Case 6:23-cv-00384-ADA Document 63 Filed 10/21/24 Page 1 of 70
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`PARKERVISION, INC.,
` Plaintiff
`
`-v-
`
`TEXAS INSTRUMENTS
`INCORPORATED,
` Defendant
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`
`
`
`
`6:23-CV-00384-ADA
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`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`SPECIAL MASTER’S REPORT AND RECOMMENDATION
`REGARDING CLAIM CONSTRUCTION
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`Before the Court are the Parties’ claim construction briefs: Defendant Texas Instruments
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`Incorporated’s Opening and Reply briefs (ECF Nos. 43 and 48, respectively) and Plaintiff
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`ParkerVision Inc.’s Response and Sur-Reply briefs (ECF Nos. 46 and 49, respectively). United
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`States District Judge Alan D Albright referred these cases to the undersigned on February 5, 2024.
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`ECF No. 42. The undersigned provided preliminary constructions for the disputed terms one day
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`before the hearing. The undersigned held the Markman hearing on June 14, 2024. During that
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`hearing, the undersigned informed the Parties of the recommended constructions for most of the
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`disputed terms. Id. This Report and Recommendation does not alter any of those constructions.
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`I.
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`DESCRIPTION OF THE ASSERTED PATENTS
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`Plaintiff asserts U.S. Patent Nos. 7,496,342, 8,65,177, and 9,118,528. The Asserted Patents
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`are directed towards down-conversion of radio-frequency (RF) signals. Opening at 3, Response
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`at 1.
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`1
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`TI 1042
`TI v. ParkerVision
`IPR2024-00936
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`Case 6:23-cv-00384-ADA Document 63 Filed 10/21/24 Page 2 of 70
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`The undersigned previously construed terms from U.S. Patent No. 6,266,518, which
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`appears to be related to the Asserted Patents and is also directed towards down-conversion. The
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`undersigned incorporates the Description of the Asserted Patents from that order, which is
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`reproduced below.1
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`The Asserted Patents describe and claim systems for down-conversion of a modulated
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`carrier signal. ’518 Patent at Abstract. Down-conversion is the process of recovering the baseband
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`(audio) signal from the carrier signal after it has been transmitted to and received by the receiver.
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`This process is referred to as “down-conversion” because a high frequency signal is being down-
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`converted to a low frequency signal.
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`The Asserted Patents disclose at least two types of systems for down-conversion: (1) sample-and-
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`hold (i.e., voltage sampling) and (2) “energy transfer” (also known as “energy sampling”). The
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`key difference between the two is that the former takes a small “sample” of the input signal while
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`the latter takes a very large sample, i.e., a large enough sample that a non-negligible amount of
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`energy is transferred from the input signal. The following sub-sections describe each type of
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`system, their respective operation, and compares them.
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`1 It is worth noting that Plaintiff appears to agree that the description of the Asserted Patents is very similar to the
`asserted patents in prior case. Response at 1 n.1. As such, Plaintiff did not “repeat its discussion of the technology[.]”
`Id.
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`2
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`A. Circuit configuration of down-sampling systems: sample-and-hold and energy
`transfer.
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`Figure 78B depicts an exemplary sample-and-hold system while Figure 82B depicts an
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`exemplary energy transfer system. ’518 Patent at 63:19–26 (sample-and-hold) and 7:63–64
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`(energy transfer).
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`While Figures 78B and 82B depict that the respective circuits have a similar structure, their
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`respective parameter values (e.g., capacitor and load impedance values)—and concomitantly their
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`Case 6:23-cv-00384-ADA Document 63 Filed 10/21/24 Page 4 of 70
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`respective operation—are very different. It is important to note that the input signal, input EM
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`signal, is the same in both figures.
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`The circuits in both figures include a switching module (7806 in Figure 78B and 8206 in
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`Figure 82B). Id. at 62:65–66 (switching module 7806), 66:13–14 (switching module 8206). The
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`switching module opens and closes (i.e., turns off and on, respectively) based on under-sampling
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`signal 7810 in Figure 78B and energy transfer signal 8210 in Figure 82B. Id. at 62:67–63:1 (under-
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`sampling signal 7810), 66:24–26 (energy transfer signal 8210). When the switching module is
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`“closed,” input EM signal 7804 and input EM signal 8204 can propagate across the switching
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`module to holding capacitance 7808 and storage capacitance 8208, respectively, but when the
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`switching module is “open,” input EM signals 7804/8204 cannot propagate across the switching
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`module. While both switching module 7806 and switching module 8206 open and close, the
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`duration that each module is closed differs significantly. The specifications of the Asserted Patents
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`describe that under-sampling signal 7810 “includes a train of pulses having negligible apertures
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`that tend towards zero time in duration.” Id. at 63:1–3. The specification discloses an embodiment
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`of the “negligible pulse width” as being “in the range of 1–10 p[ico]sec[onds] (“ps”) for under-
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`sampling a 900 MHz signal.” Id. at 63:3–5. By contrast, the specifications describe that energy
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`transfer signal 8210 “includes a train of energy transfer pulses having non-negligible pulse widths
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`that tend away from zero time in duration.” Id. at 66:26–28 (emphasis added). The specification
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`discloses an embodiment where the “non-negligible pulse” is approximately 550 ps for a 900 MHz
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`signal.
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`The specifications describe that holding capacitance 7808 and storage capacitance 8208
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`are capacitors that charge when switching module 7804 and switching module 8204, respectively,
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`are closed. Id. at 63:10–13 (holding capacitance 7808), 66:38–42 (storage capacitance 8208). The
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`specifications also disclose that holding capacitance 7808 “preferably has a small capacitance
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`value” and disclose an embodiment wherein holding capacitance 7808 has a value of 1 picoFarad
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`(“pF”). Id. at 63:9–15. By contrast, the specifications disclose that storage capacitance 8208
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`“preferably has the capacity to handle the power being transferred” and disclose an embodiment
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`wherein storage capacitance 8208 has a value “in the range of 18 pF.” Id. at 66:38–49.
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`The specifications describe that holding capacitance 7808 and storage capacitance 8208
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`discharge through load 7812 and load 8212 when switching module 7804 and switching module
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`8204, respectively, are open. See id. at 63:19–26 (load 7812), 66:61–65 (load 8212). Figure 78B
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`depicts that “high impedance” load 7818 has an impedance of approximately 1 MΩ while Figure
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`82B depicts that “low impedance” load 8218 has an impedance of approximately 2 kΩ. The
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`specifications describe that “[a] high impedance load is one that is relatively insignificant to an
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`output drive impedance of the system for a given output frequency. A low impedance load is one
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`that is relatively significant.” Id. at 66:58–61.
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`B. Operation of down-converting systems
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`At a very high level, both systems operate similarly. In particular, when the switching
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`module (switching modules 7806 / 8206) is closed, the input signal (input EM signal 7804 / 8204)
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`propagates to the capacitor (holding capacitance 7808 and storage capacitance 8208) and charge
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`the voltage across the capacitor to the voltage of input signal. But when the switching module is
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`open, the input signal cannot propagate to the capacitor, i.e., cannot charge the voltage across the
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`capacitor to the voltage of the input signal. Rather, the charge on the capacitor discharges through
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`the load impedance (load 7818 / 8218).
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`While both systems operate similarly at a high level, differences in (1) the width of the
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`sampling aperture, (2) value of the capacitor, and (3) value of the load are what dictates whether
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`the system operates as a sample-and-hold system or an energy transfer system.
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`1. Operation of sample-and-hold system
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`In a sample-and-hold system, the sampling aperture in under-sampling signal 7810 is
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`negligible, which means only a small amount of charge from input EM signal 7804 propagates to
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`the holding capacitance 7808 before switching module 7806 opens. Id. at 62:63–63:8. Because
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`the sampling aperture has a negligible (i.e., very small) width, there is only enough time to take a
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`“sample” of input EM signal 7804, i.e., only a small amount of charge is transferred to holding
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`capacitor 7808. Given that only a small amount of charge is transferred to the capacitor, the value
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`of holding capacitor 7808 needs to be relatively low in order for the voltage across holding
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`capacitance 7808 to change to the voltage of input EM signal 7804. More specifically, the
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`relationship between charge (Q) and voltage (V) across a capacitor (with a capacitance of C) is
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`𝑄 = 𝐶 ∗ 𝑉, or 𝑄
` 𝐶(cid:3415) = 𝑉. As such, if the capacitance C is large, more charge Q is needed in order
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`to increase the voltage to V. For example, for the same amount of charge, if the capacitance is 2C
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`in one case and C in other case, the voltage in the former case will be half the voltage of the voltage
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`in the latter case. Id. at 65:29–35. Therefore, to ensure that the value of holding capacitance 7808
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`does not limit the voltage across the capacitor, the value of holding capacitance 7808 needs to be,
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`as described above, low. Id. at 63:9–15.
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`When sampling module 7806 is open, the charge on holding capacitance 7808 discharges
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`through load impedance 7818. See id. at 63:19–26. When the value of load impedance 7818 is
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`high, the charge on holding capacitance 7808 discharges very slowly as compared to when the
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`load impedance is low. More specifically, the time to discharge a capacitor is related to 𝑅 ∗ 𝐶
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`(also known as the time constant τ) where R is the value of the load impedance. Using the
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`exemplary values depicted in Figures 78B (1 MΩ) and 82B (2 kΩ), assuming that the capacitance
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`is the same, it will take 500 times longer to discharge the capacitor with the 1 MΩ load impedance
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`as compared to the circuit with the 2 kΩ load impedance. Because it takes significantly longer to
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`discharge the capacitor using a 1 MΩ load impedance (as compared to the 2 kΩ load impedance),
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`the 1 MΩ load impedance “holds” the charge.
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`To summarize, in a sample-and-hold down-sampling system, a negligible sampling
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`aperture for switching module 7806 and a small value for holding capacitance 7808 only allows
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`for a “sample” of the voltage of the input EM signal 7804 when switching module 7806 is closed.
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`And because of the high value of load impedance 7818, the capacitor “holds” that value when
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`switching module 7806 is open.
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`2. Operation of energy transfer system
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`As described above, in an energy transfer system, the sampling aperture is non-negligible
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`(e.g., 550 ps versus 1 ps for the sample-and-hold system for a 900 MHz input signal). Therefore,
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`there is significantly more time to transfer charge from the input signal to storage capacitance
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`8208. Id. at 66:42–44. Because significantly more charge is transferred to the capacitor, the value
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`of storage capacitance 8208 can be larger, in spite of the fact that charge and voltage are inversely
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`related (i.e., 𝑉 =
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`𝑄
` 𝐶(cid:3415) ). The fact that this system transfers a large amount of charge—or energy—
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`to the capacitor gives rise to the name “energy transfer” system.
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`When sampling module 8206 is open, the charge on storage capacitance 8208 discharges
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`through load impedance 8218. See id. at 66:61–65. Because the load impedance in an energy
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`transfer system is “low,” e.g., 2 kΩ, the charge on storage capacitance 8208 discharges much faster
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`Case 6:23-cv-00384-ADA Document 63 Filed 10/21/24 Page 8 of 70
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`than the charge on a capacitor in a sample-and-hold system, e.g., 500 times faster as compared to
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`using a 1 MΩ load impedance.
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`To summarize, in an energy transfer down-sampling system, a non-negligible sampling
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`aperture for switching module 8206 and a high value for storage capacitance 8208 allows for a
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`large amount of charge—or energy—to be transferred from the input signal.
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`C. Comparison of sample-and-hold and energy transfer systems
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`The following table summarizes key differences between sample-and-hold and energy
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`transfer systems.
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`Parameter
`Sampling aperture
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`Capacitor
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`Load impedance
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`Sample-and-hold
`Negligible
`(e.g., 1–10 ps)
`Holding capacitance
`(e.g., 1 pF)
`High
`(e.g., ~1 MΩ)
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`Energy transfer
`Non-negligible
`(e.g., 550 ps)
`Storage capacitance
`(e.g., 18 pF)
`Low
`(e.g., ~2 kΩ)
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`
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`It is important to emphasize that differences in the set of parameter values determines
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`whether a system functions as a sample-and-hold system or an energy transfer system. For
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`example, there is nothing special in the structure of a holding capacitance as compared to the
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`structure of a storage capacitance. A circuit designer could, in theory, swap the holding
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`capacitance in a sample-and-hold system with the storage capacitance in an energy transfer system
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`and still have a sample-and-hold system by appropriately adjusting the sampling aperture and load
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`impedance to “match” the larger capacitor value of the holding capacitance.
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`It is important to note that changing one parameter without adjusting the other parameters
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`will prevent each system from operating as intended or will have other problems. For example,
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`using a non-negligible sampling aperture in a sample-and-hold system is unnecessary as the
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`holding capacitance can be fully charged (to the voltage of the input signal) with a negligible
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`aperture, but using a non-negligible sampling aperture may distort or destroy the input EM signal
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`by transferring too much of its energy to the holding capacitance. Id. at 62:30–39.
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`Even worse, using a high load impedance in an energy transfer system or a low load
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`impedance in a sample-and-hold system could result in a system with poor performance. See, e.g.,
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`id. at 65:52–55. More specifically, in the latter situation, the low value of the holding capacitance
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`combined with a low load impedance means that its corresponding time constant τ is very low,
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`which means that the holding capacitance may discharge significantly when the switching module
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`is open. As a result, the down-converted signal “cannot provide optimal voltage reproduction, and
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`has relatively negligible power available at the output.” Id. at 64:49–51.
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`In the former situation, the high value of the storage capacitance combined with a high load
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`impedance means that its corresponding time constant τ is very high; therefore, it will take
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`considerably more time (as compared to a low load impedance) to discharge the storage
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`capacitance. This may result in less than optimal voltage reproduction, e.g., when the voltage of
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`the input EM signal is lower than the voltage across the capacitor. Furthermore, the down-
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`converted signal could have substantially less power (e.g.: 𝑉(cid:2870)
` 𝑅(cid:3415) ; ~2 mV and 1 MΩ) than the
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`energy transfer system with a low impedance load (e.g.: 𝑉(cid:2870)
` 𝑅(cid:3415) ; ~2 mV and 2 kΩ) or even the
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`sample-and-hold system with a high impedance load (e.g.: 𝑉(cid:2870)
` 𝑅(cid:3415) ; ~5 mV and 1 MΩ). See id. at
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`67:28–33.
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`
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`II.
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`LEGAL STANDARD
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`A. General principles
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`The general rule is that claim terms are generally given their plain-and-ordinary meaning.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc); Azure Networks, LLC v.
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`CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014), vacated on other grounds, 575 U.S. 959, 959
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`(2015) (“There is a heavy presumption that claim terms carry their accustomed meaning in the
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`relevant community at the relevant time.”) (internal quotation omitted). The plain-and-ordinary
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`meaning of a term is the “meaning that the term would have to a person of ordinary skill in the art
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`in question at the time of the invention.” Phillips, 415 F.3d at 1313.
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`The “only two exceptions to [the] general rule” that claim terms are construed according
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`to their plain-and-ordinary meaning are when the patentee (1) acts as his/her own lexicographer or
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`(2) disavows the full scope of the claim term either in the specification or during prosecution.
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`Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The Federal
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`Circuit has counseled that “[t]he standards for finding lexicography and disavowal are exacting.”
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`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). To act as his/her
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`own lexicographer, the patentee must “clearly set forth a definition of the disputed claim term”
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`and “‘clearly express an intent’ to [define] the term.” Thorner, 669 F.3d at 1365.
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`“Like the specification, the prosecution history provides evidence of how the PTO and the
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`inventor understood the patent.” Phillips, 415 F.3d at 1317. “[D]istinguishing the claimed
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`invention over the prior art, an applicant is indicating what a claim does not cover.” Spectrum
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`Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1379 (Fed. Cir. 1998). The doctrine of prosecution
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`disclaimer precludes a patentee from recapturing a specific meaning that was previously
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`disclaimed during prosecution. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed.
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`Cir. 2003). “[F]or prosecution disclaimer to attach, our precedent requires that the alleged
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`disavowing actions or statements made during prosecution be both clear and unmistakable.” Id. at
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`1325–26. Accordingly, when “an applicant’s statements are amenable to multiple reasonable
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`interpretations, they cannot be deemed clear and unmistakable.” 3M Innovative Props. Co. v.
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`Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
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`A construction of “plain and ordinary meaning” may be inadequate when a term has more
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`than one “ordinary” meaning or when reliance on a term’s “ordinary” meaning does not resolve
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`the parties’ dispute. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361
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`(Fed. Cir. 2008). In that case, the Court must describe what the plain-and-ordinary meaning is.
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`Id.
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`“Although the specification may aid the court in interpreting the meaning of disputed claim
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`language . . ., particular embodiments and examples appearing in the specification will not
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`generally be read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
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`1571 (Fed. Cir. 1988). “[I]t is improper to read limitations from a preferred embodiment described
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`in the specification—even if it is the only embodiment—into the claims absent a clear indication
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`in the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim
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`Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
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`Although extrinsic evidence can be useful, it is “less significant than the intrinsic record in
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`determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). Technical
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`dictionaries may be helpful, but they may also provide definitions that are too broad or not
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`indicative of how the term is used in the patent. Id. at 1318. Expert testimony may also be helpful,
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`but an expert’s conclusory or unsupported assertions as to the meaning of a term are not. Id.
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`B. Claim differentiation
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`Under the doctrine of claim differentiation, a court presumes that each claim in a patent
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`has a different scope. Phillips, 415 F.3d at 1314–15. The presumption is rebutted when, for
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`example, the “construction of an independent claim leads to a clear conclusion inconsistent with a
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`dependent claim.” Id. The presumption is also rebutted when there is a “contrary construction
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`dictated by the written description or prosecution history.” Seachange Int’l., Inc. v. C-COR, Inc.,
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`413 F.3d 1361, 1369 (Fed. Cir. 2005). The presumption does not apply if it serves to broaden the
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`claims beyond their meaning in light of the specification. Intellectual Ventures I LLC v. Motorola
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`Mobility LLC, 870 F.3d 1320, 1326 (Fed. Cir. 2017).
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`C. Indefiniteness
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`“[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc.
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`v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). Patent claims must particularly
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`point out and distinctly claim the subject matter regarded as the invention. 35 U.S.C. § 112, ¶ 2.
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`A claim, when viewed in light of the intrinsic evidence, must “inform those skilled in the art about
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`the scope of the invention with reasonable certainty.” Nautilus Inc. v. Biosig Instruments, Inc.,
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`572 U.S. 898, 910 (2014). If it does not, the claim fails § 112, ¶ 2 and is therefore invalid as
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`indefinite. Id. at 901. Whether a claim is indefinite is determined from the perspective of one of
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`ordinary skill in the art as of the time the application was filed. Id. at 911.
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`In the context of a claim governed by § 112, ¶ 6, the claim is indefinite if the claim fails to
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`disclose adequate corresponding structure to perform the claimed functions. Williamson, 792 F.3d
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`at 1351–52. The disclosure is inadequate when one of ordinary skill in the art “would be unable
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`to recognize the structure in the specification and associate it with the corresponding function in
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`the claim.” Id. at 1352. Computer-implemented means-plus-function claims are indefinite unless
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`the specification discloses an algorithm to perform the function associated with the limitation.
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`Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1319 (Fed. Cir. 2012).
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`III. LEGAL ANALYSIS
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`A. Term #1: “controlling a charging and discharging cycle”
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`Plaintiff’s Proposed
`Construction
`Plain-and-ordinary meaning
`
`
`Defendant’s Proposed
`Construction
`“controlling a cycle of
`charging and then discharging
`each capacitor”
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`
`
`
`Term
`
`#1: “controlling a charging
`and discharging cycle”
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`U.S. Patent No. 7,496,342,
`Claim 18
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`Proposed by Defendant
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`
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`The Parties’ Positions:
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`Defendant contends that the specification “repeatedly describes the ‘charging’ and
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`‘discharging’ portions of the cycle recited in method claim 18 as separate and distinct events, with
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`‘charging’ occurring when a switch is closed and ‘discharging’ occurring when the switch is
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`opened.” Opening at 7. Defendant contends that the specification never describes that charging
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`and discharging simultaneously. Id. By way of example, Defendant contends that the specification
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`“distinguishes between (1) when the switching device is closed so that a ‘charging cycle’ “causes
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`a charge to be stored on capacitor 1604 … and (2) ‘[d]uring a period of time’ that the switching
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`device is open, ‘a percentage of the total charge stored on capacitor 1604 is discharged.’” Id. at 8
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`(citing ’342 Patent at 49:67–50:11, 50:12–15).
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`As another example, Defendant contends that the specification describes that “FIG. 60
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`illustrates an example charge/discharge timing diagram for the capacitor CS, where the capacitor
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`CS charges during the apertures A, and discharges between the apertures A.” Id. at 9 (quoting
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`’342 Patent at 42:58–61 (emphases in Defendant’s brief)).
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`In its response, Plaintiff contends that “[t]he language of the term is straightforward” and
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`“[t]here are no words that are unclear (nor does [Defendant] allege there are), and thus the term
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`does not require construction.” Response at 2. Plaintiff contends that the addition of “then” in
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`Defendant’s proposed construction is improper as it “changes the meaning of the term[.]” and
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`excludes embodiments described in the specification.” Id. (emphasis in Plaintiff’s brief).
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`Plaintiff contends that the term does not contain any temporal ordering. Id. Plaintiff
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`contends that Figure 16H is consistent with the specification and depicts a “first aliasing module
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`1632 (blue box) includes a first switching device 1608 (blue circle) electrically coupled to a first
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`capacitor 1604 (green box); the second aliasing module 1634 (purple box) includes a second
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`switching device 1610 (purple circle) electrically coupled to a second capacitor 1606 (yellow
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`box).” Id. (citing’342 Patent at 18:13–15, 18:34–20:336, 3–39, 21:27–31).
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`
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`’342 Patent at Figure 16H (annotations added by Plaintiff).
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`Plaintiff contends that the specification describes that first switching device 1608 and
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`second switching device 1614 are not both on (closed) at the same time given that “the apertures
`
`of the control signals for the first and second switching devices ‘do not overlap’ and are ‘180
`
`degrees out of phase.’” Response at 4 (citing ’342 Patent at Figure 16I, 18:59–61, 19:48–53,
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`20:40–43).
`
`
`
`14
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`

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`Case 6:23-cv-00384-ADA Document 63 Filed 10/21/24 Page 15 of 70
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`With respect to Defendant’s proposed construction, Plaintiff contends that it improperly
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`“changes the meaning of the claim language” by “impos[ing] synchronized charging/discharging
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`cycles of both first and second capacitors.” Id. Plaintiff contends that Defendant’s proposed
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`construction is “inconsistent with specification embodiments where charging and discharging
`
`occurs independently for each capacitor, and at different times,” and improperly excludes
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`disclosed embodiments, .e.g., Figures 16H and 16I.
`
`In its reply, Defendant contends that Plaintiff while “interprets ‘controlling a charging and
`
`discharging cycle,’ in the context of Claim 18 and its dependent claims in the ’342 Patent, to mean
`
`that the switching devices recited in those claims are dependent on each other, and therefore do
`
`not have ‘independent’ control inputs[,]” Plaintiff “appears to concede that [Defendant’s] proposed
`
`interpretation of ‘controlling a charging and discharging cycle’ is correct as to each capacitor in
`
`Claim 18 and its dependent claims.” Reply at 1–2 (emphases in Defendant’s brief). Based on that,
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`Defendant contends that Plaintiff “appears to agree with [Defendant’s] proposed construction that
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`each capacitor undergoes a cycle of charging and then discharging based on its respective switch.”
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`Id. at 2.
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`In its sur-reply, Plaintiff contends that “[n]one of the words in the disputed term are unclear,
`
`nor has [Defendant] argued that they are.” Sur-Reply at 1. Rather, Plaintiff contends that
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`Defendant “does not seek a construction of the disputed term, but, instead, seeks to add the word
`
`‘then’ into the term in order to rewrite the claim language[,]” which improperly adds a sequential
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`ordering between charging and discharging. Id. (emphases in Plaintiff’s brief).
`
`Plaintiff contends that Defendant does not provide a substantive response based on the
`
`intrinsic record why it is necessary to add “then” in its proposed construction. Id. Plaintiff
`
`contends that, contrary to Defendant’s assertion, it does not agree that “each capacitor undergoes
`
`
`
`15
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`

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`Case 6:23-cv-00384-ADA Document 63 Filed 10/21/24 Page 16 of 70
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`a cycle of charging and then discharging based on its respective switch.” Rather, Plaintiff contends
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`that the language of Claim 18 “makes it clear that the first and second switching devices operate
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`separately (as they are ‘electrically coupled to the first and second capacitors, respectively’), and
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`therefore the charging/discharging periods of their respective capacitors occur at different times.”
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`Id. at 2.
`
`Plaintiff contends that Defendant “tries to create confusion by addressing both the
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`‘controlling a charging and discharging cycle’ and ‘switching device’/ ‘switch’ terms at the same
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`time[,]” in order to “obscure the straightforward concepts at issue.” Id.
`
`
`
`The Undersigned’s Analysis:
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`After reviewing the parties’ arguments and considering the applicable law, the undersigned
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`agrees with Plaintiff that this term should be construed according to its plain-and-ordinary meaning
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`for the reasons that follow. First, the “heavy presumption” is that terms should be construed
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`according to their plain-and-ordinary meaning. Azure Networks, 771 F.3d at 1347.
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`Second, Defendant does not expressly allege lexicography or disclaimer, which are the
`
`only two exceptions to the general rule that a term should be construed as having its plain-and-
`
`ordinary meaning. Thorner, 669 F.3d at 1365.
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`Third, Defendant’s proposed construction unnecessarily adds a temporal ordering between
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`the charging phase and discharging phase of a capacitor. More specifically, if discharging
`
`necessarily follows charging, then Defendant’s proposed construction is unnecessary and
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`redundant. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (claim
`
`construction is “not an obligatory exercise in redundancy”); C.R. Bard, 388 F.3d at 863 (“merely
`
`rephrasing or paraphrasing the plain language of a claim by substituting synonyms does not
`
`
`
`16
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`

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`Case 6:23-cv-00384-ADA Document 63 Filed 10/21/24 Page 17 of 70
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`represent genuine claim construction”) (internal quotations marks omitted). On the other hand, if
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`Defendant’s proposed construction requires that discharging must immediately follow charging—
`
`thus excluding situations where the capacitor neither continues charging or starts discharging, i.e.,
`
`maintains its charge—then Defendant’s proposed construction improperly excludes those
`
`situations without meeting the “exacting” standards required for disavowal. Hill-Rom Servs., 755
`
`F.3d at 1371 (“The standards for finding lexicography and disavowal are exacting.”).
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`Therefore, for the reasons described above, the undersigned finds that the term should be
`
`construed according to its plain-and-ordinary meaning.
`
`B. Term #2: “switching device” / “switch”
`
`
`
`
`
`Term
`
`#2: “switching device” /
`“switch”
`
`U.S. Patent No. 7,496,342,
`Claims 18, 19, 20, 21;
`U.S. Patent No. 9,118,528,
`Claims 1, 5, 8, 17, 18, 19, 23,
`26, 35, 36
`
`Proposed by Plaintiff
`
`
`Plaintiff’s Proposed
`Construction
`Plain-and-ordinary meaning
`wherein the plain-and-
`ordinary meaning is “an
`electronic device for opening
`and closing a circuit as
`dictated by an independent
`control input”
`
`
`Defendant’s Proposed
`Construction
`No construction necessary /
`Plain and ordinary meaning,
`or if construction is
`necessary, an electronic
`device which opens and
`closes to break or complete
`an electrical path in a circuit
`
`
`Judge Albright, the undersigned, and Judge Gilliland all previously construed this term as
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`plain-and-ordinary meaning wherein the plain-and-ordinary meaning is “an electronic device for
`
`opening and closing a circuit as dictated by an independent control input” which is Plaintiff’s
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`proposed construction. ParkerVision, Inc. v. Intel Corp., No. 6:20-cv-00108, ECF No. 75 at 6
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`(W.D. Tex. Jan. 28, 2021); ParkerVision, Inc. v. HiSense Co., Ltd., No. 6:20-cv-00870, ECF No.
`
`51 at 107 (W.D. Tex. Oct. 29, 2021); ParkerVision, Inc. v. LG Elecs., No. 6:21-cv-00520, ECF
`
`No. 55 at 32 (W.D. Tex. June 21, 2022).
`
`
`
`17
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`Case 6:23-cv-00384-ADA Document 63 Filed 10/21/24 Page 18 of 70
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`The Parties’ Positions:
`
`Defendant contends that Plaintiff’s proposed construction is narrower than the dictionary
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`definition. Opening at 9. Defendant contends that Plaintiff’s proposed construction would
`
`“exclude embodiments described in the ’342 Patent and appears to contradict the claims and
`
`specification of the ’528 Patent.” Id. Defendant contends that “[t]here is no support for such a
`
`drastic interpretation in the claims, specification, or prosecution history.” Id.
`
`Defendant contends that Plaintiff’s proposed construction is based on a different patent—
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`U.S. Patent No. 6,091,940—which differs “substantially” from the ’342 and ’528 Patents in this
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`case. Id. at 10. Defendant contends that the ’342 and ’528 Patents are not re