Case 6:21-cv-00520-ADA Document 55 Filed 06/21/22 Page 1 of 45
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`PARKERVISION, INC,
` Plaintiff
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`v.
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`LG ELECTRONICS, INC.,
` Defendant
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`6:21-CV-00520-ADA
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`JURY TRIAL DEMANDED
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`§
`§
`§
`§
`§
`§
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`§
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`CLAIM CONSTRUCTION ORDER AND MEMORANDUM IN SUPPORT THEREOF
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`Before the Court are the Parties’ claim construction briefs: Defendant LG Electronics,
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`Inc.’s Opening and Reply briefs (ECF Nos. 33 and 37 respectively) and Plaintiff ParkerVision,
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`Inc.’s Response and Sur-Reply briefs (ECF Nos. 36 and 40, respectively). United States District
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`Judge Alan D Albright referred this case to the undersigned on April 20, 2022. ECF No. 43. The
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`Court provided preliminary constructions for the disputed terms the day before the hearing. The
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`Court held the Markman hearing on May 10, 2022. ECF No. 51. During that hearing, the Court
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`informed the Parties of the final constructions for the disputed terms. Id. This Order does not alter
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`any of those constructions.
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`I.
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`BACKGROUND
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`Plaintiff asserts U.S. Patent Nos. 6,049,706, 6,266,518, 6,580,902, 7,110,444, 7,292,835,
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`8,588,725, 8,660,513, 9,118,528, 9,246,736, and 9,444,673. Plaintiff previously asserted these
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`patents in the Western District of Texas against Intel (6-20-cv-00108, 6-20-cv-00562), Hisense (6-
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`20-cv-00870), and TCL (6-20-cv-00945). Judge Albright held Markman hearings in the Intel cases
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`Case 6:21-cv-00520-ADA Document 55 Filed 06/21/22 Page 2 of 45
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`on January 26, 2021 (-00108) and July 22, 2021 (-00562). Judge Albright appointed a special
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`master for the Hisense and TCL cases, who held the Markman hearing on October 27, 2021.
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`For 28 terms (Terms #3 to #30 below), the parties rely on the briefs from the prior Intel,
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`Hisense, and TCL cases. ECF No. 42 (Joint Claim Construction Statement) at 3–17. The Court
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`adopts the District Judge’s and Special Master’s final constructions (which were identical) for
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`those terms.
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`The parties dispute the meaning of two terms which were newly briefed in this litigation.
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`II. DESCRIPTION OF THE ASSERTED PATENTS
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`The Asserted Patents describe and claim systems for down-conversion of a modulated
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`carrier signal. ’518 Patent at Abstract. Down conversion is the process of recovering the baseband
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`(audio) signal from the carrier signal after it has been transmitted to and received by the receiver.
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`This process is referred to as “down-conversion” because a high frequency signal is being down-
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`converted to a low frequency signal.
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`The Asserted Patents disclose at least two types of systems for down-conversion: (1) sample-and-
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`hold (i.e., voltage sampling) and (2) “energy transfer” (also known as “energy sampling”). The
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`key difference between the two is that the former takes a small “sample” of the input signal while
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`the latter takes a very large sample, i.e., a large enough sample that a non-negligible amount of
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`Case 6:21-cv-00520-ADA Document 55 Filed 06/21/22 Page 3 of 45
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`energy is transferred from the input signal. The following sub-sections describes each type of
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`system, their respective operation, and compares them.
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`A. Circuit configuration of down-sampling systems: sample-and-hold and energy
`transfer.
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`Figure 78B depicts an exemplary sample-and-hold system while Figure 82B depicts an
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`exemplary energy transfer system. ’518 Patent at 63:19–26 (sample-and-hold) and 7:63–64
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`(energy transfer).
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`While Figs. 78B and 82B depict that the respective circuits have similar structure, their respective
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`parameter values (e.g., capacitor and load impedance values)—and concomitantly their
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`respectively operation—are very different. It is important to note that the input signal, input EM
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`signal, is the same in both figures.
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`The circuits in both figures include a switching module (7806 in Fig. 78B and 8206 in Fig.
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`82B). Id. at 62:65–66 (switching module 7806), 66:13–14 (switching module 8206). The
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`switching module opens and closes (i.e., turns off and on, respectively) based on under sampling
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`signal 7810 in Fig. 78B and energy transfer signal 8210 in Fig. 82B. Id. at 62:67–63:1 (under
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`sampling signal 7810), 66:24–26 (energy transfer signal 8210). When the switching module is
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`“closed,” input EM signal 7804 and input EM signal 8204 can propagate across the switching
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`module to holding capacitance 7808 and storage capacitance 8208, respectively, but when the
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`switching module is “open,” input EM signals 7804/8204 cannot propagate across the switching
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`module. While both switching module 7806 and switching module 8206 open and close, the
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`duration that each module is closed differs significantly. The specifications of the Asserted Patents
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`describe that under sampling signal 7810 “includes a train of pulses having negligible apertures
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`that tend towards zero time in duration.” Id. at 63:1–3. The specification discloses an embodiment
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`of the “negligible pulse width” as being “in the range of 1–10 p[ico]sec[onds] for under-sampling
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`signal a 900 MHz signal.” Id. at 63:3–5. By contrast, the specifications describe that energy
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`transfer signal 8210 “includes a train of energy transfer pulses having non-negligible pulse widths
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`that tend away from zero time in duration.” Id. at 66:26–28 (emphasis added). The specification
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`discloses an embodiment where the “non-negligible pulse” is approximately 550 picoseconds for
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`a 900 MHz signal.
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`The specifications describe that holding capacitance 7808 and storage capacitance 8208
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`are capacitors that charge when switching module 7804 and switching module 8204, respectively,
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`are closed. Id. at 63:10–13 (holding capacitance 7808), 66:38–42 (storage capacitance 8208). The
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`specifications disclose that holding capacitance 7808 “preferably has a small capacitance value”
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`and disclose an embodiment wherein holding capacitance 7808 has a value of 1 picoFarad (“pF”).
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`Id. at 63:9–15. By contrast, the specifications disclose that storage capacitance 8208 “preferably
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`has the capacity to handle the power being transferred” and disclose an embodiment wherein
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`storage capacitance 8208 has a value “in the range of 18 pF.” Id. at 66:38–49.
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`The specifications describe that holding capacitance 7808 and storage capacitance 8208
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`discharge through load 7812 and load 8212 when switching module 7804 and switching module
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`8204, respectively, are open. See id. at 63:19–26 (load 7812), 66:61–65 (load 8212). Fig. 78B
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`depicts that “high impedance” load 7812 has an impedance of approximately 1 MΩ while Fig. 82B
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`depicts that “low impedance” load 8212 has an impedance of approximately 2 KΩ. The
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`specifications describe that “[a] high impedance load is one that is relatively insignificant to an
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`output drive impedance of the system for a given output frequency. A low impedance load is one
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`that is relatively significant.” Id. at 66:58–61.
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`B. Operation of down-converting systems
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`At a very high level, both systems operate similarly. In particular, when the switching
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`module (switching modules 7806 / 8206) is closed, the input signal (input EM signal 7804 / 8204)
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`propagates to the capacitor (holding capacitance 7808 and storage capacitance 8208) and charge
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`the voltage across the capacitor to the voltage of input signal. But when the switching module is
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`open, the input signal cannot propagate to the capacitor, i.e., cannot charge the voltage across the
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`capacitor to the voltage of input signal. Rather, the charge on the capacitor discharges through the
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`load impedance (load 7812 / 8212).
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`Case 6:21-cv-00520-ADA Document 55 Filed 06/21/22 Page 6 of 45
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`While both systems operate similarly at a high level, differences in (1) the width of the
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`sampling aperture, (2) value of the capacitor, and (3) value of the load are what dictates whether
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`the system operates as a sample-and-hold system or an energy transfer system.
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`1. Operation of sample-and-hold system
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`In a sample-and-hold system, the sampling aperture in under sampling signal 7810 is
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`negligible which means only a small amount of charge from input EM signal 7804 propagates to
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`the holding capacitance 7808 before switching module 7806 opens. Id. at 62:63–63:8. Because
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`the sampling aperture has a negligible (i.e., very small) width, there is only enough time take a
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`“sample” of input EM signal 7804, i.e., only a small amount of charge is transferred to holding
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`capacitor 7808. Given that only a small amount of charge is transferred to the capacitor, the value
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`of holding capacitor 7808 needs to be relatively low in order for the voltage across holding
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`capacitance 7808 change to the voltage of input EM signal 7804. More specifically, the
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`relationship between charge (Q) and voltage (V) across a capacitor (with a capacitance of C) is Q
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`= C * V, or Q / C = V. As such, if the capacitance C is large, more charge Q is needed to order to
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`increase the voltage to V. For example, for the same amount of charge, if the capacitance is 2C in
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`one case and C in other case, the voltage in the former case will be half the voltage of the voltage
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`in the latter case. Id. at 65:29–35. Therefore, to ensure that the value of holding capacitance 7808
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`does not limit the voltage across the capacitor, the value of holding capacitance 7808 needs to be,
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`as described above, low. Id. at 63:9–15.
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`When sampling module 7806 is open, the charge on holding capacitance 7808 discharges
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`through load impedance 7812. See id. at 63:19–26. When value of load impedance 7812 is high,
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`the charge on holding capacitance 7808 discharges very slowly as compared to when the load
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`impedance is low. More specifically, the time to discharge a capacitor is related to R * C (also
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`known as the time constant τ) where R is the value of the load impedance. Using the exemplary
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`values depicted in Figs. 78B (1 MΩ) and 82B (2 KΩ), assuming that the capacitance is the same,
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`it will take 500 times longer to discharge the capacitor with the 1 MΩ load impedance as compared
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`to the circuit with the 2 KΩ load impedance. Because it takes significantly longer to discharge the
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`capacitor using with a 1 MΩ load impedance (as compared to the 2 KΩ load impedance), the 1
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`MΩ load impedance in “holds” the charge.
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`To summarize, in a sample-and-hold down-sampling system, a negligible sampling
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`aperture for switching module 7806 and a small value for holding capacitance 7808 only allows
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`for a “sample” of the voltage of the input EM signal 7804 when switching module 7806 is closed.
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`And because of the high value of load impedance 7812, the capacitor “holds” that value when
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`switching module 7806 is open.
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`2. Operation of energy transfer system
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`As described above, in an energy transfer system, the sampling aperture is non-negligible
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`(e.g., 550 picoseconds versus 1 picosecond for the sample-and-hold system for a 900 MHz input
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`signal). Therefore, there is significantly more time to transfer charge from the input signal to
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`storage capacitance. Id. at 66:42–44. Because significantly more charge is transferred to the
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`capacitor, the value of storage capacitance 8208 can be larger, in spite of the fact that charge and
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`voltage are inversely related (i.e., V = Q / C). The fact that this system transfers a large amount
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`of charge—or energy—to the capacitor gives rise to the name “energy transfer” system.
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`When sampling module 8206 is open, the charge on holding capacitance 8208 discharges
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`through load impedance 8212. See id. at 66:61–65. Because the load impedance in an energy
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`transfer system is “low,” e.g., 2 KΩ, the charge on storage capacitance 8208 discharges much
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`faster than the charge on a capacitor in a sample-and-hold system, e.g., 500 times faster as
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`compared to using a 1 MΩ load impedance.
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`To summarize, in an energy transfer down-sampling system, a non-negligible sampling
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`aperture for switching module 8206 and a high value for holding capacitance 8208 allows for a
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`large amount of charge—or energy—to be transferred from the input signal.
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`C. Comparison of sample-and-hold and energy transfer systems
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`The following summarizes the key difference between sample-and-hold and energy
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`transfer systems.
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`Parameter
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`Sample-and-hold
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`Energy transfer
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`Sampling aperture
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`Capacitor
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`Load impedance
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`Negligible
`(e.g., 1–10 picoseconds)
`Holding capacitance
`(e.g., 1 pF)
`High
`(e.g., ~1 MΩ)
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`Non-negligible
`(e.g., 550 picoseconds)
`Storage capacitance
`(e.g., 18 pF)
`Low
`(e.g., ~2 KΩ)
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`
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`It is important to emphasize that differences in the set of parameter values is what
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`determines whether a system functions as a sample-and-hold system or an energy transfer system.
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`For example, there is nothing special in the structure of a holding capacitance as compared to the
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`structure of a storage capacitance. A circuit designer could, in theory, swap the holding
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`capacitance in a sample-and-hold system with the storage capacitance in an energy transfer system
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`and still have a sample-and-hold system by appropriately adjusting the sampling aperture and load
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`impedance to “match” the larger capacitor value of the holding capacitance.
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`It is important that changing one parameter without adjusting the other parameters will
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`prevent each system from operating as intended or have other problems. For example, using a
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`non-negligible sampling aperture in a sample-and-hold system is unnecessary as the holding
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`capacitance can be fully charged (to the voltage of the input signal) with a negligible aperture, but
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`using a non-negligible sampling aperture may distort or destroy the input EM signal by transferring
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`to much of its energy to the holding capacitance. Id. at 62:30–39.
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`Case 6:21-cv-00520-ADA Document 55 Filed 06/21/22 Page 9 of 45
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`Even worse, using a high load impedance in an energy transfer system or a low load
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`impedance in a sample-and-hold system could result in a system with poor performance. See, e.g.,
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`id. at 65:52–55. More specifically, in the latter situation, the low value of the holding capacitance
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`combined with a low load impedance means that its corresponding time constant τ is very low,
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`which means that the holding capacitance may discharge significantly when the switching module
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`is open. As a result, the down-converted signal “cannot provide optimal voltage reproduction, and
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`has relatively negligible power available at the output.” Id. at 64:49–51.
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`In the former situation, the high value of the storage capacitance combined with a high load
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`impedance means that its corresponding time constant τ is very high, which means it will take
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`considerably more time (as compared to a low load impedance) to discharge the storage
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`capacitance. This may result in less than optimal voltage reproduction, e.g., when the voltage of
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`the input EM signal is lower than the voltage across the capacitor. Furthermore, the down-
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`converted signal could have substantially less power (e.g.: V2/R; ~2 mV and 1 MΩ) than the energy
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`transfer system with a low impedance load (e.g.: V2/R; ~2 mV and 2 kΩ) or even the sample-and-
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`hold system with a high impedance load (e.g.: V2/R; ~5 mV and 1 MΩ). See id. at 67:28–33.
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`III. LEGAL STANDARD
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`A. General principles
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`The general rule is that claim terms are generally given their plain-and-ordinary meaning.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc); Azure Networks, LLC v.
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`CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014), vacated on other grounds, 575 U.S. 959, 959
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`(2015) (“There is a heavy presumption that claim terms carry their accustomed meaning in the
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`relevant community at the relevant time.”) (internal quotation omitted). The plain-and-ordinary
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`meaning of a term is the “meaning that the term would have to a person of ordinary skill in the art
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`in question at the time of the invention.” Phillips, 415 F.3d at 1313.
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`The “only two exceptions to [the] general rule” that claim terms are construed according
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`to their plain-and-ordinary meaning are when the patentee (1) acts as his/her own lexicographer or
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`(2) disavows the full scope of the claim term either in the specification or during prosecution.
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`Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The Federal
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`Circuit has counseled that “[t]he standards for finding lexicography and disavowal are exacting.”
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`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). To act as his/her
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`own lexicographer, the patentee must “clearly set forth a definition of the disputed claim term,”
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`and “‘clearly express an intent’ to [define] the term.” Thorner, 669 F.3d at 1365.
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`“Like the specification, the prosecution history provides evidence of how the PTO and the
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`inventor understood the patent.” Phillips, 415 F.3d at 1317. “[D]istinguishing the claimed
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`invention over the prior art, an applicant is indicating what a claim does not cover.” Spectrum Int’l,
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`Inc. v. Sterilite Corp., 164 F.3d 1372, 1379 (Fed. Cir. 1998). The doctrine of prosecution disclaimer
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`precludes a patentee from recapturing a specific meaning that was previously disclaimed during
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`prosecution. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). “[F]or
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`prosecution disclaimer to attach, our precedent requires that the alleged disavowing actions or
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`statements made during prosecution be both clear and unmistakable.” Id. at 1325–26. Accordingly,
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`when “an applicant’s statements are amenable to multiple reasonable interpretations, they cannot
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`be deemed clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315,
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`1326 (Fed. Cir. 2013).
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`“Although the specification may aid the court in interpreting the meaning of disputed claim
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`language . . ., particular embodiments and examples appearing in the specification will not
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`generally be read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571
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`(Fed. Cir. 1988). “[I]t is improper to read limitations from a preferred embodiment described in
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`the specification—even if it is the only embodiment—into the claims absent a clear indication in
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`the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co.
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`v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
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`Although extrinsic evidence can be useful, it is “less significant than the intrinsic record in
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`determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc. v. United States Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)).
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`Technical dictionaries may be helpful, but they may also provide definitions that are too broad or
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`not indicative of how the term is used in the patent. Id. at 1318. Expert testimony may also be
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`helpful, but an expert’s conclusory or unsupported assertions as to the meaning of a term are not.
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`Id.
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`B. Whether the preamble is limiting
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`Courts presume that the preamble does not limit the claims. Am. Med. Sys., Inc. v. Biolitec,
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`Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). But “[i]n general, a preamble limits the invention if it
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`recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the
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`claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
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`(quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)).
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`“Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention
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`in the claim body and uses the preamble only to state a purpose or intended use for the invention.’”
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`Catalina, 289 F.3d at 808 (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). The Federal
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`Circuit has provided some “guideposts” regarding whether the preamble is limiting: (1) preamble
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`provides antecedent basis, (2) preamble is essential to understand limitations or terms in the claim
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`body, (3) preamble recites “additional structure or steps underscored as important by the
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`specification,” and (4) “clear reliance on the preamble during prosecution to distinguish the
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`claimed invention from the prior art.” Catalina, 289 F.3d at 808.
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`
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`IV.
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`LEGAL ANALYSIS
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`A. Term #1: “energy storage element” / “energy storage device”/ “energy storage
`module”/ “storage element”/ “storage module”
`
`Term
`
`#1: “storage module”
`U.S. Patent No. 6,049,706,
`Cls. 105, 114, 115, 164, 166,
`168, 175, 179, 186, 190;
`U.S. Patent No. 7,292,835,
`Cls. 1, 18; U.S. Patent No.
`8,588,725, Cls. 1, 6, 17-19
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`“energy storage module”
`U.S. Patent No. 6,580,902,
`Cl. 1
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`“storage element”
`U.S. Patent No. 7,110,444,
`Cls. 3, 4
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`“storage device”
`U.S. Patent No. 7,292,835,
`Cl. 20
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`“energy storage element”
`U.S. Patent No. 8,660513,
`Cl. 19; U.S. Patent No.
`9,118,528, Cls. 1, 9; U.S.
`Patent No. 9,246,736, Cls. 1,
`11, 21, 26, 27
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`“energy storage device”
`U.S. Patent No. 9,444,673,
`Cls. 13, 17, 18
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`Defendant’s Proposed
`Construction
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`“a module that stores a
`non-negligible amount of
`energy from an input
`electromagnetic (EM)
`signal”
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`Plaintiff’s Proposed
`Construction
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`Energy storage element / storage
`element: “an element of an
`energy transfer system that stores
`non-negligible amounts of energy
`from an input electromagnetic
`signal”
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`Energy storage module / storage
`module: “a module of an energy
`transfer system that stores non-
`negligible amounts of energy from
`an input electromagnetic signal”
`
`Energy storage device: “a device
`of an energy transfer system that
`stores non-negligible amounts of
`energy from an input
`electromagnetic signal”
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`The Parties’ Positions:
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`Despite the fact that this Court previously construed this term three other times, Defendant
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`requests that the Court reject its previous constructions (which Plaintiff adopted as its proposed
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`construction) and adopt Defendant’s proposed construction (which the Court previously rejected).
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`More specifically, Defendant mentions that the Patent and Trademark Appeal Board (“PTAB”)
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`rejected Plaintiff’s proposed construction that limited “storage element” to “energy transfer
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`systems” in a recent Final Written Decision. Opening at 1. Defendant contends that the Court
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`“should follow in the PTAB’s footsteps and reject ParkerVision’s proposed construction.” Id. at
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`2.
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`Defendant’s central argument is that the patentees acted as their own lexicographer and
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`expressly defined the meaning of “storage modules.” Id. at 3. More specifically, Defendant argues
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`that the last sentence in the following passage is a definition of this claim term:
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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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`Opening at 3 (quoting ’518 Patent at 66:11–23). Defendant contends that one indicator of intent
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`to define this term was via the use of “refer to.” Reply at 1. Defendant contends that this sentence
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`is a complete definition. Id. at 2. Defendant also contends that Plaintiff previously argued for this
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`proposed construction in a 2014 inter partes review (“IPR”). Opening at 4.
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`Case 6:21-cv-00520-ADA Document 55 Filed 06/21/22 Page 14 of 45
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`Defendant points out that the PTAB, despite being aware of this Court’s constructions in
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`the prior cases, recently adopted Defendant’s proposed construction and implicitly rejected this
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`Court’s construction. Id. at 6–8. In the Final Written Decision, the PTAB wrote that adding “of
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`an energy transfer system” is incorrect based on the patentee’s purported lexicography. Id. at 7.
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`Furthermore, Defendant contends that Plaintiff’s proposed construction is improper because
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`including “of an energy transfer system” implicitly includes “a low-impedance load,” which the
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`Court previously rejected including three previous times. Id. at 7.
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`In its response, Plaintiff argues that the last sentence in the above passage is not a
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`definitional statement but, when read in context of the specification, supports Plaintiff’s proposed
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`construction. Response at 3–6. More specifically, Plaintiff contends that the specification, as a
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`whole, describes two approaches for under-sampling: 1) energy transfer and 2) sample-and-hold.
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`Id. at 3–4. Plaintiff further contends that the specification consistently describes that the “energy
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`transfer” approach uses “storage” modules while the sample-and-hold approach uses “holding”
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`modules. Id. at 4–6. Plaintiff contends that the above passage 1) describes that storage modules
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`are used in energy transfer systems (and by implication holding modules are using in sample-and-
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`hold systems), 2) is in the context of energy transfer systems, and 3) differentiates between storage
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`modules and holding modules. Id. at 6; Sur-Reply at 3.
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`Plaintiff contends that the PTAB’s construction is incorrect as it incorrectly construes the
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`above highlighted sentence as a definitional statement. Response at 7. Plaintiff contends that
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`Defendant is wrong to suggest that the Court should defer to the PTAB, especially as “the PTAB
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`afforded no deference to this Court and expressly rejected the Court’s construction,” despite being
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`aware of this Court’s construction. Id. at 1; Sur-Reply at 5. Rather, according to Plaintiff, this
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`Court owes no deference to the PTAB. Response at 1.
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`Case 6:21-cv-00520-ADA Document 55 Filed 06/21/22 Page 15 of 45
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`Plaintiff contends that its statement in the 2014 IPR was based on the Broadest Reasonable
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`Interpretation (“BRI”) standard that the PTAB uses and not the Phillips standard that Federal
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`courts use. Id. at 9. Plaintiff contends it did not concede that the last sentence in the above passage
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`was an express definition, but rather that it quoted the entire paragraph above in the IPR which
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`indicates that Plaintiff implied that the last sentence needed to be understood in light of the
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`paragraph as a whole. Id.
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`In its reply, Defendant contends that “on the other hand” in the above passage indicates
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`that the patentee was contrasting storage and holding modules, and not energy transfer and sample-
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`and-hold systems. Reply at 3. Defendant further contends that BRI is irrelevant because
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`lexicography is the same under BRI or Phillips. Reply at 4.
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`In its sur-reply, Plaintiff contends that Defendant ignores that the specification describes
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`that energy transfer systems use storage modules. Sur-Reply at 1, 3. Plaintiff contends that even
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`though Defendant alleges lexicography, Defendant’s proposed construction does not adopt that
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`alleged express definition, but rather modifies it in a few minor ways. Id. at 3. Plaintiff also
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`contends that when the patentee wanted to define something, it did so in the “General
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`Terminology” section, which further indicates that the last sentence in the above passage is not an
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`express definition. Id. Plaintiff contends that “on the other hand” in the above passage simply
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`distinguishes “storage” and “holding” modules, and is not a definition. Id. at 5. Plaintiff contends
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`that Defendant does not consider the specification as a whole and construes the term in a manner
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`that renders the patent internally consistent. Id. Plaintiff finally contends that its statements in the
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`2014 IPR are extrinsic evidence. Id.
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`Case 6:21-cv-00520-ADA Document 55 Filed 06/21/22 Page 16 of 45
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`The Court’s Analysis:
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`After reviewing the parties’ arguments and considering the applicable law, the Court
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`declines to adopt Defendant’s proposed construction and instead will adopt its final construction
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`from the prior ParkerVision cases as the final construction in this case.
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`To act as their own lexicographer, the patentees must “clearly set forth a definition of the
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`disputed claim term,” and “‘clearly express an intent’ to [define] the term.” Thorner, 669 F.3d at
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`1365. The Court does not find that Defendant has shown that both elements are met here for at
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`least the following reasons.
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`First, the Court does not believe that—even in isolation—that the last sentence rises to the
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`“exacting standards” necessary for lexicography. Hill-Rom Servs., 755 F.3d at 1371. For the
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`reasons described in Section II, a POSITA would understand that a “storage capacitance” is just a
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`generic capacitor (as is a holding capacitance); a POSITA would not understand that a storage (or
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`holding) capacitance is a special or particular type of capacitor with unique features or
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`functionality, e.g., a capacitor that only stores or is only capable of storing “a non-negligible
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`amount of energy from an input electromagnetic (EM) signal.” In addition, the last sentence’s use
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`of the phrase “on the other hand” indicates that it is making a comparison and, as such, a POSITA
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`would not only look to this sentence in isolation—or even this passage alone—to understand the
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`meaning the of “storage module” or “storage capacitance.” Similarly, based on the words “refers
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`to,” a POSITA would not only look to this sentence to understand the meaning of those terms.
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`Finally, a POSITA would not understand that “storage capacitance” is a “system,” or otherwise
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`equate them. Rather, a POSITA would understand that “storage capacitance” is a component of a
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`system. As such, a POSITA would likely understand that the storage capacitance’s place and role
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`in an electrical system—and not any inherent property of the storage capacitance itself—is why
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`Case 6:21-cv-00520-ADA Document 55 Filed 06/21/22 Page 17 of 45
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`the storage capacitance only stores a non-negligible amount of energy from an input EM signal.
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`Therefore, based on last sentence in isolation, the Court does not find that the patentees “clearly
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`set forth a definition” nor did they “clearly express an intent’ to [define] the term.” Thorner, 669
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`F.3d at 1365.
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`Second, the passage as a whole (’518 Patent at 66:11–23) supports the Court’s conclusion
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`that the last sentence does not rise to the level of a lexicographical statement. This passage, when
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`read in context, describes the operation of a capacitor in an energy transfer system (i.e., the “storage
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`capacitance” and “storage module”) as compared to the operation of the corresponding capacitor
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`in a sample-and-hold system (i.e., the “holding capacitance” and “holding module”). For example,
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`the passage initially recites that the “storage module” and “storage capacitance” are components
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`of an energy transfer system. The passage then recites “[t]he terms storage module and storage
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`capacitance, as used herein, are distinguishable from the terms holding module and holding
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`capacitance, respectively.” Based on these two sentences, a POSITA would understand that the
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`remainder of the passage will compare a storage module / capacitance, which this passage
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`describes as a component of an energy transfer system, with a holding module / capacitance (which
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`was previously described as a component of a sample-and-hold system). Furthermore, this passage
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`describes that “[h]olding modules and holding capacitances, as used above, identify systems[.]”