IPR2024-00150
`U.S. Patent No. 7,292,835
`Patent Owner’s Preliminary Response
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`
`
`MEDIATEK INC.
`Petitioner,
`
`v.
`
`PARKERVISION, INC.
`Patent Owner.
`
`U.S. Patent No. 7,292,835
`Issue Date: November 6, 2007
`Title: WIRELESS AND WIRED CABLE MODEM APPLICATIONS OF
`UNIVERSAL FREQUENCY TRANSLATION TECHNOLOGY
`__________________________________________________________________
`
`Inter Partes Review No. IPR2024-00150
`
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF UNITED STATES PATENT NO. 7,292,835
`
`
`U.S. Patent No. 7,292,835
`Patent Owner’s Preliminary Response
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`
`
`MEDIATEK INC.
`Petitioner,
`
`v.
`
`PARKERVISION, INC.
`Patent Owner.
`
`U.S. Patent No. 7,292,835
`Issue Date: November 6, 2007
`Title: WIRELESS AND WIRED CABLE MODEM APPLICATIONS OF
`UNIVERSAL FREQUENCY TRANSLATION TECHNOLOGY
`__________________________________________________________________
`
`Inter Partes Review No. IPR2024-00150
`
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF UNITED STATES PATENT NO. 7,292,835
`
`
`
`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE BOARD SHOULD EXERCISE ITS DISCRETION AND DENY
`INSTITUTION UNDER 35 U.S.C. § 314(a) AND 37 C.F.R. § 42.108(b) .... 2
`
`Page
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`
`
`
`
`
`
`
`
`
`
`
`
`Factor 1—The District Court Has Not Granted A Stay, And There Is
`No Evidence That The District Court Will Grant A Stay Even If A
`Proceeding Is Instituted ......................................................................... 4
`
`Factor 2—Because The Texas Cases Will Be Tried Before The
`Board’s Projected Statutory Deadline For A Final Written Decision,
`The Board Should Deny Institution ...................................................... 7
`
`Factor 3—The Parties And The Court Have Invested Significant
`Resources In The Texas Cases, Favoring Discretionary Denial ........... 8
`
`Factor 4—Significant Overlap Between Issues Raised In The Petition
`And In The Texas Case Supports Denial ............................................ 11
`
`Factor 5—The Petitioner and The Defendant in The Parallel
`Proceedings Are the Same Party, Supporting Denial ......................... 12
`
`Factor 6—Other Circumstances That Impact The Board’s Exercise Of
`Discretion Show That Denial Is Appropriate At This Time ............... 12
`
`III. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER FAILS
`TO ARTICULATE OBVIOUSNESS THEORIES WITH
`PARTICULARITY ........................................................................................ 13
`
`IV. CONCLUSION .............................................................................................. 15
`
`
`
`
`
`i
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) ......................................passim
`
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 (PTAB May 13, 2020) ................................. 10, 11, 12
`
`Deere & Co. v. Gramm,
`IPR2015-00898, Paper 7 (PTAB Sept. 23, 2015) ............................................... 15
`
`E-One, Inc. v. Oshkosh Corp.,
`IPR2019-00161, Paper 16 (PTAB May 15, 2019) ......................................... 7, 10
`
`Edwards Lifesciences Corp. et al. v. Aortic Innovations LLC,
`No. IPR2023-01325, Paper 12 (PTAB Feb. 22, 2024) ....................................... 14
`
`Google LLC v. Personalized Media Commc’ns, LLC,
`IPR2020-00720, Paper 16 (PTAB Aug. 31, 2020) ............................................... 3
`
`Intel Corp. v. VLSI Tech. LLC,
`IPR2020-00106, Paper 17 (PTAB May 5, 2020) ................................................. 8
`
`Kerr Machine Co. d/b/a Kerr Pumps v. Vulcan Industrial Holdings,
`LLC,
`6:20-cv-00200 (W.D. Tex. Aug. 2, 2020) ............................................................ 6
`
`Kingbright Elecs. Co. v. Cree Inc.,
`No. IPR2015-00750, Paper 8 (PTAB Aug. 10, 2015) ........................................ 14
`
`Luxshare Precision Industry v. Amphenol Corp.,
`IPR2022-00132, Paper 10 (PTAB May 3, 2022) ................................................. 6
`
`Multimedia Content Mgmt. LLC v. Dish Network Corp.,
`No. 6:18-cv-00207-ADA, 2019 U.S. Dist. LEXIS 198875
`(W.D. Tex. Jan. 10, 2019) ................................................................................. 5, 6
`
`NetApp, Inc. v. Realtime Data LLC,
`IPR2017-01195, Paper 9 (PTAB Oct. 12, 2017) .................................................. 7
`
`ii
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`Next Caller, Inc. v. TrustID, Inc.,
`IPR2019-00961, Paper 10 (PTAB Oct. 16, 2019) ................................................ 7
`
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ................................................. 4
`
`Nine Energy Service Inc. v. MCS Multistage Inc.,
`IPR2020-01615, Paper 18 (PTAB Mar. 24 2021) .............................................. 10
`
`Nintendo Co. v. Gamevice, Inc.,
`IPR2020-01197, Paper 13 (PTAB Jan. 12, 2021) ................................................ 6
`
`Sonrai Memory Ltd. v. Kingston Tech. Co., Inc.,
`No. 6:21-cv-1284-ADA, slip op. (W.D. Tex. Oct. 18, 2022) ............................... 5
`
`Statutes
`
`35 U.S.C. § 312(a)(3) ........................................................................................... 2, 13
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314(a) ............................................................................................. 1, 2, 3
`
`35 U.S.C. § 316(b) ..................................................................................................... 3
`
`Other Authorities
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.108(b) ................................................................................................ 2
`
`
`
`
`
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`iii
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No.
`2001
`
`Description
`Complaint, ParkerVision, Inc. v. MediaTek Inc. et al., Case
`No. 6:22-cv-01163-ADA (WDTX)
`
`Agreed Scheduling Order, ParkerVision, Inc. v. MediaTek
`Inc. et al., Case No. 6:22-cv-01163-ADA (WDTX)
`
`Docket Entry 63, ParkerVision, Inc. v. MediaTek Inc. et al.,
`Case No. 6:22-cv-01163-ADA (WDTX)
`
`Dani Kass, “Catching Up On Patent Litigation With Judge
`Albright,” LAW360 (Mar. 14, 2023)
`
`Sonrai Memory Ltd. v. Kingston Tech. Co., Inc., Case No.
`6:21-cv-1284-ADA, Order Denying Kingston Tech. Co. and
`Kingston Tech. Corp.’s Opposed Motion to Stay Pending
`Resolution of Inter Partes Review, Dkt. 94 (W.D. Tex., Oct.
`18, 2022)
`Docket Order, Kerr Machine Co. d/b/a Kerr Pumps v.
`Vulcan Industrial Holdings, LLC, No. 6:20-cv-00200 (W.D.
`Tex. Aug. 2, 2020)
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`
`
`
`iv
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, ParkerVision Inc.
`
`(“ParkerVision”) submits this Preliminary Response (“Response”) and respectfully
`
`requests the Board to deny the Petition for Inter Partes Review (“Petition”) filed
`
`by MediaTek Inc. (“Petitioner”) challenging claims 1-5 of U.S. Patent No.
`
`7,292,835 (“the ’835 patent”).
`
`ParkerVision requests the Board exercise its discretion under 35 U.S.C. §
`
`314(a) to deny institution of the Petition because of the advanced state of parallel
`
`litigation pending in the Western District of Texas, No. 6:22-cv-01163-ADA (“the
`
`Texas case”). The ’835 patent is one of four patents asserted in a complaint filed
`
`fifteen months ago. (Ex. 2001). In that case, preliminary infringement and
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`invalidity contentions have already been exchanged, a Markman hearing was held
`
`on January 26, 2024, and trial is set for December 9, 2024 (Exs. 2002, 2003)—
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`approximately five months before a final written decision would be due if the
`
`Board were to institute. Notably, Petitioner raises the same invalidity issues in the
`
`district court as contained in its IPR Petition.
`
`Given the current posture and schedule of the underlying Texas case, the
`
`factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
`
`Mar. 20, 2020) (precedential) weigh in favor of denying institution of an IPR. The
`
`Judge in the Texas cases, Judge Alan D Albright, will not stay the litigation, even
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`1
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`if the Petition is instituted. The ’835 patent is but one of four patents being
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`litigated, and the Court has already set a trial date despite being aware of the filing
`
`of Petitioner’s IPR petition. The Court and parties have already invested significant
`
`resources in litigating the Texas case, and despite what efficiencies Petitioner may
`
`urge, the Board’s expenditure of resources will hardly make a dent in simplifying
`
`the parallel litigation.
`
`Furthermore, MediaTek’s obviousness analysis improperly relies on various
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`references not formally identified in any of the grounds of unpatentability,
`
`including Thacker, Goldberg, ITU-T J.83, and AAPA. MediaTek’s attempt to raise
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`unasserted grounds for invalidity violates the notice requirement of 35 U.S.C. §
`
`312(a)(3). Indeed, if these additional references are necessary to support
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`unpatentability, Petitioner should have identified them in the stated grounds. But
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`MediaTek failed to do so here; accordingly, Grounds I and II should not be
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`instituted.
`
`Based on the Board’s precedential decisions discussed below, and for the
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`foregoing reasons, institution of the Petition should be denied.
`
`II. THE BOARD SHOULD EXERCISE ITS DISCRETION AND DENY
`INSTITUTION UNDER 35 U.S.C. § 314(a) AND 37 C.F.R. § 42.108(b)
`
`ParkerVision sued Petitioner for infringement of the ’835 patent in the
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`Western District of Texas more than fifteen months ago on November 10, 2022.
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`2
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`(See Ex. 2001). As such, the Texas case is in an advanced stage and a jury trial will
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`occur approximately five months before this Board issues a final written decision.
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`By the May 2025 deadline for this Board’s Final Written decision, Judge Albright
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`will have entered a Claim Construction Order covering terms from the ’835 patent,
`
`ruled on dipositive motions, and conducted a jury trial. (See Ex. 2002). In fact, as
`
`of the filing of this response, the parties have already exchanged preliminary
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`infringement and invalidity contentions, completed claim construction briefing,
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`and had a Markman hearing on disputed claim terms.
`
`In the Board’s precedential Fintiv decision, the Board set forth six factors for
`
`determining “whether efficiency, fairness, and the merits support the exercise of
`
`authority to deny institution in view of an earlier trial date in the parallel
`
`proceeding.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5-6 (PTAB
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`Mar. 20, 2020) (precedential). When evaluating these factors, the Board takes a
`
`holistic view of whether efficiency and integrity of the system are best served by
`
`denying or instituting review.1 Google LLC v. Personalized Media Commc’ns,
`
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`1 Efficient administration of matters weighs against institution in this case. See 35
`
`U.S.C. § 316(b). There is no question that the Board has the discretion to deny
`
`institution under 35 U.S.C. § 314(a) and that the facts here fit with denial under the
`
`Board’s Fintiv precedent and related line of decisions.
`
`3
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`
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`LLC, IPR2020-00720, Paper 16 at 5 (PTAB Aug. 31, 2020) (citing Fintiv,
`
`IPR2020-00019, Paper 11 at 5-6). Here, all six Fintiv factors weigh in favor of
`
`denying institution. See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`
`Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential) (“Institution of an inter partes
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`review under these circumstances would not be consistent with ‘an objective of the
`
`AIA . . . to provide an effective and efficient alternative to district court
`
`litigation.’” (citation omitted)). As such, the Board should exercise its discretion
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`and deny institution here.
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`
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`Factor 1—The District Court Has Not Granted A Stay, And
`There Is No Evidence That The District Court Will Grant A Stay
`Even If A Proceeding Is Instituted
`
`Petitioner has not asked for a stay pending inter partes review, and there is
`
`no evidence that Judge Albright would grant a stay even if an IPR were instituted.
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`To the contrary, Judge Albright has made it clear that he will not stay a case where,
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`as here, the court can resolve the case as quickly as the Board can:
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`[T]here’s no unfairness to either side by not staying a case for the
`PTAB when I can try the case as quickly as they can resolve it….
`And so far, I think that’s proven to be true.
`
`(Ex. 2004). Indeed, “Judge Albright almost never stays proceedings to let the
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`PTAB make its decision first.” Id. at 2.
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`4
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`The district court has expressly stated that it considers issue simplification
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`“the most important factor” in deciding whether to stay patent litigation2—and
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`here, a stay would not simplify anything. Trial in the district court case against
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`Petitioner is scheduled for December 9, 2024 (Ex. 2002). The Board’s final written
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`decision, on the other hand, would not be expected until five months after a jury
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`trial, in late May 2025.
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`Indeed, Judge Albright’s prior decisions on opposed motions to stay pending
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`IPR indicate that a stay of the Texas case would be denied. In Multimedia Content
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`Management LLC v. DISH Network LLC, for example, Judge Albright denied a
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`motion to stay with similar facts to the Texas case. There, (1) the defendant filed
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`IPR petitions ten months after filing of the complaint, (2) the court issued a claim
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`construction ruling before the patent owner filed a Preliminary Response, and (3) a
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`jury trial was set three months before the statutory deadline for the Board to issue a
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`final written decision. Multimedia Content Mgmt. LLC v. Dish Network Corp., No.
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`2 See, e.g., Ex. 2005, Sonrai Memory Ltd. v. Kingston Tech. Co., Inc., No. 6:21-cv-
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`1284-ADA, slip op. at *4-5 (W.D. Tex. Oct. 18, 2022) (denying a stay following
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`IPR institution because issue simplification was the “most important factor” and
`
`the Court had already held a Markman hearing and “expended significant
`
`resources”).
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`5
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`6:18-cv-00207-ADA, 2019 U.S. Dist. LEXIS 198875, at *2 (W.D. Tex. Jan. 10,
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`2019). In denying defendant’s motion to stay, Judge Albright found that a stay
`
`would prejudice the plaintiff, ignore the advanced state of the proceedings, and fail
`
`to simplify the issues. Id. Likewise in Kerr Machine Co. d/b/a Kerr Pumps v.
`
`Vulcan Industrial Holdings, LLC, 6:20-cv-00200 (W.D. Tex. Aug. 2, 2020), Judge
`
`Albright denied a stay noting, “[e]ven if the PTAB institutes, the Court anticipates
`
`that the trial date will occur before the PGR’s final written decision.” (Ex. 2006).
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`There is no reason to believe that Judge Albright would reach any different
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`result here. Indeed, the uncontroverted facts in the district court litigation
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`demonstrate that a stay will not be granted. In view of this, and again, given Judge
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`Albright’s explicit statements on the record, as well as his prior rulings in e.g.,
`
`Multimedia and Kerr Machine, it is firmly established that the Court would not
`
`grant a stay.
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`Additionally, even where no stay has been requested, the Board has found
`
`factor 1 weighs in favor discretionary denial where (as here), “Petitioner
`
`present[ed] no evidence that it has requested a stay [] or that a stay is likely.”
`
`Luxshare Precision Industry v. Amphenol Corp., IPR2022-00132, Paper 10, at 9
`
`(PTAB May 3, 2022). And such a decision is particularly appropriate where the
`
`circumstances show that “a stay … is unlikely.” Nintendo Co. v. Gamevice, Inc.,
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`IPR2020-01197, Paper 13, at 11-12 (PTAB Jan. 12, 2021).
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`6
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`For all of these reasons, factor 1 favors discretionary denial.
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`
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`Factor 2—Because The Texas Cases Will Be Tried Before The
`Board’s Projected Statutory Deadline For A Final Written
`Decision, The Board Should Deny Institution
`
`Judge Albright has set trial in the Texas case involving the ’835 patent for
`
`December 9, 2024. (Ex. 2002). Given that the Board will issue an institution
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`decision by May 26, 2024 (three months after the filing of this Preliminary
`
`Response), any final written decision, if instituted, would be entered on or around
`
`May 26, 2025. As such, the Texas case will have been tried approximately five
`
`months before the Board’s projected statutory deadline for a final written decision.
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`Factor 2, therefore, favors discretionary denial. See NetApp, Inc. v. Realtime
`
`Data LLC, IPR2017-01195, Paper 9, at 12-13 (P.T.A.B. Oct. 12, 2017) (denying
`
`institution) (“The result would be a significant waste of the Board’s resources.
`
`There would be no offsetting conservation of the [district court’s] judicial
`
`resources because any final written decision in this proceeding would not issue
`
`until well after the scheduled trial date in the [district court] [l]itigation.”); see also
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`Next Caller, Inc. v. TrustID, Inc., IPR2019-00961, Paper 10, at 14-15 (P.T.A.B.
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`Oct. 16, 2019) (denying institution where trial was scheduled to start about three
`
`months before expected final written decision); E-One, Inc. v. Oshkosh Corp.,
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`IPR2019-00161, Paper 16, at 6 (P.T.A.B. May 15, 2019) (denying institution
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`where trial was scheduled to start one month before expected final written
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`7
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`decision); Intel Corp. v. VLSI Tech. LLC, IPR2020-00106, Paper 17, at 8 (P.T.A.B.
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`May 5, 2020) (denying institution where trial was scheduled to start four to five
`
`months before expected final written decision).
`
`
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`Factor 3—The Parties And The Court Have Invested Significant
`Resources In The Texas Cases, Favoring Discretionary Denial
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`A waiver of service was filed with the district court on December 21, 2022.
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`MediaTek waited over ten months—until November 15, 2023—to file the Petition.
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`Because MediaTek did not file the Petition expeditiously, the Court and the parties
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`will have completed litigation by the time the Board issues its final written
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`decision.
`
`Event
`
`by
`
`Date
`November 10, 2022
`June 20, 2023
`
`September 18, 2023
`September 18, 2023
`
`September 26, 2023
`October 10, 2023
`October 17, 2023
`October 24, 2023
`October 31, 2023
`November 15, 2023
`November 21, 2023
`December 5, 2023
`December 19, 2023
`December 22, 2023
`
`infringement
`
`contentions
`
`served
`
`Complaint
`Preliminary
`ParkerVision
`Preliminary invalidity contentions served by MediaTek
`MediaTek’s preliminary production of technical and
`financial information
`Exchange of claim terms for construction
`Exchange of preliminary claim constructions
`Exchange of extrinsic evidence
`Meet and confer to narrow claim construction issues
`MediaTek filed Opening claim construction brief
`Petition filed3
`ParkerVision filed Responsive claim construction brief
`MediaTek filed Reply claim construction brief
`ParkerVision filed Sur-Reply claim construction brief
`Parties submitted Joint Claim Construction Statement
`
`
`3 The green cells reflect deadlines before the PTAB.
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`8
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`Fact discovery opened
`Markman Hearing
`Deadline for Institution Decision
`Close of fact discovery
`Close of expert discovery
`Dispositive motion deadline
`Final Pretrial Conference
`Trial
`Deadline for Final Written Decision
`
`January 11, 2024
`January 26, 2024
`May 26, 2024
`July 2, 2024
`September 6, 2024
`September 24, 2024
`November 12, 2024
`December 9, 2024
`May 26, 2025
`
`
`And as this chart makes clear, the parties will be deep in fact discovery before any
`
`institution decision issues. Thereafter, the parties will proceed with fact
`
`depositions, followed by the exchange of expert reports and expert declarations.
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`Specifically, fact discovery will conclude by July 2, 2024. (See Ex. 2002, at 3.)
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`Opening expert reports on validity are due July 9, 2024, and expert discovery will
`
`end on September 6, 2024—i.e. eight months before any final written decision
`
`here. (Id.). Dispositive motions, such as any summary judgment motions regarding
`
`the purported invalidity of the ’835 patent or Daubert Motions will be filed by
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`September 24, 2024. And trial will occur on December 9, 2024. In sum, the totality
`
`of litigation will be completed before this Board issues its final written decision.
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`MediaTek trivializes the parties’ and Court’s significant investments of time
`
`and resources in the litigation to date by ignoring all the work done and, instead,
`
`mischaracterizes the litigation as being in its “preliminary stages.” Pet. at 92. But
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`in doing so, Petitioner ignores Fintiv, where the Board specifically considered “the
`
`level of investment and effort already expended on claim construction and
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`9
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`invalidity contentions in the District Court” in finding factor 3 weighed in favor of
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`discretionary denial. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 14
`
`(PTAB May 13, 2020).
`
`Indeed, the parties have made significant investments in the district court
`
`litigation, and that will only continue as the Board considers institution. Notably,
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`the parties have already completed claim construction briefing, served lengthy
`
`preliminary infringement/invalidity contentions, and exchanged document
`
`production. This Board need look no further than Fintiv to see that these types of
`
`investments favor discretionary denial. See Fintiv, IPR2020-00019, Paper 11 at 10
`
`(“district court claim construction orders may indicate that the court and parties
`
`have invested sufficient time in the parallel proceeding to favor denial.”); see also
`
`E-One, Inc. v. Oshkosh Corp., IPR2019-00161, Paper 16 at 13, 20 (PTAB May 15,
`
`2019) (denying institution where “district court ha[d] already expended substantial
`
`resources” by, among other things, “receiv[ing] briefing and hear[ing] oral
`
`argument on claim construction, and issu[ing] a claim construction ruling”); Nine
`
`Energy Service Inc. v. MCS Multistage Inc., IPR2020-01615, Paper 18 at 10-11
`
`(PTAB Mar. 24 2021) (finding this factor weighed in favor of denying institution
`
`despite recognizing “discovery is in the early stages.”).
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`10
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`Factor 4—Significant Overlap Between Issues Raised In The
`Petition And In The Texas Case Supports Denial
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`The overlap between the issues raised in the instant IPR Petition and in the
`
`parallel district court Litigation is substantial. The Petition alleges invalidity of
`
`claims asserted in the district court litigation based on common references relied
`
`upon in the Texas case.
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`Grounds I and II of this Petition rely on the Gibson, Schiltz, and Crols
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`references, which Petitioner also cites in the co-pending district court litigation.
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`And as the Board previously noted, “Petitioner’s assertion of additional invalidity
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`contentions in the District Court is not relevant to the question of the degree of
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`overlap for this factor. Further, the fact that Petitioner has not decided whether to
`
`pursue the art from this proceeding in its expert discovery or at trial in the District
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`Court is not persuasive.” Fintiv, IPR2020-00019, Paper 15, at 14-15. Ultimately, as
`
`the Board recognized in Supercell, under Fintiv, “if the petition includes the same
`
`or substantially the same claims, grounds, arguments, and evidence as presented in
`
`the parallel proceeding, this fact has favored denial” because “concerns of
`
`inefficiency and the possibility of conflicting decisions [are] particularly strong.”
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`Supercell Oy v. Gree, Inc., IPR2020-00513, Paper 11 at 13 (PTAB June 24, 2020).
`
`That is exactly the case here—there is complete overlap in the references and
`
`invalidity grounds in both MediaTek’s Petition and its invalidity arguments in the
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`11
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`Texas case. And with final invalidity contentions not due until after the filing of
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`this Preliminary Response, there is also nothing to stop MediaTek from citing
`
`additional prior art in the Texas case.
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`For the foregoing reasons, factor 4 also supports denial of the Petition.
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`
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`Factor 5—The Petitioner and The Defendant in The Parallel
`Proceedings Are the Same Party, Supporting Denial
`
`The parties are the same in the Petition and the Texas case. As such,
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`Petitioner must concede that this factor favors denial of institution. See Fintiv,
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`IPR2020-00019, Paper 15 at 15 (“Because the petitioner and the defendant in the
`
`parallel proceeding are the same party, this factor weighs in favor of discretionary
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`denial.”).
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`
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`Factor 6—Other Circumstances That Impact The Board’s
`Exercise Of Discretion Show That Denial Is Appropriate At This
`Time
`
`There are additional weaknesses with the Petition that favor discretionary
`
`denial.4 And as explained above, institution of the present proceedings will also
`
`
`4 While this Preliminary Response addresses only the discretionary bases as to why
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`the Board should deny institution, ParkerVision submits that on the merits,
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`Petitioner has not shown that it is likely to prevail as to any of the challenged
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`claims. ParkerVision reserves the right to address, in a Patent Owner Response if
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`12
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`give rise to substantial duplication of efforts. It will not prevent fact discovery,
`
`expert discovery, and other disputes that occur in the Texas case, nor obviate
`
`dispositive motions, pre-trial motions, or a trial.
`
`For these additional reasons, factor 6 further supports discretionary
`
`dismissal.
`
`III. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`FAILS TO ARTICULATE OBVIOUSNESS THEORIES WITH
`PARTICULARITY
`
`Petitioner relies on numerous “cable modem” references to teach limitations
`
`missing in Gibson, Schiltz, and Crols. See, e.g., Pet. at 41, 42, 65, 67 (citing
`
`Thacker, Goldberg, ITU-T J.83, and AAPA). Petitioner thus essentially argues
`
`obviousness over Gibson and Schiltz or Crols in some combination with one or
`
`more of the four “cable modem” references, without specifying which specific
`
`combination is asserted with respect to each challenged claim. Such use of prior art
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`without including them in the proposed ground is improper because it makes it
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`impossible to determine the exact basis of Petitioner’s challenge. 35 U.S.C. §
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`312(a)(3) (requiring that a petition identify “with particularity, each claim
`
`challenged, the grounds on which the challenge to each claim is based, and the
`
`
`required, issues of claim construction not addressed by Petitioner and the failures
`
`of the cited art to teach or render obvious the challenged claims.
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`13
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`evidence that supports the grounds for the challenge to each claim.”) (emphasis
`
`added). Petitioner’s improper reliance on prior art references does not provide
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`Patent Owner a fair opportunity to address the proposed grounds. This itself is a
`
`basis for denying institution.
`
`Indeed, the Board has denied institution where a Petition relied on references
`
`not identified in the asserted grounds. For example, in Edwards Lifesciences Corp.
`
`et al. v. Aortic Innovations LLC, the petitioner asserted one and two-reference
`
`obviousness grounds, but cited to an expert declaration that mentioned eight
`
`additional references for additional support. Edwards Lifesciences Corp. et al. v.
`
`Aortic Innovations LLC, No. IPR2023-01325, Paper 12 at 36 (PTAB Feb. 22,
`
`2024). In denying institution, the Board determined that “[t]his format is an
`
`improper incorporation-by-reference of argument and evidence that, had Petitioner
`
`wanted to pursue some other combination of asserted art beyond [the asserted
`
`references], needed to be set forth explicitly in the Petition.” Id. The Board
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`explained “it leaves the record unclear and forces Patent Owner, the Board, and the
`
`public to guess at what combination(s) are, in fact, being urged.” Id.
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`Like in Edwards, the Board should deny institution here because Petitioner
`
`has similarly failed to identify its obviousness theory with particularity. See also
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`Kingbright Elecs. Co. v. Cree Inc., No. IPR2015- 00750, Paper 8, at 17-18 (PTAB
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`Aug. 10, 2015) (denying institution of obviousness ground where Petitioner “failed
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`14
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`to identify any specific combination of references” or provide “a specific
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`explanation” of its obviousness theory). In particular, MediaTek’s obviousness
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`analysis throughout each of Grounds I and II cites to various references not
`
`formally identified in the stated grounds, including Thacker, Goldberg, ITU-T J.83,
`
`and AAPA. MediaTek impermissibly relies on these references as additional
`
`support for why one of ordinary skill would have been motivated to modify the
`
`modems of Gibson and Schiltz or Crols and use them as cable modems. See Pet.,
`
`39. But this is improper. See also Deere & Co. v. Gramm, IPR2015-00898, Paper 7
`
`at 20-21 (PTAB Sept. 23, 2015) (relying on a reference not identified in the stated
`
`ground is unacceptable for supporting an argument regarding what one of ordinary
`
`skill would have been prompted to do).
`
`IV. CONCLUSION
`
`For all of the foregoing reasons, ParkerVision respectfully requests the
`
`Board to deny the Petition.
`
`Dated: February 26, 2024
`
`Respectfully submitted,
`
`
`
`
`By: /Jason S. Charkow/
`Jason S. Charkow (USPTO Reg. No. 46,418)
`Chandran B. Iyer (USPTO Reg. No. 48,434)
`jcharkow@daignaultiyer.com
`cbiyer@daignaultiyer.com
`DAIGNAULT IYER LLP
`8618 Westwood Center Drive, Suite 150
`Vienna, VA 22182
`
`Attorneys for ParkerVision, Inc.
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
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`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that this Patent
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`Owner’s Preliminary Response complies with the type-volume limitation of 37
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`C.F.R. § 42.24(b) because it contains 3,351 words, as determined by the word-
`
`processing program used to prepare the brief, excluding the parts of the brief
`
`exempted by 37 C.F.R. § 42.24(a)(1).
`
`
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`
`
`
`
`
`
`
`
`
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`
`
`
`Respectfully submitted,
`
`
`
`By:
`
`
`
`
`/Jason S. Charkow/
`Jason S. Charkow
`USPTO Reg. No. 46,418
`
`
`16
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`
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`IPR2024-00150 (U.S. Patent No. 7,292,835)
`Patent Owner’s Preliminary Response
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing PATENT
`
`OWNER’S PRELIMINARY RESPONSE TO PETITION FOR INTER
`
`PARTES REVIEW OF UNITED STATES PATENT NO. 7,292,835, together
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`with all exhibits filed therewith, was served in its entirety by filing these
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`documents through the PTAB E2E System, as well as by email on the following
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`counsel of record for Petitioner:
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`PerkinsServiceMediatek-ParkerVisionIPRs@perkinscoie.com
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`
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`Dated: February 26, 2024
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`
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`
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`Respectfully Submitted,
`
`
`
`By:
`
`
`/Jason S. Charkow/
`Jason S. Charkow
`USPTO Reg. No. 46,418
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`
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`17
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