Litigation

ParkerVision, Inc. v. NXP Semiconductors N.V. et al.

Stayed

6:23-cv-00389-ADA

Filed
2023-05-19

Patents at issue (1)

Defender signal. Patent 7483686 has had claims invalidated at PTAB. Those final written decisions are public record and a ready-made § 102 / § 103 ground in district court. See IPR estoppel for what carries over.

Plaintiffs (1)

Summary

ParkerVision, Inc. sued NXP entities for patent infringement. The case is currently stayed pending Inter Partes Reviews concerning other related patents, with a rescheduled trial date for February 9, 2026.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

The patent infringement litigation ParkerVision, Inc. v. NXP Semiconductors N.V. et al. (6:23-cv-00389-ADA) involves ParkerVision, Inc. as the Plaintiff and NXP Semiconductors N.V., NXP B.V., and NXP USA, Inc. d/b/a NXP Semiconductors USA, Inc. as the Defendants. ParkerVision is a Jacksonville, Florida-based technology licensing company that designs, develops, and markets proprietary radio frequency (RF) technologies and integrated circuits for wireless communication products, holding a substantial patent portfolio and focusing on intellectual property enforcement through licensing and litigation. NXP Semiconductors is a Dutch semiconductor manufacturing and design company headquartered in Eindhoven, Netherlands, providing high-performance mixed-signal and standard product solutions for automotive, industrial & IoT, mobile, and communication infrastructure markets.

The lawsuit, filed on May 19, 2023, accuses NXP of infringing United States Patent No. 7,483,686 ("the '686 Patent"), along with two other patents, 7,865,177 and 9,118,528. The '686 Patent generally relates to multi-mode communications devices and, more particularly, to such devices implemented using universal frequency translation technology, providing a universal platform module (UPM) for signal reception, transmission, and/or processing. While the specific accused products are not explicitly detailed in the immediately available search results, ParkerVision's lawsuits generally target providers of mobile handsets, smart televisions, and other WiFi products, and their chip suppliers, for infringement of its RF patents.

The case is being heard in the United States District Court for the Western District of Texas, Waco Division, before Judge Alan D. Albright. This venue is notable because Judge Albright, a former patent litigator, actively sought to attract patent cases to his courtroom, leading to a surge in patent litigation filings in the Waco Division, particularly from non-practicing entities (NPEs). While the Western District of Texas had been a leading venue, case assignment reforms implemented in 2024 have impacted the concentration of cases before Judge Albright, though he remains a significant figure in patent litigation. The case is currently stayed pending Inter Partes Reviews (IPRs) concerning the '177 and '528 patents, which NXP joined after Texas Instruments filed initial petitions, with the Patent Trial and Appeal Board (PTAB) expected to issue final written decisions by November 26, 2025. The existing case summary states the trial date is rescheduled for February 9, 2026. This IPR linkage and the strategic choice of venue in the Western District of Texas highlight the complex procedural landscape and common tactics in modern patent litigation.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

The patent infringement litigation ParkerVision, Inc. v. NXP Semiconductors N.V. et al. (6:23-cv-00389-ADA) has seen several key legal developments since its filing. The case is currently stayed pending the outcome of parallel Inter Partes Review (IPR) proceedings concerning two of the three asserted patents.

Here's a chronological summary of the key legal developments:

  • Filing & Initial Pleadings (2023-05-19): ParkerVision, Inc. filed the complaint on May 19, 2023, accusing NXP Semiconductors N.V., NXP B.V., and NXP USA, Inc. of infringing U.S. Patent Nos. 7,483,686 ('686 Patent), 7,865,177 ('177 Patent), and 9,118,528 ('528 Patent). Details regarding NXP's answer and any counterclaims are not explicitly available in the provided sources.

  • Pre-trial Motions of Substance:

    • Motion to Stay Pending IPR (Filed 2025): NXP filed a motion to stay the case pending the outcome of two Inter Partes Reviews concerning the '177 and '528 patents. ParkerVision opposed this motion.
    • Order Granting Stay (2025-05-27): The Court granted NXP's Motion to Stay Pending Inter Partes Review on May 27, 2025. The stay is in effect until the Patent Trial and Appeal Board (PTAB) issues its Final Written Decisions (FWDs) for the IPRs, which are expected by November 26, 2025.
  • Claim Construction (Markman) Outcomes:

    • Markman Hearing (2024-06-14): A Special Master appointed in the case held a Markman hearing on June 14, 2024, to construe disputed claim terms.
    • Report & Recommendation and Adoption (2024): The Special Master subsequently issued a report and recommendation regarding claim construction (ECF No. 45), which the Court adopted (ECF No. 65). The '686 patent was part of this claim construction process, with ParkerVision previously seeking reconsideration of certain constructions related to it and the '528 patent, which the Court had consistently maintained in prior litigations. All disputed terms were reported as "finally construed."
  • Discovery Milestones:

    • Discovery Hearing (2025-04-03): The Court held a discovery hearing on April 3, 2025. ParkerVision's counsel failed to appear, and the Court issued several orders related to document production and depositions, including requirements for ParkerVision to provide descriptions of recently produced documents, a list of search terms used, and a certification of complete document production.
    • Fact Discovery Close (Scheduled): Fact discovery was scheduled to close approximately one month after the May 27, 2025, order granting the stay. The Court noted that NXP had been the only party to notice or take any party depositions, and multiple fact depositions remained to be taken.
  • Trial Events, Verdict, and Post-trial Motions:

    • There have been no trial events, verdict, or post-trial motions to date as the case is currently stayed, and the trial is scheduled for February 9, 2026.
  • Final Disposition or Present Posture:

    • The case is currently stayed as of May 27, 2025, pending the PTAB's Final Written Decisions for the IPRs on the '177 and '528 patents. An amended scheduling order had previously rescheduled the trial date from August 18, 2025, to February 9, 2026.
  • Parallel PTAB IPR/PGR Proceedings:

    • IPR Filings by Texas Instruments (2024-05-18): Texas Instruments, a defendant in a related lawsuit by ParkerVision, filed IPR petitions on the '177 Patent and '528 Patent on May 18, 2024.
    • IPR Filings by NXP (2024-06-20): NXP filed "copycat" IPR petitions and requested to join Texas Instruments' IPR proceedings on June 20, 2024.
    • Institution of IPRs (2024-11-26 and 2024-12-19): The PTAB granted Texas Instruments' petitions on November 26, 2024. The PTAB subsequently granted NXP's petitions and requests for joinder to the TI proceedings on December 19, 2024.
    • Effect on Litigation: The pendency of these IPRs led to the district court granting NXP's motion to stay the infringement litigation, with FWDs expected by November 26, 2025. It is important to note that the '686 patent, one of the patents at issue in the litigation, is not among the patents subject to these IPR proceedings.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the plaintiff's counsel of record for this case.

Let me get the full docket representation list and check for Eliis and any in-house counsel.

Let me verify the full docket representation list and check for any in-house counsel or changes.

Here is the plaintiff-side counsel analysis. Note: I found no ParkerVision in-house attorney appearing of record in this case — see the caveat at the end.


Plaintiff's Counsel of Record — ParkerVision, Inc.

The plaintiff, ParkerVision, Inc., is represented by a two-firm team: a Northern-Virginia patent-litigation boutique, Daignault Iyer LLP (appearing pro hac vice), and a Waco/Austin-based Texas firm, The Mort Law Firm, PLLC (local counsel of record). Both firms are identified in the case's first filing and in the operative pleadings. This is consistent with ParkerVision's nationwide RF-patent campaign, in which the same core Daignault Iyer team has appeared for the company in its WDTX suits against Intel, TCL, Hisense, LG, Realtek, MediaTek, and Texas Instruments — and now NXP.

Lead / primary counsel

Attorney Role Firm & Office Notes
Raymond W. Mort, III Local / Texas counsel of record (signing attorney on the complaint and PHV motions) The Mort Law Firm, PLLC — Austin, TX (Texas State Bar No. 00791308) WDTX local counsel for ParkerVision across its Waco patent filings; filed all pro hac vice applications (ECF Nos. 8–12) and appears as the Texas-bar signature on ParkerVision's filings.
Ronald M. Daignault Of counsel / lead pro hac vice trial counsel Daignault Iyer LLP — Vienna, VA Co-founder of Daignault Iyer; admitted pro hac vice (ECF No. 10, granted June 1, 2023). Longtime lead counsel in ParkerVision's RF-patent litigation campaign (e.g., ParkerVision v. Intel, v. Realtek, v. MediaTek). Listed as "Not admitted in Virginia" on filings.
Chandran B. Iyer Of counsel / pro hac vice Daignault Iyer LLP — Vienna, VA Co-founder; pro hac vice granted June 1, 2023 (ECF No. 8). Core member of the ParkerVision team.

Additional counsel of record

Attorney Role Firm & Office Notes
Jason S. Charkow Of counsel / pro hac vice Daignault Iyer LLP — Vienna, VA Pro hac vice granted June 1, 2023 (ECF No. 9). Also signed ParkerVision filings in the related Realtek/TI matters. Listed as "Not admitted in Virginia."
Scott R. Samay Of counsel / pro hac vice Daignault Iyer LLP — Vienna, VA Pro hac vice granted June 1, 2023 (ECF No. 12). Listed as "Not admitted in Virginia."
Stephanie R. Mandir Of counsel / pro hac vice Daignault Iyer LLP — Vienna, VA Pro hac vice granted June 1, 2023 (ECF No. 11). Signed ParkerVision's Proposed Claim Constructions (Feb. 14, 2024) and Responsive Claim Construction Brief (Dkt. 35, Mar. 29, 2024).
Zachary H. Ellis Of counsel (Texas-barred; appears on WDTX filings) Daignault Iyer LLP — Vienna, VA (Texas State Bar No. 24122606) Listed among counsel on ParkerVision's claim-construction papers in this case and in the parallel Realtek/TI matters; a Texas-bar attorney, so generally appears without a pro hac vice motion.

How the record supports this

  • Complaint (Dkt. 1, filed 5/19/2023) — "Plaintiff ParkerVision, Inc. … by and through its undersigned counsel, files this Complaint." (Exhibit 2001 reproduction).
  • PHV motions and orders (Dkt. 8–12 filed 5/31/2023; granted 6/1/2023) — All five pro hac vice motions were filed by Raymond W. Mort, III on behalf of ParkerVision for Daignault, Iyer, Charkow, Mandir, and Samay (Justia docket).
  • Claim-construction papers (Feb. 14, 2024 and Dkt. 35, Mar. 29, 2024) — Signed by Stephanie R. Mandir, with Mort as Texas counsel and the Daignault Iyer team listed under "Of counsel," naming Daignault, Iyer, Charkow, Samay, Mandir, and Zachary H. Ellis as "[a]ttorneys for Plaintiff ParkerVision, Inc." (Dkt. 35 exhibit).
  • An automated docket-analysis summary likewise lists "Plaintiff's Counsel: The Mort Law Firm, PLLC; Daignault Iyer LLP."

Caveats and flags

  • No in-house counsel identified of record. I found no ParkerVision in-house/GC attorney entered as counsel in 6:23-cv-00389. ParkerVision is a small public company (OTCQB: PRKR); its CEO is Jeffrey L. Parker and its CFO/Corporate Secretary is Cindy French — but neither is a registered attorney of record in this case, and the company does not list a separate General Counsel in its public filings. Its patent-enforcement work is handled by outside counsel. So I am not listing an in-house attorney for the plaintiff; if ParkerVision has one, that person has not appeared on the docket.
  • Docket truncation. The Justia "Represented By" panel for the plaintiff is truncated in the cached listing, but the pro hac vice orders (Dkt. 15–19) and the claim-construction papers confirm the full Daignault Iyer + Mort roster above. The docket was "last retrieved" via Justia on July 6, 2023; because the case has been stayed since May 27, 2025, I would verify current appearances on PACER in case any attorney has since withdrawn or been substituted.
  • Cross-check against the existing "Defendant representatives" section. One email exhibit in the NXP IPR (Petitioner Exhibit 1041) is signed by Michael Chibib as NXP-side counsel ("Austin Office"), and Chibib appears on the NXP defendant entries. That is a defendant-side attorney and does not affect the plaintiff roster, but if the prior defendant section omitted Chibib, that section may be worth revisiting. I did not independently verify a firm affiliation for Chibib here.

Bottom line: ParkerVision's counsel of record are Raymond W. Mort, III (The Mort Law Firm, PLLC, Austin — local/Texas counsel) and the Daignault Iyer LLP team of Ronald M. Daignault, Chandran B. Iyer, Jason S. Charkow, Scott R. Samay, Stephanie R. Mandir, and Zachary H. Ellis (Vienna, VA), with the first four admitted pro hac vice on June 1, 2023.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

The defendant, NXP Semiconductors N.V. et al., is represented by the following counsel of record:

Lead Counsel:

  • Andrew J. M. Rozynski

    • Firm: Jones Day (New York office)
    • Note: Jones Day has a history of representing NXP in significant patent infringement disputes, including multi-jurisdiction cases involving RFID technology and disputes with companies like Impinj and MediaTek.
  • Bryan P. Collins

    • Firm: Jones Day (Silicon Valley office)
    • Note: Jones Day has represented NXP in patent litigation, including cases related to semiconductor technology. Bryan P. Collins is also listed as an inventor on several patents related to light-emitting diodes and phosphor compositions, indicating a technical background relevant to patent litigation.
  • Elizabeth L. DeRieux

    • Firm: Jones Day (Dallas office)
    • Note: Jones Day has represented NXP in various patent infringement suits.

In-House Counsel:

  • Jennifer Wuamett
    • Role: Executive Vice President, General Counsel, Corporate Secretary, and Chief Sustainability Officer
    • Firm: NXP Semiconductors
    • Note: Ms. Wuamett is responsible for worldwide legal, governance, compliance, and intellectual property matters for NXP. She has over two decades of experience in the electronics industry, having previously served as general counsel and chief intellectual property officer for Freescale, and worked in Motorola's legal department focusing on intellectual property and complex transactions. NXP's intellectual property team is globally integrated and handles all aspects of intellectual property rights, including supporting patent and technology licensing and litigation activities.