- Petitions against all four patents in first lawsuit have now been filed.
- Judge Dalton's ruling explained.
- Clock is not yet ticking on the second lawsuit.
On July 2, 2014, RPX Corp. (NASDAQ:RPXC) and I jointly filed a fourth petition requesting inter partes review (IPR) of a ParkerVision (NASDAQ:PRKR) patent - this one to invalidate the 7,496,342 patent (IPR2014-01107). As mentioned in my previous article, all four petitions are available for free online; click on Direct Link under the first heading (Patent Review Processing System), search for the IPR2014-xxxxx numbers above); or download them directly; updates will be added as the IPR process continues.
Also, on July 2, 2014, ParkerVision filed with the PTAB that Sterne Kessler will act as lead counsel for the first three IPRs.
A Clarification of Judge Dalton's ruling
There seems to be a fairly widespread misunderstanding as to the meaning of Judge Dalton's ruling for Qualcomm (NASDAQ:QCOM). Nearly everyone seems to believe that if the CAFC affirms Judge Dalton, there will be a new trial. This is incorrect. The judge granted two of Qualcomm's motions. The first granted a JMOL of non-infringement, and the second granted a new trial in the alternative (i.e., if the CAFC reverses the JMOL).
This means that if the CAFC affirms the JMOL, the case is over - Qualcomm did not infringe, and there is no retrial. If the CAFC reverses the JMOL, but affirms the grant of a new trial (which have different standards of review, see below), then obviously, a new trial would be held, at a minimum, on infringement and damages.
A JMOL is reviewed de novo by the CAFC, thus the CAFC can decide based purely on the record. This is the lowest bar for reversal. The grant of a new trial is reviewed for an abuse of discretion, which is a much higher bar - the CAFC will give much greater deference to Judge Dalton. I think both of the judge's findings speak for themselves, and are very unlikely to be reversed. I would also expect Qualcomm to file a cross-appeal. We should see filings from both sides over the next few months.
As I have said in earlier articles, the IPRs will reach a conclusion in less than 18 months, almost surely before any possible retrial. If the patents are invalidated by the PTAB (as I fully expect they will be), it is very unlikely that would be a retrial - at least on these four patents.
ParkerVision has not served the second complaint on Qualcomm
While Jeff Parker has announced (and filed) a second lawsuit against Qualcomm (and HTC) on May 1, ParkerVision has not yet served the complaint. This is very unusual, and means that as yet, there is no clock ticking on the second lawsuit. Qualcomm has no need to respond (and has not responded), since until there is service, there is no formal lawsuit and nothing to respond to. At the very least, it has given Qualcomm at least two extra months to prepare IPRs against the ParkerVision patents listed in the May 1 filing.
In early May, ParkerVision asked for the case to be transferred to Judge Dalton; however, since then, things have gone very badly for ParkerVision, and the judge is clearly not happy with ParkerVision.
My personal guess is that the case in Florida will be quietly dropped, and a new lawsuit will be filed elsewhere (possibly the Eastern District of Texas). This would be called forum shopping, and would be frowned upon by the courts. We will see over the next months how and where ParkerVision intends to pursue the second lawsuit.
Additional disclosure: I am long a small amount of QCOM.