Case 6:20-cv-00945-ADA Document 68 Filed 08/29/22 Page 1 of 108
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`6-20-CV-00870-ADA
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`6-20-CV-00945-ADA
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`PARKERVISION, INC.,
` Plaintiff
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`-v-
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`HISENSE CO., LTD., HISENSE
`VISUAL TECHNOLOGY CO., LTD.
` Defendants
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`
`PARKERVISION, INC.,
` Plaintiff
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`-v-
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`TCL INDUSTRIES HOLDINGS CO.,
`LTD., TCL ELECTRONICS
`HOLDINGS LTD., SHENZHEN TCL
`NEW TECHNOLOGY CO., LTD., TCL
`KING ELECTRICAL APPLIANCES
`(HUIZHOU) CO., LTD., TCL MOKA
`INT'L LTD., TCL MOKA
`MANUFACTURING S.A. DE C.V.
` Defendants
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`
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`SPECIAL MASTER’S REPORT AND RECOMMENDATION
`REGARDING CLAIM CONSTRUCTION
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`Before the Court are the Parties’ claim construction briefs: Defendants HiSense Co., Ltd.
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`and HiSense Visual Technology Co., Ltd. (collectively “HiSense”) and TCL Industries Holdings
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`Co., Ltd., TCL Electronics Holdings Ltd., Shenzhen TCL New Technology Co., Ltd., TCL King
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`Electrical Appliances (Huizhou) Co., Ltd., TCL Moka Int’l Ltd., TCL Moka Manufacturing S.A.
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`De C.V.’s (collectively “TCL”) Opening and Reply briefs (No. 6-20-cv-00870, ECF Nos. 33 and
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`42, respectively, and No. 6-20-cv-00945, ECF Nos. 33 and 40, respectively) (“Opening” and
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`“Reply,” respectively) and Plaintiff ParkerVision, Inc. Response and Sur-Reply briefs (No. 6-20-
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`cv-00870, ECF Nos. 40 and 44, respectively, and No. 6-20-cv-00945, ECF Nos. 38 and 42,
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`respectively) (“Response” and “Sur-Reply,” respectively). United States District Judge Alan D
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`Albright referred these cases to the undersigned on October 25, 2021. No. 6-20-cv-00870, ECF
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`No. 47 and No. 6-20-cv-00945, ECF No. 45. The undersigned provided preliminary constructions
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`for the disputed terms the day before the hearing. No. 6-20-cv-00870, ECF No. 46 and No. 6-20-
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`cv-00945, ECF No. 44. The undersigned held the Markman hearing on October 27, 2021. No. 6-
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`20-cv-00870, ECF No. 48 and No. 6-20-cv-00945, ECF No. 46. During that hearing, the
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`undersigned informed the Parties of the final recommended constructions for the disputed terms.
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`Id. This Report does not alter any of those constructions.
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`I.
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`BACKGROUND
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`Plaintiff asserts U.S. Patent Nos. 6,049,706, 6,266,518, 6,580,902, 7,110,444, 7,292,835,
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`8,588,725, 8,660,513, 9,118,528, 9,246,736, and 9,444,673. Plaintiff previously asserted these
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`patents in the Western District of Texas against Intel in two cases (6-20-cv-00108, 6-20-cv-00562)
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`and later against LG (6-21-cv-00520). Judge Albright held Markman hearings in the Intel cases
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`on January 26, 2021 (-00108) and July 22, 2021 (-00562). Judge Albright previously construed
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`Terms 3, 5–10, and 14-23 below in the prior Intel cases. 6-20-cv-00870,1 ECF No. 51 at 3–9, 11-
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`16.
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`Judge Gilliland held a Markman hearing in LG case on May 10, 2022. No. 6-20-cv-00520,
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`ECF No. 51. Judge Gilliland entered a Markman order and memorandum in support of his claim
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`constructions on June 21, 2022. No. 6:21-cv-00520-ADA, 2022 WL 2240465 (W.D. Tex. June
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`21, 2022). In that order, Judge Gilliland provided his reasoning for his constructions for two terms
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`(Term #1: “energy storage element” / “energy storage device”/ “energy storage module”/ “storage
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`1 For simplicity, all references to the docket entries will be from the -00870 case.
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`2
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`element”/ “storage module” and Term #2: whether “cable modem” in U.S. Patent No. 7,292,835
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`Patent, Cl. 1 was limiting) and adopted Judge Albright’s constructions for 28 other terms (Terms
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`#3 to #30). Id. Term #3 in this case corresponds to Term #1 in Judge Gilliland’s Markman order
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`and memorandum in support thereof.
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`II. DESCRIPTION OF THE ASSERTED PATENTS
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`The Asserted Patents describe and claim systems for down-conversion of a modulated
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`carrier signal. ’518 Patent at Abstract. Down-conversion is the process of recovering the baseband
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`(audio) signal from the carrier signal after it has been transmitted to and received by the receiver.
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`This process is referred to as “down-conversion” because a high frequency signal is being down-
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`converted to a low frequency signal.
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`The Asserted Patents disclose at least two types of systems for down-conversion: (1) sample-and-
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`hold (i.e., voltage sampling) and (2) “energy transfer” (also known as “energy sampling”). The
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`key difference between the two is that the former takes a small “sample” of the input signal while
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`the latter takes a very large sample, i.e., a large enough sample that a non-negligible amount of
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`energy is transferred from the input signal. The following sub-sections describes each type of
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`system, their respective operation, and compares them.
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`A. Circuit configuration of down-sampling systems: sample-and-hold and energy
`transfer.
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`Figure 78B depicts an exemplary sample-and-hold system while Figure 82B depicts an
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`exemplary energy transfer system. ’518 Patent at 63:19–26 (sample-and-hold) and 7:63–64
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`(energy transfer).
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`While Figures 78B and 82B depict that the respective circuits have a similar structure, their
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`respective parameter values (e.g., capacitor and load impedance values)—and concomitantly their
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`respective operation—are very different. It is important to note that the input signal, input EM
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`signal, is the same in both figures.
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`The circuits in both figures include a switching module (7806 in Figure 78B and 8206 in
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`Figure 82B). Id. at 62:65–66 (switching module 7806), 66:13–14 (switching module 8206). The
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`switching module opens and closes (i.e., turns off and on, respectively) based on under-sampling
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`signal 7810 in Figure 78B and energy transfer signal 8210 in Figure 82B. Id. at 62:67–63:1 (under-
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`sampling signal 7810), 66:24–26 (energy transfer signal 8210). When the switching module is
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`“closed,” input EM signal 7804 and input EM signal 8204 can propagate across the switching
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`module to holding capacitance 7808 and storage capacitance 8208, respectively, but when the
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`switching module is “open,” input EM signals 7804/8204 cannot propagate across the switching
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`module. While both switching module 7806 and switching module 8206 open and close, the
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`duration that each module is closed differs significantly. The specifications of the Asserted Patents
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`describe that under-sampling signal 7810 “includes a train of pulses having negligible apertures
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`that tend towards zero time in duration.” Id. at 63:1–3. The specification discloses an embodiment
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`of the “negligible pulse width” as being “in the range of 1–10 p[ico]sec[onds] (“ps”) for under-
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`sampling a 900 MHz signal.” Id. at 63:3–5. By contrast, the specifications describe that energy
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`transfer signal 8210 “includes a train of energy transfer pulses having non-negligible pulse widths
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`that tend away from zero time in duration.” Id. at 66:26–28 (emphasis added). The specification
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`discloses an embodiment where the “non-negligible pulse” is approximately 550 ps for a 900 MHz
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`signal.
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`The specifications describe that holding capacitance 7808 and storage capacitance 8208
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`are capacitors that charge when switching module 7804 and switching module 8204, respectively,
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`are closed. Id. at 63:10–13 (holding capacitance 7808), 66:38–42 (storage capacitance 8208). The
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`specifications also disclose that holding capacitance 7808 “preferably has a small capacitance
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`value” and disclose an embodiment wherein holding capacitance 7808 has a value of 1 picoFarad
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`(“pF”). Id. at 63:9–15. By contrast, the specifications disclose that storage capacitance 8208
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`“preferably has the capacity to handle the power being transferred” and disclose an embodiment
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`wherein storage capacitance 8208 has a value “in the range of 18 pF.” Id. at 66:38–49.
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`The specifications describe that holding capacitance 7808 and storage capacitance 8208
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`discharge through load 7812 and load 8212 when switching module 7804 and switching module
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`8204, respectively, are open. See id. at 63:19–26 (load 7812), 66:61–65 (load 8212). Figure 78B
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`depicts that “high impedance” load 7818 has an impedance of approximately 1 MΩ while Figure
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`82B depicts that “low impedance” load 8218 has an impedance of approximately 2 kΩ. The
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`specifications describe that “[a] high impedance load is one that is relatively insignificant to an
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`output drive impedance of the system for a given output frequency. A low impedance load is one
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`that is relatively significant.” Id. at 66:58–61.
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`B. Operation of down-converting systems
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`At a very high level, both systems operate similarly. In particular, when the switching
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`module (switching modules 7806 / 8206) is closed, the input signal (input EM signal 7804 / 8204)
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`propagates to the capacitor (holding capacitance 7808 and storage capacitance 8208) and charge
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`the voltage across the capacitor to the voltage of input signal. But when the switching module is
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`open, the input signal cannot propagate to the capacitor, i.e., cannot charge the voltage across the
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`capacitor to the voltage of input signal. Rather, the charge on the capacitor discharges through the
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`load impedance (load 7818 / 8218).
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`While both systems operate similarly at a high level, differences in (1) the width of the
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`sampling aperture, (2) value of the capacitor, and (3) value of the load are what dictates whether
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`the system operates as a sample-and-hold system or an energy transfer system.
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`1. Operation of sample-and-hold system
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`In a sample-and-hold system, the sampling aperture in under-sampling signal 7810 is
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`negligible which means only a small amount of charge from input EM signal 7804 propagates to
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`the holding capacitance 7808 before switching module 7806 opens. Id. at 62:63–63:8. Because
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`the sampling aperture has a negligible (i.e., very small) width, there is only enough time take a
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`“sample” of input EM signal 7804, i.e., only a small amount of charge is transferred to holding
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`capacitor 7808. Given that only a small amount of charge is transferred to the capacitor, the value
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`of holding capacitor 7808 needs to be relatively low in order for the voltage across holding
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`capacitance 7808 change to the voltage of input EM signal 7804. More specifically, the
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`relationship between charge (Q) and voltage (V) across a capacitor (with a capacitance of C) is
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`𝑄 = 𝐶 ∗ 𝑉, or 𝑄
` 𝐶(cid:3415) = 𝑉. As such, if the capacitance C is large, more charge Q is needed in order
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`to increase the voltage to V. For example, for the same amount of charge, if the capacitance is 2C
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`in one case and C in other case, the voltage in the former case will be half the voltage of the voltage
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`in the latter case. Id. at 65:29–35. Therefore, to ensure that the value of holding capacitance 7808
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`does not limit the voltage across the capacitor, the value of holding capacitance 7808 needs to be,
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`as described above, low. Id. at 63:9–15.
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`When sampling module 7806 is open, the charge on holding capacitance 7808 discharges
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`through load impedance 7818. See id. at 63:19–26. When the value of load impedance 7818 is
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`high, the charge on holding capacitance 7808 discharges very slowly as compared to when the
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`load impedance is low. More specifically, the time to discharge a capacitor is related to 𝑅 ∗ 𝐶
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`(also known as the time constant τ) where R is the value of the load impedance. Using the
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`exemplary values depicted in Figures 78B (1 MΩ) and 82B (2 kΩ), assuming that the capacitance
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`is the same, it will take 500 times longer to discharge the capacitor with the 1 MΩ load impedance
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`as compared to the circuit with the 2 kΩ load impedance. Because it takes significantly longer to
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`discharge the capacitor using a 1 MΩ load impedance (as compared to the 2 kΩ load impedance),
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`the 1 MΩ load impedance in “holds” the charge.
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`To summarize, in a sample-and-hold down-sampling system, a negligible sampling
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`aperture for switching module 7806 and a small value for holding capacitance 7808 only allows
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`for a “sample” of the voltage of the input EM signal 7804 when switching module 7806 is closed.
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`And because of the high value of load impedance 7818, the capacitor “holds” that value when
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`switching module 7806 is open.
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`2. Operation of energy transfer system
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`As described above, in an energy transfer system, the sampling aperture is non-negligible
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`(e.g., 550 ps versus 1 ps for the sample-and-hold system for a 900 MHz input signal). Therefore,
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`there is significantly more time to transfer charge from the input signal to storage capacitance
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`8208. Id. at 66:42–44. Because significantly more charge is transferred to the capacitor, the value
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`of storage capacitance 8208 can be larger, in spite of the fact that charge and voltage are inversely
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`related (i.e., 𝑉 =
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`𝑄
` 𝐶(cid:3415) ). The fact that this system transfers a large amount of charge—or energy—
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`to the capacitor gives rise to the name “energy transfer” system.
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`When sampling module 8206 is open, the charge on storage capacitance 8208 discharges
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`through load impedance 8218. See id. at 66:61–65. Because the load impedance in an energy
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`transfer system is “low,” e.g., 2 kΩ, the charge on storage capacitance 8208 discharges much faster
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`than the charge on a capacitor in a sample-and-hold system, e.g., 500 times faster as compared to
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`using a 1 MΩ load impedance.
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`To summarize, in an energy transfer down-sampling system, a non-negligible sampling
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`aperture for switching module 8206 and a high value for storage capacitance 8208 allows for a
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`large amount of charge—or energy—to be transferred from the input signal.
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`C. Comparison of sample-and-hold and energy transfer systems
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`The following summarizes the key differences between sample-and-hold and energy
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`transfer systems.
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`Parameter
`Sampling aperture
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`Capacitor
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`Load impedance
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`Sample-and-hold
`Negligible
`(e.g., 1–10 ps)
`Holding capacitance
`(e.g., 1 pF)
`High
`(e.g., ~1 MΩ)
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`Energy transfer
`Non-negligible
`(e.g., 550 ps)
`Storage capacitance
`(e.g., 18 pF)
`Low
`(e.g., ~2 kΩ)
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`
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`It is important to emphasize that differences in the set of parameter values determines
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`whether a system functions as a sample-and-hold system or an energy transfer system. For
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`example, there is nothing special in the structure of a holding capacitance as compared to the
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`structure of a storage capacitance. A circuit designer could, in theory, swap the holding
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`capacitance in a sample-and-hold system with the storage capacitance in an energy transfer system
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`and still have a sample-and-hold system by appropriately adjusting the sampling aperture and load
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`impedance to “match” the larger capacitor value of the holding capacitance.
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`It is important to note that changing one parameter without adjusting the other parameters
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`will prevent each system from operating as intended or will have other problems. For example,
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`using a non-negligible sampling aperture in a sample-and-hold system is unnecessary as the
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`holding capacitance can be fully charged (to the voltage of the input signal) with a negligible
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`aperture, but using a non-negligible sampling aperture may distort or destroy the input EM signal
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`by transferring too much of its energy to the holding capacitance. Id. at 62:30–39.
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`Even worse, using a high load impedance in an energy transfer system or a low load
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`impedance in a sample-and-hold system could result in a system with poor performance. See, e.g.,
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`id. at 65:52–55. More specifically, in the latter situation, the low value of the holding capacitance
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`combined with a low load impedance means that its corresponding time constant τ is very low,
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`which means that the holding capacitance may discharge significantly when the switching module
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`is open. As a result, the down-converted signal “cannot provide optimal voltage reproduction, and
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`has relatively negligible power available at the output.” Id. at 64:49–51.
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`In the former situation, the high value of the storage capacitance combined with a high load
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`impedance means that its corresponding time constant τ is very high, therefore it will take
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`considerably more time (as compared to a low load impedance) to discharge the storage
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`capacitance. This may result in less than optimal voltage reproduction, e.g., when the voltage of
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`the input EM signal is lower than the voltage across the capacitor. Furthermore, the down-
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`converted signal could have substantially less power (e.g.: 𝑉(cid:2870)
` 𝑅(cid:3415) ; ~2 mV and 1 MΩ) than the
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`energy transfer system with a low impedance load (e.g.: 𝑉(cid:2870)
` 𝑅(cid:3415) ; ~2 mV and 2 kΩ) or even the
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`sample-and-hold system with a high impedance load (e.g.: 𝑉(cid:2870)
` 𝑅(cid:3415) ; ~5 mV and 1 MΩ). See id. at
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`67:28–33.
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`
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`III. LEGAL STANDARD
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`A. General principles
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`The general rule is that claim terms are generally given their plain-and-ordinary meaning.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc); Azure Networks, LLC v.
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`CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014), vacated on other grounds, 575 U.S. 959, 959
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`(2015) (“There is a heavy presumption that claim terms carry their accustomed meaning in the
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`relevant community at the relevant time.”) (internal quotation omitted). The plain-and-ordinary
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`meaning of a term is the “meaning that the term would have to a person of ordinary skill in the art
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`in question at the time of the invention.” Phillips, 415 F.3d at 1313.
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`The “only two exceptions to [the] general rule” that claim terms are construed according
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`to their plain-and-ordinary meaning are when the patentee (1) acts as his/her own lexicographer or
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`(2) disavows the full scope of the claim term either in the specification or during prosecution.
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`Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The Federal Circuit
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`has counseled that “[t]he standards for finding lexicography and disavowal are exacting.” Hill-
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`Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). To act as his/her own
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`lexicographer, the patentee must “clearly set forth a definition of the disputed claim term,” and
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`“‘clearly express an intent’ to [define] the term.” Thorner, 669 F.3d at 1365.
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`“Like the specification, the prosecution history provides evidence of how the PTO and the
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`inventor understood the patent.” Phillips, 415 F.3d at 1317. “[D]istinguishing the claimed
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`invention over the prior art, an applicant is indicating what a claim does not cover.” Spectrum Int’l,
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`Inc. v. Sterilite Corp., 164 F.3d 1372, 1379 (Fed. Cir. 1998). The doctrine of prosecution disclaimer
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`precludes a patentee from recapturing a specific meaning that was previously disclaimed during
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`prosecution. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). “[F]or
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`prosecution disclaimer to attach, our precedent requires that the alleged disavowing actions or
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`statements made during prosecution be both clear and unmistakable.” Id. at 1325–26. Accordingly,
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`when “an applicant’s statements are amenable to multiple reasonable interpretations, they cannot
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`be deemed clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315,
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`1326 (Fed. Cir. 2013).
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`A construction of “plain-and-ordinary meaning” may be inadequate when a term has more
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`than one “ordinary” meaning or when reliance on a term’s “ordinary” meaning does not resolve
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`the parties’ dispute. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361
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`(Fed. Cir. 2008). In that case, the Court must describe what the plain-and-ordinary meaning is.
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`Id.
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`“Although the specification may aid the court in interpreting the meaning of disputed claim
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`language . . ., particular embodiments and examples appearing in the specification will not
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`generally be read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571
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`(Fed. Cir. 1988). “[I]t is improper to read limitations from a preferred embodiment described in
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`the specification—even if it is the only embodiment—into the claims absent a clear indication in
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`the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co.
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`v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
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`Although extrinsic evidence can be useful, it is “less significant than the intrinsic record in
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`determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc. v. United States Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)).
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`Technical dictionaries may be helpful, but they may also provide definitions that are too broad or
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`not indicative of how the term is used in the patent. Id. at 1318. Expert testimony may also be
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`helpful, but an expert’s conclusory or unsupported assertions as to the meaning of a term are not.
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`Id.
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`B. Means-Plus-Function Claiming
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`A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6.2
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`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 (Fed. Cir. 2015). In particular,
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`§ 112, ¶ 6 provides that a structure may be claimed as a “means . . . for performing a specified
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`function” and that an act may be claimed as a “step for performing a specified function.” Masco
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`Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
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`The presumption is that terms reciting “means” are subject to § 112, ¶ 6. Williamson, 792
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`F.3d at 1348. But if the term does not use the word “means,” then it is presumed not to be subject
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`to § 112, ¶ 6. Id. “That presumption can be overcome, but only if the challenger demonstrates
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`that the claim term fails to recite sufficiently definite structure or else recites function without
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`reciting sufficient structure for performing that function.” Samsung Elecs. Am., Inc. v. Prisua
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`Eng’g Corp., 948 F.3d 1342 (Fed. Cir. 2020) (internal quotations removed) (citing Williamson,
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`792 F.3d at 1349). “The correct inquiry, when ‘means’ is absent from a limitation, is whether the
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`limitation, read in light of the remaining claim language, specification, prosecution history, and
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`relevant extrinsic evidence, has sufficiently definite structure to a person of ordinary skill in the
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`art.” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014), overruled on other
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`grounds by Williamson, 792 F.3d at 1349.
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`When § 112, ¶ 6 applies, it limits the scope of the functional term “to only the structure,
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`materials, or acts described in the specification as corresponding to the claimed function and
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`equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation
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`involves multiple steps. “The first step . . . is a determination of the function of the means-plus-
`
`
`2 The America Invents Act of 2011 changed the numbering of the relevant subsection from § 112, ¶ 6 to § 112(f).
`Because the substance of the subsection did not change, the undersigned will refer to the relevant subsection as
`§ 112, ¶ 6 in keeping with the numeration at the time of the patent filing.
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`function limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
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`(Fed. Cir. 2001). “[T]he next step is to determine the corresponding structure disclosed in the
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`specification and equivalents thereof.” Id. A “structure disclosed in the specification is
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`‘corresponding’ structure only if the specification or prosecution history clearly links or associates
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`that structure to the function recited in the claim.” Id. The focus of the “corresponding structure”
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`inquiry is not merely whether a structure is capable of performing the recited function, but rather
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`whether the corresponding structure is “clearly linked or associated with the [recited] function.”
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`Id. The corresponding structure “must include all structure that actually performs the recited
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`function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed.
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`Cir. 2005). However, § 112, ¶ 6 does not permit “incorporation of structure from the written
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`description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v. Great
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`Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
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`C. Indefiniteness
`
`“[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc.
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`v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). Patent claims must particularly
`
`point out and distinctly claim the subject matter regarded as the invention. 35 U.S.C.
`
`§ 112, ¶ 2§ 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence, must “inform those
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`skilled in the art about the scope of the invention with reasonable certainty.” Nautilus Inc. v. Biosig
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`Instruments, Inc., 572 U.S. 898, 910 (2014). If it does not, the claim fails § 112, ¶ 2 and is therefore
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`invalid as indefinite. Id. at 901. Whether a claim is indefinite is determined from the perspective
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`of one of ordinary skill in the art as of the time the application was filed. Id. at 911.
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`In the context of a claim governed by § 112, ¶ 6, the claim is indefinite if the claim fails to
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`disclose adequate corresponding structure to perform the claimed functions. Williamson, 792 F.3d
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`at 1351–52. The disclosure is inadequate when one of ordinary skill in the art “would be unable to
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`recognize the structure in the specification and associate it with the corresponding function in the
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`claim.” Id. at 1352. Computer-implemented means-plus-function claims are indefinite unless the
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`specification discloses an algorithm to perform the function associated with the limitation. Noah
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`Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1319 (Fed. Cir. 2012).
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`D. Level of Ordinary Skill in the Art
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`It is well established that patents are interpreted from the perspective of one of ordinary
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`skill in the art. See Phillips, 415 F.3d at 1313 (“[T]he ordinary and customary meaning of a claim
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`term is the meaning that the term would have to a person of ordinary skill in the art in question at
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`the time of the invention, i.e., as of the effective filing date of the patent application.”). The Federal
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`Circuit has advised that the “[f]actors that may be considered in determining the level of skill in
`
`the art include: (1) the educational level of the inventors; (2) the type of problems encountered in
`
`the art; (3) prior art solutions to those problems; (4) the rapidity with which innovations are made;
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`(5) sophistication of the technology; and (6) education level of active workers in the field.” Env’t
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`Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983). “These factors are not
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`exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi
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`Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`
`
`
`IV.
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`LEGAL ANALYSIS
`
`A. Level of ordinary skill in the art
`
`Plaintiff’s Proposal
`(i) a Bachelor of Science degree in electrical
`or computer engineering (or a related
`academic field), and at least two (2)
`additional years of experience in the design
`and development of radio frequency circuits
`
`Defendants’ Proposal
`At least an undergraduate degree in electrical
`engineering or a related subject and two or
`more years of experience in the fields of
`communication systems, signal processing
`and/or RF circuit design. Less work
`
`
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`and/or systems or (at least five (5) years of
`experience and training in the design and
`development of radio frequency circuits
`and/or systems)
`
`
`
`The Parties’ Positions:
`
`experience may be compensated by a higher
`level of education, such as a master’s degree
`
`
`Defendants’ expert, Dr. Matthew Shoemake, contends that:
`
`A person having ordinary skill in the relevant art at the time of the purported
`inventions of the Asserted Patents would have been someone with at least an
`undergraduate degree in electrical engineering or a related subject and two or more
`years of experience in the fields of communication systems, signal processing
`and/or RF circuit design. Less work experience may be compensated by a higher
`level of education, such as a master’s degree.
`
`
`Opening at 2 (citing Opening, Shoemake Decl. at ¶¶ 29–34).
`
`Plaintiff’s expert, Dr. Michael Steer, contends that:
`
`[A] POSITA with respect to the ’706, ’736 and ’673 patents would have (i) a
`Bachelor of Science degree in electrical or computer engineering (or a related
`academic field), and at least two (2) additional years of experience in the design
`and development of radio frequency circuits and/or systems, or (ii) at least five (5)
`years of experience and training in the design and development of radio frequency
`circuits and/or systems.
`
`
`Response, Steer Decl. at ¶ 13.
`
`Plaintiff’s expert, Dr. Steer, disagrees with Defendants’ expert witness regarding the level
`
`of skill required by a POSITA. More specifically, Dr. Steer contends that “because the claims
`
`being construed relate specifically to RF circuit design . . . that a POSITA must have knowledge
`
`and experience within the relevant field, and in particular with the analysis and design of RF
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`circuits.” Id. at ¶ 15. Dr. Steer contends that a degree in electrical engineering does not provide
`
`enough specific knowledge of the narrow subset needed by a POSITA for these patents. Id. Based
`
`on that premise, Dr. Steer contends that Defendants’ expert is not a POSITA as his Ph.D. are
`
`directed to coding, which is a separate and distinct area of study from circuits. Id.
`
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`The Undersigned’s Analysis:
`
`After reviewing the parties’ arguments and considering the applicable law, the undersigned
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`generally agrees with Plaintiff. In particular, the undersigned agrees that the claims appear to be
`
`directed towards RF circuit design. See, e.g., ’673 Patent, Cl. 5. The undersigned, who has
`
`electrical engineering degrees, also agrees with Plaintiff’s argument that electrical engineering is
`
`a broad field and that having an electrical engineering degree is not specific enough when the
`
`claims relate to RF circuit design.
`
`The parties do not appear to provide any evidence regarding “(1) the educational level of
`
`the inventors; (2) the type of problems encountered in the art; (3) prior art solutions to those
`
`problems; (4) the rapidity with which innovations are made; (5) sophistication of the technology;
`
`and (6) educatio