Intel Corporation v. Qualcomm Incorporated

• Court: Court of Appeals for the Federal Circuit
• Decided: March 24, 2022
• Docket: 20-2092
• Status: Unpublished

Opinion

Case: 20-2092 Document: 82 Page: 1 Filed: 03/24/2022

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

INTEL CORPORATION, Appellant

v.

QUALCOMM INCORPORATED, Appellee ______________________

2020-2092, 2020-2093 ______________________

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2019- 00128, IPR2019-00129. ______________________

Decided: March 24, 2022 ______________________

GREGORY H. LANTIER, Wilmer Cutler Pickering Hale and Dorr LLP, Washington, DC, argued for appellant. Also represented by DAVID LANGDON CAVANAUGH, CLAIRE HYUNGYO CHUNG, THOMAS SAUNDERS; BENJAMIN S. FERNANDEZ, Denver, CO; JAMES M. LYONS, Boston, MA.

ISRAEL SASHA MAYERGOYZ, Jones Day, Chicago, IL, ar- gued for appellee. Also represented by THOMAS W. RITCHIE; ROBERT BREETZ, DAVID B. COCHRAN, JOSEPH M. SAUER, Case: 20-2092 Document: 82 Page: 2 Filed: 03/24/2022

Cleveland, OH; KELLY HOLT, New York, NY; JENNIFER L. SWIZE, Washington, DC. ______________________

Before NEWMAN, REYNA, and CHEN, Circuit Judges. REYNA, Circuit Judge. Appellant Intel Corporation appeals two final written decisions by the Patent Trial and Appeal Board finding that Intel failed to show that certain claims of U.S. Patent No. 9,154,356 are unpatentable as anticipated or obvious. Intel contends that the Board misconstrued the claim term “carrier aggregation” and that it committed legal and fac- tual error in finding no motivation to combine the asserted prior art. We hold that the Board’s final written decisions are contrary to law and unsupported by substantial evi- dence. The decisions of the Board are therefore reversed. BACKGROUND Appellee Qualcomm Incorporated owns U.S. Patent No. 9,154,356 (the “’356 Patent”), titled “Low noise ampli- fiers for carrier aggregation.” The ’356 Patent is directed to a device and method for receiving wireless communica- tions over multiple carrier signals. See ’356 Patent, Ab- stract. A typical wireless communication may involve combin- ing (“multiplexing”) an information signal with a carrier signal, transmitting the multiplexed signal to a wireless receiver, then removing the carrier signal (“de-multiplex- ing”) from the information signal to arrive at the commu- nicated message. See generally J.A. 11, 56, 2398–99, 2424, 5211–12. Often, a receiver will process the message signal through a low-noise amplifier (“LNA”)—a component that amplifies the information signal while keeping noise to a minimum. See ’356 Patent col. 3 ll. 60–61; J.A. 1018, 2402. Carrier signals help ensure that communications are sent via designated frequency channels. See J.A. 1013–14. Case: 20-2092 Document: 82 Page: 3 Filed: 03/24/2022

INTEL CORPORATION v. QUALCOMM INCORPORATED 3

Each frequency channel has a corresponding maximum data rate that limits the amount of information that can be transmitted over a certain period of time. J.A. 2397–98, 2423. One way to increase the maximum data rate of an overall communications system is to split a message into parts that are then transmitted simultaneously using mul- tiple carrier signals over multiple frequency channels. J.A. 2398–99, 2403, 2423–24, 2427–28, 2430, 2442. If a re- ceiver can compile the segmented pieces of a message upon receipt, the communication system is no longer limited to the bandwidth and corresponding data rate of a single channel. This process can be referred to as carrier aggre- gation. Id. The ’356 Patent discloses a receiver with a multiple- LNA structure that is equipped to receive a carrier-aggre- gated signal. Claim 1 is representative: 1. An apparatus comprising: a first amplifier stage configured to be in- dependently enabled or disabled, the first amplifier stage further configured to re- ceive and amplify an input radio frequency (RF) signal and provide a first output RF signal to a first load circuit when the first amplifier stage is enabled, the input RF signal employing carrier aggregation com- prising transmissions sent on multiple car- riers at different frequencies to a wireless device, the first output RF signal including at least a first carrier of the multiple carri- ers; and a second amplifier stage configured to be independently enabled or disabled, the sec- ond amplifier stage further configured to receive and amplify the input RF signal and provide a second output RF signal to a second load circuit when the second Case: 20-2092 Document: 82 Page: 4 Filed: 03/24/2022

amplifier stage is enabled, the second out- put RF signal including at least a second carrier of the multiple carriers different than the first carrier. ’356 Patent col. 20 ll. 42–61 (emphasis added). PROCEDURAL HISTORY On November 9, 2018, Intel filed two petitions for inter partes review (“IPR”) challenging the claims of the ’356 Pa- tent. See J.A. 9 n.5, 54 n.6. In IPR2019-00128, Intel chal- lenged claims 1, 7, 8, 11, 17, and 18 as anticipated by U.S. Patent Application Publication No. 2012/0056681 (“Lee”) or obvious over the combination of Lee and a technical re- port published by a telecommunications standard-setting body, Third Generation Partnership Project (the “Feasibil- ity Study”). J.A. 4005–89. In IPR2019-00129, Intel chal- lenged claims 2–6 and 10 as obvious over Lee or over the combination of Lee and the Feasibility Study. J.A. 5005– 93. 1 On May 27, 2020, the Board issued two final written decisions in which it construed the disputed claim term, “carrier aggregation.” 2 J.A. 1–42, 46–89. Intel argued, cit- ing the specification, that “carrier aggregation” should be broadly construed to mean “simultaneous operation on multiple carriers.” See J.A. 9–10, 54–55; see also ’356 Pa- tent col. 1 ll. 32–33 (“A wireless device may support carrier aggregation, which is simultaneous operation on multiple carriers.”). The Board rejected that construction as overly

1 Although Intel asserted additional grounds for in- validation in both IPRs, we do not address those grounds as they are moot in light of our decision here. 2 On June 4, 2020, the Board issued two Errata to the final written decisions to correct recitations of the claim language. J.A. 43–45, 90–92. The changes have been taken into account in this opinion. Case: 20-2092 Document: 82 Page: 5 Filed: 03/24/2022

INTEL CORPORATION v. QUALCOMM INCORPORATED 5

broad. Instead, the Board relied on the specification, pros- ecution history, intrinsic record, and contemporaneous ex- trinsic evidence to construe “carrier aggregation” to mean “simultaneous operation on multiple carriers that are com- bined as a single virtual channel to provide higher band- width.” J.A. 9–27, 54–72. The parties agreed that the Feasibility Study discloses carrier aggregation (as construed by the Board) and that Lee discloses all other elements of claim 1. See Appellant’s Br. 46–47; J.A. 1628, 1684. Thus, the Board’s decisions turned on whether a person of ordinary skill in the art (“POSITA”) would have been motivated to combine the Feasibility Study with Lee to arrive at the claimed inven- tion. See J.A. 35–37, 80–81. To establish motivation to combine, Intel proffered dec- laration testimony from its expert, Dr. Fay, explaining that the Feasibility Study contemplates the application of car- rier aggregation to LTE technology to achieve “LTE- Advanced.” See J.A. 1092–94 (“LTE-Advanced extends LTE release 8 with support for Carrier Aggregation, where two or more component carriers (CC) are aggregated in or- der to support wider transmission bandwidths up to 100MHz and for spectrum aggregation.” (quoting Feasibil- ity Study)). According to Dr. Fay, the Feasibility Study ex- plains that the benefits of carrier aggregation can be obtained by using a receiver with “multiple RF front-ends.” J.A. 1093–94. Dr. Fay testified that the Feasibility Study teaches every RF front-end contains a low-noise amplifier, so a POSITA would understand that the Feasibility Study effectively recommends the use of something like the cir- cuit of Lee—which discloses a multi-LNA receiver. J.A. 1093–94. Despite Dr. Fay’s testimony, the Board found that Intel “d[id] not adequately address why or how [a POSITA] would have considered using the Feasibility Study’s carrier aggregated signal with Lee’s amplifier blocks, when Lee Case: 20-2092 Document: 82 Page: 6 Filed: 03/24/2022

does not teach combining carriers as a single virtual chan- nel.” J.A. 39; see also J.A. 84. The Board rejected Intel’s argument as “overly generic” and noted that Intel “d[id] not explain why or how using Lee’s particular circuitry would be necessary ‘to achieve [the] benefits and unlock the fea- tures of LTE Advanced.’” Id. The Board concluded that Intel had not met its burden to show that a POSITA would be motivated to combine the Feasibility Study with Lee and, consequently, that Intel failed to show unpatentabil- ity of the challenged claims. J.A. 41, 86. Intel appeals the Board’s decisions. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). STANDARD OF REVIEW We review the Board’s legal conclusions de novo and its factual findings for substantial evidence. ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016). Substantial evidence “means such relevant evi- dence as a reasonable mind might accept as adequate to support a conclusion.” In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000) (quoting Consol. Edison Co. of N.Y., Inc. v. NLRB, 305 U.S. 197, 229–30 (1938)). Obviousness is a question of law with underlying fac- tual issues relating to the “scope and content of the prior art, differences between the prior art and the claims at is- sue, the level of ordinary skill in the pertinent art, and any objective indicia of non-obviousness.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)). “The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact,” which, as noted above, we review for substantial evidence. Par Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (quoting Alza Corp. v. Mylan Lab’ys, Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006)). Case: 20-2092 Document: 82 Page: 7 Filed: 03/24/2022

INTEL CORPORATION v. QUALCOMM INCORPORATED 7

DISCUSSION I As a threshold matter, we first address Qualcomm’s contention that Intel lacks standing to appeal the Board’s final written decisions on grounds that Intel fails to estab- lish a non-speculative risk of an infringement suit by Qual- comm. Appellee’s Br. 22–33. This is not the first time this court has addressed this standing issue between these parties. In two prior cases, we found Intel had standing on appeal based on the fact that Qualcomm sued Apple Inc. for infringement of the pa- tent at issue, and that a main component of the accused products identified in Qualcomm’s infringement conten- tions was manufactured by Intel. Appellant’s Reply Br. 24–30. Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 808 (Fed. Cir. 2021) (determining that Intel had standing to bring its appeals); Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 789–90 (Fed. Cir. 2021) (same). We see no reason to find otherwise in this appeal. As such, Intel has demon- strated a non-speculative risk of being sued by Qualcomm for infringement and therefore has standing to bring this appeal. See Grit Energy Sols., LLC v. Oren Techs., LLC, 957 F.3d 1309, 1319–20 (Fed. Cir. 2020). We now turn to the merits of Intel’s appeal. II On appeal, Intel challenges the Board’s construction of the claim term “carrier aggregation,” as well as the Board’s finding of no motivation to combine the asserted prior art. See Appellant’s Br. 28–45. We conclude that the Board committed legal and factual error in assessing motivation to combine Lee with the Feasibility Study, even under the Board’s construction of “carrier aggregation.” Obviousness requires, among other things, a finding that a skilled artisan would have been motivated to com- bine the teachings of prior art to arrive at the claimed Case: 20-2092 Document: 82 Page: 8 Filed: 03/24/2022

invention. See OSI Pharms., LLC v. Apotex Inc., 939 F.3d 1375, 1382 (Fed. Cir. 2019) (quoting Regents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286, 1291 (Fed. Cir 2018)). The inquiry into the existence of a motivation to combine is a flexible one—we assume a POSITA is a person of ordinary creativity with common sense, common wis- dom, and common knowledge. See Fleming v. Cirrus De- sign Corp., No. 21-1561, — F.4th —, 2022 WL 710549, at *6 (Fed. Cir. 2022) (citing Randall Mfg., 733 F.3d at 1362; KSR, 550 U.S. at 421). In light of a POSITA’s knowledge and creativity, an obviousness determination does not re- quire prior art to expressly state a motivation for every ob- vious combination. See, e.g., id. Moreover, there is no requirement that a motivation to combine must be sepa- rately expressed in each prior art reference. Here, the Board rejected Intel’s position on grounds that Intel “d[id] not adequately address why an ordinarily skilled artisan would have considered using the Feasibility Study’s carrier aggregated signal with Lee’s amplifier blocks, when Lee does not teach combining carriers as a sin- gle virtual channel.” J.A. 39, 84 (emphasis added). But whether Lee teaches carrier aggregation is immaterial be- cause, as the parties agree, the Feasibility Study teaches carrier aggregation. The Board’s requirement that both references teach carrier aggregation was error. Furthermore, the Board erred insofar as it penalized Intel for failing to “explain why or how using Lee’s partic- ular circuitry would be necessary ‘to achieve [the] benefits and unlock the features of LTE Advanced.’” J.A. 39, 84 (emphases added). This court has recognized that an obvi- ousness showing “does not require that a particular combi- nation must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.” Novartis Pharms. Corp. v. West-Ward Pharms. Int’l Ltd., 923 F.3d 1051, 1059 (Fed. Cir. 2019) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Intel was required to show only that Case: 20-2092 Document: 82 Page: 9 Filed: 03/24/2022

INTEL CORPORATION v. QUALCOMM INCORPORATED 9

“‘there is something in the prior art as a whole to suggest the desirability . . . of making the combination,’ not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combi- nation available.” Fulton, 391 F.3d at 1200 (quoting In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992)). Applying the appropriate legal standard, the asserted prior art discloses the desirability of combining the Feasi- bility Study with Lee to reach the claimed invention in or- der to claim the benefit of carrier aggregation: more bandwidth. As identified by Intel’s expert, the Feasibility Study expressly contemplates the benefits of carrier aggre- gation as applied in the LTE context, and that those bene- fits could be achieved by using a receiver with multiple RF front ends. Dr. Fay also explained that every RF front end contains a low-noise amplifier, so a skilled artisan would understand that the Feasibility Study effectively recom- mends combining carrier aggregation with a device like the receiver taught in Lee, which is a multi-LNA receiver. J.A. 1093–94. Whether Lee presents the best combination to achieve the claimed invention is irrelevant. See Novar- tis, 923 F.3d at 1059. The evidence of record clearly shows a skilled artisan would have been motivated to achieve the benefits of car- rier aggregation with a multi-LNA receiver like Lee’s. Ac- cordingly, we reverse the Board’s finding of no motivation to combine. See Corning v. Fast Felt Corp., 873 F.3d 896, 902–03 (Fed. Cir. 2017) (reversing where the “only one per- missible factual finding” was that a skilled artisan would be motivated to combine the prior-art references); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077 (Fed. Cir. 2015) (reversing under similar circumstances). CONCLUSION The Board’s final written decisions finding that a skilled artisan would not have been motivated to combine the asserted prior art to arrive at the claimed invention are Case: 20-2092 Document: 82 Page: 10 Filed: 03/24/2022

contrary to law and unsupported by substantial evidence. Under the correct legal standard, Intel met its burden in showing that a skilled artisan would have been motivated to combine Lee with the Feasibility Study to arrive at the claimed invention. Thus, we reverse and hold that claims 1–8, 10–11, and 17–18 of the ’356 Patent are unpatentable as obvious. REVERSED COSTS Costs to Intel.