UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`Intel Corporation
`Petitioner
`
`v.
`
`Qualcomm Incorporated
`Patent Owner
`______________________
`
`Case IPR2019-00047
`Patent 9,154,356
`______________________
`
`PATENT OWNER’S SUR-REPLY
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`
`
`
`
`
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`
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`

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`TABLE OF CONTENTS
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`
`Page
`
`
`I.
`II.
`
`Introduction ..................................................................................................... 1
`Patent Owner’s Proposed Claim Construction Is Correct .............................. 2
`A.
`Petitioner Fails To Establish That The Patentee Acted As A
`Lexicographer ....................................................................................... 2
`Patent Owner Established That “Carrier Aggregation” Has A
`Well Understood Meaning In the Art ................................................... 6
`1.
`Intrinsic Evidence ...................................................................... 7
`2.
`Extrinsic Evidence ................................................................... 10
`Petitioner’s Proposed Construction Cannot Be Correct ..................... 11
`1.
`Petitioner’s Construction Violates The Doctrine Of
`Prosecution History Disclaimer ............................................... 11
`Petitioner’s Construction Reads Out The Word
`“Aggregation.” ......................................................................... 15
`Petitioner’s Criticisms Of Patent Owner’s Proposed
`Constructions Are Based On The Flawed Premise That
`The Patentee Acted As A Lexicographer ................................ 16
`The Term Carrier Aggregation Requires An Increased
`Bandwidth .......................................................................................... 17
`III. Ground I – Petitioner Fails To Establish That Uehara Anticipates The
`Claims ........................................................................................................... 18
`A. Uehara Fails To Disclose The Recited First And Second
`Amplifier Stages ................................................................................. 18
`1.
`Uehara Fails To Disclose Independently Enabled Or
`Disabled Amplifier Stages ....................................................... 18
`Uehara’s Dual Carrier Mode Fails To Disclose
`Independently Enabled Or Disabled Amplifier Stages ............ 20
`B. Uehara Fails To Disclose “Carrier Aggregation.” ............................. 22
`IV. Ground II – Petitioner Fails To Establish That Claims 7 And 8 Are
`Obvious Over Uehara And Perumana .......................................................... 23
`
`B.
`
`C.
`
`D.
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`2.
`
`3.
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`2.
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`-i-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`V. Ground III – Petitioner Fails To Establish That Claim 10 Is Obvious
`Over Uehara And Youssef ............................................................................ 23
`VI. Ground IV – Petitioner Fails To Establish That Claims 1, 11, 17, and
`18 Are Obvious Over Uehara And The Feasibility Study............................ 23
`A. No Motivation To Select And Combine Uehara And The
`Feasibility Study ................................................................................. 23
`Petitioner Failed to Establish That The Feasibility Study Is
`Analogous Art .................................................................................... 24
`VII. Ground V –Petitioner Fails To Establish That Claims 7 And 8 Are
`Obvious Over Uehara, Feasibility Study, And Perumana ............................ 26
`VIII. Ground VI – Petitioner Fails To Establish That Claim 10 Is Obvious
`Over Uehara, Feasibility Study, And Youssef ............................................. 26
`IX. Conclusion .................................................................................................... 26
`
`B.
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`-ii-
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`IPR2019-00047
`Patent 9,154,356
`
`I.
`
`Introduction
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`Patent Owner’s response identified two fatal defects in Petitioner’s challenge
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`to the ’356 Patent. Petitioner’s reply fails to refute these points.
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`First, the petition is based on a flawed construction of the term “carrier
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`aggregation.” Patent Owner established that the term has an established and well
`
`understood meaning to skilled artisans. That meaning, which is set forth as Patent
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`Owner’s proposed construction, is supported by both intrinsic and extrinsic evidence.
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`But Petitioner argues that the patentee acted as a lexicographer to assign the
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`term a special definition different than its plain and ordinary meaning. The petition
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`fails, however, to establish that the patentee expressed the necessary intent to
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`redefine the term.
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`Furthermore, Petitioner’s proposed construction cannot be correct because:
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`(1) the proposed construction violates the doctrine of prosecution disclaimer, and (2)
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`the proposed construction reads out the term “aggregation.” Petitioner’s reply is
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`unsuccessful in rebutting either point.
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`Properly construed, Uehara fails to disclose the “carrier aggregation”
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`limitation. In addition, Petitioner fails to sufficiently articulate a motivation to select
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`and combine the Feasibility Study (as a means of supplying the missing “carrier
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`aggregation” limitation) with Uehara. No reasoned explanation is offered to explain
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`why a skilled artisan would have been motivated to select and combine these two
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`
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`-1-
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`

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`IPR2019-00047
`Patent 9,154,356
`
`references.
`
` Absent such an explanation, Petitioner’s alleged obviousness
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`combination amounts to impermissible hindsight reconstruction of the claimed
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`invention. Accordingly, Petitioner also fails to establish unpatentability for each
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`ground with respect to the “carrier aggregation” limitation.
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`Second, Uehara fails to disclose two amplifier stages that are “independently
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`enabled or disabled” as recited by the claims. Petitioner does not identify any other
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`reference for use in a combination to overcome Uehara’s failure to disclose this
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`limitation. This deficiency is dispositive of each ground in this IPR.
`
`II.
`
`Patent Owner’s Proposed Claim Construction Is Correct.
`A.
`
`Petitioner Fails To Establish That The Patentee Acted As A
`Lexicographer.
`Petitioner does not propose construing the term “carrier aggregation”
`
`according to its plain and ordinary meaning. Instead, Petitioner and its expert argue
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`that the patentee acted as a lexicographer to assign the term a special definition
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`different than its plain and ordinary meaning. Reply 1 (“defines the term”); id. 3
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`(“the ’356 patent expressly defines”); id. 4 (“the clear definition”); Ex. 2029,
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`128:15–21 (concluding the specification’s disclosure in column 1 at lines 32–33 “is
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`their definition of carrier aggregation acting as their own lexicographer”).
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`To maintain that flawed argument, Petitioner brushes aside all evidence, both
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`intrinsic and extrinsic, Reply 4–8, that establishes the disputed term’s “ordinary and
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`-2-
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`

`IPR2019-00047
`Patent 9,154,356
`
`customary meaning, as would be understood by a skilled artisan in the context of the
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`entire disclosure,” Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x 934,
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`939 (Fed. Cir. 2019).
`
`“However, a claim term is only given a special definition different from the
`
`term’s plain and ordinary meaning if the ‘patentee . . . clearly set[s] forth a definition
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`of the disputed claim term other than its plain and ordinary meaning.’” Akamai
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`Techs., Inc. v. Limelight Networks, Inc., 805 F.3d 1368, 1375 (Fed. Cir. 2015). As
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`the Federal Circuit has also explained:
`
`When a patentee acts as his own lexicographer in
`redefining the meaning of particular claim terms away
`from their ordinary meaning, he must clearly express that
`intent in the written description. We have repeatedly
`emphasized that the statement in the specification must
`have sufficient clarity to put one reasonably skilled in the
`art on notice that the inventor intended to redefine the
`claim term.
`
`Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005)
`
`(italics added). That exacting standard is not met here.
`
`The analysis in Medicines Co. v. Mylan, Inc. is instructive. 853 F.3d 1296,
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`1306 (Fed. Cir. 2017). In Medicines, the Federal Circuit rejected an argument that
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`the patentee acted as a lexicographer and declined to construe a term using a
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`“verbatim” statement taken from the specification. Id. The decision relied on the
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`
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`-3-
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`IPR2019-00047
`Patent 9,154,356
`
`fact that the patentee defined terms elsewhere in the specification by placing “the
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`defined term in quotation marks, followed by the terms ‘refers to’ or ‘as defined
`
`herein.’” Id. The patentee’s departure from this format demonstrated that the
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`necessary intent to act as a lexicographer was not expressed in the statement at issue.
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`Id.
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`In the ’356 Patent, the patentee adopted a similarly distinctive format to
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`clearly set forth a definition for a different term—the defined term in quotation
`
`marks, followed by the phrase “is used herein to mean,” followed by the definition
`
`in quotation marks—as reproduced here:
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`The term “exemplary” is used herein to mean “serving as
`an example, instance, or illustration.”
`
`Ex. 1001, 2:9–11. None of the statements Petitioner relies on for the term “carrier
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`aggregation” resemble this format. Reply 1–2 (citing Ex. 1001 at 1:32–33, 2:53–54,
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`2:54–55). The patentee did not use the phrase “is used herein to mean” for the term.
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`Nor did the patentee use quotation marks for the term or its purported definition. Cf.
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`Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir.
`
`2007) (observing that quotation marks are “often a strong indication that what
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`follows is a definition”). Because the patentee did not use the definitional format,
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`which was used elsewhere in the specification, in connection with the description of
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`the term “carrier aggregation,” it is reasonable to conclude that the patentee did not
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`
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`IPR2019-00047
`Patent 9,154,356
`
`intend for these statements to redefine the plain and ordinary meaning of the term.
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`Medicines, 853 F.3d at 1306.
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`Moreover, the three statements Petitioner relies on to support its argument
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`lack the clear expression of intent because they do not characterize the term carrier
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`aggregation consistently: (1) “which is simultaneous operation on multiple carriers,”
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`Ex. 1001, 1:32–33; (2) “which is operation on multiple carriers,” id., 2:53–54; and,
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`(3) “may also be referred to as multi-carrier operation,” id., 2:54–55. Petitioner’s
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`expert asserts that the first statement is the “most complete” definition of the term
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`and the second statement is not a definition but merely “a reiteration” of the first.
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`Ex. 2029, 117:13–21, 121:20–122:5, 122:11–21. But that makes no sense. Each
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`begins with the same “which is” phrase and thus, there is no basis to conclude from
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`their syntax that one serves as a definition and the other does not. Petitioner’s expert
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`could not explain the distinction between the two either:
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`The sentence in column 2, rows 53 to 54, I believe
`supports the definition in column 1, rows 32 to 33 as a
`reiteration or recapitulation of the same theme. Whether
`that constitutes a definition is not so clear to me.
`
`Ex. 2029, 126:24–127:4. The language of the third sentence casts even more doubt
`
`on the notion that it defines the term because it merely indicates that the term “may
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`also be referred to” by another name, the name “multi-carrier operation.” Ex. 1001,
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`2:54–55.
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`
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`-5-
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`IPR2019-00047
`Patent 9,154,356
`
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`In sum, Petitioner’s argument to support its proposed construction is that the
`
`specification “defines the term” and no other evidence need be considered. Reply
`
`1. But Petitioner fails to establish that the patentee clearly expressed the necessary
`
`intent to redefine the term to have a special meaning different from its plain and
`
`ordinary meaning. Akamai, 805 F.3d at 1375. Accordingly, the Board should reject
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`Petitioner’s lexicography argument and construe the term according to its “ordinary
`
`and customary meaning.” Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F.
`
`App’x 934, 939 (Fed. Cir. 2019).
`
`B.
`
`Patent Owner Established That “Carrier Aggregation” Has A
`Well Understood Meaning In the Art.
`Petitioner asserts that Patent Owner’s construction is narrow and only applies
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`to LTE systems. Reply 3; see also id. (“merely one example of carrier aggregation”).
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`But Petitioner’s only evidence that a broader construction is necessary to encompass
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`other types of systems is a conclusory statement from its expert that its proposed
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`construction “is consistent with the understanding of the term by a POSITA.” Reply
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`2 (citing Ex. 1002, ¶62). Neither the Petitioner nor its expert cite to any intrinsic or
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`extrinsic evidence to support this argument. Accordingly, no weight should be
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`accorded to such statements from Petitioner’s expert because “conclusory,
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`unsupported assertions by experts as to the definition of a claim term are not useful
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`to a court.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005).
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`
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`-6-
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`

`

`IPR2019-00047
`Patent 9,154,356
`
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`“Carrier aggregation” is a technical term that was known to skilled artisans.
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`Ex. 2029, 131:4–132:3 (A person of ordinary skill “would have recognized the
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`term” . . . [and] “would have had an understanding of what carrier aggregation
`
`means.”). “[B]ecause patentees frequently use terms idiosyncratically,” the Board
`
`must examine “‘those sources available to the public that show what a person of skill
`
`in the art would have understood disputed claim language to mean.’” Phillips, 415
`
`F.3d at 1314. In its response, Patent Owner demonstrated, using both intrinsic and
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`extrinsic evidence, that its construction is the ordinary and customary meaning of
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`the term. Resp. 12–23.
`
`
`Intrinsic Evidence
`In its response, Patent Owner identified evidence from the specification and
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`the file history, including statements from the applicant, a prior art reference patent
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`(Kaukovuori) used by the examiner to reject the claims, and two foreign references
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`disclosed in the applicant’s Information Disclosure Statements (WO 2012/008705
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`and GB 2472978). Resp. 13–18.
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`Petitioner’s criticism of this intrinsic evidence:
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` (1) it “is debatable” that the three references cited in the prosecution history
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`“qualify as intrinsic evidence,” Reply 4; and,
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` (2) none of the evidence relied upon “was ever discussed during
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`prosecution,” id.,
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`
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`-7-
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`IPR2019-00047
`Patent 9,154,356
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`is without any basis in the law. Notably, Petitioner cites no case law to establish that
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`this intrinsic evidence is not relevant (or even less relevant) to the claim construction
`
`analysis. And as the response noted, Federal Circuit law makes clear “that prior art
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`cited in a patent or cited in the prosecution history of the patent constitutes intrinsic
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`evidence.” Resp. 16 (citing Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231
`
`(Fed. Cir. 2011).
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`In its Response, Patent Owner explained that Petitioner’s proposed
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`construction fails to provide any additional meaning to the claim language. Resp.
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`30 (“Substituting Petitioner’s proposed construction would result in a claim that
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`recited ‘the input RF signal employing simultaneous operation on multiple carriers
`
`comprising transmissions sent on multiple carriers.’”). Although this absence of
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`additional meaning illustrates a serious flaw in Petitioner’s proposed construction,
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`Petitioner failed to offer any reply. See Merck & Co. v. Teva Pharms. USA, Inc.,
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`395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to
`
`all the terms of the claim is preferred over one that does not do so.”); Mangosoft,
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`Inc. v. Oracle Corp., 525 F.3d 1327, 1330–31 (Fed. Cir. 2008) (rejecting claim
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`construction that “ascribes no meaning to the term . . . not already implicit in the rest
`
`of the claim.”).
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`Petitioner’s argument that Patent Owner’s construction lacks support in the
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`written description is similarly flawed. Reply 3. As explained in the Response, the
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`-8-
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`

`IPR2019-00047
`Patent 9,154,356
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`written description and prosecution history do indeed support patent owner’s
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`proposed construction. Resp. 12–18. “[A] skilled artisan reads a claim term . . . in
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`the context of the entire patent, including the written description and prosecution
`
`history, as well as relevant extrinsic evidence.” Howmedica Osteonics Corp. v.
`
`Zimmer, Inc., 822 F.3d 1312, 1320–21 (Fed. Cir. 2016). The specification discloses
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`that the multiple carriers may be referred to as “component carriers.” Resp. 13. The
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`plain meaning of the adjective “component” indicates that the multiple carriers are
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`components that are combined to form a single aggregated carrier. Id.
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`As the Response also explained, the written description distinguishes “carrier
`
`aggregation” from terms such as “multiple bands” and “multiple radio technologies.”
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`Resp. 30–31 (citing Ex. 1001, 3:43–49; Ex. 2024 ¶ 120). Petitioner ignores this
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`distinction in construing the term “carrier aggregation” so that it reads on “multiple
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`bands” and “multiple radio technologies,” which also implicate multiple carrier
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`operation. In its Reply, Petitioner failed to respond to this distinction in the
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`specification.
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`Moreover, Patent Owner’s expert Dr. Foty explained during his deposition
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`that the written description identifies just one attribute of “carrier aggregation,” and
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`that the term must also be considered in the context of the prosecution history:
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`-9-
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`IPR2019-00047
`Patent 9,154,356
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`“It’s providing a necessary condition. . . . I don’t regard it
`as a complete definition which is why the file history has
`so much further information.”
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`Ex. 1040, 56:1–9.
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`Petitioner’s own expert does not dispute that the intrinsic evidence is
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`consistent with how a person of ordinary skill in the art would understand carrier
`
`aggregation. Ex. 2029, 144:10–145:13 (discussing Kaukovuori, Ex. 1025), 152:14–
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`153:9 (discussing GB 2472978, Ex. 2017).
`
`
`Extrinsic Evidence
`Petitioner argues that extrinsic evidence is being used to change the ordinary
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`and customary meaning of the term. Reply 7. It is not. The extrinsic evidence is
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`entirely consistent with the intrinsic evidence. Resp. 18–23. Specifically, Patent
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`Owner identified seven separate examples of extrinsic evidence from various
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`sources, each of which provides further support and confirmation of the term’s
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`ordinary and customary meaning. Id. (citing Ex. 1004, 2013, 2018–2022).
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`For example, Petitioner does not dispute that its own inventors understood the
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`term to mean multiple carriers are combined (aggregated) as a single virtual channel
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`to provide higher bandwidth. Resp. 18–19 (citing Ex. 2013, an LTE-related patent
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`which claims priority to September 28, 2012—just four months later than the ’356
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`Patent’s claimed priority date). Nor does Petitioner dispute that each of the
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`-10-
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`IPR2019-00047
`Patent 9,154,356
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`textbooks, publications, and patents cited in Patent Owner’s Response use the term
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`as it was ordinarily understood by a skilled artisan, consistent with Patent Owner’s
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`proposed construction. Resp. 18–23. Nor does Petitioner dispute that the Feasibility
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`Study (a reference Petitioner selected and introduced into this proceeding) evidences
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`that a skilled artisan understood that carrier aggregation meant combining carriers
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`for operation as a single virtual channel (i.e., multiplexing user data to each user
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`device). Resp. 20–21 (citing Ex. 1004, dated September 2012); Ex. 2024 ¶¶ 96–97.
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`Indeed, Petitioner’s expert even admits that the extrinsic evidence is “not
`
`inconsistent with” Petitioner’s proposed construction. Ex. 1039 ¶26.
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`“[B]ecause extrinsic evidence can help educate the court regarding the field
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`of the invention and can help the court determine what a person of ordinary skill in
`
`the art would understand claim terms to mean,” it is proper for the Board to consider
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`Patent Owner’s extrinsic evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1319
`
`(Fed. Cir. 2005).
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`C.
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`Petitioner’s Proposed Construction Cannot Be Correct.
`
`Petitioner’s Construction Violates The Doctrine Of
`Prosecution History Disclaimer.
`Petitioner asserts that Patent Owner’s arguments and amendments during
`
`prosecution to distinguish the Hirose reference cannot constitute a prosecution
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`-11-
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`IPR2019-00047
`Patent 9,154,356
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`history disclaimer.1 Reply 4–6. As the Response explained, the applicant amended
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`the pending claims during prosecution to add the “employing carrier aggregation”
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`limitation to overcome the Hirose reference and argued that “Hirose’s ‘satellite wave
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`signal and ground wave signal’ do not result in ‘carrier aggregation’ as claimed by
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`Applicant.” Resp. 25–27; Ex. 1015. Yet Petitioner now proposes construing the
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`term so broadly that the claims once again read on Hirose, which discloses
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`“simultaneous operation on multiple carriers.” Resp. 27–28; Ex. 2024 ¶114.
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`Petitioner’s construction violates the doctrine of prosecution disclaimer:
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`[A]n amendment that clearly narrows the scope of a claim,
`such as by the addition of a new claim limitation,
`constitutes a disclaimer of any claim interpretation that
`would effectively eliminate the limitation or that would
`otherwise recapture the claim’s original scope.
`
`
`1 Petitioner’s argument that Patent Owner’s expert purportedly “abandoned”
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`a theory of prosecution disclaimer is of no moment. Reply 4. First,
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`“interpretations of evidence intrinsic to the patent . . . are legal conclusions.”
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`UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 822 (Fed. Cir. 2016).
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`Second, the issue is not whether the scope of the “carrier aggregation” term was
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`disclaimed. The issue is that Petitioner’s proposed construction negates the
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`amendment to overcome Hirose.
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`-12-
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`IPR2019-00047
`Patent 9,154,356
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`Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010).
`
`To support its position, Petitioner argues that “Patent Owner is seeking to
`
`create new law regarding” whether prosecution history disclaimer applies under the
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`BRI standard and further, that disclaimer “does not apply” here because Patent
`
`Owner advanced the argument during claim construction. Reply 5. The Federal
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`Circuit rejects both of Petitioner’s arguments:
`
`In inter partes review, the Board construes claims
`according to “their broadest reasonable construction in
`light of the specification as they would be interpreted by
`one of ordinary skill in the art.” In applying this standard,
`“words of the claim must be given their plain meaning,
`unless such meaning is inconsistent with the specification
`and the prosecution history.” The Board must “exclude
`any
`interpretation
`that was disclaimed during
`prosecution.” Never have we authorized the Board to
`disregard clear and unmistakable statements of disclaimer
`from the prosecution history of a patent simply because it
`is the patent owner arguing for disclaimer. . . . Claim
`construction is an objective inquiry. . . . The meaning of a
`claim term does not change depending on the party that
`argues prosecution disclaimer.
`
`VirnetX Inc. v. Mangrove Partners Master Fund, Ltd., 778 F. App’x 897, 910 (Fed.
`
`Cir. 2019) (concluding the Board erred in refusing to consider statements of
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`IPR2019-00047
`Patent 9,154,356
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`disclaimer because it was the patent owner that advanced the disclaimer argument
`
`in support of its proposed claim construction) (italics added) (citations omitted).
`
`Petitioner’s argument that disclaimer binds only the patent owner misreads
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`Tempo. Reply 5 (citing Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed.
`
`Cir. 2014)). Tempo stands for the proposition that “the Board is not required to
`
`accept a patent owner’s arguments as disclaimer when deciding the merits of those
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`arguments. It does not mean the Board in an inter partes review can ignore
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`statements made in a prior reexamination.” VirnetX, 778 F. App’x at 910.
`
`Petitioner never disputes that Hirose could not have been distinguished if the
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`term “carrier aggregation” meant “simultaneous operation on multiple carriers.” See
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`Reply 4–6. Moreover, Petitioner concedes that Hirose discloses “simultaneous
`
`signals.” Reply 6. Petitioner’s expert states it even more clearly: “Hirose’s receiver
`
`operates simultaneously on multiple carriers.” Ex. 2029, 163:8–9. Thus, “carrier
`
`aggregation” cannot simply mean “simultaneous operation on multiple carriers” as
`
`Petitioner proposes because “by distinguishing the claimed invention over [Hirose],
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`[the] applicant . . . indicat[ed] what the claims do not cover.” Ekchian v. Home
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`Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997).
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`-14-
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`IPR2019-00047
`Patent 9,154,356
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`
`
`
`Petitioner’s Construction Reads Out The Word
`“Aggregation.”
`In its reply, Petitioner argues that its proposed construction does not read out
`
`the term “aggregation.” Petitioner asserts the term “aggregation” in this context
`
`means “multiple carriers would be present simultaneously in the input RF signal.”
`
`Reply 8. This explanation is unhelpful as it merely rehashes its proposed
`
`construction. Moreover, Petitioner’s explanation is not consistent with the intrinsic
`
`and extrinsic evidence, including evidence of how its own inventors described the
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`“aggregation.” Resp. 12–23; see, e.g., Ex. 2013, 3:19–53 (U.S. Pat. No. 9,161,254,
`
`assigned to Intel Corp.) (“One technique for providing additional bandwidth
`
`capacity to wireless devices is . . . aggregation of multiple smaller bandwidths to
`
`form a virtual wideband channel at a wireless device. . . . Carrier aggregation
`
`provides a broader choice to the wireless devices, enabling more bandwidth to be
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`obtained. The greater bandwidth can be used to communicate bandwidth intensive
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`operations, such as streaming video or communicating large data files.”).
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`As Patent Owner’s response explained, “aggregate” means “to collect
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`together, assemble.” Resp. 30. With carrier aggregation, data is split up
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`(multiplexed) and transmitted over multiple frequencies (component carriers) to
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`create a higher bandwidth channel for the device. Resp. 5; Ex. 2024 ¶52. The user
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`device receives and de-multiplexes (aggregates) the multiple streams to recreate the
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`original incoming data stream. Resp. 14. The result is that the incoming data stream
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`is received more quickly because it was transmitted in a higher bandwidth virtual
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`channel. Id. 15. Petitioner’s proposed construction (“simultaneous operation on
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`multiple carriers”) should be rejected because it fails to impart any meaning to the
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`term “aggregation.”
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`
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`Petitioner’s Criticisms Of Patent Owner’s Proposed
`Constructions Are Based On The Flawed Premise That The
`Patentee Acted As A Lexicographer.
`Petitioner seeks a broad construction so that the disputed claim limitation
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`reads on the prior art it has identified. To support this objective, Petitioner
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`repeatedly argues that Patent Owner’s proposed construction is too narrow. Reply
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`1 (“overly narrow”); id. 3 (“far narrower”); id. 5 (“the doctrine does not apply where
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`a patent owner seeks to rely upon it to narrow the broadest reasonable
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`interpretation”); id. 16 (“narrowing claim construction”).
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`Each of Petitioner’s arguments stems from the premise that the patentee acted
`
`as a lexicographer to assign the term a special definition different than its ordinary
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`meaning. From Petitioner’s perspective, Patent Owner’s proposed construction
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`must be wrong because it is narrower than the purported special definition. But as
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`explained above, this reasoning is flawed because the patentee did not act as a
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`lexicographer.
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`Notably, Petitioner never disputes that skilled artisans understood the term to
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`have the plain and ordinary meaning as Patent Owner’s proposed construction.
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`Petitioner cannot dispute this. Indeed, Petitioner’s own patents demonstrate the term
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`has the same plain and ordinary meaning that Patent Owner proposes. Ex. 2013.
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`To avoid the plain and ordinary meaning, Petitioner must begin with the
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`premise that the patentee acted as a lexicographer, and thus, any other construction
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`must be “too narrow.” But stripped of its lexicography argument, Petitioner’s
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`arguments and criticisms of Patent Owner’s proposed construction must also fail.
`
`D. The Term Carrier Aggregation Requires An Increased
`Bandwidth.
`As the term implies, “carrier aggregation” includes an aggregation of
`
`component carriers. See Ex. 1001, 3:1-38; Figs. 2A-2D, Ex. 2024, ¶¶83-85. And as
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`the intrinsic and extrinsic evidence show, this aggregation provides an increased
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`bandwidth that results in an increased aggregated data rate. Resp. 12–23; see, e.g.,
`
`Ex. 2013, 3:19–53. In other words, carrier aggregation allows data to be transmitted
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`to a user more quickly than is the case with traditional single-frequency methods.
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`Resp. 5; Ex. 2024 ¶52.
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`Petitioner’s proposed construction fails to address any of these characteristics
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`that were well-known to skilled artisans at the time of the alleged invention. At the
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`very least, the term carrier aggregation must be construed to reflect that, in addition
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`to referring to simultaneous operation on multiple carriers, the term reflects
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`operation that provides an increased bandwidth and thereby an increased aggregated
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`data rate to the user.
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`III. Ground I – Petitioner Fails To Establish That Uehara Anticipates The
`Claims.
`A. Uehara Fails To Disclose The Recited First And Second Amplifier
`Stages
`
`Uehara Fails To Disclose Independently Enabled Or
`Disabled Amplifier Stages
`Petitioner contends that embodiments in Figures 2A and 3 anticipate the
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`claims. See, e.g., Pet. 44 (“Fig. 2A discloses . . .”), Reply 9–10 (describing Fig. 2A).
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`Petitioner argues that VN1 and VNAux are “distinct control voltage[s]” and that “the
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`presence of these separate control signals VN1 and VNAux, alone, teaches that each
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`identified amplifier stage . . . is ‘configured to be independently enabled or
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`disabled.’” Reply 10–11. First, Petitioner presents a configuration (State 2 in Table
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`1) that is not described in Uehara. See Ex. 1003, [0038]–[0040]. Uehara teaches
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`that the second transconductance stage (102) is only enabled to deliver current to
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`both outputs during times when the first transconductance stage (101) is enabled to
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`deliver current to both outputs. Ex. 2024, ¶163. Second, even if this configuration
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`were applied, Petitioner fails to show that each amplifier stage is independently
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`enabled.
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`The flaw in Petitioner’s theory is apparent by considering the outputs
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`produced by Petitioner’s “four operational/control states.” Reply 11. The table
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`below illustrates that amplifier stage 101 provides a first RF output signal to OUT1
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`whenever either VN1 or VNAux are enabled. In other words, OUT1 is dependent
`
`on the state of both amplifier stages.2 For example, when VNAux is on, VN1 is of
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`no use in disabling OUT1.
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`Output to
`VNAux
`VN1
`
`OUT1
`(stage 102)
`(stage 101)
`State
`ON
`OFF
`ON
`1
`ON
`ON
`OFF
`2
`ON
`ON
`ON
`3
`OFF
`OFF
`OFF
`4
`Petitioner’s Table 1 (extended to include Output columns).3
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`Output to
`OUT2
`OFF
`ON
`ON
`OFF
`
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`2 Petitioner’s expert testified that “independently enabled or disabled” means
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`that “the amplifier stages . . . had to be configured to enable or disable each
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`amplifier stage independently of whether or not any other amplifier stage is
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`enabled or disabled.” Ex. 2014, 32:8–23.
`
`3 The headings in Petitioner’s Table 1 conflate VN1 with stage 101, and
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`VNAux with stage 102. In Figure 2A, transistors 201-202 make up one
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`transconductance stage (e.g., Fig. 1, 101) and transistors 203-204 another
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`transconductance stage (e.g., Fig. 1, 102). Ex. 1003, [0034]–[0036]. VN1, VN2,
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`Petitioner apparently does not disagree and is unfazed by this deficiency.