DOCKET NO.: 0107131-00573US1
`Filed on behalf of Intel Corporation
`By: David L. Cavanaugh, Reg. No. 36,476
`John V. Hobgood, Reg. No. 61,540
`Benjamin S. Fernandez, Reg. No. 55,172
`Gregory H. Lantier, pro hac vice
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email:
`David.Cavanaugh@wilmerhale.com
`John.Hobgood@wilmerhale.com
`Ben.Fernandez@wilmerhale.com
`Gregory.Lantier@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`INTEL CORPORATION
`Petitioner
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner
`
`Case IPR2019-00047
`U.S. Patent No. 9,154,356
`
`DECLARATION OF PATRICK FAY, PH. D. IN SUPPORT OF
`PETITIONER’S REPLY
`
`
`
`
`Intel 1039
`Intel v. Qualcomm
`IPR2019-00047
`
`

`

`TABLE OF CONTENTS
`
`IPR2019-00047
`US Patent 9,154,356
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`Page
`INTRODUCTION ........................................................................................... 1 
`I. 
`QUALIFICATIONS ........................................................................................ 2 
`II. 
`III.  RELEVANT LAW .......................................................................................... 2 
`IV.  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 3 
`V.
`REBUTTAL TO PATENT OWNER’S RESPONSE AND DR. FOTY’S
`OPINIONS ....................................................................................................... 4
`Patent Owner’s Proposed Claim Construction is Incorrect and Overly
`A. 
`Narrow ................................................................................................... 4 
`1. 
`“Carrier Aggregation” Construed in Accordance With its
`Broadest Reasonable Interpretation ............................................ 4 
`Patent Owner’s Proposed Construction of “Carrier
`Aggregation” is Narrower than the Broadest Reasonable
`Interpretation of that Term in Light of the Specification ........... 5 
`The Intrinsic Evidence Does Not Support Patent Owner’s
`Construction ................................................................................ 5 
`Prosecution Disclaimer Does Not Limit the Broadest
`Reasonable Interpretation Here ................................................... 9 
`A POSITA Would Not Find Patent Owner’s Citation to
`Extrinsic Evidence Helpful in Understanding How the ’356
`Patent Defines “Carrier Aggregation” ...................................... 12 
`Petitioner’s Proposed BRI Construction Does Not Read Out
`“Aggregation” ........................................................................... 12 
`Ground I: Anticipation by Uehara ....................................................... 15 
`1. 
`Uehara Discloses First and Second Amplifier Stages
`Configured to be Independently Enabled or Disabled .............. 15 
`Uehara Discloses the Claimed Providing the First/Second
`Output RF Signals to the First/Second Load Circuits .............. 21 
`Uehara Discloses the Input RF Signal Employing Carrier
`Aggregation ............................................................................... 23 
`
`B. 
`
`6. 
`
`2. 
`
`3. 
`
`i
`
`

`

`E. 
`
`F. 
`
`C. 
`
`IPR2019-00047
`US Patent 9,154,356
`Ground II: Obviousness of Claims 7 and 8 Over Uehara in View of
`Perumana ............................................................................................. 25 
`D.  Ground III: Obviousness of Claim 10 Over Uehara in View of
`Youssef ................................................................................................ 26 
`Ground IV: Claims 1, 11, 17, and 18 are Obvious over Uehara in
`View of Feasibility Study .................................................................... 28 
`1. 
`The Feasibility Study is Analogous Art .................................... 28 
`2. 
`The Petition Establishes the Reasons to Combine Uehara and
`the Feasibility Study ................................................................. 30 
`Patent Owner’s Additional Arguments ..................................... 32 
`3. 
`Ground V: Claims 7 and 8 are Obvious Over Uehara, Feasibility
`Study, and Perumana ........................................................................... 32 
`G.  Ground VI: Claim 10 is Obvious Over Uehara, Feasibility Study, and
`Youssef ................................................................................................ 33 
`VI.  AVAILABILITY FOR CROSS-EXAMINATION ...................................... 33 
`VII.  RIGHT TO SUPPLEMENT .......................................................................... 34 
`VIII.  JURAT ........................................................................................................... 34 
`
`ii
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`

`

`IPR2019-00047
`US Patent 9,154,356
`
`I, Patrick Fay, declare as follows:
`I.
`INTRODUCTION
`1.
`I have been retained by Intel Corporation (“Intel” or “Petitioner”) as
`
`an independent expert consultant in this proceeding before the United States Patent
`
`and Trademark Office. I previously prepared and submitted a Declaration in
`
`support of the Petition in this proceeding, dated November 8, 2018 (Ex. 1002).
`
`2.
`
`Since preparing my initial Declaration, I have reviewed Qualcomm’s
`
`Patent Owner’s Preliminary Response (“POPR”), the Board’s Decision on
`
`Institution (“DOI”), Patent Owner’s Response (“POR”), Dr. Foty’s declaration
`
`submitted in support of the POR (Ex. 2024), and the transcript of Dr. Foty’s
`
`deposition on November 8, 2019 (Ex. 1040). I have been asked to review and
`
`respond to Dr. Foty’s opinions, including those reflected in the POR, as well as the
`
`Board’s Decision on Institution.
`
`3.
`
`I am being compensated for my work on this matter, but my opinions
`
`are based on my own views of the patented technology and the prior art. My
`
`compensation in no way depends on the outcome of this proceeding or the content
`
`of my testimony.
`
`4.
`
`In preparing this Declaration, I reviewed and considered the
`
`specification, claims, and file history of U.S. Patent No. 9,154,356 (“’356 patent”)
`
`(Ex. 1001). I have been informed the ’356 patent has a priority date of August 21,
`
`1
`
`

`

`IPR2019-00047
`US Patent 9,154,356
`2012. I have also reviewed and considered the documents cited by Dr. Foty in his
`
`declaration (Ex. 2024). Additionally, I have reviewed the related Reply, which I
`
`understand Intel will file at the United States Patent and Trademark Office
`
`(USPTO) at the same time as this Declaration is filed at the USPTO.
`
`5.
`
`I have also reviewed all of the documents I cite in this declaration.
`
`II. QUALIFICATIONS
`6.
`I describe my qualifications in my first Declaration. Ex. 1002, ¶¶2-9.
`
`III. RELEVANT LAW
`7.
`In my first Declaration, I set forth the applicable principles of patent
`
`law that were provided to me by counsel. Ex. 1002, ¶¶15-30. As appropriate, I
`
`have continued to apply those principles in providing my opinions in this
`
`Declaration. In addition, I understand that the following legal principles apply, as
`
`explained to me by Intel’s legal counsel.
`
`8.
`
`I am not an attorney. For the purposes of this declaration, I have been
`
`informed about certain aspects of the law that are relevant to my opinions. My
`
`understanding of the law is as follows.
`
`9.
`
`I have been informed and understand that the Petitioner in an inter
`
`partes review Petition may request cancellation of claims as unpatentable only on
`
`grounds that such claims are anticipated or would have been obvious to a person of
`
`ordinary skill in the art at the time of the purported invention, and only on the basis
`
`2
`
`

`

`IPR2019-00047
`US Patent 9,154,356
`of prior art consisting of patents or printed publications. A petitioner need only
`
`establish unpatentability of challenged claims by a preponderance of the
`
`evidence—i.e., that the claims are more likely than not unpatentable. My opinions
`
`in this matter address the invalidity of the challenged claims as anticipated and
`
`obvious.
`
`10.
`
`I have been informed and understand that an applicant for a patent can
`
`disclaim or disavow claim scope via statements made during prosecution without
`
`an express amendment, but only if such statements of disavowal or disclaimer are
`
`clear, unmistakable, unambiguous, and unequivocal.
`
`11.
`
`I have been informed and understand that a prior art reference is
`
`considered analogous art to the challenged patent for purposes of determining
`
`obviousness if it is from the same field of endeavor, regardless of the problem
`
`addressed, or if the reference is reasonably pertinent to the particular problem with
`
`which the inventor of the challenged patent was involved.
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`12. As stated in my original declaration (Ex. 1002), a person of ordinary
`
`skill in the art (“POSITA”) at the time of the alleged invention would have had at
`
`least an M.S. degree in electrical engineering (or equivalent experience) and would
`
`have had at least two years of experience with the structure and operation of RF
`
`transceivers and related structures (or the equivalent).
`
`3
`
`

`

`IPR2019-00047
`US Patent 9,154,356
`13. Patent Owner’s expert, Dr. Foty, does not dispute this statement of the
`
`level of ordinary skill of a POSITA. Ex. 2024, ¶79.
`
`V. REBUTTAL TO PATENT OWNER’S RESPONSE AND DR. FOTY’S
`OPINIONS
`A.
`Patent Owner’s Proposed Claim Construction is Incorrect and
`Overly Narrow
`1.
`“Carrier Aggregation” Construed in Accordance With its
`Broadest Reasonable Interpretation
`14. The broadest reasonable interpretation of “carrier aggregation” is
`
`“simultaneous operation on multiple carriers.” This construction comes directly
`
`from the specification, which defines the term. See Ex. 1001, 1:32-33 (“A wireless
`
`device may support carrier aggregation, which is simultaneous operation on
`
`multiple carriers.”), 2:53-54 (“Wireless device 110 may support carrier
`
`aggregation, which is operation on multiple carriers.”), 2:54-55 (“Carrier
`
`aggregation may also be referred to as multi-carrier operation.”). Given the clear
`
`guidance in the specification, “carrier aggregation” should be construed as
`
`“simultaneous operation on multiple carriers” under the broadest reasonable
`
`interpretation (“BRI”) claim construction standard. This meaning is consistent
`
`with the understanding of the term by a POSITA.
`
`15. For this IPR proceeding, it is my understanding that the BRI claim
`
`construction standard applies. Paper 8, Decision on Institution (“DOI”), 15.
`
`4
`
`

`

`2.
`
`IPR2019-00047
`US Patent 9,154,356
`Patent Owner’s Proposed Construction of “Carrier
`Aggregation” is Narrower than the Broadest Reasonable
`Interpretation of that Term in Light of the Specification
` Despite the ’356 patent expressly defining “carrier aggregation” as
`
`16.
`
`“simultaneous operation on multiple carriers” and discussing “Bluetooth,” WiFi
`
`(e.g., “802.11”), and “LTE” devices (among others) that support carrier
`
`aggregation, Patent Owner’s proposed construction appears to be based on one
`
`subset of those technologies, LTE. Patent Owner’s proposed construction of
`
`carrier aggregation is narrower than any disclosure in the ’356 specification.
`
`17. Patent Owner proposes a tripartite construction for carrier aggregation
`
`as “[1] simultaneous operation on multiple carriers [2] that are combined as a
`
`single virtual channel [3] to provide higher bandwidth.” The second and third
`
`parts of this proposed construction lack support in the ’356 patent specification.
`
`3.
`
`The Intrinsic Evidence Does Not Support Patent Owner’s
`Construction
`18. Patent Owner’s citation of the ’356 patent specification in the POR
`
`does not support this proposed construction. For example, Patent Owner cites
`
`column 2, lines 63-67 of the ’356 patent in support of “combined higher bandwidth
`
`channel for communications,” and the addition of LTE-Advanced carrier
`
`aggregation “[t]o relieve this [data] rate-limiting step.” POR, 12-14. However,
`
`the ’356 patent includes no discussion of these concepts; the quoted section merely
`
`recites the maximum carrier bandwidth in LTE, and indicates the number of bands
`
`5
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`

`

`IPR2019-00047
`US Patent 9,154,356
`defined in LTE and how they can be configured. No mention of combined
`
`bandwidth or data rate is provided. Ex. 1001. In fact, parts [2] and [3] of Patent
`
`Owner’s proposed construction lack written description in the ’356 patent, and the
`
`LTE carrier aggregation described at column 2, lines 63-67 is just one example of
`
`carrier aggregation in the patent.
`
`19. The applicant of the ’356 patent chose very broad language to
`
`describe the types of transmissions and communications equipment encompassed
`
`by the patent. For example, the written description broadly states that a “carrier”
`
`“may refer to a range of frequencies used for communication…A carrier may also
`
`be referred to as a component carrier (CC), frequency channel, a cell, etc.,”
`
`expressly broadening the meaning of “carrier” beyond the “component carrier”
`
`example given in the written description. This “component carrier” example from
`
`among the list of examples in the ‘356 specification is now the only example upon
`
`which the Patent Owner appears to rely. Ex. 1001, 1:33-38. Ex. 1040, 50:14-51:9.
`
`A “frequency channel” or “cell” are far broader than the definition of “carrier” that
`
`the Patent Owner currently seeks to embed within its definition of “carrier
`
`aggregation,” which is effectively a “component carrier” as that term is used in the
`
`context of LTE. Id. Likewise, the ’356 patent states that “[w]ireless device 110
`
`may be a cellular phone, a smartphone, a tablet, a wireless modem, a personal
`
`digital assistant (PDA), a handheld device, a laptop computer, a smartbook, a
`
`6
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`

`

`IPR2019-00047
`US Patent 9,154,356
`netbook, a cordless phone, a wireless local loop (WLL) station, a Bluetooth device,
`
`etc. Wireless device 110 may be capable of communicating with wireless system
`
`120. Wireless device 110 may also be capable of receiving signals from broadcast
`
`stations (e.g., a broadcast station 134), signals from satellites (e.g., a satellite 150)
`
`in one or more global navigation satellite systems (GNSS).” Ex. 1001, 2:40-50.
`
`Thus, the applicant signaled that the patent would cover devices other than those
`
`that implement LTE. The patent further states that “[w]ireless device 110 may
`
`support one or more radio technologies for wireless communication such as LTE,
`
`cdma2000, WCDMA, GSM, 802.11, etc.” Id., 2:50-53. By broadly encompassing
`
`all of these devices, device types, and wireless technologies, the ’356 patent’s
`
`written description expressly broadens the scope of the patent to encompass
`
`virtually any wireless device or radio technology. Patent Owner’s current
`
`proposed narrow construction is inconsistent with the broadening approach taken
`
`by the applicant in the written description.
`
`20. Patent Owner’s expert, Dr. Foty, stated that parts [2] and [3] of Patent
`
`Owner’s proposed tripartite claim construction do not find support in the ’356
`
`patent’s written description. His deposition testimony includes explanations that,
`
`while “simultaneous operation on multiple carriers” came from the ’356 patent
`
`written description, Ex. 1040, 69:12-19, the [2] “that are combined as a single
`
`virtual channel” and [3] “to provide higher bandwidth” portions of the proposed
`
`7
`
`

`

`IPR2019-00047
`US Patent 9,154,356
`claim construction come only from prior art that was cited in the prosecution
`
`history. Id., 70:12-71:18; 72:14-74:7. Dr. Foty alleges that WO 2012/008705 (Ex.
`
`2016), GB2472978 (Ex. 2017), and U.S. Pat. No. 8,442,473 (Ex. 1025) are
`
`intrinsic evidence that support this portion of the construction. Id.
`
`21. However, based upon my review and search, the phrases “combined
`
`as a single virtual channel” or “provide higher bandwidth” do not appear in any of
`
`the three references relied upon by Dr. Foty. A POSITA would not consider Patent
`
`Owner’s arguments about these references to limit the BRI of the term “carrier
`
`aggregation” given the clear definition of that term in the ’356 written description.
`
`Indeed, while the three references may mention concepts similar to those proposed
`
`for parts [2] and [3] of the Patent Owner’s proposed constructions, the references’
`
`various descriptions of instances of carrier aggregation are all encompassed by the
`
`BRI of that term: simultaneous operation on multiple carriers. Further, based on
`
`my review of the ’356 patent’s file history, none of the evidence on which Patent
`
`Owner now relies for parts [2] and [3] of its proposed claim construction was
`
`discussed during prosecution of the ’356 patent. Kaukovuori (Ex. 1025) was cited
`
`during prosecution on December 26, 2014, but the prosecution file wrapper does
`
`not include the quote reproduced at page 17 of the POR, and the Examiner
`
`referenced a different passage in the office action. Ex. 1018, 7. Furthermore, my
`
`review of the prosecution history indicates that by rejecting the claims based on the
`
`8
`
`

`

`IPR2019-00047
`US Patent 9,154,356
`Kaukovuori reference disclosing one specific type of carrier aggregation, a
`
`POSITA would not have understood the Examiner to be limiting the Examiner’s
`
`interpretation of carrier aggregation based on the Kaukovuori reference. For the
`
`other two references which Dr. Foty identifies as intrinsic, I note that these are two
`
`references selected from among approximately 350 references cited either by the
`
`Examiner or in information disclosure statements, and that Dr. Foty reproduces in
`
`his declaration (Ex. 2024) quotes from these references that were not part of the
`
`prosecution file wrapper. Ex. 2024, ¶¶89-91.
`
`4.
`
`Prosecution Disclaimer Does Not Limit the Broadest
`Reasonable Interpretation Here
`In its POR, Patent Owner also seeks to invoke the doctrine of
`
`22.
`
`prosecution history disclaimer in arguing for its proposed construction. POR, 25-
`
`28. However, Patent Owner’s expert, Dr. Foty, stated with respect to carrier
`
`aggregation: “I don’t think there’s a disavowal of that or a disclaimer.” Ex. 1040,
`
`32:2-15. Reviewing the prosecution history of the ’356 patent, I agree that there
`
`was no disavowal or disclaimer of claim scope with respect to “carrier
`
`aggregation.”
`
`23. During prosecution of the ’356 patent, the Examiner rejected the
`
`claims based on anticipation by U.S. Patent No. 7,317,894 (“Hirose”) (Ex. 1024).
`
`Ex. 1014, 2-4. Hirose taught a receiver used for frequency, space, and time
`
`diversity having two amplifiers that receive a common input and provide separate
`
`9
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`

`

`IPR2019-00047
`US Patent 9,154,356
`outputs to process “the same signals [sent] over different paths.” Ex. 1015, 7. In
`
`Hirose, three different carriers (e.g., both “satellite wave” carriers and the “ground
`
`wave” carrier illustrated in Hirose Figure 1, annotated below) containing the same
`
`data are received simultaneously and synthesized to obtain a single stream of data,
`
`as shown in annotated Figure 1 of Hirose, below. Id.
`
`
`
`24. Patent Owner responded to the Examiner’s rejection by amending its
`
`claims to require an input RF signal “employing carrier aggregation.” Id., 2-6.
`
`Patent Owner argued that Hirose does not disclose carrier aggregation because it
`
`describes receiving “redundant data” over multiple carriers, which Patent Owner
`
`contended does not result in an “increased aggregated data rate.” Id., 7-8. Thus,
`
`when Patent Owner added “the input RF signal employing carrier aggregation” to
`
`10
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`

`

`IPR2019-00047
`US Patent 9,154,356
`distinguish the Hirose reference, Patent Owner’s point of distinction was that
`
`Hirose did not employ “carrier aggregation” because it disclosed redundant data
`
`transmissions. Id. Patent Owner did not argue that “carrier aggregation” required
`
`anything more than non-redundant data transmissions. See id.
`
`25. Patent Owner disputes Petitioner’s statement that “Patent Owner did
`
`not argue during prosecution that carrier aggregation required anything more than
`
`non-redundant transmissions.” POR, 15 (quoting Pet., 28). As support for its
`
`position, Patent Owner points to the same file history quote provided in the
`
`Petition, with an emphasis on Patent Owner’s argument that “‘carrier aggregation’
`
`requires an ‘increased aggregated data rate.’” Id. A POSITA would understand
`
`those words to not amount to a clear and unmistakable disclaimer as I understand
`
`to be required for prosecution history disclaimer. The “increased aggregated” here
`
`refers to “data rate.” Hirose’s transmission of the “same signals over different
`
`paths” does not increase aggregated data rate because it “results in redundant data
`
`at a common data rate.” Ex. 1015, 7 (bold, italics in original). If Hirose’s
`
`simultaneous signals contained non-redundant (i.e., different) data, Patent Owner
`
`could not have made the argument that it did, and therefore a POSITA reviewing
`
`the prosecution history would understand that the applicant was distinguishing
`
`Hirose on the basis of its redundant transmissions. My initial declaration explains
`
`this. Ex. 1002, ¶90 (“This is different than Hirose (EX1024-Hirose), which Patent
`
`11
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`

`

`IPR2019-00047
`US Patent 9,154,356
`Owner distinguished during prosecution. Specifically, Uehara does not require the
`
`data sent over the dual carriers to be redundant data.”). At a minimum, a POSITA
`
`would understand that the competing interpretations of the prosecution history set
`
`forth in the Petition and in the POR demonstrate that any disclaimer was not “clear
`
`and unmistakable.”
`
`5.
`
`A POSITA Would Not Find Patent Owner’s Citation to
`Extrinsic Evidence Helpful in Understanding How the ’356
`Patent Defines “Carrier Aggregation”
`In a case such as this one where the intrinsic evidence so clearly
`
`26.
`
`supports the definition that Patent Owner included in its specification, a POSITA
`
`would assign this extrinsic evidence little or no relevance. Furthermore, many of
`
`the extrinsic references included with Patent Owner’s Response were dated or filed
`
`well after the filing date of the ’356 patent, and are also not prior art to the ’356
`
`patent. See Exs. 2018 (earliest filing 2013), 2019 (Sep. 2013), 2022 (2014). A
`
`POSITA would not accord these extrinsic sources any weight and, in any event,
`
`these extrinsic sources are not inconsistent with the Petition’s proposed
`
`construction of “carrier aggregation,” which is broad enough to encompass each of
`
`the differing examples of carrier aggregation provided in Patent Owner’s extrinsic
`
`evidence sources.
`
`6.
`
`Petitioner’s Proposed BRI Construction Does Not Read Out
`“Aggregation”
`
`12
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`

`

`IPR2019-00047
`US Patent 9,154,356
`27. Patent Owner argues that the Petition’s BRI construction reads out the
`
`word “aggregation.” POR, 30-31. I disagree. When the claimed “input RF
`
`signal” employs “simultaneous operation on multiple carriers,” those carriers will
`
`be aggregated along the input RF signal. Pet., 51-53 (“input RF signal includes
`
`‘two channels encoded around two different carrier frequencies (i.e., dual
`
`carriers).’”). Thus, “carrier aggregation” in the context of the challenged claims
`
`accounts for aggregation (i.e., collected together, assembled, as defined in the
`
`POR, 30), because the multiple carriers would be present simultaneously in the
`
`input RF signal.
`
`28. Because the ’356 patent describes “carrier aggregation” as
`
`encompassing wireless devices that support “one or more radio technologies for
`
`wireless communication such as LTE, cdma2000, WCDMA, GSM, 802.11, etc.,”
`
`when two or more carriers in a carrier aggregated signal are received according to
`
`“one or more” of these technologies, those carriers are all aggregated in the input
`
`RF signal (e.g., “RFin” in FIG. 6A) that enters the amplifier.
`
`13
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`

`IPR2019-00047
`US Patent 9,154,356
`
`
`
`29. This RFin is one wire, one input, and whether two carriers received
`
`are two LTE carriers, or the two carriers comprising a dual carrier signal, or even
`
`(e.g.) two WiFi carriers or one Bluetooth and one WiFi carrier, the input RF signal
`
`RFin will include all of these carriers. The only difference would be the numerical
`
`values of the frequencies of these carriers that are present simultaneously on the
`
`input. Thus, any two or more carriers received simultaneously are aggregated at
`
`RFin, which is the claimed “input RF signal.” The ’356 patent challenged claims
`
`relate to “receiv[ing] an input radio frequency (RF) signal” or “amplifying a first
`
`input radio frequency (RF) signal.” Ex. 1001, Claims 1, 17. To the extent Patent
`
`Owner’s arguments about “aggregation” suggest a singular transmission node or a
`
`14
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`

`IPR2019-00047
`US Patent 9,154,356
`single logical transmission channel, these narrow interpretations are inconsistent
`
`with the ’356 patent, and are not supported by any presented evidence.
`
`B. Ground I: Anticipation by Uehara
`1.
`Uehara Discloses First and Second Amplifier Stages
`Configured to be Independently Enabled or Disabled
`30. As explained in my initial declaration, at ¶¶81-83, Uehara teaches
`
`these limitations. The first and second amplifier stages of Uehara as identified in
`
`my initial declaration are illustrated in the annotated versions of Figure 2A, below.
`
`Ex. 1002, ¶¶81-83.
`
`
`
`15
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`

`IPR2019-00047
`US Patent 9,154,356
`
`
`
`Each of the amplifier stages identified, above, is configured to be independently
`
`enabled or disabled at least in part due to the presence of distinct voltage signals to
`
`enable their respective cascode transistors. “Cascode transistors 205 and 207 may
`
`be selectively turned on or off by controlling voltage VN1 at the gate of transistor
`
`205 and the gate of transistor 207, thereby coupling or decoupling current from
`
`transistors 201 and 202 from output path OUT1.” Ex. 1003, ¶36. “[C]ascode
`
`transistors 209-212 may be selectively turned on or off together by controlling
`
`voltage VNAux at the gate of each transistor 209-212, thereby coupling or
`
`decoupling current from transistors 203 and 204 to or from output path OUT1 and
`
`output path OUT2.”
`
`31. Patent Owner’s arguments that the cascode-based enablement or
`
`disablement of the two amplifier stages of Uehara are somehow dependent on one
`
`another, POR, 39-44, ignore at least three key concepts. First, they ignore the
`
`16
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`IPR2019-00047
`US Patent 9,154,356
`word “configured” in the claimed “configured to be independently enabled or
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`disabled.” Second, they ignore Uehara’s express teaching in paragraph [0032] to
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`control the two amplifier stages in precisely the same manner identified in the ’356
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`patent. Third, they ignore that interpreting “configured to be independently
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`enabled or disabled” as Patent Owner does in the POR would also exclude the
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`embodiments described in the ’356 patent.
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`32. First, Patent Owner identifies only one out of several operational/use
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`cases taught in Uehara, and argues that this single operational/use case involves
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`some dependency in the enablement or disablement of the amplifier stages. POR,
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`39-44. However, Patent Owner’s singling out of one use case of the circuitry of
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`Uehara does not rebut my showing that the amplifier stages of Uehara are
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`configured to be independently enabled or disabled. Each amplifier stage in
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`Uehara, as identified by the Petition, has a distinct control voltage (VN1, VNAux),
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`and a cascode transistor that can be “selectively enabled.” Ex. 1003, ¶36. A
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`POSITA would understand that, based on the two distinct control voltages (VN1,
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`VNAux) that each can take on two values, Uehara teaches at least four
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`operational/control states, which I have summarized in Table 1 below:
`
`VN1 (stage
`101)
`ON
`OFF
`ON
`OFF
`
`State
`1
`2
`3
`4
`
`VNAux
`(stage 102)
`OFF
`ON
`ON
`OFF
`
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`IPR2019-00047
`US Patent 9,154,356
`Table 1: Basic Control Voltage Configuration of Uehara Amplifier Stages
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`
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`
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`Patent Owner’s Response does not dispute that VN1 and VNAux are control
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`signals for the cascode transistors. See POR, 39-44. As such, the presence of these
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`separate control signals VN1 and VNAux, alone, teaches that each identified
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`amplifier stage in Uehara is “configured to be independently enabled or disabled.”
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`Nothing in Uehara precludes the circuitry disclosed in Uehara from taking on any
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`of these control states. The fact that some of the operating states may be selected
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`in combination for performance purposes in specific use cases does not make them
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`dependent on one another. Rather, it explains the reason for Uehara’s inclusion of
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`different control signals to permit such combinations.
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`33. Second, Uehara expressly describes control operations that contradict
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`Patent Owner’s argument that the amplifier stages in Uehara are not “configured to
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`be independently enabled or disabled.” Ex. 1003, ¶32. Patent Owner’s arguments
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`at pages 40-44 of the POR inject VN2 into the analysis (a signal that controls an
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`aspect of the circuitry of Uehara that allows additional functionality beyond that
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`described in the ‘356 Patent), and amount to an argument that VNAux is somehow
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`dependent on VN1 and VN2 because, in the single control embodiment on which
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`Patent Owner exclusively focuses, when only one of VN1 and VN2 is on, VNAux
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`IPR2019-00047
`US Patent 9,154,356
`is off. POR, 42; see also POR, 40-44. I have summarized Patent Owner’s
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`arguments with respect to this one embodiment of Uehara in Table 2 below.
`
`VN2
`VNAux
`VN1
`(Stage 101)
`(Stage 102)
`(Stage 101)
`State
`OFF
`OFF
`ON
`1′
`ON
`OFF
`OFF
`2′
`ON
`ON
`ON
`3′
`Table 2: Patent Owner's Arguments Regarding One Specific Use Case of
`Uehara
`
`
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`But even as shown in Table 2, the state of VNAux and VN1 are independent of one
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`another because VNAux can be either OFF (1′) or ON (3′) when VN1 is ON.
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`Furthermore, paragraph [0032] of Uehara states: “In another embodiment, in dual
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`carrier mode, for example, both transconductance stages 101 and 102 are on, and
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`transconductance stage 101 drives either OUT1 or OUT2 and transconductance
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`stage 102 drives the output path not driven by transconductance stage 101.” Ex.
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`1003, ¶32; Ex. 1002, ¶¶88, 95 n.21, 111. In other words, Uehara expressly teaches
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`that VNAux can be configured and/or controlled to be ON when either or both of
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`VN1 and VN2 are ON (e.g., in States 1-3 and 1′-3′ above), to drive the other output
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`(i.e., the output path not driven by transconductance stage 101), which is also
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`consistent with Table 1, above. Id. In Table 3 below, I add the dual-carrier
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`operational states described in paragraph [0032] of Uehara (these dual carrier states
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`from [0032] are denoted 3′′ and 4′′). Comparing states 1′ and 3′′, it is clear that
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`IPR2019-00047
`US Patent 9,154,356
`VNAux can be either ON or OFF if VN1 is ON and VN2 is OFF. Likewise,
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`comparing states 2′ and 4′′, VNAux can be either ON or OFF if VN1 is OFF and
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`VN2 is ON. Thus, VNAux is not dependent on state of the VN1 (or VN2) signals
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`in the embodiment described in paragraph [0032]. Furthermore, since VN1
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`controls the first amplifier stage and VNAux controls the second amplifier stage
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`(as I explained in my initial declaration), the entries in Table 3 (states 1′, 2′, 3′′, and
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`4′′) show not only that all four of the possible combinations for two controls (VN1
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`and VNAux) are permitted, but also that their use is described in Uehara. This
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`shows that VN1 and VNAux are independently controllable. Thus, Patent Owner’s
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`narrow focus on one example within Uehara does not capture the full scope of the
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`teachings in Uehara, and the Petition’s showing of anticipation individually by
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`each of the examples I discussed above.
`
`VN2
`VNAux (Stage
`VN1
`(Stage 101,
`102, OUT1 and
`(Stage 101,
`OUT2)
`OUT2)
`OUT1)
`State
`OFF
`OFF
`ON
`1′
`ON
`OFF
`OFF
`2′
`OFF
`ON
`ON
`3′′
`ON
`ON
`OFF
`4′′
`Table 3: Operational Use Case Described in ¶[0031] (single carrier modes)
`and ¶[0032] (dual carrier modes) of Uehara.
`
`
`
`34. Finally, Uehara teaches amplifier stages that are “configured to be
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`independently enabled or disabled” to the same extent disclosed by the ’356 patent.
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`IPR2019-00047
`US Patent 9,154,356
`Uehara teaches that its amplifier stages (as set forth in my initial declaration) are
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`configured to be enabled or disabled independently of whether or not any other
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`amplifier stage is enabled or disabled. In other words, they are configured and/or
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`c