`Paper No. 24
`Filed: June 30, 2022
`
`
`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’ OPPOSITION TO PATENT OWNER’S MOTION TO
`STRIKE PORTIONS OF PETITIONERS’ REPLY
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` 1
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` LG Electronics Inc., who filed a petition in IPR2022-00245, is joined as a
`petitioner in this proceeding.
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`FACTUAL BACKGROUND .......................................................................... 3
`
`A.
`
`B.
`
`C.
`
`ParkerVision’s Infringement Position Is That a Capacitor Used
`to Perform Down-Conversion Necessarily Contains “Non-
`Negligible” Energy and Is Thus a “Storage” Element .......................... 3
`
`The Petition Shows That Prior Art Systems Used Switched-
`Capacitors as “Storage” Elements ......................................................... 4
`
`ParkerVision Debuted Its Energy-Calculation Theory Months
`After the Petition Was Filed .................................................................. 5
`
`III. THE BOARD SHOULD DENY THE MOTION TO STRIKE ...................... 5
`
`A.
`
`The Reply Does Not Raise an Impermissible “New Theory” or
`“Present Never Before Disclosed Evidence” ........................................ 6
`
`1.
`
`2.
`
`The Reply Responds to the POR ................................................ 6
`
`The Legal Grounds for Unpatentability Are the Same in
`the Petition and the Reply and There Was No Waiver of
`the Word “Non-Negligible” ........................................................ 7
`
`3.
`
`The Reply Does Not Unfairly Prejudice ParkerVision ............... 9
`
`B.
`
`ParkerVision’s Cited Cases Are Inapplicable ..................................... 10
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`IV. CONCLUSION .............................................................................................. 10
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`Anacor Pharm., Inc. v. Iancu,
`889 F.3d 1372 (Fed. Cir. 2018) ............................................................................ 6
`Apple Inc. v. Andrea Elec. Corp.
`949 F.3d 697 (Fed. Cir. 2020) ...................................................................... 2, 6, 7
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................ 6
`Chamberlain Grp., Inc. v. One World Techs., Inc.,
`944 F.3d 919 (Fed. Cir. 2019) .............................................................................. 7
`Everstar Merch. Co. v. Willis Elec. Co.,
`No. 2021-1882, 2022 WL 1089909 (Fed. Cir. Apr. 12, 2022) ............................. 6
`Grunenthal Gmbh v. Antecip Bioventures II LLC,
`PGR2018-00092, 2020 WL 896727 (P.T.A.B. Feb. 24, 2020) ............................ 6
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 10
`ParkerVision, Inc. v. Qualcomm Inc.,
`621 F. App’x 1009 (Fed. Cir. 2015), reh’g denied, 627 F. App’x
`921 (Fed. Cir. 2015), cert. denied, 577 U.S. 1236 (2016) ................................ 3, 4
`ParkerVision, Inc. v. Qualcomm, Inc.,
`No. 3:11-cv-719-J-37TEM, 2013 WL 633077 (M.D. Fla. Feb. 20,
`2013) ..................................................................................................................... 3
`United States v. Burt,
`495 F.3d 733 (7th Cir. 2007) ................................................................................ 9
`Valve Corp. v. Ironburg Inventions Ltd.,
`8 F.4th 1364 (Fed. Cir. 2021) ............................................................................... 6
`
`ii
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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`Other Authorities
`37 C.F.R. § 42.23(b) .................................................................................................. 6
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`
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`iii
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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`I.
`
`INTRODUCTION
`
`
`
`
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`The “exceptional remedy” of striking portions of the Reply is not warranted.
`
`First, the Reply does not contain any “new theory.” Exactly like the
`
`Petition, it explains how certain prior art references disclose “storage” elements in
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`the form of switched-capacitors used to down-convert an RF signal. This showing
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`is consistent with, and more detailed than, ParkerVision’s own infringement
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`argument, i.e., that a “storage element” is simply “one or more capacitors.” Reply
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`at 3 (citing Complaints).
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`
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`ParkerVision attempted to narrow the claims to avoid prior art in the POR.
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`Specifically, the POR newly argues that a capacitor is not a “storage” element
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`unless its stored energy is more than some unspecified fraction of the “total
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`available energy.” As would be expected, Petitioners’ Reply highlights the
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`inconsistencies between ParkerVision’s positions (i.e., those adopted during
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`litigation versus its newfound position in the POR). Specifically, it shows that
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`ParkerVision previously argued that energy merely “distinguishable from noise” is
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`non-negligible. Reply at 5-9. And under that meaning, the lead inventor on the
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`’444 patent testified that when a circuit performs down-conversion that is “proof”
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`that its storage element had non-negligible energy. Id. The Federal Circuit
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`accepted ParkerVision’s position as to the meaning of “non-negligible.” See id.
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`1
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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`Further, Petitioners’ “reply arguments are responsive to” the POR’s
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`newfound energy-calculations theory. Apple Inc. v. Andrea Elec. Corp. 949 F.3d
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`697, 706-07 (Fed. Cir. 2020). Id. In particular, Petitioners’ reply arguments cite
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`the same specific combinations of prior art (and specific figures and language
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`therefrom) that are presented in the Petition. E.g., Reply at 12-21. And the Reply
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`does not present any new expert testimony. See id. Thus, there is no “new theory”
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`or “never before disclosed evidence” in the Reply as ParkerVision alleges (Mot. at
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`7), just routine argument illustrating how ParkerVision’s POR is flawed and the
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`Petition is correct. That is the very purpose of a Reply, and the inquiry should end
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`here. Apple Inc., 949 F.3d at 706-07.
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`
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`Second, and independently, ParkerVision did not (and cannot) show that the
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`Reply arguments are unfairly prejudicial, particularly when ParkerVision will have
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`the last word in its Sur-Reply. ParkerVision vaguely suggests that it would need
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`another expert declaration to respond to the Reply. But no amount of expert
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`testimony can change the fact that ParkerVision has taken a position in its POR
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`that is inconsistent with the position of its lead inventor in a prior litigation—a
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`position endorsed by the Federal Circuit. And the Board should not allow
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`ParkerVision to whitewash the record by striking portions of the Reply that both
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`call out such inconsistencies and show how ParkerVision’s litigation positions are
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`actually consistent with the Petition.
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`2
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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`
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`II.
`
`FACTUAL BACKGROUND
`A.
`
`ParkerVision’s Infringement Position Is That a Capacitor Used to
`Perform Down-Conversion Necessarily Contains “Non-
`Negligible” Energy and Is Thus a “Storage” Element
`
`
`
`In the underlying litigations, ParkerVision alleges repeatedly across multiple
`
`related patents that a “storage element” in the accused products is simply “one or
`
`more capacitors.” See Reply at 3 (citing Complaints). Moreover, ParkerVision has
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`a long history of asserting related patents in infringement litigation, and it had
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`never argued before the recent IPR proceedings that a capacitor is not a “storage”
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`element unless the capacitor’s energy is more than some unspecified fraction of the
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`“total available energy” from the input RF signal. To the contrary, with respect to
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`a claim where “non-negligible” is in the actual claim language, the Middle District
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`of Florida construed “non-negligible” to mean an amount of energy merely
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`“distinguishable from noise.” ParkerVision, Inc. v. Qualcomm, Inc., No. 3:11-cv-
`
`719-J-37TEM, 2013 WL 633077, at *5-*7 (M.D. Fla. Feb. 20, 2013). That
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`construction was “not disputed on appeal.” ParkerVision, Inc. v. Qualcomm Inc.,
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`621 F. App’x 1009, 1018 (Fed. Cir. 2015), reh’g denied, 627 F. App’x 921 (Fed.
`
`Cir. 2015), cert. denied, 577 U.S. 1236 (2016).
`
`
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`ParkerVision itself advocated for that construction, which sets a low bar for
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`what is “non-negligible.” In particular, the lead inventor, Mr. David Sorrells,
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`3
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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`“explained at trial that transferring a non-negligible amount of energy into the
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`storage capacitor means ‘that you have to transfer enough energy to overcome the
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`noise in the system to be able to meet your specifications.’” 621 F. App’x at 1019.
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`He thus concluded that when a product functions according to its specifications,
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`“this is proof that a ‘non-negligible’ amount of energy is transferred to the storage
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`element in those products.” Id. As viewed by the Federal Circuit, “Mr. Sorrells’
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`testimony thus establishes that to determine whether or not energy in amounts
`
`distinguishable from noise has been transferred from the carrier signal, one may
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`look to whether the down-converting circuit functions in practice.” Id. “If a
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`circuit successfully down-converts, that is proof that enough energy has been
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`transferred to overcome the noise in the system.” Id. (emphasis added).
`
`B.
`
`The Petition Shows That Prior Art Systems Used Switched-
`Capacitors as “Storage” Elements
`
`
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`The Petition did not “merely identify capacitors as ‘storage elements.’”
`
`Mot. at 1. Rather, Consistent with ParkerVision’s infringement position and the
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`Federal Circuit’s Qualcomm decision, the Petition shows that prior art capacitors
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`used to successfully perform down-conversion are “storage” elements. As to
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`Ground 1, the Petition shows that Tayloe’s capacitors are “storage” elements. E.g.,
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`Pet. at 18-23, 39-45, 57-59. And as to Ground 2, the Petition shows that Lam’s
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`and Enz’s capacitors are “storage” elements. E.g., Pet. at 26-30, 61-75.
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`4
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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`C.
`
`ParkerVision Debuted Its Energy-Calculation Theory Months
`After the Petition Was Filed
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`
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`Four months after the Petition was filed, ParkerVision debuted its
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`calculations-based argument in another IPR proceeding involving Intel (IPR2020-
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`01265, Paper 26 at 18-25), and ParkerVision relies on this same new argument in
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`the POR (at 59-67, 74-75). The Petition therefore could not have addressed the
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`POR’s energy-calculations argument. As such, much of the Reply appropriately is
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`directed to showing how ParkerVision’s prior litigation positions are inconsistent
`
`with this newfound calculation theory. E.g., Reply at 1, 5-8, 15-17, 19. The Reply
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`further describes how, in contrast, the Petition applies the term “storage module” in
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`a manner that is consistent with ParkerVision’s prior litigation position, namely,
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`that when a device employs a capacitor in order to “successfully down-convert” a
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`signal, then “that is proof” that the capacitor storage non-negligible energy. See
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`Reply at 5-8, 16-17, 19 (citing ParkerVision, 621 F. App’x at 1019).
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`III. THE BOARD SHOULD DENY THE MOTION TO STRIKE
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`
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`The motion should be denied for two independent reasons. First, the Reply
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`does not raise an improper “new theory.” Second, ParkerVision has not suffered
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`prejudice.
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`5
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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`A. The Reply Does Not Raise an Impermissible “New Theory” or
`“Present Never Before Disclosed Evidence”
`1. The Reply Responds to the POR
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`
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`The Reply simply and directly responds to the POR’s argument that the prior
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`art capacitors are not “storage” elements. See Sections II.C. That is the purpose of
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`a Reply, and the motion to strike should be denied for this reason alone. See Apple
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`Inc., 949 F.3d at 706-07 (“Apple’s reply squarely responds to Andrea’s Patent
`
`Owner Response.”). Tellingly, ParkerVision ignores Apple and the numerous
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`other decisions that reject its extreme position regarding proper Reply content. See
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`Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1370 n. 6 (Fed. Cir. 2021);
`
`Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380-81 (Fed. Cir. 2018); Belden
`
`Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077-78 (Fed. Cir. 2015); Everstar Merch.
`
`Co. v. Willis Elec. Co., No. 2021-1882, 2022 WL 1089909, at *4 (Fed. Cir. Apr.
`
`12, 2022); Grunenthal Gmbh v. Antecip Bioventures II LLC, PGR2018-00092,
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`2020 WL 896727, at *1 (P.T.A.B. Feb. 24, 2020) (“The standard is not whether
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`Petitioner could have raised the arguments or evidence in the Petition, but whether
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`they respond to arguments raised by Patent Owner.” ); also 37 C.F.R. § 42.23(b)
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`(Reply may “respond to arguments” in POR); Trial Practice Guide at 73 (“A party
`
`also may submit rebuttal evidence in support of its reply.”).
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`6
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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`2.
`
`The Legal Grounds for Unpatentability Are the Same in the
`Petition and the Reply and There Was No Waiver of the
`Word “Non-Negligible”
`
`
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`Further, the “reply does not cite any new evidence or ‘unidentified portions’
`
`of the” relied-upon references. Apple Inc., 949 F.3d at 706. The Petition identifies
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`“storage” elements as capacitors used to perform down-conversion. E.g., Pet. at
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`18-23, 26-30. Specifically, the Reply uses the exact same figures and citations as
`
`the Petition to show switched-capacitors for down conversion, i.e., “storage”
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`elements. Reply at 14-16 (Tayloe); 18 (Lam); 20-21 (Enz). Again, this is standard
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`Reply content.
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`
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`Nonetheless, ParkerVision fixates on the absence of the word “non-
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`negligible” in the Petition, assigning it overstated significance. Mot. at 5. Inter
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`partes review is not a semantics game; any failure “to disclose a claim limitation in
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`the same words used by the patentee is not fatal to a claim of invalidity.”
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`ParkerVision, 621 F. App’x at 1018-19. And parties “are not barred from
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`elaborating on their arguments on issues previously raised.” Chamberlain Grp.,
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`Inc. v. One World Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019).
`
`
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`ParkerVision also distorts the record in attempting to shore up its argument.
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`Central to ParkerVision’s argument is the allegation that, with respect to the claim
`
`construction order in the earlier Intel litigation, “though Petitioners expressly
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`adopted and addressed the District Court’s constructions of other terms and
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`7
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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`analyzed the claims in view of those constructions, Petitioners purposefully
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`ignored the District Court’s construction of ‘storage element.’” Mot. at 4-5
`
`(emphasis in original). But unlike the “expressly adopted” constructions,
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`ParkerVision carefully avoids quoting the full and complete construction of
`
`“storage element” that Petitioners supposedly “ignored.” See id. Instead,
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`ParkerVision selectively quotes a fraction of the district court’s construction to
`
`argue that “Petitioners could have (and should have) addressed the language
`
`requiring that the ‘storage element’ ‘stores non-negligible amounts of energy.’” Id.
`
`at 5. The Board should reject such contextomy.
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`The full construction of “storage element” by the Intel district court reads:
`
`“an element of an energy transfer system that stores non-negligible amounts of
`
`energy from an input electromagnetic signal.” Ex. 1013 at 5 (emphasis added).
`
`Petitioners did not “adopt and address” this specific construction in the Petition for
`
`the simple reason that it is wrong. The Board expressly held this construction was
`
`wrong in the Intel IPR FWD. See IPR2020-01265, Paper 44 at 41.
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`As highlighted in the Reply, the Petition describes in detail how the prior-art
`
`“storage elements” store energy from an input EM signal to successfully down-
`
`convert a signal. Reply at 2-44 (citing Pet. at 18-20, 26-31, 38-44, 61-62, 67-68).
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`Such successfully stored down-conversion energy is “non-negligible” —whether
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`8
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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`or not it is labeled with that specific word—as ParkerVision’s own lead inventor
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`confirmed in a prior litigation. Reply at 6-7 (citing 621 F. App’x at 1019).
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`3.
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`The Reply Does Not Unfairly Prejudice ParkerVision
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`
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`First, there is no prejudice because ParkerVision will not have to address
`
`anything in the Reply for the first time at the oral hearing. See Trial Practice Guide
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`at 81. Before Patent Owners were given the right to file a sur-reply in every case,
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`the Board would sometimes allow a sur-reply as “alternative” relief when a party
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`moved to strike. See id. at 80. Here, such relief is available to ParkerVision as a
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`matter of right, effectively mooting any supposed prejudice ParkerVision seeks to
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`address in its motion to strike.
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`
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`Second, there “is a difference between evidence that brings unfair prejudice
`
`and evidence that is damning.” United States v. Burt, 495 F.3d 733, 740 (7th Cir.
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`2007). ParkerVision complains that it is unable to file a new expert declaration
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`(Mot. at 8); however, ParkerVision ignores the fact that the Reply does not rely on
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`any new expert testimony or technical evidence, so there is nothing an expert
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`would need to address. The Reply does highlight ParkerVision’s prior position (as
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`memorialized by the Federal Circuit), but no amount of expert testimony can
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`change the reality of ParkerVision’s previous position, affirmed on appeal, as to
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`what is “non-negligible.” Such prior position may be “damning,” but highlighting
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`it in a Reply is not unfairly prejudicial.
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`9
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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`B.
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`ParkerVision’s Cited Cases Are Inapplicable
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`
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`The limited caselaw on which ParkerVision relies is inapt. Mot. at 7-8. In
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`Intelligent Bio-Sys., the Reply changed the legal grounds for unpatentability by
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`relying on prior art not cited in the Petition. “IBS supported its new theory of
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`invalidity by reference to new evidence, citing a number of non-patent literature
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`references which were not relied upon to support unpatentability in the Petition.”
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`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed.
`
`Cir. 2016) (cleaned up). Nothing of the sort happened here.
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`
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`The Board’s order in IPR2020-01265 also has no bearing. There,
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`ParkerVision first raised its energy-calculations theory in a Sur-Reply, even though
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`Intel had not raised the issue in its Reply. IPR2020-01265, Paper 44 at 67-68.
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`Here, all arguments in the Reply are responsive to arguments raised in the POR.
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`Further, Intel did “not have an opportunity to respond” to the Sur-Reply (id. at 69);
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`here, ParkerVision gets the last word.
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`IV. CONCLUSION
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`Petitioners respectfully request that the Board deny the motion in its entirety.
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`10
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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`Dated: June 30, 2022
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`
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`Respectfully submitted,
`
`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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`11
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`IPR2021-00990
`Petitioners’ Opposition to Patent Owner’s Motion to Strike
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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 June
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`30, 2022, via electronic mail to counsel for Patent Owner:
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`Dated: June 30, 2022
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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
`
`Counsel for Petitioners
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`
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`12
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