UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF TEXAS

WACO DIVISION

PARKERVISION, INC., 

Plaintiff,

vs.

INTEL CORPORATION,

Defendant.

 

Civil Action No. 6:20-cv-00108-ADA

 JURY TRIAL DEMANDED

INTEL CORPORATION’S OPPOSED MOTION FOR FURTHER CLAIM 

CONSTRUCTION IN LIGHT OF PARKERVISION’S REPRESENTATIONS IN IPR 

PROCEEDINGS

Case 6:20-cv-00108-ADA Document 117 Filed 03/21/22 Page 1 of 22
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TABLE OF CONTENTS

I. INTRODUCTION AND SUMMARY OF THE ARGUMENT.....................................1

II. STATEMENT OF FACTS................................................................................................3

A. ParkerVision Persuaded This Court To Construe The DownConverter Terms To Have Their Purported Plain And 

Ordinary Meaning .................................................................................................3

B. To Avoid Prior Art In Subsequent IPR Proceedings, 

ParkerVision Clearly And Unequivocally Disclaimed “Mixers” 

And “Mixing”.........................................................................................................5

III. ARGUMENT......................................................................................................................8

A. ParkerVision’s Unequivocal Representations To The PTAB 

Constitute A Clear Disclaimer of Claim Scope ...................................................8

B. Having Preserved Validity By Disclaiming Claim Scope, 

ParkerVision Should Not Be Permitted To Now Walk Back 

Its Disclaimer........................................................................................................13

IV. CONCLUSION ................................................................................................................16

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TABLE OF AUTHORITIES

Page(s)

CASES

Ajinomoto Co. v. International Trade Commission, 

932 F.3d 1342 (Fed. Cir. 2019)..........................................................................................14

Astrazeneca AB, Aktiebolaget Hassle, KBI-E, Inc. v. Mutual Pharmaraceutical 

Co., 

384 F.3d 1333 (Fed. Cir. 2004)..........................................................................................10

Atofina v. Great Lakes Chemical Corp., 

441 F.3d 991 (Fed. Cir. 2006)............................................................................................15

Aylus Networks, Inc. v. Apple Inc., 

2016 WL 270387 (N.D. Cal. Jan. 21, 2016)........................................................................8

Aylus Networks, Inc. v. Apple Inc., 

856 F.3d 1353 (Fed. Cir. 2017)................................................................................1, 2, 8, 9

Cook Group Inc. v. Boston Scientific Scimed, Inc., 

809 F. App’x 990 (Fed. Cir. 2020) ....................................................................................15

David Netzer Consulting Engineer LLC v. Shell Oil Co., 

824 F.3d 989 (Fed. Cir. 2016)............................................................................................10

Di Piazza v. Weather Grp. Television, LLC, 

2021 WL 3598282 (N.D. Tex. Mar. 23, 2021)..................................................................15

Huawei Technologies Co. v. T-Mobile US, Inc., 

2017 WL 4385567 (E.D. Tex. Sept. 9, 2017), report and recommendation 

adopted, 2017 WL 4310161 (E.D. Tex. Sept. 28, 2017).....................................................9

iLight Technologies, Inc. v. Fallon Luminous Prods. Corp., 

2010 WL 2330396 (Fed. Cir. 2010).............................................................................11, 12

MarcTec, LLC v. Johnson & Johnson, 

394 F. App’x 685 (Fed. Cir. 2010) ....................................................................................15

MLC Intellectual Property, LLC v. Micron Technology, Inc., 

2018 WL 4616255 (N.D. Cal. Sept. 26, 2018) ....................................................................9

Norian Corp. v. Stryker Corp., 

432 F.3d 1356 (Fed. Cir. 2005)..........................................................................................14

O2 Micro International Ltd. v. Beyond Innovation Technology Co., 

521 F.3d 1351 (Fed. Cir. 2008)........................................................................................2, 3

Case 6:20-cv-00108-ADA Document 117 Filed 03/21/22 Page 3 of 22
iii

Omega Engineering, Inc v. Raytek Corp., 

334 F. 3d 1314 (Fed. Cir. 2003)...................................................................................11, 12

Ormco Corp. v. Align Tech., Inc., 

498 F.3d 1307 (Fed. Cir. 2007)................................................................................2, 10, 11

Personalized Media Communications, LLC v. Apple Inc., 

952 F.3d 1336 (Fed. Cir. 2020)..........................................................................................11

Ramot at Tel Aviv University Ltd. v. Cisco Systems, Inc., 

2020 WL 2517581 (E.D. Tex. May 15, 2020).....................................................................8

Ravgen v. Natera, 

No. 20-CV-00692-ADA (W.D.T.X. Nov. 8, 2021).....................................................10, 11

Samsung Electronics Co. v. Elm 3DS Innovations, LLC, 

925 F.3d 1373 (Fed. Cir. 2019)......................................................................................2, 12

Seachange International, Inc. v. C-COR, Inc., 

413 F.3d 1361 (Fed. Cir. 2005)..........................................................................................11

Sentry Protection Products, Inc. v. Eagle Manufacturing. Co., 

400 F.3d 910 (Fed. Cir. 2005)............................................................................................11

Shire Development, LLC v. Watson Pharmaceuticals, Inc., 

787 F.3d 1359 (Fed. Cir. 2015)..........................................................................................11

Spectrum International, Inc. v. Sterilite Corp., 

164 F.3d 1372 (Fed. Cir. 1998)........................................................................................1, 8

Technology Properties Ltd. v. Huawei Technologies Co., 

849 F.3d 1349 (Fed. Cir. 2017)..........................................................................................14

Traxcell Technologies, LLC v. Nokia Sols. & Networks Oy, 

15 F.4th 1136 (Fed. Cir. 2021) ..........................................................................................14

Watts v. XL Systems, Inc., 

232 F.3d 877 (Fed. Cir. 2000)............................................................................................12

X One, Inc. v. Uber Technologies, Inc., 

440 F. Supp. 3d 1019 (N.D. Cal. 2020)...............................................................................9

STATUTES, RULES, AND REGULATIONS

Fed. R. Evid. 801(d)(2)(A) ............................................................................................................16

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I. INTRODUCTION AND SUMMARY OF THE ARGUMENT

The Federal Circuit has made clear that positions taken by a patent owner in inter partes

review (“IPR”) proceedings become a relevant part of the prosecution history that should properly 

be considered in claim construction. See Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 

1359-61 (Fed. Cir. 2017). This ensures “claims are not argued one way in order to maintain their 

patentability and in a different way against accused infringers.” Id. at 1360. It also protects the 

public’s “right to rely on such definitive statements made during prosecution.” Spectrum Int’l, 

Inc. v. Sterilite Corp., 164 F.3d 1372, 1378 (Fed. Cir. 1998) (quotations and citation omitted). 

Further claim construction is required here for precisely these reasons.

ParkerVision asserts six related patents, all of which contain or incorporate by reference 

the “same disclosure regarding down-conversion,” D.I. 51 at 4 n.4, and all of which are directed 

to ParkerVision’s claimed down-conversion invention, which it calls “energy sampling,” id. at 1 

(“the claims are directed to ... energy sampling.”). In IPR proceedings relating to one of the 

asserted patents, U.S. Patent No. 7,539,474 (the “’474 patent”), after the Court issued its claim 

construction ruling in this case, ParkerVision categorically disclaimed a device for and method of 

performing down-conversion called “mixers”/“mixing.” Specifically, to distinguish its claimed 

“energy sampling” invention from the prior art, ParkerVision clearly and unequivocally told the 

Patent Trial and Appeal Board (“PTAB”) that its claimed “energy sampling” invention is 

“fundamentally different” from “mixing,” and that “[e]nergy samplers, unlike mixers, do not 

mix (i.e., multiply) two signals together in order to down-convert a signal.” Ex. 1 at 22. Based 

on these representations, the PTAB found (and Intel agreed) that the cited prior art references, 

which described “mixers,” did not disclose ParkerVision’s energy sampling device/method of 

Case 6:20-cv-00108-ADA Document 117 Filed 03/21/22 Page 5 of 22
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performing down-conversion and declined to invalidate the challenged claims of the ’474 patent. 

Ex. 2 at 17-19.

ParkerVision should be held to its representations to the PTAB—it should not be permitted 

to argue its claims one way in order to preserve patentability before the PTAB and in a different 

way here. Aylus, 856 F.3d at 1361. Each of the asserted claims of the asserted patents recite 

“modules,” “systems,” and “apparatuses” that, as ParkerVision admits, are the elements that 

perform the down-conversion in its claimed energy sampling invention (i.e., “the Down-Converter 

Terms”). See, e.g., D.I. 51 at 29 (“A ‘frequency down-conversion module’ is simply a module 

that down-converts an input signal.”); D.I. 65 at 1 (“[T]he patents-in-suit pertain to the use of 

sampling to down-convert a signal.”). Given ParkerVision’s disclaimer, these elements cannot 

properly include modules/systems/apparatuses that use a mixer to mix (i.e., multiply) two signals 

together in order to down-convert a signal. See, e.g., Aylus, 856 F.3d at 1362 (patent owner 

disclaimed method for delivering media content by telling the PTAB that there are “substantial 

differences between the challenged claims and the asserted references”)1

; Ormco Corp. v. Align 

Tech., Inc., 498 F.3d 1307, 1314 (Fed. Cir. 2007) (“When the application of prosecution disclaimer 

involves statements from prosecution of a familial patent relating to the same subject matter as the 

claim language at issue in the patent being construed, those statements in the familial application 

are relevant in construing the claims at issue.”); Samsung Elecs. Co. v. Elm 3DS Innovations, LLC, 

925 F.3d 1373, 1378-79 (Fed. Cir. 2019) (“clear[] and unambiguous[] disclaime[r]” applies 

“across all asserted patents” where they “‘derive from the same parent application and share many 

common terms’”).

 1 All emphasis added unless otherwise noted.

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Accordingly, under the Federal Circuit’s decisions in Aylus and O2 Micro International 

Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008), Intel respectfully 

requests further claim construction proceedings to address the scope of the asserted claims in light 

of ParkerVision’s disclaimer of mixers/mixing. See O2 Micro, 521 F.3d at 1360 (courts must 

resolve disputes regarding the scope of patent claims).

II. STATEMENT OF FACTS

A. ParkerVision Persuaded This Court To Construe The Down-Converter 

Terms To Have Their Purported Plain And Ordinary Meaning

ParkerVision currently asserts six patents, including the ’474 patent, in this case. D.I. 108 

at 2.2

 As ParkerVision admits, all the asserted claims are directed to “down-conversion,” and all 

the asserted patents incorporate ParkerVision’s original down-conversion patent, U.S. Patent No. 

6,061,551 (the “’551 patent”), in its entirety. See D.I. 51 at 4 (“Down-conversion is the subject of 

the patents-in-suit”); D.I. 54-6, 1:6-10 (the ’902 patent “is a continuation-in-part of ... U.S. Pat. 

No. 6,061,551, which is herein incorporated by reference in its entirety”); D.I. 54-11, 1:30-34 

(same for the ’528 patent); D.I. 54-12, 1:32-36 (same for the ’736 patent); D.I. 54-13, 1:42-46 

(same for the ’673 patent); D.I. 54-9, 1:24-27 (the ’725 patent incorporating by reference the ’551 

patent “in [its] entiret[y]”); D.I. 54-8, 11:29-33 (same for the ’474 patent). As such, ParkerVision 

admits that all six asserted patents “have the same disclosure regarding down-conversion” or 

“specifically incorporate such disclosure by reference.” D.I. 51 at 4 n.4.

ParkerVision further admits that all the asserted claims of all six asserted patents require a 

specific method of down-conversion that uses “sampling”—something ParkerVision describes as 

 2 Asserting the ’474 patent and U.S. Patent Nos. 6,580,902 (the “’902 patent”), 8,588,725 (the 

“’725 patent”), 9,118,528 (the “’528 patent”), 9,246,736 (the “’736 patent”), and 9,444,673 (the 

“’673 patent”).

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its “energy sampling” invention.3

 D.I. 51 at 1 (“the claims are directed to ... energy sampling”); 

D.I. 65 at 1 (“[T]he patents-in-suit pertain to the use of sampling to down-convert a signal.”); D.I. 

77 at 41 (“in all cases sampling is occurring”). ParkerVision further admits that all the asserted 

claims require that the claimed down-conversion by sampling be performed at a specific rate, 

called an “aliasing rate.” D.I. 51 at 27 (“aliasing” refers to a rate “at which an input signal is 

sampled”); see D.I. 77 at 21 (ParkerVision admitting at oral argument that “this concept of aliasing

rate ... it’s in all the claims already.... The claims -- and I’ll go through this -- all have that 

concept. They have the concept of aliasing.”); id. at 15 (“aliasing rates ... [are] included in the 

claims”). 

Each of the asserted claims recites a “module,” “system” or “apparatus”—i.e., the “DownConverter Terms”—that, as ParkerVision admits, performs the down-conversion in the claimed 

invention. See, e.g., D.I. 51 at 29 (“A ‘frequency down-conversion module’ is simply a module 

that down-converts an input signal.”). Intel proposed during claim construction proceedings that 

the Down-Converter Terms be construed to require down-converting by sampling at an aliasing 

rate. D.I. 53 at 9-12. ParkerVision argued, in response, that the Down-Converter Terms should 

be given their purported “plain and ordinary meaning.” D.I. 51 at 29-32. While ParkerVision 

acknowledged that all the claims require sampling at an aliasing rate, it argued that this feature is 

required by other elements in the claims—i.e., certain “components” of the Down-Converter 

Terms—and that the Down-Converter terms themselves should be given their plain and ordinary 

meaning. D.I. 77 at 22. The Court accepted ParkerVision’s argument and construed the 

 3 Intel disputed ParkerVision’s use of the term “energy sampling” because it never appears in the 

asserted patents but agreed that all the asserted claims require “sampling.” D.I. 58 at 2 (emphasis 

in original).

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Down-Converter Terms to have their purported “plain-and-ordinary meaning” in its January 28, 

2021 Claim Construction Order. D.I. 75 at 2-3.

B. To Avoid Prior Art In Subsequent IPR Proceedings, ParkerVision Clearly 

And Unequivocally Disclaimed “Mixers” And “Mixing”

In September 2020, Intel filed an IPR petition challenging the validity of certain claims in 

the asserted ’474 patent. Ex. 3. The claims that Intel challenged did not expressly recite sampling 

and, at the time that Intel filed its IPR petition, ParkerVision had not yet taken the position in this 

case that all of the asserted claims require “energy sampling.” Compare Ex. 3 (Sept. 2, 2020); 

with D.I. 51 (Oct. 30, 2020). Intel’s petition thus sought to invalidate claims in the ’474 patent 

based on prior art that taught a well-known down-conversion system/method using 

“mixers”/“mixing.” See, e.g., Ex. 2 at 17-18 (PTAB describing the asserted prior art “mixers”).

In January 2021, the PTAB instituted the IPR, and in May 2021, ParkerVision filed its 

Patent Owner Response (“POR”). Exs. 4 and 1. ParkerVision conceded that one of the challenged 

claims was invalid. See Ex. 1 at 1 n.1; Ex. 5. As to the remaining claims, ParkerVision 

distinguished the prior art by unequivocally disclaiming the use of “mixing” and “mixers” to 

perform down-conversion. Specifically, ParkerVision represented to the PTAB that its claimed 

“energy sampling/energy transfer” invention is “fundamentally different” than performing downconversion using a mixer to multiply two signals together: 

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 togetherin order to downconvert a signal.” Ex. 1at 22.

ParkerVision repeated this unequivocal disclaimer throughout its Patent Owner Response:

• “The operation of an energy transfer/sampling system, however, is fundamentally 

different than the operation of a mixer/mixing system. Whereas a mixer forms a 

down-converted signal by mixing two signals (an RF signal and an LO signal) 

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together, an energy transfer system uses sampled energy from the RF signal to form 

a down-converted signal.” Id. at 73-74.

• “The difference between energy transfer/sampling and mixing systems is significant. 

Indeed, energy transfer/sampling and mixing systems are fundamentally different

and competing technologies.” Id. at 3.

• “[A]ll of the challenged claims are directed to a sampling system and, in particular, 

an energy sampling system (also known as an energy transfer system). .... [Intel’s prior 

art references], however, disclose a different technology known as a mixing system.” 

Id. at 2-3.

• “[Intel’s prior art] specifically discusses mixing and makes no mention or suggestion 

of using an energy sampling solution. There is no teaching, suggestion, or motivation 

in [Intel’s prior art] to use energy sampling to down-convert a signal. Indeed, mixing 

and energy sampling systems are fundamentally different and competing 

technologies.” Id. at 74.4

ParkerVision argued that this distinction between energy samplers/sampling and mixers/mixing is 

“why Intel’s prior art fails to invalidate challenged claims.” Ex. 1 at 20.

After receiving ParkerVision’s POR, Intel agreed that if the PTAB accepted ParkerVision’s 

clear and unequivocal disclaimer of “mixers”/“mixing,” then the asserted prior art, which teaches 

using a mixer to down-convert, would not invalidate the challenged claims. Ex. 6 at 1-2. In its 

Final Written Decision, the PTAB accepted ParkerVision’s disclaimer, stating: “the parties agree 

that the claims at issue in this proceeding require sampling. The parties’ agreement as to 

‘sampling’ is dispositive of the issues presented in this proceeding because the parties also agree 

that neither [of] the prior art references asserted by Petitioner in this proceeding, teach ‘sampling.’” 

 4 ParkerVision specifically distinguished its sampling invention from the cited prior-art Larson 

and Butler references based on their mixing functionality: “Larson and Butler pertain to non-linear 

mixing ....” Ex. 1 at 20 (emphasis in original). And ParkerVision repeatedly explained that what 

distinguishes mixing from its “energy transfer” sampling invention is that mixing involves 

“multiplying” two signals together. Ex. 7 at 17 (“Whereas a non-linear mixer forms a downconverted signal by mixing (multiplying) two signals (an RF signal and an LO signal) together, 

an energy transfer system uses sampled energy from the RF signal to form a down-converted 

signal.”); id. (“[A]ll teaching, suggestion, and motivation in Larson demonstrates that Larson 

relates only to a non-linear mixing system, which mixes (multiplies) two signals together.”).

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Ex. 2 at 14. Rather than disclosing sampling, as the PTAB explained, Intel’s prior art discloses 

“mixers.” Id. at 17-18. Thus, the Board declined to invalidate the challenged claims because 

“(1) the claims at issue in this proceeding require ‘sampling’ and (2) [Intel’s prior art references] 

do not disclose ‘sampling’.” Id. at 19.

After IPR briefing had concluded, and the record was closed, ParkerVision unsuccessfully 

tried to walk back its disclaimer. Ex. 2 at 3 n.1. Specifically, ParkerVision improperly argued 

during a procedural “conference call” after the record was closed that it had disclaimed only certain 

types of mixers and mixing. Id. But the PTAB rejected this attempt, stating on the call that “the 

briefing in this case is closed.” Ex. 8 at 8:28-9:4. The PTAB also stated on the call: 

On the [issue of] what is patent owner’s position on the claims and how petitioner 

has presented it or patent owner has presented it, the briefs speak to all those issues. 

We are not taking argument on today’s call about positions that are already set 

forth in the briefing.

Id. at 12:24-13:1. The PTAB then further stated in its Final Written Decision: 

Patent Owner sought to clarify its position in light of statements made by Petitioner 

at the pre-hearing conference. Petitioner expressly disagreed with what it 

considered to be Patent Owner’s attempt to supplement the record during the 

November 10th conference call. The sole purpose of the pre-hearing conference 

was to determine if an oral hearing was needed in light of the positions set forth in 

the briefing. The parties’ briefs set forth the arguments upon which this Final 

Written Decision is based.

Ex. 2 at 3 n.1 (citations omitted). As shown above, ParkerVision’s briefs unequivocally disclaimed 

down-converting using “mixers”/“mixing.” See, e.g., Ex. 1 at 3, 20, 22, 73-74.5

 5 Intel also challenged three claims in another ParkerVision patent, U.S. Patent No. 7,110,444 (the 

“’444 patent”), that ParkerVision had previously asserted in this case. Ex. 9; D.I. 1 (original 

complaint). In response to Intel’s IPR petition, ParkerVision voluntarily disclaimed two of the 

challenged claims, Ex. 10 at 1 n.1; Ex. 11, and the PTAB invalidated the remaining claim as 

“unpatentable,” Ex. 12 at 3. ParkerVision has voluntarily dismissed the ’444 patent from this 

proceeding. D.I. 108.

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III. ARGUMENT 

A. ParkerVision’s Unequivocal Representations To The PTAB Constitute A 

Clear Disclaimer of Claim Scope

The Federal Circuit has expressly held that “statements made by a patent owner during an 

IPR proceeding can be considered during claim construction and relied upon to support a finding 

of prosecution disclaimer.” Aylus, 856 F.3d at 1361; see also, e.g., Ramot at Tel Aviv Univ. Ltd. 

v. Cisco Sys., Inc., 2020 WL 2517581 at *16 (E.D. Tex. May 15, 2020) (patent owner’s statements 

to the PTAB regarding disputed term constituted a disclaimer and “intrinsic evidence”). 

The rationale for this rule is straightforward—it is a fundamental principle of patent law 

that patent owners cannot argue claims one way to preserve validity and another way to try to show 

infringement. Aylus, 856 F.3d at 1359-61 (courts should ensure that “claims are not argued one 

way in order to maintain their patentability and in a different way against accused infringers”);

Spectrum Int’l, 164 F.3d at 1378 (“claims may not be construed one way in order to obtain their 

allowance and in a different way against accused infringers”). Thus, where a patent owner makes 

statements to the PTAB relevant to claim scope, further claim construction proceedings are 

warranted. Aylus, 856 F.3d at 1364.

In Aylus, for example, the Federal Circuit held that, through its IPR statements, patent 

owner Aylus disclaimed an entire method of controlling and delivering media content. 856 F.3d 

at 1357. Aylus had alleged that certain software infringed its method for “controlling and 

delivering media content,” which involved determining whether to invoke a “Control Point Proxy 

(CPP)” and/or a “Control Point (CP)” to stream videos. Aylus Networks, Inc. v. Apple Inc., 2016 

WL 270387, at *2 (N.D. Cal. Jan. 21, 2016). During claim construction in the district court, the 

term “the CPP is invoked” was not construed. Id. at *4. Months later, Aylus filed a preliminary 

response to an IPR petition and represented to the PTAB that there are “substantial differences 

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between the challenged claims and the asserted references,” including that “the challenged claims 

require selectively invoking the CP logic and/or CPP logic,” which “is a key aspect of the claimed 

invention.” Aylus, 856 F.3d at 1362-63. Relying on those representations, the PTAB declined to 

institute IPR. Id. The district court then undertook further claim construction to address Aylus’s 

IPR statements and ruled that the phrase “the CPP is invoked” limited the challenged claims to 

methods where “only the CPP logic is invoked,” and excludes methods where “both the CP and 

CPP” logic is invoked. Aylus, 856 F.3d at 1358. The Federal Circuit affirmed, holding that Aylus’s 

IPR statements were a “clear and unmistakable disavowal of claim scope.” Id. at 1364. 

Other cases have likewise engaged in further claim construction in light of patent owner’s 

statements to the PTO. See, e.g., Huawei Techs. Co. v. T-Mobile US, Inc., 2017 WL 4385567, at 

*5 (E.D. Tex. Sept. 9, 2017) (patent owner “clearly and unmistakably disclaimed a recovery 

process in which the GGSN marks the PDP context invalid ... As a result, the claims of the ’339 

patent no longer encompass such a process.”), report and recommendation adopted, 2017 WL 

4310161 (E.D. Tex. Sept. 28, 2017); X One, Inc. v. Uber Techs., Inc., 440 F. Supp. 3d 1019, 1042-

44 (N.D. Cal. 2020) (reopening claim construction to address IPR disclaimer); MLC Intell. Prop., 

LLC v. Micron Tech., Inc., 2018 WL 4616255, at *6 (N.D. Cal. Sept. 26, 2018) (reconsidering 

claim construction in light of developments in ex parte reexamination).

Here, after the Court issued its claim construction ruling, ParkerVision represented to the 

PTAB that its claimed “energy sampling” invention is “fundamentally different” from “mixing,” 

and its “[e]nergy samplers, unlike mixers, do not mix (i.e., multiply) two signals together in order 

to down-convert a signal.” Ex. 1 at 20, 22. ParkerVision emphasized that the “difference between 

energy transfer/sampling and mixing systems is significant” and a “critical distinction” over the 

prior art. Id. at 3, 20. And ParkerVision was explicit that it was making this disclaimer for the 

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purpose of distinguishing its claimed energy sampling invention from the prior art in order to 

preserve validity. See Ex. 1 at 20 (“the difference between these technologies is critical to 

understanding why Intel’s prior art fails to invalidate challenged claims of the ’474 patent”). 

The PTAB relied on ParkerVision’s representations regarding the scope of its claims to find that 

the cited prior art did not invalidate ParkerVision’s claims. Ex. 2 at 17-19.

ParkerVision’s IPR representations thus constitute a clear and unequivocal disclaimer and 

require further claim construction. See also, e.g., Ormco Corp., 498 F.3d at 1314-15 (claims 

limited to an “automatic” process for orthodontists to position teeth, because inventors sought “to 

distinguish their invention” on the grounds that it is “fully automated,” while the prior art required 

“an operator [to] manipulate” and undertake “decision making” in positioning teeth, meaning that 

a “fully automated [process] ... is lacking”); David Netzer Consulting Eng’r LLC v. Shell Oil Co., 

824 F.3d 989, 995 (Fed. Cir. 2016) (“patentee clearly disclaimed conventional extraction,” 

including by “twice stat[ing] during prosecution” that the claimed invention produces a product 

that “need not” have the same characteristics as products produced through conventional 

extraction); Astrazeneca AB, Aktiebolaget Hassle, KBI-E, Inc. v. Mut. Pharm. Co., 384 F.3d 1333, 

1340 (Fed. Cir. 2004) (“clear disavowal” of “nonsurfactant solubilizers” where the patentee 

described the invention as being “included in” a structure indisputably formed by surfactants).

This Court recently relied on a patent owner’s “clear and unambiguous prosecution 

statements” to rule that patent owner had disclaimed “EDTA and other chelators used as 

anticoagulants” from the scope of a disputed claim term related to “cell lysis inhibitors.” Ravgen 

v. Natera, No. 20-CV-00692-ADA, (W.D.T.X. Nov. 8, 2021) D.I. 176. As this Court explained, 

by representing to the Patent and Trademark Office (“PTO”) that EDTA, an “anticoagulant,” is 

“not an ‘agent that inhibits cell lysis’” and “not ... a cell lysis inhibitor,” patent owner 

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“unequivocally disavowed a certain meaning to obtain his patent.” Id. at 5 (quoting Omega Eng’g, 

Inc v. Raytek Corp., 334 F. 3d 1314, 1324 (Fed. Cir. 2003)); see also Seachange Int’l, Inc. v. CCOR, Inc., 413 F.3d 1361, 1372-73 (Fed. Cir. 2005) (“Where an applicant argues that a claim 

possesses a feature that the prior art does not possess in order to overcome a prior art rejection, 

the argument may serve to narrow the scope of otherwise broad claim language.”); Sentry Prot. 

Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005) (“The prosecution history 

modifies the scope of a claim term if the patentee distinguished that term from prior art on the 

basis of a particular embodiment [or] expressly disclaimed subject matter....”) (quotations and 

citation omitted).6

 The same holds true here.

All six asserted patents (including the ’474 patent) fully incorporate the same parent patent. 

See supra p. 3. And as ParkerVision acknowledges, all six asserted patents “have the same 

disclosure regarding down-conversion” or “incorporate such disclosure by reference.” D.I. 51 at 

4 n.4. ParkerVision has also represented to this Court that all of its asserted claims are directed to 

its claimed “energy sampling” invention—the same invention at issue in the ’474 IPR proceedings. 

Compare D.I. 51 at 1 (“the claims [including the ‘474 claims] are directed to ... energy

sampling”), with Ex. 1 at 2 (“all of the challenged claims are directed to a sampling system and, 

in particular, an energy sampling system”). ParkerVision’s disclaimer of mixers/mixing to 

perform down-conversion therefore applies to all of the asserted claims in this case. See Ormco 

Corp., 498 F.3d at 1311, 1314-17 (disclaimer made during prosecution of unasserted “familial 

 6 ParkerVision’s representations regarding claim scope would remain relevant to claim 

construction even if they did “not rise to the level of unmistakable disavowal.” Personalized 

Media Commc’ns, LLC v. Apple Inc., 952 F.3d 1336, 1345 (Fed. Cir. 2020) (“the Board erred by 

effectively requiring the prosecution history evidence to rise to the level of a disclaimer in order 

to inform the meaning of the disputed claim term”) (quoting Shire Dev., LLC v. Watson Pharm., 

Inc., 787 F.3d 1359, 1366 (Fed. Cir. 2015)). 

Case 6:20-cv-00108-ADA Document 117 Filed 03/21/22 Page 15 of 22
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patent” applied to asserted related patents that “share a common specification”); iLight Techs., 

Inc. v. Fallon Luminous Prods. Corp., 2010 WL 2330396, *2 (Fed. Cir. 2010) (disclaimer applied 

to all asserted claims because the applicant distinguished “the invention as a whole” “in order to 

avoid certain prior art”); Watts v. XL Sys., Inc., 232 F.3d 877, 883 (Fed. Cir. 2000) (“While Watts’ 

remarks occur in a discussion of the rejection of claim 1, they are general in nature and apply to 

any claim that contains the [same limitation].”); Omega Eng’g, 334 F.3d at 1333 (“prosecution 

disclaimer may arise from disavowals made during the prosecution of ancestor patent 

applications”); Samsung Elecs., 925 F.3d at 1378 (“Where multiple patents derive from the same 

parent application and share many common terms, we must interpret the claims consistently 

across all asserted patents.”) (quotations and citation omitted).

Each of the asserted claims of the asserted patents recite “modules,” “systems,” and 

“apparatuses” that ParkerVision admits are the elements that perform the down-conversion in 

ParkerVision’s claimed energy sampling invention (i.e., “the Down-Converter Terms”). See, e.g., 

D.I. 51 at 29 (“A ‘frequency down-conversion module’ is simply a module that down-converts an 

input signal.”); D.I. 65 at 1 (“[T]he patents-in-suit pertain to the use of sampling to down-convert 

a signal.”). Given ParkerVision’s disclaimer, these elements cannot properly include 

modules/systems/apparatuses that use a mixer to mix (i.e., multiply) two signals together in order 

to down-convert a signal. The Down-Converter Terms should therefore be limited as follows to 

account for PV’s disclaimer:

Case 6:20-cv-00108-ADA Document 117 Filed 03/21/22 Page 16 of 22
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Term

Court’s Current 

Construction Intel’s Proposed Further Construction7

“energy transfer 

module”

(’902 patent, claim 1)

Plain-and-ordinary 

meaning

The claimed module does not include modules 

that use a mixer to mix (i.e., multiply) two signals 

together in order to down-convert a signal

“frequency downconversion module”

(’474 patent, claim 1)

Plain-and-ordinary 

meaning

The claimed module does not include modules 

that use a mixer to mix (i.e., multiply) two signals 

together in order to down-convert a signal

“aliasing module”

(’725 patent, claim 1)

Plain-and-ordinary 

meaning

The claimed module does not include modules 

that use a mixer to mix (i.e., multiply) two signals 

together in order to down-convert a signal

“system for frequency

down-converting”

(’528 patent, claim 1; 

’736 patent, claim 1)

Preamble is 

limiting. Plain-andordinary meaning.

The claimed system does not include systems that 

use a mixer to mix (i.e., multiply) two signals 

together in order to down-convert a signal

“frequency downconversion module”

(’673 patent, claim 1)

Plain-and-ordinary 

meaning

The claimed module does not include modules 

that use a mixer to mix (i.e., multiply) two signals 

together in order to down-convert a signal

“apparatus for downconverting”

(’673 patent, claim 13)

Preamble is 

limiting. Plain-andordinary meaning.

The claimed apparatus does not include 

apparatuses that use a mixer to mix (i.e., 

multiply) two signals together in order to downconvert a signal

B. Having Preserved Validity By Disclaiming Claim Scope, ParkerVision 

Should Not Be Permitted To Now Walk Back Its Disclaimer

As it unsuccessfully tried to do with PTAB after the record had “closed,” Ex. 8 at 8:28-9:4, 

ParkerVision will no doubt attempt to walk back its disclaimer before this Court as well. As 

discussed above, ParkerVision argued during a procedural “conference call” that it had purportedly 

distinguished (or intended to distinguish) only certain types of mixers and mixing. Ex. 2 at 3 n.1. 

The PTAB rejected ParkerVision’s attempt to supplement the record and this Court should as well.

 7 Intel believes that the appropriate construction would be to attach ParkerVision’s disclaimer to 

Intel’s initial proposed construction for these terms—e.g., “A module that down-converts an input 

signal at an aliasing rate (i.e. by sampling at less than or equal to twice the frequency of the input 

signal).” See D.I. 53 at 9-10. Intel is not rearguing its initial proposed construction in this motion 

because the Court has already ruled on that language. But Intel respectfully reserves the right to 

argue on appeal that its initial proposed construction should be adopted as well.

Case 6:20-cv-00108-ADA Document 117 Filed 03/21/22 Page 17 of 22
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First, the PTAB expressly foreclosed ParkerVision’s belated efforts, stating in its Final 

Written Decision that although “Patent Owner sought to clarify its position” after the briefing had 

closed, the “parties’ briefs set forth the arguments upon which this Final Written Decision is 

based.” Id. As set forth above, ParkerVision’s briefs broadly, repeatedly, and unequivocally 

disclaimed using a “mixer” to “mix (i.e., multiply) two signals together in order to down-convert 

a signal.” E.g., Ex. 1 at 3, 20, 22-23, 73-74. Its unsuccessful attempt to walk back those 

unequivocal disclaimers is not part of the prosecution record. Ex. 2 at 3 n.1.8 

Second, the Federal Circuit has repeatedly found that “the patentee is held ‘to the actual 

arguments made, not the arguments that could have been made.’” Traxcell Techs., LLC v. Nokia 

Sols. & Networks Oy, 15 F.4th 1136, 1144 (Fed. Cir. 2021) (quoting Tech. Props. Ltd. v. Huawei 

Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017)); Ajinomoto Co. v. Int’l Trade Comm’n, 932 

F.3d 1342, 1351 (Fed. Cir. 2019) (“A patentee must be held to what he declares during the 

prosecution of his patent, because a contrary rule would undermine the public notice function of 

a patent.” (quotations and citations omitted)). 

That is the case even where a patentee asserts that the disclaimer is broader than what was 

necessary to avoid the prior art. See, e.g., Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1361-62 

(Fed. Cir. 2005) (“[T]here is no principle of patent law that the scope of a surrender of subject 

matter during prosecution is limited to what is absolutely necessary to avoid a prior art reference. 

To the contrary, it frequently happens that patentees surrender more through amendment than may 

 8 Notably, the PTAB’s rules state that patent owners “may only present arguments relied upon in 

the papers previously submitted.” Patent Trial and Appeal Board Consolidated Trial Practice 

Guide, § II.M at 85 (Nov. 2019), see https://www.uspto.gov/sites/default/files/documents

/tpgnov.pdf?MURL. The PTAB’s decision to expressly state in a written opinion that 

ParkerVision’s statements came during a “conference call” and that the PTAB was relying on “the 

parties’ briefs”—as its rules require—confirms that ParkerVision’s belated and improper 

statements are not part of the prosecution history. 

Case 6:20-cv-00108-ADA Document 117 Filed 03/21/22 Page 18 of 22
15

have been absolutely necessary to avoid particular prior art. In such cases, we have held the 

patentees to the scope of what they ultimately claim, and we have not allowed them to assert that 

claims should be interpreted as if they had surrendered only what they had to.”); Atofina v. Great 

Lakes Chem. Corp., 441 F.3d 991, 998 (Fed. Cir. 2006) (rejecting patentees’ arguments that 

because the prior art taught only a certain type of non-chromium catalyst, their prosecution 

statements were likewise “intended to distinguish only nickel-chromium catalysts,” and stating: 

“That the applicants only needed to surrender nickel-chromium catalysts to avoid a prior art 

reference does not mean that its disclaimer was limited to that subject matter.... Here, the 

patentee spoke expressly to the meaning of ‘chromium catalyst’ ... in the prosecution history, 

noting that the catalyst was limited to ‘pure chromium (without the addition of another metal 

oxide).’ We therefore agree with the district court that Atofina surrendered all catalysts containing 

non-chromium metal oxides.”); MarcTec, LLC v. Johnson & Johnson, 394 F. App’x 685, 687 (Fed. 

Cir. 2010) (“Limitations clearly adopted by the applicant during prosecution are not subject to 

negation during litigation, on the argument that the limitations were not really needed in order to 

overcome the reference. When an applicant yields claim scope in order to secure allowance of the 

patent, the public notice aspect of the record inhibits later retrenchment to recover what was 

yielded.”).9

 9 At a minimum, if this Court does not further construe the claims as requested, ParkerVision’s 

IPR statements are admissible evidence the jury should be permitted to consider. See Di Piazza v. 

Weather Grp. Television, LLC, 2021 WL 3598282, at *2 (N.D. Tex. Mar. 23, 2021) (prior 

statements are admissible where “relevant, admissible under an exception to the rule against 

hearsay, and ... properly authenticated.”). They are highly relevant to ParkerVision’s claims of 

infringement—indeed, even ParkerVision admits that they concern a “significant” and “critical 

distinction” in assessing the system/method of down-conversion required by all the asserted 

claims. Ex. 1 at 3, 20. Nor is there any question of authenticity, undue prejudice, or hearsay. 

ParkerVision made these representations in a public IPR filing in a successful effort to defend the 

validity of claims it had been asserting in this litigation for over a year. See Cook Grp. Inc. v. Bos. 

Sci. Scimed, Inc., 809 F. App’x 990, 999-1000 (Fed. Cir. 2020) (IPR admission appropriately 

Case 6:20-cv-00108-ADA Document 117 Filed 03/21/22 Page 19 of 22
16

IV. CONCLUSION 

Under Aylus and the settled precedent cited above, ParkerVision should not be permitted 

to argue its claims one way to avoid invalidity and another way to attempt to establish 

infringement. Accordingly, Intel respectfully requests that the Court order further claim 

construction proceedings to account for ParkerVision’s disclaimer of mixing/mixers.

 

considered by factfinder because “[i]t is well established ... that a statement made by a party in an 

individual or representative capacity may be offered as evidence against that party”); Fed. R. Evid. 

801(d)(2)(A). 

Case 6:20-cv-00108-ADA Document 117 Filed 03/21/22 Page 20 of 22
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Dated: March 21, 2022 Respectfully submitted,

/s/ J. Stephen Ravel .

Michael J. Summersgill (admitted Pro Hac Vice)

Sarah B. Petty (admitted Pro Hac Vice)

Marissa A. Lalli (admitted Pro Hac Vice)

Samuel C. Leifer (admitted Pro Hac Vice)

Alicia Coneys (admitted Pro Hac Vice)

Wilmer Cutler Pickering Hale and Dorr LLP

60 State Street

Boston, Massachusetts 02109

T (617) 526-6000

michael.summersgill@wilmerhale.com

sarah.petty@wilmerhale.com

marissa.lalli@wilmerhale.com

samuel.leifer@wilmerhale.com

alicia.coneys@wilmerhale.com

Todd Zubler (admitted Pro Hac Vice)

Isley M. Gostin (admitted Pro Hac Vice)

Wilmer Cutler Pickering Hale and Dorr LLP

1875 Pennsylvania Avenue NW

Washington, DC 20006

T (202) 663-6636

todd.zubler@wilmerhale.com

isley.gostin@wilmerhale.com

Jason F. Choy (admitted Pro Hac Vice)

Wilmer Cutler Pickering Hale and Dorr LLP

350 South Grand Avenue, Suite 2100

Los Angeles, California 90071

T (213) 443-5300

jason.choy@wilmerhale.com

J. Steven Ravel

KELLY HART & HALLMAN LLP

303 Colorado, Suite 2000

Austin, Texas 78701

T (512) 495-6429

steve.ravel@kellyhart.com

James E. Wren

Texas State Bar No. 22018200

1 Bear Place, Unit 97288

Waco, Texas 76798

T (254) 710-7670

james.wren@baylor.edu

ATTORNEYS FOR DEFENDANT 

INTEL CORPORATION 

CERTIFICATE OF CONFERENCE

I hereby certify that on March 21, 2022, Intel’s counsel conferred in good faith with 

opposing counsel pursuant to Local Civil Rule 7(g), and ParkerVision is opposed to the relief 

sought. Accordingly, this Motion and the relief requested herein are submitted to the court for 

resolution.

/s/ J. Stephen Ravel

J. Stephen Ravel

Case 6:20-cv-00108-ADA Document 117 Filed 03/21/22 Page 21 of 22
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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 March 21, 2022.

/s/ J. Stephen Ravel .

J. Stephen Ravel

Case 6:20-cv-00108-ADA Document 117 Filed 03/21/22 Page 22 of 22