Trials@uspto.gov
`571-272-7822
`
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`
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` Paper 10
`Date: January 28, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`INTEL CORPORATION,
`Petitioner,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2020-01265
`Patent 7,110,444 B1
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 10
`Date: January 28, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`INTEL CORPORATION,
`Petitioner,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2020-01265
`Patent 7,110,444 B1
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
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`IPR2020-01265
`Patent 7,110,444 B1
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`I.
`
`INTRODUCTION
`
`Background
`
`Intel Corporation (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
`requesting institution of inter partes review of claims 1, 3, and 5 (“the
`Challenged Claims”) of U.S. Patent No. 7,110,444 B1 (Ex. 1001, “the
`’444 patent”). ParkerVision, Inc. (“Patent Owner”) filed an Amended
`Preliminary Response (Paper 9, “Prelim. Resp.”).1
`An inter partes review may be instituted only if “the information
`presented in the petition . . . and any [preliminary] response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018). For the reasons given below, Petitioner has established a reasonable
`likelihood that it would prevail in showing the unpatentability of at least one
`of the challenged claims of the ’444 patent. Accordingly, we institute an
`inter partes review of claims 1, 3, and 5 of the ’444 patent on all grounds
`raised in the Petition.
`
`
`1 Patent Owner filed a timely Preliminary Response on November 23, 2020
`(Paper 8), and, a day later, filed the Amended Preliminary Response. The
`Notice of Filing Date Accorded to Petition and Time for Filing Patent
`Owner Preliminary Response (Paper 4) was entered August 21, 2020. A
`preliminary response was thus due by November 23, 2020 (November 21st
`and 22nd fell on a weekend). Patent Owner should have requested
`authorization from the Board prior to filing its Corrected Preliminary
`Response. Nonetheless, despite Patent Owner’s failure to request
`authorization, we exercise our discretion under 37 C.F.R. § 42.5(b) to waive,
`by one day, the timing requirement under 37 C.F.R. § 42.107(b) because
`(1) Petitioner has not asserted that the additional day resulted in any
`prejudice to Petitioner and (2) the Corrected Preliminary Response appears
`to be nearly identical to the timely filed Preliminary Response.
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`Related Proceedings
`
`Petitioner and Patent Owner identify the following related matter:
`
`ParkerVision, Inc. v. Intel Corp., No. 6:20-cv-108-ADA (W.D. Tex.) (“the
`related litigation”). Pet. 7; Paper 5 (Patent Owner’s Mandatory Notices), 2.
`Patent Owner also states that the ’444 patent is asserted in ParkerVision, Inc.
`v. TCL Technology Group Corp., No. 5:20–cv-01030-GW-SHK (C.D. Cal.).
`Paper 5, 2. In addition, Petitioner filed a petition challenging several claims
`of U.S. Patent No. 7,539,474 B2, which is related to the ’444 patent, in
`IPR2020-01302.
`
`Real Parties in Interest
`
`Petitioner identifies Intel Corporation as the real party in interest.
`Pet. 7. Patent Owner identifies ParkerVision, Inc. as the real party in
`interest. Paper 5, 2.
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`The Asserted Grounds of Unpatentability and Declaration
`Evidence
`Petitioner challenges the patentability of claims 1, 3, and 5 of the
`’444 patent on the following grounds:
`Reference(s)/Basis
`Claim(s) Challenged
`35 U.S.C. §2
`Tayloe,3 TI Datasheet4
`1, 3, 5
`103(a)
`Tayloe, Kawada5
`1, 3, 5
`103(a)
`Pet. 10. Petitioner supports its challenge with a Declaration by Vivek
`Subramanian, Ph.D. (Ex. 1002, “the Subramanian Declaration”) and a
`Declaration by Maureen M. Honeycutt (Ex. 1019, “the Honeycutt
`Declaration”).
`
`The ’444 Patent
`
`The ’444 patent is directed to “a wireless local area network (WLAN)
`that includes one or more WLAN devices (also called stations, terminals,
`access points, client devices, or infrastructure devices) for effecting wireless
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the
`’444 patent has an effective filing date before March 16, 2013, we apply the
`pre-AIA versions of the statutory bases for unpatentability.
`3 U.S. Patent No. 6,230,000 B1, issued May 8, 2001 (Ex. 1004, “Tayloe”).
`4 SN74CBT3253 Dual 1-of-4 FET Multiplexer/Demultiplexer (rev. ed.
`May 1998) (Ex. 1005, “TI Datasheet”). Petitioner refers to this exhibit, in at
`least one instance, as “SN74CBT3253D.” Pet. 9. The exhibit itself,
`however, does not include the letter “D” in the product number. Ex. 1005.
`Petitioner explains that “the ‘D’ in the product number refers simply to a
`packaging option” (Pet. 38 n.5), which is confirmed by the description on
`the first page stating “Package Options Include Plastic Small-Outline (D).”
`Ex. 1005, 1. At this stage of the proceeding, neither party asserts that the
`packaging option results in a difference of any significance to the issues
`before us.
`5 U.S. Patent No. 4,985,647, issued January 15, 1991 (Ex. 1008, “Kawada”).
`
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`communications over the WLAN.” Ex. 1001, 2:10–14. The ’444 patent
`explains that “[t]he WLAN device includes at least an antennae, a receiver,
`and a transmitter . . . . The WLAN receiver includes at least one universal
`frequency translation module that frequency down-converts a received
`electromagnetic (EM) signal.” Id. at 2:14–22.
`Figure 70A is reproduced below:
`
`
`Figure 70A of the ’444 patent “illustrates an IQ receiver having shunt UFT
`[universal frequency translation] modules.” Ex. 1001, 5:34–35. The
`’444 patent explains that “I/Q modulation receiver 7000 receives, down
`converts, and demodulates a[n] I/Q modulated RF input signal 7082 to an
`I baseband output signal 7084, and a Q baseband output signal 7086.” Id. at
`35:51–54; see id. at 35:60–62 (Antenna 7072 receives and outputs I/Q
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`modulated RF input signal 7082.). The ’444 patent states that, “[w]hen
`present, LNA 7018 amplifies I/Q modulated RF input signal 7082, and
`outputs amplified I/Q signal 7088.” Id. at 35:63–64. Thereafter, “[f]irst
`UFD [universal frequency down-conversion] module 7002, receives
`amplified I/Q signal 7088. . . . [,] down-converts the I-phase portion of the
`amplified input I/Q signal 7088 according to an I control signal 7090. . . .
`[, and] outputs an I output signal 7098.” Id. at 35:65–36:2. Similarly, UFD
`module 7006 “receives amplified I/Q signal 7088[,]” “down-converts the
`inverted I-phase signal portion of amplified input I/Q signal 7088 according
`to an inverted I control signal 7092[,]” and “outputs an inverted I output
`signal 7001.” Id. at 36:33–37. Thereafter, “[f]irst differential
`amplifier 7020 receives filtered I output signal 7007 . . . . subtracts filtered
`inverted I output signal 7009 from filtered I output signal 7001, amplifies the
`result, and outputs I baseband output signal 7084.” Id. at 37:3–8.
`The ’444 patent’s first and second UFD modules in Figure 70A
`include capacitors 7074 and 7076, respectively, and UFT modules 7026 and
`7038, respectively. Ex. 1001, 36:3–5 (first UFD module 7002 comprises
`first storage module 7024 and first UFT module 7026), 36:14–15 (first
`storage module 7024 comprises first capacitor 7074), 36:38–40 (second
`UFD module 7006 comprises second storage module 7036 and second UFT
`module 7038), 36:50–51 (second storage module 7036 comprises second
`capacitor 7076).
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`Figure 1B is reproduced below:
`
`
`Figure 1B of the ’444 patent “is a more detailed diagram of a universal
`frequency translation (UFT) module.” Id. at 2:56–58. The ’444 patent
`explains that, “[g]enerally, the UFT module 103 includes a switch 106
`controlled by a control circuit 108.” Id. at 8:62–64 (noting that switch 106 is
`referred to as a controlled switch); see id. at 36:5–7 (first UFT module,
`shown in Figure 70A, contains a switch that opens and closes as a function
`of I control signal 7090), 36:40–42 (second UFT module, also shown in
`Figure 70A, contains a switch that opens and closes as a function of inverted
`I control signal 7092).
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`The ’444 patent includes two alternative configurations of switches
`and capacitors in UFD modules (Ex. 1001, 9:43–57), as shown in
`Figures 20A and 20A-1 reproduced below:
`
`
`
`Figures 20A and 20A-1 of the ’444 patent “are example aliasing modules.”
`Id. at 3:50–51. The ’444 patent explains that, in Figure 20A, switch 2008 is
`in series with input signal 2004 and capacitor 2010 is shunted to ground; in
`Figure 20A-1, however, capacitor 2010 is in series with input signal 2004
`and switch 2008 is shunted to ground. Id. at 9:48–57 (also noting that “[t]he
`electronic alignment of the circuit components is flexible”).
`
`Illustrative Claim
`
`Claims 1 and 3 are the independent claims challenged in this
`proceeding. Claim 1 is illustrative of the claimed subject matter and is
`reproduced below with Petitioner’s bracketing added for reference:
`1.
`[1preamble] A wireless modem apparatus, comprising:
`[1A] a receiver for frequency down-converting an input
`signal including,
`[1B] a first frequency down-conversion module to
`down-convert the input signal, wherein said first
`frequency down-conversion module down-converts said
`input signal according to a first control signal and outputs
`a first down-converted signal;
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`[1C] a second frequency down-conversion module
`to down-convert said input signal, wherein said second
`frequency down-conversion module down-converts said
`input signal according to a second control signal and
`outputs a second down-converted signal; and
`[1D] a subtractor module that subtracts said second
`down-converted signal from said first down-converted
`signal and outputs a down-converted signal;
`[1E] wherein said second control signal is delayed
`relative to said first control signal by (0.5+n) cycles of said
`input signal, wherein n is an integer greater than or equal to 1.
`Ex. 1001, 60:26–46.
`
`Level of Ordinary Skill in the Art
`
`Petitioner, supported by Dr. Subramanian’s testimony, proposes that a
`person of ordinary skill in the art at the time of the invention would have had
`“at least a bachelor’s degree in electrical engineering or a related subject and
`two or more years of experience in the field of RF circuit design.” Pet. 47
`(citing Ex. 1002 ¶ 25). Petitioner explains that “[l]ess work experience may
`be compensated by a higher level of education, such as a master’s degree.”
`Id. (citing Ex. 1002 ¶ 25).
`Patent Owner does not express a position on the level of ordinary skill
`in the art in the Preliminary Response. See generally Prelim. Resp.
`At this stage of the proceeding, we find Petitioner’s proposal
`consistent with the level of ordinary skill in the art reflected by the
`’444 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt
`Petitioner’s unopposed position as to the level of ordinary skill in the art for
`purposes of institution.
`
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`II.
`CLAIM CONSTRUCTION
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2020). The
`claim construction standard includes construing claims in accordance with
`the ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing
`claims in accordance with their ordinary and customary meaning, we take
`into account the specification and prosecution history. Phillips, 415 F.3d at
`1315–17.
`Additionally, only terms that are in controversy need to be construed,
`and these need be construed only to the extent necessary to resolve the
`controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of
`an inter partes review).
`At this preliminary stage, we need not construe expressly any claim
`terms because none are in dispute. See Vivid Techs., 200 F.3d at 803.
`
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`III. ANALYSIS
`35 U.S.C. § 314(a)
`
`Under 35 U.S.C. § 314(a), the Director has discretion to deny
`institution. In determining whether to exercise that discretion on behalf of
`the Director, we are guided by the Board’s precedential decision in NHK
`Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB
`Sept. 12, 2018) (precedential).
`In NHK, the Board found that the “advanced state of the district court
`proceeding” was a “factor that weighs in favor of denying” the petition
`under § 314(a). NHK, Paper 8 at 20. The Board determined that
`“[i]nstitution of an inter partes review under these circumstances would not
`be consistent with ‘an objective of the AIA . . . to provide an effective and
`efficient alternative to district court litigation.’” Id. (citing Gen. Plastic
`Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16–17
`(PTAB Sept. 6, 2017) (precedential as to § II.B.4.i)).
`“[T]he Board’s cases addressing earlier trial dates as a basis for denial
`under NHK have sought to balance considerations such as system efficiency,
`fairness, and patent quality.” Apple Inc. v. Fintiv Inc., IPR2020-00019,
`Paper 11 at 5 (PTAB Mar. 20, 2020) (precedential) (collecting cases). Fintiv
`sets forth six non-exclusive factors for determining “whether efficiency,
`fairness, and the merits support the exercise of authority to deny institution
`in view of an earlier trial date in the parallel proceeding.” Id. at 6. These
`factors consider:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
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`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Id.
`
`We discuss the parties’ arguments in the context of considering the
`above factors. In evaluating the factors, we take a holistic view of whether
`efficiency and integrity of the system are best served by denying or
`instituting review. Id.
`
` Whether the Court Granted a Stay or Evidence Exists
`That One May Be Granted If a Proceeding Is Instituted
`On the present record, neither party has produced evidence that a stay
`has been requested by either party or considered by the district court in the
`related litigation.6 See Pet. 82–85; Prelim. Resp. 4–7. Thus, this factor does
`not weigh in favor of or against exercising our discretion to deny institution.
`
`
`
`Proximity of the Court’s Trial Date to the Board’s
`Projected Statutory Deadline for a Final Written
`Decision
`The current scheduling order governing the related litigation indicates
`a trial date of February 7, 2022. Ex. 2003 (“Amended Scheduling Order”),
`3; see Pet. 83 (referring to February 7, 2022); Prelim. Resp. 7. The projected
`
`
`6 Patent Owner notes that Petitioner filed petitions challenging claims of
`only two of the twelve patents asserted by Patent Owner in the related
`litigation. Prelim. Resp. 5.
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`statutory deadline for a final written decision is prior to the trial date. Thus,
`this factor weighs against exercising our discretion to deny institution.
`
`
`
`Investment in the Parallel Proceeding by the Court and
`the Parties
`The Amended Scheduling Order reflects that a Markman hearing was
`scheduled for January 22, 2021, and that fact discovery opens on January 29,
`2021. Ex. 2003, 2. Petitioner asserts this schedule reflects that the related
`litigation is in its preliminary stage and the court has not yet issued any
`substantive orders related to the ’444 patent. Pet. 84. Patent Owner
`contends this schedule reflects that the parties and the court have invested
`significant resources in the related litigation, including preparing claim
`construction briefing. Prelim. Resp. 8–11.
`The “investment factor is related to the trial date factor, in that more
`work completed by the parties and court in the parallel proceeding tends to
`support the arguments that the parallel proceeding is more advanced, a stay
`may be less likely, and instituting would lead to duplicative costs.” Fintiv,
`Paper 11 at 10. Here, the related litigation is at a very early stage. The only
`substantive briefing submitted by the parties in the related litigation is their
`claim construction briefs. See Ex. 2003, 2. And, as relevant to the claims at
`issue here, the dispute involves only two terms recited in claim 3.7 Paper 7
`(“Petitioner’s Supplemental Notice Regarding Claim Construction”), 1–2.
`For one term, Petitioner proposes an express construction, while Patent
`Owner proposes plain and ordinary meaning; and, for the other term, the
`parties’ proposed constructions are very similar. Id. Additionally, Petitioner
`
`
`7 The two terms are “frequency down-conversion module” and “storage
`element.” Paper 7, 1–2.
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`acted diligently and without much delay to file the Petition on July 13, 2020
`(see Paper 4, 1), which is less than a month after service of Patent Owner’s
`preliminary infringement contentions (see Ex. 1018 (“ParkerVision, Inc.’s
`Disclosure of Preliminary Infringement Contentions,” dated June 26, 2020)).
`Pet. 84. On these facts, we find that the related litigation is at a very early
`stage and the investment by the court and the parties therein is relatively
`minimal. Thus, this factor weighs strongly against exercising our discretion
`to deny institution.
`
`
`
`Overlap Between Issues Raised in the Petition and in the
`Parallel Proceeding
`Patent Owner contends that, although there are twelve patents at issue
`in the related litigation, there are significant issues in common between this
`proceeding and the related litigation as it pertains to the ’444 patent. Prelim.
`Resp. 12. Specifically, Patent Owner asserts Petitioner relies upon the same
`primary references to challenge claims of the ’444 patent in the related
`litigation as asserted in the Petition, and Petitioner’s Preliminary Invalidity
`Contentions incorporate, by reference, the entirety of the Petition. Id. at 13
`(citing Ex. 2006 (excerpts of Defendant Intel Corporation’s Preliminary
`Invalidity Contentions)).
`Petitioner contends this proceeding will not duplicate the related
`litigation because the claims at issue do not overlap completely. Pet. 84–85.
`While Petitioner challenges claims 1, 3, and 5 here, Patent Owner asserts
`claims 2–5 in the related litigation. Id. (citing Ex. 1018 (“ParkerVision,
`Inc.’s Disclosure of Preliminary Infringement Contentions”)). Additionally,
`Petitioner contends it “also expects to assert in the district court litigation
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`additional grounds of invalidity that are not presented in [the] [P]etition.”
`Id. at 85.
`We find that there is a significant overlap between the issues raised in
`the Petition and the related litigation. Specifically, in addition to Patent
`Owner’s representation that Petitioner relies upon the same primary
`references,8 Petitioner incorporates the entirety of the Petition in its
`Preliminary Invalidity Contentions. Ex. 2006, 1.
`Additionally, two of the three claims challenged in the Petition
`(claims 3 and 5) also are asserted in the related litigation. We recognize that
`Petitioner includes claim 1 in the Petition and that Patent Owner has not
`asserted claim 1 in the related litigation. Nonetheless, claim 5, which is
`asserted in the related litigation, depends from claim 1, and, thus, to
`demonstrate that Petitioner practices claim 5, Patent Owner also will need to
`establish that Petitioner practices claim 1. Therefore, the addition of claim 1
`to the Petition does not alter, in any significant degree, the overlap of issues
`raised between the claims asserted in the related litigation and the
`Challenged Claims.9
`Further, we find it notable that claim 2 (an independent claim) and
`claim 4 (a claim that depends from claim 3) are not challenged in the
`Petition, although they are asserted by Patent Owner in the related litigation.
`
`
`8 The excerpts of Petitioner’s Invalidity Contentions submitted as
`Exhibit 2006 do not appear to include the prior art that forms the basis for
`Petitioner’s assertions in the related litigation (see generally Ex. 2006), but
`Petitioner has not sought leave to clarify the record in this proceeding, e.g.,
`via a preliminary reply.
`9 Similarly, the potential inclusion of additional grounds of invalidity in the
`related litigation does not detract from the fact that the grounds raised in the
`Petition also are raised in the related litigation.
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`Despite this difference raising a distinction in the overlap, we find the
`difference raises concerns of inefficiency in that even if we were to
`conclude, after a final written decision, that the Challenged Claims are
`unpatentable, our determination would not resolve the parties’ present
`dispute regarding the ’444 patent because claims 2 and 4 would remain for
`disposition by the district court.
`Thus, this factor weighs strongly in favor of exercising our discretion
`to deny institution.
`
` Whether the Petitioner and the Defendant in the Parallel
`Proceeding Are the Same Party
`Petitioner and Patent Owner are the defendant and plaintiff,
`respectively, in the related litigation. Prelim. Resp. 14. As we explain
`above, however, we are likely to reach the merits before the trial date in the
`district court. Thus, this factor does not weigh in favor of or against
`exercising our discretion to deny institution.
`
`
`
`Other Circumstances that Impact the Board’s Exercise of
`Discretion, Including the Merits
`Petitioner contends that “the merits of this [P]etition alone warrant
`institution.” Pet. 85. In particular, Petitioner relies upon Tayloe for teaching
`most of the limitations of the claims including a multiplexer/demultiplexer,
`but turns to either TI Datasheet (Ground 1) or Kawada (Ground 2) for
`teaching how “to implement Tayloe’s multiplexer/demultiplexer.” Id. at 43.
`And, as asserted by Petitioner, “Tayloe specifically refers to a TI
`‘SN74BCT3253D’ multiplexer,” which the current record shows is the
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`multiplexer taught by TI Datasheet. Id. at 38 n.5 (citing Ex. 1019 ¶ 12).10
`Thus, Petitioner contends Tayloe includes an express reference to TI
`Datasheet’s multiplexer/demultiplexer providing strong evidence of
`motivation to combine. Id. at 44.
`Patent Owner’s Preliminary Response does not address the merits of
`the Petition (see Prelim. Resp. 15 n.6 (explaining that the Preliminary
`Response only addresses the discretionary bases for denial of institution)),
`but instead argues that (1) “institution . . . will also give rise to substantial
`duplication of efforts” because the related litigation will continue in parallel
`and (2) because of the pending decision by the U.S. Supreme Court in the
`appeal of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir.
`2019), cert. granted sub nom. United States v. Arthrex, Inc., 2020 WL
`6037206 (Oct. 13, 2020), “institution of further [inter partes reviews] is ill
`advised at this time.” Id. at 15.
`On the present record before us, we are persuaded that the merits of
`the Petition appear strong. Although we recognize that the district court
`proceeding may occur in parallel, we find that this factor moderately weighs
`against exercising our discretion to deny institution.11
`
`
`10 Relying on the Honeycutt Declaration, Petitioner contends that the “BCT”
`in Tayloe’s disclosure is a typographical error and the correct lettering is
`“CBT” as reflected in TI Datasheet. Pet. 38 n.5 (citing Ex. 1019 ¶ 12).
`Petitioner’s argument and evidence, at present, are undisputed.
`11 Regarding Patent Owner’s argument as to the constitutionality of the
`appointments of the Administrative Patent Judges (see Prelim. Resp. 15–17
`(discussing this issue as part of Fintiv factor six as well as raising it
`separately as a reason to deny institution)), we decline to consider the
`argument because the U.S. Court of Appeals for the Federal Circuit
`addressed this issue in Arthrex.
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`IPR2020-01265
`Patent 7,110,444 B1
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` Weighing the Factors
`As discussed above, factors 1 and 5 weigh neutrally, factor 4 weighs
`in favor of exercising discretion, and factors 2, 3, and 6 weigh against
`exercising discretion to deny institution. Although factor 4 weighs strongly
`in favor of exercising discretion, on balance, factor 4 is outweighed by
`factors 2, 3, and 6 on the present record. In particular, the projected
`statutory deadline of a final written decision is prior to the district court’s
`trial date, the investment in the related litigation is relatively minimal, and
`the merits of the Petition appear strong. After weighing all of the factors and
`taking a holistic view of the relevant circumstances of this proceeding, we
`determine that, on balance, the factors favor not exercising discretion to
`deny institution under 35 U.S.C. § 314(a).
`
`Legal Standards – Obviousness
`
`The U.S. Supreme Court set forth the framework for applying the
`statutory language of 35 U.S.C. § 103(a) in Graham v. John Deere Co. of
`Kansas City, 383 U.S. 1, 17–18 (1966):
`Under § 103[(a)], the scope and content of the prior art are to be
`determined; differences between the prior art and the claims at
`issue are to be ascertained; and the level of ordinary skill in the
`pertinent art resolved. Against this background, the
`obviousness or nonobviousness of the subject matter is
`determined. Such secondary considerations as commercial
`success, long felt but unsolved needs, failure of others, etc.,
`might be utilized to give light to the circumstances surrounding
`the origin of the subject matter sought to be patented.
`As explained by the Supreme Court in KSR International Co. v. Teleflex
`Inc.:
`
`Often, it will be necessary for a court to look to interrelated
`teachings of multiple patents; the effects of demands known to
`
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`IPR2020-01265
`Patent 7,110,444 B1
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`the design community or present in the marketplace; and the
`background knowledge possessed by a person having ordinary
`skill in the art, all in order to determine whether there was an
`apparent reason to combine the known elements in the fashion
`claimed by the patent at issue. To facilitate review, this
`analysis should be made explicit.
`550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.”)).
`“Whether an ordinarily skilled artisan would have been motivated to
`modify the teachings of a reference is a question of fact.” WBIP, LLC v.
`Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted).
`“[W]here a party argues a skilled artisan would have been motivated to
`combine references, it must show the artisan ‘would have had a reasonable
`expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier
`Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
`Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)).
`
` Obviousness over Tayloe and TI Datasheet
`Petitioner asserts the combination of Tayloe and TI Datasheet would
`have rendered the subject matter of claims 1, 3, and 5 obvious to one of
`ordinary skill in the art at the time of the invention. Pet. 43–47 (discussing
`motivation to combine), 47–78 (discussing the application of the art to the
`Challenged Claims).
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`Level of Ordinary Skill in the Art
`
`For the reasons discussed above, on the present record at this stage of
`the proceeding, we find that one of ordinary skill in the art at the time of the
`invention would have “at least a bachelor’s degree in electrical engineering
`or a related subject and two or more years of experience in the field of RF
`circuit design.” See supra § I.G.
`
`
`
`Scope and Content of the Prior Art
`a.
`Tayloe
`Tayloe is directed to a direct conversion receiver (also referred to as a
`“product detector”) “for converting a signal to baseband.” Ex. 1004,
`code (57); see id. at 1:51–52 (describing Figure 3). Tayloe explains that its
`direct conversion receiver
`includes a commutating switch which serves to sample an RF
`waveform four times per period at the RF frequency. The
`samples are integrated over time to produce an average voltage
`at 0 degrees, 90 degrees, 180 degrees and 270 degrees. The
`average voltage at 0 degrees is the baseband in-phase
`signal . . . .
`Id. at code (57). Tayloe teaches that, “[a]lternatively, to increase gain, the
`0 degree average can be differentially summed with the 180 degree average
`to form the baseband in-phase signal . . . .” Id. Tayloe states that “[d]irect
`conversion receivers are desirable in part because they convert signals of
`interest directly to baseband (or near zero hertz) from a radio frequency (RF)
`or an intermediate frequency (IF).” Id. at 1:10–13.
`
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`Tayloe’s Figure 3 is reproduced below:
`
`
`Tayloe’s Figure 3 “shows a direct conversion receiver.” Ex. 1004, 1:51–52.
`Tayloe teaches the following regarding the operation of the direct
`conversion receiver shown in the Figure 3:
`[A]n RF or IR signal f1 is received at resistor 32. . . . After
`passing through resistor 32, the input signal is received by
`commutating switch 38 at input 36. Commutating switch 38
`switches input 36 to outputs 42, 44, 46, and 48. The rate at
`which commutating switch 38 operates is controlled by a signal
`present at control input 40. In the preferred embodiment as
`shown in FIG. 3, the control signal input to control input 40 is
`substantially equal to four times the local oscillator frequency
`that would exist in a simple direct conversion receiver. As a
`result, input 36 is switched to each of the four outputs
`substantially once during each period of the input signal f1.
`
`In the preferred embodiment, commutating switch 38
`remains closed at each of the four outputs for substantially
`90 degrees at the frequency of the input signal. In alternate
`embodiments, commutating switch 38 remains closed at each of
`the four outputs for less than 90 degrees.
`
`During the time that commutating switch 38 connects
`input 36 to output 42, charge builds up on capacitor 72.
`Likewise, during the time commutating switch 38 connects
`input 36 to output 44, charge builds up on capacitor 74. The
`same principle holds true for capacitors 76 and 78 when
`commutating switch 38 connects input 36 to outputs 46 and 48
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`respectively. As commutating switch 38 cycles through the
`four outputs, capacitors 72–78 charge to voltage val
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