Trials@uspto.gov
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` Entered: January 16, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`QUALCOMM, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01153
`Patent 8,698,558 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, DANIEL N. FISHMAN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`
`571-272-7822
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` Paper 9
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`
`
` Entered: January 16, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`QUALCOMM, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01153
`Patent 8,698,558 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, DANIEL N. FISHMAN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2018-01153
`Patent 8,698,558 B2
`
`INTRODUCTION
`I.
`Intel Corporation (“Petitioner”) requests inter partes review of claims
`1–9 of U.S. Patent No. 8,698,558 B2 (“the ’558 patent,” Ex. 1101) pursuant
`to 35 U.S.C. §§ 311 et seq. Paper 3 (“Petition” or “Pet.”). Qualcomm
`Incorporated (“Patent Owner”) filed a Preliminary Response. Paper 8
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`Upon consideration of the Petition and Patent Owner’s Preliminary
`Response, we conclude the information presented shows there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of claims 1–9 of the ’558 patent.
`
`A. Related Proceedings
`Apple Inc. is identified as an additional real party-in-interest. Pet. 2.
`The parties inform us that the ’558 patent is presently asserted against
`Petitioner in the litigation Qualcomm Inc. v. Apple Inc., Case No. 3:17-cv-
`01375-DMS-MDD (S.D. Cal.) and against Apple in a proceeding before the
`International Trade Commission (“ITC”) captioned In the Matter of Certain
`Mobile Elec. Devices and Radio Frequency Components Thereof, Inv. No.
`337-TA-1065. Pet. 2; Paper 6, 2. The parties also inform us that additional
`claims of the ’558 patent are at issue in related inter partes reviews,
`specifically claims 12–14 of the ’558 patent in IPR2018-01152, claims 15–
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`20 of the ’558 patent in IPR2018-01554, and claims 10 and 11 in IPR2019-
`01240. Pet. 2; Paper 6, 2.
`
`B. The ʼ558 Patent
`The ’558 patent is titled, “Low-Voltage Power-Efficient Envelope
`Tracker” and discloses “[t]echniques for efficiently generating a power
`supply for a power amplifier” used in communication system transmitters.
`Ex. 1101, 1:30–31, [54]. The ’558 patent discloses that
`transmitter typically includes a power amplifier (PA) to provide
`high transmit power for the output RF signal. The power
`amplifier should be able to provide high output power and have
`high power-added efficiency (PAE). Furthermore, the power
`amplifier may be required to have good performance and high
`PAE even with a low battery voltage.
`Id. at 1:21–26. The ’558 patent also discloses that the power amplifier
`apparatus may include: (1) in one embodiment an envelope amplifier and a
`boost converter; (2) in a second embodiment a switcher, an envelope
`amplifier, and a power amplifier; or (3) in a third embodiment a switcher
`that may sense an input current and generate a switching signal to charge
`and discharge an inductor providing a supply current. Id. at 1:31–34; 1:51–
`52; 1:66–2:2.
`Figure 3, below, shows an exemplary switcher and envelope
`amplifier. Id. at 4:39–42.
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`Figure 3 shows switcher 160a and envelope amplifier 170a, which, in turn,
`includes operational amplifier (op-amp) 310 that receives the envelope
`signal. Id. at 4:41–63. Driver 312 has output (R1) coupled to the gate of P-
`channel metal oxide semiconductor (PMOS) transistor 314 and a second
`output (R2) coupled N-channel MOS (NMOS) transistor 316. Id. PMOS
`transistor 318 in envelope amplifier 170a is connected to receive C1 control
`signal via Vboost voltage from Boost Converter 180. Id. PMOS transistor
`320 in envelope amplifier 170 receives a C2 control signal and Vbat voltage.
`Id.
`Within switcher 160a, current sense amplifier 330 has its input
`
`coupled to current sensor 164 and its output coupled to an input of switcher
`driver 332. Id. at 4:64–66. Vbat voltage of switcher 160a provides current
`to power amplifier 130 via inductor 162 when the switcher is ON, and
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`inductor 120 provides stored energy to power amplifier 130 during the OFF
`state of the switcher circuit. In the ON state, the switcher is joined with the
`current from the envelope amplifier 170a (Ienv) to provide a combined
`current (Ipa) to PA 130. See Id. at 3:21–27.
`The ’558 patent also discloses another embodiment for switcher
`circuit of Figure 3—specifically a switcher that uses offset current to lower
`the Isen current from the current sensor, keeping the switcher in the ON
`state for a longer time and producing a larger Iind current provided to power
`amplifier 130. Id. at 1:5–48, Figure 5.
`
`C. Illustrative Claims
`Claims 1, 6, and 8 are independent. Claim 1 is illustrative and
`reproduced below (Ex. 1101, 10:58–11:18).
`1. An apparatus comprising:
`a boost converter operative to receive a first supply voltage
`and generate a boosted supply voltage having a higher voltage
`than the first supply voltage; and
`an envelope amplifier operative to receive an envelope
`signal and the boosted supply voltage and generate a second
`supply voltage based on the envelope signal and the boosted
`supply voltage, wherein the envelope amplifier is operative to
`further receive the first supply voltage and generate the second
`supply voltage based on the first supply voltage and generate the
`second supply voltage based on the first supply voltage or the
`boosted supply voltage, and further wherein the envelope
`amplifier comprises
`an operational amplifier (op-amp) operative to receive the
`envelope signal and provide an amplified signal,
`a driver operative to receive the amplified signal and
`provide a first control signal and a second control signal,
`
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`a P-channel metal oxide semiconductor (PMOS) transistor
`having a gate receiving the first control signal, a source receiving
`the boosted supply voltage or the first supply voltage, and a drain
`providing the second supply voltage, and
`an N-channel metal oxide semiconductor (NMOS)
`transistor having a gate receiving the second control signal, a
`drain providing the second supply voltage, and a source coupled
`to circuit ground.
`D. Asserted Grounds of Unpatentability
`The information presented in the Petition sets forth proposed grounds
`of unpatentability for the challenged claims of the ’558 patent as follows
`(Pet. 39–40):
`
`Basis
`References
`35 U.S.C. § 103
`Chu1 and Choi 20102
`Chu, Choi 2010, and Myers3 35 U.S.C. § 103
`
`Claims Challenged
`6 and 8
`1–5, 7, and 9
`
`
`Petitioner also relies on the Declaration of Dr. Alyssa Apsel (Ex. 1103) in
`support of the Petition.
`
`
`1 Wing-Yee Chu, et al., A 10 MHz Bandwidth, 2 mV Ripple PA Regulator for
`CDMA Transmitters, IEEE JOURNAL OF SOLID-STATE CIRCUITS 2809–2819
`(2008) (Ex. 1104, “Chu”).
`2 Jinsung Choi, et al., Envelope Tracking Power Amplifier Robust to
`Battery Depletion,” Microwave Symposium Digest (MTT), 2010
`IEEE MTT-S INTERNATIONAL 1074–1077 (2010) (Ex. 1107, “Choi 2010”).
`3 Myers, et al., U.S. Patent No. 5,929,702 (Ex. 1112, “Myers”).
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`II. ANALYSIS
`A. Claim Interpretation
`This inter partes review is based on a petition filed before November
`13, 2018, and we construe the claims challenged in such a petition by
`applying the broadest reasonable interpretation in light of the specification.
`37 C.F.R. § 42.100(b) (2016); see Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner acknowledges the broadest reasonable interpretation
`requirement but argues that “this [instant] Petition does not depend on
`whether the claims are analyzed under the broadest reasonable interpretation
`standard or the standard established by Phillips . . . .” Pet. 36. Accordingly,
`Petitioner asserts that their proposed claim construction “is narrower than
`the correct claim construction under Phillips.” Id. Petitioner concludes that
`“[t]he challenged claims are invalid under [their] construction and also
`would be invalid under any broader construction based on the broadest
`reasonable interpretation standard.” Id.
`Patent Owner does not address Petitioner’s proposed claim
`construction, which we adopt below from Patent Owner’s proposed and
`adopted construction in the ITC litigation. See Prelim. Resp. 1–6.
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`On the record before us, the ’558 patent is not expired, the Petition
`was filed prior to the change of our rules regarding claim construction, and
`neither party requested that the Phillips standard be applied.4 Thus, we
`apply the broadest reasonable interpretation to the terms discussed below.
`1. “envelope signal” (claims 1 and 6–8)
`Petitioner offers a claim construction for “envelope signal” recited in
`claims 1 and 6–8, proposing that it means a “signal indicative of the upper
`bound of the output RF signal,” which is the construction proposed by
`Patent Owner and adopted in the ITC litigation. Pet. 36; Ex. 1123, 13–14.
`Although Petitioner argues this construction is narrower than the alternative
`offered in the ITC litigation, Petitioner does not offer a broader construction.
`Id.
`
`Based on the record before us and for purposes of this Institution
`Decision, we adopt the ITC litigation construction for “envelope signal” as a
`“signal indicative of the upper bound of the output RF signal.”
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`
`
`4 The applicable version of 37 C.F.R. § 42.100(b) requires that a request to
`apply the Phillips standard “must be made in the form of a motion under
`§ 42.20, within 30 days from the filing of the petition.”
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`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations.5 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`The Supreme Court has made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`Id. at 417. Reaching this conclusion, however, requires more than a mere
`showing that the prior art includes separate references covering each
`separate limitation in a claim under examination. Unigene Labs., Inc. v.
`Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
`requires the additional showing that a person of ordinary skill at the time of
`the invention would have selected and combined those prior art elements in
`the normal course of research and development to yield the claimed
`invention. Id.
`
`C. Level of Ordinary Skill in the Art
`Petitioner argues a person of ordinary skill in the art related to the
`’558 patent at the time of filing, would have a Master’s degree in electrical
`engineering, computer engineering, or computer science, and would also
`
`
`5 Patent Owner does not present arguments or evidence of such secondary
`considerations in its Preliminary Response. Therefore, at this preliminary
`stage, we do not consider secondary considerations as part of our analysis.
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`have at least two years of relevant experience, or a Bachelor’s degree in one
`of those fields and four years of relevant experience, where relevant
`experience is “refers to experience with mobile device architecture as well as
`transmission and power circuitry for radio frequency devices.” Pet. 37
`(citing Ex. 1101, Abstract, 1:7–9, 30–31; Ex. 1103 ¶¶ 81–82).
`Patent Owner does not contest Petitioner’s level of skill. On the
`record before us and for purposes of this Decision, we are persuaded by
`Petitioner’s definition of the level of ordinary skill in the art and we find this
`definition is commensurate with the level of ordinary skill in the art as
`reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in
`the art does not give rise to reversible error where the prior art itself reflects
`an appropriate level and a need for testimony is not shown.”) (internal
`quotation marks omitted); see also In re GPAC Inc., 57 F.3d 1573, 1579
`(Fed. Cir. 1995). Here, as Petitioner has asserted, we discern the prior art, as
`well as the ’558 patent, require a degree of knowledge that is specific to
`mobile device architecture as well as transmission and power circuitry for
`radio frequency devices. See Pet. 37; Ex. 1101, Abstract, 1:7–9, 30–31.
`
`D. Section 325(d) Discretion
`Patent Owner contends that institution should be denied under 35
`U.S.C. § 325(d). Prelim. Resp. 15–23 (citing Becton, Dickinson & Co. v. B.
`Braun Melsungen AG, IPR2017-01586, slip op. at 17–18 (PTAB Dec. 15,
`2017) (Paper 8) (informative)). Patent Owner asserts that when the Becton,
`Dickinson factors are considered the balance favors denying institution
`under section 325(d). Prelim. Resp. 22–23. Specifically, Patent Owner
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`contends that the Chu in combination with Choi 2010, which is asserted in
`each of the grounds, but addressed with respect to ground 1, is cumulative of
`Kim (Ex. 1113), which the Examiner considered in allowing claims 6 and 8
`of the ’558 patent. Id. at 15–17. Patent Owner’s argument asserts the
`similarities between Kim and Chu and Choi 2010 disclose “nearly identical
`linear to the envelope tracking amplifier disclosed in the Kim reference (Ex.
`1113).” Id. at 15; see id. at 15–17.
`Our institution of inter partes review is discretionary. See Harmonic
`Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is
`permitted, but never compelled, to institute an IPR proceeding”). Section
`325(d) states that “[i]n determining whether to institute . . . the Director may
`take into account whether . . . the same or substantially the same prior art or
`arguments previously were presented to the Office.” In evaluating whether
`to exercise our discretion under Section 325(d), we consider several
`nonexclusive factors (known as the Becton, Dickinson factors):
`(1) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`(2) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(3) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`(4) the extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the
`prior art or Patent Owner distinguishes the prior art;
`(5) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art; and
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`(6) the extent to which additional evidence and facts presented in
`the Petition warrant reconsideration of the prior art or arguments.
`See Becton, Dickinson, Case IPR2017-01586, slip op. at 17–18 (Paper 8).
`We have analyzed the foregoing factors, in view of the record in this
`case, and determined that the factors weigh against exercising our discretion
`under § 325(d) to deny institution.
`For factors 1–4, we disagree with Patent Owner’s argument that the
`similarities between Kim and Chu means that factors 1–4 weigh strongly in
`favor of exercising our discretion. Prelim. Resp. 22–23. First, we note that
`Petitioner has presented persuasive argument and evidence that the power
`supply elements Petitioner identifies as common between Chu and Choi
`2010 and Kim were well known in the art at the time of the ’558 patent. See
`Pet. 7–15 (discussing hybrid power supply elements). Based on present
`record, we are not persuaded that the similarity between the functional
`components of Kim and the Chu-Choi 2010 combination, such as a linear
`amplifier or switching amplifier, indicates that Chu and Choi 2010 were
`considered by the Examiner’s consideration of Kim. See Prelim. Resp. 17,
`20–21 (comparing functional block in Figures).
`Furthermore, under Becton, Dickinson factor 4, Patent Owner’s
`discussion of functional components has not shown that Patent Owner’s
`arguments with respect to Chu and Choi 2010 are similar to arguments
`advanced during prosecution. Patent Owner’s arguments address the
`components and functional elements of the figures of Kim and Chu and Choi
`2010, but does not compare or contrast the Examiner’s arguments regarding
`Kim with the Petitioner’s arguments regarding Chu and Choi 2101.
`Accordingly, under Becton, Dickinson factors 1–4, we do not believe Patent
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`Owner’s arguments and evidence regarding the similarities between Kim
`and Chu and Choi 2010 weigh in favor of exercising our discretion.
`For Becton, Dickinson factor 5, we find that Petitioner’s arguments
`address the limitations that the Examiner found were not disclosed in Kim
`(Pet. 28–29 (citing Ex. 1103 ¶¶ 69, 70)), and address these limitations in the
`consideration of the challenged claims (Pet. 52–56).
`Finally, we find that that Becton, Dickinson factor 6 weighs in favor
`of not exercising our discretion. Petitioner presents additional argument and
`testimony in support of its contentions regarding the disclosures of Chu and
`Choi 2010 to a person of ordinary skill in the art that warrant consideration,
`especially in light of the grounds which rely on Chu in combination with
`other references. See, e.g, Pet. at 40–56. Thus, Becton, Dickinson factors 5
`and 6 do not weigh in favor of exercising our discretion.
`In light of the foregoing, we decline to exercise our discretion under
`35 U.S.C. § 325(d) to deny this Petition.
`
`E. Section 314(a) Discretion
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a) (authorizing institution of an inter partes review under particular
`circumstances, but not requiring institution under any circumstances);
`Harmonic, 815 F.3d at 1367.
`1. Parallel ITC Litigation
`Patent Owner argues we should exercise our discretion under Section
`314(a) to deny this Petition in view of the parallel proceedings in the ITC.
`Prelim. Resp. 23–28. More specifically, Patent Owner argues the ITC
`proceeding addresses the same combination (Chu, Choi 2010, and Myers) as
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`applied to the ’558 patent. Prelim. Resp. 24–25. Patent Owner further
`argues that “by filing the Petition so late, Petitioner and Apple seek to re-
`litigate an issue that has already been fully litigated in a different forum and
`will be decided in two different forums well before the Board can reach a
`final written decision.” Id. at 27. Patent Owner identifies three prior
`decisions of the Board as allegedly supporting its position urging
`discretionary denial of this Petition. Id. at 23, 25–27 (citing NetApp, Inc. v.
`Realtime Data LLC, Case IPR2017-01195 (PTAB Oct. 12, 2017) (Paper 9)
`(“NetApp”); Nautilus Hyosung, Inc. v. Diebold, Inc., Case IPR2017-00426
`(PTAB June 22, 2017) (Paper 17) (“Nautilus”); and NHK Spring Co. v.
`Intri-Plex Tech., Inc., Case IPR2018-00752 (PTAB Sept. 12, 2018) (Paper
`8) (“NHK”)).
`We are not persuaded by Patent Owner’s arguments that we should
`exercise our discretion to deny. We find the cases Petitioner cites to be
`distinguishable. For example, in NetApp and Nautilus, the discretionary
`exercise to deny institution was based primarily on the filing of an earlier
`petition before the Board (by the same or a related party). See Nautilus,
`Paper 17, at 12–16; NetApp, Paper 9, at 10–13. Here, Petitioner has not filed
`an earlier petition directed to claim 31.6 NHK addresses a fact pattern more
`similar to the facts here. However, NHK is distinguishable in that the patent
`at issue had expired and, thus, the panel there applied the same claim
`construction standard as the court in the parallel District Court litigation—
`i.e., the Phillips standard. NHK, Paper 9, at 6–. Here, as discussed above,
`
`6 We address below the fact that Petitioner has filed other petitions directed
`to other claims of the ’558 patent—filed substantially concurrently with this
`Petition.
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`we apply the broadest reasonable interpretation (BRI) standard for claim
`construction. Indeed, Patent Owner has not disputed the Petitioner’s
`proposed constructions nor addressed the claim construction standard in this
`case.
`
`Finally, the Board’s decision whether to exercise discretion to deny
`institution under § 314(a) is “part of a balanced assessment of all relevant
`circumstances in the case, including the merits.” See Office Patent Trial
`Practice Guide Update7 referenced at 83 Fed. Reg. 39,989 (Aug. 13, 2018) at
`10–11. Here, as discussed below, we have considered the merits of
`Petitioner’s contentions regarding the combination of Chu, Choi 2010, and
`Myer, and determine Petitioner met its burden to show a reasonable
`likelihood that Chu, Choi 2010, and Myer teach the limitations of the
`challenged claims. In contrast, the ALJ’s initial determination that “[i]t has
`not been shown by clear and convincing evidence that [claim 7 of the ’558
`patent] is invalid” (see Ex. 2001, 2), is not only based on a higher burden of
`proof than here, but is now being reviewed by the Commission and may be
`overturned in a final decision.8 See Ex. 3001 (Commission Review of Initial
`Determination in Inv. No. 337-TA-1065). In sum, we are not persuaded that
`the parallel litigation in the ITC will necessarily address the same issues,
`
`7 Available at https://go.usa.gov/xU7GP.
`8 We also note that only claim 7 of the ’558 patent remains challenged at the
`ITC. See Ex. 3001, 2. Thus, the ITC will not dispose of all the issues in the
`related IPRs, which are directed to separate claims of the ’558 patent. The
`evidence and argument is closely related across all proceedings. To grant
`Petitioner a first chance at challenging these claims, the panel would
`nonetheless need to perform nearly the same analysis in related proceedings,
`regardless of whether it exercised discretion to deny institution in this
`proceeding.
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`based on the same claim constructions, same standards of proof, and same
`evidence, and at least the ITC determination is under review. Therefore, we
`decline to exercise our discretion under 35 U.S.C. § 314(a) to deny this
`Petition.
`
`2. Four Petitions
`Patent Owner argues we should exercise our discretion to deny this
`Petition under 35 U.S.C. § 314(a) because the filing of four petitions against
`the same patent is abusive and unnecessary duplication of proceedings.
`Prelim. Resp. 28–30. Specifically, Patent Owner argues that dividing the
`challenges into four Petitions which normally fit into one or two petitions is
`not in the interest of “efficient administration of the Office” nor promotes
`“the ability of the Office to timely complete proceedings.” Id. at 29 (see,
`infra Section I.A. noting related petitions). Patent Owner also asserts that,
`“Petitioner has divided its challenges to the ’558 Patent claims that would
`normally fit into one or two petitions, hoping to increase its odds of
`institution.” Id. at 28–29. Petitioner did not address this issue.
`Although, in view of SAS,9 the Board exercises its discretion for each
`petition to institute all claims and grounds or no claims and grounds, Patent
`Owner’s assertion that splitting its claims and grounds into four petitions
`when one would suffice is inapposite. This practice is not necessarily
`improper (see Rules of Practice for Trials Before the Patent Trial and
`Appeal Board and Judicial Review of Patent Trial and Appeal Board
`Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,635 (Aug. 14, 2012)
`
`9 The Supreme Court held that a decision to institute under 35 U.S.C. § 314
`may not institute on less than all claims challenged in the petition. SAS Inst.,
`Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“SAS”).
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`(response to Comment 91, explaining that filing multiple petitions is an
`alternative to requesting a waiver of page, now word, counts)). For
`example, there may be appropriate reasons for Petitioner to divide the claims
`and grounds into multiple petitions, such as to logically separate different
`claim sets for purposes of analysis and to avoid subjecting all claims to the
`all or nothing decision required by SAS. The SAS decision does not preclude
`this practice.
`In the present case, the four petitions are all filed on the same day.10
`Each of the four petitions challenge non-overlapping subsets of the claims of
`the ’558 patent, largely asserting different combinations of prior art. On this
`record, we discern no prejudice to Patent Owner in Petitioner’s filing
`strategy regarding the four petitions directed to the ’558 patent. Petitioner
`did not wait to review Patent Owner’s Preliminary Response or our
`institution decision in one case before filing a next petition.
`When determining whether to exercise our discretion under § 314(a),
`we consider the following non-exhaustive factors:
`1. whether the same petitioner previously filed a petition directed
`to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`
`10 Each of these four petitions was filed on the same day: June 28, 2018.
`See Paper 5, 1 (IPR2018-01152); Paper 54, 1 (IPR2018-01153); Papers 7, 1
`(IPR2018-01240)); Papers 7, 1 (IPR2018-01154).
`17
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`IPR2018-01153
`Patent 8,698,558 B2
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed to
`the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357,
`Paper 19 at 15–16 (PTAB Sept. 6, 2017) (precedential).11 These factors do
`not lead us to exercise our discretion to deny institution based on § 314(a).
`Based on the timing of the filing of the four petitions and their non-
`overlapping challenges to the claims of the ’558 patent, factors 1 through 5
`above do not weigh in favor of exercising discretion to deny under
`§ 314(a).12 As to factor 6, we do not find that evaluating Petitioners’
`grounds across four petitions wastes Board resources. Indeed, the asserted
`grounds across the four petitions are similar and address distinct sets of
`claims that will allow the Board to efficiently evaluate the four petitions and
`
`
`11 Citing NVIDIA Corp. v. Samsung Elecs. Co., Case IPR2016-00134, Paper
`9 at 6–7 (PTAB May 4, 2016)).
`12 We are also cognizant of the estoppel provision of 35 U.S.C. § 315(e),
`which estops a petitioner from asserting in a civil action that a “claim is
`invalid on any ground that the petitioner raised or reasonably could have
`raised during that inter partes review.” 35 U.S.C. § 315(e)(2). This
`requirement requires a petitioner to decide the breadth of the challenge to
`bring given the risk of estoppel. Accordingly, the statute contemplates that a
`petitioner may decide that the appropriate breadth of a challenge warrants
`multiple petitions.
`
`18
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`IPR2018-01153
`Patent 8,698,558 B2
`potentially consolidate them if warranted. Finally with regard to factor 7,
`we do not find that the Board’s resources will be tasked to the degree that
`final written decisions in these proceedings will not be timely completed.
`For these reasons, we do not exercise our discretion under § 314(a) to
`not institute trial.
`
`F. Obviousness by Chu (Ex. 1104) and Choi 2010 (Ex. 1107)
`1. Overview of Chu
`Chu is a 2008 paper titled, “A 10 MHz Bandwidth, 2 mV Ripple PA
`Regulator for CDMA Transmitters” that discloses a power amplifier that
`contains a master-slave linear and switch-mode supply modulator with fast
`dynamic transient response. Ex. 1104, 2809. Chu discloses “[a] combined
`class-AB [linear amplifier] and switch-mode regulator based supply
`modulator with a master–slave architecture achieving wide bandwidth and
`low ripple.” Id. Figure 4 of Chu, below, shows the block diagram of the
`master-slave linear and switch-mode combined supply modulator loaded
`with a PA. Id. at 2811.
`
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`19
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`IPR2018-01153
`Patent 8,698,558 B2
`
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`Figure 4 depicts the proposed master-slave linear and
`switch-mode PA regulator block diagram
`Figure 4 shows a current sensing circuit, high gain transimpedance
`amplifier, and switch-mode regulator that form a feedback control loop that
`suppresses the current output from the linear amplifier within the switch-
`mode regulator bandwidth. Id. at 2811.
`2. Overview of Choi 2010 (Ex. 1107)
`Choi 2010 is a paper titled “Envelope Tracking Power Amplifier
`Robust to Battery Depletion” that describes “[a] wideband envelope tracking
`power amplifier” with an integrated boost converter to keep a stable
`operation of the power amp supply modulator. Ex. 1107, 1333
`3. Analysis
`Petitioner argues that claims 6 and 8 would have been obvious over
`Chu and Choi 2010 is anticipated by Chu. Pet. 38–62 (citing Ex. 1103
`¶¶ 83–116). Patent Owner does not make any substantive arguments that
`Chu does not disclose the limitations of claims 6 and 8.
`
`
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`20
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`IPR2018-01153
`Patent 8,698,558 B2
`Petitioner provides argument and evidence that Chu discloses the
`power amplifier and Chu in combination with Choi 2010 discloses the
`supply generator limitation of claim 6. Pet. 38–44. Petitioner argues that
`“[i]t would have been obvious to modify Chu to incorporate the boost
`converter of Choi 2010,” arguing that they each disclose hybrid supply
`modulators for a PA, and C
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