UNITED STATES PATENT AND TRADEMARK OFFICE
`
`IPR2019-00047
`Patent No. 9,154,356
`
`
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Intel Corporation,
`Petitioner,
`v.
`Qualcomm Incorporated,
`Patent Owner
`
`
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`
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`IPR2019-00047
`U.S. Patent No. 9,154,356
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`PATENT OWNER’S NOTICE OF CROSS-APPEAL
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`
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`

`

`Pursuant to 37 C.F.R § 90.2(a), and in an abundance of caution, Patent
`
`IPR2019-00047
`Patent No. 9,154,356
`
`
`Owner Qualcomm Incorporated (“Qualcomm” or “Patent Owner”) hereby files
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`this Notice to cross-appeal to the United States Court of Appeals for the Federal
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`Circuit from the Final Written Decision entered July 8, 2020 (Exhibit A), in order
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`to challenge the Patent Trial and Appeal Board’s underlying Order Denying
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`Patent Owner’s Motion to Terminate, entered on July 6, 2020 in IPR2019-00047,
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`IPR2019-00048, and IPR2019-00049 (“the Instant IPRs”) (Exhibit B, Paper No.
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`34 in IPR2019-00047).
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`In accordance with 37 C.F.R § 90.2(a)(3)(ii), Patent Owner states that its
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`cross-appeal is limited to the Board’s Order declining to terminate Petitioner as a
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`party to the Instant IPRs under 35 U.S.C. § 315(e)(1). But for this error,
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`Petitioner would have been terminated from the Instant IPRs before the Final
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`Written Decisions issued, and thus would not have standing to appeal these Final
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`Written Decisions under 35 U.S.C. § 319 in appeals docketed at the Federal
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`Circuit as Appeal Nos. 20-2239, 20-2240, and 20-2242.
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`Pursuant to 37 C.F.R. § 90.3, this Notice of Cross-Appeal is timely, having
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`been duly filed within fourteen days after Petitioner’s Notice of Appeal, which
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`was filed on September 4, 2020.
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`A copy of this Notice of Appeal is being filed simultaneously with the
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`Patent Trial and Appeal Board, the Clerk’s Office for the United States Court of
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`1
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`

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`Appeals for the Federal Circuit, and the Director of the U.S. Patent and
`
`IPR2019-00047
`Patent No. 9,154,356
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`
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`
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`Respectfully submitted,
`
`/Thomas W. Ritchie/
`
`David B. Cochran (Reg. No. 39,142)
`Joseph M. Sauer (Reg. No. 47,919)
`David M. Maiorana (Reg. No. 41,449)
`JONES DAY
`901 Lakeside Ave.
`Cleveland, OH 44114
`
`Matthew W. Johnson (Reg. No. 59,108)
`Joshua R. Nightingale (Reg. No. 67,865)
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
`
`Thomas W. Ritchie (Reg. No. 65,505)
`William E. Devitt (Admitted pro hac vice)
`JONES DAY
`77 W. Wacker Dr.
`Chicago, IL 60601
`
`
`
`Trademark Office.
`
`Dated: September 17, 2020
`
`
`
`
`
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`2
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on September
`
`IPR2019-00047
`Patent No. 9,154,356
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`17, 2020, a complete and entire copy of PATENT OWNER’S NOTICE OF
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`CROSS-APPEAL has been served in its entirety by e-mail on the following
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`addresses of record for Petitioner:
`
`Lead Counsel:
`David L. Cavanaugh
`Reg. No. 36,476
`David.Cavanaugh@wilmerhale.com
`
`Postal and Hand-Delivery Address:
`Wilmer Cutler Pickering Hale and
`Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Telephone: (202) 663-6000
`Fax: (202) 663-6363
`
`
`Dated: September 17, 2020
`
`
`
`
`
`Backup Counsel:
`John V. Hobgood
`Reg. No. 61,540
`John.Hobgood@wilmerhale.com
`
`Benjamin S. Fernandez
`Reg. No. 55,172
`Ben.Fernandez@wilmerhale.com
`
`Gregory T. Lantier
`Gregory.Lantier@wilmerhale.com
`
`Postal and Hand-Delivery Address:
`Wilmer Cutler Pickering Hale and Dorr
`LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Telephone: (202) 663-6000
`Fax: (202) 663-6363
`
`Respectfully submitted,
`
`
`/Thomas W. Ritchie/
`Thomas W. Ritchie (Reg. No. 65,505)
`Jones Day
`77 W. Wacker Drive
`Chicago, IL 60601
`(312) 782-3939
`twritchie@jonesday.com
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`EXHIBIT A
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`EXHIBIT A
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`

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`Trials@uspto.gov
`571.272.7822
`
`Paper 35
`Entered: July 8, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`____________
`
`IPR2019-00047
`Patent 9,154,356 B2
`____________
`
`
`
`Before MICHELLE N. WORMMEESTER, SCOTT B. HOWARD, and
`AARON W. MOORE, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`

`

`IPR2019-00047
`Patent 9,154,356 B2
`
`
`I. INTRODUCTION
`
`Intel Corporation1 (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
`
`requesting an inter partes review of claims 1, 7, 8, 10, 11, 17, and 18 of U.S.
`
`Patent No. 9,154,356 B2 (Ex. 1001, “the ’356 patent”). Qualcomm
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`Incorporated (“Patent Owner”) filed a Preliminary Response. Paper 7
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`(“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted an inter partes
`
`review of challenged claims 1, 7, 8, 10, 11, 17, and 18 based on all the
`
`grounds presented in the Petition. Paper 8 (“Inst. Dec.”). Patent Owner
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`filed a Response (Paper 12, “PO Resp.”), Petitioner filed a Reply (Paper 19,
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`“Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 23, “PO Sur-
`
`reply”). On April 7, 2020, we conducted an oral hearing. A copy of the
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`transcript (Paper 30, “Tr.”) is included in the record.
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`Since the oral hearing, Patent Owner filed a motion to terminate this
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`proceeding (Paper 32), and Petitioner filed an opposition to the motion
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`(Paper 33). In a separate paper, we address the parties’ arguments regarding
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`termination and deny Patent Owner’s motion to terminate. Paper 34.
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`We have jurisdiction under 35 U.S.C. § 6(b). For the reasons that
`
`follow, we determine that Petitioner has not shown by a preponderance of
`
`the evidence that claims 1, 7, 8, 10, 11, 17, and 18 of the ’356 patent are
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`unpatentable. This final written decision is issued pursuant to 35 U.S.C.
`
`§ 318(a).
`
`
`
`
`1 Intel Corporation identifies itself and Apple Inc. (“Apple”) as real parties
`in interest. Paper 3, 1.
`
`2
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`

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`IPR2019-00047
`Patent 9,154,356 B2
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`
`II. BACKGROUND
`
`A. Related Proceedings
`
`The parties identify a federal district court case in which Patent Owner
`
`asserted the ’356 patent against Apple: Qualcomm Incorporated v. Apple
`
`Incorporated, No. 3:17-cv-02398 (S.D. Cal.). Pet. 1; Paper 4, 1. Petitioner
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`indicates that the district court has dismissed this case. Paper 13, 2.
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`The parties also identify an International Trade Commission (“ITC”)
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`investigation in which Patent Owner asserted the ’356 patent against Apple.
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`Pet. 1; Paper 4, 1. According to Petitioner, the ITC has terminated the
`
`investigation. Paper 13, 2.
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`In addition, the parties identify four other petitions for inter partes
`
`review involving the ’356 patent that Petitioner has filed, namely, IPR2019-
`
`00048, IPR2019-00049, IPR2019-00128, and IPR2019-00129. Pet. 1;
`
`Paper 4, 1.
`
`
`
`B. The ’356 Patent
`
`The ’356 patent describes low noise amplifiers. Ex. 1001, 1:15–16.
`
`Figure 6A, which is reproduced below, illustrates an example of a low noise
`
`amplifier according to the ’356 patent. Id. at 1:54–55.
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`IPR2019-00047
`Patent 9,154,356 B2
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`
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`In particular, Figure 6A shows carrier aggregation low noise amplifier 640a,
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`which has two amplifier stages 650a and 650b. Id. at 7:44–49. Amplifier
`
`stage 650a includes source degeneration inductor 652a, gain transistor 654a,
`
`cascode transistor 656a, and switch 658a. Id. at 7:58–8:4. Similarly,
`
`amplifier stage 650b includes source degeneration inductor 652b, gain
`
`transistor 654b, cascode transistor 656b, and switch 658b. Id. at 8:4–9.
`
`Both amplifier stages 650a and 650b are coupled to common input matching
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`circuit 632 and to respective load circuits 690a and 690b. Id. at 7:47–49.
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`In operation, matching circuit 632 receives receiver input signal RXin,
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`performs input matching for low noise amplifier 640a, and provides input
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`RF signal RFin to low noise amplifier 640a. Id. at 7:49–52. Input RF
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`signal RFin may include transmissions on one set of carriers or
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`transmissions on two sets of carriers in the same band, each set including
`
`one or more carriers. Id. at 7:55–57, 8:16–18, 8:30–32. An RF signal with
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`transmissions on multiple sets of carriers is called a carrier aggregated RF
`
`signal. Id. at 8:16–18.
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`IPR2019-00047
`Patent 9,154,356 B2
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`Low noise amplifier 640a operates in either a non-carrier aggregation
`
`(non-CA) mode or a carrier aggregation (CA) mode, depending on the type
`
`of input RF signal it receives. Id. at 8:24–32, 8:36–44. In the non-CA
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`mode, low noise amplifier 640a receives transmissions on one set of carriers
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`and provides one output RF signal to one load circuit. Id. at 8:30–32. Only
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`one amplifier stage is enabled, while the other amplifier stage is disabled.
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`Id. at 8:46–47. To illustrate, Figure 6C is reproduced below.
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`
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`Figure 6C shows low noise amplifier 640a operating in the non-CA mode.
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`Id. at 8:45–46. Amplifier stage 650a is enabled by connecting the gate of
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`cascode transistor 656a to the Vcasc voltage via switch 658a, and amplifier
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`stage 650b is disabled by shorting the gate of cascode transistor 656b to
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`circuit ground via switch 658b. Id. at 8:47–52. Amplifier stage 650a
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`amplifies the input RF signal and provides an output RF signal to load
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`circuit 690a. Id. at 8:52–54.
`
`In the CA mode, low noise amplifier 640a receives transmissions on
`
`two sets of carriers and provides two output RF signals to two load circuits,
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`one output RF signal for each set of carriers. Id. at 8:32–35. Both amplifier
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`IPR2019-00047
`Patent 9,154,356 B2
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`stages are enabled. Id. at 8:37–38. To illustrate, Figure 6B is reproduced
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`below.
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`
`
`
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`Figure 6B shows low noise amplifier 640a operating in the CA mode. Id. at
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`8:36–37. Amplifier stages 650a and 650b are enabled by connecting the
`
`gate of cascode transistor 656a to the Vcasc voltage via switch 658a and
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`coupling the gate of cascode transistor 656b to the Vcasc voltage via
`
`switch 658b. Id. at 8:37–40. The carrier aggregated RF signal splits at the
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`input of low noise amplifier 640a, and then amplifier stages 650a and 650b
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`amplify the carrier aggregated RF signal and provide two output RF signals
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`to two separate downconverters in load circuits 690a and 690b. Id. at 8:21–
`
`28. Specifically, amplifier stage 650a amplifies the input RF signal and
`
`provides the first output RF signal to load circuit 690a. Id. at 8:41–42.
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`Similarly, amplifier stage 650b amplifies the input RF signal and provides
`
`the second output RF signal to load circuit 690b. Id. at 8:42–44.
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`IPR2019-00047
`Patent 9,154,356 B2
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`C. Illustrative Claim
`
`Petitioner challenges claims 1, 7, 8, 10, 11, 17, and 18 of the
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`’356 patent. Claims 1 and 17 are independent. Claim 1 is illustrative of the
`
`challenged claims:
`
`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
`
`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.
`
`
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 1, 7, 8, 10, 11, 17, and 18 of the
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`’356 patent on grounds of anticipation under 35 U.S.C. § 102 and
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`IPR2019-00047
`Patent 9,154,356 B2
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`obviousness under 35 U.S.C. § 103.2 Pet. 44–82. We instituted inter partes
`
`review of all the asserted grounds. Inst. Dec. 35–36. The instituted grounds
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`are as follows.
`
`Claims Challenged
`
`35 U.S.C. §
`
`1, 11, 17, 18
`7, 8
`10
`1, 11, 17, 18
`7, 8
`
`10
`
`102
`103
`103
`103
`103
`
`103
`
`References/Basis
`Uehara3
`Uehara, Perumana4
`Uehara, Youssef5
`Uehara, the Feasibility Study6
`Uehara, the Feasibility Study,
`Perumana
`Uehara, the Feasibility Study,
`Youssef
`
`In support of its arguments, Petitioner relies on a declaration (Ex. 1002) as
`
`well as a reply declaration (Ex. 1039) of Patrick Fay, Ph.D. Patent Owner
`
`submits with its Response a declaration of Daniel Foty, Ph.D. (Ex. 2024).
`
`The transcripts of the depositions of Dr. Fay are entered in the record as
`
`Exhibits 2014 and 2029, and the transcript of the deposition of Dr. Foty is
`
`entered in the record as Exhibit 1040.
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. §§ 102
`and 103. See Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). As the
`application that issued as the ’356 patent was filed before the effective date
`of the relevant amendments, the pre-AIA version of §§ 102 and 103 apply.
`3 U.S. Publ’n No. 2011/0217945 A1 (published Sept. 8, 2011) (Ex. 1003).
`4 Bevin G. Perumana et al., Resistive-Feedback CMOS Low-Noise
`Amplifiers for Multiband Applications, 56 IEEE TRANSACTIONS ON
`MICROWAVE THEORY & TECHNIQUES 1218 (2008) (Ex. 1008).
`5 Ahmed Youssef et al., Digitally-Controlled RF Passive Attenuator in
`65 nm CMOS for Mobile TV Tuner ICs, 2010 IEEE INT’L SYMP. ON CIRCUITS
`& SYS. 1999 (Ex. 1009).
`6 3d Generation P’Ship Project, Technical Specification Group Radio Access
`Network; Feasibility Study for Further Advancements for E-UTRA (LTE-
`Advanced) (Release 9) (3GPP TR 36.912 V9.1.0) (Dec. 2009) (Ex. 1004).
`
`8
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`IPR2019-00047
`Patent 9,154,356 B2
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`III. ANALYSIS
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`A. Claim Construction
`
`The claim construction standard applicable to this inter partes review
`
`proceeding is the broadest reasonable interpretation (“BRI”) in light of the
`
`patent specification and prosecution history. Personalized Media
`
`Comm’cns, LLC v. Apple Inc., 952 F.3d 1336, 1340 (Fed. Cir. 2020); 37
`
`C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct.
`
`2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`
`interpretation standard).7 Under this standard, claim terms generally are
`
`given their ordinary and customary meaning, as would be understood by one
`
`of ordinary skill in the art in the context of the entire disclosure. See In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Petitioner proposes a construction of the claim term “carrier
`
`aggregation.” Pet. 30–34. Patent Owner disputes Petitioner’s proposed
`
`construction. PO Resp. 11–31. In light of the parties’ arguments, we
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`address this claim term.
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`
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`“carrier aggregation”
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`The term “carrier aggregation” appears in both independent claims 1
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`and 17. Petitioner argues that this term “should be construed as
`
`
`7 The revised claim construction standard for interpreting claims in inter
`partes review proceedings as set forth in the final rule published October 11,
`2018, does not apply to this proceeding because the new “rule is effective on
`November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on
`or after the effective date.” Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R.
`§ 42.100(b) (2019)). The Petition here was filed on November 8, 2018.
`
`9
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`IPR2019-00047
`Patent 9,154,356 B2
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`‘simultaneous operation on multiple carriers.’” Pet. 30. As support,
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`Petitioner points us to three passages in the specification of the ’356 patent.
`
`Id. at 30–31. The first passage states that “[a] wireless device may support
`
`carrier aggregation, which is simultaneous operation on multiple carriers.”
`
`Ex. 1001, 1:32–33 (cited by Pet. 30–31). The second passage specifies that
`
`“[w]ireless device 110 may support carrier aggregation, which is operation
`
`on multiple carriers.” Id. at 2:53–54 (cited by Pet. 31). Finally, the third
`
`passage notes that “[c]arrier aggregation may also be referred to as multi-
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`carrier operation.” Id. at 2:54–55 (cited by Pet. 31). Petitioner further
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`asserts that the Administrative Law Judge (“ALJ”) in the related ITC
`
`investigation “construed ‘carrier aggregation’ as Petitioner proposes here.”
`
`Pet. 33–34 (citing Ex. 1036, 17 (ITC Claim Construction Order)). Relying
`
`on the declaration testimony of Dr. Fay, Petitioner adds that its proposed
`
`construction “is consistent with a person of ordinary skill in the art’s
`
`understanding of the term.” Id. at 31 (citing Ex. 1002 ¶ 62).
`
`In response, Patent Owner contends that “at the time of the invention
`
`of the ’356 Patent, a person of ordinary skill in the art would have
`
`understood that ‘carrier aggregation’ was a term of art that meant
`
`‘simultaneous operation on multiple carriers that are combined as a single
`
`virtual channel to provide higher bandwidth.’” PO Resp. 12. Patent Owner
`
`makes several arguments in support of this proposed construction.
`
`For instance, Patent Owner argues that “[w]hile it is true that
`
`‘simultaneous operation on multiple carriers’ is an attribute of carrier
`
`aggregation, a person of ordinary skill would have further understood the
`
`term to mean that the multiple carriers are combined (aggregated) as a single
`
`virtual channel.” Id. at 12 (internal citation omitted). As support, Patent
`
`10
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`IPR2019-00047
`Patent 9,154,356 B2
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`Owner relies on intrinsic evidence, including the ’356 patent and its
`
`prosecution history file, as well as extrinsic evidence.
`
`Specifically, Patent Owner points to where the ’356 patent
`
`specification cites a technical report (referred to as “LTE Release 11” or
`
`“3GPP TS 36.101”) while discussing carrier aggregation. Id. at 13–14
`
`(citing Ex. 1001, 2:63–67); Ex. 2026 (LTE Release 11). The technical
`
`report defines carrier aggregation as “[a]ggregation of two or more
`
`component carriers in order to support wider transmission bandwidths.”
`
`Ex. 2026, 14 (cited by PO Resp. 14); see also Ex. 1001, 1:37–38 (“A carrier
`
`may also be referred to as a component carrier (CC), a frequency channel, a
`
`cell, etc.”) (emphasis added) (cited by PO Resp. 13). Patent Owner asserts
`
`that “while earlier LTE [(Long-Term Evolution)] systems were limited to 20
`
`MHz channels, LTE Release 11 (which provided support for LTE-Advanced
`
`functionality) could be configured to aggregate up to five of these 20 MHz
`
`channels as component carriers of a single virtual channel having a
`
`bandwidth capacity of up to 100 MHz.” PO Resp. 13 (citing Ex. 1001,
`
`2:63–67). To illustrate, Patent Owner further asserts:
`
`In earlier LTE systems, a user device connects to the wireless
`network over a single 20 MHz carrier frequency. As the
`maximum-available data rate of the single-carrier wireless
`connection is the rate-limiting step for the end user, requests for
`a large amount of data (e.g., a video) can only be received at the
`data rate of that single carrier. To relieve this rate-limiting step,
`LTE-Advanced added the ability for network equipment to
`practice carrier aggregation. When an end user requests a large
`amount of data, the network will activate carrier aggregation to
`deliver that data more quickly. This is done by multiplexing the
`incoming data stream . . . so that the incoming data stream is
`separated into multiple streams that are transmitted over multiple
`component carriers at the same time. The user device receives
`
`11
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`

`IPR2019-00047
`Patent 9,154,356 B2
`
`
`and de-multiplexes (aggregates) the multiple streams to recreate
`the original incoming data stream. The result is that the incoming
`data stream is received more quickly because it was transmitted
`in a higher bandwidth virtual channel.
`
`Id. at 14–15 (internal citations omitted). Patent Owner relies on the
`
`declaration testimony of Dr. Foty. Id. at 12–14 (citing Ex. 2024 ¶¶ 84–88).
`
`Patent Owner also points to the prosecution history of the ’356 patent.
`
`During prosecution, the Examiner relied on two U.S. patents, namely,
`
`Hirose8 and Kaukovuori,9 as anticipatory references. Ex. 1014, 2–4 (Office
`
`Action relying on Hirose); Ex. 1016, 2–4 (Office Action relying on
`
`Kaukovuori). In addition, the applicant filed an Information Disclosure
`
`Statement listing various references, including an international patent
`
`application10 and a British patent application.11 Ex. 2015, 10, 12
`
`(Information Disclosure Statement); Ex. 2016 (the international application);
`
`Ex. 2017 (the British application). With respect to Hirose, Patent Owner
`
`highlights the applicant’s argument that the “claimed invention recites
`
`‘carrier aggregation’ which results in an increased aggregated data rate,”
`
`whereas “Hirose transmits the same signals over different paths which
`
`results in redundant data at a common data rate.” PO Resp. 16; Ex. 1015, 7
`
`(cited by PO Resp. 16). Regarding Kaukovuori, Patent Owner highlights the
`
`teaching that “LTE Advanced proposes the aggregation of multiple carrier
`
`signals in order to provide a higher aggregate bandwidth than would be
`
`
`8 U.S. Patent No. 7,317,894 B2 (issued Jan. 8, 2008) (Ex. 1024).
`9 U.S. Patent No. 8,442,473 B1 (issued May 14, 2013) (Ex. 1025).
`10 Int’l Publication No. WO 2012/008705 A2 (published Jan. 19, 2012)
`(Ex. 2016, “the international application”).
`11 UK Patent Application GB 2472978 A (published Mar. 2, 2011)
`(Ex. 2017, “the British application”).
`
`12
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`IPR2019-00047
`Patent 9,154,356 B2
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`available if transmitting via a single carrier signal,” where “Carrier
`
`Aggregation (CA) requires each utilized carrier signal to be demodulated at
`
`the receiver, whereafter the message data from each of the signals can be
`
`combined in order to reconstruct the original data.” PO Resp. 16–17;
`
`Ex. 1025, 1:30–33 (cited by PO Resp. 16–17). As for the references cited in
`
`the Information Disclosure Statement, Patent Owner points to where the
`
`international application states that “LTE-A is a technology for aggregating
`
`a plurality of unit carriers . . . to be used simultaneously,” as well as to
`
`where the British application describes a “carrier aggregation mode” in
`
`which “data has . . . been multiplexed across multiple carrier frequencies”
`
`and carrier aggregation refers to “bond[ing] together two parallel carriers.”
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`PO Resp. 17–18; Ex. 2016 ¶ 7 (cited by PO Resp. 17–18); Ex. 2017, code
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`(57), 1:8–11 (cited by PO Resp. 18). According to Patent Owner, all these
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`portions of “[t]he file history further confirm[] that a skilled artisan
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`understood that carrier aggregation resulted in a single virtual channel to
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`provide an increased bandwidth.” PO Resp. 15. Patent Owner relies on the
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`declaration testimony of Dr. Foty. Id. at 17–18 (citing Ex. 2024 ¶¶ 90–92).
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`Patent Owner additionally points to various extrinsic evidence in
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`support of its proposed construction, relying again on the declaration
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`testimony of Dr. Foty. Id. at 18–23 (citing Ex. 1004, 10; Ex. 2013, 3:19–53;
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`Ex. 2018, 3:27–62; Ex. 2019, 6; Ex. 2020 ¶ 3; Ex. 2021, 26–27; Ex. 2022;
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`Ex. 2024 ¶¶ 96–100). For example, Patent Owner directs us to a U.S. patent,
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`which states that “[o]ne technique for providing additional bandwidth
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`capacity to wireless devices is through the use [of] carrier aggregation of
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`multiple smaller bandwidths to form a virtual wideband channel at a wireless
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`device.” Ex. 2013, 3:19–22 (cited by PO Resp. 19); see also Ex. 2018,
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`3:27–62 (stating the same) (cited by PO Resp. 19).
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`Turning to Petitioner’s proposed construction of “carrier aggregation,”
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`Patent Owner argues that Petitioner’s reading of the term is “unreasonably
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`broad.” PO Resp. 24. To illustrate, Patent Owner asserts that “two 20 MHz
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`carriers operating independently do not provide a single virtual channel with
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`an increased aggregated bandwidth,” as “[t]he maximum capacity of any
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`one channel remains 20 MHz.” Id. at 24–25. Patent Owner additionally
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`asserts, “But by aggregating two 20 MHz carriers as a single virtual channel,
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`the user device may operate using an aggregated 40 MHz channel that has a
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`combined bandwidth equal to the sum of the bandwidths of the component
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`carriers.” Id. at 25.
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`Patent Owner also argues that Petitioner’s proposed construction
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`“violates the doctrine of prosecution disclaimer” because “Hirose discloses
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`‘simultaneous operation on multiple carriers.’” PO Resp. 24, 27. Patent
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`Owner points to the Examiner’s reliance on Hirose for teaching the
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`originally recited “input RF signal comprising transmissions sent on
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`multiple carriers at different frequencies to a wireless device,” where
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`Hirose’s “input RF signal compris[es] [a] satellite wave signal and [a]
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`ground wave signal.” PO Resp. 25–26 (citing Ex. 1014, 3); Ex. 1014, 3. In
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`response, the applicant amended the claim language to further limit the
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`recited input RF signal to a signal “employing carrier aggregation.”
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`Ex. 1015, 2 (cited by PO Resp. 25). The applicant acknowledged that
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`Hirose teaches receiving the satellite and ground wave signals at the same
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`time, but argued that “such receipt of diversity signals does not disclose
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`‘carrier aggregation’” because the “waves contain[] the same contents.” Id.
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`at 8 (cited by PO Resp. 27). According to Patent Owner, “[i]f the term
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`‘carrier aggregation’ simply meant ‘simultaneous operation on multiple
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`carriers,’ the amendment would have been ineffective in overcoming
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`Hirose.” PO Resp. 28; see also PO Sur-reply 12 (“Petitioner now proposes
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`construing the term so broadly that the claims once again read on Hirose,
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`which discloses ‘simultaneous operation on multiple carriers.’”).
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`Lastly, Patent Owner argues that “Petitioner’s proposed construction
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`is also incorrect because it reads out the word ‘aggregation.’” PO Resp. 30.
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`Patent Owner asserts that “[a]ggregate means ‘to collect together,
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`assemble.’” Id. (quoting Ex. 2025, 4 (The Oxford English Dictionary)).
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`According to Patent Owner, “it is the component carriers that are aggregated
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`into a single virtual channel to provide higher bandwidth.” Id. Patent
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`Owner adds that “[s]ubstituting Petitioner’s proposed construction would
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`result in a claim that recited ‘the input RF signal employing simultaneous
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`operation on multiple carriers comprising transmissions sent on multiple
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`carriers,’” thereby “add[ing] little, if any, additional meaning beyond the
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`surrounding claim language.” Id.
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`In its Reply, Petitioner reiterates that the ALJ in the related ITC
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`investigation construed “carrier aggregation” to mean “simultaneous
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`operation on multiple carriers,” and argues that “the BRI construction[,
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`which is the standard applied in this proceeding,] must be at least as broad as
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`a proper Phillips construction,” which is the standard applied in an ITC
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`investigation. Pet. Reply 2; Ex. 1036, 12–14 (Claim Construction Order
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`from related ITC investigation).
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`Petitioner further argues that the specification of the ’356 patent does
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`not support Patent Owner’s proposed construction. Referring specifically to
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`the portion of Patent Owner’s proposed construction requiring the multiple
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`carriers to be “combined as a single virtual channel to provide higher
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`bandwidth,” Petitioner contends that “the LTE carrier aggregation expressly
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`described at column 2, lines 63–67 [of the ’356 patent] is merely one
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`example of carrier aggregation in the patent.” Pet. Reply 3 (citing Ex. 1039
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`¶¶ 17–18).
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`Petitioner also argues that the prosecution history of the ’356 patent
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`does not support Patent Owner’s proposed construction. Petitioner contends
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`that the phrases “combined as a single virtual channel” and “provide higher
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`bandwidth” do not appear in the prior art references cited during
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`prosecution, and that “Patent Owner’s arguments about them do not limit the
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`BRI of the term ‘carrier aggregation’ given the clear definition of that term
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`in the ’356 written description.” Id. at 4. Petitioner further contends that
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`“none of the evidence on which Patent Owner now relies for [those portions]
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`of its proposed claim construction was ever discussed during prosecution of
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`the ’356 patent.” Id. As support, Petitioner relies on the declaration
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`testimony of Dr. Fay. Id. (citing Ex. 1039 ¶¶ 20–21). With respect to
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`Kaukovuori in particular, Dr. Fay states that the Examiner did not rely on the
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`same passage that Patent Owner relies on now to support its proposed
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`construction. Ex. 1039 ¶ 21. Dr. Fay adds that an ordinarily skilled artisan
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`considering the Examiner’s “rejecti[on of] the claims based on the
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`Kaukovuori reference disclosing one specific type of carrier aggregation . . .
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`would not have understood the Examiner to be limiting the Examiner’s
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`interpretation of carrier aggregation based on the Kaukovuori reference.” Id.
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`In addition, Petitioner argues that the extrinsic evidence does not
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`support Patent Owner’s proposed construction. According to Petitioner, “in
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`a case such as this, where the intrinsic evidence so clearly supports the
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`definition that Patent Owner included in its specification, a [person of
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`ordinary skill in the art] would assign extrinsic evidence little or no
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`relevance.” Pet. Reply 7. Petitioner further notes that “many of the extrinsic
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`references included with Patent Owner’s Response were dated or filed well
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`after the filing date of the ’356 patent, and are . . . not prior art to the ’356
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`patent.” Id. (citing Ex. 2018; Ex. 2019; Ex. 2022).
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`With respect to Patent Owner’s prosecution disclaimer argument,
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`Petitioner responds that the applicant’s argument during prosecution that
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`“‘carrier aggregation’ requires an ‘increased aggregated data rate’” does
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`“not amount to a clear and unmistakable disclaimer.” Id. at 6. According to
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`Petitioner, “[i]f Hirose’s simultaneous signals contained non-redundant (i.e.,
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`different) data, [the applicant] could not have made the argument that it did,
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`and therefore the most natural reading of the prosecution history is that the
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`applicant was distinguishing Hirose on the basis of its redundant
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`transmissions.” Id. That is, any “disclaimer was of systems that receive
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`transmissions of redundant data over multiple channels.” Id. at 6 n.2.
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`Lastly, Petitioner argues that its proposed construction does not read
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`out “aggregation.” Id. at 7. As support, Petitioner contends that “[w]hen
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`there is ‘simultaneous operation on multiple carriers,’ those carriers will be
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`aggregated in the input RF signal.” Id. at 8; see id. (“[W]hen read in view
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`of the complete claim language, ‘carrier aggregation’ in the context of the
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`challenged claims accounts for aggregation . . . because the multiple carriers
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`would be present simultaneously in the input RF signal.”). Petitioner relies
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`on the declaration testimony of Dr. Fay. Id. (citing Ex. 1039 ¶¶ 27–30).
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`Patent Owner counters that “Petitioner does not propose construing
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`the term ‘carrier aggregation’ according to its plain and ordinary meaning”
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`but proposes instead 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.” PO
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`Sur-reply 1–2. According to Patent Owner, however, “Petitioner fails to
`
`establish that the patentee clearly expressed the necessary intent to redefine
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`the term to have a special meaning that differed from its plain and ordinary
`
`meaning.” Id. at 6. As support, Patent Owner contends that “[i]n the ’356
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`Patent, the patentee adopted a . . . distinctive format to clearly set forth a
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`definition for a different term,” namely, the format used for the term
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`“exemplary.” Id. at 4. Patent Owner directs us to where the ’356 patent
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`states that “[t]he term ‘exemplary’ is used herein to mean ‘serving as an
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`example, instance, or illustration.’” Ex. 1001, 2:9–11 (cited by PO Sur-reply
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`4). Patent Owner further ass