DOCKET NO.: 0107131-00573US4
`Filed on behalf of Intel Corporation
`By: David L. Cavanaugh, Reg. No. 36,476
`John V. Hobgood, Reg. No. 61,540
`Benjamin S. Fernandez, Reg. No. 55,172
`Gregory H. Lantier, pro hac vice
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email:
`David.Cavanaugh@wilmerhale.com
`
`John.Hobgood@wilmerhale.com
`
`Ben.Fernandez@wilmerhale.com
`
`Gregory.Lantier@wilmerhale.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`INTEL CORPORATION
`Petitioner
`
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner
`
`Case IPR2019-00128
`U.S. Patent No. 9,154,356
`
`DECLARATION OF PATRICK FAY, PH.D. IN SUPPORT OF
`PETITIONER’S REPLY
`
`INTEL 1339
`Intel v. Qualcomm
`IPR2019-00128
`
`

`

`TABLE OF CONTENTS
`
`IPR2019-00128
`US Patent 9,154,356
`
`i
`
`B. 
`
`Page
`INTRODUCTION ........................................................................................... 1 
`I. 
`QUALIFICATIONS ........................................................................................ 2 
`II. 
`III.  RELEVANT LAW .......................................................................................... 2 
`IV.  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 3 
`V. 
`REBUTTAL TO PATENT OWNER’S RESPONSE AND DR. FOTY’S
`OPINIONS ....................................................................................................... 4 
`A. 
`Patent Owner’s Proposed Claim Construction is Incorrect and Overly
`Narrow ................................................................................................... 4 
`1. 
`“Carrier Aggregation” Construed in Accordance With its
`Broadest Reasonable Interpretation ............................................ 4 
`Patent Owner’s Proposed Construction of “Carrier
`Aggregation” is Narrower than the Broadest Reasonable
`Interpretation of that Term in Light of the Specification ........... 5 
`Ground I: Anticipation by Lee ............................................................ 15 
`1. 
`Applying the Correct Claim Construction, Lee Anticipates
`Claims 1, 7, 8, 11, 17, and 18 ................................................... 15 
`Patent Owner’s Additional Argument with Respect to Claim 7
` ................................................................................................... 17 
`Ground II: Obviousness of Claims 7 and 8 Based on Lee .................. 19 
`C. 
`D.  Ground III: Claims 1, 7, 8, 11, 17, and 18 are Obvious over Lee in
`View of Feasibility Study .................................................................... 20 
`1. 
`The Feasibility Study is Analogous Art .................................... 20 
`2. 
`The Petition Establishes the Reasons to Combine Lee and the
`Feasibility Study ....................................................................... 21 
`Patent Owner’s Additional Arguments ..................................... 25 
`3. 
`VI.  AVAILABILITY FOR CROSS-EXAMINATION ...................................... 26 
`VII.  RIGHT TO SUPPLEMENT .......................................................................... 26 
`
`2. 
`
`2. 
`
`

`

`IPR2019-00128
`US Patent 9,154,356
`US Patent 9,154,356
`VIII.  JURAT ........................................................................................................... 27 
`
`VIII. IURAT ........................................................................................................... 27
`
`IPR2019-00128
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`ii
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`ii
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`

`

`IPR2019-00128
`US Patent 9,154,356
`
`I, Patrick Fay, declare as follows:
`I.
`INTRODUCTION
`1.
`I have been retained by Intel Corporation (“Intel” or “Petitioner”) as
`
`an independent expert consultant in this proceeding before the United States Patent
`
`and Trademark Office. I previously prepared and submitted a Declaration in
`
`support of the Petition in this proceeding, dated November 9, 2018 (Ex. 1302).
`
`2.
`
`Since preparing my Declaration, I have reviewed Qualcomm’s Patent
`
`Owner’s Preliminary Response (“POPR”), the Board’s Decision on Institution
`
`(“DOI”), Patent Owner’s Response (“POR”), Dr. Foty’s declaration submitted in
`
`support of the POR (Ex. 2024), and the transcript of Dr. Foty’s deposition on
`
`November 8, 2019 (Ex. 1340). I have been asked to review and respond to Dr.
`
`Foty’s opinions, including those reflected in the POR, as well as the Board’s
`
`Decision on Institution.
`
`3.
`
`I am being compensated for my work on this matter, but my opinions
`
`are based on my own views of the patented technology and the prior art. My
`
`compensation in no way depends on the outcome of this proceeding or the content
`
`of my testimony.
`
`4.
`
`In preparing this Declaration, I reviewed and considered the
`
`specification, claims, and file history of U.S. Patent No. 9,154,356 (“’356 patent”)
`
`(Ex. 1301). I have been informed the ’356 patent has a priority date of August 21,
`
`1
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`

`

`IPR2019-00128
`US Patent 9,154,356
`2012. I have also reviewed and considered the documents cited by Dr. Foty in his
`
`declaration (Ex. 2024). Additionally, I have reviewed the related Reply, which I
`
`understand Intel will file at the United States Patent and Trademark Office
`
`(USPTO) at the same time as this Declaration is filed at the USPTO.
`
`5.
`
`I have also reviewed all of the documents I cite in this declaration.
`
`II. QUALIFICATIONS
`6.
`I describe my qualifications in my first Declaration. Ex. 1302, ¶¶2-9.
`
`III. RELEVANT LAW
`7.
`In my first Declaration, I set forth the applicable principles of patent
`
`law that were provided to me by counsel. Ex. 1302, ¶¶15-30. As appropriate, I
`
`have continued to apply those principles in providing my opinions in this
`
`Declaration. In addition, I understand that the following legal principles apply, as
`
`explained to me by Intel’s legal counsel.
`
`8.
`
`I am not an attorney. For the purposes of this declaration, I have been
`
`informed about certain aspects of the law that are relevant to my opinions. My
`
`understanding of the law is as follows.
`
`9.
`
`I have been informed and understand that the Petitioner in an inter
`
`partes review Petition may request cancellation of claims as unpatentable only on
`
`grounds that such claims are anticipated or would have been obvious to a person of
`
`ordinary skill in the art at the time of the purported invention, and only on the basis
`
`2
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`

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`IPR2019-00128
`US Patent 9,154,356
`of prior art consisting of patents or printed publications. A petitioner need only
`
`establish unpatentability of challenged claims by a preponderance of the
`
`evidence—i.e., that the claims are more likely than not unpatentable. My opinions
`
`in this matter address the invalidity of the challenged claims as anticipated and
`
`obvious.
`
`10.
`
`I have been informed and understand that an applicant for a patent can
`
`disclaim or disavow claim scope via statements made during prosecution without
`
`an express amendment, but only if such statements of disavowal or disclaimer are
`
`clear, unmistakable, unambiguous, and unequivocal.
`
`11.
`
`I have been informed and understand that a prior art reference is
`
`considered analogous art to the challenged patent for purposes of determining
`
`obviousness if it is from the same field of endeavor, regardless of the problem
`
`addressed, or if the reference is reasonably pertinent to the particular problem with
`
`which the inventor of the challenged patent was involved.
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`12. As stated in my original declaration (Ex. 1302), a person of ordinary
`
`skill in the art (“POSITA”) at the time of the alleged invention would have had at
`
`least an M.S. degree in electrical engineering (or equivalent experience) and would
`
`have had at least two years of experience with the structure and operation of RF
`
`transceivers and related structures (or the equivalent).
`
`3
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`IPR2019-00128
`US Patent 9,154,356
`13. Patent Owner’s expert, Dr. Foty, does not dispute this statement of the
`
`level of ordinary skill of a POSITA. Ex. 2024, ¶78.
`
`V. REBUTTAL TO PATENT OWNER’S RESPONSE AND DR. FOTY’S
`OPINIONS
`A.
`Patent Owner’s Proposed Claim Construction is Incorrect and
`Overly Narrow
`1.
`“Carrier Aggregation” Construed in Accordance With its
`Broadest Reasonable Interpretation
`14. The broadest reasonable interpretation of “carrier aggregation” is
`
`“simultaneous operation on multiple carriers.” This construction comes directly
`
`from the specification, which defines the term. See Ex. 1301, 1:32-33 (“A wireless
`
`device may support carrier aggregation, which is simultaneous operation on
`
`multiple carriers.”); id., 2:53-54 (“Wireless device 110 may support carrier
`
`aggregation, which is operation on multiple carriers.”); id., 2:54-55 (“Carrier
`
`aggregation may also be referred to as multi-carrier operation.”). Given the clear
`
`guidance in the specification, “carrier aggregation” should be construed as
`
`“simultaneous operation on multiple carriers” under the broadest reasonable
`
`interpretation (“BRI”) claim construction standard. This meaning is consistent
`
`with the understanding of the term by a POSITA.
`
`15. For this IPR proceeding, it is my understanding that the BRI claim
`
`construction standard applies. Paper 9, Decision on Institution (“DOI”), 12.
`
`4
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`

`

`2.
`
`IPR2019-00128
`US Patent 9,154,356
`Patent Owner’s Proposed Construction of “Carrier
`Aggregation” is Narrower than the Broadest Reasonable
`Interpretation of that Term in Light of the Specification
` Despite the ’356 patent expressly defining “carrier aggregation” as
`
`16.
`
`“simultaneous operation on multiple carriers” and discussing “Bluetooth,” WiFi
`
`(e.g., “802.11”), and “LTE” devices (among others) that support carrier
`
`aggregation, Patent Owner’s proposed construction appears to be based on one
`
`subset of those technologies, LTE. Patent Owner’s proposed construction of
`
`carrier aggregation is narrower than any disclosure in the ’356 specification.
`
`17. Patent Owner proposes a tripartite construction for carrier aggregation
`
`as “[1] simultaneous operation on multiple carriers [2] that are combined as a
`
`single virtual channel [3] to provide higher bandwidth.” The second and third
`
`parts of this proposed construction lack support in the ’356 patent specification.
`
`3.
`
`The Intrinsic Evidence Does Not Support Patent Owner’s
`Construction
`18. Patent Owner’s citation of the ’356 patent specification in the Petition
`
`does not support the narrowness of its proposed construction. For example, Patent
`
`Owner cites column 2, lines 63-67 of the ’356 patent in support of “combined
`
`higher bandwidth channel for communications,” and the addition of LTE-
`
`Advanced carrier aggregation “[t]o relieve this [data] rate-limiting step.” POR, 12-
`
`14. However, the ’356 patent includes no discussion of these concepts; the quoted
`
`section merely recites the maximum carrier bandwidth in LTE, and indicates the
`
`5
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`IPR2019-00128
`US Patent 9,154,356
`number of bands defined in LTE and how they can be configured. No mention of
`
`combined bandwidth or data rate is provided. Ex. 1301. In fact, parts [2] and [3]
`
`of Patent Owner’s proposed construction lack any written description support in
`
`the ’356 patent. The LTE carrier aggregation described at column 2, lines 63-67 is
`
`just one example of carrier aggregation in the patent.
`
`19. The applicant of the ’356 patent chose very broad language to
`
`describe the types of transmissions and communications equipment encompassed
`
`by the invention. For example, the written description broadly states that a
`
`“carrier” “may refer to a range of frequencies used for communication…A carrier
`
`may also be referred to as a component carrier (CC), frequency channel, a cell,
`
`etc.,” expressly broadening the meaning of “carrier” beyond the “component
`
`carrier” example given in the written description. This “component carrier”
`
`example from among the list of examples in the ‘356 specification is now the only
`
`example upon which the Patent Owner appears to rely. Ex. 1301, 1:33-38. Ex.
`
`1340, 50:14-51:9. A “frequency channel” or “cell” are far broader than the
`
`definition of “carrier” that the Patent Owner currently seeks to embed within its
`
`definition of “carrier aggregation,” which is effectively a “component carrier” as
`
`that term is used in the context of LTE. Id. Likewise, the ’356 patent states that
`
`“[w]ireless device 110 may be a cellular phone, a smartphone, a tablet, a wireless
`
`modem, a personal digital assistant (PDA), a handheld device, a laptop computer, a
`
`6
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`IPR2019-00128
`US Patent 9,154,356
`smartbook, a netbook, a cordless phone, a wireless local loop (WLL) station, a
`
`Bluetooth device, etc. Wireless device 110 may be capable of communicating with
`
`wireless system 120. Wireless device 110 may also be capable of receiving signals
`
`from broadcast stations (e.g., a broadcast station 134), signals from satellites (e.g.,
`
`a satellite 150) in one or more global navigation satellite systems (GNSS).” Ex.
`
`1301, 2:40-50. Thus, the applicant signaled that the invention would cover devices
`
`other than those that implement LTE. The patent further states that “[w]ireless
`
`device 110 may support one or more radio technologies for wireless
`
`communication such as LTE, cdma2000, WCDMA, GSM, 802.11, etc.” Id., 2:50-
`
`53. By broadly encompassing all of these devices, device types, and wireless
`
`technologies, the ’356 patent’s written description expressly broadens the scope of
`
`the alleged invention to encompass virtually any wireless device or radio
`
`technology. Patent Owner’s current proposed narrow construction is inconsistent
`
`with the broadening approach taken by the applicant in the written description.
`
`20. Patent Owner’s expert, Dr. Foty, stated that parts two and three of
`
`Patent Owner’s proposed tripartite claim construction do not find support in
`
`the ’356 patent’s written description. His deposition testimony includes
`
`explanations that, while “simultaneous operation on multiple carriers” came from
`
`the ’356 patent written description, Ex. 1340, 69:12-19, the [2] “that are combined
`
`as a single virtual channel” and [3] “to provide higher bandwidth” portions of the
`
`7
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`IPR2019-00128
`US Patent 9,154,356
`proposed claim construction come only from prior art that was cited in the
`
`prosecution history. Id., 70:12-71:18; 72:14-74:7. Dr. Foty alleges that WO
`
`2012/008705 (Ex. 2016), GB2472978 (Ex. 2017), and U.S. Pat. No. 8,442,473 (Ex.
`
`1325) are intrinsic evidence that support this portion of the construction. Id.
`
`21. However, based upon my review and search, the phrases “combined
`
`as a single virtual channel” or “provide higher bandwidth” do not appear in any of
`
`the three references relied upon by Dr. Foty. A POSITA would not consider Patent
`
`Owner’s arguments about these references to limit the BRI of the term “carrier
`
`aggregation” given the clear definition of that term in the ’356 written description.
`
`Indeed, while the three references may mention concepts similar to those proposed
`
`for parts [2] and [3] of the Patent Owner’s proposed construction, the references’
`
`various descriptions of instances of carrier aggregation are all encompassed by the
`
`BRI of that term: simultaneous operation on multiple carriers. Further, based on
`
`my review of the ’356 patent’s file history, none of the evidence on which Patent
`
`Owner now relies for parts 2 and 3 of its proposed claim construction was
`
`discussed during prosecution of the ’356 patent. Kaukovuori (Ex. 1325) was cited
`
`during prosecution on December 26, 2014, but the prosecution file wrapper does
`
`not include the quote reproduced at page 15 of the POR; the Examiner referenced a
`
`different passage in the office action. Ex. 1318, 7. Furthermore, my review of the
`
`prosecution history indicates that by rejecting the claims based on the Kaukovuori
`
`8
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`

`IPR2019-00128
`US Patent 9,154,356
`reference disclosing one specific type of carrier aggregation, a POSITA would not
`
`have understood the Examiner to be limiting the Examiner’s interpretation of
`
`carrier aggregation based on the Kaukovuori reference. For the other two
`
`references which Dr. Foty identifies as intrinsic, I note that these are two
`
`references selected from among approximately 350 references cited either by the
`
`Examiner or in information disclosure statements, and that Dr. Foty reproduces in
`
`his declaration (Ex. 2024) quotes from these references that were not part of the
`
`prosecution file wrapper. Ex. 2024, ¶¶89-92.
`
`4.
`
`Prosecution Disclaimer Does Not Limit the Broadest
`Reasonable Interpretation Here
`In its POR, Patent Owner also seeks to invoke the doctrine of
`
`22.
`
`prosecution history disclaimer. POR, 24-27. However, Patent Owner’s expert, Dr.
`
`Foty, stated with respect to carrier aggregation: “I don’t think there’s a disavowal
`
`of that or a disclaimer.” Ex. 1340, 32:2-15. Reviewing the prosecution history of
`
`the ’356 patent, I agree that there was no disavowal or disclaimer of claim scope
`
`with respect to “carrier aggregation.”
`
`23. During prosecution of the ’356 patent, the Examiner rejected the
`
`claims based on anticipation by U.S. Patent No. 7,317,894 (“Hirose”) (Ex. 1324).
`
`Ex. 1314, 2-4. Hirose taught a receiver used for frequency, space, and time
`
`diversity having two amplifiers that receive a common input and provide separate
`
`outputs to process “the same signals [sent] over different paths.” Ex. 1315, 7. In
`
`9
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`IPR2019-00128
`US Patent 9,154,356
`Hirose, three different carriers (e.g., both “satellite wave” carriers and the “ground
`
`wave” carrier illustrated in Hirose Figure 1, annotated below) containing the same
`
`data are received simultaneously and synthesized to obtain a single stream of data,
`
`as shown in annotated Figure 1 of Hirose, below. Id.
`
`
`
`24. Patent Owner responded to the Examiner’s rejection by amending its
`
`claims to require an input RF signal “employing carrier aggregation.” Id., 2-6.
`
`Patent Owner argued that Hirose does not disclose carrier aggregation because it
`
`describes receiving “redundant data” over multiple carriers, which Patent Owner
`
`contended does not result in an “increased aggregated data rate.” Id., 7-8. Thus,
`
`when Patent Owner added “the input RF signal employing carrier aggregation” to
`
`distinguish the Hirose reference, Patent Owner’s point of distinction was that
`
`10
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`IPR2019-00128
`US Patent 9,154,356
`Hirose did not employ “carrier aggregation” because it disclosed redundant data
`
`transmissions. Id. Patent Owner did not argue that “carrier aggregation” required
`
`anything more than non-redundant data transmissions. See id.
`
`25. Patent Owner disputes Petitioner’s statement that “Patent Owner did
`
`not argue during prosecution that carrier aggregation required anything more than
`
`non-redundant transmissions.” POR, 15 (quoting Pet., 30). As support for its
`
`position, Patent Owner points to the same file history quote provided in the
`
`Petition, with an emphasis on Patent Owner’s argument that “‘carrier aggregation’
`
`requires an ‘increased aggregated data rate.’” Id. A POSITA would understand
`
`those words to not amount to a clear and unmistakable disclaimer as I understand
`
`to be required for prosecution history disclaimer. The “increased aggregated” here
`
`refers to “data rate.” Hirose’s transmission of the “same signals over different
`
`paths” does not increase aggregated data rate because it “results in redundant data
`
`at a common data rate.” Ex. 1315, 7 (bold, italics in original). If Hirose’s
`
`simultaneous signals contained non-redundant (i.e., different) data, Patent Owner
`
`could not have made the argument that it did, and therefore a POSITA reviewing
`
`the prosecution history would understand that the applicant was distinguishing
`
`Hirose on the basis of its redundant transmissions. My initial declaration explains
`
`this. Ex. 1302, ¶83 (“Patent Owner distinguished the prior art reference Hirose
`
`(EX1324-Hirose) on the grounds that it described sending redundant data over
`
`11
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`IPR2019-00128
`US Patent 9,154,356
`three different carriers and therefore did not lead to an “increased aggregated data
`
`rate.”). At a minimum, a POSITA would understand that the competing
`
`interpretations of the prosecution history set forth in the Petition and in the POR
`
`demonstrate that any disclaimer was not “clear and unmistakable.”
`
`5.
`
`A POSITA Would Not Find Patent Owner’s Citation to
`Extrinsic Evidence Helpful in Understanding How the ’356
`Patent Defines “Carrier Aggregation”
`In a case such as this one where the intrinsic evidence so clearly
`
`26.
`
`supports the definition that Patent Owner included in its specification, a POSITA
`
`would assign this extrinsic evidence little or no relevance. Furthermore, 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 also not prior art to the ’356
`
`patent. See Exs. 2018 (earliest filing 2013); 2019 (Sep. 2013); 2022 (2014). A
`
`POSITA would not accord these extrinsic sources significant weight and, in any
`
`event, these extrinsic sources are not inconsistent with Petitioner’s proposed
`
`construction of “carrier aggregation,” which is broad enough to encompass each of
`
`the differing examples of carrier aggregation provided in Patent Owner’s extrinsic
`
`evidence sources.
`
`6.
`
`Petitioner’s Proposed BRI Construction Does Not Read Out
`“Aggregation”
`27. Patent Owner argues that Petitioner’s BRI construction reads out the
`
`word “aggregation.” POR, 28. I disagree. When the claimed “input RF signal”
`
`12
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`

`IPR2019-00128
`US Patent 9,154,356
`employs “simultaneous operation on multiple carriers,” those carriers will be
`
`aggregated along the input RF signal. Pet., 46-48; Ex. 1402, ¶80 (“receiving and
`
`processing data on multiple carriers at the same time in a single input RF signal”).
`
`Thus, “carrier aggregation” in the context of the challenged claims accounts for
`
`aggregation (i.e., collected together, assembled, as defined in the POR, at 29),
`
`because the multiple carriers would be present simultaneously in the input RF
`
`signal.
`
`28. Specifically, because the ’356 patent describes “carrier aggregation”
`
`as encompassing wireless devices that support “one or more radio technologies for
`
`wireless communication such as LTE, cdma2000, WCDMA, GSM, 802.11, etc.,”
`
`when two or more carriers in a carrier aggregated signal are received according to
`
`“one or more” of these technologies, those carriers are all aggregated in the input
`
`RF signal (e.g. “RFin” in FIG. 6A) that enters the amplifier.
`
`13
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`IPR2019-00128
`US Patent 9,154,356
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`
`
`29. This RFin is one wire, one input, and whether two carriers received
`
`are two LTE carriers, or two WiFi carriers, or one Bluetooth and one WiFi carrier,
`
`the input RF signal RFin will be a signal that includes all of these carriers. The
`
`only difference would be the numerical values of the frequencies of these carriers
`
`that are present simultaneously on the input. Thus, any two or more carriers
`
`received simultaneously are aggregated at RFin, which is the claimed “input RF
`
`signal.” The ’356 patent challenged claims relate to “receiv[ing] an input radio
`
`frequency (RF) signal” or “amplifying a first input radio frequency (RF) signal.”
`
`Ex. 1301, Claims 1, 17. To the extent Patent Owner’s arguments about
`
`“aggregation” suggest a singular transmission node or a single logical transmission
`
`14
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`US Patent 9,154,356
`channel, these narrow interpretations are inconsistent with the ’356 patent, and are
`
`not supported by any presented evidence.
`
`B. Ground I: Anticipation by Lee
`1.
`Applying the Correct Claim Construction, Lee Anticipates
`Claims 1, 7, 8, 11, 17, and 18
`30. With respect to anticipation grounds for the Lee reference (Ex. 1335),
`
`Patent Owner’s only argument in favor of patentability for claims 1, 11, 17, and 18
`
`appears to be that Lee does not disclose the “input RF signal employing carrier
`
`aggregation” under Patent Owner’s proposed construction. POR, 32-34. I do not
`
`agree with Patent Owner.
`
`31. Lee discloses that its input RF signal (VIN) employs carrier
`
`aggregation (e.g., simultaneous operation on multiple carriers (e.g., WiFi and
`
`Bluetooth)). Patent Owner’s expert agreed that the Bluetooth and WiFi signals in
`
`Lee are separate signals that can be received simultaneously. Ex. 1337, 2205:12-
`
`22; Ex. 1340, 7:17-18:5.
`
`32. Lee also teaches that the two carriers, e.g. Bluetooth and WiFi, are
`
`aggregated at VIN just as the carriers in the ’356 patent are aggregated at the input
`
`radio (RF) signal RFin. Pet., 47-48. As also explained above, when a Bluetooth
`
`carrier is received simultaneously with a WiFi carrier in Lee, those carriers are
`
`aggregated at VIN – because VIN goes along a single wire, and is a single input
`
`that is the claimed “input RF signal,” the Bluetooth and WiFi carriers are
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`IPR2019-00128
`US Patent 9,154,356
`aggregated, i.e., collected together, assembled at VIN. See POR, 29 (“Aggregate
`
`means ‘to collect together, assemble.’”).
`
`
`
`33. While Patent Owner’s expert refers to them as “separate signals,”
`
`Bluetooth and WiFi carriers would be present simultaneously at VIN in the same
`
`manner as two LTE carriers would be present simultaneously at VIN, the only
`
`difference being the numerical values of their carrier frequencies. This is true
`
`regardless of whether or not the two carriers originate from a common source, or
`
`whether or not they are logically related to one another in (e.g., at the baseband
`
`level). The two carriers do not somehow travel down separate sides of the wire or
`
`avoid one another along VIN. Calling the simultaneously-received Bluetooth and
`
`WiFi carriers of Lee a single signal, or labeling them as separate carriers or
`
`separate signals, does not change the fact that their physical presence and behavior
`
`is the same – they are aggregated along VIN as they are received by the amplifier
`
`stages of Lee.
`
`16
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`IPR2019-00128
`US Patent 9,154,356
`34. The Patent Owner’s Response does not identify any arguments in
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`favor of patentability for claims 1, 7, 8, 11, 17, or 18 under Petitioner’s proposed
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`construction. POR, 32-34. For the reasons identified in the Petition and in my
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`original declaration, claims 1, 7, 8, 11, 17, or 18 are thus anticipated by Lee.
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`35.
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`If the Board were to construe carrier aggregation to require “non-
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`redundant data” or its logically equivalent synonym “increased aggregated data
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`rate” (though neither party proposes this construction), Lee also teaches this. Ex.
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`1302, ¶¶83-84. Lee uses multiple carriers to send different data, not redundant
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`data. Id. Patent Owner’s expert admits that typically, the two “radio streams” in
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`Lee are not redundant. Ex. 1337, 2213:22-2214:1; Ex. 1340, 7:17-18:5. The
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`Patent Owner’s Response does not identify any additional arguments for
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`patentability of claims 11, 17, or 18. Thus, Patent Owner has failed to rebut
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`Petitioner’s showing that Lee teaches “input RF signal employing carrier
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`aggregation.”
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`2.
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`Patent Owner’s Additional Argument with Respect to Claim
`7
`36. Claims 7 and 8 are anticipated by Lee. Ex. 1302, ¶¶91-104. In
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`addition to advancing the same argument about the “input RF signal employing
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`carrier aggregation” made for claims 1, 11, 17, and 18, which is incorrect for the
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`reasons set forth above, Patent Owner’s Response makes additional arguments
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`distinguishing claim 7 on the anticipation grounds. POR, 35-38. However, these
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`arguments are incorrect, and fail to rebut Petitioner’s showing of anticipation based
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`on Lee.
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`37. Patent Owner’s additional arguments distinguishing claim 7 from the
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`Lee anticipation ground argue that Lee “does not disclose circuit 400 operating in
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`both [‘shared’ and ‘combo’] modes in a single embodiment.” POR, 35. Patent
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`Owner further relies on language in Lee paragraph [0036] about a capability to
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`enable output stages 304_1-304_N in a “time-division manner” in shared mode.
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`POR, 35-36. However, Lee does disclose circuit 400 operating in both a combo
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`mode and a shared mode; hence, the disclosure of Lee with respect to Figure 4
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`fully supports Petitioner’s grounds for anticipation of claims 7 and 8, and the
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`Patent Owner’s Response fails to rebut these anticipation grounds for several
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`reasons. Ex. 1302, ¶¶91-104.
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`38. A POSITA would understand that the circuit 400 of Lee operates in
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`combo mode, in addition to shared mode. Ex. 1335, ¶41 (“In an alternative design,
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`the signal amplification circuit 400 shown in FIG. 4 may operate under a combo
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`mode”), ¶38 (describing exemplary operation “under the shared mode”), ¶¶42, 33;
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`Ex. 1302, ¶92. A POSITA would understand that operation in the shared mode
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`described in paragraph [0038] and elsewhere in Lee would apply in “the alternative
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`design” of Lee paragraph [0041], and that the Petition does not “mix[] different
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`embodiments” for its anticipation grounds; the shared and combo modes are
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`supported by the same Fig. 4 embodiment. Nothing in paragraphs [0036] or [0037]
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`of Lee (which from context is directed to circuits 100, 300, and Fig. 3) is
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`inconsistent with Petitioner’s anticipation grounds for claims 7 and 8, and thus the
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`POR does not rebut Petitioner’s showing of anticipation.
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`C. Ground II: Obviousness of Claims 7 and 8 Based on Lee
`39. Patent Owner first argues against the obviousness of claims 7 and 8
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`based on “the input RF signal employing carrier aggregation.” POR, 38. This is
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`incorrect for the reasons set forth above. Patent Owner’s only other argument
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`against the obviousness of claims 7 and 8 is the allegation that Petitioner “fails to
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`sufficiently articulate” / “fails to sufficiently explain” and has “conclusory
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`assertions [that] lack sufficient support” for its stated reasons to combine the
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`teachings of Lee FIG. 2 with Lee FIG. 4. POR, 38-39. I note that the Board
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`disagreed for purposes of its Decision on Institution: “[w]e also are persuaded that
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`Petitioner’s proffered reasoning for modifying the signal amplification circuit of
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`Figure 2 of Lee to include the feedback elements of Figure 4 of Lee, namely, to
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`improve input matching performance, is sufficient to support the legal conclusion
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`of obviousness.” DOI, 29.
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`40. The Patent Owner’s Response does not state anywhere that
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`Petitioner’s reasons to combine for the obviousness of claims 7 or 8 are incorrect,
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`or that Patent Owner disagrees with them. See POR, 38-39. Claims 7 and 8 are
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`obvious over Lee for the reasons set forth in the Petition and my prior declaration.
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`Pet., 68-72; Ex. 1302, ¶¶123-131.
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`D. Ground III: Claims 1, 7, 8, 11, 17, and 18 are Obvious over Lee in
`View of Feasibility Study
`41. Patent Owner’s Response does not identify any claim elements
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`missing from the combination of Lee and Feasibility Study for claims 1, 7, 8, 11,
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`17, and 18, but appears to attack Petitioner’s reasons to combine the references.
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`POR, 40-47. The Patent Owner’s expert did not dispute that the Feasibility Study
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`discloses carrier aggregation, even under the Patent Owner’s proposed
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`construction. See Ex. 1340, 75:20-76:6; Ex. 1340, 7:17-18:5. Patent Owner
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`argues that the Feasibility Study does not disclose an amplifier circuit, but the
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`Feasibility Study is not relied upon for such a teaching in the obviousness
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`combination, and in any case the Feasibility Study does disclose amplifiers. POR,
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`40; Pet., 72-75.
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`1.
`The Feasibility Study is Analogous Art
`42. Patent Owner argues that Petitioner has not shown that the Feasibility
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`Study is analogous art. POR, 41. I disagree.
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`43. A POSITA would recognize that Lee and the Feasibility Study are
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`highly analogous art to the ’356 patent. In addition to all of the content within the
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`Lee reference itself that demonstrates that it falls within the same field of endeavor
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`of the ’356 patent, I note that Lee was considered so materially related to the ’356
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`patent disclosure by an independent, international search authority that the search
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`authority designated “Lee as an ‘X’ reference, meaning tha