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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`Intel Corporation
`Petitioner
`
`v.
`
`Qualcomm Incorporated
`Patent Owner
`______________________
`
`Case IPR2018-01153
`Patent 8,698,558
`______________________
`
`PRELIMINARY PATENT OWNER RESPONSE TO PETITION FOR
`INTER PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`V.
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`
`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 1
`I.
`II. THE ’558 PATENT AND ITS PROSECUTION HISTORY .................... 1
`A. Overview of the ’558 Patent ............................................................... 1
`B.
`Prosecution History of the ’558 Patent .............................................. 6
`III. PARALLEL PROCEEDINGS INVOLVING THE ’558 PATENT ......... 7
`IV. OVERVIEW OF THE CITED REFERENCES ......................................... 8
`A. Overview of Chu .................................................................................. 8
`B. Overview of Choi 2010 ...................................................................... 10
`C. Overview of Myers ............................................................................ 12
`THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER
`35 U.S.C. §§ 314(a) AND 325(d) TO DENY INSTITUTION .................. 15
`A. Ground I of the Petition Should Be Denied Because it is
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`Cumulative of Prior Art Applied by the Patent Office During
`
`Prosecution ......................................................................................... 15
`B. Ground II of the Petition Should Be Denied Institution in View of
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`the Parallel ITC Proceeding ............................................................. 23
`C.
`Filing Four Separate Petitions Against the Same Patent is an
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`Unnecessary and Abusive Duplication of Proceedings .................. 28
`VI. PETITIONER HAS FAILED TO DEMONSTRATE A MOTIVATION
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`TO COMBINE MYERS WITH CHU OR CHOI 2010 ........................... 31
`VII. CONCLUSION ............................................................................................ 36
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`
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`I.
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`INTRODUCTION
`Consideration of the two obviousness grounds proposed by the Petitioner
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`would require the Board to address, and effectively overturn, the decisions of the
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`ITC and the Patent Office. In its first proposed ground, the Petitioner asks the
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`PTAB to revisit the decision of the Patent Office by proposing a prior art
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`combination that is nearly identical to the primary reference applied during
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`prosecution. And the second proposed ground asserts a combination of references
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`that has already been considered and found insufficient by the ITC. The Petitioner,
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`having the burden of proof, has not even attempted to demonstrate why the PTAB
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`should reconsider the cumulative art submitted in Ground I, or second guess the
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`conclusions of the ITC in Ground II. The Board should therefore exercise its
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`discretion to deny institution.
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`II. THE ’558 PATENT AND ITS PROSECUTION HISTORY
`A. Overview of the ’558 Patent
`U.S. Patent No. 8,698,558 (“the ’558 Patent”) describes and claims
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`inventions directed to managing the power associated with transmitting radio
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`frequency (“RF”) signals from a mobile device. Ex. 1101, 1:5-31. The ’558
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`Patent teaches improvements over known power management schemes by
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`employing a novel form of “envelope tracking.” Id., Title, 3:57-60. The ’558
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`1
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`
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`Patent’s power management scheme achieves substantial power savings in mobile
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`device transmitters thereby extending a devices’ battery life. Id. at 3:46-48.
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`In wireless communication systems, mobile devices communicate by
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`transmitting encoded data signals. Ex. 1101, 1:11-17. Before transmitting through
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`a communications channel, such encoded data signals are first conditioned to
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`generate RF output signals. Id. Such conditioning typically includes an
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`amplification step performed by a power amplifier (a “PA”) that provides a high
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`transmit power. Id. at 1:21-26. A desirable characteristic of mobile device power
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`amplifiers is an ability to provide high transmit power with high power-added
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`efficiency (“PAE”) and good performance even when the device’s battery is low.
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`Id.
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`Prior to the priority date of the ’558 Patent, typical PAs in a mobile device
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`were supplied with a constant power supply voltage, regardless of the PA’s output
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`power. The ’558 Patent illustrates this in Fig. 2A, below with annotation:
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`2
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`Fig. 2A illustrates using a battery voltage (Vbat) to supply PA 210, which
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`provides an RFout signal as an amplified version of RFin. Ex. 1101, 4:1-3. RFout
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`has a time-varying envelope illustrated by plot 250, which is juxtaposed with
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`voltage Vbat 260. Vbat remains higher than the largest amplitude of RFout’s
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`envelop in order to prevent clipping of RFout by PA 210. Id. at 4:2-7. A
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`drawback to this scheme is that the difference between the battery voltage and the
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`envelop of the RFout signal (shaded red) represents wasted power. Id. at 4:7-9.
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`As wasted power is undesirable, especially where power is limited by
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`battery life, the ’558 Patent employs “envelope tracking” in order to better manage
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`power consumption by using only an amount of power that is needed for a
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`particular signal. A PA employing envelope tracking is illustrated in Fig. 2C, with
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`annotations, below:
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`By employing envelope tracking to produce a PA power supply Vpa, represented
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`in plot 280, the “supply voltage closely tracks the envelope [250] of the RFout
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`signal over time.” Ex. 1101, 4:21-27. This maximizes PA efficiency by
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`3
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`minimizing the difference between Vpa and RFout over time, which results in less
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`wasted power. Id. at 4:27-32.
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`Implementing a PA supply with envelope tracking in a mobile device poses
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`unique challenges, because operating a mobile device with a low battery voltage is
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`often desirable (e.g. to reduce power consumption, extend battery life, etc.). Ex.
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`1101, 3:46-56. At times a PA may need to operate with a higher voltage than a
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`battery is providing, in which case a boost converter may be employed at the
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`expense of increased cost and power consumption. Id.
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`To address these issues, the ’558 Patent discloses an efficient design for
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`envelope tracking that employs a “switcher” and an “envelope amplifier” together
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`with a boost converter, as illustrated in Fig. 3, with annotations below:
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`4
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`Fig. 3 illustrates an exemplary switcher 160a with envelope amplifier 170a
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`operating cooperatively to create a supply current Ipa as the sum of Iind from the
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`switcher and Ienv from the envelop amplifier. Ex. 1101, 4:34-38.
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`A switcher, e.g. 160a, “has high efficiency” and may deliver “a majority of
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`the supply current for [PA] 130” in current Iind, which contains DC and low
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`frequency components. Id. at 3:14-17; 6:19-20. An envelope amplifier, e.g. 170a,
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`on the other hand operates as a linear stage and has high bandwidth. Id. at 6:20-22.
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`In the combination the switcher reduces the output current of the envelop amplifier
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`thereby improving overall efficiency, while the envelop amplifier provides the high
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`frequency components in current Ienv. Id. at 3:21-25; 6:22-24. In this way, the
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`overall efficiency increases by drawing the majority of current from the high
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`efficient switcher, and only relying on the envelope amplifier for the high
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`frequency components.
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`In order to further increase the efficiency of the system, envelop amplifier
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`170a predominantly relies on Vbat for power while drawing upon Vboost (which
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`“boosts” or increases the battery voltage to a higher voltage at the expense of cost
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`and power consumption) on demand when, e.g., the magnitude of the envelop
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`signal exceeds a threshold. Ex. 1101, 3:19-21, 52-67; 5:31-36; 6:1-4. In this way,
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`the linear stage envelop amplifier only draws on the boosted voltage when needed.
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`5
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`Thus, in embodiments of the ’558 Patent, efficiency is increased by only
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`relying on a boost converter with respect to the envelop amplifier, and because the
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`switcher provides power most of the time, any efficiency drag from a boost
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`converter is limited to “the time in which the envelope amplifier 170 provides
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`power.” Ex. 1101, 8:17-23. Efficiency, then, is further increased because the
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`envelope amplifier itself relies on the boost converter dynamically, i.e., “only when
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`needed for large amplitude envelope.” Id. at 6:28-33.
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`B.
`Prosecution History of the ’558 Patent
`The ’558 Patent issued from U.S. Application No. 13/167,659, filed June 6,
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`2011. Ex. 1102 at 38. A first office action was issued on November 23, 2012,
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`rejecting each original independent claim, including claims 1, 10, and 12, as
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`anticipated by Kim et al., entitled “High Efficiency and Wideband Envelope
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`Tracking Power Amplifier with Sweet Spot Tracking.” Ex. 1102, 59-61; Ex. 1113
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`(Kim), Title. The Examiner provided a detailed examination of original claims 1-
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`13 in view of Kim, including those claims that issued as independent claims 1, 6,
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`and 8. Ex. 1102 at 62-63. The Office found original claim 4 to be allowable over
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`Kim if rewritten in independent form. Ex. 1102 at 79-82. To overcome the
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`rejections of claims 1, 10, and 12, the Applicant incorporated the subject matter of
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`original claim 4 in each independent claim. Ex. 1102 at 79-82.
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`6
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`In a subsequent Final Office Action dated May 10, 2013, the Office
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`indicated that original claims 4, 10, and 12 as amended recited allowable subject
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`matter over the prior art of record including the Kim paper. Id. at 134. Thereafter,
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`the Applicant and the Office addressed unrelated claims before a Notice of
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`Allowance was issued on Feb. 13, 2014; original claims 4, 10, and 12 issued as
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`claims 1, 6, and 8. Id. at 185, 207.
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`III. PARALLEL PROCEEDINGS INVOLVING THE ’558 PATENT
`The ’558 Patent is presently at issue in two parallel proceedings. First,
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`the ’558 Patent is asserted against Real Party in Interest (“RPI”) Apple Inc. in a
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`proceeding before the United States International Trade Commission (“ITC”)
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`captioned Mobile Electronic Devices and Radio Frequency and Processing
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`Components Thereof, 337-TA-1065 filed July 7, 2017. (See Section V(B) below.)
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`And the ’558 Patent is asserted against Real Party in Interest Apple Inc. in a matter
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`before the United States District Court for the Southern District of California
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`captioned Qualcomm Inc. v. Apple Inc., 17-CV-01375 filed July 6, 2017. In the
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`matter before the ITC, an Initial Determination and Recommended Determination
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`was issued on September 28, 2018, finding claim 7 of the ’558 Patent valid. Ex.
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`2001 at 2.1
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`1 A public version of the ITC’s Initial Determination is not yet available at
`the time of this filing.
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`
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`7
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`IV. OVERVIEW OF THE CITED REFERENCES
`A. Overview of Chu
`The Chu reference is an article entitled, “A 10 MHz Bandwidth, 2mV Ripple
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`PA Regulator for CDMA Transmitters.” Ex. 1104 (Chu), Title. Chu describes a
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`“combined class A-B and switch-mode regulator based supply modulator with a
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`master-slave architecture achieving wide bandwidth and low ripple.” Ex. 1104, at
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`2809. Chu’s master-slave architecture is illustrated in Fig. 4 (below) showing a
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`supply modulator with switch-mode and linear amplifiers connected in parallel.
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`Chu’s Fig. 5 (below) illustrates a simplified block diagram of the proposed
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`regulator and ripple cancellation.
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`8
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`Chu discloses that a “high GBW linear amplifier in voltage follower
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`configuration ensures that output node Vo(t) tracks the reference envelop voltage
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`A(t).” Ex. 1104 at 2810. And a “current sensing circuit, high gain transimpedance
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`amplifier and switch-mode regulator form[] a global feedback control loop that
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`suppresses the current output from the linear amplifier within the switch-mode
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`regulator bandwidth.” Id. According to Chu, “[t]ypical current sensing techniques
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`utilize[ing] a small series resistor and measure[ing] the voltage drop across it … is
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`not suitable for CDMA supply modulator applications where output currents can
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`be up to 380 mA.” Id. at 2815-2816. Accordingly, Chu discloses an “accurate
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`current sensing circuit” illustrated in Chu’s Fig. 16, shown below. Id.
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`Chu does not include any discussion or illustration of a voltage boost
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`mechanism for boosting a battery voltage.
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`9
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`B. Overview of Choi 2010
`The Choi 2010 reference is an article entitled, “Envelope Tracking Power
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`Amplifier Robust to Battery Depletion.” Ex. 1106, Title. Choi 2010 describes a
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`“hybrid switching amplifier,” and Fig. 2 illustrates how a PA supply modulator
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`topology affects the output power of the PA, as shown below:
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`Ex. 1106, 1334.
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`Choi 2010 discloses a system that boosts the supply voltage of a linear
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`amplifier to 5V, regardless of the battery voltage variation, by coupling a 5V boost
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`converter to the supply of the linear amplifier as illustrated in Choi 2010’s Fig. 5
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`below. Id. at 1333. Choi 2010’s system boosts the linear amplifier supply voltage,
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`“while that of the buck converter is still coupled to the battery in the HSA” so that
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`10
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`“the supply modulator dynamically regulates the PA with peak voltage of 4.5V.”
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`Id.
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`Thus, Choi 2010 teaches that this system always boosts the battery voltage
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`to 5V, regardless of battery voltage fluctuation in order to provide a stable supply
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`voltage to the RF PA. Id. at 1334. Choi 2010 recognizes that this continuous
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`voltage boost degrades efficiency of the supply, but accepts this degradation as an
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`acceptable compromise to achieve a stable supply voltage for the RF PA. Id. at
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`1335 (“the efficiency degradation by the additional boost converter is not serious
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`because the load current provided by the linear amplifier is about 30% of the
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`overall load current”).
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`It is notable that four of the six authors of Choi 2010 were also authors of
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`the Kim paper that was distinguished during the prosecution of the ’558 Patent,
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`11
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`and Choi 2010 was also considered by the Examiner during prosecution. Ex. 1113
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`at 255; Ex. 1106, 1332; Ex. 1101, Cover.
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`C. Overview of Myers
`Myers is a U.S. Patent titled “Method and Apparatus for High Efficiency
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`High Dynamic Range Power Amplification.” Ex. 1112, Title. Myers discloses an
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`envelope elimination and restoration (EER) amplifier, which is “a technique
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`through which highly efficient but nonlinear radio frequency (RF) power
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`amplifiers can be combined with other, highly efficient amplifiers to produce a
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`high efficiently linear amplifier system.” Ex. 1112, 1:23-29. In Myers’ system, a
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`signal to be amplified is split into two paths, an amplitude path and a phase path.
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`Id. at 1:29-31. An envelope is detected and amplified in the amplitude path by a
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`class S or other power amplifier, which operates on the bandwidth of the RF
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`envelope rather than the RF bandwidth. Id. at 1:31-34. The phase component in
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`the phase path is then amplitude modulated by the amplified envelop signal,
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`creating an amplified replica of the input signal Id. at 1:34-37. Myers explains
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`that in an EER amplifier, the dynamic range is limited by the range of the class S
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`modulator used to amplify the envelop, thus Myers discloses another type of EER
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`amplifier with a higher dynamic range. Id. at 1:37-40, 55-57. Myers’ Fig. 8
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`illustrates a flow chart for amplifying a signal:
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`12
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`Myers’ flowchart shows in step 820 that if the input is found to be less than
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`the reference signal, Myers describes proceeding to step 830, in which a first
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`power source is selected for use in a pulsewidth modulator. Ex. 1112, 9:26-30.
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`But if the input is greater than the reference, Myers’ process proceeds to step 840,
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`in which a second power source, greater than the first power source, is selected for
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`use with a pulsewidth modulator. Id. at 9:29-32. Myers does not, however,
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`disclose or suggest a boost converter or a boosted voltage, and Myers’ two
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`different power sources are never applied to a linear amplifier in a hybrid structure,
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`but rather Myers describes using pulsewidth modulators as part of a class S
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`modulator (i.e. a “switcher”) implementation—not a linear amplifier. Id. at 1:62-
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`13
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`67, 4:17-20, 6:1-5. Myers’ pulse width modulators are depicted in Figures 2 and 3
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`copied below:
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`Myers’ pulse width modulator “outputs a pulsewidth modulated waveform
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`which has a duty cycle proportional to the amplitude of the envelop signal.” Ex.
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`1112, 3:63-65. As Myers illustrates, a driver “accepts the pulsewidth modulated
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`signal from PWM” and “drives switching transistor” and “logic gates.” Id. at 3:66-
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`4:1. Myers, however, does not employ PMOS transistors to receive a selectable
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`power source. Although Myers discloses an embodiment that includes “a common
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`14
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`switching transistor coupled to ground,” as shown in Fig. 2 above, Myers never
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`discloses an embodiment in which two different supplies, Vdd1 and Vdd2, are
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`selectably received by the same switching transistor. Id. at 7:12-24, Fig. 2. Rather,
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`Myers explains that “having two separate pairs of switching transistors [illustrated
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`in Fig. 3] further increases efficiency.” Id.
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`V. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER
`35 U.S.C. §§ 314(a) AND 325(d) TO DENY INSTITUTION
`Ground I of the Petition alleges that claims 6 and 8 of the ’558 Patent are
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`obvious over the combination of Chu (Ex. 1104) and Choi 2010 (Ex. 1106).
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`Ground II of the Petition alleges that claims 1-9 are obvious over Chu combined
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`with Choi 2010 and Myers (Ex. 1112). As demonstrated below, the Board should
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`exercise its discretion to deny institution of both grounds because they are
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`cumulative and not in the best interests of judicial economy.
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`A. Ground I of the Petition Should Be Denied Because it is
`Cumulative of Prior Art Applied by the Patent Office
`During Prosecution
`Ground I of the Petition argues that independent claims 6 and 8 are obvious
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`over the combination of Chu and Choi 2010. But, as demonstrated below, the
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`Petitioner’s proposed combination of Chu and Choi 2010 is nearly identical to the
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`envelope tracking power amplifier circuit disclosed in the Kim reference (Ex.
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`1113), which the Patent Office specifically addressed in its allowance of claims 6
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`and 8. Moreover, the Petitioner has not even attempted to demonstrate that its
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`15
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`proposed combination of Chu and Choi 2010 is somehow non-cumulative of the
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`Kim reference. The Board should therefore exercise its discretion to deny
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`institution of Ground I under 35 U.S.C. § 325(d) because the obviousness
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`argument set forth in the Petition is cumulative of prior art considered during
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`examination. See, e.g., Neil Ziegmann, N.P.Z., Inc. v. Stephens, IPR2015-01860,
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`Paper 13 at 8-9 (P.T.A.B. Sept. 6, 2017) (affirming denial of institution under §
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`325(d), “We conclude that a set of prior art or arguments may be considered
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`“substantially the same” if they are “cumulative to or substantially overlap with
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`issues previously considered by the Office with respect to the patent.”); see also id.
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`at 10 (where a prior art reference presented in a petition was already considered
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`substantively by the Examiner, “the petitioner has the initial burden to identify
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`such errors made by the examiner with respect to that prior art reference,” and
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`factual findings made by the Examiner and “not contested by the petitioner may be
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`treated as undisputed fact for the purpose of evaluating petitioner’s assertions
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`concerning examiner error under [§] 325(d).”)
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`Ground I of the Petition proposes a combination in which the “regulator”
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`shown in Figure 5 of Choi 2010 would be used to boost the supply voltage to the
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`“high GBW [gain-bandwidth] linear amplifier” shown in Figure 4 of Chu.
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`(Paper 3, at 41-42.) The Petition demonstrates this proposed combination in the
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`highlighted drawings copied below, in which Choi’s regulator is highlighted in
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`16
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`light blue (in the diagram on the right), and Chu’s linear amplifier is highlighted in
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`purple (in the diagram on the left).
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`Ground I of the Petition further relies on a highlighted version of Chu’s Figure 14,
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`copied below, which shows transistor-level details of the linear amplifier from
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`Figure 4. As shown below, the linear amplifer in Chu’s Figure 14 (also
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`highlighted in purple) includes an input stage, a biasing stage, and an output stage.
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`As detailed above at Section II.B, the Examiner applied the Kim reference
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`during prosecution of the ’558 Patent to reject claims 1, 2, 6-17, 19-21, and 24-26.
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`Dependent claims 4, 5, 18, 22 and 23 were deemed allowable over Kim.
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`17
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`Independent claims 10 and 12 were both amended to incorporate the subject matter
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`of allowable claim 4, and these were claims subsequently allowed over Kim and
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`issued as claims 6 and 8, respectively. The Patent Office thus allowed claims 6
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`and 8 of the ’558 Patent only after specific consideration of the Kim reference.
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`Figures 3 and 4 of the Kim reference are copied below.
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`Kim’s Figure 3 depicts a hybrid switching supply modulator with a boost
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`converter. Figure 4 provides a transistor-level diagram of the wideband linear
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`amplifier from Figure 3.
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`A comparison between Figures 3 and 4 of Kim and the disclosures of the
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`cited Chu and Choi references easily demonstrates that Kim is almost identical to
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`the Petitioner’s proposed Chu/Choi combination.
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` To help illustrate the
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`correspondence between the teachings of Kim and the Petitioner’s proposed
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`Chu/Choi combination, Figures 3 and 4 of Kim have been highlighted in the
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`18
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`following discussion in the same manner used by the Petitioner to highlight Figure
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`5 of Choi and Figures 4 and 11 of Chu.
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`First, Figure 5 of Choi (as highlighted by the Petitioner) is set forth below
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`next to a similarly highlighted version of Kim’s Figure 3. It is evident from these
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`diagrams that Choi and Kim both include a linear amplifier (highlighted in purple)
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`that receives a supply voltage from a voltage regulator (highlighted in light blue) to
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`provide a modulated supply voltage to an RF power amplifier (highlighted in red).2
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`See also, Ex. 1113 (Kim) at 255 (“To improve the performance of power amplifier,
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`a boost converter is added to the supply modulator as shown in Fig. 3. By boosting
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`the supply voltage of the linear amplifier from 3.4V to 5V, the output voltage of
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`the supply modulator is increased up to 4.5V and the power amplifier shows higher
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`gain, efficiency, output power and wider bandwidth.”)
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`2 Choi’s buck converter (highlighted in yellow) and inductor (highlighted in
`pink) are not relevant to claims 6 and 8 of the ‘558 patent.
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`19
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`Next, Figure 4 of Chu (as highlighted by the Petitioner) is set forth below
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`alongside a similarly highlighted version of Kim’s Figure 4. The Petitioner’s
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`highlighted version of Figure 4 shows that Chu’s high bandwidth linear amplifier
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`(highlighted in purple) includes an OTA (circled in red), a class-AB biasing stage
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`(circled in blue), and an output stage (output transistors circled in orange and pink).
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`Likewise, Figure 4 of Kim depicts the identical circuit, including an OTA (circled
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`in red), a class-AB biasing stage (circled in blue), and an output stage (output
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`transistors circled in orange and pink.) See also, Ex. 1113 (Kim) at 256 (“As
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`shown in Fig. 4, we use folded-cascode OTA as a gain stage to achieve a large
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`bandwidth and high DC gain. For large current driving capability and rail-to-rail
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`operation, the output buffer has a common source configuration and it is biased as
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`class-AB for linearity and efficiency.”)
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`20
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`The equivalence between the linear amplifier designs in Kim and Chu is
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`further evident by comparing Figure 14 of Chu with Kim’s Figure 4. As shown
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`below, both include an identical input stage (circled in red in Kim’s Figure 4), a
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`class-AB biasing stage (circled in blue in Kim), and an output stage with a
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`PMOS/NMOS transistor pair (circled in orange and pink).
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`As demonstrated above, there is no question that the Petitioner’s proposed
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`combination of Chu and Choi, as set forth in Ground I of the Petition, is
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`cumulative of the Kim reference applied during prosecution. The Petitioner may
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`be unsatisfied with the conclusion of the Patent Office that claims 6 and 8 are
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`21
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`patentable over Kim, but asking the Board to reconsider the equivalent of this same
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`prior art in inter partes review is precisely the kind of duplication of effort and
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`waste of judicial resources that the PTAB has consistently avoided.
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`In evaluating whether to deny institution on the basis of 35 U.S.C. § 325(d),
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`the Board considers the following list of factors set forth in Becton Dickinson &
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`Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17-18 (PTAB Dec. 15,
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`2017)(informative):
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`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;
`4. the extent of the overlap between the arguments made during
`examination and the manner in which a petitioner relies on the
`prior art or a patent owner distinguishes the prior art;
`5. whether a petitioner has pointed out sufficiently how the
`Office erred in evaluating the asserted prior art; and
`6. the extent to which additional evidence and facts presented
`in the petition warrant reconsideration of the prior art to arguments.
`
`The Becton Dickinson factors support denying institution. As demonstrated
`
`above, the Kim reference that the Examiner evaluated and applied during
`
`examination is nearly identical to the Petitioner’s proposed combination of Chu
`
`
`
`22
`
`
`
`and Choi. Factors 1-4 therefore weigh strongly in favor of non-institution. As to
`
`factors 5 and 6, the Petitioner, despite having the burden of proof, has made no
`
`attempt to demonstrate any error by the Patent Office or any other reason why
`
`reconsideration might be warranted. Factors 5 and 6 should therefore also be
`
`weighed in favor of the Patent Owner.
`
`For at least these reasons, the Board should exercise its discretion to deny
`
`institution of Ground I under 35 U.S.C. § 325(d).
`
`B. Ground II of the Petition Should Be Denied Institution in
`View of the Parallel ITC Proceeding
`35 U.S.C. §314(a) provides the Director with discretion to deny a petition.
`
`See 35 U.S.C. §314(a). When determining whether to exercise this discretion, the
`
`Director must “consider the effect of any such regulation [under this section] on
`
`the economy, the integrity of the patent system, the efficient administration of the
`
`Office, and the ability of the Office to timely complete proceedings instituted
`
`under this chapter.” 35 U.S.C. §316(b). The Board’s decisions and its Trial
`
`Practice Guide provide guidance for when it is appropriate to deny a petition,
`
`including when there are “events in other proceedings related to the same patent,
`
`either at the Office, in district courts, or the ITC.” Trial Practice Guide, pg. 10.
`
`See also NetApp, Inc. v. Realtime Data LLC, IPR2017-01195, Paper 9 at 12–13
`
`(PTAB Oct. 12, 2017) (denying institution under § 314(a) of a follow-on petition
`
`filed by a different petitioner where, due to petitioner’s delay, the Board likely
`
`
`
`23
`
`
`
`would not have been able to rule on patentability until after the district court trial
`
`date); Nautilus Hyosung, Inc. v. Diebold, Inc., IPR2017-00426, Paper 17 (PTAB
`
`June 22, 2017) (denying institution where, among other factors, the ITC already
`
`issued its Initial Determination of validity of the same patent over some of the
`
`same prior art references); NHK Spring Co. v. Intri-Plex Tech., Inc., IPR2018-
`
`00752, Paper 8 at 20 (PTAB Sept. 12, 2018). In NHK Spring Co., the Board found
`
`circumstances warranting denial under § 314(a) where a petitioner asserted the
`
`same prior art in a parallel district court proceeding nearing its final stages with
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`expert discovery ending within two months, and trial set to begin in six months
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`(well before a final written decision would issue from the Board). IPR2018-00752,
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`Paper 8 at 20 (“instituting a trial under the facts and circumstances here would be
`
`an inefficient use of Board resources … and inconsistent with ‘an objective of the
`
`AIA … to provide an effective and efficient alternative to district court litigation.”)
`
`The instant facts justify the Board exercising its §314(a) discretion to deny
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`institution. Patent Owner filed an ITC Complaint on July 7, 2017.3 Petitioner had
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`knowledge of and actively participated in the ITC investigation no later than July
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`20, 2017. The Scheduling Order in the ITC investigation issued September 19,
`
`3 Though Petitioner Intel was not a named respondent in the ITC matter,
`Intel filed a Statement on the Public Interest on July 20, 2017 urging the ITC to
`deny Patent Owner’s request for an exclusion order. Ex. 2002 at 1, (Intel’s Public
`Interest Statement). Moreover, IPR real-party-in-interest Apple is a named
`respondent in the ITC matter. ITC Complaint, Ex. 2003 at 14.
`
`
`
`24
`
`
`
`2017, and set a hearing date of June 18, 2018 through June 26, 2018. The
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`Scheduling Order also set deadlines to serve initial invalidity contentions (October
`
`23, 2017), final invalidity contentions (February 20, 2018), initial expert reports
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`(March 16, 2018), rebuttal expert reports (March 30, 2018), and a Final
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`Determination target date (January 14, 2019).4
`
`Petitioner here relies on the exact same prior art combination on which it
`
`relies in the ITC investigation. That combination, Chu, Choi 2010, and Myers,
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`was first identified when Petitioner and Apple served the initial invalidity
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`contentions on October 24, 2017. With full knowledge of the schedule in the ITC
`
`investigation, Petitioner made the strategic decision to wait one full year before
`
`filing its serial attack on the validity of the ’558 Patent. More significantly,
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`Petitioner waited almost nine months after identifying the Chu, Choi 2010, and
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`Myers combination before filing the instant Petition. Thus, before even filing the
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`Petition, Petitioner already received the benefit of full expert briefing, and a full
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`ITC hearing, on the underlying issues raised in this Petition.
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`The Board has previously found lesser facts weigh in favor of denying
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`institution. In NHK Spring Co., the Board denied institution where the parallel
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`district court case was scheduled to go to trial approximately seven months after
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`4 The ITC subsequently extended the Final Determination target date to
`January 28, 2019 due to the retirement of the originally assigned ALJ. See Ex.
`2004 (Order No. 44, Extending the Target Date).
`
`
`
`25
`
`
`
`the institution decision. There, like here, the petitioner relied on the same prior art
`
`and the parallel proceeding will resolve the same issues before any trial on the
`
`petition concludes. The Board held that “instituting a trial under the facts and
`
`circumstances here would be an inefficient use of Board resources.” NHK Spring
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`Co., Case IPR2018-00752 at *19-20.
`
`In Nautilus, the Board cited the patent owner’s “persuasive evidence that the
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`ITC investigation involving Petitioner as a respondent and [the same asserted
`
`patent] involves some of the same prior art” as one of the primary factors in
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`denying institution. Nautilus, Case IPR2017-00426 at *12-13. In this case, the
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`overlapping issues are even more pronounced; Petitioner relies on the exact same
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`prior art combination in both the ITC matter and the instant Petition.
`
`Moreover, in Nautilus, the Board considered the “potential inequity of a
`
`petitioner filing serial attacks against the same claims of a patent, while benefitting
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`from patent owner’s arguments and/or the Board’s decision in prior cases,” which
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`also weighed in favor of denying institution. Id. at *12-13. In this case, Petitioner
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`receive
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