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`Trials@uspto.gov
`
` Paper 35
`571-272-7822
`
`Date: January 21, 2022
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`INTEL CORPORATION,
`Petitioner,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2020-01302
`Patent 7,539,474 B2
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining No Non-Disclaimed Challenged Claims Unpatentable
`Denying Petitioner’s Motion to Seal
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`

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`
`I.
`
`INTRODUCTION
`
`Background
`
`Intel Corporation (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
`requesting institution of inter partes review of claims 1, 3, 4, 7, and 9–12 of
`U.S. Patent No. 7,539,474 B2 (Ex. 1001, “the ’474 patent”). ParkerVision,
`Inc. (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim.
`Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a), we instituted
`an inter partes review as to all claims and grounds set forth in the Petition.
`Paper 9 (“Inst. Dec.”).
`After institution, Patent Owner filed a Patent Owner Response
`(Paper 16, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s Response
`(Paper 23, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 28, “PO
`Sur-reply”). Petitioner also filed a Motion to Seal Exhibit 1040, which is the
`deposition transcript of Michael Steer, Ph.D. from related proceeding
`IPR2020-01265 (Paper 22, “Mot. Seal”).
`Additionally, Patent Owner filed a Notice of Statutory Disclaimer
`(Paper 32) to which Patent Owner attached a copy of its disclaimer under 37
`C.F.R. § 1.321(a), wherein Patent Owner disclaimed claim 12 of the
`’474 patent (Paper 32, Ex. A). Patent Owner’s disclaimer effectively
`eliminated claim 12 from the ’474 patent, leaving the patent as if that claim
`never existed. See Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933
`F.3d 1367, 1373 (Fed. Cir. 2019) (noting that disclaiming claims effectively
`eliminates those claims from the patent as though the disclaimed claims had
`never existed (internal quotations and citations omitted); see also Asetek
`Danmark A/S v. CoolIT Sys., Inc., IPR2020-00747, Paper 42 at 6 (PTAB
`Sept. 30, 2021) (determining that a statutory disclaimer removed a
`
`2
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`disclaimed claim from an inter partes review proceeding). Thus, claim 12 is
`no longer part of this proceeding.
`Initially, we granted the parties’ requests for an oral hearing. Paper 29
`(Order Granting the Parties’ Requests for Oral Hearing). Thereafter, we
`held a pre-hearing conference on October 29, 2021, to discuss “the parties’
`apparent agreement regarding claim construction and application of that
`construction to the issues before us.” Paper 33 (Order Cancelling Oral
`Hearing), 2; see Pet. Reply 13 (stating that under the parties’ agreed-upon
`claim construction, Petitioner agrees with Patent Owner that the remaining
`claims are not unpatentable over the asserted art). We inquired whether the
`parties maintained their requests for an oral hearing, to which counsel for
`each party confirmed that an oral hearing was no longer necessary.
`Paper 33, 2. In light of the parties’ representations during the pre-hearing
`conference and with the agreement of the parties, we cancelled the oral
`hearing.1 Id.
`We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a
`Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to
`the patentability of claims remaining in the trial. Petitioner bears the burden
`
`
`1 At Patent Owner’s request, we held a conference call on November 10,
`2021, a transcript of which is in the record. Ex. 2031. Patent Owner sought
`to clarify its position in light of statements made by Petitioner at the
`pre-hearing conference. See id. at 5:9–15 (discussing the reason Patent
`Owner requested the conference call). Petitioner expressly disagreed with
`what it considered to be Patent Owner’s attempt to supplement the record
`during the November 10th conference call. See id. at 13:20–14:18
`(expressing disagreement). 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.
`
`3
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`of proving unpatentability of the challenged claims. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To
`prevail, Petitioner must prove unpatentability by a preponderance of the
`evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Having reviewed
`the arguments and the supporting evidence, we agree with the parties that
`Petitioner has not shown, by a preponderance of the evidence, that claims 1,
`3, 4, 7, and 9–11 of the ’474 patent are unpatentable.
`
`Related Proceedings
`
`Petitioner and Patent Owner identify the following related matter:
`
`ParkerVision, Inc. v. Intel Corp., No. 6:20-cv-108-ADA (W.D. Tex.).
`Pet. 10; Paper 7 (Patent Owner’s Mandatory Notices), 2. In addition,
`Petitioner filed a petition challenging several claims of U.S. Patent
`No. 7,110,444 B1, which is related to the ’474 patent, in IPR2020-01265.
`Pet. 10.
`
`Real Parties in Interest
`
`Petitioner identifies Intel Corporation as the real party in interest.
`Pet. 10. Patent Owner identifies ParkerVision, Inc. as the real party in
`interest. Paper 7, 2.
`
`4
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`
`
`The Asserted Grounds of Unpatentability and Declaration
`Evidence
`Petitioner asserts the following grounds of patentability:
`Claim(s) Challenged2
`35 U.S.C. §3
`Reference(s)/Basis
`1, 3, 4, 9–11
`102(b)
`Larson4
`1, 3, 4, 7, 9–11
`103(a)
`Larson, Butler5
`Pet. 12.6 Petitioner supports its challenge with two declarations by Vivek
`Subramanian, Ph.D., one submitted with the Petition (Ex. 1002 (Declaration
`of Vivek Subramanian, Ph.D.)) and the other submitted with Petitioner’s
`Reply (Ex. 1037 (Reply Declaration of Vivek Subramanian, Ph.D.)); a
`Declaration by Sylvia D. Hall-Ellis, Ph.D. (Ex. 1021); and a Declaration by
`Christopher Ernst (Ex. 1022). Patent Owner supports its arguments with a
`declaration by Michael Steer, Ph.D. (Ex. 2027 (Declaration of Dr. Michael
`Steer)).
`
`The ’474 Patent
`
`The ’474 patent is directed to “[m]ethods, systems, and apparatuses
`for down-converting an electromagnetic (EM) signal by aliasing the EM
`
`
`2 The challenged claims listed above include the claims remaining in the
`case following Patent Owner’s disclaimer of claim 12.
`3 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013.
`Because the ’474 patent has an effective filing date before March 16, 2013,
`we apply the pre-AIA versions of the statutory bases for unpatentability.
`4 RF and Microwave Circuit Design for Wireless Communications
`(Lawrence E. Larson, ed., Artech House Publishers 1996) (Ex. 1005,
`“Larson”).
`5 U.S. Patent No. 4,603,436, issued July 29, 1986 (Ex. 1006, “Butler”).
`6 By disclaiming claim 12, Petitioner’s third ground, based on U.S. Patent
`No. 6,192,225 B1, issued Feb. 20, 2001 (Ex. 1007), is no longer part of this
`proceeding because claim 12 was the only claim challenged in that ground.
`
`5
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`signal, and applications thereof.” Ex. 1001, code (57). More particularly,
`the ’474 patent relates to “receivers implemented using universal frequency
`translation (UFT) modules. . . ., [which] perform frequency translation
`operations.” Id. at 10:15–19.
`Figure 1B is reproduced below:
`
`
`Figure 1B of the ’474 patent is a “detailed diagram of a universal frequency
`translation (UFT) module.” Ex. 1001, 3:24–26. The ’474 patent explains
`that UFT module 103 “includes a switch 106 controlled by a control
`signal 108.” Id. at 10:58–60. The UFT module “operates to generate an
`output signal from an input signal, where the frequency of the output signal
`differs from the frequency of the input signal.” Id. at 10:48–51.
`Figure 1C is reproduced below:
`
`
`Figure 1C of the ’474 patent “illustrates a UFT module used in a universal
`frequency down-conversion (UFD) module.” Ex. 1001, 3:27–29. The
`
`6
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`’474 patent states, “[i]n this capacity, the UFT module 115 frequency down-
`converts an input signal to an output signal.” Id. at 11:7–9.
`Figure 41 is reproduced below:
`
`
`Figure 41 of the ’474 patent illustrates “single channel receiver 4100,
`corresponding to either the I or Q channel of I/Q modulation receiver 2500.”
`Ex. 1001, 84:54–57; see id. at 4:53–54 (similarly describing Figure 41). The
`’474 patent explains, “[s]ingle channel receiver 4100 can down-convert an
`input RF [(radio frequency)] signal 4106 modulated according to AM, PM,
`FM, and other modulation schemes.” Id. at 84:57–59.
`
`7
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`
`Figure 25 is reproduced below:
`
`
`Figure 25 of the ’474 patent illustrates I/Q modulation receiver 2500.
`Ex. 1001, 4:41–42, 77:23–24. I/Q modulation receiver 2500 comprises four
`UFD modules 2502, 2506, 2510, and 2514; four filters 2504, 2508, 2512,
`and 2516 (the first three of which are described as “optional”); optional low
`noise amplifier (LNA) 2518; two differential amplifiers 2520 and 2522; and
`antenna 2572. Id. at 77:28–34. The ’474 patent explains, “I/Q modulation
`receiver 2500 receives, down-converts, and demodulates a[n] I/Q modulated
`RF input signal 2582 to an I baseband output signal 2584, and a Q baseband
`output signal 2586.” Id. at 77:35–38.
`
`8
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`
`The ’474 patent states that “[t]he down-conversion of an EM signal by
`aliasing the EM signal at an aliasing rate is fully described in” U.S. Patent
`No. 6,061,551 (“the ’551 patent”), “the full disclosure of which is
`incorporated herein by reference.”7 Ex. 1001, 11:26–33.
`
`Illustrative Claim
`
`Claim 1, the sole independent claim remaining in this proceeding, is
`illustrative of the claimed subject matter and reproduced below with
`Petitioner’s bracketing added for reference:
`1.
`[1P] An apparatus for down-converting an input signal,
`comprising:
`[1A] a first frequency down-conversion module that
`receives an input signal, wherein the first frequency down-
`conversion module down-converts the input signal according to
`a first control signal and outputs a first down-converted signal;
`[1B] a second frequency down-conversion module that
`receives the input signal, wherein the second frequency down-
`conversion module down-converts the input signal according to
`a second control signal and outputs a second down-converted
`signal; and
`[1C] a combining module that combines the second
`down-converted signal with the first down-converted signal and
`outputs a single channel down-converted signal;
`[1D] wherein the first frequency down-conversion
`module comprises a first switch and a first storage element,
`wherein the first switch is coupled to the first storage element at
`a first node and coupled to a first reference potential; and
`[1E] wherein the second frequency down-conversion
`module comprises a second switch and a second storage
`element, wherein the second switch is coupled to the second
`
`
`7 The ’474 patent refers to U.S. Patent Application No. 09/176,022, filed
`October 21, 1998, which issued as the ’551 patent.
`
`9
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`storage element at a second node and coupled to a second
`reference potential.
`Ex. 1001, 85:41–64.
`
`Level of Ordinary Skill in the Art
`
`Petitioner, supported by Dr. Subramanian’s testimony, proposes that a
`person of ordinary skill in the art at the time of the invention would have had
`“at least the equivalent of a bachelor’s degree in electrical engineering or a
`related subject and two or more years of experience in the field of RF circuit
`design.” Pet. 39 (citing Ex. 1002 ¶ 26). Petitioner explains that “[l]ess work
`experience may be compensated by a higher level of education, such as a
`master’s degree, and vice versa.” Id. (citing Ex. 1002 ¶ 26).
`In the Institution Decision, we noted that Patent Owner had not
`expressed a position on the level of ordinary skill in the art in its Preliminary
`Response, and, on the preliminary record, we adopted Petitioner’s
`unopposed position, finding it consistent with the level of ordinary skill in
`the art reflected by the ’474 patent and the prior art of record. Inst. Dec. 9
`(citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86,
`91 (CCPA 1978)).
`In the Patent Owner Response, Patent Owner, supported by
`Dr. Steer’s testimony, proposes that a person of ordinary skill in the art at
`the time of the invention would have
`(a) a Bachelor of Science degree in electrical or computer
`engineering (or a related academic field), and at least
`two (2) additional years of work experience in the design and
`development of radio frequency circuits and/or systems, or
`(b) at least five (5) years of work experience and training in the
`
`10
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`design and development of radio frequency circuits and/or
`systems.
`PO Resp. 5 (citing Ex. 2027 ¶ 24). Neither Patent Owner nor Dr. Steer
`explains how their proposal materially differs from that proposed by
`Petitioner.
`Patent Owner’s option (a) is substantially the same as Petitioner’s
`proposal—both require a bachelor’s degree in the same or a related subject
`and two additional years of related work experience. Patent Owner’s
`option (b) adds a minimum amount of work experience (at least five years)
`in lieu of a formal degree, whereas Petitioner’s proposal does not provide a
`specific amount of work experience. Additionally, Petitioner’s proposal
`provides that less work experience may be compensated by a higher level of
`education (e.g., a master’s degree), whereas Patent Owner’s proposal does
`not include an option for less work experience.
`Neither party contends that the differences in proposals affect the
`outcome of this proceeding and we do not find that they do. Nonetheless, on
`the full record before us, we find that our identification of the level of
`ordinary skill in art from the Institution Decision as well as Patent Owner’s
`option (b) are supported by the prior art of record, the ’474 patent, and the
`opinions of Drs. Subramanian and Steer (which, as discussed above,
`recognize that additional work experience can compensate for the lack of a
`formal degree). Accordingly, we modify our preliminary finding to include
`the specifics from option (b) of Patent Owner’s proposal. Thus, we find that
`one of ordinary skill in the art would have at least a bachelor’s degree in
`electrical engineering or a related subject and two or more years of
`experience in the field of RF circuit design, or at least five years of work
`experience and training in the design and development of RF circuits and/or
`
`11
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`systems. We also find that less work experience may be compensated by a
`higher level of education, such as a master’s degree.
`
`II.
`CLAIM CONSTRUCTION
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). See 37 C.F.R. §(cid:3031)42.100(b) (2019). The
`claim construction standard includes construing claims in accordance with
`the ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing
`claims in accordance with their ordinary and customary meaning, we take
`into account the specification and prosecution history. Phillips, 415 F.3d at
`1315–17.
`If the specification “reveal[s] a special definition given to a claim
`term by the patentee that differs from the meaning it would otherwise
`possess[,] . . . the inventor’s lexicography governs.” Phillips, 415 F.3d at
`1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`(Fed. Cir. 2002)). Another exception to the general rule that claims are
`given their ordinary and customary meaning is “when the patentee disavows
`the full scope of a claim term either in the specification or during
`prosecution.” Uship Intellectual Props., LLC v. United States, 714 F.3d
`1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Computer Entm’t Am.,
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
`Additionally, only terms that are in controversy need to be construed,
`and these terms need be construed only to the extent necessary to resolve the
`controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`12
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`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of
`an inter partes review).
`
`
`
`“combining module,” “switch,” “storage element,” “frequency
`down-conversion module”
`In the Petition, Petitioner proposed a construction for “combining
`module,” which is recited in claim 1. Pet. 32–33. Patent Owner’s
`Preliminary Response only addressed discretionary bases for denial of
`institution and did not specifically address Petitioner’s proposed
`construction. See generally Prelim. Resp.; see id. at 15 n.6 (noting that the
`Preliminary Response only addresses discretionary bases for denial). In the
`Institution Decision, we did not construe any claim terms expressly because
`none of the claim terms were in dispute. Inst. Dec. 10 (citation omitted).
`In the briefing following institution, Patent Owner proposed
`constructions for three claim terms—“switch,” “storage element,” and
`“combining module.” PO Resp. 51–52. The parties addressed the meanings
`of these terms in their subsequent briefs. See Pet. Reply 3–8; PO
`Sur-reply 5–10. Petitioner’s Reply also addresses, in some respects, the
`meaning of the term “frequency down-conversion module.” Pet. Reply 10
`n.5, 12 n.6.
`Because the parties agree that the claims remaining in the trial require
`“sampling” and also agree that the prior art asserted in this case does not
`teach “sampling” (as discussed further below), we need not construe these
`
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`terms expressly to resolve the controversy before us. See Vivid Techs., 200
`F.3d at 803.
`
`sampling
`
`Although claim 1 does not recite “sampling” expressly, the post-
`institution briefs make clear that the parties agree that claim 1 and its
`dependent claims require sampling. In particular, Patent Owner contends,
`(1) “the ’474 patent pertains to a technique called sampling, which involves
`the use of a ‘switch’” (PO Resp. 2); (2) “all of the challenged claims are
`directed to a sampling system and, in particular, an energy sampling system
`(also known as an energy transfer system)” (id.); and (3) “[t]he challenged
`claims only cover energy sampling and the use of switches” (id. at 20). In its
`Reply, although Petitioner disagrees with Patent Owner’s interpretation of
`the claims as limited to energy sampling (i.e., energy transfer systems) (Pet.
`Reply 3–7), Petitioner contends that based on its “subsequent analysis of
`[Patent Owner’s] foundational ’551 patent—one of the multiple patents
`which the ’474 patent incorporates by reference—[Petitioner] now agrees
`with [Patent Owner] that the claims cover only systems that down-convert
`by sampling.” Pet. Reply 2. Thus, at a minimum, the parties agree that the
`claims at issue in this proceeding require sampling.
`The parties’ agreement as to “sampling” is dispositive of the issues
`presented in this proceeding because the parties also agree that neither
`Larson nor Butler, the prior art references asserted by Petitioner in this
`proceeding, teach “sampling.” See Pet. Reply 13 (agreeing that Larson and
`Butler do not render unpatentable the claims remaining in the case); see
`Ex. 2031, 6:20–22 (Patent Owner explaining that, “as the Board is aware,
`
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`both parties agree that sampling is in the claims, and the claims are not
`invalid in view of all the cited prior art” (capitalization altered)).
`
`III. ANALYSIS
`
` Legal Standards
`Anticipation
`
`“[A] claim is anticipated ‘if each and every limitation is found
`expressly or inherently in a single prior art reference.’” King Pharm., Inc. v.
`Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas
`Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)).
`Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35
`(Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the
`art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368
`(Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s
`whether one skilled in the art would reasonably understand or infer from the
`[prior art reference’s] teaching that every claim element was disclosed in
`that single reference” (alteration in original) (quotation omitted)).
`
`Obviousness
`
`The U.S. Supreme Court set forth the framework for applying the
`statutory language of 35 U.S.C. § 103 in Graham v. John Deere Co. of
`Kansas City, 383 U.S. 1, 17–18 (1966):
`Under § 103, the scope and content of the prior art are to be
`determined; differences between the prior art and the claims at
`issue are to be ascertained; and the level of ordinary skill in the
`pertinent art resolved. Against this background, the
`obviousness or nonobviousness of the subject matter is
`determined. Such secondary considerations as commercial
`success, long felt but unsolved needs, failure of others, etc.,
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`might be utilized to give light to the circumstances surrounding
`the origin of the subject matter sought to be patented.
`The Supreme Court explained in KSR International Co. v. Teleflex Inc. that
`[o]ften, it will be necessary for a court to look to interrelated
`teachings of multiple patents; the effects of demands known to
`the design community or present in the marketplace; and the
`background knowledge possessed by a person having ordinary
`skill in the art, all in order to determine whether there was an
`apparent reason to combine the known elements in the fashion
`claimed by the patent at issue. To facilitate review, this
`analysis should be made explicit.
`550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.”)).
`“Whether an ordinarily skilled artisan would have been motivated to
`modify the teachings of a reference is a question of fact.” WBIP, LLC v.
`Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted).
`“[W]here a party argues a skilled artisan would have been motivated to
`combine references, it must show the artisan ‘would have had a reasonable
`expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier
`Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
`Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)).
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`Anticipation by Larson and Obviousness over Larson and
`Butler
`Larson
`
`Larson “presents an overview of wireless communications standards,
`digital communications techniques, and RF system issues related to wireless
`communications and low-power RF and microwave electronics” and “covers
`key circuit areas related to the implementation of wireless communications
`systems.” Ex. 1005, xi–x.8 In relevant part, chapter 5.7 is directed to
`“passive FET [(field effect transistors)] mixers, often called FET resistive
`mixers” and notes that they are “used frequently in wireless applications” for
`frequency conversion. Id. at 273. Larson explains, “filters are used to
`separate the various mixing frequencies, to short-circuit unwanted mixing
`products, and, if necessary, to provide matching.” Id. at 274–75.
`Figure 5.36 is reproduced below:
`
`
`Figure 5.36 of Larson shows a “[s]ingly balanced FET resistive mixer. The
`RF connection is a virtual ground for both the LO [(local oscillator)] and the
`IF [(intermediate frequency)].” Ex. 1005, 277. Larson explains, “[t]he LO
`
`
`8 For clarity, citations are to the original page number of the reference
`because two pages of the reference are reproduced on a single page of most
`of the pages of the exhibit.
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`pumps the two FETs 180-deg[rees] out of phase, but the RF is applied in
`phase at the drains. The IF currents in the FETs’ channels therefore have a
`180-deg[ree] phase difference and an output hybrid or balun is necessary to
`subtract them.” Id. at 276. Larson states that the “RF signal is applied to the
`drain, and IF currents are filtered from the drain or source.” Id. at 274.
`
`Butler
`
`Butler is directed to “microwave mixers” and, more particularly, a
`“double balanced mixer apparatus for frequency conversion at microwave
`frequencies.” Ex. 1006, 1:12–15. Butler explains that “[i]n order to convert
`a high frequency signal to a lower frequency at which signal processing is
`more readily accomplished, a mixer is employed.” Id. at 1:16–18.
`Figure 1 is reproduced below:
`
`
`Figure 1 of Butler “is a schematic circuit diagram of a microwave mixer.”
`Ex. 1006, 4:58–59. In relevant part, the microwave mixer includes RF input
`terminal 11, four dual-gate field effect transistors (FET’s) Q1, Q2, Q3, and
`Q4, and differential amplifier 40, which receives the outputs of low pass
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`filters 35 and 37 and outputs a single unbalanced IF output signal at IF
`output terminal 41. Id. at 5:11–12, 5:34–35, 5:63–65, 6:13–19.
`
`Discussion
`
`As discussed above, the parties now agree that (1) the claims at issue
`in this proceeding require “sampling” and (2) Larson alone or in
`combination with Butler do not disclose “sampling” and do not otherwise
`render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees
`that “the claims cover only systems that down-convert by sampling”), 13
`(stating that Larson and Butler do not disclose “down-conversion by
`sampling” and therefore agreeing that “Larson and Butler do not invalidate
`those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the
`Board is aware, both parties agree that sampling is in the claims, and the
`claims are not invalid in view of all the cited prior art” (capitalization
`altered)).
`As such, based on Petitioner’s explicit admissions, Petitioner has not
`established by a preponderance of the evidence that (1) Larson anticipates
`claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would
`have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to
`one of ordinary skill in the art at the time of the invention.
`
`Petitioner’s Motion to Seal
`
`Petitioner filed a Motion to Seal Exhibit 1040, the deposition
`transcript of Dr. Steer from related proceeding IPR2020-01265. Mot.
`Seal. 1. Petitioner explains that it “seeks to seal Dr. Steer’s deposition
`transcript because, during the deposition for IPR2020-01265, Patent Owner
`. . . designated the [t]ranscript as ‘confidential’ under the terms of the
`PTAB’s default Protective Order.” Id. Petitioner asserts that Patent Owner
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`sought to seal the deposition transcript because of Dr. Steer’s “testimony
`revealing alleged confidential information about his work for [Patent
`Owner].” Id. Petitioner also states that Patent Owner asserts good cause
`exists to seal the deposition transcript, although Petitioner expressly “takes
`no position as to the propriety of this designation . . . and reserves the right
`to challenge such designation.” Id.
`Petitioner filed a substantively identical Motion to Seal in IPR2020-
`01265 to seal the same deposition transcript. See Intel Corp. v.
`ParkerVision, Inc., IPR2020-01265, Paper 22 (PTAB Aug. 5, 2021). During
`a pre-hearing conference for IPR2020-01265, both of Petitioner’s Motions to
`Seal were discussed. Without elaborating on the