UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., GOOGLE LLC, and CISCO SYSTEMS, INC.,
`Petitioners
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`v.
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`XR COMMUNICATIONS, LLC, D/B/A VIVATO TECHNOLOGIES,
`Patent Owner
`____________
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`IPR2022-00367
`Patent No. 10,715,235
`____________
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`PATENT OWNER SUR-REPLY
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., GOOGLE LLC, and CISCO SYSTEMS, INC.,
`Petitioners
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`v.
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`XR COMMUNICATIONS, LLC, D/B/A VIVATO TECHNOLOGIES,
`Patent Owner
`____________
`
`IPR2022-00367
`Patent No. 10,715,235
`____________
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`PATENT OWNER SUR-REPLY
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`TABLE OF CONTENTS
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`Introduction ........................................................................................................ 1
`I.
`II. The Petition Fails to Show that Burke Renders Obvious Claim [8a] ................ 2
`A. Replacing Burke’s antenna with an antenna array does not satisfy [8a]’s
`requirement of two elements of an antenna array that receives two signals
`simultaneously. ...................................................................................................... 2
`B. The Reply and Dr. Akl’s supplemental declaration fail to cure the Petition’s
`deficiencies and add improper new theories. ........................................................ 6
`C. Regardless, the Reply’s purported duplication theory fails to demonstrate
`obviousness. ........................................................................................................ 13
`D. The Reply’s other arguments for claim [8a] fail. ......................................... 15
`III. Petitioners fail to show obviousness of claims [8d] and [8e]. ......................... 18
`IV. Ground 2: The Petition fails to show obviousness of Claims 13 and 14 in view
`of Burke in combination with Schurr. .................................................................... 20
`V. Conclusion ....................................................................................................... 20
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`PATENT OWNER’S EXHIBIT LIST
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`Exhibit Description
`2001 Complaint, XR Communications v. Apple Inc., W.D. Tex. Case No. 21-
`cv-00620-ADA
`2002 Complaint, XR Communications v. HP Inc., W.D. Tex. Case No. 21-cv-
`00694-ADA
`2003 Scheduling Order, XR Communications v. Apple Inc., W.D. Tex. Case
`No. 21-cv-00620-ADA, Dkt. No. 27 (W.D. Tex., Jan. 13, 2022)
`2004 Scheduling Order, XR Communications v. HP Inc., W.D. Tex. Case No.
`21-cv-00694-ADA, Dkt. No. 24 (W.D. Tex., Jan. 13, 2022)
`2005 Notice of Agreed Extension of Deadline, XR Communications v. Apple
`Inc., W.D. Tex. Case No. 21-cv-00620-ADA, Dkt. No. 27 (W.D. Tex.,
`Jan. 13, 2022)
`2006 Notice of Agreed Extension of Deadline, XR Communications v. HP
`Inc., W.D. Tex. Case No. 21-cv-00694-ADA, Dkt. No. 24 (W.D. Tex.,
`Jan. 13, 2022)
`2007 Exhibit A-14 to Defendants’ Preliminary Invalidity Contentions in XR
`Communications v. Apple Inc., W.D. Tex. Case No. 21-cv-00620-ADA
`and XR Communications v. HP Inc., W.D. Tex. Case No. 21-cv-00694-
`ADA
`2008 Excerpts of Defendants’ Preliminary Invalidity Contentions in XR
`Communications v. Apple Inc., W.D. Tex. Case No. 21-cv-00620-ADA
`and XR Communications v. HP Inc., W.D. Tex. Case No. 21-cv-00694-
`ADA
`2009 Claim Construction Order, XR Comm'ns LLC v. Cisco Sys., Inc., Case
`No. 6:21-cv-00623-ADA, Dkt. No. 56 (W.D. Tex. Sept. 30, 2022)
`2010 Declaration of Branimir Vojcic, D.Sc.
`2011 Deposition Transcript of Robert Akl, Ph.D. dated October 18, 2022
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`I.
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`Introduction
`The Petition argued for only one modification to Burke: replacing the single
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`antenna in Burke’s mobile station with an antenna array. But as shown in the Patent
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`Owner Response, this modification falls far short of constituting a system that
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`performs three limitations of the challenged claims:
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`receiving a first signal via “a first antenna element of an antenna”
`and a second signal via “a second antenna element of the
`antenna”— “simultaneously” (claim [8a]);
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`determining “second signal information” for the second signal
`that is different than the “first signal information” for the first
`signal (claim 8[d]); and
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`determining a set of weighting values “based on the first signal
`information and the second signal information” (claim 8[e]).
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`Now that Patent Owner identified this flaw in the Petition, Petitioners provide new
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`invalidity theories in reply, including a complex modification of Burke’s mobile
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`station that requires duplicating Burke Fig. 12 for each antenna element of the array.
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`But this “Fig. 12 duplication” theory is found nowhere in the Petition and amounts
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`to an impermissible new argument in reply. In any event, Petitioners’ new theory is
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`driven by hindsight and an unsupported attempt to fit Burke’s different system into
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`the challenged claims by using the ’235 patent a roadmap. At bottom, Petitioners fail
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`to show that a POSITA starting with Burke would be motivated to modify the single
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`antenna to arrive at the claimed antenna array recited in 8[a], [d], and [e].
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`II. The Petition Fails to Show that Burke Renders Obvious Claim [8a]
`A. Replacing Burke’s antenna with an antenna array does not satisfy
`[8a]’s requirement of two elements of an antenna array that
`receives two signals simultaneously.
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`The Petition argued that replacing Burke’s single antenna with an array of
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`diversity antennas would be sufficient to satisfy limitation [8a]. It relies on Burke’s
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`statement at 25:58–61 that antenna 112 “may be a single antenna, or an array of
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`diversity antennas for deploying diversity techniques known in the art” and asserts
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`that “a POSITA would have been motivated to implement Burke’s disclosure (EX-
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`1006, 25:58–61) for its technological benefits[.]” Pet. at 27–28. Thus, the Petition’s
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`theory was to simply replace Burke’s antenna 112 with an array of diversity
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`antennas. It described no other modifications to the Burke’s mobile station or to any
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`components or structures in Figs. 2 and 12. Id.; EX-1003 (Akl Decl.), ¶¶ 83-86.
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`That the Petition is limited to a replacement theory is confirmed by its
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`discussion of claim [8c] and [8d]. It asserts that Figure 12 satisfies those limitations
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`because signals received at “array antennas 112” are conditioned at receiver 1210:
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`Pet. at 33 (highlighting added);
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`Pet. at 34 (yellow highlighting added).
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`But as explained in Patent Owner’s Response, the Petition’s “replacement
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`theory” falls far short of satisfying claim [8a]. Even if antenna 112 is replaced with
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`a black box of an array of diversity antennas, Burke would at most suggest that
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`signals 150 and 160 go into the same overall antenna array box. This fails to meet
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`the specific claim 8[a] requirements of receiving signals 150 and 160 at two different
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`antenna elements of the same array simultaneously. EX-2010 (Vojcic Decl.), ¶ 38.
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`There is no suggestion in Burke that signal 160 could be or should be received by a
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`different antenna element from signal 150, and the Petition doesn’t argue in favor of
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`modifying Burke’s mobile station in this manner. EX-1003, ¶¶ 83–86.
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`Indeed, Burke’s one-sentence reference to “an array of diversity antennas for
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`deploying diversity techniques known in the art” is entirely generic and insufficient.
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`As Petitioner’s expert Dr. Akl testified in deposition, there are many possible
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`implementations of an array of diversity antennas, as well as many possible diversity
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`techniques. See Ex. 2011 (Akl Dep.) at 34:18–25 (“Q. And how many diversity
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`techniques were -- were known in the art at the time? A. I -- I don’t have a number
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`for you. I provide examples of what are some diversity techniques known in the art,
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`but I -- I did not and I do not have a comprehensive list.”).
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`Burke therefore says nothing about the structure of the diversity array and
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`treats it as a black box component that operates identically as a single antenna with
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`respect to Burke’s system. And, as confirmed by the Goldsmith textbook that
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`Petitioners rely on, a generic diversity array would receive signals with one antenna
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`at a time, namely, the antenna within the array with the strongest signal. In chapter
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`7 entitled “Diversity,” Goldsmith describes the idea behind diversity as sending the
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`same data to two antennas and selecting the antenna with the better signal:
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`[T]he idea behind diversity is to send the same data over
`independent fading paths. These independent paths are
`combined in some way such that the fading of the resultant
`signal is reduced. For example, consider a system with two
`antennas at either the transmitter or receiver that
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`experience independent fading. If the antennas are spaced
`sufficiently far apart, it is unlikely that they both
`experience deep fades at the same time. By selecting the
`antenna with the strongest signal, called selection
`combining, we obtain a much better signal than if we just
`had one antenna.
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`Ex. 1017 (Goldsmith) at 202 (emphasis added).
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`Thus, even if Burke’s single antenna were replaced with a diversity array, the
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`mobile station would still be configured to receive with one antenna element at a
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`time. This fails to meet claim 8[a], which requires different signals to be received at
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`different antenna elements simultaneously. The Petition never addresses how
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`Burke’s mobile station should be modified to harness multiple receive antennas in
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`an array simultaneously. Pet at 29; EX-1003 ¶ 86 (failing to address the second
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`antenna element receiving signal 160 simultaneously with the first antenna element
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`receiving signal 150). And despite Dr. Akl agreeing that many implementations of a
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`diversity antenna are possible, the Petition failed to articulate a theory for why a
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`POSITA would choose one contrary to the design parameters of Burke where signals
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`150 and 160 are received with a single receive antenna.
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`The Petition and Dr. Akl’s declaration failed to rebut these points. EX-1003
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`(Akl Decl.) ¶¶ 84–85. Dr. Akl never explained how Burke’s receiver structure with
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`despreaders and channel estimators in Fig. 12 would perform claim [8a], which
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`would require simultaneously receiving signal 160 with the second antenna element.
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`EX-2010 (Vojcic Decl.) ¶ 39. And Dr. Akl failed to make any adequate showing
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`how the asserted modification of Fig. 12—replacing the antenna with an array—
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`would perform the remaining claim limitations of [8a] beyond the “second antenna
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`element,” including the simultaneous requirement.
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`B.
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`The Reply and Dr. Akl’s supplemental declaration fail to cure the
`Petition’s deficiencies and add improper new theories.
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`Because the Petition fails to articulate how a modified Burke mobile station
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`performs claim [8a], Petitioners submitted a second declaration from Dr. Akl on
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`Reply containing at least two new theories for how to modify Burke to arrive at
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`claim [8a]. The new theories are based on Walton and on modifying Burke to
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`duplicate the entirety of Fig. 12 for each element of the antenna array.
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`First, the Reply and Dr. Akl argue that Burke’s mobile station should be
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`modified to match Walton’s Figure 5. Reply at 9–11; EX-1044 (Akl Supp. Decl.) ¶
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`8, 11. This fails for several reasons.
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`The Petition did not remotely assert such a modification based on Walton Fig.
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`5. Rather, the Petition mentioned Walton, Hottinen, and Goldsmith as background
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`references to support its assertion that a POSITA would have been motivated to
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`implement Burke’s system with an array of diversity antennas. See Pet. at 28 (“Prior
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`art from the same time period further demonstrates that a POSITA would have been
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`motivated
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`to
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`implement Burke’s disclosure (EX-1006, 25:58-61) for
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`its
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`technological benefits like improved short term channel estimation and receiver
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`performance gain with a reasonable expectation of success because it was
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`implemented in similar wireless communications systems.”) (emphasis added).
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`Thus, the Petition relied on the background references narrowly, and only to argue
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`that a POSITA would have been motivated to implement a diversity array as
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`disclosed in Burke at 25:58–61. The Petition does not propose any modification of
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`Burke in view of disclosures in Walton or other references (which, in any event,
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`would be outside the scope of Ground 1 of this IPR).
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`These points were confirmed by Dr. Akl in deposition. He stated that he relied
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`on Walton, Hottinen, and Goldsmith only to show that “a POSITA would be
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`motivated to use Burke’s own disclosure of an antenna array.” Ex. 2011 (Akl Dep.)
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`at 36:5–12 (“A: I considered and relied upon those three references to show that a
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`POSITA -- why a POSITA would be motivated to use Burke's own disclosure of an
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`antenna array, because Burke says diversity techniques were known in the art. And
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`having an antenna array would allow you to take advantage of diversity
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`techniques.”) (emphasis added). He further stated that he was not relying on those
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`references to meet the requirements of claim 8[a]. Id. at 36:13–19 (“A: I’ve relied
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`on those three references to show examples of diversity techniques using antenna
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`arrays in the art. But I didn’t need to specifically rely on those references to meet the
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`claim language regarding a first signal and a second signal being received.”).
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`Accordingly, any obviousness theory that modifies Burke in view of Walton
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`or Walton’s disclosures (such as Fig. 5) is impermissible new argument on Reply
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`that must be disregarded. The Petition relied on Walton for the generalized
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`motivation to use a diversity antenna for its alleged “technological benefits.” Pet. at
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`28. It never asserted (much less explained) that Walton would inform how Burke
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`would be modified or how diversity antennas would be implemented in Burke.
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`In any event, the Reply’s reliance on Walton and other background references
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`cannot remedy the deficiencies for claim 8[a]. None of Walton, Hottinen, and
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`Goldsmith disclose or suggest an antenna array that meets claim 8[a], including the
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`requirement for the first antenna element and the second antenna element to receive
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`signals simultaneously. The Petition and Dr. Akl have never asserted or made any
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`showing that the other references disclose or suggest this limitation. See Pet at 28–
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`29; EX-1003 (Akl Decl.) ¶85; see also EX-2010 (Vojcic Decl.) ¶ 43.
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`Indeed, Dr. Akl repeatedly testified in deposition that he had “no opinion” as
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`to whether any of Walton, Hottinen, and Goldsmith disclosed an antenna array
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`capable of receiving different signals on different elements of the array. Ex. 2011
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`(Akl Dep.) at 35:12–36:12. He stated that he was relying on Burke and so he “did
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`not need at other prior art for that.” Id. at 35:24–36:1. Dr. Akl. Further stated that he
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`was not relying on Walton and other references “to meet the claim language
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`regarding a first signal and a second signal being received.” Id. at 36:13–19.
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`Next, for the first time in Reply, Dr. Akl contends that Fig. 12 of Burke would
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`be modified in at least two respects to allegedly meet claim [8a]. First, each
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`component of Fig. 12 must be duplicated for each antenna element in the array. Ex.
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`1044 (Akl Supp. Decl.) ¶ 9. Thus, for an array comprising 100 antenna elements,
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`Fig. 12 would be duplicated 100 times. Second, the new apparatus must be
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`configured so that a second antenna element and second iteration of Figure 12
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`receives signal 160 simultaneously with the first antenna element and first iteration
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`of Fig. 12 receiving signal 150. Id. ¶ 13. For example, Dr. Akl suggests that “space-
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`time diversity” as a relevant option. Id. at fn 1
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`But nowhere does the Petition identify this purported modification of Burke’s
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`mobile station that requires duplicating the entirety of Fig. 12 for each antenna
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`element of the array. As discussed above, the Petition relied heavily on Burke’s
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`disclosure at 25:58–61 and proposed a “replacement theory” that replaces Burke’s
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`antenna 112 with an array of diversity antennas. It described no other modifications
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`to the Burke’s mobile station or to the structures of Figs. 2 and 12.
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`The Reply and Dr. Akl’s new duplication theory is absent from the Petition,
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`which never states or even implies that Fig. 12 needs to be repeated N times for the
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`N elements of the antenna array. Indeed, the words “duplicate” / “duplication” (or
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`any variants) appear nowhere in the Petition. This is a new modification theory,
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`based on a new supplemental declaration, including a modified figure created by Dr.
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`Akl. The Petition’s annotations of Figs. 2 and 12 can be clearly contrasted with Dr.
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`Akl’s new duplication figure that modifies Burke’s mobile station, shown below:
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`Petition at 27, 34
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`Reply 11; Akl Supp. Decl. ¶ 9
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`The Petition’s arguments for other limitations further confirm that the Reply’s
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`“duplication theory” is new and materially different. For claims [8c] and [8d], the
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`Petition relies on a single version of Fig. 12 that asserts that a single receiver 1210
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`(which it annotates in red) passes signals “to determine first signal information for
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`the first signal transmission and second signal information for the second signal
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`transmission.” Id. at 34.
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`Regarding this annotated Fig. 12, the Petition asserts that “it would have been
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`obvious to a POSITA that when a first signal is received via signal path 150 and a
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`second signal is received via signal path 160, the receiver in mobile station 106
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`would receive and process the two received signals to determine signal
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`information[.]” Pet. at 36 (emphasis added). Thus, the Petition clearly asserts that a
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`single receiver 1210 would simultaneously receive two signals, the alleged first
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`signal 150 and alleged second signal 160. Now the Reply changes this theory, no
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`longer contending that a single receiver 1210 can receive the first and second signals
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`for further processing. Rather, Petitioner’s new theory rely on multiple, duplicated
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`copies of receiver 1210 and all subsequent circuity. This constitutes a new and
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`improper mapping that must be rejected.
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`Importantly, Petitioners’ theory is not an elaboration of minor details for a
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`theory that was properly disclosed in the Petition. Rather, it is an attempt to create a
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`new modification after Patent Owner pointed out fatal flaws with the original theory.
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`For example, as Patent Owner’s expert, Dr. Vojcic pointed out, there was no
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`evidence that a single receiver could accommodate two received signals to determine
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`signal information as the Petition asserted. Ex. 2010 (Vojcic Decl. ¶¶ 45–47). Dr.
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`Vojcic noted that the Petition’s discussion of a RAKE receiver does not address and
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`is inconsistent with two antenna elements that receive two signals. Further, the
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`background references of Ali, Banerjee, and Sriram do not indicate that the described
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`systems operate with more than one receive antenna. Id. Indeed, Banerjee, and
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`Sriram all deal with RAKE receivers with a single receive antenna. Id. Thus, the
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`Petition’s theory would not work in the way it was proposed.
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`The Reply’s new duplication theory and figure is impermissible new
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`argument raised for the first time in reply. Under well-settled Board and Federal
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`Circuit precedent it should be disregarded.
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`C. Regardless, the Reply’s purported duplication theory fails to
`demonstrate obviousness.
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`In any event, Dr. Akl’s latest theory is without merit. It fails for several
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`reasons. First a POSITA would not be motivated to duplicate each component in
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`Figure 12 in implementing an array of diversity antennas. Instead, it would be more
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`efficient to maintain one set of the receiver, searcher, channel estimator, etc.
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`components shown in Figure 12 and to use them with one receive antenna at a time
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`by switching back and forth to the antenna in the array with the better reception. This
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`takes advantage of the array of diversity antennas without requiring further complex
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`modifications to the operations of Burke’s mobile station’s various components,
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`which depend on receiving two signals with the same receive antenna. EX-2010, ¶
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`38; EX-1044, ¶ 13, citing EX-1006, 7:66-8:9, 8:24-28, 8:52-9:3, FIG. 3.
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`Second, Burke itself shows why Petitioners’ modification is unnecessary.
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`Burke’s actual, single, receiver can receive and process a plurality of received
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`signals from the actual, single antenna 112 as disclosed. Indeed, as Dr. Vojcic
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`explains, the relevant portions of Burke require that both of the multipaths from
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`transmit array to receive antenna (the “first signal transmission” and “second signal
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`transmission”) must be “received by the same antenna and go into the same
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`processing pipeline.” Vojcic Decl. ¶ 38. In other words, Burke would not work as
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`disclosed if the antennas and receivers were simply duplicated and received separate
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`signals. Petitioners do not and cannot contradict Dr. Vojcic’s testimony about this
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`aspect fact of Burke’s design.
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`Third, Petitioners’ new theory is driven by hindsight and an unsupported
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`attempt to fit Burke’s different system into the challenged claims by using the ’235
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`patent a roadmap. Petitioners fail to show that a POSITA starting with Burke would
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`be motivated to modify the single antenna to arrive at the claimed antenna array.
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`Petitioners and Dr. Akl repeatedly assert that many different implementations of a
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`diversity array are possible and that they “could be” pursued. But Petitioners never
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`articulates a specific motivation to modify Burke to allegedly meet the claims or
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`demonstrate that a POSITA “would be” motivated to pursue that modification. None
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`of Petitioners’ reasons differentiate between different possible implementations of a
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`diversity array. Nor do they differentiate between diversity arrays that would or
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`would not meet the claims. At bottom, Petitioners and Dr. Akl’s reasoning is
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`conclusory and lacks rational undermining sufficient to demonstrate that a POSITA
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`would be motivated to modify Burke to arrive at the claimed invention.
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`D. The Reply’s other arguments for claim [8a] fail.
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`In a footnote of their Reply, Petitioners rely on a footnote in Dr. Akl's new
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`declaration for the proposition that a POSITA would rely on the disclosure of the
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`plurality of antennas 110 within base station 104 in order to make a modification of
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`the singular antenna 112 within the mobile station 106. Reply at 6-10 n.2 (citing Akl
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`Supp. Decl. at 4-5 n.1). This theory relies on a misreading of Burke.
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`Burke states that in an alternative embodiment “one or more antennas 110
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`may be shared for receive and transmit” within base station 104. Burke at 5:19:20.
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`In the primary embodiments, “antennas 110” are used exclusively for transmitting,
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`and in several places are actually referred to as “transmit antennas 110” and similar.
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`Burke at 9:36; see also id. at 6:24-25, 8:45-51, 12:3, 19:3-4, 20:63. So in context,
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`the “may be shared” language clearly refers to the possibility of adding receive
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`capabilities to a transmit antenna array.
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`Petitioners recast this to suggest that Burke teaches that “an array of antennas
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`can be shared for receiving data… on the mobile station 106.” Reply at 9-10 n.2.
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`Petitioners seem to be trying to suggest that an array of receive antennas can be
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`“shared” to perform the role of a single receive antenna. That does not follow. Burke
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`discloses “sharing” an antenna array between transmit and receive functionalities;
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`Petitioners use “sharing” in a qualitatively different sense, now “sharing” multiple
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`antennas to form the single receive antenna 112 actually disclosed by Burke.
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`Dr. Akl’s declaration does not improve Petitioners’ argument. The declaration
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`says that “an array of antennas can be shared for receiving data… on the mobile
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`station 106 when the mobile station 106 uses an array of antennas to receive data.”
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`Second Akl Decl. at 4-5 n.1. This circular logic does not support Petitioners’ theory.
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`If we assume that mobile station 106 uses an array of antennas to receive data, of
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`course an array of antennas on mobile station 106 can receive data. But that has
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`nothing to do with transmit antenna array 110, does not establish any parallelism
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`between the disclosed structure of base station 104 and mobile station 106, and does
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`not establish that mobile station 106 actually receives a plurality of signal
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`transmissions on a plurality of antenna elements.
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`Burke’s system, as shown in Fig. 2 and relied on by Petitioners, is asymmetric;
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`base station 104 and mobile station 106 have different structures, as illustrated by
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`the contrasting illustrations of base station 104 having an array of multiple antennas
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`and mobile station 106 having a single antenna; and base station 104 but not mobile
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`station 106 transmitting antenna beam pattern 130 and antenna beam pattern 132
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`with distinct primary lobes 130A and 132A. Burke at 4:30-46 and Fig. 2.
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`To be clear, XR does not suggest that a single item on a figure, or a single
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`named item, cannot indicate an antenna array with a plurality of elements. As
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`Petitioners point out, the ’235 Patent refers to its antenna array as “Antenna Array
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`302.” Reply at 18-19 (reproducing ’235 Patent Fig. 3). This is unambiguous on its
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`face, with the word “array” present in the ’235 Patent’s figure and notably absent
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`from Burke’s “antenna 112.” And a quick glance at a nearby figure in the ’235 Patent
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`confirms that “antenna array 302” comprises individual elements 0…15. ’235 Patent
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`Fig. 8A.
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`Burke, in contrast to the ’235 Patent, does consistently distinguish in its
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`diagrams between individual antenna elements and arrays of antenna elements, and
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`consistently depicts antenna 112 as a single element. In Figure 2 itself, Petitioners’
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`key illustration, Burke separately illustrates antennas 110A and 110M, two of the
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`plurality of antennas constituting antennas 110, with the common “dot dot dot”
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`ellipsis between them to indicate an array. Burke Fig. 2. The text likewise indicates
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`that antennas 110 includes a plurality of antennas with, for example, the phrase
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`“plurality of transmit antennas 110A-110M.” Burke at 4:6-8. The same figure and
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`the same text uses a single antenna illustration and singular description for the
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`qualitatively different antenna 112. Id. (“[A] base station 104, having a plurality of
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`transmit antennas 110A-110M, sends signals to a mobile station 106, having a
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`receive antenna 112….”).
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`III. Petitioners fail to show obviousness of claims [8d] and [8e].
`For the same reasons and additional reasons, Petitioners fail to show
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`obviousness of claims [8d] and [8e]. Those claim limitations confirm that Petitioners
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`are raising a new duplication theory that was not disclosed in the Petition for those
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`limitations. And the Reply’s arguments for them are either new or unsupported.
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`As Patent Owner explained, Burke Figures 2 and 12 also fail to disclose [8d]
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`because, as there is no second antenna element, the mobile station is incapable of
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`determining second signal information for the second signal transmission received
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`at the second antenna element, wherein the second signal information is different
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`than the first signal information. Burke Figures 2 and 12 fail to disclose [8e], because
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`the mobile station in Burke cannot determine a set of weighting values based on
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`second signal information that is absent.
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`The Petition’s analysis of Limitation [8d] ignores the modification required
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`under Dr. Akl’s theory of [8a] and presupposes only one antenna element in the
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`mobile station (as disclosed in Burke). EX-2010, ¶¶45-46. Indeed, Dr. Akl’s analysis
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`of Limitation [8d] failed to address the requirement in [8a] to receive two different
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`signals with two different elements. He wrote that “additional corroborating
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`references, Ali, Banerjee, and Sriram, also explain that a that a single signal received
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`by different antennas in an antenna array receiver, such as a RAKE receiver, would
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`exhibit multipath components corresponding to delays introduced due to multipath
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`effects and the signal would be processed accordingly,” but this clearly does not
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`address two antenna elements that receive two signals. EX-1003, ¶ 96 (emphasis
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`added); EX-2010, ¶¶45-46.
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`Likewise, as to Limitation [8e], Dr. Akl only relied on Burke’s disclosure of
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`a pre-correction processor implemented in the mobile station. EX-1003, ¶¶ 98-99.
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`But Dr. Akl fails to explain how the pre-correction processor 310 would be modified
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`to accommodate an antenna 112 comprising multiple antenna elements. EX-2010, ¶
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`47. In Dr. Akl’s second declaration, he now argues (for the first time) that Burke’s
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`pre-correction processor 310 need not be substantively different, but without doing
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`much other than to state his conclusion. EX-1044, ¶¶ 21-22. His argument is not
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`persuasive. He does not adequately explain why optimizing “signals for reception
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`by multiple antenna elements instead of just one antenna” would be obvious instead
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`of maintaining Burke’s system to optimize signals for reception by one antenna.
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`Such conclusory opinions cannot comport with Arendi. EX-2010 (Vojcic Decl.)
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`¶¶ 47-48.
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`IV. Ground 2: The Petition fails to show obviousness of Claims 13 and 14 in
`view of Burke in combination with Schurr.
`Claims 13 and 14 depend from independent Claim 8. The Petition’s theory for
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`Claim 8 fails under the law of single-reference obviousness, as explained above.
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`Because the Petition fails to show that Claims 8-12 are unpatentable, it also fails as
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`to Claims 13 and 14 for the same reasons.
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`V. Conclusion
`For the foregoing reasons, Petitioners have failed to show that the challenged
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`claims are unpatentable under the asserted grounds.
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`Dated: February 16, 2023
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`Respectfully submitted,
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`/s/ Reza Mirzaie
`Reza Mirzaie, Reg. No. 69,138
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`rmirzaie@raklaw.com
`rak_vivato@raklaw.com
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`CERTIFICATION REGARDING WORD COUNT
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`Pursuant to 37 C.F.R. §42.24(d), Patent Owner certifies that there are 4,144
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`words in the paper excluding the portions exempted under 37 C.F.R. §42.24(a)(1).
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`/s/ Reza Mirzaie
`Reza Mirzaie
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`Dated: February 16, 2023
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
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`The undersigned hereby certifies that the above document was served on
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`February 16, 2023, by filing this document through the Patent Trial and Appeal
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`Board End to End system as well as delivering a copy via electronic mail upon the
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`following attorneys of record for Petitioners:
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`Dated: February 16, 2023
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`/s/ Reza Mirzaie
`Reza Mirzaie
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