Trials@uspto.gov
`571-272-7822
`
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 20
`Filed: May 27, 2022
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`TCL INDUSTRIES HOLDINGS CO., LTD. AND HISENSE CO., LTD.,
`and LG ELECTRONICS INC.,
`
`Petitioners
`
`v.
`
`PARKERVISION, INC.
`
`Patent Owner
`
`___________________________
`
`Case No. 2021IPR-009901
`Patent No. 7,110,444
`___________________________
`
`
`
`PETITIONERS’ REPLY
`
`
`
`
`
`
`1 LG Electronics Inc., who filed a petition in IPR2022-00245, is joined as a
`petitioner in this proceeding.
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`
`
`

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`IPR2021-00990
`Patent 7,110,444
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .............................................................................................. 1
`
`II. CLAIM CONSTRUCTION ............................................................................... 2
`A. “storage element” ......................................................................................... 2
`1. ParkerVision’s Proposed Construction Contradicts the Inventor’s
`Lexicography ....................................................................................... 4
`2. A Capacitor Used To Successfully Down-Convert a Signal Stores
`“Non-Negligible Energy” .................................................................... 5
`3. Petitioners Do Not Rely On “New Evidence” ..................................... 8
`4. Dr. Steer’s Unreliable Opinions Are Not Based on the Correct
`Construction of “Storage Element” ..................................................... 9
`B. “wireless modem apparatus” ......................................................................10
`1. ParkerVision Is Collaterally Estopped From Arguing that the
`Preamble is Limiting ..........................................................................10
`2. The Preamble Is Not Limiting ...........................................................10
`
`III. THE PRIOR ART DISCLOSES A “STORAGE ELEMENT” .......................12
`A. Ground 1: Tayloe Discloses “Storage Elements” ......................................13
`1. The Board Already Found That Tayloe Discloses “Storage
`Elements” ...........................................................................................13
`2. If the Board Allows ParkerVision to Reargue the Issue, It Should
`Again Find that Tayloe’s Capacitors are “Storage Elements”...........15
`B. Ground 2: Lam and Enz Each Disclose “Storage Elements” ....................17
`1. Lam Discloses “Storage Elements” ...................................................17
`2. Lam in View of Enz Discloses a “Storage Element” ........................20
`
`IV. “WIRELESS MODEM APPARATUS” IS NOT LIMITING AND IS
`OBVIOUS ........................................................................................................21
`A. “Wireless Modem Apparatus” is Not Limiting .........................................21
`B. The Board’s Decision in IPR2020-01265 Applies to Claim 2,
`Which Has the Same Preamble as Claim 3 ................................................22
`C. Alternatively, Wireless Modems Were Obvious .......................................22
`
`V. PARKERVISION’S OTHER ARGUMENTS LACK MERIT .......................22
`1. Whether Enz Itself Down-Converts Largely Is Irrelevant .................22
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`2. The Voltage of Enz’s Input Largely Is Irrelevant ..............................24
`3. Lam is Not Limited to “High Frequency” Sampling .........................25
`4. Enz Reduces a DC Offset Voltage .....................................................26
`5. Whether Enz’s Op-Amp Down Converts Is Irrelevant ......................27
`
`VI. THE BOARD ALREADY REJECTED PARKERVISIONS’
`“SECONDARY CONSIDERATIONS” ARGUMENTS ................................27
`
`VII. CONCLUSION ................................................................................................28
`
`
`
`
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`ii
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`IPR2021-00990
`Patent 7,110,444
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`
`Cases
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Am. Med. Sys., Inc. v. Biolitec, Inc.,
`618 F.3d 1354 (Fed. Cir. 2010) .......................................................................... 11
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................ 8
`
`Ericsson Inc. v. Intell. Ventures I LLC,
`901 F.3d 1374 (Fed. Cir. 2018) ............................................................................ 8
`
`In re Fought,
`941 F.3d 1175 (Fed. Cir. 2019) .......................................................................... 11
`
`In re Merck & Co., Inc.,
`800 F.2d 1091 (Fed. Cir. 1986) .............................................................. 23, 24, 26
`
`Nestle USA, Inc. v. Steuben Foods, Inc.,
`884 F.3d 1350 (Fed. Cir. 2008) .......................................................... 7, 10, 14, 21
`
`ParkerVision, Inc. v. Qualcomm Inc.,
`621 F. App’x 1009 (Fed. Cir. 2015) ............................................................passim
`
`ParkerVision, Inc. v. Qualcomm Inc.,
`No. 3:11-CV-719-J-37TEM, 2013 WL 633077 (M.D. Fla. Feb. 20,
`2013) ..................................................................................................................... 6
`
`Pharmacia & Upjohn Co. v. Mylan Pharms., Inc.,
`170 F.3d 1373 (Fed. Cir. 1999) .......................................................................... 14
`
`TomTom, Inc. v. Adolph,
`790 F.3d 1315 (Fed. Cir. 2015) .................................................................... 11, 12
`
`
`
`iii
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`IPR2021-00990
`Patent 7,110,444
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`TCL Industries Holdings Co., Ltd. and Hisense Co., Ltd. (“Petitioners”)
`
`submit this Reply to the Patent Owner’s (“ParkerVision”) Response (“POR”).
`
`I.
`
`INTRODUCTION
`
`The Board found claim 3 of obvious in IPR2020-01265. Ex. 2016. Except
`
`for the concluding “wherein” clause of each, claim 2 is identical to claim 3. Ex.
`
`1021 at 49:8-50:21. In its POR, ParkerVision does not dispute that the prior art
`
`discloses and renders obvious the “wherein” clause of claim 2.2 Accordingly, the
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`Board should find claim 2 obvious for the same reasons that it found claim 3
`
`obvious in IPR2020-01265.
`
`ParkerVision nonetheless attempts to re-litigate issues already resolved by
`
`the Board in IPR2020-01265, including (i) the construction of “storage element”
`
`(which is recited in cancelled claim 3 and its dependent claim 4, but not in claim
`
`2); (ii) whether Tayloe discloses a “storage element”; and (iii) alleged “secondary
`
`considerations.” But ParkerVision is precluded from re-litigating those issues
`
`based on the Board’s final decision. And to the extent that the Board considers
`
`such arguments, it should again reject them.
`
`
`2 ParkerVision’s expert Dr. Michael Steer conceded on cross-examination that the
`prior art discloses under-sampling, which is the additional limitation of the
`“wherein” clause of claim 2. Ex. 1021 at 45:2-46:1.
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`1
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`Further, ParkerVision now also argues for the first time that the phrase
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`“wireless modem apparatus”—as recited in the preambles of claims 2 and 3—is
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`limiting. ParkerVision is incorrect. Further, in finding claim 3 of the ’444 patent
`
`unpatentable—which has the identical preamble as claim 2 including “wireless
`
`modem apparatus”—the Board already decided that the preamble is not limiting
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`and/or that Tayloe discloses a wireless modem. ParkerVision is estopped from re-
`
`litigating that issue.
`
`Ground 2 also challenges claims 2-4 as obvious over prior art that the Board
`
`did not consider in IPR2020-01265 (i.e., Lam in view of Enz and Tayloe).
`
`ParkerVision’s Response, however, largely mimics its Ground 1 response and is
`
`premised on its previously rejected construction of “storage element” and its
`
`newfound argument that the preambles of claims 2 and 3 are limiting.
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`ParkerVision’s only additional argument is that there would have been no
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`“motivation” to combine Lam and Enz, but this too lacks merit.
`
`Finally, ParkerVision chose not to cross-examine Petitioners’ expert, Dr.
`
`Shoemake, whose testimony stands largely unchallenged.
`
`II. CLAIM CONSTRUCTION
`
`A.
`
`“storage element”
`
`Under any reasonable construction, a capacitor constitutes a “storage
`
`element.” See Pet. at 59; Ex. 1002 ¶¶169. The ’444 patent expressly teaches that a
`
`2
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`capacitor is a “storage element.” Pet. at 59; Ex. 1002 ¶169 (citing Ex. 1001 at
`
`34:22- 23, 36:14-15). This is consistent with ParkerVision’s position on
`
`infringement, where ParkerVision alleges repeatedly across multiple related
`
`patents that a “storage element” in the accused products is simply “one or more
`
`capacitors.” E.g., Ex. 1022 ¶¶127-131, 138-140, 150; Ex. 1023 ¶¶75, 92, 98.3
`
`IPR2020-01265 also involved the ’444 Patent. There, the Board entered a
`
`construction consistent with Petitioner’s application of “storage element” from the
`
`Petition, construing “storage element” as “an element of a system that stores non-
`
`negligible amounts of energy from an input EM signal.” Ex. 2016 at 41. Although
`
`not limited to a capacitor, the Board’s construction regarding the claimed function
`
`of the storage element—“stor[ing] non-negligible amounts of energy”—is
`
`substantively the same as the term is applied by Petitioners in the Petition. E.g.,
`
`Pet. at 20-21 (describing how charge from the “RF input signal f1” “builds up on
`
`capacitor 72” and that the “voltage across the capacitor 72 corresponding to this
`
`
`3 Earlier, the Board ordered ParkerVision to produce additional discovery
`regarding ParkerVision’s litigation positions. Paper 18. ParkerVision produced the
`discovery as ordered, but also moved the district court for an order enjoining
`Petitioners from using that discovery in this IPR proceeding. The court granted that
`motion due to concerns that the Board would not adequately maintain the
`confidentiality of the produced discovery. Ex. 1018; Ex. 1019.
`
`3
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`charge constitutes the average value of the RF input signal f1 during the first
`
`quarter of the period of the signal f1”).
`
`And because all the capacitors identified in the Petition as prior-art “storage
`
`elements” store energy from “an input EM signal” (Pet. at 18-20, 26-31, 38-44, 61-
`
`62, 67-68), the arguments raised in the Petition apply equally under the Board’s
`
`construction in IPR2020-01265. Given this, and the fact that the Board’s rationale
`
`applies equally here, Petitioners do not object to adoption of the Board’s
`
`construction for “storage element” from IPR2020-01265.
`
`In contrast, despite having the Board’s construction from IPR2020-01265 in
`
`advance of filing its POR, ParkerVision disregards it, rehashing the same rejected
`
`arguments from that IPR, while also raising new arguments that contradict its own
`
`lead inventor’s prior sworn testimony. The Board should reject each of these
`
`arguments.
`
`1.
`
`ParkerVision’s Proposed Construction Contradicts the
`Inventor’s Lexicography
`
`Claim 3 recites a “a storage element.” Claim 4 depends from claim 3 and
`
`recites “wherein said storage elements comprises a capacitor . . . .” The ’444
`
`patent incorporates by reference U.S. Patent No. 6,061,551 (“the ’551 patent”).
`
`Ex. 1001 at 1:5-22. As the Board found, the ’551 “patent specification provides a
`
`lexicographic definition” for “storage modules,” viz., “systems that store non-
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`4
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`negligible amounts of energy from an input EM signal.” Ex. 2016 at 36 (emphasis
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`added). The Board also found that ParkerVision itself proposed that construction
`
`previously. Id. at 39.
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`Further, the Board rejected the same arguments raised by ParkerVision and
`
`Dr. Steer here as “clearly at odds with the lexicographic definition provided in the
`
`’551 patent because the definition does not include ‘energy transfer’ in the
`
`meaning of ‘storage element.’” Id. at 41. The Board thus concluded that “one of
`
`ordinary skill in the art would understand ‘storage element’ to mean ‘an element of
`
`a system that stores non-negligible amounts of energy from an input EM signal.’”
`
`Id. at 41.4
`
`2.
`
`A Capacitor Used To Successfully Down-Convert a Signal
`Stores “Non-Negligible Energy”
`
`ParkerVision attempts to further construe “non-negligible” from the
`
`construction of “storage module” to require that the amount of energy on a
`
`capacitor must be shown “mathematically” in a complex, three-step calculation
`
`that compares the “total available energy” to the “energy in a capacitor.” E.g.,
`
`POR at 59-67, 74-75. ParkerVision and its expert, however, offer no legitimate
`
`
`4 Notably, Dr. Steer did not even review the Board’s decision before submitting his
`declaration in this proceeding, as he had not seen it until it was shown to him by
`Petitioners during cross-examination. Ex. 1016 at 37:19-40:21; Ex. 1021 at 19:11-
`22:25, 31:8-32:7, 35:19-36:6.
`
`5
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`IPR2021-00990
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`reason for requiring a comparison of the capacitor’s energy to the “total available
`
`energy” in the context of down-converting an input EM signal.
`
`Nor can they, as ParkerVision and the lead inventor on the ’444 Patent,
`
`David Sorrells, asserted previously that a “non-negligible” amount of energy stored
`
`in a “storage module” is merely that which is “distinguishable from noise.” Paper
`
`13 at 4-6. The courts involved accepted that interpretation. ParkerVision, Inc. v.
`
`Qualcomm Inc., No. 3:11-CV-719-J-37TEM, 2013 WL 633077, at *5-*7 (M.D.
`
`Fla. Feb. 20, 2013); ParkerVision, Inc. v. Qualcomm Inc., 621 F. App’x 1009,
`
`1018 (Fed. Cir. 2015) (“That construction is not disputed on appeal.”).5
`
`In particular, Mr. Sorrells “explained at trial that transferring a non-
`
`negligible amount of energy into the 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. Mr. Sorrells 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.” 621 F. App’x at 1019 (emphasis added). As viewed by the Federal
`
`Circuit, “Mr. Sorrells’ testimony thus establishes that to determine whether or not
`
`
`5 The ’551 patent was at issue in the Qualcomm case. As discussed above, the ’835
`and ’444 patents incorporate the ’551 patent’s lexicography.
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`6
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`IPR2021-00990
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`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.
`
`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).
`
`The Middle District of Florida very recently relied on this prior testimony
`
`from Mr. Sorrells regarding what constitutes “non-negligible” energy (Ex. 1017 at
`
`20 n.14), finding that under Mr. Sorrell’s interpretation a prior art reference was
`
`found to disclose a “storage module” that receives “non-negligible amounts of
`
`energy,” and held that this “factual finding … has preclusive effect.” Ex. 1017 at
`
`20-21; id. at 21 (“[A]n expert may not change the claim limitations to suit a
`
`preferred theory.”).6
`
`Accordingly, if the Board deems it necessary to construe the word “non-
`
`negligible” from its construction of “storage module,” it should hold 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. ParkerVision, 621
`
`F. App’x at 1019. Further, the Board should hold that ParkerVision is collaterally
`
`
`6 Again, ParkerVision’s expert Dr. Steer failed to consider crucial materials in
`arriving at his opinion here, as he did not review Mr. Sorrell’s prior testimony
`regarding the meaning of “non-negligible,” nor did he consider the Federal Circuit
`and District Court opinions relying on that testimony. Ex. 1016 at 55:25-56:14,
`60:5-67:20, 72:11-74:5
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`7
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`estopped from arguing otherwise. Nestle USA, Inc. v. Steuben Foods, Inc., 884
`
`F.3d 1350, 1352 (Fed. Cir. 2008) (“Importantly, our precedent makes clear that
`
`collateral estoppel is not limited to patent claims that are identical. Rather it is the
`
`identity of the issues that were litigated that determines whether collateral estoppel
`
`should apply.”) (original emphasis, internal quotations omitted).
`
`3.
`
`Petitioners Do Not Rely On “New Evidence”
`
`ParkerVision suggests that any response to its new “mathematical
`
`calculation” construction-of-a-construction would be an impermissible “new
`
`argument.” POR at 1, 3-4. Not so.
`
`First, this Reply does not make any impermissible new argument (much less
`
`rely on any new evidence), but “merely expands on a previously argued rationale”
`
`in showing that the capacitors of Tayloe, Lam, and Enz store non-negligible energy
`
`under the Board’s recently adopted construction (which is consistent with the
`
`Petition) and ParkerVision’s own previous position. Ericsson Inc. v. Intell.
`
`Ventures I LLC, 901 F.3d 1374, 1381 (Fed. Cir. 2018); Belden Inc. v. Berk-Tek
`
`LLC, 805 F.3d 1064, 1077-78 (Fed. Cir. 2015) (allowing expert declaration in
`
`reply that “fairly responds only to arguments” in POR).
`
`Second, it is immaterial that the Petition did not use the specific word “non-
`
`negligible” in showing that the capacitors of Tayloe, Lam, and Enz function to
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`8
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`IPR2021-00990
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`store significant amounts of charge from the incoming EM signal. This proceeding
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`is not a semantics game, and any failure “to disclose a claim limitation in the same
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`words used by the patentee is not fatal to a claim of invalidity.” ParkerVision, 621
`
`F. App’x at 1018-19.
`
`4.
`
`Dr. Steer’s Unreliable Opinions Are Not Based on the
`Correct Construction of “Storage Element”
`
`Dr. Steer’s opinions are not consistent with the Board’s construction of
`
`“storage element” because Dr. Steer includes an additional “energy transfer
`
`system” limitation. And his opinions also are not consistent with ParkerVision’s
`
`own inventor testimony as to what amount of energy is “non-negligible,” as he
`
`requires a “mathematical calculation” having no basis in the intrinsic evidence that
`
`compares the energy in a capacitor to the “total available energy.”
`
`Accordingly, the Board should again disregard Dr. Steer’s opinions
`
`premised on a construction that is “clearly at odds” with the specification. Ex. 2016
`
`at 41.7
`
`
`7 Due to comparable failings, Dr. Steer’s testimony in support of ParkerVision’s
`arguments has been previously excluded in district court, with the court finding that
`Dr. Steer’s opinions are “unreliable,” based on mere “speculation,” and are barred
`by “issue preclusion.” Ex. 1017 at 2-33; Ex. 1016 at 24:6-37:13, 44:22-46:1, 67:24-
`74:22. Similarly, after an ITC ALJ excluded Dr. Steer’s testimony and other
`“material portions” of ParkerVision’s evidence, ParkerVision “determined that it can
`no longer proceed with its case-in-chief before the Commission” and withdrew its
`Complaint. Ex. 1020 at 1-2; Ex. 1016 at 77:4-79:5.
`
`9
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`IPR2021-00990
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`B.
`
`“wireless modem apparatus”
`
`1.
`
`ParkerVision Is Collaterally Estopped From Arguing that
`the Preamble is Limiting
`
`The preamble of cancelled claim 3 is identical to the preamble of claim 2. In
`
`IPR2020-01265, ParkerVision and its expert never argued that the term “wireless
`
`modem apparatus” from the preamble is limiting. And the Board found the body
`
`of Claim 3 “recites several structural requirements of the claimed receiver
`
`including ‘a first frequency down-conversion module,’ ‘a second frequency down-
`
`conversion module,’ and a ‘substractor module.’” Id. at 33-33 (emphasis added).
`
`The Board ultimately found claim 3 obvious. Id. at 77-78. Accordingly,
`
`ParkerVision should not be heard now to argue that the preamble is limiting.
`
`But even if the preamble was somehow limiting, ParkerVision is estopped
`
`by the Board’s final decision in IPR2020-01265 from arguing that Tayloe in view
`
`of TI Datasheet does not render obvious claims 2 and 3. Nestle USA, 884 F.3d at
`
`1352 (“Importantly, our precedent makes clear that collateral estoppel is not
`
`limited to patent claims that are identical. Rather it is the identity of the issues that
`
`were litigated that determines whether collateral estoppel should apply.”).
`
`2.
`
`The Preamble Is Not Limiting
`
`Even when reviewed fresh, the intrinsic record shows that the preamble of
`
`claim 3 is not limiting. The identical preambles of claims 2 and 3 recite “[a]
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`wireless modem apparatus.” In the underlying litigations, ParkerVision never
`
`argued that the preamble is limiting. And for good reason—“wireless modem
`
`apparatus” is non-essential and does not give meaning to the structurally-complete
`
`bodies of claims 2 and 3.
`
`Courts presume that a preamble is not limiting. “Generally… the preamble
`
`does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354,
`
`1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites
`
`essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’
`
`to the claim.” TomTom, Inc. v. Adolph, 790 F.3d 1315, 1323 (Fed. Cir. 2015). On
`
`the other hand, “a preamble is not limiting ‘where a patentee defines a structurally
`
`complete invention in the claim body and uses the preamble only to state a purpose
`
`or intended use for the invention.’” Id. In addition, “a preamble limiting when it
`
`serves as antecedent basis for a term appearing in the body of a claim.” In re
`
`Fought, 941 F.3d 1175, 1178 (Fed. Cir. 2019).
`
`Thus, only one conclusion remains—“wireless modem apparatus” is not a
`
`limitation. The preamble does not provide antecedent basis for any later term. In
`
`addition, a wireless modem apparatus does not represent “essential structure” and
`
`merely states an intended use. TomTom, 790 F.3d at 1323.
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`The fact that “wireless modem apparatus” is only an intended use is
`
`confirmed by the specification. A “wireless modem” is just one of the many
`
`exemplary applications of the apparatuses disclosed in the specification.
`
`Importantly, the ’444 patent states that “[t]hese applications and embodiments are
`
`not intended to limit the invention.” Id. at 30:56-67 (emphasis added); id. at 60:7-
`
`10 (“example implementations have been described for illustrative purposes only,
`
`and are not limiting”). In short, nothing suggests that the term “wireless modem”
`
`is essential structure of the purported invention.
`
`Moreover, the body of the claim defines a structurally complete invention
`
`and the term “wireless modem apparatus” does not give life, meaning, and vitality
`
`to the claim. TomTom, 790 F.3d at 1323. Said differently, if “wireless modem
`
`apparatus” was deleted from the preamble or replaced with a generic term like
`
`device, the body of each claim would still define a structurally complete device
`
`that down-converts an input signal by using frequency down-conversion modules,
`
`as shown in Figure 70A of the ’444 patent. Pet. at 10.
`
`III. THE PRIOR ART DISCLOSES A “STORAGE ELEMENT”
`
`Under the Board’s construction, a “storage element” is “an element of a
`
`system that stores non-negligible amounts of energy from an input EM signal.”
`
`Section II.A.1, supra. And if a device contains a capacitor and that device
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`“successfully down-converts” a signal, then “that is proof” that the capacitor stores
`
`non-negligible energy. ParkerVision, 621 F. App’x at 1019 (emphasis added);
`
`Section II.A.2, supra. Thus, to show that a capacitor is a storage element,
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`Petitioners need not show that it is part of an “energy transfer system,” nor must
`
`they perform any mathematical calculations comparing the energy on the capacitor
`
`to the “total available energy.” Section II.A.1-4, supra.
`
`As shown in the Petition and further summarized below, Tayloe (Ground 1)
`
`and Lam / Enz / Tayloe (Ground 2) disclose capacitors that each act as a “storage
`
`element” under the Board’s construction. Those capacitors are indisputably used
`
`to perform down-conversion, and, as such, they necessarily contain “non-
`
`negligible” amounts of energy (as Mr. Sorrells testified).8
`
`A. Ground 1: Tayloe Discloses “Storage Elements”
`
`1.
`
`The Board Already Found That Tayloe Discloses “Storage
`Elements”
`
`The Board previously found that Tayloe discloses a first storage element
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`(i.e., capacitor 76) and a second storage element (i.e., capacitor 72). Ex. 2016 at 57
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`(“Tayloe’s capacitors 72-78 teach the recited ‘storage element’ because Petitioner
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`establishes sufficiently that Tayloe’s capacitors are ‘element[s] of a system that
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`8 Independent claim 2 does not recite “storage element” and so this Section is
`relevant only to claims 3 and 4.
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`store[] non-negligible amounts of energy from an input signal.’”); id. at 57-58
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`(“Tayloe’s capacitors integrate the input signal, which indicates accumulation of
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`energy and matches the ’551 patent’s description of a storage module’s
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`operation.”) (internal quotations omitted); Pet. at 58-59; Ex. 1004 at Figure 3; Ex.
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`1002 ¶¶167-169.
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`The Board’s final decision thus resolves this dispute in favor of Petitioners.
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`Nestle USA, 884 F.3d at 1352 (“[I]t is the identity of the issues that were litigated
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`that determines whether collateral estoppel should apply.”); MaxLinear, Inc. v. CF
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`CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018) (“It is well established that
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`collateral estoppel, also known as issue preclusion, applies in the administrative
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`context.”) (citing B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S.Ct. 1293,
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`1303 (2015)). And even if the Board’s previous decision does not trigger collateral
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`estoppel, it should be given persuasive effect in these proceedings. While
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`ParkerVision may have appealed the Board’s final decision in IPR2020-01265, the
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`decision “retains all of its res judicata consequences pending decision of the
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`appeal.” Pharmacia & Upjohn Co. v. Mylan Pharms., Inc., 170 F.3d 1373, 1381
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`(Fed. Cir. 1999).
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`2.
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`If the Board Allows ParkerVision to Reargue the Issue, It
`Should Again Find that Tayloe’s Capacitors are “Storage
`Elements”
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`To the extent that the Board elects to revisit this issue, it should reach the
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`same conclusion. Just like the ’444 patent, Tayloe is directed to a “direct
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`conversion receiver” having frequency down-conversion modules comprising a
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`switch and capacitor to down-convert a high-frequency RF signal to a lower-
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`frequency signal. Ex.1004, Abstract (“A product detector for converting a signal
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`to baseband includes a commutating switch which serves to sample an RF
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`waveform[.]”). Figure 3 of Tayloe (below) shows the direct conversion receiver.
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`Ex.1004 at 2:6-8.
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`Ex.1004-Tayloe, Fig. 3
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`The receiver receives an RF input signal (f1) 36 (purple) and down-converts
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`this signal to produce a baseband signal 54 (yellow). More specifically, Tayloe
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`uses switch 38 (gray) and capacitors 72 and 76 (brown) to down-convert the input
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`signal to baseband. Id., 2:13-67 (“[A]n RF ... signal f1 [purple] is received at
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`resistor 32.... After passing through resistor 32, the input signal is received by
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`commutating switch 38 [gray] at input 36. Commutating switch 38 switches input
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`36 to outputs 42 [green], 44, 46 [red], and 48...As commutating switch 38 cycles
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`through the four outputs, capacitors 72-78 charge to voltage values substantially
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`equal to the average value of the input signal during their respective quadrants....
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`The outputs of commutating switch 38 are input to summing amplifiers 50 [light
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`blue] and 52. Summing amplifier 50 [light blue] differentially sums the 0 degree
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`output [42 (green)] and the 180 degree output [46 (red)], thereby producing
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`baseband in-phase signal 54 [yellow].”) (emphasis added); Ex.1002 ¶¶88-89; Ex.
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`2016 at 44-70 (Board finding Tayloe discloses “storage elements” and claim 3 is
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`obvious); Ex. 1021 at 39:17-42:6.9
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`Given that Tayloe’s capacitors perform down-conversion, “that is proof”
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`under the ’444 lead inventor’s own testimony that the capacitors store non-
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`negligible energy. ParkerVision, 621 F. App’x at 1019 (emphasis added). In
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`contrast, ParkerVision’s argument that Tayloe does not disclose storage elements
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`9 The Board’s decision in IPR2020-01265 refers to “Dr. Subramanian’s
`testimony,” which is part of the intrinsic record of the ’444 patent. Ex. 2016 at 57-
`59. Petitioners rely on Dr. Subramanian’s testimony as to Tayloe’s disclosure of
`storage elements.
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`(POR at 59-72), fails to apply the Board’s construction, and further contradicts the
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`sworn testimony from its own lead inventor. See Section II.A, supra.
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`As an independent basis for finding that Tayloe’s capacitors are storage
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`modules, ParkerVision nonetheless argues that Tayloe stores “0.193% of the
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`available energy” (POR at 65). Dependent claim 42 of the incorporated ’551
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`patent, however, teaches that “one tenth of one percent of the energy” is “non-
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`negligible.” Ex. 2029 at claims 41, 42; compare with Ex. 1021 at 51:3-52:11.
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`Thus, even if a mathematical calculation of negligible and non-negligible energy
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`was somehow required (which it is not), the energy stored in each of Tayloe’s
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`capacitors is “non-negligible” even under Dr. Steer’s own calculation.
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`B. Ground 2: Lam and Enz Each Disclose “Storage Elements”
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`1.
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`Lam Discloses “Storage Elements”
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`Lam is directed to a down-converting receiver. Ex. 1006, 4:1-14 (“[T]here is
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`provided a quadrature demodulation receiver for narrow-band communication
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`systems comprising means for directly sampling an incoming signal which is
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`modulated on a radio-frequency carrier”). In particular, Lam discloses a receiver
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`(Figure 3) for frequency down-converting an RF input signal (305, shown in purple
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`below) to produce separate “in-phase (I) and quadrature (Q)” baseband signals
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`(yellow and gray, respectively, below) Ex. 1006, 1:9-11:
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`Lam discloses that the “receiver illustrated in FIG. 3 ... down-converts the
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`incoming RF signal 305 into its base-band in-phase (I) and quadrature (Q)
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`components by means of in-phase and quadrature sampling circuits 310 [orange]
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`and 320 [blue] respectively which sample the incoming RF waveform directly at a
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`considerably lower sampling frequency than the carrier frequency.” Ex.1006 at
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`5:50-60 (emphasis added); 10:56-67. The sampling circuits 310 and 320 take
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`“sub-samples” that down-convert the separate “in-phase (I), the quadrature (Q),
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`negative of the in-phase (-I) and negative of the quadrature (-Q) components”
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`according to control signals (pink). Ex.1006, 4:21-24.
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`After down-conversion by the sampling circuits 310 and 320, “the -I and -Q
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`components can be inverted and combined with the I and Q components
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`respectively,” resulting in a down-converted in-phase (I) baseband signal (yellow)
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`being output from the sampling circuits 310 and a down-converted quadrature (Q)
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`baseband signal (gray) being output from the sampling circuits 320. Id., 10:20-23.
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`Within each of the two sets of sampling circuits 310 and 320, this down-
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`conversion of the I and Q baseband signals, respectively, may “be performed by
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`conventional sampling circuits which comprise simple CMOS switches and
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`sample-and-hold capacitors and integrated with low-frequency differential
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`amplifiers.” Ex.1006, 5:56-60 (emphasis added); Ex.1002 ¶¶102-104.
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`Given that La