From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Jason Charkow
`Trials
`Stephanie Mandir; raymort@autinlaw.com; LG-ParkerVision-PTABService; McKeown, Scott; Pepe, Steven; Chun,
`David S.; Taylor, Scott; Shapiro, Matthew; Ferrario, Matias; Reed, Kristopher; Ron Daignault; Chandran Iyer;
`TCL_Hisense_ZyXel835IPR; TCL_Hisense444IPR; Mayle, Ted
`IPR2021-00990: Leave to file motion to strike new arguments
`Wednesday, June 1, 2022 2:59:11 PM
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`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
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`
`Dear Honorable Board:
`
`Patent Owner respectfully seeks leave to file a Motion to Strike new arguments set
`forth in Petitioners’ Reply filed in IPR2021-00990 (U.S. Patent No. 7,110,444). If
`leave is granted, Patent Owner respectfully proposes filing the motion within ten (10)
`business days of the Board’s authorization.
`
`Patent Owner submits that there is good cause to file the Motion to Strike, because
`Petitioners' Reply raises a new theory regarding the claimed “storage element”
`limitation and, in particular, how "stor[ing] non-negligible amounts of energy from an
`input electromagnetic signal" is supposedly met.
`
`In their Petition, Petitioners did not provide any argument/theory that a capacitor in
`the cited prior art “stores non-negligible amounts of energy from an input
`electromagnetic signal." In their Reply, however, Petitioners for the first time raise
`a new theory - asserting 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 id. at 16, 19.
`
`The Petition was filed in May 2021 – four months after the District Court construed
`“storage element” to require "stor[ing] non-negligible amounts of energy from an input
`electromagnetic signal" and nine days after ParkerVision filed its POR in IPR2020-
`01265, which pertains to the '444 patent and addresses "storage element" and the
`District Court's construction. Thus, when filing the Petition, Petitioners were well
`aware of the District Court’s claim construction (and ParkerVision’s position)
`regarding “storage element." Indeed, the Petition repeatedly cites to the District
`Court’s claim construction Order and even relies on the District Court’s claim
`constructions for certain claim terms and arguments. See Pet. at 15, 18, 39, 63. As
`such, the Petition could have addressed the District Court’s construction of “storage
`element” (as was done with other terms), but Petitioners chose not to do so.
`Addressing this new theory in a Sur-Reply and during an oral hearing without the
`benefit of Patent Owner’s expert testimony will prejudice Patent Owner. Accordingly,
`a Motion to Strike is proper.
`
`Patent Owner contacted Petitioners via email last Friday to determine whether they
`object to Patent Owner’s request for leave to file the motion. Petitioners’ responded
`that they oppose Patent Owner’s request.
`
`

`

`
`If it would be helpful to the Board, Petitioners and Patent Owner are generally
`available for a conference call after 4:30 pm EST on Thursday, June 2, 2022.
`
`Very truly yours,
`Jason
`
`
`Jason S. Charkow
`Partner
`Daignault Iyer LLP
`914.843.8138
`jcharkow@daignaultiyer.com
`daignaultiyer.com
`
`
`From: Mayle, Ted <TMayle@kilpatricktownsend.com>
`Sent: Wednesday, March 9, 2022 3:32 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Stephanie Mandir <smandir@daignaultiyer.com>; raymort@autinlaw.com
`<raymort@autinlaw.com>; LG-ParkerVision-PTABService <LG-ParkerVision-
`PTABService@ropesgray.com>; McKeown, Scott <Scott.McKeown@ropesgray.com>; Pepe, Steven
`<Steven.Pepe@ropesgray.com>; Chun, David S. <David.Chun@ropesgray.com>; Taylor, Scott
`<Scott.Taylor@ropesgray.com>; Shapiro, Matthew <Matthew.Shapiro@ropesgray.com>; Ferrario,
`Matias <MFerrario@kilpatricktownsend.com>; Reed, Kristopher <kreed@kilpatricktownsend.com>;
`Jason Charkow <jcharkow@daignaultiyer.com>; Ron Daignault <rdaignault@daignaultiyer.com>;
`Chandran Iyer <cbiyer@daignaultiyer.com>; TCL_Hisense_ZyXel835IPR
`<TCL_Hisense_ZyXel835IPR@kilpatricktownsend.com>; TCL_Hisense444IPR
`<TCL_Hisense444IPR@kilpatricktownsend.com>
`Subject: IPR2021-00990 and IPR2021-00985: Motion for Routine and Additional Discovery
`
`Trials,
`
`Pursuant to 37 C.F.R. § 42.51(b)(1)(iii) and 37 C.F.R. § 42.51 (b)(2)(i), Petitioners TCL Industries
`Holdings Co., Ltd. (“TCL”) and Hisense Co., Ltd. (“Hisense”) request leave to file a Motion for Routine
`and Additional Discovery in IPR2021-00990 and IPR2021-00985.
`
`The requested discovery comprises Patent Owner’s Final Infringement Contentions (i.e., claim
`charts) for the respective challenged patent in the co-pending district court litigation. Patent Owner
`
`