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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`Intel Corporation
`Petitioner
`
`v.
`
`Qualcomm Incorporated
`Patent Owner
`______________________
`
`Case IPR2018-01240
`Patent 8,698,558
`______________________
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`PATENT OWNER’S SUR-REPLY
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`II. GROUND I SHOULD BE DISMISSED BECAUSE CLAIM 10
`REQUIRES A SELECTIVE BOOST ............................................................. 2
`A.
`Petitioner’s Reliance On Judge Sabraw’s Order Is Misguided ............. 3
`B.
`The Broadest Reasonable Interpretation Cannot Be So Broad As To
`Include Contradicting Embodiments ..................................................... 5
`C. Dr. Apsel’s Testimony Supports Patent Owner’s Construction ........... 7
`III. GROUND II SHOULD BE DISMISSED BECAUSE PETITIONER
`FAILED TO DEMONSTRATE A SUFFICIENT MOTIVATION TO
`COMBINE CHU, CHOI 2010, HANINGTON, AND MYERS ................... 11
`IV. GROUNDS I AND II SHOULD BE DISMISSED BECAUSE
`PETITIONER FAILED TO DEMONSTRATE A SUFFICIENT
`MOTIVATION TO COMBINE CHU AND CHOI 2010 ............................. 14
`CONCLUSION .............................................................................................. 17
`
`V.
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`
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`-i-
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`I.
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`INTRODUCTION
`Petitioner’s Reply introduces unpersuasive arguments that cannot salvage the
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`shortcomings of its Petition. To support its flawed claim construction for the claim
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`10 limitation of “a P-channel metal oxide semiconductor (PMOS) transistor
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`[having]…a source that receives the boosted supply voltage or the first supply
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`voltage,” Petitioner mischaracterizes the opinion of District Court Judge Sabraw,
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`twists the testimony of its own expert, Dr. Apsel, and ignores fundamental Federal
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`Circuit case law. The broadest reasonable interpretation of this claim limitation,
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`when properly read in the context of the respective claim as a whole, requires a
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`selective boost. Because Ground I is based only on Petitioner’s incorrect
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`construction, the Board should dismiss Ground I.
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`The Board should also dismiss Grounds I and II because Petitioner fails to
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`establish a sufficient motivation to combine Chu, Choi 2010, and Hanington
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`(Ground I) and Chu, Choi 2010, Hanington, and Myers (Ground II). First, as detailed
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`in the Patent Owner’s Response (“POR”) (Paper 16 at 31-37), the Petition failed to
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`explain how a person of ordinary skill in the art (“POSA”) would combine Chu and
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`Choi 2010 without destroying the benefits of one or the other. Petitioner’s Reply,
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`for the first time, relies on examples and testimony relating to switching between
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`power sources as support for how a POSA would allegedly combine Chu and Choi
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`2010. But no such argument was included in the Petition, and the Board should
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`
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`1
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`
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`therefore disregard Petitioner’s attempt to belatedly back-fill its Petition with a new
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`motivation to combine argument. See Ariosa Diagnostics v. Verinata Health Inc.,
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`805 F.3d 1359, 1367 (Fed. Cir. 2015) (“challenger obliged to make an adequate case
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`in its Petition and the Reply limited to a true rebuttal role”).
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`Second, Petitioner is unable to articulate any legitimate reason why a POSA
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`would modify the constant boosted supply voltage of Choi 2010 based on Myers.
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`Instead, Petitioner improperly relies on teachings from the ’558 Patent itself as a
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`roadmap for arriving at the claimed invention, and in doing so ignores Choi 2010’s
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`disclosure that it must always operate using a constant boosted voltage. This is a
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`classic instance of impermissible hindsight reconstruction and cannot give rise to a
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`motivation to combine.
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`For at least these reasons, the Board should confirm the patentability of claims
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`10-11 of the ’558 Patent.
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`II. GROUND I SHOULD BE DISMISSED BECAUSE CLAIM 10
`REQUIRES A SELECTIVE BOOST
`As Patent Owner explained in its Patent Owner Response, the claim 10
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`
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`limitation of “a P-channel metal oxide semiconductor (PMOS) transistor
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`[having]…a source that receives the boosted supply voltage or the first supply
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`voltage” is properly interpreted to require a selective boost. In its Reply, Petitioner
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`ignores Patent Owner’s arguments and instead focuses on claim 6, a different claim
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`with different limitations. As explained below, the District Court’s Order with
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`2
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`respect to claims 6-7 has no bearing on claim 10, and Petitioner’s proposed
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`constructions for claim 6 and claim 10 suffer from the same legal error – they
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`improperly render other claim limitations meaningless. Accordingly, the Board
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`should find that the broadest reasonable interpretation of the claim 10 limitation
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`quoted above requires a selective boost.
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`A.
`Petitioner’s Reliance On Judge Sabraw’s Order Is Misguided
`Petitioner relies on Judge Sabraw’s Markman Order to support its proposed
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`construction that claim 10 does not require a selective boost. Petitioner’s reliance
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`on Judge Sabraw’s Order is misguided. The Court was presented with proposed
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`constructions for the term “based on,” as it appears in claim 7, which depends from
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`claim 6. Claims 6 and 7 contain numerous claim limitations relevant to Judge
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`Sabraw’s Order that are not present in claim 10. Moreover, footnote 2 of the Order
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`makes clear that the Court’s opinion applied only to the context of claim 7, and
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`therefore does not apply to any other claims.
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`Furthermore, Petitioner mischaracterizes Judge Sabraw’s Order as reaching a
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`conclusion that it plainly does not reach. Contrary to Petitioner’s assertion, Judge
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`Sabraw did not “hold[] the limitation ‘a source receiving the boosted supply voltage
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`or the first supply voltage’ in claim 6 does not require ‘selective boost.’” Paper 19
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`at 4. Judge Sabraw’s Order says nothing of the sort. Instead, Judge Sabraw
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`incorrectly concluded that claim 7 was indefinite based on a misunderstanding that
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`3
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`claim 7 expanded the scope of claim 6, rather than limiting it.1 Tellingly, Petitioner
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`does not cite to any particular passage in support of its characterization of Judge
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`Sabraw’s Order, and instead cites only generally to the entire discussion. But the
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`general discussion includes no such analysis or conclusion regarding selective boost,
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`and more importantly, does not address the same claim term as disputed in the
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`present challenge.
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`Additionally, Petitioner is wrong in asserting that claim 7 adds nothing over
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`claim 6 if claim 6 is construed to require a selective boost. Claim 7 recites “the
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`supply generator is operative to generate the second supply voltage based on the
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`envelope signal and either the boosted supply voltage or the first supply voltage.”
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`This limitation further narrows the scope of claim 6 by adding an additional mode
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`of operation: the supply generator can generate the second supply voltage based on
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`the envelope signal and the boosted supply voltage, or can generate the second
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`supply voltage based on the envelope signal and the first supply voltage. Contrary
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`to Petitioner’s assertions, this represents an additional and more limiting feature,
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`similar to a cell phone that may have operated on a 3G network, and was then
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`improved to be able to operate on 3G and 4G networks. In this example, the phone
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`1 Petitioner apparently agrees that claim 7 is more limiting than claim 6. Paper 19
`at 6 (“It is therefore that additional language appearing in claim 7 (which does not
`appear in either claim 6 or 10) that adds a requirement for the amplifier to be able
`to select between ‘either’ the boosted voltage ‘or’ the first supply voltage.”)
`(emphasis added).
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`4
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`
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`must be capable of operating on both networks (an additional feature), but only needs
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`to operate on one at a given time. When a dependent claim adds an additional feature
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`or functionality not present in the independent claim, then the dependent claim
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`narrows the scope of the independent claim. See Phillips v. AWH Corp., 415 F.3d
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`1303, 1324-25 (Fed. Cir. 2005).
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`B.
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`The Broadest Reasonable Interpretation Cannot Be So Broad As
`To Include Contradicting Embodiments
`Patent Owner’s construction requiring a selective boost is consistent with the
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`
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`black-letter law that “[i]t is highly disfavored to construe terms in a way that renders
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`them void, meaningless, or superfluous.” Wasica Finance GmbH v. Continental
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`Automotive Sys., Inc., 853 F.3d 1272, 1288 n.10 (Fed. Cir. 2017). As Patent Owner
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`explained in its POR, Petitioner’s proposed construction renders certain claim terms
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`void, meaningless, or superfluous, and therefore cannot be the correct construction.
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`Patent Owner’s proposed construction is the broadest reasonable interpretation
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`supported by the specification that gives life to each claim term.
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`
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`Petitioner criticizes Patent Owner’s construction as improperly limiting the
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`claim to a specific embodiment. In particular, Petitioner argues that the claim must
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`be construed to include an embodiment where “‘the entire envelope tracker is
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`operated based on the VBoost voltage from boost converter 180’ alone.” Paper 19
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`at 6. But an embodiment where the entire envelope tracker is operated based only
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`on the boosted voltage is a different and incompatible embodiment to one where the
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`5
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`envelope tracker may operate selectively based on a first voltage or a boosted
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`voltage. It is impossible for an envelope tracker to both always operate based on a
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`boosted voltage, while also only sometimes operating based on a boosted voltage.
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`Petitioner cites no authority requiring that claims be construed to cover all
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`embodiments, nor could it. The Federal Circuit makes clear that “[i]t is not
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`necessary that each claim read on every embodiment.” Baran v. Med. Device Techs.,
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`Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010). See also PPC Broadband, Inc. v.
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`Corning Optical Commc'ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016)
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`(recognizing no requirement that “each and every claim ought to be interpreted to
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`cover each and every embodiment”). Moreover, “the fact that one construction may
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`cover more embodiments than another does not categorically render that
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`construction reasonable.” PPC Broadband, 815 F.3d at 755.
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`
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`If Patent Owner intended for claim 10 to cover an embodiment where “the
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`entire envelope tracker is operated based on the VBoost voltage from boost converter
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`180” alone, then Patent Owner would have used language to that effect. Instead,
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`claim 10 unequivocally relates to the disclosed selective boost embodiment. See
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`Paper 16 at 23-30. Petitioner’s arguments are contrary to established Federal Circuit
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`precedent and the intrinsic record.
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`
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`6
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`
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`C. Dr. Apsel’s Testimony Supports Patent Owner’s Construction
`Petitioner’s attempt to diminish Dr. Apsel’s testimony fails to substantively
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`address Patent Owner’s argument that a selective boost is the only reasonable
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`interpretation that gives meaning to all claim terms. See Digital-Vending Servs.
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`Int'l., LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (“claims
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`are interpreted with an eye toward giving effect to all terms in the claim.”); Wasica
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`Finance, 853 F.3d at 1288 n.10 (Fed. Cir. 2017) (“[i]t is highly disfavored to
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`construe terms in a way that renders them void, meaningless, or superfluous.”); In
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`re Danly, 46 C.C.P.A. 792, 263 F.2d 844, 847 (1959) (limiting claims to require that
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`the claimed device actually be connected to an alternating current source because,
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`although the claims “do not positively recite a source of alternating current as an
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`element of the claims,” any other interpretation would render certain language in the
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`claims meaningless).
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`Petitioner’s proposed construction seeks to construe a single claim term
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`without reference to the rest of the claim language. Petitioner makes much of the
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`word “or,” and attempts to frame Patent Owner’s argument as contrary to the
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`common understanding of “or.” But Petitioner and Dr. Apsel entirely ignore the
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`central premise of Patent Owner’s argument: that claim terms must be read as a
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`whole and construed so as to avoid rendering other claim terms meaningless. As
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`Patent Owner explained in its POR, “despite the claim’s inclusion of the conjunction
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`7
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`‘or,’ the ‘boosted supply voltage’ and the ‘first supply voltage’ are not alternative
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`options – the claimed PMOS source must be capable of receiving both.” Paper 16
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`at 26.
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`The claim as a whole makes evident that both the first supply voltage and the
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`boosted supply voltage are required in the claims and are not merely alternative
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`options. In her depositions, Dr. Apsel was asked about certain limitations in the
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`context of claim 6, a claim that Petitioner challenges in related case IPR2018-01153.
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`Claim 6 recites “a supply generator operative to receive an envelope signal and a
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`first supply voltage, to generate a boosted supply voltage having a higher voltage
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`than the first supply voltage, and to generate a second supply voltage for the power
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`amplifier based on the envelope signal and the boosted supply voltage . . . .”2 Claim
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`6 goes on to recite that the supply generator “incorporates . . . a P-channel metal
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`oxide semiconductor (PMOS) transistor having a gate receiving a first control signal,
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`a source receiving the boosted supply voltage or the first supply voltage, and a drain
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`providing the second supply voltage . . . .”3
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`2 Similarly, claim 10 recites “means for generating a boosted supply voltage based
`on a first supply voltage, the boosted supply voltage having a higher voltage than
`the first supply voltage,” and “means for generating a second supply voltage based
`on the envelope signal and the boosted supply voltage . . . .” Ex. 1301 at claim 10.
`3 Similarly, claim 10 recites “a P-channel metal oxide semiconductor (PMOS)
`transistor that receives the first control signal, source that receives the boosted
`supply voltage or the first supply voltage, and a drain providing the second supply
`voltage . . . .” Ex. 1301 at claim 10.
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`8
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`These claim elements reveal that the supply generator is operative to generate
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`a boosted supply voltage and generate a second supply voltage based on the envelope
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`signal and the boosted supply voltage. Furthermore, these elements require a drain
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`of a PMOS transistor that provides the second supply voltage, which is generated
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`based on the envelope signal and the boosted supply voltage. There can be no
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`dispute that these elements are required by claim 6.
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`Notwithstanding the language of claim 6, Petitioner proposes that the PMOS
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`source need only be capable of receiving a first supply voltage or a boosted supply
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`voltage, and that only one needs to be present. This construction cannot be correct
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`as it would render the above-cited claim elements meaningless. If the source need
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`only receive a first supply voltage, then the drain of the PMOS transistor would
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`never be able to provide a second supply voltage, which is based on the envelope
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`signal and the boosted supply voltage. Thus, the only reasonable construction is that
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`the source must be capable of receiving both the first supply voltage and the boosted
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`supply voltage, and then selectively operates based on one or the other at a given
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`time. When asked about these claim elements, Petitioner’s expert previously agreed
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`that it makes sense to interpret claim 6 as requiring a boosted supply voltage to be
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`an available supply voltage received by the source of the PMOS transistor. Ex. 2003
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`at 42:19-43:6. When pressed if she could interpret it any other way, Dr. Apsel
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`9
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`responded “I’m not sure.” Id. at 43:7-8. See also Ex. 2004 at 25:8-31:9 (agreeing
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`that “[t]here must be a boosted supply voltage somewhere” for claim 6 to function).
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`The same analysis applies with equal force in the context of claim 10. Claim
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`10 requires means for generating a boosted supply voltage and generating a second
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`supply voltage based on the envelope signal and the boosted supply voltage.
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`Furthermore, claim 10, like claim 6, requires a drain of a PMOS transistor that
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`provides the second supply voltage, which is generated based on the envelope signal
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`and the boosted supply voltage. Thus, the only reasonable interpretation is that the
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`claimed PMOS source in claim 10, like in claim 6, must be capable of receiving both
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`voltage inputs, and selectively choose which one to use. In other words, despite the
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`claim’s inclusion of the conjunction “or,” the “boosted supply voltage” and the “first
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`supply voltage” are not alternative options.
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`Petitioner’s Reply seeks to undo Dr. Apsel’s testimony but fails to rebut Patent
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`Owner’s argument that the claim term must be construed in the context of the claim
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`as a whole. Petitioner instead offers a misguided “coffee or tea” analogy, which
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`only highlights Petitioner’s fundamental error in its proposed claim construction. At
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`his deposition, Patent Owner’s expert testified that in the “hypothetical abstract
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`outside the bounds of the ’558” Patent, giving a person tea could satisfy a request
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`for “coffee or tea.” Ex. 1330 at 130:19-131:2. But the analogy entirely ignores
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`Patent Owner’s argument. Extending the analogy to more accurately represent the
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`10
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`fact pattern, a restaurant must have both coffee and tea as available options to choose
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`from. Then, when a customer states “give me coffee or tea,” the request can be
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`satisfied by giving the customer tea. Petitioner’s original analogy, like their
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`proposed claim construction, continues to ignore that the claim as a whole requires
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`both options to be available before the selection is made.
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`Accordingly, for the reasons above, Petitioner’s reading of the claim 10
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`limitation in a purely alternative fashion is contrary to established Federal Circuit
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`precedent and inconsistent with the claim language as a whole. The broadest
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`reasonable interpretation of the claim 10 limitation requires a selective boost.
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`Because Petitioner concedes that Ground I is insufficient when properly construed
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`to require a selective boost, the Board should dismiss Ground I of the Petition.
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`III. GROUND II SHOULD BE DISMISSED BECAUSE PETITIONER
`FAILED TO DEMONSTRATE A SUFFICIENT MOTIVATION TO
`COMBINE CHU, CHOI 2010, HANINGTON, AND MYERS
`Petitioner presents no persuasive argument that substantively rebuts Patent
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`Owner’s argument that there is no motivation to combine Choi 2010 with a selective
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`boost.
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`First, Petitioner argues that Patent Owner is incorrect in arguing a “boost is
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`not merely a general preference [in Choi 2010]; Choi 2010 discloses no other manner
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`to achieve its objective of minimizing the degradation of output power.” In support,
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`Petitioner argues that Choi 2010 “in fact teaches using the boosted voltage to
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`
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`11
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`
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`‘achiev[e] the robust operation against the battery depletion.’” Paper 19 at 18. But
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`this passage in no way diminishes or negates Patent Owner’s argument that Choi
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`2010 discloses no other manner for achieving its objectives.
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`Moreover, Choi 2010 further discourages from making the proposed
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`modification because the battery voltage in Choi 2010 is never sufficient. Choi
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`2010’s battery voltage ranges from 2.8 to 4.2 volts. Choi 2010 further teaches that
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`its Power Amplifier must be capable of outputting 4.5 volts. Thus, to resolve this
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`issue, Choi 2010 always boosts the supply voltage to 5 volts, so that after accounting
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`for losses, the Power Amplifier will always receive a constant 4.5 volts. Ex. 1306
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`at 1335. Choi 2010 never operates, and could never adequately operate, based solely
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`on the battery voltage, which is lower than the required output voltage of the Power
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`Amplifier. Petitioner’s reliance on Choi 2010’s teaching of using a boosted voltage
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`to “achiev[e] the robust operation against the battery depletion” not only fails to
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`support Petitioner’s argument, it is additional support for Patent Owner’s argument
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`that Choi 2010 teaches no other manner for achieving its objectives.
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`Second, Choi 2010’s teachings go beyond merely stating a preference for
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`using a boosted voltage to minimize the impact of a degrading battery voltage.
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`Rather, Choi 2010 teaches no other way for achieving this goal, and in fact, Choi
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`2010 requires a boosted voltage in order to avoid output degradation even with a
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`fully charged battery. A POSA reading Choi 2010 would be discouraged from
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`12
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`
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`modifying Choi 2010’s core design consideration – using a constant boosted voltage
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`– because Choi 2010 cannot satisfactorily operate without a boosted voltage.
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`Third, Petitioner’s reliance on the ’558 Patent does not diminish the fact that
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`Choi 2010 must always use a constant boosted supply voltage, and never a selective
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`boost. As Patent Owner explained in its POR, the “inventor’s own path itself never
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`leads to a conclusion of obviousness; that is hindsight.” Otsuka Pharm. Co. v.
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`Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012). Moreover, Petitioner’s citations
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`are disingenuous, as Figure 2B relates to an older average power tracking technology
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`that is unrelated to the claimed selective boost.
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`Fourth, Petitioner continues to mischaracterize Patent Owner’s argument as
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`one of bodily incorporation. Patent Owner does not make a bodily incorporation
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`argument; Patent Owner explains that Petitioner’s naked conclusion – that it would
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`be a “‘common-sense notion’ to operate its hypothetical Chu/Choi 2010 combination
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`to select between a battery voltage and a boosted battery voltage based on Myers’
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`generic teaching of choosing a power source based on the amplitude of the envelope
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`signal” – is unsupported. Paper 16 at 46. Patent Owner explains that the
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`technologies of Myers differ drastically from those in Chu and Choi 2010, and the
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`proposed combination would require undue experimentation. Id. at 46-50.
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`Petitioner’s oversimplification of the problem solved by the ’558 Patent obscures
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`13
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`
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`the reality that Petitioner needed four references to make an obviousness argument
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`for selective boost, and still falls short.
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`Accordingly, for at least these reasons, Petitioner failed to establish a
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`motivation to combine Chu, Choi 2010, Hanington, and Myers. The Board should
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`therefore dismiss Ground II and confirm the patentability of claim 11.
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`IV. GROUNDS I AND II SHOULD BE DISMISSED BECAUSE
`PETITIONER FAILED TO DEMONSTRATE A SUFFICIENT
`MOTIVATION TO COMBINE CHU AND CHOI 2010
`In addition to failing to establish a motivation to combine Chu, Choi 2010,
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`
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`Hanington, and Myers, Petitioner has also failed to present a sufficient motivation
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`to combine the underlying Chu and Choi 2010 references. As Patent Owner
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`explained in its POR, a POSA would not have been motivated to combine Chu and
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`Choi 2010 because they address different problems with different solutions that are
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`in tension with each other. Paper 16 at 31-33. As such, their objectives conflict with
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`each other and require necessary trade-offs. Id. at 32-33.
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`Ground I relies only on Petitioner’s incorrect claim construction not requiring
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`a selective boost. Under this construction, Petitioner presented numerous motivation
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`to combine arguments that all fail to explain how a POSA would combine Chu and
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`Choi 2010 without destroying the benefits of one or the other. Petitioner’s Reply,
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`for the first time, relies on examples and testimony relating to switching between
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`power sources as support for how a POSA would combine Chu and Choi 2010. See
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`
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`14
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`
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`Paper 19 at 15-16. But the Petition included no such argument with respect to Chu
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`and Choi 2010. Therefore, the Board should disregard Petitioner’s attempt to
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`belatedly back-fill its Petition with a new motivation to combine argument. See
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`Intelligent Bio-Systems Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed.
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`Cir. 2016) (“[T]he expedited nature of IPRs bring with it an obligation for petitioners
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`to make their case in their petition to institute.” See also Ariosa Diagnostics v.
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`Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (“challenger obliged to
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`make an adequate case in its Petition and the Reply limited to a true rebuttal role”).
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`The Petition similarly provided no such argument in the context of the Chu,
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`Choi 2010, Hanington, and Myers combination of Ground II. That is, the Petition
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`never relied on switching between power sources as support for why a POSA would
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`combine Chu and Choi 2010, despite the fact that Petitioner then relied on Myers as
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`allegedly disclosing that limitation. Here too, the Board should disregard
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`Petitioner’s attempt to belatedly back-fill its motivation to combine argument.
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`
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`Petitioner’s Reply presents arguments that amount to little more than
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`recognizing the problems that Chu and Choi 2010 separately addressed. But a
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`POSA’s awareness of both problems tells a POSA nothing about how to
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`simultaneously minimize both problems in a satisfactory manner. As Patent Owner
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`explained in its POR, how to resolve the tension between Chu and Choi 2010’s
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`
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`15
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`
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`solutions is noticeably missing from Petitioner’s alleged motivation to combine Chu
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`and Choi 2010. Paper 16 at 31-37.
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`
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`Petitioner’s Reply ignores that the proposed modification of Chu to include
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`the constant boosted voltage of Choi 2010 would eviscerate the benefits taught by
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`Chu and undermine Chu’s objective of improving efficiency. Instead, Petitioner
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`now argues that a POSA would have known to combine Chu and Choi 2010 by
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`selectively choosing between power sources. But this new alleged motivation is
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`based on impermissible hindsight reconstruction. With the benefit of hindsight,
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`Petitioner presumes that because a POSA would have known about both problems
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`in Chu and Choi 2010, the POSA therefore would have combined Chu and Choi
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`2010 to solve both problems using the solution disclosed in the ’558 Patent.
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`The ’558 Patent resolved the problem by inventing a way to operate a linear envelope
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`amplifier based on using a first supply voltage (e.g., a battery) when the first supply
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`voltage is sufficient, or a boosted supply voltage when the first supply voltage
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`degrades too much. In this way, the ’558 Patent maximizes efficiency by relying on
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`a boosted voltage only when necessary, while simultaneously ensuring that the
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`output power would not be degraded if the battery voltage dropped too low. The
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`claimed “selective boost” reconciled the objectives of Chu and Choi 2010.
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`
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`As Patent Owner explained in its POR, the “inventor’s own path itself never
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`leads to a conclusion of obviousness; that is hindsight.” Otsuka Pharm. Co., 678
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`
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`16
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`
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`F.3d at 1296. As explained above and in the POR, the pertinent prior art provides
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`no path leading a POSA to both prevent distortion of the amplified signal and
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`simultaneously maximize efficiency.
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`
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`For at least these reasons, Petitioner fails to establish a motivation to combine
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`Chu, Choi 2010, and Hanington. Because Grounds I and II both depend on the
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`combination of Chu and Choi 2010, the Board should dismiss both grounds and
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`confirm the patentability of claims 10-11.
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`V. CONCLUSION
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`For the reasons above, the Board should confirm the patentability of claims 10-
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`11 in the Final Written Decision.
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`Respectfully submitted,
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`Date: _August 26, 2019_
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`By:_/s 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
`
`Matthew W. Johnson, Reg. No. 59,108
`Joshua R. Nightingale, Reg. No. 67,865
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
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`17
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`
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`TABLE OF EXHIBITS
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`Exhibit
`2001
`
`Description
`ITC Initial Determination of Validity (cited in Preliminary
`Response)
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`2002
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`2003
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`Declaration of Dr. Arthur Kelley (cited in POR)
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`Deposition Transcript of Dr. Alyssa Apsel – March 6, 2019 (cited
`in POR)
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`2004
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`Deposition Transcript of Dr. Alyssa Apsel – August 13, 2019
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`CERTIFICATE OF COMPLIANCE
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`I, the undersigned, certify that the above Patent Owner Sur-Reply complies
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`with the applicable type-volume limitations of 37 C.F.R. § 42.24 (b)(1). This Patent
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`Owner Sur-Reply contains 4,024 words, as counted by the word count function of
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`
`
`/ Joseph M. Sauer /
`Joseph M. Sauer
`JONES DAY
`901 Lakeside Avenue
`Cleveland, OH 44114
`Tel: (216) 586-7506
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`Counsel for Patent Owner
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`Microsoft Word.
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`Date: August 26, 2019
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PATENT
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`OWNER’S SUR-REPLY was served on August 26, 2019 by email, as follows:
`
`David Cavanaugh, Esq.
`david.cavanaugh@wilmerhale.com
`
`Richard Goldenberg, Esq.
`richard.goldenberg@wilmerhale.com
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`Nina Tallon, Esq.
`nina.tallon@wilmerhale.com
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`Joseph Mueller, Esq.
`joseph.mueller@wilmerhale.com
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`Todd Zubler, Esq.
`todd.zubler@wilmerhale.com
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`Kathryn Zalewski, Esq.
`kathryn.zalewski@wilmerhale.com
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`Theodoros Konstantakopoulos, Esq.
`theodoros.konstantakopoulos@wilmerhale.com
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`James M. Dowd, Esq.
`james.dowd@wilmerhale.com
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`Louis Tompros, Esq.
`louis.tompros@wilmerhale.com
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`Date: August 26, 2019
`
` s/ Joseph M. Sauer /
`Joseph M. Sauer
`JONES DAY
`901 Lakeside Avenue
`Cleveland, OH 44114
`Tel: (216) 586-7506
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`Counsel for Patent Owner
`Counselfor Patent Owner
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