UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`Intel Corporation
`Petitioner
`
`v.
`
`Qualcomm Incorporated
`Patent Owner
`______________________
`
`Case IPR2019-00128
`Patent 9,154,356
`______________________
`
`PATENT OWNER’S SUR-REPLY
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`
`
`
`
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`

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`TABLE OF CONTENTS
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`
`Page
`
`
`I.
`II.
`
`B.
`
`C.
`
`Introduction ..................................................................................................... 1
`Patent Owner’s Proposed Claim Construction Is Correct .............................. 2
`A.
`Petitioner Fails To Establish That The Patentee Acted As A
`Lexicographer ....................................................................................... 2
`Patent Owner Established That “Carrier Aggregation” Has A
`Well Understood Meaning In the Art ................................................... 6
`1.
`Intrinsic Evidence ...................................................................... 7
`2.
`Extrinsic Evidence ................................................................... 11
`Petitioner’s Proposed Construction Cannot Be Correct ..................... 12
`1.
`Petitioner’s Construction Violates The Doctrine Of
`Prosecution History Disclaimer ............................................... 12
`Petitioner’s Construction Is Incorrect Because It Reads
`Out The Word “Aggregation.” ................................................. 15
`Petitioner’s Arguments And Criticisms Of Patent
`Owner’s Proposed Constructions Are Based On The
`Flawed Premise That The Patentee Acted As A
`Lexicographer .......................................................................... 16
`The Term Carrier Aggregation Requires An Increased
`Bandwidth .......................................................................................... 18
`III. Ground I – Petitioner Fails To Establish That Lee Anticipates The
`Claims ........................................................................................................... 18
`A.
`Lee Fails To Disclose “Carrier Aggregation.” ................................... 18
`B.
`Lee Does Not Anticipate Claims 7 And 8 For An Additional
`Reason ................................................................................................ 20
`IV. Ground II – Petitioner Fails To Establish That Claims 7 And 8 Are
`Obvious Over Lee ......................................................................................... 21
`V. Ground III – Petitioner Fails To Establish That Claims 1, 7, 8, 11, 17,
`and 18 Are Obvious Over Lee And The Feasibility Study .......................... 21
`A. No Motivation To Select And Combine Lee And The
`Feasibility Study ................................................................................. 21
`
`2.
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`3.
`
`D.
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`-i-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`B.
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`Petitioner Failed to Establish That The Feasibility Study Is
`Analogous Art .................................................................................... 22
`VI. CONCLUSION ............................................................................................. 24
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`-ii-
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`IPR2019-00128
`Patent 9,154,356
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`I.
`
`Introduction
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`Patent Owner’s response identified two fatal defects in Petitioner’s challenge
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`to the patentability of the ’356 Patent. Petitioner’s reply fails to refute these points.
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`First, the petition is based on a flawed construction of the term “carrier
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`aggregation.” Patent Owner established that the term has an established and well
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`understood meaning to skilled artisans. That meaning, which is set forth as Patent
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`Owner’s proposed construction, is supported by the intrinsic evidence, and it is
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`further supported by extrinsic evidence.
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`But Petitioner argues 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. The petition
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`fails, however, to establish that the patentee expressed the necessary intent to
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`redefine the term.
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`Furthermore, Petitioner’s proposed construction cannot be correct because:
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`(1) the proposed construction violates the doctrine of prosecution disclaimer, and (2)
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`the proposed construction reads out the term “aggregation.” Petitioner’s reply is
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`unsuccessful in rebutting either point.
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`Properly construed, the Lee prior art reference fails to disclose the “carrier
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`aggregation” limitation. Lee is the sole reference supporting petitioner’s first and
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`second ground and thus, Lee fails to establish unpatentability.
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`IPR2019-00128
`Patent 9,154,356
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`Second, Petitioner fails to sufficiently articulate a motivation to select and
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`combine the Feasibility Study reference (as a means of supplying the missing
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`“carrier aggregation” limitation) with Lee to support its third ground of
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`unpatentability. No reasoned explanation is offered to explain why a skilled artisan
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`would have been motivated to select and combine these two distinctly different
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`references—Lee is directed to Bluetooth and WiFi communications equipment,
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`whereas the Feasibility Study is directed to LTE cellular communications equipment.
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`Absent such an explanation, Petitioner’s alleged obviousness combination amounts
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`to impermissible hindsight reconstruction of the claimed invention. Accordingly,
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`the remaining third ground also fails to establish unpatentability.
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`II.
`
`Patent Owner’s Proposed Claim Construction Is Correct.
`A.
`
`Petitioner Fails To Establish That The Patentee Acted As A
`Lexicographer.
`Petitioner does not propose construing the term “carrier aggregation”
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`according to its plain and ordinary meaning. Instead, Petitioner and its expert argue
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`that the patentee acted as a lexicographer to assign the term a special definition
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`different than its plain and ordinary meaning. Reply at 2 (“defines the term”); id. at
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`3 (“serving as its own lexicographer”), id. at 4 (“the ’356 patent expressly defines”);
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`Ex. 2029, 128:15–21 (concluding the specification’s disclosure in column 1 at lines
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`32–33 “is their definition of carrier aggregation acting as their own lexicographer”).
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`IPR2019-00128
`Patent 9,154,356
`
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`To maintain that flawed argument, Petitioner brushes aside all evidence, both
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`intrinsic and extrinsic, Reply at 4–16, that establish the disputed term’s “ordinary
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`and customary meaning, as would be understood by a skilled artisan in the context
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`of the entire disclosure,” Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x
`
`934, 939 (Fed. Cir. 2019).
`
`“However, a claim term is only given a special definition different from the
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`term’s plain and ordinary meaning if the ‘patentee . . . clearly set[s] forth a definition
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`of the disputed claim term other than its plain and ordinary meaning.’” Akamai
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`Techs., Inc. v. Limelight Networks, Inc., 805 F.3d 1368, 1375 (Fed. Cir. 2015). As
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`the Federal Circuit has also explained:
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`When a patentee acts as his own lexicographer in
`redefining the meaning of particular claim terms away
`from their ordinary meaning, he must clearly express that
`intent in the written description. We have repeatedly
`emphasized that the statement in the specification must
`have sufficient clarity to put one reasonably skilled in the
`art on notice that the inventor intended to redefine the
`claim term.
`
`Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005)
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`(italics added). That exacting standard is not met here.
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`The analysis in Medicines Co. v. Mylan, Inc. is instructive. 853 F.3d 1296,
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`1306 (Fed. Cir. 2017). In Medicines, the Federal Circuit rejected an argument that
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`IPR2019-00128
`Patent 9,154,356
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`the patentee acted as a lexicographer and declined to construe a term using a
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`“verbatim” statement taken from the specification. Id. The decision relied on the
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`fact that the patentee defined terms elsewhere in the specification by placing “the
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`defined term in quotation marks, followed by the terms ‘refers to’ or ‘as defined
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`herein.’” Id. The patentee’s departure from this format demonstrated that the
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`necessary intent to act as a lexicographer was not expressed in the statement at issue.
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`Id.
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`In the ’356 Patent, the patentee adopted a similarly distinctive format to
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`clearly set forth a definition for a different term—the defined term in quotation
`
`marks, followed by the phrase “is used herein to mean,” followed by the definition
`
`in quotation marks—as reproduced here:
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`The term “exemplary” is used herein to mean “serving as
`an example, instance, or illustration.”
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`Ex. 1301, 2:9–11. None of the statements Petitioner relies on for the term “carrier
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`aggregation” resemble this format. Reply at 2–3 (citing Ex. 1301 at 1:32–33, 2:53–
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`54, 2:54–55). The patentee did not use the phrase “is used herein to mean” for the
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`term. Nor did the patentee use quotation marks for the term or its purported
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`definition. Cf. Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132,
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`1136 (Fed. Cir. 2007) (observing that quotation marks are “often a strong indication
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`that what follows is a definition”). In other words, the patentee did not intend for
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`IPR2019-00128
`Patent 9,154,356
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`these statements to redefine the plain and ordinary meaning of the term. Because
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`the patentee departed from the definitional format used elsewhere in the
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`specification, the statements Petitioner relies on “lack[ ] the clear expression of
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`intent necessary for a patentee to act as its own lexicographer.” Medicines, 853 F.3d
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`at 1306.
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`Furthermore, the three statements Petitioner relies on to support its argument
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`lack the clear expression of intent because they do not characterize the term carrier
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`aggregation consistently: (1) “which is simultaneous operation on multiple carriers,”
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`Ex. 1301, 1:32–33; (2) “which is operation on multiple carriers,” id., 2:53–54; and,
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`(3) “may also be referred to as multi-carrier operation,” id., 2:54–55. Petitioner’s
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`expert asserts that the first statement is the “most complete” definition of the term
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`and the second statement is not a definition but merely “a reiteration” of the first.
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`Ex. 2029, 117:13–21, 121:20–122:5, 122:11–21. That makes no sense. Each begins
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`with the same “which is” phrase and thus, there is no basis to conclude from their
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`syntax that one serves as a definition and the other does not. Petitioner’s expert
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`could not explain the distinction between the two either:
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`The sentence in column 2, rows 53 to 54, I believe
`supports the definition in column 1, rows 32 to 33 as a
`reiteration or recapitulation of the same theme. Whether
`that constitutes a definition is not so clear to me.
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`IPR2019-00128
`Patent 9,154,356
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`Ex. 2029, 126:24–127:4. The language of the third sentence casts even more doubt
`
`on the notion that it defines the term because it merely indicates that the term “may
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`also be referred to” by another name, the name “multi-carrier operation.” Ex. 1301,
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`2:54–55.
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`In sum, Petitioner’s argument to support its proposed construction is that the
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`specification “defines the term” and no other evidence need be considered. Reply at
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`2. But Petitioner fails to establish that the patentee expressed the necessary intent to
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`redefine the term to have a special meaning that differed from its plain and ordinary
`
`meaning. Akamai, 805 F.3d at 1375. Thus, the Board should reject Petitioner’s
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`lexicography argument and construe the term according to its “ordinary and
`
`customary meaning.” Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x
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`934, 939 (Fed. Cir. 2019).
`
`B.
`
`Patent Owner Established That “Carrier Aggregation” Has A
`Well Understood Meaning In the Art.
`Petitioner asserts that Patent Owner’s construction is narrow and only applies
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`to LTE systems. Reply at 4; see also id. at 5 (“merely one example of carrier
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`aggregation”), id. at 8 (Kaukovuori discloses “one specific type of carrier
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`aggregation”). But Petitioner’s only evidence that a broader construction is
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`necessary to encompass other types of systems is a conclusory statement from its
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`expert that its proposed construction “is consistent with the understanding of the
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`IPR2019-00128
`Patent 9,154,356
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`term by a POSITA.” Reply at 3 (citing Ex. 1302, ¶60). Neither the Petitioner nor
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`its expert cite to any intrinsic or extrinsic evidence to support this argument.
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`Accordingly, no weight should be accorded to such statements from Petitioner’s
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`expert because “conclusory, unsupported assertions by experts as to the definition
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`of a claim term are not useful to a court.” Phillips v. AWH Corp., 415 F.3d 1303,
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`1318 (Fed. Cir. 2005).
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`“Carrier aggregation” is a technical term that was known to skilled artisans.
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`Ex. 2029, 131:4–18 (A person of ordinary skill “would have recognized the
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`term” . . . [and] “would have had an understanding of what carrier aggregation
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`means.”). “[B]ecause patentees frequently use terms idiosyncratically,” the Board
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`must examine “‘those sources available to the public that show what a person of skill
`
`in the art would have understood disputed claim language to mean.’” Phillips, 415
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`F.3d at 1314. In its response, Patent Owner demonstrated, using both intrinsic and
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`extrinsic evidence, that its construction is the ordinary and customary meaning of
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`the term. Resp. at 11–22.
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`
`Intrinsic Evidence
`In its response, Patent Owner identified evidence from the specification and
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`the file history, including statements from the applicant, a prior art reference patent
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`(Kaukovuori) used by the examiner to reject the claims, and two foreign references
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`disclosed in the applicant’s Information Disclosure Statements (WO 2012/008705
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`IPR2019-00128
`Patent 9,154,356
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`and GB 2472978). Resp. at 12–17. In an attempt to discredit this intrinsic evidence,
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`Petitioner resorts to hyperbole for its arguments:
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`(1) the evidence was taken from “hidden portions of its voluminous
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`information disclosure statement[s],” Reply at 4,
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`(2) it “is debatable” that the three references cited in the prosecution history
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`“qualify as intrinsic evidence,” id. at 7,
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`(3) the two foreign references “amount to less than 1% of the prior art
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`references submitted during prosecution,” id. at 8, and
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`(4) the two foreign references “were never discussed during prosecution,”
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`id.
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`However, Petitioner cites no case law to establish that this intrinsic evidence is not
`
`relevant (or even less relevant) to the claim construction analysis as a consequence.
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`And as the response noted, Federal Circuit law makes clear “that prior art cited in a
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`patent or cited in the prosecution history of the patent constitutes intrinsic evidence.”
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`Resp. at 16 (citing Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231 (Fed.
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`Cir. 2011).
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`In its Response, Patent Owner explained that Petitioner’s proposed
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`construction fails to provide any additional meaning to the claim language. Resp. at
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`29 (“Substituting Petitioner’s proposed construction would result in a claim that
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`recited ‘the input RF signal employing simultaneous operation on multiple carriers
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`-8-
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`IPR2019-00128
`Patent 9,154,356
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`comprising transmissions sent on multiple carriers.’”). Although this absence of
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`additional meaning illustrates a serious flaw in Petitioner’s proposed construction,
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`Petitioner failed to offer any reply. See Merck & Co. v. Teva Pharms. USA, Inc.,
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`395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to
`
`all the terms of the claim is preferred over one that does not do so.”); Mangosoft,
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`Inc. v. Oracle Corp., 525 F.3d 1327, 1330–31 (Fed. Cir. 2008) (rejecting claim
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`construction that “ascribes no meaning to the term . . . not already implicit in the rest
`
`of the claim.”).
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`Petitioner also argues that Patent Owner’s construction “lack[s] any written
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`description support.” Reply at 5. But “a skilled artisan reads a claim term . . . in the
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`context of the entire patent, including the written description and prosecution history,
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`as well as relevant extrinsic evidence.” Howmedica Osteonics Corp. v. Zimmer, Inc.,
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`No. 2015-1232, 2016 WL 2754049, at *5 (Fed. Cir. May 12, 2016). And as
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`explained in the Response, the written description and prosecution history do indeed
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`support patent owner’s proposed construction. Resp. at 11–17. For example, the
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`specification discloses that the multiple carriers may be referred to as “component
`
`carriers.” Resp. at 12. The plain meaning of the adjective “component” indicates
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`that the multiple carriers are components that are combined to form a single
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`aggregated carrier. Id.
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`-9-
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`IPR2019-00128
`Patent 9,154,356
`
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`As the Response also explained, the written description distinguishes “carrier
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`aggregation” from terms such as “multiple bands” and “multiple radio technologies.”
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`Resp. at 29 (citing Ex. 1301 at 3:43–49; Ex. 2024 ¶ 119). Petitioner ignores this
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`distinction in construing the term “carrier aggregation” so that it reads on “multiple
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`radio technologies,” such as Lee’s disclosure of Bluetooth and WiFi radio
`
`technologies. In its Reply, Petitioner failed to respond to this distinction in the
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`specification between the two terms.
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`Dr. Foty also emphasized during his deposition that the written description
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`identifies just one attribute of “carrier aggregation,” and that the term must also be
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`considered in the context of the prosecution history:
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`“It’s providing a necessary condition. . . . I don’t regard it
`as a complete definition which is why the file history has
`so much further information.”
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`Ex. 1340 at 56:1–9.
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`Moreover, Petitioner’s expert does not dispute that the intrinsic evidence is
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`consistent with how a person of ordinary skill in the art would understand carrier
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`aggregation. Ex. 2029, 144:10–145:13 (discussing Kaukovuori, Ex. 1325), 152:14–
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`153:9 (discussing GB 2472978, Ex. 2017).
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`-10-
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`IPR2019-00128
`Patent 9,154,356
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`
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`Extrinsic Evidence
`Petitioner argues that extrinsic evidence is being used to change the ordinary
`
`and customary meaning of the term. Reply at 13. It is not. The extrinsic evidence
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`is entirely consistent with the intrinsic evidence. Resp. at 17–22. Specifically,
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`Patent Owner identified seven separate examples of extrinsic evidence from various
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`sources, each of which provides further support and confirmation of the term’s
`
`ordinary and customary meaning. Id. (citing Ex. 1304, 2013, 2018–2022).
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`For example, Petitioner does not dispute that its own inventors understood the
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`term to mean multiple carriers are combined (aggregated) as a single virtual channel
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`to provide higher bandwidth. Resp. at 17–18 (citing Ex. 2013, an LTE-related patent
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`which claims priority to September 28, 2012—just four months later than the ’356
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`Patent’s claimed priority date). Nor does Petitioner dispute that each of the
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`textbooks, publications, and patents cited in Patent Owner’s Response use the term
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`as it was ordinarily understood by a skilled artisan, consistent with Patent Owner’s
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`proposed construction. Resp. at 18–22. Nor does Petitioner dispute that the
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`Feasibility Study (a reference Petitioner selected and introduced into this proceeding)
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`evidences that a skilled artisan understood that carrier aggregation meant combining
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`carriers for operation as a single virtual channel (i.e., multiplexing user data to each
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`user device). Resp. at 19–20 (citing Ex. 1304, dated September 2012); Ex. 2024 ¶¶
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`-11-
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`IPR2019-00128
`Patent 9,154,356
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`95–96. Indeed, Petitioner even admits that the extrinsic evidence is “not inconsistent
`
`with [its] proposed construction.” Reply at 13.
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`“[B]ecause extrinsic evidence can help educate the court regarding the field
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`of the invention and can help the court determine what a person of ordinary skill in
`
`the art would understand claim terms to mean,” it is proper for the Board to consider
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`Patent Owner’s extrinsic evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1319
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`(Fed. Cir. 2005).
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`C.
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`Petitioner’s Proposed Construction Cannot Be Correct.
`
`Petitioner’s Construction Violates The Doctrine Of
`Prosecution History Disclaimer.
`Petitioner asserts that Patent Owner’s arguments and amendments during
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`prosecution to distinguish the Hirose reference cannot constitute a prosecution
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`history disclaimer.1 Reply at 10–12. As the Response explained, the applicant
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`1 Petitioner’s argument that Patent Owner’s expert purportedly “abandoned”
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`a theory of prosecution disclaimer is of no moment. Reply at 9. First,
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`“interpretations of evidence intrinsic to the patent . . . are legal conclusions.”
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`UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 822 (Fed. Cir. 2016).
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`Second, the issue is not whether the scope of the “carrier aggregation” term was
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`disclaimed. The issue is that Petitioner’s proposed construction negates the
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`amendment to overcome Hirose.
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`-12-
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`IPR2019-00128
`Patent 9,154,356
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`amended the pending claims during prosecution to add the “employing carrier
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`aggregation” limitation to overcome the Hirose reference and argued that “Hirose’s
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`‘satellite wave signal and ground wave signal’ do not result in ‘carrier aggregation’
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`as claimed by Applicant.” Resp. at 24–26; Ex. 1315. Yet Petitioner now proposes
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`construing the term so broadly that the claims once again read on Hirose, which
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`discloses “simultaneous operation on multiple carriers.” Resp. at 26–27; Ex. 2024
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`¶ 113. Petitioner’s construction violates the doctrine of prosecution disclaimer:
`
`[A]n amendment that clearly narrows the scope of a claim,
`such as by the addition of a new claim limitation,
`constitutes a disclaimer of any claim interpretation that
`would effectively eliminate the limitation or that would
`otherwise recapture the claim’s original scope.
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`Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010).
`
`To support its position, Petitioner argues that “the law is unsettled as to
`
`whether . . . prosecution history disclaimer applies under the BRI standard” and
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`further, that disclaimer “does not apply” here because Patent Owner advanced the
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`argument during claim construction. Reply at 9–10. The Federal Circuit rejects both
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`of Petitioner’s arguments:
`
`In inter partes review, the Board construes claims
`according to “their broadest reasonable construction in
`light of the specification as they would be interpreted by
`one of ordinary skill in the art.” In applying this standard,
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`IPR2019-00128
`Patent 9,154,356
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`“words of the claim must be given their plain meaning,
`unless such meaning is inconsistent with the specification
`and the prosecution history.” The Board must “exclude
`any
`interpretation
`that was disclaimed during
`prosecution.” Never have we authorized the Board to
`disregard clear and unmistakable statements of disclaimer
`from the prosecution history of a patent simply because it
`is the patent owner arguing for disclaimer. . . . Claim
`construction is an objective inquiry. . . . The meaning of a
`claim term does not change depending on the party that
`argues prosecution disclaimer.
`
`VirnetX Inc. v. Mangrove Partners Master Fund, Ltd., 778 F. App’x 897, 910 (Fed.
`
`Cir. 2019) (concluding the Board erred in refusing to consider statements of
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`disclaimer because it was the patent owner that advanced the disclaimer argument
`
`in support of its proposed claim construction) (italics added) (citations omitted).
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`Petitioner’s argument that disclaimer binds only the patent owner misreads
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`Tempo. Reply at 9–10 (citing Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973,
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`978 (Fed. Cir. 2014)). Tempo stands for the proposition that “the Board is not
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`required to accept a patent owner’s arguments as disclaimer when deciding the
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`merits of those arguments. It does not mean the Board in an inter partes review can
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`ignore statements made in a prior reexamination.” VirnetX, 778 F. App’x at 910.
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`Petitioner never disputes that Hirose could not have been distinguished if the
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`term “carrier aggregation” meant “simultaneous operation on multiple carriers.” See
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`Reply at 9–12. Moreover, Petitioner concedes that Hirose discloses “three different
`
`carriers . . . [that] are received simultaneously and synthesized to obtain a single
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`stream of data.” Reply at 10. Petitioner’s expert states it even more clearly:
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`“Hirose’s receiver operates simultaneously on multiple carriers.” Ex. 2029, 163:8–
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`9. Thus, “carrier aggregation” cannot simply mean “simultaneous operation on
`
`multiple carriers” as Petitioner proposes because “by distinguishing the claimed
`
`invention over [Hirose], [the] applicant . . . indicat[ed] what the claims do not cover.”
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`Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997).
`
`
`
`Petitioner’s Construction Is Incorrect Because It Reads Out
`The Word “Aggregation.”
`In its reply, Petitioner argues that its proposed construction does not read out
`
`the term “aggregation.” Petitioner asserts the term “aggregation” in this context
`
`means “multiple carriers would be present simultaneously in the input RF signal.”
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`Reply at 14. This explanation is unhelpful as it merely rehashes its proposed
`
`construction. Moreover, Petitioner’s explanation is not consistent with the intrinsic
`
`and extrinsic evidence, including evidence of how its own inventors described the
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`“aggregation.” Resp. at 11–22; see, e.g., Ex. 2013 at 3:19–53 (U.S. Pat. No.
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`9,161,254, assigned to Intel Corp.) (“One technique for providing additional
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`IPR2019-00128
`Patent 9,154,356
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`bandwidth capacity to wireless devices is . . . aggregation of multiple smaller
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`bandwidths to form a virtual wideband channel at a wireless device. . . . Carrier
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`aggregation provides a broader choice to the wireless devices, enabling more
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`bandwidth to be obtained. The greater bandwidth can be used to communicate
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`bandwidth intensive operations, such as streaming video or communicating large
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`data files.”).
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`As Patent Owner’s response explained, “aggregate” means “to collect
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`together, assemble.” Resp. at 29. With carrier aggregation, data is split up
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`(multiplexed) and transmitted over multiple frequencies (component carriers) to
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`create a higher bandwidth channel for the device. Resp. at 4; Ex. 2024 ¶ 51. The
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`user device receives and de-multiplexes (aggregates) the multiple streams to recreate
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`the original incoming data stream. Resp. at 14. The result is that the incoming data
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`stream is received more quickly because it was transmitted in a higher bandwidth
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`virtual channel. Id. Petitioner’s proposed construction (“simultaneous operation on
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`multiple carriers”) should be rejected because it fails to impart any meaning to the
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`term “aggregation.”
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`
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`Petitioner’s Arguments And Criticisms Of Patent Owner’s
`Proposed Constructions Are Based On The Flawed Premise
`That The Patentee Acted As A Lexicographer.
`Petitioner seeks a broad construction so that the disputed claim limitation
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`reads on the prior art it has identified. To support this objective, Petitioner
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`Patent 9,154,356
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`repeatedly argues that Patent Owner’s proposed construction is too narrow. Reply
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`at 2 (“overly narrow”); id. at 8 (“prior art references submitted during
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`prosecution . . . cannot properly be used to narrow the express definition”); id. at 10
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`(“the doctrine does not apply where a patent owner seeks to rely upon it to narrow
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`the broadest reasonable interpretation”); id. at 15–16 (“narrow interpretations”).
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`Each of Petitioner’s arguments stems from the premise that the patentee acted
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`as a lexicographer to assign the term a special definition different than its ordinary
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`meaning. From Petitioner’s perspective, Patent Owner’s proposed construction
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`must be wrong because it is narrower than the purported special definition. But as
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`explained above, this reasoning is flawed because the patentee did not act as a
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`lexicographer.
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`Notably, Petitioner never disputes that skilled artisans understood the term to
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`have the plain and ordinary meaning as Patent Owner’s proposed construction.
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`Petitioner cannot dispute this. Indeed, Petitioner’s own patents demonstrate the term
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`has the same plain and ordinary meaning that Patent Owner proposes. Ex. 2013.
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`To avoid the plain and ordinary meaning, Petitioner must begin with the
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`premise that the patentee acted as a lexicographer, and thus, any other construction
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`must be “too narrow.” But stripped of its lexicography argument, Petitioner’s
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`arguments and criticisms of Patent Owner’s proposed construction must also fail.
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`D. The Term Carrier Aggregation Requires An Increased
`Bandwidth.
`As the term implies, “carrier aggregation” includes an aggregation of
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`component carriers. See Ex. 1301, 3:1-38; Figs. 2A-2D, Ex. 2024, ¶¶ 83-85. And
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`as the intrinsic and extrinsic evidence show, this aggregation provides an increased
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`bandwidth that results in an increased aggregated data rate. Resp. at 11–22; see, e.g.,
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`Ex. 2013 at 3:19–53. In other words, carrier aggregation allows data to be
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`transmitted to a user more quickly than is the case with traditional single-frequency
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`methods. Resp. at 4; Ex. 2024 ¶ 51.
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`Petitioner’s proposed construction fails to address any of these characteristics
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`that were well-known to skilled artisans at the time of the alleged invention. At the
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`very least, the term carrier aggregation must be construed to reflect that, in addition
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`to referring to simultaneous operation on multiple carriers, the term reflects
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`operation that provides an increased bandwidth and thereby an increased aggregated
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`data rate to the user.
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`III. Ground I – Petitioner Fails To Establish That Lee Anticipates The
`Claims.
`A. Lee Fails To Disclose “Carrier Aggregation.”
`Petitioner argues that Lee discloses the “carrier aggregation” limitation even
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`under Patent Owner’s proposed construction. Reply at 16. It does not. Lee never
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`describes its input RF signal (VIN) as “employing carrier aggregation.” Resp. at 32.
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`Lee never describes combining carriers as a single virtual channel. Id. Lee never
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`describes providing a higher bandwidth. Id. at 33; see Resp. at 33–34; Ex. 2024, ¶¶
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`141–42 (“The term ‘bandwidth’ applies . . . to a single channel not to the numbers
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`associated with two independent channels; mathematically adding together the
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`bandwidths of two independent channels simply does not make physical sense.”).
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`Petitioner merely repeats its argument that Lee’s Bluetooth and WiFi carriers
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`are simultaneously received. However, the mere presence of two carriers cannot
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`establish “carrier aggregation” without evidence of anything being aggregated. Resp.
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`at 33; Ex. 2024 ¶ 140. Standing alone, the disclosure of two unrelated carrier signals
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`is not evidence of an “aggregation” because it ignores the meaning of the word
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`“aggregation.” Id. Petitioner also fails to identify any evidence of skilled artisans
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`aggregating Bluetooth and WiFi signals. This is likely because skilled artisans
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`understood it would not have been useful to do so. Resp. at 34; Ex. 2024 ¶ 144.
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`At the time of the invention of the ’356 patent, a person of ordinary skill would
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`not have understood Lee to disclose an “input RF signal employing carrier
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`aggregation.” Resp. at 32–34. As just one example, the examiner considered Lee
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`during prosecution and declined to reject the claims based on its disclosure. Resp.
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`at 30–31.
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`B.
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`Lee Does Not Anticipate Claims 7 And 8 For An Additional
`Reason.
`In the response, Patent Owner explained that Petitioner improperly mixed
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`different embodiments to set forth its anticipation case for claim 7. Resp. at 35–38.
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`For some limitations of claim 7, Petitioner alleged the anticipating circuit operates
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`in a “shared mode”; for other limitations the anticipating circuit operates in a “combo
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`mode.” But Lee fails to disclose circuits that simultaneous embody both a time-
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`division “shared mode” and a “combo mode.” Thus, Lee fails to anticipate claim 7
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`and its dependent claim, claim 8, fo