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.
`_______________
`
`IPR2018-01240
`Patent 8,698,558 B2
`_______________
`
`Before TREVOR M. JEFFERSON, SCOTT B. HOWARD, and
`AARON W. MOORE, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Denying 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.
`_______________
`
`IPR2018-01240
`Patent 8,698,558 B2
`_______________
`
`Before TREVOR M. JEFFERSON, SCOTT B. HOWARD, and
`AARON W. MOORE, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request on
`Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`IPR2018-01240
`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 not shown that independent
`claim 10 of U.S. Patent No. 8,698,558 B2 (“the ’558 patent,” Ex. 1301) is
`unpatentable as obvious over Chu,1 Choi 2010,2 and Hanington,3 but had
`shown that dependent claim 11 (which depends from claim 10) is
`unpatentable as obvious over Chu, Choi 2010, Hanington, and Myers.4
`Paper 30 (“Dec.”), 25–26
`Qualcomm Incorporated (“Patent Owner”) filed a rehearing request
`arguing that the ground for obviousness for dependent claim 11 was not
`properly advanced in the Petition. Paper 31 (“Req. Reh’g”) 1. For the
`reasons discussed below, we deny Patent Owner’s Request for Rehearing.
`
`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 Wing-Yee Chu, et al., A 10 MHz Bandwidth, 2 mV Ripple PA Regulator for
`CDMA Transmitters, IEEE JOURNAL OF SOLID-STATE CIRCUITS 2809–2819
`(2008) (Ex. 1304, “Chu”).
`2 Jinsung Choi, et al., Envelope Tracking Power Amplifier Robust to
`Battery Depletion,” MICROWAVE SYMPOSIUM DIGEST (MTT), 2010
`IEEE MTT-S INTERNATIONAL 1074–1077 (2010) (Ex. 1307, “Choi 2010”).
`3 Gary Hanington, et al., High-Efficiency Power Amplifier Using Dynamic
`Power-Supply Voltage for CDMA Applications, IEEE TRANSACTIONS ON
`MICROWAVE THEORY AND TECHNIQUES 47:8 (1999) (Ex. 1325,
`“Hanington”)
`4 Myers, et al., U.S. Patent No. 5,929,702 (Ex. 1312, “Myers”).
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`IPR2018-01240
`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 that the Board erred by applying findings for
`dependent claim 11 that directly contradict the findings for independent
`claim 10. Req. Reh’g 1–2. Specifically, Patent Owner argues the Board
`found that Petitioner failed to show that Chu, Choi 2010, and Hannington
`would have rendered claim 10 obvious, but with respect to claim 11
`erroneously concluded that “Petitioner provides sufficient and persuasive
`evidence mapping the structures and functions of Chu, Choi 2010, and
`Hanington to the apparatus and means-plus-function limitations of claim
`10.” Req. Reh’g 2 (quoting Dec. 18). Patent Owner argues that, contrary to
`the Board’s Decision, Patent Owner directly contested Petitioner’s mapping
`of claim 10 to the asserted prior art. Req. Reh’g 2.
`We disagree with Patent Owner’s contention. Our determination with
`respect to claim 10 was based on the claim interpretation for “a P-channel
`metal oxide semiconductor (PMOS) transistor [having] . . . a source that
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`IPR2018-01240
`Patent 8,698,558 B2
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`receives the boosted supply voltage or the first supply voltage” in claim 10,
`which we construed as requiring a selective boost. Dec. 13–14 (finding
`selective boost). Petitioner’s evidence and argument for claim 10 showed
`the availability of either a boosted voltage or a first supply voltage (see Dec.
`11–14), but failed to “address whether the PMOS transistor source of the
`prior art is capable of receiving selectively the boosted supply voltage or the
`first supply voltage.” Dec. 16–17.
`Our determination was based on the Petition’s failure to address the
`selective boost claim construction at all with respect to claim 10. Id.
`Petitioner failed to address this construction because Petitioner asserted that
`claim 10 alone contained a conditional “or” in the source limitation such that
`only one voltage was required to meet claim 10 and not a selective choice
`between two voltages. Dec. 12 (citing Paper 19 (“Pet. Reply”) 3–9). With
`respect to claim 11, however, Petitioner addressed the specific selective
`boost requirement by claim 11, arguing that Myers in combination with Chu
`and Choi 2010 taught the selective operation to choose either the boosted or
`battery voltages. Dec. 18–19; Paper 3 (“Petition” or “Pet.”) 72–74; Ex. 1303
`¶ 135 (Declaration of Dr. Alyssa Apsel).
`Patent Owner’s challenge to the mapping of Chu, Choi 2010, and
`Hannington to claim 10 addressed the failure to address whether these
`references taught a selective boost. See Req. Reh’g 2 (citing PO Resp. 21–
`31). In contrast to claim 10, claim 11 expressly introduced the capability
`that “either the boosted supply voltage of the first supply voltage” be
`selectively available to generate the second voltage which Petitioner
`addressed directly. Ex. 1301, 12:46–50. On the full record, our Decision
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`IPR2018-01240
`Patent 8,698,558 B2
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`found Petitioner’s evidence and argument mapped the limitations and
`persuasively asserted that Myers combined with Chu and Choi 2010 taught
`the selective choice between voltages as recited in dependent claim 11.
`Dec. 18–19; Pet. 73–74; Ex. 1303 ¶ 135. In sum, Petitioner’s arguments
`with respect to Myers in view of the selective voltage limitations of claim 11
`and limitations of claim 10 demonstrated that Myers addressed the selective
`boost limitation missing from the claim 10 analysis.
`We disagree with Patent Owner’s argument that the Board’s finding
`with respect to claim 11 cannot be squared with the opposite finding for
`claim 10. Req. Reh’g 2. The Petition guides the proceeding. See
`Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1335–36 (Fed. Cir.
`2020). In the present case, Petitioner argued that claim 10 did not require a
`selective boost and the Petition failed to set forth sufficient analysis to
`support that Chu, Choi 2010, and Hanington met the selective boost
`requirement for claim 10. Dec. 12–14, 16–17; Pet. Reply 3–9. This same
`deficiency was not present in the ground addressing claim 11, as the Petition
`persuasively argued that the voltage selection was required in claim 11 and
`applied additional art, Myers, to support this limitation. See Dec. 18–19;
`Pet. 73–74; Ex. 1303 ¶ 135.
`We also disagree with Patent Owner that “the Board is applying [an]
`analysis of the combination of Myers with Chu and Choi 2010 to the
`selective boost limitation of independent claim 10, [and] this is a different
`legal theory that was never advanced by Petitioner.” Req. Reh’g 3.
`Petitioner argued independent claim 10 differently from claim 11, asserting
`that claim 10 did not require a selective boost. Dec. 10–14, 16–17; Pet. 51–
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`IPR2018-01240
`Patent 8,698,558 B2
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`72. For claim 11, the record shows that Petitioner asserts that claim 10 as
`modified by dependent claim 11 expressly requires a selective boost and
`provides evidence that Myers in combination with Chu and Choi 2010 teach
`the selective voltage limitation. Dec. 18–19; Pet. 51–70, 72–74; Ex. 1303
`¶¶ 134–135.
`Patent Owner further contends that
`Petitioner unequivocally advanced the position that “regarding
`claim 10, Chu combined with Choi 2010 and Hanington
`discloses the apparatus of claim 10.” (Petition at 72).
`Petitioner’s obviousness theory did not include Myers for the
`“means for generating the second supply voltage” limitation.
`Thus, to the extent the Board relied upon Myers for the “means
`for generating the second supply voltage” limitation, the Board
`misapprehended Petitioner’s obviousness theory
`Req. Reh’g 4. We do not agree. First, the Petition’s deficiency with respect
`to the claim 10 ground was not based on the “means for generating a second
`supply voltage based on the envelope signal and the boosted supply voltage”
`limitation of claim 10, but the failure to address whether or how Chu, Choi
`2010 and Hanington taught or suggested the selective boost construction
`based on the source limitation claim construction for claim 10. Dec. 10–14,
`16–17. Second, our Final Written Decision did not rely on the Petition
`demonstrating that Myers taught the generating the second supply voltage
`limitation, but found instead that Chu, Choi 2010, and Hanington combined
`with Myers teaches an amplifier that would selectively choose either the
`boosted voltage in Choi 2010 or the battery supply voltage in Chu and
`generate the second supply voltage based on either of those voltages.
`Dec. 18–19; Pet. 73–74; Ex. 1303 ¶ 135.
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`IPR2018-01240
`Patent 8,698,558 B2
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`Finally, we are not persuaded that the Board’s determination with
`respect to the obviousness of claim 11 deprived Patent Owner of sufficient
`notice and an opportunity to address the theory. Req. Reh’g 4–5 (citing
`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015). As
`discussed above, the Petition addressed the claim 11 using the selective
`boost construction applied to claim 10. The Petition and supporting
`testimony presented evidence and argument that claim 11 required a
`selection function, and that the additional reference, Myers, introduced this
`feature in conjunction with the voltages disclosed in Chu and Choi 2010.
`Pet. 73–74; Ex. 1303 ¶ 135. Accordingly, we do not agree with Patent
`Owner that Petitioner did not provide any argument or analysis directed to
`the combination with Myers in its Petition in relation to claim 11. Thus, we
`are persuaded that Patent Owner had sufficient notice of Petitioner’s
`obviousness position regarding claim 11.
`
`Denied
`
`Granted
`
`IV. CONCLUSION
`Patent Owner has not persuaded us that the Decision was contrary to
`governing law, or that we misapprehended or overlooked any matter.
`Accordingly, we see no reason to modify our Final Written Decision.
`
`Outcome of Decision on Rehearing:
`Claims
`35 U.S.C
`Reference(s)/Basis
`§
`103(a)
`
`Chu, Choi 2010,
`Hanington, Myers
`
`11
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`11
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`IPR2018-01240
`Patent 8,698,558 B2
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`Claims
`
`Reference(s)/Basis
`
`10
`
`11
`
`
`
`Overall
`Outcome
`
`
`Final Outcome of Final Written Decision after Rehearing:
`35
`Claims
`U.S.C.
`Shown
`§
`Unpatentable
`102(b) Chu, Choi 2010,
`
`Hanington,
`103(a) Chu, Choi 2010,
`Hanington, Myers
`
`
`Claims Not
`Shown
`Unpatentable
`10
`
`
`
`10
`
`11
`
`11
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
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`IPR2018-01240
`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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