IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Marcus Da Silva et al.
`U.S. Patent No.:
`10,715,235 Attorney Docket No.: 50095-0047IP1
`Issue Date:
`July 14, 2020
`
`Appl. Serial No.: 15/495,539
`
`Filing Date:
`April 24, 2017
`
`Title:
`DIRECTED WIRELESS COMMUNICATION
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 10,715,235 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
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`Attorney Docket No. 50095-0047IP1
`IPR of U.S. Patent No. 10,715,235
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`TABLE OF CONTENTS
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`I. 
`
`II. 
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 1 
`A.  Grounds for Standing ................................................................................ 1 
`B.  Challenge and Relief Requested ............................................................... 1 
`C.  Level of Ordinary Skill in the Art ............................................................. 3 
`D.  Claim Construction ................................................................................... 3 
`THE ’235 PATENT ......................................................................................... 4 
`A.  Brief Description ....................................................................................... 4 
`B.  Relevant History of the ’235 Patent .......................................................... 9 
`1.  Applicant’s Arguments During Prosecution ................................... 9 
`2.  Applicant Failed to Establish a February 2002 Invention Date .... 11 
`3. 
`The Effective Filing Date is After November 4, 2002 .................. 15 
`III.  THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 20 
`A.  GROUND 1: Claims 8-12 are obvious over Burke ............................... 20 
`1.  Overview of Burke ........................................................................ 20 
`2.  Manner in which Burke Renders Claims 8-12 Obvious ............... 25 
`B.  GROUND 2: Claims 13 and 14 are obvious over Burke in view of Shull
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`48 
`1.  Overview of Shull ......................................................................... 48 
`2. 
`Combination of Burke and Shull ................................................... 49 
`3.  Manner in which the Prior Art Renders Claims 13 and 14 Obvious
` ....................................................................................................... 51 
`IV.  PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION .......... 58 
`1. 
`Factor 1: No Party Has Yet to Request Stay ................................. 59 
`2. 
`Factor 2: The FWD will likely issue around the same time as the
`Trial ............................................................................................... 59 
`Factor 3: Petitioners’ Diligence and Investment in IPR Outweighs
`the Parties’ Minimal Investment in Litigation .............................. 61 
`Factor 4: The Petition’s Grounds are Materially Different from
`any that Might be Raised in Litigation .......................................... 63 
`Factor 5: Institution Would Promote Judicial Efficiency ............. 64 
`5. 
`Factor 6: The Merits of this Petition Strongly Favor Institution .. 65 
`6. 
`V. 
`CONCLUSION .............................................................................................. 66 
`VI.  PAYMENT OF FEES ................................................................................... 66 
`VII.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 66 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 66 
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`3. 
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`4. 
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`Attorney Docket No. 50095-0047IP1
`IPR of U.S. Patent No. 10,715,235
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`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 67 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 67 
`D.  Service Information ................................................................................ 67 
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`Attorney Docket No. 50095-0047IP1
`IPR of U.S. Patent No. 10,715,235
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`EXHIBITS
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`EXHIBIT-1001 U.S. Patent No. 10,715,235 to Da Silva (“the ’235 Patent”)
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`EXHIBIT-1002
`
`Prosecution History of the ’235 Patent (“the Prosecution
`History”)
`
`EXHIBIT-1003 Declaration and Curriculum Vitae of Dr. Robert Akl
`
`EXHIBIT-1004 Complaint, XR Communications, LLC v. Apple Inc., 6:21-cv-
`00620, W.D. Tex., June 16, 2021
`
`[RESERVED]
`
`
`EXHIBIT-1005
`
`EXHIBIT-1006 U.S. Patent No. 7,155,231 (“Burke”)
`
`EXHIBIT-1007 U.S. Patent No. 6,006,077 (“Shull”)
`
`EXHIBIT-1008 U.S. Patent Application Publication No. 2002/0158801
`(“Crilly”)
`
`
`EXHIBIT-1009 U.S. Provisional Application No. 60/423,660 (“’660
`Provisional Application”)
`
`PCT Application Publication No. WO 02/47286 (“Hottinen”)
`
`
`EXHIBIT-1010 U.S. Patent No. 6,879,823 (“Raaf”)
`
`EXHIBIT-1011
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`EXHIBIT-1012 U.S. Patent No. 6,662,024 (“Walton”)
`
`EXHIBIT-1013 U.S. Patent No. 6,208,863 (“Salonaho”)
`
`EXHIBIT-1014 U.S. Patent Application Publication No. 20020080862 (“Ali”)
`
`EXHIBIT-1015 U.S. Patent No. 7,340,017 (“Banerjee”)
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`EXHIBIT-1016 U.S. Patent No. 6,792,031 (“Sriram”)
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`Attorney Docket No. 50095-0047IP1
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`EXHIBIT-1017 Andrea Goldsmith, Wireless Communications, Cambridge
`University Press, 2005
`
`
`EXHIBIT-1018 Complaint, XR Communications, LLC v. HP Inc., 6:21-cv-
`00694, W.D. Tex., July 1, 2021
`
`
`EXHIBIT-1019 U.S. Patent No. 6,661,832 (“Sindhushayana”)
`
`EXHIBIT-1020
`
`Plaintiff’s Infringement Contentions, XR Communications, LLC
`v. Apple Inc., 6:21-cv-00620, W.D. Tex., Dec. 20, 2021
`
`“How the Pandemic is Shaping Patent Trials in District
`Courts,” Law360, Feb. 18, 2021, available at
`https://www.troutman.com/insights/how-the-pandemic-is-
`shaping-patent-trials-in-district-courts.html
`
`“2021 Discretionary Denials Have Passed 100, But Are
`Slowing,” Dani Krass, Law360, July 21, 2021
`
`“Leahy And Cornyn Introduce Bipartisan Bill To Support
`American Innovation And Reduce Litigation”, Sep. 29, 2021,
`available at: https://www.leahy.senate.gov/press/leahy-and-
`cornyn-introduce-bipartisan-bill-to-support-american-
`innovation-and-reduce-litigation
`
`“Roku’s Trial Delay Request OK’d by ‘Surprised’ Texas
`Judge,” Law360, Aug. 10, 2020, available at
`https://www.law360.com/articles/1299933
`
`
`iv
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`EXHIBIT-1021
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`EXHIBIT-1022
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`EXHIBIT-1023
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`EXHIBIT-1025
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`EXHIBIT-1024 Restoring the America Invents Act, S. 2891, 117th
`Cong. (2021)
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`Attorney Docket No. 50095-0047IP1
`IPR of U.S. Patent No. 10,715,235
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`Apple Inc. and HP Inc. (collectively “Petitioners”) petition for Inter Partes
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`Review (“IPR”) of 8-14 (“the Challenged Claims”) of U.S. Patent No.
`
`10,715,235 (“the ’235 Patent”). For the reasons explained below, there exists a
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`reasonable likelihood that Petitioners will prevail with respect to at least one of the
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`Challenged Claims.
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`
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`I.
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`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing
`Petitioners certify that the ’235 Patent is available for IPR. Petitioners are
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`not barred or estopped from requesting review. Petitioners were served with a
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`complaint of infringement of the ’235 Patent less than one year prior to the filing
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`of this Petition. EXHIBIT-1004 (hereinafter “EXHIBIT-” will be referred to as
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`“EX-”); EX-1018.
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`B. Challenge and Relief Requested
`Petitioners request IPR of the Challenged Claims on the obviousness
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`grounds listed below. A declaration from Dr. Robert Akl (EX-1003, ¶¶[1]-[114])
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`supports this Petition.
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`1
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`Ground
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`Claim(s)
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`1
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`2
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`8-12
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`13, 14
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`Attorney Docket No. 50095-0047IP1
`IPR of U.S. Patent No. 10,715,235
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`35 U.S.C. § 103
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`
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`Burke
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`Burke in view of Shull
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`The ’235 Patent is a part of a family of patent applications claiming priority
`
`to U.S. Patent Apl. No. 13/855,410, filed on April 2, 2013 and now issued as U.S.
`
`Patent No. 9,462,589. EX-1001, 2. Apl. No. 13/855,410 is a divisional of U.S.
`
`Patent Apl. No. 10/700,329, filed on November 3, 2003, which further claims
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`priority from U.S. Provisional Patent Apl. No. 60/423,660, filed on November 4,
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`2002. Id. As explained below in Section II.B, Apl. No. 60/423,660 does not
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`support the Challenged Claims. Accordingly, the earliest priority date of the ’235
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`Patent is November 3, 2003. As shown below, each reference predates the ’235
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`Patent’s earliest priority date (November 3, 2003) and qualifies as prior art under
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`35 U.S.C. § 102(b) or § 102(e).
`
`Reference
`Burke
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`Filing Date
`Oct. 15, 20021
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`Issue Date
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`Dec. 26, 2006
`
`
`1 Burke claims priority to U.S. Provisional Appl. No. 60/355,296, which was filed
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`Feb. 8, 2002, and the ‘296 provisional supports at least one of Burke’s issued
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`claims. Dynamic Drinkware v. National Graphics, 800 F.3d 1375 (Fed. Cir.
`
`2015).
`
`2
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`

`

`Reference
`
`(USPN 7,155,231)
`Shull
`(USPN 6,006,077)
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`
`Filing Date
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`Oct. 2, 1997
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`Attorney Docket No. 50095-0047IP1
`IPR of U.S. Patent No. 10,715,235
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`Issue Date
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`Dec. 21, 1999
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`C. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art at the time of the ’235 Patent (a
`
`“POSITA”) would have had a Bachelor of Science degree in an academic
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`discipline emphasizing electrical engineering or a related field, in combination
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`with training or at least two years of related work experience in wireless
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`communication systems, or the equivalent. Alternatively, the person could have
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`also had a Masters or Doctorate degree in electrical engineering with a year of
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`related work experience in wireless communication systems. EX-1003, ¶¶[24]-
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`[26].
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`D. Claim Construction
`
`No formal claim constructions are necessary for this petition.2 Wellman, Inc.
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`v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need
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`only be construed to the extent necessary to resolve the controversy.”)
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`2 Petitioners reserve the right to advance specific constructions in district court
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`litigation.
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`3
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`Attorney Docket No. 50095-0047IP1
`IPR of U.S. Patent No. 10,715,235
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`II. THE ’235 PATENT
`A. Brief Description
`The ’235 Patent discloses “a multi-beam directed signal system [that]
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`coordinates directed wireless communication with [a] client.” EX-1001, 2:7-16.
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`The ’235 Patent’s “directed wireless communication system 200 includes an access
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`station 102 and remote client devices 202 and 204. The access station 102 includes
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`a multi-beam directed signal system 206 coupled to an antenna assembly 208 via a
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`communication link 210.” EX-1001, 4:44-54, FIGS. 2, 3 (reproduced below).
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`“The antenna assembly 208 can be implemented as two or more antennas, and
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`optionally as a phased array of antenna elements, to emanate” an array of multiple
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`directed communication beams 214(1), 214(2), . . . , 214(N) from antenna array
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`302, which is part of the antenna assembly 208. Id., 2:24-28, 4:44-5:67; EX-1003,
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`¶[46].
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`Attorney Docket No. 50095-0047IP1
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`EX-1001, FIGS. 2, 3
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`The ’235 Patent also teaches receiving and weighting various
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`communication signals at the access station 102 through its multi-beam directed
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`signal system. EX-1001, 2:51-54, 24:25-34. For example, as shown in FIG. 12
`
`below, “[c]ommunication and/or data transfer signals are received from sources
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`1202 (e.g., sources A and B).” Id. “These signals … are received via antenna
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`array 302 and are provided to the signal control and coordination logic 304.” Id.,
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`24:34-36.
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`The signal control and coordination logic 304 includes (i) routing
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`information 1206 such as “connection indexed routing table(s) based on
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`5
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`identification information, such as address information, CID”, and (ii) “stored
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`weighting values (w) each associated with a particular signal source 1202 (e.g.,
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`sources A and B).” EX-1001, 24:34-53. In particular, “[a] description of the
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`received signal(s) can be stored in the routing table in the form of the pattern or
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`weighting of the signal(s). In this example, a polynomial expansion in 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., 24:54-60. “The stored
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`weighting values associated with each connection, data signal, and/or source are
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`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.” Id., 25:15-30. The
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`signal control and coordination logic 304 uses the weighting values to “control the
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`transmission amplitude frequency band and directionality of data” transmissions
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`sent to wireless client devices like mobile phones while minimizing data sent in
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`other directions. Id., 25:22-30. FIG. 2 (reproduced above), for example, illustrates
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`that communication beam 214 can be “aimed” and “directionally controllable such
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`that only an intended client device will receive a directed wireless
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`communication[.]” Id., 6:64-7:5; EX-1003, ¶¶[47]-[48].
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`Attorney Docket No. 50095-0047IP1
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`EX-1001, FIG. 123
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`The routing table may also include information indicative of the nominal
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`signal strength indicator (RSSI) level received from a node, which can be used to
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`select a preferred communication link for communictions with a client device.
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`EX-1001, 15:59-16:10, 31:48-32:23. For instance, as shown in FIG. 19 below, the
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`’235 Patent teaches that “[a]t block 1904, signal strength indications are received
`
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`3 Annotations to the figures throughout this petition are shown in color.
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`7
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`for data packets received from [a] client device via the directed communication
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`beam” and “[a]t block 1906, a signal strength average for the client device is
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`calculated from the received signal strength indications.” Id., 31:55-63. “At block
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`1908, adjacent signal strength indications are sampled for an adjacent directed
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`communication beam. At block 1910, a second signal strength average is
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`calculated for the adjacent directed communication beam.” Id., 31:63-67. “At
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`block 1912, the signal strength average is compared to the second signal strength
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`average and a determination is made as to which provides a more effective, or
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`better, communication link.” Id., 32:4-23; EX-1003, ¶¶[49]-[50].
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`Attorney Docket No. 50095-0047IP1
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`EX-1001, FIG. 19
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`B. Relevant History of the ’235 Patent
`1.
`Applicant’s Arguments During Prosecution
`The ’235 Patent issued from U.S. App. No. 15/495,539 (“’539
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`9
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`Attorney Docket No. 50095-0047IP1
`IPR of U.S. Patent No. 10,715,235
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`Application”). See generally EX-1001, 1. The ’539 Application was filed on
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`April 24, 2017 and claims priority from U.S. Application Nos. 13/855,410 and
`
`10/700,329, which further claim priority from U.S. Provisional Application No.
`
`60/423,660, filed on November 4, 2002 (“’660 Provisional Application” or EX-
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`1009). EX-1002, 1214, 1110; EX-1001, 1-2; see infra Section I.B; EX-1003,
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`¶[51].
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`During prosecution of the ’539 Application, the Examiner rejected all the
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`claims under 35 U.S.C. § 103 based on the combination of U.S. Patent Publication
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`No. 2002/0158801 (“Crilly” or EX-1008) and U.S. Patent No. 6,714,584 (“Ishii”).
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`EX-1002, 1008. After unsuccessfully attempting to overcome the rejection by
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`differentiating the claims from the prior art, Applicant “traverse[d] the rejection,
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`contending that Crilly is not prior art to the present application.” EX-1002, 268-
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`272, 986-987, 282; EX-1003, ¶[52].
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`In particular, in the Amendment dated July 26, 2018, Applicant argued that
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`“at least the limitations that the Office Action contends are taught by Crilly were
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`invented by Applicant prior to Crilly’s publication” on October 31, 2002. EX-
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`1002, 268-272. The only support Applicant provided for its assertion was a
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`document (“Document C”) contained within the ’660 Provisional Application,
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`which was filed on November 4, 2002, several days after Crilly’s publication. Id.;
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`see also EX-1008, cover; EX-1009, 134-158. Although Applicant claimed that
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`10
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`Attorney Docket No. 50095-0047IP1
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`Document C had been authored “at least as early as February, 2002” (i.e., 8 months
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`before Crilly’s publication), Document C does not have a date on its face, its
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`contents do not suggest a particular date of creation, and Applicant did not
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`corroborate its asserted date of February 2002. Thus, the only evidence upon
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`which Applicant relied to support its attempt to antedate Crilly was a self-serving,
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`uncorroborated date of February 2002 included in the ’660 Provisional
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`Application’s description of Document C. EX-1003, ¶[53]. As set forth below,
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`this is legally insufficient to show prior conception.
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`2.
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`Applicant Failed to Establish a February 2002
`Invention Date
`An inventor can swear behind a reference by proving conception of the
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`invention before the effective filing date of the reference and diligent reduction of
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`the invention to practice after that date. See Apator Miitors ApS v. Kamstrup A/S,
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`887 F.3d 1293, 1295 (Fed. Cir. 2018) (citing Perfect Surgical Techniques, Inc. v.
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`Olympus Am., Inc., 841 F.3d 1004, 1007 (Fed. Cir. 2016)). “A reduction to
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`practice can be either a constructive reduction to practice, which occurs when a
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`patent application is filed, or an actual reduction to practice.” Cooper v. Goldfarb,
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`154 F. 3d 1321, 1327 (Fed. Cir. 1998). “[W]hen a party seeks to prove conception
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`through an inventor’s testimony,” “the party must proffer evidence, ‘in addition to
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`[the inventor’s] own statements and documents,’ corroborating the inventor’s
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`testimony.” Apator Miitors, 887 F.3d at 1295 (quoting Mahurkar v. C.R. Bard,
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`11
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`Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996)).
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`Attorney Docket No. 50095-0047IP1
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`Simply citing to disclosure in the ’660 Provisional Application—a document
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`filed many months after the purported invention date—is not sufficient to swear
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`behind a reference or to establish an invention date prior to the provisional filing.
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`Applicant did not submit an affidavit with an inventor’s testimony explaining or
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`corroborating the conception and reduction to practice of the alleged invention, nor
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`did Applicant provide or cite to any contemporaneous evidence corroborating its
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`allegations. See generally EX-1002, 265-270; EX-1003, ¶[54]; Apator Miitors,
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`887 F.3d at 1295. “While the requirement of corroboration exists to prevent an
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`inventor from describing his actions in an unjustifiably self-serving manner, even
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`the most credible inventor testimony is a fortiori required to be corroborated by
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`independent evidence.” Apator Miitors, 887 F.3d at 1295 (quotations and citations
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`omitted). An undated document filed with a later-filed provisional application
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`cannot meet this exacting standard.
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`Even beyond corroboration, the arguments made by Applicant during
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`prosecution are legally incomplete. Applicant argued that Document C showed
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`prior disclosure of “the limitations that the Office Action contends are taught by
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`Crilly.” EX-1002, 265. But “[c]onception is the formation, in the mind of the
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`inventor, of a definite and permanent idea of the complete and operative
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`invention, as it is thereafter to be applied in practice.” Cooper, 154 F.3d at 1327
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`12
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`Attorney Docket No. 50095-0047IP1
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`(emphasis added). Applicants’ arguments addressing only “the limitations that the
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`Office Action contends are taught by Crilly” do not prove conception of the
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`“complete and operative invention.”
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`For example, claim 8 requires that the first and second signal from the same
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`remote station are received “simultaneously,” but Applicant never addresses this
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`limitation and Document C does not teach it. See EX-1002, 267. Document C is
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`titled “Beamforming for Little Joe,” where “Little Joe is the name for a high-
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`performance WLAN Access Point product[.]” EX-1009, 134. An access point is a
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`device connected directly to a wired local area network and can provide access to
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`the network to other devices like laptops or handheld user/client devices that are
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`connected to it. EX-1003, ¶[54]. At most, in Document C, multiple different
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`user/client devices each send a single signal (described as a “packet reception” at
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`C-4) that is received via multiple paths between the antenna of the transmitting
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`user/client device (also referred to as a “remote antenna” at C-2) and the antenna
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`array of the Little Joe Access Point. EX-1003, ¶[54] (citing EX-1009, 135-137).
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`Even if a client device’s single packet transmission received at the Little Joe
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`Access Point via different propagation paths could be considered different
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`signals—which Applicant never alleged and the record does not support—
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`Document C does not describe or suggest that the Access Point receives the packet
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`via the multiple propagation paths simultaneously. Applicant appeared to agree
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`Attorney Docket No. 50095-0047IP1
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`because the limitation-by-limitation analysis in the prosecution history specifically
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`removed the word “simultaneously” from the quoted limitation. EX-1002, 270;
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`EX-1003, ¶[54].
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`Further, Applicant never alleges that Document C represents a reduction of
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`the claimed invention to practice. See UMC Elecs. Co. v. United States, 816 F.2d
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`647, 652, 2 U.S.P.Q.2d 1465, 1468 (Fed.Cir.1987) (“[T]here cannot be a reduction
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`to practice of the invention ... without a physical embodiment which includes all
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`limitations of the claim.”). Indeed, Document C only purports to explain the
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`outcome of modeling based on a computer simulation, which is not a physical
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`embodiment. See EX-1009, 143 (“Since interference was not modeled, the
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`interference-rejection performance of the different beamforming methods was not
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`compared. The current simulation code could be easily extended to study this”);
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`EX-1003, ¶[55]. Without proof of an actual reduction to practice prior to Crilly’s
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`publication date, Applicant would need to show diligence between the alleged
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`conception set forth in Document C and constructive reduction to practice
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`represented by the filing of the ’660 Provisional Application—assuming this
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`provisional application even supports every limitation of the Challenged Claims,
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`which it does not. However, the prosecution record does not even mention
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`diligence, much less provide any evidence of it.
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`For at least these reasons, Applicant has not established an invention date
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`any earlier than the filing of the ’660 Provisional Application.
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`Attorney Docket No. 50095-0047IP1
`IPR of U.S. Patent No. 10,715,235
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`3.
`The Effective Filing Date is After November 4, 2002
`Moreover, even if the applicant had properly shown that Document C
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`predated Crilly, the ’660 Provisional Application did not disclose all the claimed
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`features and thus cannot support a claim of priority for the challenged claims of the
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`’235 Patent. EX-1003, ¶[56]. The only support in the ’660 Provisional
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`Application that Applicant identified in the prosecution for the claims was from
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`Document C. But neither Document C nor other parts of the ’660 Provisional
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`Application provide support for certain limitations of the Challenged Claims.
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`Because of this lack of support, the ’235 Patent is entitled to a priority date no
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`earlier than November 3, 2003. Id.
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`Specifically, there are at least two limitations recited in claim 8 that are not
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`supported in Document C:
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`1. “receiving a first signal transmission from a remote station via a first
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`antenna element of an antenna and a second signal transmission from
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`the remote station via a second antenna element of the antenna
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`simultaneously”; and
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`2. “wherein the set of weighting values is configured to be used by the
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`remote station [from which the first and second signals are received]
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`to construct one or more beam-formed transmission signals.”
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`EX-1001, 33:48-34:2; EX-1003, ¶¶[57]-[58]. As to the first limitation,
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`Applicant did not show that Document C describes “simultaneous” receipt of the
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`first and second signals, nor did Applicant show that the first and second signals
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`come from the same remote station, conspicuously leaving these requirements of
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`the claims out of its arguments entirely. See EX-1002, 267; EX-1003, ¶[59].
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`The portions of Document C to which Applicant cited do not support
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`“simultaneous” receipt of first and second signals transmitted by the same remote
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`station as required by claim 8. Document C discloses an “evaluation of various
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`beamforming options for Mabuhay Network’s Little Joe 802.11 WLAN Access
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`Point” that uses “a 16-element linear antenna array to increase range and
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`performance.” EX-1009, 134. The Little Joe Access Point is described as
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`containing two different beamformers: (1) a “searcher” that comprises a 16-port
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`Butler matrix coupled to 16 different WLAN wireless cards for “obtain[ing] the
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`received signal levels for each received packet” from the remote user devices and
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`the computation of complex weights; and (2) a “card 13” that is used to apply the
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`computed complex weights and transmit beamformed signals. Id. Each of these
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`beamformers is contained in the Little Joe Access Point and connected to the set of
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`16 antennas, as shown in Document C’s Figure 1 (reproduced below). EX-1003,
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`¶[59] (citing EX-1009, 134-135).
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`EX-1009, 135
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`
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`Document C describes that “[t]he signal received by the array elements will
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`be the vector sum of signals arriving by many paths” from multiple different
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`“desired and undesired users.” EX-1009, 136. Document C further explains that
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`the “performance of different beamforming techniques … will depend on:
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`
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`EX-1009, 136. Thus, while Document C describes the receipt of different signals,
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`those signals are from different users (i.e., “desired and undesired users”) or from
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`interference/noise, not from the same remote station as required by claim 8. EX-
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`1003, ¶¶[60]-[61].
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`The user/client devices in Document C each transmit a single signal
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`(described as a “packet reception” at C-4) that propagates and is received via
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`multiple paths between the antenna of the transmitting user/client device (also
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`referred to as a “remote antenna” at C-2) and the antenna array of the Little Joe
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`Access Point. EX-1003, ¶[62] (citing EX-1009, 135-137). Even if, arguendo, a
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`client device’s single packet transmission received via different propagation paths
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`were considered different signals—which Applicant never alleged and the record
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`does not support—Document C does not describe or suggest that the access point
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`receives the packet via the multiple propagation paths simultaneously. EX-1003,
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`¶[62].
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`Indeed, at no point does Document C disclose that any of the signals it
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`describes—whether from desired users, undesired users, interference, or noise—
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`are received “simultaneously” by the Little Joe Access Point, much less that two
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`signals from the same “remote station” are received simultaneously. EX-1003,
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`¶[62]. The word “simultaneously” is not used once in Document C. Id. Thus,
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`Document C does not support “simultaneous” receipt of first and second signals
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`transmitted by the same remote station, as recited in the challenged claims.
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`As to the second limitation, Document C also does not support determining a
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`set of weighting values configured to be used by the remote station from which
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`the first and second signals are received, as required by claim 8. Rather, as
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`described above with reference to the Little Joe Access Point shown in Figure 1 of
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`Document C, the Little Joe Access Point computes complex weights for use by its
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`own “card 13” beamformer, not for use by the “desired and undesired users” that
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`are remote from the Little Joe Access Point. EX-1003, ¶[63]. Specifically, the
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`beamforming weights in Document C are computed by the “searcher” and
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`“store[d] [] in a table which is made available to the application running the
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`modified (polling) MAC protocol on ‘card 13’.” EX-1009, 137. These weights
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`are not used by the individual clients (i.e. the desired and undesired users), but
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`instead by the Access Point to communicate with each of these individual clients.
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`EX-1003, ¶[63]. The “signal level information [received from the clients, i.e., the
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`remote stations] is used to compute the complex weights for a second RF beam
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`former” within the same Little Joe Access Point—the card 13 beamformer. Id.
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`(quoting EX-1009, 134).
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`Moreover, independent claim 8 requires that the device that determines the
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`set of weighting values be different from the “remote station” in which those
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`weighting values are “configured to be used to construct a beam-formed
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`transmission signal.” In contrast, in Document C, a single device (i.e., the Little
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`Joe Access Point) “computes the beamforming weights for a particular client” “to
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`support the beamforming function” “to generate the … transmit beams” to the
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`particular client. EX-1009, 134, 137; EX-1003, ¶[64]. Thus, the ’660 Provisional
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`Application does not support claim 8’s “determining a set of weighting values
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`configured to be used by the remote station from which the first and second signals
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`are received.” Id.
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`Attorney Docket No. 50095-0047IP1
`IPR of U.S. Patent No. 10,715,235
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`Since the ’660 Provisional Application does not provide written description
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`support for all the claimed features, the ’235 Patent is not entitled to claim priority
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`to the ’660 Provisional Application. EX-1003, ¶¶[65]-[66].
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`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. GROUND 1: Claims 8-12 are obvious over Burke
`1. Overview of Burke4
`Burke discloses that multipath wireless data transmission “is a condition that
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`occurs when a transmitter transmits a single signal that is then received at a
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`receiver through multiple signal paths, each having a different length. The
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`difference in the lengths of the paths may cause different copies of the signal to
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`arrive at different times, causing inter-channel interference.” EX-1006, 1:62-2:1.
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`Burke explains that “it would be desirable if multi-path interference could be
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`reduced or eliminated before it occurred, thus reducing or eliminating the need for
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`4 General descriptions provided for the references and combinations discussed in
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`Section III are incorporated into each subsection addressing/applying those
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`references, as are the discussions of combinations.
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`multipath mitigating processing at the receiver, as well as improving the overall
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`capacity and/or throughput of the system.” EX-1006, 2:17-23; EX-1003, ¶[67].
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`To address these issues, Burke discloses “an improved method and apparatus
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`for space-time pre-correction of transmitted wireless signals” in a wireless
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`communication system. EX-1006, Abstract, 1:16-19. An example wireless
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`communication system includes base stations 104A-104C and mobile stations/user
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`equipment (UEs) 106A, 106B. EX-1006, FIG. 1 (reproduced below), 3:27-44,
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`2:27-45; EX-1003, ¶[68].
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`Mobile Station
`Base Station
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`EX-1006, FIG. 1
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`An example of multi-path communication between a base station 104 and a
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`mobile station 106 is shown below with respect to FIG. 2. EX-1003, ¶[69].
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`EX-1006, FIG. 2
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