IPR2020-01265
`U.S. Patent No. 7,110,444
`PO’s Preliminary Response
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`Intel Corporation
` Petitioner
`
` v.
`
`ParkerVision, Inc.
`Patent Owner
`
`U.S. Patent No. 7,110,444
`Issue Date: September 19, 2006
`Title: WIRELESS LOCAL AREA NETWORK (WLAN) USING
`UNIVERSAL FREQUENCY TRANSLATION TECHNOLOGY
`INCLUDING MULTI-PHASE EMBODIMENTS AND
`CIRCUIT IMPLEMENTATIONS
`
`Inter Partes Review No. IPR2020-01265
`
`PATENT OWNER’S AMENDED PRELIMINARY RESPONSE TO
`PETITION FOR
`INTER PARTES REVIEW OF UNITED STATES PATENT NO. 7,110,444
`
`
`U.S. Patent No. 7,110,444
`PO’s Preliminary Response
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`Intel Corporation
` Petitioner
`
` v.
`
`ParkerVision, Inc.
`Patent Owner
`
`U.S. Patent No. 7,110,444
`Issue Date: September 19, 2006
`Title: WIRELESS LOCAL AREA NETWORK (WLAN) USING
`UNIVERSAL FREQUENCY TRANSLATION TECHNOLOGY
`INCLUDING MULTI-PHASE EMBODIMENTS AND
`CIRCUIT IMPLEMENTATIONS
`
`Inter Partes Review No. IPR2020-01265
`
`PATENT OWNER’S AMENDED PRELIMINARY RESPONSE TO
`PETITION FOR
`INTER PARTES REVIEW OF UNITED STATES PATENT NO. 7,110,444
`
`
`
`
`
`IPR2020-1265 (Patent No. 7,110,444)
`PO’s Preliminary Response
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`TABLE OF CONTENTS
`
`B.
`
`TABLE OF AUTHORITIES ................................................................................... iii
`PATENT OWNER’S EXHIBIT LIST .................................................................... iv
`I.
`Introduction ...................................................................................................... 1
`II.
`The Board Should Exercise its Discretion and Deny Institution Under 35
`U.S.C. § 314(a) and 37 C.F.R. § 42.108(b) ..................................................... 2
`A.
`Factor 1—The District Court Has Not Granted A Stay, And There Is
`No Evidence That The District Court Will Grant A Stay Even If A
`Proceeding Is Instituted ......................................................................... 4
`Factor 2—Because The Texas Cases Will Be Tried Before The
`Board’s Projected Statutory Deadline For A Final Written Decision,
`The Board Should Deny Institution ...................................................... 7
`Factor 3—The Parties And The Court Have Invested Significant
`Resources In The Texas Cases, Favoring Discretionary Denial .......... 8
`Factor 4—Significant Overlap Between Issues Raised In The Petition
`And In The Texas Cases Supports Denial ...........................................12
`Factor 5—The Petitioner And The Defendant In The Parallel
`Proceeding Are The Same Party, Supporting Denial ..........................14
`Factor 6—Other Circumstances That Impact The Board’s Exercise Of
`Discretion Show That Denial Is Appropriate At This Time ...............15
`III. Additional Grounds For Denying Institution ................................................16
`A.
`Inter Partes Review Should Not Be Instituted Because Of
`Constitutional Issues Under The Appointments Clause Of Article II 16
`IV. Conclusion .....................................................................................................17
`
`C.
`
`D.
`
`E.
`
`F.
`
`i
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`
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`IPR2020-1265 (Patent No. 7,110,444)
`PO’s Preliminary Response
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. Fintiv, Inc.
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ........................... 1, 3, 11, 14
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019) .......................................................................... 17
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`S.Ct. No. 19-1458 ............................................................................................... 16
`E-One, Inc. v. Oshkosh Corp.,
`IPR2019-00161, Paper 16 (P.T.A.B. May 15, 2019) ........................................... 8
`E-One,
`IPR2019-00162, Paper 16 ................................................................................... 11
`Fintiv,
`IPR2020-00019, Paper 15 (March 20, 2020) ............................................... 11, 13
`Google LLC v. Personalized Media Commc’ns, LLC,
`IPR2020-00720, Paper 16 (P.T.A.B. Aug. 31, 2020) ........................................... 3
`Google LLC, v. Uniloc 2017,
`IPR2020-00115, Paper 8 ................................................................................. 4, 11
`Intel Corp. v. VLSI Tech. LLC,
`IPR2020-00106, Paper 17 (P.T.A.B. May 5, 2020) ............................................. 8
`Intercollegiate Broad. Sys, Inc. v. Copyright Royalty Bd.,
`684 F.3d 1332 (D.C. Cir. 2012) .......................................................................... 17
`Kerr Machine Co. d/b/a Kerr Pumps v. Vulcan Industrial Holdings,
`LLC
`6-20-cv-00200 (W.D. Tex. Aug. 2, 2020) ........................................................ 6, 7
`
`ii
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`
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`IPR2020-1265 (Patent No. 7,110,444)
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`Multimedia Content Mgmt. LLC v. Dish Network Corp.,
`No. 6:18-CV-00207-ADA, 2019 U.S. Dist. LEXIS 198875 (W.D.
`Tex. Jan. 10, 2019) ............................................................................................ 6, 7
`NetApp, Inc. v. Realtime Data LLC,
`IPR2017-01195, Paper 9 (P.T.A.B. Oct. 12, 2017) .............................................. 7
`Next Caller, Inc. v. TrustID, Inc.,
`IPR2019-00961, Paper 10 (P.T.A.B. Oct. 16, 2019) ...................................... 8, 13
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018)......................................... 3, 4
`Polaris Innovations Ltd. v. Kingston Tech. Co.,
`S.Ct. No. 19-1459 (certiorari granted October 13, 2020) .................................. 16
`Smith & Nephew, Inc. v. Arthrex, Inc.,
`S.Ct. No. 19-1452 ......................................................................................... 15, 16
`Supercell Oy v. Gree, Inc.,
`IPR2020-00513, Paper 11 (P.T.A.B. June 24, 2020) ................................... 12, 14
`Vizio, Inc. v. Polaris PowerLED Techs., LLC,
`IPR2020-00043, Paper 30 (P.T.A.B. May 4, 2020) ........................................... 13
`Statutes
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 314(a) ............................................................................................. 1, 2, 4
`35 U.S.C. § 316(b) ..................................................................................................... 4
`
`iii
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`
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`IPR2020-1265 (Patent No. 7,110,444)
`PO’s Preliminary Response
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`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`PATENT OWNER’S EXHIBIT LIST
`Description
`Complaint, ParkerVision Printing LLC v. Intel Corp.,
`No. 1-20-cv-00108-ADA
`Complaint, ParkerVision Printing LLC v. Intel Corp.,
`No. 1-20-cv-00562-ADA
`Scheduling Order, ParkerVision Printing LLC v. Intel
`Corp., No. 1-20-cv-00108-ADA
`Published Interview of Judge Albright, IAM (Apr. 7,
`2020)
`Docket Order, Kerr Machine Co. d/b/a Kerr Pumps v.
`Vulcan Industrial Holdings, LLC, No. 6-20-cv-00200
`(W.D. Tex. Aug. 2, 2020)
`Relevant Excerpts of Plaintiff’s Preliminary Invalidity
`Contentions, filed in ParkerVision Printing LLC v.
`Intel Corp., No. 1-20-cv-00108-ADA
`
`iv
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`
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`IPR2020-01265 (U.S. Patent No. 7,110,444)
`PO’s Preliminary Response
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`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, ParkerVision Inc.
`
`(“ParkerVision”) submits this Preliminary Response (“Response”) and respectfully
`
`requests the Board to deny the Petition for Inter Partes Review (“Petition”) filed by
`
`Intel Corp. (“Intel”) challenging claims 1, 3, and 5 of U.S. Patent No. 7,110,444
`
`(“the ’444 Patent”).
`
`ParkerVision requests the Board exercise its discretion under 35 U.S.C.
`
`§ 314(a) to deny institution of the Petition because of the advanced state of parallel
`
`litigation pending in the Western District of Texas (Nos. 1-20-cv-00108-ADA and
`
`1:20-cv-00562-ADA; (“the Texas cases”). This is one of two IPRs filed by Intel
`
`challenging just two of the twelve patents-in-suit in the Texas cases. The ’444 patent
`
`was asserted in a complaint filed eight months ago. (Exs. 2001-2002). In that case,
`
`infringement and invalidity contentions have already been exchanged, claim
`
`construction briefs are being filed, a Markman hearing is scheduled in less than two
`
`months on January 22, 2021, and trial is set for February 7, 2022 (Ex. 2003)—
`
`approximately a month before a final written decision would be due if the Board
`
`were to institute. Notably, Intel raises the same invalidity issues in the District Court
`
`as contained in its IPR Petition. (Ex. 2006)
`
`Given the current posture and schedule of the underlying Texas case, all of
`
`the factors set forth in Apple Inc. v. Fintiv, Inc. IPR2020-00019, Paper 11 (P.T.A.B.
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`
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`Mar. 20, 2020) (precedential) weigh in favor of denying institution of an IPR. The
`
`Judge in the Texas cases, Judge Albright, will likely not stay the litigation, even if
`
`the Petitions are instituted. The ’444 Patent is but one of twelve patents being
`
`litigated, and the Court has already set a trial date despite being aware of the filing
`
`of Intel’s IPR petitions. Significantly, the February 7, 2022 trial date is nearly a
`
`month before the statutory deadline for the Board to issue a final written decision
`
`should the instant case be instituted. The Court and parties have already invested
`
`significant resources in litigating the Texas cases, and despite what efficiencies Intel
`
`may urge, the Board’s expenditure of resources will hardly make a dent in
`
`simplifying the parallel litigation.
`
`Based on the Board’s precedential decisions discussed below, and for the
`
`foregoing reasons, institution of the Petition should be denied.
`
`II.
`
`THE BOARD SHOULD EXERCISE ITS DISCRETION AND
`DENY INSTITUTION UNDER 35 U.S.C. § 314(a) AND 37 C.F.R.
`§ 42.108(b)
`ParkerVision sued Intel for infringement of the ’444 Patent in the Western
`
`District of Texas more than nine months ago on February 11, 2020. (Ex. 2002) As
`
`such, the Texas cases are in an advanced stage and a jury trial will have occurred
`
`before this Board issues a final written decision. By the February 2022 deadline for
`
`this Board Final Written decision, Judge Albright will have held a Markman
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`2
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`
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`Hearing, entered a Claim Construction Order covering terms from the ’444 patent,
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`ruled on dispositive motions, and conducted a jury trial. (Ex. 2003) In fact, as of the
`
`filing of this response, the parties have exchanged infringement and invalidity
`
`contentions, and already completed several rounds of claim construction briefing.
`
`In Fintiv, the Board set forth six 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.” Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11, at 5-6 (precedential). When evaluating these factors, the
`
`Board takes a holistic view of whether efficiency and integrity of the system are best
`
`served by denying or instituting review. Google LLC v. Personalized Media
`
`Commc’ns, LLC, IPR2020-00720, Paper 16, at 5 (P.T.A.B. Aug. 31, 2020) (citing
`
`Fintiv, IPR2020-00019, Paper 11, at 5-6). Here, all six Fintiv factors weigh in favor
`
`of denying
`
`institution. See NHK Spring Co. v. Intri-Plex Techs., Inc.,
`
`IPR2018-00752, Paper 8, at 20 (P.T.A.B. Sept. 12, 2018) (precedential) (“Institution
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`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
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`3
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`court litigation.’”).1 As such, the Board should exercise it discretion and deny
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`institution here.
`
`A.
`
`Factor 1—The District Court Has Not Granted A
`Stay, And There Is No Evidence That The District
`Court Will Grant A Stay Even If A Proceeding Is Instituted
`Intel has not asked for a stay pending inter partes review, and there is no
`
`evidence that Judge Albright would grant a stay even if an IPR were instituted.2 To
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`the contrary, Judge Albright is likely to deny any stay. Google LLC, v. Uniloc 2017,
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`1 Efficient administration of matters weighs against institution in this case. See 35
`
`U.S.C. § 316(b). And while there is a current push for further institution uniformity
`
`as to discretionary denial, there can be no question that the Board has the discretion
`
`to deny institution under 35 U.S.C. § 314(a). The Trial Practice Guide acknowledges
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`the Board’s discretion to deny petitions. See Consolidated Trial Practice Guide
`
`(November
`
`2019)
`
`at 58
`
`(available
`
`at
`
`https://www.uspto.gov/TrialPracticeGuideConsolidated)
`
`(“This
`
`includes,
`
`for
`
`example, events in other proceedings related to the same patent, either at the Office,
`
`in district courts, or the ITC.”), see also NHK, IPR2018-00752 Paper 8, at 20.
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`2 Intel is silent on whether it intends to seek a stay in the Texas case. Nevertheless,
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`ParkerVision would oppose any stay.
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`4
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`IPR2020-00115, Paper 8, at 7) (Mar. 27, 2020) (“Factors 1…weigh[s] in favor of
`
`denying institution of the Petition. . . . There is no evidence that the district court has
`
`granted (or would grant) a stay pending inter partes review.”).
`
`First, the ’444 Patent is but one of twelve patents being litigated in the Texas
`
`cases.3 Exs. 2001-2002. Second, on September 2, 2020, with knowledge of Intel’s
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`IPR petitions, Judge Albright emphasized that he has never granted a stay pending
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`an IPR.4 Finally, Judge Albright’s only decision on an opposed motion to stay
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`3 As noted above, Intel has filed IPR petitions for only one other patent being
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`asserted in the Texas cases.
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`4 Tellingly, Intel is silent on this factor because it favors dismissal (Pet. 84-85). That
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`the Court set a trial date with knowledge of Intel’s pending IPRs indicates that the
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`Court is unlikely to grant a stay. In fact, when ParkerVision’s counsel alerted Judge
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`Albright of the filing of this IPR during a recent hearing, Judge Albright emphasized
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`that he had never granted a stay pending IPR. (See also Ex. 2004 (Published
`
`Interview of Judge Albright (On tending not to stay cases: “I have done that because
`
`I think that people have a constitutional right to assert their patent. I mean, patents
`
`are in the Constitution, the right to a jury trial is in the Constitution.”).)
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`5
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`pending IPR—Multimedia Content Management LLC v. DISH Network LLC—
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`indicates that a stay of the Texas case would be denied.
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`In Multimedia, Judge Albright denied a motion to stay with similar facts to
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`the Texas cases. There, (1) the defendant filed IPR petitions ten months after filing
`
`of the complaint, (2) the court issued a claim construction ruling before the patent
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`owner filed a Preliminary Response, and (3) a jury trial was set four months before
`
`the statutory deadline for the Board to issue a final written decision. Multimedia
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`Content Mgmt. LLC v. Dish Network Corp., No. 6:18-CV-00207-ADA, 2019 U.S.
`
`Dist. LEXIS 198875, at *2 (W.D. Tex. Jan. 10, 2019). In denying defendant’s
`
`motion to stay, Judge Albright found that a stay would prejudice the plaintiff, ignore
`
`the advance state of the proceedings, and fail to simplify the issues. (Id.) Likewise
`
`in Kerr Machine Co. d/b/a Kerr Pumps v. Vulcan Industrial Holdings, LLC
`
`6-20-cv-00200 (W.D. Tex. Aug. 2, 2020), Judge Albright recently denied a stay
`
`noting, “Even if the PTAB institutes, the Court anticipates that the trial date will
`
`occur before the PGR’s final written decision.” (Ex. 2005.)
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`There is no reason to believe that Judge Albright would reach any different
`
`result here. Indeed, the facts in the Texas cases suggest that a stay is unlikely as well.
`
`Here Judge Albright is close to entering a claim construction, and Judge Albright set
`
`a trial date with full knowledge of Intel’s IPR petitions.
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`6
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`IPR2020-1265 (Patent No. 7,110,444)
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`Intel ignores these facts altogether in its Petition. Instead, Intel fails to make
`
`any arguments about a potential stay. In view of this silence, and again, given Judge
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`Albright’s decisions in Multimedia and Kerr Machine and the advanced stage of the
`
`Texas cases, it is highly unlikely that the Court would grant a stay. For all of these
`
`reasons, Factor 1 favors discretionary denial.
`
`B.
`
`Factor 2—Because The Texas Cases Will Be Tried
`Before The Board’s Projected Statutory Deadline
`For A Final Written Decision, The Board Should Deny Institution
`On August 7, 2020, Judge Albright set trial in the Texas case for February 7,
`
`2022. (Ex. 2003). Given that the Board will issue an institution decision by February
`
`23, 2021 (three months after the filing of this Preliminary Response), any final
`
`written decision, if instituted, would be entered around February 23, 2022. As such,
`
`the Texas cases—or at least the case involving the ’444 Patent—will have been tried
`
`before the Board’s projected statutory deadline for a final written decision.
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`Factor 2, therefore, favors discretionary denial. See NetApp, Inc. v. Realtime
`
`Data LLC, IPR2017-01195, Paper 9, at 12-13 (P.T.A.B. Oct. 12, 2017) (denying
`
`institution) (“The result would be a significant waste of the Board’s resources. There
`
`would be no offsetting conservation of the [district court’s] judicial resources
`
`because any final written decision in this proceeding would not issue until well after
`
`the scheduled trial date in the [district court] [l]itigation.”); see also Next Caller,
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`7
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`IPR2020-1265 (Patent No. 7,110,444)
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`Inc. v. TrustID, Inc., IPR2019-00961, Paper 10, at 14-15 (P.T.A.B. Oct. 16, 2019)
`
`(denying institution where trial was scheduled to start about three months before
`
`expected final written decision); E-One, Inc. v. Oshkosh Corp., IPR2019-00161,
`
`Paper 16, at 6 (P.T.A.B. May 15, 2019) (denying institution where trial was
`
`scheduled to start one month before expected final written decision); Intel Corp. v.
`
`VLSI Tech. LLC, IPR2020-00106, Paper 17, at 8 (P.T.A.B. May 5, 2020) (denying
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`institution where trial was scheduled to start four to five months before expected final
`
`written decision).
`
`C.
`
`Factor 3—The Parties And The Court Have Invested Significant
`Resources In The Texas Cases, Favoring Discretionary Denial
`On February 11, 2020, Intel was served with the complaint in the Texas case.
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`But Intel then waited five months—until July 13, 2020—to file the Petition. Because
`
`Intel did not file the Petition expeditiously, the Court and the parties will have
`
`completed litigation the time this Board issues its final written decision:
`
`Event
`
`Complaint
`Amended Complaint
`Case management conference
`Preliminary
`infringement contentions served by
`ParkerVision
`Motion to transfer briefing
`
`Date
`February 11, 2020
`May 15, 2020
`June 26, 2020
`June 26, 2020
`
`July-August 2020
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`8
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`Event
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`Petition filed5
`Scheduling order
`Motion to transfer hearing
`Preliminary invalidity contentions served by Intel
`
`Intel’s preliminary production of
`financial information
`Exchange of claim terms for construction
`
`technical and
`
`Exchange of preliminary claim constructions
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`Exchange of extrinsic evidence
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`Date
`July 13, 2020
`August 7, 2020
`September 2, 2020
`September 11, 2020
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`September 11, 2020
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`September 25, 2020
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`October 9, 2020
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`October 16, 2020
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`Meet and confers to narrow claim construction issues
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`October 23, 2020
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`Opening claim construction briefs (both parties)
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`October 30, 2020
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`Responsive claim construction briefs (both parties)
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`November 20, 2020
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`Patent Owner’s Response Filed
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`November 23, 2020
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`Reply claim construction briefs (both parties)
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`December 11, 2020
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`Joint claim construction statement
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`Markman Hearing
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`Fact discovery opens
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`Deadline for Institution Decision
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`December 18, 2020
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`January 22, 2021
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`January 29, 2021
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`February 23, 2021
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`5 Green Cells reflect Deadlines before the PTAB
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`9
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`IPR2020-1265 (Patent No. 7,110,444)
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`Event
`Final invalidity and infringement contentions
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`Close of Fact Discovery
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`Close of Expert Discovery
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`Dispositive Motion Deadline
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`Final Pretrial
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`Trial
`
`Date
`March 19, 2021
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`August 20, 2021
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`October 15, 2021
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`October 29, 2021
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`January 14, 2022
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`February 7, 2022
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`Deadline for Final Written Decision
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`February 23, 2022
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`And as this chart makes clear, the parties will be deep in fact discovery before
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`any institution decision issues. Thereafter, the parties will proceed with fact
`
`depositions, followed by the exchange of expert reports and expert depositions.
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`Specifically, Fact discovery will conclude by August 20, 2021. (See Ex. 2003, at 2.)
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`Opening expert reports on validity are due August 27, 2021, and expert discovery
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`will end on October 15, 2021—i.e. four months before any final written decision
`
`here. (Id.). Dispositive Motions, such as any Summary Judgment motions regarding
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`the purported invalidity of the ’444 patent or Daubert Motions will be filed by
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`October 29, 2021 and decided by the end of 2021 or the beginning of 2022. And trial
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`will occur on February 7, 2022. In sum, the totality of litigation will be completed
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`before this Board issues its final written decision.
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`10
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`Intel trivializes the parties’ and Court’s significant investments of time and
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`resources in the litigation to date by ignoring all the work done and, instead,
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`mischaracterizes the litigation as being in its “early stages.” (Pet. 83.) But in doing
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`so, Intel ignores Fintiv, where the Board specifically considered “the level of
`
`investment and effort already expended on claim construction and invalidity
`
`contentions in the District Court” in finding Factor 3 weighed in favor of
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`discretionary denial. See Fintiv, IPR2020-00019, Paper 15, at 14 (March 20, 2020).
`
`As in Uniloc, both the Court and the parties here have invested significant time and
`
`resources, both of which weigh in favor of denial. See Uniloc 2017, IPR2020-00115,
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`Paper 8, at 7.
`
`For the foregoing reasons, Factor 3 further favors discretionary denial. See
`
`Fintiv, IPR2020-00019, Paper 11, at 10 (“district court claim construction orders
`
`may indicate that the court and parties have invested sufficient time in the parallel
`
`proceeding to favor denial.”); see, e.g., E-One, IPR2019-00162, Paper 16, at 13, 20
`
`(denying institution where “district court ha[d] already expended substantial
`
`resources” by, among other things, “receiv[ing] briefing and hear[ing] oral argument
`
`on claim construction, and issu[ing] a claim construction ruling”).
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`11
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`D.
`
`Factor 4—Significant Overlap Between Issues Raised
`In The Petition And In The Texas Cases Supports Denial
`While there are twelve patents in the Texas case, the two overlapping patents
`
`in these IPRs have significant issues in common. In particular, in both its IPR
`
`Petitions and the Texas cases, Intel alleges invalidity of asserted claims in view of
`
`common references.
`
`While Intel notes that additional claims are being challenged in the Petition,
`
`but not the Texas cases (Pet. 84), these claims are irrelevant to the Board’s
`
`consideration here. First, a number of these “additional” claims depend from
`
`asserted independent claims containing claim elements not taught by the cited art.
`
`Thus, if the independent claim is not invalid in view of the art, so too are the claims
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`that depend from it. See Supercell Oy v. Gree, Inc., IPR2020-00513, Paper 11, at 13
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`(P.T.A.B. June 24, 2020) (denying institution where resolution of Petitioner’s
`
`challenges to independent claims at the district court will necessarily resolve key
`
`issues in the Petition, including with respect to dependent claims). Second, Intel
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`appears to have added these unasserted claims to the Petition merely to provide it
`
`with some hook to argue against discretionary denial. Intel’s gamesmanship should
`
`be rejected.
`
`Tellingly, Intel has not offered any meaningful explanation as to why it is
`
`necessary for this Board to consider these unasserted claims. Indeed, the Board has
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`IPR2020-1265 (Patent No. 7,110,444)
`PO’s Preliminary Response
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`found that Factor 4 favors denial of institution where, as here, a petitioner fails to
`
`establish why resolution of additional claims is necessary. See Next Caller,
`
`IPR2019-00961, Paper 10, at 14 (“exercising discretion to deny institution in view
`
`of a district court proceeding even though the Petition addressed more claims
`
`because ‘Next Caller does not argue that the nonoverlapping claims differ
`
`significantly in some way, nor does Next Caller argue whether it would be harmed
`
`if we do not institute on the nonoverlapping claims.’”); Vizio, Inc. v. Polaris
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`PowerLED Techs., LLC, IPR2020-00043, Paper 30, at 11 (P.T.A.B. May 4, 2020)
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`(finding that the presence of additional claims does not weigh against discretionary
`
`denial where there is no evidence of harm to petitioner).
`
`Moreover, the primary references Intel relies on in both the Texas cases and
`
`its Petitions are the same. In fact, Intel has incorporated, by reference, its petition
`
`into the invalidity contentions served in the Texas Cases. (Ex. 2006 – Relevant
`
`Excerpts of Intel’s Preliminary Invalidity Contentions). And as the Board previously
`
`noted, “Petitioner’s assertion of additional invalidity contentions in the District
`
`Court is not relevant to the question of the degree of overlap for this factor. Further,
`
`the fact that Petitioner has not decided whether to pursue the art from this proceeding
`
`in its expert discovery or at trial in the District Court is not persuasive.” Fintiv,
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`IPR2020-00019, Paper 15, at 14-15. Ultimately, as the Board recognized in
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`13
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`IPR2020-1265 (Patent No. 7,110,444)
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`Supercell, under Fintiv, “if the petition includes the same or substantially the same
`
`claims, grounds, arguments, and evidence as presented in the parallel proceeding,
`
`this fact has favored denial” because “concerns of inefficiency and the possibility of
`
`conflicting decisions [are] particularly strong.” Supercell, IPR2020-00513,
`
`Paper 11, at 13. That is exactly the case here—there is complete overlap in the
`
`references and invalidity grounds in both Intel’s Petitions and its invalidity
`
`arguments in the Texas cases. And with final invalidity contentions not due until
`
`after the filing of this Preliminary Response, there is also nothing to stop Intel from
`
`citing additional prior art in the Texas cases.
`
`For the foregoing reasons, Factor 4 also supports denial of the Petition.
`
`E.
`
`Factor 5—The Petitioner And The Defendant In The
`Parallel Proceeding Are The Same Party, Supporting Denial
`Intel is both the petitioner here and the defendant in the Texas cases. As such,
`
`Intel concedes that this factor favors denial of institution the IPR because it makes
`
`no arguments about this factor. (Pet. 84-86.) Accordingly, Factor 5 further supports
`
`discretionary denial.
`
`14
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`IPR2020-1265 (Patent No. 7,110,444)
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`F.
`
`Factor 6—Other Circumstances That
`Impact The Board’s Exercise Of Discretion
`Show That Denial Is Appropriate At This Time
`There are additional weaknesses with the Petition that favor discretionary
`
`denial.6
`
`First, institution of the present proceedings will also give rise to substantial
`
`duplication of efforts. As noted above, it will not prevent fact discovery, expert
`
`discovery, and other disputes that occur in the Texas cases, nor obviate dispositive
`
`motions, pre-trial motions, or a trial. Additionally, the February 2022 trial may moot
`
`both the Board’s need to draft a final written decision.
`
`Second, as set forth in Part III below, with the United States Supreme Court
`
`taking up the issue of the Appointments Clause set forth in the Arthrex cases,
`
`institution of further IPRs is ill advised at this time.
`
`6 While this Preliminary Response addresses only the discretionary bases as to why
`
`the Board should deny institution, ParkerVision submits that on the merits, Intel has
`
`not shown that it is likely to prevail as to any of the challenged claims. ParkerVision
`
`reserves the right to address, in a Patent Owner Response if required, issues of claim
`
`construction not addressed by Intel and the failures of the cited art to teach or render
`
`obvious the challenged claims.
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`IPR2020-1265 (Patent No. 7,110,444)
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`For these additional reasons, Factor 6 further supports discretionary dismissal.
`
`III. ADDITIONAL GROUNDS FOR DENYING INSTITUTION
`A.
`Inter Partes Review Should Not Be
`Instituted Because Of Constitutional Issues
`Under The Appointments Clause Of Article II
`ParkerVision objects to the use of inter partes review to analyze the validity
`
`of existing patents as being unconstitutional for at least the reasons presented in the
`
`petitions for certiorari granted in Smith & Nephew, Inc. v. Arthrex, Inc., S.Ct.
`
`No. 19-1452; Arthrex, Inc. v. Smith & Nephew, Inc., S.Ct. No. 19-1458; and Polaris
`
`Innovations Ltd. v. Kingston Tech. Co., S.Ct. No. 19-1459 (certiorari granted
`
`October 13, 2020). Specifically, ParkerVision objects to the use of inter partes
`
`review because it is carried out by a final order issued by Administrative Patent
`
`Judges who have not been nominated by the President and confirmed by the Senate.
`
`Members of the Board likewise qualify as Officers of the United States. And they
`
`are not merely “inferior Officers,” but “principal Officer[s]” under the Clause,
`
`because Administrative Patent Judges exercise significant independent discretion,
`
`are not removable at will, are not subject to substantial supervision and oversight
`
`within the Executive Branch, and issue final decisions on behalf of the United States
`
`that are conclusive upon the rights of patent owners. See Intercollegiate Broad. Sys,
`
`Inc. v. Copyright Royalty Bd., 684 F.3d 1332, 1336-40 (D.C. Cir. 2012). Although
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`IPR2020-1265 (Patent No. 7,110,444)
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`the Federal Circuit in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed.
`
`Cir. 2019) purported to sever a statute to address those problems, the purported
`
`severance was ineffective and, in any event, inapplicable to the present panel or
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`proceeding. Accordingly, the members of the Board are principal Officers, see id.,
`
`and to constitutionally exercise their authority they must be appointed by the
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`President and confirmed by the Senate.
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`ParkerVision respectfully submits that the Petition should be denied on this
`
`basis alone.
`
`IV. CONCLUSION
`For all of the foregoing reasons, ParkerVision respectfully request the Board
`
`to deny the Petition.
`
`Dated:
`
`November 24, 2020
`
`Respectfully submitted,
`s/ Jason S. Charkow
`By:
`Jason S. Charkow (Reg. No. 46,418)
`Chandran B. Iyer (Reg. No. 48,434)
`Stephanie Mandir (Reg. No. 72,930)
`jcharkow@goldbergsegalla.com
`ciyer@goldbergsegalla.com
`Smandir@golbergsegalla.com
`GOLDBERG SEGALLA LLP
`711 Third Avenue, Suite 1900
`New York, NY 10017
`Tel: 646.292.8700
`
`17
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`IPR2020-1265 (Patent No. 7,110,444)
`PO’s Preliminary Response
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing PATENT
`
`OWNER’S
`
`PRELIMINARY RESPONSE TO
`
`PETITION
`
`FOR
`
`INTER PARTES REVIEW OF UNITED STATES PATENT NO. 7,110,444,
`
`together with all exhibits filed therewith was served in its entirety by filing these
`
`documents through the PTAB E2E System, as well as by email on the following
`
`counsel of record for the Petitioner:
`
`grant.rowan@wilmerhale.com
`
`haixia.lin@wilmerhale.com
`
`brian.lambson@wilmerhale.com
`
`michael.summersgill@wilmerhale.com
`
`todd.zubler@wilmerhale.com
`
`WH-ParkerVision-IPRs@wilmerhale.com
`
`Dated:
`
`November 24, 2020
`
`s/ / Jason S. Charkow
`By:
`Attorney Name
`Registration No. 46,418
`
`
`
`18
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