Case 6:21-cv-00520-ADA Document 32-14 Filed 02/23/22 Page 1 of 80
`Case 6:21-cv-00520-ADA Document 32-14 Filed 02/23/22 Page 1 of 80
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`EXHIBIT 15
`EXHIBIT 15
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`Case 6:21-cv-00520-ADA Document 32-14 Filed 02/23/22 Page 2 of 80
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`Trials@uspto.gov
`571-272-7822
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` Paper 44
`Date: January 21, 2022
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`
`
`
`
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2020-01265
`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 Non-Disclaimed Challenged Claim Unpatentable
`Granting Petitioner’s Request to Exclude Improper Arguments
`Raised in Patent Owner’s Sur-reply
`Granting Petitioner’s Motion to Exclude
`Denying Petitioner’s Motion to Seal
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`

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`I.
`
`INTRODUCTION
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`A.
`
`Background
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`Intel Corporation (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
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`requesting institution of inter partes review of claims 1, 3, and 5 of
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`U.S. Patent No. 7,110,444 B1 (Ex. 1001, “the ’444 patent”). ParkerVision,
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`Inc. (“Patent Owner”) filed an Amended Preliminary Response (Paper 9).1
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`Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter
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`partes review as to all claims and grounds set forth in the Petition. Paper 10
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`(“Inst. Dec.”).
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`After institution, Patent Owner filed a Patent Owner Response
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`(Paper 18, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s Response
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`(Paper 21, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 26, “PO
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`Sur-reply”). Additionally, Petitioner filed a Motion to Exclude Exhibit 2022
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`(Paper 34, “Mot. Exc.”), Patent Owner filed an Opposition to Petitioner’s
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`Motion to Exclude (Paper 36, “Opp.”), and Petitioner filed a Reply in
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`Support of its Motion to Exclude (Paper 37, “Mot. Reply”). With our prior
`
`
`1 Patent Owner filed a timely Preliminary Response on November 23, 2020
`(Paper 8), and, a day later, filed the Amended Preliminary Response. The
`Notice of Filing Date Accorded to Petition and Time for Filing Patent
`Owner Preliminary Response (Paper 4) was entered August 21, 2020. A
`preliminary response was thus due by November 23, 2020 (November 21st
`and 22nd fell on a weekend). Patent Owner should have requested
`authorization from the Board prior to filing its Amended Preliminary
`Response. Nonetheless, despite Patent Owner’s failure to request
`authorization, we exercised our discretion under 37 C.F.R. § 42.5(b) to
`waive, by one day, the timing requirement under 37 C.F.R. § 42.107(b)
`because (1) Petitioner has not asserted that the additional day resulted in any
`prejudice to Petitioner and (2) the Amended Preliminary Response appears
`to be nearly identical to the timely filed Preliminary Response. Paper 10
`(“Inst. Dec.”), 2 n.1.
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`2
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`authorization (Paper 31, “Order”), Petitioner filed an Identification of
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`Improper New Evidence and Arguments in [Patent Owner’s] Sur-Reply
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`(Paper 32, “Petitioner’s Identification”) and Patent Owner filed a Response
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`to Petitioner’s Identification (Paper 35, “Patent Owner’s Response to
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`Identification”). Petitioner also filed an unopposed Motion to Seal
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`Exhibit 1029, which is the deposition transcript of Michael Steer, Ph.D.
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`(Paper 22, “Mot. Seal”).
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`Additionally, Patent Owner filed a Notice of Statutory Disclaimer
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`(Paper 40, “Patent Owner’s Disclaimer Notice”) to which Patent Owner
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`attached a copy of its disclaimer under 37 C.F.R. § 1.321(a), wherein Patent
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`Owner disclaimed claims 1 and 5 of the ’444 patent (Paper 40, Ex. A).
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`Patent Owner’s disclaimer effectively eliminated claims 1 and 5 from the
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`’444 patent, leaving the patent as if those claims never existed. See Sanofi-
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`Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1373 (Fed. Cir.
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`2019) (noting that disclaiming claims effectively eliminates those claims
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`from the patent as though the disclaimed claims had never existed (internal
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`quotations and citations omitted)); see also Asetek Danmark A/S v. CoolIT
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`Sys., Inc., IPR2020-00747, Paper 42 at 6 (PTAB Sept. 30, 2021)
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`(determining that a statutory disclaimer removed a disclaimed claim from an
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`inter partes review proceeding). Thus, claims 1 and 5 are no longer part of
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`this proceeding.
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`At Petitioner’s request, we held a pre-hearing conference on
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`October 26, 2021, during which we addressed, inter alia, Petitioner’s
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`Motion to Exclude and related briefing, Petitioner’s Identification and Patent
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`Owner’s Response to Identification, and Petitioner’s Motion to Seal. Each is
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`addressed in more detail below. An oral hearing was held on November 1,
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`3
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`2021, and a copy of the transcript was entered in the record. Paper 42
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`(“Tr.”).
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`We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a
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`Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to
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`the patentability of claim 3, the sole claim remaining in the trial. Petitioner
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`bears the burden of proving unpatentability of the challenged claim.
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
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`(Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a
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`preponderance of the evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R.
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`§ 42.1(d) (2019). Having reviewed the arguments and the supporting
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`evidence, we determine that Petitioner has shown, by a preponderance of the
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`evidence, that claim 3 of the ’444 patent is unpatentable.
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`B.
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`Related Proceedings
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`
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`Petitioner and Patent Owner identify the following related matter:
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`ParkerVision, Inc. v. Intel Corp., No. 6:20-cv-108-ADA (W.D. Tex.) (“the
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`related litigation”). Pet. 7; Paper 5 (Patent Owner’s Mandatory Notices), 2.
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`Patent Owner also states that the ’444 patent is asserted in ParkerVision, Inc.
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`v. TCL Technology Group Corp., No. 5:20–cv-01030-GW-SHK (C.D. Cal.).
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`Paper 5, 2. In addition, Petitioner filed a petition challenging several claims
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`of U.S. Patent No. 7,539,474 B2, which is related to the ’444 patent, in
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`IPR2020-01302.
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`C.
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`Real Parties in Interest
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`Petitioner identifies Intel Corporation as the real party in interest.
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`Pet. 7. Patent Owner identifies ParkerVision, Inc. as the real party in
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`interest. Paper 5, 2.
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`4
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`D.
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`The Asserted Grounds of Unpatentability and Declaration
`Evidence
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`Petitioner asserts the following grounds of unpatentability:
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`Claim(s) Challenged2
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`35 U.S.C. §3
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`Reference(s)/Basis
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`3
`
`3
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`103(a)
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`103(a)
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`Tayloe,4 TI Datasheet5
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`Tayloe, Kawada6
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`Pet. 10. Petitioner supports its challenge with two declarations by Vivek
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`Subramanian, Ph.D., one submitted with the Petition (Ex. 1002 (Declaration
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`of Vivek Subramanian, Ph.D.)) and the other submitted with Petitioner’s
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`Reply (Ex. 1030 (Reply Declaration of Vivek Subramanian, Ph.D.)), and a
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`Declaration of Maureen M. Honeycutt (Ex. 1019). Patent Owner supports
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`its arguments with a Declaration of Michael Steer, Ph.D. (Ex. 2021).
`
`
`2 Claim 3 is the sole challenged claim remaining in the case following Patent
`Owner’s disclaimer of claims 1 and 5.
`3 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 versions of the statutory bases for unpatentability.
`4 U.S. Patent No. 6,230,000 B1, issued May 8, 2001 (Ex. 1004, “Tayloe”).
`5 SN74CBT3253 Dual 1-of-4 FET Multiplexer/Demultiplexer (rev. ed.
`May 1998) (Ex. 1005, “TI Datasheet”). Petitioner refers to this exhibit, in at
`least one instance, as “SN74CBT3253D.” Pet. 9. The exhibit itself,
`however, does not include the letter “D” in the product number. Ex. 1005.
`Petitioner explains that “the ‘D’ in the product number refers simply to a
`packaging option” (Pet. 38 n.5), which is confirmed by the description on
`the first page stating “Package Options Include Plastic Small-Outline (D).”
`Ex. 1005, 1. Neither party asserts that the packaging option results in a
`difference of any significance to the issues before us.
`6 U.S. Patent No. 4,985,647, issued January 15, 1991 (Ex. 1008, “Kawada”).
`
`5
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`E.
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`The ’444 Patent
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`The ’444 patent is directed to “a wireless local area network (WLAN)
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`that includes one or more WLAN devices (also called stations, terminals,
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`access points, client devices, or infrastructure devices) for effecting wireless
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`communications over the WLAN.” Ex. 1001, 2:10–14. The ’444 patent
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`explains that “[t]he WLAN device includes at least an antenna, a receiver,
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`and a transmitter . . . . The WLAN receiver includes at least one universal
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`frequency translation module that frequency down-converts a received
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`electromagnetic (EM) signal.” Id. at 2:14–22.
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`Figure 70A is reproduced below:
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`Figure 70A of the ’444 patent “illustrates an IQ receiver having shunt UFT
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`[universal frequency translation] modules.” Ex. 1001, 5:34–35. The
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`’444 patent explains that “I/Q modulation receiver 7000 receives, down-
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`converts, and demodulates a[n] I/Q modulated RF input signal 7082 to an
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`I baseband output signal 7084, and a Q baseband output signal 7086.” Id. at
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`35:51–54; see id. at 35:60–62 (Antenna 7072 receives and outputs I/Q
`
`modulated RF input signal 7082.). The ’444 patent states that, “[w]hen
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`present, LNA 7018 amplifies I/Q modulated RF input signal 7082, and
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`outputs amplified I/Q signal 7088.” Id. at 35:62–64. Thereafter, “[f]irst
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`UFD [universal frequency down-conversion] module 7002, receives
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`amplified I/Q signal 7088. . . . [,] down-converts the I-phase signal portion
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`of amplified input I/Q signal 7088 according to an I control signal 7090. . . .
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`[, 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
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`inverted I-phase signal portion of amplified input I/Q signal 7088 according
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`to an inverted I control signal 7092[,]” and “outputs an inverted I output
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`signal 7001.” Id. at 36:33–37. Thereafter, “[f]irst differential
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`amplifier 7020 receives filtered I output signal 7007 . . . . subtracts filtered
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`inverted I output signal 7009 from filtered I output signal 7007, amplifies the
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`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
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`include capacitors 7074 and 7076, respectively, and UFT modules 7026 and
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`7038, respectively. See Ex. 1001, 36:3–5 (first UFD module 7002 comprises
`
`first storage module 7024 and first UFT module 7026), 36:14–15 (first
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`storage module 7024 comprises first capacitor 7074), 36:38–40 (second
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`UFD module 7006 comprises second storage module 7036 and second UFT
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`module 7038), 36:50–51 (second storage module 7036 comprises second
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`capacitor 7076).
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`7
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`Figure 1B is reproduced below:
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`
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`Figure 1B of the ’444 patent “is a more detailed diagram of a universal
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`frequency translation (UFT) module.” Id. at 2:56–58. The ’444 patent
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`explains that, “[g]enerally, the UFT module 103 includes a switch 106
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`controlled by a control circuit 108.” Id. at 8:62–64 (noting that switch 106 is
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`referred to as a controlled switch); see id. at 36:5–7 (first UFT module,
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`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
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`Figure 70A, contains a switch that opens and closes as a function of inverted
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`I control signal 7092).
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`8
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`The ’444 patent includes two alternative configurations of switches
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`and capacitors in UFD modules (Ex. 1001, 9:43–57), as shown in
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`Figures 20A and 20A-1 reproduced below:
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`
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`Figures 20A and 20A-1 of the ’444 patent “are example aliasing modules.”
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`Id. at 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
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`Figure 20A-1, however, capacitor 2010 is in series with input signal 2004
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`and switch 2008 is shunted to ground. Id. at 9:48–57 (also noting that “[t]he
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`electronic alignment of the circuit components is flexible”).
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`The ’444 patent states that “[t]he down-conversion of an EM signal by
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`aliasing the EM signal at an aliasing rate is fully described in” U.S. Patent
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`No. 6,061,551 (“the ’551 patent”), “the full disclosure of which is
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`incorporated herein by reference.” Ex. 1001, 9:32–38. And, the ’444 patent
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`further states that “[d]own-conversion utilizing a UFD module (also called
`
`an aliasing module) is further described in the” ’551 patent. Id. at 34:54–58.
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`F.
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`Illustrative Claim
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`Claim 3, the sole claim remaining in this proceeding, is illustrative of
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`the claimed subject matter and reproduced below with Petitioner’s
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`bracketing added for reference:
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`3.
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`[3 preamble] A wireless modem apparatus, comprising:
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`[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;
`
`[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, 61:1–18.
`
`G.
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`Level of Ordinary Skill in the Art
`
`Petitioner, supported by Dr. Subramanian’s testimony, proposes that a
`
`person of ordinary skill in the art at the time of the invention would have had
`
`“at least a bachelor’s degree in electrical engineering or a related subject and
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`two or more years of experience in the field of RF circuit design.” Pet. 47
`
`(citing Ex. 1002 ¶ 25). Petitioner explains that “[l]ess work experience may
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`be compensated by a higher level of education, such as a master’s degree.”
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`Id. (citing Ex. 1002 ¶ 25).
`
`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, on the preliminary record, we adopted
`
`Petitioner’s 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. 9 (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)).
`
`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
`
`(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. 2021 ¶ 24). Neither Patent Owner nor Dr. Steer
`
`explains why their proposal materially differs from that proposed by
`
`Petitioner.
`
`Patent Owner’s option (a) is substantially the same as Petitioner’s
`
`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
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`option (b) adds an additional option based on work experience in lieu of a
`
`formal degree. Patent Owner’s option (b), however, is consistent with
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`Dr. Subramanian’s testimony, which states “[l]ess work experience may be
`
`compensated by a higher level of education, such as a master’s degree, and
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`vice versa.” Ex. 1002 ¶ 25 (emphasis added). It is not clear why
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`Petitioner’s proposal, as set forth in the Petition, did not include the
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`additional option of providing greater work experience in compensation for
`
`a lower level of education.
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`Neither party contends that the differences in proposals affect the
`
`outcome of this proceeding and we do not find that they do. Nonetheless, on
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`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
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`opinions of Drs. Subramanian and Steer (which, as discussed above,
`
`recognize that additional work experience can compensate for the lack of a
`
`formal degree). 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 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 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) (2019). The
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`claim construction standard includes construing claims in accordance with
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`the ordinary and customary meaning of such claims as understood by one of
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`ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH
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`Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing
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`claims in accordance with their ordinary and customary meaning, we take
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`into account the specification and prosecution history. Phillips, 415 F.3d at
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`1315–17.
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`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
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`1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
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`(Fed. Cir. 2002)). Another exception to the general rule that claims are
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`given their ordinary and customary meaning is “when the patentee disavows
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`the full scope of a claim term either in the specification or during
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`prosecution.” Uship Intellectual Props., LLC v. United States, 714 F.3d
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`1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Computer Entm’t Am.,
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`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
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`Additionally, only terms that are in controversy need to be construed,
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`and these need be construed only to the extent necessary to resolve the
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`controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
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`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
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`are in controversy, and only to the extent necessary to resolve the
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`controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
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`868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of
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`an inter partes review).
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`A.
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`“storage element”7
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`In the Institution Decision, we did not construe any claim terms
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`expressly because none of the terms were in dispute. Inst. Dec. 10 (citation
`
`omitted). In the briefing following institution, Patent Owner proposed a
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`construction for the term “storage element,” see, e.g., PO Resp. 2–4, 45–59,
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`and it became clear that the parties dispute the meaning of the term.
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`Additionally, because many of Patent Owner’s arguments hinge on the
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`meaning of this term, its proper construction is important to address the
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`issues presented in this proceeding. Further, the parties’ arguments rely,
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`almost exclusively, on disclosures in the ’551 patent, incorporated by
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`reference into the ’444 patent. Accordingly, we address the parties’
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`arguments and proposed constructions.
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`1.
`
`The Parties’ Arguments
`
`In the Petition, Petitioner does not propose a construction for “storage
`
`element,” but does assert that each “storage element” is taught by Tayloe’s
`
`capacitors, illustrated in Tayloe’s Figure 3. Pet. 75–78 (citations omitted).
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`Petitioner contends that “[a] capacitor is a well-known storage element, and
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`in fact, the ’444 patent embodiment discloses a capacitor as the storage
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`element.” Id. at 77 (citations omitted).
`
`In the Patent Owner Response, Patent Owner notes that the district
`
`court construed “storage element” in the related litigation as “an element of
`
`
`7 The parties agree that the terms “storage element” and “storage module”
`are synonymous. See PO Resp. 27 (noting that “storage module” is “another
`name for ‘storage element’”); Pet. Reply 10 n.2 (“The ’551 patent uses the
`term ‘storage module,’ whereas challenged claim 3 uses ‘storage element.’
`As [Patent Owner] appears to admit (e.g., [PO Resp.] 46), ‘storage module’
`and ‘storage element’ are synonymous.”).
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`IPR2020-01265
`Patent 7,110,444 B1
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`an energy transfer system that stores non-negligible amounts of energy from
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`an input electromagnetic signal.” PO Resp. 45; see also id. at 3–4 (citing
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`Ex. 2012 (Document 75, Claim Construction Order), 5). Patent Owner
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`contends that the district court previously considered the construction of
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`“storage element” proposed by Petitioner in that forum—“an element that
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`stores a non-negligible amount of energy from an input electromagnetic
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`(EM) signal.” Id. at 46. Patent Owner asserts that the district court included
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`the phrase “of an energy transfer system” from Patent Owner’s proposed
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`construction “to distinguish a ‘storage element’ (an element of an energy
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`transfer system) from a ‘holding element’ (an element of a sample and hold
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`system – the type of element used in [Petitioner’s] primary prior art
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`reference, Tayloe).” Id.
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`Patent Owner contends that the ’444 patent (based on the incorporated
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`’551 patent disclosure) teaches two different systems: (1) a “sample-and-
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`hold” or “voltage sampling” system and (2) an “energy transfer” or “energy
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`sampling” system. PO Resp. 19, 21; see also id. at 31 (citing Ex. 2021
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`¶ 196). Patent Owner asserts that a sample-and-hold system includes (1) a
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`switch, (2) a holding element, and (3) a high impedance load. Id. at 20.
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`Patent Owner contends,
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`The ’444 patent specifically reserves the term “holding”
`module/element to refer to an element (e.g., capacitor) used in a
`sample-and-hold (voltage sampling) system because . . . the use
`of a high impedance load causes the capacitor to hold energy
`(i.e., prevent energy in the capacitor from being discharged to
`form the down-converted signal – the discharged energy itself
`does not become part of the down-converted signal).
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`Id. (citing Ex. 2021 ¶ 146). In contrast, Patent Owner contends that an
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`energy transfer system includes (1) a switch, (2) a storage element, and (3) a
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`low impedance load. Id. at 21. Patent Owner asserts,
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`The ’444 patent specifically reserves the term “storage”
`module/element to refer to an element (e.g., capacitor) used in
`an energy sampling system because . . . the use of a low
`impedance load enables the capacitor to store energy and
`subsequently discharge the energy to form the baseband signal
`(i.e., the discharged energy itself becomes part of the baseband
`signal).
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`Id. at 22 (citing Ex. 2021 ¶ 160).
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`Patent Owner contends that “[w]hat is critical to understand is that
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`while both energy sampling and voltage sampling use similar components
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`(e.g., switches, capacitors and loads), these components are used in different
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`ways in a circuit to create a desired result.” PO Resp. 22 (citing Ex. 2021
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`¶ 173). Patent Owner asserts that “the way in which the components are
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`used is significant and make these systems fundamentally different and
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`competing systems.” Id. In particular, Patent Owner contends that
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`“[w]hereas a voltage sampling circuit discards energy without using the
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`energy in the down-converted signal (thereby wasting energy), an energy
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`sampling circuit discharges energy into a load so that the energy itself
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`becomes part of the down-converted signal.” Id. (citing Ex. 2021 ¶ 173).
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`Patent Owner argues that “[t]hese differences . . . [are] why claim 3 of the
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`’444 patent specifically recites ‘storage element’ (an element of an energy
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`transfer (energy sampling) system) instead of ‘holding element’ (an element
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`of a sample-and-hold (voltage sampling) system).” Id.; see id. at 31
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`(“Challenged claim 3 of the ’444 patent is directed to energy transfer
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`because it uses a term that the patentees reserved specifically to connote
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`energy transfer – ‘storage element.’”) (citing Ex. 2021 ¶ 196). Patent
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`Owner asserts that “[t]he different terms distinguish between the different
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`function/operation of the capacitors and different type of loads used with the
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`capacitors.” Id. Patent Owner further explains, “[i]n other words, whether a
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`capacitor is a ‘storage’ module/element depends on the way in which the
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`capacitor is being used. Just because a capacitor is being used does not
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`mean that the capacitor is a ‘storage’ module/element.” Id. at 29.
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`Patent Owner includes the following table that it contends “identifies
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`key features that distinguish energy transfer (i.e., energy sampling) from
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`sample-and-hold (i.e., voltage sampling)” systems:
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`Sample and Hold (Voltage
`Energy Transfer (Energy
`Sampling)
`Sampling)
`Non-negligible sampling aperture Negligible sampling aperture
`“Storage” module
`“Holding” module
`Low impedance load
`High impedance load
`Down-converted signal includes
`Down-converted signal is based on
`the energy transferred from the RF
`discrete voltage measurements of the
`signal to the load (i.e., energy sent
`RF signal
`to the load makes up the down-
`converted signal)
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`PO Resp. 32 (footnote omitted).
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`Relying on Figure 82B of the ’551 patent, reproduced below, Patent
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`Owner explains the operation of an energy transfer (energy sampling)
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`system.
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`
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`Ex. 2007, Fig. 82B; see PO Resp. 33. Figure 82B of the ’551 patent
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`illustrates an exemplary energy transfer system. Ex. 2007, 7:47–48.
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`According to Patent Owner, “an energy transfer system uses (1) a control
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`signal having a pulse with a non-negligible aperture/duration, and (2) a
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`‘storage’ capacitor for storing and discharging non-negligible amounts of
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`energy for driving a low impedance load.” PO Resp. 33–34. Patent Owner
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`asserts that, “[i]f the impedance were high, the ‘storage’ capacitor could not
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`discharge sufficient energy for the system to perform energy transfer (energy
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`sampling) and form a down-converted signal from energy transferred to the
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`low impedance load.” Id. at 34 (citing Ex. 2021 ¶ 200). Patent Owner
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`provides further explanation as to how it contends an energy transfer system
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`functions, based on the teachings of the ’551 patent, to produce the baseband
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`signal sent from a transmitting device. Id. at 33–38 (citations omitted).
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`In comparison, Patent Owner relies on Figure 78B of the ’551 patent,
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`reproduced below, to explain the operation of a sample-and-hold system.
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`Ex. 2007, Fig. 78B; see PO Resp. 39. Figure 78B of the ’551 patent
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`illustrates an exemplary embodiment of an under-sampling system.
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`Ex. 2007, 7:36–37. According to Patent Owner, “a sample and hold system
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`uses (1) a control signal having a pulse with a negligible aperture/duration,
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`(2) a ‘holding’ capacitor for holding a constant voltage across the capacitor
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`and (3) a high impedance load.” PO Resp. 39. Patent Owner asserts that the
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`capacitor is referred to as a “holding” capacitor “because, unlike the
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`‘storage’ capacitor in an energy transfer system, a ‘holding’ capacitor does
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`not discharge any significant energy to the load.” Id. Patent Owner
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`contends that “the high impedance load is specifically included to prevent
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`the holding capacitor from discharging energy, which would degrade the
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`discrete voltage measurements and adversely affect the system performing
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`sample and hold (voltage sampling).” Id. (citing Ex. 2021 ¶ 209). Patent
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`Owner provides further explanation as to how it contends a sample and hold
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`system functions, based on the teachings of the ’551 patent, to produce the
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`baseband signal sent from a transmitting device. Id. at 38–42 (citations
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`omitted).
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`Patent Owner contends that “[a] ‘storage element’ (or ‘storage
`
`module’) is a term reserved exclusively for a component of an energy
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`transfer (energy sampling) system” whereas “a ‘holding’ module/element is
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`a term reserved exclusively for a component of a sample-and-hold (voltage
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`sampling) system.” PO Resp. 46. Therefore, Patent Owner asserts that “an
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`energy ‘storage’ module/element must be construed in a way that
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`distinguishes it from a ‘holding’ module/element.” Id. (citations omitted).
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`Patent Owner argues that the specification of the ’551 patent “is clear
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`that the term ‘storage’ module/element is specific to an ‘energy transfer
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`system’ and a ‘holding’ module/element, as the name implies, is specific to a
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`sample-and-hold (voltage sampling) system.” PO Resp. 47. In particular,
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`Patent Owner relies on the following paragraph of the ’551 patent:
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`FIG. 82A illustrates an exemplary energy transfer
`system 8202 for down-converting an input EM signal 8204.
`The energy transfer system 8202 includes a switching
`module 8206 and a storage module illustrated as a storage
`capacitance 8208. 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 i