NO: 433133US IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD DR. MICHAEL FARMWALD and RPX CORPORATION Petitioners, v. PARKERVISION, INC., Patent Owner. Patent U.S. 6,266,518 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,266,518 UNDER 35 U.S.C. 312 AND 37 C.F.R. 42.104 Mail Stop PATENT BOARD Patent Trial and Appeal Board US Patent and Trademark Office PO Box 1450 Alexandria, Virginia 22313-1450
TABLE OF CONTENTS Page I. MANDATORY NOTICES... 1 II. CERTIFICATION OF GROUNDS FOR STANDING... 2 III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED... 2 A. Prior Art Patents and Printed Publications... 2 B. Grounds for Challenge... 3 IV. OVERVIEW OF THE '518 PATENT... 4 V. CLAIM INTERPRETATION... 8 VI. LEVEL OF ORDINARY SKILL IN THE ART... 28 VII. STATEMENT OF MATERIAL FACTS... 28 VIII. IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE... 34 A. Claims 1, 27, 82, 90, and 91 are Anticipated by Estabrook under 35 U.S.C. 102(b)... 34 B. Claims 1, 27, and 82 are Anticipated by Avitabile under 35 U.S.C. 102(b) as are claims 90 and 91 under patentee s claim interpretation... 43 C. Claims 1, 27, 82, 90, and 91 are Anticipated by Weisskopf under 35 U.S.C. 102(b)... 50 IX. CONCLUSION... 60 i
Table of Authorities Cases Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354 (Fed. Cir. 1998)... 55 ClearValue v. Pearl River Polymers, 668 F.3d 1340 (Fed. Cir. 2012)... 55 Creo Products, Inc. v. Presstek, Inc., 305 F.3d 1337 (Fed. Cir. 2002)... 26 Davis v. Wakelee, 156 U.S. 680 (1895)... 9 In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995)... 29 Kara Tech. Inc., v. Stamps.com Inc., 582 F.3d 1341 (Fed. Cir. 2009)... 11, 12 Micro Chemical, Inc. v. Great Plain Chemical Co., 194 F.3d 1250 (Fed. Cir. 1999)... 21 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)... 11, 12, 21 Seattle Box Company, Inc. v.industrial Crating and Packaging, Inc., et al., 731 F.2d 818 (Fed. Cir. 1984)... 26 Wang Labs, Inc. v. Applied Computer Sciences, Inc., 958 F.2d 355 (Fed. Cir. 1992)... 8 Statutes 35 U.S.C. 102(b)... passim 35 U.S.C. 112(6)... 21 37 C.F.R. 42.100(b)... 8 37 C.F.R. 42.22... 28 Rules 42.22(a)(1)... 2 42.104 (b)(1)-(2)... 2 42.104(a)... 2 42.104(b)(4)-(5)... 35 ii
I. MANDATORY NOTICES Real Parties-in-Interest: RPX Corporation and Dr. Michael Farmwald (hereinafter collectively referred to as Petitioners ). Related Matters: The following matters would affect or be affected by a decision in this proceeding: ParkerVision, Inc. v. Qualcomm, Inc., Case No. 3:11- cv-719-j-37tem (M.D. Fla.) (hereinafter the Qualcomm litigation ). 1 Lead and Back-Up Counsel: Petitioners provide the following designation of counsel: Lead counsel is W. Todd Baker (Reg. No. 45,265) and back-up counsel is James T. Bailey (Reg. No. 44,518). Service Information: Pursuant to 37 C.F.R. 42.8(b)(4), papers concerning this matter should be served on the following. Petitioners consent to electronic service. Address: W. Todd Baker Oblon Spivak 1940 Duke Street 1 Qualcomm is not a current client of RPX Corporation. All docket items referenced herein and included as Exhibits were retrieved from patentee's publicly accessible website at www.http://www.parkervision.com/public_relations/patent_litigation.php. The redacted transcript of the trial in that action was purchased directly from the official court reporter, Amie First. 1
Alexandria, VA 22314 Email: cpdocketbaker@oblon.com and jtb@jtbaileylaw.com Telephone: (703) 412-6383 (Baker) (917) 626-1356 (Bailey) Fax: (703) 413-2220 II. CERTIFICATION OF GROUNDS FOR STANDING Petitioners certify pursuant to Rule 42.104(a) that the patent for which review is sought is available for inter partes review and that Petitioners are not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in this Petition. III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED Pursuant to Rules 42.22(a)(1) and 42.104 (b)(1)-(2), Petitioners challenge claims 1, 27, 82, 90, and 91 of U.S. Patent No. 6,266,518 (Ex. 1002, the 518 patent ). A. Prior Art Patents and Printed Publications Petitioners rely upon the following patents and printed publications, none of which was considered during the original prosecution of the '518 patent: Exhibit 1022 Polly Estabrook, The direct conversion receiver: Analysis and design of the front-end components, (Ph.D diss., Stanford University, 1989). ( Estabrook ); Exhibit 1024 - G. Avitabile et al, S-band digital downconverter for radar applications based on a GaAs MMIC fast sample-and-hold, IEE Proc. On 2
Circuits, Devices and Systems, Vol. 143, No. 6, pp. 337-42 (1996). ( Avitabile ); and Exhibit 1023 P.A. Weisskopf, Subharmonic Sampling of Microwave Signal Processing Requirements, Microwave Journal, May 1992, pp. 239-47. ( Weisskopf ) Estabrook, Avitabile, and Weisskopf are all available as 35 U.S.C. 102(b) art against the 518 patent. B. Grounds for Challenge Petitioners request cancelation of the challenged claims under the following statutory grounds: A. Claims 1, 27, 82, 90, and 91 are anticipated under 35 U.S.C. 102(b) by Estabrook. B. Claims 1, 27, and 82 are anticipated under 35 U.S.C. 102(b) by Avitabile as are claims 90 and 91 under patentee s claim interpretation. C. Claims 1, 27, 82, 90, and 91 are anticipated under 35 U.S.C. 102(b) by Weisskopf. Section VIII below demonstrates, for each of the statutory grounds, that there is a reasonable likelihood that Petitioners will prevail with respect to at least one of the challenged claims. See 35 U.S.C. 314(a). 3
IV. OVERVIEW OF THE '518 PATENT The '518 patent (a continuation of U.S. Patent No. 6,061,551) generally relates to down-conversion of a radio frequency (RF) signal to a lower frequency signal, either an intermediate frequency (IF) or directly to baseband frequency. The 518 patent specification describes down-converting by aliasing the input signal (Ex. 1002 Abstract.), which is defined as sampl[ing] at less than or equal to twice the frequency of the [input] signal. (Id. 18:19-21.) The specification describes two general approaches to aliasing, as illustrated by Figs. 78A and 82A. The two diagrams use the exact same topology, consisting of a switch, a control signal and a capacitor, which is also described generally as a holding or storage module. The specification states that virtually any known type of switch module and any known type of holding/storage module can be used. (Ex. 1002 4:61-67, FIGS. 28A-28D, 29A-29F, 7:8-9, 55:33-56:50, FIGS. 66A-66D, 99:8-54, 4
7:4-5, 68A-68F, 99:54-100:29.) However, in nearly all examples in the specification, the holding module / storage module is simply a capacitor. (Id. FIGS. 67A, 68G, 74, 76A-E, 82A-B, 95, 103.) There are only two distinctions between these embodiments. First, the under-sampling signal controlling the switch module in FIG. 78A is a pulse with a negligible duration resulting in negligible energy being transferred to the capacitor (Id. FIG. 78A; 63:19-21), whereas FIG. 82A uses a pulse with a non-negligible aperture resulting in the transfer of non-negligible energy to the capacitor. (Id. FIG. 82A; 66:34-47.) The patentee does not provide clear guidance on the dividing line between a negligible and non-negligible aperture. For example, dependent claim 98 in the parent 551 patent establishes as non-negligible an aperture that is equal in duration to at least one tenth of one percent of approximate half cycles of the carrier signal (Ex. 1001 121:24-28), whereas the specification states that [a]n example of a negligible pulse width or duration can be in the range of 1-10 psec for under-sampling a 900 MHz signal (Ex. 1002 63:3-5), which would correspond to 0.2-2% of the half period of the input carrier signal. The specification, however, clearly indicates that larger apertures such as ⅛, ¼, ½, ¾, etc. of the input carrier signal are non-negligible. (Id. 83:4-8.) The specification further describes a non-negligible aperture of 1/2 the period of the EM signal being down-converted as a preferred embodiment. 5
(Id. 104:56-59.) Second, FIG. 78A labels the capacitor as a holding capacitance, whereas FIG. 82A labels the capacitor as a storage capacitance. The only difference between a holding and storage capacitor is related to the amount of energy ultimately stored on the capacitor itself, which as described in the specification is primarily a function of the duration of the aperture during which the switch is closed and the input signal is connected to the capacitor. As described in the specification: Holding modules and holding capacitances, as used above identify systems that store negligible amounts of energy from an undersampled 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. 1002 66:18-23 (emphasis added).) The 518 patent provides only a few examples of actual capacitance values. With respect to non-negligible aperture embodiments, the 518 patent describes an 18 pf storage capacitor for use in down-converting a 900 MHz carrier signal. (Id. 66:24-49.) However, the specification notes that the particular capacitance value recited is non-limiting and [o]ther suitable capacitance values and storage modules can be used. (Id. 66:48-49.) With respect to negligible aperture systems, 6
the patent describes both a 1 pf holding capacitor and an 18 pf holding capacitor, both for use in down converting a 900 MHz carrier signal. (Id. 62:63-64:15.) While the specification describes the smaller capacitor as working better with negligible apertures, the fact that the same 18 pf capacitor is described as being either a storage capacitor or a holding capacitor based solely on the duration of the sampling aperture further informs the importance of aperture duration to these labels. (Id. 64:57-65:47) The 518 patent also describes one of the purported benefits of the nonnegligible energy transfer embodiments is that they permit the use of a low impedance load. (Ex. 1002 66:55-67:4.) However, the patent always describes the use of a low impedance load in permissive terms as opposed to a requirement. (Id.; see also id. 65;67-66:3 ( permitting the down-converted signal to drive lower impedance loads unassisted ); 67:33-37 ( As a result, the downconverted signals 8310 and 8312 can efficiently drive lower impedance loads... ) emphases added.) The specification further describes numerous embodiments with non-negligible energy transfer as using an arbitrary load impedance (Ex. 1002 73:33-37; 74:45-49; 76:20-24; 77:32-39; 79:8-15; 80:21-29; 85:1-8; 86:7-14; 87:54-61; 88:62-89:2; 94:10-13; 95:36-39), literally meaning that the load impedance can have any value. Finally, the specification describes the preferred embodiment as being a sample and hold system. (Id. FIGS. 101, 102D; 111:46-7
52; 112:25-30.) V. CLAIM INTERPRETATION The claim terms are presumed to take on their ordinary and customary meaning. This Petition shows that the challenged claims of the 518 patent are unpatentable when the challenged claims are given their broadest reasonable interpretation in light of the specification. See 37 C.F.R. 42.100(b). The parties in the Qualcomm litigation agreed on claim constructions for a small number of terms, but disputed many others. For several terms/phrases, the patentee sought and was awarded broad constructions. (See generally Ex. 1008: D.I. 243.) For the purposes of this petition, Petitioners accept many of the district court s constructions as the broadest reasonable interpretation. The patentee, having secured a favorable jury verdict based on these constructions, should be estopped from arguing that the broadest reasonable interpretation is any narrower than the constructions it sought and received. See Wang Labs, Inc. v. Applied Computer Sciences, Inc., 958 F.2d 355, 358 (Fed. Cir. 1992) ( The doctrine of judicial estoppel is the general proposition that: where a party assumes a certain position in a legal proceeding, and succeeds in maintaining that position, he may not thereafter, simply because his interests have changed, assume a contrary position. (quoting Davis v. Wakelee, 156 U.S. 680, 689 (1895))). 8
Other constructions sought by patentee and awarded by the district court are too narrow and improperly read in limitations from the specification. In addition, since the Markman ruling, patentee has improperly tried to import more limitations into one of the claim elements that is common to all of the challenged claims. 2 In particular, as described in more detail below, patentee has asserted that the generating element of independent claims 1, 82, and 90 requires discharge of energy from a storage module. (Ex. 1016: D.I. 295 at 4.) In the Qualcomm litigation, this new interpretation of the generating element appears to be the sole basis upon which patentee s experts were willing to argue the challenged claims were not invalid over the prior art. 3 As explained below, patentee s new 2 At the Markman hearing, patentee s counsel acknowledged that if a patentee, like ParkerVision, were trying to import a limitation into a claim, a rule of thumb is ParkerVision or the patentee is doing that to try to avoid some prior art. (Ex. 1009: D.I. 163 at 126-27.) 3 For example, patentee hired Peter Weisskopf, the author of Ex. 1023, to submit an expert report in the case. (Ex. 1010: D.I. 269-10.) Mr. Weisskopf provided opinions regarding, inter alia, all of the claims challenged in this petition and identified only the generating elements of independent claims 1, 82 and 90 as allegedly missing from his paper. (Id. at 2, 8-9.) Mr. Weisskopf s opinions, however, were based entirely on patentee s new claim interpretation. (Id. at 14 9
interpretation is not the broadest reasonable interpretation in light of the specification. However, even if patentee s interpretation were adopted, the challenged claims are still invalid over the prior art. The broadest reasonable interpretation in light of the specification of the claim elements, in the order they appear, is discussed below: Aliasing rate: The broadest reasonable interpretation of aliasing rate is a sampling rate that is less than or equal to twice the frequency of the carrier signal, which is an express definition in the specification (Ex. 1002 22:8-11.) and was an agreed construction in the Qualcomm litigation. (Ex. 1012: D.I. 110-1.) Transfer energy from the carrier signal: The broadest reasonable interpretation of this phrase in light of the specification is the plain and ordinary meaning, which would encompass transferring energy in any amount. ( As the claim language in the bullet list above makes clear, in the patented inventions in direct contrast to the teachings of my paper not only must energy be transferred into a hold capacitor, but energy transferred from the carrier signal into the hold capacitor must be discharged from the capacitor and used to generate the lower frequency signal or baseband. )) Mr. Weisskopf did not testify at trial. (Ex. 1011: 10/15/13 Tr. 129:3-18.) 10
However, based on patentee s suggested construction, the Court in the Qualcomm litigation construed this phrase to mean transferring energy in amounts distinguishable from noise. (Ex. 1008: D.I. 243 at 10-13.) This is the exact same construction that the Court gave to the more narrow phrase in the claims of the parent 551 patent transferring non-negligible amounts of energy from the carrier signal. (Id.) Differences among claims can... be a useful guide in understanding the meaning of particular claim terms. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). [W]hen the inventor[s] wanted to restrict the claims to require transfer of non-negligible amounts of energy, they did so explicitly. Kara Tech. Inc., v. Stamps.com Inc., 582 F.3d 1341, 1347 (Fed. Cir. 2009) (internal citation omitted). None of the challenged claims includes the modifier non-negligible amounts and the Federal Circuit has consistently stressed the importance of "avoid[ing] the danger of reading limitations from the specification into the claim." 4 Phillips 415 F.3d at 1323; see 4 If the non-negligible amounts of energy limitation were read into the claims as done by the district court, the limitation could be met by showing the down-converter works for its intended application (Ex. 1013: 10/8/13 Tr. 83:3-24 ( non-negligible amounts of energy means that you have to transfer enough energy to overcome the noise in the system to be able to meet your specifications ); see also Ex. 1015: 10/10/13 Tr. 237:25-238:16 (equating non- 11
also Kara Tech. 582 F.3d at 1348. Accordingly, the broadest reasonable interpretation in light of the specification of this element is its plain and ordinary meaning, without any limitation on the quantum of energy transferred read into the claim element. Where n represents a harmonic or sub-harmonic of the carrier signal: The Court in the Qualcomm litigation accepted patentees proposed construction and interpreted this phrase to mean n is 0.5 or an integer greater than or equal to 1. (Ex. 1008 at 16-17.) In conjunction with the specification s express definition of aliasing rate this allows the claim to cover sub-harmonic sampling, sampling at the frequency of the carrier signal (fundamental sampling), and harmonic sampling up to a rate of twice the carrier frequency. Petitioners accept this construction as the broadest reasonable interpretation for the purpose of this petition. Integrating the energy over the aperture periods/ Integrating the transferred energy over the aperture periods: In the Qualcomm litigation, the Court adopted patentee s proposed construction, which equated integrating energy with negligible energy transfer with a system that can work.), uses a non-negligible sampling aperture (Ex. 1002 62:29-31, 65:57-62), or exhibits a Noise Figure (F) in the same range or lower than the example non-negligible energy transfer embodiment in the 518 specification. (Ex. 1004 23, 34, 42-43.) 12
accumulating energy. (Ex. 1008: D.I. 243 at 17-20.) Petitioners accept this construction as the broadest reasonable interpretation for the purpose of this petition. However, to avoid confusion it is important to explain how this accumulation of energy occurs in a storage device such as a capacitor. Capacitors integrate current. As a result of the integration of current the capacitor accumulates charge. From the accumulated charge one can determine the energy that can be said to have accumulated on the capacitor. In other words, accumulating energy, is equivalent to accumulating charge, and integrating current. (Ex. 1004 39-40, 49.) (Generating the baseband signal)/(generating the second signal) from the integrated energy: Under its broadest reasonable interpretation in light of the specification, this phrase refers to generating the baseband signal using the integrated energy in some way, which is the plain meaning. During the Markman proceedings in the Qualcomm litigation, the patentee argued that this phrase be given its plain meaning and not temporally limited to the transfer of non-negligible energy step occurring before the generation of the down-converted signal using that energy. (Ex. 1008: D.I. 243 at 39.) The district court agreed with the patentee, holding that under the plain meaning the two steps could happen simultaneously. (Id. at 39-40.) 13
Later in the case, however, the patentee argued for a more restrictive interpretation of this element, arguing that the plain meaning of the generating phrase requires discharge of energy from a storage device. (Ex. 1016: D.I. 295 at 4-5; see also Ex. 1007: D.I. 269 at 11-13.) Patentee s new interpretation, which was rejected by the district (Ex. 1017: D.I. 318 at 6), finds no support in the claim language or specification and must be rejected particularly under the broadest reasonable interpretation. First, there is nothing in the claim language that would suggest, much less require, patentee s discharge of the capacitor. Indeed, as a matter of physics any discharging of the capacitor plays no role in generating the down-converted signal. As shown in Dr. Abidi s declaration, the down-converted signal exists on the capacitor regardless of whether there is any discharge. (Ex. 1004 41, Fig. 5.2.) Second, patentee s construction is based on a fundamentally flawed premise that is directly at odds with the specification. Patentee claimed that [i]n contrast to [the 518 patent], the prior art (e.g., voltage-samplers) teaches that energy is not discharged from the storage device, but rather is held constant, in order to sample the amplitude of the voltage value and create the down-converted signal. (Ex. 1007 at 12.) The patentee then describes the prior art with reference to the under sampling embodiments described in the specification, in particular the 14
output shown in FIG. 79D. (Id. ( In the prior art as explained by reference to FIG. 79D.... ) This is directly at odds with the specification, which states that FIGS. 79A-F illustrate example timing diagrams for under-sampling systems according to embodiments of the invention. (Ex. 1002 7:54-56, emphasis added.) Indeed, the under-sampling embodiments are described throughout the specification as the invention or the present invention. (See, e.g., Ex. 1002 4:1-5:52, 25:53-62:12.) As explained above, the patentee deliberately omitted the modifier requiring transfer of non-negligible amounts of energy from the claims of the 518 patent. Accordingly, the under-sampling embodiments are not merely embodiments of the invention described in the specification, they are embodiments of the claimed invention. While Petitioners agree with patentee that the undersampling embodiments are the same as well-known prior art voltage samplers, there is nothing in the claim language or the specification that would or should exclude them from the scope of the challenged claims. Third, the patentee s restrictive definition would exclude every embodiment in the patent. Patentee argued that generating a voltage differential across the poles of an energy storage device is not generating the lower frequency signal from the transferred energy as required by the Asserted Claims of the 551... 15
Patent[]. 5 In support of this argument, the patentee repeatedly refers to Figure 57E (Ex. 1007 at 11-12; Ex. 1016 at 5), arguing that the sawtooth voltage waveform of Figure 57E is evidence that the lower frequency has been generated but claiming that the voltage waveform represented by Figure 57E is not the lower frequency signal itself. (Ex. 1016 at 6.) However, patentee s argument is expressly refuted by the specification, which states FIG.57E illustrates a demodulated baseband signal 5712, which is generated by the down-conversion process. (Ex. 1002 85:1-2.) As can be seen from FIG. 57E, the entire voltage waveform is itself indicated as being the down-converted signal 5712. Indeed, elsewhere in its litigation papers patentee admitted that the specification describes that waveform as the down-converted signal itself, stating The specification of the 551 Patent describes the sawtooth-like voltage waveform of Fig. 57E as a baseband signal generated by the down-conversion process. (Ex. 1016 at 5.) 5 Each of the claims challenged in this petition were Asserted Claims in the Qualcomm litigation. (See Ex. 1007 at 1, n.1.) 16
The voltage waveform on the storage device itself is also described as the baseband signal generated by the down-conversion process with respect to a number of other similar figures in the patent. (Ex. 1002 FIG. 50E (73:33-35); FIG. 51E (74:45-47); FIG. 52E (76:20-22-63); FIG. 54E (79:8-10); FIG. 55E (80:21-23); FIG. 56C (83:35-37); FIG. 58E (86:7-9); FIG. 59E (87:54-55); FIG. 60E (88:62-63).) Indeed, one of ordinary skill in the art would have recognized that the down-converted signal manifests as a voltage across a storage device in every embodiment in the patent. (Ex. 1004 31, 41, Fig. 5.2.) Not only is the down-converted signal always a voltage across a capacitor, the specification makes clear that in both negligible and non-negligible aperture embodiments that voltage may be held, and need not be discharged. For example, Figure 101 is described as the preferred embodiment, which is the only time in 120 columns where that phrase is used. 6 (Ex. 1002 111:46-52.) The specification and figures illustrate that Figure 101 is a sample and hold arrangement, with no meaningful discharge. The specification states: When the Waveform Generator output 10204 is above a predetermined value, the RF Switch 10106 becomes a 6 Patentee s have asserted that FIG. 101 is an embodiment of many of the challenged claims. (See Ex. 1008 at 45-46 (showing the Court adopting patentee s proposed corresponding structure, including Figure 101, for the element means for generating the baseband from the integrated energy in claims 82 and 90.)) 17
high impedance node and allows the Integrator to hold the last RF signal sample 10206 until the next cycle of the Waveform Generator 10108 output. (Id. 112:25-30, emphasis added.) The holding that occurs in the preferred embodiment of Figure 101 is illustrated in Figure 102D. Accordingly, the preferred embodiment is just the type of sample and hold system that the patentee attempted to distinguish by reading in the discharge limitation during the Qualcomm litigation. 7 (See Ex. 1007 at 12.) Notably, Figs. 101 and 110, which work on the same principle, are the only embodiments in the 7 The specification goes on to describe the Integrator section of Figure 101 (10106) as being designed to charge quickly (fast attack) and discharge the Integrator at a controlled rate (slow decay). (Ex. 1002 112:30-32.) However, as illustrated in Figure 102D, the controlled rate of discharge is designed to be as close to zero as possible. 18
specification described as using an integrator or performing integration. (Ex. 1002 112:23-36, FIGS. 101, 110.) Figure 101, however, is not the only embodiment that functions as a sample and hold circuit described in the specification. For example, the down-converted output generated by the under-sampling embodiments, which patentee now characterize as prior art sample and hold circuits (Ex. 1007 at 12), is consistently described in the specification as having a stair step output, i.e., the voltage is held not discharged. (Ex. 1002 27:6-15; 31:41-48; 32:41-48; 34:1-8; 39:63-40:2; 42:38-45; 44:10-17; 44:20-26; 50:22-28; 54:28-36; 61:5-17; 63:44-61.) However, the specification just as consistently 11 times describes embodiments with nonnegligible energy transfer as potentially having a stair step output. (Id. 69:28-33; 74:1-6; 75:13-18; 76:55-60; 78:1-6; 79:43-48; 80:59-64; 85:26-31; 89:20-25; 92:31-37; 95:51-60.) In describing every one of these non-negligible energy transfer embodiments, the specification states that the choice as to whether to have a stair step output, i.e., a sample and hold circuit, or some other type of output is a design choice that depends on the application of the invention. (Id.) Transferring energy to a load during an off-time: The broadest reasonable interpretation of this phrase in light of the specification is transferring energy, in any amount, to a load during a time when the switch controlling sampling is off, or open. As discussed with respect to the transferring energy from the carrier signal 19
limitation above, it is not appropriate to import any limitation on the quantum of energy that must be transferred in this element. This is particularly true since FIGS. 101 and 110, which has a similar theory of operation, are the only embodiments in the specification that describe use of an integrator or integration as required by parent claim 1. (Id. 112:23-36, FIGS. 101, 110.) These embodiments are described as hold[ing] the sample, which would result in transfer of a minimal amount of energy to the load. (Id. 112:23-30; FIG. 102D; 114:26-30.) This dependent claim also adds additional support to the interpretation of the generating phrase above not requiring discharge of the capacitor, which is another way of saying transferring energy to a load during an off-time. See Phillips v. AWH Corp., 415 F.3d 1303, 1314-15 (Fed. Cir. 2005) ( [T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim. ). Means for sampling the carrier signal...: The broadest reasonable interpretation of the function of this element is addressed above. That function is transferring energy in either negligible amounts or non-negligible amounts and the corresponding structures are the various switching modules that effectively multiply the input signal by 1 or 0. While these switch modules need a control signal, the specification describes the circuitry for generating the control pulse as optional, (Ex. 1002 100:10-61) so it is not corresponding structure. See Micro 20
Chemical, Inc. v. Great Plain Chemical Co., 194 F.3d 1250, 1257-58 (Fed. Cir. 1999) (35 U.S.C. 112(6) does not permit incorporation of structure from the written description beyond that necessary to perform the claimed function ). Accordingly, the corresponding structure for this element under a broadest reasonable interpretation is a switch module as shown in FIGS. 28A-D, 66A-D, 78A or 82A. 8 Means for integrating the energy over the aperture periods/means for integrating the transferred energy over the aperture periods: The broadest reasonable interpretation of the function of this element is addressed above. The corresponding structure for accumulating charge during an aperture is a capacitor, either in series or in shunt to ground, as shown in FIGS. 29C, 29F, 68C, and 68F, with no associated capacitance value identified in the specification. (Ex. 1002 8 The district court in the Qualcomm litigation does not appear to have identified the corresponding structure for this element. (See Ex. 1008.) Patentee s originally proposed corresponding structure included pulse generators 68H through 68K. (Ex. 1012: D.I. 110-2 at 15.) At trial, however, the patentee only referred to FIG. 82A as corresponding structure, which includes a control signal but does not describe any means for generating it, and patentee made no mention of any structures used to generate the control pulse. (Ex. 1014: 10/9/13 Tr. 226:4-17.) 21
FIGS. 29C, 29F, 56:11-50, FIGS. 68C, 68F, 99:35-100:9.) 9 Means for generating the baseband signal from the integrated energy: The broadest reasonable interpretation of the function of this element is addressed above. The only structure required to perform this function is a switch, as shown in FIGS. 29C, 29F, 68C, 68F, and a capacitor, as shown in FIGS. 29G and 68G. (Ex. 1002 56:51-54, FIG. 29G, 100:6-9, FIG. 68G.) 10 Sub-sampling: The terms sub-sampling or sub-sample do not appear in the specification of the 518 patent, they appear only in the claims. (Ex. 1002; Ex. 1008 at 7.) The district court, nonetheless, accepted patentee s proposed construction of sub-sampling to mean sampling at an aliasing rate, i.e., at a 9 The district court in the Qualcomm litigation adopted patentee s proposed corresponding structure for this element one or more of energy storage circuitry disclosed in Figure 68C, 68F, or equivalents thereof. (Ex. 1008 at 44-45.) FIGS. 29C and 29F depict the same structure as FIGS. 68C and 68F. 10 The district court in the Qualcomm litigation adopted patentee s proposed corresponding structure for this element any arrangement of (i) one or more of the switch circuitry controlled by any one of pulse generators and (ii) one or more of the energy storage circuitry disclosed or described in Figures 63, 64A, 64B, 65, 67A, 68G, 69, 74, 76A-E, 77A-C, 82A, 82B, 86, 88, 90, 92, 94A, 95, 101, 110, or equivalents thereof. (Ex. 1008 at 45-46.) 22
rate that is less than or equal to twice the frequency of the signal being sampled. (Ex. 1008 at 6-10.) Petitioners accept this construction as the broadest reasonable interpretation for the purpose of this petition. Means for sub-sampling the first signal aperture periods to transfer energy from the first signal: The broadest reasonable interpretation of the function of this element is addressed above. The corresponding structure is the same as the means for sampling... element. 11 Means for impedance matching one of said first and said second signal: The Court in the Qualcomm litigation accepted patentee s proposed construction of the term impedance matching in this phrase to mean transferring desired power. (Ex. 1008 at 27-29.) The use of transfer desired power in patentee s construction, however, vitiates the claim s use of the word match. Impedance matching is well known to those of ordinary skill in the art and involves matching the output impedance of one circuit to the input impedance of the following circuit. (Ex. 1004 45.) Patentee s use of transfer desired power could cover whatever is desired high 11 The district court in the Qualcomm litigation does not appear to have identified the corresponding structure for this element (see Ex. 1008) and patentee s proposed corresponding structure was identical to its proposed corresponding structure for the means for sampling.... (Ex. 1012: D.I. 110-2 at 15.) 23
or low power transfer. Indeed, in applying this construction at the Qualcomm trial, patentee s witnesses discussed only the input impedance of the second circuit, with no discussion of what the output impedance of the preceding circuit was or whether there was any form of match. Patentee s expert testified that all that was needed to satisfy this element was a low impedance load. (Ex. 1015: 10/10/13 Tr. 11:5-16:6; see also Ex. 1021: D.I. 475 at 14, n. 102 (citing the same testimony as alleged evidence of output impedance matching).) The broadest reasonable interpretation in light of the specification of this element is its plain meaning to one of ordinary skill in the art, a circuit with an input impedance approximately matching the output impedance of the down-conversion circuitry. (Ex. 1004 45.) However, if patentee s interpretation is adopted the term is significantly broader. The corresponding structure should include the structures advocated by patentee during the Qualcomm litigation, including particular input and output impedance matching circuits, such as 7006 in FIG. 70 and 7006 and 7008 in FIG. 73, more general impedance matching circuits that would be known to those of skill in the art, such as 7642 in FIG. 76E, 7702 in FIG. 77A, 7714 in FIG. 77B, and 7716 in FIG. 77C 12 (Ex. 1012: D.I. 110-2 at 19), as well as the alternative structure of providing the necessary load impedance directly (Ex. 1002 105:39-12 The district court in the Qualcomm litigation does not appear to have identified the corresponding structure for this element. (See Ex. 1008.) 24
42). See Creo Products, Inc. v. Presstek, Inc., 305 F.3d 1337, 1346 (Fed. Cir. 2002) ( [P]roper application of 112 6 generally reads the claim element to embrace distinct and alternative described structures for performing the claimed function. ) Wherein said aperture periods are substantially greater than zero such accurate voltage reproduction of the first signal is prevented: Substantially greater and accurate are words of degree for which we look to the specification for a standard for measuring that degree. Seattle Box Company, Inc. v.industrial Crating and Packaging, Inc., et al.,731 F.2d 818, at 826 (Fed. Cir. 1984). The claim also does not specify where accurate voltage reproduction must be substantially prevented, however, the specification discusses distortion of the carrier voltage at a point just before the switch, which is denoted as 8214 in Figure 82A. 13 13 Patentee s expert at trial relied solely on such distortions upstream of a switch as evidence of this element. (Ex. 1015: 10/10/13 Tr. 17:2-23:8.) 25
The patent explains that there are non-negligible distortions of the input voltage at this point as a result of the transfer of non-negligible energy as shown in FIGS. 83A-B and explained in the specification: FIG. 83B illustrates the effects to the input EM signal 8302, as measured at a terminal 8214 in FIG. 82A, when non-negligible amounts of energy are transfer[ed] from it.... The nonnegligible distortions 8308 represent non-negligible amounts of transferred energy, in the form of charge that is transferred to the storage capacitance 8208 in FIG. 82. (Ex. 1002 67:12-21.) By contrast, FIGS. 80A-B show negligible distortions during negligible sampling apertures. (Ex. 1002 FIGS 80A-B, 64:20-30.) 26
As explained in Dr. Abidi s declaration, this effect occurs during each aperture when the sampling aperture, τ, is less than the charging time constant of the capacitor. (Ex. 1004 51-52.) In the embodiment described in the 518 patent as exhibiting these non-negligible distortions, the aperture is 550 ps and the charging time constant (R s C) is 900 ps. (Ex. 1002 66:24-67:37.) Accurate voltage reproduction of the carrier signal can also be prevented in steady state, after the accumulation of charge over many apertures. This is the result of the well-known aperture effect discussed in Dr. Abidi s declaration. (Ex. 1004 10-12, 53.) At the Qualcomm trial, patentee s expert testified that an aperture of ¼ of the carrier period was sufficient to prevent accurate voltage reproduction (Ex. 1015: 10/10/13 Tr. 17:2-23:8; see also Ex. 1014: 10/9/13 Tr. 244:9-16 (identifying 25 DC as meaning an aperture of 25% of the carrier period), which would result in a steady-state gain of 0.9. (Ex. 1004 eq. 4.2.) Any aperture larger than that would cause greater voltage attenuation. (Id. Fig. 4.1.) The broadest reasonable interpretation of this phrase should cover voltage attenuations resulting either from using a sampling aperture that is less than the 27
charging time constant of the capacitor or from using an aperture of 25% of the carrier period or greater. VI. LEVEL OF ORDINARY SKILL IN THE ART The level of ordinary skill in the art is evidenced by the references. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did not err in adopting the approach that the level of skill in the art was best determined by the references of record). The parties in the Qualcomm litigation appear to have generally agreed that one of ordinary skill in the art would have a Bachelor s of Science degree in Electrical Engineering and four years of experience in the wireless communications industry (Ex. 1018: D.I. 136-1 10), which is consistent with the level of skill evidenced by the cited references. VII. STATEMENT OF MATERIAL FACTS Pursuant to 37 C.F.R. 42.22, Petitioners submit the following statement of material facts: Background 1. It was known before October 21, 1998, the filing date of the parent application of the 518 patent, that the sampling frequency required to reproduce the information in a band-limited signal such as a modulated carrier signal was primarily dependent on the bandwidth of the information signal and could be substantially lower than twice the carrier frequency. (Ex. 1004 6-9.) 28
2. The impact of using finite sampling apertures, known as the aperture effect, was known to those of skill in the art before October 21, 1998. (Ex. 1004 10-12.) 3. Describing a sampling system in terms of energy adds nothing to a traditional analysis using Kirchoff s Current Law (KCL) and Kirchoff s Voltage Law (KVL) because at a lumped-circuit level KCL and KVL imply conservation of energy. (Ex. 1004 39-40.) Estabrook (Ex. 1022) 4. Estabrook describes a method and apparatus for down converting a carrier signal to a baseband signal. (See, e.g., Ex. 1022 222-25, Fig. 82(a).) 5. Estabrook describes single-ended apparatus for down-conversion including a diode switching module, a control signal (ILO) that controls when the diode switches on and off and a capacitor (C LD ). (Id. 225, Fig. 82(a).) 29
6. Estabrook states that the on-time of the diode should be approximately 50% of the period of the ILO control signal in order to minimize conversion loss. (Id. 71, paragraph below (eq. 23).) 7. Estabrook describes use of various load impedances, depending upon the type of diode used, and includes specific values of 500 Ω, 1000 Ω, and 1500 Ω. (Id. 37, Fig. 14, 82, Fig. 27(b), 189, Table 19, 227, Table 26.) 8. Estabrook provides simulation results of her down-conversion apparatus exhibiting a sawtooth voltage waveform resulting from the capacitor charging when the diode is on and discharging and transferring energy to the load when the diode is off. (Id. 48, Fig. 16(a).) 9. Estabrook describes the use of input impedance matching circuits and output impedance matching circuits with down-conversion circuitry. (Ex. 1022 34-36, Fig. 13.) 30
10. Estabrook describes use of a phasing circuit designed to match the impedance of the RF input. (Id. 168-69, Fig. 54.) 11. Estabrook describes that the resistive matching employed in the described down-conversion apparatus is a form of impedance matching. (Id. 34-37, Figs. 13, 14(a).) Avitabile (Ex. 1024) 12. Avitabile describes a method and apparatus for down converting a carrier signal to a baseband signal. (Ex. 1024 337, Abstract.) 31
13. Avitabile describes use of sub-harmonic sampling to achieve down conversion. (Id.) 14. Avitabile s down-conversion apparatus includes a switching module, a control signal to control that switching module and a capacitor. (Id. 338, Fig. 2.) Fig.2 Equivalent-circuit model in sampling mode 15. Avitabile describes use of non-negligible sampling apertures of 10% and 40% of the carrier period. (Id. 340-41.) Weisskopf (Ex. 1023) 16. Weisskopf describes a method and apparatus for down converting a carrier signal to baseband frequency. (Ex. 1023 240, Fig. 2.) 17. Weisskopf describes use of sub-harmonic sampling to achieve down conversion. (Id.) 18. Weisskopf s down-conversion apparatus includes a switching module (GATE), a control signal to control that switching module (PULSE) and a capacitor (C h ). (Id.) 32
19. Weisskopf describes use of a sampling aperture of one-half the carrier period in order to maximize energy transfer to the capacitor. (Id. 243, Col. 3.) 20. Weisskopf describes optimizing the size of the capacitor (C h ) in order to maximize energy transfer from the carrier signal to the capacitor. (Id. 242, Fig. 3.) 21. Weisskopf describes that charge is accumulated on the capacitor during the apertures and that the amount of energy stored can be determined from the accumulated charge. (Id. 240-41.) 22. Having optimized, among other things, the sampling aperture and the capacitance in order to maximize energy transfer from the carrier signal to the capacitor, Weisskopf describes use of both a high-impedance buffer to minimize the energy transfer out of the capacitor and a low-impedance buffer that maximizes the energy transfer out of the capacitor and characterizes the results of each. (Id. 242-43.) 33
23. Weisskopf describes an input impedance matching structure that consists of C m and L m + L p in Figure 4 for the purpose of matching the 50 Ω source impedance to the 10 Ω gate impedance. (Id. 242 Col. 3, Fig. 4.) 24. Weisskopf describes directly applying a high-impedance load in order to achieve the desired small amount of power transfer from the down-converted signal and directly applying a low-impedance load that maximizes energy transfer from the down-converted signal. (Id. 242-43.) VIII. IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE Pursuant to Rule 42.104(b)(4)-(5), this section demonstrates that the challenged claims are unpatentable. A. Claims 1, 27, 82, 90, and 91 are Anticipated by Estabrook under 35 U.S.C. 102(b) The following subsections explain on an element-by-element basis how Estabrook anticipates claims 1, 27, 82, 90, and 91 of the '518 patent. Claim 1: A method for down-converting a carrier signal to a baseband signal, comprising the steps of: 34
Estabrook discloses a method for down-converting a carrier signal to a baseband signal. (Ex. 1022 222-25, Fig. 82(a).) Claim 1: receiving a carrier signal that includes at least one of amplitude variations, phase variations, or frequency variations at a frequency lower than a carrier frequency of the carrier signal; Estabrook describes receiving a carrier signal, denoted as IRF. (See, e.g., Ex. 1022 225, Figure 82(a).) Estabrook describes her receiver as working well with many types of modulation, including AM, FM, QPSK and QAM. (Id. 9-10.) Claim 1: sampling the carrier signal over aperture periods to transfer energy from the carrier signal at an aliasing rate, the aliasing rate determined according to a frequency of the carrier signal divided by N, wherein N indicates a harmonic or subharmonic of the carrier signal; Estabrook discusses the explicit goal of minimizing conversion loss (C L ), which is defined as the ratio of power available from the mixer input source over power delivered to the mixer output load. (Ex. 1022 21, 34, last paragraph ( Minimization of conversion loss is, of course, an important element of mixer 35
design.... ) Estabrook also describes using an aperture duration roughly equal to ½ the period of the control signal in order to maximize the transfer of current from the RF input. (Ex. 1022 71, paragraph below (eq. 23) ( As predicted, the minimum C L is achieved when T TON = 0.50 T LO. )) Maximizing current to the load in turn minimizes conversion loss. (Id. 78, first paragraph.) If this element is interpreted to require non-negligible energy transfer, that is disclosed in Estabrook because the energy is transferred during a non-negligible aperture, the Estabrook circuits work for their intended purpose (Ex. 1022 Abstract); and the Estabrook circuits have a lower noise figure than the nonnegligible energy transfer embodiment described in 518 specification. (Ex. 1004 34, 43, 7.1 ( 518 Patent, F=16 db; Estabrook F=8.7 db).) Estabrook describes direct down conversion to baseband frequency using an LO frequency equal to the carrier frequency, which is an aliasing rate with n=1. (Ex. 1022 222-27, 383.) Claim 1: integrating the energy over the aperture periods; and Estabrook teaches accumulating the transferred charge on the capacitor during each aperture period. This is shown, for example, in Figure 55(a) by the rising voltage on the capacitor during each of the time periods when the diode is on. (Id. 173, Fig. 55(a).) 36
The Estabrook circuitry also exhibits a low sampling efficiency (see Ex. 1004 eq. 5.1) but a high sampling rate as compared to input signal bandwidth and accumulates charge over multiple samples. (Id. 8.1.) Claim 1: generating the baseband signal from the integrated energy. Estabrook teaches generating a baseband signal from the transferred energy, both under the appropriate broadest reasonable interpretation in light of the specification described above and under the patentee s narrower construction requiring discharge of energy from a storage device. The baseband signal in Estabrook is shown as a sawtooth voltage waveform, which the patentee has described as the hallmark of its invention. (Ex. 1007 at 11; see, e.g., Ex. 1022 173, Fig. 55(a), reproduced above.) This sawtooth voltage waverform results because in each example described in Estabrook, the down-conversion circuitry is followed by a load that would be characterized as a low impedance load using the criteria described in 37
the 518 patent. In the 518 patent, the only example provided of a low impedance load is 2000 Ω for use in down converting a 900 MHz carrier signal. (Ex. 1002 FIG. 82B; 66:24-67:4.) The impedance values used in the Estabrook are lower than that, while down-converting approximately the same carrier frequency. (Ex. 1022 227, Table 26.) Claim 27: The method according to claim 1, further comprising the step of transferring energy to a load during an off-time. Estabrook teaches transferring energy to a load during an off-time. This is shown in, for example, Figure 55(a) by the falling voltage on the capacitor during each of the time periods when the diode is off. (Ex. 1022 173, Fig. 55(a).) Claim 82: An apparatus for downconverting a carrier signal to a baseband signal, the carrier signal includes at least one of amplitude variations, phase variations, or frequency variations at a frequency lower than a carrier frequency of the carrier signal, the apparatus comprising: Estabrook describes apparatus for down-converting a carrier signal to a baseband signal. (Ex. 1022 222-25, Fig. 82(a).) Estabrook describes its receiver as working well with many types of modulation, including AM, FM, QPSK and QAM. (Id. 9-10.) Claim 82: means for sampling the carrier signal over aperture periods to transfer energy from the carrier signal at an aliasing rate, the aliasing rate determined according to a frequency of the carrier signal divided by N, wherein N indicates a harmonic or sub-harmonic of the carrier signal; 38
Estabrook discloses performing this function as described with respect to claim 1 above. Estabrook also describes performing this function with equivalent structure as shown in the figures reproduced below: (Ex. 1002 FIG. 66C; Ex. 1022 225, Fig. 82(a).) Claim 82: means for integrating the energy over the aperture periods; and Estabrook discloses performing this function as described with respect to claim 1 above. Estabrook also describes performing this function with equivalent structure as shown in the figures reproduced below: (Ex. 1002 FIG. 68C; Ex. 1022 225, Fig. 82(a).) Claim 82: means for generating the baseband signal from the integrated energy. 39
Estabrook discloses performing this function as described with respect to claim 1 above. Estabrook also describes performing this function with equivalent structure as shown in the figures reproduced below: (Ex. 1002 FIG. 82A; Ex. 1022 225, Fig. 82(a).) Claim 90: An apparatus for down-converting a first signal to a second signal comprising: Estabrook describes an apparatus for down-converting a first signal to a second signal. (See, e.g., Ex. 1022 225, Fig. 82(a).) Claim 90: means for sub-sampling the first signal over aperture periods to transfer energy from the first signal; means for integrating the transferred energy over the aperture periods; means for generating the second signal from the integrated energy; and Estabrook s disclosures discussed above with respect to the corresponding elements in claim 82 also satisfy these elements. Claim 90: means for impedance matching at least one of said first signal and said second signal. 40
Estabrook describes impedance matching at both the input and output of the down-conversion circuitry. (Ex. 1022 34-37, 59, 168-69.) The structures disclosed in Estabrook for performing this function are equivalent to those described in the 518 patent as shown in the figures reproduced below: (Ex. 1002 FIGS. 77A-B; Ex. 1022 36, Fig. 13.) (Ex. 1002 FIG. 79; Ex. 1022 169, Fig. 54.) 41
(Ex. 1002 FIG. 82B; Ex. 1022 187, Fig. 63.) Claim 91: The apparatus of claim 90, wherein said aperture periods are substantially greater than zero such that energy transferred is to such an extent that accurate voltage reproduction of the first signal is prevented. Estabrook uses an aperture of 50% of the carrier period (Ex. 1022 71, paragraph below (eq. 23)), which is also described as a preferred embodiment in the 518 patent. (Ex. 1002 104:56-59.) The well-known aperture effect will cause the Estabrook circuit to have the same 4 db voltage attenuation in steady state as that preferred embodiment. (Ex. 1004 29, 53.) Using, for example, the values from Table 26 for the single-ended mixer with a C jo = 0.25 pf diode, the sampling aperture is 560 ps and the charging time constant of the capacitor (R S C) is 591 ps. Since τ < R S C the second signal over any aperture will not accurately reproduce the waveform of the carrier comprising the first signal. (Id. 53, 7.18.) * * * Thus, claims 1, 27, 82, 90, and 91 are anticipated under 35 U.S.C. 102(b) by Estabrook. 42
B. Claims 1, 27, and 82 are Anticipated by Avitabile under 35 U.S.C. 102(b) as are claims 90 and 91 under patentee s claim interpretation The following subsections explain on an element-by-element basis how Avitable anticipates claims 1, 27, and 82 of the 518 patent and anticipates claims 90 and 91 under patentee s claim interpretation. Claim 1: A method for down-converting a carrier signal to a baseband signal, comprising the steps of: Avitabile discloses a method for down-converting a carrier signal to a baseband. In particular, it discloses a sub-harmonic sampling method for directly down-converting a carrier signal to baseband frequency. (Ex. 1024 Abstract.) Claim 1: receiving a carrier signal that includes at least one of amplitude variations, phase variations, or frequency variations at a frequency lower than a carrier frequency of the carrier signal; Avitabile describes receiving a carrier signal that includes at least one of amplitude variations, phase variations, or frequency variations at a frequency lower than a carrier frequency of the carrier signal, shown as V in (t) in Fig. 2. (Id. 338, Fig. 2.) Fig.2 Equivalent-circuit model in sampling mode 43
Avitabile describes tests simulating an input carrier signals with AM modulation and a carrier frequency F c = 1 GHz. (Id. 340, text above Fig. 4.) Claim 1: sampling the carrier signal over aperture periods to transfer energy from the carrier signal at an aliasing rate, the aliasing rate determined according to a frequency of the carrier signal divided by N, wherein N indicates a harmonic or subharmonic of the carrier signal; Avitabile described direct down-conversion using subharmonic sampling. (Ex. 1024, Abstract.) Subharmonic sampling is a preferred embodiment of the 518 patent. (Ex. 1002 69:8-12 ( [T]he aliasing rate is substantially equal to... more typically, a sub-harmonic of the difference frequency. ).) For example, with respect to the SH2 prototype, Avitabile describes down-converting a 1 GHz signal to baseband (0 center frequency) using a sampling rate of 250 MHz, which is aliasing with N=4. (Ex. 1024 341, Fig. 10 (Legend).) To the extent this element is interpreted to require non-negligible amounts of energy, it is satisfied. First, each prototype uses non-negligible apertures (Ex. 1024 340, text above Fig. 4 (400 ps for SH1), 341, top of Col. 2 (100 ps for SH2)), which are equated with transferring non-negligible energy in the 518 patent. Second, both SH1 and SH2 work for their intended application as shown, for example in Figures 6 and 10. (Ex. 1024 340, Fig. 6, 341, Fig. 10.) Third, both prototype exhibit a Noise Figure that is the same or better than the exemplary non-negligible energy transfer embodiment described in the 518 specification. 44
(Ex. 1004 34, 43, 7.4 ( 518 patent F = 16 db; Avitabile SH1 F = 13.5 db; SH2 F = 16 db).) Claim 1: integrating the energy over the aperture periods; and Avitabile describes charge being transferred to and accumulated on the capacitor during each sample. For example, Avitabile describes with respect to prototype SH1 sampling a 30 MHz bandwidth signal at 250 MHz. (Ex. 1024 340, text above Fig. 4.) Since the sampling rate is much greater than the information rate, the modulation remains constant for a number of samples allowing charge to accumulate on the capacitor across those samples. Avitabile refers to an HP Journal article for a further explanation of this phenomenon. (Id. 338-39 4.1 Sample Interval.) As explained in the HP article: Most microwave samplers have relatively low voltage transfer efficiencies, usually significantly les than 10%. With this low sampling efficiency, the resultant voltage on the hold capacitor is a weighted combination of the input voltage from many samples. (Ex. 1043 65, paragraph below Fig. 4; see also Ex. 1004 8.3.) Claim 1: generating the baseband signal from the integrated energy. Avitabile describes the down-converted signal as the voltage across the capacitor in Figure 2. (Ex. 1024 338, Fig. 2.) This voltage only exists because there is energy stored on the capacitor. (Ex. 1004 39-41.) Furthermore, the FFT 45
of Fig. 10 shows that the energy in the down-converted signal is concentrated at 45 MHz, representing an AM modulated carrier with that bandwidth which has been down-converted to baseband frequency. (Ex. 1024 341, Fig. 10.) To the extent that this element is interpreted to require discharge of the capacitor, this is also disclosed by Avitabile. Avitabile shows that energy is discharged from the capacitor during the hold period, which is referred to as droop off. (Ex. 1024 340, Fig. 7.) Claim 27: The method according to claim 1, further comprising the step of transferring energy to a load during an off-time. Avitabile shows that energy is transferred from the capacitor to the load during the switch off-time, which is referred to as droop off. (Ex. 1024 340, Fig. 7.) Claim 82: An apparatus for downconverting a carrier signal to a baseband signal, the carrier signal includes at least one of amplitude variations, phase variations, or frequency variations at a frequency lower than a carrier frequency of the carrier signal, the apparatus comprising: Avitabile describes apparatus satisfying the preamble as described with respect to claim 1 above. Claim 82: means for sampling the carrier signal over aperture periods to transfer energy from the carrier signal at an aliasing rate, the aliasing rate determined according to a frequency of the carrier signal divided by N, wherein N indicates a harmonic or sub-harmonic of the carrier signal; Avitabile discloses performing this function as described with respect to claim 1 above. Avitabile also describes performing this function with equivalent 46
structure as shown in the figures reproduced below: (Ex. 1002 FIG. 82A; Ex. 1024 338, Fig. 2.) Even if the pulse generator were considered part of the corresponding structure for this element, the pulse generator in Avitabile is equivalent to the structure disclosed in the 518 patent. (Ex. 1002 FIGS. 68H-J, 100:18-50; Ex. 1024 340.) Claim 82: means for integrating the energy over the aperture periods; and Avitabile discloses performing this function as described with respect to claim 1 above. Avitabile also describes performing this function with equivalent structure as shown in the figures reproduced below: (Ex. 1002 FIG. 68C; Ex. 1024 338, Fig. 2.) 47
Claim 82: means for generating the baseband signal from the integrated energy. Avitabile discloses performing this function as described with respect to claim 1 above. Avitabile also describes performing this function with equivalent structure as shown in the figures reproduced below: (Ex. 1002 FIG. 68G; Ex. 1024 338, Fig. 2.) Claim 90: An apparatus for down-converting a first signal to a second signal comprising: Avitabile describes apparatus for down-converting a first signal to a second signal. (Ex. 1024 338, Fig.2.) Claim 90: means for sub-sampling the first signal over aperture periods to transfer energy from the first signal; means for integrating the transferred energy over the aperture periods; means for generating the second signal from the integrated energy; and Avitabile disclosures discussed above with respect to the corresponding elements in claim 82 also satisfy these elements. Claim 90: means for impedance matching at least one of said first signal and said second signal. 48
Avitabile describes designing prototypes with the load resistance, R L, as a system parameter and then setting the capacitor value as a function of the maximum allowable [voltage] drop during A/D conversion. (Ex. 1024 339, above eq. 13.) This meets the interpretation advocated by patentee and adopted by the district court because that is Avitabile s desired energy transfer. (Ex. 1008: D.I. 243 at 27-29.) The structure is equivalent to the alternative of providing the necessary load impedance directly (Ex. 1002 105:39-42.) Claim 91: The apparatus of claim 90, wherein said aperture periods are substantially greater than zero such that energy transferred is to such an extent that accurate voltage reproduction of the first signal is prevented. Avitabile shows aperture periods substantially greater than zero. Avitabile describes down-converting a 1 GHz signal using an aperture of 400 ps for prototype SH1. (Id. 340, text above Fig. 4.) This apertures, which represent 2/5 of the carrier period, is substantially greater than zero (Cf. Ex. 1002 83:4-8.) and similar to the 50% of the carrier period described as a preferred embodiment in the 518 patent. (Ex. 1002 104:56-59.) The well-known aperture effect will cause the Avitabile SH1 prototype circuit to have a similar voltage attenuation as that preferred embodiment. (Ex. 1004 9-12, 53, Fig. 4.1.) The SH2 prototype has a 100 ps aperture period that is substantially greater than zero and less than the R S C time constant of the capacitor. (Ex. 1024 341, top of Col. 2.) The second signal 49
over any apertures will not be able to accurately reproduce that waveform of the carrier comprising the first signal. (Ex. 1004 7.20.) * * * Thus, claims 1, 27, and 82 are anticipated under 35 U.S.C. 102(b) by Avitabile as well as claims 90 and 91 under patentee s claim interpretation. C. Claims 1, 27, 82, 90, and 91 are Anticipated by Weisskopf under 35 U.S.C. 102(b) The following subsections explain on an element-by-element basis how Weisskopf anticipates claims 1, 27, 82, 90, and 91 of the 518 patent. Claim 1: A method for down-converting a carrier signal to a baseband signal, comprising the steps of: Weisskopf discloses a method for down-converting a carrier signal to a baseband. In particular, it discloses a sub-harmonic sampling method for directly down-converting a microwave carrier signal to baseband frequency. (Ex. 1023 240, Col. 1, 242, Fig. 4.) Claim 1: receiving a carrier signal that includes at least one of amplitude variations, phase variations, or frequency variations at a frequency lower than a carrier frequency of the carrier signal; Weisskopf describes receiving a carrier signal that includes at least one of amplitude variations, phase variations, or frequency variations at a frequency lower than a carrier frequency of the carrier signal, shown as the source in Figs. 2 and 4. (Id. 240, Fig. 2, 242, Fig. 4.) Weisskkopf discloses using the circuits described in his paper to down- 50
convert carrier signals with MPSK (M-ary phase shift keying) modulation, which includes phase variations at a frequency lower than the carrier frequency. (Ex. 1023 246, Col. 2, Direct Demodulation of Microwave MPSK Carriers.) Claim 1: sampling the carrier signal over aperture periods to transfer energy from the carrier signal at an aliasing rate, the aliasing rate determined according to a frequency of the carrier signal divided by N, wherein N indicates a harmonic or subharmonic of the carrier signal; Weisskopf describes sampling the carrier signal over aperture periods to transfer energy from the carrier signal. In fact, Weisskopf teaches setting the sampling aperture to ½ the period of the carrier in order to maximize the transfer of energy from the carrier signal. (Id. 243, Col. 3 ( Maximum kinetic energy will be transferred to the hold capacitor when the sampling aperture is one-half the period of the sampled carrier. 14 )) Weisskopf also optimizes other parameters, including the size of the capacitor, in order to maximize energy transfer from the carrier signal. (Id. 242, Col. 2, under heading ( With R s and C h established to give maximum kinetic energy for a given sampling aperture, the effects of buffer impedance on the stored voltage during the hold cycle are considered. )) Weisskopf describes two approaches, one using a high-impedance load and one using a low-impedance load, but maximizes the energy transfer to the 14 This is the same aperture duration that the 518 patent describes as a preferred embodiment. (Ex. 1002 104:56-59.) 51
capacitor for both. (Id.) To the extent this element is interpreted to require nonnegligible amounts of energy, it is met because energy is transferred during a nonnegligible aperture; the size of the capacitor (C h ) was chosen to maximize energy transfer from the source to C h (Id. 242 Col. 3); Weisskopf s circuit works for its intended application (Id. 240, Col. 2 ( The output FFT spectrum of the defined subharmonic sample-and-hold process reveals its most significant property, which is the ability to downconvert a microwave or mm-wave signal to baseband with great efficiency and without loss of fidelity. ); and the Weisskopf circuit exhibits a Noise Figure comparable to the non-negligible energy transfer embodiment of the 518 patent. (Ex. 1004 34, 43, 7.3 ( 518 patent, F=16 db; Weisskopf, F=17 db).) Weisskopf describes sub-harmonic sampling throughout his paper, which satisfies the remainder of this element including the aliasing rate and the parameter n being an integer value greater than 1. Indeed, sub-harmonic sampling is a preferred embodiment of the 518 patent. (Ex. 1002 69:8-12.) Claim 1: integrating the energy over the aperture periods; and Weisskopf describes accumulating charge on the capacitor. Weisskopf notes that the charge (q) that accumulates on the capacitor can be determined by performing an integral function over the timespan of the aperture. (Ex. 1023 240, Col. 3.) The energy stored on the capacitor can then be determined from the 52
accumulated charge. (Ex. 1004 40.) Weisskopf s sampling rate is greater than the bandwidth of the modulated signal allowing charge to accumulate over multiple samples. (Ex. 1004 8.2.) Claim 1: generating the baseband signal from the integrated energy. Weisskopf describes generating the lower frequency signal from the integrated energy, explicitly stating that [t]he Fourier transforms of Figure 1b show how the sample-and-hold process converts most of the sampled energy to the baseband spectral replica centered at f(t) n x f c. (Ex. 1023 240, Cols. 2-3.) This element is disclosed by Weisskopf, even if patentee s restrictive interpretation requiring discharge of energy from a storage module were adopted. While Weisskopf prefers using a high-impedance load, he also describes use of a low-impedance load in which substantial amounts of energy are discharged from the capacitor. (Id. 242-3, Fig. 5.) Weisskopf s preference for use of a highimpedance load is irrelevant to anticipation. Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354 at 1360-61 (Fed. Cir. 1998) ( A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. ); id. (showing the claimed invention to be less than optimal does not vitiate that it is disclosed ); ClearValue v. Pearl River Polymers, 668 F.3d 1340, 1344 (Fed. Cir. 2012) ( [W]hether a reference teaches away from [an] invention is inapplicable to an anticipation analysis. ) (internal quotation omitted). While Weisskopf 53
describes use of a low-impedance load as sub-optimal, it still generates a lower frequency signal. (Ex. 1023 242-3; Fig. 5.) This element contains no limitation regarding the quality of the lower frequency signal, and as shown in the time domain plot of Figure 5, Weisskopf s low-impedance embodiment discharges substantially all of the transferred energy from the capacitor between each sample, resulting in the capacitor decaying to approximately zero Volts between samples. (Id. Fig. 5.) This is exactly how a number of non-negligible energy transfer embodiments are shown as behaving in the 518 patent, as shown below. (Ex. 1002 FIG. 50E; see also FIGS. 51E; 52E; 53E; 54E; 55E; 57E; 58E; 59E; 60E; 61E; 62E.) 54
Claim 27: The method according to claim 1, further comprising the step of transferring energy to a load during an off-time. Weisskopf describes transferring energy to a load during the off-time of the switch for both his high-impedance buffer and high-impedance buffer arrangements. In the high-impedance buffer embodiment, Weisskopf attempts to minimize the energy transferred to the load, while recognizing that energy transfer can only be completely prevented with an ideal buffer. (Ex. 1023 242, Col. 3, under heading; see also Ex. 1004 8.5.) In the low-impedance buffer embodiment, Weisskopf shows that the voltage on the capacitor drops to approximately zero volts between each sample, transferring substantially all of the energy stored in the capacitor to the load during each off-time as shown in Figure 5. (Id. at 243, Fig. 5.) Claim 82: An apparatus for downconverting a carrier signal to a baseband signal, the carrier signal includes at least one of amplitude variations, phase variations, or frequency variations at a frequency lower than a carrier frequency of the carrier signal, the apparatus comprising: Weisskopf describes apparatus satisfying the preamble as described with respect to claim 1 above. 55
Claim 82: means for sampling the carrier signal over aperture periods to transfer energy from the carrier signal at an aliasing rate, the aliasing rate determined according to a frequency of the carrier signal divided by N, wherein N indicates a harmonic or sub-harmonic of the carrier signal; Weisskopf discloses performing this function as described with respect to claim 1 above. Weisskopf also describes performing this function with equivalent structure as shown in the figures reproduced below: (Ex. 1002 FIG. 82A; Ex. 1023 240, Fig. 2.) Even if the pulse generator were considered part of the corresponding structure for this element, the pulse generator in Weisskopf is equivalent to the structure disclosed in the 518 patent. Both use inverters to delay and invert an incoming signal and use the delayed, inverted signal to end the sampling aperture. (Ex. 1002 FIGS. 68H-J, 100:18-50; Ex. 1023 244, Col. 2, directly above heading, Fig. 6.) Claim 82: means for integrating the energy over the aperture periods; and 56