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`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,
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`v.
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`XR COMMUNICATIONS, LLC, D/B/A VIVATO TECHNOLOGIES,
`Patent Owner.
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`Case IPR2022-01155
`Patent 10,715,235
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`PETITIONERS’ REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`UPDATED EXHIBIT LIST
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`Proceeding No.: IPR2022-01155
`Attorney Docket: 50095-0047IP2
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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
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`Prosecution History of the ’235 Patent (“the Prosecution
`History”)
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`[RESERVED]
`
`
`EXHIBIT-1003
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`EXHIBIT-1004 Complaint, XR Communications, LLC v. Apple Inc., 6:21-cv-
`00620, W.D. Tex., June 16, 2021
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`[RESERVED]
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`[RESERVED]
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`[RESERVED]
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`
`EXHIBIT-1005
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`EXHIBIT-1006
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`EXHIBIT-1007 U.S. Patent No. 6,006,077 (“Shull”)
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`EXHIBIT-1008
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`EXHIBIT-1009 U.S. Provisional Application No. 62/423,660 (“’660
`Provisional Application”)
`
`
`EXHIBIT-1010 U.S. Patent No. 6,879,823 (“Raaf”)
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`EXHIBIT-1011
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`EXHIBIT-1012 U.S. Patent No. 6,662,024 (“Walton”)
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`EXHIBIT-1013 U.S. Patent No. 6,208,863 (“Salonaho”)
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`EXHIBIT-1014
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`EXHIBIT-1015
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`EXHIBIT-1016
`
`
`PCT Application Publication No. WO 02/47286 (“Hottinen”)
`
`[RESERVED]
`
`[RESERVED]
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`[RESERVED]
`
`
`
`
`i
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`
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`Proceeding No.: IPR2022-01155
`Attorney Docket: 50095-0047IP2
`EXHIBIT-1017 Andrea Goldsmith, Wireless Communications, Cambridge
`University Press, 2005
`
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`EXHIBIT-1018 Complaint, XR Communications, LLC v. HP Inc., 6:21-cv-
`00694, W.D. Tex., July 1, 2021
`
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`EXHIBIT-1019 [RESERVED]
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`EXHIBIT-1020
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`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
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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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`
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`EXHIBIT-1024 Restoring the America Invents Act, S. 2891, 117th Cong.
`(2021)
`
`“Roku’s Trial Delay Request OK’d by ‘Surprised’ Texas
`Judge,” Law360, Aug. 10, 2020, available at
`https://www.law360.com/articles/1299933
`
`Second Declaration and Curriculum Vitae of Dr. Robert Akl
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`
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`EXHIBIT-1026
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`EXHIBIT-1027 U.S. Patent No. 6,031,877 (“Saunders”)
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`EXHIBIT-1028 U.S. Patent No. 6,473,036 (“Proctor”)
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`
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`
`
`ii
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`Proceeding No.: IPR2022-01155
`Attorney Docket: 50095-0047IP2
`EXHIBIT-1029 Zhi Ning Chen et al., “Antennas for Base Stations in Wireless
`Communications,” McGraw Hill, 2009 (“Chen”)
`
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`EXHIBIT-1030
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`EXHIBIT-1031
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`EXHIBIT-1032
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`Plaintiff’s Updated Infringement Contentions, XR
`Communications, LLC v. Apple Inc., 6:21-cv-00620, W.D.
`Tex., Feb. 25, 2022
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`Plaintiff’s Updated Infringement Contentions, XR
`Communications, LLC v. HP Inc., 6:21-cv-00694, W.D. Tex.,
`Feb. 25, 2022
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`Scheduling Order, XR Communications, LLC v. Apple Inc.,
`6:21-cv-00620, XR Communications, LLC v. HP Inc., 6:21-cv-
`00694, W.D. Tex., Jan. 13, 2022
`
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`EXHIBIT-1033 Apple’s first stipulation, XR Communications, LLC v. Apple
`Inc., 6:21-cv-00620, W.D. Tex., May 19, 2022
`
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`EXHIBIT-1034 HP’s first stipulation, XR Communications, LLC v. HP Inc.,
`6:21-cv-00694, W.D. Tex., May 19, 2022
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`EXHIBIT-1035 Apple’s second stipulation, XR Communications, LLC v.
`Apple Inc., 6:21-cv-00620, W.D. Tex., Jun. 16, 2022
`
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`EXHIBIT-1036 HP’s second stipulation, XR Communications, LLC v. HP Inc.,
`6:21-cv-00694, W.D. Tex., Jun. 16, 2022
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`EXHIBIT-1037 Apple’s Motion to transfer, XR Communications, LLC v.
`Apple Inc., 6:21-cv-00620, W.D. Tex., Dec. 10, 2021
`
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`EXHIBIT-1038 HP’s Motion to transfer, XR Communications, LLC v. HP Inc.,
`6:21-cv-00694, W.D. Tex., Apr. 8, 2022
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`EXHIBIT-1039 Order resetting Markman Hearing, XR Communications, LLC
`v. Apple Inc., 6:21-cv-00620, W.D. Tex., May 23, 2022
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`EXHIBIT-1040 Order resetting Markman Hearing, XR Communications, LLC
`v. HP Inc., 6:21-cv-00694, W.D. Tex., May 24, 2022
`iii
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`Proceeding No.: IPR2022-01155
`Attorney Docket: 50095-0047IP2
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`EXHIBIT-1041 Houman Zarrinkoub, “Understanding LTE with MATLAB®,”
`Wiley, 2014 (“Zarrinkoub”)
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`EXHIBIT-1042 Apple’s letter to XR counsel regarding discovery deficiencies,
`Jan. 13, 2022
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`EXHIBIT-1043
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`Second Amended Standing Order Regarding Motions for Inter-
`District Transfer, W.D. Tex., Aug. 18, 2021
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`EXHIBIT-1044 Apple’s third stipulation, XR Communications, LLC v. Apple
`Inc., 6:21-cv-00620, W.D. Tex., Nov. 21, 2022
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`EXHIBIT-1045 HP’s third stipulation, XR Communications, LLC v. HP Inc.,
`Nov. 21, 2022
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`EXHIBIT-1046 Order Granting Motion to Transfer Venue, XR
`Communications, LLC v. HP Inc., 6:21-cv-00694, W.D. Tex.,
`Aug. 17, 2022 (redacted)
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`EXHIBIT-1047
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`Stay Order, XR Communications, LLC v. Apple Inc., 6:21-cv-
`00620, W.D. Tex., Nov. 8, 2022
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`EXHIBIT-1048 Order Cancelling Discovery Hearing, XR Communications,
`LLC v. Apple Inc., 6:21-cv-00620, W.D. Tex., Nov. 9, 2022
`
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`EXHIBIT-1049 Discovery and Scheduling Order, XR Communications, LLC v.
`Apple Inc., 6:21-cv-00620, W.D. Tex., Aug. 25, 2022
`
`
`EXHIBIT-1050 U.S. District Courts–Combined Civil and Criminal District
`Court Management Statistics (June 30, 2022) | United States
`Courts (uscourts.gov),
`https://www.uscourts.gov/sites/default/files/fcms_na_distprofile
`0630.2022_0.pdf
`
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`
`iv
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`
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`Proceeding No.: IPR2022-01155
`Attorney Docket: 50095-0047IP2
`Petitioners submit this reply to Patent Owner’s Preliminary Response
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`(POPR), as authorized by the Board on November 14, 2022. After the filing of the
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`IPR2022-01155 petition, several events have transpired that further weigh against
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`discretionary denial under Fintiv. For example, HP’s district court case was
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`transferred to another venue, and Apple’s district court case has been stayed pending
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`resolution of a Motion for Transfer. EX1046-EX1047. Moreover, updated
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`stipulations have been submitted to narrow the number of potentially overlapping
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`issues between the PTAB and litigation. EX1044-EX1045. As explained in more
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`detail below, these developments weigh against discretionary denial under Fintiv.
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`I.
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`FACTOR 1: DISTRICT COURT CASES ARE CURRENTLY
`STAYED OR ARE NOT ADVANCING
`Factor 1 does not favor discretionary denial because parallel district court
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`proceedings against Apple have been stayed. In particular, on November 8, 2022,
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`the District Court issued a stay order in the proceedings for the Western District of
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`Texas (WDTX) case between Apple and the Patent Owner. EX1047. Under this
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`order, all deadlines, including discovery deadlines, have been stayed pending
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`resolution of a Motion for Transfer. Id.
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`The district court case against the second petitioner, HP, has been transferred
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`to another venue and no actions have transpired since the transfer. In particular, on
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`August 17, 2022, the WDTX granted HP’s Motion to transfer the case to the United
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`States District Court for the Northern District of California (NDCA). EX1046.
`1
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`
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`Proceeding No.: IPR2022-01155
`Attorney Docket: 50095-0047IP2
`Although three months have elapsed since the order, the transfer is still being
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`completed and NDCA has yet to issue a case schedule, thereby placing the case
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`schedule on hold. EX1046. Thus, Factor 1 weighs against discretionary denial.
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`II.
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`FACTOR 2: TRIAL DATE IS UNCERTAIN AND THE KNOWN
`MEDIAN TIME TO TRIAL IS AFTER THE FWD
`Factor 2 also does not favor discretionary denial because the trial dates are
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`uncertain, and will likely be after the projected final written decision (FWD) date of
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`January 11, 2024. As noted above, HP’s WDTX case has been transferred to NDCA,
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`where the case has yet to be assigned a judge or a case schedule. EX1046. Apple’s
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`WDTX case has been stayed and the discovery and scheduling order are vacated as
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`part of the stay order. EX1047. Consequently, at the time of the filing of this reply
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`(less than two months from the institution decision), there are no case deadlines and
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`the trial dates are unknown.
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`Under Director Vidal’s June 21, 2022 guidance for discretionary denial, the
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`trial date can be estimated based on the district court’s median time from filing to
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`disposition of the civil trial. The median time to trial in WDTX is 28.3 months and
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`in NDCA is 34.7 months. EX1050, 37, 66. If Apple’s case remains at the WDTX,
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`then the trial date is estimated to be October 2023 based on WDTX’s median time
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`to trial. If Apple’s case, like HP’s case, is transferred to the NDCA, the estimated
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`earliest trial date, based on NDCA’s median time to trial, for either Apple or HP
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`would be April or May, 2024—well after the FWD date in January, 2024.
`2
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`
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`Proceeding No.: IPR2022-01155
`Attorney Docket: 50095-0047IP2
`Accordingly, because the trial date and even the forum for one of the petitioners
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`(Apple) is uncertain at the moment, and the only certain median time to trial statistic
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`for the other petitioner (HP) places a likely trial date several months after the FWD,
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`Factor 2 weighs against discretionary denial.
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`III. FACTOR 3: INVESTMENTS HAVE BEEN LIMITED
`Factor 3 weighs against discretionary denial or, at worst, is neutral because
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`investments in the proceedings have not been significant and are currently on hold
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`in both parallel district court proceedings. In the Apple district court case,
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`discovery has now been stayed (as noted above). EX1047. The Markman hearing
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`and a discovery hearing have been cancelled and no claim construction orders have
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`been issued. EX1048; EX1049, 2. Similarly, in the HP district court case, little to
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`no investment has occurred since the time of the petition filing. The NDCA has not
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`yet assigned a judge or assigned a schedule, so no Markman hearing has been held
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`and no claim construction order has been issued either. The posture in both district
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`court cases suggests that little if any additional investment will occur before the
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`institution decision is issued. For these reasons, Factor 3 weighs against
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`discretionary denial. To the extent any weight is given to earlier investment by the
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`parties in the district court cases, Factor 3 is neutral as investment by the parties
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`has stalled due to the current case postures.
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`
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`3
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`
`
`Proceeding No.: IPR2022-01155
`Attorney Docket: 50095-0047IP2
`IV. FACTOR 4: OVERLAPPING ISSUES ARE VERY LIMITED
`Petitioners’ stipulations, including the latest stipulations (EX1044-1045),
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`ensure that the issues raised in the petition and in district court proceedings will have
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`little overlap. Petitioners previously stipulated not to pursue, in the respective district
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`courts, (1) any ground asserted in IPR2022-01155 or any other ground using U.S.
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`Patent No. 6,031,877 (“Saunders”) as a primary reference against claims 1-7, 15,
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`and 16 if the PTAB institutes IPR2022-01155; and (2) any ground raised in
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`IPR2022-00367 against claims 8-14 if the PTAB institutes IPR2022-00367.
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`EX1033-EX1036. Petitioners now further stipulate that if the PTAB institutes
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`IPR2022-01155, Petitioners will not pursue in the respective district courts any
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`ground using U.S. Patent No. 6,006,077 (“Shull”) or Saunders against claims 1-16.
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`EX1044-1045. See Tide International (USA), Inv. V. UPL NA, Inc., IPR2020-01113,
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`Paper 12, 6-21 (Jan. 22, 2021). Through these stipulations, Petitioners have ensured
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`that the district court proceedings will involve very few, if any, of the same invalidity
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`issues because two of the three prior art publications in the grounds (i.e., Saunders
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`and Shull) have been stipulated by Petitioners not to be used in the district court
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`proceedings if institution is granted. And because the overlap of issues between the
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`IPR and district court proceedings is likely to be minimal, factor 4 weighs against
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`discretionary denial.
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`4
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`
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`Proceeding No.: IPR2022-01155
`Attorney Docket: 50095-0047IP2
`V.
`FACTOR 6: PETITION MERITS ARE STRONG
`Consistent with Director Vidal’s updated guidance, the petition presents
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`“compelling, meritorious challenges,” and that “alone” weighs against denial. The
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`only prior art argument Patent Owner presents in its response is that the Saunders-
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`Hottinen system does not render obvious the “determining a set of weighting values”
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`feature. POPR, 7-11. Patent Owner’s argument relies on the erroneous notion that
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`“x” in Saunders refers to a single signal, not two different signals received from the
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`same remote station. POPR, 8. Contrary to Patent Owner’s attorney argument, the
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`Petition explains that Saunders’ receiver in a second radio communication device
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`includes antenna elements that receive multiple signals from a first radio
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`communication device and that signal values from these signals can be represented
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`by the vector “x.” Petition, 34-38; see also EX1011, 7, 24; EX1027, 5:16-59, FIG.
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`3. Dr. Akl’s declaration further explains how Saunders explicitly teaches that “x” in
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`Saunders’ equation 1 is directed to signals received from one station by different
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`antenna elements, and that Saunders disclosure is consistent with how such systems
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`were known to operate, as evidenced by Hottinen and Zarrinkoub. EX1026, ¶¶[82]-
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`[88]. The fact that Patent Owner presents only one attorney argument, unsupported
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`by expert testimony, against the prior art grounds is demonstrative of the strength of
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`the merits of the Petition. Thus, Factor 6 favors institution.
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`5
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`
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`Date: November 21, 2022
`
`Proceeding No.: IPR2022-01155
`Attorney Docket: 50095-0047IP2
` Respectfully submitted,
`
`
`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`David Holt, Reg. No. 65,161
`Usman Khan, Reg. No. 70,439
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`Attorneys for Petitioner
`
`
`
`Proceeding No.: IPR2022-01155
`Attorney Docket: 50095-0047IP2
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on November
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`21, 2022, a complete and entire copy of this Petitioners’ Reply to Patent Owner’s
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`Preliminary Response was provided by email to Patent Owner by serving the email
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`correspondence addresses of record as follows:
`
`Reza Mirzaie, Reg. No. 69,138
`Philip Wang, Reg No. 74,621
`
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`
`rmirzaie@raklaw.com
`pwang@raklaw.com
`rak_vivato@raklaw.com
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
`
`
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