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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 IPR2018-01154
`Patent 8,698,558
`______________________
`
`PRELIMINARY PATENT OWNER RESPONSE TO PETITION FOR
`INTER PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.107
`
`
`
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`
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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 .............................................. 5
`III. OVERVIEW OF THE CITED REFERENCES ......................................... 6
`A. Overview of Kwak ............................................................................... 6
`IV. THE BOARD SHOULD DENY THE PETITION BECAUSE
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`PETITIONER HAS FAILED TO ESTABLISH A REASONABLE
`
`LIKELIHOOD THAT AT LEAST ONE OF THE CLAIMS
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`CHALLENGED IN THE PETITION IS UNPATENTABLE .................. 9
`The Petition Disregards the Express Teachings of Kwak Showing
`A.
`
`No Claimed Offset to the Switcher Input Current ........................... 9
`B.
`The Petition Improperly Combines Two Different Embodiments
`
`from Kwak ......................................................................................... 13
`THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`V.
`U.S.C. § 314(a) TO DENY INSTITUTION ............................................... 19
`
`VI. CONCLUSION ............................................................................................ 23
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`
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`I.
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`INTRODUCTION
`Intel Corporation (“Intel” or “Petitioner”) raises three grounds against six
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`claims, but all of those challenges hinge on an anticipation ground directed to the
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`only independent claim challenged, claim 15. The other grounds are directed to
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`claims 16 and 19, which depend from claim 15. In its anticipation analysis, Intel
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`completely disregards Fig. 11 of the cited Kwak reference, which shows that the
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`disclosed system does not meet the limitations of claim 15. Wholly ignoring
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`Fig. 11, Intel instead provides a misleading analysis in an attempt to demonstrate
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`that the Kwak reference teaches something that it does not. For at least this reason,
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`the Board should 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. 1201, 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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`Patent’s power management scheme achieves substantial power savings in mobile
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`device transmitters thereby extending a device’s battery life. Id. at 3:46-48.
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`
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`1
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`
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`In wireless communication systems, mobile devices communicate by
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`transmitting encoded data signals. Ex. 1201, 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 and good performance even when the device’s battery is low. Id.
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`The ’558 Patent discloses an efficient design for envelope tracking that
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`employs a “switcher” and an “envelope amplifier” together with a boost converter,
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`as illustrated in Fig. 3, with annotations below:
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`2
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`
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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 envelope amplifier. Ex. 1201, 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 envelope
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`amplifier thereby improving overall efficiency, while the envelope amplifier
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`provides the high frequency components in current Ienv. Id. at 3:21-25; 6:22-24.
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`In this way, the overall efficiency increases by drawing the majority of current
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`from the highly efficient switcher, and only relying on the envelope amplifier for
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`the high frequency components.
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`In order to further increase the efficiency of the system, embodiments of a
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`switcher are designed to implement an offset to the input current (e.g. Isen in Fig. 3
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`above) “in order to generate a larger supply current via the inductor than without
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`the offset.” Ex. 1201, 13:24-26, see, e.g. 10:1-18. This offset is intended to
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`address an inefficiency arising in switchers where a reduced supply voltage (e.g. a
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`reduced Vbat) leads to a reduced supply current causing an inductor to charge
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`more slowly. Id. 6:52-61. Within the context of the disclosed apparatus, this has
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`3
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`
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`the practical effect of reducing Iind, resulting in the less efficient envelope
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`amplifier 170a providing more of the Ipa current. Id.
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`Thus, the patent discloses an improved switcher, exemplified in Figure 5
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`(the relevant portion of which is copied below), incorporating a summer, e.g.
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`summer 328, which is operative to sum the input of a sensed current (e.g. Isen)
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`with an offset current (e.g. Offset). Id., 6:62-7:4. By providing a current as the
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`sum of the offset current and the sensed current, the switcher is “turned On for a
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`longer period and can provide a larger Iind current … [thus, the] offset provided to
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`summer 328 determines the amount by which the Iind current is increased by
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`switcher 160b [(below)] relative to the Iind current provided by switcher 160a in
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`Fig. 3 [(above)].” Id., 7:10-18. This offset current ameliorates “the drop in
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`efficiency … by increasing the Iind current from the switcher.” Id. at 6:60-61, see
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`also Abstract, 7:19-21, 7:44-49.
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`4
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`
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`Thus, in embodiments of the ’558 Patent, efficiency is increased by
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`introducing an offset in the switcher in order to increase the Iind current, thereby
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`reducing the apparatus’ reliance on the less efficient envelope amplifier, which
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`would otherwise reduce efficiency in embodiments of the disclosed envelope
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`tracker. Id. at 6:52-61.
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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. 1202 at 38. A first office action was issued on November 23, 2012,
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`rejecting each original independent claim, including original claim 20, 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. 1202, 59-61; Ex. 1213
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`(Kim), Title. The Examiner provided a detailed examination of original claims 20-
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`
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`5
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`
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`21, 24-26 in view of Kim, including claim 20, which issued as independent claim
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`15. Ex. 1202 at 61-63. The Office found original claims 22 and 23 to be allowable
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`over Kim if rewritten in independent form. Ex. 1202 at 79-82. To overcome the
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`rejections of claim 20, the Applicant cancelled claim 20 and rewrote claim 22 in
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`independent form by incorporating the subject matter of original independent claim
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`20. Ex. 1202 at 84-85.
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`In a subsequent Final Office Action dated May 10, 2013, the Office
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`indicated that original claim 20 as amended recited allowable subject matter over
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`the prior art of record. Id. at 134. Thereafter, the Applicant and the Office
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`addressed unrelated claims before a Notice of Allowance was issued on Feb. 13,
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`2014; original claim 22 issued as claim 15, and original dependent claims 21, 23-
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`26 issued as claims 16-20. Id. at 185, 207.
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`III. OVERVIEW OF THE CITED REFERENCES
`A. Overview of Kwak
`The Kwak reference is an article entitled, “A 2W CMOS Hybrid Switching
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`Amplitude Modulator for EDGE Polar Transmitters.” Ex. 1211 (Kwak), Title.
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`Kwak describes a hybrid switching amplifier with a master-slave architecture
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`consisting of a wideband linear amplifier as a voltage source and a switching
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`amplifier as a current-controlled current source. Ex. 1211, at 2666. Kwak teaches
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`use of a pulse-width modulation (PWM) controller for the switcher in order to
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`6
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`mitigate design difficulties. Id. at 2667. This is illustrated in Kwak’s Figure 3(a),
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`below. Id. at 2668.
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`Kwak teaches that power consumption of the linear amplifier may be
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`reduced by reducing the output ripple voltage. Id. at 2667. Kwak discloses that
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`one way to reduce the output ripple voltage is by introducing a “feedforward path.”
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`Id. at 2668-2669. According to Kwak, a linear amplifier provides compensation
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`current to prevent output voltage distortions (i.e. at Vo) caused by a delay of the
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`current loop (illustrated in Fig. 3(a) above) at high frequencies. Id. at 2668. At
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`higher frequencies, more compensation current is required from the linear
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`amplifier, thus Kwak teaches adding an auxiliary feedforward circuit, allowing the
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`input signal to control the switching amplifier directly. Id. The switching
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`7
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`
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`amplifier of Fig. 3(a) with a modification to include a feed forward path is
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`illustrated below, in Kwak’s Fig. 5. Id.
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`
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`Kwak explains that the feedforward path is introduced in order to “alleviate
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`the burden of the linear amplifier” due to distortions caused by the phase lag of the
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`switching regulator in a high frequency region of operation. Id. Without the
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`feedforward path, as a result of the phase delay, the linear amplifier is required to
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`provide additional support to maintain Vo at intended levels, as illustrated in
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`Kwak’s “[m]easured waveforms” depicted in Fig. 11(a). Id. at 2668-69, 2673.
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`The feed forward path, being “faster than the feedback current path formed by
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`sensing the output current of the linear amplifier,” decreases the loop’s phase delay,
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`8
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`
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`and thereby reduces the compensation current of the linear amplifier. Id. at 2669.
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`The switcher output current, however, is shown as being the same in Figures 11(a)
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`and 11(b). Id. at 2673.
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`
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`IV. THE BOARD SHOULD DENY THE PETITION BECAUSE
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`PETITIONER HAS FAILED TO ESTABLISH A REASONABLE
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`LIKELIHOOD THAT AT LEAST ONE OF THE CLAIMS
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`CHALLENGED IN THE PETITION IS UNPATENTABLE
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`The Petition includes only a single ground for independent claim 15, arguing
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`that the claim is anticipated by Kwak. The remaining challenged claims each
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`depend from claim 15. Because the Petitioner fails to establish anticipation of
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`claim 15, each of the grounds fail, and institution should be denied.
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`A. The Petition Disregards the Express Teachings of
`Kwak Showing No Claimed Offset to the Switcher
`Input Current
`Independent claim 15 requires “a switcher operative to sense an input
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`current and generate the switching signal to charge and discharge the inductor to
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`9
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`
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`provide the supply current, the switcher adding an offset to the input current to
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`generate a larger supply current via the inductor than without the offset.” Intel
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`argues that the “feedforward path” in Kwak provides the claimed offset. But
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`Fig. 11 of Kwak shows that the “feed forward path” does not cause any change to
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`the supply current (id) through the inductor.
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`Fig. 5 of Kwak shows the “feedforward path” relied on by Intel. Intel’s
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`highlighted version of Fig. 5 is reproduced below, with the alleged “switcher”
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`highlighted in yellow. Paper 3, at 38-39. According to Intel, “the driver AF
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`(highlighted in orange) supplies an increase in current – i.e., an offset current – in a
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`“feed forward” path,” which will “ultimately generate a larger supply current via
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`the inductor than without the offset.” Id. at 43.
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`10
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`
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`The supply current (id) through the inductor is circled in green in Intel’s
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`highlighted drawing (above). Kwak does not describe that the feedforward path
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`(AF) in Fig. 5 “generate[s] a larger supply current via the inductor than without the
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`offset” as required by claim 15. Rather, the feedforward path is included “to
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`alleviate the burden of the linear amplifier” from providing “compensation current
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`to prevent the output voltage from being distorted by the delay of the current loop
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`at the high frequency.” Ex. 1211, at 2668. The feedforward path achieves this by
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`allowing “the input signal… [to] directly control the switching amplifier.” Id.
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`Kwak illustrates that the feedforward path, however, does not cause the switcher to
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`generate a larger current than the switcher would without the feedforward path.
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`Significantly, this is shown in Fig. 11 (below) which Intel completely ignores.
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`Ex. 1211, at 2673, Fig. 11 (with emphasis added to highlight supply current (id))
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`11
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`
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`Fig. 11 of Kwak shows “the effect of the feedforward path” in the hybrid
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`switching amplifier circuit shown in Fig. 5. Specifically, Fig. 11 shows “measured
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`waveforms” for the input voltage (Vin), output voltage (Vo), supply current (id)
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`through the inductor, and linear amplifier output current (ia) both with and without
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`the feedforward path. “Measured waveforms” without the feedforward path are
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`shown in Fig. 11(a) and the same “measured waveforms” with the feedforward
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`path included are shown in Fig. 11(b). Comparing the “measured waveforms” of
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`the inductor current (id) in Figs. 11(a) and 11(b) shows that the supply current
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`through the inductor (id) remains unchanged as a result of the feedforward path.
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`Therefore, based on Kwak’s “measured waveforms,” as presented in Fig. 11, there
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`can be no credible dispute that the feedforward path (which Intel equates to the
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`offset current) does not result in “a larger supply current via that inductor than
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`without the offset,” as required by claim 15.
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`Intel makes no attempt to explain the “measured waveforms” shown in
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`Fig. 11 of Kwak. Instead, Intel provides a misleading interpretation of Kwak’s
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`equations in an attempt to demonstrate that the feedforward path would somehow
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`cause the inductor current to increase – despite the oscilloscope plots in Fig. 11
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`showing that it does not. Intel’s misleading analysis ignores concrete evidence in
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`Kwak’s disclosure that shows that the feedforward path does not increase, or even
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`12
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`
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`affect, the magnitude of the switcher output current id. Intel therefore fails to
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`establish anticipation of claim 15, and the petition should be denied.
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`B.
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`The Petition Improperly Combines Two Different
`Embodiments from Kwak
`Independent claim 15 requires “a switcher operative to sense an input
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`current and generate the switching signal to charge and discharge the inductor to
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`provide the supply current, the switcher adding an offset to the input current to
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`generate a larger supply current via the inductor than without the offset.” The
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`Petition relies on the hybrid switching amplifier shown in Fig. 5 of Kwak as
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`allegedly disclosing the bulk of this claim element, but then relies on Kwak’s
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`Fig. 6 for the claim requirement of “the switcher adding an offset to the input
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`current.” See Petition at 42-49. To this end, the Petitioner states that Fig. 6 of
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`Kwak “is a detailed implementation of the type of circuit show in Figure 5.” Id. at
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`44. Kwak, however, describes Figures 5 and 6 as different embodiments, and Intel
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`has failed to meet its burden by providing any rationale for combining these
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`different embodiments to support a finding of anticipation under 35 U.S.C. § 102.
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`Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017) (crediting
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`the Board’s explanation that “anticipation is not proven by multiple, distinct
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`teachings that the artisan might somehow combine to achieve the claimed
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`invention.”) (citations omitted).
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`13
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`In Biscotti, the Federal Circuit made clear that in order to anticipate a claim
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`“a prior art reference must disclose all elements of the claim within the four
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`corners of the document, and it must disclose those elements arranged as in the
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`claims.” “If [the reference] does not expressly spell out all the limitations arranged
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`or combined as in the claim” it can only anticipate “if a person of skill in the art,
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`reading the reference, would at once envisage the claimed arrangement or
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`combination.” Id. (citations omitted).
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` In Biscotti, Petitioner relied on a
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`combination of two statements that referred to separate embodiments, but the
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`Board determined that while the two statements could disclose the “interface” at
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`issue, Petitioner had failed to put forth evidence showing that the statements
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`necessarily disclosed the claimed interface. Id. at 1065. The Federal Circuit
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`affirmed the Board’s holding and criticized “bare-bones allegations” in inter partes
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`review petitions that fail to provide information on how a POSA would understand
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`that separate embodiments anticipate a claim. Id. at 1074. Intel similarly fails to
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`provide any explanation of how separate embodiments in the cited Kwak reference
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`would allegedly be understood by a POSA to anticipate claim 15.
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`The Petition relies on Fig. 5 of Kwak throughout its anticipation analysis of
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`independent claim 15. A copy of Fig. 5 (as highlighted by the Petitioner) is set
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`forth below.
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`14
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`With reference to the highlighted version of Fig. 5 (above), the Petitioner alleges
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`that the driver AF (highlighted in orange) supplies an offset current that is added to
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`the sensed signal by the summing circuit ∑ (outlined in brown). See, Paper 3, at 43.
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`In an attempt to support this conclusion, the Petition relies on Fig. 6 of Kwak,
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`which, as noted above, the Petitioner incorrectly refers to as “a detailed
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`implementation of the type of circuit shown in Figure 5.” A copy of Kwak’s Fig. 6
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`(as highlighted by the Petitioner) is set forth below.
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`15
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`The Petition claims that “Figure 6 includes a ‘Summing Circuit + Integrator,’
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`which is the combination of the summing circuit of Figure 5 (∑, outlined in brown)
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`and the integrator AI(s) in Figure 5 (outlined in red),” and that “[t]his ‘Summing
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`Circuit + Integrator’ is shown to add an offset (i.e., the current from the
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`feedforward path, shown by the blue arrow) to an input current (shown by the dark
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`green arrow.)” Id. at 45. Fig. 6, however, is a different embodiment of a hybrid
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`switching amplifier that employs a third-order ripple filter and current feedback not
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`included in Fig. 5 and replaces the summer and integrator of Fig. 5 with a
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`combined “summing circuit and integrator” that has three inputs instead of two and
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`operates in a different manner.
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`In fact, Kwak specifically distinguishes the embodiment of Fig. 6 from the
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`embodiment of Fig. 5, as follows:
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`16
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`
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`Fig. 6 shows the detailed circuit of the hybrid switching amplifier.
`In CMOS design, although three voltage signals can be added and
`then integrated as shown in Fig. 4 and 5, the simultaneous summation
`and integration of the signals at the node Vc, after the conversion of
`the three voltage signals into current ones, is advantageous, that is, the
`sensed output current of the linear amplifier, the feedforward current,
`and the high-frequency current through the ripple filter are added
`together and integrated at the node with the inverted polarity of the
`last one.
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`Ex. 1211 (Kwak) at 2669 (emphasis added). As demonstrated above, Kwak
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`discloses that Fig. 5 illustrates a hybrid switching amplifier with a feedforward
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`path only. The Petition’s reliance on Fig. 6, which includes additional and
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`different components, to conclude that the driver AF in Fig. 5 supplies an offset
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`current that is added to the sensed signal by the summing circuit ∑ is therefore
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`incorrect. Further, the above quotation also discloses that the circuit shown in
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`Fig. 6 “is advantageous” as compared to the embodiment shown in Fig. 5 because,
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`among other reasons, Fig. 6 employs the high-frequency current through the ripple
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`filter and a different approach to summing. Figs. 5 and 6 of Kwak are therefore
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`separate embodiments. Positing an anticipation ground based on two different
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`embodiments, Petitioner was required to show that a POSA “would at once
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`envisage the claimed arrangement or combination.” Biscotti, Inc., 878 F.3d at
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`1069. Nonetheless, Petitioner does not even allege that a POSA would have
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`
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`17
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`
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`envisaged the combination, let alone explain why or how. As with the petition in
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`Biscotti, Intel’s bare-bones allegations fail to provide any information on how a
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`POSA would understand that Kwak’s separate embodiments of Figs. 5 and 6
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`anticipate claim 15. See 878 F.3d at 1074. Thus, Petitioner has failed to meet (and
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`has failed to attempt to meet) their burden of proof that a POSA would at once
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`envisage the claimed invention. Id. at 1069.
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`
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`The Petition proposes only that independent claim 15 is anticipated by Kwak
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`under 35 U.S.C. § 102. Therefore, whether or not claim 15 is somehow obvious
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`over the combination of Kwak’s Fig. 5 and 6 is not relevant to the grounds set forth
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`in the Petition. Nonetheless, the Petition completely fails to address Kwak’s
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`distinction between the Fig. 5 and Fig. 6 embodiments, and thus fails to provide
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`any rationale as to why the POSA would combine these different embodiments.
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`Therefore, even if the obviousness of claim 15 in view of Kwak were properly
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`before this Board (which it is not), a finding of obviousness cannot be supported by
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`the Petition.
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`
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`A patent may be found obvious in view of a single reference, only “if it
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`would have been obvious to modify that reference to arrive at the patented
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`invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016).
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`In Arendi, the Federal Circuit explained that it is Petitioner’s burden “to provide
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`more than a mere scintilla of evidence” that common sense would have “evidently
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`18
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`
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`and indisputably” supplied the utility of the alleged modification. 832 F.3d at 1365.
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`Here, Petitioner fails to provide even an assertion that anything, common sense or
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`otherwise, would motivate a POSA to modify Kwak’s Fig. 5 embodiment with
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`Kwak’s Fig. 6 embodiment (or vice versa).
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`
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`For at least these additional reasons, Intel has failed to establish anticipation
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`of independent claim 15. Because all grounds set forth in the Petition rely on the
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`anticipation allegations against claim 15, the entire Petition should be denied.
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`V. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER
`35 U.S.C. § 314(a) TO DENY INSTITUTION
`Filing four separate petitions against the same patent, as Intel has done here,
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`is an attempt to circumvent the Supreme Court’s Ruling in SAS Institute v. Iancu,
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`and the Board should therefore exercise its broad discretion to deny institution
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`under 35 U.S.C. § 314(a).
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`Shortly after the Supreme Court’s SAS decision, the Patent Office decided
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`that, if it instituted an IPR, it would do so not only on all claims, as is clearly
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`required by SAS, but also “on all challenges raised in the petition.” See PTAB
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`“Guidance on the Impact of SAS on AIA Trial Proceedings,” April 26, 2018
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`(https://www.uspto.gov/sites/default/files/documents/guidance_on_the_impact_of_
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`sas_on_aia_trial_proceedings_%20(april_26,_2018).pdf). The Federal Circuit has
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`since ratified that stance, explaining that “equal treatment of claims and grounds
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`for institution purposes has pervasive support in SAS.” Adidas AG v. Nike, Inc.,
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`
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`19
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`
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`894 F.3d 1256, 1258 (Fed. Cir. 2018) (quoting PGS Geophysical AS v. Iancu, 891
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`F.3d 1354, 1360 (Fed. Cir. 2018). During its April 30, 2018, Chat with the Chief
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`presentation, then PTAB Chief Judge Ruschke cautioned that the presence of weak
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`grounds in a petition could result in a complete denial of institution even if other
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`unpatentability allegations met the threshold for institution.1 Realizing that weak
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`positions could jeopardize an entire petition, the Petitioner has divided its
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`challenges to the ’558 patent claims that would normally fit into one or two
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`petitions, hoping to increase its odds of institution.
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`But petition filing tactics that unduly multiply the number of proceedings are
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`ripe for exercise of the PTAB’s discretion under 35 U.S.C. § 314(a). See American
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`Honda Motor Co., Inc. v. Intellectual Ventures II LLC, IPR2018-00349, Paper 9 at
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`21 (PTAB, June 27, 2018). This discretion under § 314(a) is “guided by the
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`statutory requirement [to consider] the efficient administration of the Office [and]
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`the ability of the Office to timely complete proceedings.” Tittex International, Ltd.
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`V. Precision Fabrics Group, Inc., IPR2015-01671, Paper 7 at 6 (PTAB, Feb. 11,
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`2016) (citing 35 U.S.C. § 316(b)). Needless duplication of proceedings is certainly
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`1 See “Chief Judge Guidance: SAS Impact, Motions to Amend, and Claim
`Construction,” PTAB Litigation Blog,
`June 5, 2018,
`available
`at:
`http://www.ptablitigationblog.com/chief-judge-guidance-sas-impact-motions-to-
`amend-and-claim-construction/ (“Instead, the panel would evaluate the challenges
`and determine whether, in the interests of efficient administration of the USPTO
`and integrity of the patent system (see 35 USC § 316(b)), the entire petition should
`be denied under 35 USC § 314(a).”)
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`20
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`not in the interests of “efficient administration of the Office” nor does it promote
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`“the ability of the Office to timely complete proceedings.”
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`Instead, such tactics unnecessarily multiply the amount of material that the
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`Board and patent owner must traverse to assess the patentability of the ’558 Patent
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`claims. Patent owner is now tasked with the expense of analyzing and responding
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`to four petitions at the preliminary, and possibly trial phases, for no reason beyond
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`Petitioner’s game playing to try to avoid the Supreme Court’s SAS edict. Just as
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`“[m]ultiple, staggered petitions challenging the same patent and same claims raise
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`the potential for abuse” in the General Plastic context, the same is true in the SAS
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`context, where Board and patent owner resources are pointlessly wasted solely to
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`increase petitioner’s perceived institution odds.
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`Petitioner provides no explanation for its convoluted filing strategy and why
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`it requires 56,000 words (4 * 14,000) to make its case that 20 claims of the ’558
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`Patent are unpatentable. The Board has repeatedly instructed petitioners to explain
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`off-nominal filing strategies to avoid the PTAB’s exercise of its § 314(a) discretion.
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`See, Alere Inc. v. Rembrandt Diagnostics, LP, IPR2017-01130, Paper 10 at 10
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`(PTAB, Sept. 28, 2017) (“[A] petitioner should explain why the second review
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`proceeding is appropriate. Petitioner provides no such reasoning here. Thus, we
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`find this factors weighs strongly in favor of non-institution.”); see also, General
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`Plastic factor (5).
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`21
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`Petitioner’s ruse to circumvent a Supreme Court directive should not be
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`entertained.
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` Petitioner, without explanation, gratuitously duplicates
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`the
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`proceedings, increasing Board and patent owner burdens. The PTAB has broad
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`discretion to deny petitions that exhibit abusive tactics under 35 U.S.C. § 314(a).
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`The Board should exercise that discretion here in the interests of efficient operation
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`and integrity of the Office.
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`22
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`VI. CONCLUSION
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`Under 35 U.S.C. § 314(a), the burden is placed on the Petitioner to meet the
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`minimum statutory threshold for instituting a trial. Intel falls short of meeting its
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`burden. In sum, the Petition fails to establish a reasonable likelihood that any claim
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`of the ’558 Patent is unpatentable. Therefore, the Board should deny Intel’s petition
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`and not institute proceedings in this matter.
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`
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`Respectfully submitted,
`
`Date: _November 7, 2018___
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`By:_/Joseph M. Sauer/___________
`Joseph M. Sauer, Reg. No. 47,919
`David B. Cochran, Reg. No. 39,142
`David M. Maiorana, Reg. No. 41,449
`JONES DAY
`North Point, 901 Lakeside Avenue
`Cleveland, OH 44114
`(216) 586-3939
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`Matthew W. Johnson, Reg. No. 59,108
`Joshua R. Nightingale, Reg. No. 67,865
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
`
`23
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`
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`CERTIFICATE OF COMPLIANCE
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`I, the undersigned, certify that the above Patent Owner Preliminary
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`Response complies with the applicable type-volume limitations of 37 C.F.R.
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`§ 42.24 (b)(1). This Preliminary Response, including footnotes, contains 4,418
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`words, as counted by the word count function of Microsoft Word. This is less than
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`the limit of 14,000 words as specified by 37 C.F.R. § 42.24(a)(i).
`
`
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`Date: November 7, 2018
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`
`
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`
`
`/ Joseph M. Sauer /
`Joseph M. Sauer
`JONES DAY
`901 Lakeside Avenue
`Cleveland, OH 44114
`Tel: (216) 586-7506
`
`Counsel for Patent Owner
`
`
`
`
`
`-i-
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`
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`CERTIFICATE OF SERVICE
`
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`The undersigned hereby certifies
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`that a copy of
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`the
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`foregoing
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`PRELIMINARY PATENT OWNER RESPONSE TO PETITION FOR INTER
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`PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.107 was served on
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`November 7, 2018 by email, as follows:
`
`David Cavanaugh, Esq.
`david.cavanaugh@wilmerhale.com
`Richard Goldenberg, Esq.
`richard.goldenberg@wilmerhale.com
`Nina Tallon, Esq.
`nina.tallon@wilmerhale.com
`Joseph Mueller, Esq.
`joseph.mueller@wilmerhale.com
`Todd Zubler, Esq.
`todd.zubler@wilmerhale.com
`Kathryn Zalewski, Esq.
`kathryn.zalewski@wilmerhale.com
`Theodoros Konstantakopoulos, Esq.
`theodoros.konstantakopoulos@wilmerhale.com
`
`Date: November 7, 2018
`
`
`
`/ Joseph M. Sauer /
`Joseph M. Sauer
`JONES DAY
`901 Lakeside Avenue
`Cleveland, OH 44114
`Tel: (216) 586-7506
`Counsel for Patent Owner
`
`
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`
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