IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

PARKERVISION, INC., 

 Plaintiff, 

 v. 

INTEL CORPORATION,

 Defendant. 

 

Case No. 6:20-cv-00108-ADA

JURY TRIAL DEMANDED

 

 

PLAINTIFF PARKERVISION, INC.’S OPPOSITION TO 

DEFENDANT INTEL CORPORATION’S MOTION FOR SUMMARY 

JUDGMENT OF NO PRE-SUIT DAMAGES UNDER 35 U.S.C. § 287

 

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TABLE OF CONTENTS 

Page 

INTRODUCTION .......................................................................................................................... 1

APPLICABLE LAW ...................................................................................................................... 2

STATEMENT OF FACTS ............................................................................................................. 4

ARGUMENT .................................................................................................................................. 6

I. Intel Has Not Met its Burden of Production. ...................................................................... 6

A. Intel’s view of ParkerVision’s marking obligations is wrong. ............................... 7

B. Intel’s Burden of Production cannot be Satisfied by its Attorneys’ Views 

of the Allegations in the Buffalo Complaint. .......................................................... 9

C. Intel’s Reliance on the Buffalo Complaint is Unrelated to the ’474 Patent. ......... 11

D. Intel had actual notice of the ’528 Patent.............................................................. 13

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TABLE OF AUTHORITIES 

 Page(s) 

Cases

AquaTex Indus. v. Techniche Sols., 

479 F.3d 1320 (Fed. Cir. 2007)................................................................................................12

Arctic Cat Inc. v. Bombardier Rec. Prods., 

876 F.3d 1350 (Fed. Cir. 2017)........................................................................................ passim

Funai Elec. Co. v. Daewoo Elecs. Corp., 

616 F.3d 1357 (Fed. Cir. 2010)..................................................................................................3

Gart v. Logitech, Inc., 

254 F.3d 1334 (Fed. Cir. 2001)........................................................................................3, 4, 13

HVLPO2, LLC v. Oxygen Frog, LLC, 

949 F.3d 685 (Fed. Cir. 2020)..................................................................................................12

KAIST IP US LLC v. Samsung Elecs. Co., 

2018 WL 10498197, 2018 U.S. Dist. LEXIS 234952 (E.D. Tex. May 22, 

2018) ..........................................................................................................................................8

ParkerVision, Inc. v. Buffalo, Inc.

(W.D. Tex., Case No. 6:20-CV-01009) .....................................................................................4

Pavo Sols. LLC v. Kingston Tech. Co., 

No. 8:14-cv-01352-JLS-KES, 2019 U.S. Dist. LEXIS 160197 (C.D. Cal. 

2019) ......................................................................................................................................3, 7

SRI Int'l, Inc. v. Advanced Tech. Labs., Inc., 

127 F.3d 1462 (Fed. Cir. 1997)..................................................................................................3

Statutes 

35 U.S.C. § 287 ............................................................................................................................2, 3

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INTRODUCTION

Intel raises a marking defense and attempts to torpedo ParkerVision’s entire damages 

based on a third-party WiFi chip – the Realtek RTL8811AU – that ParkerVision simply bought 

off-the-shelf and put into ParkerVision’s short-lived “Milo” product. Because the chip is 

proprietary technology of Realtek (with layers of interconnected microscopic components), 

ParkerVision never had any information about the configuration/operation the chip. ParkerVision 

cannot mark its products based on third-party technology it does not know about. 

Without any technical analysis to connect the claims of ParkerVision’s patents to the 

Realtek RTL8811AU, Intel tries to play “gotcha” with the marking statute. But it presents no 

evidence regarding the relevant functionality of the RTL8811AU chip. It makes no effort to 

describe how the chip practices any element of any patent. And Intel’s expert makes no mention 

of this chip in 2,235-pages of expert reports. Indeed, Intel admits that neither it nor ParkerVision 

has any technical information to suggest that the RTL8811AU chip practices the patents-in-suit.

Instead, Intel’s defense is based solely on (1) Intel attorney arguments that contort 

allegations ParkerVision made in a different litigation about different Realtek chips, and (2) outof-context snippets of deposition testimony of Jeffrey Parker (ParkerVision’s CEO). To the 

extent that Mr. Parker’s testimony is relevant at all, Mr. Parker provided a declaration (attached 

to this brief) refuting Intel’s characterization of his testimony. Thus, there is a dispute of fact. 

Under Intel’s view, the baseless utterance of the words “Realtek RTL8811AU” chip

satisfies its burden of production. It does not. First, while the bar to meet its burden of 

production with respect to a failure to mark may be “low,” it is not non-existent. Intel cannot 

shift the burden to ParkerVision to affirmatively prove that a third-party chip does not practice 

every asserted claim without any technical analysis or admissible evidence. If Intel was right, a 

defendant could up-end a plaintiff’s damages by simply claiming – without any evidence – that 

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all patentee and/or licensee products practiced the asserted patents. Such unfounded allegations 

would allow the type of “gamesmanship” that the Federal Circuit has specifically warned 

against.

1 Particularly in industries involving microscopic technology (like the Realtek 

RTL8811AU) – where basic analysis involves expensive teardowns, extractions, and simulations

– such a standard would be the death knell to an innovators’ ability to enforce its patents. 

Second, as a factual matter, Intel cannot show that ParkerVision ever accused the 

RTL8811AU chip of infringing any patent – much less all the patents asserted here. It has not. In 

a litigation against Buffalo, ParkerVision specifically accused two unrelated RealTek chips (the 

RTL8192BU and RTL8188ER chips) of infringing five of the six patents asserted here.

2 While

ParkerVision’s complaint did not exclude the possibility that other chips may infringe, 

ParkerVision had no information to justify an affirmative claim of infringement with respect to 

any other chips – and never made one. Intel cannot contort the allegations in ParkerVision’s 

complaint to plausibly assert that the RTL8811AU chip practices the patents-in-suit. 

At a bare minimum, there is a genuine dispute of material fact regarding whether 

ParkerVision’s previous allegations included the RTL8811AU chip. And Intel’s motion based 

upon an unsupported and contested allegation of a failure to mark should be denied. 

APPLICABLE LAW

35 U.S.C. § 287 allows a patentee to provide constructive notice to the public that certain 

articles are covered by patents through marking the relevant patent numbers on the article, its 

packaging, or virtually on a website. In some cases, failure to adequately mark patent numbers 

1

 Such unfounded allegations could significantly increase litigation costs, extend discovery, and 

expand the scope of discovery to include extensive technical discovery from third parties. 

2 U.S. Patent Nos. 6,580,902 (the “’902 patent”), 8,588,725 (the “’725 patent”), 9,118,528 (the 

“’528 patent”), 9,246,736 (the “’736 patent”), 9,444,673 (the “’673 patent”).

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associated with a product can limit the period for which a patentee can recover damages in a 

patent infringement case. “Compliance with § 287(a)’s marking requirements is a question of 

fact.” Funai Elec. Co. v. Daewoo Elecs. Corp., 616 F.3d 1357, 1373 (Fed. Cir. 2010). 

When a defendant believes that a patentee has failed to mark products that should have 

been marked, that defendant bears the “initial burden of production” to “plausibly” identify 

specific products that should have been marked. Arctic Cat Inc. v. Bombardier Rec. Prods., 876 

F.3d 1350, 1367-68 (Fed. Cir. 2017) (quoting Unwired Planet, LLC v. Apple Inc., 2017 U.S. 

Dist. LEXIS 20935, 2017 WL 1175379, at *5 (N.D. Cal. Feb. 14, 2017) (“the infringer bears 

some initial burden of plausibly identifying products subject to the marking requirement.”). “A 

‘burden of production’ necessarily means a burden to come forward with some amount of 

admissible evidence.” Pavo Sols. LLC v. Kingston Tech. Co., No. 8:14-cv-01352-JLS-KES, 2019 

U.S. Dist. LEXIS 160197, at *6 (C.D. Cal. 2019) (denying summary judgment where evidence 

“insufficient to meet [defendant’s] burden of production.”) While the Federal Circuit has not 

determined “the minimum showing needed to meet the initial burden of production,” it has given 

guidance regarding what is required to shift the burden of proof. Id. at 1368. It has directed that 

proffering an expert opinion indicating that the expert “review[ed] information regarding those 

models” and found that the products “practiced the Patents” is sufficient. Id. 

Notice under 35 USC § 287 can also be provided through actual notice to the infringer. 

“Although there are numerous possible variations in form and content, the purpose of the actual 

notice requirement is met when the recipient is notified, with sufficient specificity, that the patent 

holder believes that the recipient of the notice may be an infringer.” SRI Int'l, Inc. v. Advanced 

Tech. Labs., Inc., 127 F.3d 1462, 1470 (Fed. Cir. 1997); see also, Gart v. Logitech, Inc., 254 

F.3d 1334, 1336-37 (Fed. Cir. 2001) (“as long as the communication from the patentee provides 

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sufficient specificity regarding its belief that the recipient may be an infringer, the statutory 

requirement of actual notice is met.”). Questions about actual notice are for the jury. Id. at 1339. 

STATEMENT OF FACTS

ParkerVision sold a short-lived WiFi product by the name “Milo.” Intel now asserts that 

ParkerVision was required, but failed, to mark the Milo products with the patents-in-suit. See 

Intel’s MSJ of No Pre-suit Damages, (hereinafter “D.I. 172”) at 1. Intel’s purported belief for 

why the Milo products should have been marked is solely based on the presence of a proprietary 

third-party Realtek RTL8811AU chip found in the Milo product. Id. at 2. ParkerVision bought 

this chip off-the-shelf from Realtek and, thus, has no knowledge of how it was configured or 

operated. See Exhibit A, Declaration of Mr. Jeffery Parker, at ¶ 7.3

Intel’s entire marking defense related to Milo is based on Intel’s reading of an allegation 

in a 2020 patent infringement case ParkerVision brought against Buffalo, Inc. ParkerVision, Inc. 

v. Buffalo, Inc. (W.D. Tex., Case No. 6:20-CV-01009) (“the “Buffalo Litigation”). See Exhibit B 

(“the Buffalo Complaint”). That suit asserted infringement of certain claims of the ’902, ’528, 

’725, ’736 and ’673 patents, but did not assert infringement of any claim of the ’474 patent. Id. 

In each of its infringement allegations, ParkerVision made clear that it only asserted 

infringement with respect to those products that were “covered by” specific claims, “capable of” 

performing certain activities, and which “include” certain structures and configurations. See Id. 

at ¶¶ 71-76, 94-97, 110-17, 120-29, 132-37. With respect to each patent, ParkerVision focused 

its allegations on the functionality of the accused chips. Id. The Buffalo Complaint referred to 

“Buffalo Chips” specifically naming two chips made by MediaTek (MT7612 and MT7620) and 

two chips made by Realtek (RTL8192BU and RTL8188ER). Id. at ¶ 21. 

3 All exhibits referenced herein are exhibits to the accompanying declaration of Oded Burger.

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Intel has not presented any information regarding the functioning of the RTL8811AU 

chip or any technical analysis to suggest that the chip practices the claimed elements of any 

asserted patent. It is undisputed that neither party to this litigation has ever been in possession of 

any of Realtek’s proprietary information concerning the RTL8811AU chip that would be 

sufficient to allow a party to plausibly assert infringement (or the practice of any claim) of the 

asserted patents in this litigation.4 As explained by ParkerVision’s technical expert: 

The configuration/operation of chips is highly proprietary/confidential. It is not 

something that is publicly available. ... [I]n order to determine how the chip is 

configurated/operates on a circuit level from a technical point of view, one needs to 

obtain schematics from the chip manufacturer or obtain an extraction (reverse 

engineering) report from a reputable company . . . . Even then, one would need to 

understand component values to perform an analysis and determine how the chip is 

configurated/operates at the circuit level. Information from the chip manufacturer is the 

best source of component value information. Unless ParkerVision makes a chip or has 

schematic/component value information from a third party (which is difficult/expensive 

to obtain), there is no way for ParkerVision to know how a particular chip is 

configured/operates at the circuit level. Without the information I discuss above, even in 

ParkerVision’s ... own products, if a third-party chip is used, ParkerVision ... will not 

know the configuration/operation of the chip. And, without the information I discuss 

above, there is no way for ParkerVision to determine whether a ParkerVision patent 

covers a chip used in a product .... Finally, I note that transceiver/receiver chips are 

extremely small and have microscopic components. One cannot just look at a physical 

chip and see the details that are necessary to perform an analysis as to the circuit 

configuration/operation of the chip. One needs expensive equipment, sophisticated 

imaging techniques, specialized software, and other processes to extract circuit level 

information. Extraction reports can take months and costs over $100,000. In some cases, 

such reports can cost hundreds of thousands of dollars. 

See Exhibit D, Rebuttal Expert Report of Dr. Michael Steer at ¶¶ 99-102. It is also undisputed 

that Intel’s experts have not provided any technical opinion (or analysis of any kind whatsoever) 

to support Intel’s allegation that the Realtek RTL8811AU chip within the Milo Wi-Fi product 

practices any of the claims of the patents-in-suit. See D.I. 172 generally. 

4 See, Exhibit C, Defendant Intel Corporation’s August 12, 2022, Supplemental Responses and 

Objections to Plaintiff ParkerVision, Inc.’s Fourth Set of Interrogatories (Nos. 14-17) at p. 40, 

admitting that Intel does not have sufficient technical information to determine whether 

ParkerVision’s products practiced any asserted patent. See also Ex. A at ¶ 7. 

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Lacking any technical predicate for asserting that the Milo Wi-Fi product practiced any 

claims of the patents-in-suit, Intel attempts to expand the allegations in the Buffalo Complaint to 

cover the Realtek RTL8811AU chip. See Id. at 2. Intel also attempts to extrapolate the 

allegations in yet another case (that has nothing to do with the Realtek RTL8811AU chip) to 

cover the ’474 patent – which was indisputably not asserted in either the Buffalo Complaint or 

the second litigation. See D.I. 172 at p. 7n.4. As explained in the declaration of Jeffery Parker, 

“ParkerVision has ever accused the Realtek RTL8811AU chip of infringing any of the asserted 

patents in this case. That chip is never mentioned in the Buffalo Complaint, and [he is] not 

aware of any ParkerVision legal assertion about that chip or any claim that the RTL8811AU chip 

infringes or practices any ParkerVision patents.” Ex. A at ¶ 6. Indeed, contrary to Intel’s 

assertions, the only products that ParkerVision specifically accused of infringement involved 

unrelated chips. Ex. B at ¶¶ 18, 21, 71-76, 94-97, 110-17, 120-29, 132-37. 

Moreover, ParkerVision’s expert, Dr. Steer, explained that the RTL8192BU and 

RTL8188ER chips accused in the Buffalo Complaint have different functionalities and that no 

conclusions can be drawn about the similarities or differences between the 

configuration/operation of those chips and the Realtek RTL8811AU without detailed proprietary 

schematics and component values. Ex. D at ¶¶ 64, 77-83. 

ARGUMENT

I. Intel Has Not Met its Burden of Production. 

Intel posits that because it simply listed the “Milo Wi-Fi” in an interrogatory response 

(without any evidentiary support), that, under Arctic Cat, it is now ParkerVision’s burden to 

prove that proprietary third-party components within that product did not fall within the patent 

claims. But Arctic Cat was a very different case than this one – and it never suggests that the 

mere utterance of a product name, without more, is sufficient to meet Intel’s burden here. In 

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Arctic Cat, the alleged infringer put forth an expert who “testified that he ‘review[ed] 

information regarding those models” and opined that he believed the products “practiced the

Patents.” See Arctic Cat, 876 F.3d 1350, 1368. The Court noted that “[t]his was sufficient to 

satisfy [a defendant’s] initial burden of production.” Id. Here, there is no evidence of record and 

no opinion of any kind from an Intel expert to underlie a good-faith belief that the Milo Wi-Fi 

products were plausibly covered by any of the patent-in-suit. And, given the facts here, there can 

be no reasonable basis for Intel’s litigation gambit.

Intel notes that the “bar is low” -- but it is not that low, nor is it non-existent. The Arctic 

Cat Court did not “determine the minimum showing needed to meet the initial burden of 

production.” Id. Intel’s view of the law, however, would all but eliminate the burden altogether. 

Intel suggests that all it must do is say “Milo” or “RTL8811AU” and then the burden shifts to 

ParkerVision. But intel’s view that it need not come forward with any corroborative evidence is 

not what the law requires, and could result in exactly the “fishing expedition” and 

“gamesmanship” that the Artic Cat Court sought to avoid. Arctic Cat, 876 F.3d 1350, 1368; see

also Pavo Sols. LLC v. Kingston Tech. Co., No. 8:14-cv-01352-JLS-KES, 2019 U.S. Dist. 

LEXIS 160197, at *6 (C.D. Cal. 2019)(“A ‘burden of production’ necessarily means a burden to 

come forward with some amount of admissible evidence.”) 

A. Intel’s view of ParkerVision’s marking obligations is wrong. 

The RTL8811AU chips that ParkerVision purchased from Realtek were off-the-shelf

chips and, thus, ParkerVision has no proprietary knowledge of the circuit configuration or 

operation of those chips. Ex. A at 7. Such information is proprietary to RealTek. Ex. D at ¶¶ 99-

102. Indeed, one cannot even observe the configuration/operation of the chips by simply looking 

at the chips. The chips themselves have layers of interconnected microscopic components and, 

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thus, understanding the configuration/operation of the chips to make a marking determination 

would require expensive and time-consuming reverse engineering and subsequent analysis. Id. 

Under Intel’s theory of a patentee’s marking obligations, manufacturers would need to 

reverse engineer all third-party components (perhaps hundreds) used in their product and 

determine if their patents covered those third-party components. Otherwise, manufacturers could 

be subject to future claims of failure to mark – even in the absence of any good-faith basis to 

claim that those components practiced any specific patent. This onerous burden is not the law. 

Intel cites no legal support for its contention the mere identification of the Milo Wi-Fi 

product with a RTL8811AU chip, without a scintilla of technical support, is sufficient to thrust 

upon ParkerVision the expensive burden of reverse engineering a third-party proprietary 

component part. The closest support that Intel can muster is a single inapposite footnote in a 

Magistrate’s recommendation that is not binding upon this Court. See D.I. 172 at 9, citing KAIST 

IP US LLC v. Samsung Elecs. Co., 2018 WL 10498197, at *3 n.1, 2018 U.S. Dist. LEXIS 

234952, at *12 n.1 (E.D. Tex. May 22, 2018). To the extent that KAIST goes beyond the holding 

in Arctic Cat (in which expert evidence was offered), it is wrong. But, even the KAIST

recommendation bases its decision on the fact that the patentee had “specifically alleged” 

infringement of the very product defendant complained about and provided detailed claim charts 

regarding infringement – a very different situation than exists here. Id. at *6, *12 n.1. In its brief, 

Intel uses a bracket in its parenthetical to avoid that fact. See D.I. 172 at 9.5

 

Intel needs some technical support to “plausibly” allege a good faith belief that the Milo 

5 And, in KAIST, the recommendation ultimately was a denial of summary judgment because the 

lack of technical analysis by defendant left questions of fact regarding whether the named 

products practiced the patents and there remained questions of fact regarding whether actual 

notice was provided. As further described here, the same is true in this case.

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practiced the claims of the asserted patents when using an off-the-shelf RealTek chip. Arctic Cat

at 1367. Intel has none. It has presented no evidence regarding the relevant functionality of the 

RTL8811AU chip and has made no effort to describe how this chip practices any element of any 

patent. And Intel’s expert does not mention the chip in his expert reports, leaving only the 

unrebutted testimony of ParkerVision’s expert related to the Realtek RTL8811AU chip. 

Unable to rely on actual evidence, Intel is forced to rely on its attorneys’ view of 

allegations that ParkerVision made against Buffalo in the Buffalo Complaint. 

B. Intel’s Burden of Production cannot be Satisfied by its Attorneys’ Views of 

the Allegations in the Buffalo Complaint. 

Intel’s marking argument regarding Milo depends entirely on its attorneys’ contorted 

reading of the allegations in the Buffalo Complaint. The view of Intel attorneys regarding the 

Buffalo Complaint, however, is not evidence. Intel cannot simply meet its burden with a 

litigation-inspired, and unreasonably expansive, interpretation of the Buffalo Complaint. That 

would be the ultimate in gamesmanship – a result that Arctic Cat specifically sought to avoid. 

See Arctic Cat, 876 F.3d 1350, 1368. 

In its brief, Intel selectively quotes a portion of paragraph 21 of the Buffalo Complaint to

create the misimpression that the ParkerVision had accused all AirStation Series networking 

products, including, implausibly, products for which ParkerVision and its attorneys had no 

technical information or analysis. See D.I. 172 at pp. 3-4; Ex. B generally; Ex. A at 7. That 

paragraph contains no infringement allegations, and simply defined the term “Buffalo Products,” 

which was further limited in the context of the actual infringement counts to those “Buffalo 

Products” that are “capable of filtering and down-converting a higher-frequency signal to a lower 

frequency signal as claimed in” the ’902, ’528, ’725, ’736 and ’673 patents. Ex. B at ¶¶ 72, 95, 

111, 121, and 133. The allegations were also limited to the two chips made by MediaTek and 

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two chips made by Realtek (RTL8192BU and RTL8188ER) identified to possess certain 

functionality and/or structures, as evidenced by the fact that all of the technical allegations 

reference only those chips. See Ex. B at ¶¶ 18, 21, 58-59, 64-65, 72-74, 76, 80-81, 86-89, 95-96, 

101-107, 111-115, 117, 121-125, 129, and 133-135. 

With regard to the Buffalo Complaint, Intel’s attorneys engage in a series of mental 

gymnastics to support their marking theory. The Buffalo Complaint identifies Buffalo 

AirStations with particular chips (not the RTL8811AU chip) of infringing the ’902, ’528, ’725, 

’736 and ’673 patents. According to Intel, because ParkerVision accused the Buffalo AirStation 

series of infringement and there is an FCC application for a unaccused Buffalo AirStation that 

included the RTL8811AU chip,6 ParkerVision effectively accused the Buffalo AirStation with 

the RTL8811AU chip of practicing the patents. Thus, according to Intel, the Milo product 

including a RTL8811AU chip needed to be marked. This attenuated analysis is not the sort of 

analysis required under Artic Cat. At a bare minimum, there is a genuine dispute of material fact 

regarding whether ParkerVision’s previous allegations included the RTL8811AU chip. 

Realizing that the plain language of the Buffalo Complaint did not support their litigation 

theory, Intel’s attorneys asked Mr. Parker (a non-attorney) to interpret the Buffalo Complaint. On 

three separate occasions, Mr. Parker was asked whether ParkerVision accused “all” of Buffalo’s 

AirStation products. See Exhibit E, Excerpts of the deposition of Mr. Jeffery Parker at 590:6-11; 

597:4-598:1; and 613:17-24. Mr. Parker consistently explained that he did not recall the scope of 

ParkerVision’s accusations against Buffalo. Id. Mr. Parker was then shown paragraph 21 of the 

Buffalo Complaint (which does not contain any infringement allegations) and asked to confirm 

6 Intel makes no allegation (and presents no evidence) to indicate that the AirStation products it 

claims contained the RTL8811AU were actually used, made, sold, offered-for-sale, or imported 

into the United States. Thus, these products could not have been the subject of the litigation. 

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that the words included “all” Buffalo AirStation products and Mr. Parker answered that he 

“see[s] that in the complaint” and inadvertently adopted counsel’s mischaracterization of the 

infringement allegations. Id. As Mr. Parker explains in his declaration, however, he did not 

intend his deposition responses to alter the actual accusations made in the complaint and believed 

he was just confirming the existence of words in the complaint. Ex. A at ¶¶ 5-6. 

To the extent that the Court finds the Buffalo Complaint (which never mentions the 

RTL8811AU chip whatsoever) to have any relevance to the question of whether ParkerVision 

had an obligation to mark products that were not at issue in that litigation, it is respectfully 

submitted that, at best, there is a genuine factual dispute over scope of that complaint. And, 

regardless of how the allegations themselves are viewed, there is a genuine dispute of material 

fact as to whether the RTL8811AU chip actually practices the claims of any relevant patent. The 

existence of both factual disputes precludes a grant of summary judgment. 

C. Intel’s Reliance on the Buffalo Complaint is Unrelated to the ’474 Patent. 

Intel does not dispute that the ’474 patent was not asserted in the Buffalo Complaint. See 

D.I. 172 at 7.n4. Despite the absence of any allegations with respect to the ’474 patent, Intel has 

also moved “for summary judgment of no pre-suit damages” with respect to that patent. Id. at 2. 

Intel does not credibly advance its position with respect to the ’474 patent and includes its entire 

argument with respect to that patent in a conclusory one-sentence-long footnote simply 

referencing its interrogatory response. See D.I. 172 at 7.n4 (Citing Ex. C at pp. 40-47.) 

Intel’s conclusory argument is deficient in several meaningful respects. First, the

reference to “Realtek chips” in its footnote indisputably do not include the RTL8811AU chip. 

Rather, the interrogatory response that Intel refers to in its footnote makes no effort to tie the 

allegations in the Buffalo Litigation to the ’474 patent and instead refers to a different litigation 

with Hisense accusing only the Realtek RTL8812BU chip of infringement of different patents 

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(not the ’474 patent). See Ex. C at pp. 40-47. As such, Intel doesn’t even attempt to connect 

either ParkerVision’s Milo product or Realtek’s RTL8811AU chip to the ’474 patent. Second, 

the purported “claim charts” referenced in the footnote do not contain any mapping of claim 

limitations from the ’474 to any Realtek chips whatsoever, but rather are a mishmash of 

quotations from multiple complaints and claim construction proceedings that, again, had no 

relevance to the RTL8811AU chip or the ’474 patent. Third, Intel’s reliance on selective

quotations from unrelated documents in unrelated cases about unrelated products is additionally 

improper, because Intel provides no expert or technical support for their highly conclusory and 

technical attorney argument. See e.g., HVLPO2, LLC v. Oxygen Frog, LLC, 949 F.3d 685, 689 

(Fed. Cir. 2020) (“The prohibition of unqualified witness testimony extends to the ultimate 

conclusions of infringement and validity as well as to the underlying technical questions.”); 

AquaTex Indus. v. Techniche Sols., 479 F.3d 1320, 1329 n.7 (Fed. Cir. 2007) (“expert 

infringement testimony is generally required in cases involving complex technology.”)7

The deficiencies in Intel’s allegations are particularly significant here, where 

ParkerVision’s expert has offered an unrebutted opinion that the allegations concerning the 

Realtek RTL8812BU chip referenced in Intel’s so-called “claim charts” were completely 

irrelevant to the question of whether the RTL8811AU chip practiced any claim of the ’474 

Patent. See Ex. D at ¶ 64 (refencing Intel’s interrogatory responses with respect to the complaints 

filed against Hisense (Case nos. 6:20-cv-870 and 6:21-cv-562) regarding the Realtek 

RTL8812BU and Intel’s argument that such allegations “can [allegedly] be used to map the 

Realtek RTL8811AU to claims 1 and 12 of the ’474 patent”); ¶¶ 69-76 (providing a factually7 This case involves highly complex technology as evidenced, for example, by the Court’s 

appointment of a technical advisor. See D.I. 64. See also D.I. 124 

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corroborated and unrebutted expert opinion detailing why “one cannot rely on ParkerVision’s 

statements made regarding the Realtek RTL8812BU and apply them to the Realtek 

RTL8811AU”). On a motion for summary judgment, Intel’s one-sentence footnote argument is 

insufficient to satisfy its burden of production and cannot eliminate the material factual disputes 

raised in ParkerVision’s unrebutted expert’s opinion. 

D. Intel had actual notice of the ’528 Patent.

Intel asserts that there was no actual notice of infringement. But to the extent any notice 

was required, on May 5, 2016, ParkerVision served Intel with both an application for issuance of 

a subpoena in its ITC litigation with Apple, which included allegations of infringement, as well 

as the subpoena, which was directed towards Intel’s infringing chips. See Exhibit F, 

ParkerVision’s ITC Subpoena Application, at p. 2 (accusing intel’s “radio frequency capable 

integrated circuits for use in Apple products” that “infringe U.S. Patent Nos. ... 9,118,528”); 

Exhibit G, ParkerVision’s ITC Subpoena to Intel, at pp. 4-5 (providing a schedule of accused 

“Intel Products.”); see also Exhibit H, ParkerVision’ 6/21/22 Response to Interrogatory No. 13 at 

32-34. The subpoena specifically identifies at least Intel RF transceivers/transmitters/receivers as 

falling within the scope of the ITC investigation and used in the Apple iPhone 7, which is a 

reference to the SMARTi 5 (PMB5750). Ex. G at 4-5. As such, Intel was on actual notice that its 

products infringed the ’528 patent at least as early as May 5, 2016. See Ex. G at 3. 

The material served upon Intel is sufficient to provide Intel with notice of infringement. 

See e.g., Gart v. Logitech, Inc., 254 F.3d 1334 (Fed. Cir. 2001) (actual notice satisfied “as long 

as the communication from the patentee provides sufficient specificity regarding its belief that 

the recipient may be an infringer”). 

Intel attempts to evade this notice, by asserting that “ParkerVision affirmatively stated on 

the record in that ITC investigation that it was not accusing Intel’s transceiver chips of 

Case 6:20-cv-00108-ADA Document 226 Filed 11/22/22 Page 16 of 18
14

infringement.” D.I. 172 at 12, citing Certain RF Capable Integrated Circuits and Products 

Containing the Same (ITC, Inv. No. 337-TA-982), Order No. 14 at 6. Intel, however, ignores the 

context of the ITC’s Order, which turned on whether the meager and illegible discovery with 

respect to Apple’s intel-based iPhones was “sufficient such that ParkerVision could make an 

infringement determination.” Id. at 5, 12. In other words, 

, ParkerVision simply did not have time to prepare 

adequate infringement contentions. Id. at 5. ParkerVision thus reserved the adjudication of its 

claims against Intel for another proceeding – i.e., this one. The statement Intel relies on does not 

alter the fact that ParkerVision informed Intel that its chips infringed the ’528 patent. Indeed, 

when

. Exhibit I, Excerpt of the 

Deposition Transcript of Ms. Pamela Hays at 95:17-96:14; and Exhibit J, Ex. 13 thereto. 

Tellingly, Intel hired litigation counsel to deal with the subpoena – the same lawyers handling 

this litigation.

Intel’s claims that it didn’t understand that its products were being accused of 

infringment ring hollow. At a bare minimum, given the disagreement between Intel and 

ParkerVision regarding the interpretation of the facts surrounding the ITC subpoena, there is a 

genuine dispute of material fact regarding whether ITC application and subpoena put Intel on 

actual notice of its infringement of the ’528 patent.8 

8 Lastly, Intel argues that ParkerVision’s notice to Intel was deficient based on an alleged lack of 

a “proposal to abate the infringement.” D.I. 172 at 12.n8. Intel completely ignores the fact that 

the Subpoena it received was issued as a part of a proceeding seeking no less of an abatement 

than a total importation ban of all iPhones incorporating their infringing RF chips. 

Case 6:20-cv-00108-ADA Document 226 Filed 11/22/22 Page 17 of 18
15

Dated: November 15, 2022 Respectfully submitted,

OF COUNSEL:

THE MORT LAW FIRM, PLLC

/s/Raymond W. Mort, III

Ronald M. Daignault (pro hac vice)*

Chandran B. Iyer (pro hac vice) 

Jason S. Charkow (pro hac vice)* 

Stephanie R. Mandir (pro hac vice) 

Zachary H. Ellis (Texas Bar No.

24122606)* 

Shailendra Maheshwari (pro hac vice)* 

Christian E. Samay (pro hac vice)* 

Scott R. Samay (pro hac vice)* 

Oded Burger (pro hac vice forthcoming)* 

 

DAIGNAULT IYER LLP

rdaignault@daignaultiyer.com 

cbiyer@daignaultiyer.com 

jcharkow@daignaultiyer.com 

smandir@daignaultiyer.com

zellis@daignaultiyer.com

smaheshwari@daignaultiyer.com

csamay@daignaultiyer.com

ssamay@daignaultiyer.com

oburger@daignaultiyer.com 

8618 Westwood Center Drive, Suite 150 

Vienna, Virginia 22182 

*Not Admitted in Virginia 

Raymond W. Mort, III

Texas State Bar No. 00791308 

raymort@austinlaw.com

501 Congress Avenue, Suite 150 

Austin, Texas 78701 

Tel/Fax: 512-865-7950 

Attorneys for Plaintiff ParkerVision, Inc.

Case 6:20-cv-00108-ADA Document 226 Filed 11/22/22 Page 18 of 18