PTAB

IPR2024-00936

Texas Instruments Inc v. ParkerVision Inc

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1. Case Identification

2. Patent Overview

  • Title: Method and System for Down-Converting an Electromagnetic Signal, and Transforms for Same, and Aperture Relationships
  • Brief Description: The ’528 patent discloses systems and methods for down-converting a modulated radio frequency (RF) carrier signal to a baseband signal. It specifically describes an I/Q modulation receiver architecture that uses switches and energy storage elements to sample and integrate portions of the RF signal to produce in-phase (I) and quadrature-phase (Q) baseband components.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tayloe, TI Datasheet, and Macnally - Claims 1, 5, 8-9, 11-19, 23, 26-27, and 29-36 are obvious over Tayloe in view of the TI Datasheet and Macnally.

  • Prior Art Relied Upon: Tayloe (Patent 6,230,000), TI Datasheet (SN74CBT3253 Datasheet), and Macnally (Patent 7,065,327).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Tayloe taught a direct conversion receiver architecture using a "commutating switch" and associated capacitors to sample and integrate an RF signal at four phases (0°, 90°, 180°, 270°). Tayloe explicitly identified this switch as a Texas Instruments component, and the corresponding TI Datasheet disclosed that this functional block contained multiple individual FET switches, thus teaching the first and second switches of claim 1. Macnally taught using fully differential amplifier circuits that function as low-pass filters in integrated transceivers. The combination allegedly met the limitations of independent claim 1 by using the individual switches from the TI Datasheet to implement Tayloe's sampling scheme and using Macnally's differential amplifier to combine the resulting in-phase (0°) and inverted in-phase (180°) signals.
    • Motivation to Combine: A POSITA would combine Tayloe with the TI Datasheet because Tayloe expressly referenced the specific component, making consultation of its datasheet a routine and necessary design step. A POSITA would combine this system with Macnally's teachings to implement the receiver on a single integrated circuit, leveraging Macnally's well-known differential amplifier design to achieve improved noise rejection and linearity, which are common and important goals in IC design.
    • Expectation of Success: The combination would have yielded predictable results, as it involved the simple substitution of known elements (the individual TI switches for Tayloe's conceptual switch block; Macnally's amplifier for Tayloe's summing block) to perform their known functions.

Ground 2: Obviousness over Razavi and Macnally - Claims 1, 5, 8-9, 11-19, 23, 26-28, and 30-36 are obvious over Razavi in view of Macnally.

  • Prior Art Relied Upon: Razavi (a 1997 IEEE Symposium paper) and Macnally (Patent 7,065,327).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Razavi taught a direct conversion CMOS receiver with quadrature mixers, each using a pair of complementary switches (transistors M5 and M6) and associated capacitors (Cp and Cm) to down-convert an RF signal. This arrangement allegedly taught the claimed first and second switches, control signals, and energy storage elements that produce differential in-phase and inverted in-phase baseband signals. While Razavi stated an explicit need for channel-selection filtering, it did not provide a specific circuit design. Macnally supplied this missing element by teaching a detailed implementation of a fully differential amplifier circuit that performs the exact low-pass filtering function required by Razavi.
    • Motivation to Combine: A POSITA would combine Macnally's filter circuit with Razavi's receiver to fulfill the explicitly stated need for channel-selection filtering. This combination represents addressing a known problem (the need for filtering) with a known, readily available solution (Macnally's filter design).
    • Expectation of Success: Success was expected because Macnally’s standard filter circuit would predictably perform its intended channel-selection function when integrated into Razavi’s receiver architecture to suppress out-of-channel interferers.

  • Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 1B and 2B) by adding Cahn (a 1960 paper on modulation techniques) to the primary combinations. Cahn was used to teach applying the receiver architectures to signals with known amplitude, phase, and combined modulation, thereby rendering claims 2-4 and 20-22 obvious.

4. Key Claim Construction Positions

  • Petitioner argued for a specific construction of the terms "storage element" and "energy storage element" as "an element of a system that stores non-negligible amounts of energy from an input EM signal."
  • This proposed construction was central to Petitioner's arguments. Petitioner contended that this construction was previously adopted by the Patent Trial and Appeal Board and affirmed by the Federal Circuit in prior proceedings involving the Patent Owner and related patents that incorporate the same reference material as the ’528 patent.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §325(d) is unwarranted because the asserted prior art combinations and invalidity arguments were not previously presented to or considered by the USPTO during prosecution.
  • Petitioner also contended that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors is inappropriate. To mitigate concerns about duplicative efforts with parallel district court litigation, Petitioner stated it has voluntarily presented a Sotera stipulation to the Patent Owner, which would favor institution under current USPTO guidance.

6. Relief Requested

  • Petitioner requests that the Board institute an inter partes review and cancel claims 1-5, 8, 9, 11-23, 26, 27, and 29-36 of Patent 9,118,528 as unpatentable.