Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 1 of 68 PageID 3123
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`JACKSONVILLE DIVISION
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`PARKERVISION, INC.,
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`
`
`Plaintiff,
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`v.
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`QUALCOMM INCORPORATED,
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`
`
`
`QUALCOMM INCORPORATED,
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`Defendant.
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`Case No. 3:11-cv-719-J-37TEM
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`
`
`Counterclaim Plaintiff,
`
`
`v.
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`PARKERVISION, INC., AND STERNE,
`KESSLER, GOLDSTEIN, & FOX PLLC,
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`Counterclaim Defendants.
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`DECLARATION OF PAUL PRUCNAL, PH.D. IN SUPPORT OF PLAINTIFF
`PARKERVISION, INC.’S REBUTTAL CLAIM CONSTRUCTION BRIEF
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`RPX-Farmwald Ex. 1018, p 1
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`

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`Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 2 of 68 PageID 3124
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`I.
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`
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`BACKGROUND
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`1.
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`I have been retained as an expert on behalf of ParkerVision, Inc. (“ParkerVision”)
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`in the above-captioned litigation action against Qualcomm Incorporated (“Qualcomm”).
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`
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`2.
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`I have been asked by ParkerVision to provide my opinions regarding the proper
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`construction of certain terms in the claims of U.S. Patent Nos. 6,061,551 (the “‘551 Patent”),
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`6,266,518 (the “‘518 Patent”), 6,370,371 (the “‘371 Patent”), 6,963,734 (the “‘734 Patent”),
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`7,496,342 (the “‘342 Patent”), and 7,724,845 (the “‘845 Patent”) (collectively, the “Patents-in-
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`Suit”).
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`3.
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`Specifically, I have been asked to respond to the opinions contained the July 13,
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`2012 Declaration of Dr. Robert M. Fox, to identify the opinions I disagree with, and to explain
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`the basis for my differing opinions. I have also been asked to review Qualcomm’s opening claim
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`construction brief and to respond to the arguments therein that I disagree with, and to explain the
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`basis of my disagreement.
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`
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`A.
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`Professional Experience
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`4.
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`I am currently a professor of Electrical Engineering at Princeton University and
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`have over 30 years of experience in the Electrical Engineering field.
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`5.
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`A detailed summary of my professional experience and qualifications can be
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`found in my curriculum vitae, attached hereto.
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`B.
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`6.
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`Compensation
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`I am being compensated for my work in connection with this litigation at my
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`standard consulting rate of $500 per hour.
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`1
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`RPX-Farmwald Ex. 1018, p 2
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`Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 3 of 68 PageID 3125
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`II.
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`BASIS FOR OPINIONS
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`
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`7.
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`I have based my opinions in this case on my 30 years of experience in the
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`Electrical Engineering field, the coursework that I teach at Princeton University, my experience
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`in the field of wireless communication technology, my review of the Patents-in-Suit, a review of
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`the July 13, 2012 Declaration of Dr. Robert M. Fox and the parties’ Opening Briefs on Claim
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`Construction, and additional references cited herein.
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`
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`8.
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`I reserve the right to supplement the opinions expressed in this declaration in light
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`of upcoming fact discovery, additional opinions by Qualcomm’s experts, and/or trial testimony.
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`In connection with my anticipated trial testimony in this action, I may use as exhibits various
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`documents produced in this litigation that refer to or relate to matters discussed in this report. In
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`addition, I reserve the right to use demonstrative exhibits, enlargements of actual exhibits, and
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`other information in order to convey my opinions.
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`
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`III. ASSUMPTIONS AND LEGAL ISSUES
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`A.
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`9.
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`A Person of Ordinary Skill in the Art
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`I understand that, in order to construe the claims of the Patents-in-Suit, the parties
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`must look to the customary meaning that would have been assigned to the terms by a person of
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`ordinary skill in the art at the time of the inventions of the claims of the Patents-in-Suit.
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`10.
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`I understand that the parties have come to a general agreement that a person of
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`ordinary skill with respect to the Patents-in-Suit would have a Bachelor of Science degree in
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`Electrical Engineering and four years of experience in the wireless communication industry. I
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`agree.
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`2
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`RPX-Farmwald Ex. 1018, p 3
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`Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 4 of 68 PageID 3126
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`11.
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`I further understand that the “ordinary meaning” of a claim term is the meaning
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`ascribed to that term by a person of ordinary skill in the art who has completed a reading of the
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`entire relevant patent or patents.
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`B.
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`12.
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`Legal Standard for Indefiniteness
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`I understand that, under 35 U.S.C, patent claims must “particularly point out and
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`distinctly claim . . . the subject matter which the applicant regards as his invention.” See § 112 ¶
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`2. I understand that, under the definiteness requirement, “the claim, read in light of the
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`specification, must apprise those skilled in the art of the scope of the claim.” SmithKline
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`Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1340, 74 USPQ2d 1398 (Fed. Cir. 2005). I
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`further understand that a claim term is considered “indefinite” only when the “claim remains
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`insolubly ambiguous and without a discernible meaning after” a person skilled in the art that is
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`familiar with the claim language, the specification, and the prosecution history has made “all
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`reasonable attempts at construction.” Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370
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`F.3d 1354, 1366 (Fed. Cir. 2004). Applying this standard, and for the reasons discussed herein,
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`none of the terms that Qualcomm and Dr. Fox allege are indefinite are in fact indefinite. None of
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`the disputed terms discussed herein is “insolubly ambiguous and without a discernible meaning.”
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`C.
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`13.
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`Legal Standard for Means-Plus-Function Claims
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`I understand that the parties have stipulated that certain of the terms to be
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`construed are “means-plus-function” terms, and are therefore subject to 35 U.S.C. § 112 ¶ 6. I
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`also understand that, in order to fully construe these terms, a structure capable of performing the
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`claimed function must be identified within the patent’s specification. See Braun Med., Inc. v.
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`Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). As a result, I understand that the
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`construction of a means-plus-function limitation involves two separate steps. First, “the function
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`3
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`RPX-Farmwald Ex. 1018, p 4
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`Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 5 of 68 PageID 3127
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`of the means-plus-function limitation” must be determined, and then “the corresponding
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`structure disclosed in the specification and equivalents thereof” can be identified. Medtronic,
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`Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). Furthermore,
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`I understand that a structure is corresponding “only if the specification or prosecution history
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`clearly links or associates that structure to the function recited in the claim.” Id. And finally, I
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`understand that the focus of the corresponding structure inquiry is not merely whether a structure
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`is capable of performing the recited function, but rather whether the corresponding structure is
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`“clearly linked or associated with the [recited] function.” Id. Applying this standard, and for the
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`reasons discussed herein, I agree that the structures identified by ParkerVision in its opening
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`claim construction brief more accurately reflect the structure corresponding to the functions
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`within the disputed means-plus-function claims.
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`IV. TECHNICAL BACKGROUND
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`A.
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`14.
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`The Technology of the Alleged Inventions
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`Each of the Patents-in-Suit concerns the demodulation of high frequency
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`electromagnetic signals for the purposes of improving wireless communication.
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`15.
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`ParkerVision’s engineers invented, and the Patents-in-Suit relate to, an entirely
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`new method of wireless communication down-conversion called “energy sampling.”
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`16.
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`Generally, energy sampling works by transferring energy from a high frequency
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`carrier signal, accumulating that transferred energy, and generating the baseband signal using the
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`accumulated energy. (See, e.g., ‘551 at Figs. 60A-F.) The specifics of the claimed energy
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`transfer are discussed in more detail herein.
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`4
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`RPX-Farmwald Ex. 1018, p 5
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`Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 6 of 68 PageID 3128
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`17.
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`The Patents-in-Suit contain several
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`important
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`improvements over down-
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`conversion techniques discussed in the prior art. These improvements include, but are not
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`limited to, a substantial improvement in the signal to noise ratio, a considerable reduction in the
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`number of necessary down-conversion components, a reduction in the necessary size of the
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`down-conversion circuitry, and a reduction in the power consumption required to produce the
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`down-conversion. (See ’551::25:52-26:7.)
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`RESPONSE TO THE JULY 13, 2012 DECLARATION OF DR. ROBERT M. FOX
`AND QUALCOMM’S OPENING BRIEF ON CLAIM CONSTRUCTION
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`18.
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`Regarding the construction of the term “sampling,” a person of ordinary skill in
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`V.
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`
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`the art, before reading the patent, would have generally understood the term to involve the
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`capture of some measurement (e.g. voltage, current, temperature, etc.) at discrete times. But
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`after reading the Patents-in-Suit, one skilled in the art would understand that “sampling,” as used
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`in the claims of those patents, specifically refers to capturing energy of a signal at discrete times.
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`Compare ‘518::32:34-36 (describing prior art as “captur[ing] various amplitudes of the AM
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`signal . . .”) with ’518::73:54-56 (describing the invention as “captur[ing] varying amounts of
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`energy from the analog AM carrier signal . . .”). In fact, this improved “sampling” as compared
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`to the prior art is an important aspect of the inventions claimed in the Patents-in-Suit. Rather
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`than give effect to this advancement, Dr. Fox’s and Qualcomm’s proposed “sampling”
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`construction attempts to limit the claimed inventions to the prior art impulse sampling
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`techniques. This is improper, and fails to account for the advance claimed by the Patents-in-Suit
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`over the prior art. As a result, it is my opinion that a person of ordinary skill in the art would
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`understand the term “sampling,” as used in the claims of the Patents-in-Suit, to refer to the
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`“capturing energy of a signal at discrete times.”
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`5
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`RPX-Farmwald Ex. 1018, p 6
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`Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 7 of 68 PageID 3129
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`19.
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`Regarding the construction of the term “n represents/indicates a harmonic or
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`subharmonic of the carrier signal,” Qualcomm has asserted that a person of ordinary skill in the
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`art would understand the disputed claim terms to exclude the case where n is equal to 1.
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`Qualcomm alleges that, in the scenario where n is equal to 1, “the corresponding aliasing rate is
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`the ‘fundamental frequency’ rather than a harmonic or sub-harmonic.” (See Qualcomm’s
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`Opening Brief, 13.) I disagree. Qualcomm’s position is, simply, incorrect. And, I note that Dr.
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`Fox has not adopted Qualcomm’s position in his declaration. It is well settled and understood by
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`all persons skilled in the art that in the scenario where n is equal to 1 the corresponding aliasing
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`rate can be called either the “fundamental frequency” or the “first harmonic.” Clearly then, the
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`“fundamental frequency” is not only a harmonic, it is the “first harmonic.” To allege that the
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`fundamental frequency is not a harmonic—as Qualcomm does—is fundamentally incorrect.
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`Furthermore, the Patents-in-Suit explicitly disclose n=1 as a harmonic of the carrier signal,
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`teaching that “the initial value . . . can be rounded up or down to the valid nearest n, which was
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`defined above as including (0.5, 1, 2, 3, . . .)”. (See ‘551::71:31-33.) As a result, it is my opinion
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`that a person having ordinary skill in the art would understand that the term “n
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`represents/indicates a harmonic or subharmonic of the carrier signal,” as used in the Patents-in-
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`Suit, includes n values of 0.5, 1, 2, 3, . . ..
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`20.
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`Regarding the terms “under-sampling” and “sub-sampling,” a person having
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`ordinary skill in the art would understand the terms to be synonyms. The terms are used
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`interchangeably throughout the Patents-in-Suit. However, because Dr. Fox and Qualcomm have
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`proposed differing constructions for the two synonymous terms, formulating different arguments
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`for each construction, I will address the proper constructions of the two terms separately below.
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`(See Qualcomm’s Opening Brief, 4.)
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`6
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`RPX-Farmwald Ex. 1018, p 7
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`Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 8 of 68 PageID 3130
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`21.
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`Regarding the construction of the term “under-sampling,” Dr. Fox opines that a
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`person of ordinary skill in the art would understand the term to mean “sampling at an aliasing
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`rate using negligible apertures.” (Fox Aff. ¶ 30.) I disagree. Dr. Fox’s attempt to limit the
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`construction of this term to include only “negligible apertures,” is incorrect because it would
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`exclude almost all embodiments of the claimed invention. For example, the ‘551 patent
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`explicitly teaches that “Fig. 83C illustrates an example of under-sampling signal 8304, including
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`energy transfer pulses 8306 having non-negligible apertures that tend away from zero time in
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`duration.” (See ‘551::67:51-54.) Dr. Fox’s proposed construction fails to account for this
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`express teaching.
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`22.
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`Furthermore, though he cites to the Patents-in-Suit, Dr. Fox’s assertion that
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`“[w]hile down-conversion by ‘under-sampling’ requires the use of negligible apertures, down-
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`conversion by ‘transferring energy’ requires non-negligible apertures,” Fox Aff. ¶ 35, is not
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`supported by the language of the patents. Specifically, Dr. Fox cites the Venn diagram shown in
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`Fig. 45A of the ‘551 Patent. From this, and counter to the embodiment discussed in the previous
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`paragraph, Dr. Fox infers that the two aliasing methods, “under-sampling” and “energy transfer,”
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`taught by the Patents-in-Suit must always be mutually exclusive. But Fig. 45A, particularly in
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`light of the embodiment discussed in the prior paragraph, does not support this proposition of
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`mutual exclusivity in all instances and in all embodiments of the invention covered by the
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`asserted claims. To the contrary, and as discussed in the prior paragraph, the patents describe the
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`use of “under-sampling” with both negligible and non-negligible apertures, making it clear that
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`the term relates to the frequency of sampling and not to the type of aperture used.
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`23.
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`The Patents-in-Suit also make clear that the prior art, in following the Nyquist
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`sampling theorem, reproduced a sampled signal by sampling at a rate that is at least as great as
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`7
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`RPX-Farmwald Ex. 1018, p 8
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`Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 9 of 68 PageID 3131
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`twice the frequency of the signal being sampled. (See ‘518::18:15-19.) The invention disclosed
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`by the Patents-in-Suit, however, works instead by “under-sampling.” (See ‘518::18:19-23.) This
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`process, as explicitly defined by the Patents-in-Suit, involves sampling a signal “at less than or
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`equal to twice the frequency of the signal.” Id. Additionally, according to the Patents-in-Suit,
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`“[w]hen a signal is sampled [in this manner], the signal is said to be under-sampled, or aliased.”
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`Id. As a result, for all the above reasons, it is my opinion that a person of ordinary skill in the
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`art, after reading the patents, would understand the term “under-sampling” to mean sampling at
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`a rate less than or equal to twice the frequency of the signal, or more simply “sampling at an
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`aliasing rate.”
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`24.
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`Regarding the construction of the terms “sub-sample” and “sub-sampling,” Dr.
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`Fox opines that these terms are not synonyms of the “under-sampling” term discussed
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`previously. For the reasons explained above, I disagree. Additionally, Dr. Fox opines that a
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`person of ordinary skill in the art would understand the terms “sub-sample” and “sub-sampling”
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`to mean “sampling at a sub-harmonic rate.” (Fox Aff. ¶ 32.) I, once again, disagree. Dr. Fox’s
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`proposed construction incorrectly limits “sub-sampling” to exclude sampling at a rate equal to ƒ,
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`where ƒ is the frequency of the signal being sampled. (This is a necessary consequence of his
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`proposed construction because, to one skilled in the art, ƒ is a harmonic and not a subharmonic.)
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`In other words, Dr. Fox’s proposed construction improperly limits “sub-sampling” to include
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`only sampling rates equal to 1/2ƒ, 1/3ƒ, 1/4ƒ, . . .. However, the Patents-in-Suit make clear that
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`“sub-sampling” occurs at any rate that is less than or equal to the Nyquist sampling rate of 2ƒ.
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`(See ‘518::18:15-19, and n.23 supra.) Clearly, then, and in contrary to Dr. Fox’s opinion, the
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`proper definition of “sub-sampling” cannot exclude embodiments of the invention where the
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`8
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`RPX-Farmwald Ex. 1018, p 9
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`Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 10 of 68 PageID 3132
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`sampling rate is equal to ƒ (since ƒ meets the requirement of being less than or equal to the
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`Nyquist sampling rate of 2ƒ). Id.
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`25.
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`Additionally regarding the construction of “sub-sampling,” I further understand
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`that this dispute is mathematically related to the dispute for the term “n represents a harmonic or
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`subharmonic . . .” discussed in detail above. While Dr. Fox does not offer an opinion in support
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`of this term, Qualcomm attempts to limit this term to mean “n is 0.5 or an integer greater than
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`1”—to the express exclusion of values of n equal to 1. (See Qualcomm’s Opening Brief, 12.)
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`This is incorrect. As explained in my discussion of the “n represents/indicates a harmonic or
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`subharmonic of the carrier signal” term above, the Patents-in-Suit require no such limitation on
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`the sub-Nyquist sampling rate n values. As a result, it is my opinion that a person having
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`ordinary skill in the art would understand the term “sub-sampling” to mean “sampling at an
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`aliasing rate” (where the “aliasing rate” includes any frequency less than or equal to twice that of
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`the frequency being sampled).
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`26. Regarding the construction of the terms related to “transferring non-negligible
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`amounts of energy [from a signal],” Dr. Fox opines that persons having ordinary skill in the art
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`would understand these terms to mean “moving sufficient energy from the carrier signal into
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`storage to cause substantial distortion [of the signal].” (Fox Aff. ¶ 36.) I disagree. First, Dr. Fox
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`improperly conflates the term “non-negligible” with “substantial.” Id. These terms are not
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`synonymous to those of ordinary skill in the art or otherwise. Furthermore, Dr. Fox improperly
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`shifts the focus of the language of the Patents-in-Suit from the amount of energy that is
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`transferred (i.e. non-negligible) with the amount of signal distortion that results. The
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`specifications of the Patents-in-Suit contrast the prior art with the invention’s new down-
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`conversion technique, which transfers “non-negligible amounts of energy . . . to allow the down-
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`9
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`RPX-Farmwald Ex. 1018, p 10
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`Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 11 of 68 PageID 3133
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`converted signals to be distinguishable from noise.” See ‘551::63:27-34. However, while the
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`Patents-in-Suit note that the prior art transferred negligible amounts of energy in order to protect
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`a signal from distortion, it does not follow that the disclosed invention, simply because it
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`involves the transfer of non-negligible amounts of energy, requires that transfer “cause
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`substantial distortion of the carrier signal.” Instead, a person having ordinary skill in the art
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`would understand that “non-negligible,” as used in the Patents-in-Suit, refers to a baseline level
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`of energy (that is distinguishable from noise) regardless of the intended or resultant distortion
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`caused to the carrier signal. Accordingly, in my opinion a person having ordinary skill in the art
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`would understand the term “transferring non-negligible amounts of energy from the carrier
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`signal” to mean “transferring energy (i.e., voltage and current over time) in amounts that are
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`distinguishable from noise.”
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`27.
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`Regarding the construction of the term “lower frequency signal,” Qualcomm has
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`asserted that a person of ordinary skill in the art would understand the disputed term to mean “a
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`signal with frequency below the carrier signal frequency and above the baseband frequency.”
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`(See Qualcomm’s Opening Brief, 11.) I disagree. The term “lower frequency” has no special
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`meaning in the art that would exclude the baseband. In fact, the Patents-in-Suit explicitly teach
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`that “lower frequency” signals can include the baseband. Claim 192 of the ‘551 Patent describes
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`an “apparatus according to claim 23, wherein the aliasing rate is substantially equal to frequency
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`of the carrier signal divided by n and the lower frequency signal is a baseband signal.” (See
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`‘551::127:1-2.) As a result, a person having ordinary skill in the art would understand “lower
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`frequency signal” to mean “a signal with frequency below the carrier signal.”
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`28.
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`Regarding the construction of the terms related to “integrating energy,” Dr. Fox
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`opines that a person of ordinary skill in the art would find the terms to be either “nonsensical” or,
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`10
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`RPX-Farmwald Ex. 1018, p 11
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`Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 12 of 68 PageID 3134
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`alternatively, understand the terms to mean “storing in a storage module the energy transferred
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`during an aperture period.” (Fox Aff. ¶¶ 45-49.) I disagree with both the “nonsensical”
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`conclusion and the alternatively proposed construction. First, integration is a very well-known
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`mathematical operation that would easily be understood by any person skilled in the art.
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`Secondly, Dr. Fox’s alternatively proposed construction incorrectly frames the inventions of the
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`Patents-in-Suit as requiring energy “storage” for some amount of time. The Patents-in-Suit make
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`clear that the invention’s capacitor devices, in order to generate a lower frequency signal,
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`continuously accumulate and discharge energy—they are not required to “store” the energy for
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`some undefined amount of time. (See, e.g. ‘551::63:63-64:3 and ‘551::103:45-51; ‘551 Figs.
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`60E, 6010A, and 6010B.) As a result of both this disclosure and the fact that the relevant input
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`signal is continuously changing, it is incorrect to claim that the “integrating the energy” as used
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`by the Patents-in-Suit equate the invention’s continuous accumulation-and-release of energy with
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`the fixed-quantity “storage” of energy. Furthermore, it is my opinion that a person having
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`ordinary skill in the art would, after reading the Patents-in-Suit, understand the terms regarding
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`the invention’s “integrat[ion] of energy” to be synonymous with the “accumulation of energy.”
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`29.
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`Regarding
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`the
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`construction of
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`the
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`terms
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`“finite
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`time
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`integrating
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`operation/module,” Qualcomm states that a person having ordinary skill in the art would
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`understand these terms, respectively, to mean “an operation that distorts the carrier signal and
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`stores the energy transferred during an aperture period” and “a module with a switch, a pulse
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`generator, and a storage module that stores the energy transferred during an aperture period.”
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`(See Qualcomm’s Opening Brief, 16-17.) And, in support of this assertion Qualcomm cites Dr.
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`Fox’s affidavit at ¶¶ 48-49. However, in these paragraphs Dr. Fox does not endorse
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`Qualcomm’s proposed construction. Moreover, I disagree with Qualcomm’s proposed
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`11
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`RPX-Farmwald Ex. 1018, p 12
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`Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 13 of 68 PageID 3135
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`construction of these terms. These terms appear only in the claims of the ‘845 patent. And, as
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`used in the ‘845 patent, the claimed “integrating operation” is an approximation to “a matched
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`filter/correlation process.” (See ‘845::129:41-43.) Furthermore, as the ‘845 patent teaches, after
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`the energy sampling occurs, an additional step comprising “convolving an approximate half
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`cycle of the carrier signal [obtained by energy sampling] with a representation of itself in order
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`to efficiently acquire the energy of the approximate half cycle of the carrier signal” occurs. (See
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`‘845::131:1-5.) Dr. Fox’s proposed constructions of these terms fail to take into account the
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`additional “convolution” step required by the ‘845 patent.
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`
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`30. Moreover, and with regard to the construction of the “finite time integrating
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`operation” term, Qualcomm again attempts to read in the requirement that the “operation distorts
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`the carrier signal.” (See Qualcomm’s Opening Brief, 16-17.) Notably, Dr. Fox does not endorse
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`Qualcomm’s attempt to narrow this term. For the reasons I explained with respect to the
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`“transferring non-negligible amounts of energy” term, Qualcomm’s attempt to read in the
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`“distortion” limitation is incorrect.
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`31.
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`Finally, and with respect to both the “finite time integrating operation” and ”finite
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`time integrating module” terms, Qualcomm again attempts to read in a requirement that there be
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`“storage” of energy for some predefined period of time. (See Qualcomm’s Opening Brief, 16-
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`17.) Notably, Dr. Fox does not endorse Qualcomm’s attempt to narrow this term. For the
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`reasons I explained with respect to the “integrating energy” term, (notably, that the patents
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`describe the continuous accumulation-and-release of energy) reading in this proposed additional
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`requirement is incorrect. Put simply, it is improper to equate the continuous accumulation-and-
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`release of energy described in the patents with the fixed-quantity “storage” of energy for some
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`defined time period.
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`12
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`RPX-Farmwald Ex. 1018, p 13
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`32. Based on the foregoing, it is my opinion that a person having ordinary skill in the
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`art would understand the term “finite time integrating operation” as used in the ’845 patent to
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`mean “convolving a portion of the carrier signal with an approximate representation of itself.” It
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`is also my opinion that a person having ordinary skill in the art would understand the term “finite
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`time integrating module” to mean “circuitry that can perform a finite time integrating operation.”
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`33.
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`Regarding the construction of the terms related to “generating a lower frequency
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`signal from the . . . energy,” Dr. Fox opines that a person having ordinary skill in the art would
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`understand the term to mean “creating a . . . signal from the previously integrated/transferred
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`energy.” (See Fox Aff. ¶¶ 42-44.) I disagree. A person of ordinary skill in the art would not
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`necessarily equate the patent’s use of the term “generating” with “creation . . . from the
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`previously integrated/transferred energy” as Dr. Fox does. Rather, as shown by Figure 68G of
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`the ‘551 patent, the signal 1304 enters the gated transfer module 6404 and is used to
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`continuously generate the down converted signal 1308B.
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`This down converted signal 1308B is not “created . . . from the previously transferred energy” as
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`Dr. Fox asserts. On the contrary, and as explained above with respect to the “integrate energy”
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`term, the Patents-in-Suit make clear that the invention, in order to generate a lower frequency
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`13
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`RPX-Farmwald Ex. 1018, p 14
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`Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 15 of 68 PageID 3137
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`signal, continuously accumulates and discharges energy. (See, e.g. ‘551::63:63-64:3 and
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`‘551::103:45-51; ‘551 Figs. 60E, 6010A, and 6010B.) Accordingly, one of ordinary skill in the
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`art would agree that the intrinsic record of the Patents-in-Suit does not assign any special
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`meaning to the “generate” term, beyond the normal use of this term by a lay person.
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`
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`34.
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`Regarding the construction of the term “accumulating the result,” Dr. Fox opines
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`that a person having ordinary skill in the art would understand the term to mean “storing in a
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`storage module the energy transferred over multiple aperture periods.” (See Fox Aff. ¶ 52.) I
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`disagree. As I explained with respect to the “finite time integrating operation/module” terms, the
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`“accumulating the result” term likewise only occurs in the ‘845 patent. Moreover, and as I
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`further explained with respect to the “finite time integrating operation/module” terms as the ‘845
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`patent teaches, following the described energy sampling, “step 15010 comprises the step of
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`convolving an approximate half cycle of the carrier signal [obtained by energy sampling] with a
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`representation of itself in order to efficiently acquire the energy of the approximate half cycle of
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`the carrier signal.” (See ‘845::131:1-5.) Accordingly, and as used in the ‘845 patent,
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`“accumulating the result” refers to “accumulating the result” of the described “convolving”
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`process. It does not, as Dr. Fox incorrectly states, refer to “storing . . . the energy transferred
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`over multiple aperture periods.” In light of the foregoing, one of ordinary skill in the art would
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`understand that, as used in the ‘845 patent, the “accumulating the result” claim term refers to
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`“accumulating the result” of the described “convolving” process. Consequently, no special
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`construction is warranted.
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`
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`35.
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`Regarding the construction of the terms related to “impedance matching,” Dr. Fox
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`opines that the terms should be understood to require that the circuitry “maximize power transfer
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`throughout the [various] path[s].” (Fox Aff. ¶¶ 53-64.) I disagree with Dr. Fox’s attempt to
`
`
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`14
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`RPX-Farmwald Ex. 1018, p 15
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`Case 3:11-cv-00719-RBD-TEM Document 136-1 Filed 07/27/12 Page 16 of 68 PageID 3138
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`read-in a requirement that the power transfer be “maximized.” This additional requirement adds
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`what is essentially a mathematical impossibility—that the transferred power be 100%
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`maximized. As the ‘518 patent explains: “[i]n an embodiment . . . [a]n impedance matching
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`circuit can be utilized to efficiently couple the down-converted signal with an output impedance.”
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`(See ‘518::105:35-38.) Such “efficient” coupling does not require “maximizing” the power
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`transfer as Dr. Fox opines. The ‘518 patent continues to explain with respect to the impedance
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`matching circuits that “[i]n some situations, the initial designs may be suitable without further
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`optimization. In other situations, the initial designs can be optimized in accordance with other
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`various design criteria and considerations.” (See ‘518::105:53-58.) As this discussion makes
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`clear, the impedance matching circuitry need only be as efficient or optimized as a particular
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`design or application requires. It need not be “maximized” in all instances as Dr. Fox opines.
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`
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`36. Moreover, “impedance matching” is a term of art in circuit design, and it is
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`generally understood to mean designing a circuit in such a way that the complex conjugate of the
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`source impedance is set in some manner in relation to the load impedance. In the case where the
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`source and load impedances are matched such that they are “equal,” the result is that of a
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`theoretical “minimization” of signal reflection and a theoretical “maximization” of power
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`transfer. And yet, in the real world, a circuit’s source and load impedances could never be
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`perfectly equal. Accordingly, Dr. Fox’s attempt to read-in a “maximized power” limitation
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`cannot fairly be applied in a real-word setting.
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`
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`37.
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`Additionally, when discussing “impedance matching”
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`the Patents-in-Suit
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`explicitly acknowledge that the invention’s impedance settings were a result of considerations
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`related to the “desired load to be driven.” (See, e.g., ‘551::105:30-43.) Therefore, the proposed
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`construction of this term would be fairly understood to include “transferring the desired power.”
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`15
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`RPX-Farmwald Ex. 1018, p 16
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`38.
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`Furthermore, in addition to the “maximize” language, I disagree with Dr. Fox to
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`the extent that his construction requires “impedance matching” to maximize power transfer
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`“throughout a [signal] path.” It is well settled to persons of ordinary skill in the art that
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`“impedance matching” involves matching impedances in relation to the desired power transfer
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`only at specific points in a circuit (generally, i