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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Intel Corporation,
`Petitioner
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`v.
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`Qualcomm, Inc.,
`Patent Owner
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`Patent No. 8,698,558
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`Inter Partes Review No. IPR2018-01240
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`PATENT OWNER’S REQUEST FOR REHEARING
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`I.
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`Introduction
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`The Final Written Decision (“Decision”) cancelled claim 11 with findings that
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`directly contradict the Board’s findings regarding claim 10, from which claim 11
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`depends. The Decision found claim 10 patentable and claim 11 unpatentable.
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`Further, the Decision cancelled claim 11 on obviousness grounds that were never
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`advanced by the petitioner, never briefed by the Patent Owner, and never heard by
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`the Board. Therefore, the Decision violates the Administrative Procedure Act
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`(“APA”), Due Process, and fundamental fairness by refusing Patent Owner notice
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`and the opportunity to be heard.
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`II.
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`Standard For Rehearing Under 37 C.F.R. 42.71(d)
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`A request for rehearing must identify, specifically, all matters the party
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`believes the Board misapprehended or overlooked, and the place where each matter
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`was previously addressed in a motion, an opposition, or a reply. 37 C.F.R.
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`§ 42.71(d). The Board misapprehended the Petitioner’s obviousness combination of
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`Chu, Choi 2010, and Hanington presented on page 51 of the petition.
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`III. The Board Erred By Issuing A Decision On Inconsistent Findings,
`Ruling On Grounds Never Petitioned, And Denied Patent Owner The
`Opportunity To Be Heard
`A. The Board Erred By Applying Findings In Claim 11 That Directly
`Contradict Findings In Claim 10
`In confirming claim 10 over the combination of Chu, Choi, and Hanington,
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`the Board concluded that “Petitioner fails to provide sufficient or persuasive
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`-1-
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`evidence that Chu, Choi 2010, and Hanington teach the claim 10 limitation for ‘a
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`source that receives the boosted supply voltage or the first supply voltage.”
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`(Decision at 17). The Board therefore held that “Petitioner has not proven by a
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`preponderance of the evidence that claim 10 of the ’558 patent is unpatentable under
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`35 U.S.C. § 103(a) as obvious over Chu, Choi 2010, and Hanington.” (Id.).
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`With reference to claim 11, which depends from claim 10, however, the Board
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`inexplicably concluded (on the very next page) that “Petitioner provides sufficient
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`and persuasive evidence mapping the structures and functions of Chu, Choi 2010,
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`and Hanington to the apparatus and means-plus-function limitations of claim 10.”
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`(Id., at 18).
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`The Board further supported its decision on claim 11 on the incorrect finding
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`that “Patent Owner does not contest the mapping of the limitation of claim 10 and
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`11 to the asserted prior art.” (Id., at 19). Patent Owner certainly contested Intel’s
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`mapping of claim 10 onto the asserted prior art (see, e.g., PO Response, pp. 21-31);
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`in fact, the Board agreed with Patent Owner’s arguments and found claim 10 to be
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`patentable. The Board’s findings on claim 11 simply cannot be squared with its
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`opposite findings on claim 10.
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`B.
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`The Board Improperly Cancelled Claim 11 On Grounds Not
`Advanced By Petitioner
`To the extent the Board’s analysis of claim 11 applied Myers to the claim 10
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`limitation of “a source that receives the boosted supply voltage or the first supply
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`-2-
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`voltage,” such analysis was never presented in the petition nor at any time during
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`the proceedings, and is therefore in violation of the APA and Due Process. Intel
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`challenged the limitations of claim 10 as obvious in view of Chu combined with
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`Choi 2010 and Hanington. (Petition at 51). In the Decision, the Board
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`acknowledged that “Petitioner’s arguments and evidence do not address whether
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`claim 10 requires a selective boost,” and that the Petitioner alleges only that the
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`limitation of “a source that receives the boosted supply voltage or the first supply
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`voltage” is met by Choi 2010’s disclosure of a boost converter. (Decision at 16). In
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`the analysis of claim 11, the Board states that “Chu and Choi 2010 combined with
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`Myers discloses an ‘envelope amplifier [that] would be able to operate selectively. .
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`.’” (Decision at 19). To the extent that the Board is applying this analysis of the
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`combination of Myers with Chu and Choi 2010 to the selective boost limitation of
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`claim 10, this is a different legal theory that was never advanced by Petitioner.
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`Under 35 U.S.C. § 311(a), a party may seek inter partes review by filing “a
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`petition to institute an inter partes review.” 35 U.S.C. § 311(a). The Supreme Court
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`has explained that this language does not “contemplate a petition that asks the
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`Director to initiate whatever kind of inter partes review he might choose.” SAS Inst.
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`Inc. v. Iancu, 138 S. Ct. 1348, 1355, (2018). Further, the Board does not “enjoy[ ] a
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`license to depart from the petition and institute a different inter partes review of his
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`own design.” Id. at 1356.
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`-3-
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`The Federal Circuit recently reprimanded a Board’s decision to institute on
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`grounds different than what the petitioner advanced: “it is the petition, not the
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`Board’s ‘discretion,’ that defines the metes and bounds of an inter partes review.”
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`Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1336 (Fed. Cir. 2020). In
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`that case, the petitioner argued the Board’s consideration of the new grounds was
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`proper “for clarity” and only on “the [same] arguments and evidence,” presented in
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`the petition. Id. The Federal Circuit disagreed and found the Board erred by
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`instituting based on obviousness because the petitioner “did not advance such a
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`combination of references in its petition.” Id. at 1337. Here, Petitioner
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`unequivocally advanced the position that “regarding claim 10, Chu combined with
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`Choi 2010 and Hanington discloses the apparatus of claim 10.” (Petition at 72).
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`Petitioner’s obviousness theory did not include Myers for the “means for generating
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`the second supply voltage” limitation. Thus, to the extent the Board relied upon
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`Myers for the “means for generating the second supply voltage” limitation, the
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`Board misapprehended Petitioner’s obviousness theory..
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`C. The Board Denied Patent Owner Notice And The Opportunity to
`Address Non-obviousness Of The Elements Required By Claim 11
`In addition, Patent Owner was never given notice of, or the opportunity to
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`address, the Board’s obviousness over Myers theory as it related to the “source that
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`receives the boosted supply voltage or the first supply voltage” limitation of claim
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`10. The Federal Circuit has interpreted Due Process and the APA in the context of
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`-4-
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`IPR proceedings to mean that “an agency may not change theories in midstream
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`without giving respondents:” (1) “reasonable notice of the change” and (2) “the
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`opportunity to present arguments under the new theory.” Belden Inc. v. Berk-Tek
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`LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015).
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`Here, the Board not only considered an obvious challenge to claim 11 that was
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`not set forth in the petition, it did so in a final decision without providing any notice
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`to the parties or affording any opportunity to present arguments or be heard.
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`Petitioner alleged and Patent Owner responded to—and prevailed against—a claim
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`of obviousness that only included Chu and Choi 2010. Petitioner did not allege and,
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`thus, Patent Owner could not have responded to an obviousness theory that included
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`Myers for the “means for generating the second supply voltage” limitation. To apply
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`a new theory to invalidate claim 11 is a violation of the Patent Owner’s Due Process
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`rights, and a violation of the APA.
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`Significantly, the Petitioner did not provide any argument or analysis directed
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`to an obviousness combination with Myers regarding this limitation. Nor did the
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`Patent Owner have an opportunity (or reason) to address this obviousness argument
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`at any stage of the IPR proceeding.
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`IV. Conclusion
`The Board erred by addressing a theory of obviousness directed at the
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`elements of claim 11 that was not raised in the petition—nor at any stage of the IPR
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`-5-
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`proceeding. Thus, the Request for Rehearing should be granted because the Board
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`misapprehended Petitioner’s theory of obviousness. A new decision finding claim
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`11 patentable should be issued.
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`Dated: March 20, 2018
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`Respectfully submitted,
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`By: / Joseph M. Sauer /
`Joseph M. Sauer (Reg. No. 47,919)
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`Attorney for Qualcomm, Inc.,
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`-6-
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Request for
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`Rehearing was served on March 20, 2018, by email to the following address:
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`David Cavanaugh, Esq.
`david.cavanaugh@wilmerhale.com
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`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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`Dated: March 20, 2018
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`By: / Joseph M. Sauer /
`Joseph M. Sauer (Reg. No. 47,919)
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`1
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