcomm’s non-infringement motion. Accordingly, in Jun 2014, judgment was rendered in favor of Qualcomm against ParkerVision.

ParkerVision has filed an appeal as district court’s judgment was not in their favor.

See 2014-1612 for more details. To get alerts on cases filed/closed, subscribe to our Litigation Alerts.

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[i] MaxVal offers Patent Assignment Alert service where subscribers receive email alerts when assignments relating to target applications, patents or entities of interest are recorded.

[ii] Expected expiration date. Patent Term Estimator is a free web-based tool that automatically calculates patent terms and expiration dates for U.S. utility patents.

Qualcomm, Samsung, Apple Sued by Enterprise Systems

Case Filed: Jun 17, 2014

Court: District of Delaware Court

Case Summary:

Enterprise Systems Technologies SARL (Enterprise Systems), a Luxembourg-based corporation filed a complaint against Qualcomm Incorporated (Qualcomm), California-based designer and marketer of wireless telecommunications products and services alleging that the latter has infringed two of their US patents.

Patents-in-Suit:

The patents involved in the suit are:

Patent Number	Title	Issue Date	Expiration Date[i]	Current Assignee[ii]
US6785381	Telephone having improved hands free operation audio quality and method of operation thereof	Aug 31, 2004	Feb 19, 2023	Enterprise Systems
US6594366	Headset/radio auto sensing jack	Aug 15, 2003	Dec 02, 2017	Enterprise Systems

Assignee information sourced from MaxVal’s Assignment Database.

The ‘381 patent in general relates to improve signal noise ratio for telephones operating in hands free mode of operation while the ‘366 patent relates to sensing audio input/output plugs for circuits.

As in Complaint:

Enterprise Systems alleged that Qualcomm directly or indirectly infringed the ‘381 and ‘366 patents through the  manufacture, importation, sale of certain components, including integrated circuits, audio codecs, processors, system-on-chips, and other components, which are utilized in communications or computing devices, smartphone handsets, tablet computers, e-readers, media players, laptop computers and other communications and/or computing-capable consumer electronic devices.

The complaint further added that Qualcomm’s accused products are incorporated in Samsung’s Galaxy S5 smartphones and Apple’s iPhone 5S devices, thus contributing and inducing infringement.

Enterprise Systems said that Qualcomm had actual knowledge of the patents-in-suit before filing the complaint and stated that their act of infringement was willful and deliberate. Damages along with interests and other reliefs along with a jury trial were requested.  

Other Cases Filed:

Apart from Qualcomm, other mobile companies such as Motorola, Apple, Samsung, etc. were sued on the same day asserting the same patents. Enterprise Systems in the recent past (2014), have filed more than half a dozen complaints asserting these and other patents.

See 1:14-cv-00768 for more details. To get alerts on cases filed/closed, subscribe to our Litigation Alerts.

Max-Insight enables you to access all of our patent tools such as Patent Term Estimator, Patent Family Tree, Has This Patent Been Litigated, etc. in one location. Max-Insight is available in 4 different subscriptions: Free, Bronze, Silver and Gold with varying usage levels. To learn more about Max-Insight, click here.

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[i] Expected expiration date. Patent Term Estimator is a free web-based tool that automatically calculates patent terms and expiration dates for U.S. utility patents.

[ii] MaxVal offers Patent Assignment Alert service where subscribers receive email alerts when assignments relating to target applications, patents or entities of interest are recorded.

Qualcomm Settles Lawsuits with Semcon and Chip Packaging Solutions

Qualcomm, a semiconductor company was sued by Semcon Tech and Chip Packaging Solutions for patent infringement. Both the cases are concluded with details as below:

Case Number: 1:12-cv-00251 Plaintiff: Semcon Tech Defendant: Qualcomm Case Filed: Mar 01, 2012 Case Closed: Jul 31, 2013 Court: Delaware District Court Judge: Richard G. Andrews		Case Number: 8:13-cv-00482 Plaintiff: Chip Packaging Solutions Defendant: Qualcomm Case Filed: Mar 26, 2013 Case Closed: Jul 30, 2013 Court: California Central District Court Judge: Andrew J. Guilford
Semcon Tech, a Texas-based company filed a patent infringement case against Qualcomm claiming that their patent was infringed. The patent involved in the case was US7156717 entitled ‘Situ finishing aid control’ was issued on Jan 02, 2007 and expiring* by Sep 20, 2021. The patent is currently assigned+ to Semcon Tech (source: MaxVal’s Assignment Database). Plaintiff alleged that defendant markets products incorporating semiconductor components made by a process claimed by the ‘717 patent and cites the ARM7 core-based integrated circuits as infringing products. The parties have requested Court to dismiss claims and counterclaims as they have settled the case amongst themselves. Considering the request, Court ordered claims dismissed with prejudice and counterclaims dismissed without prejudice. Terms of settlement were not disclosed.		Chip Packaging Solutions (CPS) filed a patent infringement case against Qualcomm alleging infringement of a patent US5838072 entitled ‘Intrachip power distribution package and method for semiconductors having a supply node electrically interconnected with one or more intermediate nodes’. The patent was issued on Nov 17, 1998 and expires* on Feb 24, 2017. The patent is currently assigned+ to CPS (source: MaxVal’s Assignment Database). CPS alleged that defendant manufactures products and systems comprising semiconductor chip packages including Qualcomm MDM8220 Multi Chip Package Mobile Data Modem that embody the claims covered in the ‘072 patent. The case is concluded as CPS filed a motion to dismiss the case and upon consideration the Court ordered dismissal with prejudice, with each party incurring their own costs.

  

For more details on the cases, see 1:12-cv-00251 and 8:13-cv-00482. To get alerts on cases filed/closed, subscribe to our Litigation Alerts.

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* Expected expiration date. Patent Term Estimator is a free web-based tool that automatically calculates patent

terms and expiration dates for U.S. utility patents.

+ MaxVal offers Patent Assignment Alert service where subscribers receive email alerts when assignments relating to target applications, patents or entities of interest are recorded.