`Paper No. 29
`Filed: June 30, 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’ OPPOSITION TO PATENT OWNER’S MOTION TO
`STRIKE PORTIONS OF PETITIONERS’ REPLY
`
`
`
`
`
`
` 1
`
` LG Electronics Inc., who filed a petition in IPR2022-00246, is joined as a
`petitioner in this proceeding.
`
`
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`FACTUAL BACKGROUND .......................................................................... 3
`
`A.
`
`B.
`
`C.
`
`ParkerVision’s Infringement Position Is That a Capacitor Used
`to Perform Down-Conversion Necessarily Contains “Non-
`Negligible” Energy and Is Thus a “Storage” Module ........................... 3
`
`The Petition Shows That Prior Art Systems Used Switched-
`Capacitors as “Storage” Modules .......................................................... 4
`
`ParkerVision Debuted Its Energy-Calculation Theory Months
`After the Petition Was Filed .................................................................. 5
`
`III. THE BOARD SHOULD DENY THE MOTION TO STRIKE ...................... 5
`
`A.
`
`The Reply Does Not Raise an Impermissible “New Theory” or
`“Present Never Before Disclosed Evidence” ........................................ 6
`
`1.
`
`2.
`
`The Reply Responds to the POR ................................................ 6
`
`The Legal Grounds for Unpatentability Are the Same in
`the Petition and the Reply and There Was No Waiver of
`the Word “Non-Negligible” ........................................................ 7
`
`3.
`
`The Reply Does Not Unfairly Prejudice ParkerVision ............... 9
`
`B.
`
`ParkerVision’s Cited Cases Are Inapplicable ..................................... 10
`
`IV. CONCLUSION .............................................................................................. 10
`
`
`
`
`
`
`
`
`
`
`i
`
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Anacor Pharm., Inc. v. Iancu,
`889 F.3d 1372 (Fed. Cir. 2018) ............................................................................ 6
`Apple Inc. v. Andrea Elec. Corp.
`949 F.3d 697 (Fed. Cir. 2020) ...................................................................... 2, 6, 7
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................ 6
`Chamberlain Grp., Inc. v. One World Techs., Inc.,
`944 F.3d 919 (Fed. Cir. 2019) .............................................................................. 7
`Everstar Merch. Co. v. Willis Elec. Co.,
`No. 2021-1882, 2022 WL 1089909 (Fed. Cir. Apr. 12, 2022) ............................. 6
`Grunenthal Gmbh v. Antecip Bioventures II LLC,
`PGR2018-00092, 2020 WL 896727 (P.T.A.B. Feb. 24, 2020) ............................ 6
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 10
`ParkerVision, Inc. v. Qualcomm Inc.,
`621 F. App’x 1009 (Fed. Cir. 2015), reh’g denied, 627 F. App’x
`921 (Fed. Cir. 2015), cert. denied, 577 U.S. 1236 (2016) ................................ 3, 4
`ParkerVision, Inc. v. Qualcomm, Inc.,
`No. 3:11-cv-719-J-37TEM, 2013 WL 633077 (M.D. Fla. Feb. 20,
`2013) ..................................................................................................................... 3
`United States v. Burt,
`495 F.3d 733 (7th Cir. 2007) ................................................................................ 9
`Valve Corp. v. Ironburg Inventions Ltd.,
`8 F.4th 1364 (Fed. Cir. 2021) ............................................................................... 6
`
`ii
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`Other Authorities
`37 C.F.R. § 42.23(b) .................................................................................................. 6
`
`
`
`iii
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`I.
`
`INTRODUCTION
`
`
`
`
`
`The “exceptional remedy” of striking portions of the Reply is not warranted.
`
`First, the Reply does not contain any “new theory.” Exactly like the
`
`Petition, it explains how certain prior art references disclose “storage” modules in
`
`the form of switched-capacitors used to down-convert an RF signal. This showing
`
`is consistent with, and more detailed than, ParkerVision’s own infringement
`
`argument, i.e., that a “storage” module is simply “one or more capacitors.” Reply
`
`at 6 (citing Complaints).
`
`
`
`ParkerVision attempted to narrow the claims to avoid prior art in the POR.
`
`Specifically, the POR newly argues that a capacitor is not a “storage” module
`
`unless its stored energy is more than some unspecified fraction of the “total
`
`available energy.” As would be expected, Petitioners’ Reply highlights the
`
`inconsistencies between ParkerVision’s positions (i.e., those adopted during
`
`litigation versus its newfound position in the POR). Specifically, it shows that
`
`ParkerVision previously argued that energy merely “distinguishable from noise” is
`
`non-negligible. Reply at 9-12. And under that meaning, the lead inventor on the
`
`’835 patent testified that when a circuit performs down-conversion that is “proof”
`
`that its storage module had non-negligible energy. Id. The Federal Circuit
`
`accepted ParkerVision’s position as to the meaning of “non-negligible.” See id.
`
`
`
`
`1
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`
`
`Further, Petitioners’ “reply arguments are responsive to” the POR’s
`
`newfound energy-calculations theory. Apple Inc. v. Andrea Elec. Corp. 949 F.3d
`
`697, 706-07 (Fed. Cir. 2020). Id. In particular, Petitioners’ reply arguments cite
`
`the same specific combinations of prior art (and specific figures and language
`
`therefrom) that are presented in the Petition. E.g., Reply at 17-23. And the Reply
`
`does not present any new expert testimony. See id. Thus, there is no “new theory”
`
`or “never before disclosed evidence” in the Reply as ParkerVision alleges (Mot. at
`
`1, 6), just routine argument illustrating how ParkerVision’s POR is flawed and the
`
`Petition is correct. That is the very purpose of a Reply, and the inquiry should end
`
`here. Apple Inc., 949 F.3d at 706-07.
`
`
`
`Second, and independently, ParkerVision did not (and cannot) show that the
`
`Reply arguments are unfairly prejudicial, particularly when ParkerVision will have
`
`the last word in its Sur-Reply. ParkerVision vaguely suggests that it would need
`
`another expert declaration to respond to the Reply. But no amount of expert
`
`testimony can change the fact that ParkerVision has taken a position in its POR
`
`that is inconsistent with the position of its lead inventor in a prior litigation—a
`
`position endorsed by the Federal Circuit. And the Board should not allow
`
`ParkerVision to whitewash the record by striking portions of the Reply that both
`
`call out such inconsistencies and show how ParkerVision’s litigation positions are
`
`actually consistent with the Petition.
`
`2
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`II.
`
`FACTUAL BACKGROUND
`A.
`
`ParkerVision’s Infringement Position Is That a Capacitor Used to
`Perform Down-Conversion Necessarily Contains “Non-
`Negligible” Energy and Is Thus a “Storage” Module
`
`
`
`In the underlying litigations, ParkerVision alleges repeatedly across multiple
`
`related patents that a “storage” module in the accused products is simply “one or
`
`more capacitors.” See Reply at 6 (citing Complaints). Moreover, ParkerVision has
`
`a long history of asserting related patents in infringement litigation, and it had
`
`never argued before the recent IPR proceedings that a capacitor is not a “storage”
`
`module unless the capacitor’s energy is more than some unspecified fraction of the
`
`“total available energy” from the input RF signal. To the contrary, with respect to
`
`a claim where “non-negligible” is in the actual claim language, the Middle District
`
`of Florida construed “non-negligible” to mean an amount of energy merely
`
`“distinguishable from noise.” ParkerVision, Inc. v. Qualcomm, Inc., No. 3:11-cv-
`
`719-J-37TEM, 2013 WL 633077, at *5-*7 (M.D. Fla. Feb. 20, 2013). That
`
`construction was “not disputed on appeal.” ParkerVision, Inc. v. Qualcomm Inc.,
`
`621 F. App’x 1009, 1018 (Fed. Cir. 2015), reh’g denied, 627 F. App’x 921 (Fed.
`
`Cir. 2015), cert. denied, 577 U.S. 1236 (2016).
`
`
`
`ParkerVision itself advocated for that construction, which sets a low bar for
`
`what is “non-negligible.” In particular, the lead inventor, Mr. David Sorrells,
`
`“explained at trial that transferring a non-negligible amount of energy into the
`
`3
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`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.
`
`He 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.” Id. 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.” Id. “If a
`
`circuit successfully down-converts, that is proof that enough energy has been
`
`transferred to overcome the noise in the system.” Id. (emphasis added).
`
`B.
`
`The Petition Shows That Prior Art Systems Used Switched-
`Capacitors as “Storage” Modules
`
`
`
`The Petition did not “merely identify capacitors as ‘storage modules.’” Mot.
`
`at 1. Rather, Consistent with ParkerVision’s infringement position and the Federal
`
`Circuit’s Qualcomm decision, the Petition shows that prior art capacitors used to
`
`successfully perform down-conversion are “storage” modules. As to Ground 1, the
`
`Petition shows that Hulkko’s capacitors are “storage” modules. E.g., Pet. at 4-7,
`
`35-37, 43-46, 50-67. And as to Ground 2, the Petition shows that Schiltz’s
`
`capacitors are “storage” modules. E.g., Pet. at 8-11, 39-41, 46-47, 67-85.
`
`4
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`C.
`
`ParkerVision Debuted Its Energy-Calculation Theory Months
`After the Petition Was Filed
`
`
`
`Four months after the Petition was filed, ParkerVision debuted its
`
`calculation-based argument in another IPR proceeding involving Intel (IPR2020-
`
`01265, Paper 26 at 18-25), and ParkerVision relies on this same new argument in
`
`the POR (at 61-67, 72-77). The Petition therefore could not have addressed the
`
`POR’s energy-calculation argument. As such, much of the Reply appropriately is
`
`directed to showing how ParkerVision’s prior litigation positions are inconsistent
`
`with this newfound calculation theory. E.g., Reply at 2, 9-13, 17-24. The Reply
`
`further describes how, in contrast, the Petition applies the term “storage module” in
`
`a manner that is consistent with ParkerVision’s prior litigation position, namely,
`
`that when a device employs a capacitor to “successfully down-convert” a signal,
`
`then “that is proof” that the capacitor storage non-negligible energy. See Reply at
`
`2, 9-13, 21, 23-24 (citing ParkerVision, 621 F. App’x at 1019).
`
`III. THE BOARD SHOULD DENY THE MOTION TO STRIKE
`
`
`
`The motion should be denied for two independent reasons. First, the Reply
`
`does not raise an improper “new theory.” Second, ParkerVision has not suffered
`
`prejudice.
`
`
`
`
`
`5
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`A. The Reply Does Not Raise an Impermissible “New Theory” or
`“Present Never Before Disclosed Evidence”
`1. The Reply Responds to the POR
`
`
`
`The Reply simply and directly responds to the POR’s argument that the prior
`
`art capacitors are not “storage” modules. See Sections II.C. That is the purpose of
`
`a Reply, and the motion to strike should be denied for this reason alone. See Apple
`
`Inc., 949 F.3d at 706-07 (“Apple’s reply squarely responds to Andrea’s Patent
`
`Owner Response.”). Tellingly, ParkerVision ignores Apple and the numerous
`
`other decisions that reject its extreme position regarding proper Reply content. See
`
`Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1370 n. 6 (Fed. Cir. 2021);
`
`Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380-81 (Fed. Cir. 2018); Belden
`
`Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077-78 (Fed. Cir. 2015); Everstar Merch.
`
`Co. v. Willis Elec. Co., No. 2021-1882, 2022 WL 1089909, at *4 (Fed. Cir. Apr.
`
`12, 2022); Grunenthal Gmbh v. Antecip Bioventures II LLC, PGR2018-00092,
`
`2020 WL 896727, at *1 (P.T.A.B. Feb. 24, 2020) (“The standard is not whether
`
`Petitioner could have raised the arguments or evidence in the Petition, but whether
`
`they respond to arguments raised by Patent Owner.” ); also 37 C.F.R. § 42.23(b)
`
`(Reply may “respond to arguments” in POR); Trial Practice Guide at 73 (“A party
`
`also may submit rebuttal evidence in support of its reply.”).
`
`6
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`2.
`
`The Legal Grounds for Unpatentability Are the Same in the
`Petition and the Reply and There Was No Waiver of the
`Word “Non-Negligible”
`
`
`
`Further, the “reply does not cite any new evidence or ‘unidentified portions’
`
`of the” relied-upon references. Apple Inc., 949 F.3d at 706. The Petition identifies
`
`“storage” elements as capacitors used to perform down-conversion. E.g., Pet. at 8-
`
`11, 39-41, 46-47, 67-85. Specifically, the Reply uses the exact same figures and
`
`citations as the Petition to identify switched-capacitors used for down conversion,
`
`i.e., “storage” modules. Reply at 18-21 (Hulkko); id. at 22-23 (Schiltz). Again,
`
`this is standard Reply content.
`
`
`
`Nonetheless, ParkerVision fixates on the absence of the word “non-
`
`negligible” in the Petition, assigning it overstated significance. Mot. at 3-5. Inter
`
`partes review is not a semantics game; any failure “to disclose a claim limitation in
`
`the same words used by the patentee is not fatal to a claim of invalidity.”
`
`ParkerVision, 621 F. App’x at 1018-19. And parties “are not barred from
`
`elaborating on their arguments on issues previously raised.” Chamberlain Grp.,
`
`Inc. v. One World Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019).
`
`
`
`ParkerVision also distorts the record in attempting to shore up its argument.
`
`Central to ParkerVision’s argument is the allegation that, with respect to the claim
`
`construction order in the earlier Intel litigation, “Petitioners included the District
`
`Court’s claim construction order as Ex. 1011 to the Petition. Yet, Petitioners
`
`7
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`purposefully ignored the District Court’s construction of ‘storage module.’” Mot.
`
`at 4 (emphasis in original). Yet ParkerVision carefully avoids quoting the full and
`
`complete construction of “storage module” that Petitioners supposedly “ignored.”
`
`See id. Instead, ParkerVision selectively quotes a fraction of the district court’s
`
`construction to argue that “Petitioners could have (and should have) addressed the
`
`language requiring that the ‘storage module ‘stores non-negligible amounts of
`
`energy.’” Id. at 5. The Board should reject such contextomy.
`
`The full construction of “storage element” by the Intel district court reads: “a
`
`module of an energy transfer system that stores non-negligible amounts of energy
`
`from an input electromagnetic signal.” Ex. 1011 at 5 (emphasis added). Petitioners
`
`did not endorse this construction in the Petition for the simple reason that it is
`
`wrong. The Board expressly held this construction was wrong in the Intel IPR
`
`FWD. See IPR2020-01265, Paper 44 at 41.
`
`
`
`As described in the Petition, the ’835 patent teaches that the claimed
`
`“storage module” is a capacitor or inductor whose “function is to store
`
`electromagnetic charge.” Pet. at 34. And as highlighted in the Reply, the Petition
`
`further describes in detail how the prior-art “storage modules” store energy from
`
`an input EM signal to successfully down-convert a signal. Reply at 17-24 (citing
`
`Pet. at 5-7, 10-11, 39-41, 35-37, 60, 71-72, 75). Such successfully stored down-
`
`conversion energy is “non-negligible” —whether or not it is labeled with that
`
`8
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`specific word—as ParkerVision’s own lead inventor confirmed in a prior litigation.
`
`Reply at 9-12 (citing 621 F. App’x at 1019).
`
`3.
`
`The Reply Does Not Unfairly Prejudice ParkerVision
`
`
`
`First, there is no prejudice because ParkerVision will not have to address
`
`anything in the Reply for the first time at the oral hearing. See Trial Practice Guide
`
`at 81. Before Patent Owners were given the right to file a sur-reply in every case,
`
`the Board would sometimes allow a sur-reply as “alternative” relief when a party
`
`moved to strike. See id. at 80. Here, such relief is available to ParkerVision as a
`
`matter of right, effectively mooting any supposed prejudice ParkerVision seeks to
`
`address in its motion to strike.
`
`
`
`Second, there “is a difference between evidence that brings unfair prejudice
`
`and evidence that is damning.” United States v. Burt, 495 F.3d 733, 740 (7th Cir.
`
`2007). ParkerVision complains that it is unable to file a new expert declaration
`
`(Mot. at 1, 7); however, ParkerVision disregards the fact that the Reply does not
`
`rely on any new expert testimony or technical evidence, so there is nothing an
`
`expert would need to address. The Reply does highlight ParkerVision’s prior
`
`position (as memorialized by the Federal Circuit), but no amount of expert
`
`testimony can change the reality of ParkerVision’s previous position, affirmed on
`
`appeal, as to what is “non-negligible.” Such prior position may be “damning,” but
`
`highlighting it in a Reply is not unfairly prejudicial.
`
`9
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`B.
`
`ParkerVision’s Cited Cases Are Inapplicable
`
`
`
`The limited caselaw on which ParkerVision relies is inapt. Mot. at 6-7. In
`
`Intelligent Bio-Sys., the Reply changed the legal grounds for unpatentability by
`
`relying on prior art not cited in the Petition. “IBS supported its new theory of
`
`invalidity by reference to new evidence, citing a number of non-patent literature
`
`references which were not relied upon to support unpatentability in the Petition.”
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed.
`
`Cir. 2016) (cleaned up). Nothing of the sort happened here.
`
`
`
`The Board’s order in IPR2020-01265 also has no bearing. There,
`
`ParkerVision first raised its energy-calculations theory in a Sur-Reply, even though
`
`Intel had not raised the issue in its Reply. IPR2020-01265, Paper 44 at 67-68.
`
`Here, all arguments in the Reply are responsive to arguments raised in the POR.
`
`Further, Intel did “not have an opportunity to respond” to the Sur-Reply (id. at 69);
`
`here, ParkerVision gets the last word.
`
`IV. CONCLUSION
`
`
`
`
`
`
`Petitioners respectfully request that the Board deny the motion in its entirety.
`
`
`
`10
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`Dated: June 30, 2022
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Kristopher L. Reed
`Kristopher L. Reed
`Reg. No. 58,694
`kreed@kilpatricktownsend.com
`Edward J. Mayle
`Reg. No. 65,444
`tmayle@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton LLP
`1400 Wewatta St. Suite 600
`Denver, CO 80202
`
`Matias Ferrario
`Reg. No. 51,082
`mferrario@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`Counsel for Petitioners
`
`
`
`11
`
`
`
`
`IPR2021-00985
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned certifies that a copy of this paper was served on June 30,
`
`2022, via electronic mail to counsel for Patent Owner:
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: June 30, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
`Ron Daignault
`rdaignault@daignaultiyer.com
`Jason Charkow
`jcharkow@daignaultiyer.com
`Chandran Iyer
`cbiyer@daignaultiyer.com
`Stephanie Mandir
`smandir@daignaultiyer.com
`
`
`
`
`By: /s/ Edward J. Mayle
`Edward J. Mayle
`Reg. No. 65,444
`
`Counsel for Petitioners
`
`
`
`12
`
`