LG Electronics Inc v. ParkerVision Inc

1. Case Identification

• Case #: IPR2022-00246
• Patent #: 7,292,835
• Filed: December 17, 2021
• Petitioner(s): LG Electronics Inc.
• Patent Owner(s): ParkerVision, Inc.
• Challenged Claims: 1, 12-15, 17-20

2. Patent Overview

• Title: Modem for Down-Converting Electromagnetic Signals
• Brief Description: The ’835 patent discloses a modem for down-converting a high-frequency electromagnetic signal to a low-frequency baseband signal. The modem architecture comprises parallel in-phase (I) and quadrature-phase (Q) processing paths, each including a frequency down-conversion module that itself contains a frequency translation module (e.g., a switch) and a storage module (e.g., a capacitor).

3. Grounds for Unpatentability

Ground 1: Obviousness over Hulkko in View of Gibson - Claims 1, 12, 15, and 17 are obvious over Hulkko in view of Gibson.

• Prior Art Relied Upon: Hulkko (Patent 5,734,683) and Gibson (Patent 4,682,117).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hulkko disclosed the core architecture of the challenged claims, including a receiver with two parallel frequency down-conversion modules for processing I/Q signals. Hulkko’s modules were alleged to perform down-conversion by sampling an input signal using a switched capacitor, thereby teaching the claimed "frequency translation module" (switch) and "storage module" (capacitor). To the extent Hulkko was considered not to explicitly teach a 90-degree phase shifter for generating the quadrature signal, Petitioner asserted Gibson taught this was a well-known, conventional technique in modem design.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the references to implement the I/Q demodulation receiver described in Hulkko. While Hulkko taught splitting a signal for I/Q processing, it did not detail the phase-shifting mechanism. Gibson provided a conventional method for this function by teaching the use of a 90-degree phase shifter to generate a quadrature signal from an in-phase signal. A POSITA would have been motivated to use Gibson’s conventional phase shifter to complete the design of Hulkko’s receiver.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved implementing a known function (I/Q signal generation) in Hulkko’s receiver using a standard, well-understood component (Gibson’s phase shifter) for its intended purpose, leading to predictable results.
  • Key Aspects: Petitioner argued that if the preamble term "cable modem" is limiting, this combination would still be obvious in view of industry standards like DOCSIS and Applicant Admitted Prior Art (AAPA), which established that I/Q receivers were well-known in cable modems.

Ground 2: Obviousness over Gibson in View of Schiltz - Claims 1, 12-15, and 18-20 are obvious over Gibson in view of Schiltz.

• Prior Art Relied Upon: Gibson (Patent 4,682,117) and Schiltz (Patent 5,339,459).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Gibson disclosed the overall system architecture of claim 1, including a local oscillator, a phase shifter to create I and Q signals, and two parallel down-conversion paths using mixers. However, Gibson did not expressly disclose that its mixers used a switched-capacitor structure. Schiltz was asserted to cure this by teaching a "high speed sample and hold circuit," comprising a switch (FET) and a hold capacitor, and explicitly teaching its use "as a mixer" for down-conversion in radio applications. The combination of Gibson's architecture with Schiltz's mixer implementation allegedly disclosed every limitation of the challenged claims.
  • Motivation to Combine: A POSITA would have been motivated to implement the mixers in Gibson’s receiver using the specific sample-and-hold circuit from Schiltz. Gibson provided the high-level architecture but not the specific mixer implementation, creating a design need that Schiltz filled. Schiltz taught that its switched-capacitor mixer was advantageous for down-conversion, providing a clear reason to incorporate it into Gibson’s modem design to achieve efficient and accurate operation.
  • Expectation of Success: The combination was presented as a predictable substitution of one known element (a generic mixer in Gibson) with another known, more specific element (the sample-and-hold mixer from Schiltz) to achieve an expected improvement in performance. This represented a simple combination of known technologies with a high expectation of success.

4. Key Claim Construction Positions

• "cable modem" (Claim 1 Preamble): Petitioner argued that if the Board finds this preamble term limiting, it should be construed as "any modem that can be used to down-convert modulated signals from a TV network," irrespective of whether it is wired or wireless or compliant with any specific data standard.
• "frequency translation module" (Claims 1, 18): Petitioner proposed this term should be construed as a "switch," based on the patent's specification and figures showing a switch as the corresponding structure for the module's sampling function.
• "storage module" (Claims 1, 18): Petitioner argued this term should be construed as a "capacitor or an inductor," consistent with the disclosure of a capacitor as the primary embodiment and an inductor as a disclosed alternative.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §314(a) and should instead institute review and grant Petitioner's motion to join the proceeding with a co-pending case, TCL Industries Holdings Co. v. ParkerVision, Inc., IPR2021-00985.
• Petitioner noted that the Board had already analyzed the Fintiv factors and declined to deny institution in the co-pending TCL IPR. It further argued that the Final Written Decision in the TCL IPR was expected by November 2022, well before the April 2023 trial date in the parallel district court litigation involving the Petitioner.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 12-15, and 17-20 of the ’835 patent as unpatentable.