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`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
`______________________
`
`PRELIMINARY PATENT OWNER RESPONSE TO PETITION FOR
`INTER PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.107
`
`
`
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`
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`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................... 1
`I.
`II. THE ’356 PATENT AND ITS PROSECUTION HISTORY .......................... 2
`A. Overview of the ’356 Patent .......................................................................... 2
`B.
`Prosecution History of the ’356 Patent ......................................................... 5
`III. CLAIM CONSTRUCTION ............................................................................. 8
`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35 U.S.C.
`
`§ 325(d) TO DENY INSTITUTION ............................................................... 9
`A. The Board Should Deny Ground I Because Uehara Was Considered By
`
`The Patent Office During Prosecution .......................................................... 9
`B. The Board Should Deny Grounds II-VI Because The Same or Substantially
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`the Same Art Or Arguments Were Considered By The Examiner During
`
`Prosecution .................................................................................................. 13
`V. THE PETITION SHOULD BE DENIED BECAUSE IT IS CUMULATIVE
`
`TO IPR2019-00048 AND IPR2019-00128 .................................................... 16
`VI. CONCLUSION .............................................................................................. 20
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`
`
`
`I.
`
`INTRODUCTION
`Intel Corporation (“Intel” or “Petitioner”) seeks review of claims 1, 7, 8, 10,
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`11, 17, and 18 of U.S. Patent No. 9,154,356 (the “’356 Patent”) based on anticipation
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`and obviousness grounds that rely on the same or substantially the same references
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`or arguments previously presented to the Patent Office during examination. U.S.
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`Patent Application Publication No. 2011/0217945 (“Uehara”) – the primary
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`reference in this Petition – was presented to and considered by the Patent Office
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`during prosecution of the application giving rise to the ’356 Patent. But Uehara was
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`not merely disclosed – Uehara was discussed in detail in an International Search
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`Report and Written Opinion that rejected related claims in a PCT application as
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`lacking novelty and inventiveness. This International Search Report and Written
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`Opinion was also presented to and considered by the Patent Office, and the Examiner
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`ultimately allowed the ’356 Patent. The secondary references Petitioner relies on
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`are substantially the same as other art presented to and considered by the Patent
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`Office during examination. Accordingly, the Board should exercise its discretion
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`under 35 U.S.C. §325(d) to deny institution.
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`The Board should alternatively exercise its discretion under 35 U.S.C. §314(a)
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`to reject the Petition as redundant to other contemporaneously-filed petitions
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`challenging the same claims. IPR2019-00048 and IPR2019-00128 challenge largely
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`the same claims, with substantially the same arguments. IPR2019-00128 presents
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`1
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`
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`an anticipatory ground that overlaps with the present Petition’s anticipatory ground
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`based on Uehara. Petitioner makes no attempt to explain how Uehara is more
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`relevant than or differs from the primary reference in IPR2019-00128. Moreover,
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`Petitioner relies on the same secondary reference across all three petitions to
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`allegedly plug the same hole in each primary reference. Thus, each ground presented
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`in this Petition is cumulative to the arguments Petitioner advances in IPR2019-00048
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`and IPR2019-00128.
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`The Board should not reward Petitioner for its redundant and cumulative
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`attacks but should instead exercise its discretion under 35 U.S.C. §§ 314(a) or 325(d)
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`to deny institution.
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`II. THE ’356 PATENT AND ITS PROSECUTION HISTORY
`A. Overview of the ’356 Patent
`The ’356 Patent, titled “Low Noise Amplifiers for Carrier Aggregation,”
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`generally relates to the design and operation of amplifiers in a wireless device
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`receiving radio frequency (RF) signals employing carrier aggregation.
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`Receiving signals that employ carrier aggregation, a communication
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`technique that Qualcomm pioneered, allows a mobile device to increase the
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`bandwidth available to a user for receiving the user’s desired content. With carrier
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`aggregation, data is split up and transmitted over multiple frequencies (carriers) to
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`create more bandwidth for the device. Carrier aggregation therefore allows more
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`2
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`data to be transmitted more quickly than traditional single-frequency methods.
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`However, a typical mobile device is not always receiving RF signals employing
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`carrier aggregation. For example, sometimes a mobile device may receive RF
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`signals on a single carrier, and at other times it receives no RF signals at all. One
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`aspect of the invention of the ’356 Patent is a receiver design that offers the
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`flexibility of activating circuitry to receive a signal employing carrier aggregation
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`when needed and deactivating that circuitry when it is not needed. By allowing
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`flexibility of circuit components between carrier aggregation and non-carrier-
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`aggregation modes, a mobile device can conserve power when less bandwidth is
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`needed, and provide increased bandwidth to the user when desired.
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`Aspects of the ’356 Patent may be found in the RF transceiver of mobile
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`devices. The RF transceiver is a component that receives radio-frequency (RF)
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`signals transmitted over the air (which can be at frequencies in the MHz to GHz
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`ranges) and converts the RF signals to baseband signals that can be provided to
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`digital circuitry for processing, for example, to recover user data. The RF transceiver
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`is connected to the antenna that receives the RF signals through RF front-end
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`circuitry, which prepares the received signals for conversion to baseband signals,
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`such as by filtering the signals.
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`The ’356 Patent’s claims are directed to an RF receiver (for example, within
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`an RF transceiver) with two amplifiers that separately amplify a common input RF
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`3
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`signal, where each of the two amplifiers can be independently enabled or disabled.
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`By independently controlling the amplifier stages, the amplifier stages may be
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`enabled or disabled as needed for carrier aggregation operation. For example, the
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`two amplifiers may be enabled in carrier aggregation mode. Alternatively, one of
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`the amplifiers may be enabled and the other disabled in non-carrier-aggregation
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`mode.
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`By allowing the flexibility to disable an amplifier stage when it is not needed
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`for carrier aggregation, the invention of the ’356 Patent reduces power consumption
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`in the RF transceiver and extends battery life for the mobile device. Furthermore,
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`by sharing a common RF input signal between both amplifier stages, the invention
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`of the ’356 Patent reduces the number of connections needed in the RF transceiver,
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`which in turn reduces the size of the transceiver and of the mobile device, and
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`reduces the number of components required for multiple modes of operation.
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`Claims 1 and 17 illustrate embodiments of the ’356 Patent’s inventions:
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`1. An apparatus comprising:
`a first amplifier stage configured to be independently
`enabled or disabled, the first amplifier stage further
`configured to receive and amplify an input radio frequency
`(RF) signal and provide a first output RF signal to a first
`load circuit when the first amplifier stage is enabled, the
`input RF signal employing carrier aggregation comprising
`transmissions sent on multiple carriers at different
`frequencies to a wireless device, the first output RF signal
`including at least a first carrier of the multiple carriers; and
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`4
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`
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`a second amplifier stage configured to be independently
`enabled or disabled, the second amplifier stage further
`configured to receive and amplify the input RF signal and
`provide a second output RF signal to a second load circuit
`when the second amplifier stage is enabled, the second
`output RF signal including at least a second carrier of the
`multiple carriers different than the first carrier.
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`17. A method comprising:
`amplifying a first input radio frequency (RF) signal with a
`first amplifier stage to obtain a first output RF signal when
`the first amplifier stage is enabled, the first amplifier stage
`configured to be independently enabled or disabled, the
`first input RF signal employing carrier aggregation
`comprising transmissions sent on multiple carriers at
`different frequencies to a wireless device, the first output
`RF signal including at least a first carrier of the multiple
`carriers; and
`amplifying the first input RF signal or a second input RF
`signal with a second amplifier stage to obtain a second
`output RF signal when the second amplifier stage is
`enabled, the second amplifier stage configured to be
`independently enabled or disabled, the second output RF
`signal including at least a second carrier of the multiple
`carriers different than the first carrier.
`
`Ex. 1001 at 20:43-61; 22:11-27.
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`B.
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`Prosecution History of the ’356 Patent
`The ’356 Patent issued from U.S. Patent Application No. 13/590,423 (the
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`“’423 Application”), filed August 21, 2012, and claims priority to U.S. Provisional
`
`Application No. 61/652,064, filed May 25, 2012. Ex. 1001. The ’423 Application
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`5
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`underwent a lengthy and comprehensive examination, spanning five rejections and
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`advisory actions, two requests for continued examination, and hundreds of cited
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`references, including multiple 3rd Generation Partnership Project (“3GPP”)
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`standards/articles and an International Search Report (“ISR”) and Written Opinion.
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`The first office action issued November 14, 2013, and rejected independent
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`claims 1 and 17, among other claims, as obvious over U.S. Patent No. 7,751,513
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`(“Eisenhut”). Ex. 1012 at 3-5. To overcome the rejection, Applicant amended claim
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`1 as follows:
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`1. An apparatus comprising:
`a first amplifier stage configured to receive and amplify an
`input radio frequency (RF) signal and provide a first
`output RF signal to a first load circuit when the first
`amplifier stage is enabled, the input RF signal comprising
`transmissions sent on multiple carriers at different
`frequencies to a wireless device, the first output RF signal
`including at least a first carrier of the multiple carriers; and
`
` a
`
` second amplifier stage configured to receive and amplify
`the input RF signal and provide a second output RF signal
`to a second load circuit when the second amplifier stage is
`enabled, the second output RF signal including at least a
`second carrier of the multiple carriers different than the
`first carrier.
`
`Ex. 1013 at 2. Applicant made a similar amendment to claim 17. Id. at 5. Applicant
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`additionally included arguments that Eisenhut does not teach or suggest at least the
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`elements added by amendment. Id. at 7-9.
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`6
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`The Patent Office then issued a final office action on April 18, 2014, rejecting
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`claims 1 and 17 (among others) as anticipated by U.S. Patent No. 7,317,894
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`(“Hirose”). Ex. 1014 at 3-5. In response, Applicant amended claims 1 and 17 to
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`recite “the input RF signal employing carrier aggregation comprising transmissions
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`sent on multiple carriers at different frequencies to a wireless device,” and “the first
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`input RF signal employing carrier aggregation comprising transmissions sent on
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`multiple carriers at different frequencies to a wireless device,” respectively. Ex.
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`1015 at 2, 5. Applicant further argued that Hirose did not utilize an input RF signal
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`employing carrier aggregation. Id. at 7-9.
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`The Patent Office then issued an advisory action indicating that the claim
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`amendments raised new issues that would require additional searching. Ex. 2001.
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`Accordingly, on July 17, 2014, Applicant filed a request for continued examination
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`(“RCE”) that included the aforementioned amendments and arguments. Ex. 2002.
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`The Patent Office next issued a non-final office action on August 1, 2014,
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`rejecting claims 1 and 17 as anticipated by U.S. Patent No. 8,442,473
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`(“Kaukovuori”). Ex. 1016 at 3-5. In response, Applicant presented numerous
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`arguments that Kaukovuori does not teach or suggest “[a first amplifier stage
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`configured to ... amplify/ amplifying ... with a first amplifier stage] ... when the first
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`amplifier stage is enabled ... and [a second amplifier stage configured to ... amplify/
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`7
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`amplifying ... with a second amplifier stage] ... when the second amplifier stage is
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`enabled,” as recited in claims 1 and 17. Ex. 1017 at 7-9.
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`On December 26, 2014, the Patent Office issued a second final office action,
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`again rejecting claims 1 and 17 as anticipated by Kaukovuori. Ex. 1018 at 7-9. After
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`an Examiner Interview discussing possible claim amendments, Applicant amended
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`independent claims 1 and 17 to recite that the first amplifier stage is configured to
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`“be independently enabled or disabled . . .” and the second amplifier stage is
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`configured to “be independently enabled or disabled . . . .” Exs. 1019; 1020 at 2, 5.
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`In light of this amendment, the Examiner allowed claims 1 and 17. Ex. 1021 at 6, 9.
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`Prior to paying the issue fee, Applicant filed a second request for continued
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`examination in order to permit the Patent Office to consider additional prior art
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`disclosed in an Information Disclosure Statement. Ex. 2003. After reviewing the
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`references, the Examiner again issued a Notice of Allowance, and the ’423
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`Application issued on October 6, 2015 as the ’356 Patent. Ex. 1022.
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`III. CLAIM CONSTRUCTION
`37 C.F.R. 42.100(b) states that claims must be given their broadest reasonable
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`interpretation in light of the specification (“BRI standard”). Patent Owner submits
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`that no terms must be construed at this stage in the proceeding, and that the Board
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`should deny institution under any claim construction it adopts. Patent Owner
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`reserves the right to put forth constructions of particular claim terms and to rebut
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`8
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`constructions proffered in the petition as relevant to the patentability of the claims
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`should trial be instituted.
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`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 325(D) TO DENY INSTITUTION
`The Board Should Deny Ground I Because Uehara Was
`Considered By The Patent Office During Prosecution
`Ground I of the Petition asks the Board to reconsider the Uehara reference,
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`A.
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`which was already considered by the Patent Office during prosecution. Petitioner
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`asserts in Ground I that claims 1, 11, 17, and 18 are anticipated by Uehara. The
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`Board should exercise its discretion under 35 U.S.C. § 325(d) to deny Ground I
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`because the Patent Office previously allowed these claims over the very same art
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`now being rehashed by Petitioner.
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`Not only did the Examiner consider the Uehara reference during examination
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`(as indicated by his initials on an IDS), he also considered an ISR and Written
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`Opinion of the International Searching Authority that provided a detailed discussion
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`of how Uehara allegedly reads on the claims. The ISR and Written Opinion found
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`that the relevant claims in the related PCT application lacked novelty and
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`inventiveness over Uehara. This ISR and Written Opinion was cited to the Patent
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`Office and fully considered, as indicated by the Examiner’s initials.
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`It is well established that the Board can exercise its discretion under Section
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`325(d) to deny institution of a petition based on art that was considered during
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`9
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`prosecution. Neil Ziegman, N.P.Z., Inc. v. Carlis G. Stephens, IPR2015-01860,
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`Paper 11 at 10 (PTAB Feb. 24, 2016) (denying institution under Section 325(d)
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`based on a prior-art reference considered by the Office during prosecution); Prism
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`Pharma Co., Ltd. v. Choongwae Pharma Corp., IPR2014-00315, Paper 14 at 12-13
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`(PTAB July 8, 2014) (same).
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`During prosecution of the ’356 Patent, Qualcomm submitted an IDS listing
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`Uehara. Ex. 2004. The Examiner subsequently considered Uehara and provided his
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`initials on a signed and dated “List of References cited by applicant and considered
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`by Examiner.” Id. That is enough to show that the Office previously considered
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`Uehara for purposes of Section 325(d). See, e.g., R.J. Reynolds Vapor Co. v. Fontem
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`Holdings 1 B.V., IPR2017-00626, Paper 7 at 12 (PTAB Sept. 27, 2018) (denying
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`institution under Section 325(d) and finding that references listed on IDS were
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`previously considered by the examiner); Clim-A-Tech Ind., Inc. v. William A. Ebert,
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`IPR2017-01863, Paper 13 at 18-19 (PTAB Feb. 12, 2018) (relying on §325(d) as an
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`additional basis to deny institution of anticipatory ground where the reference was
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`cited in an IDS but not applied by the examiner as a basis for rejection). There is no
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`question that the Examiner considered the Uehara reference relied on by Petitioner
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`and allowed the claims over it. In fact, Uehara is listed on the face of the ’356 Patent.
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`In addition to considering the Uehara reference itself, the Examiner also
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`considered the ISR and Written Opinion of the International Searching Authority,
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`10
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`which provided a detailed description of how Uehara allegedly reads on the claims.
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`See Ex. 2005 (IDS citing the ISR and Written Opinion); Ex. 2006 (ISR and Written
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`Opinion). The Uehara reference was one of only four references cited in the ISR
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`and Written Opinion. The Examiner considered these documents and initialed,
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`signed, and dated the IDS listing them. Ex. 2005. In allowing the claims of the ’356
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`Patent, the Examiner thus considered the ISR and Written Opinion and their
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`discussion of Uehara and allowed the claims over this reference. Id.
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`In evaluating whether to deny institution on the basis of Section 325(d), the
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`Board considers the following list of factors set forth in Becton Dickinson & Co. v.
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`B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17-18 (PTAB Dec. 15, 2017)
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`(informative):
`
`1. the similarities and material differences between the asserted art
`and the prior art involved during examination;
`2. the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`3. the extent to which the asserted art was evaluated during
`examination;
`4. the extent of the overlap between the arguments made during
`examination and the manner in which a petitioner relies on the prior art
`or a patent owner distinguishes the prior art;
`5. whether a petitioner has pointed out sufficiently how the Office
`erred in evaluating the asserted prior art; and
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`11
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`6. the extent to which additional evidence and facts presented in
`the petition warrant reconsideration of the prior art or arguments.
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`Here, the Becton Dickinson factors support denying institution.
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`As to factor 1, it is beyond dispute that the Uehara reference, relied on by
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`Petitioner, is the very same art considered by the Patent Office during prosecution.
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`This factor thus weighs strongly in favor of non-institution. For factor 2, given that
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`it is the same reference evaluated during prosecution, there is no question that
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`Uehara is cumulative, and this factor likewise weighs in favor of Patent Owner.
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`Factor 3 also supports non-institution. Not only did the Examiner review and
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`initial an IDS indicating his consideration of the Uehara reference, he also
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`considered the ISR and Written Opinion that provided a detailed discussion of how
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`Uehara allegedly reads on the claims. The ISR and Written Opinion from a
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`corresponding PCT application are especially relevant to the prosecution of a
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`pending patent application. Further, the Uehara reference was considered in the ISR
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`and Written Opinion, and the relevant PCT claims were identical to the originally
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`filed claims in the ’423 Application. Compare Ex. 2007 to Ex. 2008. Under these
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`circumstances, it is unreasonable to think that the Examiner would not properly
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`consider the ISR and Written Opinion and the Uehara reference cited and discussed
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`therein, which provided the Examiner with an independent evaluation of Uehara.
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`After indicating his consideration of both, the Examiner determined that Uehara was
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`12
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`not relevant enough to apply in an obviousness rejection, much less an anticipation
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`rejection. Factor 3 thus weighs in favor of non-institution.
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`As to factor 4, the Office did not issue a rejection over Uehara, so this factor
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`is not applicable and thus favors neither party.
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`As to factors 5 and 6, the Petitioner, having the burden of proof, has made no
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`attempt to demonstrate any error by the Patent Office or any other reason why
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`reconsideration might be warranted. In fact, Petitioner includes no discussion of
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`Section 325(d) or the Becton Dickenson factors. Petitioner thus asks the Board to
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`second guess the Office’s previous determination that the claims are patentable over
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`Uehara without providing any reason why the Board should re-evaluate that art.
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`Factors 5 and 6 therefore also weigh in favor of non-institution.
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`For at least these reasons, the Board should exercise its discretion to deny
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`institution of Ground I under 35 U.S.C. § 325(d).
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`B.
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`The Board Should Deny Grounds II-VI Because The Same or
`Substantially the Same Art Or Arguments Were Considered By
`The Examiner During Prosecution
`As described above, the Patent Office considered primary reference Uehara
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`during examination. Grounds II-VI allege that the combination of Uehara and
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`several secondary references render obvious claims 1, 7, 8, 10, 11, 17, and 18.
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`Because these references are the same or substantially the same art or arguments
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`13
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`previously considered by the Office, the Board should exercise its discretion under
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`35 U.S.C. § 325(d) to deny institution of Grounds II-VI.
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`Ground II alleges that claims 7 and 8 are obvious over Uehara in view of
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`“Resistive-Feedback CMOS Low-Noise Amplifiers for Multiband Applications,” by
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`Bevin G. Perumana, Jing-Hong C. Zhan, Stewart S. Taylor, Brent R. Carlton, and
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`Joy Laskar (“Perumana”) (Ex. 1008). Ground III alleges that claim 10 is obvious
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`over Uehara in view of “Digitally-Controlled RF Passive Attenuator in 65 nm
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`CMOS for Mobile TV Tuner ICs,” by Ahmed Youssef and James Haslett
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`(“Youssef”) (Ex. 1009). Grounds IV-VI add 3GPP TR 36.912 V9.1.0; 3rd
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`Generation Partnership Project; Technical Specification Group Radio Access
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`Network; Feasibility Study for Further Advancements for E-UTRA (LTE-
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`Advanced) (Release 9) (“Feasibility Study”) (Ex. 1004) to each of Grounds I-III to
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`allegedly render obvious claims 1, 7, 8, 10, 11, 17, and 18.
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`The Feasibility Study is a technical report describing aspirations for future
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`wireless standards released by 3GPP. One of those aspirations is to make it “possible
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`to configure a [user equipment] to aggregate a different number of component
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`carriers originating from the same [base station] and of possibly different
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`bandwidths in the [uplink] and the [downlink]” communication paths. This technical
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`report contains no design concepts for circuitry to support its described operating
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`modes.
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`14
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`
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`The Feasibility Study is substantially the same art as 3GPP TS 36.101 v11.0.0
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`(“36.101 Specification”), a reference the Patent Office also considered during
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`examination. Petitioner relies on the Feasibility study as disclosing the claim 1 and
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`claim 17 limitation “an input RF signal employing carrier aggregation.” In all
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`relevant aspects, the 36.101 Specification considered by the Patent Office during
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`examination is the same as the Feasibility Study. In fact, the 36.101 Specification
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`and the Feasibility Study both describe the E-UTRA network, which supports carrier
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`aggregation. For example, the Feasibility Study describes potential advancements
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`to the E-UTRA network – a network fully described in the 36.101 Specification.
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`Carrier aggregation is not an advancement proposed by the Feasibility Study because
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`carrier aggregation was already fully supported by the E-UTRA network described
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`in the 36.101 Specification. In fact, the 36.101 Specification defines “carrier
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`aggregation” as “[a]ggregation of two or more component carriers in order to support
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`wider
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`transmission bandwidths,” and references “carrier aggregation” or
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`abbreviation “CA” more than 150 times.
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`Petitioner’s argument that the Feasibility Study is somehow more relevant
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`than the 36.101 Specification because it allegedly teaches a receiver architecture
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`mischaracterizes the reference and has no merit. First, the Feasibility Study does not
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`teach the use of any particular receiver architecture – it vaguely describes several
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`possible high-level receiver configurations that might be used with the potential
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`15
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`advancements to E-UTRA. Second, Petitioner relies on the Feasibility Study for the
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`claim limitation “an input RF signal employing carrier aggregation,” which does not
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`itself recite a specific architecture. Petitioner’s reliance on the Feasibility Study thus
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`adds nothing relevant to the claims of the ’356 Patent beyond what is described in
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`the 36.101 Specification already considered by the Examiner. The remaining
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`references, Perumana and Youssef, are insignificant secondary references relied on
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`as allegedly disclosing the limitations of dependent claims 7, 8, and 10. The
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`dependent claims are allowable for at least the same reasons as independent claim 1,
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`and the references are redundant to others presented to the Patent Office during
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`prosecution.
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`For at least these reasons, the Board should exercise its discretion to deny
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`institution of Grounds II-VI under 35 U.S.C. § 325(d).
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`V. THE PETITION SHOULD BE DENIED BECAUSE IT IS
`CUMULATIVE TO IPR2019-00048 AND IPR2019-00128
`Petitioner challenges overlapping claims with redundant references and
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`arguments across three petitions. The Board should exercise its discretion under 35
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`U.S.C. § 314(a) to deny Petitioner’s serial attacks on the same claims of the ’356
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`Patent.
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`Petitioner presently challenges claims 1, 7, 8, 10, 11, 17, and 18 across six
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`different grounds: 1) claims 1, 11, 17, and 18 are anticipated by Uehara (Ex. 1003);
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`2) claims 7 and 8 are obvious over Uehara in view of Perumana (Ex. 1008); 3) claim
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`16
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`10 is obvious over Uehara in view of Youssef (Ex. 1009); 4) claims 1, 11, 17, and
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`18 are obvious over Uehara in view of Feasibility Study (Ex. 1004); 5) claims 7 and
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`8 are obvious over Uehara in view of the Feasibility Study and Perumana; and 6)
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`claim 10 is obvious over Uehara in view of the Feasibility Study and Youssef.
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`Separately, Petitioner filed two other and redundant petitions challenging the
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`same or substantially the same sets of claims. IPR2019-00048 challenges claims 1,
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`9, 10, 17, and 18 across four grounds: 1) claims 1, 17, and 18 are obvious over “A
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`Scalable 6-to-18 GHz Concurrent Dual-Band Quad-Beam Phased-Array Receiver in
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`CMOS,” by Sanggeun Jeon, Yu-Jiu Wang, Hua Wang, Florian Bohn, Arun
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`Natarajan, Aydin Babakhani, and Ali Hajimiri (“Jeon”) in view of U.S. Patent
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`Application Publication No. 2010/0237947) (“Xiong”); 2) claims 9 and 10 are
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`obvious over Jeon in view of Xiong and Feasibility Study; 3) claims 1, 17, and 18
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`are obvious over Jeon in view of Xiong and Feasibility Study; and 4) claims 9 and
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`10 are obvious over Jeon in view of Xiong, Feasibility Study, and Youssef.
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`IPR2019-00128 challenges claims 1, 7, 8, 11, 17, and 18 across three grounds: 1)
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`claims 1, 7, 8, 11, 17, and 18 are anticipated by U.S. Patent Application Publication
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`No. 2012/0056681 (“Lee”); 2) claims 7 and 8 are obvious over Lee; and 3) claims
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`1, 7, 8, 11, 17, and 18 are obvious over Lee in view of the Feasibility Study.
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`Pre-SAS, it was not only appropriate for the Board to deny institution of
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`redundant grounds, it was commonplace. See, e.g., Toyota Motor Corp. v. American
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`Vehicular Sciences LLC, IPR2013-00423, 2014 WL 2507979, Paper 14 (PTAB Jan.
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`13, 2014); Broadcom Corp. v. Telefonaktiebolaget L. M. Ericsson, IPR2013-00602,
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`Paper 27 (PTAB Mar. 10, 2014); Harmonic, Inc. v. Avid Technology, Inc., IPR2013-
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`00252, Paper 12 (PTAB Sept. 25, 2013). Post-SAS, it remains appropriate for the
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`Board to exercise its discretion under 35 U.S.C. §314(a) to deny redundant petitions.
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`Here, Petitioner challenges independent claims 1 and 17, and dependent claim 18 in
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`three separate petitions, and challenges dependent claims 7, 8, 10, and 11 in two
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`petitions. Petitioner thus challenges nearly overlapping sets of claims with grounds
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`that are substantially the same as each other and applied in the same manner. For
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`example, in separate petitions, Petitioner alleges that Uehara and Lee each anticipate
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`claims 1, 11, 17, and 18. The fact that both references are relied upon to anticipate
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`the claims evidences that the anticipatory grounds present substantially the same
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`argument applied in the same way – that Uehara and Lee each allegedly teach all of
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`the limitations of claims 1, 11, 17, and 18. See Conopco, Inc. DBA Unilever v. The
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`Proctor & Gamble Company, IPR2014-00628, Paper 21 at *9 (PTAB Oct. 20, 2014)
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`(holding that even though the anticipatory references were not the same, they
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`presented “substantially the same argument; namely, that the prior art identifies, with
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`anticipatory specificity,” the elements of the claims). Petitioner has provided no
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`indication that Uehara is somehow more relevant or provides different disclosure
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`than the primary references in the other petitions.
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`18
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`Additionally, the petitions all rely on the Feasibility Study as a back-up to the
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`primary references. The Feasibility Study is cited for the same argument in each
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`petition – that it teaches “an input RF signal employing carrier aggregation.” Thus,
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`the combination of Uehara and Feasibility Study, Lee and Feasibility Study, and
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`Jeon, Xiong, and Feasibility Study are cumulative to one another. The remaining
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`grounds involve insignificant secondary references that are relied on for the same
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`duplicative arguments already made. See Tomtom, Inc. v. Blackbird Tech, LLC,
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`IPR2017-02025, 2018 WL 1308390, at *7 (PTAB Mar. 12, 2018) (denying
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`institution of a petition challenging the same claims with different prior art
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`combinations because the arguments were substantially the same).
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`For these reasons, the Board should exercise its discretion under 35 U.S.C. §
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`314(a) to reject Petitioner’s attempt to attack the same claims across three petitions
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`with substantially the same arguments.
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`19
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`VI. CONCLUSION
`For the reasons set forth above, Qualcomm respectfully requests that the
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`Board deny institution of the petition for inter partes review.
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`Respectfully submitted,
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`Date: April 12, 2019
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`By /Joseph M. Sauer/
`David B. Cochran, Reg. No. 39,142
`Joseph M. Sauer, Reg. No. 47,919
`David M. Maiorana, Reg. No. 41,449
`JONES DAY
`North Point, 901 Lakeside Avenue
`Cleveland, OH 44114
`(216) 586-3939
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`Matthew W. Johnson, Reg. No. 59,108
`Joshua R. Nightingale, Reg. No. 67,865
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
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`20
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`TABLE OF EXHIBITS
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`Exhibit
`2001
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`Description
`Advisory Action dated June 16, 2014
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`Request for Continued Examination dated July 17, 2014
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`Request for Continued Examination dated May 20, 2015
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`IDS Including Uehara with Examiner’s Initials
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`IDS Including International Search Report and Written Opinion
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`International Search Report and Written Opinion
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`Original Claims from the ’423 Application
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`Original Claims from related PCT Application
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`-i-
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`CERTIFICATE OF COMPLIANCE
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`I, the undersigned, certify that the above Patent Owner Preliminary Response
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`complies with the applicable type-volume limitations of 37 C.F.R. § 42.24 (b)(1).
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`This Preliminary Response contains 4882 words, as counted by the word count
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`function of Microsoft Word. This is less than the limit of 14,0