Qualcomm Incorporated

Patent Trials and Appeals Board

May 27, 2020

IPR2019-00128 (P.T.A.B. May. 27, 2020)

Trials@uspto.gov Paper 35
571.272.7822 Date: May 27, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INTEL CORPORATION,
Petitioner,

v.

QUALCOMM INCORPORATED,
Patent Owner.
____________

IPR2019-00128
Patent 9,154,356 B2
____________

Before MICHELLE N. WORMMEESTER, AMANDA F. WIEKER, and
AARON W. MOORE, Administrative Patent Judges.

WORMMEESTER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Intel Corporation1 (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
requesting an inter partes review of claims 1, 7, 8, 11, 17, and 18 of U.S.
Patent No. 9,154,356 B2 (Ex. 1301, “the ’356 patent”). Qualcomm
Incorporated (“Patent Owner”) filed a Preliminary Response. Paper 7
(“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted an inter partes
review of challenged claims 1, 7, 8, 11, 17, and 18 based on all the grounds
presented in the Petition. Paper 9 (“Inst. Dec.”). Patent Owner filed a
Response (Paper 13, “PO Resp.”), Petitioner filed a Reply (Paper 20, “Pet.
Reply”), and Patent Owner filed a Sur-reply (Paper 26, “PO Sur-reply”). On
February 27, 2020, we conducted an oral hearing. A copy of the transcript
(Paper 34, “Tr.”) is included in the record.
We have jurisdiction under 35 U.S.C. § 6(b). For the reasons that
follow, we determine that Petitioner has not shown by a preponderance of
the evidence that claims 1, 7, 8, 11, 17, and 18 of the ’356 patent are
unpatentable. This final written decision is issued pursuant to 35 U.S.C.
§ 318(a).

II. BACKGROUND
A. Related Proceedings
The parties identify a federal district court case in which Patent Owner
asserted the ’356 patent against Apple: Qualcomm Incorporated v. Apple
Incorporated, No. 3:17-cv-02398 (S.D. Cal.). Pet. 1; Paper 4, 1. Petitioner
indicates that the district court has dismissed this case. Paper 8, 1.

1 Intel Corporation identifies itself and Apple Inc. (“Apple”) as real parties
in interest. Paper 3, 1.
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The parties also identify an International Trade Commission (“ITC”)
investigation in which Patent Owner asserted the ’356 patent against Apple.
Pet. 1; Paper 4, 1. According to Petitioner, the ITC has terminated the
investigation. Paper 14, 2.
In addition, the parties identify four other petitions for inter partes
review involving the ’356 patent that Petitioner has filed, namely, Cases
IPR2019-00047, IPR2019-00048, IPR2019-00049, and IPR2019-00129.
Pet. 1; Paper 4, 1.

B. The ’356 Patent
The ’356 patent describes low noise amplifiers. Ex. 1301, 1:15–16.
Figure 6A, which is reproduced below, illustrates an example of a low noise
amplifier according to the ’356 patent. Id. at 1:54–55.

In particular, Figure 6A shows carrier aggregation low noise amplifier 640a,
which has two amplifier stages 650a and 650b. Id. at 7:44–49. Amplifier
stage 650a includes source degeneration inductor 652a, gain transistor 654a,
cascode transistor 656a, and switch 658a. Id. at 7:58–8:4. Similarly,
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amplifier stage 650b includes source degeneration inductor 652b, gain
transistor 654b, cascode transistor 656b, and switch 658b. Id. at 8:4–9.
Both amplifier stages 650a and 650b are coupled to common input matching
circuit 632 and to respective load circuits 690a and 690b. Id. at 7:47–49.
In operation, matching circuit 632 receives receiver input signal RXin,
performs input matching for low noise amplifier 640a, and provides input
RF signal RFin to low noise amplifier 640a. Id. at 7:49–52. Input RF
signal RFin may include transmissions on one set of carriers or
transmissions on two sets of carriers in the same band, each set including
one or more carriers. Id. at 7:55–57, 8:16–18, 8:30–32. An RF signal with
transmissions on multiple sets of carriers is called a carrier aggregated RF
signal. Id. at 8:16–18.
Low noise amplifier 640a operates in either a non-carrier aggregation
(non-CA) mode or a carrier aggregation (CA) mode, depending on the type
of input RF signal it receives. Id. at 8:24–32, 8:36–44. In the non-CA
mode, low noise amplifier 640a receives transmissions on one set of carriers
and provides one output RF signal to one load circuit. Id. at 8:30–32. Only
one amplifier stage is enabled, while the other amplifier stage is disabled.
Id. at 8:46–47. To illustrate, Figure 6C is reproduced below.
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Figure 6C shows low noise amplifier 640a operating in the non-CA mode.
Id. at 8:45–46. Amplifier stage 650a is enabled by connecting the gate of
cascode transistor 656a to the Vcasc voltage via switch 658a, and amplifier
stage 650b is disabled by shorting the gate of cascode transistor 656b to
circuit ground via switch 658b. Id. at 8:47–52. Amplifier stage 650a
amplifies the input RF signal and provides an output RF signal to load
circuit 690a. Id. at 8:52–54.
In the CA mode, low noise amplifier 640a receives transmissions on
two sets of carriers and provides two output RF signals to two load circuits,
one output RF signal for each set of carriers. Id. at 8:32–35. Both amplifier
stages are enabled. Id. at 8:37–38. To illustrate, Figure 6B is reproduced
below.
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Figure 6B shows low noise amplifier 640a operating in the CA mode. Id. at
8:36–37. Amplifier stages 650a and 650b are enabled by connecting the
gate of cascode transistor 656a to the Vcasc voltage via switch 658a and
coupling the gate of cascode transistor 656b to the Vcasc voltage via
switch 658b. Id. at 8:37–40. The carrier aggregated RF signal splits at the
input of low noise amplifier 640a, and then amplifier stages 650a and 650b
amplify the carrier aggregated RF signal and provide two output RF signals
to two separate downconverters in load circuits 690a and 690b. Id. at 8:21–
28. Specifically, amplifier stage 650a amplifies the input RF signal and
provides the first output RF signal to load circuit 690a. Id. at 8:41–42.
Similarly, amplifier stage 650b amplifies the input RF signal and provides
the second output RF signal to load circuit 690b. Id. at 8:42–44.

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C. Illustrative Claim
Petitioner challenges claims 1, 7, 8, 11, 17, and 18 of the ’356 patent.
Claims 1 and 17 are independent. Claim 1 is illustrative of the challenged
claims:
1. A boost circuit having an input terminal and an output
terminal, comprising:
a first switch coupled between the input terminal and the
output terminal and operated by a first phase signal;
a second switch coupled between the input terminal and the
output terminal and operated by a second phase signal that
is opposite to the first phase signal;
a first capacitor having a first terminal coupled to the output
terminal and a second terminal coupled for receiving a
boost signal; and
a second capacitor having a first terminal coupled to the
output terminal and a second terminal coupled for
receiving the boost signal.

D. Asserted Grounds of Unpatentability
Petitioner challenges claims 1, 7, 8, 11, 17, and 18 of the ’356 patent
on grounds of anticipation under 35 U.S.C. § 102 and obviousness under 35
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U.S.C. § 103.2 Pet. 39–75. We instituted inter partes review of all the
asserted grounds. Inst. Dec. 32. The instituted grounds are as follows.
In support of its arguments, Petitioner relies on a declaration (Ex. 1302) as
well as a reply declaration (Ex. 1339) of Patrick Fay, Ph.D. Patent Owner
submits with its Response a declaration of Daniel Foty, Ph.D. (Ex. 2024).
The transcripts of the depositions of Dr. Fay are entered in the record as
Exhibits 2014 and 2029, and the transcript of the deposition of Dr. Foty is
entered in the record as Exhibit 1340.

III. ANALYSIS
A. Claim Construction
The claim construction standard applicable to this inter partes review
proceeding is the broadest reasonable interpretation (“BRI”) in light of the
patent specification and prosecution history. Personalized Media
Comm’cns, LLC v. Apple Inc., 952 F.3d 1336, 1340 (Fed. Cir. 2020); 37
C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct.
2131, 2144–46 (2016) (upholding the use of the broadest reasonable

2 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. §§ 102
and 103. See Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). As the
application that issued as the ’356 patent was filed before the effective date
of the relevant amendments, the pre-AIA version of §§ 102 and 103 apply.
3 U.S. Publ’n No. 2012/0056681 A1 (published Mar. 8, 2012) (Ex. 1335).
4 3d Generation P’Ship Project, Technical Specification Group Radio Access
Network; Feasibility Study for Further Advancements for E-UTRA (LTE-
Advanced) (Release 9) (3GPP TR 36.912 V9.1.0) (Dec. 2009) (Ex. 1304).
Claims Challenged 35 U.S.C. § Reference(s)/Basis
1, 7, 8, 11, 17, 18 102 Lee3
7, 8 103 Lee
1, 7, 8, 11, 17, 18 103 Lee, the Feasibility Study4
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interpretation standard).5 Under this standard, claim terms generally are
given their ordinary and customary meaning, as would be understood by one
of ordinary skill in the art in the context of the entire disclosure. See In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
Petitioner proposes a construction of the claim term “carrier
aggregation.” Pet. 28–32. Patent Owner disputes Petitioner’s proposed
construction. PO Resp. 10–30. In light of the parties’ arguments, we
address this claim term.

“carrier aggregation”
The term “carrier aggregation” appears in both independent claims 1
and 17. Petitioner argues that this term “should be construed as
‘simultaneous operation on multiple carriers.’” Pet. 28. As support,
Petitioner points us to three passages in the specification of the ’356 patent.
Id. The first passage states that “[a] wireless device may support carrier
aggregation, which is simultaneous operation on multiple carriers.”
Ex. 1301, 1:32–33 (cited by Pet. 28). The second passage specifies that
“[w]ireless device 110 may support carrier aggregation, which is operation
on multiple carriers.” Id. at 2:53–54 (cited by Pet. 28). Finally, the third
passage notes that “[c]arrier aggregation may also be referred to as multi-

5 The revised claim construction standard for interpreting claims in inter
partes review proceedings as set forth in the final rule published October 11,
2018, does not apply to this proceeding because the new “rule is effective on
November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on
or after the effective date.” Changes to the Claim Construction Standard for
Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R.
§ 42.100(b) (2019)). The Petition here was filed on November 9, 2018.
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carrier operation.” Id. at 2:54–55 (cited by Pet. 28). Petitioner further
asserts that the Administrative Law Judge (“ALJ”) in the related ITC
investigation “construed ‘carrier aggregation’ as Petitioner proposes here.”
Pet. 31 (citing Ex. 1336, 17 (ITC Claim Construction Order)). Relying on
the declaration testimony of Dr. Fay, Petitioner adds that its proposed
construction “is consistent with the understanding of the term by a person
having ordinary skill in the art.” Id. at 29 (citing Ex. 1302 ¶¶ 59–60).
In response, Patent Owner contends that “at the time of the invention
of the ’356 Patent, a person of ordinary skill in the art would have
understood that ‘carrier aggregation’ was a term of art that meant
‘simultaneous operation on multiple carriers that are combined as a single
virtual channel to provide higher bandwidth.’” PO Resp. 11. Patent Owner
makes several arguments in support of this proposed construction.
For instance, Patent Owner argues that “[w]hile it is true that
‘simultaneous operation on multiple carriers’ is an attribute of carrier
aggregation, a person of ordinary skill would have further understood the
term to mean that the multiple carriers are combined (aggregated) as a single
virtual channel.” Id. at 11–12 (internal citation omitted). As support, Patent
Owner relies on intrinsic evidence, including the ’356 patent and its
prosecution history file, as well as extrinsic evidence.
Specifically, Patent Owner points to where the ’356 patent
specification cites a technical report (referred to as “LTE Release 11” or
“3GPP TS 36.101”) while discussing carrier aggregation. Id. at 13 (citing
Ex. 1301, 2:63–67); Ex. 2026 (LTE Release 11). The technical report
defines carrier aggregation as “[a]ggregation of two or more component
carriers in order to support wider transmission bandwidths.” Ex. 2026, 14;
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see also Ex. 1301, 37–38 (“A carrier may also be referred to as a component
carrier (CC), a frequency channel, a cell, etc.”) (emphasis added) (cited by
PO Resp. 12). Patent Owner asserts that “while earlier LTE [(Long-Term
Evolution)] systems were limited to 20 MHz channels, LTE Release 11
(which provided support for LTE-Advanced functionality) could be
configured to aggregate up to five of these 20 MHz channels as component
carriers of a single virtual channel having a bandwidth capacity of up to
100 MHz.” PO Resp. 13 (citing Ex. 1301, 2:63–67). To illustrate, Patent
Owner further asserts:
In earlier LTE systems, a user device connects to the wireless
network over a single 20 MHz carrier frequency. As the
maximum-available data rate of the single-carrier wireless
connection is the rate-limiting step for the end user, requests for
a large amount of data (e.g., a video) can only be received at the
data rate of that single carrier. To relieve this rate-limiting step,
LTE-Advanced added the ability for network equipment to
practice carrier aggregation. When an end user requests a large
amount of data, the network will activate carrier aggregation to
deliver that data more quickly. This is done by multiplexing the
incoming data stream . . . so that the incoming data stream is
separated into multiple streams that are transmitted over multiple
component carriers at the same time. The user device receives
and de-multiplexes (aggregates) the multiple streams to recreate
the original incoming data stream. The result is that the incoming
data stream is received more quickly because it was transmitted
in a higher bandwidth virtual channel.
Id. at 13–14 (internal citations omitted). Patent Owner relies on the
declaration testimony of Dr. Foty. Id. at 12–14 (citing Ex. 2024 ¶¶ 84–87).
Patent Owner also points to the prosecution history of the ’356 patent.
During prosecution, the Examiner relied on two U.S. patents, namely,
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Hirose6 and Kaukovuori,7 as anticipatory references. Ex. 1314, 2–4 (Office
Action relying on Hirose); Ex. 1316, 2–4 (Office Action relying on
Kaukovuori). In addition, the applicant filed an Information Disclosure
Statement listing various references, including an international patent
application8 and a British patent application.9 Ex. 2015, 10, 12 (Information
Disclosure Statement); Ex. 2016 (international application); Ex. 2017
(British application). With respect to Hirose, Patent Owner highlights the
applicant’s argument that the “claimed invention recites ‘carrier
aggregation’ which results in an increased aggregated data rate,” whereas
“Hirose transmits the same signals over different paths which results in
redundant data at a common data rate.” PO Resp. 15; Ex. 1315, 7 (cited by
PO Resp. 15). Regarding Kaukovuori, Patent Owner highlights the teaching
that “LTE Advanced proposes the aggregation of multiple carrier signals in
order to provide a higher aggregate bandwidth than would be available if
transmitting via a single carrier signal,” where “Carrier Aggregation (CA)
requires each utilized carrier signal to be demodulated at the receiver,
whereafter the message data from each of the signals can be combined in
order to reconstruct the original data.” PO Resp. 15–16; Ex. 1325, 1:30–33
(cited by PO Resp. 15–16). As for the references cited in the Information
Disclosure Statement, Patent Owner points to where the international
application states that “LTE-A is a technology for aggregating a plurality of

6 U.S. Patent No. 7,317,894 B2 (issued Jan. 8, 2008) (Ex. 1324).
7 U.S. Patent No. 8,442,473 B1 (issued May 14, 2013) (Ex. 1325).
8 Int’l Publication No. WO 2012/008705 A2 (published Jan. 19, 2012)
(Ex. 2016, “the international application”).
9 UK Patent Application GB 2472978 A (published Mar. 2, 2011) (Ex. 2017,
“the British application”).
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unit carriers . . . to be used simultaneously,” as well as to where the British
application describes a “carrier aggregation mode” in which “data has . . .
been multiplexed across multiple carrier frequencies” and carrier
aggregation refers to “bond[ing] together two parallel carriers.” PO
Resp. 16–17; Ex. 2016 ¶ 7 (cited by PO Resp. 16–17); Ex. 2017, code (57),
1:8–11 (cited by PO Resp. 17). According to Patent Owner, all these
portions of “[t]he file history further confirm[] that a skilled artisan
understood that carrier aggregation resulted in a single virtual channel to
provide an increased bandwidth.” PO Resp. 15. Patent Owner relies on the
declaration testimony of Dr. Foty. Id. at 16–17 (citing Ex. 2024 ¶¶ 89–90,
92).
Patent Owner additionally points to various extrinsic evidence in
support of its proposed construction, relying again on the declaration
testimony of Dr. Foty. Id. at 17–22 (citing Ex. 1304, 10; Ex. 2013, 3:19–53;
Ex. 2018, 3:27–62; Ex. 2019, 6; Ex. 2020 ¶ 3; Ex. 2021, 26–27; Ex. 2022;
Ex. 2024 ¶¶ 95–100). For example, Patent Owner directs us to a U.S. patent,
which states that “[o]ne technique for providing additional bandwidth
capacity to wireless devices is through the use [of] carrier aggregation of
multiple smaller bandwidths to form a virtual wideband channel at a wireless
device.” Ex. 2013, 3:19–22 (cited by PO Resp. 18); see also Ex. 2018,
3:27–62 (stating the same) (cited by PO Resp. 18).
Turning to Petitioner’s proposed construction of “carrier aggregation,”
Patent Owner argues that Petitioner’s reading of the term is “unreasonably
broad.” PO Resp. 23. To illustrate, Patent Owner asserts that “two 20 MHz
carriers operating independently do not provide a single virtual channel with
an increased aggregated bandwidth,” as “[t]he maximum capacity of any
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one channel remains 20 MHz.” Id. Patent Owner additionally asserts, “But
by aggregating two 20 MHz carriers as a single virtual channel, the user
device may operate using an aggregated 40 MHz channel that has a
combined bandwidth equal to the sum of the bandwidths of the component
carriers.” Id. at 23–24.
Patent Owner also argues that Petitioner’s proposed construction
“violates the doctrine of prosecution disclaimer” because “Hirose discloses
‘simultaneous operation on multiple carriers.’” PO Resp. 23–24, 27. Patent
Owner points to the Examiner’s reliance on Hirose for teaching the
originally recited “input RF signal comprising transmissions sent on
multiple carriers at different frequencies to a wireless device,” where
Hirose’s “input RF signal compris[es] [a] satellite wave signal and [a]
ground wave signal.” PO Resp. 24; Ex. 1314, 3. In response, the applicant
amended the claim language to further limit the recited input RF signal to a
signal “employing carrier aggregation.” Ex. 1315, 2 (cited by PO Resp. 25).
The applicant acknowledged that Hirose teaches receiving the satellite and
ground wave signals at the same time, but argued that “such receipt of
diversity signals does not disclose ‘carrier aggregation’” because the
“waves contain[] the same contents.” Id. at 8 (cited by PO Resp. 26).
According to Patent Owner, “[i]f the term ‘carrier aggregation’ simply
meant ‘simultaneous operation on multiple carriers,’ the amendment would
have been ineffective in overcoming Hirose.” PO Resp. 26–27; see also PO
Sur-reply 13 (“Petitioner now proposes construing the term so broadly that
the claims once again read on Hirose, which discloses ‘simultaneous
operation on multiple carriers.’”).
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Lastly, Patent Owner argues that “Petitioner’s proposed construction
is also incorrect because it reads out the word ‘aggregation.’” PO Resp. 28.
Patent Owner asserts that “[a]ggregate means ‘to collect together,
assemble.’” Id. at 29 (citing Ex. 2025, 4 (The Oxford English Dictionary)).
According to Patent Owner, “it is the component carriers that are aggregated
into a single virtual channel to provide higher bandwidth.” Id. Patent
Owner adds that “[s]ubstituting Petitioner’s proposed construction would
result in a claim that recited ‘the input RF signal employing simultaneous
operation on multiple carriers comprising transmissions sent on multiple
carriers,’” thereby “add[ing] little, if any, additional meaning beyond the
surrounding claim language.” Id.
In its Reply, Petitioner reiterates that the ALJ in the related ITC
investigation construed “carrier aggregation” to mean “simultaneous
operation on multiple carriers,” and argues that “the BRI construction[,
which is the standard applied in this proceeding,] must be at least as broad as
a proper Phillips construction,” which is the standard applied in an ITC
investigation. Pet. Reply 3–4; Ex. 1336, 12–14 (Claim Construction Order
from related ITC investigation).
Petitioner further argues that the specification of the ’356 patent does
not support Patent Owner’s proposed construction. In particular, Petitioner
contends that the portion of Patent Owner’s proposed construction requiring
the multiple carriers to be “combined as a single virtual channel to provide
higher bandwidth . . . lack[s] any written description support.” Pet. Reply 5.
Petitioner asserts that “the LTE carrier aggregation expressly described at
column 2, lines 63–67 [of the ’356 patent] is merely one example of carrier
aggregation in the patent,” and that “the applicant signaled that the invention
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would cover devices other than those that implement LTE.” Id. at 5–6
(citing Ex. 1301, 1:37–38, 2:40–53).
Petitioner also argues that the prosecution history of the ’356 patent
does not support Patent Owner’s proposed construction. Petitioner contends
that the phrases “combined as a single virtual channel” and “provide higher
bandwidth” do not appear in the prior art references cited during
prosecution, and that “Patent Owner’s arguments about them do not limit the
BRI of the term ‘carrier aggregation’ given the clear definition of that term
in the ’356 written description.” Id. at 7–8. With respect to Kaukovuori in
particular, Petitioner further contends that the Examiner did not rely on the
same passage that Patent Owner relies on now to support its proposed
construction. Id. at 8. Petitioner adds, “Patent Owner’s argument that the
Examiner found that Kaukovuori discloses one specific type of carrier
aggregation signifies only that the Examiner thought that Kaukovuori’s
disclosure fell within the ’356 patent’s definition of carrier aggregation, not
that the Examiner was limiting the Examiner’s interpretation of carrier
aggregation based on the Kaukovuori reference.” Id.
In addition, Petitioner argues that the extrinsic evidence does not
support Patent Owner’s proposed construction. According to Petitioner, “in
a case such as this, where the intrinsic evidence so clearly supports the
definition that Patent Owner included in its specification, a [person of
ordinary skill in the art] would assign extrinsic evidence little or no
relevance.” Id. at 13. Petitioner further notes that “many of the extrinsic
references included with Patent Owner’s Response were dated or filed well
after the filing date of the ’356 patent, and are not prior art.” Id. (citing
Ex. 2018; Ex. 2019; Ex. 2022).
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With respect to Patent Owner’s prosecution disclaimer argument,
Petitioner responds that the applicant’s argument during prosecution that
“‘carrier aggregation’ requires an ‘increased aggregated data rate’” does
“not amount to the clear and unmistakable disclaimer that Patent Owner
contends.” Id. at 11–12 (citing PO Resp. 15). According to Petitioner, “[i]f
Hirose’s simultaneous signals contained non-redundant (e.g., different) data,
[the applicant] could not have made the argument that it did, and therefore
the most natural reading of the prosecution history is that the applicant was
distinguishing Hirose on the basis of its redundant transmissions.” Id. at 12.
That is, any “disclaimer was of systems that receive transmissions of
redundant data over multiple channels.” Id. at 12 n.2.
Lastly, Petitioner argues that its proposed construction does not read
out “aggregation.” Id. at 14. As support, Petitioner contends that “[w]hen
there is ‘simultaneous operation on multiple carriers,’ those carriers will be
aggregated in the input RF signal.” Id.; see id. (“[W]hen read in view of the
complete claim language, ‘carrier aggregation’ in the context of the
challenged claims accounts for aggregation . . . because the multiple carriers
would be present simultaneously in the input RF signal.”). Petitioner relies
on the declaration testimony of Dr. Fay. Id. at 14–15 (citing Ex. 1339
¶¶ 27–29).
Patent Owner counters that “Petitioner does not propose construing
the term ‘carrier aggregation’ according to its plain and ordinary meaning”
but proposes instead that “the patentee acted as a lexicographer to assign the
term a special definition different than its plain and ordinary meaning.” PO
Sur-reply 2. According to Patent Owner, however, “Petitioner fails to
establish that the patentee expressed the necessary intent to redefine the term
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to have a special meaning that differed from its plain and ordinary meaning.”
Id. at 6. As support, Patent Owner contends that “[i]n the ’356 Patent, the
patentee adopted a . . . distinctive format to clearly set forth a definition for a
different term,” namely, the format used for the term “exemplary.” Id. at 4.
Patent Owner directs us to where the ’356 patent states that “[t]he term
‘exemplary’ is used herein to mean ‘serving as an example, instance, or
illustration.’” Ex. 1301, 2:9–11 (cited by PO Sur-reply 4). Patent Owner
further asserts that “[n]one of the statements Petitioner relies on for the term
‘carrier aggregation’ resemble this format,” as “[t]he patentee did not use the
phrase ‘is used herein to mean’ for the term” or “quotation marks for the
term or its purported definition.” PO Sur-reply 4. Patent Owner also
contends that “the three statements Petitioner relies on to support its
argument lack the clear expression of intent because they do not characterize
the term carrier aggregation consistently: (1) ‘which is simultaneous
operation on multiple carriers,’ Ex. 1301, 1:32–33; (2) ‘which is operation
on multiple carriers,’ id., 2:53–54; and, (3) ‘may also be referred to as multi-
carrier operation,’ id., 2:54–55.” PO Sur-reply 5.
On the record before us, we determine that Petitioner’s proposed
construction of “carrier aggregation” (i.e., “simultaneous operation on
multiple carriers”) is overly broad. As Petitioner indicates, the ’356 patent
specification states that “[a] wireless device may support carrier
aggregation, which is simultaneous operation on multiple carriers.”
Ex. 1301, 1:32–33 (emphasis added); Pet. 28 (quoting Ex. 1301, 1:32–33).
We note that prosecution history, however, “facilitates 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
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Am., LLC v. U.S., 85 Fed. Cl. 774, 788 (2009) (citing Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 804 (Fed. Cir. 1999)). 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 at 1340. Thus, “like the specification, the
prosecution history can act like a dictionary.” Hemphill v. McNeil-PPC,
Inc., 25 F. App’x 915, 918 (Fed. Cir. 2001) (non-precedential).
Here, the claims of the ’356 patent, as originally filed, recited an
“input RF signal comprising transmissions sent on multiple carriers at
different frequencies to a wireless device.” Ex. 1311, 30 (Application).
During prosecution, the Examiner rejected the claims, relying on Hirose for
teaching this limitation. Ex. 1314, 3 (Office Action). Hirose 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.”
Ex. 1324, 1:31–34, 5:1–4; see also Ex. 1314, 3 (finding that “Hirose
discloses . . . the input RF signal comprising satellite wave signal and
ground wave signal”); Ex. 1315, 8 (Response to Office Action). To
overcome the Examiner’s rejection, the applicant amended its claims to
further limit the recited input RF signal to a signal “employing carrier
aggregation” and argued that Hirose’s “receipt of diversity signals does not
disclose ‘carrier aggregation.’” Ex. 1315, 2, 8; see also id. at 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.”) (alterations in
original). Construing “carrier aggregation” to mean “simultaneous operation
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on multiple carriers,” as Petitioner proposes, would encompass Hirose’s
“receipt of diversity signals.” As such, Petitioner’s proposed construction of
“carrier aggregation,” though consistent with the specification language, is
broader than the applicant’s intended meaning and scope of the term.
We note Petitioner’s contention that “the most natural reading of the
prosecution history is that the applicant was distinguishing Hirose on the
basis of its redundant transmissions.” Pet. Reply 12. To the extent that
Petitioner acquiesces to limiting its proposed construction of “carrier
aggregation” to transmissions of non-redundant data, we still consider
Petitioner’s proposed construction to be overly broad. See Tr. 19:12–14
(Petitioner’s counsel stating, “I think that in our proposed construction,
simultaneous operation on multiple carriers means that you are not just
really receiving one carrier’s worth of information. It’s nonredundant
information.”); id. at 27:23–25 (Petitioner’s counsel stating, “[B]y including
the language ‘carrier aggregation,’ the claims in the [’]356 Patent would not
cover redundant data.”). As discussed above, Petitioner relies on the
’356 patent specification to support its proposed construction. Pet. 28–30.
Dr. Fay similarly relies on the ’356 patent specification to support
Petitioner’s proposed construction. Ex. 1302 ¶ 59 (cited by Pet. 29).
Dr. Fay further states, without citing supporting evidence, “[t]his
construction is consistent with the understanding of persons having ordinary
skill in the art.” Id. ¶ 60 (cited by Pet. 29). While discussing carrier
aggregation in the background technology section of his declaration,
however, Dr. Fay relies on Kaukovuori for illustrating “one example of a
receiver configured to support carrier aggregation by sending different
carriers to different receive paths.” Id. ¶ 42 (emphasis added). Aside from
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the ’356 patent, Kaukovuori is the only other reference that Dr. Fay cites in
this section of his declaration. See id. ¶¶ 31–48 (background technology
section), ¶¶ 39–42 (discussion on carrier aggregation). Notably, Kaukovuori
states that “Carrier Aggregation (CA) requires each utilized carrier signal to
be demodulated at the receiver, whereafter the message data from each of
the signals can be combined in order to reconstruct the original data.”
Ex. 1325, 1:30–33 (emphasis added). This combining feature is not present
in Petitioner’s proposed construction.
We turn now to Patent Owner’s proposed construction (i.e.,
“simultaneous operation on multiple carriers that are combined as a single
virtual channel to provide higher bandwidth”), which can be divided into
three parts: (1) “simultaneous operation on multiple carriers,” (2) which
“are combined as a single virtual channel,” (3) “to provide higher
bandwidth.” We determine that the intrinsic evidence supports each part.
For the first part, we rely on the ’356 patent’s specification, which teaches
that carrier aggregation involves “simultaneous operation on multiple
carriers.” Ex. 1301, 1:32–33 (describing “carrier aggregation, which is
simultaneous operation on multiple carriers”); see also id. at 2:53–54
(describing “carrier aggregation, which is operation on multiple carriers”).
Petitioner does not dispute this aspect of Patent Owner’s proposed
construction. See Pet. 28 (“‘Carrier aggregation’ should be construed as
‘simultaneous operation on multiple carriers.’”).
For the other two parts of Patent Owner’s proposed construction, we
rely on various prior art references, including Kaukovuori, which the
Examiner relied on during prosecution; the British application, which the
applicant cited in an Information Disclosure Statement; and the technical
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report, which the ’356 patent refers to as LTE Release 11. According to our
reviewing court, “prior art cited in a patent or cited in the prosecution history
of the patent constitutes intrinsic evidence,” and “when prior art that sheds
light on the meaning of a term is cited by the patentee, 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 Grp. SpA, 401 F.3d 1307, 1311 (Fed. Cir. 2005) (quoting Arthur A.
Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1045 (Fed. Cir. 2000))
(other citations omitted).
With respect to the second part of Patent Owner’s proposed
construction in particular, which requires combining the multiple carriers “as
a single virtual channel,” Kaukovuori teaches that “LTE Advanced proposes
the aggregation of multiple carrier signals in order to provide a higher
aggregate bandwidth than would be available if transmitting via a single
carrier signal,” and that “[t]his technique of Carrier Aggregation (CA)
requires each utilized carrier signal to be demodulated at the receiver,
whereafter the message data from each of the signals can be combined in
order to reconstruct the original data.” Ex. 1325, 1:30–33 (emphases
added) (cited by PO Resp. 15–16). As discussed above, the Examiner relied
on Kaukovuori as an anticipatory reference that discloses an “input RF
signal employing carrier aggregation.” Ex. 1316, 2–3 (Office Action). In
particular, the Examiner noted that Kaukovuori “teaches a method of
receiving data transmitted via a combination of at least a plurality of radio
frequency signals using carrier aggregation.” Id. at 3 (emphases omitted).
We note Petitioner’s contention that the passage in Kaukovuori on which
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Patent Owner relies was not discussed during prosecution. Pet. Reply 8.
That passage describes a feature that carrier aggregation “requires,”
however, and it is therefore relevant to our analysis here. See Collins, 216
F.3d at 1045.
Additionally, the British application cited in the applicant’s
Information Disclosure Statement states that “[a] known technique for
increasing the capacity of a cellular telecommunications network . . . is to
bond together two parallel carriers,” where the technique “is called carrier
or spectrum aggregation.” Ex. 2017, 1:8–11 (emphasis added) (cited by PO
Resp. 17). Regarding this reference, we note Petitioner’s contention that it
“amount[s] to less than 1% of the prior art references submitted during
prosecution of the ’356 patent” and “cannot properly be used to narrow the
express definition of ‘carrier aggregation’ supplied by the ’356 patent itself.”
Pet. Reply 8. As explained above, however, prior art cited in the prosecution
history of a patent is intrinsic evidence, and when it sheds light on the
meaning of a claim term, it can have particular value as a guide to the proper
construction of the claim term. V-Formation, 401 F.3d at 1311; Collins, 216
F.3d at 1045. Petitioner does not explain why our ability to rely on this
reference’s teachings about carrier aggregation should depend on the number
of references cited during prosecution of the application. Thus, relying on
prior art cited in the applicant’s Information Disclosure Statement, including
the British application, is appropriate in our claim construction analysis.
Although neither Kaukovuori nor the British application uses the
phrase “single virtual channel,” the cited portions of these references
discussed above support the notion of a single virtual channel. See
Ex. 1325, 1:30–33 (describing “the aggregation of multiple carrier signals to
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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. 2017, 1:8–11 (describing “increasing the capacity of a cellular
telecommunications network” by “bond[ing] together two parallel carriers”).
Moreover, we note that the technical report referred to as LTE Release 11 in
the ’356 patent also supports the notion of a single virtual channel, defining
“[c]arrier aggregation” as the “[a]ggregation of two or more component
carriers in order to support wider transmission bandwidths.” Ex. 2026, 14
(emphases added) (cited by Ex. 1301, 2:63–65 (the ’356 patent)).
We further note that the teachings in these three references are
consistent with contemporaneous extrinsic evidence that uses a phrase
similar to “single virtual channel,” namely, the phrase “virtual wideband
channel.” For example, as discussed above, Patent Owner directs us to a
U.S. patent that describes “carrier aggregation of multiple smaller
bandwidths to form a virtual wideband channel at a wireless device.”
Ex. 2013, 3:19–22 (emphasis added). The application for this patent was
filed less than one year after the application for the ’356 patent was filed.
Ex. 1301, code (22); Ex. 2013, code (22).
As to the third part of Patent Owner’s proposed construction, which
requires “provid[ing] higher bandwidth,” the technical report referred to as
LTE Release 11 in the ’356 patent defines “[c]arrier aggregation” as the
“[a]ggregation of two or more component carriers in order to support wider
transmission bandwidths.” Ex. 2026, 14 (emphasis added) (cited by
Ex. 1301, 2:63–65 (’356 patent)). In addition, Kaukovuori teaches that LTE
Advanced proposes using carrier aggregation “to provide a higher aggregate
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bandwidth.” Ex. 1325, 1:26–33 (emphasis added) (cited by Ex. 1316, 2–3
(Office Action)).
We note Petitioner’s contention that Patent Owner’s proposed
construction limits “carrier aggregation” to the LTE context, where the
’356 patent indicates it is not so limited. Pet. Reply 5–7 (asserting that
“LTE carrier aggregation . . . is merely one example of carrier aggregation”
and that “the applicant signaled that the invention would cover devices other
than those that implement LTE”); see also Tr. 23:5–9 (Petitioner’s counsel
stating, “[W]e certainly don’t dispute that ‘carrier aggregation’ has been
used in the -- in the way that the Patent Owner suggests. It’s just that’s not
the way the 356 Patent uses it. It makes very clear that it was using its broad
meaning of ‘carrier aggregation,’ which is not limited just to the LTE
example of the way that you can perform carrier aggregation.”). That
contention is unpersuasive. The language in Patent Owner’s proposed claim
construction says nothing about LTE. In addition, although the references
on which Patent Owner relies to support its proposed construction may focus
on carrier aggregation in the LTE context, they state that carrier aggregation
applies in other contexts as well. For example, the British application cited
in the applicant’s Information Disclosure Statement states that carrier
aggregation is “[a] known technique for increasing the capacity of a cellular
telecommunications network such as HSDPA, LTE, WiFi or WiMAX.”
Ex. 2018, 5. Kaukovuori similarly states that “[c]arrier [a]ggregation can be
used also in other radio communication protocols such as High Speed Packet
Access (HSPA).” Ex. 1325, 1:33–35; see also Ex. 2013, 4:46–49
(contemporaneous U.S. patent stating, “While an LTE frame structure is
illustrated, a frame structure for an IEEE 802.16 standard (WiMax), and
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IEEE 802.11 standard (WiFi), or another type of communication standard
using SC-FDMA or OFDMA may also be used.”). Accordingly, Patent
Owner’s proposed construction does not limit “carrier aggregation” to the
LTE context, consistent with the disclosure of the ’356 patent as well as the
references on which Patent Owner relies.
We also recognize that the ALJ in the related ITC investigation
adopted the construction of “carrier aggregation” that Petitioner now
proposes in this proceeding. See Ex. 1336, 16–17 (construing “carrier
aggregation” to mean “simultaneous operation on multiple carriers”). We
cannot properly evaluate the ALJ’s claim construction analysis, however,
because portions of the ALJ’s analysis were not filed in this proceeding. See
id., App. A, at 20–30 (missing pages 21, 22, 26, 28, and 29). Based on the
evidence of record, we disagree with the ALJ’s construction, and, for the
reasons discussed above, we determine that Petitioner’s proposed
construction is overly broad and that the intrinsic evidence supports Patent
Owner’s proposed construction.
In view of the foregoing, we adopt Patent Owner’s proposed
construction of “carrier aggregation,” namely, “simultaneous operation on
multiple carriers that are combined as a single virtual channel to provide
higher bandwidth.” See PO Resp. 11. For the reasons given above, our
construction is supported by the intrinsic evidence. See, e.g., Ex. 1301,
1:32–33 (the ’356 patent); Ex. 1325, 1:26–35 (Kaukovuori); Ex. 2017, 1:8–
11 (British application); Ex. 2026, 14 (LTE Release 11). Our construction
also is consistent with relevant extrinsic evidence. See, e.g., Ex. 2013, 3:19–
22. Further, our construction reflects Petitioner’s proposed language,
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“simultaneous operation on multiple carriers,” as well as portions of the
specification cited by Petitioner. See Pet. 28 (citing Ex. 1301, 1:32–33).

B. Anticipation by Lee
Petitioner asserts that Lee anticipates claims 1, 7, 8, 11, 17, and 18 of
the ’356 patent. Pet. 39–68. Patent Owner traverses this ground. PO
Resp. 32–38. For the reasons explained below, we determine that Petitioner
has not demonstrated by a preponderance of the evidence that Lee
anticipates claims 1, 7, 8, 11, 17, and 18.
We start with an overview of Lee.

1. Lee
Lee describes signal amplification circuits that may be used in multi-
radio devices (e.g., mobile devices with multiple wireless connections such
as WiFi and Bluetooth connections). Ex. 1335 ¶¶ 1–3. Figure 2, which is
reproduced below, illustrates an example of a signal amplification circuit
according to Lee. Id. ¶¶ 9, 26.
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In particular, Figure 2 shows signal amplification circuit 200, which includes
matching network 210 as well as a plurality of amplifier blocks 202_1
through 202_N. Id. ¶ 26. Each amplifier block has an input stage, a
selecting stage, and an output stage. Id. For example, amplifier block 202_1
has input stage 204_1, selecting stage 206_1, and output stage 208_1. Id.
Input signal VIN is transmitted to input nodes Nin_1 through Nin_N of input
stages 204_1 through 204_N via matching network 210. Id. In each
amplifier block, the selecting stage comprises multiple transistors that are
used to selectively couple the input stage to the output stage. Id. ¶ 27. The
output stages 208_1 through 208_N are coupled to respective output
ports Pout_1 to Pout_N, and configured to generate respective processed
signals VOUT_1 to VOUT_N when enabled. Id. ¶ 28. An output stage is
enabled when at least one transistor of a selecting stage in the same amplifier
block is turned on. Id. ¶ 31.
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Signal amplification circuit 200 operates in either a shared mode or a
combo mode. Id. ¶ 29. The output stages may be used to control the
operational mode. Id. ¶ 33. Assume, for example, output port Pout_1 is
coupled to a first radio signal processing system such as a WiFi receiver/
transmitter, and output port Pout_N is coupled to a second radio signal
processing system such as a Bluetooth receiver/transmitter. See id. ¶ 29. If
only the WiFi function of the multi-radio device needs to be active, then
signal amplification circuit 200 should operate in the shared mode. Id. ¶ 33.
Output stage 208_1 is enabled, while all other output stages are disabled. Id.
Similarly, if only the Bluetooth function needs to be active, then signal
amplification circuit 200 should operate in the shared mode. Id. Output
stage 208_N is enabled, while all other output stages are disabled. Id. If
both WiFi and Bluetooth functions need to be active, then signal
amplification circuit 200 should operate in the combo mode, where both
output stages 208_1 and 208_N are enabled and all other output stages are
disabled. Id.

2. Analysis
Claim 1 is directed to an apparatus. Claim 17 is directed to a
corresponding method and recites similar limitations as claim 1. Petitioner
relies on the same discussion for both claims. Pet. 65 (referring to
discussion of claim 1 for claim 17). Our analysis of claim 1 applies to
claim 17.
Claim 1 recites an “input RF signal employing carrier aggregation
comprising transmissions sent on multiple carriers at different frequencies to
a wireless device.” As discussed above, we construe “carrier aggregation”
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to mean “simultaneous operation on multiple carriers that are combined as a
single virtual channel to provide higher bandwidth.” See supra Part III.A.
Petitioner identifies Lee’s input signal VIN as an “input radio
frequency (RF) signal.” Pet. 42. As support, Petitioner directs us to where
Lee teaches that input signal VIN may include multiple radio frequency
signals such as a Bluetooth signal and a WiFi signal. Pet. 45 (citing
Ex. 1335 ¶ 17). Petitioner also directs us to where Lee teaches receiving
input signal VIN at signal amplification circuit 200, which Petitioner asserts
may be used in a mobile device. Id. at 45–46 (citing Ex. 1335 ¶¶ 2, 33);
Ex. 1335 ¶ 33. Relying on the declaration testimony of Dr. Fay, Petitioner
further asserts that Bluetooth and WiFi signals are transmitted over different
carriers to avoid interference. Pet. 45 n.14 (citing Ex. 1302 ¶ 79 n.17).
Petitioner contends that “[c]arrier aggregation is ‘simultaneous
operation on multiple carriers.’” Id. at 46. In this regard, Petitioner directs
us to where Lee teaches operating signal amplification circuit 200 in a
combo mode so that its output stages 208_1 and 208_N are enabled at the
same time to process the Bluetooth and WiFi signals at the same time. Id.
(citing Ex. 1335 ¶ 33). Petitioner adds that Lee teaches more specifically
“simultaneous operation on multiple carriers that increases bandwidth for a
wireless device,” as “carriers occupy bandwidth, and transmitting or
receiving data on multiple carriers increases bandwidth to the sum of the
carriers’ frequency ranges.” Id. (citing Ex. 1302 ¶ 81). To illustrate,
Petitioner states that “receiving data over two 20 MHz carriers increases
bandwidth to 40 MHz.” Id. Petitioner also contends that Lee teaches an
“increased aggregated data rate” because “Lee uses multiple carriers to send
different data,” and “[r]eceiving data on two or more carriers carrying non-
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redundant data simultaneously increases the data rate to the sum of the two
carriers’ data rates.” Id. at 48–49 (citing Ex. 1302 ¶ 83). Petitioner states
that “if the first carrier transmits data at 50 megabits per second and the
second carrier transmits data at 25 megabits per second, transmitting data
over both of those carriers at the same time increases the aggregated data
rate to 75 megabits per second.” Id. at 49.
Patent Owner counters that “Lee never describes the VIN signal as
‘employing carrier aggregation.’” PO Resp. 32. Patent Owner asserts that
“Lee consistently refers to two separate and distinct input signals ‘(e.g., a
Blue tooth signal and a WiFi signal) received by a single antenna,’” which
“emanate from separate and distinct ‘wireless connections.’” Id. (quoting
Ex. 1335 ¶¶ 2, 17). According to Patent Owner, “the mere presence of both
a Bluetooth signal and a WiFi signal cannot establish ‘carrier aggregation’
without evidence of anything being aggregated,” and “Lee fails to disclose
that the signals or connections are ‘aggregated.’” Id. Patent Owner
contends specifically that “the disclosure of two unrelated signals is not
evidence of an ‘aggregation’ because it ignores the meaning of the word
‘aggregation.’” Id. Patent Owner also contends that “Petitioner’s expert
cites no evidence or authority to support [his] opinion” that Lee teaches
carrier aggregation based on the premise that “receiving data over two
20 MHz carriers increases bandwidth to 40 MHz.” Id. Patent Owner adds,
“[n]or does Petitioner’s expert argue that Lee’s Bluetooth and WiFi
connections are combined (aggregated) as a single virtual channel.” Id.
Lastly, Patent Owner submits that sending “‘different data’ [using multiple
carriers] does not establish that the input signal employs carrier
aggregation.” Id. at 34.
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In its Reply, Petitioner responds that “Lee discloses that its input RF
signal (VIN) employs carrier aggregation (i.e., simultaneous operation on
multiple carriers (e.g., WiFi and Bluetooth)).” Pet. Reply 16. Specifically,
Petitioner contends that “the Bluetooth and WiFi signals in Lee are separate
signals that can be received simultaneously.” Id. Petitioner further contends
that “the two carriers, e.g. Bluetooth and WiFi, are aggregated at VIN,” and
submits that “because VIN goes along a single wire, and is a single input
that is the claimed ‘input RF signal,’ the Bluetooth and WiFi carriers are
aggregated, e.g., collected together, assembled at VIN.” Id. at 16–17.
According to Petitioner, “[c]alling the simultaneously-received Bluetooth
and WiFi carriers of Lee a single signal, or labeling them as separate carriers
or separate signals does not change the fact that their physical presence and
behavior is the same – they are aggregated along VIN as they are received
by the amplifier stages of Lee.” Id. at 17.
We disagree with Petitioner. On this record, we find that Lee does not
disclose “carrier aggregation,” which we construe to mean “simultaneous
operation on multiple carriers that are combined as a single virtual channel
to provide higher bandwidth.” See supra Part III.A. Petitioner does not
point to any teaching in Lee to combine multiple carriers as a single virtual
channel. Indeed, Petitioner does not even argue that Lee teaches this feature
of carrier aggregation. See generally Pet.; Pet. Reply. As discussed above,
Lee discloses transmitting WiFi and Bluetooth signals over different carriers
at the same time, and then receiving and processing both signals at the same
time. Nothing in the cited record, however, indicates that Lee’s carriers are
combined as a single virtual channel. For instance, nothing in the cited
record teaches bonding Lee’s carriers together, or aggregating Lee’s signals
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to provide a higher aggregate bandwidth than would be available if
transmitting the signals via a single carrier signal, where the message data
from each signal is combined to reconstruct the original data. See Ex. 1325,
1:30–33 (explaining that carrier aggregation requires combining data from
each signal to reconstruct the original data); Ex. 2017, 1:8–11 (explaining
that carrier aggregation involves bonding together parallel carriers to
increase the capacity of a cellular telecommunications network). Although
Lee’s signals are transmitted, received, and processed at the same time, at no
point are they combined or bonded together as a single virtual channel.
In view of the foregoing, we determine that Petitioner has not
demonstrated by a preponderance of the evidence that Lee anticipates
independent claims 1 and 17. Claims 7, 8, 11, and 18 depend from claims 1
or 17. Accordingly, we also determine that Petitioner has not demonstrated
by a preponderance of the evidence that Lee anticipates dependent claims 7,
8, 11, and 18.

C. Obviousness over Lee
Petitioner asserts that claims 7 and 8 of the ’356 patent would have
been obvious over Lee. Pet. 68–72. Claims 7 and 8 depend directly or
indirectly from claim 1. As discussed above, we determine that Petitioner
has not demonstrated by a preponderance of the evidence that Lee
anticipates claim 1. In its analysis of claims 7 and 8, Petitioner does not
provide any argument or evidence overcoming the deficiencies we noted
above as to claim 1. See id. We therefore determine that Petitioner has not
demonstrated by a preponderance of the evidence that claims 7 and 8 would
have been obvious over Lee.
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D. Obviousness over Lee and the Feasibility Study
Petitioner asserts that claims 1, 7, 8, 11, 17, and 18 of the ’356 patent
would have been obvious over Lee and the Feasibility Study. Pet. 72–75.
Patent Owner traverses this ground. For the reasons explained below, we
determine that Petitioner has not demonstrated by a preponderance of the
evidence that claims 1, 7, 8, 11, 17, and 18 would have been obvious over
Lee and the Feasibility Study.
We discussed Lee above. See supra Part. III.B.1. Accordingly, we
provide an overview of the Feasibility Study before addressing the parties’
arguments.

1. The Feasibility Study
The Feasibility Study is a 3GPP (Third Generation Partnership
Project) technical report that considers technology components for the
evolution of E-UTRA (Evolved Universal Mobile Telecommunications
System Terrestrial Radio Access). Ex. 1304, 6–8. E-UTRA also refers to
LTE-Advanced (Long Term Evolution). See id. at 8 (“E-UTRA (LTE-
Advanced)”).

2. Analysis
As discussed above with respect to anticipation by Lee, Petitioner
relies on Lee for teaching an “input RF signal employing carrier
aggregation.” See supra Part III.B.2. Under an alternative theory, Petitioner
relies instead on the Feasibility Study for teaching this limitation. Pet. 72
(“To the extent Patent Owner argues that Lee fails to teach an input RF
signal employing carrier aggregation, . . . the Feasibility Study also discloses
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this element.”). As support, Petitioner directs us to where the Feasibility
Study teaches that “LTE-Advanced extends LTE release 8 with support for
Carrier Aggregation, where two or more component carriers (CC) are
aggregated in order to support wider transmission bandwidths up to 100MHz
and for spectrum aggregation.” Id. (citing Ex. 1304, 22).
It is not sufficient, however, for Petitioner to demonstrate that an
“input RF signal employing carrier aggregation” was known. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner also must provide
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006). In that regard, Petitioner argues that an ordinarily skilled artisan
“would have found it obvious to turn to the amplification circuit of Lee in
order to process the carrier aggregated input RF signal of the Feasibility
Study.” Id. at 73. Petitioner asserts that “the Feasibility Study recognizes
that wireless mobile devices can be configured to operate with input RF
signals employing carrier aggregation” and “suggests that an ideal receiver
for noncontiguous intra-band and inter-band carrier aggregation would have
multiple RF front-ends,” each “having its own gain control (amplifier),
mixer, and analog-to-digital conversion.” Id. at 73–74 (citing Ex. 1304, 9,
26). Petitioner further asserts that Lee describes “multiple amplifier blocks
providing output to different receivers,” thereby “teach[ing] the exact type of
receiver that the Feasibility Study recognizes would work with signals
employing carrier aggregation.” Id. at 74 (citing Ex. 1335 ¶ 29). In
addition, Petitioner asserts that “[t]he Feasibility Study teaches that carrier
aggregation may provide benefits, such as wider transmission bandwidths
and spectrum aggregation.” Id. (citing Ex. 1304, 8). Petitioner contends that
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an ordinarily skilled artisan “would have been motivated to use the input RF
signal employing carrier aggregation of the Feasibility Study with the
amplification blocks of Lee in order to achieve these benefits and unlock the
features of LTE-Advanced.” Id. Petitioner submits that combining Lee and
the Feasibility Study “requires nothing more than substitution of the
‘plurality of radio frequency signals’ of Lee for the ‘Carrier Aggregation’
signals described in the Feasibility Study,” and that “[t]he circuitry of Lee is
capable of receiving and processing the types of signals described in [the]
Feasibility Study, and any further modifications that would have been made
to Lee to accept the input RF signal of the Feasibility Study would have
involved nothing more than well-known receiver tuning and filtering
techniques.” Id. at 74–75. According to Petitioner, an ordinarily skilled
artisan “would have had a reasonable expectation of success in using the
carrier aggregated input RF signals as described in the Feasibility Study with
the amplification blocks of Lee.” Id. Petitioner relies on the declaration
testimony of Dr. Fay. Id. (citing Ex. 1302 ¶¶ 134–136).
In response, Patent Owner argues that “Petitioner fails to sufficiently
articulate why a skilled artisan would have been motivated to combine these
two distinctly different references.” PO Resp. 41. Patent Owner asserts that
Lee is directed to different kinds of radio connections (e.g., Bluetooth and
WiFi) and does not disclose carrier aggregation, whereas the Feasibility
Study is directed to the same type of radio connections (e.g., LTE) and does
not disclose an amplifier circuit. Id. at 42; see also id. at 45–46. With
respect to Petitioner’s contention that it would have been obvious to
combine Lee and the Feasibility Study to achieve the benefits of carrier
aggregation and unlock the features of LTE-Advanced, Patent Owner further
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asserts that such contention is “generic and bears no relation to any specific
combination of prior art elements,” and that “[i]t also fails to explain why a
person of ordinary skill in the art would have combined elements from
specific references in the way the claimed invention does.” Id. at 43
(quoting ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d
1312, 1328 (Fed. Cir. 2012)). Patent Owner also characterizes the
Feasibility Study’s teaching that a receiver would have multiple RF front-
ends as “nothing more than the statement of a problem,” and contends that
“knowledge of a problem and motivation to solve it are entirely different
from motivation to combine particular references.” Id. at 42–43 (quoting
Metalcraft of Mayville, Inc. v. Toro Co., 848 F.3d 1358, 1367 (Fed. Cir.
2017)). In addition, Patent Owner argues that the Feasibility Study is non-
analogous art, asserting that it “fails to disclose an amplifier circuit.” Id. at
41.
On the record before us, we find that Petitioner does not explain
sufficiently why an ordinarily skilled artisan would have considered
combining Lee and the Feasibility Study to arrive at the claimed invention,
which includes an “input RF signal employing carrier aggregation.” See
Metalcraft, 848 F.3d at 1366 (“In determining whether there would have
been a motivation to combine prior art references to arrive at the claimed
invention, it is insufficient to simply conclude the combination would have
been obvious without identifying any reason why a person of skill in the art
would have made the combination.”). For instance, Petitioner contends that
its proposed combination of Lee and the Feasibility Study “requires nothing
more than substitution of the ‘plurality of radio frequency signals’ of Lee for
the ‘Carrier Aggregation’ signals described in the Feasibility Study.”
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Pet. 74; see also Pet. Reply 24 (“Petitioner’s reasons to combine [the]
Feasibility Study with Lee do not rely upon the presence of an amplifier
circuit in [the] Feasibility Study, but rather simply apply the input RF signal
of [the] Feasibility Study to the amplifier stages of Lee.”), 25 (“The system
of Lee would operate the same whether it was receiving Bluetooth and WiFi
carriers simultaneously or two LTE carriers simultaneously, and no
modifications to Lee would have been involved other than, possibly, well-
known receiver tuning and filtering techniques.”). During oral argument,
Petitioner’s counsel echoed that position, asserting, “[y]ou don’t have to add
anything to Lee, you don’t have to subtract anything from Lee in order to
use it to process this LTE carrier-aggregated signal.” Tr. 57:9–11.
Petitioner’s counsel also asserted, “[a]nd from the receiver hardware
standpoint receiving an intra-band carrier-aggregated signal is no different
than receiving a signal that originated from Wi-Fi and from Bluetooth.
Those two things are the same.” Id. at 59:17–19. As discussed above, we
construe “carrier aggregation” to mean “simultaneous operation on multiple
carriers that are combined as a single virtual channel to provide higher
bandwidth.” See supra Part III.A. In the context of the Feasibility Study,
“two or more component carriers (CC) are aggregated,” or combined as a
single virtual channel. See Ex. 1304, 22. Lee, however, does not teach
combining carriers as a single virtual channel. See supra Part III.B.2. We
find that Petitioner does 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 single virtual channel.
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We note Petitioner’s argument that “[t]he motivation to combine Lee
with the teachings of the Feasibility Study arises from the references
themselves.” See Pet. 74. In this regard, Petitioner asserts that “[t]he
Feasibility Study teaches that carrier aggregation may provide benefits, such
as wider transmission bandwidths and spectrum aggregation” and “is
supported by LTE-Advanced,” and further contends that an ordinarily
skilled artisan “would have been motivated to use the input RF signal
employing carrier aggregation of the Feasibility Study with the amplification
blocks of Lee in order to achieve these benefits and unlock the features of
LTE-Advanced.” Id. Petitioner’s argument is overly generic. The benefits
that Petitioner identifies, “wider transmission bandwidths and spectrum
aggregation,” are simply advantages of using carrier aggregation in general,
not a reason to use the specific hardware of Lee with the carrier aggregated
signal of the Feasibility Study. Petitioner does not explain why or how
using Lee’s particular circuitry would be necessary to “achieve [the] benefits
and unlock the features of LTE Advanced.” For example, Petitioner does
not argue that one of ordinary skill in the art seeking to employ carrier
aggregation would have turned to Lee because Lee’s circuitry would have
allowed for power conservation by shutting off unneeded portions of the
circuitry when not using all component carriers. See Pet. 72–75.
Petitioner also does not adequately address why or how 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 single virtual channel.
We additionally note Petitioner’s argument that an ordinarily skilled
artisan “would have had a reasonable expectation of success in using the
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carrier aggregated input RF signals as described in the Feasibility Study with
the amplification blocks of Lee.” See id. at 74–75. Petitioner relies on the
declaration testimony of Dr. Fay, who repeats this argument verbatim. See
id. (citing Ex. 1302 ¶ 136). Again, Petitioner does not explain sufficiently
why an ordinarily skilled artisan would have considered combining Lee and
the Feasibility Study to arrive at the claimed invention. Petitioner’s
argument is therefore conclusory and nothing more than a restatement of a
basic test identified by the Supreme Court for determining whether an
invention would have been obvious. See KSR, 550 U.S. at 421 (“If this leads
to the anticipated success, it is likely the product not of innovation but of
ordinary skill and common sense.”). General principles on what may
constitute a supporting rationale cannot substitute for specific application of
those principles to the facts.
Lastly, we note Petitioner’s argument that “Lee and the Feasibility
Study are highly analogous art to the ’356 patent” because each “falls within
the same field of endeavor of the ’356 patent.” Pet. Reply 22; see also id. at
26. The mere fact that Lee and the Feasibility Study are in the same field of
endeavor as the ’356 patent, however, falls short of an adequate rationale.
The same field of endeavor analysis is merely the jumping-off point in
reaching the determination of whether a claimed invention is obvious. See
K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012)
(explaining that to qualify as prior art in an obviousness analysis, references
must be analogous art—either from the same field of endeavor, or
reasonably pertinent to the problem with which the inventor is involved).
Further, any known need or problem in the relevant field of endeavor relied
on when articulating a rationale must support “a reason for combining the
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elements in the manner claimed.” See KSR, 550 U.S. at 420 (emphases
added). As discussed above, Petitioner does not explain sufficiently why an
ordinarily skilled artisan would have considered combining Lee and the
Feasibility Study to arrive at the claimed invention.
For the reasons given, Petitioner has not provided adequately
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. See Kahn, 441 F.3d at 988. Accordingly, we
determine that Petitioner has not demonstrated by a preponderance of the
evidence that claims 1, 7, 8, 11, 17, and 18 would have been obvious over
the proposed combination of Lee and the Feasibility Study.

IV. CONCLUSION10

10 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims 35 U.S.C. § Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 7, 8, 11,
17, 18
102 Lee 1, 7, 8, 11,
17, 18
7, 8 103 Lee 7, 8
1, 7, 8, 11,
17, 18
103 Lee, the
Feasibility Study
1, 7, 8, 11,
17, 18
Overall
Outcome
1, 7, 8, 11,
17, 18
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V. ORDER
In consideration of the foregoing, it is hereby
ORDERED that claims 1, 7, 8, 11, 17, 18 of the ’356 patent have not
been shown to be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
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.

For PETITIONER:
David Cavanaugh
John Hobgood
Benjamin Fernandez
Michael H. Smith
WILMER CUTLER PICKERING HALE & DORR LLP
david.cavanaugh@wilmerhale.com
john.hobgood@wilmerhale.com
ben.fernandez@wilmerhale.com
michaelh.smith@wilmerhale.com

For PATENT OWNER:
David Cochran
Matthew Johnson
Joseph Sauer
Joshua Nightingale
David Maiorana
Thomas W. Ritchie
JONES DAY
dcochran@jonesday.com
mwjohnson@jonesday.com
jmsauer@jonesday.com
jrnightingale@jonesday.com
dmaiorana@jonesday.com
twritchie@jonesday.com