Qualcomm Incorporated

Patent Trials and Appeals Board

Jul 8, 2020

IPR2019-00048 (P.T.A.B. Jul. 8, 2020)

Trials@uspto.gov Paper 36
571-272-7822 Date: July 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INTEL CORPORATION,
Petitioner

v.

QUALCOMM INCORPORATED,
Patent Owner.
____________

IPR2019-00048
Patent 9,154,356 B2
____________

Before MICHELLE N. WORMMEESTER, SCOTT B. HOWARD,
and AARON W. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

JUDGMENT
FINAL WRITTEN DECISION
No Challenged Claims Unpatentable
35 U.S.C. § 318(a)
IPR2019-00048
Patent 9,154,356 B2

i
TABLE OF CONTENTS
I.  INTRODUCTION ................................................................................ 1 
A.  Background ................................................................................ 1 
B.  Related Matters .......................................................................... 1 
C.  The ’356 Patent .......................................................................... 2 
D.  The Claimed Subject Matter ...................................................... 6 
E.  Evidence Relied Upon ................................................................ 7 
1.  Jeon .................................................................................. 7 
2.  Xiong ................................................................................ 8 
3.  Youssef ............................................................................ 9 
4.  The Feasibility Study ..................................................... 10 
F.  Grounds of Unpatentability ...................................................... 10 
II.  ANALYSIS ........................................................................................ 10 
A.  Level of Ordinary Skill in the Art ............................................ 10 
B.  Construction of “Carrier Aggregation” .................................... 11 
1.  The Claim Language ...................................................... 12 
2.  The Written Description ................................................ 13 
3.  The File History ............................................................. 16 
a.  Hirose ................................................................... 16 
b.  Kaukovuori .......................................................... 18 
c.  Other References of Record ................................ 19 
4.  Extrinsic Evidence ......................................................... 20 
5.  The ITC Investigation .................................................... 22 
6.  Conclusion ..................................................................... 23 
C.  Patentability of Claims 1, 9, 10, 17, and 18 ............................. 24 
1.  Obviousness in View of Jeon and
Xiong (Grounds 1 and 2) ............................................... 24 
IPR2019-00048
Patent 9,154,356 B2

ii
2.  Obviousness in View of Jeon, Xiong,
and The Feasibility Study (Grounds 3 and 4) ................ 25 
III.  CONCLUSION .................................................................................. 28 
IV.  ORDER ............................................................................................... 29 

IPR2019-00048
Patent 9,154,356 B2

1
I. INTRODUCTION
A. Background
Intel Corporation (“Petitioner”) filed a Petition for inter partes review
of claims 1, 9, 10, 17, and 18 of U.S. Patent No. 9,154,356 B2 (Ex. 1101,
“the ’356 patent”). Paper 3 (“Pet.”). Qualcomm Incorporated (“Patent
Owner”) filed a Preliminary Response. Paper 7.
On July 10, 2019, we instituted an inter partes review of claims 1, 9,
10, 17, and 18. Paper 8 (“Inst. Dec.”), 20. Patent Owner then filed a Patent
Owner Response (Paper 12, “PO Resp.”), Petitioner filed a Reply (Paper 19,
“Pet. Reply”), and Patent Owner filed a Sur-Reply (Paper 23, “PO Sur-
Reply”). An oral hearing was held on April 7, 2019, and a transcript of the
hearing is included in the record. Paper 30 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has not
shown by a preponderance of the evidence that claims 1, 9, 10, 17, and 18 of
the ’356 patent were unpatentable.
B. Related Matters
Petitioner filed two petitions, IPR2019-00128 and IPR2019-00129,
seeking inter partes review of claims 1–8, 10, 11, 17, and 18 of the ’356
patent based on prior art different than that presented in this petition. On
May 27, 2020 we issued Final Written Decisions in those cases, determining
that Petitioner had not shown that any claims were unpatentable.
Petitioner filed another petition, IPR2019-00047, seeking inter partes
review of claims 1, 7, 8, 10, 11, 17, and 18 of the ’356 patent based on prior
IPR2019-00048
Patent 9,154,356 B2

2
art different than that presented in this petition and the ’128 and ’129
petitions, and concurrently filed another petition, IPR2019-00049, seeking
inter partes review of claims 2–8 and 11 of the ’356 patent based on the
same prior art presented in this petition.
The Petition states that Patent Owner “has asserted the ’356 patent
against Apple in Certain Mobile Electronic Devices and Radio Frequency
and Processing Components Thereof, Investigation No. 337-ITC-1093,
currently pending before the International Trade Commission” and “also has
asserted the ’356 patent against Apple in another currently pending case,
Qualcomm Inc. v. Apple Inc., No. 3:17-cv-02398 (S.D. Cal.).” Pet. 1. In
updated mandatory notices filed on October 7, 2019, Petitioner advised the
Board that the District Court litigation has been dismissed and that the ITC
investigation has been terminated. See Paper 13.
C. The ’356 Patent
The ’356 Patent is directed to “[l]ow noise amplifiers . . . supporting
carrier aggregation.” Ex. 1101, code (57). In the embodiment described in
the Abstract, an “input RF signal includes transmissions sent on multiple
carriers at different frequencies,” a “first amplifier stage receives and
amplifies [the input signal] and provides a first output RF signal to a first
load circuit when the first amplifier stage is enabled,” and a “second
amplifier stage receives and amplifies the input RF signal and provides a
second output RF signal to a second load circuit when the second amplifier
stage is enabled.” Id.
IPR2019-00048
Patent 9,154,356 B2

3
Figure 6A, reproduced below, details an example of a low noise
amplifier according to the ’356 patent. Id. at 1:54–55.

Figure 6A shows “an LNA with inductive degeneration
and cascode shutoff.” Ex. 1101, 1:54–55.
As shown above, amplifier stage 650a includes source degeneration
inductor 652a, gain transistor 654a, cascode transistor 656a, and switch
658a. Ex. 1101, 7:58–8:4. Similarly, 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. Ex. 1101, 7:49–52. Input RF
signal RFin may include transmissions on one set of carriers or
IPR2019-00048
Patent 9,154,356 B2

4
transmissions on two sets of carriers in the same band, with 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. Ex. 1101, 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.

Figure 6C shows “an LNA with inductive degeneration
and cascode shutoff.” Ex. 1101, 1:54–55.
As shown, 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
IPR2019-00048
Patent 9,154,356 B2

5
circuit ground via switch 658b. Ex. 1101, 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. Ex. 1201, 8:32–35. Both
amplifier stages are enabled. Id. at 8:37–38. To illustrate, Figure 6B is
reproduced below.

Figure 6C shows “an LNA with inductive degeneration
and cascode shutoff.” Ex. 1101, 1:54–55.
As shown, 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. Ex. 1101, 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
IPR2019-00048
Patent 9,154,356 B2

6
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.
D. The Claimed Subject Matter
Challenged claims 1 and 17 are independent. Because claim 1 is
directed to an apparatus and claim 17 is directed a corresponding method,
claim 1, which is reproduced below, exemplifies the subject matter
addressed in this proceeding:
1. An apparatus comprising:
a first amplifier stage configured to be independently enabled or
disabled, the first amplifier stage further configured to receive
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 comprising transmissions sent on multiple
carriers at different frequencies to a wireless device, the first
output RF signal including at least a first carrier of the multiple
carriers; and
a second amplifier stage configured to be independently
enabled or disabled, the second 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 amplifier stage is enabled, the second output RF
signal including at least a second carrier of the multiple carriers
different than the first carrier.
Ex. 1101, 20:43–61.
IPR2019-00048
Patent 9,154,356 B2

7
E. Evidence Relied Upon
Petitioner relies on the following references:
Reference Exhibit
Jeon Sanggeun Jeon, et al., A Scalable 6-to-18 GHz
Concurrent Dual-Band Quad-Beam Phased-Array
Receiver in CMOS, IEEE Journal of Solid-State
Circuits, Vol. 43, No. 12, at 2660 (December
2008)
1105
Xiong U.S. Patent App. Pub. No. 2010/0237947 A1 1106
Youssef Ahmed Youssef and James Haslett, Digitally-
Controlled RF Passive Attenuator in 65 nm CMOS
for Mobile TV Tuner ICs, in Proceedings of 2010
IEEE International Symposium on Circuits and
Systems (June 2010)
1109
Feasibility
Study
3rd Generation Partnership 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 (December 2010)
1104
Petitioner also relies on Declarations of Patrick Fay, filed as Exhibits
1102 and 1139. Patent Owner relies on a Declaration of Daniel Foty, filed
as Exhibit 2024.
1. Jeon
Jeon is a paper that describes a tunable concurrent amplifier (“TCA”)
for use in a concurrent dual-band receiver that receives an incoming RF
signal that contains two frequencies, one in a low-band (LB) and one in a
high band (HB). Ex. 1105, 2663. The TCA “amplifies, filters, and finally
splits the RF signal into two separate outputs; one at LB and the other at
HB.” Id. These two signals go through “separate double down-conversion
IPR2019-00048
Patent 9,154,356 B2

8
by subsequent RF and IF mixers.” Id. Figure 6 of Jeon shows how the TCA
receives an input signal (“RF Input”) that includes the LB and HB
frequencies, where LB and HB are amplified by separate cascode amplifiers
“M1-M2” and “M3-M4”:

Figure 6 of Jeon is a “[s]chematic of [a] TCA with
a single input and a dual output.” Ex. 1105, 2664.
2. Xiong
Xiong is a patent application directed to “[t]echniques for designing a
low-noise amplifier (LNA) for operation over a wide range of input power
levels.” Ex. 1106, code (57). The reference describes a low-noise (“LN”)
mode in which both gain paths (amplifiers) are enabled, and a high-linearity
(“HL”) mode, in which the only one gain path is enabled. Id. ¶ 29. It
further explains that “the total gain provided to the input signal RF IN may
advantageously be adjusted by selectively enabling or disabling the first
IPR2019-00048
Patent 9,154,356 B2

9
and/or second gain paths.” Id. ¶ 30. Figure 3 of Xiong shows switches SW1
335 and SW2 325 controlling gain paths 301 and 302:

“FIG.3 illustrates an implementation of an LNA that
adopts a dual architecture.” Ex. 1106 ¶ 9.
3. Youssef
Petitioner argues that “Figure 1(b) of Youssef shows an RF attenuator
that is coupled to an amplifier stage (“LNA”) and . . . receives an input RF
signal ‘RFin’” and that “[a] POSITA would have been motivated to couple
the first amplifier stage of Jeon in view of Xiong to the attenuation circuit of
Youssef” because Youssef’s attenuation circuit “prevent[s] a receiver from
clipping at large input RF signals” and “Youssef expressly recognizes that
an attenuation circuit can ‘protect the RF performance . . . in the presence of
interferer blockers.’” Pet. 66–68 (citing Ex. 1109, 1999–2000).
IPR2019-00048
Patent 9,154,356 B2

10
4. The Feasibility Study
The Feasibility Study is a 3GPP (Third Generation Partnership
Project) technical report concerning evolution of E-UTRA (Evolved
Universal Mobile Telecommunications System Terrestrial Radio Access),
also known as LTE-Advanced. See Ex. 1104, 6–8. The Feasibility Study
explains that LTE-Advanced adds “support for Carrier Aggregation, where
two or more component carriers (CCs) are aggregated in order to support
wider transmission bandwidths up to 100MHz and for spectrum
aggregation.” Id.
F. Grounds of Unpatentability
This trial was instituted on the following grounds:
References Basis Claims
Jeon, Xiong § 103 1, 17, 18
Jeon, Xiong, Youssef § 103 9, 10
Jeon, Xiong, Feasibility Study § 103 1, 17, 18
Jeon, Xiong, Youssef, Feasibility Study § 103 9, 10
II. ANALYSIS
We discuss below the level of skill in the art, claim construction, and
the patentability of the present claims.
A. Level of Ordinary Skill in the Art
Petitioner asserts that a person of ordinary skill in the art “would have
had at least an M.S. degree in electrical engineering (or equivalent
experience) and would have had at least two years of experience with the
IPR2019-00048
Patent 9,154,356 B2

11
structure and operation of RF transceivers and related structures (or the
equivalent).” Pet. 34 (citing Ex. 1101 ¶ 58).
Patent Owner “does not dispute Petitioner’s contention that a person
of ordinary skill in the art ‘at the time of the alleged invention would have
had at least an M.S. degree in electrical engineering (or equivalent
experience) and would have had at least two years of experience with the
structure and operation of RF transceivers and related structures (or the
equivalent).’” PO Resp. 11 (quoting Pet. 34).
We adopt Petitioner’s characterization of the level of ordinary skill in
the art, which we find to be generally consistent with the disclosure of the
’356 patent.
B. Construction of “Carrier Aggregation”
In inter partes reviews filed before November 13, 2018, such as this
one, claims of an unexpired patent are interpreted according to their broadest
reasonable construction in light of the specification of the patent in which
they appear. See 37 C.F.R. § 42.100(b) (2018); Cuozzo Speed Techs., LLC
v. Lee, 136 S. Ct. 2131, 2142–46 (2016); 83 Fed. Reg. 51,340. Under that
standard, claim terms are generally given their ordinary and customary
meaning, as would have been 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).
IPR2019-00048
Patent 9,154,356 B2

12
The only term that either party has identified for construction, and the
only term we see a need to construe,1 is “carrier aggregation,” which appears
in independent claims 1 and 17.
Petitioner argues that this term “should be construed as ‘simultaneous
operation on multiple carriers.’” Pet. 28. Patent Owner argues that it should
be construed to mean “simultaneous operation on multiple carriers that are
combined as a single virtual channel to provide higher bandwidth.” PO
Resp. 11. The parties thus both agree that the construction should include
“simultaneous operation on multiple carriers,” meaning that the dispute boils
down to whether the construction appropriately also includes “that are
combined as a single virtual channel to provide higher bandwidth.”
We consider the other language of the claims themselves, the written
description, the prosecution history and other intrinsic evidence, extrinsic
evidence the parties have presented, and the ITC proceeding the parties have
identified, in that order.
1. The Claim Language
Claim 1 recites that the “input RF signal employ[s] carrier aggregation
comprising transmissions sent on multiple carriers at different frequencies to
a wireless device.”
Patent Owner argues that Petitioner’s proposed construction is
incorrect “because it reads out the word ‘aggregation.’” PO Resp. 30.
According to Patent Owner, “[a]ggregate means ‘to collect together,
assemble,’” and “it is the component carriers that are aggregated into a

1 See O2 Micro Intern. Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d
1351, 1362 (Fed. Cir. 2008) (explaining that “claim construction is a matter
of resolution of disputed meanings and technical scope”) (emphasis added).
IPR2019-00048
Patent 9,154,356 B2

13
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.” Id.
Petitioner argues that its proposed construction does not read out
“aggregation” because “[w]hen there is ‘simultaneous operation on multiple
carriers,’ those carriers will be aggregated in the input RF signal.” Reply 6;
see also id. (“‘[C]arrier aggregation’ in the context of the challenged claims
accounts for aggregation . . . because the multiple carriers would be present
simultaneously in the input RF signal.”); Tr. 9:19–13:11.
We are not persuaded by Petitioner’s analysis because the claim
recites both “aggregation” and “transmissions sent on multiple carriers,”
indicating that “aggregation” must mean something more than the presence
of multiple carriers. We thus do not agree that “aggregation” simply means
that multiple carriers are present in the input RF signal.
We conclude that the language of the claim itself is more supportive
of Patent Owner’s proposed construction, which gives meaning to the term
“aggregation” beyond the concept of multiple carriers, which is already in
the claim.
2. The Written Description
Finding that the claim language favors Patent Owner’s proposed
construction, we turn to the written description.
Petitioner points to passages in the specification stating that “[a]
wireless device may support carrier aggregation, which is simultaneous
operation on multiple carriers,” “[w]ireless device 110 may support carrier
aggregation, which is operation on multiple carriers,” and “[c]arrier
IPR2019-00048
Patent 9,154,356 B2

14
aggregation may also be referred to as multi-carrier operation.” See Pet. 30
(citing Ex. 1101, 1:32–35, 2:53–54, 2:54–55). According to Petitioner, these
passages in the specification define the term. See id.
Patent Owner counters by pointing to where the ’356 patent
specification cites a technical report called “3GPP TS 36.101” in discussing
carrier aggregation. See PO Resp. 13 (citing Ex. 1101, 2:63–67). 3GPP TS
36.101 defines carrier aggregation as “[a]ggregation of two or more
component carriers in order to support wider transmission bandwidths.” Ex.
2026, 14.
According to Patent Owner, “while earlier LTE systems were limited
to 20 MHz channels, LTE Release 11 . . . 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. 13
(citing Ex. 1101, 2:63–67). This is described in 3GPP TS 36.101 as follows:
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 data stream is received more quickly because it
was transmitted in a higher bandwidth virtual channel.
Ex. 2026, 13–14 (internal citations omitted).
IPR2019-00048
Patent 9,154,356 B2

15
Petitioner responds that “the LTE carrier aggregation expressly
described at column 2, lines 63–67 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.” Reply 3 (citing
Ex. 1101, 1:37–38, 2:40–53); Ex. 1139 ¶ 19.
We again agree with Patent Owner. The column 2 description and
3GPP TS 36.101 give a clear explanation of what carrier aggregation
provides: separation of a single stream into multiple streams for concurrent
transmission (a single virtual channel), followed by reassembly into the
original stream. While it is true that the claims are not limited to LTE, they
are limited to “carrier aggregation,” and the patent’s citation to 3GPP TS
36.101 tells us what that means.
We do not agree with Petitioner that the portions of the description to
which Petitioner points define carrier aggregation, for several reasons. First,
the specification does not use the conventional techniques for indicating a
definition; for example, it does not use the word “define,” state that the
meaning applies to the “term” carrier aggregation, or place carrier
aggregation in quotation marks. We thus conclude that, read in context,
these passages simply describe some characteristics of carrier aggregation.
Second, the passages differ, the first describing “simultaneous operation on
multiple carriers,” the second simply requiring “operation on multiple
carriers,” and the third not mentioning simultaneous operation or multiple
carriers. See Ex. 1001, 1:32–35, 2:53–54, 2:54–55. Petitioner does not
explain how these three different passages provide a single definition of
carrier aggregation, or provide us with a basis for choosing one over the
other. Third, given the wealth of evidence discussed below that carrier
IPR2019-00048
Patent 9,154,356 B2

16
aggregation had a specific meaning in the art, we conclude that an
application drafter seeking to broaden that known meaning would have
needed to be quite clear that the usual meaning did not apply in the ’356
patent. There is no such clarity.
We conclude that the intrinsic evidence, specifically column 2, lines
63–67 of the ’356 patent and the citation to 3GPP TS 36.101, favors Patent
Owner’s construction. In particular, we determine that the specification
provides strong support for the concept––if not the exact words––that the
multiple carriers must be “combined as a single virtual channel to provide
higher bandwidth.” The portions of the description cited by Petitioner
generally describe, but do not define, carrier aggregation.
3. The File History
The prosecution history may “facilitate[] claim construction by
revealing the intended meaning and scope of technical terms and may even
trump the weight of specification language in some circumstances.” TDM
Am., LLC v. U.S., 85 Fed. Cl. 774, 788 (2009). For example, “an applicant’s
amendment accompanied by explanatory remarks can define a claim term by
demonstrating what the applicant meant by the amendment.” Personalized
Media, 952 F.3d 1336, 1340 (Fed. Cir. 2020).
The parties discuss the Examiner’s rejections based on U.S. patents to
Hirose and Kaukovuori, and the contents of certain other references that
were cited during prosecution. We address these in that order.
a. Hirose
The original claims of the ’356 patent recited an “input RF signal
comprising transmissions sent on multiple carriers at different frequencies to
IPR2019-00048
Patent 9,154,356 B2

17
a wireless device.” Ex. 1101, 30. The Examiner rejected the claims, relying
for this limitation on Hirose, which discloses a “satellite radio broadcast
receiver [that] receives three radio waves in total, two satellite waves and
one ground wave, at the same time at its wide band RF amplifier,” where the
“three waves contain[] the same contents.” See Ex. 1114, 3; Ex. 1124, 1:31–
34, 5:1–4. To overcome the rejection, the applicant amended the claims to
limit the input RF signal to one “employing carrier aggregation,” and argued
that Hirose’s “receipt of diversity signals does not disclose ‘carrier
aggregation.’” Ex. 1115, 8 (“Specifically, a disclosure in Hirose of receipt
of the ‘same data’ over ‘three [different] waves’ does not anticipate
Applicant’s invention of ‘the [] input RF signal employing carrier
aggregation’ as claimed.” (emphases omitted)).
Patent Owner argues that Hirose supports its construction because the
applicant argued that the “claimed invention recites ‘carrier aggregation’
which results in an increased aggregated data rate,” but that “Hirose
transmits the same signals over different paths which results in redundant
data at a common data rate.” PO Resp. 16 (emphases omitted) (quoting Ex.
1115, 7). 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.” Id. at 28.
Petitioner responds that “[i]f Hirose’s simultaneous signals contained
non-redundant (i.e., 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.” Pet. Reply at 5. According to
IPR2019-00048
Patent 9,154,356 B2

18
Petitioner, any “disclaimer was of systems that receive transmissions of
redundant data over multiple channels.” Id. at 5 n.2.
We agree with Patent Owner. Though there may not be a “clear and
unmistakable disclaimer,” we conclude that the treatment of Hirose during
prosecution supports Patent Owner’s construction because it confirms that
merely receiving data on multiple channels simultaneously was not, at least
in the eyes of the Examiner, “carrier aggregation.”
b. Kaukovuori
After the applicant overcame the Hirose rejection by amending the
claims to recite “carrier aggregation,” the Examiner rejected claims 1 and 17
as anticipated by Kaukovuori, which the Examiner expressly found to teach
carrier aggregation. See Ex. 1116, 2–4 (finding that Kaukovuori “teaches a
method of receiving data transmitted via a combination of at least a plurality
of radio frequency signals using carrier aggregation”). Kaukovuori
describes carrier aggregation as “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 “the message data from each
of the signals can be combined in order to reconstruct the original data” (Ex.
1125, 1:27–33), which parallels Patent Owner’s construction.
The applicant did not dispute that Kaukovuori included carrier
aggregation, but instead responded by arguing that the claims were
patentable due to how the claimed amplifier stages were enabled, and then
amending the claim language regarding that feature. See Ex. 1117, 7–9; Ex.
1120, 2. This sequence suggests that both the Examiner and the Applicant
considered Kaukovuori’s disclosure of using multiple carriers to provide a
IPR2019-00048
Patent 9,154,356 B2

19
higher aggregate bandwidth by combining carriers to disclose carrier
aggregation within the meaning of the claims.2
We agree with Patent Owner that the treatment of Kaukovuori during
prosecution also favors its construction.
c. Other References of Record
“[P]rior art cited in a patent or cited in the prosecution history of the
patent constitutes intrinsic evidence,” and, when it “sheds light on the
meaning of a term[,] it can have particular value as a guide to the proper
construction of the term, because it may indicate not only the meaning of the
term to persons skilled in the art, but also that the patentee intended to adopt
that meaning.” V-Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307,
1311 (Fed. Cir. 2005); see Arthur A. Collins, Inc. v. N. Telecom Ltd., 216
F.3d 1042, 1045 (Fed. Cir. 2000).
Patent Owner points to WO 2012/008705, a reference cited during the
prosecution of the ’356 patent, which states that “LTE-A is a technology for
aggregating a plurality of unit carriers . . . to be used simultaneously” with
the aim of “extending” bandwidth, as well as to GB 2472978, another cited
reference, which describes how “[i]n the carrier aggregation mode data has
been multiplexed across multiple carrier frequencies” and where carrier
aggregation is described as a technique to “bond together two parallel
carriers.” PO Resp. 17–18; Ex. 2016 ¶ 7 (emphasis added); Ex. 2017, code
(57), 1:8–11 (emphasis added).

2 We also note that Petitioner’s expert, Dr. Fay, cites Kaukovuori as “one
example of a receiver configured to support carrier aggregation by sending
different carriers to different receive paths.” Ex. 1102 ¶ 42.
IPR2019-00048
Patent 9,154,356 B2

20
Petitioner argues that “Patent Owner’s citations to extrinsic evidence
cannot change the broadest reasonable interpretation of carrier aggregation”
and that “Petitioner’s proposed construction of ‘carrier aggregation’ is broad
enough to encompass each of the differing examples of carrier aggregation
provided in Patent Owner’s extrinsic evidence sources.” Pet. Reply 6. We
find these arguments unpersuasive because (a) they don’t address this
intrinsic evidence, (b) the broadest reasonable interpretation must give
meaning to “aggregation,” but Petitioner’s construction does not, and (c) the
broadest reasonable construction must be reasonable in light of the
specification,3 which, as discussed above, shows that one of skill in the art
would have known that “carrier aggregation” means combining carriers to
achieve a higher aggregate bandwidth.
We conclude that this additional prior art that was made of record
during prosecution provides further evidence supporting Patent Owner’s
construction.
4. Extrinsic Evidence
Petitioner cites Dr. Fay to support its argument that its proposed
construction is “consistent” with a person of ordinary skill in the art’s
understanding of the term. Id. at 31; see Ex. 1102 ¶ 62. Dr. Fay, however,
cites no evidence other than the specification to support the idea that “carrier
aggregation” is simply simultaneous operation on multiple carriers. Nor, we
find, does he persuasively explain how his proposed construction accounts

3 See In re Translogic Tech., Inc., 504 F.3d at 1257 (explaining that “claims
must be read in view of the specification” which is “the single best guide to
the meaning of a disputed term”) (quoting Phillips v. AWH Corp., 415 F.3d
1303 (Fed. Cir. 2005) (en banc)).
IPR2019-00048
Patent 9,154,356 B2

21
for “aggregation.” The mere presence of multiple carriers in the input signal
cannot be “aggregation” of the carriers because the claim already recites
“multiple carriers” in the input signal. Aggregation must mean something
more than multiple carriers existing at the same time.4
Patent Owner cites Dr. Foty for support of its proposed construction,
and Dr. Foty provides citations to various pieces of supporting extrinsic
evidence. See PO Resp. 18–23; Ex. 2024 ¶¶ 94–110 (citing Ex. 1104, 10;
Ex. 2013, 3:19–22 (“One technique for providing additional bandwidth . . .
is through the use [of] carrier aggregation of multiple smaller bandwidths to
form a virtual wideband channel at a wireless device.”); Ex. 2018, 3:27–62
(describing “carrier aggregation of multiple smaller bandwidths to form a
virtual wideband channel at a wireless device”); Ex. 2019, 6 (“Carrier
aggregation, as the name suggests, combines multiple carriers (a.k.a.
channels) at the device to provide a bigger data pipe to the user.”); Ex. 2020
¶ 3 (“Multiple component carriers are aggregated to form a larger overall
transmission bandwidth.”); Ex. 2021, 26–27; Ex. 2022).
Dr. Fay argues that the extrinsic evidence does not support Patent
Owner’s proposed construction because “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 ordinary skill in the art] would
assign extrinsic evidence little or no relevance.” Ex. 1139 ¶ 26. We are
unpersuaded because, as explained above, we do not find a definition, or

4 We agree with Petitioner that its proposed construction is not
“inconsistent” with the meaning that this term had in the art, but find that
Patent Owner’s proposed construction is both “consistent” with and better
captures what the term would have meant to one of skill in the art at the time
of the application.
IPR2019-00048
Patent 9,154,356 B2

22
redefinition, of “carrier aggregation” in the portions of the description cited
by Petitioner, or elsewhere in the ’356 patent.
Dr. Fay also argues 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 to the ’356 patent.” Ex. 1139
¶ 26 (citing Exhibits 2018, 2019, and 2022). This is not persuasive because
it does not address the rest of the evidence (i.e., Exhibits 1104, 2013, 2020,
and 2021), which we find to be more than enough. The later references are
approximately contemporaneous and, we find, sufficiently consistent with
the earlier evidence to provide further support for Patent Owner’s
construction.
Having reviewed the expert testimony and the cited materials, we
credit Patent Owner’s expert over Petitioner’s, primarily because Patent
Owner’s expert’s opinion has substantial evidentiary support. We conclude
that the expert testimony and extrinsic evidence is significantly more
supportive of Patent Owner’s construction.
5. The ITC Investigation
Petitioner asserts that the Administrative Law Judge (“ALJ”) in the
related ITC investigation “construed ‘carrier aggregation’ as Petitioner
proposes here.” Pet. 33. Patent Owner explains that it proposed before the
ITC that “‘carrier aggregation’ should mean ‘simultaneous operation on
multiple carriers to increase the bandwidth for a user,’” and that it continues
to maintain that is a correct construction, but “seeks to further clarify it here
because that construction merely serves to shift the parties’ dispute to the
meaning of the phrase ‘increase the bandwidth.’” PO Resp. 24.
IPR2019-00048
Patent 9,154,356 B2

23
Page 17 of the ITC claim construction order shows that the ALJ
interpreted “carrier aggregation” to mean “simultaneous operation on
multiple carriers.” Ex. 1136, 17. However, page 17 is simply a summary
table of the constructions; the ALJ’s analysis is contained in pages 20 to 30
of Appendix A to the order, of which pages 21, 22, 26, 28, and 29 are
missing from the version filed as Exhibit 1136.
We conclude that we are unable to evaluate the ITC claim
construction due to Petitioner’s failure to submit a complete version of the
ITC order, leaving us unable to tell what evidence was before the ITC judge,
what arguments were made, or why the judge reached that decision. Given
the lack of information about what happened in the ITC case, and the large
amount of evidence that supports Patent Owner’s position, we do not find
the ITC claim construction to warrant favoring Petitioner’s proposed
construction over Patent Owner’s.5
6. Conclusion
We determine that the claim language, the written description, the
prosecution history and other intrinsic evidence, and the extrinsic evidence
all favor Patent Owners’ construction. We thus construe “carrier
aggregation” to mean “simultaneous operation on multiple carriers that are
combined as a single virtual channel to provide higher bandwidth.”

5 We also note that the ITC case was terminated after the Initial
Determination, never reaching a Final Determination (see Petitioner’s
Updated Mandatory Disclosures (Paper 13) at 2), and that the Staff sided
with Patent Owner in the ITC (see Ex. 1136, App. A, p. 25).
IPR2019-00048
Patent 9,154,356 B2

24
C. Patentability of Claims 1, 9, 10, 17, and 18
A 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 ordinary skill in the art; and (4) any secondary considerations, if in
evidence.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
1. Obviousness in View of Jeon
and Xiong (Grounds 1 and 2)
Petitioner reads the limitations of claims 1, 17, and 18 onto a
combination of Jeon and Xiong (Ground 1), and adds Youseff for claims 9
and 10 (Ground 2). Independent claim 1 recites, among other limitations,
that “the input RF signal employ[s] carrier aggregation comprising
transmissions sent on multiple carriers at different frequencies to a wireless
device.” Independent claim 17 includes an analogous limitation.
Petitioner’s Grounds 1 and 2 are based on its construction of “carrier
aggregation” as meaning “simultaneous operation on multiple carriers.” See,
e.g., Pet. 52–53 (arguing that “Jeon teaches ‘a dual-band signal containing
two different frequencies concurrently,” which teaches carrier aggregation).
Because, for the reasons detailed above (see Section II.B), we find “carrier

6 Patent Owner does not present any objective evidence of nonobviousness
(i.e., secondary considerations) as to any of the challenged claims.
IPR2019-00048
Patent 9,154,356 B2

25
aggregation” to additionally require that the carriers “are combined as a
single virtual channel to provide higher bandwidth,” we find that Petitioner
has not shown claims 1 and 17 to be unpatentable. Because claims 9, 10,
and 18 depend from and thus include all of the limitations of claims 1 or 17,
Petitioner has also not shown those claims unpatentable in view of Jeon and
Xiong.7
2. Obviousness in View of Jeon, Xiong, and
The Feasibility Study (Grounds 3 and 4)
Grounds 3 and 4 are essentially the same as grounds 1 and 2, except
that Petitioner adds the Feasibility Study. See Pet. 72–76. Petitioner
contends that “[t]o the extent Patent Owner argues that Jeon in view of
Xiong fails to teach an input RF signal employing carrier aggregation, . . .
the Feasibility Study also discloses this element.” Pet. 72.
We agree with Petitioner that the Feasibility Study describes carrier
aggregation under Patent Owner’s (and our) construction. Indeed, it is good
evidence to support that construction. However, we find that Petitioner has
not articulated a motivation sufficient to support the combination.
Petitioner contends that one “would have been motivated to use the
Feasibility Study’s carrier-aggregated input RF signal with the Jeon/Xiong
front-end architecture because of the benefits of carrier aggregation
identified in the Feasibility Study” and because “[f]or example, the
Feasibility Study teaches that carrier aggregation provides wider

7 Because this issue is dispositive, we do not reach the parties’ dispute about
whether the combination includes independently enabled and disabled
amplifiers. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (endorsing the “use of a single dispositive issue approach” to save
“unnecessary cost and effort”).
IPR2019-00048
Patent 9,154,356 B2

26
transmission bandwidths and spectrum aggregation and is supported by the
LTEAdvanced standard.” Pet. 74 (citing Ex. 1104, 8; Ex. 1102 ¶¶ 128, 130).
These, however, are only motivations to use carrier aggregation, not a
motivation to combine the carrier aggregation of the Feasibility Study with
the specific hardware of Jeon and Xiong.
Petitioner next argues that “Jeon in view of Xiong . . . teaches the
exact type of receiver that the Feasibility Study recognizes would work with
signals employing carrier aggregation” and “[t]he motivation . . . thus arises
from the references themselves.” Pet. 73–74. Petitioner similarly argues
that “the combination requires nothing more than replacing the Jeon/Xiong
‘dual-band signal containing two different frequencies concurrently’ with
the received ‘Carrier Aggregation’ signals described in the Feasibility
Study.” Pet. 74. Petitioner also argues that “[a] POSITA would have had a
reasonable expectation of success in using the carrier-aggregated input RF
signals as described in the Feasibility Study with the receiver front-end of
Jeon in view of Xiong.” Pet. 74.
These arguments are insufficient to establish a motivation to combine
because we do not reach the questions of whether the combination could
have worked, or whether one of skill in art would reasonably have expected
to succeed, unless there is a reason to make the combination in the first
place. See KSR, 550 U.S. at 418 (explaining that “a patent composed of
several elements is not proved obvious merely by demonstrating that each of
its elements was, independently, known in the prior art”); InTouch Techs.,
Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)
(explaining that the obviousness inquiry does not merely ask whether a
skilled artisan could combine the references, but instead whether “they
IPR2019-00048
Patent 9,154,356 B2

27
would have been motivated to do so”). Because Petitioner has not
established such a motivation, we conclude that the combination is
impermissibly inspired only by a hindsight effort to marry the allegedly
independently enabled/disabled amplifiers of Jeon/Xiong with the carrier
aggregation of the Feasibility Study. See Metalcraft of Mayville, Inc. v. The
Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow
hindsight bias to be the thread that stitches together prior art patches into
something that is the claimed invention.”).
As Petitioner has not sufficiently articulated a non-hindsight technical
reason why one of skill in the art would have made this particular
combination,8 Petitioner has not shown that claims 1 and 17 were
unpatentable in view of Jeon, Xiong, and the Feasibility Study. Because
claims 9, 10, and 18 all depend from and include all of the limitations of
claims 1 or 17, Petitioner has also not shown those claims unpatentable in
view of those references.

8 The ’365 patent’s combination of independently enabled/disabled
amplifiers and carrier aggregation “offers the flexibility of activating
circuitry to receive a signal employing carrier aggregation when needed and
deactivating that circuitry when it is not needed.” Ex. 2024 (Dr. Foty) ¶ 54;
see also Ex. 1102 (Dr. Fay) ¶ 56 (“The independent enabling or disabling of
amplifier stages allows the LNA of the ’356 patent to support both carrier
aggregation and non-carrier aggregation in different modes.”). Petitioner
does not argue that the ordinarily skilled artisan would have been motivated
to combine Jeon, Xiong, and the Feasibility Study for that reason.
IPR2019-00048
Patent 9,154,356 B2

28
III. CONCLUSION
Claims 1, 9, 10, 17, and 18 have not been shown to be unpatentable.
The results are summarized below.
Claims
35
U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 17, 18 103 Jeon, Xiong 1, 17, 18
9, 10 103 Jeon, Xiong, Youssef 9, 10
1, 17, 18 103 Jeon, Xiong, Feasibility Study 1, 17, 18
9, 10 103
Jeon, Xiong,
Youssef,
Feasibility Study
9, 10
Overall
Outcome
1, 9, 10, 17, 18

IPR2019-00048
Patent 9,154,356 B2

29
IV. ORDER
For the reasons given, it is:
ORDERED that claims 1, 9, 10, 17, and 18 of U.S. Patent 9,154,356
B2 have not been shown to be unpatentable;
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2019-00048
Patent 9,154,356 B2

30
FOR PETITIONER:

David Cavanaugh
John Hobgood
Ben Fernandez
WILMER CUTLER PICKERING HALE
AND DORR LLP
david.cavanaugh@wilmerhale.com
john.hobgood@wilmerhale.com
ben.fernandez@wilmerhale.com

FOR PATENT OWNER:

David B. Cochran
Matthew W. Johnson
Joseph M. Sauer
Joshua R. Nightingale
David M. Maiorana
Thomas W. Ritchie
JONES DAY
dcochran@jonesday.com
mwjohnson@jonesday.com
jmsauer@jonesday.com
jrnightingale@jonesday.com
dmaiorana@jonesday.com
twritchie@jonesday.com