Parkervision, Inc. v. Qualcomm Inc., Appeal Nos. 2022-1755, 2024-2221 (Fed. Cir. Sept. 6, 2024)

In this week’s Case of the Week, the Federal Circuit weighed in again on a 13-year-old patent dispute concerning Qualcomm’s alleged infringement of signal processing patents owned by ParkerVision. Among other things, the panel addressed questions of collateral estoppel that arose from prior proceedings between the parties on similar patents, as well as from co-pending inter partes review (“IPR”) proceedings. The Court held that subsidiary findings by the Patent Trial and Appeal Board in an inter partes review cannot collaterally estop a patentee from making contrary validity arguments on related claims in district court litigation. The Court also provided guidance on applying collateral estoppel to questions of infringement where the defendant had previously been found not to infringe claims similar to those asserted. It ultimately vacated the district court’s summary judgment of non-infringement and remanded for further proceedings.

The parties’ dispute dates back to 2011, when ParkerVision sued Qualcomm for allegedly infringing claims of U.S. Patent No. 6,061,551. That action ended when the Federal Circuit affirmed the district court’s judgment as a matter of law on non-infringement, on the basis that Qualcomm’s accused products did not meet a certain limitation in the asserted ’551 patent claims, which the court referred to as the “generating limitation.” ParkerVision commenced the instant action while that action was pending, and asserted that Qualcomm had also infringed claims of its U.S. Patent Nos. 7,218,907—which is related to the ’551 patent—and 6,091,940, which is unrelated but has claims directed to similar technology. Qualcomm also filed IPR petitions that challenged the ’940 patent, which ultimately resulted in that patent’s apparatus claims being found invalid over the prior art, but its method claims being upheld. Based in part on findings from the prior litigation and IPR proceedings, the district court in the instant action granted summary judgment of non-infringement, which ParkerVision appealed.

The Federal Circuit first addressed the district court’s summary judgment finding that Qualcomm had not infringed certain claims of the ’907 and ’940 patents, on the basis of collateral estoppel from the prior finding of non-infringement on the ’551 patent. In order to assess collateral estoppel, the district court was required to determine whether the prior litigated issue was actually the same as the issue at stake in the current litigation, which in this context meant assessing whether the non-infringed ’551 claims and the current claims at issue had the same scope. Although the ’907 and ’940 claims at issue did not expressly recite the pivotal “generating limitation” from the ’551 patent, the district court relied on what it described as “unrebutted” expert testimony that the scope of the claims was materially the same. The Federal Circuit found this constituted error.

First and foremost, the Federal Circuit explained that determining the scope of a patent claim necessarily requires engaging in claim construction, which in turn must begin with an examination of the intrinsic evidence, such as the patent and its prosecution history. As such, the district court had erred by relying only on expert testimony—which is extrinsic evidence—to conclude that the scope of the claims was the same. The Court also found the testimony the district court relied on was not really “unrebutted,” since ParkerVision’s expert had provided contrary opinions that the district court appeared to discount because they were not in “claim chart” form. Because there was “at least a dispute as to the scope of the asserted [] claims,” the panel vacated the lower court’s entry of summary judgment of non-infringement.

Although it was not directly before the panel, the Court also addressed the district court’s exclusion of certain portions of ParkerVision’s expert testimony on validity. This was also based on collateral estoppel, insofar as the expert proffered opinions that were contrary to the Board’s (affirmed) IPR findings concerning the prior art. On this point, the Federal Circuit again agreed with ParkerVision, relying solely on the standards of proof applicable to IPR and district court proceedings. Specifically, though an IPR petitioner is required to prove invalidity (and any subsidiary factual findings) by a preponderance of the evidence, a challenger in district court is required to prove invalidity by clear and convincing evidence. Due to the different standards of proof, the Federal Circuit held that a subsidiary factual finding by the Board cannot collaterally estop contrary arguments in district court on a different patent that has not yet been ruled invalid. Accordingly, the Federal Circuit reversed the district court’s grant of Qualcomm’s Daubert motion that had excluded expert testimony on this basis.

The Federal Circuit also reversed the exclusion of other expert testimony proffered by ParkerVision. Specifically, the Court rejected the district court’s reasoning that the experts were required to substantiate their opinions with original testing and simulations, finding that the lack of such testing in this case went to weight, not admissibility.

Accordingly, the findings of the district court were vacated-in-part, reversed-in-part, and remanded for further proceedings.

The full opinion can be found here.

By Jason A. Wrubleski

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Osseo Imaging, LLC v. Planmeca USA Inc., Appeal No. 2023-1627 (Fed. Cir. Sept. 4, 2024)

In this precedential opinion, the Federal Circuit addressed whether expert witnesses must have acquired skill in the relevant art at the time of invention to qualify as a “person of ordinary skill in the art.” The case concerned 3D imaging systems produced by the appellant, Planmeca, which the jury found had infringed patents for orthopedic imaging systems owned by the appellee, Osseo. The district court denied Planmeca’s motions for judgment as a matter of law as to invalidity and noninfringement, and rejected Planmeca’s argument that Osseo’s expert testimony should be disregarded because the expert had not acquired the requisite experience until 8 to 10 years after the alleged date of invention. The Federal Circuit affirmed the district court’s denial of judgment as a matter of law, and declined to add Planmeca’s proposed timing requirement, explaining that case law only requires an expert at a minimum to possess ordinary skill in the art. The Court also found that substantial evidence supported the jury’s verdict.

The full opinion can be found here.

By Brittani Gambrell

Broadband ITV, Inc. v. Amazon.com, Inc., Appeal No. 2023-1107 (Fed Cir. Sept. 3, 2024)

In this appeal from the United States District Court for the Western District of Texas, the Federal Circuit affirmed the district court’s finding that Broadband iTV’s five patents at issue—generally related to electronic programming guides for televisions—were directed to an abstract idea, and that the patents failed to provide an inventive step that would transform the abstract idea into a patent-eligible invention. The Federal Circuit reviewed the district court’s 35 U.S.C. § 101 analysis, which followed the two-step test set forth by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208 (2014), and found no error. Notably, this was the second time the Federal Circuit has held that certain Broadband iTV’s patents relating to electronic programming guides for televisions were directed to patent-ineligible subject matter.

The full opinion can be found here.

By Mario E. Delegato

This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.