IPR2021-00985
`U.S. Patent No. 7,292,835
`Patent Owner’s Opposition
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`TCL Industries Holdings Co., Ltd. and Hisense Co., Ltd.,
`Petitioners
`
`v.
`
`ParkerVision, Inc.
`Patent Owner
`
`U.S. Patent No. 7,292,835
`
`Issue Date: November 6, 2007
`Title: WIRELESS AND WIRED CABLE MODEM APPLICATIONS OF
`UNIVERSAL FREQUENCY TRANSLATION TECHNOLOGY
`__________________________________________________________________
`
`Inter Partes Review No. IPR2021-00985
`
`__________________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION FOR
`ROUTINE AND/OR ADDITIONAL DISCOVERY
`
`
`U.S. Patent No. 7,292,835
`Patent Owner’s Opposition
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`TCL Industries Holdings Co., Ltd. and Hisense Co., Ltd.,
`Petitioners
`
`v.
`
`ParkerVision, Inc.
`Patent Owner
`
`U.S. Patent No. 7,292,835
`
`Issue Date: November 6, 2007
`Title: WIRELESS AND WIRED CABLE MODEM APPLICATIONS OF
`UNIVERSAL FREQUENCY TRANSLATION TECHNOLOGY
`__________________________________________________________________
`
`Inter Partes Review No. IPR2021-00985
`
`__________________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION FOR
`ROUTINE AND/OR ADDITIONAL DISCOVERY
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`Table of Contents
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`Page
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`I.
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`II.
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`Introduction ...................................................................................................... 1
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`Petitioners’ belated and improper efforts to bolster its Petition through
`discovery should be rejected. ........................................................................... 2
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`III.
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`Petitioners’ request for ParkerVision’s confidential Final Infringement
`Contentions is not directed to “routine” discovery. ........................................ 5
`
`A.
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`ParkerVision’s positions on “storage module” are consistent. ............. 5
`
`B.
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`ParkerVision’s positions on “cable modem” are consistent. ................ 8
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`IV. Petitioners have not met their burden on additional discovery. .................... 10
`
`A.
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`Petitioners have not shown that the FICs will be useful. .................... 10
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`B.
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`The information Petitioners request could have been sought by
`other means. ......................................................................................... 12
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`i
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`Pursuant to the Board’s March 9, 2022 email, Patent Owner ParkerVision,
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`Inc. (“ParkerVision”) submits this opposition to the motion for routine and/or
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`additional discovery filed by TCL Industries Holdings Co., Ltd. (“TCL”) and
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`Hisense Co. Ltd. (“Hisense”) (collectively, “Petitioners”).
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`I.
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`Introduction.
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`Petitioners seek the production of highly confidential Final Infringement
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`Contentions (“FICs”) that ParkerVision served in the parallel district court
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`litigation. But Petitioners’ Motion is merely an attempt to supplement their
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`evidence/arguments under the guise of routine and/or additional discovery.
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`For the first time in this Motion, Petitioners’ present substantive arguments
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`regarding the Texas District Court’s construction of “storage module” as “storing
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`non-negligible amounts of energy.” See Paper 18 (“Motion”), 4-7. But as
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`ParkerVision pointed out in its Patent Owner’s Response, the Petition is altogether
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`silent as to whether a capacitor (the alleged “storage module”) in the cited
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`references “stores non-negligible amounts of energy.” Paper 17 (“POR”), 1. In
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`fact, the phrase “non-negligible amounts of energy” does not appear anywhere in
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`the Petition. Although Petitioners were aware of the District Court’s construction
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`at the time of filing their Petition, Petitioners chose not to address it. Thus, any
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`discussion that Petitioners make of “non-negligible amounts of energy,” including
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`through the reliance on ParkerVision’s FICs, is improper new argument that goes
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`1
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`
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`beyond the theories presented in the Petition. For at least this reason, the Board
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`should deny Petitioners’ Motion.
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`Petitioners’ arguments that the FICs should be considered “routine” and/or
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`“additional” discovery also fail. Contrary to Petitioners’ assertions, no
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`inconsistencies exist between ParkerVision’s arguments in its POR and those
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`presented in the FICs. Furthermore, Petitioners have not shown that such discovery
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`is necessary in the interest of justice.
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`Accordingly, the Board should deny Petitioners’ request.
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`II.
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`Petitioners’ belated and improper efforts to bolster its Petition through
`discovery should be rejected.
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`In January 2021, the Texas District Court construed “storage module” as “a
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`module of an energy transfer system that stores non-negligible amounts of energy
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`from an input electromagnetic signal.” Ex.-2011, 5.1 Petitioners filed their Petition
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`in May 2021 – four months after the District Court’s order construing “storage
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`module,” two months after ParkerVision served its Preliminary Infringement
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`Contentions in the District Court, and nine days after ParkerVision filed its POR in
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`IPR2020-01265. Thus, when filing the Petition, Petitioners were fully aware of the
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`1 The parties agree that the January 2021 District Court Claim Construction Order
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`is relevant to the current IPR because it relates to ParkerVision patents involving
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`similar technology to the ’835 patent.
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`2
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`
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`District Court’s construction and ParkerVision’s arguments regarding “storage
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`module.” Indeed, the Petition specifically discusses the District Court’s
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`construction of “storage module.” Pet., 34-35.2
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`Yet, Petitioners failed to address the “non-negligible amounts of energy”
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`language in their Petition (despite being aware of this language in the District
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`Court’s construction at the time they filed their Petition, specifically addressing
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`other language in the District Court’s claim construction ruling, and ultimately
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`adopting the language in their own constructions in litigation). In fact, the words
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`“non-negligible,” “energy,” or “non-negligible amounts of energy” do not appear
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`in the Petition at all. Instead, the only argument/theory Petitioners put forth was
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`simply to identify “storage modules” as capacitors in the cited references. See Pet.,
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`60, 63, 74-75. Tellingly, the Petition does not even mention—let alone provide any
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`type of analysis—as to whether a capacitor (the alleged “storage module”) in the
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`cited references “stores non-negligible amounts of energy.”
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`2 And while Petitioners included the cover page of ParkerVision’s Preliminary
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`Infringement Contentions as evidence that their Petition was filed “expeditiously”
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`(see Pet., 87,) Petitioners never discuss their relevance and/or significance in
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`connection with the term “storage module.”
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`3
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`
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`Petitioners now attempt to remedy their deliberate omission by substantively
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`addressing the “non-negligible amounts of energy” language in this Motion.
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`Indeed, Petitioners’ Motion spends several pages doing exactly that. See Motion,
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`4-7. In particular, Petitioners present a new theory alleging that ParkerVision
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`previously “argued that ‘transferring nonnegligible amounts of energy’ means
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`‘transferring energy (i.e., voltage and current over time) in amounts that are
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`distinguishable from noise.’” See Motion, 4-6. To support its new theory,
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`Petitioners improperly rely on new evidence.3 See id. (citing new evidence:
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`ParkerVision, Inc. v. Qualcomm Inc., No. 3:11-CV-719-J-37TEM (M.D. Fla. Feb.
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`20, 2013); ParkerVision, Inc. v. Qualcomm Inc., 621 F. App’x 1009, 1018 (Fed.
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`Cir. 2015); RPX Corp. v. ParkerVision, Inc., IPR2014-00948). But as the
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`Consolidated Trial Practice Guide states: “[i]t is also improper for a reply to
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`present new evidence . . . that could have been presented in a prior filing.”
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`3 Petitioners should not be able to change its positions set forth in the Petition with
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`its belated, new theories. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
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`821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that
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`petitioners in the IPR proceedings adhere to the requirements that the initial
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`petition identify ‘with particularity’ the ‘evidence that supports the grounds for the
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`challenge to each claim.’”).
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`4
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`
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`Consolidated Trial Practice Guide (Nov. 2019) at 73-74.4 Given that Petitioners
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`could have addressed these arguments/evidence in their Petition, it would be
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`improper to allow Petitioners to obtain the FICs in order to do so in their Reply.
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`III. Petitioners’ request for ParkerVision’s confidential Final Infringement
`Contentions is not directed to “routine” discovery.
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`Petitioners argue that the FICs are required “routine” discovery under 37
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`C.F.R. § 42.51(b)(1)(iii) because they purportedly contradict the construction of
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`claim terms “storage module and “cable modem” advanced by ParkerVision. But
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`Petitioners are incorrect. Petitioners’ conclusions are based on a
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`mischaracterization of ParkerVision’s positions. As such, Petitioners’ request for
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`discovery should be denied.
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`A.
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`ParkerVision’s positions on “storage module” are consistent.
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`In its POR, ParkerVision requested the Board to adopt the District Court’s
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`construction of “storage module” as “a module of an energy transfer system that
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`stores non-negligible amounts of energy from an input electromagnetic signal.”
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`POR, 50. ParkerVision then addresses the cited prior art in light of its proposed
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`construction.
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`Recognizing the deficiencies in their Petition after reading the POR,
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`Petitioners allege that ParkerVision further construes the phrase “non-negligible
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`4 Unless indicated otherwise, all emphasis is added.
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`5
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`
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`amounts of energy” as requiring “a complex, three-step calculation that compares
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`the calculated total ‘available energy’ to the ‘energy in a capacitor.’” Motion, 4;
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`see also id., 7 n.4 (“ParkerVision’s brand new argument that non-negligible
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`amounts of energy must be mathematically calculated, as a percentage of the total
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`available energy that is stored in a capacitor.”). Petitioners contend that because
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`ParkerVision did not disclose this same “complex, three-step calculation” in its
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`FICs, ParkerVision takes inconsistent positions. See Motion, 7. But Petitioners are
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`wrong.
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`First, ParkerVision did not construe the phrase “non-negligible amounts of
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`energy” in its POR, let alone propose a construction requiring “a complex, three-
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`step calculation that compares the calculated total ‘available energy’ to the ‘energy
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`in a capacitor,’” as Petitioners suggest. Instead, ParkerVision clearly articulates
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`that its analysis is one of several possible calculations that a POSITA would use to
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`determine energy storage based on a specific cited reference. When analyzing the
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`Hulkko reference, for example, ParkerVision states that “[g]iven Hulkko’s
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`disclosure of Candy, one way to determine energy storage is to perform
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`calculations based on a time constant.” POR, 63. When examining the Schiltz
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`reference, on the other hand, ParkerVision states that “given Schiltz’s
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`configuration as well as Schiltz’s component values and voltage source
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`information, one way to determine energy storage is to perform calculations based
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`6
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`on ratio of available RF input power to IF output power.” POR, 74. As such, there
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`is nothing in ParkerVision’s POR to suggest “non-negligible amounts of energy”
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`requires any one specific mathematical calculation.
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`Second, and contrary to Petitioners’ argument, ParkerVision’s analysis is
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`consistent with positions that ParkerVision advanced in other proceedings. In its
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`POR, ParkerVision asserts that whether a capacitor is a “storage module” depends
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`on the way in which the capacitor is being used in a circuit. ParkerVision makes
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`clear that one cannot simply look at individual components of the circuit because
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`the same components (e.g., capacitors) used in different circuits can be used in
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`different ways to create a desired result. See, e.g., POR, 27. Accordingly,
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`ParkerVision’s energy storage calculation for a cited capacitor (the alleged
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`“storage module”) in the prior art is based on the specific disclosure of each
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`reference. This is consistent with the product-specific analysis ParkerVision has
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`taken in other cases. See Motion, 5 (“ParkerVision’s inventor, Mr. Sorrells
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`‘explained at trial that transferring a non-negligible amount of energy into the
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`storage capacitor means ‘that you have to transfer enough energy to overcome the
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`noise in the system to be able to meet your specifications;’”), see also id., 6 (“Mr.
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`Sorrells testified that when a product functions according to its specifications, this
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`“is proof that a ‘nonnegligible’ amount of energy is transferred to the storage
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`element in those products.”).
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`7
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`The fact that ParkerVision’s FICs do not recite the exact same formulas as
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`provided in the POR is inconsequential. And it should be noted that Petitioners
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`have yet to produce any technical documents in the district court litigation, and
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`ParkerVision plans to supplement its FICs based on information obtained as the
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`case progresses. But a lack of information in the district court does not equate to
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`the inconsistencies that Petitioners allege here.
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`Because there are no inconsistent statements in the documents Petitioners
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`seek, ParkerVision has no duty to produce them as “routine discovery,” and the
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`Board should deny Petitioner’s motion.
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`B.
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`ParkerVision’s positions on “cable modem” are consistent.
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`The preamble in claim 1 of the ’835 patent recites: “A cable modem for
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`down-converting an electromagnetic signal having complex modulations,
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`comprising, . . . .” In its POR, ParkerVision argues that the preamble is limiting.
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`To support its position, ParkerVision relies on the ’835 specification, which
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`specifically states that a “cable modem” “refers to [a] modem[] that
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`communicate[s] across ordinary cable TV network cables.” POR, 51 (citing Ex.-
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`1001, 36:19-20). ParkerVision further notes that the specification distinguishes a
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`cable modem from a data modem, which communicates across telephone lines. See
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`id.
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`8
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`Petitioners allege that ParkerVision’s POR as to the meaning of the “cable
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`modem” term is inconsistent with its FICs. In particular, Petitioners point to a
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`single sentence in the POR that states: “what makes a modem a “cable” modem
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`relates to the type of physical transmission line/cabling over which data is
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`ultimately transmitted.” Petitioners fails to recognize the specificity in
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`ParkerVision’s statement, and instead assert that it contradicts ParkerVision’s FICs
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`which “allege that a Wi-Fi chip—a device that by definition has no physical
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`transmission line or cabling—is a ‘cable modem.’” Motion, 8. Not so.
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`ParkerVision never argues in its POR that a cable modem must have a
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`“physical transmission line or cabling” nor that a Wi-Fi chip cannot be a cable
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`modem. In fact, when describing cable modems in the POR, ParkerVision
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`specifically points to FIG. 45B of the ’835 patent (shown below) which illustrates
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`a wireless cable modem environment.
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`9
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`A shown above, cable modem 4522 includes an antenna for wireless
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`communication with wireless interface 4524 and antenna 4256. Notably, the
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`configuration shown in FIG. 45B is like that of a Wi-Fi chip, which provides
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`wireless connectivity using an antenna. As such, ParkerVision has not taken
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`inconsistent positions, and Petitioners have failed to show otherwise.
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`IV. Petitioners have not met their burden on additional discovery.
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`
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`Petitioners request for additional discovery should also be denied because
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`Petitioners fail to carry its high burden to prove that the requested discovery is
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`“necessary in the interest of justice.” 35 U.S.C. § 316(a)(5)); 37 C.F.R. § 42.51(b);
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`10
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`
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`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012- 00001, Paper No. 26 at
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`6-7 (PTAB Mar. 5, 2013).
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`A.
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`Petitioners have not shown that the FICs will be useful.
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`The first Garmin factor is whether there exists “more than a possibility and
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`mere allegation” that useful information will be discovered. Garmin Int’l, Inc. v.
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`Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 6 (PTAB Mar. 5, 2013).
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`“Useful,” in this context, means “favorable in substantive value to a contention of
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`the party moving for discovery”; it does not encompass evidence that is merely
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`“relevant” or “admissible.” Id. at 7. Here, Petitioners admit that there is nothing of
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`substance they seek to uncover in the FICs; instead, Petitioners seek to use the
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`absence of information as proof of ParkerVision’s alleged inconsistent positions.
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`See Motion, 7. But again, this argument relates more to the nature of the FICs at a
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`stage in the litigation (when Petitioners have not produced technical documents)
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`rather than any showing of inconsistencies between the information sought and
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`ParkerVision’s positions in the POR.
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`Petitioners’ request for the FICs as additional discovery also fails for much
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`the same reason as their request for routine discovery. Petitioners argue that the
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`FICs would be useful because they are inconsistent with ParkerVision’s POR.
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`Motion, 11. But, as explained in Section III above, there are no inconsistencies
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`11
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`between ParkerVision’s arguments in its POR and those presented in the FICs. As
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`such, Petitioners’ request will not uncover any “useful” information.
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`B.
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`The information Petitioners request could have been sought by
`other means.
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`Garmin factor 3 considers the ability to generate equivalent information by
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`other means. Garmin, Paper 26 at 6. “Information a party can reasonably figure out
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`or assemble without a discovery request would not be in the interest of justice to
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`have produced by the other party.” Id. By Petitioners’ own admissions, prior
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`ParkerVision proceedings contain the claim construction arguments Petitioners
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`seek to reveal in the FICs. See Motion, 7 (“In keeping with Mr. Sorrells’ testimony
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`about how to prove that a capacitor has a ‘non-negligible’ amount of energy,
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`ParkerVision’s Final Infringement Contentions against TCL and Hisense identify a
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`capacitor in a Wi-Fi chip as a “storage module.”). Petitioners cannot reasonably
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`maintain that such evidence did not exist or was previously unavailable at the time
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`Petitioners filed their Petition. Instead, Petitioners had the opportunity to generate
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`relevant information, but chose not to do so nor address the “non-negligible
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`amounts of energy” language in the Petition at all. This was a strategic decision,
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`and Petitioners’ gamesmanship should be rejected.
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`Dated: April 6, 2022
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`
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`Respectfully Submitted,
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`
`By: /Jason S. Charkow/
`
`Jason S. Charkow (USPTO Reg. No. 46,418)*
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`12
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`
`
`Chandran B. Iyer (USPTO Reg. No. 48,434)
`Stephanie R. Mandir (USPTO Reg. No. 72,930)
`jcharkow@daignaultiyer.com
`cbiyer@daignaultiyer.com
`smandir@daignaultiyer.com
`DAIGNAULT IYER LLP
`8618 Westwood Center Drive - Suite 150
`Vienna, VA 22182
`
`
`*Not admitted in Virginia
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`Attorneys for ParkerVision, Inc.
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`13
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PATENT
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`OWNER’S OPPOSITION TO PETITIONERS’ MOTION FOR ROUTINE
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`AND/OR ADDITIONAL DISCOVERY, together with all exhibits filed
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`therewith, was served in its entirety by filing these documents through the PTAB
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`E2E System, as well as by email on the following counsel of record for Petitioner:
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`Kristopher L. Reed
`kreed@kilpatricktownsend.com
`Edward J. Mayle
`tmayle@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton LLP
`1400 Wewatta St. Suite 600
`Denver, CO 80202
`
`Matias Ferrario
`mferrario@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`
`
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`Respectfully submitted,
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`By: /Jason S. Charkow/
`Jason S. Charkow
`USPTO Reg. No. 46,418
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`14
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