DCT
6:23-cv-00389
ParkerVision Inc v. NXP Semiconductors NV
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ParkerVision, Inc. (Florida)
- Defendant: NXP Semiconductors N.V. (Netherlands), NXP B.V. (Netherlands), NXP USA, Inc. (Delaware)
- Plaintiff’s Counsel: The Mort Law Firm, PLLC; Daignault Iyer LLP
- Case Identification: 6:23-cv-00389, W.D. Tex., 09/08/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant NXP USA, Inc. is registered to do business in Texas and maintains a regular and established place of business in the district. The foreign NXP entities are alleged to be subject to personal jurisdiction in the district.
- Core Dispute: Plaintiff alleges that Defendant’s radio frequency (RF) transceiver integrated circuits infringe three patents related to multi-protocol wireless communication and RF signal down-conversion technology.
- Technical Context: The dispute centers on the architecture of semiconductor chips that enable wireless communication, a foundational technology for markets including automotive, mobile devices, and the Internet of Things (IoT).
- Key Procedural History: The complaint alleges that in 2006, ParkerVision disclosed its patented down-conversion technology to Freescale Semiconductor, which was later acquired by NXP in 2015. It further alleges that Freescale subsequently filed a patent application in a related technical area that cited a ParkerVision patent on its face. The complaint also notes that NXP acquired Marvell Technology Group's Wi-Fi and Bluetooth business unit in 2019, which is relevant to technical publications cited as evidence.
Case Timeline
| Date | Event |
|---|---|
| 1998-10-21 | Earliest Priority Date for '177 and '528 Patents |
| 2000-04-03 | Earliest Priority Date for '686 Patent |
| 2006-02 | ParkerVision alleges meeting with Freescale (NXP predecessor) |
| 2006-02-20 | ParkerVision alleges sending technology white paper to Freescale |
| 2008-01-29 | Freescale files U.S. Patent Application No. 12/021,534 |
| 2009-01-27 | U.S. Patent No. 7,483,686 Issues |
| 2011-01-04 | U.S. Patent No. 7,865,177 Issues |
| 2015-08-25 | U.S. Patent No. 9,118,528 Issues |
| 2015-12 | NXP merges with Freescale |
| 2018-03-01 | Accused product TEF5100 allegedly offered for sale on or before this date |
| 2019-12 | NXP acquires Marvell's Wi-Fi and Bluetooth assets |
| 2023-09-08 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,483,686 - “Universal Platform Module and Methods and Apparatuses Relating Thereto Enabled by Universal Frequency Translation Technology”
The Invention Explained
- Problem Addressed: The patent’s background describes the challenge that modern communication devices often need to support multiple wireless standards (e.g., cellular, Wi-Fi, Bluetooth), and that conventional approaches require separate, costly, and power-intensive hardware for each standard, making devices “platform-bound” (’686 Patent, col. 1:10-31).
- The Patented Solution: The invention proposes a “universal platform module” (UPM) built around a core “universal frequency translation” (UFT) module. This UFT module can be configured to perform frequency up-conversion or down-conversion for a wide range of protocols, allowing a single, flexible hardware architecture to be programmed to handle different communication standards instead of requiring multiple dedicated radio circuits (’686 Patent, Abstract; col. 2:32-46).
- Technical Importance: By enabling a single hardware platform to be reconfigured for multiple wireless protocols, the invention aimed to reduce the size, cost, and power consumption of multi-mode communication devices (Compl. ¶¶34-38).
Key Claims at a Glance
- The complaint asserts infringement of at least independent method Claim 11 (Compl. ¶50).
- The essential elements of Claim 11 are:
- Controlling a multi-platform module that includes a plurality of transceivers, each with a frequency translation module.
- The frequency translation module comprises a switch to sub-sample and transfer energy from a first electromagnetic (EM) signal, and a storage module to store the transferred energy.
- A second EM signal with a different frequency is generated from the stored energy.
- Operating a first transceiver according to a first wireless standard (e.g., Wi-Fi) using a first protocol sub-module.
- Operating a second transceiver according to a second wireless standard (e.g., Bluetooth) using a second protocol sub-module.
U.S. Patent No. 7,865,177 - “Method and System for Down-Converting An Electromagnetic Signal, And Transforms For Same, And Aperture Relationships”
The Invention Explained
- Problem Addressed: The patent explains that conventional radio receivers, such as super-heterodyne architectures, are complex and inefficient. They require multiple stages of frequency mixing and filtering to convert a high-frequency radio signal down to a baseband signal for processing, which results in larger, more expensive, and power-hungry chips (’177 Patent, col. 30:52 - col. 32:15).
- The Patented Solution: The patent discloses a more direct method of frequency down-conversion based on under-sampling and energy transfer. The technique uses a switch controlled by an aliasing signal to sample the incoming high-frequency signal during very short time windows, or "apertures." During these apertures, a non-negligible amount of energy is transferred from the signal and accumulated (e.g., in a capacitor), which has the effect of translating the signal’s frequency in a single step and improving the signal-to-noise ratio (’177 Patent, Abstract; col. 69:11 - col. 70:33).
- Technical Importance: This direct-conversion approach, by aiming to eliminate entire intermediate frequency (IF) stages, offered a path to creating smaller, more integrated, and more power-efficient RF transceivers for wireless devices (Compl. ¶¶35-36, 38).
Key Claims at a Glance
- The complaint asserts infringement of at least independent method Claim 14 (Compl. ¶70).
- The essential elements of Claim 14 are:
- Receiving an input signal at a first matched filtering/correlating module.
- Down-converting the input signal at the first module using a first control signal to output a first down-converted signal.
- Receiving the input signal at a second matched filtering/correlating module.
- Down-converting the input signal at the second module using a second control signal to output a second down-converted signal.
- Combining the first and second down-converted signals to output a first channel down-converted signal.
U.S. Patent No. 9,118,528 - “Method and System for Down-Converting an Electromagnetic Signal, and Transforms for Same, and Aperture Relationships”
Technology Synopsis
- This patent is related to the ’177 Patent and further details a system for down-converting a modulated carrier signal. The claimed system uses a first switch and first energy storage element to produce an in-phase baseband signal portion, and a second switch and second energy storage element to produce an inverted in-phase signal portion. These two differential signal portions are then combined by a differential amplifier circuit to create the final down-converted signal, a common technique for improving noise rejection in RF circuitry (’528 Patent, Abstract; Compl. ¶¶87-92).
Asserted Claims
- Claim 1 (Compl. ¶85).
Accused Features
- The accused NXP chips are alleged to contain the claimed system for frequency down-conversion, including the use of switches, control signals, energy storage elements, and a differential amplifier to process high-frequency RF signals (Compl. ¶¶87-92).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are a range of NXP receiver and/or transceiver integrated circuits, collectively referred to as “NXP Chips.” The complaint identifies numerous product families, including the TEF510x, IW620, IW416, and various 88Wxxxx series chips (Compl. ¶24).
Functionality and Market Context
- The complaint alleges the accused products are “Multi-platform NXP Chips” that can perform simultaneous operations for multiple wireless standards, such as Wi-Fi and Bluetooth (Compl. ¶52). They are alleged to contain multiple receiver and transmitter paths to handle different communication protocols (Compl. ¶54). A core accused functionality is the down-conversion of high-frequency RF signals to lower-frequency baseband signals for processing (Compl. ¶¶55, 72, 87). The complaint provides a block diagram of an exemplary accused product, the 88W8977, showing distinct blocks for Wi-Fi and Bluetooth RF, MAC/Baseband processing, and a shared RF front-end (Compl. ¶67).
- These chips are alleged to be key components in a wide variety of end-market applications, including automotive systems, industrial and IoT devices, mobile phones, and communication infrastructure (Compl. ¶9).
IV. Analysis of Infringement Allegations
'686 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| controlling at least one multi-platform module to communicate with at least one of a plurality of communication links, the at least one multi-platform module includes a plurality of transceivers each having at least one frequency translation module | The NXP Chip is a multi-platform module with multiple receiver/transmitter paths (transceivers) for protocols like Wi-Fi and Bluetooth, each containing a down-converter (frequency translation module). A block diagram of the 88W8977 chip is provided as an example of this architecture (Compl. ¶67). | ¶54, ¶55, ¶67 | col. 50:50-52 |
| wherein the at least one frequency translation module comprises: a switch configured to operate according to an energy transfer signal and to sub-sample and transfer energy from a first electromagnetic (EM) signal... | The frequency translation module allegedly uses one or more transistors (a switch) controlled by a local oscillator (LO) signal to sub-sample a high-frequency RF signal. | ¶56 | col. 50:53-56 |
| and a storage module coupled to the switch and configured to store said transferred energy... | The module allegedly includes one or more capacitors (a storage module) coupled to the transistors to store energy as current passes through the switch. | ¶57 | col. 50:57-58 |
| whereby a second EM signal is generated from said stored energy, said second EM signal having a frequency different from said first EM signal... | A lower-frequency baseband signal is allegedly generated when the capacitors discharge to a load. The complaint points to an IEEE paper circuit diagram as evidence of this process (Compl. ¶65). | ¶58, ¶65 | col. 50:59-62 |
| operating a first transceiver... in conformance with a first standard/protocol combination using a first standard/protocol sub-module... | The NXP Chip is alleged to operate a transceiver path in conformance with a Wi-Fi standard using a sub-module that controls Wi-Fi communications. | ¶59 | col. 52:13-21 |
| and operating a second transceiver... in conformance with a second standard/protocol combination using a second standard/protocol sub-module. | The NXP Chip is alleged to operate a second transceiver path in conformance with the Bluetooth standard using a sub-module that controls Bluetooth communications. | ¶60 | col. 52:13-21 |
'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... | The NXP Chip receives a high-frequency RF input signal at a module of linear time-variant circuitry, which samples the signal at an aliasing rate using a switch. | ¶73 | col. 194:56-58 |
| 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 chip allegedly down-converts the input signal at the first module according to a first LO signal (control signal) and outputs a first baseband signal (down-converted signal). | ¶74 | col. 194:59-62 |
| receiving said input signal at a second matched filtering/correlating module... | The NXP Chip also receives the RF input signal at a second, similar module of linear time-variant circuitry. | ¶73 | col. 194:63-65 |
| 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... | The chip allegedly down-converts the input signal at the second module according to a second LO signal and outputs a second baseband signal. A circuit diagram from an IEEE paper is referenced as showing this architecture (Compl. ¶81). | ¶75, ¶81 | col. 194:66 - col. 195:3 |
| and combining said second down-converted signal and said first down-converted signal to output a first channel down-converted signal. | A differential amplifier circuit within the NXP Chip allegedly combines the first and second baseband signals to output a final channel down-converted signal. | ¶76 | col. 195:4-6 |
Identified Points of Contention
- Architectural Scope: A potential issue for the ’686 Patent is whether the accused chips, which integrate separate functional blocks for Wi-Fi and Bluetooth, meet the definition of a single "multi-platform module" as claimed. The defense may argue the patent requires a more unified, reconfigurable architecture rather than simply co-locating different standard-specific circuits on a single die.
- Technical Mechanism: For all asserted patents, a central question may be whether the accused chips’ down-converters operate via the claimed mechanism of "sub-sampling and transferring energy" or "matched filtering/correlating." The complaint relies heavily on academic papers to describe the accused functionality (Compl. ¶¶65, 81). The defense may argue that these circuits are conventional mixers that do not perform the specific, unconventional functions described and claimed in the patents.
- Claim Language: The term "matched filtering/correlating module" in the ’177 Patent is not a standard industry term. Its construction, based on the patent’s detailed mathematical and theoretical disclosure, will be critical. A narrow construction could create a significant hurdle for the plaintiff's infringement case.
V. Key Claim Terms for Construction
The Term: "multi-platform module" (’686 Patent, Claim 11)
- Context and Importance: This term's scope is central to whether the accused products’ architecture infringes. The dispute may center on whether having distinct hardware blocks for different protocols (e.g., Wi-Fi and Bluetooth) on a single chip constitutes a "multi-platform module," or if the term requires a more integrated, singular hardware structure that is itself reconfigurable for different platforms.
- Intrinsic Evidence for a Broader Interpretation: The specification suggests the invention is directed to devices that can "provide service over one or more communication techniques" and can "be configured to communicate with any network" (’686 Patent, col. 34:8-15). This may support a broader functional definition covering any single-chip device that handles multiple protocols.
- Intrinsic Evidence for a Narrower Interpretation: Figures like FIG. 26A depict a single "Universal Platform Module (UPM)" block (2606) that interfaces with multiple distinct networks. This could suggest the "module" is a singular, unified entity, rather than just the co-location of separate protocol-specific modules on one integrated circuit.
The Term: "matched filtering/correlating module" (’177 Patent, Claim 14)
- Context and Importance: As a term seemingly coined by the patentee, its construction will be dispositive for infringement of the ’177 patent. Practitioners may focus on this term because if it is construed to require more than the function of a standard sampling mixer, the plaintiff’s burden of proof would increase significantly.
- Intrinsic Evidence for a Broader Interpretation: The complaint alleges this module is "linear time-variant circuitry that samples a modulated RF carrier signal at an aliasing rate" (Compl. ¶73), a functional description that could potentially read on various circuit designs.
- Intrinsic Evidence for a Narrower Interpretation: The patent’s detailed description contains extensive mathematical analysis of matched filtering, correlators, and optimizing signal-to-noise ratio, including discussions of optimal processor impulse responses (’177 Patent, col. 130:35 - col. 142:66). This detailed disclosure may support a narrower construction requiring a circuit that performs these specific, mathematically-defined optimal filtering and correlation operations.
VI. Other Allegations
- Willful Infringement: While the complaint does not contain an explicit count for willful infringement, it pleads facts that may be intended to support such a claim. The complaint alleges that NXP’s predecessor, Freescale, had pre-suit knowledge of ParkerVision's technology from a meeting and technical white paper provided in 2006, years before the patents issued and the accused products were sold (Compl. ¶¶11-12). It is also alleged that Freescale later filed a patent application in the same technical field that cited a ParkerVision patent, suggesting awareness of ParkerVision's patent portfolio (Compl. ¶13).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical mechanism: Does the frequency down-conversion in NXP's chips operate as a conventional mixer, or does it perform the specific "energy transfer" and "matched filtering/correlating" functions as claimed in the ParkerVision patents? The case may depend on whether the plaintiff can prove a functional and operational equivalence between the accused circuits and the patented methods.
- A second key question will be one of architectural scope: Can the term "multi-platform module" in the ’686 patent be construed to cover an integrated circuit that contains largely separate hardware blocks for different wireless standards, or does the claim require a more deeply unified and reconfigurable hardware architecture?
- Finally, a significant factual question concerns pre-suit knowledge: Did the alleged 2006 disclosures to NXP's predecessor, Freescale, provide NXP with knowledge of the technology that would support a later finding of willful infringement, potentially leading to enhanced damages?