Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 1 of 101
`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 1 of 101
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 2 of 101
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 44
`Date: November 17, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`TCL INDUSTRIES HOLDINGS CO., LTD. and LG ELECTRONICS INC.,
`Petitioners,1
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2021-009852
`Patent 7,292,835 B2
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`1 The caption is updated to remove Petitioner Hisense Co., Ltd. (“Hisense”)
`because Hisense is no longer a party to this proceeding. See Paper 43
`(Termination due to Settlement After Institution of Trial Only as to Hisense
`Co., Ltd.). The parties shall use this caption (without this footnote) going
`forward.
`2 LG Electronics Inc., who filed a petition in IPR2022-00246, is joined as
`petitioner in this proceeding.
`
`
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 3 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`I.
`
`INTRODUCTION
`
`Background
`
`TCL Industries Holdings Co., Ltd. (“TCL”); Hisense; and ZyXEL
`Communications Corp. (“ZyXEL”) filed a Petition (Paper 1, “Pet.”)
`requesting institution of inter partes review of claims 1, 12–15, and 17–20
`(“the Challenged Claims”) of U.S. Patent No. 7,292,835 B2 (Ex. 1001, “the
`’835 patent”). ParkerVision, Inc. (“Patent Owner”) filed a Preliminary
`Response (Paper 9). ZyXEL and Patent Owner reached a settlement and this
`proceeding was terminated only as to ZyXEL. Paper 13. TCL and Hisense
`remained as petitioners in the proceeding. 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 14 (“Inst. Dec.”).
`After institution, LG Electronics Inc. (“LG”) filed a petition in
`IPR2022-00246 (challenging the same claims of the ’835 patent on the same
`grounds), and a motion for joinder (seeking to join this proceeding as a
`petitioner). LG Elecs. Inc. v. ParkerVision, Inc., IPR2022-00246 (PTAB
`Dec. 17, 2021), Papers 2 (petition), 3 (motion for joinder). We granted
`institution in IPR2022-00246 and granted LG’s motion for joinder. Id. at
`Paper 10 (PTAB Apr. 12, 2022); IPR2021-00985, Paper 21. Recently,
`Hisense and Patent Owner reached a settlement and this proceeding was
`terminated only as to Hisense. Paper 43. Accordingly, we refer to TCL and
`LG, collectively, as “Petitioners.”
`Also following institution, Patent Owner filed a Patent Owner
`Response (Paper 17, “PO Resp.”), Petitioners filed a Reply to Patent
`Owner’s Response (Paper 25, “Pet. Reply”), and Patent Owner filed a
`Sur-reply (Paper 31, “PO Sur-reply”). Additionally, we granted Petitioners’
`
`2
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 4 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`Motion for Routine and/or Additional Discovery (Paper 18), ordering the
`production of Patent Owner’s Final Infringement Contentions. Paper 23
`(Order), 8. And, we denied Patent Owner’s Motion to Strike portions of
`Petitioners’ Reply (Paper 26), finding that the “Reply does not raise new
`issues, is not accompanied by belatedly presented evidence, and does not
`otherwise exceed the proper scope of [a] reply brief as set forth in 37 C.F.R.
`§ 42.23(b).” Paper 30 (Order), 13. An oral hearing was held on
`September 8, 2022, and the transcript is of record. Paper 39 (“Tr.”).3
`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 the Challenged Claims. Petitioners bear the burden 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, Petitioners must prove unpatentability by a preponderance of the
`evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2020).
`Having reviewed the arguments and the supporting evidence, we determine
`that Petitioners have shown, by a preponderance of the evidence, that
`claims 1, 12–15, and 17–20 of the ’835 patent are unpatentable.
`
`Related Proceedings
`
`The parties identify the following as related matters: ParkerVision,
`Inc. v. TCL Industries Holdings Co., Ltd. et al., No. 6:20-cv-00945 (W.D.
`Tex.); ParkerVision, Inc. v. Hisense Co., Ltd. et al., No. 6:20-cv-00870
`(W.D. Tex.); ParkerVision, Inc. v. ZyXEL Communications Corp., No. 6:20-
`
`
`3 Because of a substantial overlap in issues presented, the transcript includes
`oral argument from related case IPR2021-00990, although this proceeding
`and IPR2021-00990 are not consolidated or joined.
`
`3
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 5 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`cv-01010 (W.D. Tex.)4; and ParkerVision, Inc. v. LG Electronics Inc.,
`No. 6:21-cv-00520 (W.D. Tex.). Pet. 13–14; Paper 6 (Petitioner’s Updated
`Mandatory Notice), 1; Paper 8 (Patent Owner’s Mandatory Notices), 1.
`Petitioners also identify ParkerVision, Inc. v. Buffalo Inc., No. 6:20-cv-
`01009 (W.D. Tex.), as a related matter involving the ’835 patent. Pet. 14.
`In joined case IPR2022-00246, Petitioner LG also identifies ParkerVision,
`Inc. v. TCL Technology Group Corp., No. 5:20-cv-01030 (C.D. Cal.). LG
`Elecs., IPR2022-00246, Paper 2 at 13. Additionally, Petitioners challenge
`several claims of U.S. Patent No. 7,110,444 B1, owned by Patent Owner, in
`IPR2021-00990. Pet. 14; Paper 8, 1.5
`
`Real Parties in Interest
`
`Petitioners identify TCL;TCL Electronics Holdings Ltd.; Shenzhen
`TCL New Technology Co., Ltd.; TCL King Electrical Appliances (Huizhou)
`Co., Ltd.; TCL Moka Int’l Ltd.; TCL Moka Manufacturing S.A. DE C.V.;
`TCL Technology Group Corp.; TTE Technology, Inc.; LG; and LG
`Electronics U.S.A., Inc. as real parties in interest. Pet. 13; LG, IPR2022-
`00246, Paper 2 at 12. Patent Owner identifies ParkerVision, Inc. as the sole
`real party in interest. Paper 8, 1; LG, IPR2022-00246, Paper 8 (Patent
`Owner’s Mandatory Notices), 1.
`
`
`4 After the parties’ briefing, the district court granted a joint motion to
`dismiss with prejudice and the case is now closed. See Ex. 3001 (Docket
`Entry 25, Order dated Sept. 27, 2001).
`5 Patent Owner identifies the instant proceeding—IPR2021-00985—as a
`related matter, but we understand Patent Owner to refer to IPR2021-00990.
`See Paper 8, 1.
`
`4
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 6 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`
`
`The Asserted Grounds of Unpatentability and Declaration
`Evidence
`Petitioners challenge the patentability of claims 1, 12–15, and 17–20
`of the ’835 patent on the following grounds:
`Claim(s) Challenged 35 U.S.C. §6
`1, 12, 15, 17
`103(a)
`
`1, 12, 15, 17
`
`1, 12–15, 17–20
`1, 12–15, 17–20
`
`103(a)
`
`103(a)
`103(a)
`
`Reference(s)/Basis
`Hulkko,7 Gibson8
`Hulkko, Gibson, Goldberg,9
`Thacker,10 ITU-T J.83b,11
`AAPA12
`Gibson, Schiltz13
`Gibson, Schiltz, Goldberg,
`Thacker, ITU-T J.83b, AAPA
`Pet. 17. In the Petition, Petitioners first set forth the grounds as though there
`are two: Hulkko and Gibson, and Gibson and Schiltz. Id. Petitioners,
`however, explain that “if the Board finds that the preamble of claim 1 is
`limiting—and thus requires a ‘cable modem’—then Petitioners submit that
`the [C]hallenged [C]laims are obvious for the reasons above and further in
`
`
`6 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the
`’835 patent has an effective filing date before March 16, 2013, we apply the
`pre-AIA version of the statutory basis for unpatentability.
`7 U.S. Patent No. 5,734,683, issued Mar. 31, 1998 (Ex. 1004, “Hulkko”).
`8 U.S. Patent No. 4,682,117, issued July 21, 1987 (Ex. 1005, “Gibson”).
`9 L. Goldberg, “MCNS/DOCSIS MAC Clears a Path for the Cable-Modem
`Invasion,” Electronic Design; Dec. 1, 1997; 45, 27; Materials Science &
`Engineering Collection pg. 69 (Ex. 1007, “Goldberg”).
`10 U.S. Patent No. 6,011,548, issued Jan. 4, 2000 (Ex. 1008, “Thacker”).
`11 ITU-T J.83 Recommendation (Apr. 1997) (Ex. 1009, “ITU-T J.83b”).
`Petitioners include the letter “b” in references to this exhibit although the
`title does not include the letter “b.” See, e.g., Pet. 17, 42. For consistency,
`we refer to the exhibit in the same manner as Petitioners by including the
`letter “b.”
`
`5
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 7 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`view of publications (e.g., Goldberg and Thacker) describing the then-
`existing cable modem standards (ITU-T J.83b and DOCSIS) and/or AAPA.”
`Id. Accordingly, the chart above includes the alternative grounds set forth in
`the Petition. Inst. Dec. 4.
`Additionally, Petitioners support their challenge with a Declaration of
`Matthew B. Shoemake, Ph.D. (Ex. 1002) and a Declaration of Brenda Ray
`(Ex. 1010). Patent Owner supports its arguments with a Declaration of
`Dr. Michael Steer. (Ex. 2038). Petitioners cross-examined Dr. Steer and a
`transcript of that deposition is of record. Ex. 1016.
`
`The ’835 Patent
`
`The ’835 patent is directed to frequency translation and applications
`thereof, including cable modem applications. Ex. 1001, code (57). The
`applications include, but are not limited to, “frequency down-conversion,
`frequency up-conversion, enhanced signal reception, unified down-
`conversion and filtering, and combinations” thereof. Id.
`In particular, with respect to the Challenged Claims, the ’835 patent
`teaches a “[Quadrature Amplitude Modulation (“QAM”)] modulation mode
`
`
`12 Applicant admitted prior art (“AAPA”) refers to the ’835 patent, at
`column 40, lines 17–35, which states, inter alia, that “[t]he cable modem
`receivers, transmitters, and transceivers of the present invention may be
`implemented using a variety of well[-]known devices” and lists several
`examples. See Pet. 11. “A patentee’s admissions regarding the scope and
`content of the prior art under § 103 can be used, for example, to (1) supply
`missing claim limitations that were generally known in the art prior to the
`invention . . . or the effective filing date of the claimed invention . . . .”
`USPTO Memorandum, Updated Guidance on the Treatment of Statements
`of the Applicant in the Challenged Patent in Inter Partes Reviews Under
`§ 311 (issued June 9, 2022), at 4, available at https://go.usa.gov/xSbGF.
`13 U.S. Patent No. 5,339,459, issued Aug. 16, 1994 (Ex. 1006, “Schiltz”).
`
`6
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 8 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`receiver” that “down-convert[s] and demodulates an input signal that is
`modulated according to QAM . . . modulation techniques.” See Ex. 1001,
`42:43–49. Figure 54B is reproduced below:
`
`
`
`Figure 54B is an exemplary block diagram of QAM modulation
`receiver 5402. Id. at 4:42–44, 42:45–47.
`The ’835 patent explains that QAM modulation mode receiver 5402
`“may be used to directly down-convert and demodulate a received [radio
`frequency (“RF”)] input signal to two baseband information signals, or may
`down-convert and demodulate a received signal that is at an intermediate
`frequency to two baseband information signals.” Ex. 1001, 42:49–54.
`QAM modulation mode receiver 5402 comprises oscillator 5426, first
`universal frequency down-conversion (“UFD”) module 5422, second UFD
`module 5454, first universal frequency translation (“UFT”) module 5430,
`second UFT module 5432, and phase shifter 5428. Id. at 42:63–67.
`
`7
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 9 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`The ’835 patent further explains that
`[o]scillator 5426 provides an oscillating signal used by
`both first UFD module 5422 and second UFD module 5424 via
`phase shifter 5428. Oscillator 5426 generates an “I” oscillating
`signal 5434.
`“I” oscillating signal 5434 is input to first UFD module
`5422. First UFD module 5422 comprises at least one UFT
`module 5430. In an embodiment, first UFD module 5422 is
`structured similarly to UFD module 5300 of FIG. 53, with
`oscillator 5426 substituting for oscillator 5304, and “I”
`oscillating signal 5434 substituting for oscillating signal 5316.
`First UFD module 5422 receives received signal 5416.
`Received signal 5416 comprises two information signals
`modulated with an RF carrier signal according to either QAM
`or QPSK modulation techniques. First UFD module 5422
`frequency down-converts and demodulates received signal 5416
`to down-converted “I” signal 5438 according to “I” oscillating
`signal 5434. Down-converted “I” signal 5438 may be an
`information signal with two possible states or voltage levels
`(QPSK), or with more than two possible states or voltage levels
`(QAM).
`Phase shifter 5428 receives “I” oscillating signal 5434,
`and outputs “Q” oscillating signal 5436, which is a replica of
`“I” oscillating signal 5434 shifted preferably by 90°. Second
`UFD module 5424 inputs “Q” oscillating signal 5436. Second
`UFD module 5424 comprises at least one UFT module 5432.
`In an embodiment, second UFD module 5424 is structured
`similarly to UFD module 5300 of FIG. 53, with “Q” oscillating
`signal 5436 substituting for oscillating signal 5316. Second
`UFD module 5424 frequency down-converts and demodulates
`received signal 5416 to down-converted “Q” signal 5440
`according to “Q” oscillating signal 5436. Down-converted “Q”
`signal 5440 may be an information signal with two possible
`states or voltage levels (QPSK), or with more than two possible
`states or voltage levels (QAM).
`Down-converted “I” signal 5438 is optionally amplified
`by first optional amplifier 5404 and optionally filtered by first
`
`8
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 10 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`optional filter 5406, and a first information output signal 5418
`is output.
`Down-converted “Q” signal 5440 is optionally amplified
`by second optional amplifier 5408 and optionally filtered by
`second optional filter 5410, and a second information output
`signal 5420 is output.
`Ex. 1001, 43:1–42.
`Figures 20A and 20A-1 are reproduced below:
`
`
`
`
`
`
`Figures 20A and 20A-1 are exemplary aliasing modules. Ex. 1001, 3:21–22.
`The ’835 patent explains that Figures 20A and 20A-1 illustrate
`“aliasing module 2000 for down-conversion using a [UFT] module 2002
`which down-converts an [electromagnetic (“EM”)] input signal 2004.”
`Ex. 1001, 6:66–7:2. The ’835 patent further provides that
`
`9
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 11 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`[i]n particular embodiments, aliasing module 2000
`includes a switch 2008 and a capacitor 2010. The electronic
`alignment of the circuit components is flexible. That is, in one
`implementation, switch 2008 is in series with input signal 2004
`and capacitor 2010 is shunted to ground (although it may be
`other than ground in configurations such as differential mode).
`In a second implementation (see FIG. 20A-1), capacitor 2010 is
`in series with input signal 2004 and switch 2008 is shunted to
`ground (although it may be other than ground in configurations
`such as differential mode). Aliasing module 2000 with UFT
`module 2002 can be easily tailored to down-convert a wide
`variety of electromagnetic signals using aliasing frequencies
`that are well below the frequencies of EM input signal 2004.
` Id. at 7:2–14.
`The ’835 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.
`Pat[ent] No. 6,061,551 [(‘the ’551 patent’)], the full disclosure of which is
`incorporated herein by reference.” Ex. 1001, 6:56–61. And, the ’835 patent
`further states that “[a]dditional details pertaining to UFD module 5300 are
`contained in” the ’551 patent.14 Id. at 42:37–42.
`
`Illustrative Claim
`
`Claim 1, the sole independent claim challenged in this proceeding, is
`illustrative of the claimed subject matter and is reproduced below with
`Petitioners’ bracketing added for reference:
`1.
`[1pre] A cable modem for down-converting an
`electromagnetic signal having complex modulations,
`comprising:
`[1A] an oscillator to generate an in-phase oscillating
`signal;
`
`
`14 The ’551 patent is Exhibit 2027 in this proceeding.
`
`10
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 12 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`[1B] a phase shifter to receive said in-phase oscillating
`signal and to create a quadrature-phase oscillating signal;
`[1C] a first frequency down-conversion module to
`receive the electromagnetic signal and said in-phase oscillating
`signal;
`[1D] a second frequency down-conversion module to
`receive the electromagnetic signal and said quadrature-phase
`oscillating signal; wherein
`[1E] said first frequency down-conversion module
`further comprises a first frequency translation module [1F] and
`a first storage module, [1G] wherein said first frequency
`translation module samples the electromagnetic signal at a rate
`that is a function of said in-phase oscillating signal, thereby
`creating a first sampled signal; and
`[1H] said second frequency down-conversion module
`further comprises a second frequency translation module
`[1I] and a second storage module, [1J] wherein said second
`frequency translation module samples the electromagnetic
`signal at a rate that is a function of said quadrature-phase
`oscillating signal, thereby creating a second sampled signal.
`Ex. 1001, 51:5–29.
`
`Level of Ordinary Skill in the Art
`
`Petitioners, supported by Dr. Shoemake’s testimony, propose that a
`person of ordinary skill in the art at the time of the invention would have had
`“at least a bachelor’s degree in electrical engineering or a related subject,
`and two or more years of experience in communication system design,
`signal processing and/or analog and RF circuit design.” Pet. 50 (citing
`Ex. 1002 ¶¶ 31–36). Petitioners explain that “[l]ess work experience may be
`compensated by a higher level of education, such as a master’s degree.” Id.
`(citing Ex. 1002 ¶¶ 31–36).
`
`11
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 13 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`In the Institution Decision, we noted that Patent Owner had not
`expressed a position on the level of ordinary skill in the art in the
`Preliminary Response, and, based on the preliminary record, we adopted
`Petitioners’ unopposed position, finding it consistent with the level of
`ordinary skill in the art reflected by the ’835 patent and the prior art of
`record. Inst. Dec. 10–11 (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 had
`(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
`design and development of radio frequency circuits and/or
`systems.
`PO Resp. 4 (citing Ex. 2038 ¶ 24). Neither Patent Owner nor Dr. Steer
`explains why their proposal materially differs from that proposed by
`Petitioners.
`Patent Owner’s option (a) is substantially the same as Petitioners’
`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 an additional option based on work experience in lieu of a
`formal degree.
`Neither party contends that the difference in their proposals affects the
`outcome of this proceeding and we do not find that it does. Nonetheless, on
`
`12
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 14 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`the full record before us, we find that our identification of the level of
`ordinary skill in art in the Institution Decision as well as Patent Owner’s
`option (b) are supported by the prior art of record, the ’835 patent, and the
`opinion of Dr. Steer. Accordingly, we modify our preliminary finding to
`include option (b) from Patent Owner’s proposal. Thus, we find that one of
`ordinary skill in the art would have had 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
`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. § 42.100(b) (2020). The
`claim construction standard includes construing claims in accordance with
`the ordinary and customary meaning of such claims, as would have been
`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
`
`13
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 15 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`(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 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,
`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).
`
`“storage module”
`
`In the Institution Decision, we did not construe any claim terms
`expressly because none of the terms were in dispute. Inst. Dec. 10 (citation
`omitted). In the briefing following institution, Patent Owner proposed a
`construction for the term “storage module,” see, e.g., PO Resp. 46–50, and it
`became clear that the parties dispute the meaning of the term. Additionally,
`because many of Patent Owner’s arguments hinge on the meaning of this
`term, its proper construction is important to address the issues presented in
`this proceeding. Further, the parties’ arguments rely, almost exclusively, on
`disclosures in the ’551 patent, incorporated by reference into the ’835 patent.
`Id. at 49–50; Pet. Reply 7–9.
`
`14
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 16 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`In the final written decision in IPR2020-01265 (Ex. 2037), we
`construed the term “storage element,” relying on its use in the ’551 patent.
`Because “storage module” is synonymous with “storage element,” our prior
`construction of “storage element” is relevant to our consideration of “storage
`module.” In IPR2020-01265, after considering the parties’ extensive
`arguments as well as prior constructions in related district court litigation,
`we construed “storage element” to mean “an element of a system that stores
`non-negligible amounts of energy from an input EM signal.” Ex. 2037, 41.
`Critical to that determination was the finding that the patentees acted as their
`own lexicographers by defining the systems to which “storage modules”
`refer to. Specifically, we explained that the ’551 patent expressly states
`“[s]torage modules and storage capacitances, on the other hand, refer to
`systems that store non-negligible amounts of energy from an input EM
`signal.” Id. at 36 (emphasis added) (citing ’551 patent,15 66:59–67).
`Additionally, we also explained that in a prior proceeding challenging claims
`of the ’551 patent before the Board—IPR2014-00948—Patent Owner
`represented that the ’551 patent “provides an explicit definition” and
`“explicitly defines a storage module.” Id. at 39 (citing Ex. 103216, 21). We
`found that “Patent Owner’s acknowledgement that the ’551 patent provides
`an explicit definition of ‘storage module’ directly supports our determination
`that the patentees acted as lexicographers.” Id. at 40.
`
`
`15 In IPR2020-01265, the ’551 patent was Exhibit 2007.
`16 Exhibit 1032 from IPR2020-01265 is Patent Owner’s Preliminary
`Response (Paper 7) from IPR2014-00948, which was not filed as an exhibit
`in this proceeding.
`
`15
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 17 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`In this proceeding, in addition to raising substantially the same
`arguments addressed in IPR2020-01265, Patent Owner submitted a Claim
`Construction Order and Memorandum in Support Thereof from
`ParkerVision, Inc. v. LG Electronics, Inc., No. 6:21-cv-00520-ADA (W.D.
`Tex. June 21, 2022) (Doc. 55) (Ex. 2039), and a Special Master’s Report and
`Recommendation Regarding Claim Construction from ParkerVision, Inc. v.
`Hisense Co., No. 6:20-cv-00870-ADA (W.D. Tex. Aug. 29, 2022) (Doc. 72)
`(Ex. 2042).17 Each of these claim construction decisions construes “storage
`module” to mean “a module of an energy transfer system that stores
`non-negligible amounts of energy from an input electromagnetic signal.”
`Ex. 2042, 33; see Ex. 2039, 16 (district court declining to modify its
`previous construction of “storage module,” which was limited to an “energy
`transfer system”). In so determining, each of the district court’s decisions
`finds that the patentees did not act as their own lexicographers. See
`Ex. 2039, 19; Ex. 2042, 32. Patent Owner advocates that we adopt the same
`construction here. PO Resp. 47–50.
`Petitioners assert that “[u]nder any reasonable construction of the
`term, a capacitor constitutes a ‘storage module.’” Pet. Reply 6 (citing
`Ex. 1002 ¶¶ 118–119). Petitioners rely on claim 4 of the ’835 patent, which
`depends indirectly from claim 1 and recites that “said first storage
`
`
`17 Patent Owner also submitted the same Special Master’s Report and
`Recommendation Regarding Claim Construction from ParkerVision, Inc. v.
`TCL Industries Holdings Co., No. 6:20-cv-00945-ADA (W.D. Tex. Aug. 29,
`2022) (Doc. 68) (Ex. 2041).
`
`16
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 18 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`[module18] is a first capacitor.” Id. at 6 n.2. Nonetheless, “Petitioners do
`not object to adoption of the Board’s construction for ‘storage module’ from
`IPR2020-01265 here.” Id. at 7.
`We have reviewed and considered the district court’s construction
`(which limits “storage module” to an “energy transfer system”), but we are
`not persuaded that our construction from IPR2020-01265 should be altered.
`We expressly adopt and incorporate by reference our analysis from
`IPR2020-01265 and do not repeat it in full here. We do, however, take this
`opportunity to provide additional reasoning in support of our prior
`determination based on the arguments and evidence presented in this
`proceeding.
`The ’551 patent provides the following, which formed the focal point
`of Patent Owner’s argument in IPR2014-00948 and which we found
`provides a lexicographic definition of “storage module”/”storage element” in
`IPR2020-01265:
`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.
`
`
`18 Although claim 1 recites a “first storage module” and a “second storage
`module,” dependent claim 3 refers to “said first storage device” and “said
`second storage device,” thus resulting in claim 4 referring to “said storage
`device” instead of “said storage module.” Ex. 1001, claims 1, 3, 4. Because
`“storage device” is not recited in claim 1 (or claim 3), we understand that
`claim 4 refers to the first and second storage modules recited in claim 1.
`
`17
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 19 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`Ex. 2027, 66:59–67 (emphases added); see Ex. 2037, 39–40 (discussing
`Patent Owner’s prior arguments to construe “storage module” in IPR2014-
`00948). When defining certain terms in a section titled “General
`Terminology,” the ’551 patent repeatedly uses the phrase “when used
`herein” in combination with the phrase “refer(s) to.” See, e.g., id. at 13:56–
`15:27 (mentioning a term followed by “when used herein,” followed by
`“refers to,” followed by a definition). For example, the ’551 patent states,
`“[t]he term digital signal, when used herein, refers to a signal that changes
`between discrete states, as contrasted to a signal that is continuous.” Id. at
`15:7–9. As shown, the ’551 patent defines “digital signal” by stating “when
`used herein” followed by “refers to.” And, the same sentence also provides
`a comparison between “digital signal” and a signal that is continuous. Even
`though the passage describing “storage module” is not listed under the
`“General Terminology” section of the ’551 patent, the passage provides the
`same indications that the patentees clearly and unambiguously intended to
`define the term “storage module” by stating “as used herein” and “refer
`to”—hallmarks that the patentees were providing a lexicographic definition
`of the term. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671,
`679 (Fed. Cir. 2015) (“An applicant’s use of the phrase ‘refers to’ generally
`indicates an intention to define a term.”) (citing In re Imes, 778 F.3d 1250,
`1252–53 (Fed. Cir. 2015); Microsoft Corp. v. Int’l Trade Comm’n, 731 F.3d
`1354, 1360 (Fed. Cir. 2013); Linear Tech. Corp. v. Int’l Trade Comm’n, 566
`F.3d 1049, 1054 (Fed. Cir. 2009)). Additionally, as with the term “digital
`signal,” the above-passage provides a comparison between “storage module”
`and “holding module” and uses the definitions of the terms to compare and
`contrast them.
`
`18
`
`

`

`Case 6:21-cv-00520-ADA Document 65-1 Filed 11/22/22 Page 20 of 101
`
`IPR2021-00985
`Patent 7,292,835 B2
`
`
`“To act as its own lexicographer, a patentee must ‘clearly set forth a
`definition of the disputed claim term’ other than its plain and ordinary
`meaning.” T