Case 6:21-cv-00520-ADA Document 40 Filed 04/15/22 Page 1 of 12
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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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` v.
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`LG ELECTRONICS, INC.,
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` Defendant.
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`
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`Case No. 6:21-cv-00520-ADA
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`JURY TRIAL DEMANDED
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`PLAINTIFF PARKERVISION, INC.’S
`SUR-REPLY CLAIM CONSTRUCTION BRIEF
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`Case 6:21-cv-00520-ADA Document 40 Filed 04/15/22 Page 2 of 12
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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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`Storage Terms ..................................................................................................................... 1
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`Cable Modem ...................................................................................................................... 6
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`i
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`Case 6:21-cv-00520-ADA Document 40 Filed 04/15/22 Page 3 of 12
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`
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Aug. Tech. Corp. v. Camtek, Ltd.,
`655 F.3d 1278 (Fed. Cir. 2011)..................................................................................................7
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`Baxalta Inc. v. Genentech, Inc.,
`972 F.3d 1341 (Fed. Cir. 2020)..................................................................................................5
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`C.W. Zumbiel Co. v. Kappos,
`702 F.3d 1371 (Fed. Cir. 2012) .................................................................................................6
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`Deere & Co. v. Bush Hog,
`LLC, 703 F.3d 1349 (Fed. Cir. 2012) ........................................................................................8
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`Poly-Am., L.P. v. GSE Lining Tech., Inc.,
`383 F.3d 1303 (Fed. Cir. 2004)..................................................................................................7
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`ii
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`Case 6:21-cv-00520-ADA Document 40 Filed 04/15/22 Page 4 of 12
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`I.
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`Storage Terms
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`In its reply brief, LG merely repeats arguments from its opening brief – the same flawed
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`arguments that this Court already considered and rejected three times in ParkerVision’s
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`litigations against Intel, TCL and Hisense. Tellingly, LG provides no substantive (technical)
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`arguments based on the intrinsic evidence as to why including “an [element/ module/device] of
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`an energy transfer system” is wrong. It is not. And LG has no response to this.
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`So, LG has chosen to ignore the significant intrinsic evidence that contradicts LG’s
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`position. For example, in its reply brief, LG has no response to the fact that the specification
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`distinguishes between a “storage” module/capacitance used in an energy transfer system as
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`shown in Figures 68G, 82B (below) and a “holding” module/capacitance used in a sample/hold
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`(voltage sampling) system as shown in Figures 29G, 78B (below). See D.I. 36 (“PV Resp. Br.”)
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`at 4-5.
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`1
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`LG also ignores the specification’s other disclosures distinguishing between energy
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`transfer systems and sample/hold systems. See, e.g., ’518 patent, 53:24-58:29 (discussing
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`sample/hold systems); 65:56 – 67:39, 97:14-101:67 (discussing energy transfer systems).
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`With nothing to rely on, LG’s sole focus is a single sentence (in blue below) from the
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`specification. Similar to all other defendants before it, LG asserts that this sentence is
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`lexicography for “storage” element/module/device. It is not. See PV Resp. Br. at 6.
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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., 66:12-23.1
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`Indeed, LG’s own construction of the “storage” terms demonstrates that not even LG
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`believes that the blue sentence (which LG asserts is a “explicit definition”) is lexicography.
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`1 Unless otherwise noted, all emphasis has been added.
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`2
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`Notably, instead of adopting the blue sentence as its construction, LG modifies the so-called
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`lexicography and proposes the following construction: “a module that stores a non-negligible
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`amount of energy from an input electromagnetic (EM) signal.” See D.I. 33 (“LG Op. Br.”) at 2.
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`In doing so, LG’s construction replaces the term “system” with “module” and replaces the
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`language “store non-negligible amounts of energy” (referring to amounts of energy) with “stores
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`a non-negligible amount of energy” (referring to an amount of energy). If the single sentence LG
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`relies on was truly lexicography as LG contends, there would be no reason for LG to make its
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`modifications.2
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`Moreover, LG completely ignores the context of the blue sentence, which is (1) contained
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`in a section entitled “0.1.2 Introduction to Energy Transfer” (’518 patent, 65:56) and (2) part of a
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`larger passage that distinguishes energy transfer systems from sample/hold systems. The blue
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`sentence is not defining a “storage” module but, rather, merely identifies one feature that can be
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`used to distinguish an energy transfer system that incorporates a “storage” module/capacitance
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`from a sample/hold (voltage sampling) system that incorporates a “holding” module/capacitance.
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`Indeed, where the patentees wanted to provide express definitions, they did so in a
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`section entitled “1. General Terminology.” ’518 patent, 12:21-13:59. A definition of the
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`“storage” module/element/device, however, is not found in that section.
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`2 LG further identifies substitute or alternative words that the Court can replace for “module” in
`its construction of the “storage” terms. See LG Reply Br. at 1 n.1 (“‘Module’ is interchangeable
`with ‘element’ and ‘device’…. ‘module’ in LGE’s construction can be replaced with ‘element’
`or ‘device’ as appropriate.”) But tellingly, LG fails to include the term “system” (the so-called
`lexicography) with its proposed alternatives. This is because “storage” elements/modules/devices
`are not systems, but rather specific types of components used in an “energy transfer system.” As
`such, LG’s position further supports the fact that the there is no lexicographic definition of the
`“storage” terms.
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`3
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`Recognizing the problem in relying on a single sentence, LG resorts to other tactics.
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`First, LG falsely asserts that the parties “appear” to agree “that the Storage Terms should
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`be construed based on lexicography and even rely on the same passage in the specification for
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`that lexicography.” LG Op Br. at 1. But as set forth in ParkerVision’s responsive brief,
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`ParkerVision’s construction relies on the specification as a whole, not merely the single passage
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`set forth above.3 See PV Resp. Br. at 3-4. Contrary to LG’s assertion, the passage reproduced
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`above is simply one portion of the specification that should be considered when defining the
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`“storage module;” the passage cannot serve to negate the specification’s other teachings
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`regarding the “storage” terms.4
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`Second, citing case law, LG asserts that the language “refer to” in the blue sentence
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`above connotes lexicography. LG Op. Br. at 1-2. LG’s argument, however, ignores the critical
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`language “on the other hand . . .”: “Storage modules and storage capacitances, on the other hand,
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`refer to systems . . . .” The cases that LG cites do not use the language “on the other hand” nor
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`are those cases dealing with distinguishing between two systems. LG ignores these critical
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`distinctions. Here, the language “on the other hand, refer to systems” is important because it
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`3 As ParkerVision has previously explained, the patents-in-suit disclose only two systems for
`down-conversion: (1) energy transfer (i.e., energy sampling) and (2) sample and hold (i.e.,
`voltage sampling). The patents draw a sharp contrast between “storage” terms, which connote
`energy transfer, and “holding” terms, which connote sample and hold. Compare, e.g., ’518
`patent, 65:56-67:39, 97:14-101:67 (describing an energy transfer system) with id. at 53:24 –
`58:29 (describing a sample and hold system). As such, an energy “storage” module must be
`construed in a way that distinguishes it from a “holding” modules. And as ParkerVision has
`previously explained, the amounts of energy stored in an element/module/device alone does not
`distinguish a “storage” element/module/device of an energy transfer system from a “holding”
`element/module/device of a sample-and-hold system.
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`4 Specifically, the passage states that holding and storage modules/capacitances “identify”/ “refer
`to” systems that have certain characteristics e.g., storing negligible or non-negligible amounts of
`energy. Indeed, the passage’s last sentence merely identifies one distinguishing feature as
`evidenced by the use of “on the other hand.”
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`4
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`clarifies that the sentence is distinguishing one feature of a “storage” module from a “holding”
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`module, not providing a definition for “storage” module.
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`Third, LG asserts that “ParkerVision’s reliance on Baxalta…is misplaced.” LG Op. Br. at
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`4. LG attempts to distinguish Baxalta, but it is merely a hand-waving exercise. LG glosses over
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`the import of Baxalta. The Federal Circuit in Baxalta reaffirmed that: “claim construction
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`requires that we ‘consider the specification as a whole, and [] read all portions of the written
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`description, if possible, in a manner that renders the patent internally consistent.” Baxalta, 972
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`F.3d at 1347 (citing Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379-80 (Fed. Cir. 2001).).
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`Contrary to the holding of Baxalta, LG fails to consider the specification as a whole, when
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`construing the “storage” terms.
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`Fourth, LG continues to harp on ParkerVision’s statements during a 2014 IPR. Once
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`again, this is an argument that other defendants have already raised and that this Court has
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`rejected. Not only is this extrinsic evidence and irrelevant to the Court’s construction of the term
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`but, as ParkerVision explained multiple times, such statements were made under a different
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`standard and focused on the larger passage set forth above, not the blue sentence alone. See PV
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`Resp. Br. at 8-9.
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`Finally, LG asks 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. See PV Br. at 7-9. Indeed, the
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`PTAB’s construction is inconsistent with Baxalta and fails to give proper deference to this
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`Court’s construction of the “storage” terms. Moreover, though LG asserts that the PTAB’s
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`construction is intrinsic evidence (implying that the Court owes some sort of deference to the
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`PTAB), LG ignores that claim construction is a matter of law for this Court to decide. No
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`5
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`deference is provided to the PTAB. And the Court has already construed the “storage” terms and
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`has rejected the same arguments on which LG and the Board rely.
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`For the foregoing reasons, the Court should maintain its prior constructions.
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`II.
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`Cable Modem
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`First, LG ignores that the term “cable modem” provides antecedent basis for the term
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`“the cable modem” in claims 16 and 17 of the ’835 patent. This ends the inquiry. “Cable
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`modem” in the preamble is limiting.
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`As LG recognizes, “the Federal Circuit routinely finds ‘a preamble limiting when it
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`serves as antecedent basis for a term appearing in the body of a claim.’” LG Op. Br. at 10 (citing
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`In re Fought, 941 F.3d 1175, 1178 (Fed. Cir. 2019); C.W. Zumbiel Co. v. Kappos, 702 F.3d
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`1371, 1385 (Fed. Cir. 2012) (“the preamble constitutes a limitation when the claim(s) depend on
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`it for antecedent basis”)). Indeed, “cable modem” in the preamble is no different than “an
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`electromagnetic signal . . .” in the preamble, which LG concedes is limiting because it provides
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`antecedent basis for “the electromagnetic signal” in the body of claim 1. LG Op. Br. at 9.
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`Second, LG ignores the plain meaning/significance of the term “cable modem,” and
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`instead, contends that “cable modem” is merely a statement of intended use. LG Reply Br. at 7.
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`LG is wrong. The recitation of “cable modem” in claim 1 is limiting and breaths life and
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`6
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`Case 6:21-cv-00520-ADA Document 40 Filed 04/15/22 Page 10 of 12
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`meaning into the claims.5 PV Resp. Br. at 10-11. “Cable modem” does not merely state a name
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`or a use for the claimed circuitry. Instead, the term describes a “fundamental characteristic of the
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`claimed invention” that informs a person of ordinary skill in the art as to the structure required
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`by the claim. Poly-Am., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004). In
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`particular, that the claim is drawn to a “cable modem” informs the meaning of the “frequency
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`down-conversion module” and “electromagnetic signal” limitations—the claimed structure must
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`be configured to receive and process complex modulation format signals, such as QPSK and
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`QAM modulated signals. See ’835 patent, 36:33-38; PV Resp. Br. at 11.
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`Third, LG asserts that, contrary to case law, ParkerVision is attempting to limit claims to
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`an embodiment. LG Reply Br. at 7. But LG’s argument is misplaced. The preamble does not
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`generally recite a device for down-converting. Instead, the claims are specifically directed to a
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`“cable modem” for down-converting. As the Federal Circuit has held, where the patent describes
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`multiple embodiments, every claim does not need to cover every embodiment. See Aug. Tech.
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`Corp. v. Camtek, Ltd., 655 F.3d 1278, 1285 (Fed. Cir. 2011). This is particularly true where the
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`plain language of the claim specifically excludes other embodiments. Indeed, LG’s argument is
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`illogical. Under LG’s logic, claim 1 would cover devices contained in, for example, automobiles
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`(Figure 39), airplanes (Figure 40A), and boats (Figure 40B). These devices, however, are not
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`connected to cable system as the specification requires. ’835 patent, 36:19-20 (“Cable Modems
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`5 A POSITA understands that a “mo-dem” is a device that performs both modulation and
`demodulation of analog carrier signals. PV Resp. Br. at 11. A POSITA also understands that a
`modulator (transmitter) in the same device/chip as a demodulator (receiver) can interfere with
`the operation of the receiver. See ’835 patent, 1:59-63. Thus, by reciting a cable modem, the
`claims of the ’835 patent are directed to a configuration of a receiver that is capable of operating
`in a device/chip also containing a transmitter.
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`7
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`refer to modems that communicate across ordinary cable TV network cables.”); Figures 45A,
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`45B.
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`Finally, LG attempts to downplay the express disclosures of the ’835 patent by
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`characterizing it as “unremarkable,” “generalized background information,” and “generalized
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`discussions.” LG Reply Br. at 5. But the intrinsic record underscores the importance of “cable
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`modem” and its role as a limiting feature. Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1357-
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`58 (Fed. Cir. 2012) (preamble may operate as a claim limitation when “underscored as important
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`by the specification”). Indeed, the specification is replete with references to the invention as a
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`“cable modem.” See, e.g., PV Reply Br. at 10-11. The title of the ’835 patent, for example,
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`explicitly states that the invention is “[w]ireless and wired cable modem applications of universal
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`frequency translation technology.” The field of the invention similarly states that the “present
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`invention is “more particularly [related] to wireless and wired applications of cable modems
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`using universal frequency translation technology.” Further, the specification makes a clear
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`distinction between “cable modems,” which “refers to [a] modem[] that communicate[s] across
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`ordinary cable TV network cables” and conventional “data modems,” which transmit across
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`phone lines.6 ’835 patent, 36:19-20. The specification distinguishing between different types of
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`modems is further evidence that the term “cable modem” in the preamble is limiting.
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`For the foregoing reasons, “cable modem” should be limiting.
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`6 Moreover, the specification states that cable modems allow a device (e.g., computer) to
`interface with networks (e.g., Internet) at greater speeds than traditional “dial-up” (data)
`modems, which receive/transmit data across telephone lines. Id., 36:20-25, 61-63.
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`8
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`Case 6:21-cv-00520-ADA Document 40 Filed 04/15/22 Page 12 of 12
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`Dated: April 15, 2022
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`Of Counsel:
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`Ronald M. Daignault*
`Chandran B. Iyer
`Jason S. Charkow*
`Stephanie R. Mandir
`
`Daignault Iyer LLP
`rdaignault@daignaultiyer.com
`cbiyer@daignaultiyer.com
`jcharkow@daignaultiyer.com
`smandir@daignaultiyer.com
`8618 Westwood Center Drive
`Suite 150
`Vienna, VA 22182
`
`
`* Not admitted to practice in Virginia
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`Respectfully submitted,
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`/s/Raymond W. Mort, III
`
`Raymond W. Mort, III
`Texas State Bar No. 00791308
`THE MORT LAW FIRM, PLLC
`100 Congress Avenue, Suite 2000
`Austin, Texas 78701
`Tel/Fax: 512-865-7950
`raymort@austinlaw.com
`
`
`Attorneys for Plaintiff ParkerVision, Inc.
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`9
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