Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in Nos. IPR2015-01584,
Janece McComas, Haynes & Boone, LLP, Dallas, TX, argued
for appellant. Also represented by J. Andrew Lowes, Clint S.
Wilkins, Richardson, TX.
S. Goldemberg, Morgan, Lewis & Bockius LLP, Philadelphia,
PA, argued for appellees. Also represented by William R.
Peterson, Houston, TX; Nathan W. McCutcheon, Bradford Cangro,
Newman, Lourie, and Clevenger, Circuit Judges.
Newman, Circuit Judge.
LM Ericsson ("Ericsson") is the owner of United
States Patent No. 6, 029, 052 ("the '052
patent"). TCL Corporation, TCL Communication Technology
Holdings, Ltd., TCT Mobile Limited, TCT Mobile Inc., and TCT
Mobile (US), Inc., (collectively "TCL") filed two
petitions for inter partes review ("IPR") of claims
13, 15, 16, and 18 of the '052 patent. The Patent Trial
and Appeal Board ("PTAB" or "Board")
instituted review, consolidated the petitions, and ruled that
all of the challenged claims are unpatentable on the ground
'052 patent describes and claims a "direct
conversion receiver" for wireless communication systems
that may receive signals from systems that operate at
different frequency bands. The primary issue on appeal is
whether a specific foreign publication is an available
reference against the '052 patent. We affirm the
Board's decision that the specified publication is an
available reference, and based on this publication in
combination with other prior art we affirm the Board's
decision of invalidity of the challenged claim.
Ericsson '052 Patent
method claimed in the '052 patent is stated to be an
improvement over conventional modes of receiving and
processing wireless signals from communication systems that
operate at differing frequencies. Such systems previously
required separate receiver components to process signals
arriving at differing frequencies. The '052 patent claims
a method whereby receivers "can receive signals at
multiple frequency bands without requiring significant
hardware duplication." '052 patent, col. 2, ll.
18 is at issue on appeal, shown with claim 13 from which it
13. A method for receiving a communication signal, comprising
the steps of:
receiving a communication signal in any one of a plurality of
frequency bands, the communication signal having a bandwidth;
band-pass filtering the received communication signal;
amplifying the band-pass filtered signal;
mixing the band-pass filtered signal with in-phase and
quadrature oscillator signals to generate an in-phase and a
quadrature received signal; and
low pass filtering the in-phase received signal and the
quadrature received signal in a low pass in-phase filter and
a low pass quadrature filter, respectively,
wherein direct conversion is used for converting all received
communication signals in any one of the plurality of
18. The method of claim 13, further comprising the steps of
generating a first oscillator signal and frequency-dividing
the first oscillator signal to generate the in-phase and
quadrature oscillator signals prior to the step of mixing.
Figure 3 depicts the method of the '052 patent:
specification explains that wireless signals are received at
antenna 10, and bandsplitter 30 splits the signals into two
frequency bands. The split signals are filtered by band pass
filters (BPF), shown at 12a and 12b, to remove out-of-band
unwanted components that are frequency band specific. The
filtered signals are amplified by low-noise amplifiers (LNA)
shown at 34a and 34b. The signals proceed to a mixing circuit
that includes a voltage-controlled oscillator (VCO) 36 for
generating an oscillator signal. A quadrature generator 38
separates the oscillator signal into in-phase (I) and
quadrature (Q) components.
phase shifting is conducted by either the quadrature
generator 38 or a frequency divider that generates quadrature
local oscillator signals. The phase shifter receives the
signal from a local oscillator and outputs two signals
separated by 90 degrees. These divided signals are sent to
mixers 40 and 41, which compare the divided signals against
the received signal. The signals are filtered in an in-phase
low pass filter 42a and a quadrature low pass filter 42b, and
the filtered signals are passed to conventional baseband
processing circuitry. '052 patent, col. 3, 11. 9-28; col.
4, 11. 10-23.
principal reference presented by petitioner TCL and relied on
by the PTAB is an article entitled "Multi-modale
Funktelefone" (translation: Multimodal Wireless
Telephones), authored by Professor Hans-Joachim Jentschel
et al. and published in the German technical journal
"Ingenieur der Kommunikationstechnik" (translation:
Engineer of Communications Technology). The initial question
is whether this article is available as prior art.