UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`Intel Corporation
`Petitioner
`
`v.
`
`Qualcomm Incorporated
`Patent Owner
`
`U.S. Patent No. 8,698,558
`Claims 12-14
`____________________________________________
`
`Case IPR2018-01152
`____________________________________________
`
`REPLY DECLARATION OF ALYSSA APSEL, PH.D.
`ON BEHALF OF PETITIONER
`
`Intel v. Qualcomm
`Exhibit 1027
`IPR2018-01152
`
`

`

`I. 
`II. 
`
`TABLE OF CONTENTS
`BACKGROUND ............................................................................................. 1 
`CLAIM CONSTRUCTION ............................................................................ 2 
`A. 
`Patent Owner’s Proposed Construction Is Wrong ................................ 2 
`Patent Owner’s Proposed Construction Contradicts The
` 
`Plain Claim Language ................................................................. 2 
`Patent Owner’s Proposed Construction Would Exclude
`Disclosed Embodiments .............................................................. 5 
`Patent Owner’s Remaining Arguments Have No Merit ............. 7 
` 
`III.  GROUNDS ...................................................................................................... 8 
`A. 
`Patent Owner Concedes That Claims 12 and 14 are
`Unpatentable .......................................................................................... 9 
`The Petition Demonstrates Motivation to Combine Chu with
`Choi 2010 .............................................................................................. 9 
`The Motivation To Combine Chu and Choi 2010 Is
` 
`Rooted In References Themselves And Common
`Knowledge .................................................................................. 9 
`Petition Explains How To Modify Chu In View Of Choi
`2010 ........................................................................................... 16 
`Patent Owner Is Wrong That Petition Fails To Demonstrate a
`Motivation to Combine Chu and Choi 2010 with Myers .................... 16 
`Patent Owner Is Wrong That Choi 2010 Teaches Away
` 
`From “Selective Boost” ............................................................ 17 
`A POSA Would Have Modified Chu and Choi 2010 To
`Apply Myers’ Power Selection Functionality .......................... 20 
`IV.  AVAILABILITY FOR CROSS-EXAMINATION ...................................... 24 
`V. 
`RIGHT TO SUPPLEMENT .......................................................................... 25 
`VI. 
`JURAT ........................................................................................................... 25 
`
`
`B. 
`
`C. 
`
` 
`
` 
`
` 
`
`i
`
`

`

`I, Alyssa Apsel, declare as follows:
`
`I.
`
`BACKGROUND
`1.
`I am the same Alyssa Apsel who submitted a prior declaration in this
`
`matter, which I understand was filed on June 28, 2018. I am currently the Director
`
`of the School of Electrical and Computer Engineering and a professor of electrical
`
`and computer engineering at Cornell University in Ithaca, New York. Between
`
`September 2016 to June 2018, I was a visiting professor at Imperial College in
`
`London, England, where I worked on low power RF interfaces for implantable
`
`electronics. My background and qualifications remain as stated in paragraphs 2-14
`
`and Appendix A of that declaration, filed as Exhibit 1003 in this case. My
`
`statements in paragraphs 17-19 of my prior declaration regarding my review of
`
`U.S. Patent No. 8,698,558 (“the ’558 patent”) and related materials also remain
`
`unchanged, as do my understandings of the relevant legal principles stated in
`
`paragraphs 20-31.
`
`2.
`
`Since my prior declaration, I have reviewed Patent Owner’s
`
`Preliminary Response of October 17, 2018 (“POPR”), the Board’s Decision to
`
`Institute of January 16, 2019, the transcript of my deposition taken on March 6,
`
`2019, the Patent Owner’s Response of April 15, 2019 (“POR”), the Declaration of
`
`Arthur W. Kelley of April 15, 2019 (Ex. 2005), the transcript of Dr. Kelley’s
`
`1
`
`

`

`deposition taken on June 21, 2019. (Ex. 1028) , and the related district court
`
`litigation claim construction order (Ex. 1026).
`
`3.
`
`I confirm that everything included in my prior declaration of June 28,
`
`2018, and all of the testimony given during my deposition of March 6, 2019,
`
`remain true to the best of my knowledge.
`
`II. CLAIM CONSTRUCTION
`A.
`Patent Owner’s Proposed Construction Is Wrong
`4.
`Patent Owner contends that the term of claim 13 “based on the first
`
`supply voltage or the boosted supply voltage” should be construed such that “the
`
`envelope amplifier must be able to operate, selectively, based on either the first
`
`supply voltage or the boosted supply voltage (referred to herein as a ‘selective
`
`boost’).” (POR, 9.) In other words, under Patent Owner’s construction, an
`
`amplifier that received only the first voltage or only the boosted voltage would not
`
`meet this limitation. I have been informed and understand that this proposed
`
`construction is far from the broadest reasonable construction of “or,” is contrary to
`
`the plain meaning, and excludes disclosed embodiments, and, therefore, it should
`
`be rejected.
`
` Patent Owner’s Proposed Construction Contradicts The Plain
`Claim Language
`Claim 13 recites an “envelope amplifier” that “operates based on the
`
`5.
`
`first supply voltage or the boosted supply voltage.” Ex. 1001, 13:13-15. As Dr.
`
`2
`
`

`

`Kelley conceded, the term “or” is a conjunction that identifies two alternatives:
`
`this “or” that. (Ex. 1028, 130:10-18 (“Q. I’m asking at the Schoolhouse Rock
`
`level, or is a conjunction that joins two alternatives, correct? A. Well, if we’re
`
`going to import Schoolhouse Rock into the deposition, in that context, yes, it is.”).)
`
`Under its plain English meaning, the requirement for an amplifier that operates
`
`based on “the first supply voltage or the boosted supply voltage” is met by an
`
`amplifier that operates based on either one of those alternative alone. (Id. at
`
`130:19-131:2 (“Q. … If I said I would like coffee or tea, you could give me tea and
`
`that would meet my requirement, right? A. In that hypothetical abstract outside
`
`the bounds of the ’558, sure.”).) Patent Owner has identified no sound basis to
`
`deviate from that broad plain meaning.
`
`6.
`
`To the contrary, Patent Owner concedes that the common meaning of
`
`“or” in patent claims is to recite alternatives. See, POR, 23 (“The use of ‘or’ is
`
`sometimes an acceptable mechanism for claiming alternatives such that only one of
`
`the limitations need be found in the prior art to support anticipation.” I have been
`
`informed and understand that this is exactly how Hon. Dana M. Sabraw construed
`
`“or” in the related district court litigation on the ’558 patent. (Ex. 1026 [Claim
`
`Constr. Order] at 5-6 (holding the limitation “a source receiving the boosted supply
`
`voltage or the first supply voltage” in claim 6 does not require “selective boost”).)
`
`3
`
`

`

`Indeed, Dr. Kelley admitted at his deposition that Patent Owner’s construction
`
`contradicts Judge Sabraw:
`
`Q. And just to be clear, you're giving an opinion that is contrary to
`Judge Sabraw’s claim construction, right?
`I understand what the Judge did. And I’ve reached a different
`conclusion.
`
`A.
`
`Ex. 1028, 147:10-151. I have been informed and understand that Judge Sabraw
`
`applied the Phillips standard, which is a narrower standard than the broadest
`
`reasonable interpretation standard. But if “or” covers either alternative alone under
`
`the Phillips standard that Judge Sabraw used, I understand that it is certainly at
`
`least that broad under the broadest reasonable construction rule, which is
`
`applicable in this proceeding. Accordingly, an envelope amplifier that operates
`
`based on either one of the recited alternatives – e.g., the “boosted supply voltage”
`
`alone – would meet the claim.
`
`7. Moreover, other claims demonstrate that Patent Owner knew how to
`
`recite a “selective boost” requirement when it wanted – using language different
`
`from claim 13. Dependent claim 7 provides one such example. Claim 7 depends
`
`from independent claim 6. Much like claim 13, claim 6 recites “a source receiving
`
`
`1 Objections omitted in transcript quotations.
`
`4
`
`

`

`the boosted supply voltage or the first supply voltage….” Claims 6 is therefore
`
`met using only one of the boosted or first supply voltage. Indeed, as noted above,
`
`Judge Sabraw found that this claim does not require “selective boost.” (Ex. 1026,
`
`5-6.) By contrast, dependent claim 7 adds the limitation “wherein the supply
`
`generator is operative to generate the second supply voltage based on the envelope
`
`signal and either the boosted supply voltage or the first supply voltage.” If claim
`
`6 already required “selective boost,” then claim 7 would add nothing. But claim
`
`7’s additional language “and either” has meaning. For that reason, claim 7 could
`
`not be read to require only one of the boosted or first supply voltage. It is therefore
`
`that additional language appearing in claim 7 (which does not appear in either
`
`claims 6 or 13) that adds a requirement for the amplifier to be able to select
`
`between “either” the boosted voltage “or” the first supply voltage. Because claim
`
`13 (like claim 6) lacks this “and either” language, it has no such requirement.
`
` Patent Owner’s Proposed Construction Would Exclude
`Disclosed Embodiments
`I have been informed and understand that Patent Owner’s construction
`
`8.
`
`should also be rejected, because it improperly excludes disclosed embodiments.
`
`9.
`
`Specifically, the ’558 specification (starting at column 8, line 24)
`
`teaches “another design of supporting operation with a lower battery voltage[.]”
`
`(Ex. 1001, 8:24-25.) In this embodiment, “the entire envelope tracker is operated
`
`based on the Vboost voltage from boost converter 180” alone (i.e., solely based on
`
`5
`
`

`

`the “boosted supply voltage”), without ever operating based on battery voltage
`
`(i.e., never based on the “first supply voltage”). (Id. at 8:25-26.) As Dr. Kelley
`
`admitted at his deposition, Patent Owner’s construction would exclude this
`
`disclosed embodiment:
`
`Q.
`
`If you're right that the selective boost and the or means I have to
`
`be able to use either boost or first, then under that circumstance,
`
`claim [6] and 13 would not cover the embodiment at column 8
`
`line 24 that uses Vboost alone. Is that fair?
`
`A.
`
`I think that’s fair.
`
`(Ex. 1028, 134:12-18.) Because Patent Owner’s proposed construction
`
`would exclude this disclosed embodiment, I have been informed and
`
`understand that it should be rejected.
`
`10. Patent Owner’s argument demonstrates that it is improperly
`
`attempting to limit claim 13 solely to one disclosed embodiment (to the exclusion
`
`of others). For example, Patent Owner contends that column 1, lines 42-50
`
`discloses a form of “selective boost.” Whether the specification here means what
`
`Patent Owner says is debatable. But what is beyond dispute is that column 1
`
`discloses merely “one design” as an “example” that in no way limits the claims:
`
`In one design, the envelope amplifier may further receive the first
`supply voltage and may generate the second supply voltage based on
`either the first supply voltage or the boosted supply voltage. For
`
`6
`
`

`

`example, the envelope amplifier may generate the second supply
`voltage (i) based on the boosted supply voltage if the envelope signal
`exceeds a first threshold and/or if the first supply voltage is below a
`second threshold or (ii) based on the first supply voltage otherwise.
`
`(Ex. 1001, 1:42-50. (emphasis added).) Patent Owner’s citation to column 8, lines
`
`55-62 is similarly misplaced. (Id., 8:55-62 (“In one design….For example,…”).) I
`
`have been informed and understand that limiting claims solely to one embodiment
`
`disclosed in the specification in not appropriate. Accordingly, Patent Owner’s
`
`attempt to do so here should be rejected.
`
` Patent Owner’s Remaining Arguments Have No Merit
`11. Finally, Patent Owner suggests that I somehow “agreed that it would
`
`not make sense to interpret the boosted supply voltage as purely optional in the
`
`context of the claims” (POR, 24), because “when asked about a similar ‘based on’
`
`limitation in claim 6,” I supposedly “admitted that it makes sense to interpret
`
`‘based on’ as requiring a boosted supply voltage to be an available supply
`
`voltage.” POR, 24.
`
`12. The language from claim 6 that I was asked to address in this
`
`testimony recites “generat[ing] a second supply voltage for the power amplifier
`
`based on the envelope signal and the boosted supply voltage.” (Ex. 2006 [Apsel
`
`Transcript] at 41:21-23; Ex. 1001, 11:49-51.) This language is not similar to claim
`
`7
`
`

`

`13, which plainly recites “or.”2 (Ex. 1001, claim 13.) By reciting “or,” claim 13 is
`
`clear that either one of the “boosted supply voltage” or “the first supply voltage” is
`
`alone sufficient to satisfy the claim’s requirement.
`
`13. Patent Owner’s proposed construction should thus be rejected.
`
`III. GROUNDS
`14. The Board recognized that “Patent Owner does not challenge
`
`Petitioner’s mapping of the limitations to the cited prior art.” Decision on
`
`Institution (“DI”), 22. Neither Patent Owner nor Dr. Kelley dispute that all
`
`limitations of the asserted claims are disclosed in the prior art references of
`
`Grounds I-IV. POR, 19-44. Ex. 2005, ¶¶ 79-111. Patent Owner relies solely on
`
`arguments related to lack of motivation to combine these references. However,
`
`Patent Owner’s arguments ignore explicit reasons and rationales presented in the
`
`Petition and my first Declaration that would have motivated a person of ordinary
`
`skill in the art (“POSA”) to combine these references.
`
`15. Thus, if the Board rejects Patent Owner’s lack of motivation-to-
`
`combine arguments (as it should) and confirms its preliminary finding “that
`
`
`2 This language is also different from the relevant part of claim 6 that Judge
`
`Sabraw interpreted, which recites “a source receiving the boosted supply voltage
`
`or the first supply voltage.” (Ex. 1001, claim 6.)
`
`8
`
`

`

`Petitioner provides sufficient articulated rationales for combining the references,”
`
`then claim 13 should be found unpatentable for the reasons stated in the Petition
`
`and the Decision on Institution.
`
`A.
`Patent Owner Concedes That Claims 12 and 14 are Unpatentable
`16. Patent Owner admits that asserted claims 12 and 14 are unpatentable
`
`and agrees to cancel claims 12 and 14. POR, 1 (“Ground I is directed to claims 12
`
`and 14, and Ground II is directed to claim 14. Patent Owner does not contest these
`
`grounds and agrees to cancel claims 12 and 14.”)
`
`B.
`
`The Petition Demonstrates Motivation to Combine Chu with Choi
`2010
` The Motivation To Combine Chu and Choi 2010 Is Rooted In
`References Themselves And Common Knowledge
`17. According to Patent Owner, “[a] POSA would not have been
`
`motivated to combine Chu and Choi 2010 because they address different problems
`
`with different solutions that are in tension with each other” (POR, 25) and that
`
`combining Chu and Choi 2010 is based on “hindsight reconstruction” (POR, 26).
`
`Patent Owner alleges that a POSA would “either maximize efficiency at the cost of
`
`output power degradation (like in Chu), or minimize the output power degradation
`
`at the cost of reducing efficiency (like in Choi 2010).” (POR., 27.) Patent Owner
`
`is mistaken.
`
`18. First, if we are to accept Patent Owner’s argument, this would require
`
`accepting that Chu is not interested in the output signal quality (which relates to
`
`9
`
`

`

`output power degradation) of its supply modulator and that Choi 2010 is not
`
`interested in the power dissipation (which relates to the efficiency) of its supply
`
`modulator. It would require accepting, in other words, that these concerts are
`
`mutually exclusive. This is hardly the case. Even Dr. Kelley admits that engineers
`
`commonly balance concerns of power and efficiency when designing power
`
`management circuits:
`
`Q. And so in designing a power management circuit, you're
`balancing those competing concerns providing enough power
`for the load while at the same time being as efficient as you can
`be. Is that fair?
`I'm not sure I'd characterize them as being competing. There’s
`certainly simultaneous concerns. You worry about both of those
`in terms of making your power supply work properly.
`
`A.
`
`(Ex. 1028, 13:12-20; see also, id., 13:21-14:2.) And this was every bit as
`
`true in the prior art as it is today:
`
`Q. So we said at the outset that a person of skill in the art would
`understand that in designing power management, you want to
`have one goal of energy efficiency and also a goal of having a
`signal that actually works; it isn't distorted. Do you recall that?
`A. Yes.
`Q. That was true in 2010, right?
`A. Yes.
`Q.
`So it was true before the '558 patent, right?
`A.
`I guess that's true.
`
`10
`
`

`

`(Ex. 1028, 259:7-18.)
`
`19.
`
`It defies logic to accept that, because Chu addresses efficiency in its
`
`disclosure and Choi 2010 addresses output power degradation in its disclosure, a
`
`POSA would not have been motivated to combine the two to reap the benefits of
`
`each. This is particularly true in the design of power management circuits like
`
`those in Chu and Choi 2010, where the competing demands of efficiency and
`
`output power degradation are a standard engineering trade-off as even the
`
`Petitioner concedes. (POR, 25 (“Choi 2010 accepts the trade-off in efficiency in
`
`order to achieve a solution to its identified problem of output power
`
`degradation.”).) Accordingly, a POSA would consider both demands when
`
`designing a supply generator, and would not focus on only one to the exclusion of
`
`the other as the Patent Owner argues. See, POR, 27 (“either maximize efficiency
`
`at the cost of output power degradation (like in Chu), or minimize the output
`
`power degradation at the cost of reducing efficiency (like in Choi 2010)”).
`
`20. Second, Patent Owner’s suggestion that Petitioner’s combination “is
`
`not based on any teachings within the references themselves” (POR, 26) is
`
`factually wrong and in fact distorts the record. As an initial matter, both the
`
`Petition and my Declaration cited clear reasons to combine Chu and Choi 2010 that
`
`were articulated within the references themselves. The Petition explained, for
`
`example, how Choi 2010 explicitly taught advantages of modifying a system like
`
`11
`
`

`

`Chu to include a boost converter like that disclosed in Choi 2010’s Figure 5. (See
`
`Petition, 67-68 (“These advantages are specifically taught by Choi 2010, and
`
`would have motivated a POSA to modify Chu accordingly.”); see also, Ex. 1003,
`
`¶¶ 125-129.) The Petition then identified explicit disclosures in Choi 2010 (citing
`
`Choi 2010 at 1074 and 1077) that suggest integrating a boost converter for a
`
`“stable operation” of the supply modulator and for allowing “robust performance
`
`over the battery voltage variation.” (See, e.g., Petition at 68; see also, Ex. 1003,
`
`¶¶125-126.)
`
`21. Moreover, when Dr. Kelley was asked about these motivations to
`
`combine at his deposition, he readily agreed with Petitioner’s and my explanation.
`
`For example, Dr. Kelley testified that Choi 2010 teaches use of a boost converter
`
`to address battery degradation just like the Petition explained:
`
`Q. Now, Choi 2010 does talk about battery degradation, right?
`
`A.
`
`Right.
`
`Q. And Choi 2010 says you can use this boost converter to address
`
`the battery degradation problem, right?
`
`A. Yes.
`
`(Ex. 1028, 105:20-106:4.) Dr. Kelley also agreed that Choi 2010’s boost converter
`
`had the advantage of preventing a linear amplifier’s output from degrading when
`
`the battery depletes, just as the Petition explained:
`
`12
`
`

`

`Q.
`
`Choi 2010's boost converter prevents a linear amplifier's output power
`
`from degrading when the battery depletes, right?
`
`A.
`
`That's true.
`
`(Id., 156:3-6; see also, id., 155:7-156:2.) Dr. Kelley even conceded that if Chu’s
`
`battery degrades, the power amplifier would not be able to perform – a specific
`
`motive to make Petitioner’s proposed combination:
`
`Q.
`
`If the battery voltage gets too low, the output signal will become
`
`distorted, right?
`
`A.
`
`The output signal of the power amplifier. That’s right. If you don’t
`
`have enough battery voltage, Chu will not function and the power
`
`amplifier will not be able to perform.
`
`(Compare id., 165:17-22 with Petition, 67-71, and Ex. 1003, ¶¶ 125-129.) In short,
`
`Dr. Kelley conceded the exact motivations to combine that Petitioner described in
`
`the Petition and my Declaration.
`
`22. Moreover, as I have been informed and understand, Patent Owner is
`
`wrong to contend that the reason to combine must come directly from the
`
`combined art itself. I have been informed and understand that the motivation for a
`
`combination may come from the trends in the industry, from the ordinary creativity
`
`of a POSA, or indeed from “common sense” in the art at that time. To that end, the
`
`Petition also explained, using secondary references that inform the knowledge of a
`
`13
`
`

`

`POSA, that these advantages of modifying Chu to include a boost converter were
`
`common and well-known in the prior art. See, e.g., Petition, 68-70; see also, Ex.
`
`1003, ¶¶ 127-128.
`
`23. Even the Patent Owner admits that “efficiency and output
`
`distortion/robustness problems were generally known in the art.” POR, 26. The
`
`combination of Chu and Choi 2010 addresses these two problems, and the
`
`identification of those problems and rationales for combining Chu and Choi 2010
`
`have been well-documented in the Petition. The Board recognized this in the
`
`Decision on Institution of related IPR2018-01153:
`
`Petitioner provides argument and evidence that a person of ordinary
`skill in the art would have been motivated to use a boost converter in
`Choi 2010 to modify and improve Chu. … Petitioner cites secondary
`references in support of the advantages for modifying Chu’s supply
`modulator to incorporate the boost converter of Choi 2010. …
`Petitioner provides argument and evidence that supports the
`combination of Chu and Choi 2010 in accordance with the teachings
`of these secondary references.
`
`IPR2018-01153, Paper 9 at 21.
`24. Third, Dr. Kelley conceded at his deposition that the reason that
`
`would have motivated a POSA to modify Chu to include Choi 2010’s boost
`
`converter would be to extend Chu’s battery life:
`
`14
`
`

`

`A.
`Q.
`
`Q. … If I implemented the boost converter of Choi in Chu such
`that Chu operated off of battery power until the battery depleted
`and then I switched to using boost, that would save power,
`right?
`That would extend the useful life of the battery.
`Right. By conserving power during the portion of time where
`it's operating off of the battery only, right?
`By both conserving power during the time it's operating off the
`battery and then you turn on the boost, and it lets you more
`fully deplete the battery before you run out of battery.
`Q. Okay. And you would agree with me that extending the useful
`life of a battery is something that is good, right?
`A. Yes.
`
`A.
`
`Ex. 1028, 281:6-282:2. Dr. Kelley further admitted that this modification was well
`
`within the skill of a POSA:
`
`Q
`
`A
`
`It was within the skill of the person of ordinary skill to build the
`circuit that would switch between the Vbat shown in Choi ‐‐
`sorry ‐‐ shown in Chu Figure 4 and the boosted voltage of the
`boost converter from Choi Figure 5, correct?
`If you decided to do that, yes.
`
`Ex. 1028, 284:6-12. In short, the evidence fully demonstrates motivation for this
`
`combination.
`
`15
`
`

`

` Petition Explains How To Modify Chu In View Of Choi 2010
`25. The Patent Owner further argues that “how or why the references
`
`would be combined to produce the claimed invention” is “missing from the prior
`
`art.” (POR, 28.) Patent Owner is mistaken again. The Petition, my first
`
`Declaration, and the prior art references explain how Chu would have been
`
`modified to incorporate the boosted voltage teachings of Choi 2010. For example,
`
`the Petition explains how to “incorporate a boost converter to boost the supply
`
`voltage Vbattery to a higher voltage to produce a boosted supply voltage for use by
`
`the envelope amplifier.” (Petition, 65; Ex. 1003, ¶ 123.) The Petition also maps
`
`with illustrative color coding, corresponding components of the Chu and Choi
`
`2010 supply modulators to further illustrate where the boost converter should be
`
`incorporated to boost Chu’s supply voltage Vbattery. (Petition, 64-66; Ex. 1003,
`
`¶¶120-124.)
`
`C.
`
`26.
`
`Patent Owner Is Wrong That Petition Fails To Demonstrate a
`Motivation to Combine Chu and Choi 2010 with Myers
`If the Board rejects Patent Owner’s “selective-boost” claim
`
`construction, then claim 13 would be invalid based on the combination of Chu and
`
`Choi 2010 alone. In that case, the Board does not need to examine Patent Owner’s
`
`argument about the alleged lack of motivation to combine Chu, Choi 2010, and
`
`Myers. However, even if the Board accepts Patent Owner’s mistaken construction,
`
`16
`
`

`

`claim 13 would still be invalid based upon the combination of Chu, Choi 2010, and
`
`Myers.
`
` Patent Owner Is Wrong That Choi 2010 Teaches Away From
`“Selective Boost”
`27. The Patent Owner argues that “a POSA would not have combined
`
`Myers with Petitioner’s hypothetical Chu/Choi 2010 combination because Choi
`
`2010 teaches away from the use of a selective boost voltage.” (POR, 32.) I have
`
`been informed and understand that Patent Owner has failed to satisfy the legal
`
`requirement for “teaching away.” Moreover, the admitted prior art evidence from
`
`the ’558 patent itself corroborates that there was no teaching away and, to the
`
`contrary, was substantial motive to modify Choi 2010 to implement “selective
`
`boost.”
`
`28. First, Patent Owner is wrong to contend Choi 2010 teaches away.
`
`Specifically, Patent Owner argues “boost is not merely a general preference [in
`
`Choi 2010]; Choi 2010 discloses no other manner to achieve its objective of
`
`minimizing the degradation of output power.” This assertion is incorrect, because
`
`Choi 2010 in fact teaches using the boosted voltage to “achiev[e] the robust
`
`operation against the battery depletion.” Ex. 1006, 1076. Choi 2010 thus does not
`
`teach away from “selective boost” because a POSA would have understood that a
`
`battery supply could have been used to selectively supply voltage when the battery
`
`has not depleted and a boosted supply when it has.
`
`17
`
`

`

`29. Second, I have been informed and understand that in order for a
`
`reference to teach away, “a person of ordinary skill, upon reading the reference,
`
`[must] be discouraged from following the path set out in the reference, or [must]
`
`be led in a direction divergent from the path that was taken” in the claim. A
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`reference that “merely expresses a general preference for an alternative invention
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`but does not criticize, discredit, or otherwise discourage investigation into” the
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`claimed invention does not teach away. Patent Owner has failed to demonstrate
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`any such criticism, discrediting, or discouragement in Choi 2010. Rather, Choi
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`2010 merely teaches that one way to minimize the impact of a degrading battery
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`voltage is to boost that voltage. Choi 2010 expresses, in other words, a preference.
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`Nothing about that teaching discredits or discourages improving the efficiency of
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`Choi 2010’s boosting by using the boosted voltage only when needed – for
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`example, only when the power requirements of the transmission cannot be satisfied
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`by the battery supply. Indeed, as Dr. Kelley admits, this modest modification
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`would result in power savings, and that a circuit designer would have been more
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`than able to implement such a selectable voltage supply. (Ex. 1028, 152:21-153:4
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`“Q. Do you agree that a person of ordinary skill would have known how to select
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`between two power sources? A. There are many ways to do that. And so in a
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`very broad question like that I think somebody might.”).)
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`18
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`30. Third, Patent Owner’s argument that a POSA would not have been
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`motivated to operate Choi 2010’s supply modulator selectively by choosing
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`between a boosted voltage (i.e., a higher voltage) and a non-boosted voltage (i.e., a
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`lower voltage) contradicts the teachings of the ’558 patent. In connection with the
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`prior art Figure 2A, the ’558 patent explains it would be wasteful to operate an
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`amplifier with the maximum supply voltage at all times. (See, Ex. 1001, 4:7-9
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`(“The difference between the battery voltage and the envelope of the RFout signal
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`represents wasted power that is dissipated by power amplifier 210 instead of
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`delivered to an output load.”); Ex. 1028, 173:17-175:2. Choi 2010 similarly
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`discloses that “[t]he supply voltage of the linear amplifier is boosted to 5V, and it
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`enables the RF PA operating with the maximum 4.5V supply voltage.” (Ex. 1006,
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`1077.) A POSA would thus have known that operating Choi 2010’s amplifier with
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`the boosted voltage at all times needlessly wastes power, as this evidence
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`corroborates.
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`31. Accordingly, a POSA would have been motivated to reduce this
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`waste. For example, Figure 2B of the ’558 patent shows the prior art technique
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`Average Power Tracking (“APT”). Ex. 1028, 175:3-10. Plot 270 in Figure 2B
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`shows reducing wasted power by selecting between different voltage supplies for
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`an amplifier. Specifically, Figure 2B, as reproduced below, shows switching
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`19
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`between a first (lower) supply voltage highlighted blue to a second (boosted)
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`supply voltage highlighted red:
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`
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`Ex. 1001, Fig. 2B
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`Ex. 1001, Fig. 2B
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`As the Patent Owner concedes, selecting between the different voltage supplies in
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`this way was a known technique to “reduce wasted power.” Ex. 1001, 4:18; Ex.
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`1028; Ex. 1028, 173:17-175:2; 175:3-10. A POSA reading Choi 2010 would have
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`been aware of such techniques (e.g., APT), and would thus have been motivated to
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`modify Chu’s supply modulator as described above in order to take advantage of
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`such known, standard strategies.
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` A POSA Would Have Modified Chu and Choi 2010 To Apply
`Myers’ Power Selection Functionality
`32. The Patent Owner argues that “[b]efore the disclosure of the ’558
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`Patent, a POSA [would] either maximize efficiency at the cost of output power
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`degradation (like in Chu), or minimize the output power degradation at the cost of
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`20
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`reducing efficiency (like in Choi 2010). The prior art did not suggest any way to
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`achieve both of these benefits.” POR, 38.
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`33. The Patent Owner is wrong. Myers is a prior art patent that issued
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`twelve years before the ’558 patent was filed. Myers proposes one solution for
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`achieving both benefits. Specifically, Myers teaches that choosing the power
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`source based on the amplitude of the input signal “allows an amplifier to be
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`operated in a more efficient range,” and suggests that high efficiency is important
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`to battery life. Ex. 1012, 9:18-21. See also, id., 1:19-23 (“High dynamic range
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`allows the communications devices to communicate more reliably over a variety of
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`distances, and high efficiency allows the devices to operate longer on a single
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`battery.”).
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`34. The Patent Owner argues that “Myers’ disclosure offers no teaching
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`or suggestion for how to reconcile the competing objectives of Chu and Choi 2010,
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`and Petitioner does not rely on Myers to do so.” (POR, 38.) Patent Owner is again
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`wrong. As the Petition described, “Myers also discloses that the second power
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`supply Vdd2 is larger than Vdd1, and that (like the apparatus in the ’558 patent)
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`the second power source will be used only when needed and the first power source
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`will be used the rest of the time.” Petition, 76-77. Accordingly, Myers reconciles
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`Choi 2010’s objective of minimizing the output power degradation by selecting the
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`larger power source only when required by the characteristics of the transmitted
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`21
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`signal, and Chu’s objective for efficiency by selecting the lower power source the
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`rest of the time. In fact, Dr. Kelley admitted that Myers discloses switching
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`between a larger power source and a lower power source:
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`Q. There's discussion at about line 37, "When the amplitude of the
`envelope signal is below Vref, multi‐range modul