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
`
`v.
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`XR COMMUNICATIONS, LLC, D/B/A VIVATO TECHNOLOGIES,
`Patent Owner
`____________
`
`IPR2022-00367
`Patent No. 10,715,235
`____________
`
`
`PATENT OWNER RESPONSE
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`

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`Table of Contents
`Introduction ......................................................................................................................... 2
`’235 Patent and Challenged Claims .................................................................................... 3
`Summary of ’235 patent (Ex. 1001) ............................................................................. 3
`Prosecution History ....................................................................................................... 8
`Challenged Claims ........................................................................................................ 8
`Level of Skill in the Art .............................................................................................. 10
`Claim Construction ..................................................................................................... 10
`Petitioner’s Asserted Grounds and References ................................................................. 12
`Burke Primary Reference ............................................................................................ 12
`Shull Secondary Reference ......................................................................................... 14
`Ground 1: The Petition fails to show single-reference obviousness in view of Burke alone
`........................................................................................................................................... 14
`Under Federal Circuit law, single-reference obviousness requires substantial evidence
`that supplying the missing limitations would have been obvious to a POSITA. ........ 15
`The Petition fails to present substantial evidence that the proposed modification to
`Burke’s mobile station would supply the missing limitations (Limitations [8a], [8d],
`and [8e]) ...................................................................................................................... 16
`Figures 2 and 12 of Burke disclose a mobile station with only a single antenna
`element. ................................................................................................................. 19
`It would not be obvious how to modify Burke’s mobile station to practice
`Limitations [8a], [8d], and [8e]. ............................................................................ 22
`Ground 2: The Petition fails to show obviousness of Claims 13 and 14 in view of Burke
`in combination with Schurr ............................................................................................... 33
`Conclusion ........................................................................................................................ 33
`
`1.
`
`2.
`
`I.
`II.
`
`A.
`B.
`C.
`D.
`E.
`
`III.
`
`A.
`B.
`IV.
`
`A.
`
`B.
`
`V.
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`VI.
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`
`
`i
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`

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`Exhibit No. Description
`2001
`Complaint, XR Communications v. Apple Inc., W.D. Tex. Case
`No. 21-cv-00620-ADA
`Complaint, XR Communications v. HP Inc., W.D. Tex. Case No.
`21-cv-00694-ADA
`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)
`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)
`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)
`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)
`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
`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
`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)
`Declaration of Branimir Vojcic, D.Sc.
`
`
`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`IPR2022-00367
`USP 10,715,235
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`Patent Owner’s Exhibit List
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`1
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`IPR2022-00367
`USP 10,715,235
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`I.
`
`Introduction
`The Petition challenges claims 8-14 of U.S. Patent No. 10,715,235 (Ex. 1001).
`
`The Petition argues that claims 8-12 are obvious in view of Burke, and that
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`dependent claims 13 and 14 are obvious in view of Burke combined with Schull.
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`But the Petition’s theory for claims 8-12 fails under the law of single-reference
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`obviousness, and this failure as to independent claim 8 also applies to dependent
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`claims 13 and 14. Each ground therefore fails to establish invalidity.
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`Each challenged claim of the ’235 patent requires at least: (1) receiving a first
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`signal transmission from a remote station via a first antenna element of an antenna;
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`(2) receiving a second signal transmission from the remote station via a second
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`antenna element of the antenna; and (3) receiving the first / second transmissions
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`via the first / second antenna elements occur simultaneously. Petition argues this
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`would be obvious in view of Burke’s mobile station. But Burke’s mobile station uses
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`an antenna with only a single antenna element—not two antenna elements, as
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`required by the challenged claims. Likewise, Burke does not teach or suggest
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`receiving a first / second signal transmission at the first / second antenna elements,
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`respectively. Nor does Burke teach or suggest that the reception occurs
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`simultaneously. Lacking these disclosures, Petitioners argue that modifying Burke’s
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`mobile station to use an antenna array to meet every requirement of the challenged
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`claims would be obvious. But Petitioners’ arguments are driven by hindsight and an
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`2
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`USP 10,715,235
`improper attempt to fit Burke’s different system into the challenged claims by using
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`the ’235 specification and claims as a roadmap. Petitioners also fail to show that, of
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`all the possible techniques available, a POSITA would be motivated or understand
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`how to modify Burke’s system to perform as required in the challenged claims with
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`a reasonable expectation of success. Petitioners’ motivation to combine arguments
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`are conclusory and rely on impermissible hindsight.
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`II.
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`’235 Patent and Challenged Claims
`A.
`Summary of ’235 patent (Ex. 1001)
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`The ’235 Patent (Ex. 1001) is entitled “Directed wireless communication” and
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`relates to “a multi-beam directed signal system [] implemented to communicate over
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`a wireless communication link via an antenna assembly with client devices.” ’235
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`patent at 3:11-15. The ’235 patent focuses on updating the spatial distribution of the
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`beams based on feedback information. EX-2010, Declaration of Branimir Vojcic,
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`D.Sc. (“Vojcic Decl.”), ¶¶26-31. The ’235 Patent describes systems that operate in
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`the field of wireless communications, including “WiFi” networks that operate in
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`accordance with “IEEE 802.11” standards. Id. ¶ 26. The ’235 Patent generally relates
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`to “beamforming,” which is depicted in several figures, including Figures 2, 3, 5, 6,
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`12, 14, and 15. Id.
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`3
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`As the patent explains, “beamforming” refers to when the “electromagnetic
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`waves are focused in a desired direction,” unlike a conventional omni-directional
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`transmission that transmits in all directions. ’235 Patent, 5:22-55. For example, the
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`system enables patterns of electromagnetic signals that provide “a first transmission
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`peak” at a first device, “a second transmission peak” at a second device, and “a first
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`transmission null” at a third device. EX-2010 (Vojcic Decl.) ¶ 27. In this example,
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`the system advantageously improves communications with the first and second
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`devices, while blocking interference from the third device. Id.
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`In one embodiment, the ’235 Patent discloses a wireless communications
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`apparatus that comprises an “antenna array 302” with a plurality of “antenna
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`4
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`elements” to emanate an array of multiple directed communication beams 214(1),
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`214(2),…214(N). EX-1001, FIGS. 2, 3; see EX-2010 (Vojcic Decl.) ¶ 28. The ’235
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`Patent
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`teaches receiving signal
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`transmissions simultaneously via directed
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`communication beams. EX-1001, 3:38-52 (“An increase in communication range is
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`achieved by beamforming directed communication beams which simultaneously
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`transmit directed signals and receive communication signals from different
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`directions via receive and transmit beam-forming networks.”). In one embodiment,
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`“antenna array 302 can include sixteen antenna elements…” from which “sixteen
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`different communication beams 602(0), 602(1),…,602(15) are formed,” each of
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`which may have beam patterns that “differ in width, shape, number, angular
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`coverage, azimuth, and so forth.” EX-1001, 9:12-34; see EX-1001, 6:61-7:5
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`(“directed communication beams 214 of antenna array 302 can be directionally
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`controllable”). In one embodiment, only thirteen of the antenna elements and beams
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`are used for transmission and reception. EX-1001, 9:34-60; EX-2010 (Vojcic Decl.)
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`¶ 28.
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`The ’235 Patent apparatus receives signal transmissions via the directed
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`communication beams from other devices or “nodes within the wireless routing
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`network.” EX-1001, 24:25-34; see EX-2010 (Vojcic Decl.) ¶ 29. Further, the ’235
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`Patent apparatus determines a set of weighting values based on multiple received
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`signals from each node. For example, as shown in Figure 12 below, “communication
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`and/or data transfer signals are received from sources 1202 (e.g., sources A and B).”
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`EX-1001, 24:25-34. These signals are provided to a “signal control and coordination
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`logic 304” which includes a “scanning receiver 822 that is configured to update
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`routing information 1206 with regard to the received signals.” EX-1001, 24:35-
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`25:30. More specifically, the routing information 1206 includes a routing table, and
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`the “routing table includes stored weighting values (w) each associated with a
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`particular signal source 1202 (e.g., sources A and B)…[a] description of the received
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`signal(s) can be stored in the routing table in the form of the pattern of weighting of
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`the
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`signal(s).
`
`In
`
`this
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`example,
`
`a
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`polynomial
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`expansion
`
`in
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`z,
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`w(z)=w0+w1z+w2z2+w3z3+w4z4+ … +wizi can be utilized to establish the values of
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`the weights (wi) to be applied to a weight vector.” Id. This is depicted in Figure 12
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`below:
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`6
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`
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`After determining a set of weighting values based on the received signals, the
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`“stored weighting values associated with each connection, data signal, and/or source
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`are utilized in a weighting matrix 1210 which operates to apply the latest weighting
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`values to the received signals and also to transmitted signals.” EX-1001, 25:1-29;
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`EX-2010 (Vojcic Decl.) ¶ 30.
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`Figure 12 depicts determining weighting values from received signals from a
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`particular node in the network and “apply[ing] the latest weighting values…to
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`transmitted signals” to that same node. EX-1001, FIG. 12; EX-2010 (Vojcic Decl.)
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`¶ 31. In Figure 12, the apparatus receives signals via antenna array 302 from a
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`particular node (e.g., 1202 A), determines and stores weighting values for that node
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`(e.g., w(A) in routing table 1206), and then applies the weighting values that are
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`particular to that node when transmitting signals to that node (e.g., transmissions to
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`1202 A via transceiver 824(0)). Id.
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`B.
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`Prosecution History
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`The ’235 Patent recites a Provisional Patent Application No. 60/423,660, filed
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`on Nov. 4, 2002, but it claims priority to at least February 1, 2002. As described in
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`Patent Owner’s Preliminary Response, the ’235 Patent claims are entitled to a
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`priority date at least as early as February 1, 2002, as corroborated by evidence
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`contained within U.S. Provisional Application No. 60/423,660, filed November 4,
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`2002. See EX-1002, 265-272.
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`C. Challenged Claims
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`The Petition challenges claims 8-14 of the ’235 patent. Pet. at 2. Independent
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`claim 8 recites:
`
`[8pre]
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`A method for use in a wireless communications
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`8
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`IPR2022-00367
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`[8a]
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`[8b]
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`[8c]
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`[8d]
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`[8e]
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`[8f]
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`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.
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`
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`
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`9
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`IPR2022-00367
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`The remaining claims (claims 9-14) are dependent claims that further limit the
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`prior independent claims.
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`D. Level of Skill in the Art
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`For purposes of this Patent Owner’s Response and IPR, Patent Owner adopts
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`Petitioner’s definition of a person of ordinary skill in the art (POSITA)—i.e., “a
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`Bachelor’s degree in electrical engineering or a related field, in combination with
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`training or at least two years of related work experience in wireless communication
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`systems, or the equivalent. Alternatively, the person could have also had a Master’s
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`or Doctorate degree in electrical engineering with a year of related work experience
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`in wireless communication systems.” EX-1003 at 15. Attached hereto as EX-2010
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`is the Declaration of Branimir Vojcic in support of this Patent Owner Response. Dr.
`
`Vojcic is a POSITA under this definition and was a POSITA at least as of November
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`3, 2003. EX-2010, ¶ 16.
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`E. Claim Construction
`
`Petitioners have asserted that claim construction is not necessary in this
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`proceeding. Petition (“Pet.”) at 3. In district court litigation, Petitioners argued for
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`express constructions of various terms of the challenged claims, including
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`“transmission peaks,” “transmission nulls,” “remote station,” “transmitting to the
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`remote station a third signal comprising content based on the set of weighting
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`values.” The district court construed all contested terms to have their plain and
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`10
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`ordinary meaning, as follows. See Ex-2009, XR Comm'ns LLC v. Cisco Sys., No.
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`6:21-cv-00623-ADA, Dkt. No. 56 (W.D. Tex. Sept. 30, 2022).
`
`Court’s Final Construction
`Plain-and-ordinary meaning1
`
` 1
`
` – Note not for the jury: The plain-
`and-ordinary meaning of “transmission
`peaks” includes relative maxima.
`Plain and ordinary meaning wherein
`the plain-and-ordinary meaning is
`“portions of one or more spatially
`distributed patterns of electromagnetic
`signals where transmissions of no or
`insignificant energy are selectively
`directed.”
`Plain-and-ordinary meaning wherein
`the plain-and-ordinary means that the
`“third signal’ is ‘based on the set of
`weighting values.”
`
`Not indefinite. Plain-and- ordinary
`meaning.
`
`Plain and ordinary meaning.
`
`Term
`“transmission peaks”
`
`U.S. Patent No. 10,715,235, Cls. 2, 4,
`8, 12, 16
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`“transmission nulls”
`
`U.S. Patent No. 10,715,235, Cls. 2, 4,
`8, 12, 16
`
`“third signal comprising content based
`on the set of weighting values”
`
`U.S. Patent No. 10,715,235, Cls. 1, 8
`and 15
`“the set of weighting values is
`configured to be used by the remote
`station to construct one or more beam-
`formed transmission signals”
`U.S. Patent No. 10,715,235, Cl. 8
`“remote station”
`U.S. Patent No. 10,715,235, Cls.
`1,4,8,9,12,15
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`Patent Owner does not believe that any express constructions are necessary to
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`resolve the disputes in this IPR. Patent Owner believes that Petitioner fails to show
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`invalidity of the challenged claims either without without claim construction or
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`under the district court’s constructions above.
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`III. Petitioner’s Asserted Grounds and References
`The Petition asserts two grounds unpatentability (Pet. at 2):
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`• Ground 1: Claims 8-12 are obvious over Burke
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`• Ground 2: Claims 13-14 are obvious over Burke in view of Shull
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`A. Burke Primary Reference
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`
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`U.S. Patent No. 7,155,231 to Burke et al. (“Burke,” Ex. 1006) relates generally
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`to wireless communication, and more specifically to an improved method and
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`apparatus for space-time pre-correction of transmitted wireless signals. EX-1006,
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`1:15-19. Burke is directed to CDMA systems in which mobile stations communicate
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`with a base station. EX-1006, 3:25-54. Burke’s Figure 2 depicts a base station 104
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`communicating with a mobile station 106. EX-1006, 4:6-62. The mobile station 106
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`is shown with “antenna 112,” which is an antenna comprising a single antenna
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`element. Id. Figure 12 depicts Burke’s preferred embodiment of mobile station 106,
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`in which antenna 112 is a “single antenna.” EX-1006, 25:56-67.
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`12
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`Burke does state, in a single sentence, that antenna 112 “may be a single
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`antenna, or an array of diversity antennas for deploying diversity techniques known
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`in the art.” EX-1006, 25:59-61. However, Burke does not disclose how to implement
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`its teachings in the event that the mobile station were modified to include an antenna
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`array comprising multiple antenna elements. For example, Burke does not indicate
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`what aspects of Figure 12 (if any) would be compatible with a mobile station 106
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`modified to possess an array of multiple antenna elements.
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`B.
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`Shull Secondary Reference
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`U.S. Patent No. 6,006,077 to Shull (Ex. 1007 or “Shull”) is directed to an
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`improved method for calculating the Radio Signal Strength Indication (RSSI)
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`between a mobile station and various base stations. EX-1007, 1:21-32, 2:30-33. In
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`Shull’s method, a mobile phone can obtain signal strength readings with the receiver
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`set at two different, known gain levels. Shull, Abstract. Shull’s mobile phone
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`possesses only a single antenna element (“antenna 12” in Figure 1). EX-1007, 4:29-
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`59.
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`IV. Ground 1: The Petition fails to show single-reference obviousness in view
`of Burke alone
`The Petition’s theory fails under the law of single-reference obviousness.
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`Each challenged claim of the ’235 patent requires “receiving a first signal
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`transmission from a remote station via the first antenna element and a second signal
`
`transmission
`
`from
`
`the
`
`remote station via
`
`the second antenna element
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`simultaneously” (Limitation [8a]), “determining second signal information for the
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`second signal transmission, wherein the second signal information is different than
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`the first signal information” (Limitation [8d]), and “determining a set of weighting
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`values based on the first signal information and the second signal information,
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`wherein the set of weighting values is configured to be used by the remote station to
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`construct one or more beam-formed transmission signals” (Limitation [8e]). The
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`Petition admits that Burke’s mobile station does not perform Limitations [8a], [8d],
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`and [8e]. The Petition provides insufficient evidence that that Burke renders these
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`limitations obvious to a POSITA.
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`A. Under Federal Circuit law, single-reference obviousness requires
`substantial evidence that supplying the missing limitations would
`have been obvious to a POSITA.
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`“Though less common . . . a patent can be obvious in light of a single prior art
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`reference if it would have been obvious to modify that reference to arrive at the
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`patented invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir.
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`2016). Importantly, this requires substantial evidence and non-conclusory reasoning
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`that the missing limitation would be obvious. Id. at 1362–63.
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`The Arendi case is instructive. There, the Federal Circuit reversed the Board’s
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`finding of obviousness because the Board erred in relying on “common sense” to
`
`supply a claim limitation that was missing from the one prior art reference relied on
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`to show obviousness. The Federal Circuit noted that only conclusory statements and
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`evidence supported the Board’s rationale, and that this was insufficient and did not
`
`constitute substantial evidence.
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`In Arendi, the Federal Circuit held that statements about what a POSITA
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`would have known or done “cannot be used as a wholesale substitute for reasoned
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`analysis and evidentiary support, especially when dealing with a limitation missing
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`from the prior art references specified.” Id. at 1362. Further, where there is a
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`limitation missing from the prior art, the Federal Circuit’s “search for a reasoned
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`basis for resort to common sense must be searching. And, this is particularly true
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`where the missing limitation goes to the heart of an invention.” Id. (emphasis added).
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`Likewise, the Federal Circuit has limited the application of single-reference
`
`obviousness in other cases, such as Kotzab. See, e.g., In re Kotzab, 217 F.3d 1365,
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`1371–72 (Fed. Cir. 2000) (reference teaching one sensor per valve did not render
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`obvious claims for one sensor for multiple valves, despite alleged “simplicity” of
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`proposed modification extending a sensor to multiple valves).
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`B.
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`The Petition fails to present substantial evidence that the
`proposed modification to Burke’s mobile station would supply the
`missing limitations (Limitations [8a], [8d], and [8e])
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`Petitioners rely exclusively on single-reference obviousness in view of Burke
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`to satisfy Limitations [8a], [8d], and [8e] for all asserted grounds. The Petition relies
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`on Burke’s mobile station to show that these limitations would be obvious. However,
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`Petitioners concede that Burke’s mobile station does not actually disclose these
`
`limitations. Most importantly, Burke’s mobile station only possesses a single
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`antenna element, in contrast to the ’235 Patent’s requirement of an antenna with
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`distinct first and second antenna elements. EX-2010 (Declaration of Branimir
`
`Vojcic) (“Vojcic Decl.”) ¶ 37.
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`Yet, the ’235 Patent’s requirement of distinct first and second antenna
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`elements goes to the heart of the invention of Claim 8. For example, Limitation [8a]
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`requires that each distinct antenna element receive distinct signal transmissions
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`simultaneously. Limitation [8d] requires determining second signal information
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`corresponding to the second signal received with the second antenna element, and
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`the second signal information must be different than the first signal information
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`determined in Limitation [8c]. And Limitation [8e] requires determining a set of
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`weighting values based on both the first signal information and the second signal
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`information, which necessarily depends on the distinct antenna elements recited in
`
`Limitation [8a].
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`However, beyond a conclusory assertion by their expert, Dr. Akl, that Burke’s
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`mobile station could be modified to use an array of multiple antenna elements,
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`Petitioners have failed to introduce supporting evidence that a POSITA would
`
`understand the purportedly modified Burke mobile station to perform each specific
`
`aspect of Limitations [8a], [8d], and [8e]. Petitioners’ reliance on the testimony of
`
`Dr. Akl to support its arguments fails, because Dr. Akl does not provide evidence or
`
`analysis showing that Limitations [8a], [8d], and [8e] result from nothing more than
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`replacing Burke’s single antenna with an array of antennas.
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`Because Dr. Akl fails to address how a modified Burke mobile station would
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`practice the specifics of Limitations [8a], [8d], and [8e]—and Burke itself also fails
`
`to describe this—his opinion is an unsupported assertion that cannot carry
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`Petitioners’ burden to prove invalidity. Such ipse dixit is an insufficient evidentiary
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`basis and cannot substitute for disclosure in a prior art reference itself. And none of
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`the prior art beyond Burke that is cited in the Petition fills this evidentiary gap. See
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`Patent Trial and Appeal Board Consolidated Trial Practice Guide 36 (Nov. 2019) at
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`36 (“in an obviousness analysis, conclusory assertions from a third party about
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`general knowledge in the art cannot, without supporting evidence of record, supply
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`a limitation that is not evidently and indisputably within the common knowledge of
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`those skilled in the art.” (citing K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d
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`1362, 1365 (Fed. Cir. 2014)).
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`Here, because Burke does not disclose how its mobile station would operate
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`if its single antenna were replaced with an array of antenna elements, the Petition
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`was required to introduce evidence and explanation for how a modified Burke
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`mobile station would operate and why it would perform Limitations [8a], [8d], and
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`[8e]. No such explanation is present in the Petition. Instead, Petitioner’s argument
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`and Dr. Akl’s testimony are an invocation of “common sense” within the knowledge
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`of an ordinarily skilled artisan. See, e.g., Pet. at 27-29, citing EX-1003, ¶¶ 84-85.
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`But even such “common sense” arguments must be supported by evidence and a
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`reasoned explanation that is particular to each challenged claim element. Arendi, 832
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`F.3d at 1363. And here, where the “missing limitation goes to the heart of an
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`invention,” that requirement is particularly strong. In the absence of such support,
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`Petitioner’s and Dr. Akl’s assertions are insufficient to demonstrate obviousness as
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`required under Petitioner’s burden. Further, as explained below and in the
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`accompanying declaration of Dr. Branimir Vojcic (EX-2010), a POSITA would not
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`understand Burke to teach or suggest the challenged claims; nor be motivated to (or
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`know how to) modify Burke’s system to arrive at the claimed invention.
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`1.
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`Figures 2 and 12 of Burke disclose a mobile station
`with only a single antenna element.
`The Petition relies on Burke’s Figure 2 and Figure 12 to show obviousness of
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`Limitation [8a]. Pet. at 26-30. However, Figures 2 and 12 in Burke clearly show that
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`the mobile station only possesses a single antenna element, and this is corroborated
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`by specific technical aspects of Burke’s disclosure. EX-2010 (Vojcic Decl.) ¶¶ 37-
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`38; EX-1006, FIGs. 2, 12.
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`IPR2022-00367
`USP 10,715,235
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`The Petition’s reliance on Figure 2 and 12 of Burke clearly contrasts with the
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`disclosure of the ’235 patent. The challenged claims require an antenna comprising
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`IPR2022-00367
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`at least a first antenna element and a second antenna element—not a single antenna
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`element, as disclosed in Burke’s mobile station. EX-1001, Claim 8.
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`An antenna array comprising multiple antenna elements is also disclosed in
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`the ’235 specification. For example, Figure 3 of the ’235 Patent depicts “an
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`exemplary communication beam array 300.” ’376 Patent at 5:55-67. As shown in
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`Figure 3, such an array has multiple antenna elements which form multiple different
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`beams for receiving different signals.
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`
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`’235 Patent, Figure 3. In one embodiment, “antenna array 302 can include sixteen
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`antenna elements…” from which “sixteen different communication beams 602(0),
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`602(1),…,602(15) are formed.” EX-1001, 9:12-34; see EX-1001, 6:61-7:5
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`(“directed communication beams 214 of antenna array 302 can be directionally
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`controllable”). The array of different antenna elements is also illustrated in Figure 6
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`(“Antenna Array 302”), Figure 8A (“Antenna Array 302”), and Figure 13 (“antenna
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`elements 400(1)…400(15)”), reproduced below.
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`IPR2022-00367
`USP 10,715,235
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`In contrast, Burke’s Figure 2 and 12, shows only a single antenna at the mobile
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`station. A POSITA would understand Burke’s mobile system to be a different
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`arrangement than the antenna array described and claimed in the ’235 Patent. Thus,
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`Burke’s disclosures fail to teach or suggest Limitation [8a].
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`2.
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`It would not be obvious how to modify Burke’s mobile
`station to practice Limitations [8a], [8d], and [8e].
`The Petition argues that Burke’s mobile station renders obvious Limitation
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`[8a], [8d], and [8e]. As to Limitation [8a], the Petition specifically focuses on
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`Figures 2, 5, 6, and 12 in Burke. Pet. at 26-30. Figures 2, 5, and 6 in Burke describe
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`details of the base station’s transmission operations. Only Figure 12 in Burke
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`focuses on the mobile station’s receive operations.
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`IPR2022-00367
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`As shown above, Figure 12 only discloses a single antenna element in the
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`mobile station, and other aspects of Burke, relied on by Petitioner, require that the
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`antenna in Figure 12 contains only a single element. EX-2010 (Vojcic Decl.) ¶¶ 37-
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`38. So, Petitioners argue that it would be obvious to modify Figure 12 in Burke’s
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`mobile station to use an antenna array, citing a single sentence in Burke which states
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`that antenna 112 “may be a single antenna, or an array of diversity antennas for
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`deploying diversity techniques known in the art.” EX-1006, 25:58-61. But this single
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`sentence does not indicate to a POSITA how Burke’s mobile station would
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`purportedly operate if it were modified to possess an antenna array. EX-2010 (Vojcic
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`Decl.) ¶¶ 37-40.
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`The Petition cites no other disclosure in Burke regarding how Burke’s mobile
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`station would operate if its single antenna were replaced with an antenna array.
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`Beyond a conclusory assertion by their expert, Dr. Akl, that Burke’s mobile station
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`could be modified to use an array of multiple antenna elements, Petitioners have
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`failed to introduce supporting evidence that a POSITA would understand such a
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`modified Burke mobile station to perform each specific aspect of Limitations [8a],
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`[8d], and [8e].
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` The Petition has also failed to show why a POSITA would be motivated to
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`modify Burke’s mobile station to perform Limitations [8a], [8d], and [8e]
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`specifically, based only on Burke’s reference to an “array of diversity antennas for
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`IPR2022-00367
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`deploying diversity techniques known in the art.” EX-1006, 25:58-61. This reference
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`is too broad and non-specific to show obviousness of Limitations [8a], [8d], and [8e].
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`Petitioners’ argument assumes that all arrays of diversity antennas are useful in
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`receiving different signals from the same remote station simultaneously, determining
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`different signal information for each signal, and determining a set of weighting
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`values based on the different signal information, as disclosed in the ’235 patent—
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`but Petitioners fail to support this assumption.
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`a.
`Limitation [8a]
`Beginning with Limitation [8a], the Petition fails to explain how to modify
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`Burke’s Figure 12 to perform Limitation [8a], and further fails to prove that such a
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`modification would be predictable. Pet. at 26-30. Instead, the Petition argues that
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`one specific modification to Burke would be obvious (i.e., replace the mobile
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`station’s single antenna 112 with an array of antenna elements). Id. But the Petition
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`does not go on to address how that modification would actually impact Burke’s
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`Figure 12, or how the modified Figure 12 would practice Limitation [8a], which
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`requires, inter alia, simultaneous transmission of different signals with distinct
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`antenna elements. Pet. at 26-30; EX-2010, ¶ 41.
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`This is insufficient under binding precedent, such as Arendi. There is a single
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`reference in Burke to t