Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 1 of 29 PageID 4396

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1 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 1 of 29 PageID 4396 UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION PARKERVISION, INC., Plaintiff, v. APPLE INC. and QUALCOMM INCORPORATED, Case No. 3:15-CV-1477-BJD-JRK Defendants. DEFENDANTS RESPONSIVE CLAIM CONSTRUCTION BRIEF

2 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 2 of 29 PageID 4397 TABLE OF CONTENTS Page I. INTRODUCTION... 1 II. DISPUTED CLAIM CONSTRUCTIONS... 1 A. portion of energy that is distinguishable from noise... 1 B. energy storage element... 6 C. baseband signal portion... 7 D. outputs... 9 E. integrated F. derived III. CLAIM TERMS THAT ARE INDEFINITE IV. CONCLUSION i

3 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 3 of 29 PageID 4398 Cases TABLE OF AUTHORITIES Page(s) ActiveVideo Networks v. Verizon Commc ns, 694 F.3d 1312 (Fed. Cir. 2012)...5 AlmondNet v. Microsoft, No , 2011 WL (W.D. Wis. June 7, 2011)...6, 10, 16 Apple v. Samsung Elecs., No , 2012 WL (N.D. Cal. July, 20, 2012)...3 Aspex Eyewear v. Zenni Optical, 713 F.3d 1377 (Fed. Cir. 2013)...14 Atlas IP v. Medtronic, 809 F.3d 599 (Fed. Cir. 2015)...20 Atlas IP v. St. Jude Med., 804 F.3d 1185 (Fed. Cir. 2015)...20 Atlas IP v. St. Jude Med., No , 2014 WL (S.D. Fla. July 30, 2014)...19, 20 Baran v. Med. Device Techs., 616 F.3d 1309 (Fed. Cir. 2010)...14 Bell Atl. Network Servs. v. Covad Commc ns Grp., 262 F.3d 1258 (Fed. Cir. 2001)...14 CollegeNet v. ApplyYourself, 418 F.3d 1225 (Fed. Cir. 2005)...16 Curtiss-Wright Flow Control v. Velan, 438 F.3d 1374 (Fed. Cir. 2006)...13, 14 Edward Lifesciences v. Cook, 582 F.3d 1322 (Fed. Cir. 2009)...14 Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314 (Fed. Cir. 2016)...4 Financeware v. UBS Fin. Servs., No , 2011 WL (S.D.N.Y. Dec. 7, 2011)...6, 16 Finjan v. Secure Computing, 626 F.3d 1197 (Fed. Cir. 2010)...5 ii

4 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 4 of 29 PageID 4399 TABLE OF AUTHORITIES (continued) Page(s) GPNE v. Apple, 830 F.3d 1365 (Fed. Cir. 2016)...5 H-W Tech. v. Overstock.com, 758 F.3d 1329 (Fed. Cir. 2014)...19, 20 Haemonetics v. Baxter Healthcare, 607 F.3d 776 (Fed. Cir. 2010)...18 Hologic v. SenoRx, 639 F.3d 1329 (Fed. Cir. 2011)...14 Jack Guttman, Inc. v. Kopykake Enters., 302 F.3d 1352 (Fed. Cir. 2002)...6 Lazare Kaplan Int l v. Photoscribe Techs., 628 F.3d 1359 (Fed. Cir. 2010)...3 Lyons v. Nike, No , 2010 WL (D. Or. Sept. 28, 2010)...2 Molinaro v. Fannon/Courier, 745 F.2d 651 (Fed. Cir. 1984)...14 Network Commerce v. Microsoft, 422 F.3d 1353 (Fed. Cir. 2005)...16 NobelBiz v. Glob. Connect, Nos , -1105, 2017 U.S. App. LEXIS (Fed. Cir. July 19, 2017)...4 Nystrom v. Trex, 424 F.3d 1136 (Fed. Cir. 2005)...14 O2 Micro Int l v. Beyond Innovation Tech., 521 F.3d 1351 (Fed. Cir. 2008)...1, 4, 5 Ohio Willow Wood v. Alps South, 735 F.3d 1333 (Fed. Cir. 2013)...13 Parallel Networks Licensing v. IBM, 83 F. Supp. 3d 571 (D. Del. 2015)...20 ParkerVision v. Qualcomm, 27 F. Supp. 3d 1266 (M.D. Fla. 2014)...13, 14 iii

5 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 5 of 29 PageID 4400 TABLE OF AUTHORITIES (continued) Page(s) ParkerVision v. Qualcomm, 621 F. App x 1009 (Fed. Cir. 2015)... passim ParkerVision v. Qualcomm, 969 F. Supp. 2d 1372 (M.D. Fla. 2013)...19, 20 Rembrandt Data Techs. v. AOL, 641 F.3d 1331 (Fed. Cir. 2011)...17, 18, 20 Schoeller-Bleckmann Oilfield Equip. v. Churchill Drilling Tools US, 664 F. App x 949 (Fed. Cir. 2016)...10 Sciele Pharma v. Lupin, No , 2011 WL (D. Del. Sept. 15, 2011)...1 Secure Web Conference v. Microsoft, 640 F. App x 910 (Fed. Cir. 2016)...8 Serverside Grp. v. Tactical 8 Techs., 927 F. Supp. 2d 623 (N.D. Iowa 2013)...2 Signal IP v. Mazda Motor of Am., Nos , , , 2015 WL (C.D. Cal. Nov. 2, 2015)...20 Sofamor Danek v. DePuy-Motech, 74 F.3d 1216 (Fed. Cir. 1996)...6, 16 Static Control Components v. Lexmark Int l, 502 F. Supp. 2d 568 (E.D. Ky. 2007)...7 Summit 6 v. Samsung Elecs., 802 F.3d 1283 (Fed. Cir. 2015)...5 U.S. Surgical v. Ethicon, 103 F.3d 1554 (Fed. Cir. 1997)...4 Ultimax Cement Mfg. v. CTS Cement Mfg., 587 F.3d 1339 (Fed. Cir. 2009)...18, 19 Virnetx v. Cisco Sys., 767 F.3d 1308 (Fed. Cir. 2014)...10 iv

6 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 6 of 29 PageID 4401 TABLE OF AUTHORITIES (continued) Page(s) Other Authorities Webster s Ninth New Collegiate Dictionary...15 v

7 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 7 of 29 PageID 4402 I. INTRODUCTION The Court should reject ParkerVision s repeated attempts to rewrite the claim language. ParkerVision s proposed constructions conflict with the claim language, are based on inapposite general-purpose dictionary definitions, seek to divorce the claim language from the context of the description of its alleged invention, and try to avoid indefiniteness by substituting different signals for the signals actually recited in the claims. ParkerVision s proposals contradict governing Federal Circuit law and should be rejected. II. DISPUTED CLAIM CONSTRUCTIONS A. portion of energy that is distinguishable from noise Term Plaintiff s Construction Defendants Construction portion of energy that is distinguishable from noise enough energy to allow the system to successfully distinguish the portion of energy from noise; if the circuit successfully downconverts, the portion of energy is distinguishable from noise Plain and ordinary meaning Although ParkerVision proposed a long, two-part construction, its brief does not mention the first part of its construction (i.e., the language before the semicolon). (ParkerVision s Opening Claim Construction Brief, Dkt. 80 ( PV Br. ) at ) As a result, ParkerVision has not identified any fundamental dispute that would allegedly be addressed by its proposed language. O2 Micro Int l v. Beyond Innovation Tech., 521 F.3d 1351, 1362 (Fed. Cir. 2008); Sciele Pharma v. Lupin, No , 2011 WL , at *10 (D. Del. Sept. 15, 2011) ( Although Defendant Mylan invites the Court to construe these terms, it gestures to no live controversy that would require their construction. ). In any event, 1

8 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 8 of 29 PageID 4403 ParkerVision s proposed construction, at best, merely rearranges words, swapping the claim language portion of energy that is distinguishable from noise for language indicating that the system must successfully distinguish the portion of energy from noise. (PV Br. 16.) ParkerVision s proposed construction does nothing but invite confusion. Lyons v. Nike, No , 2010 WL , at *9-11 (D. Or. Sept. 28, 2010), adopted, 2011 WL (D. Or. Feb. 11, 2011) (rejecting construction that merely seeks to reconfigure claim language in way that is not meaningful ); Serverside Grp. v. Tactical 8 Techs., 927 F. Supp. 2d 623, 629, 659 (N.D. Iowa 2013) (rejecting an attempt to construe the term secure unique identifier as unique identifier which is secure [T]his proposed construction clears up nothing. ). The Court should also reject the second part of ParkerVision s proposed construction (i.e., the language after the semicolon). ParkerVision argues that [t]he Federal Circuit interpreted portion of energy that is distinguishable from noise during the appeal in ParkerVision I, and ParkerVision s proposed construction is the same as the Federal Circuit s interpretation. (PV Br ) Both of ParkerVision s assertions are incorrect. In ParkerVision I, the Federal Circuit addressed the issue of distinguishability from noise as a factual matter, not as a matter of claim construction. ParkerVision v. Qualcomm, 621 F. App x 1009, (Fed. Cir. 2015). The Federal Circuit rejected factual arguments made by ParkerVision about the trial evidence regarding the Weisskopf prior art reference. Id. The Federal Circuit noted that the construction was not disputed on appeal, quoted from the Weisskopf reference, cited the testimony of ParkerVision s lead named inventor, and pointed to the uncontradicted testimony from Qualcomm s expert witness, Dr. Razavi, that the Weisskopf system is designed to maximize the amount of energy transferred from the carrier 2

9 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 9 of 29 PageID 4404 signal to the capacitor and to generat[e] a baseband signal using that transferred energy. Id. Analyzing all that evidence, the Court held as a factual matter: The fact that Weisskopf transfers as much energy as possible from the carrier signal, resulting in a commercially viable down-converting system is proof that the system successfully distinguishes the transferred energy from noise. No reasonable jury could have concluded otherwise. Id. The Court should reject ParkerVision s attempt to convert this factual issue into a legal rule via claim construction. Lazare Kaplan Int l v. Photoscribe Techs., 628 F.3d 1359, (Fed. Cir. 2010) ( [T]he parties dispute concerns factual questions relating to the test for infringement and not the legal inquiry of the appropriate scope of the positional accuracy limitation. ); Apple v. Samsung Elecs., No , 2012 WL , at *6 (N.D. Cal. July, 20, 2012) ( In this case there is no actual dispute between the parties regarding the scope of the claim term. Rather, the dispute between the parties is whether the prior art reference LaunchTile discloses a structured electronic document and thus anticipates the 163 Patent. ). ParkerVision s argument that it simply adopts the Federal Circuit s analysis is also mistaken. (PV Br. 17.) ParkerVision s proposed construction seeks to equate successful downconversion with transferring energy to a capacitor, regardless of how the downconverter actually operates. (Id.) But the Federal Circuit did not hold that the same factual inference from successful downconversion can be drawn for every type of downconverter. ParkerVision I, 621 F. App x at Instead, the Federal Circuit s successful downconversion discussion focused specifically on the Weisskopf reference, and the remainder of its opinion shows that the Weisskopf discussion cannot be stretched to cover devices that downconvert in other ways. Id. at (Defendants Opening Claim 3

10 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 10 of 29 PageID 4405 Construction Brief, Dkt. 81 ( Defs. Br. ) at 9-10.) For example, the Federal Circuit held that it was undisputed... that a double-balanced mixer by itself (i.e., without the addition of output capacitors) can be used to convert high-frequency carrier signals into low-frequency baseband signals. ParkerVision I, 621 F. App x at In other words, for some circuits (like Qualcomm s), successful downconversion does not require transferring any energy into a capacitor, let alone amounts distinguishable from noise. Indeed, ParkerVision s proposed construction would lead to the absurd result that a downconverter that successfully downconverted but did not include any capacitors whatsoever would still be found to have transferred energy to a capacitor in amounts distinguishable from noise. Once the Court has rejected ParkerVision s attempt to rewrite the claim language, it may rely on the plain and simple language recited in the claim itself. ParkerVision argues for this term, and several other terms, that the Court must provide a construction that identifies the term s ordinary meaning by rewording the claim language. (PV Br. 1, ) ParkerVision s argument misstates the law. The Federal Circuit has long emphasized that claim construction is not an obligatory exercise in redundancy. U.S. Surgical v. Ethicon, 103 F.3d 1554, 1568 (Fed. Cir. 1997). As the cases cited by ParkerVision recognize, a district court s duty at the claim construction stage is, simply, the one that we described in O2 Micro and many times before: to resolve a dispute about claim scope that has been raised by the parties. Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1319 (Fed. Cir. 2016). O2 Micro, 521 F.3d at ( When the parties present a fundamental dispute regarding the scope of a claim term, it is the court s duty to resolve it. ); NobelBiz v. Glob. Connect, Nos , -1105, 2017 U.S. App. LEXIS 12946, at *5-7 (Fed. Cir. July 19, 2017) (same). The Court has 4

11 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 11 of 29 PageID 4406 no duty to attempt to define the ordinary meaning more generally: Where a district court has resolved the questions about claim scope that were raised by the parties, it is under no obligation to address other potential ambiguities that have no bearing on the operative scope of the claim. This is because such an endeavor could proceed ad infinitum, as every word whether a claim term itself, or the words a court uses to construe a claim term is susceptible to further definition, elucidation, and explanation. GPNE v. Apple, 830 F.3d 1365, (Fed. Cir. 2016) (internal quotation omitted). After resolving the parties dispute, the Court need not restate, rearrange, or otherwise reword the claim language. For example, in ActiveVideo, the Federal Circuit held that the plaintiff s proposed construction erroneously reads limitations into the claims and the district court properly rejected that construction and resolved the dispute between the parties. ActiveVideo Networks v. Verizon Commc ns, 694 F.3d 1312, (Fed. Cir. 2012). Having resolved that dispute, [t]he district court did not err in concluding that these terms have plain meanings that do not require additional construction. Id. The Federal Circuit has approved this approach in many cases. 1 Accordingly, after rejecting ParkerVision s erroneous attempts to rewrite this claim term, the Court may hold that the term does not need further construction. Accordingly, the Court should reject ParkerVision s proposed construction. The first 1 E.g., Summit 6 v. Samsung Elecs., 802 F.3d 1283, 1291 (Fed. Cir. 2015) ( At the claim construction stage, the district court rejected Samsung s argument that ongoing activity is required the heart of the parties disagreement and declined to further construe the term because it was a straightforward term that required no construction... Because the plain and ordinary meaning of the disputed claim language is clear, the district court did not err by declining to construe the claim term. ); Finjan v. Secure Computing, 626 F.3d 1197, 1207 (Fed. Cir. 2010) ( Unlike O2 Micro, where the court failed to resolve the parties quarrel, the district court rejected Defendants construction, which required an IP address. Later, at trial, it prevented the jury from reconstruing the term by stopping Defendants expert... from repeating to the jury that the asserted claims require an IP address... In this situation, the district court was not obligated to provide additional guidance to the jury. ). 5

12 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 12 of 29 PageID 4407 part of ParkerVision s construction, at best, merely rearranges claim language without meaningful effect, and the second part improperly attempts to convert a factual issue into a legal rule and misinterprets the Federal Circuit s factual analysis in ParkerVision I. B. energy storage element energy storage element Term Plaintiff s Construction Defendants Construction energy storage circuit or device Plain and ordinary meaning. Alternatively, energy storage device. ParkerVision has not identified any reason to deviate from this term s plain claim language. ParkerVision has failed to identify any dispute that turns on whether, to what extent, and what type of a circuit might be included within the scope of the term. ParkerVision s proposal thus amounts to nothing but an invitation to a new round of arguments at a later stage about the meaning of the court s construction, or about the hidden implications of the language adopted. AlmondNet v. Microsoft, No , 2011 WL , at *1 (W.D. Wis. June 7, 2011) ( It is counterproductive to resolve claims construction disputes by replacing them with new ones for the parties to dispute about at summary judgment. ). 2 Moreover, nothing in ParkerVision s dictionary definitions requires that the term element include entire circuits. (PV Br. 21.) The McGraw-Hill definition distinguishes an 2 Sofamor Danek v. DePuy-Motech, 74 F.3d 1216, 1221 (Fed. Cir. 1996) ( Markman, does not obligate the trial judge to conclusively interpret claims at an early stage in a case. ); Jack Guttman, Inc. v. Kopykake Enters., 302 F.3d 1352, 1361 (Fed. Cir. 2002) ( District courts may engage in a rolling claim construction, in which the court revisits and alters its interpretation of the claim terms as its understanding of the technology evolves. ); Financeware v. UBS Fin. Servs., No , 2011 WL , at *2 3 (S.D.N.Y. Dec. 7, 2011) ( At the summary judgment phase of the litigation,... the Court will be presented with a comprehensive factual background and focused arguments, facilitating informed and efficient claim construction. ). 6

13 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 13 of 29 PageID 4408 element from the overall circuit and states that an element may be connected to other components to form a circuit, contradicting ParkerVision s argument. (Damstedt Decl., Ex. 8 at 424, 668 ( component, element ).) The Illustrated Dictionary also does not support broadly capturing any and all circuits within the scope of the term element, but instead says only that a circuit that can be taken as a unit because it performs a special function may be considered an element. (Ex. M.) Accordingly, the Court should reject ParkerVision s proposed construction in favor of the plain claim language. C. baseband signal portion Term Plaintiff s Construction Defendants Construction baseband signal portion part of the baseband signal Plain and ordinary meaning ParkerVision offers two mistaken arguments in support of its proposed construction. First, ParkerVision cites dictionary definitions that are irrelevant, because they note only that the words portion and part are synonyms. (PV Br. 19.) As courts have recognized, a proposal that simply trades one synonym for another invites a meaningless result that mocks the notion of construction. Static Control Components v. Lexmark Int l, 502 F. Supp. 2d 568, (E.D. Ky. 2007) (discussing example of construing dog as canine ). Second, ParkerVision improperly focuses on a portion 3 of the specification that uses the word portion differently from the claim language. What the word portion refers to depends on the context in which it is used. For example, a portion can refer to a portion of a road, a portion of a desk, a portion of a day, a portion of a group, etc., depending on the context. The 528 patent itself uses the term portion in a variety of contexts, for example, 3 Or a part or piece or section of the specification, depending on the synonym. 7

14 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 14 of 29 PageID 4409 referring to a portion of the total power, a portion of gate 12802, some portion of the mix, and a portion of the operation. (E.g., id., col. 31:50-52, 118:1-5, 155:15-16, 160:1-2.) Here, the parties dispute centers on whether the claims use portion to refer to a portion of the modulated carrier signal or a portion of the baseband signal. ParkerVision ignores the claim language, which is decisive. The claim language expressly describes what the portion refers to, reciting that the claimed portion is a portion of said modulated carrier signal, not a portion of the baseband signal as ParkerVision contends. For example, claim 1 recites: a down-converted in-phase baseband signal portion of said modulated carrier signal. ( 528 patent, claim 1 (emphasis added).) ParkerVision also ignores the language before the term it proposes for construction. Secure Web Conference v. Microsoft, 640 F. App x 910, 915 (Fed. Cir. 2016) (constructions should not divorce term from surrounding language). That additional claim language expressly distinguishes between different portions of the modulated carrier signal. For example, claim 1 distinguishes between the down-converted in-phase baseband signal portion of said modulated carrier signal and the down-converted inverted in-phase baseband signal portion of said modulated carrier signal. ( 528 patent, claim 1 (emphasis added).) Claim 1 does not distinguish between different time periods within a single baseband signal, as ParkerVision proposes. Here and for other terms, ParkerVision ignores the only part of the specification that recites the use of four switches and four energy storage elements and, thus, most closely aligns with the asserted claims. (PV Br (failing to cite or discuss 528 patent, col. 176:61-179:53, Fig. 197).) Like the claims, that discussion uses portion to distinguish between four different portions of the modulated carrier signal, not to refer to a subset of a single baseband 8

15 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 15 of 29 PageID 4410 signal. (E.g., Razavi Decl., 40 (quoting claims and specification).) Instead, ParkerVision grasps onto a paragraph from the specification that uses the word portion but does so in the context of fundamentally different language. Whereas the claim language refers to a portion of said modulated carrier signal, the language cited by ParkerVision refers to portions of a baseband signal. Specifically, the language cited by ParkerVision states: The demodulated baseband signal 5712 includes portions 5710A... portions 5710B... ( 528 patent, col. 91:44-48.) ParkerVision s cited language is thus irrelevant, because it uses a different reference point than is used by the claim language. Accordingly, the Court should reject ParkerVision s effort to rewrite the claims and adopt the plain meaning of this term in the context of the claim as a whole. D. outputs Term Plaintiff s Construction Defendants Construction outputs sends Plain and ordinary meaning. Alternatively, makes a signal available. The parties litigated this term extensively in the ITC matter. Nevertheless, ParkerVision s opening brief did not attempt to address the extensive evidence supporting Defendants construction, including the litigation history related to the term outputs, the concessions by ParkerVision s expert in the ITC, the dependent claims, the complete absence of sends being used in the written description to refer to the output of the energy storage element, the use of outputs to refer to embodiments that do not send (or discharge ) current, and the prosecution history of the 528 patent s parent patent. (Defs. Br ) Instead, ParkerVision pointed to a single definition from a general-purpose dictionary defining 9

16 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 16 of 29 PageID 4411 outputs as to put or send out. (PV Br ) ParkerVision s single general-purpose dictionary cannot contradict the extensive evidence cited by Defendants. E.g., Virnetx v. Cisco Sys., 767 F.3d 1308, (Fed. Cir. 2014). ParkerVision also asserted that the specification s use of the term drive is consistent with its proposed construction. (PV Br ) Nothing in ParkerVision s cited language justifies changing the term outputs to drives, let alone sends. To the contrary, if the patentee had wanted to limit the claims to energy storage elements that drive a downstream load, it could have recited that term expressly in the claims. Schoeller-Bleckmann Oilfield Equip. v. Churchill Drilling Tools US, 664 F. App x 949, 953 (Fed. Cir. 2016) (declining to construe claim language as limited to a term from the specification: If the patentee had wanted to limit the scope of claim 17 to those embodiments, the patentee had a narrow term readily available from the specification. ). Moreover, ParkerVision s attempt to redefine outputs as sends (or drives ) is another example of a proposed construction that would likely invite later disputes about what the construction means. AlmondNet, 2011 WL , at *1. Indeed, as pointed out in Defendants opening brief, ParkerVision s experts in the ITC re-construed ParkerVision s proposed construction of sends to require a flow or discharge when they served their expert reports. (Defs. Br. 14.) Presumably, ParkerVision will seek to do so again here, which would be improper for the reasons Defendants laid out previously. (Defs. Br ) Accordingly, the Court should reject ParkerVision s proposed construction of outputs. 10

17 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 17 of 29 PageID 4412 E. integrated Term Plaintiff s Construction Defendants Construction integrated accumulated Plain and ordinary meaning ParkerVision argues that, despite the differences in claim language, the term integrated should be given the same meaning attributed to it in ParkerVision I. Although a plain meaning construction is appropriate here, Defendants agree that the term should be given the same claim scope as in ParkerVision I. As detailed below for the term derived, the alleged energy sampling invention here is the same as in ParkerVision I, and the claims do not redefine that alleged invention in a way that materially changes the claim scope. In short, although adopting ParkerVision s proposed construction results in a minor redundancy, the claims as a whole make clear that the alleged method of downconverting recited in the asserted claims in this case is the same as the method recited in ParkerVision I. F. derived derived Term Plaintiff s Construction Defendants Construction taken or received, especially from a specified source Plain and ordinary meaning ParkerVision asserts that the inclusion of the word derived is a key difference[] between the claims here and the claims in ParkerVision I. (PV Br ) But nothing in the word derived itself, or in ParkerVision s general-purpose dictionary definition of derive, materially distinguishes the claim scope here from that in ParkerVision I. The claims here are directed to the same alleged energy sampling invention. In ParkerVision I, the Federal Circuit recognized that ParkerVision claims methods, systems, and apparatuses for down-converting a high-frequency signal using a technique called energy 11

18 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 18 of 29 PageID 4413 sampling. ParkerVision I, 621 F. App x at 1011 (emphasis added). Likewise here, ParkerVision emphasizes that the claims recite systems and methods for directly downconverting a modulated carrier signal to a baseband signal using energy sampling. (PV Br. 5 (emphasis in original and omitted).) The claims here also recite the same downconversion process. In ParkerVision I, the claims required that the accused products produce a low-frequency baseband signal using energy that has been transferred from a high-frequency carrier signal into a storage medium, such as a capacitor or set of capacitors. ParkerVision I, 621 F. App x at 1013; ParkerVision I, 627 F. App x 921 (Fed. Cir. 2015) (holding that ParkerVision s cited evidence establish[ed] that capacitors must be involved to generate a baseband signal in ParkerVision's own inventions ). Here, the asserted claims recite the same type of downconversion. The highfrequency modulated carrier signal is applied to the energy storage element. (PV Br. 5-6 ( When the control signal causes the switch to close, the modulated carrier signal input is coupled to the energy storage element and load so that the switch transfers energy from the modulated carrier signal to the energy storage element and load. ).) Then, the low-frequency baseband signal is derived and output by the energy storage element. (PV Br. 12.) Thus, here and in ParkerVision I, the high-frequency carrier signal is input into the energy storage element, the low-frequency baseband signal is derived or generated from that transferred energy, and the low-frequency baseband signal is output from the energy storage element. The same portions of the specification cited by ParkerVision were also included in the ParkerVision I patents. In its argument for the term derived, ParkerVision offers a string cite to seven portions of the written description and one figure from the 528 patent. 12

19 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 19 of 29 PageID 4414 (PV Br. 16.) Six of those passages and the figure were included verbatim in the patents litigated in ParkerVision I and thus fail to distinguish the 528 patent from the previously litigated patents. 4 For example, ParkerVision emphasizes Figure 82A (id.), but that figure was addressed in in detail in ParkerVision I. E.g., ParkerVision I, 621 F. App x at 1011; ParkerVision I, 27 F. Supp. 3d at In fact, ParkerVision highlighted that very figure in demonstratives presented to the jury comparing its alleged invention with the prior art. The final passage ( 528 patent, col. 115:5-32) uses generated to describe the downconversion operation and, therefore, also fails to distinguish the 528 patent from the patents in ParkerVision I. Moreover, ParkerVision s attempt to distinguish between signals before and after the capacitor ignores the distinction between voltage-mode and current-mode circuits addressed in ParkerVision I. For voltage-mode circuits like ParkerVision s, the same voltage exists before and at the capacitor s terminal. ParkerVision I, 621 F. App x at ParkerVision s argument thus boils down to the mere use of a different word in the claims here ( derived ) from a word used in ParkerVision I ( generated ). But the Federal Circuit has repeatedly held that two claims with different terminology can define the exact same subject matter, both in original litigation and for collateral estoppel. Curtiss-Wright Flow Control v. Velan, 438 F.3d 1374, (Fed. Cir. 2006); Ohio Willow Wood v. Alps South, 735 F.3d 1333, 1342 (Fed. Cir. 2013) (applying preclusion where the patents used 4 528, col. 26:36-46 is the same as 551, col. 20:1-11; 528, col. 28:44-62 is the same as 551, col. 22:12-31; 528, col. 69:51-58 is the same as 551, col. 63:27-36; 528, col. 73:37-74:2 is the same as 551, col. 67:14-47; 528, col. 91:28-30 is the same as 551, col. 84:7-9; 528, col. 91:44-54 is the same as 551, col. 85:48-58; and 528, Fig. 82A is the same as 551, Fig. 82A. 13

20 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 20 of 29 PageID 4415 slightly different language to describe substantially the same invention ). 5 Here, nothing unique about the word generated drove the outcome in ParkerVision I. Instead, the Federal Circuit described the downconversion operation recited in the ParkerVision I claims using a variety of different words, such as obtained from. For example, the Federal Circuit noted ParkerVision s admission that Qualcomm would not infringe if the Qualcomm products obtain the baseband signal somewhere other than from the... energy that has been stored in the capacitor. ParkerVision I, 621 F. App x at 1014 (emphasis added). 6 As a result, the undisputed fact that the double-balanced mixer creates the baseband signal before that signal reaches the identified capacitors means that Qualcomm products obtained the baseband signal from somewhere other than the energy stored in the 5 See also, e.g., Original litigation: Curtiss-Wright Flow Control, 438 F.3d at ; Id.; Hologic v. SenoRx, 639 F.3d 1329, 1337 (Fed. Cir. 2011) ( Different terms or phrases in separate claims may be construed to cover the same subject matter where the written description and prosecution history indicate that such a reading... is proper. ) (quoting Nystrom v. Trex, 424 F.3d 1136, 1143 (Fed. Cir. 2005)); Baran v. Med. Device Techs., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (agreeing with the district court that the terms releasably and detachable had the same meaning ); Edward Lifesciences v. Cook, 582 F.3d 1322, 1328 (Fed. Cir. 2009) (determining that different claim terms could have the same construction); Bell Atl. Network Servs. v. Covad Commc ns Grp., 262 F.3d 1258, (Fed. Cir. 2001) (interpreting transceiver, ADSL/AVR, and ADSL/AVR transceiver as having the same effective claim scope). Collateral estoppel: Aspex Eyewear v. Zenni Optical, 713 F.3d 1377, 1379 (Fed. Cir. 2013) (finding no material difference as to the claims in the second suit); Molinaro v. Fannon/Courier, 745 F.2d 651, 655 (Fed. Cir. 1984) (holding that it was indisputable that the claim asserted here is the same as that the scope of which was determined in earlier litigation where the receivers accused here were held not to infringe that claim ). 6 See also id. at 1013 (describing parties dispute: Because the capacitors are not involved in the down-converting function, the baseband signal necessarily comes from somewhere other than... energy that has been stored in the capacitor. ) (emphasis added); ParkerVision v. Qualcomm, 27 F. Supp. 3d 1266, 1283 n.23 (M.D. Fla. 2014) (discussing ParkerVision s admission that there is no infringement if the accused products get the baseband signal somehow or somewhere other than from the carrier signal energy that has been stored in the capacitor ) (emphasis added). 14

21 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 21 of 29 PageID 4416 capacitors, precluding a finding of infringement. Id. (emphasis added). The 528 patent s use of the word derived does not differentiate it from the claim scope in ParkerVision I. The 528 patent does not redefine derived in an unusual way; to the contrary, it does not use the term at all outside the claims. The general-purpose dictionary cited by ParkerVision only further emphasizes that the claims focus on where the baseband signal is produced. The definition cited by ParkerVision to take or receive esp. from a specified source simply confirms that the specified source of the baseband signal must be the transferred energy in the energy storage element. Indeed, the very next entry in the dictionary cited by ParkerVision uses the same word as the Federal Circuit s decision, defining derived as to obtain from a specified source. (Damstedt Reply Decl. Ex. 1, Webster s Ninth New Collegiate Dictionary at 303 (emphasis added).) Moreover, nothing supports ParkerVision s argument that the energy storage elements recited in the asserted claims merely filter the already-downconverted baseband signal to fill in supposed gaps. To the contrary, the 528 patent expressly distinguishes between the energy storage elements used in ParkerVision s alleged energy-sampling invention and downstream filters. ( 528 patent, col. 177:1-30 (distinguishing between the recited energy storage element (19724) and the irrelevant downstream capacitor (19732) included in optional first filter ).) ParkerVision also mistakenly asserts that Defendants have taken positions in this case that are inconsistent with the positions they took in the ITC. Defendants have always maintained that the 528 claims required that the baseband signal be produced from the energy stored in the capacitor. Whether that requirement is based on a specific word, such as derived or outputs, or is based on the plain meaning and structure of the claim as a whole is irrelevant. 15

22 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 22 of 29 PageID 4417 As the ITC s Office of Unfair Import Investigations concluded, construing derived would be redundant of the other claim limitations already present in claim 1, which requires that the energy storage element perform these three functions, including the accumulation of the energy to derive or generate the baseband signal function. (Dkt at ) In any event, ParkerVision s argument rings hollow, because ParkerVision itself proposed a plainand-ordinary-meaning construction for derived in the ITC, the same proposal it now seeks to denounce. (Dkt at 22.) Finally, ParkerVision has not provided any reason to swap in its dictionary definition at this stage of the case. Instead, the Court may address this issue at the summary judgment stage when the full record regarding collateral estoppel and noninfringement is available for the Court, as many cases recognize. E.g., Sofamor Danek, 74 F.3d at 1221 ( A trial court may exercise its discretion to interpret the claims at a time when the parties have presented a full picture of the claimed invention and prior art. ); CollegeNet v. ApplyYourself, 418 F.3d 1225, 1234 (Fed. Cir. 2005) ( The trial court has discretion to develop the record fully and decide when the record is adequate to construe the claims. ); Network Commerce v. Microsoft, 422 F.3d 1353, (Fed. Cir. 2005) ( There is no requirement that the district court construe the claims at any particular time... ); Financeware, 2011 WL , at *2 3; AlmondNet, 2011 WL , at *1 (early claim construction can amount to nothing but an invitation to a new round of arguments at a later stage about the meaning of the court s construction, or about the hidden implications of the language adopted ). Accordingly, ParkerVision has failed to justify anything other than a plain-meaning construction of this term. 16

23 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 23 of 29 PageID 4418 III. CLAIM TERMS THAT ARE INDEFINITE Term energy of the modulated carrier signal is sampled and differentially applied to the respective energy storage element at the frequency of the respective control signal s aperture each respective energy storage element outputs, respectively, said differential downconverted in-phase baseband signal portion and said down-converted inverted in-phase baseband signal portion of said modulated carrier signal a second differential amplifier circuit that combines said down-converted quadraturephase baseband signal portion with said down-converted differential quadrature-phase baseband signal portion and outputs a second channel down-converted differential quadrature-phase baseband signal Plaintiff s Construction Claim 10 differentially applied : transferred energy from an inverted version of the modulated carrier signal is sent to one of the claimed energy storage elements, and transferred energy from a noninverted version of the modulated carrier signal is sent to the other claimed energy storage element said differential down-converted inphase baseband signal portion : the down-converted in-phase baseband signal portion of said modulated carrier signal that is output by the first energy storage element said downconverted inverted in-phase baseband signal portion of said modulated carrier signal : the downconverted inverted in-phase baseband signal portion of said modulated carrier signal that is output by the second energy storage element Claim 19 said downconverted differential quadrature-phase baseband signal portion : the said down-converted inverted quadrature-phase baseband signal portion of the modulated carrier signal that is output by the fourth energy storage element Defendants Construction Indefinite Indefinite Indefinite ParkerVision does not dispute that claims 10 and 19 are indefinite as written. Instead, 17

24 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 24 of 29 PageID 4419 ParkerVision asserts that the claims contain typographical errors and asks the Court to redraft the claims. But the Federal Circuit repeatedly and consistently has recognized that courts may not redraft claims, whether to make them operable or to sustain their validity. Rembrandt Data Techs. v. AOL, 641 F.3d 1331, 1339 (Fed. Cir. 2011) (internal quotation omitted) (rejecting requirement to rewrite an alleged typographical error); Haemonetics v. Baxter Healthcare, 607 F.3d 776, (Fed. Cir. 2010) ( An error may have occurred in drafting claim 16,... but it is what the patentee claimed and what the public is entitled to rely on. ). Starting with claim 19, ParkerVision asks the Court to strike out the word differential and replace it with inverted for some, but not all, of claim 19. (PV Br ) Citing the Federal Circuit s Ultimax decision, ParkerVision asserts that a person of ordinary skill would rewrite claim 19 based on a correspondence between claim 19 and limitations in claim 1. (Id. (citing Ultimax Cement Mfg. v. CTS Cement Mfg., 587 F.3d 1339 (Fed. Cir. 2009)).) Claim 19 does not fall within the rare circumstances in which a Court may correct an alleged error in a claim. In Rembrandt, the Federal Circuit rejected a patentee s attempt to redraft the claims, even though the language closely tracked the existing claim language. Rembrandt Data, 641 F.3d at 1339 (rejecting request to add transmitter section for to limitation reciting transmitting the trellis encoded frames ). The Federal Circuit held that the proposed redrafting was not minor, obvious, free from reasonable debate or evident from the prosecution history. Id. (internal quotation omitted). The Rembrandt court also distinguished the Ultimax decision cited by ParkerVision on the grounds that, in Ultimax, the court merely added a comma to a chemical formula in the claim, the formula without the comma correspond[ed] to no known mineral, and one of ordinary skill in the art would know that 18

25 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 25 of 29 PageID 4420 the formula should contain the comma. Id. (internal quotation omitted). Similarly here, the Court should reject ParkerVision s efforts to substantively redraft the claims. Id. ParkerVision is proposing a major change, swapping in one type of signal for another. Nor is the alleged typographical error apparent from the claim language. Unlike Ultimax, where the recited chemical formula correspond[ed] to no known mineral, differential signals have a well-recognized meaning in this field. (Id.; Razavi Decl., ) In fact, ParkerVision already raised and lost a similar argument in ParkerVision I, where the Court granted summary judgment of invalidity for indefiniteness for two claims. ParkerVision argued that a person of ordinary skill would correct alleged typographical errors in formulas recited in the claims. ParkerVision v. Qualcomm, 969 F. Supp. 2d 1372, 1379 (M.D. Fla. 2013). The district court distinguished minor typographical and clerical errors in patents that it could correct from [m]ajor errors in patents [that] can only be corrected by the U.S. Patent and Trademark Office, finding that [t]he corrections proposed by ParkerVision are not minor. Id. ParkerVision did not appeal that decision. Similarly here, ParkerVision s proposed corrections are not minor, but would instead materially alter the recited signals. Numerous other courts have rejected requests like ParkerVision s to redraft the claims. In H-W Technology, the Federal Circuit rejected an argument, like ParkerVision s, that the court should redraft a claim based on language in other claims. H-W Tech. v. Overstock.com, 758 F.3d 1329, (Fed. Cir. 2014) ( [T]he inclusion of that limitation in one claim does not necessitate, or even fairly indicate, that the limitation should be included in all other claims. ). Likewise, in Atlas IP, the court rejected a request, like ParkerVision s, to swap out one well-known term ( hub ) for another ( remotes ), holding that the patentee s proposed 19

26 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 26 of 29 PageID 4421 change is not the correction of an obvious typographical error because the correction substantially impacts the understanding of the claim. Atlas IP v. St. Jude Med., No , 2014 WL , at *13 (S.D. Fla. July 30, 2014). 7 Similarly here, changing the claim term differential to inverted would impermissibly alter the type of signal covered by the claims. 8 The Court should also find claim 10 indefinite. 9 Again, ParkerVision seeks to alter the type of signal covered by the claims, deleting the word differential from the claim term said differential down-converted in-phase baseband signal portion... of said modulated carrier signal. (PV Br ) Because ParkerVision s proposed correction would materially redraft the claims in a way that substantively alters the claim scope, the Court should reject it. See Rembrandt Data, 641 F.3d at 1339; H-W Tech., 758 F.3d at ; ParkerVision I, 969 F. Supp 2d at 1379; Atlas IP, 2014 WL , at *13. IV. CONCLUSION Accordingly, Defendants request that the Court adopt Defendants constructions, reject ParkerVision s proposed constructions, and find claims 10 and 19 invalid for indefiniteness. 7 Different claims from the patent in Atlas IP were the subject of the following appeals, neither of which addressed the district court s indefiniteness holding. Atlas IP v. St. Jude Med., 804 F.3d 1185 (Fed. Cir. 2015); Atlas IP v. Medtronic, 809 F.3d 599 (Fed. Cir. 2015). 8 See also, e.g., Signal IP v. Mazda Motor of Am., Nos , , , 2015 WL , at *5-*6 (C.D. Cal. Nov. 2, 2015) (finding claims indefinite over purported correction ); Parallel Networks Licensing v. IBM, 83 F. Supp. 3d 571, (D. Del. 2015) (distinguishing Hoffer decision). 9 For claim 10 s differentially applied term, ParkerVision asserts that Defendants did not allege that this language is indefinite in their Invalidity Contentions. (PV Br. 23.) To the contrary, Defendants asserted: A person of skill would also not understand with reasonable certainty what it would mean for the energy of the modulated carrier signal to be differentially applied to the respective energy storage element. (E.g., Damstedt Reply Decl. Ex. 2, Defs. Invalidity Conts., App. 1 at 9.) 20

27 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 27 of 29 PageID 4422 Dated: December 14, 2017 /s/ Benjamin G. Damstedt Stephen C. Neal (admitted pro hac vice) Matthew J. Brigham (admitted pro hac vice) Jeffrey Karr (admitted pro hac vice) Benjamin G. Damstedt (admitted pro hac vice) Dena Chen (admitted pro hac vice) COOLEY LLP 3175 Hanover Street Palo Alto, CA Phone: (650) Fax: (650) Stephen Smith (pro hac vice) COOLEY LLP 1299 Pennsylvania Avenue, NW, Suite 700 Washington, DC Phone: (202) Fax: (202) Eamonn Gardner (admitted pro hac vice) COOLEY LLP 4401 Eastgate Mall San Diego, CA Telephone: (858) Facsimile: (858) John A. DeVault, III BEDELL, DITTMAR, DEVAULT, PILLANS & COXE, P.A. Florida Bar No The Bedell Building 101 East Adams Street Jacksonville, Florida Telephone: (904) Facsimile: (904) Attorneys for Defendant Qualcomm Incorporated 21

28 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 28 of 29 PageID 4423 Dated: December 14, 2017 /s/ Brian E. Ferguson Brian E. Ferguson (pro hac vice) Trial Counsel Robert T. Vlasis III (pro hac vice) 1300 Eye Street, N.W., Suite 900 Washington, D.C Phone: (202) Fax: (202) Edward Soto Florida Bar Number: Brickell Ave, Suite 1200 Miami, FL Phone: (305) Fax: (305) Attorneys for Defendant Apple Inc. 22

29 Case 3:15-cv BJD-JRK Document 84 Filed 12/14/17 Page 29 of 29 PageID 4424 CERTIFICATE OF SERVICE I certify that on December 14, 2017, I electronically filed the foregoing with the Clerk of the Court by using the CM/ECF system. I further certify that I mailed the foregoing document and the notice of electronic filing by first-class mail to the following non-cm/ecf participants: None. /s/ Benjamin G. Damstedt Benjamin G. Damstedt (admitted pro hac vice) bdamstedt@cooley.com COOLEY LLP 3175 Hanover Street Palo Alto, CA Phone: (650) Fax: (650) Attorney for Defendant Qualcomm Incorporated

30 Case 3:15-cv BJD-JRK Document 84-1 Filed 12/14/17 Page 1 of 3 PageID 4425 UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION PARKERVISION, INC., Plaintiff, APPLE INC. and QUALCOMM INCORPORATED, v. Case No. 3:15-CV-1477-BJD-JRK Defendants. DECLARATION OF BENJAMIN G. DAMSTEDT IN SUPPORT OF DEFENDANTS RESPONSIVE CLAIM CONSTRUCTION BRIEF I, Benjamin G. Damstedt, hereby declare as follows: 1. I am an attorney in the law firm Cooley LLP, counsel of record to Qualcomm Incorporated in this action. I have personal knowledge of the facts stated in this declaration and could testify to these facts if called as a witness. 2. Attached hereto as Exhibit 1 is a true and correct copy of an excerpt from Webster s Ninth New Collegiate Dictionary, Bates-labeled PVMDFL Attached hereto as Exhibit 2 is a true and correct copy of an excerpt from Defendant s Invalidity Contentions, Appendix 1, Invalidity Chart for Arpaia, U.S. Patent No. 6,192,225, dated September 26,

31 Case 3:15-cv BJD-JRK Document 84-1 Filed 12/14/17 Page 2 of 3 PageID 4426 I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Dated: December 14, 2017 /s/ Benjamin G. Damstedt Benjamin G. Damstedt 2

32 Case 3:15-cv BJD-JRK Document 84-1 Filed 12/14/17 Page 3 of 3 PageID 4427 Certificate of Service I certify that on December 14, 2017, I electronically filed the foregoing with the Clerk of the Court by using the CM/ECF system. I further certify that I mailed the foregoing document and the notice of electronic filing by first-class mail to the following non-cm/ecf participants: None. /s/ Benjamin G. Damstedt Benjamin G. Damstedt (admitted pro hac vice) Cooley LLP 3175 Hanover Street Palo Alto, CA Phone: (650) Fax: (650) Attorney for Defendant Qualcomm Incorporated 3

33 Case 3:15-cv BJD-JRK Document 84-2 Filed 12/14/17 Page 1 of 4 PageID 4428 EXHIBIT 1

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35 Case 3:15-cv BJD-JRK Document 84-2 Filed 12/14/17 Page 3 of 4 PageID 4430

36 Case 3:15-cv BJD-JRK Document 84-2 Filed 12/14/17 Page 4 of 4 PageID 4431