UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DR. MICHAEL FARMWALD and RPX CORPORATION
`Petitioner
`
`v.
`
`PARKERVISION, INC.
`Patent Owner
`____________________
`
`Case IPR2014-00948
`U.S. Patent No. 6,370,371
`____________________
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Intel v. ParkerVision
`IPR2020-01265
`Intel 1032
`
`

`

`
`
`I.(cid:3)
`
`IPR2014-00948
`
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1(cid:3)
`
`A.(cid:3)
`
`The flawed Petition filed by Farmwald and RPX does not establish the
`invalidity of any claim of the ’371 patent. The Board should,
`therefore, deny all the grounds of challenge and not institute inter
`partes review of the ’371 patent. ........................................................... 2(cid:3)
`
`B.(cid:3)
`
`Inter partes review should not be instituted because the Petition is
`fatally flawed ......................................................................................... 4(cid:3)
`
`1.(cid:3)
`
`2.(cid:3)
`
`3.(cid:3)
`
`4.(cid:3)
`
`The Petition fails to make out a prima facie case of anticipation
`and contains irreparable and substantial evidentiary gaps .......... 4(cid:3)
`
`The Petition’s challenges depend on flawed claim constructions
` ..................................................................................................... 6(cid:3)
`
`The Petition never advances an inherency argument and, thus,
`the inherency doctrine cannot save its flawed challenges .......... 8(cid:3)
`
`If trial is instituted, it should be limited to non-cumulative
`grounds ...................................................................................... 10(cid:3)
`
`II.(cid:3)
`
`The Petition raises real party-in-interest and privity issues .......................... 10(cid:3)
`
`III.(cid:3) The ’371 Patent .............................................................................................. 12(cid:3)
`
`A.(cid:3)
`
`Story of the invention of the ’371 Patent ............................................ 12(cid:3)
`
`1.(cid:3)
`
`2.(cid:3)
`
`ParkerVision and Its History ..................................................... 12(cid:3)
`
`ParkerVision’s Invention of Energy Sampling ......................... 14(cid:3)
`
`B.(cid:3)
`
`C.(cid:3)
`
`Story of the district court litigation of the ’371 patent ........................ 16(cid:3)
`
`Claim Construction ............................................................................. 17(cid:3)
`
`1.(cid:3)
`
`2.(cid:3)
`
`“pulses” and “pulse generator” ................................................. 18(cid:3)
`
`“energy is … integrated … during said apertures” ................... 20(cid:3)
`
`- i -
`
`
`
`
`
`

`

`IPR2014-00948
`
`3.(cid:3)
`
`4.(cid:3)
`
`“storage module” ....................................................................... 21(cid:3)
`
`“generated from the transferred energy” .................................. 26(cid:3)
`
`IV.(cid:3) The Board Should Deny the Petition in Its Entirety Because Petitioner Did
`Not Provide Sufficient Evidence to establish a prima face case that the
`References Anticipate Claims 2, 22, 23, and 25 ............................................ 31(cid:3)
`
`A.(cid:3)
`
`Petitioner Did Not establish a prima face case that Estabrook
`Anticipates Claims 2, 22, 23, and 25 .................................................. 31(cid:3)
`
`1.(cid:3)
`
`2.(cid:3)
`
`Petitioner Failed to Establish that Estabrook Teaches All the
`Elements of Claim 2 .................................................................. 31(cid:3)
`
`Petitioner Failed to Establish that Estabrook Teaches the
`“Storage Module” of Claim 22 ................................................. 37(cid:3)
`
`B.(cid:3)
`
`Petitioner Did Not establish a prima face case that Avitabile
`Anticipates Claims 2, 22 and 25.......................................................... 39(cid:3)
`
`1.(cid:3)
`
`2.(cid:3)
`
`Petitioner failed to establish that Avitabile Teaches All the
`Elements of the claim 2 ............................................................. 39(cid:3)
`
`Petitioner Failed to Establish that Avitabile Teaches the
`“Storage Module” of Claim 22 ................................................. 42(cid:3)
`
`C.(cid:3)
`
`Petitioner Did Not establish a prima face case that Weisskopf
`Anticipates Claims 2, 22, 23, and 25 .................................................. 44(cid:3)
`
`1.(cid:3)
`
`2.(cid:3)
`
`Petitioner Failed to Establish that Weisskopf Teaches All the
`Elements of Claim 2 .................................................................. 44(cid:3)
`
`Petitioner Failed to Establish that Weisskopf Teaches the
`“Storage Module” of Claim 22 ................................................. 47(cid:3)
`
`V.(cid:3) With nothing at stake for Petitioner, the Board should use its discretion to
`deny institution of an unnecessary and complicated trial .............................. 49(cid:3)
`
`VI.(cid:3) Petitioner’s Proposed Challenges Relying on Weisskopf and Estabrook Are
`Redundant to Those Relying on Avitabile .................................................... 51(cid:3)
`
`
`
`
`
`
`- ii -
`
`

`

`VII.(cid:3) Conclusion ..................................................................................................... 53(cid:3)
`
`IPR2014-00948
`
`
`
`
`
`
`
`
`
`
`- iii -
`
`

`

`IPR2014-00948
`
`TABLE OF AUTHORITIES
`
`
`Cases(cid:3)
`Aventis Pharmaceuticals v. Amino Chemicals Ltd.,
`715 F.3d 1363 (Fed. Cir. 2013) ..................................................................... 26
`
`Bettcher Indus., Inc. v. Bunzl USA, Inc.,
`661 F.3d 629 (Fed. Cir. 2011) ......................................................................... 5
`
`Ethicon Endo-Surgery v. United States Surgical Corp.,
`93 F.3d 1572 (Fed. Cir. 1996) ....................................................................... 28
`
`Gubelmann v. Gang,
`408 F.2d 758 (C.C.P.A. 1969) ......................................................................... 5
`
`In re Hiniker Co.,
`150 F.3d 1362 (Fed. Cir. 1998) ..................................................................... 30
`
`In re Oelrich,
`666 F.2d 578 (C.C.P.A. 1981) ......................................................................... 5
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) ..................................................................... 17
`
`In re Van Geuns,
`988 F.2d 1181 (Fed. Cir. 1993) ..................................................................... 18
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc.
`381 F.3d 1111 (Fed. Cir. 2004) ..................................................................... 26
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012) ....................... 50, 51, 52
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper 8 (P.T.A.B. Oct. 25, 2012) ............................... 9, 50
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) ....................................................................... 26
`
`MEHL/Biophile Int’l Corp. v. Milgraum,
`192 F.3d 1362 (Fed. Cir. 1999) ....................................................................... 5
`
`- iv -
`
`
`
`
`
`

`

`IPR2014-00948
`
`Microsoft Corp. v. Proxyconn, Inc.,
`IPR2012-00026, Paper 17 (P.T.A.B Dec. 21, 2012) ....................................... 6
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ....................................................................... 4
`
`Olympus Am., Inc. v. Perfect Surgical Techniques, Inc.,
`IPR2014-00233, Paper 15 (P.T.A.B., June 16, 2014). .................................. 51
`
`RPX Corp. v. ParkerVision, Inc.,
`IPR2014-01107, Paper 2 (P.T.A.B. July 2, 2014) ......................................... 27
`
`RPX Corp. v. VirnetX, Inc.,
`IPR2014-00171, Paper 52 (P.T.A.B. June 23, 2014) ............................. 11, 12
`
`Ultratec, Inc. v. Sorenson Commc’ns, Inc.,
`IPR2013-00288, Paper 23 (P.T.A.B. Jan. 10, 2014) ..................................... 51
`
`Unilever, Inc. v. The Proctor & Gamble Co.,
`IPR2014-00506, Paper 17 (P.T.A.B. Jul. 7, 2014) ........................................ 50
`
`Verdegaal Bros., Inc. v. Union Oil Co. of Cal.,
`814 F.2d 628 (Fed. Cir. 1987) ......................................................................... 4
`Statutes(cid:3)
`35 U.S.C. § 102 .......................................................................................................... 4
`
`35 U.S.C. § 102(b) ..................................................................................................... 2
`
`35 U.S.C. § 312(a)(3) ................................................................................................. 8
`
`35 U.S.C. § 326(b) ................................................................................................... 10
`Rules(cid:3)
`37 C.F.R. § 42.100(b) .............................................................................................. 17
`
`37 C.F.R. § 42.101(b) .............................................................................................. 10
`
`37 C.F.R. § 42.108(b) .............................................................................................. 51
`
`77 Fed. Reg. 48756 (Aug. 14, 2012) ....................................................................... 17
`
`
`
`
`
`
`- v -
`
`

`

`IPR2014-00948
`
`Other Authorities(cid:3)
`M.P.E.P. § 800 ......................................................................................................... 30
`
`M.P.E.P. § 2131 ......................................................................................................... 4
`
`
`
`
`
`
`
`
`- vi -
`
`

`

`IPR2014-00948
`
`Exhibit
`2001
`2002
`2003
`
`2004
`
`EXHIBIT LIST
`
`DESCRIPTION
`
`Not Used
`Not Used
`8-13-14 e-mail from ParkerVision’s counsel to Petitioner’s
`counsel
`Estabrook et al., A Mixer Computer-Aided Design Tool Based in
`the Time Domain, IEEE MTT-S Digest, pp. 1107-1110 (1988).
`
`
`- vii -
`
`
`
`
`
`
`
`
`

`

`
`
`IPR2014-00948
`
`Petitioner Farmwald and RPX Corporation’s inter partes review Petition of
`
`U.S. Patent No. 6,370,371 was accorded a filing date on June 24, 2014. (Paper 3.)
`
`Accordingly, Patent Owner ParkerVision Inc. timely files this preliminary
`
`response.
`
`I.
`
`Introduction
`The ’371 patent is a member of a large family of pioneering patents
`
`protecting groundbreaking wireless communication technologies. (See Section
`
`III.A.) The ’371 is battle tested, having been involved in a recent litigation where
`
`all the claims at issue in the litigation were found to be valid. (ParkerVision, Inc.
`
`v. Qualcomm Incorporated, Case No. 3:11-cv-719-J-37TEM, M.D. Fla; hereafter
`
`“the Qualcomm Litigation”). In fact, claim 2 challenged here was found to be valid
`
`in the Qualcomm Litigation. Claims 22, 23 and 25 challenged here were not in the
`
`final decision of the Qualcomm Litigation, but if they had they would also have
`
`been found valid as they depend from claim 2. It is noteworthy that claim 2 was
`
`found valid in the Qualcomm Litigation over the Weisskopf reference and a close
`
`version1 of the Estabrook reference advanced here by Petitioner.2 (See Section
`
`III.B.)
`
`
`1 Estabrook et al., “A Mixer Computer-Aided Design Tool Based in the
`
`Time Domain, IEEE MTT-S Digest” is provided as Ex. 2004.
`
`
`
`
`
`
`- 1 -
`
`

`

`IPR2014-00948
`
`A.
`
`The flawed Petition filed by Farmwald and RPX does not establish
`the invalidity of any claim of the ’371 patent. The Board should,
`therefore, deny all the grounds of challenge and not institute inter
`partes review of the ’371 patent.
`The Petition proposes three grounds for challenge (Petition, p. 3):
`
`A. Challenge 1: claims 2, 22, 23, and 25 are anticipated under 35 U.S.C.
`
`§ 102(b) by Estabrook3.
`
`B. Challenge 2: claims 2, 22, and 25 are anticipated under 35 U.S.C. §
`
`102(b) by Avitabile4.
`
`C. Challenge 3: claims 2, 22, 23, and 25 are anticipated under 35 U.S.C.
`
`§ 102(b) by Weisskopf5.
`
`Section IV discusses the Petition’s legal and technical insufficiencies. While
`
`additional deficiencies exist and may be addressed later, if necessary, the table
`
`below summarizes the deficiencies addressed in this Preliminary Response.
`
`
`
`
`2 The Avitabile reference was not involved in the Qualcomm Litigation.
`
`3 Estabrook, “The direct conversion receiver: Analysis and design of the
`
`front-end components, ” is submitted as Ex. 1022.
`
`4 Avitabile is submitted as Ex. 1024.
`
`5 Weisskopf is submitted as Ex. 1023.
`
`
`
`
`
`
`- 2 -
`
`

`

`IPR2014-00948
`
`“X” Indicates Insufficiency
`Challenge 1
`Challenge 2
`Challenge 3
`(Estabrook)
`(Avitabile)
`(Weisskopf)
`
`
`
`
`
`
`X
`
`
`
`X
`
`X
`
`
`
`
`
`
`
`
`
`
`X
`
`
`
`
`
`
`
`
`
`X
`
`X
`
`
`
`
`
`
`
`
`X
`
`
`
`
`
`
`
`
`
`X
`
`
`
`
`
`
`
`
`
`
`X
`
`Claim
`
`2. An apparatus, comprising:
` at least one universal frequency
`down-conversion module, including
`a switch, an integrator coupled to
`said switch, and a pulse generator
`coupled to said switch; and
` wherein said pulse generator
`outputs pulses to said switch at an
`aliasing rate that is determined
`according to:
` (a frequency of a carrier signal +/-
`a frequency of a lower frequency
`signal) divided by N;
` wherein said pulses have apertures
`and cause said switch to close and
`sub-sample the carrier signal over
`said apertures, and
` wherein energy is transferred from
`the carrier signal and integrated
`using said integrator during said
`apertures of said pulses, and
` wherein the lower frequency signal
`is generated from the transferred
`energy.
`
`22. The apparatus of claim 2,
`wherein each of said at least one
`universal frequency down-
`conversion module comprises:
` an energy transfer signal generator;
` a switch module controlled by said
`energy transfer signal generator; and
` a storage module coupled to said
`switch module.
`
`
`
`
`
`
`
`- 3 -
`
`

`

`IPR2014-00948
`
`B.
`
`Inter partes review should not be instituted because the Petition is
`fatally flawed
`The Board should not institute inter partes review because the Petition is
`
`replete with statutory deficiencies and evidentiary gaps. These deficiencies are
`
`summarized below.
`
`1.
`
`The Petition fails to make out a prima facie case of
`anticipation and contains irreparable and substantial
`evidentiary gaps
`The Petition advances only anticipation challenges, and the requirements for
`
`anticipation are high and strict. A claim is anticipated “only if each and every
`
`element as set forth in the claim is found, either expressly or inherently described,
`
`in a single prior art reference.” M.P.E.P. § 2131 (quoting Verdegaal Bros., Inc. v.
`
`Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987)).
`
`Consistent with Patent Office guidance, the Court of Appeals for the Federal
`
`Circuit has explained that “the hallmark of anticipation is prior invention” and “the
`
`prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only
`
`disclose all elements of the claim within the four corners of the document, but must
`
`also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v.
`
`VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (emphasis added).
`
`To demonstrate that a claimed feature is inherent, the Petition must establish
`
`that “the prior art necessarily functions in accordance with, or includes, the
`
`
`
`
`
`
`- 4 -
`
`

`

`IPR2014-00948
`
`claimed limitations….” MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362,
`
`1365 (Fed. Cir. 1999) (emphasis added). If the feature “is not inevitably present …
`
`[as] the natural result flowing from the operation [of the prior art] as taught,” then
`
`it is not inherent. In re Oelrich, 666 F.2d 578, 581-82 (C.C.P.A. 1981).
`
`Furthermore, “[w]here support must be based on an inherent disclosure, it is not
`
`sufficient that a person following the disclosure might obtain the result set forth in
`
`the [claim]; it must invariably happen.” Gubelmann v. Gang, 408 F.2d 758, 766
`
`(C.C.P.A. 1969) (emphasis added). Nor can mere “speculation” serve as a
`
`substitute for factual support since “the speculative notion that by happenstance the
`
`[prior art feature] might, under hypothetical circumstances, be capable of operating
`
`as [claimed] is an insufficient basis” for inherency. Bettcher Indus., Inc. v. Bunzl
`
`USA, Inc., 661 F.3d 629, 640 (Fed. Cir. 2011) (emphasis added).
`
`As discussed in detail in the sections below, the Petition does not establish a
`
`prima face case that the prior art expressly or inherently teaches every element of
`
`the challenged claims. Moreover, it appears Petitioner decided to pick and choose
`
`what limitations to even discuss since its prima facie case ignores explicitly recited
`
`claim elements of a number of claims.
`
`For example, the Petition does not provide persuasive evidence that the prior
`
`art references expressly or inherently teach “wherein energy is … integrated using
`
`said integrator during said apertures of said pulses” of claim 2. This limitation is
`
`
`
`- 5 -
`
`
`

`

`IPR2014-00948
`
`directed to plural “apertures” – meaning energy is integrated over multiple
`
`apertures. The Petition ignores this key limitation and does not even attempt to
`
`argue the prior art teaches integrating energy over multiple apertures.
`
`As another example, the Petition does not meet the minimum threshold
`
`showing with evidence that Estabrook expressly or inherently teaches “outputs
`
`pulses” as required by claim 2. The Petition focuses only on duration of a control
`
`signal (Petition, pp. 15 and 42) but in doing so the Petition addresses at most the
`
`“apertures.” Nowhere does the Petition put forth an argument that Estabrook
`
`expressly or inherently teaches “outputs pulses.”
`
`2.
`
`The Petition’s challenges depend on flawed claim
`constructions
`As discussed in detail in the sections below, inter partes review should not
`
`be instituted because the Petition’s arguments for unpatentability depend upon
`
`erroneous and unreasonable claim interpretations. This was the case in IPR2012-
`
`00026, where the Board rejected Petitioner's proposed claim interpretation and
`
`denied the proposed grounds, holding that “[a]s this argument is premised on
`
`Petitioner’s erroneous claim construction we are not persuaded of a reasonable
`
`likelihood of prevailing.” Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026,
`
`Paper 17, p. 24 (P.T.A.B Dec. 21, 2012) (emphasis added).
`
`
`
`
`
`
`- 6 -
`
`

`

`IPR2014-00948
`
`The Board should reach the same result here, as Petitioner’s claim
`
`constructions are confusing, ambiguous and not supported by the specification.
`
`For example, the Petition proposes a construction of “pulse generator” of
`
`claim 2 as “an apparatus for generating a control signal of any duration.” (Petition,
`
`p. 15.) The Petition’s construction is nonsensical and unreasonable on its face
`
`because “any duration” would encompass a control signal of no duration and
`
`infinite duration, both of which are contrary to the teachings of the specification.
`
`The Petition’s argument for this construction also makes no sense, as it appears to
`
`argue “any duration” is meant to define a “pulse” (id.), yet its proposed
`
`construction clearly seeks to use “any duration” to define “control signal.”
`
`Accordingly, the Petition’s construction of “pulse generator” is unreasonable and
`
`deficient because it is nonsensical, confusing and ambiguous.
`
`As another example, the Petition construes “storage module” of claim 22 as
`
`“an apparatus that stores energy transferred during a non-negligible aperture.”
`
`(Petition, p. 32.) The Petition then further narrows this term, construing “non-
`
`negligible” by importing the limitations of claim 98 from U.S. Patent No.
`
`6,061,551. In particular, the Petition states the “broadest reasonable interpretation
`
`of ‘non-negligible’ in this context is objectively defined by dependent claim 98 of
`
`the’551 patent, which establishes that apertures of ‘one tenth of one percent of
`
`approximate half cycles of the carrier signal’ are necessarily non-negligible.” (Id.)
`
`
`
`- 7 -
`
`
`

`

`IPR2014-00948
`
`This construction is clearly flawed. Inclusion of “during a non-negligible aperture”
`
`improperly imports limitations from the specification.
`
`The Petition’s flawed claim constructions undermine its anticipation
`
`challenges that rely on those constructions since any application of art to an
`
`incorrectly constructed claim cannot be a proper anticipation analysis. Therefore,
`
`inter partes review should not be instituted for any of the challenged claims as the
`
`Petition’s flawed constructions of “pulse generator” in claim 2 and “storage
`
`module” in claim 22 (as well as other flawed constructions discussed below) defeat
`
`all of its challenges.
`
`3.
`
`The Petition never advances an inherency argument and,
`thus, the inherency doctrine cannot save its flawed
`challenges
`35 U.S.C. § 312(a)(3) provides “[a] petition… may be considered only if…
`
`the petition identifies, in writing and with particularity, each claim challenged…
`
`[and] the grounds on which the challenge to each claim is based.” Here the Petition
`
`advances anticipation challenges based only on the expressed teachings of the
`
`prior art references. Nowhere does the Petition clearly and with any particularity
`
`articulate any inherency arguments. When the Petition advances a position that
`
`might be interpreted as an inherency argument, the Petition does not satisfy the
`
`strict requirements of the inherency doctrine.
`
`
`
`
`
`
`- 8 -
`
`

`

`IPR2014-00948
`
`Neither the Board nor Patent Owner should have to speculate when and
`
`where Petitioner meant to rely on the inherency doctrine. Since Petitioner never
`
`clearly articulates an inherency argument, the Board should not attempt to salvage
`
`the Petition’s flawed challenges using the inherency doctrine. As stated by the
`
`Board, “It would be unfair to expect the Patent Owner to conjure up arguments
`
`against its own patent and just as inappropriate for the Board to take the side of the
`
`Petitioner to salvage an inadequately expressed ground.” Liberty Mut. Ins. Co. v.
`
`Progressive Cas. Ins. Co., CBM2012-00003, Paper 8, p. 14 (P.T.A.B. Oct. 25,
`
`2012).
`
`When the Petition advances a position that might be interpreted as an
`
`inherency argument, the Petition does not satisfy the strict requirements of the
`
`inherency doctrine. For example, when mapping Weisskopf (as well as Avitabile
`
`and Estabrook) to the term “storage module” of claim 22, the Petition refers to Dr.
`
`Abidi’s Noise Figure calculations. (Petition, p. 57 referencing Ex. 10046 § 34.) But
`
`nowhere does the Petition or Dr. Abidi argue or provide evidence that Weisskopf
`
`necessarily functions according to Dr. Abidi’s calculations. Thus, not only does
`
`the Petition never articulate an inherency argument, the Petition also never satisfies
`
`
`6 Abidi Declaration is submitted as Ex. 1004.
`
`
`
`
`
`
`- 9 -
`
`

`

`IPR2014-00948
`
`the strict requirements of the inherency doctrine, as discussed in detail in the
`
`sections below.
`
`4.
`
`If trial is instituted, it should be limited to non-cumulative
`grounds
`Grounds A (Estabrook) and C (Weisskopf) are redundant to Ground B
`
`(Avitabile). Claim 2 was already found valid over a close version of Estabrook
`
`(Ground A) and Weisskopf (Ground C) in the Qualcomm litigation (see above as
`
`well as Section III.B). Accordingly, if trial is instituted, Grounds A and C should
`
`be denied as cumulative, taking into account the burden on the Patent Owner and
`
`considerations set forth in 35 U.S.C. § 326(b).
`
`II.
`
`The Petition raises real party-in-interest and privity issues
`ParkerVision sued Qualcomm for infringement of the ’371 patent in 2011
`
`(the Qualcomm Litigation). As a result, Qualcomm is barred from filing an inter
`
`partes review under 37 C.F.R. § 42.101(b). Because the claims in the Qualcomm
`
`litigation (which included claim 2 at issue here) were upheld as valid, Qualcomm
`
`has great motivation to participate or orchestrate the challenge to the ’371 patent in
`
`this proceeding.
`
`Patent Owner has good reason to believe Qualcomm is in fact substantively
`
`involved in the Petition and is therefore a real party-in-interest. The Petition states
`
`only that “Qualcomm is not a current client of RPX Corporation” (Petition, n. 1,
`
`
`
`
`
`
`- 10 -
`
`

`

`IPR2014-00948
`
`emphasis added), which is an admission that Qualcomm is a former client of RPX.
`
`Petitioner RPX and Farmwald carefully chose their words in describing
`
`Qualcomm’s relationship to the Petition, rather than a more straightforward and
`
`definitive statement.
`
`RPX’s business model includes attacking patents in inter partes review
`
`petitions on behalf of its clients. See, e.g., RPX Corp. v. VirnetX, Inc., IPR2014-
`
`00171, Paper 52, pp. 9-10 (P.T.A.B. June 23, 2014) and related exhibits in that
`
`proceeding. The Board recently found that “RPX [was] acting as a proxy” for a
`
`third party when it improperly filed a petition in several IPRs where it was “at
`
`most, ‘a nominal plaintiff’ with ‘no substantial interest’” in the proceedings, and
`
`the third party on whose behalf RPX filed the IPR was time-barred from filing the
`
`petitions itself. Id. By filing inter partes reviews on behalf of other parties without
`
`naming those other parties, RPX clients avoid the estoppel associated with filing
`
`IPRs and may even seek institution of otherwise time-barred IPR proceedings.
`
`It is also noteworthy that Petitioner’s counsel, Mr. James Bailey, has been
`
`and continues to be counsel for Qualcomm in the Qualcomm Litigation. By serving
`
`as counsel for Petitioner, he exerts significant control over this proceeding and
`
`continues to advance Qualcomm’s interests. By sharing Mr. Bailey with Petitioner
`
`in the IPRs, Qualcomm has at least “implicitly authorized RPX to represent
`
`[Qualcomm] in the instant proceedings,” which the Board has found to weigh in
`
`
`
`- 11 -
`
`
`

`

`IPR2014-00948
`
`favor of finding the authorizing party to be an RPI. RPX Corp., IPR2014-00171,
`
`Paper 52 at 8-9.
`
`ParkerVision is not asking the Board at this time for a ruling on the merits of
`
`the RPI and privity issues. ParkerVision has met and conferred with Petitioner to
`
`further investigate the connections between Petitioner and Qualcomm as they
`
`relate to RPI and privity issues. (See Ex. 20037.) And while Petitioner has provided
`
`declarations containing some information regarding the RPI and privity issues, if a
`
`trial is instituted, ParkerVision intends to depose the declarants and to seek further
`
`discovery on these issues so that the merits of these matters can be fairly resolved
`
`after they have been properly aired and briefed.
`
`III. The ’371 Patent
`A.
`Story of the invention of the ’371 Patent
`1.
`ParkerVision and Its History
`
`ParkerVision, headquartered in Jacksonville, Florida, was founded in 1989
`
`by Jeff Parker and David Sorrells. Messrs. Parker and Sorrells first met while
`
`working at Parker Electronics, which was a company founded by Jeff Parker.
`
`Parker Electronics grew into a $100 million company that was eventually acquired
`
`
`7 E-mail of August 13, 2014 from ParkerVision’s counsel to Petitioner’s
`
`counsel is submitted as Ex. 2003
`
`
`
`
`
`
`- 12 -
`
`

`

`IPR2014-00948
`
`by Carrier Air Conditioning. After the sale of Parker Electronics, Mr. Parker and
`
`Mr. Sorrells started a new company, ParkerVision, for a new product that would be
`
`called CameraMan.
`
`Mr. Parker conceived of CameraMan when, after his father passed away, he
`
`found a cache of old home movies. After viewing them, he was saddened that his
`
`father was always behind the camera and never in the picture. Thus, Messrs. Parker
`
`and Sorrells designed CameraMan, a radio-controlled video camera that
`
`automatically tracks a person holding a device (such as a microphone). Using this
`
`technology, the person controlling the camera can also participate in the events
`
`being filmed.
`
`CameraMan was a success. It generated about $100 million in revenue, was
`
`widely adopted, including by ABC World News Tonight and NASA, and won an
`
`Emmy award. CameraMan originally targeted the professional market and carried
`
`a price tag of up to $10,000; but, consistent with his inspiration for inventing it,
`
`Mr. Parker wanted to design a consumer version that would sell for under $300. In
`
`addition to being less expensive, the consumer model also had to be smaller and
`
`consume less power (to run on batteries). Mr. Parker asked Mr. Sorrells to solve
`
`these design challenges, which led to the invention that is the subject of the patents
`
`at issue.
`
`
`
`
`
`
`- 13 -
`
`

`

`IPR2014-00948
`
`ParkerVision’s Invention of Energy Sampling
`2.
`Mr. Sorrells soon discovered that the biggest obstacle to the consumer-
`
`model CameraMan was its radio receiver. Radio signals (called “carrier signals”)
`
`carry information (called “baseband signals”). A receiver strips out the baseband
`
`signals from the carrier signal so that the device to which the receiver is attached
`
`can use the baseband signals (e.g., to control the CameraMan).
`
`Conventional radio receivers were either too large, too inefficient, or lacked
`
`the range needed to make a consumer-model CameraMan feasible. Mr. Sorrells
`
`considered using prior-art “direct-conversion” receivers because they were smaller,
`
`but their performance was unacceptable. A prior-art receiver technology that Mr.
`
`Sorrells investigated was called “voltage sampling.”
`
`Mr. Sorrells liked the simplicity, size, and efficiency of the voltage-sampling
`
`circuit, but it performed poorly in down-conversion circuitry. He decided to study
`
`and experiment with voltage-sampling circuits to determine why they performed so
`
`poorly. Mr. Sorrells and his team created and studied 50 to 100 prototypes.
`
`Mr. Sorrells soon discovered that a widely held belief underlying most
`
`voltage-sampling receivers was wrong. Most conventional voltage-sampling
`
`devices were designed so that brief snapshots of the carrier wave’s voltage were
`
`taken from a holding capacitor. A high impedance load at the output following the
`
`holding capacitor ensured that the voltage sampler was efficient in preventing
`
`
`
`
`
`
`- 14 -
`
`

`

`IPR2014-00948
`
`voltage leakage. Taking more than a brief snapshot of the carrier's voltage and
`
`lowering the load impedance, according to prevailing wisdom, would distort the
`
`incoming carrier wave and destroy the baseband carried by it.
`
`But Mr. Sorrells discovered that the exact opposite was true. Mr. Sorrells
`
`experimented with prototypes that held the switch closed for a longer time, so that
`
`more energy could be transferred into the capacitor. Mr. Sorrells decided that he
`
`would use a switch coupled to a capacitor, but his approach would close the switch
`
`for a much longer interval, use capacitors that accumulate a greater amount of
`
`energy than traditionally used in voltage sampling devices, and implement a low-
`
`impedance load so that more energy would purposely discharge from the
`
`capacitors. He called his new approach “energy sampling.”
`
`Mr. Sorrells and his co-workers built two wireless receivers that were
`
`identical except that one used a conventional voltage sampler, while the other used
`
`his novel energy sampler. The working range of the conventional voltage-sampling
`
`receiver was about ten to twelve feet while the working range of his energy-
`
`sampling receiver was about 300 feet.
`
`ParkerVision realized that its energy sampler would revolutionize wireless
`
`receivers, such as those used in modern communications devices like mobile
`
`phones and wireless routers. Indeed, ParkerVision’s energy sampler outperformed
`
`prior art “voltage samplers” while using less power. Wireless receivers built using
`
`
`
`- 15 -
`
`
`

`

`IPR2014-00948
`
`ParkerVision’s energy samplers would have a greater range and a longer battery
`
`life than other devices.
`
`After successfully testing the early energy-sampling prototypes, Mr.
`
`Sorrells’s team began implementing the idea into products. One of the earliest uses
`
`was for wireless routers. The wireless routers sold by ParkerVision’s competitors
`
`had a range of about 1000-1200 feet, while ParkerVision’s routers had a range of
`
`nearly a mile.
`
` Story of the district court litigation of the ’371 patent
`B.
`During the litigation, Qualcomm ass