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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC. AND HP 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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`Case IPR2022-00367
`Patent 10,715,235
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`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
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`Proceeding No.: IPR2022-00367
`Attorney Docket: 50095-0047IP1
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`
`TABLE OF CONTENTS
`
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`I. FINTIV DOES NOT SUPPORT DISCRETIONARY DENIAL ....................... 1
`1)
`The Litigation Schedule Has Been Delayed Making the Trial Date
`Uncertain and Speculative ...................................................................................... 1
`2)
`Petitioners’ Stipulation Minimizes Overlap with Issues in the District
`Court ....................................................................................................................... 2
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`II. THE NEW CITATIONS AND EXPLANATIONS PROVIDED IN THE
`PRELIMINARY RESPONSE STILL FAIL TO ESTABLISH AN EARLIER
`PRIORITY DATE ...................................................................................................... 3
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`i
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`Proceeding No.: IPR2022-00367
`Attorney Docket: 50095-0047IP1
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`
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`UPDATED EXHIBIT LIST
`EXHIBIT-1001 U.S. Patent No. 10,715,235 to Da Silva (“the ’235 Patent”)
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`EXHIBIT-1002
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`Prosecution History of the ’235 Patent (“the Prosecution
`History”)
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`EXHIBIT-1003 Declaration and Curriculum Vitae of Dr. Robert Akl
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`EXHIBIT-1004 Complaint, XR Communications, LLC v. Apple Inc., 6:21-cv-
`00620, W.D. Tex., June 16, 2021
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`[RESERVED]
`
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`EXHIBIT-1005
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`EXHIBIT-1006 U.S. Patent No. 7,155,231 (“Burke”)
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`EXHIBIT-1007 U.S. Patent No. 6,006,077 (“Shull”)
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`EXHIBIT-1008 U.S. Patent Application Publication No. 2002/0158801
`(“Crilly”)
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`EXHIBIT-1009 U.S. Provisional Application No. 62/423,660 (“’660
`Provisional Application”)
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`PCT Application Publication No. WO 02/47286 (“Hottinen”)
`
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`EXHIBIT-1010 U.S. Patent No. 6,879,823 (“Raaf”)
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`EXHIBIT-1011
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`EXHIBIT-1012 U.S. Patent No. 6,662,024 (“Walton”)
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`EXHIBIT-1013 U.S. Patent No. 6,208,863 (“Salonaho”)
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`EXHIBIT-1014 U.S. Patent Application Publication No. 20020080862 (“Ali”)
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`EXHIBIT-1015 U.S. Patent No. 7,340,017 (“Banerjee”)
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`EXHIBIT-1016 U.S. Patent No. 6,792,031 (“Sriram”)
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`
`
`
`ii
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`
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`Proceeding No.: IPR2022-00367
`Attorney Docket: 50095-0047IP1
`EXHIBIT-1017 Andrea Goldsmith, Wireless Communications, Cambridge
`University Press, 2005
`
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`EXHIBIT-1018 Complaint, XR Communications, LLC v. HP Inc., 6:21-cv-
`00694, W.D. Tex., July 1, 2021
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`EXHIBIT-1019 U.S. Patent No. 6,661,832 (“Sindhushayana”)
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`EXHIBIT-1020
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`Plaintiff’s Infringement Contentions, XR Communications, LLC
`v. Apple Inc., 6:21-cv-00620, W.D. Tex., Dec. 20, 2021
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`EXHIBIT-1021
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`EXHIBIT-1022
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`EXHIBIT-1023
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`EXHIBIT-1025
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`“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
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`“Roku’s Trial Delay Request OK’d by ‘Surprised’ Texas
`Judge,” Law360, Aug. 10, 2020, available at
`https://www.law360.com/articles/1299933
`
`
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`EXHIBIT-1024 Restoring the America Invents Act, S. 2891, 117th
`Cong. (2021)
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`EXHIBIT-1026-1032 [RESERVED]
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`EXHIBIT-1033 Apple’s first stipulation, XR Communications, LLC v. Apple
`Inc., 6:21-cv-00620, W.D. Tex., May 19, 2022
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`EXHIBIT-1034 HP’s first stipulation, XR Communications, LLC v. HP Inc.,
`6:21-cv-00694, W.D. Tex., May 19, 2022
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`iii
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`Proceeding No.: IPR2022-00367
`Attorney Docket: 50095-0047IP1
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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
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`EXHIBIT-1038 HP’s motion to transfer, XR Communications, LLC v. HP Inc.,
`6:21-cv-00694, W.D. Tex., Apr. 8, 2022
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`EXHIBIT-1039 Order resetting Markman Hearing, XR Communications, LLC v.
`Apple Inc., 6:21-cv-00620, W.D. Tex., May 23, 2022
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`EXHIBIT-1040 Order resetting Markman Hearing, XR Communications, LLC v.
`HP Inc., 6:21-cv-00694, W.D. Tex., May 24, 2022
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`EXHIBIT-1041 [RESERVED]
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`EXHIBIT-1042
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`Second Amended Standing Order Regarding Motions for Inter-
`District Transfer, W.D. Tex., Aug. 21, 2021
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`
`iv
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`
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`Proceeding No.: IPR2022-00367
`Attorney Docket: 50095-0047IP1
`Petitioners submit this pre-institution reply to Patent Owner’s Preliminary
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`Response (POPR), as authorized by the Board via e-mail on June 2, 2022.
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`I.
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`FINTIV DOES NOT SUPPORT DISCRETIONARY DENIAL
`The “Board takes a holistic view” of the factors outlined in Fintiv and
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`considers them with respect to the relevant facts in each case. Apple Inc. v. Fintiv,
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`Inc., IPR2020-00019, Paper 11, 6 (March 20, 2020) (precedential). As noted in the
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`Petition, Factors 1, 5, and 6 either weigh in favor of institution or are, at worst,
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`neutral. Pet., 59-66. Taken together with the below-described new developments
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`since the petition was filed, the Fintiv factors weigh strongly against exercising
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`discretion to deny the petition. Indeed, in several recent cases with substantially
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`similar facts related to the proximity of trial, expenditure of resources in the parallel
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`proceeding, and the scope of stipulation addressing overlap between the
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`proceedings, the Board has instituted. See, e.g., Samsung Electronics America, Inc.
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`v. Proxense, LLC, IPR2021-01439, Paper 11 (Feb. 28, 2022); Juniper Networks, Inc.
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`v. WSOU Investments, LLC, IPR2021-00538, Paper 9 (Aug. 18, 2021).
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`1) The Litigation Schedule Has Been Delayed Making the Trial Date
`Uncertain and Speculative
`In the district court proceedings, the Markman hearing has already been
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`delayed by two weeks from June 16, 2022 to July 1, 2022. EX-1039; EX-1040.
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`Moreover, Apple and HP have each submitted a motion to transfer the case to the
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`United States District Court for the Northern District of California. EX-1037; EX-
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`1
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`Proceeding No.: IPR2022-00367
`Attorney Docket: 50095-0047IP1
`1038. Petitioners’ reply briefing regarding HP’s motion to transfer is due on July
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`15, 2022. Because the district court judge, Judge Albright, is likely to issue a ruling
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`on the motion to transfer before conducting the Markman hearing, the Markman
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`hearing will likely be postponed again until after Judge Albright issues his order on
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`the motion to transfer, which will be after July 15. EX-1042 (“The Court will not
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`conduct a Markman hearing until it has resolved the pending motion to transfer.”)
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`Accordingly, the Markman hearing is likely to be rescheduled no earlier than the end
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`of July, 2022, which is more than a month’s delay in the original schedule. As a
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`result, fewer resources will have been expended by the time the institution decision
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`is issued. Thus, Fintiv Factor 3 weighs against discretionary denial.
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`Other delays are not improbable during the course of the trial, rendering the
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`June 23, 2023 trial date speculative, at best. And if a delay similar to the delay in
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`the Markman hearing were to be applied to the trial date, the trial date would then
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`occur around the same time or after the statutorily-mandated Final Written
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`Decision date of July 19, 2023. For this reason, Fintiv factor 2 does not favor
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`discretionary denial, and should, at worst, be neutral due to the relatively close
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`proximity of this uncertain trial date to the final written decision.
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`2) Petitioners’ Stipulation Minimizes Overlap with Issues in the District
`Court
`On May 17, 2022, Petitioners served XR’s counsel with letters stipulating that
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`if the PTAB institutes review in IPR2022-00367, Petitioners will not pursue the
`2
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`Proceeding No.: IPR2022-00367
`Attorney Docket: 50095-0047IP1
`grounds instituted in IPR2022-00367 at the District Court. Thus, if an IPR is
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`instituted, the same invalidity issues and grounds will not be litigated in the district
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`court. In Sand Revolution—a case in which the co-pending litigation was before the
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`same district court as here and where the trial was scheduled “at least five months”
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`before the final written decision—the Board held that a stipulation of substantially
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`the same scope “mitigates to some degree the concerns of duplicative efforts
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`between the district court and the Board, as well as concerns of potentially
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`conflicting decisions.” Sand Revolution II, LLC v. Cont’l Intermodal Group-
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`Trucking LLC, IPR2019-01393, Paper 24, 11-12 (Jun. 16, 2020). Concern of
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`duplicative efforts is further mitigated here, where the close proximity of an
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`uncertain trial date further reduces the likelihood of overlap.
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`II. THE NEW CITATIONS AND EXPLANATIONS PROVIDED IN
`THE PRELIMINARY RESPONSE STILL FAIL TO
`ESTABLISH AN EARLIER PRIORITY DATE
`To briefly recap, the ’235 Patent claims priority from Provisional Application
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`No. 60/423,660, which was filed November 4, 2002, and includes Appendices A-L.
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`EX-1009, 2. In support of its priority claim, XR argued in its POPR that Appendix
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`(App.) C provides support of the claim features, and that citation [2] on page A-71
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`of App. A establishes the invention date of App. C as Feb. 1, 2002. EX-1002, 268;
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`POPR, 4-5. However, App. C has no author or publication information and includes
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`no indication (other than its title) that App. C is indeed the same article listed on A-
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`3
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`
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`Proceeding No.: IPR2022-00367
`Attorney Docket: 50095-0047IP1
`71. Further, as noted in the Petition, citation to the provisional alone is, at best,
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`sufficient to prove priority as of the date of its filing (i.e., Nov. 4, 2002). See Pet.,
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`11-15. Any self-serving dates contained therein are legally insufficient to establish
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`prior conception, much less reduction to practice. Id. Having failed to put forward
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`any further evidence with its POPR, XR’s arguments regarding priority are
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`necessarily deficient.
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`However, even assuming, arguendo, that all of the dates in the provisional are
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`accurate (which Petitioners do not concede), the disclosures to which XR cites still
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`do not disclose the features of the claims. In the POPR, XR includes a table that
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`purportedly identifies where support for features recited in claim 8 can be found, and
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`then provides specific explanations addressing the limitations highlighted in the
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`Petition. See POPR, 14-21. Many of these citations and explanations are new and
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`were not presented to the Examiner for evaluation, raising clear factual disputes that
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`have not been previously evaluated by the Office rendering them ripe for
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`consideration in an instituted IPR. More importantly, though, the explanations
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`provided by XR are demonstrable incorrect.
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`For instance, for claim feature [8a] (“receiving …”), the cited portions
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`describe receiving multiple signals at the same time from different user devices, not
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`from two antenna elements of the same remote station, which is required by the
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`claims. XR also argues that disclosure in App. A (A46 – A47) teaches simultaneous
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`4
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`Proceeding No.: IPR2022-00367
`Attorney Docket: 50095-0047IP1
`reception. POPR, 16, 17. But disclosure in A46-A47 relates to independent MAC
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`controllers in the LittleJoe MAC subsystem, and it is unclear how such disclosure
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`directed to different aspects of LittleJoe relates to or can be combined with the
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`disclosure in App. C, which is directed to beamforming. XR provides no such
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`explanation of how the vastly different disclosures should be considered together.
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`For claim feature [8e] (“wherein the set of weighting values …”), XR
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`mischaracterizes App. C by asserting that the weights are client-specific and stored
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`in a table. POPR, 13. At best, the cited portions explain that the Little Joe access
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`point stores different weights for each individual client with which it communicates
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`for use by the Little Joe access point to beamform its transmissions to each client.
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`EX-1009, 137. App. C fails to disclose that the weights are used by the client (“by
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`the remote station”), as recited in independent claim 8.
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`As can be appreciated from the foregoing and the reasons noted in the
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`IPR2022-00367 Petition, XR’s arguments in support of its priority claim are
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`deficient and mischaracterize the disclosure in its provisional application. Thus, the
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`’235 Patent should not be entitled to the Feb. 1, 2002 or the Nov. 4, 2002 priority
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`date. At worst, the evidence in these proceedings gives rise to a factual dispute
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`regarding priority and that dispute should be settled via institution of the IPR. Thus,
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`Petitioners respectfully request institution to resolve the issue of the ’235 Patent
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`priority date and its patentability in light of the otherwise unassailed Grounds.
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`
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`5
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`
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`Date: June 9, 2022
`
`Proceeding No.: IPR2022-00367
`Attorney Docket: 50095-0047IP1
`
` Respectfully submitted,
`
`/David L. Holt/
`W. Karl Renner, Reg. No. 41,265
`David Holt, Reg. No. 65,161
`Usman Khan, Reg. No. 70,439
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`Attorneys for Petitioner
`
`
`
`Proceeding No.: IPR2022-00367
`Attorney Docket: 50095-0047IP1
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on June 9,
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`2022, a complete and entire copy of this Petitioner’s Reply to Patent Owner’s
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`Preliminary Response was provided by email to Patent Owner by serving the email
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`correspondence addresses of record as follows:
`
`Reza Mirzaie, Reg. No. 69,138
`Philip Wang, Reg. No. 74,621
`RUSS, AUGUST & KABAT
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA 90025
`Tel.: 310-826-7474
`Fax: 310-826-6991
`rmirzaie@raklaw.com
`pwang@raklaw.com
`rak_vivato@raklaw.com
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`(617) 956-5938
`
`
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