Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 39
`Entered: November 21, 2022
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`TCL INDUSTRIES HOLDINGS CO., LTD. and LG ELECTRONICS INC.,
`Petitioners,1
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2021-009902
`Patent 7,110,444 B1
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`1 The caption is updated to remove Petitioner Hisense Co., Ltd. (“Hisense”)
`because Hisense is no longer a party to this proceeding. See Paper 38
`(Termination due to Settlement After Institution of Trial Only as to Hisense
`Co., Ltd.). The parties shall use this caption (without this footnote) going
`forward.
`2 LG Electronics Inc., who filed a petition in IPR2022-00245, is joined as
`petitioner in this proceeding.
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 39
`Entered: November 21, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`TCL INDUSTRIES HOLDINGS CO., LTD. and LG ELECTRONICS INC.,
`Petitioners,1
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2021-009902
`Patent 7,110,444 B1
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`1 The caption is updated to remove Petitioner Hisense Co., Ltd. (“Hisense”)
`because Hisense is no longer a party to this proceeding. See Paper 38
`(Termination due to Settlement After Institution of Trial Only as to Hisense
`Co., Ltd.). The parties shall use this caption (without this footnote) going
`forward.
`2 LG Electronics Inc., who filed a petition in IPR2022-00245, is joined as
`petitioner in this proceeding.
`
`
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`
`I.
`
`INTRODUCTION
`
`Background
`
`TCL Industries Holdings Co., Ltd. (“TCL”) and Hisense filed a
`Petition (Paper 1, “Pet.”) requesting institution of inter partes review
`(“IPR”) of claims 2–4 (“the Challenged Claims”) of U.S. Patent
`No. 7,110,444 B1 (Ex. 1001, “the ’444 patent”). ParkerVision, Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 8). Applying the standard set
`forth in 35 U.S.C. § 314(a), we instituted an inter partes review as to all
`claims and grounds set forth in the Petition. Paper 9 (“Inst. Dec.”).
`After institution, LG Electronics Inc. (“LG”) filed a petition in
`IPR2022-00245 (challenging the same claims of the ’444 patent on the same
`grounds), and a motion for joinder (seeking to join this proceeding as a
`petitioner). LG Elecs. Inc. v. ParkerVision, Inc., IPR2022-00245 (PTAB
`Dec. 12, 2021), Papers 3 (petition), 4 (motion for joinder). We granted
`institution in IPR2022-00245 and granted LG’s motion for joinder. Id. at
`Paper 9 (PTAB Apr. 12, 2022); IPR2021-00990, Paper 16. Recently,
`Hisense and Patent Owner reached a settlement and this proceeding was
`terminated only as to Hisense. Paper 38. Accordingly, we refer to TCL and
`LG, collectively, as “Petitioners.”
`Also following institution, Patent Owner filed a Patent Owner
`Response (Paper 12, “PO Resp.”), Petitioners filed a Reply to Patent
`Owner’s Response (Paper 20, “Pet. Reply”), and Patent Owner filed a
`Sur-reply (Paper 26, “PO Sur-reply”). Additionally, we granted Petitioners’
`Motion for Routine and/or Additional Discovery (Paper 13), ordering the
`production of Patent Owner’s Final Infringement Contentions. Paper 18
`(Order), 8. And, we denied Patent Owner’s Motion to Strike portions of
`
`2
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`IPR2021-00990
`Patent 7,110,444 B1
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`Petitioners’ Reply (Paper 21), finding that the “Reply does not raise new
`issues, is not accompanied by belatedly presented evidence, and does not
`otherwise exceed the proper scope of [a] reply brief as set forth in 37 C.F.R.
`§ 42.23(b).” Paper 25 (Order), 13. An oral hearing was held on
`September 8, 2022, and the transcript is of record. Paper 34 (“Tr.”).3
`We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a
`Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to
`the patentability of the Challenged Claims. Petitioners bear the burden of
`proving unpatentability of the Challenged Claims. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To
`prevail, Petitioners must prove unpatentability by a preponderance of the
`evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2020).
`Having reviewed the arguments and the supporting evidence, we determine
`that Petitioners have shown, by a preponderance of the evidence, that
`claims 2–4 of the ’444 patent are unpatentable.
`
`Related Proceedings
`
`The parties identify the following as related matters: ParkerVision,
`Inc. v. Intel Corporation, 6:20-cv-00108 (W.D. Tex.); ParkerVision, Inc. v.
`TCL Industries Holdings Co., Ltd. et al., No. 6:20-cv-00945 (W.D. Tex.);
`ParkerVision, Inc. v. Hisense Co., Ltd. et al., No. 6:20-cv-00870 (W.D.
`Tex.); ParkerVision, Inc. v. ZyXEL Communications Corp., No. 6:20-cv-
`
`
`3 Because of a substantial overlap in issues presented, the transcript includes
`oral argument from related case IPR2021-00985, although this proceeding
`and IPR2021-00985 are not consolidated or joined.
`
`3
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`IPR2021-00990
`Patent 7,110,444 B1
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`01010 (W.D. Tex. )4; ParkerVision, Inc. v. LG Electronics Inc., No. 6:21-cv-
`00520 (W.D. Tex.); and Intel Corporation v. ParkerVision, Inc., IPR2020-
`01265 (“the Intel IPR”). Pet. 4–5; Paper 5 (Petitioners’ Updated Mandatory
`Notice), 1; Paper 7 (Patent Owner’s Mandatory Notices), 1. Petitioners also
`identify ParkerVision, Inc. v. Buffalo Inc., No. 6:20-cv-01009 (W.D. Tex.),
`as a related matter involving the ’444 patent. Pet. 5. Additionally,
`Petitioners challenge several claims of U.S. Patent No. 7,292,835 B2 (“the
`’835 patent”), owned by Patent Owner, in IPR2021-00985. Pet. 5; Paper 7,
`1.5
`
`Real Parties in Interest
`
`Petitioners identify TCL; 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.;
`TCL Technology Group Corp.; TTE Technology, Inc.; LG; and LG
`Electronics U.S.A., Inc. as real parties in interest. Pet. 4; LG, IPR2022-
`00245, Paper 3 at 5. Patent Owner identifies ParkerVision, Inc. as the sole
`real party in interest. Paper 7, 1.
`
`
`4 After the parties’ briefing, the district court granted a joint motion to
`dismiss with prejudice and the case is now closed. See Ex. 3001 (Docket
`Entry 25, Order dated Sept. 27, 2001).
`5 Patent Owner identifies the instant proceeding—IPR2021-00990—as a
`related matter, but we understand Patent Owner to refer to IPR2021-00985.
`See Paper 7, 1.
`
`4
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`IPR2021-00990
`Patent 7,110,444 B1
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`The Asserted Grounds of Unpatentability and Declaration
`Evidence
`Petitioners challenge the patentability of claims 2–4 of the ’444 patent
`on the following grounds:
`Claim(s) Challenged
`2, 3
`2–4
`
`35 U.S.C. §6
`103(a)
`103(a)
`
`Reference(s)/Basis
`Tayloe,7 TI Datasheet8
`Lam,9 Enz,10 Tayloe
`
`Pet. 7.
`Additionally, Petitioners support their challenge with a Declaration of
`Matthew B. Shoemake, Ph.D. (Ex. 1002) and a Declaration of Maureen M.
`Honeycutt (Ex. 1009). Patent Owner supports its arguments with a
`Declaration of Dr. Michael Steer (Ex. 2038). Petitioners cross-examined
`Dr. Steer and a transcript of that deposition is of record. Ex. 1021.
`
`The ’444 Patent
`
`The ’444 patent is directed to “a wireless local area network (WLAN)
`that includes one or more WLAN devices (also called stations, terminals,
`access points, client devices, or infrastructure devices) for effecting wireless
`communications over the WLAN.” Ex. 1001, 2:10–14. The ’444 patent
`
`
`6 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the
`’444 patent has an effective filing date before March 16, 2013, we apply the
`pre-AIA version of the statutory basis for unpatentability.
`7 U.S. Patent No. 6,230,000 B1, issued May 8, 2001 (Ex. 1004, “Tayloe”).
`8 SN74CBT3253 Dual 1-of-4 FET Multiplexer/Demultiplexer (rev. ed.
`May 1998) (Ex. 1005, “TI Datasheet”).
`9 U.S. Patent No. 5,937,013, issued Aug. 10, 1999 (Ex. 1006, “Lam”).
`10 Circuit Techniques for Reducing the Effects of Op-Amp Imperfections:
`Autozeroing, Correlated Double Sampling, and Chopper Stabilization,
`Proceedings of the IEEE, Vol. 84, No. 11, Nov. 1996 (Ex. 1007, “Enz”).
`
`5
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`IPR2021-00990
`Patent 7,110,444 B1
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`explains that “[t]he WLAN device includes at least an antenna, a receiver,
`and a transmitter . . . . The WLAN receiver includes at least one universal
`frequency translation module that frequency down-converts a received
`electromagnetic (EM) signal.” Id. at 2:14–22.
`Figure 70A is reproduced below:
`
`
`Figure 70A of the ’444 patent “illustrates an IQ [in-phase quadrature]
`receiver having shunt UFT [universal frequency translation] modules.”
`Ex. 1001, 5:34–35. The ’444 patent explains that “I/Q modulation
`receiver 7000 receives, down converts, and demodulates a[n] I/Q modulated
`RF [radio frequency] input signal 7082 to an I baseband output signal 7084,
`and a Q baseband output signal 7086.” Id. at 35:51–54; see id. at 35:60–62
`(Antenna 7072 receives and outputs I/Q modulated RF input signal 7082.).
`
`6
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`Patent 7,110,444 B1
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`The ’444 patent states that, “[w]hen present, LNA 7018 amplifies I/Q
`modulated RF input signal 7082, and outputs amplified I/Q signal 7088.”
`Id. at 35:63–64. Thereafter, “[f]irst UFD [universal frequency down-
`conversion] module 7002 receives amplified I/Q signal 7088 . . . [,] down-
`converts the I-phase portion of the amplified input I/Q signal 7088 according
`to an I control signal 7090 . . . [, and] outputs an I output signal 7098.” Id. at
`35:65–36:2. Similarly, UFD module 7006 “receives amplified I/Q
`signal 7088[,]” “down-converts the inverted I-phase signal portion of
`amplified input I/Q signal 7088 according to an inverted I control
`signal 7092[,]” and “outputs an inverted I output signal 7001.” Id. at 36:33–
`37. Thereafter, “[f]irst differential amplifier 7020 receives filtered I output
`signal 7007 . . . subtracts filtered inverted I output signal 7007 from filtered I
`output signal 7001, amplifies the result, and outputs I baseband output
`signal 7084.” Id. at 37:3–8.
`The ’444 patent’s first and second UFD modules in Figure 70A
`include capacitors 7074 and 7076, respectively, and UFT modules 7026 and
`7038, respectively. Ex. 1001, 36:3–5 (first UFD module 7002 comprises
`first storage module 7024 and first UFT module 7026), 36:14–15 (first
`storage module 7024 comprises first capacitor 7074), 36:38–40 (second
`UFD module 7006 comprises second storage module 7036 and second UFT
`module 7038), 36:50–51 (second storage module 7036 comprises second
`capacitor 7076).
`
`7
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`Patent 7,110,444 B1
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`
`Figure 1B is reproduced below:
`
`
`Figure 1B of the ’444 patent “is a more detailed diagram of a universal
`frequency translation (UFT) module.” Ex. 1001, 2:56–58. The ’444 patent
`explains that, “[g]enerally, the UFT module 103 includes a switch 106
`controlled by a control circuit 108.” Id. at 8:62–64 (noting that switch 106 is
`referred to as a controlled switch); see id. at 36:5–7 (first UFT module,
`shown in Figure 70A, contains a switch that opens and closes as a function
`of I control signal 7090), 36:40–42 (second UFT module, also shown in
`Figure 70A, contains a switch that opens and closes as a function of inverted
`I control signal 7092).
`
`8
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`Patent 7,110,444 B1
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`
`The ’444 patent includes two alternative configurations of switches
`and capacitors in UFD modules (Ex. 1001, 9:43–57), as shown in
`Figures 20A and 20A-1 reproduced below:
`
`
`
`Figures 20A and 20A-1 of the ’444 patent “are example aliasing modules.”
`Ex. 1001, 3:50–51. The ’444 patent explains that, in Figure 20A,
`switch 2008 is in series with input signal 2004 and capacitor 2010 is shunted
`to ground; in Figure 20A-1, however, capacitor 2010 is in series with input
`signal 2004 and switch 2008 is shunted to ground. Id. at 9:48–57 (also
`noting that “[t]he electronic alignment of the circuit components is
`flexible”).
`The ’444 patent states that “[t]he down-conversion of an EM signal by
`aliasing the EM signal at an aliasing rate is fully described in . . . U.S.
`Pat[ent] No. 6,061,551 [(‘the ’551 patent’)] . . . , the full disclosure of which
`is incorporated herein by reference.” Ex. 1001, 9:32–38; see id. at 34:54–58
`(“Down-conversion utilizing a UFD module (also called an aliasing module)
`is further described in . . . [the ’551 patent].”).11
`
`
`11 The ’551 patent is Exhibit 2029 in this proceeding.
`
`9
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`IPR2021-00990
`Patent 7,110,444 B1
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`
`Illustrative Claims
`
`Claims 2 and 3, the independent claims challenged in this proceeding,
`are illustrative of the claimed subject matter and are reproduced below with
`Petitioners’ bracketing added for reference:
`2.
`[2-pre] A wireless modem apparatus, comprising:
`[2A] a receiver for frequency down-converting an input
`signal including,
`[2B] a first frequency down-conversion module to
`down-convert the input signal, wherein said first
`frequency down-conversion module down-converts said
`input signal according to a first control signal and outputs
`a first down-converted signal;
`[2C] a second frequency down-conversion module
`to down-convert said input signal, wherein said second
`frequency down-conversion module down-converts said
`input signal according to a second control signal and
`outputs a second down-converted signal; and
`[2D] a subtractor module that subtracts said second
`down-converted signal from said first down-converted
`signal and outputs a down-converted signal;
`[2E] wherein said first frequency down-conversion
`module under-samples said input signal according to said first
`control signal, and [2F] said second frequency down-
`conversion module under-samples said input signal according
`to said second control signal.
`3.
`[3-pre] A wireless modem apparatus, comprising:
`[3A] a receiver for frequency down-converting an input
`signal including,
`[3b] a first frequency down-conversion module to
`down-convert the input signal, wherein said first
`frequency down-conversion module down-converts said
`input signal according to a first control signal and outputs
`a first down-converted signal;
`
`10
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`IPR2021-00990
`Patent 7,110,444 B1
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`
`[3C] a second frequency down-conversion module
`to down-convert said input signal, wherein said second
`frequency down-conversion module down-converts said
`input signal according to a second control signal and
`outputs a second down-converted signal; and
`[3D] a subtractor module that subtracts said second
`down-converted signal from said first down-converted
`signal and outputs a down-converted signal;
`[3E] wherein said first and said second frequency down-
`conversion modules each comprise a switch and a storage
`element.
`Ex. 1001, 60:47–67, 61:1–18.
`
`Level of Ordinary Skill in the Art
`
`Petitioners, supported by Dr. Shoemake’s testimony, propose that a
`person of ordinary skill in the art at the time of the invention would have had
`“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.” Pet. 35 (citing
`Ex. 1002 ¶¶ 31–36). Petitioners explain that “[l]ess work experience may be
`compensated by a higher level of education, such as a master’s degree.” Id.
`(citing Ex. 1002 ¶¶ 31–36).
`In the Institution Decision, we noted that Patent Owner had not
`expressed a position on the level of ordinary skill in the art in the
`Preliminary Response, and, based on the preliminary record, we adopted
`Petitioners’ unopposed position, finding it consistent with the level of
`ordinary skill in the art reflected by the ’444 patent and the prior art of
`record. Inst. Dec. 10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978)).
`
`11
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`IPR2021-00990
`Patent 7,110,444 B1
`
`
`In the Patent Owner Response, Patent Owner, supported by
`Dr. Steer’s testimony, proposes that a person of ordinary skill in the art at
`the time of the invention would have had
`(a) a Bachelor of Science degree in electrical or computer
`engineering (or a related academic field), and at least
`two (2) additional years of work experience in the design and
`development of radio frequency circuits and/or systems, or
`(b) at least five (5) years of work experience and training in the
`design and development of radio frequency circuits and/or
`systems.
`PO Resp. 4 (citing Ex. 2038 ¶ 24). Neither Patent Owner nor Dr. Steer
`explain why their proposal materially differs from that proposed by
`Petitioners.
`Patent Owner’s option (a) is substantially the same as Petitioners’
`proposal—both require a bachelor’s degree in the same or a related subject
`and two additional years of related work experience. Patent Owner’s
`option (b) adds an additional option based on work experience in lieu of a
`formal degree.
`Neither party contends that the difference in their proposals affects the
`outcome of this proceeding and we do not find that it does. Nonetheless, on
`the full record before us, we find that our identification of the level of
`ordinary skill in art in the Institution Decision as well as Patent Owner’s
`option (b) are supported by the prior art of record, the ’444 patent, and the
`opinion of Dr. Steer. Accordingly, we modify our preliminary finding to
`include option (b) from Patent Owner’s proposal. Thus, we find that one of
`ordinary skill in the art would have had at least a bachelor’s degree in
`electrical engineering or a related subject and two or more years of
`experience in the field of RF circuit design, or at least five years of work
`
`12
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`experience and training in the design and development of RF circuits and/or
`systems. We also find that less work experience may be compensated by a
`higher level of education, such as a master’s degree.
`
`II. CLAIM CONSTRUCTION
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2020). The
`claim construction standard includes construing claims in accordance with
`the ordinary and customary meaning of such claims, as would have been
`understood by one of ordinary skill in the art at the time of the invention.
`See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en
`banc). In construing claims in accordance with their ordinary and customary
`meaning, we take into account the specification and prosecution history.
`Phillips, 415 F.3d at 1315–17.
`If the specification “reveal[s] a special definition given to a claim
`term by the patentee that differs from the meaning it would otherwise
`possess[,] . . . the inventor’s lexicography governs.” Phillips, 415 F.3d at
`1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`(Fed. Cir. 2002)). Another exception to the general rule that claims are
`given their ordinary and customary meaning is “when the patentee disavows
`the full scope of a claim term either in the specification or during
`prosecution.” Uship Intellectual Props., LLC v. United States, 714 F.3d
`1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Computer Entm’t Am.,
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
`Additionally, only terms that are in controversy need to be construed,
`and these need be construed only to the extent necessary to resolve the
`
`13
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`IPR2021-00990
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`controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of
`an inter partes review).
`
`“storage element”
`
`In the Institution Decision, we did not construe any claim terms
`expressly because none of the terms were in dispute. Inst. Dec. 11. In the
`briefing following institution, Patent Owner proposed a construction for the
`term “storage element,” see, e.g., PO Resp. 36–38, and it became clear that
`the parties dispute the meaning of the term. Additionally, because many of
`Patent Owner’s arguments hinge on the meaning of this term, its proper
`construction is important to address the issues presented in this proceeding.
`Further, the parties’ arguments rely, almost exclusively, on disclosures in the
`’551 patent, incorporated by reference into the ’444 patent.
`In the final written decision in IPR2020-01265 (Ex. 2016), we
`construed the term “storage element,” relying on its use in the ’551 patent.
`In IPR2020-01265, after considering the parties’ extensive arguments as
`well as prior constructions in related district court litigation, we construed
`“storage element” to mean “an element of a system that stores non-
`negligible amounts of energy from an input EM signal.” Ex. 2016, 41.
`Critical to that determination was the finding that the patentees acted as their
`own lexicographers by defining the systems to which “storage modules”
`refer to. Specifically, we explained that the ’551 patent expressly states
`“[s]torage modules and storage capacitances, on the other hand, refer to
`
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`systems that store non-negligible amounts of energy from an input EM
`signal.”12 Id. at 36 (emphasis added) (citing ’551 patent,13 66:59–67).
`Additionally, we also explained that in a prior proceeding challenging claims
`of the ’551 patent before the Board—IPR2014-00948—Patent Owner
`represented that the ’551 patent “provides an explicit definition” and
`“explicitly defines a storage module.” Id. at 39 (citing Ex. 1032,14 21). We
`found that “Patent Owner’s acknowledgement that the ’551 patent provides
`an explicit definition of ‘storage module’ directly supports our determination
`that the patentees acted as lexicographers.” Id. at 40.
`In this proceeding, in addition to raising substantially the same
`arguments addressed in IPR2020-01265, Patent Owner submitted a Claim
`Construction Order and Memorandum in Support Thereof from
`ParkerVision, Inc. v. LG Electronics, Inc., No. 6:21-cv-00520-ADA (W.D.
`Tex. June 21, 2022) (Doc. 55) (Ex. 2040), and a Special Master’s Report and
`Recommendation Regarding Claim Construction from ParkerVision, Inc. v.
`Hisense Co., No. 6:20-cv-00870-ADA (W.D. Tex. Aug. 29, 2022) (Doc. 72)
`
`
`12 It is undisputed that “storage element” (recited in the ’444 patent) and
`“storage module” (recited in the ’551 patent) are synonymous. See PO
`Resp. 37–38 (referring to storage module); Pet. Reply 4 (consenting to the
`adoption of the Board’s construction of “storage element” from IPR2020-
`01265, which relied on the use of “storage module” in the ’551 patent).
`13 In IPR2020-01265, the ’551 patent was Exhibit 2007.
`14 Exhibit 1032 from IPR2020-01265 is Patent Owner’s Preliminary
`Response (Paper 7) from IPR2014-00948, which was not filed as an exhibit
`in this proceeding.
`
`15
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`(Ex. 2043).15 Each of these claim construction decisions construes “storage
`module” to mean “a module of an energy transfer system that stores
`non-negligible amounts of energy from an input electromagnetic signal.”
`Ex. 2043, 33; see Ex. 2040, 16 (district court declining to modify its
`previous construction of “storage module,” which was limited to an “energy
`transfer system”). In so determining, each of the district court’s decisions
`finds that the patentees did not act as their own lexicographers. See
`Ex. 2040, 19; Ex. 2043, 32. Patent Owner advocates that we adopt the same
`construction here. PO Resp. 36–38.
`Petitioners assert that “[u]nder any reasonable construction, a
`capacitor constitutes a ‘storage element.’” Pet. Reply 2 (citing Pet. 59;
`Ex. 1002 ¶ 169). Petitioners rely on the ’441 patent’s statement that a
`storage module is a capacitor. Id. at 2–3 (citing Pet. 59; Ex. 1002 ¶ 169;
`Ex. 1001, 34:22–23 (“The storage module 6704A is a capacitor 6706A.”),
`36:14–15 (“In an embodiment, first storage module 7024 comprises a first
`capacitor 7404.”)). Petitioners contend that “[t]his is consistent with [Patent
`Owner’s] position on infringement, where [Patent Owner] alleges repeatedly
`across multiple related patents that a ‘storage element’ in the accused
`products is simply ‘one or more capacitors.’” Id. at 3 (citing Ex. 1022
`¶¶ 127–131, 138–140, 150; Ex. 1023 ¶¶ 75, 92, 98). Nonetheless,
`“Petitioners do not object to adoption of the Board’s construction for
`‘storage element’ from IPR2020-01265.” Id. at 4.
`
`
`15 Patent Owner also submitted the same Special Master’s Report and
`Recommendation Regarding Claim Construction from ParkerVision, Inc. v.
`TCL Industries Holdings Co., No. 6:20-cv-00945-ADA (W.D. Tex. Aug. 29,
`2022) (Doc. 68) (Ex. 2042).
`
`16
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`IPR2021-00990
`Patent 7,110,444 B1
`
`
`We have reviewed and considered the district court’s construction
`(which limits “storage element” to an “energy transfer system”), but we are
`not persuaded that our construction from IPR2020-01265 should be altered.
`We expressly adopt and incorporate by reference our analysis from
`IPR2020-01265 and do not repeat it in full here. We do, however, take this
`opportunity to provide additional reasoning in support of our prior
`determination based on the arguments and evidence presented in this
`proceeding.
`The ’551 patent provides the following, which formed the focal point
`of Patent Owner’s argument in IPR2014-00948 and which we found
`provides a lexicographic definition of “storage module”/”storage element” in
`IPR2020-01265:
`The terms storage module and storage capacitance, as used
`herein, are distinguishable from the terms holding module and
`holding capacitance, respectively. Holding modules and
`holding capacitances, as used above, identify systems that store
`negligible amounts of energy from an under-sampled input EM
`signal with the intent of “holding” a voltage value. Storage
`modules and storage capacitances, on the other hand, refer to
`systems that store non-negligible amounts of energy from an
`input EM signal.
`Ex. 2029, 66:59–67 (emphases added); see Ex. 2016, 39–40 (discussing
`Patent Owner’s prior arguments to construe “storage module” in IPR2014-
`00948). When defining certain terms in a section titled “General
`Terminology,” the ’551 patent repeatedly uses the phrase “when used
`herein” in combination with the phrase “refer(s) to.” See, e.g., Ex. 2029,
`13:56–15:27 (mentioning a term followed by “when used herein,” followed
`by “refers to,” followed by a definition). For example, the ’551 patent
`states, “[t]he term digital signal, when used herein, refers to a signal that
`
`17
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`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`changes between discrete states, as contrasted to a signal that is continuous.”
`Id. at 15:7–9. As shown, the ’551 patent defines “digital signal” by stating
`“when used herein” followed by “refers to.” And, the same sentence also
`provides a comparison between “digital signal” and a signal that is
`continuous. Even though the passage describing “storage module” is not
`listed under the “General Terminology” section of the ’551 patent, the
`passage provides the same indications that the patentees clearly and
`unambiguously intended to define the term “storage module” by stating “as
`used herein” and “refer to”—hallmarks that the patentees were providing a
`lexicographic definition of the term. Vasudevan Software, Inc. v.
`MicroStrategy, Inc., 782 F.3d 671, 679 (Fed. Cir. 2015) (“An applicant’s use
`of the phrase ‘refers to’ generally indicates an intention to define a term.”)
`(citing In re Imes, 778 F.3d 1250, 1252–53 (Fed. Cir. 2015); Microsoft
`Corp. v. Int’l Trade Comm’n, 731 F.3d 1354, 1360 (Fed. Cir. 2013); Linear
`Tech. Corp. v. Int’l Trade Comm’n, 566 F.3d 1049, 1054 (Fed. Cir. 2009)).
`Additionally, as with the term “digital signal,” the above-passage provides a
`comparison between “storage module” and “holding module” and uses the
`definitions of the terms to compare and contrast them.
`“To act as its own lexicographer, a patentee must ‘clearly set forth a
`definition of the disputed claim term’ other than its plain and ordinary
`meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at
`1366). “It is not enough for a patentee to simply disclose a single
`embodiment or use a word in the same manner in all embodiments, the
`patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing
`Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed.
`Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed.
`
`18
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`
`IPR2021-00990
`Patent 7,110,444 B1
`
`Cir. 2009)). That is precisely what the patentees did in the above-passage.
`Specifically, we find that they clearly set forth a definition that is different
`than the plain and ordinary meaning and, in so doing, clearly expressed an
`intent to redefine the term. That the patentees intended to redefine the term
`“storage module” is clearly expressed by the use of “as used herein”16 and
`“refers to” in the above-passage and is consistent with the patentees’ use of
`these same phrases when defining other terminology in the ’551 patent, as
`discussed above.
`We also do not agree with Patent Owner’s argument that this passage
`in the ’551 patent does not provide a lexicographic definition for at least two
`reasons. First, in related case IPR2021-00985, Patent Owner argues that the
`patent-at-issue in that proceeding (the ’835 patent) provides a definition of
`the term “cable modem” and points to the following from the ’835 patent
`specification: “Cable Modems refer to modems that communicate across
`ordinary cable TV [television] network cables” (IPR2021-00985, Ex. 1001,
`36:19–20 (emphasis added)). During the oral argument, Patent Owner stated
`that “we just used the same definition that was in the spec. . . . We just took
`the same exact definition from the spec” (Tr. 83:16–20 (emphases added)).
`In other words, Patent Owner’s acknowledgement that the ’835 patent
`provides a definition of the term “cable modem” undermines Patent Owner’s
`argument that the patentees did not define “storage module” even though the
`patentees used the same phrase “refer(s) to.”
`Second, Patent Owner has absolutely no (even remotely) colorable
`explanation as to why it repeatedly argued, in IPR2014-00948, that the
`
`
`16 There is no substantive difference between the phrase “when used herein”
`and “as used herein.”
`
`19
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`IPR2021-00990
`Patent 7,110,444 B1
`
`’551 patent “provides an explicit definition” and “explicitly defines a storage
`module.” See Ex. 2016, 39–40 (discussing Patent Owner’s prior arguments
`to construe “storage module” in IPR2014-00948). The only plausible
`explanation is that Patent Owner has simply changed positions to suit its
`current litigation strategy. But that is not how claim construction works.
`There either is a lexicographic definition or there is not, regardless of the
`claim construction standard applied (i.e., broadest reasonable interpretation
`v. the same claim construction standard that would be used to construe the
`claims in a civil action under 35 U.S.C. § 282(b)). In IPR2014-00948,
`Patent Owner argued that there was a lexicographic definition and
`emphasized the same exact statements in the above-passage from the
`’551 patent. That passage has not changed and provides definitive
`confirmation of the patentees’ intent to provide a lexicographic definition of
`“storage module” for the reasons discussed above.17
`In its Sur-reply, Patent Owner argues that the above-passage from the
`’551 patent “is comparative, not definitional.” PO Sur-reply 4. We agree
`that it is comparative, but it is also definitional. These are not mutually
`exclusive concepts. And, the above-discussion reflects that the ’551 patent
`defines other terms by providing a definition and comparing that definition
`to definitions of other terms.
`Accordingly, for the reasons explained in detail in the Board’s final
`written decision in IPR2020-01265 and as further explained above, we find
`that the patentees clearly and unmistakably set forth a definition of “storage
`
`
`17 None of the district court claim construction decisions address Patent
`Owner’s representations, in IPR2014-00948, that the ’551 patent explicitly
`defines “storage module.”
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