Case 6:21-cv-00520-ADA Document 37-1 Filed 03/30/22 Page 1 of 23
`Case 6:21-cv-00520-ADA Document 37-1 Filed 03/30/22 Page 1 of 23
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`EXHIBIT 32
`EXHIBIT 32
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`Case 6:20-cv-00108-ADA Document 117 Filed 03/21/22 Page 1 of 22Case 6:21-cv-00520-ADA Document 37-1 Filed 03/30/22 Page 2 of 23
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`PARKERVISION, INC.,
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`Plaintiff,
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`Civil Action No. 6:20-cv-00108-ADA
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` JURY TRIAL DEMANDED
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`vs.
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`INTEL CORPORATION,
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`Defendant.
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`
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`INTEL CORPORATION’S OPPOSED MOTION FOR FURTHER CLAIM
`CONSTRUCTION IN LIGHT OF PARKERVISION’S REPRESENTATIONS IN IPR
`PROCEEDINGS
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` I.
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`TABLE OF CONTENTS
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`INTRODUCTION AND SUMMARY OF THE ARGUMENT .....................................1
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`II.
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`STATEMENT OF FACTS ................................................................................................3
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`A.
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`B.
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`ParkerVision Persuaded This Court To Construe The Down-
`Converter Terms To Have Their Purported Plain And
`Ordinary Meaning .................................................................................................3
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`To Avoid Prior Art In Subsequent IPR Proceedings,
`ParkerVision Clearly And Unequivocally Disclaimed “Mixers”
`And “Mixing” .........................................................................................................5
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`III. ARGUMENT ......................................................................................................................8
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`A.
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`B.
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`ParkerVision’s Unequivocal Representations To The PTAB
`Constitute A Clear Disclaimer of Claim Scope ...................................................8
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`Having Preserved Validity By Disclaiming Claim Scope,
`ParkerVision Should Not Be Permitted To Now Walk Back
`Its Disclaimer ........................................................................................................13
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`IV. CONCLUSION ................................................................................................................16
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`i
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`
`
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`CASES
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Ajinomoto Co. v. International Trade Commission,
`932 F.3d 1342 (Fed. Cir. 2019)..........................................................................................14
`
`Astrazeneca AB, Aktiebolaget Hassle, KBI-E, Inc. v. Mutual Pharmaraceutical
`Co.,
`384 F.3d 1333 (Fed. Cir. 2004)..........................................................................................10
`
`Atofina v. Great Lakes Chemical Corp.,
`441 F.3d 991 (Fed. Cir. 2006)............................................................................................15
`
`Aylus Networks, Inc. v. Apple Inc.,
`2016 WL 270387 (N.D. Cal. Jan. 21, 2016) ........................................................................8
`
`Aylus Networks, Inc. v. Apple Inc.,
`856 F.3d 1353 (Fed. Cir. 2017)................................................................................1, 2, 8, 9
`
`Cook Group Inc. v. Boston Scientific Scimed, Inc.,
`809 F. App’x 990 (Fed. Cir. 2020) ....................................................................................15
`
`David Netzer Consulting Engineer LLC v. Shell Oil Co.,
`824 F.3d 989 (Fed. Cir. 2016)............................................................................................10
`
`Di Piazza v. Weather Grp. Television, LLC,
`2021 WL 3598282 (N.D. Tex. Mar. 23, 2021) ..................................................................15
`
`Huawei Technologies Co. v. T-Mobile US, Inc.,
`2017 WL 4385567 (E.D. Tex. Sept. 9, 2017), report and recommendation
`adopted, 2017 WL 4310161 (E.D. Tex. Sept. 28, 2017) .....................................................9
`
`iLight Technologies, Inc. v. Fallon Luminous Prods. Corp.,
`2010 WL 2330396 (Fed. Cir. 2010).............................................................................11, 12
`
`MarcTec, LLC v. Johnson & Johnson,
`394 F. App’x 685 (Fed. Cir. 2010) ....................................................................................15
`
`MLC Intellectual Property, LLC v. Micron Technology, Inc.,
`2018 WL 4616255 (N.D. Cal. Sept. 26, 2018) ....................................................................9
`
`Norian Corp. v. Stryker Corp.,
`432 F.3d 1356 (Fed. Cir. 2005)..........................................................................................14
`
`O2 Micro International Ltd. v. Beyond Innovation Technology Co.,
`521 F.3d 1351 (Fed. Cir. 2008)........................................................................................2, 3
`
`
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`ii
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`Omega Engineering, Inc v. Raytek Corp.,
`334 F. 3d 1314 (Fed. Cir. 2003)...................................................................................11, 12
`
`Ormco Corp. v. Align Tech., Inc.,
`498 F.3d 1307 (Fed. Cir. 2007)................................................................................2, 10, 11
`
`Personalized Media Communications, LLC v. Apple Inc.,
`952 F.3d 1336 (Fed. Cir. 2020)..........................................................................................11
`
`Ramot at Tel Aviv University Ltd. v. Cisco Systems, Inc.,
`2020 WL 2517581 (E.D. Tex. May 15, 2020) .....................................................................8
`
`Ravgen v. Natera,
`No. 20-CV-00692-ADA (W.D.T.X. Nov. 8, 2021) .....................................................10, 11
`
`Samsung Electronics Co. v. Elm 3DS Innovations, LLC,
`925 F.3d 1373 (Fed. Cir. 2019)......................................................................................2, 12
`
`Seachange International, Inc. v. C-COR, Inc.,
`413 F.3d 1361 (Fed. Cir. 2005)..........................................................................................11
`
`Sentry Protection Products, Inc. v. Eagle Manufacturing. Co.,
`400 F.3d 910 (Fed. Cir. 2005)............................................................................................11
`
`Shire Development, LLC v. Watson Pharmaceuticals, Inc.,
`787 F.3d 1359 (Fed. Cir. 2015)..........................................................................................11
`
`Spectrum International, Inc. v. Sterilite Corp.,
`164 F.3d 1372 (Fed. Cir. 1998)........................................................................................1, 8
`
`Technology Properties Ltd. v. Huawei Technologies Co.,
`849 F.3d 1349 (Fed. Cir. 2017)..........................................................................................14
`
`Traxcell Technologies, LLC v. Nokia Sols. & Networks Oy,
`15 F.4th 1136 (Fed. Cir. 2021) ..........................................................................................14
`
`Watts v. XL Systems, Inc.,
`232 F.3d 877 (Fed. Cir. 2000)............................................................................................12
`
`X One, Inc. v. Uber Technologies, Inc.,
`440 F. Supp. 3d 1019 (N.D. Cal. 2020) ...............................................................................9
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`STATUTES, RULES, AND REGULATIONS
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`Fed. R. Evid. 801(d)(2)(A) ............................................................................................................16
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`iii
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`
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`I.
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`INTRODUCTION AND SUMMARY OF THE ARGUMENT
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`The Federal Circuit has made clear that positions taken by a patent owner in inter partes
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`review (“IPR”) proceedings become a relevant part of the prosecution history that should properly
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`be considered in claim construction. See Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353,
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`1359-61 (Fed. Cir. 2017). This ensures “claims are not argued one way in order to maintain their
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`patentability and in a different way against accused infringers.” Id. at 1360. It also protects the
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`public’s “right to rely on such definitive statements made during prosecution.” Spectrum Int’l,
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`Inc. v. Sterilite Corp., 164 F.3d 1372, 1378 (Fed. Cir. 1998) (quotations and citation omitted).
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`Further claim construction is required here for precisely these reasons.
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`ParkerVision asserts six related patents, all of which contain or incorporate by reference
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`the “same disclosure regarding down-conversion,” D.I. 51 at 4 n.4, and all of which are directed
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`to ParkerVision’s claimed down-conversion invention, which it calls “energy sampling,” id. at 1
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`(“the claims are directed to … energy sampling.”). In IPR proceedings relating to one of the
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`asserted patents, U.S. Patent No. 7,539,474 (the “’474 patent”), after the Court issued its claim
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`construction ruling in this case, ParkerVision categorically disclaimed a device for and method of
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`performing down-conversion called “mixers”/“mixing.” Specifically, to distinguish its claimed
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`“energy sampling” invention from the prior art, ParkerVision clearly and unequivocally told the
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`Patent Trial and Appeal Board (“PTAB”) that its claimed “energy sampling” invention is
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`“fundamentally different” from “mixing,” and that “[e]nergy samplers, unlike mixers, do not
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`mix (i.e., multiply) two signals together in order to down-convert a signal.” Ex. 1 at 22. Based
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`on these representations, the PTAB found (and Intel agreed) that the cited prior art references,
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`which described “mixers,” did not disclose ParkerVision’s energy sampling device/method of
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`1
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`performing down-conversion and declined to invalidate the challenged claims of the ’474 patent.
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`Ex. 2 at 17-19.
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`ParkerVision should be held to its representations to the PTAB—it should not be permitted
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`to argue its claims one way in order to preserve patentability before the PTAB and in a different
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`way here. Aylus, 856 F.3d at 1361. Each of the asserted claims of the asserted patents recite
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`“modules,” “systems,” and “apparatuses” that, as ParkerVision admits, are the elements that
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`perform the down-conversion in its claimed energy sampling invention (i.e., “the Down-Converter
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`Terms”). See, e.g., D.I. 51 at 29 (“A ‘frequency down-conversion module’ is simply a module
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`that down-converts an input signal.”); D.I. 65 at 1 (“[T]he patents-in-suit pertain to the use of
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`sampling to down-convert a signal.”). Given ParkerVision’s disclaimer, these elements cannot
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`properly include modules/systems/apparatuses that use a mixer to mix (i.e., multiply) two signals
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`together in order to down-convert a signal. See, e.g., Aylus, 856 F.3d at 1362 (patent owner
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`disclaimed method for delivering media content by telling the PTAB that there are “substantial
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`differences between the challenged claims and the asserted references”)1; Ormco Corp. v. Align
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`Tech., Inc., 498 F.3d 1307, 1314 (Fed. Cir. 2007) (“When the application of prosecution disclaimer
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`involves statements from prosecution of a familial patent relating to the same subject matter as the
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`claim language at issue in the patent being construed, those statements in the familial application
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`are relevant in construing the claims at issue.”); Samsung Elecs. Co. v. Elm 3DS Innovations, LLC,
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`925 F.3d 1373, 1378-79 (Fed. Cir. 2019) (“clear[] and unambiguous[] disclaime[r]” applies
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`“across all asserted patents” where they “‘derive from the same parent application and share many
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`common terms’”).
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`1 All emphasis added unless otherwise noted.
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`2
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`Accordingly, under the Federal Circuit’s decisions in Aylus and O2 Micro International
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`Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008), Intel respectfully
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`requests further claim construction proceedings to address the scope of the asserted claims in light
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`of ParkerVision’s disclaimer of mixers/mixing. See O2 Micro, 521 F.3d at 1360 (courts must
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`resolve disputes regarding the scope of patent claims).
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`II.
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`STATEMENT OF FACTS
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`A. ParkerVision Persuaded This Court To Construe The Down-Converter
`Terms To Have Their Purported Plain And Ordinary Meaning
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`ParkerVision currently asserts six patents, including the ’474 patent, in this case. D.I. 108
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`at 2.2 As ParkerVision admits, all the asserted claims are directed to “down-conversion,” and all
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`the asserted patents incorporate ParkerVision’s original down-conversion patent, U.S. Patent No.
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`6,061,551 (the “’551 patent”), in its entirety. See D.I. 51 at 4 (“Down-conversion is the subject of
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`the patents-in-suit”); D.I. 54-6, 1:6-10 (the ’902 patent “is a continuation-in-part of … U.S. Pat.
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`No. 6,061,551, which is herein incorporated by reference in its entirety”); D.I. 54-11, 1:30-34
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`(same for the ’528 patent); D.I. 54-12, 1:32-36 (same for the ’736 patent); D.I. 54-13, 1:42-46
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`(same for the ’673 patent); D.I. 54-9, 1:24-27 (the ’725 patent incorporating by reference the ’551
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`patent “in [its] entiret[y]”); D.I. 54-8, 11:29-33 (same for the ’474 patent). As such, ParkerVision
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`admits that all six asserted patents “have the same disclosure regarding down-conversion” or
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`“specifically incorporate such disclosure by reference.” D.I. 51 at 4 n.4.
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`ParkerVision further admits that all the asserted claims of all six asserted patents require a
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`specific method of down-conversion that uses “sampling”—something ParkerVision describes as
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`2 Asserting the ’474 patent and U.S. Patent Nos. 6,580,902 (the “’902 patent”), 8,588,725 (the
`“’725 patent”), 9,118,528 (the “’528 patent”), 9,246,736 (the “’736 patent”), and 9,444,673 (the
`“’673 patent”).
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`3
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`its “energy sampling” invention.3 D.I. 51 at 1 (“the claims are directed to … energy sampling”);
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`D.I. 65 at 1 (“[T]he patents-in-suit pertain to the use of sampling to down-convert a signal.”); D.I.
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`77 at 41 (“in all cases sampling is occurring”). ParkerVision further admits that all the asserted
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`claims require that the claimed down-conversion by sampling be performed at a specific rate,
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`called an “aliasing rate.” D.I. 51 at 27 (“aliasing” refers to a rate “at which an input signal is
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`sampled”); see D.I. 77 at 21 (ParkerVision admitting at oral argument that “this concept of aliasing
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`rate … it’s in all the claims already.… The claims -- and I’ll go through this -- all have that
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`concept. They have the concept of aliasing.”); id. at 15 (“aliasing rates … [are] included in the
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`claims”).
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` Each of the asserted claims recites a “module,” “system” or “apparatus”—i.e., the “Down-
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`Converter Terms”—that, as ParkerVision admits, performs the down-conversion in the claimed
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`invention. See, e.g., D.I. 51 at 29 (“A ‘frequency down-conversion module’ is simply a module
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`that down-converts an input signal.”). Intel proposed during claim construction proceedings that
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`the Down-Converter Terms be construed to require down-converting by sampling at an aliasing
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`rate. D.I. 53 at 9-12. ParkerVision argued, in response, that the Down-Converter Terms should
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`be given their purported “plain and ordinary meaning.” D.I. 51 at 29-32. While ParkerVision
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`acknowledged that all the claims require sampling at an aliasing rate, it argued that this feature is
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`required by other elements in the claims—i.e., certain “components” of the Down-Converter
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`Terms—and that the Down-Converter terms themselves should be given their plain and ordinary
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`meaning. D.I. 77 at 22. The Court accepted ParkerVision’s argument and construed the
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`3 Intel disputed ParkerVision’s use of the term “energy sampling” because it never appears in the
`asserted patents but agreed that all the asserted claims require “sampling.” D.I. 58 at 2 (emphasis
`in original).
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`4
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`Down-Converter Terms to have their purported “plain-and-ordinary meaning” in its January 28,
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`2021 Claim Construction Order. D.I. 75 at 2-3.
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`B. To Avoid Prior Art In Subsequent IPR Proceedings, ParkerVision Clearly
`And Unequivocally Disclaimed “Mixers” And “Mixing”
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`In September 2020, Intel filed an IPR petition challenging the validity of certain claims in
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`the asserted ’474 patent. Ex. 3. The claims that Intel challenged did not expressly recite sampling
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`and, at the time that Intel filed its IPR petition, ParkerVision had not yet taken the position in this
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`case that all of the asserted claims require “energy sampling.” Compare Ex. 3 (Sept. 2, 2020);
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`with D.I. 51 (Oct. 30, 2020). Intel’s petition thus sought to invalidate claims in the ’474 patent
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`based on prior art
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`that
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`taught a well-known down-conversion system/method using
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`“mixers”/“mixing.” See, e.g., Ex. 2 at 17-18 (PTAB describing the asserted prior art “mixers”).
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`In January 2021, the PTAB instituted the IPR, and in May 2021, ParkerVision filed its
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`Patent Owner Response (“POR”). Exs. 4 and 1. ParkerVision conceded that one of the challenged
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`claims was invalid. See Ex. 1 at 1 n.1; Ex. 5. As to the remaining claims, ParkerVision
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`distinguished the prior art by unequivocally disclaiming the use of “mixing” and “mixers” to
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`perform down-conversion. Specifically, ParkerVision represented to the PTAB that its claimed
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`“energy sampling/energy transfer” invention is “fundamentally different” than performing down-
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`conversion using a mixer to multiply two signals together:
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`In seeking to develop a solution for down-converting an RF signal, however,
`ParkerVision took a different approach and focused on energy sampling
`instead of mixing. Energy sampling (also known as energy transfer) was/is a
`fundamentally different and competing method to mixing. Energy samplers,
`unlike mixers, do not mix (i.e., multiply) two signals together in order to down-
`convert a signal.” Ex. 1at 22.
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`ParkerVision repeated this unequivocal disclaimer throughout its Patent Owner Response:
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`• “The operation of an energy transfer/sampling system, however, is fundamentally
`different than the operation of a mixer/mixing system. Whereas a mixer forms a
`down-converted signal by mixing two signals (an RF signal and an LO signal)
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`5
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`together, an energy transfer system uses sampled energy from the RF signal to form
`a down-converted signal.” Id. at 73-74.
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`• “The difference between energy transfer/sampling and mixing systems is significant.
`Indeed, energy transfer/sampling and mixing systems are fundamentally different
`and competing technologies.” Id. at 3.
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`• “[A]ll of the challenged claims are directed to a sampling system and, in particular,
`an energy sampling system (also known as an energy transfer system). …. [Intel’s prior
`art references], however, disclose a different technology known as a mixing system.”
`Id. at 2-3.
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`• “[Intel’s prior art] specifically discusses mixing and makes no mention or suggestion
`of using an energy sampling solution. There is no teaching, suggestion, or motivation
`in [Intel’s prior art] to use energy sampling to down-convert a signal. Indeed, mixing
`and energy sampling systems are fundamentally different and competing
`technologies.” Id. at 74.4
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`ParkerVision argued that this distinction between energy samplers/sampling and mixers/mixing is
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`“why Intel’s prior art fails to invalidate challenged claims.” Ex. 1 at 20.
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`After receiving ParkerVision’s POR, Intel agreed that if the PTAB accepted ParkerVision’s
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`clear and unequivocal disclaimer of “mixers”/“mixing,” then the asserted prior art, which teaches
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`using a mixer to down-convert, would not invalidate the challenged claims. Ex. 6 at 1-2. In its
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`Final Written Decision, the PTAB accepted ParkerVision’s disclaimer, stating: “the parties agree
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`that the claims at issue in this proceeding require sampling. The parties’ agreement as to
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`‘sampling’ is dispositive of the issues presented in this proceeding because the parties also agree
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`that neither [of] the prior art references asserted by Petitioner in this proceeding, teach ‘sampling.’”
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`4 ParkerVision specifically distinguished its sampling invention from the cited prior-art Larson
`and Butler references based on their mixing functionality: “Larson and Butler pertain to non-linear
`mixing ….” Ex. 1 at 20 (emphasis in original). And ParkerVision repeatedly explained that what
`distinguishes mixing from its “energy transfer” sampling invention is that mixing involves
`“multiplying” two signals together. Ex. 7 at 17 (“Whereas a non-linear mixer forms a down-
`converted signal by mixing (multiplying) two signals (an RF signal and an LO signal) together,
`an energy transfer system uses sampled energy from the RF signal to form a down-converted
`signal.”); id. (“[A]ll teaching, suggestion, and motivation in Larson demonstrates that Larson
`relates only to a non-linear mixing system, which mixes (multiplies) two signals together.”).
`6
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`Ex. 2 at 14. Rather than disclosing sampling, as the PTAB explained, Intel’s prior art discloses
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`“mixers.” Id. at 17-18. Thus, the Board declined to invalidate the challenged claims because
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`“(1) the claims at issue in this proceeding require ‘sampling’ and (2) [Intel’s prior art references]
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`do not disclose ‘sampling’.” Id. at 19.
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`After IPR briefing had concluded, and the record was closed, ParkerVision unsuccessfully
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`tried to walk back its disclaimer. Ex. 2 at 3 n.1. Specifically, ParkerVision improperly argued
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`during a procedural “conference call” after the record was closed that it had disclaimed only certain
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`types of mixers and mixing. Id. But the PTAB rejected this attempt, stating on the call that “the
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`briefing in this case is closed.” Ex. 8 at 8:28-9:4. The PTAB also stated on the call:
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`On the [issue of] what is patent owner’s position on the claims and how petitioner
`has presented it or patent owner has presented it, the briefs speak to all those issues.
`We are not taking argument on today’s call about positions that are already set
`forth in the briefing.
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`Id. at 12:24-13:1. The PTAB then further stated in its Final Written Decision:
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`Patent Owner sought to clarify its position in light of statements made by Petitioner
`at the pre-hearing conference. Petitioner expressly disagreed with what it
`considered to be Patent Owner’s attempt to supplement the record during the
`November 10th conference call. The sole purpose of the pre-hearing conference
`was to determine if an oral hearing was needed in light of the positions set forth in
`the briefing. The parties’ briefs set forth the arguments upon which this Final
`Written Decision is based.
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`Ex. 2 at 3 n.1 (citations omitted). As shown above, ParkerVision’s briefs unequivocally disclaimed
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`down-converting using “mixers”/“mixing.” See, e.g., Ex. 1 at 3, 20, 22, 73-74.5
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`5 Intel also challenged three claims in another ParkerVision patent, U.S. Patent No. 7,110,444 (the
`“’444 patent”), that ParkerVision had previously asserted in this case. Ex. 9; D.I. 1 (original
`complaint). In response to Intel’s IPR petition, ParkerVision voluntarily disclaimed two of the
`challenged claims, Ex. 10 at 1 n.1; Ex. 11, and the PTAB invalidated the remaining claim as
`“unpatentable,” Ex. 12 at 3. ParkerVision has voluntarily dismissed the ’444 patent from this
`proceeding. D.I. 108.
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`7
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`III. ARGUMENT
`A. ParkerVision’s Unequivocal Representations To The PTAB Constitute A
`Clear Disclaimer of Claim Scope
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`The Federal Circuit has expressly held that “statements made by a patent owner during an
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`IPR proceeding can be considered during claim construction and relied upon to support a finding
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`of prosecution disclaimer.” Aylus, 856 F.3d at 1361; see also, e.g., Ramot at Tel Aviv Univ. Ltd.
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`v. Cisco Sys., Inc., 2020 WL 2517581 at *16 (E.D. Tex. May 15, 2020) (patent owner’s statements
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`to the PTAB regarding disputed term constituted a disclaimer and “intrinsic evidence”).
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`The rationale for this rule is straightforward—it is a fundamental principle of patent law
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`that patent owners cannot argue claims one way to preserve validity and another way to try to show
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`infringement. Aylus, 856 F.3d at 1359-61 (courts should ensure that “claims are not argued one
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`way in order to maintain their patentability and in a different way against accused infringers”);
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`Spectrum Int’l, 164 F.3d at 1378 (“claims may not be construed one way in order to obtain their
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`allowance and in a different way against accused infringers”). Thus, where a patent owner makes
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`statements to the PTAB relevant to claim scope, further claim construction proceedings are
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`warranted. Aylus, 856 F.3d at 1364.
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`In Aylus, for example, the Federal Circuit held that, through its IPR statements, patent
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`owner Aylus disclaimed an entire method of controlling and delivering media content. 856 F.3d
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`at 1357. Aylus had alleged that certain software infringed its method for “controlling and
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`delivering media content,” which involved determining whether to invoke a “Control Point Proxy
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`(CPP)” and/or a “Control Point (CP)” to stream videos. Aylus Networks, Inc. v. Apple Inc., 2016
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`WL 270387, at *2 (N.D. Cal. Jan. 21, 2016). During claim construction in the district court, the
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`term “the CPP is invoked” was not construed. Id. at *4. Months later, Aylus filed a preliminary
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`response to an IPR petition and represented to the PTAB that there are “substantial differences
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`between the challenged claims and the asserted references,” including that “the challenged claims
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`require selectively invoking the CP logic and/or CPP logic,” which “is a key aspect of the claimed
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`invention.” Aylus, 856 F.3d at 1362-63. Relying on those representations, the PTAB declined to
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`institute IPR. Id. The district court then undertook further claim construction to address Aylus’s
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`IPR statements and ruled that the phrase “the CPP is invoked” limited the challenged claims to
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`methods where “only the CPP logic is invoked,” and excludes methods where “both the CP and
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`CPP” logic is invoked. Aylus, 856 F.3d at 1358. The Federal Circuit affirmed, holding that Aylus’s
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`IPR statements were a “clear and unmistakable disavowal of claim scope.” Id. at 1364.
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`Other cases have likewise engaged in further claim construction in light of patent owner’s
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`statements to the PTO. See, e.g., Huawei Techs. Co. v. T-Mobile US, Inc., 2017 WL 4385567, at
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`*5 (E.D. Tex. Sept. 9, 2017) (patent owner “clearly and unmistakably disclaimed a recovery
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`process in which the GGSN marks the PDP context invalid … As a result, the claims of the ’339
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`patent no longer encompass such a process.”), report and recommendation adopted, 2017 WL
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`4310161 (E.D. Tex. Sept. 28, 2017); X One, Inc. v. Uber Techs., Inc., 440 F. Supp. 3d 1019, 1042-
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`44 (N.D. Cal. 2020) (reopening claim construction to address IPR disclaimer); MLC Intell. Prop.,
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`LLC v. Micron Tech., Inc., 2018 WL 4616255, at *6 (N.D. Cal. Sept. 26, 2018) (reconsidering
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`claim construction in light of developments in ex parte reexamination).
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`Here, after the Court issued its claim construction ruling, ParkerVision represented to the
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`PTAB that its claimed “energy sampling” invention is “fundamentally different” from “mixing,”
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`and its “[e]nergy samplers, unlike mixers, do not mix (i.e., multiply) two signals together in order
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`to down-convert a signal.” Ex. 1 at 20, 22. ParkerVision emphasized that the “difference between
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`energy transfer/sampling and mixing systems is significant” and a “critical distinction” over the
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`prior art. Id. at 3, 20. And ParkerVision was explicit that it was making this disclaimer for the
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`purpose of distinguishing its claimed energy sampling invention from the prior art in order to
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`preserve validity. See Ex. 1 at 20 (“the difference between these technologies is critical to
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`understanding why Intel’s prior art fails to invalidate challenged claims of the ’474 patent”).
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`The PTAB relied on ParkerVision’s representations regarding the scope of its claims to find that
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`the cited prior art did not invalidate ParkerVision’s claims. Ex. 2 at 17-19.
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`ParkerVision’s IPR representations thus constitute a clear and unequivocal disclaimer and
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`require further claim construction. See also, e.g., Ormco Corp., 498 F.3d at 1314-15 (claims
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`limited to an “automatic” process for orthodontists to position teeth, because inventors sought “to
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`distinguish their invention” on the grounds that it is “fully automated,” while the prior art required
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`“an operator [to] manipulate” and undertake “decision making” in positioning teeth, meaning that
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`a “fully automated [process] … is lacking”); David Netzer Consulting Eng’r LLC v. Shell Oil Co.,
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`824 F.3d 989, 995 (Fed. Cir. 2016) (“patentee clearly disclaimed conventional extraction,”
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`including by “twice stat[ing] during prosecution” that the claimed invention produces a product
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`that “need not” have the same characteristics as products produced through conventional
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`extraction); Astrazeneca AB, Aktiebolaget Hassle, KBI-E, Inc. v. Mut. Pharm. Co., 384 F.3d 1333,
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`1340 (Fed. Cir. 2004) (“clear disavowal” of “nonsurfactant solubilizers” where the patentee
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`described the invention as being “included in” a structure indisputably formed by surfactants).
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`This Court recently relied on a patent owner’s “clear and unambiguous prosecution
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`statements” to rule that patent owner had disclaimed “EDTA and other chelators used as
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`anticoagulants” from the scope of a disputed claim term related to “cell lysis inhibitors.” Ravgen
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`v. Natera, No. 20-CV-00692-ADA, (W.D.T.X. Nov. 8, 2021) D.I. 176. As this Court explained,
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`by representing to the Patent and Trademark Office (“PTO”) that EDTA, an “anticoagulant,” is
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`“not an ‘agent that inhibits cell lysis’” and “not … a cell lysis inhibitor,” patent owner
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`“unequivocally disavowed a certain meaning to obtain his patent.” Id. at 5 (quoting Omega Eng’g,
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`Inc v. Raytek Corp., 334 F. 3d 1314, 1324 (Fed. Cir. 2003)); see also Seachange Int’l, Inc. v. C-
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`COR, Inc., 413 F.3d 1361, 1372-73 (Fed. Cir. 2005) (“Where an applicant argues that a claim
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`possesses a feature that the prior art does not possess in order to overcome a prior art rejection,
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`the argument may serve to narrow the scope of otherwise broad claim language.”); Sentry Prot.
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`Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005) (“The prosecution history
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`modifies the scope of a claim term if the patentee distinguished that term from prior art on the
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`basis of a particular embodiment [or] expressly disclaimed subject matter….”) (quotations and
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`citation omitted).6 The same holds true here.
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`All six asserted patents (including the ’474 patent) fully incorporate the same parent patent.
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`See supra p. 3. And as ParkerVision acknowledges, all six asserted patents “have the same
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`di