Summary of ParkerVision Claims Regarding its Patents

Part I: Patents and References (PR Excerpts)
2000
4/11/2000, PR Newswire, “ParkerVision Receives First Patent for Its Wireless Technology”: The patent issued today, U.S. Patent 6,049,706, contains 194 claims, including 8 independent claims.
5/9/2000, PR Newswire, “ParkerVision Receives Patent for Core D2D Receiver Technology”: The ‘551 [6,061,551] patent issued by the United States Patent & Trademark Office contains 204 claims and cites over 600 references.
5/11/2000, PR Newswire, “ParkerVision Receives Third D2D Patent”: Patent ‘555 [6,061,555] contains a total of 194 claims and cites over 600 references.
7/18/2000, PR Newswire, “ParkerVision Receives Patent for Its Core D2D Technology: The 940 [6,091,940] patent issued by the United States Patent & Trademark Office contains 374 claims and cites over 600 references.

2001
7/24/2001, PR Newswire, “ParkerVision Receives Fifth Wireless Patent”: U.S. Patent 6,266,518, which was issued to ParkerVision by the United States Patent & Trademark Office, contains 99 claims, including 9 independent claims, and cites over 600 references.

2002
3/5/2002, PR Newswire, “ParkerVision Receives Sixth Wireless Patent”: U.S. Patent 6,353,735 issued to ParkerVision by the United States Patent & Trademark Office contains 33 claims and cites over 600 references. […].

Note: The original press releases can be found in Appendix 1.

Observations
The number of claims in the patents is indeed correct in the press releases. For each of the patents cited in the press releases, we did find over 600 references cited. What remains unclear, and requires further investigation, is the relevance of the prior art to the patented invention or inventions covered by the claims of each issued patent.

Some interesting observations result from reviewing the references in the issued Parkervision patents in greater detail. All issued U.S. patents include a listing of the references considered by the patent office in assessing the patentability of the claims as issued. We obtained copies of the patents from the US Patent & Trademark Office in order to better understand the number and type of references cited as prior art. The number of references cited per patent that we counted from the actual patent applications are shown in the table below by category.
U.S. Patent, Total References, US Patent References, Foreign Patent Refs, Citations (journal/conf), Press Release
6,049,706 610 344 (57%) 38 (6%) 228 (37%) 59 (10%)
6,061,551 609 344 (57%) 38 (6%) 227 (37%) 59 (10%)
6,061,555 609 344 (57%) 40 (6%) 225 (37%) 59 (10%)
6,091,940 616 349 (57%) 41 (6%) 226 (37%) 59 (10%)
6,266,518 655 387 (59%) 42 (6%) 226 (37%) 59 (9%)
6,353,735 620 351 (57%) 43 (7%) 226 (36%) 59 (10%)

1. The largest portion of references is found in the US patent and foreign patent sections (about 63%). Because the US and foreign patent references are presented in chronological order these sections are the easiest to parse. We noted that the US and foreign patents cited in the first four patents (all filed on October 21, 1998) are virtually identical, as would be expected in a set of related applications. One can imagine that a list of almost 400 patents is quite daunting for any patent examiner!

2. ParkerVision press releases were included among the references (10% of the total references on average) despite the fact that these press releases do not appear to contain any specific technical information about the wireless technology. Rather, they contain information on the financial performance of the company, the retirement or hire of key employees, and product announcements for the video division of the company. These press releases were most likely introduced to establish that D2D technology had not been “offered for sale”.

3. The order of the citations, was changed for each of the first five patents (for example, some of the journal papers are rearranged slightly and the press releases are placed at different points within the citations), so that the citation list appears to be different for each patent when the text is skimmed rapidly. However, when the files are parsed, the citation list can be shown to be identical for all but two citations. In the fifth and sixth patents, the citations were organized alphabetically, so that they could be parsed much more efficiently. Once again, such a long list of references would be nearly impossible for any patent examiner to fully evaluate.

4. It is more interesting to note that about 46 (26%) of the technical citations (journal or conference papers) were the work of Enric Vilar (University of Portsmouth, personal website: http://www.tech.port.ac.uk/staff/index.php?id=49 ) and/or his students. Further understanding needs to be developed as to why this body of work has been cited in all of the fundamental patent applications, when on the surface, it appears to relate to the impact of atmospheric conditions on satellite communications, rather than on the wireless technology actually used and commercialized in PRKR products.

Is it actually possible that a strategy of obfuscation by references and citations could have been employed by counsel?

A patent may be held by a court to be unenforceable based on a finding of inequitable conduct by the inventors, the assignees, their attorneys, or others who are substantively involved in the preparation or prosecution of the application. A patent applicant’s compliance or non-compliance with the duty of candor imposed by 37 C.F.R. §1.56 presents fertile ground for arguments regarding inequitable conduct. In short, 37 C.F.R. §1.56 requires that inventors, their attorneys, and others related to the inventors, including employees and officers of the company to which the rights in a pending patent application are assigned, disclose to the patent office all information of which they are aware that might be material to the patentability of the pending claims.

In most cases where a court has found inequitable conduct related to the duty of disclosure, the inequitable conduct has been failure to disclose material references. In a few cases, however, inequitable conduct has been found where the patent applicant actually did submit one or more material references to the patent office, but did so in a deliberately deceptive manner. The U.S. Patent and Trademark Office’s Manual of Examination Procedure (MPEP), at §2004, part 14, directs applicants and their attorneys to “avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance. This section of the MPEP quotes Penn Yan Boats, Inc. v. Sea Lark Boats, Inc. in support of the requirement that applicants refrain from overloading the patent Examiner with an avalanche of irrelevant art that may divert attention from truly material references. 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff ’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). In Penn Yan Boats, the patentee mischaracterized a potentially material reference and submitted it to the patent office as the thirteenth of thirteen references. The reference in question was a U.S. patent that had recently issued. The patentee submitted this reference to the patent office along with twelve other, much older references that he alleged were “old” prior art. As a further exacerbation, the reference was not submitted until after the Examiner’s preliminary review of the pending claims in the patent application.

An additional case of reference burying, Golden Valley Microwave Foods, Inc. v. Weaver Popcorn Co., Inc, held that “it is … a violation of the duty of candor and fair dealing with the Patent Office for an applicant or its attorney to disclose a pertinent prior art patent reference to the examiner in such a way as to “bury” it or its disclosures in a series of disclosures of less relevant prior art references, so that the examiner would be likely to ignore the entire list and permit the application to issue.” 837 F.Supp. 1444 (N.D. Ind.1992), affirmed without opinion 11 F.3d 1072 (Fed.Cir.1993), cert. denied, 511 U.S. 1128 (1994).

While allegations of inequitable conduct based on burying of references have been successful in these cases among others, establishing inequitable conduct on the part of a patentee is quite difficult in cases where the alleged misconduct goes to burying, rather than intentionally not disclosing, a reference. In another case in which a patentee was accused of burying references, the patentee allegedly intended “to load the Examiner up with as many prior art references as it could (even though many, if not most, were not nearly as relevant as others).” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 68 F.Supp. 508, 545 (1999, U.S. District Court N.J.). The patentee in this case had submitted several materially relevant articles that were included in a 20-article booklet which was itself one of 95 pieces of prior art put before the Examiner. In Boehringer, the New Jersey District Court noted that “where evidence is lacking that the prior art was intentionally buried among irrelevant or less relevant art, the absence of such intent precludes a finding of inequitable conduct.” 68 F.Supp. 508, 546 The patentee in this case was found to have not committed inequitable conduct as no evidence was presented to show that the references in question were intentionally buried. The requirement of a strong showing of intent to deceive is intended to encourage the patent lawyer “to err on the side of inclusion, thereby providing as much prior art with an application as possible.”

Based solely on an inspection of Parkervision’s patents as issued, it is impossible to determine whether the submission of such a huge number of references rose to the level of intentional deception of the patent Examiner. It is possible that Parkervision’s attorneys merely erred on the side of over-disclosure. In an effort to answer these questions, we have ordered from the U.S. Patent and Trademark Office copies of the patent application prosecution history for one of Parkervision’s issued patents. A thorough examination of the statements, if any, made by Parkervision’s attorneys during prosecution and/or the timing of the submission of certain cited references may shed additional light on these questions.


Notes
1. 37 C.F.R. §1.56 states in relevant part:

(a) … Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.

(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application …