IPR2021-00985
`U.S. Patent No. 7,292,835
`Motion to Strike
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`TCL Industries Holdings Co., Ltd., Hisense Co., Ltd., and
`LG Electronics Inc.,
`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 MOTION TO STRIKE ARGUMENTS IMPROPERLY
`RAISED IN PETITIONERS’ REPLY
`
`
`U.S. Patent No. 7,292,835
`Motion to Strike
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`TCL Industries Holdings Co., Ltd., Hisense Co., Ltd., and
`LG Electronics Inc.,
`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 MOTION TO STRIKE ARGUMENTS IMPROPERLY
`RAISED IN PETITIONERS’ REPLY
`
`
`
`TABLE OF CONTENTS
`
`Page
`Introduction. ..................................................................................................... 1
`I.
`II. Arguments improperly raised in petitioners’ reply. ........................................ 1
`III. The Board should strike Petitioners’ newly disclosed theory. ........................ 3
`A.
`Petitioners could have addressed whether capacitors in the prior art
`references “store non-negligible amounts of energy” but chose
`not to do so. ........................................................................................... 3
`Petitioners’ argument in their Reply regarding “storage module”
`is not a “response” to the POR. ............................................................. 5
`Patent Owner is prejudiced by Petitioners’ new argument. .................. 7
`C.
`IV. Conclusion. ...................................................................................................... 8
`
`
`
`B.
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Intel Corp. v. ParkerVision, Inc.,
`Case IPR2020-01265, Paper 44 (P.T.A.B. Jan. 21, 2022) ................................... 7
`Intel Corp. v. ParkerVision, Inc,
`Case IPR2020-01265, Paper 18 (P.T.A.B. May 11, 2021) .................................. 4
`Intelligent Bio-Systems v. Illumina Cambridge,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 6
`SAS Institute Inc. v. Iancu,
`138 S.Ct. 1348 (2018) .......................................................................................... 6
`Statutes and Rules
`37 C.F.R. § 42.23(b) .............................................................................................. 1, 6
`
`
`
`
`
`ii
`
`
`
`On June 14, 2022, the Board held a telephone conference and granted Patent
`
`Owner’s leave to file this motion to strike.
`
`I.
`
`Introduction.
`Petitioners present a new theory for the first time in their Reply related to the
`
`term “storage module.” In particular, in the Petition, Petitioners merely identified
`
`capacitors as “storage modules.” In the Reply, however, Petitioners argue an
`
`entirely new direction in terms of what makes a capacitor a storage module—it
`
`“stores non-negligible amounts of energy.” Petitioners proceeding in a new
`
`direction with a new approach compared to the position Petitioners took in their
`
`Petition is prohibited by 37 C.F.R. § 42.23(b) and the Consolidated Trial Practice
`
`Guidelines (“Consolidated TPG”).
`
`Moreover, Petitioners’ untimely disclosure prejudices Patent Owner; Patent
`
`Owner is deprived of its ability to have its expert address Petitioners’ arguments.
`
`Accordingly, Patent Owner respectfully requests the Board to strike the arguments
`
`Petitioners improperly raised in their Reply.
`
`II. Arguments improperly raised in petitioners’ reply.
`Patent Owner seeks to strike Petitioners’ new arguments regarding
`
`capacitors in the prior art references. In particular, Patent Owner seeks to strike the
`
`following arguments:
`
`Here, the prior art indisputably discloses a capacitor within a circuit
`that “successfully down-converts” a signal, and “that is proof” that
`1
`
`
`
`
`
`the capacitor stores non-negligible energy under ParkerVision’s
`original position. Reply, 3.
`
`Although not limited to a capacitor, the Board’s construction
`regarding the 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. Reply, 7.
`
`Moreover, each device that contains the identified “storage module”
`capacitor “successfully down-converts” a signal, and “that is proof”
`that such capacitor stores non-negligible energy.” Reply, 17-18.
`
`Thus, the first capacitor 30 in Hulko [sic] serves to store or “hold”
`non-negligible energy that has been sampled from the input EM
`signal, and then transfers that energy or “charge on the first
`capacitor” when the third switch is closed. Reply, 20-21
`
`Therefore, because Hulkko’s capacitors successfully demodulate the
`signal “into a base-frequency signal” (i.e., successfully perform
`down-conversion), “that is proof that the capacitors store non-
`negligible energy under ParkerVision’s prior litigation position.
`Reply, 21.
`
`The drain of field effect transistor 76 is coupled to “hold capacitor
`70,” resulting in sufficient non-negligible energy being transferred
`from the input EM signal and stored on the capacitor 70 in order to
`“hold” the sampled signal. Reply, 23.
`
`Moreover, capacitor 70…successfully performs down-conversion….
`This constitutes additional “proof” according to the lead inventor on
`the ’835 patent that the capacitor stores non-negligible energy and
`2
`
`
`
`
`
`represents a “storage module” within the meaning of the claims.
`Reply, 23-24.
`
`III. The Board should strike Petitioners’ newly disclosed theory.
`At the heart of the dispute between the parties in this IPR is the term
`
`“storage module.” The term is found in the only independent claim of U.S. Patent
`
`No. 7,292,835 (“’835 patent”).
`
`The Petition merely identifies a capacitor as a “storage module.” See Pet.,
`
`60, 63, 75, 78-79. In its POR, ParkerVision argued that a storage module must
`
`“store non-negligible amounts of energy” (which comes from a district court
`
`construction set forth in Section III.A) and the capacitors in the prior art references
`
`do not.
`
`Then, for the first time in its Reply, Petitioners address the concept of “non-
`
`negligible amounts of energy” arguing 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 energy.” Reply, 11; see also 17-18, 20-21, 23-24. As
`
`discussed below in Section III.B, this is a new argument, not a response.
`
`A.
`
`Petitioners could have addressed whether capacitors in the prior
`art references “store non-negligible amounts of energy” but chose
`not to do so.
`On January 26, 2021, the U.S. District Court for the Western District of
`
`Texas (“District Court”) construed claim terms in patents related to ParkerVision’s
`
`down-conversion technology in ParkerVision’s litigation against Intel. Among
`3
`
`
`
`
`
`these terms were “storage element” and “storage module,” both of which must
`
`“store[] non-negligible amounts of energy from an input electromagnetic signal”
`
`(Ex. 1011 at 5) – language Petitioners later argued was lexicography and
`
`ultimately adopted in their own construction in litigation.1
`
`On May 11, 2021, ParkerVision filed its Patent Owner’s Response (“POR”)
`
`in IPR2020-01265 which pertained to another patent related to ParkerVision’s
`
`down-conversion technology (U.S. Patent No. 7,110,444). In the POR, the Patent
`
`Owner provided its position regarding the term “storage element” and “stores non-
`
`negligible amounts of energy from an input electromagnetic signal.” Intel Corp. v.
`
`ParkerVision, Inc, Case IPR2020-01265, Paper 18 (Patent Owner’s Response) at
`
`2-4, 33-36, 46-47, 49 (P.T.A.B. May 11, 2021).
`
`Four months after the District Court’s claim construction order and nine
`
`days after having Patent Owner’s position regarding “storage module,” on May 20,
`
`2021, the Petitioners filed the Petition.
`
`Notably, Petitioners included the District Court’s claim construction order as
`
`Ex. 1011 to the Petition. Yet, Petitioners purposefully ignored the District Court’s
`
`construction of “storage module.” See, generally, Ex. 1011.
`
`
`1 In IPR2020-01265, the Board construed “storage element” to include this
`
`language.
`
`
`
`4
`
`
`
`Thus, when filing the Petition, the Petitioners could have (and should have)
`
`addressed the language requiring that the “storage module” “stores non-negligible
`
`amounts of energy.” Petitioners did not.
`
`B.
`
`Petitioners’ argument in their Reply regarding “storage module”
`is not a “response” to the POR.
`There is a difference between a response to Patent Owner’s POR and raising
`
`new arguments. Petitioners responding to Patent Owner’s view as to what
`
`constitutes non-negligible amounts of energy is a response. But Petitioners arguing
`
`that a capacitor in the prior art references “stores non-negligible amounts of
`
`energy” is not a response. It is a new argument about alleged disclosures in the
`
`prior art.
`
`Here, the Petition merely identifies a capacitor as a “storage module.” See
`
`Pet., 60, 63, 75, 78-79. The Petition and supporting expert declaration make no
`
`mention (expressly or conceptually) of the term “non-negligible,” “negligible,” or
`
`“energy.” And the Petition and declaration make no mention (expressly or
`
`conceptually) (1) that any capacitor (in the prior art or otherwise) “stores non-
`
`negligible amounts of energy,” (2) what constitutes “non-negligible amounts of
`
`energy” or (3) how any capacitor (in the prior art or otherwise) “stores non-
`
`negligible amounts of energy.”
`
`For the first time in its Reply, Petitioners address the concept of “non-
`
`negligible amounts of energy” arguing that “when a device employs a capacitor in
`5
`
`
`
`
`
`order to ‘successfully down-convert’ a signal, then ‘that is proof’ that the capacitor
`
`stores non-negligible energy.” Reply, 11; see also 17-18, 20-21, 23-24. In doing
`
`so, Petitioners cite the testimony of one of the inventors (Mr. Sorrells) quoted in a
`
`2015 Federal Circuit case (evidence available to Petitioner for six years prior to
`
`filing the Reply). Id. (citing ParkerVision, Inc. v. Qualcomm Inc., 621 F. App’x
`
`1009, 1019 (Fed. Cir. 2015)).
`
`“A reply may only respond to arguments raised in the corresponding
`
`opposition, patent owner preliminary response, patent owner response, or decision
`
`on institution.” 37 C.F.R. § 42.23(b). “‘Respond,’ in the context of 37 C.F.R. §
`
`42.23(b), does not mean proceed in a new direction with a new approach as
`
`compared to the positions taken in a prior filing. While replies . . . can help
`
`crystalize issues for decision, a reply . . . that raises a new issue or belatedly
`
`presents evidence may not be considered.” Consolidated TPG at 74. See also
`
`Intelligent Bio-Systems v. Illumina Cambridge, 821 F.3d 1359, 1366, 69-70 (Fed.
`
`Cir. 2016) (affirming the Board’s finding that the petitioner “ran afoul of §
`
`42.23(b) by presenting a new argument for the first time in its reply brief”); SAS
`
`Institute Inc. v. Iancu, 138 S.Ct. 1348 (2018).
`
`By arguing (and presenting never before disclosed evidence) that capacitors
`
`in the prior art references “store non-negligible amounts of energy,” Petitioners’
`
`Reply proceeds in a new direction with a new approach compared to the positions
`
`
`
`6
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`
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`taken in the Petition. Thus, Petitioners’ new theory is impermissible with regard to
`
`their Reply. See Intel Corp. v. ParkerVision, Inc., Case IPR2020-01265, Paper 44
`
`(Final Written Decision) at 67-68, 70-71 (P.T.A.B. Jan. 21, 2022) (striking
`
`portions of Patent Owner’s sur-reply that “proceed in a new direction with a new
`
`approach as compared to the positions taken in Patent Owner’s Response”).
`
`Patent Owner is prejudiced by Petitioners’ new argument.
`C.
`By presenting its new theory—“when a device employs a capacitor in order
`
`to ‘successfully down-convert’ a signal, then ‘that is proof’ that the capacitor stores
`
`non-negligible energy”—for the first time in the Reply, Petitioners have deprived
`
`Patent Owner of the right to have its expert address this argument. At this stage in
`
`the proceeding (sur-reply), Patent Owner is prohibited from filing an expert
`
`declaration and having its expert address Petitioners’ arguments. Thus, Patent
`
`Owner is prejudiced.
`
`That Petitioner raises its new theory through attorney argument instead of
`
`expert testimony is irrelevant. Patent Owner is entitled to have its expert address
`
`Petitioners’ theories regardless of the manner in which they make their arguments.
`
`Petitioners’ strategy to rely on attorney argument and not an expert declaration is
`
`not only telling but cannot strip Patent Owner of its rights to have its expert
`
`respond.
`
`
`
`7
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`
`
`IV. Conclusion.
`For the foregoing reasons, the Board should strike arguments improperly
`
`raised in Petitioners’ Reply.
`
`
`
`Dated: June 22, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`By: /Jason S. Charkow/
`Jason S. Charkow (USPTO Reg. No. 46,418)*
`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
`Attorneys for ParkerVision, Inc.
`
`8
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`MOTION TO STRIKE ARGUMENTS IMPROPERLY RAISED IN
`
`PETITIONERS’ REPLY was served electronically via email on June 22, 2022, on
`
`the following counsel of record for Petitioner:
`
`Kristopher Reed (Lead Counsel)
`KILPATRICK TOWNSEND & STOCKTON LLP
`kreed@kipatricktownsend.com
`tmayle@kilpatricktownsend.com
`mferrario@kilpatricktownsend.com
`
`
`
`
`Dated: June 22, 2022
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Jason S. Charkow/
` Jason S. Charkow
` USPTO Reg. No. 46,418
`
`
`
`
`
`9
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`
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