Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 14
`Date: November 19, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`TCL INDUSTRIES HOLDINGS CO., LTD. and HISENSE CO., LTD.,
`Petitioner,1
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2021-00985
`Patent 7,292,835 B2
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`1 The caption is updated to remove Petitioner ZyXEL Communications
`Corp. (“ZyXEL”) because ZyXEL is no longer a party to this proceeding.
`See Paper 13 (Settlement Prior to Institution of Trial Only as to ZyXEL
`Communications Corp.). The parties shall use this caption (without this
`footnote) going forward.
`
`
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`
`I.
`
`INTRODUCTION
`
`Background
`
`TCL Industries Holdings Co., Ltd.; Hisense Co., Ltd.; and ZyXEL
`filed a Petition (Paper 1, “Pet.”) requesting institution of inter partes review
`of claims 1, 12–15, and 17–20 (“the Challenged Claims”) of U.S. Patent
`No. 7,292,835 B2 (Ex. 1001, “the ’835 patent”). ParkerVision, Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 9, “Prelim. Resp.”). ZyXEL
`and Patent Owner reached a settlement and this proceeding was terminated
`only as to ZyXEL. Paper 13. TCL Industries Holdings Co., Ltd. and
`Hisense Co., Ltd. (collectively, “Petitioner”) remain as parties in the
`proceeding.
`An inter partes review may be instituted only if “the information
`presented in the petition . . . and any [preliminary] response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018). For the reasons below, Petitioner has established a reasonable
`likelihood that it would prevail in showing the unpatentability of at least one
`of the Challenged Claims. Accordingly, we institute an inter partes review
`of the Challenged Claims on all grounds raised in the Petition.
`
`Related Proceedings
`
`The parties identify the following as related matters: ParkerVision,
`Inc. v. TCL Industries Holdings Co., Ltd. et al., No. 6:20-cv-00945 (W.D.
`Tex.) (“the TCL Litigation”); ParkerVision, Inc. v. Hisense Co., Ltd. et al.,
`No. 6:20-cv-00870 (W.D. Tex.) (“the Hisense Litigation”)2; ParkerVision,
`
`2 Collectively, we refer to the TCL and Hisense Litigations as the “Related
`Litigations.”
`
`2
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`Inc. v. ZyXEL Communications Corp., No. 6:20-cv-01010 (W.D. Tex.)3; and
`ParkerVision, Inc. v. LG Electronics Inc., No. 6:21-cv-00520 (W.D. Tex.).
`Pet. 13–14; Paper 6 (Petitioner’s Updated Mandatory Notice), 1; Paper 8
`(Patent Owner’s Mandatory Notices), 1. Petitioner also identifies
`ParkerVision, Inc. v. Buffalo Inc., No. 6:20-cv-01009 (W.D. Tex.), as a
`related matter involving the ’835 patent. Pet. 14. Additionally, Petitioner
`challenges several claims of U.S. Patent No. 7,110,444 B1, owned by Patent
`Owner, in IPR2021-00990. Pet. 14; Paper 8, 1.4
`
`Real Parties in Interest
`
`Petitioner identifies TCL Industries Holdings Co., Ltd.; Hisense Co.,
`Ltd.; TCL Electronics Holdings Ltd.; Shenzhen TCL New Technology Co.,
`Ltd.; TCL King Electrical Appliances (Huizhou) Co., Ltd.; TCL Moka Int’l
`Ltd.; TCL Moka Manufacturing S.A. DE C.V.; TCL Technology Group
`Corp.; TTE Technology, Inc.; and Hisense Visual Technology Co., Ltd.
`(f/k/a Qingdao Hisense Electronics Co., Ltd.) as real parties in interest.5
`Pet. 13. Patent Owner identifies ParkerVision, Inc. as the sole real party in
`interest. Paper 8, 1.
`
`
`3 After the parties’ briefing, the district court granted a joint motion to
`dismiss with prejudice and the case is now closed. See Ex. 3001 (Docket
`Entry 25, Order dated Sept. 27, 2001).
`4 Patent Owner identifies the instant proceeding—IPR2021-00985—as a
`related matter, but we understand Patent Owner to refer to IPR2021-00990.
`See Paper 8, 1.
`5 In a footnote, Petitioner also identifies ZyXEL Communications Inc., a
`U.S. subsidiary of ZyXEL, but contends that it is not a real party in interest.
`Pet. 13 n.4.
`
`3
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`
`
`
`The Asserted Grounds of Unpatentability and Declaration
`Evidence
`Petitioner challenges the patentability of claims 1, 12–15, and 17–20
`of the ’835 patent on the following grounds:
`Claim(s) Challenged 35 U.S.C. §6
`1, 12, 15, 17
`103(a)
`
`Reference(s)/Basis
`Hulkko,7 Gibson8
`Hulkko, Gibson, Goldberg,9
`Thacker,10 ITU-T J.83b,11
`AAPA12
`Gibson, Schiltz13
`Gibson, Schiltz, Goldberg,
`Thacker, ITU-T J.83b, AAPA
`Pet. 17. In the Petition, Petitioner first sets forth its grounds as though there
`are two: Hulkko and Gibson (Ground 1), and Gibson and Schiltz (Ground 2).
`
`1, 12, 15, 17
`
`1, 12–15, 17–20
`1, 12–15, 17–20
`
`103(a)
`
`103(a)
`103(a)
`
`
`6 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the
`’835 patent has an effective filing date before March 16, 2013, we apply the
`pre-AIA version of the statutory basis for unpatentability.
`7 U.S. Patent No. 5,734,683, issued Mar. 31, 1998 (Ex. 1004, “Hulkko”).
`8 U.S. Patent No. 4,682,117, issued July 21, 1987 (Ex. 1005, “Gibson”).
`9 L. Goldberg, “MCNS/DOCSIS MAC Clears a Path for the Cable-Modem
`Invasion,” Electronic Design; Dec. 1, 1997; 45, 27; Materials Science &
`Engineering Collection pg. 69 (Ex. 1007, “Goldberg”).
`10 U.S. Patent No. 6,011,548, issued Jan. 4, 2000 (Ex. 1008, “Thacker”).
`11 ITU-T J.83 Recommendation (Apr. 1997) (Ex. 1009, “ITU-T J.83b”).
`Petitioner includes the letter “b” in its references to this exhibit although the
`title does not include the letter “b.” See, e.g., Pet. 17, 42. For consistency,
`we refer to the exhibit in the same manner as Petitioner by including the
`letter “b.”
`12 Applicant admitted prior art (“AAPA”) refers to the ’835 patent, at
`column 40, lines 17–35, which states, inter alia, that “[t]he cable modem
`receivers, transmitters, and transceivers of the present invention may be
`
`4
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`Id. Petitioner, however, explains that “if the Board finds that the preamble
`of claim 1 is limiting—and thus requires a ‘cable modem’—then Petitioner[]
`submit[s] that the [C]hallenged [C]laims are obvious for the reasons above
`and further in view of publications (e.g., Goldberg and Thacker) describing
`the then-existing cable modem standards (ITU-T J.83b and DOCSIS) and/or
`AAPA.” Id. Accordingly, the chart above includes the alternative grounds
`set forth in the Petition.
`Additionally, Petitioner supports its challenge with a Declaration by
`Matthew B. Shoemake, Ph.D. (Ex. 1002) and a Declaration by Brenda Ray
`(Ex. 1010).
`
`The ’835 Patent
`
`The ’835 patent is directed to frequency translation and applications
`thereof, including cable modem applications. Ex. 1001, code (57). The
`applications include, but are not limited to, “frequency down-conversion,
`frequency up-conversion, enhanced signal reception, unified down-
`conversion and filtering, and combinations” thereof. Id.
`
`
`implemented using a variety of well[-]known devices” and lists several
`examples. See Pet. 11. “Statements in a challenged patent’s specification
`may be used . . . in conjunction with one or more prior art patents or printed
`publications forming ‘the basis’ of the proceeding under § 311.” USPTO
`Memorandum, Treatment of Statements of the Applicant in the Challenged
`Patent in Inter Partes Reviews Under § 311 (Aug. 18, 2020), available at
`https://www.uspto.gov/sites/default/files/documents/signed_aapa_guidance_
`memo.pdf. For example, a permissible use of admitted prior art in an inter
`partes review is to “supply missing claim limitations that were generally
`known in the art prior to the invention.” Id. at 9.
`13 U.S. Patent No. 5,339,459, issued Aug. 16, 1994 (Ex. 1006, “Schiltz”).
`
`5
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`
`In particular, with respect to the Challenged Claims, the ’835 patent
`teaches a “[Quadrature Amplitude Modulation (“QAM”)] modulation mode
`receiver” that “down convert[s] and demodulates an input signal that is
`modulated according to QAM . . . modulation techniques.” See Ex. 1001,
`42:43–49. Figure 54B is reproduced below:
`
`
`
`Figure 54B is an exemplary block diagram of QAM modulation
`receiver 5402. Id. at 4:42–44, 42:45–47.
`The ’835 patent explains that QAM modulation mode receiver 5402
`“may be used to directly down-convert and demodulate a received [radio
`frequency (“RF”)] input signal to two baseband information signals, or may
`down-convert and demodulate a received signal that is at an intermediate
`frequency to two baseband information signals.” Ex. 1001, 42:49–54.
`QAM modulation mode receiver 5402 comprises oscillator 5426, first
`universal frequency down-conversion (“UFD”) module 5422, second UFD
`
`6
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`module 5454, first universal frequency translation (“UFT”) module 5430,
`second UFT module 5432, and phase shifter 5428. Id. at 42:63–67.
`The ’835 patent further explains that
`[o]scillator 5426 provides an oscillating signal used by
`both first UFD module 5422 and second UFD module 5424 via
`phase shifter 5428. Oscillator 5426 generates an “I” oscillating
`signal 5434.
`“I” oscillating signal 5434 is input to first UFD module
`5422. First UFD module 5422 comprises at least one UFT
`module 5430. In an embodiment, first UFD module 5422 is
`structured similarly to UFD module 5300 of FIG. 53, with
`oscillator 5426 substituting for oscillator 5304, and “I”
`oscillating signal 5434 substituting for oscillating signal 5316.
`First UFD module 5422 receives received signal 5416.
`Received signal 5416 comprises two information signals
`modulated with an RF carrier signal according to either QAM
`or QPSK modulation techniques. First UFD module 5422
`frequency down-converts and demodulates received signal 5416
`to down-converted “I” signal 5438 according to “I” oscillating
`signal 5434. Down-converted “I” signal 5438 may be an
`information signal with two possible states or voltage levels
`(QPSK), or with more than two possible states or voltage levels
`(QAM).
`Phase shifter 5428 receives “I” oscillating signal 5434,
`and outputs “Q” oscillating signal 5436, which is a replica of
`“I” oscillating signal 5434 shifted preferably by 90°. Second
`UFD module 5424 inputs “Q” oscillating signal 5436. Second
`UFD module 5424 comprises at least one UFT module 5432.
`In an embodiment, second UFD module 5424 is structured
`similarly to UFD module 5300 of FIG. 53, with “Q” oscillating
`signal 5436 substituting for oscillating signal 5316. Second
`UFD module 5424 frequency down-converts and demodulates
`received signal 5416 to down-converted “Q” signal 5440
`according to “Q” oscillating signal 5436. Down-converted “Q”
`signal 5440 may be an information signal with two possible
`states or voltage levels (QPSK), or with more than two possible
`states or voltage levels (QAM).
`
`7
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`
`Down-converted “I” signal 5438 is optionally amplified
`by first optional amplifier 5404 and optionally filtered by first
`optional filter 5406, and a first information output signal 5418
`is output.
`Down-converted “Q” signal 5440 is optionally amplified
`by second optional amplifier 5408 and optionally filtered by
`second optional filter 5410, and a second information output
`signal 5420 is output.
`Ex. 1001, 43:1–42.
`Figures 20A and 20A-1 are reproduced below:
`
`
`
`
`
`
`Figures 20A and 20A-1 are exemplary aliasing modules. Ex. 1001, 3:21–22.
`
`8
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`
`The ’835 patent explains that Figures 20A and 20A-1 illustrate
`“aliasing module 2000 for down-conversion using a [UFT] module 2002
`which down-converts an [electromagnetic (“EM”)] input signal 2004.”
`Ex. 1001, 6:66–7:2. The ’835 patent further provides that
`[i]n particular embodiments, aliasing module 2000
`includes a switch 2008 and a capacitor 2010. The electronic
`alignment of the circuit components is flexible. That is, in one
`implementation, switch 2008 is in series with input signal 2004
`and capacitor 2010 is shunted to ground (although it may be
`other than ground in configurations such as differential mode).
`In a second implementation (see FIG. 20A-1), capacitor 2010 is
`in series with input signal 2004 and switch 2008 is shunted to
`ground (although it may be other than ground in configurations
`such as differential mode). Aliasing module 2000 with UFT
`module 2002 can be easily tailored to down-convert a wide
`variety of electromagnetic signals using aliasing frequencies
`that are well below the frequencies of EM input signal 2004.
` Id. at 7:2–14.
`
`Illustrative Claim
`
`Claim 1, the sole independent claim challenged in this proceeding, is
`illustrative of the claimed subject matter and is reproduced below with
`Petitioner’s bracketing added for reference:
`1.
`[1pre] A cable modem for down-converting an
`electromagnetic signal having complex modulations,
`comprising:
`[1A] an oscillator to generate an in-phase oscillating
`signal;
`[1B] a phase shifter to receive said in-phase oscillating
`signal and to create a quadrature-phase oscillating signal;
`[1C] a first frequency down-conversion module to
`receive the electromagnetic signal and said in-phase oscillating
`signal;
`
`9
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`
`[1D] a second frequency down-conversion module to
`receive the electromagnetic signal and said quadrature-phase
`oscillating signal; wherein
`[1E] said first frequency down-conversion module
`further comprises a first frequency translation module [1F] and
`a first storage module, [1G] wherein said first frequency
`translation module samples the electromagnetic signal at a rate
`that is a function of said in-phase oscillating signal, thereby
`creating a first sampled signal; and
`[1H] said second frequency down-conversion module
`further comprises a second frequency translation module
`[1I] and a second storage module, [1J] wherein said second
`frequency translation module samples the electromagnetic
`signal at a rate that is a function of said quadrature-phase
`oscillating signal, thereby creating a second sampled signal.
`Ex. 1001, 51:5–29.
`
`Level of Ordinary Skill in the Art
`
`Petitioner, supported by Dr. Shoemake’s testimony, proposes that a
`person of ordinary skill in the art at the time of the invention would have had
`“at least a bachelor’s degree in electrical engineering or a related subject,
`and two or more years of experience in communication system design,
`signal processing and/or analog and RF circuit design.” Pet. 50 (citing
`Ex. 1002 ¶¶ 31–36). Petitioner explains that “[l]ess work experience may be
`compensated by a higher level of education, such as a master’s degree.” Id.
`(citing Ex. 1002 ¶¶ 31–36).
`Patent Owner does not express a position on the level of ordinary skill
`in the art in the Preliminary Response. See generally Prelim. Resp.
`At this stage of the proceeding, we find Petitioner’s proposal
`consistent with the level of ordinary skill in the art reflected by the
`’835 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`
`10
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt
`and apply Petitioner’s unopposed position as to the level of ordinary skill in
`the art in our consideration of the issues presently before us.
`
`II. CLAIM CONSTRUCTION
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2020). The
`claim construction standard includes construing claims in accordance with
`the ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing
`claims in accordance with their ordinary and customary meaning, we take
`into account the specification and prosecution history. Phillips, 415 F.3d at
`1315–17.
`Additionally, only terms that are in controversy need to be construed,
`and these need be construed only to the extent necessary to resolve the
`controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of
`an inter partes review).
`Petitioner proposes constructions for three claim terms—“cable
`modem,” “frequency translation module,” and “storage module.” Pet. 31–
`35. Patent Owner does not propose constructions for any claim terms in its
`
`11
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`Preliminary Response. See generally Prelim. Resp. At this preliminary
`stage, we need not construe expressly any claim terms because none are in
`dispute. See Vivid Techs., 200 F.3d at 803.
`
`III. ANALYSIS
`35 U.S.C. § 314(a)
`
`Under 35 U.S.C. § 314(a), the Director has discretion to deny
`institution. In determining whether to exercise that discretion on behalf of
`the Director, we are guided by the Board’s precedential decision in NHK
`Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB
`Sept. 12, 2018) (precedential).
`In NHK, the Board found that the “advanced state of the district court
`proceeding” was a “factor that weighs in favor of denying” the petition
`under § 314(a). NHK, Paper 8 at 20. The Board determined that
`“[i]nstitution of an inter partes review under these circumstances would not
`be consistent with ‘an objective of the AIA . . . to provide an effective and
`efficient alternative to district court litigation.’” Id. (citing Gen. Plastic
`Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16–17
`(PTAB Sept. 6, 2017) (precedential as to § II.B.4.i)).
`“[T]he Board’s cases addressing earlier trial dates as a basis for denial
`under NHK have sought to balance considerations such as system efficiency,
`fairness, and patent quality.” Apple Inc. v. Fintiv Inc., IPR2020-00019,
`Paper 11 at 5 (PTAB Mar. 20, 2020) (precedential) (collecting cases)
`(“Fintiv”). Fintiv sets forth six non-exclusive factors for determining
`“whether efficiency, fairness, and the merits support the exercise of
`authority to deny institution in view of an earlier trial date in the parallel
`proceeding.” Id. at 6. These factors consider:
`
`12
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Id.
`
`We discuss the parties’ arguments in the context of considering the
`above factors. In evaluating the factors, we take a holistic view of whether
`efficiency and integrity of the system are best served by denying or
`instituting review. Id.
`
` Whether the Court Granted a Stay or Evidence Exists
`That One May Be Granted If a Proceeding Is Instituted
`On the present record, neither party has produced evidence that a stay
`has been requested by either party or considered by the district court in the
`Related Litigations.14 See Pet. 86; Prelim. Resp. 4–5. Thus, this factor does
`not weigh in favor of or against exercising our discretion to deny institution.
`
`
`14 Patent Owner notes that the ’835 patent is one of ten patents asserted by
`Patent Owner in the Related Litigations. Prelim. Resp. 4.
`
`13
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`
`
`
`Proximity of the Court’s Trial Date to the Board’s
`Projected Statutory Deadline for a Final Written
`Decision
`The current scheduling orders governing the Related Litigations
`indicate a trial date of December 12, 2022. Prelim. Resp. 6 (citing Ex. 2003
`(Scheduling Order in the TCL Litigation), 5; Ex. 2004 (Scheduling Order in
`the Hisense Litigation), 5); see Pet. 86 (citation omitted) (indicating the
`same date). The projected statutory deadline for a final written decision is
`prior to the trial date. Thus, this factor weighs against exercising our
`discretion to deny institution.
`
`
`
`Investment in the Parallel Proceeding by the Court and
`the Parties
`Patent Owner states that a consolidated Markman hearing was
`scheduled for November 4, 2021. Prelim. Resp. 7 n.2. The Scheduling
`Order in the TCL Litigation indicates a Markman hearing date of
`October 25, 2021 (Ex. 2003, 3), while the Scheduling Order in the Hisense
`Litigation indicates a Markman hearing date of November 4, 2021
`(Ex. 2004, 3). Nonetheless, the district court recently updated the schedule
`setting a Markman hearing in the Related Litigations for October 27, 2021.
`See Ex. 3002 (Order Resetting Markman Hearing by Special Master in the
`TCL Litigation); Ex. 3003 (Order Resetting Markman Hearing by Special
`Master in the Hisense Litigation). Both Scheduling Orders show that fact
`discovery opened on October 26, 2021. Ex. 2003, 3; Ex. 2004, 3.
`Petitioner asserts that the Related Litigations are in their preliminary
`stages and the district court has not yet issued any substantive orders related
`to the ’835 patent. Pet. 87. Patent Owner contends that the parties and the
`court have invested significant resources in the Related Litigations,
`
`14
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`including preparing claim construction briefing and preliminary
`infringement and invalidity contentions. Prelim. Resp. 7 (citations omitted).
`The “investment factor is related to the trial date factor, in that more
`work completed by the parties and court in the parallel proceeding tends to
`support the arguments that the parallel proceeding is more advanced, a stay
`may be less likely, and instituting would lead to duplicative costs.” Fintiv at
`10. Here, the Related Litigations are at very early stages. The only
`substantive briefing submitted by the parties in the Related Litigations is
`their claim construction briefs. See Ex. 2003, 1–3; Ex. 2004, 1–3. And, as
`relevant to the claims at issue here, the dispute involves only two terms
`recited in the Challenged Claims of the ’835 patent. See, e.g., Ex. 3004
`(Joint Claim Construction Statement in the TCL Litigation), 2–3 (addressing
`“‘storage’ terms”), 10 (addressing “switch”).15 For “switch,” the parties
`propose that it be construed according to its plain and ordinary meaning,
`although there may be a dispute about the plain and ordinary meaning. Id. at
`10.
`
`Additionally, Petitioner acted diligently and without much delay to
`file the Petition on May 20, 2021 (see Paper 5 (Notice of Filing Date
`Accorded to Petition and Time for Filing Patent Owner Preliminary
`Response), 1), which is approximately two months after service of Patent
`Owner’s preliminary infringement contentions (see Ex. 1013
`(“ParkerVision, Inc.’s Disclosure of Preliminary Infringement Contentions,”
`
`15 The Joint Claim Construction Statement filed in the Hisense Litigation
`appears substantively identical to the Joint Claim Construction Statement
`filed in the TCL Litigation, with each Statement referencing both Related
`Litigations. See Ex. 3004, 1; Ex. 3005 (Joint Claim Construction Statement
`in the Hisense Litigation), 1.
`
`15
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`dated Mar. 17, 2021, in the TCL Litigation); Ex. 1014 (ParkerVision, Inc.’s
`Disclosure of Preliminary Infringement Contentions,” dated Mar. 17, 2021,
`in the Hisense Litigation)). Pet. 87.
`On these facts, we find that the Related Litigations are at a very early
`stage and the investment by the court and the parties therein is relatively
`minimal. Thus, this factor weighs strongly against exercising our discretion
`to deny institution.
`
`
`
`Overlap Between Issues Raised in the Petition and in the
`Parallel Proceeding
`Patent Owner contends that there are significant issues in common
`between this proceeding and the Related Litigations. Prelim. Resp. 8–9.
`Specifically, Patent Owner asserts that Petitioner relies upon overlapping
`primary references to challenge claims of the ’835 patent in the Related
`Litigations and in the Petition. Id. at 8 (citations omitted).
`Petitioner “acknowledge[s] that there is overlap between the issues
`raised in the Petition and the [R]elated [L]itigations,” but contends this
`factor “is insufficient to justify exercising discretion to deny institution in
`light of the other factors.” Pet. 88 (citation omitted).
`We find that there is a significant overlap between the issues raised in
`the Petition and the Related Litigations. Specifically, in addition to Patent
`Owner’s representation that Petitioner relies upon the same primary
`references, all but three of the Challenged Claims are also at issue in the
`Related Litigations.16 Thus, this factor weighs in favor of exercising our
`discretion to deny institution.
`
`
`16 Patent Owner originally asserted claims 18–20 in the Related Litigations,
`but has since dropped those claims. See, e.g., Ex. 2007 (Defendants’
`
`16
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`
` Whether the Petitioner and the Defendant in the Parallel
`Proceeding Are the Same Party
`Petitioner and Patent Owner are the defendant and plaintiff,
`respectively, in the Related Litigations. Prelim. Resp. 9. As we explain
`above, however, we are likely to reach the merits before the trial date in the
`district court. Thus, this factor does not weigh in favor of or against
`exercising our discretion to deny institution.
`
`
`
`Other Circumstances that Impact the Board’s Exercise of
`Discretion, Including the Merits
`Petitioner contends that “the merits of this [P]etition strongly warrant
`institution.” Pet. 88. In particular, Petitioner contends that the Examiner did
`not consider the primary prior art references forming the basis of the Petition
`and that the detailed discussion of each ground in the Petition demonstrates
`the unpatentability of the Challenged Claims. Id.
`Patent Owner does not address the merits of the Petition in its
`Preliminary Response, opting to “address[] only the discretionary bases as to
`why the Board should deny institution.” Prelim. Resp. 10 n.3. Patent
`Owner contends, however, that “institution of the present proceeding[] will
`also give rise to substantial duplication of efforts” because institution “will
`not prevent fact discovery, expert discovery, and other disputes that occur in
`the Texas cases, nor obviate dispositive motions, pre-trial motions, or a
`trial.” Id. at 10. Thus, Patent Owner contends that these additional reasons
`support discretionary denial.
`
`
`Preliminary Invalidity Contentions in the TCL Litigation), 2 n.2 (the page
`number refers to the page number of the underlying document).
`
`17
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`
`On the present record before us, we are persuaded that the merits of
`the Petition appear strong. Specifically, as discussed further herein,
`Petitioner provides a detailed analysis that addresses each claim element and
`provides reasons with rational underpinning as to why one of ordinary skill
`in the art would have been motivated to modify the teachings as proposed
`with a reasonable expectation of success. See generally Pet. 43–85.
`Although we recognize that the Related Litigations may occur in parallel, we
`find that this factor weighs against exercising our discretion to deny
`institution.
`
` Weighing the Factors
`After weighing all of the factors and taking a holistic view of the
`relevant circumstances of this proceeding, we determine that, on balance, the
`Fintiv factors favor not exercising discretion to deny institution under 35
`U.S.C. § 314(a).
`
`Legal Standards – Obviousness
`
`The U.S. Supreme Court set forth the framework for applying the
`statutory language of 35 U.S.C. § 103 in Graham v. John Deere Co. of
`Kansas City, 383 U.S. 1, 17–18 (1966):
`Under § 103, the scope and content of the prior art are to be
`determined; differences between the prior art and the claims at
`issue are to be ascertained; and the level of ordinary skill in the
`pertinent art resolved. Against this background, the
`obviousness or nonobviousness of the subject matter is
`determined. Such secondary considerations as commercial
`success, long felt but unsolved needs, failure of others, etc.,
`might be utilized to give light to the circumstances surrounding
`the origin of the subject matter sought to be patented.
`
`18
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`The Supreme Court explained in KSR International Co. v. Teleflex Inc. that
`[o]ften, it will be necessary for a court to look to interrelated
`teachings of multiple patents; the effects of demands known to
`the design community or present in the marketplace; and the
`background knowledge possessed by a person having ordinary
`skill in the art, all in order to determine whether there was an
`apparent reason to combine the known elements in the fashion
`claimed by the patent at issue. To facilitate review, this
`analysis should be made explicit.
`550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” (alteration in original))).
`“Whether an ordinarily skilled artisan would have been motivated to
`modify the teachings of a reference is a question of fact.” WBIP, LLC v.
`Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted).
`“[W]here a party argues a skilled artisan would have been motivated to
`combine references, it must show the artisan ‘would have had a reasonable
`expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier
`Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
`Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)).
`
` Obviousness over Hulkko and Gibson, and Alternatively
`Hulkko, Gibson, Goldberg, Thacker, ITU-T J.83b, and/or AAPA
`Petitioner asserts the combination of Hulkko and Gibson, and
`alternatively the combination of Hulkko, Gibson, Goldberg, Thacker, ITU-T
`J.83b, and/or AAPA, would have rendered the subject matter of claims 1, 12,
`15, and 17 obvious to one of ordinary skill in the art at the time of the
`
`19
`
`

`

`IPR2021-00985
`Patent 7,292,835 B2
`
`invention.17 Pet. 43–46 (discussing motivation to combine Hulkko and
`Gibson), 47–50 (discussing motivation to “use the modem[] of Hulkko
`modified with Gibson” as “cable modems” in view of Goldberg, Thacker,
`ITU-T J.83b, and/or AAPA), 50–67 (discussing the application of the art to
`the claims).
`
`Level of Ordinary Skill in the Art
`
`For the reasons discussed above, on the present record at this stage of
`the proceeding, we find that one of ordinary skill in the art at the time of the
`invention would have “at least a bachelor’s degree in electrical engineering
`or a related subject, and two or more years of experience in communication
`system design, signal processing and/or analog and RF circuit design.” See
`supra § I.G.
`
`
`
`Scope and Content of the Prior Art
`Hulkko
`a.
`Hulkko is directed to demodulation of an intermediate frequency
`signal by a sigma-delta converter. Ex. 1004, code (54). More particularly