Trials@uspto.gov
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`QUALCOMM, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01154
`Patent 8,698,558 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, DANIEL N. FISHMAN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
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` Paper 9
`
`
`
` Entered: February 6, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`QUALCOMM, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01154
`Patent 8,698,558 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, DANIEL N. FISHMAN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2018-01154
`Patent 8,698,558 B2
`
`INTRODUCTION
`I.
`Intel Corporation (“Petitioner”) requests inter partes review of claims
`15–20 of U.S. Patent No. 8,698,558 B2 (“the ’558 patent,” Ex. 1201)
`pursuant to 35 U.S.C. §§ 311 et seq. Paper 3 (“Petition” or “Pet.”).
`Qualcomm Incorporated (“Patent Owner”) filed a Preliminary Response.
`Paper 8 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . 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(a).
`Upon consideration of the Petition and Patent Owner’s Preliminary
`Response, we conclude the information presented shows there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of claims 15–20 of the ’558 patent.
`
`A. Related Proceedings
`Apple Inc. is identified as an additional real party-in-interest. Pet. 2.
`The parties inform us that the ’558 patent is presently asserted against
`Petitioner in the proceeding captioned Qualcomm Inc. v. Apple Inc., Case
`No. 3:17-cv-01375-DMS-MDD (S.D. Cal.) and against Apple in a
`proceeding before the International Trade Commission (“ITC”) captioned In
`the Matter of Certain Mobile Elec. Devices and Radio Frequency
`Components Thereof, Inv. No. 337-TA-1065. Pet. 2; Paper 5, 2. The parties
`also inform us that additional claims of the ’558 patent are at issue in related
`inter partes reviews, specifically claims 1–9 of the 558 patent in IPR2018-
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`01153, claims 13 and 14 of the ’558 patent in IPR2018-01552, and claims 10
`and 11 in IPR2019-01240. Pet. 2–3; Paper 5, 2.
`
`B. The ʼ558 Patent
`The ’558 patent is titled, “Low-Voltage Power-Efficient Envelope
`Tracker” and discloses “[t]echniques for efficiently generating a power
`supply for a power amplifier” used in communication system transmitters.
`Ex. 1201, 1:30–31, [54]. The ’558 patent discloses that,
`[a] transmitter typically includes a power amplifier (PA) to
`provide high transmit power for the output RF signal. The power
`amplifier should be able to provide high output power and have
`high power-added efficiency (PAE). Furthermore, the power
`amplifier may be required to have good performance and high
`PAE even with a low battery voltage.
`Id. at 1:21–26. The ’558 patent also discloses that the power amplifier
`apparatus may include: (1) in one embodiment, an envelope amplifier and a
`boost converter; (2) in a second embodiment, a switcher, an envelope
`amplifier, and a power amplifier; or (3) in a third embodiment, a switcher
`that may sense an input current and generate a switching signal to charge
`and discharge an inductor providing a supply current. Id. at 1:31–34; 1:51–
`52; 1:66–2:2.
`Figure 3, below, shows an exemplary switcher and envelope
`amplifier. Id. at 4:39–42.
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`Figure 3 shows switcher 160a and envelope amplifier 170a, which, in turn,
`includes operational amplifier (op-amp) 310 that receives the envelope
`signal. Id. at 4:42–63. Driver 312 has output (R1) coupled to the gate of P-
`channel metal oxide semiconductor (PMOS) transistor 314 and a second
`output (R2) coupled to N-channel MOS (NMOS) transistor 316. Id. PMOS
`transistor 318 in envelope amplifier 170a is connected to receive C1 control
`signal via Vboost voltage from Boost Converter 180. Id. PMOS transistor
`320 in envelope amplifier 170a receives a C2 control signal and Vbat
`voltage. Id.
`
`Within switcher 160a, current sense amplifier 330 has its input
`coupled to current sensor 164 and its output coupled to an input of switcher
`driver 332. Id. at 4:64–66. Vbat voltage of switcher 160a provides current
`to power amplifier 130 via inductor 162 when the switcher is ON, and
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`inductor 120 provides stored energy to power amplifier 130 during the OFF
`state of the switcher circuit. In the ON state, the switcher is joined with the
`current from the envelope amplifier 170a (Ienv) to provide a combined
`current (Ipa) to PA 130. See id. at 3:21–27.
`The ’558 patent also discloses another embodiment for switcher
`circuit of Figure 3—specifically a switcher that uses offset current to lower
`the Isen current from the current sensor, keeping the switcher in the ON state
`for a longer time and producing a larger Iind current provided to power
`amplifier 130. Id. at 7:5–48, Figure 5.
`
`C. Illustrative Claims
`Claims 15 is independent and claims 16–20 are dependent. Claim 15
`is illustrative and reproduced below (Ex. 1201, 13:19–34).
`15. An apparatus comprising:
`an inductor operative to receive a switching signal
`and provide a supply current; and
`a switcher operative to sense an input current and
`generate the switching signal to charge and discharge the
`inductor to provide the supply current, the switcher adding
`an offset to the input current to generate a larger supply
`current via the inductor than without the offset, wherein
`the switcher comprises
`a summer operative to sum the input current and an
`offset current and provide a summed current,
`a current sense amplifier operative to receive the
`summed current and provide a sensed signal, and
`a driver operative to receive the sensed signal and
`provide at least one control signal used to generate the
`switching signal for the inductor.
`
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`D. Asserted Grounds of Unpatentability
`The information presented in the Petition sets forth proposed grounds
`of unpatentability for the challenged claims of the ’558 patent as follows
`(Pet. 37):
`
`Reference[s]
`Kwak1
`Kwak
`Kwak and Choi 20102
`
`Basis
`35 U.S.C. § 102
`35 U.S.C. § 103
`35 U.S.C. § 103
`
`Claim[s] Challenged
`15, 17, 18, and 20
`16
`19
`
`
`Petitioner also relies on the Declaration of Dr. Alyssa Apsel (Ex. 1203) in
`support of the Petition.
`
`II. ANALYSIS
`A. Claim Interpretation
`This inter partes review is based on a petition filed before November
`13, 2018, and we construe the claims challenged in such a petition by
`applying the broadest reasonable interpretation in light of the specification.
`37 C.F.R. § 42.100(b) (2016); see Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`
`
`1 T.W. Kwak, et al., A 2 W CMOS hybrid switching amplitude
`modulator for EDGE polar transmitters, IEEE JOURNAL OF SOLID-STATE
`CIRCUITS 2666-76 (2007) (Ex. 1211, “Kwak”).
`2 Jinsung Choi, et al., Envelope Tracking Power Amplifier Robust to
`Battery Depletion,” Microwave Symposium Digest (MTT), 2010
`IEEE MTT-S INTERNATIONAL 1074–1077 (2010) (Ex. 1207, “Choi 2010”).
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`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner acknowledges the broadest reasonable interpretation
`requirement but argues that “this [instant] Petition does not depend on
`whether the claims are analyzed under the broadest reasonable interpretation
`standard or the standard established by Phillips . . . .” Pet. 35. Accordingly,
`Petitioner asserts that their proposed claim constructions “are either the
`correct claim construction under Phillips or are an even narrower
`construction proposed by the Patent Owner.” Id. Petitioner argues that
`“[t]he challenged claims are invalid under those constructions and also
`would be invalid under any broader construction based on the broadest
`reasonable interpretation standard.” Id.
`Patent Owner does not address Petitioner’s proposed claim
`constructions for two terms, which we adopt below from Patent Owner’s
`proposed constructions in the ITC litigation. See Prelim. Resp. 1–6.
`On the record before us, the ’558 patent is not expired, the Petition
`was filed prior to the change of our rules regarding claim construction, and
`neither party requested that the Phillips standard be applied.3 Thus, we
`apply the broadest reasonable interpretation to the terms discussed below.
`1. “current sense amplifier” (claim 15)
`Petitioner offers a claim construction for “current sense amplifier”
`
`3 The applicable version of 37 C.F.R. § 42.100(b) requires that a request to
`apply the Phillips standard “must be made in the form of a motion under
`§ 42.20, within 30 days from the filing of the petition.”
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`(claim 15) to mean an “amplifier that produces a voltage from a current” that
`is based on the Patent Owner’s constructions in the parallel ITC litigation.
`Pet. 35–36 (citing Ex. 1223, 11–12). Petitioner argues that the ITC
`construction is consistent with the ’558 patent specification and the
`knowledge of a person of ordinary skill in the art. Pet. 35–36 (Ex. 1201,
`4:64–66, 5:7–10, 5:18–20). Patent Owner does not contest this construction.
`For purposes of this Institution Decision and based on this preliminary
`record, we adopt the construction of “current sense amplifier” to mean an
`“amplifier that produces a voltage from a current.”
`2. “envelope signal” (claim 18)
`Petitioner offers a claim construction for “envelope signal” (claim 18)
`to mean a “signal indicative of the upper bound of the output RF signal,”
`which is the construction proposed by Patent Owner in the ITC litigation.
`Pet. 36; Ex. 1223, 13–14. Although Petitioner argues this construction is
`narrower than the alternative offered in the ITC litigation, Petitioner does
`not argue for a broader construction. Id.
`Based on the record before us and for purposes of this Institution
`Decision, we adopt the ITC litigation construction for “envelope signal”
`(claim 18) to mean a “signal indicative of the upper bound of the output RF
`signal.”
`
`B. Principles of Law
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987). The principle of inherency under anticipation requires
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`that any information missing from the reference would nonetheless be
`known to be present in the subject matter of the reference, when viewed by
`persons experienced in the field of the invention. However, “anticipation by
`inherent disclosure is appropriate only when the reference discloses prior art
`that must necessarily include the unstated limitation.” Transclean Corp. v.
`Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (internal
`citation omitted); see also In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
`1999) (that a feature in the prior art reference “could” operate as claimed
`does not establish inherency).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations.4 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`The Supreme Court has made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`
`4 Patent Owner does not present arguments or evidence of such secondary
`considerations in its Preliminary Response. Therefore, at this preliminary
`stage, we do not consider secondary considerations as part of our analysis.
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`Patent 8,698,558 B2
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`Id. at 417. Reaching this conclusion, however, requires more than a mere
`showing that the prior art includes separate references covering each
`separate limitation in a claim under examination. Unigene Labs., Inc. v.
`Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
`requires the additional showing that a person of ordinary skill at the time of
`the invention would have selected and combined those prior art elements in
`the normal course of research and development to yield the claimed
`invention. Id.
`
`C. Level of Ordinary Skill in the Art
`Petitioner argues a person of ordinary skill in the art related to the
`’558 patent at the time of filing, would have a Master’s degree in electrical
`engineering, computer engineering, or computer science, and would also
`have at least two years of relevant experience, or a Bachelor’s degree in one
`of those fields and four years of relevant experience, where relevant
`experience “refers to experience with mobile device architecture as well as
`transmission and power circuitry for radio frequency devices.” Pet. 36–37
`(citing Ex. 1201, Abstract, 1:7–9, 30–31; Ex. 1203 ¶¶ 84–85).
`Patent Owner does not contest Petitioner’s level of skill. On the
`record before us and for purposes of this Decision, we are persuaded by
`Petitioner’s definition of the level of ordinary skill in the art and we find this
`definition is commensurate with the level of ordinary skill in the art as
`reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in
`
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`Patent 8,698,558 B2
`the art does not give rise to reversible error where the prior art itself reflects
`an appropriate level and a need for testimony is not shown.”) (internal
`quotation marks omitted); see also In re GPAC Inc., 57 F.3d 1573, 1579
`(Fed. Cir. 1995). Here, as Petitioner has asserted, we discern the prior art, as
`well as the ’558 patent, require a degree of knowledge that is specific to
`mobile device architecture as well as transmission and power circuitry for
`radio frequency devices. See Pet. 36–37; Ex. 1201, Abstract, 1:7–9, 30–31.
`
`D. Section 314(a) Discretion
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a) (authorizing institution of an inter partes review under particular
`circumstances, but not requiring institution under any circumstances);
`Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the
`PTO is permitted, but never compelled, to institute an IPR proceeding”).
`Patent Owner argues we should exercise our discretion to deny this
`Petition under 35 U.S.C. § 314(a) because the filing of four petitions against
`the same patent is abusive and unnecessary duplication of proceedings.
`Prelim. Resp. 19–22. Specifically, Patent Owner argues that dividing the
`challenges into four Petitions which normally fit into one or two petitions is
`not in the interest of “efficient administration of the Office” nor promotes
`“the ability of the Office to timely complete proceedings.” Prelim. Resp.
`20–21 (see, infra Section I.A. noting related petitions). Patent Owner also
`asserts that, “Petitioner has divided its challenges to the ’558 Patent claims
`that would normally fit into one or two petitions, hoping to increase its odds
`of institution.” Id. at 20. Petitioner did not address this issue.
`
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`Although, in view of SAS,5 the Board exercises its discretion for each
`petition to institute all claims and grounds or no claims and grounds, Patent
`Owner’s assertion that splitting its claims and grounds into four petitions
`when one would suffice is inapposite. This practice is not necessarily
`improper (see Rules of Practice for Trials Before the Patent Trial and
`Appeal Board and Judicial Review of Patent Trial and Appeal Board
`Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,635 (Aug. 14, 2012)
`(response to Comment 91, explaining that filing multiple petitions is an
`alternative to requesting a waiver of page, now word, counts)). For
`example, there may be appropriate reasons for Petitioner to divide the claims
`and grounds into multiple petitions, such as to logically separate different
`claim sets for purposes of analysis and to avoid subjecting all claims to the
`all or nothing decision required by SAS. The SAS decision does not preclude
`this practice.
`In the present case, the four petitions were all filed on the same day.6
`Each of the four petitions challenge non-overlapping subsets of the claims of
`the ’558 patent, largely asserting different combinations of prior art. On this
`record, we discern no prejudice to Patent Owner in Petitioner’s filing
`strategy regarding the four petitions directed to the ’558 patent. Petitioner
`did not wait to review Patent Owner’s Preliminary Response or our
`institution decision in one case before filing a next petition.
`
`5 The Supreme Court held that a decision to institute under 35 U.S.C. § 314
`may not institute on less than all claims challenged in the petition. SAS Inst.,
`Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“SAS”).
`6 Each of these four petitions was filed on the same day: June 28, 2018. See
`Paper 5, 1 (IPR2018-01152); Paper 5, 1 (IPR2018-01153); Paper 7, 1
`(IPR2018-01240)); Paper 7, 1 (IPR2018-01154).
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`When determining whether to exercise our discretion under § 314(a),
`we consider the following non-exhaustive factors:
`1. whether the same petitioner previously filed a petition directed
`to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed to
`the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357,
`Paper 19 at 15–16 (PTAB Sept. 6, 2017) (precedential).7 These factors do
`not lead us to exercise our discretion to deny institution based on § 314(a).
`Based on the timing of the filing of the four petitions and their non-
`overlapping challenges to the claims of the ’558 patent, factors 1 through 5
`
`
`7 Citing NVIDIA Corp. v. Samsung Elecs. Co., Case IPR2016-00134, slip op.
`at 6–7 (PTAB May 4, 2016)(Paper 9)).
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`above do not weigh in favor of exercising discretion to deny under § 314(a).8
`As to factor 6, we do not find that evaluating Petitioners’ grounds across
`four petitions wastes Board resources. Indeed, the asserted grounds across
`the four petitions are similar and address distinct sets of claims that will
`allow the Board to efficiently evaluate the four petitions and potentially
`consolidate them if warranted. Finally with regard to factor 7, we do not
`find that the Board’s resources will be tasked to the degree that final written
`decisions in these proceedings will not be timely completed.
`For these reasons, we decline to exercise our discretion under § 314(a)
`to deny institution.
`
`E. Anticipation by Kwak
`1. Overview of Kwak (Ex. 1211)
`Kwak is a 2007 paper that discloses a “hybrid switching amplifier”
`that comprises a linear amplifier and a switching amplifier. Ex. 1211, 2666
`(“To achieve both high efficiency and high speed, [the proposed hybrid
`switching amplifier] consists of a wideband buffered linear amplifier
`[envelope amplifier] as a voltage source and a PWM [pulsewidth
`modulation] switching amplifier [switcher] with a 2 MHz switching
`frequency as a dependent current source.”). Figure 5 of Kwak, shown below
`
`
`8 We are also cognizant of the estoppel provision of 35 U.S.C. § 315(e),
`which estops a petitioner from asserting in a civil action that a “claim is
`invalid on any ground that the petitioner raised or reasonably could have
`raised during that inter partes review.” 35 U.S.C. § 315(e)(2). This
`requirement requires a petitioner to decide the breadth of the challenge to
`bring given the risk of estoppel. Accordingly, the statute contemplates that a
`petitioner may decide that the appropriate breadth of a challenge warrants
`multiple petitions.
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`as annotated by Petitioner (Pet. 29–30), shows the hybrid switching
`amplifier disclosed in Kwak. Ex. 1211, Fig. 5.
`
`
`
`Figure 5 of Kwak shows the hybrid supply generator with a
`feedforward path so the input signal can directly control the switching
`amplifier. Ex. 1211, 2668. Kwak teaches that “[a] feedforward path, a
`PWM control, and a third-order ripple filter are used to reduce the current
`burden of the linear amplifier.” Id. at Abstract. Kwak concludes by
`proposing “a CMOS hybrid switching amplitude modulator” that is based on
`a hybrid switching technique that achieves both high efficiency and high
`speed.” Id. at 2676.
`
`2. Analysis
`Petitioner argues that claims 15, 17, 18, and 20 are anticipated by
`Kwak. Pet. 38–59 (citing Ex. 1203 ¶¶ 87–129).
`
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`Petitioner provides argument and evidence, citing Figures 5 and 6 of
`Kwak, to support its contention that Kwak discloses the inductor limitation
`of claim 15 (Pet. 38–41, 44–45) and the switcher operative to sense an input
`current and generate the switching signal to charge and discharge the
`inductor limitation of claim 15 (id. at 41–49). Petitioner provides argument
`and evidence that Kwak discloses the “switcher adding an offset to the input
`current to generate a larger supply current via the inductor than without the
`offset” limitation explaining that Kwak discloses these limitation in
`operation. Id. at 47–49. Finally, Petitioner asserts that Kwak discloses the
`switcher comprises a summer circuit, a current sense amplifier that receives
`the summed current, and “a driver operative to receive the sensed signal and
`provide a control signal to generate the inductor switching signal. Id. at 49–
`51.
`
`Petitioner provides similar arguments and evidence for dependent
`claims 17, 18, and 20, asserting that Kwak discloses the additional
`limitations of these dependent claims. Id. at 51–59.
`Patent Owner contends that Petitioner improperly combines different
`embodiments from Kwak. Prelim. Resp. 13–19. Specifically, Patent Owner
`contends,
`The Petition relies on the hybrid switching amplifier shown in
`Fig. 5 of Kwak as allegedly disclosing the bulk of this claim
`element, but then relies on Kwak’s Fig. 6 for the claim
`requirement of “the switcher adding an offset to the input
`current.” See Petition at 42-49. To this end, the Petitioner states
`that Fig. 6 of Kwak “is a detailed implementation of the type of
`circuit show in Figure 5.” Id. at 44. Kwak, however, describes
`Figures 5 and 6 as different embodiments, and [Petitioner] Intel
`has failed to meet its burden by providing any rationale for
`combining these different embodiments to support a finding of
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`anticipation under 35 U.S.C. § 102. Microsoft Corp. v. Biscotti,
`Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017) (crediting the Board’s
`explanation that “anticipation is not proven by multiple, distinct
`teachings that the artisan might somehow combine to achieve the
`claimed invention.”) (citations omitted).
`Prelim. Resp. 13. Patent Owner argues “[Petitioner] fails to provide any
`explanation of how separate embodiments in the cited Kwak reference
`would allegedly be understood by a [Person of Ordinary Skill in the Art] to
`anticipate claim 15.” Id. at 14.
`Patent Owner contends that Figures 5 and 6 of Kwak are different
`embodiments because Figure 6 “employs a third-order ripple filter and
`current feedback not included in [Figure] 5 and replaces the summer and
`integrator of [Figure] 5 with a combined ‘summing circuit and integrator’
`that has three inputs instead of two and operates in a different manner.” Id.
`at 16. Patent Owner argues that the Kwak reference distinguishes Figure 6
`from the feedforward path shown in Figure 5 by adding a “high-frequency
`current through the ripple filter” to be used with the summing circuit. Id. at
`17. Patent Owner further argues that, like the petition in Biscotti, Petitioner
`has failed to address Kwak’s distinction between the embodiments of
`Figures 5 and 6 and why an ordinarily skilled artisan would combine these
`different embodiments.
`Petitioner states Figure 6 in Kwak is a detailed implementation of the
`type of circuit shown in Figure 5. Pet. 44. Petitioner’s argument is
`supported by Kwak that states “Fig. 6 shows the detailed circuit of the
`hybrid switching amplifier.” On the present record, it is not clear that the
`Kwak passage cited by Patent Owner distinguishes Figure 5 from Figure 6,
`or merely provides additional details of the circuit disclosed by Kwak.
`17
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`IPR2018-01154
`Patent 8,698,558 B2
`At this stage, Petitioner presents sufficient argument and evidence that
`Figure 6 discloses details of the circuit of Figure 5 that, together, show
`hybrid switching amplifier with the feedforward path and that these figures
`disclose the limitations of claim 15. On the present record, we credit Dr.
`Apsel’s testimony that “Figure 6 of Kwak—which is a detailed
`implementation of the type of circuit shown in Figure 5—show these same
`features [shown in Figure 5] (with similar components in both figures
`highlighted . . . as in Figure 5).” Ex. 1203 ¶ 96; Pet. 44–45 (citing Ex. 1203
`¶¶ 94–96). Crediting Petitioner’s argument and Dr. Apsel’s supporting
`testimony does not mean with we have reached a final decision as to whether
`Petitioner’s argument and evidence relies on different elements from Figure
`6 not present in Figure 5 and/or whether Figure 6 is distinguished from
`Figure 5, such that they are separate hybrid switching amplifiers and
`separate embodiments.
`Based on a review of the present record, we are persuaded Petitioner’s
`arguments and evidence are sufficient on this preliminary record to show a
`reasonable likelihood of prevailing in showing that claims 15, 17, 18, and 20
`would have been anticipated by Kwak.
`
`F. Obviousness based, in part, on Kwak
`1. Overview of Choi 2010 (Ex. 1207)
`Choi 2010 is a paper titled “Envelope Tracking Power Amplifier
`Robust to Battery Depletion” that describes “[a] wideband envelope tracking
`power amplifier” with an integrated boost converter to keep a stable
`operation of the power amp supply modulator. Ex. 1207, 1074.
`
`
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`IPR2018-01154
`Patent 8,698,558 B2
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`2. Analysis
`Petitioner contends that: (1) claim 16 would have been obvious in
`view of Kwak (Pet. 59–61) and (2) claim 19 would have been obvious in
`view of Kwak and Choi 2010 (id. at 61–67). Petitioner also relies on the
`declaration testimony of Dr. Apsel to support its contentions. Id. at 59–67
`(citing Ex. 1203). Patent Owner does not challenge Petitioner’s mapping of
`the limitations to the cited prior art.
`For each of the proposed grounds, we find that Petitioner provides
`sufficient articulated rationales for combining Kwak and Choi 2010. Pet.
`63–67; Ex. 1203 ¶¶ 134–138. Petitioner also provides sufficient argument
`and evidence to support that the applied references teaches the limitations of
`dependent claims 16 and 19. Pet. 59–63; Ex. 1203 ¶¶ 125–129, 130–133,
`140.
`
`Having reviewed the parties’ contentions as to the obviousness
`grounds listed above, we determine Petitioner’s arguments and evidence are
`sufficient on this preliminary record to show a reasonable likelihood that
`Petitioner would prevail in proving unpatentability of claim 16 over Kwak;
`and claim 19 over Kwak and Choi 2010.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that at least one claim of the ’558 patent is unpatentable.
`At this preliminary stage, we have not made a final determination with
`respect to the patentability of the challenged claims or any underlying
`factual and legal issues.
`
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`Patent 8,698,558 B2
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`IV. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 15–20 of U.S. Patent No. 8,698,558 B2 is instituted with
`respect to all grounds set forth in the Petition; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4(b), inter partes review of U.S. Patent No. 8,698,558 B2 shall
`commence on the entry date of this Order, and notice is hereby given of the
`institution of a trial.
`
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`IPR2018-01154
`Patent 8,698,558 B2
`PETITIONER:
`David L. Cavanaugh
`Richard Goldenberg
`Theodoros Konstantakopoulos
`WILMER CUTLER PICKERING HALE AND DORR LLP
`david.cavanaugh@wilmerhale.com
`richard.goldenberg@wilmerhale.com
`theodoros.konstantakopoulos@wilmerhale.com
`
`PATENT OWNER:
`Joseph M. Sauer
`David B. Cochran
`Richard A. Graham
`David M. Maiorana
`Joshua R. Nightingale
`Matthew W. Johnson
`JONES DAY
`jmsauer@jonesday.com
`dcochran@jonesday.com
`ragraham@jonesday.com
`dmaiorana@jonesday.com
`jrnightingale@jonesday.com
`mwjohsnon@jonesday.com
`
`
`
`
`
`
`21
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