IPR2020-01265
`U.S. Patent No. 7,110,444
`PO’s Opposition to Petitioner’s Motion to Exclude Evidence
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`INTEL CORPORATION
`Petitioner
`v.
`PARKERVISION, INC.
`Patent Owner
`
`U.S. Patent No. 7,110,444
`Issue Date: September 19, 2006
`Title: WIRELESS LOCAL AREA NETWORK (WLAN) USING UNIVERSAL
`FREQUENCY TRANSLATION TECHNOLOGY INCLUDING MULTI-PHASE
`EMBODIMENTS AND CIRCUIT IMPLEMENTATIONS
`__________________________________________________________________
`Inter Partes Review No. IPR2020-01265
`__________________________________________________________________
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`U.S. Patent No. 7,110,444
`PO’s Opposition to Petitioner’s Motion to Exclude Evidence
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`INTEL CORPORATION
`Petitioner
`v.
`PARKERVISION, INC.
`Patent Owner
`
`U.S. Patent No. 7,110,444
`Issue Date: September 19, 2006
`Title: WIRELESS LOCAL AREA NETWORK (WLAN) USING UNIVERSAL
`FREQUENCY TRANSLATION TECHNOLOGY INCLUDING MULTI-PHASE
`EMBODIMENTS AND CIRCUIT IMPLEMENTATIONS
`__________________________________________________________________
`Inter Partes Review No. IPR2020-01265
`__________________________________________________________________
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
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`
`
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
`Page
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`Introduction. ................................................................................................ 1
`Intel rewrites procedural history in attempt to exclude Exhibit 2022. ........... 2
`Intel is not prejudiced by Exhibit 2022. ....................................................... 6
`A.
`The PTAB’s procedural rules support inclusion of Exhibit 2022. ...... 6
`B.
`FRE 403 supports inclusion of Exhibit 2022. ..................................... 9
`IV. Conclusion. .................................................................................................11
`
`
`
`
`i
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
`PO’s Opposition to Petitioner’s MTE
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`Patent Owner ParkerVision, Inc. (“ParkerVision”) hereby opposes the
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`Motion to Exclude Evidence (“Motion,” Paper 34) filed by Petitioner Intel
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`Corporation (“Intel”) on October 7, 2021. ParkerVision respectfully submits that
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`Intel’s Motion should be denied in its entirety.
`
`I.
`
`Introduction.
`Intel’s motion is a blatant attempt to exclude evidence that is relevant and
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`damaging to its case. Intel asks the Board to exclude Exhibit 2022, a demonstrative
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`exhibit used during the deposition of Intel’s expert, Dr. Vivek Subramanian, to
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`guide the technical discussion. Exhibit 2022 is an integral part of Dr.
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`Subramanian’s deposition transcript which is expressly permitted by the Trial
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`Practice Guide. See Patent Trial and Appeal Board Consolidated Trial Practice
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`Guide, 74 (Nov. 2019) (“PTAB Practice Guide”). Exhibit 2022, together with the
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`testimony discussing the exhibit, serve to rebut Dr. Subramanian’s new theory
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`regarding the transfer/storage of energy by capacitors that he first presented in his
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`Reply Declaration (see Exhibit 1030, ¶¶6-14).
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`Moreover, Petitioner has the prejudice at issue backwards; it is Patent Owner
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`that will be prejudiced if the motion is granted. Dr. Subramanian took a position in
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`his Reply Declaration for the first time in this proceeding, analyzing the amount of
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`energy stored by Tayloe’s capacitors based solely on the amount of work needed to
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`charge the capacitor to a particular voltage level. See Exhibit-1030, ¶¶7, 12. By
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`1
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
`PO’s Opposition to Petitioner’s MTE
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`introducing Dr. Subramanian’s new testimony in his reply, Intel ensured that
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`ParkerVision could not respond with expert evidence explaining why Dr.
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`Subramanian’s new approach was wrong. Cross-examination exposed these
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`discrepancies. Excluding demonstratives created for that cross-examination would
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`prejudice Patent Owner’s ability to fairly present the testimony.
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`At bottom, Exhibit 2022 is timely, compliant with PTAB procedure, and
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`poses no undue prejudice against Intel. Accordingly, ParkerVision respectfully
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`submits that Intel’s Motion should be denied in its entirety.
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`II.
`
`Intel rewrites procedural history in attempt to exclude Exhibit 2022.
`Exhibit 2022 is permissible evidence under the Trial Practice Guide, being
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`simply part of proper cross-examination of a reply witness concerning an argument
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`raised in the reply and reply declaration. In an eleventh-hour attempt to bolster its
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`case, Intel invents a narrative that contradicts the history of this proceeding. In
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`particular, Intel asserts that “PO changed tack in its Sur-Reply” and “argues for the
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`first time that Tayloe’s capacitors do not store ‘non-negligible amounts of
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`energy.’” Mot., 4. Intel therefore concludes that Exhibit 2022 should be excluded
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`because it is new evidence that “would take the trial in a new direction with a new
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`approach.” Mot., 9 (citations omitted). But Intel’s narrative is false and simply
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`ignores the facts.
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`2
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
`PO’s Opposition to Petitioner’s MTE
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`Despite the parties disputing the construction of “storage element” in the
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`related District Court litigation, Intel failed to propose a construction for the term
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`in its Petition. Instead, Intel opted to give itself flexibility for its invalidity case in
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`an attempt to cover the voltage sampling system of Tayloe.
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`ParkerVision expressly noted this discrepancy in its Patent Owner’s
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`Response (see Paper 18 (“POR”), 45-46), and proposed construing “storage
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`element” consistent with the District Court’s construction: “an element of an
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`energy transfer system that stores non-negligible amounts of energy from an input
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`electromagnetic signal.” POR, 2, 4, 45. ParkerVision then specifically argued that
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`none of Intel’s cited prior art references disclose, teach, or suggest using a “storage
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`element.” See, e.g., POR, 3. In fact, ParkerVision’s Response is replete with
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`statements on this very issue.
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`• POR, 54 (“Because Tayloe is a voltage sampling system, Tayloe does
`not disclose the use of “storage elements” (a term reserved for
`element of an energy transfer (energy sampling) system) as set forth
`in claim 3 of the ’444 patent”);
`• POR, 59 n. 14 (“Tayloe’s use of 25% of the input signal (one quarter
`of the wave) does not indicate or imply energy transfer.”)
`• POR, 63 (“A POSITA knows that for the voltage on the capacitor 74
`to equal the average voltage represented by point 110, there is only a
`small amount of current and, thus, only a small amount of energy
`flowing through RFILTER 32.”)
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`3
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
`PO’s Opposition to Petitioner’s MTE
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`• POR, 64 (“If current flows through RFILTER, there would be a voltage
`drop across RFILTER and the voltage on the capacitor, VCAP, could not
`approximate the average value of the voltage at f1, Vx, as required by
`Tayloe.”)
`• POR, 66 (“As such, the capacitors 72, 74, 76, 78 [of Tayloe] are all
`“holding” elements – not “storage elements” as set forth in claim 3 of
`the ’444 patent.”)
`• POR, 74 (“Contrary to Intel’s assertion, simply because a capacitor is
`disclosed in Tayloe does not mean that Tayloe discloses a “storage
`element.” As described in the ’444 patent, whether a capacitor is a
`“storage element” depends on the way in which the capacitor is being
`used in a circuit.”)
`• See also Exhibit 2021 (Steer Decl.) ¶289 (“In other words, none of the
`capacitors in Tayloe is an “element of an energy transfer system that
`stores non-negligible amounts of energy from an input
`electromagnetic signal.”)
`For the first time in its Reply, Intel defined “storage element” as “an element
`
`
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`that stores a nonnegligible amount of energy from an input electromagnetic (EM)
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`signal.” See Paper 21 (“Reply”), 3. Intel also submitted a supplemental declaration
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`from Dr. Subramanian newly “analyzing the amount of energy stored by Tayloe’s
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`capacitors.” See Exhibit 1030 (Subramanian Reply Decl.) ¶¶6-14. In particular, Dr.
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`Subramanian’s analysis included an equation for calculating the amount of energy
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`that a capacitor stores based on the amount of work needed to charge the capacitor
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`to a particular voltage level. Exhibit-1030 ¶¶7, 12. Dr. Subramanian determined,
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`4
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
`PO’s Opposition to Petitioner’s MTE
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`through this equation, a number value (0.6 microjoules) of energy stored by
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`Tayloe’s capacitors.
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`To address Dr. Subramanian’s (and Intel’s) additional theories,
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`ParkerVision’s counsel attempted to expose, through cross-examination, the wrong
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`assumptions underlying Dr. Subramanian’s calculation. As part of that
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`examination, ParkerVision’s counsel probed the issue of energy transfer (and the
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`amount of energy stored by capacitors) through well-known calculations and
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`mathematical equations written down on Exhibit 2022. Using Exhibit 2022 to
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`guide the discussion, ParkerVision elicited testimony from Dr. Subramanian which
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`confirmed that additional calculations (not present in Dr. Subramanian’s Reply
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`Declaration) would be needed for a proper determination of energy storage by a
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`capacitor in a circuit like Tayloe. See, e.g., Ex. 2028, 26:21-27:21; 28:1-25; 29:5-
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`31:22; 33:5-12, 17-22; 34:7-35:19; 41:4-42:23; 43:6-44:13; 46:24-49:7; 49:12-24;
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`53:15-54:17; 54:22-56:13; 58:11-16; 64:19-66:8; 109:18-111:6.
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`Accordingly, Exhibit 2022 was not belatedly introduced, but is simply used
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`as deposition testimony submitted in rebuttal of issues raised by Intel/Intel’s expert
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`in its Reply. Intel’s attempt to exclude evidence just because it contradicts its
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`expert’s previous testimony is misguided and improper.
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`5
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
`PO’s Opposition to Petitioner’s MTE
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`III.
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`Intel is not prejudiced by Exhibit 2022.
`A. The PTAB’s procedural rules support inclusion of Exhibit 2022.
`Intel argues that the inclusion of Exhibit 2022 into the case constitutes undue
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`prejudice under PTAB rules because it is “faced with the difficult task” of
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`addressing the calculations during oral argument and is otherwise deprived of the
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`opportunity to rebut and respond to the calculations. Mot., 10-12.
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`But Intel’s prejudice argument rests on the false notion that ParkerVision’s
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`Exhibit 2022 is improper. In any given IPR, one party submits the final brief. That
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`final brief is not prejudicial to the other party simply because it is the last written
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`submission and does an effective job of rebutting what was said before it. Intel is
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`annoyed because it does not have the final word. Intel just wants to exclude Exhibit
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`2022 because it and Dr. Subramanian’s concessions effectively undermine points
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`that Intel itself made in its reply. But the next step is the oral hearing where both
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`Intel and ParkerVision will present arguments based on their back-and-forth
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`briefing and the depositions that were taken. There is nothing prejudicial about this
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`process.
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`Further, the calculations in Exhibit 2022 were presented to Intel’s expert at
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`his deposition before they were included in ParkerVision’s Sur-Reply.
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`ParkerVision was entitled to impeach Dr. Subramanian’s analysis of Tayloe under
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`the construction of “storage element” that he presented for the first time in his
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`6
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
`PO’s Opposition to Petitioner’s MTE
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`Reply Declaration. In that analysis, Dr. Subramanian discussed some of the
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`calculations that would be necessary to calculate “the amount of energy that a
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`capacitor stores.” Ex. 1030, ¶¶7-14. And at the deposition, Dr. Subramanian had
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`the opportunity to respond to ParkerVision’s questions about calculating the
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`amount of energy a capacitor stores (at point Dr. Subramanian raised in his
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`declaration and for which he was being deposed) and the opportunity to opine
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`about the calculations on the record. Indeed, Intel’s counsel examined Dr.
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`Subramanian about other topics at his deposition and had the opportunity to elicit
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`testimony from Dr. Subramanian about Exhibit 2022, but chose not to do so. See
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`Ex. 2028, 213:12–218:17.
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`None of the cases Intel cites apply to the facts of this case. The cases Intel
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`cites are easily distinguishable from the facts of the present case. For example, in
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`Westech and Unified Patents, the Patent Owner was making for the first time in its
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`Sur-Reply a completely independent argument that could have been made in the
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`POR. 3M Co. v. Westech Aerosol Corp., IPR2018-00576, Paper 45 at 6 (Apr. 26,
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`2019); Unified Patents, LLC v. American Patents, LLC, IPR2019-00482, Paper 73
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`at 6 (Apr. 3, 2020). Here, as discussed above, ParkerVision previously argued in
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`the POR that the capacitors in Tayloe did not store non-negligible amounts of
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`energy, and presents the relevant calculations in the Sur-Reply to rebut the
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`arguments Intel made in its Reply. See POR, 72-73. Further in Netflix, the
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`7
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
`PO’s Opposition to Petitioner’s MTE
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`deponent indicated at his deposition that he “was not familiar with” the content of
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`the exhibits. Netflix, Inc. v. DivX, LLC, IPR2020-00511, Paper 46 at 53 (Aug. 13,
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`2021). Here, Dr. Subramanian recognized the equations and other content in
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`Exhibit 2022, which were directed to an issue he himself raised in his declaration.
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`Sur-Reply, 18 (citing Ex. 2028, 26:21-27:21; 28:1-25; 29:5-31:22; 33:5-12, 17-22;
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`34:7-35:19; 41:5-42:23; 43:6-44:13; 46:24-49:7; 49:12-24; 53:15-54:17; 54:22-
`
`56:13; 58:11-16; 64:19-66:8). In Lenovo, the Patent Owner attempted to introduced
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`multiple expert declarations as new exhibits with its Sur-Reply. Lenovo Holding
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`Co., Inc. v. Dodots Licensing Sols. LLC, No. IPR2019-00988, Paper 34 at 6 (June
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`9, 2020). Here, Exhibit 2022 is an exhibit used as a visual aid during the deposition
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`– not an expert declaration. At bottom, Intel’s prejudice argument is merely a
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`protest against the weaknesses of positions that Intel has taken. But that does not
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`qualify as undue prejudice.
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`Intel further asserts that Exhibit 2022 violates 37 C.F.R. § 42.23(b). Mot. at
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`7-8. But as shown above, in its sur-reply, ParkerVision cites Exhibit 2022 in
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`conjunction with Dr. Subramanian’s deposition testimony, which ParkerVision
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`elicited in accordance with Trial Practice Guide. In that regard, Intel also argues
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`that Exhibit 2022 violates the TPG because the POR did not raise the arguments to
`
`which Exhibit 2022 relates as a prima facie case for patentability. Mot. at 8. But as
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`shown above in Section II, Intel argued specifically in its POR that the capacitor in
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`8
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`
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
`PO’s Opposition to Petitioner’s MTE
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`Tayloe did not store non-negligible amounts of energy. And further, Exhibit 2022
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`is being used for rebuttal purposes, responding to arguments and statemtents Intel
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`then made in its reply and Dr. Subramanian’s declaration, not to make out
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`ParkerVision’s prima facie case of patentability.
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`Intel further asserts that Dr. Steer failed the raise the issue of the Tayloe
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`capacitors not storing non-negligible amounts of energy “either in his declaration
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`or at his deposition.” Mot. at 8. Yet, Dr. Steer raised that issue in both situations.
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`Ex. 2021, ¶287 (“none of the capacitors in Tayloe is an ‘element of an energy
`
`transfer system that stores non-negligible amounts of energy from an input
`
`electromagnetic signal.’”); Ex. 1029, 119:15-19 (“the capacitors in Tayloe…do not
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`store the non-negligible energy that is described in the patent”).
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`Intel then continues, and argues that Dr. Steer “never suggested anything
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`like the three-step calculation that PO now proposes.” Mot., 9. But as explained
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`previously, the calculation methodology that ParkerVision presented is introduced
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`to rebut the Intel’s argument that Tayloe stores non-negligible amounts of energy
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`because it has a larger capacitor size than the “storage element” of the ’444 patent.
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`FRE 403 supports inclusion of Exhibit 2022.
`B.
`Intel claims that its alleged undue prejudice warrants exclusion of Exhibit
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`2022 under Rule 403 of the Federal Rules of Evidence. Mot., 12-15. In particular,
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`9
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`
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
`PO’s Opposition to Petitioner’s MTE
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`Intel argues that the existence of underlying assumptions in the calculations
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`“creates” unfair prejudice that outweighs the probative value of the exhibit. Id.
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`But Intel is wrong. Dr. Subramanian admitted that he was familiar with the
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`equations used in Exhibit 2022. Sur-Reply, 18 (citing Ex. 2028, 26:21-27:21; 28:1-
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`25; 29:5-31:22; 33:5-12, 17-22; 34:7-35:19; 41:5-42:23; 43:6-44:13; 46:24-49:7;
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`49:12-24; 53:15-54:17; 54:22-56:13; 58:11-16; 64:19-66:8). He also testified that
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`the equations in Exhibit 2022 were relevant to determining the amount of energy
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`stored on a capacitor, an issue he raised in his declaration. Id. Indeed, Intel’s list of
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`citations from the deposition confirm that Dr. Subramanian clearly understood and
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`identified what assumptions were necessary or implied, had a chance to confirm or
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`deny the accuracy of the calculations and the methodology, and made a point to
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`state his opinions about the material. See Mot., 13-15. ParkerVision fairly used
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`Exhibit 2022 to elicit testimony rebutting Intel’s reply arguments, which implied
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`that the determination of what qualifies as a “non-negligible amount of energy” is
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`based almost exclusively on the size of the capacitor. Thus, the probative value of
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`Exhibit 2022 clearly outweighs any risk of undue prejudice to Intel under FRE
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`403. Therefore, Exhibit 2022 should not be excluded under FRE 403. In fact,
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`excluding Exhibit 2022 prejudices ParkerVision and unfairly deprives it of proper
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`rebuttal evidence.
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`10
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
`PO’s Opposition to Petitioner’s MTE
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`IV. Conclusion.
`In view of the foregoing, Intel’s Motion to Exclude Evidence should be
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`denied.
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`
`Dated: October 14, 2021
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`
`
`
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`
`
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`Respectfully Submitted,
`
`By: /Jason S. Charkow/
`Jason S. Charkow (USPTO Reg. No. 46,418)*
`Chandran B. Iyer (USPTO Reg. No. 48,434)
`Stephanie R. Mandir (USPTO Reg. No. 72,930)
`jcharkow@daignaultiyer.com
`cbiyer@daignaultiyer.com
`smandir@daignaultiyer.com
`DAIGNAULT IYER LLP
`8618 Westwood Center Drive, Suite 150
`Vienna, VA 22182
`*Not admitted in Virginia
`Attorneys for ParkerVision, Inc.
`
`11
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
`PO’s Opposition to Petitioner’s MTE
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`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`OPPOSITION TO PETITIONER’S MOTION TO EXCLUDE EVIDENCE was
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`served electronically via email on October 14, 2021, on the following counsel of
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`record for Petitioner:
`
`Grant Rowan (Lead Counsel)
`WILMER CUTLER PICKERING HALE AND DORR LLP
`haixia.lin@wilmerhale.com
`grant.rowan@wilmerhale.com
`brian.lambson@wilmerhale.com
`michael.summersgill@wilmerhale.com
`todd.zubler@wilmerhale.com
`WH-ParkerVision-IPRs@wilmerhale.com
`
`
`
`
`Dated: October 14, 2021
`
`
`
`
`
`
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`Respectfully Submitted,
`
`By: /Jason S. Charkow/
` Jason S. Charkow
` USPTO Reg. No. 46,418
`
`12
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`
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