Silicon Laboratories, Inc.v.Cresta Technology Corporation

Patent Trial and Appeal Board

Oct 21, 2015

10923595 (P.T.A.B. Oct. 21, 2015)

Trials@uspto.gov Paper 47
Tel: 571-272-7822 Entered: October 21, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SILICON LABORATORIES, INC.,
Petitioner,

v.

CRESTA TECHNOLOGY CORPORATION,
Patent Owner.
____________

Case IPR2014-00881
Patent 7,251,466 B2

____________

Before PHILLIP J. KAUFFMAN, GREGG I. ANDERSON, and
PATRICK M. BOUCHER, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
A. Background
Petitioner, Silicon Laboratories, Inc., filed a petition (Paper 2, “Pet.”)
to institute an inter partes review of claims 1, 2, 5, 8, 9, 11–13, 16, 20–22,
24–26, 29, 31, 32, 35–37, and 39 (the “challenged claims”) of U.S. Patent
7,251,466 B2 (Exhibit 1001, the “’466 patent”). Patent Owner, Cresta
Corporation, timely filed a Preliminary Response. Paper 8 (“Prelim.
Resp.”). In an October 24, 2014, Decision to Institute (Paper 9, “Dec.”) we
instituted trial on claims 1, 2, 5, 8, 11–13, 20, 21, 24–26, 31, 32, 35, 36, and
39.
After institution of trial, Patent Owner filed a Patent Owner’s
Response (Paper 28, “PO Resp.”), and Petitioner filed a Reply (Paper 31,
“Pet. Reply”).
Patent Owner filed a Motion to Exclude certain evidence, which we
discuss in Section III below.
At the request of both parties, oral hearing was held on Thursday June
12, 2015. Papers 35, 36, and 37. A transcript of the oral hearing is included
in the record. Paper 44 (“Tr.”).
1

We have jurisdiction under 35 U.S.C. § 6(c). This is a Final Written
Decision under 35 U.S.C. § 318(a) as to the patentability of the claims on
which we instituted trial. Based on the record before us, Petitioner has
demonstrated by a preponderance of the evidence that claims 1, 2, 5, 8, 12,
13, 20, 21, 25, 26, 31, 32, 35, and 36 are unpatentable.

1
A single transcript was created for the oral hearing for IPR2014-00728,
IPR2014-00809, and IPR2015-00881. See infra, Section I.B. (“Related
Proceedings”).
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B. Related Proceedings
The parties contend that the ’466 patent is at issue in: Cresta
Technology Corporation v. Maxlinear, Inc. et al., Case No. 1:14-cv-00079-
RGA, (filed on Jan. 21, 2014) (D. Del.), and in International Trade
Commission (“ITC”) investigation No. 337-TA-907. Pet. 1; Paper 4 at 4,
2

see also Ex. 1002 (Complaint).
The parties are also involved in IPR2014-00728 challenging U.S.
Patent No. 7,075,585 B2, and IPR2014-00809, challenging U.S. Patent No.
7,265,792 B2. Pet. 1–2; Paper 4 at 3.

C. The ’466 patent
The ’466 patent relates to a tuner circuit that includes an integrated
band selection filter coupled to receive an input Radio Frequency (RF)
signal and provide a band selected output signal. Ex. 1001, Abstract; 1:6–8.
The ’466 patent describes an embodiment of a band pass filter bank 200 that
includes: variable amplifier 202 (first variable amplifier) and multiple band
pass filters BPF-A to BPF-Z (band pass filters).
3
Id. at 6:4–7, Fig. 4.

2
The pages of Paper 4 are not numbered; we count the cover page as
page 1.
3
Parenthetical nomenclature is to the corresponding language of
independent claim 35.
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Figure 4 of the ’466 patent follows:

Figure 4 depicts a circuit diagram of a bank of integrated band pass filters
according to one embodiment of the ’466 patent. Id. at 3:62–64.
Variable amplifier 202 includes an input node coupled to the RF input
connector for receiving the incoming RF signal, and an output node. Id. at
1:21; 6:4–6, Fig. 4. Band pass filter bank 200 includes multiple band pass
filters BPF-A to BPF-Z connected in parallel between the output node of
variable amplifier 202 and output node 210 providing the filtered output
signal. Id. at 6:6–9, Fig. 4.
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BPF-A includes enable switch SA (a first switch) coupled between the
output node of variable amplifier 202 and node 206A (a second node).
4
Id.
at 6:29–31, Fig. 4. BPF-A also includes a bank of capacitors C1A to CnA (a
plurality of switchably connected capacitors) connected in parallel between
node 206A (second node) and a voltage V1 (first voltage), each switchably
connected capacitor comprising a capacitor C1A and switch S1A connected
in series between the node 206A (second node) and voltage V1 (first
voltage). Id. at 6:34–37. BPF-A includes integrated inductor L1A (an
inductor) coupled between the node 206A (second node) and voltage V2
(second voltage), inductor L1A being an integrated planer spiral inductor.
Id. at 6:44–45.
The inductance of integrated inductor L1A and the capacitance
provided by the bank of capacitors (plurality of switchable connected
capacitors) form an LC resonator for selecting the desired frequency band
from the incoming RF signal. Id. at 6:46–49; Fig. 4.
BPF-A also includes unity gain buffer 204A having an input node
coupled to node 206A (second node) and an output node coupled output
node 210 (the first node providing the filtered output signal). Id. at 6:49–53;
Fig. 4.

4
The construction of the other band pass filters (e.g., BPF-B) is similar.
Ex. 1001, 6:28–29.
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D. Grounds
Inter partes review was instituted on the following grounds under 35
U.S.C. § 103(a):
References Claims
Gomez,
5
Waight,
6
and Shen
7
1, 2, 5, 8, 9, 20, 21, 31, 32, 35,
and 36
Gomez, Waight, Shen, and Liou
8
11, 12, 24, 25, and 39
Gomez, Waight, Shen, Liou, and Chiu
9
13 and 26

II. CLAIM CONSTRUCTION
10

Our analysis necessitates that we construe the following terms using
the broadest reasonable interpretation of the claims. See Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 37 CFR
§ 42.100(b).

A. Illustrative Claim
Of the challenged claims, claims 1, 20, and 35 are independent.
Claim 35 is representative, and follows:

5
Ex. 1004, U.S. Patent No. 7,336,939 B2 (Feb. 26, 2008).
6
Ex. 1005, U.S. Patent No. 7,095,454 B2 (Aug. 22, 2006).
7
Ex. 1007, U.S. Patent No. 7,299,020 B2 (Nov. 20, 2007).
8
Ex. 1006, U.S. Patent No. 6,420,773 B1 (July 16, 2002).
9
Ex. 1013, U.S. Patent No. 5,559,360 (Sept. 24, 1996).
10
In the Patent Owner Response, Patent Owner argues that the proper
standard for claim construction is the judicial standard under Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). PO Resp. 7–11. At
oral argument, Patent Owner acknowledged that this argument is moot in
light of a subsequent Federal Circuit decision. See Tr. 70 (referring to In re
Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015).

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35. A band pass filter for filtering an input RF signal,
comprising:
a first variable amplifier having an input node coupled to
receive the input RF signal and an output node providing a first
output signal;
a band pass filter connected between the output node of
the first variable amplifier and a first node providing the filtered
output signal, the band pass filter comprising:
a first switch coupled between the output node of
the first variable amplifier and second node;
a plurality of switchably connected capacitors
connected in parallel between the second node and a first
voltage, each switchably connected capacitor comprising
a capacitor and a switch connected in series between the
second node and the first voltage;
an inductor coupled between the second node and
a second voltage, the inductor being an integrated planer
spiral inductor, wherein the inductance of the inductor
and the capacitance provided by the plurality of
switchably connected capacitors form an LC resonator;
and
a unity gain buffer having an input node coupled to
the second node and an output node coupled to the first
node providing the filtered output signal.

B. Band pass filter
Each of the independent claims includes either a “plurality of band
pass filters” (claims 1 and 35) or a “band pass filter” (claim 20).
In the Decision to Institute, we interpreted that “band pass filter,” as
used in the body of independent claims 1, 20, and 35, is not limited to use
in the television transmission spectrum. Dec. 6–9.
Patent Owner argues that “band pass filter” should be construed to
mean “a circuit for television receivers that allows television signals having
frequencies within a given range within the television transmission spectrum
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to pass through and substantially attenuates television signals having
frequencies outside of the given range.” PO Resp. 6–7.
Petitioner contends that Patent Owner’s interpretation lacks support
and the term “band pass filter” should be given the full breath of its plain
and ordinary meaning. Pet. Reply 2. Petitioner does not provide that plain
and ordinary meaning. Id.
We begin our analysis with the language of the claims. Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.
Cir. 2004) (the claims of the patent define the invention).
Claim 1 is directed to a tuner circuit receiving an input RF signal
having a first transmission spectrum. Claim 35 is directed to a band pass
filter for filtering an input RF signal. The body of claims 1 and 35 does not
explicitly recite that the band pass filter or filters is for a television receiver
or operates only on signals within the television transmission spectrum.
Consequently, nothing in claim 1 or claim 35 supports Patent Owner’s
contention that the band pass filer is limited to signals having a frequency
within the television transmission spectrum.
Claim 20 is directed to a “band pass filter bank for a television tuner
for tuning an input RF signal having a first transmission spectrum.” The
body of claim 20 does not explicitly recite that the plurality of band pass
filter is for a television receiver or operates only on signals within the
television transmission spectrum. Consequently, claim 20 calls for a band
pass filter that is capable of use as a television tuner, but use of the device
for other than the television transmission spectrum is not prohibited.
With the language of the claims in mind, we turn to the Specification.
Although the Specification describes the Field of the Invention as relating to
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a television signal receiver that includes a band pass filter, the description
does not go so far as to describe that the band pass filter is limited to
operation in the television transmission spectrum. See Ex. 1001, 1:7–8. The
Specification of the ’466 patent does not provide a lexicographical definition
that would limit a band pass filter to the television transmission spectrum.
The Specification provides examples of use of a band pass filter in the
television transmission spectrum; however, the language of the claims is
broader than this example, and therefore this example is not imported into
the meaning of the claims. See Superguide Corp. v. DirecTV Enters., Inc.,
358 F.3d 870, 875 (Fed. Cir. 2004).
The Specification describes that the band pass filter receives the full
range of transmission frequency. Ex. 1001, 4:60–63. The Specification also
describes that “the tuner IC [integrated circuit] of the present invention can
have applications in receiving incoming RF signals other than a television
signal.” Ex. 1001, 11:11–13. Therefore, the ’466 patent has not
demonstrated a clear intent to limit a band pass filter to the television
transmission spectrum; rather, the ’466 patent explicitly acknowledges that a
band pass filter has broader application. See Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004).
In light of this, we cannot agree with Patent Owner’s assertion that the
band pass filter is limited to use in the television transmission spectrum.

C. Integrated planar spiral inductor
Each of independent claims 1, 20, and 35 recite that the apparatus
includes an “integrated planar spiral inductor.”
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In the Decision to Institute, we interpreted that an integrated planar
spiral inductor as claimed is “an inductor that is not formed discrete from the
other circuitry, is situated in a single plane, and has coils that go about a
fixed point at a generally increasing (or diminishing) distance from that
point.” Dec. 9–10 (emphasis added). Petitioner agrees with this
interpretation. Pet. Reply 3.
Patent Owner contends that a “spiral” as claimed should not be
limited to a “coil” for two reasons. PO Resp. 6. First, “coil” has a three
dimensional connotation while the claimed inductor has a mainly two
dimensional geometry in that each layer of the claimed inductor sits in a
plane parallel to the other layers. Id. (citing Ex. 2003 ¶ 38). Second, a spiral
can be approximated by a pattern of straight segments while a “coil” cannot.
Id. Based on this, Patent Owner asserts that a spiral as claimed should be
construed to mean “a geometry that goes about a fixed point at a generally
increasing (or diminishing) distance from that point.” Id.
Patent Owner’s concerns are accounted for by our claim construction.
The term “coil,” in context of our claim construction, does not connote
three-dimensional geometry. To the contrary, our interpretation expressly
notes that the inductor is “planar” in that it is situated in a plane (two-
dimensional). Dec. 9–10. Further, our interpretation states that the term
“coil” is used only to refer to the conductive portion of the inductor so as to
avoid using the word “spiral” to define the claim term “spiral.” See Dec. 10.
In other words, the term “coil” simply means the conductive portion of the
inductor and no further meaning is implied. Regarding the claim term
“spiral,” our interpretation explains that the ordinary meaning of spiral as
“continuously curving” is inconsistent with the Specification, which
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describes that the conductive portion of the inductor may be formed using
other than a continuous curve (e.g., a square, rectangular, octagonal, or other
suitable shape). Dec. 10 (citing Ex. 1001, 4:1–6; 10:18–22). Consequently,
Patent Owner’s interpretation is consistent with our claim construction.
We interpret an integrated planar spiral inductor as claimed as an
inductor that is not formed discrete from the other circuitry, is situated in a
single plane, and has coils that go about a fixed point at a generally
increasing (or diminishing) distance from that point.

III. PATENT OWNER’S MOTION TO EXCLUDE
A. Introduction
As mentioned above, Patent Owner filed a Motion to Exclude
Exhibits 1011 and 1072. Paper 34 (“Mot.”). Petitioner filed an Opposition
to the Motion (Paper 40, “Opp.”), and Patent Owner filed a Reply to the
Opposition (Paper 41, “Opp. Reply”).

B. Objections
A motion to exclude “must identify the objections in the record and
must explain the objections.” 37 C.F.R. § 42.64(c). Patent Owner
acknowledges these two requirements. Mot. 2. Patent Owner then states
that “[w]e specify where the objections to Dr. Holberg[]’s declarations were
originally made on the record.” Id. Despite acknowledging these
requirements and expressing an intent to identify the objections, Patent
Owner does not identify where the objections are in the record, nor explain
those objections. Mot., passim. Due to these omissions, we are unable to
assess the timeliness of Patent Owner’s objections as well as whether the
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objections contained sufficient particularity to allow correction in the form
of supplemental evidence. See 37 C.F.R. § 42.64(b)(1). For these reasons
alone, Patent Owner’s Motion is deficient and is denied. See 37 C.F.R.
§§ 42.20(c), 42.22, 42.64(c).

C. Other Content of the Motion
Ignoring these deficiencies and considering the remaining content of
the Motion, for the reasons that follow, we are not persuaded that Exhibits
1011 and 1072 should be excluded.
Exhibit 1011 is a Declaration of Dr. Douglas Holberg in support of
the Petition, and Exhibit 1072 is a Declaration of Dr. Holberg in support of
Petitioner’s Reply. See Pet., v; Pet. Reply, 6.
Patent Owner moves to exclude both declarations because
Dr. Holberg’s “knowledge is below what one of ordinary skill in the relevant
art would know, and would have to know to understand the relevance of the
prior art and the invention” and because “his testimony clearly shows lack of
credibility.” Mot., 1. Patent Owner clarified at the oral hearing that
“credibility” does not refer to Dr. Holberg’s honesty, but to his ability to put
support for his opinions on the record. Tr. 76:9–77:24. Petitioner opposes,
contending that Dr. Holberg is qualified as an expert in the relevant
field. Opp., 3–4.
The parties disagree in their characterization of the relevant field in
evaluating whether Dr. Holberg is “qualified as an expert by knowledge,
skill, experience, training, or education.” See Fed. R. Evid. 702. Patent
Owner contends that a person of ordinary skill in the art at the time of the
invention of the ’466 patent,
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would be familiar with: 1) fundamental RF circuit design
concepts, e.g. RF filters, LC tanks, RF variable gain amplifiers
and low noise amplifiers 2) fundamental RF IC components,
e.g. inductors, capacitors, and switches, 3) the required
selectivity for an analog TV tuner, and 4) basic usage of the
Cadence design platform (the most widespread RF integrated
circuit design tool).
Mot., 3–4 (citing Ex. 2003 ¶ 19). We find Patent Owner’s characterization
of the relevant field too narrow. The ’466 patent characterizes the field of
the invention as follows, notably lacking the strong focus of Patent Owner’s
characterization on RF circuit design:
The invention relates to a television signal receiver, and in
particular, to a television signal receiver an integrated band
selection filter.
Ex. 1001, 1:6–8. As Petitioner observes, the ’466 patent does not even
mention selectivity for an analog TV tuner or basic usage of the Cadence
design platform. Opp., 2. These factors weigh significantly against defining
the field of invention as narrowly as Patent Owner proposes. Instead, we
agree with Petitioner, and find that a person of ordinary skill in the art would
have held at least a Master of Science or higher degree in electrical
engineering, have at least four years of experience with mixed signal system
design, including analog front ends and subsequent digital signal processing
of various analog and digital signal formats of video and audio content. Pet.
10–11.
Dr. Holberg’s education and experience exceed these
qualifications. Ex. 1011 ¶ 3, App. A. We have also considered Patent
Owner’s contention that Dr. Holberg’s cross-examination testimony shows
that he lacks ordinary skill in the art of the invention, and have reviewed that
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testimony. We conclude that Dr. Holberg is an expert in the relevant field of
the invention.
Accordingly, we deny Patent Owner’s Motion to Exclude.

D. Related Contention
Patent Owner repeats the argument regarding the level of ordinary
skill in the art, and contends that Dr. Holberg’s Declaration should be given
no weight because Dr. Holberg lacks ordinary skill in the art. PO Resp. 11–
14.
As an initial matter, we note that Patent Owner does not specify which
of Dr. Holberg’s two Declarations (Exs. 1011, 1072) should be given no
weight.
We clarify that Patent Owner does not present argument or evidence
that Dr. Holberg’s testimony fails to disclose the underlying facts or data on
which his opinion is based. See 37 C.F.R. § 42.65(a). Further, as explained
above, Patent Owner’s argument is unpersuasive, in part, because it is
premised on a mischaracterization of the field of the invention.
Patent Owner has not persuaded us that either of Dr. Holberg’s
declarations should be give no weight.

IV. PATENTABILITY
A. Introduction
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
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subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art; (3)
the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
We consider Patent Owner to have admitted those aspects of these
grounds of unpatentability that are uncontested by Patent Owner and are
material facts. See 37 C.F.R. § 42.23(a) (in an opposition, any material fact
not specifically denied may be considered admitted), § 42.120(a) (the patent
owner response is an opposition).
The parties rely upon expert testimony. Petitioner proffered the
Declaration of Dr. Douglas Holberg (“Holberg Declaration,” Ex. 1011) with
the Petition and a second Declaration with Petitioner’s Reply (“Holberg
Reply Declaration,” Ex. 1072). Patent Owner proffered the Declaration of
Dr. Ion E. Opris (“Opris Declaration,” Ex. 2003) with its Response. A
transcript of Dr. Opris’s Deposition (“Opris Dep.,” Ex. 1056) was submitted
by Petitioner. A transcript of Dr. Holberg’s Deposition (“Holberg Dep.,”
Exhibits 2048 and 2049) was submitted by Patent Owner.
We address each of the three asserted grounds of unpatentability in
turn.

B. Obviousness over Gomez, Waight, and Shen
Petitioner contends that claims 1, 2, 5, 8, 9, 20, 21, 31, 32, 35, and 36
would have been obvious over Gomez, Waight, and Shen. Pet. 12–38. We
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analyze independent claims 35, 20, and 1 and then analyze the dependent
claims.
1. Independent Claim 35
a. Variable amplifier
Claim 35 is directed to a band pass filter that includes a first variable
amplifier. Petitioner contends that Gomez’s low-noise amplifier (LNA) 301
receives an input RF signal and provides an output signal and therefore
corresponds to a first variable amplifier as claimed, except that LNA 301 is
not explicitly described as variable. Pet. 13–15; Ex. 1004, 4:1–3; Fig. 3.
Petitioner contends that it would have been obvious to modify Gomez’s
LNA 301 to be variable like Waight’s LNA 204 in order to compensate for
environmental and physical conditions the degrade television signals. Pet.
13–14; Ex. 1011 ¶ 15–16.
11
We agree with Petitioner.
b. Band pass filter including a first switch and a plurality of
switchable connected capacitors
Claim 35 requires that the band pass filter includes “a first switch
coupled between the output node of the first variable amplifier and a second
node.” Petitioner contends this limitation would have been obvious in view
of Gomez and either Waight or Shen. Pet. 15–19. Specifically, Petitioner
contends that each of Gomez’s bank of programmable tracking filters 311
includes a tank circuit 430 that corresponds to a band pass filter as claimed.
Id. at 15–16; Ex. 1004, 4:1–10, Fig. 4; Ex. 1011 ¶ 18. Petitioner explains
that the output of Gomez’s LNA 301 is passed to each of the plurality of

11
The Holberg Declaration quotes, but does not cite to a portion of Waight.
See Ex. 1011 ¶ 15 (quoting Ex. 1005, 2:15–17). Petitioner’s reasoning is
also supported by a second example (Lange) of a known variable gain
amplifier. See Pet. 14; Ex. 1017, 3:31–39.
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bandpass filters (tank circuits 430) and an enable switch on the output of
each switch selectively feeds the output of one filter to the output (“To
Mixer 302”). Id. 17; Ex. 1011 ¶ 19; Ex. 1004, 5:17–21, Fig. 4. Petitioner
contends it would have been obvious to interpose switches, as disclosed by
Waight or Shen, between Gomez’s LNA and programmable tracking filter,
to selectively pass the amplified signal to one of Gomez’s bandpass filters
because these switches would have reduced the capacitive and current load
on the output LNA. Id. In support of this contention, Dr. Holberg explains
that the use of switches for such purpose was well known. Ex. 1011 ¶¶ 20,
21.
Claim 35 also requires that the band pass filter includes “a plurality of
switchably connected capacitors connected in parallel between the second
node and a first voltage, each switchably connected capacitor comprising a
capacitor and a switch connected in series between the second node and the
first voltage.” Petitioner explains that Gomez’s bandpass filer (tank circuit
430) includes switchable capacitors (e.g., C403a) connected in series with a
corresponding transistor switch (e.g., M407a to C403a) to form a pair.
These pairs are connected in parallel between a second node (to mixer 302)
and a first voltage (ground), and these pairs are switched in and out of the
circuit by switches. Pet. 19–20; Ex. 1004, 4:35–39, Fig. 4; Ex. 1011 ¶ 22.
Patent Owner argues that Petition has failed to show a band pass filter
having a first switch and a plurality of switchably connected capacitors as
claimed. PO Resp. 14–18. Specifically, Patent Owner contends that
“[n]either Gomez nor Waight provides any reason for a [person of ordinary
skill in the art] to substitute the Gomez impedance Z (401) with the Waight’s
switch 238 because there would not have been any reasonable expectation of
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success.” PO Resp. 16 (emphasis added). Patent Owner elaborates that such
a modification would render Gomez’s apparatus inoperable. Id. at 16–18
(citing Ex. 2003 ¶ 41).
We agree with Petitioner that this argument mischaracterizes
Petitioner’s ground of unpatentability in that Petitioner does not propose to
substitute Gomez’s impedance Z (401) for Waight’s switch 238. See Pet.
Reply 3–5. Rather, Petitioner proposes to interpose switches as disclosed by
Waight or Shen between Gomez’s LNA and programmable tracking filer to
selectively pass the amplified signal to one of Gomez’s bandpass filters.
Pet. 17.
c. Integrated planar spiral inductor
Claim 35 requires that the band pass filter includes “an inductor
coupled between the second node and a second voltage, the inductor being
an integrated planar spiral inductor.”
Patent Owner argues that Petitioner has not established sufficiently
that Gomez inherently discloses an integrated planar spiral inductor as
claimed. PO Resp. 18–22. Our Decision to Institute determined that
Petitioner had not shown a reasonable likelihood of success in establishing
that Gomez’s inductor is inherently spiral, limiting Petitioner to the
contention that that it would have been obvious to modify Gomez’s inductor
to be spiral. See Dec. 14–15. We see no reason to alter that determination in
light of the record as developed during the trial.
Petitioner contends that Gomez discloses an integrated, planar
inductor because inductors L406 may be discrete or printed, meaning either
formed as a printed circuit board or as an integrated circuit, both of which
are planar. Pet. 21; Ex. 1004, 4:42–43; Ex. 1011 ¶ 24. Petitioner contends
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that it would have been obvious to modify Gomez’s inductor L406 to be
spiral because the use of planar spiral inductors was well known at the time
of invention, as evidenced by Waight’s on-chip inductors L0 and L1, and
would have been a matter of design choice. Pet. 22–23 (citing Ex. 1011 ¶
26; Ex. 1005, 2:25–34; Ex. 1006, 1:27–32).
Patent Owner argues that “printed” as used in the cited portion of
Gomez means printed on the circuit board. PO Resp. 19–20; Ex. 2003 ¶ 46.
We agree with Petitioner that Patent Owner’s argument ignores that Gomez
discloses an inductor may be formed on an integrated circuit. Pet. Reply 6;
Pet. 21; Ex. 1004, 4:42–43, 53 (“inductor L406 may on-chip or off-chip as
noted above”); Ex. 1011 ¶ 24.
Patent Owner argues that Gomez expressly teaches away from
integration of the programmable tracking filter 311 into a single integrated
circuit. PO Resp. 20, 23–24. According to Patent Owner, Gomez discloses
that the alternate embodiment of programmable tracking filter 311 shown in
Figure 7 is like that of Figure 4 except that it may be integrated into a single
IC (integrated circuit), implying that the embodiment of Figure 4 may not be
made into a single IC. Id. (citing Ex. 1004, 7:8–11, Figs. 4, 7). For the
reasons that follow, we disagree with Patent Owner’s characterization of the
reference.
Gomez discloses that “[t]he filter bank 311 shown in Fig. 7 functions
similarly to the filter bank of Fig. 4, except that it does not use an extra
inductor and may be made more compact and better integrated into a single
IC.” Ex. 1004, 7:8–11.
We agree with Petitioner that this disclosure does not mean that the
embodiment of filter bank 311 shown in Figure 4 cannot be integrated into a
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single IC. See Pet. Reply 6–7. Rather, this disclosure suggests that both the
embodiment of Figure 4 and that of Figure 7 may be integrated as a single
IC, and when so formed, because the embodiment of Figure 7 has one less
inductor, it is more compact and better integrated than the embodiment of
Figure 4. Such disclosure does not teach away from forming the
embodiment of Figure 4 as an IC. Rather, Gomez teaches two alternatives
(Figures 4 and 7), with the embodiment of Figure 7 being better integrated
and more compact. See DyStar Textilfarben GmbH v. C.H. Patrick Co., 464
F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a reference a
teaching away from a process where no such language exists.”).
Patent Owner argues that a person of ordinary skill in the art would
not have used Waight’s spiral inductors as the inductors in Gomez. PO
Resp. 25–26. In support of this argument, Patent Owner contends that: (1)
Waight’s spiral inductor is included in a preselect bandstop, rather than
bandpass filter, (2) the spiral inductor of Waight lacks a sufficient Q value,
and (3) Fig. 11 of Waight includes an external inductor in addition to the
integrated spiral inductors L0 and L1. Id.
Petitioner counters that: (1) Petitioner relies on Gomez for the
bandpass and integrated planar limitations and on Waight for the integrated
planar spiral inductor limitation; (2) Q value is not claimed and a person of
ordinary skill in the art would have understood that a Waight or Gomez
integrated inductor could be used in Gomez; and (3) Figure 11 of Waight
includes an external inductor in addition to the integrated spiral inductors L0
and L1. Pet. Reply 7; Ex. 1072 ¶ 26. We are persuaded by Petitioner’s
counter argument.
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Further, Patent Owner’s arguments regarding Waight do not address
cogently Petitioner’s broader contention that the use of spiral inductors was
well known and was a matter of design choice. Petitioner provides several
examples in support of the contention that the use of spiral inductors was
well known. See Pet. 22 (citing Liou (Ex. 1006), Chiu (Ex. 1013), Maeda
(Ex. 1014), and Chang (Ex. 1016)). In particular, Petitioner highlights that it
was known that “planar spiral inductors have become essential elements of
communication circuit blocks.” Pet. 22–23; Ex. 1010; Ex. 1011 ¶ 26.
d. Unity gain buffer
Claim 35 requires that the band pass filter includes “a unity gain
buffer having an input node coupled to the second node and an output node
coupled to the first node providing the filter output signal.”
Petitioner contends that it would have been obvious to replace
Gomez’s switches with a unity gain buffer, such as disclosed by Shen, in
order to isolate impedance of each LC circuit from the common output node.
Pet. 24–26; Ex. 1011 ¶¶ 28–30.
Patent Owner argues that a person of ordinary skill in the art would
not have made the proposed modification because Gomez’s band pass filter
is designed to work at zero DC voltage, and Shen’s unity gain buffer would
not operate at such voltage. PO Resp. 26–27; Ex. 2003 ¶ 55; Ex. 2049,
213.
12

The premise of Patent Owner’s argument is that the proper test for
obviousness is whether Shen’s unity gain buffer could be incorporated, as is,

12
For consistency with Patent Owner, here, and throughout, we reference
the page number at the top right of the page rather than the number at the
bottom of the page.
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into Gomez’s device. We find this argument unpersuasive. See In re Keller,
642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)
(“[I]t is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review.”).
Further, we agree with Petitioner that the person of ordinary skill in
the art is not an automaton; rather, a person of ordinary skill in the art would
be capable of modifying the voltage of Gomez’s inductor so that the buffer
would operate properly when substituted for Gomez’s switches. Pet. Reply
8; Ex. 1072 ¶ 27; Ex. 2049, 269–270 (explaining how the voltage would be
adjusted to make the combined device operable).
e. Conclusion
We conclude that Petitioner has shown by a preponderance of the
evidence that claim 35 is unpatentable under 35 U.S.C. § 103(a) over
Gomez, Waight, and Shen.
2. Independent Claim 20
As noted above, claim 20 is directed to a band pass filter bank for a
television turner for tuning an input RF signal having a first transmission
spectrum, and therefore device must thus be capable of such use.
Patent Owner repeats the arguments for claim 35. PO Resp. 27. Our
analysis of claim 35 above is equally applicable here.
Claim 20, like claim 35, requires the inductor to be an integrated
spiral inductor.
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Patent Owner argues that a person of ordinary skill in the art “would
not have had a reason to use the Waight spiral inductors, L0 and L1, in place
of the Gomez L406 inductor because the Waight spiral inductors were not
suitable for a band pass filter bank for a television tuner.” PO Resp. 27–28.
This is essentially the same argument Patent Owner made with regard to
claim 35, and that analysis above is applicable here. See PO Resp. 25–26
Claim 20 recites, “a plurality of band pass filters …, each band pass
filter being disposed to select a different portion of the first transmission
spectrum so that the plurality of band pass filters is disposed to select the
entire frequency range of the first transmission spectrum.”
Patent Owner argues that Gomez does not filer above 280–300 MHz,
and consequently does not teach a bank of band pass filters disposed to
select the entire frequency range as claimed. PO Resp. 29–31
Claim 20 requires that the plurality of band pass filters is disposed to
select the entire frequency range of the first transmission spectrum, which is
a subset of the input RF signal. Consequently, the first transmission
spectrum is not limited to above 280–300 MHz, and we agree with Petitioner
that Patent Owner’s argument is unpersuasive because it is not
commensurate in scope with claim 20. See Pet. Reply 9–10.
We conclude that Petitioner has shown by a preponderance of the
evidence that claim 20 is unpatentable under 35 U.S.C. § 103(a) over
Gomez, Waight, and Shen.
3. Independent claim 1
As explained above, claim 1 is directed to a tuner circuit receiving an
input RF signal having a first transmission spectrum, and is similar to
independent claims 35 and 20.
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Petitioner contends that all aspects of claim 1 were addressed in the
discussion of claim 20, with two exceptions.
13
Pet. 29. The first exception
is the frequency conversion circuit, and Petitioner notes that this element is
conventional and present in all television tuners, including those taught by
Gomez and Waight. Id. The second exception is a “tuner circuit receiving
an input RF signal having a first transmission spectrum” as recited in the
preamble. Petitioner contends that the preamble is not limiting and even if it
is, this aspect was shown in Gomez, Waight, and Shen. Id. at 29–30 (citing
Ex. 1004, Abstract; Ex. 1011 ¶ 34).
Patent Owner presents no additional arguments against Petitioner’s
challenge of claim 1.
We conclude that Petitioner has shown by a preponderance of the
evidence that claim 1 is unpatentable under 35 U.S.C. § 103(a) over Gomez,
Waight, and Shen.
4. Claim 2
Claim 2 depends from claim 1 and recites, “wherein the tuner circuit
is formed as a single integrated circuit.”
Petitioner contends that Gomez, Waight, and Shen each describe that
a tuner circuit may be formed as a single integrated circuit, and doing so
would reduce material cost and space required for the circuit board. Pet. 32;
Ex. 1011 ¶ 41.
Patent Owner argues that Gomez would have led a person of ordinary
skill in the art to eliminate Gomez’s inductor L406 in order to integrate the
tuner circuit into a single IC. PO Resp. 32–33. This argument is based upon

13
For that reason, Petitioner relies upon the analysis of claim 20, which
relies in turn upon the analysis of claim 35. See Pet. 27.
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the same characterization of Gomez’s Figures 4 and 7 relied upon for claim
35. See Id. at 20, 23–24. As explained above, this characterization of the
reference is not accurate, and for that reason this argument is not persuasive.
See also Pet. Reply 10 (noting that Patent Owner is repeating an earlier
argument).
Patent Owner argues that Waight’s integrated spiral inductors L0 and
L1 are not suitable for band pass filters for a tuner circuit.
14
Id. at 33 (citing
Ex. 2003 ¶ 64). This argument is similar to the argument for claim 35 that a
person of ordinary skill in the art would not have used Waight’s inductors in
Gomez. See Pet. Resp. 25–26. Our analysis in claim 35 is applicable here.
We conclude that Petitioner has shown by a preponderance of the
evidence that claim 2 is unpatentable under 35 U.S.C. § 103(a) over Gomez,
Waight, and Shen.
5. Claim 5
Claim 5 depends from claim 1 and recites,
wherein the frequency conversion circuit comprises:
an image rejection mixer coupled to receive the input signal
corresponding to the band selected output signal and for
performing image rejection filtering and frequency conversion
on the input signal to provide the frequency converted output
signal having the predetermined frequency.
Petitioner explains that “frequency conversion circuits” were standard
in television tuner and Gomez, Waight, and Shen each describe such a

14
Patent Owner also presents an argument based on Shen. PO Resp. 33.
Petitioner does not respond to this argument. Because we have analyzed the
obviousness of this element based on Gomez and Waight, we do not need to
address Shen.

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circuit. Pet. 33. Petitioner provides a more detailed explanation with regard
to Waight. Id. at 33–34.
Patent Owner does not provide additional argument regarding claim 5.
We conclude that Petitioner has shown by a preponderance of the
evidence that claim 5 is unpatentable under 35 U.S.C. § 103(a) over Gomez,
Waight, and Shen.
6. Claims 8, 21, and 36
Claims 8, 21, and 36 depend from independent claims 1, 20, and 35,
respectively, and each recite, “wherein the first switch and the switch in each
of the plurality of switchably connected capacitors each comprise an NMOS
or PMOS transistor.”
Petitioner explains that Gomez’s switchable capacitors (e.g., M407a)
use NMOS transistors as the switches. Pet. 34; Ex. 1004, 4:38–39, Fig. 4;
Ex. 1011 ¶¶ 46–47.
Patent Owner does not add any arguments for claims 8, 21, and 36.
We conclude that Petitioner has shown by a preponderance of the
evidence that claims 8, 21, and 36 are unpatentable under 35 U.S.C. § 103(a)
over Gomez, Waight, and Shen.
7. Claims 9, 22, and 37
Claims 9, 22, and 37 depend from independent claims 1, 20, and 35,
respectively, and each recite,
wherein each band pass filter further comprises a plurality of
resistors, each resistor associated with one of the plurality of
switchably connected capacitors, each resistor having a first
terminal coupled to a node between the switch and the capacitor
of the respective switchably connected capacitor and a third
voltage.
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Petitioner contends that this additional limitation would have been
obvious in view of Waight. Pet. 35. Specifically, Petitioner explains, using
Waight’s Figure 5, that Waight discloses a plurality of resistors (R), each
associated with one of a plurality of switchably connected capacitors (16C,
32C, etc.), and a third voltage is supplied by the output voltage of inverter I.
Id. at 35–36 (citing Ex. 1005, 7:28, 7:65–8:1, Fig. 5; Ex. 1011 ¶ 48).
Patent Owner does not add any arguments for claims 9, 22, and 37.
We conclude that Petitioner has shown by a preponderance of the
evidence that claims 9, 22, and 37 are unpatentable under 35 U.S.C. § 103(a)
over Gomez, Waight, and Shen.
8. Claim 31
Claim 31 depends from independent claim 20 and recites, “wherein an
inductor in a first band pass filter of the plurality of band pass filters has an
inductance value suitable for operation in a low frequency range.”
Petitioner explains that the ’466 patent describes that conventional
television tuners included three band pass filters, to include one for the low
frequency band of 50–200 MHz. Pet. 37. Petitioner contends that Gomez
explicitly describes that he TV spectrum includes the “low-frequency band
in 50–200 MHz.” Id. Therefore, according to Petitioner, a person of
ordinary skill in the art would have understood that one of Gomez’s three
band pass filters would cover the low-frequency band as claimed. Id. (citing
Ex. 1011 ¶ 50).
Patent Owner does not add any arguments for claim 31.
We conclude that Petitioner has shown by a preponderance of the
evidence that claim 31 is unpatentable under 35 U.S.C. § 103(a) over
Gomez, Waight, and Shen.
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9. Claim 32
Claim 32 depends indirectly from claim 31 and recites, “wherein the
low frequency range comprises frequencies less than 500 MHz.”
Petitioner relies upon the explanation of the ground of unpatentability
asserted against claim 31. Pet. 37–38.
Patent Owner does not add any arguments for claim 32.
We conclude that Petitioner has shown by a preponderance of the
evidence that claim 32 is unpatentable under 35 U.S.C. § 103(a) over
Gomez, Waight, and Shen.

C. Obviousness over Gomez, Waight, Shen, and Liou
Petitioner contends that claims 11, 12, 24, 25, and 39 would have been
obvious over Gomez, Waight, Shen, and Liou (Ex. 1006). Pet. 38–45.
1. Claims 11, 24, and 39
Claims 11, 24, and 39 depend from independent claims 1, 20 and 35,
respectively, and recite,
wherein the integrated planar spiral inductor comprises a single-
spiral metal spiral inductor having an outer end as a first
terminal and an inner end being coupled to form a second
terminal of the inductor, the metal spiral being formed using a
set of metal layers on a semiconductor substrate.
Petitioner contends that this additional limitation would have been
obvious in view of Liou. Pet. 37–40. Specifically, Petitioner contends that
Liou discloses a multilevel structure that includes three coils, each of which
corresponds to an inductor as claimed. Pet. 38–40; Pet. Reply 11–12.
Petitioner proposes to modify the Gomez, Waight, Shen combination by
modifying the integrated planar spiral inductor to be formed as disclosed by
Liou because it would have resulted in a space efficient, “high Q” inductor
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with greater reliability at lower cost. Pet. 38–40; Ex. 1011 ¶¶ 52–53.
Underlying this contention is Petitioner’s claim interpretation that the claims
use the open-ended term “comprising”, and for that reason the integrated
planar spiral inductor is not limited to a single-spiral metal spiral inductor.
Pet. Reply 12. For the reasons that follow, we disagree with Petitioner’s
contention.
As an initial matter, we cannot agree with Petitioner’s claim
interpretation. Each of the claims use the term “comprising” in the
preamble, and each of the claims recite that the integrated planar spiral
inductor “comprises a single-spiral metal spiral inductor.” The transitional
phrase “comprising” means that the named elements are essential and other
elements permitted. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501
(Fed. Cir. 1997). Here, the single-spiral metal spiral inductor is an essential
element of the claims and other elements are permitted.
The Specification is consistent with our interpretation that an inductor
having more than one spiral is not a single-spiral inductor. For example, the
Specification describes that the integrated spiral inductor may be formed
using a single spiral or multiple stacked spirals. Ex. 1001, 2:60–65. By
contrast, the Specification emphasizes the distinction between a single-spiral
inductor and one having multiple spirals.
Petitioner’s claim construction permits a three-spiral inductor to be
seen as three single-spiral inductors, effectively rendering the claim term
“single” meaningless. See Bicon Inc. v. Straumann Co., 441 F.3d 945, 950
(Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect
to all terms in the claim.”); see also Stumbo v. Eastman Outdoors, Inc., 508
F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that
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render phrases in claims superfluous); Spectrum Int’l, Inc. v. Sterilie Corp.,
164 F.3d 1372, 1379–80 (Fed. Cir. 1998) (“‘Comprising’ is not a weasel
word with which to abrogate claim limitations.”).
The claims are broad enough to cover a device having more than one
single-spiral inductor; however, the at least one single-spiral inductor is
essential.
Petitioner’s characterization that Liou’s multilevel structure having
three or more spirals is in fact “three separate inductors” is not supported
adequately. See Pet. Reply 12 (citing Ex. 1006, 1:6–13; 2:37–40). These
portions of the reference describe that Liou’s spiral inductor has more than
three spiral coil patterns. Ex. 1006, 1:6–13; 2:37–40; Fig 2 (depicting a first,
second, and third spiral coil); see also Id. at 1:66–2:2 (describing the device
as comprising at least three spiral coil patterns). That is, Liou describes a
single three-spiral inductor, not three single-spiral inductors.
15
See id. 2:63–
3:7 (describing a single inductor in that electricity flows from a first pad 20
through each of the three spiral coils to a second pad 30).
Petitioner does not explain adequately how Liou’s three-spiral
inductor is in fact three single-spiral inductors. Nor does the citation to
Dr. Holberg’s Declaration cure this deficiency. Pet. Reply 12 (citing Ex.
1072 ¶ 37). Dr. Holberg supplies the conclusion that each of Liou’s three
spirals functions as an inductor, and repeats what is stated in the Petitioner’s

15
We note that Petitioner’s characterization of Liou’s inductor here differs
from the characterization in the ground of unpatentability asserted against
claims 12 and 25, analyzed below. Specifically, Petitioner refers to Liou’s
inductor as a multiple spiral inductor (as contrasted to three single-spiral
inductors), and Petitioner acknowledges that electricity flows from pad 20
through each of the three spirals to pad 30. See Pet. 42.
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Reply. See Ex. 1072 ¶ 37. Dr. Holberg does not provide the underlying
facts or data for this opinion. See 37 C.F.R. § 42.65(a). In sum, Liou
discloses a three-spiral inductor, and Petitioner has not persuaded us that
each of these three coils is itself a single-spiral metal spiral inductor as
claimed. Further, Petitioner’s theory is new in that the Petition does not
assert that each of the three spirals of Liou’s inductor corresponds to a
single-spiral metal spiral inductor. Cf. Pet. 38–40, Pet. Reply 12.
Petitioner has not persuaded us that Liou’s three-spiral inductor (a
multiple stacked spiral inductor) is three single-spiral inductors as claimed.
We conclude that Petitioner has not shown by a preponderance of the
evidence that claims 11, 24, and 39 are unpatentable under 35 U.S.C.
§ 103(a) over Gomez, Waight, Shen, and Liou.
2. Claims 12 and 25
Claim 25 depends from independent claim 20 and recites,
wherein the integrated planar spiral inductor comprises a
multi-spiral integrated planar spiral inductor having a first
terminal and a second terminal and formed in a semiconductor
substrate, the inductor comprising:
a first metal spiral formed in a first set of metal layers
wherein the first metal spiral has an outer end being the first
terminal of the inductor and the first metal spiral spirals inward
to an inner end in the center of the spiral;
a second metal spiral formed in a second set of metal
layers and overlying the first metal spiral, wherein the second
metal spiral has an inner end in the center of the spiral and
being coupled to the inner end of the first metal spiral through a
metal interconnect and the second metal spiral spirals outward
to an outer end being the second terminal of the inductor; and
a dielectric layer formed between the first metal spiral
and the second metal spiral isolating the first metal spiral from
the second metal spiral except for the metal interconnect.
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Claim 12 depends from independent claim 1 and is similar.
Petitioner contends that the additional limitations of claims 25 and 12
would have been obvious in view of Liou. Pet. 41–45. Petitioner contends
that Gomez demonstrates a concern that high Q value components be used.
Pet. 41 (citing Ex. 1011 ¶ 54). Indeed, Gomez describes that off-chip
inductors generally are available with higher Q factors and give better
performance. Ex. 1004, 4:53–54. Petitioner contends that Liou describes a
multi-level spiral inductor structure having high inductance (L) and high
quality factor (Q) for products operating in the RF band. Pet. 41–42. Liou
discloses a multilevel inductor with high inductance and high-Q value for
products operating in the RF band. Ex. 1006, 1:20–21; 1:64–2:2. In light of
this, Petitioner’s contends that use of Liou’s inductor in Gomez’s television
tuner would have been a predictable use of a prior art element according to
its established function. Pet. 42.
Patent Owner repeats the arguments based upon the grounds of
unpatentability against independent claims 1, 20 and 35. PO Resp. 33–34.
To the extent that these arguments apply, they are unpersuasive here as well.
Patent Owner argues that Dr. Holberg, “said he did not consider the
inductance values that would be needed to replace the Gomez inductor
L406a or how would he consider implementing.” PO Resp. 36 (citing Ex.
2049, 252). According to Patent Owner, Dr. Opris finds that neither Shen
nor Liou teaches how to obtain high inductance values for substituting an
integrated spiral inductor for the Gomez L406 inductor, and a person of
ordinary skill in the art would not have had a reasonable expectation that the
proposed modification would have yielded predictable results. PO Resp. 37
(citing Ex. 2003 ¶ 72).
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These contentions are not persuasive for several reasons. First, Patent
Owner overstates what is disclosed in Dr. Holberg’s testimony. Patent
Owner asked Dr. Holberg, “what in Liou would teach an inductance that
would be suitable for replacing the Gomez inductor L406a?” Ex. 2049, 252.
Dr. Holberg indicated that he did not consider the value of Gomez’s
inductor. Id. But contrary to Patent Owner’s assertion, Dr. Holberg did not
state that he did not consider implementing the proposed modification.
Second, both Patent Owner’s question of what in Liou would teach an
inductance that would be suitable for replacing Gomez’s inductor, and
Dr. Opris’s statement that Liou does not teach how to obtain high inductance
values for substituting an integrated spiral inductor for the Gomez L406
inductor are premised on the concept that there must be an explicit teaching
in the reference. Such is not the law. See KSR, 550 U.S. at 418 (rejecting
the rigid requirement of a teaching suggestion or motivation to combine
known elements in order to show obviousness).
Third, Dr. Opris’s statement that Liou does not teach how to obtain
high inductance values and that the proposed combination lacks a reasonable
expectation of success are conclusory and do not disclose the underlying
facts or data for that opinion. See 37 C.F.R. § 42.65(a). Further, Dr. Opris’s
comments do not persuasively address Petitioner’s contention that Gomez
describes a need for high Q value and that Liou provides high Q value via a
multilevel, multi-spiral inductor.
Patent Owner correctly points out that Dr. Holberg did not consider
the value of Gomez’s L406a inductor. However, this omission does not
persuasively demonstrate that the proposed combination is something more
than the use of known components to produce a predictable result. Nor has
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Patent Owner persuaded us that the combination is beyond the level of skill
in the art.
We conclude that Petitioner has shown by a preponderance of the
evidence that claims 12 and 25 are unpatentable under 35 U.S.C. § 103(a)
over Gomez, Waight, Shen, and Liou.

D. Obviousness over Gomez, Waight, Shen, Liou and Chiu
Claims 13 and 26 depend from claims 12 and 25, respectively, which
depend in turn from independent claims 1 and 20, respectively. Claims 13
and 26 recite, “wherein the first metal spiral and the second metal spiral each
has a circular or octagonal shape.”
Petitioner contends that this additional limitation would have been
obvious over Chiu. Pet. 45–47. Specifically, Petitioner asserts that Chiu
discloses an inductor having a metal spiral with an octagonal shape. Pet.
45–46 (citing Ex. 1013; Fig. 5B). Petitioner reasons that a person of
ordinary skill in the art would have been motivated to combine Chiu and
Liou because both are directed to high Q inductors suitable for RF
applications, and because the shape of an inductor spiral is a matter of
design choice. Pet. 46.
Patent Owner repeats the arguments based upon the grounds of
unpatentability against independent claims 1, 20 and 35. PO Resp. 37. To
the extent that these arguments apply, they are unpersuasive here as well.
Patent Owner argues that Petitioner’s use of design choice as a
rationale amounts to using the claims of the ’466 patent as a road map
(impermissible hindsight). PO Resp. 38.
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Although Petitioner uses the phrase “design choice” the rationale
proffered here is more than just “design choice.” Petitioner contends that
circular and octagonal inductor spiral shapes were well known in the art.
Pet. 46 (citing Ex. 1011 ¶ 60). The Holberg Declaration provides several
examples, and the cited references disclose inductors having an octagonal
shape (Ex. 1010, Fig. 1(b)) and inductors having a circular shape (Ex. 1010,
Fig. 1(d); Ex. 1014, 2:30–34). Ex. 1011 ¶ 60. In particular, Petitioner
contends, and we agree, that Chiu discloses an octagonal shape inductor
suitable for RF applications. Pet. 45–46; Ex. 1013, Figs. 4A, 4B, 5B. Given
this, Petitioner’s reasoning that a person of ordinary skill in the art would
have modified Liou’s inductor to have an octagonal shape suitable for RF
applications as taught by Chiu has a rational underpinning. See Pet. 46; Ex.
1011 ¶ 60; Pet. Reply 14.
Patent Owner also utilizes the Declaration of Dr. Opris in support of
the contention that the proposed modification was more than a matter of
design choice. Specifically, Dr. Opris states that the geometry of the metal
spirals dictates the value of inductance as well as space requirements, and
that not all geometries yield the high value inductance and small space
requirements demanded for integration. Id. at 39–40 (citing Ex. 2003 ¶ 76).
We credit this uncontested evidence; however, it does not demonstrate
that Petitioner’s proffered rationale is insufficient. First, as stated above,
Petitioner offers more than a naked assertion of design choice. Rather,
Petitioner explains that it was known to use circular and octagonal inductors
in RF applications. Dr. Opris’s statement does not address persuasively this
contention. Second, while inductance varies with the geometry of the spiral,
the inductor still functions to provide inductance. The question is whether
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that inductance was applicable to RF applications, and Petitioner has
demonstrated that it was. Further, the ’466 patent describes that the metal
spirals may be circular (Figs. 6, 7), square, rectangular, octagonal, or other
suitable shapes. Ex. 1001, 10:18–22. Therefore, a wide variety of shapes
are compatible with RF applications, and nothing in the ’466 patent indicates
that the shape of the inductor provided unexpected results or was otherwise
unpredictable.
Patent Owner argues that Liou’s inductor cannot be combined with
Chiu’s inductor. Specifically, Liou’s inductors are stacked while Chiu’s
inductor uses metal strips on various layers, and “[t]he same metal layers
cannot be laid out and connected as in Chiu and simultaneously be laid out
as in the Liou’s rotated geometry.” PO Resp. 39–40 (citing Ex. 2003 77; Ex.
2049, 261).
Patent Owner argues as if Petitioner proposes to place Chiu’s inductor
in Liou’s device. Such is not the case. Petitioner proposes to modify Liou’s
inductor to have an octagonal shape as taught by Chiu. Pet. 45–47; Pet.
Reply 15; Ex. 1072 ¶ 43. Patent Owner’s argument is unpersuasive because
it does not respond to the asserted ground of unpatentability as put forth by
Petitioner.
Patent Owner argues that Gomez’s programmable filter bank 311
occupies 50–860 MHz spectral range while Chiu utilizes an inductor for
every frequency range extending from about 100 MHz to about 10 MHz.
PO Resp. 40 (Ex. 1013, 3:24–25). In light of this, Dr. Opris opines that a
person of ordinary skill in the art would not have a reasonable expectation of
success for the proposed modification. Ex. 2003 ¶ 78.
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Petitioner counters that Patent Owner does not identify any design
issue for inductors operating below 100 MHz. According to Dr. Holberg,
dealing with inductors operating at such frequencies was within the
knowledge of a person of ordinary skill in the art. Ex. 1072 ¶ 44. We are
persuaded by Petitioner’s argument.
We conclude that Petitioner has shown by a preponderance of the
evidence that claims 13 and 26 are unpatentable under 35 U.S.C. § 103(a)
over Gomez, Waight, Shen, Liou, and Chiu.

VI. ORDER
For the reasons given, it is:
ORDERED that based on a preponderance of the evidence, claims 1,
2, 5, 8, 12, 13, 20, 21, 25, 26, 31, 32, 35, and 36 of U.S. Patent No.
7,251,466 B2 are held to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
Exhibits 1011 and 1072 is denied;
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Case IPR2014-00881
Patent 7,251,466 B2
38

PETITIONER
Peter Ayers
Brian Mangum
John Shumaker
Lee & Hayes, PLLC
peter@leehayes.com
brianm@leehayes.com
JShumaker@leehayes.com

PATENT OWNER
Michael R. Fleming
Benjamin Haber
Irell & Manella LLP
mfleming@irell.com
bhaber@irelll.com