UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF TEXAS

WACO DIVISION

PARKERVISION, INC. 

Plaintiff,

vs.

INTEL CORPORATION

Defendant.

C.A. No. 6:20-cv-108-ADA

JURY TRIAL DEMANDED

DEFENDANT INTEL CORPORATION’S RESPONSE TO PARKERVISION’S 

SUPPLEMENTAL SUBMISSION REGARDING THE DISTRICT OF OREGON AND 

IN SUPPORT OF INTEL’S MOTION TO TRANSFER

Intel respectfully submits this response to ParkerVision’s September 4, 2020 

Supplemental Submission (D.I. 45). 

First, the potential for a stay in the transferee forum is not a relevant consideration in 

this case because Intel has already stated on the record that it does not intend to move to stay 

this action. ParkerVision argues that a court in Oregon could nevertheless sua sponte stay the 

case pending Intel’s two petitions for IPR, but Intel has searched and found no instance where 

a judge in the District of Oregon has sua sponte stayed a patent case pending a petition for 

IPR, let alone where seven of nine asserted patents are not subject to IPR proceedings, as is 

the case here. As a result, the possibility of a stay pending IPR is not relevant to this case.

Second, even if there were a possibility of a stay, Federal Circuit precedent strongly 

suggests that where, as here, multiple factors weigh in favor of transfer, the potential for a 

stay in the transferee forum does not provide a valid basis to deny transfer. In re Adobe, Inc., 

No. 2020-126, 2020 WL 4308164, at *3 (Fed. Cir. July 28, 2020); In re Genentech, Inc., 566 

F.3d 1338, 1347 (Fed. Cir. 2009). In both Adobe and Genentech, the Federal Circuit found 

that where “‘several relevant factors weigh in favor of transfer and others are neutral, then the 

speed of the transferee district court should not alone outweigh all of those other factors.’” 

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Adobe, 2020 WL 4308164, at *3 (quoting Genentech, 566 F.3d at 1347). A stay is only 

potentially relevant in that it would impact time to trial so it follows that the mere possibility 

of a stay—i.e., that the time to trial could be extended—cannot be grounds to deny transfer. 

Accordingly, even if a stay pending IPR was a possibility if this case was transferred to 

Oregon—and it is not as stated above—it would still not be a valid basis to deny transfer. Id.; 

see also D.I. 30 (Intel Br.) at 8-15 (identifying five factors that weigh in favor of transfer and 

three neutral factors). 

Neither of the two district court decisions ParkerVision cites establishes otherwise. 

Instead, both involved circumstances where: (1) a party moved to transfer a case to a 

jurisdiction in which a related case was pending but stayed; and (2) the transferor courts 

found that the stay merely neutralized the movant’s argument that the existence of the related 

case justified transfer. In Uniloc USA, Inc. v. Huawei Device USA, Inc., No. 2:17-CV-00736, 

2018 WL 7138384 (E.D. Tex. Sept. 6, 2018), the question was whether transfer to a court that 

was already handling an earlier-filed case (which had been transferred from E.D. Tex. to 

N.D. Cal. and then stayed) involving the same, single asserted patent would serve judicial 

economy. The moving party argued that transfer “will avoid duplicative litigation concerning 

claim construction and invalidity.” Id. at *5. The court disagreed, finding that because the 

related case was already stayed pending IPR, the transferee court would not reach issues of 

claim construction or invalidity before the Eastern District of Texas. Id. Even then, the court 

did not find that the stay weighed against transfer but only that the relevant factor (the “all 

other practical problems” factor) was neutral. Id.

Similarly, in J2 Global Comm’s, Inc. v. Protus IP Soln’s, Inc., No. 6:08–CV–211, 

2009 WL 440525 (E.D. Tex. Feb. 20, 2009), the question was whether to transfer to a forum

that was already handling a related earlier-filed case that had been stayed. Id. at *6. The 

movant argued that the existence of the related case favored transfer. J2 Global Comm’s, Inc. 

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v. Protus IP Soln’s., Inc., No. 6:08–CV–211, 2008 WL 5378010, at *5 (E.D. Tex. Dec. 23, 

2008). Like the court in Uniloc, the court in J2 disagreed, finding that the fact that the related 

case was stayed meant that consideration of judicial economy was neutral. J2 Global, 2009 

WL 440525, at *6 (“Defendants have failed to show that judicial economy would best be 

served by transferring these cases.”).

In short, neither case supports the proposition that the possibility that a case will be 

stayed weighs against transfer. Both cases found that the existing stays in the transferee 

forum were neutral as to transfer, and indeed, ParkerVision itself admits that the possibility 

of a stay pending IPR in Oregon is neutral as to transfer. D.I. 45 (ParkerVision Suppl. 

Submission) at 2 (“That 83% of cases in the District Court of Oregon are stayed pending an 

IPR does not favor transfer; at best, it is neutral.”) (emphasis added). A neutral factor cannot 

shift the balance of the transfer factors here, particularly where so many factors weigh in 

favor of transfer, and none weigh against. See In re Radmax, Ltd., 720 F.3d 285, 290 (5th 

Cir. 2013) (finding district court should have transferred where three of eight factors favored 

transfer, other factors were neutral, and no factor favored plaintiff’s chosen division). 

Finally, ParkerVision’s attempt to suggest that the District of Oregon does not move 

cases forward expeditiously is simply wrong. The Lex Machina data in the record shows that 

cases in the District of Oregon reach trial in 22 months on average, as compared to an 

average of 28 months in the Western District of Texas. See D.I. 30-36, 30-37 (Choy Decl. 

Exs. 35, 36). Moreover, the District of Oregon continues to move its cases forward 

efficiently, notwithstanding the COVID-19 pandemic and recent protests in Portland. As 

proof of that fact, Intel submits the declaration of Renee Rothauge, a partner at the Portland 

office of Perkins Coie, who has practiced in Portland for 30 years, appeared before all but one 

judge in the District of Oregon, and litigated 21 patent cases in Oregon. Rothauge Decl. ¶¶ 3-

6. As Ms. Rothauge explains, cases in Oregon are moving forward without significant 

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disruption, notwithstanding the pandemic and protests. Rothauge Decl. ¶¶ 10-14. Tellingly, 

a patent case this Court transferred from the Western District of Texas to the District of 

Oregon (under 28 U.S.C. § 1400(b)) just over a month ago had a telephonic scheduling 

conference within 24 days of this Court’s transfer order. D.I. 44-12 (Ex. N-10) at D.I. 82 

(“Telephonic conference held on 8/20/2020.”). 

The fact that only two of the thirteen current patent cases ParkerVision identified have 

trial dates does not weigh against transfer. As an initial matter, ParkerVision’s analysis of 

only pending cases creates a skewed perspective on time to resolution in the District of 

Oregon by excluding cases that have already been resolved because they moved quickly (just 

like measuring life expectancy by considering only people who are still alive would lead to 

invalid results). In any event, different courts have different practices for when they set trial 

dates. The data described above show that, despite the differences in the manner in which 

trial dates are set, the District of Oregon is comparable to this District in terms of overall time 

to trial. Moreover, most cases—in Oregon and in this district—resolve before trial, as 

demonstrated by the three Intel cases in the District of Oregon that ParkerVision identified. 

D.I. 44-17 at D.I. 174 (dismissing case with prejudice after a stipulated motion to dismiss one 

month after the claim construction order); D.I. 44-18 at D.I. 170, 171 (dismissing case after 

claim construction briefing, but before the claim construction order); D.I. 44-19 at 216, 227 

(dismissing case after granting Intel’s motion for summary judgment). 

In short, nothing in either party’s research since the September 2, 2020 hearing 

weighs against transfer. For all the reasons stated in Intel’s briefs—that there are no material 

connections to the Western District of Texas; that key evidence and witnesses are in the 

District of Oregon; and that the case involves a business unit that Intel sold, making Intel 

engineer Mr. Hull’s testimony all the more critical and increasing the number of third parties 

with material knowledge—this case remains uniquely appropriate for transfer to Oregon. 

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Dated: September 8, 2020 Respectfully submitted,

/s/ J. Stephen Ravel

Michael J. Summersgill (admitted Pro Hac 

Vice)

Sarah B. Petty (admitted Pro Hac Vice)

WILMER CUTLER PICKERING HALE AND

DORR LLP

60 State Street

Boston, Massachusetts 02109

T (617) 526-6000

michael.summersgill@wilmerhale.com

sarah.petty@wilmerhale.com

Jason F. Choy (admitted Pro Hac Vice)

WILMER CUTLER PICKERING HALE AND

DORR LLP

350 South Grand Avenue, Suite 2100

Los Angeles, California 90071

T (213) 443-5300

jason.choy@wilmerhale.com

J. Stephen Ravel

KELLY HART & HALLMAN LLP

303 Colorado, Suite 2000

Austin, Texas 78701

T (512) 495-6429

steve.ravel@kellyhart.com

James E. Wren

Texas State Bar No. 22018200

1 Bear Place, Unit 97288

Waco, Texas 76798

T (254) 710-7670

james.wren@baylor.edu

Attorneys for Defendant Intel Corporation 

CERTIFICATE OF SERVICE

I hereby certify that, on September 8, 2020, all counsel of record who are deemed to 

have consented to electronic service are being served with a copy of the foregoing document 

via the Court’s CM/ECF system in accordance with Local Rule CV-5.

/s/ J. Stephen Ravel

J. Stephen Ravel

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