`Paper No. 13
`Filed: March 23, 2022
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
`
`
`TCL INDUSTRIES HOLDINGS CO. AND HISENSE CO., LTD.
`
`Petitioners
`
`v.
`
`PARKERVISION, INC.
`
`Patent Owner
`
`_______________
`
`
`Case No. IPR2021-00990
`Patent No. 7,110,444
`
`________________________________________________________
`
`PETITIONERS’ MOTION FOR ROUTINE AND/OR ADDITIONAL
`DISCOVERY UNDER 37 C.F.R. § 42.51(b)
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`

`

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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
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`
`TABLE OF CONTENTS
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`I.
`
`PARKER VISION SHOULD BE ORDERED TO PRODUCE ITS
`FINAL INFRINGEMENT CONTENTIONS AS “ROUTINE”
`DISCOVERY .................................................................................................. 2
`
`A.
`
`B.
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`ParkerVision’s Inconsistent Positions on “Storage Element” .............. 3
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`The Final Infringement Contentions Are Routine Discovery ............... 8
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`II.
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`ALTERNATIVELY, PARKERVISION SHOULD BE ORDERED
`TO PRODUCE ITS FINAL INFRINGEMENT CONTENTIONS AS
`“ADDITIONAL” DISCOVERY ..................................................................... 9
`
`A.
`
`B.
`
`C.
`
`D.
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`There Is More Than a Possibility or Mere Allegation That the
`Requested Discovery Will Yield Useful Information. ........................ 10
`
`Patent Owner Does Not Seek Petitioner’s Litigation Positions
`or Their Underlying Basis ................................................................... 11
`
`Petitioners Cannot Generate Equivalent Information by Other
`Means .................................................................................................. 11
`
`The Request for ParkerVision’s Final Infringement Contentions
`Is Easily Understandable and Not Overly Burdensome ...................... 11
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`III. CONCLUSION .............................................................................................. 12
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`i
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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
`
`
`TABLE OF AUTHORITIES
`
`
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`Page(s)
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`Cases
`
`Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
`239 F.3d 1343 (Fed. Cir. 2001)..................................................................................................7
`
`Bestway (USA), Inc. v. Team Worldwide Corp.,
`IPR2018-00859, Paper 67 (April 9, 2019) .........................................................................10, 11
`
`Cuozzo Speed Techs., LLC v. Lee,
`579 U.S. 261 (2016) ...................................................................................................................9
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013) ..............................................................10, 11
`
`Intel Corp. v. ParkerVision, Inc.,
`IPR2020-01265, Paper 44 (FWD) .............................................................................................3
`
`Nestle USA, Inc. v. Steuben Foods, Inc.,
`884 F.3d 1350 (Fed. Cir. 2008)..................................................................................................6
`
`ParkerVision, Inc. v. Qualcomm Inc.,
`621 F. App’x 1009 (Fed. Cir. 2015) ..................................................................................4, 5, 6
`
`ParkerVision, Inc. v. Qualcomm Inc.,
`Case No. 6:14-cv-00687, Dkt. 683 (M.D. Fla. Mar. 9, 2022) ...................................................8
`
`ParkerVision, Inc. v. Qualcomm Inc.,
`No. 3:11-CV-719-J-37TEM, 2013 WL 633077 (M.D. Fla. Feb. 20, 2013) ..........................4, 5
`
`RPX Corp. v. ParkerVision, Inc.,
`IPR2014-00948 Paper 7 .............................................................................................................5
`
`Other Authorities
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`37 C.F.R. § 1.56(a)...........................................................................................................................9
`
`37 C.F.R. §42.51(b)(1)(iii) ...............................................................................................................1
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`37 C.F.R. §42.51(b)(2)(i) .......................................................................................................2, 9, 10
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`Rule 42.51(b)(1)(iii) .........................................................................................................................9
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`ii
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`

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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
`
`
`
`Pursuant to the Board’s e-mail to counsel dated March 9, 2022 authorizing
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`this motion, TCL Industries Holdings Co., Ltd. (“TCL”) and Hisense Co. Ltd.
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`(“Hisense”) (collectively, “Petitioners”) moves for an Order requiring Patent
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`Owner ParkerVision, Inc. (“ParkerVision”) to produce discovery comprising its
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`Final Infringement Contentions for Patent No. 7,110,444 (the “’444 patent”) from
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`the underlying litigations between the parties in the Western District of Texas
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`(“WDTX”). Counsel for Petitioners already has the requested discovery in their
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`possession by virtue of their participation in the underlying litigations, and so
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`granting this motion would not burden ParkerVision in any way. Further,
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`Petitioners offered to file the materials under seal, yet ParkerVision still refuses to
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`allow its Final Infringement Contentions to be seen by the Board.
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`
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`The motion should be granted for two independent reasons. First, the Final
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`Infringement Contentions are required “routine” discovery under 37 C.F.R.
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`§42.51(b)(1)(iii) because, in its Patent Owner Response (Paper 12), ParkerVision
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`has taken positions that are inconsistent with positions it took in the Final
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`Infringement Contentions. Alternatively, the requested discovery should be
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`1
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`

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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
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`ordered as “additional” discovery under 37 C.F.R. §42.51(b)(2)(i) because it is in
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`the interests of justice.1
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`
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`I.
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`PARKER VISION SHOULD BE ORDERED TO PRODUCE ITS
`FINAL INFRINGEMENT CONTENTIONS AS “ROUTINE”
`DISCOVERY
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`
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`ParkerVision’s Patent Owner Response is inconsistent with its previous
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`positions on a key claim limitation that could dispose of this IPR. In opposition to
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`Ground 1 of the Petition, ParkerVision argues that Tayloe does not disclose a
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`“storage element.” Paper 12 at 59-72. Similarly, in opposition to Ground 2,
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`ParkerVision argues that Lam in view of Enz/Tayloe do not disclose a “storage
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`
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` Petitioners did not attach the Final Infringement Contentions to this motion
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` 1
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`because ParkerVision contends that the materials are “confidential.” ParkerVision
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`contends it paid a third party to do reverse engineering on the accused products,
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`which are publicly available smart TVs containing Wi-Fi chips manufactured by
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`other third parties. The Final Infringement Contentions contain screen shots of
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`circuit diagrams from the reverse engineering ParkerVision commissioned.
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`ParkerVision contends that it has a non-disclosure agreement with the third-party
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`reverse engineering firm requiring the documents to be filed under seal in litigation
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`or in IPR proceedings.
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`2
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`

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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
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`element.” Id. at 74-77. ParkerVision’s inconsistent positions with respect to the
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`“storage element” claim term are discussed below.
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`A.
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`ParkerVision’s Inconsistent Positions on “Storage Element”
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`
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`In another IPR involving the same ’444 patent that is at issue here, the Board
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`construed “storage element” to mean “an element of a system that stores non-
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`negligible amounts of energy from an input EM signal.” Paper 12 at 2 (quoting
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`Intel Corp. v. ParkerVision, Inc., IPR2020-01265, Paper 44 (FWD) at 41). There,
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`the Board found that another patent that was incorporated by reference into the
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`’444 patent, i.e., Patent No. 6,061,551 (“the ’551 patent”), has an express
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`definition of “storage module.” IPR2020-01265, Paper 44 at 14-42.
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`
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`In its Patent Owner Response, ParkerVision attempts to further construe the
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`phrase “non-negligible” in the Board’s construction, arguing that the amount of
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`energy on the capacitor must be shown “mathematically” in a complex, three-step
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`calculation that compares the calculated total “available energy” to the “energy in
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`a capacitor.” Paper 12 at e.g., 59-65. In its Final Infringement contentions in the
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`underlying TCL/Hisense litigations, however, ParkerVision did not disclose any
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`such mathematical calculations, nor did it argue that such calculations are
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`somehow required to show that a capacitor performs the routine function of storing
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`“non-negligible” amounts of energy as it has here. Instead, ParkerVision’s Final
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`3
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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
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`Infringement Contentions simply point to a capacitor in a Wi-Fi chip and identify
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`that capacitor as the alleged “storage element.”2
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`
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`ParkerVision’s newly minted “mathematical calculations” are also
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`inconsistent with, and precluded by, the Federal Circuit’s decision in ParkerVision,
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`Inc. v. Qualcomm Inc., 621 F. App’x 1009 (Fed. Cir. 2015). One of the patents at
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`issue there was the ’551 patent. In the claim construction proceedings preceding
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`the Federal Circuit’s decision, ParkerVision itself argued that “transferring non-
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`negligible amounts of energy” means “transferring energy (i.e., voltage and current
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`over time) in amounts that are distinguishable from noise.” ParkerVision, Inc. v.
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`Qualcomm Inc., No. 3:11-CV-719-J-37TEM, 2013 WL 633077, at *5-*7 (M.D.
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`Fla. Feb. 20, 2013). ParkerVision did not allege that non-negligible energy needed
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`to be mathematically determined. See id. Nor did ParkerVision argue that “non-
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`negligible” compares the energy in a capacitor to the total “available energy” (as in
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`ParkerVision’s Patent Owner Response here); instead, ParkerVision argued that
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` At a minimum, ParkerVision should be required to submit its Final Infringement
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` 2
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`Contentions for the Board’s in camera review in the event it disputes any of the
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`descriptions provided by Petitioners herein.
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`4
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`

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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
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`non-negligible energy is an amount that is merely “distinguishable from noise.”
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`See id.
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`
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`The district court accepted ParkerVision’s proposed construction with minor
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`amendment, holding that “transferring non-negligible amounts of energy” means
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`“transferring energy in amounts that are distinguishable from noise.”
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`ParkerVision, Inc, 2013 WL 633077, at *7 (emphasis added). And ParkerVision
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`did not dispute that construction on appeal. ParkerVision, Inc. v. Qualcomm Inc.,
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`621 F. App’x 1009, 1018 (Fed. Cir. 2015) (“That construction is not disputed on
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`appeal.”). ParkerVision’s inventor, Mr. Sorrells—who is also named as the lead
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`inventor of the ’835 patent (see Ex. 1001)—“explained at trial that transferring a
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`non-negligible amount of energy into the storage capacitor means ‘that you have to
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`transfer enough energy to overcome the noise in the system to be able to meet your
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`specifications.’” 621 F. App’x at 1019 (emphasis added). Then, in another IPR
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`involving U.S. Patent No. 6,370,371, ParkerVision told the PTAB that the Middle
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`District of Florida’s construction of “non-negligible” amounts of energy is correct.
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`RPX Corp. v. ParkerVision, Inc., IPR2014-00948 Paper 7, Patent Owner
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`Preliminary Response, (Sept. 24, 2014) at 23 (“[T]he Court adopted the exact same
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`5
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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
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`construction that Patent Owner now advances for ‘non-negligible amounts of
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`energy.’”) (ParkerVision’s emphasis).3
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`
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`Moreover, in the Qualcomm litigation, Mr. Sorrells testified that when a
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`product functions according to its specifications, this “is proof that a ‘non-
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`negligible’ amount of energy is transferred to the storage element in those
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`products.” 621 F. App’x at 1019 (emphasis added). “Mr. Sorrells’ testimony thus
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`establishes that to determine whether or not energy in amounts distinguishable
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`from noise has been transferred from the carrier signal, one may look to whether
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`the down-converting circuit functions in practice. If a circuit successfully down-
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`converts, that is proof that enough energy has been transferred to overcome the
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`noise in the system.” Id. (emphasis added).4
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` Therein, ParkerVision also argued that “the Specification supports Patent
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` 3
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`Owner’s construction that ‘a storage module’ means ‘an apparatus that stores non-
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`negligible amounts of energy from the carrier signal.’” Id.
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`4 This testimony precludes ParkerVision’s brand new argument that non-negligible
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`amounts of energy must be mathematically calculated, as a percentage of the total
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`available energy that is stored in a capacitor. See Nestle USA, Inc. v. Steuben
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`Foods, Inc., 884 F.3d 1350, 1352 (Fed. Cir. 2008) (“[I]t is the identity of the issues
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`6
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`

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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
`
`
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`In keeping with Mr. Sorrells’ testimony about how to prove that a capacitor
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`has a “non-negligible” amount of energy, ParkerVision’s Final Infringement
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`Contentions against TCL and Hisense identify a capacitor in a Wi-Fi chip as a
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`“storage element.” No mathematical calculations are shown or even mentioned as
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`being needed. The Final Infringement contentions are thus inconsistent with
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`ParkerVision’s new mathematical-calculation construction of “non-negligible,”
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`making them highly relevant to the issues before the Board here. “A patent may
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`not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and another to
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`find infringement.” Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343,
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`1351 (Fed. Cir. 2001) (quoting Sterner Lighting, Inc. v. Allied Elec. Supply, Inc.,
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`431 F.2d 539, 544 (5th Cir. 1970) (citing White v. Dunbar, 119 U.S. 47, 51
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`(1886)).5
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`
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`that were litigated that determines whether collateral estoppel should apply.”)
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`(original emphasis, internal quotations omitted).
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`5 In a motion filed today in IPR2021-00985 concerning related Patent No.
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`7,292,835 (“the ’835 patent”), Petitioners showed that ParkerVision’s Final
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`Infringement Contentions are also inconsistent with ParkerVision’s arguments in
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`IPR2021-00985 regarding the “cable modem” term in the ’835 patent.
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`7
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`

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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
`
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`B.
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`The Final Infringement Contentions Are Routine Discovery
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`
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`As shown above, ParkerVision’s Patent Owner Response is inconsistent
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`with ParkerVision’s Final Infringement Contentions as to the “storage element”
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`claim term. In its email to the Board of March 9, 2022, ParkerVision did not
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`dispute this. Instead, ParkerVision argued only that Petitioners had “waived” any
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`ability to address ParkerVision’s mathematical calculations as to the “storage
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`element” issue. This is wrong of course; a party cannot “waive” a response to an
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`argument that ParkerVision never made in the underlying litigation and raised for
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`the very first time in its Patent Owner Response.6 Indeed, that is the very purpose
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`of allowing a Petitioner Reply. Further, ParkerVision can raise any timeliness
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`arguments in its Sur-Reply or by way of a motion to exclude; there is no basis for
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` This is not the first time ParkerVision radically changed theories. In IPR2021-
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` 6
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`01265, the Board excluded ParkerVision’s “storage element” arguments.
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`IPR2021-01265, Paper 44 at 70 (“… Patent Owner could have asserted that Tayloe
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`was distinguishable on this basis, but did not do so.”) (Board’s emphasis). More
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`recently, the Middle District of Florida excluded ParkerVision’s expert
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`(ParkerVision, Inc. v. Qualcomm Inc., Case No. 6:14-cv-00687, Dkt. 683 (M.D.
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`Fla. Mar. 9, 2022) (granting motion at Dkt. 491)) and entered summary judgment
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`in favor of defendant Qualcomm (id. at Dkt. 686 (granting motion at Dkt. 494)).
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`8
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`

`

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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
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`ParkerVision to shield its Final Infringement Contentions from the Board’s review
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`during the discovery period of these proceedings.
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`
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`Patents are “affected with a public interest.” 37 C.F.R. § 1.56(a).
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`ParkerVision should not be allowed to frustrate the Board’s statutory obligation to
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`take “a second look at an earlier administrative grant” of the challenged patent by
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`taking one position in allegedly “confidential” Final Infringement Contentions that
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`it refuses to produce in IPR discovery, while taking an entirely inconsistent
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`position in its IPR papers in an attempt to avoid cancellation. See Cuozzo Speed
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`Techs., LLC v. Lee, 579 U.S. 261, 279 (2016). Rule 42.51(b)(1)(iii) is specifically
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`designed to prevent such abuses: “a party must serve relevant information that is
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`inconsistent with a position advanced by the party during the proceeding.”
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`(emphasis added). The Board should grant the motion for this reason alone.
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`II. ALTERNATIVELY, PARKERVISION SHOULD BE ORDERED TO
`PRODUCE ITS FINAL INFRINGEMENT CONTENTIONS AS
`“ADDITIONAL” DISCOVERY
`
`
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`The Board may grant additional discovery where necessary “in the interests
`
`of justice.” 37 C.F.R. § 42.51(b)(2)(i). This standard is plainly met here. As
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`discussed above, ParkerVision has placed the construction and scope of “storage
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`element” at issue in this IPR, as well as the nature of the evidence required to show
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`that this claim element is met in the prior art. And as shown above, ParkerVision’s
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`Patent Owner Response is inconsistent with its Final Infringement Contentions on
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`9
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`

`

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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
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`both scores. Therefore, the motion can also be granted under 37 C.F.R. §
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`42.51(b)(2)(i). See Bestway (USA), Inc. v. Team Worldwide Corp., IPR2018-
`
`00859, Paper 67 (April 9, 2019) at 8-9 (ordering production of “confidential expert
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`reports and deposition transcripts” because “[i]nconsistent positions taken by
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`Patent Owner’s declarant as to underlying factual inquiries in an obviousness
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`analysis would be useful to Petitioners” and because “Petitioners could not obtain
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`the information from other sources.”).
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`
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`In assessing whether to grant additional discovery, the Board applies a five
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`factor “necessary in the interest of justice” standard. See Garmin Int’l, Inc. v.
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`Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 6-7 (PTAB Mar. 5, 2013).
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`All five Garmin factors support granting Patent Owner’s motion.
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`A. There Is More Than a Possibility or Mere Allegation That the
`Requested Discovery Will Yield Useful Information.
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`
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`ParkerVision produced its Final Infringement Contentions in the underlying
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`WDTX litigations, so this is not a fishing expedition for something that may or
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`may not exist. And since these materials are inconsistent with ParkerVision’s
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`Patent Owner Response, the information is useful in this IPR. Bestway (USA), Inc.
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`v. Team Worldwide Corp., IPR2018-00859, Paper 67 (April 9, 2019) at 8-9
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`(ordering production of “confidential expert reports and deposition transcripts”
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`because “[i]nconsistent positions taken by Patent Owner’s declarant as to
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`10
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`

`

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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
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`underlying factual inquiries in an obviousness analysis would be useful to
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`Petitioners” and because “Petitioners could not obtain the information from other
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`sources.”).
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`B.
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`Patent Owner Does Not Seek Petitioner’s Litigation Positions or
`Their Underlying Basis
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`
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`Petitioners are not trying to discover the underlying basis for ParkerVision’s
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`litigation positions; they seek only to show the inconsistencies between the Patent
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`Owner’s Response and its existing Final Infringement Contentions.
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`C.
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`Petitioners Cannot Generate Equivalent Information by Other
`Means
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`
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`This factor strongly favors Petitioners because ParkerVision will not make
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`its Final Infringement Contentions available unless the Board grants this motion.
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`Bestway (USA), Inc. v. Team Worldwide Corp., IPR2018-00859, Paper 67 (April 9,
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`2019) at 8-9 (ordering production of “confidential expert reports and deposition
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`transcripts” where “Petitioners could not obtain the information from other
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`sources.”).
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`D. The Request for ParkerVision’s Final Infringement Contentions
`Is Easily Understandable and Not Overly Burdensome
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`
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`The fourth and fifth Garmin factors also favor Petitioners, which seek only
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`the ability to use in this IPR documents that are already in ParkerVision’s
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`immediate possession.
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`11
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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
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`III. CONCLUSION
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`
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`The Board should order ParkerVision to produce its Final Infringement
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`Contentions from the TCL and Hisense WDTX litigations as “routine” and/or
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`“additional” discovery. If the motion is granted, Petitioners are willing to submit
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`the Final Infringement Contentions as sealed exhibits under a protective order.
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`Dated: March 23, 2022
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`Respectfully submitted,
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`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
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`12
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`IPR2021-00990
`Petitioners’ Motion for Routine and/or Additional Discovery
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`
`CERTIFICATE OF SERVICE
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`
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`The undersigned certifies that a copy of the this paper was served on March
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`23, 2022, via electronic mail to counsel for Patent Owner:
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`Dated: March 23, 2021
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`Ron Daignault
`rdaignault@daignaultiyer.com
`Jason Charkow
`jcharkow@daignaultiyer.com
`Chandran Iyer
`cbiyer@daignaultiyer.com
`Stephanie Mandir
`smandir@daignaultiyer.com
`
`
`
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`By: /s/ Edward J. Mayle
`Edward J. Mayle
`Reg. No. 65,444
`
`Counsel for Petitioners
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`13
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