2024 Federal Circuit IP Appeals – ParkerVision, Inc. v. Qualcomm Inc., 116 F.4th 1345 (Fed. Cir. Sept. 6, 2024) (Lourie, Mayer, Stark)

This appeal stems from the collateral estoppel effects of two proceedings—a first infringement suit filed by ParkerVision against Qualcomm (2011 Action) and a final written decision in an IPR—on a second infringement suit also filed by ParkerVision against Qualcomm (2014 Action). Asserted claims in the 2014 Action were challenged in the IPR. These claims are different from, but related to, claims asserted in the 2011 Action.

In ParkerVision, Inc. v. Qualcomm Inc., 621 F. App’x 1009 (Fed. Cir. 2015) (ParkerVision I), the court affirmed the district court’s grant of a judgment as a matter of law of non-infringement in the 2011 Action, which was premised on a construction of the “generating limitation” of the claims asserted in that proceeding. And, in a final written decision in the IPR related to U.S. Patent 6,091,940, the Board held that certain apparatus claims were shown to be unpatentable and that certain method claims were not shown to be unpatentable. The difference was that, although Qualcomm had proved that the prior art taught an apparatus that was “capable of” performing certain functions that would meet the claims, it had not shown that a skilled artisan would have been motivated to operate the prior art apparatus in such a way as to satisfy the method claims. These determinations were affirmed in ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1362-63 (Fed. Cir. 2018) (ParkerVision II).

In the 2014 Action, Qualcomm filed Daubert motions, seeking to exclude (1) testimony of ParkerVision’s validity expert, on the grounds that collateral estoppel from ParkerVision II precludes ParkerVision from attempting to contradict any of the Board’s findings and (2)  testimony from ParkerVision’s infringement experts was unreliable. The district court agreed, finding (1)  that ParkerVision II, which affirmed the PTAB’s invalidation of the challenged apparatus claims of the ’940 patent, collaterally estopped ParkerVision from relitigating factual issues related to the teachings of the prior art reference, which also was the basis of Qualcomm’s invalidity contentions against the method claims of the ’940 patent; and (2) that the infringement experts’ opinions were not supported by testing and simulation of the accused products.

Qualcomm also filed for summary judgment of non-infringement. Qualcomm contended that (1) ParkerVision was collaterally estopped based on ParkerVision I from asserting Qualcomm infringes certain claims of the ’940 patent, and (2) the accused products do not infringe other certain claims of the ’940 patent. The district court agreed because (1) there was no material dispute that the asserted claims were materially similar to those in ParkerVision I, in which the Federal Circuit had affirmed judgment of non-infringement and (2) Qualcomm’s expert testimony regarding non-infringement was unrebutted (due to the exclusion of ParkerVision’s expert testimony).

On appeal, ParkerVision first contended that there was no collateral estoppel effect from ParkerVision I because asserted claims in the 2014 Action were not “materially the same” as the claims in the 2011 Action. The Federal Circuit emphasized that determining claim scope requires undertaking a claim construction analysis under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). The court found that the district court had improperly relied principally on extrinsic evidence, ignoring the intrinsic evidence. The court also found that the district court had ignored portions of ParkerVision’s expert testimony. The court noted that the relevant claims in the 2014 Action did not expressly include the “generating limitation” of the asserted claims of the 2011 Action, nor did they otherwise appear on their face to require the narrower scope applied to that limitation in the 2011 Action. The court thus vacated and remanded to the district court to determine whether that scope was actually materially different.

ParkerVision also argued that the district court erred in applying collateral estoppel to preclude its validity expert’s testimony. In reversing the district court’s order, the Federal Circuit applied an exception to collateral estoppel that is implicated when, as here, “the second action involves application of a different legal standard” – namely, a preponderance of the evidence standard at the Board and a clear and convincing evidence standard at the district court. The court explained, “[a]lthough we have not previously addressed the question of whether a finding underlying an unpatentability decision in an IPR proceeding collaterally estops a patentee from making validity arguments regarding separate, related claims in district court litigation, we now hold that it does not.” The court drew a distinction between the affirmance of a Board finding that the claims were unpatentable and a Board finding that claims were not unpatentable. As to the latter, “those claims remain presumptively valid and can only be found invalid in district court litigation by clear and convincing evidence.” ParkerVision should be afforded the opportunity to defend the validity of the method claims that were not shown to be unpatentable in the IPR, including with evidence about what the prior art does and does not disclose.

ParkerVision finally asserted that the district court abused its discretion in excluding its infringement experts’ testimony as unreliable. The court reversed, holding that, because it was undisputed that the experts relied on the “type of documents… that experts in the field would reasonably consider,” there is “neither a factual nor legal basis here for finding that expert testimony is unreliable unless the expert herself undertakes to test or simulate the accused products.”

Related:

• Packet Intel. LLC v. NetScout Sys., Inc., 100 F.4th 1378 (Fed. Cir. May 2, 2024) (Lourie, Hughes, Stark) (holding that an infringement judgment on remand for determining correct damages is not “final” such that it is immune to subsequent developments relating to the patentability of the patent claims on which it was based (i.e., an affirmed finding of unpatentability in an IPR)).

This article appeared in the 2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions report.