`Paper No. 17
`Filed: April 18, 2022
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`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. IPR2021-009901
`Patent No. 7,110,444
`
`________________________________________________________
`
`PETITIONERS’ REPLY IN SUPPORT OF MOTION FOR ROUTINE
`AND/OR ADDITIONAL DISCOVERY UNDER 37 C.F.R. § 42.51(b)
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`
`
`
` 1
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` LG Electronics Inc. who filed a petition in IPR2022-00245, is joined as petitioner
`in this proceeding.
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`
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`
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`IPR2021-00990
`Petitioners’ Reply ISO Motion for Routine and/or Additional Discovery
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`TABLE OF CONTENTS
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`I.
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`II.
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`THE ALLEGED “HIGHLY CONFIDENTIAL” NATURE OF THE
`DISCOVERY IS NOT A REASON TO DENY THE MOTION ................... 1
`
`PARKERVISION’S “WAIVER” ARGUMENT IS IRRELEVANT
`AT THIS STAGE, AND THERE WAS NO WAIVER IN ANY
`EVENT ............................................................................................................ 1
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`III. THE FICS ARE INCONSISTENT WITH THE POR .................................... 4
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`IV. PARKERVISION’S OTHER ARGUMENTS ARE UNAVAILING ............ 5
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`i
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`IPR2021-00990
`Petitioners’ Reply ISO Motion for Routine and/or Additional Discovery
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
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`Bestway (USA), Inc. v. Team Worldwide Corp.,
`IPR2018-00859, Paper 67 (PTAB April 9, 2019) ................................................ 1
`
`Ericsson Inc. v. Intell. Ventures I LLC,
`901 F.3d 1374 (Fed. Cir. 2018) ............................................................................ 3
`
`ParkerVision, Inc. v. Qualcomm Inc.,
`621 F. App’x 1009 (Fed. Cir. 2015) ..................................................................... 3
`
`Other Authorities
`
`37 C.F.R. §42.64 ........................................................................................................ 2
`
`
`
`ii
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`IPR2021-00990
`Petitioners’ Reply ISO Motion for Routine and/or Additional Discovery
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`
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`The targeted motion for discovery consisting of the Final Infringement
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`Contentions (“FICs”) that ParkerVision indisputably possesses should be
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`granted. ParkerVision fails to provide a basis for the Board to rule otherwise.
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`I. THE ALLEGED “HIGHLY CONFIDENTIAL” NATURE OF THE
`DISCOVERY IS NOT A REASON TO DENY THE MOTION
`
`
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`ParkerVision alleges that the FICs are “highly confidential” (Opp. at 1)—
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`even though the FICs purport to depict chips used in Petitioners’ televisions, not
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`any information of ParkerVision’s. But even if true, the Board allows documents
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`to be filed under seal. Thus, the questionable “highly confidential” status of the
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`FICs is no reason to deny the motion. Bestway (USA), Inc. v. Team Worldwide
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`Corp., IPR2018-00859, Paper 67 (PTAB April 9, 2019) at 8-9 (compelling
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`production of “confidential expert reports and deposition transcripts”).
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`II. PARKERVISION’S “WAIVER” ARGUMENT IS IRRELEVANT AT
`THIS STAGE, AND THERE WAS NO WAIVER IN ANY EVENT
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`
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`ParkerVision argues that Petitioners should be disallowed from addressing
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`the storage module energy “calculations” that are featured in the POR, because
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`Petitioners allegedly “waived” any rebuttal to such calculations. (Opp. at 1-5).
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`This argument lacks merit for two reasons.
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`
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`First, whether there was a waiver (and there was not) is irrelevant to this
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`discovery motion, and any issue of waiver is not ripe. ParkerVision will get the
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`last word in its Sur-Reply, and it may file a motion to exclude evidence if it so
`1
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`IPR2021-00990
`Petitioners’ Reply ISO Motion for Routine and/or Additional Discovery
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`chooses after reviewing Petitioner’s Reply. 37 C.F.R. §42.64. It is manifestly
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`premature, as part of deciding a discovery motion, to address a hypothetical motion
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`to exclude parts of what Patent Owner speculates will be in Petitioners’ Reply.
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`“Generally, the Board waits until after the oral hearing, when it reviews the record
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`in its entirety, to decide the merits of any motion to exclude. … [C]onsideration of
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`the objected-to evidnce is often unnecessary to resolve the patentability of the
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`challenged claims, and the motion to exclude is moot.” Consolidated Practice
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`Guide at 79-80.
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`
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`Second, even if ripe, there was no waiver because ParkerVision debuted its
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`energy “calculations” theory four months after the Petition was filed. The Petition
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`was filed on May 20, 2021. Before then, in the underlying litigations—as well as
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`in other litigations spanning back years —ParkerVision had never suggested that a
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`capacitor is not a “storage” element unless its energy is calculated and compared to
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`the “total available” energy, rather than merely compared to noise, such that the
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`ratio of energies is above some (undefined) threshold. It was not until September
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`14, 2021 that ParkerVision first disclosed that theory. See IPR2020-01265, Paper
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`26 at 18-25 and Paper 34; Ex. 2016 (IPR2020-01265, Paper 44) at 71-74
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`(excluding energy “calculations” theory).
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`
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`Now that ParkerVision has advanced its previously excluded energy
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`“calculations” theory in this IPR, Petitioners “may submit rebuttal evidence in
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`2
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`IPR2021-00990
`Petitioners’ Reply ISO Motion for Routine and/or Additional Discovery
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`support of its reply” comprising the FICs from the underlying litigations.
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`Consolidated Trial Practice Guide at 73 (citing Belden Inc. v. Berk-Tek LLC, 805
`
`F.3d 1064, 1077-78 (Fed. Cir. 2015)). And contrary to ParkerVision’s allegations
`
`of “gamesmanship,” the Petition shows that the prior art discloses “storage”
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`elements under any reasonable application of “non-negligible.” Petition at e.g., 18
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`(“Tayloe is directed to a ‘direct conversion receiver’ having frequency down-
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`conversion modules comprising a switch and capacitor to down-convert a high-
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`frequency RF signal to a lower-frequency signal.”); id at 28 (“Lam teaches that
`
`within each of the two sets of sampling circuits …, this down-conversion … may
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`‘be performed by conventional sampling circuits with comprise simple CMOS
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`switches and sample-and-hold capacitors’ ....”). It contains color-coded figures
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`showing that the prior art storage elements (capacitors) generate the down-
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`converted signal. Petition at 19-27, 38-76. That the capacitors perform down-
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`conversion “is proof” they store non-negligible energy. ParkerVision, Inc. v.
`
`Qualcomm Inc., 621 F. App’x 1009, 1018-19 (Fed. Cir. 2015) (“[T]he failure of a
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`reference to disclose a claim limitation in the same words used by the patentee is
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`not fatal to a claim of invalidity”). Further, the Petition includes the District
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`Court’s construction (Ex. 1013); there was no “strategic decision” to avoid it.
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`ParkerVision now argues that more is required, and Petitioners are entitled to rebut
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`this argument using, inter alia, the inconsistent positions taken by ParkerVision in
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`3
`
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`
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`IPR2021-00990
`Petitioners’ Reply ISO Motion for Routine and/or Additional Discovery
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`the FICs. Ericsson Inc. v. Intell. Ventures I LLC, 901 F.3d 1374, 1381 (Fed. Cir.
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`2018) (vacating decision ignoring Reply that “merely expands on a previously
`
`argued rationale”).2
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`
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`III. THE FICS ARE INCONSISTENT WITH THE POR
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`
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`ParkerVision argues that it did not “construe” the phrase “non-negligible
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`amounts of energy” in its POR, but rather showed that such calculations are “one
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`way to determine the energy storage.” Opp. at 6 (original emphasis). This is a
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`distinction without a difference in the context of this motion, as the FICs set forth
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`no energy calculations at all, they simply point to a capacitor as a storage module.
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`ParkerVision does not (and cannot) deny this basic fact. And Mr. Sorrells’ prior
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`testimony that, when a product functions, this is by itself “proof” that a non-
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`negligible amount of energy was transferred is blatantly inconsistent with
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`ParkerVision’s new calculation-based theory. But more important, the Board
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`should not be required to evaluate the inconsistency of ParkerVision’s positions
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`based on the parties’ subjective characterizations of the FICs—the Board should
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` 2
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` Notably, in IPR2020-01265, the Board cancelled “storage” claims in the ’444
`patent in view of prior art capacitors in the Tayloe reference (which reference is
`also at issue in Ground 1 of the Petition here), where the capacitors have energy
`merely “distinguishable from noise.” Ex. 2016 at 57. The Board did so even
`though Intel did not characterize the capacitors in those exact terms until its Reply,
`i.e., after ParkerVision put the precise quantum of energy at issue. See id.
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`4
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`IPR2021-00990
`Petitioners’ Reply ISO Motion for Routine and/or Additional Discovery
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`grant the motion so that it has a full record from which to evaluate the parties’
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`positions in advance of the Final Written Decision.
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`IV. PARKERVISION’S OTHER ARGUMENTS ARE UNAVAILING
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`
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`ParkerVision suggests that the FICs were served at an early stage in the
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`litigation. Opp. at 7-8. That is irrelevant and incorrect. The FICs were served on
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`the deadline in the Agreed Scheduling Order in the litigations (which deadline was
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`seven months after the Petition was filed). And ParkerVision did not propound
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`any discovery requests until after that deadline. To the extent that ParkerVision
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`now implies that its own FICs are incorrect, that is a problem of its own making
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`and is no reason to deny this motion.
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`Finally, ParkerVision argues that the requested discovery could have been
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`sought “by other means.” Opp. at 9-10. Not so. ParkerVision has dictated the
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`timing and nature of the current dispute by misdesignating the FICs “confidential.”
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`Nor was there some “deliberate omission” of this discovery from the Petition,
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`given that the Petition was filed four months before ParkerVision unveiled its
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`energy calculations theory in a different proceeding and seven months before the
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`FICs were served. The Board deserves a complete record. Granting Petitioners’
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`discovery motion ensures it will have one.
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`5
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`IPR2021-00990
`Petitioners’ Reply ISO Motion for Routine and/or Additional Discovery
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`Dated: April 18, 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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`6
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`IPR2021-00990
`Petitioners’ Reply ISO 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 April
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`18, 2022, via electronic mail to counsel for Patent Owner and by filing on the
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`PTAB’s E2E system:
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`Dated: April 18, 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
`
`
`By: /s/ Edward J. Mayle
`Edward J. Mayle
`Reg. No. 65,444
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`Counsel for Petitioners
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`7
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