Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 1 of 31
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
` Plaintiff,
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`
`PARKERVISION, INC.,
`
`
`
` v.
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`LG ELECTRONICS, INC.,
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` Defendant.
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`
`
`
`Case No. 6:21-cv-00520-ADA
`
`JURY TRIAL DEMANDED
`
`PLAINTIFF PARKERVISION, INC.’S
`RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`
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`

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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 2 of 31
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`Exhibit
`1
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`Abbreviation
`PV 108 Op. Br.
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`1-1
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`1-2
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`1-3
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`2
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`3
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`PV 108 Resp. Br.
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`PV 108 Rep. Br.
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`3-1
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`4
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`PV 562 Op. Br.
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`4-1
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`4-2
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`4-3
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`4-4
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`
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`5
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`PV 562 Rep. Br.
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`5-1
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`5-2
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`
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`Table of Exhibits
`
`
`Description
`Plaintiff ParkerVision’s Opening Claim
`Construction Brief in ParkerVision, Inc. v. Intel
`Corp., No. 6:20-cv-00108, Dkt. No. 51 (W.D.
`Tex. Oct. 30, 2020)
`Exhibit 1 to PV 108 Op. Br. (ParkerVision, Inc. v.
`Intel Corp., No. 6:20-cv-00108, Dkt. No. 51-1)
`Exhibit 2 to PV 108 Op. Br. (ParkerVision, Inc. v.
`Intel Corp., No. 6:20-cv-00108, Dkt. No. 51-2)
`Exhibit 3 to PV 108 Op. Br. (ParkerVision, Inc. v.
`Intel Corp., No. 6:20-cv-00108, Dkt. No. 51-3)
`Plaintiff ParkerVision’s Responsive Claim
`Construction Brief in ParkerVision, Inc. v. Intel
`Corp., No. 6:20-cv-00108, Dkt. No. 57 (W.D.
`Tex. Nov. 20, 2020)
`Plaintiff ParkerVision’s Reply Claim Construction
`Brief in ParkerVision, Inc. v. Intel Corp., No.
`6:20-cv-00108, Dkt. No. 65 (W.D. Tex. Dec. 11,
`2020)
`Declaration of Dr. Michael Steer, Exhibit 1 to PV
`108 Rep. Br. (ParkerVision, Inc. v. Intel Corp.,
`No. 6:20-cv-00108, Dkt. No. 65-1)
`Plaintiff ParkerVision’s Opening Claim
`Construction Brief in ParkerVision, Inc. v. Intel
`Corp., No. 6:20-cv-00562, Dkt. No. 37 (W.D.
`Tex. Feb. 15, 2021)
`Exhibit 1 to PV 562 Op. Br. (ParkerVision, Inc. v.
`Intel Corp., No. 6:20-cv-00562, Dkt. No. 37-1)
`Exhibit 2 to PV 562 Op. Br. (ParkerVision, Inc. v.
`Intel Corp., No. 6:20-cv-00562, Dkt. No. 37-2)
`Exhibit 3 to PV 562 Op. Br. (ParkerVision, Inc. v.
`Intel Corp., No. 6:20-cv-00562, Dkt. No. 37-3)
`Exhibit 4 to PV 562 Op. Br. (ParkerVision, Inc. v.
`Intel Corp., No. 6:20-cv-00562, Dkt. No. 37-4)
`Plaintiff ParkerVision’s Reply Claim Construction
`Brief in ParkerVision, Inc. v. Intel Corp., No.
`6:20-cv-00562, Dkt. No. 43 (W.D. Tex. Apr. 21,
`2021)
`Declaration of Dr. Michael Steer, Exhibit 1 to PV
`562 Rep. Br. (ParkerVision, Inc. v. Intel Corp.,
`No. 6:20-cv-00562, Dkt. No. 43-1)
`Exhibit 2 to PV 562 Rep. Br. (ParkerVision, Inc.
`v. Intel Corp., No. 6:20-cv-00562, Dkt. No. 43-2)
`
`i
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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 3 of 31
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`6
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`PV 870/945 Resp. Br.
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`6-1
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`6-2
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`6-3
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`6-4
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`6-5
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`7
`
`8
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`PV 870/945 Sur-Rep. Br.
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`[CORRECTED] ParkerVision’s Responsive
`Claim Construction Brief in ParkerVision, Inc. v.
`TCL Industries Holdings Co., Ltd. et al., No. 6:20-
`cv-00945, Dkt. No. 38 (W.D. Tex. Sept. 23, 2021)
`Declaration of Dr. Michael Steer, Affidavit 1 to
`PV 870/945 Resp. Br. (ParkerVision, Inc. v. Intel
`Corp., No. 6:20-cv-00945, Dkt. No. 38-1)
`Exhibit 1 to PV 870/945 Resp. Br. (ParkerVision,
`Inc. v. Intel Corp., No. 6:20-cv-00945, Dkt. No.
`38-2)
`Exhibit 2 to PV 870/945 Resp. Br. (ParkerVision,
`Inc. v. Intel Corp., No. 6:20-cv-00945, Dkt. No.
`38-3)
`Exhibit 3 to PV 870/945 Resp. Br. (ParkerVision,
`Inc. v. Intel Corp., No. 6:20-cv-00945, Dkt. No.
`38-4)
`Exhibit 4 to PV 870/945 Resp. Br. (ParkerVision,
`Inc. v. Intel Corp., No. 6:20-cv-00945, Dkt. No.
`38-5)
`ParkerVision’s Sur-Reply Claim Construction
`Brief in ParkerVision, Inc. v. TCL Industries
`Holdings Co., Ltd. et al., No. 6:20-cv-00945, Dkt.
`No. 42 (W.D. Tex. Oct. 12, 2021)
`Excerpts of ’835 patent file history
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`ii
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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 4 of 31
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`Table of Contents
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`Page
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`I.
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`II.
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`LG wants the Court to revisit its constructions of “storage” terms for a fourth time. ........ 1
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`Technology background...................................................................................................... 2
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`III.
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`Disputed terms for construction. ......................................................................................... 2
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`A.
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`Energy “storage” module/element/device terms. .................................................... 2
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`1.
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`2.
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`The intrinsic evidence supports the Court’s prior construction .................. 3
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`The PTAB’s construction is technically and legally wrong. ...................... 7
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`B.
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`“cable modem” (’835 patent, claim 1) .................................................................... 9
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`IV.
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`Terms incorporated by reference from briefing in prior litigations .................................. 12
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`iii
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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 5 of 31
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`Table of Authorities
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`
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`Page(s)
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`Cases
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`Ancora Techs., Inc. v. LG Elec. Inc.,
`No. 1-20-CV-00034, 2020 U.S. Dist. LEXIS 150002
`(W.D. Tex. Aug. 19, 2020) ................................................................................................11, 12
`
`Apple Inc. v. Andrea Elecs. Corp.,
`949 F.3d 697 (Fed. Cir. 2020)....................................................................................................3
`
`Baran v. Med. Device Techs., Inc.,
`616 F.3d 1309 (Fed. Cir. 2010)..................................................................................................3
`
`Baxalta Inc. v. Genentech, Inc.,
` 972 F.3d 1341 (Fed. Cir. 2020) ...........................................................................................7, 8
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..................................................................................................9
`
`
`
`iv
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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 6 of 31
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`I.
`
`LG wants the Court to revisit its constructions of “storage” terms for a fourth time.
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`The claims of the patents-in-suit1 include the terms “storage” element/module/device.
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`This Court has already considered these terms three previous times in litigations against Intel,
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`TCL and Hisense. The Court has consistently maintained its constructions – “[an element/a
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`module/a device] of an energy transfer system that stores non-negligible amounts of energy from
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`an input electromagnetic signal.” See D.I. 32-11 (“108 CC Order”) at 5-6; D.I. 32-12 (“562 CC
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`Order”) at 3; D.I. 32-13 (“Special Master’s Rec. CC”) at 6.
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`Undeterred, LG asks this Court to consider these terms for a fourth time. But LG merely
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`repeats the exact same arguments this Court has heard so many times before. The only new fact
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`that LG relies on is the PTAB’s recently-issued decision regarding the construction of “storage
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`element” in an Intel-filed IPR related to the ’444 patent. See D.I. 33 (“LG Op. Br.”) at 5-8 (citing
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`D.I. 32-14 (“’444 FWD”)).
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`In the IPR, the PTAB considered the exact same arguments that Intel twice made to this
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`Court (and the Court twice rejected). And despite being aware of this Court’s construction, the
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`PTAB afforded no deference to this Court and expressly rejected the Court’s construction.
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`LG is now asking this Court to defer to the PTAB’s construction – a construction that is
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`wrong (technically and legally) and based on flawed logic. 2 Indeed, LG has it backwards. This
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`Courts owes no deference to the PTAB. Claim construction is a matter of law for this Court to
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`1 U.S. Patent Nos. 6,049,706 (“the ’706 patent”); 6,266,518 (“the ’518 patent”); 6,580,902 (“the
`’902 patent”); 7,110,444 (“the ’444 patent”); 7,292,835 (“the ’835 patent”); 8,588,725 (“the ’725
`patent”); 8,660,513 (“the ’513 patent”); 9,118,528 (“the ’528 patent”); 9,246,736 (“the ’736
`patent”); and 9,444,673 (“the ’673 patent”).
`
`2 This case involves complex wireless technology. Dr. Joshua Yi, a Ph.D. in electrical
`engineering, worked with the Court as a law clerk, technical advisor and special master in the
`Intel and TCL/Hisense cases.
`
`1
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`

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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 7 of 31
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`decide and this Court has already construed the “storage” terms in view of the same-rejected
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`arguments LG makes here.
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`II.
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`Technology background.
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`The Court has on multiple occasions considered ParkerVision’s discussion of wireless
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`technology and the patents-in-suit. As such, ParkerVision does not repeat its discussion in this
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`brief. The discussion is set forth in ParkerVision’s Opening Claim Construction Brief in Case
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`No. 6:20-cv-00108. See Ex. 1 (“PV 108 Op. Br.”) at Sections II, III.
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`III.
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`Disputed terms for construction.
`
`A.
`
`Energy “storage” module/element/device terms.
`
`LG’s Construction
`“a module that stores a non-negligible amount
`of energy from an input electromagnetic (EM)
`signal”4
`
`(’706 patent, claims 105, 114, 115, 164, 166, 168, 175, 179, 186, 190; ’902 patent,
`claim 1; ’444 patent, claim 3; ’835 patent, claims 1, 18, 20; ’725 patent, claims
`1, 6, 17, 18, 19; ’513 patent, claim 19; ’528 patent, claims 1, 9; ’736 patent,
`claims 1, 11, 21, 26, 27; ’673 patent, claims 13, 17, 18)
`
`ParkerVision’s Construction
`Energy storage element / storage element:
`“an element of an energy transfer system that
`stores non-negligible amounts of energy from
`an input electromagnetic signal”3
`
`Energy storage module / storage module:
`“a module of an energy transfer system that
`stores non-negligible amounts of energy from
`an input electromagnetic signal”
`
`Energy storage device: “a device of an
`energy transfer system that stores non-
`negligible amounts of energy from an input
`electromagnetic signal”
`
`
`3 In prior litigations, ParkerVision’s proposed construction of the “storage” terms included “for
`driving a low impedance load.” Because the Court has not previously included this language in
`its prior construction of the “storage” terms, ParkerVision will not re-argue the issue of low
`impedance load and does not include that language in its construction here.
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`4 LG’s construction is incorrect on its face. LG seeks to construe all “storage” terms including
`“storage element” and “storage device” as a “module.”
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`2
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`

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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 8 of 31
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`
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`This Court has, on three separate occasions, considered and construed “storage”
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`element/module/device as “[an element/a module/a device] of an energy transfer system that
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`stores non-negligible amounts of energy from an input electromagnetic signal.” See 108 CC
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`Order at 5-6; 562 CC Order at 3; Special Master’s Rec. CC at 6. Each time, the defendants (Intel,
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`TCL, Hisense) repeated the same arguments. Other than the recent PTAB decision (which
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`repeats the same mistakes as defendants), LG has not presented any new arguments that the
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`Court has not already heard multiple times.
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`The intrinsic evidence supports the Court’s prior construction.
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`1.
`An energy “storage” module/element/device5 is a term reserved exclusively for a
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`component of an energy transfer (energy sampling) system. See PV 108 Op. Br. at Section III.A.
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`On the other hand, a “holding” module/element/device6 is a term reserved exclusively for a
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`component of a sample-and-hold (voltage sampling) system. See id. at Section III.B. The patent
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`specification clearly distinguishes between the two— an energy “storage”
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`module/element/device as a component of an energy transfer (energy sampling) system as
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`opposed to a “holding” module/element/device being a component in a sample-and-hold (voltage
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`sampling) system. Compare D.I. 32-1 (“’518 patent”) at 65:56-67:39 (describing an energy
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`transfer system) with id. at 54:10-36 (describing a sample and hold system). As such, an energy
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`“storage” module must be construed in a way that distinguishes it from a “holding” module.7 As
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`5 “Storage module” will be used as shorthand for a “storage” element, module, or device.
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`6 “Holding module” will be used as shorthand for a “holding” element, module, or device.
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`7 See Apple Inc. v. Andrea Elecs. Corp., 949 F.3d 697, 708, (Fed. Cir. 2020) (“As we have held,
`‘[when] the patent describes multiple embodiments, every claim does not need to cover every
`embodiment. This is particularly true [when] the plain language of a limitation of the claim does
`not appear to cover that embodiment.’”); see also Baran v. Med. Device Techs., Inc., 616 F.3d
`1309, 1315 (Fed. Cir. 2010) (“It is not necessary that each patent claim read on every
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`3
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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 9 of 31
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`discussed below, the distinctions between a “storage” module in an energy transfer system and a
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`“holding” module in a sample-and-hold system are spelled out in the patent specification. Like
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`Intel, TCL and Hisense before them, this is what LG (and the PTAB) ignore.
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`The parties agree that an energy “storage” module “stores a non-negligible amount of
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`energy from an input electromagnetic (EM) signal.” But as ParkerVision explained to the Court
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`on three previous occasions, this feature alone does not distinguish a “storage” module of an
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`energy transfer system from a “holding” module of a sample-and-hold system. There is a key
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`distinguishing feature – the “storage” module is part “of an energy transfer system.” See, e.g.,
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`’518 patent, 62:50-61; 65:56-67:39, 97:14 – 101:67, Figs. 65, 68A-G, 74, 82A, 82B, 95.
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`Unlike an energy transfer system which, as the name implies, transfers (discharges) a
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`non-negligible amount of energy, a sample-and-hold systems uses a high impedance load to hold
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`(i.e., not transfer/discharge) voltage/charge. ’518 patent, 63:19-26, 44-53. In other words,
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`whereas a “storage” module stores energy for subsequent transfers/discharges of energy, a
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`“holding” module is “holding a voltage value.” PV 108 Op. Br. at Section III. Thus, the
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`specification is clear that the term “storage” module is specific to an “energy transfer system”
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`and a “holding” module is specific to a sample-and-hold system.
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`The Court’s prior constructions recognize this important distinction. Indeed, in addition
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`to the textual description in the specification, this distinction between “storage” and “holding”
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`modules is readily apparent in the patent figures.
`
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`embodiment. . . . ‘It is often the case that different claims are directed to and cover different
`disclosed embodiments.’” (quoting Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d
`1379, 1383 (Fed. Cir. 2008)).
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`4
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`

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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 10 of 31
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`
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`For example, as shown in Figures 68G and 82B above, when discussing an energy
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`transfer system, the specification uses the term “storage” module/capacitance (green). See also
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`’518 patent at Figs. 65, 68A-G, 74, 82A, 82B, 95. On the other hand, as shown in Figures 29G
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`and 78B above, when discussing a sample and hold system, the specification uses the term
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`“holding” module/capacitance (yellow). See also id. at Figs. 24A, 27, 29A-G, 42, 65, 78A, 78B.
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`Thus, ParkerVision’s construction is consistent with this distinguishing feature and recites that
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`the energy “storage” module is part of an “energy transfer system.”
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`In fact, the patents include a section entitled “0.1.2 Introduction to Energy Transfer”
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`5
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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 11 of 31
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`(’518 patent, 65:56),8 which states:
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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 intent of ‘holding’ a voltage value. Storage modules and storage
`capacitances, on the other hand, refer to systems that store non-negligible amounts
`of energy from an input EM signal.
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`Id., 66:11-23; see also id. at 53:24-58:29 (discussing sample and hold systems); 65:56 – 67:39,
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`97:14-101:67 (discussing energy transfer systems).
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`Notably, similar to all other defendants before it, LG does not dispute that a “storage”
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`element is only an element of an energy transfer system. Indeed, LG provides no substantive
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`argument as to why including “an [element/ module/device] of an energy transfer system” is
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`wrong. Instead, LG (similar to the defendants before it) points to a single sentence from the
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`specification (shown in red above) and asserts that this one sentence, standing alone, is enough to
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`define the “storage” terms.
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`But LG ignores the patentee’s full description/lexicography. And as discussed below,
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`even in the single sentence LG relies on, it ignores the language “on the other hand” and “refer
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`to systems.” LG cannot simply cast aside the distinction the patentee makes between a “storage
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`module” and a “holding module” and the two distinct systems of which they are a part.
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`Indeed, the entire paragraph above describes a “storage” module in the context of an
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`energy transfer system (shown in green above). An energy transfer system is the only system that
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`has a “storage” module.
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`8 Unless indicated otherwise, all emphasis has been added.
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`6
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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 12 of 31
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`2.
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`The PTAB’s construction is technically and legally wrong.
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`The PTAB and LG incorrectly omits the concept that a storage module is a component of
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`an “energy transfer system.” The PTAB and LG place too much emphasis on this single last
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`sentence (in red above) to the exclusion of the complete disclosure in the specification. The
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`PTAB and LG claim to be adhering to the patentee’s lexicography, but they are not.
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`This last sentence alone (in red above) is not a lexicographic definition of storage
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`module. It is one sentence that is part of the specification’s entire teachings regarding the storage
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`module. And notably, this last sentence uses the language “on the other hand” and “refer to
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`systems” as a way to distinguish between a “holding” module in contrast to a “storage” module
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`and the two different systems of which they are a part. LG’s and the PTAB’s construction,
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`however, completely ignore this clear language. That is improper on its face.
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`Indeed, the entire passage quoted above focuses on characteristics of systems.
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`Specifically, the passage states that holding and storage modules/capacitances “identify”/“refer
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`to” systems that have certain characteristics – storing negligible or non-negligible amounts of
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`energy. The PTAB’s and LG’s reliance on, and misreading of the last sentence (in red above)
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`cannot negate the entirety of the specification’s teachings regarding the “storage” terms.9
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`In fact, the PTAB and LG are making the same claim-construction mistake the district
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`court made in Baxalta Inc. v. Genentech, Inc. In Baxalta, the district court determined that a
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`portion of the written description defined the term “antibody.” 972 F.3d 1341, 1346-47 (Fed. Cir.
`
`
`9 Indeed, the PTAB’s construction can lead to illogical results. In the event that a sample-and-
`hold system had a module that stored non-negligible amounts of energy, under the PTAB’s
`construction, that module would be a “storage module.” This is completely at odds with the
`patent specification’s disclosure, which states that (and explains why) sample-and-hold systems
`use “holding” modules to hold voltage, not “storage” modules, which store and
`discharge/transfer non-negligible amounts of energy.
`
`7
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`

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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 13 of 31
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`2020). In particular, the patent specification including a heading “Antibodies and Antibody
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`Derivatives” and stated that “Antibodies are immunoglobulin molecules having a specific amino
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`acid sequence . . . .” Id. The district court found that this excerpt defined the term
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`“antibody.” Id. The Federal Circuit disagreed.
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`The Federal Circuit held that the district court erred by merely looking at an excerpt from
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`the specification in isolation from the rest of the specification. Id. This is exactly what the PTAB
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`and LG are doing in this case. The Federal Circuit stated that “[w]hile this is a plausible reading
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`of the excerpt in isolation, claim construction requires that we ‘consider the specification as a
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`whole, and [] read all portions of the written description, if possible, in a manner that renders
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`the patent internally consistent.’” Id. (citing Budde v. Harley-Davidson, Inc., 250 F.3d 1369,
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`1379-80 (Fed. Cir. 2001)). Considering the entire specification, the Federal Circuit held that the
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`excerpt was a general introduction, not a definitional statement: “[w]hen considered in the
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`context of the remainder of the written description and the claims, we read the excerpt . . . as a
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`generalized introduction to antibodies rather than as a definitional statement.” Id. The Federal
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`Circuit noted that “these general statements do not include terms we have held to be limiting in
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`other contexts such as ‘the present invention includes . . .’ or ‘the present invention is . . .’ or ‘all
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`embodiments of the present invention are . . . .’” Id. (citing Luminara Worldwide, LLC v. Liown
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`Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016)). Similarly, in this case, neither the sentence the
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`PTAB and LG rely on nor the entire passage containing the sentence includes such limiting
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`language.
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`Finally, to bolster its position, LG (similar to the defendants before it) points to
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`ParkerVision’s proposed construction of “storage module” in IPR2014-00948 from 2014. LG
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`Op. Br. at 4. But as ParkerVision previously explained to this Court, that argument actually cuts
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`8
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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 14 of 31
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`against defendant’s argument. As the Court is aware, in 2014, the USPTO used the broadest
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`reasonable interpretation (BRI) standard for construing terms—a different standard than the one
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`federal courts use under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and its progeny.
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`Indeed, in 2018, the USPTO eliminated the BRI standard and harmonized the USPTO standard
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`with the standard federal courts use.
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`LG implies that during the IPR, ParkerVision conceded that the last sentence (in red
`
`above) alone is lexicography. LG is wrong. ParkerVision did no such thing. More specifically,
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`LG points to ParkerVision’s statement that “[t]he Specification provides an explicit definition
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`that supports this construction” and “[t]he incorporated ’551 Specification explicitly defines a
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`storage module and draws the distinction between storage modules and holding modules.” LG
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`Op. Br. at 4 (citing D.I. 32-15 at 21). Tellingly, LG neglects to mention that when ParkerVision
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`made these statements, ParkerVision’s brief included the same passage quoted above in its
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`entirety (’518 patent, 66:11-23), not merely the last sentence in red. In contrast to the PTAB’s
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`2014 decision under BRI, the standard that federal courts use requires a review of the entire
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`passage as a whole, not just the language in the sentence LG relies on. ParkerVision’s proposed
`
`construction is proper because it is consistent with the full disclosure in the patents-in-suit.
`
`For the foregoing reasons, as it has done three time before, the Court should maintain its
`
`prior constructions.
`
`B.
`
`“cable modem” (’835 patent, claim 1)
`
`ParkerVision’s Construction
`The entire preamble (including “cable
`modem”) is limiting.
`
`LG’s Construction
`Only the portion of the preamble reciting “an
`electromagnetic signal having complex
`modulations” is limiting.
`
`The preamble in claim 1 of the ’835 patent recites: “A cable modem for down-converting
`
`
`
`an electromagnetic signal having complex modulations, comprising, . . . .” The parties agree that
`
`9
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`

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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 15 of 31
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`the term “an electromagnetic signal having complex modulations” in the preamble of claim 1 is
`
`limiting. See LG Op. Br. at 8. But the parties disagree as to whether “cable modem” in the
`
`preamble is limiting. For the reasons discussed below, the “cable modem” is limiting.
`
`LG begins its argument by positing about ParkerVision’s purported motivation for
`
`seeking to construe the preamble as limiting. See LG Br., 8-9. LG’s sensationalized view of
`
`ParkerVision’s motivations for not previously addressing the preamble in the TLC/Hisense
`
`litigation is not only irrelevant, but wrong.
`
`Nevertheless, a cable modem is essential structure and gives life, meaning, and vitality to
`
`the claim. LG’s brief omits key details from the specification and claims that undercut LG’s
`
`position.
`
`First, the claims reflect the specification distinguishing between a “cable modem” from a
`
`conventional “data modem.” In particular, the specification states that whereas a cable modem is
`
`configured to communicate across “ordinary TV network cables,” a “data modem” is configured
`
`to communication cross “phone lines.”
`
`Id., 36:18-25. As such, what makes a modem a “cable” modem relates to the type of physical
`
`transmission line/cabling over which data is ultimately transmitted. Moreover, cable modems
`
`communicate using specific telecommunications standards and signals, and are configured to
`
`interoperate with certain electronic components. Accordingly, “cable modem” in the preamble
`
`
`
`10
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`

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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 16 of 31
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`recites “additional structure . . . underscored as important by the specification.” See Ancora
`
`Techs., Inc. v. LG Elec. Inc., No. 1-20-CV-00034, 2020 U.S. Dist. LEXIS 150002, at *18 (W.D.
`
`Tex. Aug. 19, 2020) (citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
`
`808-809 (Fed. Cir. 2002)).
`
`Second, as the name suggests, a “modem” is a device that performs both modulation and
`
`demodulation of analog carrier signals. A modem is a transceiver (i.e., a component that operates
`
`as a receiver and transmitter). ’835 patent, 48:21-41. The use of “modem” in the preamble means
`
`that the claim is not limited to merely a receiver, which performs down-conversion.10 Instead,
`
`the claims are directed to a configuration of a receiver that e.g., can operate along with a
`
`transmitter so that there is no interference between the receiver and transmitter. Again, here,
`
`“cable modem” recites additional structure underscored as important by the specification.
`
`Third, not all systems or devices “down-convert[] an electromagnetic signal having
`
`complex modulations.” The ’835 patent discloses Quadrature Amplitude Modulation (QAM) and
`
`Quadrature Phase-Shift Keying (QPSK) as exemplary types of “complex modulation.” Id.,
`
`40:36-41:16. QAM and QPSK are modulation techniques used in the transmission of digital
`
`television signals. Indeed, in discussing the cable modem 4502 in Figures 45A, 47-50, the
`
`specification states that the “[t]uner 4702 [in the cable modem] receives an input RF signal via
`
`tuner cable 4514. The input signal received by tuner 4702 is typically a QAM or QPSK
`
`modulation mode RF signal.” Id., 38:49-51. Notably, however, the ’835 patent does not discuss
`
`“complex modulations” (e.g., QAM and QPSK) as being used in numerous other systems or
`
`devices. See id., Sections 6.1-6.12. Accordingly, “cable modem” is essential structure and gives
`
`
`10 Furthermore, claim 1 recites a first and second “frequency down-conversion module.” The use
`of “cable modem for down-converting” in the preamble clarifies that the “down-conversion
`module” is not just any module.
`
`11
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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 17 of 31
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`life, meaning, and vitality to the claim.
`
`Indeed, the preamble of claim 1 as originally filed recited a “system” for down-
`
`converting. See Ex. 8 at 88. But in a preliminary amendment, applicants made a point to replace
`
`the term “system” with “cable modem.” See id. at 8. In other words, the applicants expressly
`
`narrowed the scope of the claims to a cable modem system having those elements.
`
`Finally, the cable modem is not an intended for use in/with the invention. The cable
`
`modem is the invention. This is unlike the inventions in TomTom and Ancora. In TomTom, Inc.
`
`v. Adolph, the preamble recited “generating and updating data for use in a destination tracking
`
`system of at least one mobile unit.” 790 F.3d 1315, 1323 (Fed. Cir. 2015). In TomTom, the
`
`“generating and updating data” was used in a destination tracking system. This portion of the
`
`preamble was merely “language stating a purpose or intended use and employs the standard
`
`pattern of such language: the words ‘a method for a purpose or intended use comprising,’
`
`followed by the body of the claim, in which the claim limitations describing the invention are
`
`recited.” Id. at 1324. In Ancora, the preamble recited “[a] method of restricting software
`
`operation within a license for use with a computer . . . .” 2020 U.S. Dist. LEXIS 150002, *17.
`
`The preamble was directed to using a license within the context of a computer.
`
`For the foregoing reasons, the Court should find the entirety of the preamble to be
`
`limiting, which includes the term “cable modem.”
`
`IV. Terms incorporated by reference from briefing in prior litigations.
`
`To reduce the burden on the Court and streamline the Markman proceedings, and with
`
`the Court’s permission (see D.I. 32-10), the parties are incorporating by reference the briefing
`
`from the prior litigations (Case Nos. 6:20-cv-00108, -562, -870, -945) for the twenty-eight claim
`
`terms identified below. The table below includes the parties’ constructions for each of the
`
`twenty-eight terms and includes citations to the briefing from each prior litigation that the parties
`
`12
`
`

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`Case 6:21-cv-00520-ADA Document 36 Filed 03/16/22 Page 18 of 31
`
`are incorporating by reference for that term.11
`
`Term
`No.
`
`Term
`
`3
`
`4
`
`5
`
`“said input sample”
`(’706 patent, cls. 1,
`6, 7)
`“said sample”
`(’706 patent, cl. 34)
`
`“under-sample” /
`“under-samples” /
`“under-sampling”
`(’706 patent, cls. 1,
`6, 7, 28, 34; ’444
`patent, cl. 2)
`
`“harmonic” /
`“harmonics“
`(’706 patent, cls. 1,
`6, 7, 28, 34; ’518
`patent, cl. 1)
`
`ParkerVision’s Construction
`and Citation(s) to Incorporated
`By Reference Arguments from
`Prior Litigations
`Plain and ordinary meaning
`
`Citation(s):12
`Ex. 4: PV 562 Op. Br. at 9-10, §
`V.B;
`Ex. 5: PV 562 Rep. Br. at 12-13, §
`IV.C
`
`“sampling at an aliasing rate” or
`“sampling at less than or equal to
`twice the frequency of the input
`signal”
`
`Citation(s):
`Ex. 1: PV 108 Op. Br. at 27-28, §
`IV.G;
`Ex. 2: PV 108 Resp. Br. at 2-4, §
`II; 20-23, § III.G;
`Ex. 3: PV 108 Rep. Br. at 3, § III;
`16-17, § V.G;
`Ex. 6: PV 870/945 Resp. Br. at 33-
`34, § IV.N
`
`Harmonic: “A sinusoidal
`component of a periodic wave that
`has a frequency that is an integer
`multiple of the fundamental
`frequency of the periodic
`waveform and including the
`fundamental frequency as the first
`harmonic”
`
`
`LGE’s Construction and
`Citation(s) to Incorporated By
`Reference Arguments from
`Prior Litigations
`“the sample of the image that has
`been down-converted”
`
`Citation(s):
`Ex. 21: Intel 562 Resp. Br. at 7, §
`II.B;
`Ex. 22: Intel 562 Rep. Br. at 7-8, §
`II.B
`“sampling at less than or equal to
`twice the frequency of the input
`signal”
`
`Citation(s):
`Ex. 23: Intel 108 Op. Br. at 19-24,
`§ IV.B;
`Ex. 24: Intel 108 Resp. Br. at 2-5,
`§ II; 18-22, § III.B;
`Ex. 25: Intel 108 Rep. Br. at 1-3, §
`II; 6-9, § III.B;
`Ex. 19: TCL/Hisense Op. Br. at
`31, § II.N;
`Ex. 20: TCL/Hisense Rep. Br. at
`15, § I.I
`Harmonic: “A sinusoidal
`component of a periodic wave that
`has a frequency that is an integer
`multiple of the fundamental
`frequency of the periodic wave”
`
`Harmonics: “Sinusoidal
`components of a periodic wave
`each of which have a frequency
`that is an integer multiple of the
`
`
`11 The parties recognize that the arguments that have been incorporated by reference in the table
`below have been preserved by the party for purposes of appeal.
`
`12 Citations to the prior litigation briefing in this table also include and incorporate by reference
`all declarations, appendices, and exhibits used in the cited portions of such briefing as well as
`any arguments made during oral argument related to such terms. See also D.I. 32-25