UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. DR. MICHAEL FARMWALD and RPX CORPORATION Petitioner

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD DR. MICHAEL FARMWALD and RPX CORPORATION Petitioner v. PARKERVISION, INC. Patent Owner Case IPR U.S. Patent No. 6,370,371 PATENT OWNER PRELIMINARY RESPONSE Mail Stop PATENT BOARD Patent Trial and Appeal Board U.S. Patent & Trademark Office P.O. Box 1450 Alexandria, VA

2 TABLE OF CONTENTS I. Introduction... 1 A. The flawed Petition filed by Farmwald and RPX does not establish the invalidity of any claim of the 371 patent. The Board should, therefore, deny all the grounds of challenge and not institute inter partes review of the 371 patent B. Inter partes review should not be instituted because the Petition is fatally flawed The Petition fails to make out a prima facie case of anticipation and contains irreparable and substantial evidentiary gaps The Petition s challenges depend on flawed claim constructions The Petition never advances an inherency argument and, thus, the inherency doctrine cannot save its flawed challenges If trial is instituted, it should be limited to non-cumulative grounds II. The Petition raises real party-in-interest and privity issues III. The 371 Patent A. Story of the invention of the 371 Patent ParkerVision and Its History ParkerVision s Invention of Energy Sampling B. Story of the district court litigation of the 371 patent C. Claim Construction pulses and pulse generator energy is integrated during said apertures i -

3 3. storage module generated from the transferred energy IV. The Board Should Deny the Petition in Its Entirety Because Petitioner Did Not Provide Sufficient Evidence to establish a prima face case that the References Anticipate Claims 2, 22, 23, and A. Petitioner Did Not establish a prima face case that Estabrook Anticipates Claims 2, 22, 23, and Petitioner Failed to Establish that Estabrook Teaches All the Elements of Claim Petitioner Failed to Establish that Estabrook Teaches the Storage Module of Claim B. Petitioner Did Not establish a prima face case that Avitabile Anticipates Claims 2, 22 and Petitioner failed to establish that Avitabile Teaches All the Elements of the claim Petitioner Failed to Establish that Avitabile Teaches the Storage Module of Claim C. Petitioner Did Not establish a prima face case that Weisskopf Anticipates Claims 2, 22, 23, and Petitioner Failed to Establish that Weisskopf Teaches All the Elements of Claim Petitioner Failed to Establish that Weisskopf Teaches the Storage Module of Claim V. With nothing at stake for Petitioner, the Board should use its discretion to deny institution of an unnecessary and complicated trial VI. Petitioner s Proposed Challenges Relying on Weisskopf and Estabrook Are Redundant to Those Relying on Avitabile ii -

4 VII. Conclusion iii -

5 TABLE OF AUTHORITIES Cases Aventis Pharmaceuticals v. Amino Chemicals Ltd., 715 F.3d 1363 (Fed. Cir. 2013) Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011)... 5 Ethicon Endo-Surgery v. United States Surgical Corp., 93 F.3d 1572 (Fed. Cir. 1996) Gubelmann v. Gang, 408 F.2d 758 (C.C.P.A. 1969)... 5 In re Hiniker Co., 150 F.3d 1362 (Fed. Cir. 1998) In re Oelrich, 666 F.2d 578 (C.C.P.A. 1981)... 5 In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993) Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc. 381 F.3d 1111 (Fed. Cir. 2004) Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM , Paper 7 (P.T.A.B. Oct. 25, 2012)... 50, 51, 52 Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM , Paper 8 (P.T.A.B. Oct. 25, 2012)... 9, 50 Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) MEHL/Biophile Int l Corp. v. Milgraum, 192 F.3d 1362 (Fed. Cir. 1999) iv -

6 Microsoft Corp. v. Proxyconn, Inc., IPR , Paper 17 (P.T.A.B Dec. 21, 2012)... 6 Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008)... 4 Olympus Am., Inc. v. Perfect Surgical Techniques, Inc., IPR , Paper 15 (P.T.A.B., June 16, 2014) RPX Corp. v. ParkerVision, Inc., IPR , Paper 2 (P.T.A.B. July 2, 2014) RPX Corp. v. VirnetX, Inc., IPR , Paper 52 (P.T.A.B. June 23, 2014)... 11, 12 Ultratec, Inc. v. Sorenson Commc ns, Inc., IPR , Paper 23 (P.T.A.B. Jan. 10, 2014) Unilever, Inc. v. The Proctor & Gamble Co., IPR , Paper 17 (P.T.A.B. Jul. 7, 2014) Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628 (Fed. Cir. 1987)... 4 Statutes 35 U.S.C U.S.C. 102(b) U.S.C. 312(a)(3) U.S.C. 326(b) Rules 37 C.F.R (b) C.F.R (b) C.F.R (b) Fed. Reg (Aug. 14, 2012) v -

7 Other Authorities M.P.E.P M.P.E.P vi -

8 EXHIBIT LIST Exhibit DESCRIPTION 2001 Not Used 2002 Not Used from ParkerVision s counsel to Petitioner s counsel 2004 Estabrook et al., A Mixer Computer-Aided Design Tool Based in the Time Domain, IEEE MTT-S Digest, pp (1988). - vii -

9 Petitioner Farmwald and RPX Corporation s inter partes review Petition of U.S. Patent No. 6,370,371 was accorded a filing date on June 24, (Paper 3.) Accordingly, Patent Owner ParkerVision Inc. timely files this preliminary response. I. Introduction The 371 patent is a member of a large family of pioneering patents protecting groundbreaking wireless communication technologies. (See Section III.A.) The 371 is battle tested, having been involved in a recent litigation where all the claims at issue in the litigation were found to be valid. (ParkerVision, Inc. v. Qualcomm Incorporated, Case No. 3:11-cv-719-J-37TEM, M.D. Fla; hereafter the Qualcomm Litigation ). In fact, claim 2 challenged here was found to be valid in the Qualcomm Litigation. Claims 22, 23 and 25 challenged here were not in the final decision of the Qualcomm Litigation, but if they had they would also have been found valid as they depend from claim 2. It is noteworthy that claim 2 was found valid in the Qualcomm Litigation over the Weisskopf reference and a close version 1 of the Estabrook reference advanced here by Petitioner. 2 (See Section III.B.) 1 Estabrook et al., A Mixer Computer-Aided Design Tool Based in the Time Domain, IEEE MTT-S Digest is provided as Ex

10 A. The flawed Petition filed by Farmwald and RPX does not establish the invalidity of any claim of the 371 patent. The Board should, therefore, deny all the grounds of challenge and not institute inter partes review of the 371 patent. The Petition proposes three grounds for challenge (Petition, p. 3): A. Challenge 1: claims 2, 22, 23, and 25 are anticipated under 35 U.S.C. 102(b) by Estabrook 3. B. Challenge 2: claims 2, 22, and 25 are anticipated under 35 U.S.C. 102(b) by Avitabile 4. C. Challenge 3: claims 2, 22, 23, and 25 are anticipated under 35 U.S.C. 102(b) by Weisskopf 5. Section IV discusses the Petition s legal and technical insufficiencies. While additional deficiencies exist and may be addressed later, if necessary, the table below summarizes the deficiencies addressed in this Preliminary Response. 2 The Avitabile reference was not involved in the Qualcomm Litigation. 3 Estabrook, The direct conversion receiver: Analysis and design of the front-end components, is submitted as Ex Avitabile is submitted as Ex Weisskopf is submitted as Ex

11 Claim 2. An apparatus, comprising: at least one universal frequency down-conversion module, including a switch, an integrator coupled to said switch, and a pulse generator coupled to said switch; and wherein said pulse generator outputs pulses to said switch at an aliasing rate that is determined according to: (a frequency of a carrier signal +/- a frequency of a lower frequency signal) divided by N; wherein said pulses have apertures and cause said switch to close and sub-sample the carrier signal over said apertures, and wherein energy is transferred from the carrier signal and integrated using said integrator during said apertures of said pulses, and wherein the lower frequency signal is generated from the transferred energy. 22. The apparatus of claim 2, wherein each of said at least one universal frequency downconversion module comprises: an energy transfer signal generator; a switch module controlled by said energy transfer signal generator; and a storage module coupled to said switch module. Challenge 1 (Estabrook) X X X Indicates Insufficiency Challenge 2 (Avitabile) Challenge 3 (Weisskopf) X X X X X X X - 3 -

12 B. Inter partes review should not be instituted because the Petition is fatally flawed The Board should not institute inter partes review because the Petition is replete with statutory deficiencies and evidentiary gaps. These deficiencies are summarized below. 1. The Petition fails to make out a prima facie case of anticipation and contains irreparable and substantial evidentiary gaps The Petition advances only anticipation challenges, and the requirements for anticipation are high and strict. A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. M.P.E.P (quoting Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987)). Consistent with Patent Office guidance, the Court of Appeals for the Federal Circuit has explained that the hallmark of anticipation is prior invention and the prior art reference in order to anticipate under 35 U.S.C. 102 must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (emphasis added). To demonstrate that a claimed feature is inherent, the Petition must establish that the prior art necessarily functions in accordance with, or includes, the - 4 -

13 claimed limitations. MEHL/Biophile Int l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (emphasis added). If the feature is not inevitably present [as] the natural result flowing from the operation [of the prior art] as taught, then it is not inherent. In re Oelrich, 666 F.2d 578, (C.C.P.A. 1981). Furthermore, [w]here support must be based on an inherent disclosure, it is not sufficient that a person following the disclosure might obtain the result set forth in the [claim]; it must invariably happen. Gubelmann v. Gang, 408 F.2d 758, 766 (C.C.P.A. 1969) (emphasis added). Nor can mere speculation serve as a substitute for factual support since the speculative notion that by happenstance the [prior art feature] might, under hypothetical circumstances, be capable of operating as [claimed] is an insufficient basis for inherency. Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 640 (Fed. Cir. 2011) (emphasis added). As discussed in detail in the sections below, the Petition does not establish a prima face case that the prior art expressly or inherently teaches every element of the challenged claims. Moreover, it appears Petitioner decided to pick and choose what limitations to even discuss since its prima facie case ignores explicitly recited claim elements of a number of claims. For example, the Petition does not provide persuasive evidence that the prior art references expressly or inherently teach wherein energy is integrated using said integrator during said apertures of said pulses of claim 2. This limitation is - 5 -

14 directed to plural apertures meaning energy is integrated over multiple IPR apertures. The Petition ignores this key limitation and does not even attempt to argue the prior art teaches integrating energy over multiple apertures. As another example, the Petition does not meet the minimum threshold showing with evidence that Estabrook expressly or inherently teaches outputs pulses as required by claim 2. The Petition focuses only on duration of a control signal (Petition, pp. 15 and 42) but in doing so the Petition addresses at most the apertures. Nowhere does the Petition put forth an argument that Estabrook expressly or inherently teaches outputs pulses. 2. The Petition s challenges depend on flawed claim constructions As discussed in detail in the sections below, inter partes review should not be instituted because the Petition s arguments for unpatentability depend upon erroneous and unreasonable claim interpretations. This was the case in IPR , where the Board rejected Petitioner's proposed claim interpretation and denied the proposed grounds, holding that [a]s this argument is premised on Petitioner s erroneous claim construction we are not persuaded of a reasonable likelihood of prevailing. Microsoft Corp. v. Proxyconn, Inc., IPR , Paper 17, p. 24 (P.T.A.B Dec. 21, 2012) (emphasis added)

15 The Board should reach the same result here, as Petitioner s claim constructions are confusing, ambiguous and not supported by the specification. For example, the Petition proposes a construction of pulse generator of claim 2 as an apparatus for generating a control signal of any duration. (Petition, p. 15.) The Petition s construction is nonsensical and unreasonable on its face because any duration would encompass a control signal of no duration and infinite duration, both of which are contrary to the teachings of the specification. The Petition s argument for this construction also makes no sense, as it appears to argue any duration is meant to define a pulse (id.), yet its proposed construction clearly seeks to use any duration to define control signal. Accordingly, the Petition s construction of pulse generator is unreasonable and deficient because it is nonsensical, confusing and ambiguous. As another example, the Petition construes storage module of claim 22 as an apparatus that stores energy transferred during a non-negligible aperture. (Petition, p. 32.) The Petition then further narrows this term, construing nonnegligible by importing the limitations of claim 98 from U.S. Patent No. 6,061,551. In particular, the Petition states the broadest reasonable interpretation of non-negligible in this context is objectively defined by dependent claim 98 of the 551 patent, which establishes that apertures of one tenth of one percent of approximate half cycles of the carrier signal are necessarily non-negligible. (Id.) - 7 -

16 This construction is clearly flawed. Inclusion of during a non-negligible aperture improperly imports limitations from the specification. The Petition s flawed claim constructions undermine its anticipation challenges that rely on those constructions since any application of art to an incorrectly constructed claim cannot be a proper anticipation analysis. Therefore, inter partes review should not be instituted for any of the challenged claims as the Petition s flawed constructions of pulse generator in claim 2 and storage module in claim 22 (as well as other flawed constructions discussed below) defeat all of its challenges. 3. The Petition never advances an inherency argument and, thus, the inherency doctrine cannot save its flawed challenges 35 U.S.C. 312(a)(3) provides [a] petition may be considered only if the petition identifies, in writing and with particularity, each claim challenged [and] the grounds on which the challenge to each claim is based. Here the Petition advances anticipation challenges based only on the expressed teachings of the prior art references. Nowhere does the Petition clearly and with any particularity articulate any inherency arguments. When the Petition advances a position that might be interpreted as an inherency argument, the Petition does not satisfy the strict requirements of the inherency doctrine

17 Neither the Board nor Patent Owner should have to speculate when and where Petitioner meant to rely on the inherency doctrine. Since Petitioner never clearly articulates an inherency argument, the Board should not attempt to salvage the Petition s flawed challenges using the inherency doctrine. As stated by the Board, It would be unfair to expect the Patent Owner to conjure up arguments against its own patent and just as inappropriate for the Board to take the side of the Petitioner to salvage an inadequately expressed ground. Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM , Paper 8, p. 14 (P.T.A.B. Oct. 25, 2012). When the Petition advances a position that might be interpreted as an inherency argument, the Petition does not satisfy the strict requirements of the inherency doctrine. For example, when mapping Weisskopf (as well as Avitabile and Estabrook) to the term storage module of claim 22, the Petition refers to Dr. Abidi s Noise Figure calculations. (Petition, p. 57 referencing Ex ) But nowhere does the Petition or Dr. Abidi argue or provide evidence that Weisskopf necessarily functions according to Dr. Abidi s calculations. Thus, not only does the Petition never articulate an inherency argument, the Petition also never satisfies 6 Abidi Declaration is submitted as Ex

18 the strict requirements of the inherency doctrine, as discussed in detail in the sections below. 4. If trial is instituted, it should be limited to non-cumulative grounds Grounds A (Estabrook) and C (Weisskopf) are redundant to Ground B (Avitabile). Claim 2 was already found valid over a close version of Estabrook (Ground A) and Weisskopf (Ground C) in the Qualcomm litigation (see above as well as Section III.B). Accordingly, if trial is instituted, Grounds A and C should be denied as cumulative, taking into account the burden on the Patent Owner and considerations set forth in 35 U.S.C. 326(b). II. The Petition raises real party-in-interest and privity issues ParkerVision sued Qualcomm for infringement of the 371 patent in 2011 (the Qualcomm Litigation). As a result, Qualcomm is barred from filing an inter partes review under 37 C.F.R (b). Because the claims in the Qualcomm litigation (which included claim 2 at issue here) were upheld as valid, Qualcomm has great motivation to participate or orchestrate the challenge to the 371 patent in this proceeding. Patent Owner has good reason to believe Qualcomm is in fact substantively involved in the Petition and is therefore a real party-in-interest. The Petition states only that Qualcomm is not a current client of RPX Corporation (Petition, n. 1,

19 emphasis added), which is an admission that Qualcomm is a former client of RPX. Petitioner RPX and Farmwald carefully chose their words in describing Qualcomm s relationship to the Petition, rather than a more straightforward and definitive statement. RPX s business model includes attacking patents in inter partes review petitions on behalf of its clients. See, e.g., RPX Corp. v. VirnetX, Inc., IPR , Paper 52, pp (P.T.A.B. June 23, 2014) and related exhibits in that proceeding. The Board recently found that RPX [was] acting as a proxy for a third party when it improperly filed a petition in several IPRs where it was at most, a nominal plaintiff with no substantial interest in the proceedings, and the third party on whose behalf RPX filed the IPR was time-barred from filing the petitions itself. Id. By filing inter partes reviews on behalf of other parties without naming those other parties, RPX clients avoid the estoppel associated with filing IPRs and may even seek institution of otherwise time-barred IPR proceedings. It is also noteworthy that Petitioner s counsel, Mr. James Bailey, has been and continues to be counsel for Qualcomm in the Qualcomm Litigation. By serving as counsel for Petitioner, he exerts significant control over this proceeding and continues to advance Qualcomm s interests. By sharing Mr. Bailey with Petitioner in the IPRs, Qualcomm has at least implicitly authorized RPX to represent [Qualcomm] in the instant proceedings, which the Board has found to weigh in

20 favor of finding the authorizing party to be an RPI. RPX Corp., IPR , Paper 52 at 8-9. ParkerVision is not asking the Board at this time for a ruling on the merits of the RPI and privity issues. ParkerVision has met and conferred with Petitioner to further investigate the connections between Petitioner and Qualcomm as they relate to RPI and privity issues. (See Ex ) And while Petitioner has provided declarations containing some information regarding the RPI and privity issues, if a trial is instituted, ParkerVision intends to depose the declarants and to seek further discovery on these issues so that the merits of these matters can be fairly resolved after they have been properly aired and briefed. III. The 371 Patent A. Story of the invention of the 371 Patent 1. ParkerVision and Its History ParkerVision, headquartered in Jacksonville, Florida, was founded in 1989 by Jeff Parker and David Sorrells. Messrs. Parker and Sorrells first met while working at Parker Electronics, which was a company founded by Jeff Parker. Parker Electronics grew into a $100 million company that was eventually acquired 7 of August 13, 2014 from ParkerVision s counsel to Petitioner s counsel is submitted as Ex

21 by Carrier Air Conditioning. After the sale of Parker Electronics, Mr. Parker and Mr. Sorrells started a new company, ParkerVision, for a new product that would be called CameraMan. Mr. Parker conceived of CameraMan when, after his father passed away, he found a cache of old home movies. After viewing them, he was saddened that his father was always behind the camera and never in the picture. Thus, Messrs. Parker and Sorrells designed CameraMan, a radio-controlled video camera that automatically tracks a person holding a device (such as a microphone). Using this technology, the person controlling the camera can also participate in the events being filmed. CameraMan was a success. It generated about $100 million in revenue, was widely adopted, including by ABC World News Tonight and NASA, and won an Emmy award. CameraMan originally targeted the professional market and carried a price tag of up to $10,000; but, consistent with his inspiration for inventing it, Mr. Parker wanted to design a consumer version that would sell for under $300. In addition to being less expensive, the consumer model also had to be smaller and consume less power (to run on batteries). Mr. Parker asked Mr. Sorrells to solve these design challenges, which led to the invention that is the subject of the patents at issue

22 2. ParkerVision s Invention of Energy Sampling Mr. Sorrells soon discovered that the biggest obstacle to the consumermodel CameraMan was its radio receiver. Radio signals (called carrier signals ) carry information (called baseband signals ). A receiver strips out the baseband signals from the carrier signal so that the device to which the receiver is attached can use the baseband signals (e.g., to control the CameraMan). Conventional radio receivers were either too large, too inefficient, or lacked the range needed to make a consumer-model CameraMan feasible. Mr. Sorrells considered using prior-art direct-conversion receivers because they were smaller, but their performance was unacceptable. A prior-art receiver technology that Mr. Sorrells investigated was called voltage sampling. Mr. Sorrells liked the simplicity, size, and efficiency of the voltage-sampling circuit, but it performed poorly in down-conversion circuitry. He decided to study and experiment with voltage-sampling circuits to determine why they performed so poorly. Mr. Sorrells and his team created and studied 50 to 100 prototypes. Mr. Sorrells soon discovered that a widely held belief underlying most voltage-sampling receivers was wrong. Most conventional voltage-sampling devices were designed so that brief snapshots of the carrier wave s voltage were taken from a holding capacitor. A high impedance load at the output following the holding capacitor ensured that the voltage sampler was efficient in preventing

23 voltage leakage. Taking more than a brief snapshot of the carrier's voltage and lowering the load impedance, according to prevailing wisdom, would distort the incoming carrier wave and destroy the baseband carried by it. But Mr. Sorrells discovered that the exact opposite was true. Mr. Sorrells experimented with prototypes that held the switch closed for a longer time, so that more energy could be transferred into the capacitor. Mr. Sorrells decided that he would use a switch coupled to a capacitor, but his approach would close the switch for a much longer interval, use capacitors that accumulate a greater amount of energy than traditionally used in voltage sampling devices, and implement a lowimpedance load so that more energy would purposely discharge from the capacitors. He called his new approach energy sampling. Mr. Sorrells and his co-workers built two wireless receivers that were identical except that one used a conventional voltage sampler, while the other used his novel energy sampler. The working range of the conventional voltage-sampling receiver was about ten to twelve feet while the working range of his energysampling receiver was about 300 feet. ParkerVision realized that its energy sampler would revolutionize wireless receivers, such as those used in modern communications devices like mobile phones and wireless routers. Indeed, ParkerVision s energy sampler outperformed prior art voltage samplers while using less power. Wireless receivers built using

24 ParkerVision s energy samplers would have a greater range and a longer battery life than other devices. After successfully testing the early energy-sampling prototypes, Mr. Sorrells s team began implementing the idea into products. One of the earliest uses was for wireless routers. The wireless routers sold by ParkerVision s competitors had a range of about feet, while ParkerVision s routers had a range of nearly a mile. B. Story of the district court litigation of the 371 patent During the litigation, Qualcomm asserted three references at trial in its invalidity defense, including the same Weisskopf reference as asserted here and a related Estabrook reference (Ex. 2004). The portions of the Estabrook references relied on here and in the Qualcomm Litigation are nearly identical. For example, in the Qualcomm Litigation, Qualcomm relied on Figure 3 of its Estabrook reference. Here, Petitioner relies on Figure 14(a) of Estabrook. These figures are nearly identical, as shown in the side-by-side comparison, below. Figure 3 from Estabrook reference used in the Qualcomm Litigation Figure 14(a) from Estabrook reference used in the Petition

25 Qualcomm asserted Weisskopf and the related Estabrook reference against claims 2, 22, 23, and 25 of the 371 patent. After hearing Qualcomm s expert and considering all the evidence, an eight person jury found the claims not invalid. The eight-person jury was highly-educated and included an engineer with a master degree in electrical engineering, a computer scientist, a commercial litigator, a college nursing instructor, and a teacher. On May 2, 2014, the judge upheld the validity verdict after considering two Qualcomm JMOL motions challenging the jury s verdict. C. Claim Construction In an inter partes review, claim terms in an unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R (b); Office Patent Trial Practice Guide, 77 Fed. Reg , (Aug. 14, 2012). Under that standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Under the broadest reasonable construction, it is well-settled that limitations from a particular embodiment appearing in the written description are not to be read into the claim if

26 the plain and ordinary meaning of the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). 1. pulses and pulse generator The term pulses recited in claim 2 should be construed in accordance with its plain and ordinary meaning, and no construction of that term is required. Petitioner did not construe pulses but construed pulse generator as an apparatus for generating a control signal of any duration. (Petition, p. 15.) The Board should reject this incorrect construction for the following three reasons. First, the Petition s construction is nonsensical and unreasonable on its face because any duration would encompass a control signal of no duration and infinite duration, both of which are contrary to the teachings of the specification. FIG. 20D of the specification illustrates a control signal having pulses. Neither in this example nor elsewhere in the specification are pulses described as having no duration or infinite duration. The Petitioner s argument for this construction also makes no sense, as it appears to argue any duration is meant to define a pulse (Petition, p. 15), yet its proposed construction clearly seeks to use any duration to define control signal. Accordingly, the Petitioner s construction of pulse generator is unreasonable and deficient because it is nonsensical, confusing and ambiguous

27 Second, the Petitioner s construction is unreasonably broad, because it renders the claim term pulse superfluous by replacing it with a generic control signal of any duration. As those skilled in the art recognize, pulses have features that distinguish them from other types of control signals. For example, a pulse is a non-sinusoidal waveform that has a pulse width and a discontinuity. Yet, not all control signals (such as an unmodulated sine-wave) are non-sinusoidal waveforms with a pulse width and featuring a discontinuity. Third, none of Petitioner s evidence supports its attempt to read the term pulse out of the claim. To support its construction, Petitioner relies on three examples from the Specification (and incorporated 551 Specification) of different control signals. Yet all of these examples have pulses with apertures of varying finite widths. (Petition, p. 15.) Then, without distinguishing these examples, Petitioner asserts that the broadest reasonable interpretation of a pulse generator is an apparatus for generating a control signal of any duration. (Id., emphasis added.) However, these examples cited by Petitioner provide no support for its proposed construction. Instead, the examples support the plain and ordinary meaning that the pulse generator outputs pulses as explicitly recited in claim 2. For example, the Specification provides examples of pulses that are consistent with the plain and ordinary meaning of the term. See FIG. 20 of the 371 Specification, which depicts

28 a train of pulses (Ex , 6:16-31.) Additionally, the Specification discloses a pulse shaping module 50 (employed by an up-conversion embodiment) that modifies an unshaped input signal 501 to generate a modified input signal 302. See FIG. 5. This demonstrates that an unshaped input signal is not a pulse. The incorporated 551 Specification also provides several examples of pulse generators. See FIGS. 29H-29J (pulse generators 2940 and 2950), 32B-C (pulse generator 3210, which is provided with a frequency input from voltage controlled oscillator 3208) (Ex , 62:32-37), 68H-J (aperture generators that generate non-negligible aperture pulses 6826) (id. at 100:38-46), 69, 71, 72A, 85A, and 85C. 2. energy is integrated during said apertures Petitioner proposes to construe energy is integrated of claim 2 to mean energy is accumulated. (Petition, p. 19.) Patent Owner agrees energy is accumulated reflects the plain and ordinary meaning of energy is integrated. Patent Owner notes, however, that claim 2 recites energy is integrated during said apertures of said pulses. Thus, Patent Owner wishes to clarify that 8 The 371 patent is submitted as Ex The 551 patent is submitted as Ex

29 accumulating in the context of claim 2 means energy is accumulated over multiple aperture periods. Thus, energy is integrated during said apertures as recited in claim 2 should be construed as energy is accumulated over multiple aperture periods. 3. storage module The term a storage module of claim 2 should be construed to mean an apparatus that stores non-negligible amounts of energy from the carrier signal. The Specification provides an explicit definition that supports this construction. Further, non-negligible amounts of energy should be construed to mean energy in amounts that are distinguishable from noise. This construction is consistent with the Specification and the District Court s claim construction. The incorporated 551 Specification explicitly defines a storage module and draws the distinction between storage modules and holding modules: FIG. 82A illustrates an exemplary energy transfer system 8202 for down-converting an input EM signal The energy transfer system 8202 includes a switching module 8206 and a storage module illustrated as a storage capacitance 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

30 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. (Ex. 1001, 66:55-67, emphasis added.) Further, the incorporated 551 Specification describes non-negligible energy at several points. For instance, in its discussion of down-converting by transferring energy, the Specification explains: In accordance with an aspect of the invention, methods and systems are disclosed below for down-converting EM signals by transferring non-negligible amounts of energy from the EM signals. The resultant down-converted signals have sufficient energy to allow the down-converted signals to be distinguishable from noise. The resultant down-converted signals also have sufficient energy to drive lower impedance circuits without buffering. (Ex. 1001, 63:27-34, emphasis added.) The Specification continues by explaining that [t]he non-negligible transferred energy significantly improves the signal to noise ratio and sensitivity to very small signals, as well as permitting the downconverted signal to drive lower impedance loads unassisted. (Id. at 66:44-47,

31 emphasis added). Thus, the Specification again defines non-negligible amounts of energy with respect to noise. Accordingly, the Specification supports Patent Owner s construction that a storage module means an apparatus that stores non-negligible amounts of energy from the carrier signal, and non-negligible amounts of energy means energy in amounts that are distinguishable from noise. The District Court did not construe storage module. However, the Court adopted the exact same construction that Patent Owner now advances for nonnegligible amounts of energy. (See Ex , p. 13.) In adopting this claim construction, the Court relied on the descriptions of non-negligible energy from the Specification of the 551 patent and eschewed reliance on other sources, such as statements made during the original prosecution and extrinsic evidence from the prosecution of a European application. (Id. at ) Accordingly, the Court applied the same analytical framework as applicable in this proceeding. (See id. at 13.) The Petition attempts to construe storage module to mean an apparatus that stores energy transferred during a non-negligible aperture. (Petition, p. 32.) 10 Claim Construction Order from the Qualcomm Litigation is submitted as Ex

32 Petitioner s construction is narrowly limited to only one of a number of embodiments disclosed in the Specification. Thus, Petitioner s construction is unreasonable as violating the broadest reasonable interpretation standard. Petitioner supports its position by referring to the incorporated 551 specification and alleging the transfer of either negligible or non-negligible amounts of energy is consistently described as being a direct and proximate result of using either a negligible or non-negligible sampling aperture. (Petition, p. 31.) Petitioner is not correct. The 551 Specification makes it clear a nonnegligible aperture by itself may not result in non-negligible energy; other factors must be considered. For example, the 551 Specification discloses the energy transfer system may include a storage module necessary to store non-negligible amounts of energy from an input EM signal. (Ex. 1001, 66:55-67.) Additionally, the energy transfer system may employ impedance matching circuits [that] can be implemented to further improve energy transfer and thus overall efficiency. (Id. at 66:42-44.) The 551 patent further discusses the importance of the load that is coupled to the energy transfer system. (Id. at 67:31-47.) Specifically, the Specification explains that [a]nother benefit of the energy transfer system 8202 is that the non-negligible amounts of transferred energy permit the energy transfer system 8202 to effectively drive loads that would otherwise be classified as low impedance loads in under-sampling systems and conventional sampling systems

33 (Id.) Thus, it is clear from the Specification that whether or not non-negligible energy is transferred depends on a number of factors in addition to aperture size, including the capacitor, impedance matching circuits, and the load. (See, e.g., id. at 66:34-67.) Accordingly, Petitioner s construction is flawed because it focuses on just one of a number of elements relevant to achieving non-negligible energy transfer. According to Petitioner s flawed logic, its construction could alternatively be sampling using impedance matching or sampling using a storage device, because those factors also affect energy transfer. But those constructions are also flawed, because they focus on only one of a number of elements that influence non-negligible energy transfer. Petitioner attempts to support its claim construction by relying on the subject matter recited by dependent claim 98 of the 551 patent. (Petition, p. 14.) This position is unreasonable on its face. Petitioner s attempt to define non-negligible by reference to a claim from a different patent appears to be an awkward attempt to read limitations from a dependent claim into an independent claim, and this is clearly improper. A basic tenet of claim construction is that independent claims should not be interpreted to be limited to specific embodiments recited by dependent claims. Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc

34 381 F.3d 1111, (Fed. Cir. 2004); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004). 4. generated from the transferred energy The term the lower frequency signal is generated from the transferred energy of claim 2 should be construed to mean the lower frequency signal is created based on a discharge of the transferred energy from the integrator. 11 This construction is supported by the Specification which teaches opening and closing a switch to charge and then discharge the transferred energy from the integrator. (Ex. 1003, 5:65-6:7.) FIG. 20E shows how this charging and discharging form the down-converted signal The Court did not construe this term in the Qualcomm Litigation. (See Ex. 1008, p. 40.) The Court s comments regarding generating in claim 1 of the 551 patent have little relevance here because that claim, unlike claim 2 of the 371 patent, does not recite all three terms generated, transferred, and integrated. Also, the Federal Circuit has held that the same claim term can have different constructions depending upon the context of how the term is used within the claims and specification. Aventis Pharmaceuticals v. Amino Chemicals Ltd., 715 F.3d 1363, 1374 (Fed. Cir. 2013)

35 The rises in FIG. 20E correspond to when the switch is closed and the integrator charges. The dips in FIG. 20E correspond to when the switch is open and the integrator discharges. From this figure, itt is clear that the charging and discharging is what forms the down-converted output signal. 12 The incorporated 551 Specification provides furtherr evidence that discharging generates the lower frequency signal. For example, FIG. 60E of the 551 patent illustrates that a storage device accumulates energy (as depicted in the portion of the signal 6010A) and discharges the accumulated energy (as depicted 12 2 Petitioner agrees. In an inter partes review petition for a related ParkerVision patent, Petitioner concedes [t]he 551 patentt describess controlling a charging and discharging cycle of the storage capacitor 8208 using switch (Ex FIGS. 82B, 83C-E, 85:40-58, FIG. 57E.) RPX Corp. v. ParkerVision, Inc., IPR , Paper 2, p. 34 (P.T.A.B. July 2, 2014)

36 in the portion of the signal 6010B). (Ex. 1001, 89:41-51.) Thus, the discharging generates the lower frequency signal. Patent Owner s construction is proper because it recognizes and gives weight to the different terms generated, transferred, and integrated, all explicitly recited in claim 2. Canons of claim interpretation require different terms to have different meanings. See, e.g., Ethicon Endo-Surgery v. United States Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996) (holding that two different terms in the same claim are not synonyms). In claim 2, the transferred energy finds antecedent in the earlier-recited energy transferred from the carrier signal and integrated using said integrator. Thus, the lower frequency signal is generated using the energy discharged from the integrator. Accordingly, this construction distinguishes the meaning of generated from transferred and integrated. Accordingly, the term the lower frequency signal is generated from the transferred energy should mean the lower frequency signal is created based on a discharge of the transferred energy from the integrator. a) Petitioner s arguments against Patent Owner s construction are flawed Petitioner argues there is nothing in the claim language of claim 2 that requires discharge of the integrator. (Petition, p. 21.) But this argument is flawed

37 because it does not give weight to the recitations of transferred, integrated, and generated. To support its argument, the Petition relies on 31 and 41 and Fig. 5.2 of Dr. Abidi s declaration. (Ex ) However, these portions are directed to describing the physics of conventional sample and hold circuits not the claimed invention that recites generated in addition to transferred and integrated. According to Dr. Abidi, in a sample-and-hold circuit, leakage brings no benefit and is to be avoided to the degree possible. (Ex ) Dr. Abidi further concludes that in conventional circuits, Discharging the capacitor plays no role in generating the downconverted signal. (Id. at 41.) But, claim 2 is not directed to a conventional sample and hold circuit. Instead, claim 2 requires wherein the lower frequency signal is generated from the transferred energy. Dr. Abidi s analysis is thus flawed because he does not take into consideration all of the required elements of claim 2. Petitioner argues that the construction the lower frequency signal is created based on a discharge of the transferred energy from the integrator is not supported by the Specification. To support its allegation, Petitioner cites embodiments disclosed in the 551 Specification where energy is not discharged from a storage device

38 Petitioner is wrong. Once again, Petitioner fails to recognize and give weight to the recited generated, instead limiting its focus to only transferred and integrated. Petitioner s flawed argument appears to arise from its inability to distinguish between the claimed invention and various embodiments disclosed in the Specification. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) ( [T]he name of the game is the claim. ). See also M.P.E.P. 800 (detailing USPTO procedure for handling multiple inventions in a single application). Petitioner also argues Patent Owner s construction attempts to exclude any circumstance when the downconverted signal manifests as a voltage across a storage device such as a capacitor, which is inconsistent with every single embodiment in the specification. (Petition, p. 26.) Petitioner s argument is flawed because it again focuses on embodiments disclosed in the specification instead of the particular transferred/integrated/generated embodiment recited in claim 2. b) Petitioner s proposed construction is unreasonably broad and not supported by the specification Petitioner attempts to construe wherein the lower frequency signal is generated from the transferred energy to mean the lower frequency signal being generated using the transferred energy in some way. (Petition, p. 20.) This interpretation is unreasonably broad for two reasons. First, this interpretation effectively reads the generated recitation out of claim 2 by rendering it

39 synonymous with integrating. Second, this interpretation allows the lower frequency signal to be generated using the transferred energy in any manner, which reaches far beyond what is disclosed in the Specification. IV. The Board Should Deny the Petition in Its Entirety Because Petitioner Did Not Provide Sufficient Evidence to establish a prima face case that the References Anticipate Claims 2, 22, 23, and 25 A. Petitioner Did Not establish a prima face case that Estabrook Anticipates Claims 2, 22, 23, and Petitioner Failed to Establish that Estabrook Teaches All the Elements of Claim 2 a) Petitioner Failed to Establish that Estabrook teaches wherein said pulse generator outputs pulses to said switch at an aliasing rate of claim 2 The Petition fails to address the outputs pulses recitation of claim 2. Instead, the Petition construes a pulse generator as an apparatus for generating a control signal of any duration, and then focuses on showing that Estabrook teaches an arbitrary control signal. But, nowhere does the Petition put forth an argument that Estabrook expressly or inherently teaches outputs pulses as explicitly required by claim 2. The Petition does not put forth this argument because it cannot. Estabrook does not teach wherein said pulse generator outputs pulses to said switch at an aliasing rate. Petitioner equates the local oscillator ( LO ) and diode of Estabrook s FIG. 14(a) with the pulse generator and switch of claim 2,

40 respectively. (Petition, pp ) However, Estabrook s LO does not output pulses. Instead, Estabrook s LO outputs a sine wave. (Ex. 1022, p. 91.) In particular, Estabrook states: The switch is driven between zero and infinite resistance by a periodically varying waveform at the LO frequency. Thinking of the switch as a multiplier, the input waveform is multiplied by (+ 1,0) as the switch flips from closed to open. The LO and RF waveforms are shown in Fig. 21(b) along with the output waveform, I L (t), and its averaged value, <I L (t)>. (Id., emphasis added; see also FIG. 21(b).)

41 As discussed above, a pulse is a non-sinusoidal waveform thatt has a pulse width and a discontinuity. But, Estabrook s periodic waveform lacks these features (as is the case with all sine waves). Estabrook s periodic waveform is both continuous and sinusoidal, unlike a pulse. Estabrook s periodic waveform lacks pulse widths and has both positive and negative amplitudes, unlike pulses. Thus, Estabrook s LO does not output pulses. Accordingly y, Estabrook does not disclose wherein said pulse generator outputs pulses to said switch at an aliasing rate

42 b) Petitioner Failed to establish that Estabrook teaches pulses have aperturess and cause said switch to close and sub-sample the carrier signal of claim 2 Estabrook does not disclose thatt the pulses have apertures and cause said switch to close and sub-sample the carrier signal, as recited in claim 2. Petitioner equates the diode of Estabrook s FIG. 14(a) (reproduced below) with the recited switch and the IRF signal with the recited carrier signal, and argues the ILO signal 13 causes the diode to close and sub-sample e the IRF signal. Petitioner is wrong for a number of reasons. First, Petitioner has not shown that the diode sub-samples the carrier signal, as the claim requires. Petitioner alleges the carrier signal is the signal labeled 13 3 The Petition specifies the ILO signal is the controll signal that controls the diode: Estabrook also describes using an aperture duration or ON TIME approximately equal to ½ the period of the control signal, LO, in order to maximize the transfer of current from the RF input. (Petition, p. 42; emphasis added.)

43 IRF. But the Petitioner never establishes that the diode sub-samples the IRF signal. Instead, the diode operates on a combined signal composed of the Ibias signal, the ILO signal, signals generated across resister R s and the inductor L S and capacitor C S combination, as well as the IRF signal. Nowhere does the petition argue or provide evidence that operating on this combined signal is the same as "sub-sample the carrier signal" as recited in claim 1. Not only does the Petition fail to provide any analysis of the complexity of circuit elements and signals preceding the diode, it does not even acknowledge their presence. The Petition also provides no expert testimony to support its conclusion the diode receives and sub-samples the IRF signal. Second, claim 2 explicitly recites a switch. A switch opens and closes, and claim 2 explicitly recites pulses have apertures and cause said switch to close and sub-sample the carrier signal. A diode is not a switch. A diode does not open and close. The Petition argues [u]sing a diode as a switch is explicitly described in both the 371 patent and the incorporated-by-reference 551 patent, but in doing so the Petition is improperly arguing the specification and not the claim. Thus, Estabrook s diode does not anticipate pulses have apertures and cause said switch to close and sub-sample the carrier signal as required by claim 2. For the above reasons, the petition fails to establish a prima facie case that Estabrook anticipates pulses have apertures and cause said switch to close and