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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 IPR2019-00048
`Patent 9,154,356
`______________________
`
`PRELIMINARY PATENT OWNER RESPONSE TO PETITION FOR
`INTER PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................... 1
`I.
`II. THE ’356 PATENT AND ITS PROSECUTION HISTORY .......................... 1
`A. Overview of the ’356 Patent .......................................................................... 1
`B.
`Prosecution History of the ’356 Patent ......................................................... 5
`III. CLAIM CONSTRUCTION ............................................................................. 8
`IV. THE PETITION SHOULD BE DENIED BECAUSE IT IS CUMULATIVE
`TO IPR2019-00047 AND IPR2019-00128 ............................................................... 8
`V. CONCLUSION .............................................................................................. 12
`
`
`
`
`I.
`
`INTRODUCTION
`Intel Corporation (“Intel” or “Petitioner”) seeks review of claims 1, 9, 10, 17,
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`and 18 of U.S. Patent No. 9,154,356 (the “’356 Patent”) based on obviousness
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`grounds that are redundant to other contemporaneously-filed petitions challenging
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`the same claims. IPR2019-00047 and IPR2019-00128 challenge largely the same
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`claims, with substantially the same arguments. Petitioner makes no attempt to
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`explain how the primary reference in the present Petition is more relevant than or
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`differs from the primary references in IPR2019-00047 and IPR2019-00128.
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`Moreover, Petitioner relies on the same secondary reference across all three petitions
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`to allegedly plug the same hole in the primary references. Thus, each ground
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`presented in this Petition is cumulative to the arguments Petitioner advances in
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`IPR2019-00047 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) to deny
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`institution.
`
`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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`
`
`1
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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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`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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`
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`2
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`
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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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`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:
`
`1. An apparatus comprising:
`
`
`
`3
`
`
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`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.
`
`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.
`
`
`
`4
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`
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`Ex. 1101 at 20:43-61; 22:11-27.
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`B.
`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. 1101. The ’423 Application
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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. 1112 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
`
`
`
`5
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`
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`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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`Ex. 1113 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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`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. 1114 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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`1115 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
`
`
`
`6
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`
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`(“Kaukovuori”). Ex. 1116 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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`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. 1117 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. 1118 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. 1119; 1120 at 2, 5.
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`In light of this amendment, the Examiner allowed claims 1 and 17. Ex. 1121 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. 1122.
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`
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`7
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`
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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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`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 PETITION SHOULD BE DENIED BECAUSE IT IS
`CUMULATIVE TO IPR2019-00047 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
`
`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, 9, 10, 17, and 18 of the ’356 Patent
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`across four grounds: 1) claims 1, 17, and 18 are obvious over “A Scalable 6-to-18
`
`GHz Concurrent Dual-Band Quad-Beam Phased-Array Receiver in CMOS,” by
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`Sanggeun Jeon, Yu-Jiu Wang, Hua Wang, Florian Bohn, Arun Natarajan, Aydin
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`Babakhani, and Ali Hajimiri (“Jeon”) (Ex. 1105) in view of U.S. Patent Application
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`Publication No. 2010/0237947) (“Xiong”) (Ex. 1106); 2) claims 9 and 10 are
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`obvious over Jeon in view of Xiong and 3GPP TR 36.912 V9.1.0; 3rd Generation
`
`
`
`8
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`
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`Partnership Project; Technical Specification Group Radio Access Network;
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`Feasibility study for Further Advancements for E-UTRA (LTE-Advanced) (Release
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`9) (“Feasibility Study”) (Ex. 1104); 3) claims 1, 17, and 18 are obvious over Jeon in
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`view of Xiong and Feasibility Study; and 4) claims 9 and 10 are obvious over Jeon
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`in view of Xiong, Feasibility Study, and “Digitally-Controlled RF Passive
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`Attenuator in 65 nm CMOS for Mobile TV Tuner ICs,” by Ahmed Youssef and
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`James Haslett (“Youssef”) (Ex. 1109).
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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. IPR2019-00047 challenges claims 1,
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`7, 8, 10, 11, 17, and 18 across six different grounds: 1) claims 1, 11, 17, and 18 are
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`anticipated by U.S. Patent Application Publication No. 2011/0217945 (“Uehara”);
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`2) claims 7 and 8 are obvious over Uehara in view of “Resistive-Feedback CMOS
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`Low-Noise Amplifiers for Multiband Applications,” by Bevin G. Perumana, Jing-
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`Hong C. Zhan, Stewart S. Taylor, Brent R. Carlton, and Joy Laskar (“Perumana”);
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`3) claim 10 is obvious over Uehara in view of Youssef; 4) claims 1, 11, 17, and 18
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`are obvious over Uehara in view of the Feasibility Study; 5) claims 7 and 8 are
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`obvious over Uehara in view of the Feasibility Study and Perumana; and 6) claim
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`10 is obvious over Uehara in view of the Feasibility Study and Youssef. IPR2019-
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`00128 challenges claims 1, 7, 8, 11, 17, and 18 across three grounds: 1) claims 1, 7,
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`8, 11, 17, and 18 are anticipated by U.S. Patent Application Publication No.
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`
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`9
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`
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`2012/0056681 (“Lee”); 2) claims 7 and 8 are obvious over Lee; and 3) claims 1, 7,
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`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.
`
`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 claim 10 in two petitions.
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`Petitioner thus challenges nearly overlapping sets of claims with grounds that are
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`substantially the same as each other and applied in the same manner. Petitioner has
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`provided no indication that Jeon, the primary reference in the present Petition, is
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`somehow more relevant or provides different disclosure than the primary references
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`in the other petitions.
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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 Jeon, Xiong, and Feasibility Study, Uehara and Feasibility Study,
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`
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`10
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`
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`and Lee and Feasibility Study are cumulative to one another. The remaining grounds
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`involve insignificant secondary references that are relied on for the same duplicative
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`arguments already made. See Tomtom, Inc. v. Blackbird Tech, LLC, IPR2017-
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`02025, 2018 WL 1308390, at *7 (PTAB Mar. 12, 2018) (denying institution of a
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`petition challenging the same claims with different prior art combinations because
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`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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`11
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`V. CONCLUSION
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`For the reasons set forth above, Qualcomm respectfully requests that
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`the Board deny institution of the petition for inter partes review.
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`Date: April 12, 2019
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`Respectfully submitted,
`
`
`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
`
`Matthew W. Johnson, Reg. No. 59,108
`Joshua R. Nightingale, Reg. No. 67,865
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
`
`12
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`
`
`TABLE OF EXHIBITS
`
`Description
`Advisory Action dated June 16, 2014
`
`Request for Continued Examination dated July 17, 2014
`
`Request for Continued Examination dated May 20, 2015
`
`Exhibit
`2001
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`2002
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`2003
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`
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`-i-
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`CERTIFICATE OF COMPLIANCE
`
`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).
`
`This Preliminary Response contains 2833 words, as counted by the word count
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`function of Microsoft Word. This is less than the limit of 14,000 words as specified
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`by 37 C.F.R. § 42.24(a)(i).
`
`
`
`Date: April 12, 2019
`
`
`
` /Joseph M. Sauer/
`Joseph M. Sauer
`JONES DAY
`901 Lakeside Avenue
`Cleveland, OH 44114
`Tel: (216) 586-7506
`
`Counsel for Patent Owner
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`-ii-
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`CERTIFICATE OF SERVICE
`
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`The undersigned hereby certifies
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`that a copy of
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`the
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`foregoing
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`PRELIMINARY PATENT OWNER RESPONSE TO PETITION FOR INTER
`
`PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.107 was served on April 12,
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`2019 by email, as follows:
`
`David Cavanaugh, Esq.
`david.cavanaugh@wilmerhale.com
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`John Hobgood, Esq.
`john.hobgood@wilmerhale.com
`
`Ben Fernandez, Esq.
`ben.fernandez@wilmerhale.com
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`Date: April 12, 2019
`
` /Joseph M. Sauer/
`Joseph M. Sauer
`JONES DAY
`901 Lakeside Avenue
`Cleveland, OH 44114
`Tel: (216) 586-7506
`
`Counsel for Patent Owner
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`-iii-
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