Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 1 of 63
`Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 1 of 63
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`EXHIBIT 16
`EXHIBIT 16
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`Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 2 of 63
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DR. MICHAEL FARMWALD and RPX CORPORATION
`Petitioner
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`v.
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`PARKERVISION, INC.
`Patent Owner
`____________________
`
`Case IPR2014-00948
`U.S. Patent No. 6,370,371
`____________________
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`
`PATENT OWNER PRELIMINARY RESPONSE
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I. 
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`Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 3 of 63
`IPR2014-00948
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`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1 
`
`A. 
`
`The flawed Petition filed by Farmwald and RPX does not establish the
`invalidity of any claim of the ’371 patent. The Board should,
`therefore, deny all the grounds of challenge and not institute inter
`partes review of the ’371 patent. ........................................................... 2 
`
`B. 
`
`Inter partes review should not be instituted because the Petition is
`fatally flawed ......................................................................................... 4 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`The Petition fails to make out a prima facie case of anticipation
`and contains irreparable and substantial evidentiary gaps .......... 4 
`
`The Petition’s challenges depend on flawed claim constructions
` ..................................................................................................... 6 
`
`The Petition never advances an inherency argument and, thus,
`the inherency doctrine cannot save its flawed challenges .......... 8 
`
`If trial is instituted, it should be limited to non-cumulative
`grounds ...................................................................................... 10 
`
`II. 
`
`The Petition raises real party-in-interest and privity issues .......................... 10 
`
`III.  The ’371 Patent .............................................................................................. 12 
`
`A. 
`
`Story of the invention of the ’371 Patent ............................................ 12 
`
`1. 
`
`2. 
`
`ParkerVision and Its History ..................................................... 12 
`
`ParkerVision’s Invention of Energy Sampling ......................... 14 
`
`B. 
`
`C. 
`
`Story of the district court litigation of the ’371 patent ........................ 16 
`
`Claim Construction ............................................................................. 17 
`
`1. 
`
`2. 
`
`“pulses” and “pulse generator” ................................................. 18 
`
`“energy is … integrated … during said apertures” ................... 20 
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`IPR2014-00948
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`3. 
`
`4. 
`
`“storage module” ....................................................................... 21 
`
`“generated from the transferred energy” .................................. 26 
`
`IV.  The Board Should Deny the Petition in Its Entirety Because Petitioner Did
`Not Provide Sufficient Evidence to establish a prima face case that the
`References Anticipate Claims 2, 22, 23, and 25 ............................................ 31 
`
`A. 
`
`Petitioner Did Not establish a prima face case that Estabrook
`Anticipates Claims 2, 22, 23, and 25 .................................................. 31 
`
`1. 
`
`2. 
`
`Petitioner Failed to Establish that Estabrook Teaches All the
`Elements of Claim 2 .................................................................. 31 
`
`Petitioner Failed to Establish that Estabrook Teaches the
`“Storage Module” of Claim 22 ................................................. 37 
`
`B. 
`
`Petitioner Did Not establish a prima face case that Avitabile
`Anticipates Claims 2, 22 and 25.......................................................... 39 
`
`1. 
`
`2. 
`
`Petitioner failed to establish that Avitabile Teaches All the
`Elements of the claim 2 ............................................................. 39 
`
`Petitioner Failed to Establish that Avitabile Teaches the
`“Storage Module” of Claim 22 ................................................. 42 
`
`C. 
`
`Petitioner Did Not establish a prima face case that Weisskopf
`Anticipates Claims 2, 22, 23, and 25 .................................................. 44 
`
`1. 
`
`2. 
`
`Petitioner Failed to Establish that Weisskopf Teaches All the
`Elements of Claim 2 .................................................................. 44 
`
`Petitioner Failed to Establish that Weisskopf Teaches the
`“Storage Module” of Claim 22 ................................................. 47 
`
`V.  With nothing at stake for Petitioner, the Board should use its discretion to
`deny institution of an unnecessary and complicated trial .............................. 49 
`
`VI.  Petitioner’s Proposed Challenges Relying on Weisskopf and Estabrook Are
`Redundant to Those Relying on Avitabile .................................................... 51 
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`IPR2014-00948
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`VII.  Conclusion ..................................................................................................... 53 
`
`VII. Conclusion ..................................................................................................... 53
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`Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 6 of 63
`IPR2014-00948
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`TABLE OF AUTHORITIES
`
`
`Cases 
`Aventis Pharmaceuticals v. Amino Chemicals Ltd.,
`715 F.3d 1363 (Fed. Cir. 2013) ..................................................................... 26
`
`Bettcher Indus., Inc. v. Bunzl USA, Inc.,
`661 F.3d 629 (Fed. Cir. 2011) ......................................................................... 5
`
`Ethicon Endo-Surgery v. United States Surgical Corp.,
`93 F.3d 1572 (Fed. Cir. 1996) ....................................................................... 28
`
`Gubelmann v. Gang,
`408 F.2d 758 (C.C.P.A. 1969) ......................................................................... 5
`
`In re Hiniker Co.,
`150 F.3d 1362 (Fed. Cir. 1998) ..................................................................... 30
`
`In re Oelrich,
`666 F.2d 578 (C.C.P.A. 1981) ......................................................................... 5
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) ..................................................................... 17
`
`In re Van Geuns,
`988 F.2d 1181 (Fed. Cir. 1993) ..................................................................... 18
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc.
`381 F.3d 1111 (Fed. Cir. 2004) ..................................................................... 26
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012) ....................... 50, 51, 52
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper 8 (P.T.A.B. Oct. 25, 2012) ............................... 9, 50
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) ....................................................................... 26
`
`MEHL/Biophile Int’l Corp. v. Milgraum,
`192 F.3d 1362 (Fed. Cir. 1999) ....................................................................... 5
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`Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 7 of 63
`IPR2014-00948
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`Microsoft Corp. v. Proxyconn, Inc.,
`IPR2012-00026, Paper 17 (P.T.A.B Dec. 21, 2012) ....................................... 6
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ....................................................................... 4
`
`Olympus Am., Inc. v. Perfect Surgical Techniques, Inc.,
`IPR2014-00233, Paper 15 (P.T.A.B., June 16, 2014). .................................. 51
`
`RPX Corp. v. ParkerVision, Inc.,
`IPR2014-01107, Paper 2 (P.T.A.B. July 2, 2014) ......................................... 27
`
`RPX Corp. v. VirnetX, Inc.,
`IPR2014-00171, Paper 52 (P.T.A.B. June 23, 2014) ............................. 11, 12
`
`Ultratec, Inc. v. Sorenson Commc’ns, Inc.,
`IPR2013-00288, Paper 23 (P.T.A.B. Jan. 10, 2014) ..................................... 51
`
`Unilever, Inc. v. The Proctor & Gamble Co.,
`IPR2014-00506, Paper 17 (P.T.A.B. Jul. 7, 2014) ........................................ 50
`
`Verdegaal Bros., Inc. v. Union Oil Co. of Cal.,
`814 F.2d 628 (Fed. Cir. 1987) ......................................................................... 4
`
`Statutes 
`
`35 U.S.C. § 102 .......................................................................................................... 4
`
`35 U.S.C. § 102(b) ..................................................................................................... 2
`
`35 U.S.C. § 312(a)(3) ................................................................................................. 8
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`35 U.S.C. § 326(b) ................................................................................................... 10
`
`Rules 
`
`37 C.F.R. § 42.100(b) .............................................................................................. 17
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`37 C.F.R. § 42.101(b) .............................................................................................. 10
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`37 C.F.R. § 42.108(b) .............................................................................................. 51
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`77 Fed. Reg. 48756 (Aug. 14, 2012) ....................................................................... 17
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`Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 8 of 63
`IPR2014-00948
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`IPR2014-00948
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`Other Authorities 
`
`Other Authorities
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`M.P.E.P. § 800 ......................................................................................................... 30
`M.P.E.P. § 800 ......................................................................................................... 3O
`
`M.P.E.P. § 2131 ......................................................................................................... 4
`M.P.E.P. § 2131 .........................................................................................................4
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`Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 9 of 63
`IPR2014-00948
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`Exhibit
`2001
`2002
`2003
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`2004
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`EXHIBIT LIST
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`DESCRIPTION
`
`Not Used
`Not Used
`8-13-14 e-mail from ParkerVision’s counsel to Petitioner’s
`counsel
`Estabrook et al., A Mixer Computer-Aided Design Tool Based in
`the Time Domain, IEEE MTT-S Digest, pp. 1107-1110 (1988).
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`- vii -
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`Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 10 of 63
`IPR2014-00948
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`Petitioner Farmwald and RPX Corporation’s inter partes review Petition of
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`U.S. Patent No. 6,370,371 was accorded a filing date on June 24, 2014. (Paper 3.)
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`Accordingly, Patent Owner ParkerVision Inc. timely files this preliminary
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`response.
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`I.
`
`Introduction
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`The ’371 patent is a member of a large family of pioneering patents
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`protecting groundbreaking wireless communication technologies. (See Section
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`III.A.) The ’371 is battle tested, having been involved in a recent litigation where
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`all the claims at issue in the litigation were found to be valid. (ParkerVision, Inc.
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`v. Qualcomm Incorporated, Case No. 3:11-cv-719-J-37TEM, M.D. Fla; hereafter
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`“the Qualcomm Litigation”). In fact, claim 2 challenged here was found to be valid
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`in the Qualcomm Litigation. Claims 22, 23 and 25 challenged here were not in the
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`final decision of the Qualcomm Litigation, but if they had they would also have
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`been found valid as they depend from claim 2. It is noteworthy that claim 2 was
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`found valid in the Qualcomm Litigation over the Weisskopf reference and a close
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`version1 of the Estabrook reference advanced here by Petitioner.2 (See Section
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`III.B.)
`
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`1 Estabrook et al., “A Mixer Computer-Aided Design Tool Based in the
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`Time Domain, IEEE MTT-S Digest” is provided as Ex. 2004.
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`Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 11 of 63
`IPR2014-00948
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`A. The flawed Petition filed by Farmwald and RPX does not establish
`the invalidity of any claim of the ’371 patent. The Board should,
`therefore, deny all the grounds of challenge and not institute inter
`partes review of the ’371 patent.
`
`The Petition proposes three grounds for challenge (Petition, p. 3):
`
`A. Challenge 1: claims 2, 22, 23, and 25 are anticipated under 35 U.S.C.
`
`§ 102(b) by Estabrook3.
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`B. Challenge 2: claims 2, 22, and 25 are anticipated under 35 U.S.C. §
`
`102(b) by Avitabile4.
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`C. Challenge 3: claims 2, 22, 23, and 25 are anticipated under 35 U.S.C.
`
`§ 102(b) by Weisskopf5.
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`Section IV discusses the Petition’s legal and technical insufficiencies. While
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`additional deficiencies exist and may be addressed later, if necessary, the table
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`below summarizes the deficiencies addressed in this Preliminary Response.
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`
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`2 The Avitabile reference was not involved in the Qualcomm Litigation.
`
`3 Estabrook, “The direct conversion receiver: Analysis and design of the
`
`front-end components, ” is submitted as Ex. 1022.
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`4 Avitabile is submitted as Ex. 1024.
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`5 Weisskopf is submitted as Ex. 1023.
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`Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 12 of 63
`IPR2014-00948
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`Claim
`
`2. An apparatus, comprising:
` at least one universal frequency
`down-conversion module, including
`a switch, an integrator coupled to
`said switch, and a pulse generator
`coupled to said switch; and
` wherein said pulse generator
`outputs pulses to said switch at an
`aliasing rate that is determined
`according to:
` (a frequency of a carrier signal +/-
`a frequency of a lower frequency
`signal) divided by N;
` wherein said pulses have apertures
`and cause said switch to close and
`sub-sample the carrier signal over
`said apertures, and
` wherein energy is transferred from
`the carrier signal and integrated
`using said integrator during said
`apertures of said pulses, and
` wherein the lower frequency signal
`is generated from the transferred
`energy.
`
`22. The apparatus of claim 2,
`wherein each of said at least one
`universal frequency down-
`conversion module comprises:
` an energy transfer signal generator;
` a switch module controlled by said
`energy transfer signal generator; and
` a storage module coupled to said
`switch module.
`
`
`“X” Indicates Insufficiency
`Challenge 1
`Challenge 2
`Challenge 3
`(Estabrook)
`(Avitabile)
`(Weisskopf)
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`
`X
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`X
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`X
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`X
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`X
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`X
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`X
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`X
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`X
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`Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 13 of 63
`IPR2014-00948
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`B.
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`Inter partes review should not be instituted because the Petition is
`fatally flawed
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`The Board should not institute inter partes review because the Petition is
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`replete with statutory deficiencies and evidentiary gaps. These deficiencies are
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`summarized below.
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`1.
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`The Petition fails to make out a prima facie case of
`anticipation and contains irreparable and substantial
`evidentiary gaps
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`The Petition advances only anticipation challenges, and the requirements for
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`anticipation are high and strict. A claim is anticipated “only if each and every
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`element as set forth in the claim is found, either expressly or inherently described,
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`in a single prior art reference.” M.P.E.P. § 2131 (quoting Verdegaal Bros., Inc. v.
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`Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987)).
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`Consistent with Patent Office guidance, the Court of Appeals for the Federal
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`Circuit has explained that “the hallmark of anticipation is prior invention” and “the
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`prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only
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`disclose all elements of the claim within the four corners of the document, but must
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`also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v.
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`VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (emphasis added).
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`To demonstrate that a claimed feature is inherent, the Petition must establish
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`that “the prior art necessarily functions in accordance with, or includes, the
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`Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 14 of 63
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`claimed limitations….” MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362,
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`1365 (Fed. Cir. 1999) (emphasis added). If the feature “is not inevitably present …
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`[as] the natural result flowing from the operation [of the prior art] as taught,” then
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`it is not inherent. In re Oelrich, 666 F.2d 578, 581-82 (C.C.P.A. 1981).
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`Furthermore, “[w]here support must be based on an inherent disclosure, it is not
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`sufficient that a person following the disclosure might obtain the result set forth in
`
`the [claim]; it must invariably happen.” Gubelmann v. Gang, 408 F.2d 758, 766
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`(C.C.P.A. 1969) (emphasis added). Nor can mere “speculation” serve as a
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`substitute for factual support since “the speculative notion that by happenstance the
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`[prior art feature] might, under hypothetical circumstances, be capable of operating
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`as [claimed] is an insufficient basis” for inherency. Bettcher Indus., Inc. v. Bunzl
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`USA, Inc., 661 F.3d 629, 640 (Fed. Cir. 2011) (emphasis added).
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`As discussed in detail in the sections below, the Petition does not establish a
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`prima face case that the prior art expressly or inherently teaches every element of
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`the challenged claims. Moreover, it appears Petitioner decided to pick and choose
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`what limitations to even discuss since its prima facie case ignores explicitly recited
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`claim elements of a number of claims.
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`For example, the Petition does not provide persuasive evidence that the prior
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`art references expressly or inherently teach “wherein energy is … integrated using
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`said integrator during said apertures of said pulses” of claim 2. This limitation is
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`Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 15 of 63
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`directed to plural “apertures” – meaning energy is integrated over multiple
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`apertures. The Petition ignores this key limitation and does not even attempt to
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`argue the prior art teaches integrating energy over multiple apertures.
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`As another example, the Petition does not meet the minimum threshold
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`showing with evidence that Estabrook expressly or inherently teaches “outputs
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`pulses” as required by claim 2. The Petition focuses only on duration of a control
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`signal (Petition, pp. 15 and 42) but in doing so the Petition addresses at most the
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`“apertures.” Nowhere does the Petition put forth an argument that Estabrook
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`expressly or inherently teaches “outputs pulses.”
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`2.
`
`The Petition’s challenges depend on flawed claim
`constructions
`As discussed in detail in the sections below, inter partes review should not
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`be instituted because the Petition’s arguments for unpatentability depend upon
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`erroneous and unreasonable claim interpretations. This was the case in IPR2012-
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`00026, where the Board rejected Petitioner's proposed claim interpretation and
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`denied the proposed grounds, holding that “[a]s this argument is premised on
`
`Petitioner’s erroneous claim construction we are not persuaded of a reasonable
`
`likelihood of prevailing.” Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026,
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`Paper 17, p. 24 (P.T.A.B Dec. 21, 2012) (emphasis added).
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`Case 6:21-cv-00520-ADA Document 32-15 Filed 02/23/22 Page 16 of 63
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`The Board should reach the same result here, as Petitioner’s claim
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`constructions are confusing, ambiguous and not supported by the specification.
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`For example, the Petition proposes a construction of “pulse generator” of
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`claim 2 as “an apparatus for generating a control signal of any duration.” (Petition,
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`p. 15.) The Petition’s construction is nonsensical and unreasonable on its face
`
`because “any duration” would encompass a control signal of no duration and
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`infinite duration, both of which are contrary to the teachings of the specification.
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`The Petition’s argument for this construction also makes no sense, as it appears to
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`argue “any duration” is meant to define a “pulse” (id.), yet its proposed
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`construction clearly seeks to use “any duration” to define “control signal.”
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`Accordingly, the Petition’s construction of “pulse generator” is unreasonable and
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`deficient because it is nonsensical, confusing and ambiguous.
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`As another example, the Petition construes “storage module” of claim 22 as
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`“an apparatus that stores energy transferred during a non-negligible aperture.”
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`(Petition, p. 32.) The Petition then further narrows this term, construing “non-
`
`negligible” by importing the limitations of claim 98 from U.S. Patent No.
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`6,061,551. In particular, the Petition states the “broadest reasonable interpretation
`
`of ‘non-negligible’ in this context is objectively defined by dependent claim 98 of
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`the’551 patent, which establishes that apertures of ‘one tenth of one percent of
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`approximate half cycles of the carrier signal’ are necessarily non-negligible.” (Id.)
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`This construction is clearly flawed. Inclusion of “during a non-negligible aperture”
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`improperly imports limitations from the specification.
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`The Petition’s flawed claim constructions undermine its anticipation
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`challenges that rely on those constructions since any application of art to an
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`incorrectly constructed claim cannot be a proper anticipation analysis. Therefore,
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`inter partes review should not be instituted for any of the challenged claims as the
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`Petition’s flawed constructions of “pulse generator” in claim 2 and “storage
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`module” in claim 22 (as well as other flawed constructions discussed below) defeat
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`all of its challenges.
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`3.
`
`The Petition never advances an inherency argument and,
`thus, the inherency doctrine cannot save its flawed
`challenges
`
`35 U.S.C. § 312(a)(3) provides “[a] petition… may be considered only if…
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`the petition identifies, in writing and with particularity, each claim challenged…
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`[and] the grounds on which the challenge to each claim is based.” Here the Petition
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`advances anticipation challenges based only on the expressed teachings of the
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`prior art references. Nowhere does the Petition clearly and with any particularity
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`articulate any inherency arguments. When the Petition advances a position that
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`might be interpreted as an inherency argument, the Petition does not satisfy the
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`strict requirements of the inherency doctrine.
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`Neither the Board nor Patent Owner should have to speculate when and
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`where Petitioner meant to rely on the inherency doctrine. Since Petitioner never
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`clearly articulates an inherency argument, the Board should not attempt to salvage
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`the Petition’s flawed challenges using the inherency doctrine. As stated by the
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`Board, “It would be unfair to expect the Patent Owner to conjure up arguments
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`against its own patent and just as inappropriate for the Board to take the side of the
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`Petitioner to salvage an inadequately expressed ground.” Liberty Mut. Ins. Co. v.
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`Progressive Cas. Ins. Co., CBM2012-00003, Paper 8, p. 14 (P.T.A.B. Oct. 25,
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`2012).
`
`When the Petition advances a position that might be interpreted as an
`
`inherency argument, the Petition does not satisfy the strict requirements of the
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`inherency doctrine. For example, when mapping Weisskopf (as well as Avitabile
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`and Estabrook) to the term “storage module” of claim 22, the Petition refers to Dr.
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`Abidi’s Noise Figure calculations. (Petition, p. 57 referencing Ex. 10046 § 34.) But
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`nowhere does the Petition or Dr. Abidi argue or provide evidence that Weisskopf
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`necessarily functions according to Dr. Abidi’s calculations. Thus, not only does
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`the Petition never articulate an inherency argument, the Petition also never satisfies
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`6 Abidi Declaration is submitted as Ex. 1004.
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`the strict requirements of the inherency doctrine, as discussed in detail in the
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`sections below.
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`4.
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`If trial is instituted, it should be limited to non-cumulative
`grounds
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`Grounds A (Estabrook) and C (Weisskopf) are redundant to Ground B
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`(Avitabile). Claim 2 was already found valid over a close version of Estabrook
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`(Ground A) and Weisskopf (Ground C) in the Qualcomm litigation (see above as
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`well as Section III.B). Accordingly, if trial is instituted, Grounds A and C should
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`be denied as cumulative, taking into account the burden on the Patent Owner and
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`considerations set forth in 35 U.S.C. § 326(b).
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`II. The Petition raises real party-in-interest and privity issues
`ParkerVision sued Qualcomm for infringement of the ’371 patent in 2011
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`(the Qualcomm Litigation). As a result, Qualcomm is barred from filing an inter
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`partes review under 37 C.F.R. § 42.101(b). Because the claims in the Qualcomm
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`litigation (which included claim 2 at issue here) were upheld as valid, Qualcomm
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`has great motivation to participate or orchestrate the challenge to the ’371 patent in
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`this proceeding.
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`Patent Owner has good reason to believe Qualcomm is in fact substantively
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`involved in the Petition and is therefore a real party-in-interest. The Petition states
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`only that “Qualcomm is not a current client of RPX Corporation” (Petition, n. 1,
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`emphasis added), which is an admission that Qualcomm is a former client of RPX.
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`Petitioner RPX and Farmwald carefully chose their words in describing
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`Qualcomm’s relationship to the Petition, rather than a more straightforward and
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`definitive statement.
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`RPX’s business model includes attacking patents in inter partes review
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`petitions on behalf of its clients. See, e.g., RPX Corp. v. VirnetX, Inc., IPR2014-
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`00171, Paper 52, pp. 9-10 (P.T.A.B. June 23, 2014) and related exhibits in that
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`proceeding. The Board recently found that “RPX [was] acting as a proxy” for a
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`third party when it improperly filed a petition in several IPRs where it was “at
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`most, ‘a nominal plaintiff’ with ‘no substantial interest’” in the proceedings, and
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`the third party on whose behalf RPX filed the IPR was time-barred from filing the
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`petitions itself. Id. By filing inter partes reviews on behalf of other parties without
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`naming those other parties, RPX clients avoid the estoppel associated with filing
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`IPRs and may even seek institution of otherwise time-barred IPR proceedings.
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`It is also noteworthy that Petitioner’s counsel, Mr. James Bailey, has been
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`and continues to be counsel for Qualcomm in the Qualcomm Litigation. By serving
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`as counsel for Petitioner, he exerts significant control over this proceeding and
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`continues to advance Qualcomm’s interests. By sharing Mr. Bailey with Petitioner
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`in the IPRs, Qualcomm has at least “implicitly authorized RPX to represent
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`[Qualcomm] in the instant proceedings,” which the Board has found to weigh in
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`favor of finding the authorizing party to be an RPI. RPX Corp., IPR2014-00171,
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`Paper 52 at 8-9.
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`ParkerVision is not asking the Board at this time for a ruling on the merits of
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`the RPI and privity issues. ParkerVision has met and conferred with Petitioner to
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`further investigate the connections between Petitioner and Qualcomm as they
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`relate to RPI and privity issues. (See Ex. 20037.) And while Petitioner has provided
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`declarations containing some information regarding the RPI and privity issues, if a
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`trial is instituted, ParkerVision intends to depose the declarants and to seek further
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`discovery on these issues so that the merits of these matters can be fairly resolved
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`after they have been properly aired and briefed.
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`III. The ’371 Patent
`A.
`Story of the invention of the ’371 Patent
`1.
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`ParkerVision and Its History
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`ParkerVision, headquartered in Jacksonville, Florida, was founded in 1989
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`by Jeff Parker and David Sorrells. Messrs. Parker and Sorrells first met while
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`working at Parker Electronics, which was a company founded by Jeff Parker.
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`Parker Electronics grew into a $100 million company that was eventually acquired
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`7 E-mail of August 13, 2014 from ParkerVision’s counsel to Petitioner’s
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`counsel is submitted as Ex. 2003
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`by Carrier Air Conditioning. After the sale of Parker Electronics, Mr. Parker and
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`Mr. Sorrells started a new company, ParkerVision, for a new product that would be
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`called CameraMan.
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`Mr. Parker conceived of CameraMan when, after his father passed away, he
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`found a cache of old home movies. After viewing them, he was saddened that his
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`father was always behind the camera and never in the picture. Thus, Messrs. Parker
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`and Sorrells designed CameraMan, a radio-controlled video camera that
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`automatically tracks a person holding a device (such as a microphone). Using this
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`technology, the person controlling the camera can also participate in the events
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`being filmed.
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`CameraMan was a success. It generated about $100 million in revenue, was
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`widely adopted, including by ABC World News Tonight and NASA, and won an
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`Emmy award. CameraMan originally targeted the professional market and carried
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`a price tag of up to $10,000; but, consistent with his inspiration for inventing it,
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`Mr. Parker wanted to design a consumer version that would sell for under $300. In
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`addition to being less expensive, the consumer model also had to be smaller and
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`consume less power (to run on batteries). Mr. Parker asked Mr. Sorrells to solve
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`these design challenges, which led to the invention that is the subject of the patents
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`at issue.
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`ParkerVision’s Invention of Energy Sampling
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`2.
`Mr. Sorrells soon discovered that the biggest obstacle to the consumer-
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`model CameraMan was its radio receiver. Radio signals (called “carrier signals”)
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`carry information (called “baseband signals”). A receiver strips out the baseband
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`signals from the carrier signal so that the device to which the receiver is attached
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`can use the baseband signals (e.g., to control the CameraMan).
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`Conventional radio receivers were either too large, too inefficient, or lacked
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`the range needed to make a consumer-model CameraMan feasible. Mr. Sorrells
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`considered using prior-art “direct-conversion” receivers because they were smaller,
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`but their performance was unacceptable. A prior-art receiver technology that Mr.
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`Sorrells investigated was called “voltage sampling.”
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`Mr. Sorrells liked the simplicity, size, and efficiency of the voltage-sampling
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`circuit, but it performed poorly in down-conversion circuitry. He decided to study
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`and experiment with voltage-sampling circuits to determine why they performed so
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`poorly. Mr. Sorrells and his team created and studied 50 to 100 prototypes.
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`Mr. Sorrells soon discovered that a widely held belief underlying most
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`voltage-sampling receivers was wrong. Most conventional voltage-sampling
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`devices were designed so that brief snapshots of the carrier wave’s voltage were
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`taken from a holding capacitor. A high impedance load at the output following the
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`holding capacitor ensured that the voltage sampler was efficient in preventing
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`voltage leakage. Taking more than a brief snapshot of the carrier's voltage and
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`lowering the load impedance, according to prevailing wisdom, would distort the
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`incoming carrier wave and destroy