`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`Intel Corporation
`Petitioner
`
`v.
`
`Qualcomm Incorporated
`Patent Owner
`______________________
`
`Case IPR2019-00049
`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
`I.
`INTRODUCTION ........................................................................................................... 1
`II. THE ’356 PATENT AND ITS PROSECUTION HISTORY .............................. 1
`A. Overview of the ’356 Patent .......................................................................... 1
`B.
`Prosecution History of the ’356 Patent ......................................................... 4
`III. CLAIM CONSTRUCTION .......................................................................................... 7
`IV. THE PETITION SHOULD BE DENIED BECAUSE IT IS CUMULATIVE
`TO IPR2019-00129 ......................................................................................................... 7
`V. CONCLUSION .............................................................................................................. 10
`
`
`
`
`I.
`
`INTRODUCTION
`Intel Corporation (“Intel” or “Petitioner”) seeks review of claims 2-8 and 11
`
`of U.S. Patent No. 9,154,356 (the “’356 Patent”) based on obviousness grounds that
`
`are redundant to a contemporaneously-filed petition. IPR2019-00129 challenges
`
`largely the same claims, with substantially the same arguments. Petitioner makes
`
`no attempt to explain how the primary reference in the present Petition is more
`
`relevant than or differs from the primary reference in IPR2019-00129. Moreover,
`
`Petitioner relies on a secondary reference in both petitions to allegedly plug the same
`
`hole in the primary references. Thus, each ground presented in this Petition is
`
`cumulative to the arguments Petitioner advances in IPR2019-00129.
`
`The Board should not reward Petitioner for its redundant and cumulative
`
`attacks but should instead exercise its discretion under 35 U.S.C. §§ 314(a) to deny
`
`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,”
`
`generally relates to the design and operation of amplifiers in a wireless device
`
`receiving radio frequency (RF) signals employing carrier aggregation.
`
`Receiving signals that employ carrier aggregation, a communication
`
`technique that Qualcomm pioneered, allows a mobile device to increase the
`
`bandwidth available to a user for receiving the user’s desired content. With carrier
`1
`
`
`
`
`
`aggregation, data is split up and transmitted over multiple frequencies (carriers) to
`
`create more bandwidth for the device. Carrier aggregation therefore allows more
`
`data to be transmitted more quickly than traditional single-frequency methods.
`
`However, a typical mobile device is not always receiving RF signals employing
`
`carrier aggregation. For example, sometimes a mobile device may receive RF
`
`signals on a single carrier, and at other times it receives no RF signals at all. One
`
`aspect of the invention of the ’356 Patent is a receiver design that offers the
`
`flexibility of activating circuitry to receive a signal employing carrier aggregation
`
`when needed and deactivating that circuitry when it is not needed. By allowing
`
`flexibility of circuit components between carrier aggregation and non-carrier-
`
`aggregation modes, a mobile device can conserve power when less bandwidth is
`
`needed, and provide increased bandwidth to the user when desired.
`
`Aspects of the ’356 Patent may be found in the RF transceiver of mobile
`
`devices. The RF transceiver is a component that receives radio-frequency (RF)
`
`signals transmitted over the air (which can be at frequencies in the MHz to GHz
`
`ranges) and converts the RF signals to baseband signals that can be provided to
`
`digital circuitry for processing, for example, to recover user data. The RF transceiver
`
`is connected to the antenna that receives the RF signals through RF front-end
`
`circuitry, which prepares the received signals for conversion to baseband signals,
`
`such as by filtering the signals.
`
`
`
`2
`
`
`
`The ’356 Patent’s claims are directed to an RF receiver (for example, within
`
`an RF transceiver) with two amplifiers that separately amplify a common input RF
`
`signal, where each of the two amplifiers can be independently enabled or disabled.
`
`By independently controlling the amplifier stages, the amplifier stages may be
`
`enabled or disabled as needed for carrier aggregation operation. For example, the
`
`two amplifiers may be enabled in carrier aggregation mode. Alternatively, one of
`
`the amplifiers may be enabled and the other disabled in non-carrier-aggregation
`
`mode.
`
`By allowing the flexibility to disable an amplifier stage when it is not needed
`
`for carrier aggregation, the invention of the ’356 Patent reduces power consumption
`
`in the RF transceiver and extends battery life for the mobile device. Furthermore,
`
`by sharing a common RF input signal between both amplifier stages, the invention
`
`of the ’356 Patent reduces the number of connections needed in the RF transceiver,
`
`which in turn reduces the size of the transceiver and of the mobile device, and
`
`reduces the number of components required for multiple modes of operation.
`
`Claim 1 illustrates an exemplary embodiment of the ’356 Patent’s inventions:
`
`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
`
`
`
`3
`
`
`
`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.
`
`Ex. 1201 at 20:43-61.
`
`B.
`Prosecution History of the ’356 Patent
`The ’356 Patent issued from U.S. Patent Application No. 13/590,423 (the
`
`“’423 Application”), filed August 21, 2012, and claims priority to U.S. Provisional
`
`Application No. 61/652,064, filed May 25, 2012. Ex. 1201. The ’423 Application
`
`underwent a lengthy and comprehensive examination, spanning five rejections and
`
`advisory actions, two requests for continued examination, and hundreds of cited
`
`references, including multiple 3rd Generation Partnership Project (“3GPP”)
`
`standards/articles and an International Search Report (“ISR”) and Written Opinion.
`
`The challenged claims all depend from independent claim 1. The first office
`
`action issued November 14, 2013, and rejected independent claim 1, among other
`
`claims, as obvious over U.S. Patent No. 7,751,513 (“Eisenhut”). Ex. 1212 at 3-5.
`
`To overcome the rejection, Applicant amended claim 1 as follows:
`
`
`
`4
`
`
`
`1. An apparatus comprising:
`a first amplifier stage configured to receive and amplify an
`input radio frequency (RF) signal and provide a first
`output RF signal to a first load circuit when the first
`amplifier stage is enabled, the input RF signal comprising
`transmissions sent on multiple carriers at different
`frequencies to a wireless device, the first output RF signal
`including at least a first carrier of the multiple carriers; and
`
` a
`
` second amplifier stage configured to receive and amplify
`the input RF signal and provide a second output RF signal
`to a second load circuit when the second amplifier stage is
`enabled, the second output RF signal including at least a
`second carrier of the multiple carriers different than the
`first carrier.
`
`Ex. 1213 at 2. Applicant additionally included arguments that Eisenhut does not
`
`teach or suggest at least the elements added by amendment. Id. at 7-9.
`
`The Patent Office then issued a final office action on April 18, 2014, rejecting
`
`claim 1 (among others) as anticipated by U.S. Patent No. 7,317,894 (“Hirose”). Ex.
`
`1214 at 3-5. In response, Applicant amended claim 1 to recite “the input RF signal
`
`employing carrier aggregation comprising transmissions sent on multiple carriers at
`
`different frequencies to a wireless device.” Ex. 1215 at 2. Applicant further argued
`
`that Hirose did not utilize an input RF signal employing carrier aggregation. Id. at
`
`7-9.
`
`The Patent Office then issued an advisory action indicating that the claim
`
`amendments raised new issues that would require additional searching. Ex. 2001.
`
`
`
`5
`
`
`
`Accordingly, on July 17, 2014, Applicant filed a request for continued examination
`
`(“RCE”) that included the aforementioned amendment and arguments. Ex. 2002.
`
`The Patent Office next issued a non-final office action on August 1, 2014,
`
`rejecting claim 1 as anticipated by U.S. Patent No. 8,442,473 (“Kaukovuori”). Ex.
`
`1216 at 3-5. In response, Applicant presented numerous arguments that Kaukovuori
`
`does not teach or suggest “[a first amplifier stage configured to ... amplify/
`
`amplifying ... with a first amplifier stage] ... when the first amplifier stage is
`
`enabled ... and [a second amplifier stage configured to ... amplify/ amplifying ... with
`
`a second amplifier stage] ... when the second amplifier stage is enabled,” as recited
`
`in claim 1. Ex. 1217 at 7-9.
`
`On December 26, 2014, the Patent Office issued a second final office action,
`
`again rejecting claim 1 as anticipated by Kaukovuori. Ex. 1218 at 7-9. After an
`
`Examiner Interview discussing possible claim amendments, Applicant amended
`
`independent claim 1 to recite that the first amplifier stage is configured to “be
`
`independently enabled or disabled . . .” and the second amplifier stage is configured
`
`to “be independently enabled or disabled . . . .” Ex.. 1219; Ex. 1220 at 2. In light of
`
`this amendment, the Examiner allowed claim 1. Ex. 1221 at 6.
`
`Prior to paying the issue fee, Applicant filed a second request for continued
`
`examination in order to permit the Patent Office to consider additional prior art
`
`disclosed in an Information Disclosure Statement. Ex. 2003. After reviewing the
`
`
`
`6
`
`
`
`references, the Examiner again issued a Notice of Allowance, and the ’423
`
`Application issued on October 6, 2015 as the ’356 Patent. Ex. 1222.
`
`III. CLAIM CONSTRUCTION
`
`37 C.F.R. 42.100(b) states that claims must be given their broadest reasonable
`
`interpretation in light of the specification (“BRI standard”). Patent Owner submits
`
`that no terms must be construed at this stage in the proceeding, and that the Board
`
`should deny institution under any claim construction it adopts. Patent Owner
`
`reserves the right to put forth constructions of particular claim terms and to rebut
`
`constructions proffered in the petition as relevant to the patentability of the claims
`
`should trial be instituted.
`
`IV. THE PETITION SHOULD BE DENIED BECAUSE IT IS
`CUMULATIVE TO IPR2019-00129
`Petitioner challenges overlapping claims with redundant references and
`
`
`
`arguments across two 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
`
`Patent.
`
`
`
`Petitioner presently challenges claims 2-8 and 11 of the ’356 Patent across
`
`two grounds: 1) claims 2-8 and 11 are obvious over “A Scalable 6-to-18 GHz
`
`Concurrent Dual-Band Quad-Beam Phased-Array Receiver in CMOS,” by
`
`Sanggeun Jeon, Yu-Jiu Wang, Hua Wang, Florian Bohn, Arun Natarajan, Aydin
`
`Babakhani, and Ali Hajimiri (“Jeon”) in view of U.S. Patent Application Publication
`
`
`
`7
`
`
`
`No. 2010/0237947 (“Xiong”); and 2) claims 2-8 and 11 are obvious over Jeon in
`
`view of Xiong and further in view of the Feasibility Study. Separately, Petitioner
`
`filed a redundant petition challenging the same or substantially the same sets of
`
`claims. IPR2019-00129 challenges claims 2-6 and 10 across four grounds: 1) claims
`
`2-6 are anticipated by U.S. Patent Application Publication No. 2012/0056681
`
`(“Lee”); claim 10 is obvious over Lee in view of “Digitally-Controlled RF Passive
`
`Attenuator in 65 nm CMOS for Mobile TV Tuner ICs,” by Ahmed Youssef and
`
`James Haslett (“Youssef”); 3) claims 2-6 are obvious over Lee in view of the
`
`Feasibility Study; and 4) claim 10 is obvious over Lee in view of Youssef and further
`
`in view of the Feasibility Study.
`
`
`
`Pre-SAS, it was not only appropriate for the Board to deny institution of
`
`redundant grounds, it was commonplace. See, e.g., Toyota Motor Corp. v. American
`
`Vehicular Sciences LLC, IPR2013-00423, 2014 WL 2507979, Paper 14 (PTAB Jan.
`
`13, 2014); Broadcom Corp. v. Telefonaktiebolaget L. M. Ericsson, IPR2013-00602,
`
`Paper 27 (PTAB Mar. 10, 2014); Harmonic, Inc. v. Avid Technology, Inc., IPR2013-
`
`00252, Paper 12 (PTAB Sept. 25, 2013). Post-SAS, it remains appropriate for the
`
`Board to exercise its discretion under 35 U.S.C. §314(a) to deny redundant petitions.
`
`Here, Petitioner challenges dependent claims 2-6 in two separate petitions and four
`
`different invalidity grounds. Petitioner thus challenges nearly overlapping sets of
`
`
`
`8
`
`
`
`claims with grounds that are substantially the same as each other and applied in the
`
`same manner.
`
`
`
`Additionally, the petitions all rely on the Feasibility Study as a back-up to the
`
`primary references. The Feasibility Study is cited for the same argument in each
`
`petition – that it teaches “an input RF signal employing carrier aggregation.” Thus,
`
`the combination of Jeon, Xiong, and Feasibility Study, and Lee and Feasibility
`
`Study, are cumulative to one another. See Tomtom, Inc. v. Blackbird Tech, LLC,
`
`IPR2017-02025, 2018 WL 1308390, at *7 (PTAB Mar. 12, 2018) (denying
`
`institution of a petition challenging the same claims with different prior art
`
`combinations because the arguments were substantially the same).
`
`
`
`For these reasons, the Board should exercise its discretion under 35 U.S.C. §
`
`314(a) to reject Petitioner’s attempt to attack the same claims across two petitions
`
`with substantially the same arguments.
`
`
`
`
`
`
`
`9
`
`
`
`
`
`V. CONCLUSION
`For the reasons set forth above, Qualcomm respectfully requests that the
`
`Board deny institution of the petition for inter partes review.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: April 12, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`10
`
`
`
`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
`
`2002
`
`2003
`
`
`
`-i-
`
`
`
`
`
`
`
`
`CERTIFICATE OF COMPLIANCE
`
`I, the undersigned, certify that the above Patent Owner Preliminary Response
`
`complies with the applicable type-volume limitations of 37 C.F.R. § 42.24 (b)(1).
`
`This Preliminary Response contains 2376 words, as counted by the word count
`
`function of Microsoft Word. This is less than the limit of 14,000 words as specified
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`-ii-
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing
`
`
`
`
`PRELIMINARY PATENT OWNER RESPONSE TO PETITION FOR INTER
`
`PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.107 was served on April 12,
`
`2019 by email, as follows:
`
`David Cavanaugh, Esq.
`david.cavanaugh@wilmerhale.com
`
`John Hobgood, Esq.
`john.hobgood@wilmerhale.com
`
`Ben Fernandez, Esq.
`ben.fernandez@wilmerhale.com
`
`
`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
`
`
`-iii-
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
