IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`PARKERVISION, INC.,
`
`Plaintiff,
`
`v.
`
`HISENSE CO., LTD. and HISENSE
`VISUAL TECHNOLOGY CO., LTD.
`(F/K/A QINGDAO HISENSE
`ELECTRONICS CO., LTD. and
`HISENSE ELECTRIC CO., LTD.)
`
`Defendant.
`
`Case No. 6:20-cv-00870-ADA
`
`JURY TRIAL DEMANDED
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`
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`I.
`
`INTRODUCTION
`
`Defendants Hisense Co., Ltd. and Hisense Visual Technology Co., Ltd. (f/k/a Qingdao
`
`Hisense Electronics Co., Ltd. and Hisense Electric Co., Ltd.) (collectively “Defendants”) hereby
`
`serve their Preliminary Invalidity Contentions on Plaintiff ParkerVision, Inc. (“Plaintiff” or
`
`“ParkerVision”) in this action with respect to the claims identified and charted by Plaintiff in its
`
`Infringement Contentions.
`
`Per the Infringement Contentions served by Plaintiff, the Asserted Patents are: U.S. Patent
`
`Nos. 6,049,706 (the “’706 patent”); 6,266,518 (the “’518 patent”); 6,580,902 (the “’902 patent”);
`
`7,110,444 (the “’444 patent”); 7,292,835 (the “’835 patent”); 8,588,725 (the “’725 patent”);
`
`8,660,513 (the “’513 patent”); 9,118,528 (the “’528 patent”); 9,246,736 (the “’736 patent”); and
`
`9,444,673 (the “’673 patent”). The asserted claims (referred to herein as the “Asserted Claims”)
`
`of the Asserted Patents are as follows:
`
` At a minimum,1 claims 1, 2, 6, 7, 28, 34, 101, 102, 103, 105, 106, 107, 108, 109, 111,
`114, 115, 116, 117, 118, 123, 125, 127, 128, 129, 134, 135, 136, 137, 138, 139, 152,
`162, 164, 165, 166, 168, 172, 173, 175, 176, 179, 183, 184, 186, 187, 190, and 194 of
`the U.S. ’706 patent.
`
` At a minimum, claims 50 and 67 of the ’518 patent.
`
` At a minimum, claims 1, 2, 4, and 5 of the ’902 patent.
`
` At a minimum, claims 2, 3, and 4 of the ’444 patent.
`
` At a minimum, claims 1, 12, 13, 14, 15, and 17 of the ’835 patent.
`
` At a minimum, claims 1, 6, 7, 13, 14, and 16-19 of the ’725 patent.
`
` At a minimum, claims 19, 24, 27, and 28 of the ’513 patent.
`
`1 While ParkerVision uses the phrase “at a minimum” in its infringement contentions, it did not
`provide infringement charts for claims others than those mentioned in this paragraph.
`
`1
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` At a minimum, claims 1, 5, 9, 14, 15, and 17 of the ’528 patent.
`
` At a minimum, claims 1, 11, 15, 19, 21, 26, and 27 of the ’736 patent.
`
` At a minimum, claims 1, 2, 5, 6, 7, 13, 16, 17, 18, and 19 of the ’673 patent.2
`
`The Defendants present these initial invalidity contentions for the claims asserted against them.
`
`With respect to the Asserted Claims, and based on the investigation to date, Defendants
`
`hereby: (a) identify currently known items of prior art that either anticipates or renders obvious
`
`the Asserted Claims; (b) specify whether each such item of prior art (or combination of the same)
`
`anticipates or renders obvious the Asserted Claims; (c) submit charts identifying exemplary
`
`citations, for exemplary items of prior art, as to where each element of the Asserted Claims is
`
`found or rendered obvious; (d) identify the grounds of how the Asserted Claims are invalid based
`
`on indefiniteness under 35 U.S.C. § 112, and/or lack of enablement and/or lack of written
`
`description under 35 U.S.C. § 112; and (e) identify the grounds for invalidating the Asserted
`
`Claims under 35 U.S.C. § 101. The contentions set forth below are to be read in conjunction with
`
`the claim charts accompanying these contentions.
`
`II.
`
`GENERAL RESERVATIONS
`
`The following contentions are subject to the reservations stated herein and are subject to
`
`revision and amendment, including pursuant to Rule 26(e) of the Federal Rules of Civil Procedure
`
`and the Orders of record in this action, to the extent appropriate in light of further investigation
`
`and discovery regarding the defenses asserted by the Defendants, the Court’s claim construction
`
`related to the Asserted Claims, and/or the review and analysis of expert witnesses.
`
`2 After serving its infringement contentions, ParkerVision stated that it is not asserting claims 18-
`20 of the ’835 patent or claim 140 of the ’706 patent.
`
`2
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`These initial Invalidity Contentions and Defendants’ accompanying production of
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`documents are provisional and subject to further revision including as follows: Defendants
`
`expressly reserve the right to amend the contentions herein and the accompanying document
`
`production should Plaintiff provide any information that it failed to provide in its disclosures or
`
`should Plaintiff amend its disclosures in any way. Further, because discovery is ongoing and
`
`because Defendants have not yet completed their search for and analysis of all potentially relevant
`
`prior art, Defendants reserve the right to revise, amend, and/or supplement the information
`
`provided herein, including identifying, charting, and relying on additional references, should
`
`Defendants’ further search and analysis yield additional information or references, consistent with
`
`the Federal Rules of Civil Procedure. Further, Defendants reserve their rights to revise, amend, or
`
`supplement when Plaintiff provides additional discovery. Moreover, Defendants reserve the right
`
`to revise their ultimate contentions concerning the invalidity of the Asserted Claims, which may
`
`change depending upon further and on-going investigation, the Court’s construction of the
`
`Asserted Claims, and/or positions that Plaintiff or expert witnesses may take concerning claim
`
`construction, infringement, and/or invalidity issues.
`
`Prior art not included in this disclosure, whether known or not known to Defendants, may
`
`become relevant. In particular, Defendants are currently unaware of the extent, if any, to which
`
`Plaintiff will contend that limitations of the Asserted Claims are not disclosed in the prior art
`
`identified by Defendants or are otherwise not rendered obvious. To the extent that such an issue
`
`arises, Defendants reserve the right to identify other references that would render obvious the
`
`allegedly missing limitations of the claims. Defendants reserve the right to rely on any reference
`
`found in the prosecution histories of the applications leading up to the Asserted Patents (or related
`
`patents or foreign equivalents) or otherwise identified in connection with this action.
`
`3
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`To the extent the following contentions reflect constructions of claim limitations consistent
`
`with or implicit in Plaintiff’s Infringement Contentions, no inference is intended nor should any
`
`be drawn that Defendants agree with Plaintiff’s claim constructions, and Defendants expressly
`
`reserve the right to contest such claim constructions. Defendants offer no such contentions in
`
`response to Plaintiff’s Infringement Contentions and without prejudice to any position they may
`
`ultimately take as to any claim construction issues. Specifically, Defendants base these initial
`
`Invalidity Contentions at least in part upon the claim scope and certain claim constructions that
`
`apparently are asserted by Plaintiff, as evidenced for example in Plaintiff’s Infringement
`
`Contentions, and nothing herein should be construed or represented as evidencing any express or
`
`implied agreement with any of Plaintiff’s claim construction or infringement positions. In many
`
`instances, Plaintiff’s Infringement Contentions state, without meaningful elaboration, that certain
`
`claim terms are found in the accused device “on information and belief.” Defendants expressly
`
`reserve the right to supplement or amend these Invalidity Contentions if Plaintiff clarifies, amends,
`
`or supplements it Infringement Contentions, which are largely placeholder contentions devoid of
`
`meaningful analysis or elaboration. Further, nothing herein should be construed or represented as
`
`evidencing any express or implied agreement with any claim construction orders from other cases
`
`involving any Asserted Patent or similar patent wherein Defendants were not party to such cases.
`
`Defendants further intend to rely on admissions concerning the scope of the prior art
`
`relevant to the Asserted Patents found in, inter alia: the patent prosecution history for the Asserted
`
`Patents and any related patents and/or patent applications; any deposition testimony of the named
`
`inventors on the Asserted Patents and any related patents and/or patent applications in this action
`
`or any other action; positions taken by ParkerVision in other cases involving any Asserted Patent
`
`4
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`or similar patent (see Section VII, infra for a listing of other cases involving ParkerVision); and
`
`the papers filed and any evidence submitted by Plaintiff in connection with this action.
`
`Defendants’ claim charts cite to particular teachings and disclosures of the prior art as
`
`applied to features of the Asserted Claims. However, persons having ordinary skill in the art
`
`generally may view an item of prior art in the context of other publications, literature, products,
`
`and understanding. As such, the cited portions are only examples, and Defendants reserve the
`
`right to rely on uncited portions of the prior art references and on other publications, expert
`
`testimony, and other evidence as aids in understanding and interpreting the cited portions, as
`
`providing context thereto, and as additional evidence that the prior art discloses a claim limitation
`
`or any of the Asserted Claims as a whole. Defendants further reserve the right to rely on uncited
`
`portions of the prior art references, other publications, and testimony, including expert testimony,
`
`to establish bases for combinations of certain cited references that render the Asserted Claims
`
`obvious.
`
`The references discussed in the claim charts may disclose the elements of the Asserted
`
`Claims explicitly and/or inherently, and/or they may be relied upon to show the state of the art in
`
`the relevant time frame. The suggested obviousness combinations are provided in addition to
`
`and/or in the alternative to Defendants’ anticipation contentions and are not to be construed to
`
`suggest that any reference included in the combinations is not by itself anticipatory.
`
`Defendants reserve the right to assert that the Asserted Claims are invalid under 35 U.S.C.
`
`§ 102(f) in the event Defendants obtain additional evidence that the inventors named in the
`
`Asserted Patents did not invent the subject matter claimed in the respective patents. Should
`
`Defendants obtain such evidence, they will provide the name of the person(s) from whom and the
`
`circumstances under which the alleged invention or any part of it was derived.
`
`5
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`Defendants also reserve their rights to challenge any of the claim terms herein under 35
`
`U.S.C. § 112 beyond the grounds outlined herein, including by arguing that they are indefinite, not
`
`supported by the written description, or not enabled. Nothing stated herein shall be construed as
`
`a waiver of any argument available under 35 U.S.C. §§ 101, 102, 103, 112, and/or any other
`
`argument relating to patentability.
`
`III.
`
`PRIOR ART
`
`A.
`
`Prior Art That Anticipates or Renders Obvious
`
`Subject to Defendants’ reservation of rights in these initial Invalidity Contentions,
`
`Defendants identify exemplary items of prior art that anticipate and/or render obvious the Asserted
`
`Claims of the Asserted Patents in Table 1 below. Table 1 provides the identity of prior art patent
`
`and patent application, including the number, country of origin, and dates of filing, issuance, and/or
`
`publication. The patents and printed publications constitute prior art under one or more of (pre-
`
`AIA) 35 U.S.C. §§ 102(a), (b), (e), and (g).
`
`Discovery is ongoing, and Defendants’ prior art investigation and third-party discovery is
`
`therefore not yet complete. Defendants reserve the right to present additional items of prior art
`
`under 35 U.S.C. § 102 and/or § 103 that are located during the course of discovery or further
`
`investigation. For example, Defendants expect to receive documents from third parties either
`
`through informal requests or under subpoenas that are believed to have knowledge, documentation,
`
`and/or corroborating evidence concerning some of the prior art listed in the Table and/or additional
`
`prior art. These third parties include without limitation the authors, inventors, or assignees of the
`
`references listed in these disclosures. As another example, ParkerVision is and has been involved
`
`in litigation, some of which remains pending, regarding Asserted Patents or related or foreign
`
`equivalent patents, and for at least this reason ParkerVision has information relevant to invalidity,
`
`but ParkerVision has not yet produced such information to Defendants. Defendants intend to rely
`
`6
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`on, and do rely on, for example, prior art and invalidity contentions, theories, and evidence that
`
`were produced in ParkerVision’s other litigations. In addition, Defendants reserve the right to
`
`assert invalidity under other sections of 35 U.S.C. § 102 to the extent that discovery or further
`
`investigation yield information forming the basis for such invalidity.
`
`Table 1: Prior Art Documents for the Asserted Patents
`Referenced As Beginning Bates Number
`“Lam”
`
`0000001
`
`Publication
`
`USP 5,937,013
`
`USP 6,073,001
`
`“Sokoler”
`
`High-Performance, Single-Signal
`Direct-Conversion Receivers, Rick
`Campbell
`
`“Campbell”
`
`USP 6,230,000
`
`USP 5,339,459
`
`USP 5,734,683
`
`“Tayloe”
`
`“Schiltz”
`
`“Hulkko”
`
`USP 6,060,915
`
`“McEwan”
`
`USP 4,617,521
`
`GB 2 301 750 A
`
`“Fox”
`
`“Burri”
`
`USP 5,640,698
`
`“Shen Patent”
`
`0000010
`
`0000017
`
`0000026
`
`0000034
`
`0000046
`
`0000054
`
`0000063
`
`0000067
`
`0000087
`
`7
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`Publication
`
`Referenced As Beginning Bates Number
`
`A 900-MHz RF Front-End With
`Integrated Discrete-Time Filtering,
`David H. Shen at al., IEEE Journal of
`Solid-State Circuits, Vol. 31, No. 12,
`Dec. 1996
`
`SN74CBT3253D Dual 1-of-4 FET
`Multiplexer/Demultiplexer
`
`“IEEE Shen”
`
`0000105
`
`“TI Datasheet”
`
`0000115
`
`USP 4,985,647
`
`“Kawada”
`
`USP 5,432,723
`
`USP 4,305,133
`
`“Chen”
`
`“Amada”
`
`USP 4,255,794
`
`“Nakayama”
`
`USP 5,325,188
`
`USP 5,563,819
`
`USP 5,592,071
`
`USP 4,682,117
`
`“Scarpa”
`
`“Nelson”
`
`“Brown”
`
`“Gibson”
`
`USP 5,554,944
`
`“Van Buul”
`
`0000547
`
`0000555
`
`0000570
`
`0000581
`
`0000593
`
`0000618
`
`0000644
`
`0000651
`
`0000657
`
`8
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`Publication
`
`Referenced As Beginning Bates Number
`
`“Goldberg”
`
`0000663
`
`L. Goldberg, “MCNS/DOCSIS MAC
`Clears a Path for the Cable-Modem
`Invasion,” Electronic Design; Dec. 1,
`1997; 45, 27; Materials Science &
`Engineering Collection pg. 69
`
`USP 6,011,548
`
`“Thacker”
`
`ITU-T J.83b Recommendation (April
`1997)
`
`“ITU-T J.83b”
`
`Motorola Semiconductors, Small-
`Signal Transistor Data Book (1984)
`
`“Motorola Data
`Book”
`
`USP 3,716,730
`
`“Cerny”
`
`Improving the ESD Failure Threshhold
`
`“Polgreen”
`
`0000671
`
`0000677
`
`0000744
`
`0000753
`
`0000762
`
`of Silicided n-MOS Output Transistors
`by Enusring Uniform Current Flow,
`IEEE Transactions on Electron.
`Devices, Vol. 39, No. 2, February
`1992, Thomas L. Polgreen et al.
`
`U.S. Patent Publication US
`2004/0125968
`
`Digital Signal Processing, Alan v.
`Oppenheim et al.
`
`“Pearce”
`
`0000772
`
`“Oppenheim”
`
`0000817
`
`9
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`Publication
`
`Referenced As Beginning Bates Number
`
`Electronic Circuits Design and
`Applications, U. Tietze, Ch. Schenk
`
`“Tietze”
`
`0000821
`
`In addition, to the extent that the Asserted Patents contain Applicant Admitted Prior Art
`
`(collectively “AAPA”), such AAPA is deemed to be included in Table 1 above.
`
`The above list is not exclusive. Defendants reserve the right to rely on both the listed
`
`references as well as other art that may become known and/or relevant during the course of this
`
`action. Any citation to one or more of these prior art references, or other prior art references
`
`regarding any method or system, should be construed to constitute not only a citation to the prior
`
`art reference itself but also a reference to the disclosed system or product itself. Discovery is
`
`ongoing in this case, and Defendants will supplement if and when more information becomes
`
`available.
`
`Each prior art patent or publication identified above that was either filed or issued (for
`
`patents) or published (for publications) before the earliest claimed priority date of the Asserted
`
`Patents does not appear to have been abandoned, suppressed, or concealed, so each such reference
`
`also constitutes evidence of prior invention pursuant to 35 U.S.C. § 102(g) to the extent that it is
`
`in the U.S. The persons or entities involved with each such invention include the named inventors
`
`on the above-identified patents and the authors listed on the above-identified publications.
`
`Investigation, analysis, and discovery are ongoing in this matter, and Defendants reserve the right
`
`to supplement these initial invalidity contentions as appropriate.
`
`10
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`IV.
`
`ANTICIPATION AND OBVIOUSNESS
`
`A.
`
`Anticipatory Prior Art
`
`Subject to Defendants’ reservation of rights in these initial Invalidity Contentions, prior art
`
`references anticipating the Asserted Claims of the Asserted Patents are listed in Tables 2-11, and
`
`Exhibits are provided with claim charts for each reference. A citation to each reference is found
`
`above in Table 1, along with an identification of Bates Numbers for the references.
`
`Depending on the Court’s construction of the Asserted Claims of the Asserted Patents,
`
`and/or positions that Plaintiff or its expert witnesse(s) may take concerning claim interpretation,
`
`infringement, and/or invalidity issues, different ones of the charted prior art references in the
`
`Exhibits may be of greater or lesser relevance and different combinations of these references may
`
`be implicated. Given the uncertainty, the charts may reflect alternative applications of the prior
`
`art against the Asserted Claims.
`
`The prior art cited in the Exhibits is illustrative and not exhaustive. Though these claim
`
`charts provide illustrative citations to where each element may be found in the prior art references,
`
`the cited references may contain other disclosures of each claim element as well, and Defendants
`
`reserve the right to rely on other, non-cited portions of these references.
`
`If Plaintiff asserts that any of these references fails to disclose one or more elements of the
`
`Asserted Claims, Defendants reserve the right to use one or more of these references as prior art
`
`under 35 U.S.C. § 103.
`
`Table 2: Anticipation Prior Art for the ’518 Patent
`
`Exhibit Number Chart
`
`A-1
`
`A-2
`
`Prior Art
`
`Schiltz
`
`Hulkko
`
`11
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`Exhibit Number Chart
`
`A-3
`
`A-4
`
`A-5
`
`A-6
`
`A-36
`
`Prior Art
`
`McEwan
`
`Fox
`
`Burri
`
`Shen Patent
`
`IEEE Shen
`
`Table 3: Anticipation Prior Art for the ’444 Patent
`
`Exhibit Number Chart
`
`A-7
`
`A-8
`
`A-9
`
`A-10
`
`Prior Art
`
`Lam
`
`Sokoler
`
`Tayloe
`
`Campbell
`
`Table 4: Anticipation Prior Art for the ’513 Patent
`
`Exhibit Number Chart
`
`A-11
`
`A-12
`
`A-13
`
`Prior Art
`
`Lam
`
`Sokoler
`
`Tayloe
`
`Table 5: Anticipation Prior Art for the ’528 Patent
`
`Exhibit Number Chart
`
`A-14
`
`Prior Art
`
`Lam
`
`12
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`Exhibit Number Chart
`
`A-15
`
`A-16
`
`Prior Art
`
`Sokoler
`
`Tayloe
`
`Table 6: Anticipation Prior Art for the ’673 Patent
`
`Exhibit Number Chart
`
`A-17
`
`A-18
`
`A-19
`
`A-20
`
`A-21
`
`A-36
`
`Prior Art
`
`Schiltz
`
`Hulkko
`
`McEwan
`
`Fox
`
`Burri
`
`Shen Patent
`
`Table 7: Anticipation Prior Art for the ’706 Patent
`
`Exhibit Number Chart
`
`A-22
`
`A-23
`
`Prior Art
`
`IEEE Shen
`
`Shen Patent
`
`Table 8: Anticipation Prior Art for the ’725 Patent
`
`Exhibit Number Chart
`
`A-24
`
`A-25
`
`A-26
`
`Prior Art
`
`Schiltz
`
`Hulkko
`
`McEwan
`
`13
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`Exhibit Number Chart
`
`A-27
`
`A-28
`
`A-38
`
`Prior Art
`
`Fox
`
`Burri
`
`Shen Patent
`
`Table 9: Anticipation Prior Art for the ’736 Patent
`
`Exhibit Number Chart
`
`A-29
`
`A-30
`
`A-31
`
`Prior Art
`
`Lam
`
`Sokoler
`
`Tayloe
`
`Table 10: Anticipation Prior Art for the ’835Patent
`
`Exhibit Number Chart
`
`A-32
`
`A-33
`
`Prior Art
`
`Hulkko
`
`Gibson
`
`Table 11: Anticipation Prior Art for the ’902 Patent
`
`Exhibit Number Chart
`
`A-34
`
`A-35
`
`Prior Art
`
`Tayloe
`
`Schiltz
`
`In addition, the Asserted Claims are anticipated by other instances of prior art produced
`
`in ParkerVision’s other litigation and IPR proceedings (see Section VII, infra), and are further
`
`anticipated due to collateral estoppel and judicial estoppel. See Sections VIII and IX, infra.
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`B.
`
`Prior Art/Combinations that Render the Asserted Claims Obvious
`
`Subject to the Defendants’ reservation of rights stated in these initial Invalidity Contentions
`
`and based on Defendants’ present understanding of the Asserted Claims, and the apparent
`
`constructions Plaintiff is asserting based on Plaintiff’s Infringement Contentions, the prior art
`
`references identified above each anticipate and/or render obvious the Asserted Claims of the
`
`respective Asserted Patents.
`
`In addition to the grounds of anticipation outlined above, each of the references from each
`
`of the Tables also renders obvious the Asserted Claims of the respective Asserted Patents either
`
`alone or in combination with one or more of the other references from the respective Table. The
`
`Defendants further provide some exemplary, non-limited grounds of invalidity based on
`
`obviousness below. Defendants reserve the right to supplement the obviousness arguments listed
`
`below using any references listed in the Tables and any other references including those that may
`
`become known or that may become known to be relevant during the course of discovery.
`
`Defendants further reserve the right to rely upon combinations of references disclosed within the
`
`prosecution history of the Asserted Patents with the references cited herein.
`
`To the extent a finder of fact finds that a limitation of any of the Asserted Claims was not
`
`disclosed by one of the references identified above, that claim is nevertheless invalid as obvious
`
`because the Asserted Claims contain nothing that constitutes a patentable innovation. To the extent
`
`not anticipated, the Asserted Claims do not go beyond combining familiar elements according to
`
`known methods to achieve predictable results, and do no more than choose between clear
`
`alternatives known to those of ordinary skill in the art.
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`No showing of a specific motivation to combine prior art is required to combine the
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`references disclosed above and in the attached charts, as each combination of art would have no
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`unexpected results, and at most would simply represent a known alternative to one of ordinary
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`skill in the art. See KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739-40 (2007) (rejecting the
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`Federal Circuit’s “rigid” application of the teaching, suggestion, or motivation to combine test,
`
`instead espousing an “expansive and flexible” approach). Indeed, the Supreme Court held that a
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`person of ordinary skill in the art is “a person of ordinary creativity, not an automaton” and “in
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`many cases a person of ordinary skill in the art will be able to fit the teachings of multiple patents
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`together like pieces of a puzzle.” Id. at 1742. Nevertheless, in addition to the information
`
`contained in the section above and elsewhere in these contentions, Defendants hereby identify
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`additional motivations and reasons to combine the cited art.
`
`One or more combinations of the prior art references identified herein would have been
`
`obvious because these references would have been combined using: known methods to yield
`
`predictable results; known techniques in the same way; a simple substitution of one known,
`
`equivalent element for another to obtain predictable results; and/or a teaching, suggestion, or
`
`motivation in the prior art generally. In addition, it would have been obvious to try combining the
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`prior art references identified above because there were only a finite number of predictable
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`solutions and/or because known work in one field of endeavor prompts variations based on
`
`predictable design incentives and/or market forces either in the same field or a different one. In
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`addition, the combinations of the prior art references identified above would have been obvious
`
`because the combinations represent the known potential options with a reasonable expectation of
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`success.
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`Additional evidence that there would have been a motivation or reason to combine the prior
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`art references identified above includes the interrelated teachings of multiple prior art references;
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`the effects of demands known to the design community or present in the marketplace; the existence
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`of a known problem for which there was an obvious solution; the existence of a known need or
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`problem in the field of endeavor at the time of the invention; and the background knowledge that
`
`would have been possessed by a person having ordinary skill in the art. For example, the prior art
`
`references are generally directed to the same problem of down-converting high-frequency
`
`modulated communication signals. Thus, a skilled artisan seeking to solve this problem would
`
`look to these cited references in combination.
`
`Thus, the motivation or reason to combine the teachings of the prior art references disclosed
`
`herein is found in the references themselves and in: (1) the nature of the problem being solved; (2)
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`the express, implied, and inherent teachings of the prior art; (3) the knowledge of persons of
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`ordinary skill in the art; (4) the fact that the prior art is generally directed towards the same
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`problem; and/or (5) the predictable results obtained in combining the different elements of the
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`prior art.
`
`Numerous prior art references, including those identified above and in the attached
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`Exhibits, reflect common knowledge and the state of the prior art before the earliest claimed
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`priority date of the Asserted Patents. As it would be unduly burdensome to create detailed claim
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`charts for the thousands of invalidating combinations, for at least the reasons described throughout
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`these Invalidity Contentions, it would have been obvious to one of ordinary skill in the art to
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`combine any of a number of prior art references, including any combination of those identified in
`
`the attached Exhibits to meet the limitations of the Asserted Claims. As such, Defendants’
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`inclusion of exemplary combinations, in view of the factors and motivations identified in the
`
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`preceding paragraphs, does not preclude Defendants from identifying other invalidating
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`combinations as appropriate.
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`1.
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`Exemplary Obviousness Combinations
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`Defendants provide below some exemplary combinations of references that render the
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`Asserted Claims obvious, though Defendants may rely upon a subset of the references or all of the
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`references depending upon the Court’s claim construction and further investigation. Defendants’
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`contentions that the references in this section, in various combinations, render the Asserted Claims
`
`of the Asserted Patents obvious under 35 U.S.C. § 103 are in no way an admission or suggestion
`
`that each reference does not independently anticipate the Asserted Claims under 35 U.S.C. § 102.
`
`Any of these references may be combined with other disclosed references and/or with the
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`knowledge of one of ordinary skill in the art during the relevant time period to render obvious,
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`and, therefore, invalid, the Asserted Claims of the Asserted Patents. These combinations are not
`
`intended to be exhaustive, as there are many possible combinations of these references, and it is
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`not practical, particularly at this early stage before further factual investigation and claim
`
`construction proceedings, to identify and list all potentially relevant combinations. The Asserted
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`Claims recite limitations that each provide their well-known and predictable functionality, without
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`any unexpected result or specific synergy as to the combination of limitations.
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`In particular, the Asserted Claims of the Asserted Patents and the limitations in those claims
`
`are rendered obvious under 35 U.S.C. § 103 in view of at least, and without limitation, the
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`following combinations of references:
`
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`Table 12: Exemplary Combinations for the Asserted Claims of the ’518 patent
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`Primary Reference:
`
`In Combination With One or More of
`the Following:
`
` Schiltz
` Hulkko
` McEwan
` Fox
` Burri
` Shen Patent
`
` Schiltz
` Hulkko
` McEwan
` Fox
` Burri
` Shen Patent
` Enz
` Van Buul
`IEEE Shen
`
`
`Table 13: Exemplary Combinations for the Asserted Claims of the ’444 Patent
`
`Primary Reference:
`
`In Combination With One or More of
`the Following:
`
` Lam
` Sokoler
` Tayloe
` Campbell
`
` Schiltz
` Hulkko
` McEwan
` Fox
` Burri
` Enz
` TI Datasheet
` Kawada
` Lam
` Sokoler
` Tayloe
` Campbell
` Van Buul
`
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`Table 21: Exemplary Combinations for the Asserted Claims of the ’902 Patent
`
`Primary Reference:
`
`In Combination With One or More of
`the Following:
`
` Tayloe
` Lam
` Schiltz
` Hulkko
` McEwan
` Fox
` Burri
` Enz
` Tayloe
` Sokoler
`
` Tayloe
` Lam
` Schiltz
` Hulkko
` McEwan
` Fox
` Burri
` Enz
` Tayloe
` TI Datasheet
` Kawada
` Cerney
` Polgreen
` Pearce
` Motorola Data Book
` Sokoler
`
`In addition to the grounds of anticipation presented based on the prior art listed in Tables
`
`2-11 above, it would have been obvious to the person of ordinary skill in the art to combine such
`
`references at least as is shown in Tables 12-21, which combination renders the claims obvious to
`
`the person of ordinary skill in the art.
`
`A person of ordinary skill in the art had reason to combine or modify one or more of the
`
`references listed in the Tables above and those charted in the accompanying claim chart Exhibits
`
`in light of the knowledge of a person of ordinary skill in the art at the time of the alleged
`
`invention and information in the prior art cited herein. For example, the references identified in
`
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`the Tables above and those charted in the accompanying claim chart Exhibits are all in the same
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`field as the Asserted Patents.
`
`Indeed, apparatus and methods for down-converting signals have been known and used
`
`for many decades. And all features recited in all Asserted Claims were known before the time of
`
`the alleged inventions. For example, as shown by, for example, Tayloe, Hulkko, McEwan, Fox,
`
`Burri, Enz, Lam, and other references cited above, it was known to use switched capacitors as a
`
`way to down-convert a modulated RF signal. As another example, structures and methods for
`
`down-converting I/Q modulated signals were known, as shown by, for example, Tayloe, Sokoler,
`
`Campbell, Lam, and Gibson. As another example, the references cited above additionally show
`
`that it was known to operate a switch (or a mixer) at an aliasing frequency in the down-
`
`conversion of modulated RF signals, including but not limited to I/Q modulated signals.
`
`One of ordinary skill in the art would have been motivated to combine any of the
`
`references identified in the Tables above and those charted in the accompanying claim chart
`
`Exhibits and would have further recognized that combinations of these references would have
`
`improved similar systems and methods in the same way. Additionally, one of ordinary skill in
`
`the art would recognize that the result of combining two or more of these references would have
`
`yielded nothing more than the predictable use of prior art elements according to their established
`
`functions.
`
`Thus, all of the limitations of the Asserted Claims were known in the ar