throbber
IPR2019-00129
`U.S. Patent 9,154,356
`
`
`
`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
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`QUALCOMM INCORPORATED,
`Patent Owner.
`_________________________________________________
`Case IPR2019-00129
`U.S. Patent No. 9,154,356
`____________________________________________________
`PETITIONER’S NOTICE OF APPEAL
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`
`
`
`

`

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`
`
`Pursuant to 35 U.S.C. §§ 141-144 and 319, and 37 C.F.R. § 90.2-90.3,
`
`IPR2019-00129
`U.S. Patent 9,154,356
`
`notice is hereby given that Petitioner Intel Corporation appeals to the U.S. Court of
`
`Appeals for the Federal Circuit from the Final Written Decision entered May 27,
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`2020 (Paper 36) in IPR2019-00129, attached as Exhibit A, and all prior and
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`interlocutory rulings related thereto or subsumed therein.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner indicates that the
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`issues for appeal include the holding that claims 2-6 and 10 of U.S. Patent
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`9,154,356 are not unpatentable, as well as any finding or determination supporting
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`or related to these issues, including the findings as to reasons for combining prior
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`art references. Additionally, Petitioner identifies claim construction as an issue for
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`appeal, including the construction of “carrier aggregation.”
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`Pursuant to 37 C.F.R. § 90.3, this Notice of Appeal is timely, having been
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`duly filed within 63 days after the date of the Final Written Decision.
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`A copy of this Notice of Appeal is being filed simultaneously with the Patent
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`Trial and Appeal Board, the Clerk’s Office for the United States Court of Appeals
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`for the Federal Circuit, and the Director of the U.S. Patent and Trademark Office.
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`
`
`Dated: July 27, 2020
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`
`
`Respectfully submitted,
`/Benjamin S. Fernandez/
`Benjamin S. Fernandez, Reg. No. 55,172
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`IPR2019-00129
`U.S. Patent 9,154,356
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 90.2(a)(1) and 104.2(a), I hereby certify that, in
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`
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`addition to being filed electronically through the Patent Trial and Appeal Board’s
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`End to End (PTAB E2E) system, a true and correct original version of the
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`foregoing PETITIONER’S NOTICE OF APPEAL is being filed by Priority Mail
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`Express on this 27th day of July, 2020, with the Director of the United States
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`Patent and Trademark Office, at the following address:
`
`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Pursuant to 37 C.F.R. § 90.2(a)(2) and Federal Circuit Rule 15(a)(1), and
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`
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`Rule 52(a),(e), I hereby certify that a true and correct copy of the foregoing
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`PETITIONER’S NOTICE OF APPEAL is being filed in the United States Court of
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`Appeals for the Federal Circuit using the Court’s CM/ECF filing system on this
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`27th day of July, 2020, and the filing fee is being paid electronically using
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`pay.gov.
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`I hereby certify that on July 27, 2020, I caused a true and correct copy of the
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`PETITIONER’S NOTICE OF APPEAL to be served via electronic mail, as
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`previously agreed by the parties, on the following counsel for Patent Owner:
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`David B. Cochran (dcochran@jonesday.com)
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`IPR2019-00129
`U.S. Patent 9,154,356
`
`Matthew W. Johnson (mwjohnson@jonesday.com)
`
`Joseph M. Sauer (jmsauer@jonesday.com)
`
`Joshua R. Nightingale (jrnightingale@jonesday.com)
`
`David M. Maiorana (dmaiorana@jonesday.com)
`
`Thomas W. Ritchie (twritchie@jonesday.com)
`
`William E. Devitt (wdevitt@jonesday.com)
`
`
`
`/Benjamin S. Fernandez/
`Benjamin S. Fernandez
`Registration No. 55,172
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`
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`3
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`EXHIBIT A
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`EXHIBIT A
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`

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`Trials@uspto.gov
`571.272.7822
`
`Paper 36
`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.
`____________
`
`IPR2019-00129
`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)
`
`
`
`

`

`IPR2019-00129
`Patent 9,154,356 B2
`
`
`I. INTRODUCTION
`Intel Corporation1 (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
`requesting an inter partes review of claims 2–6 and 10 of U.S. Patent
`No. 9,154,356 B2 (Ex. 1401, “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 2–6 and 10 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 35, “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 2–6 and 10 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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`IPR2019-00129
`Patent 9,154,356 B2
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`
`The parties also identify an International Trade Commission (“ITC”)
`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.
`
`
`B. The ’356 Patent
`The ’356 patent describes low noise amplifiers. Ex. 1401, 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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`IPR2019-00129
`Patent 9,154,356 B2
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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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`IPR2019-00129
`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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`IPR2019-00129
`Patent 9,154,356 B2
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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.
`
`
`C. Illustrative Claims
`Petitioner challenges claims 2–6 and 10 of the ’356 patent. These
`claims depend, directly or indirectly, from independent claim 1, which is not
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`IPR2019-00129
`Patent 9,154,356 B2
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`challenged in the instant Petition. Claims 2 and 10 are illustrative of the
`claims under challenge, and are reproduced below along with claim 1.
`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.
`2. The apparatus of claim 1, the first amplifier stage
`comprising a first gain transistor coupled to a first cascode
`transistor, the second amplifier stage comprising a second gain
`transistor coupled to a second cascode transistor, and the input
`RF signal being provided to both the first and second gain
`transistors.
`10. The apparatus of claim 1, further comprising:
`an attenuation circuit coupled to the first and second
`amplifier stages and configured to receive the input RF
`signal.
`
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 2–6 and 10 of the ’356 patent on grounds
`of anticipation under 35 U.S.C. § 102 and obviousness under 35 U.S.C.
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`IPR2019-00129
`Patent 9,154,356 B2
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`§ 103. 2 Pet. 42–80. We instituted inter partes review of all the asserted
`grounds. Inst. Dec. 35–36. The instituted grounds are as follows.
`Reference(s)/Basis
`Claim(s) Challenged
`35 U.S.C §
`Lee3
`2–6
`102
`Lee, Youssef4
`10
`103
`Lee, the Feasibility Study5
`2–6
`103
`10
`103
`Lee, the Feasibility Study, Youssef
`In support of its arguments, Petitioner relies on a declaration (Ex. 1402) as
`well as a reply declaration (Ex. 1439) 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 1440.
`
`
`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
`
`
`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. 1435).
`4 Ahmed Youssef et al., Digitally-Controlled RF Passive Attenuator in
`65 nm CMOS for Mobile TV Tuner ICs, 2010 IEEE INT’L SYMP. ON CIRCUITS
`& SYS. 1999 (Ex. 1409).
`5 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. 1404).
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`IPR2019-00129
`Patent 9,154,356 B2
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`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
`interpretation standard). 6 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 independent claim 1, which
`is not challenged here. Petitioner challenges claims 2–6 and 10, however,
`which depend directly or indirectly from claim 1. All the challenged claims
`in this proceeding therefore require “carrier aggregation.”
`Petitioner argues that this term “should be construed as ‘simultaneous
`operation on multiple carriers.’” Pet. 29. As support, Petitioner points us to
`three passages in the specification of the ’356 patent. Id. The first passage
`
`
`6 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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`IPR2019-00129
`Patent 9,154,356 B2
`
`states that “[a] wireless device may support carrier aggregation, which is
`simultaneous operation on multiple carriers.” Ex. 1401, 1:32–33 (cited by
`Pet. 29). 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. 29). Finally, the third passage notes that “[c]arrier
`aggregation may also be referred to as multi-carrier operation.” Id. at 2:54–
`55 (cited by Pet. 29). Petitioner further asserts that the Administrative Law
`Judge (“ALJ”) in the related ITC investigation “construed ‘carrier
`aggregation’ as Petitioner proposes here.” Pet. 32 (citing Ex. 1436, 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
`30 (citing Ex. 1402 ¶¶ 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.
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`IPR2019-00129
`Patent 9,154,356 B2
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`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 12 (citing
`Ex. 1401, 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;
`see also Ex. 1401, 1:37–38 (“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. 12 (citing Ex. 1401, 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
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`IPR2019-00129
`Patent 9,154,356 B2
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`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 file for the
`’356 patent. During prosecution, the Examiner relied on two U.S. patents,
`namely, Hirose7 and Kaukovuori, 8 as anticipatory references. Ex. 1414, 2–4
`(Office Action relying on Hirose); Ex. 1416, 2–4 (Office Action relying on
`Kaukovuori). In addition, the applicant filed an Information Disclosure
`Statement listing various references, including an international patent
`application9 and a British patent application. 10 Ex. 2015, at 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. 14–15;
`Ex. 1415, 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
`
`
`7 U.S. Patent No. 7,317,894 B2 (issued Jan. 8, 2008) (Ex. 1424).
`8 U.S. Patent No. 8,442,473 B1 (issued May 14, 2013) (Ex. 1425).
`9 International Publication No. WO 2012/008705 A2 (published January 19,
`2012) (Ex. 2016, “the international application”).
`10 UK Patent Application GB 2472978 A (published March 2, 2011)
`(Ex. 2017, “the British application”).
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`“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. 1425, 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 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. 14. 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. 1404, 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
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`IPR2019-00129
`Patent 9,154,356 B2
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`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,”
`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
`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, 26. 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. 1414, 3. In response, the applicant
`amended the claim language to further limit the recited input RF signal to a
`signal “employing carrier aggregation.” Ex. 1415, 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).
`
`14
`
`

`

`IPR2019-00129
`Patent 9,154,356 B2
`
`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
`operation on multiple carriers.’”).
`Lastly, Patent Owner argues that “Petitioner’s proposed construction
`is also incorrect because it reads out the word ‘aggregation.’” PO Resp. 28.
`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; Ex. 1436, 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
`
`15
`
`

`

`IPR2019-00129
`Patent 9,154,356 B2
`
`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 4–5. 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 would cover devices other than those that
`implement LTE.” Id. at 5–6 (citing Ex. 1401, 1:37–38, 2:40–53).
`Petitioner also argues that the prosecution history of the ’356 patent
`does not support Patent Owner’s proposed construction. Petitioner contends
`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. 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. Petitioner adds, “Patent Owner’s argument that the
`Examiner found that Kaukovuori discloses one specific type of carrier
`aggregation does not signify that the Examiner was limiting the Examiner’s
`interpretation of carrier aggregation based on the Kaukovuori reference.” Id.
`at 8.
`
`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
`
`16
`
`

`

`IPR2019-00129
`Patent 9,154,356 B2
`
`ordinary skill in the art] would assign extrinsic evidence little or no
`relevance.” Id. at 11. 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 also not prior art.” Id. (citing
`Ex. 2018; Ex. 2019; Ex. 2022).
`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 10 (citing PO Resp. 14). 11 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. That
`is, any “disclaimer was of systems that receive transmissions of redundant
`data over multiple channels.” Id. at 10–11 n.2.
`Lastly, Petitioner argues that its proposed construction does not read
`out “aggregation.” Id. at 12. 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. (citing Ex. 1439 ¶¶ 27–29).
`
`
`11 Petitioner cites page 14 of Patent Owner’s Response, but the cited
`language appears at page 15.
`
`17
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`

`

`IPR2019-00129
`Patent 9,154,356 B2
`
`
`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
`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. 1401, 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 pat

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