+ All Categories
Home > Documents > Parker's Open SJ Brief

Parker's Open SJ Brief

Date post: 31-Oct-2015
Category:
Upload: markman-advisors
View: 51 times
Download: 1 times
Share this document with a friend
Description:
PRKR SJ BRief

of 35

Transcript
  • UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA

    JACKSONVILLE DIVISION

    PARKERVISION, INC.,

    Plaintiff,

    v. Case No. 3:11-cv-719-J-37-TEM

    QUALCOMM INCORPORATED,

    Defendant.

    QUALCOMM INCORPORATED,

    Counterclaim Plaintiff, v.

    PARKERVISION, INC. AND STERNE, KESSLER, GOLDSTEIN & FOX PLLC,

    Counterclaim Defendants.

    PARKERVISIONS MOTION FOR SUMMARY JUDGMENT OF NO INVALIDITY

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 1 of 35 PageID 8500

  • McKool 885776 McKool 885776v7

    ii

    TABLE OF CONTENTS

    I. INTRODUCTION ...............................................................................................................1

    II. ISSUES TO BE DECIDED .................................................................................................2

    III. STATEMENT OF UNDISPUTED MATERIAL FACTS ..................................................3

    IV. LEGAL STANDARD..........................................................................................................5

    V. ARGUMENT AND AUTHORITIES..................................................................................6

    A. Qualcomm Cannot Meet Its Burden To Prove That Any Asserted Claim Of The 551, 518, Or 371 Patents Is Invalid As Anticipated Or Obvious. ........................................................................6

    1. Qualcomm Has No Evidence That The Prior Art Meets The Generating Limitation Of The Asserted Claims Of The 551, 518, And 371 Patents. .........................................................................................................7

    2. The Patents-In-Suit, Like The Courts Claim Construction Order, Recognize That The Generating Limitation May Be Satisfied By Discharging The Transferred Energy From The Storage Device. ..........................................................................................11

    3. Any Voltage Differential Across The Poles Of The Storage Device Does Not Show Generating The Lower Frequency Signal From The Transferred Energy. .......................................................................................................14

    4. Qualcomms Lack Of Expert Testimony And Evidence As To The Generating Limitation Entitles PakerVision To Summary Judgment Of No Anticipation Or Obviousness.....................................................................15

    B. Qualcomms Enablement Challenge Fails As A Matter Of Law. .......................................................................................................................17

    1. Dr. Razavi Fails To Apply The Legally Correct Test For Enablement. .........................................................................................17

    2. The Patents-in-Suit Provide Examples Operable At The Ninth Sub-Harmonic...........................................................................19

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 2 of 35 PageID 8501

  • McKool 885776 McKool 885776v7

    iii

    3. Dr. Razavi Admits That Undue Experimentation Is Not Required To Make Embodiments Of The Invention Operable At The Ninth Sub-harmonic.......................................19

    C. Qualcomm Fails To Show That Any Asserted Claim Is Indefinite. ...............................................................................................................19

    1. The Term Substantial Does Not Result In The Indefiniteness Of Claims 113, 161, 202, and 203 of the 551 PatentThe Court Construed This Term....................................20

    2. The Term Accurate Does Not Result In The Indefiniteness Of Claims 113, 202, and 203 of the 551 Patent and Claims 81 and 91 of the 518 Patent..........................................................................................................21

    3. Claims 4 And 7 Of The 845 Patent Are Not Indefinite Due To Minor Typographical Errors.........................................22

    D. Despite The Broad Assertions In Its Counterclaim, Qualcomm Provides No Evidence That The Patents-In-Suit Are Otherwise Invalid............................................................................................24

    VI. CONCLUSION..................................................................................................................25

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 3 of 35 PageID 8502

  • McKool 885776 McKool 885776v7

    iv

    TABLE OF AUTHORITIES

    Page(s) CASES

    ActiveVideo Networks, Inc. v. Verizon Commcns, Inc., 694 F.3d 1312 (Fed. Cir. 2012)................................................................................................16

    Alexsam, Inc. v. Idt Corp., Nos. 2012-1063, -1064, 2013 U.S. App. LEXIS 10009 (Fed. Cir. May 20, 2013) .............7, 16

    Andrew Corp. v. Gabriel Elecs., Inc., 847 F.2d 819 (Fed. Cir. 1988)..................................................................................................21

    Celotex Corp. v. Catrett, 477 U.S. 317 (1986).........................................................................................................5, 6, 25

    Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005)................................................................................................20

    Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349 (Fed. Cir. 2012)................................................................................................21

    Emcore Corp. v. Optium Corp., No. 6-1202, 2008 U.S. Dist. LEXIS 59794 (W.D. Pa. Aug. 5, 2008) .....................................22

    Energizer Holdings, Inc. v. Intl Trade Commn, 435 F.3d 1366 (Fed. Cir. 2006)................................................................................................22

    Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325 (Fed. Cir. 2010)................................................................................................22

    Exxon Research & Engg Co. v. United States, 265 F.3d 1371 (Fed. Cir. 2001)................................................................................................20

    Green Edge Enters., LLC v. Rubber Mulch etc., LLC, 620 F.3d 1287 (Fed. Cir. 2010)..........................................................................................18, 19

    In re Wands, 858 F.2d 731 (Fed. Cir. 1988)............................................................................................17, 19

    Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363 (Fed. Cir. 2008)..................................................................................................7

    Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052 (Fed. Cir. 2005)....................................................................................17, 18, 19

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 4 of 35 PageID 8503

  • McKool 885776 McKool 885776v7

    v

    Isco Intl, Inc. v. Conductus, Inc., No. 01-847 GMS, 2003 U.S. Dist. LEXIS 1880 (D. Del. Feb. 10, 2003) ...............................23

    John Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342 (Fed. Cir. 1998)................................................................................................18

    Johnson & Johnson Vision Care, Inc. v. CIBA Vision Corp., 648 F. Supp. 2d 1294 (M.D. Fla. 2009).............................................................................23, 24

    K-Tec, Inc. v. Vita-Mix Corp., 696 F.3d 1364 (Fed. Cir. 2011)..............................................................................................6, 7

    Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142 (Fed. Cir. 2004)................................................................................................16

    Krippelz v. Ford Motor Co., 667 F.3d 1261 (Fed. Cir. 2012)................................................................................................16

    LNP Engg Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347 (Fed. Cir. 2001)................................................................................................21

    Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928 (Fed. Cir. 2003)..............................................................................................7, 16

    Microsoft Corp. v. i4i Ltd. Pship, 131 S. Ct. 2238 (2011)...............................................................................................................5

    Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461 (Fed. Cir. 1997)................................................................................................16

    Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)................................................................................................23

    Proveris Sci. Corp. v. Innovasystems, Inc., 536 F.3d 1256 (Fed. Cir. 2008)............................................................................................7, 16

    Schumer v. Lab. Computer Sys., 308 F.3d 1304 (Fed. Cir. 2002)................................................................................................16

    Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818 (Fed. Cir. 1984)..................................................................................................20

    Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372 (Fed. Cir. 2009)..................................................................................................5

    Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355 (Fed. Cir. 2011)................................................................................................20

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 5 of 35 PageID 8504

  • McKool 885776 McKool 885776v7

    vi

    STATUTES

    35 U.S.C. 101, 102, 103, and 112 .....................................................................................1, 5, 25

    35 U.S.C. 103(a) ...........................................................................................................................7

    35 U.S.C. 112..................................................................................................................17, 24, 25

    35 U.S.C. 112(2) ...................................................................................................................19, 21

    35 U.S.C. 282................................................................................................................................5

    OTHER AUTHORITIES

    Fed. R. Civ. P. 56 .......................................................................................................................5, 25

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 6 of 35 PageID 8505

  • McKool 885776 McKool 885776v7

    vii

    LIST OF EXHIBITS

    EXHIBIT A-1 Expert Report of Dr. Behzad Razavi (the Razavi Report)

    EXHIBIT A-2 Appendix C and Addendum to Razavi Report1

    EXHIBIT B Excerpts from Rebuttal Report of Paul Prucnal (the Prucnal Rebuttal)

    EXHIBIT C Excerpts from Deposition Testimony of Dr. Behzad Razavi (dated May 1, 2013)

    EXHIBIT D Excerpts from Deposition Testimony of Joseph Hanna (dated April 30, 2013)

    EXHIBIT E Excerpts from Deposition Testimony of Gregory Leonard (dated April 26, 2013)

    EXHIBIT F Excerpts from Deposition Testimony of Dr. Tim Williams (dated May 02, 2013)

    EXHIBIT G Excerpts from Deposition Testimony of Dr. Robert Fox (dated May 03, 2013)

    EXHIBIT H Excerpts from Deposition Testimony of David Sorrells (dated May 10, 2013)

    EXHIBIT I Rebuttal Expert Report of Peter Weisskopf (the Weisskopf Rebuttal)

    EXHIBIT J Excerpts from Deposition Testimony of Peter Weisskopf (dated May 10, 2013)

    1 ParkerVision has attached as exhibits the body of the Razavi Report and Appendix C (with its Addendum), containing Dr. Razavis simulations. Appendices A-B and D-K are voluminous and are not included as exhibits to ParkerVisions motion. A copy of these other appendices, including Dr. Razavis claim charts contained in Appendices D-I, can be delivered to the Court if desired.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 7 of 35 PageID 8506

  • McKool 885776 McKool 885776v7

    1

    I. INTRODUCTION

    ParkerVision, Inc. (ParkerVision) hereby moves for summary judgment of no

    invalidity. Qualcomm Incorporated (Qualcomm) submits that the Asserted Claims of the

    Patents-in-Suit1 are invalid under one or more of 35 U.S.C. 101, 102, 103, and 112. Dr.

    Behzad Razavi, Qualcomms only expert on validity, opines on anticipation, obviousness,

    enablement, and indefiniteness.

    Issued patents are presumed valid and a party challenging the validity of a patent must

    establish invalidity of each claim by clear and convincing evidence. Here, Qualcomm failed to

    provide evidence sufficient to establish an allegation of invalidity of any Asserted Claim.

    Therefore, summary judgment in favor of ParkerVision is appropriate on each of the four

    grounds set forth herein.

    First, with respect to anticipation and obviousness of the Asserted Claims of the 551,

    518, and 371 Patents, Dr. Razavi fails to set forth any evidence that any of the prior art meets

    the generating limitation of each Asserted Claim of these patents. As a result, Qualcomm has

    failed as a matter of law to set forth any evidence, let alone clear and convincing evidence,

    proving that any of the prior art identified by Qualcomm anticipates and/or renders obvious the

    Asserted Claims of the 551, 518, and 371 Patents. Second, Dr. Razavis enablement opinion

    is premised on an incorrect application of the law. Therefore, Qualcomm has failed as a matter

    of law to set forth any evidence, let alone clear and convincing evidence, that the Asserted

    Claims of the 551, 518, and 371 Patents are invalid for lack of enablement. Third, neither 1 U.S. Patent No. 6,061,551 (the 551 Patent), U.S. Patent No. 6,266,518 (the 518 Patent), U.S. Patent No. 6,370,371 (the 371 Patent), U.S. Patent No. 6,963,734 (the 734 Patent), U.S. Patent No. 7,496,342 (the 342 Patent), and U.S. Patent No. 7,724,845 (the 845 Patent) (collectively the Patents-in-Suit). The Asserted Claims are: (a) the 551 Patent Claims 1, 2, 3, 8, 9, 12, 16, 20, 23, 24, 25, 26, 31, 32, 39, 41, 50, 54, 55, 57, 92, 108, 113, 126, 135, 161, 192, 193, 195, 196, 198, 202, and 203; (b) the 518 Patent Claims 1, 2, 3, 12, 17, 24, 27, 77, 81, 82, 90, and 91; (c) the 371 Patent Claims 1, 2, 22, 23, 25, and 31; (d) the 734 Patent Claims 1, 4, 5, 6, 9, 12, 13, 14, and 15; (e) the 342 Patent Claims 18, 19, 20, 21, 22, and 23; and (f) the 845 Patent Claims 1, 3, 4, 5, 6, 7, 8, 9, 12, 13, 17, 18, 19, 20, 22, 23, and 24.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 8 of 35 PageID 8507

  • McKool 885776 McKool 885776v7

    2

    Qualcomm nor Dr. Razavi have identified clear and convincing evidence that the Asserted

    Claims of the 551, 518 and 845 Patentssome of which have already been construed by the

    Courtare indefinite. Finally, Qualcomm has provided no evidence of invalidity of any

    Asserted Claim of the Patents-in-Suit under 101 for failure to claim patentable subject matter

    or double patenting; under 102 for abandonment, prior foreign filing, or derivation; or under

    112 for failure to set forth the best mode or written description. Because each of the foregoing

    grounds is a purely legal question or rests upon a failure of proof, no genuine issues of fact

    preclude summary judgment.

    II. ISSUES TO BE DECIDED

    1. Does Qualcomms failure to set forth any evidence that the generating

    limitation of each Asserted Claim of the 551, 518, and 371 Patents is met by any of

    Qualcomms prior art, coupled with its failure to correctly apply the claim language as construed

    by the Court, entitle ParkerVision to summary judgment of no invalidity as to paragraph 13 of

    Qualcomms Counterclaim with respect to the Asserted Claims of the 551, 518 and 371

    Patents (Dkt. 248 at 13 (alleged anticipation/obviousness under 102 and 103))?

    2. Does Qualcomms failure to apply the correct legal standard to its enablement

    opinions, coupled with its failure to provide evidence as to the alleged non-enablement of each

    Asserted Claim of the 551 Patent; Claims 1, 2, 3, 12, 17, 24, 27, and 82 of the 518 Patent; and

    Claims 1, 2, 22, 23, 25, and 31 of the 371 Patent, entitle ParkerVision to summary judgment of

    no invalidity as to paragraph 12 of Qualcomms Counterclaim (Dkt. 248 at 12 (alleged non-

    enablement under 112))?

    3. Does Qualcomms failure to apply the correct legal standard to its indefiniteness

    opinions, coupled with the fact that the Court has already construed some of the allegedly

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 9 of 35 PageID 8508

  • McKool 885776 McKool 885776v7

    3

    indefinite terms, entitle ParkerVision to summary judgment of no invalidity as to paragraph 14 of

    Qualcomms Counterclaim (Dkt. 248 at 14 (alleged indefiniteness under 112))?

    4. Does Qualcomms failure to provide any evidence that any Asserted Claim of any

    Patent-in-Suit is invalid under: (i) 101 for failure to claim patentable subject matter and/or

    double patenting, (ii) 102 for abandonment, prior foreign filing, and/or derivation; or (iii) 112

    for failure to set forth the best mode or failure to provide an adequate written description, entitle

    ParkerVision to summary judgment of no invalidity as to paragraph 12 of Qualcomms

    Counterclaim (Dkt. 248 at 12 (as to 101, 102, and 112))?

    III. STATEMENT OF UNDISPUTED MATERIAL FACTS

    1. ParkerVision has asserted the Asserted Claims of the Patents-in-Suit against

    Qualcomm. Dkt. 158 at 2-3. The Patents-in-Suit relate to methods, systems, and apparatuses

    used to down-convert electromagnetic signals from higher frequencies to lower frequencies.

    Such down-conversion is used in cellular communications. Dkt. 243 at 1-2.

    2. To effectuate the down-conversion of an input signal, the Patents-in-Suit teach the

    use of a switching device that facilitates the transfer of energy from the input signal to a storage

    device, such as a capacitor. See, e.g., 551 Patent at 66:55-67, 67:14-22. The switching device is

    controlled by a control signal (energy transfer signal) and the duration (width or aperture)

    of the control signal determines the length of time the switching device is closed. See, e.g., 551

    Patent at 67:1-13. The storage device stores non-negligible amounts of energy from the input

    signal. See, e.g., 551 Patent at 66:65-67, 67:14-22, 85:51-55. The energy stored in the storage

    device is the source of the energy used to generate the down-converted signal. Dkt. 243 at 40.

    3. The Patents-in-Suit claim aliasing an input signal and the parties have agreed to

    construe aliasing rate to mean a sampling rate that is less than or equal to twice the frequency

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 10 of 35 PageID 8509

  • McKool 885776 McKool 885776v7

    4

    of the carrier signal. Dkt. 110-1. Both aliasing rate and sampling rate refer generally to the rate

    at which the switching device opens and closes. See, e.g., 551 Patent at 67:1-5, 74:17-21.

    4. The 551 and 518 Patents refer to the aliasing rate of the switching device by

    referring to a harmonic or sub-harmonic of the input signal. See, e.g., id. at 29:36 - 30:36. If the

    carrier signals frequency was 901 MHz and the lower frequency signals frequency was 1 MHz,

    then the aliasing rate would be 900 MHz for the first harmonic (or fundamental frequency, n =

    1) and 100 MHz for the ninth sub-harmonic (n = 9). See, e.g., id. at 29:10, 30:5.

    5. On July 24, 2012, the Court held a non-adversarial tutorial regarding the

    underlying technology of the Patents-in-Suit. See Dkt. 146 at 1-4. At the tutorial, inventor

    David Sorrells made a presentation illustrating how some prior methods of down-conversion

    worked and how certain embodiments of the invention worked. See id. at 43-46.

    6. On February 20, 2013, the Court issued its claim construction order. Dkt. 243.

    Therein, and in construing the generating limitation, the Court stated:

    The claims here do not clearly denote a temporal relationship. Rather, one could understand the claim language identified by Qualcomm as referring to the fact that transferred energy is the source of the energy used to generate the down-converted signal.

    Accordingly, the Court declines to adopt Qualcomms proposed construction of the generating a lower frequency signal terms. The Court also finds that no construction of these terms is necessary in view of the terms use of plain and direct language.

    Id. at 40.

    7. On March 4, 2013, Qualcomm submitted the Expert Report of Dr. Behzad Razavi

    (the Razavi Report) concerning the validity of the Asserted Claims of the Patents-in-Suit. See

    Ex. A. Qualcomm has no other expert opinion on validity. See Ex. D (Dep. of J. Hanna) at 34:7-

    14; Ex. E (Dep. of G. Leonard) at 35:13-16; Ex. F (Dep. of T. Williams) at 7:20 - 8:5; Ex. G

    (Dep. of R. Fox) at 9:25 - 10:9.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 11 of 35 PageID 8510

  • McKool 885776 McKool 885776v7

    5

    8. On April 5, 2013, ParkerVision submitted the Rebuttal Expert Report of Dr. Paul

    Prucnal (the Prucnal Rebuttal) (Ex. B) and the Rebuttal Expert Report of Peter Weisskopf (the

    Weisskopf Rebuttal) (Ex. I) responding to the opinions set forth by Dr. Razavi.

    9. On April 11, 2013, Qualcomm filed its Answer to ParkerVisions Third Amended

    Complaint and Counterclaim and Demand for Jury Trial (Answer and Counterclaim). In its

    Answer and Counterclaim, Qualcomm contends that each Asserted Claim of the Patents-in-Suit

    is invalid under 35 U.S.C. 101, 102, 103, and 112. Dkt. 248 at 11-14.

    IV. LEGAL STANDARD

    Summary judgment is appropriate where no genuine issues of material fact exist. Fed. R.

    Civ. P. 56(a) (The court shall grant summary judgment if the movant shows that there is no

    genuine dispute as to any material fact and the movant is entitled to judgment as a matter of

    law.); Celotex Corp. v. Catrett, 477 U.S. 317, 32223 (1986). Summary judgment is mandated

    by Rule 56 against a party who fails to make a showing sufficient to establish the existence of

    an element essential to that partys case, and on which that party will bear the burden of proof at

    trial. Celotex, 477 U.S. at 322.

    Under 35 U.S.C. 282, the Patents-in-Suit are presumed valid and [t]he burden of

    establishing invalidity of a patent or any claim thereof shall rest on the party asserting such

    invalidity. Under this presumption, any invalidity assertion on any statutory basis must be

    proved by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. Pship, 131 S. Ct. 2238,

    2242 (2011). The party asserting invalidity has the initial burden of going forward with

    evidence to support its invalidity allegation. Titan Tire Corp. v. Case New Holland, Inc., 566

    F.3d 1372, 1376 (Fed. Cir. 2009).

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 12 of 35 PageID 8511

  • McKool 885776 McKool 885776v7

    6

    V. ARGUMENT AND AUTHORITIES

    Under the appropriate legal authority and as set forth below, the Court should grant

    summary judgment in favor of ParkerVision on each ground set forth herein. Qualcomm has

    failed as a matter of law to satisfy its burden to present clear and convincing evidence as to each

    of the invalidity allegations discussed herein. No issues of fact remain. Celotex, 477 U.S. at 322.

    A. Qualcomm Cannot Meet Its Burden To Prove That Any Asserted Claim Of The 551, 518, Or 371 Patents Is Invalid As Anticipated Or Obvious.

    In its Answer and Counterclaim, Qualcomm contends that each Asserted Claim of the

    551, 518, and 371 Patents (along with the Asserted Claims of the other Patents-in-Suit not at

    issue here) are invalid as anticipated or obvious in light of certain prior art. Dkt. 248 at 3-4, 9-

    11. In his report, Dr. Razavi purports to compare the prior art to the Asserted Claims of the

    Patents-in-Suit as construed by the Court.2 Dr. Razavis invalidity analysis falls short because he

    fails to offer any opinion or set forth any evidence establishing that any prior art reference meets

    the generating limitation of each Asserted Claim of the 551, 518, or 371 Patents.3

    To prove anticipation, Qualcomm must show by clear and convincing evidence that a

    single prior art reference discloses each and every element of a claimed invention. K-Tec, Inc. v.

    Vita-Mix Corp., 696 F.3d 1364, 1377 (Fed. Cir. 2011) (quotation and citation omitted). To prove

    obviousness, Qualcomm must show that the subject matter of the Asserted Claims of the Patents-

    in-Suit would have been obvious at the time the invention was made to a person of ordinary

    2 Like Qualcomms Answer and Counterclaim, Dr. Razavi opines that the 551, 518 and 371 Patents are anticipated or rendered obvious by: (i) 551 Patent: Weisskopf, Estabrook, Nozawa, van Graas, Tayloe, Shahani, Traylor, MDS-2000, Crols, and Gordy references; (ii) 518 Patent: Weisskopf, Estabrook, Nozawa, van Graas, Tayloe, Traylor, and Crols references; and (iii) 371 Patent: Weisskopf, Shahani, Estabrook, and Nozawa references. 3 While Dr. Razavi purports to provide an obviousness analysis, except for asserting that the impedance matching limitation of independent Claims 77 and 90 of the 518 Patent is obvious (see Ex. A (Razavi Report) at 427, 496 (it would be obvious to add . . .), Dr. Razavi does not offer any opinion that any of the other independent claims have limitations that are obvious. More specifically, Dr. Razavi offers no opinion that the generating limitation of each Asserted Claim of the 551, 518, and 371 Patents is obvious. Nonetheless, and even if he were to offer such an opinion, ParkerVision is still entitled to summary judgment for the reasons set forth herein.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 13 of 35 PageID 8512

  • McKool 885776 McKool 885776v7

    7

    skill in the art to which the subject matter of the invention pertains. 35 U.S.C. 103(a).

    Indeed, proving obviousness requires more than conclusory statements: there must be some

    articulated reasoning with some rational underpinning to support the legal conclusion of

    obviousness. Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008)

    (citations and quotations omitted). Both anticipation and obviousness involve two steps:

    (i) construction of the claims by the court as a matter of law; and (ii) a comparison of the

    construed claims to the prior art. Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir.

    2003). The second step requires expert testimony, where, as here, the technology is complex.

    Alexsam, Inc. v. Idt Corp., Nos. 2012-1063, -1064, 2013 U.S. App. LEXIS 10009, at *28-29

    (Fed. Cir. May 20, 2013) (because the technology was complex and the prior-art references

    were not easily understandable without expert testimony, . . . [e]xpert testimony was required not

    only to explain what the prior-art references disclosed, but also to show that a person skilled in

    the art would have been motivated to combine them in order to achieve the claimed invention);

    Proveris Sci. Corp. v. Innovasystems, Inc., 536 F.3d 1256, 1267 (Fed. Cir. 2008).

    1. Qualcomm Has No Evidence That The Prior Art Meets The Generating Limitation Of The Asserted Claims Of The 551, 518, And 371 Patents.

    Each Asserted Claim of the 551, 518, and 371 Patents requires not only the transfer of

    energy from a carrier signal to a storage device, but also the use of that transferred energy to

    generate a lower frequency or baseband signal. See, e.g., 551 Patent, Claim 1; see also 551

    Patent at 85:48-58. The transfer and generating limitations are separate and distinct.

    Therefore, to prove invalidity, Qualcomm must show by clear and convincing evidence that both

    limitations are present in the prior art. K-Tec, Inc., 696 F.3d at 1377.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 14 of 35 PageID 8513

  • McKool 885776 McKool 885776v7

    8

    At least the following claims of the 551, 518, and 371 Patents recite as limitations, in

    addition to the transfer of energy from the carrier signal, generating the lower frequency or

    baseband signal from the transferred energy:

    generating a lower frequency signal from the transferred energy (as required by 551 independent Claim 1, and its dependents, Claims 2, 3, 8, 9, 12, 16, 20, 39, 41, 50, 54, 55, 57, 92, 108, 113, and 126);

    wherein a lower frequency signal is generated from the transferred energy (as required by 551 independent Claim 23, and its dependents, Claims 24, 25, 26, 31, 32, 135, 161, 192, 193, 195, 196, 198, 202, and 203);

    generating the baseband signal from the integrated energy (as required by 518 independent Claim 1, and its dependents, Claims 2, 3, 12, 17, 24, and 27);4

    generating the second signal from the integrated energy (as required by 518 independent Claim 77, as its dependent, Claim 81);

    means for generating the baseband signal from the integrated energy (as required by 518 independent Claim 82);

    means for generating the second signal from the integrated energy (as required by 518 independent Claim 90, and its dependent Claim 91);

    wherein the lower frequency signal is generated from the transferred energy (as required by 371 independent Claim 1); and

    wherein the lower frequency signal is generated from the transferred energy (as required by 371 independent Claim 2, and its dependents, Claims 22, 23, 25, and 31).

    Thus, each Asserted Claim of the 551, 518, and 371 Patents requires both (i) transferring

    energy; and (ii) generating the lower frequency or baseband signal from that transferred energy.

    Rather than set forth evidence or opinion as to how both the transfer and generating

    limitations are met by the prior art, Dr. Razavi conflates the two limitations. For each piece of

    prior art, Dr. Razavi first opines that the reference discloses the transfer limitation. Then,

    rather than identifying anything in the reference that separately satisfies the generating

    4 The Court construed the term the integrated energy as the accumulated energy. Dkt. 243 at 18, 20. This construction clearly contemplates the accumulation of energy from more than one aperture period. Dkt. 243 at 20.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 15 of 35 PageID 8514

  • McKool 885776 McKool 885776v7

    9

    limitation, Dr. Razavi asserts that because the prior art satisfies the transfer limitation, it

    necessarily also satisfies the generating limitation. As Dr. Razavi (incorrectly) explains in his

    report for each prior art reference he analyzed, the generating step is necessarily satisfied

    because it can happen simultaneously with the transferring of energy from the carrier signal.

    Ex. A (Razavi Report) at 166, 175-76, 188-90, 199-01, 207-08, 220-21, 231-33, 239-41, 273-

    74, 362-63, 370-71, 377-78, 384-85, 391-92, 398-99, 405-06, 432, 438-39, 445, 451, 457, 463,

    486-92, 495, 521-24, 529-36, 538-45, and 546-52. Under Dr. Razavis view of the claims, the

    transfer and generating limitations are both satisfied by transferring energy from the carrier

    signal. But that view is belied by the plain language of the Asserted Claims, which recite

    separate transfer and generating limitations. Dr. Razavi has impermissibly merged two

    limitations into one, effectively reading the generating limitation out of the claims.

    As the Court recognized in its claim construction order, the plain and direct language

    of the Asserted Claims of the 551, 518, and 371 Patents indicates that while the transfer and

    generating limitations may be satisfied in any order, they are nonetheless separate and distinct

    limitations of the claims. See Dkt. 243 at 39-40. The Courts claim construction order does not

    state, as Qualcomm and Dr. Razavi incorrectly assert, that the transfer and generating

    limitations are one and the same and that by satisfying the transfer limitation, a piece of prior

    art also necessarily satisfies the separate and distinct generating limitation. Compare Dkt. 243

    at 40 (the transferred energy is the source of the energy used to generate the down-converted

    signal), with Ex. A (Razavi Report) at 166, 175-76, 188-90, 199-01, 207-08, 220-21, 231-33,

    239-41, 273-74, 362-63, 370-71, 377-78, 384-85, 391-92, 398-99, 405-06, 432, 438-39, 445,

    451, 457, 463, 486-92, 495, 521-24, 529-36, 538-45, and 546-52 (opining for each prior art

    reference and each Asserted Claim of the 551, 518 and 371 Patents that under the Courts

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 16 of 35 PageID 8515

  • McKool 885776 McKool 885776v7

    10

    claim construction order this generating step can happen simultaneously with the transferring

    of energy from the carrier signal but failing to set forth any evidence or opinion of how the

    generating limitation is satisfied or what satisfies it).

    Summary judgment of no invalidity based upon anticipation or obviousness of the

    Asserted Claims of the 551, 518, and 371 Patents is appropriate because Qualcomm has not

    properly compared any of these claims to any piece of prior art. With respect to each prior art

    reference, Dr. Razavi addresses the transferring limitation of each Asserted Claim of the 551,

    518, and 371 Patents, but fails to set forth any evidence as to how the prior art meets the

    generating limitation of each of these claims or what evidence from the prior art is alleged to

    meet it. Instead, Dr. Razavi merely offers some variation of:

    As the Court noted in its Claim Construction Order, this generating step can happen simultaneously with the transferring of energy from the carrier signal (Claim Construction Order, pp. 39-40), which is exactly what happens in [each prior art reference identified by Dr. Razavi].

    See Ex. A (Razavi Report) at 166 (as to 551 Patent, claim 1 and the Weisskopf reference); id.

    at 175-76, 188-90, 199-01, 207-08, 220-21, 231-33, 239-41, 273-74, 362-63, 370-71, 377-78,

    384-85, 391-92, 398-99, 405-06, 432, 438-39, 445, 451, 457, 463, 486-92, 495, 521-24, 529-36,

    538-45, and 546-52 (as to each of the other Asserted Claims of the 551, 518, and 371 patents

    and the other prior art). Other than opining that the generating limitation can happen

    simultaneously with the transferring limitation, nowhere in his analysis does Dr. Razavi

    opine or offer any evidence as to how the generating limitation is satisfied by any prior art

    reference or what evidence from the prior art he contends satisfies the generating limitation.

    Instead, Dr. Razavis analysis amounts to improperly reading the generating limitation out of

    each Asserted Claim of the 551, 518, and 371 Patents.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 17 of 35 PageID 8516

  • McKool 885776 McKool 885776v7

    11

    2. The Patents-In-Suit, Like The Courts Claim Construction Order, Recognize That The Generating Limitation May Be Satisfied By Discharging The Transferred Energy From The Storage Device.

    In its claim construction order, the Court stated that the transferred energy is the source

    of the energy used to generate the down-converted signal. Dkt. 243 at 40 (emphasis added).

    This recognition is consistent with the specification of the 551 Patent which explains that,

    unlike the prior art, the lower frequency or baseband signal is generated by discharging the

    transferred energy from the storage device. See, e.g., 551 Patent at 85:48-58; 518 Patent at

    86:15-25; 371 Patent at 6:32-54. The Patents-in-Suit teach the use of a switching device that

    facilitates the transfer of energy from the input signal to the storage device, such as a capacitor.

    See, e.g., 551 Patent at 66:55-67, 67:14-22, 85:48-58; 518 Patent at 86:15-25; 371 Patent at

    6:32-54. Transferred energy is discharged from the storage device to drive the downstream load

    to generate the lower frequency or baseband signal, resulting in a sawtooth-like waveform that

    represents the repeated charging and discharging of the storage device. See, e.g., 551 Patent at

    85:48-58, FIG. 57E; 518 Patent at 86:15-25, FIG. 58E; 371 Patent at 6:32-54, FIG. 20E; see

    also Dkt. 243 at 40.5 Such a sawtooth-like waveform is described in numerous examples in the

    Patents-in-Suit, illustrated here by reference to FIG. 57E of the 551 Patent:

    As the Patents-in-Suit explain, when the storage device charges (i.e., as energy is transferred in),

    the waveform rises. 551 Patent at 85:48-58 (5710A represent[s] energy transferred from the

    5 Inventor David Sorrells testified similarly: generating the lower frequency signal from the transferred energy requires that you transfer energy in the form of charge, to the output of the circuit during the time the aperture is off. Ex. H (Dep. of D. Sorrells (May 10, 2013) at 210:7-11; see also id. at 208:19 - 210:11.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 18 of 35 PageID 8517

  • McKool 885776 McKool 885776v7

    12

    analog AM carrier signal to a storage device.), FIG. 57E. Likewise, when the lower frequency

    signal is generated from the transferred energy, energy from the storage device is discharged,

    causing the waveform to fall. Id. at 85:48-58 (5710B represent[s] energy stored in a storage

    device continuing to drive the load.). In this way, the transferred energy is the source of the

    energy used to generate the down-converted signal. Dkt. 243 at 40 (emphasis added).

    In contrast to the Patents-in-Suit, 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. See, e.g., 551 Patent at

    55:8-25 (In the prior art, as explained by reference to FIG. 79D, [t]he holding module 2706

    substantially holds or maintains each under-sampled amplitude until a subsequent under-

    sample.); id. at FIG. 79D, FIG. 79E. Thus, in the prior art, energy transferred into the storage

    device is ideally held constant and used to create a more ideal voltage sampleit is not

    discharged and the transferred energy is not the source of the energy used to generate the down-

    converted signal. See, e.g., id. at 55:21-25 (The holding module 2706 outputs the under-

    sampled amplitudes [voltage values] as the down-converted signal 1308A.).6

    In light of the Courts claim construction order, the intrinsic record of the Patents-in-Suit,

    and the plain and direct language of the claims themselves, Qualcomm and Dr. Razavi failed

    to meet their burden of proof on the generating limitation. Qualcomm failed to provide any

    evidence that in the prior art the energy transferred into the storage device is discharged, and that

    this energy is the source of the energy used to generate the down-converted signal. See e.g.,

    6 As Peter Weisskopf, the author of one of the prior art references pointed to by Dr. Razavi, explained in his rebuttal expert report and deposition, in prior-art voltage samplers, like his paper, no energy discharge should occur because discharging energy negatively impacts the voltage sample. Ex. I (Weisskopf Rebuttal) at 8-13; see also Ex. J (Dep. of Weisskopf) at 95:4-18 (my paper teaches that no energy transfer should occur for the purpose of sampling the voltage accurately as stored on the cap; whereas, the 551 Patent actually requires the transfer of energy in the generation of the lower frequency signal).

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 19 of 35 PageID 8518

  • McKool 885776 McKool 885776v7

    13

    Dkt. 243 at 40; see also 551 Patent at 85:48-58, FIG. 57E; 518 Patent at 86:15-25, FIG. 58E;

    371 Patent at 6:32-54, FIG. 20E.

    In his deposition, Dr. Razavi confirmed that he made no showing that the prior art

    discharged energy or that this energy is the source to generate the down-converted signal.

    Instead, Dr. Razavi unequivocally testified that in his analysis the generating limitation did not

    require generating the lower frequency or baseband signal by discharging the transferred energy

    from a storage device and using that energy as the source of the energy used to generate the

    down-converted signal. Specifically, and as to the generating limitation of Claim 1 of the 551

    Patent, Dr. Razavi testified:

    Q. Well, do you have to discharge energy from the capacitor and use the discharged energy from the capacitor to generate the lower frequency of the baseband in order to comply with step 3 of Claim 1 of the 551 patent?

    A. No, I do not.

    Q. And thats the analysis and understanding that you applied in your opinion in Exhibit 1 [the Razavi Report]?

    A. Thats correct.

    Ex. C (Dep. of Dr. Razavi) at 264:5-14; id. at 267:12-16 (you dont have to discharge energy

    from that capacitor in order to create the lower frequency signal to satisfy the generating

    limitation). Dr. Razavi further confirmed that he applied this same understanding to each of the

    prior art references discussed in his report. Id. at 267:17 - 268:2. And, Dr. Razavi testified that:

    Q. You dont understand the Courts language on page 40 of the Claim Construction Order about the transferred energy as being the source of the energy used to generate the down-converted signal to require the discharge of energy from the capacitor to generate the down-converted signal?

    A. That is correct. In my opinion, that statement does not require the capacitor to be discharged to generate the down-converted signal.

    Id. at 277:11-21. Dr. Razavis deposition testimony confirms that, in contrast to the plain and

    direct language of the Patents-in-Suit, the intrinsic record of the Patents-in-Suit, and the Courts

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 20 of 35 PageID 8519

  • McKool 885776 McKool 885776v7

    14

    claim construction order, he did not set forth any evidence that any of the prior art meets the

    generating limitation by discharging the transferred energy from the storage device, and using

    that energy as the source of the energy to generate the down-converted signal.

    3. Any Voltage Differential Across The Poles Of The Storage Device Does Not Show Generating The Lower Frequency Signal From The Transferred Energy.

    Dr. Razavis expert report contains no opinion that any alleged voltage differential across

    the poles of an energy storage device (e.g., a capacitor) results in generating the lower

    frequency or baseband signal from the transferred energy. See Ex. A (Razavi Report) at 166,

    175-76, 188-90, 199-01, 207-08, 220-21, 231-33, 239-41, 273-74, 362-63, 370-71, 377-78, 384-

    85, 391-92, 398-99, 405-06, 432, 438-39, 445, 451, 457, 463, 486-92, 495, 521-24, 529-36, 538-

    45, and 546-52 (no mention or explanation as to how any alleged voltage differential across the

    poles of an energy storage device, like a capacitor, results in the generation of the lower

    frequency or baseband signal from the transferred energy).

    Despite the absence of such an opinion from his written report, in his deposition,

    Dr. Razavi provided some generalized and non-specific testimony about how the voltage

    measured across the poles of the storage device could become the down-converted signal, or

    could be used to construct the down-converted signal. Ex. C (Dep. of Dr. Razavi) at 265-67.

    While not tied to the specific teaching or disclosure of any prior art reference, he testified that:

    [T]he energy that is transferred to the capacitor gives rise or generates the voltage across the capacitor, because these are fundamentally related by a simple physics relation. The voltage -- the energy is equal to one-half of the capacitance value times the square of the voltage across the capacitor. So if you have non-zero energy on the capacitor, we must have a non-zero voltage on the capacitor.

    Id. at 270:14-23. Dr. Razavi then opined that a voltage differential could be the down-

    converted signal of the claims:

    Q. Referring to page 40 of the Courts Claim Construction Order, Exhibit 20, when the court says that the transferred energy is the source of the energy used to

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 21 of 35 PageID 8520

  • McKool 885776 McKool 885776v7

    15

    generate the down-converted signal, you understand that to mean the voltage differential across the capacitor is the down converted signal?

    A. That is correct, yes.

    Id. at 277:3-21.

    However, and in contrast to Dr. Razavis deposition testimony, the claim language at-

    issue in each Asserted Claim of the 551, 518, and 371 Patents does not claim generating a

    voltage differential across an energy storage device and then using the generated voltage

    differential to construct the down-converted signal. Rather, the claim language at issue in each

    Asserted Claim of the 551, 518, and 371 Patents requires generating the lower frequency

    signal from the transferred energy. See e.g., 551 Patent, Claim 1 (emphasis added); see also

    Dkt. 243 at 40. Voltage and energy are not the same, as Dr. Razavi himself confirmed.

    Ex. C (Dep. of Dr. Razavi) at 271:8-9 (Q. Now, are voltage and energy the same? A. No.).

    Moreover, and as Dr. Razavi also testified, in measuring the voltage across a capacitor, you

    want to do that without extracting any charge or energy from the capacitor. Id. at 273:6-10.

    Because voltage and energy are not the same, and because you do not discharge or extract

    energy from the storage device when measuring voltage, 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, 518, and 371 Patents.

    See e.g., 551 Patent, Claim 1 (emphasis added); see also Dkt. 243 at 40. Dr. Razavis deposition

    embellishment, therefore fails to establish any evidence that any prior art reference generates the

    lower frequency signal or baseband from the transferred energy. See also Part V.A.2 supra.

    4. Qualcomms Lack Of Expert Testimony And Evidence As To The Generating Limitation Entitles PakerVision To Summary Judgment Of No Anticipation Or Obviousness.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 22 of 35 PageID 8521

  • McKool 885776 McKool 885776v7

    16

    Expert discovery is closed and Qualcomm failed to provide any evidence or expert

    testimony explaining how any of the prior art of record meets the generating limitation of each

    Asserted Claim of the 551, 518, and 371 Patents, or what evidence might prove that the

    generating limitation is met by the prior art. Therefore, Qualcomm cannot meet its evidentiary

    burden on invalidity, and summary judgment in favor of ParkerVision is warranted.

    Both anticipation and obviousness involve two steps: (i) construction of the claims by

    the court as a matter of law; and (ii) a comparison of the construed claims to the prior art.

    Medichem, 353 F.3d at 933. Whereas herethe technology is sufficiently complex to fall

    beyond the grasp of ordinary laypersons, expert testimony is required to compare the construed

    claims to the prior art to establish either anticipation or obviousness. Alexsam, 2013 U.S. App.

    LEXIS 10009, at *28-29; Proveris Sci Corp, 536 F.3d at 1267. Such testimony must identify

    each claim limitation, state the witnesses interpretation of the claim limitation, and explain in

    detail how each claim limitation is disclosed in the prior art reference. Schumer v. Lab.

    Computer Sys., 308 F.3d 1304, 1315 (Fed. Cir. 2002). In short, the experts testimony must be

    clear as well as convincing. Id. Testimony that is confusing, conclusory, or generic, on the

    other hand, is legally insufficient to establish anticipation or obviousness. See id. at 1315-16;

    Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997); Koito Mfg. Co.

    v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004); Krippelz v. Ford Motor Co., 667

    F.3d 1261, 1268-69 (Fed. Cir. 2012); ActiveVideo Networks, Inc. v. Verizon Commcns, Inc., 694

    F.3d 1312, 1327 (Fed. Cir. 2012).

    As explained herein, neither Qualcomm nor Dr. Razavi has supplied the required expert

    testimony or evidence (let alone clear and convincing evidence) sufficient to show that any prior

    art reference of record satisfies the claimed generating limitation. Because Qualcomm has a

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 23 of 35 PageID 8522

  • McKool 885776 McKool 885776v7

    17

    complete failure of proof on the generating limitation, summary judgment of no anticipation or

    obviousness of the Asserted Claims of the 551, 518, and 371 Patents is therefore proper.

    B. Qualcomms Enablement Challenge Fails As A Matter Of Law.

    Qualcomm contends that the Patents-in-Suit are invalid under 35 U.S.C. 112 for lack of

    enablement. See Dkt. 248 at 3, 9. Qualcomms contention is based entirely upon the enablement

    analysis contained in the Razavi Report. Indeed in his report, Dr. Razavi argues that each

    Asserted Claim of the 551 Patent; Claims 1, 2, 3, 12, 17, 24, 27, and 82 of the 518 Patent; and

    Claims 1, 2, 22, 23, 25, and 31 of the 371 Patent are invalid for lack of enablement. Ex. A

    (Razavi Report) at 140-153, 351-353, 514-516.

    1. Dr. Razavi Fails To Apply The Legally Correct Test For Enablement.

    The test for enablement is whether one skilled in the art could make or use an

    embodiment of the invention by reading the specification coupled with information known in the

    art without undue experimentation. Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052,

    1070 (Fed. Cir. 2005). This is a legal determination, to be made by the Court. In re Wands, 858

    F.2d 731, 735 (Fed. Cir. 1988). In addition, enablement is not precluded by the necessity of

    some experimentation. Id. at 736. The enablement requirement is met if the description enables

    any mode of making and using the invention. Invitrogen, 429 F.3d at 1071.

    The only evidence in support of Dr. Razavis non-enablement opinion is his changing

    of the sampling rate of Mr. Sorrells pre-Markman, non-adversarial presentation so that it

    samples at the ninth sub-harmonic (n = 9). Ex. A (Razavi Report) at 145. Dr. Razavis

    enablement opinion is based entirely upon the conclusion that Mr. Sorrellss presentation, as

    modified, did not transfer energy in amounts distinguishable from noise (and interferers) when

    the harmonic was changed from n = 1 to n = 9. Dr. Razavi makes no other attempt to prove lack

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 24 of 35 PageID 8523

  • McKool 885776 McKool 885776v7

    18

    of enablement separate and apart from Mr. Sorrellss presentation, and sets forth no other

    evidence in support of his opinion:

    Q. So, separate and apart from the simulation that Mr. Sorrells provided to the Court, you dont have any independent opinions on whether the 551 patent is enabled, correct?

    A. I was -- I did not try to form any additional opinions regarding enablement because I thought this was an important indication of lack of enablement.

    Q. When you say this, youre referring to the simulation that Mr. Sorrells gave to the Court, correct?

    A. And my analysis that it [Mr. Sorrellss presentation] failed for N equals 9, yes.

    Ex. C (Dep. of Dr. Razavi) at 346:10-24; see also id. at 341:11-24, 342:20 - 343:23.

    However, the enablement test does not require, as Qualcomm contends, that the invention

    must be shown to work for all potential sub-harmonic values using the same set of conditions as

    presented in a non-adversarial technology tutorial made more than a decade after the patents

    were filed. Green Edge Enters., LLC v. Rubber Mulch etc., LLC, 620 F.3d 1287, 1299 (Fed. Cir.

    2010) (enablement is determined at the time of filing). Rather, a patent is enabled if one skilled

    in the art could implement a down-converter operating at the ninth sub-harmonic (n = 9) using

    any set of values known to one of ordinary skill in the art. Invitrogen, 429 F.3d at 1071.

    Having applied the legally incorrect test, Qualcomm fails to satisfy its burden to come

    forward with sufficient evidence to prove non-enablement by clear and convincing evidence.

    See Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1361 (Fed. Cir. 1998) (noting that a

    defendant challenging the validity of patent for lack of enablement can carry its burden only by

    showing that all of the disclosed alternative modes are insufficient to enable the claims

    (emphasis added)); see also id. at 1359 (stating that patent challengers evidence must have

    done more than simply raise some doubt regarding enablement).

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 25 of 35 PageID 8524

  • McKool 885776 McKool 885776v7

    19

    2. The Patents-in-Suit Provide Examples Operable At The Ninth Sub-Harmonic.

    Figures 86, 88, 90, and 92 of the 551 Patent show example circuits operating at the ninth

    sub-harmonic. 551 Patent at 108:56-109:20. Example simulation waveforms operating at the

    ninth sub-harmonic are shown in Figures 87, 89, 91, and 93 of the 551 Patent, which correspond

    to the circuits in Figures 86, 88, 90, and 92, respectively. Id. at 108:56-109:20. Dr. Razavi never

    recognizes nor accounts for these examples in the patents. Qualcomm cannot meet its burden to

    prove that the Patents-in-Suit are non-enabled, because the patents expressly describe

    embodiments operating at the ninth sub-harmonic and Dr. Razavi does not dispute nor address

    these examples in his report. See Invitrogen, 429 F.3d at 1071; see also Green Edge Enters, 620

    at 1299 (enablement determined as of the effective filing date of the patents application).

    3. Dr. Razavi Admits That Undue Experimentation Is Not Required To Make Embodiments Of The Invention Operable At The Ninth Sub-harmonic.

    Dr. Razavi admitted that with some small modifications he could make the allegedly

    non-enabled circuit he simulated work.7 Ex. C (Dep. of Dr. Razavi) at 332:15-21. ParkerVision,

    through its expert Dr. Prucnal, demonstrated a circuit operable at the ninth sub-harmonic. Ex. B

    (Prucnal Rebuttal) at 28-30. Because the parties experts agree that those of ordinary skill in the

    art can make embodiments of the invention work at the ninth sub-harmonic without undue

    experimentation, the claims are enabled. Wands, 858 F.2d at 736; Invitrogen, 429 F.3d at 1071.

    C. Qualcomm Fails To Show That Any Asserted Claim Is Indefinite.

    In its Answer and Counterclaim, Qualcomm contends that Claims 113, 161, 202, and 203

    of the 551 Patent and Claims 4 and 7 of the 845 Patent are invalid as indefinite under 35 U.S.C. 7 In his deposition, Dr. Razavi stated that it was possible that the circuit he simulated at n = 9 for enablement purposes would produce a usable result if the interferers were removed. Ex. C (Dep. of Dr. Razavi) at 331:7-10. Dr. Razavis enablement analysis is further deficient because it assumes that the n = 9 simulation must work in the presence of interferers, even though interferers are not part of any claim. See id. at 339:7-340:25. The Patents-in-Suit do not claim or require the transferred energy be distinguishable from interferers (the claims never mention interferers). Instead, the Patents-in-Suit, as construed by the Court, require the transfer of energy in amounts distinguishable from noise. Noise and interferers are treated separately in RF design. See, e.g., id. at 126:23-127:5.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 26 of 35 PageID 8525

  • McKool 885776 McKool 885776v7

    20

    112(2).8 Dkt. 248 at 5, 11. The Razavi Report makes similar indefiniteness contentions,

    adding a contention that Claims 81 and 91 of the 518 Patent are invalid as indefinite. Ex. A

    (Razavi Report) at 23, 136-139, 350, 749-752.

    Proof of indefiniteness requires an accused infringer to show by clear and convincing

    evidence that one of ordinary skill in the art could not discern the boundaries of the claim based

    on the claim language, the specification, and the prosecution history, as well as his knowledge of

    the relevant art. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1366 (Fed. Cir. 2011).

    The definiteness requirement does not compel absolute clarity; rather, only claims not amenable

    to construction or insolubly ambiguous are indefinite. Datamize, LLC v. Plumtree Software,

    Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (If the meaning of the claim is discernible, even

    though the task may be formidable and the conclusion may be one over which reasonable

    persons will disagree, we have held the claim sufficiently clear to avoid invalidity on

    indefiniteness grounds. (quoting Exxon Research & Engg Co. v. United States, 265 F.3d 1371,

    1375 (Fed. Cir. 2001))). That some claim language may not be precise does not automatically

    render a claim invalid. Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826

    (Fed. Cir. 1984). Indeed, close questions of indefiniteness are properly resolved in favor of the

    patentee. See Exxon Research & Engg, 265 F.3d at 1380.

    1. The Term Substantial Does Not Result In The Indefiniteness Of Claims 113, 161, 202, and 203 of the 551 PatentThe Court Construed This Term.

    Qualcomm contends that Claims 113, 161, 202, and 203 of the 551 Patent are indefinite

    for using the phrase substantial amounts of energy. Ex. A (Razavi Report) at 137-138. Dr.

    Razavi avers that substantial is a term of degree and argues that it is indefinite because the

    8 Section 112(2) requires that [t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 27 of 35 PageID 8526

  • McKool 885776 McKool 885776v7

    21

    specification and claims fail to provide any guidance as to what constitutes substantialas

    opposed to insubstantialamounts of energy. Id. at 138.

    However, the law is clear that the meaning of the term substantial in a patent claim is

    readily understandable and is not indefinite. See, e.g., Deere & Co. v. Bush Hog, LLC, 703 F.3d

    1349, 1359 (Fed. Cir. 2012) (This court has repeatedly confirmed that relative terms such as

    substantially do not render patent claims so unclear as to prevent a person of skill in the art

    from ascertaining the scope of the claim.).9 In fact, the Court has already construed this

    allegedly indefinite term. In its Claim Construction Order, this Court construed substantial

    amounts of energy as energy in amounts that are distinguishable from noise. Dkt. 243 at 10

    & n.7, 13. Having construed the allegedly indefinite term as a matter of the law, the Court has

    already determined that the term substantial amounts of energy is not insolubly ambiguous.

    Furthermore, establishing that the term is not insolubly ambiguous, Dr. Razavi applied this

    allegedly indefinite term with no difficulty in his anticipation analysis. See Ex. A (Razavi

    Report) at 314-17, 329-30, 342-44.

    2. The Term Accurate Does Not Result In The Indefiniteness Of Claims 113, 202, and 203 of the 551 Patent and Claims 81 and 91 of the 518 Patent.

    Qualcomm contends that Claims 113, 202, and 203 of the 551 Patent and Claims 81 and

    91 of the 518 Patent are indefinite for using the phrase accurate voltage reproduction. Ex. A

    (Razavi Report) at 139, 350. Dr. Razavi avers that accurate is a term of degree and that the

    specification and claims did not provide guidance as to the terms meaning. Id. at 139.

    However, in an inherent contradiction, while addressing the alleged anticipation of Claim

    113 of the 551 Patent, Dr. Razavi interprets the phrase substantially prevents accurate voltage

    9 See also LNP Engg Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1359-60 (Fed. Cir. 2001) (the term substantially completely wetted was not indefinite because the intrinsic evidence helped elucidate the terms meaning); Andrew Corp. v. Gabriel Elecs., Inc., 847 F.2d 819, 821-22 (Fed. Cir. 1988) (the phrase substantially equal was not indefinite and adding that [s]uch usages, . . . have been accepted . . . and upheld by the courts.).

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 28 of 35 PageID 8527

  • McKool 885776 McKool 885776v7

    22

    reproduction of the carrier signal during apertures to mean that the input signal is negatively

    impacted or distorted during each aperture and he contends that several references anticipate

    this claim limitation. Id. at 315-317. The fact that Qualcomm proffers a construction of this

    allegedly insolubly ambiguous term for anticipation purposes, which requires comparison of the

    construed claim to the prior art, demonstrates that the term is not, in fact, insolubly ambiguous.

    See Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (a claim cannot

    be both indefinite and anticipated); Energizer Holdings, Inc. v. Intl Trade Commn, 435 F.3d

    1366, 1371 (Fed. Cir. 2006) ([a] claim that is amenable to construction is not invalid on the

    ground of indefiniteness); see also Emcore Corp. v. Optium Corp., No. 6-1202, 2008 U.S. Dist.

    LEXIS 59794, at *20 (W.D. Pa. Aug. 5, 2008) ([t]he fact that [defendant] could first offer a

    definition cuts against any conclusion that the term is not amenable to construction).

    Accordingly, the term accurate voltage reproduction is amenable to construction (as

    Qualcomm has recognized), and is understood by those of ordinary skill in the art (e.g., Dr.

    Razavi himself) and, therefore, is not indefinite. See Enzo Biochem, 599 F.3d at 1332 (If a

    claim is indefinite, the claim, by definition, cannot be construed.); see also Ex. B (Prucnal

    Rebuttal) at 25.

    3. Claims 4 And 7 Of The 845 Patent Are Not Indefinite Due To Minor Typographical Errors.

    Qualcomm contends that Claim 4 of the 845 Patent is indefinite because the argument

    (t+N) of the term A sin (t+N) does not have the dimension of phase. Ex. A (Razavi Report) at 750. Dr. Razavi is correct that a sine function should have the dimensions of phase,

    but he fails to note that the equation at the end of Claim 4 contains the proper dimensions:

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 29 of 35 PageID 8528

  • McKool 885776 McKool 885776v7

    23

    Further, the argument (t+), not (t+N), is used extensively in the specification. See, e.g., 845 Patent at 134:10-36, 152:50-67, 153:22, 157:5-15. It is readily apparent that a typographical

    error was made in Claim 4. Thus, in light of the specification, the use of the correct argument at

    the end of the claim, and the claims specific teaching that the term A sin (wt+t) is an approximate half cycle of the carrier signal, the meaning of Claim 4 is readily ascertainable and,

    therefore, not indefinite. See Johnson & Johnson Vision Care, Inc. v. CIBA Vision Corp., 648 F.

    Supp. 2d 1294, 1336 (M.D. Fla. 2009) ([T]he person of ordinary skill in the art is deemed to

    read the claim term not only in the context of the particular claim in which the disputed term

    appears, but in the context of the entire patent, including the specification. (quoting Phillips v.

    AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005))); see also Isco Intl, Inc. v. Conductus, Inc.,

    No. 01-847 GMS, 2003 U.S. Dist. LEXIS 1880, at *15-17 (D. Del. Feb. 10, 2003)

    (Typographical errors are regularly disregarded by courts when the error is apparent in light of

    the claims, specification, or file history. (citations omitted)); Ex. B (Prucnal Rebuttal) at 26.

    Like Claim 4, Qualcomm contends that Claim 7 of the 845 Patent is indefinite. The

    claim provides an equation representing the accumulated energy from an approximate half cycle

    of the carrier signal:

    Dr. Razavi argues that because the integral within the parenthesis is missing a dt that the

    equation is mathematically meaningless and the claim insolubly ambiguous.10 Ex. A (Razavi

    Report) at 751-752. Dr. Razavi is correct that the integral in Claim 7 should include a dt

    10 In contrast to his inability to ascertain the meaning of the integral in Claim 7, Dr. Razavi had no apparent difficulty in interpreting a misplaced dt operator in the Weisskopf reference for anticipation purposes. See Ex. A (Razavi Report) at 755. The dt operator in the equation at 755 of the Razavi Report should not be included as part of the exponential function, the same error Dr. Razavi opines renders claim 7 of the 845 Patent indefinite.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 30 of 35 PageID 8529

  • McKool 885776 McKool 885776v7

    24

    operator, but Dr. Razavi fails to look to the specification and claim to determine whether the

    correct placement of the dt operator is readily ascertainable. Claim 7 refers to the non-matched

    filter embodiment, or Finite Time Integrating Embodiment Result, described in the

    specification. See 845 Patent at 138:14-18. Claim 7 describes the function Si(t) as the carrier

    signal, which is represented as sin(2ft) in the specification.11 See id. at 135:35-50. Recognizing that the dt operator was misplaced and referring to the specification, which teaches that the above

    integral should equal 22

    ATA , one of ordinary skill in the art would readily ascertain that the dt

    operator should be within the parenthesis, with the equation rewritten as:12

    20

    dttSAE AT i Id. at 138:14-18; see also Ex. B (Prucnal Rebuttal) at 27. Thus, the meaning of Claim 7 is not

    insolubly ambiguous and is not indefinite. See Johnson & Johnson, 648 F. Supp. 2d at 1336

    (one must look to entire patent, including specification, to understand disputed term).

    D. Despite The Broad Assertions In Its Counterclaim, Qualcomm Provides No Evidence That The Patents-In-Suit Are Otherwise Invalid.

    In its Answer and Counterclaim, Qualcomm contends that the Asserted Claims are

    invalid for failure to comply with 35 U.S.C. 112.13 Dkt. 248 at 3, 9. In his expert report,

    Dr. Razavi states that he expect[ed] to testify that Claims 9 and 31 of the 551 Patent are invalid

    because they are [not] adequately described, but does not otherwise provide evidentiary support

    11 Because TA is described as an approximate half cycle, ft2sin can be rewritten as ATtsin . 12 One of ordinary skill in the art could readily solve this equation to prove that the dt operator should be placed within the parenthesis:

    2220

    2

    0

    20coscossin

    AAAT

    i

    T ATATdtTtAdttSAE AA

    13 Section 112(1) requires that [t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 31 of 35 PageID 8530

  • McKool 885776 McKool 885776v7

    25

    for any opinion related to alleged invalidity for failure to satisfy the written description

    requirement of 112. Ex. A (Razavi Report) at 22. At his deposition, Dr. Razavi testified that

    he wished to withdraw this sentence from his expert report and that he was not expecting to

    offer a written description invalidity opinion. Ex. C (Dep. of Dr. Razavi) at 318:4 - 319:11.

    Accordingly, as Dr. Razavi has withdrawn this contention, there is a complete lack of evidence,

    and the Court should enter summary judgment, in favor of ParkerVision, on Qualcomms

    counterclaim as to 112 and inadequate written description. Celotex, 477 U.S. at 322-23.

    Qualcomm also contends that [e]ach claim of the Patents-in-Suit is invalid for failure to

    comply with one or more provisions of 35 U.S.C. 101, 102, 103, and 112. Dkt 248 at 3-5.

    However, Qualcomm fails to provide any evidence or any expert testimony regarding: (i)

    patentable subject matter and double patenting under 101; (ii) abandonment, prior foreign

    filing, or derivation from another under 102; or (iii) best mode under 112. See Celotex, 477

    U.S. at 325 (noting Fed. R. Civ. P. 56 amended to disapprove a line of cases allowing a party

    opposing summary judgment to resist a properly made motion by reference only to its

    pleadings.). Accordingly, the Court should enter summary judgment in favor of ParkerVision

    on each of these contentions, which plainly lack any evidentiary support in the record. See id. at

    322 ([T]he plain language of Rule 56(c) mandates the entry of summary judgment, after

    adequate time for discovery and upon motion, against a party who fails to make a showing

    sufficient to establish the existence of an element essential to that partys case, and on which that

    party will bear the burden of proof at trial.).

    VI. CONCLUSION

    For the foregoing reasons, ParkerVision respectfully requests the Court grant this motion

    and summarily adjudicate Qualcomms invalidity theories.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 32 of 35 PageID 8531

  • McKool 885776 McKool 885776v7

    26

    May 22, 2013

    Respectfully submitted, McKOOL SMITH, P.C. /s/ Douglas A. Cawley Douglas A. Cawley, Lead Attorney Texas State Bar No. 04035500 E-mail: [email protected] Richard A. Kamprath Texas State Bar No.: 24078767 [email protected] Ivan Wang Texas State Bar No.: 24042679 E-mail: [email protected] McKool Smith P.C. 300 Crescent Court, Suite 1500 Dallas, Texas 75201 Telephone: (214) 978-4000 Telecopier: (214) 978-4044 T. Gordon White Texas State Bar No. 21333000 [email protected] Kevin L. Burgess Texas State Bar No. 24006927 [email protected] Josh W. Budwin Texas State Bar No. 24050347 [email protected] Leah Buratti Texas State Bar No. 24064897 [email protected] Mario A. Apreotesi Texas State Bar No. 24080772 [email protected] McKool Smith P.C. 300 West Sixth Street, Suite 1700 Austin, Texas 78701 Telephone: (512) 692-8700 Telecopier: (512) 692-8744 SMITH HULSEY & BUSEY /s/ James A. Bolling

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 33 of 35 PageID 8532

  • McKool 885776 McKool 885776v7

    27

    Stephen D. Busey James A. Bolling Florida Bar Number 117790 Florida Bar Number 901253 225 Water Street, Suite 1800 Jacksonville, Florida 32202 (904) 359-7700 (904) 359-7708 (facsimile) [email protected] ATTORNEYS FOR PLAINTIFF PARKERVISION, INC.

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 34 of 35 PageID 8533

  • McKool 885776 McKool 885776v7

    28

    CERTIFICATE OF SERVICE

    I HEREBY CERTIFY that on this day, May 22, 2013, I electronically filed the foregoing

    with the Clerk of the Court by using the CM/ECF system which will send a notice of electronic

    filing to all counsel of record.

    /s/ Leah B. Buratti

    Leah B. Buratti

    Case 3:11-cv-00719-RBD-TEM Document 269 Filed 05/22/13 Page 35 of 35 PageID 8534


Recommended