Intel Corp. v. ParkerVision, Inc.

• Docket Number: IPR2020-01265,Patent 7,110,444 B1
• Decision Date: 21 January 2022
• Parties: INTEL CORPORATION, Petitioner, v. PARKERVISION, INC., Patent Owner.
• Court: Patent Trial and Appeal Board

1

INTEL CORPORATION, Petitioner, v. PARKERVISION, INC., Patent Owner.

No. IPR2020-01265

Patent 7, 110, 444 B1

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 21, 2022

For PETITIONER: Grant K. Rowan Haixia Lin Brian Lambson Michael J. Summersgill Todd C. Zubler WILMER Cutler Pickering Hale and Dorr LLP

For PATENT OWNER: Jason S. Charkow ChandranB. Iyer Stephanie R Mandir Richard Juang Kevin H. Sprenger Daignault Iyer LLP

Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and IFTIKHAR AHMED Administrative Patent Judges.

JUDGMENT

GERSTENBLITH, Administrative Patent Judge.

Final Written Decision Determining Non-Disclaimed Challenged Claim Unpatentable Granting Petitioner's Request to Exclude Improper Arguments Raised in Patent Owner's Sur-reply Granting Petitioner's Motion to Exclude Denying Petitioner's Motion to Seal 35 U.S.C.§318(a)

I. INTRODUCTION

A. Background

Intel Corporation ("Petitioner") filed a Petition (Paper 3, "Pet.") requesting institution of inter partes review of claims 1, 3, and 5 of U.S. Patent No. 7, 110, 444B1 (Ex. 1001, "the '444 patent"). ParkerVision, Inc. ("Patent Owner") filed an Amended Preliminary Response (Paper 9).^[1] Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review as to all claims and grounds set forth in the Petition. Paper 10 ("Inst. Dec").

After institution, Patent Owner filed a Patent Owner Response (Paper 18, "PO Resp."), Petitioner filed a Reply to Patent Owner's Response (Paper 21, "Pet. Reply"), and Patent Owner filed a Sur-reply (Paper 26, "PO Sur-reply"). Additionally, Petitioner filed a Motion to Exclude Exhibit 2022 (Paper 34, "Mot. Exc"), Patent Owner filed an Opposition to Petitioner's Motion to Exclude (Paper 36, "Opp."), and Petitioner filed a Reply in Support of its Motion to Exclude (Paper 37, "Mot. Reply"). With our prior authorization (Paper 31, "Order"), Petitioner filed an Identification of Improper New Evidence and Arguments in [Patent Owner's] Sur-Reply (Paper 32, "Petitioner's Identification") and Patent Owner filed a Response to Petitioner's Identification (Paper 35, "PatentOwner's Response to Identification"). Petitioner also filed an unopposed Motion to Seal Exhibit 1029, which is the deposition transcript of Michael Steer, Ph.D. (Paper 22, "Mot. Seal").

Additionally, Patent Owner filed a Notice of Statutory Disclaimer (Paper 40, "Patent Owner's Disclaimer Notice") to which Patent Owner attached a copy of its disclaimer under 37 C.F.R. § 1.321(a), wherein Patent Owner disclaimed claims 1 and 5 of the '444 patent (Paper 40, Ex. A). Patent Owner's disclaimer effectively eliminated claims 1 and 5 from the '444 patent, leaving the patent as if those claims never existed. See Sanofi-Aventis U.S., LLC v. Dr. Reddy's Labs., Inc., 933 F.3d 1367, 1373 (Fed. Cir. 2019) (noting that disclaiming claims effectively eliminates those claims from the patent as though the disclaimed claims had never existed (internal quotations and citations omitted)); see also Asetek Danmark A/S v. CoolIT Sys., Inc., IPR2020-00747, Paper 42 at 6 (PTAB Sept. 30, 2021) (determining that a statutory disclaimer removed a disclaimed claim from an inter partes review proceeding). Thus, claims 1 and 5 are no longer part of this proceeding.

At Petitioner's request, we held a pre-hearing conference on October 26, 2021, during which we addressed, inter alia, Petitioner's Motion to Exclude and related briefing, Petitioner's Identification and Patent Owner's Response to Identification, and Petitioner' s Motion to Seal. Each is addressed in more detail below. An oral hearing was held on November 1, 2021, and a copy of the transcript was entered in the record. Paper 42 ("Tr.").

We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a Final Written Decision under 35 U.S.C. §318(a) and 37 C.F.R. §42.73 as to the patentability of claim 3, the sole claim remaining in the trial. Petitioner bears the burden of proving unpatentability of the challenged claim. Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019). Having reviewed the arguments and the supporting evidence, we determine that Petitioner has shown, by a preponderance of the evidence, that claim 3 of the '444 patent is unpatentable.

B. Related Proceedings

Petitioner and Patent Owner identify the following related matter: ParkerVision, Inc. v. Intel Corp., No. 6:20-cv-108-ADA (W.D. Tex.) ("the related litigation"). Pet. 7; Paper 5 (Patent Owner's Mandatory Notices), 2. Patent Owner also states that the '444 patent is asserted in ParkerVision, Inc. v. TCL Technology Group Corp., No. 5:20-cv-01030-GW-SHK(C.D. Cal.). Paper 5, 2. In addition, Petitioner filed a petition challenging several claims of U.S. Patent No. 7, 539, 474 B2, which is related to the '444 patent, in IPR2020-01302.

C Real Parties in Interest

Petitioner identifies Intel Corporation as the real party in interest. Pet. 7. Patent Owner identifies ParkerVision, Inc. as the real party in interest. Paper 5, 2.

D. The Asserted Grounds of Unpatentability and Declaration Evidence

Petitioner asserts the following grounds of unpatentability:

Claim(s) Challenged^[2]

35 U.S.C. §^[3]

Reference(s)/Basis

103(a)

Tayloe, ^[4] TI Datasheet^[5]

103(a)

Tayloe, Kawada^[6]

Pet. 10. Petitioner supports its challenge with two declarations by Vivek Subramanian, Ph.D., one submitted with the Petition (Ex. 1002 (Declaration of Vivek Subramanian, Ph.D.)) and the other submitted with Petitioner's Reply (Ex. 1030 (Reply Declaration of Vivek Subramanian, Ph.D.)), and a Declaration of Maureen M. Honey cutt (Ex. 1019). Patent Owner supports its arguments with a Declaration of Michael Steer, Ph.D. (Ex. 2021).

E. The '444 Patent

The '444 patent is directed to "a wireless local area network (WLAN) that includes one or more WLAN devices (also called stations, terminals, access points, client devices, or infrastructure devices) for effecting wireless communications over the WLAN." Ex. 1001, 2:10-14. The'444 patent explains that "[t]he WLAN device includes at least an antenna, a receiver, and a transmitter.... The WLAN receiver includes at least one universal frequency translation module that frequency down-converts a received electromagnetic (EM) signal." Id. at 2:14-22.

Figure 70A is reproduced below:

(Image Omitted)

FIG.70A Figure 70A of the '444 patent "illustrates an IQ receiver having shunt UFT [universal frequency translation] modules." Ex. 1001, 5:34-35. The '444 patent explains that "I/Q modulation receiver 7000 receives, down- converts, and demodulates a[n] I/Q modulated RF input signal 7082 to an I baseband output signal 7084, and a Q baseband output signal 7086." Id. at 35:51-54; see id. at 35:60-62 (Antenna 7072 receives and outputs I/Q modulated RF input signal 7082.). The '444 patent states that, "[w]hen present, LNA 7018 amplifies I/Q modulated RF input signal 7082, and outputs amplified I/Q signal 7088." Id. at35:62-64. Thereafter, "[f]irst UFD [universal frequency down-conversion] module 7002, receives amplified I/Q signal 7088....[, ] down-converts the I-phase signal portion of amplified input I/Q signal 7088 according to an I control signal 7090... . [, and] outputs an I output signal 7098." Id. at 35:65-36:2. Similarly, UFD module 7006 "receives amplified I/Q signal 7088[, ]" "down-converts the inverted I-phase signal portion of amplified input I/Q signal 7088 according to an inverted I control signal 7092 [, ]" and "outputs an inverted I output signal 7001." Id. at 36:33-37. Thereafter, "[fjirst differential amplifier 7020 receives filtered I output signal 7007.... subtracts filtered inverted I output signal 7009 from filtered I output signal 7007, amplifies the result, and outputs I baseband output signal 7084." Id. at 37:3-8.

The '444 patent's first and second UFD modules in Figure 7OA include capacitors 7074 and 7076, respectively, and UFT modules 7026 and 7038, respectively. See Ex. 1001, 36:3-5 (first UFD module 7002 comprises first storage module 7024 and first UFT module 7026), 36:14-15 (first storage module 7024 comprises first capacitor 7074), 36:38-40 (second UFD module 7006 comprises second storage module 7036 and second UFT module 7038), 36:50-51 (second storage module 7036 comprises second capacitor 7076).

Figure IB is reproduced below:

(Image Omitted)

FIG. 1B Figure IB of the '444 patent "is a more detailed diagram of a universal frequency translation (UFT) module." Id. at 2:56-58. The '444 patent explains that, "[g]eneralfy, the UFT module 103 includes a switch 106 controlled by a control circuit 108." Id. at 8:62-64 (noting that switch 106 is referred to as a controlled switch); see id. at 36:5-7 (first UFT module, shown in Figure 70A, contains a switch that opens and closes as a function of I control signal 7090), 36:40-42 (second UFT module, also shown in Figure 70A, contains a switch that opens and closes as a function of inverted I control signal 7092).

The '444 patent includes two alternative configurations of switches and capacitors in UFD modules (Ex. 1001, 9:43-57), as shown in Figures 20A and 20A-1 reproduced below:

(Image Omitted)

Figures 20A and 20A-1 of the '444 patent "are example aliasing modules." Id. at 3:50-51. The '444 patent explains that, in Figure 20A, switch 2008 is in series with input signal 2004 and capacitor 2010 is shunted to ground; in Figure 20A-1, however, capacitor 2010 is in series with input signal 2004 and switch 2008 is shunted to ground. Id. at 9:48-57 (also noting that "[t]he electronic alignment of the circuit components is flexible").

The ...