Trials@uspto.gov
`571.272.7822
`
`Paper 35
`Date: May 27, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`____________
`
`IPR2019-00128
`Patent 9,154,356 B2
`____________
`
`
`
`Before MICHELLE N. WORMMEESTER, AMANDA F. WIEKER, and
`AARON W. MOORE, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571.272.7822
`
`Paper 35
`Date: May 27, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`____________
`
`IPR2019-00128
`Patent 9,154,356 B2
`____________
`
`
`
`Before MICHELLE N. WORMMEESTER, AMANDA F. WIEKER, and
`AARON W. MOORE, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2019-00128
`Patent 9,154,356 B2
`
`
`I. INTRODUCTION
`
`Intel Corporation1 (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
`
`requesting an inter partes review of claims 1, 7, 8, 11, 17, and 18 of U.S.
`
`Patent No. 9,154,356 B2 (Ex. 1301, “the ’356 patent”). Qualcomm
`
`Incorporated (“Patent Owner”) filed a Preliminary Response. Paper 7
`
`(“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted an inter partes
`
`review of challenged claims 1, 7, 8, 11, 17, and 18 based on all the grounds
`
`presented in the Petition. Paper 9 (“Inst. Dec.”). Patent Owner filed a
`
`Response (Paper 13, “PO Resp.”), Petitioner filed a Reply (Paper 20, “Pet.
`
`Reply”), and Patent Owner filed a Sur-reply (Paper 26, “PO Sur-reply”). On
`
`February 27, 2020, we conducted an oral hearing. A copy of the transcript
`
`(Paper 34, “Tr.”) is included in the record.
`
`We have jurisdiction under 35 U.S.C. § 6(b). For the reasons that
`
`follow, we determine that Petitioner has not shown by a preponderance of
`
`the evidence that claims 1, 7, 8, 11, 17, and 18 of the ’356 patent are
`
`unpatentable. This final written decision is issued pursuant to 35 U.S.C.
`
`§ 318(a).
`
`
`
`II. BACKGROUND
`
`A. Related Proceedings
`
`The parties identify a federal district court case in which Patent Owner
`
`asserted the ’356 patent against Apple: Qualcomm Incorporated v. Apple
`
`Incorporated, No. 3:17-cv-02398 (S.D. Cal.). Pet. 1; Paper 4, 1. Petitioner
`
`indicates that the district court has dismissed this case. Paper 8, 1.
`
`
`1 Intel Corporation identifies itself and Apple Inc. (“Apple”) as real parties
`in interest. Paper 3, 1.
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`2
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`The parties also identify an International Trade Commission (“ITC”)
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`investigation in which Patent Owner asserted the ’356 patent against Apple.
`
`Pet. 1; Paper 4, 1. According to Petitioner, the ITC has terminated the
`
`investigation. Paper 14, 2.
`
`In addition, the parties identify four other petitions for inter partes
`
`review involving the ’356 patent that Petitioner has filed, namely, Cases
`
`IPR2019-00047, IPR2019-00048, IPR2019-00049, and IPR2019-00129.
`
`Pet. 1; Paper 4, 1.
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`
`
`B. The ’356 Patent
`
`The ’356 patent describes low noise amplifiers. Ex. 1301, 1:15–16.
`
`Figure 6A, which is reproduced below, illustrates an example of a low noise
`
`amplifier according to the ’356 patent. Id. at 1:54–55.
`
`In particular, Figure 6A shows carrier aggregation low noise amplifier 640a,
`
`which has two amplifier stages 650a and 650b. Id. at 7:44–49. Amplifier
`
`stage 650a includes source degeneration inductor 652a, gain transistor 654a,
`
`cascode transistor 656a, and switch 658a. Id. at 7:58–8:4. Similarly,
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`amplifier stage 650b includes source degeneration inductor 652b, gain
`
`transistor 654b, cascode transistor 656b, and switch 658b. Id. at 8:4–9.
`
`Both amplifier stages 650a and 650b are coupled to common input matching
`
`circuit 632 and to respective load circuits 690a and 690b. Id. at 7:47–49.
`
`In operation, matching circuit 632 receives receiver input signal RXin,
`
`performs input matching for low noise amplifier 640a, and provides input
`
`RF signal RFin to low noise amplifier 640a. Id. at 7:49–52. Input RF
`
`signal RFin may include transmissions on one set of carriers or
`
`transmissions on two sets of carriers in the same band, each set including
`
`one or more carriers. Id. at 7:55–57, 8:16–18, 8:30–32. An RF signal with
`
`transmissions on multiple sets of carriers is called a carrier aggregated RF
`
`signal. Id. at 8:16–18.
`
`Low noise amplifier 640a operates in either a non-carrier aggregation
`
`(non-CA) mode or a carrier aggregation (CA) mode, depending on the type
`
`of input RF signal it receives. Id. at 8:24–32, 8:36–44. In the non-CA
`
`mode, low noise amplifier 640a receives transmissions on one set of carriers
`
`and provides one output RF signal to one load circuit. Id. at 8:30–32. Only
`
`one amplifier stage is enabled, while the other amplifier stage is disabled.
`
`Id. at 8:46–47. To illustrate, Figure 6C is reproduced below.
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`Patent 9,154,356 B2
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`Figure 6C shows low noise amplifier 640a operating in the non-CA mode.
`
`Id. at 8:45–46. Amplifier stage 650a is enabled by connecting the gate of
`
`cascode transistor 656a to the Vcasc voltage via switch 658a, and amplifier
`
`stage 650b is disabled by shorting the gate of cascode transistor 656b to
`
`circuit ground via switch 658b. Id. at 8:47–52. Amplifier stage 650a
`
`amplifies the input RF signal and provides an output RF signal to load
`
`circuit 690a. Id. at 8:52–54.
`
`In the CA mode, low noise amplifier 640a receives transmissions on
`
`two sets of carriers and provides two output RF signals to two load circuits,
`
`one output RF signal for each set of carriers. Id. at 8:32–35. Both amplifier
`
`stages are enabled. Id. at 8:37–38. To illustrate, Figure 6B is reproduced
`
`below.
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`Figure 6B shows low noise amplifier 640a operating in the CA mode. Id. at
`
`8:36–37. Amplifier stages 650a and 650b are enabled by connecting the
`
`gate of cascode transistor 656a to the Vcasc voltage via switch 658a and
`
`coupling the gate of cascode transistor 656b to the Vcasc voltage via
`
`switch 658b. Id. at 8:37–40. The carrier aggregated RF signal splits at the
`
`input of low noise amplifier 640a, and then amplifier stages 650a and 650b
`
`amplify the carrier aggregated RF signal and provide two output RF signals
`
`to two separate downconverters in load circuits 690a and 690b. Id. at 8:21–
`
`28. Specifically, amplifier stage 650a amplifies the input RF signal and
`
`provides the first output RF signal to load circuit 690a. Id. at 8:41–42.
`
`Similarly, amplifier stage 650b amplifies the input RF signal and provides
`
`the second output RF signal to load circuit 690b. Id. at 8:42–44.
`
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`C. Illustrative Claim
`
`Petitioner challenges claims 1, 7, 8, 11, 17, and 18 of the ’356 patent.
`
`Claims 1 and 17 are independent. Claim 1 is illustrative of the challenged
`
`claims:
`
`1. A boost circuit having an input terminal and an output
`terminal, comprising:
`
`a first switch coupled between the input terminal and the
`output terminal and operated by a first phase signal;
`
`a second switch coupled between the input terminal and the
`output terminal and operated by a second phase signal that
`is opposite to the first phase signal;
`
`a first capacitor having a first terminal coupled to the output
`terminal and a second terminal coupled for receiving a
`boost signal; and
`
`a second capacitor having a first terminal coupled to the
`output terminal and a second terminal coupled for
`receiving the boost signal.
`
`
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 1, 7, 8, 11, 17, and 18 of the ’356 patent
`
`on grounds of anticipation under 35 U.S.C. § 102 and obviousness under 35
`
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`U.S.C. § 103.2 Pet. 39–75. We instituted inter partes review of all the
`
`asserted grounds. Inst. Dec. 32. The instituted grounds are as follows.
`
`Claims Challenged
`
`35 U.S.C. §
`
`1, 7, 8, 11, 17, 18
`7, 8
`1, 7, 8, 11, 17, 18
`
`102
`103
`103
`
`Reference(s)/Basis
`Lee3
`Lee
`Lee, the Feasibility Study4
`
`In support of its arguments, Petitioner relies on a declaration (Ex. 1302) as
`
`well as a reply declaration (Ex. 1339) of Patrick Fay, Ph.D. Patent Owner
`
`submits with its Response a declaration of Daniel Foty, Ph.D. (Ex. 2024).
`
`The transcripts of the depositions of Dr. Fay are entered in the record as
`
`Exhibits 2014 and 2029, and the transcript of the deposition of Dr. Foty is
`
`entered in the record as Exhibit 1340.
`
`
`
`III. ANALYSIS
`
`A. Claim Construction
`
`The claim construction standard applicable to this inter partes review
`
`proceeding is the broadest reasonable interpretation (“BRI”) in light of the
`
`patent specification and prosecution history. Personalized Media
`
`Comm’cns, LLC v. Apple Inc., 952 F.3d 1336, 1340 (Fed. Cir. 2020); 37
`
`C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct.
`
`2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. §§ 102
`and 103. See Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). As the
`application that issued as the ’356 patent was filed before the effective date
`of the relevant amendments, the pre-AIA version of §§ 102 and 103 apply.
`3 U.S. Publ’n No. 2012/0056681 A1 (published Mar. 8, 2012) (Ex. 1335).
`4 3d Generation P’Ship Project, Technical Specification Group Radio Access
`Network; Feasibility Study for Further Advancements for E-UTRA (LTE-
`Advanced) (Release 9) (3GPP TR 36.912 V9.1.0) (Dec. 2009) (Ex. 1304).
`
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`interpretation standard).5 Under this standard, claim terms generally are
`
`given their ordinary and customary meaning, as would be understood by one
`
`of ordinary skill in the art in the context of the entire disclosure. See In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Petitioner proposes a construction of the claim term “carrier
`
`aggregation.” Pet. 28–32. Patent Owner disputes Petitioner’s proposed
`
`construction. PO Resp. 10–30. In light of the parties’ arguments, we
`
`address this claim term.
`
`
`
`“carrier aggregation”
`
`The term “carrier aggregation” appears in both independent claims 1
`
`and 17. Petitioner argues that this term “should be construed as
`
`‘simultaneous operation on multiple carriers.’” Pet. 28. As support,
`
`Petitioner points us to three passages in the specification of the ’356 patent.
`
`Id. The first passage states that “[a] wireless device may support carrier
`
`aggregation, which is simultaneous operation on multiple carriers.”
`
`Ex. 1301, 1:32–33 (cited by Pet. 28). The second passage specifies that
`
`“[w]ireless device 110 may support carrier aggregation, which is operation
`
`on multiple carriers.” Id. at 2:53–54 (cited by Pet. 28). Finally, the third
`
`passage notes that “[c]arrier aggregation may also be referred to as multi-
`
`
`5 The revised claim construction standard for interpreting claims in inter
`partes review proceedings as set forth in the final rule published October 11,
`2018, does not apply to this proceeding because the new “rule is effective on
`November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on
`or after the effective date.” Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R.
`§ 42.100(b) (2019)). The Petition here was filed on November 9, 2018.
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`carrier operation.” Id. at 2:54–55 (cited by Pet. 28). Petitioner further
`
`asserts that the Administrative Law Judge (“ALJ”) in the related ITC
`
`investigation “construed ‘carrier aggregation’ as Petitioner proposes here.”
`
`Pet. 31 (citing Ex. 1336, 17 (ITC Claim Construction Order)). Relying on
`
`the declaration testimony of Dr. Fay, Petitioner adds that its proposed
`
`construction “is consistent with the understanding of the term by a person
`
`having ordinary skill in the art.” Id. at 29 (citing Ex. 1302 ¶¶ 59–60).
`
`In response, Patent Owner contends that “at the time of the invention
`
`of the ’356 Patent, a person of ordinary skill in the art would have
`
`understood that ‘carrier aggregation’ was a term of art that meant
`
`‘simultaneous operation on multiple carriers that are combined as a single
`
`virtual channel to provide higher bandwidth.’” PO Resp. 11. Patent Owner
`
`makes several arguments in support of this proposed construction.
`
`For instance, Patent Owner argues that “[w]hile it is true that
`
`‘simultaneous operation on multiple carriers’ is an attribute of carrier
`
`aggregation, a person of ordinary skill would have further understood the
`
`term to mean that the multiple carriers are combined (aggregated) as a single
`
`virtual channel.” Id. at 11–12 (internal citation omitted). As support, Patent
`
`Owner relies on intrinsic evidence, including the ’356 patent and its
`
`prosecution history file, as well as extrinsic evidence.
`
`Specifically, Patent Owner points to where the ’356 patent
`
`specification cites a technical report (referred to as “LTE Release 11” or
`
`“3GPP TS 36.101”) while discussing carrier aggregation. Id. at 13 (citing
`
`Ex. 1301, 2:63–67); Ex. 2026 (LTE Release 11). The technical report
`
`defines carrier aggregation as “[a]ggregation of two or more component
`
`carriers in order to support wider transmission bandwidths.” Ex. 2026, 14;
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`10
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`see also Ex. 1301, 37–38 (“A carrier may also be referred to as a component
`
`carrier (CC), a frequency channel, a cell, etc.”) (emphasis added) (cited by
`
`PO Resp. 12). Patent Owner asserts that “while earlier LTE [(Long-Term
`
`Evolution)] systems were limited to 20 MHz channels, LTE Release 11
`
`(which provided support for LTE-Advanced functionality) could be
`
`configured to aggregate up to five of these 20 MHz channels as component
`
`carriers of a single virtual channel having a bandwidth capacity of up to
`
`100 MHz.” PO Resp. 13 (citing Ex. 1301, 2:63–67). To illustrate, Patent
`
`Owner further asserts:
`
`In earlier LTE systems, a user device connects to the wireless
`network over a single 20 MHz carrier frequency. As the
`maximum-available data rate of the single-carrier wireless
`connection is the rate-limiting step for the end user, requests for
`a large amount of data (e.g., a video) can only be received at the
`data rate of that single carrier. To relieve this rate-limiting step,
`LTE-Advanced added the ability for network equipment to
`practice carrier aggregation. When an end user requests a large
`amount of data, the network will activate carrier aggregation to
`deliver that data more quickly. This is done by multiplexing the
`incoming data stream . . . so that the incoming data stream is
`separated into multiple streams that are transmitted over multiple
`component carriers at the same time. The user device receives
`and de-multiplexes (aggregates) the multiple streams to recreate
`the original incoming data stream. The result is that the incoming
`data stream is received more quickly because it was transmitted
`in a higher bandwidth virtual channel.
`
`Id. at 13–14 (internal citations omitted). Patent Owner relies on the
`
`declaration testimony of Dr. Foty. Id. at 12–14 (citing Ex. 2024 ¶¶ 84–87).
`
`Patent Owner also points to the prosecution history of the ’356 patent.
`
`During prosecution, the Examiner relied on two U.S. patents, namely,
`
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`Hirose6 and Kaukovuori,7 as anticipatory references. Ex. 1314, 2–4 (Office
`
`Action relying on Hirose); Ex. 1316, 2–4 (Office Action relying on
`
`Kaukovuori). In addition, the applicant filed an Information Disclosure
`
`Statement listing various references, including an international patent
`
`application8 and a British patent application.9 Ex. 2015, 10, 12 (Information
`
`Disclosure Statement); Ex. 2016 (international application); Ex. 2017
`
`(British application). With respect to Hirose, Patent Owner highlights the
`
`applicant’s argument that the “claimed invention recites ‘carrier
`
`aggregation’ which results in an increased aggregated data rate,” whereas
`
`“Hirose transmits the same signals over different paths which results in
`
`redundant data at a common data rate.” PO Resp. 15; Ex. 1315, 7 (cited by
`
`PO Resp. 15). Regarding Kaukovuori, Patent Owner highlights the teaching
`
`that “LTE Advanced proposes the aggregation of multiple carrier signals in
`
`order to provide a higher aggregate bandwidth than would be available if
`
`transmitting via a single carrier signal,” where “Carrier Aggregation (CA)
`
`requires each utilized carrier signal to be demodulated at the receiver,
`
`whereafter the message data from each of the signals can be combined in
`
`order to reconstruct the original data.” PO Resp. 15–16; Ex. 1325, 1:30–33
`
`(cited by PO Resp. 15–16). As for the references cited in the Information
`
`Disclosure Statement, Patent Owner points to where the international
`
`application states that “LTE-A is a technology for aggregating a plurality of
`
`
`6 U.S. Patent No. 7,317,894 B2 (issued Jan. 8, 2008) (Ex. 1324).
`7 U.S. Patent No. 8,442,473 B1 (issued May 14, 2013) (Ex. 1325).
`8 Int’l Publication No. WO 2012/008705 A2 (published Jan. 19, 2012)
`(Ex. 2016, “the international application”).
`9 UK Patent Application GB 2472978 A (published Mar. 2, 2011) (Ex. 2017,
`“the British application”).
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`unit carriers . . . to be used simultaneously,” as well as to where the British
`
`application describes a “carrier aggregation mode” in which “data has . . .
`
`been multiplexed across multiple carrier frequencies” and carrier
`
`aggregation refers to “bond[ing] together two parallel carriers.” PO
`
`Resp. 16–17; Ex. 2016 ¶ 7 (cited by PO Resp. 16–17); Ex. 2017, code (57),
`
`1:8–11 (cited by PO Resp. 17). According to Patent Owner, all these
`
`portions of “[t]he file history further confirm[] that a skilled artisan
`
`understood that carrier aggregation resulted in a single virtual channel to
`
`provide an increased bandwidth.” PO Resp. 15. Patent Owner relies on the
`
`declaration testimony of Dr. Foty. Id. at 16–17 (citing Ex. 2024 ¶¶ 89–90,
`
`92).
`
`Patent Owner additionally points to various extrinsic evidence in
`
`support of its proposed construction, relying again on the declaration
`
`testimony of Dr. Foty. Id. at 17–22 (citing Ex. 1304, 10; Ex. 2013, 3:19–53;
`
`Ex. 2018, 3:27–62; Ex. 2019, 6; Ex. 2020 ¶ 3; Ex. 2021, 26–27; Ex. 2022;
`
`Ex. 2024 ¶¶ 95–100). For example, Patent Owner directs us to a U.S. patent,
`
`which states that “[o]ne technique for providing additional bandwidth
`
`capacity to wireless devices is through the use [of] carrier aggregation of
`
`multiple smaller bandwidths to form a virtual wideband channel at a wireless
`
`device.” Ex. 2013, 3:19–22 (cited by PO Resp. 18); see also Ex. 2018,
`
`3:27–62 (stating the same) (cited by PO Resp. 18).
`
`Turning to Petitioner’s proposed construction of “carrier aggregation,”
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`Patent Owner argues that Petitioner’s reading of the term is “unreasonably
`
`broad.” PO Resp. 23. To illustrate, Patent Owner asserts that “two 20 MHz
`
`carriers operating independently do not provide a single virtual channel with
`
`an increased aggregated bandwidth,” as “[t]he maximum capacity of any
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`one channel remains 20 MHz.” Id. Patent Owner additionally asserts, “But
`
`by aggregating two 20 MHz carriers as a single virtual channel, the user
`
`device may operate using an aggregated 40 MHz channel that has a
`
`combined bandwidth equal to the sum of the bandwidths of the component
`
`carriers.” Id. at 23–24.
`
`Patent Owner also argues that Petitioner’s proposed construction
`
`“violates the doctrine of prosecution disclaimer” because “Hirose discloses
`
`‘simultaneous operation on multiple carriers.’” PO Resp. 23–24, 27. Patent
`
`Owner points to the Examiner’s reliance on Hirose for teaching the
`
`originally recited “input RF signal comprising transmissions sent on
`
`multiple carriers at different frequencies to a wireless device,” where
`
`Hirose’s “input RF signal compris[es] [a] satellite wave signal and [a]
`
`ground wave signal.” PO Resp. 24; Ex. 1314, 3. In response, the applicant
`
`amended the claim language to further limit the recited input RF signal to a
`
`signal “employing carrier aggregation.” Ex. 1315, 2 (cited by PO Resp. 25).
`
`The applicant acknowledged that Hirose teaches receiving the satellite and
`
`ground wave signals at the same time, but argued that “such receipt of
`
`diversity signals does not disclose ‘carrier aggregation’” because the
`
`“waves contain[] the same contents.” Id. at 8 (cited by PO Resp. 26).
`
`According to Patent Owner, “[i]f the term ‘carrier aggregation’ simply
`
`meant ‘simultaneous operation on multiple carriers,’ the amendment would
`
`have been ineffective in overcoming Hirose.” PO Resp. 26–27; see also PO
`
`Sur-reply 13 (“Petitioner now proposes construing the term so broadly that
`
`the claims once again read on Hirose, which discloses ‘simultaneous
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`operation on multiple carriers.’”).
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`Lastly, Patent Owner argues that “Petitioner’s proposed construction
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`is also incorrect because it reads out the word ‘aggregation.’” PO Resp. 28.
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`Patent Owner asserts that “[a]ggregate means ‘to collect together,
`
`assemble.’” Id. at 29 (citing Ex. 2025, 4 (The Oxford English Dictionary)).
`
`According to Patent Owner, “it is the component carriers that are aggregated
`
`into a single virtual channel to provide higher bandwidth.” Id. Patent
`
`Owner adds that “[s]ubstituting Petitioner’s proposed construction would
`
`result in a claim that recited ‘the input RF signal employing simultaneous
`
`operation on multiple carriers comprising transmissions sent on multiple
`
`carriers,’” thereby “add[ing] little, if any, additional meaning beyond the
`
`surrounding claim language.” Id.
`
`In its Reply, Petitioner reiterates that the ALJ in the related ITC
`
`investigation construed “carrier aggregation” to mean “simultaneous
`
`operation on multiple carriers,” and argues that “the BRI construction[,
`
`which is the standard applied in this proceeding,] must be at least as broad as
`
`a proper Phillips construction,” which is the standard applied in an ITC
`
`investigation. Pet. Reply 3–4; Ex. 1336, 12–14 (Claim Construction Order
`
`from related ITC investigation).
`
`Petitioner further argues that the specification of the ’356 patent does
`
`not support Patent Owner’s proposed construction. In particular, Petitioner
`
`contends that the portion of Patent Owner’s proposed construction requiring
`
`the multiple carriers to be “combined as a single virtual channel to provide
`
`higher bandwidth . . . lack[s] any written description support.” Pet. Reply 5.
`
`Petitioner asserts that “the LTE carrier aggregation expressly described at
`
`column 2, lines 63–67 [of the ’356 patent] is merely one example of carrier
`
`aggregation in the patent,” and that “the applicant signaled that the invention
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`would cover devices other than those that implement LTE.” Id. at 5–6
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`(citing Ex. 1301, 1:37–38, 2:40–53).
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`Petitioner also argues that the prosecution history of the ’356 patent
`
`does not support Patent Owner’s proposed construction. Petitioner contends
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`that the phrases “combined as a single virtual channel” and “provide higher
`
`bandwidth” do not appear in the prior art references cited during
`
`prosecution, and that “Patent Owner’s arguments about them do not limit the
`
`BRI of the term ‘carrier aggregation’ given the clear definition of that term
`
`in the ’356 written description.” Id. at 7–8. With respect to Kaukovuori in
`
`particular, Petitioner further contends that the Examiner did not rely on the
`
`same passage that Patent Owner relies on now to support its proposed
`
`construction. Id. at 8. Petitioner adds, “Patent Owner’s argument that the
`
`Examiner found that Kaukovuori discloses one specific type of carrier
`
`aggregation signifies only that the Examiner thought that Kaukovuori’s
`
`disclosure fell within the ’356 patent’s definition of carrier aggregation, not
`
`that the Examiner was limiting the Examiner’s interpretation of carrier
`
`aggregation based on the Kaukovuori reference.” Id.
`
`In addition, Petitioner argues that the extrinsic evidence does not
`
`support Patent Owner’s proposed construction. According to Petitioner, “in
`
`a case such as this, where the intrinsic evidence so clearly supports the
`
`definition that Patent Owner included in its specification, a [person of
`
`ordinary skill in the art] would assign extrinsic evidence little or no
`
`relevance.” Id. at 13. Petitioner further notes that “many of the extrinsic
`
`references included with Patent Owner’s Response were dated or filed well
`
`after the filing date of the ’356 patent, and are not prior art.” Id. (citing
`
`Ex. 2018; Ex. 2019; Ex. 2022).
`
`16
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`IPR2019-00128
`Patent 9,154,356 B2
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`
`With respect to Patent Owner’s prosecution disclaimer argument,
`
`Petitioner responds that the applicant’s argument during prosecution that
`
`“‘carrier aggregation’ requires an ‘increased aggregated data rate’” does
`
`“not amount to the clear and unmistakable disclaimer that Patent Owner
`
`contends.” Id. at 11–12 (citing PO Resp. 15). According to Petitioner, “[i]f
`
`Hirose’s simultaneous signals contained non-redundant (e.g., different) data,
`
`[the applicant] could not have made the argument that it did, and therefore
`
`the most natural reading of the prosecution history is that the applicant was
`
`distinguishing Hirose on the basis of its redundant transmissions.” Id. at 12.
`
`That is, any “disclaimer was of systems that receive transmissions of
`
`redundant data over multiple channels.” Id. at 12 n.2.
`
`Lastly, Petitioner argues that its proposed construction does not read
`
`out “aggregation.” Id. at 14. As support, Petitioner contends that “[w]hen
`
`there is ‘simultaneous operation on multiple carriers,’ those carriers will be
`
`aggregated in the input RF signal.” Id.; see id. (“[W]hen read in view of the
`
`complete claim language, ‘carrier aggregation’ in the context of the
`
`challenged claims accounts for aggregation . . . because the multiple carriers
`
`would be present simultaneously in the input RF signal.”). Petitioner relies
`
`on the declaration testimony of Dr. Fay. Id. at 14–15 (citing Ex. 1339
`
`¶¶ 27–29).
`
`Patent Owner counters that “Petitioner does not propose construing
`
`the term ‘carrier aggregation’ according to its plain and ordinary meaning”
`
`but proposes instead that “the patentee acted as a lexicographer to assign the
`
`term a special definition different than its plain and ordinary meaning.” PO
`
`Sur-reply 2. According to Patent Owner, however, “Petitioner fails to
`
`establish that the patentee expressed the necessary intent to redefine the term
`
`17
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`IPR2019-00128
`Patent 9,154,356 B2
`
`to have a special meaning that differed from its plain and ordinary meaning.”
`
`Id. at 6. As support, Patent Owner contends that “[i]n the ’356 Patent, the
`
`patentee adopted a . . . distinctive format to clearly set forth a definition for a
`
`different term,” namely, the format used for the term “exemplary.” Id. at 4.
`
`Patent Owner directs us to where the ’356 patent states that “[t]he term
`
`‘exemplary’ is used herein to mean ‘serving as an example, instance, or
`
`illustration.’” Ex. 1301, 2:9–11 (cited by PO Sur-reply 4). Patent Owner
`
`further asserts that “[n]one of the statements Petitioner relies on for the term
`
`‘carrier aggregation’ resemble this format,” as “[t]he patentee did not use the
`
`phrase ‘is used herein to mean’ for the term” or “quotation marks for the
`
`term or its purported definition.” PO Sur-reply 4. Patent Owner also
`
`contends that “the three statements Petitioner relies on to support its
`
`argument lack the clear expression of intent because they do not characterize
`
`the term carrier aggregation consistently: (1) ‘which is simultaneous
`
`operation on multiple carriers,’ Ex. 1301, 1:32–33; (2) ‘which is operation
`
`on multiple carriers,’ id., 2:53–54; and, (3) ‘may also be referred to as multi-
`
`carrier operation,’ id., 2:54–55.” PO Sur-reply 5.
`
`On the record before us, we determine that Petitioner’s proposed
`
`construction of “carrier aggregation” (i.e., “simultaneous operation on
`
`multiple carriers”) is overly broad. As Petitioner indicates, the ’356 patent
`
`specification states that “[a] wireless device may support carrier
`
`aggregation, which is simultaneous operation on multiple carriers.”
`
`Ex. 1301, 1:32–33 (emphasis added); Pet. 28 (quoting Ex. 1301, 1:32–33).
`
`We note that prosecution history, however, “facilitates claim construction by
`
`revealing the intended meaning and scope of technical terms and may even
`
`trump the weight of specification language in some circumstances.” TDM
`
`18
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`IPR2019-00128
`Patent 9,154,356 B2
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`Am., LLC v. U.S., 85 Fed. Cl. 774, 788 (2009) (citing Vivid Techs., Inc. v.
`
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 804 (Fed. Cir. 1999)). For example,
`
`“an applicant’s amendment accompanied by explanatory remarks can define
`
`a claim term by demonstrating what the applicant meant by the amendment.”
`
`Personalized Media, 952 F.3d at 1340. Thus, “like the specification, the
`
`prosecution history can act like a dictionary.” Hemphill v. McNeil-PPC,
`
`Inc., 25 F. App’x 915, 918 (Fed. Cir. 2001) (non-precedential).
`
`Here, the claims of the ’356 patent, as originally filed, recited an
`
`“input RF signal comprising transmissions sent on multiple carriers at
`
`different frequencies to a wireless device.” Ex. 1311, 30 (Application).
`
`During prosecution, the Examiner rejected the claims, relying on Hirose for
`
`teaching this limitation. Ex. 1314, 3 (Office Action). Hirose discloses a
`
`“satellite radio broadcast receiver [that] receives three radio waves in total,
`
`two satellite waves and one ground wave, at the same time at its wide band
`
`RF amplifier,” where the “three waves contain[] the same contents.”
`
`Ex. 1324, 1:31–34, 5:1–4; see also Ex. 1314, 3 (finding that “Hirose
`
`discloses . . . the input RF signal comprising satellite wave signal and
`
`ground wave signal”); Ex. 1315, 8 (Response to Office Action). To
`
`overcome the Examiner’s rejection, the applicant amended its claims to
`
`further limit the recited input RF signal to a signal “employing carrier
`
`aggregation” and argued that Hirose’s “receipt of diversity signals does not
`
`disclose ‘carrier aggregation.’” Ex. 1315, 2, 8; see also id. at 8
`
`(“Specifically, a disclosure in Hirose of receipt of the ‘same data’ over ‘three
`
`[different] waves’ does not anticipate Applicant’s invention of ‘the [] input
`
`RF signal employing carrier aggregation’ as claimed.”) (alterations in
`
`original). Construing “carrier aggregation” to mean “simultaneous operation
`
`19
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`IPR2019-00128
`Patent 9,154,356 B2
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`on multiple carriers,” as Petitioner proposes, would encompass Hirose’s
`
`“receipt of diversity signals.” As such, Petitioner’s proposed construction of
`
`“carrier aggregation,” though consistent with the specification language, is
`
`broader than the applicant’s intended meaning and scope of the term.
`
`We note Petitioner’s contention that “the most natural reading of the
`
`prosecution history is that the applicant was distinguishing Hirose on the
`
`basis of its redundant transmissions.” Pet. Reply 12. To the extent that
`
`Petitioner acquiesces to limiting its proposed construction of “carrier
`
`aggregation” to transmissions of non-redundant data, we still consider
`
`Petitioner’s proposed construction to be overly broad. See Tr. 19:12–14
`
`(Petitioner’s counsel stating, “I think that in our proposed construction,
`
`simultaneous operation on multiple carriers means that you are not just
`
`really receiving one carrier’s worth of information. It’s nonredundant
`
`information.”); id. at 27:23–25 (Petitioner’s counsel stating, “[B]y including
`
`the language ‘carrier aggregation,’ the claims in the [’]356 Patent would not
`
`cover redundant data.”). As discussed above, Petitioner relies on the
`
`’356 patent specification to support its proposed construction. Pet. 28–30.
`
`Dr. Fay similarly relies on the ’356 patent specification to support
`
`Petitioner’s proposed construction. Ex. 1302 ¶ 59 (cited by Pet. 29).
`
`Dr. Fay further states, without citing supporting evidence, “[t]his
`
`construction i
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