The U.S. Patent Trial and Appeal Board is allowing ParkerVision Inc. (PRKR) additional discovery from RPX Corp. (RPXC) and Dr. Michael Farmwald in three petitions for IPRs to invalidate patents at issue in an infringement claim ParkerVision filed against Qualcomm Inc.
At issue is whether the IPRs filed by San Francisco-based RPX and Dr. Farmwald should have identified Qualcomm as the real party of interest. Qualcomm was previously time barred from filing an IPR.
ParkerVision and Qualcomm have been involved in patent litigation for a number of years involving wireless-network technology. ParkerVision won a $173 million verdict against Qualcomm that was later overturned on appeal.
Jacksonville, Florida-based ParkerVision is appealing that decision and also has another infringement suit against Qualcomm in U.S. District Court in Orlando, Florida. The second case involves patents related to the way mobile devices send information to a cell tower. That case also names HTC Corp, a Qualcomm customer as a client.
The three IPRs at issue before the PTAB are IPR 2014-00946 (U.S. Patent No. 6,266,518 B1), IPR 2014-00947 (U.S. Patent No. 6,061,551) and IPR2014-00948 (U.S. Patent No. 6,370371 B1).
Shares of ParkerVision are currently trading at around 93 cents a share on the Nasdaq.
“Among the facts alleged by Patent Owner to show that there exists more than a mere possibility or mere allegation that something useful to these proceedings will be found, we find that the following are most persuasive,” said the ruling by Administrative Patent Judges Michael Zecher, Bart Gerstensblith and Jon Tornquist.
“First, is Patent Owner’s evidence regarding RPX Corp.’s business model. See, e.g., Mot. 2–3 (RPX ‘serve[s] as an extension of the client’s in-house legal team . . . [and services] include.. the facilitation of challenges to patent validity.’ (last alteration in original)); Exs. 2018–20.
“Second, is that Qualcomm was an RPX Corp. client as recently as six months prior to RPX Corp.’s engagement of counsel in the instant proceedings, and Qualcomm was a client of RPX Corp. during the time Qualcomm was involved in district court litigation involving the three patents-at-issue in these proceedings. Mot. 4; Opp. 2.
“Third, is that Patent Owner and Qualcomm are engaged in litigation involving the patents-at- issue in these proceedings and, as of the date the three petitions were filed in these proceedings, Qualcomm was time-barred under 35 U.S.C. § 315(b) from filing petitions requesting an inter partes review. Mot. 1–3; Ex. 2012; see also Pet. 1 (referencing the district court litigation between ParkerVision, Inc. and Qualcomm, Inc.).
The U.S. Patent Trial and Appeal Board further held that RPX and Dr. Farmwald’s “opposition raises several arguments in response to Patent Owner’s Motion, but the arguments are principally directed to whether Patent Owner’s Requests lack clarity and overreach. We do not find these arguments persuasive to show that something useful may not be found. Accordingly, this factor weighs in favor of granting Patent Owner’s Motion.
Attorneys for both sides couldn’t be reached for comment.
Glenn Garmont, a spokesman for ParkerVision, said the company is trying to prove that Qualcomm is the real party of interest to the IPRs and that as a result they should be dismissed because Qualcomm is already timed barred from pursuing such IPRs.
Allan Whitescarver, a spokesman for RPX, declined to comment.
Last month, ParkerVision, the developer and marketer of semiconductor technology solutions for wireless applications, announced that the PTAB denied institution of trial of all challenged claims for Inter Partes review of ParkerVision patent 7,496,342.
That IPR petition was filed in July, 2014 by RPX Corp. and Dr. Farmwald against five claims of the '342 patent. The '342 patent is one of the four patents subject to ParkerVision's pending appeal in its patent infringement case against Qualcomm.
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