Trials@uspto.gov
`571.272.7822
`
` Paper 8
` Filed: December 18, 2014
`
`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
`Patent 6,370,371 B1
`____________
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Intel v. ParkerVision
`IPR2020-01265
`Intel 1033
`
`
`571.272.7822
`
` Paper 8
` Filed: December 18, 2014
`
`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
`Patent 6,370,371 B1
`____________
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Intel v. ParkerVision
`IPR2020-01265
`Intel 1033
`
`
`
`IPR2014-00948
`Patent 6,370,371 B1
`
`I. INTRODUCTION
`On June 12, 2014, Dr. Michael Farmwald and RPX Corporation
`
`(collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an
`inter partes review of claims 2, 22, 23, and 25 of U.S. Patent
`No. 6,370,371 B1 (“the ’371 patent”). On September 24, 2014,
`ParkerVision, Inc. (“Patent Owner”) timely filed a Preliminary Response
`(Paper 7, “Prelim. Resp.”) to the Petition. We have jurisdiction under
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted “unless . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`
`Upon consideration of the Petition and the Preliminary Response, we
`determine that there is a reasonable likelihood that Petitioner would prevail
`with respect to claims 2, 22, 23, and 25 of the ’371 patent. Pursuant to
`35 U.S.C. § 314, we authorize an inter partes review to be instituted as to
`these claims on the grounds set forth below.
`A. Related Proceedings
`The parties represent that the ’371 patent is asserted in ParkerVision,
`
`Inc. v. Qualcomm, Inc., No. 3:11-cv-00719 (M.D. Fla.). Pet. 1; Paper 5, 1.
`B. The ’371 Patent
`The challenged claims of the ’371 patent are directed to frequency
`
`down-conversion using a universal frequency down-conversion (UFD)
`module. Ex. 1003, 4:65–67, 5:15–17, 35:38–52. Figure 1C is depicted
`below:
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`Figure 1C depicts one embodiment of a UFD module. Id. at 1:65–67. In
`this embodiment, the UFD module includes three ports, a control signal, and
`a “universal frequency translation (UFT) module.” Id. at 4:65–5:2, Fig. 1C.
`
`Figure 1B below depicts a UFT module.
`
`Figure 1B is a diagram of a UFT module according to one embodiment of
`the invention. Id. at 1:62–64. In this embodiment, the UFT module includes
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`three ports and “switch 106 controlled by control signal 108.” Id. at 4:49–
`51. “Generally, the UFT module . . . (perhaps in combination with other
`components) operates to generate an output signal from an input signal,
`where the frequency of the output signal differs from the frequency of the
`input signal.” Id. at 4:40–43.
`
`According to the ’371 patent, the UFT module may be used in a broad
`variety of devices, including thermostats, garage door openers, televisions,
`stereos, CD players, tuners, computers, and video games. Id. at 30:3–17.
`C. Illustrative Claims
`Claim 2 is the only independent claim involved in this proceeding.
`Claims 22, 23, and 25 depend, directly or indirectly, from claim 2.
`Independent claim 2 and dependent claim 22 are illustrative of the
`challenged claims and are reproduced below:
`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.
`Ex. 1003, 35:37–52.
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` 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.
`Id. at 36:55–61.
`
`D. The Prior Art
`Petitioner relies on the following prior art references, as well as the
`
`Declaration of Dr. Asad A. Abidi, dated June 7, 2014 (Ex. 1004):
`Polly Estabrook, The direct conversion receiver: Analysis and design
`of the front-end components, 1–396 (1989) (Ph.D. diss., Stanford
`Univ.) (Ex. 1022, “Estabrook”);
`
`Peter A. Weisskopf, Subharmonic Sampling of Microwave Signal
`Processing Requirements, MICROWAVE JOURNAL, 239–40, 242–44,
`246–47 (May 1992) (Ex. 1023, “Weisskopf”); and
`
`G. Avitabile, et al., S-band digital downconverter for radar
`applications based on GaAs MMIC fast sample-and-hold, 143 (6) IEE
`PROC.- CIRCUITS, DEVICES, AND SYST., 337–42 (1996) (Ex. 1024,
`“Avitabile”).
`
`Reference
`Weisskopf
`Estabrook
`Avitabile
`
`E. Alleged Grounds of Unpatentability
`Basis
`Claims challenged
`§102(b) 2, 22, 23, and 25
`§102(b) 2, 22, 23, and 25
`§102(b) 2, 22, and 25
`
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`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, “[a] claim in an unexpired patent shall be
`
`given its broadest reasonable construction in light of the specification of the
`patent in which it appears.” 37 C.F.R. § 42.100(b). In determining the
`broadest reasonable construction, we presume that claim terms carry their
`ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). This presumption may be rebutted when a
`patentee, acting as a lexicographer, sets forth an alternate definition of a
`term in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`1. Energy is . . . integrated using said integrator during said apertures
`Claim 2 requires that energy transferred from the carrier signal is
`
`“integrated using said integrator during said apertures.” Ex. 1003, 35:48–50.
`Petitioner asserts that integrating energy should be construed, as it was in the
`district court proceeding, to mean “accumulating energy.” Pet. 19–20.
`Patent Owner agrees that integrating energy refers to “accumulating
`energy,” but asserts that claim 2 also requires that the integration occur
`“during said apertures of said pulses.” Prelim. Resp. 20–21. According to
`Patent Owner, in the context of claim 2, this means that the energy is
`“accumulated over multiple aperture periods.” Id.
`Petitioner presents evidence that, in down-conversion systems, charge
`may be accumulated during each of the discrete aperture periods, or may be
`accumulated over multiple aperture periods. Pet. 19–20; Ex. 1004, 30
`(noting that when the switch is closed the voltage on the capacitor “will
`evolve with time”). Patent Owner does not explain sufficiently why the
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`phrase “during said apertures of said pulses” as used in claim 2 excludes
`accumulating energy on the capacitor “during” each of the individual
`aperture periods, and we do not discern such a limitation in claim 2. Prelim.
`Resp. 20. Accordingly, applying the broadest reasonable interpretation in
`light of the specification, we conclude that “integrated using said integrator
`during said apertures” includes both accumulating energy during each of the
`individual aperture periods and accumulating energy from multiple aperture
`periods.
`
`Based on the foregoing, we construe “energy is . . . integrated using
`said integrator during said apertures” to mean “energy is . . . accumulated
`using said integrator during said apertures.”
`2. Pulse generator
`Petitioner asserts that the “pulse generator” recited in independent
`
`claim 2 is an “apparatus for generating a control signal of any duration.”
`Pet. 15. In support of this construction, Petitioner notes that the ’371 patent
`describes embodiments in which control signals have apertures that either
`“tend away from zero” or “tend towards zero.” Pet. 15 (citing Ex. 1003,
`8:53–54, 8:58–60). Patent Owner asserts that Petitioner’s proposed
`construction is improper because it would impermissibly read the term
`“pulse” out of the claim and allow for signals of infinite or zero duration.
`Prelim. Resp. 19. According to Patent Owner, a “pulse generator” should be
`construed in accordance with its ordinary and customary meaning, which
`requires no construction. Id. at 18.
`
`In its arguments, Petitioner presents no reasoned justification for
`replacing the term “pulse” with “control signal.” Nor does Petitioner
`explain sufficiently why the duration of the generated pulse should be
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`included in the definition of a “pulse generator.” Accordingly, we construe
`the term “pulse generator” according to its ordinary and customary meaning,
`which is “a device that generates a pulse.” See Ex. 1003, 6:19–23.
`3. The lower frequency signal is generated from the transferred energy
`Petitioner asserts that this phrase recited in independent claim 2
`“refers to generating the down-converted lower frequency signal using the
`transferred energy in some way, which is the plain meaning.” Pet. 20.
`Patent Owner asserts that this phrase should be construed to mean “the lower
`frequency signal is created based on a discharge of the transferred energy
`from the integrator.” Prelim. Resp. 26. In support of this construction,
`Patent Owner points to several embodiments of the ’371 patent that disclose
`discharging a capacitor to generate a lower frequency signal. Id. at 26–27
`(citing Ex. 1003, 5:65–6:7, Fig. 20E).
`
`The district court, presented with nearly identical claim language and
`disclosed embodiments, rejected this argument, concluding that the claims
`were not limited to the “discharge” embodiments described in the
`Specification:
`Likewise, the generating limitation does not describe the
`generating step as being performed by the discharge of a
`storage device. To be sure, the scope of the generating
`limitation embraces ParkerVision’s discharge theory, which is
`described in detail in the patent specifications, but the language
`used is not so restricted. It claims simply “generating . . . from
`the transferred energy.” It is apparent from the briefing and
`patent specifications that a signal could be “generated” from a
`charge held in a capacitor either directly, by discharging the
`capacitor, or indirectly, by measuring the voltage across the
`capacitor. The language used in the generating claim limitation
`does not distinguish between these two techniques.
`Ex. 1017, 6.
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`Patent Owner asserts that the district court’s comments “regarding
`
`‘generating’ in claim 1 of the ’551 patent have little relevance here because
`that claim, unlike claim 2 of the ’371 patent, does not recite all three terms
`‘generated,’ ‘transferred,’ and ‘integrated.’” Prelim. Resp. 26, n.11 (citing
`Aventis Pharm. v. Amino Chems. Ltd., 715 F.3d 1363, 1374 (Fed. Cir.
`2013)). Patent Owner does not explain sufficiently, however, why the
`combination of “generated,” “transferred,” and “integrated” in claim 2
`requires “discharging” the integrator, nor do we discern such a requirement
`in the language of claim 2. In the absence of such limiting claim language,
`or a clear definition or disavowal of claim scope in the specification, we
`decline to limit the claims to the “discharge” embodiments identified by
`Patent Owner. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
`870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may
`be aided by explanations contained in the written description, it is important
`not to import into a claim limitations that are not part of the claim.”).
`
`Based on the foregoing, we conclude that the phrase “the lower
`frequency signal is generated from the transferred energy” means “using the
`transferred energy to generate the lower frequency signal.”
`4. Storage module
`The term “storage module” is not found in the ’371 patent
`
`Specification outside of dependent claim 22 and claims that depend
`therefrom. The parties, therefore, look to the use of this phrase in U.S.
`Patent No. 6,061,551 (“the ’551 patent”), which is incorporated by reference
`in its entirety in the ’371 patent. Ex. 1003, 1:12–18; Pet. 29–30; Prelim.
`Resp. 21–26, 47.
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`Both parties agree that “storage module” is defined in the ’551 patent
`
`as a system that stores “non-negligible amounts of energy from an input EM
`signal,” but disagree on the definition of “non-negligible amounts of
`energy.” Pet. 29–30 (citing Ex. 1001, 66:65–67); Prelim. Resp. 21, 47.
`Petitioner contends that “non-negligible amounts of energy” exist when a
`“non-negligible” sampling aperture is used, whereas Patent Owner contends
`that “non-negligible amounts of energy” are present when the signal is
`“distinguishable from noise.” Pet. 29–30; Prelim. Resp. 21, 47.
`
`Petitioner and Patent Owner rely upon essentially the same arguments
`for their constructions of “non-negligible amounts of energy” as those set
`forth in IPR2014-00947. For the reasons explained in our Decision to
`Institute in IPR2014-00947, we decline to adopt Patent Owner or
`Petitioner’s proposed constructions. We adopt, instead, the ordinary and
`customary meaning of “non-negligible amounts of energy” as used in the
`’551 patent Specification, which is: “amounts of energy that are not minor,
`unimportant, or inconsequential.” See In re Translogic, 504 F.3d at 1257.
`B. Weisskopf
`Petitioner contends that claims 2, 22, 23, and 25 of the ’371 patent are
`
`anticipated under 35 U.S.C. § 102(b) by Weisskopf. Pet. 51–58. Weisskopf
`is directed to a method for down-converting microwave and mm-wave
`carrier signals to intermediate signals using subharmonic sampling.
`Ex. 1023, 239.1 Figure 2 of Weisskopf is depicted below:
`
`
`1 Weisskopf contains two different page numbers. Our citations are to the
`original page numbers of the published document.
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`Figure 2 of Weisskopf depicts an ideal sub-harmonic sample-and-hold
`system. The “source” is the microwave signal to be sampled, Rs is the
`source impedance, Rl is the load impedance, and Ch identifies the hold
`capacitor. Id. at 240.
`
`In the Weisskopf device, a pulse is generated to signal the gate, or
`switch, to open and close, thereby creating a “sampling aperture.” Id.
`During this sampling aperture, “the source signal is applied to the hold
`capacitor Ch via the gate.” Id. Weisskopf discloses that maximum energy
`will be transferred from the input signal “to the hold capacitor when the
`sampling aperture is one-half the period of the frequency of the . . . sampled
`carrier.” Id. at 243. According to Weisskopf, the disclosed device down
`converts the input signal “with great efficiency and without loss of fidelity,”
`with “most” of the sampled energy being converted to the baseband spectral
`replica. Id. at 240, 243.
`
`1. Claim 2
`Petitioner asserts that Weisskopf discloses each element of claim 2,
`
`including: a switch, a pulse generator coupled to the switch, and “an
`integrator (in the form of a capacitor) coupled to the switch.” Pet. 52–54.
`Petitioner further asserts that Weisskopf discloses the steps of sub-sampling
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`a carrier signal at an aliasing rate, integrating the transferred energy in the
`capacitor “over multiple samples,” and generating a lower frequency signal
`from the transferred energy. Id.
`
`Patent Owner asserts that Weisskopf does not anticipate claim 2
`because, although Petitioner provides evidence that energy is integrated in
`Weisskopf during “the timespan of the aperture,” Petitioner does not provide
`evidence that Weisskopf discloses integrating, or accumulating, “energy
`over multiple aperture periods.” Prelim. Resp. 45–46. We are not
`persuaded by this argument because it is premised on a claim construction
`that we did not adopt, i.e., requiring the integration of energy acquired over
`multiple aperture periods.
`
`Upon review of Weisskopf, as well as Petitioner’s and Patent Owner’s
`arguments, we are persuaded that Petitioner has presented sufficient
`evidence to demonstrate that there is a reasonable likelihood that claim 2 is
`anticipated under 35 U.S.C. § 102(b) by Weisskopf.
`2. Claim 22
`Claim 22 requires, in relevant part, a “storage module.” Ex. 1003,
`
`36:54–61. As noted above, the parties agree that a “storage module” stores
`“non-negligible” amounts of energy. Prelim. Resp. 47; Pet. 29–30.
`Petitioner asserts that the required “storage module” is disclosed in
`Weisskopf because the aperture and capacitor in Weisskopf are chosen to
`“maximize energy transfer,” thereby ensuring that “non-negligible amounts
`of energy” are transferred to the capacitor. Pet. 56–57.
`
`Patent Owner argues that “maximizing” energy does not disclose
`anything, as the maximized energy could be zero. Prelim. Resp. 48. We are
`not persuaded by this argument because it ignores Weisskopf’s disclosure of
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`sampling 18.5 GHz signals (non-zero energy), maximizing stored kinetic
`energy in the capacitor, and transferring “most” of this sampled energy to
`the spectral replica. See, e.g., Ex. 1023, 240, Fig. 3; see also EWP Corp. v.
`Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (“A reference
`must be considered for everything it teaches by way of technology and is not
`limited to the particular invention it is describing and attempting to
`protect.”). In short, Weisskopf’s examples and disclosures are not directed
`to zero energy applications.
`
`Patent Owner further asserts that Weisskopf’s disclosure of
`maximizing the transferred energy is not persuasive because Weisskopf
`discloses maximizing “kinetic energy,” quantified by the equation q2/Ch,
`while Dr. Abidi uses the equation ½ q2(t)/C to refer to the energy stored in
`the capacitor at a time (t). Prelim. Resp. 48. According to Patent Owner,
`because the two equations differ by a factor of two, Petitioner’s entire
`argument is called into question. Id. We are not persuaded by this argument
`because, although the two equations diverge by a factor of two, conditions
`that maximize X also maximize ½X. Thus, regardless of which equation is
`used, Weisskopf discloses maximizing the energy stored in the capacitor.
`
`Based on the foregoing, we are persuaded that a circuit that
`maximizes the energy transferred from a microwave EM signal to a
`capacitor, and converts “most” of the transferred energy to the spectral
`replica “without loss of fidelity,” transfers “non-negligible amounts of
`energy,” i.e., amounts that are not minor, unimportant, or inconsequential.
`We are persuaded, therefore, that Petitioner has presented sufficient
`evidence to demonstrate that there is a reasonable likelihood that claim 22 is
`anticipated under 35 U.S.C. § 102(b) by Weisskopf.
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`3. Claim 23
`Claim 23 requires “an input impedance match circuit coupled to an
`
`input of said each of said at least one universal frequency down-conversion
`module.” Ex. 1003, 36:62–67. Petitioner asserts that Weisskopf anticipates
`claim 23 through its disclosure of using a “matching” LC network,
`composed of capacitor Cm and inductors Lm and Lp, to match “the 50 ohm
`source impedance to the 10 ohm gate impedance.” Pet. 57 (citing Ex. 1023,
`242). Patent Owner does not address Petitioner’s argument in the
`Preliminary Response. See Prelim. Resp. 48–49.
`
`Upon review of Weisskopf and Petitioner’s arguments, we are
`persuaded that Petitioner has presented sufficient evidence to demonstrate
`that there is a reasonable likelihood that claim 23 is anticipated under
`35 U.S.C. § 102(b) by Weisskopf.
`4. Claim 25
`Claim 25 requires “wherein the switch module is coupled between an
`input of said each of said at least one universal frequency down-conversion
`module and said storage module.” Ex. 1003, 37:7–10. Petitioner asserts that
`Figures 2 and 4 of Weisskopf both disclose the required “switch module” of
`claim 25. Patent Owner does not address claim 25 with respect to
`Weisskopf.
`
`Upon review of Weisskopf and Petitioner’s arguments, we are
`persuaded that Petitioner has presented sufficient evidence to demonstrate a
`reasonable likelihood that claim 25 is anticipated under 35 U.S.C. § 102(b)
`by Weisskopf.
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`5. Conclusion
`Upon review of Weisskopf, as well as Petitioner’s and Patent Owner’s
`arguments, we are persuaded that Petitioner has presented sufficient
`evidence to demonstrate a reasonable likelihood that claims 2, 22, 23, and 25
`are anticipated under 35 U.S.C. § 102(b) by Weisskopf.
`C. Avitabile
`Petitioner contends that claims 2, 22, and 25 of the ’371 patent are
`
`anticipated under 35 U.S.C. § 102(b) by Avitabile. Pet. 47–51. Avitabile is
`directed to a “digital coherent-downconverter configuration” that is “based
`on the theory of subharmonic sampling for narrowband waveforms.”
`Ex. 1024, 337. In at least one embodiment, Avitabile utilizes a pulse
`generator, a switch, and a hold capacitor to down-convert an input signal to
`baseband. Id. at 337–38.
`
`In the apparatus of Avitabile, the “switch is turned on for a very short
`time interval ton whose duration is inversely proportional to the RF
`bandwidth.” Id. at 338. Using this short time interval, “only a fraction” of
`the input signal is stored on the hold capacitor, “resulting in a sampler
`efficiency which can be of the order of 10% at microwave frequencies.” Id.
`at 338–39.
`
`1. Claim 2
`Petitioner asserts that Avitabile discloses a universal frequency down-
`
`converter having “a switch, an integrator (in the form of a capacitor) coupled
`to said switch, and a pulse generator coupled to said switch.” Pet. 47.
`Petitioner further asserts that Avitabile discloses that the pulse generator
`delivers pulses to the switch at an aliasing rate, that energy is transferred
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`from the carrier signal to an integrator, and that a lower frequency signal is
`generated from this transferred energy. Id. at 48–49.
`
`Patent Owner argues that Avitabile does not anticipate claim 2
`because it does not disclose: (1) accumulating, or integrating, the energy
`from the input signal “over multiple aperture periods” and (2) generating the
`lower frequency signal by discharging energy from the integrator. Prelim.
`Resp. 39. We are not persuaded by these arguments because they are
`premised on claim constructions that we did not adopt.
`
`Upon review of Avitabile, as well as Petitioner’s and Patent Owner’s
`arguments, we are persuaded that Petitioner has presented sufficient
`evidence to demonstrate a reasonable likelihood that Avitabile anticipates
`claim 2 under 35 U.S.C. § 102(b).
`2. Claim 22
`Claim 22 requires, in relevant part, a “storage module.” Ex. 1003,
`
`36:54–61. As noted previously, the parties agree that a “storage module”
`refers to a system that stores “non-negligible amounts of energy from an
`input EM signal,” but disagree as to how this level of energy is to be
`identified or defined. Pet. 29; Prelim. Resp. 21.
`
`Petitioner asserts that Avitabile discloses “non-negligible amounts of
`energy” because the Avitabile system: (1) utilizes non-negligible apertures;
`(2) works for its intended purpose; and (3) exhibits a Noise Figure that is the
`same or better than embodiments in the ’551 patent Specification. Pet. 50–
`51. Patent Owner contends Petitioner’s arguments and evidence do not
`establish that “non-negligible amounts of energy” are transferred in the
`Avitabile system. Prelim. Resp. 42–44.
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`Upon review of Petitioner’s arguments and evidence, we agree with
`
`Patent Owner that Petitioner has presented insufficient evidence or argument
`to show that the amount of energy transferred in Avitabile is not minor,
`unimportant, or inconsequential. Pet. 38, 50–51. First, Petitioner’s
`arguments and evidence are directed to claim constructions that we did not
`adopt. Second, unlike its analysis of Weisskopf, Petitioner presents no
`credible evidence that Avitabile transfers amounts of energy from the input
`signal that are not minor or inconsequential. For example, Petitioner does
`not explain why one of ordinary skill in the art would conclude that the 10%
`sampling efficiency of Avitabile would result in amounts of energy that are
`large or consequential. See Ex. 1024, 338–39 (noting that the sampler
`efficiency “can be of the order of 10% at microwave frequencies”).
`Therefore, on this record we are not persuaded that Petitioner has set forth
`sufficient argument or evidence to demonstrate a reasonable likelihood that
`Avitabile discloses a “storage module,” or anticipates claim 22.
`
`3. Claim 25
`Claim 25 depends from claim 22 and, therefore, also requires a
`“storage module.” For the reasons set forth above, we are not persuaded that
`Petitioner has demonstrated a reasonable likelihood that Avitabile
`anticipates claim 25.
`
`4. Conclusion
`Upon review of Avitabile, as well as Petitioner’s and Patent Owner’s
`arguments, we are persuaded that Petitioner has demonstrated a reasonable
`likelihood that claim 2 is anticipated under 35 U.S.C. § 102(b) by Avitabile.
`We are not persuaded that Petitioner has demonstrated a reasonable
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`Patent 6,370,371 B1
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`likelihood that claims 22 and 25 are anticipated under 35 U.S.C. § 102(b) by
`Avitabile.
`
`D. Estabrook
`Petitioner contends that claims 2, 22, 23, and 25 are anticipated under
`
`35 U.S.C. § 102(b) by Estabrook. Pet. 40–47. Estabrook is directed to the
`design and analysis of a direct conversion receiver. Ex. 1022, 1.2
`Figure 14(a) of Estabrook is reproduced below.
`
`Figure 14(a) discloses the circuit diagram for the mixer of Estabrook. Id. at
`37. According to Petitioner, “IRF” designates the RF input signal and
`“ILO” designates a local oscillator that provides a control signal to the
`diode. Pet. 41–43, 45–46. A capacitive storage device (“output capacitor”)
`is designated CLD, a source impedance RS, and a load impedance RL.
`Ex. 1022, 34.
`
`1. Claim 2
`Among other elements, claim 2 requires a “pulse generator” that
`
`causes a switch to close and sub-sample a carrier signal. Ex. 1003, 35:40–
`48. Petitioner asserts that Estabrook discloses “a pulse generator” that
`
`
`2 Estabrook contains two different page numbers. Our citations are to the
`original page numbers of the published document located in the top, right-
`hand corner of each page.
`
`18
`
`
`
`IPR2014-00948
`Patent 6,370,371 B1
`
`outputs a “periodically varying waveform at the LO frequency,” which
`drives a switch “between zero and infinite resistance.” Pet. 42. Likewise,
`Dr. Abidi testifies that the “large sinusoidal current” of Estabrook “acts as a
`pulse generator.” See Ex. 1004, 34. Neither Petitioner nor Dr. Abidi
`explains, however, why a periodically varying waveform would be
`considered a “pulse” by one of ordinary skill in the art. Moreover, it is
`unclear from Dr. Abidi’s testimony whether the “large sinusoidal current” of
`Estabrook is a pulse, or merely acts like one.
`
`Petitioner bears the burden to establish that each element of the
`challenged claims is disclosed, either expressly or inherently, in the recited
`prior art reference. 37 C.F.R. § 42.20(c). On this record, Petitioner has set
`forth insufficient argument and evidence to carry its burden to show that
`Estabrook discloses the “pulse generator” of claim 2. Accordingly, we are
`not persuaded that Petitioner has demonstrated a reasonable likelihood that
`claim 2 is anticipated under 35 U.S.C. § 102(b) by Estabrook.
`2. Claims 22, 23, and 25
`Claims 22, 23, and 25 depend, directly or indirectly, from claim 2.
`
`Each of these claims, therefore, requires a “pulse generator.” See Alcon
`Research, Ltd. v. Apotex, Inc., 687 F.3d 1362, 1367 (Fed. Cir. 2012) (“It is
`axiomatic that a dependent claim cannot be broader than the claim from
`which it depends . . . and ‘must incorporate . . . all the limitations of the
`claim to which it refers.’” (citing 35 U.S.C. § 112 ¶ 4)). Thus, for the
`reasons set forth above, we are not persuaded that Petitioner has
`demonstrated a reasonable likelihood that claims 22, 23, and 25 are
`anticipated under 35 U.S.C. § 102(b) by Estabrook.
`
`19
`
`
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`IPR2014-00948
`Patent 6,370,371 B1
`
`III. CONCLUSION
`For the reasons stated above, we institute an inter partes review as set
`
`forth in the Order. At this stage of the proceeding, we have not made a final
`determination with respect to the patentability of the challenged claims or
`any underlying factual or legal issues.
`IV. ORDER
`For the forgoing reasons, it is
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review of
`
`the ’371 patent is hereby instituted on the following grounds:
`
`Claims 2, 22, 23, and 25 as anticipated under 35 U.S.C. § 102(b) by
`Weisskopf; and
`
`Claim 2 as anticipated under 35 U.S.C. § 102(b) by Avitabile;
`
`FURTHER ORDERED that the trial is limited to the grounds
`identified above and no other grounds are authorized; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’371 patent is hereby instituted commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of trial.
`
`
`
`20
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`
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`IPR2014-00948
`Patent 6,370,371 B1
`
`For PETITIONER:
`Todd Baker
`CPDocketBaker@oblon.com
`
`James Bailey
`jtb@jtbaileylaw.com
`
`For PATENT OWNER:
`Robert Greene Sterne
`rsterne-PTAB@skgf.com
`
`Michael Q. Lee
`mlee-PTAB@skgf.com
`
`Jason E. Stach
`jason.stach@finnegan.com
`
`Rick D. Nydegger
`rnydegger@wnlaw.com
`
`21
`
`
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