THE JURY’S ROLE IN PATENT TRAILS WAS UNDERMINED BY THE CAFC WHEN IT OVERRULED A JURY’S VERDICT
Case identification: ParkerVision v. Qualcomm
ParkerVision (“ParkerVision”) holds a patent for technology that converts a high-frequency electromagnetic signal into a low-frequency signal called the “baseband, comprised of a switch and a capacitor; consequently, both the switch and capacitor play a role in converting the input signal to the baseband. Qualcomm products also convert high-frequency signals to the baseband using a switch and a capacitor.
ParkerVision allegations were that Qualcomm’s products infringe its patents. ParkerVision presented the sole expert witness on the question of infringement, Dr. Paul Prucnal (“Prucnal”). Prucnal testified that that both the switch and the capacitor play a role in generating the baseband; concluding that Qualcomm’s products infringe on ParkerVision’s. Prucnal testified on cross-examination that the output of the switch is the baseband signal. However, on redirect, Prucnal reiterated that both the switch and capacitor together generate the baseband.
After deliberation the jury found that Qualcomm infringed ParkerVision’s patents and rendered a $173 million jury verdict for ParkerVision.
The district court threw out the verdict and granted Qualcomm judgment as a matter of law. The Federal Circuit affirmed the judgment, in favor of Qualcomm.
According to published reports on this case, the Federal Circuit affirmed the judgment in favor of Qualcomm by engaging in its own assessments of the testimony (at trial) and determined that the trial testimony did not support of finding of infringement. It is noteworthy that the Federal Circuit’s analysis affirming the district court’s decision to throw out the jury verdict did not cite any authority.
ParkerVision moved for rehearing, arguing that the fact-finder (the jury), and not the court, has the right to resolve inconsistencies in testimony. The Federal Circuit disagreed. The court admitted that generally, judges cannot second-guess juries, but held that “[w]hen the party with the burden of proof rests its case on a witness’s unexplained self-contradictory testimony, the court, in appropriate cases, may conclude that the evidence is insufficient” to support a verdict. It determined that “this is such a case” because Dr. Prucnal’s testimony was inconsistent, and “ParkerVision made no attempt to reconcile the two conflicting strands of its expert’s testimony.” The court also determined that Dr. Prucnal’s direct and redirect testimony was “vague,” but his testimony on cross-examination was “unequivocal.” Thus, it reweighed the evidence of infringement and again found it wanting.
On February 29, 2016 the US Supreme Court declined ParkerVision’s Writ of Certiorari requesting a review of the decision of the United States Court of Appeals for the Federal Circuit.
All may not be lost for ParkerVision. In January 2016 ParkerVision Parker instituted investigations at the International Trade Commission (“ITC”) against Qualcomm, Apple, LG and Samsung which focuses on different patent claims and inventions than those that were asserted in the earlier litigation. The USPTO recently denied institution of Inter Parties Review of certain of ParkerVision patent claims that are similar to claims asserted in the ITC Investigation.
In response to the denial of its Writ by the US Supreme Court, ParkerVision CEO Jeffrey Parker stated, “We are disappointed that the Supreme Court decided not to hear and weigh-in on this important matter. The Federal Circuit’s lack of respect for jury verdicts, especially those that find in favor of patent holders, undermines the property rights that innovators depend on when investing significant amounts of resources to create new inventions. Patent owners are entitled to trial by jury under the Seventh Amendment, and jury verdicts are entitled to deference. The Federal Circuit’s disregard for a jury’s factual findings in arriving at a verdict allows infringers to arbitrarily and unfairly capitalize on those inventions after the jury has found infringement.”