UNITED STATES DISTRICT COURT 

WESTERN DISTRICT OF TEXAS

WACO DIVISION

PARKERVISION, INC.,

 

 Plaintiff, 

 v. 

INTEL CORPORATION, 

 Defendant. 

Case No. 6:20-cv-00108-ADA

JURY TRIAL DEMANDED

PARKERVISION’S OPPOSITION TO INTEL’S 

MOTION FOR FURTHER CLAIM CONSTRUCTION

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 1 of 17
i 

Table of Contents

Page 

I. The timing of Intel’s motion demonstrates that Intel is using the IPR as a pretext for a 

claim construction do-over. ................................................................................................ 1

II. There was no disclaimer of “mixers” or “mixing” during the IPR. .................................... 1

A. ParkerVision’s expert declaration demonstrates that there was no disclaimer of 

“mixers” or “mixing.”............................................................................................. 3

B. A transcript of a call with the Board demonstrates that there was no disclaimer 

of “mixers” or “mixing.” ......................................................................................... 4

C. ParkerVision’s POR contrasting energy samplers from specific types of mixers 

demonstrates there was no disclaimer of “mixers” or “mixing.” ............................ 6

III. There is objective evidence that there is no clear and unequivocal disclaimer. ................. 8

IV. There is no other reason for the Court to change its prior claim construction. ................... 9

A. Revisiting the construction of the downconverter terms would allow Intel to 

reargue the same claim construction positions that this Court has rejected. ........ 10

B. The case law upon which Intel relies does not support revisiting claim 

construction under the present facts. ..................................................................... 12

V. CONCLUSION ................................................................................................................. 13

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 2 of 17
ii

TABLE OF AUTHORITIES

 Page(s) 

Cases

Akamai Techs., Inc. v. Limelight Networks, Inc., 

805 F.3d 1368 (Fed. Cir. 2015)................................................................................................11

Aylus Networks, Inc. v. Apple Inc., 

856 F.3d 1353 (Fed. Cir. 2017)..............................................................................................2, 4

Chrimar Sys. v. Alcatel-Lucent, Inc., 

2015 U.S. Dist. LEXIS 1801 (E.D. Tex., Jan. 7, 2015) ...........................................................13

Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 

880 F.3d 1356 (Fed. Cir. 2018)..................................................................................................2

Ericsson Inc. et al. v. TCL Comm. Tech. Holdings Ltd. et al., 

Case No. 2:15-cv-00011-RSP, Memorandum Opinion and Order 

(Nov. 4, 2017) (E.D. Tex.) .......................................................................................................11

Omega Eng’g, Inc. v. Raytek Corp., 

334 F.3d. 1314 (Fed. Cir. 2003).................................................................................................2

Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 

853 F.3d 1376 (Fed. Cir. 2017)..................................................................................................2

SEB S.A. v. Montgomery Ward, 

594 F.3d 1360 (Fed. Cir. 2010)..................................................................................................2

Standard Oil Co. v. Am. Cyanamid Co., 

774 F.2d 448 (Fed. Cir. 1985)................................................................................................4, 6 

Tech. Props. Ltd. v. Huawei Techs. Co., 

849 F.3d 1349 (Fed. Cir. 2017)..................................................................................................2

VirnetX Inc. v. Apple Inc., 

931 F.3d 1363 (Fed. Cir. 2019)..................................................................................................3

Statutes

35 U.S.C. § 315(b) .........................................................................................................................12

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 3 of 17
1 

I. The timing of Intel’s motion demonstrates that Intel is using the IPR as a pretext for 

a claim construction do-over. 

Over fourteen months have passed since the Court issued its claim construction order in 

this case. Now that the case has developed, Intel realizes that it has a problem with infringement 

and needs to do something. So, Intel created a pretext – a purported disclaimer – for having this 

Court reconsider its constructions of terms (which Intel already lost). Intel does so in order to

exclude anything called a “mixer”1

 (a term that has become ubiquitous for many types of 

circuits) from the asserted claims to further a non-infringement defense. 

Specifically, Intel asserts that during IPR2020-01302 (“IPR-1302” or “IPR”) of U.S. 

Patent No. 7,539,474 (“the ’474 patent”), ParkerVision disclaimed “mixers” and “mixing” and 

this, in turn, not only affects the ’474 patent but terms in five additional patents as well.2

 D.I. 117 

at 2-3. Not so.

II. There was no disclaimer of “mixers” or “mixing” during the IPR.

In the IPR, ParkerVision argued that the claims of the ’474 patent relate to energy 

samplers (energy transfer systems). Ex. 1 (IPR-1302 Patent Owner Response) at 2 (“all of the 

challenged claims are directed to a sampling system, and in particular, an energy sampling

system”); 20 (“[t]he challenged claims only cover energy sampling and the use of switches”); 

Ex. 2 (IPR-1302 Patent Owner Sur-Reply) at 1 (“the ’474 patent claims are directed to a downconversion technique called sampling”). ParkerVision’s point was to explain that the particular 

conventional mixing method of the prior art (“a mixer us[ing] a continuous time-vary resistor”) 

did not operate according to the claimed method (energy sampling, which involves the use of a 

switch). See, e.g., Ex. 1 at 20-29; Ex. 2 at 2-3; Ex. 3 (IPR-1302 Declaration of Dr. Michael Steer)

1 Intel is trying to exclude anything called a “mixer” regardless of its operation or function. 2 Intel glosses over that ParkerVision’s statements upon which Intel relies were filed over 10 

months ago when ParkerVision first filed its Patent Owner’s Response (“POR”).

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 4 of 17
2

at ¶¶178-184; Ex. 4 (IPR-1302 Transcript from 11/10/2021 PTAB Conference Call) at 5:11-6:6. 

At bottom, Intel asserts that ParkerVision took the position in the IPR that energy samplers are 

not mixers and do not multiply any type of signal, and therefore clearly and unequivocally 

disclaimed “mixers” and “mixing.” D.I. 117 at 3-15. But this is false. Intel misrepresents and 

contorts the facts in hopes of getting a claim construction do-over to support its non-infringement 

case.

It is well established that a disclaimer must be “clear and unequivocal” to be effective.

Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1359 (Fed. Cir. 2017) (quoting Omega Eng’g, 

Inc. v. Raytek Corp., 334 F.3d. 1314, 1325-26 (Fed. Cir. 2003)). Further, the Federal Circuit has 

found that whether a statement to the PTO “constitutes a clear and unmistakable disavowal of 

claim scope depends on the context.” Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 

F.3d 1376 (Fed. Cir. 2017) (quoting Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 

1355 (Fed. Cir. 2014)); see also Tech. Props. Ltd. v. Huawei Techs. Co., 849 F.3d 1349, 1357-58 

(Fed. Cir. 2017) (“When determining whether disclaimer applies, we consider the statements in 

the context of the entire prosecution.”). “When the alleged disclaimer is ambiguous or amenable 

to multiple reasonable interpretations, [the court] decline[s] to find prosecution disclaimer.” Core 

Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1367 (Fed. Cir. 2018) (citing 

Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016)). Moreover, the 

Federal Circuit has declined to find clear and unequivocal disclaimer in prosecution history 

statements where an “attempt to create a disclaimer simply stretches [the] prosecution history too 

far.” SEB S.A. v. Montgomery Ward, 594 F.3d 1360, 1371 (Fed. Cir. 2010); see also Omega 

Eng’g, 334 F.3d. at 1324. 

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 5 of 17
3 

A simple review of the IPR record demonstrates that ParkerVision made no disclaimer 

whatsoever, let alone a “clear and unequivocal” disclaimer of “mixers” or “mixing.” Further, 

nothing in the context of the specification or other prosecution history of the ’474 patent 

establishes a clear unequivocal disavowal of claim scope. See VirnetX Inc. v. Apple Inc., 931 

F.3d 1363, 1379 (Fed. Cir. 2019) (finding no disclaimer when the specification failed to evidence 

a clear disavowal of claim scope). 

A. ParkerVision’s expert declaration demonstrates that there was no disclaimer

of “mixers” or “mixing.”

First, the IPR record includes a sworn declaration of Dr. Michael Steer (ParkerVision’s 

expert) attached to ParkerVision’s POR. Ex. 1 at vi (“Exhibit No. 2027[,] Declaration of Dr. 

Michael Steer”); Ex. 3. Importantly, Dr. Steer’s declaration directly contradicts Intel’s disclaimer

argument. Specifically, Dr. Steer explained that energy samplers can be referred to as mixers. 

Prior to the time of the invention of the ’474 patent, a “mixer” referred to the 

configuration set forth above, which was not an energy sampler. After the time of 

the invention of the ’474 patent, companies began to develop energy samplers and 

refer to them as “mixers.

3

 

Ex. 3 at ¶163. 

Dr. Steer went on to explain that the term “mixer” has become a generic term and in 

order to understand what a “mixer” refers to, one must analyze the circuit.

As such, the term “mixer” has become a generic term to refer to different 

configuration that performs down-conversion or up-conversion. As used today, 

the term “mixer” really says nothing about how a circuit operates or the specific 

configuration of the circuit. As such, when analyzing a component referred to as 

a “mixer” one needs to look at the operation and configuration of the circuit to 

determine the technology that is being implemented. 

Id. at ¶163. 

ParkerVision once again reiterated this statement in its sur-reply. Ex. 2 at 4 n.2. 

3

 Unless otherwise noted, all emphasis has been added. 

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 6 of 17
4 

Unsurprisingly, Intel now ignores these statements from Dr. Steer, despite the fact that 

they are in the prosecution record. Ex. 2 at 4; see Aylus, 856 F.3d at 1359 (citing Standard Oil 

Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985)). Dr. Steer’s statements alone 

demonstrate that ParkerVision did not disclaim a “mixer” from being an energy sampler. Quite 

the opposite – Dr. Steer stated that energy samplers are sometimes called “mixers.” This directly 

contradicts Intel’s proposed constructions which seek to exclude anything called a “mixer” or 

“mixing” from the asserted claims. 

B. A transcript of a call with the Board demonstrates that there was no

disclaimer of “mixers” or “mixing.” 

Second, the IPR record includes a transcript of a conference call with the Board during 

which ParkerVision expressly stated that it was not disclaiming “mixers” or “mixing.” Ex. 4 at 

5:11-6:6. That conference call was prompted by Intel’s attempt in its papers to mischaracterize 

the following, out-of-context passage from hundreds of pages of argument that ParkerVision 

filed as part of the IPR record: 

In seeking to develop a solution for down-converting an RF signal, however, 

ParkerVision took a different approach and focused on energy sampling instead of 

mixing. Energy sampling (also known as energy transfer) was/is a fundamentally 

different and competing method to mixing. Energy samplers, unlike mixers, do 

not mix (i.e., multiply) two signals together in order to down-convert a signal.

Ex. 1 at 22 (original emphasis omitted). 

As expected, Intel attempts the same mischaracterization trick here, using this statement as the 

foundation for its present disclaimer argument. D.I. 117 at 5 (citing Ex. 1 at 22) (original 

emphasis omitted). But ParkerVision already foresaw Intel’s plan, and therefore clarified the 

above-quoted passage as part of the IPR record and called out Intel’s misrepresentation to the 

Board. 

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 7 of 17
5 

During the November 10, 2021 conference call, citing its previously-filed POR and SurReply brief, ParkerVision explained that it did not disclaim “mixers” in general (a term that has 

become ubiquitous) or that energy samplers do not multiply: 

Intel requested a written decision to include what Intel says is ParkerVision’s 

representation regarding sampling. And I just want to make sure ParkerVision's 

[sic] representation is clear for the record.

Intel characterizes ParkerVision’s position, at least as they did in the last paper 

that they filed, are mixers that multiplied signals are not samplers. 

To be clear that’s not ParkerVision’s position. That’s Intel’s view of our position. 

Our position or ParkerVision’s position in the POR, and today, is that the claimed 

samplers can be modeled to multiply a sine wave with a rectangular pulse

resulting in a transistor acting as a switch that samples. 

This is different than mixers of the prior art marked in the Larson/Butler 

references, which multiplied two sine waves resulting in no sampling because the 

transistor acts as a continuous time varying resistor. Our point was that 

multiplying different signals results in transistors operating differently, not that 

mixers multiply and energy samplers do not.

Ex. 4 at 5:11-6:6 (capitalization removed). 

A certified court reporter prepared a transcript of the conference call and the Board requested 

that the transcript be filed as an exhibit i.e., so that it could be put into the record. (“JUDGE 

GERSTENBLITH: . . . You probably already know this but once you get the draft of the 

transcript, please share it with petitioner. Once everybody confirms that it’s accurate, please file 

it as an exhibit in the [IPR2020-]1302 case.”). Id. at 4:3-9. As the Board requested, Intel

confirmed the accuracy of the transcript and it was filed as Exhibit 2031 in the IPR record. 

ParkerVision’s statements in the transcript (on the record), however, are problematic for 

Intel. So now Intel attempts to argue that the transcript is not part of the IPR record.4 But Intel is 

4

 Intel’s position is that the Board did not rely on the transcript, so it is not part of the record. D.I. 

117 at 14. Whether or not the Board relied on the transcript, however, does not expunge the 

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 8 of 17
6 

wrong. Indeed, the Board’s Final Written Decision (FWD) directly contradicts Intel’s position. 

In particular, the FWD states: “[a]t Patent Owner’s request, we held a conference call on 

November 10, 2021, a transcript of which is in the record. Ex. 2031.” Ex. 5 (IPR-1302 Final 

Written Decision) at 3 n.1. The Board also specifically cited to the transcript in its Final Written 

Decision. Id. at 145; see also id. at 19. Moreover, nowhere in the IPR record did the Board ever 

indicate that ParkerVision’s statements were being interpreted as a disclaimer.

6

Consequently, ParkerVision’s on-the-record statements during the November 10th call

demonstrate that ParkerVision did not disclaim “mixers” or “mixing.” 

C. ParkerVision’s POR contrasting energy samplers from specific types of 

mixers demonstrates there was no disclaimer of “mixers” or “mixing.” 

Intel points to the passage quoted in Section I.B. above as well as other instances in the

IPR where ParkerVision compared and contrasted energy samplers with mixers/mixing systems. 

D.I. 117 at 5-6. But all of those statements were made in the context of the prior art disclosures – 

context that Intel ignores in its arguments. But that context is key here.

In its POR, ParkerVision was not distinguishing energy samplers from all so-called 

“mixers.”7 Instead, ParkerVision contrasted energy samplers from the specific type of prior art 

transcript from the IPR record. See Standard Oil Co., 774 F.2d at 452. Regardless of whether the 

Board relied on the transcript, ParkerVision’s statements on the call were merely a summary of 

ParkerVision’s briefing on which the Board relied. 5 The Board stated: “The parties’ agreement as to ‘sampling’ is dispositive of the issues 

presented in this proceeding because the parties also agree that neither Larson nor Butler, the 

prior art references asserted by Petitioner in this proceeding, teach ‘sampling.’ See Pet. Reply 13 

(agreeing that Larson and Butler do not render unpatentable the claims remaining in the case); 

see Ex. 2031, 6:20–22 (Patent Owner explaining that, ‘as the Board is aware both parties agree 

that sampling is in the claims, and the claims are not invalid in view of all the cited prior art’).” 

6 In fact, the Board’s Final Written Decision repeatedly characterizes the ’474 patent claims as

“requir[ing] sampling,” never as disclaiming mixers or mixing. The Board’s understanding of the 

claims is consistent with the statements and positions ParkerVision made in the IPR record.

7 ParkerVision did not distinguish energy samplers from “mixers” in general because, after the 

invention of the ’474 patent, “mixer” became a generic term without a well-defined meaning and 

encompassed energy samplers. 

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 9 of 17
7 

“mixers” – mixers that use continuous time-varying resistors, instead of switches, to downconvert a signal. 

Indeed, ParkerVision and its expert spent a significant amount of time describing the 

differences in operation between energy sampling and mixing using a continuous time-varying 

resistor. See, e.g., Ex. 1 at 20-29; Ex. ¶¶158-162, 178-202, 219-229. ParkerVision noted that 

while both methods use similar components (e.g., transistors, such as field effect transistors 

(FETs)), these components are used in different ways in a circuit to create a desired result. Ex. 1 

at 29. 

ParkerVision explained that “[t]he way in which a FET behaves (and is used) depends, in 

part, on the LO signal (e.g., independent control input) that the FET receives.” Ex. 1 at 26. 

Specifically, ParkerVision explained that a local oscillator can generate different types of signals

as shown below. Ex. 1 at 25-26; Ex. 3 at ¶¶102-107. 

ParkerVision explained that when a transistor in a mixer receives a sine wave from the 

LO, the transistor acts as a continuous time-varying resistor (i.e., the mixer is a continuous timevarying/resistive mixer). Id. at ¶201, 217. But, when a transistor in a mixer receives a square 

wave or a train of pulses from the LO, the transistor acts as a switch. Id. at ¶202, 217. 

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 10 of 17
8 

Notably, as shown above, when discussing mixers, ParkerVision showed a specific type

of mixer – one multiplying two sinusoidal waves (yellow) (the RF sine wave and a sine wave

from the local oscillator). Id. at ¶¶157-163. Thus, ParkerVision was illustrating a continuous 

time-varying mixer.

It is within this context that ParkerVision discussed energy samplers and mixer/mixing 

systems. ParkerVision’s argument in its POR was as follows: whereas a continuously timevarying mixer has a transistor that can multiply two sine waves together, an energy sampler has a

transistor that can multiply a sine wave with a square wave/pulse. Ex. 1 at 20-49; see also Ex. 4 

at 5:22-6:6. Accordingly, contrary to Intel’s position, ParkerVision was not generally 

distinguishing energy samplers from all “mixer[s]” or from mixers that multiply any type of 

signal. Instead, ParkerVision was contrasting a specific type of mixer (i.e., a continuously timevarying mixer) from an energy sampler. 

For the foregoing reasons, there was no disclaimer at all in the IPR or anywhere else in 

the prosecution record, let alone a clear and unmistakable disclaimer of “mixers” or “mixing,” 

and therefore, there is no need for this Court to revisit claim construction. 

III. There is objective evidence that there is no clear and unequivocal disclaimer.

Intel states that ParkerVision made a clear and unequivocal disclaimer during the ’474 

patent IPR. If the purported disclaimer were so clear and unequivocal, then Intel certainly would 

have at least mentioned this issue during claim construction in the other case between the parties 

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 11 of 17
9 

in this Court - Case No. 6:20-cv-00562 (“the 562 case”). But Intel did not do so. This further 

demonstrates that Intel’s motion is a last-ditch effort to back-door a non-infringement position 

into the instant case - 6:20-cv-00108 (“the 108 case”). 

As the Court is aware, ParkerVision and Intel are involved in another, related litigation 

before this Court. That case involved U.S. Patent No. 6,049,706 (“the ’706 patent”), which 

relates to the same technology as the patents-in-suit in the 108 case.8

 One of the disputed terms 

with regard to the ’706 patent was “down-convert and delay module.” On May 18, 2021, 

ParkerVision served its POR (and expert declaration) in the ’474 patent IPR – the same 

document that Intel relies upon in its motion. D.I. 117 at 5 (citing Ex. 1). The Court held a first 

Markman hearing in the 562 case over a month later on June 24, 2021 and a second Markman

hearing on July 22, 2021. As such, Intel knew of ParkerVision’s position, which Intel now 

purportedly characterizes as a disclaimer, well before the Markman hearings and when the Court 

ruled on claim construction in the 562 case. At no time did Intel seek to file a supplemental claim 

construction brief or file a motion to limit the “down-convert and delay module” term as it is

now seeking to with the down-convert modules terms in the 108 case. 

Accordingly, Intel’s own actions further demonstrate that there was no clear and 

unequivocal disclaimer during the ’474 patent IPR. 

IV. There is no other reason for the Court to change its prior claim construction. 

This Court concluded the claim construction process for the downconverter terms over 

fourteen months ago. See Claim Construction Order (1/28/2021), D.I. 75. Yet, Intel suggests that 

ParkerVision’s statements in the IPR record merit revisiting those claim constructions, even if 

the IPR record statements do not rise of the level a disclaimer. D.I. 117 at 11 n.6 (citing

8

 The ’706 patent incorporates by reference a common specification with the patents-in-suit in 

the 108 case. 

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 12 of 17
10

Personalized Media Commc’ns, LLC v. Apple Inc., 952 F.3d 1336, 1345 (Fed. Cir. 2020)). Intel 

is wrong. Again, as shown above, there was no disclaimer in the IPR proceeding. Moreover, all 

of ParkerVision’s statements and positions in the IPR record are fully consistent with the Court’s 

constructions of the downconverter terms. Thus, revisiting those terms would be a waste of the 

Court’s time.

A. Revisiting the construction of the downconverter terms would allow Intel to 

reargue the same claim construction positions that this Court has rejected.

ParkerVision’s IPR claim construction positions on the ’474 patent are not new to Intel. 

ParkerVision has argued the same points – that the claims of the patents-in-suit (including claim 

1 of the ’474 patent) are “directed to . . . energy transfer (i.e., energy sampling),” and the 

downconverter terms should receive their plain and ordinary meaning – since filing its Opening 

Claim Construction Brief on October 30, 2020. See, e.g., D.I. 51 at 1, 29-30; D.I. 57 at 2, 27-28;

D.I. 65 at 1, 19-20; D.I. 77 at 15:18; D.I. 75 at 2. And ParkerVision maintained these same 

positions in the IPR proceeding of the ’474 patent since May 18, 2021 when it filed the Patent 

Owner Response. See, e.g., Ex. 1 at 2, 20, 52; Ex. 3 at ¶¶182-184; Ex. 2 at 1-2; Ex. 4 at 6:17-27

(“[A]s we discussed with the Board about two weeks ago, ParkerVision’s only representation is 

that the claims require sampling.”). 

Intel’s attempts to advance incorrect claim constructions that support its noninfringement positions are also not new. Specifically, Intel has taken every opportunity before 

this Court and the Board to inject the concept of an “aliasing rate” into claim 1 of the ’474 

patent. See, e.g., D.I. 53 at 9-10; D.I. 58 at 5-6; D.I. 66 at 3-6; D.I. 77 at 18:6-13; D.I. 75 at 2; 

Ex. 6 (IPR-1302 Petitioner’s Supplemental Notice Regarding Claim Construction (dated October 

30, 2020)) at 1; Ex. 7 (IPR-1302 Petitioner’s Reply to Patent Owner’s Response) at 12. But Intel 

has consistently failed in this endeavor. 

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 13 of 17
11 

Intel is up to its same tricks once again, this time under the guise of alleged disclaimer. 

Intel’s new strategy for advancing the failed “aliasing rate” claim construction is to first twist 

ParkerVision’s consistent and straight-forward position – that the claims are directed to energy 

sampling, and the downconverter terms should receive their plain and ordinary meaning – into a 

wholesale disclaimer of “mixers” and “mixing.” Intel then uses that unilateral distortion as a 

vehicle to sneak in the same claim constructions that the Court previously considered and 

rejected over one year ago. See D.I. 117 at 13 (“Intel believes that the appropriate construction 

would be to attach ParkerVision’s disclaimer to Intel’s initial proposed construction for these 

terms.”) (citing D.I. 53 at 9-10). 

But Intel’s new strategy is no more compelling than its previous arguments and should be 

rejected once again. First, no disclaimer exists in the IPR record. See Sections II-III above. 

Hence, there is no disclaimer for Intel to “attach” to its initial proposed construction. Second, 

ParkerVision’s statements in the IPR record, which are consistent with the Court’s existing claim 

constructions, do not provide good cause for the Court to revisit those constructions. See 

Ericsson Inc. et al. v. TCL Comm. Tech. Holdings Ltd. et al., Case No. 2:15-cv-00011-RSP, 

Memorandum Opinion and Order (Nov. 4, 2017) at 33 (E.D. Tex.) (citing Nuance Commc’ns, 

Inc. v. ABBYY USA Software House, Inc., 813 F.3d 1368, 1373 (Fed. Cir. 2016); Akamai Techs., 

Inc. v. Limelight Networks, Inc., 805 F.3d 1368, 1376 (Fed. Cir. 2015). 

Further, Intel argues that further claim construction is justified in part because 

ParkerVision “had not yet taken the position in this case that all of the asserted claims require 

‘energy sampling’” when the IPR was filed. D.I. 117 at 5. But that argument omits the deliberate 

and strategic litigation decisions Intel had already made in this case. Intel deliberately chose to 

file the IPR on September 2, 2020. At that time, Intel was aware of the following facts: (1) it had 

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 14 of 17
12 

until February 11, 2021 to file the IPR, one year after the filing date of this case (see 35 U.S.C. § 

315(b)); (2) it could expect to receive ParkerVision’s detailed claim construction positions on 

October 30, 2020 upon exchanging Opening Claim Construction Briefs (see D.I. 34 (Scheduling 

Order dated August 7, 2020) at 3); and (3) it could expect to present oral arguments on claim 

construction on January 22, 2021 by participating in the Markman hearing (see D.I. 34 at 3). Yet, 

even though Intel expected the Markman hearing to conclude before the statutory deadline for 

filing the IPR, Intel strategically chose to file the IPR more than five months earlier than 

necessary.

9 Of course, that was Intel’s right to file the IPR on that date. But as such, it is only fair 

that Intel not be excused from the consequences of its own deliberate and strategic litigation 

decisions. Intel would not be prejudiced in any way by this Court refusing to revisit claim 

constructions for the downconverter terms that have already been adjudicated. On the other hand, 

it would be unfair for ParkerVision to now be forced into supplemental claim construction just 

because Intel now regrets its decision to prematurely file its IPR.

B. The case law upon which Intel relies does not support revisiting claim 

construction under the present facts. 

During the IPR, ParkerVision made no amendments to the claim language, nor did it 

make any statements that clearly and unequivocally disclaimed any claim scope. Realizing that 

these facts are fatal to its arguments for revisiting claim construction, Intel tries to bolster its case

by citing to several cases throughout its brief. D.I. 117 at 1-15. But for each of those cases, 

Intel’s reliance is completely misplaced because the revisitation of claim construction was 

triggered by a finding that disclaimer had occurred in the prosecution record. As demonstrated 

above, no such disclaimer occurred in the prosecution record of the ’474 patent. See Sections II9 Indeed, even if Intel had waited just two more months to file the IPR, it would have received 

ParkerVision’s Opening Claim Construction Brief which clearly stated in the very first paragraph 

that all of the asserted claims were directed to sampling. D.I. 51 at 1.

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 15 of 17
13 

III. The absence of any disclaimer confirms that the current plain and ordinary meaning 

construction of the downconverter terms is the correct construction. See Chrimar Sys. v. AlcatelLucent, Inc., 2015 U.S. Dist. LEXIS 1801 (E.D. Tex., Jan. 7, 2015) at *19 (citing Hill-Rom 

Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014), and Thorner v. Sony 

Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Therefore, no further 

construction is necessary on these terms.

For the foregoing reasons, the claim constructions for the downconverter terms should 

not be revisited, and Intel’s motion should be denied. 

V. CONCLUSION

ParkerVision respectfully requests that the Court deny Intel’s motion. 

Dated: April 4, 2022 Respectfully submitted,

 /s/ Raymond W. Mort, III 

 Raymond W. Mort, III 

 Texas State Bar No. 00791308 

 raymort@austinlaw.com 

 THE MORT LAW FIRM, PLLC

 100 Congress Avenue, Suite 2000 

 Austin, Texas 78701 

 Tel/Fax: 512-865-7950 

Of Counsel:

Ronald M. Daignault (pro hac vice)*

Chandran B. Iyer (pro hac vice) 

Jason S. Charkow (pro hac vice)*

Stephanie R. Mandir (pro hac vice) 

rdaignault@daignaultiyer.com 

cbiyer@daignaultiyer.com 

jcharkow@daignaultiyer.com 

smandir@daignaultiyer.com 

DAIGNAULT IYER LLP

8618 Westwood Center Drive, Suite 150

Vienna, VA 22182 

*Not admitted in Virginia

Attorneys for ParkerVision, Inc.

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 16 of 17
14 

CERTIFICATE OF SERVICE

I hereby certify that all counsel of record are being served with a copy of the foregoing 

document via the Court’s CM/ECF system on April 4, 2022. 

/s/ Raymond W. Mort, III 

 Raymond W. Mort, III 

Case 6:20-cv-00108-ADA Document 121 Filed 04/04/22 Page 17 of 17