Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 1 of 22
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`PARKERVISION, INC.,
`
` Plaintiff,
`
` v.
`
`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., and TCL MOKA
`MANUFACTURING S.A. DE C.V.;
`
`HISENSE CO., LTD. and HISENSE
`VISUAL TECHNOLOGY CO., LTD. (F/K/A
`QINGDAO HISENSE ELECTRONICS CO.),
`LTD. and HISENSE ELECTRIC CO., LTD.
`
`Defendants.
`
`
`
`
`
`
`
`
`
`
`Case No. 6:20-cv-00945-ADA
`
`
`
`
`
`
`
`
`Case No. 6:20-cv-00870-ADA
`
`
`JURY TRIAL DEMANDED
`
`
`DEFENDANTS’ REPLY CLAIM CONSTRUCTION BRIEF
`
`
`
`
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 2 of 22
`
`TABLE OF CONTENTS
`
`I.
`
`2.
`
`DISPUTED CLAIM TERMS ............................................................................................. 1
`A. ParkerVision’s Response Fails To Identify an Objective Boundary for Determining
`What Constitutes a “Low” Impedance Load ...................................................................... 1
`B. “Said Energy Discharged From Said Capacitor Provides Sufficient Power to Drive
`the Low Impedance Load” .................................................................................................. 4
`C. “Storage” Terms.................................................................................................................. 6
`1.
`This Court Already Rejected ParkerVision’s Attempt to Read in “For Driving
`a Low Impedance Load” ......................................................................................... 6
`There is No Basis To Import Limitations from the Specification in the
`Manner Suggested by ParkerVision........................................................................ 7
`ParkerVision’s Construction Is Barred by Collateral Estoppel .............................. 8
`3.
`ParkerVision’s Claim Differentiation Argument Fails ......................................... 11
`4.
`ParkerVision’s Proposed Construction Renders Claims Indefinite ...................... 12
`5.
`D. “Voltage of the Input Modulated Carrier Signal is Not Reproduced or Approximated
`at the Capacitor During the Apertures or Outside of the Apertures” ................................ 12
`E. Other Indefinite Terms ...................................................................................................... 13
`F. Claim Terms Using Nonce Words .................................................................................... 14
`G. “Means For” Terms........................................................................................................... 14
`H. Terms That Should Be Given Plain and Ordinary Meaning ............................................. 14
`I.
`“Under-Sample” / “Under-Samples” / “Under-Sampling” ............................................... 15
`J.
`“Harmonic” / “Harmonics” ............................................................................................... 15
`K. “[Wherein Said Storage Elements Comprise] a Capacitor That Reduces a DC Offset
`Voltage in Said First-Down Converted Signal and Second Down Converted Signal” .... 15
`L. “Sampling Aperture” ........................................................................................................ 15
`M. “A Down-Converted Signal Being Generated From Said Sampled Energy” ................... 15
`II.
`CONCLUSION ................................................................................................................. 17
`
`
`
`
`
`
`i
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 3 of 22
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Baldwin Graphic Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008)................................................................................................16
`
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018)..................................................................................................3
`
`Felix v. Am. Honda Motor Co.,
`562 F.3d 1167 (Fed. Cir. 2009)..................................................................................................5
`
`Intervet Am., Inc. v. Kee-Vet Lab’ys, Inc.,
`887 F.2d 1050 (Fed. Cir. 1989)..................................................................................................7
`
`Karsten Mfg. Corp. v. Cleveland Golf Co.,
`242 F.3d 1376 (Fed. Cir. 2001)..................................................................................................6
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) ...................................................................................................................4
`
`Nestle USA, Inc. v. Steuben Foods, Inc.,
`884 F.3d 1350 (Fed. Cir. 2018)..........................................................................................10, 11
`
`ParkerVision, Inc. v. Qualcomm Inc.,
`621 F. App’x 1009 (Fed. Cir. 2015) ..................................................................................11, 16
`
`Princeton Digit. Image Corp. v. Amazon.com, Inc.,
`No. 13-237-LPS, 2019 WL 351258 (D. Del. Jan. 29, 2019) .....................................................2
`
`Semcon IP Inc. v. Huawei Device USA Inc.,
`No. 2:16-cv-00437-JRG-RSP, 2017 WL 2972193 (E.D. Tex. July 12, 2017) ..........................3
`
`Signal IP v. Am. Honda Motor Co.,
`No. LA CV-14-02454-JAK, 2015 WL 5768344 (C.D. Cal. Apr. 17, 2015) .......................2, 13
`
`Warsaw Orthopedic, Inc. v. NuVasive, Inc.,
`824 F.3d 1344 (Fed. Cir. 2016)................................................................................................16
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) (en banc) ...............................................................................14
`
`Statutes
`
`35 U.S.C. § 112, ¶ 6 .......................................................................................................................14
`
`ii
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 4 of 22
`
`Defendants 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., and Moka Manufacturing S.A. De C.V. (collectively “TCL”) and
`
`
`
`Defendants Hisense Co., Ltd. and Hisense Visual Technology Co., Ltd. (f/k/a Qingdao
`
`Hisense Electronics Co., Ltd. and Hisense Electric Co., Ltd.) (collectively “Hisense”) (TCL and
`
`Hisense are collectively referred to as “Defendants”) submit their reply claim construction brief.
`
`As an initial matter, ParkerVision states in a footnote that “it appears” that Defendants’
`
`expert “is not a POSITA.” ParkerVision Brief (“PV Br.”) at 6 n.3 (citing Steer Decl. ¶¶ 12-18).
`
`This is a puzzling allegation, as Dr. Shoemake has a Ph.D. in Electrical Engineering from
`
`Cornell University. Further, the accused technology in this case concerns Wi-Fi chips in smart
`
`TVs—subject matter in which Dr. Shoemake is a pioneer, having invented various aspects of the
`
`IEEE 802.11 (Wi-Fi) standards, and even organized and chaired various IEEE 802.11
`
`committees. Shoemake Decl. at ¶¶ 8-24. As such, Dr. Shoemake is not only a “POSITA,” but
`
`unquestionably a person of extraordinary skill in the relevant art. As such, Plaintiff’s odd
`
`footnote criticism of Dr. Shoemake should be disregarded.
`
`I. DISPUTED CLAIM TERMS
`
`A.
`
`ParkerVision’s Response Fails To Identify an Objective Boundary for
`Determining What Constitutes a “Low” Impedance Load
`
`In its Responsive Brief, ParkerVision failed to show that the patents provide an objective
`
`boundary for determining what is a “low” impedance load. Quite the opposite, in fact, as
`
`ParkerVision itself confirmed that the patents describe this claim term in purely subjective terms.
`
`The Court should therefore find this term indefinite.
`
`ParkerVision itself recognizes, “it is a binary choice – it is either high or low impedance.”
`
`PV Br. at 3. Yet nowhere in its brief does ParkerVision identify the dividing line between these
`
`1
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 5 of 22
`
`“binary” possibilities. ParkerVision places heavy emphasis on Figures 78B and 82B of the ’518
`
`patent (see PV Br. at 3, 4, 6, 12; Steer Decl. ¶¶ 33, 34, 37, 42, 43, 46, 54, 63, 66), but those
`
`figures do not provide an objective boundary for determining what is a “low impedance load.”
`
`Rather, they merely provide anecdotal examples where, on the one hand, a massive 1 MΩ load
`
`(1,000,000 ohms) is deemed a “high impedance load” while, on the other hand, a 500-times-
`
`smaller 2 kohm load (2,000 ohms) is deemed to be a “low impedance load.”
`
`
`
`PV Br. at 3. Such extreme cases, however, provide no guidance as to whether values between
`
`those two ends of the spectrum would be considered “high” or “low” impedance. Would
`
`900,000 ohms be a “low” impedance? 500,000 ohms? 100,000 ohms? 50,000 ohms? The
`
`figures upon which ParkerVision relies do not answer these questions, and the patents otherwise
`
`provide no guidance. Therefore, the term is indefinite. Signal IP v. Am. Honda Motor Co., No.
`
`LA CV-14-02454-JAK (JEMx), 2015 WL 5768344, at *55 (C.D. Cal. Apr. 17, 2015) (finding
`
`indefinite “relatively low vehicle torque demand” where examples in specification “describe
`
`positions at the extremely high and extremely low ends of the spectrum, but do not help define
`
`the boundaries of ‘relatively high’ and ‘relatively low’” (citation omitted)); Princeton Digit.
`
`2
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 6 of 22
`
`Image Corp. v. Amazon.com, Inc., No. 13-237-LPS, 2019 WL 351258, at *9 (D. Del. Jan. 29,
`
`2019) (finding “significantly smaller” indefinite).1
`
`
`
`ParkerVision nonetheless argues that “from these figures and values” (i.e., 1,000,000
`
`ohms vs. 2,000 ohms), “a skilled person would understand” that a “low” impedance load is one
`
`that “would allow energy to be discharged from the storage capacitance 8208 when the switch is
`
`opened (OFF).” PV. Br. at 3. But this is equally unhelpful, as any impedance less than infinity
`
`will allow some energy to be discharged from the capacitor when its switch is open. Shoemake
`
`Decl. ¶50. The question is, how much energy must be discharged such that the impedance
`
`crosses over from “high” to “low”? The patents provide no reasonably certain answer. See id.;
`
`Berkheimer v. HP Inc., 881 F.3d 1360, 1364 (Fed. Cir. 2018) (holding claim term “minimal
`
`redundancy” indefinite—“the issue is not what must exhibit minimal redundancy, but rather how
`
`much is minimal.”).
`
`ParkerVision further describes the amount of discharge from a capacitor coupled to a
`
`“low” impedance load using additional ambiguous and subjective terms—a low impedance load
`
`“provides little constraint to current moving in a circuit” (PV Br. at 3), and “the holding
`
`capacitance 7808 is significantly discharged by the low impedance load between pulses 8004.”
`
`PV. Br. at 5 (emphasis added in both cases). Similarly, the specification expressly defines a
`
`“low impedance load” in purely subjective terms: “one that is significant relative to the output
`
`drive impedance of the system for a given output frequency.” ’736 patent at 73:52-58 and ’673
`
`patent at 67:52-58 (emphasis added). Describing “low impedance” in such purely subjective
`
`terms “just shifts the uncertainty” as to what “low” impedance means, but “it does not resolve it.”
`
`
`1 ParkerVision did not address these or any of the other cases cited by Defendants showing that
`“low impedance load” is an indefinite term.
`
`3
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 7 of 22
`
`Semcon IP Inc. v. Huawei Device USA Inc., No. 2:16-cv-00437-JRG-RSP, 2017 WL 2972193, at
`
`*25 (E.D. Tex. July 12, 2017) (finding “relatively short messages” indefinite).
`
`The frequency-dependent nature of impedance only adds to the confusion as to how to
`
`determine a “low” impedance load. Defendants’ Opening Brief (“OB”) at 4; see Shoemake Decl.
`
`at ¶¶ 45-47. ParkerVision does little to address this frequency dependence, arguing instead for
`
`the first time that the load must be a resistor as depicted in Figures 78B and 82B of the patents.
`
`See PV Br. at 6 (citing Steer Decl. ¶ 60). But that contradicts the plain language of the claims.
`
`If the load must consist of a resistor and nothing else, the inventors would have used the phrase
`
`“low resistance load” rather than the more broader phrase “low impedance load.” And Dr.
`
`Steer’s related reliance on a textbook stating that resistors do not have “impedances” that vary
`
`with frequency is similarly misplaced because, again, the claim is for an “impedance” not a
`
`“resistance.” Steer Decl. ¶¶ 61-62. And even if relevant, a textbook cannot make the claims
`
`definite, because the focus must be on the intrinsic evidence. See Nautilus, Inc. v. Biosig
`
`Instruments, Inc., 572 U.S. 898, 901 (2014) (holding that a patent is indefinite “if its claims, read
`
`in light of the specification delineating the patent, and the prosecution history, fail to inform,
`
`with reasonable certainty, those skilled in the art about the scope of the invention.”).
`
`B.
`
`“Said Energy Discharged From Said Capacitor Provides Sufficient Power to
`Drive the Low Impedance Load”
`
`This term is indefinite at least because it contains the term “low impedance load”
`
`discussed above. See Section II.A, supra; OB at 7-9.
`
`For some unstated reason, ParkerVision addresses most of its argument on this term to
`
`claim 1 of the ’673 patent, which is not the claim that recites the “sufficient power” term at issue.
`
`See PV Br. at 6-8. When ParkerVision finally addresses the actual claim in dispute—claim 5 of
`
`the ’673 patent—it summarily argues that “sufficient power” effectively means “a non-negligible
`
`4
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 8 of 22
`
`amount of energy.” PV Br. at 8 (“In context, the term ‘said energy discharged from said
`
`capacitor provides sufficient power to drive the low impedance load’ simply means that the
`
`capacitor provides a non-negligible amount of energy (sources current) to the low impedance
`
`load for the duration of the time the switch is open.” (citing Steer Decl. ¶70)). But that argument
`
`is based exclusively on Dr. Steel’s attempt to read in limitations from the specification.
`
`Moreover, finding that any “non-negligible” amount of power could drive the load as Dr. Steel
`
`suggests would render the qualifier “sufficient” superfluous. Felix v. Am. Honda Motor Co., 562
`
`F.3d 1167, 1178 (Fed. Cir. 2009) (“The adverb ‘pivotally’ modifies ‘mounted’ to make clear that
`
`the rod can pivot on the compartment interior. But if ‘mounted’ meant simply ‘positioned,’ then
`
`‘pivotally’ would be surplusage[.]”). And for that matter, if a “low impedance load” effectively
`
`means that “the holding capacitance … is significantly discharged by the low impedance load
`
`between pulses” as ParkerVision argues (PV. Br. at 5), then the entire phrase “and wherein said
`
`energy discharged from said capacitor provides sufficient power to drive the low impedance load”
`
`recited in claim 5 would be surplusage in view of the earlier-recited term “wherein said load
`
`circuitry comprises a low impedance load.” Id.
`
`Finally, ParkerVision’s argument that “said energy discharged from said capacitor
`
`provides sufficient power to drive the low impedance load” really means “the capacitor provides
`
`a non-negligible amount of energy (sources current) to the low impedance load for the duration
`
`of the time the switch is open” contradicts ParkerVision’s argument that term has a “plain and
`
`ordinary meaning.” OB at 9. Providing a “non-negligible” amount of current is not the plain
`
`and ordinary meaning of “sufficient power,” and this newfound construction creates additional
`
`ambiguity as to how much current would be deemed “negligible.”
`
`5
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 9 of 22
`
`C.
`
`“Storage” Terms
`
`1.
`
`This Court Already Rejected ParkerVision’s Attempt to Read in “For
`Driving a Low Impedance Load”
`
`In the first Intel case, the Court refused to read “for driving a low impedance load” in to
`
`the “storage” terms of the ’513, ’528, ’736, ’673, ’902, ’444, and ’725 patents:
`
`
`
`PV Ex. 1 (highlighting added, cropped). ParkerVision’s motivation is clear: it is trying to
`
`preserve the validity of certain claims by seeking an erroneous construction that avoids prior art
`
`like that which resulted in invalidation of several claims in prior litigation and IPRs. See OB at
`
`13-14 (claims invalidated by the Federal Circuit and PTAB in view of the Weisskopf prior art
`
`article). However, the “claims cannot be rewritten by the court to avoid the impact of newly
`
`discovered prior art.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1384 (Fed. Cir.
`
`2001) (“[T]the role of ‘claim construction’ is to describe the claim scope as it was intended when
`
`examined and obtained by the applicant, not as it might have been limited upon a different record
`
`of prosecution and prior art.”). While ParkerVision suggests that it is merely trying to provide
`
`“clarity” as to “what it means to be a ‘storage’ module/device/element of an energy transfer
`
`system” (PV Br. at 9), the Court should see ParkerVision’s renewed attempt to avoid invalidating
`
`prior art for just that, not a mere attempt to add “clarity” to an issue that was previously resolved
`
`by the Federal Circuit in a way that ParkerVision does not like.
`
`6
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 10 of 22
`
`
`
`Parker Vision notes that in the second Intel case, the Court construed the storage terms in
`
`the ’706 patent to include “the additional language ‘for driving a low impedance load.’” PV Br.
`
`at 9. But the Court did not provide any reason for its different construction there. See PV Ex. 2.
`
`And as shown in Defendants’ opening brief and further below, ParkerVision’s proposed
`
`construction contradicts the intrinsic evidence and is barred by collateral estoppel. Therefore,
`
`the Court should adopt Defendants’ proposed construction in this case for the “storage” terms.
`
`2.
`
`There is No Basis To Import Limitations from the Specification in the
`Manner Suggested by ParkerVision
`
`ParkerVision makes no bones about the fact that it is trying to read in limitations from the
`
`specification. PV Br. at 10-13. For example, ParkerVision argues that the claim term “storage”
`
`module is “reserved exclusively for a component of an energy transfer (energy sampling) system,
`
`and a ‘holding’ module/element/device is a term reserved exclusively for a component of a
`
`sample and hold (voltage sampling) system.” PV Br. at 10. However, “interpreting what is
`
`meant by a word in a claim is not to be confused with adding an extraneous limitation appearing
`
`in the specification, which is improper.” Intervet Am., Inc. v. Kee-Vet Lab'ys, Inc., 887 F.2d
`
`1050, 1053 (Fed. Cir. 1989) (internal quotation omitted). And importantly, ParkerVision does
`
`not argue, much less show, that the patents either contain lexicography or disclaimers (see
`
`Phillips, 415 F.3d at 1316) such that it would be proper to limit “storage module” to require that
`
`(1) it be “of an energy transfer system” and (2) be used “for driving a low impedance load.”
`
`Instead, ParkerVision demands that the Court “must” construe a storage module in a way
`
`that “distinguishes” it from a holding module. PV Br. at 10 (“As such, an energy ‘storage’
`
`module must be construed in a way that distinguishes it from a ‘holding’ module.”). For this
`
`dubious proposition, ParkerVision cites cases that merely hold that every claim in a patent need
`
`not cover every disclosed embodiment. Id. at 10-11. But that is very different than instructing
`
`7
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 11 of 22
`
`that a court “must” construe claims in a way that excludes embodiments when, as here, there is
`
`no express definition or disclaimer forcing such a result.
`
`Moreover, ParkerVision’s block quotation from the specification (PV. Br. at 11) supports
`
`Defendants’ position, not ParkerVision’s. Notably, ParkerVision tactically omits the first
`
`sentence of that passage, which makes clear that Figure 82 is directed only to an embodiment,
`
`which the patent refers to as an “exemplary energy transfer system.” ’518 patent at 66:11-12
`
`(emphasis added). And last sentence of that passage is virtually identical to Defendants’
`
`proposed construction. ’518 patent at 66:21-23 (“Storage modules … refer to systems that store
`
`non-negligible amounts of energy from an input EM signal.”). And ParkerVision does not
`
`(because it cannot) deny that ParkerVision itself told the PTAB that the patents have an explicit
`
`definition for “storage module,” and that explicit definition is “an apparatus that stores non-
`
`negligible amounts of energy from the carrier signal.” See OB at 11. Moreover, while some of
`
`ParkerVision’s claims expressly recite discharge of a storage element into a low impedance load,
`
`other claims recite a storage module without mentioning discharge or a low impedance load. See
`
`OB at 15-16. This shows further that the inventors did not intend to limit the claim term “storage
`
`element” to a device from an “energy transfer” system used to “drive a low impedance load”; if
`
`they had, they would have said so. See id.
`
`3.
`
`ParkerVision’s Construction Is Barred by Collateral Estoppel
`
`ParkerVision’s reliance on Dr. Steel’s extrinsic declaration is misplaced. PV Br. at 2 §
`
`III (citing Steer Decl. at ¶¶ 31-48); PV Br at 12 (citing § III of its brief). In previous litigation,
`
`ParkerVision advanced the exact same argument that Dr. Steel now advances, when
`
`ParkerVision tried but failed to avoid a prior art publication called “Weisskopf.” Weisskopf
`
`discloses a capacitor that ParkerVision argued was not part of an “energy transfer” system
`
`because it did not “discharge” to a “low impedance load.” See OB at 11-14; see Ex. 1 (Patent
`
`8
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 12 of 22
`
`Owner’s Response, IPR2014-00946) at 2-17 (ParkerVision arguing previously that “energy
`
`transfer” is fundamentally different from “sample and hold”), id. at 22 (ParkerVision arguing
`
`previously that “the energy transfer embodiments generate the baseband signal … using the
`
`integrated energy discharged from a storage module (such as a capacitor).”). The Federal Circuit
`
`rejected those arguments, so ParkerVision is collaterally estopped from re-litigating them here.
`
`OB at 11-14.
`
`Nonetheless, ParkerVision argues that collateral estoppel is supposedly a “red herring.”
`
`PV Br. at 13-15. Specifically, ParkerVision argues that collateral estoppel does not apply
`
`because the claim terms that were previously construed are not identical to the “storage” terms at
`
`issue here. As Defendants showed previously, however, both the MDFL and the PTAB
`
`construed claim 90 of the ’518 patent as covering a storage module as disclosed in Figure 68:
`
`
`
`OB at 11-12. Thus, even though the terms at issue in the previous MDFL and PTAB cases were
`
`means-plus-function terms, they were construed as covering the “storage module” structure of
`
`Figure 68—the identical term at issue in this case.
`
`Defendants also showed—and ParkerVision does not deny—that ParkerVision argued
`
`that the storage module of the ’518 patent was different than the sample and hold capacitor
`
`disclosed in the prior art Weisskopf article. OB at 12-13. In doing so, ParkerVision used the
`
`9
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 13 of 22
`
`exact same argument that it uses here; namely, that its claimed storage module is not a sample
`
`and hold capacitor, but rather, is part of an “energy transfer system” because it discharges energy
`
`to drive a “low impedance load.” See Ex. 1 (Patent Owner’s Response, IPR2014-00946) at 2-17
`
`(ParkerVision arguing previously that “energy transfer” is fundamentally different from “sample
`
`and hold”), id. at 22 (ParkerVision arguing previously that “the energy transfer embodiments
`
`generate the baseband signal … using the integrated energy discharged from a storage module
`
`(such as a capacitor).”); see OB at 12-13. The Federal Circuit rejected ParkerVision’s faux
`
`distinction, and found several claims anticipated by Weisskopf as a matter of law. OB at 13-14
`
`(citing ParkerVision, Inc. v. Qualcomm, Inc., 621 F.App’x 1009, 1020-1022 (Fed. Cir. Jul. 31,
`
`2015)). Given this decision by the Federal Circuit, ParkerVision was forced to request an
`
`“adverse judgment” in IPR proceedings concerning the ’518 and related patents where, again,
`
`ParkerVision had also advanced the same meritless “energy transfer” argument that it now
`
`recycles again in this case. OB at 14.
`
`ParkerVision also argues that collateral estoppel does not apply because the PTAB uses
`
`the “broadest-reasonable interpretation (BRI) standard,” which is different than the standard used
`
`in district court litigation. PV Br. at 15. This is also wrong because the MDFL, like the PTAB,
`
`construed claim 90 of the ’518 patent as covering a storage module as disclosed in Figure 68,
`
`and the MDFL’s construction was not based on the BRI standard. OB at 12-14.2
`
`Finally, ParkerVision does not dispute that: (1) it had a full and fair opportunity to litigate
`
`its position in the previous litigation and IPR proceedings mentioned above; (2) the issue of
`
`energy “discharge” was actually litigated; (3) or that the resolution of that issue was essential to
`
`
`2 Additionally, ParkerVision itself told the PTAB that the patents “explicitly” define storage
`module in the same way that Defendants propose here (see OB at 11), and an explicit definition
`in a patent is also not based on the BRI standard.
`
`10
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 14 of 22
`
`the Federal Circuit’s and PTAB’s final judgments. ParkerVision’s “storage element” argument
`
`is therefore barred by collateral estoppel. Nestle USA, Inc. v. Steuben Foods, Inc., 884 F.3d 1350,
`
`1352 (Fed. Cir. 2018) (“Importantly, our precedent makes clear that collateral estoppel is not
`
`limited to patent claims that are identical. Rather, it is the identity of the issues that were litigated
`
`that determines whether collateral estoppel should apply.”—applying collateral estoppel based
`
`on prior determination of a different but related patent) (internal quotations omitted).3 At the
`
`very least, the Federal Circuit’s final decision, that the claims of the ’518 patent specifically
`
`covering a storage module need not “discharge” their energy into a low impedance load to be
`
`anticipated by a sample and hold capacitor, should have persuasive dispositive effect here.
`
`4.
`
`ParkerVision’s Claim Differentiation Argument Fails
`
`Independent claim 1 of the ’736 patent recites a first and a second energy “storage
`
`element,” but does not mention that either one drives a “low impedance load.” In contrast, claim
`
`26, which depends from claim 1, recites the additional limitation “wherein the first storage
`
`element is coupled to a first low impedance load, … wherein said portion of previously
`
`transferred energy discharged during the discharging cycle for the first switch is discharged into
`
`the first low impedance load,” and it contains a parallel limitation as to the second energy
`
`“storage element.” ParkerVision argues that this does not give rise to claim differentiation
`
`
`3 ParkerVision argues that the “patents are also different.” OB at 14 n.16. However, the Federal
`Circuit rejected ParkerVision’s energy “discharging” argument with respect to the ’518 patent,
`which is at issue here, as well as two related patents with the same disclosure. ParkerVision, Inc.
`v. Qualcomm Inc., 621 F. App’x 1009, 1019-1022 (Fed. Cir. 2015) (reversing denial of JMOL of
`invalidity as to claims of the ’518 patent and Patent Nos. 6,061,551 and 6,370,371). The PTAB
`proceedings also concerned the ’518 patent. OB at (corrected) Exs. 17 and 18. Here,
`ParkerVision concedes that all asserted patents “have the same disclosure.” OB at 2 n.2. Finally,
`all parties contend that all “storage” terms of all asserted patents should be construed the same.
`Thus, the Federal Circuit’s rejection of ParkerVision’s argument with respect to the ’518 patent
`applies to all “storage” terms in this case. Nestle USA, 884 F.3d at 1352.
`
`
`11
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 15 of 22
`
`ostensibly because “each ‘storage element’ is ‘coupled to’ a ‘low impedance load.’” PV Br. at
`
`15. But that is of no consequence. The fact that “each” of the first and second storage elements
`
`are coupled to a respective “low impedance load” in claim 26 but not claim 1 supports
`
`Defendants’ position, not ParkerVision’s. If claim 1 already required the energy storage element
`
`to be for “driving a low impedance load,” then such storage element would necessarily be
`
`“coupled” to the load—or else it would not be able to provide current to “drive” the load.
`
`Therefore, ParkerVision’s alleged distinction has no relevance here.
`
`5.
`
`ParkerVision’s Proposed Construction Renders Claims Indefinite
`
`Finally, for the reasons discussed in Section I.A, the Court should reject ParkerVision’s
`
`construction because, if adopted, it would render multiple claims indefinite because the patents
`
`do not provide any objective boundary for determining what is a “low impedance load.”
`
`D.
`
`“Voltage of the Input Modulated Carrier Signal is Not Reproduced or
`Approximated at the Capacitor During the Apertures or Outside of the
`Apertures”
`
`Independent claim 1 of the ’673 patent recites an apparatus comprising a switch, a
`
`capacitor coupled to the switch, and a pulse generator coupled to the switch, such as shown in
`
`the ’673 patent at Figure 82A.4 Claim 1 further recites “wherein some of the previously
`
`accumulated energy is discharged from said capacitor into load circuitry each time said switch is
`
`open.” (emphasis added). The claim does not specify how much energy is discharged.
`
`In response to Defendants’ argument that claim 2 is indefinite, ParkerVision relies on a
`
`single embodiment showing that “the down converted signal … is at least 1 mV lower than the
`
`
`4 Claim 1 further recites “wherein said pulses have apertures and said pulses cause said switch to
`open outside of said apertures and cause said switch to close and sample the modulated carrier
`signal during said apertures by transferring energy from the modulated carrier signal and
`accumulating the transferred energy in said capacitor each time said switch is closed.” Thus,
`“during the apertures” in claim 2 means that the switch is closed, and “outside of the apertures”
`in claim 2 means that the switch is open. OB at 17.
`
`12
`
`

`

`Case 6:20-cv-00945-ADA Document 40 Filed 10/04/21 Page 16 of 22
`
`voltage level of the input EM signal,” which supposedly shows an example where “the voltage of
`
`the input modulated carrier signal is not reproduced or approximated at the capacitor during the
`
`apertures or outside of the apertures.” PV Br. at 19. Defendants would agree that a 1 mV
`
`voltage difference could show that the input was not “reproduced” in this scenario; however, this
`
`does nothing to resolve whether the input was “approximated.” This lack of reasonable certainty,
`
`even under ParkerVision’s own analysis, renders the claim indefinite.
`
`The bottom line is that a POSITA has insufficient guidance to determine when the
`
`voltage on the capacitor approximates the input, and when it does not. The figures upon which
`
`ParkerVision relies do not answer these questions. Figure 79 (see PV Br. at 17) results when the
`
`capacitor discharges into a 1,000,000 ohm load and Figure 83 (PV Br. at 18) results when the
`
`capacitor discharges into a 2,000 ohm load. See ’673 patent at 71:4-12. But what about the huge
`
`space between these two extreme points—where does it approximate and where does it not? The
`
`patents provide no reasonably certain answer, rendering this term indefinite. Signal IP, 2015
`
`WL 5