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.: 50095-0047IP2
`Issue Date:
`July 14, 2020
`
`Appl. Serial No.: 15/495,539
`
`Filing Date:
`April 24, 2017
`
`Title:
`DIRECTED WIRELESS COMMUNICATION
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`
`
`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. 50095-0047IP2
`IPR of U.S. Patent No. 10,715,235
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`TABLE OF CONTENTS
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`I. 
`
`II. 
`
`V. 
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 7 
`A.  Grounds for Standing ................................................................................ 7 
`B.  Challenge and Relief Requested ............................................................... 7 
`C.  Level of Ordinary Skill in the Art ........................................................... 10 
`D.  Claim Construction ................................................................................. 10 
`THE ’235 PATENT ....................................................................................... 11 
`A.  Brief Description ..................................................................................... 11 
`B.  Relevant History of the ’235 Patent ........................................................ 16 
`III.  THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 17 
`A.  GROUND 1: Claims 1-5, 15, and 16 are obvious over Saunders .......... 17 
`1.  Overview of Saunders ................................................................... 17 
`2.  Overview of Hottinen .................................................................... 20 
`3. 
`Combination of Saunders and Hottinen ........................................ 22 
`4.  Manner in which Saunders and Hottinen Render Claims 1-5, 15,
`and 16 Obvious .............................................................................. 27 
`B.  GROUND 2: Claims 6 and 7 are obvious over Saunders in view of
`Hottinen and Shull .................................................................................. 49 
`1.  Overview of Shull ......................................................................... 49 
`2. 
`Combination of Saunders, Hottinen, and Shull ............................. 50 
`3.  Manner in which the Prior Art Renders Claims 6 and 7 Obvious 52 
`IV.  THE GENERAL PLASTICS FACTORS DO NOT FAVOR
`DISCRETIONARY DENIAL OF THIS PETITION .................................... 59 
`1. 
`Factor 1: Petitioners did not challenge the same claims in the two
`petitions ......................................................................................... 60 
`Factors 2, 4, and 5: Petitioners worked diligently to identify and
`present the grounds advanced in this petition after Patent Owner
`served amended infringement contentions .................................... 60 
`Factor 3: Petitioner had received the POPR in the first petition but
`gained no advantage relevant to this second petition .................... 63 
`Factor 6: The Board’s resources are being efficiently used
`consistent with Congressional intent ............................................. 63 
`Factor 7: The requirements under 35 U.S.C. § 316(a)(11) are
`being satisfied ................................................................................ 64 
`THE FINTIV FACTORS DO NOT FAVOR DISCRETIONARY DENIAL
`OF INSTITUTION ........................................................................................ 64 
`1. 
`Factor 1: No stay has been requested or granted .......................... 65 
`
`2. 
`
`3. 
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`4. 
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`5. 
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`2. 
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`Attorney Docket No. 50095-0047IP2
`IPR of U.S. Patent No. 10,715,235
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`Factor 2: The trial schedule is speculative, subject to change, and
`does not support discretionary denial ............................................ 65 
`Factor 3: The parties have made significant investment in the
`PTAB proceedings ........................................................................ 67 
`Factor 4: Issues in this petition and parallel proceedings will have
`little or no overlap ......................................................................... 68 
`Factor 5: Petitioners and defendant are the same parties .............. 68 
`5. 
`Factor 6: Factor 6 supports institution .......................................... 69 
`6. 
`VI.  CONCLUSION .............................................................................................. 70 
`VII.  PAYMENT OF FEES ................................................................................... 70 
`VIII.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 71 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 71 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 71 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 71 
`D.  Service Information ................................................................................ 72 
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`3. 
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`4. 
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`ii
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`Attorney Docket No. 50095-0047IP2
`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”)
`
`EXHIBIT-1002
`
`Prosecution History of the ’235 Patent (“the Prosecution
`History”)
`
`[RESERVED]
`
`EXHIBIT-1003
`
`EXHIBIT-1004 Complaint, XR Communications, LLC v. Apple Inc., 6:21-cv-
`00620, W.D. Tex., June 16, 2021
`
`[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”)
`
`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”)
`
`EXHIBIT-1011
`
`EXHIBIT-1012 U.S. Patent No. 6,662,024 (“Walton”)
`
`EXHIBIT-1013 U.S. Patent No. 6,208,863 (“Salonaho”)
`
`EXHIBIT-1014
`
`EXHIBIT-1015
`
`EXHIBIT-1016
`
`EXHIBIT-1017 Andrea Goldsmith, Wireless Communications, Cambridge
`University Press, 2005
`
`PCT Application Publication No. WO 02/47286 (“Hottinen”)
`
`[RESERVED]
`
`[RESERVED]
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`[RESERVED]
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`iii
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`Attorney Docket No. 50095-0047IP2
`IPR of U.S. Patent No. 10,715,235
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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]
`
`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
`
`
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`EXHIBIT-1024 Restoring the America Invents Act, S. 2891, 117th
`Cong. (2021)
`
`
`EXHIBIT-1021
`
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`EXHIBIT-1022
`
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`EXHIBIT-1023
`
`
`EXHIBIT-1025
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`“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
`
`
`EXHIBIT-1026
`
`EXHIBIT-1027 U.S. Patent No. 6,031,877 (“Saunders”)
`
`EXHIBIT-1028 U.S. Patent No. 6,473,036 (“Proctor”)
`
`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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`Attorney Docket No. 50095-0047IP2
`IPR of U.S. Patent No. 10,715,235
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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
`
`Plaintiff’s Updated Infringement Contentions, XR
`Communications, LLC v. HP Inc., 6:21-cv-00694, W.D. Tex.,
`Feb. 25, 2022
`
`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
`
`
`EXHIBIT-1033 Apple’s first stipulation, XR Communications, LLC v. Apple
`Inc., 6:21-cv-00620, W.D. Tex., May 19, 2022
`
`
`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
`
`
`EXHIBIT-1037 Apple’s motion to transfer, XR Communications, LLC v. Apple
`Inc., 6:21-cv-00620, W.D. Tex., Dec. 10, 2021
`
`
`EXHIBIT-1038 HP’s motion to transfer, XR Communications, LLC v. HP Inc.,
`6:21-cv-00694, W.D. Tex., Apr. 8, 2022
`
`
`EXHIBIT-1039 Order resetting Markman Hearing, XR Communications, LLC v.
`Apple Inc., 6:21-cv-00620, W.D. Tex., May 23, 2022
`
`
`EXHIBIT-1040 Order resetting Markman Hearing, XR Communications, LLC v.
`HP Inc., 6:21-cv-00694, W.D. Tex., May 24, 2022
`
`
`EXHIBIT-1041 Houman Zarrinkoub, “Understanding LTE with MATLAB®,”
`Wiley, 2014 (“Zarrinkoub”)
`
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`5
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`EXHIBIT-1043
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`Attorney Docket No. 50095-0047IP2
`IPR of U.S. Patent No. 10,715,235
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`EXHIBIT-1042 Apple’s letter to XR counsel regarding discovery deficiencies,
`Jan. 13, 2022
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`Second Amended Standing Order Regarding Motions for Inter-
`District Transfter, W.D. Tex., Aug. 18, 2021
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`Attorney Docket No. 50095-0047IP2
`IPR of U.S. Patent No. 10,715,235
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`Apple Inc. and HP Inc. (collectively “Petitioners”) petition for Inter Partes
`
`Review (“IPR”) of 1-7 and 15-16 (“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.
`
`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
`
`“EX-”); EX-1018.
`
`B. Challenge and Relief Requested
`Petitioners request IPR of the Challenged Claims on the obviousness
`
`grounds listed below. A declaration from Dr. Akl (EX-1026, ¶¶[1]-[131]) supports
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`this Petition.
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`Claim(s)
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`1-5, 15, 16
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`Attorney Docket No. 50095-0047IP2
`IPR of U.S. Patent No. 10,715,235
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`35 U.S.C. § 103
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`Saunders in view of Hottinen
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`6, 7
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`Saunders in view of Hottinen and Shull
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`
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`Ground
`
`1
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`2
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`
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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,
`
`2002. Id. During procesution, the Applicant of the ’235 Patent argued that certain
`
`features of the claims of the ’235 Patent were invented “at least as early as
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`February, 2002.” See EX-1002, 265-272.
`
`On January 7, 2022, Petitioners filed a petition for inter partes review of
`
`claims 8-14 of the ’235 Patent, which has been designated IPR2022-00367. See
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`Apple Inc. And HP Inc. v. XR Communications, LLC, IPR2022-00367, Paper 3
`
`(PTAB Jan. 7, 2022). As explained in Section II.B of that Petition, U.S.
`
`Provisional Apl. No. 60/423,660 does not support at least claims 8-14. Id. at 9-20.
`
`Accordingly, the claims do not satisfy the written description requirement under 35
`
`U.S.C. § 112 and are not entitled to the priority date (November 4, 2002) of U.S.
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`Provisional Apl. No. 60/423,660. However, even if the Challenged Claims of this
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`8
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`Attorney Docket No. 50095-0047IP2
`IPR of U.S. Patent No. 10,715,235
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`petition are afforded the Applicants’ unsupported priority date of February, 2002,
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`each reference asserted in this Petition qualifies as prior art under 35 U.S.C. §
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`102(b) or § 102(e), as shown in the table below. EX-1026, ¶¶[18]-[21].
`
`Issue/Publish
`Date
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`Prior Art Under
`
`February 29, 2000
`
`102(a), (b), (e)
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`June 13, 2002
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`102(a), (e)
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`Dec. 21, 1999
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`102(a), (b), (e)
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`Reference
`
`Filing Date
`
`February 5,
`1998
`
`December 6,
`2000
`Oct. 2, 1997
`
`Saunders
`(U.S. Patent No.
`6,031,877)
`Hottinen
`(WO 02/47286)
`
`Shull1
`(U.S. Patent No.
`6,006,077)
`
`
`
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`1 Shull was used in the first petition (IPR2022-00367, challenging a different set of
`
`claims than the claims in this petition) against dependent claims 13 and 14 that
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`recite similar features as dependent claims 6 and 7. The POPR in response to the
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`first petition did not include any arguments related to Shull. Thus, Petitioners did
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`not gain any advantage from reasserting Shull as a prior art reference in this
`
`petition after the POPR was submitted in IPR2022-00367. General Plastic
`
`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19
`
`(P.T.A.B. Sept. 6, 2017); see also infra Section IV.
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`Attorney Docket No. 50095-0047IP2
`IPR of U.S. Patent No. 10,715,235
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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
`
`discipline emphasizing electrical engineering or a related field, in combination
`
`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
`
`also had a Masters or Doctorate degree in electrical engineering with a year of
`
`related work experience in wireless communication systems. EX-1026, ¶¶[24]-
`
`[25].
`
`
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`D.
` Claim Construction
`No formal claim constructions are necessary for this petition.2 Wellman, Inc.
`
`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 or to respond to constructions subsequently proposed by Patent Owner or
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`the PTAB.
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`Attorney Docket No. 50095-0047IP2
`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]
`
`coordinates directed wireless communication with [a] client.” EX-1001, 2:7-16.
`
`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).
`
`“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
`
`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-1026,
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`¶[46].
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`Attorney Docket No. 50095-0047IP2
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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; EX-1026, ¶[47].
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`12
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`Attorney Docket No. 50095-0047IP2
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`EX-1001, FIG. 123
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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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`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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`3 Annotations to the figures throughout this petition are shown in color.
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`13
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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-1026, ¶[48].
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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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`for data packets received from [a] client device via the directed communication
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`14
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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-1026, ¶[49].
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`15
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`Attorney Docket No. 50095-0047IP2
`IPR of U.S. Patent No. 10,715,235
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`EX-1001, FIG. 19
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`B. Relevant History of the ’235 Patent
`As noted in Section I.B, supra, Patent Owner attempted to improperly
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`establish an earlier invention date of February 1, 2002 during prosecution of the
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`16
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`Attorney Docket No. 50095-0047IP2
`IPR of U.S. Patent No. 10,715,235
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`application that led to the ’235 Patent. EX-1002, 268-272, 986-987, 282, 1008,
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`1214, 1110; EX-1001, 1-2. For the reasons already explained in IPR2022-00367,
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`Petitioners submit that the earliest priority date of at least claims 8-14 of the ’235
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`Patent is after November 4, 2002. See Apple Inc. And HP Inc. v. XR
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`Communications, LLC, IPR2022-00367, Paper 3 at 9-20. However, even if the
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`’235 Patent were granted a priority date as far back as February 1, 2002, the
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`references cited in this petition still qualify as prior art as noted above in Section
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`I.B. EX-1026, ¶¶[50]-[51].
`
`
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`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. GROUND 1: Claims 1-5, 15, and 16 are obvious over
`Saunders
`1. Overview of Saunders4
`Saunders discloses a communication device that comprises an array of
`
`antenna elements 41 for receiving and transmitting encoded signals 42. EX-1027,
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`5:16-30, 6:15-18. Saunders’ communication device can optimize beamforming
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`coefficients for application to data for transmission from the array of antenna
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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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`17
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`Attorney Docket No. 50095-0047IP2
`IPR of U.S. Patent No. 10,715,235
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`elements. EX-1027, Abstract. Referring to Saunders’ FIG. 3 (reproduced below),
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`a received signal is converted to a digital signal and buffered for processing in two
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`paths, a receive path and a transmit path. EX-1027, 5:16-59; EX-1026, ¶[52].
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`EX-1027, FIG. 3
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`In the receive path, the information in the received signals is input into a
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`correlation matrix estimator 52 that provides values for an estimate of correlation
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`18
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`Attorney Docket No. 50095-0047IP2
`IPR of U.S. Patent No. 10,715,235
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`matrices, Rxx and rxd. EX-1027, 5:16-59. The matrices are used by weight
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`calculator 56 to determine values of optimum weights, Wopt, also referred to as
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`beamforming coefficients, for the receive path. EX-1027, 5:16-59; EX-1026,
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`¶[53].
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`In the transmit path, the information in the received signals (stored in buffer
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`49 as “x”) is provided to a signal predictor 68 configured to calculate a predicted
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`signal 𝑥̅. EX-1027, 5:16-59. The buffered data, x, and predicted signal 𝑥̅ are input
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`into a correlation matrix estimator 70 that is also responsive to a register 54
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`containing a stored replica of the training sequence, s. EX-1027, 5:16-59. The
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`correlation matrix estimator 70 provides estimation values for correlation matrices
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`𝑅(cid:3364)xx and 𝑟̅xd in response to x and s. EX-1027, 5:16-59. A second weight calculator
`72 receives the output 𝑅(cid:3364)xx and 𝑟̅xd from the correlation matrix estimator 70 and
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`determines optimum weights/beamforming coefficients, Wopt, that are subsequently
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`sent to a beamformer 74. EX-1027, 5:16-59. The beamformer 74 applies the
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`beamforming coefficients Wopt to data 76 received from an input device, such as a
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`modem or keyboard. EX-1027, 5:16-59. Output from the beamformer 74 is
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`coupled to an array of modulators 80 that in turn provide encoded output signals 82
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`to the array of transmitters 48 and, ultimately, to the array of antenna elements 41
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`through the array of antenna switches 44. EX-1027, 5:16-59; EX-1026, ¶[54].
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`2. Overview of Hottinen
`Hottinen is directed to “improved method[s] for controlling the weighting of
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`a data signal in the at least two antenna elements of a transceiver of a wireless
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`communications system which allows for high data rates in the downlink matched
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`to channel conditions.” EX-1011, pg. 3, Abstract. In Hottinen’s wireless
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`communication system, signals transmitted from a first radio connection unit to a
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`second radio connection unit can be received by one or more antenna elements of
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`the second radio connection system. EX-1011, pgs. 7 (“The transmitted data
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`signals can be received at the second radio connection unit by one antenna element
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`or by several antenna elements”), 24. “[T]he second radio connection unit is in
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`possession of the most comprehensive information relevant for selecting suitable
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`beams for transmission of the data signal and for determining sets of weights for
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`the selected beams.” EX-1011, pg. 4; EX-1026, ¶[55].
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`Hottinen discloses a few methods of conveying and processing weight
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`information for beam formation. EX-1026, ¶[56]. For example, in Hottinen’s first
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`method, the second radio connection unit determines weight information and
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`transmits the determined weight information to the first radio connection unit. EX-
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`1011, pg. 3. The first radio connection unit uses the received weight information
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`to configure “at least two suitable beams” for parallel and simultaneous
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`transmissions to the second radio connection unit. EX-1011, pg. 3-4, 21-22. The
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`at least two transmissions are “at least partially different streams.” EX-1011, pg.
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`3; EX-1026, ¶[56].
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`The weight information is part of feedback information sent back from the
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`second radio connection unit to the first radio connection unit and includes “weight
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`information from which the first radio connection unit can determine the set of
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`weights for each beam that is to be used for transmission of the data signals from
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`the first radio connection unit to the second radio connection unit. Each feedback
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`information indicates the weighting of the data signal for each of the different
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`antenna elements of the first radio connection unit.” EX-1011, pgs. 4, 7-8. In
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`addition, the feedback information can include data rates, power distribution, and
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`interference information for each of the selected beams. EX-1011, pgs. 8, 10, 20-
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`21, 27-28; EX-1026, ¶[57].
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`In some cases, Hottinen teaches that “the feedback information can include
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`the set of weights for each selected beam, the first radio connection unit only
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`having to apply the received sets for forming the selected beams. It is not required,
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`however, that the second radio connection unit determines and transmits all sets of
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`weights, if there exists an a priori fixed or negotiated way of calculating multiple
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`weights from a single feedback known to both, first and second radio connection
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`unit.” EX-1011, pg. 5. For such cases, Hottinen teaches that “a reduced feedback
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`information is sufficient, which enables the first radio connection unit to determine
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`the necessary sets of weights. Therefore, the second radio connection unit controls
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`the parallel beams with weight information either directly using explicit feedback
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`for all beams or implicitly using reduced feedback and the knowledge of beam
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`parameterisation [sic] at the first radio connection unit.” EX-1011, pgs. 5, 19-20;
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`EX-1026, ¶[58].
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`In some implementations, Hottinen teaches that the second radio connection
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`unit also includes information about the number of beams to be formed by the first
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`radio connection unit, and sends this information back to the first radio connection
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`unit as part of the feedback information. EX-1011, pgs. 5-6, 13-14, 22-23. “Both
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`methods are aimed at controlling the weighting of a data signal that is to be
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`divided, usually after encoding and modulation, into at least two parts for
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`transmission. At least partly different symbols are therefore transmitted in parallel
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`using the at least two formed beams, even though the symbols transmitted by the
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`two beams do not have to be completely different.” EX-1011, pg. 6. For example,
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`the first radio connection unit can perform channel encoding such that “different
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`encoded bits are transmitted from different beams with assigned power.” EX-
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`1011, pg. 22; EX-1026, ¶[59].
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`3.
`Combination of Saunders and Hottinen
`As noted above, Saunders discloses a communication device and method in
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`which weights/beamforming coefficients are determined and applied to data to be
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`transmitted from the communication device to another device. EX-1027, Abstract,
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`5:16-59. In particular, Saunders discloses optimizing the beamforming of a
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`communication device that receives a signal from another device and using the
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`optimization to communicate with the other device. EX-1026, ¶[60]. The
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`optimization can include configuring the antenna radiation pattern to match
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`prevailing signal and interference environmental conditions to minimize loss and
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`improve signal transmission between the two communication devices. EX-1027,
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`1:20-28, 2:1-27, 4:1-21, 6:1-9; EX-1026, ¶[60].
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`To further improve communications between the two devices, a POSITA
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`would also want to optimize the settings of the device transmitting signals to the
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`receiving device. EX-1026, ¶[61]. A POSITA would understand that optimizing
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`data transmissions for a transmitting device improves communication from the
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`transmitting device to the receiving device by improving signal directivity, channel
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`path gain, and minimizing signal loss. Id. Hottinen provides such disclosure with
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`beamforming conducted at both communications devices. In particular, Hottinen
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`teaches that a second radio connection unit can determine feedback information
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`including weight information and then transmit that feedback information to the a
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`first radio connection unit. EX-1011, pg. 3-4, 7-8, 21-22. The first radio
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`connection unit receives the feedback information including the weight
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`information and configures its beams that are to be used for transmission of the
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`data signals from the first radio connection unit to the second radio connection
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`unit. Id., see also pgs. 5-6, 13-14, 23. By combining the teachings of Saunders
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`and Hottinen, weights and beam forming can be utilized at both devices to
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`optimize the beams used for data communications between the antenna element
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`arrays of both devices. EX-1026, ¶¶[61]-[62].
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`To clarify, in the combination of Saunders and Hottinen, a “second radio
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`communication device” refers to Hottinen’s “second radio connection unit” and the
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`communication device in Saunders that receives a signal, and determines and
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`applies weights/beamforming coefficients to data to be transmitted to another
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`device. The “first radio communication device” refers to Hottinen’s “first
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`communication unit” and the device in Saunders from which the beamformed
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`signals transmitted from the second radio communication device are received.5 In
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`the combined Saunders-Hottinen system, the first radio communication device
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`corresponds to the “transmitter,” and the second radio communication device
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`corresponds to the “receiver.” An example depiction of this system is shown
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`below based on an illustration provided by Dr. Akl. EX-1011, pgs. 2, 7, 24; EX-
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`5 Hereinafter, the two devices in the combination will be referred to as radio
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`communication devices unless a quote from Hottinen is being used in the
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`discussion. Hottinen refers to the devices as “connection units.”
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`1026, ¶[63]. The maroon and blue arrows depict communications from an antenna
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`element array of the first radio communication device to an antenna element array
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`of the second radio communication device, and the orange and green arrows depict
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`communications from the antenna element array of the second radio
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`communication device to the antenna element array of the first radio
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`communication device. EX-1026, ¶[63].
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`EX-1041, 38; EX-1026, pg. 376
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`It would have been obvious for a POSITA to combine the teachings of
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`Saunders and Hottinen in the manner described above as doing so would have
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`6 The illustrated arrows convey generalized depictions of data transmission from
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`one device to another, not the exact directivity of the communication signals.
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`involved a known technique to a known system ready for improvement to yield
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`predictable results. EX-1026, ¶[64]. Indeed, “when a patent ‘simply arranges old
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`elements with each performing the same function it had been known to perform’
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`and yields no more than one would expect from such an arrangement, the
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`c