Trials@uspto.gov
`571.272.7822
`
`Paper No. 9
`Entered: May 29, 2019
`
`
`
`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 B2
`____________
`
`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`AARON W. MOORE, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`571.272.7822
`
`Paper No. 9
`Entered: May 29, 2019
`
`
`
`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 B2
`____________
`
`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`AARON W. MOORE, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2019-00128
`Patent 9,154,356 B2
`
`
`I. INTRODUCTION
`Intel Corporation1 (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
`requesting 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.”).
`We have jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Under
`35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” For the reasons that
`follow, we institute an inter partes review as to all the challenged claims of
`the ’356 patent and all the grounds presented.
`
`
`II. BACKGROUND
`A. Related Proceedings
`The parties identify a district court case in the Southern District of
`California 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.
`The parties also identify an International Trade Commission (“ITC”)
`investigation in which Patent Owner has asserted the ’356 patent against
`Apple. Pet. 1; Paper 4, 1. According to Petitioner, the parties have moved to
`terminate the investigation. Paper 8, 1.
`
`
`1 Intel Corporation identifies itself and Apple Inc. (“Apple”) as real parties
`in interest. Paper 3, 1.
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`In addition, the parties identify four other petitions for inter partes
`review involving the ’356 patent that Petitioner has filed. Pet. 1; Paper 4, 1.
`
`
`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,
`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.
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`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, with 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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`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.
`
`
`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
`
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`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.
`
`
`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 claims under
`challenge:
`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 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.
`
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`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 7, 8, 11, 17, and 18 of the ’356 patent
`on the following grounds. Pet. 39–75.
`Claims Challenged
`Reference(s)
`Basis
`1, 7, 8, 11, 17, and 18
`Lee2
`§ 102
`7 and 8
`Lee
`§ 103
`1, 7, 8, 11, 17, and 18
`Lee and the Feasibility Study3
`§ 103
`In support of its arguments, Petitioner relies on a Declaration of Patrick Fay,
`Ph.D. (Exhibit 1302). See id.
`
`
`III. DISCUSSION
`A. Discretion Under § 314(a): Multiple Petitions
`Patent Owner requests that we exercise our discretion under 35 U.S.C.
`§ 314(a) to deny institution of an inter partes review in light of Petitioner’s
`multiple filings. Prelim. Resp. 15–19; see Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is
`a matter committed to the Patent Office’s discretion.”); Harmonic Inc. v.
`Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`permitted, but never compelled, to institute an IPR proceeding.”). For the
`reasons explained below, we do not exercise our discretion to deny
`institution.
`Patent Owner contends that “Petitioner challenges overlapping claims
`with redundant references and arguments across three petitions.” Prelim.
`
`
`2 U.S. Publ’n No. 2012/0056681 A1 (published Mar. 8, 2012) (Ex. 1335).
`3 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,
`“the Feasibility Study”).
`
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`Resp. 15–16. As support, Patent Owner asserts that Petitioner relies
`primarily on Lee in the instant Petition, on Uehara4 in a second petition, and
`on a combination of Jeon5 and Xiong6 in a third petition. Id. at 16–17.
`Patent Owner further asserts that, “in separate petitions, Petitioner alleges
`that Lee and Uehara each anticipate claims 1, 11, 17, and 18” but “has
`provided no indication that Lee is somehow more relevant or provides
`different disclosure than the primary references in the other petitions.” Id. at
`17–18. According to Patent Owner, “[t]he fact that both references are
`relied upon to anticipate the claims evidences that the anticipatory grounds
`present substantially the same argument applied in the same way – that Lee
`and Uehara each allegedly teach all of the limitations of claims 1, 11, 17,
`and 18.” Id. (citing Conopco, Inc. v. Proctor & Gamble Co., Case IPR2014-
`00628, slip op. at 9 (PTAB Oct. 2014) (Paper 21)). In addition, Patent
`Owner asserts that “the petitions all rely on the Feasibility Study as a back-
`up to the primary references,” and that the combinations of Lee and those
`references “are cumulative to one another.” Id. at 18. As to the remaining
`grounds across the petitions, Patent Owner characterizes them as
`“involv[ing] insignificant secondary references that are relied on for the
`same duplicative arguments already made.” Id. (citing TomTom, Inc. v.
`Blackbird Tech, LLC, Case IPR2017-02025, slip op. at 7 (PTAB Mar. 12,
`2018) (Paper 7)).
`
`
`4 U.S. Publ’n No. 2011/0217945 A1 (published Sept. 8, 2011).
`5 Sanggeun Jeon et al., A Scalable 6-to-18 GHz Concurrent Dual-Band
`Quad-Beam Phased-Array Receiver in CMOS, 43 IEEE J. SOLID-STATE
`CIRCUITS 2660 (Dec. 2008).
`6 U.S. Publ’n No. 2010/0237947 A1 (published Sept. 23, 2010).
`
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`We disagree with Patent Owner. In Conopco, a prior Board decision
`that Patent Owner cites, the panel “recognize[d] that the prior art disclosures
`relied upon in the two petitions are not identical,” but it nevertheless was
`persuaded that “both petitions appl[ied] the prior art references to support
`substantially the same arguments” based on “the information presented.”
`Conopco, slip op. at 8–9. In the instant case, however, the limited evidence
`available on this record does not show that the prior art disclosures support
`substantially the same arguments. Patent Owner asserts that Lee and Uehara
`“are relied upon to anticipate the claims” and that various secondary
`references are “insignificant” and relied on for “duplicative arguments.”
`Prelim. Resp. 17–18. Patent Owner additionally asserts that combinations
`based on the Feasibility Study are “cumulative to one another.” Id. at 18.
`Notwithstanding, Patent Owner acknowledges that Petitioner relies on
`Lee as an anticipatory reference for claims 1, 7, 8, 11, 17, and 18 of the
`’356 patent in the instant Petition, while relying on Uehara as an anticipatory
`reference for claims 1, 11, 17, and 18 in a second petition. See id. at 16.
`The second petition challenges claims 7 and 8 based on a combination of
`Uehara and a secondary reference. See id. That Petitioner does not apply
`Lee and Uehara as anticipatory references to the same set of claims implies
`that the disclosures in those references are different and do not necessarily
`support substantially the same arguments. The situation here is not like the
`one in TomTom, another prior Board decision that Patent Owner cites, where
`the petitioner relied on different prior art disclosures across two petitions for
`the same set of claims. See TomTom, slip op. at 14–15.
`Patent Owner also acknowledges that Petitioner relies on a
`combination of Jeon and Xiong for claims 1, 17, and 18 in a third petition.
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`See id. The third petition does not challenge claims 7, 8, and 11 at all. Id. at
`16–17. As with Lee and Uehara, Petitioner applies Lee and the combination
`of Jeon and Xiong to different sets of claims. In addition, neither Jeon nor
`Xiong is applied as an anticipatory reference. These facts imply that the
`disclosures in Jeon, Xiong, and Lee are different and do not necessarily
`support substantially the same arguments.
`Accordingly, on this record, we find no persuasive reason to deny
`institution based on Petitioner’s multiple filings.
`
`
`B. Discretion Under § 314(a): Parallel Proceedings
`Patent Owner further requests that we deny institution under
`35 U.S.C. § 314(a) in light of the related ITC investigation and district court
`case. Prelim. Resp. 19–22. Because the related district court case has been
`dismissed (see Paper 8, 1), we address only Patent Owner’s arguments with
`respect to the related ITC investigation. For the reasons explained below,
`we do not exercise our discretion to deny institution.
`Patent Owner represents that Petitioner “relies on the same primary
`reference on which it relies in the ITC investigation,” namely, Lee. Prelim.
`Resp. 20. Patent Owner further represents that, “before even filing the
`Petition, Petitioner already received the benefit of full expert briefing, and a
`full ITC hearing, on the underlying issues raised in this Petition,” and that,
`“[b]y filing so late, Petitioner and Apple seek to re-litigate an issue that has
`already been fully litigated in a different forum and will be decided in the
`ITC . . . well before the Board can reach a final written decision.” Id. at 21.
`Additionally, Patent Owner represents that “the ITC investigation will have
`had the opportunity to be appealed, fully briefed, and the argument heard all
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`by the time the Board’s final written decision is due.” Id. at 21–22.
`According to Patent Owner, “[w]hen another forum will decide the same
`issues earlier than the Board, this fact weighs in favor of denying
`institution.” Id. at 22 (citing NHK Spring Co. v. Intri-Plex Tech., Inc., Case
`IPR2018-00752 (PTAB Sept. 12, 2018) (Paper 8)).
`Conversely, Petitioner contends that we should decline to exercise our
`discretion to deny institution because the ITC investigation “does not
`involve the same remedy, so even a finding of no violation in the ITC
`[investigation] would not provide the same relief that Petitioner seeks in this
`proceeding.” Pet. 5.
`In light of the particular circumstances surrounding this proceeding,
`we find that the ITC investigation does not weigh in favor of exercising our
`discretion to deny institution. Petitioner has indicated that the administrative
`law judge in the ITC investigation has issued an initial determination,
`finding, among other things, that Lee anticipates claims 1 and 17 of the ’356
`patent. Paper 8, 1. That finding is consistent with our finding in this
`Decision that Petitioner has met its burden of demonstrating a reasonable
`likelihood of success on the merits based on the grounds that Lee anticipates
`or renders obvious claims 1, 7, 8, 11, 17, and 18. See infra Sections III.E–
`III.F; see also Office Patent Trial Practice Guide, August 2018 Update, 83
`Fed. Reg. 39,989 (August 13, 2018), available at https://go.usa.gov/xU7GP,
`at 10 (stating that “the merits” should be considered as part of a balanced
`assessment in whether to deny institution under § 314(a)). Further, as
`discussed above, Petitioner also has indicated that the parties have moved to
`terminate the ITC investigation. Paper 8, 1. It is therefore possible that the
`ITC investigation will be terminated, leaving no ITC challenge to the ’356
`
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`patent, as the petitioner in this proceeding, Intel, is not a party to the ITC
`investigation. See Pet. 1 (identifying Apple as the respondent in the ITC
`investigation). Taking into consideration these facts, we conclude that the
`ITC investigation should not preclude inter partes review.
`Moreover, the relief available in each forum is different. For instance,
`[w]hen the ITC determines that a defendant has engaged in unfair
`practices in import trade, it may direct that the articles at issue be
`excluded from entry into the United States, 19 U.S.C. § 1337(d),
`issue a cease and desist order, 19 U.S.C. § 1337(f), and/or issue
`an order providing that the articles in violation be seized and
`forfeited to the United States, 19 U.S.C. § 1337(i).
`Bio-Tech. Gen. Corp. v. Genentech, Inc., 80 F.3d 1553, 1564 (Fed. Cir.
`1996). The ITC is not “empowered under existing law to set aside a patent
`as being invalid or to render it unenforceable.” Id. (internal quotation marks
`omitted). An inter partes review, however, may result in “a certificate
`canceling any claim of the patent finally determined to be unpatentable,
`confirming any claim of the patent determined to be patentable, and
`incorporating in the patent by operation of the certificate any new or
`amended claim determined to be patentable.” 35 U.S.C. § 318(b).
`Additionally, the burdens of proof and claim construction standards
`applied in each forum are different. Invalidity in the ITC (for purposes of
`determining whether a violation has occurred) must be proven by clear and
`convincing evidence. Linear Tech. Corp. v. Int’l Trade Comm’n, 566 F.3d
`1049, 1066 (Fed. Cir. 2009). Here, in an inter partes review proceeding, a
`petitioner must establish unpatentability by a preponderance of the evidence.
`35 U.S.C. § 316(e). In addition, unlike in an ITC proceeding, for petitions
`filed before November 13, 2018 (as was this Petition), the broadest
`reasonable claim construction standard applies.
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`For these reasons, and in the particular circumstances of this
`proceeding, we choose not to exercise our discretion to deny institution
`based on the parallel ITC investigation. The situation here is not like the one
`presented in NHK Spring, which Patent Owner cites, where the panel
`considered a parallel district court proceeding. NHK Spring, slip op. at 19–
`20. First, the relief available through a district court proceeding and an inter
`partes review proceeding may be the same. See S. Rep. No. 110-259, at 20
`(2008) (explaining that post-grant review proceedings are meant to provide
`“a quick, inexpensive, and reliable alternative to district court litigation”).
`Second, the panel in NHK Spring chose to deny institution based on factors
`independent from its consideration of the parallel district court proceeding.
`NHK Spring, slip op. at 18 (“[W]e deny institution under § 325(d).
`Although a weighing of the § 325(d) factors alone is sufficient to support an
`exercise of our discretion to deny institution, we also consider Patent
`Owner’s additional arguments under § 314(a).”), 20 (“[W]e find that the
`advanced state of the district court proceeding is an additional factor that
`weighs in favor of denying the Petition.”).
`
`C. Discretion Under § 325(d): Prior Art Previously Considered
`Patent Owner further requests that we exercise our discretion under
`35 U.S.C. § 325(d) to deny institution because (1) all three grounds
`presented in the Petition rely on a reference considered during prosecution,
`namely, Lee; and (2) the only other asserted reference, the Feasibility Study,
`is cumulative to a disclosure considered during prosecution. Prelim. Resp.
`9–15; see Cuozzo, 136 S. Ct. at 2140; Harmonic, 815 F.3d at 1367. For the
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`reasons explained below, we do not exercise our discretion to deny
`institution.
`Under 35 U.S.C. § 325(d), we have discretion to deny a petition when
`the same or substantially the same prior art or arguments were presented
`previously in another proceeding before the Office. Although a petitioner
`may have sound reasons for raising art or arguments similar to those
`previously considered by the Office, the Board weighs petitioners’ desires to
`be heard against the interests of patent owners who seek to avoid
`harassment. See H.R. Rep. No. 112–98, pt. 1, at 48 (2011) (explaining that
`post-grant review proceedings “are not to be used as tools for harassment or
`a means to prevent market entry through repeated litigation and
`administrative attacks on the validity of a patent,” and that “[d]oing so
`would frustrate the purpose of the section as providing quick and cost
`effective alternatives to litigation”).
`In the instant proceeding, Petitioner relies on Lee for teaching all the
`recited elements of independent claims 1 and 17. Pet. 39–56, 65–67. Under
`an alternative theory, Petitioner additionally relies on the Feasibility Study
`for its teaching of an input radio frequency signal employing carrier
`aggregation. Pet. 72–75.
`Patent Owner contends that the prosecution history for the ’356 patent
`indicates that the Examiner considered Lee. Prelim. Resp. 10–11. As
`support, Patent Owner points out that Lee is listed on the face of the
`’356 patent. Id. at 10; see Ex. 1301, at [56]. Patent Owner also directs us to
`an information disclosure statement that lists Lee as a reference and includes
`the Examiner’s signature. Prelim. Resp. 10 (citing Ex. 2004); see also
`Ex. 2004, 3 (listing of Lee), 5 (Examiner’s signature). The bottom of each
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`page of the signed information disclosure statement reads, “ALL
`REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH.
`/KCT/.” See Ex. 2004. Lee is not lined through. See id. at 3. According to
`Patent Owner, “[t]hat is enough to show that the Office previously
`considered Lee for purposes of Section 325(d).” Prelim. Resp. 10 (citing
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V., Case IPR2018-00626,
`slip op. at 21 (PTAB Sept. 27, 2018) (Paper 7);7 Clim-A-Tech Ind., Inc. v.
`William A. Ebert, IPR2017-01863, slip op. at 18–19 (PTAB Feb. 12, 2018)
`(Paper 13)).
`In addition, Patent Owner directs us to where the signed information
`disclosure statement further lists an international search report and written
`opinion for a related international application, and contends that these listed
`papers “provide[] a detailed description of how Lee allegedly reads on the
`claims.” Id. at 11 (citing Ex. 2004; Ex. 2005); see also Ex. 2004, 5 (listing
`of the search report and written opinion); Ex. 2005, 7 (written opinion
`providing “[r]easoned statement with regard to novelty”); compare
`Ex. 2004, 1 (identifying docket number for ’356 patent application), with
`Ex. 2005, 1 (identifying same docket number for international application).
`The search report designates Lee as an “X” reference, meaning that Lee is
`“of particular relevance” and “the claimed invention cannot be considered
`novel or cannot be considered to involve an inventive step when the
`document is taken alone.” Ex. 2005, 3.
`
`
`7 Patent Owner cites R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V.,
`Case IPR2017-00626, slip op. at 12 (PTAB Sept. 27, 2018) (Paper 7), but
`the language relied on appears at R.J. Reynolds Vapor Co. v. Fontem
`Holdings 1 B.V., Case IPR2018-00626, slip op. at 21 (PTAB Sept. 27, 2018)
`(Paper 7).
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`Based on the record before us, we are not persuaded that it is
`appropriate to exercise our discretion to deny institution. As Patent Owner
`acknowledges, the Examiner did not rely on Lee to reject claims in the
`application for the ’356 patent. Prelim. Resp. 13 (“[T]he Office did not
`issue a rejection over Lee.”). The fact that Lee was not the basis of rejection
`weighs strongly against exercising our discretion to deny institution under
`35 U.S.C. § 325(d). See Becton, Dickinson & Co. v. B. Braun Melsungen
`AG, Case IPR2017-01586, slip op. at 17 (PTAB Dec. 15, 2017) (Paper 8)
`(informative) (considering six nonexclusive factors in evaluating whether to
`exercise discretion under 35 U.S.C. § 325(d), including “the extent to which
`the asserted art was evaluated during examination, including whether the
`prior art was the basis for rejection”); Kayak Software Corp. v. Int’l Bus.
`Machs. Corp., Case CBM2016-00075, slip op. at 11 (PTAB Dec. 15, 2016)
`(Paper 16) (informative) (“There could be situations where, for example, the
`prosecution is not as exhaustive, where there are clear errors in the original
`prosecution, or where the prior art at issue was only cursorily considered
`that can weigh against exercising the discretion.” (emphasis added)).
`Although the international search report and written opinion identify
`Lee as an “X” reference and provide a “[r]easoned statement with regard to
`novelty,” the papers by themselves do not demonstrate the extent to which
`the Examiner considered the reference. Nor do the papers demonstrate that
`the Examiner considered the combination of Lee and the Feasibility Study as
`relied on in the Petition.
`Moreover, we note that the Examiner singled out the claim limitations
`“a first amplifier stage configured to be independently enabled or disabled”
`and “a second amplifier stage configured to be independently enabled or
`
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`Patent 9,154,356 B2
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`disabled” as “reasons for allowance” for the ’356 patent. Ex. 1322, 4–5.
`The “[r]easoned statement with regard to novelty” in the written opinion for
`the related international application does not address these limitations. See
`Ex. 2005, 7.
`Lastly, neither of the prior Board decisions cited by Patent Owner (see
`Prelim. Resp. 10) presents a situation where the panel denied institution
`based solely on the fact that the asserted prior art was listed in an
`information disclosure statement. For instance, the panel in R.J. Reynolds
`additionally denied institution because it was not persuaded that the
`petitioner had shown a reasonable likelihood of prevailing on the sole
`ground presented in the petition. See R.J. Reynolds, slip op. at 18, 21
`(“After due consideration of the record before [us] and for the foregoing
`reasons, we deny the Petition.”). Similarly, the panel in Clim-A-Tech
`additionally denied institution because it was not persuaded that the
`petitioner had shown a reasonable likelihood of prevailing on the grounds
`presented in the petition. Clim-A-Tech, slip op. at 18, 19 (“[T]he Board
`exercises its discretion under 35 U.S.C. § 325(d) as an additional basis to
`decline to institute.”), 22, 25–26, 30–31. By contrast, for the reasons
`explained below, we are persuaded that Petitioner in this proceeding has
`demonstrated a reasonable likelihood that it will prevail on the asserted
`grounds presented in the Petition. See infra Sections III.E–G.
`In view of the foregoing, we decline to exercise our discretion under
`35 U.S.C. § 325(d) to deny institution. Because Lee is relied on for all three
`grounds presented in the Petition, we need not address whether the
`Feasibility Study is cumulative to prior art previously considered by the
`Office.
`
`17
`
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`IPR2019-00128
`Patent 9,154,356 B2
`
`
`D. Claim Interpretation
`The claim construction standard applicable to this inter partes review
`proceeding is the broadest reasonable interpretation in light of the patent
`specification. See 37 C.F.R. § 42.100(b) (2018);8 Cuozzo, 136 S. Ct. at
`2144–46 (upholding the use of the broadest reasonable interpretation
`standard). 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 provides a proposed interpretation of the claim term “carrier
`aggregation.” Pet. 28–32. Patent Owner responds that “no terms must be
`construed at this stage of the proceeding” and that “the Board should deny
`institution under any claim construction it adopts.” Prelim. Resp. 8. For
`purposes of this Decision, we conclude that no claim term requires express
`interpretation at this time to resolve any controversy in this proceeding.
`
`
`E. Anticipation by Lee
`Petitioner asserts that Lee anticipates claims 1, 7, 8, 11, 17, and 18 of
`the ’356 patent. Pet. 39–68. For the reasons explained below, we are
`
`
`8 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) (to be codified at 37 C.F.R.
`pt. 42).
`
`18
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`IPR2019-00128
`Patent 9,154,356 B2
`
`persuaded that Petitioner has demonstrated a reasonable likelihood of
`prevailing on this asserted ground.
`
`
`1. Lee
`Lee describes signal amplification circuits that may be used in multi-
`radio devices (e.g., mobile devices with multiple wireless connections such
`as WiFi and Bluetooth connections). Ex. 1335 ¶¶ 1–3. Figure 2, which is
`reproduced below, illustrates an example of a signal amplification circuit
`according to Lee. Id. ¶¶ 9, 26.
`
`
`In particular, Figure 2 shows signal amplification circuit 200, which includes
`matching network 210 as well as a plurality of amplifier blocks 202_1
`through 202_N. Id. ¶ 26. Each amplifier block has an input stage, a
`selecting stage, and an output stage. Id. For example, amplifier block 202_1
`has input stage 204_1, selecting stage 206_1, and output stage 208_1. Id.
`
`19
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`IPR2019-00128
`Patent 9,154,356 B2
`
`Input signal VIN is transmitted to input nodes Nin_1 through Nin_N of input
`stages 204_1 through 204_N via matching network 210. Id. In each
`amplifier block, the selecting stage comprises multiple transistors that are
`used to selectively couple the input stage to the output stage. Id. ¶ 27. The
`output stages 208_1 through 208_N are coupled to respective output
`ports Pout_1 to Pout_N, and configured to generate respective processed
`signals VOUT_1 to VOUT_N when enabled. Id. ¶ 28. An output stage is
`enabled when at least one transistor of a selecting stage in the same amplifier
`block is turned on. Id. ¶ 31.
`Signal amplification circuit 200 operates in either a shared mode or a
`combo mode. Id. ¶ 29. The output stages may be used to control the
`operational mode. Id. ¶ 33. Assume, for example, output port Pout_1 is
`coupled to a first radio signal processing system such as a WiFi receiver/
`transmitter, and output port Pout_N is coupled to a second radio signal
`processing system such as a Bluetooth receiver/transmitter. See id. ¶ 29. If
`only the WiFi function of the multi-radio device needs to be active, then
`signal amplification circuit 200 should operate in the shared mode. Id. ¶ 33.
`Output stage 208_1 is enabled, while all other output stages are disabled. Id.
`Similarly, if only the Bluetooth function needs to be active, then signal
`amplification circuit 200 should operate in the shared mode. Id. Output
`stage 208_N is enabled, while all other output stages are disabled. Id. If
`both WiFi and Bluetooth functions need to be active, then signal
`amplification circuit 200 should operate in the combo mode, where both
`output stages 208_1 and 208_N are enabled and all other output stages are
`disabled. Id.
`
`
`20
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`IPR2019-00128
`Patent 9,154,356 B2
`
`
`2. Analysis
`Independent claim 1 recites “a first amplifier stage configured to be
`independently enabled or
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