UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`XR COMMUNICATIONS, LLC, dba,
`VIVATO TECHNOLOGIES,
`
`Plaintiff,
`
`
`
`v.
`
`
`
`
`
`
`
`
`AMAZON.COM, INC. et al.
`
`Civil Action No. 6:21-cv-00619-ADA
`
`
`
`Defendants.
`
`JURY TRIAL DEMANDED
`
`APPLE INC.,
`
`Civil Action No. 6:21-cv-00620-ADA
`
`
`
`DEFENDANT.
`
`JURY TRIAL DEMANDED
`
`ASUSTEK COMPUTER INC.
`
`Civil Action No. 6:21-cv-00622-ADA
`
`
`
`DEFENDANT.
`
`JURY TRIAL DEMANDED
`
`GOOGLE LLC
`
`Civil Action No. 6:21-cv-00625-ADA
`
`
`
`DEFENDANT.
`
`JURY TRIAL DEMANDED
`
`SAMSUNG ELECTRONICS CO., LTD. et al.
`
`Civil Action No. 6:21-cv-00626-ADA
`
`
`
`DEFENDANTS.
`
`JURY TRIAL DEMANDED
`
`DELL TECHNOLOGIES INC. et al.
`
`Civil Action No. 6:21-cv-00646-ADA
`
`
`
`DEFENDANTS.
`
`JURY TRIAL DEMANDED
`
`HP INC.,
`
`Civil Action No. 6:21-cv-00694-ADA
`
`
`
`DEFENDANT.
`
`JURY TRIAL DEMANDED
`
`MICROSOFT CORPORATION,
`
`Civil Action No. 6:21-cv-00695-ADA
`
`
`
`DEFENDANT.
`
`JURY TRIAL DEMANDED
`
`Exhibit 2008
`IPR2022-01155
`Page 1 of 99
`
`

`

`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`FOR U.S. PATENT NO. 10,715,235
`
`Pursuant to the Court’s Order Governing Proceedings and the Court’s Scheduling Order
`
`Defendants Amazon.com, Inc.; Amazon.com Services, Inc.; eero LLC; Apple Inc.; ASUSTeK
`
`Computer Inc.; Google LLC; Samsung Electronics America, Inc.; Samsung Electronics Co., Ltd.;
`
`Dell Inc.; Dell Technologies Inc.; HP Inc.; and Microsoft Corporation (collectively, “Defendants”)
`
`respectfully submit these preliminary invalidity contentions with respect to the claims of U.S.
`
`Patent No. 10,715,235 (the “’235 Patent”) identified by Plaintiff XR Communications LLC d/b/a
`
`Vivato Technologies, (“Plaintiff”) in its Preliminary Infringement Contentions.
`
`The currently Asserted Claims, as reflected in Plaintiff’s Preliminary Infringement
`
`Contentions, are claims 1, 2, 4, 5, 8, 9, 11, 12, 15, and 16 of the ’235 Patent (the “Asserted
`
`Claims”). As detailed further below, the ’235 Patent is anticipated by, or obvious in view of, one
`
`more of
`
`the prior art
`
`references being produced at 235PRIORART_00000001
`
`to
`
`235PRIORART_00002069, as well as invalid under 35 U.S.C. §§ 101 and 112.
`
`I.
`
`PRELIMINARY STATEMENT
`
`These invalidity contentions are based on Defendants’ current knowledge, understanding,
`
`and belief of the ’235 Patent and prior art, of Plaintiff’s infringement theories (inasmuch as they
`
`can be inferred from its Infringement Contentions), and of the facts and other information available
`
`as of the date of these invalidity contentions. Defendants’ investigation, discovery, and analysis of
`
`information related to this action is ongoing. Additional discovery, elucidation of Plaintiff’s
`
`impermissibly vague infringement contentions, and/or orders of the Court may require Defendants
`
`to amend or supplement these invalidity contentions, and Defendants expressly reserve the right
`
`to do so as their respective cases proceed. These contentions represent Defendants’ good-faith
`
`effort to provide a comprehensive identification of prior art relevant to these cases, but Defendants
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 10,715,235
`-1-
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`
`
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`Exhibit 2008
`IPR2022-01155
`Page 2 of 99
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`

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`reserve the right to modify or supplement their prior art list and invalidity contentions at a later
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`time with, or based upon, pertinent information that may be subsequently discovered.
`
`A.
`
`No Waiver.
`
`Nothing in these invalidity contentions is intended, nor should be construed, as a waiver of
`
`any noninfringement position or argument under 35 U.S.C. §§ 101 or 112. Defendants’ statements
`
`herein (including the accompanying claim charts) reflect Defendants’ present understanding of the
`
`purported scope of the claims as alleged by Plaintiff in its Infringement Contentions (as best those
`
`contentions can be understood in light of their present deficiencies).
`
`The patent claims have yet to be construed. As a result, Defendants have based these
`
`invalidity contentions upon their knowledge and understanding of the potential scope of the
`
`Asserted Claims at this time, and, in part, upon the apparent interpretations of the Asserted Claims
`
`advanced by Plaintiff in its Infringement Contentions. Defendants may disagree with Plaintiff’s
`
`interpretation of the meaning of many terms and phrases in the Asserted Claims. Defendants have
`
`provided these invalidity contentions based in part on their present understanding of Plaintiff’s
`
`apparent constructions and interpretations of the Asserted Claims. These invalidity contentions do
`
`not represent Defendants’ agreement or view as to the proper interpretation of any claim term
`
`contained therein. Any similarity between any apparent claim interpretation in any of Defendants’
`
`charts of prior art reference and Plaintiff’s contentions is not an admission or agreement with
`
`Plaintiff about the meaning of any claim term, but rather a reflection of the fact that the subject
`
`matter Plaintiff believes is claimed is present in the prior art, or that the claims are otherwise
`
`invalid. These invalidity contentions are made in the alternative, and should not be interpreted to
`
`rely upon, or in any way affect, the non-infringement arguments Defendants may assert in their
`
`respective cases. Defendants reserve the right to amend, supplement, or materially modify its
`
`invalidity contentions as each case proceeds. Defendants also reserve the right to amend,
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 10,715,235
`-2-
`
`
`
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`Exhibit 2008
`IPR2022-01155
`Page 3 of 99
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`

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`supplement, or materially modify their invalidity contentions based on any infringement and/or
`
`additional claim construction positions that Plaintiff may take in this case.
`
`Defendants also reserve the right to amend, supplement, or materially modify their
`
`invalidity contentions in response to any claim construction or interpretation positions that Plaintiff
`
`may take. Defendants also reserve the right to assert that a claim is indefinite, not enabled, or fails
`
`to meet the written description requirement of 35 U.S.C. § 112 based on any claim construction or
`
`interpretation position Plaintiff may take in these cases or based on any claim construction the
`
`Court may further adopt in these cases.
`
`B.
`
`No Admission.
`
`Nothing disclosed herein is an admission or acknowledgement that any product accused of
`
`infringement by Plaintiff in its Infringement Contentions (the “Accused Products”), or any of
`
`Defendants’ other products or services, infringes any of the Asserted Claims.
`
`Defendants further note that Plaintiff appears to rely upon overly broad interpretations of
`
`the Asserted Claims. At the same time, Plaintiff’s Infringement Contentions are in most places too
`
`general and vague to discern Plaintiff’s infringement theories and how exactly Plaintiff contends
`
`each Accused Product meets or practices each element of the Asserted Claims. For example,
`
`Plaintiff’s Infringement Contentions fail to clearly identify the aspects or features of the Accused
`
`Products that Plaintiff contends meet the elements of the Asserted Claims. As a result, Defendants
`
`have been prejudiced in their ability to prepare these preliminary invalidity contentions. In
`
`addition, Plaintiff’s Infringement Contentions, in many cases, continue to fail to put Defendants
`
`on notice of Plaintiff’s interpretation of the Asserted Claims, further prejudicing Defendants’
`
`ability to identify relevant prior art. In addition, Plaintiff has not identified any theories of
`
`infringement under the doctrine of equivalents. Defendants have relied on Plaintiff’s apparent
`
`representation that it has no doctrine of equivalents theories in preparing these invalidity
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 10,715,235
`-3-
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`
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`Exhibit 2008
`IPR2022-01155
`Page 4 of 99
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`contentions, and any attempt by Plaintiff to present an untimely doctrine of equivalents argument
`
`would be severely prejudicial to Defendants. To the extent that Plaintiff is later permitted by the
`
`Court to amend its contentions to cure the deficiencies of its current contentions or to pursue any
`
`currently undisclosed doctrine of equivalents theories, Defendants expressly reserve the right to
`
`supplement or amend these invalidity contentions to account for such amendments.
`
`To the extent that any of the prior art references disclose the same functionality or feature
`
`of any of the Accused Products, Defendants reserve the right to argue that said feature or
`
`functionality does not practice any element of any of the Asserted Claims, and to argue, in the
`
`alternative, that if said feature or functionality is found to practice any element of any of the
`
`Asserted Claims, then the prior art reference demonstrates that the element is not novel, is obvious,
`
`and/or is otherwise not patentable.
`
`Attached hereto are representative claim charts that identify where the elements of the
`
`Asserted Claims of the ’235 Patent may be found in the prior art. The references cited in the
`
`attached claim charts may disclose the limitations of the Asserted Claims expressly and/or
`
`inherently. The suggested obviousness combinations may be presented in conjunction with or in
`
`the alternative to Defendants’ contentions regarding anticipation. Where Defendants contend that
`
`an element or elements would have been obvious over a reference in combination with one or more
`
`additional references, additional information regarding the nature of the combinations and
`
`motivations to combine may be found in Section III.A.2 of this cover document. These
`
`obviousness combinations should not be construed to suggest that any reference included in any
`
`combination is not anticipatory in its own right. Further, to the extent that Plaintiff contends that
`
`any of the references identified do not constitute prior art under 35 U.S.C. § 102, Defendants
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 10,715,235
`-4-
`
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`Exhibit 2008
`IPR2022-01155
`Page 5 of 99
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`reserve the right to rely upon other prior art references in the same patent family with substantially
`
`identical disclosures as evidence of invalidity based on the same theories as those disclosed below.
`
`C.
`
`Reservation of Rights.
`
`Prior art not currently included in this disclosure may become relevant. Defendants are
`
`currently unaware of the extent, if any, to which Plaintiff will contend that limitations of the
`
`Asserted Claims are not disclosed in the prior art identified by Defendants. Defendants reserve the
`
`right to identify other references that would have made the addition of the allegedly missing
`
`limitation to the disclosed device or method obvious or show that the allegedly missing limitation
`
`would have been known or readily apparent to one of ordinary skill in the art at the time of the
`
`invention in light of the disclosure of the prior art at issue. Defendants further reserve the right to
`
`rely
`
`on
`
`any
`
`of
`
`the
`
`references
`
`produced
`
`at
`
`235PRIORART_00000001
`
`to
`
`235PRIORART_00002069 in order to demonstrate the state of art at the alleged times of invention
`
`and as evidence of the knowledge of one of ordinary skill in the art in support of any motivations
`
`to modify or combine the charted prior art references with other references or knowledge.
`
`Plaintiff may also be aware of additional prior art that is not known to Defendants. To the
`
`extent that Plaintiff produces prior art responsive to Defendants’ discovery requests after these
`
`contentions are served, Defendants may supplement their invalidity contentions with prior art
`
`contained in such production once they have had a fair opportunity to review, analyze, and chart
`
`such prior art. Defendants reserve the right to amend their invalidity contentions with any
`
`additional potential prior art known by Plaintiff but not yet disclosed to Defendants.
`
`Defendants provide these invalidity contentions only for the claims that have been asserted
`
`by Plaintiff, but reserve the right to seek invalidation of all claims in the ’235 Patent.
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 10,715,235
`-5-
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`Exhibit 2008
`IPR2022-01155
`Page 6 of 99
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`D.
`
`Ongoing Investigation.
`
`Defendants’ investigation is ongoing, and Defendants expressly reserve the right to amend
`
`their disclosures and document production to account for evidence uncovered as their investigation
`
`continues. Such amendments include identifying and relying on additional references that may
`
`result from Defendants’ further search and analysis. Defendants reserve the right to supplement
`
`these contentions in light of any additional prior art =that might be subsequently disclosed by
`
`Plaintiff, including in response to Defendants’ discovery requests. Defendants anticipate issuing
`
`subpoenas to third parties believed to have knowledge, documentation and/or corroborating
`
`evidence concerning some of the prior art listed herein and/or additional prior art. These third
`
`parties include, but are not limited to, the authors, employers of authors, inventors, assignees, or
`
`former or current employees of assignees, of the references identified in these invalidity
`
`contentions. For example, Defendants anticipate issuing subpoenas to potential prior artists
`
`including but not limited to individuals and entities responsible for the development of prior art
`
`systems. Defendants reserve the right to supplement these contentions in light of any newly
`
`discovered information produced by these or other companies from which Defendants may seek
`
`discovery.
`
`II. PRIORITY DATE OF THE ASSERTED PATENT CLAIMS
`
`Plaintiff asserts the following priority dates for the ’235 Asserted Claims in its
`
`Infringement Contentions:
`
`• Each asserted claim of the ’235 Patent is entitled to a priority date at least as early
`as November 4, 2002.
`
`It is Plaintiff’s burden to show entitlement to its asserted priority dates, and Defendants
`
`assert that Plaintiff has failed to meet that burden. For example, Defendants identify at least the
`
`following issues with Plaintiff’s priority data assertion.
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 10,715,235
`-6-
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`Exhibit 2008
`IPR2022-01155
`Page 7 of 99
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`A.
`
`The ’235 patent is not entitled to any claimed priority date
`
`Plaintiff asserts that the ’235 patent is entitled to claim priority to November 4, 2002, which
`
`is the filing date of provisional application No. 60/423,660 (“’660 provisional application”).
`
`Chinese patent. Plaintiff has not alleged any earlier priority or conception date.
`
`The ’660 provisional application does not provide sufficient disclosure to entitle the ’235
`
`patent to claim priority to the filing date of the ’660 provisional application. The ’660 provisional
`
`application fails to disclose support for any claim of the ’235 patent in the manner required by 35
`
`U.S.C. § 112. For example, the ’660 provisional application fails to disclose, at the level required
`
`by 35 U.S.C. § 112, at least the following claim elements:
`
`• “an antenna, wherein the antenna comprises a first antenna element and a second
`antenna element;” (claim 1)
`
`• “receive a first signal transmission from a remote station via the first antenna
`element and a second signal transmission from the remote station via the second
`antenna element simultaneously;” (claim 1)
`
`• “determine 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 transceiver to construct one or more beam-formed transmission
`signals;” (claim 1)
`
`• “cause the transceiver to transmit a third signal to the remote station via the
`antenna, the third signal comprising content based on the set of weighting values.”
`(claim 1)
`
`• “The receiver as recited in claim 4, wherein the set of weighting values is further
`based on one or more of: a transmit power level, a data transmit rate, an antenna
`direction, quality of service data, or timing data.” (claim 5)
`
`• “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,” (claim 8)
`
`• “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” (claim 8)
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 10,715,235
`-7-
`
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`Exhibit 2008
`IPR2022-01155
`Page 8 of 99
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`• “transmitting to the remote station a third signal comprising content based on the
`set of weighting values.” (claim 8)
`
`• “The method as recited in claim 8, wherein the set of weighting values is further
`based on one or more of: a transmit power level, a data transmit rate, an antenna
`direction, quality of service data, or timing data.” (claim 11)
`
`• “the first signal transmission comprising first signal information, wherein the first
`signal information comprises one or more of: a transmit power level, a data
`transmit rate, an antenna direction, quality of service data, or timing data;” (claim
`15)
`
`• “determine 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 transceiver to construct one or more beam-formed transmission
`signals;” (claim 15)
`
`• “cause the transceiver to generate a third signal comprising content based on the
`set of weighting values.” (claim 15)
`
`Accordingly, the Asserted Claims are not entitled to a priority date any earlier than
`
`November 3, 2003, at the earliest.
`
`III. THE ’235 PATENT IS INVALID.
`
`A.
`
`Identification of Prior Art
`
`Defendants contend that the prior art references charted in Exhibits A-1 through A-42
`
`and/or described below anticipate and/or render obvious, alone or in combination, one or more of
`
`the Asserted Claims of the ’235 Patent. Furthermore, Defendants reserve the right to rely on any
`
`of the charted prior art references together with any of the below references to show the state of
`
`the art and the knowledge of one of ordinary skill in the art at the time of the alleged invention of
`
`the ’235 Patent. 1
`
`
`1 Defendants Amazon.com, Inc., Amazon.com Services, Inc., eero LLC, Google LLC, Samsung
`Electronics America, Inc., and Samsung Electronics Co., Ltd. further incorporate by reference each
`of the prior art references identified in, and produced in connection with, their Preliminary
`Invalidity Contentions for U.S. Patent No. 10,594,376, served February 25, 2022. The remaining
`Defendants take no position as to art known to Plaintiff but not yet disclosed to the individual
`Defendants in discovery, but reserve the right to rely upon any invalidity contentions for the ’376
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 10,715,235
`-8-
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`Exhibit 2008
`IPR2022-01155
`Page 9 of 99
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`

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`Bates Number
`
`Prior Art Reference
`
`235PRIORART_00000001 3GPP TSG RAN WG1 R1-99c10 (“Motorola 3GPP”)
`
`235PRIORART_00000008 19990830 - 19990903 3GPP R1-07 Meeting
`
`235PRIORART_00000012 Feedback assisted multi-antenna transmission weight
`adaptation for wireless communications (“Banister
`2002”)
`
`235PRIORART_00000217 An Analysis of the LEGO Algorithm for Optimizing the
`Performance of Wireless Networks, (“Agee 2001”)
`
`235PRIORART_00000246 The LEGO Approach for Achieving Max-Min Capacity
`in Reciprocal Multipoint Networks (“Agee 2001”)
`
`235PRIORART_00000252
`
`Joint Optimal Power Control and Beamforming in
`Wireless Networks Using Antenna Arrays (“Farrokhi
`1998”)
`
`235PRIORART_00000264 Link-Optimal BLAST Processing With Multiple Access
`Interference (“Farrokhi 2000”)
`
`235PRIORART_00000269 Base Station Transmitter Antenna Arrays with Mobile
`to Base Feedback (“Gerlach 1993”)
`
`235PRIORART_00000275 Space-Time Signaling in Multi-Antenna Systems
`(“Heath 2001”)
`
`235PRIORART_00000410
`
`Joint Transmitter-Receiver Optimization in
`Synchronous Multiuser Communications over
`Multipath Channels (“Jang”)
`
`235PRIORART_00000420
`
`JP2002290317 (“Jitsukawa”) (translation)
`
`235PRIORART_00000433
`
`JP2002290317A (“Jitsukawa”) (original)
`
`235PRIORART_00000445 KR20020034531A (“Yoo”)
`
`235PRIORART_00000461
`
`Joint transmit and receive optimization for high data
`rate wireless communication using multiple antennas
`(“Sampath”)
`
`235PRIORART_00000466 Maximum Likelihood Multipath Channel Parameter
`Estimation in CDMA Systems (“Sengupta”)
`
`235PRIORART_00000472 Transmit Diversity in 3G CDMA Systems
`(“Derryberry”)
`
`235PRIORART_00000480 Transmit Diversity Using Filtered Feedback Weights in
`the FDD WCDMA System (“Hottinen 2000”)
`
`
`Patent that are already known to Plaintiff and any prior art disclosed therein, to the extent they
`apply to similar claim elements for the ’235 Patent, once Plaintiff produces those documents in the
`course of discovery.
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 10,715,235
`-9-
`
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`
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`Exhibit 2008
`IPR2022-01155
`Page 10 of 99
`
`

`

`Bates Number
`
`Prior Art Reference
`
`235PRIORART_00000487 US 5,345,599 (“Paulraj 599”)
`
`235PRIORART_00000501 US 5,471,647 (“Gerlach 647”)
`
`235PRIORART_00000511 US 5,634,199 (“Gerlach 199”)
`
`235PRIORART_00000524 US 5,828,658 (“Ottersten”)
`
`235PRIORART_00000557 US 6,006,077 (“Shull”)
`
`235PRIORART_00000570 US 6,031,877 (“Saunders”)
`
`235PRIORART_00000577 US 6,067,290 (“Paulraj 290”)
`
`235PRIORART_00000629 US 6,124,824 (“Xu”)
`
`235PRIORART_00000638 US 6,141,335 (“Kuwahara”)
`
`235PRIORART_00000639 US 6,141,567 (“Youssefmir”)
`
`235PRIORART_00000662 US 6,175,550 (“van Nee”)
`
`235PRIORART_00000673 US 6,219,561 (“Raleigh 561”)
`
`235PRIORART_00000691 US 6,317,586 (“Haardt”)
`
`235PRIORART_00000705-
`718
`
`Intentionally omitted
`
`235PRIORART_00000719 US 6,449,490 (“Chaponniere”)
`
`235PRIORART_00000735 US 6,473,036 (“Proctor”)
`
`235PRIORART_00000751 US 6,553,012 (“Katz”)
`
`235PRIORART_00000768 US 6,650,289 (“Levy 289”)
`
`235PRIORART_00000787 US 6,657,590 (“Yoshida 590”)
`
`235PRIORART_00000801 US 6,662,024 (“Walton 024”)
`
`235PRIORART_00000828 US 6,687,492 (“Sugar”)
`
`235PRIORART_00000858 US 6,738,020 (“Lindskog”)
`
`235PRIORART_00000871 US 6,792,031 (“Sriram”)
`
`235PRIORART_00000882 US 6,816,116 (“Chen”)
`
`235PRIORART_00000895 US 6,888,809 (“Foschini”)
`
`235PRIORART_00000906 US 6,895,258 (“Scherzer 258”)
`
`235PRIORART_00000924 US 6,947,707 (“Raghothaman”)
`
`235PRIORART_00000933 US 6,970,722 (“Lewis”)
`
`235PRIORART_00000941 US 7,110,349 (“Branlund”)
`
`235PRIORART_00001052 US 7,116,723 (“Kim 723”)
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 10,715,235
`-10-
`
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`
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`Exhibit 2008
`IPR2022-01155
`Page 11 of 99
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`

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`Bates Number
`
`Prior Art Reference
`
`235PRIORART_00001070 US 7,139,324 (“Ylitalo”)
`
`235PRIORART_00001116 US 7,155,231 (“Burke”)
`
`235PRIORART_00001153 US 7,224,758 (“Banister 758”)
`
`235PRIORART_00001172 US 7,248,841 (“Agee 841”)
`
`235PRIORART_00001270 US 7,286,855 (“Raleigh 855”)
`
`235PRIORART_00001296 US 7,340,017 (“Banerjee 017”)
`
`235PRIORART_00001311 US 2001/0031647 (“Scherzer 647”)
`
`235PRIORART_00001330 US 2002/0009156 (“Hottinen 156”)
`
`235PRIORART_00001347 US 2002/0018530 (“Kim 530”)
`
`235PRIORART_00001364 US 2002/0060643 (“Levy 643”)
`
`235PRIORART_00001384 US 2002/0070892 (“Kikuchi”)
`
`235PRIORART_00001396 US 2002/0080862 (“Ali”)
`
`235PRIORART_00001405 US 2002/0090978 (“Petrus”)
`
`235PRIORART_00001418 US 2002/0131381 (“Kim 381”)
`
`235PRIORART_00001447-
`1475
`
`Intentionally omitted
`
`235PRIORART_00001476 US 2002/0158801 (“Crilly”)
`
`235PRIORART_00001516 US 2002/0190901 (“Yoshida 901”)
`
`235PRIORART_00001531 US 2003/0068983 (“Kim 983”)
`
`235PRIORART_00001593 US 2003/0125040 (“Walton 040”)
`
`235PRIORART_00001665 US 2004/0018818 (“Hottinen 818”)
`
`235PRIORART_00001674 US 2008/0170533 (“Cyzs”)
`
`235PRIORART_00001696 Extending the capacity of next generation wireless
`LANs using space division multiplexing cominbed with
`OFDM (“van Zelst”)
`
`235PRIORART_00001785 Opportunistic Beamforming Using Dumb Antennas
`(“Viswanath”)
`
`235PRIORART_00001803
`
`International Pub. No. WO2000/001078 (“Harrison”)
`
`235PRIORART_00001829
`
`International Pub. No. WO9824192 (“Doğan”)
`
`235PRIORART_00002031
`
`International Pub. No. WO2002047286 (“Hottinen
`286”)
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 10,715,235
`-11-
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`Exhibit 2008
`IPR2022-01155
`Page 12 of 99
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`1.
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`The ’235 Patent is Anticipated by the Prior Art.
`
`Some or all of the Asserted Claims of the ’235 Patent are invalid as anticipated under 35
`
`U.S.C. § 102 in view of each of the prior art references identified in the claim charts included in
`
`Exhibit A-1 through A-42, which identify specific examples of where each limitation of the
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`Asserted Claims is found in the prior art references. As explained above, the cited portions of prior
`
`art references identified in the attached claim charts are exemplary in nature and representative of
`
`the content and teaching of the prior art references, and should be understood in the context of the
`
`reference as a whole and as they would be understood by a person of ordinary skill in the art.
`
`Defendants identify the following references as anticipating one or more of the Asserted
`
`Claims of ’235 Patent under 35 U.S.C. § 102. The table of anticipating references below is
`
`exemplary, and it does not constitute an admission that any reference not listed below does not
`
`also anticipate the claims of the ’235 Patent. Further, Defendants contend that any prior art
`
`reference in the attached charts that is charted for each limitation of any given claim, anticipates
`
`that claim, regardless of whether that prior art reference is listed in the following table.
`
`Exhibit Anticipating Prior Art
`
`A-1
`
`A-2
`
`A-3
`
`A-4
`
`A-5
`
`A-6
`
`A-7
`
`A-8
`
`A-9
`
`A-10
`
`A-11
`
`U.S. Patent No. 7,224,758 (“Banister 758”)
`
`U.S. Patent No. 6,738,020 (“Lindskog”)
`
`U.S. Patent No. 6,888,809 (“Foschini”)
`
`U.S. Patent No. 2001/0031647 A1 (“Scherzer 647”)
`
`U.S. Patent No. 6,124,824 (“Xu”)
`
`U.S. Patent No. 6,175,550 (“van Nee”)
`
`U.S. Patent No. 7,139,324 (“Ylitalo”)
`
`U.S. Patent No. 2003/0068983 (“Kim 983”)
`
`U.S. Patent Pub. No. 2002/0190901 (“Yoshida 901”)
`
`U.S. Patent Pub. No. 2008/0170533 (“Cyzs”)
`
`International Pub. No. Pub. No. WO2000001078A1
`(“Harrison”)
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 10,715,235
`-12-
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`Exhibit 2008
`IPR2022-01155
`Page 13 of 99
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`Exhibit Anticipating Prior Art
`
`A-12
`
`A-13
`
`A-14
`
`A-15
`
`A-16
`
`A-17
`
`A-18
`
`A-19
`
`A-20
`
`A-21
`
`A-22
`
`A-23
`
`A-24
`
`A-25
`
`A-26
`
`A-27
`
`A-28
`
`A-29
`
`A-30
`
`A-31
`
`A-32
`
`A-33
`
`A-34
`
`A-35
`
`U.S. Patent Pub. No. 2002/0060643 (“Levy 643”)
`
`International Pub. No. WO2002047286A2 (“Hottinen
`286”)
`
`U.S. Patent No. 7,155,231 (“Burke”)
`
`U.S. Patent No. 5,933,421 (“Alamouti”)
`
`3GPP TSG RAN WG1 R1-99c10 (“Motorola 3GPP”)
`
`U.S. Patent No. 6,141,335A (“Kuwahara”)
`
`U.S. Patent No. 6,067,290 (“Paulraj 290”)
`
`Space-Time Signaling in Multi-Antenna Systems (“Heath
`2001”)
`
`U.S. Patent No. 5,828,658 (“Ottersten”)
`
`Joint Transmitter-Receiver Optimization in Synchronous
`Multiuser Communications over Multipath Channels
`(“Jang”)
`
`U.S. Patent No. 5,471,647 (“Gerlach 647”)
`
`U.S. Patent Pub. No. 2002/0018530A1 (“Kim 530”)
`
`Transmit Diversity Using Filtered Feedback Weights in
`the FDD/WCDMA System (“Hottinen 2000”)
`
`Base Station Transmitter Antenna Arrays with Mobile to
`Base Feedback (“Gerlach 1993”)
`
`U.S. Patent No. 6,947,707 (“Raghothaman”)
`
`U.S. Patent No. 6,553,012 (“Katz”)
`
`Transmit Diversity in 3G CDMA Systems (“Derryberry”)
`
`U.S. Patent No. 6,473,036 / U.S. Patent Pub. No.
`2003/0125040 (“Walton 040”)
`
`U.S Patent No. 7,248,841 (“Agee 841”)
`
`Opportunistic Beamforming Using Dumb Antennas
`(“Viswanath”)
`
`U.S. Patent No. 6,317,586 (“Haardt 586” or “Haardt”)
`
`U.S. Patent No. 6,141,567 (“Youssefmir 567”)
`
`U.S. Patent No. 2004/0018818 (“Hottinen 818”)
`
`U.S. Patent No. 6,031,877 (“Saunders 877” or
`“Saunders”)
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 10,715,235
`-13-
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`Exhibit 2008
`IPR2022-01155
`Page 14 of 99
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`Exhibit Anticipating Prior Art
`
`A-36
`
`A-37
`
`A-38
`
`A-39
`
`A-40
`
`A-41
`
`A-42
`
`Japanese Patent Pub. JP2002290317A (“Jitsukawa”)
`
`U.S. Patent Pub. No. 2002/0131381 (“Kim 381”)
`
`U.S. Patent No. 7,116,723 (“Kim 723”)
`
`Banister, Brian Clarke, “Feedback Assisted Multi-
`Antenna Transmission Weight Adaptation for Wireless
`Communications” (2002) (“Banister 2002”)
`
`U.S. Patent Pub. No. 2002/0158801 (“Crilly”)
`
`U.S. Patent No. 5,634,199 (“Gerlach 199”)
`
`U.S. Patent No. 6,895,258 (“Scherzer 258”)
`
`
`To the extent any item of prior art cited above is deemed not to disclose, explicitly or
`
`inherently, any limitation of an asserted claim of the ’235 Patent, Defendants reserve the right to
`
`argue that any difference between that prior art and the corresponding patent claim would have
`
`been either inherent in the art or obvious to a person of ordinary skill in the art, even if Defendants
`
`have not specifically denoted that the art is to be combined with the knowledge of a person of
`
`ordinary skill in the art.
`
`In addition to the above patents and publications, the ArrayComm IntelliCell products are
`
`prior art based on their public sale and use by ArrayComm at least as early as 2000.
`
`Defendants also identify prior art products, systems and/or printed publications that were
`
`generated as part of AT&T’s “Project Angel.” Project Angel related to AT&T’s development (at
`
`least as early as 2000) of a multi-user fixed wireless system that provided high-speed Internet,
`
`voice telephone service, and home networking. AT&T’s work on Project Angel led to public
`
`testing no later than 1999 in Dallas, Texas, with around 2,000 customers participating in testing.
`
`AT&T also commercially implemented this system no later than March, 2000 in Fort Worth,
`
`Texas, where it offered fixed wireless Internet service for sale to customers. AT&T subsequently
`
`sold Project Angel in 2002 to Netro Corp., who was in turn acquired by SR Telecom Inc. in 2003.
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 10,715,235
`-14-
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`Exhibit 2008
`IPR2022-01155
`Page 15 of 99
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`SR Telecom entered bankruptcy in 2007. Defendants have exercised reasonable diligence in trying
`
`to discover more information about Project Angel. Nevertheless, given the passage of time and
`
`the multiple companies involved, discovery is ongoing and Defendants reserve the right to
`
`supplement their contentions to include additional information that may become available.
`
`Defendants also identify prior art products and systems that were generated as part of
`
`Navini Networks’ broadband access equipment including at least Navini’s Ripwave line of
`
`products. Navini Networks was founded in January 2000 and provided scalable, wireless
`
`broadband access network that required zero installation at the end-user site and offered non-line-
`
`of-sight operation, with the added benefit of nomadic/mobile capabilities. On information and
`
`belief, Navini’s products incorporated adaptive antennas, transmitters, receivers, and beamforming
`
`(or spot forming) in order to create transmission peaks and nulls. Navini Networks was based in
`
`Plano, TX and had over 70 worldwide deployments of its products. Defendants have exercised
`
`reasonable diligence in trying to discover more information about Navini Network’s products
`
`during the relevant, early 2000 timeframe such that the related systems and printed publications
`
`could be identified with more detail in claim charts. Nevertheless, given the passage of time and
`
`the multiple companies involved, discovery is ongoing and Defendants reserve the right to
`
`supplement their contentions to include additional information that may become available.
`
`Furthermore, based on information currently known to Defendants, products or systems
`
`from at least the following companies may also constitute prior art based on their public sale and
`
`use prior to the claimed priority date of the ’235 Patent: Iospan Wireless (a.k.a. Gigabit Wireless);
`
`Motia, Inc.; Clarity Wireless, Corp.; Cognio, Inc.; Motorola, Inc.; Motorola Solutions, Inc.;
`
`Motorola Mobility, LLC; Lenovo Group Limited; Google, Inc.; Toshiba Corp.; Kabushiki Kai