- Intel Corporation v. Qualcomm, Inc.Some claims unpatentablePTAB · Feb 20, 2020 · IPR2018-01240 · APJ Trevor M Jefferson · IPR · Final written decision
Claim 11 is unpatentable as obvious over Chu, Choi 2010, Hanington, and Myers; claim 10 was not shown unpatentable over Chu, Choi 2010, and Hanington.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The ’558 specification and the context of claims 6, 8, and 13 and the related language of claim 10 support that the “source” must be able to receive both the boosted supply voltage and the first supply voltage (a selective boost). PO Resp. 35–38; Ex. 1201, 1:42–50, 5:31–49, 8:55–62, 8:62–9:17, 9:21–36, 10:19–29, Figs. 3 and 5. Accordingly, we do not agree with Petitioner that the use of a conditional “or” in claim 10 indicates that only one voltage is necessary to meet the claims. Pet. Reply 3–9. We credit Patent Owner’s evidence and arguments that the language of claims 10 and 11 and the ’558 patent specification support that claim 10, like dependent claim 11, require a selective boost. See PO Resp. 26–29. Petitioner’s arguments assert both that Patent Owner improperly limits the construction to one disclosed embodiment and that the Patent Owner’s construction improperly excludes a disclosed embodiment. Pet Reply 6–8. We are not persuaded by Petitioner’s argument that Patent Owner’s construction should be rejected because it excludes an embodiment. Pet. Reply 6 (citing EPOS Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014); Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed. Cir. 2003); Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1378 (Fed. Cir. 2001)). The cases Petitioner cites refer to constructions that read out preferred embodiments. See EPOS Techs., 766 F.3d at 1347; Dow Chem. Co., 257 F.3d, at 1378; Anchor Wall Sys., 340 F.3d at 1308. Petitioner provides no persuasive evidence that the embodiment they identify as being excluded is the preferred embodiment of the ’558 patent. Further, Petitioner cites no support that claims 10 or 11 must be construed to cover all embodiments. See Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010). The Federal Circuit has stated that the broadest reasonable construction is not required to cover the most embodiments in a patent specification, but “must be reasonable in light of the claims and specification. The fact that one construction may cover more embodiments than another does not categorically render that construction reasonable.” PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). We are not persuaded by Petitioner’s argument that exclusion of a single embodiment renders Patent Owner’s claim construction improper.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“persuasive. We credit Petitioner’s argument and evidence regarding the Chu and Choi 2010 concerns with power degradation and efficiency, which Patent Owner’s declarant testified were common concerns known before the ’558 patent. Pet. Reply 11–12 (citing Ex. 1330, 13:12–20, 13:21–14:2, 259:7–18); Ex. 1027 ¶ 18. We find that Petitioner presents persuasive evidence and argument that the issues of power degradation and efficiency were known in the art and within the knowledge and skill of a person of ordinary skill in the art. See id.; see also PO Resp. 32–33 (noting that “Patent Owner does not contest that efficiency and output distortion/robustness problems were generally known in the art.”). We also find that Petitioner identifies persuasive motivations to combine from the references themselves, identifying specific teachings in Choi 2010 in reference to boost converter systems like those in Chu. Pet. 57–58 (citing Ex. 1306, 1074, 1077). Indeed, Patent Owner’s declarant, Dr. Kelley, agreed that Choi 2010 teaches the use of boost converters to address battery degradation. Ex. 1030, 105:20–106:4, 156:3–6. Finally, Petitioner provides evidence that degrading battery performance affecting operation further motivates the combination of Chu and Choi 2010. Ex. 1030, 165:17–22; Pet. 57–61. We are also persuaded by Petitioner’s citation to secondary references of examples that use a boost converter to prevent distortion provides further support that a person of ordinary skill in the art would have been motivated to combine Chu with Choi 2010 and Hanington. See Pet. 58–60 (citing Ex. 1318, code (57); Ex. 1315, 8); Ex. 1303 ¶¶ 109–111. Patent Owner’s arguments regarding the secondary references attempts to bodily incorporate the teachings from these references into Chu and Choi 2010. Patent Owner also fails to address persuasively the support for the teachings these secondary references provide for modifying Chu’s supply modulator to incorporate a boost converter as disclosed in Choi 2010 and Hanington. Pet. 58–60 (citing Ex. 1318, code (57); Ex. 1315, 8); Ex. 1303 ¶¶ 109–111. Indeed, Patent Owner’s declarant agrees extending battery life, which is discussed in Exhibit 1315 and cited by Petitioner as a motivation to combine Chu and Choi 2010 (Pet. 58–60), would be achieved by the combination of Chu and Choi 2010 and was within the ordinary skill of an artisan. Ex. 1330, 281:6–282:2, 284:6–12. We also disagree with Patent Owner that the Petition fails to show how to combine the references to solve the conflicting problems that Petitioner alleges as motivation—efficiency and degradation. PO Resp. 33– 35. First, we credit Dr. Kelley’s testimony that the result of the combination was within the knowledge and skill of an artisan. Ex. 1330, 105:20–106:4, 156:3–6, 281:6–282:2, 284:6–12. Second, we find that the evidence and argument in the Petition explain sufficiently how Chu would have been modified to incorporate the boost supply voltage of Choi 2010 and Hanington and that such modifications involve typical and well known components widely used in boost converters. See Pet. 68–70; Ex. 1303 ¶¶ 112–113, 126–127; Ex. 1329 ¶ 24.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Owner argues “Choi 2010’s boost is a constant boost applied to the linear amplifier, and thus teaches away from a selective boost.” PO Resp. 39. Patent Owner further argues combining Myers’ selective boost with Choi 2010’s constant boost would destroy the purpose and benefits of Choi 2010’s design. Id. at 43. We do not find that Choi 2010’s use of a constant boost teaches away from selective boost in Myers. Patent Owner’s evidence and argument do not persuade us that Choi 2010’s teachings of boost exclude or discourage the use of selective boost. The portion of Choi 2010 Patent Owner cites does not criticize or discourage the use of selective boost, but applies boost generally to achieve its goals. See Ex. 1306, 1333–1334. We do not find that the teachings in Choi 2010 discourage a person of ordinary skill in the art from working with boosted voltage to achieve battery efficiencies. See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Choi 2010 does not discredit or criticize selective boost to improve efficiency.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“the ITC investigation (see Ex. 2001, 36–37), Petitioner does not assert the direct incorporation of Myers technology into the combination of Chu and Choi 2010/Hanington. Instead, Petitioner asserts that Myers teaches a method of choosing a power source to improve operation efficiency. Pet. Reply 22–23; Pet. 72–76; Ex. 1312, 9:18–21, 1:19–23. Furthermore, Patent Owner’s declarant, Dr. Kelley, acknowledges this teaching. Ex. 1330, 270:13–271:5. Petitioner’s arguments and evidence differ materially from those cited in the ITC investigation. See Ex. 2001, 36–37. In the case before us, Petitioner does not directly incorporate Myers hardware into Chu or Choi 2010 and Hanington, but asserts that Myers— particularly Figure 7 that discloses the technique of switching between two different power sources—teaches a technique that would have been within the level of skill of an artisan at the time of patenting. Pet. Reply 23; see Pet. 72–76; Ex. 1330, 283:16–284:1; see also Ex. 1330, 152:21–153:4 (agreeing that a person of ordinary skill would have known how to select between two power sources). Contrary to the combination of the envelope elimination and restoration (EER) circuits of Myers into the linear amplifiers of Chu and Choi 2010 argued at the ITC, Petitioner has provided testimony and citations to the record that Myers’s selection functionality is applicable to the combination of Chu and Choi 2010. We credit Petitioner’s argument and evidence that a person of ordinary skill in the art would have been motivated to combine Chu, Choi 2010, and Hanington with the technique from Myers and would have had a reasonable expectation of success in doing so. Pet. 79–81 (providing supporting argument and testimony regarding battery and boosted voltage efficiency as taught by Myers). We find that Petitioner’s argument and evidence provide sufficient rationales with articulated reasoning to support the application of the Myers selection technique with the amplifiers of Chu and Choi 2010 to achieve battery efficiency during described operating modes. Pet. 57–61 77–82. Indeed, Dr. Kelley’s testimony supports the applicability of the techniques in Myers. See Ex. 1330, 270:13–271:5, 281:6–282:2, 284:6–12; Ex. 1312, 9:18–21 (discussing Myers’ teaching of choosing power source for operation efficiency). Based on our review of the full record, Petitioner demonstrates by a preponderance of the evidence an articulated rationale with articulated reasons to combine Chu, Choi 2010, Hanington, and Myers. In addition, Petitioner demonstrated by a preponderance of the evidence that Chu, Choi 2010, Hanington, and Myers teach the limitations of dependent claim 11.” slip op. at 24
Patent outcomesUS 8,698,558 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,698,558
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.