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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`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
`____________
`
`IPR2022-00367
`Patent No. 10,715,235
`____________
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`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
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`____________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`
`APPLE INC. AND HP INC.,
`Petitioners
`
`v.
`
`XR COMMUNICATIONS, LLC, D/B/A VIVATO TECHNOLOGIES,
`Patent Owner
`____________
`
`IPR2022-00367
`Patent No. 10,715,235
`____________
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
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`
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`IPR2022-00367
`Patent No. 10,715,235
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`Table of Contents
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`I. The Fintiv Factors Continue to Support Discretionary Denial ............................................... 1
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`II. The Claims Are Entitled To a February 1, 2002 Priority Date ............................................... 3
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`III. Conclusion .............................................................................................................................. 5
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`i
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`Exhibits
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`IPR2022-00367
`Patent No. 10,715,235
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`Exhibit No. Description
`2009
`Judge Albright’s April 14, 2022, Standing Order Governing
`Proceedings in Patent Cases
`Joint Claim Construction Statement, XR Communications v. HP
`Inc., W.D. Tex. Case No. 21-cv-00694-ADA, Dkt. No. 48
`Joint Claim Construction Statement, XR Communications v.
`Apple Inc., W.D. Tex. Case No. 21-cv-00620-ADA, Dkt. No. 49
`
`2010
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`2011
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`ii
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`
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`IPR2022-00367
`Patent No. 10,715,235
`The Fintiv Factors Continue to Support Discretionary Denial
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`I.
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`Petitioners’ Reply fails to present new information on the Fintiv factors, much
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`less show that the factors favor institution. Reply at 1. Instead, Petitioners rely on
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`speculation while disregarding the district court’s schedule. But as explained in the
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`POPR, the Fintiv factors continue to support discretionary denial here.
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`Fintiv Factors 2 and 3: Substantial investment in the parallel proceedings
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`continues even though the Markman hearing was postponed by two weeks. POPR at
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`25-27. For example, the hearing date has no effect on the opening of fact discovery,
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`still on June 17, 2022. Ex. 2009 (ordering that “Fact Discovery will begin one day
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`after the originally scheduled Markman hearing date”). Nor does the modest
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`adjustment on the Markman hearing affect any subsequent dates in the previously
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`entered scheduling orders. See EX-1039; EX-1040. And importantly, there is no
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`evidence of any change to the district court’s June 2023 trial date.
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`Petitioners’ contrary arguments amount to speculation. Because the Board
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`consistently rejects such arguments, Factors 2 and 3 weigh against institution. See
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`Canon Inc. v. Optimum Imaging Tech. LLC, IPR2020-01322, Paper 9 at 5-6 (Mar.
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`2, 2021) (denying institution and declining to “speculate about whether there may
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`be further delays”); Cellco Partnership v. Huawei Tech. Co., IPR2020-01352 (Mar.
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`5, 2021), Paper 13 at 9-11 (denying institution because “apart from speculation, we
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`have no reason to believe that the scheduled trial date will be postponed”).
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`1
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`IPR2022-00367
`Patent No. 10,715,235
`Fintiv Factor 4: Petitioners stipulate that if the IPR is instituted, “the same
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`invalidity issues and grounds will not be litigated in the district court.” Reply at 2-
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`3; EX-1033; EX-1044. But overlapping issues remain. Petitioners assert Burke and
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`Shull on obviousness grounds in this IPR. Pet. at 1-2. But Petitioners assert Burke
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`as an anticipatory reference in district court. EX-2007 at 1. Thus, regardless of this
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`IPR, the Burke reference—and whether that reference discloses all limitations of the
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`asserted claims—will continue to be litigated in district court. Further, Petitioners’
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`stipulation fails to alleviate the overlap between the challenged limitations at issue
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`here that are also at issue in the district court litigation.
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`Petitioners also fail to address the potential for conflicts arising from their
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`district court claim construction positions. See POPR at 27-29. While apparently
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`maintaining their position that “no formal claim constructions are necessary for this
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`petition,” Petitioners have now fully briefed five separate terms in the district court
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`litigation involving the same claim terms at issue here. POPR at 30; Ex. 2010; Ex.
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`2011. Petitioners’ inconsistent approach to claim construction will allow Petitioners
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`to shift positions, obtain multiple bites at the same apple, and lead the Board and the
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`district court into potentially conflicting decisions. This implicates concerns under
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`Factors 4 and 6 and thus weighs against institution.
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`Fintiv Factors 1, 5, and 6: Petitioners fail to address Factors 1, 5, and 6, and
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`so they weigh against institution for reasons explained. See POPR at 23-24, 29-30.
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`2
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`IPR2022-00367
`Patent No. 10,715,235
`II. The Claims Are Entitled To a February 1, 2002 Priority Date
`Despite the Examiner’s well-supported finding that the challenged claims
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`were entitled to a February 1, 2002 priority date, Petitioners charge ahead,
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`continuing to ignore evidence contrary to their positions. Petitioners’ arguments fail.
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`First, Petitioner argues that “App. C has no author or publication
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`information.” Reply at 3. But Doc. C (“Beamforming for Little Joe”, Ex-1009 at
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`134) itself confirms it was authored by Ed Casas and dated February 1, 2002—just
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`as the Examiner found. POPR at 4-6 (citing Ex-1009 at 148 (C-15), indicating
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`“AUTHOR/DATE: Ed Casas 2002/2/1”). Doc. A corroborates that Doc. C is a
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`“Vivato Technical Report” entitled “Beamforming for Little Joe” by “Ed Cases”
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`dated February 1, 2002. Ex-1009 at 77 (A-71) (“[2] Ed Cases, “Beamforming for
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`LittleJoe”, ViVATO Technical Report, Feb. 1, 2002”). Petitioners fail to distinguish
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`Patent Owner’s cited cases, including REG Synthetic Fuels, 841 F.3d 954, 962 (Fed.
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`Cir. 2016), establishing that documentary evidence alone corroborates that an
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`inventor (here, Ed Cases) “disclosed to others his completed thought expressed in
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`such clear terms as to enable those skilled in the art to make the invention.”
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`Second, Petitioners argue that “claim feature [8a]” requires multiple signals
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`“from two antenna elements of the same remote station.” Reply at 4 (emphasis
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`added). This misreads the plain language of the claims, which do not recite two
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`antenna elements belonging to a remote station. Rather, the claims are directed to a
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`3
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`IPR2022-00367
`Patent No. 10,715,235
`receiver’s antenna elements which “receiv[e] a [first/second] signal transmission…
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`via a [first/second] antenna element.” EX-1001, cl. 8. This is disclosed in Doc. C,
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`which describes a “16-element linear antenna array” with sixteen antenna elements
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`that each receive signals. Ex-1009 at 134-36 (“The signal received by the array
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`elements will be the vector sum of signals arriving by many paths…performance []
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`will depend on the direction of arrival of signals from the desired and undesired users
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`. . . [and] the ability of the Little Joe beamforming receivers to distinguish the desired
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`signal from the interference and noise”).
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`Third, Petitioners dispute Doc. C discloses “simultaneous” reception. Reply
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`at 4-5. But Doc. C discloses a “16-element linear antenna array” (Ex-1009 at 134)
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`with “a Butler matrix to support the beamforming function” and “independent vector
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`modulators on each array element to generate the receive and transmit beams” (Ex-
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`1009 at 137). “Each beam points in a different direction.” Ex-1009 at 137. Sixteen
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`“searcher” receivers each simultaneously measure the “received signal strength” on
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`the different beams. Ex-1009 at 134-137. This is depicted visually in Figure 3. Ex-
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`1009 at 146. Appendix B discloses how to “compute signals received on each array
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`element (1 by N)” and describes “signals received at the array elements from a
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`number of sources.” Ex-1009 at 150, 155-156.
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`Petitioners dispute the Examiner’s understanding that sixteen antenna
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`elements coupled to sixteen “searcher” receivers (i.e., WLAN radios) will receive
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`4
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`IPR2022-00367
`Patent No. 10,715,235
`signals simultaneously. But an ordinary artisan would recognize that each WLAN
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`radio on each Butler matrix port will “listen simultaneously,” as confirmed by EX-
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`1009, 51-52 (“all of the radios listen simultaneously”). POPR at 16-17. It would be
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`clear to an ordinary artisan from Document C alone that Little Joe’s sixteen antenna
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`elements with sixteen receivers results in simultaneous reception. Doc. A simply
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`confirms that this is how an ordinary artisan would understand Doc. C.
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`Fourth, Petitioners admit that Doc. C discloses multiple “receive beams”
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`formed with “weighting values” that are configured to be used by the remote stations
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`to communicate with Little Joe. Reply at 5 (“the cited portions explain that the Little
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`Joe access point stores different weights for each individual client with which it
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`communicates”); EX-1009 at 137 (“the system uses two independent beamformers:
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`a Butler matrix to support the beamforming function and independent vector
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`modulators on each array element to generate the receive and transmit beams…The
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`beamforming algorithm computes the beamforming weights for a particular
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`client”); EX-1009 at 139 (“using the Butler matrix for both transmit and receive”).
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`Element 8[e] requires that the “set of weighting values is configured to be used by
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`the remote station,” and Petitioners’ Reply admits that this limitation is disclosed by
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`Document C. Reply at 5.
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`III. Conclusion
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`For the foregoing reasons, institution should be denied.
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`5
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`IPR2022-00367
`Patent No. 10,715,235
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`Respectfully submitted,
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`Dated: June 16, 2022
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`
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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
`Fax: (310) 826-6991
`rak_vivato@raklaw.com
`
`6
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`IPR2022-00367
`Patent No. 10,715,235
`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 June
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`16, 2022, by filing this document through the Patent Trial and Appeal Board End to
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`End system as well as delivering a copy via electronic mail upon the following
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`attorneys of record for the Petitioner:
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`W. Karl Renner
`David Holt
`Usman A. Khan
`IPR50095-0047IP1@fr.com
`PTABInbound@fr.com
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`
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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
`Fax: (310) 826-6991
`rak_vivato@raklaw.com
`
`
`
`Dated: June 16, 2022
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