Case: 20-2092 Document: 82 Page: 1 Filed: 03/24/2022
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`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`INTEL CORPORATION,
`Appellant
`
`v.
`
`QUALCOMM INCORPORATED,
`Appellee
`______________________
`
`2020-2092, 2020-2093
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2019-
`00128, IPR2019-00129.
`______________________
`
`Decided: March 24, 2022
`______________________
`
`GREGORY H. LANTIER, Wilmer Cutler Pickering Hale
`and Dorr LLP, Washington, DC, argued for appellant. Also
`represented by DAVID LANGDON CAVANAUGH, CLAIRE
`HYUNGYO CHUNG, THOMAS SAUNDERS; BENJAMIN S.
`FERNANDEZ, Denver, CO; JAMES M. LYONS, Boston, MA.
`
` ISRAEL SASHA MAYERGOYZ, Jones Day, Chicago, IL, ar-
`gued for appellee. Also represented by THOMAS W. RITCHIE;
`ROBERT BREETZ, DAVID B. COCHRAN, JOSEPH M. SAUER,
`
`

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`Case: 20-2092 Document: 82 Page: 2 Filed: 03/24/2022
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`INTEL CORPORATION v. QUALCOMM INCORPORATED
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`Cleveland, OH; KELLY HOLT, New York, NY; JENNIFER L.
`SWIZE, Washington, DC.
`______________________
`
`Before NEWMAN, REYNA, and CHEN, Circuit Judges.
`REYNA, Circuit Judge.
`
`Appellant Intel Corporation appeals two final written
`decisions by the Patent Trial and Appeal Board finding
`that Intel failed to show that certain claims of U.S. Patent
`No. 9,154,356 are unpatentable as anticipated or obvious.
`Intel contends that the Board misconstrued the claim term
`“carrier aggregation” and that it committed legal and fac-
`tual error in finding no motivation to combine the asserted
`prior art. We hold that the Board’s final written decisions
`are contrary to law and unsupported by substantial evi-
`dence. The decisions of the Board are therefore reversed.
`BACKGROUND
`Appellee Qualcomm Incorporated owns U.S. Patent
`No. 9,154,356 (the “’356 Patent”), titled “Low noise ampli-
`fiers for carrier aggregation.” The ’356 Patent is directed
`to a device and method for receiving wireless communica-
`tions over multiple carrier signals. See ’356 Patent, Ab-
`stract.
`A typical wireless communication may involve combin-
`ing (“multiplexing”) an information signal with a carrier
`signal, transmitting the multiplexed signal to a wireless
`receiver, then removing the carrier signal (“de-multiplex-
`ing”) from the information signal to arrive at the commu-
`nicated message. See generally J.A. 11, 56, 2398–99, 2424,
`5211–12. Often, a receiver will process the message signal
`through a low-noise amplifier (“LNA”)—a component that
`amplifies the information signal while keeping noise to a
`minimum. See ’356 Patent col. 3 ll. 60–61; J.A. 1018, 2402.
`Carrier signals help ensure that communications are
`sent via designated frequency channels. See J.A. 1013–14.
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`INTEL CORPORATION v. QUALCOMM INCORPORATED
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`Each frequency channel has a corresponding maximum
`data rate that limits the amount of information that can be
`transmitted over a certain period of time. J.A. 2397–98,
`2423. One way to increase the maximum data rate of an
`overall communications system is to split a message into
`parts that are then transmitted simultaneously using mul-
`tiple carrier signals over multiple frequency channels.
`J.A. 2398–99, 2403, 2423–24, 2427–28, 2430, 2442. If a re-
`ceiver can compile the segmented pieces of a message upon
`receipt, the communication system is no longer limited to
`the bandwidth and corresponding data rate of a single
`channel. This process can be referred to as carrier aggre-
`gation. Id.
`The ’356 Patent discloses a receiver with a multiple-
`LNA structure that is equipped to receive a carrier-aggre-
`gated signal. Claim 1 is representative:
`1. An apparatus comprising:
`a first amplifier stage configured to be in-
`dependently enabled or disabled, the first
`amplifier stage further configured to re-
`ceive and amplify an input radio frequency
`(RF) signal and provide a first output RF
`signal to a first load circuit when the first
`amplifier stage is enabled, the input RF
`signal employing carrier aggregation com-
`prising transmissions sent on multiple car-
`riers at different frequencies to a wireless
`device, the first output RF signal including
`at least a first carrier of the multiple carri-
`ers; and
`a second amplifier stage configured to be
`independently enabled or disabled, the sec-
`ond amplifier stage further configured to
`receive and amplify the input RF signal
`and provide a second output RF signal to a
`second
`load circuit when the second
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`INTEL CORPORATION v. QUALCOMM INCORPORATED
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`amplifier stage is enabled, the second out-
`put RF signal including at least a second
`carrier of the multiple carriers different
`than the first carrier.
`’356 Patent col. 20 ll. 42–61 (emphasis added).
`PROCEDURAL HISTORY
`On November 9, 2018, Intel filed two petitions for inter
`partes review (“IPR”) challenging the claims of the ’356 Pa-
`tent. See J.A. 9 n.5, 54 n.6. In IPR2019-00128, Intel chal-
`lenged claims 1, 7, 8, 11, 17, and 18 as anticipated by U.S.
`Patent Application Publication No. 2012/0056681 (“Lee”)
`or obvious over the combination of Lee and a technical re-
`port published by a telecommunications standard-setting
`body, Third Generation Partnership Project (the “Feasibil-
`ity Study”). J.A. 4005–89. In IPR2019-00129, Intel chal-
`lenged claims 2–6 and 10 as obvious over Lee or over the
`combination of Lee and the Feasibility Study. J.A. 5005–
`93.1
`On May 27, 2020, the Board issued two final written
`decisions in which it construed the disputed claim term,
`“carrier aggregation.”2 J.A. 1–42, 46–89. Intel argued, cit-
`ing the specification, that “carrier aggregation” should be
`broadly construed to mean “simultaneous operation on
`multiple carriers.” See J.A. 9–10, 54–55; see also ’356 Pa-
`tent col. 1 ll. 32–33 (“A wireless device may support carrier
`aggregation, which is simultaneous operation on multiple
`carriers.”). The Board rejected that construction as overly
`
`1 Although Intel asserted additional grounds for in-
`
`validation in both IPRs, we do not address those grounds
`as they are moot in light of our decision here.
`
`2 On June 4, 2020, the Board issued two Errata to
`the final written decisions to correct recitations of the claim
`language. J.A. 43–45, 90–92. The changes have been
`taken into account in this opinion.
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`INTEL CORPORATION v. QUALCOMM INCORPORATED
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`broad. Instead, the Board relied on the specification, pros-
`ecution history, intrinsic record, and contemporaneous ex-
`trinsic evidence to construe “carrier aggregation” to mean
`“simultaneous operation on multiple carriers that are com-
`bined as a single virtual channel to provide higher band-
`width.” J.A. 9–27, 54–72.
`The parties agreed that the Feasibility Study discloses
`carrier aggregation (as construed by the Board) and that
`Lee discloses all other elements of claim 1. See Appellant’s
`Br. 46–47; J.A. 1628, 1684. Thus, the Board’s decisions
`turned on whether a person of ordinary skill in the art
`(“POSITA”) would have been motivated to combine the
`Feasibility Study with Lee to arrive at the claimed inven-
`tion. See J.A. 35–37, 80–81.
`To establish motivation to combine, Intel proffered dec-
`laration testimony from its expert, Dr. Fay, explaining that
`the Feasibility Study contemplates the application of car-
`rier aggregation to LTE technology to achieve “LTE-
`Advanced.” See J.A. 1092–94 (“LTE-Advanced extends
`LTE release 8 with support for Carrier Aggregation, where
`two or more component carriers (CC) are aggregated in or-
`der to support wider transmission bandwidths up to
`100MHz and for spectrum aggregation.” (quoting Feasibil-
`ity Study)). According to Dr. Fay, the Feasibility Study ex-
`plains that the benefits of carrier aggregation can be
`obtained by using a receiver with “multiple RF front-ends.”
`J.A. 1093–94. Dr. Fay testified that the Feasibility Study
`teaches every RF front-end contains a low-noise amplifier,
`so a POSITA would understand that the Feasibility Study
`effectively recommends the use of something like the cir-
`cuit of Lee—which discloses a multi-LNA receiver.
`J.A. 1093–94.
`Despite Dr. Fay’s testimony, the Board found that Intel
`“d[id] not adequately address why or how [a POSITA]
`would have considered using the Feasibility Study’s carrier
`aggregated signal with Lee’s amplifier blocks, when Lee
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`INTEL CORPORATION v. QUALCOMM INCORPORATED
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`does not teach combining carriers as a single virtual chan-
`nel.” J.A. 39; see also J.A. 84. The Board rejected Intel’s
`argument as “overly generic” and noted that Intel “d[id] not
`explain why or how using Lee’s particular circuitry would
`be necessary ‘to achieve [the] benefits and unlock the fea-
`tures of LTE Advanced.’” Id. The Board concluded that
`Intel had not met its burden to show that a POSITA would
`be motivated to combine the Feasibility Study with Lee
`and, consequently, that Intel failed to show unpatentabil-
`ity of the challenged claims. J.A. 41, 86. Intel appeals the
`Board’s decisions. We have jurisdiction pursuant to
`28 U.S.C. § 1295(a)(4)(A).
`STANDARD OF REVIEW
`We review the Board’s legal conclusions de novo and its
`factual findings for substantial evidence. ACCO Brands
`Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir.
`2016). Substantial evidence “means such relevant evi-
`dence as a reasonable mind might accept as adequate to
`support a conclusion.” In re Gartside, 203 F.3d 1305, 1312
`(Fed. Cir. 2000) (quoting Consol. Edison Co. of N.Y., Inc.
`v. NLRB, 305 U.S. 197, 229–30 (1938)).
`Obviousness is a question of law with underlying fac-
`tual issues relating to the “scope and content of the prior
`art, differences between the prior art and the claims at is-
`sue, the level of ordinary skill in the pertinent art, and any
`objective indicia of non-obviousness.” Randall Mfg. v. Rea,
`733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing KSR Int’l Co.
`v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham v. John
`Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)). “The
`presence or absence of a motivation to combine references
`in an obviousness determination is a pure question of fact,”
`which, as noted above, we review for substantial evidence.
`Par Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196
`(Fed. Cir. 2014) (quoting Alza Corp. v. Mylan Lab’ys, Inc.,
`464 F.3d 1286, 1289 (Fed. Cir. 2006)).
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`Case: 20-2092 Document: 82 Page: 7 Filed: 03/24/2022
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`INTEL CORPORATION v. QUALCOMM INCORPORATED
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`DISCUSSION
`I
`As a threshold matter, we first address Qualcomm’s
`contention that Intel lacks standing to appeal the Board’s
`final written decisions on grounds that Intel fails to estab-
`lish a non-speculative risk of an infringement suit by Qual-
`comm. Appellee’s Br. 22–33.
`This is not the first time this court has addressed this
`standing issue between these parties. In two prior cases,
`we found Intel had standing on appeal based on the fact
`that Qualcomm sued Apple Inc. for infringement of the pa-
`tent at issue, and that a main component of the accused
`products identified in Qualcomm’s infringement conten-
`tions was manufactured by Intel. Appellant’s Reply
`Br. 24–30. Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 808
`(Fed. Cir. 2021) (determining that Intel had standing to
`bring its appeals); Intel Corp. v. Qualcomm Inc., 21 F.4th
`784, 789–90 (Fed. Cir. 2021) (same). We see no reason to
`find otherwise in this appeal. As such, Intel has demon-
`strated a non-speculative risk of being sued by Qualcomm
`for infringement and therefore has standing to bring this
`appeal. See Grit Energy Sols., LLC v. Oren Techs., LLC,
`957 F.3d 1309, 1319–20 (Fed. Cir. 2020). We now turn to
`the merits of Intel’s appeal.
`
`II
`On appeal, Intel challenges the Board’s construction of
`the claim term “carrier aggregation,” as well as the Board’s
`finding of no motivation to combine the asserted prior art.
`See Appellant’s Br. 28–45. We conclude that the Board
`committed legal and factual error in assessing motivation
`to combine Lee with the Feasibility Study, even under the
`Board’s construction of “carrier aggregation.”
`Obviousness requires, among other things, a finding
`that a skilled artisan would have been motivated to com-
`bine the teachings of prior art to arrive at the claimed
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`invention. See OSI Pharms., LLC v. Apotex Inc., 939 F.3d
`1375, 1382 (Fed. Cir. 2019) (quoting Regents of Univ. of
`Cal. v. Broad Inst., Inc., 903 F.3d 1286, 1291 (Fed. Cir
`2018)). The inquiry into the existence of a motivation to
`combine is a flexible one—we assume a POSITA is a person
`of ordinary creativity with common sense, common wis-
`dom, and common knowledge. See Fleming v. Cirrus De-
`sign Corp., No. 21-1561, — F.4th —, 2022 WL 710549, at *6
`(Fed. Cir. 2022) (citing Randall Mfg., 733 F.3d at 1362;
`KSR, 550 U.S. at 421). In light of a POSITA’s knowledge
`and creativity, an obviousness determination does not re-
`quire prior art to expressly state a motivation for every ob-
`vious combination. See, e.g., id. Moreover, there is no
`requirement that a motivation to combine must be sepa-
`rately expressed in each prior art reference.
`Here, the Board rejected Intel’s position on grounds
`that Intel “d[id] not adequately address why an ordinarily
`skilled artisan would have considered using the Feasibility
`Study’s carrier aggregated signal with Lee’s amplifier
`blocks, when Lee does not teach combining carriers as a sin-
`gle virtual channel.” J.A. 39, 84 (emphasis added). But
`whether Lee teaches carrier aggregation is immaterial be-
`cause, as the parties agree, the Feasibility Study teaches
`carrier aggregation. The Board’s requirement that both
`references teach carrier aggregation was error.
`Furthermore, the Board erred insofar as it penalized
`Intel for failing to “explain why or how using Lee’s partic-
`ular circuitry would be necessary ‘to achieve [the] benefits
`and unlock the features of LTE Advanced.’” J.A. 39, 84
`(emphases added). This court has recognized that an obvi-
`ousness showing “does not require that a particular combi-
`nation must be the preferred, or the most desirable,
`combination described in the prior art in order to provide
`motivation for the current invention.” Novartis Pharms.
`Corp. v. West-Ward Pharms. Int’l Ltd., 923 F.3d 1051, 1059
`(Fed. Cir. 2019) (quoting In re Fulton, 391 F.3d 1195, 1200
`(Fed. Cir. 2004)). Intel was required to show only that
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`“‘there is something in the prior art as a whole to suggest
`the desirability . . . of making the combination,’ not
`whether there is something in the prior art as a whole to
`suggest that the combination is the most desirable combi-
`nation available.” Fulton, 391 F.3d at 1200 (quoting In re
`Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992)).
`Applying the appropriate legal standard, the asserted
`prior art discloses the desirability of combining the Feasi-
`bility Study with Lee to reach the claimed invention in or-
`der to claim the benefit of carrier aggregation: more
`bandwidth. As identified by Intel’s expert, the Feasibility
`Study expressly contemplates the benefits of carrier aggre-
`gation as applied in the LTE context, and that those bene-
`fits could be achieved by using a receiver with multiple RF
`front ends. Dr. Fay also explained that every RF front end
`contains a low-noise amplifier, so a skilled artisan would
`understand that the Feasibility Study effectively recom-
`mends combining carrier aggregation with a device like the
`receiver taught in Lee, which is a multi-LNA receiver.
`J.A. 1093–94. Whether Lee presents the best combination
`to achieve the claimed invention is irrelevant. See Novar-
`tis, 923 F.3d at 1059.
`The evidence of record clearly shows a skilled artisan
`would have been motivated to achieve the benefits of car-
`rier aggregation with a multi-LNA receiver like Lee’s. Ac-
`cordingly, we reverse the Board’s finding of no motivation
`to combine. See Corning v. Fast Felt Corp., 873 F.3d 896,
`902–03 (Fed. Cir. 2017) (reversing where the “only one per-
`missible factual finding” was that a skilled artisan would
`be motivated to combine the prior-art references); Belden
`Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077 (Fed. Cir. 2015)
`(reversing under similar circumstances).
`CONCLUSION
`The Board’s final written decisions finding that a
`skilled artisan would not have been motivated to combine
`the asserted prior art to arrive at the claimed invention are
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`contrary to law and unsupported by substantial evidence.
`Under the correct legal standard, Intel met its burden in
`showing that a skilled artisan would have been motivated
`to combine Lee with the Feasibility Study to arrive at the
`claimed invention. Thus, we reverse and hold that claims
`1–8, 10–11, and 17–18 of the ’356 Patent are unpatentable
`as obvious.
`
`REVERSED
`COSTS
`
`Costs to Intel.
`
`