From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Jason Charkow
`Trials
`Stephanie Mandir; raymort@autinlaw.com; LG-ParkerVision-PTABService; McKeown, Scott; Pepe, Steven; Chun,
`David S.; Taylor, Scott; Shapiro, Matthew; Ferrario, Matias; Reed, Kristopher; Ron Daignault; Chandran Iyer;
`TCL_Hisense_ZyXel835IPR; TCL_Hisense444IPR; Mayle, Ted
`IPR2021-00985: Leave to file motion to strike new arguments
`Wednesday, June 1, 2022 4:02:12 PM
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`Dear Honorable Board:
`
`Patent Owner respectfully seeks leave to file a Motion to Strike new arguments set
`forth in Petitioners’ Reply filed in IPR2021-00985 (U.S. Patent No. 7,292,835). If leave
`is granted, Patent Owner respectfully proposes filing the motion within ten (10)
`business days of the Board’s authorization.
`
`Patent Owner submits that there is good cause to file the Motion to Strike, because
`Petitioners' Reply raises a new theory regarding the claimed “storage module”
`limitation and, in particular, how "stor[ing] non-negligible amounts of energy from an
`input electromagnetic signal" is supposedly met.
`
`In their Petition, Petitioners did not provide any argument/theory that a capacitor in
`the cited prior art “stores non-negligible amounts of energy from an input
`electromagnetic signal.” In their Reply, however, Petitioners for the first time raise
`a new theory - asserting 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 id. at 17, 21.
`
`The Petition was filed in May 2021 – four months after the District Court construed
`“storage module” to require “stor[ing] non-negligible amounts of energy from an input
`electromagnetic signal” and nine days after ParkerVision filed its POR in IPR2020-
`01265, which addresses the related “storage element” term and the District Court's
`construction. Thus, when filing the Petition, Petitioners were well aware of the District
`Court’s claim construction (and ParkerVision’s position) regarding “storage
`module.” Indeed, the Petition even cites to the District Court’s claim construction
`Order. See Pet. at 34-35. As such, Petitioners could have addressed the District
`Court’s construction of “storage module,” but chose not to do so. Addressing this new
`theory in a Sur-Reply and during an oral hearing without the benefit of Patent Owner’s
`expert testimony will prejudice Patent Owner. Accordingly, a Motion to Strike is
`proper.
`
`Patent Owner contacted Petitioners via email last Friday to determine whether they
`object to Patent Owner’s request for leave to file the motion. Petitioners’ responded
`that they oppose Patent Owner’s request.
`
`If it would be helpful to the Board, Petitioners and Patent Owner are generally
`available for a conference call after 4:30 pm EST on Thursday, June 2, 2022.
`
`

`

`
`Very truly yours,
`Jason
`
`
`Jason S. Charkow
`Partner
`Daignault Iyer LLP
`914.843.8138
`jcharkow@daignaultiyer.com
`daignaultiyer.com
`
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