`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`APPLE INC., AND HP INC.,
`Petitioners,
`
`v.
`
`XR COMMUNICATIONS, LLC, D/B/A VIVATO TECHNOLOGIES,
`Patent Owner.
`
`
`
`
`
`
`
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`
`
`
`
`Case IPR2022-00367
`Patent No. 10,715,235
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`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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`
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`Proceeding No. IPR2022-00367
`Attorney Docket No. 50095-0047IP1
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`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 6
`BURKE RENDERS OBVIOUS FEATURE [8A] (“receiving a first signal
`transmission from a remote station via the first antenna element and a
`second signal transmission from the remote station via the second antenna
`element simultaneously”) ................................................................................. 7
`A. Contrary to the POR, Burke’s FIG. 12 does not require substantive
`modification to accommodate an array of antenna elements ................. 17
`B. XR’s reliance on Arendi is misplaced .................................................... 20
`XR’S ARGUMENTS FOR [8D] AND [8E] FALL WITH XR’S
`ARGUMENTS FOR [8A] ............................................................................. 24
`XR PRESENTS NO SEPARATE ARGUMENTS FOR THE DEPENDENT
`CLAIMS ........................................................................................................ 26
`XR’S PRIORITY ARGUMENTS ARE WAIVED ...................................... 27
`CONCLUSION .............................................................................................. 27
`
`ii
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`Proceeding No. IPR2022-00367
`Attorney Docket No. 50095-0047IP1
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`PETITIONERS’ UPDATED EXHIBIT LIST
`
`EXHIBIT-1001 U.S. Patent No. 10,715,235 to Da Silva (“the ’235 Patent”)
`
`EXHIBIT-1002
`
`Prosecution History of the ’235 Patent (“the Prosecution
`History”)
`
`EXHIBIT-1003 Declaration and Curriculum Vitae of Dr. Robert Akl
`
`EXHIBIT-1004 Complaint, XR Communications, LLC v. Apple Inc., 6:21-cv-
`00620, W.D. Tex., June 16, 2021
`
`[RESERVED]
`
`
`EXHIBIT-1005
`
`EXHIBIT-1006 U.S. Patent No. 7,155,231 (“Burke”)
`
`EXHIBIT-1007 U.S. Patent No. 6,006,077 (“Shull”)
`
`EXHIBIT-1008 U.S. Patent Application Publication No. 2002/0158801
`(“Crilly”)
`
`
`EXHIBIT-1009 U.S. Provisional Application No. 62/423,660 (“’660
`Provisional Application”)
`
`PCT Application Publication No. WO 02/47286 (“Hottinen”)
`
`
`EXHIBIT-1010 U.S. Patent No. 6,879,823 (“Raaf”)
`
`EXHIBIT-1011
`
`EXHIBIT-1012 U.S. Patent No. 6,662,024 (“Walton”)
`
`EXHIBIT-1013 U.S. Patent No. 6,208,863 (“Salonaho”)
`
`EXHIBIT-1014 U.S. Patent Application Publication No. 20020080862 (“Ali”)
`
`EXHIBIT-1015 U.S. Patent No. 7,340,017 (“Banerjee”)
`
`EXHIBIT-1016 U.S. Patent No. 6,792,031 (“Sriram”)
`
`
`iii
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`
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`EXHIBIT-1017 Andrea Goldsmith, Wireless Communications, Cambridge
`University Press, 2005
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`Proceeding No. IPR2022-00367
`Attorney Docket No. 50095-0047IP1
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`
`EXHIBIT-1018 Complaint, XR Communications, LLC v. HP Inc., 6:21-cv-
`00694, W.D. Tex., July 1, 2021
`
`
`EXHIBIT-1019 U.S. Patent No. 6,661,832 (“Sindhushayana”)
`
`EXHIBIT-1020
`
`Plaintiff’s Infringement Contentions, XR Communications, LLC
`v. Apple Inc., 6:21-cv-00620, W.D. Tex., Dec. 20, 2021
`
`
`EXHIBIT-1021
`
`
`EXHIBIT-1022
`
`
`EXHIBIT-1023
`
`“How the Pandemic is Shaping Patent Trials in District
`Courts,” Law360, Feb. 18, 2021, available at
`https://www.troutman.com/insights/how-the-pandemic-is-
`shaping-patent-trials-in-district-courts.html
`
`“2021 Discretionary Denials Have Passed 100, But Are
`Slowing,” Dani Krass, Law360, July 21, 2021
`
`“Leahy And Cornyn Introduce Bipartisan Bill To Support
`American Innovation And Reduce Litigation”, Sep. 29, 2021,
`available at: https://www.leahy.senate.gov/press/leahy-and-
`cornyn-introduce-bipartisan-bill-to-support-american-
`innovation-and-reduce-litigation
`
`
`
`EXHIBIT-1024 Restoring the America Invents Act, S. 2891, 117th
`Cong. (2021)
`
`
`EXHIBIT-1025
`
`“Roku’s Trial Delay Request OK’d by ‘Surprised’ Texas
`Judge,” Law360, Aug. 10, 2020, available at
`https://www.law360.com/articles/1299933
`
`
`EXHIBIT-1026-1032 [RESERVED]
`
`EXHIBIT-1033 Apple’s first stipulation, XR Communications, LLC v. Apple
`Inc., 6:21-cv-00620, W.D. Tex., May 19, 2022
`
`
`EXHIBIT-1034 HP’s first stipulation, XR Communications, LLC v. HP Inc.,
`6:21-cv-00694, W.D. Tex., May 19, 2022
`
`iv
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`Proceeding No. IPR2022-00367
`Attorney Docket No. 50095-0047IP1
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`
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`EXHIBIT-1035-1036 [RESERVED]
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`EXHIBIT-1037 Apple’s motion to transfer, XR Communications, LLC v. Apple
`Inc., 6:21-cv-00620, W.D. Tex., Dec. 10, 2021
`
`
`EXHIBIT-1038 HP’s motion to transfer, XR Communications, LLC v. HP Inc.,
`6:21-cv-00694, W.D. Tex., Apr. 8, 2022
`
`
`EXHIBIT-1039 Order resetting Markman Hearing, XR Communications, LLC v.
`Apple Inc., 6:21-cv-00620, W.D. Tex., May 23, 2022
`
`
`EXHIBIT-1040 Order resetting Markman Hearing, XR Communications, LLC v.
`HP Inc., 6:21-cv-00694, W.D. Tex., May 24, 2022
`
`
`EXHIBIT-1041 [RESERVED]
`
`EXHIBIT-1042
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`Second Amended Standing Order Regarding Motions for Inter-
`District Transfer, W.D. Tex., Aug. 21, 2021
`
`
`EXHIBIT-1043 Transcript of Dr. Vojcic Deposition
`
`EXHIBIT-1044
`
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`Second Declaration of Dr. Robert Akl
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`v
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`Proceeding No. IPR2022-00367
`Attorney Docket No. 50095-0047IP1
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`INTRODUCTION
`The Patent Owner Response (Paper 14 or “POR”) focuses on feature [8A] and
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`advances three arguments as to why Petitioner’s mapping of [8A] is allegedly
`
`deficient.1 Specifically, Patent Owner (“XR”) argues that: (1) it would have not been
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`obvious to a POSITA to modify Burke’s receiver antenna to be an antenna array
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`with multiple antenna elements; (2) Burke does not teach or suggest receiving first
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`and second signal transmissions at the first and second antenna elements,
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`respectively; and (3) Burke does not teach or suggest that the two signal
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`transmissions are received simultaneously. POR, 1, 2; EX1044, ¶[4].
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`However, XR’s arguments are unavailing. EX1044, ¶[4]. For instance, Burke
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`explicitly discloses the use of an antenna array at Burke’s receiver and also explicitly
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`discloses that signal transmissions are configured so that they are received
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`simultaneously. EX1006, 5:18-20, 25:58-61, 7:66-8:2, 6:30-42, 5:54-55, 8:42-51.
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`Petitioner also provided detailed explanation through its expert (Dr. Robert Akl) and
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`
`1 The POR asserts, without any support, that “the ’235 Patent claims are entitled to
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`a priority date at least as early as February 1, 2002.” POR, 8. The POR’s citation
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`to the Preliminary Response is improper incorporation by reference. 37 CFR §
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`42.6(a)(3). Therefore, this argument should be disregarded as improper. See also
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`infra §V.
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`6
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`
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`multiple corroborating references (none of which are substantively addressed by
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`Proceeding No. IPR2022-00367
`Attorney Docket No. 50095-0047IP1
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`XR) as to why it would have been obvious to a POSITA that Burke’s system would
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`have incorporated an antenna array with multiple antenna elements consistent with
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`the knowledge of a POSITA.
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`XR also mischaracterizes the Petition’s obviousness rationale as being based
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`on “common sense,” and relies on Arendi to encourage the Board to dismiss
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`Petitioner’s obviousness rationale. However, Arendi is not applicable to this IPR
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`proceeding at least because the Petition does not rely on “common sense” to support
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`its obviousness rationale. In contrast to XR’s allegations that Petitioner’s
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`obviousness grounds are “driven by hindsight,” the invalidity grounds are inspired
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`by explicit disclosure in Burke that would have rendered the claims obvious to a
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`POSITA, as explained in the Petition and further in this reply. POR, 2; Pet., 20-30.
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`
`
` BURKE RENDERS OBVIOUS FEATURE [8A] (“receiving a first signal
`transmission from a remote station via the first antenna element and a second
`signal transmission from the remote station via the second antenna element
`simultaneously”)
`XR does not dispute that Burke’s remote station transmits two signal
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`transmissions. Nor can it. Burke’s FIG. 2 (reproduced below) explicitly depicts two
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`signal transmissions being transmitted by and received from a remote station (base
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`station 104). EX1006, 4:6-18. However, XR argues that Burke does not render
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`7
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`two antenna elements receiving
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`these
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`two signal
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`transmissions
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`obvious
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`simultaneously. POR, 20-23, 16-17. XR’s contention fails to fully acknowledge or
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`account for Burke’s disclosure in totality and the understanding a POSITA would
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`have had of Burke’s disclosure. EX1044, ¶¶[5]-[6].
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`EX1006, FIG. 2
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`
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`For example, Burke discloses that both the base station 104 and the mobile
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`station 106, which includes antenna 112, can use an array of antennas to
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`communicate information with each other and other devices. EX1006, 25:58-61
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`(“antenna 112 (which may be a single antenna, or an array of diversity antennas for
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`deploying diversity techniques known in the art)”), 5:18-20 (teaching that, like
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`mobile station 106, base station 104 includes a receive antenna 360 that may be
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`implemented as an “array of antennas” or that the that base station 104 may share
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`the array of antennas 110A-110M for the both the receive and transmit functions);
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`8
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`EX1003, ¶[84]. Moreover, Burke teaches that base station 104 “produces weights
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`Proceeding No. IPR2022-00367
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`and delays that cause the signals received along the various M multipaths to arrive
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`simultaneously and in-phase.” EX1006, 7:66-8:2, FIG. 3. It would have been
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`obvious to a POSITA that when Burke’s disclosure is considered as a whole, Burke,
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`by itself, renders [8a] obvious. EX1044, ¶[6]. Indeed, at a minimum, Burke
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`explicitly teaches receiving a first signal transmission and a second signal
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`transmission from a remote station via an array of antennas simultaneously.
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`To the extent that the use of two different antenna elements at the receiver is
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`not explicitly described in Burke, the Petition explained that it would have been
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`obvious when receiving two simultaneous signals from another device, the two
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`signals would have been received at different antenna elements, namely a first
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`antenna element and a second antenna element. Pet., 26-30. The obviousness of
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`this is not based on hindsight or “common sense,” as XR alleges. POR, 2, 3. Rather,
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`in disclosing that receiver antenna 112 can be implemented as “an array of diversity
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`antennas for deploying diversity techniques” and similarly “one or more antennas
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`110 may be shared for receive,”2 Burke suggests to a POSITA that when an array of
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`2 Although antenna 110 refers to the antenna of the base station 104, the notion that
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`an array of antennas can be shared for receiving data similarly applies on the
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`
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`9
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`
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`antenna elements is used to receive signals, two antenna elements in the array can
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`Proceeding No. IPR2022-00367
`Attorney Docket No. 50095-0047IP1
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`be used for receiving two signal transmissions. EX1003, ¶¶[84]-[86]; Pet., 27-30;
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`EX1044, ¶[7]. The Petition further explained that such an understanding would have
`
`been similar to other known systems in the art, such as Hottinen, Walton, and
`
`Goldsmith, as explained in the Petition. Pet., 28-30; EX1011, 22-29; EX1012, 2:8-
`
`40, 20:50-22:21, FIG. 5; EX1017, 191-192.
`
`For instance, Hottinen describes M transmitting antennas transmitting beams
`
`to N receive antennas using, in some cases, different parallel beams optimized for
`
`different receive antennas (here, N and M can both equal 2). EX1011, 24-26.
`
`Walton’s FIG. 5 (reproduced below) depicts two sets of receive antennas 552A and
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`552R in terminals 106A (highlighted in yellow) and 106B (highlighted in green),
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`respectively, that are communicating with a base station 104 (highlighted in red).
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`EX1012, 3:23-43, 21:42-22:20. For each terminal 106, a first receive antenna (e.g.,
`
`552A) receives at least a first signal transmission and a second receive antenna (e.g.,
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`552R) receives at least a second signal transmission. Id.; EX1044, ¶[8].
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`mobile station 106 and is a benefit of using diversity antennas. EX1044, footnote
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`1.
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`10
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`EX1012, FIG. 5.
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`
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`Even though the Petition provided corroborating references to support its
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`obviousness ground and also referenced technical explanations provided Dr. Robert
`
`Akl that described the understanding a POSITA would have had of Burke’s
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`disclosure, XR still argued that the Petition did not provide sufficient evidence as to
`
`how Burke’s disclosure renders obvious “receiving a first signal transmission from
`
`a remote station via the first antenna element and a second signal transmission from
`
`the remote station via the second antenna element simultaneously.” POR, 13, 16-
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`20.
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`11
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`For the benefit of the Patent Owner, Dr. Akl has provided the figure below
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`
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`that further illustrates one example of a POSITA’s understanding of an antenna array
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`implementation in Burke’s system consistent with what he had previously described
`
`in ¶¶[84]-[86] of his first declaration (EX1003). EX1044, ¶[9]. The figure below is
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`a combination of Burke’s FIG. 2 and two replications of Burke’s FIG. 12. Burke’s
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`FIG. 12 shows components of the mobile station 106 when a single antenna is used,
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`and replaces the depiction of mobile station 106 and its antenna 112 in FIG. 2. When
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`the single antenna is replaced by an array of antennas, one possible implementation
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`is that a second set of components is added that is identical to the set of components
`
`shown in FIG. 12. In such a configuration, the antenna array includes two antenna
`
`elements 112. Realizing such a configuration is as simple and obvious as duplicating
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`the components shown in FIG. 12 and adding them to Burke’s mobile station 106.
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`EX1044, ¶[9].
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`
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`12
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`Proceeding No. IPR2022-00367
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`Receiver Antenna element 1
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`First signal transmission
`
`Second signal transmission
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`Receiver Antenna element 2
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`Mobile station
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`EX1044, pg. 7.
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`
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`For comparison purposes, Walton’s FIG. 5 (reproduced above on p. 11)
`
`includes a very similar configuration in which the rows of the receiver antenna array
`
`have duplicate components (duplication is indicated by the “…” in Walton’s FIG.
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`5). In the combined figured provided by Dr. Akl, each duplicate of FIG. 12 similarly
`
`can correspond to one row of the array of antennas and one RAKE receiver. The
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`components of FIG. 12 can be duplicated based on the number of antenna elements
`
`in the array of antennas, e.g., 5 duplicates if 5 antenna elements). In fact, when
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`describing a receiver 370 in the base station 104 that may use an antenna array for
`
`reception of signals, Burke explicitly teaches that various suitable components can
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`13
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`
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`be used in processing the signals received by the antenna array including, for
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`Proceeding No. IPR2022-00367
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`example, “RF downconverters, amplifiers, filters, analog-to-digital (AID)
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`converters, demodulators, RAKE receivers, combiners, deinterleavers, decoders
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`(Viterbi, turbo, block decoders such as those implementing Bode-Chaudhury-
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`Hocquenghem (BCH) codes, etc.)” EX1006, 5:13-32. Burke’s use of the plural
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`form of the listed components is consistent with the duplication of components
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`shown in FIG. 5 of Walton for an array of antennas, and is further corroboration that
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`a POSITA would have known how to configure a receiver to accommodate an array
`
`of antennas. EX1044, ¶¶[10]-[11]. Unsurprisingly, the mobile station depicted in
`
`Burke’s FIG. 12 shares a similar set of components that also could have been
`
`duplicated. EX1044, ¶[11].
`
`As Dr. Akl explained in his first declaration (“Hottinen, Walton, and
`
`Goldsmith are examples of the well-known understanding a POSITA would have
`
`had that different receiving antennas in an antenna array would have been used to
`
`receive two signal transmissions transmitted from two antennas in an antenna array
`
`of a transmitting device”) and reiterates again now, the configuration depicted above
`
`would have been readily understood by a POSITA (e.g., as evidenced by Walton’s
`
`FIG. 5). EX1003, ¶[85], see also ¶¶[84], [86]; EX1044, ¶[12]. However, a POSITA
`
`would have been able to implement several possible configurations to accommodate
`
`an array of antenna elements. EX1044, ¶[12]. Indeed, even XR’s expert conceded
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`14
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`
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`that “[i]t's possible to have different implementations.” EX1043, 76:1-19. For
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`instance, in some cases, multiple receiver blocks 1210 can be used (one per antenna
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`array element) and each of the receiver blocks 1210 can be connected to a
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`multiplexor which then connects to a single set of despreaders 1220A-1220L shown
`
`in Burke’s FIG. 12. EX1044, ¶[12]. Indeed, the various possible implementations
`
`is further indicative that implementation of an array of antenna elements, such that
`
`two of the antenna elements simultaneously receive two signal transmissions, would
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`have been obvious to a POSITA, which is likely why Burke did not depict and limit
`
`his teachings of an array of antenna elements to a particular implementation.
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`EX1044, ¶[12].
`
`The ability to receive two signals simultaneously would also not change
`
`whether a single antenna is used or an array of antennas is used. EX1044, ¶[13]. As
`
`noted above, Burke’s base station 104 “produces weights and delays that cause the
`
`signals received along the various M multipaths to arrive simultaneously and in-
`
`phase.” EX1006, 7:66-8:2, FIG. 3. Burke’s system has the ability to “distinguish
`
`the various paths, as well as the per-antenna components contributing to the signal
`
`on any path” and determine “a code for each path/antenna pair.” EX1006, 8:1-9.
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`The base station’s encoding “allows a mobile station 106 to estimate the channel
`
`characteristics for the various paths as well as the contributions to each path” and
`
`provide timing delay information back to the base station 104, which a POSITA
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`15
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`
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`would have understood would have allowed signals to continue to be received
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`Proceeding No. IPR2022-00367
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`simultaneously at the mobile station 106 even when using multiple antenna elements
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`in an antenna array. EX1006, 8:24-28, 8:52-9:3; EX1044, ¶[13].
`
`In further describing why feature [8a] would have been obvious to a POSITA,
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`Petitioners’ expert, Dr. Akl, explained, with corroboration from Hottinen and
`
`Goldsmith, that “receiving a first signal at a first antenna and a second signal at a
`
`second antenna of an antenna array at a receiver provides performance gain, for
`
`example, through an increase in the average received signal to noise ratio” and
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`improved short term channel estimation at the mobile station. EX1017, 191-192;
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`EX1011, 25; Pet., 29, 28; EX1003, ¶¶[85]-[86]. While XR’s expert, Dr. Vojcic,
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`disagreed with the latter benefit (improved short term channel estimation), he agreed
`
`that Petitioner’s application of Burke would have resulted in improved performance
`
`gain. EX1043, 68:1-2 (“the latter part is correct, yes, it could provide performance
`
`gain for the receiver”). Thus, the Petition provides at least one reason that is even
`
`acknowledged by XR’s own expert, as to why a POSITA would have modified
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`Burke’s system to incorporate multiple antennas. EX1044, ¶[15]. Accordingly,
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`XR’s contention that the Petition does not address how the alleged modification of
`
`Burke would impact Burke’s system is demonstrably incorrect.
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`Moreover, as explained in more detail below, feature [8a] is obvious at least
`
`because (A) FIG. 12 does not require substantive modification to accommodate an
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`16
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`
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`array of antenna elements, and (B) XR’s mischaracterization of Petitioner’s
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`Proceeding No. IPR2022-00367
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`arguments relying on common sense and corresponding arguments relying on the
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`Arendi case are baseless and misplaced.
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`A. Contrary to the POR, Burke’s FIG. 12 does not require substantive
`modification to accommodate an array of antenna elements
`As shown above, Burke’s FIG. 12 is not substantively modified to implement
`
`an antenna array in Burke’s system. Rather, FIG. 12 would be replicated N number
`
`of times if the antenna array has N antenna elements. EX1044, ¶[16]. Thus, without
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`substantially modifying the architecture shown in Burke’s FIG. 12, Burke’s
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`system would have predictably and obviously “receiv[ed] a first signal transmission
`
`from a remote station via the first antenna element and a second signal transmission
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`from the remote station via the second antenna element simultaneously.” EX1044,
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`¶[16].
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`In arguing against the obviousness of Burke’s disclosure, neither XR nor its
`
`expert, Dr. Vojcic identified any problems a POSITA would encounter in
`
`accommodating an antenna array in Burke. Rather, both relied on incorrect
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`characterizations of Burke to argue that the Petition’s grounds were deficient. For
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`instance, when asked during his deposition what he thought was missing from Burke
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`and Dr. Akl’s finding of an obvious use of an antenna array in Burke’s receiver, Dr.
`
`Vojcic explained that “there was nothing in Burke that shows how multiple antennas
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`17
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`could be used, and because Burke was focusing on RAKE receiver with a single
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`Proceeding No. IPR2022-00367
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`antenna in Figure 2 embodiments, or in general in the whole patent for a mobile
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`system that's receiving. All descriptions were based on a single antenna, and block
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`diagram Figure 12 describes RAKE receiver with a single antenna.” EX1043, 66:7-
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`14; see also POR, 16 (“Burke’s mobile station only possesses a single antenna
`
`element”), 2, 18; EX2010, ¶37; EX1044, ¶[17].
`
`Yet, this is clearly incorrect. As noted above, Burke explicitly discloses that
`
`a receiver, whether in the base station or mobile station, can include an array of
`
`antenna elements. EX1006, 25:58-61, 5:18-20. Moreover, as explained above,
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`Burke’s system depicted in FIG. 12 would have been predictably used with the array
`
`of antenna elements to simultaneously receive two signal transmissions (e.g., by
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`replacing a single antenna 112 with an array of antenna elements as taught by Burke).
`
`EX1044, ¶[18].
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`In addition to mischaracterizing Burke, XR also turns to the ’235 Patent’s
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`FIG. 3 in an attempt to distinguish Burke from the ’235 Patent. POR, 21. But even
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`FIG. 3 does not bother to show the various antenna elements and instead just
`
`illustrates a single box and labels it antenna array 302. EX1001, FIG. 3. This
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`depiction reinforces Petitioners’ position. EX1044, ¶[19]. Even the ’235 Patent
`
`implicitly acknowledges that a POSITA would have understood how the system in
`
`18
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`
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`FIG. 3 (reproduced below) works even though only a single block is used to
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`Proceeding No. IPR2022-00367
`Attorney Docket No. 50095-0047IP1
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`represent an antenna array. EX1044, ¶[19].
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`EX1001, FIG. 3
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`19
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`Proceeding No. IPR2022-00367
`Attorney Docket No. 50095-0047IP1
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`B. XR’s reliance on Arendi is misplaced
`XR relies on Arendi in support of its argument that Petitioners did not satisfy
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`its burden of explicitly detailing how multiple antennas would be incorporated into
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`Burke’s FIG. 12. POR, 15, 16, 19, 24. However, XR’s reliance on Arendi is
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`misplaced.
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`In Arendi, “[t]he single question at issue … is whether the Board misused
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`‘common sense’ to conclude that it would have been obvious to supply a missing
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`limitation in the Pandit prior art reference to arrive at the claimed invention.”
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`Arendi, 1361. However, the Federal Circuit has clarified that Arendi is
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`distinguishable from circumstances, as here, where “the Board rel[y] on expert
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`evidence, which [is] corroborated by” the teachings in cited prior art. Koninklijke
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`Philips NV v. Google LLC, 948 F. 3d 1330, 1338 (Fed. Cir. 2020). Importantly, as
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`noted below, the Federal Circuit recognized that a POSITA’s knowledge is key to
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`determining obviousness.
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`Although the prior art that can be considered in inter partes reviews is
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`limited to patents and printed publications, it does not follow that we
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`ignore the skilled artisan’s knowledge when determining whether it
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`would have been obvious to modify the prior art. Indeed, under 35
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`U.S.C. § 103, the obviousness inquiry turns not only on the prior art,
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`but whether “the differences between the claimed invention and the
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`20
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`Proceeding No. IPR2022-00367
`Attorney Docket No. 50095-0047IP1
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`prior art are such that the claimed invention as a whole would have been
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`obvious . . . to a person having ordinary skill in the art to which the
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`claimed invention pertains.” 35 U.S.C. § 103. Regardless of the
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`tribunal, the inquiry into whether any “differences” between the
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`invention and the prior art would have rendered the invention obvious
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`to a skilled artisan necessarily depends on such artisan’s knowledge.
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`Koninklijke Philips NV at 1337.
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`In these proceedings, Petitioner has set forth an obviousness ground in which
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`Dr. Akl (an expert in this subject matter) explained, with the corroboration of three
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`other references, that the use of two antenna elements in Burke’s antenna array to
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`receive two signal transmissions, respectively, in the manner claimed by the ’235
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`Patent would have been obvious as it was consistent with practices and knowledge
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`of a POSITA at the effective priority date of the ’235 Patent. Pet., 20-30. Notably,
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`Petitioners referenced three varied references (Hottinen, a Europe-based PCT
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`application; Walton, a US patent publication; and Goldsmith, a textbook) as
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`corroborating a POSITA’s knowledge. XR did not address the teachings of any of
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`these references other than stating that they are not part of the prior art grounds—
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`which Petitioners never asserted anyway. POR, 31-33. Thus, XR did not contest
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`that the use of antenna arrays in receivers was not within the realm of a POSITA’s
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`knowledge. Indeed, XR’s silence regarding the disclosure in the corroborating
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`21
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`references strengthens Petitioners’ argument that the implementation of an antenna
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`Proceeding No. IPR2022-00367
`Attorney Docket No. 50095-0047IP1
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`array in Burke’s system in the manner claimed would have been obvious and
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`consistent with a POSITA’s knowledge. The obvious nature of the disclosure is also
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`likely why Burke did not include the details of incorporating the antenna array into
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`FIG. 12, as such details would have been readily understood by a POSITA.
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`Moreover, during his deposition, Dr. Vojcic confirmed that antenna arrays
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`were known for a long time. EX1043, 12:21-13:2 (“adaptive antenna arrays were
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`known for a long time. And adaptive antennas for, say, beam steering and null
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`steering were known in the art for some military applications, typically”). Given
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`that antenna arrays were known for a long time and that multiple references
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`corroborate the use of two antenna elements receiving two signals from a transmitter,
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`the incorporation of an antenna array into Burke’s system would therefore have been
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`well within the realm of a knowledge of a POSITA and therefore obvious.
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`Another reason why XR’s reliance on Arendi is incorrect is because the
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`alleged missing limitation (as XR contends) of multiple antennas, is not missing in
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`Burke. Burke explicitly discloses using an array of antenna elements. POR, 28;
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`EX1006, 5:18-20, 25-58-61.
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`Moreover, in an attempt to analogize this IPR to Arendi, XR mischaracterizes
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`Petitioners’ obviousness ground as relying on “‘common sense’ arguments.” POR,
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`22
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`18-19. Nowhere in the Petition does Petitioner use such a rationale or even the words
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`Proceeding No. IPR2022-00367
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`“common sense.”
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`For at least the foregoing reasons, Petitioner submits that XR’s reliance on
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`Arendi is incorrect and that feature [8a] is obvious for the reasons noted above and
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`in the Petition.
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`XR’s one sentence reference to In re Kotzab, 217 F.3d 1365, 1371–72 (Fed.
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`Cir. 2000) is also incorrect and misplaced. POR, 16. In Kotzab, the Federal Circuit
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`using the pre-KSR teach, suggest, or motivation (TSM) test determined that the
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`reference Evans did not render the litigated claims obvious because “Evans does not
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`teach or suggest the use of a single temperature sensor to control a plurality of flow
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`control valves.” Kotzab at 1370. The Federal Circuit noted that “[t]he motivation,
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`suggestion or teaching may come explicitly from statements in the prior art, [or] the
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`knowledge of one of ordinary skill in the art.” Id.
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`In this IPR proceeding, even if the TSM test were used as a basis for
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`obviousness (which it no longer is and thus Kotzab is not instructive), the primary
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`reference, Burke, explicitly teaches the use of an array of antennas in a receiving
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`device. EX1006, 25:58-61, 5:18-20. In addition, Petitioners clearly explained, with
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`evidence from corroborating references as noted above, that based on a POSITA’s
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`knowledge and Burke’s disclosure, a POSITA would have found feature [8A]
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`23
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`obvious. Pet., 27-30; EX1003, ¶¶[84]-[86]. Thus, even under the improperly
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`Proceeding No. IPR2022-00367
`Attorney Docket No. 50095-0047IP1
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`restrictive test of Kotzab, claim 8 would have been obvious.
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` XR’S ARGUMENTS FOR [8D] AND [8E] FALL WITH XR’S
`ARGUMENTS FOR [8A]
`XR’s reasons why Burke does not render obvious features [8D] and [8E] are
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`substantively the same as XR’s arguments with respect to feature [8A]. POR, 30-
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`33. Accordingly, for at least the reasons noted above in Section II, XR’s arguments
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`fail. EX1044, ¶[20].
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`With respect to feature [8E], XR also argues that the Petition did not
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`sufficiently explain how Burke’s system could be modified. POR, 32. In particular,
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`XR argues that “Dr. Akl fails to explain how the pre-correction processor 310 would
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`be modified to accommodate an antenna 112 comprising multiple antenna
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`elements.” POR, 32. However, like other aspects of Burke’s disclosure, Burke’s
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`system, including its pre-correction processor 310, does not have to be substantively
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`modified to accommodate an array of antenna elements at a receiving device (mobile
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`station 106). EX1044, ¶[21].
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`For example, Burke teaches that “various parameters for use in generating the
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`M signals for transmission on the M-antenna array 110 are generated in pre-
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`correction processor 310. The parameters are generated in response to
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`24
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`information fed back from the mobile station 106 receiving the signals
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`Proceeding No. IPR2022-00367
`Attorney Docket No. 50095-0047IP1
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`transmitted on antenna array 110.” EX1006, 5:9-20. As noted above, Burke’s
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`system has the ability to “distinguish the various paths, as well as the per-antenna
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`components contributing to the signal on any path” and determine a code for each
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`path/antenna pair.” EX1006, 8:1-9. The base station’s encoding “allows a mobile
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`station 106 to estimate the channel characteristics for the various paths as well as the
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`contributions to each path” and provide timing delay information back to the base
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`station 104. EX1006, 8:24-28, 8:52-9:3; EX1044, ¶[21]. In addition, as explained
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`in the petition, data including the weights (f1,1 … fL,M) and delays transmitted from
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`the mobile station 106 to the base station 104 are used by the base station 104 to
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`configure and construct beam-forming signals that are then sent out through
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`respective transmitters 350A-350M and antennas 110A-110M. Pet., 42; EX1006,
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`27:23-31; 5:65-6:4, 10:57-67, 7:49-8:9, FIGS. 5 (reproduced below), 6; EX1003,
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`¶[100]; EX1044, ¶[21].
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`A POSITA would have understood that the above-noted process would not be
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`substantively different whether one antenna is receiving transmitted signals or
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`multiple antenna elements of an antenna array are receiving signals. EX1044, ¶[22].
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`Burke’s system would be able to provide feedback from one or more antenna
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`elements in the manner described above so that the base station 104 can optimize its
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`beam-formed si
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