PARKERVISION, INC. v. QUALCOMM INCORPORATED

Authored by: Jeremy J. Gustrowsky

A long-running dispute between ParkerVision and Qualcomm has produced a useful reminder about appellate timing: a district court generally cannot carve up a single patent and send only part of it to the Federal Circuit. The court dismissed ParkerVision’s appeal for lack of jurisdiction because the judgment below resolved only some of the asserted claims of one of the patents in suit.

The case revolves around two ParkerVision patents asserted in 2014, U.S. Patent No. 7,218,907 and U.S. Patent No. 6,091,940. The asserted claims fell into two buckets. The “receiver claims” cover down-converting electromagnetic signals in wireless devices (turning a high frequency signal into a low frequency one), while the “transmitter claims” cover up-conversion in the opposite direction. All the asserted claims of the ‘907 patent are receiver claims; the ‘940 patent had both types. After the Federal Circuit vacated an earlier summary judgment in 2024 and directed the district court to run a proper claim construction process, the district court issued its constructions, and the parties stipulated that Qualcomm’s products do not infringe the receiver claims. On ParkerVision’s motion, and over Qualcomm’s objection, the district court entered a partial “final judgment” of non-infringement on the receiver claims under Federal Rule of Civil Procedure 54(b), then severed and stayed the still-unresolved transmitter claims.

That maneuver did not work. The Federal Circuit emphasized a vocabulary trap that patent litigators need to watch for: the word “claim” in Rule 54(b) means a cause of action, not a numbered paragraph at the end of a patent. Drawing on 35 U.S.C. § 281 (a patentee “shall have remedy by civil action for infringement of his patent”) and 35 U.S.C. § 271(a) (infringement is defined with reference to the patent), the court explained that each asserted patent ordinarily gives rise to a single, indivisible cause of action. The court pointed to related principles it has applied elsewhere, including that ownership rights attach to a patent as a whole and that a patent owner cannot assign individual claims to different parties. ParkerVision’s own pleading reinforced the point, since the amended complaint alleged a single count for infringement of the ‘940 patent without distinguishing between receiver and transmitter claims. With the transmitter claims still pending, the cause of action on that patent was not final, so there was nothing appealable.

ParkerVision offered several fallback theories, and none survived. It argued that the ‘907 patent was fully resolved because all of its asserted claims are receiver claims. The problem was procedural: Rule 54(b) requires the district court to expressly determine that there is “no just reason for delay,” and the only such determination here covered the receiver claims of both patents as a group. No one asked the district court to make that finding for the ‘907 patent standing alone, and it never did. Without that express determination, the order did not end the action as to any claim. Pendent appellate jurisdiction over the ‘940 patent then fell away as well, since it depends on having jurisdiction over a related ruling. The court also declined to treat the appeal as a certified interlocutory appeal under 28 U.S.C. § 1292(b), noting that the district court was never asked to weigh that statute’s factors and the court would not speculate about how it might have ruled.

The panel also turned down ParkerVision’s request to have the case reassigned to a different district judge on remand. Applying Eleventh Circuit law, the court called reassignment a “severe remedy” and worked through the three factors used in that circuit. The presiding judge had already shown he could set aside earlier views by conducting the claim construction the Federal Circuit ordered in 2024. His expressions of frustration about the length of the litigation, repeated claim construction rounds, and multiple appeals did not suggest partiality, consistent with Supreme Court guidance that judicial impatience and annoyance are not grounds for disqualification. And handing a case of this technical and procedural complexity to a new judge would create waste out of proportion to any benefit. With the appeal dismissed, the case returns to the district court in essentially the posture it occupied before the Rule 54(b) order, with the district court free to decide how to move forward.

The practical takeaway: If you want early appellate review of a partial ruling in a patent case, structure the judgment patent by patent rather than claim group by claim group, and ask the district court to make the specific findings the rule requires for each patent you want reviewed. If the pieces do not line up that way, consider asking for a § 1292(b) certification on the record instead of hoping the appellate court will treat a flawed Rule 54(b) order as its equivalent.