DCT
6:23-cv-00384
ParkerVision Inc v. Texas Instruments Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ParkerVision, Inc. (Florida)
- Defendant: Texas Instruments Incorporated (Delaware)
- Plaintiff’s Counsel: The Mort Law Firm, PLLC; Daignault Iyer LLP
- Case Identification: 6:23-cv-00384, W.D. Tex., 05/18/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the district, has committed acts of infringement in the district, and has previously not contested venue in other litigation in the district.
- Core Dispute: Plaintiff alleges that Defendant’s wireless transceiver integrated circuits infringe three patents related to methods and systems for down-converting radio frequency signals.
- Technical Context: The technology at issue involves radio frequency (RF) direct conversion, a technique for translating high-frequency signals to lower-frequency "baseband" signals for processing, which is fundamental to modern wireless communication devices.
- Key Procedural History: The complaint alleges an extensive pre-suit history between the parties, beginning in January 2000, that included multiple meetings, non-disclosure agreements, technical disclosures by ParkerVision regarding its patented "Direct-to-Data" (D2D) technology, and a development and foundry agreement under which TI invested in ParkerVision and agreed to jointly develop RF transceivers.
Case Timeline
| Date | Event |
|---|---|
| 1998-04-21 | Earliest Priority Date for ’177 and ’528 Patents |
| 2000-01-01 | ParkerVision CEO meets with TI executive to discuss potential business relationship |
| 2000-02-01 | ParkerVision and TI enter into a Mutual Non-Disclosure Agreement |
| 2000-07-01 | TI considers making an equity investment in ParkerVision |
| 2000-08-01 | ParkerVision receives a quotation for TI to produce its ICs |
| 2000-09-08 | ParkerVision conducts an "Extended Disclosure Period" of its IC information for TI |
| 2001-03-01 | Earliest Priority Date for ’342 Patent |
| 2001-03-01 | TI enters into a development and foundry agreement with ParkerVision |
| 2001-05-01 | ParkerVision and TI engineers meet to discuss technology and product development |
| 2002-01-01 | TI representatives allegedly visit ParkerVision's offices |
| 2002-08-01 | TI provides ParkerVision with a quote for producing ICs |
| 2008-03-01 | TI and ParkerVision enter into a Non-Disclosure Agreement for mobile device RF ICs |
| 2009-02-24 | U.S. Patent No. 7,496,342 Issues |
| 2011-01-04 | U.S. Patent No. 7,865,177 Issues |
| 2015-08-25 | U.S. Patent No. 9,118,528 Issues |
| 2023-05-18 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,496,342 - "Down-Converting Electromagnetic Signals, Including Controlled Discharge of Capacitors," Issued February 24, 2009 (’342 Patent)
The Invention Explained
- Problem Addressed: The patent addresses the general need for components that perform frequency down-conversion for various communication purposes, which is a foundational element in RF systems (’342 Patent, col. 2:40-45).
- The Patented Solution: The invention proposes methods and systems for down-converting an electromagnetic signal by using a switching module to repeatedly charge a capacitor with energy from an input signal and then discharge a portion of that stored energy to generate a down-converted output signal (’342 Patent, Abstract; col. 7:22-47). The process relies on aliasing, where a signal is sampled at a rate significantly lower than its carrier frequency to translate it to a lower frequency.
- Technical Importance: This approach sought to provide a more power-efficient and integrable method for direct RF-to-baseband conversion, moving away from more complex super-heterodyne architectures that dominated at the time (Compl. ¶15).
Key Claims at a Glance
- Independent Claim 19 (method) is asserted (Compl. ¶46).
- Claim 19 requires the following essential steps:
- receiving an information signal;
- electrically coupling the information signal to a first capacitor and an inverted information signal to a second capacitor;
- controlling a charging and discharging cycle of the first and second capacitors with first and second switching devices, respectively;
- performing a plurality of charging and discharging cycles to generate first and second down-converted signals;
- wherein the first capacitor discharges between six percent to fifty percent of its total charge when the first switching device is open; and
- wherein the second capacitor discharges between six percent to fifty percent of its total charge when the second switching device is open.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,865,177 - "Method and System for Down-Converting An Electromagnetic Signal, And Transforms For Same, And Aperture Relationships," Issued January 4, 2011 (’177 Patent)
The Invention Explained
- Problem Addressed: The patent’s background section describes conventional receiver architectures as being complex, expensive, and power-intensive, often requiring multiple stages of frequency conversion, filtering, and amplification to isolate a desired signal (’177 Patent, col. 30:29-32:41).
- The Patented Solution: The invention describes a system that uses "matched filtering/correlating" modules to down-convert a signal. These modules operate by recursively processing approximate half-cycles of a received carrier signal at a sub-harmonic rate, accumulating the results to form a down-converted signal directly at a baseband or intermediate frequency (’177 Patent, Abstract; col. 3:19-38).
- Technical Importance: This method purports to offer a highly integrated, low-power alternative to conventional receivers by performing filtering and frequency translation in a unified step, reducing component count and complexity (Compl. ¶17).
Key Claims at a Glance
- Independent Claim 14 (method) is asserted (Compl. ¶61).
- Claim 14 requires the following essential steps:
- receiving an input signal at a first matched filtering/correlating module;
- down-converting said input signal at said first matched filtering/correlating module according to a first control signal and outputting a first down-converted signal;
- receiving said input signal at a second matched filtering/correlating module;
- down-converting said input signal at said second matched filtering/correlating module according to a second control signal and outputting a second down-converted signal; and
- combining said second down-converted signal and said first down-converted signal to output a first channel down-converted signal.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,118,528 - "Method and System for Down-Converting an Electromagnetic Signal, and Transforms for Same, and Aperture Relationships," Issued August 25, 2015 (’528 Patent)
Technology Synopsis
Continuing the technology family of the ’177 Patent, the ’528 Patent describes a system for down-converting a modulated carrier signal to a baseband signal. The system uses a pair of switches controlled by separate signals to transfer portions of energy from the carrier signal to respective energy storage elements, which in turn output in-phase and inverted in-phase portions of the down-converted signal (’528 Patent, Abstract).
Asserted Claims
Independent Claim 1 (system) is asserted (Compl. ¶70).
Accused Features
The accused features are the down-conversion systems within the identified TI transceiver chips, which allegedly include the claimed switches, control signals, and energy storage elements (Compl. ¶¶72-76).
III. The Accused Instrumentality
Product Identification
Plaintiff accuses wireless transceiver integrated circuits (chips) sold by Texas Instruments, including the AFE76XX, AFE77XX, AFE79XX, and AFE80XX series ("TI Chips") (Compl. ¶8).
Functionality and Market Context
- The complaint alleges that the accused TI Chips are used in wireless devices and perform the function of down-converting a higher-frequency RF signal to a lower-frequency signal (Compl. ¶¶8, 49). This is a core function for the receiver portion of any wireless transceiver.
- The complaint provides a technical presentation slide related to an "AFE7500" chip, described as a "45nm CMOS RF-to-Bits LTE/WCDMA FDD/TDD 2x2 MIMO Base Station Transceiver SoC," to support its allegations (Compl. p. 10). The slide describes the chip as a "High integration 2x2 MIMO BS transceiver for lower power, size, complexity and cost" in 3G, 4G, and 4.5G base stations (Compl. p. 10). This visual evidence is used to allege that the accused chips are designed for modern wireless telecommunication standards (Compl. ¶¶64, 72).
IV. Analysis of Infringement Allegations
’342 Patent Infringement Allegations
| Claim Element (from Independent Claim 19) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving an information signal; | Each TI Chip receives an information signal, such as a high frequency RF signal. | ¶50 | col. 52:10-11 |
| electrically coupling the information signal to a first capacitor and an inverted information signal, generated from said information signal, to a second capacitor... | A first switching device couples the information signal to a first capacitor, and a second switching device couples an inverted information signal (generated by an inverter circuit) to a second capacitor. | ¶¶50-52 | col. 52:12-14 |
| controlling a charging and discharging cycle of the first capacitor with a first switching device electrically coupled to the first capacitor... | Each TI Chip controls the charging and discharging of the first capacitor using a first switching device (e.g., one or more transistors). | ¶53 | col. 52:15-18 |
| controlling a charging and discharging cycle of the second capacitor with a second switching device electrically coupled to the second capacitor... | Each TI Chip controls the charging and discharging of the second capacitor using a second switching device (e.g., one or more transistors). | ¶53 | col. 52:15-18 |
| performing a plurality of charging and discharging cycles of the first capacitor to generate a first down-converted information signal... | The TI Chip performs multiple charge/discharge cycles on the first capacitor to generate a first down-converted signal across a first low impedance load. | ¶55 | col. 52:19-21 |
| performing a plurality of charging and discharging cycles of the second capacitor to generate a second down-converted information signal... | The TI Chip performs multiple charge/discharge cycles on the second capacitor to generate a second down-converted signal across a second low impedance load. | ¶56 | col. 52:19-21 |
| wherein the first capacitor discharges between six percent to fifty percent of the total charge stored therein during a period of time that the first switching device is open... | On information and belief, the first capacitor discharges between 6% and 50% of its stored charge when the first switching device is OFF. | ¶58 | col. 52:22-26 |
| and wherein the second capacitor discharges between six percent to fifty percent of the total charge stored therein during a period of time that the second switching device is open. | On information and belief, the second capacitor discharges between 6% and 50% of its stored charge when the second switching device is OFF. | ¶58 | col. 52:27-31 |
Identified Points of Contention
- Factual/Evidentiary Question: A primary question will be whether Plaintiff can produce evidence that the accused TI Chips, in operation, discharge their capacitors within the specific range of "six percent to fifty percent" as required by the claim. The complaint alleges this "on information and belief," indicating it may be a point requiring discovery and expert analysis.
- Scope Question: How the complaint's general description of "one or more transistors" and "metal traces" maps to the claimed "switching device" may be scrutinized.
’177 Patent Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving an input signal at a first matched filtering/correlating module; | Each TI Chip receives a high frequency RF input signal at a first matched filtering/correlating module, which is described as linear time-variant circuitry that samples the signal. | ¶64 | col. 194:58-61 |
| down-converting said input signal at said first matched filtering/correlating module according to a first control signal and outputting a first down-converted signal; | The first module down-converts the input signal using a first control signal (e.g., a first LO signal) and outputs a first down-converted baseband signal. | ¶65 | col. 194:62-64 |
| receiving said input signal at a second matched filtering/correlating module; | Each TI Chip receives the same RF input signal at a second matched filtering/correlating module. | ¶64 | col. 195:1-3 |
| down-converting said input signal at said second matched filtering/correlating module according to a second control signal and outputting a second down-converted signal; and | The second module down-converts the input signal using a second control signal (e.g., a second LO signal) and outputs a second down-converted baseband signal. | ¶66 | col. 195:1-5 |
| combining said second down-converted signal and said first down-converted signal to output a first channel down-converted signal. | A differential amplifier circuit combines the first and second down-converted signals to produce a first channel down-converted signal. | ¶67 | col. 195:6-8 |
Identified Points of Contention
- Scope Question: The central dispute may turn on whether the accused circuitry—described by the Plaintiff as "linear time-variant circuitry that samples a modulated RF carrier signal at an aliasing rate"—meets the specific definition of a "matched filtering/correlating module" as understood within the context of the patent.
- Technical Question: The complaint alleges the modules accumulate and transfer energy from the RF signal during "non-negligible, periodic apertures" (Compl. ¶64). The evidence required to demonstrate that this operation constitutes "matched filtering/correlating" as claimed will be a key technical issue.
V. Key Claim Terms for Construction
From the ’342 Patent:
- The Term: "discharges between six percent to fifty percent of the total charge stored therein"
- Context and Importance: This numerical limitation is highly specific and dispositive for literal infringement. Practitioners may focus on this term because infringement will depend entirely on whether the accused devices can be proven to operate within this precise numerical range.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states this range is for "one embodiment" and that "other ranges may be used to define other embodiments" (’342 Patent, col. 50:18-21), which a defendant might argue makes this range exemplary, not limiting, though it appears explicitly in the claim.
- Evidence for a Narrower Interpretation: The claim itself recites the specific range, which is the strongest evidence for a narrow interpretation. The specification describes this range as being a feature of a particular embodiment where the capacitor is "sized in accordance with embodiments of the invention" (’342 Patent, col. 50:15-18).
From the ’177 Patent:
- The Term: "matched filtering/correlating module"
- Context and Importance: This is a technical term of art whose definition is critical to the scope of Claim 14. Practitioners may focus on this term because the infringement case hinges on whether the circuitry in TI's chips performs an operation that can be properly characterized as "matched filtering/correlating" as taught by the patent, versus a more generic sampling or mixing function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the invention is a "new paradigm" and that the term should be understood in the context of the patent's teachings on recursive operations on half-cycles of a carrier signal, potentially distinguishing it from conventional matched filters (’177 Patent, col. 130:28-44).
- Evidence for a Narrower Interpretation: The patent devotes significant space to the mathematical and theoretical underpinnings of matched filtering, including discussions of impulse responses and signal-to-noise ratio optimization (’177 Patent, col. 136:36-138:22). A defendant may argue that to be a "matched filtering/correlating module," the accused circuit must implement these specific, mathematically defined functions.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain counts for indirect (induced or contributory) infringement.
- Willful Infringement: The complaint does not explicitly use the word "willful" in its infringement counts. However, it lays a detailed factual predicate that may be used to support a willfulness claim by alleging pre-suit knowledge. The complaint asserts that through a multi-year business relationship including NDAs, technical meetings, and a joint development agreement, TI engineers "learned how to design/develop an integrated circuit (IC)/wireless chip using ParkerVision's patented direct-conversion technology" and subsequently used that knowledge without permission (Compl. ¶¶21-35).
VII. Analyst’s Conclusion: Key Questions for the Case
This dispute appears to center on highly technical aspects of RF circuit design, but it is framed by a notable history of alleged collaboration and disclosure between the parties. The key questions for the case will likely be:
- A central issue will be one of technical and factual proof: Can ParkerVision demonstrate through discovery and expert testimony that TI's transceiver chips, which are complex multi-function devices, actually perform the specific operations required by the claims, such as discharging a capacitor within the precise 6-50% range or executing a true "matched filtering/correlating" function?
- A key question of claim construction will be determinative: How will the court define the technical term "matched filtering/correlating module," and will that definition be broad enough to read on the sampling and aliasing architecture allegedly used in TI's products?
- A critical question surrounding damages and intent will be: How will the extensive alleged history of ParkerVision disclosing its proprietary technology to TI under NDA influence the proceedings, particularly regarding any potential finding of willfulness and the calculation of damages?