UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`APPLE INC. AND HP INC.,
`Petitioner
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`v.
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`XR COMMUNICATIONS, LLC,
`D/B/A VIVATO TECHNOLOGIES,
`Patent Owner
`____________
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`IPR2022-01155
`U.S. Patent No. 10,715,235
`____________
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`PATENT OWNER’S PRELIMINARY
`RESPONSE SUR-REPLY
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`____________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`APPLE INC. AND HP INC.,
`Petitioner
`
`v.
`
`XR COMMUNICATIONS, LLC,
`D/B/A VIVATO TECHNOLOGIES,
`Patent Owner
`____________
`
`IPR2022-01155
`U.S. Patent No. 10,715,235
`____________
`
`
`PATENT OWNER’S PRELIMINARY
`RESPONSE SUR-REPLY
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`IPR2022-01155 (’235 patent)
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`I.
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`THE PETITION FAILS ON THE MERITS
`Contrary to Petitioners’ arguments (Reply at 5), the merits of the Petition are
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`POPR Sur-reply
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`not strong and don’t favor institution.
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`A. The Petition fails to show that ‘x’ in Saunders’s equation 1 describes
`two received signals, as required by the claims.
`The Petition’s theory requires ‘x’ in Saunders’s equation 1 to satisfy the
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`“determined first signal information and second signal information.” Pet. at 41–43.
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`Thus, to meet the claims, Saunders’s ‘x’ must describe two received signals that are
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`received simultaneously from the same remote station. POPR at 5–6. Indeed, the
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`“first and second signal information” (to which ‘x’ allegedly corresponds) must be
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`determined for two received signals: a “first signal transmission” and a “second
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`signal transmission.” Id. But Saunders expressly teaches that ‘x’ describes only one
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`received signal; it defines ‘x’ as a “received signal vector at n branches (i.e. n antenna
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`elements).” Id. at 7–11; EX-1027 at 2:1–18. And a “received signal vector x” is one
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`received signal—not two received signals as Petitioners contend. The Reply does
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`not and cannot dispute Saunders’s express disclosure in col. 2.
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`Ignoring col. 2, the Reply instead focuses on Fig. 3 and col. 5 to argue that ‘x’
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`describes multiple received signals. Reply at 5 (citing EX-1027 at 5:16–59). But at
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`most, col. 5 might indicate that there is a received signal vector ‘x’ for each received
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`signal that is received over time. EX-1027, 5:16-59. This does not mean that ‘x’ ever
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`describes two received signals, as the claims and Petitioners’ theory requires.
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`1
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`IPR2022-01155 (’235 patent)
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`POPR Sur-reply
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`The Reply’s sole reference to Hottinen cannot save Petitioners’ theory, which
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`relies exclusively on Saunders’s ‘x’ for limitation [1c-4]. Pet. at 41–43. Importantly,
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`the Petition doesn’t assert any modification to Saunders’s ‘x’ for limitation [1c-4] in
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`a combined Saunders-Hottinen system. Id. Thus, Hottinen fails to cure Saunders’s
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`deficiency, and the combined system fails to satisfy the claimed “first and second
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`signal information” for the same reasons. Nor do Petitioners show that a POSITA
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`would be motivated to combine Saunders with Hottinen to meet this claim limitation
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`with a reasonable likelihood of success.
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`Petitioners’ conclusory attorney argument that the Saunders-Hottinen system
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`“also determines covariance matrices and weight values that can be used for
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`transmission back to the first radio communication device” is supported only by its
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`expert’s bare assertion—which simply repeats the attorney argument verbatim and
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`is due no weight. Compare Pet. at 43; with EX-1027 ¶ 94; Harmonic Inc. v. Avid
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`Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); Smartmatic USA Corp. v. Election
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`Sys. & Software, IPR2019-00527, Paper 32 at 34 (Aug. 5, 2020) (giving no weight
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`to an expert declaration that “merely parrots the language in the Petition”).
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`B. The Petition fails to show that ‘x’ in Saunders’s equation 1 describes
`two simultaneously received signals, as required by the claims.
`Petitioners’ theory fails for an independent reason. Even if Saunders discloses
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`computing a received signal vector ‘x’ for each received signal, each such instance
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`of ‘x’ does not describe two signals received simultaneously from the same remote
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`2
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`IPR2022-01155 (’235 patent)
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`station as the claims require. POPR at 9. Any interpretation of col. 5 in which ‘x’
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`POPR Sur-reply
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`describes two signals received simultaneously is unsupported and inconsistent with
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`Saunders’s definition of ‘x’ as a received signal vector.
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`Lacking any evidence from Saunders that would satisfy limitation [1c-4], the
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`Reply relies on Dr. Akl’s assertion that “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.” Reply at 5; Pet. at 41–32. This fails. Dr. Akl’s assertion is
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`incompatible with Saunders itself, in which the received signal vector ‘x’ in equation
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`1 only describes one received signal. EX-1027 at 2:1–18. Dr. Akl’s bare opinion that
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`‘x’ represents multiple signals cannot take the place of a disclosure in Saunders,
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`which is completely absent here. See Consolidated Trial Practice Guide at 36.
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`Likewise, Petitioners and Dr. Akl provide zero evidence that ‘x’ describes two
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`signals that are received simultaneously from the same remote station. And again,
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`Petitioners’ sole “evidence” for this argument is the say-so of Dr. Akl. But any
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`assertion by Dr. Akl on this point is conclusory and unsupported and cannot
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`substitute for disclosures in the prior art of record. See Cisco v. XR, IPR2022-00958,
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`Paper 9 at 24 (PTAB Nov. 29, 2022) (denying institution and finding that “Petitioner
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`may not rely on Dr. Jeffay’s testimony alone for element 15B.2. Testimony cannot
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`take the place of disclosure in a prior art reference, when that disclosure is required
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`as part of the unpatentability analysis.”) (citing TPG at 36).
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`3
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`IPR2022-01155 (’235 patent)
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`II. DISCRETIONARY DENIAL IS WARRANTED
`In view of recent events, and under Director Vidal’s June 2022 guidance,
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`POPR Sur-reply
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`discretionary denial remains warranted. The Apple case is temporarily stayed
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`pending a transfer decision, which is imminent. And as the Reply acknowledges, if
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`transfer is denied, then the estimated trial date is October 2023 based on WDTex’s
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`median time to trial. Reply at 2. This is three months before the FWD deadline in
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`this IPR (in January 2024). Since the Apple case is pending in WDTex, the mere
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`possibility that it will be transferred to NDCal and put on a later schedule is remains
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`speculative. Unless the case is transferred,1 the Board should find that Factor 2
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`weighs against institution. As to the other Fintiv factors, discretionary denial remains
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`warranted for the reasons in the POPR. See POPR at 17–24.
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`Further, Director Vidal’s guidance makes clear that “even if the PTAB does
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`not deny institution under Fintiv, it retains the right to deny institution for other
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`reasons under 35 U.S.C. §§ 314(a), 324(a), and 325(d).” June 21, 2022, Memo on
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`Interim Procedures at 9. Thus, even if the Fintiv factors don’t apply, the Board
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`should exercise its discretion to deny institution under the General Plastic factors.
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`See POPR at 24–28 (“The Board has recognized that § 314(a) provides an additional
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`discretionary basis for denying institution of ‘follow on’ petitions.”).
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`1 If the Apple case is transferred from WDTex to NDCal, the parties will promptly
`update the Board, and it will be reflected on the WDTex docket.
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`4
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`IPR2022-01155 (’235 patent)
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`POPR Sur-reply
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`Dated: November 29, 2022
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`Respectfully submitted,
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`/s/ Reza Mirzaie
`Reza Mirzaie, Reg. No. 69,138
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`rmirzaie@raklaw.com
`rak_vivato@raklaw.com
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`5
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`IPR2022-01155 (’235 patent)
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`POPR Sur-reply
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
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`The undersigned hereby certifies that the above document was served on
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`November 29, 2022, by filing this document through the Patent Trial and Appeal
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`Case Tracking System (P-TACTS) system as well as delivering a copy via electronic
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`mail upon the following attorneys of record for Petitioners:
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`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR50095-0047IP2@fr.com
`Lead Counsel for Petitioners
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`David Holt, Reg. No. 65,161
`Usman A. Khan, Reg. No. 70,439
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`PTABInbound@fr.com
`Backup Counsel for Petitioners
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`Dated: November 29, 2022
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`/s/ Reza Mirzaie
`Reza Mirzaie
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