IPR2021-00990
`U.S. Patent No. 7,110,444
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`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
`
`
`__________________________________________________________________
` Case No. IPR2021-00990
`U.S. Patent No. 7,110,444
`__________________________________________________________________
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`U.S. Patent No. 7,110,444
`
`
`
`
`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
`
`
`__________________________________________________________________
` Case No. IPR2021-00990
`U.S. Patent No. 7,110,444
`__________________________________________________________________
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`Table of Contents
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`Page
`INTRODUCTION ........................................................................................ 1
`I.
`“STORAGE ELEMENT.” ............................................................................ 3
`II.
`“NON-NEGLIGIBLE” AMOUNTS OF ENERGY. ..................................... 8
`III.
`IV. WHAT MR. SORRELLS ACTUALLY SAID. .......................................... 10
`V.
`PETITIONERS FAIL TO MEET THEIR BURDEN OF PROOF. .............. 12
`VI. THE PRIOR ART DOES NOT DISCLOSE STORING “NON-
`NEGLIGIBLE” AMOUNTS OF ENERGY. ............................................... 15
`A. Dr. Steer demonstrates that Tayloe capacitors store
`negligible energy. ............................................................................. 15
`Intel’s analysis in IPR2020-01265 was flawed. ................................. 16
`B.
`C. Dr. Steer’s testimony remains unrebutted.......................................... 19
`D.
`There is no estoppel. ......................................................................... 20
`VII. PETITIONERS’ ARGUMENT REGARDING LAM AND ENZ ............... 23
`A. A POSITA would not look to Enz to fill the gaps in Lam. ................ 23
`B.
`The voltage of Enz’s input is relevant. .............................................. 24
`C.
`Petitioners miss the point regard with to signal frequency................. 25
`D.
`ParkerVision does not misconstrue claim 4. ...................................... 26
`E.
`The operation of Enz’s op-amp is relevant. ....................................... 27
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`i
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`
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`Table of Authorities
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` Page(s)
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`Cases
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 2
`ParkerVision, Inc. v. Qualcomm Inc.,
`621 F. App’x 1009 (Fed. Cir. 2015) ..................................................... 10, 11, 12
`Parklane Hosiery Co. v. Shore,
`439 U.S. 322 (1979) ......................................................................................... 22
`SynQor, Inc. v. Vicor Corp.,
`988 F.3d 1341 (Fed. Cir. 2021) ........................................................................ 21
`TRUSTID, Inc. v. Next Caller Inc.,
`2021 U.S. Dist. LEXIS 134010 (D. Del. July 6, 2021) ..................................... 21
`XY, LLC v. Trans Ova Genetics,
`890 F.3d 1282 (Fed. Cir. 2018) ........................................................................ 21
`Statutes
`35 U.S.C. § 318 .................................................................................................... 21
`
`
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`
`ii
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`I.
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`INTRODUCTION
`Petitioners have no evidence demonstrating that the cited references actually
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`include capacitors that store “non-negligible” amounts of energy.1 Instead,
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`Petitioners engage in a handwaving exercise to distract from their fatal lack of
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`evidence. Simply put, Petitioners do not meet their burden of proof.
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`The Petition has no discussion (implied or otherwise) as to whether
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`capacitors in the cited references store “non-negligible” amounts of energy. On the
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`other hand, ParkerVision’s Response provides an expert declaration explaining
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`why the capacitors in the cited references hold only negligible amounts of energy.
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`Tellingly, in their Reply, instead of providing expert rebuttal, Petitioners chose to
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`rely on out-of-context testimony by one inventor of the ’444 patent and attorney
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`interpretation of the cited references in view of that testimony. This is not evidence.
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`Effectively, Petitioners are attempting to shift the burden to ParkerVision to prove
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`that capacitors in the cited prior art do not store non-negligible amounts of energy.
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`1 For Tayloe, Petitioners rely on the Board’s decision in IPR2020-01265, which
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`only considered Intel’s conclusory and flawed position regarding “non-negligible”
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`amounts of energy. But Petitioners have a burden on the record here in this
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`proceeding and they cannot meet it by looking elsewhere to fill their evidentiary
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`lapses.
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`1
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`
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`This is improper. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
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`1375, 1378 (Fed. Cir. 2015) (holding that the burden of proof never shifts to the
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`patent owner.).
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`In particular, without any actual evidence to rely upon, Petitioners focus on
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`an inventor’s prior statements, take these statements out-of-context, and try to
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`apply them to the cited references.
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`At bottom, Petitioners seek a results-oriented approach – for the Board to
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`simply adopt its prior decision regarding the ’444 patent from IPR2020-01265. But
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`there is a different record before the Board here – issues that the Board did not
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`consider or resolve in IPR2020-01265.
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`First, on June 21, 2022, the U.S. District Court for Western District of Texas
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`(“Texas Court”) issued its Claim Construction Order in ParkerVision Inc. v., LG
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`Electronics, Inc. See Ex.-2040.2 Unlike the record before the Board in IPR2020-
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`01265, the Texas Court has now provided a detailed analysis/explanation for its
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`construction of “storage element.” See id. In doing so, the Texas Court specifically
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`addresses the Board’s construction of “storage element” and explains why the
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`language “energy transfer system” should be included in the construction.
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`2 On June 27, 2022, the Board authorized the filing of Exhibit 2040.
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`2
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`Second, in this IPR, ParkerVision presents arguments regarding why
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`capacitors in the cited references do not store “non-negligible” amounts of energy.
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`In IPR2020-01265, however, the Board did not consider any of ParkerVision’s
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`arguments on this issue.3
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`The Texas Court’s Order and ParkerVision’s analysis regarding capacitors in
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`the cited references demonstrate that these references fail to disclose the claimed
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`“storage element.” Accordingly, claim 3 should be found patentable.
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`II.
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`“STORAGE ELEMENT.”
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`A “storage element” is an element of an “energy transfer system.”4 This fact
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`itself does not appear disputed. The dispute appears to be whether this language
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`should be incorporated into the construction of “storage element.” It should.
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`3 ParkerVision is appealing the Board striking portions of ParkerVision’s Sur-
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`Reply related to “non-negligible” amounts of energy.
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`4 Petitioners point to the complaints ParkerVision filed against Petitioners in Texas
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`as evidence that a “storage element” is merely a capacitor. See Paper No. 20
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`(“Reply”), 3. ParkerVision, however, did not simply state that a capacitor, in
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`general, is a storage element. Instead, ParkerVision pointed to the specific
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`capacitors, which are part of energy transfer systems in Petitioners’ WiFi chips.
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`3
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`In its Final Written Decision (“FWD”) in IPR2020-01265, the Board
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`acknowledged that the ’444 patent (through its incorporation of U.S. Patent No.
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`6,061,551 (“the ’551 patent”)) discloses only two methods/systems for down-
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`converting a signal—(1) under-sampling (voltage sampling) and (2) energy
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`transfer (energy sampling). Ex.-2016, 33.
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`The Board also acknowledged that “the ’551 patent expressly links ‘holding
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`module’ to an under-sampling method, by expressly including the phrase ‘from an
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`under-sampled input EM signal.” Id., 37. Logically, if there are only two systems
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`and a “holding” element is only used in an “under-sampling” system, then
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`consistent with ParkerVision’s (and the Texas Court’s) construction, a “storage”
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`element must necessarily be an element of an energy transfer system.
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`But the Board excluded “energy transfer system” from its construction of
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`“storage element” based solely on purported lexicography in a single sentence in
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`the ’551 patent. That single sentence, however, is not lexicography. The sentence
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`is comparative, not definitional. The Texas Court agrees.5 Indeed, the Texas Court
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`found that “the PTAB incorrectly put too much weight and focus on the alleged
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`5 This is the fourth time the Texas Court construed “storage element” to include the
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`language “energy transfer system.” See Ex.-2017, 5; Ex.-2019, 2; Ex.-2020, 5; Ex.-
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`2021, 5.
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`4
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`
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`definitional sentence while also incorrectly ignoring teachings found throughout
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`the specification.”6 Ex.-2040, 19.
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`As the Texas Court explained, “[t]o act as their own lexicographer, the
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`patentees must ‘clearly set forth a definition of the disputed claim term,’ and
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`6 Petitioners argue that in IPR2014-00948, ParkerVision previously proposed the
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`same construction of “storage element” as the Board in IPR2020-01265. Reply, 5.
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`But the Texas Court has repeatedly considered and rejected this argument. Not
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`only is this extrinsic evidence but, given the facts, ParkerVision’s statement does
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`not show that the patentees clearly set forth a definition and clearly meant to
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`define the term. In IPR2014-00948, ParkerVision stated “[t]he incorporated ’551
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`Specification explicitly defines a storage module and draws the distinction
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`between storage modules and holding modules” (two separate and distinct
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`thoughts). Ex.-2016, 39. ParkerVision cited an entire passage (’551 patent, 66:55-
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`67), not just the single sentence that the Board relies upon for lexicography. And,
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`at no point did ParkerVision conflate the specification defining a storage module
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`and the specification drawing a distinction between modules or state that the last
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`sentence was definitional. ParkerVision was simply proposing a construction under
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`the broadest reasonable interpretation standard in effect at the time.
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`
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`5
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`
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`‘‘clearly express an intent’ to [define] the term.’”7 Id., 16 (quoting Thorner v. Sony
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`Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). The Texas Court
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`found these requirements are not met here.
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`Specifically, the Texas Court held that the single sentence that the Board
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`relied upon did not “rise[] to the ‘exacting standards’ necessary for lexicography.”
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`Id. (quoting Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir.
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`2014)). The Texas Court found that “the last sentence’s use of the phrase ‘on the
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`other hand’ indicates that it is making a comparison and, as such, a POSITA would
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`not look to this sentence in isolation—or even this passage alone—to understand
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`the meaning the of ‘storage module’ or ‘storage capacitance.’” Id.
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`Moreover, the Texas Court found that, given the technical context, a
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`POSITA “would likely understand that the storage capacitance’s place and role in
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`an electrical system—and not any inherent property of the storage capacitance
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`itself—is why the storage capacitance only stores a non-negligible amount of
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`energy from an input EM signal.” Id., 16-17.
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`Notably, the Texas Court went on to say that “the specification as a whole
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`provides definitive confirmation that the patentees did not intend for the last
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`sentence to be a lexicographical statement.” Id., 18. According to the Texas Court,
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`7 Unless otherwise noted, all emphasis has been added herein.
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`6
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`
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`when read in context, the full passage (’551 patent, 66:55-67) “describes the
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`operation of a capacitor in an energy transfer system (i.e., the ‘storage capacitance’
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`and ‘storage module’) as compared to the operation of the corresponding capacitor
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`in a sample-and-hold system (i.e., the ‘holding capacitance’ and ‘holding
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`module’).” Id., 17. The Texas Court also found that (1) based on the organization
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`of sections in the ’551 patent, the passage was comparative, not definitional and (2)
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`“the specification and figures repeatedly compare and contrast energy transfer
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`systems with sample-and-hold systems;” this further demonstrates that the passage
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`is making a comparison between energy transfer and sample-and-hold systems. Id.,
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`18-19.
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`The Texas Court held that these comparisons “casts serious doubt” as to
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`whether the patentees clearly expressed an intent to define the term. Id., 18.
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`Accordingly, the Texas Court held that “the patentees did not ‘clearly express an
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`intent’ to [define] the term’ in the last sentence of the passage [of the ’551 patent at
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`66:55-67]” and, thus, the patentees did not act as their own lexicographer. Id., 19.
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`Accordingly, “storage element” should be limited to an element of a “energy
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`transfer system.” Because all cited references are voltage sampling systems (not
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`energy sampling) (which Petitioners do not dispute), these references fail to
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`disclose “storage elements” and, thus, claim 3 is patentable.
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`7
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`III. “NON-NEGLIGIBLE” AMOUNTS OF ENERGY.
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`Petitioners assert that ParkerVision is attempting to define the term “non-
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`negligible” to require a “complex, three-step [mathematical] calculation.” Reply, 5.
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`Not so.8 “Non-negligible” is a relative term and must be demonstrated in some
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`manner. Unlike Petitioners, ParkerVision actually demonstrates how a POSITA
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`may determine whether energy stored in a capacitor is “non-negligible.” See POR,
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`59-67, 74-75.
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`In reality, it is Petitioners who seek a construction in the hope of lowering
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`the bar for proving that a capacitor stores “non-negligible” amounts of energy.
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`Nevertheless, Petitioners’ proposal —“when a device employs a capacitor in order
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`to ‘successfully down-convert’ a signal, then ‘that is proof’ that the capacitor stores
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`non-negligible energy” —is flawed. See Reply, 7. First, this is a concept and just
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`attorney argument. Second, this concept is solely based on extrinsic evidence—
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`8 As the POR makes clear, whether mathematical calculations are used depends on
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`the prior art’s disclosure and, even then, does not require a specific calculation.
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`Indeed, with regard to Tayloe, ParkerVision states “one way to determine energy
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`storage is to perform calculations based on a time constant.” Paper No. 12
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`(“POR”), 60. And ParkerVision’s energy storage analysis of the Lam/Enz
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`capacitors does not include mathematical calculations. See id., 74-75.
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`
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`8
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`
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`testimony by one inventor (Mr. Sorrells) years after the patent issued —and, even
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`then, ignores key portions of his testimony. Finally, because Petitioners’ position
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`ignores key portions of the inventor’s testimony, Petitioner’s position is
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`nonsensical and quickly falls apart. As explained in ParkerVision’s POR, for
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`example, a sample-and-hold/voltage sampling system can down-convert a signal.
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`See POR, 15-16, 31-35. But it is undisputed that capacitors in those systems hold
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`only negligible amounts of energy.9 Thus, contrary to Petitioners’ position, just
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`because a device employs a capacitor to down-convert a signal does not mean that
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`the capacitor stores “non-negligible” amounts of energy. This is false truism for
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`which Petitioners have no evidentiary basis to support.
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`Petitioners are trying to limit this Board’s and ParkerVision’s analysis to
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`Petitioners’ view of the world. Specifically, Petitioners represent their position as
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`accurately reflecting Mr. Sorrells’s testimony. It does not. Petitioners then assert
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`that ParkerVision should be collaterally estopped from arguing anything other this
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`position. Reply, 7-8. So, in actuality, what Petitioner is seeking is that
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`9 This Board recognized that “the ’551 patent expressly links ‘holding module’ to
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`an under-sampling method” for down-converting a signal, and “‘holding modules’
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`… store negligible amounts of energy from an under-sampled input EM signal.’”
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`See Ex.-2040, 36-37.
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`9
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`ParkerVision be estopped from arguing anything other than Petitioners’
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`contorted/flawed interpretation of Mr. Sorrells’s testimony. This is not how
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`estoppel works.
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`IV. WHAT MR. SORRELLS ACTUALLY SAID.
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`To support their proposed construction of “non-negligible,” Petitioners rely
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`on Mr. Sorrell’s testimony (one of seven ’444 patent inventors) from a 2013
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`ParkerVision/Qualcomm trial. See Reply, 6-7 (citing ParkerVision, Inc. v.
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`Qualcomm Inc., 621 F. App’x 1009, 1018 (Fed. Cir. 2015)).10
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`In particular, Petitioners point to the Federal Circuit discussion of Mr.
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`Sorrell’s trial testimony related to invalidity.11 The Federal Circuit noted that “[t]he
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`10 Petitioners also rely on a Middle District of Florida opinion. Reply, 7. This
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`opinion is irrelevant to any issue here. The opinion simply mentions that, based on
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`Mr. Sorrells’s theory of non-negligible, the Federal Circuit found that certain prior
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`art teaches a “storage module [that] receives non-negligible amounts of energy
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`transferred from a carrier signal at an aliasing rate.” Ex.-1017, 20. The court found
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`the Federal Circuit’s factual finding had preclusive effect as to those pieces of
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`prior art, nothing more. Id.
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`11 It should be noted that ParkerVision called Mr. Sorrells to prove infringement at
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`trial, and Mr. Sorrells testified with regard to “one of the 19 accused products.”
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`10
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`asserted claims all require transferring ‘non-negligible amounts of energy’ from
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`the carrier signal to a storage device.” ParkerVision, 621 F. App’x 1009 at 1018.
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`In that context, “the district court construed ‘non-negligible amounts of energy’ to
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`mean ‘energy in amounts that are distinguishable from noise.’” Id.
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`The Federal Circuit noted that “Mr. Sorrells explained at trial that
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`transferring a non-negligible amount of energy into the storage capacitor means
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`‘that you have to transfer enough energy to overcome the noise in the system to be
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`able to meet your specifications.’” Id., 1019. With regard to meeting the
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`specifications, Mr. Sorrells “further testified that the fact that the accused []
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`products meet ‘all of the cellular/cellphone specifications’ is proof that a ‘non-
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`negligible’ amount of energy is transferred to the storage element in those
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`products.” Id. In other words, according to Mr. Sorrells, energy is “distinguishable
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`from noise” if a product meets cellular/wireless specifications.12 Petitioners’
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`12 Mr. Sorrells is specifically discussing energy transfer systems because: (1) he
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`uses the term “storage capacitor,” not “holding capacitor”; and (2) Mr. Sorrells
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`references the accused products (energy transfer systems).
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`11
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`position ignores this testimony because it makes it impossible for Petitioners to
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`prove its case.
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`Within this context, the Federal Circuit stated that according to Mr. Sorrells,
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`“one may look to whether the down-converting circuit functions in practice. 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.
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`The Federal Circuit used Mr. Sorrells’s theory as a basis for analyzing claim
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`elements in prior art references.
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`There are two key take-aways here: (1) Mr. Sorrells’ position is one way
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`(not the only way) of determining non-negligible amounts of energy, and (2)
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`whether a circuit “successfully” down-converts depends on whether it meets
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`cellular/wireless specifications.
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`Petitioners’ arguments ignore these take-aways.
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`V.
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`PETITIONERS FAIL TO MEET THEIR BURDEN OF PROOF.
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`Petitioners have attempted to set their own bar for what constitutes storing
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`“non-negligible” amounts of energy.13 Even under this standard, Petitioners fail.
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`13 Notably, Petitioners do not adopt the district court’s construction of “non-
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`negligible” as its proposed construction.
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`12
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`In particular, Petitioners’ position regarding how to prove “non-negligible”
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`is a contorted/flawed paraphrasing of the Federal Circuits actual discussion.
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`Federal Circuit’s finding
`“If a circuit successfully down-
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`Petitioners’ position
`When a device employs a capacitor in
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`converts, that is proof that enough
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`order to ‘successfully down-convert’ a
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`energy has been transferred to
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`signal, then ‘that is proof’ that the
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`overcome the noise in the system”
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`capacitor stores non-negligible energy
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`“transferring a non-negligible amount
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`of energy into the storage capacitor
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`means ‘that you have to transfer
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`enough energy to overcome the noise
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`in the system to be able to meet your
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`specifications’” – “cellular/cellphone
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`specifications”
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`Specifically, the Federal Circuit refers to transferring energy to a capacitor
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`to overcome noise whereas Petitioners refer to storing energy in a capacitor.
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`Further, the Federal Circuit discusses meeting cellular/wireless specifications in
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`order to “successfully” down-convert. Petitioners noticeably omit this requirement.
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`Putting aside that Mr. Sorrells referred to transferring energy and the claims
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`here pertain to storing energy, if Petitioners are going to follow the Federal
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`13
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`Circuit’s decision, simply showing the prior art down-converts a signal is not
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`enough. Petitioners must show that the prior art “successfully” down-converts a
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`signal. To do so, Petitioners must identify cellular/wireless specifications and
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`demonstrate that the prior art meet those specifications.
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`Tellingly, Petitioners ignore the requirement of “successfully” down-
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`converting because they cannot prove it. Indeed, there is no concept of
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`cellular/wireless specifications to be met in those references, there is no evidence
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`that such specifications were met, and there is no expert testimony otherwise.
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`There is simply no evidence for Petitioners to meet their burden. That Petitioners
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`provided an opening expert declaration but no rebuttal speaks volumes.
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`Relying solely on attorney argument, all Petitioners point to is that Tayloe,
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`Lam and Enz capacitors perform down-conversion. Reply, 16, 19. But this says
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`nothing about how the systems work and does not meet Mr. Sorrells’s standard.
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`Indeed, Petitioners’ position is illogical. Tayloe is a voltage sampling
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`system. See, e.g., Ex.-2038, ¶¶247, 263, 272, 277. Petitioners do not dispute this.
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`Petitioners also admit that Lam and Enz are voltage sampling (sample-and-hold)
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`systems. See Reply, 19-20. Voltage sampling systems down-convert signals. See
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`POR, 15-16, 31-35. But it is undisputed (and this Board has acknowledged) that
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`voltage sampling systems have capacitors that hold only negligible amounts of
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`energy. See Ex.-2040, 36-37. Thus, it does not follow (as Petitioner’s argue) that
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`14
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`merely because down-conversion occurs, Tayloe, Lam and Enz capacitors store
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`“non-negligible” amount of energy.
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`VI. THE PRIOR ART DOES NOT DISCLOSE STORING “NON-
`NEGLIGIBLE” AMOUNTS OF ENERGY.
`A. Dr. Steer demonstrates that Tayloe capacitors store negligible
`energy.
`Given the information provided in Tayloe, Dr. Steer determined that a time-
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`constant analysis was appropriate for determining energy stored in a capacitor. Ex.-
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`2038, ¶307.14 Using this analysis, Dr. Steer shows that capacitors in Tayloe (a
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`voltage sampling system) hold only 0.193% (0.00193) of available energy—a
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`negligible amount energy. Id., ¶¶315-335. That Tayloe holds only negligible
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`energy is consistent with Tayloe being a voltage sampling system. Using the same
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`analysis, Dr. Steer then calculated the energy stored in a capacitor in an
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`embodiment of ParkerVision’s energy transfer system—58.7% of available energy.
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`Id., ¶¶336-342. Dr. Steer also explained that unlike the energy in Tayloe
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`capacitors, the energy in ParkerVision’s system is discharged (transferred) to a
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`load to form the down-converted signal. Id., ¶¶163, 342.
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`14 Petitioners fault Dr. Steer for not doing a similar analysis for Lam/Enz. But those
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`references do not have the information necessary to perform that analysis.
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`15
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`
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`Petitioners assert that Dr. Steer’s analysis contradicts Mr. Sorrell’s
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`testimony, faulting Dr. Steer for not discussing whether energy is distinguishable
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`from noise. Petitioners are wrong. Notably, Petitioners are the ones who bear the
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`burden here, yet make no such analysis themselves. And Petitioners ignore the
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`Federal Circuit statement that, according to Mr. Sorrells, one “may” look to noise
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`to determine whether non-negligible energy is being transferred. See Section IV
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`above. Thus, it is clear that Mr. Sorrells stated that analyzing noise is not the only
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`way to determine if there is a non-negligible amount of energy.
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`Moreover, Dr. Steer’s analysis that Tayloe capacitors store 0.193% of
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`available energy relates to being distinguishable from noise. Dr. Steer states that
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`0.193% (0.00193) is negligible and ties “negligible” amounts of energy to an
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`amount that is near zero. Ex.-2038, ¶¶151, 214-215. An amount of energy near
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`zero is not distinguishable from noise.
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`Intel’s analysis in IPR2020-01265 was flawed.
`B.
`With regard to whether Tayloe capacitors store non-negligible amounts of
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`energy, Petitioners rely on the Board’s FWD in IPR2020-01265.15 See Reply, 13-
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`15 The Board found that Tayloe capacitors accumulate energy. Ex.-2016, 58-59.
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`By their nature, capacitors accumulate energy. But whether those capacitors store
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`non-negligible energy is another issue.
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`16
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`14, 16 n.9. Dr. Steer’s declaration in this IPR (Ex.-2038) addresses Intel’s analysis
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`in IPR2020-01265 (on which the Board’s FWD was based) regarding the energy
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`stored in Tayloe’s capacitors. Intel’s analysis was conclusory and superficial on its
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`face and failed to account for the circuit configuration of Tayloe. Ex.-2038, ¶306
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`n.17. In particular, Intel’s expert’s analysis of “non-negligible” was based on two
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`theories: (1) the capacitors in Tayloe are thousands of times larger than a capacitor
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`disclosed in an embodiment of an energy transfer system in the ’551 patent, and (2)
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`the amount of energy stored in a Tayloe capacitor—0.6 μJ (microjoules)—is
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`significant and distinguishable from noise.
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`With regard to issue (1), Dr. Steer explains “merely looking at the size of the
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`capacitors in Tayloe does not provide any insight into whether a Tayloe capacitor
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`‘stores non-negligible amounts of energy’” and “the size of Tayloe’s capacitors has
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`nothing to do with energy storage.” Id., ¶¶309-310. Instead, Tayloe’s capacitor size
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`was selected for another purpose – that is, to form a low pass filter. Id., ¶310.
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`Through mathematical analysis, Dr. Steer explains that the operation of a filter is a
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`function of capacitor size – the larger the capacitor size, the lower the cutoff
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`frequency (i.e., only low frequencies pass through the filter). Id., 311-314. In this
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`way, the Tayloe capacitor can operate as it was intended, i.e., as a low pass filter.
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`Id. Thus, Tayloe used a large capacitance size to obtain a certain filtering effect,
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`not to use it to store non-negligible amounts of energy.
`
`
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`17
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`
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`With regard to issue (2), Dr. Steer explains the formula that Intel’s expert
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`used (E = ½ CV2) to calculate 0.6 μJ (microjoules) “fails to take Tayloe’s
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`configuration into account” and “[t]he amount of energy stored cannot simply be
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`calculated using” this formula. Id., ¶306 n.17. The formula merely provides the
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`maximum amount of energy that can potentially be stored in a capacitor, not the
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`amount of energy actually stored in a capacitor based on Tayloe’s configuration.
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`Id.
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`Moreover, Intel’s expert provides only a conclusory statement that 0.6 μJ
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`(microjoules) is significant and distinguishable from noise. Intel’s expert simply
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`provided no objective evidence (e.g., specification support or citation to
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`books/papers) by which the Board could measure whether 0.6 μJ is negligible or
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`non-negligible, would be distinguishable from noise, or meets cellular/wireless
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`specifications. Intel’s expert also makes no mention that Tayloe meets
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`cellular/wireless specifications.
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`Dr. Steer’s comparative analysis of Tayloe and ParkerVision systems, on the
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`other hand, provided an objective basis for determining whether stored energy is
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`“non-negligible.”16
`
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`16 Relying on claim 42 of the ’551 patent, Petitioners assert that 0.193% is non-
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`negligible. Reply, 17. They are wrong. Claim 42 depends on claim 1 which recites
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`18
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`
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`C. Dr. Steer’s testimony remains unrebutted.
`Notably, neither Petitioners (nor Intel’s expert in IPR2020-01265) provide
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`rebuttal evidence and expert opinion to show that Dr. Steer’s analysis is
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`wrong/flawed. Indeed, when deposing Dr. Steer, Petitioners did not even challenge
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`Dr. Steer’s methodology/analysis. Instead, Petitioners merely sought sound bites
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`“(2) transferring non-negligible amounts of energy from the carrier signal” and
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`claim 41 which recites “wherein step (2) comprises the steps of: (a) transferring a
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`non-negligible portion of energy contained in a portion of the carrier signal.”
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`Claim 42 then recites “wherein step (2)(a) comprises the step of transferring at
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`
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`least one tenth of one percent of the energy contained in a half period of the carrier
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`signal.” Claim 42 pertains to transferring energy, not storing energy. Moreover,
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`the energy referred to in claim 42 is a “non-negligible portion of energy” (i.e., a
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`portion of the “non-negligible amount of energy”). Even putting aside these issues,
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`claim 42 refers to a half period. Dr. Steer, however, performed his calculations for
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`a quarter period. To put Dr. Steer’s results in the context of a half period, one
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`would need to divide 0.193% by 2 – 0.0965%. This is not “at least one tenth of one
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`percent” as per claim 42.
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`
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`19
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`
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`regarding whether Dr. Steer considered the testimony of an inventor and court
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`decisions involving different patents, claim elements and analysis.17
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`D. There is no estoppel.
` Petitioners assert that, based on the FWD in IPR2020-01265, ParkerVision
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`is collaterally estopped from arguing that Tayloe does not disclose the claimed
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`storage elements.18 Reply, 14. But collateral estoppel does not apply here.
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`A FWD, when final, gives rise to collateral estoppel if “(1) the issue is
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`identical to one decided in the first action; (2) the issue was actually litigated in the
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`17 Having no substantive rebuttal of Dr. Steer’s testimony, Petitioners take to
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`disparaging Dr. Steer based on a criticisms of Dr. Steer’s infringement analysis in
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`other cases with Qualcomm having nothing to do with the patents, claims or issues
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`in this case. See Reply, 9 n.7. In those, the court/ITC took issue with Dr. Steer’s
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`not providing a certain analysis. Here, Dr. Steer provides a detailed evidentiary
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`analysis supporting his opinions.
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`18 Petitioners also raise res judicata. But that doctrine is inapplicable here because
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`the parties involved in this IPR are different than those in IPR2020-01265. Under
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`the doctrine of res judicata “a judgment on the merits in a prior suit involving the
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`same parties or their privies bars a second suit based on the same cause of action.”
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`Lawlor v. Nat’l Screen Serv. Corp., 349 U.S. 322, 326 (1955) (quotation omitted).
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`
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`20
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`
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`first action; (3) resolution of the issue was essential to a final judgment in the first
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`action; and (4) [the party] had a full and fair opportunity to litigate the issue in the
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`first action.” SynQor, Inc. v. Vicor Corp., 988 F.3d 1341, 1353 (Fed. Cir. 2021).
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`First, ParkerVision appealed the IPR2020-01265 FWD. In other words, the
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`FWD is not a final judgment for purposes of collateral estoppel. A FWD is not
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`final until “the time for appeal has expired or any appeal has terminated.” 35
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`U.S.C. § 318. Therefore, the Board’s FWD “does not have preclusive effect until
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`that decision is [] affirmed…” See TRUSTID, Inc. v. Next Caller Inc., 2021 U.S.
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`Dist. LEXIS 134010, at *8-9 (D. Del. July 6, 2021); XY, LLC v. Trans Ova
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`Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018) (finding that “an affirmance of an
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`invalidity finding…has a collateral estoppel effect”).
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`Second, ParkerVision was not afforded a “full and fair opportunity to
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`litigate” the issue of “non-negligible” as it relates to Tayloe. Specifically, in
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`IPR2020-01265, the Board did not consider any of ParkerVision’s arguments on
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`this issue related to Tayloe. Ex.-2016, 70-71. But ParkerVision has appealed this
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`decision and maintains that its “non-negligible” arguments were timely and
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`properly raised. The arguments that the Board did not consider in the prior IPR
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`would have materially changed the co
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