Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: July 14, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC. and HP INC.,
`Petitioner,
`v.
`XR COMMUNICATIONS LLC,
`Patent Owner.
`
`IPR2022-00367
`Patent 10,715,235 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, BARBARA A. PARVIS, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`MAYBERRY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
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`
`
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`
`
`571-272-7822
`
`Paper 10
`Date: July 14, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC. and HP INC.,
`Petitioner,
`v.
`XR COMMUNICATIONS LLC,
`Patent Owner.
`
`IPR2022-00367
`Patent 10,715,235 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, BARBARA A. PARVIS, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`MAYBERRY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-00367
`Patent 10,715,235 B2
`
`INTRODUCTION
`I.
`Background and Summary
`A.
`Apple Inc. and HP Inc. (“Petitioner”), filed a Petition requesting inter
`partes review of claims 8–14 (the “Challenged Claims”) of U.S. Patent
`No. 10,715,235 B2 (Ex. 1001, the “’235 patent”). Paper 3 (“Pet.”), 1.
`XR Communications LLC (“Patent Owner”) filed a Preliminary Response to
`the Petition. Paper 7 (“Prelim. Resp.”). With our authorization, Petitioner
`filed a Preliminary Reply (“Prelim. Reply,” Paper 8) and Patent Owner filed
`a Preliminary Sur-reply (“Prelim. Sur-Reply,” Paper 9).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (permitting the
`Board to institute trial on behalf of the Director). To institute an inter partes
`review, we must determine that the information presented in the Petition
`shows “a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons set forth below, upon considering the current record, we
`institute an inter partes review.
`Real Parties-in-Interest
`B.
`Petitioner identifies Apple Inc. and HP Inc. as the real
`parties-in-interest. Pet. 67. Patent Owner identifies itself as the real
`party-in-interest. Paper 5, 2.
`Related Matters
`C.
`The parties each identify the following litigations as matters related to
`the ’235 patent: XR Communications, LLC, dba Vivato Technologies. v.
`Amazon.com, Inc., Amazon.com Services LLC, and Eero LLC, No.
`6:21-cv-0619-ADA (W.D. Tex.); XR Communications, LLC, dba Vivato
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`Patent 10,715,235 B2
`Technologies. v. Apple Inc., No. 6:21-cv-0620-ADA (W.D. Tex.);
`XR Communications, LLC, dba Vivato Technologies. v. ASUSTek Computer
`Inc., No. 6:21-cv-0622-ADA (W.D. Tex.); XR Communications, LLC, dba
`Vivato Technologies. v. Google LLC, No. 6:21-cv-0625-ADA (W.D. Tex.);
`XR Communications, LLC, dba Vivato Technologies. v. Samsung Electronics
`Co. Ltd. and Samsung Electronics America, Inc., No. 6:21-cv-0626-ADA
`(W.D. Tex.); XR Communications, LLC, dba Vivato Technologies. v. Dell
`Technologies Inc., No. 6:21-cv-0646-ADA (W.D. Tex.);
`XR Communications, LLC, dba Vivato Technologies. v. HP Inc., No.
`6:21-cv-0694-ADA (W.D. Tex.); and XR Communications, LLC, dba Vivato
`Technologies. v. Microsoft Corporation, No. 6:21-cv-0695-ADA (W.D.
`Tex.).
`The ’235 Patent
`D.
`The ’235 patent, titled “Directed Wireless Communication,” issued
`July 14, 2020, from application US 15/495,539. Ex. 1001, codes (54), (45),
`(22). The ’235 patent ultimately claims priority to a provisional application,
`US 60/423,660, filed on November 4, 2002. Id. at code (60).
`The’235 patent relates to “a multi-beam directed signal system [that]
`coordinates directed wireless communication with client devices.”
`Ex. 1001, 2:8–10. “In a described implementation, a multi-beam directed
`signal system (e.g., also referred to as an access point or Wi-Fi switch) is a
`long-range packet switch . . . in accordance with an 802.11 standard.”
`Id. at 3:43–47. “[S]imultaneous transmission and reception may occur at a
`wireless routing device by applying multi-channel techniques.”
`Id. at 3:41–43. Further, “[a]n increase in communication range is achieved
`by beamforming directed communication beams which simultaneously
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`Patent 10,715,235 B2
`transmit directed signals and receive communication signals from different
`directions.” Id. at 3:47–51.
`Figure 2, reproduced below, “illustrates an exemplary directed
`wireless communication system 200.” Ex. 1001, 4:44–45.
`
`
`As shown, “antenna assembly 208 can be implemented as two or more
`antennas . . . to emanate multiple directed communication beams 214(1),
`214(2), . . . , 214(N).” Ex. 1001, 4:54–57. “[C]lient device 202 can
`communicate via directed communication beam 214(1) with a first channel
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`of the multi-beam directed signal system 206, and client device 204 can
`communicate via directed communication beam[] 214(N) with a second
`channel of the multi-beam directed signal system 206.” Id. at 5:16–21.
`“Communication and/or data transfer signals . . . are considered
`desired signals [if] they are from nodes within the wireless routing network.”
`Ex. 1001, 24:27–31. “[S]ignals such as noise and WLAN interference
`associated with another external wireless system 1204 are not desired.”
`Id. at 24:31–33. “These signals, both desired and undesired, are received via
`antenna array 302 [of antenna assembly 208] and are provided to the signal
`control and coordination logic 304.” Id. at 24:34–36; see also id. at Fig. 3.
`Using logic 304, “multi-beam directed signal system 206 is configured to
`control the transmission amplitude frequency band and directionality of data
`packets to other nodes[,] and [thereby] assist in reducing noise and
`interference.” Id. at 25:22–29.
`“[S]canning receiver 822 [of system 206] . . . is configured to update
`routing information 1206 with regard to the received signals[ and, for
`example,] . . . may identify information about different classes of interferers
`. . . within the routing information 1206.” Ex. 1001, 24:41–44;
`see also id. at Fig. 8B. “[R]outing information 1206 includes connection
`indexed routing table(s) based on identification information, such as . . .
`identifiers of the desired sources and other identifiers for the desired sources
`and other identifiers for the interferers.” Id. at 24:44–49. “Further, the
`routing table includes stored weighting values (w) each associated with a
`particular signal source 1202 [of desired signals.]” Id. at 24:49–51. The
`stored weighting values are used in weighting matrix 1210, which applies
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`the latest weighting values to received signals and transmitted signals.
`Id. at 25:16–19.
`Challenged Claims
`E.
`The Petition challenges claims 8–14. Pet. 1. Claim 8 is the sole
`independent claim, which we reproduce below.
`8. A method in a wireless communications system, the
`method comprising:
`receiving a first signal transmission from a remote station
`via a first antenna element of an antenna and a second signal
`transmission from the remote station via a second antenna
`element of the antenna simultaneously, wherein the first signal
`transmission and the second signal transmission comprise
`electromagnetic signals comprising one or more transmission
`peaks and one or more transmission nulls;
`determining first signal information for the first signal
`transmission;
`determining second signal information for the second
`signal transmission, wherein the second signal information is
`different than the first signal information;
`determining a set of weighting values based on the first
`signal information and the second signal information, wherein
`the set of weighting values is configured to be used by the remote
`station to construct one or more beam-formed transmission
`signals; and
`transmitting to the remote station a third signal comprising
`content based on the set of weighting values.
`Ex. 1001, 33:48–34:2.
`
`6
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`
`References/Basis
`
`Burke1
`Burke, Shull2
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`35 U.S.C. §
`103(a)
`103(a)
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`Prior Art and Asserted Grounds
`F.
`Petitioner asserts that the Challenged Claims are unpatentable based
`on two grounds:
`Claims Challenged
`8–12
`13, 14
`Pet. 2.
`Petitioner relies on the declaration testimony of Dr. Robert Akl
`(Ex. 1003) in support of these grounds.
`The following subsections provide brief descriptions of the asserted
`prior art references.
`Burke (Ex. 1006)
`1.
`Burke, titled “Transmit Pre-Correction in a Wireless Communication
`System,” issued December 26, 2006 from an application, US 10/271,934,
`filed October 15, 2002. Ex. 1006, codes (54), (45), (21), (22). The
`application claims priority to a provisional application, US 60/355,296, filed
`February 8, 2002. Id. at code (60).
`Burke “relates generally to wireless communication, and more
`specifically to an improved method and apparatus for space-time
`pre-correction of transmitted wireless signals.” Ex. 1006, 1:16–19. Burke
`addresses a “[m]ultipath . . . condition that occurs when a transmitter
`transmits a single signal [to] . . . a receiver through multiple signal paths[]
`each having a different length.” Id. at 1:63–65. “The difference in the
`lengths of the paths may cause different copies of the signal to arrive
`
`
`1 Burke et al., US 7,155,231 B2; issued Dec. 26, 2006 (Ex. 1006, “Burke”).
`2 Shull, US 6,006,077; issued Dec. 21, 1999 (Ex. 1007, “Shull”).
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`at different times, causing inter-channel interference.” Id. at 1:65–2:1.
`“[T]echniques . . . for combating multipath interference [include having the]
`. . . receiver attempt[] to separate interfering multipaths and combine them to
`improve receiver performance.” Id. at 2:1–5. Burke seeks a system
`whereby “multi-path interference could be reduced or eliminated before it
`occurred, thus reducing or eliminating the need for multipath mitigati[on]
`processing at the receiver.” Id. at 2:17–20.
`Burke’s Figure 2, reproduced below, depicts wireless communication
`system 100 whereby “the effects of multipath transmission may be
`mitigated.” Ex. 1006, 4:6–7, 4:45–46.
`
`
`
`In the system, base station 104 includes transmit antennas
`110A–110M that send signals to mobile station 106 through signal paths 150
`and 160. Ex. 1006, 4:6–10. Using beamforming, “[b]ase station 104
`transmits signals through the antennas 110 such that transmit beam 130 is
`created for transmitting signals along signal path 150[ and, a]t the same
`time, . . . transmit beam 132 is created for transmitting signals along signal
`path 160.” Id. at 4:10–15. The beam pattern of each transmit beam has a
`primary lobe pointing along the intended signal path and two side lobes
`pointing away from the intended signal path; the signal being strongest in
`the direction of the primary lobe. Id. at 4:30–41. For example, “antenna
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`beam pattern 130 is characterized by a primary lobe 130A and two side
`lobes 130B and 130C[;] . . . [p]rimary lobe 130A extend[ing] further from
`center 140 than either side lobe 130B or 130C[ to] indicat[e] that a signal
`transmitted through antenna beam pattern 130 will be strongest in the
`direction of the primary lobe 130A.” Id. at 4:30–37.
`To mitigate the effects of multipath transmission, “delays are applied
`to the signals transmitted along the different signal paths such that they
`arrive at the antenna 112 of the receiving mobile station 106 at the same
`time.” Ex. 1006, 4:42–46. “[D]uring optimum performance,
`pre[-]correction processor 310 produces weights and delays that cause the
`signals received along the various M multipaths to arrive simultaneously and
`in-phase.” Id. at 7:66–8:3. “[P]re-correction processor 310 . . . may be
`deployed within the mobile station instead of or in addition to one deployed
`in the base station 104.” Id. at 27:24–26.
`In an embodiment “for use with a simultaneously transmitted pilot
`[signal] and data signal . . . [conveyed on] L paths and M antennas[,] data
`and pilot are weighted and delayed together[] such that they may be
`coherently combined when received at a mobile station 106.” Ex. 1006,
`7:50–55. “[T]o distinguish the various paths, as well as the per-antenna
`components contributing to the signal on any path, a code for each
`path/antenna pair is applied to the pilot to create M*L unique pilots.”
`Id. at 8:2–6; see also id. at Fig. 5 (depicting signal conditioner 320, which is
`configured for use with a simultaneously transmitted pilot and data signal).
`Burke’s Figure 12, reproduced below, “depicts . . . mobile
`station 106[] configurable for deployment with base station 104 and any of
`the signal conditioners 320.” Ex. 1006, 25:56–58.
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`“Signals are received at antenna 112 . . . [and] conditioned in [a]
`receiver 1210, . . . [e.g.,] amplification, filtering, . . . analog to digital
`conversion.” Ex. 1006, 25:56–60. “The conditioned signal . . . is delivered
`to searcher 1230, which identifies one or more received multipaths from one
`or more base stations 104 . . . [and] assign[s] offsets to . . .
`PN despreaders 1220A–L.” Id. at 26:1–5. “When space time pre-correction
`is deployed, . . . PN despreaders 1220A–L may . . . despread the L
`transmitted multipaths.” Id. at 26:6–9. “When pre-correction is operating
`at maximum efficiency, all the L multipaths will arrive time aligned and
`in-phase at the mobile station 106, [such that] the offset in each
`PN despreader 1220 will be identical.” Id. at 26:16–20. “The output of
`PN despreaders 1220 may be delivered to demodulator 1250”
`(id. at 26:22–24), which “demodulates those signals to produce the desired
`data” (id. at 27:37–38).
`“Walsh covers W1,1–W1,M, respectively, are used to isolate the M
`antenna specific pilots for the first path . . . [and covers] WL,1–WL,M are used
`to isolate the M antenna specific pilots for the Lth path.” Ex. 1006,
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`26:35–38. “Walsh decovers 1260 produce M*L pilot sequences,
`respectively, for delivery to channel estimators 1265 . . . [that] produce
`estimates of the phase and magnitude of the pilots corresponding to the
`component of each of the M antennas contributing to each of the L paths.”
`Id. at 26:44–48. “The channel estimates are delivered to channel
`processor 1270.” Id. at 26:49–50. “Conditioned signals from receiver 1210
`are also delivered to noise floor estimator 1240 for calculation of a noise
`floor estimate.” Id. at 26:65–67. “The channel estimates generated in
`channel processor 1270 and the noise floor estimator 1240 are delivered to
`message generator 1285[, which] . . . relay[s] the channel and noise
`estimates to one or more base stations 104 through transmitter 1290 and
`antenna 112.” Id. at 27:5–11.
`Shull (Ex. 1007)
`2.
`Shull is a U.S. patent titled “Received Signal Strength Determination
`Methods and Systems,” and issued December 21, 1999, from an application,
`US 08/942645, filed October 2, 1997. Ex. 1007, codes (54), (45), (21), (22).
`Shull relates to determining the signal strength of signals received in a
`communications network. Id. at 1:6–8. We reproduce Shull’s Figure 3,
`below, which is a flowchart illustrating Shull’s signal strength determining
`method. Id. at 4:12–13.
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`At step 100, a receiver is set to a first gain level and a first signal
`strength measurement of a received signal is obtained. Ex. 1007, 7:63–65.
`Then, at step 102, the receiver is set to a second gain level and a second
`signal strength measurement is obtained. Id. at 7:65–8:1. At step 104,
`Shull’s apparatus determines the expected difference between the first signal
`strength measurement and the second signal strength measurement based on
`the two gain levels. Id. at 8:1–4. “For example, if the gain level is dropped
`by 20 dB, the expected difference between the two readings would be
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`20 dB.” Id. at 8:4–6. At this step, the apparatus determines the actual
`difference between the two measurements, by subtracting the two values
`from steps 100 and 102. Id. at 8:6–9.
`At step 106, the apparatus retrieves a previously determined
`compensation factor associated with the second signal strength measurement
`from memory of the receiver, and the actual difference (from step 104) is
`compared to the expected difference to provide a signal strength
`compensating factor. Ex. 1007, 8:10–15. At step 108, the apparatus
`generates a compensated signal strength measurement, based on the signal
`strength compensating factor and the previously determined compensation
`factor associated with the second signal strength measurement, such as “by
`summing the signal strength compensating factor, the previously determined
`compensation factor associated with the second signal strength measurement
`and the first signal strength measurement.” Id. at 8:15–25. Finally, at
`step 110, the apparatus transmits the compensated signal strength
`measurement from step 108 to the communication network. Id. at 8:25–27.
`
`
`II. ANALYSIS
`Burke as Prior Art
`A.
`“A petitioner in an inter partes review may request to cancel as
`unpatentable 1 or more claims of a patent . . . only on the basis of prior art
`consisting of patents or printed publications.” 35 U.S.C. § 311(b) (2018)
`(emphasis added). As such, whether an asserted reference qualifies as prior
`art is a threshold issue in evaluating a petitioner’s grounds of
`unpatentability. Patent Owner contends that Burke is not prior art, as the
`’235 patent claim of priority to a provisional application and the provisional
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`application’s appended documents establish that the invention was
`conceived and reduced to practice prior to Burke’s effective date.
`Prelim. Resp. 2–21. For the purposes of this Decision, we need only address
`Patent Owner’s contentions directed to the date of conception and actual
`reduction to practice of the invention claimed in the ’235 patent. Before
`turning to this issue, we review certain portions of the prosecution history of
`the application that matured into the ’235 patent (US Pat. App. 15/495,539,
`the “’539 application”).
`Prosecution History of the ’539 Application
`1.
`The ’539 application claims priority ultimately to a provisional
`application, No. 60/423,660, filed November 4, 2002. Ex. 1001, code (60);
`Pet. 10. “The [p]rovisional application includes a compilation of several
`documents, labeled Appendices A-L on page 2. These documents describe
`aspects and embodiments of Applicant’s invention existing at the time the
`particular document was written.” Ex. 1002, 268; see Ex. 1009 (providing
`the provisional application). This compilation includes “Document A”
`(which is also referred to as “Appendix A,” as it is one of the appendixes of
`the provisional application), which is titled “Little Joe Functional
`Specification.” Ex. 1009, 6. Document A includes a list of “References,”
`including item “[2] Ed Casas, ‘Beamforming for LittleJoe,’ ViVATO
`Techical Report, Feb. 1, 2002.” Id. at 77. Document A does not include any
`date information, See id. at 6, 7, 77.
`The compilation of documents included in the provisional application
`also includes “Document C,” which is titled “Beamforming for Little Joe.”
`Ex. 1009, 134. Document C does not include any date and has some
`material from the title page of the document obscured. See id. Appendix B
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`of Document C includes “Program Listings.” Id. at 148. These program
`listings indicate that the author of the “Beamforming Simulation,” “Center
`of Mass Algorithm,” “Scatterer Generation,” and “Received Signal”
`programs was Ed Casas, and that these four programs were authored on
`February 1, 2002. Id. at 148, 153, 154–155, 155–156. A fifth program,
`“Boresight Angle,” indicates that its author was Ed Casas, and it was
`authored on February 3, 2002. Id. at 151–152.
`In a Preliminary Amendment to the ’539 application, filed June 19,
`2017, the Applicant included independent claim 9, a method claim, and
`claim 11, which depended from claim 9. Ex. 1002, 1048, 1053. In a July 5,
`2017, Office Action, the Examiner rejected claim 9 (and claim 11) as
`obvious over U.S. Patent Publication 2002/0158801 A1 (“Crilly”) and U.S.
`Patent 6,714,584 (“Ishii”). Id. at 1008, 1017–20, 1021. In this Office
`Action, the Examiner found that Crilly taught or suggested the subject
`matter of claim 9, except for the step of “receiv[ing] a first signal
`transmission from a remote station via the antenna and a second signal
`transmission from the remote station via the antenna simultaneously.” Id.
`at 1018. The Examiner relied on Ishii for the “simultaneously” subject
`matter. Id. at 1018–19.
`The Applicant attempted to traverse the rejection by arguing that Ishii
`did not teach the subject matter of the “receiving” step. Ex. 1002, 986–987.
`The Examiner was not persuaded and maintained the rejection. Id. at
`282–289.
`In response to the renewed rejection, the Applicant argued that “at
`least the disclosure in Document C [of the provisional application] was
`invented before Crilly was published, and Crilly is not prior art to such
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`disclosure.” Ex. 1002, 268. The Applicant stated that “[a]t least
`Document C describes aspects of Applicant’s invention that had been
`invented at least as early as February, 2002, which is well before Crilly was
`published.” Id. The Applicant emphasized that “[a]s demonstrated by
`Document C at least the limitations that the Office Action contends are
`taught by Crilly were invented by Applicant prior to Crilly’s publication.”
`Id. The Applicant then mapped certain disclosures in Document C to certain
`of the limitations of claim 9. Id. at 270–271. In doing this, the Applicant
`excluded the “simultaneously” language from the “receiving” step, as the
`Examiner did not rely on Crilly for that subject matter. See id. at 270.
`In the next Office Action, the Examiner stated that “Applicant’s
`arguments . . . with respect to the rejection of claims 1-20 . . . over [Crilly
`and Ishii] . . . have been fully considered and are persuasive.” Ex. 1009, 983.
`The Examiner rejected claim 9 over new prior art, but objected to dependent
`claim 11, which the Examiner stated would be patentable if rewritten in
`independent form including all of the limitations of claim 9. Id. at 104–108,
`114. Claim 11 was so amended and ultimately issued as independent
`claim 8 of the ’235 patent. Id. at 46, 91.
`Date of Conception and Actual Reduction to Practice
`2.
`The parties’ contentions with respect to conception
`a)
`and reduction to practice
`Patent Owner contends that, during prosecution of the application that
`matured into the ’235 patent, the “Applicant explained” that “the challenged
`
`
`3 The Examiner’s statement indicates that the arguments were filed
`October 5, 2017, rather than August 1, 2018. See Ex. 1009, 98. This
`statement appears to be a typographical error. See id. at 96 (indicating that
`the Office Action is responsive to a communication filed August 1, 2018).
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`claims are entitled to a priority date at least as early as February 1, 2002.”
`Prelim. Resp. 3; see also id. at 5 (“Applicant explained[ that] the invention
`was conceived and reduced to practice at least as early as February 1,
`2002.”). Patent Owner contends that “the Examiner found these arguments
`‘persuasive’ and agreed that the challenged claims are entitled to a priority
`date at least as early as February 1, 2002.” Id. at 3. Patent Owner adds that,
`“as the Examiner agreed, each element of the challenged claims is
`disclosed” in Document C. Id. at 5–6; see also id. at 6 (“The Examiner
`correctly found that the challenged claims are entitled to a priority date of
`February 1, 2002[, as t]he ’660 Provisional Application includes an article
`dated February 1, 2002 that discloses the elements of the challenged
`claims.”).
`Petitioner contends that “Document C does not have a date on its face,
`its contents do not suggest a particular date of creation, and [the] Applicant
`did not corroborate its asserted date of February 2002.” Pet. 11. Petitioner
`argues that “the only evidence upon which [the] Applicant relied to support
`its attempt to antedate Crilly was a self-serving, uncorroborated date of
`February 2002.” Id. Petitioner concludes that citing to a document (the
`provisional application) filed many months after the alleged date of
`conception is not sufficient to establish a date of conception. Pet. 12.
`Petitioner adds that, during prosecution, the Applicant did not file an
`affidavit attesting to the conception and reduction to practice of the
`invention, arguing that the Applicant’s evidence is uncorroborated. Id.
`Petitioner also argues that the Applicant did not argue to the Office
`that it had conceived the invention of issued claim 8. Pet. 12. Instead, the
`Applicant merely stated that the limitations for which the Examiner relied on
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`Crilly were disclosed in Document C, and Petitioner adds that that these
`limitations did not include the complete subject matter of claim 8. Id. at
`12–13.
`With respect to corroboration, Patent Owner responds that an affidavit
`is not necessary where contemporaneous documentary evidence corroborates
`the alleged priority date. Prelim. Resp. 6; see also id. at 8 (citing case law
`for position that “[l]ongstanding precedent confirms . . . documentary
`corroborating evidence is more than sufficient.”). Patent Owner further
`responds that “Document A and Document C in the [provisional
`application] corroborate an invention date of February 1, 2002.” Id. at 9–10.
`That is, Patent Owner relies on the listing of “[2] Ed Casas, ‘Beamforming
`for LittleJoe,’ ViVATO Techical Report, Feb. 1, 2002,” in Document A, as
`establishing the date of Document C, which has the title “Beamforming for
`Little Joe.” Prelim. Resp. 6; see Ex. 1009, 77, 134. Patent Owner contends
`that Document C includes a program listing with a February 1, 2001, date,
`corroborating the date evidence. See Prelim. Sur-reply 3.
`As to actual reduction to practice, Petitioner contends that the
`“Applicant never alleges that Document C represents a reduction of the
`claimed invention to practice.” Pet. 14. Petitioner adds that “Document C
`only purports to explain the outcome of modeling based on a computer
`simulation, which is not a physical embodiment.” Id. (referencing Ex. 1009,
`143; Ex. 1003 ¶ 55). Petitioner argues that, “[w]ithout proof of an actual
`reduction to practice . . . , [Patent Owner] would need to show diligence
`between the alleged conception set forth in Document C and constructive
`reduction to practice represented by the filing of the” provisional
`application. Id.
`
`18
`
`
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`IPR2022-00367
`Patent 10,715,235 B2
`Patent Owner responds that “Document C also proves that reduction
`to practice had occurred at least as early as February 1, 2002.” Prelim.
`Resp. 14. Patent Owner argues that even if Document C were limited to
`describing a “computer simulation,” that would still qualify as a physical
`embodiment and a reduction to practice of the claimed invention. Id. Patent
`Owner adds that the content of Document C proves that “the Little Joe
`architecture [] pre-dated the ‘simulation code,’” and “that the Little Joe
`architecture was reduced to practice before any ‘simulation code’ was
`written.” Id. at 14–15.
`Analysis and conclusions
`b)
`To antedate Burke, Patent Owner must “prove (1) a conception and
`reduction to practice before the filing date of [Burke] or (2) a conception
`before the filing date of [Burke] combined with diligence and reduction to
`practice after that date.” See REG Synthetic Fuels, LLC v. Neste Oil Oyj,
`841 F.3d 954, 962 (Fed. Cir. 2016). Under either prong, Patent Owner must
`prove that it conceived of the invention of claim 8 of the ’235 patent prior to
`October 15, 20024. See Ex. 1005, code (22).
`“Conception is ‘the formation, in the mind of the inventor of a definite
`and permanent idea of the complete and operative invention, as it is
`thereafter to be applied in practice,’ . . . [and] must include every feature or
`
`
`4 Petitioner argues that Burke is entitled to priority to its provisional
`application filing date of February 8, 2002. Pet. 2 n.1; Ex. 1006, code (60).
`Because we decide that Patent Owner has not sufficiently demonstrated, on
`the current record, a priority date prior to the filing date of the provisional
`application in the ’235 patent priority chain (November 4, 2002), we need
`not determine, at this stage of the proceeding, if Burke is entitled to an
`effective filing date of February 8, 2002.
`
`19
`
`
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`IPR2022-00367
`Patent 10,715,235 B2
`limitation of the claimed invention.” REG Synthetic Fuels, LLC, 841 F.3d
`at 962 (citations omitted). “Conception must be proved by corroborating
`evidence which shows that the inventor disclosed to others [the inventor’s]
`‘completed thought expressed in such clear terms as to enable those skilled
`in the art’ to make the invention.” Id. (citations omitted).
`We determine, on the current record, that Patent Owner fails to prove
`that the invention of claim 8 of the ’235 patent was conceived and reduced
`to practice no later than February 1, 2002, as Patent Owner contends. As an
`initial matter, we do not agree with Patent Owner that the Examiner, during
`examination of the application that matured into the ’235 patent, found that
`the Challenged Claims are entitled to a priority date at least as early as
`February 1, 2002. See Prelim. Resp. 3–6. As Petitioner correctly states, the
`Applicant’s arguments concerning the date of invention during prosecution
`were limited to the claim limitations for which the Examiner relied on Crilly.
`See Pet. 10; Ex. 1002, 268; see also Ex. 1002, 270–271 (mapping the
`elements of original claim 9 to the disclosure of Document C, but not the
`“simultaneously” subject matter of the “receiving” step). Also, independent
`claim 8, as issued, includes the limitation of original claim 11—subject
`matter that the Applicant did not map to Document C of the provisional
`application. Accordingly, we do not agree that the Examiner found that the
`subject matter of claim 8, as issued, was invented at least as early as
`February 1, 2002.
`Next, we determine that the current record does not sufficiently
`support Patent Owner’s contention that Document C of the provisional
`application is entitled to a February 1, 2002, date. We note that the
`documents that make up the provisional application, including Document C,
`
`20
`
`
`
`IPR2022-00367
`Patent 10,715,235 B2
`do not themselves contain dates on their faces. See, e.g., Ex. 1009, 6
`(providing the title page of Document A, with no date (but with what looks
`like a redacted footer)), 6 (providing the “Document History” page of
`Document A, but with no dates), 134 (providing the title page of
`Document C, with no date (but with what looks like a redacted footer and
`other redacted information)).
`Patent Owner relies on a citation in Document A to a Vivato
`Technical Report entitled “Beamforming for LittleJoe,” authored by Ed
`Casas and dated February 1, 2002, to support Patent Owner’s contention that
`the invention of claim 8 was conceived and reduced to practice no later than
`February 1, 2002. See Prelim. Resp. 5–6; Ex. 1009, 77. Patent Owner then
`contends that this citation is to Document C, which is titled “Beamforming
`for Little Joe.” See Prelim. Resp. 5–6; Ex. 1009, 134. We determine,
`however, that the single citation in the Vivato Technical Report to a
`February 1, 2002 date for a document with the same name as Document C is
`insufficient to demonstrate that the invention of claim 8 was conceived and
`reduced to practice no later than February 1, 2002. Document C does not
`identify its author. See, e.g., Ex. 1009, 134 (providing the title page of
`Document C, with no author (but with a redacted portion where author’s
`names may have been)). Also, dates contained within Document C are
`inconsistent with a finding that Document C was issued as a technical report
`on February 1, 2002. For example, Appendix B of Document C includes an
`inconsistent date in the program listings, that is, in the lines of code that
`make up certain programs used in the analysis docu
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