IPR2018-01240
`U.S. Patent No. 8,698,558
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`IN THE 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 Incorporated
`Patent Owner
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`IPR2018-01240
`U.S. Patent No. 8,698,558
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`PETITIONER’S REPLY
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`U.S. Patent No. 8,698,558
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Intel Corporation
`Petitioner
`
`v.
`
`Qualcomm Incorporated
`Patent Owner
`
`
`
`IPR2018-01240
`U.S. Patent No. 8,698,558
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`PETITIONER’S REPLY
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`I.
`II.
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`Claim Construction .......................................................................................... 3
`A.
`Patent Owner’s Proposed Construction Is Wrong ................................ 3
`1.
`Patent Owner’s Proposed Construction Contradicts The
`Plain Claim Language ................................................................. 3
`Patent Owner’s Proposed Construction Would Exclude
`Disclosed Embodiments .............................................................. 6
`Patent Owner’s Remaining Arguments Have No Merit ............. 8
`3.
`III. Grounds ............................................................................................................ 9
`A.
`Patent Owner Is Wrong That Petition Fails To Demonstrate a
`Motivation to Combine Chu with Choi 2010 ...................................... 10
`1. Motivation Comes From The References Themselves ............. 10
`2.
`Petition Explains How To Modify Chu In View Of Choi
`2010 ........................................................................................... 17
`Patent Owner Is Wrong That Petition Fails To Demonstrate a
`Motivation to Combine Chu, Choi 2010, and Hanington with
`Myers ................................................................................................... 17
`1.
`Patent Owner Is Wrong That Choi 2010 Teaches Away
`From “Selective Boost” ............................................................ 17
`A POSA Would Have Modified Chu and Choi 2010 To
`Apply Myers’ Power Selection Functionality .......................... 21
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`2.
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`2.
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`B.
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`IPR2018-01240
`U.S. Patent No. 8,698,558
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`IPR2018-01240
`U.S. Patent No. 8,698,558
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`I.
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`INTRODUCTION
`Patent Owner’s Response (“POR”) confirms that the challenged claims of
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`the ʼ558 patent are invalid. Indeed, the POR does not challenge Petitioner’s
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`mapping of the limitations to the cited references. Instead, the Patent Owner tries
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`to avoid the prior art by advancing an improper claim construction, and by wrongly
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`suggesting that the prior art references would not have been combined.
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`First, Patent Owner seeks to re-write the elements of its claims in the guise
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`of claim construction. But its proffered construction contradicts the surrounding
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`claim language, would exclude disclosed embodiments, and is inconsistent with
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`the specification’s teaching – as Patent Owner’s own expert, Dr. Arthur Kelley,
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`admitted in deposition. See Ex. 1330 [Kelley Transcript], 35:15-36:1; 37:5-16;
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`37:20-38:11; 133:4-135:9; EPOS Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d
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`1338, 1347 (Fed. Cir. 2014) (rejecting construction that reads out embodiments);
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`see also Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1378 (same).
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`Second, Patent Owner’s critique that the motivation to combine Chu with
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`Choi 2010 does not appear “within the references themselves” (POR, 26) is wrong
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`both legally and factually. On the law, there is no requirement that motive must be
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`found within the four corners of the references being combined. This has been
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`clear since KSR rejected such “[r]igid preventative rules that deny factfinders
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`recourse to common sense,” holding them “neither necessary under our case law
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`U.S. Patent No. 8,698,558
`nor consistent with it.” KSR Intl. Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007).
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`Consistent with KSR, the Petition demonstrated the common knowledge of a
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`person of ordinary skill in the art (“POSA”) using secondary references that show
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`how the advantages of modifying a system like Chu to include a boost converter
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`like Choi 2010 were very well-known. Patent Owner’s argument is also factually
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`incorrect. As the Petition demonstrated (Petition, 67-71), motivation to modify
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`Chu comes directly from Choi 2010’s express teaching of the advantages of adding
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`a boost converter to a system like Chu’s – advantages to which Patent Owner’s
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`expert admitted in deposition. See Ex. 1330, 105:20-106:4; 155:7-156:6.
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`Third, Patent Owner’s suggestion that, contrary to the Board’s institution
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`decision (Decision (“DI”), 21-22; IPR2018-01153, Paper 9, 22-24), a POSA would
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`lack motivation to combine Chu and Choi 2010 with Myers ignores Myers’
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`express teaching on the benefits of implementing so-called “selective boost” in
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`power management circuits. Teaching that Dr. Kelley conceded at deposition.
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`(Ex. 1330, 100:6-9; 101:6-13; 152:21-153:4; 264:21-265:12; 281:6-282:2.)
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`For these reasons, as set forth more fully below, Patent Owner’s arguments
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`should be rejected and the challenged claims found unpatentable.
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`U.S. Patent No. 8,698,558
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`II. CLAIM CONSTRUCTION
`A.
`Patent Owner’s Proposed Construction Is Wrong
`Patent Owner contends that the term “[a PMOS] transistor [having] … a
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`source that receives the boosted supply voltage or the first supply voltage” should
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`be construed such that “the PMOS transistor must be able to receive, selectively,
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`either the boosted supply voltage or the first supply voltage (referred to herein as a
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`“selective boost”).” (POR, 9.) According to Patent Owner, a PMOS transistor that
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`received only the first voltage or only the boosted voltage would not meet this
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`limitation. This proposed construction is far from the broadest reasonable
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`construction of “or,” is contrary to the plain meaning, and would exclude disclosed
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`embodiments. It should be rejected.
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`1. Patent Owner’s Proposed Construction Contradicts The Plain
`Claim Language
`Claim 10 recites “[a PMOS] transistor [having] … a source that receives the
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`boosted supply voltage or the first supply voltage.” Ex. 1301, 12:38-41. As Dr.
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`Kelley conceded, the term “or” is a conjunction that identifies two alternatives:
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`this “or” that. (Ex. 1330, 130:10-18 (“Q. I’m asking at the Schoolhouse Rock
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`level, or is a conjunction that joins two alternatives, correct? A. Well, if we’re
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`going to import Schoolhouse Rock into the deposition, in that context, yes, it is.”).)
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`Under its plain English meaning, the requirement for an amplifier that operates
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`based on “the first supply voltage or the boosted supply voltage” is met by an
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`amplifier that operates based on either one alternative alone. (Id. at 130:19-131:2
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`(“Q. … If I said I would like coffee or tea, you could give me tea and that would
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`meet my requirement, right? A. In that hypothetical abstract outside the bounds of
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`the ’558, sure.”).) Patent Owner has identified no sound basis to deviate from that
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`broad plain meaning.
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`To the contrary, the POR concedes that the common meaning of “or” in
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`patent claims is to recite alternatives. See, POR, 22 (“The use of ‘or’ is sometimes
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`an acceptable mechanism for claiming alternatives such that only one of the
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`limitations need be found in the prior art to support anticipation.” And that is
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`exactly how Hon. Dana M. Sabraw construed “or” in related litigation on the ’558
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`patent before the United States District Court for the Southern District of
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`California. (Ex. 1328 [Claim Constr. Order, Dkt. 351 (17‐cv‐1375)] at 5-6
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`(holding the limitation “a source receiving the boosted supply voltage or the first
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`supply voltage” in claim 6 does not require “selective boost”).) Indeed, Dr. Kelley
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`admitted Patent Owner’s proffered construction contradicts Judge Sabraw:
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`Q. And just to be clear, you're giving an opinion that is contrary to
`Judge Sabraw’s claim construction, right?
`I understand what the Judge did. And I’ve reached a different
`conclusion.
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`A.
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`Ex. 1330, 147:10-151. But if “or” covers either alternative alone under the Phillips
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`standard that Judge Sabraw used, it is certainly at least that broad under the
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`broadest reasonable construction rule applicable here. Facebook, Inc. v.
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`Pragmatus AV, LLC, 582 Fed. Appx. 864, 869 (“The broadest reasonable
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`interpretation of a claim term may be the same as or broader than the construction
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`of a term under the Phillips standard. But it cannot be narrower.”) An envelope
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`amplifier that operates based on either one of the recited alternatives – e.g., the
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`“boosted supply voltage” alone – would thus meet the claim.
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`Moreover, other claims demonstrate that Patent Owner knew how to recite a
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`“selective boost” requirement when it wanted – using language different from
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`claim 10. Independent claim 6 and dependent claim 7 provide one such example.
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`Much like claim 10, claim 6 recites “a source receiving the boosted supply voltage
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`or the first supply voltage….” Claims 6 is therefore met using only one of the
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`boosted or first supply voltage. Indeed, as noted above, Judge Sabraw found that
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`this claim does not require “selective boost.” (Ex. 1328, 5-6.) By contrast,
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`dependent claim 7 adds the limitation “wherein the supply generator is operative to
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`generate the second supply voltage based on the envelope signal and either the
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` Objections omitted in transcript quotations.
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`boosted supply voltage or the first supply voltage.” If claim 6 already required
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`“selective boost,” then claim 7 would add nothing. But consistent with claim
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`differentiation doctrine, claim 7’s additional language “and either” has meaning.
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`For that reason, claim 7 could not be read to require only one of the boosted or first
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`supply voltage. It is therefore that additional language appearing in claim 7 (which
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`does not appear in either claim 6 or 10) that adds a requirement for the amplifier to
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`be able to select between “either” the boosted voltage “or” the first supply voltage.
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`Because claim 10 (like claim 6) lacks this “and either” language, it has no such
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`requirement. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (“a
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`dependent claim that adds a particular limitation gives rise to a presumption that
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`the limitation … is not present in the independent claim.”) Ex. 1329, ¶7.
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`2. Patent Owner’s Proposed Construction Would Exclude
`Disclosed Embodiments
`Patent Owner’s construction should also be rejected, because it improperly
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`excludes disclosed embodiments. EPOS, 766 F.3d at 1347; Dow, 257 F.3d, at
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`1378; Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298,
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`1308 (Fed. Cir. 2003).
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`Specifically, starting at column 8, line 24, the ’558 specification teaches
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`“another design of supporting operation with a lower battery voltage[.]” (Ex.
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`1301, 8:24-25.) In this embodiment, “the entire envelope tracker is operated based
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`on the Vboost voltage from boost converter 180” alone (i.e., solely based on the
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`U.S. Patent No. 8,698,558
`“boosted supply voltage”), without ever operating based on battery voltage (i.e.,
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`never based on the “first supply voltage”). (Id. at 8:25-26.) As Dr. Kelley
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`admitted in deposition, Patent Owner’s construction would exclude this
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`embodiment:
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`Q.
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`If you're right that the selective boost and the or means I have to
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`be able to use either boost or first, then under that circumstance,
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`claim [6] and 13 would not cover the embodiment at column 8
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`line 24 that uses Vboost alone. Is that fair?
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`A.
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`I think that’s fair.
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`(Ex. 1330, 134:12-18.) Because Patent Owner’s proposed construction
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`would exclude this disclosed embodiment, it should be rejected. EPOS, 766
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`F.3d at 1347; Dow, 257 F.3d, at 1378; Anchor, 340 F.3d at 1308.
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`Patent Owner’s argument is also an improper attempt to limit claim 10
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`solely to one disclosed embodiment (to the exclusion of others). For example,
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`Patent Owner contends that column 1, lines 42-50 discloses a form of “selective
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`boost.” Whether the specification here means what Patent Owner says is
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`debatable. But what is beyond dispute is that column 1 discloses merely “one
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`design” as an “example” that in no way limits the claims:
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`In one design, the envelope amplifier may further receive the first
`supply voltage and may generate the second supply voltage based on
`either the first supply voltage or the boosted supply voltage. For
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`U.S. Patent No. 8,698,558
`example, the envelope amplifier may generate the second supply
`voltage (i) based on the boosted supply voltage if the envelope signal
`exceeds a first threshold and/or if the first supply voltage is below a
`second threshold or (ii) based on the first supply voltage otherwise.
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`(Ex. 1301, 1:42-50. (emphasis added).) Patent Owner’s citation to 8:55-62 is
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`similarly misplaced. (Id., 8:55-62 (“In one design …. For example, …”).) As the
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`Federal Circuit has admonished, confining claims to one disclosed embodiment is
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`the “cardinal sin” of claim construction. Phillips, 415 F.3d at 1320 (“although the
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`specification often describes very specific embodiments of the invention, we have
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`repeatedly warned against confining the claims to those embodiments.”); see also
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`Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)
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`(“a particular embodiment appearing in the written description may not be read
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`into a claim”); Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906 (Fed. Cir.
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`2004) (same); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
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`2003) (cautioning against “importing limitations”). Patent Owner’s blatant attempt
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`to do so here should be rejected. Ex. 1329, ¶10.
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`3. Patent Owner’s Remaining Arguments Have No Merit
`Finally, Patent Owner suggests that Petitioner’s expert, Dr. Alyssa Apsel,
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`somehow “agreed that it would not make sense to interpret the boosted supply
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`voltage as purely optional in the context of the claims” (POR, 26), because “when
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`asked about a similar ‘based on’ limitation in claim 6,” she supposedly “admitted
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`U.S. Patent No. 8,698,558
`that it makes sense to interpret ‘based on’ as requiring a boosted supply voltage to
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`be an available supply voltage.” Id.
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`The language from claim 6 that Dr. Apsel was addressing in this testimony
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`recites “generat[ing] a second supply voltage for the power amplifier based on the
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`envelope signal and the boosted supply voltage.” (Ex. 2003 [Apsel Transcript] at
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`41:21-23; Ex. 1301, 11:49-51.) This is not similar to claim 13, which recites “or”
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`not “and.”2 (Ex. 1301, claim 10.) By reciting “or,” claim 10 is clear that either one
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`of the “boosted supply voltage” or “the first supply voltage” is alone sufficient to
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`meet the claim’s requirement. Ex. 1329, ¶12.
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`Patent Owner’s proposed construction should thus be rejected. Ex. 1329,
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`¶13.
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`III. GROUNDS
`As the Board recognized, “Patent Owner does not challenge Petitioner’s
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`mapping of the limitations to the cited prior art.” DI, 22. Patent Owner does not
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`dispute that the prior art in Grounds I-IV disclosed all limitations of the asserted
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`claims. POR, 21-50. Ex. 2002, ¶¶ 88-120. Patent Owner relies solely on
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` 2
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` It is also different from the relevant part of claim 6 that Judge Sabraw
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`interpreted, which appears at column 11, lines 58-59 . (Ex. 1301, claim 6.)
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`U.S. Patent No. 8,698,558
`arguments related to lack of motivation to combine these references. However,
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`Patent Owner’s arguments ignore explicit reasons and rationales presented in the
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`Petition and Dr. Apsel’s Declaration that would have motivated a POSA to
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`combine these references. Ex. 1329, ¶14.
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`If the Board rejects Patent Owner’s motivation argument (as it should) and
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`confirms its preliminary finding that “Petitioner identifies a motivation to modify
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`Chu to incorporate the boost converter of Choi 2010 and Hanington, providing
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`multiple reasons for a person of ordinary skill in the art to use a boost converter in
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`conjunction with Chu” (DI, 20) and that “Patent Owner has not shown persuasively
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`that the differences between Chu/Choi 2010 and Myers undermines their
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`combination” (DI, 23), then claims 10-11 should be found unpatentable for the
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`reasons stated in the Petition and the Decision on Institution. Ex. 1329, ¶15.
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`A.
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`Patent Owner Is Wrong That Petition Fails To Demonstrate a
`Motivation to Combine Chu with Choi 2010
`1. Motivation Comes From The References Themselves
`According to Patent Owner, Chu and Choi2010 “address different problems
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`with different solutions that are in tension with each other” (POR, 31) and their
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`proposed combination is based on “hindsight reconstruction” (Id.). This argument
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`is based upon the contention that a POSA would “either maximize efficiency at the
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`cost of output power degradation (like in Chu), or minimize the output power
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`degradation at the cost of reducing efficiency (like in Choi 2010),” not both. (Id.,
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`32-33.) Patent Owner is mistaken. Ex. 1329, ¶16.
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`First, accepting Patent Owner’s argument would require accepting that Chu
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`is not interested in the output signal quality of its supply modulator (which relates
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`to output power degradation) and that Choi2010 is not interested in the power
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`dissipation of its supply modulator (i.e., efficiency). It would require accepting, in
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`other words, that these are mutually exclusive concerns. But Dr. Kelley testified
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`that engineers in this field commonly “worry about both of those” concerns when
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`designing power management circuits:
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`Q. And so in designing a power management circuit, you're
`balancing those competing concerns providing enough power
`for the load while at the same time being as efficient as you can
`be. Is that fair?
`I'm not sure I'd characterize them as being competing. There’s
`certainly simultaneous concerns. You worry about both of those
`in terms of making your power supply work properly.
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`A.
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`(Ex. 1330, 13:12-20; see also, id., 13:21-14:2.) That was just as true in the
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`prior art as it is today:
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`Q. So we said at the outset that a person of skill in the art would
`understand that in designing power management, you want to
`have one goal of energy efficiency and also a goal of having a
`signal that actually works; it isn't distorted. Do you recall that?
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`A. Yes.
`Q. That was true in 2010, right?
`A. Yes.
`Q.
`So it was true before the '558 patent, right?
`A.
`I guess that's true.
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`(Ex. 1330, 259:7-18.) Ex. 1329, ¶17.
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`It defies logic to accept that, because Chu addresses efficiency and
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`Choi2010 addresses output power degradation, a POSA would not have been
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`motivated to combine the two to reap both benefits. This is particularly true in the
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`design of power management circuits like those in Chu and Choi2010, where the
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`competing demands of efficiency and output power degradation are a standard
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`engineering trade-off. (POR, 31 (“Choi 2010 accepts the trade-off in efficiency in
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`order to achieve a solution to its identified problem of output power
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`degradation.”).) A POSA would thus consider both demands, and would not focus
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`all efforts on only one to the exclusion of the other as the Patent Owner argues.
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`See, POR, 43-44 (“either maximize efficiency at the cost of output power
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`degradation (like in Chu), or minimize the output power degradation at the cost of
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`reducing efficiency (like in Choi 2010)”). Ex. 1329, ¶18.
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`Second, Patent Owner’s suggestion that Petitioner’s combination “is not
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`based on any teachings within the references themselves” (POR, 31) is factually
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`wrong and attempts to distort the record. As an initial matter, the Petition cited
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`clear reasons to combine Chu and Choi 2010 that were articulated within the
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`references themselves. It explained, for example, how Choi 2010 explicitly taught
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`advantages of modifying a system like Chu to include a boost converter like that
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`disclosed in Choi 2010’s Figure 5. (See Petition, 58 (“These advantages are
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`specifically taught by Choi 2010, and would have motivated a POSA to modify
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`Chu accordingly.”).) The Petition then identified explicit disclosures in Choi 2010
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`(citing in Choi 2010 at 1074 and 1077) that suggest integrating a boost converter
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`for a “stable operation” of the supply modulator and for allowing “robust
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`performance over the battery voltage variation.” (See, e.g., Petition at 58.) Ex.
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`1329, ¶19.
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`Moreover, when asked about these motivations to combine at his deposition,
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`Dr. Kelley readily agreed with Petitioner’s explanation. For example, Dr. Kelley
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`testified that Choi 2010 teaches use of a boost converter to address battery
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`degradation just like the Petition explained:
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`Q. Now, Choi 2010 does talk about battery degradation, right?
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`A.
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`Right.
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`Q. And Choi 2010 says you can use this boost converter to address the
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`battery degradation problem, right?
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`A. Yes.
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`(Ex. 1330, 105:20-106:4.) He also agreed that Choi 2010’s boost converter had the
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`advantage of preventing a linear amplifier’s output from degrading when the
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`battery depletes, just as the Petition explained:
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`Q.
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`Choi 2010's boost converter prevents a linear amplifier's output power
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`from degrading when the battery depletes, right?
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`A.
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`That's true.
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`(Id., 156:3-6; see also, id., 155:7-156:2.) What is more, Dr. Kelley conceded that
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`if Chu’s battery degrades, the power amplifier would not be able to perform – a
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`specific motive to make Petitioner’s proposed combination:
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`Q.
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`If the battery voltage gets too low, the output signal will become
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`distorted, right?
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`A.
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`The output signal of the power amplifier. That’s right. If you don’t
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`have enough battery voltage, Chu will not function and the power
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`amplifier will not be able to perform.
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`(Compare id., 165:17-22 with Petition, 57-61.) In short, Dr. Kelley conceded the
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`exact motivations to combine described in the Petition. Ex. 1329, ¶20.
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`Moreover, Patent Owner is wrong to contend that the reason to combine
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`must come directly from the combined art itself. KSR rejected such “[r]igid
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`preventative rules that deny factfinders recourse to common sense” as “neither
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`necessary under our case law nor consistent with it.” KSR, 550 U.S. at 421.
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`Motivation may come from industry trends, the ordinary creativity of a POSA, or
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`indeed from “common sense” in the art at that time. Id. (“A person of ordinary
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`skill is also a person of ordinary creativity, not an automaton”). The Petition thus
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`explained, corroborated by evidence from secondary references, how the
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`advantages of modifying Chu to include a boost converter like Choi2010 would
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`have been well-known to POSAs at that time. Petition, 58-60. Ex. 1329, ¶21.
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`Even Patent Owner admits that “efficiency and output distortion/robustness
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`problems were generally known in the art” (POR, 32) – the exact concerns that
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`would have motivated the proposed combination of Chu and Choi210. The
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`Petition addressed these same specific concerns, and explained in detail how they
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`would have motivated this combination, exactly as the Board has recognized. See
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`Decision on Institution of related IPR2018-01153 (IPR2018-01153, Paper 9), 21.
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`(“Petitioner cites secondary references in support of the advantages for modifying
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`Chu’s supply modulator to incorporate the boost converter of Choi 2010” and
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`“provides argument and evidence that supports the combination … in accordance
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`with the teachings of these secondary references.”).) Ex. 1329, ¶22.
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`Third, Dr. Kelley conceded the reason why a POSA would modify Chu to
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`include Choi 2010’s boost converter – namely, that doing so would extend Chu’s
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`battery life:
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`A.
`Q.
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`U.S. Patent No. 8,698,558
`Q. … If I implemented the boost converter of Choi in Chu such
`that Chu operated off of battery power until the battery depleted
`and then I switched to using boost, that would save power,
`right?
`That would extend the useful life of the battery.
`Right. By conserving power during the portion of time where
`it's operating off of the battery only, right?
`By both conserving power during the time it's operating off the
`battery and then you turn on the boost, and it lets you more
`fully deplete the battery before you run out of battery.
`Q. Okay. And you would agree with me that extending the useful
`life of a battery is something that is good, right?
`A. Yes.
`
`A.
`
`Ex. 1330, 281:6-282:2. Dr. Kelley testified this modification was well within the
`
`skill of a POSA:
`
`Q
`
`A
`
`It was within the skill of the person of ordinary skill to build the
`circuit that would switch between the Vbat shown in Choi ‐‐
`sorry ‐‐ shown in Chu Figure 4 and the boosted voltage of the
`boost converter from Choi Figure 5, correct?
`If you decided to do that, yes.
`
`Ex. 1330, 284:6-12. In short, the evidence fully demonstrates motivation for this
`
`combination. Ex. 1329, ¶23.
`
`16
`
`
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`IPR2018-01240
`U.S. Patent No. 8,698,558
`2. Petition Explains How To Modify Chu In View Of Choi 2010
`Patent Owner further argues that “how or why the references would be
`
`combined to produce the claimed invention” is “missing from the prior art.” (POR,
`
`34.) Here again, Patent Owner is mistaken. The Petition and the prior art explain
`
`how Chu would have been modified to incorporate the boosted voltage teachings
`
`of Choi 2010. For example, the Petition explains how to “use of a boost converter
`
`to generate a boosted supply voltage that can be supplied to the envelope amplifier
`
`instead of a battery voltage.” (Petition, 69.) The Petition also maps (with color
`
`coding) corresponding components of the Chu and Choi 2010 supply modulators to
`
`further illustrate where the boost converter should be incorporated to boost Chu’s
`
`supply voltage Vbattery. (Id., 68-70. Ex. 1329, ¶24.)
`
`B.
`
`Patent Owner Is Wrong That Petition Fails To Demonstrate a
`Motivation to Combine Chu, Choi 2010, and Hanington with
`Myers
`1. Patent Owner Is Wrong That Choi 2010 Teaches Away From
`“Selective Boost”
`Patent Owner argues that “a POSA would not have combined Myers with
`
`Petitioner’s hypothetical Chu, Choi 2010, and Hanington combination because
`
`Choi 2010 teaches away from the use of a selective boost voltage.” (POR, 38.)
`
`Patent Owner is dead wrong. Nothing in Choi2010 teaches away from this
`
`combination, and Patent Owner has failed to even come close to showing the legal
`
`requirement for “teaching away.” Moreover, the admitted prior art evidence from
`
`17
`
`
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`IPR2018-01240
`U.S. Patent No. 8,698,558
`the ’558 patent itself corroborates that there was no teaching away and, to the
`
`contrary, was substantial motive to modify Choi 2010 to implement “selective
`
`boost.” Ex. 1329, ¶25.
`
`First, Patent Owner is wrong to contend Choi 2010 teaches away.
`
`Specifically, Patent Owner argues “boost is not merely a general preference [in
`
`Choi 2010]; Choi 2010 discloses no other manner to achieve its objective of
`
`minimizing the degradation of output power.” This assertion is incorrect, because
`
`Choi 2010 in fact teaches using the boosted voltage to “achiev[e] the robust
`
`operation against the battery depletion.” Ex. 1306, 1076. Choi 2010 thus does not
`
`teach away from “selective boost” because a POSA would have understood that a
`
`battery supply could have been used to selectively supply voltage when the battery
`
`has not depleted and a boosted supply when it has. Ex. 1329, ¶26.
`
`Second, in order for a reference to teach away, “a person of ordinary skill,
`
`upon reading the reference, [must] be discouraged from following the path set out
`
`in the reference, or [must] be led in a direction divergent from the path that was
`
`taken” in the claim. Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed.
`
`Cir. 2013). A reference that “merely expresses a general preference for an
`
`alternative invention but does not criticize, discredit, or otherwise discourage
`
`investigation into” the claimed invention does not teach away. Id. Patent Owner
`
`has failed to demonstrate any such criticism, discrediting, or discouragement in
`
`18
`
`
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`IPR2018-01240
`U.S. Patent No. 8,698,558
`Choi 2010. Rather, Choi 2010 merely teaches that one way to minimize the impact
`
`of a degrading battery voltage is to boost that voltage. Choi 2010 expresses, in
`
`other words, a preference. Nothing about that teaching discredits or discourages
`
`improving the efficiency of Choi 2010’s boosting by using the boosted voltage
`
`only when needed -- for example, only when the power requirements of the
`
`transmission cannot be satisfied by the battery supply. Indeed, as Dr. Kelley
`
`admits, this modest modification would result in power savings, and that a circuit
`
`designer would have been more than able to implement such a selectable voltage
`
`supply. (Ex. 1028, 152:21-153:4 “Q. Do you agree that a person of ordinary skill
`
`would have known how to select between two power sources? A. There are many
`
`ways to do that. And so in a very broad question like that I think somebody
`
`might.”).) Ex. 1329, ¶27.
`
`Third, Patent Owner’s argument contradicts the ’558 patent. In discussing
`
`prior art Figure 2A, the ’558 patent explains it would be wasteful to operate an
`
`amplifier with the maximum supply voltage at all times. (See, Ex. 1301, 4:7-9
`
`(“The difference between the battery voltage and the envelope of the RFout signal
`
`represents wasted power….”); Ex. 1330, 173:17-175:2. Choi 2010 similarly
`
`discloses that “[t]he supply voltage of the linear amplifier is boosted to 5V, and it
`
`enables the RF PA operating with the maximum 4.5V supply voltage.” (Ex. 1306,
`
`1077.) A POSA would thus have known that operating Choi2010’s amplifier with
`
`19
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`
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`IPR2018-01240
`U.S. Patent No. 8,698,558
`the boosted voltage at all times needlessly wastes power, as this evidence
`
`corroborates. Ex. 1329, ¶28.
`
`A POSA would have been motivated to reduce this waste. Figure 2B of the
`
`’558 patent depicts, for example, the prior art Average Power Tracking (“APT”)
`
`technique. Ex. 1028, 175:3-10. Plot 270 in Figure 2B (reproduced below) shows
`
`reducing wasted power by selecting between different voltage supplies for an
`
`amplifier. It shows switching between a first (lower) supply voltage highlighted
`
`blue to a second (boosted) supply voltage highlighted red:
`
`
`
`
`
`Ex. 1301, Fig. 2B
`
`Ex. 1301, Fig. 2B
`
`As the Patent Owner concedes, selecting between the different voltage supplies in
`
`this way was a known technique to “reduce wasted power.” Ex. 1301, 4:18; Ex.
`
`1330; Ex. 1330, 173:17-175:2; 175:3-10. A POSA reading Choi 2010 would have
`
`been aware of such techniques (e.g., APT), and would thus have been motivated to
`
`modify Chu as described above in order to take advantage of such known, standard
`
`strategies. Ex. 1329, ¶29.
`
`20
`
`
`
`IPR2018-01240
`U.S. Patent No. 8,698,558
`2. A POSA Would Have Modified Chu and Choi 2010 To Apply
`Myers’ Power Selection Functionality
`Patent Owner argues that “[b]efore the disclosure of the ’558 Patent, a
`
`POSA [would] either maximize efficiency at the cost of output power degradation
`
`(like in Chu), or minimize the output power degradation at the cost of reducing
`
`efficiency (like in Choi 2010). The prior art did not suggest any way to achieve
`
`both of these benefits.” POR, 43-44 (internal citations omitted.) Ex. 1329, ¶30.
`
`Patent Owner is wrong. Myers, a prior art patent that issued twelve years
`
`before the ’558 patent was filed, proposes one solution for achieving both benefits.
`
`Specifically, Myers teaches that choosing the power source based on the amplitude
`
`of the input signal “allows an amplifier to be operated in a more efficient range,”
`
`and suggests that high efficiency is important to battery life. Ex. 1312 at 9:18-21,
`
`1:19-23 (“High dynamic range allows the communications devices to communicate
`
`more reliably over a variety of distances, and high efficiency allows the devices to
`
`operate longer on a single battery.”). Ex. 1329, ¶31.
`
`Patent Owner argues that
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