Petitioner’s Reply to Patent Owner’s Response
`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`Intel Corporation
`Petitioner
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`v.
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`ParkerVision, Inc.
`Patent Owner
`___________________________________________
`
`Case No. IPR2020-01265
`U.S. Patent No. 7,110,444
`____________________________________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`Intel Corporation
`Petitioner
`
`v.
`
`ParkerVision, Inc.
`Patent Owner
`___________________________________________
`
`Case No. IPR2020-01265
`U.S. Patent No. 7,110,444
`____________________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`TABLE OF CONTENTS
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`
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`I.
`II.
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`III.
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`INTRODUCTION ........................................................................................... 1
`PO’S CHARACTERIZATION OF THE PURPORTED INVENTION
`IS WRONG ...................................................................................................... 4
`PO’S ATTEMPT TO LIMIT “STORAGE ELEMENT” TO AN
`ELEMENT “OF AN ENERGY TRANSFER SYSTEM” AND ITS
`OTHER CLAIM CONSTRUCTION ARGUMENTS SHOULD BE
`REJECTED ...................................................................................................... 9
`A.
`PO’s Proposed “Storage Element” Construction Should Be
`Rejected ............................................................................................... 10
`PO’s Remaining Claim Construction Arguments Are Irrelevant
`And Wrong .......................................................................................... 16
`IV. CLAIM 3 IS UNPATENTABLE UNDER EITHER INTEL’S OR
`PO’S CONSTRUCTION OF “STORAGE ELEMENT” .............................. 18
`A.
`Claim 3 Is Unpatentable Under The Correct Construction Of
`“Storage Element” ............................................................................... 18
`Claim 3 Is Also Unpatentable Under PO’s Proposed
`Construction Of “Storage Element” .................................................... 20
`PO’S ARGUMENTS REGARDING ALLEGED SECONDARY
`CONSIDERATIONS OF NON-OBVIOUSNESS ARE IMPROPER
`AND UNSUPPORTED ................................................................................. 27
`A.
`PO’s Argument Is Improper ................................................................ 28
`B.
`PO’S Argument Also Lacks Merit ...................................................... 28
`VI. CONCLUSION .............................................................................................. 30
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`
`
`B.
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`B.
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`V.
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`i
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`I.
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`INTRODUCTION
`In its Patent Owner’s Response (“POR”), Patent Owner (“PO”) does not
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`dispute most of Intel’s arguments demonstrating that claims 1, 3, and 5 are
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`unpatentable:
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` PO concedes that claims 1 and 5 are unpatentable and intends to disclaim them
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`(POR, 1 n.1.);
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` For claim 3, PO does not dispute that the prior art teaches all limitations except
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`one: “storage element”; and
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` PO does not dispute that a person of ordinary skill in the art (“POSITA”)
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`would have been motivated to combine the teachings of the cited references—
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`Tayloe and TI Datasheet (Ground 1) and Tayloe and Kawada (Ground 2).
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`Accordingly, PO’s only validity argument is that the prior art does not teach
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`the claimed “storage element,” and PO makes this argument only under PO’s
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`proposed construction. (PO does not dispute that claim 3 is unpatentable under
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`Intel’s proposed construction.) PO’s sole validity argument is wrong and does not
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`save claim 3.
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`
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`First, PO’s argument is premised on a fundamental mischaracterization of its
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`claimed invention. PO argues that its patent discloses two “different and competing”
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`down-conversion systems—(1) a “voltage sampling” or “sample and hold” system,
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`on the one hand, and (2) an “energy sampling” or “energy transfer” system, on the
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`other (POR, 1-2, 19-23)—and asserts its claimed invention is directed only to the
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`latter system. But, the patent never makes this distinction.
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`Neither the phrase “energy sampling” nor “voltage sampling” is ever used in
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`the patent. Instead, the patent describes a specific way of performing down-
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`conversion—down-converting with a particular method of sampling called
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`“aliasing.” It states that there are two distinct ways to down-convert by “aliasing”:
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`“under-sampling” and “transferring energy.” (Ex. 2007-’551, Fig. 45A.) Fig. 45A
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`shows these two different methods as subsets of “aliasing.”
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`(Ex. 2007-’551, Fig. 45A, 2:53-65, 66:34-39.) 1 These two aliasing/sampling
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`methods are distinguished based on the control signal’s aperture width. (Ex. 2007-
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`’551, 66:36-39 (“Unlike under-sampling signals that have negligible aperture
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`pulses, the energy transfer signal includes a train of pulses having non-negligible
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`apertures that tend away from zero.”).) PO’s attempt to redefine the invention in
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`terms of “voltage sampling” and “energy sampling” lacks support in the patent.
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`Second, and relatedly, PO’s proposed construction narrowing the claimed
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`“storage element” limitation—the only limitation PO contends is not shown in the
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`art—should be rejected. PO argues that the storage element should be construed to
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`be an element “of an energy transfer system.” (POR, 46-50.) PO then argues that
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`an “energy transfer system” is limited to, among other things, a system having a
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`“low impedance load,” and, based on that theory, PO asserts that the prior art does
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`not disclose a “storage element.” PO’s construction is inconsistent with the patents’
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`definition of the term. The patent specifically defines “storage element” as an
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`element that stores non-negligible amounts of energy. (Ex. 2007-’551, 66:65-67.)
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`It is never limited to an element of an energy transfer system (much less an element
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`1 USP 6,061,551 (“’551 patent”) is incorporated by reference into the ’444 patent.
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`(POR, 30-31.) All annotations and emphases added, unless otherwise noted.
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`in a system driving a low-impedance load).
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`Third, even under PO’s (incorrect) construction of “storage element,” claim
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`3 is unpatentable. The patent describes the “energy transfer” embodiment as a
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`system using a control signal with a non-negligible aperture width. Tayloe discloses
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`such a control signal. Indeed, Tayloe discloses the claimed “storage element” even
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`under PO’s proposed narrow construction requiring a low impedance load.
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`***
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`With neither the facts nor the law on its side, PO resorts to improper
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`mudslinging. The POR is replete with unfounded allegations of “gamesmanship,”
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`“purposeful[] omi[ssions],” “attempts to conceal,” and “tak[ing] inconsistent
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`position[s].” (E.g., POR, 1-2, 50, 52.) None of those allegations withstands scrutiny,
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`as discussed in detail below, and none refutes the fact that the prior art discloses the
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`disputed “storage element” limitation and every other claim limitation.
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`II.
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`PO’S CHARACTERIZATION OF THE PURPORTED INVENTION IS
`WRONG
`PO’s only patentability argument for claim 3 rests on its incorrect
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`characterization of the patent’s purported invention. PO asserts that the ’444 patent
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`distinguishes between two “different and competing” down-conversion methods:
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`what PO describes as (1) “voltage sampling”/“sample and hold” and (2) “energy
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`sampling”/“energy transfer.” (POR, 1.) PO contends that its invention relates only
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`to “energy sampling”/“energy transfer” and that this supposed distinction is
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`“critical” to understanding the ’444 patent. (Id.) PO uses this characterization to
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`attempt to distinguish Tayloe because Tayloe allegedly is a “voltage sampling
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`system” and therefore purportedly does not include various features that PO alleges
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`are required for an “energy sampling system.” But this is not how the patent
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`describes the claimed invention.
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`Instead of distinguishing between “energy sampling” vs. “voltage sampling,”
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`the patent describes the alleged invention as down-converting an electromagnetic
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`signal by sampling at an aliasing rate. (Ex. 2007-’551, 19:51-57.) Specifically, the
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`’551 patent (incorporated by reference into the ‘444 patent) states in the “Summary
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`of the Invention” that “the present invention” is directed to down-converting an
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`electromagnetic (EM) signal by “aliasing” the signal at an “aliasing rate”:
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`SUMMARY OF THE INVENTION
`Briefly stated, the present invention is directed to methods, systems,
`and apparatuses for down-converting an electromagnetic (EM) signal
`by aliasing the EM signal, and applications thereof. Generally, the
`invention operates by receiving an EM signal. The invention also
`receives an aliasing signal having an aliasing rate. The invention
`aliases the EM signal according to the aliasing signal to down-
`convert the EM signal. The term aliasing, as used herein and as
`covered by the invention refers to both down-converting an EM signal
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`by under-sampling the EM signal at an aliasing rate, and down-
`converting an EM signal by transferring energy from the EM signal at
`the aliasing rate.
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`(Id., 2:53-65.) Thus, the specification explains that “the invention” operates by
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`receiving an electromagnetic (EM) signal and a control signal “having an aliasing
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`rate,” and that “[t]he invention aliases the EM signal according to the aliasing
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`signal to down-convert the EM signal.” (Id., 2:57-60.)
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`The patent then states that the “aliasing”—“as covered by the invention”—
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`refers to the down-conversion embodiments disclosed in the patents: (1) down-
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`conversion by under-sampling “at an aliasing rate,” and (2) down-conversion by
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`energy transfer “at the aliasing rate.” (Id., 2:60-65, 20:7-11, 21:4-7.)
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`The specification’s overall structure highlights that the two modes of the
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`alleged invention are “under-sampling” and “energy transfer.” For example, the
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`“Overview of the Invention” section is expressly organized around these two
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`concepts:
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`(Id., 9:1-21; see also id. at 20:63-21:2.) The specification reinforces this
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`understanding of the claimed invention with a Venn diagram illustrating “under-
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`sampling” and “transferring energy” as types of “aliasing:”
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`(Id., Fig. 45A.)
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`PO itself confirmed this understanding to the PTAB in an earlier IPR
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`proceeding stating that its patents describe “two sampling mechanisms: (1) under-
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`sampling; and (2) energy transfer.” (Ex. 1031, 17.)
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`Nonetheless, PO now argues that the alleged invention distinguishes between
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`“energy sampling” and “voltage sampling.” Yet, the term “energy sampling” and
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`“voltage sampling” appear nowhere in the patent. Nor does the patent refer to any
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`sample of “energy.” For example, it never refers to a sample measured units of
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`energy, such as “joules.” In fact, as exemplified in Figures 83E-83F of the ’551
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`patent below, the down-converted waveforms for all embodiments—including those
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`that PV identifies as “energy transfer” embodiments—show samples measured in
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`units of voltage (“millivolts” or “mV”). (Ex. 2007-’551, Figs. 83E-83F.)
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`PO’s attempt to avoid the prior art by redefining its purported invention should
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`be rejected—the claimed invention should be understood based on how the PO
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`described it in its patent. Honeywell Props. Int’l, Inc. v. ITT Indus., 452 F.3d 1312,
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`1318 (Fed. Cir. 2006) (“The public is entitled to take the patentee at his word”).
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`III. PO’S ATTEMPT TO LIMIT “STORAGE ELEMENT” TO AN
`ELEMENT “OF AN ENERGY TRANSFER SYSTEM” AND ITS
`OTHER CLAIM CONSTRUCTION ARGUMENTS SHOULD BE
`REJECTED
`PO’s sole validity argument turns on its proposed construction of “storage
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`element” to be “an element of an energy transfer system that stores nonnegligible
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`amounts of energy from an input electromagnetic signal.” (See POR, 45.) PO’s
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`attempt to limit the term to an element “of an energy transfer system” finds no
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`support in the intrinsic record and should be rejected. With respect to PO’s proposed
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`constructions for three other terms (POR, 45, 50-53), neither PO nor Intel contends
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`that any these terms affects the outcome of this IPR, and no construction of these
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`terms is therefore necessary.
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`A.
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`PO’s Proposed “Storage Element” Construction Should Be
`Rejected
`Intel’s Proposed Construction
`“an element that stores a nonnegligible
`amount of energy from an input
`electromagnetic (EM) signal”
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`PO’s Proposed Construction
`“an element of an energy transfer
`system that stores nonnegligible
`amounts of energy from an input
`electromagnetic signal”
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`1.
`Intel’s Proposed Construction
`Intel’s proposed construction expressly tracks the patent’s definition of
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`“storage element.” The specification states unequivocally that: “Storage
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`modules…refer to systems that store non-negligible amounts of energy from an
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`input EM signal.” (Ex. 2007-’551, 66:65-67.)2 The specification further states that
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`the “goal of the storage modules” is “to store non-negligible amounts of energy
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`transferred from the EM signal.” (Id., 100:4-6.) It specifically distinguishes storage
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`2 The ’551 patent uses the term “storage module,” whereas challenged claim 3 uses
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`“storage element.” As PO appears to admit (e.g., POR, 46), “storage module” and
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`“storage element” are synonymous.
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`elements from holding elements on this basis:
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`Holding modules…identify systems that store negligible amounts of
`energy from an under-sampled input EM signal with the intent of
`“holding” a voltage value. Storage modules…on the other hand, refer
`to systems that store non-negligible amounts of energy from an input
`EM signal.
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`(Ex. 2007-’551, 66:59-67.) The term “storage element” should be construed
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`accordingly. Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1380
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`(Fed. Cir. 2009) (“When a patentee explicitly defines a claim term in the patent
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`specification, the patentee’s definition controls.”).
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`Indeed, PO fails to tell the Board that it previously argued for, and the Board
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`relied upon, a construction of “storage module” nearly identical to the one Intel
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`proposes here. In IPR2014-00948, PO attempted to defend the validity of its USP
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`6,370,371 (“’371 patent”) by pointing—as PO does here—to the ’551 patent, which
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`is incorporated into both the ’371 and ’444 patents. Consistent with Intel’s proposed
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`construction here, PO argued that “a storage module” should be construed to mean
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`“an apparatus that stores non-negligible amounts of energy from the carrier signal.”
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`(Ex. 1032-IPR2014-00948 POPR, 37.) In fact, PO argued that the patent “explicitly
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`defines a storage module” in this manner. Id., 21. When the Board instituted
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`review, it expressly relied upon PO’s statements. (Ex. 1033-ID, 10 (“Both parties
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`agree that ‘storage module’ is…a system that stores ‘non-negligible amounts of
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`energy from an input EM signal.’” (citing Petition and POPR)).
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`2.
`PO’s Proposed Construction
`PO agrees that a “storage element” “stores nonnegligible amounts of energy
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`from an input electromagnetic signal,” but proposes to modify the patent’s definition
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`by also requiring the “storage element” to be part of “an energy transfer system.”
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`(POR, 45.) PO then interprets this proposed construction as requiring a further
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`limitation—the system must have a low-impedance load. (POR, 32, 46-50.) PO’s
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`proposed construction should be rejected.
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`First, as PO admitted previously, the patent “explicitly defines” this term (Ex.
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`1032-IPR2014-00948 POPR, 21) but PO’s proposed addition—“of an energy
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`transfer system”—appears nowhere in the patent’s definition. (Supra §III(A)(1).)
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`PO’s proposal should be rejected for this reason alone. See Martek, 579 F.3d at
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`1380.
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`Second, as explained above, PO’s rationale for its construction—the supposed
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`distinction between “energy sampling” and “voltage sampling”—is not grounded in
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`the patent. (Supra §II.)
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`Third, PO’s reliance on the statement from the ’551 patent describing an
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`energy transfer system that “includes…a storage module” (POR, 47-48) is
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`misplaced. This portion of the specification does not define a storage module as part
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`of an energy transfer system but rather merely discloses an embodiment of “an
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`exemplary energy transfer system” (Ex. 2007-’551, 66:55): “The energy transfer
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`system 8202 includes a switching module 8206 and a storage module illustrated as
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`a storage capacitance 8208.” (Id., 66:56-67.) Moreover, the rest of the passage
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`directly supports Intel’s proposed construction: “Storage modules…refer to
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`systems that store non-negligible amounts of energy from an input EM signal.”3 (Id.)
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`3.
`PO’s accusations of “gamesmanship” are unfounded
`Finally, PO wrongly accuses Intel of “gamesmanship” with respect to the
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`proper construction of “storage element” because Intel did not propose construing
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`the term in its Petition. (POR, 50.) PO’s allegations are without merit.
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`PO and Intel first identified terms for construction in the district court
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`litigation in September 2020, months after Intel filed its Petition; and neither PO nor
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`3 Figures 68G and 82B—cited by PO (POR, 48-49)— show a “storage module” or
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`“storage capacitance” in an “energy transfer” embodiment, but neither figure
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`defines a storage module as an element of an “energy transfer system”—any more
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`than they suggest that a switch or resistor (also shown) should be defined as such
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`an element.
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`Intel proposed construing “storage element” in the ’444 patent at that time. (Ex.
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`1034; Ex. 1035.) Specifically, on September 25, 2020, PO informed Intel that it
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`would propose construing “energy storage element” in a related patent. (Ex. 1034.)
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`In response, Intel indicated it would seek construction of “storage element” in the
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`’444 patent, because the related “energy storage element” term was already—at PO’s
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`request—being construed. (Ex. 1036.) The parties exchanged constructions in
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`October 2020, and only then did Intel learn of the parties’ dispute. Thereafter, Intel
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`(not PO) informed the Board of the proposed constructions in the litigation. (Paper-
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`7.) And Intel (not PO) promptly informed the Board of the district court’s order
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`construing “storage element.” (Paper-12.)
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`PO’s “gamesmanship” allegations are particularly unfounded given PO’s
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`conduct. First, PO accuses Intel of taking “inconsistent position[s]” (e.g., POR, 52),
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`yet PO itself previously proposed in other IPR proceedings the same construction
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`that Intel proposed in the district court and proposes here. (Ex. 1033-ID, 10 (“Both
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`parties agree that ‘storage module’ is…a system that stores ‘non-negligible amounts
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`of energy from an input EM signal.’”).) PO cited the same disclosure from the ’551
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`patent as Intel cites here and stated that “[t]he incorporated ’551 specification
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`explicitly defines a storage module.” (Ex. 1032-IPR2014-00948 POPR, 21.) PO
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`failed to alert the Board of this prior position.
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`Second, PO makes much of the fact that the district court did not adopt Intel’s
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`“storage element” construction (POR, 45-46), but PO fails to disclose that the district
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`court rejected a portion of PO’s proposed construction too. At the district court, PO
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`argued that “storage element” should be construed as “an element of an energy
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`transfer system that stores non-negligible amounts of energy from an input
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`electromagnetic signal for driving a low impedance load.” (Paper-7.) Intel
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`responded that nothing in the specification limits the purpose of storing non-
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`negligible amounts of energy for “driving a low impedance load.” See infra Section
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`IV(B)(2). The district court apparently agreed and rejected PO’s proposed “for
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`driving a low impedance load” language. (Paper-12.) PO not only fails to mention
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`this fact in its POR, but asks the Board to construe “storage element” to implicitly
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`require a “low impedance load.” (POR, 49.) PO thus has no basis to allege
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`“gamesmanship” by Intel, which has kept the Board fully informed about the district
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`court proceedings, while PO is clearly trying to have its cake (notifying the Board
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`of favorable parts of the district court’s construction) and eat it too (failing to tell the
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`Board about unfavorable parts).4
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`B.
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`PO’s Remaining Claim Construction Arguments Are Irrelevant
`And Wrong
`PO’s arguments regarding three additional terms (POR, 45, 50-53) are
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`irrelevant and without merit.
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`1.
`“switch” and “frequency down-conversion module”
`PO argues that the Board should adopt the district court’s constructions of
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`“switch” and “frequency down-conversion module.” (POR, 45, 50-51.) But PO
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`presents no substantive argument supporting these constructions. (Id.) Nor does PO
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`4 In June 2021—after PO filed its POR on May 11, 2021—the district court
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`construed the term “storage module” in a different but related PO patent (USP
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`6,049,706). (Ex. 1038 (construing “storage module” as “a module of an energy
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`transfer system that stores non-negligible amounts of energy from an input
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`electromagnetic signal for driving a low impedance load”). The district court did
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`not explain why its construction in the ’706 patent included the phrase “for driving
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`a low impedance load” while the court’s construction of “storage element” in the
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`’444 patent does not.
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`contend that either construction affects the outcome of this Proceeding. (Id.) 5
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`Absent any substantive argument or reason to interpret these terms, the Board should
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`decline to construe them.
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`2.
`“subtractor module”
`Intel proposes construing “subtractor module” in claim 3 under §112, ¶6.
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`(Pet., 29-31.) PO argues that “subtractor module” should be given its plain meaning
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`because dependent claim 5 recites that the subtractor module “comprises a
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`differential amplifier” and therefore, “subtractor module” is not means-plus-
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`function. (POR, 52-53.) But claim 5 depends from claim 1, not claim 3. Moreover,
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`structure in a dependent claim cannot transform a functional term like “subtractor
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`5 PO criticizes Intel for not proposing a construction for “switch,” a term that the
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`parties have disputed in district court. But PO identified that term for construction
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`only after the Petition was filed. (Ex. 1034.) Regarding “frequency down-
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`conversion module,” PO correctly concedes that Intel has consistently taken the
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`position—in both the district court and in the Petition—that this term, as used in
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`claim 3, is not means-plus-function. (POR, 50-51; see Pet., 28-29.) In any event,
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`PO does not dispute that the cited references disclose the required “switches” and
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`“frequency down-conversion module.”
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`module” in a separate, independent claim into a structural term. Mollhagen v. Witte,
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`18 F. App’x 846, 849 (Fed. Cir. 2001) (nonprecedential) (“[T]he stringencies of a
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`means-plus-function limitation cannot be avoided by merely adding a dependent
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`claim that recites the corresponding structure disclosed in the specification.”).
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`Nonetheless, as stated in Intel’s Petition and as PO does not dispute, the prior art
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`discloses the “subtractor module” under either a means-plus-function or plain-and-
`
`ordinary meaning construction. (Pet., 29-31, 66-69, 75, 78-81; POR, 72-76.) Thus,
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`the Board need not construe this term.
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`IV. CLAIM 3 IS UNPATENTABLE UNDER EITHER INTEL’S OR PO’S
`CONSTRUCTION OF “STORAGE ELEMENT”
`PO’s sole validity argument for claim 3 is that Tayloe does not disclose a
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`“storage element” under PO’s proposed construction of the term. (POR, 72-75.)
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`There is no dispute that under Intel’s (proper) construction, Tayloe discloses the
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`“storage element.” But even under PO’s proposed construction, Tayloe discloses a
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`“storage element.”
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`A. Claim 3 Is Unpatentable Under The Correct Construction Of
`“Storage Element”
`As explained above, a “storage element” stores “non-negligible amounts of
`
`energy from an input electromagnetic signal.” (Supra §III.A.1.) PO does not
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`18
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`dispute, nor could it, that Tayloe’s capacitors satisfy this requirement.6 Tayloe
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`clearly discloses that its capacitors 72-78 store non-negligible amounts of energy
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`from the input signal. The capacitors in Tayloe are tens of thousands of times larger
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`than the capacitors in the energy transfer embodiments of the ’551 patent. (Ex. 1004-
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`Tayloe, 5:50-52 (“each of capacitors 72-78 at 0.3 microfarads [300,000 picofarads
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`(pF)]”); Ex. 2007-’551, 67:22-25 (“the storage capacitance 8208 has a value in the
`
`range of 18 pF.”).) Tayloe explains that these capacitors charge to the average level
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`of the input signal. (Pet., 32-33; Ex. 1004-Tayloe, 2:33-45, 4:28-45.) Indeed,
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`Tayloe describes the capacitors as integrating the input signal, which indicates an
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`accumulation of energy and matches the ’551 patent’s description of a storage
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`module’s operation. (Ex. 1004-Tayloe, 4:46-67 (“[T]he remaining resistor/capacitor
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`pairs also form integrators, each of which preferably integrates for substantially 90
`
`degrees of the input signal”; id. 2:42-44 (“Each of the capacitors functions as a
`
`
`6 At his deposition, PO’s expert, Dr. Steer, repeatedly refused to answer whether
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`Tayloe’s capacitors store “non-negligible amounts of energy” and instead would
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`state only that they do not store “non-negligible amounts of energy that drive a low
`
`impedance load”—because Tayloe purportedly does not have a low impedance
`
`load. (Ex. 1029-Steer Dep. 107:2-116:16.)
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`19
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`separate integrator, each integrating a separate quarter wave of the input signal”);
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`Ex. 2007-’551, cl. 198-202 (“said storage module receives and integrates the non-
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`negligible amounts of energy from the carrier signal”). The quantity of energy
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`stored on Tayloe’s capacitors is plainly non-negligible. (Ex. 1030-Reply-Decl., ¶¶6-
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`14.)
`
`Tayloe thus discloses capacitors (“storage elements”) that store “non-
`
`negligible amounts of energy from an input electromagnetic signal.” Claim 3 is
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`therefore unpatentable under the proper construction of “storage element.”
`
`B. Claim 3 Is Also Unpatentable Under PO’s Proposed Construction
`Of “Storage Element”
`PO proposes construing “storage element” as “an element of an energy
`
`transfer system that stores nonnegligible amounts of energy from an input
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`electromagnetic signal.” (POR, 45.) That construction should be rejected for the
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`reasons stated above, but in any event, Tayloe discloses an “energy transfer system.”
`
`1.
`Tayloe discloses an “energy transfer system”
`The ’444 patent does not expressly define the term “energy transfer system.”
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`But the common feature of the patent’s “energy transfer” embodiments is the use of
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`a control signal with non-negligible apertures. The patent repeatedly defines such
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`non-negligible apertures as a characteristic of its “energy transfer” embodiment.
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`(Ex. 2007-’551, 66:33-54 (“0.1.2 Introduction to Energy Transfer…. Unlike under-
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`20
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`sampling signals that have negligible aperture pulses, the energy transfer signal
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`includes a train of pulses having non-negligible apertures that tend away from
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`zero.”), 67:1-13 (“The energy transfer system 8202 receives an energy transfer
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`signal 8210…. The energy transfer signal 8210 includes a train of energy transfer
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`pulses having non-negligible pulse widths that tend away from zero time in
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`duration.”).) PO itself agrees that “an energy transfer system uses…a control signal
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`having a pulse with a non-negligible aperture/duration.” (POR, 33.)
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`It is undisputed that Tayloe uses a control signal with non-negligible
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`apertures. Tayloe’s 25% aperture width (i.e., 1/4 of the period of the input signal)
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`falls squarely within the ’551 patent’s embodiments of non-negligible apertures.
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`(Ex. 1004-Tayloe, 2:18-26, 4:28-45; Ex. 2007-’551, 69:30-38; Ex. 2021-Steer-
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`Decl., n.13.) And PO’s expert admits that Tayloe discloses a non-negligible
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`aperture. Ex. 1029-Steer Dep. 105:6-9; 105:22-106:3.7
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`PO attempts to further narrow its own (incorrect) construction of “storage
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`7 PO argues Tayloe does not disclose an energy transfer system because it does not
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`mention the word “energy.” (POR, 54.) But PO’s expert acknowledged that an
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`“energy transfer system” can be described without using the word “energy.” (Ex.
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`1029-Steer Dep. 49:21-50:22.)
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`21
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`element” by interpreting an “energy transfer system” to require “a low impedance
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`load,” which PO says Tayloe does not disclose. (POR, 74.) PO contends that “[a]
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`storage element is synonymous with a low impedance load” and that “a low
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`impedance load is what makes a module a ‘storage’ module/element as opposed to
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`a ‘holding’ module/element.” (POR, 49 (emphases in original).) But PO’s argument
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`ignores the patent’s definition of “storage element” as a system that stores non-
`
`negligible energy. (Ex. 2007-’551, 66:65-67.) Moreover, PO’s only purported
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`support is one sentence from the ’551 patent that merely states that a “benefit” of
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`storing non-negligible amounts of energy is to “permit” a system to drive low
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`impedance loads. (Id. (quoting Ex. 2007-’551, 67:37-46 (“Another benefit of the
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`energy transfer system 8202 is that the non-negligible amounts of transferred energy
`
`permit the energy transfer system 8202 to effectively drive loads that would
`
`otherwise be classified as low impedance loads….”). Nothing in that sentence limits
`
`a storage element to an element of a system that drives a “low impedance load.” To
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`the contrary, the very next sentence states that the energy transfer system 8202 will
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`work “even for lower impedance loads”—indicating that the system could also be
`
`used with high-impedance loads. (Ex. 2007-’551 patent, 67:42-46 (“[T]he non-
`
`negligible amounts of transferred energy ensure that, even for lower impedance
`
`loads, the storage capacitance 8208 accepts and maintains sufficient energy or
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`22
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2020-01265 (U.S. Patent No. 7,110,444)
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`charge to drive the load 8202.”).
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`Indeed, the ’551 patent claims directly contradict PO’s argument and show
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`that an energy transfer system can drive both low- and high-impedance loads. Claim
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`1 of the ’551 patent recites an “energy transfer” method for “down-converting a
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`carrier signal to a lower frequency signal” by “transferring non-negligible amounts
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`of energy from the carrier signal” and “generating [the] lower frequency signal from
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`the transferred energy.” (Ex. 2007-’551, claim 1). Claim 68 depends from claim 1
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`(via claims 66 and 64) and expressly states that the energy
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