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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`HTC CORPORATION AND HTC AMERICA, INC.,
`ZTE (USA) INC.,
`Petitioners
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`v.
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`INVT SPE LLC,
`Patent Owner
`
`
`Case No. 2018-01476
`U.S. Patent No. 7,764,711
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`PATENT OWNER’S SUR-REPLY
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`IPR2018-0476
`Patent 7,764,711
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`TABLE OF CONTENTS
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`INTRODUCTION .......................................................................................... 1
`I.
`CLAIM CONSTRUCTION ........................................................................... 2
`II.
`III. ARGUMENT ................................................................................................. 9
`Petitioners Fail to Meet Their Burden to Prove Ground 1 Renders the
`A.
`Challenged Claims Obvious ................................................................ 9
`Paulraj does not teach simultaneous transmit diversity for
`1.
`higher priority “specific” data and spatial multiplexing for
`other data ................................................................................... 9
`a. Petitioners’ new theory based on Paulraj’s Fig. 11A is
`untimely and should not be considered .....................11
`b. Even if Petitioners’ new argument regarding Figure
`11A is considered, Figure 11A does not include the
`same teachings as Figure 9A. ....................................15
`2. Walton does not fill the missing gaps in Paulraj .....................18
`3.
`Huang also does not fill the missing gaps in Paulraj ...............19
`B. A POSITA Would Not Be Motivated to Combine The Asserted
`References As Proposed By Petitioners’ Ground 1 ...........................19
`Petitioners fail to explain why a POSITA would have expected
`1.
`success in combining Paulraj and Walton ...............................21
`Huang teaches away from the proposed combination .............21
`2.
`Secondary Considerations Support Non-Obviousness ......................23
`C.
`D. Ground 2 Fails As It Is Limited to “Switching” And Does Not Teach
`“Simultaneous” Transmit Diversity And Spatial Multiplexing .........24
`IV. CONCLUSION ............................................................................................25
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Abbott Labs. v. Sandoz, Inc.,
`544 F.3d 1341 (Fed. Cir. 2008) .......................................................................... 20
`Apple Inc. v. INVT SPE LLC,
`Case IPR2018-01557, Paper 13 (PTAB Feb. 19, 2019) ..................................... 14
`Bell Communications Research, Inc. v. Vitalink Communications
`Corp.,
`55 F.3d 615 (Fed. Cir. 1995) ................................................................................ 8
`Bosch Auto. Serv. Sols., LLC v. Matal
`878 F.3d 1027, 1038 (Fed. Cir. 2017) ................................................................ 23
`Daimler N.A. Corp. v. Stragent, LLC,
`Case IPR2017-01503, Paper 25 (PTAB Dec. 6, 2018) ........................................ 3
`Dell Inc. v. Acceleron, LLC,
`818 F.3d 1293 (Fed Cir. 2016) ........................................................................... 13
`Ex Parte Gross,
`2019 Pat. App. LEXIS 2970, *16 (PTAB May 21, 2019) .................................... 4
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .......................................................................... 12
`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) ............................................................................ 24
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) .............................................................................. 22
`In re Magnum Oil International, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .................................................................... 11, 20
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .......................................................................... 20
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`Limelight Networks, Inc. v. Akamai Tech. Inc.,
`Case IPR2016-01894, Paper No. 30 (PTAB March 1, 2018) ............................ 12
`Respironics, Inc. v. Zoll Med. Corp.,
`Case IPR2013-00322, Paper 46 (PTAB Sept. 17, 2014), vacated
`and remanded on other grounds, 656 Fed. Appx. 531 (Fed. Cir.
`2016) ................................................................................................................... 12
`Vicor Corp. v. SynQor, Inc.,
`869 F.3d 1309 (Fed. Cir. 2017) .......................................................................... 24
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .......................................................................... 22
`Other Authorities
`37 C.F.R. § 42.24(a)(i) ............................................................................................. 27
`37 C.F.R. § 42.24(b)(1) ............................................................................................ 27
`2018 Revised Trial Practice Guide .......................................................................... 13
`2019 Trial Practice Guide Update.............................................................................. 4
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`I.
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`INTRODUCTION
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`The ’711 Patent claims a specific way of simultaneously using transmit
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`diversity and spatial multiplexing to improve wireless communications.
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`Spatial multiplexing can be used to increase system throughput by utilizing
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`multiple antennas to transmit different data items to the same user at the same time.
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`Ex. 1001 at 1:18-27; Ex. 2002 at ¶¶ 28, 30. Spatial multiplexing, however, does
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`not improve error protection. Ex. 1001 at 1:48-52; Ex. 2002 at ¶ 30.
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`Transmit diversity, on the other hand, utilizes redundancy to improve error
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`protection by replicating a single data item and transmitting both the original and
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`the replica from two different antennas, thereby doubling the chances the data is
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`received correctly. Ex. 1001 at 1:60-67; Ex. 2002 at ¶¶ 28, 31. Transmit diversity,
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`however, decreases throughput as it is sending the same data twice, as compared to
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`sending different data. Ex. 1001 at 1:64-67; Ex. 2002 at ¶ 31.
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`The ’711 Patent teaches a novel use of both spatial multiplexing and
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`transmit diversity, simultaneously, where transmit diversity is limited to only a
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`“specific [higher priority] data item” and its replica. See, e.g., Ex. 1001 at 7:29-8:7;
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`Ex. 2002 at ¶¶ 32-33; Ex. 1020 at 14:4-15:12. By using both spatial multiplexing
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`and transmit diversity, but limiting the use of transmit diversity to higher priority
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`data, the ’711 Patent results in (1) increased throughput via spatial multiplexing,
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`(2) increased reliability via transmit diversity, while also (3) limiting the negative
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`effects of transmit diversity on system throughput by only applying transmit
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`diversity to higher priority data. Ex. 1001 at 7:29-8:7; Ex. 2002 at ¶¶ 32-33.
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`Petitioners admit that none of the Asserted References alone teach the
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`inventive element of the Challenged Claims—simultaneous use of transmit
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`diversity for “specific” higher priority data items and spatial multiplexing for
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`other, lower priority, data times. In their attempt to still prove obviousness,
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`Petitioners’ ignore diametrically opposed claim construction positions Petitioners
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`advanced in their Petition, make new, never before presented substantive
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`arguments, and otherwise ask the Board to pick-and-choose minute portions of
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`disparate references, without providing a proper motivation to combine. Petitioners
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`fail to meet their burden to prove the challenged claims are obvious over either
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`asserted ground.
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`II. CLAIM CONSTRUCTION
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`Petitioners’ Reply brief now contends, for the first time, that the Challenged
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`Claims do not require the capability to “simultaneously” use transmit diversity and
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`spatial multiplexing (also referred to as “MIMO”). Reply at 1-6. Yet in seeking
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`institution of this proceeding, Petitioners expressly represented that the inventions
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`claimed in the ’711 Patent require “simultaneous” transmit diversity and spatial
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`multiplexing:
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`Thus, the lower priority data items are transmitted according to spatial
`multiplexing while the high priority ‘specific data’ is simultaneously
`transmitted from multiple antennas according to transmit diversity
`techniques.
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`Petition at 4 (emphasis added).
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`The ’711 Patent specification characterizes the alleged invention as
`the simultaneous implementation of spatial multiplexing (transmitting
`different data streams from different antennas) and transmit diversity
`(transmitting the same data from different antennas.
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`Id. at 44 (citing Ex. 1001 at 1:60-2:12, 4:36-5:3, 5:13-25, FIGs 3-4.) (emphasis
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`added)).
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`In light of such unambiguous assertions, Petitioners’ argument now to the
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`contrary should not be credited. See, e.g., Daimler N.A. Corp. v. Stragent, LLC,
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`Case IPR2017-01503, Paper 25 at 64-66 (PTAB Dec. 6, 2018) (finding petitioners
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`failed to prove claim obvious “In view of the customary meaning of [claim term]
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`and [expert’]s testimony, and Petitioner’s failure to explain its change in position
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`between the Petition and the Reply”). Petitioners’ new, diametrically opposed,
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`position that the Challenged Claims are not limited to “simultaneous” transmit
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`diversity and spatial multiplexing should be precluded.
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`Indeed, Petitioners are prohibited from asserting new arguments in a reply,
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`especially where there was nothing prohibiting Petitioners from asserting the
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`argument in their petition. See 2019 Trial Practice Guide Update at 40 (“a reply
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`that raises a new issue or belatedly presents evidence may not be considered”); see
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`also Ex Parte Gross, 2019 Pat. App. LEXIS 2970, *16 (PTAB May 21, 2019)
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`(refusing to consider claim scope argument where appellant changed argument
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`between opening brief and reply brief, without providing good cause). Yet even if
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`the Board considers Petitioners’ new claim construction argument, the argument
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`fails. Instead, Petitioners’ original position—that the Challenged Claims are
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`limited to “simultaneous”—is confirmed by both the plain language of the ’711
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`Patent and the unrebutted testimony of INVT’s expert, Dr. Vojcic.
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`Specifically, claim 1, which the parties have treated as representative,
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`teaches that the claimed invention is capable of both “employing a MIMO [spatial
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`multiplexing] … scheme” (preamble) and at the same time utilizing transmit
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`diversity, by which a specific data item is replicated and transmitted out of
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`multiple antennas “at a same time.” (element 1[c]). Ex. 1001 at 7:29-8:6. As
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`evidence of this, the “mapping section” element (element 1(c)) teaches mapping all
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`of the “plurality of data items” to their respective antennas, where those same
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`“plurality of data items” are subject to spatial multiplexing in the preamble and
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`transmit diversity in element 1(c) (where transmit diversity is used only for the
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`higher priority “specific data item”). Id.
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`This configuration is explained by Figure 4 of the ’711 Patent.
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`Figure 4 teaches spatial multiplexing of multiple different data items (Data 1
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`and Data 2, highlighted in yellow) being sent through multiple antennas (Antenna
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`1 and Antenna 2), in the same time slot. Figure 4 also teaches replicated (the same)
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`“specific data,” in this instance “retransmission data” (highlighted in blue), being
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`transmitted out of Antenna 1 and Antenna 2 in the same time slot (simultaneously)
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`as the spatial multiplexing data, where the retransmission data uses different
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`spreading codes to prevent transmission and reception errors. Ex. 1001 at Fig. 4.
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`Simultaneous transmit diversity and spatial multiplexing is confirmed by the
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`’711 Patent’s specification, which explains that the “specific data and other data
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`spread/modulated by the respective spreading sections are multiplexed . . . for each
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`transmission system and transmitted by radio through the transmission sections
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`105-1, 105-2 and antennas 106-1, 106-2.” Id. at 4:31-35; see also id.at 4:55-5:28.
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`Further, INVT’s expert submitted unrebutted1 testimony, in both his
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`declaration and during deposition, that one of skill in the art would understand the
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`Challenged Claims to be limited to “simultaneous” transmit diversity and spatial
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`multiplexing. Specifically, Dr. Vojcic explained that one of skill in the art would
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`view the teachings of the preamble, along with element 1[c] and Figure 4, and
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`conclude that transmit diversity and spatial multiplexing are used simultaneously.
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`See Ex. 2002 at ¶¶ 29-33; Ex. 1020 at 14:4-15:2.
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`Rather than submit an expert declaration rebutting Dr. Vojcic’s expert
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`opinion, however, Petitioners instead resort to attorney argument that INVT
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`waived any argument that the preamble is limiting. Reply at 5-6. Petitioners are
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`incorrect. First, as noted above, it is in fact Petitioners that are contending for the
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`As further evidence of Petitioners’ 180° change in position, INVT’s expert,
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`Dr. Vojcic, was the only expert to opine on whether the claims require
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`“simultaneous.” Likely because Petitioners originally contended the Challenged
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`Claims were in fact limited to “simultaneous,” Petitioners never submitted claim
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`construction-related expert testimony on the issue. Instead, Dr. Singer actually
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`analyzed “simultaneous” as a substantive claim element for Ground 1. See Ex.
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`1003 (Signer Decl.) (addressing “simultaneous” only as a requirement of the
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`claims, not analyzing it for claim construction purposes).
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`first time that the Challenged Claims are not limited to “simultaneous.” Beyond
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`that, INVT disclosed its position that the preamble is limiting in its Patent Owner
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`Response as well as Dr. Vojcic’s Declaration submitted therewith. See Patent
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`Owner Response at 6 (describing claims 1 and 6 as requiring using transmit
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`diversity at the same time as “employing a spatial multiplexing scheme”); Ex. 2002
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`at ¶¶ 29-33. Dr. Vojcic also testified to this opinion in his deposition. Ex. 1020
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`at 12:13-15:12.
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`Even more, Petitioners’ contention that the parties’ agreed-to construction
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`for the preamble in the parallel ITC litigation does not require simultaneous spatial
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`multiplexing and transmit diversity is a red herring. As a primary matter, the
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`contention is not correct. The parties’ agreed-to construction in the ITC is silent on
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`the issue of whether “simultaneous” is required. Ex. 2001 at 5. Even if it were true,
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`however, INVT’s position on “simultaneous” is confirmed by the preamble, when
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`read by a POSITA in conjunction with element 1[c] and Figure 4, not the preamble
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`alone. See, e.g., Ex. 2002 at ¶¶ 29-33. Thus, whether the preamble alone requires
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`“simultaneous” is not the relevant question.
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`Further, any contention by Petitioners that the preamble is not limiting at all
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`would be undermined by Petitioners’ contention in the ITC as well as how
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`Petitioners are treating the preamble for purposes of this proceeding. Specifically,
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`Petitioners treat the preamble as at least requiring the claimed method/apparatus to
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`be capable of spatial multiplexing (MIMO), in addition to transmit diversity, where
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`spatial multiplexing is only required by the preamble.
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`For the ’711 Patent, the scope of the invention is clearly defined by both the
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`preamble and the body of the claims. Bell Communications Research, Inc. v.
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`Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“When the
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`claim drafter chooses to use both the preamble and the body to define the subject
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`matter of the claimed invention, the invention so defined, and not some other, is
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`the one the patent protects.”). Indeed, the preamble also provides the needed
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`antecedent basis for the “plurality of data items” and “plurality of antennas”
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`referenced in later claim elements. Id. (“Likewise, when the preamble is essential
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`to understand limitations or terms in the claim body, the preamble limits claim
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`scope.”).
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`As confirmed by Dr. Vojcic’s unrebutted testimony, a POSITA would
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`understand the plain and ordinary meaning of the Challenged Claims, when read in
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`light of the specification, to require “simultaneous” transmit diversity and spatial
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`multiplexing.
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`III. ARGUMENT
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`A.
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`Petitioners Fail to Meet Their Burden to Prove Ground 1
`Renders the Challenged Claims Obvious
`Ground 1 relies on a combination of three references: Paulraj, Walton, and
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`Huang. Petitioners’ Reply brief makes clear that Petitioners rely on Paulraj for
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`spatial multiplexing and transmit diversity, Walton for the “specific data item,” and
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`Huang “only for its express teaching of a transmit diversity mode where a
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`substream and its replica are transmitted from different antennas simultaneously.”
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`Reply at 14. Yet whether viewed individually or combined, the purported
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`combination fails to teach the simultaneous use of transmit diversity for a specific
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`(higher priority) data item and spatial multiplexing for other data items, as required
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`by the claims.
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`1. Paulraj does not teach simultaneous transmit diversity
`for higher priority “specific” data and spatial
`multiplexing for other data
`As noted above, Petitioners’ primary reference, Paulraj, is relied on for the
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`purported teaching of simultaneous transmit diversity and spatial multiplexing.
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`Reply at 12-14. As a whole, Paulraj is a patent that seek to increase data
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`throughput via improved spatial multiplexing. Ex. 2002 at ¶ 34. Paulraj includes
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`one embodiment, in Figure 9A, that proposes additional antennas for transmit
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`diversity purposes. Ex. 1005 at Fig. 9A. However, as INVT pointed out in its
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`Patent Owner Response, Figure 9A only teaches the use of one single data stream
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`at any given time, which precludes the use transmit diversity for “higher priority”
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`data and spatial multiplexing for other data, an undisputed requirement of the
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`claims. Patent Owner Response at 28-30. Specifically, Figure 9A shows the
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`“Datum?” datastream being broken into two substreams, 454 and 456, which are
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`transmitted at the same time, but the other datastream (“Voice?”) is transmitted at a
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`different time. Ex. 1005 at 23. As Dr. Vojcic explained, if there is only one data
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`stream, there cannot be “higher” and “lower” priority data sent at the same time,
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`because all the data is the same priority. Ex. 2002 at ¶ 36; Ex. 1020 at 26:19-30:2.
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`In their Reply brief, Petitioners do not substantively challenge Dr. Vojcic’s
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`position on Figure 9A, or submit competing expert testimony. Reply at 10. Rather,
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`Petitioners allege Dr. Vojcic’s opinion, which they deposed him on, should not be
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`considered because “he did not explain his interpretation of ‘data items.’” Id.
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`Again, Petitioners are incorrect. Dr. Vojcic explained in his declaration that the
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`two substreams shown in Figure 9A are part of one single data item, “datastream
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`176” because the two substreams “represent alternate symbols of a data item,
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`datastream 176.” Ex. 2002 at ¶ 36. Petitioners also asked Dr. Vojcic numerous
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`questions about his opinion on data items and different priority levels in his
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`deposition, wherein Dr. Vojcic confirmed the opinion in his declaration. Ex. 1020
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`at 26:12-36:6. Petitioners also ignore that they bear the burden to prove
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`obviousness, INVT does not bear the burden to disprove anything. In re Magnum
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`Oil International, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016).
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`Indeed, rather than respond substantively regarding Figure 9A, Petitioners
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`instead chose to present a new theory: now it is Figure 11A that teaches the
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`invention because Figure 11A shows the “Voice?” datastream being transmitted in
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`the same time slot as the “Datum?” datastream, whereas Figure 9A shows the two
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`datastreams being transmitted at different times. Reply at 10; see also id. at 15.
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`a.
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`Petitioners’ new theory based on Paulraj’s Fig.
`11A is untimely and should not be considered
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`Petitioners claim that the argument in their Reply brief regarding Figure 11A
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`is not new because the “Petition also mapped the claims to Paulraj’s CDMA
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`embodiment shown in Figure 11A.” Id. at 10. This is incorrect. A fulsome review
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`of the Petition shows that Figure 9A was undoubtedly the singular focus for
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`independent claim 1, as Figure 11A is only ever cited for claim 1 as a “see also”
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`cite. See Petition at 21, 25, 26, 28, 30, 31, 34, 35.2 In fact, the Petition only
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`2 The Board’s Institution decision is further evidence that the Petition singularly
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`focused on Figure 9A, as the Institution decision does not cite Figure 11A, but
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`instead only discusses Figure 9A.
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`substantively analyzes Figure 11A in relation to dependent claim 3, which adds the
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`express requirement that the transmission be a CDMA transmission (likely the
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`reason why Petitioners referred to Figure 11A as the “CDMA embodiment”). The
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`Petition simply does not map Figure 11A to the claim elements now at issue in
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`representation claim 1.
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`Petitioners’ failure to substantively analyze Figure 11A in their Petition
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`preclude consideration of the argument at this point in the case. See 2019 Trial
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`Practice Guide Update, at 40 ([“A] reply that raises a new issue or belatedly
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`presents evidence may not be considered.”); see also, e.g., Harmonic Inc. v. Avid
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`Tech., Inc., 815 F.3d 1356, 1363-64 (Fed. Cir. 2016) (affirming refusal to consider
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`portion of prior art reference “mentioned . . . only once in a single sentence
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`without any elaboration”); Respironics, Inc. v. Zoll Med. Corp., Case IPR2013-
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`00322, Paper 46, at 24 (PTAB Sept. 17, 2014) (“Zoll’s string citations amount to
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`little more than an invitation to us (and to Respironics, and to the public) to peruse
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`the cited evidence and piece together a coherent argument for them. This we will
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`not do; it is the province of advocacy.”), vacated and remanded on other
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`grounds, 656 Fed. Appx. 531, 534 (Fed. Cir. 2016); Limelight Networks, Inc. v.
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`Akamai Tech. Inc., Case IPR2016-01894, Paper No. 30 at 26 (PTAB March 1,
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`2018) (petitioner’s argument that particular claim limitation was met not supported
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`when addressed only cursorily in petition).
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`As such, this new argument (and the cited functionality in Figure 11A)
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`should not be considered. Indeed, patent owners are entitled to know the full basis
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`of the Petitioners’ contentions based on the petition alone, such that patent owners
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`can properly respond in the Patent Owner Response, the last time patent owners
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`are allowed to put in new evidence. See Dell Inc. v. Acceleron, LLC, 818 F.3d
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`1293, 1301 (Fed Cir. 2016) (“A patent owner . . . is undoubtedly entitled to notice
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`of and a fair opportunity to meet the grounds of [unpatentability].”) (quoting
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`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015)).3
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`Even more, Figure 9A and Figure 11A are separate embodiments in the
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`3 In light of the 2018 revisions to the Trial Practice Guide, patent owners are now
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`generally allowed a sur-reply brief, as INVT is in this proceeding. Yet a patent
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`owner is still prohibited from responding to new arguments in a reply brief by
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`submitting new evidence with the sur-reply, such as an expert declaration or new
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`documents rebutting the new assertions. See 2018 Revised Trial Practice Guide at
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`14 (“The sur-reply may not be accompanied by new evidence other than deposition
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`transcripts of the cross-examination of any reply witness.”). As such, consideration
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`of new arguments made for the first time in a reply brief would still prejudice
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`patent owners, even if the patent owner is able to submit a sur-reply brief.
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`Paulraj patent. If Petitioners wanted to rely on the combined teachings of those
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`separate embodiments (Fig. 9A for transmit diversity and spatial multiplexing at
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`the same time, and Fig. 11A for multiple different datastreams at the same time),
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`they bore the burden to explain why a POSITA would combine the separate
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`embodiments, without using the Challenged Claims as a roadmap. See, e.g., Apple
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`Inc. v. INVT SPE LLC, Case IPR2018-01557, Paper 13 at 17-18 (PTAB Feb. 19,
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`2019) (“Petitioner does not identify any passage or combination of passages in Gils
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`that teaches or suggests using two coding schemes together from Gils’ Table 1 to
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`encode information, much less using the two particular coding schemes identified
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`by Petitioner and applied in the particular manner required by the claims”).
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`Petitioners did not provide any analysis as to why a POSITA would combine
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`Figure 9A and Figure 11A in either their Petition or Reply brief. Rather,
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`Petitioners’ Reply brief merely uses the Challenged Claims as a roadmap to cobble
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`together disparate embodiments, without prior disclosure, let alone support from a
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`POSITA. Thus, the argument is both new and unsupported, and should not be
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`considered.
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`b.
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`Even if Petitioners’ new argument regarding
`Figure 11A is considered, Figure 11A does not
`include the same teachings as Figure 9A.
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`First, Figure 11A, is focused on spreading and encoding, as shown by
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`elements 1120-1125 and 1110-1115. Ex. 1005 at Fig. 11A. Figure 11A also only
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`uses two transmit antennas—all of the data paths in Figure 11A go to only two
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`antennas. As shown in the annotated figures below, the data paths in Figure 11A
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`do not invoke the optional additional antennas that Figure 9A uses to implement
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`transmit diversity and spatial multiplexing.
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`Though Paulraj describes Figure 11A as capable of implementing the
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`“additional signal processing, such as that described and discussed above in
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`connection with FIG. 9A,” Paulraj’s description for Figure 11A expressly states
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`that “there are two antennas in the example shown,” whereas Figure 9A uses four
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`antennas. Ex. 1005 at 29:15-30:5.
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`Further, as described above, the actual “signal processing” taught by Figure
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`9A only teaches processing one datastream at a time. As such, even if Figure 11A
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`used all four antennas to do spatial multiplexing and transmit diversity at the same
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`time, the only signal processing taught for such a scenario is that taught by Figure
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`9A, which teaches processing one datastream at a time. This teaching does not
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`satisfy the claim limitations because it cannot transmit “specific” higher priority
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`data at the same time as other, lower priority data. Petitioners advance no evidence
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`to the contrary. Thus, even if Figure 11A is considered for independent claim 1, the
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`contention fails.
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`*
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`Petitioners failed to meet their burden to show that Paulraj teaches the
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`simultaneous use of spatial multiplexing for some data items, and transmit
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`diversity for a higher priority “specific data” items. Rather, Dr. Vojcic’s unrebutted
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`opinion establishes Paulraj includes no such teaching.
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`2. Walton does not fill the missing gaps in Paulraj
`Petitioners are clear in their Reply brief: they only rely on Walton for the
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`“specific data item” claim element. Reply at 14. Nothing more. Because this is all
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`Petitioners rely on Walton for, Walton is of no use to fix the problem in Paulraj—
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`that Paulraj does not teach the claimed simultaneous use of spatial multiplexing for
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`some data items, and transmit diversity for higher priority “specific data” items,
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`because the only embodiment in Paulraj that shows both spatial multiplexing and
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`transmit diversity at the same time (Figure 9A) only uses one single data stream.
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`Thus, even assuming Walton teaches higher priority “specific data items,” there is
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`no universe where Paulraj can take both a higher priority datastream from Walton
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`and a different (separate) data stream, and transmit them simultaneously (with
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`transmit diversity limited to just the higher priority data).
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`Nor did Petitioners explain how such a combination would work. While
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`Petitioners argue in their reply that “physical substitution” of “an entire Paulraj
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`substream with Walton’s higher importance data stream” is not required as a
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`matter of law (Reply at 16), this argument misses the mark. The issue is not
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`whether a datastream would be substituted. The issue is whether a second
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`datastream could be added.
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`Neither Petitioners nor their expert did anything to address that issue.
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`Rather, only INVT’s expert, Dr. Vojcic, addressed the issue when he explained
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`that bringing Walton’s stream to Paulraj “does not work because substreams 454-
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`456 are necessarily of the same priority and it would be nonsensical to make
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`alternate symbols of datastream 176 to have different importance/priority.” Ex.
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`2002 at ¶ 57.
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`In light of INVT’s unrebutted expert testimony, and Petitioners’ failure to
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`even address the issue, Petitioners fail to prove how Walton remedies Paulraj’s
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`shortcomings. The proposed combination fails accordingly.
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`3. Huang also does not fill the missing gaps in Paulraj
`Petitioners are also clear in their Reply brief that they rely on Huang “only
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`for its express teaching of a transmit diversity mode where a substream and its
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`replica are transmitted from different antennas simultaneously.” Reply at 14; see
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`also id. at 18 (Huang is relied on to show “transmit diversity in space not time”)
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`(emphasis in original). Thus, as with Walton, Huang cannot (and does not) provide
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`the elements missing from Paulraj, and indeed Petitioners do not even make such a
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`contention. The proposed combination as a whole fails.
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`B. A POSITA Would Not Be Motivated to Combine The Asserted
`References As Proposed By Petitioners’ Ground 1
`In both their Petition and their Reply brief, Petitioners fail to explain why a
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`POSITA would have looked at the asserted references and had an expectation of
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`success in achieving the claimed invention. It is not enough that the combination
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`could have been made, it is Petitioners’ burden to explain why it would have been
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`made. In re Magnum Oil, 829 F.3d at 1381 (Fed. Cir. 2016) (Petitioners bear the
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`“burden to demonstrate both that a skilled artisan would have been motivated to
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`combine the teachings of the prior art references to achieve the claimed invention,
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`and that the skilled artisan would have had a reasonable expectation of success in
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`doing so.”).
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`To that end, it is improper to combine references “like separate pieces of a
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`simple jigsaw puzzle” without “explain[ing] what reason or motivation one of
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`ordinary skill in the art at the time of the invention would have had to place these
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`pieces together.” InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327,
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`1349 (Fed. Cir. 2014). The Board must also “guard against slipping into use of
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`hindsight and to resist the temptation to read into the prior art the teachings of the
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`invention in issue.” Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1348 (Fed. Cir.
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`2008). Petitioners failed to meet their burden, as they do not even address why a
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`POSITA would make the proposed combination in their Reply brief, how Paulraj
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`would be modified to incorporate a higher priority “specific data item” from
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`Walton, and also ignore that Huang teaches away.
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`1. Petitioners fai
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