Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 25
`Filed: May 27, 2022
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`TCL INDUSTRIES HOLDINGS CO., HISENSE CO., LTD.,
`and LG ELECTRONICS INC.
`
`Petitioners,
`
`v.
`
`PARKERVISION, INC.
`
`Patent Owner
`
`___________________________
`
`Case No. IPR2021-009851
`Patent No. 7,292,835
`
`___________________________
`
`
`
`PETITIONERS’ REPLY
`
`
`1 LG Electronics Inc., who filed a petition in IPR2022-00246, is joined as a petitioner
`in this proceeding.
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 25
`Filed: May 27, 2022
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`TCL INDUSTRIES HOLDINGS CO., HISENSE CO., LTD.,
`and LG ELECTRONICS INC.
`
`Petitioners,
`
`v.
`
`PARKERVISION, INC.
`
`Patent Owner
`
`___________________________
`
`Case No. IPR2021-009851
`Patent No. 7,292,835
`
`___________________________
`
`
`
`PETITIONERS’ REPLY
`
`
`1 LG Electronics Inc., who filed a petition in IPR2022-00246, is joined as a petitioner
`in this proceeding.
`
`
`
`
`
`IPR2021-00985
`Patent 7,292,835 B2
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`
`TABLE OF CONTENTS
`
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 6
`
`A.
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`“storage module” ................................................................................... 6
`
`1.
`
`2.
`
`3.
`
`4.
`
`ParkerVision’s Proposed Construction Contradicts the
`Inventor’s Lexicography ............................................................. 7
`
`A Capacitor Used To Successfully Down-Convert a Signal
`Stores “Non-Negligible Energy” ................................................ 9
`
`Petitioners Do Not Rely On “New Evidence” .......................... 12
`
`Dr. Steer’s Unreliable Opinions Are Not Based on the
`Correct Construction of “Storage Module” .............................. 13
`
`B.
`
`“cable modem” .................................................................................... 14
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`1.
`
`2.
`
`“Cable Modem” Is Not a Claim Limitation .............................. 14
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`If “Cable Modem” Is Limiting, It Refers to a Device That
`Can Down-Convert Signals From a TV Network, Including
`Devices Without Cables ............................................................ 16
`
`III. THE PRIOR ART DISCLOSES “STORAGE MODULES” ........................ 17
`
`A. Hulkko Discloses the Claimed “Storage Modules” ............................ 18
`
`B.
`
`Schiltz Discloses “Storage Modules” .................................................. 22
`
`IV.
`
`“CABLE MODEM” IS NOT LIMITING AND, IN ANY EVENT, WAS
`OBVIOUS AT THE TIME OF THE INVENTION ..................................... 24
`
`A.
`
`“Cable Modem” Is Not Limiting ......................................................... 24
`
`B. Alternatively, Cable Modems Were Obvious ..................................... 24
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`V.
`
`IT WOULD HAVE BEEN OBVIOUS TO COMBINE THE REFERENCES
`AT THE TIME OF THE INVENTION ........................................................ 27
`
`i
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`IPR2021-00985
`Patent 7,292,835 B2
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`A. Hulkko in View of Gibson .................................................................. 27
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`B. Gibson in View of Schiltz ................................................................... 28
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`VI. CONCLUSION .............................................................................................. 29
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`ii
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`IPR2021-00985
`Patent 7,292,835 B2
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`Cases
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Am. Med. Sys., Inc. v. Biolitec, Inc.,
`618 F.3d 1354 (Fed. Cir. 2010) .......................................................................... 14
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 12
`
`Ericsson Inc. v. Intell. Ventures I LLC,
`901 F.3d 1374 (Fed. Cir. 2018) .......................................................................... 12
`
`Nestle USA, Inc. v. Steuben Foods, Inc.,
`884 F.3d 1350 (Fed. Cir. 2008) .......................................................................... 11
`
`Omega Eng’g Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) ............................................................................ 8
`
`ParkerVision, Inc. v. Qualcomm Inc.,
`621 F. App’x 1009 (Fed. Cir. 2015) ............................................................passim
`
`ParkerVision, Inc. v. Qualcomm Inc.,
`No. 3:11-CV-719-J-37TEM, 2013 WL 633077 (M.D. Fla. Feb. 20,
`2013) ................................................................................................................. 2, 9
`
`Samsung Elecs. Co. v. Elm 3DS Innovations, LLC,
`925 F.3d 1373 (Fed. Cir. 2019) ............................................................................ 8
`
`TomTom, Inc. v. Adolph,
`790 F.3d 1315 (Fed. Cir. 2015) .................................................................... 14, 15
`
`
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`iii
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`IPR2021-00985
`Patent 7,292,835 B2
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`TCL Industries Holdings Co., Ltd. and Hisense Co., Ltd. (“Petitioners”)
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`submit this Reply to Patent Owner’s (“ParkerVision”) Response (“POR”).
`
`I.
`
`INTRODUCTION
`
`ParkerVision does not contest that the prior art renders obvious almost every
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`element of the challenged claims. And ParkerVision chose not to cross-examine
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`Petitioners’ expert, Dr. Shoemake, whose direct testimony now stands
`
`unchallenged. ParkerVision disputes the disclosure of only two elements: “storage
`
`module” and “cable modem.” ParkerVision also argues that certain references
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`cannot be combined—even though such references disclose highly similar and
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`well-known circuitry for down-converting a modulated signal. None of
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`ParkerVision’s arguments, however, demonstrates the patentability of any
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`challenged claim.
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`First, ParkerVision argues that the prior art does not disclose a “storage
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`module.” That argument is premised in part on ParkerVision’s attempt to read in
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`an “energy transfer system” requirement into the construction of the term. POR at
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`67-68, 77-78. The Board previously rejected this exact same construction in a final
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`decision. Ex. 2037 at 29-41 (“storage element” means “an element of a system
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`that stores non-negligible amounts of energy from an input EM signal.”) The
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`Board should reject ParkerVision’s argument again here.
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`1
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`ParkerVision also attempts to further construe its proposed construction,
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`arguing that the term “non-negligible” from its proposed construction requires that
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`the amount of energy on a capacitor must be shown “mathematically” in a
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`complex, three-step calculation that compares the “total available energy” to the
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`“energy in a capacitor.” E.g., POR at 62-67. But ParkerVision offers no
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`principled reason for imposing this new comparison of the capacitor’s energy to
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`the “total available energy.”
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`ParkerVision’s newfound “mathematical” construction-of-a-construction
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`also contradicts its prior positions. ParkerVision and lead inventor David Sorrells
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`admitted in a prior litigation when arguing for infringement that a “non-negligible”
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`amount of energy is simply that which is “distinguishable from noise” (Paper 18 at
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`4-7), and the courts accepted that construction. ParkerVision, Inc. v. Qualcomm
`
`Inc., No. 3:11-CV-719-J-37TEM, 2013 WL 633077, at *5-*7 (M.D. Fla. Feb. 20,
`
`2013); ParkerVision, Inc. v. Qualcomm Inc., 621 F. App’x 1009, 1018 (Fed. Cir.
`
`2015) (“That construction is not disputed on appeal.”).
`
`Specifically, Mr. Sorrells “explained at trial that transferring a non-
`
`negligible amount of energy into the storage capacitor means ‘that you have to
`
`transfer enough energy to overcome the noise in the system to be able to meet your
`
`specifications.’” 621 F. App’x at 1019 (emphasis added). Mr. Sorrells also
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`2
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`Patent 7,292,835 B2
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`testified that when a product functions according to its specifications, this “is proof
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`that a ‘non-negligible’ amount of energy is transferred to the storage element in
`
`those products.” 621 F. App’x at 1019. “Mr. Sorrells’ testimony thus establishes
`
`that to determine whether or not energy in amounts distinguishable from noise has
`
`been transferred from the carrier signal, one may look to whether the down-
`
`converting circuit functions in practice. If a circuit successfully down-converts,
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`that is proof that enough energy has been transferred to overcome the noise in the
`
`system.” Id. (emphasis added).
`
`Here, the prior art indisputably discloses a capacitor within a circuit that
`
`“successfully down-converts” a signal, and “that is proof” that the capacitor stores
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`non-negligible energy under ParkerVision’s original position. ParkerVision, 621
`
`F. App’x at 1019. And as its original construction was adopted by the courts,
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`ParkerVision is collaterally estopped from advancing an entirely new
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`“mathematical” construction to try and create patentability.
`
`Second, ParkerVision argues that the prior art does not disclose or render
`
`obvious a “cable modem.” The Board should reject this argument because “cable
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`modem” appears only in the preamble of claim 1, which suggests a mere intended
`
`use of the structurally complete invention recited in the body of the claim and is
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`not limiting.
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`In the underlying litigations, ParkerVision did not argue that “cable modem”
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`was limiting as it argues here. Instead, in the litigation complaints, ParkerVision
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`accuses a Wi-Fi chip of being a “cable modem”—even though such chips have no
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`physical transmission line or cabling. But even if the preamble is limiting, all
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`challenged claims are still obvious as shown in the Petition.
`
`Third, ParkerVision argues that certain references cannot be combined.
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`Specifically, as to Ground 1, ParkerVision argues that there “is no motivation to
`
`combine Hulkko and Gibson because they are directed to fundamentally different
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`and competing technologies – Hulkko is a sampling system and Gibson is a non-
`
`sampling mixer system.” POR at 69. This mischaracterizes the references. The
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`circuits of Hulkko and Gibson are nearly identical—both structurally and
`
`functionally in performing down-conversion—and both are nearly identical to
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`Figure 54B of the ’835 patent which embodies the claimed technology. See Pet. at
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`1-7, 35-39. Moreover, and contrary to ParkerVision’s argument, Hulkko expressly
`
`encourages use of its switched capacitors as a mixer to perform down-
`
`conversion—the exact same function of the down-conversion circuit disclosed in
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`Gibson. Ex. 1004 (Hulkko) at 5:39-49 (“[T]he inventive idea is realized in the
`
`circuit arrangement … with which switched capacitor switching elements … are
`
`used to implement the mixer 11 which directly demodulates the IF-signal into a
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`4
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`base-frequency signal”). The Petition also describes multiple additional
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`motivations for combining Hulkko with Gibson. Pet. at 43-46.
`
`As to Ground 2, ParkerVision similarly argues that there is no motivation to
`
`combine Gibson with Schiltz “because they are directed to fundamentally different
`
`and competing technologies; Gibson discloses a quadrature (non-sampling) mixer,
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`whereas … Schiltz disclose[s] down-conversion by sampling.” POR at 81. Again,
`
`this ignores what the references say. Schiltz expressly encourages use of its
`
`“sample and hold circuit as a mixer” for down-conversion—the exact same
`
`function of the down-conversion circuit disclosed in Gibson. Ex. 1006 (Schiltz) at
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`1:5-10 (emphasis added); id. at 10:15-22 (“an improved radio which uses sample
`
`and hold circuit in various mixing applications, such as down conversion.”)
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`(emphasis added). Schiltz also expressly encourages the use of its sample and hold
`
`mixer circuit in the manner of Gibson because it “may be accurately operated at
`
`high frequencies” and “may be applied virtually to any frequency RF and IF
`
`signals.” Id. at 10:15-48; see Pet. at 46-47.
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`5
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`IPR2021-00985
`Patent 7,292,835 B2
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`II. CLAIM CONSTRUCTION
`
`A.
`
`“storage module”
`
`Under any reasonable construction of the term, a capacitor constitutes a
`
`“storage module.” See Ex. 1002 ¶¶118-119.2 The ’835 patent teaches that the
`
`claimed “storage module” is a capacitor or inductor whose “function is to store
`
`electromagnetic charge.” Pet. at 34. This is consistent with ParkerVision’s position
`
`on infringement, where ParkerVision alleges that the “storage module” in the
`
`accused products is simply “a module having one or more capacitors.” Ex. 2002
`
`¶¶114-15; Ex. 2001 ¶¶92-93.3
`
`In IPR2020-01265, the Board addressed a related ParkerVision patent and
`
`entered a construction consistent with Petitioner’s application of “storage module”
`
`from the Petition, construing “storage module” as “an element of a system that
`
`stores non-negligible amounts of energy from an input EM signal.” Ex. 2037 at
`
`
`2 This is also corroborated by claim 4 of the ’835 patent (which ultimately depends
`from claim 1) and recites “said first storage [module] is a first capacitor.” Ex.
`1001 at claim 4 (emphasis added).
`
`3 Earlier, the Board ordered ParkerVision to produce additional discovery
`regarding ParkerVision’s litigation positions. Paper 23. ParkerVision produced the
`discovery as ordered, but also moved the district court for an order enjoining
`Petitioners from using that discovery in this IPR proceeding. The court granted that
`motion due to concerns that the Board would not adequately maintain the
`confidentiality of the produced discovery. Ex. 1018; Ex. 1019.
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`6
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`41. Although not limited to a capacitor, the Board’s construction regarding the
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`claimed function of the storage element—“stor[ing] non-negligible amounts of
`
`energy”—is substantively the same as the construction applied by Petitioners in the
`
`Petition. See Pet. at 34; Ex. 1002 ¶¶118-19. And because all the prior-art
`
`capacitors identified in the Petition as “storage modules” store energy from “an
`
`input EM signal” (see Pet. at 4-11, 35-41, 56-64, 70-80), all the arguments raised
`
`in the Petition apply equally under the Board’s construction in IPR2020-01265.
`
`Given this, and the fact that the Board’s rationale from IPR2020-01265 applies
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`equally here, Petitioners do not object to adoption of the Board’s construction for
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`“storage module” from IPR2020-01265 here.
`
`In contrast, despite having the Board’s construction from IPR2020-01265 in
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`advance of filing its POR, ParkerVision disregards it, rehashing the same rejected
`
`arguments, while also raising new arguments that contradict its own lead
`
`inventor’s prior sworn testimony. The Board should reject each of these arguments
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`for at least the below reasons.
`
`1.
`
`ParkerVision’s Proposed Construction Contradicts the
`Inventor’s Lexicography
`
`Like the patent at issue in IPR2020-01265, the ’835 patent incorporates by
`
`reference, in its entirety, U.S. Patent No. 6,061,551 (“the ’551 patent”). Ex. 1001
`
`at 1:5-20. The ’551 “patent specification provides a lexicographic definition” for
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`Patent 7,292,835 B2
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`“storage modules,” viz., “systems that store non-negligible amounts of energy from
`
`an input EM signal.” Ex. 2037 at 36 (emphasis added). Indeed, ParkerVision
`
`itself proposed this express construction of “storage module” from the
`
`specification of the ’551 patent in a previous IPR proceeding. Id. at 39.
`
`In contravention of its prior IPR position, ParkerVision now relies on
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`argument from Dr. Michael Steer ostensibly in support of the construction “a
`
`module of an energy transfer system that stores non-negligible amounts of energy
`
`from an input electromagnetic signal.” Ex. 2038 ¶272. This even though the Board
`
`found this same argument from Dr. Steer to be “clearly at odds with the
`
`lexicographic definition provided in the ’551 patent because the definition does not
`
`include ‘energy transfer’ in the meaning of ‘storage element.’” Ex. 2037 at 41.
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`The Board thus rejected Dr. Steer’s position and concluded that “one of ordinary
`
`skill in the art would understand ‘storage element’ to mean ‘an element of a system
`
`that stores non-negligible amounts of energy from an input EM signal.’” Id.4
`
`The Board’s construction from IPR2020-01265 applies to the term “storage
`
`module” here because the ’835 patent also incorporates the lexicographic
`
`
`4 Notably, Dr. Steer did not even review the Board’s decision before submitting his
`declaration in this proceeding, as he testified that he had not seen the Board’s
`decision until it was shown to him by Petitioners during cross-examination in these
`proceedings. Ex. 1016 at 37:19-40:21.
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`8
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`definition from the ’551 patent. Ex. 1001 at 1:5-20. Moreover, ParkerVision does
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`not dispute that all the “storage” terms in the ’835 patent and the patent at issue in
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`IPR2020-01265—the ’444 Patent—should be given the same construction. POR at
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`2 n.2; id. at 3 n.4; Exs. 1011, 2011-2015 (arguing in the underlying litigations that
`
`all “storage” terms have the same meaning); see Omega Eng’g Inc. v. Raytek
`
`Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise
`
`compelled, that the same claim term in the same patent or related patents carries
`
`the same construed meaning”); Samsung Elecs. Co. v. Elm 3DS Innovations, LLC,
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`925 F.3d 1373, 1378-79 (Fed. Cir. 2019).
`
`2.
`
`A Capacitor Used To Successfully Down-Convert a Signal
`Stores “Non-Negligible Energy”
`
`As noted previously, ParkerVision also attempts to further construe “non-
`
`negligible” from the construction of “storage module” to require that the amount of
`
`energy on the capacitor serving as a “storage module” must be shown
`
`“mathematically” in a complex, three-step calculation that compares the “total
`
`available energy” to the “energy in a capacitor.” POR at 62-67. ParkerVision and
`
`its expert, however, offer no legitimate reason for requiring a comparison of the
`
`capacitor’s energy to the “total available energy” in the context of down-
`
`converting an input EM signal.
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`IPR2021-00985
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`Nor can they, as ParkerVision and the lead inventor on the ’835 Patent,
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`David Sorrells, asserted previously that a “non-negligible” amount of energy stored
`
`in a “storage module” is merely that which is “distinguishable from noise.” See
`
`Paper 18 at 4-7. The courts involved accepted that interpretation. ParkerVision,
`
`Inc. v. Qualcomm Inc., No. 3:11-CV-719-J-37TEM, 2013 WL 633077, at *5-*7
`
`(M.D. Fla. Feb. 20, 2013); ParkerVision, Inc. v. Qualcomm Inc., 621 F. App’x
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`1009, 1018 (Fed. Cir. 2015) (“That construction is not disputed on appeal.”).5
`
`In particular, Mr. Sorrells “explained at trial that transferring a non-
`
`negligible amount of energy into the storage capacitor means ‘that you have to
`
`transfer enough energy to overcome the noise in the system to be able to meet your
`
`specifications.’” 621 F. App’x at 1019. Mr. Sorrells thus concluded that when a
`
`product functions according to its specifications, this “is proof that a ‘non-
`
`negligible’ amount of energy is transferred to the storage element in those
`
`products.” 621 F. App’x at 1019 (emphasis added). As viewed by the Federal
`
`Circuit, “Mr. Sorrells’ testimony thus establishes that to determine whether or not
`
`energy in amounts distinguishable from noise has been transferred from the carrier
`
`signal, one may look to whether the down-converting circuit functions in practice.
`
`
`5 The ’551 patent was at issue in the Qualcomm case. As discussed above, the ’835
`and ’444 patents incorporate the ’551 patent’s lexicography.
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`If a circuit successfully down-converts, that is proof that enough energy has been
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`transferred to overcome the noise in the system.” Id. (emphasis added).
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`Notably, the Middle District of Florida very recently relied on this prior
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`testimony from Mr. Sorrells regarding what constitutes “non-negligible” energy
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`(see Ex. 1017 at 20 n.14), finding that under Mr. Sorrells’ interpretation a certain
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`prior art reference was found to disclose a “storage module” that receives “non-
`
`negligible amounts of energy,” and held that this “factual finding … has preclusive
`
`effect.” Ex. 1017 at 20-21; id. at 21 (“[A]n expert may not change the claim
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`limitations to suit a preferred theory.”).6
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`Accordingly, if the Board deems it necessary to provide a substituent
`
`construction of “non-negligible” from its construction of “storage module,” it
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`should hold that when a device employs a capacitor in order to “successfully
`
`down-convert” a signal, then “that is proof” that the capacitor stores non-negligible
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`energy. ParkerVision, 621 F. App’x at 1019. Further, the Board should hold that
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`ParkerVision is collaterally estopped from arguing otherwise. Nestle USA, Inc. v.
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`Steuben Foods, Inc., 884 F.3d 1350, 1352 (Fed. Cir. 2008) (“Importantly, our
`
`
`6 Again, ParkerVision’s expert Dr. Steer failed to consider crucial materials in
`arriving at his opinion here, as he did not review Mr. Sorrell’s prior testimony
`regarding the meaning of “non-negligible,” nor did he consider the Federal Circuit
`and District Court opinions relying on that testimony. Ex. 1016 at 55:25-56:14,
`60:5-67:20, 72:11-74:5
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`precedent makes clear that collateral estoppel is not limited to patent claims that
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`are identical. Rather it is the identity of the issues that were litigated that
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`determines whether collateral estoppel should apply.”) (original emphasis, internal
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`quotations omitted).
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`3.
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`Petitioners Do Not Rely On “New Evidence”
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`ParkerVision suggests that any response to its new “mathematical
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`calculation” construction-of-a-construction would be an impermissible “new
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`argument.” POR at 3-4. Not so.
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`First, this Reply does not make any impermissible new argument (much less
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`rely on any new evidence), but “merely expands on a previously argued rationale”
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`in showing that the capacitors of Hullko and Schiltz store non-negligible energy
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`under the Board’s recently adopted construction (which is consistent with the
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`Petition) and ParkerVision’s own previous litigation position. Ericsson Inc. v.
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`Intell. Ventures I LLC, 901 F.3d 1374, 1381 (Fed. Cir. 2018); see Belden Inc. v.
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`Berk-Tek LLC, 805 F.3d 1064, 1077-78 (Fed. Cir. 2015) (allowing expert
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`declaration in reply that “fairly responds only to arguments” in POR).
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`Second, it is immaterial that the Petition did not use the specific word “non-
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`negligible” in showing that the capacitors of Hullko and Schiltz function to store
`
`significant amounts of charge from the incoming EM signal. This proceeding is not
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`a semantics game, and any failure “to disclose a claim limitation in the same words
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`used by the patentee is not fatal to a claim of invalidity.” ParkerVision, 621 F.
`
`App’x at 1018-19.
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`4.
`
`Dr. Steer’s Unreliable Opinions Are Not Based on the
`Correct Construction of “Storage Module”
`
`In contrast, Dr. Steer’s opinions are not consistent with the Board’s
`
`construction of “storage module” from IPR2020-01265 because Dr. Steer includes
`
`an additional “energy transfer system” limitation. And his opinions also are not
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`consistent with ParkerVision’s own inventor testimony as to what amount of
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`energy is “non-negligible,” as he requires a “mathematical calculation” having no
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`basis in the intrinsic evidence that compares the energy in a capacitor to the “total
`
`available energy.”
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`Accordingly, the Board should again disregard Dr. Steer’s opinions
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`premised on a construction that is “clearly at odds” with the specification. Ex. 2037
`
`at 41.7
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`7 Due to comparable failings, Dr. Steer’s testimony in support of ParkerVision’s
`arguments has been previously excluded in district court, with the court finding
`that Dr. Steer’s opinions are “unreliable,” based on mere “speculation,” and are
`barred by “issue preclusion.” Ex. 1017 at 2-33; see Ex. 1016 at 24:6-37:13, 44:22-
`46:1, 67:24-74:22. Similarly, after an ITC ALJ excluded Dr. Steer’s testimony and
`other “material portions” of ParkerVision’s evidence, ParkerVision “determined
`that it can no longer proceed with its case-in-chief before the Commission” and
`withdrew its Complaint. Ex. 1020 at 1-2; Ex. 1016 at 77:4-79:5.
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`13
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`IPR2021-00985
`Patent 7,292,835 B2
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`B.
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`“cable modem”
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`1.
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`“Cable Modem” Is Not a Claim Limitation
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`In the two litigations that gave rise to the Petition, ParkerVision never once
`
`argued that “cable modem” in the preamble of claim 1 is limiting. See Ex. 2014,
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`2015. And for good reason—“cable modem” is non-essential and does not give
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`life or meaning to the structurally complete body of claim 1. What is more, in the
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`complaints in the underlying litigations, ParkerVision alleges that Wi-Fi chips in
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`TVs sold by TCL and Hisense, respectively, are “cable modems”—even though
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`Wi-Fi chips obviously have no physical transmission line or cabling. Ex. 2002
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`¶112; Ex. 2001 ¶90. The Board should reject ParkerVision’s attempt to narrow
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`claim scope here in a way that contradicts its litigation position and runs afoul of
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`well-established precedent regarding claim preambles.
`
`Courts must presume that a preamble is not limiting. “Generally… the
`
`preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d
`
`1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it
`
`“recites essential structure or steps, or if it is ‘necessary to give life, meaning, and
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`vitality’ to the claim.” TomTom, Inc. v. Adolph, 790 F.3d 1315, 1323 (Fed. Cir.
`
`2015).
`
`First, “a preamble is not limiting ‘where a patentee defines a structurally
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`complete invention in the claim body and uses the preamble only to state a purpose
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`14
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`IPR2021-00985
`Patent 7,292,835 B2
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`or intended use for the invention.’” Id. Second, even if a portion of the preamble is
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`limiting, this does not mean that the entire preamble is limiting—particularly if the
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`remaining portion “is language stating a purpose or intended use.” Id. at 1323-24.
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`Guided by these principles, only one conclusion remains—“cable modem” is
`
`not a limitation in the challenged claims. The portion of the preamble that includes
`
`the phrase “[a] cable modem” does not provide antecedent basis for any later term
`
`in claim 1. Nor does cable modem provide any “essential structure,” as the
`
`remainder of the claim recites a structurally complete invention, and the term
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`“cable modem” does not give life, meaning, and vitality to the claim. TomTom,
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`790 F.3d at 1323. More specifically, if “cable modem” was deleted from the
`
`preamble or replaced with a generic word like “device,” the body of the claims
`
`would still define a structurally complete apparatus that down-converts by using an
`
`oscillator, a phase shifter, a first frequency down-conversion module, and a second
`
`frequency down-conversion module. See Pet. at 29. Indeed, the ’835 specification
`
`describes the combination of these components as a stand-alone device (“Receiver
`
`5400”), which is “applicable to any of the applications described in any of the
`
`sections” in the specification. Ex. 1001 at 48:11-20, 42:43-43:57, Figures 52, 54B;
`
`Pet. at 26.
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`15
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`IPR2021-00985
`Patent 7,292,835 B2
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`Further, like the preamble at issue in TomTom, “[a] cable modem” merely
`
`states an intended use. 790 F.3d at 1323. The ’835 Patent “is directed to systems
`
`and methods of universal frequency down-conversion, and applications of same.”
`
`Ex. 1001 at 6:51-53. And a “cable modem” is just one of the many “exemplary
`
`applications” that can use the purported invention. Id. at 5:11-59, 21:55-22:7,
`
`23:20-24:2, 48:11-20, 48:34-39, 49:6-12, 49:38-42, 50:1-5, 50:13-23. “These
`
`applications and embodiments are not intended to limit the invention.” Id. at 50:14-
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`15 (emphasis added); id. at 23:55-24:2, 50:13-25. Nothing in the specification
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`states or suggests that a cable modem is anything more than an intended use.
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`Notably, the magistrate judge in the WDTX recently found that “cable
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`modem” in claim 1 is not limiting. See Ex. 1021.
`
`2.
`
`If “Cable Modem” Is Limiting, It Refers to a Device That
`Can Down-Convert Signals From a TV Network, Including
`Devices Without Cables
`
`If the Board finds that “cable modem” is limiting, a cable modem in the
`
`limited context of the ’835 patent can be used to communicate with a cable TV
`
`network using a cable or wirelessly. Ex. 1001 (’835 patent) at Col. 36:19-25,
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`36:50-56 (“wired cable modem”), 37:24-30 (“wireless cable modem”), Fig. 45B
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`(wireless cable modem 4522). Moreover, the invention “is not limited to” the
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`DOCSIS standard, as it can be used with “additional standards” (e.g., ITU-T J.83b)
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`16
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`IPR2021-00985
`Patent 7,292,835 B2
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`and can also be used in “non-standard configurations.” Id. at 38:28-34.
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`Accordingly, even if the preamble is limiting, the Board should find that any
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`device that can be used to down-convert modulated signals from a TV network is a
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`“cable modem” in the context of the ’835 patent, regardless of whether the device
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`has a cable or is wireless, and regardless of whether it complies with any standard.
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`See Ex. 1002 ¶113.
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`III. THE PRIOR ART DISCLOSES “STORAGE MODULES”
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`Under the Board’s construction in the related IPR (which Petitioner adopts),
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`a “storage module” is “an element of a system that stores non-negligible amounts
`
`of energy from an input EM signal.” Section II.A.1, supra. As set forth in the
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`Petition, each of the capacitors identified in the prior art references represents such
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`a “storage module” that “holds” significant electromagnetic energy from the
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`incoming signal. See, e.g., Pet. at 60 (citing Ex. 1004 at 4:64-65 (“A first capacitor
`
`30 is used to sample [a]nd hold the incoming signal”)); 71-72 (describing how
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`Schiltz “discloses a mixer having sampling switch 68 (comprising a field effect
`
`transistor 76, blue) and a ‘hold capacitor’ 70 (brown)”). Moreover, each device
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`that contains the identified “storage module” capacitor “successfully down-
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`converts” a signal, and “that is proof” that such capacitor stores non-negligible
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`17
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`IPR2021-00985
`Patent 7,292,835 B2
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`energy. ParkerVision, 621 F. App’x at 1019 (emphasis added); see Section II.A.2,
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`supra.
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`As shown in the Petition and summarized below, Hullko (Ground 1) and
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`Schiltz (Ground 2) each contain a capacitor that acts as the claimed “storage
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`module” under the Board’s construction.
`
`A. Hulkko Discloses the Claimed “Storage Modules”
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`Like Figure 54B of the ’835 patent and the challenged claims, Figure 2 of
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`Hulkko discloses a modem for down-converting an electromagnetic signal
`
`(purple), with the modem comprising first and second frequency down-conversion
`
`modules (red and green, respectively), a local oscillator to create an in-phase
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`18
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`IPR2021-00985
`Patent 7,292,835 B2
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`oscillating signal, and a phase-shifter to create a quadrature-phase oscillating
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`signal:
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`The first frequency down-conversion module (mixer 11, red) receives the
`
`electromagnetic signal (purple) and the in-phase oscillating signal (pink); while the
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`second frequency down-conversion module (mixer 12, green) receives the
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`electromagnetic signal (purple) and the quadrature-phase oscillating signal
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`
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`(orange). Pet. at 5-7, 35-37.
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`
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`Each of the two frequency down-conversion modules shown in Hulkko’s
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`Figure 2 includes a first frequency translation module (switch 31, blue) and a
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`storage module (capacitor 30, brown):
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`IPR2021-00985
`Patent 7,292,835 B2
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`Moreover, Hulkko’s frequency translation modules perform down conversion by
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`sampling the input signal using a switched capacitor—which accumulates (i.e.,
`
`integrates) charge (hence, energy)—exactly like the alleged invention of the ’835
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`
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`patent.
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`In particular, “mixer 11 can be considered as a sample and a hold circuit that
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`samples the input signal in synchronization with the oscillator and directs the
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`samples to the output as a signal which remains constant for the period of the
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`sampling interval.” Ex. 1004 at 5:13-17. A “first capacitor 30 is used to sample
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`[a]nd hold the incoming signal. …. Once the input signal has been sampled, a third
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`switch 33 is closed to transfer the charge on the first capacitor 30 to the output.”
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`Id. at 4:61-5:12 (emphasis added). Thus, the first capacitor 30 in Hulko serves to
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`store or “hold” non-ne
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