Trials@uspto.gov
`Tel: 571–272–7822
`
`
`Paper 18
`Entered: March 12, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COMMSCOPE TECHNOLOGIES LLC,
`Petitioner,
`
`v.
`
`DALI WIRELESS INC.,
`Patent Owner.
`_______________
`
`Case IPR2020-01473
`Patent 10,080,178 B2
`_______________
`
`
`
`Before KARL D. EASTHOM, MELISSA A. HAAPALA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`

`

`IPR2020-01473
`Patent 10,080,178 B2
`
`CommScope Technologies LLC (“Petitioner”) filed a Petition to
`institute an inter partes review of claims 1–30 (“challenged claims”) of
`U.S. Patent No. 10,080,178 B2 (Ex. 1001, “the ’178 patent”). Paper 1
`(“Pet.”). Dali Wireless Inc. (“Patent Owner”) filed a Preliminary Response.
`Paper 9 (“Prelim. Resp.”). With our authorization (Paper 13), Petitioner
`filed a Reply relating to our discretion under 35 U.S.C. § 325(a), Paper 15
`(“Reply”), and Patent Owner filed a Sur-Reply, Paper 17 (“Sur-Reply”). We
`have authority under 35 U.S.C. § 6(b)(4) and 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35
`U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted “unless . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`Upon consideration of the Petition, Preliminary Response, and
`additional briefing we decline to exercise discretion to deny institution under
`35 U.S.C. § 325(d), and we determine that Petitioner has demonstrated a
`reasonable likelihood that it would prevail in showing the unpatentability of
`at least one challenged claim of the ’178 patent. Accordingly, for the
`reasons that follow, we institute inter partes review.
`BACKGROUND
`I.
`A. Real Parties-in-Interest
`As the real parties-in-interest, Petitioner identifies CommScope
`Technologies LLC, CommScope, Inc. of North Carolina, CommScope, Inc.,
`and CommScope Holding Company, Inc. Pet. iv. Patent Owner identifies
`only itself as real party-in-interest. Paper 3, 1.
`
`2
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`

`

`IPR2020-01473
`Patent 10,080,178 B2
`
`
`B. Related Proceedings
`Petitioner and Patent Owner identify Dali Wireless, Inc. v.
`CommScope Technologies LLC, No. 1:19-cv-00952-MN (D. Del.) (“the
`related action”) as a related action involving the ’178 patent.1 Pet. iv; Paper
`3, 1.
`
`C. The ’178 Patent
`The ’178 patent is titled “Distributed Antenna System” and relates to
`a distributed antenna system (DAS) that “enables a high degree of flexibility
`to manage, control, enhance, [and] facilitate the usage and performance of a
`distributed wireless network.” Ex. 1001, codes (54), (57). According to one
`embodiment of the invention, a distributed antenna system includes digital
`access units (DAUs), which each connect to associated base stations and
`serve as an interface between these base stations and digital remote units
`(DRUs). Id. at 4:37–41. The distributed antenna system receives downlink
`data via radio frequency (RF) signals from the base stations. Id. at 4:60–62.
`After down-conversion, digitization, and conversion to baseband, the DAUs
`provide these received signals to DRUs. Id. at 4:63–5:6. Figure 1 of the
`’178 patent, reproduced below, is a block diagram showing the basic
`structure and an example downlink transport. Id.at 3:55–58.
`
`
`1 According to Petitioner, “[t]he trial date for the district court action is
`March 2022,” after the due date for a Final Written Decision in the instant
`case. See Pet. 87–88. Patent Owner did not present arguments towards
`exercising discretion to deny institution under 35 U.S.C. § 314(a). See
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential). Therefore, we do not consider this issue further.
`
`3
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`

`IPR2020-01473
`Patent 10,080,178 B2
`
`
`
`
`Figure 1 depicts DAU 105 that serves as an interface between
`associated base stations (110A through 110p) and DRUs (125A through
`125k). Id. at 4:38–41, 4:60–62. Some DRUs, e.g., DRU 125B are
`connected to DAU 105 via a “daisy-chain” connection through its
`connection 150A to DRU 125A, which is connected directly to DAU 105
`through connection 140A. Id. at 6:6–7, 6:29–32. As shown in Figure 1,
`DAU 150 receives composite downlink signal 130, comprising carriers2 A–
`D from first base station 110A. Id. at 5:59–63. DAU 150 also receives
`
`
`2 Elements A–H of Figure 1 are alternatively referred to as “channels” and as
`“carriers” in the ’178 patent. Compare Ex. 1001 at 5:17–49, 7:55–7:67, Fig.
`1 (describing A–H as channels) with id. at 5:62–66, 6:15–25, 6:32–56
`(describing A–H as carriers); see also Prelim. Resp. 24. We use “carriers”
`in this section to refer to elements A–H.
`
`4
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`

`IPR2020-01473
`Patent 10,080,178 B2
`
`composite signal 135, comprising carriers E–H from pth base station 110p.
`Id. at 5:63–66. Bidirectional optical cables 140A and 145A connect DAU
`105 to DRU 125A and 125C, bidirectional optical cables connect the DRUs
`in a ring configuration. Id. at 6:6–15. These connections facilitate
`networking of DAU105, allowing all carriers A–H to be available to
`transport data to DRUs 125A–125k for downlink. Id. at 6:15–18. The
`antenna ports of the DRUs receive uplink signals and transmit them to the
`base station via the DAUs. Id. at 5:29–42, 10:37–11:22.
`Software settings within each DRU are configured in order to control
`which carrier signals are present in the downlink output signal at the antenna
`port of the DRU. Id. at 6:19–36, 6:43–56. An embedded software control
`module in a DAU, the DAU Management Control Module, “determin[es]
`and/or set[s] the appropriate amount of radio resources (such as RF carriers,
`CDMA codes or TDMA time slots) assigned to a particular DRU or group of
`DRUs to meet desired capacity and throughput objectives.” Id. at 11:61–
`12:6. Another embedded software control module, the DAU monitoring
`module, “detects which carriers and corresponding time slots for each carrier
`are active for each DRU [and] provides information to the DAU
`Management Control Module to help identify when, e.g., a particular
`downlink carrier is loaded by a percentage greater than a predetermined
`threshold.” Id. at 11:61–67, 12:46–54. “If that occurs, the DAU
`Management Control Module can adaptively modify the system
`configuration” to deploy additional radio resources for use by a particular
`DRU needing those resources, and to remove resources from a DRU if it no
`longer needs the radio resources assigned to it. Id. at 12:54–65. This occurs
`through communication with embedded software control modules in the
`
`5
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`

`

`IPR2020-01473
`Patent 10,080,178 B2
`
`DRUs that set individual parameters within the DRU to enable or disable
`specific radio resources from being transmitted by that DRU. Id. at 12:11–
`33.
`
`Figure 8, reproduced below, illustrates in block diagram form an
`embodiment of the DAS that includes daisy-chained DAUs. Id. at 4:17–19.
`
`
`As seen in the DAS of Figure 8 there are multiple DAUs 805A
`through 805n, each connected to one base station. DAUs 805A–805n are
`daisy-chained through connections between the DAUs. Id. at 12:36–45. In
`another embodiment DAUs are connected in a ring configuration. Id. at
`12:43–45.
`
`6
`
`

`

`IPR2020-01473
`Patent 10,080,178 B2
`
`
`D. Illustrative Claim 10
`The Petition challenges independent claims 1, 10, 15, 21, and 26, and
`their dependent claims 2–9, 11–14, 16–20, 22–25, and 27–30. Claim 10,
`reproduced below with bracketed notations corresponding to those used in
`the Petition added for reference, is illustrative of the challenged claims at
`issue:
`
`10. [A] A system for transporting wireless communications,
`comprising:
`[B] a host unit;
`[C] a plurality of remote units, including at least a first
`remote unit and a second remote unit;
`[D1] wherein the host unit comprises at least one interface to
`communicatively couple the host unit to at least one
`signal source;
`[E] wherein the host unit is configured to receive a plurality
`of downlink channel signals from the at least one signal
`source;
`[F] wherein the host unit is configured to send digital
`representations of the plurality of downlink channel
`signals to the plurality of remote units;
`[G] wherein the host unit is configurable to send digital
`representations of a first set of downlink channel signals
`to the first remote unit at a first point in time, the first set
`of downlink channel signals for transmission at an
`antenna of the first remote unit;
`[H] wherein the host unit is configurable to send digital
`representations of a second set of downlink channel
`signals to the first remote unit at a second point in time,
`the second set of downlink channel signals for
`transmission at the antenna of the first remote unit;
`[I] wherein a number of downlink channel signals in the first
`set of downlink channel signals is different from a
`number of downlink channel signals in the second set of
`downlink channel signals; and
`[J] wherein the host unit is configured to receive digital
`signals from each of the plurality of remote units.
`
`7
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`

`

`IPR2020-01473
`Patent 10,080,178 B2
`
`Ex. 1001, 15:3–32.
`
`E. The Asserted Grounds
`Petitioner challenges claims of the ’178 patent as follows (Pet. 1):
`
`Claims Challenged
`
`35 U.S.C. §3
`
`References
`
`1–25
`1–25
`1–25
`8, 11, 19, 21, 23–25
`
`102
`103
`103
`103
`
`103
`103
`102
`
`103
`
`Wu4
`Wu
`Wu, Sabat-4265
`Wu, OBSAI RP36,
`OBSAI BTS7
`Wu, CPRI8
`Wu, Sabat-5529
`Oh10
`
`Oh, Wu
`
`8, 9, 11, 19–25
`26–30
`1–8, 10, 11, 13, 15–
`19, 21, 23, 24
`1–8, 10, 11, 13, 15–
`19, 21, 23, 24
`Petitioner additionally relies on the declaration of Dr. Anthony
`Acampora (Ex. 1003).
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103. Because the
`’178 patent claims priority to an application filed before the effective date of
`the applicable AIA amendment, we refer to the pre-AIA version of 35
`U.S.C. § 102 and § 103. See Ex. 1001, code (63).
`4 Wu et al., US 2010/0128676 A1, pub. May 27, 2010 (Ex. 1005).
`5 Sabat et al., US 2009/0180426 A1, pub. July 16, 2009 (Ex. 1010).
`6 OBSAI Reference Point 3 Specification Version 3.1 (2006) (Ex. 1007)
`7 OBSAI Open Base Station Architecture Initiative - BTS System Reference
`Document Version 2.0 (2006) (Ex. 1008)
`8 CPRI Specification V 4.0 (2008-06-30) Interface Specification (Ex. 1006).
`9 Sabat Jr. et al., US 6,963,552 B2, iss. Nov. 8, 2005 (Ex. 1011).
`10 Oh et al., US 7,286,507 B1, iss. Oct. 23, 2007 (Ex. 1023).
`8
`
`

`

`IPR2020-01473
`Patent 10,080,178 B2
`
`
`II. ANALYSIS
`A. Discretionary Denial under 35 U.S.C. § 325(d)
`Patent Owner requests that we exercise our discretion under 35 U.S.C.
`§ 325(d) to deny the Petition because Wu, Oh, Sabat-426, and CPRI are the
`same or substantially similar to art that was before the Examiner during
`prosecution of the ’178 patent. Prelim. Resp. 29–37; Sur-Reply. Patent
`Owner further argues that the Petitioner has not shown how the Office erred
`in allowing the challenged claims over Wu, Oh, Sabat-425, and CPRI, all of
`which were cited in Information Disclosure Statements (“IDSs”). Prelim.
`Resp. 36; Sur-Reply 4–5. Petitioner argues that the record does not show
`that the Examiner evaluated the references cited in the IDSs, and that the
`Examiner’s failure to evaluate the references, or failure to find that Wu and
`Oh disclosed or taught the limitations described by the Examiner as missing
`in the art of record, was error. Pet. 13; Reply.
`Because Petitioner sufficiently demonstrates Examiner error, we
`decline to exercise our discretion under 35 U.S.C. § 325(d) to deny the
`Petition.
`
`Legal Principles
`1.
`Institution of inter partes review is discretionary. Harmonic Inc. v.
`Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that “the
`PTO is permitted, but never compelled, to institute an IPR proceeding”).
`The Patent Office may, for example, deny institution under 35 U.S.C.
`§ 325(d), which provides, in pertinent part, that “[i]n determining whether to
`institute or order a proceeding under this chapter . . . the Director may take
`into account whether, and reject the petition or request because, the same or
`
`9
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`

`

`IPR2020-01473
`Patent 10,080,178 B2
`
`substantially the same prior art or arguments previously were presented to
`the Office.”
`In evaluating whether the same or substantially the same prior art or
`arguments were previously presented to the Office, the Board has identified
`several non-exclusive factors for consideration. Becton, Dickinson & Co. v.
`B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15,
`2017) (precedential as to § III.C.5, first paragraph) (“the Becton, Dickinson
`factors”). Those factors are as follows:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`(d) the extent of the overlap between the arguments made
`during examination and the manner in which Petitioner relies
`on the prior art or Patent Owner distinguishes the prior art;
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art; and
`(f) the extent to which additional evidence and facts presented
`in the Petition warrant reconsideration of the prior art or
`arguments.
`Id.; see also Patent Trial and Appeal Board Consolidated Trial Practice
`Guide (Nov. 2019)11 62–63.
`
`
`11 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated
`
`10
`
`

`

`IPR2020-01473
`Patent 10,080,178 B2
`
`As explained in Advanced Bionics, LLC v. Med-El Electromedizinishe
`Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020)
`(“Advanced Bionics”) (precedential), we further apply the following two-
`step framework in determining whether discretionary denial under § 325(d)
`is appropriate:
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and
`
`(2) if either condition of [the] first part of the framework is
`satisfied, whether the petitioner has demonstrated that the Office
`erred in a manner material to the patentability of challenged
`claims.
`
`Becton, Dickinson Factors (a), (b), and (d) relate to the first step, and Becton,
`Dickinson Factors (c), (e), and (f) relate to the second step. Id.
`Only if the same or substantially the same art or arguments were
`previously presented to the Office do we then consider whether petitioner
`has demonstrated error. Advanced Bionics, at 8–10. “If the petitioner fails
`to show that the Office erred, the Director may exercise his discretion not to
`institute inter partes review.” Id. at 8–9 (“If a condition in the first part of
`the framework [i.e., substantially same art or arguments] is satisfied and the
`petitioner fails to make a showing of material error, the Director generally
`will exercise discretion not to institute inter partes review.”). “At bottom,
`this [§ 325(d)] framework reflects a commitment to defer to previous Office
`evaluations of the evidence of record unless material error is shown.” Id. at
`9. An “example of a material error” could be “misapprehending or
`overlooking specific teachings of the relevant prior art where those teachings
`impact patentability of the challenged claims.” Id. at 8 n.9.
`
`11
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`

`

`IPR2020-01473
`Patent 10,080,178 B2
`
`
`Analysis
`2.
`Under the first step of the Advanced Bionics framework, we must
`determine whether the same or substantially the same prior art was
`previously presented to the Office. Advanced Bionics, at 8. Patent Owner
`observes that Wu, Oh, Sabat-426, and CPRI were before the Examiner in an
`Information Disclosure Statement (“IDS”). Prelim Resp. 30; Sur-Reply 2;
`Ex. 1002, 548–554 (May 12, 2017 IDS, see p. 550–551, Cite Nos. 27, 38,
`40, 55).
`Wu and Oh are described by Petitioner as its “[p]rimary [r]eferences”
`in this IPR. Pet. 5–11; see also Prelim. Resp. 30. Petitioner concedes that
`“[s]ome of the references, including Wu and Oh” were before the Examiner.
`Reply 1. Petitioner, however, asserts that there was no discussion or
`mention of Wu and Oh on the record by the Examiner or applicant, and “no
`evidence the [E]xaminer evaluated the specific features of the references as
`identified and applied in the petition.” Id.
`In summary, the parties do not dispute that Wu, Oh, Sabat-426, and
`CPRI were before the Examiner in the IDS. Prelim. Resp. 30; Reply 1; Sur-
`Reply 2. Thus, these references were “previously presented to the Office.”
`See Advanced Bionics, at 7–8 (“Previously presented art includes . . . art
`provided to the Office by an applicant, such as on an Information Disclosure
`Statement (IDS), in the prosecution history of the challenged patent.”).
`Because Wu and Oh, along with Sabat-426 and CPRI, were previously
`presented to the Office, we proceed to the second step of the Advanced
`Bionics framework.
`Under the second step of the Advanced Bionics framework, we must
`determine whether Petitioner has demonstrated Examiner error in a manner
`
`12
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`

`IPR2020-01473
`Patent 10,080,178 B2
`
`material to the patentability of the challenged claims. Advanced Bionics, at
`10. Becton, Dickinson Factors (c), (e), and (f) inform our analysis at this
`step. Id. at 8.
`As to Becton, Dickinson Factor (c), the extent to which the asserted art
`was evaluated during examination, including whether the prior art was the
`basis for rejection, the record is not sufficiently clear that the Examiner
`meaningfully considered the relevant disclosures of the asserted prior art
`references in the Petition or substantially similar references. Whether the
`prior art was the basis for a rejection is significant to this analysis. Compare
`Boragen, Inc. v. Syngenta Participations AG, IPR2020-00124, Paper 16 at
`7–8 (PTAB May 5, 2020) (denying institution under § 325(d) where the
`primary reference and a secondary reference in the petition were the basis
`for five obviousness rejections during the prosecution of the patent at issue),
`with DraftKings Inc. v. Interactive Games LLC, IPR2020-01107, Paper 10 at
`16 (PTAB Jan. 6, 2021) (declining to deny institution under § 325(d) where
`the primary reference in the petition was not the basis of a rejection and
`disclosed the limitations upon which the Examiner relied to allow the
`patent).
`Here, Petitioner asserts that Wu and Oh were not substantively
`evaluated by the Examiner during prosecution of the ’178 patent. Pet. 13;
`Reply 1. Moreover, Petitioner argues that Examiner error is “evident in the
`reasons for allowance, where the examiner concludes none of the references
`discloses a host unit configurable to change the number of channel signals it
`sends to a remote unit.” Reply 3–4. Because, Petitioner argues, Wu and Oh
`disclose systems with this type of host unit, the Examiner’s conclusion was
`clear error. Id. at 4–5.
`
`13
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`

`IPR2020-01473
`Patent 10,080,178 B2
`
`Patent Owner argues that evaluation by the Examiner is shown in the
`Examiner’s statement in an office action that he considered the IDS on
`which Wu and Oh were listed. Prelim. Resp. 30; Sur-Reply 2 (reproducing
`an annotated portion of Ex. 2002, 500); see Ex. 2002, 498–516 (June 5, 2017
`Office Action). Patent Owner additionally argues that evaluation is further
`shown in the Examiner’s statement in the Notice of Allowance that “no prior
`art reference” or “combination of prior art references” discloses or suggests
`the configurability of the host to change the set and number of downlink
`channel signals sent to a remote unit at different points in time. Prelim.
`Resp. 31, 35; Sur-Reply 2 (reproducing in part Ex. 2002, 88); see Ex. 2002,
`81–89 (Notice of Allowance). Patent Owner argues that Wu and Oh are
`similar to the art identified by the Examiner as the “closest prior art on
`record.” Sur-Reply at 2–3.
`Furthermore, Patent Owner argues that “to ensure patentability, Patent
`Owner even filed an RCE [Request for Continued Examination] to remove
`the ’178 patent from allowance, and conducted multiple telephone
`interviews with the Examiner to discuss the prior art” and indicates that it
`submitted in an IDS both a petition for inter partes review of US 9,531,473
`B2 (“the ’473 patent)12,13 and the expert declaration of Dr. Acampora relied
`
`12 The ’473 patent, while also owned by Patent Owner, is not related to the
`’178 patent; however certain claims bear some similarity to claims of the
`’178 patent. Prelim. Resp. 11 (co-ownership); Ex. 1003, 15–19 (chart
`illustrating similarities between claims).
`13 The referenced petition for inter partes review of the ’473 patent (“the
`IPR2018-00571 Petition”) resulted in institution of inter partes review, and,
`eventually in a final written decision, which has been vacated and remanded
`in view of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir.
`2019) with further proceedings held in administrative abeyance pending
`14
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`

`IPR2020-01473
`Patent 10,080,178 B2
`
`upon in that petition, each discussing Oh and Wu. Prelim. Resp. 11, 35; Ex.
`2002, 127–131 (“May 1, 2018 IDS”). Patent Owner represents that “on May
`7, 2018, Patent Owner had a telephone conference with the Examiner to
`specifically discuss the [May 1, 2018 IDS] to ensure that the claims of the
`’178 patent were patentable in view of the [IPR2018-00]571 petition.”
`Prelim. Resp. 11 (citing Ex. 2002, 69, 107–108).
`While Patent Owner now characterizes the purpose of the RCE as
`being filed to provide additional prior art, we note that the RCE added ten
`claims and identified the purpose of the amendment as “secur[ing] an
`appropriate scope of protection.” Ex. 2002, 118. The RCE additionally
`“urged” entry of the amendment noting that “no more than a cursory review
`of the record is needed.” Id. The Examiner’s interview summary of the
`May 7, 2018 interview does not contain any indication that Oh, Wu, the
`IPR2018-00571 petition, or the expert declaration were discussed. Ex. 2002,
`108 (describing the substance of the interview as relating to new claim
`limitations in two claims and date information needed regarding a different
`item on the May 1, 2018 IDS).
`Under this factor, the record is not sufficiently clear as to the extent
`the relevant disclosures of the asserted prior art was meaningfully
`considered during examination. Although the IDS indicates that Wu and Oh
`were considered as noted above, Petitioner provides persuasive argument
`
`Supreme Court review of the Arthrex decision. CommScope Technologies
`LLC v. Dali Wireless Inc., IPR2018-00571, Paper 1 (Petition, filed Feb. 2,
`2018), Paper 26 (PTAB Aug. 14, 2018) (Institution Decision), Paper 53
`(PTAB Aug. 12, 2019) (Final Written Decision), Paper 59 (PTAB May 4,
`2020) (General Order in Cases Remanded Under Arthrex, Inc. v. Smith &
`Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019)).
`
`15
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`IPR2020-01473
`Patent 10,080,178 B2
`
`indicating that the Examiner overlooked or did not appreciate the materiality
`of the teachings of Wu and Oh in relation to the allowed claims.
`Additionally, the obvious materiality of Wu and Oh, discussed infra, and the
`absence of their use as a basis for rejection, suggests that the Examiner
`misapprehended or overlooked the relevant disclosures of these references.
`As to Becton, Dickinson Factor (e), whether Petitioner has pointed out
`sufficiently how the Examiner erred in its evaluation of the asserted prior art,
`Petitioner provides persuasive evidence of Examiner error. The Examiner
`allowed the claims of the ’178 patent because of limitations relating to the
`configurability of the host that Petitioner argues are disclosed by Wu and Oh
`in several grounds in the Petition. Reply 4 (citing Ex. 1005 ¶ 46; Ex. 1023
`9:44–10:9, 14:16–17). Patent Owner acknowledges that this feature was
`cited in the reasons for allowance. Prelim. Resp. 31, 35; Sur-Reply 2.
`Patent Owner further argues (as addressed further below, Section II.E) that
`Wu does not anticipate the host unit as described in the claims. Sur-Reply 5.
`However, the Petition relies not only on anticipation by Wu but obviousness
`over Wu, alone or in combination with other art. See Pet. 41–49.
`Given the fact that the Examiner did not expressly rely on Wu and Oh
`in rejecting the claims during prosecution or in the Examiner’s explanation
`of the reasons for allowance, and given the description and explanation
`provided by Wu and Oh as discussed infra, we find that the Examiner erred
`by either overlooking, or failing to appreciate, the materiality of the
`disclosures of Wu and Oh.
`Finally, as to Becton, Dickinson Factor (f), the extent to which
`additional evidence and facts presented in the Petition warrant
`reconsideration of prior art or arguments, Petitioner addresses the asserted
`
`16
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`

`IPR2020-01473
`Patent 10,080,178 B2
`
`references in detail as discussed in our analysis below, II.E–J. Petitioner
`argues that the final decision issued in IPR2018-00571 is evidence that the
`claims merit reconsideration. Reply 5. Patent Owner notes that this
`decision has been vacated (pursuant to Arthrex). See Sur-Reply 5; supra
`notes 13, 14.
`Considering Becton, Dickinson Factors (c), (e), and (f) together, we
`conclude that Petitioner sufficiently demonstrates Examiner error based on
`the grounds in its Petition, with support from expert testimony, which
`shows, in particular, that the Examiner overlooked, or did not appreciate, the
`materiality of Wu’s and Oh’s disclosures relating to the configurability of
`the host unit.
`
`Conclusion
`3.
`For the reasons discussed above, we conclude that the Petition
`presents facts and evidence that, in this case, sufficiently demonstrate the
`Examiner erred in a manner material to the patentability of the challenged
`claims, and we therefore decline to exercise our discretion to deny institution
`under 35 U.S.C. § 325(d).
`
`B. Principles of Law
`It is a petitioner’s burden to demonstrate unpatentability in an inter
`partes review. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)).
`To anticipate a claim, a prior art reference must disclose every
`limitation of the claimed invention, either expressly or inherently. Blue
`Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016).
`
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`However, this is not an ipsissimis verbis test, i.e., identity of terminology is
`not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved based on the following
`underlying factual determinations: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations.14 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot
`employ mere conclusory statements. The petitioner must instead articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with the
`principles stated above in mind.
`C. Level of Ordinary Skill in the Art
`Petitioner asserts that the proper level of ordinary skill in the art is a
`“bachelor’s degree in electrical engineering (or equivalent field) with 2-3
`years of work experience in wireless communications.” Pet. 16 (citing Ex.
`1003 ¶¶ 19–21). Patent Owner contends that the proper level of skill given
`
`
`14 At this stage, the record contains no allegations or evidence of secondary
`considerations.
`
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`by the Petitioner should include “work experience dealing with wireless
`devices such as remote units and antennas.” Prelim. Resp. 22. Based on the
`evidence of record at this point, including the types of problems and
`solutions described in the ’178 patent and the asserted prior art, at this stage
`we agree with and adopt Patent Owner’s definition of the level of ordinary
`skill in the art, although our findings and conclusions would be the same if
`we applied Petitioner’s somewhat broader proposed definition.
`D. Claim Construction
`In an inter partes review, the Board construes each claim “in
`accordance with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” 37 C.F.R. § 42.100(b). Under the same standard
`applied by district courts, claim terms take their plain and ordinary meaning
`as would have been understood by a person of ordinary skill in the art at the
`time of the invention and in the context of the entire patent disclosure.
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`“There are only two exceptions to this general rule: 1) when a patentee sets
`out a definition and acts as . . . lexicographer, or 2) when the patentee
`disavows the full scope of a claim term either in the specification or during
`prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
`1365 (Fed. Cir. 2012).
`Petitioner requests that we construe the term “host unit” found in all
`independent claims, and the term “dynamically change(s)” found in claims
`2–6 and 16–18. Pet. 15. Patent Owner provides a discussion and an
`alternate proposal for each term. Prelim. Resp. 22–28.
`
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`
`“host unit”
`1.
`Petitioner contends that “host unit” should be construed as “unit that
`transports and controls communications between remote units and the signal
`source.” Pet. 15 (citing Ex. 1003 ¶ 30). Patent Owner disagrees with
`Petitioner’s construction and instead contends that the proper construction is
`“a digital access unit that manages communications between an operator
`network and one or more remote radio units.” See Prelim. Resp. 23–25.
`Our decision with respect to the prior art’s disclosures or teachings
`with respect to “host unit” would not be affected by the claim construction
`of this term. In view of our analysis below, we do not see a need for
`construction of this term for the purposes of institution. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and
`only to the extent necessary to resolve the controversy’. . . .” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`“dynamically change” or “dynamically changes”
`2.
`With respect to “dynamically change” or “dynamically changes,” as
`found, for example, in claim 2 (“wherein the host unit is configurable to
`dynamically change” from sending the representations of the first set of
`downlink channel signals to sending representations of the second set) it is
`Petitioner proposes “automatically change” or “change instantly in response
`to conditions as they occur.” Pet. 15–16 (citing Ex. 1003 ¶¶ 26–29). Patent
`Owner addresses and objects to each proposed construction. Patent Owner
`disagrees with either construction and instead proposes that “dynamically
`change” should be construed as “a