Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 6
`Entered: November 2, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`
`
`
`
`
`
`
`
`
`Before NATHAN A. ENGELS, SHARON FENICK, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`Tel: 571-272-7822
`
`
`
`Paper 6
`Entered: November 2, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`
`
`
`
`
`
`
`
`
`Before NATHAN A. ENGELS, SHARON FENICK, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`
`A. Background
`
`I.
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1, 2, 8, 10, and 14 of U.S. Patent No. 9,705,400 B2
`
`(Ex. 1001, “the ’400 patent”). Paper 1, 1 (“Pet.”). Petitioner also filed the
`
`Declaration of Dr. Marwan Hassoun in support of the Petition. Ex. 1006.
`
`Telefonaktiebolaget LM Ericsson (“Patent Owner”) did not file a
`
`preliminary response.
`
`An inter partes review may not be instituted unless it is determined
`
`that “the information presented in the petition . . . shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018).
`
`For the reasons below, we determine the information presented in the
`
`Petition shows a reasonable likelihood that Petitioner will prevail in showing
`
`the unpatentability of at least one claim of the ’400 patent, and we institute
`
`inter partes review.
`
`B. Real Parties in Interest
`
`Petitioner states that Apple Inc. is the real party in interest. Pet. 82.
`
`Patent Owner states that Telefonaktiebolaget LM Ericsson and Ericsson Inc.
`
`are the real parties in interest. Paper 3, 2.
`
`C. Related Proceedings
`
`The parties state that the ’400 patent is the subject of Ericsson Inc. et
`
`al. v. Apple Inc., No. 6:22-cv-00061 (W.D. Tex.) and Ericsson Inc. et al. v.
`
`Apple Inc., 337-TA-1300 (ITC). Pet. 82; Paper 3, 2.
`
`2
`
`
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`
`D. The ’400 Patent (Ex. 1001)
`
`The ’400 patent describes a circuit structure that includes an output
`
`stage that can be adapted to work with at least two subsystem circuit
`
`components such as a Class-D amplifier and a DC-DC boost converter.
`
`Ex. 1001, 1:44–56. As an example, the ’400 patent states that a typical
`
`audio subsystem may combine in a single integrated circuit a Class-D
`
`amplifier for driving a circuit such as a hands-free loudspeaker. Ex. 1001,
`
`1:11–23. The Class-D amplifier may be driven by a battery or by a DC-DC
`
`boost converter. Ex. 1001, 1:25–36. According to the ’400 patent, in the
`
`prior art, such a configuration required two output stages, one output stage
`
`for the Class-D amplifier and a separate output stage for the DC-DC boost
`
`converter. Ex. 1001, 1:54–56.
`
`Instead of an output stage dedicated for use with either a Class-D
`
`amplifier or a DC-DC boost converter, the circuit described in the
`
`’400 patent can operate in at least a first operating state and a second
`
`operating state, such that the output stage may be shared by at least two
`
`circuit components such as the Class-D amplifier and the DC-DC boost
`
`converter. Ex. 1001, 5:61–6:8.
`
`E. Representative Claim
`
`Of the challenged claims, claims 1, 8, and 14 are independent claims.
`Claim 1 is reproduced below.
`
`1[p]. An output stage adapted to operate in at least a first operating
`state and a second operating state, the output stage comprising:
`
`[1(a)] a first, a second, a third and a fourth configurable
`input/output terminals; and,
`
`[1(b)] a first, a second, a third and a fourth switches, each having a
`first main terminal, a second main terminal and a control
`terminal, the control terminal being adapted to receive a
`
`3
`
`
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`
`control signal for controlling the open or closed state of
`the switch,
`
`[1(c)(i)] wherein, the first input/output terminal is connected to the
`first main terminal of the first switch;
`
`[1(c)(ii)] the second input/output terminal is connected to the first
`main terminal of the second switch;
`
`[1(c)(iii)] the second main terminal of the first switch is connected
`to the first main terminal of the third switch through a
`first branch,
`
`[1(c)(iv)] the second main terminal of the second switch is
`connected to the first main terminal of the fourth switch
`through a second branch;
`
`[1(c)(v)] the third input/output terminal is connected to the first
`branch and the fourth input/output terminal is connected
`to the second branch;
`
`[1(c)(vi)] the second main terminals of the third and fourth switches
`are both connected to a common node receiving a
`reference potential; and,
`
`[1(c)(vii] wherein, when the first and second input/output terminals
`are configured to operate as input terminals, the third and
`fourth input/output terminals are configured to operate as
`output terminals; and,
`
`[1(c)(viii)] when the first and second input/output terminals are
`configured to operate as output terminals, the third and
`fourth input/output terminals are configured to operate as
`input terminals; and,
`
`[1(c)(ix)] wherein, in the first operating state, the output stage is
`arranged in a first electrical configuration; and
`
`[1(c)(x)] in the second operating state wherein the output stage is
`arranged in a second electrical configuration different
`from the first configuration.
`
`Ex. 1001, 12:2–42.
`
`4
`
`
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`
`F. Asserted Challenges to Patentability
`
`Petitioner challenges the patentability of claims 1, 2, 8, 10, and 14 of
`
`the ’400 patent on the following grounds:
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`References/Basis
`
`1, 2, 8, 10
`
`14
`
`Pet. 9.
`
`1031
`
`103
`
`Smith,2
`
`Smith, Stengel3
`
`II. DISCUSSION
`
`A. Obviousness
`
`Under 35 U.S.C. § 103, a claim is unpatentable as obvious if “the
`
`differences between the claimed invention and the prior art are such that the
`
`claimed invention as a whole would have been obvious before the effective
`
`filing date of the claimed invention to a person having ordinary skill in the
`
`art to which the claimed invention pertains.” See KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 406 (2007). We resolve the question of obviousness
`
`based on underlying factual determinations, including: (1) the scope and
`
`content of the prior art; (2) any differences between the prior art and the
`
`claims; (3) the level of skill in the art; and (4) when in evidence, objective
`
`indicia of nonobviousness. See Graham v. John Deere Co. of Kansas City,
`
`383 U.S. 1, 17–18 (1966).
`
`
`1 The ’400 patent’s earliest priority date falls after the Leahy-Smith America
`Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), took effect.
`Thus, we apply the AIA version of § 103.
`2 WO 2010/111433 A2; Sept. 30, 2010. Ex. 1004.
`3 US 5,506,493; Apr. 9, 1996. Ex. 1005.
`
`5
`
`
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`
`B. Level of Ordinary Skill in the Art
`
`We review the grounds of unpatentability in view of the
`
`understanding of a person of ordinary skill in the art at the time of the
`
`invention. Graham, 383 U.S. at 13, 17. Petitioner contends a person of
`
`ordinary skill would have had a “bachelor’s degree in electrical engineering
`
`or equivalent with one year of experience in the field of electronic circuit
`
`design” and that “[a]dditional education or experience might substitute for
`
`the above requirements.” Pet. 8. (citing Ex. 1006 ¶¶ 47–48).
`
`At this stage, Petitioner’s proposed level of ordinary skill appears
`
`reasonable and comports with the level evidenced by the ’400 patent and the
`
`cited prior art. Therefore, we adopt Petitioner’s articulation of the level of
`
`ordinary skill for the purposes of this Decision.
`
`C. Claim Construction
`
`We construe claims using the same claim construction standard that
`
`would be used to construe the claim in a civil action under 35 U.S.C.
`
`§ 282(b), including construing the claim in accordance with the ordinary and
`
`customary meaning of such claim as understood by one of ordinary skill in
`
`the art and the prosecution history pertaining to the patent. 37 C.F.R.
`
`§ 42.100(b) (2021).
`
`Petitioner states that no claim terms require express construction.
`
`Pet. 9. Petitioner also states that no claim constructions have been advanced
`
`in the parties’ related matters. Pet. 9.
`
`At this stage, we determine no claim terms require express
`
`construction. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir.
`
`2019) (“The Board is required to construe ‘only those terms . . . that are in
`
`controversy, and only to the extent necessary to resolve the controversy.’”)
`
`6
`
`
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999)).
`
`D. Alleged Obviousness Based on Smith
`
`Petitioner includes a limitation-by-limitation comparison of Smith to
`
`each of claims 1, 2, 8, and 10. Pet. 16–55. Below, we review Petitioner’s
`
`showing for claim 1, which we determine to be sufficient at this stage and on
`
`the current record. We turn first to a brief overview of Smith.
`
`1.
`
`Overview of Smith
`
`Smith describes a bidirectional converter that functions in some
`
`embodiments “as a DC to AC energy converter and/or an AC to DC energy
`
`converter within the same device or component.” Ex. 1004 ¶ 5. Among
`
`other things, Smith discloses an H-bridge circuit as depicted in Smith’s
`
`Figure 19, reproduced below.
`
`
`
`7
`
`
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`Ex. 1004, Fig. 19. Smith’s Figure 19 shows an H-bridge Class D Amplifier
`
`with switches Q1-Q4 connected to a MicroController/DSP “2.” Ex. 1004
`
`¶ 34. Smith also discloses an embodiment in which the same H-bridge
`
`circuit has the input and output terminals to create a bridge rectifier that
`
`converts AC supply voltage to a DC output. Ex. 1004 ¶ 99, Fig. 22.
`
`2.
`
`Claim 1
`
`1[p]. An output stage adapted to operate in at least a first
`operating state and a second operating state, the output stage
`comprising:
`
`Petitioner states that to the extent the preamble is limiting, Smith
`
`teaches a bidirectional converter circuit having multiple modes of operation.
`
`Pet. 16 (citing Ex. 1004 ¶¶ 5, 6). In particular, Petitioner cites Smith’s
`
`teachings of an H-bridge “output stage” that, in one mode of operation,
`
`functions as a Class D amplifier producing AC output at a desired frequency,
`
`while in another mode of operation, the H-bridge output stage functions as a
`
`bridge rectifier. Pet. 16 (citing Ex. 1004 ¶¶ 97, 99).
`
`[1(a)] a first, a second, a third and a fourth configurable input/output
`terminals; and,
`
`Petitioner contends Smith’s H-bridge has four configurable
`
`input/output terminals. Pet. 18. In a first operating state, two input/output
`
`terminals at the top of the H-bridge for input from a DC power source and
`
`two input/output terminals at the bottom of the H-bridge for AC output.
`
`Pet. 18 (citing Ex. 1004 ¶¶ 97, 99, Figs. 19, 22). Petitioner argues that one
`
`of ordinary skill in the art would have understood that the end points of
`
`wires connecting to transistors in Figures 19 and 22 of Smith are terminals,
`
`and that these terminals are configurable input/output terminals because they
`
`can be used for input or for output, depending on the operating state.
`
`8
`
`
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`Pet. 19–20 (citing Ex. 1006 ¶¶ 60–63). In an operating state in which the
`
`output stage is used as a bridge rectifier, the same input/output terminals are
`
`reconfigured such that the terminals at the top of the H-bridge are used as
`
`DC output and terminals on the branches of the H-bridge are used as AC
`
`input. Pet. 19 (citing Ex. 1004 ¶ 99).
`
`[1(b)] a first, a second, a third and a fourth switches, each
`having a first main terminal, a second main terminal and a
`control terminal, the control terminal being adapted to receive
`a control signal for controlling the open or closed state of the
`switch,
`
`Petitioner contends Smith satisfies this limitation with its disclosures
`
`of four switches, Q1–Q4, as arranged in Smith’s Figure 19. Pet. 20–21.
`
`Petitioner contends that each of Smith’s four switches includes a first main
`
`terminal, a second main terminal, and a control terminal. Pet. 20 (citing
`
`Ex. 1004 ¶¶ 97, 99, Figs. 19, 22). Petitioner contends that the switches
`
`receive control signals at the control terminal for controlling the open or
`
`closed state of the switches. Pet. 21. Further, Petitioner states that the
`
`switches may receive pulse width modulation outputs from a digital signal
`
`processor to control the drive signals provided to the H bridge. Pet. 21
`
`(citing Ex. 1004 ¶ 97).
`
`[1(c)(i)] wherein, the first input/output terminal is connected to
`the first main terminal of the first switch;
`
`Petitioner contends that Smith shows that in the output stage circuit,
`
`the first input/output terminal is connected to the first main terminal of the
`
`first switch. Pet. 21–22 (citing Ex. 1004 ¶¶ 97, 99, Figs. 19, 22).
`
`9
`
`
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`
`[1(c)(ii)] the second input/output terminal is connected to the
`first main terminal of the second switch;
`
`Petitioner contends Smith shows that in the output stage circuit, the
`
`second input/output terminal is connected to the first main terminal of the
`
`second switch. Pet. 21 (citing Ex. 1004 ¶¶ 97, 99, Figs. 19, 22).
`
`[1(c)(iii)] the second main terminal of the first switch is connected to
`the first main terminal of the third switch through a first branch;
`
`Petitioner contends Smith shows that the second main terminal of the
`
`first switch is connected to the first main terminal of the third switch through
`
`a first branch. Pet. 23–24 (citing Ex. 1004 ¶¶ 97, 99, Figs. 19, 22).
`
`[1(c)(iv)] the second main terminal of the second switch is connected
`to the first main terminal of the fourth switch through a second
`branch;
`
`Petitioner contends Smith shows that the second main terminal of the
`
`second switch is connected to the first main terminal of the fourth switch
`
`through a second branch. Pet. 24–25 (citing Ex. 1004 ¶¶ 97, 99, Figs. 19,
`
`22).
`
`[1(c)(v)] the third input/output terminal is connected to the first
`branch and the fourth input/output terminal is connected to the second
`branch;
`
`Petitioner contends Smith shows that the third input/output terminal is
`
`connected to the first branch and that the fourth input output terminal is
`
`connected to the second branch. Pet. 25–26 (citing Ex. 1004 ¶¶ 97, 99,
`
`Figs. 19, 22).
`
`[1(c)(vi)] the second main terminals of the third and fourth switches
`are both connected to a common node receiving a reference potential;
`and,
`
`Petitioner contends Smith shows that the second main terminal of the
`
`third and fourth switches are both connected to a common node that receives
`
`10
`
`
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`reference potential as a connection to the VDC bus. Pet. 26–27 (citing
`
`Ex. 1004 ¶¶ 97, 99, Figs. 19, 22; Ex. 1006 ¶¶ 67–69).
`
`[1(c)(vii)] wherein, when the first and second input/output terminals
`are configured to operate as input terminals, the third and fourth
`input/output terminals are configured to operate as output terminals;
`and,
`
`Petitioner contends Smith describes multiple operating states,
`
`including a state in which the first and second input/output terminals are
`
`configured to operate as input terminals and the third and fourth input/output
`
`terminals are configured to operate as output terminals. Pet. 28–29 (citing
`
`Ex. 1004 ¶ 97, Fig. 19). In particular, Petitioner contends that in that
`
`operating state, the first and second input/output terminals are configured to
`
`receive a DC from a prior stage such as a half wave pulsating DC. Pet. 28–
`
`29 (citing Ex. 1004 ¶ 97). Petitioner also contends Smith’s H-bridge circuit
`
`provides AC output through the third and fourth input/output terminals that
`
`are configured as output terminals such that the circuit illustrated in
`
`Figure 19 functions as a Class D amplifier and results in a pure or
`
`substantially pure sine wave AC output. Pet. 29 (citing Ex. 1004 ¶ 97).
`
`[1(c)(viii)] when the first and second input/output terminals are
`configured to operate as output terminals, the third and fourth
`input/output terminals are configured to operate as input terminals;
`and,
`
`Petitioner contends Smith discloses this limitation with its description
`
`of an operating state in which switches Q1–Q4 “reverse roles and serve as a
`
`bridge rectifier.” Pet. 29–30 (quoting Ex. 1004 ¶ 99; citing Ex. 1004,
`
`Fig. 22). Petitioner further states that the bridge rectifier receives AC input
`
`through the third and fourth input/output terminals that are configured as
`
`input terminals, and the bridge rectifier outputs a DC signal through the first
`
`11
`
`
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`and second input/output terminals that are now configured as output
`
`terminals. Pet. 30 (citing Ex. 1004 ¶ 99, Fig. 22).
`
`[1(c)(ix)] wherein, in the first operating state, the output stage is
`arranged in a first electrical configuration; and
`
`Petitioner contends Smith discloses this limitation with a first
`
`operating state in which the output stage is arranged in an electrical
`
`configuration that results in a Class D amplifier that takes input from a 200
`
`VDC bus and provides 120 VAC output. Pet. 30–31 (citing Ex. 1004 ¶¶ 97,
`
`Fig. 19).
`
`[1(c)(x)] in the second operating state wherein the output stage is
`arranged in a second electrical configuration different from the first
`configuration.
`
`Petitioner contends Smith discloses this limitation with a second
`
`operating state in which the output stage is arranged in an electrical
`
`configuration that results in a bridge rectifier that takes input from a 120
`
`VAC source and provides output to a 120 VDC bus. Pet. 31–32 (citing
`
`Ex. 1004 ¶ 97, Fig. 22).
`
`3.
`
`Conclusion Regarding Ground 1
`
`Having reviewed Petitioner’s arguments and the cited evidence, we
`
`determine Petitioner has made a sufficient showing that it is reasonably
`
`likely to prevail in its challenge to claim 1 as obvious in view of Smith. We
`
`have also reviewed Petitioner’s arguments and evidence that claims 2, 8,
`
`and 10 would have been obvious in view of Smith. Pet. 32–55. At this
`
`stage and on the current record, we determine Petitioner’s showing for
`
`claims 2, 8, and 10 also establishes a reasonable likelihood that Petitioner
`
`would prevail in its challenge to those claims as obvious in view of Smith.
`
`12
`
`
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`
`E. Alleged Obviousness Based on Smith and Stengel
`
`The Petition includes a limitation-by-limitation comparison of
`
`claim 14 to the combined teachings of Smith and Stengel. Pet. 59–80.
`
`In addition to teachings of Smith similar to those discussed above, Petitioner
`
`cites Stengel for its teachings of an audio speaker. Pet. 80. According to
`
`Petitioner, it would have been obvious for a person of ordinary skill to use
`
`the speaker disclosed in Stengel with the Class-D amplifier circuit disclosed
`
`in Smith “at least because a [person of ordinary skill] would understand that
`
`Class-D amplifiers are designed to be used with speakers” and “because both
`
`references describe full bridge output circuits connected to the output of DC-
`
`DC regulation circuits.” Pet. 80 (citing Ex. 1004 ¶¶ 50, 97–99, Figs. 1, 2,
`
`21; Ex. 1005, 2:20–24, 2:53–56, 4:58–67, 5:3–26, 5:60–65, Figs. 2–4, 6;
`
`Ex. 1006 ¶¶ 91–95).
`
`At this stage and on this record, we determine Petitioner presents a
`
`sufficient showing to establish a reasonable likelihood that it would prevail
`
`in its challenge to claim 14 as obvious in view of Smith and Stengel.
`
`F. Conclusion
`
`On the current record, we determine Petitioner has shown a
`
`reasonable likelihood that it will prevail in its challenge to at least one claim
`
`of the ’400 patent. Accordingly, we institute an inter partes review of
`
`the ’400 patent.
`
`ORDER
`
`
`
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is instituted as to claims 1, 2, 8, 10, and 14 of the ’400 patent on all
`
`grounds asserted in the Petition; and
`
`13
`
`
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is given of the institution of a trial, which
`
`commences on the entry date of this Decision.
`
`
`
`
`
`14
`
`
`
`IPR2022-00716
`Patent 9,705,400 B2
`
`For PETITIONER:
`
`Adam Seitz
`Paul Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`
`
`For PATENT OWNER:
`
`Chad C. Walters
`Andrew Grado
`BAKER BOTTS L.L.P.
`chad.walters@bakerbotts.com
`andrew.grado@bakerbotts.com
`
`15
`
`
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