IPR2021-00990
`U.S. Patent No. 7,110,444
`Motion to Strike
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`TCL Industries Holdings Co., Ltd. Hisense Co., Ltd., and
`LG Electronics Inc.,
`
`Petitioners
`
`v.
`
`ParkerVision, Inc.
`
`Patent Owner
`
`U.S. Patent No. 7,110,444
`
`Issue Date: September 19, 2006
`Title: WIRELESS LOCAL AREA NETWORK
`(WLAN) USING UNIVERSAL FREQUENCY
`TRANSLATION TECHNOLOGY INCLUDING
`MULTI-PHASE EMBODIMENTS AND
`CIRCUIT IMPLEMENTATIONS
`__________________________________________________________________
`Inter Partes Review No. IPR2021-00990
`__________________________________________________________________
`PATENT OWNER’S MOTION TO STRIKE ARGUMENTS IMPROPERLY
`RAISED IN PETITIONERS’ REPLY
`
`
`U.S. Patent No. 7,110,444
`Motion to Strike
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`TCL Industries Holdings Co., Ltd. Hisense Co., Ltd., and
`LG Electronics Inc.,
`
`Petitioners
`
`v.
`
`ParkerVision, Inc.
`
`Patent Owner
`
`U.S. Patent No. 7,110,444
`
`Issue Date: September 19, 2006
`Title: WIRELESS LOCAL AREA NETWORK
`(WLAN) USING UNIVERSAL FREQUENCY
`TRANSLATION TECHNOLOGY INCLUDING
`MULTI-PHASE EMBODIMENTS AND
`CIRCUIT IMPLEMENTATIONS
`__________________________________________________________________
`Inter Partes Review No. IPR2021-00990
`__________________________________________________________________
`PATENT OWNER’S MOTION TO STRIKE ARGUMENTS IMPROPERLY
`RAISED IN PETITIONERS’ REPLY
`
`
`
`TABLE OF CONTENTS
`
`Page
`I.
`Introduction. ..................................................................................................... 1
`II. Arguments improperly raised in petitioners’ reply. ........................................ 1
`III. The Board should strike Petitioners’ newly disclosed theory. ........................ 2
`A.
`Petitioners could have addressed whether prior art capacitors “store
`non-negligible amounts of energy” but chose not to do so. .................. 3
`Petitioners’ argument in their Reply regarding “storage element” is
`not a “response” to the POR. ................................................................. 6
`C.
`Patent Owner is prejudiced by Petitioners’ new argument. .................. 8
`IV. Conclusion. ...................................................................................................... 8
`
`
`
`B.
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Intel Corp. v. ParkerVision, Inc.,
`Case IPR2020-01265, Paper 44 (P.T.A.B. Jan. 21, 2022) ................................... 7
`Intel Corp. v. ParkerVision, Inc,
`Case IPR2020-01265, Paper 18 (P.T.A.B. May 11, 2021) .................................. 4
`Intelligent Bio-Systems v. Illumina Cambridge,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 7
`SAS Institute Inc. v. Iancu,
`138 S.Ct. 1348 (2018) .......................................................................................... 7
`Statutes and Rules
`37 C.F.R. § 42.23(b) .............................................................................................. 1, 7
`
`
`
`
`
`ii
`
`
`
`On June 14, 2022, the Board held a telephone conference and granted Patent
`
`Owner’s leave to file this motion to strike.
`
`I.
`
`Introduction.
`Petitioners present a new theory for the first time in their Reply related to the
`
`term “storage element.” In particular, in the Petition, Petitioners merely identified
`
`capacitors as “storage elements.” In the Reply, however, Petitioners argue an
`
`entirely new direction in terms of what makes a capacitor a storage element—it
`
`“stores non-negligible amounts of energy.” Petitioners proceeding in a new
`
`direction with a new approach compared to the position Petitioners took in their
`
`Petition is prohibited by 37 C.F.R. § 42.23(b) and the Consolidated Trial Practice
`
`Guidelines (“Consolidated TPG”).
`
`Moreover, Petitioners’ untimely disclosure prejudices Patent Owner; Patent
`
`Owner is deprived of its ability to have its expert address Petitioners’ arguments.
`
`Accordingly, Patent Owner respectfully requests the Board to strike the arguments
`
`Petitioners improperly raised in their Reply.
`
`II. Arguments improperly raised in petitioners’ reply.
`Patent Owner seeks to strike Petitioners’ new arguments regarding prior art
`
`capacitors. In particular, Patent Owner seeks to strike the following arguments:
`
`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
`
`
`
`1
`
`
`
`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 charge constitutes the average value of the RF
`input signal f1 during the first quarter of the period of the signal f1”).
`Reply, 3-4.
`
`And if a device contains a capacitor and that device “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, 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.” Reply, 12-13.
`
`Given that Tayloe’s capacitors perform down-conversion, “that is
`proof” under the ’444 lead inventor’s own testimony that the
`capacitors store non-negligible energy. Reply, 16.
`
`Given that Lam’s capacitors perform down-conversion, then, as the
`Middle District of Florida found, and the Federal Circuit affirmed,
`based on the testimony of the lead inventor of the ’444 patent, “that is
`proof” that the capacitors store non-negligible energy. Reply, 19.
`
`III. The Board should strike Petitioners’ newly disclosed theory.
`At the heart of the dispute between the parties in this IPR is the term
`
`“storage element.” The term is found in all the challenged claims of U.S. Patent
`
`No. 7,110,444 (“’444 patent”).
`
`
`
`2
`
`
`
`The Petition merely identifies a capacitor as a “storage element.” See Pet.,
`
`58-59, 75-76. In its POR, ParkerVision argued that a storage element must “store
`
`non-negligible amounts of energy” (which comes from a district court construction
`
`set forth in Section III.A) and the prior art capacitors do not.
`
`Then, for the first time in its Reply, Petitioners address the concept of “non-
`
`negligible amounts of energy” arguing that “when a device employs a capacitor in
`
`order to ‘successfully down-convert’ a signal, then ‘that is proof’ that the capacitor
`
`stores non-negligible energy.” Reply, 7; see also 12-13, 16, 19. As discussed below
`
`in Section III.B, this is a new argument, not a response.
`
`A.
`
`Petitioners could have addressed whether prior art capacitors
`“store non-negligible amounts of energy” but chose not to do so.
`On January 26, 2021, the U.S. District Court for the Western District of
`
`Texas (“District Court”) construed claim terms in the ’444 patent (the patent at
`
`issue in this IPR) in ParkerVision’s litigation against Intel. Among these terms was
`
`“storage element,” which must “store[] non-negligible amounts of energy from an
`
`input electromagnetic signal” (Ex. 1013 at 5) – language Petitioners later argued
`
`was lexicography and ultimately adopted in their own construction in litigation.1
`
`
`1 In IPR2020-01265, the Board construed “storage element” to include this
`
`language.
`
`
`
`3
`
`
`
`On May 11, 2021, ParkerVision filed its Patent Owner’s Response (“POR”)
`
`in IPR2020-01265, which also relates to the ’444 patent. In the POR, the Patent
`
`Owner provided its position regarding the term “storage element” and “stores non-
`
`negligible amounts of energy from an input electromagnetic signal.” Intel Corp. v.
`
`ParkerVision, Inc, Case IPR2020-01265, Paper 18 (Patent Owner’s Response) at
`
`2-4, 33-36, 46-47, 49 (P.T.A.B. May 11, 2021).
`
`Four months after the District Court’s claim construction order and nine
`
`days after having Patent Owner’s position regarding “storage element,” on May
`
`20, 2021, the Petitioners filed the Petition.
`
`Notably, Petitioners included the District Court’s claim construction order as
`
`Ex. 1013 to the Petition. Yet, as shown below, though Petitioners expressly
`
`adopted and addressed the District Court’s constructions of other terms and
`
`analyzed the claims in view of those constructions, Petitioners purposefully
`
`ignored the District Court’s construction of “storage element:”
`
`
`
`Pet., 18
`
`
`
`4
`
`
`
`Id., 54.
`
`Id., 15.
`
`Id., 63.
`
`
`
`
`
`
`
`Thus, when filing the Petition, just as they did with other claim terms, the
`
`Petitioners could have (and should have) addressed the language requiring that the
`
`“storage element” “stores non-negligible amounts of energy.” Petitioners did not.
`
`
`
`5
`
`
`
`B.
`
`Petitioners’ argument in their Reply regarding “storage element”
`is not a “response” to the POR.
`There is a difference between a response to Patent Owner’s POR and raising
`
`new arguments. Petitioners responding to Patent Owner’s view as to what
`
`constitutes non-negligible amounts of energy is a response. But Petitioners arguing
`
`that a capacitor in the prior art references “stores non-negligible amounts of
`
`energy” is not a response. It is a new argument about alleged disclosures in the
`
`prior art.
`
`Here, the Petition merely identifies a capacitor as a “storage element.” See
`
`Pet., 58-59, 75-76. The Petition and supporting expert declaration make no
`
`mention (expressly or conceptually) of the term “non-negligible,” “negligible,” or
`
`“energy.” And the Petition and declaration make no mention (expressly or
`
`conceptually) (1) that any capacitor (in the prior art or otherwise) “stores non-
`
`negligible amounts of energy,” (2) what constitutes “non-negligible amounts of
`
`energy” or (3) how any capacitor (in the prior art or otherwise) “stores non-
`
`negligible amounts of energy.”
`
`For the first time in its Reply, Petitioners address the concept of “non-
`
`negligible amounts of energy” arguing that “when a device employs a capacitor in
`
`order to ‘successfully down-convert’ a signal, then ‘that is proof’ that the capacitor
`
`stores non-negligible energy.” Reply, 7; see also 12-13, 16, 19. In doing so,
`
`Petitioners cite the testimony of one of the inventors (Mr. Sorrells) quoted in a
`6
`
`
`
`
`
`2015 Federal Circuit case (evidence available to Petitioner for six years prior to
`
`filing the Reply). Id. (citing ParkerVision, Inc. v. Qualcomm Inc., 621 F. App’x
`
`1009, 1019 (Fed. Cir. 2015)).
`
`“A reply may only respond to arguments raised in the corresponding
`
`opposition, patent owner preliminary response, patent owner response, or decision
`
`on institution.” 37 C.F.R. § 42.23(b). “‘Respond,’ in the context of 37 C.F.R. §
`
`42.23(b), does not mean proceed in a new direction with a new approach as
`
`compared to the positions taken in a prior filing. While replies . . . can help
`
`crystalize issues for decision, a reply . . . that raises a new issue or belatedly
`
`presents evidence may not be considered.” Consolidated TPG at 74. See also
`
`Intelligent Bio-Systems v. Illumina Cambridge, 821 F.3d 1359, 1366, 69-70 (Fed.
`
`Cir. 2016) (affirming the Board’s finding that the petitioner “ran afoul of §
`
`42.23(b) by presenting a new argument for the first time in its reply brief”); SAS
`
`Institute Inc. v. Iancu, 138 S.Ct. 1348 (2018).
`
`By arguing (and presenting never before disclosed evidence) that capacitors
`
`in the prior art references “store non-negligible amounts of energy,” Petitioners’
`
`Reply proceeds in a new direction with a new approach compared to the positions
`
`taken in the Petition. Thus, Petitioners’ new theory is impermissible with regard to
`
`their Reply. See Intel Corp. v. ParkerVision, Inc., Case IPR2020-01265, Paper 44
`
`(Final Written Decision) at 67-68, 70-71 (P.T.A.B. Jan. 21, 2022) (striking
`
`
`
`7
`
`
`
`portions of Patent Owner’s sur-reply that “proceed in a new direction with a new
`
`approach as compared to the positions taken in Patent Owner’s Response”).
`
`Patent Owner is prejudiced by Petitioners’ new argument.
`C.
`By presenting its new theory—“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”—for the first time in the Reply, Petitioners have deprived
`
`Patent Owner of the right to have its expert address this argument. At this stage in
`
`the proceeding (sur-reply), Patent Owner is prohibited from filing an expert
`
`declaration and having its expert address Petitioners’ arguments. Thus, Patent
`
`Owner is prejudiced.
`
`That Petitioner raises its new theory through attorney argument instead of
`
`expert testimony is irrelevant. Patent Owner is entitled to have its expert address
`
`Petitioners’ theories regardless of the manner in which they make their arguments.
`
`Petitioners’ strategy to rely on attorney argument and not an expert declaration is
`
`not only telling but cannot strip Patent Owner of its rights to have its expert
`
`respond.
`
`IV. Conclusion.
`For the foregoing reasons, the Board should strike arguments improperly
`
`raised in Petitioners’ Reply.
`
`
`
`
`
`8
`
`
`
`Dated: June 22, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`By: /Jason S. Charkow/
`Jason S. Charkow (USPTO Reg. No. 46,418)*
`Chandran B. Iyer (USPTO Reg. No. 48,434)
`Stephanie R. Mandir (USPTO Reg. No. 72,930)
`jcharkow@daignaultiyer.com
`cbiyer@daignaultiyer.com
`smandir@daignaultiyer.com
`DAIGNAULT IYER LLP
`8618 Westwood Center Drive, Suite 150
`Vienna, VA 22182
`*Not admitted in Virginia
`Attorneys for ParkerVision, Inc.
`
`9
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`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`MOTION TO STRIKE ARGUMENTS IMPROPERLY RAISED IN
`
`PETITIONERS’ REPLY was served electronically via email on June 22, 2022, on
`
`the following counsel of record for Petitioner:
`
`Kristopher Reed (Lead Counsel)
`KILPATRICK TOWNSEND & STOCKTON LLP
`kreed@kipatricktownsend.com
`tmayle@kilpatricktownsend.com
`mferrario@kilpatricktownsend.com
`
`
`
`
`Dated: June 22, 2022
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Jason S. Charkow/
` Jason S. Charkow
` USPTO Reg. No. 46,418
`
`
`
`
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`10
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