Qualcomm wins new trial in $173m patent dispute
A US appeals court has granted semiconductor company Qualcomm’s request for a validity hearing in a patent infringement case that saw it slapped with a $172.7 million fine.
On Friday, July 31, the US Court of Appeals for the Federal Circuit also agreed that there should be a new trial concerning alleged infringement in the case, which centred on four patents asserted against it by radio frequency technology company ParkerVision.
The patents covered 'down-converting', a process where high-frequency electromagnetic signals are converted into low-frequency signals in electronic devices. The US Patent and Trademark Office issued the patents—US numbers, 6,061,551; 6,266,518; 6,370,371 and 7,496,342—to ParkerVision between 2000 and 2009.
ParkerVision sued Qualcomm at the US District Court for the Middle District of Florida in 2011, claiming that it had infringed all four of the patents through 19 of its products.
The district court split the trial into two hearings: one to determine the patents’ validity and the level of any infringement, and one to deal with the amount of damages and whether Qualcomm’s infringement was wilful, if infringement was confirmed.
The court found Qualcomm had infringed the patents, but ruled that it was not wilful. In 2013, the court awarded $172.7 million in damages to ParkerVision. Qualcomm appealed against the ruling and requested a new trial to determine infringement and whether the patents are valid.
In 2014, the district court granted a new trial to determine infringement, but rejected Qualcomm’s request for a hearing on the validity of the patents.
Qualcomm then asked the federal circuit to rule that a trial on validity is needed. ParkerVision also lodged an appeal with the federal circuit against the district court’s granting of a new trial to determine infringement.
However, in a unanimous decision, the federal circuit said a new trial is needed to determine the validity of the claims in all four patents. The court also rejected ParkerVision’s appeal.
“We reverse the district court’s denial of Qualcomm’s motions for judgment as a matter of law of invalidity as to those claims [asserted in all four patents],” Judge William Bryson wrote.
Jeffrey Parker, chief executive of ParkerVision, said: “We are highly disappointed with the appellate court’s decision. Despite this setback, we will consider further options on appeal.”
In addition, he said, the company remains unwavering in its conviction that some of its technologies have widespread applications in the industry and plans to “continue to vigorously pursue the successful commercialisation of those technologies through every means available to us”.
Qualcomm had not responded to a request for comment at the time of publication but we will update the story should the company get in touch.
