IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. DR. MICHAEL FARMWALD and RPX CORPORATION Petitioners,

Transcription

1 DOCKET NO:433131US IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD DR. MICHAEL FARMWALD and RPX CORPORATION Petitioners, v. PARKERVISION, INC., Patent Owner. Patent U.S. 6,061,551 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,061,551 UNDER 35 U.S.C. 312 AND 37 C.F.R Mail Stop PATENT BOARD Patent Trial and Appeal Board US Patent and Trademark Office PO Box 1450 Alexandria, Virginia

2 TABLE OF CONTENTS Page I. MANDATORY NOTICES... 1 II. CERTIFICATION OF GROUNDS FOR STANDING... 2 III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED... 2 A. Prior Art Patents and Printed Publications... 2 B. Grounds for Challenge... 3 IV. OVERVIEW OF THE 551 PATENT... 3 V. CLAIM INTERPRETATION... 9 VI. LEVEL OF ORDINARY SKILL IN THE ART VII. STATEMENT OF MATERIAL FACTS VIII. IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE A. Claims 1, 23, 25, 161, 193, and 202 are Anticipated by Estabrook under 35 U.S.C. 102(b) B. Claims 1, 23, 161, 193, and 202 are Anticipated by Avitabile under 35 U.S.C. 102(b) as well as claim 25 under patentee s claim interpretation C. Claims 1, 23, 161, 193, and 202 are Anticipated by Weisskopf under 35 U.S.C. 102(b) as well as claim 25 under patentee s claim interpretation IX. CONCLUSION i

3 Table of Authorities Cases Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354 (Fed. Cir. 1998) ClearValue v. Pearl River Polymers, 668 F.3d 1340 (Fed. Cir. 2012) Davis v. Wakelee, 156 U.S. 680 (1895) In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995) Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111 (Fed. Cir. 2004) Marine Polymer Technologies, Inc. v. HemCon, Inc., 672 F.3d 1350 (Fed. Cir. 2012) Rhine v. Casio, Inc., 183 F.3d 1342 (Fed.Cir.1999) Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818 (Fed. Cir. 1984)... 25, 27 Wang Labs, Inc. v. Applied Computer Sciences, Inc., 958 F.2d 355 (Fed. Cir. 1992) Statutes 35 U.S.C. 102(b)... passim 35 U.S.C. 314(a) C.F.R (b) C.F.R. 42.8(b)(4)... 1 Rules 42.22(a)(1) (a) (b)(1)-(2) (b)(4)-(5) ii

4 I. MANDATORY NOTICES Real Parties-in-Interest: RPX Corporation and Dr. Michael Farmwald (hereinafter collectively referred to as Petitioners ). Related Matters: The following matters would affect or be affected by a decision in this proceeding: ParkerVision, Inc. v. Qualcomm, Inc., Case No. 3:11- cv-719-j-37tem (M.D. Fla.) (hereinafter the Qualcomm litigation ). 1 Lead and Back-up Counsel: Petitioners provide the following designation of counsel: Lead counsel is W. Todd Baker (Reg. No. 45,265) and back-up counsel is James T. Bailey (Reg. No. 44,518). Service Information: Pursuant to 37 C.F.R. 42.8(b)(4), papers concerning this matter should be served on the following. Petitioners consent to electronic service. Address: W. Todd Baker Oblon Spivak 1940 Duke Street Alexandria, VA cpdocketbaker@oblon.com and jtb@jtbaileylaw.com Telephone: (703) (Baker) (917) (Bailey) 1 Qualcomm is not a current client of RPX Corporation. All docket items referenced herein and included as Exhibits were retrieved from patentee's publicly available website at www. The redacted transcript of the trial in that action was purchased directly from the official court reporter, Amie First. 1

5 Fax: (703) II. CERTIFICATION OF GROUNDS FOR STANDING Petitioners certify pursuant to Rule (a) that the patent for which review is sought is available for inter partes review and that Petitioners are not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in this Petition. III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED Pursuant to Rules 42.22(a)(1) and (b)(1)-(2), Petitioner challenges claims 1, 23, 25, 161, 193 and 202 of U.S. Patent No. 6,061,551 (Ex. 1001, the 551 patent ). A. Prior Art Patents and Printed Publications Petitioners rely upon the following patents and printed publications, none of which was considered during the original prosecution of the 551 patent: Exhibit 1022 Polly Estabrook, The direct conversion receiver: Analysis and design of the front-end components, (Ph.D diss., Stanford University, 1989). ( Estabrook ); Exhibit G. Avitabile et al, S-band digital downconverter for radar applications based on a GaAs MMIC fast sample-and-hold, IEE Proc. On Circuits, Devices and Systems, Vol. 143, No. 6, pp (1996). ( Avitabile ); and 2

6 Exhibit 1023 P.A. Weisskopf, Subharmonic Sampling of Microwave Signal Processing Requirements, Microwave Journal, May 1992, pp ( Weisskopf ). Estabrook, Avitabile and Weisskopf are available as 35 U.S.C. 102(b) art against the 551 patent. B. Grounds for Challenge Petitioner requests cancelation of the challenged claims under the following statutory grounds: A. Claims 1, 23, 25, 161, 193, and 202 are anticipated under 35 U.S.C. 102(b) by Estabrook. B. Claims 1, 23, 161, 193, and 202 are anticipated under 35 U.S.C. 102(b) by Avitabile as is claim 25 under Patentee s claim interpretation. C. Claims 1, 23, 161, 193, and 202 are anticipated under 35 U.S.C. 102(b) by Weisskopf as is claim 25 under Patentee s claim interpretation. Section VIII below demonstrates, for each of the statutory grounds, that there is a reasonable likelihood that Petitioners will prevail with respect to at least one of the challenged claims. See 35 U.S.C. 314(a). IV. OVERVIEW OF THE 551 PATENT The 551 patent generally relates to down-conversion of a radio frequency (RF) signal to a lower frequency signal, either an intermediate frequency (IF) or 3

7 directly to the baseband frequency. The 551 patent specification describes two general approaches to down-conversion as alleged inventions. The first, referred to as under-sampling uses sampling apertures with negligible duration that result in only negligible energy transfer from the input signal. The second uses nonnegligible duration sampling apertures that result in the transfer of non-negligible amounts of energy. (Ex :1-38.) Each of the independent claims, however, is limited to transferring non-negligible amounts of energy. (Id. 115:9-20; 116:24-36.) The 551 patent generically describes circuitry for performing down conversion through non-negligible energy transfer as consisting of three components -- a switch module, an energy transfer signal and a storage module as shown, for example, in FIG. 65. The configuration of FIG. 65, with the switch module preceding the storage module, is referred to as a gated transfer module. The patent also describes an 4

8 inverted gated transfer module where the order of the switch and storage modules is reversed. (Ex FIG. 74.) The specification states that virtually any known type of switch module and any known type of storage module can be used. (Ex :60-61; FIGS. 66A- 66D; 99:9-54; 7:4-5; 68A-68F; 99:54-100:29.) However, in nearly all examples in the specification, the storage module is simply a capacitor. (Id. FIGS. 67A, 68G, 74, 76A-E, 82A-B, 95, 103.) The distinction between the claimed non-negligible energy transfer embodiments and the unclaimed negligible energy transfer embodiments can be seen by comparing FIGS. 78A and 82A, reproduced below: 5

9 The two diagrams illustrate the exact same structures. There are only two distinctions illustrated in the figures. 2 First, in FIG. 78A the under-sampling signal controlling the switch module is identified as a pulse with a negligible duration. The specification indicates that a pulse with a negligible duration results in negligible energy being transferred to the capacitor (Ex FIG. 78A; 63:18-20), whereas FIG. 82A identifies a pulse with a non-negligible aperture which the specification indicates results in the transfer of non-negligible energy to the capacitor. (Id. FIG. 82A; 66:34-47.) The patent does not provide consistent guidance on the dividing line between a negligible and non-negligible aperture. For example, dependent claim 98 defines a non-negligible aperture[] as one equal in duration to at least 2 The under-sampling embodiments are described throughout the specification as the invention or the present invention. (See, e.g., Ex :56-5:57, 26:64-62:58.) However, during the Qualcomm litigation the patentee took the position that the under-sampling embodiments described prior art voltage samplers that were allegedly different than the claimed invention. (Cf. Ex. 1007: D.I. 269 at 12 ( In the prior art as explained by reference to FIG. 79D.... ) with Ex :38-40 ( FIGS. 79A-F illustrate example timing diagrams for under-sampling systems according to embodiments of the invention. )) 6

10 one tenth of one percent of approximate half cycles of the carrier signal (Ex :24-28), whereas the specification states that [a]n example of a negligible pulse width or duration can be in the range of 1-10 psec for under-sampling a 900 MHz signal (Ex :47-49), which would correspond to 0.2-2% of the half period of the input carrier signal. The specification, however, clearly indicates that larger apertures such as ⅛, ¼, ½, ¾, etc. of the input carrier signal are nonnegligible. (Ex :43-47.) The specification further describes a nonnegligible aperture of 1/2 the period of the EM signal being down-converted as a preferred embodiment. (Ex :66-105:2.) Second, FIG. 78A labels the capacitor as a holding capacitance whereas FIG. 82A labels the capacitor as a storage capacitance. The only difference described between a holding and storage capacitor is related to the amount of energy ultimately stored on the capacitor itself, which as described in the specification is primarily a function of the duration of the aperture during which the switch is closed and the input signal is connected to the capacitor. As described in the specification: Holding modules and holding capacitances, as used above identify systems that store negligible amounts of energy from an under sampled input EM signal with the intent of holding a voltage value. Storage modules and storage capacitances, on 7

11 the other hand, refer to systems that store non negligible amounts of energy from an input EM Signal. (Ex :63-67 (emphasis added).) There are very few examples in the specification describing details related to either a storage or holding capacitance/module. With respect to non-negligible energy transfer embodiments, the 551 patent describes an 18 pf storage capacitor for use in down-converting a 900 MHz carrier signal. (Ex :1-25.) However, the specification notes that the particular capacitance value recited is non-limiting and [o]ther suitable capacitance values and storage modules can be used. (Ex :24-25.) With respect to under-sampling systems, the patent describes both a 1 pf holding capacitor and an 18 pf holding capacitor, both for use in down converting a 900 MHz carrier signal. (Id. 63:40-59.) While the specification describes the smaller capacitor as working better with negligible apertures, the fact that the same 18 pf capacitor is described as being either a storage capacitor or a holding capacitor based solely on the duration of the sampling aperture further informs the importance of aperture duration to these labels. (Id. 65:32-66:24) The 551 patent also describes as one of the purported benefits of the nonnegligible energy transfer embodiments that they permit the use of a low impedance load. (Ex :31-47.) However, the patent always describes the 8

12 use of a low impedance load in permissive terms as opposed to a requirement. (Id.; see also id. 66:44-47 ( permitting the down-converted signal to drive lower impedance loads unassisted ); 68:9-13 ( As a result, the down-converted signals 8310 and 8312 can efficiently drive lower impedance loads... ) emphases added.) The specification further describes numerous embodiments with non-negligible energy transfer as using an arbitrary load impedance (Id. 74:7-11; 75:17-21; 76:61-65; 78:7-14; 79:50-58; 80:65-81:6; 85:40-47; 86:47-54; 88:27-34; 89:33-40; 94:40-43; 95:66-96:2), literally meaning that the load impedance can have any value. Finally, the specification describes the preferred embodiment as being a sample and hold system. (Id. FIGS. 101, 102D; 111:39-45; 112:18-23.) V. CLAIM INTERPRETATION The claim terms are presumed to take on their ordinary and customary meaning. This Petition shows that the challenged claims of the 551 patent are unpatentable when the challenged claims are given their broadest reasonable interpretation in light of the specification. See 37 C.F.R (b). The parties in the Qualcomm litigation agreed on claim constructions for a small number of terms, but disputed many others. In general, the patentee sought and was awarded broad constructions for most of the disputed terms. (See generally Ex. 1008: D.I. 243.) For the purposes of this petition, Petitioners largely accept the district court s constructions as the broadest reasonable interpretation. 9

13 The patentee, having secured a favorable jury verdict based on these constructions, should be estopped from arguing that the broadest reasonable interpretation is any narrower than the constructions it sought and received. See Wang Labs, Inc. v. Applied Computer Sciences, Inc., 958 F.2d 355, 358 (Fed. Cir. 1992) ( The doctrine of judicial estoppel is the general proposition that: where a party assumes a certain position in a legal proceeding, and succeeds in maintaining that position, he may not thereafter, simply because his interests have changed, assume a contrary position. (quoting Davis v. Wakelee, 156 U.S. 680, 689 (1895))). However, since the Markman ruling, patentee has improperly tried to import limitations into claim elements that are common to all of the challenged claims. 3 In particular, as described in more detail below, patentee has asserted that the generating element of independent claims 1 and 23 requires discharge of energy from a storage module. (Ex. 1016: D.I. 295 at 4.) In the Qualcomm litigation, this new interpretation of the generating element appears to be the sole basis upon which patentee s experts were willing to argue the challenged claims were not 3 At the Markman hearing, patentee s counsel acknowledged that if a patentee, like ParkerVision, were trying to import a limitation into a claim, a rule of thumb is ParkerVision or the patentee is doing that to try to avoid some prior art. (Ex. 1009: D.I. 163 at ) 10

14 invalid over the prior art. 4 As explained below, patentee s new construction is not the broadest reasonable interpretation in light of the specification. However, even if patentee s construction were adopted, the challenged claims are still unpatentable over the prior art. The broadest reasonable interpretation in light of the specification of the claim elements, in the order they appear, is discussed below: 4 For example, patentee hired Peter Weisskopf, the author of Ex. 1023, as an expert in the case. (Ex. 1010: D.I ) Mr. Weisskopf provided opinions regarding, inter alia, all of the claims challenged in this petition and identified only the generating elements of claims 1 and 23 as allegedly missing from his paper. (Id. at 2, 8-9.) Mr. Weisskopf s opinions, however, were based entirely on patentee s new claim interpretation. (Id. at 14 ( As the claim language in the bullet list above makes clear, in the patented inventions in direct contrast to the teachings of my paper not only must energy be transferred into a hold capacitor, but energy transferred from the carrier signal into the hold capacitor must be discharged from the capacitor and used to generate the lower frequency signal or baseband. )) Mr. Weisskopf did not testify at trial. (Ex. 1011: 10/15/13 Tr. 129:3-18.) 11

15 Aliasing rate: The broadest reasonable interpretation of aliasing rate is a sampling rate that is less than or equal to twice the frequency of the carrier signal, which is an express definition in the specification (Ex :28-31) and was an agreed construction in the Qualcomm litigation. (Ex. 1012: D.I ) Transferring non-negligible amounts of energy from the carrier signal/receives non-negligible amounts of energy transferred from a carrier signal: Based on patentee s suggested construction, the Court in the Qualcomm litigation construed these phrases to mean transferring energy in amounts distinguishable from noise. (Ex. 1008: D.I. 243 at ) This construction is based on vague statements in the specification that received signals in radio systems are typically very weak and the negligible amounts of energy transferred in under-sampling systems may not be sufficient to distinguish received signals over noise, whereas when non-negligible amounts of energy are transferred there is sufficient energy to allow the down-converted signals to be distinguishable from noise. (Ex :18-32; Ex. 1008: D.I. 243 at ) The specification, however, provides no guidance as to what the magnitude of the noise or received signal may be. While there is no discussion of noise sources or magnitude in the 551 patent, one of ordinary skill in the art would have known that the noise generated by this type of sampling circuit is independent of the strength of the input carrier signal. (Ex ) In other words, as would 12

16 have been recognized by one of ordinary skill in the art, noise can always be overcome by using a stronger input signal, if available. At the Qualcomm trial, patentee s witnesses inherently recognized the relationship between distinguishing from noise and the strength of the received signal and testified that transferring non-negligible amounts of energy means that you have to transfer enough energy to overcome the noise in the system to be able to meet your specifications. (Ex. 1013: 10/8/13 Tr. 83:3-24, emphasis added ; see also Ex. 1015: 10/10/13 Tr. 237:25-238:16 (equating non-negligible energy transfer with a system that can work.) In other words, distinguishing from noise is application-specific and depends on your specifications for the, among other things, strength of the received signal. The challenged claims, notably, contain no limitation on the type of application or the strength of the received carrier signal. (Ex :9-20; 116:24-36; 116:41-44; 161:17-23; 127:3-6; 128:9-16.) Throughout the specification, however, the transfer of either negligible or non-negligible amounts of energy is consistently described as being a direct and proximate result of using either a negligible or non-negligible sampling aperture. For example, with respect to under-sampling systems it is the negligible aperture pulses themselves that minimize the amount of energy transferred from the EM signal. (Ex :7-9.) By contrast, using non- 13

17 negligible apertures provides more time to transfer energy and results in nonnegligible energy transfer. (Id. 66:34-40.) Furthermore, as described in the background section above, the specification describes two systems using identical structures that differ only in duration of sampling aperture where negligible energy is transferred when using a negligible aperture and non-negligible energy is transferred when using a non-negligible aperture. (Id. 63:40-59, 65:32-66:24, 67:1-25, 67:57-61.) Accordingly, the broadest reasonable interpretation in light of the specification of transferring non-negligible energy from the carrier signal is sampling using a non-negligible aperture. The broadest reasonable interpretation of non-negligible in this context is objectively defined by dependent claim 98 of the 551 patent, which establishes that apertures of one tenth of one percent of approximate half cycles of the carrier signal are necessarily non-negligible. (Id. at 121:24-28.) As explained in Dr. Abidi s declaration, Ex , another objective way to evaluate the amount of energy transfer as compared to the noise generated by the circuit itself is the Noise Figure (F), which is defined as the ratio of the signal to noise ratio (SNR) at the input to the SNR at the output in db, i.e., a lower Noise Figure is better. (Ex ) The 551 patent describes an exemplary implementation of down-converting a 900 MHz carrier signal sub- 14

18 sampling at the 9 th sub-harmonic, i.e., n=9. (Ex :1-68:13, Fig. 83.) That example has a duty cycle of D = and a Noise Figure of approximately F = 16 db. (Ex ) Notably, the specification states that any other suitable non-negligible pulse duration can be used. (Ex :12-13.) As can be seen from the analysis shown in Figure 5.5(b) of Dr. Abidi s declaration, the duty cycle resulting from a 550 ps aperture is near optimal for that sampling rate. (Ex Fig. 5.5(b), 34.) Accordingly, any other aperture would further degrade Noise Figure. This analysis provides a range of Noise Figures over which non-negligible energy transfer may be presumed. (Ex ) Lower frequency signal: The Court in the Qualcomm litigation accepted patentee s proposed construction and interpreted this phrase to mean a signal with a frequency below the carrier signal frequency. (Ex. 1008: D.I. 243 at ) Under this construction, the phrase would cover both down-conversion to an intermediate frequency (IF) or directly to baseband frequency. Petitioners accept this construction as the broadest reasonable interpretation for the purpose of this petition. Where n represents a harmonic or sub-harmonic of the carrier signal: The Court in the Qualcomm litigation accepted patentee s proposed construction and interpreted this phrase to mean n is 0.5 or an integer greater than or equal to 1. (Ex. 1008: D.I. 243 at ) In conjunction with the specification s express 15

19 definition of aliasing rate this allows the claim to cover sub-harmonic sampling, sampling at the frequency of the carrier signal (fundamental sampling), and harmonic sampling at twice the carrier frequency. Petitioners accept this construction as the broadest reasonable interpretation for the purpose of this petition. (Generating a lower frequency signal)/(wherein a lower frequency signal is generated) from the transferred energy: Under its broadest reasonable interpretation in light of the specification, this phrase refers to generating the down-converted lower frequency signal using the transferred energy in some way, which is the plain meaning. During the Markman proceedings in the Qualcomm litigation, the patentee argued that this phrase be given its plain meaning and not temporally limited to the transfer of non-negligible energy step occurring before the generation of the down-converted signal using that energy.. (Ex. 1008: D.I. 243 at 39.) The district court agreed with the patentee, holding that under the plain meaning the two steps could happen simultaneously. (Id. at ) Later in the case, however, the patentee argued for a more restrictive interpretation of this element, arguing that the plain meaning of the generating phrase requires discharge of energy from a storage device. (Ex. 1016: D.I. 295 at 4-5; see also Ex. 1007: D.I. 269 at ) Patentee s new interpretation, which 16

20 was rejected by the district (Ex. 1017: D.I. 318 at 6), finds no support in the claim language or specification and must be rejected particularly under the broadest reasonable interpretation. First, there is nothing in the claim language that would suggest, much less require, patentee s discharge of the capacitor. Indeed, as a matter of physics any discharging of the capacitor plays no role in generating the down-converted signal. As shown in Dr. Abidi s declaration, the down-converted signal exists on the capacitor regardless of whether there is any discharge. (Ex , 41, Fig. 5.2.) Second, the patentee s restrictive definition would exclude every embodiment in the patent. Patentee argued that generating a voltage differential across the poles of an energy storage device is not generating the lower frequency signal from the transferred energy as required by the Asserted Claims of the Patent[]. 5 In support of this argument, the patentee repeatedly refers to Figure 57E (Ex. 1007: D.I. 269 at 11-2; Ex. 1016: D.I. 295 at 5), arguing that the sawtooth voltage waveform of Figure 57E is evidence that the lower frequency signal has been generated but claiming that the voltage waveform represented by 5 Each of the claims challenged in this petition were Asserted Claims in the Qualcomm litigation. (See Ex. 1007: D.I. 269 at 1, n.1.) 17

21 Figure 57E is not the lower frequency signal itself. (Ex. 1016: D.I. 295 at 6.) However, patentee s argument is expressly refuted by the specification, which states FIG.57E illustrates a demodulated baseband signal 5712, which is generated by the down-conversion process. (Ex :40-41.) As can be seen from FIG. 57E, the entire voltage waveform is itself indicated as being the downconverted signal Indeed, elsewhere in its litigation papers patentee admitted that the specification describes that waveform as the down-converted signal itself, stating The specification of the 551 Patent describes the sawtooth-like voltage waveform of Fig. 57E as a baseband signal generated by the down-conversion process. (Ex. 1016: D.I. 295 at 5.) The voltage waveform on the storage device itself is also described as the baseband signal generated by the down-conversion process with respect to a number of other similar figures in the patent. (Ex FIG. 50E (74:7-9); FIG. 51E (75:17-19); FIG. 52E (76:61-63); FIG. 54E (79:50-52); FIG. 55E (80:65-67); FIG. 56C (84:9-11); FIG. 58E (86:47-48); FIG. 59E (88:27-28); FIG. 60E (89:33-18

22 34).) Indeed, one of ordinary skill in the art would have recognized that the downconverted signal manifests as a voltage across a storage device in every embodiment in the patent. (Ex , 41, Fig. 5.2.) Not only is the down-converted signal always a voltage across a capacitor, the specification makes clear that in non-negligible energy transfer embodiments that voltage may be held, and need not be discharged. For example, Figure 101 is described as the preferred embodiment, which is the only time in 128 columns where that phrase is used. 6 (Ex :39-45.) The specification and figures illustrate that Figure 101 is a sample and hold arrangement, with no meaningful discharge. The specification states: When the Waveform Generator output is above a predetermined value, the RF Switch becomes a high impedance node and allows the Integrator to hold the last RF signal sample until the next cycle of the Waveform Generator output. (Id. 112:18-23, emphasis added.) The holding that occurs in the preferred embodiment of Figure 101 is illustrated in Figure 102D. 6 FIG. 101 is described as having a switch on-time, or sampling aperture, that should be less than ½ of a cycle (1/10 of a cycle is preferred) (Ex :64-111:1), which is a non-negligible energy transfer embodiment. 19

23 Accordingly, the preferred embodiment is just the type of sample and hold system that the patentee attempted to distinguish by reading in the discharge limitation during the Qualcomm litigation. 7 (See Ex. 1007: D.I. 269 at 12.) Figure 101, however, is not the only non-negligible energy transfer embodiment that functions as a sample and hold circuit described in the specification. For example, the down-converted output generated by the undersampling embodiments, which patentee now characterize as prior art sample and 7 The specification goes on to describe the Integrator section of Figure 101 (10106) as being designed to charge quickly (fast attack) and discharge the Integrator at a controlled rate (slow decay). (Ex :23-25.) However, as illustrated in Figure 102D, the controlled rate of discharge is designed to be as close to zero as possible. 20

24 hold circuits (Ex. 1007: D.I. 269 at 12), is consistently described in the specification as having a stair step output, i.e., the voltage is held not discharged. (Ex :1-14; 32:55-62; 33:55-62; 35:16-23; 41:1-7; 43:42-49; 45:14-21; 45:25-29; 51:19-25; 55:21-29; 61:53-65; 64:21-38.) However, the specification just as consistently 11 times describes embodiments with non-negligible energy transfer as potentially having a stair step output. (Id. 69:66-70:4; 74:41-46; 75:52-57; 77:29-34; 78:43-48; 80:20-25; 81:36-41; 85:66-86:4; 89:59-64; 92:66-93:5; 96:14-23.) In describing every one of these non-negligible energy transfer embodiments, the specification states that the choice as to whether to have a stair step output, i.e., a sample and hold circuit, or some other type of output is a design choice that depends on the application of the invention. (Id.) Finally, patentee s requirement of discharge of energy from a storage module would create a claim interpretation that is inconsistent with the plain language of numerous dependent claims. Where a particular construction of an independent claim would nullify claims that depend from it, the doctrine of claim differentiation creates a presumption that such a construction is improper. Marine Polymer Technologies, Inc. v. HemCon, Inc., 672 F.3d 1350, 1368 (Fed. Cir. 2012). Such a claim construction should not be adopted unless it is the only claim construction that is consistent with the claim s language and the written 21

25 description. Id. (emphasis in original, quoting Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed.Cir.1999)). For example, claim 85, which indirectly depends on claim 1, further limits step (2) of claim 1 to controlling a sample and hold system with the energy transfer signal. (Ex :49-51.) Patentee s discharge requirement would make the sample and hold limitation of claim 85 impossible. Similarly, claim 68, which also indirectly depends on claim 1 would be inconsistent with patentee s limited construction because the claim covers driving either a high impedance or low impedance load. (Ex :1-5.) Patentee s discharge requirement would conflict with this claim because, as noted in the specification, when a high impedance load is used the capacitor does not significantly discharge, but instead holds a voltage value between samples. (Id. 64:21-26.) While each of the above claims are dependent upon claim 1, the language of step (3) of claim 1 and the final wherein clause in claim 23 is nearly identical. (Id. 115:18-19; 116:35-36.) Both phrases should therefore get the same interpretation. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004). ( Unless otherwise compelled, when different claims of a patent use the same language, we give that language the same effect in each claim. ) 22

26 Energy transfer signal generator: The term energy transfer signal is not a term of art, but is instead a term coined by the inventors of the 551 patent and defined in the specification. The patent states that, [u]nlike under-sampling signals that have negligible aperture pulses, the energy transfer signal includes a train of pulses having non-negligible apertures that tend away from zero. (Ex :34-39.) Accordingly, an energy transfer signal generator is an apparatus that generates control signals with non-negligible apertures. The broadest reasonable interpretation of non-negligible in this context is objectively defined by dependent claim 98 of the 551 patent, which establishes that apertures of one tenth of one percent of approximate half cycles of the carrier signal are necessarily non-negligible. (Id. at 121:24-28.) Storage module: The term storage module first appears in claim 23. That claim explicitly requires that the storage module receives non-negligible amounts of energy transferred from a carrier signal. (Id. 116:39:41.) As noted above, the storing of non-negligible as opposed to negligible energy is the only thing in the specification that distinguishes a storage module from a holding module. (Id. 66:63-67.) The limitation on storing non-negligible amounts of energy is, however, already explicit in the claim so the term storage module adds no other structural limitation beyond its plain meaning of a module capable of storing energy. 23

27 Output impedance match circuit: The Court in the Qualcomm litigation accepted patentee s proposed construction and interpreted this phrase to mean a circuit configured to transfer desired power from the energy sampling circuitry. (Ex. 1008: D.I. 243 at 27.) There are two problems with this construction. First, the patentee s construction inserts the term energy sampling, which appears nowhere in the 551 patent, has no accepted meaning to those of ordinary skill in the art, and is only likely to generate confusion. The claim language itself is clear that the output impedance match circuit is coupled to the output of said apparatus. (Ex : ) The antecedent for said apparatus is the apparatus for down-converting a carrier signal recited in the preamble of parent claim 23. (Id. 116:24:25.) Second, the use of transfer desired power in patentee s construction vitiates the claim s use of the word match. Impedance matching was well known to those of ordinary skill in the art and involves matching the output impedance of one circuit to the input impedance of the following circuit. (Ex ) Patentee s use of transfer desired power could cover whatever is desired high or low power transfer. Indeed, in applying this construction at the Qualcomm trial, patentee s witnesses discussed only the input impedance of the second circuit, with no discussion of what the output impedance of the preceding circuit was or whether there was any form of match. Patentee s expert testified 24

28 that all that was needed to satisfy this element was a low impedance load. (Ex. 1015: 10/10/13 Tr. 11:5-16:6 (testifying regarding claim 90 of U.S. Patent No. 6,266,518, Ex. 1003, a continuation of the 551 patent), 29:8-31:6 (applying prior testimony to claim 25 of the 551 patent); see also Ex. 1021: D.I. 475 at 14, n. 102 (citing the same testimony as alleged evidence of output impedance matching).) The broadest reasonable interpretation in light of the specification of this element is its plain meaning to one of ordinary skill in the art, a circuit with an input impedance approximately matching the output impedance of the down-conversion circuitry. (Ex ) However, if patentee s construction is nonetheless adopted using the actual antecedent from the claim the term is significantly broader. Capacitive storage device sized to store substantial amount of energy relative to the amounts of energy contained in a percentage of half cycles of a carrier signal: This phrase uses substantial as a word of degree and therefore the specification must provide a standard for measuring that degree. Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). While the patentee moved for summary judgment that this term was not indefinite, in doing so it did not identify any portion of the specification that provided such a standard. (Ex. 1007: D.I. 269 at ) Instead, the patentee argued that the district court had already construed substantial amounts of energy as energy in 25

29 amounts that are distinguishable from noise. (Id. at 21.) If this interpretation is accepted then no additional proof would be necessary for this dependent claim, since the limitation would be inherent in the parent claim. At trial, patentee s expert testified that this phrase means the size of the capacitor is sufficient to store a substantial amount of energy compared to the total energy in the half cycle of the carrier signal. (Ex. 1015: 10/10/13 Tr. 33:6-21.) The specification, however, only describes in detail one example of a capacitor size in which the capacitor stores non-negligible energy -- FIG. 82B, using an 18 pf capacitor to down-convert a 900 MHz signal with an aperture of 550 ps (1/2 the carrier period). (Ex :1-25.) As explained in Dr. Abidi s declaration, such a system will in steady-state store in the capacitor approximately 2.6 times the energy available in a carrier half cycle. (Ex ) Since the value of this ratio depends on C, and the specification states that [o]ther suitable capacitance values... can be used (Ex :24-25) any value in this range should meet this limitation. Integrates the transferred energy/integrate controlled substantial amount of energy transferred from the carrier signal: In the Qualcomm litigation, the Court adopted patentee s proposed construction, which equated integrating energy with accumulating energy. (Ex. 1008: D.I. 243 at ) Petitioners accept this construction as the broadest reasonable interpretation for the purpose of 26

30 this petition. However, to avoid confusion it is important to explain how this accumulation of energy occurs in a storage device such as a capacitor. Capacitors integrate current, as a result of the integration of current the capacitor accumulates charge. From the accumulated charge one can determine the energy that can be said to have accumulated on the capacitor. In other words, accumulating energy is equivalent to accumulating charge and integrating current. (Ex , 49.) As with the previous term, the specification provides little or no guidance as to the standard for judging a substantial amount of energy, so that phrase should be interpreted broadly. Wherein the transferring of energy substantially prevents accurate voltage reproduction of the carrier signal during the apertures: Substantially and accurate are words of degree for which we look to the specification for a standard for measuring that degree. Seattle Box, 731 F.2d at 826. The claim also does not specify where accurate voltage reproduction must be substantially prevented, however, the specification discusses distortion of the carrier voltage at a point just before the switch, which is denoted as 8214 in Figure 82A. 8 8 Patentee s expert at trial relied solely on such distortions upstream of a switch as evidence of this element. (Ex. 1015: 10/10/13 Tr. 17:2-23:8 (discussing 27

31 The patent explains that there are non-negligible distortions of the input voltage at this point as a result of the transfer of non-negligible energy as shown in FIGS. 83A-B and explained in the specification: FIG. 83B illustrates the effects to the input EM signal 8302, as measured at a terminal 8214 in FIG. 82A, when non-negligible amounts of energy are transfer[ed] from it.... The non-negligible distortions 8308 represent nonnegligible amounts of transferred energy, in the form of charge that is transferred to the storage capacitance 8208 in FIG. 82. (Ex :55-64.) this limitation in claim 91 of the 518 patent, Ex. 1003); id at 38:19-39:19 (applying prior analysis to claim 202 of 551 patent).) 28

32 By contrast, FIGS. 80A-B show negligible distortions during negligible sampling apertures. (Ex FIGS 80A-B, 64:64-65:7.) As explained in Dr. Abidi s declaration, this effect occurs during each aperture when the sampling aperture, τ, is less than the charging time constant of the capacitor. (Ex ) In the embodiment described in the 551 patent as exhibiting these non-negligible distortions the aperture is 550 ps and the charging time constant (R s C) is 900 ps. (Ex :1-68:13.) Accurate voltage reproduction of the carrier signal can also be prevented in steady state, after the accumulation of charge over many apertures. This is the result of the well-known aperture effect discussed in Dr. Abidi s declaration. (Ex , 53.) At the Qualcomm trial, patentee s expert testified that an aperture of ¼ of the carrier period was sufficient to prevent accurate voltage reproduction (Ex. 1015: 10/10/13 Tr. 17:2-23:8; see also Ex /9/13 Tr. 244:9-16 (identifying 25 DC as meaning an aperture of 25% of the carrier period), which would result in a 10% voltage attenuation in steady state. (Ex. 1004, 12.) Any aperture larger than that would cause greater voltage attenuation. (Id. Fig. 4.1.) 29

33 The broadest reasonable interpretation of this phrase should cover voltage attenuations resulting either from using a sampling aperture that is less than the charging time constant of the capacitor or from using an aperture of 25% of the carrier period or greater. VI. LEVEL OF ORDINARY SKILL IN THE ART The level of ordinary skill in the art is evidenced by the references. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did not err in adopting the approach that the level of skill in the art was best determined by the references of record). The parties in the Qualcomm litigation appear to have generally agreed that one of ordinary skill in the art would have a Bachelor s of Science degree in Electrical Engineering and four years of experience in the wireless communications industry (Ex. 1018: D.I ), which is consistent with the level of skill evidenced by the cited references. VII. STATEMENT OF MATERIAL FACTS Pursuant to 37 C.F.R , Petitioner submits the following statement of material facts: Background 1. It was known before October 21, 1998, the filing date of the application which issued as the 551 patent, that the sampling frequency required to reproduce the information in a band-limited signal such as a modulated carrier 30

34 signal was primarily dependent on the bandwidth of the information signal and could be substantially lower than twice the carrier frequency. (Ex ) 2. The impact of using finite sampling apertures, known as the aperture effect, was known to those of skill in the art before October 21, (Ex ) 3. Describing a sampling system in terms of energy adds nothing to a traditional analysis using Kirchoff s Current Law (KCL) and Kirchoff s Voltage Law (KVL) because at a lumped-circuit level KCL and KVL imply conservation of energy. (Ex ) Estabrook (Ex. 1022) 4. Estabrook describes a method and apparatus for down converting a carrier signal to a lower frequency signal. (See, e.g., Ex , Fig. 14.) 5. Estabrook describes single-ended apparatus for down-conversion including a diode switching module, a control signal (ILO) that controls when the diode switches on and off and a capacitor (C LD ). (Id.) 31

35 6. Estabrook describes that the on-time of the diode should be approximately 50% of the period of the ILO control signal in order to minimize conversion loss. (Id. 71.) 7. Estabrook describes use of various load impedances, depending upon the type of diode used, and includes specific values of 500 Ω, 1000 Ω, and 1500 Ω. (Id. 37, Fig. 14, 82, Fig. 27(b), 189, Table 19, 227, Table 26.) 8. Estabrook provides simulation results of her down-conversion apparatus exhibiting a sawtooth voltage waveform resulting from the capacitor charging when the diode is on and discharging and transferring energy to the load resistor when the diode is off. (Id. 48, Fig. 16(a).) 9. Estabrook describes the use of input impedance matching circuits and output impedance matching circuits with down-conversion circuitry. (Ex , Fig. 13.) 32

36 10. Estabrook describes that the resistive matching employed in the described down-conversion apparatus is a form of impedance matching. (Id , Figs. 13, 14(a).) 11. Estabrook describes that, with appropriate modulation used on the carrier signal, [t]he direct conversion receiver then performs the dual function of conversion and demodulation as one process. (Id ) Avitabile (Ex. 1024) 12. Avitabile describes a method and apparatus for down converting a carrier signal to baseband frequency. (Ex , Abstract.) 13. Avitabile describes use of sub-harmonic sampling to achieve down conversion. (Id.) 14. Avitabile s down-conversion apparatus includes a switching module, a control signal to control that switching module and a capacitor. (Id. 338, Fig. 2.) 33

37 Fig.2 Equivalent-circuit model in sampling mode 15. Avitabile describes use of non-negligible sampling apertures of 10% and 40% of the carrier period. (Id ) 16. Avitabile describes directly demodulating while down-converting to baseband. (Id. 337, Abstract.) Weisskopf (Ex. 1023) 17. Weisskopf describes a method and apparatus for down converting a carrier signal to baseband frequency. (Ex , Fig. 2.) 18. Weisskopf s describes use of sub-harmonic sampling to achieve down conversion. (Id.) 19. Weisskopf s down-conversion apparatus includes a switching module (GATE), a control signal to control that switching module (PULSE) and a capacitor (C h ). (Id. 1107, Col. 1, 1108, Fig. 3.) 34

38 20. Weisskopf describes use of a sampling aperture of one-half the carrier period in order to maximize energy transfer to the capacitor. (Id. 243, Col. 3.) 21. Weisskopf describes optimizing the size of the capacitor (C h ) in order to maximize energy transfer from the carrier signal to the capacitor. (Id. 242, Fig. 3.) 22. Having optimized, among other things, the sampling aperture and the capacitance in order to maximize energy transfer from the carrier signal to the capacitor, Weisskopf describes use of both a high-impedance buffer to minimize the energy transfer out of the capacitor and a low-impedance buffer that maximizes the energy transfer out of the capacitor and characterizes the results of each. (Id ) 23. Weisskopf describes that with appropriate modulation used on the carrier signal, the apparatus disclosed can achieve direct down-conversion to baseband frequency and demodulation simultaneously. (Id. 246, Col. 3.) VIII. IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE Pursuant to Rule (b)(4)-(5), this section demonstrates that the challenged claims are unpatentable. 35

39 A. Claims 1, 23, 25, 161, 193, and 202 are Anticipated by Estabrook under 35 U.S.C. 102(b) The following subsections explain on an element-by-element basis how Estabrook anticipates claims 1, 23, 25, 161, 193, and 202 of the 551 patent. Claim 1: A method for down-converting a carrier signal to a lower frequency signal, comprising the steps of: Estabrook discloses a method for down-converting a carrier signal to a lower frequency signal. (See, e.g., Ex ) The circuit shown in Figure 14(a) was chosen as a beginning point for the design of the mixer in the direct downconversion receiver. (Id. 44.) Claim 1: receiving a carrier signal; Estabrook describes receiving a carrier signal, consistently denoted as IRF. (See, e.g., Ex Fig. 14.) Estabrook discloses that, For the purpose of this design, signals are taken to be voice signals modulated with amplitude companded single sideband (ACSB). (Ex ) Claim 1: transferring non-negligible amounts of energy from the carrier signal, at an aliasing rate that is substantially equal to a frequency of the carrier signal plus or minus frequency of the lower frequency signal, 36

40 divided by n, where n represents a harmonic or sub-harmonic of the carrier signal; and Estabrook discusses the explicit goal of minimizing conversion loss (C L ), which is defined as the ratio of power available from the mixer input source over power delivered to the mixer output load. (Ex , 34 ( Minimization of conversion loss is, of course, an important element of mixer design.... )) Estabrook defines ON Time as the portion of the [local oscillator] period that the diode is turned ON ie. that non-zero current is travelling across the diode barrier resistance. (Ex ) Estabrook also describes using an aperture duration or ON time approximately equal to ½ the period of the control signal, LO, in order to maximize the transfer of current from the RF input. (Id. 71. ( As predicted, the minimum C L is achieved when T TON = 0.50 T LO. )) Maximizing current to the load in turn minimizes conversion loss. (Id. 70.) Estabrook reports a conversion loss of 3.1 db. (Ex Abstract.) The energy transfer in Estabrook is non-negligible because the energy is transferred during a non-negligible aperture, the Estabrook circuits work for their intended purpose (Ex Abstract); and the Estabrook circuits have a lower Noise Figure than the nonnegligible energy transfer embodiment described in 551 specification. (Ex , 43, 7.8 ( 551 Patent, F=16 db; Estabrook F=8.7 db.) Estabrook describes down-converting a 909 MHz carrier signal to a lower frequency of 9 MHz using an local oscillator (LO) to control the diode at

41 MHz, which is an aliasing rate with n=1. (Ex ) [A] switch, which is a square wave multiplier of sorts, can be realized at these frequencies using a diode as the switching element. (Id. 67.) The switch is driven between zero and infinite resistance by a periodically varying waveform at the LO frequency Intuitively it seems clear that to maximize the output (I L (t)), the switch should be closed 50% of the LO cycle and that the choice of Rs is arbitrary but that R L = R S. (Id.) Estabrook describes direct down conversion using an LO frequency equal to the carrier frequency, which is also an aliasing rate with n=1. (Ex , Figure 14; , 383; see also Ex ( Thinking of the output voltage as a sampled waveform, whose value[] is measured once every T LO, helps build the analogy between the operation of a complex mixer and that of a simple switching mixer. )) Claim 1: generating a lower frequency signal from the transferred energy. Estabrook describes generating a lower frequency signal from the transferred energy, both under the appropriate broadest reasonable interpretation in light of the specification described above and under the patentee s narrower construction requiring discharge of energy from a storage device. The lower frequency signal output by the RC circuit is shown to be a sawtooth voltage waveform, which the 38

42 patentee has described as the hallmark of its invention. (Ex , Fig. 16(a) (reproduced below 9 ); Ex. 1007: D.I. 269 at 11.) This sawtooth voltage waveform results because in each example described in Estabrook the down-conversion circuitry is followed by a load that would be characterized as a low impedance load using the criteria described in the 551 patent. In the 551 patent, the only example provided of a low impedance load is 2000 Ω for use in down converting a 900 MHz carrier signal. (Ex FIG. 82B; 67:1-47.) The impedance values used in Estabrook are lower than that, while down-converting approximately the same carrier frequency. (Ex , Fig. 14, 82, Fig. 27(b), 189, Table 19, 227, Table 26.) 9 The sine wave upon which the sawtooth is imposed is the down-converted signal, which exists solely as a result of energy transferred from the RF carrier signal. ( Ex ) This is further demonstrated by FFTs that show significant energy at the IF frequency. (Ex , Fig. 19.) 39

43 Claim 23: An apparatus for down-converting a carrier signal to a lower frequency signal, comprising: Estabrook discloses an apparatus for down-converting a carrier signal to a lower frequency signal. (Ex , Fig. 14.) Claim 23: an energy transfer signal generator; a switch module controlled by said energy transfer signal generator; a storage module coupled to said switch module; Estabrook describes a down-conversion circuit containing all of these structural elements arranged in the same manner as in the claim. (Id. 37, Fig. 14(a).) As shown above, Estabrook uses a diode as the switch module, which is an option explicitly described in the specification. (Ex :9-54; FIGS. 66C-D.) The diode is controlled by local oscillator ILO which is an energy transfer signal, because it results in the diode being forward biased for approximately ½ of the period of the RF carrier signal during each cycle of the carrier signal. (Ex ) [A] switch, which is a square wave multiplier of sorts, can be realized at these frequencies using a diode as the switching element. (Id. 67.) When the 40

44 switch is closed, substantial amounts of energy from the carrier signal are transferred to the capacitor. Claim 23: wherein said storage module receives non-negligible amounts of energy transferred from a carrier signal at an aliasing rate that is substantially equal to a frequency of the carrier signal plus or minus a frequency of the lower frequency signal, divided by n where n represents a harmonic or sub-harmonic of the carrier signal, Estabrook discloses this element for the same reasons discussed with respect to step 2 of claim 1 above. Claim 23: wherein a lower frequency signal is generated from the transferred energy. Estabrook discloses this element for the same reasons discussed with respect to step 3 of claim 1 above. Claim 25: The apparatus according to claim 23, wherein said circuit comprises: an output impedance match circuit coupled to an output of said apparatus. The broadest reasonable interpretation of this element includes providing the necessary load impedance directly, as described in the 551 patent. (Ex :48-51.) Estabrook describes directly providing a load impedance chosen to minimize conversion loss and maximize energy transfer, which is described by Estabrook as resistively matched. (Ex. 1022, 59 ( [T]he load and source impedances are adjusted to achieve desired match and minimize C L. ).) 41

45 Estabrook also describes the use of output impedance match circuits as shown in Figure 13, reproduced below. (Id ) Claim 161: The apparatus according to claim 23, wherein said storage device comprises a capacitive storage device sized to store substantial amounts of energy relative to energy contained in a percentage of half cycles of a carrier signal, whereby said capacitive storage device integrates the transferred energy. Estabrook describes a down-conversion apparatus with a 2.8 pf capacitor as the storage device. (Id. 37, Fig. 14.) The diode directs current to this capacitor for approximately half of each cycle of the 900 MHz LO control signal. (Ex ) While Estabrook circuits have a low sampling efficiency (see Ex. 1004, eq. 5.1), they have a very high sample rate as compared to the bandwidth of the input. (Id. 8.1.) Accordingly, multiple samples are taken while the modulation is effectively constant and charge is accumulated on the capacitor. This results in the capacitor storing significantly more energy relative to the amount available in a 42

46 single carrier half cycle than the embodiment described in the 551 patent. ( Ex ) Claim 193: The apparatus according to claim 23, wherein the aliasing rate is substantially equal to a frequency of the carrier signal divided by n, and the lower frequency signal is a demodulated baseband signal. Estabrook describes a direct conversion receiver where the LO control frequency is the same as the carrier frequency (aliasing at n=1) (Ex , 383) and for certain modulation types the receiver performs the dual function of conversion and demodulation as one process. (Id ) Claim 202: The apparatus according to claim 23, wherein said storage module receives and integrates controlled substantial amounts of energy transferred from the carrier signal over aperture periods wherein said storage module generates a lower frequency signal from the integrated energy Estabrook discloses a down-conversion circuit where the capacitor receives current from the RF carrier for approximately half the period of the LO control signal and accumulates charge on the capacitor and stores energy which forms the down-converted lower frequency signal. 43

47 (Id. 70.) The Estabrook circuitry exhibits a low sampling efficiency but a high sampling rate as compared to input signal bandwidth and accumulates charge over multiple samples. ( Ex , 8.1.) Claim 202: wherein the transferring of energy substantially prevents accurate voltage reproduction of the carrier signal during the apertures. Estabrook uses an aperture of 50% of the LO period (Ex ), which in the example of Figure 14 is approximately 560 ps, while R S C = 2.8 ns. (Id. 37, Fig. 14.) Accordingly, accurate voltage reproduction of the carrier signal is substantially prevented during the apertures. ( Ex ) Estabrook s 50% apertures will also prevent accurate voltage reproduction in steady state. (Id. 29, 53.) * * * Thus, claims 1, 23, 25, 161, 193, and 202 are anticipated under 35 U.S.C. 102(b) by Estabrook. B. Claims 1, 23, 161, 193, and 202 are Anticipated by Avitabile under 35 U.S.C. 102(b) as well as claim 25 under patentee s claim interpretation The following subsections explain on an element-by-element basis how Avitabile anticipates claims 1, 23, 193, and 202 of the 551 patent as well as claim 25 under the patentee s claim interpretation. 44

48 Claim 1: A method for down-converting a carrier signal to a lower frequency signal, comprising the steps of: Avitabile discloses a method for down-converting a carrier signal to a lower frequency signal. In particular, it discloses a sub-harmonic sampling method for directly down-converting a carrier signal to baseband frequency. (Ex , Abstract.) Claim 1: receiving a carrier signal; (Id 338.) Avitabile describes receiving a carrier signal, shown as V in (t) in Fig. 2. Fig.2 Equivalent-circuit model in sampling mode Avitabile describes performing simulations using input carrier signals with AM modulation and a carrier frequency F c = 1 GHz. (Id. 340.) Claim 1: transferring non-negligible amounts of energy from the carrier signal, at an aliasing rate that is substantially equal to a frequency of the carrier signal plus or minus frequency of the lower frequency signal, divided by n, where n represents a harmonic or sub-harmonic of the carrier signal; and Avitabile describes transferring non-negligible amounts of energy from the carrier signal. Avitibale describes down-converting a 1 GHz signal using an 45

49 aperture of 400 ps (prototype SH1) or 100 ps (prototype SH2). (Id ) These apertures, which represent 2/5 and 1/10 of the carrier period respectively, are non-negligible. (Cf. Ex :43-47.) In addition, both prototypes SH1 and SH2 work for their intended application as shown, for example in Figures 6 and 10. (Ex , Fig. 6, 341, Fig. 10.) Finally, both prototype exhibit a Noise Figure that is comparable or better than the exemplary non-negligible energy transfer embodiment described in the 551 specification. ( Ex , 7.4 ( 551 patent F = 16 db; Avitabile SH1, F = 13.5 db, SH2, F = 16 db).) Avitabile describes sub-harmonic sampling throughout the paper, which satisfies the remainder of this element including the aliasing rate and the parameter n being an integer value greater than 1. Indeed, sub-harmonic sampling is a preferred embodiment of the 551 patent. (Ex :46-50 ( [T]he aliasing rate is substantially equal to... more typically, a sub-harmonic of the difference frequency. ).) Claim 1: generating a lower frequency signal from the transferred energy. Avitabile describes the down-converted signal as the voltage across the capacitor in Figure 2. (Ex , Fig. 2.) This voltage only exists because there is energy stored on the capacitor. ( Ex ) Furthermore, the FFT of Fig. 10 shows that the energy in the down-converted signal is concentrated 46

50 at 45 MHz, representing an AM modulated carrier with that bandwidth which has been down-converted to baseband frequency. (Ex , Fig. 10.) To the extent that this element is construed to require discharge of the capacitor, this is also disclosed by Avitabile. Avitabile shows that energy is discharged from the capacitor during the hold period, which is referred to as droop off. (Ex , Fig. 7.) Claim 23: An apparatus for down-converting a carrier signal to a lower frequency signal, comprising: Avitabile discloses a sub-harmonic sampling apparatus for down-converting a carrier signal to a lower frequency signal. (Ex , Abstract, 338, Fig. 2.) Claim 23: an energy transfer signal generator; a switch module controlled by said energy transfer signal generator; a storage module coupled to said switch module; Avitabile describes each of these structural elements in Fig. 2, arranged in the same manner as in the claim. (Ex Fig. 2.) Fig.2 Equivalent-circuit model in sampling mode Avitibale describes down-converting a 1 GHz signal using an aperture of 400 ps (prototype SH1) or 100 ps (prototype SH2). (Id ) These apertures, which 47

51 represent 2/5 and 1/10 of the carrier period respectively, are non-negligible and Avitibale thus disclose an energy transfer signal generator. (Cf. Ex :43-47.) Claim 23: wherein said storage module receives non-negligible amounts of energy transferred from a carrier signal at an aliasing rate that is substantially equal to a frequency of the carrier signal plus or minus a frequency of the lower frequency signal, divided by n where n represents a harmonic or sub-harmonic of the carrier signal, Avitabile discloses this element for the same reasons discussed with respect to step 2 of claim 1 above. Claim 23: wherein a lower frequency signal is generated from the transferred energy. Avitabile discloses this element for the same reasons discussed with respect to step 3 of claim 1 above. Claim 25: The apparatus according to claim 23, wherein said circuit comprises: an output impedance match circuit coupled to an output of said apparatus. Avitabile describes designing prototypes with the load resistance, R L, as a system parameter and then setting the capacitor value as a function of the maximum allowable [voltage] drop. (Ex ) This meets the construction advocated by patentee and adopted by the district court because that is Avitabile s desired energy transfer. (Ex. 1008: D.I. 243 at ) Claim 161: The apparatus according to claim 23, wherein said storage device comprises a capacitive storage device sized to store substantial 48

52 amounts of energy relative to energy contained in a percentage of half cycles of a carrier signal, whereby said capacitive storage device integrates the transferred energy. Avitabile describes a down-conversion apparatus with a 5 pf capacitor as the storage device for the SH2 prototype. (Ex ) Assuming the same capacitor is used in both prototypes, the SH1 prototype accumulates energy over multiple apertures and in steady state will store an amount of energy relative to the energy available in a half carrier cycle that is commensurate with the example provided in the 551 specification. ( Ex ) Claim 193: The apparatus according to claim 23, wherein the aliasing rate is substantially equal to a frequency of the carrier signal divided by n, and the lower frequency signal is a demodulated baseband signal. Avitabile describes direct down-conversion and simultaneous demodulation using subharmonic sampling. (Ex Abstract.) For example, Avitabale uses an aliasing rate of 250 MHz to down-convert a 1 GHz carrier, i.e., n substantially equal to 4 (Id. 341, Fig. 10.) Claim 202: The apparatus according to claim 23, wherein said storage module receives and integrates controlled substantial amounts of energy transferred from the carrier signal over aperture periods, wherein said storage module generates a lower frequency signal from the integrated energy Avitabile describes charge being transferred to and accumulated on the capacitor during each sample. For example, Avitabile describes with respect to prototype SH1 sampling a 30 MHz bandwidth signal at 250 MHz. (Ex

53 342.) Since the sampling rate is much greater than the information rate, the modulation remains constant for a number of samples allowing charge to accumulate on the capacitor across those samples. Avitabile refers to an HP Journal article for a further explanation of this phenomenon. (Ex ) As explained in the HP article: Most microwave samplers have relatively low voltage transfer efficiencies, usually significantly less than 10%. With this low sampling efficiency, the resultant voltage on the hold capacitor is a weighted combination of the input voltage from many samples. (Ex ) Claim 202: wherein the transferring of energy substantially prevents accurate voltage reproduction of the carrier signal during the apertures. Avitabile, with respect to prototype SH2, describes using an aperture of 100 ps while R S C = 250 ps. (Id. 342.) Accordingly, accurate voltage reproduction of the carrier signal is substantially prevented during the apertures. ( Ex ) The 40% of the carrier period aperture used with SH2 will prevent accurate voltage reproduction during steady state. (Id. 9-2, 53, Fig. 4.1.) * * * Thus, claims 1, 23, 161, 193, and 202 are anticipated under 35 U.S.C. 102(b) by Avitabile as well as claim 25 under patentee s interpretation. 50

54 C. Claims 1, 23, 161, 193, and 202 are Anticipated by Weisskopf under 35 U.S.C. 102(b) as well as claim 25 under patentee s claim interpretation The following subsections explain on an element-by-element basis how Weisskopf anticipates claims 1, 23,161, 193, and 202 of the 551 patent as well as claim 25 under patentee s claim interpretation. Claim 1: A method for down-converting a carrier signal to a lower frequency signal, comprising the steps of: Weisskopf discloses a method for down-converting a carrier signal to a lower frequency signal. In particular, it discloses a sub-harmonic sampling method for directly down-converting a microwave carrier signal to baseband frequency. (Ex , Fig. 2.) Claim 1: receiving a carrier signal; Weiskopf indicates that Maximum kinetic energy will be transferred to the hold capacitor when the sampling aperture is one half the period of the frequency of the the {sic.} sampled carrier. (Id. 243, Col. 3) Thus, Weisskopf describes receiving a carrier signal, shown as the source in Figs. 2 and 4. (Id ) 51

55 Claim 1: transferring non-negligible amounts of energy from the carrier signal, at an aliasing rate that is substantially equal to a frequency of the carrier signal plus or minus frequency of the lower frequency signal, divided by n, where n represents a harmonic or sub-harmonic of the carrier signal; and Weisskopf describes transferring non-negligible amounts of energy from the carrier signal. In fact, Weisskopf describes methods for maximizing the energy transferred from the carrier signal. (Id. 243, Col. 3 ( Maximum kinetic energy will be transferred to the hold capacitor when the sampling aperture is onehalf the period of the sampled carrier. 10 ) Weisskopf also optimizes other parameters, including the size of the capacitor, in order to maximize energy transfer from the carrier signal. (Id. 242, Col. 1 ( With R s and C h established to give maximum kinetic energy for a given sampling aperture, the effects of buffer impedance on the stored voltage during the hold cycle are considered. )) Weisskopf describes two approaches, one using a high-impedance load and one using a low-impedance load, but maximizes the energy transfer to the capacitor for both. (Ex ) Weisskopf s energy transfer is also non-negligible because Weisskopf s circuit works for its intended application (id. 240 ( The output FFT spectrum of the defined subharmonic sample-and-hold process reveals its most 10 This is the same aperture duration that the 551 patent describes as a preferred embodiment. (Ex :66-105:2.) 52

56 significant property, which is the ability to downconvert a microwave or mm-wave signal to baseband with great efficiency and without loss of fidelity. ) and the Weisskopf circuit exhibits a Noise Figure comparable to the non-negligible energy transfer embodiment of the 551 specification. ( Ex , 43, 7.3.)( 551 patent, F=16 db; Weisskopf, F=17 db.) Weisskopf describes sub-harmonic sampling throughout his paper, which satisfies the remainder of this element including the aliasing rate and the parameter n being an integer value greater than 1. Indeed, sub-harmonic sampling is a preferred embodiment of the 551 patent. (Ex :46-50.) Claim 1: generating a lower frequency signal from the transferred energy. Weisskopf describes generating the lower frequency signal from the transferred energy, explicitly stating that [t]he Fourier transforms of Figure 1b show how the sample-and-hold process converts most of the sampled energy to the baseband spectral replica centered at f(t) n x f c. (Ex , Col. 2.) This element is disclosed by Weisskopf even if patentee s restrictive construction requiring discharge of energy from a storage module were adopted. While Weisskopf prefers using a high-impedance load, he also describes use of a low-impedance load in which substantial amounts of energy are discharged from the capacitor. (Ex , Fig. 5.) While Weisskopf expresses a preference for use of a high-impedance load, that is irrelevant to anticipation. Celeritas 53

57 Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354 at (Fed. Cir. 1998) ( A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. ); id. (showing the claimed invention to be less than optimal does not vitiate that it is disclosed ); ClearValue v. Pearl River Polymers, 668 F.3d 1340, 1344 (Fed. Cir. 2012) ( [W]hether a reference teaches away from [an] invention is inapplicable to an anticipation analysis. ) (internal quotation omitted). While Weisskopf describes use of a low-impedance load as sub-optimal, it still generates a lower frequency signal. (Ex ; Fig. 5.) This element contains no limitation regarding the quality of the lower frequency signal, and as shown in the time domain plot of Figure 5, Weisskopf s low-impedance embodiment discharges substantially all of the transferred energy from the capacitor between each sample, resulting in the capacitor decaying to approximately 0 Volts between samples. (Ex Fig. 5.) 54

58 This is exactly how a number of non-negligible energy transfer embodiments are shown as behaving in the 551 patent, as shown below. (Ex FIG. 50E; see also FIGS. 51E; 52E; 53E; 54E; 55E; 57E; 58E; 59E; 60E; 61E; 62E.) Claim 23: An apparatus for down-converting a carrier signal to a lower frequency signal, comprising: Weisskopf discloses a sub-harmonic sampling apparatus for downconverting a carrier signal to a lower frequency signal. (Ex , Fig. 2.) 55

59 Claim 23: an energy transfer signal generator; a switch module controlled by said energy transfer signal generator; a storage module coupled to said switch module; Weisskopf describes each of these structural elements in Fig. 2, arranged in the same manner as in the claim. (Ex Fig. 2; see also Fig. 4.) Both the size of the capacitor (C h ) and the aperture of the pulse that controls the gate in Weisskopf are chosen to maximize energy transfer from the source to C h. (Id. 242 Col. 2; 243 Col. 3.) Claim 23: wherein said storage module receives non-negligible amounts of energy transferred from a carrier signal at an aliasing rate that is substantially equal to a frequency of the carrier signal plus or minus a frequency of the lower frequency signal, divided by n where n represents a harmonic or sub-harmonic of the carrier signal, Weisskopf discloses this element for the same reasons discussed with respect to step 2 of claim 1 above. Claim 23: wherein a lower frequency signal is generated from the transferred energy. Weisskopf discloses this element for the same reasons discussed with respect to step 3 of claim 1 above. 56

60 Claim 25: The apparatus according to claim 23, wherein said circuit comprises: an output impedance match circuit coupled to an output of said apparatus. Weisskopf describes a preference for a high-impedance load that minimizes the amount of energy discharged from the capacitor. (Ex ) This meets the construction advocated by patentee and adopted by the district court because that is Weisskopf s desired energy transfer. (Ex. 1008: D.I. 243 at ) To the extent the final wherein clause of claim 23 is interpreted as suggested by patentee to require discharge of energy from the capacitor, the lowimpedance load described in Weisskopf meets this limitation under patentee s construction as well, because it has a low impedance at the output of the downconversion circuitry and results in all of the energy stored in the capacitor during each sample being discharged between samples. (Ex Fig. 5.) This is also consistent with arguments presented by patentee at trial. Patentee s expert testified that all that was needed to satisfy this element was a low impedance load. (Ex. 1015: 10/10/13 Tr. 11:5-16:6 (testifying regarding claim 90 of U.S. Patent No. 6,266,518, Ex. 1003, a continuation of the 551 patent), 29:8-31:6 (applying prior testimony to claim 25 of the 551 patent); see also Ex. 1021: D.I. 475 at 14, n. 102 (citing the same testimony as alleged evidence of output impedance matching).) Claim 161: The apparatus according to claim 23, wherein said storage device comprises a capacitive storage device sized to store substantial amounts of energy relative to energy contained in a percentage of half cycles of a carrier signal, whereby said capacitive storage device integrates 57

61 the transferred energy. Weisskopf describes that optimum performance is achieved with a larger capacitor that is sized to maximize energy transfer. (Ex ) The carrier signal causes charge to be accumulated on the capacitor. (Ex ) Weisskopf notes that the charge (q) that accumulates on the capacitor can be determined by performing an integral function over the timespan of the aperture (Id. 240, Col. 3.) The energy stored on the capacitor can then be determined from the accumulated charge. (Id ) Weisskopf s sampling rate is greater than the bandwidth of the modulated signal allowing charge to accumulate over multiple samples. ( Ex ) Weisskopf describes direct down-conversion of an 18.5 GHz carrier with a capacitor of 1 pf and a transformed R S = 25 Ω or 2 pf and a transformed R S = 10 Ω resulting in a commensurate amount of the energy in a half carrier cycle being stored on the capacitor as in the 551 patent embodiments. (Ex ) Claim 193: The apparatus according to claim 23, wherein the aliasing rate is substantially equal to a frequency of the carrier signal divided by n, and the lower frequency signal is a demodulated baseband signal. Weisskopf describes direct down-conversion using subharmonic sampling at one-tenth the carrier frequency (n=10). (Ex Col. 1) Weisskopf describes that with appropriate modulation, [t]he quadrature subharmonic 58

62 sampling module performs frequency conversion to baseband as well as I and Q demodulation, simultaneously. (Id. 248, Col. 3) Claim 202: The apparatus according to claim 23, wherein said storage module receives and integrates controlled substantial amounts of energy transferred from the carrier signal over aperture periods, wherein said storage module generates a lower frequency signal from the integrated energy Weisskopf discusses maximizing energy transfer from the carrier signal and accumulating charge and energy on the capacitor. (Ex , Col. 2, Fig. 3; 243, Col. 3.) Claim 202: wherein the transferring of energy substantially prevents accurate voltage reproduction of the carrier signal during the apertures. Weisskopf uses an aperture of 50% of the carrier period (Ex ), which at 18.5 GHz is approximately 27 ps while transformed RsC = 25 ps or 20 ps depending on the input impedance matching used. (Id. 242, Fig. 3.) Accordingly, 59