Petition for Inter Partes Review of U.S. Patent No. 7,110,444
`IPR2020-01265
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`Docket No.: 0107131.00696US1
`Filed on behalf of Intel Corporation
`By: Grant K. Rowan, Reg. No. 41,278
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`1875 Pennsylvania Avenue, NW
`Washington, DC 20006
`Telephone: (202) 663-6000
`Tel: (617) 526-6000
`Email: grant.rowan@wilmerhale.com
`haixia.lin@wilmerhale.com
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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 IPR2020-01265
`____________________________________________
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`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,110,444
`CHALLENGING CLAIMS 1, 3, 5
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
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`V. 
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`TABLE OF CONTENTS
`I. 
`INTRODUCTION ........................................................................................... 1 
`II.  MANDATORY NOTICES ............................................................................. 7 
`A. 
`Real Party-in-Interest ............................................................................ 7 
`B. 
`Related Matters ...................................................................................... 7 
`C. 
`Counsel .................................................................................................. 7 
`D. 
`Service Information ............................................................................... 8 
`III.  CERTIFICATION OF GROUNDS FOR STANDING .................................. 8 
`IV.  OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 9 
`A. 
`Prior Art ................................................................................................. 9 
`B. 
`Grounds for Challenge ........................................................................ 10 
`BACKGROUND TECHNOLOGY ............................................................... 10 
`A.  Wireless Communications Signals ...................................................... 10 
`B. 
`“Modulating” Signals for Wireless Communications ......................... 13 
`1. 
`Amplitude Modulation .............................................................. 13 
`2. 
`Phase Modulation ...................................................................... 14 
`“Up-Conversion” and “Down-Conversion” ........................................ 15 
`C. 
`Circuitry Components Used in Wireless Devices ............................... 16 
`D. 
`VI.  OVERVIEW OF THE ’444 PATENT .......................................................... 19 
`A.  Alleged Problem .................................................................................. 19 
`B. 
`Alleged Invention ................................................................................ 19 
`C. 
`Patent Owner Added Insignificant Limitations to Obtain the
`Challenged Claims .............................................................................. 24 
`VII.  CLAIM CONSTRUCTION .......................................................................... 26 
`A. 
`“frequency down-conversion module” (Claim 1) ............................... 26 
`B. 
`“frequency down-conversion module” (Claim 3) ............................... 28 
`C. 
`“subtractor module” (Claims 1, 3) ...................................................... 29 
`VIII.  OVERVIEW OF THE PRIOR ART REFERENCES ................................... 31 
`A. 
`Tayloe .................................................................................................. 31 
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
`IPR2020-01265
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`B. 
`TI Datasheet ........................................................................................ 39 
`Kawada ................................................................................................ 41 
`C. 
`D.  Motivation to Combine ....................................................................... 43 
`IX.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 47 
`X. 
`SPECIFIC GROUNDS FOR PETITION ...................................................... 47 
`A.  Ground I: Claims 1, 3, and 5 Are Obvious Over Tayloe in
`View of TI Datasheet .......................................................................... 47 
`1. 
`Independent Claim 1 ................................................................. 47 
`2. 
`Independent Claim 3 ................................................................. 74 
`3. 
`Dependent Claim 5 ................................................................... 78 
`Ground II: Claims 1, 3, and 5 Are Obvious Over Tayloe in
`View of Kawada .................................................................................. 78 
`XI.  THE BOARD SHOULD INSTITUTE REVIEW ......................................... 82 
`A. 
`Petitioner Timely Filed This Petition .................................................. 82 
`B. 
`The Examiner Committed A Material Error ....................................... 86 
`XII.  CONCLUSION .............................................................................................. 88 
`
`B. 
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
`IPR2020-01265
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`Petitioner Intel Corporation (“Intel”) respectfully requests inter partes
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`review (“IPR”) of claims 1, 3, and 5 of USP 7,110,444 (“’444 patent”) (Ex. 1001).
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`I.
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`INTRODUCTION
`The ’444 patent, which claims a priority date of August 4, 1999, is directed
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`to methods for performing down-conversion, a process for converting a high-
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`frequency signal to a low-frequency signal (called the “baseband signal”) that can
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`be processed by a mobile device. Down-conversion was indisputably well-known
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`before the ’444 patent, and the structure recited in the challenged claims for
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`performing down-conversion—including the two elements that Patent Owner
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`added to obtain allowance—was also well-known. Thus, the challenged clams are
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`invalid.
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`Electronic devices, like computers and cellphones, process data using
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`baseband signals. But baseband signals cannot, as a practical matter, be
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`transmitted wirelessly from one device to another. Accordingly, a baseband signal
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`must be “modulated” onto a high-frequency radio-frequency (RF) signal called a
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`“carrier” signal to be transmitted wirelessly. When that high-frequency signal is
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`received by an electronic device, the receiving device must then “down-convert”
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`the signal back to the low-frequency baseband signal, so that the device can
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`process the transmitted data. This down-conversion process was indisputably
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`known for decades before the ’444 patent.
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`The challenged claims recite a basic structure for performing down-
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`conversion. Figure 70A (below)1 shows a wireless device that has an antenna 7072
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`for receiving a high-frequency RF signal 7082:
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`Ex. 1001-’444, Fig. 70A
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`1 All annotations and emphasis have been added unless otherwise noted.
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`2
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
`IPR2020-01265
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`This RF signal (purple) is processed by three modules: two frequency down-
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`conversion modules 7002 and 7006 (red and green) and a subtractor module 7020
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`(light blue). The down-conversion modules down-convert the high-frequency RF
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`signal to produce two down-converted signals 7007 and 7009 (red and green),
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`which are then subtracted from each other by the subtractor module to produce the
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`baseband signal (yellow).
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`
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`During prosecution, the Examiner rejected Patent Owner’s claims because
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`the basic structure of two frequency down-conversion modules and a subtractor
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`module was disclosed by USP 6,018,553 (“Sanielevici”) (Ex. 1006). To overcome
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`the rejection, Patent Owner amended its claims to add two incidental limitations:
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`an (n+0.5)-cycle timing delay between two signals that control the down-
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`conversion modules (claim 1), and a requirement that each frequency down-
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`conversion module include a switch and a storage element (claim 3). Based on
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`these amendments, the Examiner allowed the challenged claims.
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`But these structures of the challenged claims—including the two limitations
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`added for allowance—were well-known in the prior art. USP 6,230,000
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`(“Tayloe”) (Ex. 1004) discloses and/or renders obvious all the claimed features.
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`Just like Figure 70A of the ’444 patent, Figure 3 of Tayloe below shows two
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`frequency down-conversion modules (green and red) and a subtractor module
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
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`(light blue):
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`Ex. 1004-Tayloe, Fig. 3.
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`
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`And just as recited in the challenged claims, Tayloe discloses that each of the
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`frequency down-conversion modules includes a switch (within the switch 38
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`(gray)) and a storage element (capacitor 72 or 76 (brown)). It also discloses and/or
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`renders obvious the claimed timing delay feature—that the control signals for the
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`frequency down-conversion modules are delayed relative to each other by 0.5
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`cycles. The first frequency down-conversion module (red) is labeled “180°,” and
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`the second frequency down-conversion module (green) is labeled “0°,” reflecting a
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`half-cycle delay of the control signals (pink) supplied to the switch 38 (gray). This
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`is functionally indistinguishable from the phase relationship required by claim 1.
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`To the extent Patent Owner alleges that the switch 38 (gray) in Tayloe does
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`not disclose the specific structure of the switches of the claimed down-conversion
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
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`modules, these features were also disclosed in two other prior art references: a
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`Texas Instruments (TI) Datasheet (Ex. 1005) and a patent to Kawada (Ex. 1008).
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`Both disclose an analog multiplexer/demultiplexer with the structure of the
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`claimed switches. A person of ordinary skill in the art (POSITA) would have had
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`a strong motivation to combine Tayloe with either reference because Tayloe
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`expressly teaches using a multiplexer/demultiplexer—specifically the one
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`described in TI Datasheet—in place of the switch 38. (Ex. 1004-Tayloe, 5:32-37.)
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`Thus, Tayloe in combination with either TI Datasheet or Kawada renders the
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`claims obvious.
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`Although Tayloe is cited on the face of the ’444 patent, it was buried among
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`over 900 references submitted by Patent Owner to the Patent Office. Tayloe was
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`never mentioned during the prosecution, and there is no evidence that the
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`Examiner substantively considered Tayloe at all. The Examiner’s failure to
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`consider Tayloe was material error because Tayloe explicitly discloses and/or
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`renders obvious the very limitations that the Examiner relied on to allow the
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`challenged claims. See Advanced Bionics, LLC v. MED-EL Elektromedizinische
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`Gerate GmbH, IPR2019-01469, 2020 WL 740292, at *3 n.9 (Feb. 13, 2020) (“[A]
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`material error may include misapprehending or overlooking specific teachings of
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`the relevant prior art where those teachings impact patentability of the challenged
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
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`claims.”); Amazon.com, Inc., v. M2M Solutions LLC, IPR2019-01205, 2020 WL
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`44835, at *7 (Jan. 27, 2020) (instituting where “the prosecution history record
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`shows that the various IDSs include at least about a few hundred references” and
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`[n]othing in the record indicate[d] that the Examiner substantively considered …
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`the prior art”).
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`The Patent Owner—which has filed two suits against Intel on a total of 10
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`patents in the Western District of Texas—will no doubt argue for discretionary
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`denial based on the pending litigation. That argument should be rejected. Intel is
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`filing this Petition promptly, just over five months after Patent Owner first asserted
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`the ’444 patent against Intel, and within three weeks after Patent Owner served its
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`preliminary infringement contentions. The ’444 patent is 394 pages long, and Intel
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`has moved promptly to analyze the ’444 patent and the other asserted patents,
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`identify invalidating prior art, and prepare the invalidity grounds presented in this
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`Petition. Intel could not reasonably have been expected to move more quickly.
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`Moreover, the district court litigation remains in the very early stages: the initial
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`case management conference was held just recently (on June 26), fact discovery
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`does not commence until January 21, 2021, and trial is scheduled for February 7,
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`2022. To deny institution under these circumstances would effectively amount to a
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`finding that inter partes review is no longer available in jurisdictions with a fast
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
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`time to trial—a result that would be directly contrary to the purpose of the AIA.
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`
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`Accordingly, Intel respectfully requests that the Board institute inter partes
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`review and cancel claims 1, 3, and 5 of the ’444 patent. Since the ’444 patent
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`currently is asserted in district court litigation, in view of § 314(a), Petitioner
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`requests an expedited Notice of Filing Date Accorded (NFDA).
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`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`Petitioner Intel Corporation is the real party-in-interest for this IPR Petition.
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`B. Related Matters
`Petitioner plans to file a Petition for inter partes review of claims of USP
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`7,539,474 (“the ’474 patent”). Patent Owner owns both the ’444 and ’474 patents
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`and is asserting them against Petitioner in ParkerVision, Inc. v. Intel Corp., No.
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`6:20-cv-108-ADA (W.D. Tex.).
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`C. Counsel
`Lead Counsel:
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`Grant K. Rowan (Registration No. 42,178)
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`Backup Counsel: Haixia Lin (Registration No. 61,318)
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`Brian Lambson (Registration No. 72,570)
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`Michael J. Summersgill (pro hac vice to be requested)
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`
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`Todd C. Zubler (pro hac vice to be requested).
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
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`D.
`Service Information
`E-mail:
`grant.rowan@wilmerhale.com
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`haixia.lin@wilmerhale.com
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`brian.lambson@wilmerhale.com
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`michael.summersgill@wilmerhale.com
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`todd.zubler@wilmerhale.com
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`WH-ParkerVision-IPRs@wilmerhale.com
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`Post and hand delivery: Wilmer Cutler Pickering Hale and Dorr LLP
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`1875 Pennsylvania Avenue, NW
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`Washington, DC 20006
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`Telephone: (202) 663-6000
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`Fax: (202) 663-6363
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`Petitioner consents to service via email at the email addresses above.
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`III. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
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`review is sought is available for inter partes review and that Petitioner is not
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`barred or estopped from requesting an inter partes review challenging the claims
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`on the grounds identified in this Petition.
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
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`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
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`claims 1, 3, and 5 of the ’444 patent.
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`A.
`Prior Art
`Petitioner relies upon the patents and printed publication in the Table of
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`Exhibits, including:
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`1.
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`USP 6,230,000 (“Tayloe”) (Ex. 1004), filed on October 15, 1998 and
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`is prior art under 35 U.S.C. §102(e)2.
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`2.
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`SN74CBT3253D Dual 1-of-4 FET Multiplexer/Demultiplexer (rev.
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`ed. May 1998) (“TI Datasheet”) (Ex. 1005) is a printed publication
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`that was publicly available no later than December 1998 and is prior
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`art under at least 35 U.S.C. §102(a).
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`3.
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`USP 4,985,647 (“Kawada”) (Ex. 1008) issued on January 15, 1991
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`and is prior art under 35 U.S.C. §102(b).
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`2 Because the ’444 patent’s filing date precedes the AIA’s effective date,
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`Petitioners have used the pre-AIA statutory framework to refer to the prior art.
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
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`B. Grounds for Challenge
`Petitioner submits that claims 1, 3, and 5 of the ’444 patent are invalid under
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`35 U.S.C. §103 over Tayloe in view of either TI Datasheet or Kawada. This
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`Petition, supported by the declaration of Dr. Vivek Subramanian (“Decl.”) (Ex.
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`1002), demonstrates there is a reasonable likelihood that Petitioner will prevail
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`with respect to at least one challenged claim and that each challenged claim is
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`invalid. See 35 U.S.C. §314(a).
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`V. BACKGROUND TECHNOLOGY
`A. Wireless Communications Signals
`Wireless devices (e.g., cellular phones) exchange information by
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`transmitting and receiving electromagnetic signals. These signals are
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`communicated from one device’s transmitter to another device’s receiver. The
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`challenged claims of the ’444 patent focus on devices for receiving signals
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`transmitted from another device. (Ex. 1001-’444, claims 1, 3, and 5; Ex. 1002-
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`Decl. ¶26.)
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
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`Before transmission, information (e.g., voice information of a telephone call)
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`exists as a “baseband signal,” which has a relatively low frequency. The baseband
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`signal is often a digital signal, and to transmit the baseband signal wirelessly, the
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`digital signal often is converted into an analog signal. As shown below, an analog
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`signal is a continuous waveform that oscillates at a particular frequency between
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`maximum and minimum values:
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`(Id. ¶¶27-28.)
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`The analog signal’s “amplitude” corresponds to the amount that the signal
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`deviates between its “zero” or equilibrium value to its maximum or minimum
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`value. The signal’s “phase” refers to the location of the signal within its cycle as it
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`oscillates. A full cycle of a signal is defined as spanning 360º. In the example
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`above, the signal starts at 0º, reaches its peak is at 90º, crosses zero at 180º, and
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
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`completes its cycle at 360º. The figure below shows two analog signals that have
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`the same frequency and amplitude but have phases that are shifted with respect to
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`each other by 90º (0.25 cycles). (Id. ¶29.)
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`Shown below are two signals that are 180º (0.5 cycles) out of phase with each
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`other.
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`Because these signals are opposite relative to each other, they are called
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`“inverted.” (Id. ¶30.)
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`B.
`“Modulating” Signals for Wireless Communications
`Because baseband signals have relatively low frequencies, they cannot be
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`effectively transmitted through the air between wireless devices. Instead, a
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`baseband signal must be “imprinted” onto a higher frequency signal—called a
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`“carrier” signal—that can be transmitted more easily. This carrier signal “carries”
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`the baseband signal through the air from one device to another device. (Id. ¶31.)
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`This process of “imprinting” a lower frequency baseband signal onto a
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`higher frequency carrier signal is called “modulation.” Modulation is achieved by
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`modifying the frequency, phase, and/or amplitude of the carrier signal based on the
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`frequency, phase, and/or amplitude of the baseband signal. The following
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`describes well-known modulation techniques. (Id. ¶32.)
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`1.
`Amplitude Modulation
`As shown below, modifying the carrier signal’s amplitude based on the
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`amplitude of the baseband signal is called “amplitude modulation.” In this case,
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`the modified carrier signal is called an “amplitude modulated signal,” which can be
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`transmitted wirelessly over the air. (Id. ¶33.)
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`The receiver “knows” the amplitude of the unmodulated carrier signal ahead of
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`time. Thus, when it receives the amplitude modulated signal, it can recover the
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`original baseband signal from the modulated signal by comparing the amplitudes
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`of the modulated signal and unmodulated carrier signal. (Id. ¶34.)
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`2.
`Phase Modulation
`A baseband signal can also be transmitted wirelessly to another device using
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`
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`phase modulation. In this case, the carrier signal’s phase is modified based on the
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`phase of the baseband signal, as shown below. (Id. ¶35.)
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`This modified carrier signal is called a “phase modulated signal,” which can be
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`wirelessly transmitted. As with amplitude modulation, the receiver knows the
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`phase of the carrier signal beforehand and can recover the baseband signal by
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`comparing the phases of the modulated signal and unmodulated carrier signal. (Id.
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`¶36.)
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`Both amplitude and phase modulation were well-known before the ’444
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`patent. (Id. ¶37.)
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`C.
`“Up-Conversion” and “Down-Conversion”
`Modulating a high frequency carrier signal with a low frequency baseband
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`signal to produce a high frequency modulated signal is called “up-conversion.”
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
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`The ’444 patent refers to this modulated signal as a “radio frequency” or “RF”
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`signal. After the modulated signal is transmitted to, and received by, a device’s
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`receiver, it is converted back to the low frequency baseband signal so that the
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`information in the baseband signal can be processed. This method is called
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`“down-conversion.” The challenged claims of the ’444 patent are directed to
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`down-converting a modulated RF signal back to a baseband signal. Methods for
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`performing down-conversion have been well-known before the ’444 patent. (Id.
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`¶38.)
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`D. Circuitry Components Used in Wireless Devices
`Switch. As shown below, a “switch” (gray) is an electronic component that
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`controls the flow of a signal in a circuit between an input node (purple) and an
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`output node (orange).
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`Ex. 1005-TI Datasheet, 2
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`(Ex. 1002-Decl. ¶39.) A control signal (pink) controls the switch to be “open” or
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`“closed.” When the switch is “open,” the signal does not flow through the switch.
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`When it is “closed,” the signal flows unimpeded through the switch. (Id. ¶40.)
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`Figure 1B of the ’444 patent (below) shows how a switch (gray) is often
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`represented in circuit diagrams. The switch includes input and output nodes
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`(purple and orange) and is controlled by a control signal (pink). (Id. ¶41.)
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`Capacitor. A “capacitor” (shown below) stores energy (or charge) in a
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`circuit.
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` (Id. ¶42.)
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` Amplifier. An “amplifier” is an electronic component that increases the
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`magnitude of a signal. A “differential amplifier” is a specific type of amplifier that
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`receives two input signals, determines the difference in magnitude between the
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`signals, and amplifies—i.e., increases the magnitude of—that difference.
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`As shown below, a differential amplifier is typically depicted with
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`“inverting” (“-”) and “non-inverting” (“+”) inputs for the first and second signals,
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`respectively.
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` The differential amplifier outputs an amplified signal representing the difference
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`in magnitudes between the first and second signals. Because differential amplifiers
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`determine the difference in magnitude between two signals, they are often called
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`“subtractors.” (Id. ¶43-44.)
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`Petition for Inter Partes Review of U.S. Patent No. 7,110,444
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`All of these components, which are recited in the ’444 patent, were well
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`known before the ’444 patent. (Id. ¶45.)
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`VI. OVERVIEW OF THE ’444 PATENT
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`A. Alleged Problem
`The ’444 patent purports to address problems in receivers used in wireless
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`networks. While the patent acknowledges that “various components” and
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`“schemes” for down-converting signals received over wireless networks existed at
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`the time of the claimed invention (Ex. 1001-’444, 2:3-7), it describes conventional
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`wireless network receivers as “complex” and requiring “a large number of circuit
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`parts,” which are costly and “result in higher power consumption.” (Id., 1:65–2:3;
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`Ex. 1002-Decl. ¶46.)
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`B. Alleged Invention
`The ’444 patent specification purportedly teaches an improved wireless
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`receiver that includes at least one “universal frequency translation [UFT] module
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`that frequency down-converts a received electromagnetic (EM) signal.” (Ex.
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`1001-’444, 2:19-21, 8:38–43, 9:30–32; Ex. 1002-Decl. ¶47.)
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`Challenged claims 1, 3, and 5 are directed to the wireless receiver shown in
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`Figure 70A (below), which includes two “frequency down-conversion modules”
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`having UFTs for down-converting a high frequency RF input signal to a low
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`frequency baseband signal. (Ex. 1002-Decl. ¶48.)
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`Ex. 1001-’444, Fig. 70A
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`
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`The first down-conversion module 7002 (red) down-converts the high frequency
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`RF input signal 7082 (purple) into a first down-converted signal 7098 (red). (Ex.
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`1001-’444, 35:5-36:13.) Similarly, the second down-conversion module 7006
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`(green) down-converts the input signal 7082 (purple) into a second down-
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`converted signal 7001 (green). (Id., 36:3-49.) Then, a “subtractor module” (i.e.,
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`differential amplifier 7020) (light blue) subtracts the first and second down-
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`converted signals to generate a “single channel-down converted signal” 7084
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`(yellow). (Id., 37:3-8; Ex. 1002-Decl. ¶¶49-51.)
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`The first and second down-conversion modules in Figure 70A include
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`capacitors 7074 and 7076 (brown), respectively, and UFT modules 7026 and 7038
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`(gray), respectively. Each UFT module comprises a switch controlled by a control
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`signal (control signal 7090 or 7092), as shown below:
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`Ex. 1001-’444, Fig. 1B
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`
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`(Ex. 1001-’444, 8:62-64 (“Generally, the UFT module 103 includes a switch 106
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`controlled by a control signal 108.”), 36:3-13, 36:38-49.) Accordingly, the first
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`and second down-conversion modules in Figure 70A each include a switch
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`controlled by a control signal. Moreover, the control signal for the second down-
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`conversion module is inverted relative to the control signal for the second down-
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`conversion module. (Id., 38:61-63 (“I control signal 7090 and inverted I control
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`signal 7092 operate to down-convert the I-phase portion of an input I/Q modulated
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`RF signal”). Thus, these control signals are 0.5 cycles (180º) out of phase. (Ex.
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`1002-Decl. ¶¶51-52.)
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`The patent explains that the first and second down-conversion modules in
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`Figure 70A can have two alternative configurations of switches and capacitors.
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`
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`Ex. 1001-’444, Fig. 20A
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`
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`Ex.1001-’444, Fig. 20A-1
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`Namely, as expressly shown in Figure 70A, the two down-conversion modules can
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`have the configuration shown in Figure 20A-1 (above right), where the capacitor
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`(brown) is in series with the input signal (purple), and the switch (gray) is shunted
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`to ground. (Ex. 1001-’444, 9:53-55, 36:3-13, 36:38-49, Fig. 70A.) However,
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`“[t]he electronic alignment of the circuit components is flexible” (Id., 9:48-49),
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`and in the alternative configuration shown in Figure 20A (above left), the switch
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`(gray) is in series with the input signal (purple), and the capacitor (brown) shunted
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`to ground. (Id., 9:49-51; Ex. 1002-Decl. ¶¶53-54.)
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`Representative claim 1 is directed to the down-conversion modules and
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`subtractor module shown in Figure 70A:
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`A wireless modem apparatus, comprising:
`1.
`a receiver for frequency down-converting an input signal including,
`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;
`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
`a subtractor module that subtracts said second down-converted signal
`from said first down-converted signal and outputs a down-converted signal;
`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-’444, claim 1; Ex. 1002-Decl. ¶55.)
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`According to the patent, wireless receivers with UFT modules have various
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`advantages, including “lower power consumption, longer battery life, fewer parts,
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`lower cost, less tuning, and more effective signal transmission and reception.”
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`(Ex.1001-’444, 2:32–36.) The patent states that these advantages are possible
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`because the UFT module “enables direct frequency conversion in an efficient
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`manner with minimal frequency conversion in an efficient manner with minimal
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`signal distortion.” (Id., 2:36–39.) But the patent does not explain how the claimed
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`invention achieves these purported advantages. The patent’s lengthy specification
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`(nearly 400 pages) describes other concepts—such as under-sampling and re-
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`radiation—that were also well-known but that are not recited in the challenged
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`claims. (Ex. 1002-Decl. ¶56.)
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`C.
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`Patent Owner Added Insignificant Limitations to Obtain the
`Challenged Claims
`Challenged claims 1, 3, and 5 were allowed based on insignificant and well-
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`known limitations added to the end of claims 1 and 3. The Examiner determined
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`that the two frequency down-conversion modules and subtractor module recited in
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`claims 1 and 3 were well-known and allowed independent claims 1 and 3 (and
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`claim 5 which depends from claim 1) only based on two additional features:
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`(1) one control signal being delayed relative to another control signal (claim 1);
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`and (2) each of the down-conversion modules comprising a switch and a storage
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`element (claim 3). However, these claims never should have been allowed because
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`those features are clearly disclosed and/or rendered obvious by Tayloe (Ex. 1004)
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`and the other prior art cited in this Petition. (Ex. 1002-Decl. ¶57.)
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`More specifically, challenged claims 1, 3, and 5 correspond to application
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`claims 42, 44, and 46, which originally depended from application claim 41. (Ex.
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`1003-File History, 669 (06/09/03 Preliminary Amendment).) Application claim 41
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`included the first three elements of challenged claims 1 and 3: a first frequency
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`down-conversion module, a second frequency down-conversion module, and a
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`subtractor module. Dependent application claim 42 recited the last limitation of
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`challenged claim 1: “wherein said second control signal is delayed relative to said
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`first control signal by (0.5+n) cycles of said input signal, wherein n is an integer
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`greater than or equal to 1,” and dependent application claim 44 recited the last
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`limitation of challenged claim 3: “wherein said first and said second frequency
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`down-conversion modules each comprise a switch and a storage element.” (Id.;
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`Ex. 1002-Decl. ¶59.)
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`The Examiner rejected independent application claim 41 as anticipated by
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`USP 6,018,553 (“Sanielevici”) (Ex. 1006), but indicated that dependent application
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`claims 42 and 44 contained allowable subject matter. (Ex. 1003-File History, 689
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`(03/30/04 Office Action); Ex. 1002-Decl. ¶¶59-60.)
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`In response to the rejection, Applicant made no attempt to distinguish claim
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`41 from Sanielevici. Instead, per the Examiner’s suggestion, Applicant simply
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`cancelled claim 41 and rewrote dependent claims 42 and 44 (challenged claims 1
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`and 3) in independent form by including all of the features of claim 41. Applicant
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`also amended application claim 46 (challenged claim 5) to depend from claim 42
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`(challenged claim 1).