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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`Intel Corporation
`Petitioner
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`v.
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`ParkerVision, Inc.
`Patent Owner
`___________________________________________
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`Case No. IPR2020-01265
`U.S. Patent No. 7,110,444
`____________________________________________
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`PETITIONER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
`EVIDENCE
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`Reply in Support of Motion to Exclude Evidence (IPR2020-01265)
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`Patent Owner’s (“PO’s”) opposition turns the facts on their head in an
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`attempt to present an exhibit that is procedurally improper, unfairly prejudicial, and
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`without even a minimal evidentiary foundation.
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`I.
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`EXHIBIT 2022 IS PROCEDURALLY IMPROPER
`Exhibit 2022 is improper “new evidence” that would take the trial “in a new
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`direction with a new approach.” TPG 74; 37 C.F.R. § 42.23(b). PO was obligated
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`to advance in its POR all arguments as to why Tayloe does not disclose a storage
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`element but advanced only one—that Tayloe’s capacitors are not used in an
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`“energy transfer system” to drive a “low impedance load.” (POR, 74.) PO never
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`argued that Tayloe’s capacitors do not store non-negligible energy, much less set
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`forth the new 3-step calculations presented in Exhibit 2022.
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`PO’s opposition does not deny PO’s new position that Exhibit 2022’s 25
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`pages of calculations are “necessary” to the invalidity analysis. (Sur-Reply, 16.)
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`PO also does not and cannot deny that it never presented these “necessary”
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`calculations in its POR. And PO cannot identify any reason why it could not have
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`set forth the Exhibit 2022 analysis in its POR. That should end the matter.
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`Instead, PO wrongly attempts to blame Intel for PO’s untimely exhibit.
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`First, PO asserts that “[d]espite the parties disputing the construction of ‘storage
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`element’ in the related District Court litigation, Intel failed to propose a
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`construction for the [storage element] term in its Petition.” (Opp., 3.) But when
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`Reply in Support of Motion to Exclude Evidence (IPR2020-01265)
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`Intel filed the Petition in July 2020, neither party had identified “storage element”
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`as a term to be construed. (Reply, 13-14.) The claim construction dispute arose
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`when PO proposed, for the first time in its POR, construing “storage element” as
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`an element “that stores non-negligible amounts of energy.” (POR, 2.) But despite
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`this construction, PO never argued in the POR that Tayloe’s capacitors do not store
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`non-negligible energy, or proposed the 3-step analysis advanced in Exhibit 2022.
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`Second, PO incorrectly asserts that its POR did dispute that Tayloe’s
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`capacitors store non-negligible energy. But each quote PO cites asserts only that
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`Tayloe does not disclose a storage element because Tayloe purportedly does not
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`disclose an energy transfer system with a low impedance load. (POR, 49, 54-70,
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`72-75.) No quote asserts that the energy stored on Tayloe’s capacitors is negligible.
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`PO also suggests Dr. Steer disputed that Tayloe’s capacitors store non-negligible
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`energy. (Opp., 4.) But Dr. Steer’s declaration at ¶287 (miscited as ¶289) merely
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`repeats PO’s entire proposed “storage element” construction. And the textual
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`emphasis in the declaration—which PO misleadingly omits—shows that his sole
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`basis for distinguishing Tayloe was the “energy transfer system” language, not the
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`“non-negligible energy” language: “[N]one of the capacitors in Tayloe is an
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`‘element of an energy transfer system that stores non-negligible amounts of energy
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`from an input electromagnetic signal.’” (Ex. 2021 ¶287 (emphasis in original).)
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`Similarly, Dr. Steer’s complete deposition answer (again misleadingly
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`Reply in Support of Motion to Exclude Evidence (IPR2020-01265)
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`abridged by PO (Opp., 9)) admitted that Tayloe’s capacitors do store non-
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`negligible amounts of energy and distinguished those capacitors from the ’444
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`patent only because they allegedly do not “drive a low impedance load”:
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`Q: Do the capacitors 72, 74, 76, and 78, disclosed in Tayloe, store
`non-negligible amounts of energy?
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`A: Well, the non-negligible energy that they store must drive a low
`impedance load. So in that sense, the capacitors in Tayloe, in his
`prototype system, do not store the non-negligible energy that is
`described in the patent because that non-negligible energy must be
`able to describe -- must be able to drive a low impedance load.
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`(Ex. 1029, 119:9-19 (emphasis added).) Moreover, even setting aside the POR’s
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`failure to argue that Tayloe’s capacitors do not store “non-negligible energy,”
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`nothing in the POR discloses the calculations that PO now deems “necessary.”
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`PO also fails to distinguish the case law Intel cited. Contrary to PO’s
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`argument (Opp., 8 (citing Lenovo Holding Co.)), it does not matter that Exhibit
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`2022 is a deposition exhibit rather than a declaration. In Netflix, Inc. v. DivX, LLC,
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`the Board excluded exhibits newly offered in a sur-reply even though they had
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`been “used in the cross-examination” of petitioner’s expert. No. IPR2020-00511,
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`2021 WL 3599429, at *22 (P.T.A.B. Aug. 13, 2021). PO argues that Netflix is
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`distinguishable because the “deponent indicated at his deposition that he ‘was not
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`familiar with’ the content of the exhibits.” (Opp., 8.) But it is undisputed that Dr.
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`Subramanian never saw Exhibit 2022 before his deposition. And in another IPR,
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`the Board excluded a deposition exhibit newly offered in sur-reply even though
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`3
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`Reply in Support of Motion to Exclude Evidence (IPR2020-01265)
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`petitioner’s expert testified he probably had seen it before. Netflix, Inc. v. Divx,
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`LLC, No. IPR2020-00558, 2021 WL 3729361, at *13 (P.T.A.B. Aug. 23, 2021).
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`PO argues that Unified Patents and Westech are distinguishable because the
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`PO there “was making for the first time in its Sur-Reply a completely independent
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`argument.” (Opp., 7.) But PO’s theory that Tayloe’s capacitors do not store non-
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`negligible energy based on the “necessary” calculations in Exhibit 2022 is a new,
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`independent argument that clearly takes PO’s arguments in a “new direction”—the
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`test that the Board applied in those cases. Moreover, in In-Depth Geophysical, Inc.
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`v. Conocophillips Co., the Board found waiver even though the PO’s new
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`argument in sur-reply was about a claim limitation that the PO had addressed in its
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`POR. No. IPR2019-00850, 2020 WL 5261306, at *9 (P.T.A.B. Sept. 3, 2020).
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`Third, PO argues that Exhibit 2022 is proper because it responds to Dr.
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`Subramanian’s Reply Declaration. But by the time of its Sur-Reply, PO had
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`waived any argument that Tayloe’s capacitors do not store non-negligible energy
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`by not making that argument in its POR.1 And even if PO was entitled to rebut Dr.
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`Subramanian’s energy calculations, PO was, at most, permitted to do just that—
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`question Dr. Subramanian about those calculations at his deposition or challenge
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`1 Dr. Subramanian addressed the non-negligible energy issue in his Reply
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`Declaration because PO had first proposed that construction in its POR.
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`4
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`Reply in Support of Motion to Exclude Evidence (IPR2020-01265)
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`those calculations in its Sur-Reply. But PO did not ask any such questions at the
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`deposition, and the Sur-Reply does not even mention Dr. Subramanian’s
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`calculations. PO’s Sur-Reply instead takes the trial in a new direction by offering
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`an entirely new claim interpretation and validity theory.
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`II.
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`EXHIBIT 2022 SHOULD BE EXCLUDED UNDER FRE 403
`The unfair prejudice from Exhibit 2022 substantially outweighs its probative
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`value. Exhibit 2022 lacks any expert support or factual foundation. PO wrongly
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`suggests Dr. Subramanian ratified Exhibit 2022 as supporting PO’s arguments.
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`(Opp., 5, 10.) But he identified multiple errors and unsupported assumptions in the
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`exhibit, and the first 21 pages of the exhibit (on which PO bases its calculations)
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`do not even mention Tayloe. Indeed, PO tellingly avoided asking Dr. Subramanian
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`if the exhibit’s calculations apply to Tayloe, and PO’s Sur-Reply does not even try
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`to show that the exhibit’s assumptions or calculations are supported by Tayloe.
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`Moreover, that Dr. Subramanian found mathematical errors and unsupported
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`assumptions in Exhibit 2022 on the fly does not cure the unfair prejudice that
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`would result from admitting it. Petitioner had no opportunity to (a) question PO’s
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`expert on the exhibit, (b) present rebuttal expert testimony on these complex
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`calculations and the assumptions thereunder, and (c) present a written response
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`based on such testimony. This unfair prejudice overwhelms Exhibit 2022’s non-
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`existent probative value, and Exhibit 2022 therefore should be excluded.
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`5
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`Reply in Support of Motion to Exclude Evidence (IPR2020-01265)
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`Respectfully submitted,
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`/Grant K. Rowan/
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`Grant K. Rowan, Reg. No. 41,278
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`6
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`Reply in Support of Motion to Exclude Evidence (IPR2020-01265)
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 21, 2021, I caused a true and correct copy of
`the foregoing materials:
`• Petitioner’s Reply in Support of Motion to Exclude Evidence
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`To be served via email on the following attorneys:
`• Jason S. Charkow (jcharkow@daignaultiyer.com)
`• Chandran B. Iyer (cbiyer@daignaultiyer.com)
`• Stephanie R. Mandir (smandir@ daignaultiyer.com)
`• Kevin Sprenger (ksprenger@daignaultiyer.com)
`• Richard Juang (rjuang@daignaultiyer.com)
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`Respectfully Submitted,
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`/Grant K. Rowan /
`Grant K. Rowan (Reg. No. 41,278)
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`1
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