The Federal Circuit upheld a final written decision of the Patent Trial and Appeal Board in the matter of ParkerVision, Inc., v Vidal, Docket Number 2022-1548, decided December 15, 2023.
Claim 3 of US 7,110,444 was in dispute. Claim 3 describes a “wireless modem apparatus.” The apparatus includes frequency down-conversion modules. Each module is claimed to include a “storage element.” In an inter-partes review (IPR), the PTAB had held that the claimed storage element was disclosed by a capacitor in US 6,230,000 to Tayfoe and that claim 3 had been shown to be unpatentable. The petitioner in the IPR was Intel Corporation.
ParkerVision argued that the claimed storage element was supported by a storage capacitance of FIG. 82A of an incorporated patent, US 6,061,551 (“the ‘551 Patent”). FIG. 82A includes the annotation “storage capacitance.” The storage capacitance of FIG. 82A is part of an “energy transfer” system in which sampling occurs with a “pulse with a non-negligible aperture.” See the ‘551 Patent FIG. 82A. On the other hand, FIG. 78A of the ‘551 Patent illustrates a “holding capacitance” which holds a voltage obtained using a “pulse with negligible duration.”
The PTAB construed the meaning of “storage element” in claim 3 to be defined in a phrase in the ‘551 Patent stating “storage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal.” The Federal Circuit refers to the paragraph which includes this passage as a “critical paragraph” in which the Patentee acted as their own lexicographer. The PTAB found that capacitors of Tayfoe satisfied this description.
ParkerVision disputed the PTAB construction of “storage element,” saying that the claim 3 storage element was like the “storage capacitance” of FIG. 82A. The argument distinguishes the capacitors of Tayfoe FIG. 3.
The Federal Circuit affirmed the construction of the PTAB, based on the description in the critical paragraph and reasoning that patentee had acted as its own lexicographer. The Federal Circuit was not persuaded that the claim 3 phrase “storage element” was restricted to an element of energy transfer system. The PTAB holding that claim 3 was unpatentable was affirmed.
