Trials@uspto.gov
`571-272-7822
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` Paper 33
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` Entered: August 11, 2021
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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.
`_______________
`
`IPR2018-01154
`Patent 8,698,558 B2
`_______________
`
`Before TREVOR M. JEFFERSON, SCOTT B. HOWARD, and AARON W.
`MOORE, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Granting Patent Owner’s Request on
`Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`571-272-7822
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` Paper 33
`
`
`
` Entered: August 11, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`QUALCOMM, INC,
`Patent Owner.
`_______________
`
`IPR2018-01154
`Patent 8,698,558 B2
`_______________
`
`Before TREVOR M. JEFFERSON, SCOTT B. HOWARD, and AARON W.
`MOORE, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Granting Patent Owner’s Request on
`Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`IPR2018-01154
`Patent 8,698,558 B2
`
`INTRODUCTION
`I.
`In our Final Written Decision, the Board held that, based on a
`preponderance of the evidence, Petitioner had shown that dependent claim
`16 of U.S. Patent No. 8,698,558 B2 (“the ’558 patent,” Ex. 1201) is
`unpatentable as obvious over Kwak.1 Paper 30 (“Dec.”), 29–30. The Board
`additionally held that Petitioner had not demonstrated by a preponderance of
`the evidence that independent claim 15 and dependent claims 17, 18, and 20
`of the ’558 patent are unpatentable as anticipated by Kwak, and that claim
`19 of the ’558 patent is unpatentable as obvious over Kwak and Choi 2010.2
`Qualcomm Incorporated (“Patent Owner”) filed a rehearing request
`with respect to the determination that dependent claim 16 was found
`unpatentable as obvious over Kwak, despite the independent claim from
`which it depends not being found unpatentable as anticipated by the same
`prior art reference. Paper 31 (“Req. Reh’g”) 1.
`For the reasons discussed below, we grant Patent Owner’s Request for
`Rehearing, and modify our Final Written Decision accordingly.
`
`LEGAL STANDARDS
`II.
`“The burden of showing a decision should be modified lies with the
`party challenging the decision,” and the challenging party “must specifically
`identify all matters the party believes the Board misapprehended or
`
`
`1 T.W. Kwak, et al., A 2 W CMOS hybrid switching amplitude
`modulator for EDGE polar transmitters, IEEE JOURNAL OF SOLID-STATE
`CIRCUITS 2666-76 (2007) (Ex. 1211, “Kwak”).
`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. 1206, “Choi 2010”).
`
` 2
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`IPR2018-01154
`Patent 8,698,558 B2
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`overlooked, and the place where each matter was previously addressed” in a
`paper of record. 37 C.F.R. § 42.71(d) (2020) (emphasis added). When
`rehearing a decision on petition, the Board will review the decision for an
`abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may
`be found if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2)
`is based on an erroneous conclusion of law; (3) rests on clearly erroneous
`fact findings; or (4) involves a record that contains no evidence on which the
`Board could rationally base its decision. Redline Detection, LLC v. Star
`Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations
`omitted).
`
`III. ANALYSIS
`Patent Owner argues “the Board misapprehended the Petitioner’s
`claim of anticipation of Kwak presented on page 59 of the petition.” Req.
`Reh’g 1. Specifically, Patent Owner asserts that Petitioner relied solely on
`the alleged anticipatory disclosure for independent claim 15 and did not
`present arguments or evidence that independent claim 15 was obvious over
`Kwak. Id.; Pet. 59. Patent Owner argues that the Board misapprehended
`Petitioner’s argument and improperly re-analyzed the elements of
`independent claim 15 for obviousness, a theory Petitioner did not properly
`present. Req. Reh’g 1–2; Paper 3 (“Petition” or “Pet.”) 59.
`The Petition guides the proceeding. See Koninklijke Philips N.V. v.
`Google LLC, 948 F.3d 1330, 1335–36 (Fed. Cir. 2020). The Federal Circuit
`explained that “Congress chose to structure a process in which it’s the
`petitioner . . . who gets to define the contours of the proceeding,” and that
`“the statute envisions that a petitioner will seek an inter partes review of a
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`IPR2018-01154
`Patent 8,698,558 B2
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`particular kind—one guided by a petition describing ‘each claim challenged’
`and ‘the grounds on which the challenge to each claim is based.’” Id. at
`1335 (quoting SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (quoting
`35 U.S.C. § 312(a)(3))) (emphasis added). “Although the Board is not
`limited by the exact language of the petition, . . . the Board does not ‘enjoy[]
`a license to depart from the petition and institute a different inter partes
`review of [its] own design.’” Id. at 1336 (quoting SAS, 138 S. Ct. at 1356)
`(citing Sirona Dental Sys. GmbH v. Institut Straumann AG, 892 F.3d 1349,
`1356 (Fed. Cir. 2018)).
`We agree with Patent Owner that the Board misapprehended
`Petitioner’s arguments and evidence with respect to anticipation of
`independent claim 15 to include a showing that the embodiments of Kwak
`used in the anticipation analysis suggested the limitations of claim 15 in an
`obviousness analysis. Dec. 19–21 (discussing the embodiments of Kwak
`that Petitioner cites for anticipation of claim 15). Upon further review, the
`Petition does not set forth adequately a ground for obviousness for
`independent claim 15 over Kwak. See Pet. 38–51. Specifically, we find that
`Petitioner did not provide analysis or argument regarding the motivation to
`combine the embodiments of Kwak Petitioner relied on in support of its
`anticipation analysis. Req. Reh’g. 4; Pet. 38–51, 59–61. Without sufficient
`grounds to support the obviousness of claim 15 over Kwak, we find the
`Board misapprehended Petitioner’s anticipation arguments with respect to
`Kwak and claim 15 in an obviousness analysis. Thus, we find that the
`Petition does not provide sufficient argument or analysis directed to
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`IPR2018-01154
`Patent 8,698,558 B2
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`obviousness for the limitations of claim 15 based on the embodiments in
`Kwak. Id.
`Finally, Patent Owner contends that the Board’s analysis of claim 15
`under obviousness deprived Patent Owner of sufficient notice and an
`opportunity to address the theory. Req. Reh’g 3–4 (citing Belden Inc. v.
`Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015)). We agree, finding
`that the misapprehension of Petitioner’s express reliance on anticipation of
`claim 15 by Kwak overlooked Petitioner’s failure to directly address the
`motivation to combine the embodiments of Kwak in the Petition (see Dec.
`19) and deprived Patent Owner of the opportunity to address this theory.
`We determine that the Petition fails to present properly the ground that claim
`15, from which claim 16 depends, is obvious over Kwak.
`
`IV. CONCLUSION
`For the reasons expressed above, we modify our Final Written
`Decision to change to our determination in relation to claim 16 and reach the
`following conclusions.
`Outcome of Decision on Rehearing:
`Claims
`35 U.S.C §
`Reference(s)
`16
`103(a)
`Kwak
`
`
`
` 5
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`Denied
`
`
`
`Granted
`16
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`IPR2018-01154
`Patent 8,698,558 B2
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`Claim(s)
`
`15, 17, 18,
`20
`16
`19
`
`Overall
`Outcome
`
`
`Final Outcome of Final Written Decision after Rehearing:
`Claims
`35 U.S.C.
`Shown
`§
`Unpatentable
`102(b)
`
`
`Reference(s)
`
`Kwak
`
`103(a)
`103(a)
`
`
`
`Kwak
`Kwak, Choi
`2010
`
`
`
`
`
`
`
`Claims
`Not Shown
`Unpatentable
`15, 17, 18, 20
`
`16
`19
`
`15, 16, 17, 18,
`19, 20
`
`V. ORDER
`In consideration of the foregoing, it is:
`ORDERED that Petitioner’s Request for Rehearing is granted; and
`FURTHERED ORDERED that based on a preponderance of the
`evidence, Petitioner has not shown that claims 15–20 are unpatentable; and
`FURTHERED ORDERED that, because this is a Final Written
`Decision, parties to the proceeding seeking judicial review of the Decision
`must comply with the notice and service requirements of 37 C.F.R. § 90.2.
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`IPR2018-01154
`Patent 8,698,558 B2
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`PETITIONER:
`
`David L. Cavanaugh
`Richard Goldenberg
`Theodoros Konstantakopoulos
`WILMER CUTLER PICKERING HALE AND DORR LLP
`david.cavanaugh@wilmerhale.com
`richard.goldenberg@wilmerhale.com
`theodoros.konstantakopoulos@wilmerhale.com
`
`
`PATENT OWNER:
`
`Joseph M. Sauer
`David B. Cochran
`Richard A. Graham
`David M. Maiorana
`Joshua R. Nightingale
`Matthew W. Johnson
`JONES DAY
`jmsauer@jonesday.com
`dcochran@jonesday.com
`ragraham@jonesday.com
`dmaiorana@jonesday.com
`jrnightingale@jonesday.com
`mwjohsnon@jonesday.com
`
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