Texas Instruments Inc v. ParkerVision Inc

1. Case Identification

• Case #: IPR2024-00935
• Patent #: 7,865,177
• Filed: May 18, 2024
• Petitioner(s): Texas Instruments Incorporated
• Patent Owner(s): ParkerVision, Inc.
• Challenged Claims: 14

2. Patent Overview

• Title: Method and System for Down-Converting an Electromagnetic Signal, and Transforms for Same, and Aperture Relationships
• Brief Description: The ’177 patent describes a method for down-converting an electromagnetic (EM) signal. The method involves using first and second "matched filtering/correlating modules" to separately receive and down-convert an input signal, and then combining the two resulting down-converted signals.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tayloe and TI Datasheet - Claim 14 is obvious over Tayloe in view of the TI Datasheet.

• Prior Art Relied Upon: Tayloe (Patent 6,230,000) and TI Datasheet (SN74CBT3253 Dual 1-of-4 FET Multiplexer/Demultiplexer Datasheet).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tayloe discloses a direct conversion receiver circuit that meets all limitations of claim 14. Tayloe’s circuit processes an RF input signal through two parallel paths to generate in-phase (I) and quadrature (Q) baseband signals. Petitioner asserted these two paths constitute the first and second "matched filtering/correlating modules" required by the claim. The circuit receives an input signal (claim 14.1, 14.3), down-converts it in each path using commutating switches and integrating capacitors (claim 14.2, 14.4), and then combines the resulting signals (claim 14.5).
  • Motivation to Combine (for §103 grounds): Petitioner contended that Tayloe expressly identifies a "Texas Instruments SN74BCT3253D" as a suitable component for its commutating switch. A person of ordinary skill in the art (POSITA) would have been motivated to consult the official TI Datasheet for this part (the SN74CBT3253) to understand its operational characteristics and implement Tayloe’s circuit. This constitutes a simple case of consulting a datasheet for an expressly referenced component.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as the combination would yield only predictable results based on the well-defined electrical properties described in the TI Datasheet for the component specified in Tayloe.

Ground 2A: Obviousness over Razavi - Claim 14 is obvious over Razavi.

• Prior Art Relied Upon: Razavi (A 900-MHz CMOS Direct Conversion Receiver, IEEE Symposium on VLSI Circuits, 1997).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Razavi, standing alone, discloses every element of claim 14. Razavi describes a direct conversion receiver architecture with parallel I and Q signal paths, each containing a mixer that functions as a "matched filtering/correlating module." Razavi’s circuit receives an RF signal at an LNA, which is then passed to the first and second mixers (claim 14.1, 14.3). The mixers, comprising switches and capacitive loads, down-convert the signal to produce first and second differential baseband signals (claim 14.2, 14.4). These signals are then combined and amplified by a subsequent baseband amplifier (claim 14.5). Petitioner asserted this mapping holds true under both the Patent Owner’s proposed claim construction and the plain-and-ordinary meaning of the terms.

Ground 2B: Obviousness over Razavi and Uzunoglu - Claim 14 is obvious over Razavi in view of Uzunoglu.

• Prior Art Relied Upon: Razavi (as above) and Uzunoglu (The Synchronous Oscillator: A Synchronization and Tracking Network, IEEE Journal of Solid-State Circuits, 1985).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Razavi provides the fundamental direct conversion receiver architecture, while Uzunoglu teaches a synchronous oscillator (SO) circuit for carrier recovery and synchronization. While Razavi’s local oscillator is set to the nominal carrier frequency, it does not describe actively synchronizing it to the incoming RF signal’s carrier. The combination remedies this by using Uzunoglu's SO to synchronize Razavi's local oscillator control signal with the precise carrier frequency of the received RF signal.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Uzunoglu with Razavi to improve receiver performance by compensating for frequency drift between the transmitter and receiver oscillators, a well-known problem. Implementing Uzunoglu’s carrier synchronization would ensure the RF signal is down-converted precisely to zero-frequency, eliminating the need for complex digital post-processing and potentially reducing overall circuit complexity.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success, as Uzunoglu provides detailed guidance for implementing its SO circuit, and integrating a carrier synchronization subsystem into a standard receiver architecture like Razavi's was a known design technique.

4. Key Claim Construction Positions

• "matched filtering/correlating module": This term was central to the petition's arguments. The petition analyzed claim 14 under two different constructions.
  • Patent Owner's Construction: Petitioner addressed a lengthy, multi-part functional construction proposed by the Patent Owner in co-pending litigation. This construction required, among other things, "linear time-variant circuitry," sampling at an "aliasing rate," and specific steps of accumulating, transferring, and discharging energy to a load. Petitioner argued that the prior art combinations met every element of this detailed construction.
  • Plain-and-Ordinary Meaning: Petitioner also argued that under the correct, plain-and-ordinary meaning, the term requires a module that performs a filtering/correlating operation synchronized with the received signal's carrier to accumulate energy and enhance the signal-to-noise ratio. Petitioner contended its invalidity grounds were even stronger under this broader, proper construction.

5. Arguments Regarding Discretionary Denial

• §325(d) (Advanced Bionics): Petitioner argued against discretionary denial under §325(d), asserting that the prior art references and arguments presented in the petition are new and non-cumulative. Although Tayloe and Razavi were cited during prosecution of the ’177 patent, Petitioner contended there was no evidence the Examiner substantively considered their teachings in the manner now being applied.
• §314(a) (Fintiv): Petitioner argued that discretionary denial based on the co-pending district court litigation (ParkerVision, Inc. v. Texas Instruments Inc.) is unwarranted. To mitigate concerns of parallel proceedings, Petitioner voluntarily presented a Sotera stipulation, agreeing not to pursue in the district court the same grounds, or any grounds that could have reasonably been raised in this inter partes review (IPR). Petitioner asserted this stipulation eliminates any risk of duplicative effort and strongly favors institution per current USPTO guidance.

6. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claim 14 of the ’177 patent as unpatentable.